Converse Rubber Corporation v.

Universal Rubber Products

January 8, 1987
Fernan

DOCTRINE: A tradename 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. It refers to the
business and its goodwill (A trademark refers to the goods itself). Ownership of a tradename is a property right
which the owner is entitled to protect when there is damage to him from confusion of goods in the mind of the
public.

Tradenames of persons who are nationals of, domiciled, or have a bona fide or effective business or commercial
establishment in any foreign country, which is a party to an international convention or treaty relating to marks
or tradenames on the repression of unfair competition to which the Philippines may be a party, shall be protected
without the obligation of filing or registration whether or not they form parts of marks.

FACTS:
• Universal Rubber Products filed an application with the Philippine Patent Office for the registration of the
trademark “Universal Converse and Device” for rubber shoes and rubber slippers.
• Converse Rubber Corporation filed its opposition to the application for registration. It averred that:
o The trademark sought to be registered is confusingly similar to the word “Converse” which is part
of its corporate name, as to likely deceive purchasers. Universal’s products may be mistaken by
the unwary public to be manufactured by Converse.
o The registration of the trademark in favor of Universal will cause great and irreparable injury to
the business reputation and goodwill of Converse.
• At the pre-trial, the parties agreed to the stipulation of the following facts:
o Converse was duly organized under Massachusetts law and has been in existence since 1946.
o Converse is not licensed to do business in the Philippines.
o Converse manufactures rubber shoes and uses the trademarks “Chuck Taylor” and “All-Star”
thereon.
• At the trial, Converse presented Carmen Pacquing, a private merchant. She testified that:
o She had been selling Converse rubber shoes in the local market since 1956, and that sales of
Converse rubber shoes averaged 12 – 20 pairs a month purchased mostly by private school
(Ateneo, La Salle, SAN Beda Beda) basketball players.
o She knew Converse’s rubber shoes were from the US because the trademark says “Made in the
USA” and is accompanied by a blue or red star.
o In the invoices she would issue for sales of Converse’s rubber shoes, she would place “Converse
Chuck Taylor,” “Converse All Star” or “All Star Converse Chuck Taylor.”
• At the trial, Universal presented its corporate secretary (unnamed). She testified that:
o Universal has been selling “Universal Converse” sandals and rubber shoes since 1962 and 1963,
respectively.
o She was unaware of the name “Converse” prior to her corporation’s sale of “Universal Converse”
rubber shoes and sandals.
• The Director of Patents gave due course to Universal’s application. Converse’s MR was also denied.
o Converse failed to present proof that the word “Converse” has become so identified with it.
o Converse only presented a single witness who has never even dealt with Converse. In fact, the
entry of Converse’s goods in the Philippines was effected without its hand.
o Converse’s proof of its corporate personality cannot establish use of the word “Converse,” as
Converse is not even licenses to do business in the Philippines and does not do business on its
own.
o Besides, Converse uses the trademarks “Chuck Taylor” and “All-Star” on its rubber shoes, and
not “Converse.”
o No determination can be made as to whether the word “Converse” appears on Converse’s rubber
shoes, as it never presented any label or specimen of its shoes.
o Hence, this petition.
ISSUE: WON Universal’s partial appropriation of Converse’s corporate name is of such a character that it is
calculated to deceive or confuse the public, to the injury of Converse –

Tradename
- Any individual name or surname, firm name, device, or word used by manufacturers, industrialists,
merchants, and others to identify their businesses, vocations, or occupations
- Refers to the business and its goodwill (A trademark refers to the goods itself)
- Ownership of a tradename is a property right which the owner is entitled to protect when there is damage
to him from confusion of goods in the mind of the public

Case at bar
- A cursory appreciation of Converse’s corporate name, “Converse Rubber Corporation” will show that the
word “Converse” is the dominant word which identifies it from other corporations engaged in similar
business
- Universal admitted in the stipulation of facts Converse’s existence since 1946. This admission betrays its
knowledge of the reputation and business of Converse even before its application.
o Therefore, Universal has no right to appropriate the word for use on its products which are similar
to Converse’s. A corporation is entitled to the cancellation of a mark that is confusingly similar to
its corporate name.
- Universal’s witness had no idea why the corporation “Universal Converse” as its trademark. Such
unexplained use by Universal of the dominant word of Converse’s corporate name lends itself open to
the suspicion of fraudulent motive.
o When there is no reasonable explanation for the defendant’s choice of a mark, though the field
for his selection was so broad, the inference is inevitable that it was chosen deliberately to
deceive.
- The sales invoices submitted by the witness show that it is the word “Converse” that mainly identifies
Converse’s products. (ex. Converse Chuck Taylor, Converse All Star, All Star Converse Chuck Taylor,
etc.)
o Thus, the word “Converse” has grown to be identified with Converse’s products.
o The sales invoices provide the best proof that there were actual sales of Converse’s products in
the country.
o The most convincing proof of use of a mark in commerce is testimony of such witnesses as
customers. The witness has testified as such customer.
- All brands of goods filter into the market, indiscriminately sold by merchants, not necessarily with the
knowledge or consent of the manufacturer.
o The actual sale of goods in the local market is what establishes trademark use, and thus serves
as the basis for any action aimed at trademark pre-exemption.
o 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 cannot earn a reputation or goodwill as regards its
products.
- There is also confusing similarity between Universal’s and Converse’s trademarks, which could confuse
the purchasing public to the prejudice of Converse.
o The trademarks of both Universal and Converse are imprinted in a circular manner on the side of
the shoes.
o It is sufficient that the similarity between the two labels is such that there is a possibility or
likelihood of the ordinary purchaser of the older brand to mistake the new brand for it.
- Assuming that the trademark sought to be registered is distinctively dissimilar from Converse’s, the
likelihood of confusion still subsists on the origins of the goods.
o By appropriating the word “Converse,” Universal’s products are likely to be mistaken as having
been produced by Converse.
o The risk of damage also includes confusion of reputation if the public could reasonably assume
that the goods of the parties originates from the same source.
DISPOSITIVE: Director of Patents set aside. Universal’s application is denied.