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G.R. No. 48226.

December 14, 1942

ANA L. ANG, petitioner, vs. TORIBIO TODORO, respon!ent.
Toribio Teodoro has continuously used Ang Tibay both as a trademark and tradename, in the manufacture
and sale of slippers, shoes and indoor baseballs since 1910. He formally registered it as trademark on
eptember 191! and as a tradename in 19"". #etitioner registered the same trademark Ang Tibay for pants
and shirts in 19"$. #etitioner no% assails the &alidity of respondent's trademark. He contends that the phrase
Ang Tibay is a descripti&e term and therefore, cannot be sub(ect of a trademark. #etitioner claims also that
respondent committed infringement %ith regard to the trademark Ang Tibay.
)*+, -hether the trademark Ang Tibay is registrable
H+./, 0+. Ang Tibay is not a descripti&e term %ithin the meaning of the Trademark .a% but rather a
fanciful or coined phrase %hich may properly be appropriated as a trademark. And it must be noted that it %as
the respondent %ho first used the term Ang Tibay and in fact it has already ac1uired a secondary meaning in
a proprietary connotation. -ith regard to the infringement, it is proper to say that there is no infringement as
the goods sold by the parties are not the same. )n fact, it is more correct to conclude that the selection by
petitioner of the same trademark for pants and shirts %as moti&ated by a desire to get a free ride or the
reputation and selling po%er it has ac1uired at the e2pense of the respondent.
G.R. No. L"#9$2. December 29, 19$#.%
&A''O (R&ANO', '. A., petitioner, vs. DIR)TOR O* +ATNT', respon!ent.
Petitioners claim:
3asso Hermanos, .A., is the registered o%ner under Act 4o. 555 of the trademark composed of
the %ord 67osmopolite6 used on canned fish. 8n 9une 1:, 19:;, the petitioner, 3asso Hermanos, applied to
the /irector of #atents for a ne% certificate of registration of said trademark under the pro&isions of section :1
<a= of >epublic Act 4o. 155.
Respondents claim:
The %ord 67osmopolite6, as a trademark for canned fish is
descripti&e of said goods and, therefore, could not ha&e been legally registered as a trademark under the
pro&isions of Act 4o. 555 and, conse1uently, is not entitled to registration under section :1 <a= of >epublic Act
4o. 155.
The respondent /irector of #atents contends that the original registration of the trademark under
Act 4o. 555 %as 6null and &oid ab initio6 because the %ord 6cosmopolite6 is descripti&e and, therefore, the
registration thereunder is not subsisting.
-hether the %ord 7osmopolite is descripti&e and therefore cannot be registered as a trademark
48. The %ord 67osmopolite6 does not gi&e the name, 1uality or description of the canned fish for %hich it is
used. )t does not e&en describe the place of origin, for it does not indicate the country or place %here the
canned fish %as manufactured.
The court is, therefore, of the opinion that the registration of the trademark 67osmopolite6 under Act 4o. 555
%as &alid and is subsisting.
)n &ie% of the foregoing, the ruling of the respondent /irector of #atents is set aside and he is ordered to issue
to the petitioner a ne% certificate of registration of the trademark in e2change for the old one 4o. 1;;1
surrendered to him on 9une 1;, 19:;.
G.R. No. L"14#,,. December 29, 196-.%
T( A'T +A)I*I) &R)(ANDI'ING )OR+ORATION, petitioner, vs. T( DIR)TOR O* +ATNT'
.n! L/I' +. +LLI)R, respon!ents.
?acts, 8n 9une 1:, 19:@, 3arcelo T. #ua filed %ith the 8ffice of the /irector of 7ommerce an application for
the registration under Act 555 of the trademark Aerbena %ith a representation of a panish lady. The
applicant further alleged that the trademark applied for has continuously been used by him in commerce since
August 1!, 19:@ on such merchandise as lotion, face po%der, hair pomade, brilliante, and other like products.
.ater on, #ua assigned his rights to the trademark herein petitioner, %ho rene%ed the application under the
ne% trademark la% the #atents 8ffice on 4o&emeber ;, 19!@. The /irector of #atents appro&ed petitioner's
application for publication in the official BaCette. .uis #. #ellicer filed an opposition to the application on the
ground that he %ould be damaged by the registration of the trademark applied for. )n support thereof, #ellicer
attached to the opposition certain labels bearing a trademark .upel Aerbena, %hich trademark, oppositor
a&ers, %as registered in his fa&or under 7ertificate of >egistration 4o. !;!1.
