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G.R. No.

138900 September 20, 2005
LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC.,
Petitioners,
vs.
CLINTON APPARELLE, INC., Respondent.
DECISION
Tinga, J.:
Before us is a petition for review on certiorari1 under Rule 45 of the
1997 Rules of Civil Procedure filed by Levi Strauss & Co. (LS & Co.)
and Levi Strauss (Philippines), Inc. (LSPI) assailing the Court of
Appeals’ Decision2 and Resolution3 respectively dated 21
December 1998 and 10 May 1999. The questioned Decision
granted respondent’s prayer for a writ of preliminary injunction in
its Petition4 and set aside the trial court’s orders dated 15 May
19985 and 4 June 19986 which respectively granted petitioners’
prayer for the issuance of a temporary restraining order (TRO) and
application for the issuance of a writ of preliminary injunction.
This case stemmed from the Complaint7 for Trademark
Infringement, Injunction and Damages filed by petitioners LS & Co.
and LSPI against respondent Clinton Apparelle, Inc.* (Clinton
Aparelle) together with an alternative defendant, Olympian
Garments, Inc. (Olympian Garments), before the Regional Trial
Court of Quezon City, Branch 90.8 The Complaint was docketed as
Civil Case No. Q-98-34252, entitled "Levi Strauss & Co. and Levi
Strauss (Phils.), Inc. v. Clinton Aparelle, Inc. and/or Olympian
Garments, Inc."
The Complaint alleged that LS & Co., a foreign corporation duly
organized and existing under the laws of the State of Delaware,
U.S.A., and engaged in the apparel business, is the owner by prior
adoption and use since 1986 of the internationally famous
"Dockers and Design" trademark. This ownership is evidenced by
its valid and existing registrations in various member countries of
the Paris Convention. In the Philippines, it has a Certificate of
Registration No. 46619 in the Principal Register for use of said

trademark on pants, shirts, blouses, skirts, shorts, sweatshirts and
jackets under Class 25.9
The "Dockers and Design" trademark was first used in the
Philippines in or about May 1988, by LSPI, a domestic corporation
engaged in the manufacture, sale and distribution of various
products bearing trademarks owned by LS & Co. To date, LSPI
continues to manufacture and sell Dockers Pants with the "Dockers
and Design" trademark.10
LS & Co. and LSPI further alleged that they discovered the
presence in the local market of jeans under the brand name
"Paddocks" using a device which is substantially, if not exactly,
similar to the "Dockers and Design" trademark owned by and
registered in the name of LS & Co., without its consent. Based on
their information and belief, they added, Clinton Apparelle
manufactured and continues to manufacture such "Paddocks"
jeans and other apparel.
However, since LS & Co. and LSPI are unsure if both, or just one of
impleaded defendants are behind the manufacture and sale of the
"Paddocks" jeans complained of, they brought this suit under
Section 13, Rule 311 of the 1997 Rules of Civil Procedure.12
The Complaint contained a prayer that reads as follows:
1. That upon the filing of this complaint, a temporary restraining
order be immediately issued restraining defendants, their officers,
employees, agents, representatives, dealers, retailers or assigns
from committing the acts herein complained of, and, specifically,
for the defendants, their officers, employees, agents,
representatives, dealers and retailers or assigns, to cease and
desist from manufacturing, distributing, selling, offering for sale,
advertising, or otherwise using denims, jeans or pants with the
design herein complained of as substantially, if not exactly similar,
to plaintiffs’ "Dockers and Design" trademark.
2. That after notice and hearing, and pending trial on the merits, a
writ of preliminary injunction be issued enjoining defendants, their
officers, employees, agents, dealers, retailers, or assigns from
manufacturing, distributing, selling, offering for sale, advertising,

jeans the design herein complained of as substantially, if not
exactly similar, to plaintiffs’ "Dockers and Design" trademark.
3. That after trial on the merits, judgment be rendered as follows:
a. Affirming and making permanent the writ of preliminary
injunction;
b. Ordering that all infringing jeans in the possession of either or
both defendants as the evidence may warrant, their officers,
employees, agents, retailers, dealers or assigns, be delivered to
the Honorable Court of plaintiffs, and be accordingly destroyed; 13
Acting on the prayer for the issuance of a TRO, the trial court
issued an Order14 setting it for hearing on 5 May 1998. On said
date, as respondent failed to appear despite notice and the other
defendant, Olympian Garments, had yet to be notified, the hearing
was re-scheduled on 14 May 1998.15
On 14 May 1998, neither Clinton Apparelle nor Olympian Garments
appeared. Clinton Apparelle claimed that it was not notified of such
hearing. Only Olympian Garments allegedly had been issued with
summons. Despite the absence of the defendants, the hearing on
the application for the issuance of a TRO continued. 16
The following day, the trial court issued an Order17 granting the
TRO applied for, the pertinent portions of which state:
…Considering the absence of counsel/s for the defendant/s during
the summary hearing scheduled on May 5, 1998 and also during
the re-scheduled summary hearing held on May 14, 1998 set for
the purpose of determining whether or not a Temporary Restraining
Order shall be issued, this Court allowed the counsel for the
plaintiffs to present on May 14, 1998 their arguments/evidences in
support of their application. After hearing the arguments presented
by the counsel for the plaintiffs during the summary hearing, this
Court is of the considered and humble view that grave injustice
and irreparable injury to the plaintiffs would arise before the matter
of whether or not the application for the issuance of a Writ of
Preliminary Injunction can be heard, and that, in the interest of
justice, and in the meantime, a Temporary Restraining Order be
issued.

WHEREFORE, let this Temporary Restraining Order be issued
restraining the defendants, their officers, employees, agents,
representatives, dealers, retailers or assigns from committing the
acts complained of in the verified Complaint, and specifically, for
the defendants, their officers, employees, agents, representatives,
dealers and retailers or assigns, to cease and desist from
manufacturing, distributing, selling, offering for sale, advertising or
otherwise using denims, jeans or pants with the design complained
of in the verified Complaint as substantially, if not exactly similar,
to plaintiffs’ "Dockers and Design" trademark; until after the
application/prayer for the issuance of a Writ of Preliminary
Injunction is heard/resolved, or until further orders from this Court.
The hearing on the application for the issuance of a Writ of
Preliminary Injunction as embodied in the verified Complaint is set
on May 26, 1998 (Tuesday) at 2:00 P.M. which setting is
intransferable in character considering that the lifetime of this
Temporary Restraining Order is twenty (20) days from date
hereof.18
On 4 June 1998, the trial court issued another Order19 granting the
writ of preliminary injunction, to wit:
ORDER
This resolves the plaintiffs’ application or prayer for the issuance of
a writ of preliminary injunction as embodied in the verified
complaint in this case. Parenthetically, this Court earlier issued a
temporary restraining order. (see Order dated May 15, 1998; see
also Order dated May 26, 1998)
After a careful perusal of the contents of the pleadings and
documents on record insofar as they are pertinent to the issue
under consideration, this Court finds that at this point in time, the
plaintiffs appear to be entitled to the relief prayed for and this
Court is of the considered belief and humble view that, without
necessarily delving on the merits, the paramount interest of justice
will be better served if the status quo shall be maintained and that
an injunction bond of P2,500,000.00 appears to be in order. (see
Sections 3 and 4, Rule 58, 1997 Rules of Civil Procedure)

IN VIEW OF THE FOREGOING, the plaintiffs’ prayer for the issuance
of a writ of preliminary injunction is GRANTED. Accordingly, upon
the plaintiffs’ filing, within ten (10) days from their receipt hereof,
an injunction bond of P2,500,000.00 executed to the defendants to
the effect that the plaintiffs will pay all damages the defendants
may sustain by reason of this injunction in case the Court should
finally decide that the plaintiffs are not entitled thereto, let a writ of
preliminary injunction issue enjoining or restraining the
commission of the acts complained of in the verified Complaint in
this case, and specifically, for the defendants, their officers,
employees, agents, representatives, dealers and retailers or
assigns or persons acting in their behalf to cease and desist from
manufacturing, distributing, selling, offering for sale, advertising,
or otherwise using, denims, jeans or pants with the design
complained of in the verified Complaint in this case, which is
substantially, if not exactly, similar to plaintiffs’ "DOCKERS and
DESIGN" trademark or logo as covered by the Bureau of Patents,
Trademarks and Technology Transfer Certificate of Registration No.
46619, until after this case shall have been decided on the merits
and/or until further orders from this Court.20
The evidence considered by the trial court in granting injunctive
relief were as follows: (1) a certified true copy of the certificate of
trademark registration for "Dockers and Design"; (2) a pair of
DOCKERS pants bearing the "Dockers and Design" trademark; (3) a
pair of "Paddocks" pants bearing respondent’s assailed logo; (4)
the Trends MBL Survey Report purportedly proving that there was
confusing similarity between two marks; (5) the affidavit of one
Bernabe Alajar which recounted petitioners’ prior adoption, use
and registration of the "Dockers and Design" trademark; and (6)
the affidavit of one Mercedes Abad of Trends MBL, Inc. which
detailed the methodology and procedure used in their survey and
the results thereof.21
Clinton Apparelle thereafter filed a Motion to Dismiss22 and a
Motion for Reconsideration23 of the Order granting the writ of
preliminary injunction. Meantime, the trial court issued an Order24
approving the bond filed by petitioners.
On 22 June 1998, the trial court required 25 the parties to file their
"respective citation of authorities/ jurisprudence/Supreme Court
decisions" on whether or not the trial court may issue the writ of

preliminary injunction pending the resolution of the Motion for
Reconsideration and the Motion to Dismiss filed by respondent.
On 2 October 1998, the trial court denied Clinton Apparelle’s
Motion to Dismiss and Motion for Reconsideration in an Omnibus
Order,26 the pertinent portions of which provide:
After carefully going over the contents of the pleadings in relation
to pertinent portions of the records, this Court is of the considered
and humble view that:
On the first motion, the arguments raised in the plaintiffs’
aforecited Consolidated Opposition appears to be meritorious. Be
that as it may, this Court would like to emphasize, among other
things, that the complaint states a cause of action as provided
under paragraphs 1 to 18 thereof.
On the second motion, the arguments raised in the plaintiffs’
aforecited Consolidated Opposition likewise appear to be
impressed with merit. Besides, there appears to be no strong and
cogent reason to reconsider and set aside this Court’s Order dated
June 4, 1998 as it has been shown so far that the trademark or
logo of defendants is substantially, if not exactly, similar to
plaintiffs’ "DOCKERS and DESIGN" trademark or logo as covered by
BPTTT Certificate of Registration No. 46619 even as the BPTTT
Certificate of Registration No. 49579 of Clinton Apparelle, Inc. is
only for the mark or word "PADDOCKS" (see Records, p. 377) In any
event, this Court had issued an Order dated June 18, 1998 for the
issuance of the writ of preliminary injunction after the plaintiffs
filed the required bond of P2,500,000.00.
IN VIEW OF THE FOREGOING, the aforecited Motion To Dismiss and
Motion For Reconsideration are both DENIED for lack of merit, and
accordingly, this Court’s Order dated June 18, 1998 for the
issuance of the writ of preliminary injunction is REITERATED so the
writ of preliminary injunction could be implemented unless the
implementation thereof is restrained by the Honorable Court of
Appeals or Supreme Court.
The writ of preliminary injunction was thereafter issued on 8
October 1998.27

The appellate court rendered on 21 December 1998 its now assailed Decision granting Clinton Apparelle’s petition. At issue is whether the issuance of the writ of preliminary injunction by the trial court was proper and whether the Court of Appeals erred in setting aside the orders of the trial court. (2) in holding that there was no confusion between the two marks. the Court of Appeals issued a Resolution29 requiring herein petitioners to file their comment on the Petition and at the same time issued the prayed-for temporary restraining order.31 In addition. There is no merit in the petition. 35 It is . herein petitioners failed to sufficiently establish its material and substantial right to have the writ issued. 30 The Court of Appeals also held that the issuance of the writ of preliminary injunction is questionable. and (5) in declaring that the preliminary injunction issued by the trial court will lead to the closure of respondent’s business. The Court of Appeals thus set aside the orders of the trial court dated 15 May 1998 and 4 June 1998. a final judgment shall be rendered in their favor. the Court of Appeals strongly believed that the implementation of the questioned writ would effectively shut down respondent’s business. Section 1. if after trial. The Court of Appeals remarked that affidavits taken ex-parte are generally considered to be inferior to testimony given in open court. injunction is designed to preserve or maintain the status quo of things and is generally availed of to prevent actual or threatened acts until the merits of the case can be heard. With the denial of their Motion for Reconsideration. (3) in ruling that the erosion of petitioners’ trademark is not protectable by injunction. and LSPI claim that the Court of Appeals committed serious error in: (1) disregarding the welldefined limits of the writ of certiorari that questions on the sufficiency of evidence are not to be resolved in such a petition. Rule 58 of the Rules of Court defines a preliminary injunction as an order granted at any stage of an action prior to the judgment or final order requiring a party or a court. which in its opinion should not be sanctioned. Thus. (4) in ignoring the procedure previously agreed on by the parties and which was adopted by the trial court. are issues not within the ambit of a petition for review on certiorari under Rule 45.32 petitioners are now before this Court seeking a review of the appellate court’s Decision and Resolution. In its opinion. Clinton Apparelle filed with the Court of Appeals a Petition28 for certiorari. It believes that the issued writ in effect disturbed the status quo and disposed of the main case without trial. On 20 October 1998. agency or a person to refrain from a particular act or acts. respectively issuing a temporary restraining order and granting the issuance of a writ of preliminary injunction. assailing the orders of the trial court dated 15 May 1998. the Court of Appeals observed that the survey presented by petitioners to support their contentions was commissioned by petitioners. and only upon full conviction on the part of the court of its extreme necessity. LS & Co. Clinton Apparelle also contends that the Court of Appeals acted correctly when it overturned the writ of preliminary injunction issued by the trial court.34 It may be resorted to only by a litigant for the preservation or protection of his rights or interests and for no other purpose during the pendency of the principal action. prohibition and mandamus with prayer for the issuance of a temporary restraining order and/or writ of preliminary injunction. and (c) finding that the erosion of petitioners’ trademark may not be protected by injunction.33 Clinton Apparelle maintains that only questions of law may be raised in an appeal by certiorari under Rule 45 of the Rules of Court. the Court of Appeals ruled that the TRO had been improperly issued. It asserts that the question of whether the Court of Appeals erred in: (1) disregarding the survey evidence. An extraordinary remedy. In its Comment. 4 June 1998 and 2 October 1998. Injunction is accepted as the strong arm of equity or a transcendent remedy to be used cautiously as it affects the respective rights of the parties. The Court of Appeals held that the trial court did not follow the procedure required by law for the issuance of a temporary restraining order as Clinton Apparelle was not duly notified of the date of the summary hearing for its issuance.Thus. (2) ruling that there was no confusion between the two marks. Secondly. The appellate court also considered that the injury petitioners have suffered or are currently suffering may be compensated in terms of monetary consideration.

a clear and positive right especially calling for judicial protection must be shown. – A preliminary injunction may be granted when it is established: (a) That the applicant is entitled to the relief demanded. Injunction is not a remedy to protect or enforce contingent. or future rights. a scrutiny must be made of the bases. The exercise of discretion by the trial court in injunctive matters is generally not interfered with save in cases of manifest abuse. or non-performance of the act or acts complained of during the litigation would probably work injustice to the applicant. and only in cases of great injury where there is no commensurate remedy in damages.38 There are generally two kinds of preliminary injunction: (1) a prohibitory injunction which commands a party to refrain from doing a particular act. considered by the trial court in granting injunctive relief. this discretion must be exercised based upon the grounds and in the manner provided by law. or is procuring or suffering to be done. uses the "Paddocks" word mark on top of a logo which according to .resorted to only when there is a pressing necessity to avoid injurious consequences. either for a limited period or perpetually. However. (b) That the commission. the registrant’s ownership of the mark and of the exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. or is attempting to do. some act or acts probably in violation of the rights of the applicant respecting the subject of the action or proceeding. Trademarks and Technology Transfer.37 There must be a patent showing by the complaint that there exists a right to be protected and that the acts against which the writ is to be directed are violative of said right. attention should be given to the fact that petitioners’ registered trademark consists of two elements: (1) the word mark "Dockers" and (2) the wing-shaped design or logo. threatening. 42 this Certificate of Registration is prima facie evidence of the validity of the registration. Be it stressed that injunction is the strong arm of equity which must be issued with great caution and deliberation. Under the cited provision. we find that there was scant justification for the issuance of the writ of preliminary injunction. if any. There must exist an actual right. While the matter of the issuance of a writ of preliminary injunction is addressed to the sound discretion of the trial court.36 Section 3. Grounds for issuance of preliminary injunction. * According to Section 138 of Republic Act No. it will not issue to protect a right not in esse and which may never arise. continuance. 3.41 In the present case. of the Rules of Court enumerates the grounds for the issuance of a preliminary injunction: SEC. abstract. Section 147. court. there is only one registration for both features of the trademark giving the impression that the two should be considered as a single unit. on the other hand. and tending to render the judgment ineffectual. or (c) That a party. or in requiring the performance of an act or acts. Rule 58. The resolution of an application for a writ of preliminary injunction rests upon the existence of an emergency or of a special recourse before the main case can be heard in due course of proceedings. which cannot be remedied under any standard compensation.39 The Court of Appeals did not err in reviewing proof adduced by petitioners to support its application for the issuance of the writ. 8293.40 And to determine whether there was abuse of discretion. Clinton Apparelle’s trademark. and the whole or part of such relief consists in restraining the commission or continuance of the act or acts complained of. or to restrain an act which does not give rise to a cause of action. Notably.1 of said law likewise grants the owner of the registered mark the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered if such use results in a likelihood of confusion. and (2) a mandatory injunction which commands the performance of some positive act to correct a wrong in the past. Petitioners anchor their legal right to "Dockers and Design" trademark on the Certificate of Registration issued in their favor by the Bureau of Patents. agency or a person is doing.

From the above discussion.petitioners is a slavish imitation of the "Dockers" design. to be eligible for protection from dilution. the right to prevent the latter from using the challenged "Paddocks" device is far from clear. It could thus be said that respondent only "appropriates" petitioners’ logo and not the word mark "Dockers". without necessarily delving on the merits. The right has yet to be determined." This is intended to protect famous marks from subsequent uses that blur distinctiveness of the mark or tarnish or disparage it. it is not evident whether the single registration of the trademark "Dockers and Design" confers on the owner the right to prevent the use of a fraction thereof in the course of trade. Inc. Similarly. Petitioners also failed to show proof that there is material and substantial invasion of their right to warrant the issuance of an injunctive writ.. it uses only a portion of the registered trademark and not the whole. contrary to our ruling in University of the Philippines v. Catungal Jr. as opposed to the word mark. to simply say that it . The Court also finds that the trial court’s order granting the writ did not adequately detail the reasons for the grant. and (3) such subsequent use defames petitioners’ mark. this statement falls short of the requirement laid down by the above-quoted case. there has to be a finding that: (1) the trademark sought to be protected is famous and distinctive. in its order granting the writ. Utmost care in this regard is demanded. (2) the use by respondent of "Paddocks and Design" began after the petitioners’ mark became famous. They assert that a trademark owner does not have to wait until the mark loses its distinctiveness to obtain injunctive relief. In the case at bar. or (2) likelihood of confusion. It is likewise not settled whether the wing-shaped logo. It is also unclear whether the use without the owner’s consent of a portion of a trademark registered in its entirety constitutes material or substantial invasion of the owner’s right. 44 Based on the foregoing. is the dominant or central feature of petitioners’ trademark—the feature that prevails or is retained in the minds of the public—an imitation of which creates the likelihood of deceiving the public and constitutes trademark infringement. Neither were petitioners able to show any urgent and permanent necessity for the writ to prevent serious damage. we find that petitioners’ right to injunctive relief has not been clearly and unmistakably demonstrated. petitioners have yet to establish whether "Dockers and Design" has acquired a strong degree of distinctiveness and whether the other two elements are present for their cause to fall within the ambit of the invoked protection.46 The trial court in granting the injunctive relief tersely ratiocinated that "the plaintiffs appear to be entitled to the relief prayed for and this Court is of the considered belief and humble view that. The two trademarks apparently differ in their word marks ("Dockers" and "Paddocks"). Court of Appeals. Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services. v. there are vital matters which have yet and may only be established through a full-blown trial. urging that the erosion or dilution of their trademark is protectable. mistake or deception. The Trends MBL Survey Report which petitioners presented in a bid to establish that there was confusing similarity between two marks is not sufficient proof of any dilution that the trial court must enjoin. Hon. the paramount interest of justice will be better served if the status quo shall be maintained.47 we held that it was "not enough" for the trial court." Clearly. Stated otherwise. and that the mere use by an infringer of a registered mark is already actionable even if he has not yet profited thereby or has damaged the trademark owner. but again according to petitioners. they employ similar or identical logos. if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark. the owner of a famous mark is entitled to an injunction "against another person’s commercial use in commerce of a mark or trade name. Subject to the principles of equity. 45 wherein we held that: The trial court must state its own findings of fact and cite particular law to justify grant of preliminary injunction. Petitioners wish to impress upon the Court the urgent necessity for injunctive relief. in Developers Group of Companies. Given the single registration of the trademark "Dockers and Design" and considering that respondent only uses the assailed device but a different word mark. regardless of the presence or absence of: (1) competition between the owner of the famous mark and other parties.43 In sum.

and where facts are not shown to bring the case within these conditions. Due process simply means giving every contending party the opportunity to be heard and the court to consider every piece of evidence presented in their favor. SO ORDERED. we believe that such reflection is necessary to weigh the alleged entitlement to the writ vis-à-vis its possible effects.52 rejected a claim of denial of due process where such claimant was given the opportunity to be heard." In addition. An exercise of caution. TINGA Associate Justice WE CONCUR: . And in applications for preliminary injunction. That matter remains to be decided on by the trial court.. Calimag. if allowed. inadequacy of pecuniary estimation and the prevention of the multiplicity of suits. As held in Government Service Insurance System v. Florendo:48 …a writ of injunction should never have been issued when an action for damages would adequately compensate the injuries caused. Accordingly. Due process. we believe the Court of Appeals overstepped its authority when it declared that the "alleged similarity as to the two logos is hardly confusing to the public. Costs against petitioners. DANTE O. in essence. Finally. having submitted his counteraffidavit and memorandum in support of his position.53 After a careful consideration of the facts and arguments of the parties. we have no contention against the procedure adopted by the trial court in resolving the application for an injunctive writ and we believe that respondent was accorded due process.51 Parenthetically. which remains to be decided by the trial court. The injunction issued in the instant case is of a serious nature as it tends to do more than to maintain the status quo. is simply an opportunity to be heard. we agree with the Court of Appeals in its holding that the damages the petitioners had suffered or continue to suffer may be compensated in terms of monetary consideration. it being a hornbook doctrine that a formal or trial-type hearing is not at all times and in all instances essential to due process.50 There would be a prejudgment of the main case and a reversal of the rule on the burden of proof since it would assume the proposition which petitioners are inceptively bound to prove. we find no flaw in the Court of Appeals’ disquisition on the consequences of the issued injunction. The prevailing rule is that courts should avoid issuing a writ of preliminary injunction that would in effect dispose of the main case without trial. WHEREFORE. Then again. The very foundation of the jurisdiction to issue the writ of injunction rests in the probability of irreparable injury. The Decision of the Court of Appeals dated 21 December 1998 and its Resolution dated 10 May 1999 are AFFIRMED. the relief of injunction should be refused. would dispose of the case on the merits as it would effectively enjoin the use of the "Paddocks" device without proof that there is basis for such action. the requirement of hearing and prior notice before injunction may issue has been relaxed to the point that not all petitions for preliminary injunction must undergo a trial-type hearing. 49 We also believe that the issued injunctive writ. the Court of Appeals was correct in setting aside the assailed orders of the trial court. Jr. In the absence of proof of a legal right and the injury sustained by the applicant. 54 Conformably. this Court has in the case of Co v. the instant petition is DENIED. the Court finds that petitioners did not adequately prove their entitlement to the injunctive writ." The only issue brought before the Court of Appeals through respondent’s Petition under Rule 65 of the Rules of Court involved the grave abuse of discretion allegedly committed by the trial court in granting the TRO and the writ of preliminary injunction. In fact.appeared "after hearing that plaintiff is entitled to the relief prayed for. the assailed injunction if sustained would bring about the result desired by petitioners without a trial on the merits. In our view. it was premature for the Court of Appeals to declare that there is no confusion between the two devices or logos. The appellate court in making such a statement went beyond that issue and touched on the merits of the infringement case. an order of the trial court granting the issuance of an injunctive writ will be set aside for having been issued with grave abuse of discretion.

pp. Rollo. 5 CA Rollo. Associate Justice Chairman. at 104-142.REYNATO S. and concurred in by Associate Justices Salome A. ALICIA AUSTRIA-MARTINEZ. pp. 7 It calls itself Clinton Apparel. PUNO 8 The case was filed on 30 April 1998. Dated 29 April 1998. * REYNATO S. at 727-728. p. p. it is hereby certified that the conclusions in the above Decision had been reached in consultation before the case was assigned to the writer of the opinion of the Court’s Division. Alternative defendants. Associate Justice Associate Justice MINITA V. 42. RTC Records. ROMEO J. and the Division Chairman’s Attestation. Dated 6 July 1999. at 41-42. 26-91. Montoya and Ruben T. SR. 41. at 93-101. although a right to relief against one may be inconsistent with a right of relief against the other. pp. Inc. Id. Bello. 4 RTC Records. CALLEJO. PUNO Footnotes Associate Justice 1 Chairman 2 MA. pp. CHICO-NAZARIO Associate Justice ATTESTATION I attest that the conclusions in the above Decision were reached in consultation before the case was assigned to the writer of the opinion of the Court’s Division. 3 Id. Second Division 9 Rollo. pp. 13. 13 Chief Justice Rollo. 15 . 6 RTC Records. 1-9. 94. 14 Id. 94. Jr. p. Rollo. – Where the plaintiff is uncertain against who of several persons he is entitled to relief. 7-8. Reyes. Penned by Associate Justice Eloy R. Id. at 103. 12 HILARIO G. p. Rollo. DAVIDE. 378. he may join any or all of them as defendants in the alternative. JR. Article VIII of the Constitution. Id. 10 CERTIFICATION SEC. 11 Pursuant to Section 13. Dated 4 May 1998. 29-31. 79.

Q. 338 Phil. 20 Toyota Motor Phils. * Otherwise known as the "Intellectual Property Code of the Philippines. Id. 1996). pp. 83-84. p. 749-750. 29 September 1989. Republic of the Philippines v.R. 28 Id. P. Now called Intellectual Property Office. 35 19 Ibid. at 85-86. Toyota Motor Phils. No. supra note 35. pp. 728. Dated 5 June 1998. 27 CA Rollo. supra note 35 at 89. Corporation Workers’ Association (TMPCWA) v. 728. 678. 95 Phil. RTC Records. 743 (1997). at 117-118.R. 302-303 (1997). 418-424.. 32 Rollo. Dated 11 January 1999. 494. Id. Dated 12 October 1998. Dated 18 October 1999. 24 September 2003. Dated 5 June 1998. id. No. 1251-1268. pp. 2-40. 29 Rollo. 344 Phil. 5 (1954). 17 Ibid. 48603. 417. 38 37 21 22 CA Rollo. 601-628. 288. Dated 18 June 1998. Government Service Insurance System v. Jr.. G. 2d (BNA) 1836 (N. No.R. Government Service Insurance System v. at 577. Vera. Judge Villarama. 40 24 25 Herrera. 66-71. 27 February 1989. 83558. p. 31 See Co Tiong Sa v. 33 338 Phil. pp... Catungal. Cal. at 95. 85-86. pp. Court of Appeals. 412 SCRA 69. 98. 743 (1997). 43 Toys "R" Us v. at 495. G. Court of Appeals. 23 Government Service Insurance System v. G. 40 U." 42 30 Id.S. at 103. p. 148924. Corporation Workers’ Association (TMPCWA) v. Director of Patents.Id. Florendo. Florendo.. p. 44 CA Rollo. 18 RTC Records. RTC Records. 34 Id. Remedial Law (1999 Edition) 71. at 576. Akkaoui. 79. Hon. at 99-100. 1. 727. 45 Id. 46 . National Power Corporation v. Jr. 41 Id. 178 SCRA 76. Florendo. 36 Rollo.D. 39 In an Order of even date. In a Resolution dated 10 May 1999. id. 26 University of the Philippines v. 170 SCRA 721. Oscar M. 16 RTC Records.

supra note 35 at 87. 629. supra. See Co.R. 47 Government Service Insurance System v. Court of Appeals. supra note 35. 50 Id. 55 (2001). v. Judge Calimag. G.. No. 283 SCRA 275 (1997) and Ginete v. Bitanga. Court of Appeals. 296 SCRA 38 (1998). 15 August 2001. 394-395 (2000). Balatbat.R. 52 Batangas Laguna Tayabas Bus Co. No. 415 Phil. v. 43. 31 March 1992. 130360. Court of Appeals. G. 207 SCRA 622. 154.R. Florendo. Florendo. 53 See Ong Ching Kian Chuan v. 48 Government Service Insurance System v. NLRC. 941. 389. 104583. 64220. 363 SCRA 145. 54 G.R. 36 Phil. at 630. 180073 November 25. Inc. 8 March 1993. 721. citing NFL v. No. 51 389 Phil. 947 (1917) 49 Searth Commodities Corp. See Golding v. No.G. v. 2009 . 219 SCRA 715.

praying that the latter cease and desist from using the brand PCO-GENOLS for being confusingly similar with respondent’s trademark PYCNOGENOL. petitioner discontinued the use of. The trademark PYCNOGENOL of the plaintiff is duly registered with the Intellectual Property Office but not with the Bureau of Food and Drug (BFAD). a food supplement sold and distributed by Zuellig Pharma Corporation. HORPHAG RESEARCH MANAGEMENT SA. San Juan. It. claimed that the two marks were not confusingly similar. 11 In its Answer. It. likewise. sound similar. likewise. Finally. 2000. J. while the assailed resolution denied petitioner’s motion for reconsideration. 2006 and Order5 dated May 3. it denied liability.7 This prompted respondent to demand that petitioner cease and desist from using the aforesaid mark. 5. The facts are as follows: Respondent Horphag Research Management SA is a corporation duly organized and existing under the laws of Switzerland and the owner6 of trademark PYCNOGENOL. The assailed decision affirmed the Regional Trial Court (RTC)3 Decision4 dated January 16. Metro Manila. CV No.. with its trademark changed from PCO-GENOLS to PCO-PLUS. and thus confusingly similar especially since they both refer to food supplements. 68048.8 Without notifying respondent. 2000. 2006. 2007 in CA-G. vs. 4. 87556. since it discontinued the use of the mark prior to the institution of the infringement case. Defendant [petitioner] is a corporation duly organized and existing under the laws of the Republic of the Philippines with business address at No. 2007 and Resolution2 dated October 15. 7 Annapolis Street.9 On August 22. Greenhills. INC. As respondent . Respondent. the products under the name PCOGENOLS as of June 19. prayed for actual and nominal damages. The defendant corporation discontinued the use of and had withdrawn from the market the products under the name of PCO-GENOLS as of June 19.14 On January 16.PROSOURCE INTERNATIONAL. By way of counterclaim.R. Plaintiff corporation sent a demand letter to the defendant dated 02 June 2000. likewise. The court added that petitioner’s liability was not negated by its act of pulling out of the market the products bearing the questioned mark since the fact remains that from 1996 until June 2000. as well as attorney’s fees. petitioner had infringed respondent’s product by using the trademark PCO-GENOLS.: This is a petition for review on certiorari under Rule 45 of the Rules of Court seeking to reverse and set aside the Court of Appeals (CA) Decision1 dated July 27. The defendant’s product PCO-GENOLS is duly registered with the BFAD but not with the Intellectual Property Office (IPO). concluded that the marks.13 During the pre-trial. 2006 in Civil Case No. 3. The trial court. when read. likewise. 2. was also distributing a similar food supplement using the mark PCO-GENOLS since 1996. DECISION NACHURA. It observed that PYCNOGENOL and PCO-GENOLS have the same suffix "GENOL" which appears to be merely descriptive and thus open for trademark registration by combining it with other words. petitioner prayed that respondent be directed to pay exemplary damages and attorney’s fees. and withdrew from the market. Petitioner. 2000. the parties admitted the following: 1. Inc. changed its mark from PCO-GENOLS to PCO-PLUS.12 petitioner contended that respondent could not file the infringement case considering that the latter is not the registered owner of the trademark PYCNOGENOL. the RTC decided in favor of respondent. Respondent later discovered that petitioner Prosource International. but one Horphag Research Limited. It. respondent filed a Complaint10 for Infringement of Trademark with Prayer for Preliminary Injunction against petitioner. Petitioner thus prayed for the dismissal of the complaint.

16 Hence. 155. counterfeit. 166. business. packages. copy or colorable imitation of any registered mark or tradename in connection with the sale. The appellate court explained that under the Dominancy or the Holistic Test. packages. counterfeit. A trademark is any distinctive word. Infringement. a trademark deserves protection. copy of colorably imitate any such mark or tradename and apply such reproduction. this petition. wrappers. offering for sale. counterfeit. adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured. or any combination thereof. II. PCO-GENOLS is deceptively similar to PYCNOGENOL.manifested that it was no longer interested in recovering actual damages. Petitioner’s motion for reconsideration was likewise denied. Inarguably. counterfeit. It also found just and equitable the award of attorney’s fees especially since respondent was compelled to litigate. or reproduce. copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction. shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided. sign.A. prints. 1998 until June 19. The instant case should thus be decided in light of the provisions of Republic Act (R. – Any person who shall. . or to cause mistake.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material. distribution.) No. offering for sale. Reproduce. offering for sale. what constitutes. or advertising of any goods. Use in commerce any reproduction. as amended. without the consent of the owner of the registered mark: 155. or 155.A. – Any person who shall use. 8293 define what constitutes trademark infringement. sold.2. prints. Remedies.A. copy or colorable imitation to labels. or device. or identity of such business. emblem.000. or to cause mistake. petitioner was made to answer only for attorney’s fees amounting to P50. distribution. receptacles or advertisements intended to be used upon or in connection with such goods. the court dismissed petitioner’s counterclaim. 1997. No. wrappers.00. or to deceive.00. Petitioner’s use of the questioned mark started in 1996 and ended in June 2000. and Section 155 of R. 2000. assigning the following errors: I.1. or advertising of goods or services on or in connection with which such use is likely to cause confusion. as follows: Sec.20 Section 22 of R. No. and R. It must be recalled that respondent filed a complaint for trademark infringement against petitioner for the latter’s use of the mark PCO-GENOLS which the former claimed to be confusingly similar to its trademark PYCNOGENOL. 16618 for the acts committed until December 31. copy or colorable imitation to labels.000. any reproduction. signs. symbol. On appeal to the CA.15 For lack of sufficient factual and legal basis. THAT THE COURT OF APPEALS ERRED IN AFFIRMING THE AWARD OF ATTORNEY’S FEES IN FAVOR OF RESPONDENT HORPHAG RESEARCH MANAGEMENT S. or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale. counterfeit. or dealt by others. THAT THE COURT OF APPEALS ERRED IN AFFRIMING THE RULING OF THE LOWER [COURT] THAT RESPONDENT’S TRADEMARK P[YC]NOGENOLS (SIC) WAS INFRINGED BY PETITIONER’S PCO-GENOLS. 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. IN THE AMOUNT OF Php50. copy. without the consent of the registrant. receptacles or advertisements intended to be used in commerce upon or in connection with the sale. petitioner failed to obtain a favorable decision. or services. Infringement.A. No.A. That infringement takes place at the moment any of the acts stated in Subsection 155. shall be liable to a civil action by the registrant for any or all of the remedies herein provided. counterfeit.17 The petition is without merit. or to deceive. 829319 for those committed from January 1. 22. advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion. signs. name. Sec.

nor is it necessary that the infringing label should suggest an effort to imitate.In accordance with Section 22 of R. 166. sales outlets. No.25 Courts will consider more the aural and visual impressions created by the marks in the public mind. including the labels and packaging.] (b) [It] is used by another person in connection with the sale. packages. prints. or advertising of any goods. or the infringing mark or trade name is applied to labels. The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception.21 On the other hand. Duplication or imitation is not necessary. it is the element of "likelihood of confusion" that is the gravamen of trademark infringement. wrappers. jurisprudence has developed two tests: the Dominancy Test and the Holistic or Totality Test.22 In the foregoing enumeration. 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. or such trademark is reproduced. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or to deceive purchasers. 2-A. prints.A. and sometimes peculiar. precedents must be evaluated in the light of each particular case. copied. 24 If the competing trademark contains the main.27 The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both labels in order that . No. counterfeit. signs. infringement takes place. (3) The infringing mark or trade name is used in connection with the sale. the same need not be registered. in infringement of trade name. counterfeited. the following constitute the elements of trademark infringement: (a) A trademark actually used in commerce in the Philippines and registered in the principal register of the Philippine Patent Office[. (4) The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business. Thus. But "likelihood of confusion" is a relative concept. offering for sale. quality. and (5) It is without the consent of the trademark or trade name owner or the assignee thereof. business or services. receptacles or advertisements intended to be used upon or in connection with such goods. or colorably imitated by the infringer. thus constituting infringement. however. or identity of such business. signs. the elements of infringement under R. in trademark infringement cases. copy or colorable imitation is applied to labels. offering for sale. in determining confusing similarity. copied or colorably imitated by another person and such reproduction. The particular. receptacles or advertisements intended to be used upon or in connection with such goods. circumstances of each case are determinative of its existence. and confusion or deception is likely to result. 23 In determining similarity and likelihood of confusion. business or services. giving little weight to factors like prices. 8293 are as follows: (1) The trademark being infringed is registered in the Intellectual Property Office. 9-A. wrappers. and 20 thereof. as well as Sections 2. and market segments.] (c) [T]he trademark is used for identical or similar goods[.26 In contrast.] and (d) [S]uch act is done without the consent of the trademark registrant or assignee. counterfeited. the Holistic Test entails a consideration of the entirety of the marks as applied to the products. packages. (2) The trademark or trade name is reproduced. or advertising of any goods. business or services as to likely cause confusion or mistake or to deceive purchasers[. essential and dominant features of another.A.

Inc. In Marvex Commercial Co." Leon Amdur. identified as such by their public consumers. This is not the first time that the Court takes into account the aural effects of the words and letters contained in the marks in determining the issue of confusing similarity. The following random list of confusingly similar sounds in the matter of trademarks.. culled from Nims. cannot be recovered. "Silver Flash" and "Supper Flash". Petra Hawpia & Co." In Co Tiong vs. that: Both the word[s] PYCNOGENOL and PCO-GENOLS have the same suffix "GENOL" which on evidence. When the defendant’s act or omission has compelled the plaintiff to litigate with third persons or to incur expenses to protect his interest. "Yusea" and "U-C-A. 795 that the name "Lusolin" is an infringement of the trademark "Sapolin. . vs. Inc. and the CA affirmed. this Court held in Sapolin Co." as the sound of the two names is almost the same.32 Finally. concurred in by the CA. In criminal cases of malicious prosecution against the plaintiff. et al. Applying the test.. viz. except: We find no cogent reason to depart from such conclusion. factual determinations of the trial court. "Jantzen" and "Jass-Sea". will reinforce our view that "SALONPAS" and "LIONPAS" are confusingly similar in sound: "Gold Dust" and "Gold Drop". "Zuso" and "Hoo Hoo. as coming within the purview of the idem sonans rule. although the letters "Y" between P and C.28 The trial and appellate courts applied the Dominancy Test in determining whether there was a confusing similarity between the marks PYCNOGENOL and PCO-GENOL. Exhibits "A" to "A-3. "Cutex" and "Cuticlean". 30 cited in McDonald’s Corporation v." pp. 67 Phil.the observer may draw his conclusion whether one is confusingly similar to the other. cities. we reiterate that the issue of trademark infringement is factual. Article 2208 of the Civil Code enumerates the instances when attorney’s fees are awarded. color and design employed on their individual packages/bottles. Balmaceda. 1. 419-421. the sound effects are confusingly similar not to mention that they are both described by their manufacturers as a food supplement and thus. Big Mak Burger." "Steinway Pianos" and "Steinberg Pianos. "Celluloid" and "Cellonite". 3. And although there were dissimilarities in the trademark due to the type of letters used as well as the size. L. open for trademark registration by the plaintiff thru combination with another word or phrase such as PYCNOGENOL. 31 the Court held: 2.29 "Chartreuse" and "Charseurs". petitioner is liable for trademark infringement. Unfair Competition and Trade Marks. other than judicial costs. when the two words are pronounced.C. "Kotex" and "Femetex". Vol. likewise. nevertheless. clearly indicates that purchasers could be misled into believing that they are the same and/or originates from a common source and manufacturer. "N" between O and C and "S" after L are missing in the [petitioner’s] mark PCO-GENOLS. still the close relationship of the competing products’ name in sounds as they were pronounced. this Court unequivocally said that "Celdura" and "Cordura" are confusingly similar in sound. attorney’s fees and expenses of litigation. 4. Director of Patents. appears to be merely descriptive and furnish no indication of the origin of the article and hence. the trial court found. v.. in his book "Trade-Mark Law and Practice.: Art. are final and binding on this Court. In the absence of stipulation. 1947." and "Seven-Up" and "Lemon-Up. "Hebe" and "Meje". 1. sustain the award of attorney’s fees in favor of respondent. In case of a clearly unfounded civil action or proceeding against the plaintiff. with both the trial and appellate courts finding the allegations of infringement to be meritorious." Furthermore. As we have consistently held. 2208.. "Cascarete" and "Celborite". 33 Hence. When exemplary damages are awarded. We.

REYNATO S. CORONA Associate Justice Chairperson. When at least double judicial costs are awarded. an award of attorney’s fees should be deleted where the award of moral and exemplary damages is not granted. In actions for the recovery of wages of household helpers. PUNO Chief Justice Footnotes . In actions for legal support. I certify that the conclusions in the above Decision had been reached in consultation before the case was assigned to the writer of the opinion of the Court’s Division. In a separate civil action to recover civil liability arising from a crime. In all cases. ANTONIO EDUARDO B. CHICO-NAZARIO Associate Justice 8. Where the defendant acted in gross and evident bad faith in refusing to satisfy the plaintiff"s plainly valid. PERALTA Associate Justice 9. 7. RENATO C. CORONA Associate Justice Chairperson 6. JR.35 In the instant case. PRESBITERO J. WHEREFORE. just and demandable claim. 2007 in CA-G.R. The Court of Appeals Decision dated July 27.5. the attorney’s fees and expenses of litigation must be reasonable. Article VIII of the Constitution and the Division Chairperson's Attestation. CV No. SO ORDERED. the petition is DENIED for lack of merit. VELASCO. laborers and skilled workers.34 Nonetheless. 11. WE CONCUR: RENATO C. 10. Third Division CERTIFICATION As a rule. MINITA V. attorney’s fees may be awarded where the court deems it just and equitable even if moral and exemplary damages are unavailing. In actions for indemnity under workmen’s compensation and employer’s liability laws. premises considered. 2007 and its Resolution dated October 15. we find no reversible error in the grant of attorney’s fees by the CA. Associate Justice ATTESTATION I attest that the conclusions in the above Decision were reached in consultation before the case was assigned to the writer of the opinion of the Court’s Division. 87556 are AFFIRMED. DIOSDADO M. In any other case where the court deems it just and equitable that attorney’s fees and expenses of litigation should be recovered. NACHURA Associate Justice Pursuant to Section 13.

G. 8 Id. id. 45. at 34. 20 21 Id. 28 13 Id. at 68. pp. 29 Rollo.E. Philip Morris. 25 McDonald’s Corporation v. No. June 27.R. Ruben E. 142-143. 18 Trademark Law. rollo. 4 Penned by Judge Alfredo C. 16 Id.C. 38-47. Trademarks and Technology Transfer. Inc. 19 Intellectual Property Code. at 507. Philip Morris. Infringement and Unfair Competition (2000). 2004. v. 12 Id. Agpalo. 39. Mighty Corporation v. Fortune Tobacco Corporation. supra note 20. at 506-507. E. supra note 24. 11 Id. Pasig City. L. at 360. L. at 248-250. supra note 20. rollo. 9 Id. v.. 14 Id. Inc. 154342. at 48.R. 23 6 7 Rollo. 158589. Big Mak Burger. Inc. Gallo Winery. 3 Branch 167. No. at 50-51. pp. at 60. at 49-54. 32. 506. E. 17 Id. at 57-61. at 356. 230-234. Big Mak Burger. 15 Id. at 163-164.C. Fortune Tobacco Corporation.R. & J. Philip Morris. with Associate Justices Juan Q. G. at 68-69. 295 (1966). & J. 30 125 Phil. The Law on Trademark. Flores. Philip Morris. Enriquez. at 44-46. Fortune Tobacco Corporation. McDonald’s Corporation v.Penned by Associate Justice Vicente S. supra note 24. concurring. 27 Mighty Corporation v. 2004. August 18. pp. 5 Id. supra note 26. v. Inc. Gallo Winery. at 26. 24 Mighty Corporation v. Gallo Winery. G. p. Veloso. 2006. & J. 32 . 26 10 Id. 143993. 62413 issued by the Bureau of Patents. and Marlene Gonzales-Sison. Fortune Tobacco Corporation.. at 233-234. 31 Supra note 26. Jr. 434 SCRA 473. 437 SCRA 10. Inc. July 14. Inc. 1 2 Id. v. 345. p. No. at 356-357. 493 SCRA 333. 22 Evidenced by Registration No. E.

Philip Morris.. 2005. another domestic corporation and authorized user since 10 April 1958 of the registered trade mark DURAFLEX and Globe representation. Sandoval. L-26557 February 18. Fortune Tobacco Corporation. Inc. No. Central Banahaw Industries. 505 SCRA 564. 378 Phil.. vs. No. The American Wire and Cable Co. Sioson for petitioner. 34 Villanueva v. 35 G. . v. Co.B. 1970 AMERICAN WIRE & CABLE COMPANY.. which mark applicant allegedly had been using since 29 March 1962.R. October 27. at 361-362. Laurel and Florencio Z. 707 (1999). Ibaan Rural Bank. for electric wires. 2006.R. sought to be registered by the Central Banahaw Industries. Nos. Inc. September 30. 290) holding that the label DYNAFLEX and Device for electric wires. supra note 20. 132955. questioning the correctness of the decision of the Director of Patents (in Inter Partes Case No. Sotero H.R. 136035 and 137743. 151339. Carlos v.: Appeal filed by the American Wire & Cable Company. 471 SCRA 266. applied with the Director of Patents for registration of the trademark DYNAFLEX and Device to be used in connection with electric wires. DIRECTOR OF PATENTS and CENTRAL BANAHAW INDUSTRIES. petitioner. 33 Francisco v. Mariano for respondents.R. v. Court of Appeals. G. G. Inc.L. J.. 135830. 2006. On 2 June 1962. Court of Appeals. Inc.. January 31. owner of the registered trademark DURAFLEX for electric wires. Inc. respondents. G. J. is not similar to herein appellant's patented mark. Celso P. REYES. class 20. No. 481 SCRA 241.

are not confusingly similar.. as amended. and jutting out on two sides of the circle are bolts of lightning. the root words commonly derived therefrom are ''dynam'' and "dynamo". business or services of others shall have the right to register the same. Opposer's trademark is DURAFLEX in Capitalized print. machines and supplies. meaning. the trademarks of the parties are different in appearance. it is clear that both marks are suffixed by the word FLEX. within a fanciful device. The issue to be resolved in this proceeding is simple: whether or not the mark DYNAFLEX and Device is registrable as label for electric wires. class 20. 4. generally. The other (Opposer's) is prefixed with DURA. opposed the application on the ground that applicant's use of the trade mark DYNAFLEX would cause confusion or result in mistake to purchasers intending to buy DURAFLEX electric wires and goods. it could have been derived from the Greek word "Dynamis" and. machines and supplies under class 20. Besides. At most." In Webster's International Dictionary. prescribes: SEC. The applicant's trademark is a composite mark consisting of the word DYNAFLEX printed in small letters of the English alphabet except that letter "D" is capitalized. except that one cross piece of the letter X is in the form of a bolt of . The word appears in any dictionary having as common meaning "to bend. one mark (Respondent's) is prefixed with DYNA suggesting power. traversing the center of a figure of the earth or globe. opposer contended that there has been no continuous use in commerce of the applicant's mark. Resorting now to the semantics of the words. The latter interposed the present appeal. sound and connotation and hence. on registrability of trademarks. the mark being registered allegedly having practically the same spelling. strength and endurance.. suggesting durability. Republic Act 166. lightning. on top of which is the encircled initials. as that of the opposer. trade name or service-mark used to distinguish his goods. in downward sequence. considering that the trademark DURAFLEX and Globe representation also for electric wires. Based on the foregoing comparisons. After due hearing. pronunciation and sound. it is used by the British on electric cord. The pertinent law.apparatus. symbolic of electricity. Consequently. The word slants slightly upward. the Director of Patents rendered decision holding the applicant's mark DYNAFLEX not to be similar to the previously registered trademark DURAFLEX. the Director of Patents said: . However. unless it: xxx xxx xxx On the other hand. In ruling in favor of the herein application. has been registered more than 4 years earlier. — The owner of a trademark. class 20. the application of Central Banahaw Industries for registration of DYNAFLEX was given due course and the opposition thereto by American Wire & Cable Company dismissed. and covering the same good. of the Respondent's corporate name. It is not in itself a rootword but it has been commonly associated with any source of power. business or services from the goods.

