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The trial court noted that while the subject trademarks are not identical, it is obviously clear that the word "Ginebra" is the dominant feature in the trademarks. The trial court stated that there is a strong indication that confusion is likely to occur since one would inevitably be led to conclude that both products are affiliated with San Miguel due to the distinctive mark "Ginebra" which is readily identified with San Miguel. The trial court concluded that ordinary purchasers would not examine the letterings or features printed on the label but would simply be guided by the presence of the dominant mark "Ginebra." Any difference would pale in significance in the face of evident similarities in the dominant features and overall appearance of the products. 2. Section 123.1(h) of the IP Code states that a mark cannot be registered if it "consists exclusively of signs that are generic for the goods or services that they seek to identify." 3. The trial court conceded to Tanduay‘s assertion that the term "Ginebra" is a generic word; hence, it is non-registrable because generic words are by law free for all to use. However, the trial court relied on the principle that even if a word is incapable of appropriation as a trademark, the word may still acquire a proprietary connotation through long and exclusive use by a business entity with reference to its products. The purchasing public would associate the word to the products of a business entity. The word thus associated would be entitled to protection against infringement and unfair competition.The trial court held that to constitute trademark infringement, it was not necessary that every word should be appropriated; it was sufficient that enough be taken to deceive the public in the purchase of a protected article. 4. The CA upheld the trial court‘s ruling that San Miguel has sufficiently established its right to prior use and registration of the mark "Ginebra" as a dominant feature of its trademark. "Ginebra" has been identified with San Miguel‘s goods, thereby, it acquired a right in such mark, and if another infringed the trademark, San Miguel could invoke its property right. 5. Tanduay invokes Section 156.1 of the IP Code61 as the basis for the computation of damages. San Miguel refutes Tanduay‘s claim that the injury which San Miguel stands to suffer can be measured with reasonable accuracy as the legal formula to determine such injury is provided in Section 156.1 of the IP Code.
wrappers. which would likely mislead the buyer into believing that such goods belong to the latter. Indeed. offering for sale. receptacles or advertisements intended to be used in commerce upon or in connection with the sale. Section 168. in this case. counterfeit. PETRON CORPORATION 1. 3. or to deceive. no proof has been shown that Bicol Gas has gone into the business of distributing imitation Petron Gasul LPGs. copy or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale. However.B. the allegations in the complaint do not show that Bicol Gas painted on its own tanks Petron‘s Gasul trademark or a confusingly similar version of the same. without the consent of the owner of the registered mark: 1. Section 155 of R.3 (a) of R. or 2. distribution.A. counterfeit. It was not shown that there was intent on the part of the responsible officers and staff of Bicol Gas to deceive the public and defraud its competitor as to what it is selling. MANUEL C. packages. The law punishes the act of giving one‘s goods the general appearance of the goods of another. or to cause mistake.” KPE and Petron have to show that the alleged infringer used Petron‘s Gasul trademark or a confusingly similar trademark on Bicol Gas tanks with intent to deceive the public and defraud its competitor as to what it is selling. copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction. counterfeit. or advertising of goods or services on or in connection with which such use is likely to cause confusion. or to deceive. Moreover. more of a captured cylinder belonging to competition. or to cause mistake. or to cause mistake. The acts constituting trademark infringement as provided in Section 155 must likely cause confusion. 2. advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion. “Use in commerce any reproduction. there is no showing that Bicol Gas has been giving its LPG tanks the general appearance of the tanks of Petron‘s Gasul. 8293 (also in relation to Section 170) describes the acts constituting unfair competition. Here. et al vs.. distribution. ESPIRITU. prints. As already stated. JR. 8293 provides that trademark infringement exists when any person who shall. the truckfull of Bicol Gas tanks that the KPE manager arrested on a road in Sorsogon just happened to have mixed up with them one authentic Gasul tank that belonged to Petron. or to deceive. offering for sale. copy or colorable imitation to labels. red tags showing the shadow of a black cat. Reproduce. .A. signs. the one tank bearing the mark of Petron Gasul found in a truck full of Bicol Gas tanks was a genuine Petron Gasul tank.
