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CASE #: 10

LIM HOA vs DIRECTOR OF PATENTS


G.R. No. L-8072. October 31, 1956.
FACTS:
Lim Hoa, herein petitioner, filed an application for the registration of a
trademark, consisting of a representation of two midget roosters in an attitude of
combat with the word Bantam printed above them. The trademark being
registered covered products consisting of food seasonings. Agricom Development
Corp., a domestic corporation, opposed the application on several grounds, among
others, that the trademark sought to be registered was confusingly similar to its
registered mark, consisting of a pictorial representation of a hen with the words
Hen Brand and Marca Manok, which brand or mark was also used on a food
seasoning product, before the use of the trademark by the applicant. Agricom
likewise asserted that the trademark had been adopted by its predecessor, the
Advincula Family, since 1946 for said food seasoning. The Director of Patents
disallowed the registration of the Lim Hoas trademark because it would likely cause
confusion or mistake or deceive purchasers. Hence, this present appeal by the
petitioner.
ISSUE: Whether or not there is similarity between the two trademarks as to cause
confusion or mistake in the mind of the public.
HELD:
Yes. It has been consistently held that the question of infringement of a
trademark is to be determined by the test of dominancy. Similarity in size, form, and
color, while relevant, is not conclusive. If the competing trademark contains the
main or essential or dominant features of another, and confusion and deception is
likely to result, infringement takes place. Duplication or imitation is not necessary;
nor is it necessary that the infringing label should suggest an effort to imitate. The
danger of confusion in trademarks and brands which are similar may not be so great
in the case of commodities or articles of relatively great value, for the prospective
buyer, generally the head of the family or a businessman, before making the
purchase, reads the pamphlets and all literature available, describing the article he
is planning to buy, and perhaps even makes comparisons with similar articles in the
market. But in the sale of a food seasoning product, a kitchen article of everyday
consumption, the circumstances are far different. Said product is generally
purchased by cooks and household help, sometimes illiterate who are guided by
pictorial representations and the sound of the word descriptive of said
representation. The two roosters appearing in the trademark of the applicant and
the hen appearing on the trademark of the Oppositor although of different sexes,

belong to the same family of chicken, known as manok in all the principal dialects of
the Philippines, and when a cook or a household help or even a housewife buys a
food seasoning product for the kitchen the brand of Manok or Marca Manok
would most likely be upper most in her mind and would influence her in selecting
the product, regardless of whether the brand pictures a hen or a rooster or two
roosters. To her, they are all manok. Therein lies the confusion, even deception.

CASE #: 11
JOSE P. STA. ANA vs. FLORENTINO MALIWAT and TIBURCIO S. EVALLE
G.R. No. L-23023 August 31, 1968
FACTS:
In 1962, Florentino Maliwat, respondent, filed an application for the
registration of the trademark FLORMANN, which is used on shirts, pants, jackets and
shoes for ladies, men and children. He claimed that such mark was first used in
commerce since the early part of that year. However, the claim of first use
was amended to 1953. Jose Sta. Ana, petitioner, in same year 1962, filed an
application for the registration of the trade name FLORMEN SHOEMANUFACTURERS
(SHOE MANUFACTURERS, disclaimed), which is used in the business of
manufacturing ladies and childrens shoes. His claim of first use in commerce of
said trade name is 1959. In view of the admittedly confusing similarity between the
trademark Flormann and the trade name Flormen, the Director of Patents declared
interference. After trial, the Director gave due course Maliwats application and
denied that of Sta. Ana. In this present petition, Sta. Ana avers that the Director of
Patents erred in declaring that Maliwat has a prior right to the use of his
trademark on shoes and such right may be carried back to the year 1953 when
Maliwat started his tailoring and haberdashery business.
ISSUE: Whether or not Florentino Maliwat has a prior right to use the trademark
Flormann.
HELD:
Yes. 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.
In the case at bar, the proof of date of first use (1953), earlier than that alleged in
respondent Maliwat's application (1962), can be no less than clear and convincing
because the fact was stipulated and no proof was needed. The law 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. 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 expand 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 junior user of the mark and the goods manufactured
by the previous user. Here, the resemblance or similarity of the mark FLORMANN
and the name FLORMEN and the likelihood of confusion, one to the other, is
admitted; therefore, the prior adopter, respondent Maliwat, has the better right to
the use of the mark.

CASE #: 12
ACOJE MINING CO., INC., vs. THE DIRECTOR OF PATENTS,
G.R. No. L-28744 April 29, 1971
Facts:
Acoje Mining Co., (petitioner) filed an application for registration of the trademark
Lotus to be used on its soy sauceproduct. On the other hand, Philippine Refining Co.,
(PRC), another domestic corporation, was also using the sametrademark Lotus on its
edible oil. The Chief of the trademark examiner rejected the application of Acoje due
to itsconfusing similarity with that of the trademark already registered in favour of
the PRC. The Director of Patentsupheld the view of the trademark examiner on the
ground that while there is a difference between soy sauce andedible oil and there
were dissimilarities in the trademarks, still the close relationship of the products,
soy sauce andedible oil, is such that purchasers would be misled into believing that
they have a common source. Hence, thispresent petition for review.Issue:Whether
or not Acoje Mining Co., may register for the purpose of advertising its product, soy
sauce, the trademarkLotus.Held:The Court answered in the affirmative and the
decision of the Director of Patents should be reversed. Thedeterminative factor in a
contest involving registration of trademark is not whether the challenging mark
wouldactually cause confusion or deception of the purchasers but whether the use
of the mark would likely causeconfusion or mistake on the part of the buying
public. The law does not require that the competing trademarks mustbe so identical
as to produce actual error or mistake; it would be sufficient, for purposes of the law,
that thesimilarity between the two labels, is such that there is a possibility or
likelihood of the purchaser of the older brandmistaking the newer brand for it.In the
present case, there is quite difference between soy sauce and edible oil. If one is in
the market for theformer, he is not likely to purchase the latter just because of the
trademark Lotus. There is no denying that theposs

ibility of confusion is remote considering the difference in the type used, the
coloring, the petitioners trademarkbeing in yellow and red while that of the PRC
being in green and yellow, and the much smaller size of petitioners
trademark.
G.R. No. L-44707 August 31, 1982HICKOK MANUFACTURING CO., INC.,
petitioner, vs.
COURT OF APPEALS and SANTOS LIM BUN LIONG,
respondents.
TEEHANKEE,
J.:
Facts:Petitioner Hickok Manufacturing Co., (Hickok), is a foreign corporation, which
the registered the trademark HICKOKfor its diverse articles
of leather wallets, key cases, money folds made of leather, belts, mens briefs,
neckties,handkerchiefs and mens socks. On the other hand, Lim Bun Lion
g (respondent) is registrant of a trademark of the
same name HICKOK for its Marikina shoes. Hickok filed a petition to cancel the
respondents registration of the
trademark. The Director of Patent granted the petition of Hickok, but on appeal the
Court of Appeals reversed the
directors d
ecision and dismissed
Hickoks original petition for cancellation on the ground that the trademarks of
petitioner and that of the registrant were different in design and coloring of, as well
as in the words on the ribbons.Hence, this present appeal.Issue:
Whether or not the registration of Lim Bun Liongs trademark for his Hickok Marikina
shoes can be allowed.
Held:
The Court affirmed the appellate courts decision. While the law does not require
that the competing trademarks be

identical, the two marks must be considered in their entirety, as they appear in the
respective labels, in relation tothe goods to which they are attached.Emphasis
should be on the similarity of the products involved and not on the arbitrary
classification orgeneral description of their properties or characteristics and that the
mere fact that one person has adopted andused a trademark on his goods does not
prevent the adoption and use of the same trademark by others on unrelatedarticles
of a different kind. Petitioner, a foreign corporation registered the trademark for its
diverse articles of men'swear such as wallets, belts and men's briefs which are all
manufactured here in the Philippines but are so labelled asto give the misimpression
that the said goods are of foreign (stateside) manufacture and that respondent
secured itstrademark registration exclusively for shoes (which neither petitioner nor
the licensee ever manufactured or tradedin) and which are clearly labelled in block
letters as "Made in Marikina, Rizal, Philippines," no error can be attributedto the
appellate court in upholding respondent's registration of the same trademark for his
unrelated and non-competing product of Marikina shoes

G.R. No. 75067 February 26, 1988PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER,


K.G.,
petitioner, vs.
THE
INTERMEDIATE
CORPORATION,

APPELLATE

COURT and

MIL-ORO MANUFACTURING

respondents.
GUTIERREZ, JR.,
J.:

Facts:Petitioner Puma Sportschuhfabriken, a foreign corporation duly organized


under the existing laws of Germany, is amanufacturer and producer of Puma
products. It filed a complaint for infringement of patent or trademark againstMilOro Manufacturing Corporation, which is a registrant of the trademark Puma and
Device, with a prayer for
issuance of writ of preliminary injunction. The trial court
granted petitioners prayer and ordering Mil

-Oro to restrainfrom using the trademark PUMA and to withdraw from the market all
products bearing the same trademark. Onappeal, the CA reversed the order of the
trial court on the ground that petitioner has no legal capacity to sue. Hence,this
present petition for review. Both parties in this case maintain that they are the
rightful owners of the trademarkPUMA for socks and belts such that both
parties seek the cancellation of the trademark of the other.Issue:Whether or not
petitioner has legal capacity to sue in this jurisdiction.Held:The Court holds that the
petitioner had the legal capacity to file an action in this jurisdiction. As early as
1927, theCourt was, and it still is, of the view that foreign corporation not doing
business in the Philippines needs no license tosue before Philippine courts for
infringement of trademark and unfair competition. A foreign corporation which
hasnever done any business in the Philippines and which is unlicensed and
unregistered to do business here, but iswidely and favorably known in the
Philippines through the use therein of its products bearing its corporate and
tradename, has a legal right to maintain an action in the Philippines to restrain the
residents and inhabitants thereof fromorganizing a corporation therein bearing the
same name as the foreign corporation, when it appears that they havepersonal
knowledge of the existence of such a foreign corporation, and it is apparent that the
purpose of theproposed domestic corporation is to deal and trade in the same
goods as those of the foreign corporation