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9/8/2018 SUPREME COURT REPORTS ANNOTATED VOLUME 115

472 SUPREME COURT REPORTS ANNOTATED


Philippine Refining Co., Inc. vs. Ng Sam

*
No. L-26676. July 30, 1982.

PHILIPPINE REFINING CO., INC., petitioner, vs. NG


SAM and THE DIRECTOR OF PATENTS, respondents.

Trademarks and Tradenames; Concept of Trademark


protection.—A rudimentary precept in trademark protection is
that “the right to a trademark is a limited one, in the sense that
others may use the same mark on unrelated goods.” Thus, as
pronounced by the United States Supreme Court in the case of
American Foundries vs. Robertson, “the mere fact that one person
has adopted and used a trademark on his goods does not prevent
the adoption and use of the same trademark by others on articles
of a different description.

Same; Restricted right over a trademark—that some


trademark may be used by another on unrelated goods—is
reflected in our Trademark Law.—Such restricted right over a
trademark is likewise reflected in our Trademark Law. Under
Section 4(d) of the law, registration of a trademark which so
resembles another already registered or in use should be denied,
where to allow such registration could likely result in confusion,
mistake or deception to the consumers. Conversely, where no
confusion is likely to arise, as in this case, registration of a similar
or even identical mark may be allowed.

Same; “CAMIA” is descriptive of a whole genus of garden


plants.—The term “CAMIA” is descriptive of a whole genus of
garden plants with fragrant white flowers. Some people call the
“CAMIA” the “white ginger plant” because of its tuberous roots,
while children refer to it as the butterfly flower because of its
shape. Being a generic and common term, its appropriation as a
trademark, albeit in a fanciful manner in that it bears no relation
to the product it identifies, is valid. However, the degree of
exclusiveness accorded to each user is closely restricted.

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* SECOND DIVISION.

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VOL. 115, JULY 30, 1982 473

Philippine Refining Co., Inc. vs. Ng Sam

Same; Purpose of a trademark.—A trademark is designed to


identify the user. But it should be so distinctive and sufficiently
original as to enable those who come into contact with it to
recognize instantly the identity of the user. “It must be
affirmative and definite, significant and distinctive, capable to
indicate origin.”

Same; “CAMIA” as a trademark is far from being distinctive


of goods of petitioner.—It is evident that “CAMIA” as a trademark
is far from being distinctive. By itself, it does not identify
petitioner as the manufacturer or producer of the goods upon
which said mark is used, as contra-distinguished to trademarks
derived from coined words such as “Rolex”, “Kodak” or “Kotex”. It
has been held that “if a mark is so commonplace that it cannot be
readily distinguished from others, then it is apparent that it
cannot identify a particular business; and he who first adopted it
cannot be injured by any subsequent appropriation or imitation
by others, and the public will not be deceived.”

Same; Same.—The trademark “CAMIA” is used by petitioner


on a wide range of products: lard, butter, cooking oil, abrasive
detergents, polishing materials and soap of all kinds. Respondent
desires to use the same on his product, ham. While ham and some
of the products of petitioner are classified under Class 47 (Foods
and Ingredients of Food), this alone cannot serve as the decisive
factor in the resolution of whether or not they are related goods.
Emphasis should be on the similarity of the products involved and
not on the arbitrary classification or general description of their
properties or characteristics.

Same; “CAMIA” used by a manufacturer for lard, butter,


cooking oil, soap, and the like, can be used as a trademark by
another for its ham products, ham not being a daily food fare of
the average consumer.—The observation and conclusion of the
Director of Patents are correct. The particular goods of the parties
are so unrelated that consumers would not in any probability
mistake one as the source or origin of the product of the other.
‘Ham” is not a daily food fare for the average consumer. One
purchasing ham would exercise a more cautious inspection of
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what he buys on account of its price. Seldom, if ever, is the


purchase of said food product delegated to household helps, except
perhaps to those who, like the cooks, are expected to know their
business. Besides, there can be no likelihood for the consumer of
respondent’s ham to confuse its source as anyone but respondent.
The facsimile of the label attached by him on his product, his
business name “SAM’S HAM AND BACON FACTORY”

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474 SUPREME COURT REPORTS ANNOTATED

Philippine Refining Co., Inc. vs. Ng Sam

written in bold white letters against a reddish orange


background, is certain to catch the eye of the class of consumers to
which he caters.

