Fredco Manufacturing Corporation v.

President and Fellows of Harvard College

(G.R. No. 185917)
Facts:
P, a corporation organized and existing under the laws of the Philippines, filed for
cancellation of registration against R, a corporation organized and existing under the
laws of US, for the mark Harvard Veritas Shield Symbol for decals, tote bags,
serving trays, sweatshirts, t-shirts, hats and flying discs. P alleged that the mark
Harvard for t-shirts, polo shirts, sandos, briefs, jackets and slacks was first used in
the Philippines by New York Garments, a domestic corporation and Rs predecessorin-interest.
R, on the other hand, alleged that it is the lawful owner of the name and mark
Harvard in numerous countries worldwide, including the Philippines. The name and
mark Harvard was adopted in 1639 as the name of Harvard College of
Cambridge, Massachusetts, U.S.A. The name and mark Harvard was allegedly
used in commerce as early as 1872. Harvard University is over 350 years old and is a
highly regarded institution of higher learning in the United States and throughout the
world. Harvard University promotes, uses, and advertises its name Harvard
through various publications, services, and products in foreign countries,
including the Philippines.
R alleged it discovered, through its international trademark watch program, Ps
website which advertises and promotes the brand name Harvard Jeans USA
without their consent.
R filed an administrative complaint against P for TMI/UC with damages.
BLA-IPO cancelled Rs registration of the mark Harvard only with respect to goods
falling under Class 25 for being confusingly similar.
R appealed before the ODG-IPO which reversed the decision of the BLA-IPO ruling
that more than the use of the trademark in the Philippines, the applicant must be the
owner of the mark sought to be registered and noting that the mark covered by Rs
registration is not only the word Harvard but also the logo, emblem or symbol of R.
P filed a petition for review before the CA which affirmed the decision of the ODGIPO. P filed a MR but was denied for lack of merit.
Issue:
Whether or not there is Trade Name/Business Name Infringement.
Ruling:
The petition has no merit.

Second, the Philippines and the United States of America are both signatories to the
Paris Convention for the Protection of Industrial Property (Paris Convention). Articles
8 of the Paris Convention state:
ARTICLE 8. A trade name shall be protected in all the countries of the Union without
the obligation of filing or registration, whether or not it forms part of a trademark.
Thus, this Court has ruled that the Philippines is obligated to assure nationals of
countries of the Paris Convention that they are afforded an effective protection
against violation of their intellectual property rights in the Philippines in the same way
that their own countries are obligated to accord similar protection to Philippine
nationals.
Article 8 of the Paris Convention has been incorporated in Section 37 of R.A. No. 166,
as follows:
Section 37.Rights of foreign registrants. Persons who are nationals of, domiciled
in, 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 relating to
marks or trade-names, or the repression of unfair competition to which the Philippines
may be a party, 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, except as provided in the following paragraphs of this section.
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.
x xxx (Emphasis supplied)
Thus, under Philippine law, a trade name of a national of a State that is a party to the
Paris Convention, whether or not the trade name forms part of a trademark, is
protected without the obligation of filing or registration.
Harvard is the trade name of the world famous Harvard University, and it is also a
trademark of Harvard University. Under Article 8 of the Paris Convention, as well
as Section 37 of A. No. 166, Harvard University is entitled to protection in the
Philippines of its trade name Harvard even without registration of such trade name
in the Philippines. This means that no educational entity in the Philippines can use the
trade name Harvard without the consent of Harvard University. Likewise, no entity in
the Philippines can claim, expressly or impliedly through the use of the name and
mark Harvard, that its products or services are authorized, approved, or
licensed by, or sourced from, Harvard University without the latters consent.
WHEREFORE, we DENY the petition. We AFFIRM the CA Decision and Resolution.

