Table of Contents

1. Diaz vs People of the Philippines and Levi Strauss Phils. Inc. .............................. 2
2. UYCO, et. al. vs Lo .............................................................................................. 4
3. In-&-Out Burger vs. Sehwani .............................................................................. 4
4. McDonald’s Corporation vs MacJoy Fastfood Corp. ........................................... 5
5. Levi Strauss vs. Tony Lim .................................................................................... 7
6. Shangri-La International Hotel Management, Ltd., et. al. vs. Developers Group
of Companies Inc. .................................................................................................. 8
7. Coffee Partners, Inc. vs. San Francisco Coffee & Roastery................................ 10
8. Manuel Espiritu, et. al. vs. Petron Corporation and Kristina Patricia Enterprises
............................................................................................................................. 13
9. Prosource International Inc. vs Horphag Research, S.A. ................................... 13
10. E.Y. Industrial Sales Inc. vs. Shen Dar Electronics and Machinery Co., Ltd. ..... 15
11. Tanada, et. al. vs. Angara, et. al...................................................................... 16
12. Mirpuri vs. Court of Appeals, Director of Patents and Barbizon Corp. ............ 18
13. McDonald’s Corporation and McGeorge Food Industries vs. L.C. Big Mak
Burger, Inc. .......................................................................................................... 19
14. Mighty Corporation and La Campana Fabrica de Tabaco vs E.&J. Gallo Winery
and The Andresons Group Inc. ............................................................................. 21
15. Societe des Produits Nestle, S.A. vs. CA and CFC Corporation ........................ 24
16. Amigo Manufacturing, Inc. vs Cluett Peabody Co., Inc. .................................. 25
17. Asia Brewery Inc. vs CA and San Miguel Corporation ..................................... 26
18. Societe des Produits Nestle vs Dy................................................................... 28
19. Fredco Manufacturing Corp. vs. President and Fellows of Harvard College
(Harvard University) ............................................................................................. 29

1|the ELO notes on TRADEMARK cases

1. Diaz vs People of the Philippines and Levi Strauss Phils. Inc.
SUMMARY: Diaz was convicted by RTC, CA upheld, for two counts of infringement
of TM. Diaz was allegedly selling counterfeit LEVI’S 501 jeans in his tailoring
shops in Almanza and Talon, Las Piñas City, Levi’s Philippines hired a private
investigation group to verify the information. SC: Acquitted, failure of State to
prove his guilt beyond reasonable doubt. No likelihood of confusion between the
trademarks involved. Thereby, the evidence of guilt did not satisfy the quantum
of proof required for a criminal conviction, which is proof beyond reasonable
doubt.

The elements of the offense of trademark infringement under the Intellectual

Property Code are the following:

1. The trademark being infringed is registered in the Intellectual Property

Office;
2. The trademark is reproduced, counterfeited, copied, or colorably
imitated by the infringer;
3. The infringing mark is used in connection with the sale, offering for sale,
or advertising of any goods, business or services; or the infringing mark is
applied to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such
goods, business or services;
4. The use or application of the infringing mark is likely to cause confusion
or mistake or to deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or services or the
identity of such business; and
5. The use or application of the infringing mark is without the consent of
the trademark owner or the assignee thereof.

As can be seen, the likelihood of confusion is the gravamen of the offense of

trademark infringement.15 There are two tests to determine likelihood of
confusion, namely: the dominancy test, and the holistic test.

The dominancy test focuses on the similarity of the main, prevalent or essential
features of the competing trademarks that might cause confusion. Infringement
takes place when the competing trademark contains the essential features of
another. Imitation or an effort to imitate is unnecessary. The question is whether
the use of the marks is likely to cause confusion or deceive purchasers.

2|the ELO notes on TRADEMARK cases

The holistic test considers the entirety of the marks, including labels and
packaging, in determining confusing similarity. The focus is not only on the
predominant words but also on the other features appearing on the labels.

The holistic test is applicable here considering that the herein criminal cases also
involved trademark infringement in relation to jeans products. Accordingly, the
jeans trademarks of Levi’s Philippines and Diaz must be considered as a whole in
determining the likelihood of confusion between them. The maong pants or jeans
made and sold by Levi’s Philippines, which included LEVI’S 501, were very popular
in the Philippines. The consuming public knew that the original LEVI’S 501 jeans
were under a foreign brand and quite expensive. Such jeans could be purchased
only in malls or boutiques as ready-to-wear items, and were not available in
tailoring shops like those of Diaz’s as well as not acquired on a "made-to-order"
basis. Under the circumstances, the consuming public could easily discern if the
jeans were original or fake LEVI’S 501, or were manufactured by other brands of
jeans. Confusion and deception were remote.
Why he isn’t guilty:

Diaz used the trademark "LS JEANS TAILORING" for the jeans he produced and
sold in his tailoring shops. His trademark was visually and aurally different from
the trademark "LEVI STRAUSS & CO" appearing on the patch of original jeans
under the trademark LEVI’S 501. The word "LS" could not be confused as a
derivative from "LEVI STRAUSS" by virtue of the "LS" being connected to the word
"TAILORING", thereby openly suggesting that the jeans bearing the trademark "LS
JEANS TAILORING" came or were bought from the tailoring shops of Diaz, not
from the malls or boutiques selling original LEVI’S 501 jeans to the consuming
public.

The prosecution also alleged that the accused copied the "two horse design" of
the petitioner-private complainant but the evidence will show that there was no
such design in the seized jeans. Instead, what is shown is "buffalo design." Again,
a horse and a buffalo are two different animals which an ordinary customer can
easily distinguish

The prosecution further alleged that the red tab was copied by the accused.
However, evidence will show that the red tab used by the private complainant
indicates the word "LEVI’S" while that of the accused indicates the letters "LSJT"

3|the ELO notes on TRADEMARK cases

which means LS JEANS TAILORING. Again, even an ordinary customer can
distinguish the word LEVI’S from the letters LSJT.

In terms of classes of customers and channels of trade, the jeans products of the
private complainant and the accused cater to different classes of customers and
flow through the different channels of trade. The customers of the private
complainant are mall goers belonging to class A and B market group – while that
of the accused are those who belong to class D and E market who can only afford
Php 300 for a pair of made-to order pants.
Moreover, based on the certificate issued by the Intellectual Property Office, "LS
JEANS TAILORING" was a registered trademark of Diaz. The Intellectual Property
Office would certainly not have allowed the registration had Diaz’s trademark
been confusingly similar with the registered trademark for LEVI’S 501 jeans.

2. UYCO, et. al. vs Lo

SUMMARY: False Designation of Origin.