)ssue, %hether or not &erbena is registrable for trademark
Held, 4o, upreme 7ourt held that the 1uestioned trademark is generically descripti&e or misdescripti&e of the
products, and that the representation of a panish .ady is not only decepti&ely misdescripti&e of the source or
origin <the goods co&ered being produce in the #hilippines and not in pain=, but like%ise common trade. The
court e2plained that the term Aernbena being descripti&e of a %hole genus of garden plants %ith fragrant
flo%ers <Aerbenaceae=, its use in connection %ith cosmetic products, %herein fragrance is of substantial
import, e&okes the idea that the products are perfumed %ith the e2tract of &erbena flo%ers, or of some oil of
similar aromaD and, regardless of the other connotations of the %ord, the use of the term cannot be denied to
other traders using such e2tracts oils in their o%n products.
The result %ould not change e&en if the /irector erred in ruling that the figure of a lady, as
pre&iously described, is like%ise is not registerable as a trademark. The figure, it may be granted, %as dra%n
on arbitrary on %himsical lines and styled in a peculiary distincti&e mannerD but the fact %ill not 1ualify the %ord
Aerbena for registration, since the combination of the t%o marks %ould still be inade1uate to guard against
the misleading effects that flo% from the use of the term by petitioner.
7onformably to the foregoing, unless the petitioner makes a disclaimer of the %ord &erbena, the application
should be held as properly denied by the /irector of #atents. The orders reinstating respondent #ellicer's
opposition are affirmed.
G.R. No. L"266,6. 0123 #-, 1982.%
+(ILI++IN R*INING )O., IN)., petitioner, vs. NG 'A& .n! T( DIR)TOR O* +ATNT',
ISSUE: -hether or not the product of respondent, 4g am, %hich is ham, and those of petitioner consisting of
lard, butter, cooking oil and soap are so related that the use of the same trademark 67A3)A6 on said goods
%ould likely result in confusion as to their source or origin.
Petitioners Contention:
The trademark 67A3)A6 %as first used ill the #hilippines by petitioner #hilippine >efining 7o. on
its products in 19$$. )n 19:9, petitioner caused the registration of said trademark %ith the
#hilippine #atent 8ffice under certificates of registration 4os. 1"!$E and 1"!"E, both issued on
3ay ", 19:9. 7ertificate of >egistration 4o. 1"!$E co&ers &egetable and animal fats, particularly
lard, butter and cooking oil, all classified under 7lass :@ <?oods and )ngredients of ?ood= of the
>ules of #ractice of the #atent 8ffice, %hile certificate of registration 4o. 1"!"E applies to
abrasi&e detergents, polishing materials and soap of all kinds <7lass :=.
#etitioner filed an opposition against respondent 4g am's application for patents.
Respondents Contention:
8n 4o&ember $!, 1950, respondent 4g am, a citiCen residing in )loilo 7ity, filed an application
%ith the #hilippine #atent office for registration of the )dentical trademark 67A3)A6 for his product,
ham, %hich like%ise falls under 7lass :@. Alleged date of first use of the trademark by respondent
%as on ?ebruary 10, 19!9.
RULING: The mere fact that one person has adopted and used a trademark on his goods does not pre&ent
the adoption and use of the same trademark by others on articles of a different description. )n fine, the 7ourt
hold that the business of the parties are nonEcompetiti&e and their products so unrelated that the use of
identical trademarks is not likely to gi&e rise to confusion, much less cause damage to petitioner.
The records of this case disclose that the term 67A3)A6 has been registered as a trademark not only by
petitioner but by t%o <$= other concerns.
The trademark 67A3)A6 is used by petitioner on a %ide range of products, lard, butter, cooking oil, abrasi&e
detergents, polishing materials and soap of all kinds. >espondent desires to use the same on his product,
ham. -hile ham and some of the products of petitioner are classified under 7lass :@ <?oods and )ngredients
of ?ood=, this alone cannot ser&e as the decisi&e factor in the resolution of %hether or not they are related
goods. +mphasis should be on the similarity of the products in&ol&ed and not on the arbitrary classification or
general description of their properties or characteristics.
The obser&ation and conclusion of the /irector of #atents are correct. The particular goods of the parties are
so unrelated that consumers %ould not in any probability mistake one as the source or origin of the product of
the other. 6Ham6 is not a daily food fare for the a&erage consumer. 8ne purchasing ham %ould e2ercise a
more cautious inspection of %hat he buys on account of it price. eldom, if e&er, is the purchase of said food
product delegated to household helps, e2cept perhaps to those %ho, like the cooks, are e2pected to kno% their
business. Fesides, there can be no likelihood for the consumer of respondentGs ham to confuse its source as
anyone but respondent. The facsimile of the label attached by him on his product, his business name 6A3G
HA3 A4/ FA784 ?A7T8>06 %ritten in bold %hite letters against a reddish orange background, is certain to
catch the eye of the class of consumers to %hich he caters.
)n addition, the goods of petitioners are basically deri&ed from &egetable oil and animal fats, %hile the product
of respondent is processed from pigGs legs. A consumer %ould not reasonably assume that, petitioner has so
di&ersified its business as to include the product of respondent.
