Faberge , Incorporated v.

The Intermediate Appellate Court and Co Beng Kay

04 November 1992; Melo, J.
Digest prepared by Dianne Cadorna
I. Facts
1. Private respondent Co Beng Kay (CBK) filed with the Director of Patents an application to
register the trademark “BRUTE” for the briefs manufactured and sold by his Corporation in
the domestic market.
2. Petitioner Faberge opposed this application on the ground of the similarity of the said
trademark with Faberge’s own symbol “BRUT,” which it previously registered for after shave
lotion, shaving cream, deodorant, talcum powder, and toilet soap, likewise sold in the
domestic market.
3. The Director of Patents granted CBK’s application.
4. The CA initially reversed this decision, holding that the marks “BRUT” and “BRUTE” were
indeed quite similar, and that even if the products sold under these marks are different, it is
still reasonable to believe that the similarity would cause confusion and even mistake and
deception in the buying public as to the origin of the goods bearing such trademarks,
especially since modern department stores usually place CBK’s products (briefs) and Faberge’s
products (after shave lotion, etc.) in one section denominated as “Men’s Accessories.” In
effect, this would supposedly allow CBK to unjustly benefit from the goodwill and reputation
that Faberge has already established for its “BRUT” products.
5. Upon CBK’s MR however, the CA reversed its earlier ruling, holding that the controlling ruling
is to the effect that the identical trademark can be used by different manufacturers for
products that are non-competing and unrelated.
6. Thus, Faberge is now before the SC to contest the above ruling, insisting that there can be
unfair competition even if the goods are noncompeting, especially in view of the alleged
repeal of RA 166 by RA 666, which deleted the phrase in the former law that the merchandise
must be substantially of the same descriptive properties. It also adds that it has a pending
application of the trademark “BRUT 33 DEVICE” for briefs as proof that it intended to expand
its mark "BRUT" to other goods and thus, following the sentiment expressed by Justice JBL
Reyes in Sta. Ana v. Maliwat, it is entitled to relief that is available where the junior user's
goods are not remote from any product that the senior user would be likely to make or sell.
II. Issues
WON an earlier registration of a trademark can prevent a later registration of a similarly-sounding
trademark, even if the products falling under the two are unrelated and non-competing – NO.
III. Holding
Petition denied. Decision of the CA is affirmed.
IV. Ratio
1. A review of the relevant provision of the Civil Code and RA 166, as amended would yield the
conclusion that CBK may be permitted to register the trademark “BRUTE” for briefs produced
by it notwithstanding Faberge’s vehement protestations of unfair dealings in marketing its
own set of items which are limited to: after-shave lotion, shaving cream, deodorant, talcum
powder and toilet soap.

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2. In as much as Faberge has not ventured in the production of briefs, an item which is not listed
in its certificate of registration, it cannot and should not be allowed to feign that CBK had
invaded its exclusive domain. Even its alleged application for registration of “BRUT” to other
products such as briefs was not annexed to its brief, and in any case, such application does
not suffice and may not vest an exclusive right in its favor that can ordinarily be protected by
the Trademark Law.
3. The certificate of registration issued by the Director of Patents can confer upon Faberge the
exclusive right to use its own symbol only to those goods specified in the certificate, subject
to any conditions and limitations stated therein.
4. WRT argument raised by Faberge as regards its alleged business expansion, which invokes the
wisdom imparted by Justice JBL Reyes in Sta. Ana vs. Maliwat to the effect that dissimilarity
of goods will not preclude relief if the junior user's goods are not remote from any other
product which the first user would be likely to make or sell, it is indeed true that Sec. 4(d) of
RA 166, as amended does not require that the articles of manufacture of the previous user
and late user of the mark should possess the same descriptive properties or should fall into
the same categories as to bar the latter from registering his mark in the principal register.
5. Yet, it is equally true that under Sec. 20 of the same law, the protective mantle of the
Trademark Law extends only to the goods used by the first user as specified in the certificate
of registration.
6. How should this apparent conflict between Sec. 4(d) and Sec. 20 be reconciled? The rule has
been laid down that the clause which comes later shall be given paramount significance over
an anterior proviso upon the presumption that it expresses the latest and dominant purpose.
It ineluctably follows that Sec. 20 is controlling and, therefore, CBK can appropriate its
symbol for the briefs it manufactures because as aptly remarked by Justice Sanchez in Sterling
Products v. Farbenfabriken:
“Really, if the certificate of registration were to be deemed as including goods not specified
therein, then a situation may arise whereby an applicant may be tempted to register a
trademark on any and all goods which his mind may conceive even if he had never intended
to use the trademark for the said goods. We believe that such omnibus registration is not
contemplated by our Trademark Law.”
7. Whatever deleterious effects may arise from the above interpretation of Sec. 20 in relation to
Sec. 4(d) of RA 166 is not entirely irreversible; however the remedy is legislative and not
judicial.
8. Neither can CBK be deemed to have committed infringement, which is defined as the use
without consent of the trademark owner of any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade name in connection with the sale, offering for sale,
or advertising of any goods, business or services on or in connection with which such use is
likely to cause confusion or mistake or to deceive purchasers or others as to the source or
origin of such goods or services, or identity of such business.
9. The glaring discrepancies between the products of CBK, on the one hand, and of Faberge, on
the other, had been amply portrayed to such an extent that indeed, a purchaser who is out
in the market for the purpose of buying CBK’s BRUTE brief would definitely be not mistaken
or misled into buying Faberge’s BRUT after shave lotion or deodorant.

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