Esso Standard Eastern, Inc. vs.

Court of Appeals
Facts: ESEI was engaged in selling petroleum products. Its products are identified with its
trademark ESSO. United Cigarette Corporation (UCC), private respondent, purchased La
Oriental Tobacco Corporation and one of the rights acquired was to use of the trademark
ESSO on its cigarettes. ESEI filed a case of trademark infringement on UCC alleging that the
latters use of the mark ESSO was deceptive the public and thus violated ESEIs trademark.
UCC, for its part, argued that since the products it sold and ESEIs products were not of the
same kind or non-competitive, it cannot be considered to have infringed on ESEIs
trademark.
Issue: Can there be trademark infringement when the products containing the alleged
infringed trademark are non-competing and have no relation to the products of the
trademark holder?
Ruling: No because there is no likelihood of confusion or deception on the part of the
purchasing public as to the origin or source of the goods. Implicit in the definition of
infringement under the law is the concept that the goods must be so related that there is a
likelihood either of confusion of goods or business.
It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum
products, and the product of respondent, cigarettes, are non-competing. 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, or is actually, deceived and misled that they came from the
same maker or manufacturer.
For non-competing goods may be those which, though they are not in actual competition, are
so related to each other that it might reasonably be assumed that they originate from one
manufacturer. Non-competing goods may also be those which, being entirely unrelated,
could not reasonably be assumed to have a common source. In the former case of related
goods, confusion of business could arise out of the use of similar marks; in the latter case of
non-related goods, it could not.
Goods are related when they belong to the same class or have the same descriptive
properties; when they possess the same physical attributes or essential characteristics with
reference to their form, composition, texture or quality. They may also be related because
they serve the same purpose or are sold in grocery stores.
In the instant case, the goods are obviously different from each other with "absolutely no iota
of similitude." 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. 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. Indeed, 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 SC
considered the difference also of their channels of trade and the general differences in the
appearance of the marks in ruling.
Mcdonalds Corp. vs. MacJoy Food Corp.
Facts: Petitioner opposed respondents application for registration of its trademark MACJOY
& DEVICE for fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos,
sandwiches, halo-halo and steaks under classes 29 and 30 of the International Classification
of Goods.
Petitioner claimed that the trademark MACJOY & DEVICE so resembles its corporate logo
and its other distinctive marks such that when used on identical or related goods, the
trademark applied for would confuse or deceive purchasers into believing that the goods
originate from the same source or origin.
Respondent, for its part, averred that its use of said mark would not confuse affiliation with
the petitioners restaurant services and food products because of the differences in the design
and detail of the two (2) marks.
The IPO ruled in petitioners favor employing the dominancy test whereas, on appeal, the CA
ruled in favor of respondent employing the holistic test.**
Issue: (1) Which test to determine likelihood of confusion should be used here, the
dominancy or holistic test?
(2) Is there a confusing similarity between the MCDONALDS marks of the petitioner and the
respondents MACJOY & DEVICE trademark when applied to Classes 29 and 30 of the
International Classification of Goods, i.e., food and ingredients of food?
Ruling:
(1) While we [SC] agree with the CAs detailed enumeration of differences between the two
competing trademarks herein involved, the holistic test is not the one applicable in this case,
the dominancy test being the one more suitable. In recent cases with a similar factual milieu
as here, the Court has consistently used and applied the dominancy test in determining
confusing similarity or likelihood of confusion between competing trademarks.
(2) Yes. Applying the dominancy test to the instant case, the Court finds that herein
petitioners MCDONALDS and respondents MACJOY marks are confusingly similar with each
other such that an ordinary purchaser can conclude an association or relation between the
marks.
To begin with, both marks use the corporate M design logo and the prefixes Mc and/or Mac
as dominant features. 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.e. in an arch-like, capitalized and
stylized manner.
Besides and most importantly, both trademarks are used in the sale of fastfood products.
Indisputably, the respondents trademark application for the MACJOY & DEVICE trademark
covers goods under Classes 29 and 30 of the International Classification of Goods, namely,
fried chicken, chicken barbeque, burgers, fries, spaghetti, etc. Likewise, the petitioners
trademark registration for the MCDONALDS marks in the Philippines covers goods which
are similar if not identical to those covered by the respondents application.
**[NOTE: In determining similarity and likelihood of confusion, jurisprudence has developed
two tests, the dominancy test and the holistic test. The dominancy test focuses on the
similarity of the prevalent features of the competing trademarks that might cause confusion
or deception. 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. Under the latter test, a comparison of the words is not the only
determinant factor.]
Prosource Intl vs. Horphag Research
Facts: Respondent filed a complaint for trademark infringement against petitioner for the
latters use of the mark PCO-GENOLS which the former claimed to be confusingly similar to
its trademark PYCNOGENOL. Petitioner, for its part, contended among others that the two
marks were not confusingly similar, and that since it discontinued the use of the mark prior
to the institution of the infringement case, it cannot be held liable.
Issue: Is there be a confusing similarity between the trademarks used by the parties for
purposes of establishing infringement?
Ruling: Yes. Applying the dominancy test, both the word[s] PYCNOGENOL and PCO-GENOLS
have the same suffix GENOL which on evidence, appears to be merely descriptive and furnish
no indication of the origin of the article and hence, open for trademark registration by the
plaintiff thru combination with another word or phrase such as PYCNOGENOL. Furthermore,
although the letters Y between P and C, N between O and C and S after L are missing in the
[petitioners] mark PCO-GENOLS, nevertheless, when the two words are pronounced, the
sound effects are confusingly similar not to mention that they are both described by their
manufacturers as a food supplement and thus, identified as such by their public consumers.
And although there were dissimilarities in the trademark due to the type of letters used as
well as the size, color and design employed on their individual packages/bottles, still the
close relationship of the competing products name in sounds as they were pronounced,
clearly indicates that purchasers could be misled into believing that they are the same
and/or originates from a common source and manufacturer.
*petitioners 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,
petitioner had infringed respondents product by using the trademark PCO-GENOLS.