G.R. Nos. L"2,42$ 4 L"#-$-$. Apri2 28, 198-.%
.ppe22.nts, vs. 0A)INTO R/BBR 4 +LA'TI)' )O., IN)., .n! A) R/BBR 4 +LA'TI)'
)OR+ORATION, !e7en!.nts".ppe22.nts.
#etitioner's 7ontention,
#laintiffs contend that 67ustombuilt6 shoes are )dentical in design and Beneral appearance to 67huck Taylor6
and, claiming prior )dentification of 67huck Taylor6 in the mind of the buying public in the #hilippines, they
contend that defendants are guilty of unfair competition by selling 67ustombuilt6 of the design and %ith the
general appearance of 67huck Taylor6. The design and appearance of both products, as sho%n by the
samples and photographs of both products, are not disputed.
>espondent's 7ontention,
/efendants insist that <a= there is no similarity in design and general appearance bet%een 67ustombuilt6 and
67huck Taylor6, pointing out that 67ustombuilt6 is readily )dentifiable by the tradename 67ustombuilt6 appearing
on the ankle patch, the heel patch, and on the sole. )t is also &igorously contended by defendants that the
registration of defendant 9acinto >ubberGs trademark 67ustombuilt6 being prior to the registration in the
#hilippines of plaintiff 7on&erse >ubberGs trademark 67huck Taylor6, plaintiffs ha&e no cause of action. )t
appears that defendant started to manufacture and sell 67ustombuilt6 of its present design and %ith its present
appearance in 195$.
-H+TH+> /+?+4/AT ) B*).T0 8? *4?A)> 783#+T)T)84 -H+4 /+?+4/A4T 9A7)4T8 >*FF+> H
#.AT)7 78., )47., 3A4*?A7T*>+/ A4/ 8./ >*FF+>E8.+/ 7A4AA H8+ *4/+> )T
>+B)T+>+/ T>A/+ 3A>I 67*T83F*).T
?rom said e2amination, -e find the shoes manufactured by defendants to contain, as found by the trial court,
practically all the features of those of the plaintiff 7on&erse >ubber 7orporation and manufactured, sold or
marketed by plaintiff +d%ardson 3anufacturing 7orporation, e2cept for heir respecti&e brands, of course. -e
fully agree %ith the trial court that 6the respecti&e designs, shapes, the colors of the ankle patches, the bands,
the toe patch and the soles of the t%o products are e2actly the same ... <such that= at a distance of a fe%
meters, it is impossible to distinguish 67ustombuilt6 from 67huck Taylor6. These elements are more than
sufficient to ser&e as basis for a charge of unfair competition. +&en if not all the details (ust mentioned %ere
)dentical, %ith the general appearances alone of the t%o products, any ordinary, or e&en perhaps e&en a not
too percepti&e and discriminating customer could be decei&ed, and, therefore, 7ustombuilt could easily be
passed off for 7huck Taylor. 9urisprudence supports the &ie% that under such circumstances, the imitator must
be held liable.
G.R. No. 1---98. December 29, 199$.%
&RALD GAR&NT &AN/*A)T/RING )OR+ORATION, petitioner, vs. (ON. )O/RT O* A++AL',
B/RA/ O* +ATNT', TRAD&AR8' AND T)(NOLOG9 TRAN'*R .n! (.D. L )O&+AN9, IN).,
Plaintiffs Contention:
H./. .ee 7o., )nc., a foreign corporation organiCed under the la%s of /ela%are, *..A., filed %ith
the Fureau of #atents, Trademarks H Technology Transfer <F#TTT= a #etition for 7ancellation of
>egistration 4o. > !0!: <upplemental >egister= for the trademark 6T0.)T)7 3>. .++6 used
on skirts, (eans, blouses, socks, briefs, (ackets, (ogging suits, dresses, shorts, shirts and lingerie
under 7lass $!, issued on $@ 8ctober 19;0 in the name of petitioner +merald Barment
3anufacturing 7orporation, a domestic corporation organiCed and e2isting under #hilippine la%s.
The company also in&oked ec. "@ of >.A. 4o. 155 <Trademark .a%= and Art. A))) of the #aris
7on&ention for the #rotection of )ndustrial #roperty, a&erred that petitionerGs trademark 6so closely
resembled its o%n trademark, G.++G as pre&iously registered and used in the #hilippines, and not
abandoned, as to be likely, %hen applied to or used in connection %ith petitionerGs goods, to cause
confusion, mistake and deception on the part of the purchasing public as to the origin of the
Defendants Contention:.
+merald Barment contended that its trademark %as entirely and unmistakably different from that
of pri&ate respondent and that its certificate of registration %as legally and &alidly granted.
+merald Barment further alleges that it has been using its trademark 6T0.)T)7 3>. .++6 since
1 3ay 19@!, yet, it %as only on 1; eptember 19;1 that H./. .ee 7o. filed a petition for
cancellation of +merald's certificate of registration for the said trademark.
