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 ones 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. PETITIONERS ARGUMENT: Petitioner alleged that it had

been for many years engaged in the sale of petroleum products and its trademark ESSO had acquired a considerable goodwill to such an extent that the buying public had always taken the trademark ESSO as equivalent to high quality petroleum products. Petitioner 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. ISSUE: WON there was an infringement of trademark. (NO.) RULING: ACCORDINGLY, the petition is dismissed and the decision of respondent Court of Appeals is hereby affirmed. HELD: It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum products, and the product of respondent, cigarettes, are non-competing. 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, or is actually, deceived and misled that they came from the same maker or manufacturer. For non-competing goods may be those which, though they are not in actual competition, are so related to each other that it might reasonably be assumed that they originate from one manufacturer. Non-competing goods may also be those which, being entirely unrelated, could not reasonably be assumed to have a common source. In the former case of related goods, confusion of business could arise out of the use of similar marks; in the latter case of non-related goods, it could not. 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. Goods are related when they belong to the same

class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be related because they serve the same purpose or are sold in grocery stores. 11 Thus, biscuits were held related to milk because they are both food products. Soap and perfume, lipstick and nail polish are similarly related because they are common household items nowadays. 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. Soap and pomade although noncompetitive, were held to be similar or to belong to the same class, since both are toilet articles. But no confusion or deception can possibly result or arise when the name "Wellington" which is the trademark for shirts, pants, drawers and other articles of wear for men, women and children is used as a name of a department store. In the situation before us, the goods are obviously

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. 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. Petitioner uses the trademark ESSO and holds certificate of registration of the trademark for petroleum products, including aviation gasoline, grease, cigarette lighter fluid and other various products such as plastics, chemicals, synthetics, gasoline solvents, kerosene, automotive and industrial fuel, bunker fuel, lubricating oil, fertilizers, gas, alcohol, insecticides and the ESSO Gasul" burner, while respondent's business is solely for the manufacture and sale of the unrelated product of cigarettes. 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. Although petitioner's products are numerous, they are of the same class or line of merchandise which are non-competing with respondent's product of cigarettes, which as pointed out in the appealed judgment is beyond petitioner's "zone of potential or natural and logical expansion". When a trademark is used by a party for a product in which the other party does not deal, the use of the same trademark on the latter's product cannot be validly objected to. 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, thus: "The products of each party move along and are disposed through different channels of distribution. The (petitioner's) products are distributed principally through gasoline service and lubrication stations, automotive shops and hardware stores. On the other hand, the (respondent's) cigarettes are sold in sarisari stores, grocery stores, and other small distributor outlets. (Respondent's) cigarettes are even peddled in the streets while (petitioner's) 'gasul' burners are not. Finally, there is a marked distinction between oil and tobacco, as well as between petroleum and cigarettes. Evidently, in kind and nature the products of (respondent) and of (petitioner) are poles apart." Respondent court correctly ruled that considering the general appearances of each mark as a whole, the possibility of any confusion is unlikely. A comparison of the labels of the samples of the goods submitted by the parties shows a great many differences on the trademarks used. As pointed out by respondent court in its appealed

decision, "(A) witness for the plaintiff, Mr. Buhay, 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. In his answer to the trial court's question, Mr. 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," and "Another witness for the plaintiff, Mr. Tengco, testified that generally, the plaintiff's trademark comes all in either red, white, blue or any combination of the three colors. It is to be pointed out that not even a shade of these colors appears on the trademark of the appellant's cigarette. The only color that the appellant uses in its trademark is green."
FACTS: Esso is a foreign corporation engaged in the sale of petroleum products and it is identified with its trademark ESSO ; 2. United Cigarette Corporation (UCC) is a domestic corporation engaged in the manufacture and sale of cigarettes. It scquired the use of the trademark Esso on its cigarettes, (granted by BIR) 3. When Esso filed a trademark infringement in CFI Manila, UCC barely used the trademark Esso. 4. ESSO's contention: (1) enganged in selling petroleum products for so many years (2) It also acquired a considerable goodwill; public knows that Esso trademark is equivalent to high quality petroleum products. (3) UCC intended to deceive the public that it also have the same quality as Esso's. 5. UCC's contention: (1) admitted that it used the trademark Esso which was not identical to those produced and sold by by Esso ergo, it did in any way infringe or imitate petitioner's trademark. (2) contended also that in order that there is trademark infringement, 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. 6. 7. TRIAL COURT: In favor of Esso. There is trademark infringement CA: Reversed the decision.. There is no trademark infringement 1.

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, counterfeit, copy or colorable limitation of any registered mark or tradename in the connection with the sale, 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 , or identity of such business x x x. It is important that the goods must be so related that there is a likelihood either of confusion if goods or business, yet it is a relative concept, it must be determined according tp the particular circumstances of each case. SC ruled that the goods on which the petitioner uses the trademarkEsso (petroleum products) and the product of respondents (cigarettes) are not competing. Two kinds of non- competing goods (1) even if they are not in actual competition but they are so related to each other that it might reasonably be

assumed that they originate from one manufacturer. (2) Those goods that are entirely unrelated, and could not be reasonably be assumed to have a common source. Under the first kind, the confusion of business could arise out of the use of similar marks, on the other hand, confusion of business could not arise. Nowadays, the court follow the modern concept of related goods. Goods are related (1) when they belong to the same class or have the same descriptive properties; (2) when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. (3) When they serve the same purpose or are sold in the grocery stores Examples: a.Milk and biscuits are related for they are food products b. Soap and pomade although non- competitive, were held to be similar or to belong to the same class, since both are toilet articles. In this case, 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, much less cause damage to the petitioner. (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. (3) The goods flow through different channels of trade. Soline products are disposed or distributed proncipally through gasoline service and lubrication stations while the respondent's products are sold in sari-sari stores, grocery stores and small distributor outlets. (4) Colors that were used in the trademarks were different The goods are obviously different from each other with absolutely no iota of similarity. 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. Although petitioner's product are numerous, they are of the same class or line of merchandise which are noncompeting with the respondent's product of cigarettes.

