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use of the trademark; second, only so much of the mark or marks

1. New Kids on the Block v. News America Publishing Case


may be used as is reasonably necessary to identify the product
Brief or service; and third, the user must do nothing that would, in

Relevant Facts: The individual plaintiffs perform professionally as conjunction with the mark, suggest sponsorship or endorsement
The New Kids on the Block. There are more than 500 products or by the trademark holder.
services bearing the New Kids trademark. Fans can call various New Court Rationale: The use of a trademark that does not attempt to
Kids 900 numbers to listen to the New Kids talk about themselves, to
listen to other fans talk about the New Kids, or to leave messages for capitalize on consumer confusion or to appropriate the cachet of one
the New Kids and other fans. The defendants, two newspapers of product for a different one is nominative use, it does not constitute
national circulation, conducted separate polls of their readers seeking unfair competition. 1- It is no more reasonably possible, however, to
an answer to a pressing question: Which one of the New Kids is the
most popular? The announcement listed a 900 number for voting, refer to the New Kids as an entity than it is to refer to the Chicago
noted that “any USA Today profits from this phone line will go to Bulls, Volkswagens or the Boston Marathon without using the
charity. Readers were directed to a 900 number to register their votes; trademark.
each call cost 95 cents per minute.
2 – The newspapers reference the New Kids only to the extent
Legal Issue(s): Whether the newspapers use of the New Kids necessary to identify them as the subject of the polls; they do not use
trademark violates the Lanham Act? the New Kids’ distinctive logo or anything else that isn’t needed to
Court’s Holding: No. (1) newspapers were entitled to nominative fair make the announcements intelligible to readers.
use defense; (2) fact that newspapers used toll numbers to conduct
poll which competed with services offered by group did not make df 3- There is nothing in the announcements that suggests joint
unavailable; 3) musical group did not have claim for intentional sponsorship or endorsement by the New Kids.
interference with respective economic advantage based on
newspapers’ fair and reasonable use of mark. Plaintiff’s Argument: The newspapers’ use of the New Kids name in

Procedure: Musical group brought suit against newspapers alleging conducting the unauthorized polls somehow implied that the New Kids

infringement from use of group’s trademark in polls on group’s were sponsoring the polls.

popularity. The US D Ct, granted newspapers’ motions for summary Defendant’s Argument: Newspaper’s 900 numbers did not

judgment. Appeal was taken. The Court of Appeals Affirmed. competed directly with 900 numbers provided by group, since use of
trademark by newspapers did not imply sponsorship or endorsement.

Law or Rule(s): Nominative fair use TEST: First, the product or


service in question must be one not readily identifiable without
“Fair-use defense” to trademark infringement claim forbids trademark to identify group as subject of polls, and nothing suggested joint
registrant to appropriate descriptive term for exclusive use and sponsorship or endorsement by a musical group.
prevent others from accurately describing characteristic of their goods.
2. Mcdonalds v. LC Bigmark

Unmitigated and designed infringement of the rights of the plaintiffs, FACTS:


for the purpose of defrauding the public and taking from the plaintiffs Petitioners Mcdonalds is corporation ornganized under the Delaware,
United States. McDonalds owns a family of marks including the Big
the fair earnings of their skill, labor and enterprise.” Taylor, 23 F.Cas. Mac mark for its double-decker hamburger sandwich. Based on this
at 744. The core protection of the Lanham Act remains faithful to this Home Registration, McDonalds applied for the registration of the same
mark in the Principal Register of the then Philippines Bureau of
conception, (prohibiting unauthorized use in commerce of registered Patents, Trademarks and Technology now the Intellectual Property
marks). Indeed, this area of the law is generally referred to as “unfair Office (IPO). Pending approval of its application, McDonalds
introduced its Big Mac hamburger sandwiches in the Philippine market
competition”–unfair because, by using a rival’s mark, the infringer
in September 1981.
capitalizes on the investment of time, money and resources of his Respondent L.C. Big Mak Burger, Inc. (respondent corporation) is a
competitor; unfair also because, by doing so, he obtains the domestic corporation which operates fast-food outlets and snack vans
in Metro Manila and nearby provinces. Respondent corporations
consumer’s hard-earned dollar through something akin to fraud. menu includes hamburger sandwiches and other food items.
On 21 October 1988, respondent corporation applied with the PBPTT
for the registration of the Big Mak mark for its hamburger sandwiches.
Competitors may use rival’s trademark in advertising and other
McDonalds opposed respondent corporations application on the
channels of communication if use is not false or misleading. Where ground that Big Mak was a colorable imitation of its registered Big Mac
defendant uses trademark to describe plaintiff’s product, rather than mark for the same food products

