1. G.R. No.

97343 September 13, 1993

PASCUAL GODINES, petitioner,
vs.
THE HONORABLE COURT O APPEALS, SPECIAL OURTH DI!ISION "#$ S!%AGRO ENTERPRISES,
INC., respondents.
RO&ERO, J.:
Through this petition for review in certiorari of a decision of the Court of Appeals affirming the decision of
the trial court, petitioner Pascual Godines seeks to reverse the adverse decision of the Court a quo that he
was liable for infringement of patent and unfair competition. The dispositive portion of the assailed
decision is hereby quoted to wit
!"#$#%&$#, with the elimination of the award for attorney's fees, the (udgment appealed
from is hereby A%%)$*#+, with costs against appellant.
1
The patent involved in this case is ,etters Patent -o. .*/0012 issued by the Philippine Patent &ffice to one
*agdalena 3. 4illaru5 on 6uly 78, 79:2. )t covers a utility model for a hand tractor or power tiller, the main
components of which are the following ;<7= a vacuumatic house float> <0= a harrow with ad(ustable
operating handle> <1= a pair of paddy wheels> <?= a protective water covering for the engine main drive>
<8= a transmission case> <2= an operating handle> <:= an engine foundation on the top midportion of the
vacuumatic housing float to which the main engine drive is detachedly installed> <@= a frontal frame
eAtension above the quarter B circularly shaped water covering hold <sic= in place the transmission case>
<9= a 4/belt connection to the engine main drive with transmission gear through the pulley, and <7C= an
idler pulley installed on the engine foundation.;
'
The patented hand tractor works in the following
manner ;the engine drives the transmission gear thru the 4/belt, a driven pulley and a transmission
shaft. The engine drives the transmission gear by tensioning of the 4/belt which is controlled by the idler
pulley. The 4/belt drives the pulley attached to the transmission gear which in turn drives the shaft where
the paddy wheels are attached. The operator handles the hand tractor through a handle which is inclined
upwardly and supported by a pair of substanding pipes and reinforced by a ./shaped G.). pipe at the 4/
shaped end.;
3
The above mentioned patent was acquired by 34/Agro )ndustries #nterprises, )nc., herein private
respondent, from *agdalena 4illaru5, its chairman and president, by virtue of a +eed of Assignment
eAecuted by the latter in its favor. &n &ctober 17, 79:9, 34/Agro )ndustries caused the publication of the
patent in Dulletin Today, a newspaper of general circulation.
)n accordance with the patent, private respondent manufactured and sold the patented power tillers with
the patent imprinted on them. )n 79:9, 34/Agro )ndustries suffered a decline of more than 8CE in sales
in its *olave, Famboanga del 3ur branch. .pon investigation, it discovered that power tillers similar to
those patented by private respondent were being manufactured and sold by petitioner herein.
Consequently, private respondent notified Pascual Godines about the eAisting patent and demanded that
the latter stop selling and manufacturing similar power tillers. .pon petitioner's failure to comply with the
demand, 34/Agro )ndustries filed before the $egional Trial Court a complaint for infringement of patent
and unfair competition.
After trial, the court held Pascual Godines liable for infringement of patent and unfair competition. The
dispositive portion of the decision reads as follows
!"#$#%&$#, premises considered, 6.+G*#-T is hereby rendered in favor of the plaintiff
34/Agro )ndustries #nterprises, )nc., and against defendant Pascual Godines
7. +eclaring the writ of preliminary in(unction issued by this Court against defendant as
permanent>
0. &rdering defendant Pascual Godines to pay plaintiff the sum of %ifty Thousand Pesos
<P8C,CCC.CC= as damages to its business reputation and goodwill, plus the further sum of
#ighty Thousand Pesos <P@C,CCC.CC= for unreali5ed profits during the period defendant was
manufacturing and selling copied or imitation floating power tiller>
1. &rdering the defendant to pay the plaintiff, the further sum of #ight Thousand Pesos
<P@,CCC.CC= as reimbursement of attorney's fees and other eApenses of litigation> and to
pay the costs of the suit.
3& &$+#$#+.
4
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The decision was affirmed by the appellate court.
Thereafter, this petition was filed. Petitioner maintains the defenses which he raised before the trial and
appellate courts, to wit that he was not engaged in the manufacture and sale of the power tillers as he
made them only upon the special order of his customers who gave their own specifications> hence, he
could not be liable for infringement of patent and unfair competition> and that those made by him were
different from those being manufactured and sold by private respondent.
!e find no merit in his arguments. The question of whether petitioner was manufacturing and selling
power tillers is a question of fact better addressed to the lower courts. )n dismissing the first argument of
petitioner herein, the Court of Appeals quoted the findings of the court, to wit
)t is the contention of defendant that he did not manufacture or make imitations or copies of
plaintiff's turtle power tiller as what he merely did was to fabricate his floating power tiller
upon specifications and designs of those who ordered them. "owever, this contention
appears untenable in the light of the following circumstances 7= he admits in his Answer
that he has been manufacturing power tillers or hand tractors, selling and distributing them
long before plaintiff started selling its turtle power tiller in Famboanga del 3ur and *isamis
&ccidental, meaning that defendant is principally a manufacturer of power tillers, not upon
specification and design of buyers, but upon his own specification and design> 0= it would be
unbelievable that defendant would fabricate power tillers similar to the turtle power tillers of
plaintiff upon specifications of buyers without requiring a (ob order where the specification
and designs of those ordered are specified. -o document was <sic= ever been presented
showing such (ob orders, and it is rather unusual for defendant to manufacture something
without the specification and designs, considering that he is an engineer by profession and
proprietor of the &5amis #ngineering shop. &n the other hand, it is also highly unusual for
buyers to order the fabrication of a power tiller or hand tractor and allow defendant to
manufacture them merely based on their verbal instructions. This is contrary to the usual
business and manufacturing practice. This is not only time consuming, but costly because it
involves a trial and error method, repeat (obs and material wastage. +efendant (udicially
admitted two <0= units of the turtle power tiller sold by him to Policarpio Derondo.
(
&f general acceptance is the rule imbedded in our (urisprudence that ;. . . the (urisdiction of the 3upreme
Court in cases brought to it from the Court of Appeals in a petition for certiorari under $ule ?8 of the $ules
of Court is limited to the review of errors of law, and that said appellate court's findings of fact are
conclusive upon this Court.;
)
The fact that petitioner herein manufactured and sold power tillers without patentee's authority has been
established by the courts despite petitioner's claims to the contrary.
The question now arises +id petitioner's product infringe upon the patent of private respondentG
Tests have been established to determine infringement. These are <a= literal infringement> and <b= the
doctrine of equivalents.
7
)n using literal infringement as a test, ;. . . resort must be had, in the first
instance, to the words of the claim. )f accused matter clearly falls within the claim, infringement is made
out and that is the end of it.;
*
To determine whether the particular item falls within the literal meaning of
the patent claims, the court must (uAtapose the claims of the patent and the accused product within the
overall conteAt of the claims and specifications, to determine whether there is eAact identity of all material
elements.