95 Phil.. business or services of the applicant. where the marks refer to merchandise of the same descriptive properties.4 the registration of the trademark "Lionpas" for medicated plaster was denied for being confusingly similar in sound with "Salonpas". Neilman Brewing Co.(d) Consists of or comprises a mark or trade name which so resembles a mark or trade-name registered in the Philippines by another and not abandoned. vs. similarity in sound is of especial significance (Co Tiong Sa vs.. 4th ed. 579). in he case of Marvex Commercial Co. citing Eagle White Lead Co. even their similarity in sound is taken into consideration. when applied to or used in connection with the goods. Be that as it may.. Independent Brewing Co. the Court saying: Two letters of "SALONPAS" are missing in "LIONPAS" the first letter a and the letter s. pp. nor is it necessary that the infringing label should suggest an effort to imitate (C. for purposes of the law. In short. If the competing trademark contains the main or essential or dominant features of another. 214).5 or that of the mark bearing the picture . Similarity in size. infringement takes place. Director of Patents. citing Nims. a registered mark also for medicated plaster. the Court said: It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy. 495. as label for soy sauce." (Go Tiong vs. when is a trademark likely to confuse or cause the public to mistake one for another? Earlier rulings of the Court seem to indicate its reliance on the dominancy test or the assessment of the essential or dominant features in the competing labels to determine whether they are confusingly similar. And where goods are advertised over the radio. 1. "The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of help of our eyes and must depend entirely on the ear (Operators. Hawpia & Co. and color. 100 Phil. Inc. 1. (Emphasis supplied) It is clear from the above-quoted provision that the determinative factor in a contest involving registration of trade mark is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the part of the buying public. The question is. 489.2 In fact. as to be likely. that the similarity between the two labels is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the newer brand for it. to cause confusion or mistake or to deceive purchasers. The Law of Unfair Competition and Trademarks. Director of Patents. Director of Patents. 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. while relevant. when the two words are pronounced. vs. form. 191 F. 2. Director of Patents. 678-679).1 On this matter. the law does not require that the competing trademarks must be so identical as to produce actual error or mistake. to constitute an infringement of an existing trademark patent and warrant a denial of an application for registration. for being similar to another registered brand of soy sauce that bears the picture of the fish carp. 95 Phil. and confusion and deception is likely to result. Pflugh [CC] 180 Fed. vs. cited in Lim Hoa vs. Duplication or imitation is not necessary. the sound effects are confusingly similar.) Along the same line are the rulings denying registration of a mark containing the picture of a fish (Bañgus).3 Thus. for the reason that trade idem sonans constitutes a violation of trade mark patents. vs. it would be sufficient. vol. supra. is not conclusive.

that except perhaps in big constructions. there is no certainty that the desired product will be acquired. The Director of Patents has predicated his decision mostly on the semantic difference and connotation of the prefixes "Dura" and "Dyna" of the competing trademarks. however. engineers and building contractors. Coupled with the fact that both marks cover insulated flexible wires under class 20. no difficulty is experienced in reaching the conclusion that there is a deceptive similarity that would lead the purchaser to confuse one product with the other. as in all other cases of colorable imitations. shape and size. Director of Patents. For. with the identical legend "Cut Out Ring" "Draw From Inside Circle". the designing architect or engineer.8 applicant-appellee contends that the DYNAFLEX mark would not confuse or deceive the buyers and subscribers of the DURAFLEX brand. Of course. So that even if the engineer or contractor will specify in the bill of materials the particular brand of wires needed. undeniably. as label for food seasoning (vetsin). . the appellee had to choose those so closely similar to another's trademark if there was no intent to take advantage of the goodwill generated by the other mark. But they pale into insignificance in view of the close resemblance in the general appearance of the box and the tradenames of the articles. is apparent. unlike the pharmacists or druggists. Nor are said technical men the ones personally laying down the wiring system in the building that they could possibly check on whether or not the correct wires are being used. the dominant and essential feature of the article is the trademark itself. unfortunately forgetting that the buyers are less concerned with the etymology of the words as with their sound and the dominant features of the design. most importantly. but the difference exists only in two out of the eight literal elements of the designations. Indeed. Relying on the doctrine enunciated in the Etepha case 7 and the earlier ruling in Lim Hoa vs. Not only are the initial letters and the last half of the appellations identical. the unanswered riddle is why. For. It is even within layman's knowledge that different brands of wire have different characteristics and properties. that both products are contained in boxes of the same material. electric wires are purchased not by their appearance but by the size (voltage) and length and. that the back of both boxes show similar circles of broken lines with arrows at the center pointing outward. He would only demand for what is recognized to be the best. that the dominant elements of the front designs are a red circle and a diagonal zigzag commonly related to a spark or flash of electricity. DURAFLEX and DYNAFLEX. does not himself purchase or place the order for the purchase of the materials to be used therein. of the millions of terms and combinations of letters and designs available. the likelihood of the DYNAFLEX product being mistaken for DURAFLEX is not remote. It must be realized. the dispensers of hardware or electrical supplies are not generally known to pay as much concern to the brand of articles asked for by the customer and of a person who knows the name of the brand but is not acquainted with it is appearance. which would confuse the purchasers of the same article bearing the registered mark "Hen Brand" that features the picture of a hen. the owner of the building would not dare risk his property. on an unknown or untested brand. or the contractor who will undertake the work of building. measured against the dominant-feature standard. because electrical wires are of great value and the purchasers thereof are generally intelligent — the architects. color. as pointed out in the decision now on appeal there are some differences in the mark on the front portion of the box. The task is oftentimes delegated to another. by brand. Unlike in the case of commodities that are ordinarily picked up by the purchaser himself from the grocery or market counters. and for an essential building item as electric wires and supplies. The similarity between the competing trademarks. perhaps his life.6 The present case is governed by the principles laid down in the preceding cases. Of course. applicant's mark must be disallowed.of two roosters with the word "Bantam".

Director of Patents. 67 Phil. Sanchez. 3 Sapolin Co. 495.R. class 20. Concepcion. vs. Ltd. 60 Phil. Dizon. Zaldivar. Castro Fernando. and the application for registration of the trademark DYNAFLEX for electric wires. J. 100 Phil. Director.FOR THE FOREGOING CONSIDERATIONS.. Director of Patents. vs. 18 SCRA 1178. 30 June 1960. 8 Lim Hoa vs. Inc.. C. . Inc. Barredo and Villamor.. Operators. 214. vs.C.. 214. Kui Foo & Co. L-20635. L13947.. No costs. vs. L-17901. vs.. supra. Phil. Teehankee. vs. Director of Patents. Sapolin Co. Davis & Co. 7 Etepha A. Inc. the decision appealed from is hereby set aside. 2 Also Chua Che vs. Makalintal. is ordered denied. JJ. 1965. took no part. L-18337. 928. 30 January 1965.. Footnotes 1 Parke. 22 December 1066. 100 Phil. 13 SCRA 60. 31 March 1966.G. concur. 4 L-19297. 5 Chuanchow Soy & Canning Co.A. 6 Lim Hoa vs. Balmaceda. 16 S. 29 Oct. Balmaceda. 705.J. Patent Office. Director of Patents.

Trademarks and Technology ("PBPTT"). Inc. Branch 137. DY.C. BIG MAK BURGER. the PBPTT allowed registration of the "Big Mac" mark in the Principal Register based on its Home Registration in the United States. JESUS AYCARDO. United States. respondents. FRANCIS B.: The Case This is a petition for review1 of the Decision dated 26 November 1999 of the Court of Appeals2 finding respondent L. finding respondent L. McDonald's introduced its "Big Mac" hamburger sandwiches in the Philippine market in September 1981.900..C. The Facts G. DY. Big Mak Burger. Inc. 2004 MCDONALD'S CORPORATION and MCGEORGE FOOD INDUSTRIES. No. 143993 August 18. The Court of Appeals' Decision reversed the 5 September 1994 Decision3 of the Regional Trial Court of Makati. now the Intellectual Property Office ("IPO"). not liable for trademark infringement and unfair competition and ordering petitioners to pay respondents P1. On 18 July 1985. ARACELI AYCARDO. INC. petitioners."6 McDonald's registered this trademark with the United States Trademark Registry on 16 October 1979. and in its outdoor and indoor signages.C.5 . by itself or through its franchisees. McDonald's4 owns a family of marks5 including the "Big Mac" mark for its "double-decker hamburger sandwich. McDonald's applied for the registration of the same mark in the Principal Register of the then Philippine Bureau of Patents.000 in damages. DY. McDonald's displays the "Big Mac" mark in items8 and paraphernalia9 in its restaurants. INC. L. Pending approval of its application. McDonald's spent P10. and GRACE HUERTO.7 Based on this Home Registration. Big Mak Burger. McDonald's operates. RENE B. From 1982 to 1990.. WILLIAM B. J. vs. a global chain of fastfood restaurants.R. EDNA A. liable for trademark infringement and unfair competition. DY. and of its Resolution dated 11 July 2000 denying reconsideration. Like its other marks.DECISION CARPIO. Petitioner McDonald's Corporation ("McDonald's") is a corporation organized under the laws of Delaware.

Inc. respondents claimed that they are not liable for trademark infringement or for unfair competition. In their Reply. Respondents claimed. Dy. Dy. 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. the mark "B[ig] M[ac]" is a registered trademark for plaintiff McDonald's. wrappers and containers of the food products of the parties. respondent corporation applied with the PBPTT for the registration of the "Big Mak" mark for its hamburger sandwiches. One Rodolfo Topacio ("Topacio") similarly registered the same mark on 24 June 1983.17 Respondents sought damages in their counterclaim. the RTC dismissed the complaint against private respondents and the counterclaim against petitioners for lack of merit and insufficiency of evidence. Dy. petitioners on 6 June 1990 sued respondents in the Regional Trial Court of Makati. Petitioners asserted that while the Isaiyas Group and Topacio did register the "Big Mac" mark ahead of McDonald's.15 On 16 August 1990. however. In its Order of 11 July 1990. There are still other factors to be considered. is McDonald's Philippine franchisee.14 On 21 October 1988. McDonald's also informed respondent Francis Dy ("respondent Dy"). However.18 The Trial Court's Ruling On 5 September 1994. Edna A. xxxx There exist some distinctions between the names "B[ig] M[ac]" and "B[ig] M[ak]" as appearing in the respective signages. Having received no reply from respondent Dy. McDonald's disclosed that it had acquired Topacio's rights to his registration in a Deed of Assignment dated 18 May 1981.13 Respondents Francis B. the chairman of the Board of Directors of respondent corporation. Araceli Aycardo. that McDonald's does not have an exclusive right to the "Big Mac" mark or to any other similar mark. Big Mak Burger. a domestic corporation. of its exclusive right to the "Big Mac" mark and requested him to desist from using the "Big Mac" mark or any similar mark. William B. 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. Rene B. petitioners denied respondents' claim that McDonald's is not the exclusive owner of the "Big Mac" mark.10 Petitioner McGeorge Food Industries ("petitioner McGeorge"). and Grace Huerto ("private respondents") are the incorporators. Branch 137 ("RTC"). xxxx . Alternatively. for trademark infringement and unfair competition. 11 Respondent L. Jesus Aycardo. and as such.12 Respondent corporation's menu includes hamburger sandwiches and other food items. respondents admitted that they have been using the name "Big Mak Burger" for their fast-food business. Dy. as the "Big Mak" mark they sought to register does not constitute a colorable imitation of the "Big Mac" mark. prior to McDonald's registration on 18 July 1985. the RTC issued a writ of preliminary injunction replacing the TRO. But infringement goes beyond the physical features of the questioned name and the original name. McDonald's opposed respondent corporation's application on the ground that "Big Mak" was a colorable imitation of its registered "Big Mac" mark for the same food products. it is entitled [to] protection against infringement. the Isaiyas Group did so only in the Supplemental Register of the PBPTT and such registration does not provide any protection. stockholders and directors of respondent corporation.C. Respondents asserted that they did not fraudulently pass off their hamburger sandwiches as those of petitioners' Big Mac hamburgers. 16 In their Answer. The RTC held: Undeniably.million in advertisement for "Big Mac" hamburger sandwiches alone. ("respondent corporation") is a domestic corporation which operates fast-food outlets and snack vans in Metro Manila and nearby provinces. the RTC rendered judgment ("RTC Decision") finding respondent corporation liable for trademark infringement and unfair competition.

Once he sees a stall selling hamburger sandwich. as stated in Section 29.000. or the devices or words thereon. Big Mak Burger.00. Defendant L.C. The answer is in the affirmative. An average person who is hungry and wants to eat a hamburger sandwich may not be discriminating enough to look for a McDonald's restaurant and buy a "B[ig] M[ac]" hamburger. xxxx The xxx provision of the law concerning unfair competition is broader and more inclusive than the law concerning the infringement of trademark. 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. Thus. the trademark "B[ig] M[ac]" has been infringed by defendant corporation when it used the name "B[ig] M[ak]" in its signages. he will dip into his pocket and order a "B[ig] M[ak]" hamburger sandwich. . xxxx Did the same acts of defendants in using the name "B[ig] M[ak]" as a trademark or tradename in their signages.000. wrappers. however.00. and attorney's fees and expenses of litigation in the amount of P100. considering the keen competition among mushrooming hamburger stands and multinational fast-food chains and restaurants. Inc. so that a buyer may easily be confused or deceived into thinking that the "B[ig] M[ak]" hamburger sandwich he bought is a food-product of plaintiff McDonald's. or a subsidiary or allied outlet thereof. which is of more limited range. judgment is rendered in favor of plaintiffs McDonald's Corporation and McGeorge Food Industries. and containers in connection with its food business. 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? trademark by the person whose goods or services are first associated therewith. as follows: 1. exemplary damages in the amount of P100. Plaintiff McDonald's 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 corporation's mobile snack vans located along busy streets or highways. Surely. in all likelihood. popularity and the established goodwill of plaintiff McDonald's. For.00. either as to the goods themselves or in the wrapping of the packages in which they are contained. 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.19 The dispositive portion of the RTC Decision provides: WHEREFORE. Big Mak Burger. (See Sections 23 and 29 of Republic Act No. 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. but within its narrower range recognizes a more exclusive right derived by the adoption and registration of the 2. the contending parties are both in the business of fast-food chains and restaurants. xxx Notwithstanding the distinction between an action for trademark infringement and an action for unfair competition. Inc. a person is guilty of unfair competition who in selling his goods shall give them the general appearance. plaintiffs have established their valid cause of action against the defendants for trademark infringement and unfair competition and for damages. 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. defendant corporation has its own secret ingredients to make its hamburger sandwiches as palatable and as tasty as the other brands in the market. is ordered to pay plaintiffs actual damages in the amount of P400. of goods of another manufacturer or dealer.. and against defendant L. the law extends substantially the same relief to the injured party for both cases. Hence.C. or in any other feature of their appearance.Significantly. The writ of preliminary injunction issued in this case on [16 August 1990] is made permanent. Inc.000.

the plaintiffs-appellees' trademark is used to designate only one product. 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. however. As earlier noted. Wiliam B. Dy. Big Mak Burger. Dy. On the other hand. Jesus Aycardo. Inc. or that the ordinary purchasers would be misled by it. Secondly. They use the business name "L. fish burger and hamburger. a customer needs to visit an air-conditioned "McDonald's" restaurant usually located in a nearby commercial center. together with the printed mark in red bl[o]ck capital letters. B[ig] M[ak] B[urger]. the words being separated by a single space. Dy. signages and advertisements is an infringement of their trademark "B[ig] M[ac]" which they use to identify [their] double decker sandwich." in their restaurant business which serves diversified food items such as siopao. I[nc]. the defendantsappellants' food packages are made of plastic material. the Court of Appeals rendered judgment ("Court of Appeals' Decision") reversing the RTC Decision and ordering McDonald's to pay respondents P1. Dy.000 as moral damages. a double decker sandwich sold in a Styrofoam box with the "McDonalds" logo. by defendants-appellants.20 Respondents appealed to the Court of Appeals. A careful comparison of the way the trademark "B[ig] M[ac]" is being used by plaintiffs-appellees and corporate name L. As pointed out by defendants-appellants. as well as all counter-claims. Below the words "Big Mak" are the words "Burger. plaintiffs-appellees argue that defendants-appellants' use of their corporate name is a colorable imitation of their trademark "Big Mac"." which appears on their food packages. noodles.". Above the words "Big Mak" are the upper case letter "L. sold in a Styrofoam box packaging material with the McDonald's logo of umbrella "M" stamped thereon. it is not sufficient that a similarity exists in both names. ham. The Ruling of the Court of Appeals On 26 November 1999.000 as actual and compensatory damages and P300. defendants-appellants' corporate or business name appearing in the food packages and signages are written in silhouette red-orange letters with the "b" and "m" in upper case letters. Edna A. 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. In order to buy a "Big Mac". said corporate or business name appearing in such food packages and signages is always accompanied by the company mascot. Araceli Aycardo and Grace Huerto. Rene B. Inc. pizza.3. xxxx To Our mind. Plaintiffs-appellees' 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 "McDonald's" logo and trademark in red.C. 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 complaint against defendants Francis B. or in their essential." spelled out in upper case letters. Furthermore.C.C.600. but that more importantly. Finally. and sandwiches such as hotdog. there are glaring dissimilarities between plaintiffs-appellees' trademark and defendants-appellants' corporate name. this Court is fully convinced that no colorable imitation exists. advertised and identified by its logo - .C. are dismissed for lack of merit as well as for insufficiency of evidence. Specifically. the over-all presentation. Big Mak Burger. Inc. bl[o]ck capital letters printed thereon xxx at a price which is more expensive than the defendantsappellants' comparable food products. As the definition dictates. would readily reveal that no confusion could take place. what the defendants-appellants corporation is using is not a trademark for its food product but a business or corporate name. substantive and distinctive parts is such as would likely MISLEAD or CONFUSE persons in the ordinary course of purchasing the genuine article.

distinctly decorated and painted with pastel colors xxx. 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. Thus. it is necessary to specify it by its trademark. 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 that the latter acted in bad faith or with ill motive." IS NOT A COLORABLE IMITATION OF THE MCDONALD'S TRADEMARK "BIG MAC". as amended). 166. 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. 21 Petitioners sought reconsideration of the Court of Appeals' Decision but the appellate court denied their motion in its Resolution of 11 July 2000. it is up to the plaintiffs-appellees to prove bad faith on the part of defendants-appellants. THE COURT OF APPEALS ERRED IN FINDING THAT RESPONDENTS' CORPORATE NAME "L. and its mascot – "Ronald McDonald". We find no sufficient evidence adduced by plaintiffs-appellees that defendants-appellants deliberately tried to pass off the goods manufactured by them for those of plaintiffs-appellees. To constitute unfair competition therefore it must necessarily follow that there was malice and that the entity concerned was in bad faith. .C. BIG MAK BURGER. a drive-thru to allow customers with cars to make orders without alighting from their vehicles. this petition for review. or any acts calculated to produce the same result" (Sec. for those of another who has already established good will for his similar good. II. Act No. On the other hand. a second floor to accommodate additional customers. INC. whose names are Maxima and Kimsoy. We likewise find the same untenable. B. In buying a "B[ig] M[ac]". 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. Petitioners raise the following grounds for their petition: I. A. a customer needs to look for a "McDonald's" and enter it first before he can find a hamburger sandwich which carry the mark "Big Mac". defendants-appellants sell their goods through snack vans xxxx Anent the allegation that defendants-appellants are guilty of unfair competition. the interiors of the building are well-lighted. Rep. In the case at bar. 29. Respondents use the words "Big Mak" as trademark for their products and not merely as their business or corporate name. 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.22 Petitioners pray that we set aside the Court of Appeals' Decision and reinstate the RTC Decision. With this explanation. Hence. or service. As a trademark. The mere suspected similarity in the sound of the defendants-appellants' corporate name with the plaintiffs-appellees' trademark is not sufficient evidence to conclude unfair competition.the umbrella "M". SUCH COLORABLE IMITATION BEING AN ELEMENT OF TRADEMARK INFRINGEMENT. A typical McDonald's restaurant boasts of a playground for kids. business or services.

26 We took a similar course of action in Asia Brewery. There is a question of fact when the doubt or difference arises on the truth or falsity of the alleged facts. however. petitioners raise questions of fact and law in assailing the Court of Appeals' findings on respondent corporation's non-liability for trademark infringement and unfair competition. On the merits. 28 Respondents' cash invoices simply refer to their hamburger sandwiches as "Big Mak. 2. the Court opts to accept the petition. Big Mak Burger. Big Mak Burger. v. 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." but also as a trademark for their hamburger products.31 Respondents' plastic wrappers and bags were identical with those petitioners presented during the hearings for the injunctive writ except that the letters "L. along with the locations of branches."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."29 It is respondents' snack vans that carry the words "L. the facts established during those hearings are the proper factual bases for the disposition of the issues raised in this petition. (a) whether respondents used the words "Big Mak" not only as part of the corporate name "L. Since petitioners' complaint was based on facts existing before and during the hearings on the injunctive writ. On the merits. Inc. 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." in respondents' evidence were added above and below the words "Big Mak. Ordinarily." and the words "Burger." respectively. and (b) whether respondent corporation is liable for trademark infringement and unfair competition. 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. 25 Here. Inc. The Issues The issues are: 1." The other descriptive words "burger" and "100% pure beef" were set in smaller type. A question of law exists when the doubt or difference arises on what the law is on a certain state of facts.C.In their Comment to the petition.C. Inc. of the contradictory findings of fact of the RTC and Court of Appeals. 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. respondents question the propriety of this petition as it allegedly raises only questions of fact. the Court can deny due course to such a petition. In view. Inc. The contention has merit. Procedurally." appears in the packaging for respondents' hamburger products and not the words "Big Mak" only. Big Mak Burger.23 The Court's Ruling The petition has merit.C. On the Issue of Trademark Infringement .C. whether the questions raised in this petition are proper for a petition for review under Rule 45. Court of Appeals27 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. this being one of the recognized exceptions to Section 1. Inc.

thus: [Rudolf] Callman notes two types of confusion. copy or colorable imitation of any registered mark or trade-name in connection with the sale. 37 Respondents contend that of the two words in the "Big Mac" mark. copy.Section 22 ("Section 22) of Republic Act No.35 On the Validity of the "Big Mac"Mark and McDonald's Ownership of such Mark A mark is valid if it is "distinctive" and thus not barred from registration under Section 436 of RA 166 ("Section 4"). functions. shall be liable to a civil action by the registrant for any or all of the remedies herein provided. it is only the word "Mac" that is valid because the word "Big" is generic and descriptive (proscribed under Section 4[e]). the law applicable to this case. and (3) the use of the mark or its colorable imitation by the alleged infringer results in "likelihood of confusion. without the consent of the registrant. wrappers. or colorable imitation to labels. it is the element of likelihood of confusion that is the gravamen of trademark infringement. Generic marks are commonly used as the name or description of a kind of goods. "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. it is highly distinctive and thus valid. or colorably imitate any such mark or trade-name and apply such reproduction. or [2] reproduce. what constitutes. not only the mark's validity but also the registrant's ownership of the mark is prima facie presumed. prints. on the other hand.40 such as "Lite" for beer41 or "Chocolate Fudge" for chocolate soda drink. a colorable imitation of the "Big Mac" mark in advertising and selling respondents' hamburger sandwiches. However. 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. Although Topacio and the Isaiyas Group registered the "Big Mac" mark ahead of McDonald's. 166."38 The contention has no merit. offering for sale. (2) the plaintiff's ownership of the mark. Significantly. or identity of such business.e. and thus not distinctive. the following elements must be shown: (1) the validity of plaintiff's mark. copy. The first is the confusion of goods "in which event the ordinarily . convey the characteristics. In Sterling Products International."34 Of these. the trademark "Little Debbie" for snack cakes was found arbitrary or fanciful. namely. receptacles or advertisements intended to be used upon or in connection with such goods. counterfeit. on the other hand. signs.42 Descriptive marks. registered its trademark only in the Supplemental Register. any reproduction. had already assigned his rights to McDonald's. The "Big Mac" mark. and thus "incapable of exclusive appropriation. qualities or ingredients of a product to one who has never seen it or does not know it exists.47 Indeed. or advertising of any goods. without petitioners' consent. has no real protection. 39 is neither generic nor descriptive. confusion of goods (product confusion) and confusion of business (source or origin confusion). counterfeit. — Any person who [1] shall use. business or services.44 On the contrary. The Isaiyas Group. 46 The Court also finds that petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark.43 such as "Arthriticare" for arthritis medication. we have held that registration in the Supplemental Register is not even a prima facie evidence of the validity of the registrant's exclusive right to use the mark on the goods specified in the certificate..32 defines trademark infringement as follows: Infringement. as petitioners disclosed. This likely caused confusion in the mind of the purchasing public on the source of the hamburgers or the identity of the business. Farbenfabriken Bayer Aktiengesellschaft. Topacio. respondents allegedly used. once registered.33 Petitioners base their cause of action under the first part of Section 22. et al.48 On Types of Confusion Section 22 covers two types of confusion arising from the use of similar or colorable imitation marks. counterfeit. as amended ("RA 166"). which should be treated in its entirety and not dissected word for word. packages. A mark which is not registered in the Principal Register.49 the Court distinguished these two types of confusion. To establish trademark infringement. Incorporated v.45 As such. i.

prudent purchaser would be induced to purchase one
product in the belief that he was purchasing the other." xxx
The other is the confusion of business: "Here 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."
Under Act No. 666,50 the first trademark law, infringement was
limited to confusion of goods only, when the infringing mark is
used on "goods of a similar kind."51 Thus, no relief was afforded to
the party whose registered mark or its colorable imitation is used
on different although related goods. To remedy this situation,
Congress enacted RA 166 on 20 June 1947. In defining trademark
infringement, 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, or identity of such
business."52 Thus, while there is confusion of goods when the
products are competing, confusion of business exists when the
products are non-competing but related enough to produce
confusion of affiliation.53
On Whether Confusion of Goods and
Confusion of Business are Applicable
Petitioners claim that respondents' use of the "Big Mak" mark on
respondents' hamburgers results in confusion of goods, particularly
with respect to petitioners' hamburgers labeled "Big Mac." Thus,
petitioners alleged in their complaint:
1.15. Defendants have unduly prejudiced and clearly
infringed upon the property rights of plaintiffs in the
McDonald's Marks, particularly the mark "B[ig] M[ac]".
Defendants' unauthorized acts are likely, and calculated, to
confuse, mislead or deceive the public into believing that
the products and services offered by defendant Big Mak
Burger, and the business it is engaged in, are approved
and sponsored by, or affiliated with, plaintiffs.54 (Emphasis
supplied)

Since respondents used the "Big Mak" mark on the same goods,
i.e. hamburger sandwiches, that petitioners' "Big Mac" mark is
used, trademark infringement through confusion of goods is a
proper issue in this case.
Petitioners also claim that respondents' use of the "Big Mak" mark
in the sale of hamburgers, the same business that petitioners are
engaged in, results in confusion of business. Petitioners alleged in
their complaint:
1.10. For some period of time, and without the consent of
plaintiff McDonald's nor its licensee/franchisee, plaintiff
McGeorge, and in clear violation of plaintiffs' exclusive
right to use and/or appropriate the McDonald's marks,
defendant Big Mak Burger acting through individual
defendants, has been operating "Big Mak Burger", a fast
food restaurant business dealing in the sale of hamburger
and cheeseburger sandwiches, french fries and other food
products, and has caused to be printed on the wrapper of
defendant's food products and incorporated in its signages
the name "Big Mak Burger", which is confusingly similar to
and/or is a colorable imitation of the plaintiff McDonald's
mark "B[ig] M[ac]", xxx. Defendant Big Mak Burger has
thus unjustly created the impression that its
business is approved and sponsored by, or affiliated
with, plaintiffs. xxxx
2.2 As a consequence of the acts committed by
defendants, which unduly prejudice and infringe upon the
property rights of plaintiffs McDonald's and McGeorge as
the real owner and rightful proprietor, and the
licensee/franchisee, respectively, of the McDonald's marks,
and which are likely to have caused confusion or
deceived the public as to the true source,
sponsorship or affiliation of defendants' food
products and restaurant business, plaintiffs have
suffered and continue to suffer actual damages in the form
of injury to their business reputation and goodwill, and of
the dilution of the distinctive quality of the McDonald's
marks, in particular, the mark "B[ig] M[ac]".55 (Emphasis
supplied)

Respondents admit that their business includes selling hamburger
sandwiches, the same food product that petitioners sell using the
"Big Mac" mark. Thus, trademark infringement through confusion
of business is also a proper issue in this case.
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. Even if this is true,
the likelihood of confusion of business remains, since the lowincome group might be led to believe that the "Big Mak"
hamburgers are the low-end hamburgers marketed by petitioners.
After all, petitioners have the exclusive right to use the "Big Mac"
mark. On the other hand, respondents would benefit by associating
their low-end hamburgers, through the use of the "Big Mak" mark,
with petitioners' high-end "Big Mac" hamburgers, leading to
likelihood of confusion in the identity of business.
Respondents further claim that petitioners use the "Big Mac" mark
only on petitioners' double-decker hamburgers, while respondents
use the "Big Mak" mark on hamburgers and other products like
siopao, noodles and pizza. Respondents also point out that
petitioners sell their Big Mac double-deckers in a styrofoam box
with the "McDonald's" logo and trademark in red, block letters at a
price more expensive than the hamburgers of respondents. In
contrast, respondents sell their Big Mak hamburgers in plastic
wrappers and plastic bags. Respondents further point out that
petitioners' restaurants are air-conditioned buildings with drivethru service, compared to respondents' mobile vans.
These and other factors respondents cite cannot negate the
undisputed fact that respondents use their "Big Mak" mark on
hamburgers, the same food product that petitioners' sell with the
use of their registered mark "Big Mac." Whether a hamburger is
single, double or triple-decker, and whether wrapped in plastic or
styrofoam, it remains the same hamburger food product. Even
respondents' use of the "Big Mak" mark on non-hamburger food
products cannot excuse their infringement of petitioners'
registered mark, otherwise registered marks will lose their
protection under the law.
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 Court has recognized that the
registered trademark owner enjoys protection in product and
market areas that are the normal potential expansion of his
business. Thus, 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, 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, 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; 53 Am Jur.
576) or is in any way connected with the activities of the
infringer; or when it forestalls the normal potential
expansion of his business (v. 148 ALR, 77, 84; 52 Am. Jur.
576, 577).56 (Emphasis supplied)
On Whether Respondents' Use of the "Big Mak"
Mark Results in Likelihood of Confusion
In determining likelihood of confusion, jurisprudence has developed
two tests, the dominancy test and the holistic test. 57 The
dominancy test focuses on the similarity of the prevalent features
of the competing trademarks that might cause confusion. In
contrast, the holistic test requires the court to consider the entirety
of the marks as applied to the products, including the labels and
packaging, in determining confusing similarity.
The Court of Appeals, in finding that there is no likelihood of
confusion that could arise in the use of respondents' "Big Mak"
mark on hamburgers, relied on the holistic test. Thus, the Court of
Appeals ruled that "it is not sufficient that a similarity exists in
both name(s), but that more importantly, the overall presentation,
or in their essential, substantive and distinctive parts is such as
would likely MISLEAD or CONFUSE persons in the ordinary course of
purchasing the genuine article." The holistic test considers the two
marks in their entirety, as they appear on the goods with their
labels and packaging. It is not enough to consider their words and
compare the spelling and pronunciation of the words.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.
This Court, however, has relied on the dominancy test rather than
the holistic test. The dominancy test considers the dominant
features in the competing marks in determining whether they are
confusingly similar. Under the dominancy test, courts give greater
weight to the similarity of the appearance of the product arising
from the adoption of the dominant features of the registered mark,
disregarding minor differences.59 Courts will consider more the
aural and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality, sales outlets
and market segments.
Thus, in the 1954 case of Co Tiong Sa v. Director of Patents,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. Similarity in size, form and color, while
relevant, is not conclusive. If the competing trademark
contains the main or essential or dominant features
of another, and confusion and deception is likely to
result, infringement takes place. Duplication or
imitation is not necessary; nor is it necessary that the
infringing label should suggest an effort to imitate. (G.
Heilman Brewing Co. vs. Independent Brewing Co., 191 F.,
489, 495, citing Eagle White Lead Co. vs. Pflugh (CC) 180
Fed. 579). 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. (Auburn Rubber Corporation
vs. Honover Rubber Co., 107 F. 2d 588; xxx) (Emphasis
supplied.)
The Court reiterated the dominancy test in Lim Hoa v. Director
of Patents,61 Phil. Nut Industry, Inc. v. Standard Brands
Inc.,62 Converse Rubber Corporation v. Universal Rubber
Products, Inc.,63 and Asia Brewery, Inc. v. Court of Appeals.64
In the 2001 case of Societe Des Produits Nestlé, S.A. v. Court
of Appeals,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 and
unfair competition that confusing similarity is to be
determined on the basis of visual, aural, connotative
comparisons and overall impressions engendered by the
marks in controversy as they are encountered in the
realities of the marketplace. (Emphasis supplied)
The test of dominancy is now explicitly incorporated into law in
Section 155.1 of the Intellectual Property Code which defines
infringement as the "colorable imitation of a registered mark xxx or
a dominant feature thereof."
Applying the dominancy test, the Court finds that respondents' use
of the "Big Mak" mark results in likelihood of confusion. First, "Big
Mak" sounds exactly the same as "Big Mac." Second, the first word
in "Big Mak" is exactly the same as the first word in "Big Mac."
Third, the first two letters in "Mak" are the same as the first two
letters in "Mac." Fourth, the last letter in "Mak" while a "k" sounds
the same as "c" when the word "Mak" is pronounced. Fifth, in
Filipino, the letter "k" replaces "c" in spelling, thus "Caloocan" is
spelled "Kalookan."
In short, 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. In spelling, considering the Filipino language, even the
last letters of both marks are the same.
Clearly, respondents have adopted in "Big Mak" not only
the dominant but also almost all the features of "Big Mac."
Applied to the same food product of hamburgers, the two marks
will likely result in confusion in the public mind.
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. Thus, in Marvex Commercial Co., Inc. v.
Petra Hawpia & Co., et al.,66 the Court held:

e. a person cannot distinguish "Big Mac" from "Big Mak" by their sound. 1. As petitioners well noted: [R]espondents. he could have taken an equal number of letters (i. culled from Nims. Balmaceda. "Celluloid" and "Cellonite". On the Lack of Proof of Actual Confusion Petitioners' failure to present proof of actual confusion does not negate their claim of trademark infringement. This increases the likelihood that consumers will mistakenly associate petitioners' hamburgers and business with those of respondents'. "Chartreuse" and "Charseurs". will reinforce our view that "SALONPAS" and "LIONPAS" are confusingly similar in sound: "Gold Dust" and "Gold Drop". respondents' claim that their "Big Mak" mark was inspired by the first names of respondent Dy's mother (Maxima) and father (Kimsoy) is not credible. We sustain petitioners' claim of trademark infringement. and "Seven-Up" and "Lemon-Up". we hold that confusion is likely to result in the public mind.." Petitioners' aggressive promotion of the "Big Mac" mark. and derived letters from said names in that order. as the sound of the two names is almost the same. as coming within the purview of the idem sonans rule. While proof of actual confusion is the best evidence of infringement. Indeed. "Steinway Pianos" and "Steinberg Pianos". especially when taken in conjunction with the word "B[ig]". "Kotex" and "Femetex". Surely.72 On the Issue of Unfair Competition Section 29 ("Section 29")73 of RA 166 defines unfair competition. albeit unavailing. he could have put his father's name ahead of his mother's.67 Absent proof that respondents' adoption of the "Big Mak" mark was due to honest mistake or was fortuitous. with their alleged sentiment-focused "explanation" merely thought of as a convenient. particularly Respondent Mr. two) from each name. 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.71 Section 22 requires the less stringent standard of "likelihood of confusion" only. excuse or defense for such an unfair choice of name. "Cascarete" and "Celborite". "Zuso" and "Hoo Hoo". "Silver Flash" and "Supper Flash". has built goodwill and reputation for such mark making it one of the easily recognizable marks in the market today. "Jantzen" and "Jass-Sea". 1947. in his book "Trade-Mark Law and Practice". the more plausible reason behind Respondents' choice of the word "M[ak]".70 Thus. cities. was their intent to take advantage of Petitioners' xxx "B[ig] M[ac]" trademark. When one hears a "Big Mac" or "Big Mak" hamburger advertisement over the radio. as is the more usual thing done. (Emphasis supplied) Certainly. In Co Tiong vs. Vol. as borne by their advertisement expenses. Unfair Competition and Trade Marks. As noted in American Wire & Cable Co. Leon Amdur. thus: . Francis Dy.The following random list of confusingly similar sounds in the matter of trademarks. as is usually done in this patriarchal society. "Yusea" and "U-C-A". this Court unequivocally said that "Celdura" and "Cordura" are confusingly similar in sound. its absence is inconsequential. pp. 69 This saves respondents much of the expense in advertising to create market recognition of their mark and hamburgers. "Hebe" and "Meje". 67 Phil.68 the inescapable conclusion is that respondents adopted the "Big Mak" mark to "ride on the coattails" of the more established "Big Mac" mark. not only aurally but also visually. "Cutex" and "Cuticlean". 419-421. especially since he was allegedly driven by sentimental reasons. "Big Mac" and "Big Mak" for hamburgers create even greater confusion. Director of Patents. could have arrived at a more creative choice for a corporate name by using the names of his parents. For one. 795 that the name "Lusolin" is an infringement of the trademark "Sapolin". Contrary to the Court of Appeals' finding. one would not know whether the "Mac" or "Mak" ends with a "c" or a "k. vs. v. Director of Patents. Or. this Court held in Sapolin Co.

the following shall be deemed guilty of unfair competition: (a) Any person. All letters of the "B[ig] M[ac]" mark are also in red and block capital letters. Trademark infringement is a form of unfair competition. There can be trademark infringement without unfair competition as when the infringer discloses on the labels containing the mark that he manufactures the goods. which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer. or device. petitioners allege that respondents fraudulently passed off their hamburgers as "Big Mac" hamburgers. (b) Any person who by any artifice. Petitioners add that respondents' fraudulent intent can be inferred from the similarity of the marks in question.76 Unfair competition is broader than trademark infringement and includes passing off goods with or without trademark infringement. the defendant gives his goods the general appearance of the goods of his competitor with the intention of deceiving the public that the goods are those of his competitor. and (2) intent to deceive the public and defraud a competitor. 75 Actual fraudulent intent need not be shown. shall be guilty of unfair competition. business or services of another. who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer. 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. misleads prospective purchasers into buying his merchandise under the impression that they are buying that of his competitors. 74 The confusing similarity may or may not result from similarity in the marks. The packaging material is a styrofoam box with the McDonald's logo and trademark in red with block capital letters printed on it. but also actual or probable deception on the public because of the general appearance of the goods. or in any feature of their appearance. (Emphasis supplied) The essential elements of an action for unfair competition are (1) confusing similarity in the general appearance of the goods. by imitative devices on the general appearance of the goods. 80 Thus. and shall be subject to an action therefor. thus preventing the public from being deceived that the goods originate from the trademark owner. or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade.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. other than the actual manufacturer or dealer. 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. or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose. either as to the goods themselves or in the wrapping of the packages in which they are contained. or who shall commit any acts calculated to produce said result. but may result from other external factors in the packaging or presentation of the goods. or his business. or the devices or words thereon. 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. defendants' "B[ig] M[ak]" script print is in orange with only the letter . 79 Passing off (or palming off) takes place where the defendant. 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 McDonald's to identify its double decker hamburger sandwich.77 Trademark infringement constitutes unfair competition when there is not merely likelihood of confusion. or services for those of the one having established such goodwill. On the other hand. In particular.78 To support their claim of unfair competition.

petitioners introduced during the injunctive hearings plastic wrappers and bags with the "Big Mak" mark without the name "L.C.C."." to inform the public of the name of the seller of the hamburgers. just like petitioner's use of the "Big Mac" mark on hamburgers." Respondents' goods are hamburgers which are also the goods of petitioners. In such case.C." 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. The Remedies Available to Petitioners Under Section 2383 ("Section 23") in relation to Section 29 of RA 166. Big Mak Burger. compared to the mascot of defendant Corporation which is a chubby boy called "Macky" displayed or printed between the words "Big" and "Mak.84 The RTC also did not err in awarding exemplary damages by way of correction for the public good85 in view of the finding of unfair competition where intent to deceive the public is essential.C. then they could validly claim that they did not intend to deceive the public. as the words "Big Mac. xxxx Further. Respondents have applied on their plastic wrappers and bags almost the same words that petitioners use on their styrofoam box. their use of the "Big Mak" mark would not give their goods the general appearance of petitioners' "Big Mac" hamburgers. Moreover. we cannot consider respondents' evidence since petitioners' complaint was based on facts existing before and during the injunctive hearings.000 actual damages in favor of petitioners. 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. there is only trademark infringement but no unfair competition. however. plaintiffs' logo and mascot are the umbrella "M" and "Ronald McDonald's". What attracts the attention of the buying public are the words "Big Mak" which are almost the same. there is no notice to the public that the "Big Mak" hamburgers are products of "L. did not give such notice. Here. respectively.86 .C. 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.9%) of respondent corporation's gross sales for three (19881989 and 1991) of the six years (1984-1990) respondents have used the "Big Mak" mark. a plaintiff who successfully maintains trademark infringement and unfair competition claims is entitled to injunctive and monetary reliefs. Had respondents' placed a notice on their plastic wrappers and bags that the hamburgers are sold by "L. Big Mak Burger. Inc. Big Mak Burger. However. We hold that as found by the RTC." The dissimilarities in the material and other devices are insignificant compared to the glaring similarity in the words used in the wrappings. Big Mak Burger." as the seller of the hamburgers is an after-thought designed to exculpate them from their unfair business conduct. Inc. Inc. Thus. respondent corporation is liable for unfair competition. the amount of actual damages is a reasonable percentage (11. Inc. The award of attorney's fees and expenses of litigation is also in order. there is actually no notice to the public that the "Big Mak" hamburgers are products of "L. The injunctive writ is indispensable to prevent further acts of infringement by respondent corporation." Respondents' belated presentation of plastic wrappers and bags bearing the name of "L.82 Respondents. Big Mak Burger. This clearly shows respondents' intent to deceive the public. aurally and visually. Section 29(a) also provides that the defendant gives "his goods the general appearance of goods of another manufacturer.C. there is only trademark infringement but no unfair competition. Inc. However. Big Mak Burger." Respondents introduced during the trial plastic wrappers and bags with the words "L." and not those of petitioners who have the exclusive right to the "Big Mac" mark. respondents have obviously clothed their goods with the general appearance of petitioners' goods. since respondents chose to apply the "Big Mak" mark on hamburgers. Inc. Section 29(a) expressly provides that the similarity in the general appearance of the goods may be in the "devices or words" used on the wrappings. As earlier stated. If respondents sold egg sandwiches only instead of hamburger sandwiches."B" and "M" being capitalized and the packaging material is plastic wrapper. Also. In such case.

J. McDOUBLE (f).C.g. McSNACK (s). McCHICKEN (f). McDONALD'S & YOU (s). 20 Records. pp. McPIZZA (f). Quisumbing. MAPLE McCRISP (f). 16 Ibid. Inc. 1. 8 Table napkins. 14 15 Records. E. 460-463. tray liners. fruit juices. BIG MAC (s). 26 July 1990. pizzas. Inc. McBagel's. we GRANT the instant petition. Ynares-Santiago and Azcuna. McCHEESE & DESIGN (f). 649 F. McDONALD'S & ARCHES (s). concur. promotional items and packages. Big Mak Burger. 21 Rollo. fried fish sandwiches. 414-426. MINI MAC (s). McDONALDLAND (f). 149-154. 1268 [1986]).. Jr. McRIB (f). McDONALD'S & ARCHES (f). Laguna. EGG McMUFFIN (f). CHICKEN McSWISS (f). LITE MAC (f). noodles.WHEREFORE. fish burgers. EGG McMUFFIN (s). Rasul and Associate Justice Ruben T. 457-458.102. McDonald's and petitioner McGeorge are referred to as petitioners. 12 Rizal. 233-237 (Capitalization in the original). CHICKEN McNUGGETS (f). chicken nuggets. and other beverages. McFEAST (f). ham sandwiches. hotdog sandwiches. softdrinks and other beverages. fried french potatoes. (f). 6 7 Certificate of Registration No. 2 3 Penned by Judge Santiago Ranada. SO ORDERED. pp. RONALD McDONALD (s). Jr. McDONUTS (f). with Presiding Justice Jainal D. p. C. Some of McDonald's registered marks representing food items (f) and services (s) are: McDONALD'S HAMBURGERS (s). 4 Itself a registered service mark. JJ. 1431-1432. (McDonald's Corporation v. 19 Rollo. 5 . Davide. pp. siopaos. pp. Penned by Associate Justice Eloy R. 10 TSN (Arlene Manalo).L. McD. McPIZZA (s). McDONALDLAND (s). liable for trademark infringement and unfair competition. pp. Reyes concurring. 18 Ibid.126.. Bello. McHAPPY DAY (s). pp.. finding respondent L. special sandwiches. (Chairman). MAC FRIES (f). 34-35. McDONALD'S (f). TOGETHER-McDONALD'S & YOU (s). 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. cups and food wrappers. McMUFFIN (f). 13 Respondent corporation and private respondents are referred to as respondents. sundaes. 37. 9 Labels. Branch 137. SUPER MAC (f).. softdrinks. 11 Footnotes 1 Under Rule 45 of the 1997 Rules of Civil Procedure. 17 Ibid.T.Supp. Bulacan and Quezon. shakes. Aside from Big Mac sandwiches.. hot pies. pp. McDonald's menu includes cheeseburgers.

