A. CONSITUTION
The State shall recognize, respect, and protect the rights of indigenous
 ARTICLE XII National Economy and Patrimony
SECTION 6. The use of property bears a social function, and all economic agents shall
contribute to the common good. Individuals and private groups, including corporations,
cooperatives, and similar collective organizations, shall have the right to own, establish,
and operate economic enterprises, subject to the duty of the State to promote
distributive justice and to intervene when the common good so demands.
SECTION 14. The sustained development of a reservoir of national talents consisting of
Filipino scientists, entrepreneurs, professionals, managers, high-level technical
manpower and skilled workers and craftsmen in all fields shall be promoted by the State.
The State shall encourage appropriate technology and regulate its transfer for the
national benefit.
The practice of all professions in the Philippines shall be limited to Filipino citizens, save
in cases prescribed by law.
 ARTICLE XIV Education, Science and Technology, Arts, Culture, and Sports Science and
Technology
SECTION 10. Science and technology are essential for national development and progress.
The
State shall give priority to research and development, invention, innovation, and their
utilization; and to science and technology education, training, and services. It shall
support indigenous, appropriate, and self-reliant scientific and technological capabilities,
and their application to the country’s productive systems and national life.
SECTION 11. The Congress may provide for incentives, including tax deductions, to
encourage private participation in programs of basic and applied scientific research.
Scholarships, grants in aid, or other forms of incentives shall be provided to deserving
science students, researchers, scientists, inventors, technologists, and specially gifted
citizens.
SECTION 12. The State shall regulate the transfer and promote the adaptation of
technology from all sources for the national benefit. It shall encourage the widest
participation of private groups, local governments, and community-based organizations
in the generation and utilization of science and technology.
SECTION 13. The State shall protect and secure the exclusive rights of scientists, inventors,
artists, and other gifted citizens to their intellectual property and creations, particularly
when beneficial to the people, for such period as may be provided by law.
Arts and Culture
SECTION 14. The State shall foster the preservation, enrichment, and dynamic evolution
of a
Filipino national culture based on the principle of unity in diversity in a climate of free
artistic and intellectual expression.
SECTION 15. Arts and letters shall enjoy the patronage of the State. The State shall
conserve, promote, and popularize the nation’s historical and cultural heritage and
resources, as well as artistic creations.
SECTION 16. All the country’s artistic and historic wealth constitutes the cultural treasure
of the nation and shall be under the protection of the State which may regulate its
disposition.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
SECTION 17.
cultural communities to preserve and develop their cultures, traditions, and institutions.
It shall consider these rights in the formulation of national plans and policies.
SECTION 18. (1) The State shall ensure equal access to cultural opportunities through the
educational system, public or private cultural entities, scholarships, grants and other
incentives, and community cultural centers, and other public venues.
(2) The State shall encourage and support researches and studies on the arts and culture.
B. Definition of trademarks
Section 121.1, IPC - "Mark" means any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a stamped or
marked container of goods.
1. Distilleria Washington v. CA, 263 SCRA 303, G.R. No. 120961 [17 October 1996]
ISSUE: WON replevin can prosper? (NO)
La Tondeña Distillers, Inc. ("LTDI") filed a complaint against Distilleria Washington
("Washington") for replevin with damages. La Tondena sought to seize 350 c.c. white
flint bottles bearing the blown-in marks of "La Tondeña Inc." and "Ginebra San
Miguel" it allegedly owned. These bottles were allegedly being used by Washington
for its own "Gin Seven" products without the consent of LTDI.
LTDI asserted that, being the owner and registrant of the bottles, it was entitled to
the protection so extended by R.A. 623, notwithstanding its sale of the gin product 1
contained in said bottles.
Washington countered that R.A. No. 623 should not apply to gin, an alcoholic
beverage which is unlike that of "soda water, mineral or aerated water, ciders, milks,
cream, or other lawful beverages" mentioned in the law, and in any case, ownership
of the bottles should be held lawfully transferred to the buyers upon the sale of the
gin and containers at a single price. It asserts that it is the lawful owner of the
personal properties (18,157 empty bottles) involved in the petition.
It is a fact that R.A. No. 623 extends trademark protection in the use of containers
duly registered with the Philippine Patent Office. The pertinent provisions of R.A. 623
reads:
Sec. 1. Persons engaged or licensed to engage in the manufacture, bottling,
or selling of soda water, mineral or aerated waters, cider, milk, cream or
other lawful beverages in bottles, boxes, casks, kegs, or barrels, and other
similar containers…with their names or the names of their principals or
products, or other marks of ownership stamped or marked thereon, may
register with the Philippine Patent Office a description of the names or
marks, and the purpose for which the containers so marked are used by
them, under the same conditions, rules, and regulations, made applicable
by law or regulation to the issuance of trademarks.
Sec. 2. It shall be unlawful for any person, without the written consent of
the manufacturer, bottler, or seller, who has successfully registered the
marks of ownership in accordance with the provisions of the next
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 preceding section, to fill such bottles, boxes, kegs, barrels, steel cylinders,
tanks, flasks, accumulators, or other similar containers so marked or
stamped, for the purpose of sale, or to sell, dispose of, buy or traffic in, or
wantonly destroy the same, whether filled or not to use the same for
drinking vessels or glasses or drain pipes, foundation pipes, for any other
purpose than that registered by the manufacturer, bottler or seller. Any
violation of this section shall be punished by a fine of not more than one
thousand pesos or imprisonment of not more than one year or both.
Sec. 3. The use by any person other than the registered manufacturer,
bottler or seller, without written permission of the latter of any such
bottle, cask, barrel, keg, box, steel cylinders, tanks, flask, accumulators, or
other similar containers, or the possession thereof without written
permission of the manufacturer, by any junk dealer or dealer in casks,
barrels, kegs, boxes, steel cylinders, tanks, flasks, accumulators or other
similar containers, the same being duly marked or stamped and registered
as herein provided, shall give rise to a prima facie presumption that such
use or possession is unlawful.
HELD:
Citing Cagayan Valley Enterprises, Inc., vs. Court of Appeals, the court held that the
mere use of registered bottles or containers without the written consent of the
manufacturer is prohibited, the only exceptions being when they are used as
containers for "sisi," "bagoong," "patis" and similar native products. The contention
that the aforementioned bottles without the words "properly of" indicated thereon
are not the registered bottles of LTI, since they do not conform with the statement
or description in the supporting affidavits attached to the original registration
certificate and renewal, is untenable.
Republic Act No. 623 which governs the registration of marked bottles and
containers merely requires that the bottles, in order to be eligible for registration,
must be stamped or marked with the names of the manufacturers or the names of
their principals or products, or other marks of ownership. No drawings or labels are
required.
The law clearly shows the legislative intent to give protection to all marked bottles
and containers of all lawful beverages regardless of the nature of their contents. The
words "other lawful beverages" is used in its general sense, referring to all beverages
not prohibited by law. Beverage is defined as a liquor or liquid for drinking. Hard
liquor, although regulated, is not prohibited by law, hence it is within the purview
and coverage of Republic Act No. 623.
A trademark refers to a word, name, symbol, emblem, sign or device or any
combination thereof adopted and used by a merchant to identify, and distinguish
from others, his goods of commerce. It is basically an intellectual creation that is
susceptible to ownership and gives rise to its own elements of jus posidendi, jus
utendi, jus fruendi, jus disponendi, and jus abutendi, along with the applicable jus lex,
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
comprising that ownership. The incorporeal right, however, is distinct from the
property in the material object subject to it. Ownership in one does not necessarily
vest ownership in the other. Thus, the transfer or assignment of the intellectual
property will not necessarily constitute a conveyance of the thing it covers, nor
would a conveyance of the latter imply the transfer or assignment of the intellectual
right.
R.A. No. 623 evidently does not disallow the sale or transfer of ownership of the
marked bottles or containers. In fact, the contrary is implicit in the law. Ownership
of the containers passes to the consumer albeit subject to the statutory limitation
on the use of the registered containers and to the trademark right of the registrant.
While it may be unwarranted then for LTDI to simply seize the empty containers, this
Court finds it to be legally absurd, however, to still allow petitioner to recover the
possession thereof. The fact of the matter is that R.A. 623, as amended, in affording
trademark protection to the registrant, has additionally expressed a prima facie
presumption of illegal use by a possessor whenever such use or possession is without
the written permission of the registered manufacturer, a provision that is neither
arbitrary nor without appropriate rationale. Indeed, the appellate court itself has
made a finding of such unauthorized use by petitioner. The Court sees no other
logical purpose for petitioner's insistence to keep the bottles, except for such
continued use. The practical and feasible alternative is to merely require the
payment of just compensation to petitioner for the bottles seized from it by LTDI.
Conventional wisdom, along with equity and justice to both parties, dictates it. 2
C. Functions of trademarks
2. Ang v. Teodoro, 74 Phil. 50 [14 December 1942]
ISSUE:
1) WON the words “Ang Tibay” is a descriptive word and hence cannot be
registered as a trademark? (NO)
2) WON the doctrine of secondary meaning applies? (NO)
3) WON pants and shirts are similar goods? (YES)
Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and as a
trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs
since 1910. He formally registered it as trade-mark and as trade-name and spent for
advertisement from 1919 to 1938. Ang registered the same trade-mark "Ang Tibay"
for pants and shirts and established a factory for the manufacture of said articles.
The records do not shows how much Ang has spent or advertisement. But Toribio in
his brief says that Ang "was unable to prove that she had spent a single centavo
advertising "Ang Tibay" shirts and pants prior to 1938.
Ang contends that the phrase "Ang Tibay" is a descriptive term because it means
"strong, durable, lasting."
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  He invokes section 2 of Act No. 666, which provides that words or devices
which related only to the name, quality, or description of the merchandise
cannot be the subject of a trade-mark.
 He cites Baxter vs. Zuazua which involved the trade-mark "Agua de
Kananga" used on toilet water, where the court held that the word
"Kananga," the name of a well-known Philippine plant, could not be
appropriated as a trade-mark any more than could the words "sugar,"
"tobacco," or "coffee."
On the other hand, Toribio contend that the words "Ang Tibay" are not descriptive
but merely suggestive and may properly be regarded as fanciful or arbitrary in the
legal sense. They cite several cases in which similar words have been sustained as
valid trade-marks, such as "Holeproof" for hosiery, "ideal for tooth brushes, and
"Fashionknit" for neckties and sweaters.
HELD:
We find it necessary to go into the etymology and meaning of the Tagalog words
"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 phrase "Ang Tibay" is an exclamation denoting
administration of strength or durability.
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" is never used adjectively to
define or describe an object. One does not say, "ang tibay sapatos" or "sapatos ang
tibay" to mean "durable shoes," but "matibay na sapatos" or "sapatos na matibay."
"Ang Tibay" is not a descriptive term within the 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. In this connection we do not fail to note that when the
petitioner herself took the trouble and expense of securing the registration of these
same words as a trademark of her products she or her attorney as well as the
Director of Commerce was undoubtedly convinced that said words (Ang Tibay) were
not a descriptive term and hence could be legally used and validly registered as a
trade-mark.
The function of a trade-mark is to point distinctively, either by its own meaning or
by association, to the origin or ownership of the wares to which it is applied. "Ang
Tibay," as used by Toribio to designate his wares, had exactly performed that
function for 22 years before the Ang adopted it as a trade-mark in her own business.
Ang Tibay shoes and slippers are, by association, known throughout the Philippines
as products of the Ang Tibay factory owned and operated by the respondent Toribio
Teodoro.
In view of the conclusion we have reached above, it is unnecessary to apply here the
doctrine of "secondary meaning" in trade-mark parlance.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
 This doctrine is to the effect that a word or phrase originally incapable of
exclusive appropriation with reference to an article of the market, because
geographically or otherwise descriptive, might nevertheless have been
used so long and so exclusively by one producer with reference to his
article that, in that trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his product.
 Had the phrase "Ang Tibay," not originally capable of exclusive
appropriation as a trade-mark, the application of the doctrine of secondary
meaning applies because, in any event, by Toribio’s long and exclusive use
of said phrase with reference to his products and his business, it has
acquired a proprietary connotation.
Since 1916, a growing sentiment began to arise that in the selection of a famous
mark by a third party, there was generally the hidden intention to "have a free ride"
on the trade-mark owner's reputation and good will.
Although two noncompeting articles may be classified under two different classes
by the Patent Office because they are deemed not to possess the same descriptive
properties, they would, nevertheless, be held by the courts to belong to the same
class if the simultaneous use on them of identical or closely similar trade-marks
would be likely to cause confusion as to the origin, or personal source, of the second
user's goods. They would be considered as not falling under the same class only if
they are so dissimilar or so foreign to each other as to make it unlikely that the
purchaser would think the first user made the second user's goods. 3
There can be unfair competition or unfair trading even if the goods are non-
competing, and that such unfair trading can cause injury or damage to the first user
of a given trade-mark, 1) by prevention of the natural expansion of his business
and, 2) by having his business reputation confused with and put at the mercy of
the second user.
Experience has demonstrated that when a well-known trade-mark is adopted by
another even for a totally different class of goods, it is done to get the benefit of the
reputation and advertisements of the originator of said mark, to convey to the public
a false impression of some supposed connection between the manufacturer of the
article sold under the original mark and the new articles being tendered to the public
under the same or similar mark. The owner of a trade-mark or trade-name has a
property right in which he is entitled to protection, since there is damage to him
from confusion of reputation or goodwill in the mind of the public as well as from
confusion of goods. The modern trend is to give emphasis to the unfairness of the
acts and to classify and treat the issue as a fraud.
Shoes and shirts are not as unrelated as fountain pens and razor blades. The mere
relation or association of the articles is not controlling. The proprietary connotation
that a trade-mark or trade-name has acquired is of more paramount consideration.
By uninterrupted and exclusive use since 1910 of respondent's registered trade-
H. TAN, 2018
 mark on slippers and shoes manufactured by him, it has come to indicate the origin
and ownership of said goods.
It is certainly not farfetched to surmise that the selection by petitioner of the same
trade-mark for pants and shirts was motivated by a desire to get a free ride on the
reputation and selling power it has acquired at the hands of the respondent. The
field from which a person may select a trade-mark is practically unlimited, and
hence there is no excuse for impinging upon or even closely approaching the mark
of a business rival. In the unlimited field of choice, what could have been
petitioner's purpose in selecting "Ang Tibay" if not for its fame?
3. Etepha v. Director of Patents, 16 SCRA 495, G.R. No. L-20635 [31 March 1966]
ISSUE: May trademark ATUSSIN be registered, given the fact that PERTUSSIN,
another trademark, had been previously registered in the Patent Office?
Westmont Pharmaceuticals sought registration of trademark "Atussin" placed on its
"medicinal preparation of expectorant antihistaminic, bronchodilator sedative,
ascorbic acid (Vitamin C) used in the treatment of cough". The trademark is used
exclusively in the Philippines since January 21, 1959.
Etepha objected because it will be damaged because Atussin is so confusedly similar
to its Pertussin used on a preparation for the treatment of coughs, that the buying
public will be misled into believing that Westmont's product is that of Etepha’s which
allegedly enjoys goodwill.
We are to be guided by the rule that the validity of a cause for infringement is
predicated upon colorable imitation. The phrase "colorable imitation" denotes such
a "close or ingenious imitation as to be calculated to deceive ordinary persons, or
such a resemblance to the original as to deceive an ordinary purchaser, giving such
attention as a purchaser usually gives, and to cause him to purchase the one
supposing it to be the other.
The word "tussin" figures as a component of both trademarks. It is "the common
practice in the drug and pharmaceutical industries to 'fabricate' marks by using
syllables or words suggestive of the ailments for which they are intended and adding
thereto distinctive prefixes or suffixes."The "tussin” was derived from the Latin root-
word "tussis" meaning cough.
"Tussin" is merely descriptive; it is generic; it furnishes to the buyer no indication
of the origin of the goods; it is open for appropriation by anyone. It is accordingly
barred from registration as trademark. While "tussin" by itself cannot thus be used
exclusively to identify one's goods, it may properly become the subject of a
trademark "by combination with another word or phrase". And this union of words
is reflected in petitioner's Pertussin and respondent's Atussin, the first with prefix
"Per" and the second with Prefix "A."
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
WHOLISTIC TEST: A practical approach to the problem of similarity or dissimilarity is
to go into the whole of the two trademarks pictured in their manner of display.
Inspection should be undertaken from the viewpoint of a prospective buyer. The
trademark complained of should be compared and contrasted with the purchaser's
memory (not in juxtaposition) of the trademark said to be infringed.
(a) Westmont’s label underscores the trademark Atussin in bold, block letters
horizontally written. In Etepha’s, Pertussin is printed diagonally upwards
and across in semiscript style with flourishes and with only the first letter
"P" capitalized.
(b) Each label plainly shows the source of the medicine: petitioner's at the foot
bears "Etepha Ltd. Schaan Fl", and on top, "Apothecary E. Taeschner's";
respondent's projects "Westmont Pharmaceuticals, Inc. New York, USA" at
the bottoms, and on the lower left side the word "Westmont" upon a white
diamond shaped enclosure and in red ink — a color different from that of
the words above and below it.
(c) Printed prominently in petitioner's label are indications of the use: "for
bronchial catarrh — whopping-cough — coughs and asthma".
Respondent's for its part briefly represents what its produce actually is - a
"cough syrup".
(d) The two labels are entirely different in colors, contents, arrangement of
words thereon, sizes, shapes and general appearance.
(e) The contrasts in pictorial effects and appeals to the eye is so pronounced
that the label of one cannot be mistaken for that of the other, not even by 4
persons unfamiliar with the two trademarks.
We now consider exclusively the two words — Pertussin and Atussin — as they
appear. These words are presented to the public in different styles of writing and
methods of design. One look is enough to denude the mind of that illuminating
similarity so essential for a trademark infringement case to prosper. Moreover, there
is not much phonetic similarity between the two.
In the solution of a trademark infringement problem, regard too should be given to
the class of persons who buy the particular product and the circumstances ordinarily
attendant to its acquisition.
 The medicinal preparation clothed with the trademarks in question, are
unlike articles of everyday use which may be freely obtained by anyone,
anytime, anywhere. Cough syrups are to be dispensed upon medical
prescription. The respective labels say so.
 An intending buyer must have to go first to a licensed doctor of medicine;
he knows what he is to buy. He is not of the unsuspecting type; he
examines the product sold to him; he checks to find out whether it
conforms to the medical prescription.
 Similarly, the pharmacist or druggist verifies the medicine sold. The margin
of error in the acquisition of one for the other is quite remote.
H. TAN, 2018
 4. Mirpuri v. Court of Appeals, 318 SCRA 516 (1999)
ISSUE: WON the Convention of Paris affords protection to a foreign corporation
against a Philippine applicant for the registration of a similar trademark? (NO)
Escobar, the predecessor-in-interest of Mirpuri, filed an application for the
registration of the trademark "Barbizon" for use in brassieres and ladies
undergarments. Escobar alleged that she had been manufacturing and selling these
products since 1970.
Barbizon Corporation, a foreign corporation, opposed the application. It claimed
that:
1) The mark BARBIZON of Escobar is confusingly similar to the trademark
BARBIZON which opposer owns and has not abandoned.
2) BARBIZON will be damaged by the registration of the mark BARBIZON and
its business reputation and goodwill will suffer great and irreparable injury.
3) ESCOBAR's use of the said mark BARBIZON which resembles the trademark
used and owned by Barbizon, constitutes an unlawful appropriation of a
mark previously used in the Philippines and not abandoned and therefore
a statutory violation of Section 4 (d) of Republic Act No. 166.
Escobar was issued a certificate of registration for the trademark "Barbizon." The
trademark was "for use in "brassieres and lady's underwear garments like panties."
Escobar later assigned all her rights and interest over the trademark to Mirpuri who,
under his firm name then, the "Bonito Enterprises," was the sole and exclusive
distributor of Escobar's "Barbizon" products.
Escobar failed to file the Affidavit of Use of the trademark required under Section 12
of the Philippine Trademark Law. Due to this failure, the Bureau of Patents cancelled
Escobar's certificate of registration. Escobar reapplied for registration of the
cancelled trademark and this application was opposed by private respondent.
In its opposition, private respondent alleged that:
(a) BARBIZON adopted the trademark BARBIZON (word) in 1933 and has then
used it on various kinds of wearing apparel. BARBIZON obtained a
Certificate of Registration covers the following goods — wearing apparel:
robes, pajamas, lingerie, nightgowns and slips;
(b) BARBIZON further adopted the trademark BARBIZON and Bee design and
used the said mark in various kinds of wearing apparel. BARBIZON secured
from the United States Patent Office a registration of the said mark under
2nd Certificate of Registration.
(c) BARBIZON adopted the trademark BARBIZON and a Representation of a
Woman and thereafter used the said trademark on various kinds of
wearing apparel and had a registration of the said mark.
(d) All the above registrations are subsisting and in force and BARBIZON has
not abandoned the use of the said trademarks. In fact, through a wholly-
owned Philippine subsidiary, the Philippine Lingerie Corporation, it has
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
been manufacturing the goods covered by said registrations and selling
them to various countries. As a result of Escolin’s misappropriation of the
BARBIZON trademark, Philippine Lingerie Corporation is prevented from
selling its goods in the local market, to the damage and prejudice of
Barbizon and its wholly-owned subsidiary.
(e) The Opposer's goods bearing the trademark BARBIZON have been used in
many countries, for at least 40 years and has enjoyed international
reputation and good will for their quality.
(f) Opposer has procured the registration of the trademark BARBIZON in the
following countries: Australia, Austria, Abu Dhabi, Argentina, Belgium,
Bolivia, Bahrain, Canada, Chile, Colombia, Denmark, Ecuador, France, West
Germany, Greece, Guatemala, Hongkong, Honduras, Italy, Japan, Jordan,
Lebanon, Mexico, Morocco, Panama, New Zealand, Norway, Sweden,
Switzerland, Syria, El Salvador, South Africa, Zambia, Egypt, and Iran,
among others;
(g) BARBIZON has extensively advertised its products, trademarks and name
in various publications which are circulated in the United States and many
countries around the world;
(h) The trademark BARBIZON was fraudulently registered in the Philippines by
one Lolita R. Escobar in violation of Article 189 (3) of the Revised Penal
Code and Section 4 (d) of the Trademark Law.
(i) Besides, Certificate of Registration has been cancelled for failure of either
Lolita Escobar, to seasonably file the statutory affidavit of use. By applying
for a re-registration of the mark BARBIZON subject of this opposition, 5
respondent-applicant seeks to perpetuate the fraud and criminal act
committed by Lolita Escobar.
(j) Opposer's BARBIZON as well as its BARBIZON and Bee Design and
BARBIZON and Representation of a Woman trademarks qualify as well-
known trademarks entitled to protection under the Convention of Paris for
the Protection of Industrial Property.
(k) The trademark applied for by respondent applicant is identical to
Opposer's BARBIZON trademark and constitutes the dominant part of
Opposer's two other marks namely, BARBIZON and Bee design and
BARBIZON and a Representation of a Woman. The continued use by
respondent-applicant of Opposer's trademark BARBIZON on goods
belonging to Class 25 constitutes a clear case of commercial and criminal
piracy and if allowed registration will violate not only the Trademark Law
but also Article 189 of the Revised Penal Code and the commitment of the
Philippines to an international treaty.
Replying to private respondent's opposition, petitioner raised the defense of res
judicata.
DOCTRINE: A "trademark" is defined under the Intellectual Property Code of the
Philippines, as "any visible sign capable of distinguishing goods."
H. TAN, 2018
 The function of a trademark is
1) to point out distinctly the origin or ownership of the goods to which it is
affixed;
2) 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;
3) to assure the public that they are procuring the genuine article;
4) to prevent fraud and imposition; and
5) to protect the manufacturer against substitution and sale of an inferior and
different article as his product.
Modern authorities on trademark law view trademarks as performing three
distinct functions:
(1) they indicate origin or ownership of the articles to which they are attached;
(2) they guarantee that those articles come up to a certain standard of quality;
and
(3) they advertise the articles they symbolize.
Today, the trademark is not merely a symbol of origin and goodwill; it is often the
most effective agent for the actual creation and protection of goodwill. It imprints
upon the public mind an anonymous and impersonal guaranty of satisfaction,
creating a desire for further satisfaction. In other words, the mark actually sells the
goods. The mark has become the "silent salesman," the conduit through which direct
contact between the trademark owner and the consumer is assured. It has invaded
popular culture in ways never anticipated that it has become a more convincing
selling point than even the quality of the article to which it refers. In the last half
century, the unparalleled growth of industry and the rapid development of
communications technology have enabled trademarks, tradenames and other
distinctive signs of a product to penetrate regions where the owner does not actually
manufacture or sell the product itself. Goodwill is no longer confined to the
territory of actual market penetration; it extends to zones where the marked
article has been fixed in the public mind through advertising. Whether in the print,
broadcast or electronic communications medium, particularly on the
Internet, advertising has paved the way for growth and expansion of the product by
creating and earning a reputation that crosses over borders, virtually turning the
whole world into one vast marketplace.
The Convention of Paris for the Protection of Industrial Property is a multilateral
treaty that seeks to protect industrial property consisting of patents, utility models,
industrial designs, trademarks, service marks, trade names and indications of source
or appellations of origin, and at the same time aims to repress unfair
competition. The Convention essentially provides that foreign nationals are to be
given the same treatment in each of the member countries as that country makes
available to its own citizens. Nationals of the various member nations are thus
assured of a certain minimum of international protection of their industrial
property.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Intellectual and industrial property rights cases are not simple property cases.
Trademarks deal with the psychological function of symbols and the effect of these
symbols on the public at large. Trademarks play a significant role in communication,
commerce and trade, and serve valuable and interrelated business functions, both
nationally and internationally. For this reason, all agreements concerning industrial
property, like those on trademarks and tradenames, are intimately connected with
economic development. Industrial property encourages investments in new ideas
and inventions and stimulates creative efforts for the satisfaction of human needs.
They speed up transfer of technology and industrialization, and thereby bring about
social and economic progress. These advantages have been acknowledged by the
Philippine government itself. The Intellectual Property Code of the Philippines
declares that "an effective intellectual and industrial property system is vital to the
development of domestic and creative activity, facilitates transfer of technology, it
attracts foreign investments, and ensures market access for our products."
A major proportion of international trade depends on the protection of intellectual
property rights. Since the late 1970's, the unauthorized counterfeiting of industrial
property and trademarked products has had a considerable adverse impact on
domestic and international trade revenues. The TRIPs Agreement seeks to grant
adequate protection of intellectual property rights by creating a favorable economic
environment to encourage the inflow of foreign investments, and strengthening the
multi-lateral trading system to bring about economic, cultural and technological
independence.
The Philippines has acceded to the WTO Agreement. This Agreement has 6
revolutionized international business and economic relations among states, and
has propelled the world towards trade liberalization and economic
globalization. There is now "a new era of global economic cooperation, reflecting
the widespread desire to operate in a fairer and more open multilateral trading
system." Conformably, the State must reaffirm its commitment to the global
community and take part in evolving a new international economic order at the
dawn of the new millenium.
Doctrine: functions of trademarks, locus standi affirmed by Paris Convention.
D. How Are Marks Acquired?
Section 122. How Marks are Acquired.
The rights in a mark shall be acquired through registration made validly in accordance
with the provisions of this law.
 Under the IP Code, prior actual use is no longer required but you must use if 2
months after registration.
 Actual use is evidenced by Declaration of Actual Use (DAU).
 Now: first to file system.
Contrast this with Sec. 2-A of Republic Act No. 166 and cases decided under R. A. No.
166:
H. TAN, 2018
 Section 2. What are registrable. - Trade-marks, trade-names and service-marks may be
registered in accordance with the provisions of this Act.
Section 3. Application by non-residents. - Any person filing an application for the
registration of a mark or trade-name, who is not a resident of the Philippines, must
appoint an agent or representative in the Philippines upon whom notice or process
relating to the application or registration of the mark or trade-name may be served. In
the event of death, absence or inability of the agent or representative, a new agent or
representative must be appointed, and notice thereof must be filed in the Patent Office.
Upon failure to maintain an agent or representative of record in the Patent Office,
service on the Director shall be deemed sufficient.
Section 4. Registration of trade-marks, trade-names and service-marks. - The owner of
a trade-mark, trade-name or service-mark used to distinguish his goods, business or
services from the goods, business or services of others shall have the right to register
the same, unless it:
(a) Consists of or comprises immoral, deceptive or scandalous matter; or matter which
may disparage or falsely suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
(b) Consists of or comprises the flag or coat of arms or other insignia of the Philippines
or any of its political subdivisions, or of any foreign nation, or any simulation
thereof;
(c) Consists of or comprises a name, portrait, or signature identifying a particular living
individual except by his written consent, or the name, signature, or portrait of a
deceased President of the Philippines, during the life of his widow, if any, except
by the written consent of the widow;
(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-
name registered in the Philippines or a mark or trade-name previously used in the
Philippines by another and not abandoned, as to be likely, when applied to or used
in connection with the goods, business or services of the applicant, to cause
confusion or mistake or to deceive purchases; or
(e) Consists of a mark or trade-name which, when applied to or used in connection
with the goods, business or services of the applicant is merely descriptive or
deceptively misdescriptive of them, or when applied to or used in connection with
the goods, business or services of the applicant is primarily geographically
descriptive or deceptively misdescriptive of them, or is primarily merely a surname.
Except as expressly excluded in paragraphs (a), (b), (c) and (d) of this section, nothing
herein shall prevent the registration of a mark or trade-name used by the applicant
which has become distinctive of the applicant's goods, business or services.
The Director may accept as PRIMA FACIE EVIDENCE that the mark or trade-name has
become distinctive, as applied to or used in connection with the applicant's goods,
business or services, proof of SUBSTANTIALLY EXCLUSIVE AND CONTINUOUS USE
thereof as a mark or trade-name by the applicant in connection with the sale of goods,
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
business or services for the FIVE YEARS NEXT PRECEDING the date of the filing of the
application for its registration.
5. Unno Commercial Enterprises v. General Milling Corp., 120 SCRA 904, G.R. No. L-
28554 [28 February 1983]
Doctrine: Only the owner of a trademark, trade name or service mark may applly
for its registration and an importer, broker, indentor or distributor acquires no
rights to the trademark of the goods he is dealing with in the absence of a valid
transfer or assignment of the trade mark.
ISSUE: WON right to register is based on ownership? (YES)
General Milling filed an application for the registration of the trademark "All
Montana" to be used in the sale of wheat flour. But the same trademark was
previously registered in favor of Unno Commercial, hence the Chief Trademark
Examiner declared an interference proceeding, to determine which party has
previously adopted and used the trademark "All Montana".
General Milling, in its application for registration, alleged that it started using the
trademark "All Montana" in 1955 and subsequently was licensed to use the same by
Centennial Mills by virtue of a deed of assignment. On the other hand Unno
Commercial argued that the same trademark had been registered in its favor in 1962
7
asserting that it started using the trademark in 1956, as indentor or broker for S.H.
Huang Bros, a local firm.
The Director of Patents ruled in favor of respondent General Milling as the prior-user
of the trademark ALL MONTANA.
Unno based its claim of ownership over the trademark in question by the fact that it
acted as an indentor or broker for S. H. Huang, a local importer of wheat flour,
offering as evidence the various shipments, documents, invoices and other
correspondence of Centennial Mills, shipping bags of All Montana to the Philippines.
It maintained that anyone, whether he is only an importer, broker or indentor can
appropriate, use and own a particular mark of its own choice although he is not the
manufacturer of the goods he deals with. Petitioner insists that "the appropriation
and ownership of a particular trademark is not merely confined to producers or
manufacturers but likewise to anyone who lawfully deals in merchandise who
renders any lawful service in commerce, like petitioner in the case at bar.
HELD:
The right to register trademark is based on ownership. The term owner does not
include the importer of the goods bearing the trademark, trade name, service
mark, or other mark of ownership, unless such importer is actually the owner
thereof in the country from which the goods are imported. A local importer,
however, may make application for the registration of a foreign trademark, trade
H. TAN, 2018
 name or service mark if he is duly authorized by the actual owner of the name or
other mark of ownership. Where the applicant's alleged ownership is not shown in
any notarial document and the applicant appears to be merely an importer or
distributor of the merchandise covered by said trademark, its application cannot
be granted.
When the applicant is not the owner of the trademark being applied for, he has no
right to apply for the registration of the same. Under the Trademark Law only the
owner of the trademark, trade name or service mark used to distinguish his goods,
business or service from the goods, business or service of others is entitled to
register the same.
6.
In the case at bar, the trademark "All Montana" was owned and registered in the
name of Centennial Mills which was transferred to General Milling by way of a deed
of assignment. In 1955, Centennial Mills exported flour to the Philippines, through
its distributor Unno which acted as broker for the firm S. H. Huang. However,
because of increased taxes and subsidies, Centennial Mills discontinued shipments
of flour in the Philippines and eventually sold its brands for wheat flour, including
"All Montana" brand to General Milling. General Milling, since the start of the
operation in 1961 of its flour mills has been manufacturing and selling "All
Montana" flour in the Philippines.
Director of Patents found ample evidence was presented that Centennial Mills was
the owner and prior user of the trademark "All Montana" through a local importer
and broker. The Deed of Assignment itself constitutes sufficient proof of its
ownership of the trademark "All Montana," showing that Centennial Mills was the
absolute and registered owner of several trademarks for wheat flour, all of which
were assigned by it to respondent General Milling. The deed of assignment was duly
acknowledged before a notary public for the State of Oregon, accompanied by a
certification issued by the Secretary of State of the State of Oregon stating that the
said James Hunt is a duly qualified Notary Public with full power and authority to
take acknowledgments of all oaths and that full faith and credit should be given to
his official acts as notary public.
Trademarks used and adopted on goods manufactured or packed in a foreign
country in behalf of a domestic importer, broker, or indentor and distributor are
presumed to be owned by the manufacturer or packer, unless there is a written
agreement clearly showing that ownership vests in the importer, broker, indentor or
distributor. Thus, petitioner's contention that it is the owner of the mark "All
Montana" because of its certificate of registration issued by the Director of
Patents, must fail, since ownership of a trademark is not acquired by the mere fact
of registration alone. Registration merely creates a prima facie presumption of the
validity of the registration, of the registrant's ownership of the trademark and of
the exclusive right to the use thereof. Registration does not perfect a trademark
right. Prior use by one will controvert a claim of legal appropriation, by subsequent
users.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
In the case at bar, the Director of Patents found that ample evidence was presented
in the record that Centennial Mills was the owner and prior user of the trademark
'All Montana' through a local importer and broker. Use of a trademark by a mere
importer, indentor or exporter inures to the benefit of the foreign manufacturer
whose goods are identified by the trademark. The Junior Party has hereby
established a continuous chain of title and, consequently, prior adoption and use"
and ruled that "based on the facts established, it is safe to conclude that the Junior
Party has satisfactorily discharged the burden of proving priority of adoption and use
and is entitled to registration."
Kabushi Kaisha Isetan v. IAC, 203 SCRA 583, G.R. No. 75420 [15 November 1991]
DOCTRINE: Actual use in commerce in the Philippines is a pre-requisite to the
acquisition of ownership over a trademark or a tradename.
Isetan is a Japanese corporation. It is the owner of the trademark "Isetan" and the
"Young Leaves Design". It alleges that it first used the trademark Isetan in 1936. It
states that the trademark is a combination of "Ise" taken from "Iseya" the first name
of the rice dealer in Kondo in which the establishment was first located and "Tan"
which was taken from "Tanji Kosuge the First". The petitioner claims to have
expanded its line of business internationally from 1936 to 1974. The trademark
"Isetan" and "Young Leaves Design" were registered in Japan covering more than 34
classes of goods. It applied for the registration of "Isetan" and "Young Leaves Design"
8
with the Philippine Patent Office.
Isetann Department Store is a domestic corporation. It claims that it used the word
"Isetann" as part of its corporated name and on its products particularly on shirts in
Joymart Department Store sometime in 1979. The suffix "Tann" means an altar, the
place of offering in Chinese and this was adopted to harmonize the corporate name
and the corporate logo of two hands in cup that symbolizes the act of offering to the
Supreme Being for business blessing.
Philippine Isetann registered "Isetann Department Store, Inc." and Isetann and
Flower Design in the Philippine Patent Office, as well as with the Bureau of Domestic
Trade. But Japanese Isetan filed petitions for the cancellation of Certificates of
Supplemental Registration stating that:
 . . . except for the additional letter "N" in the word "Isetan", the mark
registered by the registrant is exactly the same as the trademark ISETAN
owned by the Japanese Isetan and that the young leaves registered by the
registrant is exactly the same as the young leaves design owned by the
petitioner.
 Philippine Isetann's act of registering a trademark which is exactly the
same as its trademark and adopting a corporate name similar to that of
the petitioner were with the illegal and immoral intention of cashing in on
the long established goodwill and popularity of the petitioner's reputation,
thereby causing great and irreparable injury and damage to it.
H. TAN, 2018
  Both the petitioner's and respondent's goods move in the same channels
of trade, and ordinary people will be misled to believe that the products of
the private respondent originated or emanated from, are associated with,
or are manufactured or sold, or sponsored by the petitioner by reason of
the use of the challenged trademark.
 The Philippines' adherence to the Paris Convention committed to the
government to the protection of trademarks belonging not only to Filipino
citizens but also to those belonging to nationals of other member countries
who may seek protection in the Philippines.
Meanwhile, the petitioner also filed with SEC a petition to cancel the mark "ISETAN"
as part of the registered corporate name of Isetann Department Store. This petition
was denied. Director of Patents held Petitioner has not successfully made out a case
of cancellation. Hence, Respondent's Certificate of Supplemental Registration
covering the tradename "ISETANN DEPT. STORE, INC. & FLOWER DESIGN" are
ordered to remain in full force and effect for the duration of their term unless sooner
or later terminated by law. The decision of the Patent Office has long become final
and executory. So has the Court of Appeal decision.
HELD:
The trademark Law, Republic Act No. 166 provides:
SEC. 2. What are registrable.- Trademark, tradenames and service marks owned
by persons, corporation, partnerships or associations domiciled in the Philippines
and by persons, corporations, partnerships or associations domiciled in any foreign
country may be registered in accordance with the provisions of this Act:
Provided, That said trademarks, tradenames, or service marks are actually in use in
commerce and services not less than two months in the Philippines before the time
the applications for registration are filed:
And provided, further, That the country of which the applicant for registration is a
citizen grants by law substantially similar privileges to citizens of the Philippines, and
such fact is officially certified, with a certified true copy of the foreign law translated
into the English language, by the government of the foreign country to the
Government of the Republic of the Philippines.
SEC. 2-A. Ownership of trademarks, tradenames and service marks; how acquired.
–
Anyone who lawfully produces or deals in merchandise of any kind or who engages
in any lawful business, or who renders any lawful service in commerce, by actual
use thereof in manufacture or trade, in business, and in the service rendered, may
appropriate to his exclusive use a trademark, a tradename, or a service mark not so
appropriated by another, to distinguish his merchandise, business or service from
the merchandise, business or service of others. The ownership or possession of a
trademark, tradename, service mark, heretofore or hereafter appropriated, as in
this section provided, shall be recognized and protected in the same manner and to
the same extent as are other property rights known to the law.
Adoption alone of a trademark would not give exclusive right thereto. Such right
grows out of their actual use. Adoption is not use. For trademark is a creation of
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
use. The underlying reason for all these is that purchasers have come to
understand the mark as indicating the origin of the wares. Flowing from this is the
trader's right to protection in the trade he has built up and the goodwill he has
accumulated from use of the trademark.
In fact, a prior registrant cannot claim exclusive use of the trademark unless it uses
it in commerce.
The Trademark Law is very clear. It requires actual commercial use of the mark prior
to its registration. "Samples" are not for sale and therefore, the fact of exporting
them to the Philippines cannot be considered to be equivalent to the "use"
contemplated by the law.
The records show that the petitioner has never conducted any business in the
Philippines. It has never promoted its tradename or trademark in the Philippines.
It has absolutely no business goodwill in the Philippines. It is unknown to Filipinos
except the very few who may have noticed it while travelling abroad. It has never
paid a single centavo of tax to the Philippine government. Under the law, it has no
right to the remedy it seeks.
The petitioner's witnesses, Takayama and Murakami, admitted that:
1) The petitioner's company is not licensed to do business in the Philippines;
2) The petitioner's trademark is not registered under Philippine law; and
3) The petitioner's trademark is not being used on products in trade, 9
manufacture, or business in the Philippines.
In the case at bar, petitioner has never engaged in promotional activities in the
Philippines to popularize its trademark because not being engaged in business in
the Philippines, there is no need for advertising. The claim of the petitioner that
millions of dollars have been spent in advertising the petitioner's products, refers
to advertising in Japan or other foreign places. No promotional activities have been
undertaken in the Philippines, by the petitioner's own admission.
Any goodwill, reputation, or knowledge regarding the name Isetann is purely the
work of the private respondent. Evidence was introduced on the extensive
promotional activities of the private respondent.
What is involved in this case is not so much a trademark as a tradename. Isetann
Department Store is the name of a store and not of product sold in various parts of
the country. This case must be differentiated from cases involving products bearing
such familiar names as "colgate", "Singer". "Toyota", or "Sony" where the products
are marketed widely in the Philippines. There is no product with the name "Isetann"
popularized with that brand name in the Philippines. Unless one goes to the store
called Isetann in Manila, he would never know what the name means. Similarly, until
a Filipino buyer steps inside a store called "Isetan" in Tokyo or Hongkong, that name
H. TAN, 2018
 would be completely alien to him. The records show that among Filipinos, the name
cannot claim to be internationally well-known.
The mere origination or adoption of a particular tradename without actual use
thereof in the market is insufficient to give any exclusive right to its use, even
though such adoption is publicly declared, such as by use of the name in
advertisements, circulars, price lists, and on signs and stationery. The Paris
Convention for the Protection of Industrial Property does not automatically
exclude all countries which have signed it from using a tradename which happens
to be used in one country.
The Treaty provision clearly indicated the conditions which must exist before any
trademark owner can claim and be afforded rights such as the Petitioner herein
seeks and those conditions are that:
a) the mark must be internationally known or well known;
b) the subject of the right must be a trademark, not a patent or copyright or
anything else;
c) the mark must be for use in the same or similar kinds of goods; and
d) the person claiming must be the owner of the mark.
The respondent registered its trademark in 1979. It has continuously used that name
in commerce. It has established a goodwill through extensive advertising. The people
who buy at Isetann Store do so because of Isetann's efforts. There is no showing that
the Japanese firm's registration in Japan or Hongkong has any influence whatsoever
on the Filipino buying public.
7. Philip Morris v. CA, 224 SCRA 576, G.R. No. 91332 [16 July 1993]
ISSUE:
1) WON preliminary injunction should be granted? (NO, no clear right)
2) WON there has been an invasion of plaintiffs' right of property to such
trademark or trade name.
Philip Morris is a US corporation not doing business in the Philippines but is suing on
an isolated transaction. As registered owners "MARK VII", "MARK TEN", and "LARK"
per certificates of registration issued by the Philippine Patent Office, Philip Morris
asserted that Fortune Tobacco has no right to manufacture and sell cigarettes
bearing the allegedly identical or confusingly similar trademark "MARK" in
contravention of Section 22 of the Trademark Law, and should, therefore, be
precluded during the pendency of the case from performing the acts complained of
via a preliminary injunction.
Fortune Tobacco alleged that
1) it has been authorized by the BIR to manufacture and sell cigarettes
bearing the trademark "MARK", and that "MARK" is a common word
which cannot be exclusively appropriated
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
2) since PM are "not doing business in the Philippines" coupled the fact that
the Director of Patents has not denied their pending application for
registration of its trademark "MARK", the grant of a writ of preliminary
injunction is premature.
Philip Morris maintain that their trademarks are entitled to protection by treaty
obligation under Article 2 of the Paris Convention.
There is no question that defendant has been authorized by the Bureau of Internal
Revenue to manufacture cigarettes bearing the trademark "MARK". However, this
authority is qualified, that the said brands have been accepted and registered by the
Patent Office not later than six (6) months after you have been manufacturing the
cigarettes and placed the same in the market." However, this grant does not give
you protection against any person or entity whose rights may be prejudiced by
infringement or unfair competition in relation to your indicated trademarks/brands".
As aforestated, the registration of defendant's application is still pending in the
Philippine Patent Office.
HELD:
To sustain a successful prosecution of their suit for infringement, petitioners, as
foreign corporations not engaged in local commerce, rely on section 21-A of the
Trademark Law reading as follows:
Sec. 21-A. Any foreign corporation or juristic person to which a mark or trade-name 10
has been registered or assigned under this act may bring an action hereunder for
infringement, for unfair competition, or false designation of origin and false
description, whether or not it has been licensed to do business in the Philippines
under the Corporation Law, at the time it brings complaint:
Provided, That the country of which the said foreign corporation or juristic person
is a citizen or in which it is domiciled, by treaty, convention or law, grants a similar
privilege to corporate or juristic persons of the Philippines.
to drive home the point that they are not precluded from initiating a cause of action
in the Philippines on account of the principal perception that another entity is
pirating their symbol without any lawful authority to do so. Judging from a perusal
of the aforequoted Section 21-A, the conclusion reached by petitioners is certainly
correct. The foreign corporation is allowed thereunder to sue "whether or not it has
been licensed to do business in the Philippines" pursuant to the Corporation Law.
However, the provision was qualified to the effect that a foreign corporation not
doing business in the Philippines may have the right to sue before Philippine Courts,
but it is not sufficient for a foreign corporation suing under Section 21-A to simply
allege its alien origin. Rather, it must additionally allege its personality to sue.
Relative to this condition precedent, it may be observed that petitioners were not
remiss in averring their personality to lodge a complaint for infringement especially
so when they asserted that the main action for infringement is anchored on an
isolated transaction.
H. TAN, 2018

A fundamental principle of Philippine Trademark Law is that actual use in commerce
in the Philippines is a pre-requisite to the acquisition of ownership over a trademark
or a tradename. Adoption alone of a trademark would not give exclusive right
thereto. Such right grows out of their actual use. Adoption is not use. One may make
advertisements, issue circulars, give out price lists on certain goods; but these alone
would not give exclusive right of use. For trademark is a creation of use. The
underlying reason for all these is that purchasers have come to understand the mark
as indicating the origin of the wares. Flowing from this is the trader's right to
protection in the trade he has built up and the goodwill he has accumulated from
use of the trademark. In fact, a prior registrant cannot claim exclusive use of the
trademark unless it uses it in commerce.
In other words, petitioners may have the capacity to sue for infringement
irrespective of lack of business activity in the Philippines on account of Section 21-A
of the Trademark Law but the question whether they have an exclusive right over
their symbol as to justify issuance of the controversial writ will depend on actual use
of their trademarks in the Philippines in line with Sections 2 and 2-A of the same law.
In view of the explicit representation of petitioners in the complaint that they are
not engaged in business in the Philippines, it inevitably follows that no conceivable
damage can be suffered by them not to mention the foremost consideration
heretofore discussed on the absence of their "right" to be protected.
8. Philip Morris v. Fortune Tobacco, G.R. No. 158589, 27 June 2006
In the Complaint with prayer for the issuance of a preliminary injunction,
[petitioners] alleged that they are foreign corporations not doing business in the
Philippines and are suing on an isolated transaction. They averred that the countries
in which they are domiciled grant xxx to corporate or juristic persons of the
Philippines the privilege to bring action for infringement, xxx without need of a
license to do business in those countries. [Petitioners] likewise manifested [being
registered owners of the trademark "MARK VII" and "MARK TEN" for cigarettes as
evidenced by the corresponding certificates of registration and an applicant for the
registration of the trademark "LARK MILDS"]. [Petitioners] claimed that they have
registered the aforementioned trademarks in their respective countries of origin and
that, by virtue of the long and extensive usage of the same, these trademarks have
already gained international fame and acceptance. Imputing bad faith on the part of
the [respondent], petitioners claimed that the [respondent], without any previous
consent from any of the [petitioners], manufactured and sold cigarettes bearing the
identical and/or confusingly similar trademark "MARK" xxx Accordingly, they argued
that [respondent’s] use of the trademark "MARK" in its cigarette products have
caused and is likely to cause confusion or mistake, or would deceive purchasers and
the public in general into buying these products under the impression and mistaken
belief that they are buying [petitioners’] products.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Invoking the provisions of the Paris Convention for the Protection of Industrial and
Intellectual Property (Paris Convention, for brevity), to which the Philippines is a
signatory, [petitioners] pointed out that upon the request of an interested party, a
country of the Union may prohibit the use of a trademark which constitutes a
reproduction, imitation, or translation of a mark already belonging to a person
entitled to the benefits of the said Convention. They likewise argued that, in
accordance with Section 21-A in relation to Section 23 of Republic Act 166, as
amended, they are entitled to relief in the form of damages xxx [and] the issuance
of a writ of preliminary injunction which should be made permanent to enjoin
perpetually the [respondent] from violating [petitioners’] right to the exclusive use
of their aforementioned trademarks.
[Respondent] filed its Answer xxx denying [petitioners’] material allegations and xxx
averred [among other things] xxx that "MARK" is a common word, which cannot
particularly identify a product to be the product of the [petitioners] xxx
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 in by
others. Inarguably, a trademark deserves protection.
The protection of trademarks is the law’s recognition of the psychological function
of symbols. If it is true that we live by symbols, it is no less true that we purchase
goods by them. A trade-mark is a merchandising short-cut which induces a purchaser
to select what he wants, or what he has been led to believe what he wants. The 11
owner of a mark exploits this human propensity by making every effort to
impregnate the atmosphere of the market with the drawing power of a congenial
symbol. Whatever the means employed, the aim is the same - to convey through the
mark, in the minds of potential customers, the desirability of the commodity upon
which it appears. Once this is attained, the trade-mark owner has something of
value. If another poaches upon the commercial magnetism of the symbol he has
created, the owner can obtain legal redress.
Petitioners assert that,
1) as corporate nationals of member-countries of the Paris Union, they can
sue before Philippine courts for infringement of trademarks, or for unfair
competition, without need of obtaining registration or a license to do
business in the Philippines, and without necessity of actually doing
business in the Philippines.
2) these grievance right and mechanism are accorded not only by Section 21-
A of the Trademark Law, but also by Article 2 of the Paris Convention for
the Protection of Industrial Property.
3) there is actual use of their trademarks in the Philippines as evidenced by
the certificates of registration of their trademarks. The marks "MARK TEN"
and "LARK" were registered on the basis of actual use in accordance while
the registration of "MARK VII" was on the basis of registration in the
foreign country of origin.
H. TAN, 2018
 4) That they are not doing business in the Philippines, if that be the case, does
not mean that cigarettes bearing their trademarks are not available and
sold locally.
5) petitioners would press on their entitlement to protection even in the
absence of actual use of trademarks in the country in view of the
Philippines’ adherence to the TRIPS Agreement and the enactment of the
Intellectual Property Code, both of which provide that the fame of a
trademark may be acquired through promotion or advertising with no
explicit requirement of actual use in local trade or commerce.
HELD: Considering that R.A. No. 166 mandates actual use of the marks and/or
emblems in local commerce and trade before they may be registered and
ownership thereof acquired, the petitioners cannot, therefore, dispense with the
element of actual use. Their being nationals of member-countries of the Paris
Union does not alter the legal situation.
Following universal acquiescence and comity, our municipal law on trademarks
regarding the requirements of actual use in the Philippines must subordinate an
international agreement inasmuch as the apparent clash is being decided by a
municipal tribunal. Withal, the fact that international law has been made part of the
law of the land does not by any means imply the primacy of international law over
national law in the municipal sphere. Under the doctrine of incorporation as applied
in most countries, rules of International Law are given a standing equal, not superior,
to national legislative enactments.
In other words, (a foreign corporation) may have the capacity to sue for infringement
… but the question of whether they have an exclusive right over their symbol as to
justify issuance of the controversial writ will depend on actual use of their
trademarks in the Philippines in line with Sections 2 and 2-A of the same law. It is
thus incongruous for petitioners to claim that when a foreign corporation not
licensed to do business in the Philippines files a complaint for infringement, the
entity need not be actually using its trademark in commerce in the Philippines. Such
a foreign corporation may have the personality to file a suit for infringement but it
may not necessarily be entitled to protection due to absence of actual use of the
emblem in the local market.
Contrary to what petitioners suggest, the registration of trademark cannot be
deemed conclusive as to the actual use of such trademark in local commerce. As it
were, registration does not confer upon the registrant an absolute right to the
registered mark. The certificate of registration merely constitutes prima facie
evidence that the registrant is the owner of the registered mark. Evidence of non-
usage of the mark rebuts the presumption of trademark ownership, as what
happened here when petitioners no less admitted not doing business in this country.
Most importantly, we stress that registration in the Philippines of trademarks does
not ipso facto convey an absolute right or exclusive ownership thereof… trademark
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
is a creation of use and, therefore, actual use is a pre-requisite to exclusive
ownership; registration is only an administrative confirmation of the existence of
the right of ownership of the mark, but does not perfect such right; actual use
thereof is the perfecting ingredient.
The registration of a trademark unaccompanied by actual use thereof in the
country accords the registrant only the standing to sue for infringement in
Philippine courts. Entitlement to protection of such trademark in the country is
entirely a different matter.
9. Shangrila v. DGCI, G.R. 159938, 31 March 2006
ISSUE:
1. WON DGCI had the right to file an application for registration of the "Shangri-
La" mark and "S" logo although it never had any prior actual commercial use
thereof; (NO)
2. WON SHANG should be prohibited from continuing their use of the mark and
logo in question. (NO)
At the core of the controversy are the "Shangri-La" mark and "S" logo.
Developers Group of Companies, Inc. (DGCI) claims ownership of said mark and logo
in the Philippines on the strength of its prior use thereof within the country. As DGCI
stresses at every turn, it filed in 1982 an application for registration covering the
subject mark and logo. The BPTTT (Bureau of Patents, Trademarks and Technology 12
Transfer) issued in favor of DGCI the corresponding certificate of registration
therefor. Since then, DGCI started using the "Shangri-La" mark and "S" logo in its
restaurant business.
On the other hand, the Kuok family owns and operates a chain of hotels with interest
in hotels and hotel-related transactions since 1969. It adopted the name "Shangri-
La" as part of the corporate names of all companies organized under the aegis of the
Kuok Group of Companies. The Kuok Group has used the name "Shangri-La" in all
Shangri-La hotels and hotel-related establishments around the world which they
owned. All hotels owned, operated and managed by the aforesaid SLIHM Group of
Companies adopted and used the distinctive lettering of the name "Shangri-La" as
part of their trade names.
From the records, it appears that Shangri-La Singapore commissioned a Singaporean
design artist, a certain Mr. William Lee, to conceptualize and design the logo of the
Shangri-La hotels. Since 1975 and up to the present, the "Shangri-La" mark and "S"
logo have been used consistently and continuously by all Shangri-La hotels and
companies in their paraphernalia, such as stationeries, envelopes, business forms,
menus, displays and receipts. The Kuok Group and/or SLIHM caused the registration
of, and in fact registered, the "Shangri-La" mark and "S" logo in the patent offices in
different countries around the world.
H. TAN, 2018
 Shang filed with the BPTTT a petition, praying for the cancellation of the registration
of the "Shangri-La" mark and "S" logo issued to DGCI on the ground that the same
were illegally and fraudulently obtained and appropriated for the latter's restaurant
business. They prayed for the registration of the same mark and logo in their own
names.