as amended. other than the purpose for which the manufacturer or seller registered the same. 623. MARIE ANTONETTE TY. Hence. Sec. No. they may be prosecuted for that offense. disposal or trafficking. versus NBI SUPERVISING AGENT MARVIN E. R. However.. and ALVIN TY.A. its corporate officers or employees. in the case at bar. JASON ONG. C. the liability of the stockholders and members of the board of directors of Bicol Gas with respect to the charge of unlawfully filling up a steel cylinder or tank that belonged to Petron. that Bicol Gas employees filled up with their firm‘s gas the tank registered to Petron and bearing its mark without the latter‘s written authority. DE JEMIL. Yao. WILLY DY. directors. ARNEL U. may themselves be individually held answerable for the crime. without the written consent of the manufacturer or seller of gases contained in duly registered steel cylinders or tanks. December 15. In order that a stockholder may be held criminally liable for acts committed by the corporation as a separate entity. 3 (c) of BP 33 – BP 33 is a law which prohibits the refilling of petroleum gas of another company‘s or firm‘s registered steel cylinders without such company‘s or firm‘s written authorization.R. 2. and TOTALGAZ DEALERS ASSOCIATION. and stockholders. for the purpose of sale. A corporation is an entity separate and distinct from the persons of its officers.4. PETRON GASUL DEALERS ASSOCIATION. distribution or advertising of goods especially if such use is likely to cause confusion or mistake to . Stockholders are basically investors in a corporation. whether by action or inaction. 182147. 2010 1. They do not have a hand in running the day-to-day business operations of the corporation unless they are at the same time directors or officers of the corporation. it must be shown that he had knowledge of the criminal act committed in the name of the corporation and that he took part in the same or gave his consent to its commission. punishes any person who. through whose act. default or omission the corporation commits a crime. Sr. vs. fills the steel cylinder or tank. should not be charged along with the Bicol Gas employees who were pointed to as directly involved in overt acts constituting the offense. 5. People – A person can also be held liable for trademark infringement by the mere unauthorized use of a container which bears a registered trademark for the purpose of sale. TY. G. Assuming the allegations of KPE‘s manager to be true.
wherein the Court of Appeals imposes a pemalty other than death. on the other hand. 2009 Dec 16. Issue of ownership of the cylinders – The fact of ownership of the cylinders is not material in determining whether there has been a violation of BP 33. 3. 3. As a general rule. 2. convincing and adequate to establish a proposition are issues of fact. 181571 1. D. ******There exists a question of law when there is doubt on what the law applicable to a certain set of facts is. arise when there is an issue regarding the truth or falsity of the statement of facts.buyers or consumers. Tampering. A question of law as distinguished with question of fact is clearly enunciaed in the case of Belgica v Belgica 531 SCRA 331. Right of the brand owners – The brand owners remain as the owners of the embossed. G. Such acts violates the brand owners‘ rights over the registered marked embossed in the LPG cylinders. 5. 1st Division. reclusion perpetua. Respondent. he thereby commited acts constituting infringement of trademark as set out in Sec 155 of the Intellectual Property Code. Petitioner. changing the appearance of the branded cylinder – Tampering or changing the appearance of branded LPG cylinders is not only a mode of perpetrating the offense under BP 33 but it also constitutes infringement of trademark under Sec. we review cases decided by the CA only if they involve questions of law raised and distinctly set forth in the petition. Questions on whether certain pieces of evidence should be accorded probative value or whether the proofs presented by one party are clear. Such questions are not subject to review by this Court. The review on appeal of a decision in a criminal case. Questions of fact.R. versus PEOPLE OF THE PHILIPPINES. stamped and marked LPG cylinders even if the cylinders are possessed by the customers or consumers. No. 4. JUNO BATISTIS. or life . 155 of the IP Code. A violation of said is committed regardless of the buyer or possessor of the branded LPG cylinder by the mere refilling of the cylinder without authority from the brand owner. Where there is no question that the accused exerted the effort to make the counterfeit products look genuine to deceive the unwary public into regarding the products as genuine.
SAN FRANCISCO COFFEE & ROASTERY. Rule 45. not the errors of the RTC. The appellants petition for review on certiorari should raise only the errors committed by the appellate court not the errors of the RTC. respondent.. 169504.. or life imprisonment. March 3. considering that his petition for review on certiorari should raise only the errors committed by the CA as the appellate court. Judge de Guzman. Pursuant to Section 3.Jr. * RA 8293 dispensed with registration of a trade name with the IPO as a requirement for the filing of an action for infringement. 1. of the Rules of Court. INC. therefore. The petition for review replicates Batistis‘ appellant's brief filed in the CA.27 the imposition of an indeterminate sentence with maximum and minimum periods in criminal cases not excepted from the coverage of the Indeterminate Sentence Law pursuant to its Section 228 is mandatory. A petition for review on certiorari raises only questions of law. Sec. A trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark. No.17 Rule 122. . wherein the CA imposes a penalty other than death. whose Section 1 requires that the penalty of imprisonment should be an indeterminate sentence. COFFEE PARTNERS. His appeal is. and Section 9.imprisonment. Rules of Court. The imposition of indeterminate sentence with maximum and minimum periods in criminal cases not excepted from the coverage of the Indeterminate Sentence Law pursuant to its Section 2 is mandatory. All that is required is that the trade name is previously used in trade or commerce in the Philippines. E. the review on appeal of a decision in a criminal case. is by petition for review on certiorari.R. vs. reclusion perpetua. improper. 5. is by petition for review on certiorari.19 a true indication that the errors he submits for our review and reversal are those he had attributed to the RTC.18 Rule 45. G. INC. 2010 1. According to Spouses Bacar v... 4. He thereby rests his appeal on his rehashed arguments that the CA already discarded. petitioner. The straight penalty the CA imposed was contrary to the Indeterminate Sentence Law.
