Prosource v Horphag

(PCO-GENOLS andPYCOGENOLS case)

Respondent Horphag Research Management SA is the owner of trademark
PYCNOGENOL, a food supplement. Respondent later discovered that
petitioner Prosource International, Inc. was also distributing a similar food
supplement using the mark PCO-GENOLS from 1996 to 2000, prompting
respondent to demand that petitioner cease and desist from using the
aforesaid mark. Without notifying respondent, petitioner discontinued the
use of, and withdrew from the market, the products under the name PCOGENOLS as of June 19, 2000. It likewise changed its mark from PCO-GENOLS
to PCO-PLUS.
ARE the trademarks PYCNOGENOL and PCO-GENOLS, both used for food
supplements, confusingly-similar?
The Supreme Court ruled that there was confusing similarity and affirmed the
finding that both the words PYCNOGENOL and PCO-GENOLS have the same
suffix GENOL which on evidence, appears to be merely descriptive and
furnish no indication of the origin of the article. Although the letters Y
between P and C, N between O and C and S after L are missing in
Prosources mark PCO-GENOLS, nevertheless, when the two words are
pronounced, the sound effects are confusingly similar not to mention that
they are both described by their manufacturers as a food supplement and
thus, identified as such by their public consumers. And although there were
dissimilarities in the trademarks due to the type of letters used as well as the
size, color, and design employed on their individual packages/bottles, still
the close relationship of the competing products name in sounds as they
were pronounced, clearly indicates that purchasers could be misled into
believing that they are the same and/or originates from a common source
and manufacturer.

246 Corp v Daway

FACTS:
Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of
Rolex and Crown Device, filed against 246 Corporation the instant suit for
trademark infringement and damages with prayer for the issuance of a
restraining order or writ of preliminary injunction before the RTC of QC

On July 1996, 246 adopted and, since then, has been using without authority
the mark Rolex in its business name Rolex Music Lounge as well as in its
newspaper advertisements as Rolex Music Lounge, KTV, Disco & Party
Club.
246 answered in special affirmative defences, stating that no confusion
would arise from the use by petitioner of the mark Rolex considering that
its entertainment business is totally unrelated to the items catered by
respondents such as watches, clocks, bracelets and parts thereof.
The RTC: quashed the subpoena ad testificandum and denied petitioners
motion for preliminary hearing on affirmative defenses with motion to
dismiss
This decision was affirmed by the CA.
ISSUE: W/N RTC performed a grave abuse of discretion
HELD: NO. The petition was denied and the RTCs decision was affirmed
The issue of whether or not a trademark infringement exists, is a question of
fact that could best be determined by the trial court.
Section 123.1(f) of the Intellectual Property Code (Republic Act No. 8293)
states that:
(f)
Is identical with, or confusingly similar to, or constitutes a translation
of a mark considered well-known in accordance with the preceding
paragraph, which is registered in the Philippines with respect to goods or
services which are not similar to those with respect to which registration is
applied for: Provided, That use of the mark in relation to those goods or
services would indicate a connection between those goods or services, and
the owner of the registered mark: Provided, further, That the interest of the
owner of the registered mark are likely to be damaged by such use
Section 123.1(f) is clearly in point because the Music Lounge of petitioner is
entirely unrelated to respondents business involving watches, clocks,
bracelets, etc. However, the Court cannot yet resolve the merits of the
present controversy considering that the requisites for the application of
Section 123.1(f), which constitute the kernel issue at bar, clearly require
determination facts of which need to be resolved at the trial court. The
existence or absence of these requisites should be addressed in a full blown
hearing and not on a mere preliminary hearing. The respondent must be
given ample opportunity to prove its claim, and the petitioner to debunk the
same.

SEHWANI, INCORPORATED vs IN-N-OUT BURGER,

Petitioner Sehwani, Inc. alleged that respondent lack the legal capacity to
sue because it was not doing business in the Philippines and that it has no
cause of action because its mark is not registered or used in the Philippines.
They claimed that as the registered owner of the "IN-N-OUT" mark, it enjoys
the presumption that the same was validly acquired and that it has the
exclusive right to use the mark. Moreover, petitioners argued that other than
the bare allegation of fraud in the registration of the mark, respondent failed
to show the existence of any of the grounds for cancellation thereof under
the IP Code.
Respondents contended that petitioners committed a violation of intellectual
property rights when they refused to accede to the demand in desisting from
claiming ownership of the mark "IN-N-OUT" and to voluntarily cancelling its
Trademark Registration. They argued that they have been the owner of the
tradename "IN-N-OUT" and trademarks "IN-N-OUT," "IN-N-OUT Burger &
Arrow Design" and "IN-N-OUTBurger Logo," which are used in its business
since 1948 up to the present. These trade name and trademarks were
registered in the United States as well as in other parts of the world
Issue: W/n respondent has the legal capacity to sue for the protection of its
trademarks, albeit it is not doing business in the Philippines
Held: YES.
Section 160 in relation to Section 3 of R.A. No. 8293, provides for the Right of
Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action.
In addition, Articles 6bis and 8 of The Paris Convention, wherein both the
United States and the Philippines are signatories. State that "A trade name
shall be protected in all countries of the Union without the obligation of filing
or registration whether or not it forms part of a trademark."
Article 6bis which governs the protection of well-known trademarks, is a selfexecuting provision and does not require legislative enactment to give it
effect in the member country. The question of whether or not respondents
trademarks are considered "well-known" is factual in nature. Considering the
factual findings of the BLA-IPO, the SC is inclined to favor the declaration of
the mark "IN-N-OUT" as an internationally well-known mark on the basis of
"registrations in various countries around the world and its comprehensive
advertisements therein." The fact that respondents marks are neither
registered nor used in the Philippines is of no moment.
DEL MONTE CORPORATION VS. COURT OF APPEALS