Same; Same.—In addition, the goods of petitioners are


basically derived from vegetable oil and animal fats, while the
product of respondent is processed from pig’s legs. A consumer
would not reasonably assume that petitioner has so diversified its
business as to include the product of respondent.

De Castro, J., dissenting:

Trademarks and Tradenames; Respondent should be


prohibited from using “CAMIA” as brandname of its ham products
as it falls under the same classification of “Food and Ingredients of
Foods” as petitioner’s products such as lard, butter, cooking oil
and the like.—I vote to grant the petition of the Philippine
Refining Co. Inc. As the registered owner and prior user of the
trademark, “CAMIA” on a wide variety of products such as lard,
butter, cooking oil, abrasive detergents, polishing materials and
soap of all kinds, the respondent’s ham which comes under the
same classification of “Food and Ingredients of Foods” under
which petitioner has registered its trademark, if given the same
trademark, “CAMIA”, is likely to confuse the public that the
source of the ham is the petitioner. If the respondent’s ham is of
poor quality, petitioner’s business may thus be affected adversely
as a result, while from the standpoint of the purchasers, some
measure of deception may take effect upon them. Thus, the use of
the same trademark on the ham would likely result in confusion
as to the source or origin thereof, to the damage or detriment of
the petitioner. The purpose of the law will be served better by not
allowing the registration of the trademark “CAMIA” for

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respondent’s ham, with such a limitless number of other words


respondent may choose from, as trademark for his product.

PETITION for review of the decision of the Director of


Patents.

The facts are stated in the opinion of the Court.


     Ponce Enrile, Siguion Reyna, Montecillo & Belo and
Associates for petitioner.
     Primitivo C. Bucasas for respondents.

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VOL. 115, JULY 30, 1982 475


Philippine Refining Co., Inc. vs. Ng Sam

ESCOLIN, J.:

The sole issue raised in this petition for review of the


decision of the Director of Patents is whether or not the
product of respondent Ng Sam, which is ham, and those of
petitioner consisting of lard, butter, cooking oil and soap
are so related that the use of the same trademark “CAMIA”
on said goods would likely result in confusion as to their
source or origin.
The trademark “CAMIA” was first used in the
Philippines by petitioner on its products in 1922. In 1949,
petitioner caused the registration of said trademark with
the Philippine Patent Office under certificates of
registration Nos. 1352-S and 1353-S, both issued on May 3,
1949. Certificate of Registration No. 1352-S covers
vegetable and animal fats, particularly lard, butter and
cooking oil, all classified under Class 47 (Foods and
Ingredients of Food) of the Rules of Practice of the Patent
Office, while certificate of registration No. 1353-S applies to
abrasive detergents, polishing materials and soap of all
kinds (Class 4).
On November 25, 1960, respondent Ng Sam, a Chinese
citizen residing in Iloilo City, filed an application with the
Philippine Patent Office for registration of the identical
trademark “CAMIA” for his product, ham, which likewise
falls under Class 47. Alleged date of first use of the
trademark by respondent was on February 10, 1959.
After due publication of the application, petitioner filed
an opposition, in accordance with Section 8 of Republic Act
No. 166, otherwise known as the Trademark Law, as
amended. Basis of petitioner’s opposition was Section 4(d)
of said law, which provides as unregistrable:

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“a mark which consists of or comprises a mark or tradename


which so resembles a mark or tradename registered in the
Philippines or a mark or tradename previously used in the
Philippines by another and not abandoned, as to be likely, when
applied to or used in connection with the goods, business services
of the applicant, to cause confusion or mistake or to deceive
purchasers.”

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476 SUPREME COURT REPORTS ANNOTATED