‖ since the registration of the business name with the DTI in 1995. Petitioner and respondent are engaged in the same business of selling coffee. . *The descriptive words ―SAN FRANCISCO COFFEE‖ are precisely the dominant features of respondent‘‘s trade name. It is the likelihood of confusion that is the gravamen of infringement. there are two tests. the holistic test entails a consideration of the entirety of the marks as applied to the products. Respondent has acquired an exclusive right to the use of the trade name ―SAN FRANCISCO COFFEE & ROASTERY. But there is no absolute standard for likelihood of confusion. The right proceeds from the theory that it is a fraud on the corporation which has acquired a right to that name and perhaps carried on its business thereunder. or the same name with a slight variation in such a way as to induce persons to deal with it in the belief that they are dealing with the corporation which has given a reputation to the name. The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception. Trade names shall be protected.and confusion or deception is likely to result. precedents must be evaluated in the light of each particular case. The likelihood of confusion is higher in cases where the business of one corporation is the same or substantially the same as that of another corporation. whether as a trade name or a trademark likely to mislead the public. 4. The consuming public will likely be confused as to the source of the coffee being sold at petitioner‘s coffee shops. infringement occurs. and sometimes peculiar.A corporation has an exclusive right to the use of its name. whether wholesale or retail. *The Court cannot allow petitioner to profit by the name and reputation so far built by respondent without running afoul of the basic demands of fair play. 3. In determining similarity and likelihood of confusion. per se. in determining confusing similarity. that another should attempt to use the same name. It is only the combination of the words (respondent‘s trade name ―SAN FRANCISCO COFFEE‖) that is protected against infringement. Only the particular. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or to deceive consumers. is untenable. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both marks in order that the observer may draw his conclusion whether one is confusingly similar to the other. in infringement cases.2. Exact duplication or imitation is not required. against any unlawful act including any subsequent use of the trade name by a third party. including the labels and packaging. even prior to or without registration with the IPO. ********Geographic or generic words are not. ***** 5. thus constituting infringement. In contrast. essential. Not only the law but equity considerations hold petitioner liable for infringement of respondent‘s trade name. Thus. circumstances of each case can determine its existence. INC. and dominant features of another. subject to exclusive appropriation. If the competing trademark contains the main. Petitioner‘s argument that ―San Francisco‖ is just a proper name referring to the famous city in California and that ―coffee‖ is simply a generic term.
a limited criminal one. does not provide for the filing of counterclaims for damages against those who may have improperly sought the issuance of the search warrant. 2. The proceeding under Rule 126. These safeguards exist to protect persons from possible abuses that may occur if searches were done surreptitiously or clandestinely. assuming the truth of the facts that plaintiff alleges in it. GONZAGA. The Del Rosarios did not allege that respondents NBI agents violated their right by fabricating testimonies to convince the RTC of Angeles City to issue the search warrant. 02-1-06-SC.F. The subject search warrant was not issued under A. Allegations of bad faith. and (3) the defendant‘s subsequent violation of the right. March 5. when the respondent or his representative is not present during the search. respondents. Absent any of these. DONATO. 180595." The Del Rosarios‘ broad assertion in their complaint that the search was conducted "in full and plain view of members of the community" does not likewise support their claim that such search was maliciously enforced.R. the court can render judgment granting him the judicial assistance he seeks. the rules require that it be done in the presence of two residents of the same locality.M. G. 4. which governed the issuance of a writ of search and seizure in a civil action for infringement filed by an intellectual property right owner against the supposed . malice. ARTHUR DEL ROSARIO and ALEXANDER DEL ROSARIO. the complaint would have failed to state a cause of action. 2010 1. A judicially ordered search that fails to yield the described illicit article does not of itself render the court’s order "unlawful. And judgment would be right only if the facts he alleges constitute a cause of action that consists of three elements: (1) the plaintiff‘s legal right in the matter. HELLENOR D.. and RAFAEL V. petitioners. JR. In fact. There is nothing inherently wrong with search warrants being enforced in full view of neighbors. The test of sufficiency of a complaint is whether or not. and other related words without ultimate facts to support the same are mere conclusions of law. vs. (2) the defendant‘s corresponding obligation to honor or respect such right. No. 2.
