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TRADEMARK CASES.

9/9/18 determine whether noncompeting goods are or are not of the same class is
Prepare for oral recitations. confusion as to the origin of the goods of the second user. Although two
1. Ang Tibay v. Teodoro (74 Phil 50) noncompeting articles may be classified under two different classes by the
Patent Office because they are deemed not to possess the same descriptive
2. Philip Morris, Inc. v. CA 224 scra 624
properties, they would, nevertheless, be held by the courts to belong to the
3. Mirpuri vs. CA same class if the simultaneous use on them of identical or closely similar
4. Victorias Milling Co. vs. Ong Su (79 SCRA 207) trade-marks would be likely to cause confusion as to the origin, or personal
5. Unno Commercial vs. Gen Milling Corp, 205 Phils.707 source, of the second user’s goods. They would be considered as not falling
6. Philip Morris, Inc. v. CA (274 SCRA 576) under the same class only if they are so dissimilar or so foreign to each other
7. Shangrila Hotels vs. DGCI, GR No. 159938, March 31, 2006 as to make it unlikely that the purchaser would think the first user made the
8. Asia Brewery vs. CA, GR No. 103543, 5 July 1993 second user’s goods. The Court of Appeals found in this case that by
uninterrupted and exclusive use since 1910 of respondent’s registered trade-
9. Sterling Products vs. Faber Farbenfabriken AG 27 SCRA 1214
mark on slippers and shoes manufactured by him, it has come to indicate the
10. Pag-asa Industrial Corp. vs. CA, 118 SCRA 526 origin and ownership of said goods. It is certainly not farfetched to surmise
11. Mc Donald's Corp. vs. LC Big Mak Burger, GR No. 243993 that the selection by petitioner of the same trade-mark for pants and shirts was
August 18, 2004 motivated by a desire to get a free ride on the reputation and selling power it
has acquired at the hands of the respondent.

Facts:
ANG V. TEODORO (G.R. NO. L-48226)
Respondent Toribio Teodoro has continuously used "Ang Tibay," both
as a trade-mark and as a trade-name, in the manufacture and sale of
Facts: slippers, shoes, and indoor baseballs since 1910. On September 29,
1915, he formally registered it as trade-mark and as trade-name on
Respondent Teodoro has long been using ‘Ang Tibay’ both as trademark and
tradename in the manufacture and sale of its slippers, shoes and indoor January 3, 1933.
baseballs when he formally registered it. Meanwhile, petitioner Ang registered
Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for
the same trademark ‘Ang Tibay’ for its products of pants and shirts.
Respondent moved to cancel the registration of petitioner’s mark. The trial pants and shirts on April 11, 1932, and established a factory for the
court found for petitioner Ang. CA reversed the judgment. Petitioner argues manufacture of said articles in the year 1937.
the validity of the mark being descriptive; that it had not acquired secondary
meaning in favor of respondent; and that there can be no infringement/unfair The Court of First Instance of Manila absolved the defendant (Ms. Ang)
competition because the goods are not similar. on the grounds that the two trademarks are dissimilar and are used on
different and non-competing goods; that there had been no exclusive
Issues:
(1) Whether or not ‘ANG TIBAY’ is a descriptive term not registrable. use of the trade-mark by the plaintiff; and that there had been no fraud
(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a secondary in the use of the said trade-mark by the defendant because the goods
on which it is used are essentially different from those of the plaintiff.
meaning.
(3) Whether or not there is trademark infringement and/or unfair competition
between unrelated goods. The Court of Appeals reversed said judgment, directing the Director of
Commerce to cancel the registration of the trade-mark "Ang Tibay" in
Ruling:
(1) NO. The phrase “Ang Tibay” is an exclamation denoting administration of favor of petitioner, and perpetually enjoining the latter from using said
strength or durability. For instance, one who tries hard but fails to break an trade-mark on goods manufactured and sold by her.
object exclaims, “Ang tibay!” (How strong!”) The phrase “ang tibay” is never
used adjectively to define or describe an object. One does not say, “ang tibay Thus, this case, a petition for certiorari.
sapatos” or “sapatos ang tibay” is never used adjectively to define or describe
Issue:
an object. One does not say, “ang tibay sapatos” or “sapatos ang tibay” to
mean “durable shoes,” but “matibay na sapatos” or “sapatos na matibay.”
From all of this we deduce that “Ang Tibay” is not a descriptive term within Are the goods or articles or which the two trademarks are used similar
the meaning of the Trade-Mark Law but rather a fanciful or coined phrase or belong to the same class of merchandise?
which may properly and legally be appropriated as a trademark or tradename.
In this connection we do not fail to note that when the petitioner herself took Ruling:
the trouble and expense of securing the registration of these same words as a
trademark of her products she or her attorney as well as the Director of
Commerce was undoubtedly convinced that said words (Ang Tibay) were not Yes, pants and shirts are goods closely similar to shoes and slippers.
a descriptive term and hence could be legally used and validly registered as a They belong to the same class of merchandise as shoes and slippers.
trademark. They are closely related goods.
(2) NO. In view of the conclusion we have reached upon the first assignment The Supreme Court affirmed the judgment of the Court of Appeals and
of error, it is unnecessary to apply here the doctrine of “secondary meaning” added that “although two non-competing articles may be classified
in trade-mark parlance. This doctrine is to the effect that a word or phrase under to different classes by the Patent Office because they are
originally incapable of exclusive appropriation with reference to an article of deemed not to possess the same descriptive properties, they would,
the market, because geographically or otherwise descriptive, might nevertheless, be held by the courts to belong to the same class if the
nevertheless have been used so long and so exclusively by one producer with simultaneous use on them of identical or closely similar trademarks
reference to his article that, in that trade and to that branch of the purchasing would be likely to cause confusion as to the origin, or personal source,
public, the word or phrase has come to mean that the article was his product. of the second user’s goods. They would be considered as not falling
We have said that the phrase “Ang Tibay,” being neither geographic nor under the same class only if they are so dissimilar or so foreign to each
descriptive, was originally capable of exclusive appropriation as a trade-mark. other as to make it unlikely that the purchaser would think that the first
But were it not so, the application of the doctrine of secondary meaning made user made the second user’s goods”.
by the Court of Appeals could nevertheless be fully sustained because, in any
event, by respondent’s long and exclusive use of said phrase with reference to
his products and his business, it has acquired a proprietary connotation.
(3) YES. In the present state of development of the law on Trade-Marks,
Unfair Competition, and Unfair Trading, the test employed by the courts to
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for the Protection of Industrial and Intellectual
Philip Morris Inc vs Property. As corporate nationals of member-
countries of the Paris Union, they can sue before
Court of Appeals Philippine courts for infringement of trademarks, or
for unfair competition, without need of obtaining
registration or a license to do business in the
Doctrine of Incorporation Philippines, and without necessity of actually doing
business in the Philippines.