Until 1987 or 1988, SHANG did not operate any establishment in the Philippines,
albeit they advertised their hotels abroad since 1972 in numerous business, news,
and/or travel magazines widely circulated around the world, all readily available in
Philippine magazines and newsstands. They, too, maintained reservations and
booking agents in airline companies, hotel organizations, tour operators, tour
promotion organizations, and in other allied fields in the Philippines. Hence, DGCI
filed a complaint for Infringement and Damages against the SHANG.
The complaint alleged that DGCI has, for the last eight (8) years, been the prior
exclusive user in the Philippines of the mark and logo in question and the
registered owner thereof for its restaurant and allied services. SHANG, in
promoting and advertising their hotel and other projects had been using a mark and
logo confusingly similar, if not identical, with its mark and "S" logo. Accordingly, DGCI
sought to prohibit the SHANG from using the "Shangri-La" mark and "S" logo in their
hotels in the Philippines.
SHANG accused DGCI of appropriating and illegally using the "Shangri-La" mark and
"S" logo, adding that the legal and beneficial ownership thereof pertained to SLIHM
and that the Kuok Group and its related companies had been using this mark and
logo since March 1962 for all their corporate names and affairs. In this regard, they
point to the Paris Convention for the Protection of Industrial Property as affording
security and protection to SLIHM's exclusive right to said mark and logo. They further
claimed having used, since late 1975, the internationally-known and specially-
designed "Shangri-La" mark and "S" logo for all the hotels in their hotel chain.
Presented as DGCI's witness was its President and Chairman of DGCI's Board of
Directors Ramon. The witness testified that:
1. The restaurant bears the name "Shangri-La" and uses the same and the "S-logo"
as service marks.
2. He had traveled widely around Asia prior to 1982, and admitted knowing the
Shangri-La Hotel in Hong Kong as early as August 1982.
3. The "S-logo" was one of two (2) designs given to him, scribbled on a piece of
paper by a jeepney signboard artist. The unnamed artist supposedly produced
the two designs after about two or three days from the time he (Syhunliong)
gave the idea of the design he had in mind.
4. DGCI was incorporated with the primary purpose of "owning or operating, or
both, of hotels and restaurants".
5. DGCI obtained Certificate of Registration for the "Shangri-La" mark and "S" logo.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Petitioners' first argument is that the respondent had no right to file an application
for registration of the "Shangri-La" mark and "S" logo because it did not have prior
actual commercial use thereof. To respondent, such an argument raises a question
of fact that was already resolved by the RTC and concurred in by the CA.
HELD:
Under the provisions of the former trademark law, which was the law in force at the
time of respondent's application for registration of trademark, the root of ownership
of a trademark is actual use in commerce. Section 2 of said law requires that before
a trademark can be registered, it must have been actually used in commerce and
service for not less than two months in the Philippines prior to the filing of an
application for its registration.
Registration, without more, does not confer upon the registrant an absolute right to
the registered mark. The certificate of registration is merely a prima facie proof that
the registrant is the owner of the registered mark or trade name. Evidence of prior
and continuous use of the mark or trade name by another can overcome the
presumptive ownership of the registrant and may very well entitle the former to be
declared owner in an appropriate case.
Ownership of a mark or trade name may be acquired not necessarily by registration
but by adoption and use in trade or commerce. As between actual use of a mark
without registration, and registration of the mark without actual use thereof, the
former prevails over the latter. This is because actual use in commerce or business 13
is a pre-requisite to the acquisition of the right of ownership.
While the present law on trademarks has dispensed with the requirement of prior
actual use at the time of registration, the law in force at the time of registration must
be applied, and thereunder it was held that as a condition precedent to registration
of trademark, trade name or service mark, the same must have been in actual use in
the Philippines before the filing of the application for registration. Trademark is a
creation of use and therefore actual use is a pre-requisite to exclusive ownership and
its registration with the Philippine Patent Office is a mere administrative
confirmation of the existence of such right.
By itself, registration is not a mode of acquiring ownership. When the applicant is
not the owner of the trademark being applied for, he has no right to apply for
registration of the same. Registration merely creates a prima facie presumption of
the validity of the registration, of the registrant's ownership of the trademark and
of the exclusive right to the use thereof. Such presumption is rebuttable and must
give way to evidence to the contrary.
Here, respondent's own witness, Ramon Syhunliong, testified that a jeepney
signboard artist allegedly commissioned to create the mark and logo submitted his
designs only 2.5 months after the filing of the respondents trademark application
with the BPTTT. Respondent cannot now claim before the Court that the certificate
H. TAN, 2018
 of registration itself is proof that the two-month prior use requirement was complied
with, what with the fact that its very own witness testified otherwise in the trial
court. And because at the time (October 18, 1982) the respondent filed its
application for trademark registration of the Shangri-La mark and S logo, respondent
was not using these in the Philippines commercially, the registration is void.
As to DGCI’s bad faith, “When a trademark copycat adopts the word portion of
another's trademark as his own, there may still be some doubt that the adoption is
intentional. But if he copies not only the word but also the word's exact font and
lettering style and in addition, he copies also the logo portion of the trademark, the
slightest doubt vanishes. It is then replaced by the certainty that the adoption was
deliberate, malicious and in bad faith.”
It is truly difficult to understand why, of the millions of terms and combination of
letters and designs available, the respondent had to choose exactly the same mark
and logo as that of the petitioners, if there was no intent to take advantage of the
goodwill of petitioners' mark and logo.
One who has imitated the trademark of another cannot bring an action for
infringement, particularly against the true owner of the mark, because he would be
coming to court with unclean hands. Priority is of no avail to the bad faith plaintiff.
Good faith is required in order to ensure that a second user may not merely take
advantage of the goodwill established by the true owner.
This point is further bolstered by the fact that under the Paris Convention, no time
limit is fixed for the cancellation of marks registered or used in bad faith. This is
precisely why petitioners had filed an inter partes case before the BPTTT for the
cancellation of respondent's registration, the proceedings on which were suspended
pending resolution of the instant case.
Admittedly, the CA was not amiss in saying that the law requires the actual use in
commerce of the said trade name and S logo in the Philippines. Hence, consistent
with its finding that the bulk of the petitioners' evidence shows that the alleged use
of the Shangri-La trade name was done abroad and not in the Philippines, it
is understandable for that court to rule in respondents favor. Unfortunately, what
the CA failed to perceive is that there is a crucial difference between the
aforequoted Section 2 and Section 2-A of R.A. No. 166. For, while Section 2 provides
for what is registrable, Section 2-A, on the other hand, sets out how ownership is
acquired. These are two distinct concepts.
Under Section 2, in order to register a trademark, one must be the owner thereof
and must have actually used the mark in commerce in the Philippines for 2 months
prior to the application for registration. Since ownership of the trademark is
required for registration, Section 2-A of the 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 the provision went further by
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
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. Hence, under R.A. No. 166, as amended,
one may be an owner of a mark due to actual use thereof but not yet have the right
to register such ownership here due to failure to use it within the Philippines for
two months. Recognition of international reputation of Shang
While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a
registrant, neither did respondent DGCI, since the latter also failed to fulfill the 2-
month actual use requirement. What is worse, DGCI was not even the owner of the
mark. For it to have been the owner, the mark must not have been already
appropriated (i.e., used) by someone else. At the time of respondent DGCI's
registration of the mark, the same was already being used by the petitioners, albeit
abroad, of which DGCIs president was fully aware.
It is respondent's contention that since the petitioners adopted the Shangri-La mark
and S logo as a mere corporate name or as the name of their hotels, instead of using
them as a trademark or service mark, then such name and logo are not trademarks.
The two concepts of corporate name or business name and trademark or service
mark, are not mutually exclusive. It is common, indeed likely, that the name of a
corporation or business is also a trade name, trademark or service mark.
The new Intellectual Property Code (IPC) undoubtedly shows the firm resolve of the
Philippines to observe and follow the Paris Convention by incorporating the relevant
portions of the Convention such that persons who may question a mark (that is, 14
oppose registration, petition for the cancellation thereof, sue for unfair competition)
include persons whose internationally well-
known mark, whether or not registered, is identical with or confusingly similar to or
constitutes a translation of a mark that is sought to be registered or is actually
registered.
However, while the Philippines was already a signatory to the Paris Convention, the
IPC only took effect on January 1, 1988, and in the absence of a retroactivity clause,
R.A. No. 166 still applies. Under the prevailing law and jurisprudence at the time, the
CA had not erred in ruling that:
The Paris Convention mandates that protection should be afforded to
internationally known marks as signatory to the Paris Convention, without
regard as to whether the foreign corporation is registered, licensed or
doing business in the Philippines. It goes without saying that the same
runs afoul to Republic Act No. 166, which requires the actual use in
commerce in the Philippines of the subject mark or devise. The apparent
conflict between the two (2) was settled by the Supreme Court in this wise
–
Following universal acquiescence and comity, our municipal law on
trademarks regarding the requirement of actual use in the Philippines
must subordinate an international agreementinasmuch
as the apparent clash is being decided by a municipal tribunal. Withal, the
H. TAN, 2018
 fact that international law has been made part of the law of the land does
not by any means imply the primacy of international law over national law
in the municipal sphere. Under the doctrine of incorporation as applied in
most countries, rules of international law are given a standing equal, not
superior, to national legislative enactments
Consequently, the petitioners cannot claim protection under the Paris Convention.
Nevertheless, with the double infirmity of lack of two-month prior use, as well as bad
faith in the respondent's registration of the mark, it is evident
that the petitioners cannot be guilty of infringement. It would be a great injustice to
adjudge the petitioners guilty of infringing a mark when they are actually the
originator and creator thereof.
Nor can the petitioners' separate personalities from their mother corporation be an
obstacle in the enforcement of their rights as part of the Kuok Group of Companies
and as official repository, manager and operator of the subject mark and logo.
Besides, R.A. No. 166 did not require theparty seeking relief to
be the owner of the mark but any person who believes that he is or will be damaged
by the registration of a mark or trade name.
10. Shangrila v. DCCI, G.R. 159938, 22 January 2007
Movant DGCI would make capital on the alleged danger the subject Decision might
wreak upon Philippine trademark law, claiming that the decision in question would
render nugatory the protection intended by the trademark law to all Philippine
trademark registrants. This assertion is a baseless and sweeping statement. The
interpretation of Republic Act No. 166 in the Decision does not in any way diminish
the protection afforded to valid trademark registrations made under said law. It was
glaringly obvious, however, from the testimony of movants own witness that DGCIs
registration of the subject mark and logo was void due to the existence of bad faith
and the absence of the requisite 2-month prior use.
Despite movant's melodramatic imputation of an abandonment of the territoriality
principle, the Decision actually upholds the principle but found that respondent DGCI
was not entitled to protection thereunder due to the double infirmity which
attended its registration of the subject mark and logo.
It would be a great injustice to adjudge SHANG guilty of infringing a mark when
they are actually the originator and creator thereof. Nor can the SHANG’s separate
personalities from their mother corporation be an obstacle in the enforcement of
their rights as part of the Kuok Group of Companies and as official repository,
manager and operator of the subject mark and logo.
Besides, R.A. No. 166 did not require the party seeking relief to be the owner of the
mark but any person who believes that he is or will be damaged by the registration
of a mark or trade name. (even if petitioners were not the owners, they would still
have a right of action under the law.)
E. Standard of Registrability
F. What Marks CANNOT Be Registered? MEMORIZE for midterms
Section 123. Registrability. - 123.1. A mark CANNOT be registered if it:
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
(a) Consists of immoral, deceptive or scandalous matter, or matter which
may disparage or falsely suggest a connection with persons, living or
dead, institutions, beliefs, or national symbols, or bring them into
contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the Philippines or
any of its political subdivisions, or of any foreign nation, or any
simulation thereof;
(c) Consists of a name, portrait or signature identifying a particular living
individual except by his written consent, or that of a deceased President
of the Philippines, during the life of his widow, if any, except by written
consent of the widow;
(d) Is identical with a registered mark belonging to a different proprietor or
a mark with an earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be LIKELY to deceive or cause
confusion;
(e) Is identical with, or confusingly similar to, or constitutes a translation of
a mark which is considered by the competent authority of the Philippines
to be well-known internationally and in the Philippines, whether or not
it is registered here, as being already the mark of a person other than the
applicant for registration, and used for identical or similar goods or
services:
 Provided, That in determining whether a mark is well-known, 15
account shall be taken of the knowledge of the relevant sector of
the public, rather than of the public at large, including knowledge in
the Philippines which has been obtained as a result of the
promotion of the mark;
(f) Is identical with, or confusingly similar to, or constitutes a translation of
a mark considered well-known in accordance with the preceding
paragraph, which is registered in the Philippines with respect to goods or
services which are not similar to those with respect to which registration
is applied for:
 Provided, That use of the mark in relation to those goods or services
would indicate a connection between those goods or services, and
the owner of the registered mark:
 Provided further, That the interests of the owner of the registered
mark are likely to be damaged by such use;
(g) Is likely to mislead the public, particularly as to the
 nature,
 quality,
 characteristics or
 geographical origin of the goods or services;
(h) Consists exclusively of SIGNS THAT ARE GENERIC for the goods or services
that they seek to identify;
H. TAN, 2018
 (i) Consists exclusively of SIGNS OR OF INDICATIONS THAT HAVE BECOME
CUSTOMARY OR USUAL to designate the goods or services in everyday
language or in bona fide and established trade practice;
(j) Consists exclusively of signs or of indications that may serve in trade to
designate the kind, quality, quantity, intended purpose, value,
geographical origin, time or production of the goods or rendering of the
services, or other characteristics of the goods or services;
(k) Consists of shapes that may be necessitated by
 technical factors or by
 the nature of the goods themselves or
 factors that affect their intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l),
nothing shall prevent the registration of any such sign or device which has become
distinctive in relation to the goods for which registration is requested as a result of the
use that have been made of it in commerce in the Philippines.
The Office may accept as prima facie evidence that the mark has become distinctive, as
used in connection with the applicant's goods or services in commerce, proof of
substantially exclusive and continuous use thereof by the applicant in commerce in the
Philippines for five (5) years before the date on which the claim of distinctiveness is
made. (it has attained secondary meaning)
123.3. The nature of the goods to which the mark is applied will not constitute
an obstacle to registration. (Sec. 4, R.A. No. 166a)
11. Etepha v. Director of Patents, same as above
Applicable clause:
 (j) Consists exclusively of signs or of indications that may serve in trade to
designate the kind, quality, quantity, intended purpose, value,
geographical origin, time or production of the goods or rendering of the
services, or other characteristics of the goods or services;
 Test used: holistic
12. Baxter v. Zuasua, 5 Phil. 160, G.R. No. 1750 [26 October 1905]
 It’s easier to establish trademark infringement than unfair competition.
 (j) Consists exclusively of signs or of indications that may serve in trade to
designate the kind, quality, quantity, intended purpose, value,
geographical origin, time or production of the goods or rendering of the
services, or other characteristics of the goods or services;
Guillermo Baxter secured the right to use the trade-mark described as "Agua de
Kananga", as well as the labels annexed thereto. Baxter associated himself with
certain merchants of the city of Manila for the purpose of organizing a limited
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
partnership for a period of five years, under the firm name and style of "Baxter &
Company," the object of which said partnership was the manufacture of toilet water
and perfumery. This trade-mark is actually used by the plaintiffs to designate the
ownership and origin of a certain toilet water manufactured and sold by them under
the said name of "Agua de Kananga."
The plaintiffs brought this action for unfair competition. It is alleged that the
defendant Zosimo Zuazua, for the purpose of imitating and fraudulently simulating
the "Agua de Kananga" manufactured by plaintiffs, placed on the market for sale a
certain toilet water under the name and denomination of "Kananga Superior" and
"Kanangue", and disposed of the same in bottles with labels similar to those used by
the plaintiffs for their own goods.
Zuazua admitted that he had manufactured certain toilet water under the
denomination of "Kananga Superior" and "Kanangue", and that he had also sold the
same in bottles labeled as alleged in the complaint. As to the bottles, it was
stipulated that "those used by the Zuazua, as well as those used by the plaintiffs,
were universally used by all persons engaged in the manufacture of toilet water, and
that the fact that they were used by the defendant did not, of itself, constitute a
violation of the rights of the plaintiffs, nor a fraud or deceit upon the public."
The trial court enjoined the defendants from the further manufacture of toilet water
under the trade-mark of "Kananga Superior" and "Kananga", and the selling of the
same in bottles of the size and form of those introduced in evidence at the trial, 16
labeled as aforesaid.
 The judgment was based upon the ground that the labels, words, and bottles in
question, taken together, were an imitation of those used by the plaintiffs, and
tended to deceive the public by making it appear that the toilet water
manufactured and sold by the defendants was the same toilet water
manufactured by the plaintiffs, and that the use of the said labels, words, and
bottles was therefore illegal, and constituted a violation of plaintiff's rights.
 The grant did not give the plaintiffs an exclusive right to the use of the word
"Kananga," but to the phrase "Agua de Kananga;" that "Kananga" was the name
of a well-known tree of the Philippine Islands, and held that, although the
plaintiffs had a right to the exclusive use of the phrase "Agua de Kananga," it
did not follow that they had an exclusive right to the use of any of the words
contained in the said phrase.
The main reliance of the defendant is that the labels used on his goods differed from
those used by the plaintiffs as to the drawing, color, and general appearance of the
design, and he denies emphatically that he had any intention to deceive the public
thereby, alleging that the people clearly distinguished the goods of the plaintiffs
from those of the defendants, the former being known from the picture on the bottle
as the "Payo Brand" and the latter as the "Señorita Brand."
H. TAN, 2018
 HELD: there is no identity nor even any similarity whatsoever between them,
either in detail or as a whole. The difference between the two is so apparent that it
can be readily noticed. We do not believe that the public could have been deceived
by the appearance of the labels to the extent of taking the goods of the plaintiffs for
those manufactured and sold by the defendant.
We make no finding as to the bottles because they were not forwarded to this court
for inspection, and, moreover, because it was stipulated by the parties that the said
bottles were universally used by all manufacturers of toilet water, and that their
particular use by defendant was not, therefore, an act of fraud or deceit practiced
by him upon the plaintiffs or the public generally.
Section 7 of Act No. 666 provides in part as follows:
 And in order that the action shall lie under this section, actual intent to
deceive the public and defraud a competitor shall affirmatively appear on
the part of the person sought to be made liable, but such intent may be
inferred from similarity in the appearance of the goods as packed or
offered for sale to those of the complaining party.
The plaintiffs have not proved, or attempted to prove, the fraudulent intent
attributed to the defendant Zuazua by any means other than the alleged similarity
between the labels used by him and those used by the defendant to designate his
own goods. There being no such similarity between the labels, we find no reason for
even inferring that the defendant had any such intention, and therefore the action
brought by the plaintiffs in this case cannot be maintained under the law.
We agree, however, that the ownership of the trade-mark "Agua de Kananga" did
not give the plaintiffs a right to the exclusive use of the word "Kananga."
 The defendant alleged in his answer that the word "Kananga" could not be
used as a trade-mark because it was the name of a flower.
 RTC held the word "Kananga" represents the name of a well-known tree in
the Philippines. This finding has not been disputed by the plaintiffs, who
simply allege that the spelling of the said word indicates that it is foreign
to the Spanish language.
 It is apparent, therefore, that the said word could not be used exclusively
as a trade-mark, any more than could the words "sugar," "tobacco," or
"coffee."
 "A designation or part of a designation which relates only to the name,
quality, or description of the merchandise ... cannot be the subject of a
trade-mark." The denominations generally used in commerce for the
purpose of designating a class of goods could not be the subject of labels
or trade-marks.
The finding of the court that the plaintiffs have no right to the exclusive use of the word
"Kananga" is sustained.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
13. Compania Gral de Tabacco v. Alhambra Cigar, 33 Phil 485, G.R. No. 10619 [10
February 1916]
Applicable provision:
 Is likely to mislead the public, particularly as to the nature, quality,
characteristics or geographical origin of the goods or services;
This is a proceeding to punish the defendant for contempt of the court in violating a
permanent injunction issued against it in the above entitled action.
The action was one to recover damages for the violation of the trade-name "Isabela"
and for unfair competition based on the same facts and to obtain a perpetual
injunction against the defendant prohibiting it from using said trade-name or one
confusingly similar thereto.
RTC: plaintiff has appropriated and was entitled to the exclusive use of the word
"Isabela" as a trade-mark in connection with its cigarettes and that the word Isabelas
as employed in the phrases "Alhambra Isabelas" used by the defendant on its
cigarettes was a violation of the trade-mark "Isabela" the exclusive property rights
in which belonged to the plaintiff.
 The court issued a permanent injunction prohibiting the defendant from
the use of the word "Isabelas" or any word confusingly similar thereto, as
follows: the Alhambra Cigar and Cigarette Manufacturing Company are
hereby perpetually prohibited from employing or making use of the word
'Isabelas' or any equivalent thereof, or of any other word or name
confusingly similar thereto as a distinguishing brand or name for cigarettes 17
manufactured by said defendant.
The defendant appealed. That motion was denied and the defendant later made the
same motion to the Supreme Court, which was also denied.
In spite of the existence of the injunction the defendant continued to use the words
"Alhambra Isabelas" on its cigarettes; and plaintiff began a proceeding in the trial
court to punish the defendant for a violation of the injunction. Defendant was found
guilty of competent of court for the violation of the injunction referred to. Thereafter
the defendant placed on its cigarettes the words, "Alhambra Isabela," simply
changing the word "Isabelas" to "Isabela." It also placed on the back of the packages
the words "Blue Ribbon Cigarillos" as a distinctive name or brand for its cigarettes.
Believing that defendant was still violating the injunction, plaintiff began another
proceeding to punish it for contempt. Defendant was found guilty of violating the
injunction. From that judgment defendant appealed to this court and that is the
appeal we are now considering.
The appellant contends here:
1) The injunction is indefinite and uncertain to such an extent that a person
of ordinary intelligence would be unable to comply with it and still protect
his acknowledged rights;
H. TAN, 2018
 2) The injunction is void for the reason that the judgment of the court on
which it is based is not responsive to the pleadings or to the evidence in
the case and has nothing in the record to support it;
3) The court had no jurisdiction.
While the complaint set forth an action on trade-name and for unfair competition,
accepting the plaintiff's interpretation of it, the trial court based its judgment on the
violation of a trade-mark, although the complaint contained no allegation with
respect to a trade-mark and no issue was joined on that subject by the pleadings and
no evidence was introduced on the trial with respect thereto.
There was, however, some evidence in the case with respect to the plaintiff's
ownership of the trade-name "Isabela," for the violation of which the plaintiff was
suing, and there was some evidence which might support an action of unfair
competition, if such an action could be sustained under the statute. Therefore,
although the judgment of the trial court was based on the violation of a trade-mark,
there was some evidence to sustain the judgment if it had been founded on a
violation of the trade-name or on unfair competition. The judgment was erroneous
and was reversed for that reason; but having some evidence to sustain it, it was
not void and the injunction issued in that action was one which the court had
power to issue. Although the judgment was clearly erroneous and without basis in
law, it was, nevertheless, a judgment of a court of competent jurisdiction which
had authority to render that particular judgment and to issue a permanent
injunction thereon.
The appellant complains that it did not use the word “Isabelas” as a distinguishing
brand or name but simply as a word describing the quality of tobacco which
composed the cigarettes to which the name was attached.
HELD: While we agree with defendant that the word "Isabela is primarily a
geographical name and descriptive word, that fact does not signify that an
injunction prohibiting the use of that word is void for that reason.
The question is not was the judgment correct on the law and the facts, but was it a
valid judgment? If so, and if the injunction issued thereon was definite and certain
and was within the subject matter of the judgment, the defendant was bound to
obey it, however, erroneous it may have been.
The defendant will not be permitted to say that it sought to use a different word or
phrase and that by reason of the indefiniteness of the injunction it fell into error,
although in good faith it attempted to obey its terms. It continued to use the
prohibited word in precisely the manner prior to the injunction; and it cannot be said
that it was misled by the vagueness of the injunction, for, however vague the
injunction may have been, the defendant could not have been ignorant of the fact
that it had been prohibited from using the word "Isabelas" the word that had been
the very center of the controversy in which the injunction was issued.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
14. Ang v. Teodoro, same as above
15. Arce Sons v. Selecta Biscuits, 1 SCRA 253, G.R. No. L-14761 [28 January 1961]
 (j) Consists exclusively of signs or of indications that may serve in trade to designate
the kind, quality, quantity, intended purpose, value, geographical origin, time or
production of the goods or rendering of the services, or other characteristics of the
goods or services;
Selecta Biscuit Company filed with the Philippine Patent Office a petition for the
registration of the word "SELECTA" as trade-mark to be use in its bakery products alleging
that it is in actual use thereof for not less than two months before said date and that "no
other persons, partnership, corporation or association ... has the right to use said trade-
mark in the Philippines, either in the identical form or in any such near resemblance
thereto, as might be calculated to deceive."
 Its petition was referred to an examiner for study who found that the trade-mark
sought to be registered resembles the word "SELECTA" used by the Acre and Sons
and Company, in its milk and ice cream products so that its use by respondent will
cause confusion as to the origin of their respective goods. Consequently, he
recommended that the application be refused. However, upon reconsideration, the
Patent Office ordered the publication of the application for purposes of opposition.
In due time, petitioner filed its opposition thereto on several grounds
(1) that the mark "SELECTA" had been continuously used by petitioner in the 18
manufacture and sale of its products, including cakes, bakery products, milk and ice
cream from the time of its organization and even prior thereto by its predecessor-
in-interest, Ramon Arce;
(2) that the mark "SELECTA" has already become identified with name of the petitioner
and its business;
(3) that ARCE had warned SELECTA BISCUITS not to use said mark because it was already
being used by the former, but that the latter ignored said warning;
(4) that SELECTA BISCUITS is using the word "SELECTA" as a trade-mark as bakery
products in unfair competition with the products of petitioner thus resulting in
confusion in trade;
(5) that the mark to which the application of SELECTA BISCUITS refers has striking
resemblance, both in appearance and meaning, to petitioner's mark as to be
mistaken therefor by the public and cause respondent's goods to be sold as
petitioner's; and
(6) that actually a complaint has been filed by the ARCE against SELECTA BISCUITS for
unfair competition in the Court of First Instance of Manila asking for damages and
for the issuance of a writ of injunction against respondent enjoining the latter for
continuing with the use of said mark.
CFI rendered decision in the unfair competition case perpetually enjoining SELECTA
BISCUITS from using the name "SELECTA" as a trade-mark on the goods manufactured
and/or sold by it.
H. TAN, 2018
 The Director of Patents dismissed ARCE’s opposition and stating that the registration of
the trade-mark "SELECTA" in favor of applicant Selecta Biscuits Company, Inc. will not
cause confusion or mistake nor will deceive the purchasers as to the cause damage to
petitioner. Hence, petitioner interposed the present petition for review.
Facts of ARCE:
1. The war that broke out did not stop Ramon Arce from continuing with his business.
After a brief interruption of about a month, he resumed his business using the same
trade-name and trade-mark, but this time, on a large scale. He entered the
restaurant business.
2. However, Ramon Arce was again forced to discontinue the business when American
planes started to bomb Manila and one of his sons who was managing the business,
was seized by the Japanese. Liberation came and immediately thereafter.
3. Ramon Arce once more resumed his business, even more actively, by adding another
store located at the corner of Lepanto and Azcarraga Streets.
4. Continuing to use the name 'Selecta,' he added bakery products to his line of
business. Incidentally, Arce's bakery was transferred to Balintawak, Quezon City —
another expansion of his business.
5. Like the other products, special carton boxes in different sizes, according to the
bakery products, with the name 'Selecta' on top of the covers are provided for these
bakery products. For the cakes, special boxes and labels reading 'Selecta Cakes for
all occasions' are made. For the milk products, special bottle caps and bottles with
the colored words 'Quality Always Selecta Fresh Milk, One Pint' inscribed and blown
on the sides of the bottles - an innovation from the old bottles and caps used
formerly. Similar, special boxes with the name 'Selecta 'are provided for fried chicken
sold to customers.
6. Business being already well established, Ramon Arce decided to retire, so that his
children can go on with the business. For this purpose, he transferred and leased to
them all his rights, interest and participations in the business, including the use of
the name of 'Selecta.’
7. He further wrote the Bureau of Commerce letter, requesting cancellation of the
business name 'Selecta Restaurant' to give way to the registration of the same
'Selecta' and asked that the same be registered in the name of Arce Sons & Company,
a co-partnership entered into by and among his children.
8. Pursuing the policy of expansion adopted by their predecessor, Arce Sons &
Company established another store the now famous 'Selecta Dewey Boulevard', with
seven (7) delivery trucks with the 'Selecta ' conspicuously painted on them, to serve,
deliver, and cater to customers in and outside of Manila."
The case for SELECTA BISCUITS:
1. The name 'Selecta' was chosen as a translation of the Chinese word 'Ching Suan'
which means 'mapili' in Tagalog, and Selected' in English.
2. The same name Selecta Biscuit Company, Inc. was also subsequently registered with
the Bureau of Internal Revenue which issued Registration Certificate. Inquiries were
also made with the Patent Office of 'Selecta'; after an official of the Patent referred
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
to index cards information was furnished to the effect that defendant could register
the name 'Selecta' with the Bureau of Patents.
3. Defendant actually operated its business factory on June 20, 1955, while the petition
for registration of trade-mark 'Selecta' was filed with the Philippine Patent Office
only on September 1, 1955, for the Philippine Patent Office informed the defendant
that the name should first be used before registration.
4. The factory of defendant is located at Tuazon Avenue, Northern Hills, Malabon, Rizal,
showing plainly on its wall facing the streets the name 'SELECTA BISCUIT COMPANY,
INC.'
5. It is significant to note that Eulalio Arce, Managing Partner of the plaintiff resided
and resides near the defendant's factory, only around 150 meters away ; in fact, Arce
use to pass in front of the factory of defendant while still under construction and up
to the present time. Neither Eulalio Arce nor any other person in representation of
the plaintiff complained to the defendant about the use of the name 'Selecta Biscuit'
until of the present complaint.
6. There are other factories using 'Selecta as trade-mark for biscuit; defendant in fact
uses different kinds of trade-mark.
7. The biscuits, cookies, and crackers manufactured and sold by defendant are wrapped
in cellophane pouches and place inside tin can; the products of defendant are sold
through the length and breadth of the Philippines through agents with more than
one hundred 600 stores as customers buying on credit.
8. Defendant advertises its products through radio broadcast and spot announcement;
the broadcasts scripts announced therein through the radio clearly show, among
others, that Selecta Biscuit are manufactured by Selecta Company. 19
9. Besides the signboard, 'Selecta Biscuit Company, Inc.' on the building itself,
defendant has installed signboard along the highways to indicate the location of the
factory of defendant; delivery trucks defendant are plainly carrying signboards
Selecta Biscuit Company.
10. The defendant sells its product throughout the Philippines, including Luzon , Visayas,
Mindanao; its customers count, among others, 600 stores buying on credit; its stores
buying on cash number around 50.
11. Sales in Manila and suburbs are minimal, (Exh. 12). Defendant is a wholesaler and
not a retailer of biscuits, cookies and crackers. This is the nature of the operation of
the business of the defendant."
HELD:
 It appears that Ramon Arce started his milk business as early as 1933. He sold his
milk products in bottles covered with caps on which the words 'SELECTA FRESH MILK'
were inscribed. Expanding his business, he established a store at Lepanto Street, City
of Manila, where he sold, in addition to his products, ice cream, sandwiches and
other food products, placing right in front of his establishment a signboard with the
name 'SELECTA' inscribed thereon. Special containers made of tin cans with the word
'SELECTA' written on their covers were used for his products. Bottle with the same
word embossed on their sides were used for his milk products. The sandwiches he
sold and distributed were wrapped in carton boxes with covers bearing the same
name. He used several cars and trucks for delivery purposes on the sides of which
H. TAN, 2018
 were written the same word. As new products were produced for sale, the same
were placed in containers with the same name written on their covers. After the war,
he added to his business such items as cakes, bread, cookies, pastries, and assorted
bakery products. Then his business was acquired by petitioner, a co-partnership
organized by his sons, the purposes of which are "to conduct a first class restaurant
business; to engage in the manufacture and sale of ice cream, milk, cakes and other
products; and to carry on such other legitimate business as may produce profit."
 The foregoing unmistakably show that petitioner, through its predecessor-in-
interest, had made use of the word "SELECTA" not only as a trade-name indicative of
the location of the restaurant where it manufactures and sells its products, but as
trade-mark is used. This is not only in accordance with its general acceptation but
with our law on the matter. "
 Verily, the word 'SELECTA' has been chosen by petitioner and has been inscribed on
all its products to serve not only as a sign or symbol that may indicate that they are
manufactured and sold by it but as a mark of authenticity that may distinguish them
from the products manufactured and sold by other merchants or businessmen. The
Director of Patents, therefore, erred in holding that petitioner made use of that word
merely as a trade-name and not as a trade-mark within the meaning of the law.
 The word 'SELECTA', it is true, may be an ordinary or common word in the sense
that may be used or employed by any one in promoting his business or enterprise,
but once adopted or coined in connection with one's business as an emblem, sign
or device to characterize its products, or as a badge of authenticity, it may acquire
a secondary meaning as to be exclusively associated with its products and business.
o In this sense, its used by another may lead to confusion in trade and cause
damage to its business. And this is the situation of petitioner when it used the
word 'SELECTA' as a trade-mark.
o In this sense, the law gives its protection and guarantees its used to the
exclusion of all others.
o "The ownership or possession of a trade-mark shall be recognized and
protected in the same manner and to the same extent, as are other property
rights known to the law," thereby giving to any person entitled to the exclusive
use of such trade-mark the right to recover damages in a civil action from any
person who may have sold goods of similar kind bearing such trade-mark.
 The term 'SELECTA' may be placed at par with the words "Ang Tibay" which this Court
has considered not merely as a descriptive term within the meaning of the Trade-
mark Law but as a fanciful or coined phrase, or a trade-mark.
o Even if 'AngTibay', therefore, were not capable of exclusive appropriation as a
trade-mark, the application of the doctrine of secondary meaning could
nevertheless be fully sustained because, in any event, by respondent's long and
exclusive appropriation with reference to an article on the market, because
geographically or otherwise descriptive, might nevertheless have been used so
long and exclusively by one producer with reference to his article that, in that
trade and to that branch of the purchasing public, the word or phrase has come
to mean that article was his product."
 But respondent claims that it adopted the trade-mark 'SELECTA' in good faith and
not precisely to engage in unfair competition with petitioner.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
o It tried to establish that respondent was organized as a corporation under the
name of Selecta Biscuit Company, Inc. on March 2, 1955 and started operations
as a biscuit factory on June 20, 1955; that the name 'SELECTA' was chosen by
the organizers of respondent who are Chinese citizens as a translation of the
Chinese word "Ching Suan" which means "mapili" in Tagalog, and "Selected" in
English; that , thereupon, it registered its articles of incorporation with the
Securities and Exchange Commission and the name 'SELECTA' as a business
name with the Bureau of Commerce which issued to it Certificate of
Registration No. 55594; and that it also registered the same trade-name with
the Bureau of Internal Revenue and took steps to obtain a patent from the
Patent Office by filing with it as application for the registration of said trade-
name.
 The suggestion that the name 'SELECTA' was chosen by the organizers of
respondent merely as a translation from a Chinese word "Ching Suan" meaning
"mapili" in the dialect is betrayed by the very manner of its selection, for if the only
purpose is to make an English translation of that word and not to compete with
the business of petitioner, why chose the word 'SELECTA', a Spanish word, and not
"Selected", the English equivalent thereof, as was done by other well-known
enterprises? In the words of petitioner's counsel, "Why with all the words in the
English dictionary and all the words in the Spanish dictionary and all the phrases
that could be coined, should defendant-appellant (respondent) choose 'SELECTA'
if its purpose was not and is not to fool the people and to damage plaintiff-
appellee?"
20
16. Kabushi Kaisha Isetan v. IAC – same
17. Asia Brewery v. CA, 224 SCRA 437 (1993), G.R. No. 103543 [5 July 1993]
 Confusing because infringement considered as a form of unfair
competition
ISSUE: WON ABI, by manufacturing and selling its BEER PALE PILSEN in 320 ML
amber colored steinie bottles with a white painted rectangular label has
committed trademark infringement and unfair competition against SMC? (NO)
SMC filed a complaint against Asia Brewery for infringement of trademark and unfair
competition on account of the ABI’s BEER PALE PILSEN or BEER NA BEER product
which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the
local beer market.
RTC dismissed SMC's complaint because ABI "has not committed trademark
infringement or unfair competition against" SMI. CA reversed, holding that ABI is
GUILTY of infringement of trademark and unfair competition.
HELD:
Infringement of trademark is a form of unfair competition. The Trademark Law,
defines what constitutes infringement:
H. TAN, 2018
 Sec. 22. Infringement, what constitutes. — Any person who shall use, without the
consent of the registrant, any reproduction, counterfeit, copy or colorable imitation
of any registered mark or trade-name in connection with the sale, offering for sale,
or advertising of any goods, business or services on or in connection with which such
use is likely to cause confusion or mistake or to deceive purchasers or others as to
the source or origin of such goods or services, or identity of such business; or
reproduce, counterfeit, copy or colorably imitate any such mark or trade-name and
apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended to be used
upon or in connection with such goods, business or services, shall be liable to a civil
action by the registrant for any or all of the remedies herein provided. (Emphasis
supplied.)
This definition implies that only registered trade marks, trade names and service
marks are protected against infringement or unauthorized use by another or others.
The use of someone else's registered trademark, trade name or service mark is
unauthorized, hence, actionable, if it is done "without the consent of the registrant."
The registered trademark of SMC for its pale pilsen beer is: San Miguel Pale Pilsen
With Rectangular Hops and Malt Design.
As described by the trial court in its decision:
1. A rectangular design [is] bordered by what appears to be minute grains
arranged in rows of three in which there appear in each corner hop designs.
2. At the top is a phrase written in small print "Reg. Phil. Pat. Off." and at the
bottom "Net Contents: 320 Ml."
3. The dominant feature is the phrase "San Miguel" written horizontally at the
upper portion.
4. Below are the words "Pale Pilsen" written diagonally across the middle of the
rectangular design.
5. In between is a coat of arms and the phrase "Expertly Brewed."
6. The "S" in "San" and the "M" of "Miguel," "P" of "Pale" and "Pilsen" are written
in Gothic letters with fine strokes of serifs.
7. Below "Pale Pilsen" is the statement "And Bottled by" (first line, "San Miguel
Brewery" (second line), and "Philippines" (third line). (p. 177, Rollo; Emphasis
supplied.)
On the other hand, ABI's trademark, as described by the trial court, consists of:
1. A rectangular design bordered by what appear to be buds of flowers with
leaves.
2. The dominant feature is "Beer" written across the upper portion of the
rectangular design.
3. The phrase "Pale Pilsen" appears immediately below in smaller block letters.
4. To the left is a hop design and to the right, written in small prints, is the phrase
"Net Contents 320 ml."
5. Immediately below "Pale Pilsen" is the statement written in three lines
"Especially brewed and bottled by" (first line), "Asia Brewery Incorporated"
(second line), and "Philippines" (third line), (p. 177, Rollo; Emphasis supplied.)
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Does ABI's BEER PALE PILSEN label or "design" infringe upon SMC's SAN MIGUEL
PALE PILSEN WITH RECTANGULAR MALT AND HOPS DESIGN? The answer is "No."
HELD:
 Infringement is determined by the "test of dominancy" rather than by
differences or variations in the details of one trademark and of another. T
 Similarity in size, form and color, while relevant, is not conclusive.
 If the competing trademark contains the main or essential or dominant
features of another, and confusion and deception is likely to result,
infringement takes place.
 Duplication or imitation is not necessary; nor is it necessary that the infringing
label should suggest an effort to imitate.
 The question at issue in cases of infringement of trademarks is whether the
use of the marks involved would be likely to cause confusion or mistakes in
the mind of the public or deceive purchasers.
 The test was similarity or "resemblance between the two (trademarks) such
as would be likely to cause the one mark to be mistaken for the other. . . .
[But] this is not such similitude as amounts to identity."
What are the dominant features of the competing trademarks before us?
 There is hardly any dispute that the dominant feature of SMC's trademark is the
name of the product: SAN MIGUEL PALE PILSEN, written in white Gothic letters
with elaborate serifs at the beginning and end of the letters "S" and "M" on an 21
amber background across the upper portion of the rectangular design.
 On the other hand, the dominant feature of ABI's trademark is the name: BEER
PALE PILSEN, with the word "Beer" written in large amber letters, larger than
any of the letters found in the SMC label. Hence, there is absolutely no similarity
in the dominant features of both trademarks.
 Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be
confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER
PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No
evidence whatsoever was presented by SMC proving otherwise.
 Besides the dissimilarity in their names, the following other dissimilarities in the
trade dress or appearance of the competing products abound:
(1) The SAN MIGUEL PALE PILSEN bottle has a slender tapered neck. The
BEER PALE PILSEN bottle has a fat, bulging neck.
(2) The words "pale pilsen" on SMC's label are printed in bold and laced
letters along a diagonal band, whereas the words "pale pilsen" on
ABI's bottle are half the size and printed in slender block letters on a
straight horizontal band.
(3) The names of the manufacturers are prominently printed on their
respective bottles.
(4) SAN MIGUEL PALE PILSEN is "Bottled by the San Miguel Brewery,
Philippines," whereas BEER PALE PILSEN is "Especially brewed and
bottled by Asia Brewery Incorporated, Philippines."
H. TAN, 2018
 (5) On the back of ABI's bottle is printed in big, bold letters, under a row
of flower buds and leaves, its copyrighted slogan: "BEER NA BEER!"
Whereas SMC's bottle carries no slogan.
(6) The back of the SAN MIGUEL PALE PILSEN bottle carries the SMC logo,
whereas the BEER PALE PILSEN bottle has no logo.
(7) The SAN MIGUEL PALE PILSEN bottle cap is stamped with a coat of
arms and the words "San Miguel Brewery Philippines" encircling the
same. The BEER PALE PILSEN bottle cap is stamped with the name
"BEER" in the center, surrounded by the words "Asia Brewery
Incorporated Philippines."
(8) Finally, there is a substantial price difference between BEER PALE
PILSEN (currently at P4.25 per bottle) and SAN MIGUEL PALE PILSEN
(currently at P7.00 per bottle). One who pays only P4.25 for a bottle
of beer cannot expect to receive San Miguel Pale Pilsen from the
storekeeper or bartender.
 The fact that the words pale pilsen are part of ABI's trademark does not
constitute an infringement of SMC's trademark, for "pale pilsen" are
generic words descriptive of the color of a type of beer.
 "Pilsen" is a "primarily geographically descriptive word," hence, non-
registerable and not appropriable by any beer manufacturer.
 The Trademark Law provides: Sec. 4. . . .. The owner of trade-mark, trade-
name or service-mark used to distinguish his goods, business or services
from the goods, business or services of others shall have the right to
register the same [on the principal register], unless it: Consists of a mark
or trade-name which, when applied to or used in connection with the
goods, business or services of the applicant is merely descriptive or
deceptively misdescriptive of them, or when applied to or is primarily
geographically descriptive or deceptively misdescriptive of them, or is
primarily merely a surname."
 The words "pale pilsen" may not be appropriated by SMC for its exclusive
use even if they are part of its registered trademark, any more than such
descriptive words as "evaporated milk," "tomato ketchup," "cheddar
cheese," "corn flakes" and "cooking oil" may be appropriated by any single
manufacturer of these food products, for no other reason than that he was
the first to use them in his registered trademark.
 No one may appropriate generic or descriptive words. They belong to the
public domain.
 A word or a combination of words which is merely descriptive of an article
of trade, or of its composition, characteristics, or qualities, cannot be
appropriated and protected as a trademark to the exclusion of its use by
others. . . . inasmuch as all persons have an equal right to produce and
vend similar articles, they also have the right to describe them properly
and to use any appropriate language or words for that purpose, and
 no person can appropriate to himself exclusively any word or expression,
properly descriptive of the article, its qualities, ingredients or
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
characteristics, and thus limit other persons in the use of language
appropriate to the description of their manufactures, the right to the use
of such language being common to all.
 This rule excluding descriptive terms has also been held to apply to trade-
names.
 The true test is not whether they are exhaustively descriptive of the
article designated, but whether in themselves, and as they are commonly
used by those who understand their meaning, they are reasonably
indicative and descriptive of the thing intended. If they are thus
descriptive, and not arbitrary, they cannot be appropriated from general
use and become the exclusive property of anyone.
 A descriptive word may be admittedly distinctive, especially if the user is
the first creator of the article. It will, however, be denied protection, not
because it lacks distinctiveness, but rather because others are equally
entitled to its use.
 In view of the visible differences between the two products, the Court
believes it is quite unlikely that a customer of average intelligence would
mistake a bottle of BEER PALE PILSEN for SAN MIGUEL PALE PILSEN.
The fact that BEER PALE PILSEN like SAN MIGUEL PALE PILSEN is bottled in amber-
colored steinie bottles of 320 ml. capacity and is also advertised in print, broadcast,
and television media, does not necessarily constitute unfair competition.
 Unfair competition is the employment of deception or any other means
22
contrary to good faith by which a person shall pass off the goods
manufactured by him or in which he deals, or his business, or services, for
those of another who has already established goodwill for his similar
goods, business or services, or any acts calculated to produce the same
result.
In this case, the question to be determined is whether ABI is using a name or mark
for its beer that has previously come to designate SMC's beer, or whether ABI is
passing off its BEER PALE PILSEN as SMC's SAN MIGUEL PALE PILSEN.
 The universal test question is whether the public is likely to be deceived.
 Nothing less than conduct tending to pass off one man's goods or business
as that of another will constitute unfair competition. Actual or probable
deception and confusion on the part of the customers by reason of
defendant's practices must always appear.
 The use of ABI of the steinie bottle, similar but not identical to the SAN
MIGUEL PALE PILSEN bottle, is not unlawful. As pointed out by ABI's
counsel, SMC did not invent but merely borrowed the steinie bottle from
abroad and it claims neither patent nor trademark protection for that
bottle shape and design.
 There is no infringement of plaintiff's bottle, firstly, because according to
plaintiff's witness Deogracias Villadolid, it is a standard type of bottle called
steinie, and it is not a San Miguel Corporation design but a design originally
H. TAN, 2018
 developed in the United States by the Glass Container Manufacturer's
Institute and therefore lacks exclusivity.
 Secondly, the shape was never registered as a trademark.
 Thirdly, the neck of defendant's bottle is much larger and has a distinct
bulge in its uppermost part.
The petitioner's contention that bottle size, shape and color may not be the exclusive
property of any one beer manufacturer is well taken.
 Nobody can acquire any exclusive right to market articles supplying simple
human needs in containers or wrappers of the general form, size and
character commonly and immediately used in marketing such articles.
 Protection against imitation should be properly confined to
nonfunctional features.
ABI does not use SMC's steinie bottle. Neither did ABI copy it. ABI makes its own
steinie bottle which has a fat bulging neck to differentiate it from SMC's bottle.
 The amber color is a functional feature of the beer bottle. As pointed out
by ABI, all bottled beer produced in the Philippines is contained and sold
in amber-colored bottles because amber is the most effective color in
preventing transmission of light and provides the maximum protection to
beer.
 A merchant cannot be enjoined from using a type or color of bottle where
the same has the useful purpose of protecting the contents from the
deleterious effects of light rays.
 Moreover, no one may have a monopoly of any color. Not only beer, but
most medicines, whether in liquid or tablet form, are sold in amber-
colored bottles.
That the ABI bottle has a 320 ml. capacity is not due to a desire to imitate SMC's
bottle because that bottle capacity is the standard prescribed under Metrication
Circular No. 778, of the Department of Trade, Metric System Board.
With regard to the white label of both beer bottles, ABI explained that it used the
color white for its label because white presents the strongest contrast to the amber
color of ABI's bottle; it is also the most economical to use on labels, and the easiest
to "bake" in the furnace.
 No one can have a monopoly of the color amber for bottles, nor of white
for labels, nor of the rectangular shape which is the usual configuration of
labels.
 Needless to say, the shape of the bottle and of the label is unimportant.
What is all important is the name of the product written on the label of the
bottle for that is how one beer may be distinguished form the others.
. . . . In order that there may be deception of the buying public in the sense necessary
to constitute unfair competition, it is necessary to suppose a public accustomed to
buy, and therefore to some extent familiar with, the goods in question. The test of
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
fraudulent simulation is to be found in the likelihood of the deception of persons in
some measure acquainted with an established design and desirous of purchasing the
commodity with which that design has been associated. The test is not found in the
deception, or possibility of the deception, of the person who knows nothing about
the design which has been counterfeited, and who must be indifferent as between
that and the other. The simulation, in order to be objectionable, must be such as
appears likely to mislead the ordinarily intelligent buyer who has a need to supply
and is familiar with the article that he seeks to purchase.
When as in this case, the names of the competing products are clearly different
and their respective sources are prominently printed on the label and on other
parts of the bottle, mere similarity in the shape and size of the container and label,
does not constitute unfair competition.
 The steinie bottle is a standard bottle for beer and is universally used. SMC
did not invent it nor patent it.
 The fact that SMC's bottle is registered under R.A. No. 623 simply prohibits
manufacturers of other foodstuffs from the unauthorized use of SMC's
bottles by refilling these with their products.
 It was not uncommon then for products such as patis (fish sauce) and toyo
(soy sauce) to be sold in recycled SAN MIGUEL PALE PILSEN bottles.
Registration of SMC's beer bottles did not give SMC a patent on the steinie
or on bottles of similar size, shape or color.
 Most containers are standardized because they are usually made by the
same manufacturer.
23
 Just as no milk producer may sue the others for unfair competition because
they sell their milk in the same size and shape of milk can which he uses,
neither may SMC claim unfair competition arising from the fact that ABI's
BEER PALE PILSEN is sold, like SMC's SAN MIGUEL PALE PILSEN in amber
steinie bottles.
The record does not bear out SMC's apprehension that BEER PALE PILSEN is being
passed off as SAN MIGUEL PALE PILSEN.
 This is unlikely to happen for consumers or buyers of beer generally order
their beer by brand.
 In supermarkets and tiendas, beer is ordered by brand, and the customer
surrenders his empty replacement bottles or pays a deposit to guarantee
the return of the empties. In sari-sari stores, beer is also ordered from the
tindera by brand. The same is true in restaurants, pubs and beer gardens
— beer is ordered from the waiters by brand.
Considering further that SAN MIGUEL PALE PILSEN has virtually monopolized the
domestic beer market for the past hundred years, those who have been drinking
no other beer but SAN MIGUEL PALE PILSEN these many years certainly know their
beer too well to be deceived by a newcomer in the market. If they gravitate to ABI's
cheaper beer, it will not be because they are confused or deceived, but because
they find the competing product to their taste.
H. TAN, 2018
  CA affirmed the decision of the Director of Patents dated 19 July 1988 in all
There is no confusing similarity between the competing beers for the name of one
is "SAN MIGUEL" while the competitor is plain "BEER" and the points of
dissimilarity between the two outnumber their points of similarity.
Petitioner ABI has neither infringed SMC's trademark nor committed unfair
competition with the latter's SAN MIGUEL PALE PILSEN product. While it’s BEER
PALE PILSEN admittedly competes with the latter in the open market, that
competition is neither unfair nor fraudulent. Hence, we must deny SMC's prayer
to suppress it.
18. Emerald Garment Manufacturing v. CA, 251 SCRA 600, G.R. No. 100098 [29
December 1995]
ISSUE:
1) WON HD Lee is barred by estoppel to file the present case for infringement?
(NO)
2) WON there’s confusing similarity between HD Lee’s “LEE” and Emerald’s
“Stylistic Mr. Lee”? (using holistic test, NO)
 H.D. Lee, a US corporation filed with the Bureau of Patents, a Petition for
Cancellation of Registration (Supplemental Register) for the trademark
"STYLISTIC MR. LEE" used on clothing under Class 25, issued in the name of
petitioner Emerald Garment, a domestic corporation.
 HD Lee, invoking Sec. 37 of R.A. No. 166 (Trademark Law) and Art. VIII of the
Paris Convention for the Protection of Industrial Property, averred that Emerald
Garment’s trademark "so closely resembled its own trademark, 'LEE' as
previously registered and used in the Philippines, and not abandoned, as to be
likely, when applied to or used in connection with petitioner's goods, to cause
confusion, mistake and deception on the part of the purchasing public as to the
origin of the goods."
 Emerald Garment contended that its trademark was entirely and unmistakably
different from that of private respondent and that its certificate of registration
was legally and validly granted. Then, Emerald caused the publication of its
application for registration of the trademark "STYLISTIC MR. LEE" in the
Principal Register. HD Lee filed a notice of opposition to petitioner's application
for registration also on grounds that petitioner's trademark was confusingly
similar to its "LEE" trademark.
 Director of Patents rendered a decision granting private respondent's petition
for cancellation and opposition to registration. The Director found HD Lee to be
the prior registrant of the trademark "LEE" in the Philippines and that it had
been using said mark in the Philippines. Moreover, using the test of dominancy,
he declared that petitioner's trademark was confusingly similar to private
respondent's mark because "it is the word 'Lee' which draws the attention of
the buyer and leads him to conclude that the goods originated from the same
manufacturer. It is undeniably the dominant feature of the mark.”
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
respects. It held that “Whether or not a trademark causes confusion and is likely
to deceive the public is a question of fact which is to be resolved by applying
the "test of dominancy", meaning, if the competing trademark contains the
main or essential or dominant features of another by reason of which confusion
and deception are likely to result, then infringement takes place; that
duplication or imitation is not necessary, a similarity in the dominant features
of the trademark would be sufficient.”
 The word "LEE" is the most prominent and distinctive feature of the
appellant's trademark and all of the appellee's "LEE" trademarks. It is the
mark which draws the attention of the buyer and leads him to conclude
that the goods originated from the same manufacturer.
 While it is true that there are other words such as "STYLISTIC", printed in
the appellant's label, such word is printed in such small letters over the
word "LEE" that it is not conspicuous enough to draw the attention of
ordinary buyers whereas the word "LEE" is printed across the label in big,
bold letters and of the same color, style, type and size of lettering as that
of the trademark of the appellee.
 The alleged difference is too insubstantial to be noticeable.
 Even granting arguendo that the word "STYLISTIC" is conspicuous enough
to draw attention, the goods may easily be mistaken for just another
variation or line of garments under the appelle's "LEE" trademarks in view
of the fact that the appellee has registered trademarks which use other
24
words in addition to the principal mark "LEE" such as "LEE RIDERS",
"LEESURES" and "LEE LEENS".
 The likelihood of confusion is further made more probable by the fact that
both parties are engaged in the same line of business.
 It is well to reiterate that the determinative factor in ascertaining whether
or not the marks are confusingly similar to each other is not whether the
challenged mark would actually cause confusion or deception of the
purchasers but whether the use of such mark would likely cause
confusion or mistake on the part of the buying public.