counterfeit. offering for sale. Philip Morris did not file a civil action for infringement of its trademark against the Del Rosarios before the RTC of Angeles City. or identity of such business.M. in order to constitute trademark infringement under the said law. 8293 states: Remedies. failed to state a proper cause of action. or advertising of any goods. G. business or services as to likely cause confusion or mistake or to deceive purchasers. — Any person who shall. the manufacturer of Marlboro cigarettes. wrappers.A.R.2. Philip Morris. prints. the law steps in and provides corresponding punishments. SOCIETE DES PRODUITS NESTLE. without the consent of the owner of the registered mark: 155. JR.. G. 172276. No. Under Section 22 of Republic Act (R. vs. . copied or colorably imitated by another person and such reproduction. The Del Rosarios had the right to seek damages.A. in case of infringement. DY. Infringement. and (4) that such act is done without the consent of the trademark registrant or assignee. Instead. signs. their complaint. 5. Unfortunately. if the circumstances warranted. No. 5 and 6 of Rule 126 of the Rules of Criminal Procedure (not under the provisions of A. or such trademark is reproduced. uses a trademark which is identical or confusingly similar to a trademark owned or already registered. The elements of infringement under R. did not go by this route. Registered trademarks or names are entitled to protection.) No. as amended. petitioner. in relation to products or services which are identical or similar to the products or services which the registration covers. August 9. In turn. as worded.infringer of his trademark or name. 1. the NBI instituted a police action that included applying for a search and seizure warrant under Sections 3.. respondent. to wit: (1) a trademark actually used in commerce in the Philippines and registered in the principal register of the Philippine Patent Office.A. business or services or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services. Hence. counterfeited. Philip Morris sought assistance from the NBI for the apprehension and criminal prosecution of those reportedly appropriating its trademark and selling fake Marlboro cigarettes.A. 2010. 8293 are as follows: (1) that the 2. 166. S. 155. copy or colorable imitation is applied to labels. Section 155 of R. receptacles or advertisements intended to be used upon or in connection with such goods. 02-1-06-SC) against the Del Rosarios upon the belief that they were storing and selling fake Marlboro cigarettes in violation of the penal provisions of the intellectual property law. MARTIN T. 4. the following elements must concur. by separate civil action for the wrong inflicted on them by an improperly obtained or enforced search warrant. (3) that he trademark is used for identical or similar goods.1. No. (2) that it is used by another person in connection with the sale.. packages. Trademark infringement occurs when an infringer.
‖ The other is the confusion of business: ―Here though the goods of the parties are different. an owner of a trademark may commence legal proceedings against a party which infringes its registration. dominancy test and holistic test The law has evolved two kinds of tests in determining whether or not colorable imitation exists The dominancy test considers the dominant features of the competing trademarks which might cause confusion or deception and thus constitute infringement. ―defendant‘s goods are then bought as the plaintiff‘s. wrappers. or advertising of any goods. or colorably imitated by the infringer. however. offering for sale. or the infringing mark or trade name is applied to labels. In contrast to dominancy test which focuses on the dominant features of competing trademarks. copied. prints. the same need not be registered. counterfeited. and the poorer quality of the former reflects adversely on the plaintiff‘s reputation. Confusion of goods and confusion of business The confusion of goods ―in which event the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. the defendant‘s product is such as might reasonably be assumed to originate with the plaintiff. receptacles or advertisements intended to be used upon or in connection with such goods. business or services. a cause of action for infringement may exist. signs. business or services. On the other hand. Hence. does not exist. confusion of business contemplates a case when although the goods of the parties are different. the defendant‘s product is such as might reasonably be assumed to originate with the plaintiff. On the other hand. 4. (2) that the trademark or trade name is reproduced. and (5) that it is without the consent of the trademark or trade name owner or the assignee thereof.‖ In which case. in fact. packages. and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which. When competitors share deceptively similar trade trademarks. (3) that the infringing mark or trade name is used in connection with the sale. the two types of confusion in trademark infringement must be distinguished. Confusion of goods contemplates a case when the public are induced to purchase one product in the belief that he was purchasing the other product because both products are confusingly similar. (4) that the use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the idenity of such business. in infringement of trade name. trademarks must be distinctive and must not confuse the public between two competing trademarks.‖ To receive protection from infringement. the holistic test focuses on the entirety of the marks in question to determine confusing similarity. does not exist. holistic test considers not only the dominant features but also entirety or totality of the marks in determining whether competing trademarks might cause confusion . in fact. and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which. This requires careful scrutiny to determine in what points the labels of the products differ. Thus. 3.trademark being infringed is registered in the Intellectual Property Office.