788 F. 207 Phil. the Intellectual Property Code of the Philippines.. et al. 103543. the Regional Trial Court or other courts whenever authorized by law.2d 770 (2001). tradenames and service-marks which shall be known as the principal register. — A party desiring to appeal by certiorari from a judgment or final order or resolution of the Court of Appeals. v. v.Supp. tradenames and service-marks on the principal register. et al. See A & H Sportswear Co. Pepsi-Cola Bottling Co. 704 F. of the Phils. deceptive or scandalous matter. 1999 WL 1034683 [1999]) or "touchstone" (VMG Enterprises. 8293 ("RA 8293"). as to be likely. The petition shall raise only questions of law which must be distinctly set forth. F.. or national symbols. business or services of others shall have the right to register the same on the principal register. unless it: 36 (a) Consists of or comprises immoral.. 35 This provision states: "Registration of trade-marks. 224 SCRA 437. et al. Shaley's Inc. which took effect on 1 January 1998. No. Inc. except by the written consent of the widow. 29 Exhibits E. 5 July 1993. et al..22 Ibid. 701 (1967). beliefs. — There is hereby established a register of trade-marks. 25 26 Ducusin." 24 Ramos. Inc. CA. Lambert Groups. F and G. 167 F. Quesada and Franco.. Supp. p. v. 24. or bring them into contempt or disrepute. Inc. (b) Consists of or comprises the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions. 648 [1992]) of trademark infringement. (c) Consists of or comprises a name. 27 G.2d 426 (1983). if any. RA 166 has been superseded by Republic Act No. portrait. or any simulation thereof. F-1 to 2 and G-1 to 2. Inc. when applied . trade-name or service-mark used to distinguish his goods. 248 (1983). or signature identifying a particular living individual except by his written consent. L-16 to 27. or matter which may disparage or falsely suggest a connection with persons. The owner of a trade-mark. 34 23 This provision states: "Filing of petition with Supreme Court. during the life of his widow. Victoria's Secret Stores. living or dead. While petitioners seek to hold liable respondent corporation only. 125 Phil. Inc. 32 33 Superseded by Section 155 of RA 8293 ("Section 155"). (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 a tradename previously used in the Philippines by another and not abandoned. business or services from the goods. Section 22 is substantially identical with Section 16 of the United States' 1946 Trademark Act ("Lanham Act").. or of any foreign nation. the Sandiganbayan. the Court's opinion will refer not only to the latter but also to all the respondents as all of them filed the pleadings in this petition. v. signature.R. may file with the Supreme Court a verified petition for review on certiorari. v. institutions. Also referred to as the "lynchpin" (Suncoast Tours. or the name. 28 Exhibits E-1 to 2. 31 Exhibits 34. v. 30 Exhibits L-10. 36-37. or portrait of a deceased President of the Philippines. Covalt.

supra note 40. (15 United States Code § 1065)." This has been superseded by Section 138 of RA 8293.R. RA 166. Patents. and of the registrant's exclusive right to use the same in connection with the goods. 43 Section 20. business or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them. proof of substantially exclusive and continuous use thereof as a mark or trade-name by the applicant in connection with the sale of goods. Court of Appeals. This provision states: "Certificate of registration prima facie evidence of validity. v.. such takes 37 44 Bernard v. 40 Miller Brewing Co. business or services. v.e. Interstate Brands Corporation.2d 366 (1980). 808 F. Court of Appeals. 4 April 2001. 38 (f) Except as expressly excluded in paragraphs (a). 45 Keebler Co. place once the trademark has become "incontestable" i. S. under the Lanham Act. when applied to or used in connection with the goods. business or services for five years next preceding the date of the filing of the application for its registration. as amended. 1272 (1990). business or services of the applicant.. that there is no pending proceeding. the registrant's ownership of the mark or trade-name. Interstate Brands Corporation. v. Societe Des Produits Nestlé. business or services. Honickman.2d 75 (1977). v. or (e) Consists of a mark or trade-name which..A.2d 1338 (1992). or is primarily merely a surname. S. 356 SCRA 207. 211 F. subject to any conditions and limitations stated therein. Neither RA 166 nor RA 8293 provides when the presumption of validity and ownership becomes indubitable. business or services specified in the certificate. (b). 47 . 738 F. However." This has been superseded by Section 123 of RA 8293. supra note 39 citing § 43(A) of the Lanham Act. Inc. 39 Societe Des Produits Nestlé. supra note 39. Canfield Co. 525-527.. S. to cause confusion or mistake or to deceive purchasers.A. McKee Baking Co. v. Miller and M. Trademarks and Copyright in a Nutshell 177-178 (1983). 41 42 A. v. v. McKee Baking Co. failure to file such affidavit will result in the removal of the mark from the Register. and that there has been no adverse decision concerning the registrant's ownership or right to registration (See Luis Vuitton Malletier and Oakley.to or used in connection with the goods. v. Court of Appeals. Intellectual Property. Rollo. Supp. No. Heileman Brewing Co. under Section 145. v. Miller Brewing Co. Heileman Brewing Co. pp. or when applied to or used in connection with the goods. as amended. (c) and (d) of this section nothing herein shall prevent the registration of a mark or trade-name used by the applicant which has become distinctive of the applicant's goods. In contrast. The Director may accept as prima facie evidence that the mark or trade-name has become distinctive. after the mark owner files affidavits stating that the mark is registered and has been in continuous use for five consecutive years. supra note 39. business or services of the applicant is merely descriptive or deceptively misdescriptive of them. 561 F. both RA 166 (Section 12) and RA 8293 (Section 145) require the filing of the affidavit attesting to the continuous use of the mark for five years and. v. Commerce Drug Co. as applied to or used in connection with the applicant's goods.2d 291 (1986). 964 F. — A certificate of registration of a mark or trade-name shall be prima facie evidence of the validity of the registration.Supp. 624 F. Davis. 112012. Veit. G.2d 556 [2002]).A. J. Societe Des Produits Nestlé. Rovira Biscuit Corp. 46 See A.

etc. See also Koppers Company. 43(A)") by deleting the phrase "the source or origin of such goods or services. Societe Des Produits Nestlé.. 740 F. 60 95 Phil. shall be either the reasonable profit which the complaining party would have made had the defendant not sold the goods with the trade-mark aforesaid. 50 Enacted on 6 March 1903. 57 V. in the discretion of the court. v." defined as confusion on a subliminal or subconscious level. the US Congress again amended Section 16 of the Lanham Act ("Sec. heretofore or hereafter appropriated. Section 155 substantially reproduces Sec. Coffee. Section 3 of Act No. supra note 39. v. the damages may be doubled.R. RA 8293 no longer provides for a Supplemental Register and instead mandates a single registry system (Section 137). causing the consumer to identify the properties and reputation of one product with those of another. 48 49 137 Phil. G. or identity of such business" in the definition of trademark infringement.Supp.See Lorenzana v. 838 (1969). Trademarks Under The Intellectual Property Code 260 (1999). Roberts. 58 59 Ibid. upon proper showing. as are other property rights known to the law.. S.A. No. Inc. L-33773. 56 Sta. if the complainant's property in the trade-mark and the defendant's violation thereof shall be fully established. 53 54 Records. No. Hon. To this end 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 may recover damages in a civil action from any person who has sold goods of a similar kind. and in cases where actual intent to mislead the public or to defraud the owner of the trademark shall be shown. p. 361 F. and such injunction upon final hearing. The complaining party. 43(A). et al. or the profit which the defendant actually made out of the sale of the goods with the trade-mark. shall be made perpetual. See also Farberware. may have a preliminary injunction. 6-7. American Cyanamid Company. v. Ana v.. bearing such trade-mark. 29 December 1995. and this injunction shall be part of the judgment for damages to be rendered in the same cause as above provided. although he can identify the particular manufacturer of each. restraining the defendant temporarily from use of the trade-mark pending the hearing. v. and the measure of the damages suffered. The Law on Trademark. 666 provides: "The ownership or possession of a trade-mark. Maliwat. (Ortho Pharmaceutical Corporation v. shall be recognized and protected in the same manner and to the same extent. at the option of the complaining party. as in the foregoing section provided.2d 1235 [1991]. Amador. Infringement and Unfair Competition 45-46 (2000). 332 (1984). . Mr. 517 F. 52 Agpalo. 154 SCRA 723. 1032 [1973]. 1 (1954). 5. 55 Ibid. 944 F. S. Emerald Garment Manufacturing Corporation v. This led courts in that jurisdiction to hold that post-sale confusion by the public at large (Esercizio v.. to be granted or dissolved in the manner provided in the Code of Civil Procedure.Supp. Fernandez." (Emphasis supplied) 51 The United States Congress had introduced the same amendment to the Lanham Act in 1946. In 1962. 1006 (1968). 836 [1981]) or "subliminal confusion. 525 F. Supp. Macagba.Supp. et al. 1108 [1981]) are sufficient to sustain a trademark infringement claim. Court of Appeals. Krup-Koppers. Dreyfus Fund Incorporated v. Inc. 22 October 1987. 291 (1990). 214 Phil. Inc. Under Section 239. marks registered in the Supplemental Register under RA 166 will remain in force but are no longer subject to renewal. 251 SCRA 600. Court of Appeals. Royal Bank of Canada.. pp. 4. La Chemise Lacoste.A. 133 Phil. 100098. 263. p.

Hanson v. Ltd. Paul. Inc. Johnson & Johnson. of the Philippines. 1-2. 319 F. Co Tiong Sa v. upon proper showing. 22 March 1993. Triangle Publications. 42 Phil. Supp. 120 Phil. Life Television Co. pp.. 70 71 No. Amador. 100 (1917). pp. pp. Jao Oge. Inc.61 100 Phil. had the defendant not infringed his said rights. 72 73 Reiterated in Section 168 of RA 8293. v. 31 July 1975.. 77 See Q-Tips. Shell Co. 105 F. "La Insular" v. (Francis Dy). or in the event such measure of damages cannot be readily ascertained with reasonable certainty. Manila Candy Co. in the discretion of the court. 8 January 1987.2d 74 (1947). Supp. L-27906.. 147 SCRA 154. Tele Scan Technologies. 123 F. 31 SCRA 544. Inc. 74 V. and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made. Inc." TSN. 82 See Q-Tips. 588-589. 67 Rollo. v. Mojica. or the profit which the defendant actually made out of the infringement. v. 325 (1952). Co. L-26557. 148-149. 470 (1954). 80 81 Rollo. 84 76 Alhambra Cigar. 75 This provision reads: "Actions.Supp 845 (1952). 266 (1914). Vogue School of Fashion Modelling. of St. 36 Phil. Johnson & Johnson. supra note 60. supra note 58 at 278. Inc. 163 F.. 40-45. v. 366 (1921). then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant of the value of the services in connection with which the mark or tradename was used in the infringement of the rights of the complaining party.. v. 69 See Fisons Horticulture.L. Director of Patents. Clarke v. and damages and injunction for infringement. Petroleum Refining Co. 15 March 1993. 214 (1956). p. 65 Supra note 39. 434 (1964). 83 The complaining party. may also be granted injunction. TSN (Francis Dy). 64 Supra note 27. v. v. L-23035. Time v. 18 February 1970. Suncoast Tours. Inc. etc.3d 243 (2003). — Any person entitled to the exclusive use of a registered mark or trade-name may recover damages in a civil action from any person who infringes his rights. L. 32. 108 F.3d 466 (1994). 295 (1966). 65 SCRA 575. Vigoro Industries. pp. 79 Rollo. 27 Phil. supra note 78. Lambert Groups. . 68 Conde Nast Publications v. 30 F. In cases where actual intent to mislead the public or to defraud the complaining party shall be shown. 78 63 No. 1999 WL 1034683 (1999).C. the damages may be doubled. 62 No. PACCAR Inc. Ins. Ltd. 66 125 Phil..

respondent Myra Pharmaceuticals. INC. DECISION NACHURA. 1977. renewed for ten (10) years on July 8." which is practically identical with its own "DERMALIN." (Application No. with each syllable identical in sound and appearance. The application was published for Opposition in the IPO E-Gazette on March 9. 2007. Civil Code. and that notwithstanding the additional letter "E" by Dermaline. 2006. (Dermaline) filed before the Intellectual Property Office (IPO) an application for registration of the trademark "DERMALINE DERMALINE." more particularly that the first eight (8) letters of the marks are identical. INC. 2003 and was already refused registration by the IPO. Inc. vs. 86 Article 2208(1).A. Myra also pointed out that Dermaline applied for the same mark "DERMALINE" on June 3. Civil Code. Myra said that the registration of Dermaline’s trademark will violate Section 1235 of Republic Act (R. 4-2006011536). despite Dermaline’s attempt to differentiate its applied mark. The antecedent facts and proceedings— On October 21. the pronunciation for both marks are identical. 190065 August 16.R.R. 2010 DERMALINE. (Myra) filed a Verified Opposition4 alleging that the trademark sought to be registered by Dermaline so resembles its trademark "DERMALIN" and will likely cause confusion. Inc. Further. and said mark is still valid and subsisting.85 Article 2229. 8293 (Intellectual Property Code of the Philippines). mistake and deception to the purchasing public.) No. 2006.. SP No. 20093 of the Court of Appeals (CA) in CA-G. the dominant feature is the term "DERMALINE. Dermaline appears to have engaged in a fishing expedition for the approval of . G. 1986. By filing this new application for registration." registered with the IPO way back July 8. This is a petition for review on certiorari1 seeking to reverse and set aside the Decision dated August 7. Petitioner. It further alleged that Dermaline’s use and registration of its applied trademark will diminish the distinctiveness and dilute the goodwill of Myra’s "DERMALIN. Myra has been extensively using "DERMALIN" commercially since October 31. 2007. No.: Myra claimed that. Respondent. 20092 and the Resolution dated October 28. even if the last syllable of "DERMALINE" consisted of four (4) letters while "DERMALIN" consisted only of three (3). MYRA PHARMACEUTICALS. J. both marks have three (3) syllables each. On May 8. petitioner Dermaline. INC. 108627.

hereby SUSTAINED.1(d) of R. However. SO ORDERED. it could still be connected to the "DERMALIN" mark under Classification 58 for pharmaceutical products. No. as a registered trademark owner.9 Dermaline countered that a simple comparison of the trademark "DERMALINE DERMALINE. It disposed— WHEREFORE. but it was denied under Resolution No. such that its trademark "DERMALINE DERMALINE. Application Serial No. the IPO-Bureau of Legal Affairs rendered Decision No. this petition raising the issue of whether the CA erred in upholding the IPO’s rejection of Dermaline’s application for registration of trademark. emblem. such that jurisprudential precedents should only be made to apply if they are specifically in point. since ultimately these goods are very closely related. including the other features appearing in both labels." vis-àvis Myra’s "DERMALIN" trademark would show that they have entirely different features and distinctive presentation. in any way. It claimed that there were glaring and striking dissimilarities between the two trademarks. A trademark is any distinctive word. In trademark controversies.10 On April 10. thus it cannot result in confusion. name. The parties failed to settle amicably. Dermaline appealed to the Office of the Director General of the IPO. INC. or similar signs or containers for goods or services. Myra argued that its intellectual property right over its trademark is protected under Section 1476 of R. Myra added that even if the subject application was under Classification 447 for various skin treatments. Dermaline appealed to the CA.A. INC. INC. the appeal was dismissed for being filed out of time. Let the file wrapper of ‘DERMALINE. Expectedly. hence. REJECTED. DERMALINE. 2009. or any combination thereof. Consequently. 8293 to prevent third parties from using a trademark. symbol. the Verified Opposition is. The CA likewise denied Dermaline’s motion for reconsideration. but their entirety must be considered in relation to the goods to which they are attached. No. in an Order14 dated April 17. adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured. as it is. 4-2006-011536 for the mark ‘DERMALINE. 8293. INC. Dermaline filed a motion for reconsideration. or device. 2008. No. 8293. Consequently. 2009 and the rejection of Dermaline’s application for registration of trademark. Undaunted. identical or similar to its . without its consent. or dealt by others. sign. In its Verified Answer." is aurally similar to its own mark such that the registration and use of Dermaline’s applied mark will enable it to obtain benefit from Myra’s reputation. but it affirmed and upheld the Order dated April 17. sold. is as it is hereby.12 Aggrieved. 2009-12(D)13 dated January 16. Myra asserted that the mark "DERMALINE DERMALINE. 2008-7011 sustaining Myra’s opposition pursuant to Section 123. Dermaline further argued that there could not be any relation between its trademark for health and beauty services from Myra’s trademark classified under medicinal goods against skin disorders. it has the right under Section 147 of R.its mark. Stylized Wordmark’ subject matter of this case be forwarded to the Bureau of Trademarks (BOT) for appropriate action in accordance with this Decision. connected to Myra. under class 44 covering the aforementioned goods filed on 21 October 2006. mistake or deception on the part of the purchasing public. in determining if the subject trademarks are confusingly similar. Dermaline contended that. the preliminary conference was terminated and they were directed to file their respective position papers. DERMALINE. a comparison of the words is not the only determinant.16 As Myra correctly posits. 2009. The petition is without merit. INC.15 Inarguably. it is an intellectual property deserving protection by law.A. each case must be scrutinized according to its peculiar circumstances. Inc. Stylized Wordmark’ for Dermaline." speaks for itself (Res ipsa loquitur).A. goodwill and advertising and will lead the public into believing that Dermaline is.

We agree with the findings of the IPO. essential and dominant features of the earlier registered trademark. 2007. and market segments. It also noted that. distribution. the Dominancy Test and the Holistic or Totality Test.21 In rejecting the application of Dermaline for the registration of its mark "DERMALINE DERMALINE. 8293. As correctly applied by the IPO in this case. or to deceive. and of the registrant’s exclusive right to use the same in connection with the goods and those that are related thereto specified in the certificate. 18 Given greater consideration are the aural and visual impressions created by the marks in the public mind. quality. (emphasis supplied) On the other hand. The scrutinizing eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels so that a conclusion may be drawn as to whether one is confusingly similar to the other. where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other.A. jurisprudence has noted two (2) types of confusion. 8293 which provides— 155. giving little weight to factors like prices.19 The test of dominancy is now explicitly incorporated into law in Section 155. which provides that a certification of registration of a mark is prima facie evidence of the validity of the registration. below and . or to cause mistake. offering for sale. sales outlets. and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties. In determining likelihood of confusion. case law has developed two (2) tests. usually. It declared that both confusion of goods and service and confusion of business or of origin were apparent in both trademarks.1 of R. though inexistent. or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale. where. and confusion or deception is likely to result. peculiar shape or name. the registrant’s ownership of the mark. be sustained. The IPO also upheld Myra’s right under Section 138 of R." the IPO applied the Dominancy Test. including labels and packaging. INC. counterfeit. the product.A.1. the Holistic Test entails a consideration of the entirety of the marks as applied to the products. neither is it necessary that the label of the applied mark for registration should suggest an effort to imitate. INC. and therefore to some extent familiar with. it already sustained the opposition of Myra involving the trademark "DERMALINE" of Dermaline under Classification 5. design. color. although the goods of the parties are different. what are taken into account are signs. and the portion "DERMALINE. No. viz: (1) confusion of goods (product confusion).. where such use would result in a likelihood of confusion.registered trademark.20 Relative to the question on confusion of marks and trade names." had differences "too striking to be mistaken" from Myra’s "DERMALIN" cannot. The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. or some special. The important issue is whether the use of the marks involved would likely cause confusion or mistake in the mind of or deceive the ordinary purchaser. is such as might reasonably be assumed to originate with the registrant of an earlier product. No." is written in upper case letters. in determining confusing similarity. the goods in question. or one who is accustomed to buy. the mark of which registration is applied for by one party. easily remembered earmarks of the brand that readily attracts and catches the attention of the ordinary consumer. advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion. INC. therefore. per Bureau Decision No.22 Dermaline’s insistence that its applied trademark "DERMALINE DERMALINE. Duplication or imitation is not even required. Use in commerce any reproduction. copy. 2007179 dated December 4.17 It is applied when the trademark sought to be registered contains the main. while there are no set rules that can be deduced as what constitutes a dominant feature with respect to trademarks applied for registration. While it is true that the two marks are presented differently – Dermaline’s mark is written with the first "DERMALINE" in script going diagonally upwards from left to right. and (2) confusion of business (source or origin confusion). with an upper case "D" followed by the rest of the letters in lower case.

in different segments of the market. The Court is cognizant that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. even without any opposition on the part of the owner and user of a previously registered label or trademark. Dermaline’s stance that its product belongs to a separate and different classification from Myra’s products with the registered trademark does not eradicate the possibility of mistake on the part of the purchasing public to associate the former with the latter. but also to protect an already used and registered trademark and an established goodwill.R. 576) or is in any way connected with the activities of the infringer. we have held – 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.smaller than the long-hand portion. bear great weight and deserves respect from this Court. Thus. SO ORDERED. when one applies for the registration of a trademark or label which is almost the same or that very closely resembles one already used and registered by another. for example. and further sustained by the CA. the registered trademark owner may use its mark on the same or similar products. ANTONIO EDUARDO B. Further. the petition is DENIED. The Decision dated August 7. Thus. the decision of the IPO had already attained finality when Dermaline failed to timely file its appeal with the IPO Office of the Director General. 53 Am Jur. 577). This is intended not only to avoid confusion on the part of the public. PERALTA Associate Justice ROBERTO A. 148 ALR 77. 576. NACHURA Associate Justice WE CONCUR: ANTONIO T. when an ordinary purchaser. This is because they are almost spelled in the same way. 2009 and the Resolution dated October 28. especially considering that both classifications pertain to treatments for the skin. while Myra’s mark "DERMALIN" is written in an upright font. with a capital "D" and followed by lower case letters – the likelihood of confusion is still apparent. chances are he will associate it with Myra’s registered mark. 52 Am. Moreover. WHEREFORE. hears an advertisement of Dermaline’s applied trademark over the radio. and at different price levels depending on variations of the products for specific segments of the market. Costs against petitioner. except for Dermaline’s mark which ends with the letter "E. Jur.23 (Emphasis supplied) Thus.24 Besides. the application should be rejected and dismissed outright. 2009 of the Court of Appeals in CA-G. the public may mistakenly think that Dermaline is connected to or associated with Myra. considering the current proliferation of health and beauty products in the market. or when it forestalls the normal potential expansion of his business (v. 84. ABAD Associate Justice JOSE CATRAL MENDOZA Associate Justice . CARPIO Associate Justice Chairperson DIOSDADO M. such as trademarks. the purchasers would likely be misled that Myra has already expanded its business through Dermaline from merely carrying pharmaceutical topical applications for the skin to health and beauty services. Verily. SP No. 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. with the ending letter "E" in Dermaline’s mark pronounced silently." and they are pronounced practically in the same manner in three (3) syllables. The findings of the IPO. 108627 are AFFIRMED. upheld on appeal by the same office. is factual in nature.1avvphi1 Indeed. the issue on protection of intellectual property. 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. such that.

pp. BODY & LEGS). in respect of: I attest that the conclusions in the above Resolution were reached in consultation before the case was assigned to the writer of the opinion of the Court’s Division. – 123. 2 3 Id. Second Division (ii) Closely related goods or services. "FACIAL. or ANTONIO T.1.2. ARMS AND LEGS). concurring. EYEBAG REMOVAL). That use of that mark in relation to those goods or services would indicate a connection between those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further. EXCESSIVE SWEATING. at 78-86. SLIMMING. 147.ATTESTATION (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date.E. BODY TONING. 123. (i) The same goods or services. SKIN BLEACHING (FACE. Article VIII of the Constitution and the Division Chairperson's Attestation. id. CORONA Chief Justice SEC. That the interests of the owner of the registered mark are likely to be damaged by such use. RENATO C.) Pursuant to Section 13. or (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion. I certify that the conclusions in the above Resolution had been reached in consultation before the case was assigned to the writer of the opinion of the Court’s Division. The exclusive right of the owner of a wellknown mark defined in Subsection 123. BODY ODOR 7 SEC. CERTIFICATION x x x (Emphasis supplied. BACK CLEANING. Penned by Associate Justice Martin S. In case of the use of an identical sign for identical goods or services. 3-18. shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided. CARPIO Associate Justice Chairperson. (now a member of this Court). Veloso and Normandie B. at 19-32. DERMALIFT (FACE LIFTING.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. HAIR GROWER TREATMENT. ACNE TREATMENT AND CONTROL SKIN PEELING (FACE BODY. with Associate Justices Vicente S. ARMPIT. Villarama.1(e) which is registered in the Philippines. Pizarro. Registrability. Jr. — 147. Footnotes 1 Rollo. 4 Id. A mark cannot be registered if it: 5 xxx . a likelihood of confusion shall be presumed. BODY. ARMPIT. at 32. Rights Conferred. 6 147.

v. 47. No. EYE MAKE-UP. HAIR TREATMENT/SPA. February 2. 10 11 Id. TINT (TOUCH UP). EYELASH PERMING.R. 528... G. Inc. FOOT SCRUB. 918 (2001). 13 Id. 215 SCRA 316. Dir. 196197 (1921). WOMEN’S HAIRCUT. respondents. v. 23 McDonald’s Corporation v. 19 Mighty Corporation v. at 37-50. 2004 MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO. rollo. 108 Phil. citing Faberge Incorporated v. Tan Tiao Bok. Gallo Winery. ANTIFUNGAL. et al. FULL MAKE-UP. LIP). McDonald’s Corporation v. 514 SCRA 95." 8 9 Rollo. citing Sta. UPPER AND LOWER LID.R. STRETCH MARK TREATMENT.C. HALF BODY MASSAGE. citing Dy Buncio v. 42 Phil 190.C. 137 Phil 838. 22 Rollo.. Intermediate Appellate Court.C.. 94-106.26. 107. Fortune Tobacco Corporation. November 4. et al. & J. at 34-35. citing Sterling Products International. v. Big Mak Burger. 1006. 434 (2004). v. 356. 71189. 166115. 24 Prosource International. 158589. 20 McDonald’s Corporation v. GALLO WINERY and THE ANDRESONS GROUP. No. MacJoy Fastfood Corporation. HAIR COLOR. INC. Big Mak Burger. MEN’S HAIRCUT. June 27. Incorporated v. 833. No. ANTISCABIES PREPARATIONS FOR THE TREATMENT OF SKIN DISORDERS. . 87-93. G." Philip Morris. FULL BODY MASSAGE. No. 133 Phil. L. L. 493 SCRA 333. TATTOO (EYEBROW.. & J. Inc. p.. BODY MASSAGE. petitioner. No. 15 Philip Morris. 1013 (1968). 107-119. 478 Phil. BLOW-DRY SETTING.. Cluett Peabody Co.R. Farbenfabriken Bayer Aktiengesellschaft. FOOT SPA WITH PEDICURE. OPEN PORES TREATMENT. McDonald’s Corporation v. pp. supra at 428. 905.C.R. L. Fortune Tobacco Corporation. HIGHLIGHTS (FOIL).R. v. Inc. 12 Id. Inc.. HIGHLIGHTS (CAP). 852 (1969). 21 "TOPICAL ANTIBACTERIAL. 2006. SAUNA. E. Maliwat. pp. Inc. EYEBROW THREADING. 836. PERMING. 402. CELLOPHANE. at. 480 Phil. G. Big Mak Burger. of Patents and Villapania. at 52-53. 320 and Chuanchow Soy & Canning Co. 16 Amigo Manufacturing. 605 SCRA 523. Inc. Position Paper (For the Opposer). HAIR RELAXING. pp. KID’S HAIRCUT. Ana v.. G. Inc. E. INC.. 1992. supra at 432. 14 Id. HOT OIL. 2007. 659 (2004). 17 G. MANICURE. 180073. vs. supra at 406. Big Mak Burger. 154342 July 14. 615. UPPER LIP THREADING. L. 2009. Horphag Research Management SA. Position Paper for Dermaline. UP-STYLE (LADIES). 18 McDonald’s Corporation v. 406 Phil. November 25. Inc.TREATMENT AND CONTROL. supra at 359. Inc.

In 1976. 1999 order. La Campana authorized Mighty Corporation to manufacture and sell cigarettes bearing the GALLO trademark. Branch 57 (Makati RTC) in Civil Case No. (Andresons). the National Library issued Certificate of Copyright Registration No. & J. 8 The Bureau of Internal Revenue (BIR) approved Tobacco Industries’ use of GALLO 100’s cigarette mark on September 14. 17021 which was renewed on November 16. Respondent domestic corporation. 5834 for La Campana’s lifetime copyright claim over GALLO cigarette labels. and permanently enjoined them from. has been Gallo Winery’s exclusive wine importer and distributor in the Philippines since 1991.). Gallo Winery (Gallo Winery) and The Andresons Group. then by La Campana and finally by Mighty Corporation. I. 2002 CA resolution denying their motion for reconsideration4 and (c) the aforesaid Makati RTC decision itself.15 On the other hand. (b) the July 11. 2001 decision1 of the Court of Appeals (CA) in CA-G. J. 1971 under Certificate of Registration No.S. and GALLO SPECIAL MENTHOL 100’s cigarette brand on April 3. 1990 under Application Serial No. 9 On February 5. although the GALLO wine trademark was registered in the Philippines in 1971. applied for trademark registration in the Philippine Patent Office. Tobacco Industries filed its manufacturer’s sworn statement as basis for BIR’s collection of specific tax on GALLO cigarettes. where all its wineries are located. distribution and sale of tobacco products for which they have been using the GALLO cigarette trademark since 1973. 2 as modified by the June 24. Andresons. 1985. 1973 and GALLO filter cigarette mark on March 26. on May 18. under licensing agreement with Tobacco Industries.R. Tobacco Industries applied for. 1985. reverse and set aside: (a) the November 15.3 of the Regional Trial Court of Makati City. United States of America (U. manufacture. 1989.DECISION CORONA. petitioners Mighty Corporation and La Campana Fabrica de Tabaco.14 Petitioners claim that GALLO cigarettes have been sold in the Philippines since 1973. The Factual Background Respondent Gallo Winery is a foreign corporation not doing business in the Philippines but organized and existing under the laws of the State of California. Inc. 1991 for another 20 years. committing trademark infringement and unfair competition.12 Subsequently. Inc. Tobacco Industries of the Philippines (Tobacco Industries). the registration of the GALLO cigarette trademark in the principal register of the then Philippine Patent Office. both for the manufacture and sale of its cigarette products. and which ordered them to pay damages to respondents E. CV No. 13 BIR approved Mighty Corporation’s use of GALLO 100’s cigarette brand. 1988. are engaged in the cultivation. respondents claim that they .6 Gallo Winery also applied for registration of its ERNEST & JULIO GALLO wine trademark on October 11. 1998 decision. Tobacco Industries assigned the GALLO cigarette trademark to La Campana which. 93-850. petitioners Mighty Corporation and La Campana and their sister company. which held petitioners liable for. (La Campana) seek to annul. 10 In May 1984. initially by Tobacco Industries. 7 On the other hand.11 On July 17. 1974.5 Gallo Winery’s GALLO wine trademark was registered in the principal register of the Philippine Patent Office (now Intellectual Property Office) on November 16. 901011-00073599-PN but the records do not disclose if it was ever approved by the Director of Patents. 1976.: In this petition for review on certiorari under Rule 45. selling these products in its own name and for its own account. 65175 affirming the November 26. but eventually did not pursue. including the GALLO and ERNEST & JULIO GALLO wine trademarks. on July 16. Gallo Winery produces different kinds of wines and brandy products and sells them in many countries under different registered trademarks.

the dominant feature of the GALLO cigarette mark was the rooster device with the manufacturer’s name clearly indicated as MIGHTY CORPORATION while. respondent’s prayer for the issuance of a writ of preliminary injunction. 1993. military facilities only. not cigarettes. at least P500. laborers and other low-income workers.26 On August 19. respondents were guilty of laches and estoppel. docketed as CA-G.19 specifically. deception and mistake on the part of the purchasing public who had always associated GALLO and ERNEST & JULIO GALLO trademarks with Gallo Winery’s wines. thereby affirming the Makati RTC’s denial of the application for issuance of a writ of preliminary injunction against petitioners. GALLO cigarettes and GALLO wines were sold through different channels of trade. 17 Forthwith. 1993. they had expanded their Philippine market through authorized distributors and independent outlets.000 as attorney’s fees and litigation expenses. the target market of Gallo Winery’s wines was the middle or high-income bracket with at least P10. plus P2 million as actual and compensatory damages. petitioners alleged.000 monthly income while GALLO cigarette buyers were farmers. with a prayer for damages and preliminary injunction. for lack of merit. GALLO cigarettes."27 On February 20. there [was] no showing that [these cases had] been tested or found applicable in our jurisdiction. it was the full names of the founders-owners ERNEST & JULIO GALLO or just their surname GALLO. Gallo Winery’s GALLO trademark registration certificate covered wines only.60 for GALLO filters and P3 for GALLO menthols.22 They claimed that petitioners adopted the GALLO trademark to ride on Gallo Winery’s GALLO and ERNEST & JULIO GALLO trademarks’ established reputation and popularity. In an order dated April 21. justice and good faith in the exercise of their right to manufacture and sell GALLO cigarettes. sold at P4. II. 1998. The Legal Dispute On March 12. that respondents’ wines and petitioners’ cigarettes were not related goods and respondents failed to prove material damage or great irreparable injury as required by Section 5. 16 Respondents claim that they first learned about the existence of GALLO cigarettes in the latter part of 1992 when an Andresons employee saw such cigarettes on display with GALLO wines in a Davao supermarket wine cellar section. The court reiterated that respondents’ wines and petitioners’ cigarettes were not related goods since the likelihood of deception and confusion on the part of the consuming public was very remote. that: petitioner’s GALLO cigarettes and Gallo Winery’s wines were totally unrelated products. fishermen. and at least P500. the Makati RTC. Moreover. for lack of merit. 1993.first introduced and sold the GALLO and ERNEST & JULIO GALLO wines in the Philippines circa 1974 within the then U.R. on November 26. were low-cost items compared to Gallo Winery’s high-priced luxury wines which cost between P98 to P242. thus causing confusion. Sections 22 and 23 (for trademark infringement). among other affirmative defenses. however. respondents sent a demand letter to petitioners asking them to stop using the GALLO trademark.S. held petitioners liable for. Rule 58 of the Rules of Court.000 as exemplary and moral damages. Respondents prayed for the issuance of a writ of preliminary injunction and ex parte restraining order. 1995.24 the Makati RTC denied. to no avail. by their inaction and conduct.50. 32626. the Makati RTC denied. respondents sued petitioners in the Makati RTC for trademark and tradename infringement and unfair competition. in the case of Gallo Winery’s wines. respondents’ motion for reconsideration. and permanently enjoined . Respondents charged petitioners with violating Article 6 bis of the Paris Convention for the Protection of Industrial Property (Paris Convention)18 and RA 166 (Trademark Law). 23 In their answer.20 29 and 3021 (for unfair competition and false designation of origin) and 37 (for tradename infringement). No. By 1979.25 holding that respondent’s GALLO trademark registration certificate covered wines only. the CA likewise dismissed respondents’ petition for review on certiorari. and petitioners acted with honesty. The trial court emphasized that it could not rely on foreign rulings cited by respondents "because the[se] cases were decided by foreign courts on the basis of unknown facts peculiar to each case or upon factual surroundings which may exist only within their jurisdiction. 28 After trial on the merits.

130. b.34 . must be dismissed outright. to wit: a. assert that this petition which invokes Rule 45 does not involve pure questions of law.33 otherwise. the doubt pertains to the application and interpretation of law to a certain set of facts) and not "questions of fact" (where the doubt concerns the truth or falsehood of alleged facts).000. the petition will be denied.00.235. counterfeit. (iii) attorney’s fees and expenses of litigation in the amount of PHP1. designs or emblems and other acts of similar nature. and all persons acting for them or under their instructions. 1999. on the other hand.000.000.00) from the filing of the complaint until fully paid. 31 Respondents. their distributors. either singly or in conjunction with other words. III. (iv) the cost of suit. the CA affirmed the Makati RTC decision and subsequently denied petitioner’s motion for reconsideration.290. the Makati RTC granted respondent’s motion for partial reconsideration and increased the award of actual and compensatory damages to 10% of P199. copy or colorable imitation of said trademark."29 On June 24. similar or related goods for the reason alone that they were purportedly forms of vice. a petition for review on certiorari under Rule 45 must raise only "questions of law"32 (that is. [b] GALLO cigarettes and GALLO wines were identical. SO ORDERED. committing trademark infringement and unfair competition with respect to the GALLO trademark: WHEREFORE. from (i) using E & J’s registered trademark GALLO or any other reproduction. ordering defendants to pay plaintiffs – (i) actual and compensatory damages for the injury and prejudice and impairment of plaintiffs’ business and goodwill as a result of the acts and conduct pleaded as basis for this suit. judgment is rendered in favor of the plaintiff (sic) and against the defendant (sic). and hence.91. and (ii) committing other acts of unfair competition against plaintiffs by manufacturing and selling their cigarettes in the domestic or export markets under the GALLO trademark. IV. Discussion THE EXCEPTIONAL CIRCUMSTANCES IN THIS CASE OBLIGE THE COURT TO REVIEW THE CA’S FACTUAL FINDINGS As a general rule. permanently restraining and enjoining defendants.929. [c] both goods passed through the same channels of trade and [d] petitioners were liable for trademark infringement. trade outlets.30 On appeal. We are not a trier of facts and the Court of Appeals’ factual findings are generally conclusive upon us. unfair competition and damages. in an amount equal to 10% of FOURTEEN MILLION TWO HUNDRED THIRTY FIVE THOUSAND PESOS (PHP14. (ii) exemplary damages in the amount of PHP100.000 or P19. The Issues Petitioners now seek relief from this Court contending that the CA did not follow prevailing laws and jurisprudence when it held that: [a] RA 8293 (Intellectual Property Code of the Philippines [IP Code]) was applicable in this case.068.them from.

The resolution of the factual issues concerning the goods’ similarity.38 (Emphasis and underscoring supplied) (6) the findings are without citation of specific evidence on which they are based. in the Makati RTC decision of November 26. we give due course to the petition.A.A. (2) the inference of the Court of Appeals from its findings of fact is manifestly mistaken. in making its findings. and (8) the findings of fact of the Court of Appeals are premised on the absence of evidence and are contradicted [by the evidence] on record. and conjectures. Section 155 of the IP Code. went beyond the issues of the case. petitioners were held liable not only under the aforesaid governing laws but also under the IP Code which took effect only on January 1. a conclusion based on statutory interpretation. and acts of trademark infringement and unfair competition is greatly dependent on the interpretation of applicable laws. 1993 for trademark infringement and unfair competition committed during the effectivity of the Paris Convention and the Trademark Law. THE TRADEMARK LAW AND THE PARIS CONVENTION ARE THE APPLICABLE LAWS. Yet. 37 or about five years after the filing of the complaint: (5) the appellate court.36 In this light. weighing. 166 and R. Thus. deception and mistake on the part of the purchasing public. Defendants’ unauthorized use of the GALLO trademark constitutes trademark infringement pursuant to Section 22 of Republic Act No. the trial court thus did not err in holding that appellants’ acts not only violated the provisions of the our trademark laws (R. 1998. we conclude that both the Court of Appeals and the In the light of its finding that appellants’ use of the GALLO trademark on its cigarettes is likely to create confusion with the GALLO trademark on wines previously registered and used in the Philippines by appellee E & J Gallo Winery. 1998. 166. and Article 16 (1) of the TRIPS Agreement as it causes confusion. NOT THE INTELLECTUAL PROPERTY CODE We note that respondents sued petitioners on March 12.39 (Emphasis and underscoring supplied) We therefore hold that the courts a quo erred in retroactively applying the IP Code in this case. No. channels of trade. trial court veered away from the law and well-settled jurisprudence. (3) there is grave abuse of discretion. absurd and impossible. The CA apparently did not notice the error and affirmed the Makati RTC decision: (4) the judgment is based on a misapprehension of facts. relation.This case involves questions of fact which are directly related and intertwined with questions of law. . identity. surmises. (sic) 8293) but also Article 6bis of the Paris Convention. (7) the facts set forth in the petition as well as in the petitioner's main and reply briefs are not disputed by the respondents. and the same are contrary to the admissions of both the appellant and the appellee. Nos. after thoroughly examining the evidence on record. analyzing and balancing all factors to determine whether trademark infringement and/or unfair competition has been committed. The controversy here is not simply the identity or similarity of both parties’ trademarks but whether or not infringement or unfair competition was committed. Article 6bis of the Paris Convention. one or more of the following exceptional circumstances oblige us to review the evidence on record:35 (1) the conclusion is grounded entirely on speculation. Furthermore.

although the two subjects are entwined with each other and are dealt with together in the Trademark Law (now. DISTINCTIONS BETWEEN TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION Although the laws on trademark infringement and unfair competition have a common conception at their root.41 There are only a few instances when laws may be given retroactive effect.47 Thus. (2) In infringement of trademark fraudulent intent is unnecessary. [This rule also applies] when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith. repealing the Trademark Law. Hence.46 an international agreement binding on the Philippines and the United States (Gallo Winery’s country of domicile and origin) prohibits "the [registration] or use of a trademark which constitutes a reproduction. whereas in unfair competition fraudulent intent is essential. 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 the [Paris] Convention and used for identical or similar goods. Thus. 40 Nova constitutio futuris formam imponere debet non praeteritis. even if one fails to establish his exclusive property right to a trademark. imitation or translation liable to create confusion. To make a law binding even before it takes effect may lead to the arbitrary exercise of the legislative power. a person shall not be permitted to misrepresent his goods or his business as the goods or business of another. the law on unfair competition is broader and more inclusive than the law on trademark infringement.43 was approved on June 6. not the past. whether these are original enactments. It is not necessary that any particular means should be used to this end. Section 241 thereof expressly decreed that it was to take effect only on January 1. under Article 6bis of the Paris Convention. whereas in unfair competition registration is not necessary. The latter is more limited but it recognizes a more exclusive right derived from the trademark adoption and registration by the person whose goods or business is first associated with it. 1997." There is no time limit for seeking the prohibition of the use of marks used in bad faith. A new state of the law ought to affect the future. 1998. without any provision for retroactive application. .It is a fundamental principle that the validity and obligatory force of a law proceed from the fact that it has first been promulgated. imitation or translation. the Makati RTC and the CA should have limited the consideration of the present case within the parameters of the Trademark Law and the Paris Convention. the laws in force at the time of the filing of the complaint.45 we distinguished trademark infringement from unfair competition: (1) Infringement of trademark is the unauthorized use of a trademark. that is. The IP Code. A law that is not yet effective cannot be considered as conclusively known by the populace. the following are the elements of trademark infringement: (a) registration or use by another person of a trademark which is a reproduction. Any doubt must generally be resolved against the retroactive operation of laws. The law on trademarks is thus a specialized subject distinct from the law on unfair competition.44 In Del Monte Corporation vs. liable to create confusion. whereas unfair competition is the passing off of one's goods as those of another. Pertinent Provisions on Trademark Infringement under the Paris Convention and the Trademark Law Article 6bis of the Paris Convention. both are covered by the IP Code). amendments or repeals. Conduct constitutes unfair competition if the effect is to pass off on the public the goods of one man as the goods of another.42 none of which is present in this case. Court of Appeals. (3) In infringement of trademark the prior registration of the trademark is a prerequisite to the action. he may still obtain relief on the ground of his competitor’s unfairness or fraud.

provided that they have been registered and are in actual commercial use in the Philippines. and (d) such act is done without the consent of the trademark registrant or assignee. signs. or reproduce. or identity of such business. counterfeited.(b) of a mark considered by the competent authority of the country of registration or use48 to be well-known in that country and is already the mark of a person entitled to the benefits of the Paris Convention. signs. estoppel or laches may defeat the registrant’s otherwise valid cause of action."49 Trademark registration and actual use are material to the complaining party’s cause of action. This is why acquiescence. counterfeit. counterfeit. 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. copy or colorable imitation to labels. or such trademark is reproduced. or advertising of any goods. Following universal acquiescence and comity. receptacles or advertisements intended to be used upon or in connection with such goods. Under both laws. receptacles or advertisements intended to be used upon or in connection with such goods. copy or colorable imitation is applied to labels. copy or colorable imitation of any registered mark or tradename in connection with the sale. the following constitute the elements of trademark infringement: (a) a trademark actually used in commerce in the Philippines and registered in the principal register of the Philippine Patent Office (b) is used by another person in connection with the sale. wrappers. 20 and 22 of the Trademark Law therefore. or identity of such business. . packages.53 Under Sections 2. he "uses without the consent of the registrant. copy or colorably imitate any such mark or tradename and apply such reproduction. copied or colorably imitated by another person and such reproduction. or advertising of any goods. 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. Sections 2 and 2-A52 of the Trademark Law emphasize the importance of the trademark’s actual use in commerce in the Philippines prior to its registration. wrappers. the protection of a registered trademark is limited only to goods identical or similar to those in respect of which such trademark is registered and only when there is likelihood of confusion. estoppel. In the adjudication of trademark rights between contending parties. the registrant’s ownership and exclusive right to use the trademark in connection with the goods. in case of domestic legal disputes on any conflicting provisions between the Paris Convention (which is an international agreement) and the Trademark law (which is a municipal law) the latter will prevail. (c) the trademark is used for identical or similar goods. and acquiescence may be considered and applied. the time element in commencing infringement cases is material in ascertaining the registrant’s express or implied consent to another’s use of its trademark or a colorable imitation thereof. offering for sale. counterfeit. In summary. On the other hand. prints. Corollary to this. packages. equitable principles of laches. among others.54 Under both the Paris Convention and the Trademark Law. counterfeit. the Paris Convention protects well-known trademarks only (to be determined by domestic authorities). whether well-known or not. business or services as classified by the Director of Patents 51 and as specified in the certificate. offering for sale. prints. business or services. 9-A. Section 22 of the Trademark Law holds a person liable for infringement when. and (c) such trademark is used for identical or similar goods. Section 20 of the Trademark Law50 considers the trademark registration certificate as prima facie evidence of the validity of the registration. any reproduction. business or services as to likely cause confusion or mistake or to deceive purchasers. while the Trademark Law protects all trademarks. subject to the conditions and limitations stated therein. 2-A.

xxx xxx xxx . 61 and Philip Morris vs.55 Nothing at all. 56 In Emerald Garment Manufacturing Corporation vs. Under the doctrine of incorporation as applied in most countries.. p. Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of ownership over a trademark pursuant to Sec. Inc. Inc. 85926 dated March 22. 8 Sessions. International Law and World Organization. Tobacco Industries. On the other hand. and outside thereof. not superior. 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. forms and manufacturer’s sworn statement. to national legislative enactments. was presented to evidence the alleged sales of GALLO wines in the Philippines in 1974 or. 1996 addressed to Andresons Global. Both invoices were for the sale and shipment of GALLO wines to the Philippines during that period.A. it appears that petitioners and its predecessor-in-interest. Inc. Peters. 1971 Ed. Court of Appeals. 2 and 2-A of the Philippine Trademark Law (R. Court of Appeals (224 SCRA 576 [1993]): xxx xxx xxx Following universal acquiescence and comity.. vs. 166) x x x xxx xxx xxx The provisions of the 1965 Paris Convention for the Protection of Industrial Property relied upon by private respondent and Sec.58 Converse Rubber Corporation vs. however. Farbenfabriken Bayer Aktiengesellschaft. military facilities. THE ACTUAL COMMERCIAL USE IN THE PHILIPPINES OF GALLO CIGARETTE TRADEMARK PRECEDED THAT OF GALLO WINE TRADEMARK. High Court of Judiciary of Scotland.. our municipal law on trademarks regarding the requirement of actual use in the Philippines must subordinate an international agreement inasmuch as the apparent clash is being decided by a municipal tribunal (Mortisen vs. 21-A of the Trademark Law (R. Quezon City. 20). Court of Appeals.. proof of all the elements of trademark infringement is a condition precedent to any finding of liability. 29991 dated July 9. Philippines. have indeed been using and selling GALLO cigarettes in the Philippines since 1973 or before July 9. prior to July 9. Philippines and sales invoice no. for that matter. By respondents’ own judicial admission.A. Intermediate Appellate Court. Makati. rules of international law are given a standing equal. has not acquired ownership over said mark. 1906. No. No. Paras. 1981.S. 60 Kabushi Kaisha Isetan vs. we are constrained to agree with petitioner's contention that private respondent failed to prove prior actual commercial use of its "LEE" trademark in the Philippines before filing its application for registration with the BPTTT and hence. 1981 addressed to Conrad Company Inc.62 giving utmost importance to the actual commercial use of a trademark in the Philippines prior to its registration. by testimonial evidence supported by the BIR authorization letters. only in 1979. 166) were sufficiently expounded upon and qualified in the recent case of Philip Morris. v. To prove commercial use of the GALLO wine trademark in the Philippines. Great Britain.59 Sterling Products International. notwithstanding the provisions of the Paris Convention: xxx xxx xxx In addition to the foregoing. Universal Rubber Products.Hence.57 we reiterated our rulings in Pagasa Industrial Corporation vs. Court of Appeals. Inc. 1981. respondents presented sales invoice no. 93. the GALLO wine trademark was registered in the Philippines in November 1971 but the wine itself was first marketed and sold in the country only in 1974 and only within the former U. Withal.

