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G.R. No.

183404 : October 13, 2010 Abyadang filed a motion for reconsideration, and Berris, in turn, filed its opposition
to the motion.
BERRIS AGRICULTURAL CO., INC., Petitioner, v. NORVY
ABYADANG, Respondent.cralaw On August 2, 2006, Director Abelardo issued Resolution No. 2006-
09(D)7cra1aw (BLA resolution), denying the motion for reconsideration and
disposing as follows
DECISION

IN VIEW OF THE FOREGOING, the Motion for Reconsideration filed by the


NACHURA, J.:
Respondent-Applicant is hereby DENIED FOR LACK OF MERIT. Consequently,
Decision No. 2006-24 dated April 28, 2006 STANDS.
This petition for review1cra1aw on certiorari under Rule 45 of the Rules of Court
seeks the reversal of the Decision dated April 14, 20082cra1aw and the Resolution
Let the filewrapper of the trademark "NS D-10 PLUS" subject matter under
dated June 18, 20083cra1aw of the Court of Appeals (CA) in CA-G.R. SP No. 99928.
consideration be forwarded to the Bureau of Trademarks for appropriate action in
accordance with this Resolution.
The antecedents
SO ORDERED.8chanroblesvirtuallawlibrary
On January 16, 2004, respondent Norvy A. Abyadang (Abyadang), proprietor of NS
Northern Organic Fertilizer, with address at No. 43 Lower QM, Baguio City, filed with
Aggrieved, Abyadang filed an appeal on August 22, 2006 with the Office of the
the Intellectual Property Office (IPO) a trademark application for the mark "NS D-10
Director General, Intellectual Property Philippines (IPPDG), docketed as Appeal No.
PLUS" for use in connection with Fungicide (Class 5) with active ingredient 80%
14-06-13.
Mancozeb. The application, under Application Serial No. 4-2004-00450, was given
due course and was published in the IPO e-Gazette for opposition on July 28, 2005.
With the filing of the parties respective memoranda, Director General Adrian S.
Cristobal, Jr. of the IPPDG rendered a decision dated July 20, 2007,9cra1aw ruling
On August 17, 2005, petitioner Berris Agricultural Co., Inc. (Berris), with business
as follows
address in Barangay Masiit, Calauan, Laguna, filed with the IPO Bureau of Legal
Affairs (IPO-BLA) a Verified Notice of Opposition4cra1aw against the mark under
application allegedly because "NS D-10 PLUS" is similar and/or confusingly similar to Wherefore, premises considered[,] the appeal is hereby DENIED. Accordingly, the
its registered trademark "D-10 80 WP," also used for Fungicide (Class 5) with active appealed Decision of the Director is hereby AFFIRMED.
ingredient 80% Mancozeb. The opposition was docketed as IPC No. 14-2005-00099.
Let a copy of this Decision as well as the trademark application and records be
After an exchange of pleadings, on April 28, 2006, Director Estrellita Beltran- furnished and returned to the Director of Bureau of Legal Affairs for appropriate
Abelardo (Director Abelardo) of the IPO-BLA issued Decision No. 2006- action. Further, let also the Directors of the Bureau of Trademarks, the
245cra1aw (BLA decision), the dispositive portion of which reads Administrative, Financial and Human Resources Development Services Bureau, and
the library of the Documentation, Information and Technology Transfer Bureau be
furnished a copy of this Decision for information, guidance, and records purposes.
WHEREFORE, viewed in the light of all the foregoing, this Bureau finds and so holds
that Respondent-Applicants mark "NS D-10 PLUS" is confusingly similar to the
Opposers mark and as such, the opposition is hereby SUSTAINED. Consequently, SO ORDERED.10chanroblesvirtuallawlibrary
trademark application bearing Serial No. 4-2004-00450 for the mark "NS D-10
PLUS" filed on January 16, 2004 by Norvy A. Ab[yada]ng covering the goods
Undeterred, Abyadang filed a petition for review11cra1aw before the CA.
fungicide under Class 5 of the International Classification of goods is, as it is hereby,
REJECTED.
In its Decision dated April 14, 2008, the CA reversed the IPPDG decision. It held
Let the filewrapper of the trademark "NS D-10 PLUS" subject matter under
consideration be forwarded to the Administrative, Financial and Human Resources In sum, the petition should be granted due to the following reasons: 1) petitioners
Development Services Bureau (AFHRDSB) for appropriate action in accordance with mark "NS D-10 PLUS" is not confusingly similar with respondents trademark "D-10
this Order with a copy to be furnished the Bureau of Trademark (BOT) for 80 WP"; 2) respondent failed to establish its ownership of the mark "D-10 80 WP"
information and to update its records. and 3) respondents trademark registration for "D-10 80 WP" may be cancelled in
the present case to avoid multiplicity of suits.
SO ORDERED.6chanroblesvirtuallawlibrary
WHEREFORE, the petition is GRANTED. The decision dated July 20, 2007 of the IPO
Director General in Appeal No. 14-06-13 (IPC No. 14-2005-00099) is REVERSED
and SET ASIDE, and a new one is entered giving due course to petitioners protection, legal protection ownership of the trademark should rightly be
application for registration of the mark "NS D-10 PLUS," and canceling respondents established.
trademark registration for "D-10 80 WP."
The ownership of a trademark is acquired by its registration and its actual use by
SO ORDERED.12chanroblesvirtuallawlibrary the manufacturer or distributor of the goods made available to the purchasing
public. Section 12220cra1aw of R.A. No. 8293 provides that the rights in a mark
shall be acquired by means of its valid registration with the IPO. A certificate of
Berris filed a Motion for Reconsideration, but in its June 18, 2008 Resolution, the CA
registration of a mark, once issued, constitutes prima facie evidence of the validity
denied the motion for lack of merit. Hence, this petition anchored on the following
of the registration, of the registrants ownership of the mark, and of the registrants
arguments
exclusive right to use the same in connection with the goods or services and those
that are related thereto specified in the certificate.21cra1aw R.A. No. 8293, however,
I. The Honorable Court of Appeals finding that there exists no confusing similarity requires the applicant for registration or the registrant to file a declaration of actual
between Petitioners and respondents marks is based on misapprehension of facts, use (DAU) of the mark, with evidence to that effect, within three (3) years from the
surmise and conjecture and not in accord with the Intellectual Property Code and filing of the application for registration; otherwise, the application shall be refused
applicable Decisions of this Honorable Court [Supreme Court]. or the mark shall be removed from the register.22cra1aw In other words, the prima
facie presumption brought about by the registration of a mark may be challenged
II. The Honorable Court of Appeals Decision reversing and setting aside the and overcome, in an appropriate action, by proof of the nullity of the registration or
technical findings of the Intellectual Property Office even without a finding or, at the of non-use of the mark, except when excused.23cra1aw Moreover, the presumption
very least, an allegation of grave abuse of discretion on the part of said agency is may likewise be defeated by evidence of prior use by another person, i.e., it will
not in accord with law and earlier pronouncements of this Honorable Court controvert a claim of legal appropriation or of ownership based on registration by a
[Supreme Court]. subsequent user. This is because a trademark is a creation of use and belongs to
one who first used it in trade or commerce.24chanroblesvirtuallawlibrary

III. The Honorable Court of Appeals Decision ordering the cancellation of herein
Petitioners duly registered and validly existing trademark in the absence of a The determination of priority of use of a mark is a question of fact. Adoption of the
properly filed Petition for Cancellation before the Intellectual Property Office is not in mark alone does not suffice. One may make advertisements, issue circulars,
accord with the Intellectual Property Code and applicable Decisions of this distribute price lists on certain goods, but these alone will not inure to the claim of
Honorable Court [Supreme Court].13chanroblesvirtuallawlibrary ownership of the mark until the goods bearing the mark are sold to the public in the
market. Accordingly, receipts, sales invoices, and testimonies of witnesses as
customers, or orders of buyers, best prove the actual use of a mark in trade and
The basic law on trademark, infringement, and unfair competition is Republic Act commerce during a certain period of time.25chanroblesvirtuallawlibrary
(R.A.) No. 829314cra1aw(Intellectual Property Code of the Philippines), specifically
Sections 121 to 170 thereof. It took effect on January 1, 1998. Prior to its
effectivity, the applicable law was R.A. No. 166,15cra1aw as amended. In the instant case, both parties have submitted proof to support their claim of
ownership of their respective trademarks.

Interestingly, R.A. No. 8293 did not expressly repeal in its entirety R.A. No. 166,
but merely provided in Section 239.116cra1aw that Acts and parts of Acts Culled from the records, Berris, as oppositor to Abyadangs application for
inconsistent with it were repealed. In other words, only in the instances where a registration of his trademark, presented the following evidence: (1) its trademark
substantial and irreconcilable conflict is found between the provisions of R.A. No. application dated November 29, 200226cra1aw with Application No. 4-2002-
8293 and of R.A. No. 166 would the provisions of the latter be deemed repealed. 0010272; (2) its IPO certificate of registration dated October 25,
2004,27cra1aw with Registration No. 4-2002-010272 and July 8, 2004 as the date of
registration; (3) a photocopy of its packaging28cra1aw bearing the mark "D-10 80
R.A. No. 8293 defines a "mark" as any visible sign capable of distinguishing the WP"; (4) photocopies of its sales invoices and official receipts;29cra1aw and (5) its
goods (trademark) or services (service mark) of an enterprise and shall include a notarized DAU dated April 23, 2003,30cra1aw stating that the mark was first used on
stamped or marked container of goods.17cra1aw It also defines a "collective mark" June 20, 2002, and indicating that, as proof of actual use, copies of official receipts
as any visible sign designated as such in the application for registration and capable or sales invoices of goods using the mark were attached as Annex "B."
of distinguishing the origin or any other common characteristic, including the quality
of goods or services of different enterprises which use the sign under the control of
the registered owner of the collective mark.18chanroblesvirtuallawlibrary On the other hand, Abyadangs proofs consisted of the following: (1) a photocopy of
the packaging31cra1awfor his marketed fungicide bearing mark "NS D-10 PLUS"; (2)
Abyadangs Affidavit dated February 14, 2006,32cra1aw stating among others that
On the other hand, R.A. No. 166 defines a "trademark" as any distinctive word, the mark "NS D-10 PLUS" was his own creation derived from: N for Norvy, his
name, symbol, emblem, sign, or device, or any combination thereof, adopted and name; S for Soledad, his wifes name; D the first letter for December, his birth
used by a manufacturer or merchant on his goods to identify and distinguish them month; 10 for October, the 10th month of the year, the month of his business name
from those manufactured, sold, or dealt by another.19cra1aw A trademark, being a registration; and PLUS to connote superior quality; that when he applied for
special property, is afforded protection by law. But for one to enjoy this legal registration, there was nobody applying for a mark similar to "NS D-10 PLUS"; that
he did not know of the existence of Berris or any of its products; that "D-10" could "D-10 80 WP" within Region I and the Cordillera Administrative Region, could not
not have been associated with Berris because the latter never engaged in any negate the fact that Berris was selling its product using that mark in 2002,
commercial activity to sell "D-10 80 WP" fungicide in the local market; and that he especially considering that it first traded its goods in Calauan, Laguna, where its
could not have copied Berris mark because he registered his packaging with the business office is located, as stated in the DAU.
Fertilizer and Pesticide Authority (FPA) ahead of Berris; (3) Certification dated
December 19, 200533cra1aw issued by the FPA, stating that "NS D-10 PLUS" is
Therefore, Berris, as prior user and prior registrant, is the owner of the mark "D-10
owned and distributed by NS Northern Organic Fertilizer, registered with the FPA
80 WP." As such, Berris has in its favor the rights conferred by Section 147 of R.A.
since May 26, 2003, and had been in the market since July 30, 2003; (4)
No. 8293, which provides
Certification dated October 11, 200534cra1aw issued by the FPA, stating that, per
monitoring among dealers in Region I and in the Cordillera Administrative Region
registered with its office, the Regional Officer neither encountered the fungicide with Sec. 147. Rights Conferred.
mark "D-10 80 WP" nor did the FPA provincial officers from the same area receive
any report as to the presence or sale of Berris product; (5) Certification dated March 147.1. The owner of a registered mark shall have the exclusive right to prevent all
14, 200635cra1aw issued by the FPA, certifying that all pesticides must be registered third parties not having the owners consent from using in the course of trade
with the said office pursuant to Section 936cra1aw of Presidential Decree (P.D.) No. identical or similar signs or containers for goods or services which are identical or
114437cra1aw and Section 1, Article II of FPA Rules and Regulations No. 1, Series of similar to those in respect of which the trademark is registered where such use
1977; (6) Certification dated March 16, 200638cra1aw issued by the FPA, certifying would result in a likelihood of confusion. In case of the use of an identical sign for
that the pesticide "D-10 80 WP" was registered by Berris on November 12, 2004; identical goods or services, a likelihood of confusion shall be presumed.
and (7) receipts from Sunrise Farm Supply39cra1aw in La Trinidad, Benguet of the
sale of Abyadangs goods referred to as "D-10" and "D-10+."
147.2. The exclusive right of the owner of a well-known mark defined in Subsection
123.1(e) which is registered in the Philippines, shall extend to goods and services
Based on their proffered pieces of evidence, both Berris and Abyadang claim to be which are not similar to those in respect of which the mark is registered: Provided,
the prior user of their respective marks. That use of that mark in relation to those goods or services would indicate a
connection between those goods or services and the owner of the registered mark:
We rule in favor of Berris. Provided, further, That the interests of the owner of the registered mark are likely
to be damaged by such use.
Berris was able to establish that it was using its mark "D-10 80 WP" since June 20,
2002, even before it filed for its registration with the IPO on November 29, 2002, as Now, we confront the question, "Is Abyadangs mark NS D-10 PLUS confusingly
shown by its DAU which was under oath and notarized, bearing the stamp of the similar to that of Berris D-10 80 WP such that the latter can rightfully prevent the
Bureau of Trademarks of the IPO on April 25, 2003,40cra1awand which stated that it IPO registration of the former?"
had an attachment as Annex "B" sales invoices and official receipts of goods bearing
the mark. Indeed, the DAU, being a notarized document, especially when received We answer in the affirmative.
in due course by the IPO, is evidence of the facts it stated and has the presumption
of regularity, entitled to full faith and credit upon its face. Thus, the burden of proof
to overcome the presumption of authenticity and due execution lies on the party According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered if it is
contesting it, and the rebutting evidence should be clear, strong, and convincing as identical with a registered mark belonging to a different proprietor with an earlier
to preclude all controversy as to the falsity of the certificate.41cra1aw What is more, filing or priority date, with respect to: (1) the same goods or services; (2) closely
the DAU is buttressed by the Certification dated April 21, 200642cra1aw issued by related goods or services; or (3) near resemblance of such mark as to likely deceive
the Bureau of Trademarks that Berris mark is still valid and existing. or cause confusion.

Hence, we cannot subscribe to the contention of Abyadang that Berris DAU is In determining similarity and likelihood of confusion, jurisprudence has developed
fraudulent based only on his assumption that Berris could not have legally used the teststhe Dominancy Test and the Holistic or Totality Test. The Dominancy Test
mark in the sale of its goods way back in June 2002 because it registered the focuses on the similarity of the prevalent or dominant features of the competing
product with the FPA only on November 12, 2004. As correctly held by the IPPDG in trademarks that might cause confusion, mistake, and deception in the mind of the
its decision on Abyadangs appeal, the question of whether or not Berris violated purchasing public. Duplication or imitation is not necessary; neither is it required
P.D. No. 1144, because it sold its product without prior registration with the FPA, is that the mark sought to be registered suggests an effort to imitate. Given more
a distinct and separate matter from the jurisdiction and concern of the IPO. Thus, consideration are the aural and visual impressions created by the marks on the
even a determination of violation by Berris of P.D. No. 1144 would not controvert buyers of goods, giving little weight to factors like prices, quality, sales outlets, and
the fact that it did submit evidence that it had used the mark "D-10 80 WP" earlier market segments.43chanroblesvirtuallawlibrary
than its FPA registration in 2004.
In contrast, the Holistic or Totality Test necessitates a consideration of the entirety
Furthermore, even the FPA Certification dated October 11, 2005, stating that the of the marks as applied to the products, including the labels and packaging, in
office had neither encountered nor received reports about the sale of the fungicide 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 regard are generally accorded great respect, if not finality by the courts, as long as
labels so that the observer may draw conclusion on whether one is confusingly they are supported by substantial evidence, even if such evidence might not be
similar to the other.44chanroblesvirtuallawlibrary overwhelming or even preponderant. It is not the task of the appellate court to
weigh once more the evidence submitted before the administrative body and to
substitute its own judgment for that of the administrative agency in respect to
Comparing Berris mark "D-10 80 WP" with Abyadangs mark "NS D-10 PLUS," as
sufficiency of evidence.48chanroblesvirtuallawlibrary
appearing on their respective packages, one cannot but notice that both have a
common component which is "D-10." On Berris package, the "D-10" is written with
a bigger font than the "80 WP." Admittedly, the "D-10" is the dominant feature of Inasmuch as the ownership of the mark "D-10 80 WP" fittingly belongs to Berris,
the mark. The "D-10," being at the beginning of the mark, is what is most and because the same should not have been cancelled by the CA, we consider it
remembered of it. Although, it appears in Berris certificate of registration in the proper not to belabor anymore the issue of whether cancellation of a registered
same font size as the "80 WP," its dominancy in the "D-10 80 WP" mark stands mark may be done absent a petition for cancellation.
since the difference in the form does not alter its distinctive
character.45chanroblesvirtuallawlibrary
WHEREFORE, the petition is GRANTED. The assailed Decision dated April 14, 2008
and Resolution dated June 18, 2008 of the Court of Appeals in CA-G.R. SP No.
Applying the Dominancy Test, it cannot be gainsaid that Abyadangs "NS D-10 PLUS" 99928 are REVERSED and SET ASIDE. Accordingly, the Decision No. 2006-24 dated
is similar to Berris "D-10 80 WP," that confusion or mistake is more likely to occur. April 28, 2006 and the Resolution No. 2006-09(D) dated August 2, 2006 in IPC No.
Undeniably, both marks pertain to the same type of goods fungicide with 80% 14-2005-00099, and the Decision dated July 20, 2007 in Appeal No. 14-06-13 are
Mancozeb as an active ingredient and used for the same group of fruits, crops, REINSTATED. Costs against respondent.
vegetables, and ornamental plants, using the same dosage and manner of
application. They also belong to the same classification of goods under R.A. No.
SO ORDERED.
8293. Both depictions of "D-10," as found in both marks, are similar in size, such
that this portion is what catches the eye of the purchaser. Undeniably, the likelihood
of confusion is present.

This likelihood of confusion and mistake is made more manifest when the Holistic
Test is applied, taking into consideration the packaging, for both use the same type
of material (foil type) and have identical color schemes (red, green, and white); and
the marks are both predominantly red in color, with the same phrase "BROAD
SPECTRUM FUNGICIDE" written underneath.

Considering these striking similarities, predominantly the "D-10," the buyers of both
products, mainly farmers, may be misled into thinking that "NS D-10 PLUS" could
be an upgraded formulation of the "D-10 80 WP."

Moreover, notwithstanding the finding of the IPPDG that the "D-10" is a fanciful
component of the trademark, created for the sole purpose of functioning as a
trademark, and does not give the name, quality, or description of the product for
which it is used, nor does it describe the place of origin, such that the degree of
exclusiveness given to the mark is closely restricted,46cra1aw and considering its
challenge by Abyadang with respect to the meaning he has given to it, what
remains is the fact that Berris is the owner of the mark "D-10 80 WP," inclusive of
its dominant feature "D-10," as established by its prior use, and prior registration
with the IPO. Therefore, Berris properly opposed and the IPO correctly rejected
Abyadangs application for registration of the mark "NS D-10 PLUS."

Verily, the protection of trademarks as intellectual property is intended not only to


preserve the goodwill and reputation of the business established on the goods
bearing the mark through actual use over a period of time, but also to safeguard
the public as consumers against confusion on these goods.47cra1aw On this matter
of particular concern, administrative agencies, such as the IPO, by reason of their
special knowledge and expertise over matters falling under their jurisdiction, are in
a better position to pass judgment thereon. Thus, their findings of fact in that
G.R. No. 190065 August 16, 2010 public into believing that Dermaline is, in any way, connected to Myra. Myra added
that even if the subject application was under Classification 447 for various skin
treatments, it could still be connected to the "DERMALIN" mark under Classification
DERMALINE, INC., Petitioner,
58 for pharmaceutical products, since ultimately these goods are very closely
vs.
related.
MYRA PHARMACEUTICALS, INC. Respondent.

