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Chua Che v.

Philippines Patent Office (Short title)


G.R. No. L-18337 | 13 SCRA 67 | January 30, 1965
Petitioner: CHUA CHE ISSUE/S
Respondents: PHILIPPINES PATENT OFFICE and SY TUO 1. W/N Sy Tuo can oppose the registration of “X-7” for laundry soap even though his
registered trademark was for perfume, lipstick and nail polish.
DOCTRINE
Registration of a trademark should be refused in cases where there is a likelihood of RULING & RATIO
confusion, mistake, or deception, even though the goods fall into different categories. 1. YES
2. The circumstance of non-actual use of the mark on granulated soap by Sy
FACTS Tuo, does not detract from the fact that he has already a right to such a
1. Chua Che is a Chinese citizen residing at Tondo, Manila. He is engaged in trademark and should, therefore, be protected.
selling laundry soap, Class 51. 3. The average purchasers are likely to associate X-7 laundry soap with X-7
2. On October 30, 1958, Chua Che filed a petition with Philippine Patent Office perfume, lipstick and nail polish or to think that the products have common
to register the trade name “X-7” for his soap. origin or sponsorship.
3. In the petition, Chua Che alleged that the trademark was used by him since 4. While it is no longer necessary to establish that the goods of the parties
June 10, 1957 and that he continuously used it in trade. possess the same descriptive properties, as previously required under the
4. On July 6, 1959, the application of Chua Che was approved by the Department Trade Mark Act of 1905, registration of a trademark should be refused in
of Commerce and Industry. However, after the publication of “Notice of cases where there is a likelihood of confusion, mistake, or deception,
Allowance”, Sy Tuo presented a notice of opposition. even though the goods fall into different categories.
5. Sy Tuo alleged: 5. The products of Sy Tuo are common household items nowadays, in the same
o that trademark “X-7” was registered to him, covered by Certificate of manner as laundry soap. The likelihood of purchasers to associate those
Registration no. 5,000, issued on April 21, 1951. products to a common origin is not far-fetched.
o That he has prior use of the trademark "X-7" as he has been using it
extensively and continuously since July 31, 1952. DISPOSITION
o that the registration of the trademark "X-7" in the name of CHUA CHE PREMISES CONSIDERED, the decision sought to be reviewed should be, as it is
will be in violation of, and will run counter to, Section 4 (d) of RA 166, hereby affirmed in all respects, with costs against appellant CHUA CHE in both
because it is confusingly similar to the trademark "X-7" instances.
6. Chua Che, while he admitted that "X-7" is registered in the name of Sy Tuo,
he claimed that said trademark is not being used on soap, but purely toilet
articles.
7. Director of Patents ruled in favor of Sy Tuo.
o Sy Tuo’s first use of the trademark X-7 on July 31, 1953, is prior to
applicant's first use of the mark on June 10, 1957.
o Record shows that Sy Tuo has been using the trademark X-7 on
perfume, lipstick and nail polish since July 1953.
o Sy Tuo spent substantial amounts of money in building upon the
goodwill of this trademark through advertisements in all kinds of
media. Thus, he enjoys a valuable goodwill in the trademark X-7.
o The products of the parties, while specifically different, are products
intended for use in the home and usually have common purchasers.
o The use of X-7 for laundry soap is but a natural expansion of
business of the Sy Tuo.

Hence, this petition.

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