 The appellee has sufficiently established its right to prior use and
registration of the trademark "LEE" in the Philippines and is thus entitled
to protection from any infringement upon the same. It is thus axiomatic
that one who has identified a peculiar symbol or mark with his goods
thereby acquires a property right in such symbol or mark, and if another
infringes the trademark, he thereby invokes this property right.
 The merchandise or goods being sold by the parties are not that expensive
as alleged to be by the appellant and are quite ordinary commodities
purchased by the average person and at times, by the ignorant and the
unlettered. Ordinary purchasers will not as a rule examine the small
letterings printed on the label but will simply be guided by the presence of
the striking mark "LEE". Whatever difference there may be will pale in
insignificance in the face of an evident similarity in the dominant features
and overall appearance of the labels of the parties.
H. TAN, 2018
  Petitioner alleges that it has been using its trademark "STYLISTIC MR. LEE" since
1975, yet, it was only on 1981 that private respondent filed a petition for
cancellation of petitioner's certificate of registration for the said trademark.
Similarly, HD Lee’s notice of opposition to Emerald’s application for registration
in the principal register was belatedly filed on 1984.
HELD:
 Petitioner's trademark is registered in the supplemental register.
o The Trademark Law (R.A. No. 166) provides that "marks and tradenames
for the supplemental register shall not be published for or be subject to
opposition, but shall be published on registration in the Official Gazette."
o The reckoning point, therefore, should not be the date of alleged use by
petitioner of its assailed trademark but the date the certificate of
registration was published in the Official Gazette and issued to
petitioner.
o It was only on the date of publication and issuance of the registration
certificate that private respondent may be considered "officially" put on
notice that petitioner has appropriated or is using said mark, which, after
all, is the function and purpose of registration in the supplemental
register. The record is bereft of evidence that private respondent was
aware of petitioner's trademark before the date of said publication and
issuance. Hence, when private respondent instituted cancellation
proceedings on 18 September 1981, less than a year had passed.
 The pertinent provision of R.A. No. 166 (Trademark Law) states thus:
o Sec. 22. Infringement, what constitutes. —
o Any person who shall use, without the consent of the registrant, any
reproduction, counterfeit, copy or colorable imitation of any
registered mark or trade-name in connection with the sale, offering
for sale, or advertising of any goods, business or services on or in
connection with which such use is likely to cause confusion or mistake
or to deceive purchasers or others as to the source or origin of such
goods or services, or identity of such business; or reproduce,
counterfeit, copy or colorably imitable any such mark or trade-name
and apply such reproduction, counterfeit, copy, or colorable imitation
to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such
goods, business or services; shall be liable to a civil action by the
registrant for any or all of the remedies herein provided.
 In the history of trademark cases in ascertaining whether one trademark is
confusingly similar to or is a colorable imitation of another, no set rules can be
deduced. Each case must be decided on its own merits.
 In determining whether a particular name or mark is a "colorable imitation" of
another, no all-embracing rule seems possible in view of the great number of
factors which must necessarily be considered in resolving this question of fact,
such as the class of product or business to which the article belongs; the
product's quality, quantity, or size, including its wrapper or container; the
dominant color, style, size, form, meaning of letters, words, designs and
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
emblems used; the nature of the package, wrapper or container; the character
of the product's purchasers; location of the business; the likelihood of
deception or the mark or name's tendency to confuse;
etc.
 Proceeding to the task at hand, the essential element of infringement is
colorable imitation.
o This term has been defined as "such a close or ingenious imitation as
to be calculated to deceive ordinary purchasers, or such resemblance
of the infringing mark to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually gives, and to
cause him to purchase the one supposing it to be the other."
 Colorable imitation does not mean or require such similitude as amounts to
identity nor that all the details be literally copied.
o Colorable imitation refers to such similarity in form, content, words,
sound, meaning, special arrangement, or general appearance of the
trademark or tradename with that of the other mark or tradename
in their over-all presentation or in their essential, substantive and
distinctive parts as would likely mislead or confuse persons in the
ordinary course of purchasing the genuine article.
 In determining whether colorable imitation exists, jurisprudence has developed
two kinds of tests — the Dominancy Test and the Holistic Test.
o The test of dominancy focuses on the similarity of the prevalent
features of the competing trademarks which might cause confusion
or deception and thus constitutes infringement.
25
 If the competing trademark contains the main or essential
or dominant features of another, and confusion and
deception is likely to result, infringement takes place.
Duplication or imitation is not necessary; nor it is necessary
that the infringing label should suggest an effort to imitate.
 The question at issue in cases of infringement of trademarks
is whether the use of the marks involved would be likely
to cause confusion or mistakes in the mind of the public or
deceive purchasers.
o On the other side of the spectrum, the holistic test mandates that the
entirety of the marks in question must be considered in determining
confusing similarity.
 In determining whether the trademarks are confusingly
similar, a comparison of the words is not the only
determinant factor. The trademarks in their entirety as they
appear in their respective labels or hang tags must also be
considered in relation to the goods to which they are
attached. The discerning eye of the observer must focus not
only on the predominant words but also on the other
features appearing in both labels in order that he may draw
his conclusion whether one is confusingly similar to the
other.
H. TAN, 2018
  We considered the trademarks involved as a whole and rule that petitioner's
"STYLISTIC MR. LEE" is not confusingly similar to private respondent's "LEE"
trademark.
o Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on
its label the word "LEE" is prominent, the trademark should be
considered as a whole and not piecemeal. The dissimilarities
between the two marks become conspicuous, noticeable and
substantial enough to matter especially in the light of the following
variables that must be factored in.
o First, the products involved in the case at bar are, in the main,
various kinds of jeans. These are not your ordinary household items
like catsup, soysauce or soap which are of minimal cost. Maong pants
or jeans are not inexpensive. Accordingly, the casual buyer is
predisposed to be more cautious and discriminating in and would
prefer to mull over his purchase. Confusion and deception, then, is
less likely.
 Among these, what essentially determines the attitudes of
the purchaser, specifically his inclination to be cautious, is
the cost of the goods. To be sure, a person who buys a box
of candies will not exercise as much care as one who buys
an expensive watch. As a general rule, an ordinary buyer
does not exercise as much prudence in buying an article for
which he pays a few centavos as he does in purchasing a
more valuable thing. Expensive and valuable items are
normally bought only after deliberate, comparative and
analytical investigation. But mass products, low priced
articles in wide use, and matters of everyday purchase
requiring frequent replacement are bought by the casual
consumer without great care. . . .
o Second, like his beer, the average Filipino consumer generally buys his
jeans by brand. He does not ask the sales clerk for generic jeans but
for, say, a Levis, Guess, Wrangler or even an Armani. He is, therefore,
more or less knowledgeable and familiar with his preference and will
not easily be distracted.
o Finally, in line with the foregoing discussions, more credit should be
given to the "ordinary purchaser." Cast in this particular controversy,
the ordinary purchaser is not the "completely unwary consumer" but
is the "ordinarily intelligent buyer" considering the type of product
involved.
 There is no cause for the apprehension that petitioner's products might be
mistaken as "another variation or line of garments under private respondent's
'LEE' trademark." As one would readily observe, private respondent's variation
follows a standard format "LEERIDERS," "LEESURES" and "LEELEENS." It is,
therefore, improbable that the public would immediately and naturally
conclude that petitioner's "STYLISTIC MR. LEE" is but another variation under
private respondent's "LEE" mark.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
 Another way of resolving the conflict is to consider the marks involved from the
point of view of what marks are registrable pursuant to Sec. 4 of R.A. No. 166,
particularly paragraph 4 (e):
o Sec. 4. Registration of trade-marks, trade-names and service-
marks on the principal register. — There is hereby established a
register of trade-marks, trade-names and service-marks which shall
be known as the principal register. The owner of a trade-mark, trade-
name or service-mark used to distinguish his goods, business or
services from the goods, business or services of others shall have the
right to register the same on the principal register, unless it:
o (e) Consists of a mark or trade-name which, when applied to or used
in connection with the goods, business or services of the applicant is
merely descriptive or deceptively misdescriptive of them, or when
applied to or used in connection with the goods, business or services
of the applicant is primarily geographically descriptive or deceptively
misdescriptive of them, or is primarily merely a surname; (Emphasis
ours.)
 "LEE" is primarily a surname. Private respondent cannot, therefore, acquire
exclusive ownership over and singular use of said term. It has been held that a
personal name or surname may not be monopolized as a trademark or
tradename as against others of the same name or surname.
 We are constrained to agree with Emerald’s contention that HD Lee failed to
prove prior actual commercial use of its "LEE" trademark in the Philippines
before filing its application for registration with the BPTTT and hence, has not
26
acquired ownership over said mark.
 Actual use in commerce in the Philippines is an essential prerequisite for the
acquisition of ownership over a trademark pursuant to Sec. 2 and 2-A of the
Philippine Trademark Law (R.A. No. 166).
o Said trade-marks, trade-names, or service marks are actually in use in
commerce and services not less than two months in the Philippines
before the time the applications for registration are filed: And
Provided…
o Anyone who lawfully produces or deals in merchandise of any kind or
who engages in lawful business, or who renders any lawful service in
commerce, by actual use hereof in manufacture or trade, in business,
and in the service rendered…
 Undisputably, private respondent is the senior registrant, having obtained
several registration certificates for its various trademarks "LEE," "LEERIDERS,"
and "LEESURES" in both the supplemental and principal registers, as early as
1969 to 1973. However, registration alone will not suffice.
o Adoption alone of a trademark would not give exclusive right
thereto. Such right "grows out of their actual use." Adoption is not
use.
o One may make advertisements, issue circulars, give out price lists on
certain goods; but these alone would not give exclusive right of use.
For trademark is a creation of use. The underlying reason for all these
H. TAN, 2018
 is that purchasers have come to understand the mark as indicating
the origin of the wares. Flowing from this is the trader's right to
protection in the trade he has built up and the goodwill he has
accumulated from use of the trademark.
o Registration of a trademark, of course, has value: it is an
administrative act declaratory of a pre-existing right. Registration
does not, however, perfect a trademark right.
 Moreover, the credibility placed on a certificate of registration of one's
trademark, or its weight as evidence of validity, ownership and exclusive use,
is qualified. A registration certificate serves merely as prima facie evidence. It
is not conclusive but can and may be rebutted by controverting evidence.
Moreover, the aforequoted provision applies only to registrations in the
principal register.
o Registrations in the supplemental register do not enjoy a similar
privilege. A supplemental register was created precisely for the
registration of marks which are not registrable on the principal
register due to some defects.
 The Director of Patents and the CA relied mainly on the registration
certificates as proof of use by private respondent of the trademark "LEE"
which, as we have previously discussed are not sufficient.
o We cannot give credence to private respondent's claim that its "LEE"
mark first reached the Philippines in the 1960's through local sales by
the Post Exchanges of the U.S. Military Bases in the Philippines based
as it was solely on the self-serving statements of Mr. Edward Poste,
General Manager of Lee, a wholly owned subsidiary of the H.D. Lee,
Co., Inc., U.S.A., herein private respondent.
o Similarly, we give little weight to the numerous vouchers representing
various advertising expenses in the Philippines for "LEE" products
which were incurred only in 1981 and 1982 by LEE (Phils.), Inc. after it
entered into a licensing agreement with private respondent on 11
May 1981.
 On the other hand, Emerald has sufficiently shown that it has been in the
business of selling jeans and other garments adopting its "STYLISTIC MR. LEE"
trademark since 1975 as evidenced by appropriate sales invoices to various
stores and retailers.
o The Trademark Law is very clear. It requires actual commercial use of
the mark prior to its registration. There is no dispute that respondent
was the first registrant, yet it failed to fully substantiate its claim that
it used in trade or business in the Philippines the subject mark; it did
not present proof to invest it with exclusive, continuous adoption of
the trademark which should consist among others, of considerable
sales since its first use.
o The sales invoices provide the best proof that there were actual sales
of petitioner's product in the country and that there was actual use
for a protracted period of petitioner's trademark or part thereof
through these sales.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
 For lack of adequate proof of actual use of its trademark in the Philippines
prior to petitioner's use of its own mark and for failure to establish confusing
similarity between said trademarks, private respondent's action for
infringement must necessarily fail.
G. Application for Registration
1. Application
 Sec. 3, International Conventions and Reciprocity. –
 Refers to Paris Convention or the TRIPS Agreement
Any person who is
1) a national or
2) who is domiciled or
3) who has a real and effective industrial establishment
in a country which is
a. a party to any convention, treaty or agreement to which the
Philippines is also a party, relating to
i. intellectual property rights or
ii. repression of unfair competition, or
b. extends reciprocal rights to nationals of the Philippines by law,
shall be entitled to benefits to the extent necessary to give effect to any
provision of such convention, treaty or reciprocal law, in addition to the rights
to which any owner of an intellectual property right is otherwise entitled by
this Act. (n)
27
 Section 124, Requirements of Application. –
124.1. The application for the registration of the mark shall be in Filipino or in
English and shall contain the following:
(a) A request for registration;
(b) The applicant’s name and address;
(c) The name of a State of which the applicant is a national or where he has
domicile; and the name of a State in which the applicant has a real and
effective industrial or commercial establishment, if any;
Test of domicile: real and effective incorporation
(d) Where the applicant is a juridical entity, the law under which it is
organized and existing;
(e) If the applicant is not domiciled in the Philippines, the appointment of an
agent or representative;
(f) Where the applicant claims the priority of an earlier application, an
indication of:
i) The name of the State with whose national office the earlier
application was filed or if filed with an office other than a national
office, the name of that office,
ii) The date on which the earlier application was filed, and
iii) Where available, the application number of the earlier application;
(g) Where the applicant claims color as a distinctive feature of the mark, a
statement to that effect as well as the name(s) of the color(s) claimed
H. TAN, 2018
 and an indication, in respect of each color, of the principal parts of the
mark which are in that color;
(h) Where the mark is a three-dimensional mark, a statement to that effect;
(i) One or more reproductions of the mark, as prescribed in the Regulations;
(j) A transliteration or translation of the mark or of some parts thereof, as
prescribed in the Regulations;
(k) The names of the goods or services for which the registration is sought,
grouped according to the classes of the Nice Classification, together with
the number of the class of the said Classification to which each group of
goods or services belongs; and
(l) A signature by, or other self-identification of, the applicant or his
representative.
124.2. The applicant or the registrant shall file a declaration of actual use of the
mark with evidence to that effect, as prescribed by the Regulations within 3 years
from the filing date of the application. Otherwise, the application shall be refused
or the mark shall be removed from the Register by the Director.
- Even if registration is pending or not approved, you still have to file DAU to
show that you’re continuously using the mark even if there’s no official
registration and inclusion in the records of the IPO.
- Declaration is under oath.
- Use need not be commercial use.
124.3. One application may relate to several goods &/or services, whether they
belong to 1 or several classes of the Nice Classification.
- Usually, the client wants you to anticipate the possible areas of expansion.
Trick there is to able to encompass as many classes as possible. You may want
to ask your client his plans of expansion 3 to 5 years from now.
- The IPO can deny registration under some classification and approve under
other classification.
124.4. If during the examination of the application, the Office finds factual basis
to reasonably doubt the veracity of any indication or element in the application,
it may require the applicant to submit sufficient evidence to remove the doubt.
(Sec. 5, R.A. No. 166a)
 Section 125. Representation; Address for Service. –
o If the applicant is not domiciled or has no real and effective commercial
establishment in the Philippines, he shall designate
 by a written document filed in the Office,
 the name and address of a Philippine resident who may be
served notices or process in proceedings affecting the mark.
- Usually they designate the PH licensee or the lawyer representing the
applicant.
o Such notices or services may be served upon the person so designated by
leaving a copy thereof at the address specified in the last designation filed.
o If the person so designated cannot be found at the address given in the last
designation, such notice or process may be served upon the Director. (Sec.
3, R.A. No. 166a)
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
- In case of incapacity of the representative, by default, the notices shall
be sent to the Director.
 Section 126, Disclaimers.
The Office may allow or require the applicant to disclaim an unregistrable
component of an otherwise registrable mark without prejudice or effect to
1) the applicant's or owner's rights then existing or thereafter arising in the
disclaimed matter, or
2) the applicant's or owner's right on another application of later date if the
disclaimed matter became distinctive of the applicant's or owner's
goods, business or services. (Sec. 13, R.A. No. 166a)
 Section 128, Single Registration for Goods and/or Services. –
Where goods and/or services belonging to several classes of the Nice Classification
have been included in one application, such an application shall result in one
registration. (n)
 Section 130, Signature and Other Means of Self-Identification.
- Reconcile with E-commerce Act.
- Just read thru and familiarize.
130.1. Where a signature is required, the Office shall accept:
a. A hand-written signature; or
b. The use of other forms of signature, such as a printed or stamped
signature, or the use of a seal instead of a hand-written signature:
Provided, That where a seal is used, it should be accompanied by an
indication in letters of the name of the signatory. 28
130.2. The Office shall accept communications to it by telecopier, or by electronic
means subject to the conditions or requirements that will be prescribed by the
Regulations. When communications are made by telefacsimile, the reproduction
of the signature, or the reproduction of the seal together with, where required, the
indication in letters of the name of the natural person whose seal is used, appears.
The original communications must be received by the Office within thirty (30) days
from date of receipt of the telefacsimile.
130.3. No attestation, notarization, authentication, legalization or other
certification of any signature or other means of self-identification referred to in the
preceding paragraphs, will be required, EXCEPT, where the signature concerns the
surrender of a registration. (n)
- This is a new provision.
- Before, everything has to be notarized then Consularized by the PH Consuls. But it
became too cumbersome, so they did away with that.
- Notarization is only required when the signature concerns the abandonment of a
registration.
 Sec. 131, Priority Right. –
131.1. An application for registration of a mark filed in the Philippines
o by a person referred to in Section 3, and
o who previously duly filed an application for registration of the same
mark in one of those countries,
H. TAN, 2018
 shall be considered as filed as of the day the application was first filed in the foreign
country.
131.2. No registration of a mark in the Philippines by a person described in this
section shall be granted until such mark has been registered in the country of origin
of the applicant.
If denied sa foreign country, denied din dito.
If approved sa foreign country, approved then dito.
131.3. Nothing in this section shall entitle the owner of a registration granted
under this section to sue for acts committed prior to the date on which his mark
was registered in this country:
o Provided, that, notwithstanding the foregoing, the owner of a well-
known mark as defined in Section 123.1(e) of this Act, that is not
registered in the Philippines, may, against an identical or confusingly
similar mark,
 oppose its registration, or
 petition the cancellation of its registration or
 sue for unfair competition,
without prejudice to availing himself of other remedies provided for
under the law.
123.1(e): Is identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent authority of
the Philippines to be well-known internationally and in the Philippines,
whether or not it is registered here, as being already the mark of a person
other than the applicant for registration, and used for identical or similar
goods or services: Provided, That in determining whether a mark is well-
known, account shall be taken of the knowledge of the relevant sector of
the public, rather than of the public at large, including knowledge in the
Philippines which has been obtained as a result of the promotion of the
mark;
131.4. (MIGHT COME OUT IN THE EXAM)
In like manner and subject to the same conditions and requirements, the right
provided in this section may be based upon a subsequent regularly filed application
in the same foreign country:
o Provided, that any foreign application filed prior to such subsequent
application has been withdrawn, abandoned, or otherwise disposed of,
without having been laid open to public inspection and without leaving
any rights outstanding, and has not served, nor thereafter shall serve, as
a basis for claiming a right of priority. (Sec. 37, R.A. No. 166a)
 Sec. 239.2, Repeals.
Marks registered under Republic Act No. 166 (old Trademark Law) shall remain in
force but shall be deemed to have been granted under this Act and shall be due for
renewal within the period provided for under this Act and, upon renewal shall be
reclassified in accordance with the International Classification.
Trade names and marks registered in the Supplemental Register under Republic
Act No. 166 shall remain in force but shall no longer be subject to renewal.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Once the supplemental registrations have expired, they should be expunged.
Now, there’s no more supplemental registrations. Even under old jurisprudence,
supplemental registrations do not stand on the same footing as regular registrations.
The latter has prima facie presumption of validity.
2. Assignment of Application Number and Filing Date
 Sec. 127, Filing Date. –
127.1. Requirements. –
The filing date of an application shall be the date on which the Office received the
following indications and elements in English or Filipino:
(a) An express or implicit indication that the registration of a mark is sought;
(b) The identity of the applicant;
(c) Indications sufficient to contact the applicant or his representative, if any;
(d) A reproduction of the mark whose registration is sought; and
Facsimile must be actual reproduction of the features of the mark applied for. If
not, there’s a problem.
(e) The list of the goods or services for which the registration is sought.
127.2. No filing date shall be accorded until the required fee is paid. (n)
 Sec. 132, Application Number and Filing Date. –
132.1. The Office shall examine whether the application satisfies the requirements for
the grant of a filing date as provided in Section 127 and Regulations relating thereto. If
the application does not, the Office shall notify the applicant who shall within a period
fixed by the Regulations (usually 60 days) complete or correct the application as 29
required, otherwise, the application shall be considered withdrawn.
132.2 Once an application meets the filing requirements of Section 127, it shall be
numbered in the sequential order, and the applicant shall be informed of the
application number and the filing date of the application will be deemed to have been
abandoned. (n)
3. Examination
 Section 133. Examination and Publication. –
o 133.1. Once the application meets the filing requirements of Section 127, the
Office shall examine whether the application meets the requirements of Section
124 and the mark as defined in Section 121 is registerable under Section 123.
o 133.2. Where the Office finds that the conditions referred to in Subsection 133.1
are fulfilled, it shall upon payment of the prescribed fee, forthwith cause the
application, as filed, to be published in the prescribed manner.
o 133.3. If after the examination, the applicant is not entitled to registration for any
reason, the Office shall advise the applicant thereof and the reasons therefor. The
applicant shall have a period of four (4) months in which to reply or amend his
application, which shall then be re-examined. The Regulations shall determine the
procedure for the re-examination or revival of an application as well as the appeal
to the Director of Trademarks from any final action by the Examiner.
o 133.4. An abandoned application may be revived as a pending application within
3 months from the date of abandonment, upon good cause shown and the
payment of the required fee.
H. TAN, 2018
 Policy is not so much to be exacting on the technical rules. Usual reason for
nonpayment is excusable negligence.
o 133.5. The final decision of refusal of the Director of Trademarks shall be
appealable to the Director General in accordance with the procedure fixed by the
Regulations. (Sec. 7, R.A. No. 166a)
Usually period is within 15 days, appeal to the Director General.
 Sec. 126, Disclaimers. –
The Office may allow or require the applicant to disclaim an unregistrable component
of an otherwise registrable mark BUT such disclaimer shall not prejudice or affect
1) the applicant's or owner's rights then existing or thereafter arising in the
disclaimed matter, nor
2) the applicant's or owner's right on another application of later date if the
disclaimed matter became distinctive of the applicant's or owner's goods,
business or services. (Sec. 13, R.A. No. 166a)
- Anecdote about Bally on disclaimer which led to an enterprising domestic
corporation to be allowed registration on the trademark of “Bally” for socks, which
the foreign corporation which owned Bally disclaimed in one application for
registration.
 Sec. 129, Division of Application. –
Any application referring to several goods or services, hereafter referred to as the
"initial application," may be divided by the applicant into 2 or more applications,
hereafter referred to as the "divisional applications," by distributing among the latter
the goods or services referred to in the initial application.
The divisional applications shall preserve the filing date of the initial application or the
benefit of the right of priority. (n)
- Date of the filing of the initial application is deemed to be that of the divisional
application. You just reckon with one filing date.
- You may want a divisional application if one good or services in the initial
application can be confused with the other goods or services contained therein.
4. Publication
 Sec. 133.2, IPC
133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are
fulfilled, it shall upon payment of the prescribed fee, forthwith cause the application,
as filed, to be published in the prescribed manner.
5. Opposition
 Sections 134, Opposition.
o Any person who believes that he would be damaged by the registration of a mark
may file with the Office an opposition to the application,
 upon payment of the required fee and
 within 30 days after the publication referred to in Subsection 133.2.
o Such opposition shall be
1) in writing
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
2) verified by the oppositor or by any person on his behalf who knows the
facts, and
3) shall specify the grounds on which it is based and
4) include a statement of the facts relied upon.
o Copies of certificates of registration of marks registered in other countries or other
supporting documents mentioned in the opposition shall be filed therewith,
together with the translation in English, if not in the English language.
o For good cause shown and upon payment of the required surcharge, the time for
filing an opposition may be extended by the Director of Legal Affairs, who shall
notify the applicant of such extension.
o The Regulations shall fix the maximum period of time within which to file the
opposition. (Sec. 8, R.A. No. 165a)
Usual time for application for Opposition is 30 days.
 Section 135. Notice and Hearing.
o Upon the filing of an opposition, the Office shall serve notice of
1) the filing on the applicant, and
2) the date of the hearing thereof
upon the applicant and the oppositor and all other persons having any right,
title or interest in the mark covered by the application, as appear of record
in the Office. (Sec. 9, R.A. No. 165)
- We call it inter partes case.
a. Bata Industries v. CA, 114 SCRA 318, G.R. No. L-53672 [31 May 1982]
o New Olympian the registration of the mark BATA for casual rubber shoes. 30
It alleged that it has used the mark since July 1, 1970. Registration was
opposed by Bata Industries, a Canadian corporation, which alleged that it
owns and has not abandoned the trademark BATA.
o Bata Industries, Ltd. has no license to do business in the Philippines and it
is not presently selling footwear under the trademark BATA in the
Philippines; it has no licensing agreement with any local entity or firm to
sell its products in the Philippines.
o The Patent Office found that New Olympian has overwhelmingly and
convincingly established its right to the trademark BATA and consequently,
its use and registration in its favor and has spent a considerable amount of
money and effort in popularizing the trademark BATA for shoes in the
Philippines through the advertising media since it was lawfully used in
commerce on July 1, 1970. Therefore, New Olympian’s expense created
the enormous goodwill of the trademark BATA in the Philippines and not
the Bata Industries.
o Justice Gutierrez found that: Any slight goodwill generated by the
Czechoslovakian product during the Commonwealth years was completely
abandoned and lost in the more than 35 years that have passed since the
liberation of Manila from the Japanese troops. Bata Industries was never a
user of the trademark BATA either before or after the war, nor was it the
successor-in-interest of Gerbec and Hrdina. There was no privity of interest
between the Czechoslovakian owner and the Canadian appellant and that
the Czechoslovakian trademark has been abandoned in Czechoslovakia.
H. TAN, 2018
 o Bata Industries has no Philippine goodwill that would be damaged by the
registration of the mark in the New Olympian’s favor.
o The right to the registration and protection of its industrial property, the
BATA trademark is with New Olympian.
b. Mirpuri v. Court of Appeals, 318 SCRA 516 (1999) – LANDMARK CASE, KNOW
THE FACTS AND RULING
6. Issuance and Publication of Certificate
 Section 136. Issuance and Publication of Certificate. –
o When the period for filing the opposition has expired, or
o when the Director of Legal Affairs shall have denied the opposition,
 the Office upon payment of the required fee, shall issue the certificate of
registration.
o Upon issuance of a certificate of registration, notice thereof making reference to
the publication of the application shall be published in the IPO Gazette. (Sec. 10,
R.A. No. 165)
 Section 137, Registration of Mark and Issuance of a Certificate to the Owner or his
Assignee.
137.1. The Office shall maintain a Register in which shall be registered marks,
numbered in the order of their registration, and all transactions in respect of each
mark, required to be recorded by virtue of this law.
137.2. The registration of a mark shall include a reproduction of the mark and shall
mention:
1. its number;
2. the name and address of the registered owner and,
3. if the registered owner's address is outside the country, his address for
service within the country;
4. the dates of application and registration;
5. if priority is claimed, an indication of this fact, and the number, date and
country of the application, basis of the priority claims;
6. the list of goods or services in respect of which registration has been
granted, with the indication of the corresponding class or classes; and
7. such other data as the Regulations may prescribe from time to time.
Classification is good guidance as to under what class your goods and services are
registered in. But it’s not binding upon the Courts.
137.3. A certificate of registration of a mark may be issued to the assignee of the
applicant: Provided, that the assignment is recorded in the Office.
o In case of a change of ownership, the Office shall
 at the written request signed by
 the owner, or his representative, or
 the new owner, or his representative and
 upon a proper showing and the payment of the prescribed fee,
issue to such assignee a new certificate of registration of the
said mark in the name of such assignee, and for the unexpired
part of the original period.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Why would this info be important?
- This is your first line of search, so that if there are other marks already
registered, report that to the client and render a legal opinion / trademark
search.
137.4. The Office shall record any change of address, or address for service, which
shall be notified to it by the registered owner.
137.5. In the absence of any provision to the contrary in this Act, communications
to be made to the registered owner by virtue of this Act shall be sent to him at his
last recorded address and, at the same, at his last recorded address for service.
(Sec. 19, R.A. No. 166a)
 Sec. 138. Certificates of Registration. –
A certificate of registration of a mark shall be prima facie evidence of
1. the validity of the registration,
2. the registrant's ownership of the mark, and
3. 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. (Sec.
20, R.A. No. 165)
 Sec. 139, Publication of Registered Marks; Inspection of Register.
139.1. The Office shall publish, in the form and within the period fixed by the
Regulations, the marks registered, in the order of their registration, reproducing all the
particulars referred to in Subsection 137.2.
139.2. Marks registered at the Office may be inspected free of charge and any person
may obtain copies thereof at his own expense. This provision shall also be applicable to
31
transactions recorded in respect of any registered mark. (n)
 Sec. 144 Classification of Goods and Services. –
144.1. Each registration, and any publication of the Office which concerns an application
or registration effected by the Office shall indicate
1. the goods or services by their names,
2. grouped according to the classes of the Nice Classification, and
3. each group preceded by the number of the class of that Classification to which
that group of goods or services belongs,
4. presented in the order of the classes of the said Classification.
 144.2. Goods or 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.
 Sec. 4.2, technology transfer arrangements
o refers to contracts or agreements involving the transfer of systematic
knowledge for the manufacture of a product, the application of a process, or
rendering of a service including management contracts; and the transfer,
assignment or licensing of all forms of intellectual property rights, including
licensing of computer software except computer software developed for mass
market.
7. Duration of Certificate – 10 years
 Sec. 145, Duration.
A certificate of registration shall remain in force for 10 years:
H. TAN, 2018
 o Provided, that the registrant shall
1. File a declaration of actual use and evidence to that effect, OR
2. Show valid reasons based on the existence of obstacles to such use, as
prescribed by the Regulations,
within 1 year from the 5th anniversary of the date of the registration of the
mark.
o Otherwise, the mark shall be removed from the Register by the Office. (Sec.
12, R.A. No. 166a)
DAU should be notarized or under oath.
8. Voluntary Cancellation of Certificate
 Sec. 140, Cancellation upon Application by Registrant; Amendment or Disclaimer of
Registration.
o Upon application of the registrant, the Office may permit any registration to
be surrendered for cancellation, and upon cancellation the appropriate entry
shall be made in the records of the Office.
o Upon application of the registrant and payment of the prescribed fee, the
Office for good cause may permit any registration to be amended or to be
disclaimed in part:
 Provided, that the amendment or disclaimer does not alter
materially the character of the mark.
o Appropriate entry shall be made in the records of the Office upon the
certificate of registration or, if said certificate is lost or destroyed, upon a
certified copy thereof (Sec. 14, R.A. No. 166)
What is the practical step after having cancelled?  IPO enters the cancellation.
Tantamount to removal of the certificate.
9. Correction of Mistakes
 Section 142, Correction of Mistakes Made by the Office
Whenever a material mistake in a registration incurred through the fault of the Office
is clearly disclosed by the records of the Office, a certificate stating the fact and nature
of such mistake shall be issued without charge, recorded and a printed copy thereof
shall be attached to each printed copy of the registration.
Such corrected registration shall thereafter have the same effect as the original
certificate; or in the discretion of the Director of the Administrative, Financial and
Human Resource Development Service Bureau a new certificate of registration may be
issued without charge.
All certificates of correction heretofore issued in accordance with the Regulations and
the registration to which they are attached shall have the same force and effect as if
such certificates and their issuance had been authorized by this Act. (n)
 Section 143, Correction of Mistakes Made by Applicant
Whenever a mistake is made in a registration and such mistake occurred in good faith
through the fault of the applicant, the Office may issue a certificate upon the payment
of the prescribed fee:
o Provided, that the correction does not involve any change in the registration
that requires republication of the mark. (n)
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
At what juncture would there arise the need to correct mistakes?
Depends on what cause: fault of Office or fault of applicant
What usually would be mistakes? Drawings, spellings, colors. Font. Size of logos.
But if mistake is on the substance of the trademark, this is not covered by the provision.
10. Renewal
 Sec. 146, Renewal. –
A certificate of registration may be renewed for periods of 10 years at its expiration
1) upon payment of the prescribed fee and
2) upon filing of a request.
The request shall contain the following indications:
(a) An indication that renewal is sought;
(b) The name and address of the registrant or his successor-in-interest, hereafter
referred to as the "right holder";
(c) The registration number of the registration concerned;
(d) The filing date of the application which resulted in the registration concerned
to be renewed;
(e) Where the right holder has a representative, the name and address of that
representative;
(f) The names of the recorded goods or services for which the renewal is
requested or the names of the recorded goods or services for which the
renewal is not requested, grouped according to the classes of the Nice
Classification to which that group of goods or services belongs and presented 32
in the order of the classes of the said Classification; and
(g) A signature by the right holder or his representative.
When? 6 months before or after expiration.
How many times can you renew? Unlimited, so long as its period is for 10 years.
H. Rights Conferred
 Sec. 147, as amended by RA No. 9502 (Universally Accessible Cheaper and Quality
Medicines Act of 2008) Rights Conferred.
147.1. EXCEPT in cases of importation of drugs and medicines allowed under Section
72.1 of this Act and of off-patent drugs and medicines, the owner of a registered mark
shall 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 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.
o In case of the use of an identical sign for identical goods or services, a
likelihood of confusion shall be presumed.
o "There shall be no infringement of trademarks or tradenames of imported or
sold patented drugs and medicines allowed under Section 72.1 of this Act, as
well as imported or sold off-patent drugs and medicines:
o Provided, That, said drugs and medicines bear the registered marks that have
not been tampered, unlawfully modified, or infringed upon, under Section
155 of this Code.
H. TAN, 2018
 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 which
are not similar to those in respect of which the mark is registered:
o Provided, 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:
o Provided further, that the interests of the owner of the registered mark are
likely to be damaged by such use. (n)
 Sec. 148, Use of Indications by Third Parties for Purposes Other than those for which the
Mark is Used.
Registration of the mark shall NOT confer on the registered owner the right to
PRECLUDE third parties from using bona fide
1) their names,
2) addresses,
3) pseudonyms,
4) a geographical name, or
5) exact indications concerning the kind, quality, quantity, destination, value,
place of origin, or time of production or of supply, of their goods or services:
 Provided, that such use is CONFINED to the purposes of mere identification or
information and CANNOT mislead the public as to the source of the goods or
services. (n)
 Sec. 4.2 in relation to Sections 87 and 88, 92, IPC
 Sec. 149 Assignment and Transfer of Application and Registration.
149.1. An application for registration of a mark, or its registration, may be assigned or
transferred with or without the transfer of the business using the mark. (n)
149.2. Such assignment or transfer shall, however, be NULL AND VOID if it is liable to
mislead the public,
particularly as regards the nature, source, manufacturing process, characteristics,
or suitability for their purpose, of the goods or services to which the mark is
applied.
149.3. The assignment of the application for registration of a mark, or of its registration,
shall be in writing and require the signatures of the contracting parties.
Transfers by mergers or other forms of succession may be made by any document
supporting such transfer.
149.4. Assignments and transfers of registrations of marks shall be recorded at the
Office on payment of the prescribed fee; assignment and transfers of applications for
registration shall, on payment of the same fee, be provisionally recorded, and the mark,
when registered, shall be in the name of the assignee or transferee.
149.5. Assignments and transfers shall have NO EFFECT AGAINST THIRD PARTIES until
they are recorded at the Office. (Sec. 31, R.A. No. 166a)
 Sec. 150. License Contracts. – very common form of transaction, particularly in
trademark
150.1. Any license contract concerning the registration of a mark, or an application
therefor, shall provide for effective control by the licensor of the quality of the goods
or services of the licensee in connection with which the mark is used.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
o If the license contract does not provide for such quality control, or if such
quality control is not effectively carried out, the license contract shall not
be VALID.
150.2. A license contract shall be submitted to the Office which shall keep its contents
confidential but shall record it and publish a reference thereto.
A license contract shall have no effect against third parties until such recording is
effected. The Regulations shall fix the procedure for the recording of the license
contract. (n)
 Sec. 231, Reverse Reciprocity of Foreign Laws. –
Any condition, restriction, limitation, diminution, requirement, penalty or any similar
burden imposed by the law of a foreign country on a Philippine national seeking
protection of intellectual property rights in that country, shall reciprocally be
enforceable upon nationals of said country, within Philippine jurisdiction. (n)
Consistent with the TRIPS agreement.
Is there infringement even if the goods are non-competing?
 Section 20, R. A. No. 166 as compared to Sec. 138, IPC
Section 138, IPC. Certificates of Registration. - A 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
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. (Sec. 20, R.A.
33
No. 165)
when are goods noncompeting?
-if they belong to different classes
-different niche
-different market
1) Ang Tibay v. Teodoro, 74 Phil 50
ISSUE:
1) WON the words “Ang Tibay” is a descriptive word and hence cannot be
registered as a trademark? (NO)
2) WON the doctrine of secondary meaning applies? (NO)
3) WON pants and shirts are similar goods? (YES)
Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and as a
trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs
since 1910. He formally registered it as trade-mark and as trade-name and spent for
advertisement from 1919 to 1938. Ang registered the same trade-mark "Ang Tibay"
for pants and shirts and established a factory for the manufacture of said articles.
The records do not shows how much Ang has spent or advertisement. But Toribio in
his brief says that Ang "was unable to prove that she had spent a single centavo
advertising "Ang Tibay" shirts and pants prior to 1938.
H. TAN, 2018
 Ang contends that the phrase "Ang Tibay" is a descriptive term because it means
"strong, durable, lasting."
 He invokes section 2 of Act No. 666, which provides that words or devices
which related only to the name, quality, or description of the merchandise
cannot be the subject of a trade-mark.
 He cites Baxter vs. Zuazua which involved the trade-mark "Agua de
Kananga" used on toilet water, where the court held that the word
"Kananga," the name of a well-known Philippine plant, could not be
appropriated as a trade-mark any more than could the words "sugar,"
"tobacco," or "coffee."
On the other hand, Toribio contend that the words "Ang Tibay" are not descriptive
but merely suggestive and may properly be regarded as fanciful or arbitrary in the
legal sense. They cite several cases in which similar words have been sustained as
valid trade-marks, such as "Holeproof" for hosiery, "ideal for tooth brushes, and
"Fashionknit" for neckties and sweaters.
HELD:
We find it necessary to go into the etymology and meaning of the Tagalog words
"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 phrase "Ang Tibay" is an exclamation denoting
administration of strength or durability.
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" is never used adjectively to
define or describe an object. One does not say, "ang tibay sapatos" or "sapatos ang
tibay" to mean "durable shoes," but "matibay na sapatos" or "sapatos na matibay."
"Ang Tibay" is not a descriptive term within the 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. In this connection we do not fail to note that when the
petitioner herself took the trouble and expense of securing the registration of these
same words as a trademark of her products she or her attorney as well as the
Director of Commerce was undoubtedly convinced that said words (Ang Tibay) were
not a descriptive term and hence could be legally used and validly registered as a
trade-mark.
The function of a trade-mark is to point distinctively, either by its own meaning or
by association, to the origin or ownership of the wares to which it is applied. "Ang
Tibay," as used by Toribio to designate his wares, had exactly performed that
function for 22 years before the Ang adopted it as a trade-mark in her own business.
Ang Tibay shoes and slippers are, by association, known throughout the Philippines
as products of the Ang Tibay factory owned and operated by the respondent Toribio
Teodoro.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
In view of the conclusion we have reached above, it is unnecessary to apply here the
doctrine of "secondary meaning" in trade-mark parlance.
 This doctrine is to the effect that a word or phrase originally incapable of
exclusive appropriation with reference to an article of the market, because
geographically or otherwise descriptive, might nevertheless have been
used so long and so exclusively by one producer with reference to his
article that, in that trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his product.
 Had the phrase "Ang Tibay," not originally capable of exclusive
appropriation as a trade-mark, the application of the doctrine of secondary
meaning applies because, in any event, by Toribio’s long and exclusive use
of said phrase with reference to his products and his business, it has
acquired a proprietary connotation.
Since 1916, a growing sentiment began to arise that in the selection of a famous
mark by a third party, there was generally the hidden intention to "have a free ride"
on the trade-mark owner's reputation and good will.
Although two noncompeting articles may be classified under two different classes
by the Patent Office because they are deemed not to possess the same descriptive
properties, they would, nevertheless, be held by the courts to belong to the same
class if the simultaneous use on them of identical or closely similar trade-marks
would be likely to cause confusion as to the origin, or personal source, of the
second user's goods. 34
They would be considered as not falling under the same class only if they are so
dissimilar or so foreign to each other as to make it unlikely that the purchaser
would think the first user made the second user's goods.
There can be unfair competition or unfair trading even if the goods are non-
competing, and that such unfair trading can cause injury or damage to the first user
of a given trade-mark,
1) by prevention of the natural expansion of his business and,
2) by having his business reputation confused with and put at the mercy of
the second user.
Experience has demonstrated that when a well-known trade-mark is adopted by
another even for a totally different class of goods, it is done to get the benefit of the
reputation and advertisements of the originator of said mark, to convey to the public
a false impression of some supposed connection between the manufacturer of the
article sold under the original mark and the new articles being tendered to the public
under the same or similar mark. The owner of a trade-mark or trade-name has a
property right in which he is entitled to protection, since there is damage to him
from confusion of reputation or goodwill in the mind of the public as well as from
confusion of goods. The modern trend is to give emphasis to the unfairness of the
acts and to classify and treat the issue as a fraud.
H. TAN, 2018

Shoes and shirts are not as unrelated as fountain pens and razor blades. The mere
relation or association of the articles is not controlling. The proprietary connotation
that a trade-mark or trade-name has acquired is of more paramount consideration.
By uninterrupted and exclusive use since 1910 of respondent's registered trade-
mark on slippers and shoes manufactured by him, it has come to indicate the origin
and ownership of said goods.
It is certainly not farfetched to surmise that the selection by petitioner of the same
trade-mark for pants and shirts was motivated by a desire to get a free ride on the
reputation and selling power it has acquired at the hands of the respondent. The
field from which a person may select a trade-mark is practically unlimited, and
hence there is no excuse for impinging upon or even closely approaching the mark
of a business rival. In the unlimited field of choice, what could have been
petitioner's purpose in selecting "Ang Tibay" if not for its fame?
2) Chua Che v. Philippine Patent Office, 13 SCRA 67 (1965)
 ISSUE: WON Chua Che’s registration of the trademark of X-7 for soaps will be
confusingly similar to Sy Tuo’s trademark in toiletries? (YES)
 Chua Che presented with the Philippines Patent Office a petition praying for the
registration in his favor the trade name "X-7", a soap. Sy Tuo opposed. Chua Che
alleges that he, as owner, first used the trademark in the Philippines in 1957
and he has been continuously using the same in trade for more than 1 year. He
alleges that no other person, partnership, corporation, or association, to the
best of his knowledge and belief, has the right to use said trademark in the
Philippines, either in the identical form or in any such near resemblance thereto
as might be calculated to deceive.
 Sy Tuo presented a "Notice of Opposition” as the registration of said trademark
in favor of Chua Che will be confusingly similar to the “X-7” registered to, and
being used by Sy Tup, and is not abandoned.
 Sy Tuo alleged that
o he has prior use of the trademark "X-7" as he has been using it
extensively and continuously since 1952, while the applicant, Chua
Che, allegedly used his trademark only since 1957.
o "X-7" is distinctive and his invented mark and not merely an ordinary,
common and weak mark.
o Their products are closely related products.
o Sy Tuo has spent a huge amount by way of advertising and advertising
his "X-7" brand and in expanding his business for the manufacture of
toilet soap and crystal laundry soap with his already popular "X-7"
brand.
o The trademark applied for by the applicant Chua Che consists of the
trademark "X-7" and anyone is likely to be misled as to the source or
origin by the close resemblance or identity with the trademark "X-7"
of the oppositor.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
 Chua Che claimed that the grounds of opposition are not correct, since said
trademark in favor of oppositor is not being used on soap, but purely toilet
articles.
 The Director of Patents sustained the opposition.
o Opposer's first use of the trademark X-7 is prior to applicant's first use
of the mark.
o The only question then in this case is whether or not purchasers of X-
7 perfume, lipstick and nail polish would likely upon seeing X-7
laundry soap, attribute common origin to the products or assume that
there existed some kind of trade connection between applicant and
opposer.
o Opposer has spent about P120,000 in advertisement and enjoys a
valuable goodwill in the trademark X-7.
o The products of the parties, while specifically different, are products
intended for use in the home and usually have common purchasers.
o Furthermore, the use of X-7 for laundry soap is but a natural
expansion of business of the opposer.
 In fact, prior to the alleged date of first use by Chua Che of
the trademark X-7 for laundry soap, Sy Tuo had made steps
in expanding the use of this trademark to granulated soap.
 Under these circumstances, the average purchasers are
likely to associate X-7 laundry soap with X-7 perfume,
lipstick and nail polish or to think that the products have
common origin or sponsorship. 35
 HELD: The finding of the Director of Patents Office to the effect that opposer-
appellee Sy Tuo had priority of use and adoption of the trademark "X-7", is
for all intents and purposes, one of fact. This being the case, such finding
becomes conclusive to this Court.
 The circumstance of non-actual use of the mark on granulated soap by
appellee, does not detract from the fact that he has already a right to such a
trademark and should, therefore, be protected.
 The observation of the Director of Patents to the effect that "the average
purchasers are likely to associate X-7 laundry soap with X-7 perfume, lipstick
and nail polish or to think that the products have common origin or
sponsorship," is indeed well taken.
 While it is no longer necessary to establish that the goods of the parties
possess the same descriptive properties, as previously required under the
Trade Mark Act of 1905, registration of a trademark should be refused in cases
where there is a likelihood of confusion, mistake, or deception, even though
the goods fall into different categories.
 The products of appellee are common household items nowadays, in the
same manner as laundry soap. The likelihood of purchasers to associate those
products to a common origin is not far-fetched.
 Both from the standpoint of priority of use and for the protection of the buying
public and, of course, appellee's rights to the trademark "X-7", it becomes
H. TAN, 2018
 manifest that the registration of said trademark in favor of applicant-appellant
should be denied.
3) Sta. Ana v. Maliwat, 24 SCRA 108
 ISSUE: WON the parties are bound by their stipulations during pre-trial to the effect
that Maliwat has been using the tradename FLORMANN since 1959, while Sta. Ana
has been using FLORMENN only in 1962? (YES)
Sta. Ana Maliwat
FLORMEN FLORMANN
Ladies’ and children’s shoes Shirts, pants, jackets and shoes for
ladies, men, and children
First use is 1962 First use is 1955
 Florentino Maliwat applied for registration of the trademark FLORMANN, which is
used on shirts, pants, jackets and shoes for ladies, men, and children, claiming first
use in commerce of the said mark in 1962. The claim of first use was subsequently
amended to 6 July 1955.
 Sta. Ana applied for the registration of the tradename FLORMEN which is used in the
business of manufacturing ladies' and children's shoes. His claim of first use in
commerce of the said tradename is in 1959.
 In view of the admittedly confusing similarity between the trademark FLORMANN
and the tradename FLORMEN, the Director of Patents declared an interference.
o After trial, the Director gave due course to Maliwat's application and
denied that of Sta. Ana. The latter, not satisfied with the decision, appealed
to this Court.
 HELD:
o The findings of the Director that Maliwat was the prior adopter and user
of the mark cannot be contradicted, since his findings were based on facts
stipulated in the course of the trial in the interference proceedings.
o Sta. Ana, the Junior Party Applicant, is engaged solely in the manufacture
of shoes under the firm name FLORMEN since April 1959.
o Maliwat has been engaged in the manufacture and sale of menswear
shirts, polo shirts, and pants, since 1953, using FLORMANN as its
trademark.
o Maliwat began using the trademark FLORMANN on shoes on January 1962
and the firm name FLORMANN SHOES under which these shoes were
manufactured and sold was first used on January 1962, having also been
registered with the government in 1962.
 And the Rules of Court provide: Admission made by the parties in the pleadings, or
in the course of the trial or other proceedings do not require proof and cannot be
contradicted unless previously shown to have been made through palpable
mistake."
 Since the aforequoted stipulation of facts has not been shown to have been made
through palpable mistake, it is vain for the petitioner to allege that the evidence for
respondent Maliwat is false, fabricated, inconsistent, indefinite, contradictory,
unclear, unconvincing, and unsubstantial.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
 We find no substantiation of the charge that the stipulation of facts appearing on
pages 33 to 34 of the transcript of stenographic notes taken on 9 August 1963 had
been intercalated; hence, the presumption that the stenographer regularly
performed her duty stands. The integrity of the record being intact, the petitioner is
bound by it.
 We cannot overlook that even if his charges were true, it was plain and inexcusable
negligence on his part not to discover earlier the defect he now complains of, if any,
and in not taking steps to correct it before the records were elevated to this Court.
 An application for registration is not bound by the date of first use as stated by him
in his application, but is entitled to carry back said stated date of first use to a prior
date by proper evidence; but in order to show an earlier date of use, he is then
under a heavy burden, and his proof must be clear and convincing.
o The proof of date of first use (1953), earlier than that alleged in Maliwat's
application (1962), can be no less than clear and convincing because the
fact was stipulated and no proof was needed.
 Petitioner would confine the respondent to the use of the mark FLORMANN to
tailoring and haberdashery only, but not on shoes, on the ground that petitioner had
used the name FLORMEN on shoes since 1959, while the respondent used his mark
on shoes only in 1962; but the Director ruled: “it is now the common practice among
local tailors and haberdashers to branch out into articles of manufacture which have,
one way or another, some direct relationship with or appurtenance to garments or
attire to complete one's wardrobe such as belts, shoes, handkerchiefs, and the like,
hence shoes and shirts, pants and jackets have the same descriptive properties for
purposes of our Trademark Law.”
36
 Modern law recognizes that the protection to which the owner of a trademark mark
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 trademark 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 or is in any way connected with the activities of the infringer; or when it
forestalls the normal potential expansion of his business.
 Mere dissimilarity of goods should not preclude relief where the junior user's
goods are not too different or remote from any that the owner would be likely to
make or sell; and in the present case, wearing apparel is not so far removed from
shoes as to preclude relief, any more than the pancake flour is from syrup or sugar
cream or baking powder from baking soda, or cosmetics and toilet goods from ladies'
wearing apparel and costume jewelry.
 Whether or not shirts and shoes have the same descriptive properties, or whether
or not it is the prevailing practice or the tendency of tailors and haberdashers to
expand their business into shoes making, are not controlling.
 The meat of the matter is the likelihood of confusion, mistake or deception upon
purchasers of the goods of the junior user of the mark and the goods manufactured
by the previous user. Here, the resemblance or similarity of the mark FLORMANN
and the name FLORMEN and the likelihood of confusion, is admitted; therefore, the
prior adopter, respondent Maliwat, has the better right to the use of the mark.
H. TAN, 2018

4) Philippine Refining Company v. Ng Sam, 115 SCRA 472, G.R. No. L-26676 [30 July 1982]
PH Refining Company (Unilever) Ng Sam
Lard, butter, cooking oil and soap (Class Ham (Class 41)
4)
Camia Camia
Senior user Junior user
 ISSUE: WON the product of Ng Sam, which is ham, and those of PH Refining
consisting of lard, butter, cooking oil and soap are so related that the use of the
same trademark "CAMIA" on said goods would likely result in confusion as to their
source or origin. (NO)
 PH Refining used the trademark "CAMIA" in the Philippines on its products in 1922.
In 1949, petitioner caused the registration of said trademark.
o Certificate of Registration covers vegetable and animal fats, particularly
lard, butter and cooking oil (Class 47), while certificate of registration
applies to abrasive detergents, polishing materials and soap of all kinds
(Class 4).
 Ng Sam filed an application with for registration of the identical trademark "CAMIA"
for his product, ham, which likewise falls under Class 47. Alleged date of first use of
the trademark by respondent was in 1959.
 PH Refining filed an opposition, based on was Section 4(d) of said law: a mark which
consists of or comprises a mark or tradename which so resembles a mark or
tradename registered in the Philippines or a mark or tradename previously used in
the Philippines by another and not abandoned, as to be likely, when applied to or
used in connection with the goods, business services of the applicant, to cause
confusion or mistake or to deceive purchasers.
 The Director of Patents ALLOWED registration of the trademark "CAMIA" in favor of
Ng Sam.
 HELD:
o The right to a trademark is a limited one, in the sense that others may use
the same mark on unrelated goods. Thus, the mere fact that one person
has adopted and used a trademark on his goods does not prevent the
adoption and use of the same trademark by others on articles of a different
description.
o Where no confusion is likely to arise, as in this case, registration of a
similar or even identical mark may be allowed.
o The term "CAMIA" is descriptive of a whole genus of garden plants with
fragrant white flowers. Some people call the "CAMIA" the "white ginger
plant" because of its tuberous roots, while children refer to it as the
butterfly flower because of its shape.
 Being a generic and common term, its appropriation as a
trademark, albeit in a fanciful manner in that it bears no
relation to the product it identifies, is valid.
 However, the degree of exclusiveness accorded to each user is
closely restricted.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
o "CAMIA" has been registered as a trademark not only by PH Refining, but
by two (2) other persons.
o A trademark is designed to identify the user. But it should be so
distinctive and sufficiently original as to enable those who come into
contact with it to recognize instantly the Identity of the user. "It must be
affirmative and definite, significant and distinctive, capable to indicate
origin."
o “CAMIA” as a trademark is far from being distinctive.
 By itself, it does not identify petitioner as the manufacturer or
producer of the goods upon which said mark is used, as contra-
distinguished to trademarks derived from coined words such as
"Rolex", "Kodak" or "Kotex".
o If a mark is so commonplace that it cannot be readily distinguished from
others, then it is apparent that it cannot identify a particular business;
and he who first adopted it cannot be injured by any subsequent
appropriation or imitation by others, and the public will not be
deceived."
o While ham and some of the products of petitioner are classified under
Class 47 (Foods and Ingredients of Food), this alone cannot serve as the
decisive factor in the resolution of whether or not they are related goods.
Emphasis should be on the similarity of the products involved and not on
the arbitrary classification or general description of their properties or
characteristics.
o In his decision, the Director of Patents enumerated the factors that set 37
respondent's product apart from the goods of petitioner:
 I have taken into account such factors as probable purchaser
attitude and habits, marketing activities, retail outlets, and
commercial impression likely to be conveyed by the trademarks
if used in conjunction with the respective goods of the parties.
 Ham on one hand, and lard, butter, oil, and soap on the other
are products that would NOT move in the same manner
through the same channels of trade.
 They pertain to unrelated fields of manufacture, might be
distributed and marketed under dissimilar conditions, and are
displayed separately even though they frequently may be sold
through the same retail food establishments.