The Chief State Prosecutor found probable cause to indict the petitioners for
violation of Section 169.1, in relation with Section 170, of RA 8293. This law
punishes any person who uses in commerce any false designation of origin
which is likely to cause confusion or mistake as to the origin of the product. The
law seeks to protect the public; thus, even if Lo does not have the legal capacity
to sue, the State can still prosecute the petitioners to prevent damage and
prejudice to the public.

The presence of the words "made in Portugal" and "original Portugal" on the
wrappings of the burners and on the burners themselves which are
manufactured by Wintrade is an allusion to the fact that the origin of the design
of said burners can be traced back to Casa Hipolito SA of Portugal, and that the
history of the manufacture of said burners are rooted in Portugal. These words
were not intended to deceive or cause mistake and confusion in the minds of
the buying public.

3. In-&-Out Burger vs. Sehwani

(1) Whether the IPO (administrative bodies) have jurisdiction to cases involving
unfair competition.

4|the ELO notes on TRADEMARK cases

Yes. Sec. 160 and 170, which are found under Part III of the IP Code, recognize the
concurrent jurisdiction of civil courts and the IPO over unfair competition cases.
Therefore, the IPO Director of Legal Affairs have jurisdiction to decide the
petitioner's administrative case against respondents and the IPO Director General
have exclusive jurisdiction over the appeal of the judgment of the IPO Director of
Legal Affairs.
(2) Whether respondent Sehwani is liable of unfair competition
Yes. The evidence on record shows that the respondents were not using their
registered trademark but that of the petitioner. Further, respondents are giving
their products the general appearance that would likely influence purchasers to
believe that these products are those of the petitioner. The intention to deceive
may be inferred from the similarity of the goods as packed and offered for sale,
and, thus, action will lie to restrain such unfair competition. Also, respondent’s
use of IN-N-OUT BURGER in businesses signages reveals fraudulent intent to
deceive purchasers.

4. McDonald’s Corporation vs MacJoy Fastfood Corp.

Use dominancy test in this case. 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.
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.
Under the dominancy test, courts give greater weight to the similarity of the
appearance of the product arising from the adoption of the dominant features of
the registered mark, disregarding minor differences. Courts will consider more the
aural and visual impressions created by the marks in the public mind, giving little
weight to factors like prices, quality, sales outlets and market segments.
Applying the dominancy test to the instant case, the Court finds that herein
petitioner’s "MCDONALD’S" and respondent’s "MACJOY" marks are confusingly

5|the ELO notes on TRADEMARK cases

similar with each other such that an ordinary purchaser can conclude an
association or relation between the marks.
There is confusing similarity in the trademark of MacJoy as to refuse its
application. 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.
It is the prefix "Mc," an abbreviation of "Mac," which visually and aurally catches
the attention of the consuming public.
Both trademarks are used in the sale of fast food products. Indisputably, the
respondent’s 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.
McDonald’s registered trademark covers goods similar if not identical to those
covered by the respondent’s application.
Predominant features such as the "M," "Mc," and "Mac" appearing in both
McDonald’s marks and the MACJOY & DEVICE" easily attract the attention of
would-be customers. Even non-regular customers of their fastfood restaurants
would readily notice the predominance of the "M" design, "Mc/Mac" prefixes
shown in both marks. Such that the common awareness or perception of
customers that the trademarks McDonalds mark and MACJOY & DEVICE are one
and the same, or an affiliate, or under the sponsorship of the other is not far-
fetched.
By reason of the respondent’s implausible and insufficient explanation as to how
and why out of the many choices of words it could have used for its trade-name
and/or trademark, it chose the word "MACJOY," the only logical conclusion
deducible therefrom is that the respondent would want to ride high on the
established reputation and goodwill of the MCDONALD’s marks, which, as applied
to petitioner’s restaurant business and food products, is undoubtedly beyond
question.
When one applies for the registration of a trademark or label which is almost the
same or very closely resembles one already used and registered by another, the
application should be rejected and dismissed outright, even without any
opposition on the part of the owner and user of a previously registered label or

6|the ELO notes on TRADEMARK cases

trademark, this not only to avoid confusion on the part of the public, but also to
protect an already used and registered trademark and an established goodwill.

5. Levi Strauss vs. Tony Lim (Levi’s Jeans and Live’s Jeans case)
Generally, unfair competition consists in employing deception or any other
means contrary to good faith by which any person shall pass off the goods
manufactured by him or in which he deals, or his business, or services for those of
the one having established goodwill, or committing any acts calculated to produce
such result.

The elements of unfair competition under Article 189(1) of In finding that probable
the Revised Penal Code are: cause for unfair
competition does not exist,
(a) That the offender gives his goods the general
the investigating prosecutor
appearance of the goods of another manufacturer or
and Secretaries Guingona
dealer;
(b) That the general appearance is shown in the and Cuevas arrived at the
(1) goods themselves, or in the same conclusion that there
(2) wrapping of their packages, or in the is insufficient evidence to
(3) device or words therein, or in prove all the elements of
(4) any other feature of their appearance; the crime that would allow
(c) That the offender offers to sell or sells those them to secure a
goods or gives other persons a chance or conviction. Secretary
opportunity to do the same with a like purpose; and
Guingona discounted the
(d) That there is actual intent to deceive the public
element of actual intent to
or defraud a competitor.
deceive by taking into
All these must be proven. consideration the
differences in spelling,
meaning, and phonetics
between “LIVE’S” and
“LEVI’S,” as well as the fact that respondent had registered his own mark. While it
is true that there may be unfair competition even if the competing mark is
registered in the Intellectual Property Office, it is equally true that the same may
show prima facie good faith. Indeed, registration does not negate unfair
competition where the goods are packed or offered for sale and passed off as
those of complainant. However, the mark’s registration, coupled with the stark

7|the ELO notes on TRADEMARK cases

differences between the competing marks, negate the existence of actual intent
to deceive, in this particular case.
One, there is no striking similarity between the appearance and packaging of the
goods offered for sale. Two, the absence of confusing similarity of the goods
could not give rise to the element of intent to deceive, as similarity or some
semblance does not by itself prove unfair competition. The consumer survey
alone does not equate to actual confusion. The survey was made by showing the
interviewees actual samples of petitioner’s and respondent’s respective products,
approximately five feet away from them. From that distance, they were asked to
identify the jeans’ brand and state the reasons for thinking so. This method
discounted the possibility that the ordinary intelligent buyer would be able to
closely scrutinize, and even fit, the jeans to determine if they were “LEVI’S” or
not. It also ignored that a consumer would consider the price of the competing
goods when choosing a brand of jeans. It is undisputed that “LIVE’S” jeans are
priced much lower than “LEVI’S.”We find no reason to go beyond the point of sale
to determine if there is probable cause for unfair competition.