9
The trial court made the following observation
3amples of the defendant's floating power tiller have been produced and inspected by the
court and compared with that of the turtle power tiller of the plaintiff <see #Ahibits " to "/
0@=. )n appearance and form, both the floating power tillers of the defendant and the turtle
power tiller of the plaintiff are virtually the same. +efendant admitted to the Court that two
<0= of the power inspected on *arch 70, 79@?, were manufactured and sold by him <see
T3-, *arch 70, 79@?, p. :=. The three power tillers were placed alongside with each other.
At the center was the turtle power tiller of plaintiff, and on both sides thereof were the
floating power tillers of defendant <#Ahibits " to "/0=. !itness $odrigo took photographs of
the same power tillers <front, side, top and back views for purposes of comparison <see
#Ahibits "/? to "/0@=. 4iewed from any perspective or angle, the power tiller of the
defendant is identical and similar to that of the turtle power tiller of plaintiff in form,
configuration, design and appearance. The parts or components thereof are virtually the
same. Doth have the circularly/shaped vacuumatic housing float, a paddy in front, a
protective water covering, a transmission boA housing the transmission gears, a handle
which is 4/shaped and inclined upwardly, attached to the side of the vacuumatic housing
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float and supported by the upstanding G.). pipes and an engine base at the top midportion
of the vacuumatic housing float to which the engine drive may be attached. )n operation,
the floating power tiller of the defendant operates also in similar manner as the turtle power
tiller of plaintiff. This was admitted by the defendant himself in court that they are operating
on the same principles. <T3-, August 79, 79@:, p. 71=
1+
*oreover, it is also observed that petitioner also called his power tiller as a floating power tiller. The patent
issued by the Patent &ffice referred to a ;farm implement but more particularly to a turtle hand tractor
having a vacuumatic housing float on which the engine drive is held in place, the operating handle, the
harrow housing with its operating handle and the paddy wheel protective covering.;
11
)t appears from the
foregoing observation of the trial court that these claims of the patent and the features of the patented
utility model were copied by petitioner. !e are compelled to arrive at no other conclusion but that there
was infringement.
Petitioner's argument that his power tillers were different from private respondent's is that of a drowning
man clutching at straws.
$ecogni5ing that the logical fallback position of one in the place of defendant is to aver that his product is
different from the patented one, courts have adopted the doctrine of equivalents which recogni5es that
minor modifications in a patented invention are sufficient to put the item beyond the scope of literal
infringement.
1'
Thus, according to this doctrine, ;<a=n infringement also occurs when a device
appropriates a prior invention by incorporating its innovative concept and, albeit with some modification
and change, performs substantially the same function in substantially the same way to achieve
substantially the same result.;
13
The reason for the doctrine of equivalents is that to permit the imitation
of a patented invention which does not copy any literal detail would be to convert the protection of the
patent grant into a hollow and useless thing. 3uch imitation would leave room for B indeed encourage B
the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent
which, though adding nothing, would be enough to take the copied matter outside the claim, and hence
outside the reach of the law.
14
)n this case, the trial court observed
+efendant's witness #duardo CaHete, employed for 77 years as welder of the &5amis
#ngineering, and therefore actually involved in the making of the floating power tillers of
defendant tried to eAplain the difference between the floating power tillers made by the
defendant. Dut a careful eAamination between the two power tillers will show that they will
operate on the same fundamental principles. And, according to establish (urisprudence, in
infringement of patent, similarities or differences are to be determined, not by the names of
things, but in the light of what elements do, and substantial, rather than technical, identity
in the test. *ore specifically, it is necessary and sufficient to constitute equivalency that the
same function can be performed in substantially the same way or manner, or by the same or
substantially the same, principle or mode of operation> but where these tests are satisfied,
mere differences of form or name are immaterial. . . .
1(
)t also stated
To establish an infringement, it is not essential to show that the defendant adopted the
device or process in every particular> Proof of an adoption of the substance of the thing will
be sufficient. ;)n one sense,; said 6ustice Drown, ;it may be said that no device can be
ad(udged an infringement that does not substantially correspond with the patent. Dut
another construction, which would limit these words to eAact mechanism described in the
patent, would be so obviously un(ust that no court could be eApected to adopt it. . . .
The law will protect a patentee against imitation of his patent by other forms and
proportions. )f two devices do the same work in substantially the same way, and accomplish
substantially the same result, they are the same, even though they differ in name, form, or
shape.
1)
!e pronounce petitioner liable for infringement in accordance with 3ection 1: of $epublic Act -o. 728, as
amended, providing, inter alia
3ec. 1:. Right of Patentees. B A patentee shall have the eAclusive right to make, use and
sell the patented machine, article or product, and to use the patented process for the
purpose of industry or commerce, throughout the territory of the Philippines for the terms of
the patent> and such making, using, or selling by any person without the authorization of
the Patentee constitutes infringement of the patent. <#mphasis ours=
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As far as the issue regarding unfair competition is concerned, suffice it to say that $epublic Act -o. 722,
as amended, provides, inter alia
3ec. 09. Unfair competition, rights and remedies. B . . .
AAA AAA AAA
)n particular, and without in any way limiting the scope of unfair competition, the following
shall be deemed guilty of unfair competition
<a= Any person, who in selling his goods shall give them the general appearance of goods of
another manufacturer or dealer, either as to the goods themselves or in the wrapping of the
packages in which they are contained, or the devices or words thereon, or in any other
feature of their appearance, which would be likely to influence purchasers that the goods
offered are those of a manufacturer or dealer other than the actual manufacturer or dealer,
or who otherwise clothes the goods with such appearance as shall deceive the public and
defraud another of his legitimate trade. . . .
AAA AAA AAA
Considering the foregoing, we find no reversible error in the decision of the Court of Appeals affirming with
modification the decision of the trial court.
!"#$#%&$#, premises considered, the decision of the Court of Appeals is hereby A%%)$*#+ and this
petition +#-)#+ for lack of merit.
'. G.R. No. L%'3+'3 A,-,.t 31, 19)*
/OSE P. STA. ANA, petitioner,
vs.
LORENTINO &ALI0AT "#$ TIBURCIO S. E!ALLE, 1# 21. 3"p"31t4 ". D1re3tor o5 P"te#t.,
respondents.
RE6ES, /.B.L., J.:
Petition for review of the decision of the respondent +irector of Patents in an interference proceeding
7
<)nter Partes Case -o. 097=, finding for the senior party applicant, %lorentino *aliwat, the herein private
respondent, and against the (unior party applicant
0
6ose P. 3ta. Ana, the herein petitioner.
&n 07 6une 7920, %lorentino *aliwat filed with the Patent &ffice an application for registration of the
trademark %,&$*A--, which is used on shirts, pants, (ackets and shoes for ladies, men, and children,
claiming first use in commerce of the said mark on 78 6anuary 7920. The claim of first use was
subsequently amended to 2 6uly 7988.