RULING: The essential element of infringement is colorable imitation. This term has been defined as 6such a
close or ingenious imitation as to be calculated to decei&e ordinary purchasers, or such resemblance of the
infringing mark to the original as to decei&e an ordinary purchaser gi&ing such attention as a purchaser usually
gi&es, and to cause him to purchase the one supposing it to be the other.6

7olorable imitation does not mean
such similitude as amounts to identity. 4or does it re1uire that all the details be literally copied. 7olorable
imitation refers to such similarity in form, content, %ords, sound, meaning, special arrangement, or general
appearance of the trademark or tradename %ith that of the other mark or tradename in their o&erEall
presentation or in their essential, substanti&e and distincti&e parts as %ould likely mislead or confuse persons
in the ordinary course of purchasing the genuine article.

)n determining %hether colorable imitation e2ists, (urisprudence has de&eloped t%o kinds of tests J the
/ominancy Test applied and the Holistic Test.
As its title implies, the test of dominancy focuses on the similarity of the pre&alent features of the competing
trademarks %hich might cause confusion or deception and thus constitutes infringement. )f the competing
trademark contains the main or essential or dominant features of another, and confusion and deception is
likely to result, infringement takes place. /uplication or imitation is not necessaryD nor it is necessary that the
infringing label should suggest an effort to imitate.
8n the other side of the spectrum, the holistic test mandates that the entirety of the marks in 1uestion must be
considered in determining confusing similarity. )n determining %hether the trademarks are confusingly similar,
a comparison of the %ords is not the only determinant factor. The trademarks in their entirety as they appear in
their respecti&e labels or hang tags must also be considered in relation to the goods to %hich they are
attached. The discerning eye of the obser&er must focus not only on the predominant %ords but also on the
other features appearing in both labels in order that he may dra% his conclusion %hether one is confusingly
similar to the other.

Applying the foregoing tenets to the present controersy and ta!ing into acco"nt the fact"al
circ"#stances of this case$ %e considered the trade#ar!s inoled as a %hole and r"le that
petitioner&s 'S()LIS(IC *R+ LEE' is not conf"singly si#ilar to priate respondent&s 'LEE' trade#ar!+
#etitionerGs trademark is the %hole 6T0.)T)7 3>. .++.6 Although on its label the %ord 6.++6 is prominent,
the trademark should be considered as a %hole and not piecemeal. The dissimilarities bet%een the t%o marks
become conspicuous, noticeable and substantial enough to matter especially in the light of the follo%ing
&ariables that must be factored in.
,irst$ the products in&ol&ed in the case at bar are, in the main, &arious kinds of (eans. These are not your
ordinary household items like catsup, soysauce or soap %hich are of minimal cost. 3aong pants or (eans are
not ine2pensi&e. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and
%ould prefer to mull o&er his purchase. 7onfusion and deception, then, is less likely.
Second$ like his beer, the a&erage ?ilipino consumer generally buys his (eans by brand. He does not ask the
sales clerk for generic (eans but for, say, a .e&is, Buess, -rangler or e&en an Armani. He is, therefore, more
or less kno%ledgeable and familiar %ith his preference and %ill not easily be distracted.
,inally$ in line %ith the foregoing discussions, more credit should be gi&en to the 6ordinary purchaser.6 7ast in
this particular contro&ersy, the ordinary purchaser is not the 6completely un%ary consumer6 but is the
6ordinarily intelligent buyer6 considering the type of product in&ol&ed.
As %e hae preio"sly inti#ated the iss"e of conf"sing si#ilarity -et%een trade#ar!s is resoled -y
considering the distinct characteristics of each case+ In the present controersy$ ta!ing into acco"nt
these "ni."e factors$ %e concl"de that the si#ilarities in the trade#ar!s in ."estion are not s"fficient
as to li!ely ca"se deception and conf"sion tanta#o"nt to infringe#ent+
Another %ay of resol&ing the conflict is to consider the marks in&ol&ed from the point of &ie% of %hat marks are
registrable. 6.++6 is primarily a surname. #ri&ate respondent cannot, therefore, ac1uire e2clusi&e o%nership
o&er and singular use of said term. )t has been held that a personal name or surname may not be monopoliCed
as a trademark or tradename as against others of the same name or surname. ?or in the absence of contract,
fraud, or estoppel, any man may use his name or surname in all legitimate %ays. Thus, 6-ellington6 is a
surname, and its first user has no cause of action against the (unior user of 6-ellington6 as it is incapable of
e2clusi&e appropriation.

)n addition to the foregoing, %e are constrained to agree %ith petitionerGs contention that pri&ate respondent
failed to pro&e prior actual commercial use of its 6.++6 trademark in the #hilippines before filing its application
for registration %ith the F#TTT and hence, has not ac1uired o%nership o&er said mark.
Actual use in commerce in the #hilippines is an essential prere1uisite for the ac1uisition of o%nership o&er a
trademark pursuant to the #hilippine Trademark .a% <>.A. 4o. 155=.