PHILIP MORRIS, INC. VS COURT OF APPEALS


Philip Morris and its subsidiaries filed the
G.R. No. 91332 July 16, 1993
complaint for infringement and damages against
PHILIP MORRIS, INC., BENSON & HEDGES Fortune Tobacco before the Pasig Regional Trial
(CANADA), INC’, AND FABRIQUES OF Court (RTC) for manufacturing and selling
TABAC REUNIES, S.A petitioners, cigarettes bearing the trademark “Mark” which is
vs. identical and confusingly similar to Philip Morris
THE COURT OF APPEALS AND FORTUNE trademarks. The said act was dismissed. Hence, this
TOBACCO CORPORATION, respondents. petition at bar.
Issue/s:
Whether or not there has been an invasion of
plaintiffs’ right of property to such trademark or
trade name.
Facts:
This is a petition for review under Rule 45 of the
Rules of Court, to seek the reversal and setting aside Discussions:
of the following issuances of the Court of Appeals
Following universal acquiescence and comity, our
(CA).
municipal law on trademarks regarding the
requirement of actual use in the Philippines must
subordinate an international agreement inasmuch as
Philip Morris, Inc. and two other petitioners are the apparent clash is being decided by a municipal
ascribing whimsical exercise of the faculty tribunal. Withal, the fact that international law has
conferred upon magistrates by Section 6, Rule 58 of been made part of the law of the land does not by
the Revised Rules of Court when respondent Court any means imply the primacy of international law
of Appeals lifted the writ of preliminary injunction over national law in the municipal sphere. Under
it earlier had issued against Fortune Tobacco the doctrine of incorporation as applied in most
Corporation, from manufacturing and selling countries, rules of international law are given a
“MARK” cigarettes in the local market. Banking on standing equal, not superior, to national legislative
the thesis that petitioners’ respective symbols enactments
“MARK VII”, ‘MARK TEN”, and “MARK”, also
for cigarettes, must be protected against
unauthorized appropriation.

All petitioners are not doing business in the Ruling/s:


Philippines but are suing on an isolated transaction,
No. There is no proof that any of petitioner’s
They Invoked provisions of the Paris Convention
products which they seek to protect from any
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adverse effect of the trademark applied for by the protection of industrial property of foreign
defendant, is in actual use and available for nationals in this country. However, any
commercial purposes anywhere in the Philippines. protection accorded has to be made subject to
the limitations of Philippine laws.
 Considering that R.A. No. 166, as amended,
A fundamental principle of Philippine Trademark specifically Sections 228 and 2-A29 thereof,
Law is that actual use in commerce in the mandates actual use of the marks and/or
Philippines is a pre-requisite to the acquisition of emblems in local commerce and trade before
ownership over a trademark or a trade name. they may be registered and ownership thereof
acquired, the petitioners cannot, therefore,
dispense with the element of actual use. Their
In view of the explicit representation of petitioners being nationals of member-countries of the
in the complaint that they are not engaged in Paris Union does not alter the legal situation.
business in the Philippines, it inevitably follows that  Withal, the fact that international law has been
no conceivable damage can be suffered by them not made part of the law of the land does NOT by
to mention the foremost consideration heretofore any means imply the primacy of international
discussed on the absence of their “right” to be law over national law in the municipal sphere.
protected. Under the DOCTRINE OF INCORPORATION
as applied in most countries, rules of
Xx International Law are given a standing EQUAL,
not superior, to national legislative enactments.
 Such a foreign corporation may have the
PHILIP MORRIS, INC. v. FORTUNE
personality to file a suit for infringement but it
TOBACCO CORPORATION
may not necessarily be entitled to protection
 RECIPROCITY: While petitioners enjoy the
due to absence of actual use of the emblem in
statutory presumptions arising from such
the local market.
registration, i.e., as to the validity of the
 The registration of trademark cannot be deemed
registration, ownership and the exclusive right
conclusive as to the actual use of such
to use the registered marks, they may not
trademark in local commerce. As it were,
successfully sue on the basis alone of their
registration does not confer upon the registrant
respective certificates of registration of
an absolute right to the registered mark. The
trademarks. For, petitioners are still foreign
certificate of registration merely constitutes
corporations. As such, they ought, as a
prima facie evidence that the registrant is the
condition to availment of the rights and
owner of the registered mark. Evidence of non-
privileges vis-à-vis their trademarks in this
usage of the mark rebuts the presumption of
country, to show proof that, on top of Philippine
trademark ownership, as what happened here
registration, their country grants substantially
when petitioners no less admitted not doing
similar rights and privileges to Filipino citizens
business in this country.
pursuant to Section 21-A20 of R.A. No. 166.
 Shangri-La International Hotel Management, Ltd.
 ID: The aforementioned reciprocity requirement is
v. Development Group of Companies, Inc.:
a condition sine qua non to filing a suit by a
trademark is a creation of use and, therefore,
foreign corporation which, unless alleged in the
actual use is a pre-requisite to exclusive
complaint, would justify dismissal thereof, a
ownership; registration is only an
mere allegation that the suit is being pursued
administrative confirmation of the existence of
under Section 21-A of R.A. No. 166 not being
the right of ownership of the mark, but does not
sufficient.
perfect such right; actual use thereof is the
 REGISTRATION VERSUS ACTUAL USE: True,
perfecting ingredient.
the Philippines’ adherence to the Paris
 With the foregoing perspective, it may be stated
Convention24 effectively obligates the country
right off that the registration of a trademark
to honor and enforce its provisions as regards
unaccompanied by actual use thereof in the
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country accords the registrant only the  Similarly, petitioner Benson & Hedges
standing to sue for infringement in Philippine (Canada), Inc., a subsidiary of Philip Morris, Inc.,
courts. Entitlement to protection of such is the registered owner of the trademark
trademark in the country is entirely a different “MARK TEN” for cigarettes (PPO Certificate of
matter. Registration No. 11147)
 For lack of convincing proof on the part of the  Fabriques de Tabac Reunies, S.A. (Swiss
petitioners of actual use of their registered company), another subsidiary of Philip Morris,
trademarks prior to respondent’s use of its Inc., is the assignee of the trademark “LARK,”
mark and for petitioners’ failure to demonstrate (Trademark Certificate of Registration No.
confusing similarity between said trademarks, 19053) (originally registered in 1964 by Ligget
the dismissal of their basic complaint for and Myers Tobacco Company)
infringement and the concomitant plea for  Respondent Fortune Tobacco Corporation, a
damages must be affirmed. The law, the company organized in the Philippines,
surrounding circumstances and the equities of manufactures and sells cigarettes using the
the situation call for this disposition. trademark “MARK.”

 Petitioners, on the claim that an infringement of


Xx
their respective trademarks had been
PHILIP MORRIS, INC. VS. FORTUNE TOBACCO committed, filed, on August 18, 1982, a
CORPORATION (Equal Standing of International Law Complaint for Infringement of Trademark and
and Municipal Law) Damages against respondent Fortune Tobacco
Corporation, docketed as Civil Case No. 47374
Penned by: GARCIA, J.: of the Regional Trial Court of Pasig, Branch 166.
The decision under review summarized what
Petition for review under Rule 45 of the Rules of Court, happened next, as follows:
o Prayer for the issuance of a preliminary injunction, [petitioners]
petitioners Philip Morris, Inc., Benson & Hedges alleged that they are foreign corporations not doing business in
(Canada) Inc., and Fabriques de Tabac Reunies, S.A. the Philippines and are suing on an isolated transaction.
o Countries in which they are domiciled grant to
(now Philip Morris Products S.A.) seek the reversal and corporate or juristic persons of the Philippines the
setting aside of the following issuances of the Court of privilege to bring action for infringement, without
Appeals (CA) in CA-G.R. CV No. 66619: PETITION need of a license to do business in those countries.
o [Petitioners] likewise manifested [being registered owners of the
DENIED trademark “MARK VII” and “MARK TEN”
o registered the trademarks in their respective countries
of origin
1. Decision dated January 21, 20031 affirming an  by virtue of the long and extensive usage of
earlier decision of the Regional Trial Court of Pasig the same, these trademarks have already
City, Branch 166, in its Civil Case No. 47374 gained international fame and acceptance
 [respondent], without any previous consent
 Dismissed the complaint for trademark from any of the [petitioners], manufactured
infringement and damages thereat commenced and sold cigarettes bearing the identical
by the petitioners against respondent Fortune and/or confusingly similar trademark
“MARK”
Tobacco Corporation; and  have caused and is likely to cause confusion
2. Resolution dated May 30, 20032 denying petitioners’ or mistake, or would deceive purchasers
and the public in general into buying these
motion for reconsideration. products under the impression and
mistaken belief that they are buying
FACTS OF THE CASE: [petitioners’] products.
o Invoked provisions of the Paris Convention for the
 Petitioner Philip Morris, Inc., a corporation Protection of Industrial and Intellectual Property (Paris
(State of Virginia, U.S.A), is the registered Convention)
o Philippines is a signatory, [petitioners] pointed out that
owner of the trademark “MARK VII” for upon the request of an interested party, a country of
cigarettes. (per Certificate of Registration No. the Union may prohibit the use of a trademark which
18723 issued on April 26, 1973 by the Philippine constitutes a reproduction, imitation, or translation of
a mark already belonging to a person entitled to the
Patents Office (PPO) benefits of the said Convention. In accordance with
Section 21-A in relation to Section 23 of Republic Act
166, as amended, they are entitled to relief in the form