 PH Refining’s products are ordinary day-to-day household items
whereas ham is not necessarily so. Thus, the goods of the parties
are not of a character which purchasers would be likely to
attribute to a common origin.
o The observation and conclusion of the Director of Patents are correct.
 The particular goods of the parties are so unrelated that
consumers would not in any probability mistake one as the
source or origin of the product of the other.
 "Ham" is not a daily food fare for the average consumer.
H. TAN, 2018
  One purchasing ham would exercise a more cautious inspection
of what he buys on account of it price. Seldom, if ever, is the
purchase of said food product delegated to household helps,
except perhaps to those who, like the cooks, are expected to
know their business.
 Besides, there can be no likelihood for the consumer of
respondent's ham to confuse its source as anyone but
respondent.
 The label attached, his business name "SAM'S HAM AND BACON
FACTORY" written in bold white letters against a reddish orange
background, is certain to catch the eye of the class of consumers
to which he caters.
 In addition, the goods of petitioners are basically derived from
vegetable oil and animal fats, while the product of respondent is
processed from pig's legs.
 A consumer would not reasonably assume that,
petitioner has so diversified its business as to include
the product of respondent.
o While confusion of goods can only be evident, where the litigants are
actually in competition, confusion of business may arise between non-
competitive interests as well. This is true whether or not the trademarks
are registered.
o But it is not so extensive as to be applicable to cases where the public
would not reasonably expect the plaintiff to make or sell the same class of
goods as those made or sold by the defendant.
o In fine, the business of the parties are non-competitive and their products
so unrelated that the use of identical trademarks is not likely to give rise
to confusion, much less cause damage to petitioner.
o Even if unrelated, broaden the coverage of registration. Include likely
expansion.
5) Esso Standard Eastern, Inc. v. CA, 116 SCRA 336
Esso United Cigarette
Petroleum products Cigarettes
ESSO ESSO
Senior user Junior user
Rectangular, green Red, white and unique blue
Gas stations and hardware stores Sari-sari stores, peddlers
 ISSUE: WON United Cigarette, in using the trademark ESSO for cigarettes, infringed
on the trademark of ESSO for petroleum products? (NO)
 Esso Standard is a foreign corporation duly licensed to do business in the Philippines.
It is engaged in the sale of petroleum products which are identified with its
trademark ESSO.
 United Cigarette is a domestic corporation engaged in the manufacture and sale of
cigarettes, after it acquired the business, factory and patent rights of its predecessor
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
La Oriental, one of the rights thus acquired having been the use of the trademark
ESSO on its cigarettes, for which a permit had been duly granted by the BIR.
 Barely had United Cigarette started manufacturing cigarettes with the trademark
ESSO, when ESSO commenced a case for trademark infringement.
o ESSO alleged that
 ESSO had been for many years engaged in the sale of petroleum products
and its trademark ESSO had acquired a considerable goodwill to such an
extent that the buying public had always taken the trademark ESSO as
equivalent to high quality petroleum products.
 The continued use by United Cigarette of the same trademark ESSO on
its cigarettes was being carried out for the purpose of deceiving the
public as to its quality and origin to the detriment and disadvantage of its
own products.
 United Cigarette contended that in order that there may be trademark infringement,
it is indispensable that the mark must be used by one person in connection or
competition with goods of the same kind as the complainant's.
 RTC found that UC infringed on the trademark of ESSO. CA reversed.
 HELD:
o The law defines infringement as the use without consent of the trademark
owner of any "reproduction, counterfeit, copy or colorable limitation of
any registered mark or tradename in connection with the sale, offering for
sale, or advertising of any goods, business or services on or in connection
with which such use is likely to cause confusion or mistake or to deceive
purchasers or others as to the source or origin of such goods or services,
38
or Identity of such business; or reproduce, counterfeit, copy or colorably
imitate any such mark or tradename and apply such reproduction,
counterfeit, copy or colorable limitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services."
o Implicit in this definition is the concept that the goods must be so related
that there is a likelihood either of confusion of goods or business.
o But likelihood of confusion is a relative concept; to be determined only
according to the particular circumstances of each case.
o It is undisputed that the goods of the parties are non-competing.
 But the question is whether or not the goods are so related that
the public may be, or is actually, deceived and misled that they
came from the same maker or manufacturer.
o For non-competing goods may be those which, though they are not in
actual competition, are so related to each other that it might reasonably
be assumed that they originate from one manufacturer. Confusion of
business could arise out of the use of similar marks.
o Non-competing goods may also be those which, being entirely unrelated,
could not reasonably be assumed to have a common source.
 In this case, confusion could not arise.
o Goods are related when they belong to the same class or have the same
descriptive properties; when they possess the same physical attributes
H. TAN, 2018
 or essential characteristics with reference to their form, composition, o In the Philippines, where buyers of cigarettes, which are low cost articles,
texture or quality. They may also be related because they serve the same can be more numerous compared to buyers of the higher priced petroleum
purpose or are sold in grocery stores. and chemical products of ECCO and where ECCO is known to be in the
o In the situation before us, the goods are obviously different from each business of selling petroleum and petroleum-based chemical products,
other with "absolutely no iota of similitude". They are so foreign to each and no others, it is difficult to conceive of confusion in the minds of the
other as to make it unlikely that purchasers would think that petitioner buying public in the sense it can be thought that ECCO is the manufacturer
is the manufacturer of respondent's goods. of UC’s cigarettes, or that UC is the manufacturer or processor of ECCO’s
o The mere fact that one person has adopted and used a trademark on his petroleum and chemical products."
goods does not prevent the adoption and use of the same trademark by
others on unrelated articles of a different kind. 6) Hickok Manufacturing Co. v. CA, 116 SCRA 387
o The public knows too well that ESSO deals solely with petroleum products Hickok Santos
that there is no possibility that cigarettes with ESSO brand will be HICKOK HICKOK
associated with whatever good name ESSO’s ESSO trademark may have Leather wallets, key cases, money folds Shoes
generated. made of leather, belts, men's briefs,
 Although ESSO’s products are numerous, they are of the same neckties, handkerchiefs and men's
class or line of merchandise which are non-competing with socks
respondent's product of cigarettes, which is beyond 'HICKOK' is in red with white 'HICKOK' is in white with gold
petitioner's "zone of potential or natural and logical background in the middle of two background between the two
expansion." branches of laurel in light gold. branches of laurel in red, with the
 When a trademark is used by a party for a product in which the word 'SHOES' also in red below the
other party does not deal, the use of the same trademark on word 'HICKOK'.
the latter's product cannot be validly objected to. At the lower part thereof is a ribbon on The ribbon is in red with the words
o Also, the goods flow through different channels of trade, thus: which are the words 'POSITIVELY 'QUALITY AT YOUR FEET,' likewise in
 ESSO’s products are distributed principally through gasoline 39
FINER' in light gold. red.
service and lubrication stations, automotive shops and hardware
stores. Although manufactured in the PH, Clearly labelled as made in Marikina
 United Cigarette’s cigarettes are sold in sari-sari stores, grocery gives impression that it is foreign
stores, and other small distributor outlets, and are even peddled Different channels of trade
in the streets while ESSO’s 'gasul' burners are not.
 ISSUE: Is HICKOK's application would be likely to cause confusion or mistake on the
 Evidently, in kind and nature the products of the parties are
part of the buying public? (NO)
poles apart.
 While the law does not require that the competing trademarks be Identical, the two
o Moreover, considering the general appearances of each mark as a whole,
marks must be considered in their entirety, as they appear in the respective labels,
the possibility of any confusion is unlikely.
in relation to the goods to which they are attached.
 A comparison of the labels of the samples of the goods
 There must be not only resemblance between the trademark of both parties, but
submitted by the parties shows a great many differences on the
also similarity of the goods to which the two trademarks are respectively attached.
trademarks used.
 HELD:
 The color of the "ESSO" used by the plaintiff for the oval design
o The goods have different channels of trade.
where the blue word ESSO is contained is the distinct and unique
o Emphasis should be on the similarity of the products involved and not on
kind of blue.
the arbitrary classification or general description of their properties or
 United Cigarette never used its trademark on any product where
characteristics.
the combination of colors is similar to the label of the Esso
o The mere fact that one person has adopted and used a trademark on his
cigarettes," and generally, the UC’s trademark comes all in either
goods does not prevent the adoption and use of the same trademark by
red, white, blue or any combination of the three colors. Not even
others on unrelated articles of a different kind.
a shade of these colors appears on the trademark of the UC’s
o Taking into account that HICKOK, a foreign corporation registered the
cigarette. The only color that the ESSO uses in its trademark is
trademark for its diverse articles of men's wear such as wallets, belts and
green.
men's briefs which are all manufactured here in the Philippines by a
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO H. TAN, 2018
 licensee Quality House, Inc. but are so labelled as to give the
misimpression that the said goods are of foreign (stateside) manufacture
and that respondent secured its trademark registration exclusively for
shoes (which neither petitioner nor the licensee ever manufactured or
traded in) and which are clearly labelled in block letters as "Made in
Marikina, Rizal, Philippines," respondent's registration of the same
trademark for his unrelated and non-competing product of Marikina shoes
should be upheld.
7) Faberge v. IAC, 215 SCRA 316
Co Beng Kay (JUNIOR) Faberge (SENIOR)
BRUTE BRUT
Briefs Shave lotion, shaving cream, talcum
powder, deodorant, toilet soap
Prominently displays the Predominantly colored green with a
representation of a muscular man, blue and white band at the middle
underneath of which appears the portion of the container
trademark BRUTE with a notation
"Bikini Brief"
Equally visible at the other portions of
respondent's labels are the pictorial
representation of "briefs" which
unmistakably suggest that the product
contained in the box container is that
of a man's brief
BRUTE means "ferocious, sensual", BRUT simply means "dry", and also, "to
and in Latin, it signifies "heavy". browse"
 ISSUE: WON Co may appropriate the trademark "BRUTE" for the briefs it
manufactures and sells to the public albeit FABERGE had previously registered the
symbol "BRUT" and "BRUT 33" for its own line of deodorant? (YES)
 In the course of marketing FABERGE’s "BRUT" products and during the pendency of
its application for registration of the trademark "BRUT 33 and DEVICE" for
antiperspirant, personal deodorant, cream shave, after shave/shower lotion, hair
spray, and hair shampoo, Co Beng Kay of Webengton Garments Manufacturing
applied for registration of the disputed emblem "BRUTE" for briefs.
 Opposition was anchored on similarity with its own symbol and irreparable injury to
the business reputation of the first user was to no avail.
 SC remarked that: the two trademarks are confusingly similar since they are similar
in appearance, in sound, and in style of presentation.
o Also, on account of the considerable length of time that FABERGE has
marketed its products and its maintenance of high quality of its products
through the years, FABERGE has earned and established immense goodwill
among its customers. Should CO be allowed to use the trademark "BRUTE"
on the briefs manufactured by him, CO would be cashing in on the goodwill
already established by FABERGE, because the products are not entirely
unrelated since both are directed to the fashion trade and in the marketing
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
process, they may find themselves side by side in the "Men's Accessories
Section" of the market, thus easily leading the buying public to believe that
the products from the same source, to the undue advantage of FABERGE.
o Again, if after purchasing such briefs, the public finds them to be of non-
competitive quality, or not of the high quality expected of appellant's
products, then appellant's reputation and goodwill will be ruined, to its
damage and prejudice.
o When one applies for the registration of a trademark or label which is
almost the same or 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 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.
o The test of confusing similarity is not whether the challenged mark would
actually cause confusion or deception of the purchasers but whether the
use of such mark would likely cause confusion or mistake on the part of
the buying public.
o In short, the law does not require that the competing marks must be so
identical as to produce actual error or mistakes. It would be sufficient, for
purposes of the law that the similarity between the two labels be such
that there is a possibility or likelihood of the purchaser of the older brand
mistaking the newer brand for it.
 CO asserts that briefs and cosmetics do not belong to the same class nor do they 40
have the same descriptive properties such that the use of a trademark on one's
goods does not prevent the adoption and use of the same trademark by others on
unrelated articles of a different nature.
 HELD:
o Co may be permitted to register the trademark "BRUTE" for briefs
produced by it. In as much as FABERGE has not ventured in the production
of briefs, an item which is not listed in its certificate of registration,
petitioner cannot and should not be allowed to feign that CO had invaded
petitioner's exclusive domain.
o FABERGE failed to annex the so-called "proof that FABERGE indeed
intended to expand its mark "BRUT" to other goods".
 Even then, a mere application by petitioner in this aspect does
not suffice and may not vest an exclusive right in its favor that
can ordinarily be protected by the Trademark Law.
o The certificate of registration issued by the Director of Patents can confer
upon FABERGE the exclusive right to use its own symbol only to those
goods specified in the certificate, subject to any conditions and
limitations stated therein.
o One who has adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by other for
products which are of different description.
H. TAN, 2018
 o The glaring discrepancies between the two products had been amply
portrayed to such an extent that indeed, "a purchaser who is out in the
market for the purpose of buying respondent's BRUTE brief would
definitely be not mistaken or misled into buying BRUT after shave lotion or
deodorant".
8) Canon Kabushiki v. CA, 336 SCRA 266, G.R. No. 120900 (2000)
CANON NSR
CANON CANON
Paints, chemical products, toner, and Sandals
dye stuff
Class 2 Class 25
special chemical stores or distributors grocery stores, sari-sari stores and
department stores
 ISSUE: WON CANON can validly oppose the registration of trademark of CANON
for NSR’s sandals? (NO)
 NSR Rubber Corporation filed an application for registration of the mark CANON for
sandals. An Opposition was filed by CANON, a foreign corporation duly organized
and existing under the laws of Japan, alleging that it will be damaged by the
registration of the trademark CANON in the name of private respondent.
 CANON’s evidence consisted of its certificates of registration for the mark CANON in
various countries, including the PH, covering goods belonging to class 2 (paints,
chemical products, toner, and dye stuff).
 The BPTTT gave due course to NSR’s registration. CA affirmed the registration. The
BPTTT and the CA share the opinion that the trademark "CANON" as used by CANON
for its paints, chemical products, toner, and dyestuff, can be used by NSR for its
sandals because the products of these two parties are dissimilar.
 CANON protests the appropriation of the mark CANON by NSR on the ground that
o CANON has used and continues to use the trademark CANON on its wide
range of goods worldwide.
o The corporate name of CANON is also used as its trademark on diverse
goods including footwear and other related products like shoe polisher and
polishing agents.
o CANON has branched out in its business based on the various goods
carrying its trademark, including footwear which covers sandals.
o And, notwithstanding the dissimilarity of the products, CANON is entitled
to protection when the use of by the junior user "forestalls the normal
expansion of his business". CANON would be precluded from using the
mark CANON for various kinds of footwear, when in fact it has earlier used
said mark for said goods.
o CANON claims that it is possible that the public could presume that CANON
would also produce a wide variety of footwear considering the diversity of
its products marketed worldwide.
o CANON further argues that the alleged diversity of its products all over the
world makes it plausible that the public might be misled into thinking that
there is some supposed connection between private respondent's goods
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
and petitioner. CANON is apprehensive that there could be confusion as to
the origin of the goods, as well as confusion of business, if private
respondent is allowed to register the mark CANON. CANON would
allegedly be immensely prejudiced if private respondent would be
permitted to take "a free ride on, and reap the advantages of, the goodwill
and reputation of petitioner Canon."
 HELD:
o Ordinarily, the ownership of a trademark or tradename is a property
right that the owner is entitled to protect. However, when a trademark
is used by a party for a product in which the other party does not deal,
the use of the same trademark on the latter's product cannot be validly
objected to.
o CANON had every opportunity to present ex-parte all of its evidence to
prove that its certificates of registration for the trademark CANON cover
footwear.
o The certificates of registration for the trademark CANON in other
countries and in the Philippines as presented by CANON, clearly showed
that said certificates of registration cover goods belonging to class 2
(paints, chemical products, toner, dyestuff).
o Hence, since the certificate of registration of petitioner for the trademark
CANON covers class 2 (paints, chemical products, toner, dyestuff), NSR
can use the trademark CANON for its goods classified as class 25
(sandals).
o Clearly, there is a world of difference between the paints, chemical 41
products, toner, and dyestuff of CANON and the sandals of NSR.
o CANON failed to attach evidence that would convince this Court that
petitioner has also embarked in the production of footwear products.
o It would be taxing one's credibility to aver at this point that the production
of sandals could be considered as a possible "natural or normal expansion"
of its business operation.
o In cases of confusion of business or origin, the question that usually arises
is whether the respective goods or services of the senior user and the
junior user are so related as to likely cause confusion of business or origin,
and thereby render the trademark or tradenames confusingly similar.
 Goods are related when they belong to the same class or have
the same descriptive properties; when they possess the same
physical attributes or essential characteristics with reference to
their form, composition, texture or quality.
 They may also be related because they serve the same purpose
or are sold in grocery stores.
o Undoubtedly, the paints, chemical products, toner and dyestuff of
petitioner that carry the trademark CANON are unrelated to sandals, the
product of NSR.
o The two classes of products in this case flow through different trade
channels.
H. TAN, 2018
  The products of CANON are sold through special chemical stores
or distributors while the products of NSR are sold in grocery
stores, sari-sari stores and department stores.
o Thus, the evident disparity of the products of the parties in the case at bar
renders unfounded the apprehension of petitioner that confusion of
business or origin might occur if NSR is allowed to use the mark CANON.
9) Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)
 ISSUE
(1) If the technical drawings of the light box are granted copyright protection
(copyright certificate of registration) by the National Library, is the light box
ipso facto also protected by such copyright? (NO)
(2) Can the owner of a registered trademark legally prevent others from using
such trademark if it is a mere abbreviation of a term descriptive of his goods,
services or business? (NO)
 P & D’s complaint was that SMI infringed on its copyright over the light boxes when
SMI had the units manufactured by Metro and EYD Rainbow Advertising for its own
account. Obviously, P&D’s position was premised on its belief that its copyright over
the engineering drawings extended ipso facto to the light boxes depicted or
illustrated in said drawings.
 In ruling that there was no copyright infringement, the Court of Appeals held that
the copyright was limited to the drawings alone and not to the light box itself.
 For the trademark issue, P&D was abe to register its trademark for “Stationeries such
as the letterheads, envelopes, calling cards, and newsletters.”
 HELD:
o We agree with the appellate court.
o First, P&D’s application for a copyright certificate as well as Copyright
Certificate issued by the National Library clearly stated that it was for a
class O work under the Intellectual Property Decree.
 SEC. 2. The rights granted by this Decree shall, from the moment
of creation, subsist with respect to any of the following works:
 (O) Prints, pictorial illustrations, advertising copies, labels, tags,
and box wraps;
o Although P&D’s copyright certificate was entitled Advertising Display Units
(which depicted the box-type electrical devices), its claim of copyright
infringement cannot be sustained.
o Copyright, in the strict sense of the term, is purely a statutory right.
Hence the rights are limited to what the statute confers.
o It may be obtained and enjoyed only with respect to the subjects and by
the persons, and on terms and conditions specified in the statute.
Accordingly, it can cover only the works falling within the statutory
enumeration or description.
o P & D secured its copyright under the classification class O work. P & D was
able to secure a trademark certificate for it, but one where the goods
specified were stationeries such as letterheads, envelopes, calling cards
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
and newsletters. P&D admitted it did not commercially engage in or
market these goods.
o On the contrary, it dealt in electrically operated backlit advertising units
and the sale of advertising spaces thereon, which, however, were not at all
specified in the trademark certificate.
 This being so, petitioners copyright protection extended only to
the technical drawings and not to the light box itself because
the latter was not at all in the category of prints, pictorial
illustrations, advertising copies, labels, tags and box wraps.
o Even if P & D indeed owned a valid copyright, the same could have referred
only to the technical drawings within the category of pictorial illustrations.
It could not have possibly stretched out to include the underlying light box.
o What the law does not include, it excludes, and for the good reason: the
light box was not a literary or artistic piece which could be copyrighted
under the copyright law.
o And no less clearly, neither could the lack of statutory authority to make
the light box copyrightable be remedied by the simplistic act of entitling
the copyright certificate issued by the National Library as Advertising
Display Units.
o During the trial, the president of P & D himself admitted that the light box
was neither a literary not an artistic work but an engineering or
marketing invention.
o The certificate issued by the Director can confer only the exclusive right
to use its own symbol only to those goods specified in the certificate, 42
subject to any conditions and limitations specified in the certificate. One
who has adopted and used a TM on his goods does not prevent the
adoption and use of the same trademark by others for products which
are of a different description.
o Trademark, copyright and patents are different intellectual property rights
that cannot be interchanged with one another.
 A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container of goods.
 In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise.
 Meanwhile, the scope of a copyright is confined to literary and
artistic works which are original intellectual creations in the
literary and artistic domain protected from the moment of their
creation.
 Patentable inventions, on the other hand, refer to any technical
solution of a problem in any field of human activity which is new,
involves an inventive step and is industrially applicable.
o There can be no unfair competition under the law on copyrights although
it is applicable to disputes over the use of trademarks. Even a name or
phrase incapable of appropriation as a trademark or tradename may, by
long and exclusive use by a business (such that the name or phrase
H. TAN, 2018
 becomes associated with the business or product in the mind of the
purchasing public), be entitled to protection against unfair competition.
 In this case, there was no evidence that P & Ds use of Poster Ads
was distinctive or well-known.
 Poster Ads was too generic a name. So it was difficult to identify
it with any company, honestly speaking.
o This fact also prevented the application of the doctrine of secondary
meaning.
 Poster Ads was generic and incapable of being used as a
trademark because it was used in the field of poster advertising,
the very business engaged in by petitioner.
 Secondary meaning means that a word or phrase originally
incapable of exclusive appropriation with reference to an article
in the market (because it is geographically or otherwise
descriptive) might nevertheless have been used for so long and
so exclusively by one producer with reference to his article that,
in the trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his
property.
 The admission by P&D own expert witness that he himself could
not associate Poster Ads with P & D because it was too generic
definitely precluded the application of this exception.
10) 246 Corporation v. Daway, 416 SCRA 315 (2003)
 ISSUE: WON There’s trademark infringement? (NO)
 Montres Rolex and Rolex Centre Phil., owners/proprietors of Rolex and Crown
Device, filed against 246 Corporation the instant suit for trademark infringement and
damages.
 ROLEX alleged that 246 has been using without authority the mark "Rolex" in its
business name "Rolex Music Lounge" as well as in its newspaper advertisements.
 246 argued that ROLEX have no cause of action because no trademark infringement
exist;
o No confusion would arise from the use by petitioner of the mark "Rolex"
considering that its entertainment business is totally unrelated to the
items catered by respondents such as watches, clocks, bracelets and parts
thereof.
 RTC denied the MTD. CA affirmed.
 HELD:
o A junior user of a well-known mark on goods or services which are not
similar to the goods or services, and are therefore unrelated, to those
specified in the certificate of registration of the well-known mark is
precluded from using the same on the entirely unrelated goods or services.
 1. The mark is well-known internationally and in the Philippines.
 2. The use of the well-known mark on the entirely unrelated
goods or services would indicate a connection between such
unrelated goods or services and those goods or services
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
specified in the certificate of registration in the well-known
mark. This requirement refers to the likelihood of confusion of
origin or business or some business connection or relationship
between the registrant and the user of the mark.
 3. The interests of the owner of the well-known mark are likely
to be damaged. For instance, if the registrant will be precluded
from expanding its business to those unrelated good or services,
or if the interests of the registrant of the well-known mark will
be damaged because of the inferior quality of the good or
services of the user.
o Section 123.1(f) is clearly in point because the Music Lounge of petitioner
is entirely unrelated to respondents’ business involving watches, clocks,
bracelets, etc. However, the Court cannot yet resolve the merits of the
present controversy considering that the requisites for the application of
Section 123.1(f), which constitute the kernel issue at bar, clearly require
determination facts of which need to be resolved at the trial court. The
existence or absence of these requisites should be addressed in a full
blown hearing and not on a mere preliminary hearing. The respondent
must be given ample opportunity to prove its claim, and the petitioner to
debunk the same.
11) Societe Des Produits Nestle v. CA, 356 SCRA 207 (2001)
 ISSUE: "Does CFC’s trade dress bear a striking resemblance with NESTLE’s
trademarks as to create in the purchasing public’s mind the mistaken impression 43
that both coffee products come from one and the same source?" (YES)
Nestle CFC
Master roast, master blend Flavor master
Coffee Coffee
Senior user Junior user
Different presentation, color scheme, letters in labels
Inexpensive and common household items
 CFC Corporation filed an application for the registration of the trademark "FLAVOR
MASTER" for instant coffee. Nestle filed an Opposition, claiming that the trademark
of CFC’s product is "confusingly similar to its trademarks for coffee and coffee
extracts, to wit: MASTER ROAST and MASTER BLEND."
 Nestle claimed that the use by CFC of the trademark FLAVOR MASTER and its
registration would likely cause confusion in the trade; or deceive purchasers and
would falsely suggest to the purchasing public a connection in the business of Nestle,
as the dominant word present in the three (3) trademarks is "MASTER"; or that the
goods of CFC might be mistaken as having originated from the latter.
 CFC argued that its trademark, FLAVOR MASTER, is not confusingly similar with the
former’s trademarks, MASTER ROAST and MASTER BLEND, alleging that, "except for
the word MASTER (which cannot be exclusively appropriated by any person for being
a descriptive or generic name).
H. TAN, 2018
 o The other words that are used respectively with said word in the three
trademarks are very different from each other – in meaning, spelling,
pronunciation, and sound".
o FLAVOR MASTER, "is clearly very different from any of Nestle’s alleged
trademarks MASTER ROAST and MASTER BLEND, especially when the
marks are viewed in their entirety, by considering their pictorial
representations, color schemes and the letters of their respective labels."
 HELD:
o Colorable imitation denotes such a close or ingenious imitation as to be
calculated to deceive ordinary persons, or such a resemblance to the
original as to deceive an ordinary purchaser giving such attention as a
purchaser usually gives, as to cause him to purchase the one supposing it
to be the other.9 In determining if colorable imitation exists, jurisprudence
has developed two kinds of tests - the Dominancy Test and the Holistic
Test.
o The test of dominancy focuses on the similarity of the prevalent features
of the competing trademarks which might cause confusion or deception
and thus constitute infringement. While, the holistic test mandates that
the entirety of the marks in question must be considered in determining
confusing similarity.
o It must be emphasized that in infringement or trademark cases in the
Philippines, particularly in ascertaining whether one trademark is
confusingly similar to or is a colorable imitation of another, no set rules can
be deduced. Each case must be decided on its own merits.
o Indeed, the complexities attendant to an accurate assessment of likelihood
of confusion require that the entire panoply of elements constituting the
relevant factual landscape be comprehensively examined.
o Nestle points out that the dominancy test should have been applied to
determine whether there is a confusing similarity between CFC’s FLAVOR
MASTER and Nestle’s MASTER ROAST and MASTER BLEND.
o We agree. The determination of whether two trademarks are indeed
confusingly similar must be taken from the viewpoint of the ordinary
purchasers who are, in general, undiscerningly rash in buying the more
common and less expensive household products like coffee, and are
therefore less inclined to closely examine specific details of similarities and
dissimilarities between competing products.
o An ordinary purchaser or buyer does not usually make such scrutiny nor
does he usually have the time to do so. The average shopper is usually in a
hurry and does not inspect every product on the shelf as if he were
browsing in a library.
o The Court of Appeals held that the test to be applied should be the totality
or holistic test reasoning, since what is of paramount consideration is the
ordinary purchaser who is, in general, undiscerningly rash in buying the
more common and less expensive household products like coffee, and is
therefore less inclined to closely examine specific details of similarities and
dissimilarities between competing products.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
 This Court cannot agree with the above reasoning.
 If the ordinary purchaser is "undiscerningly rash" in buying such
common and inexpensive household products as instant coffee,
and would therefore be "less inclined to closely examine specific
details of similarities and dissimilarities" between the two
competing products, then it would be less likely for the ordinary
purchaser to notice that CFC’s trademark FLAVOR MASTER
carries the colors orange and mocha while that of Nestle’s uses
red and brown.
 The application of the totality or holistic test is improper since
the ordinary purchaser would not be inclined to notice the
specific features, similarities or dissimilarities, considering that
the product is an inexpensive and common household item.
o While this Court agrees with the Court of Appeals’ detailed enumeration
of differences between the respective trademarks of the two coffee
products, this Court cannot agree that totality test is the one applicable in
this case. Rather, this Court believes that the dominancy test is more
suitable to this case in light of its peculiar factual milieu.
o It is the observation of this Office that much of the dominance which the
word MASTER has acquired through Opposer’s advertising schemes is
carried over when the same is incorporated into respondent-applicant’s
trademark FLAVOR MASTER. Thus, when one looks at the label bearing the
trademark FLAVOR MASTER, one’s attention is easily attracted to the word
MASTER, rather than to the dissimilarities that exist. Therefore, the 44
possibility of confusion as to the goods which bear the competing marks
or as to the origins thereof is not farfetched.
o In addition, the word "MASTER" is neither a generic nor a descriptive term.
As such, said term cannot be invalidated as a trademark and, therefore,
may be legally protected.
 Generic terms are those which constitute "the common
descriptive name of an article or substance," or comprise the
"genus of which the particular product is a species," or are
"commonly used as the name or description of a kind of goods,"
or "imply reference to every member of a genus and the
exclusion of individuating characters," or "refer to the basic
nature of the wares or services provided rather than to the more
idiosyncratic characteristics of a particular product," and are not
legally protectable.
 On the other hand, a term is descriptive and therefore invalid as
a trademark if, as understood in its normal and natural sense, it
"forthwith conveys the characteristics, functions, qualities or
ingredients of a product to one who has never seen it and does
not know what it is," or "if it forthwith conveys an immediate
idea of the ingredients, qualities or characteristics of the goods,"
or if it clearly denotes what goods or services are provided in
H. TAN, 2018
 such a way that the consumer does not have to exercise powers
of perception or imagination.
o Rather, the term "MASTER" is a suggestive term brought about by the
advertising scheme of Nestle.
 Suggestive terms are those which, in the phraseology of one
court, require "imagination, thought and perception to reach a
conclusion as to the nature of the goods."
 Such terms, "which subtly connote something about the
product," are eligible for protection in the absence of
secondary meaning.
 While suggestive marks are capable of shedding "some light"
upon certain characteristics of the goods or services in dispute,
they nevertheless involve an element of incongruity,
figurativeness, or imaginative effort on the part of the
observer.
o This is evident from the advertising scheme adopted by Nestle in
promoting its coffee products. In this case, Nestle has, over time,
promoted its products as "coffee perfection worthy of masters like
Robert Jaworski and Ric Puno Jr."
o The term "MASTER", therefore, has acquired a certain connotation to
mean the coffee products MASTER ROAST and MASTER BLEND produced
by Nestle. As such, the use by CFC of the term "MASTER" in the trademark
for its coffee product FLAVOR MASTER is likely to cause confusion or
mistake or even to deceive the ordinary purchasers.
12) Levi Strauss v. Clinton Apparelle, G.R. No. 138900, 20 September 2005
 ISSUE: WON the issuance of the writ of preliminary injunction by the trial court
was proper. (NO)
Levi Strauss Clinton Apparelle/Olympian Garments
Dockers and Design Paddocks
Clothing under class 25 pants
Prior user Junior user
Wing-shaped logo Same logo
 Levi Strauss filed a case for trademark infringement against Clinton Apparelle,
together with an alternative defendant, Olympian Garments. The Complaint alleged
that LS & Co., a foreign corporation engaged in the apparel business, is the owner by
prior adoption and use since 1986 of the internationally famous "Dockers and
Design" trademark.
o This ownership is evidenced by its valid and existing registrations in various
member countries of the Paris Convention, including the Philippines, it has
a Certificate of Registration for use of said trademark on pants, shirts,
blouses, skirts, shorts, sweatshirts and jackets under Class 25.
o The "Dockers and Design" trademark was first used in the Philippines in or
about May 1988, by LSPI, its domestic counterpart.
o To date, LSPI continues to manufacture and sell Dockers Pants with the
"Dockers and Design" trademark.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
o They discovered the presence in the local market of jeans under the brand
name "Paddocks" using a device which is substantially, if not exactly,
similar to the "Dockers and Design" trademark owned by and registered in
the name of LS & Co., without its consent.
 RTC issued the writ of preliminary injunction. The evidence considered by the trial
court in granting injunctive relief were as follows:
o (1) a certified true copy of the certificate of trademark registration for
"Dockers and Design";
o (2) a pair of DOCKERS pants bearing the "Dockers and Design" trademark;
o (3) a pair of "Paddocks" pants bearing respondent’s assailed logo;
o (4) the Trends MBL Survey Report purportedly proving that there was
confusing similarity between two marks;
o (5) the affidavit of one Bernabe Alajar which recounted petitioners’ prior
adoption, use and registration of the "Dockers and Design" trademark; and
o (6) the affidavit of one Mercedes Abad of Trends MBL, Inc. which detailed
the methodology and procedure used in their survey and the results
thereof.
 CA held that the trial court did not follow the procedure required by law for the
issuance of a temporary restraining order as Clinton Apparelle was not duly notified
of the date of the summary hearing for its issuance. Thus, the Court of Appeals ruled
that the TRO had been improperly issued. In its opinion, LEVI failed to sufficiently
establish its material and substantial right to have the writ issued. Secondly, the
survey presented by petitioners to support their contentions was commissioned by
LEVI. The Court of Appeals remarked that affidavits taken ex-parte are generally 45
considered to be inferior to testimony given in open court. Moreover, the injury LEVI
have suffered or are currently suffering may be compensated in terms of monetary
consideration, if after trial, a final judgment shall be rendered in their favor.
 HELD: We find that there was scant justification for the issuance of the writ of
preliminary injunction.
o Section 1, Rule 58 of the Rules of Court defines a preliminary injunction as
an order granted at any stage of an action prior to the judgment or final
order requiring a party or a court, agency or a person to refrain from a
particular act or acts. Injunction is accepted as the strong arm of equity or
a transcendent remedy to be used cautiously as it affects the respective
rights of the parties, and only upon full conviction on the part of the court
of its extreme necessity.
o An extraordinary remedy, injunction is designed to preserve or maintain
the status quo of things and is generally availed of to prevent actual or
threatened acts until the merits of the case can be heard.34 It may be
resorted to only by a litigant for the preservation or protection of his rights
or interests and for no other purpose during the pendency of the principal
action.35 It is resorted to only when there is a pressing necessity to avoid
injurious consequences, which cannot be remedied under any standard
compensation. The resolution of an application for a writ of preliminary
injunction rests upon the existence of an emergency or of a special
H. TAN, 2018
 recourse before the main case can be heard in due course of
proceedings.36
 Petitioners anchor their legal right to "Dockers and Design" trademark on the
Certificate of Registration issued in their favor by the BPTTT.
o This Certificate of Registration is prima facie evidence of the validity of the
registration, the registrant’s ownership of the mark and of the exclusive
right to use the same in connection with the goods or services and those
that are related thereto specified in the certificate.
o Section 147.1 of said law likewise grants the owner of the registered mark
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 for
goods or services which are identical or similar to those in respect of which
the trademark is registered if such use results in a likelihood of confusion.
 However, attention should be given to the fact that petitioners’ registered
trademark consists of two elements:
o (1) the word mark "Dockers" and
o (2) the wing-shaped design or logo.
 Notably, there is only one registration for both features of the trademark giving
the impression that the two should be considered as a single unit.
o Clinton Apparelle’s trademark, on the other hand, uses the "Paddocks"
word mark on top of a logo which according to petitioners is a slavish
imitation of the "Dockers" design.
o The two trademarks apparently differ in their word marks ("Dockers" and
"Paddocks").
o It could thus be said that respondent only "appropriates" petitioners’
logo and not the word mark "Dockers"; it uses only a portion of the
registered trademark and not the whole.
 Given the single registration of the trademark "Dockers and Design" and
considering that respondent only uses the assailed device but a different word
mark, the right to prevent the latter from using the challenged "Paddocks" device
is far from clear.
 Stated otherwise, it is not evident whether the single registration of the trademark
"Dockers and Design" confers on the owner the right to prevent the use of a
fraction thereof in the course of trade. It is also unclear whether the use without
the owner’s consent of a portion of a trademark registered in its entirety
constitutes material or substantial invasion of the owner’s right.
 It is likewise not settled whether the wing-shaped logo, as opposed to the word
mark, is the dominant or central feature of petitioners’ trademark.
 In sum, there are vital matters which have yet and may only be established through
a full-blown trial. From the above discussion, we find that petitioners’ right to
injunctive relief has not been clearly and unmistakably demonstrated.
o Petitioners also failed to show proof that there is material and substantial
invasion of their right to warrant the issuance of an injunctive writ. Neither
were petitioners able to show any urgent and permanent necessity for the
writ to prevent serious damage.
 To be eligible for protection from dilution, there has to be a finding that:
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
o (1) the trademark sought to be protected is famous and distinctive;
o (2) the use by respondent of "Paddocks and Design" began after the
petitioners’ mark became famous; and
o (3) such subsequent use defames petitioners’ mark. In the case at bar,
petitioners have yet to establish whether "Dockers and Design" has
acquired a strong degree of distinctiveness and whether the other two
elements are present for their cause to fall within the ambit of the invoked
protection.
 The Trends MBL Survey Report which petitioners presented in
a bid to establish that there was confusing similarity between
two marks is not sufficient proof of any dilution that the trial
court must enjoin.
 The Court also finds that the trial court’s order granting the writ did not adequately
detail the reasons for the grant. The trial court in granting the injunctive relief tersely
ratiocinated that "the plaintiffs appear to be entitled to the relief prayed for and this
Court is of the considered belief and humble view that, without necessarily delving
on the merits, the paramount interest of justice will be better served if the status
quo shall be maintained."
o It was "not enough" for the trial court, in its order granting the writ, to
simply say that it appeared "after hearing that plaintiff is entitled to the
relief prayed for."
 In addition, we agree with the Court of Appeals in its holding that the damages the
petitioners had suffered or continue to suffer may be compensated in terms of
monetary consideration. 46
 We also believe that the issued injunctive writ, if allowed, would dispose of the case
on the merits as it would effectively enjoin the use of the "Paddocks" device without
proof that there is basis for such action.
o Courts should avoid issuing a writ of preliminary injunction that would in
effect dispose of the main case without trial.
o There would be a prejudgment of the main case and a reversal of the rule
on the burden of proof since it would assume the proposition which
petitioners are inceptively bound to prove.
 After a careful consideration of the facts and arguments of the parties, the Court
finds that petitioners did not adequately prove their entitlement to the injunctive
writ. In the absence of proof of a legal right and the injury sustained by the applicant,
an order of the trial court granting the issuance of an injunctive writ will be set aside
for having been issued with grave abuse of discretion.
 Conformably, the Court of Appeals was correct in setting aside the assailed orders of
the trial court.
Issue of Parallel Importation
13) Yu v. CA, 217 SCRA 328
 ISSUE: WON writ of preliminary injunction should issue? (YES)
 YU, the EXCLUSIVE distributor of the House of Mayfair wallcovering products in the
Philippines, cried foul when his former dealer of the same goods UNISIA, purchased
H. TAN, 2018
 the merchandise from the House of Mayfair in England through FNF Trading in West
Germany and sold said merchandise in the Philippines.
 Even as petitioner was such exclusive distributor, UNISIA, then YU’s dealer, imported
the some goods via the FNF Trading which eventually sold the merchandise in the
domestic market.
 In the suit for injunction, YU alleged that UNISIA acted in concert with the FNF
Trading in misleading Mayfair into believing that the goods ordered by the trading
firm were intended for shipment to Nigeria although they were actually shipped to
and sold in the Philippines. But, UNISIA professed ignorance of the exclusive contract
in favor of petitioner.
 YU is seeking to enjoin the sale and distribution by private respondent of the same
goods in the market.
 RTC and CA denied the petition for injunction.
 According to the appellate court, petitioner was not able to demonstrate the
unequivocal right which he sought to protect and that private respondent is a
complete stranger vis-a-vis the covenant between petitioner and Mayfair. Moreover,
Yu could be fully compensated for the prejudice he suffered.
 In the petition at hand, petitioner anchors his plea for redress on his perception that
UNISIA has distributed and continues to sell Mayfair covering products in
contravention of petitioner's exclusive right conferred by the covenant with the
House of Mayfair.
 TRO was issued to last until further notice from the SC. Notwithstanding such
proscription, UNISIA persisted in the distribution and sole.
 HELD:
o Verily, injunction is the appropriate remedy to prevent a wrongful
interference with contracts by strangers to such contracts where the legal
remedy is insufficient and the resulting injury is irreparable.
o The liability of private respondent, if any, does not emanate from the four
corners of the contract for undoubtedly, Unisia is not a party thereto but
its accountability is "an independent act generative of civil liability".
o To Our mind, the right to perform an exclusive distributorship agreement
and to reap the profits resulting from such performance are proprietary
rights which a party may protect which may otherwise not be diminished,
nay, rendered illusory by the expedient act of utilizing or interposing a
person or firm to obtain goods from the supplier to defeat the very
purpose for which the exclusive distributorship was conceptualized, at the
expense of the sole authorized distributor.
o Moreover, Mayfair in England was duped into believing that the goods
ordered through the FNF Trading were to be shipped to Nigeria only, but
the goods were actually sent to and sold in the Philippines.
 A ploy of this character is akin to the scenario of a third person
who induces a party to renege on or violate his undertaking
under a contract, thereby entitling the other contracting party to
relief therefrom (Article 1314, New Civil Code).
 The breach caused by private respondent was even aggravated
by the consequent diversion of trade from the business of
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
petitioner to that of private respondent caused by the latter's
species of unfair competition as demonstrated no less by the
sales effected inspite of this Court's restraining order.
 The injury is irreparable where it is continuous and repeated
since from its constant and frequent recurrence, no fair and
reasonable redress can be had therefor by petitioner insofar as
his goodwill and business reputation as sole distributor are
concerned.
 Withal, to expect petitioner to file a complaint for every sale
effected by private respondent will certainly court multiplicity of
suits.
Unisia was sourcing genuine products. Yu rin. Unisia was allegedly duping House of
Mayfair, telling them that the products are to be delivered in Nigeria, but instead it
delivered the products in the Philippines.
EXCLUSIVE DISTRIBUTOR dapat.
I. Remedies
 Sec. 3. International Conventions and Reciprocity. –
Any person who is a national or who is
domiciled or
has a real and effective industrial establishment in a country which is a
party to any convention, treaty or agreement relating to intellectual
property rights or the repression of unfair competition, to which the 47
Philippines is also a party, or extends reciprocal rights to nationals of the
Philippines by law,
shall be entitled to benefits to the extent necessary to give effect to any provision
of such convention, treaty or reciprocal law, in addition to the rights to which any
owner of an intellectual property right is otherwise entitled by this Act. (n)
 Sec. 160, Right of Foreign Corporation to Sue in Trademark or Service Mark
Enforcement Action. –
Any foreign national or juridical person who meets the requirements of Section 3
of this Act and does not engage in business in the Philippines may bring a civil or
administrative action hereunder for
(i) opposition,
(ii) cancellation,
(iii) infringement,
(iv) unfair competition, or
(v) false designation of origin and false description,
WHETHER OR NOT IT IS LICENSED TO DO BUSINESS IN THE PHILIPPINES under
existing laws. (Sec. 21-A, R.A. No. 166a)
Favorite question
Even if you’re not licensed to do business in the Philippines
 Sec. 231, Reverse Reciprocity of Foreign Laws. –
Any condition, restriction, limitation, diminution, requirement, penalty or any
similar burden imposed by the law of a foreign country on a Philippine national
H. TAN, 2018
 seeking protection of intellectual property rights in that country, shall reciprocally
be enforceable upon nationals of said country, within Philippine jurisdiction. (n)
If you go to the States, whatever will be applicable to their nationals will also be
applicable to Filipino nationals there.
In pleadings, when you draft a complaint, you have to state with specificity the
conditions and state of the qualifications of the parties, that the foreign corporation
is incorporated under the laws of a country who is a member of a convention to
which the Philippines is a signatory.
1) Leviton Industries v. Salvador, 114 SCRA 420, G.R. No. L-40163, 19 June 1982
2) Puma v. IAC, 158 SCRA 233, G.R. No. 75067, 26 February 1988 – FAVE hahahaha
3) La Chemise Lacoste v. Fernandez, 129 SCRA 373, G.R. Nos. 63796-97 [21 May 1984]
1. Administrative
a) Cancellation Proceedings
 Sec. 151, Cancellation. –
o 151.1. A petition to cancel a registration of a mark under this Act may be
filed with the Bureau of Legal Affairs by any person who believes that he
is or will be damaged by the registration of a mark under this Act as
follows:
a. Within five (5) years from the date of the registration of the mark
under this Act.
b. At any time,
1. if the registered mark becomes the generic name for the
goods or services, or a portion thereof, for which it is
registered, or
2. has been abandoned, or
3. its registration was obtained fraudulently or contrary to
the provisions of this Act, or
4. if the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the
source of the goods or services on or in connection with
which the mark is used.
 If the registered mark becomes the generic name for less than
all of the goods or services for which it is registered, a petition
to cancel the registration for only those goods or services may
be filed.
 A registered mark shall NOT be deemed to be the generic name
of goods or services solely because such mark is also used as a
name of or to identify a unique product or service.
 The PRIMARY significance of the registered mark to the
relevant public rather than purchaser motivation shall be the
test for determining whether the registered mark has become
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
the generic name of goods or services on or in connection with
which it has been used. (n)
c. At any time, if the registered owner of the mark without legitimate
reason FAILS
1. to use the mark within the Philippines, or
2. to cause it to be used in the Philippines by virtue of a
license
during an UNINTERRUPTED period of three (3) years or longer.
There must be registration.
Prescriptive period of 5 years from registration of the mark.
If the non-usage is something not within your control, then it’s not
abandonment.
 Sec. 153 Requirements of Petition; Notice and Hearing. –
Insofar as applicable, the petition for cancellation shall be in the same form as that
provided in Section 134 hereof, and notice and hearing shall be as provided in
Section 135 hereof.
 Section 154. Cancellation of Registration. –
If the Bureau of Legal Affairs finds that a case for cancellation has been made out,
it shall order the cancellation of the registration.
When the order or judgment becomes final, any right conferred by such
registration upon the registrant or any person in interest of record shall terminate.
Notice of cancellation shall be published in the IPO Gazette. (Sec. 19, R.A. No. 166a)
 Sec. 230, Equitable Principles to Govern Proceedings. – 48
In all inter partes proceedings in the Office under this Act, the equitable principles
of laches, estoppel, and acquiescence where applicable, may be considered and
applied. (Sec. 9-A, R.A. No. 165)
 Sec. 232.2, Appeals. –
232.2. Unless expressly provided in this Act or other statutes, appeals from
decisions of administrative officials shall be provided in the Regulations. (n)
Appeal to director-general
1) Romero v. Maiden Form, 10 SCRA 556, G.R. No. L-18289 [31 March 1964]
ISSUE: WON Maiden Form can register the trademark Adagio for being an arbitrary
use of a common/descriptive word? (YES)
Maiden Form filed with an application for registration of the trademark
"Adagio" for the brassieres manufactured by it. In its application, the company
alleged that said trademark was first used by it in the US and in the Philippines; that
it had been continuously used by it in trade in, or with the Philippines for over 10
years; that said trademark "is on the date of this application, actually used by
respondent company on the following goods, classified according to the official
classification of goods (Rule 82) - Brassieres, Class 40"; and that said trademark is
applied or affixed by Maiden Form to the goods by placing thereon a woven label on
which the trademark is shown.
The Director approved for publication in the Official Gazette said
trademark of Maiden Form, having found, inter alia, that said trademark is "a fanciful
H. TAN, 2018
 and arbitrary use of a foreign word adopted by applicant as a trademark for its
product; that it is neither a surname nor a geographical term, nor any that comes
within the purview of Section 4 of Republic Act No. 166; and that the mark as used
by Maiden Form convincingly shows that it identifies and distinguishes respondent
company's goods from others."
Director issued to respondent company a certificate of registration of with,
trademark "Adagio". Romero filed a petition for cancellation of said trademark, on
the grounds that it is a common descriptive name of an article or substance on which
the patent has expired; that its registration was obtained fraudulently or contrary to
the provisions of R.A. 166; and that said trademark has not become distinctive of
Maiden Form’s goods or business; that it has been used by Maiden Form company
to classify the goods (the brassieres) manufactured by it, in the same manner as
Romero uses the same; that said trademark has been used by Romero for almost 6
years; that it has become a common descriptive name.
Romero claims that the trademark "Adagio" has become a common
descriptive name of a particular style of brassiere and is, therefore, unregistrable. It
is urged that said trademark had been used by local brassiere manufacturers since
1948, without objection on the part of Maiden Form.
HELD:
This claim is without basis in fact. The evidence shows that the trademark
"Adagio" is a musical term, which means slowly or in an easy manner, and was used
as a trademark by the owners thereof because they are musically inclined. Being a
musical term, it is used in an arbitrary (fanciful) sense as a trademark for brassieres
manufactured by respondent company. It also appears that Maiden Form has,
likewise, adopted other musical terms such as "Etude", "Chansonette", "Prelude",
"Over-ture", and "Concerto" to identify, as a trademark, the different styles or types
of its brassieres. The fact that said mark is used also to designate a particular style
of brassiere, does not affect its registrability as a trademark.
It is not true that Maiden Form did not object to the use of said trademark
by petitioner and other local brassiere manufacturers. Its agent, warned a
Department Store to desist from the sale of the "Adagio" Royal Form brassieres
manufactured by petitioner and even placed an advertisement in the local
newspapers warning the public against unlawful use of said trademark.
On the other hand, Maiden Form’s long and continuous use of the
trademark "Adagio" has not rendered it merely descriptive of the product.
Widespread dissemination does not justify Maiden Form in the use of the trademark.
If this argument were sound, then every time a plaintiff obtained the result of having
the public purchase its article, that fact of itself would destroy a trademark. Arbitrary
trademarks cannot become generic in this way.
Brassieres are usually of different types or styles, and appellee has used
different trademarks for every type as shown by its labels. The mere fact that
appellee uses "Adagio" for one type or style, does not affect the validity of such word
as a trademark.
Appellant also claims that respondent Director erred in registering the trademark in
question, despite appellee's non-compliance with Section 37, paragraphs 1 and 4 (a)
of Republic Act No. 166.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Trademark rights in the Philippines, without actual use the trademark in
this country can be created artificially by means of a treaty or convention with
another country or countries. Philippine Trademark Law, envisions the eventual
entrance of the Philippines into such convention treaty. Applications filed
thereunder need not allege use in the Philippines of the trade mark sought to be
registered. The Philippines has, however not yet entered into any such treaty or
convention and, until she does, actual use in the Philippines of the trademark sought
to be registered and allegation in the application of such fact, will be required in all
applications for original or renewal registration submitted to the Philippine Patent
Office.
There is no evidence to show that the registration of the trademark
"Adagio" was obtained fraudulently by appellee. There being no evidence of use of
the mark by others before 1932, or that appellee abandoned use thereof, the
registration of the mark was made in accordance with the Trademark Law.
Granting that appellant used the mark when appellee stopped using it
during the period of time that the Government imposed restrictions on importation
of respondent's brassiere bearing the trademark, such temporary non-use did not
affect the rights of appellee because it was occasioned by government restrictions
and was not permanent, intentional, and voluntary. To work an abandonment, the
disuse must be permanent and not ephemeral; it must be intentional and
voluntary, and not involuntary or even compulsory. There must be a thorough-
going discontinuance of any trade-mark use of the mark in question.
The use of the trademark by other manufacturers did not indicate an
intention on the part of appellee to abandon it. To establish the defense of 49
abandonment, it is necessary to show not only acts indicating a practical
abandonment, but AN ACTUAL INTENTION to abandon.
Records show that appellee was the first user of the trademark in the
Philippines, whereas appellant was the later user. Granting that appellant used the
trade-mark at the time appellee stopped using it due to government restrictions on
certain importations, such fact did not, as heretofore stated, constitute
abandonment of the trademark as to entitle anyone to its free use.
Non-use because of legal restrictions is not evidence of an intent to
abandon. Abandonment will not be inferred from a disuse over a period of years
occasioned by statutory restrictions on the name of liquor.
2) Philippine Nut Industry v. Standard Brands Inc., 65 SCRA 575, G.R. No. L-23035 [31
July 1975]
ISSUE: is the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by
Philippine Nut confusingly similar to the trademark "PLANTERS COCKTAIL
PEANUTS" used by Standard Brands so as to constitute an infringement of the
latter's trademark rights and justify its cancellation?
Philippine Nut, a domestic corporation, obtained a Certificate of
Registration covering the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS," the
label used on its product of salted peanuts. Standard Brands filed Inter Partes Case
asking for the cancellation of Philippine Nut's certificate of registration on the ground
that "the registrant was not entitled to register the mark at the time of its application
H. TAN, 2018
 for registration thereof" for the reason that Standard Brands is the owner of the
trademark "PLANTERS COCKTAIL PEANUTS" covered by Certificate of Registration.
Standard Brands alleged in its petition that Philippine Nut's trademark "PHILIPPINE
PLANTERS CORDIAL PEANUTS" closely resembles and is confusingly similar to its
trademark "PLANTERS COCKTAIL PEANUTS" used also on salted peanuts, and that
the registration of the former is likely to deceive the buying public and cause damage
to it.
Philippine Nut alleged that its registered label is not confusingly similar to
that of Standard Brands as the latter alleges. Director of Patents gave due course to
the petition and ordered the cancellation of Philippine Nut's Certificate of
Registration, holding that in the labels using the two trademarks in question, the
dominant part is the word "Planters", displayed "in a very similar manner" so much
so that "as to appearance and general impression" there is "a very confusing
similarity," and he concluded that Philippine Nut "was not entitled to register the
mark at the time of its filing the application for registration" as Standard Brands will
be damaged by the registration of the same.
According to PH Nut, PLANTERS cannot be considered as the dominant
feature of the trademarks in question because it is a mere descriptive term, an
ordinary word which is defined in Webster International Dictionary as "one who or
that which plants or sows, a farmer or an agriculturist."
HELD:
There is infringement of trademark when the use of the mark involved
would be likely to cause confusion or mistake in the mind of the public or to deceive
purchasers as to the origin or source of the commodity; whether or not a trademark
causes confusion and is likely to deceive the public is a question of fact which is to
be resolved by applying the "test of dominancy", meaning, if the competing
trademark contains the main or essential or dominant features of another by reason
of which confusion and deception are likely to result, then infringement takes pIace;
that duplication or imitation is not necessary, a similarity in the dominant features
of the trademarks would be sufficient.
While it is true that PLANTERS is an ordinary word, nevertheless it is used
in the labels not to describe the nature of the product, but to project the source or
origin of the salted peanuts contained in the cans. The word PLANTERS printed
across the upper portion of the label in bold letters easily attracts and catches the
eye of the ordinary consumer and it is that word and none other that sticks in his
mind when he thinks of salted peanuts.
In cases of this nature there can be no better evidence as to what is the
dominant feature of a label and as to whether there is a confusing similarity in the
contesting trademarks than the labels themselves. A visual and graphic
presentation of the labels will constitute the best argument for one or the other,
hence, we are reproducing hereunder a picture of the cans of salted peanuts of the
parties to the case.