No. respondent. and NAN-2. vs. INC. the aural effect is confusingly similar. and of the registrant‘s exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. Myra correctly posits that.or deception and thus constitute infringement. 2010 1.. 190065. or similar signs or containers for goods or services. The line consists of PRE-NAN. The scope of protection afforded to registered trademark owners is not limited to protection from infringers with identical goods.A. in order to qualify a mark within the purview of the said definition. H. NAN-1. the Court holds that the dominancy test is applicable. In the case at bar. Hence. Applying the dominancy test in the present case. NAN-H. G. . and at different price levels depending on variations of the products for specific segments of the market. a mark should not be ―generic‖ which means relating to or descriptive of an entire group or class. as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field or is in any way connected with the activities of the infringer.‖ When ―NAN‖ and ―NANNY‖ are pronounced.‖ ―NAN‖ is the prevalent feature of Nestle‘s line of infant powdered milk products. Clearly.‖ The first three letters of ―NANNY‖ are exactly the same as the letters of ―NAN. 5.. In the case at bar. where such use would result in a likelihood of confusion.R. MYRA PHARMACEUTICALS. August 16. a "mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods.A. the Court finds that ―NANNY‖ is confusingly similar to ―NAN.. INC. and to market areas that are the normal expansion of business of the registered trademark owners. 8293 to prevent third parties from using a trademark. DERMALINE. Section 121. Owner of a registered trademark owner may use his mark on the same or similar products. but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to lead to a confusion of source. in different segments of the market. the Supreme Court ruled that modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties. it has the right under Section 147 of R. It is written in bold letters and used in all products. the registrant‘s ownership of the mark. as a registered trademark owner.1 of the Intellectual Property Code. The scope of protection extends to protection from infringers with related goods. ―NANNY‖ contains the prevalent feature ―NAN.. Section 138 of the Intellectual Property Code provides that a certificate of registration of a mark shall be prima facie evidence of validity of the registration. or when it forestalls the normal potential expansion of his business. without its consent. No. identical or similar to its registered trademark. In the case at bar. A trademark can be registered if it is able to distinguish the goods of an enterprise and if it will not confuse or deceive the public with respect to the qualities of the product. petitioner.
and at different price levels depending on variations of the products for specific segments of the market. The Court is cognizant that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. the registrant‘s ownership of the mark. This requires careful scrutiny to determine in what points the labels of the products differ. considering the current proliferation of health and beauty products in the market. In contrast to dominancy test which focuses on the dominant features of competing trademarks. and to market areas that are the normal expansion of business of the registered trademark ownersSection 138 of the Intellectual Property Code provides that a certificate of registration of a mark shall be prima facie evidence of validity of the registration. in different segments of the market. The dominancy test considers the dominant features of the competing trademarks which might cause confusion or deception and thus constitute infringement. 4. such that. the purchasers would likely be misled that Myra has already expanded its business through Dermaline from merely carrying pharmaceutical topical applications for the skin to health and beauty services. 5. the public may mistakenly think that Dermaline is connected to or associated with Myra. This means that the scope of protection extends to protection from infringers with related goods. and of the registrant‘s exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate Thus. This means that registration gives the trademark owner the exclusive right to use the mark and to prevent others from using the same or similar marks on identical or related goods and services. . the public may mistakenly think that Dermaline is connected to or associated with Myra. the holistic test focuses on the entirety of the marks in question to determine confusing similarity. Section 121 of the Intellectual Property Code provides that the rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. both confusion of goods and service and confusion of business or of origin were apparent in both trademarks. Indeed.2. therefore. such that." had differences "too striking to be mistaken" from Myra's "DERMALIN" cannot. the purchasers would likely be misled that Myra has already expanded its business through Dermaline from merely carrying pharmaceutical topical applications for the skin to health and beauty services. INC. considering the current proliferation of health and beauty products in the market. holistic test considers not only the dominant features but also entirety or totality of the marks in determining whether competing trademarks might cause confusion or deception and thus constitute infringement. In this case. the registered trademark owner may use its mark on the same or similar products. As correctly held by the IPO. Hence. be sustained. On the other hand. Dermaline's insistence that its applied trademark "DERMALINE DERMALINE. 3.