6. Shangri-La International Hotel Management, Ltd., et. al. vs. Developers

Group of Companies Inc.
(See Funa’s book for the illustration of the “S” logo by the parties. Or just use your
imagination because you are supposed to have read that. N.B., “Shangri-la”
connotes a place of absolute bliss in Tibetan tradition and exoticism in the Orient,
though the word was actually coined by British author James Hilton in his novel of
the same name.)
All hotels owned, operated and managed by the aforesaid SLIHM Group of
Companies adopted and used the distinctive lettering of the name "Shangri-La" as
part of their trade names. Since 1975 and up to the present, the "Shangri-La"
mark and "S" logo have been used consistently and continuously by all Shangri-La
hotels and companies in their paraphernalia, such as stationeries, envelopes,
business forms, menus, displays and receipts. The Kuok Group and/or petitioner
SLIHM caused the registration of, and in fact registered, the "Shangri-La" mark
and "S" logo in the patent offices in different countries around the world. On June
21, 1988, the petitioners filed with the BPTTT a petition, docketed as Inter Partes
Case No. 3145, praying for the cancellation of the registration of the "Shangri-La"
mark and "S" logo issued to respondent DGCI on the ground that the same were
illegally and fraudulently obtained and appropriated for the latter's restaurant

8|the ELO notes on TRADEMARK cases

business. They also filed in the same office Inter Partes Case No. 3529, praying for
the registration of the same mark and logo in their own names. Until 1987 or
1988, the petitioners did not operate any establishment in the Philippines, albeit
they advertised their hotels abroad since 1972. Petitioners also argue that the
respondent's use of the "Shangri-La" mark and "S" logo was in evident bad faith
and cannot therefore ripen into ownership, much less registration.
The petitioners accused DGCI of appropriating and illegally using the "Shangri-La"
mark and "S" logo, adding that the legal and beneficial ownership thereof
pertained to SLIHM and that the Kuok Group and its related companies had been
using this mark and logo since March 1962 for all their corporate names and
affairs. In this regard, they point to the Paris Convention for the Protection of
Industrial Property as affording security and protection to SLIHM's exclusive right
to said mark and logo. They further claimed having used, since late 1975, the
internationally-known and specially-designed "Shangri-La" mark and "S" logo for
all the hotels in their hotel chain.
Held: The "S" logo appears nothing like the "Old English" print that the CA makes
it out to be, but is obviously a symbol with oriental or Asian overtones. At any
rate, it is ludicrous to believe that the parties would come up with the exact same
lettering for the word "Shangri-La" and the exact same logo to boot. As correctly
observed by the petitioners, to which we are in full accord:
x x x When a trademark copycat adopts the word portion of another's trademark
as his own, there may still be some doubt that the adoption is intentional. But if
he copies not only the word but also the word's exact font and lettering style
and in addition, he copies also the logo portion of the trademark, the slightest
doubt vanishes. It is then replaced by the certainty that the adoption was
deliberate, malicious and in bad faith.31
It is truly difficult to understand why, of the millions of terms and combination of
letters and designs available, the respondent had to choose exactly the same
mark and logo as that of the petitioners, if there was no intent to take advantage
of the goodwill of petitioners' mark and logo.32
One who has imitated the trademark of another cannot bring an action for
infringement, particularly against the true owner of the mark, because he would
be coming to court with unclean hands.33 Priority is of no avail to the bad faith

9|the ELO notes on TRADEMARK cases

plaintiff. Good faith is required in order to ensure that a second user may not
merely take advantage of the goodwill established by the true owner.
However, since RA 166 was the law in force at the time the case was instituted,
and such was prior to the signing of the Paris Convention, petitioners cannot
claim protection from it. Complaint for infringement is dismissed. The new
Intellectual Property Code (IPC), Republic Act No. 8293, undoubtedly shows the
firm resolve of the Philippines to observe and follow the Paris Convention by
incorporating the relevant portions of the Convention such that persons who may
question a mark (that is, oppose registration, petition for the cancellation thereof,
sue for unfair competition) include persons whose internationally well-known
mark, whether or not registered, is identical with or confusingly similar to or
constitutes a translation of a mark that is sought to be registered or is actually
registered.

7. Coffee Partners, Inc. vs. San Francisco Coffee & Roastery

CPI (2001 registered with SEC) is a local franchise of Virgin Islands-based Coffee
Partners Ltd. San Francisco Coffee & Roastery (1995 registered with SEC) is a local
business engaged in the wholesale and retail of coffee. In June 2001, respondent
discovered that petitioner was about to open a coffee shop under the name "SAN
FRANCISCO COFFEE" in Libis, Quezon City. According to respondent, petitioner’s
shop caused confusion in the minds of the public as it bore a similar name and it
also engaged in the business of selling coffee. Mr. David Puyat, president of
petitioner corporation, testified that the coffee shop in Libis, Quezon City opened
sometime in June 2001 and that another coffee shop would be opened in
Glorietta Mall, Makati City. He stated that the coffee shop was set up pursuant to
a franchise agreement executed in January 2001 with CPL, a British Virgin Island
Company owned by Robert Boxwell. Mr. Puyat said he became involved in the
business when one Arthur Gindang invited him to invest in a coffee shop and
introduced him to Mr. Boxwell. For his part, Mr. Boxwell attested that the coffee
shop "SAN FRANCISCO COFFEE" has branches in Malaysia and Singapore. He said
they decided to invest in a similar venture and adopted the name "SAN
FRANCISCO COFFEE" from the famous city in California where he and his former
colleagues once lived and where special coffee roasts came from.
The BLA-IPO held that petitioner’s trademark infringed on respondent’s trade
name. It ruled that the right to the exclusive use of a trade name with freedom
from infringement by similarity is determined from priority of adoption. Since

10 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
respondent registered its business name with the DTI in 1995 and petitioner
registered its trademark with the IPO in 2001 in the Philippines and in 1997 in
other countries, then respondent must be protected from infringement of its
trade name. The BLA-IPO held that petitioner’s use of the trademark "SAN
FRANCISCO COFFEE" will likely cause confusion because of the exact similarity in
sound, spelling, pronunciation, and commercial impression of the words "SAN
FRANCISCO" which is the dominant portion of respondent’s trade name and
petitioner’s trademark.
The sole issue is whether petitioner’s use of the trademark "SAN FRANCISCO
COFFEE" constitutes infringement of respondent’s trade name "SAN FRANCISCO
COFFEE & ROASTERY, INC.," even if the trade name is not registered with the
Intellectual Property Office (IPO).

Held: Infringement found. A trade name need not be registered with the IPO
before an infringement suit may be filed by its owner against the owner of an
infringing trademark. All that is required is that the trade name is previously
used in trade or commerce in the Philippines.