It is true that there are other words used such as "Cordial" in petitioner's
can and "Cocktail" in Standard Brands', which are also prominently displayed, but
THESE WORDS ARE MERE ADJECTIVES describing the type of peanuts in the labeled
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
containers and are NOT SUFFICIENT to warn the unwary customer that the two
products come form distinct sources.
As a whole it is the word PLANTERS which draws the attention of the buyer
and leads him to conclude that the salted peanuts contained in the two cans
originate from one and the same manufacturer.
The Director's decision is based not only on the fact that petitioner herein
adopted the same dominant mark of Standard Brands, that is, the word PLANTERS,
but that it also used in its label the same coloring scheme of gold, blue, and white,
and basically the same lay-out of words such as "salted peanuts" and "vacuum
packed" with similar type and size of lettering as appearing in Standard Brands' own
trademark, all of which result in a confusing similarity between the two labels. The
striking similarity between the two labels is quite evident not only in the common
use of PLANTERS but also in the other words employed.
As a matter of fact, the capital letter "C" of petitioner's "Cordial" is alike to
the capital "C" of Standard's "Cocktail", with both words ending with an "1".
Admittedly, no producer or manufacturer may have a monopoly of any color
scheme or form of words in a label. But when a competitor adopts a distinctive or
dominant mark or feature of another's trademark and with it makes use of the
same color ensemble, employs similar words written in a style, type and size of
lettering almost identical with those found in the other trademark, the intent to
pass to the public his product as that of the other is quite obvious. Hence, there is
good reason for Standard Brands' to ask why did petitioner herein use the word
PLANTERS, the same coloring scheme, even almost identical size and contour of the
cans, the same lay-out of words on its label when there is a myriad of other words, 50
colors, phrases, symbols, and arrangements to choose from to distinguish its product
from Standard Brands, if petitioner was not motivated to simulate the label of the
latter for its own can of salted peanuts, and thereby deceive the public?
Those alleged differences differences between the two trademarks, such
as, the presence of the word "Philippine" above PLANTERS on its label, and other
phrases are insignificant in the sense that they are not sufficient to call the
attention of the ordinary buyer that the labeled cans come from distinct and
separate sources.
The word "Philippine" printed in small type in petitioner's label may simply
give to the purchaser the impression that that particular can of PLANTERS salted
peanuts is locally produced or canned but that what he is buying is still PLANTERS
canned salted peanuts and nothing else. As regards "Mr. Peanut" on Standard
Brands' label, the same appears on the top cover and is not visible when the cans are
displayed on the shelves, aside from the fact that the figure of "Mr. Peanut" is
printed on the tin cover which is thrown away after opening the can, leaving no
lasting impression on the consumer.
The goods being sold by the parties herein are very ordinary commodities
purchased by the average person and many times by the ignorant and unlettered
and these are the persons who will not as a rule examine the printed small letterings
on the container but will simply be guided by the presence of the striking mark
PLANTERS on the label.
H. TAN, 2018
 Differences there will always be, but whatever differences exist, these
pale into insignificance in the face of an evident similarity in the dominant feature
and overall appearance of the labels of the parties. It is not necessary, to constitute
trademark "infringement", that every word of a trade-mark should be
appropriated, but it is sufficient that enough be taken to deceive the public in the
purchase of a protected article.
A trade-name in order to be an `infringement' upon another need not be
exactly like it in form and sound, but it is enough if the one so resembles another
as to deceive or mislead persons of ordinary caution into the belief that they are
dealing with the one concern when in fact they are dealing with the other.
Where a trade-mark contains a dominating or distinguishing word, and
purchasing public has come to know and designate the article by such dominating
word, the use of such word by another in marking similar goods may constitute
Infringement though the marks aside from such dominating word may be
dissimilar.
"Infringement" of trade-mark does not depend on the use of identical
words, nor on the question whether they are so similar that a person looking at
one would be deceived into the belief that it was the other; it being sufficient if
one mark is so like another in form, spelling, or sound that one with not a very
definite or clear recollection as to the real mark is likely to be confused or misled.
A word or phrase originally incapable of exclusive appropriation with
reference to an article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that branch of the
purchasing public, the word or phrase has come to mean that the article was his
product.
The applicability of the doctrine of secondary meaning to the situation now
before Us is appropriate because there is oral and documentary evidence showing
that the word PLANTERS has been used by and closely associated with Standard
Brands for its canned salted peanuts since 1938 in this country. Not only is that fact
admitted by petitioner in the amended stipulation of facts but the matter has been
established by testimonial and documentary evidence. In other words, there is
evidence to show that the term PLANTERS has become a distinctive mark or symbol
insofar as salted peanuts are concerned, and by priority of use dating as far back
as 1938, respondent Standard Brands has acquired a preferential right to its
adoption as its trademark warranting protection against its usurpation by another.
On the contention that Standard Brands' use of the trademark PLANTERS was
interrupted during the Japanese occupation and in fact was discontinued when the
importation of peanuts was prohibited by Central Bank regulations, non-use of a
trademark on an article of merchandize due to legal restrictions or circumstances
beyond one's control is not to be considered as an abandonment. To work an
abandonment, the disuse must be permanent and not ephemeral; it must, be
intentional and voluntary, and not involuntary or even compulsory. There must be
a thoroughgoing discontinuance of any trade-mark use of the mark in question.
The use of the trademark by other manufacturers did not indicate an intention on
the part of appellee to abandon it.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Non-use because of legal restrictions is not evidence of an intent to
abandon. PH Nut herein must not be allowed to get a free ride on the reputation
and selling power of Standard Brands PLANTERS salted peanuts, for a self-respecting
person, or a reputable business concern as is the case here, does not remain in the
shelter of another's popularity and goodwill but builds one of his own.
Hence, there is a confusing similarity between the labels or trademarks of
Philippine Nut and Standard Brands used in their respective canned salted peanuts;
Standard Brands has priority of adoption and use of the label with PLANTERS as the
dominant feature and the same has acquired secondary meaning in relation to salted
peanuts; and there has been no abandonment or non-use of said trademark by
Standard Brands which would justify its adoption by petitioner or any other
competitor for the sale of salted peanuts in the market.
Nonuse was excused.
3) Anchor Trading Co. v. Director of Patents, 99 Phil 1040, G.R. No. L-8004, [30 May
1956]
ISSUE: WON the failure of Kua Lian Ham to register his opposition to the petition
for registration in due time estops him from asking for the cancellation of the
certificate of registration issued in favor of Anchor? (NO)
HELD: The only consequence resulting from a late filing of an opposition to an
application for registration of TM is the oppositor’s relinquishment of the privilege
given to him by laws to object to such registration, but such cannot prevent him from
asking later for its cancellation when in his opinion there are good grounds justifying
51
it.
Principle we can derive is failure to oppose the registration does not bar subsequent
filing of cancellation of registration.
4) Clorox Company v. Director of Patents, 20 SCRA 965 (1967)
ISSUE: WON the Director of Patents erred in dismissing its opposition to the
registration of the trademark in question, on the ground of failure to file the
required "verified" opposition on time (YES); and WON he erred in denying
altogether its motion and petition for relief from said order. (YES)
Go Siu Gian filed an application for registration of the trademark "OLDROX"
for his goods (whitening agent for bleaching) in trade and commerce in the country;
and that said trademark has been used by him since 1959. Within 30 days from the
date of its publication in the Official Gazette, an unverified opposition to the
application was filed by Clorox Company. Director of Patents issued the order
dismissing the petitioner's opposition to the application upon the ground, that the
Clorox Company failed to filed the required verified notice of opposition within the
period allowed by law.
Upon notice of the said order, petitioner's counsel filed a motion with the
Patent Office, dated January 10, 1961, advising that it has filed the verified notice of
opposition on time, i.e., on November 16, 1960; although it also admitted that the
covering letter of said verified opposition was given another case number (Inter
Partes Case No. 200, entitled "The Shell Company of the Philippines versus Faustino
Co") which is also handled by the same counsel in the Patent Office. Petitioner
H. TAN, 2018
 requested in that motion that the verified opposition be detached from the record
of Inter Partes Case No. 200 and to transfer the same in the corresponding file of this
case. The motion was opposed by herein respondent Go Siu Gian.
CLOROX filed a petition for relief from the order dismissing its opposition,
alleging circumstances constituting mistake or excusable negligence of its counsel
and his employee which led to the misfiling of its verified opposition, and praying
that said order be set aside. Hence, Director of Patents issued the resolution denying
both the motion and the petition for relief, and ordering the issuance of the
Certificate of Registration of the trademark "OLDROX" in the name of Go Siu Gian.
CLOROX argues that it was error for the respondent official to have
dismissed the opposition, it appearing in an indubitable manner that a verified
opposition was timely filed. The Director of Patents, on the other hand, maintains
that the verified opposition cannot be considered as having been filed on time, for
the reason that it was misfiled in the record of another opposition case through the
negligence of its own counsel.
CLOROX contends that the Director of Patents erred in denying its motion and
petition for relief from the order of January 6, 1961, dismissing its opposition to the
registration of the trademark in question. It holds the view that said Official should
have set aside the order and given due course to its opposition.
HELD:
R.A. 166 requires that an opposition to an application for registration of a
trademark should be filed within 30 days from the publication of the application in
the Official Gazette. This requirement is relaxed under Rule 187 (c) of the Revised
Rules of Practice in Trademark Cases which provide that an unverified notice of
opposition may be filed by a duly authorized attorney, but such opposition will be
null and void unless verified by the opposer in person within sixty days after such
filing. .
There is no question that petitioner's counsel filed an unverified notice of
opposition to the application for registration of the trademark "OLDROX" within 30
days from the date of its publication in the Official Gazette. An unverified opposition
was filed, and it was for this reason that the order was issued, because the law
requires that for an opposition to be valid, it must be verified. It is not disputed,
however, that immediately after it received the notice of dismissal of its opposition,
petitioner, in due time, filed a motion advising the Director of Patents that its verified
opposition was filed on time, although it admitted its error in submitting it under a
covering letter designating another opposition case.
Under the circumstances, it is our considered opinion that the verified
opposition mentioned was filed on time, although it was submitted under an
erroneous covering letter. That fact alone is no argument to the proposition that a
pleading "misfiled" is a pleading "not filed." A covering letter is not part of the
pleading. What is important is the fact that the pleading reached the official
designated by law to receive it within the prescribed time, regardless of the mistake
in the indorsement or covering letter which is not a necessary element of filing. It is
gross negligence on the part of a clerk of court to receive and file pleadings in the
record of a case by relying upon a letter of submittal or covering letter without
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
bothering to examine whether or not the pleading or document submitted
corresponds to the enclosure mentioned in the letter.
And when, as in this case, the pleading is misfiled in the record of another
case through the fault of its clerk, it cannot be said that the papers were not filed.
The verified opposition of herein petitioner was lodged with the proper official
authorized to receive. Under the circumstances, we hold, that there was
substantial compliance with the requirement of the law.
It should be noted that the grounds of fraud, accident, mistake or
excusable negligence for new trial are substantially similar to the grounds of a
petition for relief under the Rules; the only difference being that a motion for new
trial or for reconsideration is filed before the order or judgment becomes final, while
a petition for relief should be filed after the finality of the judgment or order, but
within the periods prescribed in Section 3 of Rule 38. Had herein respondents so
minded, the petition for relief filed by the petitioner in this case, having been filed
before the finality of the order dismissing its opposition, could have been treated
as a motion for reconsideration, and having been previously apprised of the fact
that the verified opposition in this case was misfiled in the record of another case,
should have set aside said order.
The rule is well settled that courts may vacate judgments and grant new
trials or enter new judgments on the grounds of error in fact or in law. They have no
power, of course, to vacate judgments after they have become final, in the sense
that the party in whose favor they are rendered is entitled as of right, to have
execution thereon, but prior thereto, the courts have plenary control over the
proceedings including the judgment, and in the exercise of a sound judicial 52
discretion, may take such proper action in this regard as truth and justice may
require.
When, as in this case, the allegation of the pleading clearly show
circumstances constituting mistake and excusable negligence which are grounds for
a motion for reconsideration of the order in question, a dismissal of the motion and
a denial of the relief sought upon the flimsy excuse that the same was filed as a
petition for relief, will amount to an abuse of that discretion. Neither may we
consider the argument of herein respondent that the petitioner is not totally
deprived of its right to question the registration of the trademark in question
because it may still pursue a cancellation proceeding under RA. 166, and Rules 191
to 197 of the Rules of Practice in Trademark Cases.
The opposition to a registration and the petition for cancellation are
alternative proceedings which a party may avail of according to his purposes, needs,
and predicaments and herein petitioner has the right to choose which remedy it
deems best for the protection of its rights.
5) Wolverine Worldwide, Inc. v. CA, 169 SCRA 627 (1989)
ISSUE: WON the present petition for cancellation is barred by res judicata in the light of
the final and executory decision in 2 previous Inter Partes Cases. (YES)
Wolverine brought a petition for the cancellation of Certificate of Registration of the
trademark HUSH PUPPIES and DOG DEVICE issued to Cruz. Wolverine alleged that it is the
registrant of the internationally known trademark HUSH PUPPIES and the DEVICE of a Dog
H. TAN, 2018
 in other countries which are members of the Paris Convention for the Protection of
Industrial Property; that the goods sold by both parties belong to the same class such that
Cruz's use of the same trademark in the Philippines in connection with the goods he sells
constitutes an act of unfair competition, as denied in the Paris Convention.
Cruz moved to dismiss the petition on the ground of res judicata, averring that more
than 10 years before this petition was filed, the same petitioner filed two petitions for
cancellation and was a party to an interference proceeding, all of which involved the
trademark HUSH PUPPIES and DEVICE, before the Philippine Patent Office. The Director
of Patents had ruled in all three inter parties cases in favor of Ramon Angeles, the Cruz’s
predecessor-in-interest.
CA affirmed tile above decision. Accordingly, Certificate of Registration issued to Cruz, for
the trademark "HUSH PUPPIES" for use on shoes is, as it is hereby, declared valid and
subsisting for the duration of its term unless owner cancelled in accordance with law. CA
affirmed.
HELD:
For a judgment to be a bar to a subsequent case, the following requisites must
concur:
1) it must be a final judgment;
2) the court which rendered it had jurisdiction over the subject matter and
the parties;
3) it must be a judgment on the merits; and
4) there must be Identity between the two cases, as to parties, — subject
matter, and cause of action.
The judgment in the previous Inter Partes Cases had long since become final and
executory. A judgment or order is final, as to give it the authority of res judicata, if it can
no longer be modified by the court issuing it or by any other court.
In the case at bar, the decision of the Court of Appeals affirming that of the Director
of Patents, in the cancellation cases filed, was never appealed to us. Consequently, when
the period to appeal from the Court of Appeals to this Court lapsed, with no appeal having
been perfected, the foregoing judgment denying cancellation of registration in the name
of private respondent's predecessor-in-interest but ordering cancellation of registration
in the name of the petitioner's predecessor-in-interest, became the settled law in the
case.
Generally, the fundamental principle of res judicata applies to all cases and
proceedings in whatever form they may be. This principle applies, in the appropriate
cases, to proceedings for cancellation of trademarks before the Philippine Patent Office.
To say that the doctrine applies exclusively to decisions rendered by what are usually
understood as courts would be to unreasonably circumscribe the scope thereof. The
more equitable attitude is to allow extension of the defense to decisions of bodies upon
whom judicial powers have been conferred.
Undoubtedly, final decisions, orders, and resolutions, of the Director of Patents are
clothed with a judicial character as they are, in fact, reviewable by the Court of Appeals
and by us. The subject judgment is undeniably on the merits of the case, rendered after
both parties and actually submitted their evidence.
Between the earlier petitions and the present one there is substantial identity of
parties, subject matter, and cause of action.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
 The petitioner in all of these cases is Wolverine Worldwide. The respondent-
registrant in this case is the assignee of Randelson Shoes which in turn, acquired its
right from Ramon Angeles, the original respondents-registrant.
 As regards the subject matter, all of these cases refer to the cancellation of
registration of the trademark HUSH PUPPIES and DEVICE of a Dog.
 Finally, there is identity of cause of action, which is the alleged wrongful or erroneous
registration of the trademark.
Petitioner suggests that the petition is not barred by res judicata because while the
former petitions were filed under Republic Act 166, the present one was brought
pursuant to the cited memorandum which expressly sanctions the cancellation of
registration of a trademark granted even prior to the same memorandum.
BUT In the first place, the subject memorandum never amended, nor was it meant
to amend, the Trademark Law. It did not indicate a new policy with respect to the
registration in the Philippines of world-famous trademarks. The protection against unfair
competition, and other benefits, accorded to owners of internationally known marks, as
mandated by the Paris Convention, is already guaranteed under the Trademark Law. Thus,
the subject memorandum, as well as Executive Order No. 913, merely reiterated the
policy already existing at the time of its issuance. Such being the case, appellant-oppositor
could have properly ventilated the issue of whether or not it fell within the protective
ambit of the Paris Convention in the previous proceedings which culminated in the
registration of the Hush Puppies trademark in appellee-movant's name, i.e., in Case No.
967 before the Philippine Patent Office.
The Director of Patents in that case, after hearing both parties and thereafter,
deciding that appellee-movant was entitled to the registration of the trademark in its
53
name, must have concluded that appellant-oppositor had not established the fact that it
was entitled to the application of the favorable provision; of the Paris Convention.
In the same light, the repeated filing of petitions for cancellation founded on
substantially the same ground as provided in Sec. 17 of the Trademark Law, we rule, is
not permissible. For to allow without any limitation whatsoever such a practice would be
clearly violative of the time-honored doctrine of res judicata. The present petition for
cancellation raises basically the same issue of ownership of the trademark HUSH
PUPPIES, which issue was already discussed and settled in the previous Inter Partes
Cases.
The aforesaid cases, involving as they were the registration of a trademark,
necessarily litigated the issue of ownership of such trademark because ownership is,
indeed, the basis of registration of a trademark. Thus, the owner of a trademark, trade
name or service-mark used to distinguish his goods, business or services from the goods,
business or services of others shall have the right to register the same on the principal
register. . . " Res judicata now bars the petitioner from reopening, by way of another
petition for cancellation, the issue of ownership of the trademark HUSH PUPPIES.
Otherwise, there will never be an end to litigation.
6) Shangrila v. CA, 359 SCRA 273 (1999)
ISSUE: WON, despite the institution of an Inter Partes case for cancellation of a mark
with the BPTTT by one party, the adverse party can file a subsequent action for
H. TAN, 2018
 infringement with the regular courts of justice in connection with the same registered
mark. (YES)
Shangri-La filed a petition, praying for the cancellation of the registration of the
"Shangri-La" mark and "S" device/logo issued to the Developers Group of Companies, Inc.,
on the ground that the same was illegally and fraudulently obtained and appropriated for
the latter's restaurant business. Shangri-La alleged that it is the legal and beneficial
owners of the subject mark and logo; that it has been using the said mark and logo for its
corporate affairs and business since March 1962 and caused the same to be specially
designed for their international hotels in 1975, much earlier than the alleged first use
thereof by the Developers Group in 1982. Likewise, the Shangri-La Group filed its own
application for registration of the subject mark and logo. The Developers Group filed an
opposition to the application.
Almost three (3) years later, the Developers Group instituted a complaint for
infringement and damages with prayer for injunction. Shangri-La moved for the
suspension of the proceedings in the infringement case on account of the pendency of
the administrative proceedings. This was denied. Shangri-La filed a Motion for
Reconsideration which was denied. Shangri-La filed a petition for certiorari but it was
dismissed.
Meanwhile, the Developers Group filed in Inter Partes Case an Urgent Motion to
Suspend Proceedings, invoking the pendency of the infringement case it filed. The BPTTT
denied the same. A Motion for Reconsideration was filed which was, however, denied in
a Resolution.
From the denial by the BPTTT of its Urgent Motion to Suspend Proceedings and
Motion for Reconsideration, the Developers Group filed with CA a petition for certiorari,
mandamus and prohibition, which the Court of Appeals dismissed the petition for lack of
merit.
HELD:
Section 151.2. Notwithstanding the foregoing provisions, the court or the
administrative agency vested with jurisdiction to hear and adjudicate any action to
enforce the rights to a registered mark shall likewise exercise jurisdiction to determine
whether the registration of said mark may be cancelled in accordance with this Act. The
filing of a suit to enforce the registered mark with the proper court or agency shall exclude
any other court or agency from assuming jurisdiction over a subsequently filed petition
to cancel the same mark. On the other hand, the earlier filing of petition to cancel the
mark with the Bureau of Legal Affairs shall not constitute a prejudicial question that
must be resolved before an action to enforce the rights to same registered mark may be
decided.
Hence, as applied in the case at bar, the earlier institution of an Inter Partes case by
the Shangri-La Group for the cancellation of the "Shangri-La" mark and "S" device/logo
with the BPTTT cannot effectively bar the subsequent filing of an infringement case by
registrant Developers Group. The law and the rules are explicit.
The rationale is plain: Certificate of Registration upon which the infringement case
is based, remains valid and subsisting for as long as it has not been cancelled by the
Bureau or by an infringement court. As such, Developers Group's Certificate of
Registration in the principal register continues as "prima facie evidence of the validity
of the registration, the registrant's ownership of the mark or trade-name, and of the
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
registrant's exclusive right to use the same in connection with the goods, business or
services specified in the certificate." Since the certificate still subsists, Developers Group
may thus file a corresponding infringement suit and recover damages from any person
who infringes upon the former's rights.
Furthermore, the issue raised before the BPTTT is quite different from that raised in
the trial court. The issue raised before the BPTTT was whether the mark registered by
Developers Group is subject to cancellation, as the Shangri-La Group claims prior
ownership of the disputed mark. On the other hand, the issue raised before the trial court
was whether the Shangri-La Group infringed upon the rights of Developers Group.
While an application for the administrative cancellation of a registered trademark on
any of the grounds enumerated in R.A.166 falls under the exclusive cognizance of BPTTT,
an action, however, for infringement or unfair competition, as well as the remedy of
injunction and relief for damages, is explicitly and unquestionably within the competence
and jurisdiction of ordinary courts.
Surely, an application with BPTTT for an administrative cancellation of a registered
trade mark cannot per se have the effect of restraining or preventing the courts from
the exercise of their lawfully conferred jurisdiction. A contrary rule would unduly
expand the doctrine of primary jurisdiction which, simply expressed, would merely
behoove regular courts, in controversies involving specialized disputes, to defer to the
findings or resolutions of administrative tribunals on certain technical matters.
This rule, evidently, did not escape the appellate court for it likewise decreed that
for "good cause shown, the lower court, in its sound discretion, may suspend the action
pending outcome of the cancellation proceedings" before the BPTTT.
However, while the instant Petitions have been pending with this Court, the 54
infringement court rendered a Decision in favor of Developers Group of Companies and
against defendants Shangri-La–
a) Upholding the validity of the registration of the service mark "Shangri-La" and "S-
Logo" in the name of plaintiff;
b) Declaring defendants' use of said mark and logo as an infringement of plaintiff's
right thereto;
c) Ordering defendants to permanently cease and desist from using and/or
continuing to use said mark and logo, or any copy, reproduction or colorable imitation
thereof, in the promotion, advertisement, rendition of their hotel and allied projects and
services or in any other manner whatsoever;
d) Ordering defendants to remove said mark and logo from any premises, objects,
materials and paraphernalia used by them and/or destroy any and all prints, signs,
advertisements or other materials bearing said mark and logo in their possession and/or
under their control; and
e) Ordering defendants, jointly and severally, to indemnify plaintiff in the amounts
of P2,000,000.00 as actual and compensatory damages, P500,000.00 as attorney's fees
and expenses of litigation.
The infringement case can and should proceed independently from the
cancellation case with the Bureau so as to afford the owner of certificates of registration
redress and injunctive writs. In the same light, so must the cancellation case with the
BPTTT continue independently from the infringement case so as to determine whether a
registered mark may ultimately be cancelled. However, the Regional Trial Court, in
H. TAN, 2018
 granting redress in favor of Developers Group, went further and upheld the validity and
preference of the latter's registration over that of the Shangri-La Group.
There can be no denying that the infringement court may validly pass upon the right
of registration. Section 161 of Republic Act No. 8293 provides that In any action involving
a registered mark the court may determine the right to registration, order the
cancellation of the registration, in whole or in part, and otherwise rectify the register
with respect to the registration of any party to the action in the exercise of this.
With the decision of the Regional Trial Court upholding the validity of the
registration of the service mark "Shangri-La" and "S" logo in the name of Developers
Group, the cancellation case filed with the Bureau hence becomes moot. To allow the
Bureau to proceed with the cancellation case would lead to a possible result contradictory
to that which the Regional Trial Court has rendered, albeit the same is still on appeal. Such
a situation is certainly not in accord with the orderly administration of justice. In any
event, the Court of Appeals has the competence and jurisdiction to resolve the merits of
the said RTC decision.
7) Superior Commercial Enterprises v. Kunnan Enterprises Ltd., G.R. No. 169974, April
20, 2010.
ISSUE: WON Kunnan is guilty of trademark infringement? (NO) WON Kunnan is guilty of
unfair competition? (NO)
SUPERIOR filed a complaint for trademark infringement and unfair competition with
preliminary injunction against KUNNAN. SUPERIOR first claimed to be the owner of the
trademarks, trading styles, company names and business names KENNEX, KENNEX &
DEVICE, PRO KENNEX and PRO-KENNEX (disputed trademarks). Second, it also asserted
its prior use of these trademarks, presenting as evidence of ownership the Principal and
Supplemental Registrations of these trademarks in its name. Third, SUPERIOR also alleged
that it extensively sold and advertised sporting goods and products covered by its
trademark registrations. Finally, SUPERIOR presented as evidence of its ownership of the
disputed trademarks the preambular clause of the Distributorship Agreement it executed
with KUNNAN, which states:
Whereas, KUNNAN intends to acquire the ownership of KENNEX trademark
registered by Superior in the Philippines. Whereas, the Superior is desirous of having
been appointed as the sole distributor by KUNNAN in the territory of the Philippines.
In its defense, KUNNAN disputed SUPERIORs claim of ownership and maintained that
SUPERIOR as mere distributor fraudulently registered the trademarks in its name.
KUNNAN alleged that it was incorporated under the name KENNEX Sports Corporation
for the purpose of manufacturing and selling sportswear and sports equipment; it
commercially marketed its products in different countries, including the Philippines since
1972. It created and first used PRO KENNEX, derived from its original corporate name, as
a distinctive trademark for its products in 1976. KUNNAN also alleged that it registered
the PRO KENNEX trademark not only in the Philippines but also in 31 other countries,
and widely promoted the KENNEX and PRO KENNEX trademarks through worldwide
advertisements in print media and sponsorships of known tennis players.
After the expiration of its initial distributorship agreement with another
company, KUNNAN appointed SUPERIOR as its exclusive distributor in
the Philippines whereas, KUNNAN intends to acquire ownership of KENNEX trademark
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
registered by the Superior in the Philippines. Whereas, the Superior is desirous of being
appointed as the sole distributor by KUNNAN in the territory of the Philippines. Hence,
KUNNAN will appoint the sole distributorship right to Superior in the Philippines,
Superior shall assign the ownership of KENNEX trademark, under the registration of
Patent Certificate to KUNNAN, and it is required that the ownership of the said
trademark shall be genuine, complete as a whole and without any defects.
Even though this Agreement clearly stated that SUPERIOR was obligated to assign
the ownership of the KENNEX trademark to KUNNAN, the latter claimed that the
Certificate of Registration for the KENNEX trademark remained with SUPERIOR because
Mariano Tan Bon Diong (Mr. Tan Bon Diong), SUPERIORs President and General
Manager, misled KUNNANs officers into believing that KUNNAN was not qualified to hold
the same due to the many requirements set by the Philippine Patent Office that KUNNAN
could not meet. KUNNAN further asserted that SUPERIOR deceived it into assigning its
applications for registration of the PRO KENNEX trademark in favor of SUPERIOR, through
an Assignment Agreement.
Prior to and during the pendency of the infringement and unfair competition case,
KUNNAN filed separate Petitions for the Cancellation of Registration Trademark, as
well as Opposition to Application involving the KENNEX and PRO KENNEX trademarks. In
essence, KUNNAN filed the Petition for Cancellation and Opposition on the ground that
SUPERIOR fraudulently registered and appropriated the disputed trademarks; as mere
distributor and not as lawful owner, it obtained the registrations and assignments of the
disputed trademarks in violation of the terms of the Distributorship Agreement and R.A.
166.
Upon the termination of its distributorship agreement with SUPERIOR, KUNNAN 55
appointed SPORTS CONCEPT as its new distributor. Subsequently, KUNNAN also caused
the publication of a Notice and Warning in the Manila Bulletins stating that (1) it is the
owner of the disputed trademarks; (2) it terminated its Distributorship Agreement
with SUPERIOR; and (3) it appointed SPORTS CONCEPT as its exclusive distributor. This
notice prompted SUPERIOR to file its Complaint for Infringement of Trademark and
Unfair Competition with Preliminary Injunction against KUNNAN.
During the proceedings however came the decision of the Bureau of Legal Affairs
(BLA) of the Intellectual Property Office (IPO) in the Consolidated Petitions for
Cancellation be made of record and be considered by the CA in resolving the case. The
IPO held that Kunnan has overwhelmingly and convincingly established its rights to the
mark PRO KENNEX. It was proven that actual use by Respondent-Registrant is not in the
concept of an owner but as a mere distributor and a mere distributor of a product
bearing a trademark, even if permitted to use said trademark has no right to and cannot
register the said trademark. Hence the petitions for cancellation and notices of
opposition are hereby granted. The decision was declared final and executoryand entry
of judgment was accordingly made. Hence, SUPERIORs registration of the disputed
trademarks now stands effectively cancelled.
The CA stressed that SUPERIORs possession of the aforementioned Certificates of
Principal Registration does not conclusively establish its ownership of the disputed
trademarks as dominion over trademarks is not acquired by the fact of registration
alone; at best, registration merely raises a presumption of ownership that can be
rebutted by contrary evidence. Further, the Certificates of Supplemental Registration
H. TAN, 2018
 issued in SUPERIORs name do not even enjoy the presumption of ownership accorded
to registration in the principal register; it does not amount to a prima facie evidence of
the validity of registration or of the registrants exclusive right to use the trademarks in
connection with the goods, business, or services specified in the certificate.
In contrast with the failure of SUPERIORs evidence, the CA found that KUNNAN
presented sufficient evidence to rebut SUPERIORs presumption of ownership over the
trademarks. KUNNAN established that SUPERIOR, far from being the rightful owner of
the disputed trademarks, was merely KUNNANs exclusive distributor. This conclusion
was based on three pieces of evidence that, to the CA, clearly established
that SUPERIOR had no proprietary interest over the disputed trademarks.
HELD:
The CA decided that the registration of the KENNEX and PRO KENNEX trademarks
should be cancelled because SUPERIOR was not the owner of, and could not in the first
place have validly registered these trademarks. Thus, as of the finality of the CA decision
on December 3, 2007, these trademark registrations were effectively cancelled
and SUPERIOR was no longer the registrant of the disputed trademarks.
Essentially, Section 22 of RA 166 states that only a registrant of a mark can file a case
for infringement. Corollary to this, Section 19 provides that any right conferred upon the
registrant under the provisions of RA 166 terminates when the judgment or order of
cancellation has become final.
Thus, we have previously held that the cancellation of registration of a trademark
has the effect of depriving the registrant of protection from infringement from the
moment judgment or order of cancellation has become final. In the present case, by
operation of law, the trademark infringement aspect of SUPERIORs case has been
rendered moot and academic in view of the finality of the decision in the Registration
Cancellation Case.
In short, SUPERIOR is left without any cause of action for trademark infringement
since the cancellation of registration of a trademark deprived it of protection from
infringement from the moment judgment or order of cancellation became final. To be
sure, in a trademark infringement, title to the trademark is indispensable to a valid cause
of action and such title is shown by its certificate of registration. With its certificates of
registration over the disputed trademarks effectively cancelled with
finality, SUPERIORs case for trademark infringement lost its legal basis and no longer
presented a valid cause of action.
Even assuming that SUPERIORs case for trademark infringement had not been
rendered moot and academic, there can be no infringement committed by KUNNAN who
was adjudged with finality to be the rightful owner of the disputed trademarks in the
Registration Cancellation Case. Even prior to the cancellation of the registration of the
disputed trademarks, SUPERIOR as a mere distributor and not the owner cannot assert
any protection from trademark infringement as it had no right in the first place to the
registration of the disputed trademarks. In fact, jurisprudence holds that in the absence
of any inequitable conduct on the part of the manufacturer, an exclusive distributor who
employs the trademark of the manufacturer does not acquire proprietary rights of the
manufacturer, and a registration of the trademark by the distributor as such belongs to
the manufacturer, provided the fiduciary relationship does not terminate before
application for registration is filed.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
In the present case, even if the causes of action of the Registration Cancellation Case
(the cancellation of trademark registration) differs from that of the present case (the
improper or unauthorized use of trademarks), the final judgment in the Registration
Cancellation Case is nevertheless conclusive on the particular facts and issues that are
determinative of the present case.
To establish trademark infringement, the following elements must be proven: (1) the
validity of plaintiffs mark; (2) the plaintiffs ownership of the mark; and (3) the use of the
mark or its colorable imitation by the alleged infringer results in likelihood of
confusion.[44]
Based on these elements, we find it immediately obvious that the second element
the plaintiffs ownership of the mark was what the Registration Cancellation Case decided
with finality. On this element depended the validity of the registrations that, on their
own, only gave rise to the presumption of, but was not conclusive on, the issue of
ownership.
On the issue of unfair competition: no evidence exists showing that KUNNAN ever
attempted to pass off the goods it sold (i.e. sportswear, sporting goods and equipment)
as those of SUPERIOR. In addition, there is no evidence of bad faith or fraud imputable
to KUNNAN in using the disputed trademarks. Specifically, SUPERIOR failed to adduce
any evidence to show that KUNNAN by the above-cited acts intended to deceive the
public as to the identity of the goods sold or of the manufacturer of the goods sold.
There can be trademark infringement without unfair competition such as when the
infringer discloses on the labels containing the mark that he manufactures the goods,
thus preventing the public from being deceived that the goods originate from the
trademark owner. In this case, no issue of confusion arises because the same 56
manufactured products are sold; only the ownership of the trademarks is at issue.
Furthermore, KUNNANs notice by its terms prevents the public from being deceived
that the goods originated from SUPERIOR since the notice clearly indicated that
KUNNAN is the manufacturer of the goods bearing the trademarks KENNEX and PRO
KENNEX.
Finally, with the established ruling that KUNNAN is the rightful owner of the
trademarks of the goods that SUPERIOR asserts are being unfairly sold by KUNNAN under
trademarks registered in SUPERIORs name, the latter is left with no effective right to
make a claim. In other words, case no longer presents a valid cause of action. For this
reason, the unfair competition aspect of the SUPERIORs case likewise falls.
b) Intellectual Property Rights Violations
 Sec. 10(2) The Bureau of Legal Affairs.
(a) Exercise original jurisdiction in ADMINISTRATIVE complaints for violations of
laws involving intellectual property rights:
o Provided, That its jurisdiction is limited to complaints where the total
damages claimed are not less than P200,000:
o Provided further, That availment of the provisional remedies may be
granted in accordance with the Rules of Court.
o The Director of Legal Affairs shall have the power to hold and punish for
contempt all those who disregard orders or writs issued in the course of
the proceedings. (n)
H. TAN, 2018
 (b) After formal investigation, the Director for Legal Affairs may impose one (1)
or more of the following administrative penalties:
(i) The issuance of a cease and desist order which shall specify the acts that
the respondent shall cease and desist from and shall require him to
submit a compliance report within a reasonable time which shall be fixed
in the order;
(ii) (ii) The acceptance of a voluntary assurance of compliance or
discontinuance as may be imposed. Such voluntary assurance may
include one or more of the following:
(1) An assurance to comply with the provisions of the intellectual
property law violated;
(2) An assurance to refrain from engaging in unlawful and unfair
acts and practices subject of the formal investigation;
(3) An assurance to recall, replace, repair, or refund the money
value of defective goods distributed in commerce; and
(4) An assurance to reimburse the complainant the expenses and
costs incurred in prosecuting the case in the Bureau of Legal
Affairs.
The Director of Legal Affairs may also require the respondent
to submit periodic compliance reports and file a bond to
guarantee compliance of his undertaking;
(i) The condemnation or seizure of products which are
subject of the offense. The goods seized hereunder
shall be disposed of in such manner as may be
deemed appropriate by the Director of Legal Affairs,
such as by sale, donation to distressed local
governments or to charitable or relief institutions,
exportation, recycling into other goods, or any
combination thereof, under such guidelines as he
may provide;
(ii) The forfeiture of paraphernalia and all real and
personal properties which have been used in the
commission of the offense;
(iii) The imposition of administrative fines in such amount
as deemed reasonable by the Director of Legal
Affairs, which shall in no case be less than Five
thousand pesos (P5,000) nor more than One hundred
fifty thousand pesos (P150,000). In addition, an
additional fine of not more than One thousand pesos
(P1,000) shall be imposed for each day of continuing
violation;
(iv) The cancellation of any permit, license, authority, or
registration which may have been granted by the
Office, or the suspension of the validity thereof for
such period of time as the Director of Legal Affairs
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
may deem reasonable which shall not exceed one (1)
year;
(v) The withholding of any permit, license, authority, or
registration which is being secured by the respondent
from the Office;
(vi) The assessment of damages;
(vii) Censure; and
(viii) Other analogous penalties or sanctions. (Secs. 6, 7, 8,
and 9, Executive Order No. 913 [1983]a)
 Sec. 232, Appeals. –
232.1. Appeals from decisions of regular courts shall be governed by the Rules of
Court. Unless restrained by a higher court, the judgment of the trial court shall be
executory even pending appeal under such terms and conditions as the court may
prescribe.
 Sec. 232.2, IPC
8) IN-N-Out Burger v. Sehwani, G.R. No. 179127, December 24, 2008
ISSUE: whether respondents are liable for unfair competition (YES)
IN-N-OUT BURGER is a business entity incorporated under the laws of US, engaged mainly
in the restaurant business, but it has never engaged in business in the Philippines. Sehwani,
Incorporated and Benita Frites, Inc. are corporations organized in the Philippines.
IN-N-OUT filed trademark and service mark applications for "IN-N-OUT" and "IN-N-OUT
Burger & Arrow Design." Petitioner later found out that Sehwani had already obtained
Trademark Registration for the mark "IN N OUT (the inside of the letter "O" formed like a
star)." By virtue of a licensing agreement, Benita Frites was able to use the registered mark of 57
respondent Sehwani.
Petitioner eventually filed an administrative complaint against respondents for unfair
competition and cancellation of trademark registration. Petitioner averred in its complaint that
it is the owner of the trade name IN-N-OUT and averred that these trademarks are registered
with the Trademark Office of the US and in various parts of the world, are internationally well-
known, and have become distinctive of its business and goods through its long and exclusive
commercial use. Petitioner claimed that respondents are making it appear that their goods
and services are those of the petitioner, thus, misleading ordinary and unsuspecting
consumers that they are purchasing petitioner’s products.
Following the filing of its complaint, petitioner sent a demand letter directing Sehwani to
cease and desist from claiming ownership of the mark "IN-N-OUT" and to voluntarily cancel its
trademark registration. Respondents refused to accede to petitioner’ demand, but expressed
willingness to surrender the registration of respondent Sehwani of the "IN N OUT" trademark
for a fair and reasonable consideration.
Petitioner was able to register the mark "Double Double". It alleged that respondents also
used this mark, as well as the menu color scheme. Petitioners also averred that respondent
Benita’s receipts bore the phrase, "representing IN-N-OUT Burger." It should be noted that
that although Sehwahi registered a mark which appeared as "IN N OUT (the inside of the letter
"O" formed like a star)," respondents used the mark "IN-N-OUT."
Respondents asserted therein that they had been using the mark "IN N OUT". Sehwani
filed an application for the registration of the mark "IN N OUT (the inside of the letter "O"
formed like a star)." Upon approval of its application, a certificate of registration of the said
H. TAN, 2018
mark was issued in the name of Sehwani. Sehwani and Benita Frites entered into a Licensing
Agreement, wherein the former entitled the latter to use its registered mark, "IN N OUT."
Respondents asserted that respondent Sehwani, being the registered owner of the mark
"IN N OUT," should be accorded the presumption of a valid registration of its mark with the
exclusive right to use the same. Respondents argued that none of the grounds provided under
the Intellectual Property Code for the cancellation of a certificate of registration are present in
this case. Additionally, respondents maintained that petitioner had no legal capacity to sue as
it had never operated in the Philippines.
HELD:
Hence, respondents seek additional reliefs in CA-G.R. SP No. 92785, seeking the reversal
of the finding of the IPO Director General that they are guilty of unfair competition, and the
nullification of the award of damages in favor of petitioner resulting from said finding.
Undoubtedly, respondents could not have raised the issue of unfair competition in CA-G.R.
SP No. 88004 because at the time they filed their Petition therein, the IPO Director General
had not yet rendered its Decision wherein it ruled that respondents were guilty thereof and
awarded damages to petitioner.
In arguing in their Petition in CA-G.R. SP No. 92785 that they are not liable for unfair
competition, it is only predictable, although not necessarily legally tenable, for respondents to
reassert their right to register, own, and use the disputed mark. Respondents again raise the
issue of who has the better right to the disputed mark, because their defense from the award
of damages for unfair competition depends on the resolution of said issue in their favor. While
this reasoning may be legally unsound, this Court cannot readily presume bad faith on the part
of respondents in filing their Petition in CA-G.R. SP No. 92785; or hold that respondents
breached the rule on forum shopping by the mere filing of the second petition before the Court
of Appeals.
Unquestionably, petitioner’s complaint, which seeks the cancellation of the disputed
mark in the name of respondent Sehwani, Incorporated, and damages for violation of
petitioner’s intellectual property rights, falls within the jurisdiction of the IPO Director of
Legal Affairs.
Unfair Competition
That petitioner has the superior right to own and use the "IN-N-OUT" trademarks
vis-à-vis respondents is a finding which this Court may no longer disturb under the doctrine of
conclusiveness of judgment.
In conclusiveness of judgment, any right, fact, or matter in issue directly adjudicated
or necessarily involved in the determination of an action before a competent court in which
judgment is rendered on the merits is conclusively settled by the judgment therein and cannot
again be litigated between the parties and their privies whether or not the claims, demands,
purposes, or subject matters of the two actions are the same.
Thus, the only remaining issue for this Court to resolve is whether the IPO Director
General correctly found respondents guilty of unfair competition for which he awarded
damages to petitioner.
The essential elements of an action for unfair competition are (1) confusing similarity
in the general appearance of the goods and (2) intent to deceive the public and defraud a
competitor. The confusing similarity may or may not result from similarity in the marks, but
may result from other external factors in the packaging or presentation of the goods. The
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
intent to deceive and defraud may be inferred from the similarity of the appearance of the
goods as offered for sale to the public. Actual fraudulent intent need not be shown.
IPO Director General ably explains the basis for his finding of the existence of unfair
competition in this case, viz: Respondents were not using their registered trademark but that
of the [petitioner]. [Respondent] SEHWANI, INC. was issued a Certificate of Registration for IN
N OUT (with the Inside of the Letter "O" Formed like a Star) for restaurant business in 1993.
The restaurant opened only in 2000 but under the name IN-N-OUT BURGER.
Apparently, the [respondents] started constructing the restaurant only after the
[petitioner] demanded that the latter desist from claiming ownership of the mark IN-N-OUT
and voluntarily cancel their trademark registration.
Moreover, [respondents] are also using [petitioner’s] registered mark Double-
Double for use on hamburger products. In fact, the burger wrappers and the French fries
receptacles the [respondents] are using do not bear the mark registered by the [respondent],
but the [petitioner’s] IN-N-OUT Burger’s name and trademark IN-N-OUT with Arrow design.
There is no evidence that the [respondents] were authorized by the [petitioner] to
use the latter’s marks in the business. [Respondents’] explanation that they are not using their
own registered trademark due to the difficulty in printing the "star" does not justify the
unauthorized use of the [petitioner’s] trademark instead.The intention to deceive may be
inferred from the similarity of the goods as packed and offered for sale, and, thus, action will
lie to restrain such unfair competition. x x x.
[Respondents’] use of IN-N-OUT BURGER in busineses signages reveals fraudulent
intent to deceive purchasers. Exhibit "GG," which shows the business establishment of
[respondents] illustrates the imitation of [petitioner’s] corporate name IN-N-OUT and signage
IN-N-OUT BURGER. Even the Director noticed it and held: 58
"We also note that In-N-Out Burger is likewise, [petitioner’s] corporate name. It has
used the "IN-N-OUT" Burger name in its restaurant business in Baldwin Park, California in the
United States of America since 1948. Thus it has the exclusive right to use the tradenems "In-
N-Out" Burger in the Philippines and the respondents’ are unlawfully using and appropriating
the same."
The Office cannot give credence to the [respondent’s] claim of good faith and that
they have openly and continuously used the subject mark since 1982 and is (sic) in the process
of expanding its business. In contrast, the [respondents] have the burden of evidence to prove
that they do not have fraudulent intent in using the mark IN-N-OUT. To prove their good faith,
[respondents] could have easily offered evidence of use of their registered trademark, which
they claimed to be using as early as 1982, but did not.
[Respondents] also failed to explain why they are using the marks of [petitioner]
particularly DOUBLE DOUBLE, and the mark IN-N-OUT Burger and Arrow Design. Even in their
listing of menus, [respondents] used [Appellants’] marks of DOUBLE DOUBLE and IN-N-OUT
Burger and Arrow Design. In addition, in the wrappers and receptacles being used by the
[respondents] which also contained the marks of the [petitioner], there is no notice in such
wrappers and receptacles that the hamburger and French fries are products of the
[respondents]. Furthermore, the receipts issued by the [respondents] even indicate
"representing IN-N-OUT." These acts cannot be considered acts in good faith.
With such finding, the award of damages in favor of petitioner is but proper.
In the present case, the Court deems it just and fair that the IPO Director General
computed the damages due to petitioner by applying the reasonable percentage of 30% to the
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respondents’ gross sales, and then doubling the amount thereof on account of respondents’
actual intent to mislead the public or defraud the petitioner, 49 thus, arriving at the amount of
actual damages of P212,574.28.
Taking into account the deliberate intent of respondents to engage in unfair
competition, it is only proper that petitioner be awarded exemplary damages.
c) Prohibition of Importation
 Sec. 166, Goods Bearing Infringing Marks or Trade Names. –
No article of imported merchandise which shall copy or simulate the name of any
domestic product, or manufacturer, or dealer, or which shall copy or simulate a
mark registered in accordance with the provisions of this Act, or shall bear a mark
or trade name calculated to induce the public to believe that
1. the article is manufactured in the Philippines, or
2. it is manufactured in any foreign country or locality other than the
country or locality where it is in fact manufactured,
shall be admitted to entry at any customhouse of the Philippines.
In order to aid the officers of the customs service in enforcing this
prohibition, any person who is entitled to the benefits of this Act, may require that
his name and residence, and the name of the locality in which his goods are
manufactured, a copy of the certificate of registration of his mark or trade name,
to be recorded in books which shall be kept for this purpose in the Bureau of
Customs, under such regulations as the Collector of Customs with the approval of
the Secretary of Finance shall prescribe, and may furnish to the said Bureau
facsimiles of his name, the name of the locality in which his goods are
manufactured, or his registered mark or trade name, and thereupon the Collector
of Customs shall cause one (1) or more copies of the same to be transmitted to
each collector or to other proper officer of the Bureau of Customs. (Sec. 35, R.A.
No. 166)
2. Civil
a) Infringement - FAMILIARIZE
 Sec. 155 Remedies; Infringement. –
Any person who shall, without the consent of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark or the same container or a dominant feature thereof
in connection with the sale, offering for sale, distribution, 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 is likely to cause
confusion, or to cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a
dominant feature thereof and apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or in connection with the
sale, offering for sale, distribution, or advertising of goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake,
or to deceive, shall be liable in a civil action for infringement by the registrant for
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
the remedies hereinafter set forth: Provided, That the infringement takes place at
the moment any of the acts stated in Subsection 155.1 or this subsection are
committed regardless of whether there is actual sale of goods or services using the
infringing material. (Sec. 22, R.A. No 166a)
 Sec. 156 Actions, and Damages and Injunction for Infringement. –
156.1. The owner of a registered mark may recover damages from any person who
infringes his rights.
o The measure of the damages suffered shall be either
 the reasonable profit which the complaining party would have
made, had the defendant not infringed his rights, or
 the profit which the defendant actually made out of the
infringement.
o In the event such measure of damages cannot be readily ascertained with
reasonable certainty, then the court may award as damages a reasonable
percentage based upon the amount of gross sales of the defendant or the
value of the services in connection with which the mark or trade name
was used in the infringement of the rights of the complaining party.
156.2. On application of the complainant, the court may impound during the
pendency of the action, sales invoices and other documents evidencing sales. (n)
156.3. In cases where actual intent to mislead the public or to defraud the
complainant is shown, in the discretion of the court, the damages may be doubled.
(Sec. 23, first par., R.A. No. 166)
Invariably would involve intent to deceive the public
These are Malum Prohibitum so intent would not be a viable defense; but it affects
59
damages.
156.4. The complainant, upon proper showing, may also be granted injunction.
(Sec. 23, second par., R.A. No. 166a)
 Sec. 157 Power of Court to Order Infringing Material Destroyed. –
157.1 In any action arising under this Act, in which a violation of any right of the
owner of the registered mark is established, the court MAY order that goods found
to be infringing be, without compensation of any sort, DISPOSED of outside the
channels of commerce in such a manner as to avoid any harm caused to the right
holder, or DESTROYED; and
o All labels, signs, prints, packages, wrappers, receptacles and
advertisements in the possession of the defendant, bearing the
registered mark or trade name or any reproduction, counterfeit, copy or
colorable imitation thereof, all plates, molds, matrices and other means
of making the same, shall be delivered up and destroyed.
Not a matter of right
Must convince the court that there are good reasons for destroying the goods, like
if it will dilute the goodwill of the brand
 157.2. In regard to counterfeit goods, the simple removal of the trademark
affixed shall NOT be sufficient other than in exceptional cases which shall be
determined by the Regulations, to permit the release of the goods into the
channels of commerce. (Sec. 24, R.A. No. 166a)
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 Operative phrase is that “it might be released into the channels of commerce”
 Sec. 158, IPC
 Sec. 159 (and its subparagraphs), IPC, as amended by R. A. No. 9502 (Universally
Accessible Cheaper and Quality Medicines Act of 2008)
 Section 159. Limitations to Actions for Infringement. - Notwithstanding any other
provision of this Act, the remedies given to the owner of a right infringed under
this Act shall be limited as follows:
 159.1. Notwithstanding the provisions of Section 155 hereof, a registered mark
shall have no effect against any person who, in good faith, before the filing date or
the priority date, was using the mark for the purposes of his business or enterprise:
Provided, That his right may only be transferred or assigned together with his
enterprise or business or with that part of his enterprise or business in which the
mark is used.
 159.2. Where an infringer who is engaged solely in the business of printing the
mark or other infringing materials for others is an innocent infringer, the owner of
the right infringed shall be entitled as against such infringer only to an injunction
against future printing.
 159.3. Where the infringement complained of is contained in or is part of paid
advertisement in a newspaper, magazine, or other similar periodical or in an
electronic communication, the remedies of the owner of the right infringed as
against the publisher or distributor of such newspaper, magazine, or other similar
periodical or electronic communication shall be LIMITED to an injunction against
the presentation of such advertising matter in future issues of such newspapers,
magazines, or other similar periodicals or in future transmissions of such electronic
communications.
o The limitations of this subparagraph shall apply ONLY to INNOCENT
infringers:
o Provided, That such injunctive relief shall NOT be available to the owner
of the right infringed with respect to an issue of a newspaper, magazine,
or other similar periodical or an electronic communication containing
infringing matter
 where restraining the dissemination of such infringing matter
in any particular issue of such periodical or in an electronic
communication would delay the delivery of such issue or
transmission of such electronic communication is customarily
conducted in accordance with the sound business practice, and
NOT due to any method or device adopted to evade this section
or to prevent or delay the issuance of an injunction or
restraining order with respect to such infringing matter. (n)
 159.4 There shall be no infringement of trademarks or tradenames of imported
or sold drugs and medicines allowed under Section 72.1 of this Act, as well as
imported or sold off-patent drugs and medicines:
o Provided, that said drugs and medicines bear the registered marks that
have not been tampered, unlawfully modified, or infringed upon as
defined under Section 155 of this Code.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
 Sec. 161, Authority to Determine Right to Registration. -
In any action involving a registered mark, the court MAY determine
o the right to registration,
o order the cancellation of a registration, in whole or in part, and
o otherwise rectify the register with respect to the registration of any party
to the action in the exercise of this.
Judgment and orders shall be certified by the court to the Director, who shall make
appropriate entry upon the records of the Bureau, and shall be controlled thereby.
(Sec. 25, R.A. No. 166a)
 Sec. 163, Jurisdiction of Court. - All actions under Sections 150, 155, 164, and 166
to 169 shall be brought before the proper courts with appropriate jurisdiction
under existing laws. (Sec. 27, R.A. No. 166)
 Sec. 164, Notice of Filing Suit Given to the Director. –
It shall be the duty of the clerks of such courts within one (1) month after the filing
of any action, suit, or proceeding involving a mark registered under the provisions
of this Act, to notify the Director in writing setting forth: the names and addresses
of the litigants and designating the number of the registration or registrations and
within one (1) month after the judgment is entered or an appeal is taken, the clerk
of court shall give notice thereof to the Office, and the latter shall endorse the
same upon the file-wrapper of the said registration or registrations and
incorporate the same as a part of the contents of said file-wrapper. (n)
 Sec. 232, Appeals. –
232.1. Appeals from decisions of regular courts shall be governed by the Rules
of Court.
60
o UNLESS restrained by a higher court, the judgment of the trial court shall
be EXECUTORY EVEN PENDING APPEAL under such terms and conditions
as the court may prescribe.
232.2. Unless expressly provided in this Act or other statutes, appeals from
decisions of administrative officials shall be provided in the Regulations. (n)
 Rule on Search and Seizure in Civil Actions for Infringement of Intellectual Property
Rights (A.M. No. 02-1-06-SC)
This is actually a mode of discovery.
This is hardly used. Practically a dead administrative issuance. Nonetheless, you can
explore this.
 SECTION 1. Coverage. –
o This Rule shall govern the provisional seizure and impounding of
documents and articles in pending and intended civil actions for the
purpose of preventing infringement and preserving relevant evidence in
regard to alleged infringement under Republic Act No. 8293, otherwise
known as the Intellectual Property Code of the Philippines, Article 50 of
the Agreement on Trade Related Aspects of Intellectual Property Rights,
otherwise known as TRIPS and other related laws and international
conventions.
 SECTION 2. The writ of search and seizure. -
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 o Where any delay is likely to cause irreparable harm to the intellectual
property right holder or where there is demonstrable risk of evidence
being destroyed, the intellectual property right holder or his duly
authorized representative in a pending civil action for infringement or who
intends to commence such an action may apply ex parte for the issuance
of a writ of search and seizure directing the alleged infringing defendant or
expected adverse party to admit into his premises the persons named in
the order and to allow the search, inspection, copying, photographing,
audio and audiovisual recording or seizure of any document and article
specified in the order.