First, Fredcos registration of the mark "Harvard" and its identification of origin as
"Cambridge, Massachusetts" falsely suggest that Fredco or its goods are connected
with Harvard University, which uses the same mark "Harvard" and is also located in
Cambridge, Massachusetts. This can easily be gleaned from the following oblong
logo of Fredco that it attaches to its clothing line:
Fredcos registration of the mark "Harvard" should not have been allowed because
Section 4(a) of R.A. No. 166 prohibits the registration of a mark "which may
disparage
or falsely
suggest
a
connection
with persons,
living
or
dead, institutions, beliefs x x x." Section 4(a) of R.A. No. 166 provides:
Section 4. Registration of trade-marks, trade-names and service- marks on the
principal register. There is hereby established a register of trade-mark, tradenames and service-marks which shall be known as the principal register. The owner
of a trade-mark, a trade-name or service-mark used to distinguish his goods,
business or services from the goods, business or services of others shall have the
right to register the same on the principal register, unless it:
(a) Consists of or comprises immoral, deceptive or scandalous manner, or matter
which may disparage or falsely suggest a connection with persons, living or
dead, institutions, beliefs, or national symbols, or bring them into contempt or
disrepute;
(b) x x x (emphasis supplied)
Fredcos use of the mark "Harvard," coupled with its claimed origin in Cambridge,
Massachusetts, obviously suggests a false connection with Harvard University. On
this ground alone, Fredcos registration of the mark "Harvard" should have been
disallowed.
Indisputably, Fredco does not have any affiliation or connection with Harvard
University, or even with Cambridge, Massachusetts. Fredco or its predecessor New
York Garments was not established in 1936, or in the U.S.A. as indicated by Fredco
in its oblong logo. Fredco offered no explanation to the Court of Appeals or to the
IPO why it used the mark "Harvard" on its oblong logo with the words "Cambridge,
Massachusetts," "Established in 1936," and "USA." Fredco now claims before this
Court that it used these words "to evoke a lifestyle or suggest a desirable aura of
petitioners clothing lines." Fredcos belated justification merely confirms that it
sought to connect or associate its products with Harvard University, riding on the
prestige and popularity of Harvard University, and thus appropriating part of
Harvard Universitys goodwill without the latters consent.
Section 4(a) of R.A. No. 166 is identical to Section 2(a) of the Lanham Act, 20 the
trademark law of the United States. These provisions are intended to protect
the right of publicity of famous individuals and institutions from commercial
exploitation of their goodwill by others. 21 What Fredco has done in using the mark
"Harvard" and the words "Cambridge, Massachusetts," "USA" to evoke a "desirable
aura" to its products is precisely to exploit commercially the goodwill of Harvard
University without the latters consent. This is a clear violation of Section 4(a) of
R.A. No. 166. Under Section 17(c)22 of R.A. No. 166, such violation is a ground for
cancellation of Fredcos registration of the mark "Harvard" because the registration
was obtained in violation of Section 4 of R.A. No. 166.

There is no question then, and this Court so declares, that "Harvard" is a wellknown name and mark not only in the United States but also internationally,
including the Philippines. The mark "Harvard" is rated as one of the most famous
marks in the world. It has been registered in at least 50 countries. It has been used
and promoted extensively in numerous publications worldwide. It has established a
considerable goodwill worldwide since the founding of Harvard University more than
350 years ago. It is easily recognizable as the trade name and mark of Harvard
University of Cambridge, Massachusetts, U.S.A., internationally known as one of the
leading educational institutions in the world. As such, even before Harvard
University applied for registration of the mark "Harvard" in the Philippines, the mark
was already protected under Article 6bis and Article 8 of the Paris Convention.
Again, even without applying the Paris Convention, Harvard University can invoke
Section 4(a) of R.A. No. 166 which prohibits the registration of a mark "which may
disparage
or falsely
suggest
a
connection
with persons,
living
or
dead, institutions, beliefs x x x."
WHEREFORE, we DENY the petition. We AFFIRM the 24 October 2008 Decision
and 8 January 2009 Resolution of the Court of Appeals in CA-G.R. SP No. 103394.

ASIA BREWERY, INC. VS. COURT OF APPEALS

G.R. No. 103543, July 5 1993

With SMC logo

No logo

Price: P7.00 per bottle

Price: P4.25 per bottle

Based on the dissimilarity in their dominant features as well as in sound, spelling &
appearance, Beer na Beer cannot be said to be similarly confusing with San Miguel
Pale Pilsen.

FACTS:
San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for
infringement of trademark and unfair competition on account of the latter's BEER
PALE PILSEN or BEER NA BEER product which has been competing with SMC's
SAN MIGUEL PALE PILSEN.

The fact that the words pale pilsen are part of ABI's trademark does not constitute an
infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are
generic words descriptive of the color ("pale"), of a type of beer ("pilsen"), which
originated in the City of Pilsen, Czechoslovakia.

The trial court dismissed the complaint.

On appeal, the Court of Appeals reversed the decision of the trial court and found ABI
guilty of infringement of trademark and unfair competition.
ISSUE:
Whether or not Asia Brewery Inc. committed infringement of trademark and unfair
competition against San Miguel Corporation.
HELD:
No infringement. Infringement is determined by the "test of dominancy" rather than by
differences or variations in the details of one trademark and of another. If the
competing trademark 1) contains the main or essential or dominant features of
another, and 2) confusion and deception is likely to result, infringement takes place.
In the instant case, the dominant feature of SMC is the words SAN MIGUEL PALE
PILSEN with elaborate serifs at the beginning and end of the letters "S" and "M."
While the dominant feature of ABI's trademark is the name: BEER PALE PILSEN
with the word "Beer" written in large amber letters. Besides the dissimilarity in their
dominant feature, the following other dissimilarities in the appearance of the
competing products abound:

No unfair competition. Sec 29, Republic Act No. 166 as amended describes unfair
competition 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, or his business, or services, for those of another who has already established
goodwill for his similar goods, business or services, or any acts calculated to produce
the same result. Therefore, the universal test question is whether the public is likely to
be deceived.
In this case, the use of similar but unidentical bottle size, shape & color is not unlawful
as aptly explained. The 320 ml capacity is the standard prescribed by the Dept of
Trade. The amber color is a functional feature for it prevents transmission of light and
provides the maximum protection to beer. Being of functional or common use, SMCs
being the first to use does not give SMC exclusive right to such use. The bottle shape
is usually standardized just as a ketchup or vinegar bottle with its familiar elongated
neck, thereby dismissing the attendance of bad faith or the intention to deceive the
public by ABI.

Moreover, buyers generally order their beer by brand in the supermarket, sari-sari
stores, restaurants; thus dismissing the idea that Beer na Beer can be passed off as
San Miguel Beer. There can be no confusion or the likelihood of deception among the
consumers.

San Miguel

Beer na Beer

Bottle has a slender tapered neck

Fat, bulging neck.

Bottle cap is stamped with a coat of arms and the words

Stamped

"San Miguel Brewery Philippines" encircling the same

surrounded by the words "Asia Brewery Incorporated

with

the

name

"BEER"

in

the

center,

Philippines.
"Bottled by the San Miguel Brewery, Philippines,"

"Especially brewed

and

Incorporated, Philippines."

bottled

by Asia

Brewery

The fact that the words pale pilsen are part of ABI's trademark does not constitute an
infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are
generic words descriptive of the color ("pale"), of a type of beer ("pilsen"), which is a
light bohemian beer with a strong hops flavor that originated in the City of Pilsen in
Czechoslovakia and became famous in the Middle Ages. "Pilsen" is a "primarily
geographically descriptive word," (Sec. 4, subpar. [e] Republic Act No. 166, as
inserted by Sec. 2 of R.A. No. 638) hence, non-registerable and not appropriable by
any beer manufacturer. The Trademark Law provides:
Sec. 4. . . .. The owner of trade-mark, trade-name or service-mark used to distinguish
his goods, business or services from the goods, business or services of others shall
have the right to register the same [on the principal register], unless it:
xxx xxx xxx
(e) Consists of a mark or trade-name which, when applied to or used in connection
with the goods, business or services of the applicant is merely descriptive or
deceptively misdescriptive of them, or when applied to or used in connection with the
goods, business or services of the applicant is primarily geographically descriptive or
deceptively misdescriptive of them, or is primarily merely a surname." (Emphasis
supplied.)
The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if
they are part of its registered trademark: SAN MIGUEL PALE PILSEN, any more than
such descriptive words as "evaporated milk," "tomato ketchup," "cheddar cheese,"
"corn flakes" and "cooking oil" may be appropriated by any single manufacturer of
these food products, for no other reason than that he was the first to use them in his
registered trademark. In Masso Hermanos, S.A. vs. Director of Patents, 94 Phil. 136,
139 (1953), it was held that a dealer in shoes cannot register "Leather Shoes" as his
trademark because that would be merely descriptive and it would be unjust to deprive
other dealers in leather shoes of the right to use the same words with reference to
their merchandise. No one may appropriate generic or descriptive words. They
belong to the public domain (Ong Ai Gui vs. Director of Patents, 96 Phil. 673, 676
[1955]):
A word or a combination of words which is merely descriptive of an article of trade, or
of its composition, characteristics, or qualities, cannot be appropriated and protected
as a trademark to the exclusion of its use by others. . . . inasmuch as all persons have
an equal right to produce and vend similar articles, they also have the right to
describe them properly and to use any appropriate language or words for that
purpose, and no person can appropriate to himself exclusively any word or
expression, properly descriptive of the article, its qualities, ingredients or
characteristics, and thus limit other persons in the use of language appropriate to the
description of their manufactures, the right to the use of such language being
common to all.

Moreover, SMC's brand or trademark: "SAN MIGUEL PALE PILSEN" is not infringed
by ABI's mark: "BEER NA BEER" or "BEER PALE PILSEN." ABI makes its own bottle
with a bulging neck to differentiate it from SMC's bottle, and prints ABI's name in three
(3) places on said bottle (front, back and bottle cap) to prove that it has no intention to
pass of its "BEER" as "SAN MIGUEL."
There is no confusing similarity between the competing beers for the name of one is
"SAN MIGUEL" while the competitor is plain "BEER" and the points of dissimilarity
between the two outnumber their points of similarity.