its own, commercial user is entitled to nominative fair use defense ISSUE:
provided that product or service in question is one not really Whether or not the respondents shall be held liable for unfair
competition?
identifiable without use of trademark, only so much of mark or marks
may be used as is reasonably necessary to identify product or service, RULING:
and user must do nothing that would come in conjunction with mark, The essential elements of an action for unfair competition are
suggest sponsorship or endorsement by trademark holder. (1) confusing similarity in the general appearance of the goods, and
(2) intent to deceive the public and defraud a competitor.The
Newspapers are entitled to nominative fair use defense to alleged
confusing similarity may or may not result from similarity in the marks,
infringement on musical group’s trademark while conducting polls but may result from other external factors in the packaging or
about group members since there was nothing false or misleading presentation of the goods. The intent to deceive and defraud may be
inferred from the similarity of the appearance of the goods as offered
about use of mark, newspapers referred to trademark only as needed for sale to the public. Actual fraudulent intent need not be shown.
introduced during the trial plastic wrappers and bags with the words
Unfair competition is broader than trademark infringement L.C. Big Mak Burger, Inc. to inform the public of the name of the seller
and includes passing off goods with or without trademark of the hamburgers. However, petitioners introduced during the
infringement. Trademark infringement is a form of unfair injunctive hearings plastic wrappers and bags with the Big Mak
competition. Trademark infringement constitutes unfair competition mark without the name L.C. Big Mak Burger, Inc. Respondents
when there is not merely likelihood of confusion, but also actual or belated presentation of plastic wrappers and bags bearing the name
probable deception on the public because of the general appearance of L.C. Big Mak Burger, Inc. as the seller of the hamburgers is an after-
of the goods. There can be trademark infringement without unfair thought designed to exculpate them from their unfair business
competition as when the infringer discloses on the labels containing conduct. As earlier stated, we cannot consider respondents evidence
the mark that he manufactures the goods, thus preventing the public since petitioners complaint was based on facts existing before and
from being deceived that the goods originate from the trademark during the injunctive hearings.
owner.
Thus, there is actually no notice to the public that the Big Mak
The dissimilarities in the packaging are minor compared to hamburgers are products of L.C. Big Mak Burger, Inc. and not those
the stark similarities in the words that give respondents Big Mak of petitioners who have the exclusive right to the Big Mac mark. This
hamburgers the general appearance of petitioners Big Mac clearly shows respondents intent to deceive the public. Had
hamburgers. Section 29(a) expressly provides that the similarity in the respondents placed a notice on their plastic wrappers and bags that
general appearance of the goods may be in the devices the hamburgers are sold by L.C. Big Mak Burger, Inc., then they could
or words used on the wrappings. Respondents have applied on their validly claim that they did not intend to deceive the public. In such
plastic wrappers and bags almost the same words that petitioners case, there is only trademark infringement but no unfair competition.
use on their styrofoam box. What attracts the attention of the buying Respondents, however, did not give such notice. We hold that as
public are the words Big Mak which are almost the same, aurally and found by the RTC, respondent corporation is liable for unfair
visually, as the words Big Mac.The dissimilarities in the material and competition.
other devices are insignificant compared to the glaring similarity in the
words used in the wrappings.

Section 29(a) also provides that the defendant gives his


goods the general appearance of goods of another
manufacturer. Respondents goods are hamburgers which are also the
goods of petitioners. If respondents sold egg sandwiches only instead
of hamburger sandwiches, their use of the Big Mak mark would not
give their goods the general appearance of petitioners Big Mac
hamburgers. In such case, there is only trademark infringement but no
unfair competition. However, since respondents chose to apply the
Big Mak mark on hamburgers, just like petitioners use of the Big Mac
mark on hamburgers, respondents have obviously clothed their goods
with the general appearance of petitioners goods.