&n 7@ 3eptember 7920, 6ose P. 3ta. Ana filed an application for the registration of the tradename
%,&$*#- 3"&# *A-.%ACT.$#$3 <3"&# *A-.%ACT.$#$3 disclaimed=,
1
which is used in the business of
manufacturing ladies' and children's shoes. "is claim of first use in commerce of the said tradename is @
April 7989.
)n view of the admittedly confusing similarity between the trademark %,&$*A-- and the tradename
%,&$*#-, the +irector of Patents declared an interference. After trial, the respondent +irector gave due
course to *aliwat's application and denied that of 3ta. Ana. The latter, not satisfied with the decision,
appealed to this Court.
The petitioner assigned the following errors
). The +irector of Patents erred in not finding that respondent <senior party/applicant= failed to
establish by clear and convincing evidence earlier date of use of his mark %,&$*A-- than that
alleged in his application for registration, hence, respondent is not entitled to carry back the date of
first use to a prior date.
)). The +irector erred in holding that respondent is the prior adopter and user of his mark and in
concluding that this is strengthened with documentary evidence that respondent has been using his
mark since 7981 as tailor and haberdasher.
Intellectual Property Rights Cases (July 23, 2013) (Atty. Analiza
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))). The +irector of Patents erred in not finding false and fabricated respondent's testimonial and
documentary evidence and +irector should have applied the rule ;%alsus in uno, falsus in omnibus;
and should have disregarded them.
)4. The +irector of Patents erred in declaring that *aliwat has the prior right to the use of his
trademark on shoes and such right may be carried back to the year 7981 when respondent started
his tailoring and haberdashery business and in holding that the manufacture of shoes is within the
scope of natural eApansion of the business of a tailor and haberdasher.
4. The +irector of Patents erred in failing to apply the stricture that parties should confine use of
their respective marks to their corresponding fields of business, and should have allowed the
concurrent use of tradename %,&$*#- 3"&# *A-.%ACT.$#$3 and the trademark %,&$*A--
provided it is not used on shoes.
The findings of the +irector that *aliwat was the prior adopter and user of the mark can not be
contradicted, since his findings were based on facts stipulated in the course of the trial in the interference
proceedings. The recorded stipulation is as follows
ATTI. %$A-C)3C& Iour "onor please, with the mutual understanding of the counsel for the 6unior
Party and the counsel for the 3enior Party in their desire to shorten the proceedings of this case,
especially on matters that are admitted and not controverted by both parties, they have agreed
and admitted that *r. 6ose P. 3ta. Ana, the 6unior Party Applicant in this case, is engaged solely in
the manufacture of shoes under the firm name %,&$*#- 3"&# *A-.%ACT.$#$3 since April 7989>
that the name %,&$*#- 3"&# *A-.%ACT.$#$3 is registered with the Dureau of Commerce on
April @, 7989, as shown by #Ahibits ;A; and ;A/0;. That *r. %lorentino *aliwat has been engaged in
the manufacture and sale of menswear shirts, polo shirts, and pants, since 7981, using %,&$*A--
as its trademark. That *r. %lorentino *aliwat began using the trademark %,&$*A-- on shoes on
6anuary 7920 and the firm name %,&$*A-- 3"&#3 under which these shoes with the trademark
%,&$*A-- were manufactured and sold was first used on 6anuary 7920, having also been
registered with the Dureau of Commerce on 6anuary 7920 and with other departments of the
government, like the Dureau of ,abor, the 3ocial 3ecurity 3ystem and the !orkmen's
Compensation in 7920.
ATTI. *A$A4),,A &n behalf of the 3enior Party Applicant, represented by this humble
representation, ) respectfully concur and admit all those stipulations above mentioned.
"#A$)-G &%%)C#$ The court reserves the resolution on those stipulations. !e can proceed now
with the redirect eAamination. <T.s.n., 9 August 7921, pp. 11/1?=.
And the $ules of Court provide1wph1!"t
3ec. 0. #udicial admissions. B Admission made by the parties in the pleadings, or in the course of
the trial or other proceedings do not require proof and can not be contradicted unless previously
shown to have been made through palpable mistake.; <$ule 709, $evised $ules of Court=.
3ince the aforequoted stipulation of facts has not been shown to have been made through palpable
mistake, it is vain for the petitioner to allege that the evidence for respondent *aliwat is false, fabricated,
inconsistent, indefinite, contradictory, unclear, unconvincing, and unsubstantial.
The rule on (udicial admissions was not found or provided for in the old $ules but can be culled from
rulings laid down by this Court previous to its revision <)rlanda v. Pitargue, 00 Phil. 1@1> 8 *oran 8:/89,
7921 #d.=. )t was the law, then and now, being an application of the law on estoppel.
To be true, petitioner 3ta. Ana, through counsel, filed with this Court, on 0? +ecember 792?, a motion
entitled ;*&T)&- T& &$+#$ 3T#-&G$AP"#$ T& P$&+.C# 3T#-&G$AP")C -&T#3 A-+ T& C&$$#CT
T$A-3C$)PT &% 3T#-&G$AP")C -&T#3> T& A,,&! P#T)T)&-#$ T& !)T"+$A! %$&* 3T)P.,AT)&- &%
%ACT3 A-+ D# A,,&!#+ T& P$#3#-T A++)T)&-A, #4)+#-C#> A-+ T& 3.3P#-+ P#$)&+ %&$ %),)-G
P#T)T)&-#$'3 D$)#%.; The reason given was that ;counsel for *r. 6ose P. 3ta. Ana does not recall making
any stipulation or agreement of facts with the counsel of *r. %lorentino *aliwat on 9 August 7921.;
&pposition thereto was filed by *aliwat, asserting that the stenographer took down notes on those things
which were stated and uttered by the parties> that movant should have moved for reconsideration in the
Patent &ffice, instead of here in the 3upreme Court, which is both untimely and unhonorable.
.pon requirement by this Court, stenographer Cleofe $osales commented on petitioner's motion that what
she had taken down were actually uttered by counsel for 3ta. Ana, no more, no less> that it was practically
and highly impossible for her to have intercalated into the records the questioned stipulation of facts
because of the length of counsel's manifestations and the different sub(ect matters of his statements,
Intellectual Property Rights Cases (July 23, 2013) (Atty. Analiza
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aside from the concurrence of *aliwat's counsel and the reservation on the resolution made by the
hearing officer> and that despite her length of service, since 798@, as stenographic reporter, there had
been no complaint against her, eAcept this one.
Counsel for 3ta. Ana replied to the foregoing comments, alleging, among others, that after his receipt of
the decision, after 8 *ay 792?, he bought the transcript and requested the stenographer to verify the
contents of pages 11 and 1? of her transcript but, despite several requests, and for a period of seven <:=
months, for her to produce the stenographic notes, she has failed to produce said notes.
&n 0 April 7928, stenographer $osales sent to the clerk of this Court the transcript of stenographic notes.
This Court, on 0 %ebruary 7928, denied, for being late the motion to present additional testimonial and
documentary evidence, and, on @ April 7928, deferred action on the ob(ection to a portion of the transcript
until after hearing.