In its Verified Answer,9 Dermaline countered that a simple comparison of the


DECISION
trademark "DERMALINE DERMALINE, INC." vis-à-vis Myra’s "DERMALIN" trademark
would show that they have entirely different features and distinctive presentation,
NACHURA, J.: thus it cannot result in confusion, mistake or deception on the part of the
purchasing public. Dermaline contended that, in determining if the subject
This is a petition for review on certiorari1 seeking to reverse and set aside the trademarks are confusingly similar, a comparison of the words is not the only
Decision dated August 7, 20092and the Resolution dated October 28, 20093 of the determinant, but their entirety must be considered in relation to the goods to which
Court of Appeals (CA) in CA-G.R. SP No. 108627. they are attached, including the other features appearing in both labels. It claimed
that there were glaring and striking dissimilarities between the two trademarks,
such that its trademark "DERMALINE DERMALINE, INC." speaks for itself (Res ipsa
The antecedent facts and proceedings— loquitur). Dermaline further argued that there could not be any relation between its
trademark for health and beauty services from Myra’s trademark classified under
On October 21, 2006, petitioner Dermaline, Inc. (Dermaline) filed before the medicinal goods against skin disorders.
Intellectual Property Office (IPO) an application for registration of the trademark
"DERMALINE DERMALINE, INC." (Application No. 4-2006011536). The application The parties failed to settle amicably. Consequently, the preliminary conference was
was published for Opposition in the IPO E-Gazette on March 9, 2007. terminated and they were directed to file their respective position papers.10

On May 8, 2007, respondent Myra Pharmaceuticals, Inc. (Myra) filed a Verified On April 10, 2008, the IPO-Bureau of Legal Affairs rendered Decision No. 2008-
Opposition4 alleging that the trademark sought to be registered by Dermaline so 7011 sustaining Myra’s opposition pursuant to Section 123.1(d) of R.A. No. 8293. It
resembles its trademark "DERMALIN" and will likely cause confusion, mistake and disposed—
deception to the purchasing public. Myra said that the registration of Dermaline’s
trademark will violate Section 1235 of Republic Act (R.A.) No. 8293 (Intellectual
Property Code of the Philippines). It further alleged that Dermaline’s use and WHEREFORE, the Verified Opposition is, as it is, hereby SUSTAINED. Consequently,
registration of its applied trademark will diminish the distinctiveness and dilute the Application Serial No. 4-2006-011536 for the mark ‘DERMALINE, DERMALINE, INC.
goodwill of Myra’s "DERMALIN," registered with the IPO way back July 8, 1986, Stylized Wordmark’ for Dermaline, Inc. under class 44 covering the aforementioned
renewed for ten (10) years on July 8, 2006. Myra has been extensively using goods filed on 21 October 2006, is as it is hereby, REJECTED.
"DERMALIN" commercially since October 31, 1977, and said mark is still valid and
subsisting. Let the file wrapper of ‘DERMALINE, DERMALINE, INC. Stylized Wordmark’ subject
matter of this case be forwarded to the Bureau of Trademarks (BOT) for appropriate
Myra claimed that, despite Dermaline’s attempt to differentiate its applied mark, the action in accordance with this Decision.
dominant feature is the term "DERMALINE," which is practically identical with its
own "DERMALIN," more particularly that the first eight (8) letters of the marks are SO ORDERED.12
identical, and that notwithstanding the additional letter "E" by Dermaline, the
pronunciation for both marks are identical. Further, both marks have three (3)
Aggrieved, Dermaline filed a motion for reconsideration, but it was denied under
syllables each, with each syllable identical in sound and appearance, even if the last
Resolution No. 2009-12(D)13dated January 16, 2009.
syllable of "DERMALINE" consisted of four (4) letters while "DERMALIN" consisted
only of three (3).
Expectedly, Dermaline appealed to the Office of the Director General of the IPO.
However, in an Order14 dated April 17, 2009, the appeal was dismissed for being
Myra also pointed out that Dermaline applied for the same mark "DERMALINE" on
filed out of time.
June 3, 2003 and was already refused registration by the IPO. By filing this new
application for registration, Dermaline appears to have engaged in a fishing
expedition for the approval of its mark. Myra argued that its intellectual property Undaunted, Dermaline appealed to the CA, but it affirmed and upheld the Order
right over its trademark is protected under Section 1476 of R.A. No. 8293. dated April 17, 2009 and the rejection of Dermaline’s application for registration of
trademark. The CA likewise denied Dermaline’s motion for reconsideration; hence,
this petition raising the issue of whether the CA erred in upholding the IPO’s
Myra asserted that the mark "DERMALINE DERMALINE, INC." is aurally similar to its
rejection of Dermaline’s application for registration of trademark.
own mark such that the registration and use of Dermaline’s applied mark will enable
it to obtain benefit from Myra’s reputation, goodwill and advertising and will lead the
The petition is without merit. might reasonably be assumed to originate with the registrant of an earlier product,
and the public would then be deceived either into that belief or into the belief that
there is some connection between the two parties, though inexistent.21
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 In rejecting the application of Dermaline for the registration of its mark
others.15 Inarguably, it is an intellectual property deserving protection by law. In "DERMALINE DERMALINE, INC.," the IPO applied the Dominancy Test. It declared
trademark controversies, each case must be scrutinized according to its peculiar that both confusion of goods and service and confusion of business or of origin were
circumstances, such that jurisprudential precedents should only be made to apply if apparent in both trademarks. It also noted that, per Bureau Decision No. 2007-179
they are specifically in point.16 dated December 4, 2007, it already sustained the opposition of Myra involving the
trademark "DERMALINE" of Dermaline under Classification 5. The IPO also upheld
Myra’s right under Section 138 of R.A. No. 8293, which provides that a certification
As Myra correctly posits, as a registered trademark owner, it has the right under
of registration of a mark is prima facie evidence of the validity of the registration,
Section 147 of R.A. No. 8293 to prevent third parties from using a trademark, or
the registrant’s ownership of the mark, and of the registrant’s exclusive right to use
similar signs or containers for goods or services, without its consent, identical or
the same in connection with the goods and those that are related thereto specified
similar to its registered trademark, where such use would result in a likelihood of
in the certificate.
confusion.

We agree with the findings of the IPO. As correctly applied by the IPO in this case,
In determining likelihood of confusion, case law has developed two (2) tests, the
while there are no set rules that can be deduced as what constitutes a dominant
Dominancy Test and the Holistic or Totality Test.
feature with respect to trademarks applied for registration; usually, what are taken
into account are signs, color, design, peculiar shape or name, or some special,
The Dominancy Test focuses on the similarity of the prevalent features of the easily remembered earmarks of the brand that readily attracts and catches the
competing trademarks that might cause confusion or deception.17 It is applied when attention of the ordinary consumer.22
the trademark sought to be registered contains the main, essential and dominant
features of the earlier registered trademark, and confusion or deception is likely to
Dermaline’s insistence that its applied trademark "DERMALINE DERMALINE, INC."
result. Duplication or imitation is not even required; neither is it necessary that the
had differences "too striking to be mistaken" from Myra’s "DERMALIN" cannot,
label of the applied mark for registration should suggest an effort to imitate. The
therefore, be sustained. While it is true that the two marks are presented differently
important issue is whether the use of the marks involved would likely cause
– Dermaline’s mark is written with the first "DERMALINE" in script going diagonally
confusion or mistake in the mind of or deceive the ordinary purchaser, or one who is
upwards from left to right, with an upper case "D" followed by the rest of the letters
accustomed to buy, and therefore to some extent familiar with, the goods in
in lower case, and the portion "DERMALINE, INC." is written in upper case letters,
question.18 Given greater consideration are the aural and visual impressions created
below and smaller than the long-hand portion; while Myra’s mark "DERMALIN" is
by the marks in the public mind, giving little weight to factors like prices, quality,
written in an upright font, with a capital "D" and followed by lower case letters – the
sales outlets, and market segments.19 The test of dominancy is now explicitly
likelihood of confusion is still apparent. This is because they are almost spelled in
incorporated into law in Section 155.1 of R.A. No. 8293 which provides—
the same way, except for Dermaline’s mark which ends with the letter "E," and they
are pronounced practically in the same manner in three (3) syllables, with the
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation ending letter "E" in Dermaline’s mark pronounced silently. Thus, when an ordinary
of a registered mark or the same container or a dominant feature thereof in purchaser, for example, hears an advertisement of Dermaline’s applied trademark
connection with the sale, offering for sale, distribution, advertising of any goods or over the radio, chances are he will associate it with Myra’s registered mark.
services including other preparatory steps necessary to carry out the sale of any
goods or services on or in connection with which such use is likely to cause
Further, Dermaline’s stance that its product belongs to a separate and different
confusion, or to cause mistake, or to deceive; (emphasis supplied)
classification from Myra’s products with the registered trademark does not eradicate
the possibility of mistake on the part of the purchasing public to associate the
On the other hand, the Holistic Test entails a consideration of the entirety of the former with the latter, especially considering that both classifications pertain to
marks as applied to the products, including labels and packaging, in determining treatments for the skin.1avvphi1
confusing similarity. The scrutinizing eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels so that a
Indeed, the registered trademark owner may use its mark on the same or similar
conclusion may be drawn as to whether one is confusingly similar to the other.20
products, in different segments of the market, and at different price levels
depending on variations of the products for specific segments of the market. The
Relative to the question on confusion of marks and trade names, jurisprudence has Court is cognizant that the registered trademark owner enjoys protection in product
noted two (2) types of confusion, viz: (1) confusion of goods (product confusion), and market areas that are the normal potential expansion of his business. Thus, we
where the ordinarily prudent purchaser would be induced to purchase one product have held –
in the belief that he was purchasing the other; and (2) confusion of business
(source or origin confusion), where, although the goods of the parties are different,
the product, the mark of which registration is applied for by one party, is such as
Modern law recognizes that the protection to which the owner of a trademark is
entitled is not limited to guarding his goods or business from actual market
competition with identical or similar products of the parties, but extends to all cases
in which the use by a junior appropriator of a trade-mark or trade-name is likely to
lead to a confusion of source, as where prospective purchasers would be misled into
thinking that the complaining party has extended his business into the field (see
148 ALR 56 et seq; 53 Am Jur. 576) or is in any way connected with the activities of
the infringer; or when it forestalls the normal potential expansion of his business (v.
148 ALR 77, 84; 52 Am. Jur. 576, 577).23 (Emphasis supplied)

Thus, the public may mistakenly think that Dermaline is connected to or associated
with Myra, such that, considering the current proliferation of health and beauty
products in the market, the purchasers would likely be misled that Myra has already
expanded its business through Dermaline from merely carrying pharmaceutical
topical applications for the skin to health and beauty services.

Verily, when one applies for the registration of a trademark or label which is almost
the same or that very closely resembles one already used and registered by
another, the application should be rejected and dismissed outright, even without
any opposition on the part of the owner and user of a previously registered label or
trademark. This is intended not only to avoid confusion on the part of the public, but
also to protect an already used and registered trademark and an established
goodwill.24

Besides, the issue on protection of intellectual property, such as trademarks, is


factual in nature. The findings of the IPO, upheld on appeal by the same office, and
further sustained by the CA, bear great weight and deserves respect from this
Court. Moreover, the decision of the IPO had already attained finality when
Dermaline failed to timely file its appeal with the IPO Office of the Director General.

WHEREFORE, the petition is DENIED. The Decision dated August 7, 2009 and the
Resolution dated October 28, 2009 of the Court of Appeals in CA-G.R. SP No.
108627 are AFFIRMED. Costs against petitioner.

SO ORDERED.
G.R. No. 185830 June 5, 2013 During the pendency of the proceedings, Cointreau was issued Certificates of
Registration Nos. 60631 and 54352 for the marks "CORDON BLEU & DEVICE" and
"LE CORDON BLEU PARIS 1895 & DEVICE" for goods and services under classes 21
ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES),
and 41 of the Nice Classification, respectively.7
INC., Petitioner,
vs.
RENAUD COINTREAU & CIE and LE CORDON BLEU INT'L., B.V., Respondents. The Ruling of the Bureau of Legal Affairs

DECISION In its Decision8 dated July 31, 2006, the Bureau of Legal Affairs (BLA) of the IPO
sustained Ecole’s opposition to the subject mark, necessarily resulting in the
rejection of Cointreau’s application.9 While noting the certificates of registration
PERLAS-BERNABE, J.:
obtained from other countries and other pertinent materials showing the use of the
subject mark outside the Philippines, the BLA did not find such evidence sufficient to
Assailed in this petition for review on certiorari1 is the December 23, 2008 establishCointreau’s claim of prior use of the same in the Philippines. It emphasized
Decision2 of the Court of Appeals (CA) in CA-G.R. SP No. 104672 which affirmed in that the adoption and use of trademark must be in commerce in the Philippines and
toto the Intellectual Property Office (IPO) Director General’s April 21, 2008 not abroad. It then concluded that Cointreau has not established any proprietary
Decision3 that declared respondent Renaud Cointreau & Cie (Cointreau) as the true right entitled to protection in the Philippine jurisdiction because the law on
and lawful owner of the mark "LE CORDON BLEU & DEVICE" and thus, is entitled to trademarks rests upon the doctrine of nationality or territoriality.10
register the same under its name.
On the other hand, the BLA found that the subject mark, which was the predecessor
The Facts of the mark "LE CORDON BLEU MANILLE" has been known and used in the
Philippines since 1948 and registered under the name "ECOLE DE CUISINE MANILLE
On June 21, 1990, Cointreau, a partnership registered under the laws of France, (THE CORDON BLEU OF THE PHILIPPINES), INC." on May 9, 1980.11
filed before the (now defunct) Bureau of Patents, Trademarks, and Technology
Transfer (BPTTT) of the Department of Trade and Industry a trademark application Aggrieved, Cointreau filed an appeal with the IPO Director General.
for the mark "LE CORDON BLEU & DEVICE" for goods falling under classes 8, 9, 16,
21, 24, 25, 29, and 30 of the International Classification of Goods and Services for
The Ruling of the IPO Director General
the Purposes of Registrations of Marks ("Nice Classification") (subject mark). The
application was filed pursuant to Section 37 of Republic Act No. 166, as amended
(R.A. No. 166), on the basis of Home Registration No. 1,390,912, issued on In his Decision dated April 21, 2008, the IPO Director General reversed and set
November 25, 1986 in France. Bearing Serial No. 72264, such application was aside the BLA’s decision, thus, granting Cointreau’s appeal and allowing the
published for opposition in the March-April 1993 issue of the BPTTT Gazette and registration of the subject mark.12 He held that while Section 2 of R.A. No. 166
released for circulation on May 31, 1993.4 requires actual use of the subject mark in commerce in the Philippines for at least
two (2) months before the filing date of the application, only the owner thereof has
the right to register the same, explaining that the user of a mark in the Philippines
On July 23, 1993, petitioner Ecole De Cuisine Manille, Inc. (Ecole) filed an
is not ipso facto its owner. Moreover, Section 2-A of the same law does not require
opposition to the subject application, averring that: (a) it is the owner of the mark
actual use in the Philippines to be able to acquire ownership of a mark.13
"LE CORDON BLEU, ECOLE DE CUISINE MANILLE," which it has been using since
1948 in cooking and other culinary activities, including in its restaurant business;
and (b) it has earned immense and invaluable goodwill such that Cointreau’s use of In resolving the issue of ownership and right to register the subject mark in favor of
the subject mark will actually create confusion, mistake, and deception to the Cointreau, he considered Cointreau’s undisputed use of such mark since 1895 for its
buying public as to the origin and sponsorship of the goods, and cause great and culinary school in Paris, France (in which petitioner’s own directress, Ms. Lourdes L.
irreparable injury and damage to Ecole’s business reputation and goodwill as a Dayrit, had trained in 1977). Contrarily, he found that while Ecole may have prior
senior user of the same.5 use of the subject mark in the Philippines since 1948, it failed to explain how it
came up with such name and mark. The IPO Director General therefore concluded
that Ecole has unjustly appropriated the subject mark, rendering it beyond the
On October 7, 1993, Cointreau filed its answer claiming to be the true and lawful
mantle of protection of Section 4(d)14 of R.A. No. 166.15
owner of the subject mark. It averred that: (a) it has filed applications for the
subject mark’s registration in various jurisdictions, including the Philippines; (b) Le
Cordon Bleu is a culinary school of worldwide acclaim which was established in Finding the IPO Director General’s reversal of the BLA’s Decision unacceptable,
Paris, France in 1895; (c) Le Cordon Bleu was the first cooking school to have set Ecole filed a Petition for Review16dated June 7, 2008 with the CA.
the standard for the teaching of classical French cuisine and pastry making; and (d)
it has trained students from more than eighty (80) nationalities, including Ecole’s
Ruling of the CA
directress, Ms. Lourdes L. Dayrit. Thus, Cointreau concluded that Ecole’s claim of
being the exclusive owner of the subject mark is a fraudulent misrepresentation.6
In its Decision dated December 23, 2008, the CA affirmed the IPO Director Nevertheless, foreign marks which are not registered are still accorded protection
General’s Decision in toto.17 It declared Cointreau as the true and actual owner of against infringement and/or unfair competition. At this point, it is worthy to
the subject mark with a right to register the same in the Philippines under Section emphasize that the Philippines and France, Cointreau’s country of origin, are both
37 of R.A. No. 166, having registered such mark in its country of origin on signatories to the Paris Convention for the Protection of Industrial Property (Paris
November 25, 1986.18 Convention).23Articles 6bis and 8 of the Paris Convention state:

The CA likewise held that Cointreau’s right to register the subject mark cannot be ARTICLE 6bis
barred by Ecole’s prior use thereof as early as 1948 for its culinary school "LE
CORDON BLEU MANILLE" in the Philippines because its appropriation of the mark
(1) The countries of the Union undertake, ex officio if their legislation so permits, or
was done in bad faith. Further, Ecole had no certificate of registration that would
at the request of an interested party, to refuse or to cancel the registration, and to
put Cointreau on notice that the former had appropriated or has been using the
prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a
subject mark. In fact, its application for trademark registration for the same which
translation, liable to create confusion, of a mark considered by the competent
was just filed on February 24, 1992 is still pending with the IPO.19
authority of the country of registration or use to be well known in that country as
being already the mark of a person entitled to the benefits of this Convention and
Hence, this petition. used for identical or similar goods.1âwphi1 These provisions shall also apply when
the essential part of the mark constitutes a reproduction of any such well-known
mark or an imitation liable to create confusion therewith.
Issues Before the Court

ARTICLE 8
The sole issue raised for the Court’s resolution is whether the CA was correct in
upholding the IPO Director General’s ruling that Cointreau is the true and lawful
owner of the subject mark and thus, entitled to have the same registered under its A trade name shall be protected in all the countries of the Union without the
name. obligation of filing or registration, whether or not it forms part of a trademark.
(Emphasis and underscoring supplied)
At this point, it should be noted that the instant case shall be resolved under the
provisions of the old Trademark Law, R.A. No. 166, which was the law in force at In this regard, Section 37 of R.A. No. 166 incorporated Article 8 of the Paris
the time of Cointreau’s application for registration of the subject mark. Convention, to wit:

The Court’s Ruling Section 37. Rights of foreign registrants. - Persons who are nationals of, domiciled
in, or have a bona fide or effective business or commercial establishment in any
foreign country, which is a party to any international convention or treaty relating to
The petition is without merit.
marks or trade-names, or the repression of unfair competition to which the
Philippines may be a party, shall be entitled to the benefits and subject to the
In the petition, Ecole argues that it is the rightful owner of the subject mark, provisions of this Act to the extent and under the conditions essential to give effect
considering that it was the first entity that used the same in the Philippines. Hence, to any such convention and treaties so long as the Philippines shall continue to be a
it is the one entitled to its registration and not Cointreau. party thereto, except as provided in the following paragraphs of this section.

Petitioner’s argument is untenable. xxxx

Under Section 220 of R.A. No. 166, in order to register a trademark, one must be the Trade-names of persons described in the first paragraph of this section shall be
owner thereof and must have actually used the mark in commerce in the Philippines protected without the obligation of filing or registration whether or not they form
for two (2) months prior to the application for registration. Section 2-A21 of the parts of marks.
same law sets out to define how one goes about acquiring ownership thereof. Under
Section 2-A, it is clear that actual use in commerce is also the test of ownership but
xxxx
the provision went further by saying that the mark must not have been so
appropriated by another. Additionally, it is significant to note that Section 2-A does
not require that the actual use of a trademark must be within the Philippines. Thus, In view of the foregoing obligations under the Paris Convention, the Philippines is
as correctly mentioned by the CA, under R.A. No. 166, one may be an owner of a obligated to assure nationals of the signatory-countries that they are afforded an
mark due to its actual use but may not yet have the right to register such effective protection against violation of their intellectual property rights in the
ownership here due to the owner’s failure to use the same in the Philippines for two Philippines in the same way that their own countries are obligated to accord similar
(2) months prior to registration.22 protection to Philippine nationals.24 "Thus, under Philippine law, a trade name of a
national of a State that is a party to the Paris Convention, whether or not the trade
name forms part of a trademark, is protected "without the obligation of filing or
registration.’"25

In the instant case, it is undisputed that Cointreau has been using the subject mark
in France since 1895, prior to Ecole’s averred first use of the same in the Philippines
in 1948, of which the latter was fully aware thereof. In fact, Ecole’s present
directress, Ms. Lourdes L. Dayrit (and even its foundress, Pat Limjuco Dayrit), had
trained in Cointreau’s Le Cordon Bleu culinary school in Paris, France. Cointreau was
likewise the first registrant of the said mark under various classes, both abroad and
in the Philippines, having secured Home Registration No. 1,390,912 dated
November 25, 1986 from its country of origin, as well as several trademark
registrations in the Philippines.26

On the other hand, Ecole has no certificate of registration over the subject mark but
only a pending application covering services limited to Class 41 of the Nice
Classification, referring to the operation of a culinary school. Its application was filed
only on February 24, 1992, or after Cointreau filed its trademark application for
goods and services falling under different classes in 1990. Under the foregoing
circumstances, even if Ecole was the first to use the mark in the Philippines, it
cannot be said to have validly appropriated the same.

It is thus clear that at the time Ecole started using the subject mark, the same was
already being used by Cointreau, albeit abroad, of which Ecole’s directress was fully
aware, being an alumna of the latter’s culinary school in Paris, France. Hence, Ecole
cannot claim any tinge of ownership whatsoever over the subject mark as Cointreau
is the true and lawful owner thereof. As such, the IPO Director General and the CA
were correct in declaring Cointreau as the true and lawful owner of the subject mark
and as such, is entitled to have the same registered under its name.

