EN BANC

1. G.R. No. L-5378 May 24, 1954In Re Petition for Registration of Trademark "Freedom" under
section 4 of Republic Act No. 166 filed in the Philippine Patent Office bearing Serial No. 38. CO
TIONG SA, applicant-petitioner,
vs.
DIRECTOR OF PATENTS, respondent,
SAW WOO CHIONG AND CO., oppositor.
“Freedom” (1947) vs. “Freeman” (1938)(Saw Woo Ching & Co.)
The applicant-petitioner claims that in sustaining the objection of the oppositor-respondent, the Director of
Patents erred: (1) in holding that in determining an opposition in the registration of trademarks, attention
should be centered upon the central idea of each trademark, disregarding their differences in details; (2) in
holding that if the central idea of each trademark gives the same general impression, the two trademarks
should be adjudged as confusingly similar; (3) in holding that the word "FREEDOM" and "FREEMAN"
convey the same general impression, hence must be adjudged to be confusingly similar; (4) in holding that if
the word "FREEDOM" is allowed to be registered as trademark, although no confusion and deception will
actually take place, the oppositor will nevertheless be damaged; and (5) in holding that the oppositor is not
required to introduce testimony on substantiate the claim made in its opposition.
Ruling:
Upon examination of the trademark of the oppositor-respondent, one will readily see that the dominant
feature is the word "FREEMAN" written in a peculiar print, slightly slanting to the right, with a peculiarly
written capital letters "FF". These dominant features or characteristics of oppositor's trademarks are
reproduced or imitated in applicant's trademark. In the first place, the word "FREEDOM" conveys a similar
idea as the word "FREEMAN". In the second place, the style in which both capital "F" are written are similar.
The print and slant of the letters are also similar. An ordinary purchaser or an unsuspecting customer
who has seen the oppositor's label sometime before will not recognize the difference between that
label and applicant's label. He may notice some variations, but he will ignore these, believing that
they are variations of the same trademark to distinguish one kind or quality of goods from another.
After a careful study, we find that the dominant characteristic of oppositor's trademark "FREEMAN" has
been imitated in applicant's trademark "FREEDOM," such as to confuse the public and unwary customers
and puchasers, and to deceive them into believing that the articles bearing one label are similar or produced
by the same manufacturer as those carrying the other label. The decision of the Director of Patents
sustaining the opposition and denying the application must, therefore, be affirmed.

EN BANC
2. G.R. No. L-20635 March 31, 1966
ETEPHA, A.G., petitioner,
vs.
DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS, INC., respondents.
On April 23, 1959, respondent Westmont Pharmaceuticals, Inc., a New York corporation, sought registration
of trademark "Atussin" placed on its "medicinal preparation of expectorant antihistaminic, bronchodilator
sedative, ascorbic acid (Vitamin C) used in the treatment of cough". The trademark is used exclusively in the
Philippines since January 21, 1959.1
Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected. Petitioner claims that it will be
damaged because Atussin is so confusedly similar to its Pertussin (Registration No. 6089, issued on
September 25, 1957) used on a preparation for the treatment of coughs, that the buying public will be misled
into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill.
Ruling:
The objects of a trademark are "to point out distinctly the origin or ownership of the articles to which it is
affixed, to secure to him who has been instrumental in bringing into market a superior article or merchandise
the fruit of his industry and skill, and to prevent fraud and imposition."
That the word "tussin" figures as a component of both trademarks is nothing to wonder at. The Director of
Patents aptly observes that it is "the common practice in the drug and pharmaceutical industries to 'fabricate'
marks by using syllables or words suggestive of the ailments for which they are intended and adding thereto
distinctive prefixes or suffixes".5 And appropriately to be considered now is the fact that, concededly, the
"tussin" (in Pertussin and Atussin) was derived from the Latin root-word "tussis" meaning cough.
"Tussin" is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of the goods; it
is open for appropriation by anyone. It is accordingly barred from registration as trademark. With
jurisprudence holding the line, we feel safe in making the statement that any other conclusion would result in
"appellant having practically a monopoly"7 of the word "tussin" in a trademark.
We now consider exclusively the two words — Pertussin and Atussin — as they appear on the respective
labels. As previously adverted to, these words are presented to the public in different styles of writing and
methods of design. The horizontal plain, block letters of Atussin and the diagonally and artistically
 upward writing of Pertussin leave distinct visual impressions. One look is enough to denude the
mind of that illuminating similarity so essential for a trademark infringement case to prosper.
In the solution of a trademark infringement problem, regard too should be given to the class of persons who
buy the particular product and the circumstances ordinarily attendant to its acquisition. 16 The medicinal
preparation clothed with the trademarks in question, are unlike articles of everyday use such as
candies, ice cream, milk, soft drinks and the like which may be freely obtained by anyone, anytime,
anywhere. Petitioner's and respondent's products are to be dispensed upon medical prescription.
The respective labels say so. An intending buyer must have to go first to a licensed doctor of medicine; he
receives instructions as to what to purchase; he reads the doctor's prescription; he knows what he is to buy.
He is not of the incautious, unwary, unobservant or unsuspecting type; he examines the product sold to him;
he checks to find out whether it conforms to the medical prescription. The common trade channel is the
pharmacy or the drugstore. Similarly, the pharmacist or druggist verifies the medicine sold. The margin of
error in the acquisition of one for the other is quite remote.

FIRST DIVISION

3. G.R. No. L-24075 January 31, 1974

CRISANTA Y. GABRIEL, petitioner,
vs.
DR. JOSE R. PEREZ and HONORABLE TIBURCIO EVALLE as Director of Patents, respondents.
Petition for review of the decision dated July 18, 1964 of the respondent Director of Patents denying the
petition of herein petitioner Crisanta Y. Gabriel to cancel and revoke certificate of registration No. SR-389
covering the trademark "WONDER" used on beauty soap issued on May 11, 1961 to herein private
respondent Dr. Jose R. Perez.
On October 19, 1962, petitioner Crisanta Y. Gabriel filed with the Patent Office a petition for cancellation of
the trademark "WONDER from the supplemental register alleging that the registrant was not entitled to
register the said trademark at the time of his application for registration; that the trademark was not used
and has not been actually used by registrant at the time he applied for its registration; that it was thru fraud
and misrepresentation that the registration was procured by the registrant; and that it was she who has been
actually using the said trademark since March, 1959, and as such is the rightful and recognized owner
thereof and therefore entitled to its registration. In support of her petition, she further alleged the written
contract between her and the registrant (respondent) wherein, according to her, the latter has recognized
her right of use and ownership of said trademark; and that the labels submitted by the registrant are the very
containers bearing the trademark "WONDER" which are owned by her and which she has been exclusively
and continuously using in commerce.
Way back in 1953, the Respondent who claims to be a medical researcher and manufacturer, was
experimenting on the creation of a beauty soap. Having discovered a workable formula he applied from the
Bureau of Health for the issuance of a Certificate of Label Approval and on June 6, 1958 he was issued
such certificate. It covers a beauty soap for bleaching, which whitens or sometimes softens the skin. (t.s.n.,
p. 48, Aug. 27, 1963). This certificate (Exh. "5") particularly describes and mentions "Dr. Perez" Wonder
Beauty Soap. He continued experimenting until he was able to discover an improved soap formula which he
claims that aside from bleaching or whitening the skin it also allegedly removes pimples, freckles, dandruff,
scabies, itching, head lice(s), rashes, falling of hair, and shallow wrinkles (t.s.n. p. 49, Aug. 27, 1963). For
such product he obtained another certificate of label approval from the Bureau of Health on August 10, 1959
(Exh. "6"). This document also particularly describes "Dr. Perez Wonder Beauty Soap (Improved Formula)."
In January, 1959 he made an agreement with a certain company named "Manserco" for the distribution of
his soap. It was then being managed by Mariano S. Yangga who happens to be the brother of the Petitioner
Crisanta Y. Gabriel (t.s.n., pp. 3-4, Aug. 27, 1963). This was corroborated by Mr. August Cesar Espiritu who
testified in favor of the Respondent. Mr. Espiritu claims to be the organizer and one of the incorporators of
"Manserco," although really no document of its corporate existence was introduced as evidence in this case
(t.s.n., pp. 55-57, Sept. 23, 1963). However, this fact had never been disputed by the Petitioner.
Because the corporation was allegedly going bankrupt and the members were deserting, the Respondent
terminated the agreement in July, 1959, and thereafter he asked the Petitioner to become the distributor of
his products (t.s.n., pp. 4-5, Aug. 27, 1963) and on September 1, 1959, a contract of "Exclusive
Distributorship" was executed between the Petitioner and the Respondent.
Ruling:
It is not denied that private respondent Dr. Jose R. Perez was the originator, producer and manufacturer of
the soap product identified as "DR. JOSE R. PEREZ WONDER BEAUTY SOAP." This fact, furthermore, is
clearly shown in Exhibits "5" and "6" which, as already adverted to, point out that said product emanated
from the Dr. Jose R. Perez Cosmetic Laboratory. The very boxes-containers used in packing the said
product also exhibit this fact.
 On the other hand, petitioner Crisanta Y. Gabriel appears to be a mere distributor of the product by contract
with the manufacturer, respondent Dr. Jose R. Perez (Exhs. "7", "F-1" to "F-2", p. 13, Vol. III, rec.) and the
same was only for a term. This fact is also clearly shown by the containers-boxes used in packing the
product (Exhs. "E", "D" and "II" also marked as Exh. "8", pp. 10, 11 and 99, Vol. III, rec.) which indicate and
describe Crisanta Y. Gabriel as the exclusive distributor of the product.
Petitioner urges that the agreement of exclusive distributorship executed by and between her and
respondent vested in her the exclusive ownership of the trademark "WONDER". But a scrutiny of the
provisions of said contract does not yield any right in favor of petitioner other than that expressly granted to
her — to be the sole and exclusive distributor of respondent Dr. Perez' product.
The exclusive distributor does not acquire any proprietary interest in the principal's trademark.
In the absence of any inequitable conduct on the part of the manufacturer, an exclusive distributor who
employs the trademark of the manufacturer does not acquire proprietary rights of the manufacturer, and a
registration of the trademark by the distributor as such belongs to the manufacturer, provided the fiduciary
relationship does not terminate before application for registration is filed.
Petitioner would also anchor her claim of exclusive ownership of the trademark in question on the fact that
she defrayed substantial expenses in the promotion of respondent's soap as covered by the trademark
"WONDER" and the printing of the packages which she further claimed have been designed thru her efforts
as she was the one who hired the services of an artist who created the designed of the said packages and
trademark. Such claim was disposed correctly by respondent Director of Patents, thus:
Petitioner's act in defraying substantial expenses in the promotion of the Respondent's goods and
the printing of the packages are the necessary or essential consequences of Paragraph 6 of the
agreement because, anyway, those activities are normal in the field of sale and distribution, as it
would redound to her own benefit as distributor, and those acts are incumbent upon her to do. While
it may be argued that sale by the Petitioner may be regarded as trademark use by her, nevertheless it
should also be regarded that such sale is a consequence of the "Exclusive Distributorship
Agreement" and it inured to the benefit of the Respondent because it was his trademark that was
being used. But this does not result in the Respondent's surrender in her favor of the right to
register the trademark in her own name. What would happen if the first five years' period terminates and
the Respondent decide not to continue with the agreement under Paragraph 1 thereof? What trademark
would he use if he himself assumes the distribution thereof or if he contracts with another, entity or person
for exclusive distributorship?

FIRST DIVISION
4. G.R. No. L-29971 August 31, 1982
ESSO STANDARD EASTERN, INC., petitioner,
vs.
THE HONORABLE COURT OF APPEALS ** and UNITED CIGARETTE CORPORATION, respondents.
Petitioner Esso Standard Eastern, Inc., 1 then a foreign corporation duly licensed to do business in the
Philippines, is engaged in the sale of petroleum products which are Identified with its trademark ESSO
(which as successor of the defunct Standard Vacuum Oil Co. it registered as a business name with the
Bureaus of Commerce and Internal Revenue in April and May, 1962). Private respondent in turn is a
domestic corporation then engaged in the manufacture and sale of cigarettes, after it acquired in November,
1963 the business, factory and patent rights of its predecessor La Oriental Tobacco Corporation, one of the
rights thus acquired having been the use of the trademark ESSO on its cigarettes, for which a permit had
been duly granted by the Bureau of Internal Revenue.
Barely had respondent as such successor started manufacturing cigarettes with the trademark ESSO, when
petitioner commenced a case for trademark infringement in the Court of First Instance of Manila. The
complaint alleged that the petitioner had been for many years engaged in the sale of petroleum products
and its trademark ESSO had acquired a considerable goodwill to such an extent that the buying public had
always taken the trademark ESSO as equivalent to high quality petroleum products. Petitioner asserted that
the continued use by private respondent of the same trademark ESSO on its cigarettes was being carried
out for the purpose of deceiving the public as to its quality and origin to the detriment and disadvantage of its
own products.
Ruling:
The law defines infringement as the use without consent of the trademark owner of any
"reproduction, counterfeit, copy or colorable limitation of any registered mark or tradename 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; or
reproduce, counterfeit, copy or colorably imitate any such mark or tradename and apply such
reproduction, counterfeit, copy or colorable limitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in connection with such goods, business
 or services." 4 Implicit in this definition is the concept that the goods must be so related that there is a
likelihood either of confusion of goods or business. 5But likelihood of confusion is a relative concept; to be
determined only according to the particular, and sometimes peculiar, circumstances of each case.
It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum products, and the
product of respondent, cigarettes, are non-competing. But as to whether trademark infringement exists
depends for the most part upon whether or not the goods are so related that the public may be, or is
actually, deceived and misled that they came from the same maker or manufacturer. For non-competing
goods may be those which, though they are not in actual competition, are so related to each other that it
might reasonably be assumed that they originate from one manufacturer. Non-competing goods may also
be those which, being entirely unrelated, could not reasonably be assumed to have a common
source. in the former case of related goods, confusion of business could arise out of the use of similar
marks; in the latter case of non-related goods, it could not. 8 The vast majority of courts today follow the
modern theory or concept of "related goods" 9 which the Court has likewise adopted and uniformly
recognized and applied.
Goods are related when they belong to the same class or have the same descriptive properties;
when they possess the same physical attributes or essential characteristics with reference to their
form, composition, texture or quality. They may also be related because they serve the same
purpose or are sold in grocery stores. 11 Thus, biscuits were held related to milk because they are both
food products. 12 Soap and perfume, lipstick and nail polish are similarly related because they are common
household items now a days. 13 The trademark "Ang Tibay" for shoes and slippers was disallowed to be
used for shirts and pants because they belong to the same general class of goods. 14 Soap and pomade
although non- competitive, were held to be similar or to belong to the same class, since both are toilet
articles. 15 But no confusion or deception can possibly result or arise when the name "Wellington" which is
the trademark for shirts, pants, drawers and other articles of wear for men, women and children is used as a
name of a department store
In the situation before us, the goods are obviously different from each other with "absolutely no iota
of similitude" 19as stressed in respondent court's judgment. They are so foreign to each other as to
make it unlikely that purchasers would think that petitioner is the manufacturer of respondent's
goods.ït¢@lFº 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 unrelated articles of a different kind.
Another factor that shows that the goods involved are non-competitive and non-related is the
appellate court's finding that they flow through different channels of trade, thus: "The products of each
party move along and are disposed through different channels of distribution. The (petitioner's) products are
distributed principally through gasoline service and lubrication stations, automotive shops and hardware
stores. On the other hand, the (respondent's) cigarettes are sold in sari-sari stores, grocery stores, and other
small distributor outlets. (Respondent's) cigarettes are even peddled in the streets while (petitioner's) 'gasul'
burners are not. Finally, there is a marked distinction between oil and tobacco, as well as between
petroleum and cigarettes. Evidently, in kind and nature the products of (respondent) and of (petitioner) are
poles apart."
Respondent court correctly ruled that considering the general appearances of each mark as a whole, the
possibility of any confusion is unlikely. A comparison of the labels of the samples of the goods submitted by
the parties shows a great many differences on the trademarks used. As pointed out by respondent court in
its appealed decision, "(A) witness for the plaintiff, Mr. Buhay, admitted that the color of the "ESSO" used by
the plaintiff for the oval design where the blue word ESSO is contained is the distinct and unique kind of
blue. In his answer to the trial court's question, Mr. Buhay informed the court that the plaintiff never used its
trademark on any product where the combination of colors is similar to the label of the Esso cigarettes," and
"Another witness for the plaintiff, Mr. Tengco, testified that generally, the plaintiff's trademark comes all in
either red, white, blue or any combination of the three colors. It is to be pointed out that not even a shade of
these colors appears on the trademark of the appellant's cigarette. The only color that the appellant uses in
its trademark is green."

FIRST DIVISION
5. G.R. No. L-78325 January 25, 1990
DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION, petitioners,
vs.
COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES, respondents.
Petitioner Del Monte Corporation is a foreign company organized under the laws of the United States and
not engaged in business in the Philippines. Both the Philippines and the United States are signatories to the
Convention of Paris of September 27, 1965, which grants to the nationals of the parties rights and
advantages which their own nationals enjoy for the repression of acts of infringement and unfair competition.
On October 27,1965, Del Monte authorized Philpack to register with the Philippine Patent Office the Del
Monte catsup bottle configuration, for which it was granted Certificate of Trademark Registration No. SR-
913 by the Philippine Patent Office under the Supplemental Register. 1 On November 20, 1972, Del Monte
also obtained two registration certificates for its trademark "DEL MONTE" and its logo.
Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of Registration by the
Bureau of Domestic Trade on April 17,1980, to engage in the manufacture, packing, distribution and sale of
various kinds of sauce, identified by the logo Sunshine Fruit Catsup. This logo was registered in the
Supplemental Register on September 20, 1983.
Having received reports that the private respondent was using its exclusively designed bottles and a logo
confusingly similar to Del Monte's, Philpack warned it to desist from doing so on pain of legal action.
Thereafter, claiming that the demand had been ignored, Philpack and Del Monte filed a complaint against
the private respondent for infringement of trademark and unfair competition, with a prayer for damages and
the issuance of a writ of preliminary injunction.
Ruling:
Section 22 of R.A. No. 166, otherwise known as the Trademark Law, provides in part as follows:
Sec. 22. Infringement, what constitutes. — Any person who shall use, without the consent of the registrant, 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; or reproduce, counterfeit copy or colorably imitate any such mark or trade name and apply such
reproduction, counterfeit copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such goods, business or services, shall be liable to a civil
action by the registrant for any or all of the remedies herein provided.
Sec. 29 of the same law states as follows:
Sec. 29. Unfair competition, rights and remedies. — A person who has identified in the mind of the public the goods he
manufactures or deals in, his business or services from those of others, whether or not a mark or tradename is employed,
has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the
same manner as other property rights. Such a person shall have the remedies provided in section twenty- three, Chapter
V hereof.
Any person who shall employ deception or any other means contrary to good faith by which he 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 such
goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be
subject to an action therefor.
In particular, and without in any way limiting the scope of unfair competition, the following shall be deemed guilty of unfair
competition:
(a) Any person, who in selling his goods shall give them the general appearance of goods of another manufacturer or
dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices
or words thereon, or in any other feature of their appearance, which would likely influence purchasers to believe that the
goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer, or who otherwise
clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any
subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose;
(b) Any person who by any artifice, or device, or who employs ally other means calculated to induce the false belief that
such person is offering the services of another who has identified such services in the mind of the public; or
(c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to
good faith of a nature calculated to discredit the goods, business or services of another.
To arrive at a proper resolution of this case, it is important to bear in mind the following distinctions between infringement
of trademark and unfair competition.
(1) Infringement of trademark is the unauthorized use of a trademark, whereas unfair competition is the passing off of
one's goods as those of another.
(2) In infringement of trademark fraudulent intent is unnecessary whereas in unfair competition fraudulent intent is
essential.
(3) In infringement of trademark the prior registration of the trademark is a prerequisite to the action, whereas in unfair
competition registration is not necessary. 8
In the challenged decision, the respondent court cited the following test laid down by this Court in a number of cases:
In determining whether two trademarks are confusingly similar, the two marks in their entirety as they appear in the
respective labels must be considered in relation to the goods to which they are attached; the discerning eye of the
observer must focus not only on the predorninant words but also on the other features appearing on both labels. 9
and applying the same, held that there was no colorable imitation of the petitioners' trademark and logo by the private
respondent. The respondent court agreed with the findings of the trial court that:
In order to resolve the said issue, the Court now attempts to make a comparison of the two products, to wit:
1. As to the shape of label or make:
Del Monte: Semi-rectangular with a crown or tomato shape design on top of the rectangle.
Sunshine: Regular rectangle.
2. As to brand printed on label:
Del Monte: Tomato catsup mark.
Sunshine: Fruit catsup.
3. As to the words or lettering on label or mark:
Del Monte: Clearly indicated words packed by Sysu International, Inc., Q.C., Philippines.
Sunshine: Sunshine fruit catsup is clearly indicated "made in the Philippines by Sunshine Sauce Manufacturing Industries"
No. 1 Del Monte Avenue, Malabon, Metro Manila.
4. As to color of logo:
Del Monte: Combination of yellow and dark red, with words "Del Monte Quality" in white.
Sunshine: White, light green and light red, with words "Sunshine Brand" in yellow.
5. As to shape of logo:
Del Monte: In the shape of a tomato.
Sunshine: Entirely different in shape.
6. As to label below the cap:
Del Monte: Seal covering the cap down to the neck of the bottle, with picture of tomatoes with words "made from real
tomatoes."
Sunshine: There is a label below the cap which says "Sunshine Brand."
7. As to the color of the products:
Del Monte: Darker red.
Sunshine: Lighter than Del Monte.

While the Court does recognize these distinctions, it does not agree with the conclusion that there was no
infringement or unfair competition. It seems to us that the lower courts have been so pre-occupied with the
details that they have not seen the total picture.
It has been correctly held that side-by-side comparison is not the final test of similarity. Such
comparison requires a careful scrutiny to determine in what points the labels of the products differ, as was
done by the trial judge. The ordinary buyer does not usually make such scrutiny nor does he usually have
the time to do so. The average shopper is usually in a hurry and does not inspect every product on
the shelf as if he were browsing in a library. Where the housewife has to return home as soon as
possible to her baby or the working woman has to make quick purchases during her off hours, she
is apt to be confused by similar labels even if they do have minute differences. The male shopper is
worse as he usually does not bother about such distinctions.
The question is not whether the two articles are distinguishable by their label when set side by side
but whether the general confusion made by the article upon the eye of the casual purchaser who is
unsuspicious and off his guard, is such as to likely result in his confounding it with the
original. 11 As observed in several cases, the general impression of the ordinary purchaser, buying under
the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying
that class of goods is the touchstone.
We also note that the respondent court failed to take into consideration several factors which should have
affected its conclusion, to wit: age, training and education of the usual purchaser, the nature and cost of the
article, whether the article is bought for immediate consumption and also the conditions under which it is
usually purchased . 21Among these, what essentially determines the attitude of the purchaser, specifically
his inclination to be cautious, is the cost of the goods. To be sure, a person who buys a box of candies will
not exercise as much care as one who buys an expensive watch. As a general rule, an ordinary buyer does
not exercise as much prudence in buying an article for which he pays a few centavos as he does in
purchasing a more valuable thing. 22 Expensive and valuable items are normally bought only after
deliberate, comparative and analytical investigation. But mass products, low priced articles in wide use, and
matters of everyday purchase requiring frequent replacement are bought by the casual consumer without
great care. In this latter category is catsup.
At that, even if the labels were analyzed together it is not difficult to see that the Sunshine label is a
colorable imitation of the Del Monte trademark. The predominant colors used in the Del Monte label are
green and red-orange, the same with Sunshine. The word "catsup" in both bottles is printed in white and the
style of the print/letter is the same. Although the logo of Sunshine is not a tomato, the figure nevertheless
approximates that of a tomato.
As previously stated, the person who infringes a trade mark does not normally copy out but only
makes colorable changes, employing enough points of similarity to confuse the public with enough
points of differences to confuse the courts. What is undeniable is the fact that when a manufacturer
prepares to package his product, he has before him a boundless choice of words, phrases, colors and
symbols sufficient to distinguish his product from the others. When as in this case, Sunshine chose, without
a reasonable explanation, to use the same colors and letters as those used by Del Monte though the field of
its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive .
Coming now to the second issue, we find that the private respondent is not guilty of infringement for
having used the Del Monte bottle. The reason is that the configuration of the said bottle was merely
registered in the Supplemental Register. In the case of Lorenzana v. Macagba, 26 we declared that:
(1) Registration in the Principal Register gives rise to a presumption of the validity of the registration, the
registrant's ownership of the mark and his right to the exclusive use thereof. There is no such presumption in
the registration in the Supplemental Register.
(2) Registration in the Principal Register is limited to the actual owner of the trademark and proceedings
therein on the issue of ownership which may be contested through opposition or interference proceedings
or, after registration, in a petition for cancellation.
 Registration in the Principal Register is constructive notice of the registrant's claim of ownership, while
registration in the Supplemental Register is merely proof of actual use of the trademark and notice that the
registrant has used or appropriated it. It is not subject to opposition although it may be cancelled after the
issuance. Corollarily, registration in the Principal Register is a basis for an action for infringement while
registration in the Supplemental Register is not.
(3) In applications for registration in the Principal Register, publication of the application is necessary. This is
not so in applications for registrations in the Supplemental Register.
It can be inferred from the foregoing that although Del Monte has actual use of the bottle's configuration, the
petitioners cannot claim exclusive use thereof because it has not been registered in the Principal Register.
However, we find that Sunshine, despite the many choices available to it and notwithstanding that the
caution "Del Monte Corporation, Not to be Refilled" was embossed on the bottle, still opted to use the
petitioners' bottle to market a product which Philpack also produces. This clearly shows the private
respondent's bad faith and its intention to capitalize on the latter's reputation and goodwill and pass off its
own product as that of Del Monte.

FIRST DIVISION

6. G.R. No. 100098 December 29, 1995

EMERALD GARMENT MANUFACTURING CORPORATION, petitioner,
vs.
HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER
and H.D. LEE COMPANY, INC., respondents.
On 18 September 1981, private respondent H.D. Lee Co., Inc., a foreign corporation organized under the
laws of Delaware, U.S.A., filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a
Petition for Cancellation of Registration No. SR 5054 (Supplemental Register) for the trademark "STYLISTIC
MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and
lingerie under Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment
Manufacturing Corporation, a domestic corporation organized and existing under Philippine laws. The
petition was docketed as Inter Partes Case No. 1558.
Private respondent, invoking Sec. 37 of R.A. No. 166 (Trademark Law) and Art. VIII of the Paris Convention
for the Protection of Industrial Property, averred that petitioner's trademark "so closely resembled its own
trademark, 'LEE' as previously registered and used in the Philippines, and not abandoned, as to be likely,
when applied to or used in connection with petitioner's goods, to cause confusion, mistake and deception on
the part of the purchasing public as to the origin of the goods."
In its answer dated 23 March 1982, petitioner contended that its trademark was entirely and unmistakably
different from that of private respondent and that its certificate of registration was legally and validly
granted.3
On 20 February 1984, petitioner caused the publication of its application for registration of the trademark
"STYLISTIC MR. LEE" in the Principal Register."
On 27 July 1984, private respondent filed a notice of opposition to petitioner's application for registration also
on grounds that petitioner's trademark was confusingly similar to its "LEE" trademark.5 The case was
docketed as Inter Partes Case No. 1860.
The Director of Patents found private respondent to be the prior registrant of the trademark "LEE" in the
Philippines and that it had been using said mark in the Philippines.7
Moreover, the Director of Patents, using the test of dominancy, declared that petitioner's trademark was
confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of
the buyer and leads him to conclude that the goods originated from the same manufacturer. It is undeniably
the dominant feature of the mark."
Ruling:
Petitioner's trademark is registered in the supplemental register. The Trademark Law (R.A. No. 166) provides that "marks
and tradenames for the supplemental register shall not be published for or be subject to opposition, but shall be published
on registration in the Official Gazette."19 The reckoning point, therefore, should not be 1 May 1975, the date of alleged
use by petitioner of its assailed trademark but 27 October 1980,20 the date the certificate of registration SR No. 5054 was
published in the Official Gazette and issued to petitioner.
It was only on the date of publication and issuance of the registration certificate that private respondent may be
considered "officially" put on notice that petitioner has appropriated or is using said mark, which, after all, is the function
and purpose of registration in the supplemental register.21 The record is bereft of evidence that private respondent was
aware of petitioner's trademark before the date of said publication and issuance. Hence, when private respondent
instituted cancellation proceedings on 18 September 1981, less than a year had passed.
Corollarily, private respondent could hardly be accused of inexcusable delay in filing its notice of opposition to petitioner's
application for registration in the principal register since said application was published only on 20 February 1984.22 From
the time of publication to the time of filing the opposition on 27 July 1984 barely five (5) months had elapsed. To be barred
from bringing suit on grounds of estoppel and laches, the delay must be
lengthy.
More crucial is the issue of confusing similarity between the two trademarks. Petitioner vehemently
contends that its trademark "STYLISTIC MR. LEE" is entirely different from and not confusingly
similar to private respondent's "LEE" trademark.
Proceeding to the task at hand, the essential element of infringement is colorable imitation. This term
has been defined as "such a close or ingenious imitation as to be calculated to deceive ordinary
purchasers, or such resemblance of the infringing mark to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one
supposing it to be the other."
Colorable imitation does not mean such similitude as amounts to identity. Nor does it require that all
the details be literally copied. Colorable imitation refers to such similarity in form, content, words,
sound, meaning, special arrangement, or general appearance of the trademark or tradename with
that of the other mark or tradename in their over-all presentation or in their essential, substantive
and distinctive parts as would likely mislead or confuse persons in the ordinary course of
purchasing the genuine article.
In determining whether colorable imitation exists, jurisprudence has developed two kinds of tests — the
Dominancy Test applied in Asia Brewery, Inc. v. Court of Appeals 28 and other cases 29 and the Holistic
Test developed in Del Monte Corporation v. Court of Appeals 30 and its proponent cases.
As its title implies, the test of dominancy focuses on the similarity of the prevalent features of the
competing trademarks which might cause confusion or deception and thus constitutes infringement.
xxx xxx xxx
. . . If the competing trademark contains the main or essential or dominant features of another, and
confusion and deception is likely to result, infringement takes place. Duplication or imitation is not
necessary; nor it is necessary that the infringing label should suggest an effort to imitate. [C.
Neilman Brewing Co. v. Independent Brewing Co., 191 F., 489, 495, citing Eagle White Lead Co., vs.
Pflugh (CC) 180 Fed. 579]. The question at issue in cases of infringement of trademarks is whether
the use of the marks involved would be likely to cause confusion or mistakes in the mind of the
public or deceive purchasers. (Auburn Rubber Corporation vs. Honover Rubber Co., 107 F. 2d 588; . . .)
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.
xxx xxx xxx
In determining whether the trademarks are confusingly similar, a comparison of the words is not the
only determinant factor. The trademarks in their entirety as they appear in their respective labels or
hang tags must also be considered in relation to the goods to which they are attached. 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.
Applying the foregoing tenets to the present controversy and taking into account the factual circumstances
of this case, we considered the trademarks involved as a whole and rule that petitioner's "STYLISTIC MR.
LEE" is not confusingly similar to private respondent's "LEE" trademark.
Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label the word "LEE" is
prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities between
the two marks become conspicuous, noticeable and substantial enough to matter especially in the light of
the following variables that must be factored in.
First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not
your ordinary household items like catsup, soysauce or soap which are of minimal cost. Maong pants
or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious and
discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is less likely.
Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does not
ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He is,
therefore, more or less knowledgeable and familiar with his preference and will not easily be distracted.
Finally, in line with the foregoing discussions, more credit should be given to the "ordinary
purchaser." Cast in this particular controversy, the ordinary purchaser is not the "completely unwary
consumer" but is the "ordinarily intelligent buyer" considering the type of product involved.
As we have previously intimated the issue of confusing similarity between trademarks is resolved by
considering the distinct characteristics of each case. In the present controversy, taking into account these
unique factors, we conclude that the similarities in the trademarks in question are not sufficient as to likely
cause deception and confusion tantamount to infringement.
 FIRST DIVISION

7. G.R. No. 114508 November 19, 1999

PRIBHDAS J. MIRPURI, petitioner,
vs.
COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON CORPORATION, respondents.
The Convention of Paris for the Protection of Industrial Property is a multi-lateral treaty which the Philippines
bound itself to honor and enforce in this country. As to whether or not the treaty affords protection to a
foreign corporation against a Philippine applicant for the registration of a similar trademark is the principal
issue in this case.
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. Escobar alleged that she had been manufacturing and selling these products
under the firm name "L & BM Commercial" since March 3, 1970.
Private respondent Barbizon Corporation, a corporation organized and doing business under the laws of
New York, U.S.A., opposed the application. It claimed that:
The mark BARBIZON of respondent-applicant is confusingly similar to the trademark BARBIZON which
opposer owns and has not abandoned.
That opposer will be damaged by the registration of the mark BARBIZON and its business reputation and
goodwill will suffer great and irreparable injury.
That the respondent-applicant's use of the said mark BARBIZON which resembles the trademark used and
owned by opposer, constitutes an unlawful appropriation of a mark previously used in the Philippines and
not abandoned and therefore a statutory violation of Section 4 (d) of Republic Act No. 166, as amended.
On June 18, 1974, the Director of Patents rendered judgment dismissing the opposition and giving due
course to Escobar's application.
This decision became final and on September 11, 1974, Lolita Escobar was issued a certificate of
registration for the trademark "Barbizon." The trademark was "for use in "brassieres and lady's underwear
garments like panties."
Escobar later assigned all her rights and interest over the trademark to petitioner Pribhdas J. Mirpuri who,
under his firm name then, the "Bonito Enterprises," was the sole and exclusive distributor of Escobar's
"Barbizon" products.
In 1979, however, Escobar failed to file with the Bureau of Patents the Affidavit of Use of the trademark
required under Section 12 of Republic Act (R.A.) No. 166, the Philippine Trademark Law. Due to this failure,
the Bureau of Patents cancelled Escobar's certificate of registration.
On May 27, 1981, Escobar reapplied for registration of the cancelled trademark. Mirpuri filed his own
application for registration of Escobar's trademark. Escobar later assigned her application to herein
petitioner and this application was opposed by private respondent. The case was docketed as Inter Partes
Case No. 2049
Ruling:
Issue of Res Judicata
The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised the issue of ownership,
the first registration and use of the trademark in the US and other countries, and the international recognition
of the trademark established by extensive use and advertisement of respondents products for over 40
years here and abroad. These are different from the issues of confessing similarity and damage in IPC 686.
The issue of prior use may have been raised in IPC 686 but this claim was limited to prior use in the
Philippines only. Prior use in IPC 2049 stems from the respondents claims originator of the word and symbol
“Barbizon”, as the first and registered user of the mark attached to its products which have been sold
and advertised would arise for aconsiderable number of years prior to petitioner’s first application. Indeed,
these are substantial allegations that raised new issues and necessarily gave respondents a new cause of
action.

Moreover, the cancellation of petitioner’s certificate registration for failure to file the affidavit of use arose
after IPC 686. This gave respondent another cause to oppose the second application.

It is also to be noted that the oppositions in the first and second cases are based on different laws. Causes
of action which are distinct and independent from each other, although out of the same contract, transaction,
or state of facts, may be sued on separately, recovery on one being no bar to subsequent actions on others.
The mere fact that the same relief is sought in the subsequent action will not render the judgment in the prior
action operating as res judicata, such as where the actions are based on different statutes.

Whether respondent may invoke protection under the Paris Convention

 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. Art. 6bis is a self-executing provision and does not require
legislative enactment to give it effect in the member country. It may be applied directly by the tribunals and
officials of each member country by the mere publication or proclamation of the Convention, after its
ratification according to the public law of each state and the order for its execution.
The Philippines and the United States of America have acceded to the WTO Agreement. Conformably, the
State must reaffirm its commitment to the global community and take part in evolving a new international
economic order at the dawn of the new millennium.

THIRD DIVISION
8. G.R. No. 139300 March 14, 2001
AMIGO MANUFACTURING, INC., petitioner,
vs.
CLUETT PEABODY CO., INC., respondent.
Petitioner Amigo Manufacturing Inc. challenges, under Rule 45 of the Rules of Court, the January 14, 1999
Resolution1 of the Court of Appeals (CA) in CA-GR SP No. 22792, which reversed, on reconsideration, its
own September 29, 1998 Decision.2 The dispositive portion of the assailed Resolution reads as follows:
"WHEREFORE, the Motion for Reconsideration is GRANTED, and the Decision dated September 29, 1998
REVERSED. Consequently, the decision rendered by the Director of Patents dated September 3, 1990 is
hereby AFFIRMED."
The Decision of the Director of Patents, referred to by the CA, disposed as follows:
"WHEREFORE, the Petition is GRANTED. Consequently, Certificate of Registration No. SR-2206 issued to
Respondent-Registrant [herein petitioner] is hereby cancelled.
"Let the records of this case be remanded to the Patent/Trademark Registry and EDP Division for
appropriate action in accordance with this Decision."
Petitioner also seeks the reversal of the June 30, 1999 CA Resolution3 denying its own Motion for
Reconsideration
"The source of the controversy that precipitated the filing by [herein Respondent] Cluett Peabody Co., Inc. (a
New York corporation) of the present case against [herein Petitioner] Amigo Manufacturing Inc. (a Philippine
corporation) for cancellation of trademark is [respondent's] claim of 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 (supra, p.1).
The decision pivots on two point: the application of the rule of idem sonans and the existence of a confusing
similarity in appearance between two trademarks.
Ruling:
First Issue:
Dates of First Use of Trademark and Devices
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.
We do not agree. 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."9
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. 16610 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.
Furthermore, petitioner registered its trademark only with the supplemental register. In La Chemise Lacoste
v. Fernandez,11 the Court held that registration with the supplemental register gives no presumption of
ownership of the trademark.
As to the actual date of first use by respondent of the four marks it registered, the seeming confusion may
have stemmed from the fact that the marks have different dates of first use. Clearly, however, these dates
are indicated in the Certificates of Registration.
Second Issue:
Similarity of Trademarks
Citing various differences between the two sets of marks, petitioner assails the finding of the director of
patents that its trademark is confusingly similar to that of respondent. Petitioner points out that the director of
patents erred in its application of the idem sonans rule, claiming that the two trademarks "Gold Toe" and
"Gold Top" do not sound alike and are pronounced differently. It avers that since the words gold and toe are
generic, respondent has no right to their exclusive use.
The arguments of petitioner are incorrect. True, it would not be guilty of infringement on the basis alone of
the similarity in the sound of petitioner's "Gold Top" with that of respondent's "Gold Toe." Admittedly, the
pronunciations of the two do not, by themselves, create confusion.
The Bureau of Patents, however, did not rely on the idem sonans test alone in arriving at its
conclusion. The Bureau considered the drawings and the labels, the appearance of the labels, the
lettering, and the representation of a man's foot wearing a sock. Obviously, its conclusion is based on
the totality of the similarities between the parties' trademarks and not on their sounds alone.
In the present case, a resort to either the Dominancy Test or the Holistic Test shows that colorable
imitation exists between respondent's "Gold Toe" and petitioner's "Gold Top." A glance at petitioner's
mark shows that it definitely has a lot of similarities and in fact looks like a combination of the trademark and
devices that respondent has already registered; namely, "Gold Toe," the representation of a sock with a
magnifying glass, the "Gold Toe" representation and "linenized."
Admittedly, there are some minor differences between the two sets of marks. The similarities, however, are
of such degree, number and quality that the overall impression given is that the two brands of socks are
deceptively the same, or at least very similar to each another. An examination of the products in question
shows that their dominant features are gold checkered lines against a predominantly black background and
a representation of a sock with a magnifying glass. In addition, both products use the same type of lettering.
Both also include a representation of a man's foot wearing a sock and the word "linenized" with arrows
printed on the label. Lastly, the names of the brands are similar -- "Gold Top" and "Gold Toe." Moreover, it
must also be considered that petitioner and respondent are engaged in the same line of business.
Third Issue:
The Paris Convention
Petitioner claims that the Court of Appeals erred in applying the Paris Convention. Although respondent
registered its trademark ahead, petitioner argues that the actual use of the said mark is necessary in order
to be entitled to the protection of the rights acquired through registration.
 As already discussed, respondent registered its trademarks under the principal register, which
means that the requirement of prior use had already been fulfilled. To emphasize, Section 5-A of
Republic Act 166 requires the date of first use to be specified in the application for registration.
Since the trademark was successfully registered, there exists a prima facie presumption of the
correctness of the contents thereof, including the date of first use. Petitioner has failed to rebut this
presumption.
Thus, applicable is the Union Convention for the Protection of Industrial Property adopted in Paris on March
20, 1883, otherwise known as the Paris Convention, of which the Philippines and the United States are
members. Respondent is domiciled in the United States and is the registered owner of the "Gold Toe"
trademark. Hence, it is entitled to the protection of the Convention. A foreign-based trademark owner, whose
country of domicile is a party to an international convention relating to protection of trademarks,17 is
accorded protection against infringement or any unfair competition as provided in Section 37 of Republic Act
166, the Trademark Law which was the law in force at the time this case was instituted.

FIRST DIVISION
9. G.R. No. 111580 June 21, 2001
SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT LTD., SHANGRI-LA PROPERTIES, INC.,
MAKATI SHANGRI-LA HOTEL AND RESORT, INC. and KUOK PHILIPPINE PROPERTIES, INC.,
petitioners,
vs.
THE COURT OF APPEALS, HON. FELIX M. DE GUZMAN, as Judge, RTC of Quezon City, Branch 99
and DEVELOPERS GROUP OF COMPANIES, INC., respondents.
----------------------------------------
G.R. No. 114802 June 21, 2001
DEVELOPERS GROUP OF COMPANIES, INC., petitioner,
vs.
THE COURT OF APPEALS, HON. IGNACIO S. SAPALO, in his capacity as Director, Bureau of Patents,
Trademarks and Technology Transfer, and SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT,
LTD.,respondents.
On June 21, 1988, the Shangri-La International Hotel Management, Ltd., Shangri-La Properties, Inc., Makati
Shangri-La Hotel and Resort, Inc. and Kuok Philippine Properties, Inc. (hereinafter collectively referred as
the "Shangri-La Group"), filed with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) a
petition, docketed as Inter Partes Case No. 3145, praying for the cancellation of the registration of the
"Shangri-La" mark and "S" device/logo issued to the Developers Group of Companies, Inc., on the ground
that the same was illegally and fraudulently obtained and appropriated for the latter's restaurant business.
The Shangri-La Group alleged that it is the legal and beneficial owners of the subject mark and logo; that it
has been using the said mark and logo for its corporate affairs and business since March 1962 and caused
the same to be specially designed for their international hotels in 1975, much earlier than the alleged first
use thereof by the Developers Group in 1982.
Likewise, the Shangri-La Group filed with the BPTTT its own application for registration of the subject mark
and logo. The Developers Group filed an opposition to the application, which was docketed as Inter Partes
Case No. 3529.
Almost three (3) years later, or on April 15, 1991, the Developers Group instituted with the Regional Trial
Court of Quezon City, Branch 99, a complaint for infringement and damages with prayer for injunction,
docketed as Civil Case No. Q-91-8476, against the Shangri-La Group.
On January 8, 1992, the Shangri-La Group moved for the suspension of the proceedings in the infringement
case on account of the pendency of the administrative proceedings before the BPTTT.1 This was denied by
the trial court in a Resolution issued on January 16, 1992.2 The Shangri-La Group filed a Motion for
Reconsideration.3 Soon thereafter, it also filed a Motion to Inhibit against Presiding Judge Felix M. de
Guzman.4 On July 1, 1992, the trial court denied both motions.5
The Shangri-La Group filed a petition for certiorari before the Court of Appeals, docketed as CA-G.R. SP No.
29006.6 On February 15, 1993, the Court of Appeals rendered its decision dismissing the petition for
certiorari.7 The Shangri-La Group filed a Motion for Reconsideration, which was denied on the ground that
the same presented no new matter that warranted consideration.
Ruling:
The core issue is simply whether, despite the institution of an Inter Partes case for cancellation of a
mark with the BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) by one party, the
adverse party can file a subsequent action for infringement with the regular courts of justice in
connection with the same registered mark.
We rule in the affirmative.
Section 151.2 of Republic Act No. 8293, otherwise known as the Intellectual Property Code, provides, as
follows –
 Section 151.2. Notwithstanding the foregoing provisions, the court or the administrative agency vested with
jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise
exercise jurisdiction to determine whether the registration of said mark may be cancelled in accordance with
this Act. The filing of a suit to enforce the registered mark with the proper court or agency shall exclude any
other court or agency from assuming jurisdiction over a subsequently filed petition to cancel the same
mark. On the other hand, the earlier filing of petition to cancel the mark with the Bureau of Legal
Affairs shall not constitute a prejudicial question that must be resolved before an action to enforce
the rights to same registered mark may be decided. (Emphasis provided)
Similarly, Rule 8, Section 7, of the Regulations on Inter Partes Proceedings, provides to wit –
Section 7. Effect of filing of a suit before the Bureau or with the proper court. - The filing of a suit to enforce
the registered mark with the proper court or Bureau shall exclude any other court or agency from assuming
jurisdiction over a subsequently filed petition to cancel the same mark. On the other hand, the earlier filing
of petition to cancel the mark with the Bureau shall not constitute a prejudicial question that must be
resolved before an action to enforce the rights to same registered mark may be decided. (Emphasis
provided)
Hence, as applied in the case at bar, the earlier institution of an Inter Partes case by the Shangri-La
Group for the cancellation of the "Shangri-La" mark and "S" device/logo with the BPTTT cannot
effectively bar the subsequent filing of an infringement case by registrant Developers Group. The law
and the rules are explicit.
The rationale is plain: Certificate of Registration No. 31904, upon which the infringement case is based,
remains valid and subsisting for as long as it has not been cancelled by the Bureau or by an
infringement court. As such, Developers Group's Certificate of Registration in the principal register
continues as "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."16 Since the certificate still subsists,
Developers Group may thus file a corresponding infringement suit and recover damages from any person
who infringes upon the former's rights.
Furthermore, the issue raised before the BPTTT is quite different from that raised in the trial court. The issue
raised before the BPTTT was whether the mark registered by Developers Group is subject to cancellation,
as the Shangri-La Group claims prior ownership of the disputed mark. On the other hand, the issue raised
before the trial court was whether the Shangri-La Group infringed upon the rights of Developers Group
within the contemplation of Section 22 of Republic Act 166.
Following both law and the jurisprudence enunciated in Conrad and Company, Inc. v. Court of
Appeals,22 the infringement case can and should proceed independently from the cancellation case with the
Bureau so as to afford the owner of certificates of registration redress and injunctive writs. In the same light,
so must the cancellation case with the BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office)
continue independently from the infringement case so as to determine whether a registered mark may
ultimately be cancelled. However, the Regional Trial Court, in granting redress in favor of Developers Group,
went further and upheld the validity and preference of the latter's registration over that of the Shangri-La
Group.
There can be no denying that the infringement court may validly pass upon the right of registration.
Section 161 of Republic Act No. 8293 provides to wit –
SEC. 161. Authority to Determine Right to Registration – In any action involving a registered mark the court
may determine the right to registration, order the cancellation of the registration, in whole or in part,
and otherwise rectify the register with respect to the registration of any party to the action in the
exercise of this. Judgement and orders shall be certified by the court to the Director, who shall make
appropriate entry upon the records of the Bureau, and shall be controlled thereby. (Sec. 25, R.A. No. 166a).
(Emphasis provided)
With the decision of the Regional Trial Court upholding the validity of the registration of the service mark
"Shangri-La" and "S" logo in the name of Developers Group, the cancellation case filed with the Bureau
hence becomes moot. To allow the Bureau to proceed with the cancellation case would lead to a possible
result contradictory to that which the Regional Trial Court has rendered, albeit the same is still on appeal.
Such a situation is certainly not in accord with the orderly administration of justice. In any event, the Court of
Appeals has the competence and jurisdiction to resolve the merits of the said RTC decision.

FIRST DIVISION
10. G.R. No. 144309 November 23, 2001
SOLID TRIANGLE SALES CORPORATION and ROBERT SITCHON, petitioners,
vs.
THE SHERIFF OF RTC QC, Branch 93; SANLY CORPORATION, ERA RADIO AND ELECTRICAL
SUPPLY, LWT CO., INCORPORATED; ROD CASTRO, VICTOR TUPAZ and the PEOPLE OF THE
PHILIPPINES, respondents. (see separate)