Del Monte Corporation is an American corporation which is not engaged in

business in the Philippines. Though not engaging business here, it has given
authority to Philippine Packing Corporation (Philpack) the right to
manufacture, distribute and sell in the Philippines various agricultural
products, including catsup, under the Del Monte trademark and logo. In
1965, Del Monte also authorized PPC to register with the Patent Office the
Del Monte catsup bottle configuration. Philpack was issued a certificate of
trademark registration under the Supplemental Register.
Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing
was using Del Monte bottles in selling its products and that Sunshine Sauces
logo is similar to that of Del Monte. The RTC of Makati as well as the Court of
Appeals ruled that there was no infringement because the trademarks used
between the two are different in designs and that the use of Del Monte
bottles by Sunshine Sauce does not constitute unfair competition because as
ruled in Shell Company vs Insular Petroleum: selling oil in containers of
another with markings erased, without intent to deceive, was not unfair
competition.

ISSUE: Whether or not there is unfair competition and infringement in the

case at bar.

HELD: Yes. The Supreme Court recognizes that there really are distinctions
between the designs of the logos or trademarks of Del Monte and Sunshine
Sauce. However, it has been that side by side comparison is not the final test
of similarity. Sunshine Sauces logo is a colorable imitation of Del Montes
trademark. The word catsup in both bottles is printed in white and the style
of the print/letter is the same. Although the logo of Sunshine is not a tomato,
the figure nevertheless approximates that of a tomato. The person who
infringes a trade mark does not normally copy out but only makes colorable
changes, employing enough points of similarity to confuse the public with
enough points of differences to confuse the courts. What is undeniable is the
fact that when a manufacturer prepares to package his product, he has
before him a boundless choice of words, phrases, colors and symbols
sufficient to distinguish his product from the others. When as in this case,
Sunshine chose, without a reasonable explanation, to use the same colors
and letters as those used by Del Monte though the field of its selection was
so broad, the inevitable conclusion is that it was done deliberately to
deceive.

The Supreme Court also ruled that Del Monte does not have the exclusive
right to use Del Monte bottles in the Philippines because Philpacks patent
was only registered under the Supplemental Register and not with the
Principal Register. Under the law, registration under the Supplemental
Register is not a basis for a case of infringement because unlike registration
under the Principal Register, it does not grant exclusive use of the patent.
However, the bottles of Del Monte do say in embossed letters: Del Monte
Corporation, Not to be Refilled. And yet Sunshine Sauce refilled these
bottles with its catsup products. This clearly shows the Sunshine Sauces bad
faith and its intention to capitalize on the Del Montes reputation and
goodwill and pass off its own product as that of Del Monte.

Lyceum v CA
FACTS:
Petitioner is an educational institution duly registered with the SEC since
Sept 1950. Before the case at bar, Petitioner commenced a proceeding
against Lyceum of Baguio with the SEC to require it to change its corporate
name and adopt a new one not similar or identical to the Petitioner. SEC
granted noting that there was substantial because of the dominant word
Lyceum. CA and SC affirmed. Petitioner filed similar complaint against
other schools and obtain a favorable decision from the hearing officer. On
appeal, SEC En banc reversed the decision and held that the word Lyceum
have not become so identified with the petitioner and that the use thereof
will cause confusion to the general public.

ISSUE:

1. Whether or not the corporate names of the private respondents are

identical with or deceptively similar to that of the petitioner.
2. Whether or not the use by the petitioner of Lyceum in its corporate name
has been for such length of time and with such exclusivity as to have
become associated or identified with the petitioner institution in the mind of
the general public (Doctrine of Secondary meaning).

RULING: NO to both.
True enough, the corporate names of the parties carry the word Lyceum
but confusion and deception are precluded by the appending of geographic
names. Lyceum generally refers to a school or an institution of learning and it
is natural to use this word to designate an entity which is organized and
operating as an educational institution.
Doctrine of Secondary meaning is a word of phrase originally incapable of
exclusive appropriation, might nevertheless have been used so long and so
exclusively by one producer with reference to his article that, in trade and to
that branch of the purchasing public, the word or phrase has come to mean
that the article was his product.
Lyceum of the Philippines has not gained exclusive use of Lyceum by long
passage of time. The number alone of the private respondents suggests
strongly that the use of Lyceum has not been attended with the exclusivity
essential for the applicability of the doctrine. It may be noted that one of the
respondents Western Pangasinan Lyceum used such term 17 years before
the petitioner registered with the SEC. Moreover, there may be other schools
using the name but not registered with the SEC because they have not
adopted the corporate form of organization.