Del Monte vs Court of Appeals and Sunshine Sauce

181 SCRA 410 Mercantrile Law Intellectual Property Law Law on Trademarks,
Service Marks and Trade Trademark Infringement Unfair Competition
FACTS:
Del Monte Corporation is an American corporation which is not engaged in business
in the Philippines. Though not engaging business here, it has given authority to
Philippine Packing Corporation (Philpack) the right to manufacture, distribute and sell
in the Philippines various agricultural products, including catsup, under the Del Monte
trademark and logo. In 1965, Del Monte also authorized Philpack to register with the
Patent Office the Del Monte catsup bottle configuration. Philpack was issued a
certificate of trademark registration under the Supplemental Register.

Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing was using
Del Monte bottles in selling its products and that Sunshine Sauces logo is similar to
that of Del Monte. The RTC of Makati as well as the Court of Appeals ruled that there
was no infringement because the trademarks used between the two are different in
designs and that the use of Del Monte bottles by Sunshine Sauce does not constitute
unfair competition because as ruled in Shell Company vs Insular Petroleum: selling
oil in containers of another with markings erased, without intent to deceive, was not
unfair competition.
ISSUE:
Whether or not there is unfair competition and infringement in the case at bar.
HELD:
Yes. The Supreme Court recognizes that there really are distinctions between the
designs of the logos or trademarks of Del Monte and Sunshine Sauce. However, it
has been that side by side comparison is not the final test of similarity. Sunshine
Sauces logo is a colorable imitation of Del Montes trademark. The word catsup in
both bottles is printed in white and the style of the print/letter is the same. Although
the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a
tomato. The person who infringes a trade mark does not normally copy out but only
makes colorable changes, employing enough points of similarity to confuse the public
with enough points of differences to confuse the courts. What is undeniable is the fact
that when a manufacturer prepares to package his product, he has before him a
boundless choice of words, phrases, colors and symbols sufficient to distinguish his

product from the others. When as in this case, Sunshine chose, without a reasonable
explanation, to use the same colors and letters as those used by Del Monte though
the field of its selection was so broad, the inevitable conclusion is that it was done
deliberately to deceive.

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

Compare it with the case of Asia Brewery vs CA and SMC.

Note: This case (Del Monte case) is a prime example of how to apply the Holistic
Test as opposed to the Asia Brewery case which applied the Dominancy Test.

COMPAIA GENERAL DE TABACOS DE FILIPINAS vs. ALHAMBRA CIGAR AND

CIGARETTE MANUFACTURING CO.

The opinion of the plaintiff must fail. It shows that in not a single instance in
the history of the plaintiff corporation, so far as is disclosed by the record, has a
package of its cigarettes gone into the market, either at wholesale or retail with the
word Isabela alone on the package as a separate or distinct word or name.

FACTS:
It is admitted that plaintiffs trade name as evidenced by the certificate issued
under the Spanish regime, consists solely of the words La Flor de la Isabela.
Plaintiff does not claim that the word Isabela has been registered by it as a trade
name or that it has a title from any source conferring on it the exclusive right to use
that word.
Defendant began the manufacture of cigarettes, offering them to the public in
packages on the front side of each of which appeared the words Alhambra Isabelas.
Action is brought to enjoin the defendant from using the word Isabelas.
The exclusive right to use this name, plaintiff claim arises from two causes:
First, the contraction of the phrase La Flor de la Isabela into the word Isabela by
popular expression and use; and second, the use for more than twenty years of the
word Isabela.
Judgment was for plaintiff and defendant appealed.
ISSUE:
Whether defendants use of the word Alhambra Isabela is an infringement to the use
of trade name.
HELD:
The statute prohibits the registration of a trade name when the trade name
represents the geographical place of production or origin of the products or goods to
which the trade name refers, or when it is merely the name, quality or description of
the merchandise with respect to which the trade name is to be used. In such cases,
therefore, no trade name can exist.

The two claims of the plaintiff are identical; for, there could have been no
contraction brought about by popular expression except after long lapse of time. The
contraction of the phrase in to the word would create no rights, there being no
registration, unless it resulted from long use.

Even admitting that the word Isabela may have been appropriable by plaintiff
as a trade name at the time it began to use it, the evidence showing that it had been
exclusively appropriated by the plaintiff would have to be very strong to establish the
fact of appropriation and the right to exclusive use. The law as it stands and has
stood since the Royal Decree of 1888 prohibits the use of a geographical name as a
trade name.
The judgment appealed from is reversed

Esso Standard v CA Digest

Faberge v IAC Digest

G.R. No. L-29971

Facts of the Case:

G.R. No. 71189, November 4, 1992

The petitioner Esso Standard is a foreign corporation duly licensed to do business in

the philippines. it is engaged in the sale of petroleum products which are identified by
the trademarl 'Esso'. Esso is a successor of Standard Vacuum Oil Co, it registered as
a business name with the Bureau of Commerce in 1962. United Cigarette is a
domestic corporation engaged in the manufacture and sale of cigarettes. it acquired
the business from La Oriental Tobacco Corp including patent rights, once of which is
the use of 'Esso' on its cigarettes.