 SECTION 3. Where application filed. –
o The application shall be filed with any of the Regional Trial Courts of the
judicial region designated to try violations of intellectual property rights
stationed at the place where the alleged violation occurred or is to occur,
or the place to be searched, at the election of the applicant. Provided,
however, that where the complaint for infringement has already been
filed, the application shall be made in the court where the case is pending.
 SECTION 4. Verified application and affidavits. –
o The applicant shall file a certified application alleging the ground upon
which it is based and the specific description and location of the
documents and articles to be searched, inspected, copied or seized and
their value. It shall also state the names of the applicant, his
representative, witnesses and counsel who will attend the search in the
event that the application is granted. The application shall be supported
by affidavits of witnesses who personally know the facts and by
authenticated or certified documents.
o The application shall contain a certification against forum shopping as
prescribed by Section 5, Rule 7 of the 1997 Rules of Civil Procedure.
o The applicant shall undertake in his application that he will not use any of
the documents, articles or information obtained by reason of the search
and seizure for any purpose other than in the action in which the writ is
issued.
 SECTION 5. Examination of applicant; record; confidentiality of proceedings. –
o The application shall be acted upon within twenty-four (24) hours from its
filing. The judge must, before issuing the writ, examine in the form of
searching questions and answers, in writing and under oath or affirmation,
the applicant and the witnesses he may produce on facts personally known
to them. The examination of the applicant and his witnesses shall be
recorded. Their sworn statements and their affidavits shall form part of the
record of the case.
o The hearing on the application for the writ shall be held in the chambers
of the judge. Court personnel shall maintain the confidentiality of the
application proceeding. The court may require the applicant to give other
information necessary for the identification of the articles and documents
to be searched, inspected, copied or seized and the premises to be
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
searched. Where feasible, it may direct the applicant to submit copies and
photographs of the documents or articles to be seized and impounded.
 SECTION 6. Grounds for the issuance of the order. –
o Before the Order can be issued, the evidence proffered by the applicant
and personally evaluated by the judge must show that:
(a) the applicant is the right holder or his duly authorized representative;
(b) there is probable cause to believe that the applicant's right is being
infringed or that such infringement is imminent and there is a prima facie
case for final relief against the alleged infringing defendant or expected
adverse party;
(c) damage, potential or actual, likely to be caused to the applicant is
irreparable;
(d) there is demonstrable risk of evidence that the alleged infringing
defendant or expected adverse party may destroy, hide or remove the
documents or articles before any application inter partes can be made; and
(e) the documents and articles to be seized constitute evidence of the alleged
infringing defendant's or expected adverse party's infringing activity or
that they infringe upon the intellectual property right of the applicant or
that they are used or intended to be used as means of infringing the
applicant's intellectual property right.
 SECTION 7. When writ may issue. –
o If the judge is satisfied with the proof of facts upon which the application
is based, he shall issue the writ requiring the search, inspection or copying
of the subject documents or articles or commanding the sheriff to take 61
them into his custody subject to the control of the court. The enforcement
of the writ shall be supervised by an Independent commissioner to be
appointed by the court.
 SECTION 8. Contents of the writ. –
o The writ shall contain the following:
(a) an order to the alleged infringing defendant, expected adverse party or to
the person who appears to be in charge or in control of the premises or
residing or working therein to permit the persons named in the writ to
enter into the premises for the purpose of searching, inspecting, copying,
or removing from the premises and transferring to the custody of the
sheriff and subject to the control of the court the subject documents and
articles;
(b) an order to the alleged infringing defendant, expected adverse party or to
the person in charge or in control of the premises to disclose to the sheriff
serving the writ the location of the documents and articles subject of the
writ;
(c) the period when the writ shall be enforced which in no case shall be more
than ten (10) days from the date of issuance by the court;
(d) the names of the applicant or his agent or representative and the
Commissioner who shall supervise the enforcement of the writ; and
H. TAN, 2018
 (e) other terms and conditions that will insure the proper execution of the writ
with due regard to the rights of the alleged infringing defendant or
expected adverse party.
o It shall also contain a warning that violation of any of the terms and conditions
of the writ shall constitute contempt of court.
 SECTION 9. Bond and its conditions. –
o The applicant shall be required to post a cash bond, surety bond or other
equivalent security executed in favor of the defendant or expected
adverse party in a reasonable amount to be fixed by the court in its order
granting the issuance of a writ of search and seizure. The bond shall be
conditioned on the undertaking of the applicant that he will pay all the
costs which may be adjudged to defendant or expected adverse party and
all damages which the latter may sustain by reason of the issuance of the
writ.
 SECTION 10. When writ shall be served. –
o The writ shall be served only on weekdays and from 8 o'clock in the
morning to 5 o'clock in the afternoon. However, the court may direct that
the writ be served on any day and any time or compelling reasons stated
in the application and duly proved.
 SECTION 11. To whom writ shall be served. –
o The writ shall be served on the alleged infringing defendant or expected
adverse party in the place to be searched. If the alleged infringing
defendant or expected adverse party cannot be and in the premises, the
writ shall be served on his agent or representative. In the absence of an
agent or representative, it shall be served on the person in charge or in
control of the premises, or residing or working therein who is of sufficient
age and discretion, if such person is absent, the sheriff or proper officer
shall post the papers on the premises and proceed with the enforcement
of the writ.
 SECTION 12. Commissioner, duties, qualifications and fees. –
o The enforcement of the writ shall be supervised by the independent
Commissioner appointed by the court. In the performance of his duty, the
Commissioner shall:
(a) give impartial advice to the alleged infringing defendant, expected adverse
party or to the person in charge of the premises to be searched as to the
meaning and coverage of the writ;
(b) attempt to achieve agreement on a suitable search procedure;
(c) assess what documents or articles come within the terms of the writ;
(d) ensure the accuracy of the list of documents and articles searched, inspected,
copied or seized by the sheriff;
(e) prepare his own report on the search and seizure and verify and sign the return
prepared by the sheriff; and
(f) generally, assist in the proper execution of the writ.
o The Commissioner shall be a member of the Philippine Bar and of proven
competence, integrity and probity. He shall receive such reasonable
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
compensation as may be determined by the court which can be charged
as cost of suit.
 SECTION 13. Search to be conducted in the presence of defendant, his
representative, person in charge of the premises, or witnesses. –
o The premises may not be searched except in the presence of the alleged
infringing defendant, expected adverse party or his representative or the
person in charge or in control of the premises or residing or working
therein who shall be given the opportunity to read the writ before its
enforcement and seek its interpretation from the Commissioner. In the
absence of the latter, two persons of sufficient age and discretion residing
in the same locality shall be allowed to witness the search or in the absence
of the latter, two persons of sufficient age and discretion residing in the
nearest locality.
 SECTION 14. Manner of search and seizure; duties of the sheriff. –
o Upon service of the writ in accordance with section 11 hereof, the sheriff,
under the supervision of the Commissioner, shall search for the documents
and articles specified in the writ, and take them in his custody subject to
the control of the court. If the subject articles are not capable of manual
delivery, the sheriff shall attach to them a tag or label stating the fact of
seizure and warning all persons from tampering with them.
o The sheriff shall, in the presence of the applicant or his representative, and
under the supervision of the Commissioner, prepare a detailed list of the
sized documents and articles. He shall give an accurate copy of the same
to the alleged infringing defendant, expected adverse party, his agent or 62
representative, to the person in charge or in control of the premises or
residing or working therein in whose presence the search and seizure were
made. In the absence of the person in charge or in control of the premises
or residing or working therein, the sheriff must, in the presence of at least
two witnesses of sufficient age and discretion residing in the same locality,
leave a copy of the receipt in the place in which he found the seized
property. Where no witnesses are available in the same locality, the copy
of the receipt shall be left by the sheriff in the presence of two witnesses
residing in the nearest locality. The applicant or his representative and the
Commissioner shall also be given a copy of the receipt.
o After the sheriff has taken possession of the documents and articles, he
shall deliver them to a bonded warehouse or government warehouse for
safekeeping. The applicant or his representative shall be allowed access to
said materials for the purpose of examining them.
o The applicant shall be responsible for the necessary expenses incurred in
the seizure and safekeeping of the documents and articles in a bonded
warehouse or government warehouse.
 SECTION 15. Use of reasonable force to effect writ. –
o The sheriff, if refused admittance to the premises after giving notice of his
purpose and authority or in the absence of the alleged infringing
defendant or expected adverse party, his agent or representative, or
person in charge or in control of the premises or residing or working
H. TAN, 2018
 therein who is of sufficient age and discretion, may use reasonable force
to gain entry to the premises or any part of the building or anything
therein, to enforce the writ or to liberate himself or any person lawfully
aiding him when unlawfully detained therein.
 SECTION 16. Seizure of computer disks or other storage devices. –
o The seizure of a computer disk or any storage device may be executed in
any of the following manner;
(a) by the physical taking thereof;
(b) by copying its contents in a suitable device or disk provided by the
applicant; or
(c) by printing out the contents of the disk or device with the use of a printer.
o When the computer disks or storage devices cannot be readily removed
from the computer to which they are fitted, the sheriff may take the
subject computer from the custody of the alleged infringing defendant,
expected adverse party or person in charge or in control of the premises
or residing or working therein.
 SECTION 17. Sheriff's return. –
o The sheriff who executed the writ shall, within three (3) days from its
enforcement, make a verified return to the court which issued the writ.
The return shall contain a full statement of the proceedings under the writ
and a complete inventory of the documents and articles searched,
inspected or copied or seized and impounded, with copies served on the
applicant, the defendant or expected adverse party and the Commissioner.
o If not all of the documents and articles enumerated in the order and writ
were seized, the sheriff shall so report to the court and state the reasons
therefor. All objections of the defendant, expected adverse party or
person in charge of the premises on the manner and regularity of the
service of the writ shall be included by the sheriff in his return.
 SECTION 18. Discharge of writ by the defendant or expected adverse party. –
o Without waiting for the return to be filed by the sheriff, the defendant,
expected adverse party or the party whose property has been searched,
inspected, copied or seized may file a motion with the court which issued
the writ for its discharge with prayer for the return of the documents and
articles seized.
o The writ may be discharged on any of the following grounds:
(a) that the writ was improperly or irregularly issued, or excessively enforced;
(b) that the bond is insufficient;
(c) that the safeguards provided in the writ have been violated by the
applicant or the sheriff; or
(d) that the documents and articles seized are not infringing copies or means
for making the materials alleged to infringe the intellectual property right
of the applicant.
o The writ may be discharged in a summary hearing by the court after notice
to the applicant, the sheriff and the Commissioner.
o If the court finds that the bond is insufficient, it shall order a new bond to
be filed by the applicant within a reasonable time. The discharge of the
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
writ based on the insufficiency of the bond may only be made if the
applicant fails to post the new bond within the period fixed by the court.
 SECTION 19. Proceedings on return. –
o Five (5) days after issuance of the writ, the issuing judge shall ascertain if
the writ has not been served or the return has been made by the sheriff. If
the writ was not served or no return was made, it shall summon the sheriff
and the applicant to whom the writ was issued and require them to explain
why the writ was not served or why no return has been filed as the case
may be. If the return has been made, the judge shall, after notice to the
applicant, the alleged infringing defendant or expected adverse party, the
sheriff and the Commissioner, ascertain whether the provisions of this Rule
and applicable laws have been complied with.
 SECTION 20. Failure to file complaint. –
o The writ shall also, upon motion of the expected adverse party, be set aside
and the seized documents and articles returned to the expected adverse
party if no case is filed with the appropriate court or authority within thirty-
one (31) calendar days from the date of issuance of the writ.
 SECTION 21. Claim for damages. –
o Where the writ is discharged on any of the grounds provided in this Rule,
or where it is found after trial that there has been no infringement or
threat of infringement of an intellectual property right, the court, upon
motion of the alleged infringing defendant or expected adverse party and
after due hearing, shall order the applicant to compensate the defendant
or expected adverse party upon the cash bond, surety bond or other
63
equivalent security for any injury or damage the latter suffered by the
issuance and enforcement of the writ. Should the damages exceed the
amount of the bond, the applicant shall be liable for the payment of the
excess.
o When a complaint is already filed in court, the motion shall be filed with
the same court during the trial or before appeal is perfected or before
judgment becomes executory, with due notice to the applicant, setting
forth the facts showing the defendant's right to damages and the amount
thereof. The award of damages shall be included in the judgment in the
main case.
o Where no complaint is filed against the expected adverse party, the
motion shall be filed with the court which issued the writ. In such a case,
the court shall set the motion for summary hearing and immediately
determine the expected adverse party's right to damages.
o A judgment in favor of the applicant in its principal claim should not
necessarily bar the alleged infringing defendant from recovering damages
where he suffered losses by reason of the wrongful issuance or
enforcement of the writ.
o The damages provided for in this section shall be independent from the
damages claimed by the defendant in his counterclaim.
 SECTION 22. Judgment. –
H. TAN, 2018
 o If it appears after trial that the seized documents and articles are found to
infringe the intellectual property right of the applicant or that they
constitute the means for the production of infringing goods, the court shall
order their destruction or donation to charitable, educational or religious
institutions with the prohibition against bringing the same into the
channels of commerce. In the latter case, infringing trademarks or trade
names found on labels, tags and other portions of the infringing materials
shall be removed or defaced before the donation. In no case shall the
infringing materials be returned to the defendant.
o If the court finds no infringement, the seized materials shall be
immediately returned to the defendant.
 SECTION 23. Direct filing, provisional docketing and deposit of prescribed filing fee.
– unfair competition against the herein private respondent, alleging that General
o The Regional Trial Courts specially designated to try violations of
!intellectual property rights shall keep a distinct and separate logbook for
writs of search and seizure. The application for a writ of search and seizure
filed directly with the said courts shall be given a provisional docket
number.
o The prescribed filing fee shall be deposited with the branch clerk of court
and properly receipted for and transmitted to the Clerk of Court within
twenty-four (24) hours from issuance of the order granting or denying the
application for said writ. If a formal complaint is filed thereafter, the Clerk
of Court may make a reassessment of the filing fee.
 SECTION 24. Separate logbook. –
o In every court, there shall be a logbook under the custody of the Clerk of
Court wherein shall be docketed and entered within twenty-four (24)
hours after the issuance or denial of the writ of search and seizure, the
filing of such application and other particulars thereof. All the subsequent
proceedings concerning the writ of search and seizure shall be faithfully
recorded in the separate logbook.
 SECTION 25. Effect of violation. –
o A violation of any of the terms and conditions of the order and the writ of
search and seizure or any provision of this Rule shall constitute contempt
of court.
 SECTION 26. Writ not a bar to other measures. –
o The availment of the writ of search and seizure under this Rule shall not
prevent the applicant from resorting to other provisional measures or
remedies provided in existing laws and procedural rules.
 SECTION 27. Effectivity. –
o This Rule shall take effect on February 15, 2002 after its publication in two
(2) newspapers of general circulation not later than January 30, 2002.
9) Etepha v. Director of Patents, 16 SCRA 495 (1966) – same
Atussin and Pertussin
10) Esso Standard Eastern v. CA, 116 SCRA 338 – same
11) Fruit of the Loom v. CA, 133 SCRA 405 (1984)
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
ISSUE: WON private respondent's trademark FRUIT FOR EVE and its hang tag are
confusingly similar to petitioner's trademark FRUIT OF THE LOOM and its hang tag
so as to constitute an infringement of the latter's trademark rights and justify the
cancellation of the former. (NO)
Fruit of the Loom, a corporation duly organized and existing under the laws
of the US, is the registrant of a trademark, FRUIT OF THE LOOM. The classes of
merchandise covered by Registration Certificate are men's, women's and children's
underwear.
Private respondent, a domestic corporation, is the registrant of a
trademark FRUIT FOR EVE covering garments similar to petitioner's products like
women's panties and pajamas.
Fruit of the Loom filed a complaint for infringement of trademark and
Garments’ trademark FRUIT FOR EVE is confusingly similar to its trademark FRUIT OF
THE LOOM used also on women's panties and other textile products. Furthermore,
the color get-up and general appearance of private respondent's hang tag consisting
of a big red apple is a colorable imitation to the hang tag of petitioner.
General Garments argued that its registered trademark is not confusingly
similar to that of petitioner as the latter alleged. Likewise, FRUIT FOR EVE is being
used on ladies' panties and pajamas only whereas petitioner's trademark is used
even on men's underwear and pajamas.
Petitioner are contends that the word FRUIT, being a generic word, is not
capable of exclusive appropriation by petitioner and that the registrant of a
trademark is not entitled to the exclusive use of every word of his mark. Otherwise 64
stated, petitioner argues that the respondent court committed an error in ruling that
petitioner cannot appropriate exclusively the word FRUIT in its trademark FRUIT OF
THE LOOM, and that there is no confusing similarity in sound and appearance
between the two trademarks in question.
According to petitioner, the prominent and dominant features in both of
petitioner's and private respondent's trademark are the word FRUIT and the big red
apple design; that ordinary or average purchasers upon seeing the word FRUIT and
the big red apple in private respondent's label or hang tag would be led to believe
that the latter's products are those of the petitioner.
HELD:
There is infringement of trademark when the use of the mark involved
would be likely to cause confusion or mistake in the mind of the public or to deceive
purchasers as to the origin or source of the commodity. In cases of this nature, there
can be no better evidence as to whether there is a confusing similarity in the
contesting trademarks than the labels or hang tags themselves.
In determining whether the trademarks are confusingly similar, a
comparison of the words is not the only determinant factor. The trademarks in their
entirety as they appear in their respective labels or hang tags must also be
considered in relation to the goods to which they are attached. The discerning eye
of the observer must focus not only on the predominant words but also on the other
features appearing in both labels in order that he may draw his conclusion whether
one is confusingly similar to the other.
H. TAN, 2018
 In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone similar granted under the Supplemental Register. Del Monte also obtained two registration
word is FRUIT. By mere pronouncing the two marks, it could hardly be said that it certificates for its trademark "DEL MONTE" and its logo.
will provoke a confusion, as to mistake one for the other. Standing by itself, FRUIT Having received reports that the Sunshine Sauce was using its exclusively
OF THE LOOM is wholly different from FRUIT FOR EVE. WE do not agree with designed bottles and a logo confusingly similar to Del Monte's, Philpack warned it to
petitioner that the dominant feature of both trademarks is the word FRUIT for even desist from doing so on pain of legal action. Thereafter, claiming that the demand
in the printing of the trademark in both hang tags, the word FRUIT is not at all made had been ignored, Philpack and Del Monte filed a complaint against Sunshine Sauce
dominant over the other words. for infringement of trademark and unfair competition, with a prayer for damages
As to the design and coloring scheme of the hang tags, We believe that and the issuance of a writ of preliminary injunction.
while there are similarities in the two marks like the red apple at the center of each Sunshine alleged that it had long ceased to use the Del Monte bottle and
mark, We also find differences or dissimilarities which are glaring and striking to the that its logo was substantially different from the Del Monte logo and would not
eye such as: confuse the buying public to the detriment of the petitioners.
Fruit of the Loom Fruit for Eve To arrive at a proper resolution of this case, it is important to bear in mind
Shape of hang tag round with a base that plain rectangle without the following distinctions between infringement of trademark and unfair
looks like a paper rolled a any base competition.
few inches in both ends Infringement Unfair competition
Designs Trademark is written in Written in straight line in Definition unauthorized use of a passing off of one's goods as
almost semi-circle bigger letters than trademark those of another
petitioner's Fraudulent intent NOT necessary ESSENTIAL
Tag Has also clusters of Has only an apple in its Prior registration of A prerequisite to the action NOT necessary
grapes that surround the center trademark
apple in the center In the challenged decision, the respondent court held that there was no
Colors Light brown Pink with a white colored colorable imitation of the petitioners' trademark and logo by the private respondent;
center piece it held that In determining whether two trademarks are confusingly similar, the two
65
Apples Dark red Light red marks in their entirety as they appear in the respective labels must be considered in
The similarities of the competing trademarks in this case are completely relation to the goods to which they are attached; the discerning eye of the observer
lost in the substantial differences in the design and general appearance of their must focus not only on the predorninant words but also on the other features
respective hang tags. appearing on both labels.
We are impressed more by the dissimilarities than by the similarities Del Monte Sunshine
appearing therein. WE hold that the trademarks FRUIT OF THE LOOM and FRUIT As to the shape of Semi-rectangular with a crown or Regular rectangle
FOR EVE do not resemble each other as to confuse or deceive an ordinary label or make tomato shape design on top of the
purchaser. rectangle
The ordinary purchaser must be thought of as having, and credited with, As to brand printed Tomato catsup mark Fruit catsup
at least a modicum of intelligence to be able to see the obvious differences between on label
the two trademarks in question. Furthermore, a person who buys petitioner's As to the words or Clearly indicated words packed by Sunshine fruit catsup
products and starts to have a liking for it, will not get confused and reach out for lettering on label or Sysu International, Inc., Q.C., is clearly indicated
private respondent's products when she goes to a garment store. mark Philippines "made in the
Philippines by
12) Del Monte Corporation v. CA, 181 SCRA 410, G.R. No. 78325 [25 January 1990] Sunshine Sauce
ISSUE: WON Sunshine is guilty of infringement (NO) and unfair competition (YES). Manufacturing
Del Monte Corporation is a foreign company organized under the laws of Industries" No. 1 Del
the US, not engaged in business in the Philippines. Both the Philippines and the Monte Avenue,
United States are signatories to the Convention of Paris. Malabon, Metro
Philpack is a domestic corporation. Manila.
Del Monte granted Philpack the right to manufacture, distribute and sell in As to color of logo Combination of yellow and dark White, light green and
the Philippines catsup, under the Del Monte trademark and logo. Del Monte red, with words "Del Monte light red, with words
authorized Philpack to register the Del Monte catsup bottle configuration, which was Quality" in white.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO H. TAN, 2018
 "Sunshine Brand" in
yellow.
As to shape of logo In the shape of a tomato. Entirely different in
shape
As to label below the Seal covering the cap down to the There is a label below
cap neck of the bottle, with picture of the cap which says
tomatoes with words "made from "Sunshine Brand”
real tomatoes."
As to the color of the Darker red Lighter than Del
products Monte
HELD: there was infringement or unfair competition.
Side-by-side comparison is NOT the final test of similarity. Such
comparison requires a careful scrutiny to determine in what points the labels of the
products differ, as was done by the trial judge.
The ordinary buyer does not usually make such scrutiny nor does he
usually have the time to do so. The average shopper is usually in a hurry and does
not inspect every product on the shelf as if he were browsing in a library. Where the
housewife has to return home as soon as possible to her baby or the working woman
has to make quick purchases during her off hours, she is apt to be confused by similar
labels even if they do have minute differences. The male shopper is worse as he
usually does not bother about such distinctions.
The question is NOT whether the two articles are distinguishable by their
label when set side by side but whether the general confusion made by the article
upon the eye of the casual purchaser who is unsuspicious and off his guard, is such
as to likely result in his confounding it with the original. As observed in several cases,
the general impression of the ordinary purchaser, buying under the normally
prevalent conditions in trade and giving the attention such purchasers usually give
in buying that class of goods is the touchstone.
In making purchases, the consumer must depend upon his recollection of
the appearance of the product which he intends to purchase. The buyer having in
mind the mark/label of the respondent must rely upon his memory of the
petitioner's mark. Unlike the judge who has ample time to minutely examine the
labels in question in the comfort of his sala, the ordinary shopper does not enjoy the
same opportunity.
The court therefore should be guided by its first impression, for a buyer
acts quickly and is governed by a casual glance, the value of which may be dissipated
as soon as the court assumes to analyze carefully the respective features of the mark.
It is the function of the court in cases of infringement and unfair competition to take
their carelessness for granted, and to be ever conscious of the fact that marks need
not be identical. A confusing similarity will justify the intervention of equity. The
judge must also be aware of the fact that usually a defendant in cases of
infringement does not normally copy but makes only colorable changes. Well has it
been said that the most successful form of copying is to employ enough points of
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
similarity to confuse the public with enough points of difference to confuse the
courts.
Several factors would affect its conclusion, to wit:
1) age, training and education of the usual purchaser,
2) the nature and cost of the article, whether the article is bought for immediate
consumption and also the conditions under which it is usually purchased .
Among these, what essentially determines the attitude of the purchaser,
specifically his inclination to be cautious, is the cost of the goods. As a general rule,
an ordinary buyer does not exercise as much prudence in buying an article for which
he pays a few centavos as he does in purchasing a more valuable thing. Expensive
and valuable items are normally bought only after deliberate, comparative and
analytical investigation. But mass products, low priced articles in wide use, and
matters of everyday purchase requiring frequent replacement are bought by the
casual consumer without great care. In this latter category is catsup.
Even if the labels were analyzed together it is not difficult to see that the
Sunshine label IS A COLORABLE IMITATION of the Del Monte trademark.
o The predominant colors used in the Del Monte label are green and red-
orange, the same with Sunshine.
o The word "catsup" in both bottles is printed in white and the style of the
print/letter is the same.
o Although the logo of Sunshine is not a tomato, the figure nevertheless
approximates that of a tomato.
When a manufacturer prepares to package his product, he has before him
a boundless choice of words, phrases, colors and symbols sufficient to distinguish his 66
product from the others.
When as in this case, Sunshine chose, without a reasonable explanation,
to use the same colors and letters as those used by Del Monte though the field of
its selection was so broad, the inevitable conclusion is that it was done deliberately
to deceive; in cases of grave doubt is the rule that as between a newcomer who by
the confusion has nothing to lose and everything to gain and one who by honest
dealing has already achieved favor with the public, any doubt should be resolved
against the newcomer inasmuch as the field from which he can select a desirable
trademark to indicate the origin of his product is obviously a large one.
BUT Sunshine is not guilty of infringement for having used the Del Monte
bottle.
1) The reason is that the configuration of the said bottle was
merely registered in the Supplemental Register.
Registration in the Principal Register Registration in Supplemental Register
Gives rise to a presumption of the validity of Does not give rise to the same presumption.
the registration, the registrant's ownership
of the mark and his right to the exclusive use
thereof.
LIMITED to the actual owner of the
trademark and proceedings therein on the
issue of ownership which may be contested
through opposition or interference
H. TAN, 2018
proceedings or, after registration, in a
petition for cancellation.
In applications for registration in the This is not so in applications for registrations
Principal Register, publication of the in the Supplemental Register.
application is necessary.
Registration in the Principal Register is Registration in the Supplemental Register is
constructive notice of the registrant's claim merely proof of actual use of the trademark
of ownership. and notice that the registrant has used or
appropriated it. It is not subject to
opposition although it may be cancelled
after the issuance.
Registration in the Principal Register is a Registration in the Supplemental Register is
basis for an action for infringement. NOT a basis for an action for infringement.
It can be inferred from the foregoing that although Del Monte has actual
use of the bottle's configuration, the petitioners cannot claim exclusive use thereof
because it has not been registered in the Principal Register.
However, we find that Sunshine, despite the many choices available to it
and notwithstanding that the caution "Del Monte Corporation, Not to be Refilled"
was embossed on the bottle, still opted to use the petitioners' bottle to market a
product which Philpack also produces. This clearly shows the private respondent's
bad faith and its intention to capitalize on the latter's reputation and goodwill and
pass off its own product as that of Del Monte.
Regarding the fact of registration, it is to be noted that the Sunshine label
was registered not in the Principal Register but only in the Supplemental Register
where the presumption of the validity of the trademark, the registrant's ownership
of the mark and his right to its exclusive use are all absent.
Anent the assumption that the Bureau of Patent had considered other
existing patents, it is reiterated that since registration was only in the Supplemental
Register, this did not vest the registrant with the exclusive right to use the label nor
did it give rise to the presumption of the validity of the registration.
As Sunshine's label is an infringement of the Del Monte's trademark, law
and equity call for the CANCELLATION of the private respondent's registration and
WITHDRAWAL of all its products bearing the questioned label from the market. With
regard to the use of Del Monte's bottle, the same constitutes unfair competition;
hence, the respondent should be permanently enjoined from the use of such bottles.
Good faith is not a defense in unfair competition. If that is put forward in a question,
qualify that. That’s been a radical concept different from jurisprudence. Basis is the
Administrative Order. Ask sir for this.
13) Asia Brewery v. CA, 224 SCRA 437 – same
14) Conrad v. CA, 246 SCRA 691, G.R. No. 115115 [18 July 1995]
ISSUE: WON the trial court can proceed with the case for "injunction with
damages" filed by private respondents notwithstanding the pendency of an
administrative case for the cancellation of the former's trademark filed by
supposedly "petitioner's principal" (YES)
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
FITRITE and VICTORIA BISCUIT are engaged in the business of
manufacturing, selling and distributing biscuits and cookies bearing the trademark
"SUNSHINE" in the Philippines. CONRAD is also engaged in the business of importing,
selling and distributing biscuits and cookies in the Philippines.
FITRITE filed applications for registration of the trademark "SUNSHINE,"
both in the Supplemental and Principal Registers, to be used on biscuits and cookies.
Since 1981 FITRITE had exclusively used this trademark in the concept of owner on
its biscuits and cookies. FITRITE's application for this trademark in the Supplemental
Register and in the Principal Registration was approved for a term of 20 years.
FITRITE authorized VICTORIA BISCUIT to use this trademark on its biscuits and
cookies, as well as to manufacture, promote, sell and distribute products bearing
said trademark.
FITRITE assigned its trademark "SUNSHINE AND DEVICE LABEL," together
with its interest and business goodwill to said VICTORIA BISCUIT. From the time
FITRITE was issued the Certificate of Registration for this trademark up to the filing
of the complaint, FITRITE and VICTORIA BISCUIT have been manufacturing, selling
and distributing on a massive scale biscuits and cookies bearing this trademark; so
that through the years of extensive marketing of plaintiffs' biscuits and cookies with
this trademark, their products have become popularly known and enjoyed wide
acceptability in Metro Manila and in the provinces.
Then plaintiffs discovered that CONRAD had been importing, selling and
distributing biscuits and cookies, and other food items bearing this trademark in the
Philippines. Although CONRAD had never before been engaged in the importation,
sale and distribution of products similar to those of plaintiffs, CONRAD was suddenly 67
designated exclusive importer and dealer of the products of "Sunshine Biscuits, Inc."
for sale in the Philippine market; and CONRAD made its first importation.
Those acts of CONRAD, done without plaintiffs' consent, were deliberately
calculated to mislead and deceive the purchasers by making them believe that its
(CONRAD'S) "Sunshine" products had originated from plaintiffs and thereby inducing
them to patronize those products, all to the damage and prejudice of both the
purchasing public and plaintiffs.
Plaintiffs demanded Conrad to cease and desist from continuing with those
acts, but the demand was ignored. Being acts of infringement and unfair competition
in violation of plaintiffs' rights, plaintiffs can validly avail themselves of the remedies
against infringement, as well as of the remedies against unfair competition.
In seeking the dismissal of the complaint, CONRAD invoked litis pendentia,
the doctrine of primary jurisdiction and failure to state a cause of action.
Petitioner contends that the "Petitions for Cancellation" of Fitrite's
Certificate of Registration in the Supplemental Register and the Principal Register,
which Sunshine Biscuits filed with BPTTT cast a cloud of doubt on private
respondents' claim of ownership and exclusive right to the use of the trademark
"Sunshine." Considering that this matter is at issue before the BPTTT, which has
primary jurisdiction over the case, petitioner argues, an injunctive relief from any
court would be precipitate and improper.
HELD:
H. TAN, 2018
 While an application for the administrative cancellation of a registered
trademark falls under the exclusive cognizance of BPTTT, an action, however, for
infringement or unfair competition, as well as the remedy of injunction and relief for
damages, is explicitly and unquestionably within the competence and jurisdiction of
ordinary courts.
Private respondents are the holder of Certificate of Registration in the
Principal Register for the questioned trademark. Registration in the Principal Register
gives rise to a presumption of validity of the registration and of the registrant's
ownership and right to the exclusive use of the mark. It is precisely such a registration
that can serve as the basis for an action for infringement. An invasion of this right
entitles the registrant to court protection and relief.
Surely, an application with BPTTT for an administrative cancellation of a
registered trade mark cannot per se have the effect of restraining or preventing
the courts from the exercise of their lawfully conferred jurisdiction. A contrary rule
would unduly expand the doctrine of primary jurisdiction which, simply expressed,
would merely behoove regular courts, in controversies involving specialized
disputes, to defer to the findings of resolutions of administrative tribunals on certain
technical matters. This rule, evidently, did not escape the appellate court for it
likewise decreed that for "good cause shown, the lower court, in its sound discretion,
may suspend the action pending outcome of the cancellation proceedings" before
BPTTT.
Thus, having the exclusive right over said trademark, FITRITE should be
protected in the use thereof; and considering that it is apparent that the invasion of
the right FITRITE sought to protect is material and substantial; that such right of
FITRITE is clear and unmistakable; and that there is an urgent necessity to prevent
serious damage to FITRITE's business interest, goodwill and profit, thus under the
authority of Sec. 23 of said Republic Act No. 166, as amended, a preliminary
injunction may be issued in favor of FITRITE to maintain the status quo pending trial
of the action a quo on the merits without prejudice to the suspension of such action if
the aforesaid cancellation proceeding before the BPTTT has not been concluded.
The appellate court's finding that there is an urgent necessity for the
issuance of the writ of preliminary injunction pending resolution by BPTTT of the
petition for cancellation filed by Sunshine USA in Inter Partes Case No. 3397 would
indeed appear to have merit.
The allegations of the complaint, perforced hypothetically deemed
admitted by petitioner, would here justify the issuance by appellate court of its
injunction order. Petitioner, itself, does not even appear to be a party in the
administrative case. The averment that Sunshine USA is petitioner's principal, and
that it has a prior foreign registration that should be respected conformably with the
Convention of the Union of Paris for the Protection of Industrial Property are mere
asseverations in the motion to dismiss which, along with some other factual
assertions, are yet to be established.
15) Emerald Garment Manufacturing v. CA, 251 SCRA 600 – same
16) Amigo v. Cluett Peabody, 354 SCRA 434 (2001), G.R. No. 139300 [14 March 2001]
ISSUE: WON there’s confusing similarity? (NO)
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Cluett Peabody (a New York corporation) filed the present case against Amigo
Manufacturing Inc. (a Philippine corporation) for cancellation of trademark is Cluett’s
claim of exclusive ownership (as successor in interest of Great American Knitting Mills,
Inc.) of the following trademark and devices, as used on men's socks:
a) GOLD TOE
b) DEVICE, representation of a sock and magnifying glass on the toe of a sock,
c) DEVICE, consisting of a 'plurality of gold colored lines arranged in parallel relation
within a triangular area of toe of the stocking and spread from each other by lines of
contrasting color of the major part of the stocking'
d) LINENIZED.
On the other hand, Amigo’s trademark and device 'GOLD TOP, Linenized for Extra
Wear' has the dominant color 'white' at the center and a 'blackish brown' background
with a magnified design of the sock's garter, and is labeled 'Amigo Manufacturing Inc.,
Mandaluyong, Metro Manila, Made in the Philippines'.
CA held that there is hardly any variance in the appearance of the marks 'GOLD TOP'
and 'GOLD TOE' since both show a representation of a man's foot wearing a sock, and the
marks are printed in identical lettering. Amigo’s mark is a combination of the different
registered marks owned by Cluett.
As held in Del Monte Corporation v. Court of Appeals, the question is not whether
the two articles are distinguishable by their label when set aside but whether the general
confusion made by the article upon the eye of the casual purchaser who is unsuspicious
and off his guard, is such as to likely result in confounding it with the original. 'The most
successful form of copying is to employ enough points of similarity to confuse the public
with enough points of difference to confuse the courts.' 68
Finally, the Philippines and the United States are parties to the Paris Convention. By
virtue of the Philippines' membership to the Paris Union, trademark rights in favor of the
Cluett were created. The object of the Convention is to accord a national of a member
nation extensive protection against infringement and other types of unfair competition.
Amigo claims that it started the actual use of the trademark "Gold Top and Device"
in 1956, while respondent began using the trademark "Gold Toe" only in 1962. It contends
that the claim of respondent that it had been using the "Gold Toe" trademark at an earlier
date was not substantiated. The latter's witnesses supposedly contradicted themselves
as to the date of first actual use of their trademark, coming up with different dates such
as 1952, 1947 and 1938.
Petitioner points out that the director of patents erred in its application of the idem
sonans rule, claiming that the two trademarks "Gold Toe" and "Gold Top" do not sound
alike and are pronounced differently. It avers that since the words gold and toe are
generic, respondent has no right to their exclusive use.
HELD:
ased on the evidence presented, this Court concurs in the findings of the Bureau of
Patents that respondent had actually used the trademark and the devices in question
prior to petitioner's use of its own. During the hearing at the Bureau of Patents,
respondent presented Bureau registrations indicating the dates of first use in the
Philippines of the trademark and the devices.
The registration of the above marks in favor of respondent constitutes prima facie
evidence, which petitioner failed to overturn satisfactorily, of respondent's ownership of
H. TAN, 2018
 those marks, the dates of appropriation and the validity of other pertinent facts stated
therein.
Moreover, the validity of the Certificates of Registration was not questioned. Neither
did petitioner present any evidence to indicate that they were fraudulently issued.
Consequently, the claimed dates of respondent's first use of the marks are presumed
valid. Clearly, they were ahead of petitioner's claimed date of first use of "Gold Top and
Device" in 1958.
The fact that the marks were indeed registered by respondent shows that it did use
them on the date indicated in the Certificate of Registration.’
On the other hand, petitioner failed to present proof of the date of alleged first use
of the trademark "Gold Top and Device". Thus, even assuming that respondent started
using it only on May 15, 1962, we can make no finding that petitioner had started using it
ahead of respondent.
Furthermore, petitioner registered its trademark only with the supplemental
register. Registration with the supplemental register gives no presumption of ownership
of the trademark. Said the Court:
"The registration of a mark upon the supplemental register is not, as in the case of
the principal register, prima facie evidence of (1) the validity of registration; (2)
registrant's ownership of the mark; and (3) registrant's exclusive right to use the mark. It
is not subject to opposition, although it may be cancelled after its issuance. Neither may
it be the subject of interference proceedings. Registration [i]n the supplemental register
is not constructive notice of registrant's claim of ownership. A supplemental register is
provided for the registration because of some defects (conversely, defects which make a
mark unregistrable on the principal register, yet do not bar them from the supplemental
register.)
As to the actual date of first use by respondent of the four marks it registered, the
seeming confusion may have stemmed from the fact that the marks have different dates
of first use. Clearly, however, these dates are indicated in the Certificates of Registration.
In any case, absent any clear showing to the contrary, this Court accepts the finding
of the Bureau of Patents that it was respondent which had prior use of its trademark, as
shown in the various Certificates of Registration issued in its favor. Verily, administrative
agencies' findings of fact in matters falling under their jurisdiction are generally accorded
great respect, if not finality.
Admittedly, the pronunciations of the two do not, by themselves, create confusion.
The Bureau of Patents, however, did not rely on the idem sonans test alone in arriving at
its conclusion. The difference in sound occurs only in the final letter at the end of the
marks. For the same reason, hardly is there any variance in their appearance. 'GOLD TOE'
and 'GOLD TOP' are printed in identical lettering. Both show [a] representation of a man's
foot wearing a sock. 'GOLD TOP' blatantly incorporates petitioner's 'LINENIZED' which by
itself is a registered mark.
The Bureau considered the drawings and the labels, the appearance of the labels,
the lettering, and the representation of a man's foot wearing a sock. Obviously, its
conclusion is based on the totality of the similarities between the parties' trademarks and
not on their sounds alone. HOLISTIC TEST
In the present case, a resort to either the Dominancy Test or the Holistic Test shows
that colorable imitation exists between respondent's "Gold Toe" and petitioner's "Gold
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Top." A glance at petitioner's mark shows that it definitely has a lot of similarities and in
fact looks like a combination of the trademark and devices that respondent has already
registered; namely, "Gold Toe," the representation of a sock with a magnifying glass, the
"Gold Toe" representation and "linenized."
Admittedly, there are some minor differences between the two sets of marks. The
similarities, however, are of such degree, number and quality that the overall impression
given is that the two brands of socks are deceptively the same, or at least very similar to
each another.
An examination of the products in question shows that their dominant features
are gold checkered lines against a predominantly black background and a
representation of a sock with a magnifying glass. In addition, both products use the
same type of lettering. Both also include a representation of a man's foot wearing a
sock and the word "linenized" with arrows printed on the label. Lastly, the names of
the brands are similar -- "Gold Top" and "Gold Toe." Moreover, it must also be
considered that petitioner and respondent are engaged in the same line of business.
Petitioner cannot therefore ignore the fact that, when compared, most of the
features of its trademark are strikingly similar to those of respondent. In addition, these
representations are at the same location, either in the sock itself or on the label.
Petitioner presents no explanation why it chose those representations, considering that
these were the exact symbols used in respondent's marks. Thus, the overall impression
created is that the two products are deceptively and confusingly similar to each other.
Clearly, petitioner violated the applicable trademark provisions during that time.
Let it be remembered that duly registered trademarks are protected by law as
intellectual properties and cannot be appropriated by others without violating the due 69
process clause. An infringement of intellectual rights is no less vicious and condemnable
as theft of material property, whether personal or real.
17) Societe Des Produits Nestle v. CA, 356 SCRA 207 (2001) – same
18) Mighty Corporation v. E. & J. Gallo Winery, G.R. No. 154342 [14 July 2004]
19) McDonald’s Corp. v. L.C. Big Mak, G.R. No. 143993 [18 August 2004]
ISSUE: WON "Big Mak" is liable for trademark infringement and unfair competition. (YES
to both)
McDonald's owns a family of marks including the "Big Mac" mark for its
"double-decker hamburger sandwich." McDonald's registered this trademark with the
United States Trademark Registry. Based on this Home Registration, McDonald's applied
for the registration of the same mark in the Principal Register. Pending approval of its
application, McDonald's introduced its "Big Mac" hamburger sandwiches in the Philippine
market. PBPTT allowed registration of the "Big Mac" mark in the Principal Register based
on its Home Registration in the United States.Like its other marks, McDonald's displays
the "Big Mac" mark in items and paraphernalia in its restaurants, and in its outdoor and
indoor signages. McDonald's spent P10.5 million in advertisement for "Big Mac"
hamburger sandwiches alone.
L.C. Big Mak Burger operates fast-food outlets and snack vans in Metro Manila
and nearby provinces. Its menu includes hamburger sandwiches and other food items. It
applied for the registration of the "Big Mak" mark for its hamburger sandwiches.
H. TAN, 2018
 McDonald's opposed respondent corporation's application on the ground that
"Big Mak" was a colorable imitation of its registered "Big Mac" mark for the same food
products. McDonald's also informed respondent corporation of its exclusive right to the
"Big Mac" mark and requested him to desist from using the "Big Mac" mark or any similar
mark.
Having received no reply, petitioners sued respondents for trademark
infringement and unfair competition. RTC issued a TRO against respondents enjoining
them from using the "Big Mak" mark in the operation of their business. RTC issued a writ
of preliminary injunction replacing the TRO.
In their Answer, respondents admitted that they have been using the name "Big
Mak Burger" for their fast-food business. Respondents claimed, however, that
McDonald's does not have an exclusive right to the "Big Mac" mark or to any other
similar mark.
Respondents point out that the Isaiyas Group registered the same mark for
hamburger sandwiches with the PBPTT. Topacio similarly registered the same mark prior
to McDonald's registration. Alternatively, "Big Mak" does not constitute a colorable
imitation of the "Big Mac" mark. Respondents asserted that they did not fraudulently pass
off their hamburger sandwiches as those of petitioners' Big Mac hamburgers.
Respondents sought damages in their counterclaim.
In their Reply, petitioners denied respondents' claim that McDonald's is not the
exclusive owner of the "Big Mac" mark. Petitioners asserted that while the Isaiyas Group
and Topacio did register the "Big Mac" mark ahead of McDonald's, the Isaiyas Group did
so only in the Supplemental Register of the PBPTT and such registration does not
provide any protection. McDonald's disclosed that it had acquired Topacio's rights to his
registration in a Deed of Assignment.
Respondents contend that of the two words in the "Big Mac" mark, it is only the
word "Mac" that is valid because the word "Big" is generic and descriptive and thus
"incapable of exclusive appropriation."
HELD:
To establish trademark infringement, the following elements must be shown:
(1) the validity of plaintiff's mark;
(2) the plaintiff's ownership of the mark; and
(3) the use of the mark or its colorable imitation by the alleged infringer results in
"likelihood of confusion."
Of these, it is the element of likelihood of confusion that is the gravamen of
trademark infringement.
A mark is valid if it is "distinctive" and thus not barred from
registration. However, once registered, not only the mark's validity but also the
registrant's ownership of the mark is prima facie presumed.
The "Big Mac" mark, which should be treated in its entirety and not dissected
word for word, is neither generic nor descriptive. Generic marks are commonly used as
the name or description of a kind of goods, such as "Lite" for beer or "Chocolate Fudge"
for chocolate soda drink. Descriptive marks, on the other hand, convey the
characteristics, functions, 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.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
On the contrary, "Big Mac" falls under the class of fanciful or arbitrary marks as
it bears no logical relation to the actual characteristics of the product it represents. As
such, it is highly distinctive and thus valid. Petitioners have duly established McDonald's
exclusive ownership of the "Big Mac" mark.
Although Topacio and the Isaiyas Group registered the "Big Mac" mark ahead
of McDonald's, Topacio, as petitioners disclosed, had already assigned his rights to
McDonald's. The Isaiyas Group, on the other hand, registered its trademark only in the
Supplemental Register. A mark which is not registered in the Principal Register, and thus
not distinctive, has no real protection; registration in the Supplemental Register is not
even a prima facie evidence of the validity of the registrant's exclusive right to use the
mark on the goods specified in the certificate.
Section 22 covers two types of confusion arising from the use of similar or
colorable imitation marks, namely, confusion of goods (product confusion) and confusion
of business (source or origin confusion).
(i) The first is the confusion of goods "in which event the ordinarily prudent
purchaser would be induced to purchase one product in the belief that he was
purchasing the other."
(ii) The other is the confusion of business: "Here though the goods of the parties
are different, the defendant's product is such as might 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 between the plaintiff
and defendant which, in fact, does not exist."
Under Act No. 666, the first trademark law, infringement was limited to confusion of
goods only, when the infringing mark is used on "goods of a similar kind." Thus, no relief 70
was afforded to the party whose registered mark or its colorable imitation is used on
different although related goods. To remedy this situation, Congress enacted RA 166 on
20 June 1947. In defining trademark infringement, Section 22 of RA 166 deleted the
requirement in question and expanded its scope to include such use of the mark or its
colorable imitation that is likely to result in confusion on "the source or origin of such
goods or services, or identity of such business." Thus, while there is confusion of goods
when the products are competing, confusion of business exists when the products are
non-competing but related enough to produce confusion of affiliation.
Respondents assert that their "Big Mak" hamburgers cater mainly to the low-income
group while petitioners' "Big Mac" hamburgers cater to the middle and upper income
groups. Even if this is true, the likelihood of confusion of business remains, since the low-
income group might be led to believe that the "Big Mak" hamburgers are the low-end
hamburgers marketed by petitioners. After all, petitioners have the exclusive right to use
the "Big Mac" mark. On the other hand, respondents would benefit by associating their
low-end hamburgers, through the use of the "Big Mak" mark, with petitioners' high-end
"Big Mac" hamburgers, leading to likelihood of confusion in the identity of business.
Respondents further claim that petitioners use the "Big Mac" mark only on
petitioners' double-decker hamburgers, while respondents use the "Big Mak" mark on
hamburgers and other products like siopao, noodles and pizza. Respondents also point
out that petitioners sell their Big Mac double-deckers in a styrofoam box with the
"McDonald's" logo and trademark in red, block letters at a price more expensive than the
hamburgers of respondents. In contrast, respondents sell their Big Mak hamburgers in
H. TAN, 2018
 plastic wrappers and plastic bags. Respondents further point out that petitioners'
restaurants are air-conditioned buildings with drive-thru service, compared to
respondents' mobile vans.
These and other factors respondents cite cannot negate the undisputed fact that
respondents use their "Big Mak" mark on hamburgers, the same food product that
petitioners' sell with the use of their registered mark "Big Mac." Whether a hamburger is
single, double or triple-decker, and whether wrapped in plastic or styrofoam, it remains
the same hamburger food product. Even respondents' use of the "Big Mak" mark on non-
hamburger food products cannot excuse their infringement of petitioners' registered
mark, otherwise registered marks will lose their protection under the law.
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 depending on variations
of the products for specific segments of the market. The Court has recognized that the
registered trademark owner enjoys protection in product and market areas that are
the normal potential expansion of his business. Thus, the Court has declared:
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).
This Court has relied on the dominancy test rather than the holistic test. The
dominancy test considers the dominant features in the competing marks
in determining whether they are confusingly similar. Under the dominancy test, courts
give greater weight to the similarity of the appearance of the product arising
from theadoption of the dominant features of the registered mark,
disregarding minor differences. Courts will consider more the aural and visual impressions
created by the marks in the public mind, giving little weight to factors like prices, quality,
sales outlets and market segments.
The test of dominancy is now explicitly incorporated into law in Section 155.1 of the
Intellectual Property Code which defines infringement as the "colorable imitation of a
registered mark xxx or a dominant feature thereof."
Applying the dominancy test, the Court finds that respondents' use of the "Big Mak"
mark results in likelihood of confusion.
(i) Big Mak sounds exactly the same as "Big Mac."
(ii) The first word in "Big Mak" is exactly the same as the first word in "Big Mac."
(iii) The first two letters in "Mak" are the same as the first two letters in "Mac."
(iv) The last letter in "Mak" while a "k" sounds the same as "c" when the word
"Mak" is pronounced.
(v) In Filipino, the letter "k" replaces "c" in spelling.
In short, aurally the two marks are the same, with the first word of both marks
phonetically the same, and the second word of both marks also phonetically the same.
Visually, the two marks have both two words and six letters, with the first word
of both marks having the same letters and the second word having the same first two
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
letters. In spelling, considering the Filipino language, even the last letters of both marks
are the same.
Clearly, respondents have adopted in "Big Mak" not only the dominant but also
almost all the features of "Big Mac." Applied to the same food product of hamburgers,
the two marks will likely result in confusion in the public mind.
Indeed, a person cannot distinguish "Big Mac" from "Big Mak" by their sound. When
one hears a "Big Mac" or "Big Mak" hamburger advertisement over the radio, one would
not know whether the "Mac" or "Mak" ends with a "c" or a "k."
Petitioners' aggressive promotion of the "Big Mac" mark, as borne by their
advertisement expenses, has built goodwill and reputation for such mark making it one of
the easily recognizable marks in the market today. This increases the likelihood that
consumers will mistakenly associate petitioners' hamburgers and business with those of
respondents'.
Respondents' inability to explain sufficiently how and why they came to choose "Big
Mak" for their hamburger sandwiches indicates their intent to imitate petitioners' "Big
Mac" mark. Contrary to the Court of Appeals' finding, respondents' claim that their "Big
Mak" mark was inspired by the first names of respondent Dy's mother (Maxima) and
father (Kimsoy) is not credible. Absent proof that respondents' adoption of the "Big Mak"
mark was due to honest mistake or was fortuitous, the inescapable conclusion is that
respondents adopted the "Big Mak" mark to "ride on the coattails" of the more
established "Big Mac" mark. This saves respondents much of the expense in advertising
to create market recognition of their mark and hamburgers.
Thus, we hold that confusion is likely to result in the public mind. We sustain
petitioners' claim of trademark infringement. 71
The essential elements of an action for unfair competition are
(1) confusing similarity in the general appearance of the goods, and
(2) intent to deceive the public and defraud a competitor.
The confusing similarity may or may not result from similarity in the marks, but may
result from other external factors in the packaging or presentation of the goods. The
intent to deceive and defraud may be inferred from the similarity of the appearance of
the goods as offered for sale to the public. Actual fraudulent intent need not be shown.
Unfair competition is broader than trademark infringement and includes passing off
goods with or without trademark infringement. Trademark infringement is a form of
unfair competition. (not accurate)
Trademark infringement constitutes unfair competition when there is not merely
likelihood of confusion, but also actual or probable deception on the public because of
the general appearance of the goods.
There can be trademark infringement without unfair competition as when the
infringer discloses on the labels containing the mark that he manufactures the goods, thus
preventing the public from being deceived that the goods originate from the trademark
owner.
To support their claim of unfair competition, petitioners allege that respondents
fraudulently passed off their hamburgers as "Big Mac" hamburgers. Petitioners add that
respondents' fraudulent intent can be inferred from the similarity of the marks in
question.
H. TAN, 2018
 Passing off (or palming off) takes place where the defendant, by imitative devices on
the general appearance of the goods, misleads prospective purchasers into buying his
merchandise under the impression that they are buying that of his competitors. Thus, the
defendant gives his goods the general appearance of the goods of his competitor with the
intention of deceiving the public that the goods are those of his competitor.
Respondents point to these dissimilarities as proof that they did not give their
hamburgers the general appearance of petitioners' "Big Mac" hamburgers.
The dissimilarities in the packaging are minor compared to the stark similarities in
the words that give respondents' "Big Mak" hamburgers the general appearance of
petitioners' "Big Mac" hamburgers. Section 29(a) expressly provides that the similarity in
the general appearance of the goods may be in the "devices or words" used on the
wrappings. Respondents have applied on their plastic wrappers and bags almost the same
words that petitioners use on their styrofoam box. What attracts the attention of the
buying public are the words "Big Mak" which are almost the same, aurally and visually, as
the words "Big Mac." The dissimilarities in the material and other devices are insignificant
compared to the glaring similarity in the words used in the wrappings.
Section 29(a) also provides that the defendant gives "his goods the general
appearance of goods of another manufacturer." Respondents' goods are hamburgers
which are also the goods of petitioners. If respondents sold egg sandwiches only instead
of hamburger sandwiches, their use of the "Big Mak" mark would not give their goods the
general appearance of petitioners' "Big Mac" hamburgers. In such case, there is only
trademark infringement but no unfair competition. However, since respondents chose to
apply the "Big Mak" mark on hamburgers, just like petitioner's use of the "Big Mac" mark
on hamburgers, respondents have obviously clothed their goods with the general
appearance of petitioners' goods.
Moreover, there is no notice to the public that the "Big Mak" hamburgers are
products of "L.C. Big Mak Burger, Inc." Respondents introduced during the trial plastic
wrappers and bags with the words "L.C. Big Mak Burger, Inc." to inform the public of the
name of the seller of the hamburgers. However, petitioners introduced during the
injunctive hearings plastic wrappers and bags with the "Big Mak" mark without the name
"L.C. Big Mak Burger, Inc." Respondents' belated presentation of plastic wrappers and
bags bearing the name of "L.C. Big Mak Burger, Inc." as the seller of the hamburgers is an
after-thought designed to exculpate them from their unfair business conduct. As earlier
stated, we cannot consider respondents' evidence since petitioners' complaint was based
on facts existing before and during the injunctive hearings.
Thus, there is actually no notice to the public that the "Big Mak" hamburgers are
products of "L.C. Big Mak Burger, Inc." and not those of petitioners who have the exclusive
right to the "Big Mac" mark. This clearly shows respondents' intent to deceive the public.