In other words, (a foreign corporation) may
have the capacity to sue for infringement
irrespective of lack of business activity in the
Philippines on account of Section 21-A of the
Trademark Law 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. 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,
the entity need not be actually using the
trademark in commerce in the Philippines. Such a
foreign corporation may have the personality to file
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.
xxx xxx xxx
Undisputably, private respondent is the senior
registrant, having obtained several registration
certificates for its various trademarks "LEE," "LEE RIDERS,"
and "LEESURES" in both the supplemental and principal
registers, as early as 1969 to 1973. However,
registration alone will not suffice. In Sterling
Products International, Inc. v. Farbenfabriken Bayer
Aktiengesellschaft (27 SCRA 1214 [1969]; Reiterated in
Kabushi Isetan vs. Intermediate Appellate Court (203 SCRA
583 [1991]) we declared:
xxx xxx xxx
A rule widely accepted and firmly entrenched
because it has come down through the years is
that actual use in commerce or business is a
prerequisite in the acquisition of the right of
ownership over a trademark.
xxx xxx xxx

The credibility placed on a certificate of registration of
one's trademark, or its weight as evidence of validity,
ownership and exclusive use, is qualified. A registration
certificate serves merely as prima facie evidence. It
is not conclusive but can and may be rebutted by
controverting evidence.
xxx xxx xxx
In the case at bench, however, we reverse the findings of
the Director of Patents and the Court of Appeals. After a
meticulous study of the records, we observe that
the Director of Patents and the Court of Appeals
relied mainly on the registration certificates as
proof of use by private respondent of the trademark
"LEE" which, as we have previously discussed are
not sufficient. We cannot give credence to private
respondent's claim that its "LEE" mark first reached
the Philippines in the 1960's through local sales by
the Post Exchanges of the U.S. Military Bases in the
Philippines (Rollo, p. 177) based as it was solely on
the self-serving statements of Mr. Edward Poste,
General Manager of Lee (Phils.), Inc., a wholly
owned subsidiary of the H.D. Lee, Co., Inc., U.S.A.,
herein private respondent. (Original Records, p. 52)
Similarly, we give little weight to the numerous
vouchers representing various advertising expenses
in the Philippines for "LEE" products. It is well to
note that these expenses were incurred only in 1981
and 1982 by LEE (Phils.), Inc. after it entered into a
licensing agreement with private respondent on 11
May 1981. (Exhibit E)
On the other hand, petitioner has sufficiently shown
that it has been in the business of selling jeans and
other garments adopting its "STYLISTIC MR. LEE"
trademark since 1975 as evidenced by appropriate sales
invoices to various stores and retailers. (Exhibit 1-e to 1-o)
Our rulings in Pagasa Industrial Corp. v. Court of Appeals
(118 SCRA 526 [1982]) and Converse Rubber Corp. v.
Universal Rubber Products, Inc., (147 SCRA 154 [1987]),
respectively, are instructive:

The Trademark Law is very clear. It requires actual
commercial use of the mark prior to its registration.
There is no dispute that respondent
corporation was the first registrant, yet it
failed to fully substantiate its claim that it
used in trade or business in the Philippines
the subject mark; it did not present proof to
invest it with exclusive, continuous adoption
of the trademark which should consist among
others, of considerable sales since its first
use. The invoices submitted by respondent
which were dated way back in 1957 show
that the zippers sent to the Philippines were
to be used as "samples" and "of no
commercial value." The evidence for respondent
must be clear, definite and free from
inconsistencies. "Samples" are not for sale and
therefore, the fact of exporting them to the
Philippines cannot be considered to be equivalent
to the "use" contemplated by law. Respondent did
not expect income from such "samples." There
were no receipts to establish sale, and no proof
were presented to show that they were
subsequently sold in the Philippines.
xxx xxx xxx
For lack of adequate proof of actual use of its
trademark in the Philippines prior to petitioner's use
of its own mark and for failure to establish
confusing similarity between said trademarks,
private respondent's action for infringement must
necessarily fail. (Emphasis supplied.)
In view of the foregoing jurisprudence and respondents’ judicial
admission that the actual commercial use of the GALLO wine
trademark was subsequent to its registration in 1971 and to
Tobacco Industries’ commercial use of the GALLO cigarette
trademark in 1973, we rule that, on this account, respondents
never enjoyed the exclusive right to use the GALLO wine trademark
to the prejudice of Tobacco Industries and its successors-ininterest, herein petitioners, either under the Trademark Law or the
Paris Convention.

Respondents’ GALLO trademark
registration is limited to wines only
We also note that the GALLO trademark registration certificates in
the Philippines and in other countries expressly state that they
cover wines only, without any evidence or indication that registrant
Gallo Winery expanded or intended to expand its business to
cigarettes.63
Thus, by strict application of Section 20 of the Trademark Law,
Gallo Winery’s exclusive right to use the GALLO trademark should
be limited to wines, the only product indicated in its registration
certificates. This strict statutory limitation on the exclusive right to
use trademarks was amply clarified in our ruling in Faberge, Inc.
vs. Intermediate Appellate Court:64
Having thus reviewed the laws applicable to the case
before Us, it is not difficult to discern from the foregoing
statutory enactments that private respondent may be
permitted to register the trademark "BRUTE" for briefs
produced by it notwithstanding petitioner's vehement
protestations of unfair dealings in marketing its own set of
items which are limited to: after-shave lotion, shaving
cream, deodorant, talcum powder and toilet soap.
Inasmuch as petitioner has not ventured in the
production of briefs, an item which is not listed in
its certificate of registration, petitioner cannot and
should not be allowed to feign that private
respondent had invaded petitioner's exclusive
domain. To be sure, it is significant that petitioner failed to
annex in its Brief the so-called "eloquent proof that
petitioner indeed intended to expand its mark ‘BRUT’ to
other goods" (Page 27, Brief for the Petitioner; page 202,
Rollo). Even then, a mere application by petitioner in this
aspect does not suffice and may not vest an exclusive right
in its favor that can ordinarily be protected by the
Trademark Law. In short, paraphrasing Section 20 of
the Trademark Law as applied to the documentary
evidence adduced by petitioner, the certificate of
registration issued by the Director of Patents can
confer upon petitioner the exclusive right to use its
own symbol only to those goods specified in the
certificate, subject to any conditions and limitations

stated therein. This basic point is perhaps the unwritten
rationale of Justice Escolin in Philippine Refining
Co., Inc. vs. Ng Sam (115 SCRA 472 [1982]), when he
stressed the principle enunciated by the United States
Supreme Court in American Foundries vs. Robertson (269
U.S. 372, 381, 70 L ed 317, 46 Sct. 160) that one who
has adopted and used a trademark on his goods
does not prevent the adoption and use of the same
trademark by others for products which are of a
different description. Verily, this Court had the occasion
to observe in the 1966 case of George W. Luft Co., Inc. vs.
Ngo Guan (18 SCRA 944 [1966]) that no serious objection
was posed by the petitioner therein since the applicant
utilized the emblem "Tango" for no other product than hair
pomade in which petitioner does not deal.
This brings Us back to the incidental issue raised by
petitioner which private respondent sought to belie as
regards petitioner's alleged expansion of its business. It
may be recalled that petitioner claimed that it has a
pending application for registration of the emblem "BRUT
33" for briefs (page 25, Brief for the Petitioner; page 202,
Rollo) to impress upon Us the Solomonic wisdom imparted
by Justice JBL Reyes in Sta. Ana vs. Maliwat (24 SCRA
1018 [1968]), to the effect that dissimilarity of goods
will not preclude relief if the junior user's goods are
not remote from any other product which the first
user would be likely to make or sell (vide, at page
1025). Commenting on the former provision of the
Trademark Law now embodied substantially under Section
4(d) of Republic Act No. 166, as amended, the erudite jurist
opined that the law in point "does not require that the
articles of manufacture of the previous user and late user
of the mark should possess the same descriptive properties
or should fall into the same categories as to bar the latter
from registering his mark in the principal register." (supra
at page 1026).
Yet, it is equally true that as aforesaid, the
protective mantle of the Trademark Law extends
only to the goods used by the first user as specified
in the certificate of registration following the clear
message conveyed by Section 20.

How do We now reconcile the apparent conflict
between Section 4(d) which was relied upon by
Justice JBL Reyes in the Sta. Ana case and Section
20? It would seem that Section 4(d) does not require
that the goods manufactured by the second user be
related to the goods produced by the senior user
while Section 20 limits the exclusive right of the
senior user only to those goods specified in the
certificate of registration. But the rule has been laid
down that the clause which comes later shall be given
paramount significance over an anterior proviso upon the
presumption that it expresses the latest and dominant
purpose. (Graham Paper Co. vs. National Newspapers
Asso. (Mo. App.) 193 S.W. 1003; Barnett vs. Merchant's L.
Ins. Co., 87 Okl. 42; State ex nel Atty. Gen. vs. Toledo, 26
N.E., p. 1061; cited by Martin, Statutory Construction Sixth
ed., 1980 Reprinted, p. 144). It ineluctably follows that
Section 20 is controlling and, therefore, private
respondent can appropriate its symbol for the briefs
it manufactures because as aptly remarked by
Justice Sanchez in Sterling Products International
Inc. vs. Farbenfabriken Bayer (27 SCRA 1214 [1969]):
"Really, if the certificate of registration were
to be deemed as including goods not
specified therein, then a situation may arise
whereby an applicant may be tempted to
register a trademark on any and all goods
which his mind may conceive even if he had
never intended to use the trademark for the
said goods. We believe that such omnibus
registration is not contemplated by our Trademark
Law." (1226).
NO LIKELIHOOD OF CONFUSION, MISTAKE
OR DECEIT AS TO THE IDENTITY OR SOURCE
OF PETITIONERS’ AND RESPONDENTS’
GOODS OR BUSINESS
A crucial issue in any trademark infringement case is the likelihood
of confusion, mistake or deceit as to the identity, source or origin
of the goods or identity of the business as a consequence of using
a certain mark. Likelihood of confusion is admittedly a relative

(d) in Shell Company of the Philippines vs.67 we ordered the approval of Acoje Mining’s application for registration of the trademark LOTUS for its soy sauce even though Philippine Refining Company had prior registration and use of such identical mark for its edible oil which. But.. The other is "confusion of business" wherein the goods of the parties are different but the defendant’s product can reasonably (though mistakenly) be assumed to originate from the plaintiff. Court of Appeals. Court of Appeals and Santos Lim Bun Liong. by itself. more than in other kinds of litigation. vs. (e) in Esso Standard Eastern. content. Director of Patent. (b) in Philippine Refining Co. lead to a legal conclusion that there is trademark infringement: (a) in Acoje Mining Co. words. the use of an identical mark does not. the Court must consider: [a] the resemblance between the trademarks.term.72 we affirmed the rulings of the Patent Office and the CA that NSR Rubber Corporation could use the trademark CANON for its sandals (Class 25) despite Canon Kabushiki Kaisha’s prior registration and use of the same trademark for its paints. [c] the likely effect on the purchaser and [d] the registrant’s express or implied consent and other fair and equitable considerations. Court of Appeals and NSR Rubber Corporation. [b] the similarity of the goods to which the trademarks are attached.. and (f) in Canon Kabushiki Kaisha vs. Court of Appeals. like soy sauce.69 we dismissed Hickok’s petition to cancel private respondent’s HICKOK trademark registration for its Marikina shoes as against petitioner’s earlier registration of the same trademark for handkerchiefs. briefs. in trademark cases.. 71 we dismissed ESSO’s complaint for trademark infringement against United Cigarette Corporation and allowed the latter to use the trademark ESSO for its cigarettes. Inc. vs. sound. special arrangement or general appearance of the trademark or tradename in their overall presentation or in their essential and substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article. The first is "confusion of goods" when an otherwise prudent purchaser is induced to purchase one product in the belief that he is purchasing another. butter. abrasive detergents." 74 Jurisprudence has developed two tests in determining similarity and likelihood of confusion in trademark resemblance: 75 . Inc. precedents must be studied in the light of each particular case. vs. meaning. notwithstanding Shell Company’s opposition as the prior registrant of the same trademark for its gasoline and other petroleum products. Petitioners and respondents both use "GALLO" in the labels of their respective cigarette and wine products. chemical products. thus deceiving the public into believing that there is some connection between the plaintiff and defendant which. Inc. Thus. cooking oil (all of which belonged to Class 47). in fact. in which case defendant’s goods are then bought as the plaintiff’s and its poor quality reflects badly on the plaintiff’s reputation. Whether a trademark causes confusion and is likely to deceive the public hinges on "colorable imitation"73 which has been defined as "such similarity in form. Inc. vs. despite Philippine Refining Company’s prior trademark registration and actual use of such mark on its lard. we dismissed the petition for review for lack of merit and affirmed the Patent Office’s registration of the trademark SHELL used in the cigarettes manufactured by respondent Fortune Tobacco Corporation.66 In determining the likelihood of confusion.70 in a minute resolution. toner and dyestuff (Class 2). also belonged to Class 47. polishing materials and soaps. the same trademark used by ESSO for its petroleum products. belts and wallets. 65 There are two types of confusion in trademark infringement. Ng Sam and Director of Patents. (c) in Hickok Manufacturing Co. to be determined rigidly according to the particular (and sometimes peculiar) circumstances of each case.68 we upheld the Patent Director’s registration of the same trademark CAMIA for Ng Sam’s ham under Class 47. as held in the following cases. does not exist.

Court of Appeals76 and other cases. Furthermore. such as the dominant color. we find that the dominant feature of the GALLO cigarette trademark is the device of a large rooster facing left. vineyards or a bunch of grapes while in a few. 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. essential or dominant features of another. On the other hand. Inc."88 which appears in different fonts. one or two small roosters facing right or facing each other (atop the EJG crest. the likelihood of deception of the mark or name's tendency to confuse82 and the commercial impression likely to be conveyed by the trademarks if used in conjunction with the respective goods of the parties. styles and labels. appear as minor features thereof. unlike petitioners’ uniform casquefont bold-lettered GALLO mark. the Spanish word for rooster. Moreover. sizes.(a) the Dominancy Test applied in Asia Brewery. with additional designs in green. the labels are embellished with sketches of buildings and trees. GALLO Winery’s wine and brandy labels are diverse. SIMILAR.81 In comparing the resemblance or colorable imitation of marks. "ERNEST & JULIO GALLO" or just their surname "GALLO.83 Applying the Dominancy and Holistic Tests." thus clearly informing the public as to the identity of the manufacturer of the cigarettes. The rooster device is given prominence in the GALLO cigarette packs in terms of size and location on the labels.84 The GALLO mark appears to be a fanciful and arbitrary mark for the cigarettes as it has no relation at all to the product but was chosen merely as a trademark due to the fondness for fighting cocks of the son of petitioners’ president. various factors have been considered."89 The many different features like color schemes.77 and (b) the Holistic or Totality Test used in Del Monte Corporation vs. surrounded by leaves or ribbons).79 The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception. The rooster’s color is either green or red – green for GALLO menthols and red for GALLO filters. the Holistic Test requires that the entirety of the marks in question be considered in resolving confusing similarity.87 Directly below or above these sketches is the entire printed name of the founder-owners. Comparison of words is not the only determining factor. If the competing trademark contains the main. In many of them. on the labels of Gallo Winery’s wines are printed the words "VINTED AND BOTTLED BY ERNEST & JULIO GALLO.80 On the other hand. petitioners adopted GALLO. designs and emblems used. form. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or deceive purchasers. nor is it necessary that the infringing label should suggest an effort to imitate. the sabungeros (cockfight aficionados). meaning of letters. COMPETING OR RELATED GOODS . CALIFORNIA. Directly below the large rooster device is the word GALLO.86 on the side of the GALLO cigarette packs are the words "MADE BY MIGHTY CORPORATION. and thus infringement. as a cigarette trademark to appeal to one of their target markets. outlined in black against a gold background. Duplication or imitation is not necessary. art works and other markings of both products drown out the similarity between them – the use of the word “GALLO” ― a family surname for the Gallo Winery’s wines and a Spanish word for rooster for petitioners’ cigarettes. The trademarks in their entirety as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. size. words. style. vs. infringement takes place. and confusion or deception is likely to result.85 Also. as admitted by respondents themselves. WINES AND CIGARETTES ARE NOT IDENTICAL. MODESTO. Court of Appeals78 and its preceding cases. red and yellow colors.

including the nature of the package. 104 how they are distributed. being entirely unrelated. as to the source of the goods in question.94 Thus. in order to be objectionable. or is actually. the court is required to sift the evidence relevant to each of the criteria.92 Non-competing goods may be those which. physical attributes or essential characteristics with reference to their form. the goods in question. a conclusion is reached whether the parties have a right to the relief sought. composition. when goods are so related that the public may be. or size."91 Simply stated. are so related to each other that it can reasonably be assumed that they originate from one manufacturer. or the possibility of deception. and from a balancing of the determinations reached on all of the factors.90 Thus. trademark infringement occurs.Confusion of goods is evident where the litigants are actually in competition. 105 The wisdom of this approach is its recognition that each trademark infringement case presents its own unique set of facts. there is no trademark infringement if the public does not expect the plaintiff to make or sell the same class of goods as those made or sold by the defendant. nor can the presence or absence of one determine. in which case.107 A very important circumstance though is whether there exists a likelihood that an appreciable number of ordinarily prudent purchasers will be misled.95 In resolving whether goods are related.109 He is "accustomed to buy. hence. confusion of business can arise out of the use of similar marks. and who must be indifferent between that and the other.108 The "purchaser" is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product involved. No single factor is preeminent. displayed and sold. the outcome of an infringement suit. This requires that the entire panoply of elements constituting the relevant factual landscape be comprehensively examined. though they are not in actual competition. 100 that is.96 several factors come into play: (a) the business (and its location) to which the goods belong (b) the class of product to which the goods belong (c) the product's quality. apart from the strict application of Section 20 of the Trademark Law and Article 6bis of the Paris Convention which proscribe trademark infringement not only of goods specified in the certificate of registration but also of identical or similar goods. cannot be assumed to have a common source. there is no confusion of business. but confusion of business may arise between noncompeting interests as well. even though similar marks are used. The test is not found in the deception. must be such as appears likely to mislead the ordinary intelligent buyer who has a . The test of fraudulent simulation is to be found in the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. wrapper or container 97 (d) the nature and cost of the articles98 (e) the descriptive properties. without analysis of the others.106 It is a weighing and balancing process. and therefore to some extent familiar with. of the person who knows nothing about the design which has been counterfeited. or simply confused. quantity. marketed. we have also uniformly recognized and applied the modern concept of "related goods. texture or quality (f) the purpose of the goods99 (g) whether the article is bought for immediate consumption. Rather. day-to-day household items101 (h) the fields of manufacture102 (i) the conditions under which the article is usually purchased 103 and (j) the channels of trade through which the goods flow.93 They may also be those which. With reference to this ultimate question. deceived and misled that they come from the same maker or manufacturer. The simulation.

Obviously. "I have taken into account such factors as probable purchaser attitude and habits. vs. First. habits. quantity. wines and cigarettes. anything –. harmful when taken in excess. attitude. patent office and courts have consistently held that the mere fact that goods are sold in one store under the same roof does not automatically mean that buyers are likely to be confused as to the goods’ respective sources. we give due regard to the goods’ usual purchaser’s character. Inc. Second.114 In this regard. and used for pleasure and relaxation" and (2) "they are grouped or classified in the same section of supermarkets and groceries. in the adjudication of trademark infringement. connections or sponsorships. marketing activities."110 Hence. He opined and we quote: 112 Both the Makati RTC and the CA held that wines and cigarettes are related products because: (1) "they are related forms of vice.S.not only wines and cigarettes ― can be used for pleasure and relaxation and can be harmful when taken in excess." We find these premises patently insufficient and too arbitrary to support the legal conclusion that wines and cigarettes are related products within the contemplation of the Trademark Law and the Paris Convention. or to deceive the "ordinarily intelligent buyer" of either wines or cigarettes or both as to the identity of the goods. Emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics. Ng Sam and the Director of Patents:115 In his decision. The fact that different products are available in the same store is an insufficient standard. and are displayed separately even though they . Neither do they belong to the same class of goods. oil. Such reasoning makes no sense. age. training and education. might be distributed and marketed under dissimilar conditions. have nothing whatsoever in common with respect to their essential characteristics.need to supply and is familiar with the article that he seeks to purchase. 113 Accordingly. Indeed. or identity of the business of petitioners and respondents. 111 Applying these legal precepts to the present case. to warrant a finding of likelihood of confusion. and soap on the other are products that would not move in the same manner through the same channels of trade. quality. in and of itself. But the mere fact that one person has adopted and used a particular trademark for his goods does not prevent the adoption and use of the same trademark by others on articles of a different description. size. wrappers or containers. their source and origin. and commercial impression likely to be conveyed by the trademarks if used in conjunction with the respective goods of the parties. it is common knowledge that supermarkets sell an infinite variety of wholly unrelated products and the goods here involved. the U. the Director of Patents enumerated the factors that set respondent’s products apart from the goods of petitioner. retail outlets. They pertain to unrelated fields of manufacture. butter. I believe that ham on one hand. Part II of the Rules of Practice in Trademark Cases while petitioners’ GALLO cigarettes fall under Class 34. We are mindful that product classification alone cannot serve as the decisive factor in the resolution of whether or not wines and cigarettes are related goods. we adopted the Director of Patents’ finding in Philippine Refining Co. petitioner’s use of the GALLO cigarette trademark is not likely to cause confusion or mistake. it would be a grave abuse of discretion to treat wines and cigarettes as similar or related products likely to cause confusion just because they are pleasure-giving. including the nature of their packages. and lard. relaxing or potentially harmful. wines and cigarettes are not identical or competing products.. Respondents’ GALLO wines belong to Class 33 under Rule 84[a] Chapter III.

C. Schenley Distillers. physical attributes or essential characteristics like form. 222 F. Inc. 254. however. would not. which is currently Andresons.D. Inc. v. 1955). expensive bars and restaurants. aff’d. and high-end grocery stores and supermarkets.119 Furthermore. The presence of special circumstances has been found to exist where there is a finding of unfair competition . and R & A Bailey Co. not through sari-sari stores or ambulant vendors. vs. 57C. Philip Morris. S & M Brands. GALLO cigarettes are Philippine-made and petitioners neither claim nor pass off their goods as imported or emanating from Gallo Winery. Inc. 1338 (N. Philip Morris. There is a distinct price segmentation based on vastly different social classes of purchasers.. Inc. wherein the court enjoined the use of the mark "JOHNNIE WALKER" on cigars because the fame of the plaintiff’s mark for scotch whiskey and because the plaintiff advertised its scotch whiskey on. GALLO cigarettes are distributed. Thus. The court. 2d 460 (5th Cir. The observations and conclusion of the Director of Patents are correct. the Makati RTC and the CA erred in relying on Carling Brewing Company vs. 1968). Inc. Pangasinan. Supp. texture and quality. 124 F. in John Walker & Sons. distributed and sold in the Philippines through Gallo Winery’s exclusive contracts with a domestic entity. in which the court enjoined the defendant’s use of the mark "BLACK LABEL" for cigarettes because it was likely to cause confusion with the plaintiff’s well-known mark "BLACK LABEL" for beer.P. must be considered in perspective of the principle that tobacco products and alcohol products should be considered related only in cases involving special circumstances. however. Wines are bottled and consumed by drinking while cigarettes are packed in cartons or packages and smoked. There is a whale of a difference between their descriptive properties. the big price difference of these two products is an important factor in proving that they are in fact unrelated and that they travel in different channels of trade.frequently may be sold through the same retail food establishments. Opposer’s products are ordinary day-to-day household items whereas ham is not necessarily so. laborers and other low-income workers. 297 F. in any probability mistake one as the source of origin of the product of the other. IDV also relies on Carling Brewing Co. marketed and sold through ambulant and sidewalk vendors.:121 IDV correctly acknowledges. placed great significance on the finding that the infringers use was a deliberate attempt to capitalize on the senior marks’ fame.120 to support its finding that GALLO wines and GALLO cigarettes are related goods. Tampa Cigar Co. (Emphasis supplied). xxx xxx xxx Those decisions. Nonetheless. or in connection with tobacco products.. and Cebu. General Cigar Co. GALLO wines are imported. Wines and cigarettes are noncompeting and are totally unrelated products not likely to cause confusion vis-à-vis the goods or the business of the petitioners and respondents.A. v. Supp. composition. GALLO wines are sold in hotels..D. 1213. Fla. 1330. the goods of the parties are not of a character which purchasers would likely attribute to a common origin. GALLO wines are patronized by middle-to-high-income earners while GALLO cigarettes appeal only to simple folks like farmers. 2d 783. Id. The same is true in the present case. 117 GALLO cigarettes and GALLO wines are not sold through the same channels of trade. The particular goods of the parties are so unrelated that consumers. IDV relies heavily on the decision in John Walker & Sons. 256 (S. 785 (1970). fishermen.116 Indeed. mainly in Misamis Oriental. small local sari-sari stores and grocery stores in Philippine rural areas. GALLO cigarettes are inexpensive items while GALLO wines are not. Bohol. By respondents’ own testimonial evidence. Limited vs. that there is no per se rule that the use of the same mark on alcohol and tobacco products always will result in a likelihood of confusion. Ga. 427 F. 118 On the other hand. At 256. The courts a quo should have taken into consideration the subsequent case of IDV North America. 1954). Ltd.

However. unlike the defendant in Dunhill. For example. Supp. tobacco and alcohol products may be considered related only in cases involving special circumstances which exist only if a famous mark is involved and there is a demonstrated intent to capitalize on it. at 308. 120 U. the evidence here demonstrates the absence of the ‘special circumstances’ in which courts have found a relationship between tobacco and alcohol products sufficient to tip the similarity of goods analysis in favor of the protected mark and against the allegedly infringing mark. is insufficient to invoke the special circumstances connection here where so much other evidence and so many other factors disprove a likelihood of confusion.S. . 307 (1959) (holding that the decision in John Walker & Sons was ‘merely the law on the particular case based upon its own peculiar facts’). 1959 WL 5894. 2d at 785. because of the plaintiff’s long use and extensive advertising of its mark and placed great emphasis on the fact that the defendant used the trademark ‘Johnnie Walker with full knowledge of its fame and reputation and with the intention of taking advantage thereof.P. see Mckesson & Robbins.S. The similarity of products analysis.. as will be discussed below.or where a ‘famous’ or ‘well-known mark’ is involved and there is a demonstrated intent to capitalize on that mark. to capitalize upon the fame of the ‘BAILEYS’ mark for liqueurs.P. In short. Lorillard Co. in John Walker & Sons. Both of these are absent in the present case. after Tobacco Industries’ use of the GALLO cigarette trademark in 1973 and petitioners’ use of the same mark in 1984. see also Alfred Dunhill. S & M Brands does not market bar accessories. See Schenley. xxx xxx xxx Of equal significance. 427 F.Q. Moreover.2d. See Mckesson & Robbins. in Schenley. the court was persuaded to find a relationship between products. 120 U. the court looked at the industry practice and the facts of the case in order to determine the nature and extent of the relationship between the mark on the tobacco product and the mark on the alcohol product. P. At 1363 (defendant’s adoption of ‘Dunhill’ mark was not innocent). THE GALLO WINE TRADEMARK IS NOT A WELL-KNOWN MARK IN THE CONTEXT OF THE PARIS CONVENTION IN THIS CASE SINCE WINES AND CIGARETTES ARE NOT IDENTICAL OR SIMILAR GOODS First. Supp. It is true that BAILEYS liqueur. the survey evidence refutes the contention that cigarettes and alcoholic beverages are so intimately associated in the public mind that they cannot under any circumstances be sold under the same mark without causing confusion. augers against finding that there is a likelihood of confusion. That fact alone. 306.’ John Walker & Sons. The advertising and promotional materials presented a trial in this action demonstrate a complete lack of affiliation between the tobacco and liqueur products bearing the marks here at issue. 427 F. 124 F. At 256. the world’s best selling liqueur and the second best selling in the United States. Significantly. Schenley. v. the records bear out that most of the trademark registrations took place in the late 1980s and the 1990s. therefore. Taken as a whole. the court noted that the relation between tobacco and whiskey products is significant where a widely known arbitrary mark has long been used for diversified products emanating from a single source and a newcomer seeks to use the same mark on unrelated goods. or liqueur related products. in Schenley. is a well-known product. The record here establishes conclusively that IDV has never advertised BAILEYS liqueurs in conjunction with tobacco or tobacco accessory products and that IDV has no intent to do so. and hence a likelihood of confusion. that is. however. at 785. it is undisputed that S & M Brands had no intent. 350 F. with its cigarettes.Q. by adopting the family name ‘Bailey’s’ as the mark for its cigarettes. Inc. and as found in Mckesson & Robbins. And. (Emphasis supplied).

honey. issued a memorandum dated 25 October 1983 to the Director of Patents. This office is not unmindful that in (sic) the Treaty of Paris for the Protection of Intellectual Property regarding well-known marks and possible application thereof in this case. wheat flour and bread crumbs. Second. 75420. salt. Respondents do not dispute the documentary evidence that aside from Gallo Winery’s GALLO trademark registration. vinegar. No. Trademarks and Technology Transfer also issued on September 4. Court of Appeals and NSR Rubber Corporation. molasses syrup. Petitioner. a requisite element under both the Trademark Law and the Paris Convention. or the Philippines. yeast. as this office sees it. baking powder. not a patent or copyright or anything else. prepared food or canned noodles. identical.R.123 "GALLO" cannot be considered a "well-known" mark within the contemplation and protection of the Paris Convention in this case since wines and cigarettes are not identical or similar goods: 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. ice cream..GALLO wines and GALLO cigarettes are neither the same. a set of guidelines in the implementation of Article 6bis of the Treaty of Paris. 15 November 1991. The Intermediate Appellate Court. ."122 Third and most important. 1992 Certificate of Registration No. is trying to seek refuge under its protective mantle. the GALLO trademark cannot be considered a strong and distinct mark in the Philippines. mustard.’ it does not necessarily follow that ‘Rapid’ can no longer be registered in Uganda. claiming that the subject mark is well known in this country at the time the then application of NSR Rubber was filed. et. To illustrate — if a taxicab or bus company in a town in the United Kingdom or India happens to use the tradename ‘Rapid Transportation. pastry. c) the mark must be for use in the same or similar kinds of goods. Ongpin. 53356 under the Principal Register approving Productos Alimenticios Gallo. al. confectionery. b) the subject of the right must be a trademark. In Kabushiki Kaisha Isetan vs. and d) the person claiming must be the owner of the mark (The Parties Convention Commentary on the Paris Convention. this Office believes that there is no automatic protection afforded an entity whose tradename is alleged to have been infringed through the use of that name as a trademark by a local entity. Intermediate Appellate Court (203 SCRA 59 [1991]). Roberto V. 1990 application for GALLO trademark registration and use for its "noodles.A’s April 19. similar nor related goods. the Hon. S. the then Minister of Trade and Industry. ready or canned sauces for noodles. Fiji. G. species and ice. the Bureau of Patents. semolina. However. pursuant to our ruling in Canon Kabushiki Kaisha vs. As pointed out by the BPTTT: "Regarding the applicability of Article 8 of the Paris Convention. These conditions are: a) the mark must be internationally known. 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.

we rule out trademark infringement on the part of petitioners. justice and fairness require us to rule in favor of petitioners. If respondents’ assertion is true. distribution and sale of GALLO cigarettes and. either as to the goods themselves or in the wrapping of the packages in which they are contained. or the devices or words thereon. there exists no evidence that petitioners employed malice. then both goods co-existed peacefully for a considerable period of time. Given. 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. Director General of the World Intellectual Property Organization. or who otherwise clothes the goods with such appearance as shall deceive 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. or who commits any acts calculated to produce said result. Just and Equitable Considerations Each trademark infringement case presents a unique problem which must be answered by weighing the conflicting interests of the litigants. marketing. The Petitioner is using the mark "CANON" for products belonging to class 2 (paints." (Emphasis supplied. that is. respondents’ delay in enforcing their rights (not to mention implied consent. bad faith or fraud. The scales of conscience and reason tip far more readily in favor of petitioners than respondents. on one hand. 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.124 Respondents claim that GALLO wines and GALLO cigarettes flow through the same channels of trade. or device. on the other. (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. Bogsch. Petitioner's contention that its mark is well-known at the time the Respondent filed its application for the same mark should fail. It includes the following acts: (a) Any person. Switzerland. the long period of time that petitioners were engaged in the manufacture. (b) Any person who by any artifice. Thus. acquiescence or negligence) we hold that equity. business or services of another. 1985)’ From the set of facts found in the records. any person who employs deception or any other means contrary to good faith by which he passes off the goods manufactured by him or in which he deals. Geneva. or services for those of the one having established such goodwill. is guilty of unfair competition.Article by Dr. Moreover. or in any other feature of their appearance.) Consent of the Registrant and Other air. who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer. chemical products) while the Respondent is using the same mark for sandals (class 25). PETITIONERS ARE ALSO NOT LIABLE FOR UNFAIR COMPETITION Under Section 29 of the Trademark Law. . Hence. or that they intended to capitalize on respondents’ goodwill in adopting the GALLO mark for their cigarettes which are totally unrelated to respondents’ GALLO wines. 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. It took respondents almost 20 years to know about the existence of GALLO cigarettes and sue petitioners for trademark infringement. retail trade. or his business.

TSN. Villarama." Records. 780-796. 256. Records. 1993. after applying all the tests provided by the governing laws as well as those recognized by jurisprudence. 80-86. 104. 65175 and the November 26. (Chairman). JJ. Villarama. 15 16 Complaint. Records. TSN. Pestano of the former Ninth Division.. TSN. 1993. The questioned decision and resolution of the Court of Appeals in CA-G.. December 14. Records. June 9. 13 Records. 4 Complaint. 272. pp. and concurred in by Associate Justices Conchita Carpio Morales (now Associate Justice of the Supreme Court) and Sergio L. 780-796. April 13. 1 2 Penned by Acting Presiding Judge Bonifacio Sanz Maceda. pp. 1997. Jr. SO ORDERED. Records. Exhibits "D" to "D-1. Records. April 13. 1993. October 27. pp. pp. October 27. pp. 89-95. 1997. 14 Exhibits 13 and 14. pp. unfair competition or damages. p. 1999 order of the Regional Trial Court of Makati. 256. CV No. 420-422. 1997. Pestano of the Ninth Division. TSN. 255-256. pp. 3. 767. pp. and Sandoval-Gutierrez. pp. we find that petitioners never attempted to pass off their cigarettes as those of respondents. 110 and 328. December 14. 17 . Vitug." Records.125 On this score. TSN. Records. Costs against respondents. finding the petition for review meritorious. pp. 96-98. 256. Records. 270. we conclude that petitioners are not liable for trademark infringement. October 27. Records. 8 Exhibits 9 to 12. 29-31. 267-268. Actual or probable deception and confusion on the part of customers by reason of defendant’s practices must always appear. Penned by Associate Justice Martin S. Footnotes Penned by Associate Justice Martin S. TSN. 7 Records. All told. 12 Exhibit 15. 1998 decision and the June 24. pp. 3 Penned by Judge Reinato O. WHEREFORE. no part.R. pp. pp. Records. 951-956. pp.The universal test question is whether the public is likely to be deceived. Nothing less than conduct tending to pass off one man’s goods or business as that of another constitutes unfair competition. pp. 1005-1007. Quilala. Jr. 993-1000. 993-1000. TSN. and concurred in by Associate Justices Conchita Carpio Morales (now Associate Justice of the Supreme Court) and Sergio L. 93-850 are hereby REVERSED and SET ASIDE and the complaint against petitioners DISMISSED. 1993.. 326. 432-433. Carpio-Morales." Records. Records. 9 10 Records. 1997. There is no evidence of bad faith or fraud imputable to petitioners in using their GALLO cigarette mark. Records. 1-2. Records. concur. 127. pp. pp. TSN. Exhibit "D-2. 11 Records. Exhibit "A. p." Complainants’ Memorandum. Branch 57 in Civil Case No. pp. J. 269 and 271. Records. 255 and 264-266. 5 6 Exhibits "B" to "B-6. Answer. the same is hereby GRANTED.

19 The complaining party. shall be liable to a civil action by the registrant for any or all of the remedies herein provided. 1958 18 xxxxxxxxx Article 6bis (1) The countries of the Union undertake. packages. or the profit which the defendant actually made out of the infringement. 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. imitation or translation. had the defendant not infringed his said rights. counterfeit. or identity of such business. wrappers. SEC.CONVENTION OF PARIS FOR THE PROTECTION OF INDUSTRIAL PROPERTY of 20th March. Actions. 166 is entitled "An Act To Provide For The Registration And Protection Of Trademarks. at London on 2nd June. and at Lisbon on 31st October. — Any person who shall use. may also be granted injunction. and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made. 1934. (2) A period of at least five years from the date of registration shall be allowed for seeking the cancellation of such a mark. to refuse or to cancel the registration and to prohibit the use of a trademark which constitutes a reproduction. copy or colorable imitation of any registered mark or tradename in connection with the sale. at the Hague on 6th November. In cases where actual intent to mislead the public or to defraud the complaining party shall be shown. business or services. or advertising of any goods. upon proper showing. Defining Unfair Competition And False Marking And Providing Remedies Against The Same. 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. copy or colorably imitate any such mark or tradename and apply such reproduction. Republic Act No. prints. (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. the damages may be doubled. at Washington on 2nd June. 20 SEC. Trade Names And Servicemarks. 1911. 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 the present Convention and used for identical or similar goods. or at the request of an interested party. 23. either administratively if their legislation so permits. 1900. offering for sale. 22. what constitutes. . signs. receptacles or advertisements intended to be used upon or in connection with such goods. counterfeit. any reproduction. 1925. and damages and injunction for infringement. — Any person entitled to the exclusive use of a registered mark or tradename may recover damages in a civil action from any person who infringes his rights. The countries of the Union may provide for a period within which the prohibition of use must be sought. copy. or colorable imitation to labels. or reproduce. liable to create confusion. 1883 revised at Brussels on 14th December. in the discretion of the court. And For Other Purposes". counterfeit. or in the event such measure of damages cannot be readily ascertained with reasonable certainty. then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant of the value of the services in connection with which the mark or tradename was used in the infringement of the rights of the complaining party. Infringement. without the consent of the registrant.

apply. or the devices or words thereon. business or services of another. and shall be subject to an action therefor. Chapter V hereof. or who shall commit any acts calculated to produce said result. or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose. his business or services from those of others. and shall cause such goods or services to enter into commerce. Rights of foreign registrants. whether or not a mark or tradename is employed. 29. 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 any container or containers for goods. or services for those of the one having established such goodwill. Unfair competition. including words or other symbols tending falsely to describe or represent the same.SEC. or any false description or representation. (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. Such a person shall have the remedies provided in section twenty-three. 37. a false designation of origin. or device. business or services so identified. — Persons who are nationals of. shall be guilty of unfair competition. has a property right in the goodwill of the said goods. 30. 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. or his business. domiciled in. or by any person who believes that he is or is likely to be damaged by the use of any such false description or representation. 21 Chapter VII False Designation of Origin and False Any person who shall 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. the following shall be deemed guilty of unfair competition: (a) Any person. or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. annex or use in connection with any goods or services. Chapter V hereof. In particular. and any person who shall with knowledge of the falsity of such designation of origin or description or representation cause or procure the same to enter into commerce. who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer. or 22 Chapter XI Provisions in Reference to Foreign Industrial Property SEC. rights and remedies. either as to the goods themselves or in the wrapping of the packages in which they are contained. or have a bona fide or effective business or commercial establishment in any foreign country. which is a party to any international convention or treaty . (b) Any person who by any artifice. shall be liable to a civil action for damages and injunction provided in section twenty-three. which will be protected in the same manner as other property rights. False designation of origin and false description forbidden. Description SEC. and without in any way limiting the scope of unfair competition. — Any person who shall affix. by any person doing business in the locality falsely indicated as that of origin or in the region in which said locality is situated. or in any other feature of their appearance. — A person who has identified in the mind of the public the goods he manufactures or deals in.

the applicant shall furnish a certified copy of the application for or registration in the country of origin of the applicant. or the repression of unfair competition to which the Philippines may be a party. validity or transfer in the Philippines of such registration shall be governed by the provisions of this Act. shall be entitled to the benefits and subject to the provisions of this Act to the extent and under the conditions essential to give effect to any such convention and treaties so long as the Philippines shall continue to be a party thereto. if not in the English language. An application for registration of a mark or tradename under the provisions of this Act filed by a person described in the first paragraph of this section who has previously duly filed an application for registration of the same mark or tradename in one of the countries described in said paragraph shall be accorded the same force and effect as would be accorded to the same application if filed in the Philippines on the same date on which the application was first filed in such foreign country: Provided. together with a translation thereof into English. (b) The application conforms as nearly as practicable to the requirements of this Act. (c) The rights acquired by third parties before the date of the filing of the first application in the foreign country shall in no way be affected by a registration obtained on an application filed under this paragraph. That — (a) The application in the Philippines is filed within six months from the date on which the application was first filed in the foreign country. and (e) A mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible. but use in commerce need not be alleged. The application thereof shall be accompanied by a certified copy of the application for or registration in the country of origin of the applicant. unless the applicant alleges use in commerce. (As added by R.A. . 638.) The registration of a mark under the provisions of this section shall be independent of the registration in the country of origin and the duration.relating to marks or tradenames. otherwise. the country of origin of the applicant is the country in which he has bona fide and effective industrial or commercial establishment. or if he has no such an establishment in the country in which he is domiciled. No. except as provided in the following paragraphs of this section. on the supplemental register herein provided. For the purposes of this section. (d) Nothing in this paragraph shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark or tradename was registered in this country unless the registration is based on use in commerce. Tradenames of persons described in the first paragraph of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks. the country of which he is a national. or if he has not a domicile in any of the countries described in the first paragraph of this section. No registration of a mark or tradename in the Philippines by a person described in the preceding paragraph of this section shall be granted until such mark or tradename has been registered in the country of origin of the applicant. and within three months from the date of filing or within such time as the Director shall in his discretion grant.

why the injunction should not be granted. 1-10. Jr.. issuance of restraining order. 24 Penned by Judge Francisco X. CMS Stock Brokerage.I. Penned by Associate Justice Ramon Mabutas. at a specified time and place. Court of Appeals. 30 Penned by Judge Quilala. 1982). of the P. or rules pertaining to injunctions contained in.. labor or social legislation. 169 SCRA 220. De Jesus. (As amended by B. 292 [1967]. Section 2. Philippine Nut Industry Inc. Court of 36 . 443 [1993]. Records. vs.. Luna of the Special First Division. 159-160. 19 SCRA 289. pp. existing agrarian. Guita vs. approved April 16. 5. pp. 56 SCRA 167 [1974]. Records.P. Court of Appeals. affect or modify in any way any rights granted by. 223 [1990]. 18-19. IAC. Standard Brands. the restraining order is deemed automatically vacated. the judge must cause an order to be served on the defendant. Court of Appeals. Manlapaz vs. Sec. and shall accordingly issue the corresponding order. If it shall appear from the facts shown by affidavits or by the verified complaint that great or irreparable injury would result to the applicant before the matter can be heard on notice. Court of Appeals. vs. 224. Citizens or residents of the Philippines shall have the same benefits as are granted by this section to persons described in the first paragraph hereof. 32 Rule 45. 25 Records. Carolina Industries. 191 SCRA 411. also Apex Investment and Financing Corp. 213 SCRA 309. vs. Inc. vs. pp. 224 SCRA 437. 34 Roman Catholic Bishop of Malolos. 224 SCRA 437. and the remedies provided herein for infringement of marks and tradenames shall be available so far as they may be appropriate in repressing acts of unfair competition. 449-465. 139 SCRA 576 [1985]. 28 29 Penned by Judge Maceda.Any person designated in the first paragraph of this section as entitled to the benefits and subject to the provisions of this Act shall be entitled to effective protection against unfair competition. 166 SCRA 458 [1988] citing Tolentino vs. requiring him to show cause. Sandiganbayan. Jr." Record. 97 SCRA 734 [1980]. 609 [1986]. Inc. Manero vs. pp. Ramos vs. Inc. pp. Within the said twenty-day period. 727-728. pp. Sacay vs. Casanayan vs. may issue a restraining order to be effective only for a period of twenty days from the date of its issuance. and Artemon D.. Inc. Jr. Medina vs. 198 SCRA 333. Blg. Records. 420 [1990]. 302-304. 223 [1989] citing Mendoza vs. People. 23 Complaint. Inc. Court of Appeals. Reynolds Philippine Corporation vs. 147 SCRA 238 [1987]. Velez. Exhibits "D-1" to "D-9. De Pano. IAC. Records. 651-652. Court of Appeals. 191 SCRA 218. 443 [1993]. 26 Nothing herein contained shall be construed to impair. – No preliminary injunction shall be granted without notice to the defendant. 31 Petition. Rollo. 336 [1991]. Preliminary injunction not granted without notice. 313 [1992]. vs. 27 Penned by Judge Velez. pp. 33 Moomba Mining Exploration Company vs. 156 SCRA 597 [1987]. Asistio. Court of Appeals. Pepsi-Cola Bottling Co. 142 SCRA 593. and determine within the same period whether or not the preliminary injunction shall be granted. and concurred in by Associate Justices Nathanael P. the judge to whom the application for preliminary injunction was made. 317 SCRA 338 [1999]. In the event that the application for preliminary injunction is denied. 35 Asia Brewery. Caiña vs.

vs. Court of Appeals. 119 [1954]. Revised Penal Code) or (f) by express provision of the law. Gloria. 314 SCRA 36 [1999]). (Art. vs. The underlying principle is that foreign nationals should be given the same treatment in each of the member countries as that country makes available to its citizen. 26 [1919]. 32 Phil. Tolentino. Intellectual Property Code of the Philippines. Court of Appeals. Diaz Conde. Lopez vs. except in cases of ex post facto laws (U. p.S. Cayas. Del Castillo vs. Municipality of Binalonan. 61. 77 Phil. 40 Phil. Briones. 46 47 See footnote 18 for full text. Sandiganbayan. Llanes. 12 Phil. supra. (Asiatic Petroleum vs. 96 Phil. 81 Phil.Appeals. 766 [1922]. People vs. 225. Intellectual Property Code of the Philippines. acts of public officers. Spinner & Co. Volume I. Subido vs. 44 45 181 SCRA 410. 107 [1955]) (e) penal statutes insofar as they favor the accused who is not a habitual criminal (Article 22. 14 SCRA 1041 [1965]. Development Bank of the Philippines vs. Sumilang. "conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic law.S. 133 SCRA 88 [1984]. De Raz vs. and Moran. Court of Appeals. 634 [1915]. Court of Appeals. See footnote 20 for full text. Alunan III vs. (Emerald Garden Manufacturing Corp. 231-232 [1930]. 191. or private deeds and contracts that otherwise would not produce their intended consequences due to some statutory disability or failure to comply with technical rules (Government vs. 239. Jr. Civil Code of the Philippines. Bustos vs. 42 Phil. U. 640 [1948]. p. 276 [1918]. . 102 SCRA 817 [1981]. Civil Code Of The Philippines Commentaries and Jurisprudence. The Paris Convention is a compact among various member countries to accord in their own countries to citizens of the other contracting parties’ trademarks and other rights comparable to those accorded their own citizens by their domestic laws. 415 [1990]. 251 SCRA 600 [1995]). 54 Phil. 40 41 Ibid. Sandiganbayan. Primicias vs. Neuss Hesslein Corporation. 466 [1926]). Securities and Exchange Commission. 39 Rollo. Paris Convention). 38 Rollo. Alba Vda. p. Gomez. vs. Lucero. 764 [1946]) (b) remedial or curative statutes which cure errors and irregularities and validate judicial or administrative proceedings. 19. 96 SCRA 342 [1980]. 446 [1953]." (Art. 42 Laws may be given retroactive effect only if they are: (a) procedural statutes which prescribe rules and forms of procedures of enforcing rights or obtaining redress for their invasion (Subido vs. (d) laws creating new rights (Bona vs. 48 49 (c) laws interpreting others Sec. 4. 49 Phil. 279 [1908]) or impairment of obligation of contract. vs. 266 SCRA 379 [1997]. 37 Sec. 71. Mirasol. Duata. 241. 93 Phil. Intestate Estate of Bustamante vs. Santos vs. vs. Ocampo. See Articles 2 to 4 of the Civil Code of the Philippines. 98 Phil. 38 Phil. 276 SCRA 501 [1997]) 43 E.

— A certificate of registration of a mark or trade-name shall be prima facie evidence of the validity of the registration. And provided. business or service of others. (As amended by R. how acquired. 51 SEC.A. Ownership of trademarks. estoppel. 59 147 SCRA 154 [1987]. servicemark heretofore or hereafter appropriated. 638). any lawful business. pp. shall be recognized and protected in the same manner and to the same extent as are other property rights known to the law. The ownership or possession of a trademark. 60 27 SCRA 1214 [1969]. No. 2. Certificate of registration prima facie evidence of validity. equitable principles of laches. Equitable principles to govern proceedings. Inc. corporations. The Director may issue a single certificate for one mark or tradename registered in a plurality of classes upon payment of a fee equaling the sum of the fees for each registration in each class. but not to limit or extend the applicant’s rights. business or services specified in the certificate. upon or in connection with which he is actually using the mark or tradename. pp. – In opposition proceedings and in all other inter partes proceedings in the Patent Office under this Act. 865). subject to any conditions and limitations stated therein. 2075-2078. Classification of goods and services. 58 118 SCRA 526 [1982]. 54 52 SEC. partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act. may appropriate to his exclusive use a trademark. SEC. 224 SCRA 576 [1993]. vs. 62 224 SCRA 576 [1993]. Provided. 57 251 SCRA 600. tradenames and servicemarks. (As added by R. corporations. and such fact is officially certified. 619 [1995].A. – Trademarks. – The Director shall establish a classification of goods and services." Records.SEC 20. as in this section provided. 90-98. What are registrable." Records. 2-A. to distinguish his merchandise. 50 SEC. with a certified true copy of the foreign law translated into the English language. 53 Philip Morris. business or service from the merchandise. or servicemarks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed. (As amended by R. further. by actual use thereof in manufacture or trade. or who renders any lawful service in commerce. the registrant's ownership of the mark or tradename. in business. Court of Appeals. may be considered and applied. – Anyone who lawfully produces or deals in merchandise of any kind or engages in 55 Exhibits "Q" to "R-2. 638). . That said trademarks. tradename. and of the registrant's exclusive right to use the same in connection with the goods. and servicemarks owned by persons. or a servicemark not so appropriated by another. 56 Exhibits "9" to "14. The applicant may register his mark or tradename in one application for any or all of the goods or services included in one class. a tradename. 6. tradenames.A. for the convenience of the Patent Office administration. partnerships or associations domiciled in the Philippines and by persons. tradenames. 61 203 SCRA 583 [1991]. and in the service rendered. and acquiescence where applicable. That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines. 9-A. by the government of the foreign country to the Government of the Republic of the Philippines.