Facts of the Case:

The petitioner filed a trademark infringement case alleging that it acquired goodwill to
such an extent that the buying public would be deceived as ti the quality and origin of
the said products to the detriment and disadvantage of its own products. The lower
court found United Cigarette guilty of infringement. Upon appeal, the Court of Appeals
ruled that there was no infringment in this case.
Issue: Is there infringement committed?
Ruling: NONE. Infringement is defined by law as the use without the consent of the
trademark owner of any reproduction, counterfeit, copy or colorable imitation of any
registered mark or tradename which would likely cause confusion or mistake or
deceive purchasers or others as to the source or origin of such goods.
The products of both parties (Petroleum and cigarettes) are non-competing. But as to
whether trademark infringement exists depend on whether or not the goods are so
related that the public may be or is actually deceived and misled that they come from
the same maker. Under the Related Goods Theory, goods are related when they
belong to the same class or have the same descriptive properties or when they have
same physical attributes. In these case, the goods are absolutely different and are so
foreign from each other it would be unlikely for purchasers to think that they came
from the same source. Moreover, the goods flow from different channels of trade and
are evidently different in kind and nature.

Co Beng Kay applied for the registration of the trademark 'BRUTE' to be used it its
underwear (briefs) products. The petitioner opposed on the ground that there is
similarity with their own symbol (BRUT, Brut33 & Device) used on its aftershave,
deodorant, cream shave, hairspray and hair shampoo/soaps and that it would cause
injury to their business reputation. It must be noted that the petitioner never applied
for registration of said trademark for its brief products. The Patent Office allowed Co
Beng Kay the registration and this was further affirmed by the Court of Appeals.
Issue: Is there confusing similarity between the challenged marks and that its use
would likely cause confusion on the part of the purchasers?
HELD: NONE. Co Beng Kay may rightly appropriate the mark. In this case Sec. 20
(Philippine Intellectual Property Law) is controlling. The certificate of registration
issued confers the exclusive right to use its own symbol only to those goods specified
by the first user in the certificate, subject to any conditions or limitations stated
therein. Moreover, the two products are so dissimilar that a purchaser of one (a brief)
would not be misled or mistaken into buying the other (such as an aftershave).

On the other hand, private respondent echoes the glaring difference in physical
appearance of its products with petitioner's own goods by stressing the observations
of the Director of Patents on May 3, 1978:
Considered in their entireties as depicted in the parties' sample box and can
containers, the involved trademarks are grossly different in their overall appearance
that even at a distance a would-be purchaser could easily distinguish what is BRUTE
brief and what is BRUT after shave lotion, lotion and the like. Opposer's mark BRUT
or BRUT 33, as shown in Exhibit "6", is predominantly colored green with a blue and
white band at the middle portion of the container. Also appearing therein in bold
letters is opposer's name "FABERGE" and a notation "Creme Shave". On the other
hand, respondent's mark as shown in Exh. "4-A" prominently displays the
representation of a muscular man, underneath of which appears the trademark
BRUTE with a notation "Bikini Brief" . . . Equally visible at the other portions of
respondent's labels are the pictorial representation of "briefs" which unmistakably
suggest that the product contained in the box container is that of a man's brief. The
fact therefore is obvious that the goods upon which the conflicting trademarks are
used are clearly different and the intended purpose of such goods are likewise not the
same. Accordingly, a purchaser who is out in the market for the purpose of buying
respondent's BRUTE brief would definitely be not mistaken or misled into buying
instead opposer's BRUT after shave lotion or deodorant.
Additional, the meaning or connotation of the bare word marks of opposer, BRUT, and
BRUTE of respondent, are clearly different and not likely to be confused with each
other. BRUT simply means "dry", and also, "to browse"; while BRUTE means
"ferocious, sensual", and in Latin, it signifies "heavy". Gleaned from the respective
meanings of the two marks in question, they both suggest the resultant effects of the
application of the products, upon which the said trademarks are employed, which fact
all the more renders confusion or deception of purchasers a remote possibility.
Issue: whether private respondent may appropriate the trademark "BRUTE" for the
briefs it manufactures and sells to the public albeit petitioner had previously registered
the symbol "BRUT" and "BRUT 33" for its own line
HELD:
Sec. 4. Registration of trade-marks, trade-names and service-marks on the principal
register.
. . . The owner of trademark, trade-name or service-mark used to distinguish his
goods, business or services from the goods, business or services of others shall have
right to register the same on the principal register, unless it:
xxx xxx xxx