Fruit of the Loom vs. CA GR L-32747, 29 November 1984; Second division, Makasiar (J) Facts: Fruit of the Loom is the registrant of the trademark Fruit of the Loom, while General Garments corp. is the registrant of the trademark Fruit for Eve. Both trademarks cover clothing. In 1976,k Fruit of the Loom filed with the trial court a complaint for infringement and unfair competition against General Garments. The trial court ruled in favor of Fruit of the Loom. General Garments appealed. The appellate court reversed the trial courts decision. Hence, the petition for review on certiorari. Issue: Whether there was an infringement of the trademark of Fruit of the Loom. Held: No. The trademarks Fruit of the Loom and Fruit for Eve do not resemble each other as to confuse or deceive an ordinary purchaser. No confusion would arise in the pronunciation of the two marks. Further, the similarities of the competing trademarks are completely lost in the substantial difference in the design and general appearance of their respective hang tags. For one to be confusingly similar to another, the discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in the labels.

----FACTS: 1. Petitioner is a corporation duly organized and existing under the laws of the State of Rhode Island, USA. It is the registrant of the trademark FRUIT OF THE LOOM in the Philippine Patent Office and was issued two Certificates of Registration, one of which was in 1957 and the other in 1958. 2. Private Respondent, a domestic corporation, is the registrant of the trademark FRUIT FOR EVE in the Philippine Patent Office. 3. Both are involved in the merchandise of garments. 4. Petitioner filed a complaint for infringement of trademark and unfair competition against private respondent, alleging that: a. The latters trademark is confusingly similar to the formers, both trademarks being used in womens panties and other textile products. b. That the hang tags used by private respondent is a colorable imitation of those of the petitioner. 5. Private respondent alleged that there was no confusing similarity between the trademarks. 6. At the pre-trial, the following admissions were made: a. That the registered trademark Fruit for Eve bears the notice Reg. Phil. Pat. Off. while that of Fruit of the Loom does not. b. That at the time of its registration, the plaintiff filed no opposition thereto. 7. The lower court rendered a decision in favor of the petitioner, permanently enjoining private respondent from using the trademark Fruit for Eve. 8. Both parties appealed to the former Court of Appeals: a. Petitioner questioned the lower courts failure to award damages in its favor. b. Private respondent sought the reversal of the lower courts decision. 9. The former Court of Appeals rendered a decision reversing the lower courts decision and dismissing the petitioners complaint. The petitioners motion for reconsideration was denied. HELD: In cases involving infringement of trademark brought before this Court, 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. 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. 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. 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. 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. The ordinary purchaser must be thought of as having, and credited with, at least a modicum of intelligence to be able to see the obvious differences between the two trademarks in question.
FACTS: 1. Petitioner is a corporation duly organized and existing under the laws of the State of Rhode Island, USA. It is the registrant of the trademark FRUIT OF THE LOOM in the Philippine Patent Office and was issued two Certificates of Registration, one of which was in 1957 and the other in 1958. 2. Private Respondent, a domestic corporation, is the registrant of the trademark FRUIT FOR EVE in the Philippine Patent Office. 3. Both are involved in the merchandise of garments.

4. Petitioner filed a complaint for infringement of trademark and unfair competition against private respondent, alleging that: a. The latters trademark is confusingly similar to the formers, both trademarks being used in womens panties and other textile products. b. That the hang tags used by private respondent is a colorable imitation of those of the petitioner. 5. Private respondent alleged that there was no confusing similarity between the trademarks. 6. At the pre-trial, the following admissions were made: a. That the registered trademark Fruit for Eve bears the notice Reg. Phil. Pat. Off. whil e that of Fruit of does not. b. That at the time of its registration, the plaintiff filed no opposition thereto.

the Loom

7. The lower court rendered a decision in favor of the petitioner, ordering the cancellation of private respondent's registration of the trademark FRUIT FOR EVE, enjoining it permanently from using trademark 8. Both parties appealed to the former Court of Appeals: a. Petitioner questioned the lower courts failure to award damages in its favor. b. Private respondent sought the reversal of the lower courts decision. 9. The former Court of Appeals rendered a decision reversing the lower courts decision and dismissing the petitioners complaint, holding that the word FRUIT, being a generic word, 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 . The petitioners motion for reconsideration was denied. HELD: In cases involving infringement of trademark brought before this Court, 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. 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. 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. 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. 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. The ordinary purchaser must be thought of as having, and credited with, at least a modicum of intelligence to be able to see the obvious differences between the two trademarks in question.

G.R. No. L-78325 January 25, 1990 DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION, petitioners, vs. COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES, respondents. FACTS: Del Monte Corporation is an entity doing business in the United States and not registered in the Philippines. In order to do business here, it authorized Philippine Packing Corporation (PPC) to manufacture, distribute and sell in the Philippines various agricultural products, including catsup, under the Del Monte trademark and logo. It further authorized PPC to register before the Patent Office its Del Monte catsup bottle configuration. Respondent Sunshine Sause Manufacturing Industries (SSMI) on the other hand, was a registered entity in the Philippines engaged in the manufacture, packing, distribution and sale of various kinds of sauce, identified by the logo Sunshine Fruit Catsup. This logo was registered in the Supplemental Register on

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

products differ, as was done by the trial judge. The ordinary buyer does not usually make such scrutiny nor does he usually have the time to do so. 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. 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, she is apt to be confused by similar labels even if they do have minute differences. 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, is such as to likely result in his confounding it with the original. 11 As observed in several cases, the general impression of the ordinary purchaser, 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. It has been held that in making purchases, the consumer must depend upon his recollection of the appearance of the product which he intends to purchase. 13 The buyer having in mind the mark/label of the respondent must rely upon his memory of the petitioner's mark. 14 Unlike the judge who has ample time to minutely examine the labels in question in the comfort of his sala, the ordinary shopper does not enjoy the same opportunity. A number of courts have held that to determine whether a trademark has been infringed, we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. 15 The court therefore should be guided by its first impression, 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. 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, and to be ever conscious of the fact that marks need not be identical. A confusing similarity will justify the intervention of equity. 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. 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. 20 THERE IS A COLORABLE IMITATION.