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of damages [and] the issuance of a writ of preliminary o question of fact when the doubt or difference
injunction which should be made permanent. arises as to the truth or falsity of alleged facts
o [Respondent] filed its Answer denying [petitioners’]  Court is not the proper venue to
material allegations and averred [among other things] that
consider factual issues as it is not a
“MARK” is a common word, which cannot particularly identify a
product to be the product of the [petitioners] trier of facts
o After the termination of the trial on the merits trial court  Unless the factual findings of the
rendered its Decision dated November 3, 1999 dismissing the appellate court are mistaken, absurd,
complaint and counterclaim after making a finding that the speculative, conflicting, tainted with
[respondent] did not commit trademark infringement against the grave abuse of discretion, or contrary
[petitioners]. to the findings culled by the court of
o The issue of whether or not there was infringement of origin, we will not disturb them
the [petitioners’] trademarks by the [respondent] was likewise
 Petitioners: contentions should be treated as purely legal
answered in the negative. It expounded that “in order for a
name, symbol or device to constitute a trademark, it must, either
since they are assailing erroneous conclusions deduced
by itself or by association, point distinctly to the origin or from a set of undisputed facts
ownership of the article to which it is applied and be of such
nature as to permit an exclusive appropriation by one person”.
 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
 Maintaining to have the standing to sue in the identify and distinguish them from those
local forum and that respondent has committed manufactured, sold, or dealt in by others.
trademark infringement, petitioners went on o A trademark deserves protection.
appeal to the CA. (Appellate recourse docket
CA-G.R. CV No. 66619) PETITIONER:
o CA decision on January 21, 2003 (while  Petitioners assert that, as corporate nationals
ruling for petitioners on the matter of of member-countries of the Paris Union, they
their legal capacity to sue in this can sue before Philippine courts for
country for trademark infringement) infringement of trademarks, or for unfair
affirmed the trial court’s decision on competition, without need of obtaining
the underlying issue of respondent’s registration or a license to do business in the
liability for infringement. Philippines, and without necessity of actually
 Motion for reconsideration denied by the CA doing business in the Philippines.
(Resolution of May 30, 2003) o Right and mechanism are accorded by
 Section 21-A of Republic Act
ISSUES (R.A.) No. 166 or the
 Petitioners seek petition for review (Court of Trademark Law, as amended
Appeals):  Article 2 of the Paris
o (1) whether or not petitioners, as Convention for the Protection
Philippine registrants of trademarks, of Industrial Property, aka Paris
are entitled to enforce trademark Convention.
rights in this country;  Not doing business in the Philippines does not
o (2) whether or not respondent has mean that cigarettes bearing their trademarks
committed trademark infringement are not available and sold locally. Citing
against petitioners by its use of the Converse Rubber Corporation v. Universal
mark “MARK” for its cigarettes, hence Rubber Products, Inc., such availability and sale
liable for damages. may be effected through the acts of importers
and distributors.
 Respondent: issue the propriety of the petition as it  Entitlement to protection even in the absence
allegedly raises questions of fact. of actual use of trademarks in the country
 The petition is bereft of merit. o Philippines’ adherence to the Trade
 Petition raises both questions of fact and law
o question of law exists when the doubt or
Related Aspects of Intellectual
difference arises as to what the law is on a Property Rights or the TRIPS
certain state of facts Agreement

