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FIRST DIVISION [G.R. No. 114508.

November 19,
1999]PRIBHDAS J. MIRPURI, petitioner, vs. COURT OF
APPEALS, DIRECTOR OF PATENTS and the BARBIZON
CORPORATION, respondents.

That the respondent-applicant's use of the said mark BARBIZON
which resembles the trademark used and owned by opposer,
constitutes an unlawful appropriation of a mark previously used in
the Philippines and not abandoned and therefore a statutory violation
of Section 4 (d) of Republic Act No. 166, as amended." [1]

DECISION
PUNO, J.:
The Convention of Paris for the Protection of Industrial Property
is a multi-lateral treaty which the Philippines bound itself to honor
and enforce in this country. As to whether or not the treaty affords
protection to a foreign corporation against a Philippine applicant for
the registration of a similar trademark is the principal issue in this
case.
On June 15, 1970, one Lolita Escobar, the predecessor-ininterest of petitioner Pribhdas J. Mirpuri, filed an application with the
Bureau of Patents for the registration of the trademark "Barbizon" for
use in brassieres and ladies undergarments. Escobar alleged that
she had been manufacturing and selling these products under the
firm name "L & BM Commercial" since March 3, 1970.
Private respondent Barbizon Corporation, a corporation
organized and doing business under the laws of New York, U.S.A.,
opposed the application. It claimed that:
"The mark BARBIZON of respondent-applicant is confusingly similar
to the trademark BARBIZON which opposer owns and has not
abandoned.
That opposer will be damaged by the registration of the mark
BARBIZON and its business reputation and goodwill will suffer great
and irreparable injury.

This was docketed as Inter Partes Case No. 686 (IPC No.
686). After filing of the pleadings, the parties submitted the case for
decision.
On June 18, 1974, the Director of Patents rendered judgment
dismissing the opposition and giving due course to Escobar's
application, thus:
"WHEREFORE, the opposition should be, as it is hereby,
DISMISSED. Accordingly, Application Serial No. 19010 for the
registration of the trademark BARBIZON, of respondent Lolita R.
Escobar, is given due course.
IT IS SO ORDERED."[2]
This decision became final and on September 11, 1974, Lolita
Escobar was issued a certificate of registration for the trademark
"Barbizon." The trademark was "for use in "brassieres and lady's
underwear garments like panties."[3]
Escobar later assigned all her rights and interest over the
trademark to petitioner Pribhdas J. Mirpuri who, under his firm name
then, the "Bonito Enterprises," was the sole and exclusive distributor
of Escobar's "Barbizon" products.
In 1979, however, Escobar failed to file with the Bureau of
Patents the Affidavit of Use of the trademark required under Section
12 of Republic Act (R.A.) No. 166, the Philippine Trademark
Law. Due to this failure, the Bureau of Patents cancelled Escobar's
certificate of registration.

On May 27, 1981, Escobar reapplied for registration of the
cancelled trademark. Mirpuri filed his own application for registration
of Escobar's trademark. Escobar later assigned her application to
herein petitioner and this application was opposed by private
respondent. The case was docketed as Inter Partes Case No. 2049
(IPC No. 2049).
In its opposition, private respondent alleged that:
"(a) The Opposer has adopted the trademark BARBIZON (word),
sometime in June 1933 and has then used it on various kinds of
wearing apparel. On August 14, 1934, Opposer obtained from the
United States Patent Office a more recent registration of the said
mark under Certificate of Registration No. 316,161. On March 1,
1949, Opposer obtained from the United States Patent Office a more
recent registration for the said trademark under Certificate of
Registration No. 507,214, a copy of which is herewith attached as
Annex `A.' Said Certificate of Registration covers the following
goods-- wearing apparel: robes, pajamas, lingerie, nightgowns and
slips;
(b) Sometime in March 1976, Opposer further adopted the trademark
BARBIZON and Bee design and used the said mark in various kinds
of wearing apparel. On March 15, 1977, Opposer secured from the
United States Patent Office a registration of the said mark under
Certificate of Registration No. 1,061,277, a copy of which is herein
enclosed as Annex `B.' The said Certificate of Registration covers
the following goods: robes, pajamas, lingerie, nightgowns and slips;
(c) Still further, sometime in 1961, Opposer adopted the trademark
BARBIZON and a Representation of a Woman and thereafter used
the said trademark on various kinds of wearing apparel.Opposer
obtained from the United States Patent Office registration of the said
mark on April 5, 1983 under Certificate of Registration No. 1,233,666
for the following goods: wearing apparel:robes, pajamas, nightgowns
and lingerie. A copy of the said certificate of registration is herewith
enclosed as Annex `C.'

(d) All the above registrations are subsisting and in force and
Opposer has not abandoned the use of the said trademarks. In fact,
Opposer, through a wholly-owned Philippine subsidiary, the
Philippine Lingerie Corporation, has been manufacturing the goods
covered by said registrations and selling them to various countries,
thereby earning valuable foreign exchange for the country.As a result
of respondent-applicant's misappropriation of Opposer's BARBIZON
trademark, Philippine Lingerie Corporation is prevented from selling
its goods in the local market, to the damage and prejudice of
Opposer and its wholly-owned subsidiary.
(e) The Opposer's goods bearing the trademark BARBIZON have
been used in many countries, including the Philippines, for at least
40 years and has enjoyed international reputation and good will for
their quality. To protect its registrations in countries where the goods
covered by the registrations are being sold, Opposer has procured
the registration of the trademark BARBIZON in the following
countries: Australia, Austria, Abu Dhabi, Argentina, Belgium, Bolivia,
Bahrain, Canada, Chile, Colombia, Denmark, Ecuador, France, West
Germany, Greece, Guatemala, Hongkong, Honduras, Italy, Japan,
Jordan, Lebanon, Mexico, Morocco, Panama, New Zealand, Norway,
Sweden, Switzerland, Syria, El Salvador, South Africa, Zambia,
Egypt, and Iran, among others;
(f) To enhance its international reputation for quality goods and to
further promote goodwill over its name, marks and products,
Opposer has extensively advertised its products, trademarks and
name in various publications which are circulated in the United
States and many countries around the world, including the
Philippines;
(g) The trademark BARBIZON was fraudulently registered in the
Philippines by one Lolita R. Escobar under Registration No. 21920,
issued on September 11, 1974, in violation of Article 189 (3) of the
Revised Penal Code and Section 4 (d) of the Trademark Law. Herein
respondent applicant acquired by assignment the `rights' to the said
mark previously registered by Lolita Escobar, hence respondent-

applicant's title is vitiated by the same fraud and criminal
act. Besides, Certificate of Registration No. 21920 has been
cancelled for failure of either Lolita Escobar or herein respondentapplicant, to seasonably file the statutory affidavit of use. By applying
for a re-registration of the mark BARBIZON subject of this
opposition, respondent-applicant seeks to perpetuate the fraud and
criminal act committed by Lolita Escobar.
(h) Opposer's BARBIZON as well as its BARBIZON and Bee Design
and BARBIZON and Representation of a Woman trademarks qualify
as well-known trademarks entitled to protection under Article 6bis of
the Convention of Paris for the Protection of Industrial Property and
further amplified by the Memorandum of the Minister of Trade to the
Honorable Director of Patents dated October 25, 1983 [sic],
[4]
Executive Order No. 913 dated October 7, 1963 and the
Memorandum of the Minister of Trade and Industry to the Honorable
Director of Patents dated October 25, 1983.
(i) The trademark applied for by respondent applicant is identical to
Opposer's BARBIZON trademark and constitutes the dominant part
of Opposer's two other marks namely, BARBIZON and Bee design
and BARBIZON and a Representation of a Woman. The continued
use by respondent-applicant of Opposer's trademark BARBIZON on
goods belonging to Class 25 constitutes a clear case of commercial
and criminal piracy and if allowed registration will violate not only the
Trademark Law but also Article 189 of the Revised Penal Code and
the commitment of the Philippines to an international treaty." [5]
Replying to private respondent's opposition, petitioner raised the
defense of res judicata.
On March 2, 1982, Escobar assigned to petitioner the use of the
business name "Barbizon International." Petitioner registered the
name with the Department of Trade and Industry (DTI) for which a
certificate of registration was issued in 1987.

Forthwith, private respondent filed before the Office of Legal
Affairs of the DTI a petition for cancellation of petitioner's business
name.
On November 26, 1991, the DTI, Office of Legal Affairs,
cancelled petitioner's certificate of registration, and declared private
respondent the owner and prior user of the business name "Barbizon
International." Thus:
"WHEREFORE, the petition is hereby GRANTED and petitioner is
declared the owner and prior user of the business name "BARBIZON
INTERNATIONAL" under Certificate of Registration No. 87-09000
dated March 10, 1987 and issued in the name of respondent, is [sic]
hereby ordered revoked and cancelled. x x x."[6]
Meanwhile, in IPC No. 2049, the evidence of both parties were
received by the Director of Patents. On June 18, 1992, the Director
rendered a decision declaring private respondent's opposition barred
by res judicata and giving due course to petitioner's application for
registration, to wit:
"WHEREFORE, the present Opposition in Inter Partes Case No.
2049 is hereby DECLARED BARRED by res judicata and is hereby
DISMISSED. Accordingly, Application Serial No. 45011 for trademark
BARBIZON filed by Pribhdas J. Mirpuri is GIVEN DUE COURSE.
SO ORDERED."[7]
Private respondent questioned this decision before the Court of
Appeals in CA-G.R. SP No. 28415. On April 30, 1993, the Court of
Appeals reversed the Director of Patents finding that IPC No. 686
was not barred by judgment in IPC No. 2049 and ordered that the
case be remanded to the Bureau of Patents for further
proceedings, viz:
"WHEREFORE, the appealed Decision No. 92-13 dated June 18,
1992 of the Director of Patents in Inter Partes Case No. 2049 is

WHETHER OR NOT THE DIRECTOR OF PATENTS CORRECTLY APPLIED THE PRINCIPLE OF RES JUDICATA IN DISMISSING PRIVATE RESPONDENT BARBIZON'S OPPOSITION TO PETITIONER'S APPLICATION FOR REGISTRATION FOR THE TRADEMARK BARBIZON. CONSTITUTED RES JUDICATA IN SO FAR AS THE CASE BEFORE THE DIRECTOR OF PATENTS IS CONCERNED. to assure the public that they are procuring the genuine article.[15] As early as 5. 166.A. the fruit of his industry and skill. [13] Modern authorities on trademark law view trademarks as performing three distinct functions: (1) they indicate origin or ownership of the articles to which they are attached. sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured.C. and to protect the manufacturer against substitution and sale of an inferior and different article as his product. 3. to prevent fraud and imposition. and (3) they advertise the articles they symbolize. the Court of Appeals denied reconsideration of its decision.000 B. WHICH HAS SINCE RIPENED TO CERTIFICATE OF REGISTRATION NO. A "trademark" is defined under R. 1974."[12] In Philippine jurisprudence. No costs. 53920 ON NOVEMBER 16. ANNEX C HEREOF. [14] Symbols have been used to identify the ownership or origin of articles for several centuries. to secure to him. petitioner raises the following issues: "1."[10] Before ruling on the issues of the case. this recourse." [11] This definition has been simplified in R.hereby SET ASIDE. (2) they guarantee that those articles come up to a certain standard of quality. as including "any word. and the case is hereby remanded to the Bureau of Patents for further proceedings. No."[8] In a Resolution dated March 16. WHETHER OR NOT THE REQUISITE THAT A 'JUDGMENT ON THE MERITS' REQUIRED A 'HEARING WHERE BOTH PARTIES ARE SUPPOSED TO ADDUCE EVIDENCE' AND WHETHER THE JOINT SUBMISSION OF THE PARTIES TO A CASE ON THE BASIS OF THEIR RESPECTIVE PLEADINGS WITHOUT PRESENTING TESTIMONIAL OR DOCUMENTARY EVIDENCE FALLS WITHIN THE MEANING OF 'JUDGMENT ON THE MERITS' AS ONE OF THE REQUISITES TO CONSTITUTE RES JUDICATA..A. the function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed. 8293. 2. the Trademark Law. WHETHER OR NOT THE DECISION OF THE DIRECTOR OF PATENTS IN INTER PARTES CASE NO. Cave drawings in . 4. Before us. 166) WHICH IS WITHIN THE ORIGINAL AND EXCLUSIVE JURISDICTION OF THE DIRECTOR OF PATENTS. symbol.[9] Hence. 2049 HAS THE RIGHT TO DECIDE SUCH CANCELLATION NOT ON THE BASIS OF THE BUSINESS NAME LAW (AS IMPLEMENTED BY THE BUREAU OF DOMESTIC TRADE) BUT ON THE BASIS OF THE PARIS CONVENTION AND THE TRADEMARK LAW (R. 1992. the Intellectual Property Code of the Philippines. markings on pottery have been found by archaeologists. 686 RENDERED ON JUNE 18. name. emblem. who has been instrumental in bringing into the market a superior article of merchandise. WHETHER A DECISION OF THE DEPARTMENT OF TRADE AND INDUSTRY CANCELLING PETITIONER'S FIRM NAME 'BARBIZON INTERNATIONAL' AND WHICH DECISION IS STILL PENDING RECONSIDERATION NEVER OFFERED IN EVIDENCE BEFORE THE DIRECTOR OF PATENTS IN INTER PARTES CASE NO. which defines a "trademark" as "any visible sign capable of distinguishing goods. 1994. in accordance with this pronouncement. there is need for a brief background on the function and historical development of trademarks and trademark law. sold or dealt in by others.A.

virtually turning the whole world into one vast marketplace. These marks were affixed by the creator or maker of the article. [23] Eventually. etc. tradenames and other distinctive signs of a product to penetrate regions where the owner does not actually manufacture or sell the product itself. from defrauding the public. paintings. etc. the use of many kinds of marks on a variety of goods was commonplace. At the same time. as well as to aid in tracing defective work or poor craftsmanship to the artisan.[28] The mark has become the "silent salesman." [25] Subsequently. Petitioner developed this market by working long hours and spending considerable sums of money on . from getting another's business or injuring his reputation by unfair means. broadcast or electronic communications medium. it extends to zones where the marked article has been fixed in the public mind through advertising. [21] It was in the late 18th century when the industrial revolution gave rise to mass production and distribution of consumer goods that the mark became an important instrumentality of trade and commerce.[17] In the Middle Ages." the conduit through which direct contact between the trademark owner and the consumer is assured. the unparalleled growth of industry and the rapid development of communications technology have enabled trademarks. [24] The common law developed the doctrine of trademarks and tradenames "to prevent a person from palming off his goods as another's. or devices for the settlement of accounts between an entrepreneur and his workmen. they came to symbolize the goodwill and business reputation of the owner of the product and became a property right protected by law. vases. In other words. [22] By this time. bottlemaker's marks. the mark actually sells the goods. for disclosing state monopoly. precious stones. There were the baker's mark on bread. the mark acquired popularity and became voluntarily adopted.[18] Every guild had its own mark and every master belonging to it had a special mark of his own. the trademark is not merely a symbol of origin and goodwill. tanner's marks. Goodwill is no longer confined to the territory of actual market penetration. It was not intended to create or continue monopoly but to give the customer an index or guarantee of quality. It has invaded popular culture in ways never anticipated that it has become a more convincing selling point than even the quality of the article to which it refers. [29] In the last half century. or by public authorities as indicators for the payment of tax. it is often the most effective agent for the actual creation and protection of goodwill. Fifteenth century England saw the compulsory use of identifying marks in certain trades. England and the United States enacted national legislation on trademarks as part of the law regulating unfair trade. and. The marks were not trademarks but police marks compulsorily imposed by the sovereign to let the public know that the goods were not "foreign" goods smuggled into an area where the guild had a monopoly. It imprints upon the public mind an anonymous and impersonal guaranty of satisfaction. This is the mise-en-scene of the present controversy.[20] With constant use. glassworks. Merchants dealt in goods acquired from many sources and the marks enabled them to identify and reclaim their goods upon recovery after shipwreck or piracy.[19] For a similar reason. Petitioner brings this action claiming that "Barbizon" products have been sold in the Philippines since 1970. smith's marks.[27] Today. particularly on the Internet. [26] It became the right of the trademark owner to exclude others from the use of his mark. the trademark served as a warning against the imitation or faking of products to prevent the imposition of fraud upon the public. creating a desire for further satisfaction. watermarks on paper.southwestern Europe show bison with symbols on their flanks. merchants also used merchants' marks. trademarks did not merely identify the goods. or of a confusingly similar mark where confusion resulted in diversion of trade or financial injury. [30] Whether in the print. reveal some features which are thought to be marks or symbols. [16] Archaeological discoveries of ancient Greek and Roman inscriptions on sculptural works. and thereby stimulated further purchases by the consuming public. bricks. they also indicated the goods to be of satisfactory quality. [31] advertising has paved the way for growth and expansion of the product by creating and earning a reputation that crosses over borders.

have all been carefully considered. No. .[36] The Solicitor General. Verified Notice of Opposition. (c) it must have been rendered by a court having jurisdiction over the subject matter and parties. [37] The decision in IPC No. Both claim that all the four elements of res judicata have been complied with: that the judgment in IPC No. that the judgment in IPC No. it cannot here and now be ascertained whether opposer's alleged use of the trademark BARBIZON could be prior to the use of the identical mark by the herein respondentapplicant. res judicata means a matter adjudged.[35] Res judicata is an absolute bar to a subsequent action for the same cause. It is opposer's assertion that its trademark BARBIZON has been used in trade or commerce in the Philippines prior to the date of application for the registration of the identical mark BARBIZON by the respondent-applicant. 686 was on the merits. They submitted the case for decision based on the pleadings which. if not deliberate. Thus. there can be no doubt that respondent-applicant's soughtto-be-registered trademark BARBIZON is similar. to opposer's alleged trademark BARBIZON. since the opposer attempted neither to substantiate its claim of use in local commerce with any proof or evidence. 1. Now. "swaggers into the country like a conquering hero. as to any other admissible matter which might have been offered for that purpose. and its requisites are: (a) the former judgment or order must be final. a foreign corporation. the opposer submitted the case for decision based merely on the pleadings. has joined cause with petitioner. a thing or matter settled by judgment. in fact obviously identical. identity of parties. Neither party took testimony nor adduced documentary evidence. 686 reads as follows: "x x x. Rec. mistake or to deceive purchasers." usurps the trademark and invades petitioner's market. and all other matters that could have been adjudged therein. Accordingly.advertisements and promotion of the trademark and its products. The only appreciable but very negligible difference lies in their respective appearances or manner of presentation. p. of subject matter and of causes of action. Respondent-applicant's trademark is in bold letters (set against a black background). private respondent is barred from questioning petitioner's ownership of the trademark because of res judicata. together with the pertinent records. [32] Justice and fairness dictate that private respondent be prevented from appropriating what is not its own. at the same time. the only issue for my disposition is whether or not the herein opposer would probably be damaged by the registration of the trademark BARBIZON sought by the respondent-applicant on the ground that it so resembles the trademark BARBIZON allegedly used and owned by the former to be `likely to cause confusion. the judgment in the first action is considered conclusive as to every matter offered and received therein. In fact. Legally. [34] In res judicata. while that of the opposer is offered in stylish script letters. However. on behalf of respondent Director of Patents. omission of the date (or year) when opposer's alleged trademark BARBIZON was first used in trade in the Philippines (see par. 686 was final and was rendered by the Director of Patents who had jurisdiction over the subject matter and parties. a reading of the text of said verified opposition reveals an apparent. the allegation of facts in opposer's verified notice of opposition is devoid of such material information.). Instead. and that the lack of a hearing was immaterial because substantial issues were raised by the parties and passed upon by the Director of Patents. 2. (d) there must be between the first and second actions.[33] Literally. private respondent. almost thirty years later. in spelling and pronunciation. a thing judicially acted upon or decided. (b) the judgment or order must be one on the merits.' On record.

[41]The Convention is essentially a compact among various countries which. Although no hearing was conducted. 1980 and October 25. such as the prior use and registration of the trademark in the United States and other countries worldwide. irrespective of formal. [39] It is not necessary that a trial should have been conducted. DISMISSED. is a multilateral treaty that seeks to protect industrial property consisting of patents. 1970. the opposition should be. there being no testimony taken as to said date of first use. Escobar. otherwise known as the Paris Convention. have pledged to accord to citizens of the other member countries trademark and other rightscomparable to those accorded their own citizens by their domestic laws for an effective protection against unfair competition. respondent-applicant will be limited to the filing date. that the two cases do not have identical causes of action. If the court's judgment is general. of her application as the date of first use (Rule 173.) No. Accordingly. 686 and IPC No. 1983 of the Minister of Trade and Industry to the Director of Patents.. foreign nationals are to be . Undisputedly. 686 being on the merits. and the parties had a full legal opportunity to be heard on their respective claims and contentions. Application Serial No. From the foregoing. The Convention of Paris for the Protection of Industrial Property. 2049. Be that as it may. as members of the Union. it is on the merits although there was no actual hearing or arguments on the facts of the case. 686 was a judgment on the merits and it was error for the Court of Appeals to rule that it was not. industrial designs. June 15. as well as Executive Order (E. and have identical causes of action.On the other hand. utility models. Escobar's claim of first use was upheld. The lack of evidence did not deter the Director of Patents from ruling on the case. Rules of Practice in Trademark Cases). i. IPC No. prior use in the Philippines. 19010. is given due course. which goes into the very substance of the relief sought by the parties." Private respondent counter-argues. I conclude that the opposer has not made out a case of probable damage by the registration of the respondentapplicant's mark BARBIZON. particularly on the issue of prior use.O."[38] The decision in IPC No. 686 and IPC No. 1970. New causes of action were allegedly introduced in IPC No. and the fraudulent registration of the mark in violation of Article 189 of the Revised Penal Code. trademarks. both parties filed their respective pleadings and were given opportunity to present evidence.[42] In short. A judgment is on the merits when it determines the rights and liabilities of the parties based on the disclosed facts. as it is hereby. WHEREFORE. they involve the same parties and the same subject matter. for the registration of the trademark BARBIZON of respondent Lolita R. and at the same time aims to repress unfair competition. 913. however. They.e. respondent-applicant asserted in her amended application for registration that she first used the trademark BARBIZON for brassiere (or 'brasseire') and ladies underwear garments and panties as early as March 3. Private respondent also cited protection of the trademark under the Convention of Paris for the Protection of Industrial Property. petitioner and the Solicitor General allege that IPC No. Since private The judgment in IPC No. and the implementation of Article 6bis by two Memoranda dated November 20. the Director of Patents did not dismiss private respondent's opposition on a sheer technicality. 2049 also comply with the fourth requisite of res judicata. 2049 involve the same parties and the same subject matter. trade names and indications of source or appellations of origin. technical or dilatory objections. service marks. and not based on any technical defect or objection. specifically Article 6bis thereof. however. [40] In the case at bar. respondent failed to prove prior use of its trademark. The subject matter of both cases is the trademark "Barbizon. Petitioner herein is the assignee of Escobar while private respondent is the same American corporation in the first case. waived their right to do so and submitted the case for decision based on their pleadings.

The United States acceded on May 30. either administratively if their legislation so permits. 1887 while the Philippines. at The Hague in 1925. 1883. [54] . Under the first paragraph. [47] The Philippines' adhesion became effective on September 27.[44] (2) A period of at least five years from the date of registration shall be allowed for seeking the cancellation of such a mark. of a mark considered by the competent authority of the country of registration or use to be well-known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods.[45] It underwent several revisions-.given the same treatment in each of the member countries as that country makes available to its own citizens.[51] It is a self-executing provision and does not require legislative enactment to give it effect in the member country. after its ratification according to the public law of each state and the order for its execution.These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith. at Lisbon in 1958. liable to create confusion.at Brussels in 1900. liable to create confusion. and used for identical or similar goods. at Washington in 1911. Both the Philippines and the United States of America. [43] Nationals of the various member nations are thus assured of a certain minimum of international protection of their industrial property. of a trademark which constitutes a reproduction. each country of the Union bound itself to undertake to refuse or cancel the registration." [50] In the case at bar. through its Senate. or any essential part of which trademark constitutes a reproduction. to be well-known in the country as being already the mark of a person entitled to the benefits of the Convention.[46] and at Stockholm in 1967. and prohibit the use of a trademark which is a reproduction. an imitation. at London in 1934. are signatories to the Convention. or the courts of the country in question if the issue comes before a court. the country obligated itself to honor and enforce the provisions of the Convention. concurred on May 10. 1965. This Article governs protection of wellknown trademarks. herein private respondent's country. or a translation." This competent authority would be either the registering authority if it has the power to decide this.[49] (3) No time limit shall be fixed for seeking the cancellation or the prohibition of the use of marks registered or used in bad faith.[53] The essential requirement under Article 6bis is that the trademark to be protected must be "well-known" in the country where protection is sought. The Convention was first signed by eleven countries in Paris on March 20. The countries of the Union may provide for a period within which the prohibition of use must be sought. Article 6bis was first introduced at The Hague in 1925 and amended in Lisbon in 1952. imitation or translation. [48] and from this date. 1965. private respondent anchors its cause of action on the first paragraph of Article 6bis of the Paris Convention which reads as follows: "Article 6bis (1) The countries of the Union undertake. of a mark considered by the competent authority of the country where protection is sought. to refuse or to cancel the registration and to prohibit the use.[52] It may be applied directly by the tribunals and officials of each member country by the mere publication or proclamation of the Convention. or at the request of an interested party. The power to determine whether a trademark is well-known lies in the "competent authority of the country of registration or use.