International. Director of Patents. 1945 ed." 116 SCRA 336 [1982]. Esso Standard Eastern. Inc. vs. 13 SCRA 67 [1965]. 87 Exhibits "N to Q". p. 79 Emerald Garment Manufacturing Corporation vs. 49 91 . 116 SCRA 336. vs. Converse Rubber Corp. 31 SCRA 544 [1970]. 1993. Records. vs. Court of Appeals. 325 [1992]. Records. 74 Phil. Emerald Garment Manufacturing Corporation vs. p. 82 Ibid. 783. 1979. 81 Ibid. 421 and 442. October 27. pp. Director of Patents. Records. Mead Johnson & Co. 84 Exhibits "1" to "4". 116 SCRA 336. 1997.. vs. Ltd. 68 115 SCRA 472 [1982]. Farbenfabriken Bayer Aktiengesellschaft. vs.J. Co Tiong vs. Inc. L-49145. 293. June 9. Inc. Records 2095-2097. p. 63 64 215 SCRA 316. Universal Rubber Products. 959. 65 77 Esso Standard Eastern. Phil. 78 181 SCRA 410 [1990]. 100 Phil. Inc. Director of Patents. N. Van Dorp. Court of Appeals. 7 SCRA 771 [1963]. Records. 27 SCRA 1214.V. 251 SCRA 600 [1995]. 86 Reply. Bristol Myers Co. Unfair Competition and Trademarks. 116 SCRA 336 [1982]. vs. 1997. Court of Appeals. 133 SCRA 405 [1984].R. Inc. 95 Phil. 17 SCRA 128 [1966]. Inc. 341 [1982]. vs. vs. 1227 [1969] citing 2 Callman. 147 SCRA 154 [1987]. Lever Bros. American Wire & Cable Co. 1006. 73 Ruben Agpalo..41. Inc. 251 SCRA 600 [1995]. 71 72 Philippine Refining Co. 214 [1956]. Inc. 85 TSN. Fruit of the Loom. vs. May 21. 90 76 224 SCRA 437 [1993]. Court of Appeals. Inc. 74 75 Ibid. TSN. 336 SCRA 266 [2000]. 50 [1942]. 1 [1954]. 89 Exhibits "1" to "4.TSN. Nut Industry. April 13. No. p. Khe vs. December 14. Court of Appeals. 1 SCRA 253 [1961]. 115 SCRA 472 [1982]. Phil. Teodoro. vs. Ng Sam and the Director of Patents.. 88 TSN. pp. p.. Trademark Law and Practice in the Philippines [1990]. Director of Patents. 83 70 G. Lim Hoa vs. Court of Appeals. 66 SCRA 575 [1975]. Chua Che vs. 995-1000. 414. Ang vs. Patents Office. 1993. Selecta. vs.341 [1982]. Standard Brands. 69 116 SCRA 388 [1982]. Co. Arce vs. 80 67 38 SCRA 480 [1971]. 65 Sterling Products. Records.. Esso Standard Eastern..

R. 116 SCRA 336 [1982].A. 92 Phil. cert. 47 (2d Cir. 251 SCRA 600 [1995]. vs. vs. 98 Ibid. 2d 208. Inc. 1116. 224 SCRA 437 [1993]. 693 F. Court of Appeals. vs. Inc. 1099 (2d Cir. denied. 2d 75 [1979]. Emerald Garment Manufacturing Corporation vs. Ct. 2d 44. 1969). 101 102 Ibid. 495 (2d Cir. Court of Appeals.) 1985. Court of Appeals. 115 SCRA 472 [1982]. 368 U. Court of Appeals. denied. 707. 1022. vs. vs. 108 . 103 (b) degree of similarity between the two marks (c) reciprocal of defendant’s good faith in adopting its own mark (d) quality of defendant’s product (e) proximity of the products (f) likelihood that the prior owner will bridge the gap (g) actual confusion. Court of Appeals. Esso Standard Eastern. Promenade Hosiery Mills. 820. Inc. Lever Bros. vs.S..O.). 82 s. Esso Standard Eastern. 698 [1970].. Inc. 411 F. 104 Philippine Refining Co. 105 Thompson Medical Co. Court of Appeals. 115 SCRA 472 [1982]. 106 Kiki Undies Corp. November 3. (Polaroid Corp. Inc. 115 SCRA 472 [1982]. 396 U. 116 SCRA 336 [1982]. Del Monte Corporation. 1982.S. 225 USPQ 124 (2d Cir. N. such as the: 96 Emerald Garment Manufacturing Corporation vs. Corp. Inc. 753 F. Asia Brewery. Ct. Ng Sam and the Director of Patents. Barry Corp. Inc. C. 251 SCRA 600 [1995]. Inc. Ng Sam and the Director of Patents. Polaroid Elecs. 287 F. 181 SCRA 410 [1990]. 2d 492. 97 92 93 Emerald Garment Manufacturing Corporation vs. Ng Sam and the Director of Patents. cert. 90 S. Wellington Dept. Acoje Mining Co. Court of Appeals. vs. Director of Patents. 1094. 439 U. Ed. 1978).. 2d 251. cert.Y. 36. 251 SCRA 600 [1995]. 24 L. 107 Mushroom Makers.. Ed. Inc. Esso Standard Eastern. Inc.. Inc. 580 F. and (h) sophistication of the buyers. vs. 59 L. Court of Appeals. 116 SCRA 336 [1982]. 2d 1097. I CALLMAN 1121 cited in Philippine Refining Co. vs. 2d 25 [1961]). the prior owner’s chance of success is a function of many variables. American Bakeries Co.G. 99 s. vs. Ct. Ang Si Heng & Dee vs. Ed. Pfizer. vs. vs.. Court of Appeals. 7 L... denied..S. 100 Philippine Refining Co. 95 It has been held that where the products are different. vs. Store. 251 SCRA 600 [1995]. 99 94 Ibid. Co. vs. 38 SCRA 480 [1971]. (a) strength of his mark Emerald Garment Manufacturing Corporation vs.G. 3891 [1941]. 448 [1953].

258. 121 26 F. Emerald Garment Manufacturing Corporation vs.. Court of Appeals.A. Records. 1503. 452 F. 172 U. 224 SCRA 437 [1993]. 181 SCRA 410 [1990].Q. vs. The Gap. Answer.S. Records. 2d 1400.Q. p. Inc. 115 SCRA 472 [1982]. 693 F. vs.P. 971-972. Tan Tiao Bok.P. Records. TSN. 1998). Inc. 1993. 112 Emerald Garment Manufacturing Corporation vs.Q. Inc. December 14. Court of Appeals. 432. Records. 192 U. 42 U. et al. 952-958.). 1947). Sunkist Baking Co. 177 (2d Cir. 269 F.Q. Records. 251 SCRA 600 [1995]. pp.P. TSN. 1966). vs. 1997). 1997.A. 256 F. TSN. vs. 115 SCRA 472 [1982].C. 108 F. 958. Grosset & Dunlap. Inc. pp. Va. 1993. Asia Brewery. Sifer’s Chemicals. 118 TSN.D. 123 366 SCRA 266 [2000]. vs. Court of Appeals.P.Emerald Garment Manufacturing Corporation vs. June 9. Inc. 577.S. Records. 120 Phil.Q. 783.S. Inc. Ft. 189 U. Howard Paper Co. Del Monte Corporation.Q. 216 U. 544 F. December 14. 1997. 2d 815 (E. 382. vs. of the Philippines. Supp. 439 [1964]. Ltd. vs.. vs. 109 110 Dy Buncio vs. 1997.N. vs. 122 Exhibit 18. 2d 1085 (T. Inc.. vs. Ltd.S. 530 F. Records. Court of Appeals. 1993. Court of Appeals. 190 [1921].S. 420. Lever Bros. September 8.. TSN. 1330. Insular Petroleum Refining Co. 150 U. 224 SCRA 437 [1993].Q. Co. Jur. 24. Sales Producers Associates. p....S. 966. 166 F. Director of Patents. pp. 420.P.P. Supp. Philippine Refining Co. April 13. 1993. 38 SCRA 480 [1981]. 119 120 297 F.. Asia Brewery. vs. 1971). 1967). Del Monte Corporation. pp. 85 (7th Cir. 124 52 Am. TSN.Y. 1976). Records. 181 SCRA 410 [1990]. p. et al. Estee Lauder. 2d 971.S.P. 117 Shell Co. Inc. 517 (S. TSN. September 8. p. 125 . 478 [1982]. 111 Philippine Refining Co. 2d 1228(2nd Cir. Court of Appeals. 965-967.Y. vs. vs. Nestle Co. Federated Foods.D. Faultless Starch Co. 350 (10th Cir. 928. Records. TSN. 160 USPQ 303. Inc. Record. 76 U..Q. Supp.D. Answer. 251 SCRA 600 [1995]. vs.T.2d 1098. Inc. p.2d 1080. Acoje Mining Co. 42 Phil. (C. Nash-Finch Co. Field Enterprises Educational Corp. Inc.P. American Bakeries Co. 154 U. 1982). Court of Appeals. 113 California Fruit Growers Exchange vs.N. 2d 251. Ng Sam and the Director of Patents. Haviland & Co. December 14.Q. 4 U.P. 251 SCRA 600 [1995]. 287 (S.. Hot Shot Quality Products. vs.S. 3d. Johann Haviland China Corp. Records. p. 114 115 115 SCRA 472.. vs. June 9. Supp. Ng Sam and Director of Patents.B.. p. 116 Emerald Manufacturing.P. 251 SCRA 600 [1995]. 107-108.S. 1997. 257. Inc. 434.

R. 52994.A. respondents.G. private respondent CFC Corporation filed with the BPTTT an application for the registration of the trademark "FLAVOR MASTER" for instant coffee.. 1988 issue of the BPTTT’s Official Gazette. On January 18. INC. The application. as a matter of due course. filed an unverified Notice of Opposition. 24101. petitioners. 2001 SOCIETE DES PRODUITS NESTLE. a Swiss company registered under Swiss laws and domiciled in Switzerland. No.1 reversing and setting aside the decision of the Bureau of Patents. and NESTLE PHILIPPINES. S. Trademarks and Technology Transfer (BPTTT). COURT OF APPEALS and CFC CORPORATION. SP No.R.3 claiming that the trademark of private respondent’s product is "confusingly similar to its . was published in the July 18. S. YNARES-SANTIAGO. vs. FLAVOR MASTER.: This is a petition for review assailing the Decision of the Court of Appeals in CA-G. 1984. under Serial No..A.2 which denied private respondent’s application for registration of the trade-mark.. Petitioner Societe Des Produits Nestle. 112012 April 4. J.

Occupying the center is a square-shaped configuration shaded with dark brown and picturing a heap of coffee beans. against CFC’s application for registration of the trademark FLAVOR MASTER. "is clearly very different from any of Nestle’s alleged trademarks MASTER ROAST and MASTER BLEND. Just above the word "MASTER" is a red window like portrait of what appears to be a coffee shrub clad in gold. is almost double the width of appellant CFC’s. with the letter "M" further capitalized. 24101. to wit: MASTER ROAST and MASTER BLEND.trademarks for coffee and coffee extracts. The Court of Appeals ruled: Were We to take even a lackadaisical glance at the overall appearance of the contending marks. CFC argued that its trademark. "MASTER" in appellees’ label is printed in taller capital letters. a verified Notice of Opposition was filed by Nestle Philippines. or that the goods of CFC might be mistaken as having originated from the latter. FLAVOR MASTER. Below the "MASTER" appears the word "ROAST" impressed in smaller. the other words that are used respectively with said word in the three trademarks are very different from each other – in meaning.. At the top is printed in brown color the word "NESCAFE" against a white backdrop. or deceive purchasers and would falsely suggest to the purchasing public a connection in the business of Nestle. CFC further argued that its trademark. if any. From the foregoing description. spelling. Underneath "FLAVOR MASTER" appears "Premium Instant Coffee" printed in white. the glaring dissimilarities in their presentation far outweigh and dispel any aspect of . 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. and sound". The letters are shaded with red and bounded with thin gold-colored inner and outer sidings. 90-47 dated December 27. "FLAVOR" appearing on top of "MASTER".. FLAVOR MASTER. 1990. color schemes and the letters of their respective labels.A. pronunciation. the Court of Appeals. white print. Appellant CFC’s label (Exhibit "4") is predominantly a blend of dark and lighter shade of orange where the words "FLAVOR MASTER". In answer to the two oppositions. while the contending marks depict the same product. the BPTTT denied CFC’s application for registration." Likewise. alleging that. in the assailed decision dated September 23. MASTER ROAST and MASTER BLEND. 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". where the word "MASTER" is inscribed in the middle. Inc. by CFC of the trademark FLAVOR MASTER and its registration would likely cause confusion in the trade. however.4 Nestle claimed that the use. 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.5 CFC elevated the matter to the Court of Appeals. is not confusingly similar with the former’s trademarks.R. especially when the marks are viewed in their entirety. by considering their pictorial representations. are printed across the top of a simmering red coffee cup." With regard to appellees’ "MASTER BLEND" label (Exhibit "6") of which only a xeroxed copy is submitted. SP No. 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." In its Decision No. Appellees’ "MASTER ROAST" label (Exhibit "7"). as the dominant word present in the three (3) trademarks is "MASTER". where it was docketed as CA-G. 90-47 of the BPTTT and ordered the Director of Patents to approve CFC’s application. a Philippine corporation and a licensee of Societe Des Produits Nestle S. "except for the word MASTER (which cannot be exclusively appropriated by any person for being a descriptive or generic name). reversed Decision No. slim and slanted letters. 1993. And further below are the inscriptions in white: "A selection of prime Arabica and Robusta coffee.

1990. Co. As Mr. the general appearances of the labels bearing the respective trademarks are so distinct from each other that appellees cannot assert that the dominant features. the owner can obtain legal redress. DIRECTOR OF PATENTS (76 SCRA 568). The owner of a trade-mark. Justice Frankfurter observed in the case of Mishawaka Mfg. (17 SCRA 128). background. 166 or the Trademark Law. trade-names and servicemarks on the principal register. Director of Patents (76 SCRA 568).. which was in force at the time. DIRECTOR OF PATENTS. 2. in the minds of potential customers. if any. colors. ET AL. appellant CFC’s and appellees’ labels are entirely different in size. business or services from the goods. APPLIES TO THE CASE. RESPONDENT COURT GRAVELY ERRED IN REVERSING AND SETTING ASIDE THE DECISION (NO. 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. business or services of others shall have the right to register the same on the principal register. v. The petition is impressed with merit. the aim is the same --. 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 . NVJ VAN DORF LTD. contents and pictorial arrangement. RATHER THAN THE TEST OF DOMINANCY. the desirability of the commodity upon which it appears. RESPONDENT COURT ERRED IN INVOKING THE TOTALITY RULE APPLIED IN THE CASES OF BRISTOL MYERS V.6 Petitioners are now before this Court on the following assignment of errors: 1. V. 3. A trademark has been generally defined as "any word. Kresge Co."7 A manufacturer’s trademark is entitled to protection. 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. in short. or what he has been led to believe he wants. as amended. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants. 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. 90-47) OF THE DIRECTOR OF THE BUREAU OF PATENTS. TRADEMARKS AND TECHNOLOGY TRANSFER (BPTTT) DATED DECEMBER 27. Section 4 (d) of Republic Act No. trade-name or servicemark used to distinguish his goods.There is hereby established a register of trade-marks. it is no less true that we purchase goods by them. (7 SCRA 768) AND AMERICAN CYANAMID CO. provides thus: Registration of trade-marks. RESPONDENT COURT ERRED IN HOLDING THAT THE TOTALITY RULE. To borrow the words of the Supreme Court in American Cyanamid Co. the trade-mark owner has something of value. V. v. 4. Once this is attained.similitude.to convey through the mark. . MEAD JOHNSON & CO. trade-names and service marks which shall be known as the principal register. 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. Whatever the means employed.:8 The protection of trade-marks is the law’s recognition of the psychological function of symbols. If it is true that we live by symbols. If another poaches upon the commercial magnetism of the symbol he has created. name. The answer therefore to the query is a clear-cut NO. of its trademarks were used or appropriated in appellant CFC’s own.

Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned. the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. supra). If the buyer is deceived. 181 SCRA 410. et al. The Supreme Court in Del Monte Corporation v. 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. In other words. 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." From this perspective.12 The Court of Appeals applied some judicial precedents which are not on all fours with this case. 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. to cause confusion or mistake or to deceive purchasers. particularly in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another. citing Mead Johnson & Co. or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives.the Dominancy Test and the Holistic Test. jurisprudence has developed two kinds of tests . Director of Patents. when applied to or used in connection with the goods. the test of similarity is to consider the two marks in their entirety. as they appear in the respective labels.. Each . supra). Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons. NVJ Van Dorp. 9 In determining if colorable imitation exists. v. it is attributable to the marks as a totality. 17 SCRA 128. as to cause him to purchase the one supposing it to be the other. Ltd.11 In the case at bar. The mark must be considered as a whole and not as dissected. CA. It must be emphasized that in infringement or trademark cases in the Philippines. 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. no set rules can be deduced. 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. v. undiscerningly rash in buying the more common and less expensive household products like coffee. as to be likely. NVJ Van Dorp. the general impression of the ordinary purchaser. et al. buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods. xxx xxx xxx (Emphasis supplied) 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. Hence. As observed in several cases. business or services of the applicant. On the other side of the spectrum.. CA. 7 SCRA 768). 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. Ltd. is such as to likely result in his confounding it with the original... in general. is the touchstone. in relation to the goods to which they are attached (Bristol Myers Company v. the issue is whether the trademark FLAVOR MASTER is a colorable imitation of the trademarks MASTER ROAST and MASTER BLEND. and are therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. not usually to any part of it (Del Monte Corp. v.

cannot be applied in the instant petition as the facts and circumstances herein are peculiarly different from those in the Del Monte case. NVJ Van Dorf Ltd. Since Del Monte alleged that Sunshine’s logo was confusingly similar to or was a colorable imitation of the former’s logo. In determining whether two trademarks are confusingly similar.In the case at bar. In trademark cases. v. both products are for medicinal veterinary use and the buyer will be more wary of the nature of the product he is buying.19 The totality rule states that "the test is not simply to take their words and compare the spelling and pronunciation of said words. precedent must be studied in light of the facts of the particular case. and their names are practically the same in spelling and pronunciation. 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. circumstances of each case. In the same manner. Also. the Court of Appeals erred in applying the totality rule as defined in the cases of Bristol Myers v. Both corporations market the catsup product which is an inexpensive and common household item. Director of Patents. the factual circumstances are substantially different. the . therefore. the word SULMET is distinguishable from the word SULMETINE. 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. The said products are not the usual "common and inexpensive" household items which an "undiscerningly rash" buyer would unthinkingly buy.17 Mead Johnson & Co. Director of Patents. It cannot also be said that the products in the above cases can be bought off the shelf except. both of which are chemical compounds present in the article manufactured by the contending parties. Court of Appeals16 is. In Del Monte. Also. there was a need to go into the details of the two logos as well as the shapes of the labels or marks. The same criteria. to be determined only according to the particular. the discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both labels. The wisdom of the likelihood of confusion test lies in its recognition that each trademark infringement case presents its own unique set of facts."20 As this Court has often declared. as the former is derived from a combination of the syllables "SUL" which is derived from sulfa and "MET" from methyl. v. ALASKA refers to "Foods and Ingredients of Foods" falling under Class 47. and does not require medical prescription. That is the reason why in trademark cases. In addition.14 we ruled that the likelihood of confusion is a relative concept.case must be decided on its own merits.. this Court held that although both BIOFERIN and BUFFERIN are primarily used for the relief of pains such as headaches and colds. one is dispensable only upon doctor’s prescription. Court of Appeals. however. In the above cases cited by the Court of Appeals to justify the application of the totality or holistic test to this instant case. while the other may be purchased overthe-counter. the words or lettering on the labels or marks and the shapes and colors of the labels or marks. Inc. jurisprudential precedents should be applied only to a case if they are specifically in point. perhaps.18 and American Cyanamid Co. In the Mead Johnson case." falling under Class 6 of the official classification of Medicines and Pharmaceutical Preparations to be used as prescribed by physicians. v.15 The Court of Appeals’ application of the case of Del Monte Corporation v. and sometimes peculiar. 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. the issue was about the alleged similarity of Del Monte’s logo with that of Sunshine Sauce Manufacturing Industries. for ALASKA. the differences between ALACTA and ALASKA are glaring and striking to the eye. both labels have strikingly different backgrounds and surroundings. In any case. In the Bristol Myers case. each case must be studied according to the peculiar circumstances of each case. misplaced. other than the fact that both Nestle’s and CFC’s products are inexpensive and common household items. On the other hand. the brands printed on the labels. 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. ALACTA refers to "Pharmaceutical Preparations which Supply Nutritional Needs. even more than in any other litigation. In the American Cyanamid case.13 In Esso Standard.

in general. Moreover. What is being questioned here is the use by CFC of the trademark MASTER.similarity ends there. this Court agrees with the BPTTT when it applied the test of dominancy and held that: . there could be more telling differences than similarities as to make a jurisprudential precedent inapplicable. aural. undiscerningly rash in buying the more common and less expensive household products like coffee. in general. If the ordinary purchaser is "undiscerningly rash" in buying such common and inexpensive household products as instant coffee. 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. 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. 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. and would therefore be "less inclined to closely examine specific details of similarities and dissimilarities" between the two competing products. In view of the difficulty of applying jurisprudential precedents to trademark cases due to the peculiarity of each case.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 the Court of Appeals itself has stated. undiscerningly rash in buying the more common and less expensive household products like coffee. 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." 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. 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. this Court believes that the dominancy test is more suitable to this case in light of its peculiar factual milieu. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features. similarities or dissimilarities. As such. While this Court agrees with the Court of Appeals’ detailed enumeration of differences between the respective trademarks of the two coffee products. connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. "[t]he determination of whether two trademarks are indeed confusingly similar must be taken from the viewpoint of the ordinary purchasers who are. if the ordinary purchaser is "undiscerningly rash". judicial fora should not readily apply a certain test or standard just because of seeming similarities. For this reason. considering that the product is an inexpensive and common household item. This Court cannot agree with the above reasoning. this Court cannot agree that totality test is the one applicable in this case. and are therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. 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 this Court has pointed above. since what is of paramount consideration is the ordinary purchaser who is. An ordinary purchaser or buyer does not usually make such scrutiny nor does he usually have the time to do so.22 The Court of Appeals held that the test to be applied should be the totality or holistic test reasoning. We agree. and is therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. Rather.

In one word. when one looks at the label bearing the trademark FLAVOR MASTER (Exh. respectively. Nestle advertised its products thus: Robert Jaworski. MASTER ROAST. Further. 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. Ric Puno Jr. it "forthwith conveys the characteristics. "which subtly connote something about the product." or comprise the "genus of which the particular product is a species.Arabica for superior taste and aroma. A masterpiece only NESCAFE. is master. Witty." In associating its coffee products with the term "MASTER" and thereby impressing them with the attributes of said term." or are "commonly used as the name or description of a kind of goods. x x x. the term "MASTER" is a suggestive term brought about by the advertising scheme of Nestle..24 In addition.28 In the art of conversation. In due time. it is sufficiently established that the word MASTER is the dominant feature of opposer’s mark. Suggestive terms27 are those which. therefore. A master strategist." 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. While suggestive marks are capable of shedding "some light" upon certain characteristics of the goods or services in dispute. the word "MASTER" is neither a generic nor a descriptive term. Nestle has. over time. Robusta for strength and body." "figurativeness. can create. MASTER ROAST. Generic terms25 are those which constitute "the common descriptive name of an article or substance. functions. they nevertheless involve "an element of incongruity. in the phraseology of one court. unmatched." or " imaginative effort on the part of the observer. are given the titles Master of the Game and Master of the Talk Show. Therefore. Equally unmatched." and are not legally protectable. a term is descriptive26 and therefore invalid as a trademark if. In this case." or "imply reference to every member of a genus and the exclusion of individuating characters. On the other hand. Wellinformed. Living Legend. . the word MASTER has always been given emphasis in the TV and radio commercials and other advertisements made in promoting the product. as understood in its normal and natural sense. Fast on his feet. The word MASTER is printed across the middle portion of the label in bold letters almost twice the size of the printed word ROAST. the possibility of confusion as to the goods which bear the competing marks or as to the origins thereof is not farfetched. qualities or characteristics of the goods.. may be legally protected. A true hard court hero. Confident. thought and perception to reach a conclusion as to the nature of the goods. Sure in every shot he makes. the personalities engaged to promote the product. promoted its products as "coffee perfection worthy of masters like Robert Jaworski and Ric Puno Jr." This is evident from the advertising scheme adopted by Nestle in promoting its coffee products." are eligible for protection in the absence of secondary meaning. Rather. Thus. qualities or ingredients of a product to one who has never seen it and does not know what it is. require "imagination. rather than to the dissimilarities that exist. Coffee perfection worthy of masters like Robert Jaworski. said term can not be invalidated as a trademark and. 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." or "if it forthwith conveys an immediate idea of the ingredients. the world’s coffee masters. x x x. Made from a unique combination of the best coffee beans . Rich and deeply satisfying. Ric Puno Jr." Such terms. As such.From the evidence at hand. This can be gleaned from the fact that Robert Jaworski and Atty." or "refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product. 4) one’s attention is easily attracted to the word MASTER.

. 325 (W. it is generally true that. Gapen Mfg. 24101 is REVERSED and SET ASIDE and the decision of the Bureau of Patents. the coffee masterpiece from Nescafe.. Supp. Master Roast. Thompson Medical Co. the world’s coffee masters. 8 316 U..J. et al. 420 F. 1 2 Penned by Director Ignacio S. the decision of the Court of Appeals in CA-G. v. 35-48. 53 USPQ 323 [1942]. 3202. 156. Emerald Garment Manufacturing Corporation v. Etepha v. 3200. v.S. Mo. Robusta for strength and body. pp. 29 The term "MASTER". Puno J. Coffee perfection worthy of masters like Ric Puno Jr. Verzola. Court of Appeals. A unique combination of the best coffee beans Arabica for superior taste and aroma. it may not be amiss to quote the case of American Chicle Co. as soon as we see that a second comer in a market has. 1985). v. for no reason that he can assign. . 191 USPQ 315. . 7 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. Indeed. JJ. 2d 208. supra. concur. 144. 11 Id. WHEREFORE. (Chairman). . SO ORDERED. 15 . Sapalo.. C. Inc. 3200 and 3202 is REINSTATED. Topps Chewing Gum. Director of Patents. Inc. 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. 5 Rollo. Trademarks and Technology Transfer in Inter Partes Cases Nos. Inc. nothing equals Master Roast.R. Bass Buster. Kapunan. in view of the foregoing. 251 SCRA 600 [1995]. 9 10 Ibid.D. 4 Inter Partes Case No. Tayao-Jaguros and Eubulo G.. 3 Inter Partes Case No. 203. SP No. In closing. [W]e feel bound to compel him to exercise his ingenuity in quarters further afield. 6 Ibid. 1976). As such. 13 116 SCRA 336 [1982] as cited in Emerald Garment Manufacturing Corporation v. has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle. 225 USPQ 124 (2d Cir. Co. pp.. Pfizer. 12 Rollo. 32. therefore.. 497498 [1966]. 14 Davide. Truly distinctive and rich in flavor.In the art of coffee-making. 16 SCRA 495. p. Francisco and concurred in by Associate Justices Lourdes K. 33-34. Court of Appeals. plagiarized the "make-up" of an earlier comer.30 to wit: Footnotes Penned by Associate Justice Ricardo J. we need no more. 753 F.. Jr. and Pardo. on official leave.

Court of Appeals. ESSO STANDARD EASTERN. Petitioner Esso Standard Eastern. J. 1962).. 3-54. 18 7 SCRA 768 [1963]. it registered as a business name with the Bureaus of Commerce and Internal Revenue in April and May. INC.. Private respondent . 2d 560. 25 26 Id. p. petitioner. 99 USPQ 362. is engaged in the sale of petroleum products which are Identified with its trademark ESSO (which as successor of the defunct Standard Vacuum Oil Co. 20 Mead Johnson & Co. 3-76. L-29971 August 31. No. THE HONORABLE COURT OF APPEALS ** and UNITED CIGARETTE CORPORATION. 28 Exhibit "N". 38-39. 21 Rollo. 32. 3-36.16 181 SCRA 410 [1990]. & Federal Unfair Competition: Lanham Act § 43(a). p.. v. 24 Rollo. p. vs. 30 TEEHANKEE.. 322. p. supra. pp. Inc. NVJ Van Dorf Ltd. Del Monte Corporation v. 17 17 SCRA 128 [1966]. 29 Exhibit "O". 1953).R. 562-63. since it clearly appears that the goods on which the trademark ESSO is used by respondent is noncompeting and entirely unrelated to the products of petitioner so that there is no likelihood of confusion or deception on the part of the purchasing public as to the origin or source of the goods.:1äwphï1. respondents.1. 1 then a foreign corporation duly licensed to do business in the Philippines. 364-65 (2d Cir. p.ñët The Court affirms on the basis of controlling doctrine the appealed decision of the Court of Appeals reversing that of the Court of First Instance of Manila and dismissing the complaint filed by herein petitioner against private respondent for trade infringement for using petitioner's trademark ESSO. G. 181 SCRA 410 [1990]. 208 F. 1982 22 23 Federal Unfair Competition: Lanham Act § 43(a). 19 76 SCRA 568 [1977].. 27 Id.

For non-competing goods may be those which. business or services. In its answer. copy or colorable limitation of any registered mark or tradename in connection with the sale. being entirely unrelated. copy or colorable limitation to labels. one of the rights thus acquired having been the use of the trademark ESSO on its cigarettes. copy or colorably imitate any such mark or tradename and apply such reproduction. respondent Court of Appeals found that there was no trademark infringement and dismissed the complaint. The law defines infringement as the use without consent of the trademark owner of any "reproduction. or is actually. when petitioner commenced a case for trademark infringement in the Court of First Instance of Manila. wrappers. receptacles or advertisements intended to be used upon or in connection with such goods. Respondent contended that in order that there may be trademark infringement. counterfeit. circumstances of each case. Puritan Mills. it is indispensable that the mark must be used by one person in connection or competition with goods of the same kind as the complainant's. On appeal." 4 Implicit in this definition is the concept that the goods must be so related that there is a likelihood either of confusion of goods or business. signs.in turn is a domestic corporation then engaged in the manufacture and sale of cigarettes. decided in favor of petitioner and ruled that respondent was guilty of infringement of trademark. in the former case of related goods. after it acquired in November. 3 referring to related products. Petitioner asserted that the continued use by private respondent of the same trademark ESSO on its cigarettes was being carried out for the purpose of deceiving the public as to its quality and origin to the detriment and disadvantage of its own products. packages. deceived and misled that they came from the same maker or manufacturer. Reconsideration of the decision having been denied. relying on the old cases of Ang vs. vs. could not reasonably be assumed to have a common source. counterfeit. 5 But likelihood of confusion is a relative concept. though they are not in actual competition. The complaint alleged that the petitioner had been for many years engaged in the sale of petroleum products and its trademark ESSO had acquired a considerable goodwill to such an extent that the buying public had always taken the trademark ESSO as equivalent to high quality petroleum products. counterfeit. 7 "In trademark cases. respondent admitted that it used the trademark ESSO on its own product of cigarettes. But as to whether trademark infringement exists depends for the most part upon whether or not the goods are so related that the public may be. precedent must be studied in the light of the facts of the particular case. petitioner appealed to this Court by way of certiorari to reverse the decision of the Court of Appeals and to reinstate the decision of the Court of First Instance of Manila. which was not Identical to those produced and sold by petitioner and therefore did not in any way infringe on or imitate petitioner's trademark. 1963 the business. are non-competing. factory and patent rights of its predecessor La Oriental Tobacco Corporation. Selecta Biscuit Company. The Court finds no ground for granting the petition. prints. Inc. or Identity of such business. Teodoro 2 and Arce & Sons. The trial court. petroleum products. Barely had respondent as such successor started manufacturing cigarettes with the trademark ESSO. cigarettes. and sometimes peculiar. It is undisputed that the goods on which petitioner uses the trademark ESSO. to be determined only according to the particular. as stated in Coburn vs. 6 It is unquestionably true that. Non-competing goods may also be those which. 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. and the product of respondent. even more than in other litigation. are so related to each other that it might reasonably be assumed that they originate from one manufacturer. . or reproduce. or advertising of any goods. Inc. offering for sale. for which a permit had been duly granted by the Bureau of Internal Revenue.

since both are toilet articles. 20 Petitioner uses the trademark ESSO and holds certificate of registration of the trademark for petroleum products. he is not likely to purchase the latter just because of the trademark LOTUS" and "when regard is had for the principle that the two trademarks in their entirety as they appear in their respective labels should be considered in relation to the goods advertised before registration could be denied. were held to be similar or to belong to the same class. set on a background which is dissimilar as to yield a distinct appearance?" and ordered the granting of petitioner's application for registration ruling that "there is quite a difference between soy sauce and edible oil. 11 Thus. much less cause damage to petitioner.confusion of business could arise out of the use of similar marks. biscuits were held related to milk because they are both food products. it could not." In the situation before us. in the recent case of Philippine Refining Co. Director of Patents. 12 Soap and perfume. for their respective products of thread and yarn (for the former) and textiles. colored differently. reversed the patent director's decision on the question of "May petitioner Acoje Mining Company register for the purpose of advertising its product. 15 But no confusion or deception can possibly result or arise when the name "Wellington" which is the trademark for shirts. 14 Soap and pomade although noncompetitive. through now Chief Justice Fernando. pants. composition. there being already in existence one such registered in favor of the Philippine Refining Company for its product. abrasive detergents. soy sauce. vs. when they possess the same physical attributes or essential characteristics with reference to their form. 13 The trademark "Ang Tibay" for shoes and slippers was disallowed to be used for shirts and pants because they belong to the same general class of goods. vs. the conclusion is inescapable that respondent Director ought to have reached a different conclusion. texture or quality. If one is in the market for the former. Everbright Development Company and F. Inc. the trademark LOTUS. " By the same token. 17 the Court. 8 The vast majority of courts today follow the modern theory or concept of "related goods" 9 which the Court has likewise adopted and uniformly recognized and applied. The Court. women and children is used as a name of a department store. 10 Goods are related when they belong to the same class or have the same descriptive properties. lipstick and nail polish are similarly related because they are common household items now a days. including . this alone cannot serve as the decisive factor in the resolution of whether or not they are related goods. the goods are obviously different from each other with "absolutely no iota of similitude" 19 as stressed in respondent court's judgment." The Court. concluded that "In fine. Inc. cooking oil. therefore. 18 the Court upheld the patent director's registration of the same trademark CAMIA for therein respondent's product of ham notwithstanding its already being used by therein petitioner for a wide range of products: lard butter. E. in the latter case of non-related goods. We hold that the businesses of the parties are non-competitive and their products so unrelated that the use of Identical trademarks is not likely to give rise to confusion.. polishing materials and soap of all kinds. embroideries and laces (for the latter) ruled that "while ham and some of the products of petitioner are classified under Class 47 (Foods and Ingredients of Food). drawers and other articles of wear for men. in Acoje Mining Co. edible oil. Emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics.. Ng Sam and Director of Patents. 16 Thus. They may also be related because they serve the same purpose or are sold in grocery stores. They are so foreign to each other as to make it unlikely that purchasers would think that petitioner is the manufacturer of respondent's goods.ït¢@lFº The mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different kind. Zuellig. after noting that the same CAMIA trademark had been registered by two other companies. it being further shown that the trademark applied for is in smaller type. Inc.

the use of the same trademark on the latter's product cannot be validly objected to. grocery stores." 24 Even the lower court. vs. Director of Patents. and other small distributor outlets. and no others. Ltd vs. on the strength of the controlling authority of Acoje Mining Co. Tengco. 1979 dismissing by minute resolution the petition for review for lack of merit in the Identical case of Shell Company of the Philippines.'s) cigarettes. gas. it is difficult to conceive of confusion in the minds of the buying public in the sense it can be thought that appellant (Shell) . 22 Another factor that shows that the goods involved are noncompetitive and non-related is the appellate court's finding that they flow through different channels of trade. The public knows too well that petitioner deals solely with petroleum products that there is no possibility that cigarettes with ESSO brand will be associated with whatever good name petitioner's ESSO trademark may have generated. "(A) witness for the plaintiff. Mr. synthetics.) and where appellant (Shell) is known to be in the business of selling petroleum and petroleum-based chemical products. The only color that the appellant uses in its trademark is green. Supra. cigarette lighter fluid and other various products such as plastics. lubricating oil. while respondent's business is solely for the manufacture and sale of the unrelated product of cigarettes. On the other hand. The (petitioner's) products are distributed principally through gasoline service and lubrication stations. which ruled initially for petitioner. Mr. bunker fuel. alcohol. admitted that the color of the "ESSO" used by the plaintiff for the oval design where the blue word ESSO is contained is the distinct and unique kind of blue." 23 Respondent court correctly ruled that considering the general appearances of each mark as a whole. the possibility of any confusion is unlikely. thus: "The products of each party move along and are disposed through different channels of distribution. automotive shops and hardware stores. chemicals. blue or any combination of the three colors. Buhay informed the court that the plaintiff never used its trademark on any product where the combination of colors is similar to the label of the Esso cigarettes. while in that of the plaintiff the word ESSO is enclosed in an oval background. Court of Appeals 25. testified that generally. and the same rationale that "(I)n the Philippines. which as pointed out in the appealed judgment is beyond petitioner's "zone of potential or natural and logical expansion" 21 When a trademark is used by a party for a product in which the other party does not deal. Evidently. in kind and nature the products of (respondent) and of (petitioner) are poles apart. Finally. the Court's dismissal of the petition at bar was presaged by its Resolution of May 21. Mr. Buhay. they are of the same class or line of merchandise which are noncompeting with respondent's product of cigarettes. It is to be pointed out that not even a shade of these colors appears on the trademark of the appellant's cigarette. In his answer to the trial court's question. can be more numerous compared to buyers of the higher priced petroleum and chemical products of appellant (Shell Co. automotive and industrial fuel. found that a "noticeable difference between the brand ESSO being used by the defendants and the trademark ESSO of the plaintiff is that the former has a rectangular background. Although petitioner's products are numerous. where buyers of appellee's (Fortune Corp. wherein the Court thereby affirmed the patent office's registration of the trademark SHELL as used in the cigarettes manufactured by therein respondent Fortune Tobacco Corporation notwithstanding the therein petitioner Shell Company's opposition thereto as the prior registrant of the same trademark for its gasoline and other petroleum trademarks." In point of fact and time. as well as between petroleum and cigarettes. fertilizers. As pointed out by respondent court in its appealed decision.aviation gasoline. A comparison of the labels of the samples of the goods submitted by the parties shows a great many differences on the trademarks used. the plaintiff's trademark comes all in either red." and "Another witness for the plaintiff. gasoline solvents. kerosene. (Respondent's) cigarettes are even peddled in the streets while (petitioner's) 'gasul' burners are not. insecticides and the ESSO Gasul" burner. there is a marked distinction between oil and tobacco. white. grease. the (respondent's) cigarettes are sold in sari-sari stores. which are low cost articles.

378.is the manufacturer of appellee's (Fortune's) cigarettes.ñët 7 108 F. 1969. p. Co.G. 8 2 Callman. 50. 1324. ponente. were transferred to Esso Philippines. Unfair Competition and Trademarks. Patent Office. JJ. 9 2 McCarthy. Wellington Department Store.. Its petition to be substituted by Esso Philippines. 13 SCRA 67 (1965). 6 Ibid. p. Lever Bros. 50. Director of Patents. Inc. 22. 1 On December 31. Store. and Mojica. Khe vs. Teodoro. 15 Khe vs. Wellington Dept. Inc. & Footnotes1äwphï1.. Jr. 92 Phil.ñët * First Division then cmposed of Villamor. Melencio-Herrera. Chua Che vs. Selecta. Makasiar. supra. 4 Sec. supra. Lever Bros. 5 2 Callman. 13 Chua Che vs. took no part. Co. Plana. Patents Office. Relova and Gutierrez.. Unfair Competition and Trademarks. Teodoro. Acoje Mining Co. J. Ang Si Heng & Dee vs. supra. 1257. Trademarks and Unfair Competition. 1970. supra. 49 O. p.1äwphï1. J. Inc. 448. 2d 377. the petition is dismissed and the decision of respondent Court of Appeals is hereby affirmed. 14 Ang vs. 1123. Concepcion.." 26 ACCORDINGLY. 74 Phil. 10 Vide: Arce vs. Presiding Justice." the businesses.. Phil. 3891 (1941). 12 Arce vs. 1 SCRA 253 (1961). . vs. Selecta. JJ. is on leave. as party petitioner was denied in a resolution of this Court dated April 7. p. Ang vs. 3 1 SCRA 253. supra. Vasquez. by virtue of an "Agreement of Exchange and Transfer. 16 Ang Si Heng & Dee vs. p. properties and other assets in the Philippines of Esso Standard Eastern. pursuant to the then Solicitor General's opposition "because of the possible legal consequence that may arise under the provisions of the Laurel-Langley Act and other related laws. or that appellee (Fortune) is the manufacturer or processor of appellant's (Shell's) petroleum and chemical products. concur. 1336. Jr. Inc. 38 SCRA 480 (1971). Trademark Law. 2 74 Phil... 11 2 Callman Unfair Competition & Trade Marks. Phils. 119.

R. L-49145. manufactures and sells cigarettes using the trademark "MARK. 22 George W. July 30. Inc. Inc. 11147...: The decision under review summarized what happened next. 20 American Foundries vs. which dismissed the complaint for trademark infringement and damages thereat commenced by the petitioners against respondent Fortune Tobacco Corporation. 47374 of the Regional Trial Court of Pasig. Record at page 77. 19053. Petitioner Philip Morris. is the registered owner of the trademark "MARK TEN" for cigarettes as evidenced by PPO Certificate of Registration No. J. and FABRIQUES DE TABAC REUNIES. 19 Record. United States of America. 47374. on August 18. Ngo Guan. Inc. in its Civil Case No. and 21 Record at page 138. p. 1979. CV No. L-26676. herein petitioners Philip Morris. petitioner Benson & Hedges (Canada). is the assignee of the trademark "LARK. 26 Idem..A.).A.R. G. Inc. BENSON & HEDGES (CANADA). 128. Branch 166. 18 SCRA 944 (1966).. L40163.. to wit: 1. a corporation organized under the laws of the State of Virginia. Branch 166..381. per Certificate of Registration No. Decision dated January 21. 20031 affirming an earlier decision of the Regional Trial Court of Pasig City. Inc. FORTUNE TOBACCO CORPORATION. S.. INC.17 38 SCRA 480(1971). 24 Record at pages 137-138. Luft Co. S. vs. 1979 and judgment entered June 28. (now known as PHILIP MORRIS PRODUCTS S. And as can be seen in Trademark Certificate of Registration No.. as follows: . Similarly. the registered owner of the trademark "MARK VII" for cigarettes.. No. and Fabriques de Tabac Reunies. On the other hand. 25 G. R. Via this petition for review under Rule 45 of the Rules of Court. separate opinion of Court of Appeals Justice Corazon Juliano Agrava. a Complaint for Infringement of Trademark and Damages against respondent Fortune Tobacco Corporation. 18723 issued on April 26. No. 2..R.A. 1973 by the Philippine Patents Office (PPO). 20032 denying petitioners’ motion for reconsideration.A. the Swiss company Fabriques de Tabac Reunies. vs.A. 1982. Petitioners. 2006 PHILIP MORRIS. a subsidiary of Philip Morris. S. another subsidiary of Philip Morris. (now Philip Morris Products S. G. docketed as Civil Case No. on the claim that an infringement of their respective trademarks had been committed. No. 18 G. Robertson. Inc. see also Leviton Industries vs. 1982 (2nd Division). filed. 23 Record at pages 135-136.) seek the reversal and setting aside of the following issuances of the Court of Appeals (CA) in CA-G. 158589 June 27." The legal dispute between the parties started when the herein petitioners. DECISION GARCIA. is. respondent Fortune Tobacco Corporation.R. Resolution dated May 30. 269 US 372. 1982. INC. 66619. petition for review denied May 21." which was originally registered in 1964 by Ligget and Myers Tobacco Company. Respondent.. a company organized in the Philippines. June 19. Salvador. Benson & Hedges (Canada) Inc.