giving little weight to factors like prices. March 23.S. 2. although the goods of the parties are different. the mere fact that it used the same stylized "S". and market segments. quality. MORALES AND/OR ANY OF ITSOTHER PROPRIETOR/S." 2. where. INC. DIRECTORS. .. No. VS.A. even if respondent did not use an oval design. (1) confusion of goods (product confusion). G.. Given more consideration are the aural and visual impressions created by the marks on the buyers of goods. No. the dominant feature of the trademark is the stylized "S. this Court finds that the use of the stylized "S" by respondent in its Strong rubber shoes infringes on the mark already registered by petitioner with the IPO. In determining similarity and likelihood of confusion. and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties. to this Court‘s mind. AND/OR INTER PACIFIC TRADING CORP. the mark of which registration is applied for by one party. The mark "S" found in Strong Shoes is not enclosed in an "oval design. though inexistent. SKECHERS. NO. For its part. LTD.. . 153 QUIRINO AVENUE. neither is it required that the mark sought to be registered suggests an effort to imitate. where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other.. and (2) confusion of business (source or origin confusion). The Dominancy Test focuses on the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion. EMPLOYEES AND/OR OCCUPANTS OF ITS PREMISES LOCATED AT S-7. RESPONDENTS. mistake. already constitutes infringement under the Dominancy Test. AND/OR STRONGSHOES WAREHOUSE AND/OR STRONG FASHION SHOES TRADING AND/OR TAN TUAN HONG AND/OR VIOLETA T. PARANAQUE CITY. Duplication or imitation is not necessary. is such as might reasonably be assumed to originate with the registrant of an earlier product. Both the RTC and the CA applied the Holistic Test in ruling that respondent had not infringed petitioner‘s trademark. MAGAYAGA AND/OR JEFFREY R.. OFFICERS. ED & JOE'S COMMERCIAL ARCADE." as it is precisely the stylized "S" which catches the eye of the purchaser. the RTC noted the following supposed dissimilarities between the shoes. Thus. The word "Strong" is conspicuously placed at the backside and insoles.A.R. 8293 is that the infringing mark is likely to cause confusion. AND/OR STRONG SPORTS GEAR CO. Applying the Dominancy Test to the case at bar.I. U. 2011 (1) The essential element of infringement under R. the product. to wit: 1. and deception in the mind of the purchasing public. 164321. PETITIONER. 3. INTER PACIFIC INDUSTRIAL TRADING CORP. the same being the dominant feature of petitioner‘s trademark. jurisprudence has developed tests the Dominancy Test and the Holistic or Totality Test. While it is undisputed that petitioner‘s stylized "S" is within an oval design. sales outlets.
the registered trademark owner may use its mark on the same or similar products. five at the back and six in front. appears "Skechers Sport Trail" written in white lettering. The dissimilarities between the shoes are too trifling and frivolous that it is indubitable that respondent‘s products will cause confusion and mistake in the eyes of the public. Even if not all the details are identical. 4. Even the design and "wavelike" pattern of the midsole and outer sole of respondent‘s shoes are very similar to petitioner‘s shoes. Neither can the difference in price be a complete defense in trademark infringement. The purchasing public might be mistaken in thinking that petitioner had ventured into a lower market segment such that it is not inconceivable for the public to think that Strong or Strong Sport Trail might be associated or connected with petitioner‘s brand. On top of the "tongue" of both shoes appears the stylized "S" in practically the same location and size. but the features and overall design are so similar and alike that confusion is highly likely. this Court is at a loss as to how the RTC and the CA. any ordinary. ruled that there was no colorable imitation. appears the stylized "S. On the side of respondent‘s shoes. Even if not all the details just mentioned were identical. near the upper part. if not exact patterns thereof. Not surprisingly. in applying the holistic test. on respondent‘s shoes appears "Strong Sport Trail" noticeably written in the same white lettering. or even perhaps even a not too perceptive and discriminating customer could be deceived. At the side of the midsole near the heel of both shoes are two elongated designs in practically the same location. Moreover. Strong shoes are modestly priced compared to the costs of Skechers Shoes. respondent also used the color scheme of blue. and at different price levels depending on variations of the products for specific segments of the market. . the imitator should be liable." for private complainant. Respondent‘s shoes may not be an exact replica of petitioner‘s shoes.S. at the back of petitioner‘s shoes. near the heel counter. On top of the heel collar of petitioner‘s shoes are two grayish -white semitransparent circles." placed in the exact location as that of the stylized "S" on petitioner‘s shoes. as long as the general appearance of the two products are such that any ordinary purchaser would be deceived. when it cannot be any more clear and apparent to this Court that there is colorable imitation. which scenario is plausible especially since both petitioner and respondent manufacture rubber shoes. 4. in different segments of the market. white and gray utilized by petitioner. However.A. Even the outer soles of both shoes have the same number of ridges. As can be readily observed by simply comparing petitioner‘s Energy model and respondent‘s Strong rubber shoes. Based on the foregoing. with the general appearances alone of the two products. to this Court’s mind such dissimilarities do not outweigh the stark and blatant similarities in their general features. direction and orientation as that of petitioner‘s shoes. font size.3. While there may be dissimilarities between the appearances of the shoes. respondent‘s shoes also have two grayish-white semitransparent circles in the exact same location. Indeed. The hang tags and labels attached to the shoes bears the word "Strong" for respondent and "Skechers U.