It is further directed that. Lanvin and Ted Lapidus. translation or other infringement. Ralph Lauren. Fila. 13359 (17) June 1983][56] which affirms the validity of the MEMORANDUM of then Minister Luis R. this should be established. viz: "Pursuant to Executive Order No. Calvin Klein. to avoid suits for damages and other legal action by the trademarks' foreign or local owners or original users. For immediate compliance. then Minister Roberto Ongpin issued another Memorandum to the Director of Patents. and the like. Pierre Cardin. Sasson. Geoffrey Beene. that `such rule-making and adjudicatory powers should be revitalized in order that the Minister of Trade and Industry can x x x apply more swift and effective solutions and remedies to old and new problems x x x such as infringement of internationally-known tradenames and trademarks x x x' and in view of the decision of the Intermediate Appellate Court in the case of LA CHEMISE LACOSTE. Gucci. The Minister ordered the Director that: "Pursuant to the Paris Convention for the Protection of Industrial Property to which the Philippines is a signatory. Christian Dior. you are hereby directed to implement measures necessary to effect compliance with our obligations under said Convention in general. (c) that the trademark is duly registered in the industrial property office(s) of another country or countries. versus RAM SADWHANI [AC-G. on November 20. pursuant to Philippine Patent Office procedures in inter partes and ex parte cases. S.Pursuant to Article 6bis. Jordache. the establishment of factories. 1980. in different countries. (d) that the trademark has long been established and obtained goodwill and international consumer recognition as belonging to one owner or source.. imitation. (b) that the trademark is used in commerce internationally. and. Givenchy. taking into consideration the date of such registration. ." [55] Three years later. according to any of the following criteria or any combination thereof: (a) a declaration by the Minister of Trade and Industry that the trademark being considered is already well-known in the Philippines such that permission for its use by other than its original owner will constitute a reproduction. SP NO. You are also required to submit to the undersigned a progress report on the matter. Oscar de la Renta. as follows: 1. then Minister Luis Villafuerte of the Ministry of Trade issued a Memorandum to the Director of Patents. Whether the trademark under consideration is well-known in the Philippines or is a mark already belonging to a person entitled to the benefits of the CONVENTION.R. sales offices. Philippine registrants of such trademarks should be asked to surrender their certificates of registration. distributorships. if any. supported by proof that goods bearing the trademark are sold on an international scale.A. more specifically. 1983. 913 dated 7 October 1983 which strengthens the rule-making and adjudicatory powers of the Minister of Trade and Industry and provides inter alia. The conflicting claims over internationally known trademarks involve such name brands as Lacoste. you are hereby directed to reject all pending applications for Philippine registration of signature and other world-famous trademarks by applicants other than its original owners or users. advertisements. in cases where warranted. Vanderbilt. including volume or other measure of international trade and commerce. to honor our commitment underSection 6bis[57] thereof. on October 25. Villafuerte dated 20 November 1980 confirming our obligations under the PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY to which the Republic of the Philippines is a signatory.

translation or imitation of a trademark owned by a person who is a citizen of a member of the Union. The Minister Both the Villafuerte and Ongpin Memoranda were sustained by the Supreme Court in the 1984 landmark case of La Chemise Lacoste. service marks. This was to be established through Philippine Patent Office procedures in inter partes and ex parte cases pursuant to the criteria enumerated therein. emblems. The word trademark. the Minister of Trade instructed the Director of Patents to reject all pending applications for Philippine registration of signature and other world-famous trademarks by applicants other than their original owners or users. The Philippine Patent Office was ordered to refuse applications for. the first inter partes case. shall include tradenames. In the Ongpin Memorandum.[59] 3..[60] This court ruled therein that under the provisions of Article 6bis of the Paris Convention."[58] In the Villafuerte Memorandum. before the Villafuerte Memorandum but five (5) years after the effectivity of the Paris Convention.[61] The Villafuerte Memorandum was issued in 1980.Private respondent. Article 6bis was already in effect five years before the first case was instituted. the Minister of Trade and Industry did not enumerate well-known trademarks but laid down guidelines for the Director of Patents to observe in determining whether a trademark is entitled to protection as a well-known mark in the Philippines under Article 6bis of the Paris Convention. 686. The Philippine Patent Office shall give due course to the Opposition in cases already or hereafter filed against the registration of trademarks entitled to protection of Section 6 bis of said PARIS CONVENTION as outlined above. 1983 of then President Marcos which strengthened the rule-making and adjudicatory powers of the Minister of Trade and Industry for the effective protection of consumers and the application of swift solutions to problems in trade and industry. 5. 4. was filed in 1970. insignia or other similar devices used for identification and recognition by consumers. i. 2. Fernandez. enumerated several internationally-known trademarks and ordered the Director of Patents to require Philippine registrants of such marks to surrender their certificates of registration. All pending applications for registration of world-famous trademarks by persons other than their original owners were to be rejected forthwith. signs. trademarks which constitute a reproduction. The Philippine Patent Office shall refuse all applications for. or cancel the registration of. they shall be directed to surrender their Certificates of Registration to the Philippine Patent Office for immediate cancellation proceedings. translation or imitation of a trademark owned by a person.A. . the Minister of Trade and Industry was the "competent authority" to determine whether a trademark is well-known in this country.(e) that the trademark actually belongs to a party claiming ownership and has the right to registration under the provisions of the aforestated PARIS CONVENTION. 913 dated October 7. trademarks which constitute a reproduction. or cancel the registration of. All pending applications for Philippine registration of signature and other world-famous trademarks filed by applicants other than their original owners or users shall be rejected forthwith.e. v. IPC No. fifteen (15) years after the adoption of the Paris Convention in 1965. S.Where such applicants have already obtained registration contrary to the abovementioned PARIS CONVENTION and/or Philippine Law. In the case at bar. The Ongpin Memorandum was issued pursuant to Executive Order No. natural or corporate. x x x. as used in this MEMORANDUM. logos. who is a citizen of a country signatory to the PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY. by remanding applications filed by one not entitled to such protection for final disallowance by the Examination Division.

. filed with the Philippine Patent Office a petition for cancellation of the registration certificate of private respondent.[62] In this case. It was only in 1981 when IPC No. lingerie. ordered the cancellation of registration of petitioner's trademark. for the trademark "Hush Puppies" and "Dog Device. then the first case was a bar to the second case. since the first and second cases involved the same issue of ownership. 913 issued in 1983. and. during the pendency of the case. its subsequent petition was based on a new cause of action. which decision was not elevated to us and became final and executory. and cited protection under the Paris Convention and the Ongpin Memorandum. private respondent's opposition set forth several issues summarized as follows: (a) as early as 1933. Patent Office in 1961 and 1976. (b) that the trademark "BARBIZON" was registered with the United States Patent Office in 1934 and 1949.[65] In other words. In the instant case.e. after finality of the previous decision. the Ongpin Memorandum and E. did not cite the protection of Article 6bis." x x x "nor did it indicate a new policy with respect to the registration in the Philippines of world-famous trademarks.e. Court of Appeals. It was found that in 1973 petitioner's predecessor-in-interest filed two petitions for cancellation of the same trademark against respondent's predecessor-ininterest. No.S.[63] Wolverine claimed that while its previous petitions were filed under R. In IPC No. it adopted the word "BARBIZON" as trademark on its products such as robes. and gave due course to respondent's application for registration. 2049 was instituted that the Paris Convention and the Villafuerte Memorandum. 686. a foreign corporation.O. 2049. i.A. a Filipino citizen. The Solicitor General argues that the issue of whether the protection of Article 6bis of the Convention and the two Memoranda is barred by res judicata has already been answered inWolverine Worldwide. and that variations of the same trademark.however. "Barbizon" products have been advertised in international publications and the marks registered in 36 countries worldwide. Private respondent's opposition therein was merely anchored on: (a) "confusing similarity" of its trademark with that of Escobar's. (c) that these marks have been in use in the Philippines and in many countries all over the world for over forty years. 166. "BARBIZON" with Bee design and "BARBIZON" with the representation of a woman were also registered with the U. neither did it mention the Paris Convention at all. petitioner Wolverine. The Patent Office dismissed the petitions. This decision was sustained by the Court of Appeals. No. the 1983 Ongpin Memorandum were invoked by private respondent." [64] This conclusion was based on the finding that Wolverine's two previous petitions and subsequent petition dealt with the same issue of ownership of the trademark. the Trademark Law. nightgowns and slips. did not grant a new cause of action because it did "not amend the Trademark Law." Petitioner alleged that it was the registrant of the internationally-known trademark in the United States and other countries.. Inc. i.O. pajamas. the issue of ownership of the trademark "Barbizon" was not raised in IPC No. (b) that the registration of Escobar's similar trademark will cause damage to private respondent's business reputation and goodwill. We held that the said Memorandum and E. . The petition was dismissed by the Patent Office on the ground of res judicata. v. and (c) that Escobar's use of the trademark amounts to an unlawful appropriation of a mark previously used in the Philippines which act is penalized under Section 4 (d) of the Trademark Law.

The opposition in IPC No. (f) Escobar's trademark is identical to private respondent's and its use on the same class of goods as the latter's amounts to a violation of the Trademark Law and Article 189 of the Revised Penal Code.e. and the former judgment cannot be pleaded as a bar to the subsequent action. and this gave respondent another cause to oppose the second application. although growing out of the same subject matter. 686. 686 was based on specific provisions of the Trademark Law. the first registration and use of the trademark in the United States and other countries. commerce and trade. all agreements . transaction. This opposition also invoked Article 189 of the Revised Penal Code which is a statute totally different from the Trademark Law. The issue of prior use may have been raised in IPC No. It did not and could not have occurred in the first case. Section 4 (d) [70] on confusing similarity of trademarks and Section 8[71] on the requisite damage to file an opposition to a petition for registration. 2049 stems from private respondent's claim as originator of the word and symbol "Barbizon. although arising out of the same contract. and serve valuable and interrelated business functions. The opposition in IPC No.[74] Res judicata therefore does not apply to the instant case and respondent Court of Appeals did not err in so ruling. 686. No. particularly Article 6bis thereof.Res judicata extends only to facts and conditions as they existed at the time judgment was rendered and to the legal rights and relations of the parties fixed by the facts so determined. These are different from the issues of confusing similarity and damage in IPC No. and this fraudulent registration was cancelled in 1979. such as where the two actions are based on different statutes. and the international recognition and reputation of the trademark established by extensive use and advertisement of private respondent's products for over forty years here and abroad.O.(d) Escobar's registration of the similar trademark "BARBIZON" in 1974 was based on fraud. 686 but this claim was limited to prior use in the Philippines only. recovery on one being no bar to subsequent actions on others. i. both nationally and internationally. Trademarks deal with the psychological function of symbols and the effect of these symbols on the public at large. IPC No. [75] Trademarks play a significant role in communication. Intellectual and industrial property rights cases are not simple property cases. these are substantial allegations that raised new issues and necessarily gave private respondent a new cause of action. and the two Memoranda dated November 20. Executive Order No. For this reason. 1980 and October 25. may be sued on separately.[72] Causes of action which are distinct and independent from each other. Prior use in IPC No."[66] as the first and registered user of the mark attached to its products which have been sold and advertised worldwide for a considerable number of years prior to petitioner's first application for registration of her trademark in the Philippines. 1983 of the Minister of Trade and Industry to the Director of Patents. stripping Escobar of whatsoever right she had to the said mark. 2049 raised the issue of ownership of the trademark.[69] It is also noted that the oppositions in the first and second cases are based on different laws. 913 and the two Memoranda of the Minister of Trade and Industry. claims or demands. E. The cancellation of petitioner's certificate of registration for failure to file the affidavit of use arose only after IPC No. (e) Private respondent's trademark is entitled to protection as a wellknown mark under Article 6bis of the Paris Convention.. [68] When new facts or conditions intervene before the second suit. which constitute separate or distinct causes of action and were not put in issue in the former action.[67] Respondent corporation also introduced in the second case a fact that did not exist at the time the first case was filed and terminated. furnishing a new basis for the claims and defenses of the parties. 913. or state of facts. 2049 invoked the Paris Convention. the issues are no longer the same. Res judicata does not apply to rights.[73] The mere fact that the same relief is sought in the subsequent action will not render the judgment in the prior action operative as res judicata. Indeed.

[87] These Conventions are: the Berne Convention for the Protection of Literary and Artistic Works (1971). the unauthorized counterfeiting of industrial property and trademarked products has had a considerable adverse impact on domestic and international trade revenues. are intimately connected with economic development. the members have agreed to adhere to minimum standards of protection set by several Conventions. the State must reaffirm its commitment to the global community and take part in evolving a new international economic order at the dawn of the new millenium.[84] The WTO is a common institutional framework for the conduct of trade relations among its members in matters related to the multilateral and plurilateral trade agreements annexed to the WTO Agreement. the Rome Convention or the International Convention for the Protection of Performers.Among those annexed is the Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPs. the Decree on Intellectual Property.[88] A major proportion of international trade depends on the protection of intellectual property rights. Producers of Phonograms and Broadcasting Organisations. the petition is denied and the Decision and Resolution of the Court of Appeals in CA-G."[93] Conformably. . The Intellectual Property Code of the Philippines declares that "an effective intellectual and industrial property system is vital to the development of domestic and creative activity. taking into account the need to promote effective and adequate protection of intellectual property rights. and thereby bring about social and economic progress. it attracts foreign investments. [81] Articles 188 and 189 of the Revised Penal Code.[86] Members to this Agreement "desire to reduce distortions and impediments to international trade. and the Paris Convention (1967). 28415 are affirmed. SO ORDERED. [91] The Philippines and the United States of America have acceded to the WTO Agreement. and strengthening the multi-lateral trading system to bring about economic. like those on trademarks and tradenames.[77] These advantages have been acknowledged by the Philippine government itself. as revised in Stockholm on July 14.[85] The WTO framework ensures a "single undertaking approach" to the administration and operation of all agreements and arrangements attached to the WTO Agreement. [76] Industrial property encourages investments in new ideas and inventions and stimulates creative efforts for the satisfaction of human needs. the Treaty on Intellectual Property in Respect of Integrated Circuits.[82] and the Decree on Compulsory Reprinting of Foreign Textbooks. cultural and technological independence. facilitates transfer of technology. IN VIEW WHEREOF. There is now "a new era of global economic cooperation. and to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade.[90] The TRIPs Agreement seeks to grant adequate protection of intellectual property rights by creating a favorable economic environment to encourage the inflow of foreign investments.[80] the Patent Law." To fulfill these objectives.concerning industrial property. SP No. and has propelled the world towards trade liberalization and economic globalization." [78] The Intellectual Property Code took effect on January 1. reflecting the widespread desire to operate in a fairer and more open multilateral trading system. and ensures market access for our products. This Agreement has revolutionized international business and economic relations among states.R.[83] The Code was enacted to strengthen the intellectual and industrial property system in the Philippines as mandated by the country's accession to the Agreement Establishing the World Trade Organization (WTO).[79] repealed the Trademark Law.[92] Protectionism and isolationism belong to the past. Trade is no longer confined to a bilateral system. They speed up transfer of technology and industrialization. 1967. 1998 and by its express provision. [89] Since the late 1970's.

Hence. A Verified Notice of Opposition was filed by petitioner. petitioner appealed the decision of the BPTTT with public respondent Court of Appeals that eventually affirmed the decision of BPTTT. On November 10. No. DECISION GONZAGA-REYES. showing its ownership over the trademark CANON also under class 2. PETITIONER HAS EARLIER USED SAID MARK FOR SAID GOODS. the BPTTT issued its decision dismissing the opposition of petitioner and giving due course to private respondents application for the registration of the trademark CANON. . On January 15. On February 16. 1993. alleging that it will be damaged by the registration of the trademark CANON in the name of private respondent. private respondent NSR Rubber Corporation (private respondent) filed an application for registration of the mark CANON for sandals in the Bureau of Patents. B) TO ALLOW PRIVATE RESPONDENT TO REGISTER CANON FOR FOOTWEAR IS TO PREVENT PETITIONER FROM USING CANON FOR VARIOUS KINDS OF FOOTWEAR. 1995 of the Court of Appeals in CAGR SP No. respondents. 30203. Trademarks. [G.: Before us is a petition for review that seeks to set aside the Decision[1] dated February 21. Petitioner also submitted in evidence its Philippine Trademark Registration No. 1985.Petitioner moved to declare private respondent in default for its failure to file its answer within the prescribed period. vs. and Technology Transfer (BPTTT). Based on the records. and dye stuff). Petitioner anchors this instant petition on these grounds: A) PETITIONER IS ENTITLED TO EXCLUSIVE USE OF THE MARK CANON BECAUSE IT IS ITS TRADEMARK AND IS USED ALSO FOR FOOTWEAR. The BPTTT then declared private respondent in default and allowed petitioner to present its evidence ex-parte. chemical products. 39398. entitled "Canon Kabushiki Kaisha vs.R. The case was docketed as Inter Partes Case No. 3043. petitioner. C) PETITIONER IS ALSO ENTITLED TO THE RIGHT TO EXCLUSIVELY USE CANON TO PREVENT CONFUSION OF BUSINESS. July 20. J. COURT OF APPEALS and NSR RUBBER CORPORATION. a foreign corporation duly organized and existing under the laws of Japan. the evidence presented by petitioner consisted of its certificates of registration for the mark CANON in various countries covering goods belonging to class 2 (paints. WHEN IN FACT. 1995 denying the motion for reconsideration of herein petitioner Canon Kabushiki Kaisha (petitioner). NSR Rubber Corporation" and its Resolution dated June 27. this petition for review. toner. 2000] CANON KABUSHIKI KAISHA. 120900. 1992.

[2] The BPTTT and the Court of Appeals share the opinion that the trademark "CANON" as used by petitioner for its paints. Petitioner counters that notwithstanding the dissimilarity of the products of the parties. Allegedly. [6] A review of the records shows that with the order of the BPTTT declaring private respondent in default for failure to file its answer. chemical products. shoe polisher. except for its bare assertions. dyestuff). clearly showed that said certificates of registration cover goods belonging to class 2 (paints. the use of the same trademark on the latters product cannot be validly objected to. toner. toner. Clearly. and dyestuff of petitioner and the sandals of private respondent. chemical products. chemical products. dyestuffs. when in fact it has earlier used said mark for said goods. petitioner points out that it has branched out in its business based on the various goods carrying its trademark CANON[3]. This is clearly shown in its Trademark Principal Register (Exhibit "U") where the products of the said petitioner had been clearly and specifically described as "Chemical products. petitioner failed to attach evidence that would convince this Court that petitioner has also embarked in the production of footwear products. chemical products. Petitioner protests the appropriation of the mark CANON by private respondent on the ground that petitioner has used and continues to use the trademark CANON on its wide range of goods worldwide. We find the arguments of petitioner to be unmeritorious. On this basis. private respondent can use the trademark CANON for its goods classified as class 25 (sandals). the goods for which private respondent sought to register the mark CANON. polishing agent". We do not agree. shoe polisher and polishing agents should have precluded the BPTTT from giving due course to the application of private respondent. Stretching this argument. PROTECTED BY THE PARIS CONVENTION.D) PETITIONER IS ALSO ENTITLED TO THE EXCLUSIVE USE OF CANON BECAUSE IT FORMS PART OF ITS CORPORATE NAME. toner developing preparation. The certificates of registration for the trademark CANON in other countries and in the Philippines as presented by petitioner. To lend credence to its claim. We quote with approval the observation of the Court of Appeals that: "The herein petitioner has not made known that it intends to venture into the business of producing sandals. petitioner had every opportunity to present ex-parte all of its evidence to prove that its certificates of registration for the trademark CANON cover footwear. Even in this instant petition. pigments. and dyestuff. For petitioner. toner. there is a world of difference between the paints. toner. the BPTTT correctly ruled that since the certificate of registration of petitioner for the trademark CANON covers class 2 (paints.[7] Petitioners opposition to the registration of its trademark CANON by private respondent rests upon petitioners insistence that it would be precluded from using the mark CANON for various kinds of footwear. the ownership of a trademark or tradename is a property right that the owner is entitled to protect[4] as mandated by the Trademark Law. [5] However. the corporate name or tradename of petitioner is also used as its trademark on diverse goods including footwear and other related products like shoe polisher and polishing agents. dyestuff). petitioner claims that it is possible that the public could presume that petitioner would also produce a wide variety of footwear considering the diversity of its products marketed worldwide. when a trademark is used by a party for a product in which the other party does not deal. including footwear which petitioner contends covers sandals. the trademark owner is entitled to protection when the use of by the junior user "forestalls the normal expansion of his business". Ordinarily. can be used by private respondent for its sandals because the products of these two parties are dissimilar. It would be taxing ones credibility to aver at this point that the production of . the fact alone that its trademark CANON is carried by its other products like footwear.

Teodoro[14] and Converse Rubber Corporation vs. to be determined only according to the particular. the exclusive right of petitioner in this case to use the trademark CANON is limited to the products covered by its certificate of registration. the fact that the goods involved therein flow through different channels of trade highlighted their dissimilarity.[8] In Faberge. a factor explained in this wise: . if not identical. In sustaining the Director of Patents. (the senior user). Teodoro and Converse Rubber Corporation vs. petitioner invokes the rulings in Sta. this Court said that since "(the senior user) has not ventured in the production of briefs. Intermediate Appellate Court. circumstances of each case. Maliwat[13]. Inc. the question that usually arises is whether the respective goods or services of the senior user and the junior user are so related as to likely cause confusion of business or origin. Petitioner is apprehensive that there could be confusion as to the origin of the goods.[20] Thus. Ang vs. in trademark law cases. Petitioner further argues that the alleged diversity of its products all over the world makes it plausible that the public might be misled into thinking that there is some supposed connection between private respondents goods and petitioner. vs. Incorporated vs. the product for which the trademark BRUTE was sought to be registered.. Moreover. subject to the conditions and limitations stated therein. Inc.[15]. and toilet soap. Maliwat. Inc. the facts of this case will show that the cases of Sta. and reap the advantages of. the goodwill and reputation of petitioner Canon". Inc.[19]They may also be related because they serve the same purpose or are sold in grocery stores. even more than in other litigation. Universal Rubber Products. cigarettes are "so foreign to each other as to make it unlikely that purchasers would think that petitioner is the manufacturer of respondents goods"[21]. this Court ruled that the petroleum products on which the petitioner therein used the trademark ESSO. Universal Rubber Products. and thereby render the trademark or tradenames confusingly similar. texture or quality. Ang vs. In such a case.[16]Indeed. cannot and should not be allowed to feign that (the junior user) had invaded (the senior users) exclusive domain.[9] the Director of patents allowed the junior user to use the trademark of the senior user on the ground that the briefs manufactured by the junior user. are hardly in point. The senior user vehemently objected and claimed that it was expanding its trademark to briefs and argued that permitting the junior user to register the same trademark would allow the latter to invade the senior users exclusive domain. when they possess the same physical attributes or essential characteristics with reference to their form. petitioner would allegedly be immensely prejudiced if private respondent would be permitted to take "a free ride on. precedent must be studied in the light of the facts of the particular case. shaving cream. [17] Contrary to petitioners supposition. if private respondent is allowed to register the mark CANON. in Esso Standard Eastern. as in the case of Converse Rubber Corporation vs. Ana vs. The likelihood of confusion of goods or business is a relative concept. the products involved are so unrelated that the public will not be misled that there is the slightest nexus between petitioner and the goods of private respondent. was unrelated and non-competing with the products of the senior user consisting of after shave lotion." [10] We reiterated the principle that the certificate of registration confers upon the trademark owner the exclusive right to use its own symbol only to those goods specified in the certificate.sandals could be considered as a possible "natural or normal expansion" of its business operation". Ana vs. talcum powder. Court of Appeals. Universal Rubber Products.[18] Goods are related when they belong to the same class or have the same descriptive properties. The just cited cases involved goods that were confusingly similar.[12] In support of the foregoing arguments. Here. In cases of confusion of business or origin. and the product of respondent.[11] Thus. deodorant. as well as confusion of business. an item which is not listed in its certificate of registration. composition. and sometimes peculiar.

there is a marked distinction between oil and tobacco.." Public respondents BPTTT and the Court of Appeals allegedly committed an oversight when they required petitioner to prove that its mark is a well-known mark at the time the application of private respondent was filed. not a patent or copyright or anything else. of a mark . automotive shops and hardware stores.The countries of the Union undertake. toner and dyestuff of petitioner that carry the trademark CANON are unrelated to sandals. grocery store. it should not be required to prove that its trademark is well-known and that the products are not similar as required by the quoted memorandum. the provision referring to the protection of trademarks. We agree with the BPTTT. Finally. in kind and nature the products of (respondent) and of (petitioner) are poles apart. 1983 which according to petitioner implements Article 6bis of the Paris Convention. when it noted that the two classes of products in this case flow through different trade channels. the paints. On the other hand. The products of petitioner are sold through special chemical stores or distributors while the products of private respondent are sold in grocery stores. (Respondents) cigarettes are even peddled in the streets while (petitioners) gasul burners are not. d) the person claiming must be the owner of the mark."[22] Undoubtedly. to refuse or to cancel the registration and to prohibit the use of a trademark which constitutes a reproduction. to wit: "A tradename shall be protected in all the countries of the Union without the obligation of filing or registration. or at the request of an interested party. protected by Article 8 of the Paris Convention. and other small distributor outlets. the product of private respondent. petitioner invokes the protective mantle of the Paris Convention. Evidently."The products of each party move along and are disposed through different channels of distribution. b) the subject of the right must be a trademark. either administratively if their legislation so permits. not tradenames." According to petitioner. Article 6bis of the Paris Convention states: (1). In its bid to bar the registration of private respondent of the mark CANON. [23] Thus. the (respondents) cigarettes are sold in sarisari stores. the evident disparity of the products of the parties in the case at bar renders unfounded the apprehension of petitioner that confusion of business or origin might occur if private respondent is allowed to use the mark CANON. whether or not it forms part of a trademark. The memorandum reads: "a) the mark must be internationally known.. Petitioner asserts that it has the exclusive right to the mark CANON because it forms part of its corporate name or tradename. The (petitioners) products are distributed principally through gasoline service and lubrication stations. Petitioner questions the applicability of the guidelines embodied in the Memorandum of then Minister of Trade and Industry Roberto Ongpin (Ongpin) dated October 25. chemical products. c) the mark must be for use in the same or similar class of goods. as well as between petroleum and cigarettes. sari-sari stores and department stores. the provision for the protection of trademarks. liable to create confusion. Petitioner emphasizes that the guidelines in the memorandum of Ongpin implement Article 6bis of the Paris Convention. imitation or translation.. following the Esso doctrine.

Intermediate Appellate Court. a trademark refers to the goods. Petitioner believes that the appropriate memorandum to consider is that issued by the then Minister of Trade and Industry. as including "any word. tradenames. 6. firm names. industrialists. this Office believes that there is no automatic protection afforded an entity whose . commercial. of which both the Philippines and Japan. vocations.." As far as petitioner is concerned. are signatories [29]. The term "trademark" is defined by RA 166. or occupations. utility models. directing the Director of patents to: "reject all pending applications for Philippine registration of signature and other world famous trademarks by applicants other than the original owners or users. agricultural or other organizations engaged in trade or commerce. devices or words used by manufacturers. industrial. the fact that its tradename is at risk would call for the protection granted by Article 8 of the Paris Convention. otherwise known as the Paris Convention. unions. The countries of the Union may provide for a period within which the prohibition of use must be sought." [27] Simply put. and others to identify their business. emblem.considered by the competent authority of the country of registration or use to be well-known in that country as being already the mark of a person entitled to the benefits of the present Convention and used for identical or similar goods. and any manufacturing. symbol. is a multilateral treaty that seeks to protect industrial property consisting of patents.[31] As pointed out by the BPTTT: "Regarding the applicability of Article 8 of the Paris Convention.. sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them for those manufactured. (3)." Petitioner insists that what it seeks is the protection of Article 8 of the Paris Convention. 8 protects the tradename in the countries of the Union. even as embodied in par. 37 of RA 166. name. a trade name refers to the business and its goodwill. industrial designs. Luis Villafuerte. is "because there is a difference between the referent of the name and that of the mark" [24] and that "since Art.. trademarks.. the provision that pertains to the protection of tradenames.[28] The Convention of Paris for the Protection of Industrial Property. such as Japan and the Philippines.No time limit shall be fixed for seeking the cancellation or the prohibition of the use of marks or used in bad faith. and at the same time aims to repress unfair competition. Petitioner calls attention to the fact that Article 8. [30] We agree with public respondents that the controlling doctrine with respect to the applicability of Article 8 of the Paris Convention is that established in Kabushi Kaisha Isetan vs."[25] We cannot uphold petitioners position. trade names and indications of source or appellations of origin. the names or titles lawfully adopted and used by natural or juridical persons. mentions no requirement of similarity of goods. merchants."[26] Tradename is defined by the same law as including "individual names and surnames.. the Trademark Law. the country of petitioner. Petitioner claims that the reason there is no mention of such a requirement. agriculturists. sold or dealt in by others. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith. service marks. Petitioners tradename should be protected here.A period of at least five years from the date of registration shall be allowed for seeking the cancellation of such a mark.. (2). sec.

"[32] Petitioner assails the application of the case of Kabushi Kaisha Isetan vs. the Hon. as this office sees it. Fiji. c ) the mark must be for use in the same or similar kinds of goods. Hence. petitioner therein was found to have never at all conducted its business in the Philippines unlike herein petitioner who has extensively conducted its business here and also had its trademark registered in this country. Petitioners contention that its mark is well-known at the time the Respondent filed its application for the same mark should fail. chemical products) while the Respondent is using the same mark for sandals (class 25). al.tradename is alleged to have been infringed through the use of that name as a trademark by a local entity. it does not necessarily follow that "Rapid" can no longer be registered in Uganda. issued a memorandum dated 25 October 1983 to the Director of Patents. or the Philippines. Intermediate Appellate Court. the then Minister of Trade and Industry. and d) the person claiming must be the owner of the mark (The Parties Convention Commentary on the Paris Convention. Article by Dr. In Kabushiki Kaisha Isetan vs. Geneva. it is ruled that the Petitioner failed to comply with the third requirement of the said memorandum that is the mark must be for use in the same or similar kinds of goods. No. Roberto V. 75420.. petitioner submits that this factual difference renders inapplicable our ruling in the case of Kabushi Kaisha Isetan vs. a set of guidelines in the implementation of Article 6bis (sic) of the Treaty of Paris. However. The Intermediate Appellate Court. These conditions are: a) the mark must be internationally known.R. the Honorable Supreme Court held that: The Paris Convention for the Protection of Industrial Property does not automatically exclude all countries of the world which have signed it from using a tradename which happens to be used in one country. Intermediate Appellate Court to this case. 15 November 1991. G. Director General of the World Intellectual Property Organization. The Petitioner is using the mark "CANON" for products belonging to class 2 (paints. Petitioner points out that in the case of Kabushi Kaisha Isetan vs. not a patent or copyright or anything else. Intermediate Appellate Court that Article 8 of the Paris Convention does not automatically extend protection to a tradename that is in danger of being infringed in a country that is . b) the subject of the right must be a trademark. This office is not unmindful that in the Treaty of Paris for the Protection of Intellectual Property regarding well-known marks and possible application thereof in this case. Ongpin. is trying to seek refuge under its protective mantle. To illustrate if a taxicab or bus company in a town in the United Kingdom or India happens to use the tradename "Rapid Transportation". Bogsch. Hence. et. Switzerland. claiming that the subject mark is well known in this country at the time the then application of NSR Rubber was filed. Petitioner. 1985) From the set of facts found in the records.