Moreover, there is no notice to the public that the Big Mak


hamburgers are products of L.C. Big Mak Burger, Inc. Respondents
Coca-Cola Bottlers, Phils., Inc. CCBPI Vs. Quintin J. Gomez, aka ISSUE:
“Kit” Gomez & Danilo E. Galicia, aka “Danny”
WON Pepsi’s possession of several empty coke bottles constitute as
GR # 154491 “Hoarding” which is punishable under the IP Code.

HELD:

Facts: As culled from the petitioner’s allegation, the provision shown below
shows the law which Pepsi breached.
CCBPI, the petitioner applied for a search warrant against Pepsi Cola
Product Philippines, Inc. (PCPPI) for allegedly hoarding empty bottles
of Coke bottles which same act is punishable under the IP Code, and
further claimed that the empty bottles be confiscated. Following the SECTION 168. Unfair Competition, Rights, Regulation and
Remedies. –
search warrant, the police seized and brought to MTC 2,464 Litro and
4,036 of 12 oz. of empty coke bottle.
168.1. A person who has identified in the mind of the public
The petitioner, after seizing the bottles, filed with the Office of the City the goods he manufactures or deals in, his business or
Prosecutor of Naga a complaint against two Pepsi officers, namely services from those of others, whether or not a registered
mark is employed, has a property right in the goodwill of the
Galicia and Gomez, for violation of Section 168.3 (c) in relation to
said goods, business or services so identified, which will be
Section 170 of the IP Code.
protected in the same manner as other property rights.
The respondents counter claim was, as represented by Galicia and
Gomez, that the bottles came from various Pepsi retailers and 168.2. Any person who shall employ deception or any other
means contrary to good faith by which he shall pass off the
wholesalers who included them in their return to make up for their
goods manufactured by him or in which he deals, or his
shortages of empty Pepsi bottles. They also had no way of
business, or services for those of the one having established
ascertaining before hand the return of empty coke bottles as they such goodwill, or who shall commit any acts calculated to
simple received what had been delivered; the presence of the bottles produce said result, shall be guilty of unfair competition, and
in their yard was not intentional nor deliberate. The respondents also shall be subject to an action therefor.
filed motions for the return of the seized bottles and quash the search
warrant for the warrant itself existed no probable cause to justify the 168.3. In particular, and without in any way limiting the scope
issuance. of protection against unfair competition, the following shall be
deemed guilty of unfair competition:
The petition was denied, both by the MTC and the RTC. Bypassing
the Court of Appeals, the petitioner files a petition for review on (a) Any person, who is selling his goods and gives
certiorari under Rule 45 of the Rules of Court to reverse the decision them the general appearance of goods of another
of the RTC. 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 goods or services are that of another who has earned goodwill; while
manufacturer or dealer, other than the actual the disputed Section 168.3 being a "catch all" clause whose coverage
manufacturer or dealer, or who otherwise clothes the the parties now dispute.
goods with such appearance as shall deceive the
public and defraud another of his legitimate trade, or Under all the above approaches, we conclude that the "hoarding" - as
any subsequent vendor of such goods or any agent defined and charged by the petitioner - does not fall within the
of any vendor engaged in selling such goods with a coverage of the IP Code and of Section 168 in particular. It does not
like purpose; relate to any patent, trademark, trade name or service mark that the
respondents have invaded, intruded into or used without proper
(b) Any person who by any artifice, or device, or who authority from the petitioner. Nor are the respondents alleged to be
employs any other means calculated to induce the fraudulently "passing off" their products or services as those of the
false belief that such person is offering the services of
petitioner. The respondents are not also alleged to be undertaking any
another who has identified such services in the mind
representation or misrepresentation that would confuse or tend to
of the public; or
confuse the goods of the petitioner with those of the respondents,
(c) Any person who shall make any false statement in or vice versa. What in fact the petitioner alleges is an act foreign to the
the course of trade or who shall commit any other act Code, to the concepts it embodies and to the acts it regulates; as
contrary to good faith of a nature calculated to alleged, hoarding inflicts unfairness by seeking to limit the opposition's
discredit the goods, business or services of another. sales by depriving it of the bottles it can use for these sales.