What constitutes infringement of an unregistered trade name:

(1) The trademark being infringed is registered in the Intellectual Property Office;
however, in infringement of trade name, the same need not be registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably
imitated by the infringer;
(3) The infringing mark or trade name is used in connection with the sale, offering for
sale, or advertising of any goods, business or services; or the infringing mark or trade
name is applied to labels, signs, prints, packages, wrappers, receptacles, or
advertisements intended to be used upon or in connection with such goods, business,
or services;
(4) The use or application of the infringing mark or trade name is likely to cause
confusion or mistake or to deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or services or the identity of
such business; and
(5) It is without the consent of the trademark or trade name owner or the assignee
thereof.

11 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
Applying either the dominancy test or the holistic test, petitioner’s "SAN
FRANCISCO COFFEE" trademark is a clear infringement of respondent’s "SAN
FRANCISCO COFFEE & ROASTERY, INC." trade name. The descriptive words "SAN
FRANCISCO COFFEE" are precisely the dominant features of respondent’s trade
name. Petitioner and respondent are engaged in the same business of selling
coffee, whether wholesale or retail. The likelihood of confusion is higher in cases
where the business of one corporation is the same or substantially the same as
that of another corporation. In this case, the consuming public will likely be
confused as to the source of the coffee being sold at petitioner’s coffee shops.
Petitioner’s argument that "San Francisco" is just a proper name referring to the
famous city in California and that "coffee" is simply a generic term, is untenable.
Respondent has acquired an exclusive right to the use of the trade name "SAN
FRANCISCO COFFEE & ROASTERY, INC." since the registration of the business
name with the DTI in 1995. Thus, respondent’s use of its trade name from then on
must be free from any infringement by similarity. Of course, this does not mean
that respondent has exclusive use of the geographic word "San Francisco" or the
generic word "coffee." Geographic or generic words are not, per se, subject to
exclusive appropriation. It is only the combination of the words "SAN FRANCISCO
COFFEE," which is respondent’s trade name in its coffee business, that is
protected against infringement on matters related to the coffee business to avoid
confusing or deceiving the public.

168.3. In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:
a. Any person, who is selling his goods and gives them the general appearance of goods
of another manufacturer or dealer, either as to the goods themselves or in the wrapping
of the packages in which they are contained, or the devices or words thereon, or in any
other feature of their appearance, which would be likely to influence purchasers to
believe that the goods offered are those of a manufacturer or dealer, other than the
actual manufacturer or dealer, or who otherwise clothes the goods with such appearance
as shall deceive the public and defraud another of his legitimate trade, or any subsequent
vendor of such goods or any agent of any vendor engaged in selling such goods with a
like purpose;
b. Any person who by any artifice, or device, or who employs any other means calculated
to induce the false belief that such person is offering the services of another who has
identified such services in the mind of the public; or
c. Any person who shall make any false statement in the course of trade or who shall
commit any other act contrary to good faith of a nature calculated to discredit the goods,
business or services of another.

12 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
8. Manuel Espiritu, et. al. vs. Petron Corporation and Kristina Patricia
Enterprises (Captured Tanks case)
Gasul and other Petron products are solely distributed in Sorsogon by KPE. Bicol
Gas is also in the gas distribution business. In the course of trade and competition,
any given distributor of LPGs at times acquired possession of LPG cylinder tanks
belonging to other distributors operating in the same area, called "captured
cylinders." KPE alleges that Bicol Gas illegally refills the captured Gasul tanks and
then sells these. Bicol gas was sued by KPE for illegal filling up of registered
cylinder tanks, trademark infringement and unfair competition. HELD: There is no
showing that Bicol Gas has been giving its LPG tanks the general appearance of
the tanks of Petron’s Gasul. As already stated, the truckfull of Bicol Gas tanks that
the KPE manager arrested on a road in Sorsogon just happened to have mixed up
with them one authentic Gasul tank that belonged to Petron. Essentially, what
the law punishes is the act of giving one’s goods the general appearance of the
goods of another, which would likely mislead the buyer into believing that such
goods belong to the latter. Examples of this would be the act of manufacturing or
selling shirts bearing the logo of an alligator, similar in design to the open-jawed
alligator in La Coste shirts, except that the jaw of the alligator in the former is
closed, or the act of a producer or seller of tea bags with red tags showing the
shadow of a black dog when his competitor is producing or selling popular tea
bags with red tags showing the shadow of a black cat.
9. Prosource International Inc. vs Horphag Research, S.A. (PCO-GENOLS and
PYCOGENOLS case)

Respondent Horphag Research Management SA is the owner of trademark

PYCNOGENOL, a food supplement. Respondent later discovered that petitioner
Prosource International, Inc. was also distributing a similar food supplement using
the mark PCO-GENOLS from 1996 to 2000, prompting respondent to demand that
petitioner cease and desist from using the aforesaid mark. Without notifying
respondent, petitioner discontinued the use of, and withdrew from the market,
the products under the name PCO-GENOLS as of June 19, 2000. It likewise
changed its mark from PCO-GENOLS to PCO-PLUS.
The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-
GENOLS have the same suffix "GENOL" which appears to be merely descriptive
and thus open for trademark registration by combining it with other words. The
trial court, likewise, concluded that the marks, when read, sound similar and

13 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
thus confusingly similar especially since they both refer to food supplements.
The court added that petitioner’s 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 respondent’s
product by using the trademark PCO-GENOLS. CA affirmed, SC affirmed.
A trademark is any distinctive word, name, symbol, emblem, sign, or device, or
any combination thereof, adopted and used by a manufacturer or merchant on
his goods to identify and distinguish them from those manufactured, sold, or
dealt by others. Inarguably, a trademark deserves protection.
Infringement, what constitutes. – Any person who shall use, without the consent
of the registrant, any reproduction, counterfeit, copy or colorable imitation of any
registered mark or tradename in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in connection with which such
use is likely to cause confusion or mistake or to deceive purchasers or others as to
the source or origin of such goods or services, or identity of such business; or
reproduce, counterfeit, copy of colorably imitate any such mark or tradename
and apply such reproduction, counterfeit, copy or colorable imitation to labels,
signs, prints, packages, wrappers, receptacles or advertisements intended to be
used upon or in connection with such goods, business, or services, shall be liable
to a civil action by the registrant for any or all of the remedies herein provided.
It is the element of "likelihood of confusion" that is the gravamen of trademark
infringement. But "likelihood of confusion" is a relative concept.
The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion and deception, thus
constituting infringement. If the competing trademark contains the main,
essential and dominant features of another, and confusion or deception is likely
to result, infringement takes place. Duplication or imitation is not necessary; nor
is it necessary that the infringing label should suggest an effort to imitate. The
question is whether the use of the marks involved is likely to cause confusion or
mistake in the mind of the public or to deceive purchasers. Courts will consider
more the aural and visual impressions created by the marks in the public mind,
giving little weight to factors like prices, quality, sales outlets, and market
segments.