. respondent Fortune Tobacco Corporation. a company organized in the Philippines. 11147. (now Philip Morris Products S. is the assignee of the trademark LARK.A. CV No. Suffice it to say that the just quoted pronouncement in the case of Kabushi Kaisha Isetan vs. United States of America. a subsidiary of Philip Morris. WHEREFORE. On the other hand. on August 18.: Via this petition for review under Rule 45 of the Rules of Court. Intermediate Appellate Court.. Resolution dated May 30. the registered owner of the trademark MARK VII for cigarettes.. Inc. Similarly.A. 2003[2] denying petitioners motion for reconsideration.. was made independent of the factual finding that petitioner in said case had not conducted its business in this country. S. Inc.R. to wit: 1. is the registered owner of the trademark MARK TEN for cigarettes as evidenced by PPO Certificate of Registration No. in its Civil Case No.. in view of the foregoing. 18723 issued on April 26. Benson & Hedges (Canada) Inc. 1982. Branch 166.) seek the reversal and setting aside of the following issuances of the Court of Appeals (CA) inCA-G. And as can be seen in Trademark Certificate of Registration No. per Certificate of Registration No. and 2. and Fabriques de Tabac Reunies. 47374.. a corporation organized under the laws of the State of Virginia. Philip moris v fortune Tabaco DECISION Petitioner Philip Morris. GARCIA. on the claim that an infringement of their respective trademarks had been committed. Inc. manufactures and sells cigarettes using the trademark MARK. Decision dated January 21. S. which dismissed the complaint for trademark infringement and damages thereat commenced by the petitioners against respondent Fortune Tobacco Corporation. 66619. This contention deserves scant consideration. which was originally registered in 1964 by Ligget and Myers Tobacco Company. is. herein petitioners Philip Morris. another subsidiary of Philip Morris. The legal dispute between the parties started when the herein petitioners. filed. Inc. the instant petition for review on certiorari is DENIED for lack of merit. Inc. the Swiss company Fabriques de Tabac Reunies.A. .also a signatory to said treaty.. petitioner Benson & Hedges (Canada). SO ORDERED. 19053. 1973 by the Philippine Patents Office (PPO). J. 2003 [1] affirming an earlier decision of the Regional Trial Court of Pasig City.

a country of the Union may prohibit the use of a trademark which constitutes a reproduction. to which the Philippines is a signatory xxx.R. [petitioners] alleged that they are foreign corporations not doing business in the Philippines and are suing on an isolated transaction. after the [respondent] filed its Opposition (Records. imitation. xxx without need of a license to do business in those countries. p. Vo. [Petitioners] likewise manifested [being registered owners of the trademark MARK VII and MARK TEN for cigarettes as evidenced by the corresponding certificates of registration and an applicant for the registration of the trademark LARK MILDS]. 1999 dismissing the complaint . in accordance with Section 21-A in relation to Section 23 of Republic Act 166. 1993 in G. xxx. as follows: In the Complaint xxx with prayer for the issuance of a preliminary injunction. I. which cannot particularly identify a product to be the product of the [petitioners] xxx xxx xxx xxx. these trademarks have already gained international fame and acceptance. They likewise argued that. manufactured and sold cigarettes bearing the identical and/or confusingly similar trademark MARK xxx Accordingly. they argued that [respondents] use of the trademark MARK in its cigarette products have caused and is likely to cause confusion or mistake.a Complaint for Infringement of Trademark and Damages against respondent Fortune Tobacco Corporation. xxx they averred that the countries in which they are domiciled grant xxx to corporate or juristic persons of the Philippines the privilege to bring action for infringement. xxx xxx xxx After the termination of the trial on the merits xxx trial court rendered its Decision xxx dated November 3. Invoking the provisions of the Paris Convention for the Protection of Industrial and Intellectual Property (Paris Convention. 1973. 26). The decision under review summarized what happened next. without any previous consent from any of the [petitioners]. Imputing bad faith on the part of the [respondent]. petitioners claimed that the [respondent]. No. [The incidental issue of the propriety of an injunction would eventually be elevated to the CA and would finally be resolved by the Supreme Court in its Decision dated July 16. [petitioners] pointed out that upon the request of an interested party. the matter of the [petitioners] prayer for the issuance of a writ of preliminary injunction was negatively resolved by the court in an Order xxx dated March 28. [Petitioners] claimed that they have registered the aforementioned trademarks in their respective countries of origin and that. 47374 of the Regional Trial Court of Pasig. by virtue of the long and extensive usage of the same. as amended. Branch 166. for brevity). Meanwhile. 91332]. or translation of a mark already belonging to a person entitled to the benefits of the said Convention. or would deceive purchasers and the public in general into buying these products under the impression and mistaken belief that they are buying [petitioners] products. they are entitled to relief in the form of damages xxx [and] the issuance of a writ of preliminary injunction which should be made permanent to enjoin perpetually the [respondent] from violating [petitioners] right to the exclusive use of their aforementioned trademarks.docketed as Civil Case No. xxx. [Respondent] filed its Answer xxx denying [petitioners] material allegations and xxx averred [among other things] xxx that MARK is a common word.

and have also failed to introduce in evidence a specific magazine or periodical circulated locally. the CA. or Switzerland. while ruling for petitioners on the matter of their legal capacity to sue in this country for trademark infringement.and counterclaim after making a finding that the [respondent] did not commit trademark infringement against the [petitioners]. xxx. Eventually. As to the issue of damages. point distinctly to the origin or ownership of the article to which it is applied and be of such nature as to permit an exclusive appropriation by one person. petitioners went on appeal to the CA whereat their appellate recourse was docketed as CA-G. xxx. the court ruled that the [petitioners] cannot avail themselves of the doctrine of secondary meaning. It expounded that in order for a name. elucidated that the words consisting of the trademarks allegedly infringed by [respondent] failed to show that they have acquired a secondary meaning as to identify them as [petitioners] products.R. the trial court was of the opinion that the words MARK. since the [petitioners] filed the action in the belief that they were aggrieved by what they perceived to be an infringement of their trademark. LARK and the Roman Numerals VII. Resolving first the issue of whether or not [petitioners] have capacity to institute the instant action. MARK TEN or LARK. 2003. Hence. either by itself or by association. Applying such principle to the instant case. which promotes and popularizes their products in the Philippines. It added that the testimonies of [petitioners] witnesses xxx essentially declared that [petitioners] are in fact doing business in the Philippines. It. the court declared that [petitioners] are barred from maintaining any action in Philippine courts pursuant to Section 133 of the Corporation Code. symbol or device to constitute a trademark. either alone or in combination of each other do not by themselves or by association point distinctly to the origin or ownership of the cigarettes to which they refer. [3] (Words in brackets supplied) Maintaining to have the standing to sue in the local forum and that respondent has committed trademark infringement. The trial court ruled that the [petitioners] failed to pass these tests as it neither presented witnesses or purchasers attesting that they have bought [respondents] product believing that they bought [petitioners] MARK VII. the trial court deemed it just not to award any to either party stating that. such that the buying public could not be deceived into believing that [respondents] MARK cigarettes originated either from the USA. Canada. the trial court opined that [petitioners] failure to present evidence to support their allegation that their respective countries indeed grant Philippine corporations reciprocal or similar privileges by law xxx justifies the dismissal of the complaint xxx. nevertheless affirmed the trial courts decision on the underlying issue of respondents liability for infringement as it found that: . Hence. CV No. it must. TEN. but [petitioners] failed to establish that they are doing so in accordance with the legal requirement of first securing a license. moreover. 66619. the trial court stated that the general rule is that an infringement exists if the resemblance is so close that it deceives or is likely to deceive a customer exercising ordinary caution in his dealings and induces him to purchase the goods of one manufacturer in the belief that they are those of another. no wrongful act or omission can be attributed to them. in its Decision dated January 21. Emphasizing that the test in an infringement case is the likelihood of confusion or deception. The issue of whether or not there was infringement of the [petitioners] trademarks by the [respondent] was likewise answered xxx in the negative.

A trademark is a merchandising short-cut which induces a purchaser to select what he wants. The petition is bereft of merit.xxx the appellants [petitioners] trademarks.[8]we will not disturb them. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. as regards the third issue. speculative. or device. there is likewise no basis for the award of damages prayed for by the appellants herein. a trademark deserves protection. v. the desirability of the commodity upon which it appears. 2003. i. Kresge Co.e. in the minds of potential customers. If another poaches upon the commercial . symbol. In its Comment. MARK TEN and LARK. [7] Unless the factual findings of the appellate court are mistaken.. it is no less true that we purchase goods by them. when the facts are undisputed.[10] Be that as it may. however.[5] respondent. For. [6] Indeed. absurd.[9]But. A trademark is any distinctive word. or dealt in by others. do not qualify as well-known marks entitled to protection even without the benefit of actual use in the local market and that the similarities in the trademarks in question are insufficient as to cause deception or confusion tantamount to infringement.:[12] The protection of trademarks is the laws recognition of the psychological function of symbols. as Mr. the question of whether or not the conclusion drawn therefrom by the CA is correct is one of law. also puts in issue the propriety of the petition as it allegedly raises questions of fact. or contrary to the findings culled by the court of origin.to convey through the mark. there is a question of fact when the doubt or difference arises as to the truth or falsity of alleged facts. [11] Inarguably. sold. aside from asserting the correctness of the CAs finding on its liability for trademark infringement and damages. or any combination thereof adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured. as Philippine registrants of trademarks. Concededly. are entitled to enforce trademark rights in this country. A question of law exists when the doubt or difference arises as to what the law is on a certain state of facts. It is petitioners posture. we shall deal with the issues tendered and determine whether the CA ruled in accordance with law and established jurisprudence in arriving at its assailed decision. Co.[4] (Word in bracket supplied) With their motion for reconsideration having been denied by the CA in its equally challenged Resolution of May 30. name. Justice Frankfurter observed in Mishawaka Mfg. the Court is not inclined to disturb the conclusions reached by the appellate court. MARK VII. hence liable for damages. Consequently. conflicting. the Court is not the proper venue to consider factual issues as it is not a trier of facts. the trade-mark owner has something of value. still. the established rule being that all doubts shall be resolved in favor of the correctness of such conclusions. If it is true that we live by symbols. sign. the aim is the same . even if we consider and accept as pure questions of law the issues raised in this petition. and (2) whether or not respondent has committed trademark infringement against petitioners by its use of the mark MARK for its cigarettes. tainted with grave abuse of discretion. that their contentions should be treated as purely legal since they are assailing erroneous conclusions deduced from a set of undisputed facts. petitioners are now with this Court via this petition for review essentially raising the following issues: (1) whether or not petitioners. we find that the petition raises both questions of fact and law contrary to the prescription against raising factual questions in a petition for review on certiorari filed before the Court. emblem. Whatever the means employed. Once this is attained. Dealing first with the procedural matter interposed by respondent. or what he has been led to believe what he wants.

v. or for unfair competition. and rightly so. No. the right to sue for trademark infringement in Philippine courts and be accorded protection against unauthorized use of their Philippine-registered trademarks. No. would justify dismissal thereof. Universal Rubber Products.) No. In support of their contention respecting their right of action. what petitioners now harp about is their entitlement to protection on the strength of registration of their trademarks in thePhilippines. advantages denied nonregistrants or ordinary users. otherwise known as the Paris Convention. In Leviton Industries v.. It ought to be pointed out.e.[16] petitioners state that such availability and sale may be effected through the acts of importers and distributors. does not mean that cigarettes bearing their trademarks are not available and sold locally. As such.[18] supra. without need of obtaining registration or a license to do business in the Philippines.. petitioners argue that their not doing business in the Philippines. To petitioners. 91332. ownership and the exclusive right to use the registered marks. such as petitioners. unless alleged in the complaint.. Salvador. petitioners assert that.[21] the Court further held that the aforementioned reciprocity requirement is a condition sine qua non to filing a suit by a foreign corporation which. if that be the case. Inc.R.magnetism of the symbol he has created. and without necessity of actually doing business in the Philippines. their country grants substantially similar rights and privileges to Filipino citizens pursuant to Section 21-A[20] of R. they can sue before Philippine courts for infringement of trademarks. like respondent.[17] that such right to sue does not necessarily mean protection of their registered marks in the absence of actual use in the Philippines. But while petitioners enjoy the statutory presumptions arising from such registration. but also by Article 2 of the Paris Convention for the Protection of Industrial Property. No.R. For. The Court of Appeals and Fortune Tobacco Corporation. 166. on top of Philippine registration. providing for a 2-month pre-registration use in local commerce and trade while the registration of MARK VII was on the basis of registration in the foreign country of origin pursuant to Section 37 of the same law wherein it is explicitly provided that prior use in commerce need not be alleged. so it must be here.A. It is thus understandable for petitioners to invoke in this recourse their entitlement to enforce trademark rights in this country. 166. following G. as corporate nationals of membercountries of the Paris Union. No. No.[15] Besides. both of which provide that the fame of a trademark may be acquired through promotion or advertising with no explicit requirement of actual use in local trade or commerce. these grievance right and mechanism are accorded not only by Section 21-A of Republic Act (R. the owner can obtain legal redress. to show proof that. or the Trademark Law. by the CA. as amended. 166. or the Intellectual Property Code (hereinafter the IP Code). they ought. [19] i.A. as amended. In any event. As we ruled in G. entitled Philip Morris. petitioners are still foreign corporations. Inc. as a condition to availment of the rights and privilegesvis--vis their trademarks in this country. Citing Converse Rubber Corporation v. specifically. they may not successfully sue on the basis alone of their respective certificates of registration of trademarks. that the appellate court qualified its holding with a statement. as to the validity of the registration. et al. petitioners would press on their entitlement to protection even in the absence of actual use of trademarks in the country in view of Admittedly. Thus clarified. petitioners point out that there is actual use of their trademarks in the Philippines as evidenced by the certificates of registration of their trademarks. a mere allegation that the suit is being pursued under Section 21-A of R. it must be emphasized that their standing to sue in Philippine courts had been recognized. the Philippines adherence to the Trade Related Aspects of Intellectual Property Rights or the TRIPS Agreement and the enactment of R. Finally.A.A. 8293. the registration of a trademark gives the registrant. 166 not . 91332. The marks MARK TEN and LARK were registered on the basis of actual use in accordance with Sections 2-A[13] and 5(a)[14] of R. Before discussing petitioners claimed entitlement to enforce trademark rights in the Philippines. however. No.A.

[32] and Philip Morris v. [22] however. members of the Paris Union does not automatically entitle petitioners to the protection of their trademarks in this country absent actual use of the marks in local commerce and trade. Switzerland and Canada. In a subsequent case. therefore. the fact that international law has been made part of the law of the land does not by any means imply the primacy of international law over national law in the municipal sphere. It is thus incongruous for petitioners to claim that when a foreign corporation not licensed to do business in the Philippines files a complaint for infringement. Court of Appeals: xxx xxx xxx Following universal acquiescence and comity. not superior. Considering that R. being considered part of Philippine municipal laws. our municipal law on trademarks regarding the requirements of actual use in the Philippines must subordinate an international agreement inasmuch as the apparent clash is being decided by a municipal tribunal. the Philippines adherence to the Paris Convention [24] effectively obligates the country to honor and enforce its provisions [25] as regards the protection of industrial property of foreign nationals in this country. the Court held that where the complainant is a national of a Paris Conventionadhering country. No. rules of International Law are given a standing equal. and (2) while no domicile requirement in the country where protection is claimed shall be required of persons entitled to the benefits of the Union for the enjoyment of any industrial property rights. Inc. together with the Philippines. Inc. mandates actual use of the marks and/or emblems in local commerce and trade before they may be registered and ownership thereof acquired. as amended. can be taken judicial notice of in infringement suits.A. Intermediate Appellate Court.[23] As well. specifically Sections 2[28] and 2-A[29] thereof. the petitioners cannot. the entity need not be actually using its trademark in commerce in the Philippines. because the reciprocal agreement between the two countries is embodied and supplied by the Paris Convention which. [27] foreign nationals must still observe and comply with the conditions imposed by Philippine law on its nationals. and enjoy the privileges that Philippine laws now grant or may hereafter grant to its nationals. Their being nationals of member-countries of the Paris Union does not alter the legal situation. [31] Kabushi Kaisha Isetan v. Court of Appeals and Fortune Tobacco Corporation[33] on the importance of actual commercial use of a trademark in the Philippines notwithstanding the Paris Convention: The provisions of the 1965 Paris Convention relied upon by private respondent and Sec.being sufficient. 21-A of the Trademark Law were sufficiently expounded upon and qualified in the recent case of Philip Morris. However. [30] the Court reiterated its rulings in Sterling Products International. to national legislative enactments. namely. the fact that their respective home countries. v. Withal. Xxx. Such a foreign corporation may have the personality to file a . True. In Emerald Garment Mfg. despite Article 2 of the Paris Convention which substantially provides that (1) nationals of member-countries shall have in this country rights specially provided by the Convention as are consistent with Philippine laws. the United States. its allegation that it is suing under said Section 21A would suffice. vs. [26] Hence. Under the doctrine of incorporation as applied in most countries. xxx xxx xxx In other words. Corporation v. Court of Appeals. dispense with the element of actual use. 166. any protection accorded has to be made subject to the limitations of Philippine laws. are. et.. (a foreign corporation) may have the capacity to sue for infringement but the question of whether they have an exclusive right over their symbol as to justify issuance of the controversial writ will depend on actual use of their trademarks in the Philippines in line with Sections 2 and 2-A of the same law. Farbenfabriken Bayer Aktiengesellschaft. al.

Development Group of Companies. 22. any reproduction. business in the Philippines. as amended. was presented in Converse. receptacles or advertisements intended to be used upon or in connection with such goods.A.suit for infringement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in the local market. Entitlement to protection of such trademark in the country is entirely a different matter.[40] But likelihood of confusion is a relative concept. 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. the registration of trademark cannot be deemed conclusive as to the actual use of such trademark in local commerce.[41] . and sometimes peculiar. such as sales invoices. defines what constitutes trademark infringement. But unlike in the instant case. Petitioners would insist on their thesis of infringement since respondents mark MARK for cigarettes is confusingly or deceptively similar with theirduly registered MARK VII. actual use is a pre-requisite to exclusive ownership. MARK TEN and LARK marks likewise for cigarettes. copy or colorable imitation to labels. we stress that registration in the Philippines of trademarks does not ipso facto convey an absolute right or exclusive ownership thereof. or services. With the foregoing perspective. evidence of actual sales of Converse rubber shoes.A. the TRIPS Agreement was inexistent when the suit for infringement was filed. took effect only on January 1. actual use thereof is the perfecting ingredient. signs. as amended. may actually earn reputation or goodwill for its goods in the country. Section 22 of R. or identity of such business. the particular. circumstances of each case being determinative of its existence. it may be stated right off that the registration of a trademark unaccompanied by actual use thereof in the country accords the registrant only the standing to sue for infringement in Philippine courts. Inc. particularly as to the source or origin of respondents cigarettes. v. the Philippines having adhered thereto only on December 16.[36] trademark is a creation of use and. counterfeit. prints. however.[37] Petitioners reliance on Converse Rubber Corporation[38] is quite misplaced. Ltd. we ruled that a foreign owner of a Philippine trademark. No. registration is only an administrative confirmation of the existence of the right of ownership of the mark. offering for sale. [34] as what happened here when petitioners no less admitted not doing business in this country. 1994. or deceive purchasers. 166. and not so engaged in. Evidence of nonusage of the mark rebuts the presumption of trademark ownership. The likelihood of confusion is the gravamen of trademark infringement. To them. that case being cast in a different factual milieu. As it were. Contrary to what petitioners suggest.[35] Most importantly. albeit not licensed to do. packages. more than in other kinds of litigation. 166. as follows: Sec. or advertising of any goods. the infringement complaint herein having been filed in August 1982 and tried under the aegis of R. The certificate of registration merely constitutes prima facie evidence that the registrant is the owner of the registered mark. This Court also finds the IP Code and the TRIPS Agreement to be inapplicable. There. Thus. copy or colorable imitation of any registered mark or tradename in connection with the sale.[39] In the same vein. but does not perfect such right. 1998 without a provision as to its retroactivity. copy of color ably imitate any such mark or tradename and apply such reproduction. Any person who shall use. what constitutes. precedents must be evaluated in the light of each particular case. in trademark infringement cases. or reproduce. This brings us to the principal issue of infringement. No. without the consent of the registrant. the word MARK would likely cause confusion in the trade. counterfeit. registration does not confer upon the registrant an absolute right to the registered mark. wrappers. counterfeit. The IP Code. business. Infringement. receipts and the testimony of a legitimate trader. therefore. shall be liable to a civil action by the registrant for any or all of the remedies herein provided. To borrow from Shangri-La International Hotel Management.

Canada or Switzerland. Indeed.[47] This said. For another. As observed in several cases.. the holistic test[45] entails a consideration of the entirety of the marks as applied to the products. even if the dominancy test were to be used. correctly relied on the holistic test. jurisprudence has developed two tests: the dominancy test and the holistic test. we rule against the likelihood of confusion resulting in infringement arising from the respondents use of the trademark MARK for its particular cigarette product. including the labels and packaging. buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods is the touchstone. [51] It cannot be over-emphasized that the products involved are addicting cigarettes purchased mainly by those who are already predisposed to a certain brand. a comparison of the trademarks as they appear on the goods is just one of the appreciable circumstances in determining likelihood of confusion. Upon consideration of the foregoing in the light of the peculiarity of this case. thus: The question is not whether the two articles are distinguishable by their label when set side by side but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard.[42] The dominancy test[43] sets sight on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception. because a discerning eye would focus not only on the predominant word but also on the other features appearing in the labels. For one. to be confused. the general impression of the ordinary purchaser. unfamiliar in the first place with petitioners marks. But. the question at issue turns on whether the use of the marks involved would be likely to cause confusion or mistake in the mind of the public or deceive purchasers. nor can the public be deceived. v. as rightly concluded by the CA after comparing the trademarks involved in their entirety as they appear on the products. in finding that respondents goods cannot be mistaken as any of the three cigarette brands of the petitioners. no actual commercial use of petitioners marks in local commerce was proven. thus constitutes infringement. When we spoke of an ordinary purchaser. the CA then. in determining confusing similarity. Del Monte Corp. the local buying public could not possibly be confused or deceived that respondents MARK is the product of petitioners and/or originated from the U. although the perceived offending word MARK is itself prominent in petitioners trademarks MARK VII and MARK TEN. as urged by the petitioners. the reference was not to the completely unwary customer but to the ordinarily intelligent buyer considering the type of product involved.[48] the likelihood of confusion tantamount to infringement appears to be farfetched. is such as to likely result in his confounding it with the original. be it alone or in combination with the word TEN and the Roman numeral VII. where we instructed to give due regard to the ordinary purchaser. but bearing in mind that a trademark serves as a tool to point out distinctly the origin or ownership of the goods to which it is affixed.S. Under this norm. Only then would such discerning observer draw his conclusion whether one mark would be confusingly similar to the other and whether or not sufficient differences existed between the marks. And lest it be overlooked.[49] Since the word MARK.In determining similarity and likelihood of confusion. The reason for the origin and/or ownership angle is that unless the words or devices do so point out the origin or ownership. does not point to the origin or ownership of the cigarettes to which they apply. Accordingly. the entire marking system should be considered as a whole and not dissected. There can thus be no occasion for the public in this country. CA[50] dealt with another.A. [44] In contrast. the ordinary buyer thereof would be all too familiar with his brand and discriminating as . the person who first adopted them cannot be injured by any appropriation or imitation of them by others. [46] the striking dissimilarities are significant enough to warn any purchaser that one is different from the other.

admitting that their products are not being sold in the local market. or advertising of any goods. This finding is supported by the fact that appellants admit in their Complaint that they are not doing business in the Philippines. as amended. In fine. As already found herein. while petitioners have registered the trademarks MARK VII. E & J Gallo Winery. (b) is used by another person in connection with the sale. Likewise. affirming that of the trial court: xxx the records are bereft of evidence to establish that the appellants [petitioners] products are indeed well-known in the Philippines. actual use of trademarks in local commerce is. thus. but also Sections 2. As correctly found by the CA. we note that petitioners even failed to support their claim that their respective marks are well-known and/or have acquired goodwill in the Philippines so as to be entitled to protection even without actual use in this country in accordance with Article 6bis[55] of the Paris Convention. In fact. as amended. copy or colorable imitation is applied to labels. signs. petitioners judicial admission of not doing business in this country effectively belies any pretension to the contrary. as it were. or in other countries but circulated locally have been presented by the appellants during trial. packages. (c) the trademark is used for identical or similar goods. As argued. under said section. are identical and/or confusingly similar with their duly registered trademarks MARK VII.[53] the Court held that the following constitute the elements of trademark infringement in accordance not only with Section 22 of R. or such trademark is reproduced. wrappers. and (d) such act is done without the consent of the trademark registrant or assignee. concur with the CA when it held. prior actual commercial use thereof had not been proven. or identity of such business. offering for sale. 166.A. counterfeited.A. This Court is not persuaded. citing a definition found in Dy Buncio v. Pressing on with their contention respecting the commission of trademark infringement. counterfeit. having manufactured and sold cigarettes with the trademark MARK which. MARK TEN and LARK. not a requisite before an aggrieved trademark owner can restrain the use of his trademark upon goods manufactured or dealt in by another. No. the goods in question. We likewise see no cogent reason to disturb the trial courts finding that the appellants failed to establish that their products are widely known by local purchasers as (n)o specific magazine or periodical published in the Philippines. it being sufficient that he had registered the trademark or trade-name with the IP Office. hence. No. business or services 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. In Mighty Corporation v. business or services as to likely cause confusion or mistake or to deceive purchasers. petitioners submit that respondent is liable for infringement. either through actual sale of the product or through different forms of advertising. Tan Tiao Bok. [52] that the ordinary purchaser in this case means one accustomed to buy. and therefore to some extent familiar with. 2-A. copied or colorably imitated by another person and such reproduction. MARK TEN and LARK for cigarettes in the Philippines.well. prints. receptacles or advertisements intended to be used upon or in connection with such goods. 9-A[54] and 20 thereof: (a) a trademark actually used in commerce in the Philippines and registered in the principal register of the Philippine Patent Office. We. 166. The appellants also were not able to show the length of time or the extent of the promotion or . petitioners finally point to Section 22 of R.

the assailed decision and resolution of the Court of Appeals are AFFIRMED. but not least.. had been previously registered in the Patent Office? — the Director of Patents answered affirmatively. a New York corporation. The objects of a trademark are "to point out distinctly the origin or ownership of the articles to which it is affixed. are final and binding on this Court. we must reiterate that the issue of trademark infringement is factual. The trademark is used exclusively in the Philippines since January 21. given the fact that PERTUSSIN. the petition is hereby DENIED. sought registration of trademark "Atussin" placed on its "medicinal preparation of expectorant antihistaminic. G. the dismissal of their basic complaint for infringement and the concomitant plea for damages must be affirmed.advertisement made to popularize their products in the Philippines. Etepha. and to prevent fraud and imposition. [57] For lack of convincing proof on the part of the petitioners of actual use of their registered trademarks prior to respondents use of its mark and for petitioners failure to demonstrate confusing similarity between said trademarks. respondent Westmont Pharmaceuticals. bronchodilator sedative. ascorbic acid (Vitamin C) used in the treatment of cough". 1.1 Petitioner." 2 Our over-all task then is to ascertain whether or not Atussin so resembles Pertussin "as to be likely. 6089.[56] Last. Accordingly. we are to be guided by the rule that the validity of a cause for infringement is predicated upon colorable imitation. Petitioner claims that it will be damaged because Atussin is so confusedly similar to its Pertussin (Registration No. On April 23. concurred in by the CA. As we said time and time again.. to secure to him who has been instrumental in bringing into market a superior article or merchandise the fruit of his industry and skill. Ethepa v Director of Patents To the question: May trademark ATUSSIN be registered. objected. when applied to or used in connection with the goods . that the buying public will be misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill. Costs against the petitioners. WHEREFORE. Inc. A. with both the trial and appellate courts having peremptorily found allegations of infringement on the part of respondent to be without basis.3 And.. SO ORDERED. Hence this appeal. issued on September 25. to cause confusion or mistake or to deceive purchasers". The law. of the applicant. another trademark. a Liechtenstin (principality) corporation. 1959. factual determinations of the trial court. the surrounding circumstances and the equities of the situation call for this disposition. 1959.. 1957) used on a preparation for the treatment of coughs. The .