the registration of a tradename. but also to safeguard the public as consumers against confusion on these goods. we must strictly construe the statute against the State and liberally in favor of the accused..R. 172775 1.. AND HONDA PHIL. with enough points of difference to confuse the courts. While respondent‘s shoes contain some dissimilarities with petitioner‘s shoes. by means of false or fraudulent representations or declarations. or servicemark. In the Application for Search Warrant filed by NBI SI Lacaran. trademark. or service mark or an entry respecting a tradename. It is therefore unclear whether the crime exists at all. this Court cannot close its eye to the fact that for all intents and purpose. 2007 Dec 19. AND JOHN DOE. J. or service mark. trademark.. . The most successful form of copying is to employ enough points of similarity to confuse the public. It is quite obvious then that their cause of action arose out of the intrusion into their established goodwill involving the two motorcycle models and not patent infringement. it is clearly stated that what respondents are complaining about was the alleged violation of the goodwill they have established with respect to their motorcycle models "WAVE 110 S" and "WAVE 125 S" and which goodwill is entitled to protection in the same manner as other property rights.. Respondents. for penal statutes cannot be enlarged or extended by intendment. There is evidently no mention of any crime of "unfair competition" involving design patents in the controlling provisions on Unfair Competition. respondent had deliberately attempted to copy petitioner‘s mark and overall design and features of the shoes. therefore. the protection of trademarks as intellectual property is intended not only to preserve the goodwill and reputation of the business established on the goods bearing the mark through actual use over a period of time. implication or any equitable consideration.. No. YUNJI ZENG. Let it be remembered. HON NE CHAN. orally or in writing. In the face of this ambiguity. 189 of the Revised Penal Code. The name Wave CX 110 is but a [species] of units under the generic name Wave. Withal. or by other fraudulent means shall procure from the patent office or from any other office which may hereafter be established by law for the purposes. LTD. Paragraph 3 of Article 189 of the Revised Penal Code stating that – Any person who. 3. versus HONDA MOTOR CO. 4. or of himself as the owner of such tradename. any imitation unit that is in the possession of the (herein petitioners) and carries the name Wave is the fit object of the warrants – whether some other name or figure is affixed to it or not. Petitioners. trademark. It is evident that Wave is the model name of the motorcycles produced by the (herein respondents) Honda and. G.5. The warrant that directs the seizure of Wave logically includes Wave CX 110 and is by no means converted into a roving commission when it allows the officer to seize it. INC. for the enactment of RA 8293 did not result in the reenactment of Art. 2. that defendants in cases of infringement do not normally copy but only make colorable changes.
2003 Decision and the October 28. There maybe similarities as claimed by the (respondents) but the differences far outweigh the similarities that any confusion to the consumer is remote and speculative. Respondent.R. failure to do so renders the questioned decision/final order final and executory. These differences are quite evident from the very comparative pictures attached by the (petitioners) in its (sic) application for Search Warrant as well as in the Opposition filed relative to the pending "Joint Motion to Quash Search Warrants and to Return Illegally Seized Items. The Court has invariably ruled that perfection of an appeal within the statutory or reglementary period is not only mandatory but also jurisdictional. The evidence it requires to dispense this function is. 2007 Oct 15.was not included in the enactment of Section 168 of Republic Act No. much less to entertain the appeal. No. which is Honda. SEHWANI. INC. their immediate release is likewise proper since there is no showing of probable cause that justified the issuance of the search warrant. INC. far less stringent than that required in the trial on the merits of the charge involving unfair competition. for its task is merely confined to the preliminary matter of determination of probable cause and nothing more.. as stated before. True. 171053 1. and deprives the appellate court of jurisdiction to alter the judgment or final order.27 Unmistakably conveys the message that no unfair competition exists in this case – a conclusion that is not within its competence to make. versus IN-N-OUT BURGER. K. . As correctly held by the Court of Appeals. 8293. The fact alone would practically eliminate any possible confusion on the part of the public that the motorcycle units they would be buying from the (petitioners) are those manufactured and/or sold by (respondents). The trial court‘s declaration that— With respect to the other units seized by the NBI.." This is not the same trade name of the (respondents). 5. Petitioner. Such does not obtain in this case." Aside from the differences in features. G. 2004 Order of Bureau Director Beltran-Abelardo final and executory. petitioners’ belated filing of an appeal memorandum rendered the December 22. IN INFRINGEMENT CASES THE REGLAMENTARY PERIOD TO APPEAL MUST BE STRICTLY FOLLOWED. INCORPORATED and/or BENITA’S FRITES. The (herein respondents) claims (sic) that the (herein petitioners) are guilty of Unfair Competition because of the alleged similarities between its motorcycle units and those of the (petitioners). the motorcycle units sold by the (petitioners) prominently bear the distinct trade name "DRAGON SPIRIT. this rule had been relaxed but only in highly meritorious cases to prevent a grave injustice from being done..