1973. or translation of a mark already belonging to a person entitled to the benefits of the said Convention. it must. a country of the Union may prohibit the use of a trademark which constitutes a reproduction. xxx without need of a license to do business in those countries. I. symbol or device to constitute a trademark. Invoking the provisions of the Paris Convention for the Protection of Industrial and Intellectual Property (Paris Convention. Resolving first the issue of whether or not [petitioners] have capacity to institute the instant action. as amended. 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. 91332].In the Complaint xxx with prayer for the issuance of a preliminary injunction. Imputing bad faith on the part of the [respondent]. 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. It expounded that "in order for a name. which cannot particularly identify a product to be the product of the [petitioners] xxx xxx lawphil. Hence.R. 1999 dismissing the complaint and counterclaim after making a finding that the [respondent] did not commit trademark infringement against the [petitioners]. by virtue of the long and extensive usage of the same. [Petitioners] claimed that they have registered the aforementioned trademarks in their respective countries of origin and that. they argued that [respondent’s] use of the trademark "MARK" in its cigarette products have caused and is likely to cause confusion or mistake. Vo. [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. No. the court declared that [petitioners] are barred from maintaining any action in Philippine courts pursuant to Section 133 of the Corporation Code. 26). manufactured and sold cigarettes bearing the identical and/or confusingly similar trademark "MARK" xxx Accordingly. xxx xxx xxx After the termination of the trial on the merits xxx trial court rendered its Decision xxx dated November 3. xxx. 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.net xxx xxx. without any previous consent from any of the [petitioners]. p. [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. point distinctly to the origin or ownership of the article to which it is applied and be of such nature . 1993 in G. petitioners claimed that the [respondent]. either by itself or by association. for brevity). It added that the testimonies of [petitioners’] witnesses xxx essentially declared that [petitioners] are in fact doing business in the Philippines. [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"]. xxx. 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. in accordance with Section 21-A in relation to Section 23 of Republic Act 166. to which the Philippines is a signatory xxx. [petitioners] pointed out that upon the request of an interested party. but [petitioners] failed to establish that they are doing so in accordance with the legal requirement of first securing a license. [Respondent] filed its Answer xxx denying [petitioners’] material allegations and xxx averred [among other things] xxx that "MARK" is a common word. these trademarks have already gained international fame and acceptance. 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. Meanwhile. The issue of whether or not there was infringement of the [petitioners’] trademarks by the [respondent] was likewise answered xxx in the negative. imitation. They likewise argued that.

which promotes and popularizes their products in the Philippines. Consequently. moreover.e. 6 Indeed. 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. 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. 66619. "MARK TEN" or "LARK". 2003.3 (Words in brackets supplied) Maintaining to have the standing to sue in the local forum and that respondent has committed trademark infringement. 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. are entitled to enforce trademark rights in this country. since the [petitioners] filed the action in the belief that they were aggrieved by what they perceived to be an infringement of their trademark. As to the issue of damages. It. 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. petitioners went on appeal to the CA whereat their appellate recourse was docketed as CA-G. xxx.5 respondent. The trial court ruled that the [petitioners] failed to pass these tests as it neither presented witnesses or purchasers attesting that they have bought [respondent’s] product believing that they bought [petitioners’] "MARK VII". "MARK VII". the CA. the court ruled that the [petitioners] cannot avail themselves of the doctrine of secondary meaning. nevertheless affirmed the trial court’s decision on the underlying issue of respondent’s liability for infringement as it found that: xxx the appellants’ [petitioners’] trademarks. the trial court deemed it just not to award any to either party stating that.R. such that the buying public could not be deceived into believing that [respondent’s] "MARK" cigarettes originated either from the USA. "MARK TEN" and "LARK". no wrongful act or omission can be attributed to them. or Switzerland. Canada. Eventually. while ruling for petitioners on the matter of their legal capacity to sue in this country for trademark infringement. conflicting. In its Comment. Dealing first with the procedural matter interposed by respondent. xxx. Applying such principle to the instant case. "TEN". 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.7 Unless the factual findings of the appellate court are mistaken. The petition is bereft of merit. hence liable for damages. absurd. the Court is not the proper venue to consider factual issues as it is not a trier of facts. Emphasizing that the test in an infringement case is the likelihood of confusion or deception. also puts in issue the propriety of the petition as it allegedly raises questions of fact.as to permit an exclusive appropriation by one person". "LARK" and the Roman Numerals "VII". the trial court was of the opinion that the words "MARK". in its Decision dated January 21. as Philippine registrants of trademarks. as regards the third issue.4 (Word in bracket supplied) With their motion for reconsideration having been denied by the CA in its equally challenged Resolution of May 30. A question of law exists when the doubt or difference arises as to what the law is on a certain state of facts. petitioners are now with this Court via this petition for review essentially raising the following issues: (1) whether or not petitioners. there is likewise no basis for the award of damages prayed for by the appellants herein. and (2) whether or not respondent has committed trademark infringement against petitioners by its use of the mark "MARK" for its cigarettes. and have also failed to introduce in evidence a specific magazine or periodical circulated locally. CV No.. i. speculative. aside from asserting the correctness of the CA’s finding on its liability for trademark infringement and damages. there is a question of fact when the doubt or difference arises as to the truth or falsity of alleged facts. 2003. . Hence.

without need of obtaining registration or a license to do business in the Philippines. Concededly. in the minds of potential customers. as amended. 8293. or what he has been led to believe what he wants. 16 petitioners state that such availability and sale may be effected through the acts of importers and distributors..to convey through the mark. Inc. 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. the desirability of the commodity upon which it appears. or the Trademark Law. No. as Mr.9 But. the trademark owner has something of value. To petitioners. 10 Be that as it may. or device. still. or any combination thereof adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured. No. or contrary to the findings culled by the court of origin. A "trademark" is any distinctive word. and without necessity of actually doing business in the Philippines.) No. the question of whether or not the conclusion drawn therefrom by the CA is correct is one of law. It is thus understandable for petitioners to invoke in this recourse their entitlement to enforce trademark rights in this country. petitioners would press on their entitlement to protection even in the absence of actual use of trademarks in the country in view of the Philippines’ adherence to the Trade Related Aspects of Intellectual Property Rights or the TRIPS Agreement and the enactment of R. 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. as corporate nationals of member-countries of the Paris Union.11 Inarguably. 166. it is no less true that we purchase goods by them. If it is true that we live by symbols. these grievance right and mechanism are accorded not only by Section 21-A of Republic Act (R. In any event. a trademark deserves protection. however. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants. as amended. petitioners assert that. but also by Article 2 of the Paris Convention for the Protection of Industrial Property. sold. the aim is the same . emblem. sign.A. the Court is not inclined to disturb the conclusions reached by the appellate court.A. or dealt in by others. In support of their contention respecting their right of action. if that be the case. name. Citing Converse Rubber Corporation v. the established rule being that all doubts shall be resolved in favor of the correctness of such conclusions. If another poaches upon the commercial magnetism of the symbol he has created. petitioners argue that their not doing business in the Philippines. does not mean that cigarettes bearing their trademarks are not available and sold locally.tainted with grave abuse of discretion. specifically.:12 The protection of trademarks is the law’s recognition of the psychological function of symbols. 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. Co. Whatever the means employed. they can sue before Philippine courts for infringement of trademarks. petitioners point out that there is actual use of their trademarks in the Philippines as evidenced by the certificates of registration of their trademarks. Finally. Kresge Co. otherwise known as the Paris Convention.A. that their contentions should be treated as purely legal since they are assailing erroneous conclusions deduced from a set of undisputed facts. when the facts are undisputed. the right to sue for trademark infringement in Philippine courts and be accorded protection against unauthorized use of their Philippine-registered trademarks. Justice Frankfurter observed in Mishawaka Mfg. The marks "MARK TEN" and "LARK" were registered on the basis of actual use in accordance with Sections 2-A13 and 5(a)14 of R. Once this is attained. v. or for unfair competition.8 we will not disturb them. or the Intellectual Property Code (hereinafter the "IP Code"). Universal Rubber Products. even if we consider and accept as pure questions of law the issues raised in this petition.15 Besides. It is petitioners’ posture. For. the owner can obtain legal redress. both of which provide that the fame of a trademark may be acquired through promotion or advertising . 166. symbol.

mandates actual use of the marks and/or emblems in local commerce and trade before they may be registered and ownership thereof acquired. Inc. the Court held that where the complainant is a national of a Paris Conventionadhering country. As such. can be taken judicial notice of in infringement suits. like respondent. For. Their being nationals of member-countries of the Paris Union does not alter the legal situation. being considered part of Philippine municipal laws. by the CA. however. Corporation v.e. ownership and the exclusive right to use the registered marks. together with the Philippines. 23 As well. 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. v. are. and rightly so. Farbenfabriken Bayer Aktiengesellschaft. Switzerland and Canada. 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. what petitioners now harp about is their entitlement to protection on the strength of registration of their trademarks in the Philippines. No. and enjoy the privileges that Philippine laws now grant or may hereafter grant to its nationals. 26 Hence. so it must be here.18 supra. No. Salvador. Court of Appeals. the petitioners cannot. that the appellate court qualified its holding with a statement. as amended.A. the registration of a trademark gives the registrant. to show proof that. advantages denied non-registrants or ordinary users. But while petitioners enjoy the statutory presumptions arising from such registration. its allegation that it is suing under said Section 21-A would suffice.22 however. any protection accorded has to be made subject to the limitations of Philippine laws. However.A. Before discussing petitioners’ claimed entitlement to enforce trademark rights in the Philippines. In Leviton Industries v. 166 not being sufficient. Inc. their country grants substantially similar rights and privileges to Filipino citizens pursuant to Section 21-A 20 of R. unless alleged in the complaint. v. The Court of Appeals and Fortune Tobacco Corporation. No. True. therefore. Considering that R. 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.A. the Philippines’ adherence to the Paris Convention 24 effectively obligates the country to honor and enforce its provisions25 as regards the protection of industrial property of foreign nationals in this country. Intermediate Appellate Court. petitioners are still foreign corporations. No. In Emerald Garment Mfg. a mere allegation that the suit is being pursued under Section 21-A of R. they may not successfully sue on the basis alone of their respective certificates of registration of trademarks. 30 the Court reiterated its rulings in Sterling Products International. because the reciprocal agreement between the two countries is embodied and supplied by the Paris Convention which. 166. such as petitioners.with no explicit requirement of actual use in local trade or commerce. In a subsequent case.. Court of Appeals and Fortune Tobacco Corporation33 on the importance of actual commercial use of a trademark in the Philippines notwithstanding the Paris Convention: . Admittedly.32 and Philip Morris v. the United States.31 Kabushi Kaisha Isetan v. namely. the fact that their respective home countries. Thus clarified.27 foreign nationals must still observe and comply with the conditions imposed by Philippine law on its nationals. entitled Philip Morris. 91332. as to the validity of the registration. following G..R. No. they ought.17 that such right to sue does not necessarily mean protection of their registered marks in the absence of actual use in the Philippines. on top of Philippine registration. would justify dismissal thereof.R. It ought to be pointed out. as a condition to availment of the rights and privileges vis-à-vis their trademarks in this country.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. et al. As we ruled in G. dispense with the element of actual use. 166. specifically Sections 228 and 2-A29 thereof. 91332.19 i. it must be emphasized that their standing to sue in Philippine courts had been recognized.

Inc. xxx xxx xxx In other words. 22. 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. Development Group of Companies.. There. evidence of actual sales of Converse rubber shoes. but does not perfect such right. 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. No. 35 Most importantly. we ruled that a foreign owner of a Philippine trademark. however. registration does not confer upon the registrant an absolute right to the registered mark. actual use thereof is the perfecting ingredient. v. to national legislative enactments.36 trademark is a creation of use and. the TRIPS Agreement was inexistent when the suit for infringement was filed. receipts and the testimony of a legitimate trader. (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. we stress that registration in the Philippines of trademarks does not ipso facto convey an absolute right or exclusive ownership thereof. 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. Inc. 21-A of the Trademark Law were sufficiently expounded upon and qualified in the recent case of Philip Morris. business in the Philippines. The IP Code. To borrow from Shangri-La International Hotel Management. 166. actual use is a pre-requisite to exclusive ownership.34 as what happened here when petitioners no less admitted not doing business in this country. registration is only an administrative confirmation of the existence of the right of ownership of the mark.A. Infringement. was presented in Converse.39 In the same vein. copy or colorable imitation of any registered mark or . and not so engaged in. Withal. that case being cast in a different factual milieu. defines what constitutes trademark infringement. Ltd. No. Court of Appeals: xxx xxx xxx Following universal acquiescence and comity. albeit not licensed to do. as follows: Sec. may actually earn reputation or goodwill for its goods in the country. Under the doctrine of incorporation as applied in most countries. Entitlement to protection of such trademark in the country is entirely a different matter. 166. Evidence of non-usage of the mark rebuts the presumption of trademark ownership. not superior. The certificate of registration merely constitutes prima facie evidence that the registrant is the owner of the registered mark. 1994. took effect only on January 1. the entity need not be actually using its trademark in commerce in the Philippines. as amended. This Court also finds the IP Code and the TRIPS Agreement to be inapplicable. therefore. vs.37 Petitioners’ reliance on Converse Rubber Corporation38 is quite misplaced. such as sales invoices. the registration of trademark cannot be deemed conclusive as to the actual use of such trademark in local commerce.A. As it were. Xxx. 1998 without a provision as to its retroactivity. al. With the foregoing perspective. the infringement complaint herein having been filed in August 1982 and tried under the aegis of R. This brings us to the principal issue of infringement. rules of International Law are given a standing equal. without the consent of the registrant. Contrary to what petitioners suggest. – Any person who shall use. Section 22 of R. et. as amended.The provisions of the 1965 Paris Convention … relied upon by private respondent and Sec. any reproduction. Such a foreign corporation may have the personality to file 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. what constitutes. 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. the Philippines having adhered thereto only on December 16. counterfeit. But unlike in the instant case.

in trademark infringement cases.A. or deceive purchasers. the local buying public could not possibly be confused or deceived that respondent’s "MARK" is the product of petitioners and/or originated from the U. unfamiliar in the first place with petitioners’ marks. to be confused. counterfeit. counterfeit. in finding that respondent’s goods cannot be mistaken as any of the three cigarette brands of the petitioners. Indeed. 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. And lest it be overlooked. There can thus be no occasion for the public in this country. To them. because a discerning eye would focus not only on the predominant word but also on the other features appearing in the labels. For one.40 But likelihood of confusion is a relative concept.S.48 the likelihood of confusion tantamount to infringement appears to be farfetched. jurisprudence has developed two tests: the dominancy test and the holistic test. The reason for the origin and/or ownership angle is that unless the words or devices do so point out the origin or ownership. receptacles or advertisements intended to be used upon or in connection with such goods. correctly relied on the holistic test. or reproduce. the CA then. Upon consideration of the foregoing in the light of the peculiarity of this case. and sometimes peculiar. or services. .. But. although the perceived offending word "MARK" is itself prominent in petitioners’ trademarks "MARK VII" and "MARK TEN. no actual commercial use of petitioners’ marks in local commerce was proven. as urged by the petitioners.tradename in connection with the sale. the holistic test45 entails a consideration of the entirety of the marks as applied to the products. 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. 41 In determining similarity and likelihood of confusion. precedents must be evaluated in the light of each particular case. copy of color ably imitate any such mark or tradename and apply such reproduction. in determining confusing similarity. more than in other kinds of litigation. nor can the public be deceived. Canada or Switzerland. Thus. offering for sale." does not point to the origin or ownership of the cigarettes to which they apply. or identity of such business. business." "MARK TEN" and "LARK" marks likewise for cigarettes. prints.46 the striking dissimilarities are significant enough to warn any purchaser that one is different from the other. Petitioners would insist on their thesis of infringement since respondent’s mark "MARK" for cigarettes is confusingly or deceptively similar with their duly registered "MARK VII." be it alone or in combination with the word "TEN" and the Roman numeral "VII. 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. Under this norm. copy or colorable imitation to labels. signs. thus constitutes infringement.44 In contrast. including the labels and packaging.49 Since the word "MARK. The "likelihood of confusion" is the gravamen of trademark infringement. packages. or advertising of any goods." the entire marking system should be considered as a whole and not dissected. the word "MARK" would likely cause confusion in the trade.47 This said. circumstances of each case being determinative of its existence. we rule against the likelihood of confusion resulting in infringement arising from the respondent’s use of the trademark "MARK" for its particular cigarette product. wrappers. 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. even if the dominancy test were to be used. the particular. as rightly concluded by the CA after comparing the trademarks involved in their entirety as they appear on the products. shall be liable to a civil action by the registrant for any or all of the remedies herein provided. 42 The dominancy test43 sets sight on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception. particularly as to the source or origin of respondent’s cigarettes. the person who first adopted them cannot be injured by any appropriation or imitation of them by others.

In fact. 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. v. concur with the CA when it held. the ordinary buyer thereof would be all too familiar with his brand and discriminating as well. 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." "MARK TEN" and "LARK" for cigarettes in the Philippines. a comparison of the trademarks as they appear on the goods is just one of the appreciable circumstances in determining likelihood of confusion. counterfeited. When we spoke of an "ordinary purchaser. actual use of trademarks in local commerce is. petitioners submit that respondent is liable for infringement. (b) is used by another person in connection with the sale. as amended. Accordingly. is such as to likely result in his confounding it with the original. are identical and/or confusingly similar with their duly registered trademarks "MARK VII. 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. 9-A54 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. thus." 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. petitioners’ judicial admission of not doing business in this country effectively belies any pretension to the contrary. and therefore to some extent familiar with.52 that the "ordinary purchaser" in this case means "one accustomed to buy. it being sufficient that he had registered the trademark or trade-name with the IP Office. having manufactured and sold cigarettes with the trademark "MARK" which. or identity of such business. Likewise. under said section. In Mighty Corporation v. 166. E & J Gallo Winery. As argued. Del Monte Corp. or such trademark is reproduced.A.For another. Tan Tiao Bok. as amended. This Court is not persuaded. copy or colorable imitation is applied to labels. but also Sections 2. business or services as to likely cause confusion or mistake or to deceive purchasers. 2-A. petitioners finally point to Section 22 of R. No. where we instructed to give due regard to the "ordinary purchaser. prints. packages. prior actual commercial use thereof had not been proven.lawphil." Pressing on with their contention respecting the commission of trademark infringement. 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. wrappers. No.A. receptacles or advertisements intended to be used upon or in connection with such goods. In fine. or advertising of any goods. offering for sale. 166. CA50 dealt with another. not a requisite before an aggrieved trademark owner can restrain the use of his trademark upon goods manufactured or dealt in by another. counterfeit. as it were." "MARK TEN" and "LARK". copied or colorably imitated by another person and such reproduction. the goods in question. citing a definition found in Dy Buncio v. while petitioners have registered the trademarks "MARK VII. As correctly found by the CA. signs. and (d) such act is done without the consent of the trademark registrant or assignee." the reference was not to the "completely unwary customer" but to the "ordinarily intelligent buyer" considering the type of product involved. As observed in several cases. affirming that of the trial court: . (c) the trademark is used for identical or similar goods.53 the Court held that the following constitute the elements of trademark infringement in accordance not only with Section 22 of R.net As already found herein. the general impression of the ordinary purchaser.

or in other countries but circulated locally" have been presented by the appellants during trial. admitting that their products are not being sold in the local market. We likewise see no cogent reason to disturb the trial court’s 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. PANGANIBAN Chief Justice Costs against the petitioners. Footnotes CANCIO C. GARCIA Associate Justice RENATO C.57 For lack of convincing proof on the part of the petitioners of actual use of their registered trademarks prior to respondent’s use of its mark and for petitioners’ failure to demonstrate confusing similarity between said trademarks. PUNO Associate Justice Chairperson ANGELINA SANDOVALGUTIERREZ Associate Justice ADOLFO S. the assailed decision and resolution of the Court of Appeals are AFFIRMED. either through actual sale of the product or through different forms of advertising. the surrounding circumstances and the equities of the situation call for this disposition. concurred in by the CA. Section 13 of the Constitution. the dismissal of their basic complaint for infringement and the concomitant plea for damages must be affirmed. and the Division Chairperson's Attestation. The law. This finding is supported by the fact that appellants admit in their Complaint that they are not doing business in the Philippines. As we said time and time again. PUNO Associate Justice Chairperson. REYNATO S. Accordingly.56 Last. hence. ARTEMIO V. with both the trial and appellate courts having peremptorily found allegations of infringement on the part of respondent to be without basis. AZCUNA Associate Justice ATTESTATION I attest that the conclusions in the above decision were reached in consultation before the case was assigned to the writer of the opinion of the Court’s Division. it is hereby certified that the conclusions in the above decision were reached in consultation before the case was assigned to the writer of the opinion of the Court. SO ORDERED. the petition is hereby DENIED.xxx the records are bereft of evidence to establish that the appellants’ [petitioners’] products are indeed well-known in the Philippines. we must reiterate that the issue of trademark infringement is factual. The appellants also were not able to show the length of time or the extent of the promotion or advertisement made to popularize their products in the Philippines. are final and binding on this Court. Second Division CERTIFICATION Pursuant to Article VIII. WHEREFORE. CORONA Asscociate Justice . but not least. WE CONCUR: REYNATO S. factual determinations of the trial court.

) and Mariano C. of the Phils. Requirements of the application. shall be recognized and protected in the same manner and to the same extent as are other property rights known to the law. No. or a servicemark not so appropriated by another. 10 11 Sec.. or the firm. 1. firm. February 9. 1999 ed. 99. corporation or association on whose behalf he makes the verification. citing Pilar Dev. [or] business xxx from the merchandise.A. at 36. CA. 146 SCRA 215. CA. October 26.R. to distinguish 13 SEC. et al. 1 2 Id. Pepsi-Cola Bottling Co. which is a party to an international convention or treaty relating to marks or tradenames on the repression of unfair competition to which the Philippines may be a party. domiciled in. 215. Id. at 228-296. 409 SCRA 33. heretofore or hereafter appropriated. at 10-19. the goods. – Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful business. 126627. 356 SCRA 207. . Ramos v. 19 SCRA 289. 38 of R.A. L-22533... No. IAC. at 33. business or services in connection with which the mark or trade-name is used and the mode or manner in which the mark is used in connection with such goods. pp. Regalado.Penned by Associate Justice Mercedes Gozo-Dadole (ret. Id. G. shall be entitled to the benefits and subject to the provisions of this Act . 37. xxx." . 108846. 1986.) and concurred in by Associate Justices Bennie Adefuin-Dela Cruz (ret. or have a bona fide or effective business or commercial establishment in any foreign country. No. servicemark. 5. and that the person making the application believes himself. No. The ownership or possession of a trademark. REMEDIAL LAW COMPENDIUM. Corp.R. and that to be best of his knowledge no person. 72283. v. G. Id. 203. trade names and servicemarks. 53 USPQ 323 [1942] cited in Societe Des Produits Nestle. x x x 15 "Tradenames of persons described in the first paragraph of this section shall be protected without the obligation of filing or registration (sic) whether or not they form parts of marks. 2001. trade name. 4 5 his merchandise. xxx. p. the date of the applicant’s first use of the mark or trade-name. 541. by actual use thereof in manufacture or trade.R. G. Rights of Foreign Registrants-Persons who are nationals of. business or services. 8 F. business or service of others. 166. del Castillo. 1967. 2-A. in business. 292. corporation or association has the right to use such mark or trade-name in commerce or business either in the identical form thereof or in such near resemblance thereto as might be calculated to deceive. D. 7 Smith Kline Beckman Corporation v. xxx. 6 Moomba Mining Exploration Co. how acquired. 12 Sec. Rollo. August 14. Ownership of trademarks.. may appropriate to his exclusive use a trademark. v. 317 SCRA 388. 9 Ibid. April 4.R. S. 3 CA Decision. 397. as in this section provided. – xxx Sec. to be the owner of the mark or trade-name sought to be registered. Vol. 112012. . 2003.S. 9-34. December 12. (a) Sworn statement of the applicant’s domicile and citizenship. a trade name. G. the date of the applicant’s first use of the mark or trade-name in commerce or business. No. that the mark or trade-name is in use in commerce or business. v. 316 U. 39. Court of Appeals. 14 CA Decision.

No. partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act. supra at pp. without prejudice to the rights specially provided by the present Convention. Consequently. trade names and servicemarks. 2-A. L-40163. v. 199. – Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful business. The Law on Trademark. 8293). And provided. June 19. Ownership of trademarks. 386-387. 209-210. 22 Agpalo. No. Nationals of each of the countries of the Union shall. 18 SEC. L-27906. 19 SECTION 21-A. tradenames. The underlying principle is Agpalo. 114 SCRA 420. further. provided they observe the conditions and formalities imposed upon nationals. 2. Inc. and such fact is officially certified. No. February 26.17 that foreign nationals should be given the same treatment in each of the member countries as that country makes available to its own citizens. (Superseded by Sec. partnerships or associations domiciled in the Philippines and by persons.A. et al. v.. CA. L-63796-97. IAC.. 147 SCRA 154. subject to any conditions and limitations stated therein. grants a similar privilege to corporate or juristic persons of the Philippines. v. to nationals. 1993.A.R. tradenames and service marks owned by persons. Any foreign corporation or juristic person to which a mark or trade-name has been registered or assigned under this Act may bring an action hereunder for infringement. Puma Sportschufabriken Rudolf Dassler. 1984. and of the registrant’s exclusive right to use the same xxx. pp. Philip Morris. corporations. 28 24 Sec. (As amended by R. at the time it brings complaint: Provided. 138 of R. No. No. Infringement and Unfair Competition. No. 27 Sec.. 2000 ed.R. That the country of which the said foreign corporation or juristic person is a citizen or in which it is domiciled. supra at p. et al. No. May 21. 1495] or the Corporation Law.R. the registrant’s ownership of the mark xxx.A certificate of registration of a mark or trade name shall be prima facie evidence of the validity of the registration.A. 8293 which took effect on January 1. Provided. 158 SCRA 233. 865). 1982. 20.A. 129 SCRA 373. G. Certificate of registration prima facie evidence of validity. (Superseded by Section 160 of R. corporations. or who renders any lawful 29 . 25 16 G. 1988. January 8. 224 SCRA 576. – Trademarks. See La Chemise Lacoste S. xxx. 75067. …. The Law on Trademark. 23 The Paris Convention is essentially a compact among the various member countries to accord in their own countries to citizens of the other contracting parties’ trademarks and other rights comparable to those accorded their own citizens by their domestic laws. 8293) 20 21 G.) Superseded by R. vs. S. Fernandez. 26 ART. and the same legal remedy against any infringement of their rights.A. convention or law. What are registrable..R. Infringement and Unfair Competition. 1987.A. 2. 595. by treaty. That said trademarks. how acquired. 1998. Fernandez. (La Chemise Lacoste. or may hereafter grant. K. July 16.G. they shall have the same protection as the latter. No. or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed. whether or not it has been licensed to do business in the Philippines under Act [No. enjoy in all the other countries of the Union the advantages that their respective laws now grant. That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines. G. . as regards the protection of industrial property.

34 Emerald Garment Mfg.V. 27 SCRA 1214. Inc. Big Mak Burger. supra at p. April 27. 51 Emerald Garment Mfg. v. 122 of R. supra. at p. v. L-32747. 417. Rollo. supra. 615. 133 SCRA 405. 618. November 15. Inc. v. March 31. 100098. 116 SCRA 336.) G. a trade name. et al. 506. 17 SCRA 128. 52 42 Phil. July 31. Corp. 143993. Trademarks and Tradenames. may appropriate to his exclusive use a trademark.R. et al. July 5.C. L-23035. v. 159938. 37 Supra note 32. No. 203 SCRA 583.R. v.A. April 30. No. 2004. trade name. No. 43 30 31 L-19906. Bristol Myers Co. No. 2004. 434 SCRA 473. 1966. business or service from the merchandise. G. July 14.R. 154342. Nut Industry Inc. 50 Supra at p. Van Dorp. Jur. supra at p. G. Corporation v. to distinguish his merchandise. 623. 2d. v. Perez. 47 36 G. L-21587. or a servicemark not so appropriated by another..R. also in Mighty Corporation v. 224 SCRA 437. 1991. 65 SCRA 575. 241 of IP Code.. No. CA. Gallo Winery. 1993. 619-621. supra at p. 181 SCRA 410. 771. 28-30. 1990. Converse Rubber Corp. Court of Appeals. servicemark. No. E & J 41 . CA. Court of Appeals. 434 SCRA 473. 1982. 5. 207.service in commerce.J. 251 SCRA 600.. v. 1969. Corp. 38 Supra note 16. Ltd. v. Inc. Applied in McDonald’s Corp. May 19. 45 46 35 See CA Decision.. heretofore or hereafter appropriated. et al. L. v. 55 SCRA 406. Inc. 1974. 32 G.. L.C. January 25. et al. 75420. 103543. 40 Emerald Garment Mfg. supra. August 18. 53 G. McDonald’s Corp. by actual use thereof in manufacture or trade. January 31. et al. Asia Brewery. 78325. shall be recognized and protected in the same manner and to the same extent as are other property rights known to the law.R. v. 2004..R. 190 (1921). 7 SCRA 768. December 29. September 29. p. 1984. Big Mak Burger. 437 SCRA 10. 48 49 74 Am. citing Esso Standard Eastern Inc. L-24075. N. business or service of others. CA. v. (Now Sec. Standard Brands.. 154342. 44 Applied in Emerald Garment Mfg. 33 Supra. Petitioners’ Complaint in the RTC. of Patents. Gabriel v. L17501. Universal Rubber Products. 39 Sec.. 1963. No. and in the service rendered. in business. 1995. Phil.. No. 1975. Inc. CA. July 14.. No. G. 2006. Del Monte Corp. Mead Johnson & Co. Rollo. CA. 42 Id. L-29971. 504. Inc. 496-497. Fruit of the Loom. Dir. Emerald Garment Mfg. The ownership or possession of a trademark. pp. Corporation v.R.R. 8293. G. Corporation v. Sec. as in this section provided. supra. August 31. CA.

March 6. 57 G. 55 56 Rollo. Equitable principles to govern proceedings. imitation or translation. Respondent. and acquiescence where applicable. estoppel. p.R.A. (As added by R. 132604. 179. may be considered and applied.R. – In opposition proceedings and in all other inter partes proceedings … under this Act. No. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any of such well-known mark or an imitation liable to create confusion therewith. vs. Sambar v. MACJOY FASTFOOD CORPORATION. 166115 February 2. 2002. No. G. 6bis provides: x x x the countries of the Union undertakes. 370. Petitioner. 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 the present Convention and used for identical or similar goods. 2007 McDONALD’S CORPORATION. either administratively if their legislation so permits. or at the request of an interested party.) 54 Art. . Levi Strauss & Co. No.Sec. 638. 378 SCRA 364. equitable principles of laches. liable to create confusion.. 9-A. to refuse or to cancel the registration and to prohibit the use of a trademark which constitutes a reproduction.

the Opposition to the registration of the mark MACJOY & DEVICE for use in fried chicken and chicken barbecue. chicken barbeque.. Financial and Human Resources Development Bureau for appropriate action in accordance with this Decision. Let the filewrapper of MACJOY subject matter of this case be sent to the Administrative. respondent MacJoy Fastfood Corporation. SP No. a corporation duly organized and existing under the laws of the State of Delaware. sandwiches. thus. tacos. with a copy to be furnished the Bureau of Trademarks for information and to update its record. thereat identified as Application Serial No.: In this petition for review on certiorari under Rule 45 of the Rules of Court." "BigMac. for the registration of the trademark "MACJOY & DEVICE" for fried chicken. . Likewise. 75274 of the herein Respondent-Applicant is REJECTED. J. now the Intellectual Property Office (IPO). to wit: 1. constituting a fraud upon the general public and further cause the dilution of the distinctiveness of petitioner’s registered and internationally recognized MCDONALD’S marks to its prejudice and irreparable damage. 75274. sandwiches. an application. and 2. SO ORDERED. spaghetti. SUSTAINED. 1998. the facts are as follows: On 14 March 1991. Petitioner McDonald’s Corporation. Respondent denied the aforementioned allegations of the petitioner and averred that it has used the mark "MACJOY" for the past many years in good faith and has spent considerable sums of money for said mark’s extensive promotion in tri-media. ratiocinating that the predominance of the letter "M. 57247. filed with the then Bureau of Patents. fries. sustained the petitioner’s opposition and rejected the respondent’s application. the petitioner alleged that the respondent’s use and adoption in bad faith of the "MACJOY & DEVICE" mark would falsely tend to suggest a connection or affiliation with petitioner’s restaurant services and food products. the IPO. and its marks "McDonalds. As culled from the record. i." and the prefixes "Mac/Mc" in both the "MACJOY" and the "MCDONALDS" marks lead to the conclusion that there is confusing similarity between them especially since both are used on almost the same products falling under classes 29 and 30 of the International Classification of Goods." "McDo." and "Mc. filed a verified Notice of Opposition3 against the respondent’s application claiming that the trademark "MACJOY & DEVICE" so resembles its corporate logo. Resolution dated 12 November 20042 denying the petitioner’s motion for reconsideration. herein petitioner McDonald’s Corporation seeks the reversal and setting aside of the following issuances of the Court of Appeals (CA) in CA-G. tacos. burgers.e. especially in Cebu City where it has been doing business long before the petitioner opened its outlet thereat sometime in 1992. palabok. viz: WHEREFORE. food and ingredients of food." McChicken. halo-halo.DECISION GARCIA. USA. The application and the opposition thereto was docketed as Inter Partes Case No. and that its use of said mark would not confuse affiliation with the petitioner’s restaurant services and food products because of the differences in the design and detail of the two (2) marks. otherwise known as the Golden Arches or "M" design. In a decision4 dated December 28. spaghetti." "MacFries." (hereinafter collectively known as the MCDONALD’S marks) such that when used on identical or related goods. burgers. the trademark applied for would confuse or deceive purchasers into believing that the goods originate from the same source or origin. Trademarks and Technology Transfer (BPTT). as it is hereby. a domestic corporation engaged in the sale of fast food products in Cebu City. and steaks is. halo-halo and steaks under classes 29 and 30 of the International Classification of Goods.R. fries." "McSnack. Decision dated 29 July 20041 reversing an earlier decision of the Intellectual Property Office (IPO) which rejected herein respondent MacJoy FastFood Corporation’s application for registration of the trademark "MACJOY & DEVICE". Application Serial No. palabok. Accordingly." "McSpaghetti. 3861.

" "Mc. 4. concept and appearance to the McDonald’s marks. 2. containers." and "Mac" appearing in both MCDONALD’S and MACJOY marks. The word "MacJoy" comes with the picture of a chicken head with cap and bowtie and wings sprouting on both sides. reversed and set aside the appealed IPO decision and order. whereat its appellate recourse was docketed as CA-G. yellow and black color combination. design. in view of the foregoing. 2004.In time. The IPO brushed aside and ignored the following irrefutable facts and circumstances showing differences between the marks of MACJOY and MCDONALD’S. Instead of taking into account these differences.) Petitioner promptly filed a motion for reconsideration. The façade of the respective stores of the parties are entirely different. spelling. the respondent went to the CA via a Petition for Review with prayer for Preliminary Injunction6 under Rule 43 of the Rules of Court. etc. 2000.R. the petitioner’s present recourse on the following grounds: I. in its herein assailed Decision7 dated July 29. 57247." IT FAILED TO CORRECTLY . The word "MacJoy" is written in round script while the word "McDonald’s" is written in single stroke gothic. They are. Finding no confusing similarity between the marks "MACJOY" and "MCDONALD’S. cups." (Words in brackets supplied. However." the CA.. size. brilliant and noticeable color scheme as that of its wrappers. The articles and trademarks employed and used by the [respondent] Macjoy Fastfood Corporation are so different and distinct as to preclude any probability or likelihood of confusion or deception on the part of the public to the injury of the trade or business of the [petitioner] McDonald’s Corporation. and with the mascot of "Ronald McDonald" being prominently displayed therein. judgment is hereby rendered by us REVERSING and SETTING ASIDE the Decision of the IPO dated 28 December 1998 and its Order dated 14 January 2000 and ORDERING the IPO to give due course to petitioner’s Application Serial No. and not merely the points of resemblance. THE COURT OF APPEALS ERRED IN RULING THAT RESPONDENT’S "MACJOY & DEVICE" MARK IS NOT CONFUSINGLY SIMILAR TO PETITIONER’S "McDONALD’S MARKS.) Hence. and absolutely without any picture of a chicken. while [petitioner’s] restaurant is in yellow and red colors. the CA denied the motion. SO ORDERED. Explains the CA in its decision: xxx. SP No. 3. The word "MacJoy" is set in deep pink and white color scheme while "McDonald’s" is written in red. 75274. while the word "McDonald’s" comes with an arches "M" in gold colors. as it further held: Whether a mark or label of a competitor resembles another is to be determined by an inspection of the points of difference and resemblance as a whole. Exhibits 1 and 1-A. in its similarly challenged Resolution8 of November 12. (Words in brackets supplied. the IPO unreasonably shrugged off these differences in the device. show that [respondent’s] restaurant is set also in the same bold. letters and marks in the trademark sought to be registered. 2004. the respondent moved for a reconsideration but the IPO denied the motion in its Order5 of January 14. it is clear that the IPO brushed aside and rendered useless the glaring and drastic differences and variations in style of the two trademarks and even decreed that these pronounced differences are "miniscule" and considered them to have been "overshadowed by the appearance of the predominant features" such as "M. as averred by the petitioner [now respondent]: 1. Therefrom. thus: WHEREFORE. The "Macjoy & Device" mark is dissimilar in color.

The petition is impressed with merit. Contrary to respondent’s claim. as amended. In any event. II. the respondent insists that the CA committed no reversible error in finding no confusing similarity between the trademarks in question. The prefix "Mc" and/or "Mac" is the dominant portion of both Petitioner’s McDonald’s Marks and the Respondent’s "Macjoy & Device" mark.14 . this being one of the recognized exceptions to Section 1. this Court will review them.APPLY THE DOMINANCY TEST WHICH HAS BEEN CONSISTENTLY APPLIED BY THIS HONORABLE COURT IN DETERMINING THE EXISTENCE OF CONFUSING SIMILARITY BETWEEN COMPETING MARKS. symbol. name. 11 Sheila Lehr was one of those authorized and empowered "to execute and deliver for and on behalf of [the petitioner] all documents as may be required in connection with x x x the protection and maintenance of any foreign patents. 2004. therefore. speculative. Republic Act (R. emblem. As can be gleaned from the petitioner’s Board of Director’s Resolution dated December 5. C. absurd. or device. and to do such other acts and things and to execute such other documents as may be necessary and appropriate to effect and carry out the intent of this resolution. the marks are confusingly similar under the Dominancy Test. because the person who signed the certification against forum shopping in behalf of the petitioner was not specifically authorized to do so. this Court is not the proper venue to consider factual issues as it is not a trier of facts." Indeed. but not limited to. Petitioner’s McDonald’s Marks are well-known and world-famous marks which must be protected under the Paris Convention. trademarks. because the petition does not present a reviewable issue as what it challenges are the factual findings of the CA. A. conjectural. and copyrights owned now or hereafter by [the petitioner]. THE COURT OF APPEALS ERRED IN RULING THAT THE DECISION OF THE IPO DATED 28 DECEMBER 1998 AND ITS ORDER DATED 14 JANUARY 2000 WERE NOT BASED ON SUBSTANTIAL EVIDENCE. 13 as here. 166. Rule 45 of the Rules of Court. and second. including. True. was specifically authorized to sign on behalf of the petitioner the Verification and Certification10 attached to the As regards the respondent’s argument that the petition raises only questions of fact which are not proper in a petition for review. tainted with grave abuse of discretion.12 Nevertheless. or contrary to the findings culled by the court of origin. Considering that the person who executed and signed the certification against forum shopping has the authority to do so. the petitioner’s Managing Counsel. Sheila Lehr. In its Comment. trade-names. is not procedurally defective. the petition.) No. or any combination thereof adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured. petition. suffice it to say that the contradictory findings of the IPO and the CA constrain us to give due course to the petition. The old Trademark Law.9 the respondent asserts that the petition should be dismissed outright for being procedurally defective: first. the afore-stated authority given to Lehr necessarily includes the authority to execute and sign the mandatorily required certification of non-forum shopping to support the instant petition for review which stemmed from the "opposition proceedings" lodged by the petitioner before the IPO. sold. as embodied in the Certificate of the Assistant Secretary dated December 21. The McDonald’s Marks belong to a well-known and established "family of marks" distinguished by the use of the prefix "Mc" and/or "Mac" and the corporate "M" logo design. As such. 2002. B. x x x documents required to institute opposition or cancellation proceedings against conflicting trademarks. or dealt in by others.A. conflicting. when the factual findings of the appellate court are mistaken. defines a "trademark" as any distinctive word. sign.

We agree. 15 The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. Registration of trademarks. the IPO used the dominancy test in concluding that there was confusing similarity between the two (2) trademarks in question as it took note of the appearance of the predominant features "M". the two marks reflect a distinct and disparate visual impression that negates any possible confusing similarity in the mind of the buying public. the Court has consistently . the IPO should have taken into consideration the entirety of the two marks instead of simply fixing its gaze on the single letter "M" or on the combinations "Mc" or "Mac". The owner of the trade-mark. In reversing the conclusion reached by the IPO.e. the prefix "Mc" will appear to be the only similarity in the two completely different marks.16 In contrast. When pitted against each other. xxx xxx xxx "Mc" and/or "Mac" in both the marks.net In trademark cases. 19 In such cases.18 1awphi1. spelling.. to cause confusion or mistake or to deceive purchasers. Taking into account such paramount factors as color. trade-names and servicemarks on the principal register. We agree with the [respondent] that it is entirely unwarranted for the IPO to consider the prefix "Mac" as the predominant feature and the rest of the designs in [respondent’s] mark as details. precedent must be studied in the light of the facts of the particular case. concept. a comparison of the words is not the only determinant factor. the registration of a trademark is subject to the provisions of Section 4 thereof. the CA. sound. the issue here is whether there is a confusing similarity between the MCDONALD’S marks of the petitioner and the respondent’s "MACJOY & DEVICE" trademark when applied to Classes 29 and 30 of the International Classification of Goods. while seemingly applying the dominancy test. i. and it is the prefix "Mc" that would thus appear as the miniscule detail. the dominancy test being the one more suitable. 20 That is the reason why in trademark cases. business or services of others shall have the right to register the same on the principal register. The appellate court ruled in this wise: Applying the Dominancy test to the present case. In recent cases with a similar factual milieu as here. 21 Here. sizes and audio and visual effects. (Words in brackets supplied. – There is hereby established a register of trademarks. in fact actually applied the holistic test.17 Under the latter test. trade-name or service-mark used to distinguish his goods. jurisprudential precedents should be applied only to a case if they are specifically in point.) Essentially.Under the same law. in determining confusing similarity. we believe that the holistic test is not the one applicable in this case. tradenames and service-marks which shall be known as the principal register. no other similarity exists in the subject marks. food and ingredients of food. particularly in ascertaining whether one trademark is confusingly similar to another. jurisprudence has developed two tests. designs. 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. A mere cursory look of the subject marks will reveal that. the holistic test requires the court to consider the entirety of the marks as applied to the products. no set rules can be deduced because each case must be decided on its merits. paragraph (d) of which is pertinent to this case. even more than in any other litigation. While we agree with the CA’s detailed enumeration of differences between the two (2) competing trademarks herein involved. The provision reads: Section 4. the dominancy test and the holistic test. including the labels and packaging. business or services of the applicant. Petitioner now vigorously points out that the dominancy test should be the one applied in this case. as to be likely. In determining similarity and likelihood of confusion. when applied to or used in connection with the goods. save for the letters "M" and "c".

applying the dominancy test. in Societe Des Produits Nestle. in an archlike. or an affiliate." "McSpaghetti. The totality or holistic test only relies on visual comparisons 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. "Mc/Mac" prefixes shown in both marks.A. namely." which visually and aurally catches the attention of the consuming public. Such that the common awareness or perception of customers that the trademarks McDonalds mark and MACJOY & DEVICE are one and the same. the petitioner’s trademark registration for the MCDONALD’S marks in the Philippines covers goods which are similar if not identical to those covered by the respondent’s application. LC Big Mak Burger. the respondent’s trademark application for the "MACJOY & DEVICE" trademark covers goods under Classes 29 and 30 of the International Classification of Goods. concluded that the use by the respondent therein of the word "MASTER" for its coffee product "FLAVOR MASTER" was likely to cause confusion with therein petitioner’s coffee products’ "MASTER ROAST" and "MASTER BLEND" and further ruled: xxx. burgers. The dominancy test considers the dominant features in the competing marks in determining whether they are confusingly similar. . the predominant features such as the "M. has relied on the dominancy test rather than the holistic test. courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark. capitalized and stylized manner. etc. The first letter "M" in both marks puts emphasis on the prefixes "Mc" and/or "Mac" by the similar way in which they are depicted i. chicken barbeque. 23 a case where the trademark "Big Mak" was found to be confusingly similar with the "Big Mac" mark of the herein the petitioner. giving little weight to factors like prices. To begin with. disregarding minor differences. the Court finds that herein petitioner’s "MCDONALD’S" and respondent’s "MACJOY" marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks. both marks use the corporate "M" design logo and the prefixes "Mc" and/or "Mac" as dominant features." and "Mac" appearing in both McDonald’s marks and the MACJOY & DEVICE" easily attract the attention of would-be customers. or under the sponsorship of the other is not far-fetched." "Mc." "McDo. These minuscule variations are overshadowed by the appearance of the predominant features mentioned hereinabove. v." in contrast to the arch-like "M" and the one-styled gothic letters in McDonald’s marks are of no moment. quality.e. 25 For sure." "MacFries. both trademarks are used in the sale of fastfood products.used and applied the dominancy test in determining confusing similarity or likelihood of confusion between competing trademarks. it is the prefix "Mc. Thus. sales outlets and market segments. Verily." "Big Mac" and the rest of the MCDONALD’S marks which all use the prefixes Mc and/or Mac. we concur with the IPO’s findings that: In the case at bar. The differences and variations in styles as the device depicting a head of chicken with cap and bowtie and wings sprouting on both sides of the chicken head.22 Notably. Indisputably. 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. Even non-regular customers of their fastfood restaurants would readily notice the predominance of the "M" design. fried chicken. in McDonalds Corp. Inc." and the stylistic letters in "MACJOY & DEVICE. spaghetti. xxx. Moreover. Besides and most importantly. Courts will consider more the aural and visual impressions created by the marks in the public mind. aural. the heart-shaped "M. Under the dominancy test. S. Likewise.. connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the marketplace." an abbreviation of "Mac. fries. the word "MACJOY" attracts attention the same way as did "McDonalds. CA24 the Court. v. the Court explicitly held: This Court. Applying the dominancy test to the instant case.

its president had to choose and adopt a mark with the prefix "Mac" as the dominant feature thereof. as well as to supposedly bring good luck to Respondent’s business. province. A mark is valid if it is distinctive and hence not barred from registration under the Trademark Law. the corporate logo which is the "M" or the golden arches design and the "McDonald’s" with the "M" or golden arches design both in 30 June 1977 30 . 1991 albeit the date of first use in the Philippines was December 7. one cannot help but wonder why out of all the possible letters or combinations of letters available to Respondent.e. In this case.Thus." and prefixes "Mac/Mc" found in both marks. are adherent-members. as amended. trade-name and service mark under the Trademark Law33 pertains to the territorial jurisdiction of the Philippines and is not only confined to a certain region.31 On the other hand. is downright unmeritorious.. while the first McDonald’s outlet of the petitioner thereat was opened only in 1992. it is not disputed that the respondent’s application for registration of its trademark "MACJOY & DEVICE" was filed only on March 14. but that is beside the point. the United States. and so on and so forth. Likewise wanting in merit is the respondent’s claim that the petitioner cannot acquire ownership of the word "Mac" because it is a personal name which may not be monopolized as a trademark as against others of the same name or surname.e." 34 By reason of the respondent’s implausible and insufficient explanation as to how and why out of the many choices of words it could have used for its trade-name and/or trademark. i. city or barangay. For the requirement of "actual use in commerce x x x in the Philippines" before one may register a trademark.26 Pursuant to Section 3727 of R. Secondly. A more plausible explanation perhaps is that the niece of Respondent’s president was fond of the food products and services of the Respondent. . as well as the provision regarding the protection of industrial property of foreign nationals in this country as embodied in the Paris Convention28 under which the Philippines and the petitioner’s domicile. the inevitable conclusion is there is confusing similarity between the trademarks Mc Donald’s marks and "MACJOY AND DEVICE" especially considering the fact that both marks are being used on almost the same products falling under Classes 29 and 30 of the International Classification of Goods i. Even assuming that the word "MacJoy" was chosen as a term of endearment. As stated earlier.A. In the words of the petitioner: We rule for the petitioner. "McDonald’s" in 04 October. once registered. with the predominance of the letter "M. is undoubtedly beyond question. as between the parties. it cannot be denied that there is absolutely no connection between the name "Scarlett Yu Carcel" and "MacJoy" to merit the coinage of the latter word. it is clear that the petitioner has duly established its ownership of the mark/s. 1987 at Cebu City First of all. it chose the word "MACJOY. However. Respondent’s contention that it was the first user of the mark in the Philippines having used "MACJOY & DEVICE" on its restaurant business and food products since December. the respondent failed to overcome such presumption. 197129 . once a trademark has been registered. as applied to petitioner’s restaurant business and food products. has the rightful claim of ownership over the said marks. With the existence of confusing similarity between the subject trademarks. the validity of the mark is prima facie presumed." the only logical conclusion deducible therefrom is that the respondent would want to ride high on the established reputation and goodwill of the MCDONALD’s marks. We agree with the observations of the petitioner regarding the respondent’s explanation that the word "MACJOY" is based on the name of its president’s niece. at best. Scarlett Yu Carcell. No. fondness and affection for a certain Scarlett Yu Carcel. Respondent failed to present evidence to support the foregoing claim which. from the evidence on record. the petitioner was able to register its MCDONALD’S marks successively. the resulting issue to be resolved is who. is a mere self-serving assertion. 1987. Food and ingredients of food. which. allegedly the niece of Respondent’s president. 166.32 Hence. not only the mark’s validity but also the registrant’s ownership thereof is prima facie presumed.