Philippine Refining Co., Inc. vs. Ng Sam

The parties submitted the case for decision without


presenting any evidence; thereafter the Director of Patents
rendered a decision allowing registration of the trademark
“CAMIA” in favor of Ng Sam.
Petitioner moved for a reconsideration, but the same
was denied.
Hence, this petition.
A rudimentary precept in trademark protection is that
“the right to a trademark is a limited one, in the sense that1
others may used the same mark on unrelated goods.”
Thus, as pronounced by the United States Supreme 2
Court
in the case of American Foundries vs. Robertson , “the mere
fact that one person has adopted and used a trademark on
his goods does not prevent the adoption and use of the
same trademark by others on articles of a different
description.”
Such restricted right over a trademark is likewise
reflected in our Trademark Law. Under Section 4(d) of the
law, registration of a trademark which so resembles
another already registered or in use should be denied,
where to allow such registration could likely result in
confusion, mistake or deception to the consumers.
Conversely, where no confusion is likely to arise, as in this
case, registration of a similar or even identical mark may
be allowed.
The term “CAMIA” is descriptive of a whole genus of
garden plants with fragrant white flowers. Some people
call the “CAMIA” the “white ginger plant” because of its
tuberous roots, while children refer to it as the butterfly
flower because of its shape. Being a generic and common
term, its appropriation as a trademark, albeit in a fanciful
manner in that it bears no relation to the product it
identifies, is valid. However, the degree3 of exclusiveness
accorded to each user is closely restricted.

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_______________

1 Sec. 221, Nims, Unfair Competition and Trade Mark, Vol. I, p 657.
2 269 US 372, 381, 70 L ed 317, 46 Sct. 160.
3 Sec. 203, Nims, Unfair Competition and Trademarks, Vol. I, p. 555.

477

VOL. 115, JULY 30, 1982 477


Philippine Refining Co., Inc. vs. Ng Sam

The records of this case disclose that the term “CAMIA”


has been registered as a trademark not only by petitioner
but by two (2) other concerns, as follows:

1. CAMIA
  Application No. 280
  Registration No. SR-320
  Date Registered—May 26, 1960
  Owner—Everbright Development Company
  Business Address—310 M. H. del Pilar
       Grace Park, Caloocan City
  Class 4—Thread and Yarn
2. CAMIA and Representation
  Application No. 538
  Date Filed—August 10, 1945
  Date Registered—April 20, 1946
  Owner—F.E. Zuellig, Inc.
  Business Address—55 Rosario St., Manila
  Class 43—Particular Good on which mark
       is used: Textiles, Embroideries laces, etc.

A trademark is designed to identify the user. But it should


be so distinctive and sufficiently original as to enable those
who come into contact with it to recognize instantly the
identity of the user. “It must be affirmative and definite,
4
significant and distinctive, capable to indicate origin.”
It is evident that “CAMIA” as a trademark is far from
being distinctive. By itself, it does not identify petitioner as
the manufacturer or producer of the goods upon which said
mark is used, as contra-distinguished to trademarks
derived from coined words such as “Rolex”, “Kodak” or
“Kotex” It has been held that “if a mark is so commonplace
that it cannot be readily distinguished from others, then it
is apparent that it cannot identify a particular business;

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and he who first adopted it cannot be injured by any


subsequent appropriation or 5
imitation by others, and the
public will not be deceived.”

_______________

4 Sparklets Corp. v. Walter Kidde Sales Co., 104 F. 2d 396, 398,


C.C.P.A.
5 Maniton Springs Mineral Water Co. vs. Schueler, 239 Fed. 593, 597,
C. C. A. 8th, 1917.

478

478 SUPREME COURT REPORTS ANNOTATED


Philippine Refining Co., Inc. vs. Ng Sam

The trademark “CAMIA” is used by petitioner on a wide


range of products: lard, butter, cooking oil, abrasive
detergents, polishing materials and soap of all kinds.
Respondent desires to use the same on his product, ham.
While ham and some of the products of petitioner are
classified under Class 47 (Foods and Ingredients of Food),
this alone cannot serve as the decisive factor in the
resolution of whether or not they are related goods.
Emphasis should be on the similarity of the products
involved and not on the arbitrary classification or general
description of their properties or characteristics.
In his decision, the Director of Patents enumerated the
factors that set respondent’s product apart from the goods
of petitioner. He opined and We quote:

“I have taken into account such factors as probable purchaser


attitude and habits, marketing activities, retail outlets, and
commercial impression likely to be conveyed by the trademarks if
used in conjunction with the respective goods of the parties. I
believe that ham on one hand, and lard, butter, oil, and soap on
the other are products that would not move in the same manner
through the same channels of trade. They pertain to unrelated
fields of manufacture, might be distributed and marketed under
dissimilar conditions, and are displayed separately even though
they frequently may be sold through the same retail food
establishments. Opposer’s products are ordinary day-to-day
household items whereas ham is not necessarily so. Thus, the
goods of the parties are not of a character which purchasers would
be likely to attribute to a common origin.” (p. 23, Rollo).