IS PROTECTED AGAINST TRADEMARK INFRINGEMENT Contrary to petitioners‘ argument. albeit it is not doing business in the Philippines. is a self-executing provision and does not require legislative enactment to give it effect in the member country. cancellation. infringement.2 CORPORATIONS. 3 TO AVAIL OF THE PROTECTION THE CONVENTION OF PARIS OFFERS." This competent authority would be either the registering authority if it has the power to decide this. The question of whether or not respondent‘s trademarks are considered "well-known" is factual in nature. unfair competition. The essential requirement under this Article is that the trademark to be protected must be "well-known" in the country where protection is sought. whether or not it is licensed to do business in the Philippines under existing laws. wherein both the United States and the Philippines are signatories. are generally accorded not only respect. at times. The settled RULE is that the factual findings of quasi-judicial agencies. involving as it does the appreciation of evidence adduced before the BLA-IPO. after its ratification according to the public law of each state and the order for its execution. It may be applied directly by the tribunals and officials of each member country by the mere publication or proclamation of the Convention. THE TRADEMARK MUST BE ―WELL KNOWN‖ IN THE COUNTRY WHERE PROTECTION IS SOUGHT. Section 160 in relation to Section 3 of IP Code provides that ―Any foreign national or juridical person who meetsthe requirements of Section 31 of this Act and does not engage in business in the Philippines may bring a civil or administrative action hereunder for opposition. AND THE IDENTIFICATION OF A TRADEMARK AS ―WELL KNOWN‖ IS ―FACTUAL‖ IN NATURE Article 6bis which governs the protection of well-known trademarks. even finality if such findings are supported by substantial evidence. like the IPO. which have acquired expertise because their jurisdiction is confined to specific matters.‖ Respondent anchors its causes of action under Articles 6bis and 82 of The Convention of Paris for the Protection of Industrial Property. or false designation of origin and false description. Respondent was able to prove substantially that its mark "IN-N-OUT Burger and Arrow Design" is an internationally well known mark as evidenced by its trademark registrations around the world and its comprehensive advertisements therein: among the evidence submitted are the 1 . but. The power to determine whether a trademark is well-known lies in the "competent authority of the country of registration or use. or the courts of the country in question if the issue comes before a court. respondent has the legal capacity to sue for the protection of its trademarks. EVEN NOT DOING BUSINESS IN THE PHILIPPINES. otherwise known as the Paris Convention.
NO. MATTEL. newspapers and print-out of what appears to be printed representations of its internet website (www. Identical marks should not be used where the possibility of confusion as to source of origin of the product is certain . With this.A.No. Moreover. No. since equity.articles about "IN-N-OUT Burger" appearing in magazines. 166886 2. and JIMMY UY.R.A. Director of the Bureau of Legal Affairs (IPO). the Paris 5.. 8293 specifically provides that a petition to cancel the registration of a mark which is registered contrary to the provisions thereof.com) (Exhibits "CCC" to "QQQ"). Also. namely. 8293. thereby effectively misrepresenting the source of the goods and services. complainant‘s mark have met other criteria set in the Implementing Rules of Republic Act 8293. Respondents. The evidence on record shows that not only did the petitioners use the IN-N-OUT Burger trademark for the name of their restaurant. HON. Section 151(b) of R. ABELARDO. versus EMMA FRANCISCO. ESTRELLITA B. as well as object evidence consisting of videotapes of famous celebrities mentioning IN-N-OUT burgers in the course of their interviews (Exhibits "EEEE" and "FFFF") showing a tremendous following among celebrities. No. ‗a‘ and ‗d‘ of Rule 102. laches may not prevail against a specific provision of law . Aside from the specific provisions of R. THE PRINCIPLE OF LACHES DOES NOT APPLY IN PETITION TO CANCEL REGISTRATION OF A MARK USED TO MISREPRESENT THE SOURCE OF THE GOODS OR SERVICES. INC. Petitioner. PETITION FOR CANCELLATION OF A SUBSEQUENT AND SIMILAR MARK MAY BE BASED ON THE FACT THAT IT CAUSES MISREPRESENTATION OF THE SOURCE OF THE GOODS OR SERVICES WITH WHICH THE MARK IS USED Section 151(b) of RA 82933. or which is used to misrepresent the source of the goods or services. but they also used identical or confusingly similar mark for their hamburger wrappers and french-fries receptacles. 2008 Jul 30 . 4. the quality image and reputation acquired by the complainant’s IN-N-OUT mark is unmistakable.innout. L. G. Director-General of the Intellectual Property Office. which has been defined as ‗justice outside legality‘ is applied in the absence of and not against statutory law or rules of procedure. may be filed at any time.
rule 204) 4. Not complying with the mandatory filing of DAU is deemed to be an abandonment of one‘s trademark (Section 124. b. c. d. Mattel‘s trademark application cannot be considered newly discovered evidence since its filing was more than two years after the case has been duly submitted 6. a. exceptional character of the situation and paramount interest is involved. the bar and the public. Due to abandonment case is rendered to be moot and academic exception if . 8293. the case is capable of repetition yet evading review.3. when the constitutional issue raised requires formulation of controlling principles to guide the bench. there is a grave abuse of discretion. .2 RA No. Failure to file a DAU must be subject to administrative proceeding and is not a proper subject of a petition for review under Rule 45 (exhaustion of administrative remedies) 5.