?or lack of ade1uate proof of actual use of its trademark in the #hilippines prior to +merald Barment's use of
its o%n mark and for failure to establish confusing similarity bet%een said trademarks, H./. .ee 7oGs action for
infringement must necessarily fail.
:G.R. No. 112-12. Apri2 4, 2--1.%
'O)IT D' +ROD/IT' N'TL v. )A .n! )*) )OR+
,AC(S: 7?7 7orp filed %ith the F#TTT an application for the registration of the trademark ?.AA8> 3AT+>
for instant coffee. ociete /es #roduits 4estle, a %iss company registered under %iss la%s and domiciled in
%itCerland, filed an 8pposition claiming that the trademark is confusingly similar to its trademarks for coffee
and coffee e2tracts, 3AT+> >8AT and 3AT+> F.+4/.
.ike%ise, an opposition %as filed by 4estle #hilippines, a #hilippine corp and a licensee of ociete.
4estle claimed that the use by 7?7 of the trademark ?.AA8> 3AT+> and its registration %ould likely cause
confusion in the tradeD or decei&e purchasers and %ould falsely suggest to the purchasing public a connection
in the business of 4estle, as the dominant word present in the " trademarks is 3AT+>D or that the goods of
7?7 might be mistaken as ha&ing originated from the latter.
F#TTT denied 7?7's application for registration applying the dominancy test. 7A re&ersed applying the
holistic test.
ISSUE: -hether the trademark ?.AA8> 3AT+> is a colorable imitation of the trademarks 3AT+> >8AT
and 3AT+> F.+4/ and thus should be denied registration.
/ELD: 0+ applying the dominancy test.
7olorable imitation denotes such a close or ingenious imitation as to be calculated to decei&e ordinary
persons to purchase the one supposing it to be the other. )n determining if colorable imitation e2ists,
(urisprudence has de&eloped t%o kinds of tests E the /ominancy Test and the Holistic Test. The test of
dominancy focuses on the similarity of the pre&alent features of the competing trademarks %hich might
cause confusion or deception and thus constitute infringement. The holistic test mandates that the
entirety of the marks in 1uestion must be considered in determining confusing similarity.
)n infringement or trademark cases in the #hilippines, particularly in ascertaining %hether one trademark
is confusingly similar to or is a colorable imitation of another, no set rules can be deduced. +ach case
must be decided on its o%n merits.
The 7A held that the test to be applied should be the totality or holistic test, since %hat is of paramount
consideration is the ordinary purchaser %ho is, in general, undiscerningly rash in buying the more
common and less e2pensi&e household products like coffee, and is therefore less inclined to closely
e2amine specific details of similarities and dissimilarities bet%een competing products.
This 7ourt cannot agree %ith the abo&e reasoning. )f the ordinary purchaser is 6undiscerningly rash6 in
buying such common and ine2pensi&e household products as instant coffee, and %ould therefore be
6less inclined to closely e2amine specific details of similarities and dissimilarities6 bet%een the t%o
competing products, then it %ould be less likely for the ordinary purchaser to notice that 7?7's
trademark ?.AA8> 3AT+> carries the colors orange and mocha %hile that of 4estle's uses red and
bro%n. The application of the totality or holistic test is improper since the ordinary purchaser %ould not
be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an
ine2pensi&e and common household item.
3oreo&er, the totality or holistic test is contrary to the elementary postulate of the la% on trademarks and
unfair competition that confusing similarity is to be determined on the basis of &isual, aural, connotati&e
comparisons and o&erall impressions engendered by the marks in contro&ersy as they are encountered
in the realities of the marketplace. The totality or holistic test only relies on &isual comparison bet%een
t%o trademarks %hereas the dominancy test relies not only on the &isual but also on the aural and
connotati&e comparisons and o&erall impressions bet%een the t%o trademarks.
This 7ourt agrees %ith the F#TTT %hen it applied the test of dominancy. The %ord 3AT+> is the
dominant feature of opposer's mark. )t is printed across the middle portion of the label in bold letters
almost t%ice the siCe of the printed %ord >8AT. ?urther, the %ord 3AT+> has al%ays been gi&en
emphasis in the TA and radio commercials and other ad&ertisements made in promoting the product.
>obert 9a%orski and Atty. >ic #uno, the personalities engaged to promote the product, are gi&en the
titles 3aster of the Bame and 3aster of the Talk ho%, respecti&ely. )n due time, because of these
ad&ertising schemes the mind of the buying public had come to learn to associate the %ord 3AT+>
%ith the opposer's goods.
-hen one looks at the label bearing the trademark ?.AA8> 3AT+>, one's attention is easily attracted
to the %ord 3AT+>, rather than to the dissimilarities that e2ist. Therefore, the possibility of confusion
as to the goods %hich bear the competing marks or as to the origins thereof is not farfetched.