4(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, as to be likely, when applied to or
used in connection with the goods, business or services of the applicant, to cause
confusion or mistake or to deceive purchasers.
xxx xxx xxx
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. In as much 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 socalled "eloquent proof that petitioner indeed intended to expand its mark "BRUT" to
other goods"

EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT OF

APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY
TRANSFER and H.D. LEE COMPANY, INC.
G.R. No. 100098, December 29, 1995
FACTS:
On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the
Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for
Cancellation of Registration No. SR 5054 for the trademark "STYLISTIC MR. LEE"
used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts,
shirts and lingerie under Class 25, issued on 27 October 1980 in the name of
petitioner Emerald Garment Manufacturing Corporation.
Private respondent averred that petitioner's trademark "so closely resembled its own
trademark, 'LEE' as previously registered and used in the Philippines cause
confusion, mistake and deception on the part of the purchasing public as to the origin
of the goods.
On 19 July 1988, the Director of Patents rendered a decision granting private
respondent's petition for cancellation and opposition to registration. The Director of
Patents, using the test of dominancy, declared that petitioner's trademark was
confusingly similar to private respondent's mark because "it is the word 'Lee' which
draws the attention of the buyer and leads him to conclude that the goods originated
from the same manufacturer. It is undeniably the dominant feature of the mark.
ISSUE:
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", meaning, 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.
HELD:
The word "LEE" is the most prominent and distinctive feature of the appellant's
trademark and all of the appellee's "LEE" trademarks. It is the mark which draws the
attention of the buyer and leads him to conclude that the goods originated from the
same manufacturer. The alleged difference is too insubstantial to be noticeable. The
likelihood of confusion is further made more probable by the fact that both parties are
engaged in the same line of business.

Although the Court decided in favor of the respondent, the appellee has sufficiently
established its right to prior use and registration of the trademark "LEE" in the
Philippines and is thus entitled to protection from any infringement upon the same.
The dissenting opinion of Justice Padilla is more acceptable.
_____________________________________________________________
ISSUE: Whether or not the decision of the Court of Appeals is correct.
HELD: No. The Supreme Court considered that the trademarks involved as a whole
and ruled that Emerald Garments STYLISTIC MR. LEE is not confusingly similar to
H.D. Lees LEE trademark. The trademark Stylistic Mr. Lee, although on its label
the word LEE is prominent, the trademark should be considered as a whole and not
piecemeal. The dissimilarities between the two marks become conspicuous,
noticeable and substantial enough to matter especially in the light of the following
variables that must be factored in.
First, the products involved in the case at bar are, in the main, various kinds of jeans.
These are not your ordinary household items like catsup, soysauce or soap which are
of minimal cost. Maong pants or jeans are not inexpensive. Accordingly, the casual
buyer is predisposed to be more cautious and discriminating in and would prefer to
mull over his purchase. Confusion and deception, then, is less likely.
Second, like his beer, the average Filipino consumer generally buys his jeans by
brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess,
Wrangler or even an Armani. He is, therefore, more or less knowledgeable and
familiar with his preference and will not easily be distracted.
Finally, in line with the foregoing discussions, more credit should be given to the
ordinary purchaser. Cast in this particular controversy, the ordinary purchaser is not
the completely unwary consumer but is the ordinarily intelligent buyer considering
the type of product involved.
There is no cause for the Court of Appeals apprehension that Emerald Garments
products might be mistaken as another variation or line of garments under H.D. Lees
LEE trademark. As one would readily observe, H.D. Lees variation follows a
standard format LEERIDERS, LEESURES and LEELEENS. It is, therefore,
improbable that the public would immediately and naturally conclude that petitioners
STYLISTIC MR. LEE is but another variation under H.D. Lees LEE mark.
The issue of confusing similarity between trademarks is resolved by considering the
distinct characteristics of each case. In the present controversy, taking into account
these unique factors, we conclude that the similarities in the trademarks in question
are not sufficient as to likely cause deception and confusion tantamount to
infringement.