Printed prominently along the left. shapes and general appearance. The Director of Patents aptly observes that it is "the common practice in the drug and pharmaceutical industries to 'fabricate' marks by using syllables or words suggestive of the ailments for which they are intended and adding thereto distinctive prefixes or suffixes". respondent's projects "Westmont Pharmaceuticals. not even by persons unfamiliar with the two trademarks. form.a "cough syrup". 1956) is persuasive: 14 . and pronunciation. giving such attention as a purchaser usually gives. 11 For. and the setting in which the words appear" may be considered. on the other hand.8 While "tussin" by itself cannot thus be used exclusively to identify one's goods. it is generic. it furnishes to the buyer no indication of the origin of the goods. USA" at the bottoms. 13 On this point the following culled from a recent decision of the United States Court of Customs and Patent Appeals (June 15. the meaning. "Apothecary E. spelling.9 And this union of words is reflected in petitioner's Pertussin and respondent's Atussin. Inc. trademark infringement is a form of unfair competition.ñët 3. sizes. color. contents.5 And appropriately to be considered now is the fact that. The two labels are entirely different in colors. ideas connoted by marks. indeed. In petitioner's. style. appearance. shape. Pertussin is printed diagonally upwards and across in semiscript style with flourishes and with only the first letter "P" capitalized. With jurisprudence holding the line. The contrasts in pictorial effects and appeals to the eye is so pronounced that the label of one cannot be mistaken for that of the other. concededly. That the word "tussin" figures as a component of both trademarks is nothing to wonder at. Respondent's for its part briefly represents what its produce actually is . size or format. of words used. and to cause him to purchase the one supposing it to be the other. block letters horizontally written. the first with prefix "Per" and the second with Prefix "A". New York. Schaan Fl". we feel safe in making the statement that any other conclusion would result in "appellant having practically a monopoly"7 of the word "tussin" in a trademark. it is open for appropriation by anyone. bottom and right edges of petitioner's label are indications of the use: "for bronchial catarrh — whopping-cough — coughs and asthma". arrangement of words thereon. Taeschner's". 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. 6 "Tussin" is merely descriptive. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed. It is accordingly barred from registration as trademark. Each label plainly shows the source of the medicine: petitioner's at the foot bears "Etepha Ltd. or such a resemblance to the original as to deceive an ordinary purchaser.1äwphï1. 12 We take a casual look at the two labels — without spelling out the details — bearing in mind the easy-to-remember earmarks thereof. 10 Some such factors as "sound."4 2. Respondent's label underscores the trademark Atussin in bold. and on the lower left side the word "Westmont" upon a white diamond shaped enclosure and in red ink — a color different from that of the words above and below it. it may properly become the subject of a trademark "by combination with another word or phrase".phrase "colorable imitation" denotes such a "close or ingenious imitation as to be calculated to deceive ordinary persons. and on top. the "tussin" (in Pertussin and Atussin) was derived from the Latin root-word "tussis" meaning cough. Inspection should be undertaken from the viewpoint of a prospective buyer.

in Atussin the whole starts with the single letter A added to suffix "tussin". There is. and can be no disagreement with the rule that the purchaser is confused. He is not of the incautious. As previously adverted to. 6. and the "only similarity is in the last syllable. In which case. the application of these rules in any given situation necessarily reflects a matter of individual judgment largely predicated on opinion. regard too should be given to the class of persons who buy the particular product and the circumstances ordinarily attendant to its acquisition. Reason: the two words "do not look or sound enough alike to justify a holding of trademark infringement". the more improbable it will be to palm off one for the other. 16 The medicinal preparation clothed with the trademarks in question. appearance. ice cream. We concede the possibility that buyers might be able to obtain Pertussin or Attusin without prescription. whereas. Similarly. if at all. the ruling is that trademark Syrocol (a cough medicine preparation) is not confusedly similar to trademark Cheracol (also a cough medicine preparation). he examines the product sold to him. An intending buyer must have to go first to a licensed doctor of medicine. In the solution of a trademark infringement problem. else he would not have the temerity to ask for a medicine — specifically needed to cure a given ailment. There is not much phonetic similarity between the two. anywhere. then the buyer must be one throughly familiar with what he intends to get. For a person who purchases with open eyes is hardly the man to be deceived.Confusion is likely between trademarks. e and r. he reads the doctor's prescription. As we take up Pertussin and Atussin once again. or meaning are such as would lead the purchasing public into believing that the products to which the marks are applied emanated from the same source. unobservant or unsuspecting type. The respective labels say so. whether correct or incorrect. however. One look is enough to denude the mind of that illuminating similarity so essential for a trademark infringement case to prosper. he receives instructions as to what to purchase. anytime. 5. . however. certainly in abundance — but. milk. includes a combination of three letters P. in the final analysis. by the marks as a whole. When this happens. 15 There. are unlike articles of everyday use such as candies. we cannot escape notice of the fact that the two words do not sound alike — when pronounced. The horizontal plain. And this. The common trade channel is the pharmacy or the drugstore. The Solicitor General well-observed that in Pertussin the pronunciation of the prefix "Per". the part that comes first is the most pronounced. In testing this issue. because in a word combination. only if their over-all presentations in any of the particulars of sound. Petitioner's and respondent's products are to be dispensed upon medical prescription. he knows what he is to buy. soft drinks and the like which may be freely obtained by anyone. 4. he checks to find out whether it conforms to the medical prescription. fixed legal rules exist — if not in harmony. We now consider exclusively the two words — Pertussin and Atussin — as they appear on the respective labels. block letters of Atussin and the diagonally and artistically upward writing of Pertussin leave distinct visual impressions. and that is not uncommon in names given drug compounds". Appeals to the ear are disimilar. unwary. these words are presented to the public in different styles of writing and methods of design. An expositor of the applicable rule here is the decision in the Syrocol-Cheracol controversy. the pharmacist or druggist verifies the medicine sold. The margin of error in the acquisition of one for the other is quite remote.

J.-G. or in bottles or under labels which .. as members) reversed the trial court. Civ. RTC Branch 166. Jr. putting up. agents.: On September 15. Asia Brewery Inc. No. advertising. manufacture or beer in bottles and under labels substantially identical with or like the said bottles and labels of plaintiff San Miguel Corporation employed for that purpose. Campos. Mendoza. servants and employees are hereby permanently enjoined and restrained from manufacturing. vs. (ABI) for infringement of trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product which has been In the light of the foregoing analysis and under the plain language of the applicable rule and principle on the matter.A. Bersamira.R. a decision was rendered by the trial Court.R. and Justices Venancio D. Bunag. We find the defendant Asia Brewery Incorporated GUILTY of infringement of trademark and unfair competition. The dispositive part of the decision reads as follows: G.). 1988. or substantially identical with or like the bottles and labels now employed by the defendant for that purpose. Metro Manila. Costa against petitioner. competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market. or any similar preparation. Pasig. Roco. INC. 28104). COURT OF APPEALS and SAN MIGUEL CORPORATION. 1991. Hernandez & Gatmaitan for petitioner. or supplying Beer Pale Pilsen. THE HON. respondents. Case.. Abad Santos & Associates and Sycip. selling. Kapunan Law Office for private respondent. dismissing SMC's complaint because ABI "has not committed trademark infringement or unfair competition against" SMC (p. and Filemon H. the Court of Appeals (Sixth Division composed of Justice Jose C. Aldecoa Jr. 1993 ASIA BREWERY. its officers. So ordered. Rollo). The decision of the trial court is hereby REVERSED. chairman and ponente. petitioner. On August 27. No. presided over by Judge Jesus O. 189. and a new judgment entered in favor of the plaintiff and against the defendant as follows: (1) The defendant Asia Brewery Inc. CV No. Salazar. 1990. 103543 July 5. 56390. offering or announcing for sale. GRIÑO-AQUINO. On September 30. San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc.. (San Miguel Corporation vs. the appealed decision of the respondent Director of Patents — giving due course to the application for the registration of trademark ATTUSIN is hereby affirmed. SMC appealed to the Court of Appeals (C.For the reasons given.

000.) Upon a motion for reconsideration filed by ABI. (1) The defendant Asia Brewery Inc. is hereby ordered to render an accounting and pay the San Miguel Corporation double any and all the payments derived by defendant from operations of its business and the sale of goods bearing the mark "Beer Pale Pilsen" estimated at approximately Five Million Pesos (P5. and a new judgment entered in favor of the plaintiff and against the defendant as follows: (2) The defendant Asia Brewery Inc. to recall all its products bearing the mark "Beer Pale Pilsen" from its retailers and deliver these as well as all labels. or any similar preparation. servants and employees are hereby permanently enjoined and restrained from manufacturing.. prints.000.00) as moral damages and Half a Million Pesos (P5. (p. putting up.00) as moral damages and Half a Million Pesos (P500.000. 90. The decision of the trial court is hereby REVERSED. receptacles and advertisements bearing the infringing mark and all plates.000. (3) The defendant is hereby ordered to pay plaintiff the sum of Two Million Pesos (P2. selling. or in bottles or under labels which are calculated to deceive purchasers and consumers into the belief that the beer if the product of the plaintiff or which will enable others to substitute. sell or palm off the said beer of the defendant as and for the beer of the plaintiff-complainant. manufacture or beer in bottles and under labels substantially identical with or like the said bottles and labels of plaintiff San Miguel Corporation employed for that purpose. Rollo. materials and other means of making the same to the Court authorized to execute this judgment for destruction. packages. (4) The defendant is further ordered to pay the plaintiff attorney's fees in the amount of P250.00). . Incorporated GUILTY of infringement of trademark and unfair competition.000.000.000. is hereby ordered 2 to recall all its products bearing the mark Beer Pale Pilsen from its retailers and deliver these as well as all labels. was modified by the separate opinions of the Special Sixth Division 1 so that it should read thus: In the light of the foregoing analysis and under the plain language of the applicable rule and principle on the matter. or substantially identical with or like the bottles and labels now employed by the defendant for that purpose. agents. molds. packages. offering or announcing for sale.00) by way of exemplary damages. wrappers. signs. or supplying Beer Pale Pilsen.000.00) by way of exemplary damages. sell or palm off the said beer of the defendant as and for the beer of the plaintiff-complainant.000. receptacles and advertisements bearing the infringing mark and all plates. signs. wrappers. materials and other means of making the same to the Court authorized to execute this judgment for destruction. molds.000.00 plus costs to this suit. We find the defendant Asia Brewery (2) The defendant Asia Brewery Inc. the above dispositive part of the decision. its officers. advertising. prints. (3) The defendant is hereby ordered to pay plaintiff the sum of Two Million Pesos (P2.are calculated to deceive purchasers and consumers into the belief that the beer is the product of the plaintiff or which will enable others to substitute.

Mendoza vs. IAC. It is a factual issue (Phil. 65 SCRA 575) and as a general rule. capacity with a white painted rectangular label has committed trademark infringement and unfair competition against SMC. 609. (7) When the findings are without citation of specific evidence on which they are based. 169 SCRA 220. surmises and conjectures. 139 SCRA 576. (5) When the appellate court. However. (Cruz vs. and Moran. Court of Appeals.000. CA. also Apex Investment and Financing Corp. 147 SCRA 238. Sandiganbayan. 166. 129 SCRA 222. Sacay vs. 36 Phil. Court of Appeals. by manufacturing and selling its BEER PALE PILSEN in amber colored steinie bottles of 320 ml. 223 citing. Jr. 106).) Where findings of the Court of Appeals and trial court are contrary to each other. 97 SCRA 734. vs. Manlapaz vs. Sec. Nut Industry Inc. and thereby commits unfair competition against the latter. the findings of the Court of Appeals upon factual questions are conclusive and ought not to be disturbed by us. CA. IAC. the Supreme Court may scrutinize the evidence on record. went beyond the issues of the case. 420. 336. the Court has to review the evidence in order to arrive at the correct findings based on the record (Roman Catholic Bishop of Malolos. 100.. Court of Appeals.. vs. Infringement of trademark is a form of unfair competition (Clarke vs. 133 SCRA 88]. Inc. defines what constitutes infringement: . ABI appealed to this Court by a petition for certiorari under Rule 45 of the Rules of Court. and they are: (1) When the conclusion is grounded entirely on speculation. Casanayan vs. 166 SCRA 458 [citing Tolentino vs.) Under any of these exceptions. and (9) When the findings of facts of the Court of Appeals are premised on the absence of evidence and are contradicted on record. (3) Where there is grave abuse of discretion. otherwise known as the Trademark Law. Standard Brands Inc. Inc. 56 SCRA 167.00 plus costs of this suit. (2) When the inference of the Court of Appeals from its findings of fact is manifestly mistaken. 227. and the same are contrary to the admissions of both the appellant and the appellee. Manero vs. there are exceptions to this general rule. (4) When the judgment is based on a misapprehension of facts. vs. Inc. 142 SCRA 593. Carolina Industries. Court of Appeals. CMS Stock Brokerage. absurd and impossible. De Jesus.) The present case is one of the exceptions because there is no concurrence between the trial court and the Court of Appeals on the lone factual issue of whether ABI. vs. (Reynolds Philippine Corporation vs.. 156 SCRA 597. in making its findings. 191 SCRA 411.(4) The defendant is further ordered to pay the plaintiff attorney's fees in the amount of P250. v. CA. 22 of Republic Act No. Manila Candy Co. In due time. The lone issue in this appeal is whether ABI infringes SMC's trademark: San Miguel Pale Pilsen with Rectangular Hops and Malt Design. 198 SCRA 333. Guita vs. 102 SCRA 817. (8) When the facts set forth in the petition as well as in the petitioner's main and reply briefs are not disputed by the respondents. (6) When the findings of said court are contrary to those of the trial court. CA.

. or colorable imitation to labels. 177. copy. counterfeit." The "S" in "San" and the "M" of "Miguel. offering for sale. (p. is the phrase "Net Contents 320 ml. 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. a rectangular design [is] bordered by what appears to be minute grains arranged in rows of three in which there appear in each corner hop designs. At the top is a phrase written in small print "Reg. . . dated 23 Oct. 177. Below "Pale Pilsen" is the statement "And Bottled by" (first line. what constitutes.) As described by the trial court in its decision (Page 177. 1986. "Asia Brewery Incorporated" (second line). counterfeit.) On the other hand. Rollo): ." and at the bottom "Net Contents: 320 Ml. To the left is a hop design and to the right. Below are the words "Pale Pilsen" written diagonally across the middle of the rectangular design. receptacles or advertisements intended to be used upon or in connection with such goods. The dominant feature is "Beer" written across the upper portion of the rectangular design." "P" of "Pale" and "Pilsen" are written in Gothic letters with fine strokes of serifs. Emphasis supplied." (Ibid. The phrase "Pale Pilsen" appears immediately below in smaller block letters. trade name or service mark is unauthorized. Emphasis supplied. if it is done "without the consent of the registrant. copy or colorable imitation of any registered mark or tradename in connection with the sale. (Philippine Bureau of Patents. and "Philippines" (third line). consists of: . a rectangular design bordered by what appear to be buds of flowers with leaves. the kind that first appeared in the 1780s in England and used for printing German as distinguished from Roman and Italic.Sec. (p. any reproduction. 174. In between is a coat of arms and the phrase "Expertly Brewed.) . Rollo. Pat. or advertising of any goods. Rollo. shall be liable to a civil action by the registrant for any or all of the remedies herein provided. as described by the trial court. packages. (p. Phil." The dominant feature is the phrase "San Miguel" written horizontally at the upper portion. or identity of such business. actionable. wrappers. or reproduce.) This definition implies that only registered trade marks. "San Miguel Brewery" (second line). 36103. Rollo. without the consent of the registrant. copy or colorably imitate any such mark or trade-name and apply such reproduction. counterfeit. . . 22. (Emphasis supplied. trade names and service marks are protected against infringement or unauthorized use by another or others. business or services. Trademarks and Technology Transfer Trademark Certificate of Registration No. ABI's trademark. The use of someone else's registered trademark. hence." Immediately below "Pale Pilsen" is the statement written in three lines "Especially brewed and bottled by" (first line). Infringement.) The registered trademark of SMC for its pale pilsen beer is: San Miguel Pale Pilsen With Rectangular Hops and Malt Design. signs. Off. and "Philippines" (third line). — Any person who shall use. prints. written in small prints.

. the test was similarity or "resemblance between the two (trademarks) such as would be likely to cause the one mark to be mistaken for the other. 40 Phil.) (Emphasis supplied. the following other dissimilarities in the trade dress or appearance of the competing products abound: (1) The SAN MIGUEL PALE PILSEN bottle has a slender tapered neck. 100 Phil. vs. (Auburn Rubber Corporation vs. the dominant feature of ABI's trademark is the name: BEER PALE PILSEN. Neilman Brewing Co.) vs. The rule was formulated in Co Tiong Sa vs.." There is hardly any dispute that the dominant feature of SMC's trademark is the name of the product: SAN MIGUEL PALE PILSEN. [C. citing Eagle White Lead Co. with the word "Beer" written in large amber letters. written in white Gothic letters with elaborate serifs at the beginning and end of the letters "S" and "M" on an amber background across the upper portion of the rectangular design. 489. If the competing trademark contains the main or essential or dominant features of another. Ang San To. 275. bulging neck. [But] this is not such similitude as amounts to identity. reiterated in Lim Hoa vs. just as the words "SAN MIGUEL" do not appear in ABI's trademark. the court was more specific: the test is "similarity in the dominant features of the trademarks. ." In Phil. Similarity in size. Munn & Co. . thus: What are the dominant features of the competing trademarks before us? It has been consistently held that the question of infringement of a trademark is to be determined by thetest of dominancy. 214. . is not conclusive. 579]. 272. The BEER PALE PILSEN bottle has a fat. Pflugh (CC) 180 Fed. 495. 65 SCRA 575. Besides the dissimilarity in their names. and confusion and deception is likely to result.. larger than any of the letters found in the SMC label. 2d 588. 1. No evidence whatsoever was presented by SMC proving otherwise. vs. vs.. 191 F. infringement takes place.. 216-217 (1956). 95 Phil.) In Forbes. nor it is necessary that the infringing label should suggest an effort to imitate. Nut Industry Inc. . On the other hand. . Hence. spelling or appearance can BEER PALE PILSEN be said to be confusingly similar to SAN MIGUEL PALE PILSEN. (Ltd. The trial court perceptively observed that the word "BEER" does not appear in SMC's trademark.Does ABI's BEER PALE PILSEN label or "design" infringe upon SMC's SAN MIGUEL PALE PILSEN WITH RECTANGULAR MALT AND HOPS DESIGN? The answer is "No. Director of Patents. Neither in sound.. . Duplication or imitation is not necessary. while relevant. Honover Rubber Co. Standard Brands Inc. 107 F. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers. there is absolutely no similarity in the dominant features of both trademarks." Infringement is determined by the "test of dominancy" rather than by differences or variations in the details of one trademark and of another. 4 (1954). form and color. Director of Patents. . No one who purchases BEER PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. Independent Brewing Co.

" whereas BEER PALE PILSEN is "Especially brewed and bottled by Asia Brewery Incorporated. surrounded by the words "Asia Brewery Incorporated Philippines. (See Exhibit "8-a".) "Pilsen" is a "primarily geographically descriptive word. when applied to or used in connection with the goods. [c] 1976.00 per bottle). [e] Republic Act No. One who pays only P4. its copyrighted slogan: "BEER NA BEER!" Whereas SMC's bottle carries no slogan. unless it: xxx xxx xxx (e) Consists of a mark or trade-name which. (3) The names of the manufacturers are prominently printed on their respective bottles.. Philippines. 166. or is primarily merely a surname." "cheddar cheese." (4) On the back of ABI's bottle is printed in big. which is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen in Czechoslovakia and became famous in the Middle Ages. subpar.). for "pale pilsen" are generic words descriptive of the color ("pale"). Springfield. business or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them." "corn flakes" and "cooking oil" may be appropriated by any single manufacturer of . (6) The SAN MIGUEL PALE PILSEN bottle cap is stamped with a coat of arms and the words "San Miguel Brewery Philippines" encircling the same. there is a substantial price difference between BEER PALE PILSEN (currently at P4.) The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are part of its registered trademark: SAN MIGUEL PALE PILSEN. . . of a type of beer ("pilsen"). business or services from the goods.." (Sec. or when applied to or used in connection with the goods. SAN MIGUEL PALE PILSEN is "Bottled by the San Miguel Brewery. Philippines.(2) The words "pale pilsen" on SMC's label are printed in bold and laced letters along a diagonal band." (7) Finally. Mass." "tomato ketchup. . (Webster's Third New International Dictionary of the English Language. under a row of flower buds and leaves. whereas the words "pale pilsen" on ABI's bottle are half the size and printed in slender block letters on a straight horizontal band. (5) The back of the SAN MIGUEL PALE PILSEN bottle carries the SMC logo. as inserted by Sec. 2 of R. bold letters. business or services of the applicant is merely descriptive or deceptively misdescriptive of them. The owner of trade-mark. The fact that the words pale pilsen are part of ABI's trademark does not constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN. The Trademark Law provides: Sec. trade-name or service-mark used to distinguish his goods.25 for a bottle of beer cannot expect to receive San Miguel Pale Pilsen from the storekeeper or bartender. Unabridged. any more than such descriptive words as "evaporated milk. nonregisterable and not appropriable by any beer manufacturer.25 per bottle) and SAN MIGUEL PALE PILSEN (currently at P7. page 1716.: G & C Merriam Co.A. business or services of others shall have the right to register the same [on the principal register]. 638) hence. The BEER PALE PILSEN bottle cap is stamped with the name "BEER" in the center. No. 4. 4. whereas the BEER PALE PILSEN bottle has no logo. Edited by Philip Babcock Gove." (Emphasis supplied.

and thus limit other persons in the use of language appropriate to the description of their manufactures. 869-870. provided they take proper steps to prevent the public being deceived. broadcast. . disproves SMC's charge that ABI dishonestly and fraudulently intends to palm off its BEER PALE PILSEN as SMC's product. especially if the user is the first creator of the article. Unfair Competition and Trademarks. 139 (1953). or qualities. inasmuch as all persons have an equal right to produce and vend similar articles. (2 Callman. 29. (Sec. 136. as amended. No one may appropriate generic or descriptive words. . or any acts calculated to produce the same result. Miles Medical Co. 166. The fact that BEER PALE PILSEN like SAN MIGUEL PALE PILSEN is bottled in amber-colored steinie bottles of 320 ml.) . Asia Brewery Incorporated. . however. A descriptive word may be admittedly distinctive. the Court believes it is quite unlikely that a customer of average intelligence would mistake a bottle of BEER PALE PILSEN for SAN MIGUEL PALE PILSEN. they also have the right to describe them properly and to use any appropriate language or words for that purpose. or of its composition. Director of Patents. Director of Patents. and as they are commonly used by those who understand their meaning.) . 542-543. it was held that a dealer in shoes cannot register "Leather Shoes" as his trademark because that would be merely descriptive and it would be unjust to deprive other dealers in leather shoes of the right to use the same words with reference to their merchandise. it is said that the true test is not whether they are exhaustively descriptive of the article designated. In view of the visible differences between the two products. on the back of the bottle.)" (Emphasis supplied. vs.A. (Richmond Remedies Co. cannot be appropriated and protected as a trademark to the exclusion of its use by others. but rather because others are equally entitled to its use. as well as on the bottle cap. or services. This rule excluding descriptive terms has also been held to apply to trade-names. or his business. . for no other reason than that he was the first to use them in his registered trademark. [2d] 598. they are reasonably indicative and descriptive of the thing intended. and television media. S. . be denied protection. vs. 16 E. If they are thus descriptive. its qualities. 96 Phil. Unfair competition is the employment of deception or any other means contrary to good faith by which a person shall pass off the goods manufactured by him or in which he deals. 94 Phil. characteristics. . . they cannot be appropriated from general use and become the exclusive property of anyone. Jur. 676 [1955]): A word or a combination of words which is merely descriptive of an article of trade.) The circumstance that the manufacturer of BEER PALE PILSEN.. but whether in themselves. not because it lacks distinctiveness. They belong to the public domain (Ong Ai Gui vs. properly descriptive of the article. . Republic Act No. . and not arbitrary. It will. the right to the use of such language being common to all. business or services.) The law further enumerates the more common ways of committing unfair competition. Dr. ingredients or characteristics. (52 Am. 673. for those of another who has already established goodwill for his similar goods. Others may use the same or similar descriptive word in connection with their own wares.these food products. does not necessarily constitute unfair competition. thus: . capacity and is also advertised in print. pp. As to whether words employed fall within this prohibition. has printed its name all over the bottle of its beer product: on the label. In Masso Hermanos. and no person can appropriate to himself exclusively any word or expression.

or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. Ltd. page 55. . Exhibit "C" is not a registration of a beer bottle design required under Rep. it is a standard type of bottle called steinie. and to witness Jose Antonio Garcia. Nothing less than conduct tending to pass off one man's goods or business as that of another will constitute unfair competition. Thirdly. vs. is not unlawful.The universal test question is whether the public is likely to be deceived. . Rollo.) The trial court found no infringement of SMC's bottle — The court agrees with defendant that there is no infringement of plaintiff's bottle. 120 Phil. Insular Petroleum Refining Co. or the devices or words thereon. SMC did not invent but merely borrowed the steinie bottle from abroad and it claims neither patent nor trademark protection for that bottle shape and design. Actual or probable deception and confusion on the part of the customers by reason of defendant's practices must always appear. or whether ABI is passing off its BEER PALE PILSEN as SMC's SAN MIGUEL PALE PILSEN. (See Exhibits 57-D. who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer. of the Philippines. (b) Any person who by any artifice. Act 623. In particular. similar but not identical to the SAN MIGUEL PALE PILSEN bottle. business or services of another. and without in any way limiting the scope of unfair competition.) . Act 165 but the registration of the name and other marks of ownership stamped on containers as required by Rep.) The Cerveza Especial and the Efes Pale Pilsen use the "steinie" bottle. it is not a San Miguel Corporation design but a design originally developed in the United States by the Glass Container Manufacturer's Institute and therefore lacks exclusivity. or (c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods.. 29. As pointed out by ABI's counsel. the question to be determined is whether ABI is using a name or mark for its beer that has previously come to designate SMC's beer.Sec. Secondly. (Shell Co. 57-E. 186. In this case. the neck of defendant's bottle is much larger and has a distinct bulge in its uppermost part. (p. or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose. the shape was never registered as a trademark. because according to plaintiff's witness Deogracias Villadolid. 434.. firstly. either as to the goods themselves or in the wrapping of the packages in which they are contained.) The use of ABI of the steinie bottle. . . which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer. et al. (See rollo. Ltd. or who employs any other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public. . 439. the following shall be deemed guilty of unfair competition: (a) Any person. . or in any other feature of their appearance.. or device.