The %ord 63AT+>6 is neither a generic nor a descripti&e term. As such, it may be legally protected.
Generic terms are those %hich constitute 6the common descripti&e name of an article or substance,6 or
comprise the 6genus of %hich the particular product is a species,6 or are 6commonly used as the name
or description of a kind of goods,6 or 6imply reference to e&ery member of a genus and the e2clusion of
indi&iduating characters,6 or 6refer to the basic nature of the %ares or ser&ices pro&ided rather than to
the more idiosyncratic characteristics of a particular product,6 and are not legally protectable. A term is
descriptie and therefore in&alid as a trademark if, as understood in its normal and natural sense, it
6forth%ith con&eys the characteristics, functions, 1ualities or ingredients of a product to one %ho has
ne&er seen it and does not kno% %hat it is,6 or 6if it forth%ith con&eys an immediate idea of the
ingredients, 1ualities or characteristics of the goods,6 or if it clearly denotes %hat goods or ser&ices are
pro&ided in such a %ay that the consumer does not ha&e to e2ercise po%ers of perception or
The term 63AT+>6 is a suggesti&e term brought about by the ad&ertising scheme of 4estle.
S"ggestie terms are those %hich re1uire 6imagination, thought and perception to reach a conclusion
as to the nature of the goods.6 uch terms, 6%hich subtly connote something about the product,6 are
eligible for protection in the absence of secondary meaning. -hile suggesti&e marks are capable of
shedding 6some light6 upon certain characteristics of the goods or ser&ices in dispute, they ne&ertheless
in&ol&e 6an element of incongruity,6 6figurati&eness,6 or 6 imaginati&e effort on the part of the obser&er.6
The term 63AT+>6 has ac1uired a certain connotation to mean the coffee products 3AT+> >8AT
and 3AT+> F.+4/ produced by 4estle. As such, the use by 7?7 of the term 63AT+>6 in the
trademark for its coffee product ?.AA8> 3AT+> is likely to cause confusion or mistake or e&en to
decei&e the ordinary purchasers.
G.R. No. L"14,61. 0.n1.r3 28, 1961.%
AR) 'ON' AND )O&+AN9, petitioner, vs. 'L)TA BI')/IT )O&+AN9, IN), T AL., respon!ents.
Petitioners Contention:
#etitioner A>7+ 84 started his milk business as early as 19"". He sold his milk products in
bottles co&ered %ith caps on %hich the %ords G+.+7TA ?>+H 3).IG %ere inscribed.
They filed an opposition to the application for patents filed by respondent electa Fiscuit
7ompany. They alleged that,
<1= that the mark 6+.+7TA6 had been continuously used by petitioner in the
manufacture and sale of its products, including cakes, bakery products, milk and
ice cream from the time of its organiCation and e&en prior thereto by its
predecessorEinEinterest, >amon ArceD
<$= that the mark 6+.+7TA6 has already become identified %ith name of the
petitioner and its businessD
<"= that petitioner had %arned respondent not to use said mark because it %as
already being used by the former, but that the latter ignored said %arningD
<:= that respondent is using the %ord 6+.+7TA6 as a tradeEmark as bakery
products in unfair competition %ith the products of petitioner thus resulting in
confusion in tradeD
<!= that the mark to %hich the application of respondent refers has striking
resemblance, both in appearance and meaning, to petitionerGs mark as to be
mistaken therefor by the public and cause respondentGs goods to be sold as
petitionerGsD and
<5= that actually a complaint has been filed by the petitioner against respondent for
unfair competition in the 7ourt of ?irst )nstance of 3anila asking for damages and
for the issuance of a %rit of in(unction against respondent en(oining the latter for
continuing %ith the use of said mark.
Respondents Contention:
8n August "1, 19!!, electa Fiscuit 7ompany, )nc., hereinafter referred to as respondent, filed
%ith the #hilippine #atent 8ffice a petition for the registration of the %ord 6+.+7TA6 as tradeE
mark to be use in its bakery products alleging that it is in actual use thereof for not less than t%o
months before said date and that 6no other persons, partnership, corporation or association ... has
the right to use said tradeEmark in the #hilippines, either in the identical form or in any such near
resemblance thereto, as might be calculated to decei&e.6
>espondents also a&erred that ,
<1= that its products are biscuits, crackers, and cookies, %rapped in cellophane
packages, place in tin containers, and that its products may last a year %ith out
spoilage, %hile the ice cream, milk, cakes and other bakery products %hich
petitioner manufactures last only for t%o or three daysD
<$= that the sale and distribution of petitionerGs products are on retail basis, limited
to the 7ity of 3anila and suburbs, and its place of business is localiCed at
ACcarraga, corner of .epanto treet and at /e%ey Fl&d., 3anila, %hile that of
respondent is on a %holesale basis, e2tending throughout the length and breadth
of the #hilippinesD
<"= that petitionerGs signboard on its place of business reads G+.+7TAG and on its
deli&ery trucks 6electa, Kuality Al%ays, >estaurant and 7aterer, ACcarraga,
/e%ey Fl&d., Falinta%ak and Telephone number,6 in contrast %ith respondentGs
signboard on its factory %hich reads 6electa Fiscuit 7ompany, )nc.,6 and on its
deli&ery trucks 6electa Fiscuit 7ompany, )nc., Tuason A&enue, 3alabon, >iCal,
Telephone 4o. $E1"E$@D
<:= that the business name of petitioner is different from the business name of
<!= that petitioner has only a capital in&estment of #$!,000.00 %hereas respondent
has a fully paidEup stock in the amount of #$":,000.00 out of the #!00,000.00
authoriCed capital, <5= that the use of the name G+.+7TAG by respondent cannot
lead to confusion in the business operation of the parties.