Coffee Partners v San Francisco Coffee Facts:

Facts: Coffee Partners holds a business in maintaining coffee shops in the
Philippines. It is registered with the Securities and Exchange Commission in
January 2001. In its franchise agreement with Coffee Partners Ltd, it carries
the trademark San Francisco Coffee.
Respondent is engaged in the wholesale and retail sale of coffee that was
registered in SEC in May 1995 under a registered business name of San
Francisco Coffee &Roastery, Inc. It entered into a joint venture with Boyd
Coffee USA to study coffee carts in malls.
When respondent learned that petitioner will open a coffee shop they sent a
letter to the petitioner demanding them to stop using the name San
Francisco Coffee as it causes confusion to the minds of the public. A
complaint was also filed by respondents before the Bureau of Legal Affairs of
the Intellectual Property Office for infringement and unfair competition with
claims for damages.
Petitioners contend that there are distinct differences in the appearance of
their trademark and that respondent abandoned the use of their trademark
when it joined venture with Boyd Coffee USA.
The Bureau of Legal Affairs of the IPO held that petitioners trademark
infringed on the respondents trade name as it registered its business name
first with the DTI in 1995 while petitioner only registered its trademark in
2001, and that respondent did not abandon the use of its trade name upon
its joint venture with Boyd Coffee USA since in order for abandonment to
exist it must be permanent, intentional and voluntary. It also held that
petitioners use of the trademark "SAN FRANCISCO COFFEE" will likely cause
confusion because of the exact similarity in sound, spelling, pronunciation,
and commercial impression of appealed contending that the respondents
trade name is not registered therefore a suit for infringement is not available.

Issue:
Whether or not the petitioners use of the trademark "SAN FRANCISCO
COFFEE" constitutes infringement of respondents trade name "SAN
FRANCISCO COFFEE & ROASTERY, INC.," even if the trade name is not
registered with the Intellectual Property Office (IPO).

Ruling:

Registration of a trademark before the IPO is no longer a requirement to file

an action for infringement as provided in Section 165.2 of RA 8293. All that is
required is that the trade name is previously used in trade or commerce in
the Philippines. There is no showing that respondent abandoned the use of
its trade name as it continues to embark to conduct research on retailing
coffee, import and sell coffee machines as among the services for which the
use of the business name has been registered.

Shangrila v CA
Facts:
On June 21, 1988, the Shangri-La International Hotel Management,
Ltd.,Shangri-La Properties, Inc., Makati Shangri-La Hotel and Resort, Inc. and
KuokPhilippine Properties, Inc., filed with the Bureau of Patents, Trademarks
and Technology Transfer (BPTTT) a petition praying for the cancellation of the
registration ofthe Shangri-La mark and S device/logo issued to the
Developers Group of Companies Inc., on the ground that the same was
illegally and fraudulently obtained and appropriated for the latters
restaurant business. The Shangri-La Group alleged that it is the legal and
beneficial owners of the subject mark and logo; that it has been using the
said mark and logo for its corporate affairs and business since March 1962
and caused the same to be specially designed for their international hotels in
1975, much earlier than the alleged first use by the Developers Group in
1982. Likewise, the Shangri-La Group filed with the BPTTT its own application
for registration of the subject mark and logo. The Developers Group filed an
opposition to theapplication. Almost three (3) years later, the Developers
Group instituted with the RTC a complaint for infringement and damages with
prayer for injunction. When the Shangri-La Group moved for the suspension
of the proceedings, the trial court denied such in a Resolution. The ShangriLa Group filed a petition for certiorari before the CA but the CA dismissed the
petition for certiorari. Hence, the instant petition.

Issue:
Whether or not the infringement case should be dismissed or at least
suspended

Held:

There can be no denying that the infringement case is validly pass upon the
right of registration. Section 161 of Republic Act No. 8293 provides to wit:
SEC. 161. Authority to Determine Right to Registration In any action
involving a registered mark the court may determine the right to registration,
order the cancellation of the registration, in whole or in part, and otherwise
rectify the register with respect to the registration of any party to the action
in the exercise of this.
Judgment and orders shall be certified by the court to the Director, who shall
make appropriate entry upon the records of the Bureau, and shall be
controlled thereby.(Sec. 25, R.A. No. 166a). (Emphasis provided)To provide a
judicious resolution of the issues at hand, the Court find it apropos to order
the suspension of the proceedings before the Bureau pending final
determination of the infringement case, where the issue of the validity of the
registration of the subject trademark and logo in the name of Developers
Group was passed upon.