shape and color may not be the exclusive property of any one beer manufacturer is well taken. 194-195. dated 4 December 1979. In Dy Buncio v. no one may have a monopoly of any color. With regard to the white label of both beer bottles. What is all important is the name of the product written on the label of the bottle for that is how one beer may be distinguished form the others.33 [4th Ed. 190. the goods in question. The amber color is a functional feature of the beer bottle. Needless to say. all bottled beer produced in the Philippines is contained and sold in amber-colored bottles because amber is the most effective color in preventing transmission of light and provides the maximum protection to beer. and the first user cannot claim secondary meaning protection. SMC's being the first to use the steinie bottle does not give SMC a vested right to use it to the exclusion of everyone else. both with labels containing designs drawn in green ink and Chinese characters written in red ink. 190.) ABI does not use SMC's steinie bottle. it is necessary to suppose a public accustomed to buy. 42 Phil. ABI explained that it used the color white for its label because white presents the strongest contrast to the amber color of ABI's bottle. the other. the shape of the bottle and of the label is unimportant.) . Tan Tiao Bok. 19. both sold in 5-ounce packages made of ordinary wrapping paper of conventional color. . nor of white for labels. and the easiest to "bake" in the furnace (p. there was no unfair competition. whether in liquid or tablet form. of the Department of Trade. Neither did ABI copy it. . . nor of the rectangular shape which is the usual configuration of labels. The Court held: . this court found that the resemblances between the designs were not sufficient to mislead the ordinary intelligent buyer. and not the exclusive invention of any one. Taylor B. even "at large expenditure of money. one label showing a double-decked jar in the center. The test of fraudulent simulation is to be found in the likelihood of the deception of persons in some . size and character commonly and immediately used in marketing such articles (Dy Buncio vs." (Callman Unfair Competition. As was ruled in California Crushed Fruit Corporation vs.The petitioner's contention that bottle size. it is available to all who might need to use it within the industry. it is also the most economical to use on labels. protection against imitation should be properly confined to nonfunctional features. a merchant cannot be enjoined from using a type or color of bottle where the same has the useful purpose of protecting the contents from the deleterious effects of light rays. Nor can the first user predicate his claim to protection on the argument that his business was established in reliance on any such unpatented nonfunctional feature. p.. capacity is not due to a desire to imitate SMC's bottle because that bottle capacity is the standard prescribed under Metrication Circular No. Trademarks and Monopolies. 28. Being of functional or common use.]. the resemblance will not support an action for unfair competition. Sec. ABI makes its own steinie bottle which has a fat bulging neck to differentiate it from SMC's bottle. where two competing tea products were both labelled as Formosan tea. 1988). Not only beer. are sold in amber-colored bottles. TSN of September 20. 38 F2d 885. . and Candy Co. No one can have a monopoly of the color amber for bottles.) (Petition for Review. but most medicines. Moreover. 42 Phil. a flower pot. Tan Tiao Bok. and therefore to some extent familiar with. Metric System Board. 778. Nobody can acquire any exclusive right to market articles supplying simple human needs in containers or wrappers of the general form. 196-197. Even if purely functional elements are slavishly copied. That the ABI bottle has a 320 ml. As pointed out by ABI. 16. In order that there may be deception of the buying public in the sense necessary to constitute unfair competition. hence. .

shape or color. beer is also ordered from the tindera by brand. but unfair competition arising form the allegedly "confusing similarity" in the general appearance or trade dress of ABI's BEER PALE PILSEN beside SMC's SAN MIGUEL PALE PILSEN (p. must be such as appears likely to mislead the ordinarily intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase. beer is ordered by brand. but because they find the competing product to their taste. and who must be indifferent as between that and the other. (Op. This is unlikely to happen for consumers or buyers of beer generally order their beer by brand.A. No.measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. when as in this case. . mayonnaise. It was not uncommon then for products such as patis (fish sauce) and toyo (soy sauce) to be sold in recycled SAN MIGUEL PALE PILSEN bottles. of the person who knows nothing about the design which has been counterfeited. Most containers are standardized because they are usually made by the same manufacturer. those who have been drinking no other beer but SAN MIGUEL PALE PILSEN these many years certainly know their beer too well to be deceived by a newcomer in the market. SMC did not invent it nor patent it. In sari-sari stores.) Considering further that SAN MIGUEL PALE PILSEN has virtually monopolized the domestic beer market for the past hundred years. The main thrust of SMC's complaint if not infringement of its trademark. 623 (as amended by RA 5700. it will not be because they are confused or deceived. in supermarkets and tiendas. An Act to Regulate the Use of Duly Stamped or Marked Bottles. If his empties are SAN MIGUEL PALE PILSEN. Milk. in order to be objectionable. The same can be said of the standard ketchup or vinegar bottle with its familiar elongated neck. pickles and peanut butter are sold in standard glass jars. The simulation. 209. Kegs. like SMC's SAN MIGUEL PALE PILSEN in amber steinie bottles. Barrels and Other Similar Containers) simply prohibits manufacturers of other foodstuffs from the unauthorized use of SMC's bottles by refilling these with their products. Many other grocery items such as coffee. Registration of SMC's beer bottles did not give SMC a patent on the steinie or on bottles of similar size. pubs and beer gardens — beer is ordered from the waiters by brand. cit. The manufacturers of these foodstuffs have equal right to use these standards tins. Casks. he will get SAN MIGUEL PALE PILSEN as replacement. The record does not bear out SMC's apprehension that BEER PALE PILSEN is being passed off as SAN MIGUEL PALE PILSEN. The steinie bottle is a standard bottle for beer and is universally used. Rollo) SMC claims that the "trade dress" of BEER PALE PILSEN is "confusingly similar" to its SAN MIGUEL PALE PILSEN because both are bottled in 320 ml. As pointed out by ABI's counsel. the names of the competing products are clearly different and their respective sources are prominently printed on the label and on other parts of the bottle. or possibility of the deception. Boxes. Only their respective labels distinguish them from each other. The same is true in restaurants. If they gravitate to ABI's cheaper beer. page 50. The test is not found in the deception. whether in powdered or liquid form. neither may SMC claim unfair competition arising from the fact that ABI's BEER PALE PILSEN is sold. amber-colored bottles with white rectangular labels. The fact that SMC's bottle is registered under R. mere similarity in the shape and size of the container and label. Just as no milk producer may sue the others for unfair competition because they sell their milk in the same size and shape of milk can which he uses. bottles and jars for their products. steinie type. and the customer surrenders his empty replacement bottles or pays a deposit to guarantee the return of the empties. is sold in uniform tin cans. does not constitute unfair competition. However.

R. a common household item which is bought off the store shelves by housewives and house help who. the same is hereby granted. Not to be refilled. we held that there was infringement of Del Monte's trademark and unfair competition by Sunshine. While its BEER PALE PILSEN admittedly competes with the latter in the open market. Costs against the private respondent." ABI makes its own bottle with a bulging neck to differentiate it from SMC's bottle. The Court itself cautioned that in resolving cases of infringement and unfair competition. to wit: the age. Our ruling in Del Monte would not apply to beer which is not usually picked from a store shelf but ordered by brand by the beer drinker himself from the storekeeper or waiter in a pub or restaurant. If the buyer is deceived. finding the petition for review meritorious. whether the article is bought for immediate consumption and also the conditions under which it is usually purchased" (181 SCRA 410. Hence.") but also used labels which were "a colorable imitation" of Del Monte's label. Since the competitor." 181 SCRA 410. SO ORDERED. if they are illiterate and cannot identify the product by name or brand. WHEREFORE. SMC's brand or trademark: "SAN MIGUEL PALE PILSEN" is not infringed by ABI's mark: "BEER NA BEER" or "BEER PALE PILSEN. Moreover. . Industries. Petitioner ABI has neither infringed SMC's trademark nor committed unfair competition with the latter's SAN MIGUEL PALE PILSEN product. not usually to any part of it. the nature and cost of the article. not only used recycled Del Monte bottles for its catsup (despite the warning embossed on the bottles: "Del Monte Corporation. The decision and resolution of the Court of Appeals in CA-G.Our decision in this case will not diminish our ruling in "Del Monte Corporation vs. Sunshine Sauce Mfg. and prints ABI's name in three (3) places on said bottle (front. . would very likely identify it by mere recollection of its appearance. back and bottle cap) to prove that it has no intention to pass of its "BEER" as "SAN MIGUEL. 3 that: . The Del Monte case involved catsup. . we must deny SMC's prayer to suppress it. CV No. 418419)." There is no confusing similarity between the competing beers for the name of one is "SAN MIGUEL" while the competitor is plain "BEER" and the points of dissimilarity between the two outnumber their points of similarity. it is attributable to the marks as a totality. That ruling may not apply to all kinds of products. to determine whether a trademark has been infringed. 28104 are hereby set aside and that of the trial court is REINSTATED and AFFIRMED. Court of Appeals and Sunshine Sauce Manufacturing Industries. the courts should "take into consideration several factors which would affect its conclusion. we must consider the mark as a whole and not as dissected. 419. that competition is neither unfair nor fraudulent. training and education of the usual purchaser.

1990. vs.R. YNARES-SANTIAGO.. S.application. a verified Notice of Opposition was filed by Nestle Philippines. No. as the dominant word present in the three (3) trademarks is "MASTER". a Swiss company registered under Swiss laws and domiciled in Switzerland. CFC further argued that its trademark. petitioners. or deceive purchasers and would falsely suggest to the purchasing public a connection in the business of Nestle. the other words that are used respectively with said word in the three trademarks are very different from each other – in meaning. spelling.. S." G. FLAVOR MASTER. "except for the word MASTER (which cannot be exclusively appropriated by any person for being a descriptive or generic name). In answer to the two oppositions. 1988 issue of the BPTTT’s Official Gazette.2 which denied private respondent’s application for registration of the trade-mark. 2001 SOCIETE DES PRODUITS NESTLE. alleging that. private respondent CFC Corporation filed with the BPTTT an application for the registration of the trademark "FLAVOR MASTER" for instant coffee. under Serial No.. by considering their pictorial representations.5 CFC elevated the matter . On January 18. respondents. INC. "is clearly very different from any of Nestle’s alleged trademarks MASTER ROAST and MASTER BLEND. against CFC’s application for registration of the trademark FLAVOR MASTER. CFC argued that its trademark. The Likewise. SP No. is not confusingly similar with the former’s trademarks. if any. or that the goods of CFC might be mistaken as having originated from the latter. 24101. J.3 claiming that the trademark of private respondent’s product is "confusingly similar to its trademarks for coffee and coffee extracts. the BPTTT denied CFC’s application for registration. 1984. color schemes and the letters of their respective labels. COURT OF APPEALS and CFC CORPORATION. to wit: MASTER ROAST and MASTER BLEND. 90-47 dated December 27. 52994.R. a Philippine corporation and a licensee of Societe Des Produits Nestle S. pronunciation. MASTER ROAST and MASTER BLEND. as a matter of due course..A. Trademarks and Technology Transfer (BPTTT). was published in the July 18.4Nestle claimed that the use.. and NESTLE PHILIPPINES.A.A. by CFC of the trademark FLAVOR MASTER and its registration would likely cause confusion in the trade. filed an unverified Notice of Opposition. FLAVOR MASTER. Inc. FLAVOR MASTER. Petitioner Societe Des Produits Nestle.1 reversing and setting aside the decision of the Bureau of Patents. 112012 April 4. especially when the marks are viewed in their entirety." In its Decision No.: This is a petition for review assailing the Decision of the Court of Appeals in CA-G. and sound".

R." With regard to appellees’ "MASTER BLEND" label (Exhibit "6") of which only a xeroxed copy is submitted. appellant CFC’s and appellees’ labels are entirely different in size. The answer therefore to the query is a clearcut NO. v. slim and slanted letters.to the Court of Appeals. The Court of Appeals ruled: Were We to take even a lackadaisical glance at the overall appearance of the contending marks. background. reversed Decision No. Below the "MASTER" appears the word "ROAST" impressed in smaller. is almost double the width of appellant CFC’s. The distinctions are so well-defined so as to foreclose any probability or likelihood of confusion or deception on the part of the normally intelligent buyer when he or she encounters both coffee products at the grocery shelf. with the letter "M" further capitalized. the Court of Appeals. Just above the word "MASTER" is a red window like portrait of what appears to be a coffee shrub clad in gold. The letters are shaded with red and bounded with thin gold-colored inner and outer sidings. At the top is printed in brown color the word "NESCAFE" against a white backdrop. the general appearances of the labels bearing the respective trademarks are so distinct from each other that appellees cannot assert that the dominant features. 24101. "MASTER" in appellees’ label is printed in taller capital letters. where it was docketed as CA-G. SP No. shaded in mocha with thin white inner and outer sidings per letter and identically lettered except for the slightly protruding bottom curve of the letter "S" adjoining the bottom tip of the letter "A" in the word "MASTER". The Court of Appeals defined the issue thus: "Does appellant CFC’s trade dress bear a striking resemblance with appellee’s trademarks as to create in the purchasing public’s mind the mistaken impression that both coffee products come from one and the same source?" As stated above. Occupying the center is a squareshaped configuration shaded with dark brown and picturing a heap of coffee beans. white print. however. colors. the physical discrepancies between appellant CFC’s and appellee’s respective logos are so ostensible that the casual purchaser cannot likely mistake one for the other. the letters are bolder and taller as compared to appellant CFC’s and the word "MASTER" appears on top of the word "BLEND" and below it are the words "100% pure instant coffee" printed in small letters. of its trademarks were used or appropriated in appellant CFC’s own. while the contending marks depict the same product. RESPONDENT COURT GRAVELY ERRED IN REVERSING AND SETTING ASIDE THE DECISION (NO. Underneath "FLAVOR MASTER" appears "Premium Instant Coffee" printed in white. From the foregoing description. "FLAVOR" appearing on top of "MASTER". where the word "MASTER" is inscribed in the middle. To borrow the words of the Supreme Court in American Cyanamid Co. in short. 1993. Appellees’ "MASTER ROAST" label (Exhibit "7"). if any. are printed across the top of a simmering red coffee cup. Appellant CFC’s label (Exhibit "4") is predominantly a blend of dark and lighter shade of orange where the words "FLAVOR MASTER".6 Petitioners are now before this Court on the following assignment of errors: 1. in the assailed decision dated September 23. And further below are the inscriptions in white: "A selection of prime Arabica and Robusta coffee. 90-47) OF THE DIRECTOR OF THE BUREAU OF . Director of Patents (76 SCRA 568). contents and pictorial arrangement. 90-47 of the BPTTT and ordered the Director of Patents to approve CFC’s application. the glaring dissimilarities in their presentation far outweigh and dispel any aspect of similitude.

trade-names and service-marks on the principal register. 2. ET AL. RESPONDENT COURT ERRED IN INVOKING THE TOTALITY RULE APPLIED IN THE CASES OF BRISTOL MYERS V. unless it: xxx xxx xxx (d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned. V.PATENTS. business or services of the applicant. the aim is the same --. RESPONDENT COURT ERRED IN HOLDING THAT THE TOTALITY RULE. as amended. it is no less true that we purchase goods by them. . Co. DIRECTOR OF PATENTS. xxx xxx (Emphasis supplied) xxx . symbol or device adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured and sold by others. If another poaches upon the commercial magnetism of the symbol he has created. name. or what he has been led to believe he wants. If it is true that we live by symbols. the trade-mark owner has something of value. v. 1990. MEAD JOHNSON & CO. (7 SCRA 768) AND AMERICAN CYANAMID CO. Once this is attained. as to be likely. when applied to or used in connection with the goods. the owner can obtain legal redress. business or services from the goods. NVJ VAN DORF LTD. As Mr. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants. Whatever the means employed. business or services of others shall have the right to register the same on the principal register. trade-name or service-mark used to distinguish his goods. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. TRADEMARKS AND TECHNOLOGY TRANSFER (BPTTT) DATED DECEMBER 27. 4.There is hereby established a register of trade-marks."7 A manufacturer’s trademark is entitled to protection. A trademark has been generally defined as "any word. the desirability of the commodity upon which it appears. provides thus: Registration of trade-marks. in the minds of potential customers. V. Kresge Co. which was in force at the time. (17 SCRA 128). Justice Frankfurter observed in the case of Mishawaka Mfg. The owner of a trade-mark.:8 The protection of trade-marks is the law’s recognition of the psychological function of symbols.. The petition is impressed with merit. to cause confusion or mistake or to deceive purchasers. 3. RESPONDENT COURT ERRED IN FINDING THAT APPELLANT CFC’S TRADE DRESS IS BEYOND THE SCOPE OF THE PROSCRIPTION LAID DOWN BY JURISPRUDENCE AND THE TRADEMARK LAW.to convey through the mark. trade-names and service marks which shall be known as the principal register. Section 4 (d) of Republic Act No. APPLIES TO THE CASE. 166 or the Trademark Law. RATHER THAN THE TEST OF DOMINANCY. DIRECTOR OF PATENTS (76 SCRA 568).

it is attributable to the marks as a totality.supra). Each case must be decided on its own merits.. Ltd. is the touchstone. in general. As observed in several cases. Hence. Director of Patents. supra). not usually to any part of it (Del Monte Corp. 181 SCRA 410. as to cause him to purchase the one supposing it to be the other.11 In the case at bar. et al. no set rules can be deduced. the issue is whether the trademark FLAVOR MASTER is a colorable imitation of the trademarks MASTER ROAST and MASTER BLEND.13 In Esso Standard.. The mark must be considered as a whole and not as dissected. or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives.The law prescribes a more stringent standard in that there should not only be confusing similarity but that it should not likely cause confusion or mistake or deceive purchasers. particularly in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another. NVJ Van Dorp. the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. held that: "The question is not whether the two articles are distinguishable by their labels when set side by side but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard.10 The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitute infringement. the test of similarity is to consider the two marks in their entirety. v. On the other side of the spectrum. buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods.14 we ruled that the likelihood of confusion is a relative .the Dominancy Test and the Holistic Test. is such as to likely result in his confounding it with the original. jurisprudence has developed two kinds of tests . NVJ Van Dorp.." From this perspective. It must be emphasized that in infringement or trademark cases in the Philippines. In other words. Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons.12 The Court of Appeals applied some judicial precedents which are not on all fours with this case. et al. v. citing Mead Johnson & Co.9 In determining if colorable imitation exists. as what appellees would want it to be when they essentially argue that much of the confusion springs from appellant CFC’s use of the word "MASTER" which appellees claim to be the dominant feature of their own trademarks that captivates the prospective consumers. CA. Court of Appeals. the general impression of the ordinary purchaser. 17 SCRA 128. the Court of Appeals held that: The determination of whether two trademarks are indeed confusingly similar must be taken from the viewpoint of the ordinary purchasers who are. Ltd. and are therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. The Supreme Court in Del Monte Corporation v. as they appear in the respective labels. undiscerningly rash in buying the more common and less expensive household products like coffee. Inc. v. Be it further emphasized that 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 (Mead Johnson & Co. the question in this case is whether there is a likelihood that the trademark FLAVOR MASTER may cause confusion or mistake or may deceive purchasers that said product is the same or is manufactured by the same company. v.. If the buyer is deceived. CA. 7 SCRA 768). in relation to the goods to which they are attached (Bristol Myers Company v.

both products are for medicinal veterinary use and the buyer will be more wary of the nature of the product he is . Both corporations market the catsup product which is an inexpensive and common household item. Also. In trademark cases. Since Del Monte alleged that Sunshine’s logo was confusingly similar to or was a colorable imitation of the former’s logo. In the Bristol Myers case. Court of Appeals16 is. In the same manner. while the other may be purchased overthe-counter. the differences between ALACTA and ALASKA are glaring and striking to the eye."20 As this Court has often declared. ALACTA refers to "Pharmaceutical Preparations which Supply Nutritional Needs. and sometimes peculiar. this Court held that although both BIOFERIN and BUFFERIN are primarily used for the relief of pains such as headaches and colds. however. the two marks in their entirety as they appear in the respective labels must be considered in relation to the goods to which they are attached. In the above cases cited by the Court of Appeals to justify the application of the totality or holistic test to this instant case. the issue was about the alleged similarity of Del Monte’s logo with that of Sunshine Sauce Manufacturing Industries. The wisdom of the likelihood of confusion test lies in its recognition that each trademark infringement case presents its own unique set of facts. circumstances of each case.18 and American Cyanamid Co. NVJ Van Dorf Ltd. the words or lettering on the labels or marks and the shapes and colors of the labels or marks. misplaced. In determining whether two trademarks are confusingly similar. therefore. one is dispensable only upon doctor’s prescription. On the other hand. Director of Patents. In the American Cyanamid case. the Court of Appeals erred in applying the totality rule as defined in the cases of Bristol Myers v.19 The totality rule states that "the test is not simply to take their words and compare the spelling and pronunciation of said words.. The same criteria. Also. precedent must be studied in light of the facts of the particular case. Director of Patents. even more than in any other litigation. cannot be applied in the instant petition as the facts and circumstances herein are peculiarly different from those in the Del Monte case." falling under Class 6 of the official classification of Medicines and Pharmaceutical Preparations to be used as prescribed by physicians. jurisprudential precedents should be applied only to a case if they are specifically in point. In the Mead Johnson case. ALASKA refers to "Foods and Ingredients of Foods" falling under Class 47. In addition. as the former is derived from a combination of the syllables "SUL" which is derived from sulfa and "MET" from methyl. the discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both labels. v. there was a need to go into the details of the two logos as well as the shapes of the labels or marks. the brands printed on the labels. 15 The Court of Appeals’ application of the case of Del Monte Corporation v.17 Mead Johnson & Co. the word SULMET is distinguishable from the word SULMETINE. both of which are chemical compounds present in the article manufactured by the contending parties. each case must be studied according to the peculiar circumstances of each case. to be determined only according to the particular. v.concept. both labels have strikingly different backgrounds and surroundings. the complexities attendant to an accurate assessment of likelihood of confusion require that the entire panoply of elements constituting the relevant factual landscape be comprehensively examined. In Del Monte. the factual circumstances are substantially different. That is the reason why in trademark cases. Indeed. This Court held that the addition of the syllable "INE" in respondent’s label is sufficient to distinguish respondent’s product or trademark from that of petitioner. and their names are practically the same in spelling and pronunciation. and does not require medical prescription.

this Court cannot agree that totality test is the . The average shopper is usually in a hurry and does not inspect every product on the shelf as if he were browsing in a library. similarities or dissimilarities. While this Court agrees with the Court of Appeals’ detailed enumeration of differences between the respective trademarks of the two coffee products. In any case. and would therefore be "less inclined to closely examine specific details of similarities and dissimilarities" between the two competing products. the similarity ends there. then he would not have the time nor the inclination to make a keen and perceptive examination of the physical discrepancies in the trademarks of the products in order to exercise his choice. This Court cannot agree with the above reasoning. since what is of paramount consideration is the ordinary purchaser who is. As this Court has pointed above. undiscerningly rash in buying the more common and less expensive household products like coffee. considering that the product is an inexpensive and common household item. "[t]he determination of whether two trademarks are indeed confusingly similar must be taken from the viewpoint of the ordinary purchasers who are. Nestle points out that the dominancy test should have been applied to determine whether there is a confusing similarity between CFC’s FLAVOR MASTER and Nestle’s MASTER ROAST and MASTER BLEND. As the Court of Appeals itself has stated. other than the fact that both Nestle’s and CFC’s products are inexpensive and common household items. If the ordinary purchaser is "undiscerningly rash" in buying such common and inexpensive household products as instant coffee. and is therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products.buying. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features. in general. The said products are not the usual "common and inexpensive" household items which an "undiscerningly rash" buyer would unthinkingly buy. if the ordinary purchaser is "undiscerningly rash". What is being questioned here is the use by CFC of the trademark MASTER. there could be more telling differences than similarities as to make a jurisprudential precedent inapplicable.22 The Court of Appeals held that the test to be applied should be the totality or holistic test reasoning. As such. and are therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. judicial fora should not readily apply a certain test or standard just because of seeming similarities. in general. It cannot also be said that the products in the above cases can be bought off the shelf except.In the case at bar. undiscerningly rash in buying the more common and less expensive household products like coffee. In view of the difficulty of applying jurisprudential precedents to trademark cases due to the peculiarity of each case. both products are not identical as SULMET’s label indicates that it is used in a drinking water solution while that of SULMETINE indicates that they are tablets. then it would be less likely for the ordinary purchaser to notice that CFC’s trademark FLAVOR MASTER carries the colors orange and mocha while that of Nestle’s uses red and brown. for ALASKA. It must be emphasized that the products bearing the trademarks in question are "inexpensive and common" household items bought off the shelf by "undiscerningly rash" purchasers."21 The basis for the Court of Appeals’ application of the totality or holistic test is the "ordinary purchaser" buying the product under "normally prevalent conditions in trade" and the attention such products normally elicit from said ordinary purchaser. We agree. An ordinary purchaser or buyer does not usually make such scrutiny nor does he usually have the time to do so. perhaps.

this Court agrees with the BPTTT when it applied the test of dominancy and held that: From the evidence at hand.. Therefore. qualities or characteristics of the goods.. Rather. thought and perception to reach a conclusion as to the nature of the goods. This can be gleaned from the fact that Robert Jaworski and Atty. The word MASTER is printed across the middle portion of the label in bold letters almost twice the size of the printed word ROAST. they nevertheless involve "an element of incongruity. respectively." Such terms. For this reason. it "forthwith conveys the characteristics. may be legally protected. the word "MASTER" is neither a generic nor a descriptive term. functions.23 The totality or holistic test only relies on visual comparison between two trademarks whereas the dominancy test relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two trademarks. as understood in its normal and natural sense. While suggestive marks are capable of shedding "some light" upon certain characteristics of the goods or services in dispute. 24 In addition. because of these advertising schemes the mind of the buying public had come to learn to associate the word MASTER with the opposer’s goods. it is sufficiently established that the word MASTER is the dominant feature of opposer’s mark. this Court believes that the dominancy test is more suitable to this case in light of its peculiar factual milieu. x x x." or comprise the "genus of which the particular product is a species. in the phraseology of one court. Thus. qualities or ingredients of a product to one who has never seen it and does not know what it is. when one looks at the label bearing the trademark FLAVOR MASTER (Exh. aural.one applicable in this case." and are not legally protectable. the personalities engaged to promote the product. Further." or " imaginative effort on the part of the observer. Rather." or "refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product. therefore. 4) one’s attention is easily attracted to the word MASTER." are eligible for protection in the absence of secondary meaning." or "imply reference to every member of a genus and the exclusion of individuating characters. On the other hand. connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. In due time. are given the titles Master of the Game and Master of the Talk Show. Generic terms25 are those which constitute "the common descriptive name of an article or substance." or are "commonly used as the name or description of a kind of goods." . Ric Puno Jr. It is the observation of this Office that much of the dominance which the word MASTER has acquired through Opposer’s advertising schemes is carried over when the same is incorporated into respondent-applicant’s trademark FLAVOR MASTER. the possibility of confusion as to the goods which bear the competing marks or as to the origins thereof is not farfetched. a term is descriptive 26 and therefore invalid as a trademark if. the term "MASTER" is a suggestive term brought about by the advertising scheme of Nestle. require "imagination. the totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition that confusing similarity is to be determined on the basis of visual." "figurativeness. the word MASTER has always been given emphasis in the TV and radio commercials and other advertisements made in promoting the product. "which subtly connote something about the product." or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination. said term can not be invalidated as a trademark and. As such. Suggestive terms27 are those which. Moreover. rather than to the dissimilarities that exist. x x x." or "if it forthwith conveys an immediate idea of the ingredients.

we need no more. it may not be amiss to quote the case of American Chicle Co. v. . Generic terms are those which constitute “the common descriptive name of an article or substance. Wellinformed.” or are “commonly used as the name or description of a kind of goods. Rich and deeply satisfying. Truly distinctive and rich in flavor. Nestle has. functions. promoted its products as "coffee perfection worthy of masters like Robert Jaworski and Ric Puno Jr. Nestle advertised its products thus: Robert Jaworski.” and are not legally protectable. MASTER ROAST. Robusta for strength and body. In this case. In closing.” or comprise the “genus of which the particular product is a species.29 The term "MASTER". as soon as we see that a second comer in a market has.R. Master Roast. Living Legend. is master. for no reason that he can assign. the world’s coffee masters. over time.” or “imply reference to every member of a genus and the exclusion of individuating characters. Equally unmatched. A masterpiece only NESCAFE. A true hard court hero. has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle. the decision of the Court of Appeals in CA-G. 3200 and 3202 is REINSTATED. it is generally true that.” or if it clearly denotes what goods or services are provided in . Confident. a term is descriptive and therefore invalid as a trademark if. Made from a unique combination of the best coffee beans . SO ORDERED. On the other hand. Topps Chewing Gum. In the art of coffee-making. SP No. In one word. unmatched. A unique combination of the best coffee beans Arabica for superior taste and aroma. MASTER ROAST. Indeed. therefore. [W]e feel bound to compel him to exercise his ingenuity in quarters further afield. Sure in every shot he makes. Fast on his feet. Robusta for strength and body.This is evident from the advertising scheme adopted by Nestle in promoting its coffee products. Trademarks and Technology Transfer in Inter Partes Cases Nos.. Coffee perfection worthy of masters like Robert Jaworski. plagiarized the "make-up" of an earlier comer. Coffee perfection worthy of masters like Ric Puno Jr.” or “if it forthwith conveys an immediate idea of the ingredients." In associating its coffee products with the term "MASTER" and thereby impressing them with the attributes of said term. the use by CFC of the term "MASTER" in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers. the world’s coffee masters. Inc. 24101 is REVERSED and SET ASIDE and the decision of the Bureau of Patents. Witty. . WHEREFORE. qualities or characteristics of the goods. A master strategist.30 to wit: Why it should have chosen a mark that had long been employed by [plaintiff] and had become known to the trade instead of adopting some other means of identifying its goods is hard to see unless there was a deliberate purpose to obtain some advantage from the trade that [plaintiff] had built up. as understood in its normal and natural sense. qualities or ingredients of a product to one who has never seen it and does not know what it is. Ric Puno Jr. . in view of the foregoing. it “forthwith conveys the characteristics.Arabica for superior taste and aroma. nothing equals Master Roast.28 In the art of conversation. can create. the coffee masterpiece from Nescafe. As such.” or “refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product.