RULING: The foregoing unmistakably sho% that petitioner, through its predecessorEinEinterest, had made use
of the %ord 6+.+7TA6 not only as a tradeEname indicati&e of the location of the restaurant %here it
manufactures and sells its products, but as tradeEmark is used. This is not only in accordance %ith its general
acceptation but %ith our la% on the matter. 6
TradeEmarkG or tradeEnameG, distinction being highly technical, is sign, de&ice, or mark by %hich articles
produced are dealt in by particular person or organiCation are distinguished or distinguishable from those
produced or dealt in by other.6
A GtradeEmarkG is a distincti&e mark of authenticity through %hich the merchandise of a particular producer or
manufacturer may be distinguished from that of others, and its sole function is to designate distincti&ely the
origin of the products to %hich it is attached.6
The term GtradeEmarkG includes any %ord, name, symbol, emblem, sign or de&ice or any combination thereof
adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those
manufactured, sold or dealt in by others.6
Aerily, the %ord G+.+7TAG has been chosen by petitioner and has been inscribed on all its products to ser&e
not only as a sign or symbol that may indicate that they are manufactured and sold by it but as a mark of
authenticity that may distinguish them from the products manufactured and sold by other merchants or
businessmen. The /irector of #atents, therefore, erred in holding that petitioner made use of that %ord merely
as a tradeEname and not as a tradeEmark %ithin the meaning of the la%.
The %ord G+.+7TAG, it is true, may be an ordinary or common %ord in the sense that may be used or
employed by any one in promoting his business or enterprise, but once adopted or coined in connection %ith
oneGs business as an emblem, sign or de&ice to characteriCe its products, or as a badge of authenticity, it may
ac1uire a secondary meaning as to be e2clusi&ely associated %ith its products and business.
)n this sense, its
used by another may lead to confusion in trade and cause damage to its business. And this is the situation of
petitioner %hen it used the %ord G+.+7TAG as a tradeEmark. )n this sense, the la% gi&es its protection and
guarantees its used to the e2clusion of all others. And it is also in the sense that the la% postulates that 6The
o%nership or possession of a tradeEmark shall be recogniCed and protected in the same manner and to the
same e2tent, as are other property rights kno%n to the la%,6 thereby gi&ing to any person entitled to the
e2clusi&e use of such tradeEmark the right to reco&er damages in a ci&il action from any person %ho may ha&e
sold goods of similar kind bearing such tradeEmark.
1. G.R. No. L"18289. &.rc< #1, 1964.%
ANDR' RO&RO, petitioner, vs. &AIDN *OR& BRA''IR )O., IN). .n! T( DIR)TOR O*
+ATNT', respon!ents.
8n ?ebruary 1$, 19!@, 3aiden ?orm Frassiere 7o., )nc., respondent company, a foreign corporation filed %ith
respondent director of patents an application for registration pursuant to >A 4o.155 of the trademark Adagio
for the brassieres manufactured by it, and %as granted by the /irector of #atents. #etitioner Andres >omero
filed %ith the /irector a petition for cancellation if said trademark arguing that Adagio has become a common
descripti&e name of a particular style of brassiere and is, therefore, unregistrable, and that the said trademark
had been used by local brassiere manufacturers since 19:; %ithout ob(ection on the part of respondent
-84 the trademark Adagio has become a common descripti&e name of a particular style of brassiere and is
therefore unregistrable.
4o. The trademark Adagio is a musical term, %hich means slo%ly or in an easy manner and %as used as a
trademark by the o%ners thereof because they are musically inclined. Feing a musical term, it is used in an
arbitrary <fanciful= sense as a trade mark for brassieres manufactured by respondent company. )t also appears
that respondent company has like%ise adopted other musical terms to identify, as a trademark, the different
styles or types of brassieres. As respondent director pointed out, the fact that said mark is used also to
designate a particular style of brassiere, does not affect its registrability as a trademark.