Had respondents' placed a notice on their plastic wrappers and bags that the hamburgers
are sold by "L.C. Big Mak Burger, Inc.", then they could validly claim that they did not
intend to deceive the public. In such case, there is only trademark infringement but no
unfair competition. Respondents, however, did not give such notice. We hold that as
found by the RTC, respondent corporation is liable for unfair competition.
20) McDonald’s Corp. v. Macjoy Fastfood Corp., G.R. No. 166115, 2 February 2007
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
ISSUE: WON whether there is a confusing similarity between the MCDONALD’S marks
of the petitioner and the respondent’s "MACJOY & DEVICE" trademark when applied to
Classes 29 and 30 of the International Classification of Goods, i.e., food and ingredients
of food. (YES)
MacJoy Fastfood Corporation, engaged in the sale of fast food products in Cebu City,
filed an application for the registration of the trademark "MACJOY & DEVICE" for fried
chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-
halo and steaks under classes 29 and 30 of the International Classification of Goods.
McDonald’s Corporation filed a verified Notice of Opposition against the
respondent’s application claiming that the trademark "MACJOY & DEVICE" so resembles
its corporate logo, otherwise known as the Golden Arches or "M" design, and its marks
"McDonalds," McChicken," "MacFries," "BigMac," "McDo," "McSpaghetti," "McSnack,"
and "Mc," (hereinafter collectively known as the MCDONALD’S marks) such that when
used on identical or related goods, the trademark applied for would confuse or deceive
purchasers into believing that the goods originate from the same source or origin.
Likewise, the petitioner alleged that the respondent’s use and adoption in bad
faith of the "MACJOY & DEVICE" mark would falsely tend to suggest a connection or
affiliation with petitioner’s restaurant services and food products, thus, constituting a
fraud upon the general public and further cause the dilution of the distinctiveness of
petitioner’s registered and internationally recognized MCDONALD’S marks to its
prejudice and irreparable damage.
Respondent averred that it has used the mark "MACJOY" for the past many
years in good faith and has spent considerable sums of money for said mark’s extensive
promotion in tri-media, especially in Cebu City where it has been doing business long 72
before the petitioner opened its outlet thereat sometime in 1992; and that its use of said
mark would not confuse affiliation with the petitioner’s restaurant services and food
products because of the differences in the design and detail of the two (2) marks.
IPO used the dominancy test in concluding that there was confusing similarity
between the two (2) trademarks in question as it took note of the appearance of the
predominant features "M", "Mc" and/or "Mac" in both the marks. In reversing the
conclusion reached by the IPO, the CA, while seemingly applying the dominancy test, in
fact actually applied the holistic test. The appellate court ruled in this wise:
HELD: (Dominancy test)
Applying the Dominancy test to the present case, the IPO should have taken
into consideration the entirety of the two marks instead of simply fixing its gaze on the
single letter "M" or on the combinations "Mc" or "Mac". A mere cursory look of the
subject marks will reveal that, save for the letters "M" and "c", no other similarity exists
in the subject marks.
We agree with the [respondent] that it is entirely unwarranted for the IPO to
consider the prefix "Mac" as the predominant feature and the rest of the designs in
[respondent’s] mark as details. Taking into account such paramount factors as color,
designs, spelling, sound, concept, sizes and audio and visual effects, the prefix "Mc" will
appear to be the only similarity in the two completely different marks; and it is the prefix
"Mc" that would thus appear as the miniscule detail. When pitted against each other, the
two marks reflect a distinct and disparate visual impression that negates any possible
confusing similarity in the mind of the buying public. (Words in brackets supplied.)
H. TAN, 2018
 While we agree with the CA’s detailed enumeration of differences between the
two (2) competing trademarks herein involved, we believe that the holistic test is not 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 and applied
the dominancy test in determining confusing similarity or likelihood of confusion between
competing trademarks.
HELD:
Applying the dominancy test to the instant case, the Court finds that herein
petitioner’s "MCDONALD’S" and respondent’s "MACJOY" marks are confusingly similar
with each other such that an ordinary purchaser can conclude an association or relation
between the marks. To begin with, both marks use the corporate "M" design logo and the
prefixes "Mc" and/or "Mac" as dominant features. The first letter "M" in both marks puts
emphasis on the prefixes "Mc" and/or "Mac" by the similar way in which they are
depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is the prefix "Mc,"
an abbreviation of "Mac," which visually and aurally catches the attention of the
consuming public. Verily, the word "MACJOY" attracts attention the same way as did
"McDonalds," "MacFries," "McSpaghetti," "McDo," "Big Mac" and the rest of the
MCDONALD’S marks which all use the prefixes Mc and/or Mac.
Besides and most importantly, both trademarks are used in the sale of fastfood
products.
Indisputably, the respondent’s trademark application for the "MACJOY &
DEVICE" trademark covers goods under Classes 29 and 30 of the International
Classification of Goods, namely, fried chicken, chicken barbeque, burgers, fries, spaghetti,
etc. Likewise, the petitioner’s trademark registration for the MCDONALD’S marks in the
Philippines covers goods which are similar if not identical to those covered by the
respondent’s application.
Thus, in the case at bar, the predominant features such as the "M," "Mc," and
"Mac" appearing in both McDonald’s marks and the MACJOY & DEVICE" easily attract the
attention of would-be customers. Even non-regular customers of their fastfood
restaurants would readily notice the predominance of the "M" design, "Mc/Mac"
prefixes shown in both marks. Such that the common awareness or perception of
customers that the trademarks McDonalds mark and MACJOY & DEVICE are one and
the same, or an affiliate, or under the sponsorship of the other is not far-fetched.
The differences and variations in styles as the device depicting a head of chicken
with cap and bowtie and wings sprouting on both sides of the chicken head, the heart-
shaped "M," and the stylistic letters in "MACJOY & DEVICE;" in contrast to the arch-like
"M" and the one-styled gothic letters in McDonald’s marks are of no moment. These
minuscule variations are overshadowed by the appearance of the predominant features
mentioned hereinabove.
Thus, with the predominance of the letter "M," and prefixes "Mac/Mc" found
in both marks, the inevitable conclusion is there is confusing similarity between the
trademarks Mc Donald’s marks and "MACJOY AND DEVICE" especially considering the fact
that both marks are being used on almost the same products falling under Classes 29 and
30 of the International Classification of Goods i.e. Food and ingredients of food.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
With the existence of confusing similarity between the subject trademarks, the
resulting issue to be resolved is who, as between the parties, has the rightful claim of
ownership over the said marks.
We rule for the petitioner.
Respondent’s contention that it was the first user of the mark in the Philippines
having used "MACJOY & DEVICE" on its restaurant business and food products since
December, 1987 at Cebu City while the first McDonald’s outlet of the petitioner thereat
was opened only in 1992, is downright unmeritorious. For the requirement of "actual use
in commerce x x x in the Philippines" before one may register a trademark, trade-name
and service mark under the Trademark Law33 pertains to the territorial jurisdiction of the
Philippines and is not only confined to a certain region, province, city or barangay.
Likewise wanting in merit is the respondent’s claim that the petitioner cannot
acquire ownership of the word "Mac" because it is a personal name which may not be
monopolized as a trademark as against others of the same name or surname. As stated
earlier, once a trademark has been registered, the validity of the mark is prima facie
presumed. In this case, the respondent failed to overcome such presumption. We agree
with the observations of the petitioner regarding the respondent’s explanation that the
word "MACJOY" is based on the name of its president’s niece, Scarlett Yu Carcell.
By reason of the respondent’s implausible and insufficient explanation as to
how and why out of the many choices of words it could have used for its trade-name
and/or trademark, it chose the word "MACJOY," the only logical conclusion deducible
therefrom is that the respondent would want to ride high on the established reputation
and goodwill of the MCDONALD’s marks, which, as applied to petitioner’s restaurant
business and food products, is undoubtedly beyond question. 73
Thus, the IPO was correct in rejecting and denying the respondent’s application
for registration of the trademark "MACJOY & DEVICE."
When one applies for the registration of a trademark or label which is almost
the same or 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 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.
Cases on bottles and containers:
21) Cagayan Valley Enterprises v. CA, 179 SCRA 218, G.R. No. 78413 [8 November 1989]
ISSUE: WON
La Tondeña registered the 350 c.c. white flint bottles it has been using for its gin
popularly known as "Ginebra San Miguel". LTI filed case for injunction and damages
against Cagayan Valley for using the 350 c.c., white flint bottles with the mark "La
Tondeña Inc." and "Ginebra San Miguel" stamped or blown-in therein by filling the same
with Cagayan's liquor product bearing the label "Sonny Boy" for commercial sale and
distribution, without LTI's written consent and in violation of Section 2 of Republic Act No.
623, and for the issuance of a writ of preliminary injunction.
The court a quo issued a temporary restraining order against Cagayan and its officers
and employees from using the 350 c.c. bottles with the marks "La Tondeña" and "Ginebra
San Miguel."
H. TAN, 2018
 Cagayan, in its answer, alleged the following defenses:
1. LTI has no cause of action due to its failure to comply with the giving of notice that
its aforesaid marks are registered by displaying and printing the words "Registered
in the Phil. Patent Office" or "Reg Phil. Pat. Off.," hence no suit, civil or criminal, can
be filed against Cagayan;
2. LTI is not entitled to any protection because its products, consisting of hard liquor,
are not among those contemplated therein.
3. No reservation of ownership on its bottles was made by LTI in its sales invoices nor
does it require any deposit for the retention of said bottles; and
4. There was no infringement of the goods or products of LTI since Cagayan uses its
own labels and trademark on its product.
HELD:
The pertinent provisions of Republic Act No. 623, as amended by Republic Act No.
5700, provides:
SECTION 1. Persons engaged or licensed to engage in the manufacture, bottling,
or selling of soda water, mineral or aerated waters, cider, milk, cream or other lawful
beverages in bottles, boxes, casks, kegs, or barrels and other similar containers, or
in the manufacturing, compressing or selling of gases such as oxygen, acytelene,
nitrogen, carbon dioxide ammonia, hydrogen, chloride, helium, sulphur, dioxide,
butane, propane, freon, melthyl chloride or similar gases contained in steel cylinders,
tanks, flasks, accumulators or similar containers, with the name or the names of their
principals or products, or other marks of ownership stamped or marked thereon,
may register with the Philippine Patent Office a description of the names or marks,
and the purpose for which the containers so marked and used by them, under the
same conditions, rules, and regulations, made applicable by law or regulation to the
issuance of trademarks.
SEC. 2. It shall be unlawful for any person, without the written consent of the
manufacturer, bottler, or seller, who has succesfully registered the marks of
ownership in accordance with the provisions of the next preceding section, to fill
such bottles, boxes, kegs, barrels, steel cylinders, tanks, flasks, accumulators or other
similar containers so marked or stamped, for the purpose of sale, or to sell, disposed
of, buy or traffic in, or wantonly destroy the same, whether filled or not, to use the
same, for drinking vessels or glasses or drain pipes, foundation pipes, for any other
purpose than that registered by the manufacturer, bottler or seller. Any violation of
this section shall be punished by a fine of not more than one thousand pesos or
imprisonment of not more than one year or both.
SEC. 3. The use by any person other than the registered manufacturer, bottler
or seller, without written permission of the latter of any such bottle, cask, barrel,
keg, box, steel cylinders, tanks, flask, accumulators, or other similar containers, or
the possession thereof without written permission of the manufacturer, by any junk
dealer or dealer in casks, barrels, kegs boxes, steel cylinders, tanks, flasks,
accumulators or other similar containers, the same being duly marked or stamped
and registered as herein provided, shall give rise to a prima facie presumption that
such use or possession is unlawful.
The above-quoted provisions grant protection to a qualified manufacturer who
successfully registered with the Philippine Patent Office its duly stamped or marked
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
bottles, boxes, casks and other similar containers. The mere use of registered bottles or
containers without the written consent of the manufacturer is prohibited, the only
exceptions being when they are used as containers for "sisi," bagoong," "patis" and
similar native products.
It is an admitted fact that herein petitioner Cagayan buys from junk dealers and
retailers bottles which bear the marks or names La Tondeña Inc." and "Ginebra San
Miguel" and uses them as containers for its own liquor products.
The contention of Cagayan that the aforementioned bottles without the words
"property of" indicated thereon are not the registered bottles of LTI, since they do not
conform with the statement or description in the supporting affidavits attached to the
original registration certificate and renewal, is untenable.
Republic Act No. 623 which governs the registration of marked bottles and
containers merely requires that the bottles, in order to be eligible for registration, must
be stamped or marked with the names of the manufacturers or the names of their
principals or products, or other marks of ownership. No drawings or labels are required
but, instead, two photographs of the container, duly signed by the applicant, showing
clearly and legibly the names and other marks of ownership sought to be registered and
a bottle showing the name or other mark or ownership, irremovably stamped or marked,
shall be submitted.
The term "Name or Other Mark of Ownership" means the name of the applicant or
the name of his principal, or of the product, or other mark of ownership. The second set
of bottles of LTI without the words "property of" substantially complied with the
requirements of Republic Act No. 623, as amended, since they bear the name of the
principal, La Tondeña Inc., and of its product, Ginebra San Miguel. The omitted words 74
"property of" are not of such vital indispensability such that the omission thereof will
remove the bottles from the protection of the law. The owner of a trade-mark or trade-
name, and in this case the marked containers, does not abandon it by making minor
modifications in the mark or name itself. 13 With much more reason will this be true where
what is involved is the mere omission of the words "property of" since even without said
words the ownership of the bottles is easily Identifiable. The words "La Tondeña Inc." and
"Ginebra San Miguel" stamped on the bottles, even without the words "property of," are
sufficient notice to the public that those bottles so marked are owned by LTI.
The claim of petitioner that hard liquor is not included under the term "other lawful
beverages" as provided in Section I of Republic Act No. 623, as amended by Republic Act
No. 5700, is without merit. he words "other lawful beverages" is used in its general sense,
referring to all beverages not prohibited by law. Beverage is defined as a liquor or liquid
for drinking. Hard liquor, although regulated, is not prohibited by law, hence it is within
the purview and coverage of Republic Act No. 623, as amended.
The failure to give notice of registration will not deprive the aggrieved party of a
cause of action against the infringer but, at the most, such failure may bar recovery of
damages but only under the provisions of Republic Act No. 166.
Section 3 of Republic Act No. 623 creates a prima facie presumption against Cagayan
for its unlawful use of the bottles registered in the name of LTI. Corollarily, the writ of
injunction directing petitioner to desist from using the subject bottles was properly issued
by the trial court. Hence, said writ could not be simply disregarded by Cagayan without
adducing proof sufficient to overcome the aforesaid presumption.
H. TAN, 2018
 Also, petitioner can be adjudged guilty of contempt and imposed a sanction in this
appeal since it is a cherished rule of procedure for this Court to always strive to settle the
entire controversy in a single proceeding, We so impose such penalty concordant with
the preservative principle and as demanded by the respect due the orders, writs and
processes of the courts of justice.
22) Distilleria Washington v. CA, 263 SCRA 303, G.R. No. 120961 [17 October 1996]
The initiatory suit was instituted for manual delivery with damages by La Tondeña,
against Distilleria Washington. LTDI, under a claim of ownership, sought to seize from
Distilleria Washington 18,157 empty "350 c.c. white flint bottles" bearing the blown-in
marks of "La Tondeña Inc." and "Ginebra San Miguel."
The court issued an order of replevin for the seizure of the empty gin bottles from
Washington. These bottles, it was averred, were being used by Washington for its own
"Gin Seven" products without the consent of LTDI.
LTDI asserted that, being the owner and registrant of the bottles, it was entitled to
the protection so extended by R.A. 623, notwithstanding its sale of the Ginebra San
Miguel gin product contained in said bottles.
Washington countered that R.A. No. 623, invoked by LTDI, should not apply to gin,
an alcoholic beverage which is unlike that of "soda water, mineral or aerated water,
ciders, milks, cream, or other lawful beverages" mentioned in the law, and that, in any
case, ownership of the bottles should, considering the attendant facts and circumstances,
be held lawfully transferred to the buyers upon the sale of the gin and containers at a
single price.
Washington is now before this Court assailing the reversal of the trial court's
decision. In its petition, Washington points out that —
(a) 4.00.a. Under the undisputed facts, petitioner is the lawful
owner of the personal properties (18,157 empty bottles) involved in
the petition. Respondent LTDI is precluded by law from claiming the
same;
(b) 4.00.b. The decision and resolution appealed from violate
equity and applicable canons in the interpretation and construction
of statutes; and
(c) 4.00.c. Liquor products are not covered by Republic Act. No.
623. The holding of the Court in Cagayan Valley Enterprises, Inc. vs.
Honorable Court of Appeals, 179 SCRA 218 [1989] should be reviewed
and reconsidered in light of the Constitution and House Bill No.
20585. 3
It is a fact that R.A. No. 623 extends trademark protection in the use of containers
duly registered with the Philippine Patent Office. The pertinent provisions of R.A. 623, as
amended, so reads:
Sec. 1. Persons engaged or licensed to engage in the manufacture, bottling, or
selling of soda water, mineral or aerated waters, cider, milk, cream or other lawful
beverages in bottles, boxes, casks, kegs, or barrels, and other similar containers, or
in the manufacture, compressing or selling of gases such as oxygen, acetylene,
nitrogen, carbon dioxide, ammonia, hydrogen, chloride, helium, sulphur dioxide,
butane, propane, freon, methyl chloride or similar gases contained in steel cylinders,
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
tanks, flasks, accumulators or similar containers, with their names or the names of
their principals or products, or other marks of ownership stamped or marked
thereon, may register with the Philippine Patent Office a description of the names
or marks, and the purpose for which the containers so marked are used by them,
under the same conditions, rules, and regulations, made applicable by law or
regulation to the issuance of trademarks.
Sec. 2. It shall be unlawful for any person, without the written consent of the
manufacturer, bottler, or seller, who has successfully registered the marks of
ownership in accordance with the provisions of the next preceding section, to fill
such bottles, boxes, kegs, barrels, steel cylinders, tanks, flasks, accumulators, or
other similar containers so marked or stamped, for the purpose of sale, or to sell,
dispose of, buy or traffic in, or wantonly destroy the same, whether filled or not to
use the same for drinking vessels or glasses or drain pipes, foundation pipes, for any
other purpose than that registered by the manufacturer, bottler or seller. Any
violation of this section shall be punished by a fine of not more than one thousand
pesos or imprisonment of not more than one year or both.
Sec. 3. The use by any person other than the registered manufacturer, bottler or
seller, without written permission of the latter of any such bottle, cask, barrel, keg,
box, steel cylinders, tanks, flask, accumulators, or other similar containers, or the
possession thereof without written permission of the manufacturer, by any junk
dealer or dealer in casks, barrels, kegs, boxes, steel cylinders, tanks, flasks,
accumulators or other similar containers, the same being duly marked or stamped
and registered as herein provided, shall give rise to a prima facie presumption that
such use or possession is unlawful. 4 75
HELD: Court sees no cogent reason for either departing from or changing the basic rule it
laid down in Cagayan Valley Enterprises, Inc., vs. Court of Appeals.
The Court has there held: The above-quoted provisions grant protection to a
qualified manufacturer who successfully registered with the Philippine Patent Office its
duly stamped or marked bottles, boxes, casks and other similar containers. The mere use
of registered bottles or containers without the written consent of the manufacturer is
prohibited, the only exceptions being when they are used as containers for "sisi,"
"bagoong," "patis" and similar native products.
It is an admitted fact that herein petitioner Cagayan buys form junk dealers and
retailers bottles which bear the marks or names "La Tondeña, Inc." and "Ginebra San
Miguel" and uses them as containers for its own liquor products. The contention of
Cagayan that the aforementioned bottles without the words "properly of" indicated
thereon are not the registered bottles of LTI, since they do not conform with the
statement or description in the supporting affidavits attached to the original registration
certificate and renewal, is untenable.
Republic Act No. 623 which governs the registration of marked bottles and
containers merely requires that the bottles, in order to be eligible for registration, must
be stamped or marked with the names of the manufacturers or the names of their
principals or products, or other marks of ownership. No drawings or labels are required
but, instead, two photographs of the container, duly signed by the applicant, showing
clearly and legibly the names and other marks of ownership sought to be registered and
H. TAN, 2018
 a bottle showing the name or other mark or ownership, irremovably stamped or marked,
shall be submitted.
The claim of petitioner that hard liquor is not included under the term "other lawful
beverages” is without merit. Beverage is defined as a liquor or liquid for drinking. Hard
liquor, although regulated, is not prohibited by law, hence it is within the purview and
coverage of Republic Act No. 623, as amended.
Given the nature of the action in Cagayan, as well as its factual milieu, the Court
indeed hardly has had a choice but to sustain the registrant's right to the injunctive writ
against the unauthorized use of its containers.
The case before us, however, goes beyond just seeking to have such use stopped but
it so takes on even the ownership issue as well. Parenthetically, petitioner is not here
being charged with a violation of Section 2 of R.A. No. 623 or of the Trademark Law. The
instant suit is one for replevin (manual delivery) where the claimant must be able to
show convincingly that he is either the owner or clearly entitled to the possession of
the object sought to be recovered. Replevin is a possessory action the gist of which
focuses on the right of possession that, in turn, is dependent on a legal basis that, not
infrequently, looks to the ownership of the object sought to be replevied.
It is to be pointed out that a trademark refers to a word, name, symbol, emblem,
sign or device or any combination thereof adopted and used by a merchant to identify,
and distinguish from others, his goods of commerce. It is basically an intellectual creation
that is susceptible to ownership and, consistently therewith, gives rise to its own elements
of jus posidendi, jus utendi, jus fruendi, jus disponendi, and jus abutendi, along with the
applicable jus lex, comprising that ownership.
The incorporeal right, however, is distinct from the property in the material object
subject to it. Ownership in one does not necessarily vest ownership in the other. Thus,
the transfer or assignment of the intellectual property will not necessarily constitute a
conveyance of the thing it covers, nor would a conveyance of the latter imply the
transfer or assignment of the intellectual right.
R.A. No. 623 evidently does not disallow the sale or transfer of ownership of the
marked bottles or containers. In fact, no action shall be brought under this Act against
any person to whom the registered manufacturer, bottler or seller, has transferred by
way of sale, any of the containers herein referred to, but the sale of the beverage
contained in the said containers shall not include the sale of the containers unless
specifically so provided. The provisions of this Act shall not be interpreted as prohibiting
the use of bottles as containers for "sisi," "bagoong," "patis," and similar native products.
Scarcely disputed are certain and specific industry practices in the sale of gin:
The manufacturer sells the product in marked containers, through dealers, to the
public in supermarkets, grocery shops, retail stores and other sales outlets. The buyer
takes the item; he is neither required to return the bottle nor required to make a deposit
to assure its return to the seller. He could return the bottle and get a refund. A number
of bottles at times find their way to commercial users.
It cannot be gainsaid that ownership of the containers does pass on to the
consumer albeit subject to the statutory limitation on the use of the registered
containers and to the trademark right of the registrant.
The statement in Section 5 of R.A. 623 to the effect that the "sale of beverage
contained in the said containers shall not include the sale of the containers unless
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
specifically so provided" is not a rule of proscription. It is a rule of construction that, in
keeping with the spirit and intent of the law, establishes at best a presumption (of non-
conveyance of the container) and which by no means can be taken to be either
interdictive or conclusive in character. Upon the other hand, LTDI's sales invoice,
stipulating that the "sale does not include the bottles with the blown-in marks of
ownership of La Tondeña Distillers," cannot affect those who are not privies thereto.
While it may be unwarranted then for LTDI to simply seize the empty containers,
this Court finds it to be legally absurd, however, to still allow petitioner to recover the
possession thereof. The fact of the matter is that R.A. 623, as amended, in affording
trademark protection to the registrant, has additionally expressed a prima facie
presumption of illegal use by a possessor whenever such use or possession is without the
written permission of the registered manufacturer, a provision that is neither arbitrary
nor without appropriate rationale. Indeed, the appellate court itself has made a finding
of such unauthorized use by petitioner.
The Court sees no other logical purpose for petitioner's insistence to keep the
bottles, except for such continued use. The practical and feasible alternative is to
merely require the payment of just compensation to petitioner for the bottles seized
from it by LTDI.
Conventional wisdom, along with equity and justice to both parties, dictates it.
23) Distilleria Washington v. La Tondena, 280 SCRA 116, G.R. No. 120961 [2 October
1997]
ISSUE: WON petitioner as the owner over the bottles seized from it by replevin,
has the right to their possession and use as attributes of ownership, unless their use 76
violates the trademark or incorporeal rights accorded private respondent by R.A. 623
which has not really been established in this case. (YES)
To recall, La Tondeña Distillers filed for the recovery, under its claim of ownership,
of possession or replevin against Distilleria Washington of 18,157 empty "350 c.c. white
flint bottles" bearing the blown-in marks of "La Tondeña Inc." and "Ginebra San Miguel,"
averring that Distilleria Washington was using the bottles for its own "Gin Seven" products
without the consent of Distilleria Washington in violation of Republic Act 623.
The trial court in its decision dismissed the complaint, upholding Distilleria
Washington's contention that a purchaser of liquor pays only a single price for the liquor
and the bottle and is not required to return the bottle at any time. CA reversed, ruling
that the use of marked bottles by any person other than the manufacturer, bottler or
seller, without the latter's written consent, is unlawful. It emphasized that the marks of
La Tondeña's ownership stamped or blown-in to the bottles are sufficient notice to the
public that the bottles are La Tondeña's property; hence, Distilleria Washington cannot
be considered a purchaser in good faith.
While our decision affirmed with modification the Court of Appeals' decision, we at
least implicitly acknowledged that there was a valid transfer of the bottles to Distilleria
Washington, except that its possession of the bottles without the written consent of La
Tondeña gives rise to a prima facie presumption of illegal use under R.A. 623.
In seeking reconsideration of the decision of this Court, petitioner advances, among
others, the following arguments:
H. TAN, 2018
 (1) Since the right of ownership over the bottles gives rise, according to the Court's
own language, to its own elements of jus posidendi, jus utendi, jus fruendi, jus
disponendi, and jus abutendi, along with the applicable jus lex, to allow La
Tondeña to keep the bottles is to deny Distilleria Washington, the very
attributes or elements of its ownership.
(2) It is absurd to hold the buyer such as Distilleria Washington, liable for the
possession and use of its own bottles without the written consent of La
Tondeña who is no longer the owner thereof and for which it has received
payment in full.
(3) To hold the buyer liable under Sections 2 and 3 would grant La Tondeña the
extraordinary right not only of possession and use of the bottles which it has
sold and no longer owns, but also to sell said bottles ad infinitum, thus enriching
itself unjustly.
(4) It is manifestly unjust and unconscionable that millions of buyers of Ginebra San
Miguel, who pay not only for the gin but also for the bottles containing it should
run the risk of criminal prosecution by the mere fact of possession of the empty
bottles after consuming the liquor.
HELD:
La Tondeña not only sold its gin products but also the marked bottles or containers,
as well. And when these products were transferred by way of sale, then ownership over
the bottles and all its attributes (jus utendi, jus abutendi, just fruendi, jus disponendi)
passed to the buyer. It necessarily follows that the transferee has the right to possession
of the bottles unless he uses them in violation of the original owner's registered or
incorporeal rights.
After practically saying that La Tondeña has surrendered ownership and
consequently, possession of the marked bottles or container, it is incongruous and,
certainly, it does not seem fair and just to still allow La Tondeña, citing the prima
facie presumption of illegal use under Sec. 3 of R.A. 623., to retain possession of the seized
bottles by simply requiring payment of just compensation to petitioner.
The pertinent provisions of R.A. 623 are as follows:
Sec. 2. It shall be unlawful for any person, without the written consent of the
manufacturer, bottler, or seller(emphasis supplied) who has successfully registered the
marks of ownership in accordance with the provisions of the next preceding section, to
fill such bottles, boxes, kegs, barrels, steel cylinders, tanks, flasks, accumulators, or other
similar containers so marked or stamped, for the purpose of sale, or to sell, dispose of,
buy or traffic in, or wantonly destroy the same, whether filled or not to use the same for
drinking vessels or glasses or drain pipes, foundation pipers, for any other purpose than
that registered by the manufacturer, bottler or seller. Any violation of this section shall
be punished by a fine of not more than one thousand pesos or imprisonment of not more
than one year or both.
Sec. 3. The use by any person other than the registered manufacturer, bottler or
seller, without written permission of the latter (emphasis supplied) of any such bottle,
cask, barrel, keg, box, steel cylinders, tanks, flask, accumulators, or other similar
containers, or the possession thereof without written permission of the manufacturer, by
any junk dealer or dealer in casks, barrels, keg, boxes, steel cylinders, tanks, flask,
accumulators or other similar containers, the same being duly marked or stamped and
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
registered as herein provided, shall give rise to a prima facie presumption that such use
or possession is unlawful.
xxx xxx xxx
Sec. 5. No action shall be brought under this Act (emphasis supplied) against any
person to whom the registered manufacturer, bottler or seller, has transferred by way of
sale, (emphasis supplied) any of the containers herein referred to, but the sale of the
beverage contained in the said containers shall not include the sale of the containers
unless specifically so provided.
In resolving that petitioner is the owner of the bottles, this Court applied Section 5
of R.A. 623; and in withholding possession of the bottles from the petitioner and in
concluding that use or possession thereof without the written permission of the
registered owner would constitute prima facie presumption of illegal use, this Court
invoked Sections 2 and 3 of the same law.
A careful reading of Sections 2, 3 and 5 of R.A. 623 would lead to the conclusion that
they contemplate situations separate and distinct from each other. Section 2 prohibits
any person from using, selling or otherwise disposing of registered containers without
the written consent of the registrant. Such rights belong exclusively to the registrant.
Under Section 3, mere possession of such registered containers without the written
consent of the registrant isprima facie presumed unlawful.
It appears — and this is the critical point — that Sections 2 and 3 apply only when
the "filling" up of the bottle or the "use" of the bottle is "without the written
permission" of the "registered manufacturer, bottler, or seller," who has registered the
marks of "ownership" of the bottles. It is thus implicit that Sections 2 and 3 apply only
when the "registered manufacturer, bottler, or seller" retain ownership of the bottles. 77
Upon the other hand, when the bottles have been "transferred by way of sale,"
Section 5 applies, thereby precluding the institution of any action "under this Act,"
meaning to say, any action under Sections 2 and 3.
The general rule on ownership, therefore, must apply and petitioner be allowed to
enjoy all the rights of an owner in regard the bottles in question, to wit:
(a) the jus utendi or the right to receive from the thing what it produces;
(b) the jus abutendi or the right to consume the thing by its use;
(c) the jus disponendi or the power of the owner to alienate, encumber,
transform and even destroy the thing owned; and
(d) the jus vindicandi or the right to exclude from the possession of the
thing owned any other person to whom the owner has not
transmitted such thing.
What is proscribed is the use of the bottles in infringement of another's trademark
or incorporeal rights.
Since the Court has found that the bottles have been transferred by way of sale,
then La Tondeña has relinquished all its proprietary rights over the bottles in favor of
Distilleria Washington who has obtained them in due course.
Now as owner, it can exercise all attributes of ownership over the bottles.
This is the import of the decision that La Tondeña had transferred ownership over
its marked bottles or containers when it sold its gin products to the public.
While others may argue that Section 5 is applicable only to the immediate transferee
of the marked bottles or container, this matter is best discussed where the applicability
H. TAN, 2018
 of Sec. 5, R.A. 623 is squarely raised. It must be recalled, however, that this is a case of
replevin, not a violation of the "trademark protection of the registrant" under R.A. 623 or
of the Trademark Law.
We cannot also be oblivious of the fact that if La Tondeña's thesis
that every possession of the bottles without the requisite written consent is illegal,
thousands upon thousands of buyers of Ginebra San Miguel would be exposed to criminal
prosecution by the mere fact of possession of the empty bottles after consuming the
content.
24) Twin Ace Holdings v. CA, 280 SCRA 884, G.R. No. 123248 [16 October 1997]
TWIN ACE is a manufacturer, distiller and bottler of distillery products, e.g., rhum,
gin, brandy, whiskey, vodka, liquor and cordial under the name and style of Tanduay
Distillers, Inc. (TANDUAY).
Lorenzana, on the other hand, manufactures and exports processed foods and other
related products, e.g., patis, toyo, bagoong, vinegar and other food seasonings.
TWIN ACE filed a complaint for replevin to recover 380,000 bottles of 350 ml., 375
ml, and 750 ml. allegedly owned by it but detained and used by LORENZANA as containers
for native products without its express permission, in violation of RA No. 623. This law
prohibits the use of registered bottles and other containers for any purpose other than
that for which they were registered without the express permission of the owner.
LORENZANA moved to dismiss the complaint on the ground that RA No. 623 could
not be invoked by TWIN ACE because the law contemplated containers of non-alcoholic
beverages only. But, assuming arguendo that the law applied in TWIN ACE's favor, the
right of LORENZANA to use the bottles as containers for its patis and other native products
was expressly sanctioned by Sec. 6 3 of the same law.
RTC dismissed the complaint. TWIN ACE appealed but CA affirmed the action of the
trial court. It held that while bottles and containers of alcoholic beverages were indeed
covered within the protective mantle of RA No. 623, as correctly argued by TWIN ACE,
nevertheless the Supreme Court expressly recognized the exception granted in Sec. 6
thereof to those who used the bottles as containers for sisi, bagoong, patis and other
native products. Hence, no injunctive relief and damages could be obtained against
LORENZANA for exercising what was precisely allowed by the law.
TWIN ACE contends that Sec. 6 notwithstanding, respondent LORENZANA is obliged
to pay just compensation for the use of the subject bottles because Sec. 6 exempts the
user from criminal sanction only but does not shield him from civil liability arising from
the use of the registered bottles without the express consent of the registered owner.
Such civil liability arises from the fact that Sec. 5 of RA No 623 expressly reserves for the
registered owner the ownership of the containers notwithstanding the sale of the
beverage contained therein.
Private respondent, on the other hand, contends that petitioner's bottles used as
containers for hard liquor are not protected by RA No. 623. But even assuming the
applicability of the law, LORENZANA invokes the exemption granted in Sec. 6 thereof.
HELD:
Hard liquor, although regulated, is not prohibited by law, hence, still within the
purview of the phrase "other lawful beverages" protected by RA No. 623, as amended.
But while we adopt the foregoing precedent, we will not decide this case in favor of
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
petitioner because it is quite clear that respondent falls within the exemption granted in
Sec. 6 which states: "The provisions of this Act shall not be interpreted as prohibiting the
use of bottles as containers for "sisi," "bagoong," "patis," and similar native products."
Obviously, the contention of TWIN ACE that the exemption refers only to criminal
liability but not to civil liability is without merit. It is inconceivable that an act specifically
allowed by law, in other words legal, can be the subject of injunctive relief and damages.
Besides, the interpretation offered by petitioner defeats the very purpose for which the
exemption was provided.
Republic Act No. 623 was meant to protect the intellectual property rights of the
registrants of the containers and prevent unfair trade practices and fraud on the public.
However, the exemption granted in Sec. 6 thereof was deemed extremely necessary
to provide assistance and incentive to the backyard, cottage and small-scale
manufacturers of indigenous native products such as patis, sisi and toyo who do not have
the capital to buy brand new bottles as containers nor afford to pass the added cost to
the majority of poor Filipinos who use the products as their daily condiments or viands.
If the contention of petitioner is accepted, i.e., to construe the exemption as to apply
to criminal liability only but not to civil liability, the very purpose for which the exemption
was granted will be defeated. None of the small-scale manufacturers of the indigenous
native products protected would possibly wish to use the registered bottles if they are
vulnerable to civil suits. The effect is a virtual elimination of the clear and unqualified
exemption embodied in Sec. 6.
Petitioner cannot seek refuge in Sec. 5 12 of RA No. 623 to support its claim of
continuing ownership over the subject bottles. Since the purchaser at his discretion could
either retain or return the bottles, the transaction must be regarded as a sale of the 78
bottles when the purchaser actually exercised that discretion and decided not to return
them to the vendor.
We also take judicial notice of the standard practice today that the cost of the
container is included in the selling price of the product such that the buyer of liquor or
any such product from any store is not required to return the bottle nor is the liquor
placed in a plastic container that possession of the bottle is retained by the store.
b) Unfair Competition
 Sec. 168 Unfair Competition, Rights, Regulation and Remedies. –
168.1. A person who has identified in the mind of the public the goods he
manufactures or deals in, his business or services from those of others, whether or
not a registered mark is employed, has a property right in the goodwill of the said
goods, business or services so identified, which will be protected in the same
manner as other property rights.
168.2. Any person who shall employ deception or any other means contrary to
good faith by which he shall pass off the goods manufactured by him or in which
he deals, or his business, or services for those of the one having established such
goodwill, or who shall commit any acts calculated to produce said result, shall be
guilty of unfair competition, and shall be subject to an action therefor.
168.3. In particular, and without in any way limiting the scope of protection
against unfair competition, the following shall be deemed guilty of unfair
competition:
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 (a) Any person, who is selling his goods and gives them the general
appearance of goods of another manufacturer or dealer, either as
to the goods themselves or in the wrapping of the packages in which
they are contained, or the devices or words thereon, or in any other
feature of their appearance, which would be likely to influence
purchasers to believe that the goods offered are those of a
manufacturer or dealer, other than the actual manufacturer or
dealer, or who otherwise clothes the goods with such appearance
as shall deceive the public and defraud another of his legitimate
trade, or any subsequent vendor of such goods or any agent of any
vendor engaged in selling such goods with a like purpose;
(b) Any person who by any artifice, or device, or who employs any other
means calculated to induce the false belief that such person is
offering the services of another who has identified such services in
the mind of the public; or
(c) Any person who shall make any false statement in the course of
trade or who shall commit any other act contrary to good faith of a
nature calculated to discredit the goods, business or services of
another.
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis
mutandis. (Sec. 29, R.A. No. 166a)
Sui generis – common law in origin “passing off”
Difference between trademark infringement and unfair competition
 Sec. 232, IPC – SAME
Difference between Infringement and Unfair Competition
1) Del Monte Corporation v. CA, 181 SCRA 410 – same
2) Pro Line Sports Center v. CA, 281 SCRA 162, G.R. No. 118192 [23 October 1997]
a) whether Sehwani and UNIVERSAL are entitled to recover damages for
the alleged wrongful recourse to court proceedings by petitioners PRO
LINE and QUESTOR (NO);
b) whether petitioners counterclaim should be sustained. (NO)
QUESTOR, a US-based corporation, became the owner of the trademark "Spalding" appearing
in sporting goods, implements and apparatuses. While PRO LINE, a domestic corporation, is
the exclusive distributor of "Spalding" sports products in the Philippines. UNIVERSAL is a
domestic corporation engaged in the sale and manufacture of sporting goods. A criminal case
for unfair competition was filed by Pro Line and Questor against Sehwani, president of
Universal. The complaint was dropped for the reason that it was doubtful whether QUESTOR
had indeed acquired the registration rights over the mark "Spalding" from A.G. Spalding Bros.,
Inc., and complainants failed to adduce an actual receipt for the sale of "Spalding" balls by
UNIVERSAL. In that case Sehwani was exonerated. The dismissal became final and executory
with the entry of judgment.
In connection with the criminal complaint for unfair competition, the Minister of
Justice issued a Resolution ordering the filing of an Information for unfair competition against
Sehwani. The Information was accordingly filed. Sehwani pleaded not guilty to the charge. But,
while he admitted to having manufactured "Spalding" basketballs and volleyballs, he
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
nevertheless stressed that this was only for the purpose of complying with the requirement of
trademark registration with the Philippine Patent Office.
He cited Rules of Practice on Trademark Cases, which requires that the mark applied for be
used on applicant's goods for at least sixty (60) days prior to the filing of the trademark
application and that the applicant must show substantial investment in the use of the mark.
He also disclosed that UNIVERSAL applied for registration with the Patent Office.
As a retaliatory move, Sehwani and UNIVERSAL filed a civil case for damages against
PRO LINE and QUESTOR for what they perceived as the wrongful and malicious filing of the
criminal action for unfair competition against them, charging that PRO LINE and QUESTOR
maliciously and without legal basis committed the following acts to their damage and
prejudice:
(a) procuring the issuance by the Pasig trial court of Search Warrant;
(b) procuring an order authorizing the sealing and padlocking of UNIVERSAL's machineries
and equipment resulting in the paralyzation and virtual closure of its operations;
(c) securing a TRO to prevent the implementation of the trial court's order which authorized
the lifting of the seal and padlock on the subject machineries and equipment to allow
UNIVERSAL to resume operations;
(d) securing a TRO against the CA and charging the latter with grave abuse of discretion for
holding that the order was judiciously issued, thus prolonging the continued closure of
UNIVERSAL's business;
(e) initiating the criminal prosecution of Sehwani for unfair competition; and,
(f) appealing the order of acquittal in Crim. Case directly to the Supreme Court with no other
purpose than to delay the proceedings of the case and prolong the wrongful invasion of
UNIVERSAL's rights and interests. 79
PRO LINE and QUESTOR denied all the allegations in the complaint and filed a
counterclaim for damages based mainly on the unauthorized and illegal manufacture by
UNIVERSAL of athletic balls bearing the trademark "Spalding." The trial court granted the claim
of UNIVERSAL declaring that the series of acts complained of were "instituted with improper,
malicious, capricious motives and without sufficient justification." It ordered PRO LINE and
QUESTOR jointly and severally to pay UNIVERSAL and Sehwani actual and compensatory
damages, moral damages, exemplary damages and attorney's fees.
HELD: PRO LINE and QUESTOR cannot be adjudged liable for damages for the alleged
unfounded suit.
The complainants were unable to prove two (2) essential element of the crime of
malicious prosecution, namely, absence of probable cause and legal malice on the part of
petitioners.
UNIVERSAL failed to show that the filing of Crim. Case was bereft of probable cause. In the
case before us, then Minister of Justice found probable cause when he reversed the Fiscal who
initially dismissed the complaint and directed him instead to file the corresponding
Information for unfair competition against private respondents herein.
The intent on the part of Universal Sports to deceive the public and to defraud a
competitor by the use of the trademark "Spalding" on basketballs and volleyballs seems
apparent. Sehwani should have known of the prior registration of the trademark "Spalding" on
basketballs and volleyballs when he filed the application for registration of the same trademark
in behalf of Universal. He was even notified by the Patent Office that "Spalding" was duly
H. TAN, 2018
registered with said office in connection with sporting goods, implements and apparatus by
A.G. Spalding.
That Universal has been selling these allegedly misbranded "Spalding" balls has been
controverted by the firms allegedly selling the goods. However, there is sufficient proof that
Universal manufactured balls with the trademark "Spalding" as admitted by Monico himself
and as shown by the goods confiscated by virtue of the search warrant.
Either a seller or a manufacturer of imitation goods may be liable for violation of
Section 29 of Rep. Act No. 166.
The existence of probable cause for unfair competition by UNIVERSAL is derivable
from the facts and circumstances of the case. The affidavit of a former employee of
UNIVERSAL, attesting to the illegal sale and manufacture of "Spalding " balls and seized
"Spalding" products and instruments from UNIVERSAL's factory was sufficient prima
facie evidence to warrant the prosecution of private respondents. That a corporation other
than the certified owner of the trademark is engaged in the unauthorized manufacture of
products bearing the same trademark engenders a reasonable belief that a criminal offense
for unfair competition is being committed.
PRO LINE and QUESTOR could not have been moved by legal malice in instituting
the criminal complaint for unfair competition which led to the filing of the Information
against Sehwani. A resort to judicial processes is not per se evidence of ill will upon which a
claim for damages may be based. A contrary rule would discourage peaceful recourse to the
courts of justice and induce resort to methods less than legal, and perhaps even violent.
PRO LINE as the authorized agent of QUESTOR exercised sound judgment in taking
the necessary legal steps to safeguard the interest of its principal with respect to the trademark
in question. If the process resulted in the closure and padlocking of UNIVERSAL's factory and
the cessation of its business operations, these were unavoidable consequences of
petitioners' valid and lawful exercise of their right. One who makes use of his own legal right
does no injury.
The law brands business practices which are unfair, unjust or deceitful not only as
contrary to public policy but also as inimical to private interests.
Arguably, respondents' act may constitute unfair competition even if the element
of selling has not been proved. To hold that the act of selling is an indispensable element of
the crime of unfair competition is illogical because if the law punishes the seller of imitation
goods, then with more reason should the law penalize the manufacturer.
In this case, it was observed by the Minister of Justice that the manufacture of the
"Spalding" balls was obviously done to deceive would-be buyers. The projected sale would
have pushed through were it not for the timely seizure of the goods made by the NBI. That
there was intent to sell or distribute the product to the public cannot also be disputed given
the number of goods manufactured and the nature of the machinery and other equipment
installed in the factory.
In an acquittal on the ground that an essential element of the crime was not proved,
it is fundamental that the accuse cannot be held criminally nor civilly liable for the offense.
Although the New Civil Code authorizes the filing of a civil action separate and distinct from
the criminal proceedings, the right of petitioners to institute the same is not unfettered. Civil
liability arising from the crime is deemed instituted and determined in the criminal proceedings
where the offended party did not waive nor reserve his right to institute it separately. This is
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
why we now hold that the final judgment rendered therein constitutes a bar to the present
counterclaim for damages based upon the same cause.
3) Universal Rubber Products v. CA, 130 SCRA 104, G.R. No. L-30266 [29 June 1984] –
same
4) Converse Rubber Corp. v. Jacinto Rubber and Plastic Co., 97 SCRA 158 [1980]
This is an action for unfair competition.
Converse Rubber is an American Corporation, manufacturer of canvas rubber shoes under
the trade name "Converse Chuck Taylor All Star" in the Philippines, it has an exclusive licensee,
Edwardson for the manufacture and sale in the Philippines of its product.
Converse is the owner of trademarks and patent, registered with United States Patent
Office, covering the words. "All Star", the representation and design of a five-pointed star, and
the design of the sole. The trademark "Chuck Taylor" was registered by Converse. "Chuck
Taylor" has been used exclusively by Philippine basketball teams competing in international
competitions.
Jacinto Rubber, a local corporation, manufactures and sells canvas rubber shoes. It sells
its product under the trade names "Custombuilt Viscount", "Custombuilt Challenger", and
"Custombuilt Jayson's". Its trademark "Custombuilt Jayson's" was registered.
Converse and Jacinto entered into protracted negotiations for a licensing agreement
whereby Jacinto would be the exclusive license of plaintiff Converse in the Philippines for the
manufacture and sale of "Chuck Taylor" shoes but with the right to continue manufacturing
and selling its own products. After an extensive discussion, Jacinto gave into to the demand of
plaintiff Converse; it submitted to Converse for the latter's approval a sketch of a new design
for "Custombuilt". This design was accepted by plaintiff Converse. 80
Jacinto Rubber then proposed that the licensing agreement be made in favor of its
affiliates, defendant Ace Rubber. Ace Rubber signed the licensing agreement while Jacinto
Rubber signed the guarantee agreement to secure the performance by defendant Ace Rubber
of its obligations under the licensing agreement. However, the licensing agreement did not
materialize, because Jacinto refused to sign the guarantee.
Converse and Edwardson then executed licensing agreement, making Edwardson the
exclusive Philippine licensee for the manufacture and sale of "Chuck Taylor." Converse sent a
written demand to defendants to stop manufacturing and selling "Custombuilt" shoes of
Identical appearance as "Chuck Taylor". Defendants did not reply to plaintiffs' letter. Hence,
this suit.
Plaintiffs contend that "Custombuilt" shoes are Identical in design and General
appearance to "Chuck Taylor" and, claiming prior Identification of "Chuck Taylor" in the mind
of the buying public in the Philippines, they contend that defendants are guilty of unfair
competition by selling "Custombuilt" of the design and with the general appearance of
"Chuck Taylor".
Defendants insist that
(1) there is no similarity in design and general appearance between "Custombuilt" and
"Chuck Taylor", pointing out that "Custombuilt" is readily Identifiable by the
tradename "Custombuilt" appearing on the ankle patch, the heel patch, and on the
sole.
H. TAN, 2018
(2) the registration of defendant Jacinto Rubber's trademark "Custombuilt" being prior
to the registration in the Philippines of Converse Rubber's trademark "Chuck Taylor",
plaintiffs have no cause of action.
It appears that defendant started to manufacture and sell "Custombuilt" of its present
design and with its present appearance in 1962. On the other hand, as earlier mentioned,
"Chuck Taylor" started to be sold in the Philippines in 1946 and has been enjoying a reputation
for quality among basketball players in the Philippines.
HELD:
The Court sees no difficulty in finding that the competing products are Identical in
appearance except for the trade names.
The respective designs, the shapes and the color of the ankle patch, the bands, the toe
patch and the sole of the two products are exactly the same. At a distance of a few meters, it
is impossible to distinguish Custombuilt' from "Chuck Taylor". The casual buyer is thus liable
to mistake one for the other. Only by a close-examination and by paying attention to the
trade names will the ordinary buyer be able to tell that the product is either "Custombuilt"
or "Chuck Taylor", as the case may be.
Even so, he will most likely think that the competing products, because they are
strikingly Identical in design and appearance are manufactured by one and the same
manufacturer. Clearly, this case satisfied the test of unfair competition.
Priority in registration in the Philippines of a trademark is not material in an action for
unfair competition as distinguished from an action for infringement of trademark. The basis
of an action for unfair competition is confusing and misleading similarity in general
appearance, not similarity of trademarks.
While it is true that the licensing agreement between plaintiff Converse and defendant
did not materialize, the execution of the documents by the defendants constitute an admission
on the part of Converse Rubber's property right in design and appearance of "Chuck Taylor".
The covenants show that defendants acknowledged that Converse Rubber "is the exclusive
owner of the said Converse-names and design." They agreed not to "manufacture or sell
footwear which would by reason of its appearance and/or design, be likely, or tend, to be
confused by the public with any of the Converse-named products ... or shall, in any manner,
infringe Converse designs".
That defendants are fully aware that "Custombuilt" is Identical in design and appearance
to "Chuck Taylor" has conclusively been admitted by them in their correspondence with
plaintiff Converse leading to the submission by defendants to plaintiff Converse of a sketch of
a new design that should give "Custombuilt" an appearance different from that of "Chuck
Taylor".
Even defendants' own exhibits leave no room for doubt that defendants copied the design
and appearance of "Chuck Taylor" for the purpose of cashing in on the reputation of "Chuck
Taylor". The samples of defendants' product show, indeed, as announced by defendants'
counsel the "metamorphosis" of defendants' product. In the beginning, the design of
defendants' product was entirely different from its present design and the design of "Chuck
Taylor".
It was only 16 years after "Chuck Taylor" has been in the market, that defendants
adopted the present design of "Custombuilt". It is also noteworthy that "Custombuilt" sells at
P35 less than "Chuck Taylor"; thus the casual buyer is led to believe that he is buying the same
product at a lower price. Not surprisingly, the volume of sales of "Custombuilt" increased from
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
35% to 75% of defendants' total sales after they incorporated in their product the design and
appearance of "Chuck Taylor".
It is thus clear that defendants are guilty of unfair competition by giving "Custombuilt"
the same general appearance as "Chuck Taylor". It is equally clear that defendants in so doing
are guilty of bad faith.
There remains for the Court to consider the damages that defendants should be liable for
to plaintiffs. The Court is of the opinion that plaintiffs are entitled to only one (1) per cent of
annual gross sales of "Custombuilt" shoes of current design. As for attorney s fees, the Court
is of the opinion that, P10,000.00 is reasonable.
in cases of unfair competition, while the requisite degree of resemblance or similarity
between the names, brands, or other indicia is not capable of exact definition, it may be stated
generally that the similarity must be such, but need only be such, as is likely to mislead
purchasers of ordinary caution and prudence; or in other words, the ordinary buyer, into the
belief that the goods or wares are those, or that the name or business is that, of another
producer or tradesman. It is not necessary in either case that the resemblance be sufficient to
deceive experts, dealers, or other persons specially familiar with the trademark or goods
involved. Nor is it material that a critical inspection and comparison would disclose differences,
or that persons seeing the trademarks or articles side by side would not be deceived.
To read such conditions, as defendants-appellants seek to do, in the plain prescription of
the law is to re-construct it. Indeed, good-will established in other than a competitive milieu is
no less a property right that deserves protection from unjust appropriation or injury. This, to
us, is precisely the clear sense of the law when it declares without equivocation that a "person
who has Identified in the mind of the public the goods he manufactures or deals in, his business
or services from those of others, has a property right in the goodwill of the said goods, business 81
or services so Identified, which will be protected in the same manner as other property rights."
We are of the considered opinion that the trial court was overly liberal to the defendants-
appellants. The compensatory damages for the years 1962 to 1965 are utterly inadequate.
Even the 5% of the gross sales of "Custombuilt" shoes from 1966 until its injunction is fully
obeyed are short of what the law contemplates in cases of this nature.
Considering that the gross sales of defendants-appellants increased to P16,474,103, only
75% of which, plaintiffs-appellants generously assert corresponded to Custombuilt sales, it
would be but fair and just to award plaintiffs-appellants 15% of such 75% as compensatory
damages.
We feel that this award is reasonable.
It is not farfetched to assume that the net profit of the imitator which, after all is what
the law contemplates as basis for damages if it were only actually ascertainable, in the
manufacture of rubber shoes should not be less than 20 to 25% of the gross sales. Regrettably,
neither of the parties presented positive evidence in this respect, and the Court is left to use
as basis its own projection in the light of usual business practices.
We could, to be sure, return this case to the lower court for further evidence on this point,
but, inasmuch as this litigation started way back about fourteen years ago and it would take
more years before any final disposition is made hereof should take the course, We are
convinced that the above straight computation, without any penalty of interest, is in
accordance with the spirit of the law governing this case.
5) Asia Brewery v. CA, 224 SCRA 437 (1993), 370 SCRA 491 (2001) – same
H. TAN, 2018
 6) Sony Computer v. Supergreen Inc., G.R. No. 161823, 22 March 2007
ISSUE: whether the quashal of Search Warrants was valid.
The case stemmed from the complaint filed with NBI by Sony against Supergreen.
The NBI found that respondent engaged in the reproduction and distribution of
counterfeit "PlayStation" game software, consoles and accessories in violation of Sony
Computer's intellectual property rights. Thus, NBI applied for warrants to search respondent's
premises. The Search Warrants were issued and NBI simultaneously served the search
warrants on the subject premises and seized a replicating machine and several units of
counterfeit "PlayStation" consoles, joy pads, housing, labels and game software.
Respondent filed a motion to quash Search Warrants and/or release of seized properties
on the ground that the search warrant failed to particularly describe the properties to be
seized. The trial court denied the motion for lack of merit.
Respondent filed another motion to quash, this time, questioning the propriety of the
venue. Petitioner opposed the motion on the ground that it violated the omnibus motion rule
wherein all objections not included shall be deemed waived. The RTC affirmed the validity of
Search Warrants covering respondent's premises but quashed the other Search Warrants. The
trial court held that lack of jurisdiction is an exception to the omnibus motion rule and may be
raised at any stage of the proceedings.
Petitioner contends that the rule on venue for search warrant application is not
jurisdictional. Hence, failure to raise the objection waived it. Moreover, petitioner maintains
that applying for search warrants in different courts increases the possibility of leakage and
contradictory outcomes that could defeat the purpose for which the warrants were issued.