On 18 July 1985. a global chain of fast-food restaurants. Rene B. a domestic corporation.5 million in advertisement for Big Mac hamburger sandwiches alone. not liable for trademark infringement and unfair competition and ordering petitioners to pay respondents P1. the chairman of the Board of Directors of respondent corporation. and of its Resolution dated 11 July 2000 denying reconsideration. William B. Mcdonalds v lc big mak inc DECISION CARPIO. McDonalds operates.C. [10] Petitioner McGeorge Food Industries (petitioner McGeorge).900. the PBPTT allowed registration of the Big Mac mark in the Principal Register based on its Home Registration in the United States. [11] The Case This is a petition for review[1] of the Decision dated 26 November 1999 of the Court of Appeals [2] finding respondent L. of its exclusive right to the Big Mac mark and requested him to desist from using the Big Mac mark or any similar mark. McDonalds also informed respondent Francis Dy (respondent Dy). Araceli Aycardo.C. [12] Respondent corporations menu includes hamburger sandwiches and other food items. Big Mak Burger.C. Like its other marks. Edna A. [14] On 21 October 1988. petitioners on 6 June 1990 sued respondents in the Regional Trial Court of Makati. [7] Based on this Home Registration. Pending approval of its application. The Court of Appeals Decision reversed the 5 September 1994 Decision[3] of the Regional Trial Court of Makati. Dy. McDonalds introduced its Big Mac hamburger sandwiches in the Philippine market in September 1981. (respondent corporation) is a domestic corporation which operates fast-food outlets and snack vans in Metro Manila and nearby provinces. Jesus Aycardo. From 1982 to 1990. McDonalds applied for the registration of the same mark in the Principal Register of the then Philippine Bureau of Patents. Inc. now the Intellectual Property Office (IPO). . Trademarks and Technology (PBPTT). McDonalds [4] owns a family of marks[5] including the Big Mac mark for its double-decker hamburger Respondent L. J. Branch 137. McDonalds opposed respondent corporations application on the ground that Big Mak was a colorable imitation of its registered Big Mac mark for the same food products. respondent corporation applied with the PBPTT for the registration of the Big Mak mark for its hamburger sandwiches. Dy. Big Mak Burger. Inc.[6] McDonalds registered this trademark with the United States Trademark Registry on 16 October 1979. stockholders and directors of respondent corporation. McDonalds spent P10.[13] Respondents Francis B. finding respondent L. The Facts Petitioner McDonalds Corporation (McDonalds) is a corporation organized under the laws of Delaware.: sandwich. Dy. by itself or through its franchisees. liable for trademark infringement and unfair competition. Dy. Inc. and in its outdoor and indoor signages.000 in damages. and Grace Huerto (private respondents) are the incorporators.such a way that the consumer does not have to exercise powers of perception or imagination. McDonalds displays the Big Mac mark in items[8] and paraphernalia[9] in its restaurants. Big Mak Burger. is McDonalds Philippine franchisee. Having received no reply from respondent Dy. United States.

or a subsidiary or allied outlet thereof. petitioners denied respondents claim that McDonalds is not the exclusive owner of the Big Mac mark.[18] The Trial Courts Ruling On 5 September 1994. it is entitled [to] protection against infringement. xxxx There exist some distinctions between the names B[ig] M[ac] and B[ig] M[ak] as appearing in the respective signages. Respondents point out that the Isaiyas Group of Corporations (Isaiyas Group) registered the same mark for hamburger sandwiches with the PBPTT on 31 March 1979. Surely. as the Big Mak mark they sought to register does not constitute a colorable imitation of the Big Mac mark. the Isaiyas Group did so only in the Supplemental Register of the PBPTT and such registration does not provide any protection. wrappers and containers of the food products of the parties. respondents claimed that they are not liable for trademark infringement or for unfair competition. McDonalds disclosed that it had acquired Topacios rights to his registration in a Deed of Assignment dated 18 May 1981. for trademark infringement and unfair competition. Petitioners asserted that while the Isaiyas Group and Topacio did register the Big Mac mark ahead of McDonalds. and as such. the RTC issued a temporary restraining order (TRO) against respondents enjoining them from using the Big Mak mark in the operation of their business in the National Capital Region. Alternatively. in all likelihood. Respondents asserted that they did not fraudulently pass off their hamburger sandwiches as those of petitioners Big Mac hamburgers. so that a buyer may easily be confused or deceived into thinking that the B[ig] M[ak] hamburger sandwich he bought is a foodproduct of plaintiff McDonalds. The RTC held: Undeniably. One Rodolfo Topacio (Topacio) similarly registered the same mark on 24 June 1983. the mark B[ig] M[ac] is a registered trademark for plaintiff McDonalds. [15] On 16 August 1990. defendant corporation has its own secret ingredients to make its hamburger sandwiches as palatable and as tasty as the other . the RTC dismissed the complaint against private respondents and the counterclaim against petitioners for lack of merit and insufficiency of evidence. the RTC rendered judgment (RTC Decision) finding respondent corporation liable for trademark infringement and unfair competition. But the thing is that what is being sold by both contending parties is a food item a hamburger sandwich which is for immediate consumption. xxxxSignificantly. however. [16] In their Answer. Plaintiff McDonalds fast-food chain has attained wide popularity and acceptance by the consuming public so much so that its air-conditioned food outlets and restaurants will perhaps not be mistaken by many to be the same as defendant corporations mobile snack vans located along busy streets or highways. prior to McDonalds registration on 18 July 1985. In their Reply.[17] Respondents sought damages in their counterclaim.Branch 137 (RTC).But infringement goes beyond the physical features of the questioned name and the original name. In its Order of 11 July 1990. that McDonalds does not have an exclusive right to the Big Mac mark or to any other similar mark. There are still other factors to be considered. Respondents claimed. the contending parties are both in the business of fast-food chains and restaurants. he will dip into his pocket and order a B[ig] M[ak] hamburger sandwich. respondents admitted that they have been using the name Big Mak Burger for their fast-food business. the RTC issued a writ of preliminary injunction replacing the TRO.However. Once he sees a stall selling hamburger sandwich. An average person who is hungry and wants to eat a hamburger sandwich may not be discriminating enough to look for a McDonalds restaurant and buy a B[ig] M[ac] hamburger.

of goods of another manufacturer or dealer. and containers in connection with its food business. Big Mak Burger. a person is guilty of unfair competition who in selling his goods shall give them the general appearance.brands in the market. 2. Edna A. Dy.000. Big Mak Burger. Inc. as well as all counter-claims. and against defendant L. The choice of B[ig] M[ak] as tradename by defendant corporation is not merely for sentimental reasons but was clearly made to take advantage of the reputation. The writ of preliminary injunction issued in this case on [16 August 1990] is made permanent. and attorneys fees and expenses of litigation in the amount of P100. is ordered to pay plaintiffs actual damages in the amount of P400. Inc. Inc. Dy. are dismissed . the law extends substantially the same relief to the injured party for both cases. Araceli Aycardo and Grace Huerto. Dy. Dy. xxx Notwithstanding the distinction between an action for trademark infringement and an action for unfair competition.[19] The answer is in the affirmative.C. plaintiffs have established their valid cause of action against the defendants for trademark infringement and unfair competition and for damages.Thus.000. Hence. which would likely influence purchasers to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer. Jesus Aycardo. xxxx Did the same acts of defendants in using the name B[ig] M[ak] as a trademark or tradename in their signages.C. 166) Any conduct may be said to constitute unfair competition if the effect is to pass off on the public the goods of one man as the goods of another.00. either as to the goods themselves or in the wrapping of the packages in which they are contained. judgment is rendered in favor of plaintiffs McDonalds Corporation and McGeorge Food Industries. For. or the devices or words thereon. (See Sections 23 and 29 of Republic Act No.000. as stated in WHEREFORE. as follows: 1. Defendant L. or in causing the name B[ig] M[ak] to be printed on the wrappers and containers of their food products also constitute an act of unfair competition under Section 29 of the Trademark Law? Section 29.00. exemplary damages in the amount of P100. which is of more limited range. xxxx The dispositive portion of the RTC Decision provides: The xxx provision of the law concerning unfair competition is broader and more inclusive than the law concerning the infringement of trademark. but within its narrower range recognizes a more exclusive right derived by the adoption and registration of the trademark by the person whose goods or services are first associatedtherewith. 3.. Rene B. considering the keen competition among mushrooming hamburger stands and multinational fast-food chains and restaurants.00. the trademark B[ig] M[ac] has been infringed by defendant corporation when it used the name B[ig] M[ak] in its signages. Wiliam B. wrappers. popularity and the established goodwill of plaintiff McDonalds. or in any other feature of their appearance. The complaint against defendants Francis B. however.

C. pizza.000 as moral damages.000 as actual and compensatory damages and P300. the plaintiffs-appellees trademark is used to designate only one product. I[nc]. the Court of Appeals rendered judgment (Court of Appeals Decision) reversing the RTC Decision and ordering McDonalds to pay respondents P1.C. As pointed out by defendants-appellants. Big Mak Burger. a young chubby boy named Maky who wears a red T-shirt with the upper case m appearing therein and a blue lower garment. The Court of Appeals held: Plaintiffs-appellees in the instant case would like to impress on this Court that the use of defendants-appellants of its corporate name the whole L. a double decker sandwich sold in a Styrofoam box with the McDonalds logo. spelled out in upper case letters. Finally. however. but thatmore importantly. Specifically. plaintiffs-appellees argue that defendants-appellants use of their corporate name is a colorable imitation of their trademark Big Mac. The Ruling of the Court of Appeals On 26 November 1999. would readily reveal that no confusion could take place. xxxx To Our mind. Secondly. it is not sufficient that a similarity exists in both names.. together with the printed mark in red bl[o]ck capital letters.C. As . which appears on their food packages. On the other hand. xxxx xxx [I]t is readily apparent to the naked eye that there appears a vast difference in the appearance of the product and the manner that the tradename Big Mak is being used and presented to the public. Big Mak Burger. noodles. As the definition dictates. B[ig] M[ak] B[urger].for lack of merit as well as for insufficiency of evidence.600. defendants-appellants corporate or business name appearing in the food packages and signages are written in silhouette redorange letters with the b and m in upper case letters. Inc. Above the words Big Mak are the upper case letter L. Furthermore. Inc. the words being separated by a single space. They use the business name L.by defendants-appellants.C. or that the ordinary purchasers would be misled by it. the defendants-appellants food packages are made of plastic material. ham. fish burger and hamburger. what the defendants-appellants corporation is using is not a trademark for its food product but a business or corporate name. sold in a Styrofoam box packaging material with the McDonalds logo of umbrella M stamped thereon.[20] Respondents appealed to the Court of Appeals. Below the words Big Mak are the words Burger. A careful comparison of the way the trademark B[ig] M[ac] is being used by plaintiffs-appellees and corporate name L. Inc. and sandwiches such as hotdog. substantive and distinctive parts is such as would likely MISLEAD or CONFUSE persons in the ordinary course of purchasing the genuine article. signages and advertisements is an infringement of their trademark B[ig] M[ac] which they use to identify [their] double decker sandwich. or in their essential. the over-all presentation. this Court is fully convinced that no colorable imitation exists. in their restaurant business which serves diversified food items such as siopao. said corporate or business name appearing in such food packages and signages is always accompanied by the company mascot.

INC. and its mascot Ronald McDonald.earlier noted. Petitioners sought reconsideration of the Court of Appeals Decision but the appellate court denied their motion in its Resolution of 11 July 2000. a drive-thru to allow customers with cars to make orders without alighting from their vehicles. BIG MAK BURGER. whose names are Maxima and Kimsoy.C. distinctly decorated and painted with pastel colors xxx. Rep. it is up to the plaintiffs-appellees to prove bad faith on the part of defendants-appellants. With this explanation. Unfair competition is defined as the employment of deception or any other means contrary to good faith by which a person shall pass off the goods manufactured by him or in which he deals. A typical McDonalds restaurant boasts of a playground for kids. The mere suspected similarity in the sound of the defendants-appellants corporate name with the plaintiffs-appellees trademark is not sufficientevidence to conclude unfair competition. On the other hand. bl[o]ck capital letters printed thereon xxx at a price which is more expensive than the defendants-appellants comparable food products. a customer needs to look for a McDonalds and enter it first before he can find a hamburger sandwich which carry the mark Big Mac. or any acts calculated to Hence. Act No. We find no sufficient evidence adduced by plaintiffsappellees that defendants-appellants deliberately tried to pass off the goods manufactured by them for those of plaintiffs-appellees. Defendants-appellants explained that the name M[ak] in their corporate name was derived from both the first names of the mother and father of defendant Francis Dy. IS NOT A . To constitute unfair competition therefore it must necessarily follow that there was malice and that the entity concerned was in bad faith. defendants-appellants sell their goods through snack vans xxxx produce the same result (Sec. Anent the allegation that defendants-appellants are guilty of unfair competition. In order to buy a Big Mac. a customer needs to visit an air-conditioned McDonalds restaurant usually located in a nearby commercial center. a second floor to accommodate additional customers. Plaintiffsappellees product carrying the trademark B[ig] M[ac] is a double decker sandwich (depicted in the tray mat containing photographs of the various food products xxx sold in a Styrofoam box with the McDonalds logo and trademark in red. [21] Petitioners raise the following grounds for their petition: I. Thus. 29. 166. it is necessary to specify it by its trademark. or service. THE COURT OF APPEALS ERRED IN FINDING THAT RESPONDENTS CORPORATE NAME L.the umbrella M. for those of another who has already established good will for his similar good. there are glaring dissimilarities between plaintiffs-appellees trademark and defendants-appellants corporate name. In the case at bar. as amended). We likewise find the same untenable. In buying a B[ig] M[ac]. advertised and identified by its logo . business or services. or his business. It is a settled rule that the law always presumes good faith such that any person who seeks to be awarded damages due to acts of another has the burden of proving thatthe latter acted in bad faith or with ill motive. the interiors of the building are well-lighted. this petition for review.

the Court opts to accept the petition. SUCH COLORABLE IMITATION BEING AN ELEMENT OF TRADEMARK INFRINGEMENT. Inc. respondents Big Mak is undeniably and unquestionably similar to petitioners Big Mac trademark based on the dominancy test and the idem sonans test resulting inexorably in confusion on the part of the consuming public.COLORABLE IMITATION OF THE MCDONALDS TRADEMARK BIG MAC. however. On the merits. respondents contend that the Court of Appeals committed no reversible error in finding them not liable for trademark infringement and unfair competition and in ordering petitioners to pay damages.C. B. There is a question of fact when the doubt or difference arises on the truth or falsity of the alleged facts. 2.[26] We took a similar course of action in Asia Brewery. On Whether the Questions Raised in the Petition are Proper for a Petition for Review A party intending to appeal from a judgment of the Court of Appeals may file with this Court a petition for review under Section 1 of Rule 45 (Section 1)[24] raising only questions of law. As a trademark.[22] Petitioners pray that we set aside the Court of Appeals Decision and reinstate the RTC Decision. In their Comment to the petition. Ordinarily. A. Big Mak Burger. v. but also as a trademark for their hamburger products. respondents question the propriety of this petition as it allegedly raises only questions of fact. this being one of the recognized exceptions to Section 1. . whether the questions raised in this petition are proper for a petition for review under Rule 45. A question of law exists when the doubt or difference arises on what the law is on a certain state of facts. petitioners raise questions of fact and law in assailing the Court of Appeals findings on respondent corporations non-liability for trademark infringement and unfair competition. II. The Issues The issues are: 1. Court of Appeals[27] which also involved a suit for trademark infringement and unfair competition in which the trial court and the Court of Appeals arrived at conflicting findings. the Court can deny due course to such a petition. THE COURT OF APPEALS ERRED IN REFUSING TO CONSIDER THE INHERENT SIMILARITY BETWEEN THE MARK BIG MAK AND THE WORD MARK BIG MAC AS AN INDICATION OF RESPONDENTS INTENT TO DECEIVE OR DEFRAUD FOR PURPOSES OF ESTABLISHING UNFAIR COMPETITION. Inc. On the merits. Respondents use the words Big Mak as trademark for their products and not merely as their business or corporate name. [25] Here. In view. (a) whether respondents used the words Big Mak not only as part of the corporate name L. of the contradictory findings of fact of the RTC and Court of Appeals. Procedurally.[23] The Courts Ruling The petition has merit. and (b) whether respondent corporation is liable for trademark infringement and unfair competition.

or identity of such business. or colorably imitate any such mark or trade-name and apply such reproduction. shall be liable to a civil action by the registrant for any or all of the remediesherein provided.C. respondents allegedly used. Any person who [1] shall use. To establish trademark infringement. it is the element of likelihood of confusion that is the gravamen of trademark infringement. offering for sale. signs. prints. or colorable imitation to labels.[30] It was only during the trial that respondents presented in evidence the plastic wrappers and bags for their hamburger sandwiches relied on by the Court of Appeals. the law applicable to this case. [32] defines trademark infringement as follows: Infringement. appears in the packaging for respondents hamburger products and not the words Big Mak only. without petitioners consent.[33] Petitioners base their cause of action under the first part of Section 22.[35] On the Validity of the Big MacMark and McDonalds Ownership of such Mark . On the Issue of Trademark Infringement Section 22 (Section 22) of Republic Act No. in respondents evidence were added above and below the words Big Mak. what constitutes. any reproduction. This likely caused confusion in the mind of the purchasing public on the source of the hamburgers or the identity of the business. Inc.C. Big Mak Burger. The contention has merit. copy.C. copy. The other descriptive words burger and 100% pure beef were set in smaller type. Since petitioners complaint was based on facts existing before and during the hearings on the injunctive writ. along with the locations of branches.On the Manner Respondents Used Big Mak in their Business Petitioners contend that the Court of Appeals erred in ruling that the corporate name L. [29] It is respondents snack vans that carry the words L. i. counterfeit. as amended (RA 166). without the consent of the registrant. Big Mak Burger.[28] Respondents cash invoices simply refer to their hamburger sandwiches as Big Mak. [34] Of these. and the words Burger. packages. or [2] reproduce. wrappers. copy or colorable imitation of any registered mark or tradename in connection with the sale. receptacles or advertisements intended to be used upon or in connection with such goods. and (3)the use of the mark or its colorable imitation by the alleged infringer results in likelihood of confusion. respectively. a colorable imitation of the Big Mac mark in advertising and selling respondents hamburger sandwiches. counterfeit.[31] Respondents plastic wrappers and bags were identical with those petitioners presented during the hearings for the injunctive writ except that the letters L. the following elements must be shown: (1) the validity of plaintiffs mark. 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. The evidence presented during the hearings on petitioners motion for the issuance of a writ of preliminary injunction shows that the plastic wrappings and plastic bags used by respondents for their hamburger sandwiches bore the words Big Mak. Inc. business or services. Inc. 166. or advertising of any goods. (2) the plaintiffs ownership of the mark.e. the facts established during those hearings are the proper factual bases for the disposition of the issues raised in this petition. counterfeit.

or identity of such business.[53] On Whether Confusion of Goods and Confusion of Business are Applicable .[52] Thus. qualities or ingredients of a product to one who has never seen it or does not know it exists. Topacio. [39] is neither generic nor descriptive.[47] Indeed. not only the marks validity but also the registrants ownership of the mark is prima facie presumed.. The Isaiyas Group. the defendants product is such as might reasonably be assumed to originate with the plaintiff. thus: [Rudolf] Callman notes two types of confusion. Section 22 of RA 166 deleted the requirement in question and expanded its scope to include such use of the mark or its colorable imitation that is likely to result in confusion on the source or origin of such goods or services. However.[49] the Court distinguished these two types of confusion. [42]Descriptive marks. the trademark Little Debbie for snack cakes was found arbitrary or fanciful. no relief was afforded to the party whose registered mark or its colorable imitation is used on different although related goods. 666.[48] On Types of Confusion Section 22 covers two types of confusion arising from the use of similar or colorable imitation marks. convey the characteristics.[46] The Court also finds that petitioners have duly established McDonalds exclusive ownership of the Big Mac mark.[37] Respondents contend that of the two words in the Big Mac mark. had already assigned his rights to McDonalds. Farbenfabriken Bayer Aktiengesellschaft. The Big Mac mark. as petitioners disclosed. and thus incapable of exclusive appropriation. which should be treated in its entirety and not dissected word for word. In defining trademark infringement. Under Act No. functions. on the other hand. To remedy this situation. A mark which is not registered in the Principal Register. et al. confusion of goods (product confusion) and confusion of business (source or origin confusion). confusion of business exists when the products are non-competing but related enough to produce confusion of affiliation.[38] The contention has no merit. Generic marks are commonly used as the name or description of a kind of goods. Significantly. when the infringing mark is used on goods of a similar kind. Big Mac falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the product it represents. Although Topacio and the Isaiyas Group registered the Big Mac mark ahead of McDonalds.[50] the first trademark law. and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which. infringement was limited to confusion of goods only. namely. Congress enacted RA 166 on 20 June 1947. it is highly distinctive and thus valid.[51]Thus. has no real protection. xxx The other is the confusion of business: Here though the goods of the parties are different. Incorporated v.[40] such as Lite for beer [41] or Chocolate Fudge for chocolate soda drink. The first is the confusion of goods in which event the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. it is only the word Mac that is valid because the word Big is generic and descriptive (proscribed under Section 4[e]).A mark is valid if it is distinctive and thus not barred from registration under Section 4[36] of RA 166 (Section 4). we have held that registration in the Supplemental Register is not even a prima facie evidence of the validity of the registrants exclusive right to use the mark on the goods specified in the certificate. does not exist. and thus not distinctive. while there is confusion of goods when the products are competing.[45] As such. [44] On the contrary. registered its trademark only in the Supplemental Register. on the other hand. In Sterling Products International. once registered. in fact.[43] such as Arthriticare for arthritis medication.

the likelihood of confusion of business remains. or affiliated with. Petitioners also claim that respondents use of the Big Mak mark in the sale of hamburgers.10. respectively.2 As a consequence of the acts committed by defendants. and of the dilution of the distinctive quality of the McDonalds marks. Respondents assert that their Big Mak hamburgers cater mainly to the low-income group while petitioners Big Mac hamburgers cater to the middle and upper income groups. Defendants have unduly prejudiced and clearly infringed upon the property rights of plaintiffs in the McDonalds Marks. particularly the mark B[ig] M[ac]. mislead or deceive the public into believing that the products and services offered by defendant Big MakBurger. Thus. are approved and sponsored by. and without the consent of plaintiff McDonalds nor its licensee/franchisee. Thus. since the low-income group might be led to believe that the Big Mak hamburgers are the low-end hamburgers marketed by petitioners. sponsorship or affiliation of defendants food products and restaurant business. which unduly prejudice and infringe upon the property rights of plaintiffs McDonalds and McGeorge as the real owner and rightful proprietor. Defendant Big Mak Burger has thus unjustly created the impression that its business is approved and sponsored by. the same business that petitioners are engaged in. petitioners have the exclusive right to use the Big Mac mark.Petitioners claim that respondents use of the Big Mak mark on respondents hamburgers results in confusion of goods. respondents would benefit by associating their low-end hamburgers.15. defendant Big Mak Burger acting through individual defendants. plaintiffs have suffered and continue to suffer actual damages in the form ofinjury to their business reputation and goodwill. that petitioners Big Mac mark is used. plaintiffs. For some period of time. to confuse. plaintiffs. xxx. petitioners alleged in their complaint: 1. i. On the other hand.Defendants unauthorized acts are likely. the mark B[ig] M[ac]. Even if this is true. Petitioners alleged in their complaint: 1. results in confusion of business. which is confusingly similar to and/or is a colorable imitation of the plaintiff McDonalds mark B[ig] M[ac]. hamburger sandwiches. After all. with petitioners high-end Big Mac hamburgers.[54] (Emphasis supplied) Since respondents used the Big Mak mark on the same goods. particularly with respect to petitioners hamburgers labeled Big Mac. or affiliated with. through the use of the Big Mak mark. and has caused to be printed on the wrapper of defendants food products and incorporated in its signages the name Big Mak Burger.e. the same food product that petitioners sell using the Big Mac mark. trademark infringement through confusion of goods is a proper issue in this case. and in clear violation of plaintiffs exclusive right to use and/or appropriate the McDonalds marks. and which are likely to have caused confusion or deceived the public as to the true source. . a fast food restaurant business dealing in the sale of hamburger and cheeseburger sandwiches. leading to likelihood of confusion in the identity of business. trademark infringement through confusion of business is also a proper issue in this case. of the McDonalds marks. xxxx 2. and calculated. in particular. and the licensee/franchisee.[55] (Emphasis supplied) Respondents admit that their business includes selling hamburger sandwiches. french fries and other food products. and the business it is engaged in. has been operating Big Mak Burger. plaintiff McGeorge.

the holistic test requires the court to consider the entirety of the marks as applied to the products. Even respondents use of the Big Mak mark on non-hamburger food products cannot excuse their infringement of petitioners registered mark. as they appear on the goods with their labels and packaging. The dominancy test considers the dominant features in the competing marks indetermining whether they are confusingly similar. 52 Am. but that more importantly. respondents sell their Big Mak hamburgers in plastic wrappers and plastic bags. or in their essential. the Court of Appeals ruled that it is not sufficient that a similarity exists in both name(s). relied on the holistic test.[58] Respondents now vigorously argue that the Court of Appeals application of the holistic test to this case is correct and in accord with prevailing jurisprudence. has relied on the dominancy test rather than the holistic test. it remains the same hamburger food product. 77. It is not enough to consider their words and compare the spelling and pronunciation of the words. compared to respondents mobile vans. 577).[56] (Emphasis supplied) On Whether Respondents Use of the Big Mak Mark Results in Likelihood of Confusion In determining likelihood of confusion. noodles and pizza. the same food product that petitioners sell with the use of their registered mark Big Mac. Thus. and at different price levels depending on variations of the products for specific segments of the market. Whether a hamburger is single. substantive and distinctive parts is such as would likely MISLEAD or CONFUSE persons in the ordinary course of purchasing the genuine article. In contrast. The registered trademark owner may use his mark on the same or similar products. In contrast. This Court. These and other factors respondents cite cannot negate the undisputed fact that respondents use their Big Mak mark on hamburgers. the dominancy test and the holistic test. jurisprudence has developed two tests. in different segments of the market. Jur. block letters at a price more expensive than the hamburgers of respondents. in determining confusing similarity. 576) or is in any way connected with the activities of the infringer. 148 ALR. Thus. Under the dominancy test. as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field (see 148 ALR 56 et seq.Respondents further claim that petitioners use the Big Mac mark only on petitioners double-decker hamburgers. the overall presentation. in finding that there is no likelihood of confusion that could arise in the use of respondents Big Mak mark on hamburgers. 84. The Court has recognized that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. while respondents use the Big Mak mark on hamburgers and other products like siopao. Respondents further point out that petitioners restaurants are air-conditioned buildings with drive-thru service. and whether wrapped in plastic or styrofoam. The Court of Appeals. courts give greater weight to the . 576. 53 Am Jur. but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to lead to a confusion of source. or when it forestalls the normal potential expansion of his business (v. the Court has declared: Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties. Respondents also point out that petitioners sell their Big Mac double-deckers in a styrofoam box with the McDonalds logo and trademark in red. otherwise registered marks will lose their protection under the law. double or triple-decker. The holistic test considers the two marks in their entirety. however. including the labels and packaging. [57] The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion.

giving little weight to factors like prices. Visually. 107 F. The Court has taken into account the aural effects of the words and letters contained in the marks in determining the issue of confusing similarity. Nut Industry. in Marvex Commercial Co. Applying the dominancy test. Inc. even the last letters of both marks are the same.1 of the Intellectual Property Code which defines infringement as the colorable imitation of a registered mark xxx or a dominant feature thereof.A. Applied to the same food product of hamburgers. aurally the two marks are the same. while relevant.[60] the Court ruled: xxx It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy. and unfair competition that confusing similarity is to be determined on the basis of visual. and the second word of both marks also phonetically the same.(Emphasis supplied) Thus. In short.[59] Courts will consider more the aural and visual impressions created by the marks in the public mind. infringement takes place. sales outlets and market segments. 579). xxx) (Emphasis supplied. (G. with the first word of both marks having the same letters and the second word having the same first two letters. Court of Appeals. citing Eagle White Lead Co. in the 1954 case of Co Tiong Sa v. the last letter in Mak while a k sounds the same as c when the word Mak is pronounced. aural.. Clearly.[62] Converse Rubber Corporation v.[66] the Court held: . respondents have adopted in Big Mak not only the dominant but also almost all the features of Big Mac. Standard Brands Inc. considering the Filipino language. quality. Petra Hawpia & Co. 495.[63] and Asia Brewery. Fifth. Inc. Director of Patents. Pflugh (CC) 180 Fed. Court of Appeals.. v.. the Court finds that respondents use of the Big Mak mark results in likelihood of confusion. and confusion and deception is likely to result.. the first word in Big Mak is exactly the same as the first word in Big Mac. Heilman Brewing Co. Third..[65] the Court explicitly rejected the holistic test in this wise: [T]he totality or holistic test is contrary to the elementary postulate of the law on trademarks The test of dominancy is now explicitly incorporated into law in Section 155. Universal Rubber Products. the letter k replaces c in spelling.) The Court reiterated the dominancy test in Lim Hoa v. with the first word of both marks phonetically the same. 2d 588. thus Caloocan is spelled Kalookan. Director of Patents. Duplication or imitation is not necessary. 191 F. nor is it necessary that the infringing label should suggest an effort to imitate. Inc. Inc. Second. disregarding minor differences. v. Big Mak sounds exactly the same as Big Mac. If the competing trademark contains the main or essential or dominant features of another. Similarity in size. v. in Filipino. Independent Brewing Co. the first two letters in Mak are the same as the first two letters in Mac. connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace.[61] Phil. et al. vs.[64] In the 2001 case of Societe Des Produits Nestl. Fourth. is not conclusive. vs. (Auburn Rubber Corporation vs. the two marks have both two words and six letters. S. First... 489..similarity of the appearance of the product arising fromthe adoption of the dominant features of the registered mark. Thus. v. The question at issue in cases of infringement of trademarks is whetherthe use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers. form and color. the two marks will likely result in confusion in the public mind. Honover Rubber Co. In spelling.

