LAW ON INTELLECTUAL PROPERTY CASE DIGESTS

1. Victorio P. Diaz vs People of the Philippines and Levi Strauss [Phils.], Inc.
G.R. No. 180677 February 18, 2003

Facts:
Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s. After receiving
information that Diaz was selling counterfeit LEVI’S 501 jeans in his tailoring shops in
Almanza and Talon, Las Piñas City, Levi’s Philippines hired a private investigation group to
verify the information. Surveillance and the purchase of jeans from the tailoring shops of
Diaz established that the jeans bought from the tailoring shops of Diaz were counterfeit or
imitations of LEVI’S 501. Armed with search warrants, NBI agents searched the tailoring
shops of Diaz and seized several fake LEVI’S 501 jeans from them. Levi’s Philippines
claimed that it did not authorize the making and selling of the seized jeans; that each of the
jeans were mere imitations of genuine LEVI’S 501 jeans by each of them bearing the
registered trademarks, like the arcuate design, the tab, and the leather patch; and that the
seized jeans could be mistaken for original LEVI’S 501 jeans due to the placement of the
arcuate, tab, and two-horse leather patch.

On his part, Diaz admitted being the owner of the shops searched, but he denied any
criminal liability. Diaz stated that he did not manufacture Levi’s jeans, and that he used the
label “LS Jeans Tailoring” in the jeans that he made and sold; that the label “LS Jeans
Tailoring” was registered with the Intellectual Property Office; that his shops received
clothes for sewing or repair; that his shops offered made-to-order jeans, whose styles or
designs were done in accordance with instructions of the customers; that since the time his
shops began operating in 1992, he had received no notice or warning regarding his
operations; that the jeans he produced were easily recognizable because the label “LS Jeans
Tailoring,” and the names of the customers were placed inside the pockets, and each of the
jeans had an “LSJT” red tab; that “LS” stood for “Latest Style;” and that the leather patch on
his jeans had two buffaloes, not two horses.

Issue:
Whether there exists a likelihood of confusion between the trademarks of Levi’s and Diaz.

Held:
The Court held, through the application of the holistic test, that there was no likelihood of
confusion between the trademarks involved. Accordingly, the jeans trademarks of Levi’s
Philippines and Diaz must be considered as a whole in determining the likelihood of
confusion between them. The maongpants or jeans made and sold by Levi’s Philippines,
which included LEVI’S 501, were very popular in the Philippines. The consuming public
knew that the original LEVI’S 501 jeans were under a foreign brand and quite expensive.
Such jeans could be purchased only in malls or boutiques as ready-to-wear items, and were
not available in tailoring shops like those of Diaz’s as well as not acquired on a “made-to-
order” basis. Under the circumstances, the consuming public could easily discern if the
jeans were original or fake LEVI’S 501, or were manufactured by other brands of jeans.
Diaz used the trademark “LS JEANS TAILORING” for the jeans he produced and sold in his
tailoring shops. His trademark was visually and aurally different from the trademark “LEVI
STRAUSS & CO” appearing on the patch of original jeans under the trademark LEVI’S 501.
The word “LS” could not be confused as a derivative from “LEVI STRAUSS” by virtue of the
“LS” being connected to the word “TAILORING”, thereby openly suggesting that the jeans
bearing the trademark “LS JEANS TAILORING”came or were bought from the tailoring
shops of Diaz, not from the malls or boutiques selling original LEVI’S 501 jeans to the
consuming public.

The prosecution also alleged that the accused copied the “two horse design” of the
petitioner-private complainant but the evidence will show that there was no such design in
the seized jeans. Instead, what is shown is “buffalo design.” Again, a horse and a buffalo are
two different animals which an ordinary customer can easily distinguish.
The prosecution further alleged that the red tab was copied by the accused. However,
evidence will show that the red tab used by the private complainant indicates the word
“LEVI’S” while that of the accused indicates the letters “LSJT” which means LS JEANS
TAILORING. Again, even an ordinary customer can distinguish the word LEVI’S from the
letters LSJT.

In terms of classes of customers and channels of trade, the jeans products of the private
complainant and the accused cater to different classes of customers and flow through the
different channels of trade. The customers of the private complainant are mall goers
belonging to class A and B market group – while that of the accused are those who belong
to class D and E market who can only afford Php 300 for a pair of made-to-order pants.
 2. Chester Uyco, Winston Uychiyong and Cherry Uyco-Ong v Vicente Lo
G.R. No. 202423, January 28, 2013

Facts:
Petitioners in this case are the officers of Wintrade Industrial Sales Corp (WINTRADE),
seller of kerosene burners in the Philippines. Vicente Lo, on the other hand, claims to be
the asssignee of the disputed marks "HIPOLITO & SEA HORSE & TRIANGULAR DEVICE,"
"FAMA," and other related marks, service marks and trade names “Casa Hipolito S.A.
Portugal”, to be used in kerosene burners as well.

Lo further alleged that the ultimate owner of said marks is the Portuguese Company
GASIREL and that the latter executed a deed of assignment in favor of Lo to use the marks
in all countries except Europe and America. Lo subsequently authorized his agent
Philippine Burners Manufacturing Corporation (PBMC) to manufacture burners with the
aforementioned marks and tradename “Casa Hipolito S.A. Portugal”.

During a test buy, Lo was able to purchase a burner with marked "Made in Portugal" and
"Original Portugal". He noted that such burners were manufactured by WINTRADE. As
such, Lo filed a complaint on the ground that the kerosene burners sold by WINTRADE
have caused confusion, mistake and deception on the part of the buying public as to the
origin of goods.

WINTRADE and its officers contend that the marks "Made in Portugal" and "Original
Portugal" refer to “origin of the design” and not “origin of the goods” and that they have
certificates of registration with the IPO for use of marks, derived their authority to use from
WONDER, their predecessor-in-interest and that PBMC’s licensing agreement with Lo is
ineffective for being unnotarized, among others.

Issue:
Whether or not WINTRADE and its officers are liable for violation of the law on
trademarks, tradenames and false designation of origin?

Held:
Yes. WINTRADE and its officers are liable for violation of the law on trademarks and
tradenames and for false designation of origin. They placed the words "Made in Portugal"
and "Original Portugal" with the disputed marks knowing fully well — because of their
previous dealings with the Portuguese company — that these were the marks used in the
products of another. More importantly, they used the marks without any authority from
the owner notwithstanding that their products are, in reality, produced in the Philippines,
not in Portugal. Hence, probable cause exists to charge the petitioners with false
designation of origin. Had they intended to refer to the source of the design or the history
of the manufacture, they should have explicitly said so in their packaging.
The Supreme Court emphasized that the law on trademarks and trade names precisely
precludes a person from profiting from the business reputation built by another and from
deceiving the public as to the “origin” of products.
 3. In-n-out Burger Inc. vs Sehwani, Incorporated and/or Benita’s Frites
G.R. No. 179127, December 24, 2008

Facts:
On 2 June 1997, petitioner filed trademark and service mark applications with the Bureau
of Trademarks of the IPO for “IN-N-OUT” and “IN-N-OUT Burger & Arrow
Design.” Petitioner later found out that respondent Sehwani, Incorporated had already
obtained Trademark Registration for the mark “IN N OUT (the inside of the letter “O”
formed like a star).” By virtue of a licensing agreement, Benita Frites, Inc. was able to use
the registered mark of respondent Sehwani, Incorporated.

Petitioner filed an administrative complaint against respondents for unfair competition

and cancellation of trademark registration. Petitioner averred that it is the owner of the
trade name IN-N-OUT. Petitioner claimed that respondents are making it appear that their
goods and services are those of the petitioner, thus, misleading ordinary and unsuspecting
consumers that they are purchasing petitioner’s products. Petitioner then sent a demand
letter directing respondents to cease and desist from claiming ownership of the mark “IN-
N-OUT” and to voluntarily cancel its trademark registration. The respondents refused to
accede to petitioner’s demand, but expressed willingness to surrender the registration of
respondent Sehwani, Incorporated of the “IN N OUT” trademark for a fair and reasonable
consideration.

Respondents, on the other hand, asserted that they had been using the mark “IN N OUT” in
the Philippines since 15 October 1982. On 15 November 1991, respondent Sehwani,
Incorporated filed with the then Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) an application for the registration of the mark “IN N OUT (the inside of the letter
“O” formed like a star).” Upon approval of its application, a certificate of registration of the
said mark was issued in the name of respondent Sehwani, Incorporated on 17 December
1993.

Issue:
Whether respondent Sehwani Incorporated is liable for unfair competition.

Held:
Yes. The essential elements of an action for unfair competition are (1) confusing similarity in the
general appearance of the goods and (2) intent to deceive the public and defraud a competitor.
The intent to deceive and defraud may be inferred from the similarity of the appearance of the
goods as offered for sale to the public. Actual fraudulent intent need not be shown.

The evidence on record shows that the respondents were not using their registered trademark but
that of the petitioner. Respondent was issued a Certificate of Registration for IN N OUT (with
the Inside of the Letter “O” Formed like a Star) for restaurant business in 1993. The restaurant
opened only in 2000 but under the name IN-N-OUT BURGER. Apparently, the respondents
started constructing the restaurant only after the petitioner demanded that the latter desist from
claiming ownership of the mark IN-N-OUT and voluntarily cancel their trademark registration.
 4.MCDONALD’S CORPORATION VS. MACJOY FASTFOOD CORPORATION
G.R. NO. 166115, FEB. 2, 2007

Facts:
On Mar. 14, 1991, respondent Macjoy Fastfood Corporation, a domestic corporation
engaged in the sale of Fast food products in Cebu city, filed with BPTT, now IPO, an
application for registration of the trademark ‘’MACJOY & DEVICE’’ for fried chicken, chicken
barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks.
Petitioner McDonald’s Corporation, filed a verified Notice of Opposition against the
respondent’s application claiming that the trademark ‘’MACJOY & DEVICE’’ so resembles
its corporate logo otherwise known as the Golden Arches or ‘’M’’ design, and its marks ‘’
McDonalds, ‘’McChicken’’,’’MacFries’’, ‘’BigMac’’,’’McDo’’,’’McSpaghetti,’’McSnack’’, and ‘’Mc,
such that when used on identical or related goods, the trademark applied for would
confuse or deceive purchasers into believing that the goods originate from the same source
or origin. On Dec. 28, 1998, the IPO sustained the petitioner’s opposition and rejected the
respondent’s application. CA reversed.

Issue:
Whether or not respondent’s McJoy and Device marks are confusingly similar to
petitioner’s ‘’McDonald’s marks’’?

Held:
Yes. In determining similarity and likelihood of confusion, jurisprudence has developed
two test-the dominancy test and the holistic test: The dominancy test focuses on the
similarity of the prevalent features of the competing trademarks that might cause
confusion or deception; the holistic test requires the court to consider the entirety of the
marks as applied to the products, including the labels and packaging. Applying the
dominancy test, ‘’ McDonald’s and ‘’MACJOY’’ marks are confusingly similar with each other
such that an ordinary purchaser can conclude an association or relation between the
marks.
Respondent alleged that the word ‘’MACJOY’’ is based on the name of its president’s niece,
Scarlett Yu Carcell. By its implausible and insufficient explanation as to how and why out of
the many choices of words if could have used for its trade name and/or trademark, it chose
the word ‘’MACJOY’’, the only logical conclusion deducible therefrom is that the respondent
would want to ride high on the establish reputation and goodwill of the MCDONALD’S
marks, which, as applied to petitioner’s restaurant business and food products, is
undoubtedly beyond question.
 5. LEVI STRAUSS (PHILS.), INC., vs TONY LIM,
GR 162311,December 4, 2008

Facts:
Petitioner Levi Strauss (Phils.), Inc. is a duly-registered domestic corporation. It is a wholly-
owned subsidiary of Levi Strauss & Co.(LS & Co.) A Delaware, USA company. In 1972, LS &
Co. Granted petitioner a non-exclusive license to use its registered trademarks and
tradenames for the manufacture and sale of various garment products, primarily pants,
jackets, and shirts, in the Philippines. Presently, it is the only company that has authority to
manufacture, distribute, and sell products bearing the LEVI’S trademarks or to use such
trademarks in the Philippines. These trademarks are registered in over 130 countries,
including the Philippines, and were first used in commerce in the Philippines in 1946.

Sometime in 1995, petitioner lodged a complaint before the Inter-Agency Committee on

Intellectual Property Rights, alleging that a certain establishment owned by respondent
Tony Lim, doing business under the name Vogue Traders Clothing Company, was engaged
in the manufacture, sale, and distribution of products similar to those of petitioner and
under the brand name “LIVE’S,” and was granted the filing of an information against
respondent. Respondent then filed his own motion for reconsideration of the Bello
resolution, the DOJ then ordered the dismissal of the complaint.. Dissatisfied with the DOJ
rulings, petitioner sought recourse with the CA via a petition for review under Rule 43 of
the 1997 Rules of Civil Procedure. On October 17, 2003, the appellate court affirmed the
dismissal of the unfair competition complaint. The CA pointed out that to determine the
likelihood of confusion, mistake or deception, all relevant factors and circumstances should
be taken into consideration, such as the circumstances under which the goods are sold, the
class of purchasers, and the actual occurrence or absence of confusion.Thus, the existence
of some similarities between LIVE’S jeans and LEVI’S garments would not ipso facto equate
to fraudulent intent on the part of respondent. The CA noted that respondent used
affirmative and precautionary distinguishing features in his products for differentiation.
The appellate court considered the spelling and pronunciation of the marks; the difference
in the designs of the back pockets; the dissimilarity between the carton tickets; and the
pricing and sale of petitioner’s products in upscale exclusive specialty shops. The CA also
disregarded the theory of post-sale confusion propounded by petitioner, relying instead on
the view that the probability of deception must be determined at the point of sale.

Issues:
Petitioner submits that the CA committed the following errors:
I. The court of appeals gravely erred in ruling that actual confusion is necessary to sustain a
charge of unfair
competition, and that there must be direct evidence or proof of intent to deceive the public.
II. The court of appeals gravely erred in ruling that respondent’s live’s jeans do not unfairly
compete with levi’s ®
jeans and/or that there is no possibility that the former will be confused for the latter,
considering that respondent’s live’s
jeans blatantly copy or colorably imitate no less than six (6) trademarks of levi’s jeans.
Held:
Generally, unfair competition consists in employing deception or any other means contrary
to good faith by which any person shall
pass off the goods manufactured by him or in which he deals, or his business, or services
for those of the one having established goodwill, or
committing any acts calculated to produce such result. The elements of unfair competition
under Article 189(1) of the Revised Penal Code are:
(a) That the offender gives his goods the general appearance of the goods of another
manufacturer or dealer;
(b) That the general appearance is shown in the (1) goods themselves, or in the (2)
wrapping of their packages, or in the (3) device or words therein, or in (4) any other
feature of their appearance;
(c) That the offender offers to sell or sells those goods or gives other persons a chance or
opportunity to do the same with a like purpose; and
(d) That there is actual intent to deceive the public or defraud a competitor.
All these elements must be proven. In finding that probable cause for unfair competition
does not exist, the investigating prosecutor Secretaries Guingona and Cuevas arrived at the
same conclusion that there is insufficient evidence to prove all the elements of the crime
that would allow them to secure a conviction. Secretary Guingona discounted the element
of actual intent to deceive by taking into consideration the differences in spelling, meaning,
and phonetics between “LIVE’S” and “LEVI’S,” as well as the fact that respondent had
registered his own mark. While it is true that there may be unfair competition even if the
competing mark is registered in the Intellectual Property Office, it is equally true that the
same may show prima facie good faith. Indeed, registration does not negate unfair
competition where the goods are packed or offered for sale and passed off as those of
complainant. However, the mark’s registration, coupled with the stark differences between
the competing marks, negate the existence of actual intent to deceive, in this particular
case.

Petitioner argues that the element of intent to deceive may be inferred from the similarity
of the goods or their appearance. The argument is specious on two fronts. First, where the
similarity in the appearance of the goods as packed and offered for sale is so striking, intent
to deceive may be inferred. However, as found by the investigating prosecutor and the DOJ
Secretaries, striking similarity between the competing goods is not present. Second, the
confusing similarity of the goods was precisely in issue during the preliminary
investigation. As such, the element of intent to deceive could not arise without the
investigating prosecutor’s or the DOJ Secretary’s finding that such confusing similarity
exists. Since confusing similarity was not found, the element of fraud or deception could
not be inferred.

We cannot sustain Secretary Bello’s opinion that to establish probable cause, “it is enough
that the respondent gave to his product the general appearance of the product of
petitioner. It bears stressing that that is only one element of unfair competition. All others
must be shown to exist. More importantly, the likelihood of confusion exists not only if
there is confusing similarity. It should also be likely to cause confusion or mistake or
deceive purchasers. Thus, the CA correctly ruled that the mere fact that some resemblance
can be pointed out between the marks used does not in itself prove unfair competition. To
reiterate, the resemblance must be such as is likely to deceive the ordinary purchaser
exercising ordinary care.

The consumer survey alone does not equate to actual confusion. We note that the survey
was made by showing the interviewees actual samples of petitioner’s and respondent’s
respective products, approximately five feet away from them. From that distance, they
were asked to identify the jeans’ brand and state the reasons for thinking so. This method
discounted the possibility that the ordinary intelligent buyer would be able to closely
scrutinize, and even fit, the jeans to determine if they were “LEVI’S” or not. It also ignored
that a consumer would consider the price of the competing goods when choosing a brand
of jeans. It is undisputed that “LIVE’S” jeans are priced much lower than “LEVI’S.” We find
no reason to go beyond the point of sale to determine if there is probable cause for unfair
competition. WHEREFORE, the petition is DENIED and the appealed Decision of the Court
of Appeals AFFIRMED. SO ORDERED.
 6. Shangri-La International Hotel Management, LTD., Shangri-La Properties Inc.,
Makati Shangri-La Hotel & Resort Inc., and Kuok Philippines Properties, Inc vs
Developers Group of Companies, Inc.
GR 159938, March 31, 2006

Facts:
Respondent claims ownership over the Shangri-La mark and s logo on the strength of its
prior use within the country. It filed with the bureau of patents, trademarks and technology
transfer an application for registration covering the subject mark and logo.
BPTTT issued the corresponding certificate of registration.

The Kuok family on the other hand owns a chain of hotels since 1969 and adopted the
name Shangri-La. The Kuok Family has opened EDSA Shangri-La and Makati Shangri-La in
the Philippines. Both hotels are incorporated in the Philippines.
The hotels owned by the Kuok family used the distinct marks of Shangri-La as part of their
trade name.

The Kuok Family filed with the BPTTT a petition for cancellation of the registration of the
Shangri-La mark used by respondent.The case was thereafter heard before the RTC.
After trial on the merits, the RTC ruled in favor of DGCIOn appeal, the CA affirmed the
ruling of the RTC.On appeal to the SC, petitioner alleged that respondent cannot file an
application for registration of the Shangri-La mark because it did not have prior actual
commercial use as required by RA 166.

Issue:
Whether or not the trademark by DGCI cannot be registered?

Held:
Under RA 166 before a trademark can be registered, it must have been actually used in
commerce for not less than two months in the Philippines prior the filing of the application
for registration.

Registration does not confer upon the registrant an absolute right to the registered mark. It
is merely a prima facie proof that the registrant is the owner. Evidence of a prior and
continuous use by another can overcome such presumption.
Ownership of a mark or trade name may be acquired not by registration but by adoption
and use in trade and commerce.

Respondent’s own witness testified that the jeepney signboard artist commissioned to
create the mark and logo submitted his designs only two and a half months after the filing
of the trademark application. Hence respondent cannot claim that the certificate of
registration is proof that the two months prior use was complied with.

Also it was found that respondent’s president Ramon Syhunliong has been a guest in one of
the petitioner’s hotel. Hence there was a possibility that he may have copied the idea there.
CA still gave him the benefit of the doubt; however upon scrutiny of the questioned logos, it
appears that the respondent’s logo has oriental overtones. By copying even the exact font
and lettering, there arises a certainty that the adoption was deliberate, malicious, and in
bad faith.
 7. Coffee Partners, Inc., vs San Francisco Coffee & Roastery, Inc..
G.R. No. 169504 : March 3, 2010

Facts:
Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of
establishing and maintaining coffee shops in the country. It has a franchise agreement6cЃa
with Coffee Partners Ltd. (CPL), a business entity organized and existing under the laws of
British Virgin Islands, for a non-exclusive right to operate coffee shops in the Philippines
using trademarks designed by CPL such as "SAN FRANCISCO COFFEE." Respondent is a
local corporation engaged in the wholesale and retail sale of coffee. It registered with the
SEC in May 1995. It registered the business name "SAN FRANCISCO COFFEE & ROASTERY,
INC." with the Department of Trade and Industry (DTI) in June 1995. Respondent formed a
joint venture company with Boyd Coffee USA under the company name Boyd Coffee
Company Philippines, Inc. (BCCPI), which is engaged in the processing, roasting, and
wholesale selling of coffee.

In 2001, respondent discovered that petitioner was about to open a coffee shop under the
name "SAN FRANCISCO COFFEE" in Libis, Quezon City. According to respondent,
petitioners shop caused confusion in the minds of the public as it bore a similar name and it
also engaged in the business of selling coffee. Respondent also filed a complaint with the
Bureau of Legal Affairs-Intellectual Property Office (BLA-IPO) for infringement and/or
unfair competition. Petitioner denied the allegations in the complaint. Petitioner alleged it
filed with the Intellectual Property Office (IPO) applications for registration of the mark
"SAN FRANCISCO COFFEE & DEVICE" for class 42 in 1999 and for class 35 in 2000.

BLA-IPO rendered a decision favourable to the respondents and found herein petitioners
guilty of trademark ingfringement. ODG-IPO; however reversed the decision of the Bureau
which lead respondents to appeal. CA again reversed the decision of the Office of the
Director General and affirmed the BLA-IPO’s finding, hence this petition.

Issue:
Whether petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes
infringement of respondents trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.,"
even if the trade name is not registered with the Intellectual Property Office (IPO).

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

Clearly, a trade name need not be registered with the IPO before an infringement suit may
be filed by its owner against the owner of an infringing trademark. All that is required is
that the trade name is previously used in trade or commerce in the Philippines. Section 22
of Republic Act No. 166,12cЃa as amended, required registration of a trade name as a
condition for the institution of an infringement suit. However, RA 8293, Section 165.2 of RA
8293 categorically states that trade names shall be protected, even prior to or without
registration with the IPO, against any unlawful act x x x. Also, applying the dominancy test
or the holistic test, petitioners "SAN FRANCISCO COFFEE" trademark is a clear
infringement of respondents "SAN FRANCISCO COFFEE & ROASTERY, INC." trade name.
8. Manuel C. Espiritu, Jr., Audie Llona, Freida F. Espiritu, Carlo F. Espiritu, Rafael F.
Espiritu, Rolando M. Mirabuna, Hermilyn A. Mirabuna, Kim Roland A. Mirabuna, Kaye
Ann A. Mirabuna, Ken Ryan A. Mirabuna, Juanito P. De Castro, Geronima A. Almonite,
and Manuel C. Dee, who are the officers and directors of Bicol Gas Refilling Plant
Corporation vs Petron Corporation and Carmen J. Doloiras, doing business under the
name Kristina Patricia Enterprises
GR No. 170981, November 4, 2009

Facts:
Petron Corporation sold and distributed LPG in cylinder tanks that carried its trademark
“GASUL” and Carmen Dolorias owned and operated Kristina Patricia Enterprises, the
exclusive distributor of Gasul LPG in the whole Sorsogon.

On the hand, Bicol Gas was also in the business of selling and distributing LPG in Sorsogon
but theirs carried the trademark “Bicol Savers Gas”.

In the course of trade and competition, any given distributor of LPGs at times acquired
possession of LPG cylinder tanks belonging to other distributors operating in the same
area. They called these “captured cylinders.” What KPE is doing is that they swap the
cylinder tanks with Bicol Gas involving 30 tanks of Gasul with the permission of the Bicol
Gas owners. While doing such transaction, KPE’s Manager noticed that Bicol Gas still has a
number of Gasul tanks in its yard. It requested that those tanks be returned. But the latter
refused because those tanks will be sent to Batangas.

However, during the day to day delivery of Bicol Gas in the town of Sorsogon, KPE’s
Manager noticed that the truck carrying mostly of Bicol Savers LPG tanks has one unsealed
50-kg Gasul and one 50-kg Shellane tank. When Jose, KPE’s Manager, inquired, the driver
said that it was empty but when it was checked, it was not. As a result, Petron and KPE
filed a complaint for violation of RA 623 (illegally filing up registered cylinder tanks) ,
section 155 (infringement of trademarks) and section 169.1 (unfair competition) of the
Intellectual Property Code.

Issues:
Whether or not the facts of the case warranted the filing of charges against the Bicol Gas
people for:
a) Filing up the LPG tanks registered to another manufacturer without the latter’s
consent in violation of RA 623 as amended
b) Trademark infringement consisting in Bicol Gas use of trademark that is confusingly
similar to Petron’s registered “Gasul” trademark in violation of Section 155 of RA 8293
c) Unfair competition consisting in passing off Bicol Gas- produced LPGs fro Petron –
produced Gasul LPG in violation of Section 168.3 of RA 8293

Held:
a) The complaint adduced at the preliminary investigation shows that one 50 kg
Petron Gasul LPG found in the Bicol Gas truck belonged to their customer who had the
same filled up by Bicol Gas. RA 623 as amended punishes any person who without the
written consent of the manufacturer or seller of gases contained in duly registered steel
cylinder tanks, fills the steel cylinder or tanks for the purpose of sale, disposal or
trafficking, other than the purpose for which the manufacturer or seller registered the
same. Consequently, they may be prosecuted for that purpose.
b) But as for the crime of trademark infringement, section 155 of RA 8293 provides its
enumeration. However, KPE and Petron failed to prove that Bicol Gas painted on its own
tanks Petron’s Gasul trademark or confusingly similar version to deceive its customers and
cheat Petron.
c) As for the charge of unfair competition under section 168.3 of RA 8293, there is no
showing that Bicol has been giving its LPG tanks the general appearance of the tanks of
Petron’s Gasul. As already stated, the truck full of Bicol Gas tank that the KPE manager
apprehended on the road in Sorsogon just have mixed up with the one authentic Gasul tank
that belong to Petron.
Lastly, Bicol Gas is a Corporation. It is an entity separate and distinct from persons of its
officer, directors and stockholders. It has been held however, that corporate officers and
employees through whose act, default or omission of the crime, they will be held
answerable for the crime but respondents failed to show that Bicol Gas officers and
stockholders participated in the crime.
 9. PROSOURCE INTERNATIONAL, INC. vs. HORPHAG RESEARCH MANAGEMENT SA
G.R. No. 180073, November 25, 2009

Facts:
Respondent Horphag Research Management is a corporation duly organized and existing
under the laws of Switzerland and the owner of trademark PYCNOGENOL, a food
supplement sold and distributed by Zuellig Pharma Corporation. Respondent discovered
that petitioner Prosource International was also distributing a similar food supplement
using the mark PCO-GENOLS since 1996 and was only discontinued in 2000. Respondent
filed a complaint for Infringement of Trademark against petitioner, praying that the latter
cease and desist from using the brand PCO-GENOLS for being confusingly similar with
respondent’s trademark PYCNOGENOL. Petitioner contended that the two marks were not
confusingly similar and denied liability, since it discontinued the use of the mark prior to
the institution of the infringement case.

Issue:
Whether or not petitioners are liable for infringement of trademark.

Held:
The court ruled in the positive. A trademark is any distinctive word, name, symbol,
emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer
or merchant on his goods to identify and distinguish them from those manufactured, sold,
or dealt by others. The gravamen of trademark infringement is the element of "likelihood of
confusion" which must be examined from the particular, and sometimes peculiar,
circumstances of each case.

In determining similarity and likelihood of confusion, jurisprudence has developed two

tests: the Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on
the similarity of the prevalent features of the competing trademarks that might cause
confusion and deception, thus constituting infringement. If the competing trademark
contains the main, essential and dominant features of another, and confusion or deception
is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is
it necessary that the infringing label should suggest an effort to imitate. The question is
whether the use of the marks involved is likely to cause confusion or mistake in the mind of
the public or to deceive purchasers. Courts will consider more the aural and visual
impressions created by the marks in the public mind, giving little weight to factors like
prices, quality, sales outlets, and market segments. 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 labels in order that the observer may draw his conclusion whether one is confusingly
similar to the other.

In the case at bar, the dominancy test was used in determining whether there was a
confusing similarity between the marks PYCNOGENOL and PCO-GENOL. Applying the test,
the court found that:
Athough the letters "Y" between P and C, "N" between O and C and "S" after L are missing
PCO-GENOLS, nevertheless, when the two words are pronounced, the sound effects are
confusingly similar not to mention that they are both described by their manufacturers as a
food supplement and thus, identified as such by their public consumers. And although there
were dissimilarities in the trademark due to the type of letters used as well as the size,
color and design employed on their individual packages/bottles, still the close relationship
of the competing products’ name in sounds as they were pronounced, clearly indicates that
purchasers could be misled into believing that they are the same and/or originates from a
common source and manufacturer. This is not the first time that the court takes into
account the aural effects of the words and letters contained in the marks in determining the
issue of confusing similarity.
 10. TANADA VS ANGARA
WIGBERTO E. TAÑADA and ANNA DOMINIQUE COSETENG, as members of the Philippine
Senate and as taxpayers; GREGORIO ANDOLANA and JOKER ARROYO as members of the
House of Representatives and as taxpayers; NICANOR P. PERLAS and HORACIO R.
MORALES, both as taxpayers; CIVIL LIBERTIES UNION, NATIONAL ECONOMIC
PROTECTIONISM ASSOCIATION, CENTER FOR ALTERNATIVE DEVELOPMENT
INITIATIVES, LIKAS-KAYANG KAUNLARAN FOUNDATION, INC., PHILIPPINE RURAL
RECONSTRUCTION MOVEMENT, DEMOKRATIKONG KILUSAN NG MAGBUBUKID NG
PILIPINAS, INC., and PHILIPPINE PEASANT INSTITUTE, in representation of various
taxpayers and as non-governmental organizations, petitioners, vs. EDGARDO ANGARA,
ALBERTO ROMULO, LETICIA RAMOS-SHAHANI, HEHERSON ALVAREZ, AGAPITO AQUINO,
RODOLFO BIAZON, NEPTALI GONZALES, ERNESTO HERRERA, JOSE LINA, GLORIA
MACAPAGAL-ARROYO, ORLANDO MERCADO, BLAS OPLE, JOHN OSMEÑA, SANTANINA
RASUL, RAMON REVILLA, RAUL ROCO, FRANCISCO TATAD and FREDDIE WEBB, in their
respective capacities as members of the Philippine Senate who concurred in the ratification
by the President of the Philippines of the Agreement Establishing the World Trade
Organization; SALVADOR ENRIQUEZ, in his capacity as Secretary of Budget and
Management; CARIDAD VALDEHUESA, in her capacity as National Treasurer; RIZALINO
NAVARRO, in his capacity as Secretary of Trade and Industry; ROBERTO SEBASTIAN, in his
capacity as Secretary of Agriculture; ROBERTO DE OCAMPO, in his capacity as Secretary of
Finance; ROBERTO ROMULO, in his capacity as Secretary of Foreign Affairs; and TEOFISTO
T. GUINGONA, in his capacity as Executive Secretary, respondents.
G.R. No. 118295 May 2, 1997

Facts:
This is a petition seeking to nullify the Philippine ratification of the World Trade
Organization (WTO) Agreement. Petitioners question the concurrence of herein
respondents acting in their capacities as Senators via signing the said agreement.

The WTO opens access to foreign markets, especially its major trading partners, through
the reduction of tariffs on its exports, particularly agricultural and industrial products.
Thus, provides new opportunities for the service sector cost and uncertainty associated
with exporting and more investment in the country. These are the predicted benefits as
reflected in the agreement and as viewed by the signatory Senators, a “free market”
espoused by WTO.

Petitioners aver that paragraph 1, Article 34 of the General Provisions and Basic Principles
of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
intrudes on the power of the Supreme Court to promulgate rules concerning pleading,
practice and procedures and is a derogation of legislative power.

Issue:
Whether the provisions of the Agreement Establishing the World Trade Organization
contravene the Philippine Constitution. (NO)

Held:
Suffice it to say that the reciprocity clause of WTO more than justifies such intrusion, if any
actually exists. Besides, Article 34 does not contain an unreasonable burden, consistent as
it is with due process and the concept of adversarial dispute settlement inherent in our
judicial system. So too, since the Philippines is a signatory to most international
conventions on patents, trademarks and copyrights, the adjustment in legislation and rules
of procedure will not be substantial.

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

The Senate Act, after deliberation and voting, of voluntarily and overwhelmingly giving its
consent to the WTO Agreement thereby making it “a part of the law of the land,” is a
legitimate exercise of its sovereign duty and power. By the doctrine of incorporation, the
country is bound by generally accepted principles of international law, which are
considered to be autom atically part of our own laws. One of the oldest and most
fundamental rules in international law is pacta sunt servanda—international agreements
must be performed in good faith. “A treaty engagement is not a mere moral obligation but
creates a legally binding obligation on the parties.

Lastly, notwithstanding objections against possible limitations on national sovereignty, the

WTO remains as the only viable structure for multilateral trading and the veritable forum
for the development of international trade law.
 11. Pribhdas J. Mirpuri vs Court of Appeals, Director of Patents and the Barbizon
Corporation
G.R. No. 114508, November 19, 1999

Facts:
On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of petitioner Pribhdas J.
Mirpuri, filed an application with the Bureau of Patents for the registration of the
trademark "Barbizon" for use in brassieres and ladies undergarments. Barbizon
Corporation, the private respondent of the case at bar opposed the application on the
ground that the mark Barbizon of the applicant is confusingly similar to the trademark
Barbizon of which the opposer has not abandoned. Furthermore, it was alleged by the
opposer that it shall suffer damage by the registration of the mark Barbizon and its
business reputation and goodwill will suffer great and irreparable injury, and that the use
by the applicant by the said mark which resembles the trademark used and owned by
oppose constitutes an unlawful appropriation of a mark previously used in the Philippines
and not abandoned therefore a statutory violation of Sec 4 (d) of Republic Act No. 166, as
amended. The opposition was dismissed and Escobar was issued a certificate of
registration for the trademark “Barbizon”, and subsequently Escobar assigned all her rights
and interest over the trademark to petitioner Pribhdas J. Mirpuri. However, Escobar failed
to file an Affidavit of Use of the trademark so Escobar’s certificate of registration was
cancelled. Consequently, she reapplied for the registration of the cancelled trademark.
Opposer's BARBIZON as well as its BARBIZON and Bee Design and BARBIZON and
Representation of a Woman trademarks are deemed to qualify as well-known trademarks.

Issue:
Whether or not the Convention of Paris for the Protection of Industrial Property affords
protection to a foreign corporation against a Philippine applicant for the registration of a
similar trademark

Held:
On record, there can be no doubt that respondent-applicant's sought-to-be-registered
trademark BARBIZON is similar, in fact obviously identical, to opposer's alleged trademark
BARBIZON, in spelling and pronunciation. The only appreciable but very negligible
difference lies in their respective appearances or manner of presentation. Respondent-
applicant's trademark is in bold letters (set against a black background), while that of the
opposer is offered in stylish script letters.

The Convention of Paris for the Protection of Industrial Property, otherwise known as the
Paris Convention, is a multilateral treaty that seeks to protect industrial property
consisting of patents, utility models, industrial designs, trademarks, service marks, trade
names and indications of source or appellations of origin, and at the same time aims to
repress unfair competition. The Convention is essentially a compact among various
countries which, as members of the Union, have pledged to accord to citizens of the other
member countries trademark and other rights comparable to those accorded their own
citizens by their domestic laws for an effective protection against unfair competition. In
short, foreign nationals are to be given the same treatment in each of the member countries
as that country makes available to its own citizens. Nationals of the various member
nations are thus assured of a certain minimum of international protection of their
industrial property.

The main argument is embedded on Art 6 of the Paris Convention which governs the
protection of well-known marks. The essential requirement of the said article is that the
trademark to be protected must be "well-known" in the country where protection is
sought. The power to determine whether a trademark is well-known lies in the "competent
authority of the country of registration or use." This competent authority would be either
the registering authority if it has the power to decide this, or the courts of the country in
question if the issue comes before a court
 12. McDonald’s Corporation and McGeorge Food Industries, Inc. vs L.C. Big Mak
Burger, Inc., et al
G.R. No. 143993, August 18, 2004

Facts:
McDonald’s is a corporation organized under the laws of Delaware which operates by itself
or through its franchisees a global chain of fast-food restaurants. It owns a family of marks
including “Big Mac” for their “double-decker hamburger sandwich.” This trademark was
registered with the US Trademark Registry on October 16, 1979. Thus, McDonald’s displays
the “Big Mac” mark in their items and paraphernalia.

L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food outlets and
snack vans in Metro Manila and nearby provinces. The menu includes hamburger
sandwiches. On October 25, 1988, they applied for the registration of the “Big Mak” mark
for their hamburger sandwiches which McDonald’s opposed, the latter alleging that “Big
Mak” was a colorable imitation of its registered “Big Mac” mark for the same food products.

McDonald’s wrote to the chairman of the Board of Directors of L.C. Big Mak Burger
requesting the latter to desist from using “Big Mac” mark but there was no reply.
McDonald’s then sued L.C. Big Mak for infringement and unfair competition.

Issue:
Whether or not L.C. Big Mak Burger, Inc. is liable for infringement and unfair competition.

Held:
Yes. The Court, in holding the respondents liable, relied on the dominancy test rather than
holistic test. The dominancy test considers the dominant features in the competing marks
in determining whether they are confusingly similar. Under the dominancy test, courts give
greater weight to the similarity of the appearance of the product arising from theadoption
of the dominant features of the registered mark, disregarding minor differences. Courts will
consider more the aural and visual impressions created by the marks in the public mind,
giving little weight to factors like prices, quality, sales outlets and market segments.

Applying the dominancy test, the Court finds that respondents' use of the "Big Mak" mark
results in likelihood of confusion. First, "Big Mak" sounds exactly the same as "Big Mac."
Second, the first word in "Big Mak" is exactly the same as the first word in "Big Mac." Third,
the first two letters in "Mak" are the same as the first two letters in "Mac." Fourth, the last
letter in "Mak" while a "k" sounds the same as "c" when the word "Mak" is pronounced.
Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus "Caloocan" is spelled
"Kalookan."

In short, aurally the two marks are the same, with the first word of both marks phonetically
the same, and the second word of both marks also phonetically the same. Visually, the two
marks have both two words and six letters, with the first word of both marks having the
same letters and the second word having the same first two letters. In spelling, considering
the Filipino language, even the last letters of both marks are the same.
Clearly, respondents have adopted in "Big Mak" not only the dominant but also almost all
the features of "Big Mac." Applied to the same food product of hamburgers, the two marks
will likely result in confusion in the public mind.
 13. Mighty Corporation and La Campana Fabrica De Tabaco, Inc. vs.
E. & J. Gallo Winery and The Andresons Group, Inc.
G.R. No. 154342 July 14, 2004

Facts:
Respondent Gallo Winery is a foreign corporation not doing business in the Philippines, but
organized under the laws of California, USA. It uses the GALLO and ERNEST & JULIO GALLO
wine trademarks. Andresons has been Gallo Winery’s exclusive wine importer and
distributor in the Philippines. GALLO wine trademark was registered in the Philippine
Patent Office on November 16, 1971.

Mighty Corporation and La Campana are engaged in the cultivation, manufacture, and sale
of tobacco products which they have been using the GALLO cigarette trademark since 1973.
GALLO cigarette trademark was registered on 1985 in the Philippine Patent Office.

Respondents sued petitioner for trademark and trade name infringement and unfair
competition

Petitioners alleged that the cigarettes and wines were totally unrelated products and that
Gallo Winery’s GALLO trademarks only covers wine and does not cover cigarettes, and that
the wines and cigarettes were sold through different channel of trade, that the GALLO
cigarettes were low-cost items.

Issue:
Whether or not there is infringement and/or unfair competition

Held:
No. Petitioners and respondents both use "GALLO" in the labels of their respective cigarette
and wine products. But, as held in many cases, the use of an identical mark does not, by
itself, lead to a legal conclusion that there is trademark infringement.

First, there is difference in the features of the marks used by the petitioners and the
respondent:
The dominant feature of the GALLO cigarette trademark is the device of a large rooster
facing left, outlined in black against a gold background. The rooster’s color is either green
or red – green for GALLO menthols and red for GALLO filters. Directly below the large
rooster device is the word GALLO. The rooster device is given prominence in the GALLO
cigarette packs in terms of size and location on the labels. Also, as admitted by respondents
themselves, on the side of the GALLO cigarette packs are the words "MADE BY MIGHTY
CORPORATION," thus clearly informing the public as to the identity of the manufacturer of
the cigarettes.
On the other hand, GALLO Winery’s wine and brandy labels are diverse. In many of them,
the labels are embellished with sketches of buildings and trees, vineyards or a bunch of
grapes while in a few, one or two small roosters facing right or facing each other (atop the
EJG crest, surrounded by leaves or ribbons), with additional designs in green, red and
yellow colors, appear as minor features thereof. Directly below or above these sketches is
the entire printed name of the founder-owners, "ERNEST & JULIO GALLO" or just their
surname "GALLO," which appears in different fonts, sizes, styles and labels, unlike
petitioners’ uniform casque-font bold-lettered GALLO mark. Moreover, on the labels of
Gallo Winery’s wines are printed the words "VINTED AND BOTTLED BY ERNEST & JULIO
GALLO, MODESTO, CALIFORNIA."

Second, the products are not sold in the same channels of trade.
GALLO cigarettes are inexpensive items while GALLO wines are not. GALLO wines are
patronized by middle-to-high-income earners while GALLO cigarettes appeal only to simple
folks like farmers, fishermen, laborers and other low-income workers. Indeed, the big price
difference of these two products is an important factor in proving that they are in fact
unrelated and that they travel in different channels of trade. There is a distinct price
segmentation based on vastly different social classes of purchasers.

GALLO cigarettes and GALLO wines are not sold through the same channels of trade.
GALLO cigarettes are Philippine-made and petitioners neither claim nor pass off their
goods as imported or emanating from Gallo Winery. GALLO cigarettes are distributed,
marketed and sold through ambulant and sidewalk vendors, small local sari-sari stores and
grocery stores in Philippine rural areas, mainly in Misamis Oriental, Pangasinan, Bohol, and
Cebu. On the other hand, GALLO wines are imported, distributed and sold in the Philippines
through Gallo Winery’s exclusive contracts with a domestic entity, which is currently
Andresons. By respondents’ own testimonial evidence, GALLO wines are sold in hotels,
expensive bars and restaurants, and high-end grocery stores and supermarkets, not
through sari-sari stores or ambulant vendors.

Petitioners are not liable for trademark infringement or unfair competition because the
petitioners never attempted to pass off their cigarettes as those of respondents. There is no
evidence of bad faith or fraud imputable to petitioners in using their GALLO cigarette
vmark.
 14. SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES, INC. vs.
COURT OF APPEALS and CFC CORPORATION.
G. R. No. 112012, April 4, 2001

Facts:
CFC Corporation filed with the BPTTT an application for the registration of the trademark
"FLAVOR MASTER" for instant coffee.

Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws and
domiciled in Switzerland, claimed that the trademark of private respondent’s product is
"confusingly similar to its trademarks for coffee and coffee extracts, MASTER ROAST and
MASTER BLEND."

Nestle Philippines, Inc. claimed that the use of CFC of the trademark FLAVOR MASTER and
its registration would likely cause confusion in the trade; or deceive purchasers and would
falsely suggest to the purchasing public a connection in the business of Nestle, as the
dominant word present in the three (3) trademarks is "MASTER"; or that the goods of CFC
might be mistaken as having originated from the latter.

CFC argued that FLAVOR MASTER, is not confusingly similar with the former’s trademarks,
MASTER ROAST and MASTER BLEND, except for the word MASTER (which cannot be
exclusively appropriated by any person for being a descriptive or generic name), the other
words that are used respectively with said word in the three trademarks are very different
from each other – in meaning, spelling, pronunciation, and sound. CFC further argued that
its trademark, FLAVOR MASTER, "is clearly very different from any of Nestle’s alleged
trademarks MASTER ROAST and MASTER BLEND, especially when the marks are viewed in
their entirety, by considering their pictorial representations, color schemes and the letters
of their respective labels."

BPTTT: denied CFC’s application for registration.

Court of Appeals: reversed decision of BPTTT.

Issue:
Whether the trademark FLAVOR MASTER is a colorable imitation of the trademarks
MASTER ROAST and MASTER BLEND.

Held:
The petition is impressed with merit.
A trademark has been generally defined as "any word, name, symbol or device adopted and
used by a manufacturer or merchant to identify his goods and distinguish them from those
manufactured and sold by others."

Section 4 (d) of Republic Act No. 166 or the Trademark Law:

Registration of trade-marks, trade-names and service-marks on the principal register. -
There is hereby established a register of trade-marks, trade-names and service marks
which shall be known as the principal register. The owner of a trade-mark, trade-name or
service-mark used to distinguish his goods, business or services from the goods, business
or services of others shall have the right to register the same on the principal register,
unless it:
xxx xxx xxx
(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-
name registered in the Philippines or a mark or trade-name 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 or services of the applicant, to cause confusion or
mistake or to deceive purchasers;
xxx xxx xxx

The law prescribes a more stringent standard in that there should not only be confusing
similarity but that it should not likely cause confusion or mistake or deceive purchasers.
Colorable imitation denotes such a close or ingenious imitation as to be calculated to
deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually gives, as to cause him to purchase
the one supposing it to be the other. In determining if colorable imitation exists,
jurisprudence has developed two kinds of tests - the Dominancy Test and the Holistic Test.
The test of dominancy focuses on the similarity of the prevalent features of the competing
trademarks which might cause confusion or deception and thus constitute infringement.
On the other side of the spectrum, the holistic test mandates that the entirety of the marks
in question must be considered in determining confusing similarity.

The mark must be considered as a whole and not as dissected. If the buyer is deceived, it is
attributable to the marks as a totality, not usually to any part of it. As what appellees would
want it to be when they essentially argue that much of the confusion springs from appellant
CFC’s use of the word "MASTER" which appellees claim to be the dominant feature of their
own trademarks that captivates the prospective consumers. Be it further emphasized that
the discerning eye of the observer must focus not only on the predominant words but also
on the other features appearing in both labels in order that he may draw his conclusion
whether one is confusingly similar to the other.

If the ordinary purchaser is "undiscerningly rash" in buying such common and inexpensive
household products as instant coffee, and would therefore be "less inclined to closely
examine specific details of similarities and dissimilarities" between the two competing
products, then it would be less likely for the ordinary purchaser to notice that CFC’s
trademark FLAVOR MASTER carries the colors orange and mocha while that of Nestle’s
uses red and brown. The application of the totality or holistic test is improper since the
ordinary purchaser would not be inclined to notice the specific features, similarities or
dissimilarities, considering that the product is an inexpensive and common household item.
It must be emphasized that the products bearing the trademarks in question are
"inexpensive and common" household items bought off the shelf by "undiscerningly rash"
purchasers. As such, if the ordinary purchaser is "undiscerningly rash", then he would not
have the time nor the inclination to make a keen and perceptive examination of the
physical discrepancies in the trademarks of the products in order to exercise his choice.
Court agrees with the BPTTT when it applied the test of dominancy.
It is the observation of this Office that much of the dominance which the word MASTER has
acquired through Opposer’s advertising schemes is carried over when the same is
incorporated into respondent-applicant’s trademark FLAVOR MASTER. Thus, when one
looks at the label bearing the trademark FLAVOR MASTER (Exh. 4) one’s attention is easily
attracted to the word MASTER, rather than to the dissimilarities that exist. Therefore, the
possibility of confusion as to the goods which bear the competing marks or as to the origins
thereof is not farfetched.
The term "MASTER", therefore, has acquired a certain connotation to mean the coffee
products MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC
of the term "MASTER" in the trademark for its coffee product FLAVOR MASTER is likely to
cause confusion or mistake or even to deceive the ordinary purchasers.
 15. Amigo Manufacturing, Inc. vs Cluett Peabody Cp., Inc.
G.r. No. 139300, March 14, 2001.

Facts:

Respondent in this case Cluett Peabody Co., Inc. a New York base corporation filed a case
against petitioner Amigo Manufacturing Inc. a Philippine base corporation for cancellation
of trademark. Respondent claims an exclusive ownership as successor in interest of Great
American Knitting Mills, Inc. of the following trademark and devices, as used on men’s
socks:
a) GOLD TOE, under Certificate of Registration No. 6797 dated September 22, 1958;

b) DEVICE, representation of a sock and magnifying glass on the toe of a sock, under
Certificate of Registration No. 13465 dated January 25, 1968.

c) DEVICE, consisting of a ‘plurality of gold colored lines arranged in parallel relation

within a triangular area of toe of the stocking and spread from each other by lines of
contrasting color of the major part of the stocking’ under Certificate of Registration No.
13887 dated May 9, 1968; and

d) LINENIZED, under Certificate of Registration No. 15440 dated April 13, 1970.

On the other hand, petitioner’s trademark and device ‘GOLD TOP, Linenized for Extra Wear’
has the dominant color ‘white’ at the center and a ‘blackish brown’ background with a
magnified design of the sock’s garter, and is labeled ‘Amigo Manufacturing Inc.,
Mandaluyong, Metro Manila, Made in the Philippines’.

In the Patent Office, this case was heard by no less than six Hearing Officers: Attys. Rodolfo
Gilbang, Rustico Casia, M. Yadao, Fabian Rufina, Neptali Bulilan and Pausi Sapak. The last
named officer drafted the decision under appeal which was in due court signed and issued
by the Director of Patents (who never presided over any hearing) adversely against the
respondent Amigo Manufacturing, Inc. as heretofore mentioned. The said decision was
appealed to the CA, finding respondent’s motion for reconsideration meritorious because
Petitioner's mark is a combination of the different registered marks owned by respondent.

Issue:
Since the petitioner’s actual use of its trademark was ahead of the respondent, whether or
not the Court of Appeals erred in canceling the registration of petitioner’s trademark
instead of canceling the trademark of the respondent.

Held:
No. Even if Petitioner claims that it started the actual use of the trademark “Gold Top and
Device” in September 1956, while respondent began using the trademark “Gold Toe” only
on May 15, 1962. It contends that the claim of respondent that it had been using the “Gold
Toe” trademark at an earlier date was not substantiated. The latter’s witnesses supposedly
contradicted themselves as to the date of first actual use of their trademark, coming up
with different dates such as 1952, 1947 and 1938.

But based on the evidence presented, this Court concurs in the findings of the Bureau of
Patents that respondent had actually used the trademark and the devices in question prior
to petitioner’s use of its own. During the hearing at the Bureau of Patents, respondent
presented Bureau registrations indicating the dates of first use in the Philippines of the
trademark and the devices as follows: a) March 16, 1954, Gold Toe; b) February 1, 1952,
the Representation of a Sock and a Magnifying Glass; c) January 30, 1932, the Gold Toe
Representation; and d) February 28, 1952, “Linenized.”

The registration of the above marks in favor of respondent constitutes prima facie
evidence, which petitioner failed to overturn satisfactorily, of respondent’s ownership of
those marks, the dates of appropriation and the validity of other pertinent facts stated
therein. Indeed, Section 20 of Republic Act 166 provides as follows:

“Sec. 20. Certificate of registration prima facie evidence of validity. - A certificate of

registration of a mark or trade-name shall be prima facie evidence of the validity of the
registration, the registrant's ownership of the mark or trade-name, and of the registrant's
exclusive right to use the same in connection with the goods, business or services specified
in the certificate, subject to any conditions and limitations stated therein.”

Moreover, the validity of the Certificates of Registration was not questioned. Neither did
petitioner present any evidence to indicate that they were fraudulently issued.
Consequently, the claimed dates of respondent’s first use of the marks are presumed valid.
Clearly, they were ahead of petitioner’s claimed date of first use of “Gold Top and Device”
in 1958.

Section 5-A of Republic Act No. 166 states that an applicant for a trademark or trade name
shall, among others, state the date of first use. The fact that the marks were indeed
registered by respondent shows that it did use them on the date indicated in the Certificate
of Registration.

On the other hand, petitioner failed to present proof of the date of alleged first use of the
trademark “Gold Top and Device”. Thus, even assuming that respondent started using it
only on May 15, 1962, we can make no finding that petitioner had started using it ahead of
respondent.

The findings of the Bureau of Patents that two trademarks are confusingly and deceptively
similar to each other are binding upon the courts, absent any sufficient evidence to the
contrary. In this case, the Bureau considered the totality of the similarities between the
two sets of marks and found that they were of such degree, number and quality as to give
the overall impression that the two products are confusingly if not deceptively the same.
 16. ASIA BREWERY, INC , vs.THE HON. COURT OF APPEALS and SAN MIGUEL
CORPORATION
G.R. No. 103543, July 5, 1993

Facts:
San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for
infringement of trademark and unfair competition on account of the latter's BEER PALE
PILSEN or BEER NA BEER product which has been competing with SMC's SAN MIGUEL
PALE PILSEN for a share of the local beer market.
Trial Court dismissed SMC's complaint because ABI "has not committed trademark
infringement or unfair competition against" SMC.
SMC appealed to the Court of Appeals, the Court of Appeals reversed the trial court.

Issue:
Whether ABI's BEER PALE PILSEN label or "design" infringe upon SMC's SAN MIGUEL
PALE PILSEN WITH RECTANGULAR MALT AND HOPS DESIGN?

Held:
No.
Infringement is determined by the "test of dominancy" rather than by differences or
variations in the details of one trademark and of another.

The fact that the words pale pilsen are part of ABI's trademark does not constitute an
infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are generic
words descriptive of the color ("pale"), of a type of beer ("pilsen"), which is a light
bohemian beer with a strong hops flavor that originated in the City of Pilsen in
Czechoslovakia and became famous in the Middle Ages. "Pilsen" is a "primarily
geographically descriptive word," hence, non-registerable and not appropriable by any
beer manufacturer.
 17. Societe Des Produits vs. Martin T. Dy
Gr no. 172276 August 8, 2010

Facts:
Petitioner is a foreign corporation organized under Switzerland laws. Petitioner owns
"NAN" trademark for its infant powered milk products. Petitioner distributed and sells Nan
milk products in the Philippines. Respondent owns 5M Enterprises that imports Sunny Boy
milk from Australia and repacks them into 3 sizes of plastic bags carrying the name
"Nanny". A letter of request was sent to Dy ordering him to restrain from using Nanny as
this infringes Nan trademark. When Dy did not act on the request, a complaint for
trademark infringement was filed before RTC Dumaguete. It was dismissed later on. On
appeal, the court remanded the case to the lower court for further proceedings.
Subsequently, the case was transferred to RTC Cebu, a special court designated for
intellectual property rights' cases.

Issue:
WON there was trademark infringement

Held: Yes.
The court applied the dominancy test when it found out that Nanny is confusingly similar
to Nan. Nan is the prevalent feature of Nestle's line of infant powdered milk products. The
first 3 letters of Nanny is the same as the letters of Nan. When both are pronounced, the
aural effect is confusingly similar. Furthermore, Nan and Nanny have the same
classification, descriptive properties and physical attributes. Both are classified under Class
6, both are milk products, and both are powdered in form. They are also displayed in the
milk section.
Finally, the trademark owner is not only protected by law in guarding his goods or business
from actual market competition with identical or similar products of the parties but also
extends to all cases as it would likely confuse the public into thinking that the complaining
party has extended his business into the field or is in any way connected with the activities
of the infringer.
 18. Fredco Manufacturing Corporation v. President and Fellows of Harvard
College
G.R. No 185917, June 11, 2011

Fredco Manufacturing Corporation filed before the Bureau of Legal Affairs of the
Philippine Intellectual Property Office a Petition for Cancellation of Registration No.
56561 issued to President and Fellows of Harvard College for the mark “Harvard
Veritas Shield Symbol”.

Fredco claimed that Harvard University had no right to register the mark, since its
Philippine registration was based on a foreign registration. Hence,Harvard University
could not have been considered as a prior user of the mark in the Philippines.

Fredco explained that the mark was first used in the Philippines by its predecessor-in-
interest New York Garments as early as 1982, and a certificate of registration was then
issued in 1988 for goods under class 25. Although the registration was cancelled for the
non-filing of an affidavit of use, the fact remained that the registration preceded
Harvard University’s use of the subject mark in the Philippines.

Harvard University, on the other hand claimed that the name and mark “Harvard” was
adopted in 1639 as the name of Harvard College of Cambridge, Massachusetts, USA.

The Bureau of Legal Affairs ruled in favor of Fredco and ordered the cancellation of
Registration No. 56561. It found Fredco to be the prior user and adopter of the mark
“Harvard” in the Philippines. On appeal, the Office of the Director General of the
Intellectual Property Office reversed the BLA ruling on the ground that more than the
use of the trademark in the Philippines, the applicant must be the owner of the mark
sought to be registered. Fredco, not being the owner of the mark, had no right to
register it.

The Court Appeals affirmed the decision of the Office of the Director General. Fredco
appealed the decision with the Supreme Court. In its appeal, Fredco insisted that the
date of actual use in the Philippines should prevail on the issue of who had a better
right to the mark.

The SC held that:

Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before a trademark
can be registered, it must have been actually used in commerce for not less than two
months in the Philippines prior to the filing of an application for its registration. While
Harvard University had actual prior use of its marks abroad for a long time, it did not
have actual prior use in the Philippines of the mark "Harvard Veritas Shield Symbol"
before its application for registration of the mark "Harvard" with the then Philippine
Patents Office. However, Harvard University's registration of the name "Harvard" is
based on home registration which is allowed under Section 37 of R.A. No. 166. As
pointed out by Harvard University in its Comment:

Section 2 of the Trademark law (R.A. 166) requires for the registration of trademark
that the applicant thereof must prove that the same has been actually in use in
commerce or services for not less than two (2) months in the Philippines before the
application for registration is filed, where the trademark sought to be registered has
already been registered in a foreign country that is a member of the Paris Convention,
the requirement of proof of use in the commerce in the Philippines for the said period is
not necessary. An applicant for registration based on home certificate of registration
need not even have used the mark or trade name in this country.”

“In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), "[m]arks
registered under Republic Act No. 166 shall remain in force but shall be deemed to have
been granted under this Act x x x," which does not require actual prior use of the mark
in the Philippines. Since the mark "Harvard Veritas Shield Symbol" is now deemed
granted under R.A. No. 8293, any alleged defect arising from the absence of actual prior
use in the Philippines has been cured by Section 239.2.”

The Supreme Court further ruled that Harvard University is entitled to protection in the
Philippines of its trade name “Harvard” even without registration of such trade name in
the Philippines. It explained:

“There is no question then, and this Court so declares, that "Harvard" is a well-known
name and mark not only in the United States but also internationally, including the
Philippines.
19. E.Y. Industrial Sales Inc. and Engracio Yap vs. Shen Dar Electricity and Machinery
Co.
G.R. No. 184850, October 20, 2010

FACTS:
EYIS is a domestic corporation engaged in the production, distribution and sale of air
compressors and other industrial tools and equipment. Petitioner Engracio Yap is the
Chairman of the Board of Directors of EYIS. Respondent Shen Dar, on the other hand, is a
Taiwan-based foreign corporation engaged in the manufacture of air compressors. Both
companies claimed to have the right to register the trademark “VESPA” for air
compressors. From 1997 to 2004, EYIS imported air compressors from Shen Dar through
sales contracts. In the Sales Contract dated April 20, 2002, for example, Shen Dar would
supply EYIS in one (1) year with 24 to 30 units of 40-ft. containers worth of air
compressors identified in the Packing/Weight Lists simply as SD-23, SD-29, SD-31, SD-32,
SD-39, SD-67 and SD-68. In the corresponding Bill of Ladings, the items were described
merely as air compressors. There is no documentary evidence to show that such air
compressors were marked “VESPA.”
On June 9, 1997, Shen Dar filed a Trademark Application with the IPO for the mark “VESPA,
Chinese Characters and Device” for use on air compressors and welding machines. On July
28, 1999, EYIS filed a Trademark Application also for the mark “VESPA,” for use on air
compressors. On January 18, 2004, the IPO issued COR No. 4-1999-005393 in favor of EYIS.
Thereafter, on February 8, 2007, Shen Dar was also issued COR No. 4-1997-121492. In the
meantime, on June 21, 2004, Shen Dar filed a Petition for Cancellation of EYIS’ COR with the
BLA. In the Petition, Shen Dar primarily argued that the issuance of the COR in favor of EYIS
violated Section 123.1 paragraphs (d), (e) and (f) of Republic Act No. (RA) 8293, otherwise
known as the Intellectual Property Code (IP Code), having first filed an application for the
mark. Shen Dar further alleged that EYIS was a mere distributor of air compressors
bearing the mark “VESPA” which it imported from Shen Dar. Shen Dar also argued that it
had prior and exclusive right to the use and registration of the mark “VESPA” in the
Philippines under the provisions of the Paris Convention. The BLA and the IPO Director
General denied Shen Dar’s petition. However, the Court of Appeals reversed the decision
and ruled in favor of herein respondent. Hence, this appeal on Certiorari.

ISSUE:
Whether or not E.Y. Indiustrial Sales is the true owner of the mark “Vespa”

HELD:
YES. Under Section 123(d) of RA 8293, the registration of a mark is prevented with
the filing of an earlier application for registration. This must not, however, be interpreted
to mean that ownership should be based upon an earlier filing date. While RA 8293
removed the previous requirement of proof of actual use prior to the filing of an application
for registration of a mark, proof of prior and continuous use is necessary to establish
ownership of a mark. Such ownership constitutes sufficient evidence to oppose the
registration of a mark.
Sec. 134 of the IP Code provides that “any person who believes that he would be damaged
by the registration of a mark x x x” may file an opposition to the application. The term “any
person” encompasses the true owner of the mark -- the prior and continuous user.
Notably, the Court has ruled that the prior and continuous use of a mark may even
overcome the presumptive ownership of the registrant and be held as the owner of the
mark. Here, the incontrovertible truth, as established by the evidence submitted by the
parties, is that Petitioner E.Y. Industrial Sales is the prior user of the mark. On the other
hand, Shen Dar failed to refute the evidence cited by the BLA in its decision. More
importantly, Shen Dar failed to present sufficient evidence to prove its own prior use of the
mark “VESPA.” As such, E.Y. Industrial Sales must be considered as the prior and
continuous user of the mark “VESPA” and its true owner. Hence, E.Y. Industrial Sales is
entitled to the registration of the mark in its name.