!e find no substantiation of the charge that the stipulation of facts appearing on pages 11 to 1? of the
transcript of stenographic notes taken on 9 August 7921 had been intercalated> hence, the presumption
that the stenographer regularly performed her duty stands. The integrity of the record being intact, the
petitioner is bound by it. !e can not overlook that even if his charges were true, it was plain and
ineAcusable negligence on his part not to discover earlier the defect he now complains of, if any, and in not
taking steps to correct it before the records were elevated to this Court.
An application for registration is not bound by the date of first use as stated by him in his application, but
is entitled to carry back said stated date of first use to a prior date by proper evidence> but in order to
show an earlier date of use, he is then under a heavy burden, and his proof must be clear and convincing
<Anchor Trading Co., )nc. vs. The +irector of Patents, et al., ,/@CC?, 1C *ay 7982> Chung Te vs. -g Jian
Giab, et al.,
,/01:97, 01 -ovember 7922=. )n the case at bar, the proof of date of first use <7981=, earlier than that
alleged in respondent *aliwat's application <7920=, can be no less than clear and convincing because the
fact was stipulated and no proof was needed.
Petitioner would confine the respondent to the use of the mark %,&$*A-- to tailoring and haberdashery
only, but not on shoes, on the ground that petitioner had used the name %,&$*#- on shoes since 7989,
while the respondent used his mark on shoes only in 7920> but the +irector ruled
. . . ) believe that it is now the common practice among local tailors and haberdashers to branch
out into articles of manufacture which have, one way or another, some direct relationship with or
appurtenance to garments or attire to complete one's wardrobe such as belts, shoes,
handkerchiefs, and the like, . . . )t goes without saying that shoes on one hand and shirts, pants
and (ackets on the other, have the same descriptive properties for purposes of our Trademark ,aw.
*odern law recogni5es that the protection to which the owner of a trademark mark is entitled is not
limited to guarding his goods or business from actual market competition with identical or similar products
of the parties, but eAtends to all cases in which the use by a (unior appropriator of a trademark or
tradename is likely to lead to a confusion of source, as where prospective purchasers would be misled into
thinking that the complaining party has eAtended his business into the field <see 7?@ A,$ 82 et seq> 80
Am. 6ur. 8:2= or is in any way connected with the activities of the infringer> or when it forestalls the
normal potential eApansion of his business <v. 7?@ A,$, ::, @?> 80 Am. 6ur. 8:2, 8::=. )t is on this basis
that the respondent +irector of Patents adverted to the practice ;among local tailors and haberdashers to
branch out into articles of manufacture which have some direct relationship; . . . ;to garments or attire to
complete one's wardrobe;. *ere dissimilarity of goods should not preclude relief where the (unior user's
goods are not too different or remote from any that the owner would be likely to make or sell> and in the
present case, wearing apparel is not so far removed from shoes as to preclude relief, any more than the
pancake flour is from syrup or sugar cream <Aunt 6emima *ills Co. vs. $igney K Co., ,$A 797@ C 7C19=,
or baking powder from baking soda <,ayton Pure %ood Co. vs. Church K Co., 7@0 %ed. 18=, or cosmetics
and toilet goods from ladies' wearing apparel and costume (ewelry <,ady #sther ,td. vs. ,ady #sther
Corset 3hoppe, 7?@ A,$ 2=. *ore specifically, manufacturers of men's clothing were declared entitled to
protection against the use of their trademark in the sale of hats and caps L$osenberg Dros. vs. #lliott, :
%ed. <0d= 920M and of ladies shoes <%orsythe K Co. vs. %orsythe 3hoe Corp., 08? -I3 8@?=. )n all these
cases, the courts declared the owner of a trademark from the first named goods entitled to eAclude use of
its trademark on the related class of goods above/referred to.
)t may be that previously the respondent drew a closer distinction among kinds of goods to which the use
of similar marks could be applied> but it can not be said that the present ruling under appeal is so devoid
of basis in law as to amount to grave abuse of discretion warranting reversal.
$epublic Act -o. 722, as amended, provides
Intellectual Property Rights Cases (July 23, 2013) (Atty. Analiza
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3ec. ?. . . . The owner of a trademark, tradename or service/mark used to distinguish his goods,
business or services from the goods, business or services of others shall have the right to register
the same on the principal register, unless it
A A A A A A A A A
A A A A A A A A A
<d= Consists of or comprises a mark or tradename which resembles a mark or tradename registered
in the Philippines or a mark or tradename previously used in the Philippines by another and not
abandoned, as to be likely, when applied to or used in connection with the goods, business or
services of the applicant, to cause confusion or mistake or to deceive purchasers>
A A A A A A A A A
-ote that the provision does not require that the articles of manufacture of the previous user and the late
user of the mark should possess the same descriptive properties or should fall into the same categories as
to bar the latter from registering his mark in the principal register <Chua Che vs. Phil. Patent &ffice, et al.,
,/7@11:, 1C 6an. 7928.
?
citing Application of 3ylvan 3weets Co., 0C8 %. 0nd, 0C:=.
8
Therefore, whether or
not shirts and shoes have the same descriptive properties, or whether or not it is the prevailing practice or
the tendency of tailors and haberdashers to eApand their business into shoes making, are not controlling.
The meat of the matter is the likelihood of confusion, mistake or deception upon purchasers of the goods
of the (unior user of the mark and the goods manufactured by the previous user. "ere, the resemblance or
similarity of the mark %,&$*A-- and the name %,&$*#- and the likelihood of confusion, one to the
other, is admitted> therefore, the prior adopter, respondent *aliwat, has the better right to the use of the
mark.
%&$ T"# %&$#G&)-G $#A3&-3, the appealed decision is hereby affirmed, with costs against the
petitioner.
3. G.R. No. L%'1(*7 &"4 19, 19))
BRISTOL &6ERS CO&PAN6, petitioner,
vs.
THE DIRECTOR O PATENTS "#$ UNITED A&ERICAN PHAR&ACEUTICALS, INC., respondents.
BENG7ON, /.P., J.:
A petition for registration in the Principal $egister of the Patent &ffice of the trademark ;D)&%#$)-; was
filed on &ctober 07, 798: by .nited American Pharmaceuticals, )nc. 3aid domestic corporation first used
the afore/stated trademark in the Philippines on August 71, 798:. )t covers ;a medicinal preparation of
antihistamic, analgesic, antipyritic with vitamin C and Dioflavenoid used in the treatment of common colds,
influen5a and other febrile diseases with capillary hemmorrhagic tendencies.; The product falls under Class
2 of the official classification, that is, ;*edicines and Pharmaceutical Preparations;.