At that, 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. The predominant colors used in the Del Monte label are green and red-orange, the same with Sunshine. The word "catsup" in both bottles is printed in white and the style of the print/letter is the same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a tomato. As previously stated, the person who infringes a trade mark does not normally copy out but only makes colorable changes, employing enough points of similarity to confuse the public with enough points of differences to confuse the courts. What is undeniable is the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from the others. When as in this case, Sunshine chose, without a reasonable explanation, 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. 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, 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. SSMI NOT GUILTY OF INFRINGEMENT AS TO ITS USE OF DEL MONTES CATSUP BOTTLE The reason is that the configuration of the said bottle was merely registered in the Supplemental Register. 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. However, we find that Sunshine, despite the many choices available to it and notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was embossed on the bottle, still opted to use the petitioners' bottle to market a product which Philpack also produces. 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. Anent the assumption that the Bureau of Patent had considered other existing patents, it is reiterated that since registration was only in the Supplemental Register, 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

registration. SUNSHINE FRUIT CATSUP LOGO INFRINGED DEL MONTE CATSUP LOGO. As Sunshine's label is an infringement of the Del Monte's trademark, law and equity call for the cancellation of the private respondent's registration and withdrawal of all its products bearing the questioned label from the market. With regard to the use of Del Monte's bottle, the same constitutes unfair competition; hence, the respondent should be permanently enjoined from the use of such bottles.

Asia Brewery vs. CA GR 103543, 5 July 1993; En Banc, Grino-Aquino (J) Facts: In 1988, san Miguel Corporation filed a complaint against Asia Brewery Inc. for infringement of trademark and unfair competition on account of the latters Beer Pale Pilsen or Beer na Beer product whichhas been competing with the formers San Miguel Pale Pilsen for a share of the local beer market. The trialcourt ruled in favor of Asia Brewery. The appellate court, however, over turned the trial courts ruling. AsiaBrewery appealed. Issue: Whether Asia Brewery is guilty of unfair competition, arising from the allegedly confusing similarityin the general appearance of ABIs Beer Pale Pilsen against SMCs San Miguel Pale Pilsen. Held: No. The dominant feature of SMCs trademark is San Miguel Pale Pilsen while ABIs is Beer Pale Pilsen. The word Beer does not appear in SMCs product, nor the words San Miguel appear in ABIs product. Neither the sound, spelling or appearance can Beer Pale Pilsen be said to be confusingly similar to San Miguel Pale Pilsen. San Miguel does not have exclusive rights to the generic or descriptive words pale and pilsen. Neither does it have the exclusive right to use 320 ml. steinie bottle with white rectangular label. 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. The bottle capacity is the standard prescribed by the Metric System Board of the Department of Trade. The white label is the most economical to use and presents the strongest contrast to the bottle. San Miguel cannot claim monopoly to such features as the protection provided by law is confined to non-functional features. Further, Beer Pale Pilsen is not being passed off as San Miguel Beer Pale Pilsen. It does not result to confusion inasmuch as beer is ordered by brand, and is not taken freely from supermarket shelves. The points of dissimilarity of the products outnumber their points of similarity. The appellate court is correct in its finding that Asia Brewery does not infringe upon SMCs trademark nor does it commit unfair competition.

CONRAD VS. CA FACTS: 1. 2. 3. Fitrite and Voctoria Biscuit (plaintiff-appellants) are both domestic corporation, enganged in the business of manufacturing, selling, distributing biscuits and cookies. Bear the trademark SUNSHINE. Conrad and Company (respondent-appellee) is also engaged in the business of importing, selling and distributing biscuits and cookies in the Philippines. 1982- Fitrite filed in BPTTT applications for registration of trademark SUNSHINE, both supplemental or principal registers and this trademark will be used on biscuits and cookies, however Fitrite had used this trademark since 1981. 1983- Supplemental Register was approved (term:20 years); 1990- Proncipal Register was also approved for the same trademark (term: 20 years from the date of approval). Fitrite authorized its sister company Victoria to use this trademark on the biscuits and cookies.

4. 5.

6. 7.

8. 9. 10. 11. 12. 13.

Later on, Fotrite assigned the trademark SUNSHINE AND DEVICE LABEL, together with its interest and business goodwill to Victoria Biscuit Fitrite traced and discovered that Conrad had been selling, and distributing biscuits and cookies bearing the trademark in the Philippines, although, Conrad had never before been engaged in the importation of hoods similar to the Fitrite. Suddenly, Conrad became an exclusive importer and dealer of products of Sunshine Biscuits, Inc in the Philippines. It made its first importation, which was continuously repeated up to the present. Fitrite addressed a letter to Conrad demanding to cease and desist from continuing such acts. 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), doctrine of primary jurisdiction and failure to state a cause of action. TRIAL COURT: In favor of Conrad, court agrees that Conrad had been granted distributorship by Sunshine Biscuits USA over the teritorry. There is a ground for forum shopping ergo, the case should be dismissed CA: Reversed the decision, in favor of Fitrite SC: THERE IS A TRADEMARK INFRINGEMENT, Fitrite is the registrant of the Sunshine trademark in the Philippines;that the Condrad's claim that its principal, Sunshine Biscuits is the registrant of a Sunshine trademark in the US is a mere allegation that needs to be proven. There is an implied admission that Conrad has been importing, selling and distributing biscuits with that trademark without the consent from Fitrite.