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The Holistic Test entails a consideration of the entirety of the marks as applied
to the products, including the labels and packaging, in determining confusing
similarity. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing on both labels in
order that the observer may draw his conclusion whether one is confusingly
similar to the other.

10. E.Y. Industrial Sales Inc. vs. Shen Dar Electronics and Machinery Co.,
Ltd.

EYIS is a domestic corporation engaged in the production, manufacture, sales and

distribution of air compressors, etc. Shen Dar is a Taiwan-based foreign
corporation engaged in the manufacture of air compressors. Both companies
claim to have the right to register the trademark “VESPA” for air compressors.

1997—Shen Dar applied with IPO to register “VESPA, Chinese characters and
devise” for use on air compressors and welding machines; 2007 approved, COR
received

1999—EYIS applied with IPO to register “VESPA” for use on air compressors; 2004
approved, COR received

Shen Dar thus filed a Petition for Cancellation of EYIS’ COR with the BLA, arguing
that EYIS is a mere distributor of air compressors bearing the mark “VESPA” which
it imported from Shen Dar. It further argued that it had prior and exclusive right
to use “VESPA” in the Philippines under the Paris Convention.

EYIS denied Shen Dar’s claims, saying it has been the sole assembler and
fabricator of “VESPA” air compressors since the early 90s. They further contend
that Shen Dar supplied them “SD” air compressors, and that Shen Dar is not the
owner of the mark and thus could not seek protection from the Paris Convention
or the IP Code.

BLA, IP Director-General, found for EYIS and cancelled Shen Dar’s COR. CA
reversed IPO.

Issue 1. If IPO Director General can validly cancel Shen Dar’s COR.—Yes, SC
upholds IPO-DG’s statement: the interest of justice requires that Certificate of

15 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
Registration No. 4-1997-121492 be cancelled. While the normal course of
proceedings should have been the filing of a petition for cancellation of
Certificate of Registration No. 4-1997-121492, that would involve critical facts
and issues that have already been resolved in this case. To allow the Applicant to
still maintain in the Trademark Registry Certificate of Registration No. 4-1997-
121492 would nullify the exclusive rights of Appellee as the true and registered
owner of the mark VESPA and defeat the purpose of the trademark registration
system.

Issue 2. Ownership of the “VESPA” mark.—Based on the evidence, EYIS owns the
“VESPA” trademark; it has prior use, as shown by various sales invoices.
Ownership of a mark or trade name may be acquired not necessarily by
registration but by adoption and use in trade or commerce. As between actual
use of a mark without registration, and registration of the mark without actual
use thereof, the former prevails over the latter. For 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 pre-requisite to the acquisition of the right of
ownership. It is non sequitur to hold that porque EYIS is a distributor, it is no
longer the owner.

11. Tanada, et. al. vs. Angara, et. al. (Constitutionality of our signing the GATT WTO
Agreement)

Issue 1: If the Philippines’ signing of the WTO Agreement is unconstitutional on

the ground that it violates the Filipino-first policy of the Consti. Court held:

We are not pursuing an isolationist economic policy. The Constitution takes into
account the realities of the outside world as it requires the pursuit of "a trade
policy that serves the general welfare and utilizes all forms and arrangements of
exchange on the basis of equality ad reciprocity"; and speaks of industries "which
are competitive in both domestic and foreign markets" as well as of the
protection of "Filipino enterprises against unfair foreign competition and trade
practices."—Economic nationalism should be read with other constitutional
mandates to attain balanced development of economy. The constitutional policy
of a "self-reliant and independent national economy" 35 does not necessarily rule
out the entry of foreign investments, goods and services. It contemplates neither
"economic seclusion" nor "mendicancy in the international community."

Issue 2: The WTO Agreement and Judicial Power.

16 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
A WTO Member is required to provide a rule of disputable (not the words "in
the absence of proof to the contrary") presumption that a product shown to be
identical to one produced with the use of a patented process shall be deemed to
have been obtained by the (illegal) use of the said patented process, (1) where
such product obtained by the patented product is new, or (2) where there is
"substantial likelihood" that the identical product was made with the use of the
said patented process but the owner of the patent could not determine the exact
process used in obtaining such identical product. Hence, the "burden of proof"
contemplated by Article 34 should actually be understood as the duty of the
alleged patent infringer to overthrow such presumption. Such burden, properly
understood, actually refers to the "burden of evidence" (burden of going forward)
placed on the producer of the identical (or fake) product to show that his product
was produced without the use of the patented process.

The foregoing notwithstanding, the patent owner still has the "burden of proof"
since, regardless of the presumption provided under paragraph 1 of Article 34,
such owner still has to introduce evidence of the existence of the alleged identical
product, the fact that it is "identical" to the genuine one produced by the
patented process and the fact of "newness" of the genuine product or the fact of
"substantial likelihood" that the identical product was made by the patented
process.

The foregoing should really present no problem in changing the rules of evidence
as the present law on the subject, Republic Act No. 165, as amended, otherwise
known as the Patent Law, provides a similar presumption in cases of infringement
of patented design or utility model, thus:

Sec. 60. Infringement. — Infringement of a design patent or of a

patent for utility model shall consist in unauthorized copying of the
patented design or utility model for the purpose of trade or industry
in the article or product and in the making, using or selling of the
article or product copying the patented design or utility
model. Identity or substantial identity with the patented design or
utility model shall constitute evidence of copying.

Moreover, it should be noted that the requirement of Article 34 to provide a

disputable presumption applies only if (1) the product obtained by the patented
process in NEW or (2) there is a substantial likelihood that the identical product

17 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
was made by the process and the process owner has not been able through
reasonable effort to determine the process used. Where either of these two
provisos does not obtain, members shall be free to determine the appropriate
method of implementing the provisions of TRIPS within their own internal
systems and processes..

So too, since the Philippine is a signatory to most international conventions on

patents, trademarks and copyrights, the adjustment in legislation and rules of
procedure will not be substantial.

12. Mirpuri vs. Court of Appeals, Director of Patents and Barbizon Corp.

The trademark BARBIZON was (fraudulently) registered in the Philippines by one

Lolita R. Escobar under Registration No. 21920, issued on September 11, 1974. By
applying for a re-registration of the mark BARBIZON subject of this opposition,
respondent-applicant seeks to perpetuate the fraud and criminal act committed
by Lolita Escobar. The trademark applied for by respondent applicant is identical
to Opposer's BARBIZON trademark and constitutes the dominant part of
Opposer's two other marks namely, BARBIZON and Bee design and BARBIZON and
a Representation of a Woman. The continued use by respondent-applicant of
Opposer's trademark BARBIZON on goods belonging to Class 25 constitutes a
clear case of commercial and criminal piracy and if allowed registration will
violate not only the Trademark Law but also Article 189 of the Revised Penal Code
and the commitment of the Philippines to an international treaty. On November
26, 1991, the DTI, Office of Legal Affairs, cancelled petitioner's certificate of
registration, and declared private respondent the owner and prior user of the
business name "Barbizon International."