Dristol *yers Co., a corporation of the 3tate of +elaware, ..3.A., filed on 6anuary 2, 7989 an opposition to
the application. 3aid oppositor is the owner in the Philippines of the trademark ;D.%%#$)-; under
Certificate of $egistration -o. ?8:@ issued by the Philippine Patent &ffice on *arch 1, 798?. )ts trademark
is also registered in the .nited 3tates under Certificate of $egistration -o. 82279C issued on -ovember ?,
7980. )t was first used in the Philippines on *ay 71, 7981. The product covered by ;D.%%#$)-; also
belongs to Class 2, *edicines and Pharmaceutical Preparations. +esignated as ;Antacid analgesic;, it is
intended for relief in cases of ;simple headaches, neuralgia, colds, menstrual pain and minor muscular
aches.;
The thrust of oppositor's contention was that the registration of the applicant's trademark ;D)&%#$)-
would violate its rights and interests in its registered trademark ;D.%%#$)-; as well as mislead and
confuse the public as to the source and origin of the goods covered by the respective marks, in view of the
allegedly practically the same spelling, pronunciation and letter/type design of the two trademarks
covering goods of the same class.
The parties thereafter filed on 6anuary 7@, 7927 a (oint petition stipulating as to the facts and submitting
the case upon the issue of whether or not, considering all the factors involved, in both trademarks B as
the parties would discuss in their memoranda,$ there will be such confusing similarity between the two
trademarks as will be likely to deceive the purchasing public.
Intellectual Property Rights Cases (July 23, 2013) (Atty. Analiza
Acosta!o"tas) &
After submission of memoranda, on 6une 07, 7921 the +irector of Patents rendered a decision granting
the petition for registration and dismissing the opposition, on the ground that, all factors considered the
trademarks in question are not confusingly similar, so that the damage feared by the oppositor will not
result.
%rom said decision the oppositor appealed to this Court by petition for review filed on 6uly 0?, 7921. The
sole issue raised thereby is Are the trademarks ;D)&%#$)-; and ;D.%%#$)-;, as presented to the public
in their respective labels, confusingly similarG
Appellant contends that confusing similarity will obtain because both products are primarily used for the
relief of pains such as headaches and colds> and because words ;D)&%#$)- and ;D.%%#$)-; are practically
the same in spelling and pronunciation.
)n determining whether two trademarks are confusingly similar, the test is not simply to take their words
and compare the spelling and pronunciation of said words. $ather, it is to consider the two marks in their
entirety, as they appear in the respecti%e labels, in relation to the goods to which they are attached. 3aid
rule was enunciated by this by this Court through 6ustice %eliA Dautista Angelo in &ead #ohnson ' (o %s
)*# *an +orp, ,td, ,,7:8C7, April 0:, 7921, thus
)t is true that between petitioner's trademark ;A,ACTA; and respondent's ;A,A3JA; there are
similarities in spelling, appearance and sound for both are composed of siA letters of three syllables
each and each syllable has the same vowel, but in determining if they are confusingly similar a
comparison of said words is not the only determining factor. The two marks in their entirety as they
appear in the respective labels must also be considered in relation to the goods to which they are
attached. The discerning eye of the observer must focus not only on the predominant words but
also on the other features appearing in both labels in order that he may draw his conclusion
whether one is confusingly similar to the other. ...
Applying this test to the trademarks involved in this case, it is at once evident that the +irector of Patents
did not err in finding no confusing similarity. %or though the words ;D)&%#$)-; and ;D.%%#$)-; have the
same suffiA and similar sounding prefiAes, they appear in their respective labels with strikingly different
backgrounds and surroundings, as to color , si5e and design.
%or convenience we sum up these differences, as follows
$elevant
%actors
;D)&%#$)-; ;D.%%#$)-;
7. 3hape K
3i5e of ,abel
$ectangular, about 1/1N?; 0/7N?; $ectangular, 1/1N?;' 7/7N?;
0. Color of
,abel
Predominantly Iellow Predominantly !hite
1. Color
background
of !ord/mark
&live/green Dlue
?. &ver/all
,ayout
At the top center/word mark
;D)&%#$)-;> below it are contents of
medicine, arranged hori5ontally> at
bottom, center, ;.nited
Pharmaceuticals, )nc.; in olivegreen
background. At left side B dosage,
printed perpendicularly> at right
side,indications, also perpendicularly
printed.
At left side of label B -ood.
mark ;D.%%#$)-;> with
;Dristol *yers Co., -ew
Iork, -.I.; below at right
side, contents, indications
dosage are grouped
together, printed
perpendicularly
8. %orm of
product
Capsules B
label says ;8C capsules;
Tablets B
label says ;12 Tablets;
2.
Prescription
,abel states
;To be dispensed only by or on the
prescription of a physician;
-o such statement
Intellectual Property Rights Cases (July 23, 2013) (Atty. Analiza
Acosta!o"tas) '
Accordingly, taken as they will appear to a prospective customer, the trademark in question are not apt to
confuse. %urthermore, the product of the applicant is eApressly stated as dispensable only upon doctor/s
prescription, while that of oppositor does not require the same. The chances of being confused into
purchasing one for the other are therefore all the more rendered negligible. Although oppositor avers that
some drugstores sell ;D)&%#$)-; without asking for a doctor's prescription, the same if true would be an
irregularity not attributable to the applicant, who has already clearly stated the requirement of a doctor's
prescription upon the face of the label of its product.
!herefore, the decision of the +irector of Patents appealed from is hereby affirmed without costs. 3o
ordered.
4. G.R. No. L%'39(4 Apr18 '9, 1977
A&ERICAN C6ANA&ID CO&PAN6, petitioner,
vs.
THE DIRECTOR O PATENTS "#$ TIU CHIAN, respondents.
&U9O7 PAL&A, J.:
This is an appeal from a decision of the +irector of Patents in 0nter Partes Case -o. 7?C entitled 12merican
(yanamid (ompany, petitioner, %ersus 3iu (hian, respondent which denied the petition of American
Cyanamid Company to cancel the registration of the trademark 3.,*#T)-# issued in favor of Tiu Chian.
The factual background of this case follows
Petitioner to which !e shall refer at times as Cyanamid field on April 1, 7989, a petition to cancel
certificate of registration -o. 81?@ issued on 6uly 2, 7982, in favor of respondent Tiu Chian of the ,atter's
trademark 3.,*#T)-# used on medicine for the control of infectious cory5a and for the prevention of cold
rhinitis, roup, cecal coccidiosis and intestinal coccidiosis of chicken and other domesticated birds.
(yanamid claims that it is the owner of a trademark 3.,*#T which it had used for many years in the
.nited 3tates since 79?2 and which was duly $egistration -o. ?17909 and which was first used in the
Philippines on *ay 08, 798C, for which it filed an application for registration of the same in this country on
*ay 1, 7982. 3.,*#T is the trademark of a veterinary product used, among other purposes, ;for the
control of outbreaks of ceal and intestinal coccidiosis in turkeys' and for reducing mortality in pullorum
disease in baby chicks, acute fowl cholera in chickens, turkeys and ducks and anatipistifer disease in
ducks.; Through long use in the country, 3.,*#T has become popular and well/known and en(oys
widespread reputation brought about by eAtensive advertisement and promotion through the media.