Dicdican and concurred in by Associate Justices Elvi John S. Section 13 of the Constitution. PUNO Chief Justice Footnotes Penned by Associate Justice Isaias P. SO ORDERED. this not only to avoid confusion on the part of the public.R.. of Patents and Villapanta:36 Pursuant to Article VIII. SP NO. it is hereby certified that the conclusions in the above decision had been reached in consultation before the case was assigned to the writer of the opinion of the Court’s Division. REYNATO S. No pronouncement as to costs. IAC. 2 Id. Jr. 1 WHEREFORE. v. at 77-81. 8 Supra note 2. PUNO Chief Justice Chairperson ANGELINA SANDOVALGUTIERREZ Associate Justice RENATO C. 209-219. Dir. at 256-257. 3 Id. but also to protect an already used and registered trademark and an established goodwill. the instant petition is GRANTED. at 74 & 76 Moomba Mining Exploration Co. 291-306. the application should be rejected and dismissed outright. 57247. GARCIA Associate Justice 6 Id. When one applies for the registration of a trademark or label which is almost the same or very closely resembles one already used and registered by another. G." As this Court ruled in Faberge Inc. AZCUNA Associate Justice CERTIFICATION 10 Id. at 139-142. at 144-159. CORONA Asscociate Justice ADOLFO S. CA. 12 . the assailed Decision and Resolution of the Court of Appeals in CA-G. No. Rollo. October 26. the IPO was correct in rejecting and denying the respondent’s application for registration of the trademark "MACJOY & DEVICE. 397. 5 Id. 9 Rollo. REYNATO S. Accordingly. 108846. even without any opposition on the part of the owner and user of a previously registered label or trademark. 3861 is REINSTATED.Thus. v.R. 317 SCRA 38. 99. are REVERSED and SET ASIDE and the Decision of the Intellectual Property Office in Inter Partes Case No. v. pp. WE CONCUR: 7 Supra note 1. 35 citing Chuanchow Soy & Canning Co. at 72. Asuncion and Ramon Bato. 4 Id. 11 Id. CANCIO C. at 114-122. pp.

and of the registrant’s exclusive right to use the same in connection with the goods. In addition.C. Inc. Inc. CA. v. 26 16 17 Id. domiciled in. 506.. 297 and "MCDONALDS" marks. 126627. S. 2. L-23035.. 615-616. July 31. The underlying principle is that foreign nationals should be given the same treatment in each of the member countries as that country makes available to its own citizens. Certificate of registration prima facie evidence of validity. or have a bona fide or effective business or commercial establishment in any foreign country. G. CA. 37. Asia Brewery. No.R. v. L.A certificate of registration of a mark or trade name shall be prima facie evidence of the validity of the registration. No. L-27906.A. No. as regards the protection of industrial property. 13 14 Section 38. G. which is a party to an international convention or treaty relating to marks or tradenames on the repression of unfair competition to which the Philippines may be a party. and the same legal 28 . . G. Standard Brands. 39. 218. 154342.A. at p. v. G." The Paris Convention is essentially a compact among the various member countries to accord in their own countries to citizens of the other contracting parties’ trademarks and other rights comparable to those accorded their own citizens by their domestic laws. August 14. 15 McDonald’s Corporation v. Phil. December 29. No. 22 23 Supra note 14. 1995. 21 Id.R. 65 SCRA 575. 2001. Emerald Garment Manufacturing Corporation v. or may hereafter grant. subject to any conditions and limitations stated therein. Sec. G.R.A. shall be entitled to the benefits and subject to the provisions of this Act . .R.. 224 SCRA 437.. Big Mak Burger. they shall have the same protection as the latter. 24 Supra note 23. 166. Societe Des Produits Nestle. Universal Rubber Products. 103543. supra note 14. at 32. Rights of Foreign Registrants-Persons who are nationals of. business or services specified in the certificate. pp. 112012. July 5. the registrant’s ownership of the mark or trade name. Converse Rubber Corp. 20.C. R. 89 & 91. 25 "Tradenames of persons described in the first paragraph of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks. July 14. G. Rollo p. 434 SCRA 473. CA.R. 2003. v. SEC. . Inc. No. 100098. as amended Mighty Corporation v. April 4.C. supra McDonald’s Corporation v L. L. without prejudice to the rights specially provided by the present Convention. S. x x x 27 19 20 Id.R. supra. v. enjoy in all the other countries of the Union the advantages that their respective laws now grant. 251 SCRA 600. CA. 1993. 409 SCRA 33. 86. Big Mak Burger Inc. Applied in McDonald’s Corp. Inc. GR No. January 8. Consequently. supra. Nationals of each of the countries of the Union shall. Inc. 18 Societe Des Produits Nestle. 1987. to nationals. No. 1975. 217.. Big Mak Burger. Rollo. the Convention sought to create uniformity in certain respects by obligating each nation to assure to nationals of countries of the Union an effective protection against unfair competition. 356 SCRA 207. Article 2 of the Paris Convention provides that: ART. Nut Industry Inc. v. "MacJoy" mark.Smith Kline Beckman Corporation v. Court of Appeals. 147 SCRA 154. 2004. E & J Gallo Winery.

55-56. Registration No. 865).A. IPO Decision. corporations. 120-121. tradenames.R. 48491. and such fact is officially certified. 36 G. 1983 for the mark "McChicken". 39988. 2007 . 1985. Rollo. What are registrable. dated December 02. tradenames and service marks owned by persons. 86 30 Id. Id. 32009. for the trademark "Mc" (Id. 1991. (As amended by R. 166115 February 2. at 89 & 91 Registration No. dated June 25. 71189. for the mark "McDonald’s with "corporate logo"arches design. Id. provided they observe the conditions and formalities imposed upon nationals. as amended. 51789. Id. 1991. G. dated June 24. No. 31966. 1988.A. Registration No. dated July 18. by the government of the foreign country to the Government of the Republic of the Philippines. 1990 for the service mark "McSnack" Id. No. Provided. Registration No. dated June 24. 833. Registration No. at 93. That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines. Id. No. for the servicemark "McDo" . 45583. 35 G. November 4. at 99. 108 Phil. Registration No. further. 106. 1983 for the trademark "Big Mac" and Circle Design Rollo. Registration No. That said trademarks. partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act. provides: Sec. 1985 for the mark "Big Mac". or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed. at 97. at 101. at 100. at 94. Registration No. 29 Rollo. Id. 1988 for the mark "MacFries". 2. p. L-13947. p. dated March 06. And provided. Registration No. – Trademarks. Id. 31 32 Section 2 of R. partnerships or associations domiciled in the Philippines and by persons. at 107). 1992. 33 34 Rollo. with a certified true copy of the foreign law translated into the English language. pp. at 105. dated July 24. 34065.remedy against any infringement of their rights. No. for the mark "McSpaghetti".R.R. pp. 166. 34065. 836. 50987. dated July 14. dated July 14. corporations.

" McChicken. USA. Respondent denied the aforementioned allegations of the petitioner and averred that it has used the mark "MACJOY" for the past many years in good faith and has spent considerable sums of money for said mark’s extensive promotion in tri-media. food and ingredients of food. viz: WHEREFORE. halo-halo. tacos. sustained the petitioner’s opposition and rejected the respondent’s application. thus. Accordingly." "BigMac. thereat identified as Application Serial No. as it is hereby. with a copy to be furnished the Bureau of Trademarks for information and to update its record. respondent MacJoy Fastfood Corporation. constituting a fraud upon the general public and further cause the dilution of the distinctiveness of petitioner’s registered and internationally recognized MCDONALD’S marks to its prejudice and irreparable damage. 75274. and its marks "McDonalds. MACJOY FASTFOOD CORPORATION.e. fries." "McSpaghetti. SP No. now the Intellectual Property Office (IPO). Trademarks and Technology Transfer (BPTT). and steaks is. the trademark applied for would confuse or deceive purchasers into believing that the goods originate from the same source or origin. . palabok. 57247. chicken barbeque. J. otherwise known as the Golden Arches or "M" design.R. Let the filewrapper of MACJOY subject matter of this case be sent to the Administrative. As culled from the record. and that its use of said mark would not confuse affiliation with the petitioner’s restaurant services and food products because of the differences in the design and detail of the two (2) marks." and the prefixes "Mac/Mc" in both the "MACJOY" and the "MCDONALDS" marks lead to the conclusion that there is confusing similarity between them especially since both are used on almost the same products falling under classes 29 and 30 of the International Classification of Goods. halo-halo and steaks under classes 29 and 30 of the International Classification of Goods. fries. to wit: 1. the facts are as follows: On 14 March 1991. 1998. sandwiches. burgers." "McDo. a domestic corporation engaged in the sale of fast food products in Cebu City. an application. Petitioner. SUSTAINED. the petitioner alleged that the respondent’s use and adoption in bad faith of the "MACJOY & DEVICE" mark would falsely tend to suggest a connection or affiliation with petitioner’s restaurant services and food products. Decision dated 29 July 20041 reversing an earlier decision of the Intellectual Property Office (IPO) which rejected herein respondent MacJoy FastFood Corporation’s application for registration of the trademark "MACJOY & DEVICE". burgers." (hereinafter collectively known as the MCDONALD’S marks) such that when used on identical or related goods. and 2. Financial and Human Resources Development Bureau for appropriate action in accordance with this Decision. sandwiches. filed with the then Bureau of Patents." and "Mc. vs. 3861. a corporation duly organized and existing under the laws of the State of Delaware. Petitioner McDonald’s Corporation. herein petitioner McDonald’s Corporation seeks the reversal and setting aside of the following issuances of the Court of Appeals (CA) in CA-G. The application and the opposition thereto was docketed as Inter Partes Case No." "McSnack.McDONALD’S CORPORATION. Application Serial No. the IPO.: In this petition for review on certiorari under Rule 45 of the Rules of Court. In a decision4 dated December 28. i. tacos." "MacFries. spaghetti. Likewise. especially in Cebu City where it has been doing business long before the petitioner opened its outlet thereat sometime in 1992. spaghetti. Respondent. DECISION GARCIA. 75274 of the herein Respondent-Applicant is REJECTED. for the registration of the trademark "MACJOY & DEVICE" for fried chicken. the Opposition to the registration of the mark MACJOY & DEVICE for use in fried chicken and chicken barbecue.. filed a verified Notice of Opposition3 against the respondent’s application claiming that the trademark "MACJOY & DEVICE" so resembles its corporate logo. Resolution dated 12 November 20042 denying the petitioner’s motion for reconsideration. ratiocinating that the predominance of the letter "M. palabok.

judgment is hereby rendered by us REVERSING and SETTING ASIDE the Decision of the IPO dated 28 December 1998 and its Order dated 14 January 2000 and ORDERING the IPO to give due course to petitioner’s Application Serial No. 2004. while the word "McDonald’s" comes with an arches "M" in gold colors. 4. The word "MacJoy" is written in round script while the word "McDonald’s" is written in single stroke gothic. whereat its appellate recourse was docketed as CA-G. in its herein assailed Decision7 dated July 29. SO ORDERED.R. 2004. as averred by the petitioner [now respondent]: 1. as it further held: Whether a mark or label of a competitor resembles another is to be determined by an inspection of the points of difference and resemblance as a whole. design. reversed and set aside the appealed IPO decision and order. The word "MacJoy" comes with the picture of a chicken head with cap and bowtie and wings sprouting on both sides. Explains the CA in its decision: xxx. Therefrom. size. The IPO brushed aside and ignored the following irrefutable facts and circumstances showing differences between the marks of MACJOY and MCDONALD’S. etc. containers. the respondent moved for a reconsideration but the IPO denied the motion in its Order5 of January 14. brilliant and noticeable color scheme as that of its wrappers." IT FAILED TO CORRECTLY . The "Macjoy & Device" mark is dissimilar in color. and absolutely without any picture of a chicken." (Words in brackets supplied. concept and appearance to the McDonald’s marks. 2. Finding no confusing similarity between the marks "MACJOY" and "MCDONALD’S. SP No. in its similarly challenged Resolution8 of November 12. The word "MacJoy" is set in deep pink and white color scheme while "McDonald’s" is written in red. letters and marks in the trademark sought to be registered. the CA denied the motion. 75274. In time..) Petitioner promptly filed a motion for reconsideration. thus: WHEREFORE.) Hence. show that [respondent’s] restaurant is set also in the same bold. and not merely the points of resemblance. in view of the foregoing. while [petitioner’s] restaurant is in yellow and red colors. 57247. the respondent went to the CA via a Petition for Review with prayer for Preliminary Injunction6 under Rule 43 of the Rules of Court. They are. The articles and trademarks employed and used by the [respondent] Macjoy Fastfood Corporation are so different and distinct as to preclude any probability or likelihood of confusion or deception on the part of the public to the injury of the trade or business of the [petitioner] McDonald’s Corporation. Exhibits 1 and 1-A. (Words in brackets supplied. the IPO unreasonably shrugged off these differences in the device. The façade of the respective stores of the parties are entirely different. 3. the petitioner’s present recourse on the following grounds: I. yellow and black color combination. However. and with the mascot of "Ronald McDonald" being prominently displayed therein. it is clear that the IPO brushed aside and rendered useless the glaring and drastic differences and variations in style of the two trademarks and even decreed that these pronounced differences are "miniscule" and considered them to have been "overshadowed by the appearance of the predominant features" such as "M. THE COURT OF APPEALS ERRED IN RULING THAT RESPONDENT’S "MACJOY & DEVICE" MARK IS NOT CONFUSINGLY SIMILAR TO PETITIONER’S "McDONALD’S MARKS.SO ORDERED." and "Mac" appearing in both MCDONALD’S and MACJOY marks. Instead of taking into account these differences. cups. 2000. spelling." the CA." "Mc.

and copyrights owned now or hereafter by [the petitioner]. emblem. the petition. absurd. or contrary to the findings culled by the court of origin. B. trademarks.9 the respondent asserts that the petition should be dismissed outright for being procedurally defective: first. 2004. as embodied in the Certificate of the Assistant Secretary dated December 21. Petitioner’s McDonald’s Marks are well-known and world-famous marks which must be protected under the Paris Convention. As can be gleaned from the petitioner’s Board of Director’s Resolution dated December 5. Rule 45 of the Rules of Court. the respondent insists that the CA committed no reversible error in finding no confusing similarity between the trademarks in question. because the petition does not present a reviewable issue as what it challenges are the factual findings of the CA. but not limited to. The old Trademark Law. Republic Act (R.) No. Considering that the person who executed and signed the certification against forum shopping has the authority to do so. A. conflicting. and second. was specifically authorized to sign on behalf of the petitioner the Verification and Certification10 attached to the As regards the respondent’s argument that the petition raises only questions of fact which are not proper in a petition for review. 13 as here. the marks are confusingly similar under the Dominancy Test. THE COURT OF APPEALS ERRED IN RULING THAT THE DECISION OF THE IPO DATED 28 DECEMBER 1998 AND ITS ORDER DATED 14 JANUARY 2000 WERE NOT BASED ON SUBSTANTIAL EVIDENCE. or any combination thereof adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured.14 . The petition is impressed with merit. the afore-stated authority given to Lehr necessarily includes the authority to execute and sign the mandatorily required certification of non-forum shopping to support the instant petition for review which stemmed from the "opposition proceedings" lodged by the petitioner before the IPO. sold. when the factual findings of the appellate court are mistaken." Indeed. Sheila Lehr. or device.APPLY THE DOMINANCY TEST WHICH HAS BEEN CONSISTENTLY APPLIED BY THIS HONORABLE COURT IN DETERMINING THE EXISTENCE OF CONFUSING SIMILARITY BETWEEN COMPETING MARKS. suffice it to say that the contradictory findings of the IPO and the CA constrain us to give due course to the petition.A. petition. the petitioner’s Managing Counsel. this being one of the recognized exceptions to Section 1. In any event. trade-names. II. is not procedurally defective. As such. sign. including. The prefix "Mc" and/or "Mac" is the dominant portion of both Petitioner’s McDonald’s Marks and the Respondent’s "Macjoy & Device" mark. as amended. because the person who signed the certification against forum shopping in behalf of the petitioner was not specifically authorized to do so. Contrary to respondent’s claim. 11 Sheila Lehr was one of those authorized and empowered "to execute and deliver for and on behalf of [the petitioner] all documents as may be required in connection with x x x the protection and maintenance of any foreign patents. therefore. 166. conjectural. 2002. or dealt in by others. name. The McDonald’s Marks belong to a well-known and established "family of marks" distinguished by the use of the prefix "Mc" and/or "Mac" and the corporate "M" logo design. symbol. this Court is not the proper venue to consider factual issues as it is not a trier of facts. C. and to do such other acts and things and to execute such other documents as may be necessary and appropriate to effect and carry out the intent of this resolution. True. tainted with grave abuse of discretion. this Court will review them.12 Nevertheless. In its Comment. x x x documents required to institute opposition or cancellation proceedings against conflicting trademarks. defines a "trademark" as any distinctive word. speculative.

(Words in brackets supplied. in fact actually applied the holistic test. trade-name or service-mark used to distinguish his goods. precedent must be studied in the light of the facts of the particular case. Petitioner now vigorously points out that the dominancy test should be the one applied in this case. to cause confusion or mistake or to deceive purchasers. concept. the holistic test requires the court to consider the entirety of the marks as applied to the products. 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. Taking into account such paramount factors as color. sizes and audio and visual effects. food and ingredients of food. xxx xxx xxx "Mc" and/or "Mac" in both the marks. When pitted against each other. particularly in ascertaining whether one trademark is confusingly similar to another. business or services of the applicant. A mere cursory look of the subject marks will reveal that. as to be likely. even more than in any other litigation.18 1awphi1. the two marks reflect a distinct and disparate visual impression that negates any possible confusing similarity in the mind of the buying public. In recent cases with a similar factual milieu as here.Under the same law. designs. 20 That is the reason why in trademark cases. tradenames and service-marks which shall be known as the principal register. save for the letters "M" and "c". business or services of others shall have the right to register the same on the principal register. i. sound.17 Under the latter test. the issue here is whether there is a confusing similarity between the MCDONALD’S marks of the petitioner and the respondent’s "MACJOY & DEVICE" trademark when applied to Classes 29 and 30 of the International Classification of Goods. the IPO used the dominancy test in concluding that there was confusing similarity between the two (2) trademarks in question as it took note of the appearance of the predominant features "M".e. the prefix "Mc" will appear to be the only similarity in the two completely different marks. and it is the prefix "Mc" that would thus appear as the miniscule detail. the dominancy test and the holistic test. the CA. the Court has consistently . including the labels and packaging. the registration of a trademark is subject to the provisions of Section 4 thereof. In determining similarity and likelihood of confusion. jurisprudence has developed two tests.net In trademark cases. – There is hereby established a register of trademarks. The provision reads: Section 4. In reversing the conclusion reached by the IPO. paragraph (d) of which is pertinent to this case. We agree with the [respondent] that it is entirely unwarranted for the IPO to consider the prefix "Mac" as the predominant feature and the rest of the designs in [respondent’s] mark as details. in determining confusing similarity. Registration of trademarks. jurisprudential precedents should be applied only to a case if they are specifically in point. 19 In such cases. we believe that the holistic test is not the one applicable in this case. when applied to or used in connection with the goods. The appellate court ruled in this wise: Applying the Dominancy test to the present case. no set rules can be deduced because each case must be decided on its merits. while seemingly applying the dominancy test. The owner of the trade-mark. spelling. While we agree with the CA’s detailed enumeration of differences between the two (2) competing trademarks herein involved. a comparison of the words is not the only determinant factor. trade-names and servicemarks on the principal register.. the IPO should have taken into consideration the entirety of the two marks instead of simply fixing its gaze on the single letter "M" or on the combinations "Mc" or "Mac". no other similarity exists in the subject marks. We agree.16 In contrast.) Essentially. 21 Here. the dominancy test being the one more suitable. 15 The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception.

The differences and variations in styles as the device depicting a head of chicken with cap and bowtie and wings sprouting on both sides of the chicken head. . v. chicken barbeque. namely. Even non-regular customers of their fastfood restaurants would readily notice the predominance of the "M" design." "Mc. the respondent’s trademark application for the "MACJOY & DEVICE" trademark covers goods under Classes 29 and 30 of the International Classification of Goods." which visually and aurally catches the attention of the consuming public. The totality or holistic test only relies on visual comparisons 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. etc. LC Big Mak Burger. quality." "McDo. or an affiliate. To begin with.used and applied the dominancy test in determining confusing similarity or likelihood of confusion between competing trademarks. has relied on the dominancy test rather than the holistic test. the word "MACJOY" attracts attention the same way as did "McDonalds. The dominancy test considers the dominant features in the competing marks in determining whether they are confusingly similar. Verily. in Societe Des Produits Nestle. both trademarks are used in the sale of fastfood products. CA24 the Court. Such that the common awareness or perception of customers that the trademarks McDonalds mark and MACJOY & DEVICE are one and the same. the Court finds that herein petitioner’s "MCDONALD’S" and respondent’s "MACJOY" marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks." "MacFries. fries.e. spaghetti." an abbreviation of "Mac. or under the sponsorship of the other is not far-fetched. The first letter "M" in both marks puts emphasis on the prefixes "Mc" and/or "Mac" by the similar way in which they are depicted i. v. Thus.A. sales outlets and market segments. Moreover." and the stylistic letters in "MACJOY & DEVICE. These minuscule variations are overshadowed by the appearance of the predominant features mentioned hereinabove.22 Notably. 25 For sure. "Mc/Mac" prefixes shown in both marks. concluded that the use by the respondent therein of the word "MASTER" for its coffee product "FLAVOR MASTER" was likely to cause confusion with therein petitioner’s coffee products’ "MASTER ROAST" and "MASTER BLEND" and further ruled: xxx. Indisputably. Besides and most importantly. it is the prefix "Mc. 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. S. fried chicken. in McDonalds Corp. disregarding minor differences. applying the dominancy test. both marks use the corporate "M" design logo and the prefixes "Mc" and/or "Mac" as dominant features." "McSpaghetti. connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the marketplace. burgers. courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark. Under the dominancy test. Inc. the heart-shaped "M." in contrast to the arch-like "M" and the one-styled gothic letters in McDonald’s marks are of no moment. the predominant features such as the "M." "Big Mac" and the rest of the MCDONALD’S marks which all use the prefixes Mc and/or Mac. aural. 23 a case where the trademark "Big Mak" was found to be confusingly similar with the "Big Mac" mark of the herein the petitioner.. we concur with the IPO’s findings that: In the case at bar. giving little weight to factors like prices. xxx. in an archlike. Likewise. capitalized and stylized manner. Applying the dominancy test to the instant case. Courts will consider more the aural and visual impressions created by the marks in the public mind. the Court explicitly held: This Court. the petitioner’s trademark registration for the MCDONALD’S marks in the Philippines covers goods which are similar if not identical to those covered by the respondent’s application." and "Mac" appearing in both McDonald’s marks and the MACJOY & DEVICE" easily attract the attention of would-be customers.

. Likewise wanting in merit is the respondent’s claim that the petitioner cannot acquire ownership of the word "Mac" because it is a personal name which may not be monopolized as a trademark as against others of the same name or surname. its president had to choose and adopt a mark with the prefix "Mac" as the dominant feature thereof. the respondent failed to overcome such presumption. 1991 albeit the date of first use in the Philippines was December 7. it is clear that the petitioner has duly established its ownership of the mark/s. the resulting issue to be resolved is who. once registered. as well as to supposedly bring good luck to Respondent’s business.e. as applied to petitioner’s restaurant business and food products." the only logical conclusion deducible therefrom is that the respondent would want to ride high on the established reputation and goodwill of the MCDONALD’s marks. With the existence of confusing similarity between the subject trademarks. is downright unmeritorious. Respondent’s contention that it was the first user of the mark in the Philippines having used "MACJOY & DEVICE" on its restaurant business and food products since December. A more plausible explanation perhaps is that the niece of Respondent’s president was fond of the food products and services of the Respondent. once a trademark has been registered. trade-name and service mark under the Trademark Law33 pertains to the territorial jurisdiction of the Philippines and is not only confined to a certain region." 34 By reason of the respondent’s implausible and insufficient explanation as to how and why out of the many choices of words it could have used for its trade-name and/or trademark. with the predominance of the letter "M. as amended. Scarlett Yu Carcell. Even assuming that the word "MacJoy" was chosen as a term of endearment. i. it is not disputed that the respondent’s application for registration of its trademark "MACJOY & DEVICE" was filed only on March 14. it chose the word "MACJOY. province. is a mere self-serving assertion.32 Hence. Respondent failed to present evidence to support the foregoing claim which.26 Pursuant to Section 3727 of R. For the requirement of "actual use in commerce x x x in the Philippines" before one may register a trademark. In this case. Food and ingredients of food. 166. are adherent-members.e. However. the corporate logo which is the "M" or the golden arches design and the "McDonald’s" with the "M" or golden arches design both in 30 June 1977 30 . Secondly. at best." and prefixes "Mac/Mc" found in both marks. the validity of the mark is prima facie presumed. allegedly the niece of Respondent’s president. it cannot be denied that there is absolutely no connection between the name "Scarlett Yu Carcel" and "MacJoy" to merit the coinage of the latter word. from the evidence on record. and so on and so forth. one cannot help but wonder why out of all the possible letters or combinations of letters available to Respondent. "McDonald’s" in 04 October. as between the parties. the inevitable conclusion is there is confusing similarity between the trademarks Mc Donald’s marks and "MACJOY AND DEVICE" especially considering the fact that both marks are being used on almost the same products falling under Classes 29 and 30 of the International Classification of Goods i. No. city or barangay. which. but that is beside the point.Thus. while the first McDonald’s outlet of the petitioner thereat was opened only in 1992. not only the mark’s validity but also the registrant’s ownership thereof is prima facie presumed. As stated earlier. 1987. the petitioner was able to register its MCDONALD’S marks successively.. is undoubtedly beyond question. A mark is valid if it is distinctive and hence not barred from registration under the Trademark Law.31 On the other hand. has the rightful claim of ownership over the said marks. fondness and affection for a certain Scarlett Yu Carcel.A. 197129 . 1987 at Cebu City First of all. as well as the provision regarding the protection of industrial property of foreign nationals in this country as embodied in the Paris Convention28 under which the Philippines and the petitioner’s domicile. We agree with the observations of the petitioner regarding the respondent’s explanation that the word "MACJOY" is based on the name of its president’s niece. the United States. In the words of the petitioner: We rule for the petitioner.

When one applies for the registration of a trademark or label which is almost the same or very closely resembles one already used and registered by another. 291-306. at 139-142. at 256-257. AZCUNA Associate Justice CERTIFICATION 10 Id. 9 Rollo. October 26. CA. 4 Id. v. at 72. Dir. at 74 & 76 Moomba Mining Exploration Co. pp. it is hereby certified that the conclusions in the above decision had been reached in consultation before the case was assigned to the writer of the opinion of the Court’s Division. SP NO. 3 Id. WE CONCUR: 7 Supra note 1. pp. 57247. the instant petition is GRANTED. PUNO Chief Justice Footnotes Penned by Associate Justice Isaias P. at 114-122. Jr. even without any opposition on the part of the owner and user of a previously registered label or trademark. of Patents and Villapanta:36 Pursuant to Article VIII. the assailed Decision and Resolution of the Court of Appeals in CA-G.. at 144-159. No. REYNATO S. Accordingly. the application should be rejected and dismissed outright. 11 Id.R. the IPO was correct in rejecting and denying the respondent’s application for registration of the trademark "MACJOY & DEVICE. REYNATO S. v. are REVERSED and SET ASIDE and the Decision of the Intellectual Property Office in Inter Partes Case No. 2 Id. Asuncion and Ramon Bato. Section 13 of the Constitution. Rollo. 12 ." As this Court ruled in Faberge Inc.R. 1 WHEREFORE. PUNO Chief Justice Chairperson ANGELINA SANDOVALGUTIERREZ Associate Justice RENATO C. 397. v. No pronouncement as to costs. SO ORDERED. Dicdican and concurred in by Associate Justices Elvi John S. 5 Id. IAC. 3861 is REINSTATED. GARCIA Associate Justice 6 Id. 99. 317 SCRA 38.Thus. 108846. 8 Supra note 2. but also to protect an already used and registered trademark and an established goodwill. CORONA Asscociate Justice ADOLFO S. G. 35 citing Chuanchow Soy & Canning Co. 209-219. this not only to avoid confusion on the part of the public. CANCIO C. at 77-81.

G. July 5. Nut Industry Inc. v. . the Convention sought to create uniformity in certain respects by obligating each nation to assure to nationals of countries of the Union an effective protection against unfair competition. Rollo p. 2. and the same legal 28 . No. L-27906. December 29. which is a party to an international convention or treaty relating to marks or tradenames on the repression of unfair competition to which the Philippines may be a party. 86. 112012. 37. Converse Rubber Corp. 13 14 Section 38. 26 16 17 Id. Court of Appeals. No. 21 Id. 18 Societe Des Produits Nestle. 2004. supra. subject to any conditions and limitations stated therein. Universal Rubber Products. 154342. 1993. v. and of the registrant’s exclusive right to use the same in connection with the goods. Phil. 434 SCRA 473. supra note 14. No. Nationals of each of the countries of the Union shall. shall be entitled to the benefits and subject to the provisions of this Act . July 14. E & J Gallo Winery. Societe Des Produits Nestle. Rights of Foreign Registrants-Persons who are nationals of. Inc. 506. S. 218. L.A. CA. April 4. Consequently. 2003. G. SEC. or may hereafter grant. S. Inc. v. 103543..Smith Kline Beckman Corporation v. 22 23 Supra note 14. without prejudice to the rights specially provided by the present Convention. 1995. Big Mak Burger. . or have a bona fide or effective business or commercial establishment in any foreign country. as amended Mighty Corporation v.R. 20..R. business or services specified in the certificate.C.R. L-23035. at p. The underlying principle is that foreign nationals should be given the same treatment in each of the member countries as that country makes available to its own citizens. 224 SCRA 437. CA. 166. No. 89 & 91.C. domiciled in.. Article 2 of the Paris Convention provides that: ART. G. July 31.. Asia Brewery. v. v. 615-616. R. Rollo.R. the registrant’s ownership of the mark or trade name. GR No. August 14. Inc. 15 McDonald’s Corporation v. supra McDonald’s Corporation v L.R. to nationals. January 8. CA. Certificate of registration prima facie evidence of validity. 356 SCRA 207. 25 "Tradenames of persons described in the first paragraph of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks. Standard Brands. supra.A. Inc. Big Mak Burger. 147 SCRA 154. L. Emerald Garment Manufacturing Corporation v. 251 SCRA 600. enjoy in all the other countries of the Union the advantages that their respective laws now grant. No.R. CA. 217. Inc. they shall have the same protection as the latter. Sec." The Paris Convention is essentially a compact among the various member countries to accord in their own countries to citizens of the other contracting parties’ trademarks and other rights comparable to those accorded their own citizens by their domestic laws. as regards the protection of industrial property. x x x 27 19 20 Id. G. 1975.A certificate of registration of a mark or trade name shall be prima facie evidence of the validity of the registration. 409 SCRA 33.. 2001. pp. G. No. Applied in McDonald’s Corp. "MacJoy" mark. 24 Supra note 23. 100098. 126627. G. v. 39. 65 SCRA 575.A. at 32. 1987. 297 and "MCDONALDS" marks. In addition. Big Mak Burger Inc. .C.

at 94.A. Registration No. Rollo. dated July 18. 108 Phil. Id. 1992. Id. 1988. 1991. That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines. at 107). IPO Decision.R. 29 Rollo. Provided. November 4. 1990 for the service mark "McSnack" Id. by the government of the foreign country to the Government of the Republic of the Philippines. dated June 24. further. dated July 24. partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act. 48491. 33 34 Rollo. Registration No. No. for the mark "McSpaghetti". dated June 25. 1985. Id. as amended. G. That said trademarks. 39988. Registration No. 1988 for the mark "MacFries". Registration No. provides: Sec. at 105. – Trademarks. pp. 32009. 1983 for the mark "McChicken". for the trademark "Mc" (Id. provided they observe the conditions and formalities imposed upon nationals. 106. L-13947. What are registrable. 55-56. dated July 14. with a certified true copy of the foreign law translated into the English language.R. No. dated March 06. 35 G. tradenames. p. at 97. dated June 24. and such fact is officially certified. or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed. L-23035 July 31. 86 30 Id. And provided. Registration No. tradenames and service marks owned by persons. 1983 for the trademark "Big Mac" and Circle Design Rollo. dated July 14. 31 32 Section 2 of R.A. pp.R. Registration No. No. (As amended by R. at 99. 34065. 1985 for the mark "Big Mac". Registration No. at 93. p. 1975 . 45583. corporations. 34065. dated December 02. 50987. partnerships or associations domiciled in the Philippines and by persons. 31966. for the servicemark "McDo" . 833. No. Id. 120-121. at 101. 2. 71189.remedy against any infringement of their rights. for the mark "McDonald’s with "corporate logo"arches design. Registration No. Id. corporations. 836. at 100. 51789. 166. 1991. 865). Id. at 89 & 91 Registration No. 36 G.

Philippine Nut filed its answer invoking the special defense that its registered label is not confusingly similar to that of Standard Brands as the latter alleges. INC. issued by the Patent Office on July 28. Borromeo and Solicitor Francisco J. EVALLE as Director of Patents. SR172. Standard Brands alleged in its petition that Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" closely resembles and is confusingly similar to its trademark "PLANTERS COCKTAIL PEANUTS" used also on salted peanuts. J. (hereinafter called Philippine Nut) for the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS. 268 asking for the cancellation of Philippine Nut's certificate of registration on the ground that "the registrant was not entitled to register the mark at the time of its application for registration thereof" for the reason that it (Standard Brands) is the owner of the trademark "PLANTERS COCKTAIL PEANUTS" covered by Certificate of Registration No. 1962. SR-416 covering the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS. (hereinafter to be called Standard Brands). respondents. MUNOZ PALMA. after the presentation of oral and documentary evidence and the filing by the parties of their memoranda. Certificate of Registration No. 1958. 281 giving due course to Standard Brand's petition and ordering the cancellation of Philippine Nut's Certificate of Registration No. The records of the case show the following incidents: Philippine Nut. On December 12. (2) that Standard Brands trademark was first used in commerce in the Philippines in December. Alafriz. 1938 and (3) that Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" was first used in the Philippines on December 20. 1962. On May 14. Office of the Solicitor General Arturo A. 1958. and that the registration of the former is likely to deceive the buying public and cause damage to it.. SR-416 issued in favor of herein petitioner Philippine Nut Industry. Paredes." upon complaint of Standard Brands Inc. Inc. On December 10. Poblador. On June 1. SR-172 issued on July 28. respondent Director of Patents rendered Decision No. 1963. STANDARD BRANDS INCORPORATED and TIBURCIO S.PHILIPPINE NUT INDUSTRY. 1 filed with the Director of Patents Inter Partes Case No. 1962. 1961." and he concluded that Philippine Nut "was not entitled to register the mark at the time of its filing the application for registration" as Standard Brands will be damaged . Perfecta E. 1961. displayed "in a very similar manner" so much so that "as to appearance and general impression" there is "a very confusing similarity. 1958 and registered with the Patent Office on August 10. vs. Cruz and Nazareno for private respondent. the parties submitted a partial stipulation of facts. De Vera for petitioner. Acting Assistant Solicitor General Isidro C. obtained from the Patent Office on August 10. an amended partial stipulation of facts was submitted. the dominant part is the word "Planters". Standard Brands a foreign corporation. SR-416. a domestic corporation. the pertinent agreements contained in which are: (1) that Standard Brands is the present owner of the trademark "PLANTERS COCKTAIL PEANUTS" covered by Certificate of Registration No. At the hearing of October 4. The Director of Patents found and held that in the labels using the two trademarks in question. Bautista for respondent Director. 1962.: Challenged in this petition for review is the decision of respondent Director of Patents which orders the cancellation of Certificate of Registration No." the label used on its product of salted peanuts. petitioner.

petitioner brings forth eleven assigned errors all of which revolve around one main issue: is the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by Philippine Nut on its label for salted peanuts confusingly similar to the trademark "PLANTERS COCKTAIL PEANUTS" used by Standard Brands on its product so as to constitute an infringement of the latter's trademark rights and justify its cancellation? 2 The applicable law to the case is found in Republic Act 166 otherwise known as the Trade-Mark Law from which We quote the following pertinent provisions: (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 tradename previously used in the Philippines by another and not abandoned. shall be liable to . Its motion for reconsideration having been denied. counterfeit. Infringement. In seeking a reversal of the decision of respondent Director of Patents. who believes that he is or will be damaged by the registration of a mark or trade-name. prints. packages. trade-name or service-mark used to distinguish his goods.. Registration of trade-marks. or identity of such business. as to be likely. — There is hereby established a register of trademarks. counterfeit. — Any person who shall use. 22. what constitutes. or reproduce. or colorable imitation to labels. Philippine Nut came up to this Court for a review of said decision.by the registration of the same. trade-names and service-marks which shall be known as the principal register.. business or services from the goods. wrappers. or advertising of any goods. business or services of others shall have the right to register the same on the principal register. copy or colorable imitation of any registered mark or tradename in connection with the sale. signs. upon the payment of the prescribed fee.. — Sec. The owner of a trade-mark. (emphasis Ours) Sec. when applied to or used in connection with the goods. counterfeit. Chapter II-A. to cause confusion or mistake or to deceive purchasers. trade-names and service-marks on the principal register. without the consent of the registrant. offering for sale. . 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. copy or colorably imitate any such mark or trade-name and apply such reproduction. Chapter II hereof.. any reproduction. apply to cancel said registration upon any of the following grounds: (c) That the registration was obtained fraudulently or contrary to the provisions of section four. business or services of the applicant. may. copy. business or services. 4. unless it: Sec.. receptacles or advertisements intended to be used upon or in connection with such goods. 17. . Grounds for cancellation — Any person.

that whether or not a trademark causes confusion and is likely to deceive the public is a question of fact which is to be resolved by applying the "test of dominancy". that is. In fact. an ordinary word which is defined in Webster International Dictionary as "one who or that which plants or sows. if the competing trademark contains the main or essential or dominant features of another by reason of which confusion and deception are likely to result. when a housewife sends her housemaid to the market to buy canned salted peanuts. (emphasis supplied). A visual and graphic presentation of the labels will constitute the best argument for one or the other. but that it also used in its label the same coloring scheme of gold. that respondent Director's decision is based not only on the fact that petitioner herein adopted the same dominant mark of Standard Brands. but to project the source or origin of the salted peanuts contained in the cans. and basically the same lay-out of words such as "salted peanuts" and "vacuum packed" with similar type and size of lettering as appearing in Standard Brands' own . petitioner's brief) We find the argument without merit. In cases of this nature there can be no better evidence as to what is the dominant feature of a label and as to whether there is a confusing similarity in the contesting trademarks than the labels themselves. then infringement takes pIace. PLANTERS cannot be considered as the dominant feature of the trademarks in question because it is a mere descriptive term. The picture below is part of the documentary evidence appearing in the original records. 3 1. 10-11. As a whole it is the word PLANTERS which draws the attention of the buyer and leads him to conclude that the salted peanuts contained in the two cans originate from one and the same manufacturer. While it is true that PLANTERS is an ordinary word. which are also prominently displayed. that duplication or imitation is not necessary. 2. and that what he should have resolved is whether there is a confusing similarity in the trademarks of the parties. The next argument of petitioner is that respondent Director should not have based his decision simply on the use of the term PLANTERS. meaning. hence. blue. It is true that there are other words used such as "Cordial" in petitioner's can and "Cocktail" in Standard Brands'. nevertheless it is used in the labels not to describe the nature of the product. we are reproducing hereunder a picture of the cans of salted peanuts of the parties to the case. she will describe the brand she wants by using the word PLANTERS and not "Cordial" nor "Cocktail". striking mark of the labels in question. a similarity in the dominant features of the trademarks would be sufficient. According to petitioner. and it clearly demonstrates the correctness of the finding of respondent Director that the word PLANTERS is the dominant." (pp. and white. a farmer or an agriculturist. It is quite obvious from the record.a civil action by the registrant for any or all of the remedies herein provided. In the cases involving infringement of trademark brought before the Court it has been consistently held that there is infringement of trademark when the use of the mark involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the commodity. but these words are mere adjectives describing the type of peanuts in the labeled containers and are not sufficient to warn the unwary customer that the two products come form distinct sources. The first argument advanced by petitioner which We believe goes to the core of the matter in litigation is that the Director of Patents erred in holding that the dominant portion of the label of Standard Brands in its cans of salted peanuts consists of the word PLANTERS which has been used in the label of Philippine Nut for its own product. The word PLANTERS printed across the upper portion of the label in bold letters easily attracts and catches the eye of the ordinary consumer and it is that word and none other that sticks in his mind when he thinks of salted peanuts. the word PLANTERS.

with all the birds in the air. phrases. colors. and other phrases. no producer or manufacturer may have a monopoly of any color scheme or form of words in a label. the presence of the word "Philippine" above PLANTERS on its label. the same appears on the top cover and is not visible when the cans are displayed on the shelves. as to appearance and general impression of the two trademarks. with both words ending with an "1". It is also for this reason that We do not agree with petitioner that it is "Mr. But when a competitor adopts a distinctive or dominant mark or feature of another's trademark and with it makes use of the same color ensemble. aside from the fact that the figure of "Mr. it being a mere descriptive pictorial representation of a peanut not prominently displayed on the very body of the label covering the can. petitioner's brief) We have taken note of those alleged differences but We find them insignificant in the sense that they are not sufficient to call the attention of the ordinary buyer that the labeled cans come from distinct and separate sources. and thereby deceive the public? A similar question was asked by this Court in Clarke vs. Hence. Why did defendant select two roosters as its trademark ?" (p. Peanut" is printed on the tin cover which is thrown away after opening the can.) selected two roosters as its trademark. Admittedly. although its directors and managers must have been well aware of the long-continued use of a rooster by the plaintiff with the sale and advertisement of its goods? . supra) Petitioner contends. Peanut" and the representation of a "humanized peanut". why. the defendant company (Manila Candy Co.. a dog. . employs similar words written in a style. when it resolved in favor of plaintiff a case of unfair competition based on an imitation of Clarke's packages and wrappers of its candies the main feature of which was one rooster.. however. (pp. etc. leaving no lasting impression on the consumer. 36 Phil. As a matter of fact.109. the same coloring scheme. 4 Thus. while in the label of Standard Brands it is stated that the product is manufactured in San Francisco. Peanut" on Standard Brands' label. and all the animals on the face of the earth to choose from. the capital letter "C" of petitioner's "Cordial" is alike to the capital "C" of Standard's "Cocktail". 3033. plus a pictorial representation of peanuts overflowing from a tin can. the intent to pass to the public his product as that of the other is quite obvious.. type and size of lettering almost identical with those found in the other trademark. California. and all the fishes in the sea. the address of the manufacturer in Quezon City. Its Your Outstanding Buy". that there are differences between the two trademarks. a shark or an eagle stamped upon the container in which candies are sold would serve as well as a rooster for purposes of identification as the product of defendant's factory. the striking similarity between the two labels is quite evident not only in the common use of PLANTERS but also in the other words employed. A cat." (Emphasis supplied) 5 Referring again to the picture We have reproduced.trademark.. and on top of the tin can is printed "Mr. Peanut and the Humanized Peanut" which is the trademark of Standard Brands salted peanuts. 100. such as. all of which result in a confusing similarity between the two labels. to wit: "For Quality and Price. a carabao. The word "Philippine" printed in small type in petitioner's label may simply give to the purchaser the impression that that particular can of PLANTERS salted peanuts is locally produced or canned but that what he is buying is still PLANTERS canned salted peanuts and nothing else. As regards "Mr. symbols. even almost identical size and contour of the cans. there is good reason for Standard Brands' to ask why did petitioner herein use the word PLANTERS. Manila Candy Co. if petitioner was not motivated to simulate the label of the latter for its own can of salted peanuts... unlike the term PLANTERS which dominates the label. and arrangements to choose from to distinguish its product from Standard Brands. I find a very confusing similarity. The Court queried thus: ". the same lay-out of words on its label when there is a myriad of other words. the decision states: "Furthermore.

It is correctly observed by respondent Director that the
merchandize or goods being sold by the parties herein are very
ordinary commodities purchased by the average person and many
times by the ignorant and unlettered 6 and these are the persons
who will not as a rule examine the printed small letterings on the
container but will simply be guided by the presence of the striking
mark PLANTERS on the label. Differences there will always be, but
whatever differences exist, these pale into insignificance in the
face of an evident similarity in the dominant feature and overall
appearance of the labels of the parties.
It is not necessary, to constitute trademark
"infringement", that every word of a trade-mark
should be appropriated, but it is sufficient that
enough be taken to deceive the public in the
purchase of a protected article. (Bunte Bros. v.
Standard Chocolates, D.C. Mass., 45 F. Supp. 478,
481)
A trade-name in order to be an `infringement' upon
another need not be exactly like it in form and
sound, but it is enough if the one so resembles
another as to deceive or mislead persons of
ordinary caution into the belief that they are
dealing with the one concern when in fact they are
dealing with the other. (Foss v. Culbertson, 136 P.
2d 711, 718, 17 Wash. 2d 610)
Where a trade-mark contains a dominating or
distinguishing word, and purchasing public has
come to know and designate the article by such
dominating word, the use of such word by another
in marking similar goods may constitute
Infringement though the marks aside from such
dominating word may be dissimilar. (Queen Mfg.
Co. v. lsaac Ginsberg & Bros., C.C.A. Mon., 25 F. 2d
284, 287)

(d) "Infringement" of trade-mark does not depend
on the use of identical words, nor on the question
whether they are so similar that a person looking
at one would be deceived into the belief that it was
the other; it being sufficient if one mark is so like
another in form, spelling, or sound that one with
not a very definite or clear recollection as to the
real mark is likely to be confused or misled.
(Northam Warren Corporation v. Universal Cosmetic
Co., C. C. A; III., 18 F. 2d 774, 775)
3. What is next submitted by petitioner is that it was error for
respondent Director to have enjoined it from using PLANTERS in
the absence of evidence showing that the term has acquired
secondary meaning. Petitioner, invoking American jurisprudence,
asserts that the first user of a tradename composed of common
words is given no special preference unless it is shown that such
words have acquired secondary meaning, and this, respondent
Standard Brands failed to do when no evidence was presented to
establish that fact. (pp. 14-16, petitioner's brief)
The doctrine of secondary meaning is found in Sec. 4 (f), Chapter
II-A of the Trade-Mark Law, viz:
Except as expressly excluded in paragraphs (a),
(b), (c) and (d) of this section, nothing herein shall
prevent the registration of a mark or trade-name
used by the applicant which has become distinctive
of the applicant's goods, business or services. The
Director may accept as prima facie evidence that
the mark or trade-name has become distinctive, as
applied to or used in connection with the
applicant's goods, business or services, proof of
substantially exclusive and continuous use thereof
as a mark or trade-name by the applicant in
connection with the sale of goods, business or
services for the five years next preceding the date

of the filing of the application for its registration.
(As amended by Sec. 3, Rep. Act No. 638.)
This Court held that the doctrine is to the effect that a word or
phrase originally incapable of exclusive appropriation with
reference to an article on the market, because geographically or
otherwise descriptive, might nevertheless have been used so long
and so exclusively by one producer with reference to his article
that, in that trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his product.
7

By way of illustration, is the word "Selecta" which according to this
Court is a common ordinary term in the sense that it may be used
or employed by any one in promoting his business or enterprise,
but which once adopted or coined in connection with one's
business as an emblem, sign or device to characterize its products,
or as a badge of authenticity, may acquire a secondary meaning as
to be exclusively associated with its products and business, so that
its use by another may lead to confusion in trade and cause
damage to its business. 8
The applicability of the doctrine of secondary meaning to the
situation now before Us is appropriate because there is oral and
documentary evidence showing that the word PLANTERS has been
used by and closely associated with Standard Brands for its canned
salted peanuts since 1938 in this country. Not only is that fact
admitted by petitioner in the amended stipulation of facts (see p. 2
of this Decision), but the matter has been established by
testimonial (tsn October 4, 1962, pp. 2-8) and documentary
evidence consisting of invoices covering the sale of "PLANTERS
cocktail peanuts". (Exhibits C to C-4; D to D-10; E to E-10; F to F-2)
In other words, there is evidence to show that the term PLANTERS
has become a distinctive mark or symbol insofar as salted peanuts
are concerned, and by priority of use dating as far back as 1938,
respondent Standard Brands has acquired a preferential right to its
adoption as its trademark warranting protection against its
usurpation by another. Ubi jus ibi remedium. Where there is a right

there is a remedy. Standard Brands has shown the existence of a
property right(Arce Sons & Co. vs. Selecta Biscuit Co., Inc., supra,
pp. 262-263) and respondent Director, has afforded the remedy.
Still on this point, petitioner contends that Standard Brands' use of
the trademark PLANTERS was interrupted during the Japanese
occupation and in fact was discontinued when the importation of
peanuts was prohibited by Central Bank regulations effective July
1, 1953, hence it cannot be presumed that it has acquired a
secondary meaning. We hold otherwise. Respondent Director
correctly applied the rule that non-use of a trademark on an article
of merchandize due to legal restrictions or circumstances beyond
one's control is not to be considered as an abandonment.
In the case of Andres Romero vs. Maiden Form Brassiere Co., Inc.,
L-18289, March 31, 1964, 10 SCRA 556, the same question was
raised by petitioner Romero when he filed with the Bureau of
Patents a petition to cancel the registration of the trademark
"Adagio" for brassieres manufactured by Maiden Form Brassiere
Co., Inc. His petition having been dismissed by the Director of
Patents, Romero appealed to this Court and one of the issues
posed by him was that when the Government imposed restrictions
on importations of brassieres bearing that particular trademark,
there was abandonment of the same by respondent company
which entitled petitioner to adopt it for his own use and which in
fact he had been using for a number of years. That argument was
met by the Court in the words of Justice Jesus Barrera thus:
... The evidence on record shows, on the other
hand, that the trademark "Adagio" was first used
exlusively in the Philippines by appellee in the year
1932. There being no evidence of use of the mark
by others before 1932, or that appellee abandoned
use thereof, the registration of the mark was made
in accordance with the Trademark Law. Granting
that appellant used the mark when appellee
stopped using it during the period of time that the
Government imposed restrictions on importation of

respondent's brassiere being the trademark, such
temporary non-use did not affect the rights of
appellee because it was occasioned by
government restrictions and was not permanent,
intentional, and voluntary.
To work an abandonment, the
disuse must be permanent and not
ephemeral; it must, be intentional
and voluntary, and not involuntary
or even compulsory. There must be
a thoroughgoing discontinuance of
any trade-mark use of the mark in
question (Callman, Unfair
Competition and Trademark, 2nd
Ed., p. 1341).1äwphï1.ñët
The use of the trademark by other manufacturers
did not indicate an intention on the part of appellee
to abandon it.
The instances of the use by others of the term
Budweiser, cited by the defendant, fail, even when
liberally construed, to indicate an intention upon
the part of the complainant to abandon its rights to
that name. "To establish the defense of
abandonment, it is necessary to show not only acts
indicating a practical abandonment, but an actual
intention to abandon." Sanlehner v. Eisener &
Mendelson Co., 179 U.S. 19, 21 S. Ct. 7 (45 L. Ed.
6.0).(Anheuser-Busch, Inc, v. Budweiser Malt
Products Corp., 287 F. 245.)
xxx xxx xxx
Non-use because of legal restrictions is not
evidence of an intent to abandon. Non-use of their
ancient trade-mark and the adoption of new marks

by the Carthusian Monks after they had been
compelled to leave France was consistent with an
intention to retain their right to use their old mark.
Abandonment will not be inferred from a disuse
over a period of years occasioned by statutory
restrictions on the name of liquor. (Nims, Unfair
Competition and Trade-Mark, p. 1269.) (pp. 562564, supra) (emphasis Ours)
Applying the words of Justice Roman Ozaeta in the "Ang Tibay"
case (Ang vs. Toribio Teodoro, p. 56, supra) to the case now before
Us, petitioner herein must not be allowed to get a free ride on the
reputation and selling power of Standard Brands PLANTERS salted
peanuts, for a self-respecting person, or a reputable business
concern as is the case here, does not remain in the shelter of
another's popularity and goodwill but builds one of his own.
4. Findings of fact by the Director of Patents are conclusive and
binding on this Court provided they are supported by substantial
evidence. 9 The testimonial and documentary evidence in addition
to the stipulation of facts submitted by the parties fully support the
findings of respondent Director that(1) there is a confusing
similarity between the labels or trademarks of Philippine Nut and
Standard Brands used in their respective canned salted peanuts;
(2) respondent Standard Brands has priority of adoption and use of
the label with PLANTERS as the dominant feature and the same
has acquired secondary meaning in relation to salted peanuts; and
(3) there has been no abandonment or non-use of said trademark
by Standard Brands which would justify its adoption by petitioner
or any other competitor for the sale of salted peanuts in the
market.
PREMISES CONSIDERED, We AFFIRM the decision of respondent
Director of Patents with costs against petitioner.
So Ordered.
Castro (Chairman), Makasiar, Esguerra and Martin, JJ., concur.