xxx xxx xxx

Further, H.D. Lee failed to prove in court that it had prior actual commercial use of its
LEE trademark in the Philippines. H.D. Lee did show certificates of registrations for
its brand but registration is not sufficient. Actual use in commerce in the Philippines is
an essential prerequisite for the acquisition of ownership over a trademark pursuant
to Sec. 2 and 2-A of the Philippine Trademark Law (R.A. No. 166).
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.
It would seem quite clear that adoption alone of a trademark would not give exclusive
right thereto. Such right grows out of their actual use. Adoption is not use. One may
make advertisements, issue circulars, give out price lists on certain goods; but these
alone would not give exclusive right of use. For trademark is a creation of use. The
underlying reason for all these is that purchasers have come to understand the mark
as indicating the origin of the wares. Flowing from this is the traders right to
protection in the trade he has built up and the goodwill he has accumulated from use
of the trademark. Registration of a trademark, of course, has value: it is an
administrative act declaratory of a pre-existing right. Registration does not, however,
perfect a trademark right.
Another way of resolving the conflict is to consider the marks involved from the point
of view of what marks are registrable pursuant to Sec. 4 of R.A. No. 166, particularly
paragraph 4 (e):
CHAPTER II-A. The Principal Register
(Inserted by Sec. 2, Rep. Act No. 638.)
Sec. 4. Registration of trade-marks, trade-names and service-marks on the principal
register. There is hereby established a register of trade-marks, trade-names and
service-marks which shall be known as the principal register. The owner of a trademark, trade-name or service-mark used to distinguish his goods, business or services
from the goods, business or services of others shall have the right to register the
same on the principal register, unless it:
xxx xxx xxx
(e) Consists of a mark or trade-name which, when applied to or used in connection
with the goods, business or services of the applicant is merely descriptive or
deceptively misdescriptive of them, or when applied to or used in connection with the
goods, business or services of the applicant is primarily geographically descriptive or
deceptively misdescriptive of them, or is primarily merely a surname; (Emphasis
ours.)

"LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive

ownership over and singular use of said term.
. . . It has been held that a personal name or surname may not be monopolized as a
trademark or tradename as against others of the same name or surname. For in the
absence of contract, fraud, or estoppel, any man may use his name or surname in all
legitimate ways. Thus, "Wellington" is a surname, and its first user has no cause of
action against the junior user of "Wellington" as it is incapable of exclusive
appropriation. 37
In addition to the foregoing, 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, has not acquired ownership over said mark.

baseballs since 1910. On September 29, 1915, he formally registered it as trade-mark

and as trade-name on January 3, 1933.
Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts
on April 11, 1932, and established a factory for the manufacture of said articles in the
year 1937.
The Court of First Instance of Manila absolved the defendant (Ms. Ang) on the
grounds that the two trademarks are dissimilar and are used on different and noncompeting goods; that there had been no exclusive use of the trade-mark by the
plaintiff; and that there had been no fraud in the use of the said trade-mark by the
defendant because the goods on which it is used are essentially different from those
of the plaintiff.
The Court of Appeals reversed said judgment, directing the Director of Commerce to
cancel the registration of the trade-mark "Ang Tibay" in favor of petitioner, and
perpetually enjoining the latter from using said trade-mark on goods manufactured
and sold by her.
Thus, this case, a petition for certiorari.
Issue:
Are the goods or articles or which the two trademarks are used similar or belong to
the same class of merchandise?
Ruling:
Yes, pants and shirts are goods closely similar to shoes and slippers. They belong to
the same class of merchandise as shoes and slippers. They are closely related
goods.

Ana Ang vs. Toribio Teodoro

Facts:
Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark
and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor

The Supreme Court affirmed the judgment of the Court of Appeals and added that
although two non-competing articles may be classified under to different classes by
the Patent Office because they are deemed not to possess the same descriptive
properties, they would, nevertheless, be held by the courts to belong to the same
class if the simultaneous use on them of identical or closely similar trademarks would
be likely to cause confusion as to the origin, or personal source, of the second users
goods. They would be considered as not falling under the same class only if they are
so dissimilar or so foreign to each other as to make it unlikely that the purchaser
would think that the first user made the second users goods.
Section 11 requires the applicant for registration of a trade-mark to state, among
others, "the general class of merchandise to which the trade-mark claimed has been
appropriated." Section 13 provides that no alleged trade-mark or trade name shall be
registered which is identical with a registered or known trade-mark owned by another
and appropriate to the same class of merchandise, or which to nearly resembles

another person's lawful trade-mark or trade-name as to be likely to cause confusion

or mistake in the mind of the public, or to deceive purchasers. And section 2
authorizes the Director of Commerce to establish classes of merchandise for the
purpose of the registration of trade-marks and to determine the particular description
of articles included in each class; it also provides that "an application for registration
of a trade-mark shall be registered only for one class of articles and only for the
particular description of articles mentioned in said application."

antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used in the

treatment of cough.

We have underlined the key words used in the statute: "goods of a similar kin,"
"general class of merchandise," "same class of merchandise," "classes of
merchandise," and "class of articles," because it is upon their implications that the
result of the case hinges. These phrases, which refer to the same thing, have the
same meaning as the phrase "merchandise of the same descriptive properties" used
in the statutes and jurisprudence of other jurisdictions.

DP allowed registration of the Ps trademark, hence this appeal.