In any case, the present law on trademarks, Republic Act No. 8293, otherwise
known as the Intellectual Property Code of the Philippines, as amended, has already
dispensed with the requirement of prior actual use at the time of
registration.27 Thus, there is more reason to allow the registration of the subject
mark under the name of Cointreau as its true and lawful owner.

As a final note, "the function of a trademark is to point out distinctly the origin or
ownership of the goods (or services) to which it is affixed; to secure to him, who
has been instrumental in bringing into the market a superior article of merchandise,
the fruit of his industry and skill; to assure the public that they are procuring the
genuine article; to prevent fraud and imposition; and to protect the manufacturer
against substitution and sale of an inferior and different article as his product." 28 As
such, courts will protect trade names or marks, although not registered or properly
selected as trademarks, on the broad ground of enforcing justice and protecting one
in the fruits of his toil.29

WHEREFORE, the petition is DENIED. Accordingly, the December 23, 2008 Decision
of the Court of Appeals in CA-G.R. SP No. 104672 is hereby AFFIRMED in toto.

SO ORDERED.
G.R. No. 194307 November 20, 2013 Philippines for more than 16 years through the mark "BIRKENSTOCK AND DEVICE";
(b) the marks covered by the subject applications are identical to the one covered
by Registration No. 56334 and thus, petitioner has no right to the registration of
BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly BIRKENSTOCK
such marks; (c) on November 15, 1991, respondent’s predecessor-in-interest
ORTHOPAEDIE GMBH),Petitioner,
likewise obtained a Certificate of Copyright Registration No. 0-11193 for the word
vs.
"BIRKENSTOCK" ; (d) while respondent and its predecessor-in-interest failed to file
PHILIPPINE SHOE EXPO MARKETING CORPORATION, Respondent.
the 10th Yea r DAU, it continued the use of "BIRKENSTOCK AND DEVICE" in lawful
commerce; and (e) to record its continued ownership and exclusive right to use the
DECISION "BIRKENSTOCK" marks, it has filed TASN 4-2006-010273 as a " re-application " of
its old registration, Registration No. 56334.13 On November 13, 2007, the Bureau of
PERLAS-BERNABE, J.: Legal Affairs (BLA) of the IPO issued Order No. 2007-2051 consolidating the
aforesaid inter partes cases (Consolidated Opposition Cases).14

Assailed in this Petition for Review on Certiorari1 are the Court of Appeals (CA)
Decision2 dated June 25, 2010 and Resolution3 dated October 27, 2010 in CA-G.R. The Ruling of the BLA
SP No. 112278 which reversed and set aside the Intellectual Property Office (IPO)
Director General’s Decision4 dated December 22, 2009 that allowed the registration In its Decision15 dated May 28, 2008, the BLA of the IPO sustained respondent’s
of various trademarks in favor of petitioner Birkenstock Orthopaedie GmbH & Co. opposition, thus, ordering the rejection of the subject applications. It ruled that the
KG. competing marks of the parties are confusingly similar since they contained the
word "BIRKENSTOCK" and are used on the same and related goods. It found
The Facts respondent and its predecessor-in-interest as the prior user and adopter of
"BIRKENSTOCK" in the Philippines, while on the other hand, petitioner failed to
present evidence of actual use in the trade and business in this country. It opined
Petitioner, a corporation duly organized and existing under the laws of Germany, that while Registration No. 56334 was cancelled, it does not follow that prior right
applied for various trademark registrations before the IPO, namely: (a) over the mark was lost, as proof of continuous and uninterrupted use in trade and
"BIRKENSTOCK" under Trademark Application Serial No. (TASN) 4-1994-091508 for business in the Philippines was presented. The BLA likewise opined that petitioner’s
goods falling under Class 25 of the International Classification of Goods and marks are not well -known in the Philippines and internationally and that the various
Services (Nice Classification) with filing date of March 11, 1994; (b) "BIRKENSTOCK certificates of registration submitted by petitioners were all photocopies and,
BAD HONNEF -RHEIN & DEVICE COMPRISING OF ROUND COMPANY SEAL AND therefore, not admissible as evidence.16
REPRESENTATION OF A FOOT, CROSS AND SUNBEA M" under TASN 4-1994-091509
for goods falling under Class 25 of the Nice Classification with filing date of March
11, 1994; and (c) "BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE COMPRISING OF Aggrieved, petitioner appealed to the IPO Director General.
ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT, CROSS AND SUNBEAM"
under TASN 4-1994-095043 for goods falling under Class 10 of the Nice The Ruling of the IPO Director General
Classification with filing date of September 5, 1994 (subject applications).5
In his Decision17 dated December 22, 2009, the IPO Director General reversed and
However, registration proceedings of the subject applications were suspended in set aside the ruling of the BLA, thus allowing the registration of the subject
view of an existing registration of the mark "BIRKENSTOCK AND DEVICE" under applications. He held that with the cancellation of Registration No. 56334 for
Registration No. 56334 dated October 21, 1993 (Registration No. 56334) in the respondent’s failure to file the 10th Year DAU, there is no more reason to reject the
name of Shoe Town International and Industrial Corporation, the predecessor-in- subject applications on the ground of prior registration by another proprietor.18 More
interest of respondent Philippine Shoe Expo Marketing Corporation.6 In this regard, importantly, he found that the evidence presented proved that petitioner is the true
on May 27, 1997 petitioner filed a petition for cancellation of Registration No. 56334 and lawful owner and prior user of "BIRKENSTOCK" marks and thus, entitled to the
on the ground that it is the lawful and rightful owner of the Birkenstock marks registration of the marks covered by the subject applications.19 The IPO Director
(Cancellation Case).7 During its pendency, however, respondent and/or its General further held that respondent’s copyright for the word "BIRKENSTOCK" is of
predecessor-in-interest failed to file the required 10th Year Declaration of Actual no moment since copyright and trademark are different forms of intellectual
Use (10th Year DAU) for Registration No. 56334 on or before October 21, property that cannot be interchanged.20
2004,8 thereby resulting in the cancellation of such mark.9 Accordingly, the
cancellation case was dismissed for being moot and academic.10
Finding the IPO Director General’s reversal of the BLA unacceptable, respondent
filed a petition for review with the CA.
The aforesaid cancellation of Registration No. 56334 paved the way for the
publication of the subject applications in the IPO e-Gazette on February 2,
Ruling of the CA
2007.11 In response, respondent filed three (3) separate verified notices of
oppositions to the subject applications docketed as Inter Partes Case Nos. 14-2007-
00108, 14-2007-00115, and 14-2007-00116,12 claiming, inter alia, that: (a) it, In its Decision21 dated June 25, 2010, the CA reversed and set aside the ruling of
together with its predecessor-in-interest, has been using Birkenstock marks in the the IPO Director General and reinstated that of the BLA. It disallowed the
registration of the subject applications on the ground that the marks covered by technical rules of procedure.32 On this score, Section 5 of the Rules on Inter Partes
such applications "are confusingly similar, if not outright identical" with respondent’s Proceedings provides:
mark.22 It equally held that respondent’s failure to file the 10th Year DAU for
Registration No. 56334 "did not deprive petitioner of its ownership of the
Sec. 5. Rules of Procedure to be followed in the conduct of hearing of Inter Partes
‘BIRKENSTOCK’ mark since it has submitted substantial evidence showing its
cases. – The rules of procedure herein contained primarily apply in the conduct of
continued use, promotion and advertisement thereof up to the present."23 It opined
hearing of Inter Partes cases. The Rules of Court may be applied suppletorily. The
that when respondent’s predecessor-in-interest adopted and started its actual use
Bureau shall not be bound by strict technical rules of procedure and evidence but
of "BIRKENSTOCK," there is neither an existing registration nor a pending
may adopt, in the absence of any applicable rule herein, such mode of proceedings
application for the same and thus, it cannot be said that it acted in bad faith in
which is consistent with the requirements of fair play and conducive to the just,
adopting and starting the use of such mark.24 Finally, the CA agreed with
speedy and inexpensive disposition of cases, and which will give the Bureau the
respondent that petitioner’s documentary evidence, being mere photocopies, were
greatest possibility to focus on the contentious issues before it. (Emphasis and
submitted in violation of Section 8.1 of Office Order No. 79, Series of 2005 (Rules
underscoring supplied)
on Inter Partes Proceedings).

In the case at bar, while petitioner submitted mere photocopies as documentary


Dissatisfied, petitioner filed a Motion for Reconsideration25 dated July 20, 2010,
evidence in the Consolidated Opposition Cases, it should be noted that the IPO had
which was, however, denied in a Resolution26 dated October 27, 2010. Hence, this
already obtained the originals of such documentary evidence in the related
petition.27
Cancellation Case earlier filed before it. Under this circumstance and the merits of
the instant case as will be subsequently discussed, the Court holds that the IPO
Issues Before the Court Director General’s relaxation of procedure was a valid exercise of his discretion in
the interest of substantial justice.33
The primordial issue raised for the Court’s resolution is whether or not the subject
marks should be allowed registration in the name of petitioner. Having settled the foregoing procedural matter, the Court now proceeds to resolve
the substantive issues.
The Court’s Ruling
B. Registration and ownership of "BIRKENSTOCK."
The petition is meritorious.
Republic Act No. (RA) 166,34 the governing law for Registration No. 56334, requires
the filing of a DAU on specified periods,35 to wit:
A. Admissibility of Petitioner’s Documentary Evidence.

Section 12. Duration. – Each certificate of registration shall remain in force for
In its Comment28 dated April 29, 2011, respondent asserts that the documentary
twenty years: Provided, That registrations under the provisions of this Act shall be
evidence submitted by petitioner in the Consolidated Opposition Cases, which are
cancelled by the Director, unless within one year following the fifth, tenth and
mere photocopies, are violative of Section 8.1 of the Rules on Inter Partes
fifteenth anniversaries of the date of issue of the certificate of registration, the
Proceedings, which requires certified true copies of documents and evidence
registrant shall file in the Patent Office an affidavit showing that the mark or trade-
presented by parties in lieu of originals.29 As such, they should be deemed
name is still in use or showing that its non-use is due to special circumstance which
inadmissible.
excuse such non-use and is not due to any intention to abandon the same, and pay
the required fee.
The Court is not convinced.
The Director shall notify the registrant who files the above- prescribed affidavits of
It is well-settled that "the rules of procedure are mere tools aimed at facilitating the his acceptance or refusal thereof and, if a refusal, the reasons therefor. (Emphasis
attainment of justice, rather than its frustration. A strict and rigid application of the and underscoring supplied)
rules must always be eschewed when it would subvert the primary objective of the
rules, that is, to enhance fair trials and expedite justice. Technicalities should never
The aforementioned provision clearly reveals that failure to file the DAU within the
be used to defeat the substantive rights of the other party. Every party-litigant
requisite period results in the automatic cancellation of registration of a trademark.
must be afforded the amplest opportunity for the proper and just determination of
In turn, such failure is tantamount to the abandonment or withdrawal of any right
his cause, free from the constraints of technicalities."30"Indeed, the primordial policy
or interest the registrant has over his trademark.36
is a faithful observance of [procedural rules], and their relaxation or suspension
should only be for persuasive reasons and only in meritorious cases, to relieve a
litigant of an injustice not commensurate with the degree of his thoughtlessness in In this case, respondent admitted that it failed to file the 10th Year DAU for
not complying with the procedure prescribed."31 This is especially true with quasi- Registration No. 56334 within the requisite period, or on or before October 21,
judicial and administrative bodies, such as the IPO, which are not bound by 2004. As a consequence, it was deemed to have abandoned or withdrawn any right
or interest over the mark "BIRKENSTOCK." Neither can it invoke Section 23637 of
the IP Code which pertains to intellectual property rights obtained under previous In the instant case, petitioner was able to establish that it is the owner of the mark
intellectual property laws, e.g., RA 166, precisely because it already lost any right "BIRKENSTOCK." It submitted evidence relating to the origin and history of
or interest over the said mark. "BIRKENSTOCK" and its use in commerce long before respondent was able to
register the same here in the Philippines. It has sufficiently proven that
"BIRKENSTOCK" was first adopted in Europe in 1774 by its inventor, Johann
Besides, petitioner has duly established its true and lawful ownership of the mark
Birkenstock, a shoemaker, on his line of quality footwear and thereafter, numerous
"BIRKENSTOCK."
generations of his kin continuously engaged in the manufacture and sale of shoes
and sandals bearing the mark "BIRKENSTOCK" until it became the entity now known
Under Section 238 of RA 166, which is also the law governing the subject as the petitioner. Petitioner also submitted various certificates of registration of the
applications, in order to register a trademark, one must be the owner thereof and mark "BIRKENSTOCK" in various countries and that it has used such mark in
must have actually used the mark in commerce in the Philippines for two (2) different countries worldwide, including the Philippines.44
months prior to the application for registration. Section 2-A39 of the same law sets
out to define how one goes about acquiring ownership thereof. Under the same
On the other hand, aside from Registration No. 56334 which had been cancelled,
section, it is clear that actual use in commerce is also the test of ownership but the
respondent only presented copies of sales invoices and advertisements, which are
provision went further by saying that the mark must not have been so appropriated
not conclusive evidence of its claim of ownership of the mark "BIRKENSTOCK" as
by another. Significantly, to be an owner, Section 2-A does not require that the
these merely show the transactions made by respondent involving the same.45
actual use of a trademark must be within the Philippines. Thus, under RA 166, one
may be an owner of a mark due to its actual use but may not yet have the right to
register such ownership here due to the owner’s failure to use the same in the In view of the foregoing circumstances, the Court finds the petitioner to be the true
Philippines for two (2) months prior to registration.40 and lawful owner of the mark "BIRKENSTOCK" and entitled to its registration, and
that respondent was in bad faith in having it registered in its name. In this regard,
the Court quotes with approval the words of the IPO Director General, viz.:
It must be emphasized that registration of a trademark, by itself, is not a mode of
acquiring ownership.1âwphi1 If the applicant is not the owner of the trademark, he
has no right to apply for its registration. Registration merely creates a prima facie The facts and evidence fail to show that [respondent] was in good faith in using and
presumption of the validity of the registration, of the registrant’s ownership of the in registering the mark BIRKENSTOCK. BIRKENSTOCK, obviously of German origin,
trademark, and of the exclusive right to the use thereof. Such presumption, just like is a highly distinct and arbitrary mark. It is very remote that two persons did coin
the presumptive regularity in the performance of official functions, is rebuttable and the same or identical marks. To come up with a highly distinct and uncommon mark
must give way to evidence to the contrary.41 previously appropriated by another, for use in the same line of business, and
without any plausible explanation, is incredible. The field from which a person may
select a trademark is practically unlimited. As in all other cases of colorable
Clearly, it is not the application or registration of a trademark that vests ownership
imitations, the unanswered riddle is why, of the millions of terms and combinations
thereof, but it is the ownership of a trademark that confers the right to register the
of letters and designs available, [respondent] had to come up with a mark identical
same. A trademark is an industrial property over which its owner is entitled to
or so closely similar to the [petitioner’s] if there was no intent to take advantage of
property rights which cannot be appropriated by unscrupulous entities that, in one
the goodwill generated by the [petitioner’s] mark. Being on the same line of
way or another, happen to register such trademark ahead of its true and lawful
business, it is highly probable that the [respondent] knew of the existence of
owner. The presumption of ownership accorded to a registrant must then
BIRKENSTOCK and its use by the [petitioner], before [respondent] appropriated the
necessarily yield to superior evidence of actual and real ownership of a trademark.
same mark and had it registered in its name.46

The Court’s pronouncement in Berris Agricultural Co., Inc. v. Abyadang42 is


WHEREFORE, the petition is GRANTED. The Decision dated June 25, 2010 and
instructive on this point:
Resolution dated October 27, 2010 of the Court of Appeals in CA-G.R. SP No.
112278 are REVERSED and SET ASIDE. Accordingly, the Decision dated December
The ownership of a trademark is acquired by its registration and its actual use by 22, 2009 of the IPO Director General is hereby REINSTATED.
the manufacturer or distributor of the goods made available to the purchasing
public. x x x A certificate of registration of a mark, once issued, constitutes prima
SO ORDERED.
facie evidence of the validity of the registration, of the registrant’s ownership of the
mark, and of the registrant’s exclusive right to use the same in connection with the
goods or services and those that are related thereto specified in the certificate. x x x
In other words, the prima facie presumption brought about by the registration of a
mark may be challenged and overcome in an appropriate action, x x x by evidence
of prior use by another person, i.e. , it will controvert a claim of legal appropriation
or of ownership based on registration by a subsequent user. This is because a
trademark is a creation of use and belongs to one who first used it in trade or
commerce.43 (Emphasis and underscoring supplied)
G.R. No. 190706 July 21, 2014 and that petitioners’ use of the marks "THE ST. FRANCIS TOWERS" and "THE ST.
FRANCIS SHANGRI-LA PLACE" in their own real estate development projects
constitutes unfair competition as well as false or fraudulent declaration.6
SHANG PROPERTIES REALTY CORPORATION (formerly THE SHANG GRAND
TOWER CORPORATION) and SHANG PROPERTIES, INC. (formerly EDSA
PROPERTIES HOLDINGS, INC.), Petitioners, Petitioners denied committing unfair competition and false or fraudulent declaration,
vs. maintaining that they could register the mark "THE ST. FRANCIS TOWERS" and
ST. FRANCIS DEVELOPMENT CORPORATION, Respondent. "THE ST. FRANCIS SHANGRI-LA PLACE" under their names. They contended that
respondent is barred from claiming ownership and exclusive use ofthe mark "ST.
FRANCIS" because the same is geographically descriptive ofthe goods or services
DECISION
for which it is intended to be used.7 This is because respondent’s as well as
petitioners’ real estate development projects are locatedalong the streets bearing
PERLAS-BERNABE, J.: the name "St. Francis," particularly, St. FrancisAvenue and St. Francis Street (now
known as Bank Drive),8 both within the vicinity of the Ortigas Center.
Assailed in this petition for review on certiorari1 is the Decision2 dated December 18,
2009 of the Court of Appeals (CA) in CA-G.R. SP No. 105425 which affirmed with The BLA Rulings
modification the Decision3 dated September 3, 2008 of the Intellectual Property
Office (IPO) Director-General. The CA: (a) affirmed the denial of the application for
On December 19, 2006, the BLA rendered a Decision9 in the IPV Case, and found
registration of the mark "ST. FRANCIS TOWERS" filed by petitioners Shang
that petitioners committed acts of unfair competition against respondent by its use
Properties Realty Corporation and Shang Properties, Inc. (petitioners); ( b) found
of the mark "THE ST. FRANCIS TOWERS" but not with its use of the mark "THE ST.
petitioners to have committed unfair competition for using the marks "THE ST.
FRANCIS SHANGRI-LA PLACE." It, however, refused to award damages in the
FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE"; (c) ordered
latter’s favor, considering that there was no evidence presented to substantiate the
petitioners to cease and desist from using "ST. FRANCIS" singly or as part of a
amount of damages it suffered due to the former’s acts. The BLA found that "ST.
composite mark; and (d) ordered petitioners to jointly and severally pay respondent
FRANCIS," being a name of a Catholic saint, may be considered as an arbitrary
St. Francis Square Development Corporation (respondent) a fine in the amount of
mark capable of registration when used in real estate development projects as the
₱200,000.00.
name has no direct connection or significance when used in association with real
estate. The BLA neither deemed "ST. FRANCIS" as a geographically descriptive
The Facts mark, opiningthat there is no specific lifestyle, aura, quality or characteristic that
the real estate projects possess except for the fact that they are located along St.
Respondent – a domestic corporation engaged in the real estate business and the Francis Avenueand St. Francis Street (now known as Bank Drive), Ortigas Center. In
developer of the St. Francis Square Commercial Center, built sometime in 1992, this light, the BLA found that while respondent’s use of the mark "ST. FRANCIS" has
located at Ortigas Center, Mandaluyong City, Metro Manila (Ortigas Center)4 – filed not attained exclusivity considering that there are other real estate development
separate complaints against petitioners before the IPO - Bureau of Legal Affairs projects bearing the name "St. Francis" in other areas,10 it must nevertheless be
(BLA), namely: (a) an intellectual property violation case for unfair competition, pointed out that respondent has been known to be the only real estate firm to
false or fraudulent declaration, and damages arising from petitioners’ use and filing transact business using such name within the Ortigas Center vicinity. Accordingly,
of applications for the registration of the marks "THE ST. FRANCIS TOWERS" and the BLA considered respondent to have gained goodwill and reputation for its mark,
"THE ST. FRANCIS SHANGRI-LA PLACE," docketed as IPV Case No. 10-2005-00030 which therefore entitles it to protection against the use by other persons, at least,
(IPV Case); and (b) an inter partes case opposing the petitioners’ application for to those doing business within the Ortigas Center.11
registration of the mark "THE ST. FRANCIS TOWERS" for use relative to the latter’s
business, particularly the construction of permanent buildings or structures for Meanwhile, on March 28, 2007, the BLA rendered a Decision12 in the St. Francis
residential and office purposes, docketed as Inter PartesCase No. 14-2006-00098 Towers IP Case, denying petitioners’ application for registration of the mark "THE
(St. Francis Towers IP Case); and (c) an inter partes case opposing the petitioners’ ST. FRANCIS TOWERS." Excluding the word "TOWERS" in view of petitioners’
application for registration of the mark "THE ST. FRANCIS SHANGRI-LA PLACE," disclaimer thereof, the BLA ruled that petitioners cannot register the mark "THE ST.
docketed as IPC No. 14-2007-00218 (St. Francis Shangri-La IP Case).5 FRANCIS" since it is confusingly similar to respondent’s"ST. FRANCIS" marks which
are registered with the Department of Trade and Industry(DTI). It held that
In its complaints, respondent alleged that it has used the mark "ST. FRANCIS" to respondent had a better right over the use of the mark "ST. FRANCIS" because of
identify its numerous property development projects located at Ortigas Center, such the latter’s appropriation and continuous usage thereof for a long period of time.13 A
as the aforementioned St. Francis Square Commercial Center, a shopping mall little over a year after, or on March 31, 2008, the BLA then rendered a Decision14 in
called the "St. Francis Square," and a mixed-use realty project plan thatincludes the the St. Francis Shangri-La IP Case, allowing petitioners’ application for registration
St. Francis Towers. Respondent added that as a result of its continuous use of the of the mark "THE ST. FRANCIS SHANGRI-LA PLACE." It found that respondent
mark "ST. FRANCIS" in its real estate business,it has gained substantial goodwill cannot preclude petitioners from using the mark "ST. FRANCIS" as the records show
with the public that consumers and traders closely identify the said mark with its that the former’s use thereof had not been attended with exclusivity. More
property development projects. Accordingly, respondent claimed that petitioners importantly, it found that petitioners had adequately appended the word "Shangri-
could not have the mark "THE ST. FRANCIS TOWERS" registered in their names, La" to its composite mark to distinguish it from that of respondent, in which case,
the former had removed any likelihood of confusion that may arise from the The CA did not adhere to the IPO Director-General’s finding that the mark "ST.
contemporaneous use by both parties of the mark "ST. FRANCIS." FRANCIS" is geographically descriptive, and ruled that respondent – which has
exclusively and continuously used the mark "ST. FRANCIS" for more than a decade,
and,hence, gained substantial goodwill and reputation thereby – is very
Both parties appealed the decision in the IPV Case, while petitioners appealed the
muchentitled to be protected against the indiscriminate usage by other companies
decision in the St. Francis Towers IP Case. Due to the identity of the parties and
of the trademark/name it has so painstakingly tried to establish and maintain.
issues involved, the IPO Director-General ordered the consolidation of the separate
Further, the CA stated that even on the assumption that "ST. FRANCIS" was indeed
appeals.15 Records are, however, bereft of any showing that the decision in the St.
a geographically descriptive mark, adequateprotection must still begiven to
Francis Shangri-La IP Casewas appealed by either party and, thus, is deemed to
respondent pursuant to the Doctrine of Secondary Meaning.20
have lapsed into finality.