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o enactment of R.A. No. 8293, or the o complainant is a national of a Paris
Intellectual Property Code (“IP Code”) Convention- adhering country, its
o fame of a trademark may be acquired allegation that it is suing under said
through promotion or advertising with Section 21-A would suffice, because
no explicit requirement of actual use in the reciprocal agreement between the
local trade or commerce two countries is embodied and
supplied by the Paris Convention
 Before discussing petitioners’ claimed  being considered part of
entitlement to enforce trademark rights in the Philippine municipal laws, can
Philippines, it must be emphasized that their be taken judicial notice of in
standing to sue in Philippine courts had been infringement suits.
recognized, and rightly so, by the CA
o such right to sue does not necessarily 2. REGISTRATION VERSUS ACUAL USE!!
mean protection of their registered
marks in the absence of actual use in  members of the Paris Union does not
the Philippines. automatically entitle petitioners to the
protection of their trademarks in this country
Thus clarified, what petitioners now harp about is their ABSENT ACTUAL USE OF THE MARKS IN LOCAL
entitlement to protection on the strength of COMMERCE AND TRADE.
registration of their trademarks in the Philippines.
 Philippines’ adherence to the Paris Convention
HELD/RATIO: effectively obligates the country to honor and
enforce its provisions( as regards the
As we ruled in G.R. No. 91332,18 : protection of industrial property of foreign
nationals in this country)
1. RECIPROCITY REQUIREMENT o However, any protection accorded has
 Registration of a trademark gives the to be made subject to the limitations
registrant (petitioners) advantages denied of Philippine laws.
non-registrants or ordinary users (respondent) o Hence, despite Article 2 of the Paris
o validity of the registration Convention which substantially
o ownership and the exclusive right to provides that:
use the registered marks  (1) nationals of member-
 they may not successfully sue on the basis countries shall have in this
alone of their respective certificates of country rights specially
registration of trademarks. provided by the Convention as
o Petitioners: still foreign corporations are consistent with Philippine
o condition to availment of the rights laws, and enjoy the privileges
and privileges & their trademarks in that Philippine laws now grant
this country: or may hereafter grant to its
 On top of Philippine national
registration, their country  (2) while no domicile
grants substantially similar requirement in the country
rights and privileges to Filipino where protection is claimed
citizens pursuant to Section 21- shall be required of persons
A20 of R.A. No. 166. entitled to the benefits of the
 In Leviton Industries v. Salvador Union for the enjoyment of any
o Court: reciprocity requirement is a industrial property rights
condition sine qua non to filing a suit by  foreign nationals must still
a foreign corporation observe and comply with
 Unless alleged in the complaint, the conditions imposed by
would justify dismissal
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Philippine law on its international law over
nationals. national law in the
municipal sphere.
 R.A. No. 166 (as amended, specifically Sections  Under the DOCTRINE OF
228 and 2-A29), mandates actual use of the INCORPORATION as
marks and/or emblems in local commerce and
applied in most countries,
trade before they may be registered and
ownership thereof acquired rules of International Law
o the petitioners cannot, therefore, are given a standing
dispense with the element of actual EQUAL, not superior, to
use. national legislative
o Their being nationals of member- enactments.
countries of the Paris Union does not
 A foreign corporation) may
alter the legal situation.
have the capacity to sue for
infringement … but whether
 In Emerald Garment Mfg. Corporation v. Court
of Appeals, the Court reiterated its rulings in they have an exclusive right
Sterling Products International, Inc. v. over their symbol as to justify
Farbenfabriken Bayer Aktiengesellschaft, issuance of the controversial
Kabushi Kaisha Isetan v. Intermediate Appellate writ will depend on actual
Court, and Philip Morris v. Court of Appeals use of their trademarks in
and Fortune Tobacco Corporation on the the Philippines in line with
importance of ACTUAL COMMERCIAL USE Sections 2 and 2-A of the
OF A TRADEMARK in the Philippines same law.
notwithstanding the Paris Convention:  It is thus incongruous for
o The provisions of the 1965 Paris petitioners to claim that
Convention … relied upon by private when a foreign corporation
respondent and Sec. 21-A of the not licensed to do business
Trademark Law were sufficiently in the Philippines files a
expounded upon and qualified in complaint for infringement,
the recent case of Philip Morris, the entity need not be
Inc., et. al. vs. Court of Appeals: actually using its trademark
 Following universal in commerce in the
acquiescence and comity, Philippines.
our municipal law on  Such a foreign corporation
trademarks regarding the may have the personality to
requirements of actual use in file a suit for infringement
the Philippines must but it may not necessarily be
subordinate an international entitled to protection due to
agreement inasmuch as the absence of actual use of the
apparent clash is being emblem in the local market.
decided by a municipal
tribunal.  Registration of trademark cannot be deemed
 Withal, the fact that conclusive as to the actual use of such
international law has been trademark in local commerce.
o registration does not confer upon the
made part of the law of the
registrant an absolute right to the
land does NOT by any means registered mark.
imply the primacy of
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o merely constitutes prima facie evidence
that the registrant is the owner of the MIRPURI vs. COURT OF APPEALS; 318
registered mark. SCRA
o Evidence of non-usage of the mark  Definition of Trademark: This definition has been
rebuts the presumption of trademark simplified in R.A. No. 8293, the Intellectual
ownership Property Code of the Philippines, which defines
 We stress that registration in the Philippines of a "trademark" as "any visible sign capable of