Petitioner further asserts that even granting that the rules on search warrant applications
are jurisdictional, the application filed either in the courts of the National Capital Region or
Fourth Judicial Region is still proper because the crime was continuing and committed in both
Parañaque City and Cavite.
Respondent counters that Section 2 is explicit on where applications should be filed and
provided the territorial limitations on search warrants. Respondent claims that Malaloan is no
longer applicable jurisprudence with the promulgation of the 2000 Rules of Criminal
Procedure. Even granting that petitioner has compelling reasons, respondent maintains that
petitioner cannot file the application with the RTC of Manila because Cavite belongs to another
judicial region. Respondent also argues that the doctrine on continuing crime is applicable only
to the institution of a criminal action, not to search warrant applications which is governed by
Rule 126, and in this case Section 2.
HELD:
Respondent’s premises in Cavite, within the Fourth Judicial Region, is definitely beyond
the territorial jurisdiction of the RTC of Manila, in the National Capital Region. Thus, the RTC
of Manila does not have the authority to issue a search warrant for offenses committed in
Cavite. The instant case involves a court in another region. Any other interpretation re-defining
territorial jurisdiction would amount to judicial legislation.
Nonetheless, we agree with petitioner that this case involves a transitory or continuing
offense of unfair competition uder Section 168.
Respondent's imitation of the general appearance of petitioner's goods was done
allegedly in Cavite. It sold the goods allegedly in Mandaluyong City, Metro Manila.
The alleged acts would constitute a transitory or continuing offense. Thus, clearly, under
Section 2 (b) of Rule 126, Section 168 of Rep. Act No. 8293 and Article 189 (1) of the Revised
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Penal Code, petitioner may apply for a search warrant in any court where any element of the
alleged offense was committed, including any of the courts within the National Capital
Region (Metro Manila).
7) Sehwani Inc. and Benita’s Frites, Inc. v. IN-N-Out Burger, Inc., 536 SCRA 255 (2007)
The Court has invariably ruled that perfection of an appeal within the statutory or
reglementary period is not only mandatory but also jurisdictional; failure to do so renders the
questioned decision/final order final and executory, and deprives the appellate court of
jurisdiction to alter the judgment or final order, much less to entertain the appeal.
Contrary to petitioners’ argument, respondent has the legal capacity to sue for the
protection of its trademarks, albeit it is not doing business in the Philippines. Section 160 in
relation to Section 3 of R.A. No. 8293, provides:
SECTION 160. Right of Foreign Corporation to Sue in Trademark or Service Mark
Enforcement Action. — Any foreign national or juridical person who meets the requirements
of Section 3 of this Act and does not engage in business in the Philippines may bring a civil or
administrative action hereunder for opposition, cancellation, infringement, unfair
competition, or false designation of origin and false description, whether or not it is licensed
to do business in the Philippines under existing laws.
Section 3 thereof provides:
SECTION 3. International Conventions and Reciprocity. — Any person who is a
national or who is domiciled or has a real and effective industrial establishment in a
country which is a party to any convention, treaty or agreement relating to
intellectual property rights or the repression of unfair competition, to which the
Philippines is also a party, or extends reciprocal rights to nationals of the Philippines
by law, shall be entitled to benefits to the extent necessary to give effect to any 82
provision of such convention, treaty or reciprocal law, in addition to the rights to
which any owner of an intellectual property right is otherwise entitled by this Act.
Respondent anchors its causes of action under Articles 6 bis and 8 of The Convention of Paris
for the Protection of Industrial Property, otherwise known as the Paris Convention, wherein
both the United States and the Philippines are signatories.
The Articles read: Article 6bis
(1) The countries of the Union undertake, ex officio if their legislation so permits, or
at the request of an interested party, to refuse or to cancel the registration, and to
prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a
translation, liable to create confusion, of a mark considered by the competent
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
used for identical or similar goods. 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.
Article 8
A tradename shall be protected in all countries of the Union without the obligation
of filing or registration whether or not it forms part of a trademark.
Article 6bis which governs the protection of well-known trademarks, is a self-
executing provision and does not require legislative enactment to give it effect in the member
country. It may be applied directly by the tribunals and officials of each member country by
the mere publication or proclamation of the Convention, after its ratification according to the
H. TAN, 2018
public law of each state and the order for its execution. The essential requirement under this
Article is that the trademark to be protected must be "well-known" in the country where
protection is sought. The power to determine whether a trademark is well-known lies in the
"competent authority of the country of registration or use." This competent authority would
be either the registering authority if it has the power to decide this, or the courts of the country
in question if the issue comes before a court.
The question of whether or not respondent’s trademarks are considered "well-known" is
factual in nature, involving as it does the appreciation of evidence adduced before the BLA-
IPO. The settled rule is that the factual findings of quasi-judicial agencies, like the IPO, which
have acquired expertise because their jurisdiction is confined to specific matters, are generally
accorded not only respect, but, at times, even finality if such findings are supported by
substantial evidence.
We are inclined to favor the declaration of the mark "IN-N-OUT" as an internationally
well-known mark on the basis of "registrations in various countries around the world and its
comprehensive advertisements therein." Hence, on the basis of evidence presented consisting
of worldwide registration of mark "IN-N-OUT" almost all of which were issued earlier than the
respondent’s date of filing of its application and the subsequent registration of the mark "IN-
N-OUT" in this Office, as well as the advertisements therein by the complainant, this Office
hereby affirms its earlier declaration that indeed, the mark "IN-N-OUT BURGER LOGO" is an
internally well-known mark.
Moreover, petitioners’ claim that no ground exists for the cancellation of their
registration lacks merit. Section 151(b) of RA 8293 provides:
SECTION 151. Cancellation. — 151.1. A petition to cancel a registration of a mark under
this Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or
will be damaged by the registration of a mark under this Act as follows:
(b) At any time, if the registered mark becomes the generic name for the goods or
services, or a portion thereof, for which it is registered, or has been abandoned, or its
registration was obtained fraudulently or contrary to the provisions of this Act, or if the
registered mark is being used by, or with the permission of, the registrant so as to
misrepresent the source of the goods or services on or in connection with which the mark
is used. x x x.
Finally, petitioner’s contention that respondent is precluded from asserting its claim by
laches, if not by prescription, lacks basis. Section 151(b) of R.A. No. 8293 specifically provides
that a petition to cancel the registration of a mark which is registered contrary to the provisions
thereof, or which is used to misrepresent the source of the goods or services, may be filed at
any time. Moreover, laches may not prevail against a specific provision of law, since equity,
which has been defined as ‘justice outside legality’ is applied in the absence of and not against
statutory law or rules of procedure.31 Aside from the specific provisions of R.A. No. 8293, the
Paris Convention and the WIPO Joint Recommendation have the force and effect of law, for
under Section 2, Article II of the Constitution, the Philippines adopts the generally accepted
principles of international law as part of the law of the land. To rule otherwise would be to
defeat the equitable consideration that no one other than the owner of the well-known mark
shall reap the fruits of an honestly established goodwill.
8) Coca Cola v. Gomez, G.R. No. 154491, 14 November 2008
ISSUE:
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
(1) whether the application for search warrant effectively charged an offense, i.e., a
violation of Section 168.3 (c) of the IP Code (NO);
(2) whether the MTC observed the procedures required by the Rules of Court in the
issuance of search warrants.
Coca-Cola applied for a search warrant against Pepsi for hoarding Coke empty bottles in Pepsi's
yard in Naga City, an act allegedly penalized as unfair competition under the IP Code. Coca-
Cola claimed that the bottles must be confiscated to preclude their illegal use, destruction or
concealment by the respondents.
MTC Executive Judge of Naga City, after taking the joint deposition of the witnesses,
issued Search Warrant to seize 2, empty Coke bottles at Pepsi's Naga yard for violation of
Section 168.3 (c) of the IP Code. The local police seized and brought to the MTC's custody
empty Coke bottles, Pepsi shells for Litro, and Pepsi shells for smaller empty Coke bottles, and
later filed a complaint against two Pepsi officers for violation of Section 168.3 (c) in relation to
Section 170 of the IP Code.
The named respondents, also the respondents in this petition, were Pepsi regional sales
manager Danilo E. Galicia (Galicia) and its Naga general manager Quintin J. Gomez,
Jr. (Gomez).
Galicia and Gomez claimed that
(1) the bottles came from various Pepsi retailers and wholesalers who included them in
their return to make up for shortages of empty Pepsi bottles;
(2) they had no way of ascertaining beforehand the return of empty Coke bottles as they
simply received what had been delivered; the presence of the bottles in their yard
was not intentional nor deliberate;
(3) Ponce and Regaspi's statements are hearsay as they had no personal knowledge of 83
the alleged crime; there is no mention in the IP Code of the crime of possession of
empty bottles; and that
(4) the ambiguity of the law, which has a penal nature, must be construed strictly against
the State and liberally in their favor. Pepsi security guards Eduardo E. Miral and Rene
Acebuche executed a joint affidavit stating that per their logbook, Lirio did not visit
or enter the plant premises in the afternoon of July 2, 2001.
In its petition, the petitioner insists the RTC should have dismissed the respondents'
petition for certiorari because it found no grave abuse of discretion by the MTC in issuing the
search warrant. The petitioner further argues that the IP Code was enacted into law to remedy
various forms of unfair competition accompanying globalization as well as to replace the inutile
provision of unfair competition under Article 189 of the Revised Penal Code.
Section 168.3(c) of the IP Code does not limit the scope of protection on the particular
acts enumerated as it expands the meaning of unfair competition to include "other acts
contrary to good faith of a nature calculated to discredit the goods, business or services of
another." The inherent element of unfair competition is fraud or deceit, and that hoarding of
large quantities of a competitor's empty bottles is necessarily characterized by bad faith. It
claims that its Bicol bottling operation was prejudiced by the respondents' hoarding and
destruction of its empty bottles.
The petitioner also argues that the quashal of the search warrant was improper because
it complied with all the essential requisites of a valid warrant. The empty bottles were
concealed in Pepsi shells to prevent discovery while they were systematically being destroyed
H. TAN, 2018
to hamper the petitioner's bottling operation and to undermine the capability of its bottling
operations in Bicol.
The respondents counter-argue that although Judge Ocampo conducted his own
examination, he gravely erred and abused his discretion when he ignored the rule on the need
of sufficient evidence to establish probable cause; satisfactory and convincing evidence is
essential to hold them guilty of unfair competition; the hoarding of empty Coke bottles did not
cause actual or probable deception and confusion on the part of the general public; the alleged
criminal acts do not show conduct aimed at deceiving the public; there was no attempt to use
the empty bottles or pass them off as the respondents' goods.
The respondents also argue that the IP Code does not criminalize bottle hoarding, as the
acts penalized must always involve fraud and deceit. The hoarding does not make them liable
for unfair competition as there was no deception or fraud on the end-users.
HELD:
The decision is correct in nullifying the search warrant because it was issued on an invalid
substantive basis - the acts imputed on the respondents do not violate Section 168.3 (c) of the
IP Code. For this reason, we deny the present petition.
A search warrant may be issued only if there is probable cause in connection with a
specific offense alleged in an application based on the personal knowledge of the applicant and
his or her witnesses. This is the substantive requirement in the issuance of a search warrant.
Procedurally, the determination of probable cause is a personal task of the judge before whom
the application for search warrant is filed, as he has to examine under oath or affirmation the
applicant and his or her witnesses in the form of "searching questions and answers" in writing
and under oath. The warrant, if issued, must particularly describe the place to be searched and
the things to be seized.
We paraphrase these requirements to stress that they have substantive and procedural
aspects.
Apparently, the RTC recognized this dual nature of the requirements and, hence, treated
them separately; it approved of the way the MTC handled the procedural aspects of the
issuance of the search warrant but found its action on the substantive aspect wanting. It
therefore resolved to nullify the warrant, without however expressly declaring that the MTC
gravely abused its discretion when it issued the warrant applied for.
The RTC's error, however, is in the form rather than the substance of the decision as the
nullification of the issued warrant for the reason the RTC gave was equivalent to the
declaration that grave abuse of discretion was committed. In fact, we so rule as the discussions
below will show.
An underlying offense must, in the first place, exist. In other words, the acts alleged, taken
together, must constitute an offense and these acts are imputable to an offender in relation
with whom a search warrant is applied for.
In the context of the present case, the question is whether the act charged - alleged to be
hoarding of empty Coke bottles - constitutes an offense under Section 168.3 (c) of the IP Code.
From jurisprudence, unfair competition has been defined as the passing off (or palming
off) or attempting to pass off upon the public the goods or business of one person as the goods
or business of another with the end and probable effect of deceiving the public.
It formulated the "true test" of unfair competition: whether the acts of defendant are
such as are calculated to deceive the ordinary buyer making his purchases under the ordinary
conditions which prevail in the particular trade to which the controversy relates.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
One of the essential requisites in an action to restrain unfair competition is proof of fraud;
the intent to deceive must be shown before the right to recover can exist. The advent of the IP
Code has not significantly changed these rulings as they are fully in accord with what Section
168 of the Code in its entirety provides. Deception, passing off and fraud upon the public are
still the key elements that must be present for unfair competition to exist.
The act alleged to violate the petitioner's rights under Section 168.3 (c) is hoarding
which we gather to be the collection of the petitioner's empty bottles so that they can be
withdrawn from circulation and thus impede the circulation of the petitioner's bottled
products. This, according to the petitioner, is an act contrary to good faith - a conclusion that,
if true, is indeed an unfair act on the part of the respondents. The critical question, however,
is not the intrinsic unfairness of the act of hoarding; what is critical for purposes of Section
168.3 (c) is to determine if the hoarding, as charged, "is of a nature calculated to discredit
the goods, business or services" of the petitioner.
We hold that it is not. Hoarding as defined by the petitioner is not even an act within the
contemplation of the IP Code.
The petitioner's cited basis is a provision of the IP Code, a set of rules that refer to a very
specific subject - intellectual property. Aside from the IP Code's actual substantive contents
(which relate specifically to patents, licensing, trademarks, trade names, service marks,
copyrights, and the protection and infringement of the intellectual properties that these
protective measures embody), the coverage and intent of the Code is expressly reflected in its
"Declaration of State Policy" which states:
Section 2. Declaration of State Policy. - The State recognizes that an effective intellectual
and industrial property system is vital to the development of domestic and creative activity,
facilitates transfer of technology, attracts foreign investments, and ensures market access for 84
our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and
other gifted citizens to their intellectual property and creations, particularly when beneficial to
the people, for such periods as provided in this Act.
The use of intellectual property bears a social function. To this end, the State shall
promote the diffusion of knowledge and information for the promotion of national
development and progress and the common good.
It is also the policy of the State to streamline administrative procedures of registering
patents, trademarks and copyright, to liberalize the registration on the transfer of technology,
and to enhance the enforcement of intellectual property rights in the Philippines.
"Intellectual property rights" have furthermore been defined under Section 4 of the Code
to consist of: a) Copyright and Related Rights; b) Trademarks and Service Marks; c) Geographic
Indications; d) Industrial Designs; e) Patents; f) Layout-Designs (Topographies) of Integrated
Circuits; and g)Protection of Undisclosed Information.
Given the IP Code's specific focus, a first test that should be made when a question arises
on whether a matter is covered by the Code is to ask if it refers to an intellectual property as
defined in the Code. If it does not, then coverage by the Code may be negated.
A second test, if a disputed matter does not expressly refer to an intellectual property
right as defined above, is whether it falls under the general "unfair competition" concept and
definition under Sections 168.1 and 168.2 of the Code. The question then is whether there is
"deception" or any other similar act in "passing off" of goods or services to be those of another
who enjoys established goodwill.
H. TAN, 2018
 "Hoarding" - as defined and charged by the petitioner - does not fall within the coverage
of the IP Code and of Section 168 in particular. It does not relate to any patent, trademark,
trade name or service mark that the respondents have invaded, intruded into or used
without proper authority from the petitioner. Nor are the respondents alleged to be
fraudulently "passing off" their products or services as those of the petitioner.
The respondents are not also alleged to be undertaking any representation or
misrepresentation that would confuse or tend to confuse the goods of the petitioner with
those of the respondents, or vice versa. What in fact the petitioner alleges is an act foreign
to the Code, to the concepts it embodies and to the acts it regulates; as alleged, hoarding
inflicts unfairness by seeking to limit the opposition's sales by depriving it of the bottles it
can use for these sales.
Where, as in this case, the imputed acts do not violate the cited offense, the ruling of this
Court penned by Mr. Justice Bellosillo is particularly instructive:
In the issuance of search warrants, the Rules of Court requires a finding of probable cause
in connection with one specific offense to be determined personally by the judge after
examination of the complainant and the witnesses he may produce, and particularly describing
the place to be searched and the things to be seized. Hence, since there is no crime to speak
of, the search warrant does not even begin to fulfill these stringent requirements and is
therefore defective on its face.
Based on the foregoing, RTC correctly ruled that the petitioner's search warrant should
properly be quashed for the petitioner's failure to show that the acts imputed to the
respondents do not violate the cited offense. There could not have been any probable cause
to support the issuance of a search warrant because no crime in the first place was effectively
charged.
This conclusion renders unnecessary any further discussion on whether the search
warrant application properly alleged that the imputed act of holding Coke empties was in fact
a "hoarding" in bad faith aimed to prejudice the petitioner's operations, or whether the MTC
duly complied with the procedural requirements for the issuance of a search warrant under
Rule 126 of the Rules of Court.
9) Superior Commercial Enterprises v. Kunnan Enterprises Ltd., G.R. No. 169974, 20
April 2010 – same
c) Action for False or Fraudulent Declaration
 Sec. 162, Action for False or Fraudulent Declaration. –
Any person who shall procure registration in the Office of a mark by a false or
fraudulent declaration or representation, whether oral or in writing, or by any false
means, shall be liable in a civil action by any person injured thereby for any
damages sustained in consequence thereof (Sec. 26, R.A. No. 166)
 Sec. 163, Jurisdiction of Court. –
All actions under Sections 150, 155, 164, and 166 to 169 shall be brought before
the proper courts with appropriate jurisdiction under existing laws. (Sec. 27, R.A.
No. 166)
 Sec. 164, Notice of Filing Suit Given to the Director. –
It shall be the duty of the clerks of such courts within one (1) month after the filing
of any action, suit, or proceeding involving a mark registered under the provisions
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
of this Act, to notify the Director in writing setting forth: the names and addresses
of the litigants and designating the number of the registration or registrations and
within one (1) month after the judgment is entered or an appeal is taken, the clerk
of court shall give notice thereof to the Office, and the latter shall endorse the
same upon the filewrapper of the said registration or registrations and incorporate
the same as a part of the contents of said filewrapper. (n)
 Sec. 232, IPC – same
d) Action False Designation of Origin
 Sec. 169 (and its subparagraphs) – same
 Sec. 232 – same
3. Criminal
 Sec. 170, Penalties. –
Independent of the civil and administrative sanctions imposed by law, a criminal
penalty of imprisonment from two (2) years to five (5) years and a fine ranging
from Fifty thousand pesos (P50,000) to Two hundred thousand pesos(P200,000),
shall be imposed on any person who is found guilty of committing any of the acts
mentioned in Section 155, Section 168 and Subsection 169.1. (Arts. 188 and 189,
Revised Penal Code)
1) Sy v. Court of Appeals, 113 SCRA 334, G.R. No. L-37494, 30 March 1982
Sy was charged with unfair competition, in that he, for the purpose of deceiving or
85
defrauding the Sea Commercial Company of its legitimate trade or the public sold or offered
for sale hand pumps of inferior quality and labeled JETMATIC DRAGON HAND PUMP and at a
lower price and giving them the general appearance of the JETMATIC DRAGON hand pumps of
the Sea Commercial Company, as to the outside appearance, including, among others, the
color, the embossed words PAT No. 463490 on the spout the embossed word MODEL chamber
assembly, the embossed words JETMATIC DRAGON HAND PUMP on the lateral surface of the
cylinder assembly and many other parts both as to the design and the materials used which
induced the public to believe that the JETMATIC DRAGON HAND pumps offered are those of
the Sea Commercial Company, to the damage and prejudice of the said Sea Commercial
Company, Incorporated and the general public.
RTC acquitted Sy. Upon order of the RTC, the Fiscal then filed an information charging Sy
of trademark infringement when Sy sold hand pumps of inferior quality and labelled JETMATIC
DRAGON HAND PUMP at a lower price, Sy knowing fully well that the mark JETMATIC DRAGON
HAND PUMP has been fraudulently used in the said hand pumps, thereby giving them the
general appearance of the old and/or being offered for sale are those of the Sea Commercial
Company, when in fact they are not to the damage and prejudice of the said Sea Commercial
Company, Incorporated and the general public.
Sy contends that by the filing of the second information, he would be placed in double
jeopardy because under the first information, he could have been convicted of the offense
charged in the second information. Since he was acquitted under the first information, to
charge him again for the same offense as aforestated would according to petitioner, constitute
double jeopardy.
H. TAN, 2018
 In advancing the above propositions, Sy would treat the two offenses of infringement of
trademark and unfair competition as separate and distinct, not as one necessarily included in,
or including, the other. Upon this premise, it cannot be successfully contended that what
happened with respect to the offense of infringement of trademark, assuming it was also
charged in the first information as a separate offense, is, by no manner of reasoning, one of
acquittal for said offense.
HELD:
In the opinion of the trial court, the first information did not properly charge the offense
of infringement of trademark, for what was expressly charged was unfair competition. In
proceeding in accordance with the above quoted provisions of the Rules of Court, the trial
court evidently felt it cannot properly convict the accused of infringement of trademark,
although it found evidence sufficient to justify filing the proper information for said offense.
But, undoubtedly, the court found it not proper to acquit the accused of said offense. Hence
there can be no double jeopardy as to the offense charged in the second information on the
ground of a prior acquittal for the same offense.
What makes the ruling cited by Sy not applicable to the present is that in the cases cited,
acquittal was for the offense specifically charged without the trial court expressly finding that
for the other offense also charged but not expressly so by the statutory designation of the
offense, evidence exists to justify his being held to answer for such offense, in accordance with
Section 12, Rule 119 of the Rules of Court, as the trial court in the instant case very explicitly
did. It is this circumstance that, clearly and undisputably would prevent double jeopardy to
attach, for there is neither acquittal nor conviction, not even dismissal of the case, which
might result in double jeopardy arising to ban the proceedings contemplated in the
aforecited provisions of the Rules of Court.
It felt that under the information as so worded, conviction was not legally possible
obviously for not sufficiently informing the accused of the nature and cause of the accusation
against him, which is one of his constitutional rights, although factually, the assessment of the
evidence by the court tended towards justifying conviction.
Verily, the situation fits into what is contemplated by the provisions of the Rules of Court
already referred to, which do not call for a new or separate preliminary investigation, which
petitioner contends is indispensable, to which the Solicitor General expressed agreement.
As to the offense of infringement of trademark, which petitioner himself contends was
also charged in the first information, the Court rendered no judgment yet, either for acquittal
or for conviction, as it appeared to the trial judge that the accused cannot properly be
convicted for said offense, even if conviction was warranted by the evidence, a mistake having
been made, as he read the information, and with reason, in charging the proper offense.
However, if petitioner insists on another preliminary investigation, the same may be
granted by way of "reinvestigation", the Solicitor General who actually represents also the
prosecution having expressed conformity to the holding of one, Let it not be said that We are
not mindful of the rule that all doubts should be resolved in favor of the accused, a rule which
itself should be liberally construed in his favor.
2) Samson v. Judge Daway, G.R. Nos. 160054-55, 21 July 2004
ISSUE: Which court has jurisdiction over criminal and civil cases for violation of
intellectual property rights? (RTC)
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
2 informations for unfair competition were filed against Samson, the registered owner of
ITTI Shoes. Samson, owner/proprietor of ITTI Shoes/Mano Shoes Manufactuirng Corporation
distributed, sold and/or offered for sale CATERPILLAR products such as footwear, garments,
clothing, bags, accessories and paraphernalia which are closely identical to and/or colorable
imitations of the authentic Caterpillar products and likewise using trademarks, symbols and/or
designs as would cause confusion, mistake or deception on the part of the buying public to the
damage and prejudice of CATERPILLAR, INC., the prior adopter, user and owner of the
following internationally: "CATERPILLAR", "CAT", "CATERPILLAR & DESIGN", "CAT AND
DESIGN", "WALKING MACHINES" and "TRACK-TYPE TRACTOR & DESIGN."
HELD:
R.A. No. 8293 and R.A. No. 166 are special laws conferring jurisdiction over violations of
intellectual property rights to the Regional Trial Court. They should therefore prevail over R.A.
No. 7691, which is a general law. Hence, jurisdiction over the instant criminal case for unfair
competition is properly lodged with the Regional Trial Court even if the penalty therefor is
imprisonment of less than 6 years, or from 2 to 5 years and a fine ranging from P50,000.00 to
P200,000.00.
In fact, to implement and ensure the speedy disposition of cases involving violations of
intellectual property rights under R.A. No. 8293, the Court issued A.M. No. 02-1-11-SC dated
February 19, 2002 designating certain Regional Trial Courts as Intellectual Property Courts. On
June 17, 2003, the Court further issued a Resolution consolidating jurisdiction to hear and
decide Intellectual Property Code and Securities and Exchange Commission cases in specific
Regional Trial Courts designated as Special Commercial Courts.
3) William C. Yao, Sr. v. The People of the Philippines, G.R. No. 168306, 19 June 2007 86
The Yaos are incorporators and officers of MASAGANA, an entity engaged in the refilling,
sale and distribution of LPG products. Petron and Pilipinas Shell are two of the largest bulk
suppliers and producers of LPG in the Philippines. Their LPG products are sold under the marks
"GASUL" and "SHELLANE," respectively.
Petron is the registered owner in the Philippines of the trademarks GASUL and GASUL
cylinders used for its LPG products. It is the sole entity in the Philippines authorized to allow
refillers and distributors to refill, use, sell, and distribute GASUL LPG containers, products and
its trademarks.
Pilipinas Shell, on the other hand, is the authorized user in the Philippines of the
tradename, trademarks, symbols, or designs of its principal, Shell International, including the
marks SHELLANE and SHELL device in connection with the production, sale and distribution of
SHELLANE LPGs. It is the only corporation in the Philippines authorized to allow refillers and
distributors to refill, use, sell and distribute SHELLANE LPG containers and products.
NBI filed two applications for search warrant against Yao for alleged violation of The
Intellectual Property Code of the Philippines, alleging that Yao is actually producing, selling,
offering for sale and/or distributing LPG products using steel cylinders owned by, and bearing
the tradenames, trademarks, and devices of Petron and Pilipinas Shell, without authority and
in violation of the rights of the said entities.
After conducting the preliminary examination, Judge Sadang found probable cause and
correspondingly issued Search Warrants for an immediate search of the MASAGANA
compound and to seize the Empty/filled LPG cylinder tanks/containers, bearing the tradename
"SHELLANE", "SHELL" (Device) of Pilipinas Shell and the trademarks and other devices owned
H. TAN, 2018
by Shell International and Machinery and/or equipment being used or intended to be used for
the purpose of illegally refilling LPG cylinders belonging to Pilipinas Shell as well as the marks
belonging to Shell International.
In his sworn affidavits, Oblanca stated that before conducting an investigation on the
alleged illegal activities of MASAGANA, he reviewed the certificates of trademark registrations
issued in favor of Petron and Pilipinas Shell; that he confirmed from Petron and Pilipinas Shell
that MASAGANA is not authorized to sell, use, refill or distribute GASUL and SHELLANE LPG
cylinder containers; that, using different names, they conducted two test-buys therein where
they purchased LPG cylinders bearing the trademarks GASUL and SHELLANE; that the said
GASUL and SHELLANE LPG cylinders were refilled in their presence by the MASAGANA
employees; that while they were inside the MASAGANA compound, he noticed stock piles of
multi-branded cylinders including GASUL and SHELLANE LPG cylinders; and that they observed
delivery trucks loaded with GASUL and SHELLANE LPG cylinders coming in and out of the
MASAGANA compound and making deliveries to various retail outlets. These allegations were
corroborated by Alajar in his separate affidavits.
Extant from the foregoing testimonial, documentary and object evidence is that Oblanca
and Alajar have personal knowledge of the fact that petitioners, through MASAGANA, have
been using the LPG cylinders bearing the marks GASUL and SHELLANE without permission from
Petron and Pilipinas Shell, a probable cause for trademark infringement. Both Oblanca and
Alajar were clear and insistent that they were the very same persons who monitored the
activities of MASAGANA; that they conducted test-buys thereon; and that in order to avoid
suspicion, they used different names during the test-buys. They also personally witnessed the
refilling of LPG cylinders bearing the marks GASUL and SHELLANE inside the MASAGANA
refilling plant station and the deliveries of these refilled containers to some outlets using mini-
trucks.
Indeed, the aforesaid facts and circumstances are sufficient to establish probable cause.
It should be borne in mind that the determination of probable cause does not call for the
application of the rules and standards of proof that a judgment of conviction requires after
trial on the merits. As the term implies, "probable cause" is concerned with probability, not
absolute or even moral certainty. The standards of judgment are those of a reasonably prudent
man, not the exacting calibrations of a judge after a full blown trial.
The fact that Oblanca and Alajar used different names in the purchase receipts do not
negate personal knowledge on their part. It is a common practice of the law enforcers such as
NBI agents during covert investigations to use different names in order to conceal their true
identities. This is reasonable and understandable so as not to endanger the life of the
undercover agents and to facilitate the lawful arrest or apprehension of suspected violators of
the law.
After perusing the Transcript of Stenographic Notes of the preliminary examination, we
found the questions of Judge Sadang to be sufficiently probing, not at all superficial and
perfunctory. The testimonies of Oblanca and Alajar were consistent with each other and their
narration of facts was credible.
Since probable cause is dependent largely on the opinion and findings of the judge who
conducted the examination and who had the opportunity to question the applicant and his
witnesses, the findings of the judge deserves great weight. The reviewing court can overturn
such findings only upon proof that the judge disregarded the facts before him or ignored the
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
clear dictates of reason. We find no compelling reason to disturb Judge Sadang’s findings
herein.
…
J. TRADENAMES
1. Definition
 Sec. 121.3
"Trade name" means the name or designation identifying or distinguishing an
enterprise; (Sec. 38, R.A. No. 166a)
4) Converse Rubber Corporation v. Universal Rubber Products, 147 SCRA 154 [1987]
ISSUE: whether or not partial appropriation of petitioner's corporate name is of such
character that it is calculated to deceive or confuse the public to the injury of the petitioner
to which the name belongs.
Universal Rubber filed an application for registration of the trademark "UNIVERSAL
CONVERSE AND DEVICE" used on rubber shoes and rubber slippers. Converse Rubber filed its
opposition to the application for registration on grounds that:
(1) The trademark sought to be registered is confusingly similar to the word
"CONVERSE" which is part of petitioner's corporate name "CONVERSE RUBBER
CORPORATION" as to likely deceive purchasers of products on which it is to be used
to an extent that said products may be mistaken by the unwary public to be
manufactured by the petitioner; and,
(2) The registration of respondent's trademark will cause great and irreparable injury
to the business reputation and goodwill of petitioner in the Philippines and would
cause damage to said petitioner within the, meaning of Section 8, R.A. No. 166, as 87
amended.
CONVERSE RUBBER CORPORATION is duly organized under the laws of USA and is not
licensed to do business in the Philippines and it is not doing business on its own in the
Philippines; and, it manufacturers rubber shoes and uses thereon the trademarks "CHUCK
TAYLOR "and "ALL STAR AND DEVICE".
At the trial, Converse’s lone witness, Mrs. Pacquing, a duly licensed private merchant,
testified that she had been selling CONVERSE rubber shoes in the local market since 1956 and
that sales of petitioner's rubber shoes in her stores averaged twelve to twenty pairs a month
purchased mostly by basketball players of local private educational institutions like Ateneo, La
Salle and San Beda.
Mrs. Pacquing, further stated that she knew petitioner's rubber shoes came from the
United States "because it says there in the trademark Converse Chuck Taylor with star red or
blue and is a round figure and made in U.S.A. " In the invoices issued by her store, the rubber
shoes were described as "Converse Chuck Taylor", "Converse All Star," "All Star Converse
Chuck Taylor," or "Converse Shoes Chuck Taylor.” She also affirmed that she had no business
connection with the petitioner.
Universal Rubber, on the other hand, presented as its lone witness who testified that
respondent has been selling on wholesale basis "Universal Converse" sandals since 1962 and
"Universal Converse" rubber shoes since 1963. Invoices were submitted as evidence of such
sales. The witness also testified that she had no Idea why respondent chose "Universal
Converse" as a trademark and that she was unaware of the name "Converse" prior to her
corporation's sale of "Universal Converse" rubber shoes and rubber sandals.
H. TAN, 2018
 Eventually, the Director of Patents dismissed the opposition of the petitioner and gave
due course to respondent's application. He ruled that opposer failed to present proof that the
single word "CONVERSE' in its corporate name has become so Identified with the corporation
that whenever used, it designates to the mind of the public that particular corporation.
Furthermore, the record is wanting in proof to establish likelihood of confusion so as to
cause probable damage to the Opposer.
HELD:
A trade name is any individual name or surname, firm name, device or word used by
manufacturers, industrialists, merchants and others to Identify their businesses, vocations or
occupations. As the trade name refers to the business and its goodwill ... the trademark refers
to the goods."
The ownership of a trademark or tradename is a property right which the owner is
entitled to protect "since there is damage to him from confusion or reputation or goodwill in
the mind of the public as well as from confusion of goods. The modern trend is to give emphasis
to the unfairness of the acts and to classify and treat the issue as fraud.
It is evident that "CONVERSE" is the dominant word which Identifies petitioner from
other corporations engaged in similar business. Respondent admitted petitioner's existence
since 1946 as a duly organized foreign corporation engaged in the manufacture of rubber
shoes. This admission necessarily betrays its knowledge of the reputation and business of
petitioner even before it applied for registration of the trademark in question. Knowing,
therefore, that the word "CONVERSE" belongs to and is being used by petitioner, and is in fact
the dominant word in petitioner's corporate name, respondent has no right to appropriate the
same for use on its products which are similar to those being produced by petitioner.
A corporation is entitled to the cancellation of a mark that is confusingly similar to
its corporate name." "Appropriation by another of the dominant part of a corporate name
is an infringement."
Respondent's witness had no Idea why respondent chose "UNIVERSAL CONVERSE"
as trademark and the record discloses no reasonable explanation for respondent's use of the
word "CONVERSE" in its trademark. Such unexplained use by respondent of the dominant
word of petitioner's corporate name lends itself open to the suspicion of fraudulent motive
to trade upon petitioner's reputation, thus:
A boundless choice of words, phrases and symbols is available to one who wishes a
trademark sufficient unto itself to distinguish his product from those of others.
When, however, there is no reasonable explanation for the defendant's choice of
such a mark though the field for his selection was so broad, the inference is inevitable
that it was chosen deliberately to deceive.
The testimony of petitioner's witness, who is a legitimate trader as well as the
invoices evidencing sales of petitioner's products in the Philippines, give credence to
petitioner's claim that it has earned a business reputation and goodwill in this country. The
sales invoices submitted by petitioner's lone witness show that it is the word "CONVERSE" that
mainly Identifies petitioner's products, i.e. "CONVERSE CHUCK TAYLOR, "CONVERSE ALL
STAR," ALL STAR CONVERSE CHUCK TAYLOR," or "CONVERSE SHOES CHUCK and TAYLOR."
Thus, contrary to the determination of the respondent Director of Patents, the word
"CONVERSE" has grown to be Identified with petitioner's products, and in this sense, has
acquired a second meaning within the context of trademark and tradename laws.
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Furthermore, said sales invoices provide the best proof that there were actual sales
of petitioner's products in the country and that there was actual use for a protracted period of
petitioner's trademark or part thereof through these sales. "The most convincing proof of use
of a mark in commerce is testimony of such witnesses as customers, or the orders of buyers
during a certain period. Petitioner's witness, having affirmed her lack of business connections
with petitioner, has testified as such customer, supporting strongly petitioner's move for
trademark pre-emption.
The sales of 12 to 20 pairs a month of petitioner's rubber shoes cannot be considered
insignificant, considering that they appear to be of high expensive quality, which not too many
basketball players can afford to buy. Any sale made by a legitimate trader from his store is a
commercial act establishing trademark rights since such sales are made in due course of
business to the general public, not only to limited individuals.
It is a matter of public knowledge that all brands of goods filter into the market,
indiscriminately sold by jobbers dealers and merchants not necessarily with the knowledge or
consent of the manufacturer. Such actual sale of goods in the local market establishes
trademark use which serves as the basis for any action aimed at trademark pre- exemption.
It is a corollary logical deduction that while Converse is not licensed to do business
in the country and is not actually doing business here, it does not mean that its goods are not
being sold here or that it has not earned a reputation or goodwill as regards its products. The
Director of Patents was, therefore, remiss in ruling that the proofs of sales presented was made
by a single witness who had never dealt with nor had never known opposer [petitioner]
without Opposer having a direct or indirect hand in the transaction to be the basis of
trademark pre- exemption."
Another factor why respondent's applications should be denied is the confusing 88
similarity between its trademark "UNIVERSAL CONVERSE AND DEVICE" and petitioner's
corporate name and/or its trademarks "CHUCK TAYLOR" and "ALL STAR DEVICE" which could
confuse the purchasing public to the prejudice of petitioner,
The trademark of respondent "UNIVERSAL CONVERSE and DEVICE" is imprinted in a
circular manner on the side of its rubber shoes. In the same manner, the trademark of
petitioner which reads "CONVERSE CHUCK TAYLOR" is imprinted on a circular base attached
to the side of its rubber shoes.
The similarity y in the general appearance of respondent's trademark and that of
petitioner would evidently create a likelihood of confusion among the purchasing public. But
even assuming, arguendo, that the trademark sought to be registered by respondent is
distinctively dissimilar from those of the petitioner, the likelihood of confusion would still
subsists, not on the purchaser's perception of the goods but on the origins thereof.
By appropriating the word "CONVERSE," respondent's products are likely to be
mistaken as having been produced by petitioner. "The risk of damage is not limited to a
possible confusion of goods but also includes confusion of reputation if the public could
reasonably assume that the goods of the parties originated from the same source. 2
That a foreign corporation has a right to maintain an action in the forum even if it is
not licensed to do business and is not actually doing business on its own therein has been
enunciated many times by this Court. ... a foreign corporation which has never done any
business in the Philippines and which is unlicensed and unregistered to do business here, but
is widely and favorably known in the Philippines through the use therein of its products bearing
its corporate and tradename, has a legal right to maintain an action in the Philippines to
H. TAN, 2018
restrain the residents and inhabitants thereof from organizing a corporation therein bearing
the same name as the foreign corporation, when it appears that they have personal knowledge
of the existence of such a foreign corporation, and it is apparent that the purpose of the
proposed domestic corporation is to deal and trade in the same goods as those of the foreign
corporation.
Since it is the trade and not the mark that is to be protected, a trademark
acknowledges no territorial boundaries of municipalities or states or nations, but extends to
every market where the trader's goods have become known and Identified by the use of the
mark.
"a trade name [corporate name] shall be protected in all the countries of the Union
without the obligation of filing or registration, whether or not it forms part of the trademark.
" Tradenames of persons described in the first paragraph of this section shall be protected
without the obligation of filing or registration whether or not they form parts of marks.
2. What May Not Be Used As A Trademark?
 Sec. 165.1, Trade Names or Business Names. –
165.1. A name or designation may not be used as a trade name
If by its nature or the use to which such name or designation may be put,
it is contrary to public order or morals and
if, in particular, it is liable to deceive trade circles or the public as to the
nature of the enterprise identified by that name.
165.2.
(a) Notwithstanding any laws or regulations providing for any
obligation to register trade names, such names shall be protected,
even prior to or without registration, against any unlawful act
committed by third parties.
(b) In particular, any subsequent use of the trade name by a third party,
whether as a trade name or a mark or collective mark, or any such
use of a similar trade name or mark, likely to mislead the public,
shall be deemed unlawful.
165.3. The remedies provided for in Sections 153 to 156 and Sections 166 and
167 shall apply mutatis mutandis.
o Cancellation
o Infringement
o TRO
o Unfair competition
165.4. Any change in the ownership of a trade name shall be made with the
transfer of the enterprise or part thereof identified by that name. The provisions
of Subsections 149.2 to 149.4 shall apply mutatis mutandis.
3. Rights of the Tradename Owner
 Secs. 165.2, IPC – see above
 Sec. 165.3, IPC – see above
 Sec. 165.4, IPC – see above
5) Philips Export v. CA, 206 SCRA 457, G.R. No. 96161 [21 February 1992]
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
Philips Export B.V. (PEBV), a foreign corporation, although not engaged in business
here, is the registered owner of the trademarks PHILIPS and PHILIPS SHIELD EMBLEM. Philips
Electrical and Philips Industrial, authorized users of the trademarks PHILIPS and PHILIPS SHIELD
EMBLEM, were incorporated. All petitioner corporations belong to the PHILIPS Group of
Companies.
Standard Philips, on the other hand, was issued a Certificate of Registration by respondent
Commission.
Petitioners filed a letter complaint with the SEC asking for the cancellation of the word
"PHILIPS" from Respondent's corporate name in view of the prior registration of the trademark
"PHILIPS" and the logo "PHILIPS SHIELD EMBLEM" in the name of Petitioner, PEBV, and the
previous registration of Petitioners Philips Electrical and Philips Industrial with the SEC,
alleging, among others, that Respondent's use of the word PHILIPS amounts to an infringement
and clear violation of Petitioners' exclusive right to use the same considering that both parties
engage in the same business.
Respondent countered that Petitioner PEBV has no legal capacity to sue; that its use of its
corporate name is not at all similar to Petitioners' trademark PHILIPS when considered in its
entirety; and that its products consisting of chain rollers, belts, bearings and cutting saw are
grossly different from Petitioners' electrical products.
The hearing officer ruled that there is no confusing similarity between Petitioners' and
Respondent's corporate names as those of the Petitioners contain at least two words different
from that of the Respondent.
HELD:
A corporation's right to use its corporate and trade name is a property right, a right in
rem, which it may assert and protect against the world in the same manner as it may protect 89
its tangible property, real or personal, against trespass or conversion. It is regarded, to a
certain extent, as a property right and one which cannot be impaired or defeated by
subsequent appropriation by another corporation in the same field.
A name is peculiarly important as necessary to the very existence of a corporation. Its
name is one of its attributes, an element of its existence, and essential to its identity.
The general rule as to corporations is that each corporation must have a name by which
it is to sue and be sued and do all legal acts. The name of a corporation in this respect
designates the corporation in the same manner as the name of an individual designates the
person; and the right to use its corporate name is as much a part of the corporate franchise as
any other privilege granted.
A corporation acquires its name by choice and need not select a name identical with or
similar to one already appropriated by a senior corporation while an individual's name is
thrust upon him. A corporation can no more use a corporate name in violation of the rights
of others than an individual can use his name legally acquired so as to mislead the public and
injure another.
Our own Corporation Code, in its Section 18, expressly provides that:
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 protected by law or is patently deceptive, confusing
or contrary to existing law. Where a change in a corporate name is approved, the commission
shall issue an amended certificate of incorporation under the amended name.
H. TAN, 2018
 The statutory prohibition cannot be any clearer. To come within its scope, two requisites
must be proven, namely:
1) that the complainant corporation acquired a prior right over the use of such
corporate name; and
2) the proposed name is either:
a) identical; or
b) deceptively or confusingly similar to that of any existing corporation or to
any other name already protected by law; or
c) patently deceptive, confusing or contrary to existing law.
The right to the exclusive use of a corporate name with freedom from infringement by
similarity is determined by priority of adoption. In this regard, there is no doubt with respect
to Petitioners' prior adoption of' the name ''PHILIPS" as part of its corporate name. Philips
Electrical and Philips Industrial were incorporated on 29 August 1956 and 25 May 1956,
respectively, while Standard Philips was issued a Certificate of Registration on 12 April 1982,
26 years later. PEBV has also used the trademark "PHILIPS" on electrical lamps of all types and
their accessories since 30 September 1922, as evidenced by Certificate of Registration No.
1651.
While the corporate names of Petitioners and Private Respondent are not identical, a
reading of Petitioner's corporate names, to wit: PHILIPS EXPORT B.V., PHILIPS ELECTRICAL
LAMPS, INC. and PHILIPS INDUSTRIAL DEVELOPMENT, INC., inevitably leads one to conclude
that "PHILIPS" is, indeed, the dominant word in that all the companies affiliated or associated
with the principal corporation, PEBV, are known in the Philippines and abroad as the PHILIPS
Group of Companies.
As aptly pointed out by Petitioners, respondent's choice of "PHILIPS" as part of its
corporate name [STANDARD PHILIPS CORPORATION] . . . tends to show said respondent's
intention to ride on the popularity and established goodwill of said petitioner's business
throughout the world" (Rollo, p. 137). The subsequent appropriator of the name or one
confusingly similar thereto usually seeks an unfair advantage, a free ride of another's goodwill
A corporation has an exclusive right to the use of its name, which may be protected by
injunction upon a principle similar to that upon which persons are protected in the use of
trademarks and tradenames. Such principle proceeds upon the theory that it is a fraud on the
corporation which has acquired a right to that name and perhaps carried on its business
thereunder, that another should attempt to use the same name, or the same name with a
slight variation in such a way as to induce persons to deal with it in the belief that they are
dealing with the corporation which has given a reputation to the name.
Notably, too, Respondent's name actually contains only a single word, that is,
"STANDARD", different from that of Petitioners inasmuch as the inclusion of the term
"Corporation" or "Corp." merely serves the Purpose of distinguishing the corporation from
partnerships and other business organizations.
The fact that there are other companies engaged in other lines of business using the word
"PHILIPS" as part of their corporate names is no defense and does not warrant the use by
Private Respondent of such word which constitutes an essential feature of Petitioners'
corporate name previously adopted and registered and-having acquired the status of a well-
known mark in the Philippines and internationally as well.
As a general rule, parties organizing a corporation must choose a name at their peril; and
the use of a name similar to one adopted by another corporation, whether a business or a
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
nonbusiness or non-profit organization if misleading and likely to injure it in the exercise in its
corporate functions, regardless of intent, may be prevented by the corporation having the
prior right, by a suit for injunction against the new corporation to prevent the use of the name
6) Armco Steel Corporation v. SEC, 156 SCRA 822, G.R. No. 54580 [29 December 1987]
A corporation organized in Ohio, U.S.A., ARMCO-OHIO, obtained a Certificate of
Registration for its trademark consisting of the word "ARMCO" and a triangular device for
"ferrous metals and ferrous metal castings and forgings." It filed an "Affidavit of Use" for said
trademark, which was subsequently accepted and for which the Patent Office issued the
corresponding notice of acceptance of "Affidavit of Use."
ARMCO Marsteel-Alloy Corporation was also incorporated under its original name
Marsteel Alloy Company, Inc. but its name was changed to ARMCO-Marsteel, by amendment
of its Articles of Incorporation after the ARMCO-Ohio purchased 40% of its capital stock. Both
said corporations are engaged in the manufacture of steel products.
ARMCO-Ohio and ARMCO-Marsteel then filed a petition in SEC to compel ARMCO-
Philippines to change its corporate name on the ground that it is very similar, if not exactly the
same as the name of one of the petitioners.
SEC granted the petition and ARMCO STEEL CORPORATION was ordered to take out
'ARMCO' and substitute another word in lieu thereof in its corporate name by amending the
articles of incorporation to that effect. The order became final and executory.
Respondent amended its articles of incorporation by changing its name to "ARMCO
structures, Inc." which was filed with and approved by the SEC. Petitioners then alleged that
the change of name of said respondent was not done in good faith and is not in accordance
with the order of the Commission. Subsequently, petitioners filed a motion to cite said 90
respondent in contempt for disobeying the orders.
The SEC found that the respondent have not complied with the final order and required
them to show cause why they should not be punished for contempt by the Commission.
HELD:
Far from complying with said order petitioner amended its corporate name into ARMCO
Structures, Inc., and secured its approval by the SEC. That this amendment was made by
petitioner without the knowledge of the proper authorities of the SEC is home by the fact that
thereafter an order was issued by the SEC requiring petitioner to comply with the order of the
Commission.
When the attention of the SEC was called by petitioner that the change of corporate name
had been undertaken by it to ARMCO Structures, Inc. and asked that it be considered as a
substantial compliance with the order, the SEC ruled as follows: The fact that the SEC issued
its certificate of filing of amended articles of incorporation, is nothing but an illusory approval
of the change of corporate name and a self-induced protection from the Commission to further
exact compliance of the Order.
Craftily, the SEC was made to issue such certificate during its unguarded moment. Verily,
the certificate could not have been issued were it not for such lapses or had respondent been
in good faith by making the proper disclosures of the circumstances which led it to amend its
articles of incorporation.
The Court finds that the said amendment in the corporate name of petitioner is not in
substantial compliance with the order of February 14, 1975. Indeed it is in contravention
therewith. To repeat, the order was for the removal of the word "ARMCO" from the corporate
H. TAN, 2018
name of the petitioner which it failed to do. And even if this change of corporate name was
erroneously accepted and approved in the SEC it cannot thereby legalize nor change what is
clearly unauthorized if not contemptuous act of petitioner in securing the registration of a new
corporate name against the very order of the SEC.
By mere looking at the names it is clear that the name of petitioner, ARMCO STEEL
CORPORATION (of Ohio, U.S.A.), and that of the respondent, ARMCO STEEL CORPORATION,
are not only similar but Identical and the words "of Ohio, U.S.A.," are being used only to
Identify petitioner ARMCO STEEL-OHIO as a U.S. corporation.
It is indisputable that ARMCO-STEEL-OHIO, having patented the term 'Armco' as part of
its trademark on its steel products, is entitled to protection in the use thereof in the
Philippines. The term "Armco" is now being used on the products being manufactured and sold
in this country by Armco-Marsteel by virtue of its tie-up with ARMCO-STEEL-OHIO. Clearly, the
two companies have the right to the exclusive use and enjoyment of said term.
ARMCO STEEL-PHILIPPINES, has not only an Identical name but also a similar line of
business, as shown above, as that of ARMCO STEEL- OHIO. People who are buying and using
products bearing the trademark "Armco" might be led to believe that such products are
manufactured by the respondent, when in fact, they might actually be produced by the
petitioners. Thus, the goodwill that should grow and inure to the benefit of petitioners could
be impaired and prejudiced by the continued use of the same term by the respondent.
7) Western Equipment & Supple Co. v. Reyes, 51 Phil 115 [1927]
Has a foreign corporation which has never done business in the Philippine Islands, and
which is unlicensed and unregistered therein, any right to maintain an action to restrain
residents and inhabitants of the Philippine Islands from organizing a corporation therein
bearing the same name as such foreign corporation, when said residents and inhabitants have
knowledge of the existence of such foreign corporation, having dealt with it, and sold its
manufactures, and when said foreign corporation is widely and favorably known in the
Philippine Islands through the use therein of its products bearing its corporate and trade name,
and when the purpose of the proposed domestic corporation is to deal in precisely the same
goods as those of the foreign corporation?
The sole purpose of the action:
"Is to protect its reputation, its corporate name, its goodwill, whenever that reputation,
corporate name or goodwill have, through the natural development of its trade, established
themselves."
And it contends that its rights to the use of its corporate and trade name: Is a property
right, a right in rem, which may assert and protect against all the world, in any of the courts of
the world — even in jurisdictions where it does not transact business — just the same as it
may protect its tangible property, real or personal, against trespass, or conversion
That point is sustained by the authorities: Since it is the trade and not the mark that is
to be protect, a trade-mark acknowledges no territorial boundaries of municipalities or
states or nations, but extends to every market where the trader's goods have become known
and identified by the use of the mark.
In order that competition in business should be unfair in the sense necessary to justify
the granting of an injunction to restrain such competition it must appear that there has been,
or is likely to be, a diversion of trade from the business of the complainant to that of the
wrongdoer, or methods generally recognized as unfair; . . . In most, if not all, of the cases in
TRADEMARK COMPREHENSIVE REVIEWER – ATTY. RICO V. DOMINGO
which relief has hitherto been granted against unfair competition the means and methods
adopted by the wrongdoer in order to divert the coveted trade from his rival have been such
as were calculated to deceive and mislead the public into thinking that the goods or business
of the wrongdoer are the goods or business of the rival. Diversion of trade is really the
fundamental thing here, and if diversion of trade be accomplished by any means which
according to accepted legal canons are unfair, the aggrieved party is entitled to relief.
It is very apparent that the purpose and intent of Herman and his associates in seeking to
incorporate under the name of Western Electric Company, Inc., was to unfairly and unjustly
compete in the Philippine Islands with the Western Electric Company, Inc., in articles which
are manufactured by, and bear the name of, that company, all of which is prohibited by Act
No. 666, and was made known to the defendant Reyes by the letter known in the record to
the defendant Reyes by the letter known in the record as Exhibit A.
Herman is actually asking the Government to permit them to pirate the name of the
Western Electric Company, by incorporating thereunder, so that they may deceive the people
of the Philippine Islands into thinking that the goods they propose to sell are goods of the
manufacture of the real Western Electric Company.
It would be a gross prostitution of the powers of government to utilize those powers in
such a way as to authorize such a fraud upon the people governed. It would be the grossest
abuse of discretion to permit these defendants to usurp the corporate mane of the plaintiff,
and to trade thereupon in these Islands, in fraud of the Philippine public and of the true owners
of the name and the goodwill incidental thereto.
The plaintiff, Western Electric Company, Inc., has been in existence as a corporation for
over fifty years, during which time it has established a reputation all over the world including
the Philippine Islands, for the kind and quality of its manufactured articles, and it is very 91
apparent that the whole purpose and intent of Herman and his associates in seeking to
incorporate another corporation under the identical name of Western Electric Company, Inc.,
and for the same identical purpose as that of the plaintiff, is to trespass upon and profit by its
good name and business reputation. The very fact that Herman and his associates have sought
the use of that particular name for that identical purpose is conclusive evidence of the
fraudulent intent with which it is done.
K. COLLECTIVE MARKS; Definition
1. Sec. 121.2,
"Collective mark" means any visible sign designated as such in the application for
registration and capable 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;
(Sec. 40, R.A. No. 166a)
2. Section 167 Collective Marks. –
167.1. Subject to Subsections 167.2 and 167.3, Sections 122 to 164 and 166 shall
apply to collective marks, except that references therein to "mark" shall be read
as "collective mark".
167.2.(a) An application for registration of a collective mark shall designate the
mark as a collective mark and shall be accompanied by a copy of the agreement, if
any, governing the use of the collective mark.
H. TAN, 2018
 (b) The registered owner of a collective mark shall notify the Director of any
changes made in respect of the agreement referred to in paragraph (a).
167.3. In addition to the grounds provided in Section 149, the Court shall cancel
the registration of a collective mark if the person requesting the cancellation
proves that only the registered owner uses the mark, or that he uses or permits its
use in contravention of the agreements referred to in Subsection 166.2 or that he
uses or permits its use in a manner liable to deceive trade circles or the public as
to the origin or any other common characteristics of the goods or services
concerned.
167.4. The registration of a collective mark, or an application therefor shall not
be the subject of a license contract. (Sec. 40, R.A. No. 166a)

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