The Convention of Paris for the Protection of Industrial Property is a multi-lateral

treaty which the Philippines bound itself to honor and enforce in this country. As
to whether or not the treaty affords protection to a foreign corporation against a
Philippine applicant for the registration of a similar trademark is the principal
issue in this case.

Yes. The essential requirement under Article 6bis is that the trademark to be
protected must be "well-known" in the country where protection is sought. The
power to determine whether a trademark is well-known lies in the "competent
authority of the country of registration or use." This competent authority would

18 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
be either the registering authority if it has the power to decide this, or the
courts of the country in question if the issue comes before a court.

In the Villafuerte Memorandum, the Minister of Trade instructed the Director of

Patents to reject all pending applications for Philippine registration of signature
and other world-famous trademarks by applicants other than their original
owners or users. The Minister enumerated several internationally-known
trademarks and ordered the Director of Patents to require Philippine registrants
of such marks to surrender their certificates of registration.

In the Ongpin Memorandum, the Minister of Trade and Industry did not
enumerate well-known trademarks but laid down guidelines for the Director of
Patents to observe in determining whether a trademark is entitled to protection
as a well-known mark in the Philippines under Article 6bis of the Paris Convention.
This was to be established through Philippine Patent Office procedures in inter
partes and ex parte cases pursuant to the criteria enumerated therein. The
Philippine Patent Office was ordered to refuse applications for, or cancel the
registration of, trademarks which constitute a reproduction, translation or
imitation of a trademark owned by a person who is a citizen of a member of the
Union. All pending applications for registration of world-famous trademarks by
persons other than their original owners were to be rejected forthwith. The
Ongpin Memorandum was issued pursuant to Executive Order No. 913 dated
October 7, 1983 of then President Marcos which strengthened the rule-making
and adjudicatory powers of the Minister of Trade and Industry for the effective
protection of consumers and the application of swift solutions to problems in
trade and industry.

Elo’s Gist: It matters not how long one has used an illegally acquired
trademark. If it’s an infringement of a well-known mark, no amount of time
can vest ownership of the mark upon the infringer.

13. McDonald’s Corporation and McGeorge Food Industries vs. L.C. Big
Mak Burger, Inc.

Summary: Petition granted, RTC ruling upheld—liable for trademark infringement

and unfair competition.

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Dominancy test applied. Respondents' use of the "Big Mak" mark results in
likelihood of confusion.

First, "Big Mak" sounds exactly the same as "Big Mac."

Second, the first word in "Big Mak" is exactly the same as the first word in
"Big Mac."
Third, the first two letters in "Mak" are the same as the first two letters in
"Mac."
Fourth, the last letter in "Mak" while a "k" sounds the same as "c" when the
word "Mak" is pronounced.
Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus "Caloocan" is
spelled "Kalookan."

The Court finds that petitioners have duly established McDonald's exclusive
ownership of the "Big Mac" mark. Obviously the Justices have at some point
eaten at McDo. Lulz.

To establish trademark infringement, the following elements must be shown:

(1) the validity of plaintiff's mark;

(2) the plaintiff's ownership of the mark; and
(3) the use of the mark or its colorable imitation by the alleged infringer
results in "likelihood of confusion."

Of these, it is the element of likelihood of confusion that is the gravamen of

trademark infringement.

A mark is valid if it is "distinctive" and thus not barred from registration under
Section 436 of RA 166 ("Section 4"). However, once registered, not only the mark's
validity but also the registrant's ownership of the mark is prima facie presumed.

The "Big Mac" mark, which should be treated in its entirety and not dissected
word for word,39 is neither generic nor descriptive. Generic marks are commonly
used as the name or description of kind of goods,40 such as "Lite" for beer41 or
"Chocolate Fudge" for chocolate soda drink.42Descriptive marks, on the other
hand, convey the characteristics, functions, qualities or ingredients of a product
to one who has never seen it or does not know it exists,43 such as "Arthriticare"
for arthritis medication.44 On the contrary, "Big Mac" falls

20 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
under the class of fanciful or arbitrary marks as it bears no logical relation to
the actual characteristics of the product it represents.45 As such, it is highly
distinctive and thus valid. Significantly, the trademark "Little Debbie" for snack
cakes was found arbitrary or fanciful.46

While there is confusion of goods when the products are competing, confusion of
business exists when the products are non-competing but related enough to
produce confusion of affiliation.53Section 22 covers two types of confusion arising
from the use of similar or colorable imitation marks, namely, confusion of goods
(product confusion) and confusion of business (source or origin confusion).

14. Mighty Corporation and La Campana Fabrica de Tabaco vs E.&J. Gallo

Winery and The Andresons Group Inc.

1. Petition granted, reversing RTC, CA which found Mighty and La Campana liable
for trademark infringement and unfair competition (use of “Gallo” in their ciggy
products na registered trademark ng Gallo Winery na based sa US at ng
Andersons Group na sole distributor nito).

Petitioner’s use of the GALLO cigarette trademark is not likely to cause confusion
or mistake, or to deceive the "ordinarily intelligent buyer" of either wines or
cigarettes or both as to the identity of the goods, their source and origin, or
identity of the business of petitioners and respondents. Tobacco and alcohol
products may be considered related only in cases involving special
circumstances which exist only if a famous mark is involved and there is a
demonstrated intent to capitalize on it. Both of these are absent in the present
case.

Also, we find that petitioners never attempted to pass off their cigarettes as those
of respondents. There is no evidence of bad faith or fraud imputable to
petitioners in using their GALLO cigarette mark.

The Gallo wine trademark is not a well-known mark in the context of the Paris
convention, since wines and ciggies are not identical or similar goods.

21 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
Guidelines in the implementation of Article 6bis of the Treaty of Paris. These
conditions are:

a) the mark must be internationally known;

b) the subject of the right must be a trademark, not a patent or copyright or
anything else;
c) the mark must be for use in the same or similar kinds of goods; and
d) the person claiming must be the owner of the mark (The Parties
Convention Commentary on the Paris Convention. Article by Dr. Bogsch,
Director General of the World Intellectual Property Organization, Geneva,
Switzerland, 1985)’

2. Difference of infringement and unfair competition

Infringement Unfair Competition

Unauthorized use of Definition Passing off of one’s
trademark goods as another’s
Unnecessary Fraudulent intent Essential to establish this
Essential to establish this Prior registration of Unnecessary to establish
trademark this

3. Two types of confusion

Confusion of goods—when an otherwise prudent purchaser is induced to

purchase one product in the belief that he is purchasing another, in which case
defendant’s goods are then bought as the plaintiff’s and its poor quality reflects
badly on the plaintiff’s reputation

Confusion of business—wherein the goods of the parties are different but the
defendant’s product can reasonably (though mistakenly) be assumed to originate
from the plaintiff, thus deceiving the public into believing that there is some
connection between the plaintiff and defendant which, in fact, does not exist.66

22 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
In determining the likelihood of confusion, the Court must consider:

[a] the resemblance between the trademarks;

[b] the similarity of the goods to which the trademarks are attached;
[c] the likely effect on the purchaser and
[d] the registrant’s express or implied consent and other fair and equitable
considerations.