trademarks does not ipso facto convey an distinguishing goods." In Philippine
absolute right or exclusive ownership thereof. jurisprudence, the function of a trademark is to
o Shangri-La International Hotel point out distinctly the origin or ownership of
Management, Ltd. v. Development the goods to which it is affixed; to secure to
Group of Companies, Inc. him, who has been instrumental in bringing into
 Trademark is a creation of use the market a superior article of merchandise,
 Actual use is a pre-requisite to the fruit of his industry and skill; to assure the
exclusive ownership public that they are procuring the genuine
 Registration is only an
article; to prevent fraud and imposition; and to
administrative confirmation of
protect the manufacturer against substitution
the existence of the right of
and sale of an inferior and different article as
ownership of the mark
his product
 does not perfect such
 THREE DISTINCT FUNCTIONS OF
right; actual use
TRADEMARKS: Modern authorities on
thereof is the
trademark law view trademarks as performing
perfecting ingredient.
three distinct functions: (1) they indicate origin
 Petitioners’ reliance on Converse Rubber or ownership of the articles to which they are
Corporation is quite misplaced attached; (2) theyguarantee that those articles
o different factual milieu come up to a certain standard of quality; and
o foreign owner of a Philippine trademark, (3) they advertise the articles they symbolize.
albeit not licensed to do, and not so  Today, the trademark is not merely a symbol of
engaged in, business in the Philippines, may origin and goodwill; it is often the most effective
actually earn reputation or goodwill for its
agent for the actual creation and protection of
goods in the country.
o But unlike in the instant case, evidence of goodwill. It imprints upon the public mind an
actual sales of Converse rubber shoes, such anonymous and impersonal guaranty of
as sales invoices, receipts and the satisfaction, creating a desire for further
testimony of a legitimate trader, was satisfaction. In other words, the mark actually
presented in Converse. sells the goods. The mark has become the
 This Court also finds the IP Code and the TRIPS "silent salesman," the conduit through which
Agreement to be inapplicable direct contact between the trademark owner
o the infringement complaint filed in and the consumer is assured. It has invaded
August 1982 and tried under the aegis popular culture in ways never anticipated that it
of R.A. No. 166, as amended. has become a more convincing selling point
o The IP Code (January 1, 1998) no than even the quality of the article to which it
provision on retroactivity; TRIPS refers
Agreement (December 16, 1994)  The Convention of Paris for the Protection of
 registration of a trademark unaccompanied by Industrial Property, otherwise known as the
actual use thereof in the country accords the Paris Convention, is a multilateral treaty that
registrant only the standing to sue for seeks to protect industrial property consisting
infringement in Philippine courts. Entitlement of patents, utility models, industrial designs,
to protection of such trademark in the country trademarks, service marks, trade names and
is entirely a different matter. indications of source or appellations of origin,
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and at the same time aims to repress unfair investments in new ideas and inventions and
competition stimulates creative efforts for the satisfaction of
 In short, foreign nationals are to be given the human needs. They speed up transfer of
same treatment in each of the member technology and industrialization, and thereby
countries as that country makes available to its bring about social and economic progress.
own citizens. Nationals of the various member These advantages have been acknowledged
nations are thus assured of a certain minimum by the Philippine government itself.
of international protection of their industrial  Res judicata therefore does not apply to the
property. instant case and respondent Court of
 Article 6bis governs protection of well-known Appeals did not err in so ruling. IPC No.
trademarks. Under the first paragraph, each 2049 raised the issue of ownership of the
country of the Union bound itself to undertake trademark, the first registration and use of
to refuse or cancel the registration, and prohibit the trademark in the United States and
the use of a trademark which is a reproduction, other countries, and the international
imitation or translation, or any essential part of recognition and reputation of the trademark
which trademark constitutes a reproduction, established by extensive use and
liable to create confusion, of a mark considered advertisement of private respondent's
by the competent authority of the country products for over forty years here and
where protection is sought, to be well-known in abroad. These are different from the issues of
the country as being already the mark of a confusing similarity and damage in IPC No.
person entitled to the benefits of the 686. The issue of prior use may have been
Convention, and used for identical or similar raised in IPC No. 686 but this claim was limited
goods. to prior use in the Philippines only. Prior use in
 Article 6bis of the Paris Convention is a self- IPC No. 2049 stems from private respondent's
executing provision and does not require claim as originator of the word and symbol
legislative enactment to give effect in the "Barbizon," as the first and registered user of
member country. the mark attached to its products which have
 The essential requirement under Article 6bis is been sold and advertised worldwide for a
that the trademark to be protected must be considerable number of years prior to
"well-known" in the country where protection is petitioner's first application for registration of
sought. The power to determine whether a her trademark in the Philippines. Indeed,
trademark is well-known lies in the "competent these are substantial allegations that raised
authority of the country of registration or use." new issues and necessarily gave private
This competent authority would be either the respondent a new cause of action. Res
registering authority if it has the power to judicata does not apply to rights, claims or
decide this, or the courts of the country in demands, although growing out of the same