Dissatisfied, petitioners filed the present petition.


The IPO Director-General Ruling

The Issue Before the Court


In a Decision16 dated September 3, 2008, then IPO Director-General Adrian S.
Cristobal, Jr. affirmedthe rulings of the BLA that: (a) petitioners cannot register the
mark "THEST. FRANCIS TOWERS"; and (b) petitioners are not guilty of unfair With the decisions in both Inter PartesCases having lapsed into finality, the sole
competition in its use of the mark "THE ST. FRANCIS SHANGRI-LA PLACE." issue thus left for the Court’s resolution is whether or not petitioners are guilty of
However, the IPO DirectorGeneral reversed the BLA’s findingthat petitioners unfair competition in using the marks "THE ST. FRANCIS TOWERS" and "THE ST.
committed unfair competition through their use of the mark "THE ST. FRANCIS FRANCIS SHANGRI-LA PLACE."
TOWERS," thus dismissing such charge. He foundthat respondent could not be
entitled to the exclusive use of the mark "ST. FRANCIS," even at least to the locality
The Court’s Ruling
where it conducts its business, because it is a geographically descriptive mark,
considering that it was petitioners’ as well as respondent’s intention to use the mark
"ST. FRANCIS"in order to identify, or at least associate, their real estate The petition is meritorious.
development projects/businesses with the place or location where they are
situated/conducted, particularly, St. Francis Avenue and St. Francis Street (now Section 168 of Republic Act No. 8293,21 otherwise known as the "Intellectual
known as Bank Drive), Ortigas Center. He further opined that respondent’s Property Code of the Philippines" (IP Code), provides for the rules and regulations
registration of the name "ST. FRANCIS" with the DTI is irrelevant since what should on unfair competition.
be controlling are the trademark registrations with the IPO itself.17 Also, the IPO
Director-General held that since the parties are both engaged in the real estate
business, it would be "hard to imagine that a prospective buyer will be enticed to To begin, Section 168.1 qualifies who is entitled to protection against unfair
buy, rent or purchase [petitioners’] goods or servicesbelieving that this is owned by competition. It states that "[a]person who has identified in the mind of the public
[respondent] simply because of the name ‘ST. FRANCIS.’ The prospective buyer the goods he manufacturesor deals in, his business or services from those of others,
would necessarily discuss things with the representatives of [petitioners] and would whether or not a registered mark is employed, has a property right in the goodwill
readily know that this does not belong to [respondent]."18 of the said goods, business or services so identified, which will be protected inthe
same manner as other property rights."

Disagreeing solely with the IPO Director-General’s ruling on the issue of unfair
competition (the bone of contention in the IPV Case), respondent elevated the Section 168.2proceeds to the core of the provision, describing forthwith who may be
sameto the CA. found guilty of and subject to an action of unfair competition – that is, "[a]ny
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
In contrast, records do not show that either party appealed the IPO Director- business, or services for those of the one having established such goodwill, or who
General’s ruling on the issue ofthe registrability of the mark "THE ST. FRANCIS shall commit any acts calculated to produce said result x x x."
TOWERS" (the bone of contention in the St. Francis Towers IP Case). As such, said
pronouncement isalso deemed to have lapsed into finality.
Without limiting its generality, Section 168.3goes on to specify examples of acts
which are considered as constitutive of unfair competition, viz.:
The CA Ruling

168.3. In particular, and without in any way limiting the scope of protection against
In a Decision19 dated December 18, 2009, the CA found petitioners guilty of unfair unfair competition, the following shall be deemed guilty of unfair competition:
competition not only withrespect to their use of the mark "THE ST. FRANCIS
TOWERS" but alsoof the mark "THE ST. FRANCIS SHANGRI-LA PLACE." Accordingly,
itordered petitioners to cease and desist from using "ST. FRANCIS" singly or as part (a) Any person who is selling his goods and gives them the general
of a composite mark, as well as to jointly and severally pay respondent a fine in the appearance of goods of another manufacturer or dealer, either as to the
amount of ₱200,000.00. 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 geographically descriptive term can indicate any geographic location on earth, such
appearance, which would be likely to influence purchasers to believe that as continents, nations, regions, states, cities, streets and addresses, areas of cities,
the goods offered are those of a manufacturer or dealer, other than the rivers, and any other location referred to by a recognized name. In order to
actual manufacturer or dealer, or who otherwise clothes the goods with determine whether or not the geographic term in question is descriptively used, the
such appearance as shall deceive the public and defraud another of his following question is relevant: (1) Is the mark the name of the place or region from
legitimate trade, or any subsequent vendor ofsuch goods or any agent of which the goods actually come? If the answer is yes, then the geographic term is
any vendor engaged in selling such goods with a like purpose; probably used in a descriptive sense, and secondary meaning is required for
protection."30
(b) Any person who by any artifice, or device, or who employs any other
means calculated to induce the false belief that such person is offering the In Burke-Parsons-Bowlby Corporation v. Appalachian Log Homes, Inc.,31 it was held
service of another who has identified such services in the mind of the that secondary meaningis established when a descriptive mark no longer causes the
public; or public to associate the goods with a particular place, but to associate the goods with
a particular source.In other words, it is not enough that a geographically-descriptive
mark partakes of the name of a place known generally to the public to be denied
(c) Any person who shall make any false statement in the course of trade
registration as it is also necessary to show that the public would make a
or who shall commit any other act contrary to good faith of a nature
goods/place association – that is, to believe that the goods for which the mark is
calculated to discredit the goods, business or services of another.
sought to be registered originatein that place.1âwphi1 To hold sucha belief, it is
necessary, of course, that the purchasers perceive the mark as a place name, from
Finally, Section 168.4 dwells on a matter of procedure by stating that the "[t]he which the question of obscurity or remoteness then comes to the fore.32 The more a
remedies provided by Sections 156,22 157,23 and 16124 shall apply mutatis geographical area is obscure and remote, it becomes less likely that the public shall
mutandis." have a goods/place association with such area and thus, the mark may not be
deemed as geographically descriptive. However, where there is no genuine issue
The statutory attribution of the unfair competition concept is wellsupplemented by that the geographical significance of a term is its primary significanceand where the
jurisprudential pronouncements. In the recent case of Republic Gas Corporation v. geographical place is neither obscure nor remote, a public association of the goods
Petron Corporation,25 the Court has echoed the classic definition of the term which with the place may ordinarily be presumed from the fact that the applicant’s own
is "‘the passing off (or palming off) or attempting to pass off upon the public of the goods come from the geographical place named in the mark.33
goods or business of one person as the goods or business of another with the end
and probable effect of deceiving the public.’ Passing off (or palming off) takes place Under Section 123.234 of the IP Code, specific requirements have to be met in order
where the defendant, by imitative devices on the general appearance of the goods, to conclude that a geographically-descriptive mark has acquired secondary
misleads prospective purchasers into buying his merchandise under the impression meaning, to wit: (a) the secondary meaning must have arisen as a result of
that they are buying that of his competitors. [In other words], the defendant gives substantial commercial use of a mark in the Philippines; (b) such use must result in
his goods the general appearance of the goods of his competitor with the intention the distinctiveness of the mark insofar as the goods or theproducts are concerned;
of deceiving the publicthat the goods are those of his competitor." 26 The "true test" and (c) proof of substantially exclusive and continuous commercial use in the
of unfair competition has thus been "whether the acts of the defendant have the Philippines for five (5) years beforethe date on which the claim of distinctiveness is
intent of deceiving or are calculated to deceive the ordinary buyer making his made. Unless secondary meaning has been established, a geographically-descriptive
purchases under the ordinary conditions of theparticular trade to which the mark, dueto its general public domain classification, is perceptibly disqualified from
controversy relates." Based on the foregoing, it is therefore essential to prove the trademark registration. Section 123.1(j) of the IP Code states this rule as follows:
existence of fraud, or the intent to deceive, actual or probable,27 determined
through a judicious scrutiny of the factual circumstances attendant to a particular
SEC. 123. Registrability. –
case.28

123.1 A mark cannot be registered if it:


Here, the Court finds the element of fraud to be wanting; hence, there can be no
unfair competition. The CA’scontrary conclusion was faultily premised on its
impression that respondenthad the right to the exclusive use of the mark "ST. xxxx
FRANCIS," for which the latter had purportedly established considerable goodwill.
What the CA appears to have disregarded or been mistaken in its disquisition,
(j) Consists exclusively of signs orof indications that may serve in trade to designate
however, is the geographicallydescriptive nature of the mark "ST. FRANCIS" which
the kind, quality, quantity, intended purpose, value, geographical origin, time or
thus bars its exclusive appropriability, unless a secondary meaning is acquired. As
production of the goods or rendering of the services, or other characteristics of the
deftly explained in the U.S. case of Great Southern Bank v. First Southern
goods or services; (Emphasis supplied) x x x x
Bank:29 "[d]escriptive geographical terms are inthe ‘public domain’ in the sense that
every seller should have the right to inform customers of the geographical origin of
his goods. A ‘geographically descriptive term’ is any noun or adjective that Cognizant of the foregoing, the Court disagrees with the CA that petitioners
designates geographical location and would tend to be regarded by buyers as committed unfair competition due to the mistaken notion that petitioner had
descriptive of the geographic location of origin of the goods or services. A established goodwill for the mark "ST. FRANCIS" precisely because said
circumstance, by and of itself, does not equateto fraud under the parameters of registrability issues resolved therein are hereby deemed to have attained finality
Section 168 of the IP Code as above-cited. In fact, the records are bereft of any and, therefore, are now executory.
showing thatpetitioners gave their goods/services the general appearance that it
was respondent which was offering the same to the public. Neither did petitioners
WHEREFORE, the petition is GRANTED. The Decision dated December 18, 2009 of
employ any means to induce the public towards a false belief that it was offering
the Court of Appeals in CA-G.R. SP No. 105425 is hereby REVERSED and SET
respondent’s goods/services. Nor did petitioners make any false statement or
ASIDE. Accordingly, the Decision dated September 3, 2008 of the Intellectual
commit acts tending to discredit the goods/services offered by respondent.
Property Office-Director General is REINSTATED.
Accordingly, the element of fraud which is the core of unfair competition had not
been established.
SO ORDERED.
Besides, respondent was not able toprove its compliance with the requirements
stated in Section 123.2 of the IP Code to be able to conclude that it acquired a
secondary meaning – and, thereby, an exclusive right – to the "ST. FRANCIS" mark,
which is, as the IPO Director-General correctly pointed out, geographically-
descriptive of the location in which its realty developments have been built, i.e., St.
Francis Avenue and St. Francis Street (now known as "Bank Drive"). Verily, records
would reveal that while it is true that respondent had been using the mark "ST.
FRANCIS" since 1992, its use thereof has been merely confined to its realty projects
within the Ortigas Center, as specifically mentioned.As its use of the mark is clearly
limited to a certain locality, it cannot be said thatthere was substantial commercial
use of the same recognizedall throughout the country. Neither is there any showing
of a mental recognition in buyers’ and potential buyers’ minds that products
connected with the mark "ST. FRANCIS" are associated with the same source35 –
that is, the enterprise of respondent. Thus, absent any showing that there exists a
clear goods/service-association between the realty projects located in the aforesaid
area and herein respondent as the developer thereof, the latter cannot besaid to
have acquired a secondary meaning as to its use of the "ST. FRANCIS" mark.

In fact, even on the assumption that secondary meaning had been acquired, said
finding only accords respondents protectional qualification under Section 168.1 of
the IP Code as above quoted. Again, this does not automatically trigger the
concurrence of the fraud element required under Section 168.2 of the IP Code, as
exemplified by the acts mentioned in Section 168.3 of the same. Ultimately, as
earlier stated, there can be no unfair competition without this element. In this
respect, considering too the notoriety of the Shangri-La brand in the real estate
industry which dilutes petitioners' propensity to merely ride on respondent's
goodwill, the more reasonable conclusion is that the former's use of the marks "THE
ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE" was meant only
to identify, or at least associate, their real estate project/s with its geographical
location. As aptly observed by the IPO DirectorGeneral:36

In the case at hand, the parties are business competitors engaged in real estate or
property development, providing goods and services directly connected thereto. The
"goods" or "products" or "services" are real estate and the goods and the services
attached to it or directly related to it, like sale or lease of condominium units,
offices, and commercial spaces, such as restaurants, and other businesses. For
these kinds of goods or services there can be no description of its geographical
origin as precise and accurate as that of the name of the place where they are
situated. (Emphasis and underscoring supplied)

Hence, for all the reasons above-discussed, the Court hereby grants the instant
petition, and, thus, exonerates petitioners from the charge of unfair competition in
the IPV Case. As the decisions in the Inter Partes Cases were not appealed, the
G.R. NO. 175278 business name "BPI Family Bank," and acquired a reputation and goodwill under the
name.13
GSIS FAMILY BANK - THRIFT BANK [Formerly Inc.], Petitioner,
vs. Proceedings before the SEC
BPI FAMILY BANK, Respondent.
Eventually, it reached respondent’s attention that petitioner is using or attempting
DECISION to use the name "Family Bank." Thus, on March 8, 2002, respondent petitioned the
SEC Company Registration and Monitoring Department (SEC CRMD) to disallow or
prevent the registration of the name "GSIS Family Bank" or any other corporate
JARDELEZA, J.:
name with the words "Family Bank" in it. Respondent claimed exclusive ownership
to the name "Family Bank," having acquired the name since its purchase and
This is a Petition for Review on Certiorari filed by GSIS Family Bank - Thrift merger with Family Bank and Trust Company way back 1985.14Respondent also
Bank1 assailing the Court of Appeals Decision2 dated March 29, 2006 (Decision) and alleged that through the years, it has been known as "BPI Family Bank" or simply
Resolution3 dated October 23, 2006 which denied petitioner's petition for review of "Family Bank" both locally and internationally. As such, it has acquired a reputation
the Securities and Ex.change Commission Decision dated February 22, 2005 (SEC and goodwill under the name, not only with clients here and abroad, but also with
En Banc Decision). The SEC En Banc Decision4 prohibited petitioner from using the correspondent and competitor banks, and the public in general.15
word "Family" as part of its corporate name and ordered petitioner to delete the
word from its name.5
Respondent prayed the SEC CRMD to disallow or prevent the registration of the
name "GSIS Family Bank" or any other corporate name with the words "Family
Facts Bank" should the same be presented for registration.

Petitioner was originally organized as Royal Savings Bank and started operations in Respondent likewise prayed the SEC CRMD to issue an order directing petitioner or
1971. Beginning 1983 and 1984, petitioner encountered liquidity problems. On July any other corporation to change its corporate name if the names have already been
9, 1984, it was placed under receivership and later temporarily closed by the registered with the SEC.16
Central Bank of the Philippines. Two (2) months after its closure, petitioner
reopened and was renamed Comsavings Bank, Inc. under the management of the
The SEC CRMD was thus confronted with the issue of whether the names BPI Family
Commercial Bank of Manila.6
Bank and GSIS Family Bank are confusingly similar as to require the amendment of
the name of the latter corporation.
In 1987, the Government Service Insurance System (GSIS) acquired petitioner from
the Commercial Bank of Manila. Petitioner's management and control was thus
The SEC CRMD declared that upon the merger of FBTC with the BPI in 1985, the
transferred to GSIS.7 To improve its marketability to the public, especially to the
latter acquired the right to the use of the name of the absorbed corporation. Thus,
members of the GSIS, petitioner sought Securities and Exchange Commission (SEC)
BPI Family Bank has a prior right to the use of the name
approval to change its corporate name to "GSIS Family Bank, a Thrift
Bank."8 Petitioner likewise applied with the Department of Trade and Industry (DTI)
and Bangko Sentral ng Pilpinas (BSP) for authority to use "GSIS Family Bank, a Family Bank in the banking industry, arising from its long and extensive nationwide
Thrift Bank" as its business name. The DTI and the BSP approved the use, coupled with its registration with the Intellectual Property Office (IPO) of the
applications.9 Thus, petitioner operates under the corporate name "GSIS Family name "Family Bank" as its trade name. Applying the rule of "priority in registration"
Bank – a Thrift Bank," pursuant to the DTI Certificate of Registration No. 741375 based on the legal maxim first in time, first in right, the SEC CRMD concluded that
and the Monetary Board Circular approval.10 BPI has the preferential right to the use of the name "Family Bank." More, GSIS and
Comsavings Bank were then fully aware of the existence and use of the name
"Family Bank" by FBTC prior to the latter's merger with BPI.17
Respondent BPI Family Bank was a product of the merger between the Family Bank
and Trust Company (FBTC) and the Bank of the Philippine Islands (BPI).11 On June
27, 1969, the Gotianum family registered with the SEC the corporate name "Family The SEC CRMD also held that there exists a confusing similarity between the
First Savings Bank," which was amended to "Family Savings Bank," and then later corporate names BPI Family Bank and GSIS Family Bank. It explained that although
to "Family Bank and Trust Company."12 Since its incorporation, the bank has been not identical, the corporate names are indisputably similar, as to cause confusion in
commonly known as "Family Bank." In 1985, Family Bank merged with BPI, and the the public mind, even with the exercise of reasonable care and observation,
latter acquired all the rights, privileges, properties, and interests of Family Bank, especially so since both corporations are engaged in the banking business.18
including the right to use names, such as "Family First Savings Bank,"
In a decision19 dated May 19, 2003, the SEC CRMD said, PREMISES CONSIDERED
"Family Bank," and "Family Bank and Trust Company." BPI Family Savings Bank respondent GSIS FAMILY BANK is hereby directed to refrain from using the word
was registered with the SEC as a wholly-owned subsidiary of BPI. BPI Family "Family" as part of its name and make good its commitment to change its name by
Savings Bank then registered with the Bureau of Domestic Trade the trade or
deleting or dropping the subject word from its corporate name within [thirty (30) Petitioner raised the following issues in its petition:
days] from the date of actual receipt hereof.20
I. The Court of Appeals gravely erred in affirming the SEC Resolution
Petitioner appealed21 the decision to the SEC En Banc, which denied the appeal, and finding the word "Family" not generic despite its unregistered status with
upheld the SEC CRMD in the SEC En Banc Decision.22 Petitioner elevated the SEC En the IPO of the Bureau of Patents and the use by GSIS-Family Bank in its
Banc Decision to the Court of Appeals, raising the following issues: corporate name of the words "[F]amily [B]ank" as deceptive and
[confusingly similar] to the name BPI Family Bank;31
1. Whether the use by GSIS Family Bank of the words "Family Bank" is
deceptively and confusingly similar to the name BPI Family Bank; II. The Court of Appeals gravely erred when it ruled that the respondent is
not guilty of forum shopping despite the filing of three (3) similar
complaints before the DTI and BSP and with the SEC without the requisite
2. Whether the use by Comsavings Bank of "GSIS Family Bank" as its
certification of non-forum shopping attached thereto;32
business constitutes unfair competition;

III. The Court of Appeals gravely erred when it completely disregarded the
3. Whether BPI Family Bank is guilty of forum shopping;
opinion of the Banko Sentral ng Pilipinas that the use by the herein
petitioner of the trade name GSIS Family Bank – Thrift Bank is not similar
4. Whether the approval of the DTI and the BSP of petitioner's application or does not deceive or likely cause any deception to the public.33
to use the name GSIS Family Bank constitutes its authority to the lawful
and valid use of such trade name or trade mark;
Court's Ruling

