15-5002

Gomez, Jan-Derrick Royce A.

Mighty Corporation v. E. & J. Gallo Winery

G.R. No. 154342
14 July 2004

FACTS: Gallo Winery is a winery that produces wines and brandy which has registered
trademarks including GALLO and ERNEST & JULIO GALLO trademarks. Mighty
Corporation and La Campana are engaged in the of tobacco business for which they have been
using the GALLO cigarette trademark. Petitioner Gallo Winery filed against Mighty an action for
trademark and trade name infringement and unfair competition.

ISSUE/S: Whether or not Mighty Corporation is liable for trademark infringement and unfair
competition.

DECISION: No. Petition granted.

RATIO: Petitioners never attempted to pass off their cigarettes as those of respondents
GALLO cigarette mark. Under the Paris Convention and the Trademark Law, the protection of
a registered trademark is limited to goods that are identical or similar to those of which such
trademark is registered and only where confusion will be likely. In this case, there is no
opportunity of identical goods as Mighty uses its Gallo trademark for cigarettes while Gallo
Winery uses its trademark for wines and liquor.

DIRECT QUOTATION: The universal test is whether the public is likely to be deceived.
Nothing less than conduct tending to pass off one mans goods or business as that of another
constitutes unfair competition. Actual or probable deception and confusion on the part of
customers by reason of defendants practices must always appear.

RELEVANT PROVISIONS OF LAW:

WIPO Paris Convention Article 6bis: (1) The countries of the Union undertake, ex officio if
their legislation so permits, or at the request of an interested party, to refuse or to cancel the
registration, and to prohibit the use, of a trademark which constitutes a reproduction, an
imitation, or a translation, liable to create confusion, 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 this Convention and used for identical or similar
goods.

IP Code - SECTION 138. Certificates of Registration. A certificate of registration of a mark

shall be prima facie evidence of the validity of the registration, the registrant's ownership of the
mark, and of the registrant's exclusive right to use the same in connection with the goods or
services and those that are related thereto specified in the certificate. (Sec. 20, R.A. No. 165)