-otwithstanding the above, respondent filed an application for registration of 3.,*#T)-# as his trademark
on a veterinary product used for the same purposes thereby making respondent's product confusingly with
that of petitioner which is unfair and un(ust to the label.
)n support of its Petition for cancellation, (yanamid presented as its #Ahibit D a sample of the label used
on its product and as #Ahibit C a sample of the label of respondent Tiu Chian used on the latter's product.
<pp. 02?/028, original record= )t likewise submitted among its eAhibits several indent orders issued by %.#.
F.#,,)G, )-C. to various business companies,> covering petitioner's 3ulmet 3olution <#Ahibits ", "/7, 6, 6/
7, ), )/7, J, and ,=.
$espondent Tiu Chian opposed this Petition for cancellation of his trademark 3.,*#T)-#.
&n 6une 9, 792?, the +irector of Patents rendered his decision denying the Petition for cancellation of
respondent's certificate of registration of the trademark 3.,*#T)-#, based on the following findings
<7= Petitioner's trademark 3.,*#T <#Ahibit D= is used on a preparation for practically all domesticated
animals such as fowl, cattle, pigs, horses and sheep, whereas, 3.,*#-T)-# is limited only to chicken and
other domisticated birds. This distinction is evident from the printed matter appearing on the respective
labels of the parties. Thus, on respondent's label <#Ahibit C= it is indicated thereon that the preparation is
for treatment of birds and chicken <p. 028 volume of eAhibits=, whereas, the label <#Ahibit D= of petitioner
indicates that the product is for chicken, turkey, duck, and may be employed in the treatment of certain
conditions in horses, cattle, calves, sheep, and swine <p. 02?, )dem=.
<0= &n top of petitioner's label, #Ahibit D, the word ;CIA-A*)+; is printed in prominent letters and at the
bottom of the label there appears in bold letters the words ;A*#$)CA- CIA-A*)+ C&*PA-I, -#! I&$J
0C, -.I.; indicating the manufacturer of the product. &n the other hand, at the top of respondent's label,
#Ahibit C, there appears the pictures of two roosters with the word ;"#-$I'3; in/between, and at the
bottom ;"#-$I'3 ,AD&$AT&$)#3 P"),)PP)-#3; are clearly printed indicating the source of the product.
Intellectual Property Rights Cases (July 23, 2013) (Atty. Analiza
Acosta!o"tas) (
<1= Petitioner's preparation consists of a dringking water solution and this is clearly indicated in bold
letters on the label, whereas, the of respondent consists of tablets for veterinary use prominently
indicated in red letters on the label, #Ahibit C.
The above differences in the physical aspect or appearance of the respective labels were found by the
+irector of Patents substantial and striking enough so as to prevent any confusing similarity between the
two which may lead a buyer to confuse one with the other.
!ith respect to Petitioner's contention that respondent's trademark bears the two syllables of petitioner's
3.,*#T and that respondent merely added the syllable ;)-#;, the +irector of Patents reasoned out that
the syllables ;3.,; and ;*#T; are coined from a common source suggestive of chemical compounds which
are attributes of the products of the parties herein, that is, ;3.,; being derived from ;3.,%A; and ;*#T;
from methyl, so that neither party may claim eAclusive use to them, and that with the addition of the
syllable ;)-#; by respondent, a marked distinction is affected to distinguished the two trademarks.
The +irector of Patents likewise found that no material damage was sustained by petitioner during the
time that respondent was using 3.,*#T)-# on its products. Thus, it is shown from #Ahibit 3 that the total
of the sales of 3.,*#T product was P:0,@0?.18 in 7989, which increased to P701,2?7.@8 in 792C, and
that although in 7927 the sales decreased slightly to P77@,207.08, that was offset considerably by the
sudden increase to P727,01@.28 in 7920.
%rom the foregoing decision, American Cyanamid Company appeals to this Court and submits five
assigned errors, to wit
%irst Assignment of #rror
$espondent +irector of Patents erred in finding that petitioner did not have priority in the
use of its trademark 3.,*#T over respondent Tiu Chian's use of his trademark 3.,*#T)-#.
3econd Assignment of #rror
$espondent +irector of Patents erred in holding that the trademark 3.,*#T)-# is not
confusingly similar to the trademark 3.,*#T.
Third Assignment of #rror
$espondent +irector of Patents erred in holding that respondent Tiu Chian's certificate of
registration -o. 81?@ for the trademark 3.,*#T)-# was not obtained by fraud.
%ourth Assignment of #rror
$espondent +irector of Patents erred in holding that petitioner is legally obliged to prove
damages by reason of the issuance of certificate of registration -o. 81?@ as a condition
precedent for obtaining its cancellation.
%ifth Assignment of #rror
$espondent +irector of Patents erred in delegating the authority to hear and receive the
evidence in this case to a so/called hearing officer and therefor he has no (urisdiction to
render the decision appealed from because he did not hear the case nor receive the
evidence thereof.
!e view the second assignment of error as the issue which goes to the very heart of the litigation, the
disposition of which renders the treatment of the, other assigned errors unnecessary.
The problem therefore to be resolved is whether or not petitioner correctly claims that respondent's
trademark 3.,*#T)-# was copied from its trademark 3.,*#T)-# giving rise to a confusing similarity
between the two in violation of $epublic Act 722 otherwise known as the Trade/*ark ,aw.
!e find petitioner's submittal devoid of merit and hold that there is no infringement of trademark which
(ustify a cancellation of respondent's registered trademark 3.,*#T)-#.
7. An eAamination of the documentary evidence submitted by the parties confirms the findings of the
+irector of Patents that there are striking differences between the two labels, #Ahibits D and C, which
preclude the possibility of the purchasing public confusing one product with the other. 3aid labels are
entirely different in si5e, background, colors, contents, and pictorial arrangement in short. the general
Intellectual Property Rights Cases (July 23, 2013) (Atty. Analiza
Acosta!o"tas) 10
appearances of the labels bearing the respective trademarks are so distinct from each other that petitioner
cannot assert that the dominant features, if any, of its trademark were used or appropriated in
respondent's own.
Thus B
<a= 3he coloring scheme Petitioner's 3.,*#T)-# label, #Ahibit D, has a white background with the word
3.,*#T)-# printed in dark green, while respondent's 3.,*#T)-# label, #Ahibit C, is dark yellow in color,
and the word 3.,*#T)-#. is printed in dark blue. )n fact, #Ahibit D carries mainly two colors B white and
green, while #Ahibit C uses yellow, blue, and red
<b= 3he pictorial representation $espondent's label, #Ahibit C, presents at its top the pictures of two
roosters and in between is the word ;"#-$I'3; printed in an egg/shaped enclosure, while petitioner's label
carries no such pictorial representation nor even one similar to it, for what appears on the top of its label
is the word ;CIA-A*)+; printed in bold and widely/spaced green letters.