The original owner is entitled to the preservation of the valuable link between him and
the public that has been created by his ingenuity and the merit of his wares or
services. Experience has demonstrated that when a well-known trade-mark is
adopted by another even for a totally different class of goods, it is done to get the
benefit of the reputation and advertisements of the originator of said mark, to convey
to the public a false impression of some supposed connection between the
manufacturer of the article sold under the original mark and the new articles being
tendered to the public under the same or similar mark. As trade has developed and
commercial changes have come about, the law of unfair competition has expanded to
keep pace with the times and the element of strict competition in itself has ceased to
be the determining factor. The owner of a trade-mark or trade-name has a property
right in which he is entitled to protection, since there is damage to him from confusion
of reputation or goodwill in the mind of the public as well as from confusion of goods.
The modern trend is to give emphasis to the unfairness of the acts and to classify and
treat the issue as a fraud.

P objected claiming that it will be damaged because ATUSSIN is confusingly similar

to its PERTUSSIN used on a preparation for the treatment of coughs, that the
buying public will be misled into believing that Rs product is that of Ps which
allegedly enjoys goodwill.

Issue:
Whether or not the trademark ATUSSIN may be registered given the fact that
PERTUSSIN another trademark had been previously registered in the Patent Office.
Ruling:
That the word tussin figures as a component of both trademarks is nothing to
wonder at. 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. And appropriately to be considered now is the fact
that, concededly, the tussin (in Pertussin and Atussin) was derived from the Latin
root-word tussis meaning cough.
Tussin is merely descriptive; it is generic; it furnishes to the buyer no indication of
the origin of the goods; it is open for appropriation by anyone. It is accordingly barred
from registration as trademark. With jurisprudence holding the line, we feel safe in
making the statement that any other conclusion would result in appellant having
practically a monopoly of the word tussin in a trademark.
While tussin by itself cannot thus be used exclusively to identify ones goods, it may
properly become the subject of a trademark by combination with another word or
phrase. And this union of words is reflected in petitioners Pertussin and respondents
Atussin, the first with prefix Per and the second with Prefix A.
For the reasons given, the appealed decision of the respondent Director of Patents
giving due course to the application for the registration of trademark ATTUSIN is
hereby affirmed.

Etepha v. Director of Patents (G.R. No. L-20635)

Facts:
R Westmont Pharmaceuticals, Inc., a New York corporation, sought registration of the
trademark ATUSSIN placed on its medicinal preparation of expectorant

HELD:
Yes. x x x The validity of a cause for infringment is predicated upon colorable
imitation. The phrase colorable imitaion 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 giving such attention as a purchaser usually

gives, and to cause him to purchase the one supposing it to be the other.
While tussin by itself cannot thus be used exclusively to identify ones goods,
it may properly become the subject of a trademark by combination with another word
or phrase.
The two labels are entirely different in colors, contents, arrangement of words
theeon, sizes, shapes and general appearance. 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, not even by persons unfamiliar with the two trademarks.
We cannot escape notice of the fact that the two words do not sound alike
when pronounced.

On January 15, 1985, private respondent NSR Rubber Corporation filed an

application for registration of the mark CANON for sandals in the Bureau of Patents,
Trademarks, and Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a
Verified Notice of Opposition alleging that it will be damaged by the registration of the
trademark CANON in the name of private respondent since they were using the same
trademark for their footwear line of products. The private respondent will also use the
name Canon for its footwear products.
Based on the records, the evidence presented by petitioner consisted of its
certificates of registration for the mark CANON in various countries covering goods
belonging to class 2, paints, chemical products, toner, and dye stuff. Petitioner also
submitted in evidence its Philippine Trademark Registration No. 39398, showing its
ownership over the trademark CANON.
The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of
petitioner and giving due course to NSR's application for the registration of the
trademark CANON. Canon Kabushiki Kaisha filed an appeal with the Court of
Appeals that eventually affirmed the decision of the BPTTT.
ISSUE:
Is the use of trademark, CANON, by the private respondent affects the
business of Canon Kabushiki Kaisha who has an existing ownership of a trademark
also known as CANON?
HELD:
The Supreme Court says that ordinarily, the ownership of a trademark or
tradename is a property right that the owner is entitled to protect as mandated by the
Trademark Law. However, when a trademark is used by a party for a product in which
the other party does not deal, the use of the same trademark on the latter's product
cannot be validly objected to.
The BPTTT correctly ruled that since the certificate of registration of petitioner
for the trademark CANON covers class 2 (paints, chemical products, toner, dyestuff),
private respondent can use the trademark CANON for its goods classified as class 25
(sandals). Clearly, there is a world of difference between the paints, chemical
products, toner, and dyestuff of petitioner and the sandals of private respondent.

CANON KABUSHIKI KAISHA vs. COURT OF APPEALS

G.R. No. 120900, July 20, 2000
FACTS: