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Asia Brewery, Inc.

vs Court of Appeals 224 SCRA 437


FACTS: In September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for allegedly
infringing upon their trademark on their beer product popularly known as San Miguel Pale
Pilsen; that Asia Brewerys Beer na Beer product, by infringing upon SMCs trademark has
committed unfair competition as Beer na Beer creates confusion between the two products.
The RTC ruled in favor of Asia Brewery but the Court of Appeals reversed the RTC.
ISSUE: Whether or not Asia Brewery infringed upon the trademark of SMC.
HELD: No. Both products are manufactured using amber colored steinie bottles of 320 ml. Both
were labeled in a rectangular fashion using white color paint. But other than these similarities,
there are salient differences between the two. As found by the Supreme Court, among others
they are the following:
1. The dominant feature of SMCs trademark are the words San Miguel Pale Pilsen while that
of Asia Brewerys trademark is the word Beer. Nowhere in SMCs product can be seen the
word Beer nor in Asia Brewerys product can be seen the words San Miguel Pale Pilsen.
Surely, someone buying Beer na Beer cannot mistake it as San Miguel Pale Pilsen beer.
2. The bottle designs are different. SMCs bottles have slender tapered neck while that of Beer
na Beer are fat. Though both beer products use steinie bottles, SMC cannot claim that Asia
Brewery copied the idea from SMC. SMC did not invent but merely borrowed the steinie bottle
from abroad and SMC does not have any patent or trademark to protect the steinie bottle shape
and design.
3. In SMC bottles, the words pale pilsen are written diagonally while in Beer na Beer, the
words pale pilsen are written horizontally. Further, the words pale pilsen cannot be said to
be copied from SMC for pale pilsen are generic words which originated from Pilsen,
Czechoslovakia. Pilsen is a geographically descriptive word and is non-registrable.
4. SMC bottles have no slogans written on them while Asia Brewerys bottles have a copyrighted
slogan written on them that is Beer na Beer.
5. In SMC bottles, it is expressly labeled as manufactured by SMC. In Asia Brewery beer
products, it is likewise expressly labeled as manufactured by Asia Brewery. Surely, there is no

intention on the part of Asia Brewery to confuse the public and make it appear that Beer na
Beer is a product of SMC, a long-established and more popular brand.
Only registered trade marks, trade names and service marks are protected against infringement or
unauthorized use by another or others. The use of someone elses registered trademark, trade name or
service mark is unauthorized, hence, actionable, if it is done without the consent of the registrant. (Ibid.)
The registered trademark of SMC for its pale pilsen beer is:
San Miguel Pale Pilsen With Rectangular Hops and Malt Design.

Justice Cruz Dissenting:


A number of courts have held that to determine whether a trademark has been infringed, we
must consider the mark as a whole and not as dissected. If the buyer is deceived, it is
attributable to the marks as a totality, not usually to any part of it. The court therefore should be
guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the
value of which may be dissipated as soon as the court assumes to analyze carefully the
respective features of the mark.

Emerald Garment Manufacturing Corporation vs Court of Appeals 251 SCRA 600


FACTS: In 1981, H.D Lee Co., Inc., a foreign company, filed an opposition against the trademark
application of Emerald Garment. Allegedly, the trademark Stylistic Mr. Lee sought to be
applied for by Emerald Garment is too confusingly similar with the brand Lee which has for
its variations Lee Riders, Lee Sures, and Lee Leens. The Director of Patents as well as the
Court of Appeals ruled in favor of H.D. Lee Co.
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.
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.