5. Whether the application of respondent BPI Family Bank for the exclusive
We uphold the decision of the Court of Appeals.
use of the name "Family Bank," a generic name, though not yet approved
by IPO of the Bureau of Patents, has barred the GSIS Family Bank from
using such trade mark or name.23 Section 18 of the Corporation Code provides,

Court of Appeals Ruling Section 18. Corporate name. – No corporate name may be allowed by the Securities
and Exchange Commission if the proposed name is identical or deceptively or
confusingly similar to that of any existing corporation or to any other name already
The Court of Appeals ruled that the approvals by the BSP and by the DTI of
protected by law or is patently deceptive, confusing or contrary to existing laws.
petitioner’s application to use the name "GSIS Family Bank" do not constitute
When a change in the corporate name is approved, the Commission shall issue an
authority for its lawful and valid use. It said that the SEC has absolute jurisdiction,
amended certificate of incorporation under the amended name.
supervision and control over all corporations.24 The Court of Appeals held that
respondent was entitled to the exclusive use of the corporate name because of its
prior adoption of the name "Family Bank" since 1969.25 There is confusing similarity In Philips Export B.V. v. Court of Appeals,34 this Court ruled that to fall within the
in the corporate names because "[c]onfusion as to the possible association with prohibition of the law on the right to the exclusive use of a corporate name, two
GSIS might arise if we were to allow Comsavings Bank to add its parent company’s requisites must be proven, namely:
acronym, ‘GSIS’ to ‘Family Bank.’ This is true especially considering both companies
belong to the banking industry. Proof of actual confusion need not be shown. It
(1) that the complainant corporation acquired a prior right over the use of
suffices that confusion is probably or likely to occur."26The Court of Appeals also
such corporate name; and
ruled out forum shopping because not all the requirements of litis pendentia are
present.27
(2) the proposed name is either
The dispositive portion of the decision read,
(a) identical or
WHEREFORE, the instant petition for review is hereby DISMISSED for lack of
merit.28 (b) deceptive or confusingly similar to that of any existing
corporation or to any other name already protected by law; or
After its Motion for Reconsideration was denied,29 petitioner brought the decision to
this Court via a Petition for Review on Certiorari.30 (c) patently deceptive, confusing or contrary to existing law.35

Issues in the Petition These two requisites are present in this case. On the first requisite of a prior right,
Industrial Refractories Corporation of the Philippines v. Court of Appeals (IRCP
case)36 is instructive. In that case, Refractories Corporation of the Philippines (RCP) distinct from respondent's because the latter is likewise engaged in the banking
filed before the SEC a petition to compel Industrial Refractories Corporation of the business.
Philippines (IRCP) to change its corporate name on the ground that its corporate
name is confusingly similar with that of RCP’s such that the public may be confused
This Court used the same analysis in Ang mga Kaanib sa Iglesia ng Dios Kay Kristo
into believing that they are one and the same corporation. The SEC and the Court of
Hesus, H.S.K. sa Bansang Pilipinas, Inc. v. Iglesia ng Dios Kay Cristo Jesus, Haligi at
Appeals found for petitioner, and ordered IRCP to delete or drop from its corporate
Suhay ng Katotohanan.40 In that case, Iglesia ng Dios Kay Cristo Jesus filed a case
name the word "Refractories." Upon appeal of IRCP, this Court upheld the decision
before the SEC to compel Ang mga Kaanib sa Iglesia ng Dios Kay Kristo Hesus to
of the CA.
change its corporate name, and to prevent it from using the same or similar name
on the ground that the same causes confusion among their members as well as the
Applying the priority of adoption rule to determine prior right, this Court said that public. Ang mga Kaanib sa Iglesia ng Dios Kay Kristo Hesus claimed that it complied
RCP has acquired the right to use the word "Refractories" as part of its corporate with SEC Memorandum Circular No. 14-2000 by adding not only two, but eight
name, being its prior registrant. In arriving at this conclusion, the Court considered words to their registered name, to wit: "Ang Mga Kaanib" and "Sa Bansang
that RCP was incorporated on October 13, 1976 and since then continuously used Pilipinas, Inc.," which effectively distinguished it from Iglesia ng Dios Kay Cristo
the corporate name "Refractories Corp. of the Philippines." Meanwhile, IRCP only Jesus. This Court rejected the argument, thus:
started using its corporate name "Industrial Refractories Corp. of the Philippines"
when it amended its Articles of Incorporation on August 23, 1985.37
The additional words "Ang Mga Kaanib" and "Sa Bansang Pilipinas, Inc." in
petitioner's name are, as correctly observed by the SEC, merely descriptive
In this case, respondent was incorporated in 1969 as Family Savings Bank and in of and also referring to the members, or kaanib, of respondent who are
1985 as BPI Family Bank. Petitioner, on the other hand, was incorporated as GSIS likewise residing in the Philippines. These words can hardly serve as an
Family – Thrift Bank only in 2002,38 or at least seventeen (17) years after effective differentiating medium necessary to avoid confusion or difficulty
respondent started using its name. Following the precedent in the IRCP case, we in distinguishing petitioner from respondent. This is especially so, since
rule that respondent has the prior right over the use of the corporate name. both petitioner and respondent corporations are using the same acronym –
H.S.K.; not to mention the fact that both are espousing religious beliefs
and operating in the same place. Xxx41
The second requisite in the Philips Export case likewise obtains on two points: the
proposed name is (a) identical or (b) deceptive or confusingly similar to that of any
existing corporation or to any other name already protected by law. On the second point (b), there is a deceptive and confusing similarity between
petitioner's proposed name and respondent's corporate name, as found by the
SEC.42 In determining the existence of confusing similarity in corporate names, the
On the first point (a), the words "Family Bank" present in both petitioner and
test is whether the similarity is such as to mislead a person using ordinary care and
respondent's corporate name satisfy the requirement that there be identical names
discrimination.43 And even without such proof of actual confusion between the two
in the existing corporate name and the proposed one.
corporate names, it suffices that confusion is probable or likely to occur.44

Respondent cannot justify its claim under Section 3 of the Revised Guidelines in the
Petitioner's corporate name is "GSIS Family Bank—A Thrift Bank" and respondent's
Approval of Corporate and Partnership Names,39 to wit:
corporate name is "BPI Family Bank." The only words that distinguish the two are
"BPI," "GSIS," and "Thrift." The first two words are merely the acronyms of the
3. The name shall not be identical, misleading or confusingly similar to one already proper names by which the two corporations identify themselves; and the third
registered by another corporation or partnership with the Commission or a sole word simply describes the classification of the bank. The overriding consideration in
proprietorship registered with the Department of Trade and Industry. determining whether a person, using ordinary care and discrimination, might be
misled is the circumstance that both petitioner and respondent are engaged in the
If the proposed name is similar to the name of a registered firm, the proposed name same business of banking. "The likelihood of confusion is accentuated in cases
must contain at least one distinctive word different from the name of the company where the goods or business of one corporation are the same or substantially the
already registered. same to that of another corporation."45

Section 3 states that if there be identical, misleading or confusingly similar name to Respondent alleged that upon seeing a Comsavings Bank branch with the signage
one already registered by another corporation or partnership with the SEC, the "GSIS Family Bank" displayed at its premises, some of the respondent’s officers and
proposed name must contain at least one distinctive word different from the name their clients began asking questions. These include whether GSIS has acquired
of the company already registered. To show contrast with respondent's corporate Family Bank; whether there is a joint arrangement between GSIS and Family Bank;
name, petitioner used the words "GSIS" and "thrift." But these are not sufficiently whether there is a joint arrangement between BPI and GSIS regarding Family Bank;
distinct words that differentiate petitioner's corporate name from respondent's. whether Comsavings Bank has acquired Family Bank; and whether there is there an
While "GSIS" is merely an acronym of the proper name by which petitioner is arrangement among Comsavings Bank, GSIS, BPI, and Family Bank regarding BPI
identified, the word "thrift" is simply a classification of the type of bank that Family Bank and GSIS Family Bank.46 The SEC made a finding that "[i]t is not a
petitioner is. Even if the classification of the bank as "thrift" is appended to remote possibility that the public may entertain the idea that a relationship or
petitioner's proposed corporate name, it will not make the said corporate name
arrangement indeed exists between BPI and GSIS due to the use of the term From all of this we deduce that "Ang Tibay" is not a descriptive term within the
‘Family Bank’ in their corporate names."47 meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may
properly and legally be appropriated as a trade-mark or trade-name.
xxx55 (Underscoring supplied).
Findings of fact of quasi-judicial agencies, like the SEC, are generally accorded
respect and even finality by this Court, if supported by substantial evidence, in
recognition of their expertise on the specific matters under their consideration, more The word "family" is defined as "a group consisting of parents and children living
so if the same has been upheld by the appellate court, as in this case.48 together in a household" or "a group of people related to one another by blood or
marriage."56 Bank, on the other hand, is defined as "a financial establishment that
invests money deposited by customers, pays it out when requested, makes loans at
Petitioner cannot argue that the word "family" is a generic or descriptive name,
interest, and exchanges currency."57 By definition, there can be no expected relation
which cannot be appropriated exclusively by respondent. "Family," as used in
between the word "family" and the banking business of respondent. Rather, the
respondent's corporate name, is not generic. Generic marks are commonly used as
words suggest that respondent’s bank is where family savings should be deposited.
the name or description of a kind of goods, such as "Lite" for beer or "Chocolate
More, as in the Ang case, the phrase "family bank" cannot be used to define an
Fudge" for chocolate soda drink. Descriptive marks, on the other hand, convey the
object.
characteristics, function, qualities or ingredients of a product to one who has never
seen it or does not know it exists, such as "Arthriticare" for arthritis medication.49
Petitioner’s argument that the opinion of the BSP and the certificate of registration
granted to it by the DTI constitute authority for it to use "GSIS Family Bank" as
Under the facts of this case, the word "family" cannot be separated from the word
corporate name is also untenable.
"bank."50 In asserting their claims before the SEC up to the Court of Appeals, both
petitioner and respondent refer to the phrase "Family Bank" in their submissions.
This coined phrase, neither being generic nor descriptive, is merely suggestive and The enforcement of the protection accorded by Section 18 of the Corporation Code
may properly be regarded as arbitrary. Arbitrary marks are "words or phrases used to corporate names is lodged exclusively in the SEC. The jurisdiction of the SEC is
as a mark that appear to be random in the context of its use. They are generally not merely confined to the adjudicative functions provided in Section 5 of the SEC
considered to be easily remembered because of their arbitrariness. They are original Reorganization Act,58 as amended.59 By express mandate, the SEC has absolute
and unexpected in relation to the products they endorse, thus, becoming jurisdiction, supervision and control over all corporations.60 It is the SEC’s duty to
themselves distinctive."51 Suggestive marks, on the other hand, "are marks which prevent confusion in the use of corporate names not only for the protection of the
merely suggest some quality or ingredient of goods. xxx The strength of the corporations involved, but more so for the protection of the public. It has authority
suggestive marks lies on how the public perceives the word in relation to the to de-register at all times, and under all circumstances corporate names which in its
product or service."52 estimation are likely to generate confusion.61

In Ang v. Teodoro,53 this Court ruled that the words "Ang Tibay" is not a descriptive The SEC62 correctly applied Section 18 of the Corporation Code, and Section 15 of
term within the meaning of the Trademark Law but rather a fanciful or coined SEC Memorandum Circular No. 14-2000, pertinent portions of which provide:
phrase.54 In so ruling, this Court considered the etymology and meaning of the
Tagalog words, "Ang Tibay" to determine whether they relate to the quality or
In implementing Section 18 of the Corporation Code of the Philippines (BP 69), the
description of the merchandise to which respondent therein applied them as
following revised guidelines in the approval of corporate and partnership names are
trademark, thus:
hereby adopted for the information and guidance of all concerned:

We find it necessary to go into the etymology and meaning of the Tagalog words
xxx
"Ang Tibay" to determine whether they are a descriptive term, i.e., whether they
relate to the quality or description of the merchandise to which respondent has
applied them as a trade-mark. The word "ang" is a definite article meaning "the" in 15. Registrant corporations or partnership shall submit a letter undertaking to
English. It is also used as an adverb, a contraction of the word "anong" (what or change their corporate or partnership name in case another person or firm has
how). For instance, instead of saying, "Anong ganda!" ("How beautiful!"), we acquired a prior right to the use of the said firm name or the same is deceptively or
ordinarily say, "Ang ganda!" Tibay is a root word from which are derived the verb confusingly similar to one already registered unless this undertaking is already
magpatibay (to strengthen); the nouns pagkamatibay (strength, durability), included as one of the provisions of the articles of incorporation or partnership of
katibayan (proof, support, strength), katibaytibayan (superior strength); and the the registrant.
adjectives matibay (strong, durable, lasting), napakatibay (very strong), kasintibay
or magkasintibay (as strong as, or of equal strength). The phrase "Ang Tibay" is an The SEC, after finding merit in respondent's claims, can compel petitioner to abide
exclamation denoting admiration of strength or durability. For instance, one who by its commitment "to change its corporate name in the event that another person,
tries hard but fails to break an object exclaims, "Ang tibay!" ("How strong!") It may firm or entity has acquired a prior right to use of said name or one similar to it." 63
also be used in a sentence thus, "Ang tibay ng sapatos mo!" ("How durable your
shoes are!") The phrase "ang tibay" is never used adjectively to define or describe
an object. One does not say, "ang tibay sapatos" or "sapatos ang tibay" to mean Clearly, the only determination relevant to this case is that one made by the SEC in
"durable shoes," but "matibay na sapatos" or "sapatos na matibay." the exercise of its express mandate under the law. The BSP opinion invoked by
petitioner even acknowledges that "the issue on whether a proposed name is
identical or deceptively similar to that of any of existing corporation is matter within
the official jurisdiction and competence of the SEC."64

Judicial notice65 may also be taken of the action of the IPO in approving
respondent’s registration of the trademark "BPI Family Bank" and its logo on
October 17, 2008. The certificate of registration of a mark shall be prima facie
evidence of the validity of the registration, the registrant’s ownership of the mark,
and of the registrant’s exclusive right to use the same in connection with the goods
or services and those that are related thereto specified in the certificate.66

Finally, we uphold the Court of Appeals' finding that the issue of forum shopping
was belatedly raised by petitioner and, thus, cannot anymore be considered at the
appellate stage of the proceedings. Petitioner raised the issue of forum shopping for
the first time only on appeal.67 Petitioner argued that the complaints filed by
respondent did not contain certifications against non-forum shopping, in violation of
Section 5, Rule 7 of the Rules of Court.68

In S.C. Megaworld Construction and Development Corporation vs. Parada,69 this


Court said that objections relating to non-compliance with the verification and
certification of non-forum shopping should be raised in the proceedings below, and
not for the first time on appeal. In that case, S.C. Megaworld argued that the
complaint for collection of sum of money should have been dismissed outright by
the trial court on account of an invalid nonforum shopping certification. It alleged
that the Special Power of Attorney granted to Parada did not specifically include an
authority for the latter to sign the verification and certification of non-forum
shopping, thus rendering the complaint defective for violation of Sections 4 and 5 of
Rule 7 of the Rules of Court. On motion for reconsideration of the decision of the
Court of Appeals, petitioner raised for the first time, the issue of forum shopping.
The Court ruled against S.C. Megaworld, thus:

It is well-settled that no question will be entertained on appeal unless it has been


raised in the proceedings below. Points of law, theories, issues and arguments not
brought to the attention of the lower court, administrative agency or quasi-judicial
body, need not be considered by a reviewing court, as they cannot be raised for the
first time at that late stage. Basic considerations of fairness and due process impel
this rule. Any issue raised for the first time on appeal is barred by estoppel.70

In this case, the fact that respondent filed a case before the DTI was made known
to petitioner71 long before the SEC rendered its decision. Yet, despite its knowledge,
petitioner failed to question the alleged forum shopping before the SEC. The
exceptions to the general rule that forum shopping should be raised in the earliest
opportunity, as explained in the cited case of Young v. Keng Seng,72 do not obtain in
this case.

WHEREFORE, the petition is DENIED. The decision of the Court of Appeals dated
March 29, 2006 is hereby AFFIRMED.

SO ORDERED.
G.R. No. 198889, January 20, 2016 6. Hernan D. Reyes also filed on March 04, 1982 an application to register in
the Supplemental Register the "PAPA BANANA CATSUP Label";
UFC PHILIPPINES, INC. (NOW MERGED WITH NUTRI-ASIA, INC., WITH
NUTRI-ASIA, INC. AS THE SURVIVING ENTITY), Petitioner, v. FIESTA 7. On August 11, 1983, Hernan D. Reyes was issued Certificate of
BARRIO MANUFACTURING CORPORATION,Respondent. Registration No. SR-6282 which was subsequently assigned to Acres &
Acres Food, Inc., Southeast Asia Food, Inc., Heinz-UFC Philippines, Inc.;
DECISION
8. After its expiration, Opposer filed on November 15, 2006 Trademark
Application Serial No. 4-2006-012346 for the re-registration of the "PAPA
LEONARDO-DE CASTRO, J.: Label Design";

For our disposition is a petition for review on certiorari under Rule 45 seeking to 9. The mark "PAPA KETSARAP" for use on banana sauce falling under Class 30
annul and set aside the June 23, 2011 Decision1 and the October 4, was also registered in favor of Acres & Acres Food, Inc. under Registration
2011 Resolution2 of the Court of Appeals in CA-G.R. SP No. 107570, which No. 34681 issued on August 23, 1985 and renewed last August 23, 2005
reversed and set aside the March 26, 2008 Decision3 of the Bureau of Legal Affairs by Heinz-UFC Philippines, Inc. for ten (10) years;
of the Intellectual Property Office (IPO-BLA) and the January 29, 2009 Decision4 of
the Director General of the IPO. Petitioner Nutri-Asia, Inc. (petitioner) is a 10. On November 07, 2006, Registration No. 34681 was assigned to Opposer;
corporation duly organized and existing under Philippine laws.5 It is the emergent
entity in a merger with UFC Philippines, Inc. that was completed on February 11, 11. Opposer has not abandoned the use of the mark "PAPA" and the variations
2009.6 Respondent Barrio Fiesta Manufacturing Corporation (respondent) is likewise thereof as Opposer has continued their use up to the present;
a corporation organized and existing under Philippine laws.

On April 4, 2002, respondent filed Application No. 4-2002-002757 for the mark 12. The mark "PAPA BOY & DEVICE" is identical to the mark "PAPA" owned by
"PAPA BOY & DEVICE" for goods under Class 30, specifically for "lechon sauce."7 The Opposer and duly registered in its favor, particularly the dominant feature
Intellectual Property Office (IPO) published said application for opposition in the IP thereof;
Phil. e-Gazette released on September 8, 2006. The mark appears as follows:
13. [With the] dominant feature of respondent-applicant's mark "PAPA BOY &
(Please see image G.R. No. 198889 pg. 2) DEVICE", which is Opposer's "PAPA" and the variations thereof, confusion
and deception is likely to result: The consuming public, particularly the
unwary customers, will be deceived, confused, and mistaken into believing
On December 11, 2006, petitioner filed with the IPO-BLA a Verified Notice of that respondent-applicant's goods come from Opposer or are authorized by
Opposition to the above-mentioned application and alleged that: Opposer to Opposer's prejudice, which is particularly true considering that
Opposer's sister company, Southeast Asia Food, Inc., and its predecessors-
in-interest have been major manufacturers and distributors of lechon sauce
1. The mark "PAPA" for use on banana catsup and other similar goods was and other table sauces since 1965 under its registered mark "Mang
first used [in] 1954 by Neri Papa, and thus, was taken from his surname; Tomas";