question if the issue comes before a court. subject matter, which constitute separate or
 Intellectual and industrial property rights distinct causes of action and were not put in
cases are not simple property cases. issue in the former action.
Trademarks deal with the psychological  It is also noted that the oppositions in the first
function of symbols and the effect of these and second cases are based on different
symbols on the public at large. Trademarks laws. The opposition in IPC No. 686 was
play a significant role in communication, based on specific provisions of the Trademark
commerce and trade, and serve valuable and Law, i.e., Section 4 (d) on confusing similarity
interrelated business functions, both nationally of trademarks and Section 8 on the requisite
and internationally. For this reason, all damage to file an opposition to a petition for
agreements concerning industrial property, like registration. The opposition in IPC No. 2049
those on trademarks and tradenames, are invoked the Paris Convention, particularly
intimately connected with economic Article 6bis thereof, E.O. No. 913 and the two
development. Industrial property encourages Memoranda of the Minister of Trade and
Page 9 of 13
Industry. This opposition also invokedArticle The contention of petitioner that the diamond design in its
trademark is an index of origin has no merit. The petitioner has
189 of the Revised Penal Code which is a not shown that the design portion of the mark has been so
statute totally different from the Trademark used that purchasers recognize the design, standing alone, as
Law. indicating goods coming from the registrant. As correctly stated
by the Director of Patents, common geometric shapes such as
diamonds ordinarily are not regarded as indicia of origin for
goods to which the marks are applied unless they have
4. Victorias Milling Co. vs. Ong Su (79 SCRA 207) acquired a secondary meaning. And there is no evidence that
the diamond design in the trademark of the petitioner has
acquired a secondary meaning with respect to its sugar
business. The word “Victorias” is what identifies the sugar
[G.R. No. L-28499. September 30, 1977.] contained in the bag as the product of the petitioner. Indeed,
the petitioner has advertised its sugar in bags marked
FACTS: The petitioner, Victorias Milling Company, Inc., a “Victorias” with oval, hexagon and other designs.
domestic corporation and engaged in the manufacture and
sale of refined granulated sugar, is the owner of the trademark The evidence is that ONG Su has been using his trademark
“VICTORIAS” and diamond design registered in the Philippines since prior to the last World War and he obtained the
Patent Office on November 9, 1961. registration thereof on June 20, 1961. Vijandre declared that
The respondent ONG Su is engaged in the repacking and sale the petitioner started to use its trademark only in 1947. Said
of refined sugar and is the owner of the trademark trademark was registered on November 9, 1961. It cannot be
“VALENTINE” and design registered in the Philippines Patent said, therefore, that the respondent ONG Su imitated the
Office on June 20, 1961. trademark of the petitioner.
On October 4, 1963, Victorias Milling Company, Inc. filed with
the Philippines Patent Office a petition to cancel the It seems clear that the words “Valentine” and “Victorias” and
registration of the ONG Su trademark “Valentine.” the names and places of business of Victorias Milling
Company, Inc. and ONG Su are the dominant features of the
The petitioner alleged that its trademark “Victorias” and trademarks in question. The petitioner has not established
diamond design has become distinctive of its sugar long before such a substantial similarity between the two trademarks in
the respondent used its trademark; that the registration of question as to warrant the cancellation of the trademark
“Valentine” and design has caused and will cause great ‘Valentine’ of the respondent ONG Su.
damage to petitioner by reason of mistake, confusion, or
deception among the purchasers because it is similar to its Xxx
“Victorias” trademark; that registration was fraudulently
obtained by respondent ONG Su; and that “Valentine” falsely
suggests a connection with Saint Valentine or with an
institution or belief connected therewith.
In his answer to the petition the respondent averred that he is Victorias Milling Company, Inc. vs. Ong Su and the
doing business under the name and style “Valentine
Packaging” and has registered the trademark “Valentine” with Honorable Tiburcio S. Evalle (G.R. No. L-28499)
a design for sugar and was issued Certificate of Registration
No. 8891 dated June 20, 1961; that the trademark “Victorias”
with diamond design and the trademark “Valentine” with a
PROCEDURE AND FACTS
design are two different marks; and that there is absolutely no
likelihood of confusion, mistake or deception to purchasers On October 4,1963, Victorias Milling Company,
through the concurrent use of the petitioner’s mark “Victorias”
with a diamond design and the respondents’ mark “Valentine” Inc. filed with the Philippine Patent office a
with a design in connection with sugar. petition to cancel the registration of Ong Su
The Director of Patents denied the petition to cancel the trademark “Valentine.”
certificate of registration of the respondent ONG Su covering
the trademark “Valentine” and design. “Herein that the
petitioner failed to establish that diamond design
The petitioner allied that its trademark
component of its mark has acquired a secondary meaning “Victorias” which was registered on November
and that the literal portion of the marks have no similarity,
there is no reasonable likelihood of purchaser confusion 9,1961 and diamond design has distinctive of its
resulting from registrant’s use of VALENTINE within a sugar long before the respondent used its
diamond and petitioner’s use of VICTORIAS within a
diamond.” trademark; that the registration of “Valentine”
ISSUE: WON RESPONDENT DIRECTOR OF PATENTS
ERRED IN HOLDING PETITIONER’S DIAMOND DESIGN and design has caused and will cause great
HAS NOT ACQUIRED A SECONDARY MEANING. damage to petitioner by reason of mistake,
HELD: NO. The DOP is correct. Peitioner has not acquired confusion, or deception among the purchasers
secondary meaning.
because it is similar to its “Victorias trademark;