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. Real Issue: Whether or not Conrad's acts of importing, selling and distributing biscuits, 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, THERE IS A TRADEMARK INFRINGEMENT FITRITE are the holder of Certificate of Registration (Principal Register) of the Sunshine. 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. REGISTRATION CAN SERVE AS THE BASIS FOR AN ACTION FOR INFRINGEMENT

EMERAL GARMENT vs CA GR 100098, 29 December 1995; First Division, Kapunan (J): Facts: HD Lee Co. owns the trademarks Lee, Lee Riders and Lee sures in both the supplementary and principal registers, as early as 1969 to 1973. In 1981, it filed for the cancellation for the registration of the trademark stylistic Mr. Lee, applied/owned by Emerald Garment Manufacturing Corp. In 1988, the Director of Patents ruled in favor of HD Lee. In 1990, the Court of Appeals affirmed the decision of the Director of Patents. Hence, the petition for review on certiorari. Issue: Whether the trademark stylistic Mr. Lee is confusingly similar to HD Lees trademarks to warrant its cancellation in the supplemental Registry. Held: No. Stylistic Mr. Lee is not a variation of the Lee mark. HD Lees variation follows the format lee riders, leesure, and leeleens and thus does not allow the conclusion that Stylistic Mr. Lee is another variation under HD Lees mark. Although on stylistic Mr. Lees label, the word lee is prominent, the trademark should be considered as a whole and not piecemeal. Further, Lee is a surname. Personal names nor surnames cannot be monopolized as trademarks or tradenames as against others of the same name or

surname. Furthermore, inasmuch as Emerald Garment has shown the use of stylistic Mr. Lee since 1975 through sales invoice from stores and retailers; and that HD Lee was not able for transactions period to 1981; the Supreme Court allowed the use of stylistic Mr. Lee by Emerald Garment.
Emerald Garment Manufacturing v. CA, 251 SCRA 600 Rules on Search and Seizure in Civil Action for Infringement of IP Rights FACTS: On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 for the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation. Private respondent averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as previously registered and used in the Philippines cause confusion, mistake and deception on the part of the purchasing public as to the origin of the goods. On 19 July 1988, the Director of Patents rendered a decision granting private respondent's petition for cancellation and opposition to registration. The Director of Patents, using the test of dominancy, 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. It is undeniably the dominant feature of the mark. 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", meaning, if the competing trademark contains the main or essential or dominant features of another by reason of which confusion and deception are likely to result. HELD: No. Stylistic Mr. Lee is not a variation of the Lee mark. HD Lees variation follows the format leeriders, leesure, and leeleens and thus does not allow the conclusion that Stylistic Mr. Lee is another variation under HD Lees mark. Although on stylistic Mr. Lees label, the word lee is prominent, the trademark should be considered as a whole and not piecemeal. Further, Lee is a surname. Personal names nor surnames cannot be monopolized as trademarks or tradenames as against others of the same name or surname. Furthermore, inasmuch as Emerald Garment has shown the use of stylistic Mr. Lee since 1975through sales invoice from stores and retailers; and that HD Lee was not able for transactions period to 1981;the Supreme Court allowed the use of stylistic Mr. Lee by Emerald Garment.

AMIGO vs. CLUETT PEABODY CO. INC. Facts

MANUFACTURING,

INC.

Cluett Peabody Co., Inc. (a New York corporation) filed a case against Amigo Manufacturing Inc. (a Philippine corporation) for cancellation of trademark, claiming exclusive ownership (as successor in interest of Great American Knitting Mills, Inc.) of the following trademark and devices, as used on men's socks: o a) GOLD TOE; b) DEVICE, representation of a sock and magnifying glass on the toe of a sock; c) DEVICE, 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' ; and d) LINENIZED. [petitioner's] Amigo Manufacturing Inc. trademark and device 'GOLD TOP, 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, and is labeled 'Amigo Manufacturing Inc. Patent Office (Decision): the application of the rule of idem sonans and the existence of a confusing similarity in appearance between two trademarks. 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, and the marks are printed in identical lettering. o Section 4(d) of R.A. No. 166 declares to be unregistrable, '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, as to be likely, when applied to or used in connection with the goods, business or services of the applicant, to cause confusion or mistake or to deceive the purchasers.

[Petitioner]'s mark is a combination of the different registered marks owned by [respondent]. [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. Hence this petition.

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, however, did not rely on the idem sonans test alone in arriving at its conclusion. The Bureau considered the drawings and the labels, the appearance of the labels, the lettering, and the representation of a man's foot wearing a sock. Obviously, its conclusion is based on the totality of the similarities between the parties' trademarks and not on their sounds alone. 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." o Petitioners mark shows that it definitely has a lot of similarities and in fact looks like a combination of the trademark and devices that respondent has already registered; namely, "Gold Toe," the representation of a sock with a magnifying glass, the "Gold Toe" representation and "linenized." Though there are differences in the set of marks, the similarities, however, 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. their dominant features are gold checkered lines against a predominantly black background and a representation of a sock with a magnifying glass. In addition, both products use the same type of lettering. Both also include a representation of a man's foot wearing a sock and the word "linenized" with arrows printed on the label. the names of the brands are similar -- "Gold Top" and "Gold Toe." the overall impression created is that the two products are deceptively and confusingly similar to each other. Clearly, petitioner violated the applicable trademark provisions during that time.

NESTLE vs CA
intellectual Property Law Law on Trademarks, Service Marks and Trade Names Generic Term In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and Technology Transfers an application for the registration of its trademark Flavor Master an instant coffee. Nestle opposed the application as it alleged that Flavor Master is confusingly similar to Nestle coffee products like Master Blend and Master Roast. Nestl e alleged that in promoting their products, the word Master has been used so frequently so much so that when one hears the word Master it connotes to a Nestle product. They provided as examples the fact that theyve been using Robert Jaworski and Ric Puno Jr. as their commercial advertisers; and that in those commercials Jaworski is a master of basketball and that Puno is a master of talk shows; that the brand of coffee equitable or fit to them is Master Blend and Master Roast. CFC Corporation on the other hand alleged that the word Master is a generic and a descriptive term, hence not subject to trademark. The Director of Patents ruled in favor of Nestle but the Court of Appeals, using the Holistic Test, reversed the said decision. ISSUE: Whether or not the Court of Appeals is correct. HELD: No. The proper test that should have been used is the Dominancy Test. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common household item. The use of the word Master by Nestle in its products and commercials has made Nestle acquire a connotation that if its a Master product it is a Nestle product. As such, 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. In addition, the word MASTER is neither a generic nor a de scriptive term. As such, said term can not be invalidated as a trademark and, therefore, may be legally protected. Generic terms are those which constitute the common descriptive name of an article or substance, or comprise the genus of which the particular product is a species, or are commonly used as the name or description of a kind of goods, or imply reference to every member of a genus and the exclusion of individuating characters, or refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product, and are not legally protectable.

On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in its normal and natural sense, it forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not know what it is, or if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods, 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. Rather, the term MASTER is a suggestive term brought about by the advertising scheme of Nestle. Sugges tive terms are those which, in the phraseology of one court, require imagination, thought and perception to reach a conclusion as to the nature of the goods. Such terms, which subtly connote something about the product, are eligible for protection in the absence of secondary meaning. While suggestive marks are capable of shedding some light upon certain characteristics of the goods or services in dispute, they nevertheless involve an element of incongruity, figurativeness, or imaginative effort on the part of the observer.

MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. vs. E.J. GALLO WINERY and THE ANDRESONS GROUP, INC. FACTS: On March 12, 1993, respondents sued petitioners in the RTC-Makati for trademark and trade name infringement and unfair competition, with a prayer for damages and preliminary injunction. They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winerys and Gallo and Ernest & Julio Gallo trademarks established reputation and popularity, thus causing confusion, deception and mistake on the part of the purchasing public who had always associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winerys wines. In their answer, petitioners alleged, among other affirmative defenses that: petitioners Gallo cigarettes and Gallo Winerys wine were totally unrelated products. To wit: 1. Gallo Winerys GALLO trademark registration certificates covered wines only, and not cigarettes; 2. GALLO cigarettes and GALLO wines were sold through different channels of trade; 3. the target market of Gallo Winerys wines was the middle or high -income bracket while Gallo cigarette buyers were farmers, fishermen, laborers and other low-income workers; 4. the dominant feature of the Gallo cigarette was the rooster device with the manufacturers name clearly indicated as MIGHTY CORPORATION, while in the case of Gallo Winerys wines, it was the full names of the founders -owners ERNEST & JULIO GALLO or just their surname GALLO; On April 21, 1993, the Makati RTC denied, for lack of merit, respondents prayer for the issuance of a writ of preliminary injunction. On August 19, 1993, respondents motion for reconsideration was denied. On February 20, 1995, the CA likewise dismissed respondents petition for review on certiorari. After the trial on the merits, however, the Makati RTC, on November 26, 1998, held petitioners liable for, permanently enjoined from committing trademark infringement and unfair competition with respect to the GALLO trademark. On appeal, the CA affirmed the Makati RTCs decision and subsequently denied petitioners motion for reconsideration. ISSUE: Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for the reason alone that they were purportedly forms of vice. HELD: Wines and cigarettes are not identical, similar, competing or related goods. In resolving whether goods are related, 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 products quality, quantity, or size, including the nature of the package, wrapper or container

 the nature and cost of the articles the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or quality the purpose of the goods whether the article is bought for immediate consumption, that is, 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, how they are distributed, marketed, displayed and sold. 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. The simulation, in order to be objectionable, 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 petitioners are not liable for trademark infringement, unfair competition or damages. WHEREFORE, petition is granted. ------Facts: Respondent manufacture wines and uses the trademark Gallo for its product. On the other hand, the petitioner is a manufacturer of cigarette and also uses Gallo in its products. Issue: Is there infringement? Held: at the time the cause of action accrued in this case, the IPC was not yet enacted so the relevant laws used were the Trademark Law and the Paris Convention. The SC held that there was no infringement. The use of the respondent of the mark Gallo for its wine products was exclusive in nature. 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, in which case defendants goods are then brought as the plaintiffs and its poor quality reflects badly on the plaintiffs reputation. Confusion of Business wherein the goods of the parties are different but the defendants product can reasonably (though mistakenly) be assumed to originate from the plaintiff, thus deceiving the public into believing that there is some connection between the plaintiff and defendant which, in fact, does not exist. In determining the likelihood of confusion, the Court must consider: (a) the resemblance between the trademarks; (b) the similarity of the goods to which the trademark is attached; (c) the likely effect on the purchaser; and (d) the registrants express or implied consent and other fair and equitable considerations. In this case, the SC employing the dominancy test, concluded that there is no likelihood of confusion. They materially differ in color scheme, art works and markings. Further, the two goods are not closely related because he products belong to different classifications, form, composition and they have different intended markets or consumers. McDonalds Corp. v. Macjoy Fastfood Corp., 514 SCRA 95 (2007) Rules on Search and Seizure in Civil Action for Infringement of IP Rights FACTS:

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

Goods, namely, fried chicken, chicken barbeque, burgers, fries, spaghetti, etc. McDonalds registered trademark covers goods similar if not identical to those covered by the respondents application. Predominant features such as the "M," "Mc," and "Mac" appearing in both McDonalds marks and the MACJOY & DEVICE" easily attract the attention of would-be customers. Even non-regular customers of their fast food restaurants would readily notice the predominance of the "M" design, "Mc/Mac" prefixes shown in both marks. Such that the common awareness or perception of customers that the trademarks McDonalds mark and MACJOY & DEVICE are one and the same, or an affiliate, or under the sponsorship of the other is not far-fetched. By reason of the respondents 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, it chose the word "MACJOY," the only logical conclusion deducible there from is that the respondent would want to ride high on the established reputation and goodwill of the MCDONALDs marks, which,as applied to petitioners restaurant business and food products, is undoubtedly beyond question. 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, the application should be rejected and dismissed outright, even without any opposition on the part of the owner and user of a previously registered label or trademark, this not only to avoid confusion on the part of the public, but also to protect an already used and registered trademark and an established goodwill. WHEREFORE, the instant petition is GRANTED. Accordingly, the assailed Decision and Resolution of the Court of Appeals in CA-G.R. SP NO. 57247, are REVERSED and SETASIDE and the Decision of the Intellectual Property Office in Inter Partes Case No.3861 is REINSTATED. Mc Donalds Corp vs LC Big Mak Burger Inc. (GR No 143993, Aug 18, 2004) The SC held that the respondent is liable for infringement because it violated Sec 155.1 of the IPC which stated that any person who shall, without the consent of the owner of the registered mark use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive. Addendum: TEST OF TRADEMARK INFRINGEMENT 1) Dominancy Test consists in seeking out the main, essential or dominant features of a mark. 2) Holistic Test takes stock of the other features of a mark, taking into consideration the entirety of the marks. DIFFERENTIATED FROM UNFAIR COMPETITION 1) Cause of action: in infringement, the cause of action is the unauthorized use of a registered trademark; in unfair competition, it is the passing off of ones goods as those of another merchant. 2) Fraudulent intent is not necessary in infringement, but necessary in UC. 3) Registration of trademarks: in infringement, it is a pre-requisite; in UC, it is not required. 4) Class of goods involved: in infringement, the goods must be of similar class; in UC, the goods need not be of the same class. v infringement is a form of unfair competition REMEDIES AVAILABLE IN CASE OF INFRINGEMENT OF A REGISTERED MARK a) Sue for damages (Sec. 156.1); b) Have the infringing goods impounded (Sec. 156.2); c) Ask for double damages (Sec. 156.3) d) Ask for injunction (156.4) e) Have the infringing goods disposed of outside the channels of commerce (Sec. 157.1) f) Have the infringing goods destroyed (Sec. 157.1) g) File criminal action (Sec. 170); h) Administrative Sanctions