2. After using the mark "PAPA" for about twenty-seven (27) years, Neri Papa 14. Respondent-applicant's mark "PAPA BOY & DEVICE" which nearly
subsequently assigned the mark "PAPA" to Hernan D. Reyes who, on resembles Opposer's mark "PAPA" and the variations thereof will impress
September 17, 1981, filed an application to register said mark "PAPA" for upon the gullible or unsuspecting public that it is the same or related to
use on banana catsup, chili sauce, achara, banana chips, and instant ube Opposer as to source because its dominant part is the same as Opposer's
powder; mark and, thus, will likely be mistaken to be the mark, or related to, or a
derivative or variation of, Opposer's mark;
3. On August 14, 1983, Hernan D. Reyes was issued Certificate of
Registration No. 32416; 15. The goods covered by respondent-applicant's application fall under Class
30, the same Class under which Opposer's goods enumerated in its earlier
4. [Certificate of] Registration No. 32416 was subsequently assigned to the issued registrations;
following in successive fashion: Acres & Acres Food, Inc., Southeast Asia
Food, Inc., Heinz-UFC Philippines, Inc., and Opposer UFC Philippines, Inc.; 16. The test of dominancy is now explicitly incorporated into law in Section
155.1 of the IP Code which defines infringement as the colorable imitation
5. Last October 28, 2005, Heinz-UFC Philippines, Inc. filed Application Serial of a registered mark or a dominant feature thereof, and is provided for by
No. 4-2005-010788 which, in effect, is a re- registration of Registration No. jurisprudence;
32416 which expired on August 11, 2003;
17. As a corporation also engaged in the food business, Respondent- applicant
knew and/or ought to know that Opposer and its predecessors-in-interest 5. As a result, Opposer's right to use the mark "PAPAKETSARAP" is limited to the
have been using the mark "PAPA" and the variations thereof for the last products covered by its certificate of registration which is Class 30 for banana
fifty-two (52) years while its sister company is engaged in the business of sauce;
manufacturing and distributing "lechon sauce" and other table sauces for
the last forty-one (41) years; 6. Contrary to Opposer's belief, the dominant features of Respondent-applicant's
mark "PAPA BOY & DEVICE" are the words "PAPA BOY" and the representation of a
18. The approval of the subject application will violate Opposer's right to the smiling hog-like character gesturing the thumbs-up sign and wearing a traditional
exclusive use of its registered mark "PAPA" and the variations thereof per Filipino hat and scarf while the dominant feature of Opposer's mark "PAPA
Section 13 8 of the IP Code; KETSARAP" are the words "Papa" and "Ketsarap", not the word "Papa"; and the
word "Ketsarap " is more prominently printed and displayed in the foreground than
the word "Papa" for which reasons opposer's reference to the Dominancy Test fails;
19. The approval of the subject application has caused and will continue to
cause great and irreparable damage and injury to Opposer;
7. Opposer's allegation that the registration of Respondent-applicant's mark "PAPA
BOY & DEVICE" will damage and prejudice the mark "MANG TOMAS" is irrelevant
20. Respondent-applicant filed the subject application fraudulently and in bad considering that Opposer's basis for filing this opposition is the alleged confusing
faith; and similarity between Respondent-applicant's mark and Opposer's mark "PAPA
KETSARAP", not the mark "MANG TOMAS";
21. Respondent-applicant is not entitled to register the subject mark in its
favor.8 8. Respondent-applicant's mark "PAPA BOY & DEVICE" is neither identical nor
confusingly similar to Opposer's mark "PAPA KETSARAP": Respondent-applicant's
mark "PAPABOY & DEVICE" is an arbitrary mark which differs in overall sound,
In its verified opposition before the IPO, petitioner contended that "PAPA BOY & spelling, meaning, style, configuration, presentation, and appearance from
DEVICE" is confusingly similar with its "PAPA" marks inasmuch as the former Opposer's mark "PAPA KETSARAP";
incorporates the term "PAPA," which is the dominant feature of petitioner's "PAPA"
marks. Petitioner averred that respondent's use of "PAPA BOY & DEVICE" mark for 9. The dissimilarities between the marks are so distinct, thus, confusion is very
its lechon sauce product, if allowed, would likely lead the consuming public to unlikely: While Opposer's mark is a plain word mark, Respondent-applicant's mark
believe that said lechon sauce product originates from or is authorized by petitioner, "PAPA BOY & DEVICE" is much more intricate and distinctive such as Opposer's
and that the "PAPA BOY & DEVICE" mark is a variation or derivative of petitioner's mark not having the words "Lechon Sauce" printed inside a blue ribbon-like device
"PAPA" marks. Petitioner argued that this was especially true considering that which is illustrated below the words "PAPA BOY", Opposer's mark not having a
petitioner's ketchup product and respondent's lechon sauce product are related prominent smiling hog-like character gesturing a thumbs-up sign and wearing a
articles that fall under the same Class 30.9chanroblesvirtuallawlibrary Filipino hat and scarf stands beside the words "PAPA BOY", and Opposer's mark not
having the words "Barrio Fiesta" albeit conspicuously displayed above the mark, all
Petitioner alleged that the registration of respondent's challenged mark was also which leave no doubt in the consumer's mind on the product that he is purchasing;
likely to damage the petitioner, considering that its former sister company,
Southeast Asia Food, Inc., and the latter's predecessors-in-interest, had been major 10. Aside from the fact that Respondent-applicant's mark "PAPA BOY & DEVICE" is
manufacturers and distributors of lechon and other table sauces since 1965, such as distinct and different in appearance, spelling, sound, meaning, and style from
products employing the registered "Mang Tomas" mark. Opposer's mark "PAPA KETSARAP", the difference in the goods covered by both
marks is obvious: Since the goods covered by Respondent-applicant's mark is
In its Verified Answer, respondent argued that there is no likelihood of confusion unrelated and non- competing to those covered by Opposer's mark, the doctrine
between petitioner's family of "PAPA" trademarks and respondent's "PAPA BOY & allowing the registrations of marks covering unrelated and non-competing goods as
DEVICE" trademark. Respondent raised affirmative defenses and we quote the enunciated by the Supreme Court is therefore applicable in this case;
relevant ones below:
11. Respondent-applicant's mark cannot be confusingly similar to Opposer's mark
considering that the products covered by these marks are different: While
3. Opposer cites several of its following marks in support of its opposition to the Respondent-applicant's mark "PAPA BOY & DEVICE" covers lechon sauce under
application but an examination of said marks [reveals] that these have already Class 30, Opposer's mark "PAPA KETSARAP" covers banana sauce;
expired and/or that no confusing similarity exists x xx;
12. If a consumer is in the market for banana sauce, he will not buy lechon sauce
4. Assuming that the mark "PAPA KETSARAP" had been timely renewed on August and vice-versa and as a result, the margin of error in the acquisition of one from the
23, 2005 for "banana sauce" under Class 30, the same is not a hindrance to the other is simply remote;
successful registration of the mark "PAPA BOY & DEVICE": Jurisprudence provides
that a certificate of registration confers upon the trademark owner the exclusive 13. Respondent-applicant is the exclusive owner of the mark "PAPA BOY & DEVICE"
right to use its own symbol only to those goods specified in the certificate subject to for lechon sauce under Class 30: The words "PAPA BOY" is a combination of the
the conditions and limitations stated therein; nickname of Bonifacio Ongpauco who is one of Respondent-applicant's incorporators
and founders- "BOY"- and the word "PAPA" as Bonifacio Ongpauco's mother, Sixta
P. Evangelista, had been fondly known as "Mama Chit", making Respondent-
applicant the prior adopter, user, and applicant of the mark "PAPA BOY & DEVICE"
3. "PAPA LABEL DESIGN" under Registration No. 4-2006-012364;13 and
in the Philippines;

14. To protect its ownership over the mark "PAPA BOY & DEVICE" considering that it (Please see image G.R. No. 198889 page 7.)
is the first to adopt and use said mark, Respondent-applicant applied for its
registration under Application Serial No. 4-2002-002757 for Class 30, and said
application was found registrable by the Examiner as a consequence of which the
same was recommended for allowance after undergoing a thorough process of
examination, which recommendation was then approved by the Director of the 4. "PAPA KETSARAP" under Certificate of Registration No. 34681, for banana
Bureau of Trademarks (BOT); sauce (Class 30).14

15. Respondent-applicant's mark "PAPA BOY & DEVICE" has been commercially (Please see image G.R. No. 198889 page 8.)
used in the Philippines;

16. Respondent-applicant's mark "PAPA BOY & DEVICE" has been promoted and
advertised for a considerable duration of time and over wide geographical areas:
Respondent-applicant has invested tremendous amount of resources in the PROCEEDINGS BEFORE THE INTELLECTUAL PROPERTY OFFICE
promotion of its mark "PAPA BOY & DEVICE" through various media including print
publications and promotional materials; The case was referred to mediation but the parties failed to arrive at an amicable
settlement. The case was thus set for preliminary conference. Subsequently, the
17. The widespread local commercial use of the subject mark by Respondent- IPO-BLA directed the parties to file their respective position papers and draft
applicant to distinguish and identify its various high-quality consumer products has decisions.
earned Respondent-applicant a well-deserved business reputation and goodwill;
The IPO-BLA rendered a Decision on March 26, 2008 sustaining petitioner's
18. Respondent-applicant's mark is distinctive and capable of identifying its goods Opposition and rejecting respondent's application for "PAPA BOY & DEVICE."
and distinguishing them from those offered for sale by others in the market The fallo of said decision reads as follows:
including Opposer's goods for which reason no confusion will result because
Respondent-applicant's mark is for lechon sauce while Opposer's mark is for banana WHEREFORE, the VERIFIED NOTICE OF OPPOSITION filed by UFC Philippines, Inc.
sauce; and is, as it is hereby, SUSTAINED. Consequently, Application Serial No. 4-2002-002757
for the mark "PAPA BOY & DEVICE" for lechon sauce under Class 30 filed on April
19. The presence of a common prefix "PAPA" in the marks of both parties does not 04, 2002 by Barrio Fiesta Manufacturing Corporation, is, as it is hereby, REJECTED.
render said marks identical or confusingly similar: Opposer cannot exclusively Let the file wrapper of PAPA BOY & Device subject matter of this case be forwarded
appropriate said prefix considering that other marks such as "Papa Heinz Pizza", to the Bureau of Trademarks (BOT) for appropriate action in accordance with this
"Papa Heinz Sausage", "Papa Beaver", "Papa Pop", "Pizza Papa John's & Design", Decision.15chanrobleslaw
"Papadoods", and "Papa in Wine and Device" are valid and active.10chanrobleslaw
Respondent filed an appeal before the IPO Director General, who found it
Petitioner's mark and its variations appear as follows: unmeritorious, and disposed of the case in the following manner:

1. 1. "PAPA" under Registration No. 32416 for Class 29 goods;11 WHEREFORE, the instant appeal is hereby DISMISSED. Let a copy of this Decision
as well as the trademark application and records be furnished and returned to the
Director of the Bureau of Legal Affairs for appropriate action. Further, let also the
(Please see image G.R. No. 198889 page 7.) Director of the Bureau of Trademarks and the library of the Documentation,
Information and Technology Transfer Bureau be furnished a copy of this Decision for
information, guidance, and records purposes."16

2. The mark "PAPA" as it appeared upon re-registration of Certificate No. DECISION OF THE COURT OF APPEALS
32416, under Application No. 4-2005-010788 for Classes 29 and 30
goods;12 Respondent then filed a petition with the Court of Appeals, questioning the above
decision of the IPO Director General that affirmed the decision of the IPO Bureau of
(Please see image G.R. No. 198889 page 7.) Legal Affairs Director, which disallowed respondent's application for trademark
registration. Respondent's arguments before the Court of Appeals are quoted
below:
A. Property Office issued a Certificate of Registration No. 4-2006-012364 for
the latter on April 30, 2007, to bar the registration of petitioner's "PAPA
BOY & DEVICE" mark.18 (Emphases supplied, citations omitted.)
REGISTRATION NOS. 32416 AND 42005010788 ISSUED FOR THE "PAPA" MARK
AND REGISTRATION NOS. SR-6282 AND 42006012364 ISSUED FOR THE Anent the second ground, the Court of Appeals ruled in the following manner:
TRADEMARK "PAPA BANANA CATSUP LABEL/PAPA LABEL DESIGN" SHOULD NOT BE
USED AS BASIS IN DETERMINING THE EXISTENCE OF CONFUSING SIMILARITY. After taking into account the aforementioned doctrines and the factual
circumstances of the case at bar, this Court, after considering the
B. trademarks involved as a whole, is of the view that petitioner's trademark
"PAPA BOY & DEVICE" is not confusingly similar to respondent's "PAPA
KETSARAP" and "PAPA BANANA CATSUP" trademark. Petitioner's trademark is
THERE IS NO CONFUSING SIMILARITY BETWEEN PETITIONER-APPLICANT'S "PAPA "PAPA BOY" as a whole as opposed to respondent's "PAPA". Although on its label the
BOY & DEVICE" AND RESPONDENT'S "PAPA KETSARAP" MARK. word "PAPA" is prominent, the trademark should be taken as a whole and not
piecemeal. The difference between the two marks are conspicuous and noticeable.
C. While respondent's products are both labeled as banana sauces, that of petitioner
Barrio Fiesta is labeled as lechon sauce.

PETITIONER-APPLICANT IS ENTITLED TO THE REGISTRATION OF THE MARK "PAPA Moreover, it appears on the label of petitioner's product that the said lechon sauce
BOY & DEVICE." is manufactured by Barrio Fiesta thus, clearly informing the public [of) the identity
of the manufacturer of the lechon sauce. As claimed by respondent, its products
have been in commercial use for decades. It is safe to assume then that the
D.
consumers are already aware that "PAPA KETSARAP" and "PAPA BANANA CATSUP"
are products of UFC and not of petitioner or the other way around. In addition, as
correctly pointed out by petitioner, if a consumer is in the market for banana sauce,
THE OPPOSITION STATES NO CAUSE OF ACTION, AND HENCE, SHOULD BE DENIED
he will not buy lechon sauce and vice-versa because aside from the fact that the
OUTRIGHT.17chanrobleslaw
labels of both parties' products contain the kind of sauce they are marketing, the
color of the products is visibly different. An ordinary consumer is familiar with the
As regards the first ground, the Court of Appeals held:
fact that the color of a banana sauce is red while a lechon sauce is dark brown.
There can be no deception as both products are marketed in bottles making the
Records show that respondent UFC has Certificates of Registration for the distinction visible to the eye of the consumer and the likelihood of acquiring a wrong
trademarks PAPA, PAPA BANANA CATSUP label and PAPA KETSARAP. A closer look sauce, remote. Even if the products are placed side by side, the dissimilarities
at the respective Certificate[s] of Registration of the aforementioned marks, between the two marks are conspicuous, noticeable and substantial enough to
however, reveals that at the time the trademark application of petitioner was matter especially in the light of the following variables that must be factored in.
published in the IPO e-Gazette on September 8, 2006, the duration of the
trademark registration of respondent over the marks PAPA and PAPA BANANA Lastly, respondent avers that the word "PAPA" was coined after the surname of the
CATSUP have already expired. On the other hand, the mark PAPA KETSARAP person who first created and made use of the mark. Admittedly, while "PAPA" is a
was timely renewed by respondent as shown by the Certificate of Renewal surname, it is more widely known as a term of endearment for one's father.
of Registration issued on September 1, 2006 by the Director of the Bureau Respondent cannot, therefore, claim exclusive ownership over and singular use of
of Trademarks. [the] term. Petitioner was able to explain that it adopted the word "PAPA" in parallel
to the nickname of the founder of Barrio fiesta which is "MAMA CHIT". "PAPA BOY"
Under R.A. No. 8293, as amended by R.A. No. 9150, the duration of a trademark was derived from the nickname of one of the incorporators of herein petitioner, a
registration is 10 years, renewable for periods of 10 years each renewal. The certain Bonifacio Ongpauco, son of Mama Chit.19(Emphasis ours, citation omitted.)
request for renewal must be made within 6 months before or after the expiration of
the registration. Respondent's PAPA mark was not renewed within the period
provided for under RA No. 8293. Its registered term ended on August 11, 2003 but THEORY OF PETITIONER
was reapplied for registration only on April 4, 2005. Meanwhile, the mark PAPA
BANANA CATSUP was registered by respondent only in the Supplemental Register, Thus, petitioner came to this Court, seeking the reversal of the questioned decision
hence, was not provided any protection, x x x. It is noted that the PAPA BANANA and resolution of the Court of Appeals, and the reinstatement of the decision of the
CATSUP label was applied for registration on November 15, 2006, over three years IPO Director General affirming the decision of the IPO-BLA. Petitioner raises the
after the expiration of its registration in the Supplemental Register of the Philippine following grounds:
Patent Office on August 11, 2003. Thus, while petitioner has a point that the
marks PAPA and PAPA BANANA CATSUP have already expired and the latter
I.
having been afforded no protection at all and should not be juxtaposed
with petitioner's trademark, respondent can still use the marks PAPA
KETSARAP and PAPA BANANA CATSUP, it appearing that the Intellectual
The court a quo erred in applying the "holistic test" to determine whether there is
confusing similarity between the contending marks, and in reversing the IPO-BLA
and the Director General's application of the "dominancy test." Petitioner distinguishes this case from Mead Johnson and claims that the ordinary
purchaser of ketchup or lechon sauce is not likely to closely scrutinize each mark as
II. a whole, for the latter is "undiscerningly rash" and usually in a hurry, and cannot be
expected to take note of the smiling hog-like character or the blue ribbon-like
device with the words "Lechon Sauce." Petitioner argues that under the Intellectual
The court a quo erred in holding that there is no likelihood of confusion between the Property Code, it is not necessary for one to colorably imitate the competing
contending marks given that the "PAPA BOY & DEVICE" mark is used on lechon trademark as a whole. It is sufficient that one imitates a "dominant feature" of the
sauce, as opposed to ketchup products. mark to constitute trademark infringement.

Petitioner asserts that as the IPO-BLA and the Director General observed that the
III.
ordinary purchaser is most likely to notice the words "PAPA BOY," which, in turn,
may lead him to believe that there is a connection between respondent's lechon
sauce and petitioner's ketchup products.
The court a quo erred in holding that Petitioner cannot claim exclusive ownership
and use of the "PAPA" mark for its sauce products because "PAPA" is supposedly a
Under the second ground, petitioner argues that the Court of Appeals seemed to be
common term of endearment for one's father.20chanrobleslaw
unmindful that two kinds of confusion may arise from the use of similar or colorable
imitation marks, i.e., confusion of goods (product confusion) and confusion of
Under the first ground, petitioner submitted the following arguments:
business (source or origin confusion). Petitioner claims that it is reasonable to
assume that it may expand its business to producing lechon sauce, inasmuch as it
1. The findings of administrative agencies, if supported by substantial already produces food sauce products and its Articles of Incorporation authorizes it
evidence, are binding upon the courts.21 to do so.

Petitioner alleges that the IPO-BLA recognized that confusion of business may arise
from respondent's use of its "PAPA BOY & DEVICE" mark for lechon sauce products,
Petitioner alleges that the Court of Appeals should have respected the ruling of the and that the Director-General agreed with the IPO-BLA's findings on this issue.
IPO Director General, which was consistent with the ruling of the IPO-BLA and
supported by substantial evidence, instead of substituting its findings of fact for Petitioner asserts that ketchup and lechon sauce are undeniably related goods; that
those of the Director General and the IPO-BLA. they belong to the same class, i.e., Class 30 of the Nice Classifications; that they
serve practically the same purpose, i.e.,to spice up dishes; and that they are sold in
similar bottles in the same shelves in grocery stores. Petitioner argues that the
2. The dominancy test should have been applied to determine if there is Court of Appeals had absolutely no basis for stating that a person who is out to buy
confusing similarity between the competing marks.22 ketchup is not likely to buy lechon sauce by mistake, as this analysis allegedly only
applies to "product confusion" and does not consider confusion of business.
Petitioner alleges that "[t]here equally is actionable confusion when a buyer
Petitioner points out that the Director General and the IPO-BLA found that the purchases Respondent's 'PAPA BOY' lechon sauce believing that the said product is
dominant feature of the competing marks is the word "PAPA" and the minor related to or associated with the famous 'PAPA KETSUP' makers." Petitioner further
additions to respondent's "PAPA BOY & DEVICE" mark do not negate likelihood of alleges that "it is reasonable and likely for a consumer to believe that Respondent's
confusion caused by the latter's use of the dominant word "PAPA." Petitioner claims 'PAPA BOY' lechon sauce originated from or is otherwise connected with Petitioner's
that even compared solely to petitioner's "PAPA KETSARAP" mark (Registration No. line of sauces" and that this is "the precise evil that recognition of confusion of
34681), which is conceded to have been timely renewed and to have never expired, business seeks to prevent."26chanroblesvirtuallawlibrary
respondent's "PAPA BOY & DEVICE" would still create the likelihood of
confusion.23chanroblesvirtuallawlibrary Petitioner avers that "PAPA" is a well-known mark and that it has been in
commercial use as early as 1954 on banana ketchup and similar goods. The "PAPA"
According to petitioner, the Court of Appeals based its decision on Mead Johnson & mark is also registered as a trademark and in commercial use in other parts of the
Co. v. N.V.J. Van Dorp, Ltd.,24 a case decided almost five decades ago, long before world such as the United States of America and the Middle East. Petitioner claims
Republic Act No. 8293 or the 1998 Intellectual Property Code was enforced. Thus, that "[bjeing a trademark that is registered and well-known both locally and
the Court of Appeals erroneously applied the holistic test since given the nature of internationally, Petitioner's 'PAPA' marks cannot be appropriated by another person
the products bearing the competing marks, the dominancy test should have been or entity not only with respect to goods similar to those with respect to which it is
applied. registered, but also with respect to goods which are not similar to those for which
the 'PAPA' marks are registered."27chanroblesvirtuallawlibrary
Petitioner claims that "[k]etchup and lechon sauce are common and inexpensive
household products that are sold in groceries and regularly encountered by the Under the third ground, petitioner claims that the fact that the word "PAPA" is a
ordinary or common purchaser who is not expected to examine, scrutinize, and known term of endearment for fathers does not preclude it from being used as a
compare the details of the competing marks."25cralawred mark to identify goods. Petitioner claims that their mark falls under a type of mark
known as "arbitrary or fanciful marks," which are "marks that bear no logical mark cannot, therefore, be used as basis for the opposition and should in fact, be
relation to the actual characteristics of the products they represent," are "highly denied outrightly.
distinctive and valid," and "are entitled to the greatest
protection."28chanroblesvirtuallawlibrary xxxx

Petitioner claims that the mark "PAPA" falls under this class of arbitrary marks, even A search of the Online Trademark Database of Intellectual Property Office (IPO) will
if "PAPA" is also a common term of endearment for one's father. Petitioner states show that only Registration No. 34681 issued for "PAPA KETSARAP" was properly
that there is no logical connection between one's father and food sauces, such as renewed on August 23, 2005. x x x Clearly, the registrations of "PAPA" and "PAPA
ketchup; thus, with respect to ketchup, food sauces, and their related products, and BANANA CATSUP LABEL" marks under registration nos. 32416 and SR-6282
for the purpose of identifying its products, petitioner claims exclusive ownership of respectively, have already expired when Petitioner filed its opposition proceeding
the term "PAPA" as an arbitrary mark. against Respondent's trademark on December 11, 2006. Having expired, and
therefore, no longer legally existing, the "PAPA" and "PAPA BANANA CATSUP LABEL"
Petitioner alleges that if respondent "has a good faith and proud desire to marks CANNOT BAR the registration of respondent's mark. To allow petitioner's
unmistakably and distinctly identify its lechon sauce product out in the market, it expired marks to prevent respondent's distinct "PAPA BOY & DEVICE" mark from
should have coined a mark that departs from and is distinguished from those of its being registered would be the ultimate absurdity.32chanrobleslaw
competitors." Petitioner claims that respondent, with full knowledge of the fame and
the decades-long commercial use of petitioner's "PAPA" marks, opted for "PAPA BOY Respondent posits that the Court of Appeals did not err in reversing the decisions of
& DEVICE," which obviously is just a "colorable imitation." 29 the administrative agencies, alleging that "[while] it is true that the general rule is
that the factual findings of administrative bodies deserve utmost respect when
THEORY OF RESPONDENT supported by evidence, the same is subject to exceptions,"33 and that the Court of
Appeals had justifiable reasons to disregard the factual finding of the IPO. Here, the
In its Comment,30 respondent claims that petitioner's marks have either expired Court of Appeals wisely identified certain material facts that were overlooked by the
and/or "that no confusing similarity exists between them and respondent's "PAPA IPO-BLA and the IPO Director General which it opined, when correctly appreciated,
BOY & DEVICE' mark." Respondent alleges that under Section 15 of Republic Act No. would alter the result of the case.
166, a renewal application should be filed within six months before the expiration of
the period or within three months after such expiration. Respondent avers that the Respondent alleges that the IPO-BLA erroneously considered petitioner's marks
expiration of the 20-year term for the "PAPA" mark under Registration No. 32416 "PAPA" and "PAPA BANANA CATSUP LABEL" when it applied the dominancy test in
issued on August 11, 1983 was August 11, 2003. The sixth month before August determining whether petitioner's marks are confusingly similar to those of
11, 2003 was February 11, 2003 and the third month after August 11, 2003 was respondent's mark "PAPA BOY & DEVICE."
November 11, 2003. Respondent claims that the application that petitioner filed on
October 28, 2005 was almost two years late. Thus, it was not a renewal application, Respondent avers that the IPO-BLA absurdly took emphasis on the mark "PAPA" to
but could only be considered a new application under the new Trademark Law, with arrive at its decision and did not take into consideration that petitioner's mark was
the filing date reckoned on October 28, 2005. The registrability of the mark under already expired when respondent applied for the registration of its "PAPA BOY &
the new application was examined again, and any certificate issued for the DEVICE" mark. Respondent compares its "PAPA BOY & DEVICE" with the only mark
registration of "PAPA" could not have been a renewal certificate. that respondent allegedly has, "PAPA KETSARAP," and found no confusing similarity
between the two.
As for petitioner's other mark "PAPA BANANA CATSUP LABEL," respondent claims
that its 20-year term also expired on August 11, 2003 and that petitioner only filed We quote below respondent's discussion of its application of the dominancy test to
its application for the new "PAPA LABEL DESIGN" on November 15, 2006. Having the marks in question:
been filed three years beyond the renewal application deadline, petitioner was not
able to renew its application on time, and cannot claim a "continuous existence of Applying the Dominancy test, as correctly emphasized by the Court of Appeals, the
its rights over the 'PAPA BANANA CATSUP LABEL.'" Respondent claims that the two dominant feature in respondent's mark is "PAPA BOY" and not "PAPA". It can be
marks are different from each other and that the registration of one is independent gleaned from respondent's mark that the word "PAPA" was written in the same font,
of the other. Respondent concludes that the certificate of registration issued for style and color as the word "BOY". There is also the presence of a "smiling hog-like
"PAPA LABEL DESIGN" is "not and will never be a renewal character" which is positioned very prominently, both in size and location in said
certificate."31chanroblesvirtuallawlibrary mark, at glance (sic) even more dominant than the word "PAPA BOY".

Respondent also avers as follows: xxxx

1.3. With regard to the two new registrations of petitioner namely: "PAPA" (Reg. On the other hand, the dominant feature in petitioner's mark is "KETSARAP", not
No. 4-2005-010788) and "PAPA LABEL DESIGN" (Reg. No. 4-2006-012364), these "PAPA". Even an ordinary examiner could observe that the word "KETSARAP" in
were filed on October 28, 2005 and November 15, 2006, respectively, under the petitioner's mark is more prominently printed than the word "PAPA".
Intellectual Property Code (RA 8293), which follows the "first to file" rule, and were
obviously filed later than respondent's "PAPA BOY & DEVICE" mark filed on April 4, xxxx
2002. These new marks filed much later than the opposed "PAPA BOY & DEVICE"
In a dominancy test, the prominent feature of the competing trademarks must be products decreases the possibility of deception among
similar to cause confusion or deception, x x x. buyers.37chanroblesvirtuallawlibrary

Verily, respondent's dominant feature "PAPA BOY" and the smiling hog-like Respondent alleges that since petitioner merely included banana catsup as its
character and petitioner's dominant feature "KETSARAP", being the word written in product in its certificate, it cannot claim any further right to the mark "PAPA
a larger font, are neither confusing nor deceiving to the public. In fact, the KETSARAP" on products other than banana catsup. Respondent also alleges that
differences between their dominant marks are very noticeable and conspicuous to petitioner cannot raise "international notoriety of the mark" for the first time on
every purchaser. appeal and that there is no proof that petitioner's mark is internationally well-
known.38chanroblesvirtuallawlibrary
Furthermore, the Supreme Court in Societe des Produits Nestle, S.A. v. Dy [641
Phil. 345], applied the dominancy test by taking into account the aural effects of the Furthermore, respondent argues that petitioner cannot claim exclusive ownership
words and letters contained in the marks in determining the issue of confusing over the use of the word "PAPA," a term of endearment for one's father. Respondent
similarity. Obviously, petitioners' "PAPA KETSARAP" mark does not in any way points out that there are several other valid and active marks owned by third parties
sounds (sic) like respondent's "PAPA BOY" mark. The common prefix "PAPA" does which use the word "PAPA," even in classes of goods similar to those of petitioner's.
not render the marks aurally the same. As discussed above, the dominant feature in Respondent avers that petitioner's claim that its "PAPA" mark is an arbitrary mark is
petitioner's mark is "KETSARAP" and the dominant feature in respondent's mark is belatedly raised in the instant petition, and cannot be allowed because the "PAPA
"PAPA BOY". Thus, the words "KETSARAP" and "PAPA BOY" in petitioner's and KETSARAP" mark would immediately bring the consuming public to thinking that the
respondent's respective marks are obviously different in sound, making "PAPA BOY product involved is catsup and the description of said catsup is "masarap"
& DEVICE" even more distinct from petitioner's "PAPA KETSARAP" (delicious) and due to the logical relation of the petitioner's mark to the actual
mark.35chanrobleslaw product, it being descriptive or generic, it is far from being arbitrary or
fanciful.39chanroblesvirtuallawlibrary
Using the holistic test, respondent further discusses the differences in the marks in
this wise: Lastly, respondent claims that the Court of Appeals correctly ruled that respondent's
product cannot be confused as originating from the petitioner. Since it clearly
Even the use of the holistic test x x x takes into consideration the entirety of the appears in the product label of the respondent that it is manufactured by Barrio
marks in question [to] be considered in resolving confusing similarity. The Fiesta, the public is dutifully informed of the identity of the lechon sauce
differences are again very obvious. Respondent's mark has (1) the word "lechon manufacturer. The Court of Appeals further took into account the fact that
sauce" printed inside a blue ribbon-like device which is illustrated below the word petitioner's products have been in commercial use for
"PAPA BOY"; (2) a prominent smiling hog-like character gesturing a thumbs-up sign decades.40chanroblesvirtuallawlibrary
and wearing a Filipino hat and scarf stands beside the word "PAPA BOY"; and the
word "BARRIO FIESTA" conspicuously displayed above the said trademark which Petitioner, in its Reply41 to respondent's Comment, contends that respondent
leaves no doubt in the consumer's mind on the product that he or she is purchasing. cannot invoke a prior filing date for the "PAPA BOY" mark as against Petitioner's
On the other hand, petitioner's mark is the word "PAPA" enclosed by a cloud on top "PAPA" and "PAPA BANANA CATSUP LABEL" marks, because the latter marks were
of the word "KETSARAP' enclosed by a geometrical figure. still registered when respondent applied for registration of its "PAPA BOY" mark.
Thus, the IPO-BLA and Director General correctly considered them in deciding
xxxx whether the "PAPA BOY" mark should be registered, using the "first to file" rule
under Section 123.1(d) of Republic Act No. 8293, or the Intellectual Property Code
In the instant case, the respective marks are obviously different in color scheme, (IP Code).
logo, spelling, sound, meaning and connotation. Thus, yet again, under the holistic
test there can be no confusion or deception between these marks. Petitioner reiterates its argument that the Court of Appeals erred in applying the
holistic test and that the proper test under the circumstances is the dominancy test,
It also bears stressing that petitioner's "PAPA KETSARAP" mark covers "banana which was correctly applied by the IPO-BLA and the Director General.42
catsup" while respondent's "PAPA BOY & DEVICE" covers "lechon sauce", thereby
obliterating any confusion of products of both marks as they travel different THIS COURT'S RULING
channels of trade. If a consumer is in the market for banana catsup, he or she will
not buy lechon sauce and vice-versa. As a result, the margin of error in the The petition has merit. We find that the Court of Appeals erred in applying the
acquisition of one for the other is simply remote. Lechon sauce which is liver sauce holistic test and in reversing and setting aside the decision of the IPO-BLA and that
is distinct from catsup extracted/ made from banana fruit. The flavor and taste of a of the IPO Director General, both of which rejected respondent's application for the
lechon sauce are far from those of a banana catsup. Lechon sauce is sauce for mark "PAPA BOY & DEVICE."
"lechon" while banana catsup is apparently catsup made from
banana.36chanrobleslaw In Dermaline, Inc. v. Myra Pharmaceuticals, Inc.,43 we defined a trademark as "any
distinctive word, name, symbol, emblem, sign, or device, or any combination
Respondent also contends that "PAPA BOY & DEVICE" mark is not confusingly thereof, adopted and used by a manufacturer or merchant on his goods to identify
similar to petitioner's trademark "PAPA KETSARAP" in terms of appearance, sound, and distinguish them from those manufactured, sold, or dealt by others." We held
spelling and meaning. The difference in nature, usage, taste and appearance of that a trademark is "an intellectual property deserving protection by law."
a) the strength of plaintiff s mark;
The rights of the trademark owner are found in the Intellectual Property Code,
which provides: b) the degree of similarity between the plaintiffs and the defendant's marks;

Section 147. Rights Conferred. - 147.1. The owner of a registered mark shall c) the proximity of the products or services;
have the exclusive right to prevent all third parties not having the owner's consent
from using in the course of trade identical or similar signs or containers for goods or d) the likelihood that the plaintiff will bridge the gap;
services which are identical or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of confusion. In case of the e) evidence of actual confusion;
use of an identical sign for identical goods or services, a likelihood of confusion shall
be presumed. f) the defendant's good faith in adopting the mark;

Section 168. Unfair Competition, Rights, Regulation and Remedies. - g) the quality of defendant's product or service; and/or h) the sophistication of the
168.1. A person who has identified in the mind of the public the goods he buyers.
manufactures or deals in, his business or services from those of others, whether or
not a registered mark is employed, has a property right in the goodwill of the said "Colorable imitation" denotes such a close or ingenious imitation as to be calculated
goods, business or services so identified, which will be protected in the same to deceive ordinary persons, or such a resemblance to the original as to deceive an
manner as other property rights. ordinary purchaser giving such attention as a purchaser usually gives, as to cause
him to purchase the one supposing it to be the other.
The guideline for courts in determining likelihood of confusion is found in A.M. No.
10-3-10-SC, or the Rules of Procedure for Intellectual Property Rights Cases, Rule SECTION 5. Determination of Similar and Dissimilar Goods or Services. — Goods or
18, which provides: services may not be considered as being similar or dissimilar to each other on the
ground that, in any registration or publication by the Office, they appear in different
classes of the Nice Classification.
RULE 18
In this case, the findings of fact of the highly technical agency, the Intellectual
Property Office, which has the expertise in this field, should have been given great
Evidence in Trademark Infringement and Unfair Competition Cases SECTION
weight by the Court of Appeals. As we held in Berris Agricultural Co., Inc. v.
1.Certificate of Registration. — A certificate of registration of a mark shall be prima
Abyadang44:
facieevidence of:

R.A. No. 8293 defines a "mark" as any visible sign capable of distinguishing the
a) the validity of the registration; b) the registrant's ownership of the mark; and
goods (trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods. It also defines a "collective mark" as any
c) the registrant's exclusive right to use the same in connection with the goods or
visible sign designated as such in the application for registration and capable of
services and those that are related thereto specified in the certificate.
distinguishing the origin or any other common characteristic, including the quality of
goods or services of different enterprises which use the sign under the control of the
xxxx
registered owner of the collective mark.
SECTION 3. Presumption of Likelihood of Confusion. — Likelihood of confusion shall
On the other hand, R.A. No. 166 defines a "trademark" as any distinctive word,
be presumed in case an identical sign or mark is used for identical goods or
name, symbol, emblem, sign, or device, or any combination thereof, adopted and
services.
used by a manufacturer or merchant on his goods to identify and distinguish them
from those manufactured, sold, or dealt by another. A trademark, being a special
SECTION 4. Likelihood of Confusion in Other Cases. — In determining whether one
property, is afforded protection by law. But for one to enjoy this legal protection,
trademark is confusingly similar to or is a colorable imitation of another, the court
legal protection ownership of the trademark should rightly be established.
must consider the general impression of the ordinary purchaser, buying under the
normally prevalent conditions in trade and giving the attention such purchasers
The ownership of a trademark is acquired by its registration and its actual use by
usually give in buying that class of goods. Visual, aural, connotative comparisons
the manufacturer or distributor of the goods made available to the purchasing
and overall impressions engendered by the marks in controversy as they are
public. Section 122 of R.A.. No. 8293 provides that the rights in a mark shall be
encountered in the realities of the marketplace must be taken into account. Where
acquired by means of its valid registration with the IPO. A certificate of registration
there are both similarities and differences in the marks, these must be weighed
of a mark, once issued, constitutes prima facie evidence of the validity of the
against one another to see which predominates.
registration, of the registrant's ownership of the mark, and of the registrant's
exclusive right to use the same in connection with the goods or services and those
In determining likelihood of confusion between marks used on non-identical goods
that are related thereto specified in the certificate. R.A. No. 8293, however, requires
or services, several factors may be taken into account, such as, but not limited to:
the applicant for registration or the registrant to file a declaration of actual use
(DAU) of the mark, with evidence to that effect, within three (3) years from the
filing of the application for registration; otherwise, the application shall be refused impressions created by the marks on the buyers of goods, giving little weight to
or the mark shall be removed from the register. In other words, the prima facie factors like prices, quality, sales outlets, and market segments.
presumption brought about by the registration of a mark may be challenged and
overcome, in an appropriate action, by proof of the nullity of the registration or of xxxx
non-use of the mark, except when excused. Moreover, the presumption may
likewise be defeated by evidence of prior use by another person, i.e., it will Relative to the question on confusion of marks and trade names, jurisprudence has
controvert a claim of legal appropriation or of ownership based on registration by a noted two (2) types of confusion, viz.: (1) confusion of goods (product confusion),
subsequent user. This is because a trademark is a creation of use and belongs to where the ordinarily prudent purchaser would be induced to purchase one product
one who first used it in trade or commerce. in the belief that he was purchasing the other; and (2) confusion of business
(source or origin confusion), where, although the goods of the parties are different,
The determination of priority of use of a mark is a question of fact. Adoption of the the product, the mark of which registration is applied for by one party, is such as
mark alone does not suffice. One may make advertisements, issue circulars, might reasonably be assumed to originate with the registrant of an earlier product,
distribute price lists on certain goods, but these alone will not inure to the claim of and the public would then be deceived either into that belief or into the belief that
ownership of the mark until the goods bearing the mark are sold to the public in the there is some connection between the two parties, though inexistent.
market. Accordingly, receipts, sales invoices, and testimonies of witnesses as
customers, or orders of buyers, best prove the actual use of a mark in trade and Applying the Dominancy Test to the case at bar, this Court finds that the use of the
commerce during a certain period of time. stylized "S" by respondent in its Strong rubber shoes infringes on the mark already
registered by petitioner with the IPO. While it is undisputed that petitioner's stylized
xxxx "S" is within an oval design, to this Court's mind, the dominant feature of the
trademark is the stylized "S," as it is precisely the stylized "S" which catches the
Verily, the protection of trademarks as intellectual property is intended not only to eye of the purchaser. Thus, even if respondent did not use an oval design, the mere
preserve the goodwill and reputation of the business established on the goods fact that it used the same stylized "S", the same being the dominant feature of
bearing the mark through actual use over a period of time, but also to safeguard petitioner's trademark, already constitutes infringement under the Dominancy Test.
the public as consumers against confusion on these goods. On this matter of
particular concern, administrative agencies, such as the IPO, by reason of This Court cannot agree with the observation of the CA that the use of the letter "S"
their special knowledge and expertise over matters falling under their could hardly be considered as highly identifiable to the products of petitioner alone.
jurisdiction, are in a better position to pass judgment thereon. Thus, their The CA even supported its conclusion by stating that the letter "S" has been used in
findings of fact in that regard are generally accorded great respect, if not so many existing trademarks, the most popular of which is the trademark "S"
finality by the courts, as long as they are supported by substantial enclosed by an inverted triangle, which the CA says is identifiable to Superman.
evidence, even if such evidence might not be overwhelming or even Such reasoning, however, misses the entire point, which is that respondent had
preponderant. It is not the task of the appellate court to weigh once more used a stylized "S," which is the same stylized "S" which petitioner has a registered
the evidence submitted before the administrative body and to substitute its trademark for. The letter "S" used in the Superman logo, on the other hand, has a
own judgment for that of the administrative agency in respect to block-like tip on the upper portion and a round elongated tip on the lower portion.
sufficiency of evidence. (Emphasis added, citations omitted.) Accordingly, the comparison made by the CA of the letter "S" used in the Superman
trademark with petitioner's stylized "S" is not appropriate to the case at bar.
In trademark controversies, each case must be scrutinized according to its peculiar
circumstances, such that jurisprudential precedents should only be made to apply if Furthermore, respondent did not simply use the letter "S," but it appears to this
they are specifically in point.45The cases discussed below are mentioned only for Court that based on the font and the size of the lettering, the stylized "S" utilized by
purposes of lifting the applicable doctrines, laws, and concepts, but not for their respondent is the very same stylized "S" used by petitioner; a stylized "S" which is
factual circumstances, because of the uniqueness of each case in controversies such unique and distinguishes petitioner's trademark. Indubitably, the likelihood of
as this one. confusion is present as purchasers will associate the respondent's use of the stylized
"S" as having been authorized by petitioner or that respondent's product is
There are two tests used in jurisprudence to determine likelihood of confusion, connected with petitioner's business.
namely the dominancy test used by the IPO, and the holistic test adopted by the
Court of Appeals. In Skechers, U.S.A., Inc. v. Inter Pacific Industrial Trading XXXX
Corp.,46 we held:
While there may be dissimilarities between the appearances of the shoes, to this
The essential element of infringement under R.A. No. 8293 is that the infringing Court's mind such dissimilarities do not outweigh the stark and blatant similarities in
mark is likely to cause confusion. In determining similarity and likelihood of their general features, x x x.
confusion, jurisprudence has developed tests — the Dominancy Test and the Holistic
or Totality Test. The Dominancy Test focuses on the similarity of the prevalent or Based on the foregoing, this Court is at a loss as to how the RTC and the CA, in
dominant features of the competing trademarks that might cause confusion, applying the holistic test, ruled that there was no colorable imitation, when it cannot
mistake, and deception in the mind of the purchasing public. Duplication or imitation be any more clear and apparent to this Court that there is colorable imitation. The
is not necessary; neither is it required that the mark sought to be registered dissimilarities between the shoes are too trifling and frivolous that it is indubitable
suggests an effort to imitate. Given more consideration are the aural and visual that respondent's products will cause confusion and mistake in the eyes of the
public. Respondent's shoes may not be an exact replica of petitioner's shoes, but on the plaintiffs reputation." The other is the confusion of business: "Here though
the features and overall design are so similar and alike that confusion is highly the goods of the parties are different, the defendant's product is such as might
likely. reasonably be assumed to originate with the plaintiff, and the public would then be
deceived either into that belief or into the belief that there is some connection
xxxx between the plaintiff and defendant which, in fact, does not exist."

Neither can the difference in price be a complete defense in trademark There are two tests to determine likelihood of confusion: the dominancy test and
infringement. InMcDonald's Corporation v. L.C. Big Mak Burger, Inc., this Court holistic test. The dominancy test focuses on the similarity of the main, prevalent or
held: essential features of the competing trademarks that might cause confusion.
Infringement takes place when the competing trademark contains the essential
Modern law recognizes that the protection to which the owner of a trademark is features of another. Imitation or an effort to imitate is unnecessary. The question is
entitled is not limited to guarding his goods or business from actual market whether the use of the marks is likely to cause confusion or deceive purchasers.
competition with identical or similar products of the parties, but extends to all cases
in which the use by a junior appropriator of a trade-mark or trade-name is likely to xxxx
lead to a confusion of source, as where prospective purchasers would be misled into
thinking that the complaining party has extended his business into the field (see In cases involving trademark infringement, no set of rules can be deduced. Each
148 ALR 56et seq; 53 Am. Jur. 576) or is in any way connected with the activities of case must be decided on its own merits. Jurisprudential precedents must be studied
the infringer; or when it forestalls the normal potential expansion of his business (v. in the light of the facts of each particular case. In McDonald's Corporation v. MacJoy
148 ALR 77, 84; 52 Am. Jur. 576, 577). x x x. Fastfood Corporation, the Court held:

Indeed, the registered trademark owner may use its mark on the same or similar In trademark cases, particularly in ascertaining whether one trademark is
products, in different segments of the market, and at different price levels confusingly similar to another, no set rules can be deduced because each case must
depending on variations of the products for specific segments of the market. The be decided on its merits. In such cases, even more than in any other litigation,
purchasing public might be mistaken in thinking that petitioner had ventured into a precedent must be studied in the light of the facts of the particular case. That is the
lower market segment such that it is not inconceivable for the public to think that reason why in trademark cases, jurisprudential precedents should be applied only to
Strong or Strong Sport Trail might be associated or connected with petitioner's a case if they are specifically in point.
brand, which scenario is plausible especially since both petitioner and respondent
manufacture rubber shoes. In the light of the facts of the present case, the Court holds that the dominancy test
is applicable. In recent cases with similar factual milieus, the Court has consistently
Withal, the protection of trademarks as intellectual property is intended not only to applied the dominancy test, x x x.
preserve the goodwill and reputation of the business established on the goods
bearing the mark through actual use over a period of time, but also to safeguard xxxx
the public as consumers against confusion on these goods. While respondent's
shoes contain some dissimilarities with petitioner's shoes, this Court cannot close its In McDonald's Corporation v. MacJoy Fastfood Corporation, the Court applied the
eye to the fact that for all intents and purpose, respondent had deliberately dominancy test in holding that "MACJOY" is confusingly similar to "MCDONALD'S."
attempted to copy petitioner's mark and overall design and features of the shoes. The Court held:
Let it be remembered, that defendants in cases of infringement do not normally
copy but only make colorable changes. The most successful form of copying is to While we agree with the CA's detailed enumeration of differences between the two
employ enough points of similarity to confuse the public, with enough points of (2) competing trademarks herein involved, we believe that the holistic test is not
difference to confuse the courts. (Citations omitted.) the one applicable in this case, the dominancy test being the one more suitable. In
recent cases with a similar factual milieu as here, the Court has consistently used
The Court discussed the concept of confusion of business in the case of Societe Des and applied the dominancy test in determining confusing similarity or likelihood of
Produits Nestle, S.A. v. Dy, Jr.,47 as quoted below: confusion between competing trademarks.

Among the elements, the element of likelihood of confusion is the gravamen of xxxx
trademark infringement. There are two types of confusion in trademark
infringement: confusion of goods and confusion of business. In Sterling Products Applying the dominancy test to the instant case, the Court finds that herein
International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, the Court petitioner's "MCDONALD'S" and respondent's "MACJOY" marks are confusingly
distinguished the two types of confusion: similar with each other that an ordinary purchaser can conclude an association or
relation between the marks.
Callman notes two types of confusion. The first is the confusion of goods "in which
event the ordinarily prudent purchaser would be induced to purchase one product in To begin with, both marks use the corporate "M" design logo and the prefixes "Me"
the belief that he was purchasing the other." In which case, "defendant's goods are and/or "Mac" as dominant features, x x x.
then bought as the plaintiffs, and the poorer quality of the former reflects adversely
For sure, it is the prefix "Me," and abbreviation of "Mac," which visually and aurally
catches the attention of the consuming public. Verily, the word "MACJOY" attracts dominancy test in holding that "FLAVOR MASTER" is confusingly similar to "MASTER
attention the same way as did "McDonalds," "Mac Fries," "Me Spaghetti," "McDo," ROAST" and "MASTER BLEND." The Court held:
"Big Mac" and the rest of the MCDONALD'S marks which all use the prefixes Me
and/or Mac. While this Court agrees with the Court of Appeals' detailed enumeration of
differences between the respective trademarks of the two coffee products, this
Besides and most importantly, both trademarks are used in the sale of fastfood Court cannot agree that totality test is the one applicable in this case. Rather, this
products. Indisputably, the respondent's trademark application for the "MACJOY & Court believes that the dominancy test is more suitable to this case in light of its
DEVICE" trademark covers goods under Classes 29 and 30 of the International peculiar factual milieu.
Classification of Goods, namely, fried chicken, chicken barbeque, burgers, fries,
spaghetti, etc. Likewise, the petitioner's trademark registration for the MCDONALD'S Moreover, the totality or holistic test is contrary to the elementary postulate of the
marks in the Philippines covers goods which are similar if not identical to those law on trademarks and unfair competition that confusing similarity is to be
covered by the respondent's application. determined on the basis of visual, aural, connotative comparisons and overall
impressions engendered by the marks in controversy as they are encountered in the
In McDonald's Corporation v. L.C. Big Mak Burger, Inc., the Court applied the realities of the marketplace. The totality or holistic test only relies on visual
dominancy test in holding that "BIG MAK" is confusingly similar to "BIG MAC." The comparison between two trademarks whereas the dominancy test relies not only on
Court held: the visual but also on the aural and connotative comparisons and overall
impressions between the two trademarks.
This Court x x x has relied on the dominancy test rather than the holistic test. The
dominancy test considers the dominant features in the competing marks in For this reason, this Court agrees with the BPTTT when it applied the test of
determining whether they are confusingly similar. Under the dominancy test, courts dominancy and held that:
give greater weight to the similarity of the appearance of the product arising from
the adoption of the dominant features of the registered mark, disregarding minor xxxx
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. The scope of protection afforded to registered trademark owners is not
limited to protection from infringers with identical goods. The scope of
Thus, in the 1954 case of Co Tiong Sa v. Director of Patents, the Court ruled: protection extends to protection from infringers with related goods, and to
market areas that are the normal expansion of business of the registered
x x x It has been consistently held that the question of infringement of a trademark trademark owners. Section 138 of R.A. No. 8293 states:
is to be determined by the test of dominancy. Similarity in size, form and color,
while relevant, is not conclusive. If the competing trademark contains the main or Certificates of Registration. — A certificate of registration of a mark shall be prima
essential or dominant features of another, and confusion and deception is likely to facie evidence of validity of the registration, the registrant's ownership of the mark,
result, infringement takes place. Duplication or imitation is not necessary; nor is it and of the registrant's exclusive right to use the same in connection with the goods
necessary that the infringing label should suggest an effort to imitate. (G. Heilman or services and those that are related thereto specified in the certificate, x x x.
Brewing Co. vs. 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 In Mighty Corporation v. E. & J. Gallo Winery, the Court held that, "Non-competing
trademarks is whether the use of the marks involved would be likely to cause goods may be those which, though they are not in actual competition, are so related
confusion or mistakes in the mind of the public or deceive purchasers. (Auburn to each other that it can reasonably be assumed that they originate from one
Rubber Corporation vs. Honover Rubber Co.,107 F. 2d 588; x x x) manufacturer, in which case, confusion of business can arise out of the use of
similar marks." In that case, the Court enumerated factors in determining whether
xxxx goods are related: (1) classification of the goods; (2) nature of the goods; (3)
descriptive properties, physical attributes or essential characteristics of the goods,
The test of dominancy is now explicitly incorporated into law in Section 155.1 of the with reference to their form, composition, texture or quality; and (4) style of
Intellectual Property Code which defines infringement as the "colorable imitation of distribution and marketing of the goods, including how the goods are displayed and
a registered mark x x x or a dominant featurethereof." sold.

Applying the dominancy test, the Court finds that respondents' use of the "Big Mak" xxxx
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 xxx. However, as the registered owner of the "NAN" mark, Nestle should be
in "Big Mac." Third, the first two letters in "Mak" are the same as the first two free to use its mark on similar products, in different segments of the
letters in "Mac." Fourth, the last letter "Mak" while a "k" sounds the same as "c" market, and at different price levels. In McDonald's Corporation v. L.C. Big Mak
when the word "Mak" is pronounced. Fifth, in Filipino, the letter "k" replaces "c" in Burger, Inc., the Court held that the scope of protection afforded to registered
spelling, thus "Caloocan" is spelled "Kalookan." trademark owners extends to market areas that are the normal expansion of
business:
In Societe Des Produits Nestle, S.A. v. Court of Appeals, the Court applied the
xxxx the product, the mark of which registration is applied for by one party, is such as
might reasonably be assumed to originate with the registrant of an earlier product,
Even respondent's use of the "Big Mak" mark on non-hamburger food products and the public would then be deceived either into that belief or into the belief that
cannot excuse their infringement of petitioners' registered mark, otherwise there is some connection between the two parties, though inexistent.
registered marks will lose their protection under the law.
xxxx
The registered trademark owner may use his mark on the same or similar
products, in different segments of the market, and at different price levels We agree with the findings of the IPO. As correctly applied by the IPO in this case,
depending on variations of the products for specific segments of the while there are no set rules that can be deduced as what constitutes a dominant
market. The Court has recognized that the registered trademark owner feature with respect to trademarks applied for registration; usually, what are taken
enjoys protection in product and market areas that are the normal into account are signs, color, design, peculiar shape or name, or some special,
potential expansion of his business. Thus, the Court has declared: easily remembered earmarks of the brand that readily attracts and catches the
attention of the ordinary consumer.
Modern law recognizes that the protection to which the owner of a trademark is
entitled is not limited to guarding his goods or business from actual market xxxx
competition with identical or similar products of the parties, but extends to all cases
in which the use by a junior appropriator of a trade-mark or trade-name is likely to Further, Dermaline's stance that its product belongs to a separate and different
lead to a confusion of source, as where prospective purchasers would be misled into classification from Myra's products with the registered trademark does not eradicate
thinking that the complaining party has extended his business into the field (see the possibility of mistake on the part of the purchasing public to associate the
148 ALR 56 et sq; 53 Am. Jur. 576) or is in any way connected with the activities of former with the latter, especially considering that both classifications pertain to
the infringer; or when it forestalls the normal potential expansion of his business (v. treatments for the skin.
148 ALR, 77, 84; 52 Am. Jur. 576, 577). (Emphases supplied, citations omitted.)
Indeed, the registered trademark owner may use its mark on the same or similar
Again, this Court discussed the dominancy test and confusion of business products, in different segments of the market, and at different price levels
in Dermaline, Inc. v. Myra Pharmaceuticals, Inc.,48 and we quote: depending on variations of the products for specific segments of the market. The
Court is cognizant that the registered trademark owner enjoys protection in product
and market areas that are the normal potential expansion of his business. Thus, we
The Dominancy Test focuses on the similarity of the prevalent features of the
have held —
competing trademarks that might cause confusion or deception. It is applied when
the trademark sought to be registered contains the main, essential and dominant
features of the earlier registered trademark, and confusion or deception is likely to Modern law recognizes that the protection to which the owner of a trademark is
result. Duplication or imitation is not even required; neither is it necessary that the entitled is not limited to guarding his goods or business from actual market
label of the applied mark for registration should suggest an effort to imitate. The competition with identical or similar products of the parties, but extends to all cases
important issue is whether the use of the marks involved would likely cause in which the use by a junior appropriator of a trade-mark or trade-name is likely to
confusion or mistake in the mind of or deceive the ordinary purchaser, or one who is lead to a confusion of source, as where prospective purchasers would be
accustomed to buy, and therefore to some extent familiar with, the goods in misled into thinking that the complaining party has extended his business
question. Given greater consideration are the aural and visual impressions created into the field (see 148 ALR 56 et seq; 53 Am Jur. 576) or is in any way connected
by the marks in the public mind, giving little weight to factors like prices, quality, with the activities of the infringer; or when it forestalls the normal potential
sales outlets, and market segments. The test of dominancy is now explicitly expansion of his business (v. 148 ALR 77, 84; 52 Am. Jur. 576, 577).
incorporated into law in Section 155.1 of R.A. No. 8293 which provides —
Thus, the public may mistakenly think that Dermaline is connected to or associated
with Myra, such that, considering the current proliferation of health and beauty
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable
products in the market, the purchasers would likely be misled that Myra has already
imitation of a registered mark or the same container or a dominant
expanded its business through Dermaline from merely carrying pharmaceutical
feature thereof in connection with the sale, offering for sale, distribution,
topical applications for the skin to health and beauty services.
advertising of any goods or services including other preparatory steps necessary to
carry out the sale of any goods or services on or in connection with which such use
Verily, when one applies for the registration of a trademark or label which is almost
is likely to cause confusion, or to cause mistake, or to deceive x x x.
the same or that very closely resembles one already used and registered by
another, the application should be rejected and dismissed outright, even without
xxxx
any opposition on the part of the owner and user of a previously registered label or
trademark. This is intended not only to avoid confusion on the part of the public, but
Relative to the question on confusion of marks and trade names, jurisprudence has
also to protect an already used and registered trademark and an established
noted two (2) types of confusion, viz.: (1) confusion of goods (product confusion),
goodwill. (Citations omitted.)
where the ordinarily prudent purchaser would be induced to purchase one product
in the belief that he was purchasing the other; and (2) confusion of business
Section 123. l(d) of the IP Code provides:
(source or origin confusion), where, although the goods of the parties are different,
A mark cannot be registered if it: impressions engendered by the marks in controversy as they are encountered in the
realities of the marketplace are the main considerations (McDonald's Corporation, et
xxxx al., v. L. C. Big Mak Burger, Inc., et al., G. R. No. 143993, August 18, 2004; Societe
Des Produits Nestle, S. A." et al. v. Court of Appeals, et al., G. R. No. 112012, April
(d) Is identical with a registered mark belonging to a different proprietor or a mark 4, 2001). If the competing trademark contains the main or essential or dominant
with an earlier filing or priority date, in respect of: features of another, and confusion and deception is likely to result, infringement
takes place. (Lim Hoa v. Director of Patents, 100 Phil. 214 [1956]); Co Tiong Sa v.
Director of Patents, et al., G. R. No. L-5378, May 24, 1954). Duplication or imitation
i. The same goods or services, or
is not necessary; nor is it necessary that the infringing label should suggest an
effort to imitate (Lim Hoa v. Director of Patents, supra, and Co Liong Sa v. Director
ii. Closely related goods or services, or of Patents, supra). Actual confusion is not required: Only likelihood of confusion on
the part of the buying public is necessary so as to render two marks confusingly
iii. If it nearly resembles such a mark as to be likely to deceive or cause similar so as to deny the registration of the junior mark (Sterling Products
confusion[.] International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, 137 Phil. 838
[1969]).

A scrutiny of petitioner's and respondent's respective marks would show that the As to the first issue of whether PAPA BOY is confusingly similar to Opposer's PAPA
IPO-BLA and the IPO Director General correctly found the word "PAPA" as the mark, this Bureau rules in the affirmative.
dominant feature of petitioner's mark "PAPA KETSARAP." Contrary to respondent's
contention, "KETSARAP" cannot be the dominant feature of the mark as it is merely The records bear the following:
descriptive of the product. Furthermore, it is the "PAPA" mark that has been in
commercial use for decades and has established awareness and goodwill among 1. Registration No. 32416 issued for the mark "PAPA" under Class 29 goods was
consumers. deemed expired as of February 11, 2004 (Exhibit "A" attached to the VERIFIED
NOTICE OF OPPOSITION). Application Serial No. 4- 2005-010788 was filed on
We likewise agree with the IPO-BLA that the word "PAPA" is also the dominant October 28, 2005 for the same mark "PAPA" for Class 30 goods and Registration No.
feature of respondent's "PAPA BOY & DEVICE" mark subject of the application, such 42005010788 was issued on March 19,2007;
that "the word 'PAPA' is written on top of and before the other words such that it is
the first word/figure that catches the eyes."49 Furthermore, as the IPO Director 2. Opposer was issued for the mark "PAPA BANANA CATSUP LABEL" on August 11,
General put it, the part of respondent's mark which appears prominently to the eyes 1983 Registration No. SR-6282 for Class 30 goods in the Supplemental Register,
and ears is the phrase "PAPA BOY" and that is what a purchaser of respondent's which registration expired in 2003. Application Serial No. 4-2006-012364 was filed
product would immediately recall, not the smiling hog. for the mark "PAPA LABEL DESIGN" for Class 30 goods on November 15, 2006, and
Registration No. 42006012364 was issued on April 30, 2007; and
We quote the relevant portion of the IPO-BLA decision on this point below:
3. Lastly, Registration No. 34681 for the mark "PAPA KETSARAP" for Class 30 goods
was issued on August 23, 1985 and was renewed on August 23, 2005.
A careful examination of Opposer's and Respondent-applicant's respective marks
shows that the word "PAPA" is the dominant feature: In Opposer's marks, the word
Though Respondent-applicant was first to file the subject application on April 04,
"PAPA" is either the mark by itself or the predominant word considering its stylized
2002 vis-a-vis the mark "PAPA" the filing date of which is reckoned on October 28,
font and the conspicuous placement of the word "PAPA" before the other words. In
2005, and the mark "PAPA LABEL DESIGN" the filing date of which is reckoned on
Respondent-applicant's mark, the word "PAPA" is written on top of and before the
November 15, 2006, Opposer was able to secure a registration for the mark "PAPA
other words such that it is the first word figure that catches the eyes. The visual and
KETSARAP" on August 23, 1985 considering that Opposer was the prior registrant
aural impressions created by such dominant word "PAPA" at the least is that the
and that its renewal application timely filed on August 23, 2005.
respective goods of the parties originated from the other, or that one party has
permitted or has been given license to the other to use the word "PAPA" for the
xxxx
other party's product, or that there is a relation/connection between the two parties
when, in fact, there is none. This is especially true considering that the products of
Pursuant to [Section 123.l(d) of the IP Code], the application for registration of the
both parties belong to the same class and are closely related: Catsup and lechon
subject mark cannot be allowed considering that Opposer was earlier registrant of
sauce or liver sauce are both gravy-like condiments used to spice up dishes. Thus,
the marks PAPA and PAPA KETSARAP which registrations were timely renewed upon
confusion of goods and of business may likely result.
its expiration. Respondent-applicant's mark "PAPA BOY & DEVICE" is confusingly
similar to Opposer's mark "PAPA KETSARAP" and is applied to goods that are related
Under the Dominancy Test, the dominant features of the competing marks are
to Opposer's goods, but Opposer's mark "PAPA KETSARAP" was registered on
considered in determining whether these competing marks are confusingly similar.
August 23, 1985 per Certificate of Registration No. 34681, which registration was
Greater weight is given to the similarity of the appearance of the products arising
renewed for a period of 10 years counted from August 23, 2005 per Certificate of
from the adoption of the dominant features of the registered mark, disregarding
Renewal of Registration No. 34681 issued on August 23, 2005. To repeat, Opposer
minor differences. The visual, aural, connotative, and overall comparisons and
has already registered a mark which Respondent-applicant's mark nearly resembles
as to likely deceive or cause confusion as to origin and which is applied to goods to
which respondent-applicant's goods under Class 30 are closely related.

Section 138 of the IP Code provides that a certificate of registration of a mark


is prima facie evidence of the validity of the registration, the registrant's ownership
of the mark, and of the registrant's exclusive right to use the same in connection
with the goods and those that are related thereto specified in the certificate.

We agree that respondent's mark cannot be registered. Respondent's mark is


related to a product, lechon sauce, an everyday all-purpose condiment and sauce,
that is not subjected to great scrutiny and care by the casual purchaser, who knows
from regular visits to the grocery store under what aisle to find it, in which bottle it
is contained, and approximately how much it costs. Since petitioner's product,
catsup, is also a household product found on the same grocery aisle, in similar
packaging, the public could think that petitioner had expanded its product mix to
include lechon sauce, and that the "PAPA BOY" lechon sauce is now part of the
"PAPA" family of sauces, which is not unlikely considering the nature of business
that petitioner is in. Thus, if allowed registration, confusion of business may set in,
and petitioner's hard-earned goodwill may be associated to the newer product
introduced by respondent, all because of the use of the dominant feature of
petitioner's mark on respondent's mark, which is the word "PAPA." The words
"Barrio Fiesta" are not included in the mark, and although printed on the label of
respondent's lechon sauce packaging, still do not remove the impression that "PAPA
BOY" is a product owned by the manufacturer of "PAPA" catsup, by virtue of the use
of the dominant feature. It is possible that petitioner could expand its business to
include lechon sauce, and that would be well within petitioner's rights, but the
existence of a "PAPA BOY" lechon sauce would already eliminate this possibility and
deprive petitioner of its rights as an owner of a valid mark included in the
Intellectual Property Code.

The Court of Appeals likewise erred in finding that "PAPA," being a common term of
endearment for one's father, is a word over which petitioner could not claim
exclusive use and ownership. The Merriam-Webster dictionary defines "Papa" simply
as "a person's father." True, a person's father has no logical connection with catsup
products, and that precisely makes "PAPA" as an arbitrary mark capable of being
registered, as it is distinctive, coming from a family name that started the brand
several decades ago. What was registered was not the word "Papa" as defined in
the dictionary, but the word "Papa" as the last name of the original owner of the
brand. In fact, being part of several of petitioner's marks, there is no question that
the IPO has found "PAPA" to be a registrable mark.

Respondent had an infinite field of words and combinations of words to choose from
to coin a mark for its lechon sauce. While its claim as to the origin of the term
"PAPA BOY" is plausible, it is not a strong enough claim to overrule the rights of the
owner of an existing and valid mark. Furthermore, this Court cannot equitably allow
respondent to profit by the name and reputation carefully built by petitioner without
running afoul of the basic demands of fair play.51

WHEREFORE, we hereby GRANT the petition. We SET ASIDE the June 23, 2011
Decision and the October 4, 2011 Resolution of the Court of Appeals in CA-G.R. SP
No. 107570, and REINSTATE the March 26, 2008 Decision of the Bureau of Legal
Affairs of the Intellectual Property Office (IPO-BLA) and the January 29,
2009 Decision of the Director General of the IPO.

SO ORDERED.