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Faberge v.

IAC and Co Beng Kay


Facts: Co Beng Kay applied for the registration of the trademark 'BRUTE' for its underwear
(briefs) products. The petitioner, an international company doing business here in the Philippines
opposed on the ground that there is similarity with their own symbol (BRUT and Brut33 &
Device) used on its aftershave, deodorant, cream shave, hairspray and hair shampoo/soaps and
that it would cause injury to their business reputation.
The petitioner never applied for registration of said trademark for its brief products but insisted
during trial that it intends to do the same in the future. Respondents argued that despite them not
selling similar products with the respondent, confusion among the buyers is likely to occur since
their products are sold in the same section in most department stores (Mens section).The Patent
Office allowed Co Beng Kay the registration and this was further affirmed by the Court of
Appeals.
Issue: Whether there is confusing similarity between the challenged marks that 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. Faberge, in its certificate of
registration, only registered the mark for use in its aftershave, deodorant, cream shave, hair spray
and hair shampoo/soap products. It should be emphasized that unless the congress chooses to
amend the law the protective mantle of the Trademark Law extends only to the goods used by the
first user as specified in the certificate of registration.
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). The court also took note of the
clear differences between the two marks to wit:
Opposers 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 opposers name FABERGE and a notation
Creme Shave.
On the other hand, respondents mark as shown in Exh. 4A 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 respondents labels are the pictorial representation of briefs which
unmistakably suggest that the product contained in the box container is that of a
mans brief.

Asia Brewery v. San Miguel Corporation


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: 1. Whether Asia Brewery infringed upon the trademark of SMC.
2. Whether Asia Brewery committed an act of unfair competition.
Held:
1.
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 no other similarities between the two. As found by the Supreme Court, among others
they are different on the following features:
a. 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.
b. 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.
c. 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.
d. SMC bottles have no slogans written on them while Asia Brewerys bottles have a
copyrighted slogan written on them that is Beer na Beer.

e. 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.
Further, The dominant feature of SMCs trademark is San Miguel Pale Pilsen while
ABIs is Beer Pale Pilsen. The word Beer does not appear in SMCs product, nor the words
San Miguel appear in ABIs product. Neither the sound, spelling or appearance can Beer Pale
Pilsen be said to be confusingly similar to San Miguel Pale Pilsen. San Miguel does not have
exclusive rights to the generic or descriptive words pale and pilsen.

Asia Brewery is also not guilty of unfair competition for unfair competition is the
employment of deception or any other means contrary to good faith by which a person shall pass
off the goods manufactured by him for those of another who has already established goodwill for
his similar goods. The universal test for this is whether the public is likely to be deceived. Actual
or probable deception and confusion on the part of the customers by reason of defendants
practices must appear.
2.

However, this is unlikely to happen in the case at bar for consumers generally order beer
by brand (Alam na alam natin yan! hahahaha). Also, the fact that Asia Brewery also uses
amber-colored steinie bottles, as mentioned, cannot constitute unfair competition for Asia
Brewery did not copy SMCs bottle. SMC did not invent but merely borrowed the steinie bottle
from abroad. Likewise, amber is the most effective color in preventing transmission of light thus
providing maximum protection to beer. 320 ml is likewise the standard prescribed under
Metrication Circular No. 778. The fact that it is the first to use the steinie bottle does not give
SMC a vested right to use it to the exclusion of everyone else. Nobody can acquire any exclusive
right to market articles supplying the simple human needs in containers or wrappers of the
general form, size and character commonly and immediately used in marketing such articles.
Justice Cruzs Dissenting opinion (Baka itanong):
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. (Del Monte vs CA & Sunshine Sauce)

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