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Faberge , Incorporated v.

The Intermediate Appellate Court and Co Beng Kay

04 November 1992; Melo, J.
Digest prepared by Dianne Cadorna
I. Facts
1. Private respondent Co Beng Kay (CBK) filed with the Director of Patents an
application to register the trademark BRUTE for the briefs
manufactured and sold by his Corporation in the domestic market.
2. Petitioner Faberge opposed this application on the ground of the similarity
of the said trademark with Faberges own symbol BRUT, which it
previously registered for after shave lotion, shaving cream,
deodorant, talcum powder, and toilet soap, likewise sold in the
domestic market.
3. The Director of Patents granted CBKs application.
4. The CA initially reversed this decision, holding that the marks BRUT and
BRUTE were indeed quite similar, and that even if the products sold
under these marks are different, it is still reasonable to believe that the
similarity would cause confusion and even mistake and deception in the
buying public as to the origin of the goods bearing such trademarks,
especially since modern department stores usually place CBKs products
(briefs) and Faberges products (after shave lotion, etc.) in one section
denominated as Mens Accessories. In effect, this would supposedly
allow CBK to unjustly benefit from the goodwill and reputation that
Faberge has already established for its BRUT products.
5. Upon CBKs MR however, the CA reversed its earlier ruling, holding that
the controlling ruling is to the effect that the identical trademark can be
used by different manufacturers for products that are non-competing and
6. Thus, Faberge is now before the SC to contest the above ruling, insisting
that there can be unfair competition even if the goods are noncompeting,
especially in view of the alleged repeal of RA 166 by RA 666, which
deleted the phrase in the former law that the merchandise must be
substantially of the same descriptive properties. It also adds that it has a
pending application of the trademark BRUT 33 DEVICE for briefs as proof
that it intended to expand its mark "BRUT" to other goods and thus,
following the sentiment expressed by Justice JBL Reyes in Sta. Ana v.
Maliwat, it is entitled to relief that is available where the junior user's
goods are not remote from any product that the senior user would be
likely to make or sell.
II. Issues
WON an earlier registration of a trademark can prevent a later registration of a
similarly-sounding trademark, even if the products falling under the two are
unrelated and non-competing NO.
III. Holding
Petition denied. Decision of the CA is affirmed.
IV. Ratio

1. A review of the relevant provision of the Civil Code and RA 166, as

amended would yield the conclusion that CBK may be permitted to
register the trademark BRUTE for briefs produced by it notwithstanding
Faberges vehement protestations of unfair dealings in marketing its own
set of items which are limited to: after-shave lotion, shaving cream,
deodorant, talcum powder and toilet soap.
2. In as much as Faberge has not ventured in the production of briefs, an
item which is not listed in its certificate of registration, it cannot and
should not be allowed to feign that CBK had invaded its exclusive domain.
Even its alleged application for registration of BRUT to other products
such as briefs was not annexed to its brief, and in any case, such
application does not suffice and may not vest an exclusive right in its favor
that can ordinarily be protected by the Trademark Law.
3. The certificate of registration issued by the Director of Patents can
confer upon Faberge the exclusive right to use its own symbol only
to those goods specified in the certificate, subject to any
conditions and limitations stated therein.
4. WRT argument raised by Faberge as regards its alleged business
expansion, which invokes the wisdom imparted by Justice JBL Reyes
in Sta. Ana vs. Maliwat to the effect that dissimilarity of goods will not
preclude relief if the junior user's goods are not remote from any other
product which the first user would be likely to make or sell, it is indeed
true that Sec. 4(d) of RA 166, as amended does not require that
the articles of manufacture of the previous user and 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.
5. Yet, it is equally true that under Sec. 20 of the same law, the
protective mantle of the Trademark Law extends only to the
goods used by the first user as specified in the certificate of
6. How should this apparent conflict between Sec. 4(d) and Sec. 20
be reconciled? The rule has been laid down that the clause which
comes later shall be given paramount significance over an
anterior proviso upon the presumption that it expresses the latest
and dominant purpose. It ineluctably follows that Sec. 20 is
controlling and, therefore, CBK can appropriate its symbol for the briefs it
manufactures because as aptly remarked by Justice Sanchez in Sterling
Products v. Farbenfabriken:
Really, if the certificate of registration were to be deemed as including
goods not specified therein, then a situation may arise whereby an
applicant may be tempted to register a trademark on any and all
goods which his mind may conceive even if he had never intended to
use the trademark for the said goods. We believe that such omnibus
registration is not contemplated by our Trademark Law.
7. Whatever deleterious effects may arise from the above interpretation of
Sec. 20 in relation to Sec. 4(d) of RA 166 is not entirely irreversible;
however the remedy is legislative and not judicial.


8. Neither can CBK be deemed to have committed infringement, which is

defined as the use without consent of the trademark owner of any
reproduction, counterfeit, copy or colorable imitation of any
registered mark or trade name in connection with the sale,
offering for sale, or advertising of any goods, business or services
on or in connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or others as to the
source or origin of such goods or services, or identity of such
9. The glaring discrepancies between the products of CBK, on the one hand,
and of Faberge, on the other, had been amply portrayed to such an extent
that indeed, a purchaser who is out in the market for the purpose of
buying CBKs BRUTE brief would definitely be not mistaken or misled into
buying Faberges BRUT after shave lotion or deodorant.