The observation and conclusion of the Director of Patents


are correct. The particular goods of the parties are so

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unrelated that consumers would not in any probability


mistake one as the source or origin of the product of the
other. “Ham” is not a daily food fare for the average
consumer. One purchasing ham would exercise a more
cautious inspection of what he buys on account of it price.
Seldom, if ever, is the purchase of said food product
delegated to household helps, except perhaps to those who,
like the cooks, are expected to know their business.
Besides, there can be no likelihood for the consumer of
respondent’s ham to confuse its source as anyone but
respondent. The facsimile of the label attached by him on
his product, his business name “SAM’S HAM AND BACON
FACTORY”

479

VOL. 115, JULY 30, 1982 479


Philippine Refining Co., Inc. vs. Ng Sam

written in 6bold white letters against a reddish orange


background , is certain to catch the eye of the class of
consumers to which he caters.
In addition, the goods of petitioners are basically derived
from vegetable oil and animal fats, while the product of
respondent is processed from pig’s legs. A consumer would
not reasonably assume that petitioner has so diversified its
business as to include the product of respondent.
Mr. Runolf Callman, in Section 80.3, VOL. I, p. 1121 of
his book, Unfair Competition and Trade Marks, declares:

“While confusion of goods can only be evident where the litigants


are actually in competition, confusion of business may arise
between non-competitive interests as well. This is true whether or
not the trademarks are registered. Sec. 16 of the Trademark Act,
in referring to ‘merchandise of substantially the same descriptive
properties, embraces competitive and noncompetitive trademark
infringement but it is not so extensive as to be applicable to cases
where the public would not reasonably expect the plaintiff to make
or sell the same class of goods as those made or sold by the
defendant.” (Italics supplied).

In fine, We hold that the business of the parties are


noncompetitive and their products so unrelated that the
use of identical trademarks is not likely to give rise to
confusion, much less cause damage to petitioner.
WHEREFORE, the instant petition is hereby dismissed
and the decision of the Director of Patents in Inter Partes
Case No. 231 affirmed in toto. Costs against petitioner.

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SO ORDERED.

          Barredo (Chairman), Aquino, Concepcion, Jr.,


Guerrero, Abad Santos and De Castro, JJ., concur.

DE CASTRO, J., dissenting:

I vote to grant the petition of the Philippine Refining Co.


Inc. As the registered owner and prior user of the trade-

_______________

6 p. 5, Original Record.

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480 SUPREME COURT REPORTS ANNOTATED


Philippine Refining Co., Inc. vs. Ng Sam

mark, “CAMIA” on a wide variety of products such as lard,


butter, cooking oil, abrasive detergents, polishing materials
and soap of all kinds, the respondent’s ham which comes
under the same classification of “Food and Ingredients of
Foods” under which petitioner has registered its
trademark, if given the same trademark, “CAMIA,” is
likely to confuse the public that the source of the ham is
the petitioner. If the respondent’s ham is of poor quality,
petitioner’s business may thus be affected adversely as a
result, while from the standpoint of the purchasers, some
measure of deception may take effect upon them. Thus, the
use of the same trademark on the ham would likely result
in confusion as to the source or origin thereof, to the
damage or detriment of the petitioner. The purpose of the
law will be served better by not allowing the registration of
the trademark “CAMIA” for respondent’s ham, with such a
limitless number of other words respondent may choose
from, as trademark for his product.
Petition dismissed. Decision affirmed.

Notes.—The fact that the shoes manufactured by


petitioner were not sold in local markets from 1949 to 1967
does not mean that one cannot be held guilty of unfair
competition for manufacturing products that appear
similar as the petitioner’s product. (Converse Rubber
Corporation vs. Jacinto Rubber & Plastic Co., Inc., 97
SCRA 158.)
Common geometrical shapes, such as diamonds, are
ordinarily not regarded as indicia of the origin of goods,

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unless they have acquired a secondary meaning. (Victorias


Milling Company, Inc. vs. Ong Su, 79 SCRA 207.)
There is no substantial similarity between “Valentine”
and “Victorias.” (Victorias Milling Company, Inc. vs. Ong
Su, 79 SCRA 207.)
There is infringement of trademark when the use of the
mark involved would be likely to cause confusion or
mistake in the mind of the public or to deceive purchasers
as to the origin or source of the commodity. (Philippine Nut
Industry Inc. vs. Standard Brands, Inc., 65 SCRA 575.)

——o0o——

481

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