The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks which might cause confusion or deception, and thus
infringement. If the competing trademark contains the main, essential or
dominant features of another, and confusion or deception is likely to result,
infringement takes place. Duplication or imitation is not necessary; nor is it
necessary that the infringing label should suggest an effort to imitate. The
question is whether the use of the marks involved is likely to cause confusion or
mistake in the mind of the public or deceive purchasers.80

The Holistic Test requires that the entirety of the marks in question be
considered in resolving confusing similarity. Comparison of words is not the only
determining factor. The trademarks in their entirety as they appear in their
respective labels or hang tags must also be considered in relation to the goods
to which they are attached. The discerning eye of the observer must focus not
only on the predominant words but also on the other features appearing in both
labels in order that he may draw his conclusion whether one is confusingly similar
to the other.

4. In resolving whether goods are related,96 several factors come into play:

(a) the business (and its location) to which the goods belong
(b) the class of product to which the goods belong
(c) the product's quality, quantity, or size, including the nature of the package,
wrapper or container 97
(d) the nature and cost of the articles98
(e) the descriptive properties, physical attributes or essential characteristics with
reference to their form, composition, texture or quality
(f) the purpose of the goods99
(g) whether the article is bought for immediate consumption,100 that is, day-to-
day household items101

23 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
(h) the fields of manufacture102
(i) the conditions under which the article is usually purchased103 and
(j) the channels of trade through which the goods flow,104 how they are
distributed, marketed, displayed and sold.

15. Societe des Produits Nestle, S.A. vs. CA and CFC Corporation

Summary: Bureau of Patents, Trademarks and Technology transfer denied the

registration of CFC Corporation’s “Flavor Master” for instant coffee when Nestle
objected; Nestle products include “Master Roast” and Master Blend” for instant
coffee as well. CFC’s trademark FLAVOR MASTER carries the colors orange and
mocha while that of Nestle’s uses red and brown. Court of Appeals reversed
BPTTT, saying that there is no confusion between the two. Hence, the question in
this case is whether there is a likelihood that the trademark FLAVOR MASTER
may cause confusion or mistake or may deceive purchasers that said product is
the same or is manufactured by the same company. In other words, the issue is
whether the trademark FLAVOR MASTER is a colorable imitation of the
trademarks MASTER ROAST and MASTER BLEND.

Generic terms25 are those which constitute "the common descriptive name of an
article or substance," or comprise the "genus of which the particular product is
a species," or are "commonly used as the name or description of a kind of
goods," or "imply reference to every member of a genus and the exclusion of
individuating characters," or "refer to the basic nature of the wares or services
provided rather than to the more idiosyncratic characteristics of a particular
product," and are not legally protectable.

Descriptive terms are invalid as a trademark if, as understood in its normal and
natural sense, it "forthwith conveys the characteristics, functions, qualities or
ingredients of a product to one who has never seen it and does not know what
it is," or "if it forthwith conveys an immediate idea of the ingredients, qualities
or characteristics of the goods," or if it clearly denotes what goods or services
are provided in such a way that the consumer does not have to exercise powers
of perception or imagination.

N.B.: Mas lenient ang court pag gamot na ginagamit ng mga vet or other
specialists, viz. trademarks. --> This Court held that the addition of the syllable
"INE" in respondent’s label is sufficient to distinguish respondent’s product or

24 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
trademark from that of petitioner. Also, both products are for medicinal
veterinary use and the buyer will be more wary of the nature of the product he is
buying. In any case, both products are not identical as SULMET’s label indicates
that it is used in a drinking water solution while that of SULMETINE indicates that
they are tablets.

16. Amigo Manufacturing, Inc. vs Cluett Peabody Co., Inc.

Summary: Amigo makes Gold Top socks and tries to register its trademark sa
Bureau of Patents; TM has dominant white color at the center, with black-brown
background and a magnified design of the sock garter, and the name Amigo
Manufacturing Inc. on the label. Cluett Peabody, US corporation, opposes the
registration on ground that Amigo’s TM looks like their TM: a sock and a
magnifying glass on the toe. Same font din ng “Gold Top” at “Gold Toe.” Bureau
of Patents denies registration; appeal on CA says there is hardly any variance in
the appearance of the marks 'GOLD TOP' and 'GOLD TOE' since both show a
representation of a man's foot wearing a sock, and the marks are printed in
identical lettering.

Idem sonans not applicable. The Bureau considered the drawings and the labels,
the appearance of the labels, the lettering, and the representation of a man's
foot wearing a sock. Obviously, its conclusion is based on the totality of the
similarities between the parties' trademarks and not on their sounds alone.

Respondent is domiciled in the United States and is the registered owner of the
"Gold Toe" trademark. Hence, it is entitled to the protection of the Convention.
A foreign-based trademark owner, whose country of domicile is a party to an
international convention relating to protection of trademarks,17 is accorded
protection against infringement or any unfair competition as provided in Section
37 of Republic Act 166.

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17. Asia Brewery Inc. vs CA and San Miguel Corporation

SMB sued ABI for trademark

infringement and unfair competition
because the Pale bottle looks like the
Beer na Beer steinie bottle. Petition
denied.

There is hardly any dispute that the

dominant feature of SMC's trademark
is the name of the product: SAN
MIGUEL PALE PILSEN, written in
white Gothic letters with elaborate
serifs at the beginning and end of the
letters "S" and "M" on an amber
background across the upper portion of the rectangular design.

On the other hand, the dominant feature of ABI's trademark is the name: BEER
PALE PILSEN, with the word "Beer" written in large amber letters, larger than
any of the letters found in the SMC label.

Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be

confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER
PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No
evidence whatsoever was presented by SMC proving otherwise.

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," (sa
Pilsen, Bohemia, Czech Republic)
The use of ABI of the steinie bottle, similar but not identical to the SAN MIGUEL
PALE PILSEN bottle, is not unlawful. Moreover, the shape was never registered as
a trademark.