168.4. The remedies provided by Sections 156, 157 and 161 Based on the foregoing, we conclude that the RTC correctly ruled that
shall apply mutatis mutandis. (Sec. 29,R.A. No. 166a) the petitioner's search warrant should properly be quashed for the
petitioner's failure to show that the acts imputed to the respondents do
not violate the cited offense. There could not have been any probable
The application of the principles of statutory construction giving cause to support the issuance of a search warrant because no crime
particular attention, not so much to the focus of the IP Code generally, in the first place was effectively charged. This conclusion renders
but to the terms of Section 168 in particular. Under the principle of unnecessary any further discussion on whether the search warrant
"noscitur a sociis," when a particular word or phrase is ambiguous in application properly alleged that the imputed act of holding Coke
itself or is equally susceptible of various meanings, its correct empties was in fact a "hoarding" in bad faith aimed to prejudice the
construction may be made clear and specific by considering the petitioner's operations, or whether the MTC duly complied with the
company of words in which it is found or with which it is associated. procedural requirements for the issuance of a search warrant under
As basis for this interpretative analysis, we note that Section Rule 126 of the Rules of Court.
168.1 speaks of a person who has earned goodwill with respect to his WHEREFORE, we hereby DENY the petition for lack of merit.
goods and services and who is entitled to protection under the Code, Accordingly, we confirm that Search Warrant No. 2001-01, issued by
with or without a registered mark. Section 168.2, refers to the general the Municipal Trial Court, Branch 1, Naga City, is NULL and VOID.
definition of unfair competition. Section 168.3, on the other hand,
refers to the specific instances of unfair competition, with Section
168.1 referring to the sale of goods given the appearance of the goods
of another; Section 168.2, to the inducement of belief that his or her
4. Uyco vs. Lo “Original Portugal” refer to the origin of the design and not to the origin
of the goods.
Facts:
The petitioners again try to convince the Court that they have not
The disputed marks in this case are the “HIPOLITO & SEA HORSE &
manufactured the products bearing the marks “Made in Portugal” and
TRIANGULAR DEVICE,” “FAMA,” and other related marks, service
“Original Portugal” that were bought during the test buy. However,
marks and trade names of Casa Hipolito S.A. Portugal appearing in
their own admission and the statement given by Chua bear
kerosene burners.
considerable weight. They refer to Wintrade’s former association with
Casa Hipolito S.A. Portugal; to their decision to produce the burners
Lo claimed that Gasirel-Industria deComercio e Componentes para
in the Philippines; to their use of the disputed marks; and to their
Gass, Lda. (Gasirel), the owner of the disputed marks, in a test buy,
justification for their use. The products that Wintrade sold were
purchased from National Hardware kerosene burners with the subject
admittedly produced in the Philippines, with no authority from Casa
marks and the designations “Made in Portugal” and “Original Portugal”
Hipolito S.A. Portugal. The law on trademarks and trade names
in the wrappers. These products were manufactured by Wintrade.
precisely precludes a person from profiting from the business
reputation built by another and from deceiving the public as to the
The kerosene burners manufactured by Wintrade have caused
origins of products. These facts support the consistent findings of the
confusion, mistake and deception on the part of the buying public. Lo
State Prosecutor, the DOJ and the CA that probable cause exists to
stated that the real and genuine burners are those manufactured by
charge the petitioners with false designation of origin. The fact that the
its agent, PBMC.
evidence did not come from Lo, but had been given by the petitioners,
is of no significance.
In their Answer, the petitioners stated that they are the officers of
Wintrade which owns the subject trademarks and their variants. To
The argument that the words “Made in Portugal” and “Original
prove this assertion, they submitted as evidence the certificates of
Portugal” refer to the origin of the design and not to the origin of the
registration with the Intellectual Property Office.
goods does not negate the finding of probable cause; at the same
time, it is an argument that the petitioners are not barred by this
The petitioners pointed out that Lo failed to sufficiently prove that the
Resolution from raising as a defense during the hearing of the case.
burners bought from National Hardware were those that they
manufactured. But at the same time, they also argued that the marks
5. Kenneth Roy Savage/K Angelin Export Trading vs. Taypin
“Made in Portugal” and “Original Portugal” are merely descriptive and
refer to the source of the design and the history of manufacture.
Facts:
Acting on a complaint lodged by private respondent Eric Ng Mendoza,
Issue: WON probable cause exists to charge the petitioners with false
president and general manager of Mendco Development Corporation
designation of origin
(MENDCO), Supervising Agent Jose Ermie Monsanto of the National
Bureau of Investigation (NBI) filed an application for search warrant
Held: with the Regional Trial Court of Cebu City.