<c= The printed matter on the label A very important point of difference between the labels of the parties
is found in the cotents of the printed matter. )n the label #Ahibit D, the product is described in bold green
letters as ;+rinking !ater 3olution; and the printed directions indicate that it is for use of chicken flocks,
turkeys, ducks, as well as in certain conditions for horses, cattle, calvess, sheep, and swine. &n the other
hand, in respondent's label #Ahibit C what are printed in bold red letters are ;Tablets 4eterinary;. #Acept
for the use of the words ;Adult birds; and ;3mall chicks;, there is nothing in #Ahibit C which indicates that
the preparation may be used for turkesy, ducks, or for any other domesticated animals mentioned in the
3.,*#T label. &n this point, it is significant to note that the product represented by the trademarks of the
parties is a medicianal preparation for veterinary use, consequently, a prospective buyer will be cautious
and prudent enough to eAamine the contents of the printed matter on the label, unlike in a situation
where the product is for ordinary personal or household use, such as soap and other tiolet articles,
biscuits, candies, and ther like where the consumer is not eApected to eAercise moer than ordinary
diligence in the choice or selectioon a purchase not to ascertain that what he is purchasing is a animals,
and in the process mistake a water solution for a tablet over %ice %ersa.
<d= 3he clear indication of the source Petitioner's label clearly indicates that the product 3.,*#T is of
foreign origin.
-ot only is the word ;CIA-A*)+; printed in big widely/spaced letters at the top of the label but at the
bottom thereof the words ;A*#$)CA- CIA-A*)+ C&*PA-I, -#! I&$J 0C, -.I.; are printed in white
capital letters against a dark green background. )n respondent's 3.,*#-T)-# label, #Ahibit C, the name
;"#-$I'3; in turn is printed clearly above the word 3.,*#T)-# and at the bottom of the label the phrase
;"#-$I'3 ,AD&$AT&$)#3 P"),)PP)-#3;; is printed in white letters against a dark blue background making
it distinctly visible.
Thus, looking at the two labels #Ahibits D and C it is quite apparent that the source of the product is
predominantly indicated thereby discounting petitioner's assertion that the 3.,*#T)-# trademark is a
plain copy of its own with intent to pass respondent's article as coming from the same source as that of
petitioner's medicinal preparation.
!hat have been stated above sufficiently throws out petitioner's second assignment of error.
0. )n page 82 of petitioner's brief the case of ,im 4oa %s +irector of Patents, ,/@C:0, &ctober 17, 7982, is
invoked in support of this appeal. "owever, that case is not controlling because the article in question in
,im "oa was a food seasoning product which according to this Court is ;generally purchased by cooks and
household help, sometimes illiterate, who are guided by pictorial representations;> that the two roosters
appearing in the trademark of applicant and the hen appearing in the trademark of the oppositor although
of different seAes belong to the same family of chicken known as ;manok; so that when a cook or a
housewife buys a food seasoning product for the kitchen the brand of ;manok; or ;marka manok; will be
uppermost in her mind and regardless of whether the picture is a hen or a rooster, to her, they are all
;manok;, and consequently there lies the confusion, even deception.
)n this case of 3.,*#T and 3.,*#T)-#, the product is for medicinal veterinary use and consequently, the
purchaser will be more wary of the nature of the product he is buying. Contrary to the allegation of
petitioner herein, the source or manufacturer of the article will be a most important factor in the mind of
the purchaser in selecting the article he will buy, and a preparation manufactured by a well/known foreign
company such as the ;American Cyanamid Company, -ew Iork;, en(oys a decided advantage over one
which is locally produced and manufactured by an unknown entity such as ;"enry's ,aboratories;.
!hat is relevant to and decisive of the case at bar is &ead #ohnson ' (o %s )*# *an +orp ,td, et al,
,/7:8C7, decided on April 0:, 7921, barely a year before the appealed decision in the instant case. *an
Intellectual Property Rights Cases (July 23, 2013) (Atty. Analiza
Acosta!o"tas) 11
+orp, ,td., a -etherlands corporation, filed an application for the registration of its trademark ;A,A3JA
and pictorial presentation of a Doy's "ead with a rectangular design.; *ead 6ohnson, a corporation
organi5ed under the laws of )ndiana, ..3.A., being the owner of a trademark ;A,ACTA; used for powdered
half/skim milk, which was registered with the Patent &ffice on 6une 70, 7987, opposed the registration on
the ground that it will be damaged by the use of the trademark ;A,A3JA; on milk products, etc., the same
being confusedly similar to its trademark ;A,ACTA;. The +irector of Patents dismissed the opposition and
approved for registration the trademark ;A,A3JA; on the ground that the applicant's trademark does not
sufficiently resemble oppositor's mark as to cause confusion or mistake or deceive purchasers. This Court
through 6ustice Dautista Angelo upheld the findings of the +irector of Patents. The Court held that while
there are similarities in spelling, appearance and sound between ;A,ACTA; and ;A,A3JA; the trademarks
in their entirety as they appear in their respective labels show glaring and striking differences or
dissimilarities such as in si5e of the containers, the colors of the labels, inasmuch as one uses light blue,
pink, and white, while 4an +orp contains uses two colors ;A,ACTA; has only the first letter capitali5ed and
is written in black while the mark ;A,A3JA; has all the letters capitali5ed written in while eAcept that of
the condensed full cream milk which is in red.
1
5thepa %s the +irector of Patents, -estmont Pharamaceutical, 0nc. is another case in point. )n #thepa,
the question was whether the trademark ;AT.33)-; of !estmont may be registered in the Philippines
notwithstanding the ob(ection of 5thepa which claimed that it would be damaged because ;AT.33)-; is so
confusingly similar with ;P#$T.33)-; registered in this country on 3eptember 08, 798:. The +irector of
Patents approved the application for the registration of the trademark ;AT.3)-; and his decision was
appealed to this Court. )n disposing of the appeal, the Court affirmed the decision of the +irector of
Patents holding, inter alia, that a practical approach to the problem of similarity or dissimilarity is to go
into the whole of the two trademarks pictured in their manner of display> that taking a casual look at the
two labels it is shown that they are entirely different in color, contents, arrangement of words thereon,
si5es, shape, and general appearance so that the label of one cannot be mistaken for that the other> that
the use of the word 1tussin1 as an component of both trademarks cannot be considered as a factor for
declaring the two confusingly similar for ;tussin1 is descriptive and generic and is open for apropriation by
anyone, and that while the word by itself cannot be used eAclusively to )dentify one goods it may properly
become a sub(ect of a a trademark by combination with another word or phrase> hence, 5thepa/s
;Pertussin ; and -estmonth/s Atussin;
'
3imilarly, in the case before .s, as correctly stated by the +irector of Patents, the word 3.,*#T is derived
from a combination of the syllables ;3.,; which is derived from 6ulfa and ;*#T; from methyl both of
which are chemical compounds present in the article manufactured by the contending parties, and the
addition of the syllable ;)-#; in respondent's label is sufficient to distinguish respondent's product or
trademark from that of petitioner.