PRO LINE SPORTS CENTER, INC. and QUESTOR CORPORATIONvs.COURT OF APPEALS DOCTRINE: Sale is not indispensable requirement in unfair competition. FACTS QUESTOR (US corp) owner of TM Spalding appearing in sporting goods. PRO-LINE (domestic corp) the exclusive dstributor of Spalding in the Phil.. UNIVERSAL (domestic) engaged in sale & manufacture of sporting goods. SEHWANI impleaded as his capacity as President of UNIVERSAL. 16 years ago, GM of PRO LINE sent a letter to NBI alleging the manufacture of fa ke Spalding balls by UNIVERSAL. Through a Search warrant, these were all seized by the NBI. Also through another motion of NBI, the UNIVERSALs factory was lock and sealed. But such order was lifted through the motion of UNIVERSAL. Meanwhile, PRO LINE & QUESTOR filed a criminal complaint for unfair competition against UNIVERSAL in Ministry of Justice. They file a petition for review seeking reversal of dismissal of the complaint: DISMISSED. CA affirmed. While pending CA affirmed the order of lifting the padlock from UNIVERSALS factory. Such order was challenged leading to the grant of TRO in favor of the Petitioners. 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. Dismissed. Sehwani filed a civil case for damafe as a result. Granted.

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. 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. In this case the manufacture of the Spalding balls was obviously done to deceive buyers. The sale would have pushed through were it not for the timely seizure.

Converse Rubber Corporation v. Universal Rubber Products, 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. Converse Rubber Corp. filed its opposition on the ground that the trademark is confusingly similar to the word converse which was part of its corporate name, and which would result in injury to its business reputation and goodwill. Petitioners lone witness, Mrs. Carmen B. Pacquing, a duly licensed private merchant with stores at the Sta. Mesa Market and in Davao City, testified that she had been selling CONVERSE rubber shoes in the local market since 1956 and that sales of petitioners 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, La Salle and San Beda. Mrs. Pacquing, further stated that she knew petitioners 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.S.A. Respondent, on the other hand, 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. Invoices were submitted as evidence of such sales. 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 corporations sale of Universal Converse rubber shoes and rubber sandals. The director of Patents dismissed converse Rubbers opposition. 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, it designates to the mind of the public that particular corporation. Opposers proof of its corporate personality cannot establish the use of the word CONVERSE in any sense, as it is already stipulated that it is not licensed to do business in the Philippines, and is not doing business of its own in the Philippines. If so, it will be futile for it to establish that CONVERSE as part of its corporate name Identifies its rubber shoes. Besides, it was also stipulated that opposer [petitioner], in manufacturing rubber shoes uses thereon the trademark CHUCK TAYLOR and ALL STAR and DEVICE and none other. Furthermore, inasmuch as the Opposer never presented any label herein, or

specimen of its shoes, whereon the label may be seen, notwithstanding its witness testimony touching upon her Identification of the rubber shoes sold in her stores, no determination can be made as to whether the word CONVERSE appears thereon. With its motion for reconsideration denied, it filed a petition for review with the Supreme Court. ISSUE: Whether Universal Rubber can appropriate Converse. HELD: NO. Converse Rubber has earned a business reputation and goodwill in the Phil ippines. The word converse has been associated with its products, converse chuck Taylor, Converse all Star, All Star Converse Chuck Taylor, or Converse Shoes Chuck and Taylor. Converse has grown to be identified with Converse rubber products and has acquired a second meaning within the context of trademark and tradename laws. 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, similar to that of Converse Chuck Taylor. Solid Triangle v. Sheriff, 370 SCRA 491 (2001) Unfair Competition FACTS: Judge Bruselas, Jr., Presiding Judge of RTC, Quezon City, upon application of the Economic Intelligence and Investigation Bureau (EIIB), issued a search warrant against herein private respondent Sanly Corporation for violation of Sec. 168 of R.A. No. 8293 for unfair competition. The private respondent corporation contends that there is no unfair competition being committed since the products that he sells, particularly Mitsubishi photographic color paper, are genuine products of Mitsubishi that he buys from Hong Kong while the complainant purchases the same kind of paper from Japan. 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. 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. Sanly Corporation did not pass off the subject goods as that of another. Indeed, it admits that the goods are genuine Mitsubishi photographic paper, which it purchased from a supplier in Hong Kong. Petitioners also allege that private respondents made it appear that they were duly authorized to sell or distribute Mitsubishi Photo Paper in the Philippines. Assuming that this act constitutes a crime, there is no proof to establish such an allegation.

SEHWANI vs IN-N-OUT BURGER

***I acquired this in the internet and it summarized the case better than I could.

On October 15, 2007, the Third Division of the Supreme Court, the highest judiciary authority in the Philippines, 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. In-N-Out Burger, Inc. (INOB), a U.S.-based hamburger fast food chain, applied to register its trademark IN-N-OUT Burger & Arrow Design and service mark IN-N-OUT in the Philippines in June 1997. During the application, INOB discovered that a local company, Sehwani, Inc., had already registered IN-N-OUT in 1993 for restaurant services, without INOBs permission. Sehwani had appointed a licensee, Benitas Frites Inc., and is connected to a restaurant in Pasig City that was using INOBs trademarks. INOBs demands to Sehwani were basically ignored. As a result, INOB filed with the Philippines Intellectual Property Office (IPO) an administrative complaint against Sehwani, Benitas Frites, Inc. and the restaurant operator in Pasig City for unfair comp etition and for cancellation of the trademark registration, along with a claim for damages. In 2003, the Bureau of Legal Affairs (BLA) of the IPO rendered its decision on the administrative complaint. The BLA held, on the basis of the evidence filed, that IN-N-OUT is an internationally well-known mark and ordered that Sehwanis prior registration of IN-N-OUT be cancelled. In coming to its decision, the BLA also remarked that INOB has legal capacity to sue in the Philippines for IP violations. Sehwanis app eal to the Director General of the IPO was filed too late and accordingly dismissed on the technicality. Sehwanis petition to the Court of Appeal was also dismissed for lack of merit. Not giving up, 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.