For one. as is the more usual thing done. We sustain petitioners claim of trademark infringement. Cascarete and Celborite. This increases the likelihood that consumers will mistakenly associate petitioners hamburgers and business with those of respondents. Balmaceda. as the sound of the two names is almost the same. particularly Respondent Mr. in his book Trade-Mark Law and Practice. pp. In Co Tiong vs. was their intent to take advantage of Petitioners xxx B[ig] M[ac] trademark. he could have put his fathers name ahead of his mothers. Petitioners aggressive promotion of the Big Mac mark. he could have taken an equal number of letters (i. especially since he was allegedly driven by sentimental reasons. Respondents inability to explain sufficiently how and why they came to choose Big Mak for their hamburger sandwiches indicates their intent to imitate petitioners Big Mac mark. we hold that confusion is likely to result in the public mind. as borne by their advertisement expenses. As noted in American .[70] Thus. one would not know whether the Mac or Mak ends with a c or a k. Hebe and Meje. vs. On the Lack of Proof of Actual Confusion Petitioners failure to present proof of actual confusion does not negate their claim of trademark infringement. [69] This saves respondents much of the expense in advertising to create market recognition of their mark and hamburgers. culled from Nims. Indeed. Celluloid and Cellonite. Unfair Competition and Trade Marks. excuse or defense for such an unfair choice of name. Director of Patents. Francis Dy. this Court unequivocally said that Celdura and Cordura are confusingly similar in sound. 419-421. Surely. will reinforce our view that SALONPAS and LIONPAS are confusingly similar in sound: Gold Dust and Gold Drop. 1. When one hears a Big Mac or Big Mak hamburger advertisement over the radio. Jantzen and Jass-Sea. Zuso and Hoo Hoo.. 67 Phil. Chartreuse and Charseurs.The following random list of confusingly similar sounds in the matter of trademarks. this Court held in Sapolin Co. Vol.[67] Absent proof that respondents adoption of the Big Mak mark was due to honest mistake or was fortuitous. especially when taken in conjunction with the word B[ig]. respondents claim that their Big Mak mark was inspired by the first names of respondent Dys mother (Maxima) and father (Kimsoy) is not credible. a person cannot distinguish Big Mac from Big Mak by their sound. 795 that the name Lusolin is an infringement of the trademark Sapolin. Contrary to the Court of Appeals finding. cities. Yusea and U-C-A. as is usually done in this patriarchal society. and derived letters from said names in that order. (Emphasis supplied) Certainly. not only aurally but also visually. has built goodwill and reputation for such mark making it one of the easily recognizable marks in the market today. Silver Flash and Supper Flash. and SevenUp and Lemon-Up. Cutex and Cuticlean. albeit unavailing. as coming within the purview of the idem sonans rule. with their alleged sentiment-focused explanation merely thought of as a convenient. [68] the inescapable conclusion is that respondents adopted the Big Mak mark to ride on the coattails of the more established Big Mac mark.e. As petitioners well noted: [R]espondents. could have arrived at a more creative choice for a corporate name by using the names of his parents. the more plausible reason behind Respondents choice of the word M[ak]. 1947. Steinway Pianos and Steinberg Pianos. Or. two) from each name. Leon Amdur. Big Mac and Big Mak for hamburgers create even greater confusion. Kotex and Femetex.

other than the actual manufacturer or dealer. or (c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods. misleads prospective purchasers into buying his merchandise under the impression that they are buying that of his competitors. shall be guilty of unfair competition.[71] Section 22 requires the less stringent standard of likelihood of confusion only. or who otherwise clothes the goods with such appearance as shalldeceive the public and defraud another of his legitimate trade. or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose. thus: xxxx Any person who will employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals. who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer.Wire & Cable Co. but may result from other external factors in the packaging or presentation of the goods. [77] Trademark infringement constitutes unfair competition when there is not merely likelihood of confusion. and (2) intent to deceive the public and defraud a competitor. the defendant gives his goods the general appearance of the goods . or his business. or who shall commit any acts calculated to produce said result. petitioners allege that respondents fraudulently passed off their hamburgers as Big Mac hamburgers. Trademark infringement is a form of unfair competition.[78] To support their claim of unfair competition. or the devices or words thereon. [79] Passing off (or palming off) takes place where the defendant. the following shall be deemed guilty of unfair competition: (a) Any person. (b) Any person who by any artifice. business or services of another.[76] Unfair competition is broader than trademark infringement and includes passing off goods with or without trademark infringement. The intent to deceive and defraud may be inferred from the similarity of the appearance of the goods as offered for sale to the public. and without in any way limiting the scope of unfair competition. or who employs any other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public. or device. [74] The confusing similarity may or may not result from similarity in the marks. In particular. its absence is inconsequential. which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer. Director of Patents. by imitative devices on the general appearance of the goods. but also actual or probable deception on the public because of the general appearance of the goods. (Emphasis supplied) The essential elements of an action for unfair competition are (1) confusing similarity in the general appearance of the goods. or services for those of the one having established such goodwill. and shall be subject to an action therefor. [80] Thus. Petitioners add that respondents fraudulent intent can be inferred from the similarity of the marks in question. There can be trademark infringement without unfair competition as when the infringer discloses on the labels containing the mark that he manufactures the goods. thus preventing the public from being deceived that the goods originate from the trademark owner.[75]Actual fraudulent intent need not be shown. v. or in any feature of their appearance. While proof of actual confusion is the best evidence of infringement.[72] On the Issue of Unfair Competition Section 29 (Section 29)[73] of RA 166 defines unfair competition. either as to the goods themselves or in the wrapping of the packages in which they are contained.

The dissimilarities in the material and other devices are insignificant compared to the glaring similarity in the words used in the wrappings.C. If respondents sold egg sandwiches only instead of hamburger sandwiches. . Big Mak Burger. plaintiffs logo and mascot are the umbrella M and Ronald McDonalds. petitioners introduced during the injunctive hearings plastic wrappers and bags with the Big Mak mark without the name L. xxxx Further. did not give such notice. The RTC described the respective marks and the goods of petitioners and respondents in this wise: The mark B[ig] M[ac] is used by plaintiff McDonalds to identify its double decker hamburger sandwich. Respondents goods are hamburgers which are also the goods of petitioners. respectively.[81] (Emphasis supplied) Respondents point to these dissimilarities as proof that they did not give their hamburgers the general appearance of petitioners Big Mac hamburgers. and not those of petitioners who have the exclusive right to the Big Mac mark. Respondents belated presentation of plastic wrappers and bags bearing the name of L. Inc. there is actually no notice to the public that the Big Mak hamburgers are products of L. just like petitioners use of the Big Mac mark on hamburgers. As earlier stated. Inc. Thus. then they could validly claim that they did not intend to deceive the public. respondent corporation is liable for unfair competition. Had respondents placed a notice on their plastic wrappers and bags that the hamburgers are sold by L. This clearly shows respondents intent to deceive the public.of his competitor with the intention of deceiving the public that the goods are those of his competitor. we cannot consider respondents evidence since petitioners complaint was based on facts existing before and during the injunctive hearings. Big Mak Burger. Big Mak Burger. Inc. Big Mak Burger.C. there is only trademark infringement but no unfair competition. In such case. compared to the mascot of defendant Corporation which is a chubby boy called Macky displayed or printed between the words Big and Mak. Big Mak Burger. Inc. On the other hand.C.C. However. Inc. there is no notice to the public that the Big Mak hamburgers are products of L.C. Respondents have applied on their plastic wrappers and bags almost the same words that petitioners use on their styrofoam box. Moreover. since respondents chose to apply the Big Mak mark on hamburgers. to inform the public of the name of the seller of the hamburgers. respondents have obviously clothed their goods with the general appearance of petitioners goods. as the words Big Mac.. their use of the Big Mak mark would not give their goods the general appearance of petitioners Big Mac hamburgers. We hold that as found by the RTC.C. The packaging material is a styrofoam box with the McDonalds logo and trademark in red with block capital letters printed on it. What attracts the attention of the buying public are the words Big Mak which are almost the same. defendants B[ig] M[ak] script print is in orange with only the letter B and M being capitalized and the packaging material is plastic wrapper. The dissimilarities in the packaging are minor compared to the stark similarities in the words that give respondents Big Mak hamburgers the general appearance of petitioners Big Mac hamburgers. as the seller of the hamburgers is an after-thought designed to exculpate them from their unfair business conduct. aurally and visually. Section 29(a) also provides that the defendant gives his goods the general appearance of goods of another manufacturer.[82] Respondents. there is only trademark infringement but no unfair competition. All letters of the B[ig] M[ac] mark are also in red and block capital letters. however. Inc. Big Mak Burger. However. Respondents introduced during the trial plastic wrappers and bags with the words L. Section 29(a) expressly provides that the similarity in the general appearance of the goods may be in the devices orwords used on the wrappings. In such case.

The Remedies Available to Petitioners
Under Section 23[83] (Section 23) in relation to Section 29 of RA 166,
a plaintiff who successfully maintains trademark infringement and
unfair competition claims is entitled to injunctive and monetary
reliefs. Here, the RTC did not err in issuing the injunctive writ of 16
August 1990 (made permanent in its Decision of 5 September 1994)
and in ordering the payment of P400,000 actual damages in favor of
petitioners. The injunctive writ is indispensable to prevent further acts
of infringement by respondent corporation. Also, the amount of
actual damages is a reasonable percentage (11.9%) of respondent
corporations gross sales for three (1988-1989 and 1991) of the six
years (1984-1990) respondents have used the Big Mak mark. [84]
The RTC also did not err in awarding exemplary damages by
way of correction for the public good [85] in view of the finding of unfair
competition where intent to deceive the public is essential. The
award of attorneys fees and expenses of litigation is also in order.[86]
WHEREFORE, we GRANT the instant petition. We SET
ASIDE the Decision dated 26 November 1999 of the Court of
Appeals and its Resolution dated 11 July 2000 and REINSTATE the
Decision dated 5 September 1994 of the Regional Trial Court of
Makati, Branch 137, finding respondent L.C. Big Mak Burger, Inc.
liable for trademark infringement and unfair competition.
SO ORDERED.
Petitioner McDonald's Corporation ("McDonald's") is a US
corporation that operates a global chain of fast-food restaurants, with
Petitioner McGeorge Food Industries ("McGeorge"), as the Philippine
franchisee.
McDonald's owns the "Big Mac" mark for its "double-decker
hamburger sandwich." with the US Trademark Registry on 16
October 1979.
Based on this Home Registration, McDonald's applied for the
registration of the same mark in the Principal Register of the then

Philippine Bureau of Patents, Trademarks and Technology ("PBPTT")
(now IPO). On 18 July 1985, the PBPTT allowed registration of the
"Big Mac."
Respondent L.C. Big Mak Burger, Inc. is a domestic corporation
which operates fast-food outlets and snack vans in Metro Manila and
nearby provinces. Respondent corporation's menu includes
hamburger sandwiches and other food items.
On 21 October 1988, respondent corporation applied with the
PBPTT for the registration of the "Big Mak" mark for its hamburger
sandwiches, which was opposed by McDonald's. McDonald's also
informed LC Big Mak chairman of its exclusive right to the "Big Mac"
mark and requested him to desist from using the "Big Mac" mark or
any similar mark.
Having received no reply, petitioners sued L.C. Big Mak Burger, Inc.
and its directors before Makati RTC Branch 137 ("RTC"), for
trademark infringement and unfair competition.
RTC rendered a Decision finding respondent corporation liable for
trademark infringement and unfair competition. CA reversed RTC's
decision on appeal.
1ST ISSUE:W/N respondent corporation is liable for trademark
infringement and unfair competition.
Ruling: Yes
Section 22 of Republic Act No. 166, as amended, defines trademark
infringement as follows:
Infringement, what constitutes. - Any person who [1] shall use,
without the consent of the registrant, 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 business; or [2] reproduce, counterfeit, copy, or colorably
imitate any such mark or trade-name and apply such reproduction,

counterfeit, copy, or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be
used upon or in connection with such goods, business or services,
shall be liable to a civil action by the registrant for any or all of the
remedies herein provided.
To establish trademark infringement, the following elements must be
shown: (1) the validity of plaintiff's mark; (2) the plaintiff's ownership
of the mark; and (3) the use of the mark or its colorable imitation by
the alleged infringer results in "likelihood of confusion." Of these, it is
the element of likelihood of confusion that is the gravamen of
trademark infringement.
1st element:
A mark is valid if it is distinctive and not merely generic and
descriptive.
The "Big Mac" mark, which should be treated in its entirety and not
dissected word for word, is neither generic nor descriptive. Generic
marks are commonly used as the name or description of a kind of
goods, such as "Lite" for beer. Descriptive marks, on the other hand,
convey the characteristics, functions, qualities or ingredients of a
product to one who has never seen it or does not know it exists, such
as "Arthriticare" for arthritis medication. On the contrary, "Big Mac"
falls under the class of fanciful or arbitrary marks as it bears no
logical relation to the actual characteristics of the product it
represents. As such, it is highly distinctive and thus valid.
2nd element:
Petitioners have duly established McDonald's exclusive ownership of
the "Big Mac" mark. Prior valid registrants of the said mark had
already assigned his rights to McDonald's.
3rd element:
Section 22 covers two types of confusion arising from the use of
similar or colorable imitation marks, namely, confusion of goods
(confusion in which the ordinarily prudent purchaser would be
induced to purchase one product in the belief that he was purchasing

the other) and confusion of business (though the goods of the parties
are different, the defendant's product is such as might reasonably be
assumed to originate with the plaintiff, and the public would then be
deceived either into that belief or into the belief that there is some
connection between the plaintiff and defendant which, in fact, does
not exist).
There is confusion of goods in this case since respondents used the
"Big Mak" mark on the same goods, i.e. hamburger sandwiches, that
petitioners' "Big Mac" mark is used.
There is also confusion of business due to Respondents' use of the
"Big Mak" mark in the sale of hamburgers, the same business that
petitioners are engaged in, also results in confusion of business. The
registered trademark owner may use his mark on the same or similar
products, in different segments of the market, and at different price
levels depending on variations of the products for specific segments
of the market. The registered trademark owner enjoys protection in
product and market areas that are the normal potential expansion of
his business.
Furthermore, In determining likelihood of confusion, the SC has
relied on the dominancy test (similarity of the prevalent features of
the competing trademarks that might cause confusion) over the
holistic test (consideration of the entirety of the marks as applied to
the products, including the labels and packaging).
Applying the dominancy test, Respondents' use of the "Big Mak"
mark results in likelihood of confusion. Aurally the two marks are the
same, with the first word of both marks phonetically the same, and
the second word of both marks also phonetically the same. Visually,
the two marks have both two words and six letters, with the first word
of both marks having the same letters and the second word having
the same first two letters.
Lastly, since Section 22 only requires the less stringent standard of
"likelihood of confusion," Petitioners' failure to present proof of actual
confusion does not negate their claim of trademark infringement.
2ND ISSUE: W/N Respondents committed Unfair Competition

Ruling: Yes.
Section 29 ("Section 29")73 of RA 166 defines unfair competition,
thus:
Any person who will employ deception or any other means contrary
to good faith by which he shall pass off the goods manufactured by
him or in which he deals, or his business, or services for those of the
one having established such goodwill, or who shall commit any acts
calculated to produce said result, shall be guilty of unfair competition,
and shall be subject to an action therefor.
The essential elements of an action for unfair competition are (1)
confusing similarity in the general appearance of the goods, and (2)
intent to deceive the public and defraud a competitor.
In the case at bar, Respondents have applied on their plastic
wrappers and bags almost the same words that petitioners use on
their styrofoam box. Further, Respondents' goods are hamburgers
which are also the goods of petitioners. Moreover, there is actually
no notice to the public that the "Big Mak" hamburgers are products of
"L.C. Big Mak Burger, Inc." This clearly shows respondents' intent to
deceive the public
G.R. No. 101897. March 5, 1993.
LYCEUM OF THE PHILIPPINES, INC., petitioner, vs. COURT OF
APPEALS, LYCEUM OF APARRI, LYCEUM OF CABAGAN,
LYCEUM OF CAMALANIUGAN, INC., LYCEUM OF LALLO, INC.,
LYCEUM OF TUAO, INC., BUHI LYCEUM, CENTRAL LYCEUM OF
CATANDUANES, LYCEUM OF SOUTHERN PHILIPPINES,
LYCEUM OF EASTERN MINDANAO, INC. and WESTERN
PANGASINAN LYCEUM, INC., respondents.
Quisumbing, Torres & Evangelista Law Offices and Ambrosio Padilla
for petitioner.

Antonio M. Nuyles and Purungan, Chato, Chato, Tarriela & Tan Law
Offices for respondents.
Froilan Siobal for Western Pangasinan Lyceum.
SYLLABUS
1. CORPORATION LAW; CORPORATE NAMES; REGISTRATION
OF PROPOSED NAME WHICH IS IDENTICAL OR CONFUSINGLY
SIMILAR TO THAT OF ANY EXISTING CORPORATION,
PROHIBITED; CONFUSION AND DECEPTION EFFECTIVELY
PRECLUDED BY THE APPENDING OF GEOGRAPHIC NAMES TO
THE WORD "LYCEUM". — The Articles of Incorporation of a
corporation must, among other things, set out the name of the
corporation. Section 18 of the Corporation Code establishes a
restrictive rule insofar as corporate names are concerned: "Section
18. Corporate name. — No corporate name may be allowed by the
Securities an Exchange Commission if the proposed name is
identical or deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by law or is
patently deceptive, confusing or contrary to existing laws. When a
change in the corporate name is approved, the Commission shall
issue an amended certificate of incorporation under the amended
name." The policy underlying the prohibition in Section 18 against
the registration of a corporate name which is "identical or deceptively
or confusingly similar" to that of any existing corporation or which is
"patently deceptive" or "patently confusing" or "contrary to existing
laws," is the avoidance of fraud upon the public which would have
occasion to deal with the entity concerned, the evasion of legal
obligations and duties, and the reduction of difficulties of
administration and supervision over corporations. We do not
consider that the corporate names of private respondent institutions
are "identical with, or deceptively or confusingly similar" to that of the
petitioner institution. True enough, the corporate names of private
respondent entities all carry the word "Lyceum" but confusion and
deception are effectively precluded by the appending of geographic
names to the word "Lyceum." Thus, we do not believe that the

this fact alone did not amount to mean that the said word had acquired secondary meaning in its favor because the appellant failed to prove that it had been using the same word all by itself to the exclusion of others. ID. therefore. MUST BE EVALUATED IN THEIR ENTIRETY TO DETERMINE WHETHER THEY ARE CONFUSINGLY OR DECEPTIVELY SIMILAR TO ANOTHER CORPORATE ENTITY'S NAME. .. The doctrine of secondary meaning originated in the field of trademark law.. ID. might nevertheless have been used so long and so exclusively by one producer with reference to his article that. 56). Its application has. . in that trade and to that group of the purchasing public. ID. although originally a generic. — It is claimed. In other words. by petitioner that the word "Lyceum" has acquired a secondary meaning in relation to petitioner with the result that word. the same tend to prove only that the appellant had been using the disputed word for a long period of time. a word or phrase originally incapable of exclusive appropriation with reference to an article in the market. The number alone of the private respondents in the case at bar suggests strongly that petitioner's use of the word "Lyceum" has not been attended with the exclusivity essential for applicability of the doctrine of secondary meaning. . it is not enough to ascertain the presence of "Lyceum" or . . 2. . This circumstance has been referred to as the distinctiveness into which the name or phrase has evolved through the substantial and exclusive use of the same for a considerable period of time. In Philippine Nut Industry. in that trade and to that branch of the purchasing public. Inc. . ID. or that the "Lyceum of Camalaniugan" would be confused with the Lyceum of the Philippines. No evidence was ever presented in the hearing before the Commission which sufficiently proved that the word 'Lyceum' has indeed acquired secondary meaning in favor of the appellant.. the allegations of the appellant in its first two assigned errors must necessarily fail. however. while the appellant may have proved that it had been using the word 'Lyceum' for a long period of time. To determine whether a given corporate name is "identical" or "confusingly or deceptively similar" with another entity's corporate name. a word or phrase originally incapable of exclusive appropriation with reference to an article on the market. is whether or not the use by 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 (or at least that portion of the general public which has to do with schools). because geographically or otherwise descriptive. . the word or phrase has come to mean that the article was his product. DOCTRINE OF SECONDARY MEANING. Toribio Teodoro. Petitioner's use of the word "Lyceum" was not exclusive but was in truth shared with the Western Pangasinan Lyceum and a little later with other private respondent institutions which registered with the SEC using "Lyceum" as part of their corporation names."Lyceum of Aparri" can be mistaken by the general public for the Lyceum of the Philippines. More so. 3. been extended to corporate names sine the right to use a corporate name to the exclusion of others is based upon the same principle which underlies the right to use a particular trademark or tradename. the doctrine of secondary meaning was elaborated in the following terms: " . USE OF WORD "LYCEUM. . however. The Court of Appeals recognized this issue and answered it in the negative: "Under the doctrine of secondary meaning. If there was any of this kind." We agree with the Court of Appeals. 74 Phil. because geographical or otherwise descriptive might nevertheless have been used so long and so exclusively by one producer with reference to this article that. — petitioner institution is not entitled to a legally enforceable exclusive right to use the word "Lyceum" in its corporate name and that other institutions may use "Lyceum" as part of their corporate names.. there was no evidence presented to prove that confusion will surely arise if the same word were to be used by other educational institutions. v. the word or phrase has come to mean that the article was his produce (Ana Ang vs." The question which arises. has become appropriable by petitioner to the exclusion of other institutions like private respondents herein." NOT ATTENDED WITH EXCLUSIVITY. Consequently. There may well be other schools using Lyceum or Liceo in their names. Standard Brands. Inc. but not registered with the SEC because they have not adopted the corporate form of organization..