1. Petitioner also asserts that the trademarks of the parties are used on )dentical goods and for )dentical
purposes and that this is an important factor in determining whether or not there is infringement of a
trademark. <p. ?9, petitioner's brief=. !e cannot agree with petitioner that the trademarks are used on
)dentical goods because as already indicated earlier, petitioner's 3.,*#T label, #Ahibit D, is used on a
drinking water solution while that of respondent labels tablets. That both products are for )dentical use
may be admitted to the eAtent that respondent's tablets are indicated for the treatment, control and
prevention in chicken of infectious cory5a also known as colds, rhinitis and roup= and for the prevention of
cecal and intestinal coccidiosis which is also indicate in petitioner's 3.,*#T label. "owever, no one
including petitioner can claim a monopoly in the preparation of a medicinal product for the use indicated
above. The field is open for the manufacture of medicinal preparations for the same veterinary purposes.
!hat the law prohibits is that one manufacturer labels his product in a manner strikingly )dentical with or
similar to that of another manufacturer as to deceive or confuse the buying public into believing that the
two preparations are one and come from the same source. )n the case however of 3.,*#T)-# and
3.,*#T)-# it is satisfactorily shown from the evidence of the parties that while their products may be for
a similar use, their presentation to the purchasing public come in totally different forms.
7istol &yers (ompany %s 3he +irector of Patents and United 2merican Pharmaceuticals, 0nc, presents a
similar Problem or situation. )n this case, .nited American Pharmaceuticals filed on &ctober 07, 798: a
petition for registration with the patent office of its trademark ;D)&%#$)-; intended for the treatment of
common colds, influen5a, etc. This application was opposed by Dristol *yers Company which is the owner
in the Philippines of the trademark 'D.%%#$)-; and which is also intended for relief in cases of ;simple
headaches, neuralgia, colds, menstrual pain and minor muscular aches.; The +irector of Patents approved
the registration of ;D)&%#$)-; and his decision was appealed to this Court, the appellant contending
principally that both products are used for the relief of pains such as headaches and colds and that the
words 'D)&%#$)-; and ;D.%%#$)-; are practically the same in spelling and pronunciation. Affirming the
decision of the +irector of Patents, the Court through 6ustice 6.P. Deng5on held that although the two
words ;D)&%#$)-; and 'D.%%#$)-' have the same suffiA and similar sounding prefiAes, they appear in
their respective labels with striking different backgrounds and surroundings, as to color, si5e and design,
and consequently there is no confusing similarity between the trademarks.
Intellectual Property Rights Cases (July 23, 2013) (Atty. Analiza
Acosta!o"tas) 12
3imilarly, the trademarks ;A,ACTA; and ;A,A3JA; were used for milk products and the like <*ead 6ohnson
vs -.4.6. 4an +orp, ,td., supra= while ;AT.33)-; and ;P#$T.33)-; as trademarks were used for cough
and other bronchial ailments #thepa vs +irector of Patents, supra=, and all were duly recogni5ed as
registrable trademarks.
?. )n view of our conclusion that there is no confusing of deceptive similarity between 3.,*#T and
3.,*#T)-#, it is unnecessary to pass upon the merits of the first, third and fourth assigned errors.
Absent a finding of confusing similarity between two trademarks, the priority in the use of the marks
3.,*#T by the petitioner will have no decesive effect in the granting of his petition for cancellation of the
registration of respondent trademark <%irst Assignment of #rror=.
!ith respect to the allegation of petitioner that the trademark 3.,*#T)-# was obtained by fraud, as held
in ,a 5strella +istillery, 0nc %s the +irector of Patents, et al, 7C8 Phil. 7071, the question whether or not
the registration of the trademark had been obtained with the fraud and false representation becomes
necessary and important only when there is a finding of similarity between the contesting trademarks, and
in order that proof of fraud might produce cancellation it is necessary that it be coupled with a showing
that the label trademarks of the parties are similar and that the maintenance of one trademark would
work to the damage of the other. <Third Assignment of #rror=.
&n the contention of petitioner herein that there it was error for the +irector of Patents to rule that the
burden rests on petitioner to show probable damage which it has not discharged, suffice it to the state
that any error or mistake committed by respondent +irector of Patents on this point will not affect one
way or the other +ecision in this case which is principally based on the finding that there is no similarity
between the two trademarks 3.,*#T and 3.,*#T)-# likely to cause confusion in the buying public so as
constitute a violation of the Trademark 3tatute. <%ourth Assignment of #rror=.
)n its fifth assignment of error, petitioner questions the delegation by the +irector of Patents of his
authority to hear and receive the evidence in this case to a "earing &fficer and alleges that respondent
+irector had no (urisdiction to render the decision appealed from. Third matter has now been put to rest in
2merican 3obacco (ompany, et al %s +irector of Patents, et al, ,/02@C1, decided on &ctober 78, 79:8
which involved the authority of the +irector of Patents &ffice to hear 0nter Partes Proceedings in the
registration of trademarks and tradenames under $epublic Act 722. This Court through 6ustice %eliA
Antonio held inter alia
The nature of the power and authority entrusted to the +irector of Patents suggests that the
aforecited laws <$epublic Act -o. 722, in relation to $epublic Act -o. 728= should be
construed so as to give the aforesaid official the administrative fleAibility necessary for the
prompt and eApeditious discharge of his duties in the administration of said laws. As such
officer, he is required, among others, to determine the question of priority in patent
interference proceedings, decide applications for reinstatement of a lapsed patent,
cancellation of patents under $epublic Act -o. 728, inter partes proceedings such as
&ppositions, claims of interference, cancellation cases under the Trade/mark ,aw and other
matters in connection with the enforcement of the aforesaid laws. ...
Thus, it is well/settled that while the power to decide resides solely in the administrative
agency vested by law, this does not preclude a delegation of the power to hold a hearing on
the basis of which the decision of the administrative agency will be made.
The rule that requires an administrative officer to eAercise his own (udgment and discretion
does not preclude him from utili5ing, as a matter of practical administrative procedure, the
aid of subordinates to investigate and report to him the facts, on the basis of which the
officer makes his decisions. )t is sufficient that the (udgment and discretion finally eAercised
are those of the officer authori5ed by law.
4

As correctly observed in the foregoing case, the point involved is procedural and not (urisdictional. Deing
so, the (urisdiction of respondent +irector to render the decision assailed is not affected by lapses in the
observance of the procedural rules, if no ob(ection thereto is seasonably raised. -on/conformity with rules
on procedure is deemed waived in the absence of any ob(ection thereto. The entire records of the case at
bar fail to disclose any ob(ection on the part of petitioner to the hearing of the case and the reception of
evidence by a "earing &fficer. )t surprises us why the petitioner participated throughout the proceedings
before the "earing &fficer from 7989 to 792?, actively prosecuting its case therein, and now asks this
Court to nullify the whole proceedings together with the decision rendered which happened to be adverse
to him.
!"#$#%&$#, !e affirm the decision of respondent +irector of Patents, with costs against petitioner. 3o
&rdered.
Intellectual Property Rights Cases (July 23, 2013) (Atty. Analiza
Acosta!o"tas) 13
Intellectual Property Rights Cases (July 23, 2013) (Atty. Analiza
Acosta!o"tas) 1#