The Supreme Court was unmoved by Sehwanis submissions. In ruling for INOB, the Supreme Court noted that both the United States and the Philippines are signatories to the Paris Convention. INOBs causes of action were anchored in Articles 6bis and 8 of the Paris Convention. In particular, 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, which in the Philippines is the IPO. Whether a trademark is well known is a factual question and involves an appreciation of the evidence adduced before the BLA. In the face of the numerous trademark registrations of INOB around the world and the comprehensive advertisements presented at trial, the Supreme Court held that the BLA correctly found that the trademarks of INOB are internationally well known. The Supreme Court went on to explain that the fact that INOBs 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. 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 decision affirms the Philippines commitment to protect the rights of owners of internationally well-known marks. COCA COLA VS. GOMEZ FACTS: 14. Coca- 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. The act of hoarding these bottles was reported by the security guard of Coca Cola who had gained the acces into the Pepsi compound. 15. MTC: issued the search warrant (all in all 5,500 bottles) 16. 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, the ambiguity should be construed against the State. (6) had checked the logbook, and it did not show that someone visited or enter the plant on that particular date. (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. 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, (3) it violated RA 623, the law regulating the use of stamped or marked bottles, boxes and other similar containers 18. MTC: In favor of Coca Cola. Denied the motions. The issuance of search warrant is legal. 19. RTC: Reversed the decision. No probable cause. Non- commission of the crime of unfair competition. No grave of abuse of discretion on the part of MTC's judge. 20. 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. They were prejudice by this act. 21. MAIN CONTENTION OF PEPSI: IP CODE does not criminalize bottle hoarding, as the acts penalized must always involved fraud and deceit. The hoarding does not makr them liable for unfair competition as there was no deception or fraud on the end-users. ISSUE: 1. Whether or not MTC was correct in issuing the search warrant for probable violation of the IP Code? 2. Whether or not the hoarding of the bottles constitute an offense under the IP code?

HELD: Yes. the issuance of the search warrant was incorrect for it was issued on an invalid substantive basis. The act of pepsi did not violate Sec. 168.3 (c) of the IP Code. Since there was no crime to speak of there is no need to fulfill such substantive requirement.

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). The probable cause will be determined personally by the judge (procedural). 2. No. the hoarding of the Pepsi bottles does not constitute any violation under the IP code. IP does not cover every unfair act committed in the course of business; 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. Also, Hoarding is not even an act within the contemplation of the IP Code. Hoarding does not relate to any patent, trademark, trade name or service mark that the respondent have invanded or used without proper authority from the petitioner. NOTE: TRUE TEST OF UNFAIR COMPETITION 1. 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. 2. DECEPTION AND FRAUD are still the key elements that must be present for unfair competition to exist

Superior Commercial Enterprises v. Kunnan Enterprises Ltd., GR No. 169974. April 20, 2010 Unfair Competition
FACTS: On February 23, 1993, SUPERIOR filed a complaint for trademark infringement and unfair competition with preliminary injunction against KUNNAN and SPORTS CONCEPT with the RTC, docketed as Civil Case No. Q93014888. In support of its complaint, SUPERIOR first claimed to be the owner of the trademarks, trading styles, company names and business names KENNEX, KENNEX & DEVICE, PROKENNEX and PRO-KENNEX (disputed trademarks). Second, it also asserted its prior use of these trademarks, presenting as evidence of ownership the Principal and Supplemental Registrations of these trademarks in its name. Third, SUPERIOR also alleged that it extensively sold and advertised sporting goods and products covered by its trademark registrations. Finally, SUPERIOR presented as evidence of its ownership of the disputed trademarks the preambular clause of the Distributorship Agreement dated October 1, 1982(Distributorship Agreement) it executed with KUNNAN, which states: Whereas, KUNNAN intends to acquire the ownership of KENNEX trademark registered by the [sic] Superior in the Philippines. Whereas, the [sic] Superior is desirous of having been appointed [sic] as the sole distributor by KUNNAN in the territory of the Philippines. [Emphasis supplied.] In its defense, KUNNAN disputed SUPERIORs claim of ownership and maintained that SUPERIOR as mere distributor from October 6, 1982 until December 31, 1991 fraudulently registered the trademarks in its name. KUNNAN alleged that it was incorporated in 1972, under the name KENNEX Sports Corporation for the purpose of manufacturing and selling sportswear and sports equipment; it commercially marketed its products in different countries, including the Philippines since 1972. It created and first used PRO KENNEX, derived from its original corporate name, as a distinctive trademark for its products in 1976. KUNNAN also alleged that it registered the PRO KENNEX trademark not only in the Philippines but also in 31 other countries, and widely promoted the KENNEX and PRO KENNEX trademarks through worldwide advertisements in print media and sponsorships of known tennis players. On October 1, 1982, after the expiration of its initial distributorship agreement with another company, KUNNAN appointed SUPERIOR as its exclusive distributor in the Philippines under a Distributorship Agreement whose pertinent provisions state: Whereas, KUNNAN intends to acquire ownership of KENNEX trademark registered by the Superior in the Philippines. Whereas, the Superior is desirous of having been appointed [sic] as the sole distributor by KUNNAN in the territory of the Philippines. . 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, the consolidated Petitions for Cancellation and the Notices of Opposition are hereby GRANTED. Consequently, the trademark PRO-KENNEX bearing Registration Nos. 41032, 40326, 39254, 4730, 49998for the mark PRO-KENNEX issued in favor of Superior Commercial Enterprises, Inc., herein RespondentRegistrant under the Principal Register and SR No. 6663 are hereby CANCELLED.