CLUETT PEABODY CO. 36 Phil.. Selecta Biscuit Co. 40 Phil. October 29..G. 7 Ana Ang vs. New York. 369.. 406. Incorporate vs. citing G. 47 Phil. January 31. per Roman Ozaeta. Dr. Jose R. 139300 March 14. No. G. & C. 4. 1. 67 Phil. La Insular vs. Crisanta Y. is on leave. 53. Saalfield. 27 Phil. page 34 original record).. 272. J. INC. Perez and Honorable Tiburcio Evalle as Director of Patents.. decision DP. 2 See p. per Bautista Angelo. 373. United States of America. (Amended Partial Stipulation of Facts. et al. Merriam Co. The Director of Patents.R. vs.. PANGANIBAN. viz. Balmaceda. l954. Gabriel vs. No. 1966. supra Footnotes 1 Standard Brands Incorporated is a corporation organized and existing under the laws of the State of Delaware. No. 705. Clarke vs. which reversed. L-20635. 1974. the Bureau considered the totality of the similarities between the two sets of marks and found that they were of such degree. at page 86 of original record. 581 for a reproduction of the pictures of the cans for salted peanuts with respective labels of the parties. 1961. Operators.. January 28. with its principal business offices at 625 Madison Avenue. 3 for sample of Philippine Nut's label Petitioner Amigo Manufacturing Inc. 1965. number and quality as to give the overall impression that the two products are confusingly if not deceptively the same.: The findings of the Bureau of Patents that two trademarks are confusingly and deceptively similar to each other are binding upon the courts. Director of Patents.. Statement of the Case . Munn & Co. INC.. Alhambra Cigar & Cigarette Co. J. vs. J. Toribio Teodoro. United States of America. See also Forbes. absent any sufficient evidence to the contrary. 75. 198 F. challenges. vs. respondent. American Jurisprudence and Philippine cases. vs. 100. et al. vs. 266: Sapolin Co. No. the January 14. L-24075. Director of Patents and Westmont Pharmaceuticals. New York. 1999 Resolution1 of the Court of Appeals (CA) in CA-GR SP No. L17981. (a). L-14761. 15 . petitioner. 495. Mojica. Lim Hoa vs. par.. L-17901.. 16 SCRA. Ang San To. In the present case. DP.SCRA. 22792. 95 Phil. under Rule 45 of the Rules of Court. J.. Manila Candy Co. March 31. Inc. 100 Phil. Inc. vs. 1 SCRA 253. A. 5 Page 4 decision. 74 Phil. 55 SCRA. 3 Co Tiong Sa vs. 147: Etepha.Teehankee. vs. Jao Oge. 50. on AMIGO MANUFACTURING. 6 p.. 214. Director of Patents. 8 Arce Sons & Co.. 2001 4 See p.

under Certificate of Registration No. which are undisputed. and d) LINENIZED. On the other hand. Certificate of Registration No. Rustico Casia. Made in the Philippines'. 1970. SR-2206 issued to Respondent-Registrant [herein petitioner] is hereby cancelled. its own September 29.. 2 The dispositive portion of the assailed Resolution reads as follows: "WHEREFORE. 1998 REVERSED. 1958. 15440 dated April 13. b) DEVICE. consisting of a 'plurality of gold colored lines arranged in parallel relation within a triangular area of toe of the stocking and spread from each other by lines of contrasting color of the major part of the stocking' under Certificate of Registration No. [petitioner's] trademark and device 'GOLD TOP. 1998 Decision. As . Linenized for Extra Wear' has the dominant color 'white' at the center and a 'blackish brown' background with a magnified design of the sock's garter. Inc. the Petition is GRANTED. [w]e find [respondent's] motion for reconsideration meritorious. The decision pivots on two point: the application of the rule of idem sonans and the existence of a confusing similarity in appearance between two trademarks (Rollo. Neptali Bulilan and Pausi Sapak. Inc. the decision rendered by the Director of Patents dated September 3. Consequently. 1968. as used on men's socks: a) GOLD TOE. 33). as heretofore mentioned (supra. The Facts The facts. and the Decision dated September 29. this case was heard by no less than six Hearing Officers: Attys. Inc. 13887 dated May 9. "Let the records of this case be remanded to the Patent/Trademark Registry and EDP Division for appropriate action in accordance with this Decision. (a Philippine corporation) for cancellation of trademark is [respondent's] claim of exclusive ownership (as successor in interest of Great American Knitting Mills. In the Patent Office. Mandaluyong. Yadao. 1999 CA Resolution3 denying its own Motion for Reconsideration. The last named officer drafted the decision under appeal which was in due court signed and issued by the Director of Patents (who never presided over any hearing) adversely against the respondent Amigo Manufacturing. referred to by the CA." The Decision of the Director of Patents.reconsideration. representation of a sock and magnifying glass on the toe of a sock. the CA held as follows: "After a careful consideration of [respondent's] arguments and a re-appreciation of the records of this case.1). the Motion for Reconsideration is GRANTED. disposed as follows: "WHEREFORE. p." Petitioner also seeks the reversal of the June 30. are summarized by the Court of Appeals in its original Decision. as follows: "The source of the controversy that precipitated the filing by [herein Respondent] Cluett Peabody Co. Metro Manila. under Certificate of Registration No. (a New York corporation) of the present case against [herein Petitioner] Amigo Manufacturing Inc. c) DEVICE. Rodolfo Gilbang.) of the following trademark and devices. 6797 dated September 22. 1990 is hereby AFFIRMED. 1968. under Certificate of Registration No. 13465 dated January 25.. Fabian Rufina. and is labeled 'Amigo Manufacturing Inc." 4 Ruling of the Court of Appeals In its assailed Resolution. Consequently. M. p.

as to be likely. otherwise known as the Paris Convention. trademark rights in favor of the [respondent] were created.shown by the records. Court of Appeals. whether or not the Court of Appeals erred in canceling the registration of petitioner's trademark instead of canceling the trademark of the respondent.A. the Philippines and the United States are parties to the Union Convention for the Protection of Industrial Property adopted in Paris on March 20. II Since the petitioner's actual use of its trademark was ahead of the respondent. v.G. S. and as correctly held by the Director of Patents. No. As held by the Court in the same decision[. 181 SCRA 410 (1990). and the marks are printed in identical lettering. xxx xxx x x x' By virtue of the Philippines' membership to the Paris Union. v. this Petition.' Furthermore. "Finally. 158 SCRA 233. [Petitioner]'s mark is a combination of the different registered marks owned by [respondent]. hence the Court of Appeals erred in affirming the Decision of the Director of Patents dated September 3. La Chemise Lacoste. Intermediate Appellate Court. 'a mark which consists o[r] comprises a mark or trademark which so resembles a mark or tradename registered in the Philippines of tradename previously used in the Philippines by another and not abandoned. the question is not whether the two articles are distinguishable by their label when set aside but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard.] 'The most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts. is such as to likely result in confounding it with the original. business or services of the applicant. 158 SCRA 233). Intermediate Appellate Court.7 petitioner raises the following issues for the consideration of this Court: "I Whether or not the Court of Appeals overlooked that petitioner's trademark was used in commerce in the Philippines earlier than respondent's actual use of its trademarks. Fernandez. 1883. [petitioner]'s mark is only registered with the Supplemental Registry which gives no right of exclusivity to the owner and cannot overturn the presumption of validity and exclusiv[ity] given to a registered mark. III Whether or not the Court of Appeals erred in affirming the findings of the Director of Patents that petitioner's trademark [was] confusingly similar to respondent's trademarks. As held in Del Monte Corporation v. The object of the Convention is to accord a national of a member nation extensive protection against infringement and other types of unfair competition. (Puma Sportschuhfabriken Rudolf Dassler K. v.6 Issues In its Memorandum. IV . 1990. [Respondent] is domiciled in the United States of America and is the lawful owner of several trademark registrations in the United States for the mark 'GOLD TOE'. when applied to or used in connection with the goods. to cause confusion or mistake or to deceive the purchasers. (Puma Sportschuhfabriken Rudolf Dassler K. 129 SCRA 373)"5 Hence. Section 4(d) of R. 166 declares to be unregistrable.A.G. there is hardly any variance in the appearance of the marks 'GOLD TOP' and 'GOLD TOE' since both show a representation of a man's foot wearing a sock.

Fernandez.A certificate of registration of a mark or tradename shall be prima facie evidence of the validity of the registration. which petitioner failed to overturn satisfactorily."9 Moreover. 1952. the Court will resolve three issues: (1) the date of actual use of the two trademarks. as in the case of the principal register. b) February 1. Indeed. 1954. they were ahead of petitioner's claimed date of first use of "Gold Top and Device" in 1958. business or services specified in the certificate. The latter's witnesses supposedly contradicted themselves as to the date of first actual use of their trademark. (2) their confusing similarities." The registration of the above marks in favor of respondent constitutes prima facie evidence. petitioner failed to present proof of the date of alleged first use of the trademark "Gold Top and Device". the registrant's ownership of the mark or trade-name. the Representation of a Sock and a Magnifying Glass. Consequently. of respondent's ownership of those marks. the Gold Toe Representation. subject to any conditions and limitations stated therein. petitioner registered its trademark only with the supplemental register. 16610 states that an applicant for a trademark or trade name shall.11 the Court held that registration with the supplemental register gives no presumption of ownership of the trademark. even assuming that respondent started using it only on May 15. 1932. the validity of the Certificates of Registration was not questioned. Said the Court: "The registration of a mark upon the supplemental register is not. and (3) the applicability of the Paris Convention. . c) January 30."8 In the main. the dates of appropriation and the validity of other pertinent facts stated therein. We do not agree. 1947 and 1938. The Court's Ruling The Petition has no merit.Whether or not the Court of Appeals erred in applying the Paris Convention in holding that respondent ha[d] an exclusive right to the trademark 'gold toe' without taking into consideration the absence of actual use in the Philippines. Clearly. prima facie . while respondent began using the trademark "Gold Toe" only on May 15. In La Chemise Lacoste v. respondent presented Bureau registrations indicating the dates of first use in the Philippines of the trademark and the devices as follows: a) March 16. this Court concurs in the findings of the Bureau of Patents that respondent had actually used the trademark and the devices in question prior to petitioner's use of its own. First Issue: Dates of First Use of Trademark and Devices Petitioner claims that it started the actual use of the trademark "Gold Top and Device" in September 1956. 1962. we can make no finding that petitioner had started using it ahead of respondent. During the hearing at the Bureau of Patents. 1952. It contends that the claim of respondent that it had been using the "Gold Toe" trademark at an earlier date was not substantiated. Neither did petitioner present any evidence to indicate that they were fraudulently issued. The fact that the marks were indeed registered by respondent shows that it did use them on the date indicated in the Certificate of Registration. Furthermore. 20. state the date of first use. and of the registrant's exclusive right to use the same in connection with the goods. the claimed dates of respondent's first use of the marks are presumed valid. among others. Gold Toe. On the other hand. Based on the evidence presented. Section 5-A of Republic Act No. 1962. Certificate of registration prima facie evidence of validity. Thus. "Linenized. and d) February 28. Section 20 of Republic Act 166 provides as follows: "Sec. coming up with different dates such as 1952.

."12 Second Issue: Similarity of Trademarks Citing various differences between the two sets of marks. defects which make a mark unregistrable on the principal register. Petitioner points out that the director of patents erred in its application of the idem sonans rule. (2) registrant's ownership of the mark. the mark registered by Respondent-Registrant under Registration No. 1978. however. and the representation of a . 254 of Director of Patents. It avers that since the words gold and toe are generic. respondent has no right to their exclusive use. hardly is there any variance in their appearance. Clearly. absent any clear showing to the contrary.evidence of (1) the validity of registration. Dec. For the same reason. Registration [i]n the supplemental register is not constructive notice of registrant's claim of ownership. the mark 'GOLD TOP & DEVICE' is confusingly similar with the mark 'GOLD TOE'. In any case. A supplemental register is provided for the registration because of some defects (conversely. II Commercial Laws of the Philippines. The findings of fact of an administrative agency must be respected as long as they are supported by substantial evidence. as shown in the various Certificates of Registration issued in its favor. "With respect to the issue of confusing similarity between the marks of the petitioner and that of the respondentregistrant applying the tests of idem sonans. Neither may it be the subject of interference proceedings. Thus. if not finality. they are in a better position to pass judgment thereon. however. It is not the task of an appellate court to weigh once more the evidence submitted before the administrative body and to substitute its own judgment for that of the administrative agency in respect of sufficiency of evidence. did not rely on the idem sonans test alone in arriving at its conclusion. petitioner assails the finding of the director of patents that its trademark is confusingly similar to that of respondent. thus. 'GOLD TOP' blatantly incorporates petitioner's 'LINENIZED' which by itself is a registered mark. the appearance of the labels. The difference in sound occurs only in the final letter at the end of the marks. By reason of the special knowledge and expertise of said administrative agencies over matters falling under their jurisdiction." As to the actual date of first use by respondent of the four marks it registered. the lettering. 30. This fact is shown in the following portion of its Decision: "As shown by the drawings and labels on file.. although it may be cancelled after its issuance. et al. The arguments of petitioner are incorrect. by the courts." Admittedly. the seeming confusion may have stemmed from the fact that the marks have different dates of first use. True. and (3) registrant's exclusive right to use the mark. Both show [a] representation of a man's foot wearing a sock. administrative agencies' findings of fact in matters falling under their jurisdiction are generally accorded great respect."13 The Bureau considered the drawings and the labels. claiming that the two trademarks "Gold Toe" and "Gold Top" do not sound alike and are pronounced differently. The Bureau of Patents. 'GOLD TOE' and 'GOLD TOP' are printed in identical lettering. p.)' (Agbayani. it would not be guilty of infringement on the basis alone of the similarity in the sound of petitioner's "Gold Top" with that of respondent's "Gold Toe. by themselves. yet do not bar them from the supplemental register. even if such evidence might not be overwhelming or even preponderant. their findings of fact in that regard are generally accorded great respect. Titay & Co. No. citing Uy Hong Mo v. this Court accepts the finding of the Bureau of Patents that it was respondent which had prior use of its trademark. It is not subject to opposition. Verily. these dates are indicated in the Certificates of Registration. create confusion. SR-2206 is a combination of the abovementioned trademarks registered separately by the petitioner in the Philippines and the United States. Apr. the pronunciations of the two do not. if not finality. 1968. the Court has held: "x x x. 514.

petitioner violated the applicable trademark provisions during that time. An infringement of intellectual rights is no less vicious and . Duplication or imitation is not necessary. the Dominancy Test15 and the Holistic Test.. 495. "Gold Toe. when compared. Both also include a representation of a man's foot wearing a sock and the word "linenized" with arrows printed on the label. . nor is it necessary that the infringing label should suggest an effort to imitate. the test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement. jurisprudence has developed two kinds of tests. 579].man's foot wearing a sock. the overall impression created is that the two products are deceptively and confusingly similar to each other. 489. are of such degree. Court of Appeals and its proponent cases. Hanover Rubber Co. Inc. either in the sock itself or on the label." the representation of a sock with a magnifying glass. 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. (Auburn Rubber Corporation vs. the names of the brands are similar -. v. both products use the same type of lettering. Lastly. The similarities.. v. Thus. these representations are at the same location." A glance at petitioner's mark shows that it definitely has a lot of similarities and in fact looks like a combination of the trademark and devices that respondent has already registered. In Emerald Garment Manufacturing Corporation v. In addition. 191 F. x x x. infringement takes place. however. Let it be remembered that duly registered trademarks are protected by law as intellectual properties and cannot be appropriated by others without violating the due process clause. it must also be considered that petitioner and respondent are engaged in the same line of business. Court of Appeals. Pflugh (CC) 180 Fed. number and quality that the overall impression given is that the two brands of socks are deceptively the same. its conclusion is based on the totality of the similarities between the parties' trademarks and not on their sounds alone. Obviously.. Petitioner cannot therefore ignore the fact that. . An examination of the products in question shows that their dominant features are gold checkered lines against a predominantly black background and a representation of a sock with a magnifying glass." In the present case. and confusion and deception is likely to result. As its title implies.14 this Court stated that in determining whether trademarks are confusingly similar. Independent Brewing Co. Petitioner presents no explanation why it chose those representations." Moreover. 2d 588. [C. a resort to either the Dominancy Test or the Holistic Test shows that colorable imitation exists between respondent's "Gold Toe" and petitioner's "Gold Top. Court of Appeals and other cases and the Holistic Test developed in Del Monte Corporation v. jurisprudence has developed two kinds of tests – the Dominancy Test applied in Asia Brewery. vs. the "Gold Toe" representation and "linenized. In addition." Admittedly. . the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. xxx xxx xxx . considering that these were the exact symbols used in respondent's marks. or at least very similar to each another. Neilman Brewing Co. Clearly.. citing Eagle White Lead Co. namely.16 In its words: "In determining whether colorable imitation exists. there are some minor differences between the two sets of marks."Gold Top" and "Gold Toe. most of the features of its trademark are strikingly similar to those of respondent.) xxx xxx xxx On the other side of the spectrum. 107 F. If the competing trademark contains the main or essential or dominant features of another.

Hence. whose country of domicile is a party to an international convention relating to protection of trademarks. 17-22. Demetria. 2000. written by Justice Demetrio G. petitioner has failed to show any reversible error on the part of the Court of Appeals. This provision is substantially reproduced in Section 138 of RA 8293. Since the trademark was successfully registered. 2-3. 6 7 Rollo. Cui. of which the Philippines and the United States are members. Melo. or in the national language. 20-22. 12-13. there exists a prima facie presumption of the correctness of the contents thereof. pp. upon receipt by this Court of respondent's Memorandum. 1 Rollo. it is entitled to the protection of the Convention. with the concurrence of Justices Ramon A. rollo. concur. Grasparil. Hence. and signed by the applicant. Third Issue: The Paris Convention Petitioner claims that the Court of Appeals erred in applying the Paris Convention." 9 "Sec. pp. Requirements of the application. Barcelona and Renato C. Petitioner has failed to rebut this presumption. pp. To emphasize. its Petition must fail. the Trademark Law which was the law in force at the time this case was instituted. Although respondent registered its trademark ahead. Petitioner's Memorandum. A foreignbased trademark owner. was received by the Court on February 24.The application for the registration of a mark or trade-name shall be in English or Spanish. Footnotes Rollo. with its corresponding English translation. pp. pp. pp. otherwise known as the Paris Convention. rollo. Demetria.condemnable as theft of material property. and Sandoval-Gutierrez JJ. rollo. pp. Thus. Respondent is domiciled in the United States and is the registered owner of the "Gold Toe" trademark. Arturo S. Gonzaga-Reyes. As already discussed. pp. 4-5. signed by Atty. including the date of first use. whether personal or real. 17 is accorded protection against infringement or any unfair competition as provided in Section 37 of Republic Act 166. 1883. p. Santos. 276-277. Barcelona and Demetrio G. 273-298. SO ORDERED. petitioner argues that the actual use of the said mark is necessary in order to be entitled to the protection of the rights acquired through registration. otherwise known as "Intellectual Property Code of the Philippines. 5 Assailed Resolution. respondent registered its trademarks under the principal register. written by Justice Emeterio C. with the concurrence of Justices Ramon A. Hechanova and Daphne Ruby B.. signed by Attys. the Petition is hereby DENIED and the assailed Resolution AFFIRMED. Vitug. 2000. which means that the requirement of prior use had already been fulfilled. This case was deemed submitted for resolution on April 17. Costs against petitioner. 2 3 Rollo. WHEREFORE. Dacudao. Editha R. applicable is the Union Convention for the Protection of Industrial Property adopted in Paris on March 20. . 4 CA Decision. pp. 5. and shall include: 10 . 4-6. 8 Petitioner's Memorandum. Section 5-A of Republic Act 166 requires the date of first use to be specified in the application for registration. 36. 11-15. In sum.

v. Inc. the country of origin of the applicant is the country in which he has bona fide and effective industrial or commercial establishment. 1995. Inc. 1997. An application for registration of a mark or trade-name under the provisions of this Act filed by a person described in the first paragraph of this section who has previously duly filed an application for registration of the same mark . or the repression of unfair competition to which the Philippines may be a party. 297 SCRA 394. to be the owner of the mark or trade-name sought to be registered. Government Service Insurance System v. Court of Appeals. Rights of foreign registrants. the date of the applicant's first use of the mark or trade-name. 1993." Under Section 124. Court of Appeals. January 25. November 29. J. and that to the best of his knowledge. 280 SCRA 297. Court of Appeals. corporation or association on whose behalf he makes the verification. 37. 1998. January 8. September 25. v. 1998. the goods.(a) Sworn statement of the applicant's domicile and citizenship. as prescribed by the Regulations within three (3) years from the filing date of the application. corporation or association has the right to use such mark or trade-name in commerce or business either in the identical form thereof or in such near resemblance thereto as might be calculated to deceive. the country of which he is a national. or have a bona fide or effective business or commercial establishment in any foreign country. See also Bulilan v. October 9. December 22. May 21. 1990. 393. 1984. no person. 3. 1987." 11 129 SCRA 373. 329-330. For the purposes of this section. 1984. business or services in connection with which the mark or trade-name is used and the mode or manner in which the mark is used in connection with such goods. Converse Rubber Corporation v. Prime Marine Services. firm. 300 SCRA 445. or if he has not such an establishment in the country in which he is domiciled. per Kapunan. domiciled in. per Panganiban. 16 17 §37 of RA 166 reads: "Rights Sec. except as provided in the following paragraphs of this section. v. the date of the applicant's first use of the mark or trade-name in commerce or business. Villaflor v. 251 SCRA 600. x x x. No registration of a mark or trade-name in the Philippines by a person described in the preceding paragraph of this section shall be granted until such mark or trade-name has been registered in the country of origin of the applicant. the applicant is now required to "file a declaration of actual use of the mark with evidence to that effect. 12 13 Decision of the Bureau of Patents. Fruit of the Loom. December 29. 224 SCRA 437. p. or the firm. unless the applicant alleges use in commerce. rollo. or if he has not a domicile in any of the countries described in the first paragraph of this section.. 615-616. 133 SCRA 405. . per Gutierrez. shall be entitled to the benefits and subject to the provisions of this Act to the extent and under the conditions essential to give effect to any such convention and treaties so long as the Philippines shall continue to be a party thereto. and that the person making the application believes himself. business or services. x x x . 181 SCRA 410. 15 See Del Monte Corporation v.2 of RA 8293. July 5. October 8. Commission on Audit. J. CA. which is a party to any international convention or treaty relating to marks or trade-names. 14 See Asia Brewery. 1998. Inc. Inc. Universal Rubber Products.Persons who are nationals of. National Labor Relations Commission. Court of Appeals. 85. 147 SCRA 154. that the mark or trade-name is in use in commerce or business. J. p. 296 SCRA 514.

The registration of a mark under the provisions of this section shall be independent of the registration in the country of origin and the duration. Citizens or residents of the Philippines shall have the same benefits as are granted by this section to persons described in the first paragraph hereof.or trade-name in one of the countries described in said paragraph shall be accorded the same force and effect as would be accorded to the same application if filed in the Philippines on the same date on which the application was first filed in such foreign country: Provided. Trade-names of persons described in the first paragraph of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks. and the remedies provided herein for infringement of marks and trade-names shall be available so far as they may be appropriate in repressing acts of unfair competition. and within three months from the date of filing or within such time as the Director shall in his discretion grant. That (a) The application in the Philippines is filed within six months from the date on which the applica[tion] was first filed in the foreign country. Any person designated in the first paragraph of this section as entitled to the benefits and subject to the provisions of this Act shall be entitled to effective protection against unfair competition." . the applicant shall furnish a certified copy of the application for or registration in the country of origin of the applicant. validity or transfer in the Philippines of such registration shall be governed by the provisions of this Act. if not in the English language. but use in commerce need not be alleged: (c) The rights acquired by third parties before the date of the filing of the first application in the foreign country shall in no way be affected by a registration obtained [for] an application filed under this paragraph. together with a translation thereof into English. (b) The application conforms as nearly as practicable to the requirements of this Act. and (d) Nothing in this paragraph shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark or tradename was registered in this country unless the registration is based on use in commerce.

a New York corporation. for respondent. 1966 ETEPHA. a Liechtenstin (principality) corporation. objected. another trademark. petitioner. Manalo. given the fact that PERTUSSIN. ascorbic acid (Vitamin C) used in the treatment of cough". had been previously registered in the Patent Office? — the Director of Patents answered affirmatively. McClure. Inc. A. 6089. DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS.R. SANCHEZ. Salas and Gonzalez. L-20635 March 31.. 1959.. for petitioner. The trademark is used exclusively in the Philippines since January 21. vs. J.1 Petitioner. G. On April 23.G.. Salazar.G. Petitioner claims that it will be damaged because Atussin is so confusedly similar to its Pertussin (Registration No. No. Hence this appeal. INC. A. 1959. sought registration of trademark "Atussin" placed on its "medicinal preparation of expectorant antihistaminic. . Etepha. respondents.: To the question: May trademark ATUSSIN be registered. respondent Westmont Pharmaceuticals.. Luna and Associates. bronchodilator sedative. Sycip.

concededly. 12 We take a casual look at the two labels — without spelling out the details — bearing in mind the easy-to-remember earmarks thereof. to secure to him who has been instrumental in bringing into market a superior article or merchandise the fruit of his industry and skill. The objects of a trademark are "to point out distinctly the origin or ownership of the articles to which it is affixed.8 While "tussin" by itself cannot thus be used exclusively to identify one's goods.1äwphï1. The phrase "colorable imitation" denotes such a "close or ingenious imitation as to be calculated to deceive ordinary persons. or such a resemblance to the original as to deceive an ordinary purchaser. 1. we are to be guided by the rule that the validity of a cause for infringement is predicated upon colorable imitation. it is open for appropriation by anyone. shape. It is accordingly barred from registration as trademark. and on the lower left side the word "Westmont" . and on top. In petitioner's. 11 For."2 Our over-all task then is to ascertain whether or not Atussin so resembles Pertussin "as to be likely. and to cause him to purchase the one supposing it to be the other. the first with prefix "Per" and the second with Prefix "A". and to prevent fraud and imposition. Taeschner's".3 And.ñët 3. With jurisprudence holding the line. that the buying public will be misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill. and the setting in which the words appear" may be considered.9 And this union of words is reflected in petitioner's Pertussin and respondent's Atussin. giving such attention as a purchaser usually gives. of the applicant. That the word "tussin" figures as a component of both trademarks is nothing to wonder at. it may properly become the subject of a trademark "by combination with another word or phrase". Schaan Fl". 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". it is generic. respondent's projects "Westmont Pharmaceuticals. Pertussin is printed diagonally upwards and across in semiscript style with flourishes and with only the first letter "P" capitalized. the "tussin" (in Pertussin and Atussin) was derived from the Latin root-word "tussis" meaning cough. Respondent's label underscores the trademark Atussin in bold. size or format. trademark infringement is a form of unfair competition. to cause confusion or mistake or to deceive purchasers". 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. style. and pronunciation. "Apothecary E.. Inspection should be undertaken from the viewpoint of a prospective buyer.6 "Tussin" is merely descriptive. the meaning.5 And appropriately to be considered now is the fact that.issued on September 25. of words used. block letters horizontally written.. it furnishes to the buyer no indication of the origin of the goods. on the other hand. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed. when applied to or used in connection with the goods . indeed. 10 Some such factors as "sound. form. 1957) used on a preparation for the treatment of coughs. 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. Each label plainly shows the source of the medicine: petitioner's at the foot bears "Etepha Ltd. appearance. color. USA" at the bottoms."4 2. ideas connoted by marks. New York. spelling. Inc.

the part that comes first is the most pronounced. 13 On this point the following culled from a recent decision of the United States Court of Customs and Patent Appeals (June 15. we cannot escape notice of the fact that the two words do not sound alike — when pronounced. There is. regard too should be given to the class of persons who buy the particular product and the circumstances ordinarily attendant to its acquisition. 16 The medicinal preparation clothed with the trademarks in question. only if their over-all presentations in any of the particulars of sound. he knows what he is to buy. he receives instructions as to what to purchase. 6. not even by persons unfamiliar with the two trademarks. The respective labels say so. and can be no disagreement with the rule that the purchaser is confused. in the final analysis. An intending buyer must have to go first to a licensed doctor of medicine. contents. Printed prominently along the left. by the marks as a whole. As we take up Pertussin and Atussin once again. The two labels are entirely different in colors.upon a white diamond shaped enclosure and in red ink — a color different from that of the words above and below it. 4. sizes. fixed legal rules exist — if not in harmony. And this. As previously adverted to. certainly in abundance — but. 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. We now consider exclusively the two words — Pertussin and Atussin — as they appear on the respective labels. bottom and right edges of petitioner's label are indications of the use: "for bronchial catarrh — whopping-cough — coughs and asthma". he reads the doctor's prescription. Appeals to the ear are disimilar. There is not much phonetic similarity between the two. if at all. An expositor of the applicable rule here is the decision in the Syrocol-Cheracol controversy. Petitioner's and respondent's products are to be dispensed upon medical prescription. whereas. shapes and general appearance. whether correct or incorrect. however. and that is not uncommon in names given drug compounds". He is not of the . 1956) is persuasive: 14 Confusion is likely between trademarks. ice cream. in Atussin the whole starts with the single letter A added to suffix "tussin". 15 There. The Solicitor General well-observed that in Pertussin the pronunciation of the prefix "Per". these words are presented to the public in different styles of writing and methods of design. however. the ruling is that trademark Syrocol (a cough medicine preparation) is not confusedly similar to trademark Cheracol (also a cough medicine preparation). appearance. In testing this issue. 5. Respondent's for its part briefly represents what its produce actually is . arrangement of words thereon. includes a combination of three letters P. soft drinks and the like which may be freely obtained by anyone. and the "only similarity is in the last syllable. Reason: the two words "do not look or sound enough alike to justify a holding of trademark infringement". the application of these rules in any given situation necessarily reflects a matter of individual judgment largely predicated on opinion. The horizontal plain. block letters of Atussin and the diagonally and artistically upward writing of Pertussin leave distinct visual impressions. anytime. are unlike articles of everyday use such as candies.a "cough syrup". One look is enough to denude the mind of that illuminating similarity so essential for a trademark infringement case to prosper. e and r. milk. 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. anywhere. In the solution of a trademark infringement problem. because in a word combination.

106. 287.J. JJ. 117 F (2d). Annotated. so that "Roxa Kola" is not an infringement of "Coca-Cola". the appealed decision of the respondent Director of Patents — giving due course to the application for the registration of trademark ATTUSIN is hereby affirmed. 4353). 352. Director of Patents.. the pharmacist or druggist verifies the medicine sold. 4. See also Coca-Cola Co. citing cases.. 8 Footnotes Annotations. No. Pepsodent Co. 103. 11 52 Am. Carlisle Bottling Works. "DIARROL" (Reg. Co Tiong Sa vs. Inc. 5379). SR-104).. So ordered. P. 7 In Dixi-Cola Laboratories.. Barrera. p. 1918 A. Regala. C. Reyes. The margin of error in the acquisition of one for the other is quite remote. where "Cola" was held to be descriptive. p. No. Here the marks pepso-seltzer and alka-seltzer were involved. 1. else he would not have the temerity to ask for a medicine — specifically needed to cure a given ailment. No.. Trade Mark Law. pp. etc. and Zaldivar. the more improbable it will be to palm off one for the other.incautious. When this happens. took no part. 4114). 104 F(2d). 291-292. 1964 ed. Similarly. vs. "ASMADREN" (Reg. 2 Clarke vs. vs. No. "ASCARICIDOL" (Reg. The common trade channel is the pharmacy or the drugstore. 1990-S. 6090) and "ASCAROL" (Reg.. No. 1 87 Corpus Juris Secundum.. p.. Concepcion. Bautista Angelo.. No. The U. Court of Customs and Patent Appeals held that "seltzer" was descriptive. he examines the product sold to him. both for expelling intestinal worms such as ascaris. 6 Miles Laboratories. concur. he checks to find out whether it conforms to the medical prescription. For a person who purchases with open eyes is hardly the man to be deceived. 966. J.. J. 9 Section 2 of the Trademark Law requires actual use in the Philippines of not less than two months before application may be filed. 360. et al. 4 . renewed under Reg. Manila Candy Co. dysentery and intestinal disorders. Jur. 36 Phil. In which case. 207.. 288-291. Coca-Cola Co. bronchitis. 5 Webster's Third International Dictionary. No. The Director of Patents cites the following: "NUMOTOZINE" (Reg. vs. 5864) for treatment of diarrhea. pp. 10 87 Corpus Juris Secundum.B. Dizon. 100. pleurisy. Bengzon. 7461-R) for treatment of pneumonia. 12 Section 4(d). 2470. 3 87 Corpuz Juris Secundum. "ASMOL" (Reg. then the buyer must be one throughly familiar with what he intends to get. J. held that "Cola" is descriptive and generic. all for treatment of asthma. and could not be appropriated. 205. the Circuit Court of Appeals in refusing to enjoin use of Dixi-Cola. Inc. Bengzon. For the reasons given. Costa against petitioner. We concede the possibility that buyers might be able to obtain Pertussin or Attusin without prescription.S.. unobservant or unsuspecting type. p. "ASMAKOL" (Reg. unwary.L. Lawyers' Reports. 95 Phil. Makalintal. No. 43 F (2d) 101. 508.

vs.R. L-17501. or who complains of unfair competition. [1909]. 1923 LA INSULAR. 13 Lekas & Drivas. vs. plaintiffappellant. 14 Phil. et al. Schwartz.. Rueda Hermanos & Co. vs.V. S. defendantappellee..: The trial judge found no unlawful similarity between Exhibit B-1.. 15 87 Corpus Juris Secundum. J. 33 Phil.. etc. [1916]. and accordingly dismissed the complaint without costs. 296. 1963. La Yebana Co. vs. and Exhibit A-1. Inc. 254. 16 G. Ltd. 221. 14 The Upjohn Co. vs. Felix Paglinawan & Co. under the name La Insular. In this case. vs. G. 223 F (2d). the package for cigarettes used by the defendant. 294. is within the coverage of Mead Johnson decision. p. Manuel [1906]. 246 F(2d). Fabrica de Tobacos y Cigarillos. and that it was only in 1920 that this complaint was filed. pp. Counsel for the appellee points out sixteen differences between the trade-marks and labels of the appellee and the appellant. YU SO.. and while we have not gone to the trouble to note all of these differences. we believe. this Court held that thetrademark ALASKA does not infringed the registered trademark ALACTA. we yet conclude that the goods of the defendant have not been given such an appearances as would deceive the public in their purchase of cigarettes. This court. under the name La Simpatica..J. Crossfield and O'Brien and C. emphasis supplied. 262. MALCOLM. N.. was impressed more by the dissimilarities ( in the labels attached to the containers) than by the similarities appearing thereon.Mead Jonhson & Co. we agree with the trial judge. It is rudimentary that the simulation of the plaintiff's mark must be such as would appear likely to mislead the ordinarily intelligent buyer into accepting the article with the stimulated wrapper as and for the genuine. (U. 196.. Araneta and Zaragoza for appellant.R. Moreover. which discloses facts constituting unfair competition. No. Van Dorp. No. the package for cigarettes used by the plaintiff. vs. owner of La Grandeza cigarette factory. Francisco Chua Seco & Co. Seasonable measures must be taken to protect the interests of the person who claims that his trade-mark has been fraudulently imitated. also finding . 295. A. 7 Phil. The present case.. pp. On the combined question of fact and law. April 27. it appears of record the La Simpatica has been using this label and selling these cigarettes since 1908. Inc. 534. Sobral for appellee. L-20964 November 9. Tenth Avenue Trading Corp. after comparing the sizes of the containers and the color pattern.

with costs against the appellant. Phil. Street and Johns. interests and goodwill in the tradename LIONPAS Medicated Plaster . 366. 1965). 29. Inc. The issues stated by the Director of Patents in his decision are the same ones now tendered by the oppositor for resolution. 42 Phil. as amended. on the strength of exhibits 5 and 6 for the applicant. 190. 42 Phil. Munn & Co. Is the applicant the owner of the trademark "LIONPAS?" Under sections 2 and 2-A of the Trade Mark Law.: Petra Hawpia & Co. concur. partnership or association domiciled in the Philippines or in any foreign country. 1956. Ana and Lasam for petitioner. 1958. So ordered Johnson. Jao Oge [1921]. corporation. 40 Phil. tradenames and service marks by any person.net Finding no reversible error and further discussion being unnecessary it results that judgment must be affirmed. and conveyed all its "rights. Office of the Solicitor General for respondent Director of Patents. The oppositor moved to have the decision reconsidered. ceded. J. Avanceña. on July 24. respondents. a somewhat similar case. alleging that the registration of such trademark would violate its right to and interest in the trademark "SALONPAS" used on another medicated plaster. Oct. 272. mistake. This motion was denied in a resolution of November 27. vs." below the trademark "LIONPAS" on its cartons?.. stating in part that "confusion. the Director of Patents in his decision of August 18. sent by "OSAKA BOEKI KAISHA. the right to register trademarks. 1961 dismissed the opposition and gave due course to the petition.. 1959 filed an opposition thereto. Off. asserting its continuous use in the Philippines since June 9. Villamor and Romualdez. de Santos (Botica Divisoria).unfair competition. L-19297 December 22.. JJ. Forbes.) lawphil. which is registered in its name under Certificate of Registration 5486.. petitioner. we will thus proceed to resolve the first and third issues. 1966 MARVEX COMMERCIAL CO. Tan Tiao Bok [1921]. G. a partnership duly organized under the laws of the Philippines and doing business at 543 M. JJ. and (3) Is the trademark "LIONPAS" confusingly similar to the trademark "SALONPAS"? We do not consider the second issue of any importance. a corporation also duly organized under the laws of the Philippines (hereinafter referred to as the oppositor). L-17901... (1) Is the applicant the owner of the trademark "LIONPAS"?. issued by the Director of Patents on September 29.. also finding unfair competition. Inc. The Director of Patents found.. La Insular vs. Pat." to the applicant which tends to show that the former. 1961. The oppositor then interposed the present appeal. 1958 filed a petition for the registration of the trademark "LIONPAS" used on medicated plaster.. for a $1 consideration. concur in the result. 1958. is based on ownership.S. and that both trademarks when used on medicated plaster would mislead the public as they are confusingly similar. and THE DIRECTOR OF PATENTS. After due hearing. namely. A. et al. No. Dy Buncio vs.. vs. INC.. or deception among the purchasers will not likely and reasonably occur" when both trademarks are applied to medicated plaster.1 The Marvex Commercial Co. that the latter has "satisfactorily shown" its ownership of the trademark sought to be registered. Sta. LTD. (2) Should the application be rejected on the ground that the applicant made false representations in placing the phrase "Reg. finding no unfair competition to exist. on October 14. CASTRO. has assigned. and the burden is upon the applicant to prove such ownership (Operators. Ang San To [1919]. vs. but relating merely to the question of whether or not the complaint stated a good cause of action. Exhibit 5 is a letter dated June 20.R.. Manila (hereinafter referred to as the applicant). PETRA HAWPIA and CO. with the Philippine Patent Office. The Director of Patents. Donato for respondent Petra Hawpia and Co.

5 and 6 are legally insufficient to prove that the applicant is the owner of the trademark in question." is a representative of "ASUNARO PHARMACEUTICAL INDUSTRY CO. and which appears to be the seller. 6. the former has been authorized by the latter to sell the trademark in question. the other evidence on record conclusively belies the import of exh. At all events. supra). particularly by the last paragraph of section 37 and paragraph 2 of section 31 of R. 2) In this case. acknowledged before a notary public or other officer authorized to administer oaths or perform other notarial acts and certified under the hand and official seal of the notary or other officer. 166. . in disagreement with that of the Director of Patents.A. which we can not make because. however. Although the Director of Patents is the official vested by law with the power to administer the registration of trademarks and tradenames. 5 shows that "OSAKA BOEKI KAISHA. but on a comparison of the spelling. vis-a-vis each other. vs. B simply states that "LIONPAS" is "manufactured exclusively for Petra Hawpia & Co. .. the signature is not legible. and have found none. unsigned. Director of Patents. 2. the "SALONPAS" mark is not before us. 6." There is no proof that as such representative. exh. 5 is not acknowledged. size or format of the trademarks. Exh.". exh." is not described. We have thumbed the record in quest of any definitive evidence that it is a correct translation of the Japanese characters found on another unmarked and unpaged sheet. on which is typewritten a certification that the signatures of the presidents of the two named companies (referring to the signatures in exh. unpaged.) (Emphasis ours) The assignment must be in writing. but that it is the owner of the trademark "LIONPAS" (par. As a matter of fact.". the applicant is not entitled under the law to register it in its name (Operators. 6) "have been duly written by themselves". A careful scrutiny of exh. neither averment can be accorded the weight of an assignment of ownership of the trademark in question under the Trade Mark Law. is merely a representative of the manufacturer "ASUNARO PHARMACEUTICAL INDUSTRY CO. which provide as follows: The registration of a mark under the provisions of this section shall be independent of the registration in the country of origin and the duration." Not being the owner of the trademark "LIONPAS" but being merely an importer and/or distributor of the said penetrative plaster. A states that the applicant is merely the "exclusive distributor" in the Philippines of the "LIONPAS" penetrative plaster. 37. (Sec. on the basis of what we can derive from the record for a comparative study. last par. that the sender of the letter. is not based on a comparison of the appearance. Exh. The "SALONPAS" mark is not before this Court. LTD. as amended. Our meticulous examination of the entire record has failed to yield a sample of such mark. Thus exh. While exh. . This assertion is not tenable. LTD. this sheet is unmarked. exh. It follows from the above disquisition that exhs. exh. for distribution in the Philippines. Moreover. 5 will reveal. 6). shape. Upon the third issue. And our conclusion. 5 on its face appears to have been signed only by someone whose position in the company's "Sundries Dept. Exhibit 6 is a joint "SWORN STATEMENT" which appears to have been executed by the presidents of "OSAKA BOEKI KAISHA. his opinion on the matter of similarity or dissimilarity of trademarks and tradenames is not conclusive upon this Court which may pass upon such determination." in favor of the latter. style. form. 31. although a sheet of paper is attached to exh. exh. We have therefore proceeded to analyze the two marks.". par. and tends to confirm the contents of exhibit 5. the applicant preliminarily asserts that there is no justification for this Court to disturb any finding made by the Director of Patents on appeal. (Sec. It is even contradicted by exh. 6 asserts that the former is not a representative of the latter. "OSAKA BOEKI KAISHA LTD. validity or transfer in the Philippines of such registration shall be governed by the provisions of this Act. sound and pronunciation of the two words. Inc. 6. undated and unsealed. 6 does not bear the acknowledgment contemplated by the aforesaid law. as we have already observed." and "ASUNARO PHARMACEUTICAL INDUSTRY CO. A-1 describes the applicant as the "Philippine sole distributor" of "LIONPAS".

is hereby dismissed. 95 Phil.. "Pas. this Court held in Sapolin Co. Regala. Du Pont. the sound effects are confusingly similar.. 1947. sound very much alike. in his book "TradeMark Law and Practice". Dizon. "Steinway Pianos" and "Steinberg Pianos". I. "Yusea" and "U-C-A".J. Director of Patents. Director of Patents. "Kotex" and "Femetex". Both these words have the same suffix. vs. similarity in sound is of especial significance (Co Tiong Sa vs. Unfair Competition and Trade Marks.B. J. 1 citing Nims. "Cascarete" and "Celborite".L. 1. "Celluloid" and "Cellonite". this Court unequivocally said that "Celdura" and "Cordura" are confusingly similar in sound. concur. pp. "Jantzen" and "Jazz-Sea". Leon Amdur. In Co Tiong vs. "Cutex" and "Cuticlean". pp.. 1966) and may properly become the subject of a trademark by combination with another word or phrase. 2 of the Trade Mark Law requires actual use in the Philippines of not less than two months before application may be filed. and "Seven-Up" and "Lemon-Up". vol. ACCORDINGLY. "SALONPAS" and "LIONPAS". "The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of help of our eyes and must depend entirely on the ear" (Operators. 4th ed. March 31. and the petition below of the respondent Petra Hawpia & Co. In the case at bar.It is our considered view that the trademarks "SALONPAS" and "LIONPAS" are confusingly similar in sound. 1 . And where goods are advertised over the radio. at the cost of the latter respondent. 146. as the sound of the two names is almost the same. Footnotes Sec. The Law of Unfair Competition and Trademarks. Makalintal. Balmaceda. as coming within the purview of the idem sonans rule. "Chartreuse" and "Charseurs". 2d.. J. The registration of "LIONPAS" cannot therefore be given due course. "Zuso" and "Hoo Hoo". 154 F. 67 Phil. Be that as it may. vs. being merely descriptive. "Hebe" and "Meje". The following random list of confusingly similar sounds in the matter of trademarks. Zaldivar and Sanchez. C. 678-679). 419-421. Director of Patents. "PAS".P. when spoken. E. Bengzon. "Silver Flash" and "SupperFlash". 148). culled from Nims. which is used to denote a plaster that adheres to the body with curative powers. Concepcion. JJ. cites. Reyes. vol. the first letter a and the letter s.. Similarity of sound is sufficient ground for this Court to rule that the two marks are confusingly similar when applied to merchandise of the same descriptive properties (see Celanese Corporation of America vs. 795 that the name "Lusolin" is an infringement of the trademark "Sapolin". when the two words are pronounced. supra). Director of Patents. furnishes no indication of the origin of the article and therefore is open for appropriation by anyone (Ethepa vs. will reinforce our view that "SALONPAS" and "LIONPAS" are confusingly similar in sound: "Gold Dust" and "Gold Drop". the decision of the respondent Director of Patents is set aside. Two letters of "SALONPAS" are missing in "LIONPAS". 2. L-20635. Inc.