Yes. The petitioners reiterate their argument that the products bought The application sought the authorization to search the premises of K
during the test buy bearing the trademarks in question were not Angelin Export International located in Biasong, Talisay, Cebu, and to
manufactured by, or in any way connected with, the petitioners and/or seize the pieces of wrought iron furniture found therein which were
Wintrade. They also allege that the words “Made in Portugal” and allegedly the object of unfair competition involving design patents,
punishable under Art. 189 of the Revised Penal Code as amended. 6. Coffee Partners, Inc. vs. San Francisco Coffee & Roastery, Inc
The assailed Search Warrant was issued by respondent Judge on 16
October 1997 and executed in the afternoon of the following day by FACTS
NBI agents. Seized from the factory were several pieces of furniture, Petitioner Coffee Partners entered into a franchise agreement with
indicated in the Inventory Sheet attached to the Return of Search Coffee Partners Ltd. to operate coffee shops in the country using the
Warrant, and all items seized have remained in NBI custody up to the trademark ‘San Francisco Coffee.’ Respondent on the other hand, is
present. a local corporation engaged in the wholesale and retail sale of coffee
and uses the business name ‘San Francisco Coffee & Roastery’
On 30 October 1997 petitioners moved to quash the search warrant registered with the DTI.
for lack of jurisdiction and non-attachment of certificate of forum
shopping. Later, respondent filed an infringement and/or unfair competition
complaint against petitioner alleging that the latter was about to open
Issue: whether unfair competition involving design patents punishable a coffee shop under the name ‘San Francisco Coffee’ causing
under Art. 189 of the Revised Penal Code exists in this case. confusion in the minds of the public as it bore a similar name and is
engaged also in selling of coffee. Petitioner contended no infringement
Held: would arise because respondent’s tradename was not registered.
The issue involving the existence of “unfair competition” as a felony
involving design patents, referred to in Art. 189 of the Revised Penal ISSUE Whether or not an infringement of the tradename exist and if
Code, has been rendered moot and academic by the repeal of the registration of the same is required to have a cause of action against
article. the adverse party.

The search warrant cannot even be issued by virtue of a possible RULING No. A trade name need not be registered with the IPO before
violation of the IPR Code. The assailed acts specifically alleged were an infringement suit may be filed by its owner against the owner of an
the manufacture and fabrication of wrought iron furniture similar to that infringing trademark. All that is required is that the trade name is
patented by MENDCO, without securing any license or patent for the previously used in trade or commerce in the Philippines.
same, for the purpose of deceiving or defrauding Mendco and the
buying public. There is evidently no mention of any crime of “unfair Yes, there is a tradename infringement. In determining similarity and
competition” involving design patents in the controlling provisions on likelihood of confusion, our jurisprudence has developed two tests: the
Unfair Competition. It is therefore unclear whether the crime exists at dominancy test and the holistic test. The dominancy test focuses on
all, for the enactment of RA 8293 did not result in the reenactment of the similarity of the prevalent features of the competing trademarks
Art. 189 of the Revised Penal Code. In the face of this ambiguity, we that might cause confusion and deception, thus constituting
must strictly construe the statute against the State and liberally in favor infringement.
of the accused, for penal statutes cannot be enlarged or extended by
intendment, implication or any equitable consideration. If the competing trademark contains the main, essential, and dominant
features of another, and confusion or deception is likely to result,
infringement occurs. Exact duplication or imitation is not required. 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
consumers.
In contrast, 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 marks in order that the observer may draw
his conclusion whether one is confusingly similar to the other.

Applying either the dominancy test or the holistic test, petitioner’s


“SAN FRANCISCO COFFEE” trademark is a clear infringement
ofscriptive 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.