26 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
With regard to the white label of both beer bottles, ABI explained that it used the
color white for its label because white presents the strongest contrast to the
amber color of ABI's bottle; it is also the most economical to use on labels, and
the easiest to "bake" in the furnace. No one can have a monopoly of the color
amber for bottles, nor of white for labels, nor of the rectangular shape which is
the usual configuration of labels. Needless to say, the shape of the bottle and of
the label is unimportant. What is all important is the name of the product written
on the label of the bottle for that is how one beer may be distinguished from the
others.

In Dy Buncio v. Tan Tiao Bok, where two competing tea products were both
labeled as Formosan tea, both sold in 5-ounce packages made of ordinary
wrapping paper of conventional color, both with labels containing designs
drawn in green ink and Chinese characters written in red ink, one label showing
a double-decked jar in the center, the other, a flower pot, this court found that
the resemblances between the designs were not sufficient to mislead the
ordinary intelligent buyer, hence, there was no unfair competition.

The test of fraudulent simulation is to be found in the likelihood of the

deception of persons in some measure acquainted with an established design
and desirous of purchasing the commodity with which that design has been
associated. The test is not found in the deception, or possibility of the
deception, of the person who knows nothing about the design which has been
counterfeited, and who must be indifferent as between that and the other.

The record does not bear out SMC's apprehension that BEER PALE PILSEN is being
passed off as SAN MIGUEL PALE PILSEN. This is unlikely to happen for consumers
or buyers of beer generally order their beer by brand. As pointed out by ABI's
counsel, in supermarkets and tiendas, beer is ordered by brand, and the
customer surrenders his empty replacement bottles or pays a deposit to
guarantee the return of the empties. If his empties are SAN MIGUEL PALE
PILSEN, he will get SAN MIGUEL PALE PILSEN as replacement. In sari-sari stores,
beer is also ordered from the tindera by brand. The same is true in restaurants,
pubs and beer gardens — beer is ordered from the waiters by brand. (Op. cit.
page 50.)

Considering further that SAN MIGUEL PALE PILSEN has virtually monopolized the
domestic beer market for the past hundred years, those who have been drinking

27 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
no other beer but SAN MIGUEL PALE PILSEN these many years certainly know
their beer too well to be deceived by a newcomer in the market. If they gravitate
to ABI's cheaper beer, it will not be because they are confused or deceived, but
because they find the competing product to their taste.

18. Societe des Produits Nestle vs Dy

Summary: Dy owns NANNY, repacked Australian powdered milk sold in provinces

in the South. Nestle owns NAN, milk for babies. Both are powdered milk products.
Trial court found Dy liable for infringement. CA reversed RTC.

Applying the dominancy test in the present case, the Court finds that "NANNY"
is confusingly similar to "NAN." "NAN" is the prevalent feature of Nestle’s line
of infant powdered milk products. It is written in bold letters and used in all
products. "NANNY" contains the prevalent feature "NAN." The first three letters
of "NANNY" are exactly the same as the letters of "NAN." When "NAN" and
"NANNY" are pronounced, the aural effect is confusingly similar.

In Mighty Corporation v. E. & J. Gallo Winery, the Court held that, "Non-
competing goods may be those which, though they are not in actual
competition, are so related to each other that it can reasonably be assumed
that they originate from one manufacturer, in which case, confusion of business
can arise out of the use of similar marks."

Court enumerated factors in determining whether goods are related:

(1) classification of the goods;

(2) nature of the goods;
(3) descriptive properties, physical attributes or essential characteristics of the
goods, with reference to their form, composition, texture or quality; and
(4) style of distribution and marketing of the goods, including how the goods are
displayed and sold.

Differences between NAN and NANNY: (1) NAN is intended for infants while
NANNY is intended for children past their infancy and for adults; and (2) NAN is
more expensive than NANNY. However, as the registered owner of the "NAN"
mark, Nestle should be free to use its mark on similar products, in different
segments of the market, and at different price levels.

28 | t h e E L O n o t e s o n T R A D E M A R K c a s e s
 Elements of Trademark Infringement:

(a) A trademark actually used in commerce in the Philippines and registered in the principal
register of the Philippine Patent Office;
(b) It is used by another person in connection with the sale, offering for sale, or advertising
of any goods, business or services or in connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or others as to the source or origin of such
goods or services, or identity of such business; or such trademark is reproduced,
counterfeited, copied or colorably imitated by another person and such reproduction,
counterfeit, copy or colorable imitation is applied to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in connection
with such goods, business or services as to likely cause confusion or mistake or to
deceive purchasers;
(c) The trademark is used for identical or similar goods; and
(d) Such act is done without the consent of the trademark registrant or assignee.

19. Fredco Manufacturing Corp. vs. President and Fellows of Harvard

College (Harvard University)

Summary: Fredco filed a petition to cancel Harvard U’s trademark sa Harvard

clothing, on ground that Fredco had a prior registration. Bureau of Legal Affairs
cancelled Harvard U’s TM; Director General of IPO reversed BLA; CA affirmed
Director-General. Hence this petition, which is DENIED.

One who has imitated the trademark of another cannot bring an action for
infringement, particularly against the true owner of the mark, because he would
be coming to court with unclean hands.

Although Section 2 of the Trademark law (R.A. 166) requires for the registration
of trademark that the applicant thereof must prove that the same has been
actually in use in commerce or services for not less than two (2) months in the
Philippines before the application for registration is filed, where the trademark
sought to be registered has already been registered in a foreign country that is a
member of the Paris Convention, the requirement of proof of use in the
commerce in the Philippines for the said period is not necessary. Under Section
239.2 of Republic Act No. 8293 (R.A. No. 8293),18 "[m]arks registered under
Republic Act No. 166 shall remain in force but shall be deemed to have been
granted under this Act x x x," which does not require actual prior use of the
mark in the Philippines

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Pursuant to the Paris Convention for the Protection of Industrial Property to
which the Philippines is a signatory, you are hereby directed to reject all
pending applications for Philippine registration of signature and other world-
famous trademarks by applicants other than its original owners or users.

in cases where warranted, Philippine registrants of such trademarks should be

asked to surrender their certificates of registration, if any, to avoid suits for
damages and other legal action by the trademarks’ foreign or local owners or
original users.
Fredco does not have any affiliation or connection with Harvard University, or
even with Cambridge, Massachusetts. Fredco’s 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 University’s goodwill without the latter’s consent.
Section 123.1(e) of R.A. No. 8293 now categorically states that "a mark which is
considered by the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is registered here,"
cannot be registered by another in the Philippines.
Section 123.1(e) does not require that the well-known mark be used in
commerce in the Philippines but only that it be well-known in the Philippines.
Traced to its roots or origin, HARVARD is not an ordinary word. It refers to no
other than Harvard University, a recognized and respected institution of higher
learning located in Cambridge, Massachusetts, U.S.A.The first use of the name
HARVARD was in 1638 for educational services, policy courses of instructions
and training at the university level.

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