1. G.R. No. 12-9--. 0123 2-, 2---.%
)ANON 8AB/'(I8I 8AI'(A, petitioner, vs. )O/RT O* A++AL' .n! N'R R/BBR )OR+ORATION,
8n 9anuary $!, 19;!, pri&ate respondent 4> >ubber 7orporation filed an application for registration of the
mark 7A484 for sandals in the Fureau of #atents, Trademarks and Technology Transfer <F#TTT=. A &erified
4otice of 8pposition %as filed by petitioner, a foreign corporation duly organiCed and e2isting under the la%s of
9apan, alleging that it %ill be damaged by the registration of the trademark 7A484 in &arious countries
co&ering goods belonging to 7lass $ <paints, chemical products, toner and dye stuff=. #etitioner also submitted
in e&idence its #hilippine Trademark >egistration 4o. "9"9;, sho%ing o%nership o&er the trademark 7A484
also under 7lass $. 8n 4o&ember 10, 199$ the F#TTT issued its decision dismissing the opposition of
petitioner and gi&ing due course to pri&ate respondent's application for the registration of the trademark
7A484. 8n ?ebruary 15, 199", petitioner appealed the decision of the F#TTT %ith public respondent 7A that
e&entually affirmed the decision of F#TTT. Hence, this petition for re&ie%.
)*+, -hether the respondent can use as its trademark the %ord 7A484
H+./, 0+. The F#TTT and 7A share the opinion that the trademark 7A484 as used by petitioner for its
paints, chemical products, toner and dyestuff can be used by pri&ate respondent for it s sandals because the
products of these t%o parties are dissimilar. #etitioner protests the appropriation of the mark 7A484 by
pri&ate respondent on the ground that petitioner has used and continues to use the trademark 7A484 in its
%ide range of goods %orld%ide. Allegedly, the corporate name or tradename of petitioner is also used as its
trademark on di&erse goods including foot%ear and other related products like shoe polisher and polishing
agents. To lend credence to its claim, petitioner points out that it has branched out in its business based on the
&arious goods carrying its trademark 7A484, pri&ate respondent sought to register the mark 7A484. ?or
petitioner, the fact alone that its trademark 7A484 is carried by its other products like foot%ear, shoe polisher
and polishing agents should ha&e precluded the F#TTT from gi&ing due course to the application of pri&ate
respondent. The 7 finds the arguments of petitioner to be unmeritorious. 8rdinarily, the o%nership of a
trademark or tradename is a property right that the o%ner is entitled to protect as mandated by the Trademark
.a%. Ho%e&er, %hen a trademark is used by a party for a product in %hich the other party does not deal, the
use of the same trademark on the latter's product cannot be &alidly ob(ected.
*irp"ri s+ CA
GR 001234
FarbiCon 7orp <foreign corp= has adopted the trademark FarbiCon. Thus, upon finding that 3irpuri <domiciled
in the #hil= seeks to register the same trademark in the #hilippines, FarbiCon 7orp filed its opposition.
FarbiCon 7orp alleges its trademark is 1ualified as %ellEkno%n and is therefore protected by the 7on&ention of
#aris for the #rotection of )ntellectual #roperty %hich the #hilippines has bound to enforce. The /irector of
#atents rendered a decision gi&ing due course to the patent application of 3irpuri. The 7A, ho%e&er, re&ersed
this decision.
)ssue, -hether or not the 7on&ention of #aris for the #rotection of )ntellectual #roperty affords protection to a
foreign corporation against a #hilippine applicant for the registration of a similar trademark.
Held, Affirmati&e. The #hilippines and the *nited tates of America ha&e acceded to the -T8 Agreement 2 2 2
7onformably, the tate must reaffirm its commitment to the global community and take part in e&ol&ing a ne%
international economic order at the da%n of the ne% millennium.
Thus, the first paragraph of Article 5bis of the #aris 7on&ention is applicable in the instant case,
This Article go&erns protection of %ellEkno%n trademarks. *nder the first paragraph, each country of the *nion
bound itself to undertake to refuse or cancel the registration, and prohibit the use of a trademark %hich is a
reproduction, imitation or translation, or any essential part of %hich trademark constitutes a reproduction, liable
to create confusion, of a mark considered by the competent authority of the country %here protection is
sought, to be %ellEkno%n in the country as being already the mark of a person entitled to the benefits of the
7on&ention, and used for identical or similar goods.
)t is a selfEe2ecuting pro&ision and does not re1uire legislati&e enactment to gi&e it effect in the member
Trademark in >.A. 4o. ;$9", the )ntellectual #roperty 7ode of the #hilippines, defines as any &isible sign
capable of distinguishing goods. )n #hilippine (urisprudence, the function of a trademark is to point out
distinctly the origin or o%nership of the goods to %hich it is affi2edD to secure to him, %ho has been
instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skillD to
assure the public that they are procuring the genuine articleD to pre&ent fraud and impositionD and to protect the
manufacturer against substitution and sale of an inferior and different article as his product.