Page 10 of 13
that registration was fraudulently obtained by one sole item of their design, ignoring
Ong Su and that “ Valentine falsely suggest a the complete labels as actually used in
connection with Saint Valentine or with an trade and seen by consumers.
institution or belief.
5. Whether or not the respondent
The respondent averred that he is doing business director of patents erred in taking the
under the name and style “Valentine Packaging” position that in cases of trademark
and has registered the trademark “Valentine” cancellation involving among others
with a design for sugar and was registered on June
6. Whether or not the respondent
20,1961; that the trademark “Victorias with
director of patents erred in holding
diamond design and the trademark “Valentine
that because the literal portions of the
with a design are two different marks; and that
respective trademarks in question,
there is absolutely no likelihood of confusion,
namely, the respective names
mistake or deception to purchasers through the
“Victorias and “Valentine”, have no
concurrent use of the petitioner’s mark “Victorias.
similarity, there is no reasonable
The Director of Patents denied the petition to likelihood of purchaser confusion.
cancel the certificate of registration of the
7. Whether or not the respondent
respondent Ong Su covering the trademark
director of patents erred in assuming
“Valentine. The decision of the Director of Patents
that petioner, or the owner of any
was also affirmed by the Supreme Court.
imitated or infringed trademark for
LEGAL ISSUES that matter must establish actual
purchaser confusion.
1. Whether or not the respondent
director of patents erred in holding 8. Whether or not the respondent
that petitioner’s registered diamond director of patents erred in holding
design is not an index of origin. that the registration of the Valentine
trademark by respondent Ong Su was
2. Whether or not the respondent
not prudulently obtained.
director of patents erred in holding
that petioner is required to establish 9. Whether or not the respondent
that its diamond design has acquired a director of patents, acting through
secondary meaning. hearing officer Amando Marquez, erred
in admitting respondent Ong Su’s
3. Whether or not the respondent
exhibits pertaining to one Mariano Ang
director of patents erred in holding
said name not having been clearly
petitioner’s diamond design has not
established as an alias, although
acquired a secondary meaning.
admittedly unauthorized, of
4. Whether or not the respondent respondent Ong Su.
director of patents erred in confining
HOLDING
his comparison of petitioner’s and
respondent’s respective trademarks to
Page 11 of 13
1. The contention of petitioner that the Victorias and when he went home he
diamond design in its trademark is an found out that the sugar was marked
index of origin has no merit. “Valentine” is not sufficient evidence
that the two trademarks ar so similar
2. The petitioner was not able to establish
that buyers are confused.
a secondary meaning. The petioners
has not shown that the design portion 8. No, there is no evidence that the
of the mark has been so used that respondent Ong Su had obtained the
purchasers recognize the design, registration of his trademark
standing alone, as indicating goods “Valentine” and design by means of
coming from registrant. fraud. The said trademark was
registered in the Philippines Patent
3. No, as correctly stated by the Director
Office before the petitioner registered
of Patents, common geometric shapes
its trademark.
such as diamonds ordinarily are not
regarded as index of origin for goods to 9. No, the counsel of petitioner had
which the remarks are applied. There is already extensively cross-examined
no evidence that the diamond design in Ong Su as to a citizenship, alien
the trademark of the petitioner has certificate of registration and the other
acquired a secondary meaning with name Mariano Ang. It seems
respect to its sugar business. immaterial whether or not Ong Su has
judicial authority to use Mariano Ang
4. No, The word Victorias is what
as an alias. There is evidence that even
identifies the sugar contained in the
before the last World War, the
bag as the product of the petitioner.
trademark “Valentine and design had
5. No, the respondent trademark cannot been used under the name of either
be cancelled. The evidence is that Ong Ong Su or Mariano Ang.
Su has been using his trademark since
REASON FOR A DECISION
prior to the last World War and he
obtained the registration therof on There is no violation of trademark in this case. The
June 20,1961 while petitioner petitioner never acquired secondary meaning in
registered on November 9,1961. trademark used. There is no reasonable likelihood
of purchaser’s confusion. Color alone, unless
6. No, it is clear that the words “Valentine
displayed in distinct or arbitrary design, does not
and Victorias are not similar in spelling
function as trademark. Also, the printing
and do not have a similar sound when
sequences or arrangement of such legends as
pronounced.
weight, contents and manufacturer packing, it is
7. No, The proposed testimony of merely a matter pertaining to goods. A matter of
Ernesto Duran that in February 1963 he unfair competition which the Patent office has no
went to Arangue market and bought jurisdiction.
one bag of sugar which he thought was

Page 12 of 13
Doctrine of Secondary Meaning

mark has become distinctive, as used on or in


connection with the applicant's goods in commerce.

secondary meaning doctrine is that the mark comes to


identify not only the goods but the source of those
goods. To establish secondary meaning, it must be
shown that the primary significance of the term in the
minds of the consuming public is not the product but
the producer.

5. Unno Commercial vs. Gen Milling Corp, 205 Phils.707


6. Philip Morris, Inc. v. CA (274 SCRA 576)
7. Shangrila Hotels vs. DGCI, GR No. 159938, March 31, 2006
8. Asia Brewery vs. CA, GR No. 103543, 5 July 1993
9. Sterling Products vs. Faber Farbenfabriken AG 27 SCRA 1214
10. Pag-asa Industrial Corp. vs. CA, 118 SCRA 526
11. Mc Donald's Corp. vs. LC Big Mak Burger, GR No. 243993
August 18, 2004

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