In an Order dated 20 April 1977. Lyceum of Eastern Mindanao. it used the corporate name Lyceum of the Philippines. Inc. The Lyceum of Araullo The complaint was later withdrawn insofar as concerned the Lyceum of Malacanay and the Lyceum of Marbel. petitioner instituted proceedings before the SEC to compel the private respondents. — 26 March 1972 Lyceum of Aparri — 28 March 1972 Lyceum of Tuao. were substantially identical because of the presence of a "dominant" . the dates of their original SEC registration being set out below opposite their respective names: Western Pangasinan Lyceum — 27 October 1950 Lyceum of Cabagan — 31 October 1962 Lyceum of Lallo. Inc. they are not reasonably regarded as "identical" or "confusingly or deceptively similar" with each other. Inc. and 3. Associate Commissioner Julio Sulit held that the corporate name of petitioner and that of the Lyceum of Baguio. 1241) against the Lyceum of Baguio. These are the following. 2."Liceo" in both names. Some of the private respondents actively participated in the proceedings before the SEC.. FELICIANO. Petitioner is an educational institution duly registered with the Securities and Exchange Commission ("SEC"). Petitioner had sometime before commenced in the SEC a proceeding (SEC-Case No. When it first registered with the SEC on 21 September 1950. which are also educational institutions. to delete the word "Lyceum" from their corporate names and permanently to enjoin them from using "Lyceum" as part of their respective names. and On 24 February 1984. The case against the Liceum of Araullo was dismissed when that school motu proprio change its corporate name to "Pamantasan ng Araullo. and has used that name ever since. — 28 March 1972 The following private respondents were declared in default for failure to file an answer despite service of summons: Lyceum of Southern Philippines Petitioner's original complaint before the SEC had included three (3) other entities: 1. The Lyceum of Malacanay. J p: Central Lyceum of Catanduanes. Inc. The Lyceum of Marbel. Inc. to require it to change its corporate name and to adopt another name not "similar [to] or identical" with that of petitioner." The background of the case at bar needs some recounting. One must evaluate corporate names in their entirety and when the name of petitioner is juxtaposed with the names of private respondents. Lyceum of Camalaniugan — 28 March 1972 DECISION Buhi Lyceum. for failure to serve summons upon these two (2) entities. Inc.

though not necessarily seriatim. the Court of Appeals affirmed the questioned Orders of the SEC En Banc. 3. "Lyceum. Neither is stare decisis pertinent. In a Minute Resolution dated 14 September 1977. 2. The SEC En Banc did not consider the word "Lyceum" to have become so identified with petitioner as to render use thereof by other institutions as productive of confusion about the identity of the schools concerned in the mind of the general public. 2 Armed with the Resolution of this Court in G. Before this Court. without success. No. L-46595. and advised them to discontinue such use of "Lyceum. No. .word. of course." The SEC hearing officer rendered a decision sustaining petitioner's claim to an exclusive right to use the word "Lyceum. Inc. No. the Court denied the Petition for Review for lack of merit. petitioner then wrote all the educational institutions it could find using the word "Lyceum" as part of their corporate name. the decision of the hearing officer was reversed and set aside. i. however. The Court of Appeals erred in holding that respondent Western Pangasinan Lyceum. The Minute Resolution of the Court in G. the SEC En Banc held that the attaching of geographical names to the word "Lyceum" served sufficiently to distinguish the schools from one another. in point of time. No.R." When. however. since there is no identity of parties. L-46595 did not constitute stare decisis as to apply to this case and in not holding that said Resolution bound subsequent determinations on the right to exclusive use of the word Lyceum. The SEC also noted that petitioner had registered as a corporation ahead of the Lyceum of Baguio. by private respondents to the SEC En Banc. The Court of Appeals erred in holding that the word Lyceum has not acquired a secondary meaning in favor of petitioner. especially in view of the fact that the campuses of petitioner and those of the private respondents were physically quite remote from each other. it became clear that this recourse had failed. petitioner instituted before the SEC SEC-Case No. 1 and ordered the latter to change its name to another name "not similar or identical [with]" the names of previously registered entities. constitute res adjudicata in respect of the case at bar. On appeal. 5 We will consider all the foregoing ascribed errors. 2579 to enforce what petitioner claims as its proprietary right to the word "Lyceum. case (SECCase No. The Court of Appeals erred in holding that Lyceum as a generic word cannot be appropriated by the petitioner to the exclusion of others.R. if only because the SEC En Banc itself has re-examined Associate Commissioner Sulit's ruling in the Lyceum of Baguio case.R. petitioner asserts that the Court of Appeals committed the following errors: 1. assailed the Order of the SEC before the Supreme Court in a case docketed as G.R. 3 Petitioner then went on appeal to the Court of Appeals.R. Entry of judgment in that case was made on 21 October 1977. Inc." the name of the geographical location of the campus being the only word which distinguished one from the other corporate name. was incorporated earlier than petitioner. We begin by noting that the Resolution of the Court in G. Unlike its hearing officer. The Court of Appeals erred in holding that the Resolution of the Supreme Court in G. L-46595. with the passage of time. The Lyceum of Baguio.e. Inc. 1241) and held that the word "Lyceum" was capable of appropriation and that petitioner had acquired an enforceable exclusive right to the use of that word. In its Decision dated 28 June 1991. Inc. 4 Petitioner filed a motion for reconsideration." The hearing officer relied upon the SEC ruling in the Lyceum of Baguio. L-46595 does not.. 4. No. L-46595 was not a reasoned adoption of the Sulit ruling.

among other things. 11 the doctrine of secondary meaning was elaborated in the following terms: . It is claimed. the Commission shall issue an amended certificate of incorporation under the amended name. by petitioner that the word "Lyceum" has acquired a secondary meaning in relation to petitioner with the result that that word. or deceptively or confusingly similar" to that of the petitioner institution. the evasion of legal obligations and duties. 6 Section 18 of the Corporation Code establishes a restrictive rule insofar as corporate names are concerned: "SECTION 18. "Liceo de Manila. the word "Lyceum" became associated with schools and other institutions providing public lectures and concerts and public discussions. e. been extended to corporate names sine the right to use a corporate name to the exclusion of others is based upon the same principle which underlies the right to use a particular trademark or tradename. and the reduction of difficulties of administration and supervision over corporations. has become appropriable by petitioner to the exclusion of other institutions like private respondents herein. the word is also found in Spanish (liceo) and in French (lycee). — No corporate name may be allowed by the Securities an Exchange Commission if the proposed name is identical or deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive. "Lyceum" appears to be a substitute for "university. "Lyceum." "Liceo de Albay. When a change in the corporate name is approved." 9 "Lyceum" is in fact as generic in character as the word "university. the word "Lyceum" is the Latin word for the Greek lykeion which in turn referred to a locality on the river Ilissius in ancient Athens "comprising an enclosure dedicated to Apollo and adorned with fountains and buildings erected by Pisistratus. While the Latin word "lyceum" has been incorporated into the English language." is the avoidance of fraud upon the public which would have occasion to deal with the entity concerned." or "Liceo" or "Lycee" frequently denotes a secondary school or a college. It may be (though this is a question of fact which we need not resolve) that the use of the word "Lyceum" may not yet be as widespread as the use of "university. Pericles and Lycurgus frequented by the youth for exercise and by the philosopher Aristotle and his followers for teaching. Etymologically." "Liceo de Baleno" (in Baleno. however. Standard Brands. the word "Lyceum" generally refers to a school or an institution of learning. 7 We do not consider that the corporate names of private respondent institutions are "identical with. Since "Lyceum" or "Liceo" denotes a school or institution of learning. however. "Liceo de Masbate. or that the "Lyceum of Camalaniugan" would be confused with the Lyceum of the Philippines. the corporate names of private respondent entities all carry the word "Lyceum" but confusion and deception are effectively precluded by the appending of geographic names to the word "Lyceum.. however. it is not unnatural to use this word to designate an entity which is organized and operating as an educational institution.g." In the name of the petitioner." 8 In time. although originally a generic. 10 In Philippine Nut Industry. Corporate name. set out the name of the corporation." in other places. As the Court of Appeals noted in its Decision." (Emphasis supplied) The policy underlying the prohibition in Section 18 against the registration of a corporate name which is "identical or deceptively or confusingly similar" to that of any existing corporation or which is "patently deceptive" or "patently confusing" or "contrary to existing laws. Inc.The Articles of Incorporation of a corporation must. Masbate). Inc." but it is clear that a not inconsiderable number of educational institutions have adopted "Lyceum" or "Liceo" as part of their corporate names.. True enough. The doctrine of secondary meaning originated in the field of trademark law. confusing or contrary to existing laws. Thus today. Roman Catholic schools frequently use the term." Thus. v. Its application has. we do not believe that the "Lyceum of Aparri" can be mistaken by the general public for the Lyceum of the Philippines.

e. . i. might nevertheless have been used so long and so exclusively by one producer with reference to his article that. Nevertheless. [we] believe the appellant failed to satisfy the aforementioned requisites. With the foregoing as a yardstick." It follows that if any institution had acquired an exclusive right to the . therefore. Wellington Department Store. because geographically or otherwise descriptive. 92 Phil. this fact alone did not amount to mean that the said word had acquired secondary meaning in its favor because the appellant failed to prove that it had been using the same word all by itself to the exclusion of others. More so. If there was any of this kind. used the term "Lyceum" seventeen (17) years before the petitioner registered its own corporate name with the SEC and began using the word "Lyceum. the same tend to prove only that the appellant had been using the disputed word for a long period of time. the allegations of the appellant in its first two assigned errors must necessarily fail. a word or phrase originally incapable of exclusive appropriation with reference to an article in the market. the same doctrine or principle cannot be made to apply where the evidence did not prove that the business (of the plaintiff) has continued for so long a time that it has become of consequence and acquired a good will of considerable value such that its articles and produce have acquired a well-known reputation.. and confusion will result by the use of the disputed name (by the defendant) (Ang Si Heng vs. in that trade and to that group of the purchasing public. Inc. is whether or not the use by 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 (or at least that portion of the general public which has to do with schools). The number alone of the private respondents in the case at bar suggests strongly that petitioner's use of the word "Lyceum" has not been attended with the exclusivity essential for applicability of the doctrine of secondary meaning. Inc. . educational institutions of the Roman Catholic Church had been using the same or similar word like 'Liceo de Manila. its (appellant) exclusive use of the word (Lyceum) was never established or proven as in fact the evidence tend to convey that the cross-claimant was already using the word 'Lyceum' seventeen (17) years prior to the date the appellant started using the same word in its corporate name. This circumstance has been referred to as the distinctiveness into which the name or phrase has evolved through the substantial and exclusive use of the same for a considerable period of time. there was no evidence presented to prove that confusion will surely arise if the same word were to be used by other educational institutions. while the appellant may have proved that it had been using the word 'Lyceum' for a long period of time.. the word or phrase has come to mean that the article was his produce (Ana Ang vs. No evidence was ever presented in the hearing before the Commission which sufficiently proved that the word 'Lyceum' has indeed acquired secondary meaning in favor of the appellant. 448). in that trade and to that branch of the purchasing public. Furthermore. The appellant also failed to prove that the word 'Lyceum' has become so identified with its educational institution that confusion will surely arise in the minds of the public if the same word were to be used by other educational institutions. because geographical or otherwise descriptive might nevertheless have been used so long and so exclusively by one producer with reference to this article that." . 56). Consequently." 12 The question which arises. Consequently. It may be noted also that at least one of the private respondents. In other words. 'Liceo de Masbate. Masbate). Toribio Teodoro.. The Court of Appeals recognized this issue and answered it in the negative: "Under the doctrine of secondary meaning." 13 (Underscoring partly in the original and partly supplied) We agree with the Court of Appeals.' 'Liceo de Baleno' (in Baleno. 74 Phil. a word or phrase originally incapable of exclusive appropriation with reference to an article on the market.' 'Liceo de Albay' long before appellant started using the word 'Lyceum'. the Western Pangasinan Lyceum. the word or phrase has come to mean that the article was his product.

and the Decision of the Court of Appeals dated 28 June 1991 is hereby AFFIRMED. the Petition for Review is DENIED for lack of merit. 62. we refer to this earlier registration simply to underscore the fact that petitioner's use of the word "Lyceum" was neither the first use of that term in the Philippines nor an exclusive use thereof. failed to reconstruct its records before the SEC in accordance with the provisions of R. To determine whether a given corporate name is "identical" or "confusingly or deceptively similar" with another entity's corporate name. In this connection. it is not enough to ascertain the presence of "Lyceum" or "Liceo" in both names. Whether or not Western Pangasinan Lyceum. SO ORDERED. they are not reasonably regarded as "identical" or "confusingly or deceptively similar" with each other." that institution would have been the Western Pangasinan Lyceum. No. Inc. There may well be other schools using Lyceum or Liceo in their names. We conclude and so hold that petitioner institution is not entitled to a legally enforceable exclusive right to use the word "Lyceum" in its corporate name and that other institutions may use "Lyceum" as part of their corporate names. Western Pangasinan Lyceum should be deemed to have lost all rights it may have acquired by virtue of its past registration.A. Petitioner's use of the word "Lyceum" was not exclusive but was in truth shared with the Western Pangasinan Lyceum and a little later with other private respondent institutions which registered with the SEC using "Lyceum" as part of their corporation names. WHEREFORE. must be deemed to have lost its rights under its original 1933 registration. the petitioner having failed to show any reversible error on the part of the public respondent Court of Appeals. rather than the petitioner institution. No pronouncement as to costs. One must evaluate corporate names in their entirety and when the name of petitioner is juxtaposed with the names of private respondents. petitioner argues that because the Western Pangasinan Lyceum. It might be noted that the Western Pangasinan Lyceum. registered with the SEC soon after petitioner had filed its own registration on 21 September 1950. which records had been destroyed during World War II. Inc. appears to us to be quite secondary in importance. . Inc. Inc.word "Lyceum. but not registered with the SEC because they have not adopted the corporate form of organization.

Lichauco and Manuel M." The trial court (Judge Quirico Abeto) presiding absolved the defendant from the complaint. and as tradename on January 3.10 and in 1938. Cirilo Lim for petitioner." both as a trade-mark and as a trade-name. shoes.petitioner. 1932. P1. Starting in an obscure shop in 1910 with a modest capital of P210 but with tireless industry and unlimited perseverance. J. petitioner. But respondent in his brief says that petitioner "was unable to prove that she had spent a single centavo advertising "Ang Tibay" shirts and pants prior to 1938.56. Neither the decision of the trial court nor that of the Court of Appeals shows how much petitioner has spent or advertisement. has steadily grown with his business to which he has dedicated the best years of his life and which he has expanded to such proportions that his gross sales from 1918 to 1938 aggregated P8. Marcial P.77. with costs against the plaintiff.787.: Petitioner has appealed to this Court by certiorari to reverse the judgment of the Court of Appeals reversing that of the Court of First Instance of Manila and directing the Director of Commerce to cancel the registration of the trade-mark "Ang Tibay" in favor of said Petitioner (defendant below) registered the same trade-mark "Ang Tibay" for pants and shirts on April 11. at first in partnership with Juan Katindig and later as sole proprietor. respondent.133. ANG.641. He formally registered it as trade-mark on September 29.165. His expenses for advertisement from 1919 to 1938 aggregated P210. In the following year (1938) her gross sales amounted to P422.682. The growth of his business is a thrilling epic of Filipino industry and business capacity. and established a factory for the manufacture of said articles in the year 1937. vs. Mejia for respondent. and indoor baseballs since 1910.09. and perpetually enjoining the latter from using said trademark on goods manufactured and sold by her. OZAETA. 1915.299. in the manufacture and sale of slippers. TORIBIO TEODORO. has continuously used "Ang Tibay.65. Toribio Teodoro. His sales in 1937 amounted to P1. Respondent Toribio Teodoro. 1933. on the . then an unknown young man making slippers with his own hands but now a prominent business magnate and manufacturer with a large factory operated with modern machinery by a great number of employees.343. ANA L. In that year she advertised the factory which she had just built and it was when this was brought to the attention of the appellee that he consulted his attorneys and eventually brought the present suit.025.

such as "Holeproof" for hosiery. and the adjectives matibay (strong. counsel for the respondent. respondent's trade-mark has acquired a secondary meaning. in a well-written brief. lasting. contend that the words "Ang Tibay" are not descriptive but merely suggestive and may properly be regarded as fanciful or arbitrary in the legal sense." He contends that the phrase "Ang Tibay" as employed by the respondent on the articles manufactured by him is a descriptive term because. It is also used as an adverb. One does not say. Counsel for the petitioner. 16). and Alex Reyes." On the other hand." He invokes section 2 of Act No. suggestive of the story of sour grapes. The cite several cases in which similar words have been sustained as valid trade-marks. "Anong ganda!" ("How beautiful!"). and in which this Court held that the word "Kananga." From all of this we deduce that "Ang Tibay" is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trade-mark or trade-name. The phrase "Ang Tibay" is an exclamation denoting administration of strength or durability. Tuason." which is the name of a well-known Philippine tree or its flower.katibay-tibayan (superior strength). either by its own meaning or by association. the nouns pagkamatibay (strength." "tobacco. 666.. 1 "ideal for tooth brushes. and that there had been no fraud in the use of the said trade-mark by the defendant because the goods on which it is used are essentially different from those of the plaintiff. durability). durable. Counsel for the petitioner says that the function of a trade-mark is to point distinctively. quality.e. or description of the merchandise cannot be the subject of a trade-mark. lasting). a contraction of the word "anong" (what or how)." or "coffee. that the goods or articles on which the two trade-marks are used are similar or belong to the same class. and that the use by petitioner of said trade-mark constitutes a violation of sections 3 and 7 of Act No. "Ang tibay ng sapatos mo!" (How durable your shoes are!") The phrase "ang tibay" is never used adjectively to define or describe an object. Lopez Vito. one who tries hard but fails to break an object exclaims.. "Ang ganda!" Tibay is a root word from which are derived the verbmagpatibay (to strenghten.kasintibay or magkasintibay (as strong as. For instance. "ang tibay sapatos" or "sapatos ang tibay" is never used adjectively to define or describe an object. support. strength). in an equally well-prepared and exhaustive brief. Padilla. The second division of the Court of Appeals." it means "strong." but "matibay na sapatos" or "sapatos na matibay. "Ang tibay!" (How strong!") It may also be used in a sentence thus. It seems stultifying and puerile for her now to contend otherwise. One does not say. napakatibay (very strong). durable. The word "ang" is a definite article meaning "the" in English. holding that by uninterrupted an exclusive use since 191 in the manufacture of slippers and shoes. The defendant Director of Commerce did not appeal from the decision of the Court of Appeals. makes a frontal sledge-hammer attack on the validity of respondent's trademark "Ang Tibay. could not be appropriated as a trade-mark any more than could the words "sugar. whether they relate to the quality or description of the merchandise to which respondent has applied them as a trade-mark. or of equal strength). we ordinarily say. For instance. Zuazua (5 Phil. First. with Justice Padilla as ponente. which provides that words or devices which related only to the name. instead of saying. composed of Justices Bengson. that there had been no exclusive use of the trade-mark by the plaintiff. katibayan (proof. which involved the trade-mark "Agua de Kananga" used on toilet water. He cites among others the case of Baxter vs. In this connection we do not fail to note that when the petitioner herself took the trouble and expense of securing the registration of these same words as a trademark of her products she or her attorney as well as the Director of Commerce was undoubtedly convinced that said words (Ang Tibay) were not a descriptive term and hence could be legally used and validly registered as a trade-mark. reversed that judgment. "freely translate in English. 2 and "Fashionknit" for neckties and sweaters. i. 666. to the .grounds that the two trademarks are dissimilar and are used on different and non-competing goods. "ang tibay sapatos" or "sapatos ang tibay" to mean "durable shoes. 3 We find it necessary to go into the etymology and meaning of the Tagalog words "Ang Tibay" to determine whether they are a descriptive term.

it is unnecessary to apply here the doctrine of "secondary meaning" in trade-mark parlance. 11. or which to nearly resembles another person's lawful trade-mark or trade-name as to be likely to cause confusion or . it has acquired a proprietary connotation. and 20 of the Trade-Mark Law (Act No. or in any other feature of their appearance. 369. 198 F. and we find that "Ang Tibay.) Third. Universal Cooler Corporation. Petitioner's third assignment of error is. 85 F. The complaining party . & C. and Clark vs. Merriam Co. 666. as in the cases of trade-mark infringement under section 3.) We have said that the phrase "Ang Tibay. Section 11 requires the applicant for registration of a trademark to state. because those articles do not belong to the same class of merchandise as shoes and slippers. She also contends under her fourth assignment of error (which we deem convenient to pass upon together with the third) that there can neither be infringement of trade-mark under section 3 nor unfair competition under section 7 through her use of the words "Ang Tibay" in connection with pants and shirts. shall give them the general appearance of the goods of another either in the wrapping of the packages. the application of the doctrine of secondary meaning made by the Court of Appeals could nevertheless be fully sustained because. [2d]. bearing such trademark . or in the devices or words thereon. may have a preliminary injunction. Frary. "the general class of merchandise to which the trade-mark claimed has been appropriated. Salfield. the word or phrase has come to mean that the article was his product. by respondent's long and exclusive use of said phrase with reference to his products and his business.. was originally capable of exclusive appropriation as a trade-mark. had exactly performed that function for twenty-two years before the petitioner adopted it as a trade-mark in her own business. . in selling his goods. might nevertheless have been used so long and so exclusively by one producer with reference to his article that. (Landers. if the complainant's property in the trade-mark and the defendant's violation thereof shall be fully established. Second. In her second assignment of error petitioner contends that the Court of Appeals erred in holding that the words "Ang Tibay" had acquired a secondary meaning.origin or ownership of the wares to which it is applied.7. . and such injunction upon final hearing. (G. 373. But were it not so. ." Section 7 provides that any person who. in any event. 13. . because geographically or otherwise descriptive. vs. 46.) Section 3 provides that "any person entitled to the exclusive use of a trade-mark to designate the origin or ownership of goods he has made or deals in. That is correct. and shall be liable to an action for damages and to an injunction. ." Section 13 provides that no alleged trade-mark or trade name shall be registered which is identical with a registered or known trade-mark owned by another and appropriate to the same class of merchandise. Ang Tibay shoes and slippers are. In view of the conclusion we have reached upon the first assignment of error. . may recover damages in a civil actions from any person who has sold goods of a similar kind. shall be made perpetual. in that trade and to that branch of the purchasing public." being neither geographic nor descriptive. which would be likely to influence purchasers to believe that the goods offered are those of the complainant. and this injunction shall be part of the judgment for damages to be rendered in the same cause. among others. shall be guilty of unfair competition. The question raised by petitioner involve the scope and application of sections 3. . by association." as used by the respondent to designate his wares. that the Court of Appeals erred in holding that pants and shirts are goods similar to shoes and slippers within the meaning of sections 3 and 7 of Act No. known throughout the Philippines as products of the Ang Tibay factory owned and operated by the respondent Toribio Teodoro. 666. This doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article of the market.

1936 edition." because it is upon their implications that the result of the case hinges. that neither can she be held guilty of unfair competition under section 7 because the use by her of the trade-mark "Ang Tibay" upon pants and shirts is not likely to mislead the general public as to their origin or ownership. They would be considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second user's goods. of the second user's goods. be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be likely to cause confusion as to the origin. could not cause confusion in trade and that. it also provides that "an application for registration of a trademark shall be registered only for one class of articles and only for the particular description of articles mentioned in said application. nor has it acquired a secondary meaning. These phrases. they would. have the same meaning as the phrase "merchandise of the same descriptive properties" used in the statutes and jurisprudence of other jurisdictions. Its growth or development abreast with that of sister statutes and jurisprudence in other jurisdictions is reflected in the following observation of a well-known author: This fundamental change in attitude first manifested itself in the year 1915-1917. Unfair Competition. that pants and shirts do not possess the same descriptive properties as shoes and slippers. therefore. there could be no objection to the use and registration of a well-known mark by a third party for a different class of goods. Our Trade-mark Law. And section 2 authorizes the Director of Commerce to establish classes of merchandise for the purpose of the registration of trade-marks and to determine the particular description of articles included in each class.mistake in the mind of the public. the test employed by the courts to determine whether noncompeting goods are or are not of the same class is confusion as to the origin of the goods of the second user. we might uphold petitioner's contentions. has grown in its implications and practical application. which refer to the same thing. when it was enacted. The burden of petitioner's argument is that under sections 11 and 20 the registration by respondent of the trade-mark "Ang Tibay" for shoes and slippers is no safe-guard against its being used by petitioner for pants and shirts because the latter do not belong to the same class of merchandise or articles as the former. Until about then. and Unfair Trading. It is not of merely local application. like a constitution. or personal source. p. Trade-Mark Protection & Unfair Trading. (Derenberg." "general class of merchandise. in virtue of the life continually breathed into it. or to deceive purchasers. that she cannot be held guilty of infringement of trade-mark under section 3 because respondent's mark is not a valid trade-mark." and "class of articles. nevertheless. We have to apply this law as it has grown and not as it was born.) In the present state of development of the law on Trade-Marks. enacted nearly forty years ago." "same class of merchandise. . there was generally the hidden intention to "have a free ride" on the trade-mark owner's reputation and good will. Although two noncompeting articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties. If we were interpreting the statute for the first time and in the first decade of the twentieth century. But law and jurisprudence must keep abreast with the progress of mankind. Since 1916 however. used on un-like goods. it has its counterpart in other jurisdictions of the civilized world from whose jurisprudence it has also received vitalizing nourishment. and the courts must breathe life into the statutes if they are to serve their purpose. and were to construe it strictly and literally. and that there is now showing that she in unfairly or fraudulently using that mark "Ang Tibay" against the respondent." We have underlined the key words used in the statute: "goods of a similar kin. 409. the courts had proceeded on the theory that the same trade-mark. a growing sentiment began to arise that in the selection of a famous mark by a third party." "classes of merchandise.

S. [2d]." originally used on flour. [2d]. Inc." for medicines and toilet articles." for sanitary napkins. (3) The case of Aunt Jemima Mills Co. wherein the court held that gin and canned milk and cream do not belong to the same class. Popular Mechanics Co. against its use for razor blades. (264 N.. are so related as to fall within the mischief which equity should prevent. (2) Fawcett Publications. As trade has developed and commercial changes have come about. and there the court held that the goods. decided by this Court on April 18. 11lawphil. vs. vs. (44 F. because the word "mechanics" is merely a descriptive name. they having been originally used by the respondent for soap.. it is done to get the benefit of the reputation and advertisements of the originator of said mark. 10 and "Waterman. (247 F. they are similar or belong to the same class. 688). the industry of counsel for the petitioner has enabled him to cite on this point only the following cases: (1) Mohawk Milk Products vs. against its use for hats. which the defendant attempted to use on syrup. Lincoln Automobile Co." for automobiles. and (3) Oxford Book Co. by having his business reputation confused with and put at the mercy of the second user. 46817).. the law of unfair competition has expanded to keep pace with the times and the element of strict competition in itself has ceased to be the determining factor. from using the name "Tiffany." for fountain pens. 1941. 23 Trade-mark Reporter.R." for raisins. (80 F. The modern trend is to give emphasis to the unfairness of the acts and to classify and treat the issue as a fraud. Then noncompetitive products are sold under the same mark. [2d]." for locks and keys. a jewelry concern. 812). 5 "Rolls-Royce." Other famous cases cited on the margin. a manufacturer of motion pictures. wherein the court held that the words "Popular Mechanics" used as the title of a magazine and duly registered as a trade-mark were not infringed by defendant's use of the words "Modern Mechanics and Inventions" on a competitive magazine. vs. the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark created by its first user. vs.Y. Tiffany Productions. 183). against its use for cigars. though different. wherein the plaintiff . the respondent company (plaintiff below) was granted injunctive relief against the use by the petitioner of the trade-mark "Lux" and "Lifebuoy" for hair pomade. 7 "Kotex. against its use for bicycles. The courts have come to realize that there can be unfair competition or unfair trading even if the goods are noncompeting. against its use for radio tubes. 334). 6 "Vogue. was granted injunctive relief against the defendant. and that such unfair trading can cause injury or damage to the first user of a given trade-mark. by prevention of the natural expansion of his business and. the plaintiff." as the name of a magazine. the manufacturer of the well-known Lincoln automobile was granted injunctive relief against the use of the word "Lincoln" by another company as part of its firm name. Experience has demonstrated that when a well-known trade-mark is adopted by another even for a totally different class of goods. 459. wherein the courts granted injunctive relief. involved the trade-mark "Aunt Jemima." for cameras and photographic supplies. (4) In Tiffany & Co. Level Brothers Company (G. (2) In Lincoln Motor Co. to convey to the public a false impression of some supposed connection between the manufacturer of the article sold under the original mark and the new articles being tendered to the public under the same or similar mark. since there is damage to him from confusion of reputation or goodwill in the mind of the public as well as from confusion of goods. [2d]. first. inevitably results. A few of the numerous cases in which the foregoing doctrines have been laid down in one form or another will now be cited: (1) In Teodoro Kalaw Ng Khe vs. The original owner is entitled to the preservation of the valuable link between him and the public that has been created by his ingenuity and the merit of his wares or services. 194). The Court held in effect that although said articles are noncompetitive. 407). General Distilleries Corporation (95 F. vs.Such construction of the law is induced by cogent reasons of equity and fair dealing. (98 F. 8 "Sun-Maid. against the use of "Rotex" for vaginal syringes. against its use for flour. Inc. 4 "Penslar. involved the following trade-marks or trade-names: "Kodak. Rigney & Co. College Entrance Book Co. against its use for electric flashlights. No. 9 "Yale. second. The owner of a trade-mark or trade-name has a property right in which he is entitled to protection.net Against this array of famous cases.

without meaning to be harsh. with costs against the petitioner in the three instances. and hence there is no excuse for impinging upon or even closely approaching the mark of a business rival.unsuccessfully attempted to enjoin the defendant from using the word "Visualized" in connection with history books. So ordered. These cases cites and relied upon by petitioner are obviously of no decisive application to the case at bar. The Court of Appeals found in this case that by uninterrupted and exclusive use since 1910 of respondent's registered trade-mark on slippers and shoes manufactured by him. It is certainly not farfetched to surmise that the selection by petitioner of the same trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent. it has come to indicate the origin and ownership of said goods. As observed in another case." We think such practice would be unethical and unworthy of a reputable businessman. . We think reasonable men may not disagree that shoes and shirts are not as unrelated as fountain pens and razor blades. To the suggestion of petitioner. in her fifth assignment of error petitioner seems to make a frantic effort to retain the use of the mark "Ang Tibay. not without justice though with a tinge of bitterness: "Why offer a perpetual apology or explanation as to the origin of your products in order to use my trademark instead of creating one of your own?" On our part may we add. The judgment of the Court of Appeals is affirmed. that a self-respecting person does not remain in the shelter of another but builds one of his own." Her counsel suggests that instead of enjoining her from using it. 12 the field from which a person may select a trade-mark is practically unlimited. she may be required to state in her labels affixed to her products the inscription: "Not manufactured by Toribio Teodoro. As may readily be noted from what we have heretofore said. the court holding that said word is merely descriptive. for instance. The mere relation or association of the articles is not controlling. In the unlimited field of choice. what could have been petitioner's purpose in selecting "Ang Tibay" if not for its fame? Lastly. the proprietary connotation that a trade-mark or trade-name has acquired is of more paramount consideration. respondent may say.