Accordingly, trademark application Nos. 84565 and 84566, likewise for the registration of the mark PRO-KENNEX are hereby REJECTED. It dismissed SUPERIORs 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. The CA found the Certificates of Principal and Supplemental Registrations and the whereas clause of the Distributorship Agreement insufficient to support SUPERIORs claim of ownership over the disputed trademarks. The CA stressed that SUPERIORs 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; at best, registration merely raises a presumption of ownership that can be rebutted by contrary evidence. The CA further emphasized that the Certificates of Supplemental Registration issued in SUPERIORs name do not even enjoy the presumption of ownership accorded to registration in the principal register; it does not amount to a prima facie evidence of the validity of registration or of the registrants exclusive right to use the trademarks in connection with the goods, business, or services specified in the certificate From jurisprudence, 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. The essential elements of unfair competition are (1) confusing similarity in the general appearance of the goods; and (2) intent to deceive the public and defraud a competitor. Jurisprudence also formulated the following true 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. One of the essential requisites in an action to restrain unfair competition is proof of fraud; the intent to deceive, actual or probable must be shown before the right to recover can exist. In the present case, no evidence exists showing that KUNNAN ever attempted to pass off the goods it sold (i.e. sportswear, sporting goods and equipment) as those of SUPERIOR. In addition, there is no evidence of bad faith or fraud imputable to KUNNAN in using the disputed trademarks. Specifically, 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. In McDonalds Corporation v. L.C. Big Mak Burger, Inc., 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, thus preventing the public from being deceived that the goods originate from the trademark owner. ISSUE: In this case, no issue of confusion arises because the same manufactured products are sold; only the ownership of the trademarks is at issue. Finally, 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 SUPERIORs name, the latter is left with no effective right to make a claim. In other words, with the CAs final ruling in the Registration Cancellation Case, SUPERIORs case no longer presents a valid cause of action. For this reason, the unfair competition aspect of the SUPERIORs case likewise falls. Samson vs Daway (GR No 160054-55, July 21, 2004) Facts: The petitioner allegedly sold or offers the sale of garment product using the trademark Caterpillar to the prejudice of its previous user, private respondent in this case. The respondent filed the case to the RTC. 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. Issue: Where do you file a suit for unfair competition? Held: The SC held that under Sec 163 of the IPC, actions for unfair competition shall be brought before the proper courts with appropriate jurisdiction under existing laws. The law contemplated in Sec 163 of IPC is the Trademark Law. Sec 27 of Trademark Law states that action for unfair competition shall be filed with the CFI (now RTC). Since RA 7691 is a general law and IPC in relation to Trademark law is a special law, the latter shall prevail. Actions for unfair competition therefore should be filed with the RTC. PHILIPS EXPORT VS. COURT OF APPEALS- Corporate Trade Name

A corporations right to use its corporate and trade name is a property right, a right in rem, which it may assert and
protect against the whole world. FACTS: Philips Export B.V. (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. However, 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, 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. This was affirmed by the SEC en banc and the Court of Appeals thus the case at bar. ISSUE: Whether or not Standard Philips can be enjoined from using Philips in its corporate name RULING: YES A corporations right to use its corporate and trade name is a property right, a right in rem, which it may assert and protect against the whole world. According to Sec. 18 of the Corporation Code, 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, confusing or contrary to existing law. For the prohibition to apply, 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, confusing or contrary to existing law. With regard to the 1st requisite, PEBV adopted the name Philips part of its name 26 years before Standard Philips. As regards the 2nd, the test for the existence of confusing similarity is whether the similarity is such as to mislead a person using ordinary care and discrimination. Standard Philips only contains one word, Standard, different from that of PEBV. The 2 companies products are also the same, or cover the same line of products. Although PEBV primarily deals with electrical products, it has also shipped to its subsidiaries machines and parts which fall under the classification of chains, rollers, belts, bearings and cutting saw, the goods which Standard Philips also produce. Also, among Standard Philips primary purposes are to buy, sell trade x x x electrical wiring devices, electrical component, electrical supplies. Given these, there is nothing to prevent Standard Philips from dealing in the same line of business of electrical devices. The use of Philips by Standard Philips tends to show its intention to ride on the popularity and established goodwill of PEBV. ARMCO STEEL CORPORATION vs SEC FACTS: ARMCO STEEL CORPORATION (ARMCO OHIO) o Organized in OHIO USA, obtained from Philippine Patent Office, Certificate of registration for its trademark o Trademark: word ARMCO and a triangular device for ferrous metals and ferrous meal castings and forgings. o obtained affidavit of use. 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. An ARMCO STEEL CORPORATION, was incorporated in the Philippines (ARMCO PHILS) to contrac fabricate, manufure of iron, steel, 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. SEC grants the petition o Ordered to take out the word ARMCO and substitute another word. MR by ARMCO Phils denied because filed out of time etc. CA dismissed the case because beyond reglementary period. RESPONDENT ARMCO PHils amended its name to ARMCO STRUCTURES Inc which was filed and approved by SEC. 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.

 ISSUES: 1. 2.

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. 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 RMCO STRUCTURES? YES

HELD: 1. NOT IN SUBSTANTIAL COMPLAINCE WITH SEC ORDER that the word ARMCO must be removed from its corporate name. o It s contravention therewith. o It was erroneously accepted and approved by the SEC for had petitioner revealed the order at the time of registration, SEC could not have been accepted it. IT IS NOT ONLY SIMILAR BUT ALSO IDENTICAL It is indisputable that ARMCO-STEEL-OHIO, having patented the term 'Armco' as part of its trademark on its steel products, is entitled to protection in the use thereof in the Philippines. 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. Clearly, the two companies have the right to the exclusive use and enjoyment of said term. ARMCO STEEL-PHILIPPINES, has not only an Identical name but also a similar line of business, as shown above, as that of ARMCO STEEL- OHIO. People who are buying and using products bearing the trademark "Armco" might be led to believe that such products are manufactured by the respondent, when in fact, they might actually be produced by the petitioners. Thus, 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.