Ang v Teodoro

Facts:

Respondent Teodoro has long been using ‘Ang Tibay’ both as trademark and tradename in the manufacture and sale of its
slippers, shoes and indoor baseballs when he formally registered it. Meanwhile, petitioner Ang registered the same trademark
‘Ang Tibay’ for its products of pants and shirts. Respondent moved to cancel the registration of petitioner’s mark. The trial court
found for petitioner Ang. CA reversed the judgment.  Petitioner argues the validity of the mark being descriptive; that it had not
acquired secondary meaning in favor of respondent; and that there can be no infringement/unfair competition because the goods
are not similar.

Issues:

(1) Whether or not ‘ANG TIBAY’ is a descriptive term not registrable.

(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a secondary meaning.

(3) Whether or not there is trademark infringement and/or unfair competition between unrelated goods.

Ruling:                              

(1) NO. The phrase “Ang Tibay” is an exclamation denoting administration of strength or durability. For instance, one who tries
hard but fails to break an object exclaims, “Ang tibay!” (How strong!”) 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.” From all of this we deduce that “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 trademark or tradename. 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
trademark.

(2) NO. In view of the conclusion we have reached upon the first assignment of error, 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. We have said that the
phrase “Ang Tibay,” being neither geographic nor descriptive, was originally capable of exclusive appropriation as a trade-mark.
But were it not so, the application of the doctrine of secondary meaning made by the Court of Appeals could nevertheless be fully
sustained because, in any event, by respondent’s long and exclusive use of said phrase with reference to his products and his
business, it has acquired a proprietary connotation.

(3) YES. In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair Trading, the test
employed by the courts to determine whether noncompeting goods are or are not of the same class is confusion as to the origin of
the goods of the second user. 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. The Court of Appeals found in this case that 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.

Kolin vs Kolin

Facts: On February 29, 1996, Taiwan Kolin filed with the Intellectual Property Office (IPO), docketed as Application No. 4-
1996-106310, for the use of  “KOLIN” on a combination of goods, including colored televisions, refrigerators, window-type and
split-type air conditioners, electric fans and water dispensers. Application No. 4-1996-106310 would eventually be considered
abandoned for Taiwan Kolin’s failure to respond to IPO’s Paper No. 5 requiring it to elect one class of good for its coverage.
However, the same application was subsequently revived through Application Serial No. 4-2002-011002, with petitioner electing
Class 9 as the subject of its application, particularly: television sets, cassette recorder, VCD Amplifiers, camcorders and other
audio/video electronic equipment, flat iron, vacuum cleaners, cordless handsets, videophones, facsimile machines, teleprinters,
cellular phones and automatic goods vending machine.
On July 13, 2006, respondent Kolin Electronics Co., Inc. (Kolin Electronics) opposed petitioner’s revived application arguing
that the mark Taiwan Kolin seeks to register is identical, if not confusingly similar, with its “KOLIN” mark registered on
November 23, 2003, covering the following products under Class 9 of the NCL: automatic voltage regulator, converter,
recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC.5cralawred

Issue:

Whether or not petitioner is entitled to its trademark registration of “KOLIN” over its specific goods of television sets and DVD
players.

Ruling: The Supreme Court held that he petitioner’s trademark registration not only covers unrelated good, but is also incapable
of deceiving the ordinary intelligent buyer. The ordinary purchaser must be thought of as having, and credited with, at least a
modicum of intelligence to be able to see the differences between the two trademarks in question.

On the arguments that both their goods belong to Class 9 of the NCL, the Supreme Court ruled that identical marks may be
registered for products from the same classification.  The mere uniformity in categorization, by itself, does not automatically
preclude the registration of what appears to be an identical mark, if that be the case.

Moreover, the Supreme Court stated that the products covered by petitioner’s application and respondent’s registration are
unrelated.  It agreed with the petitioner on the following:

Taiwan Kolin’s goods are classified as home appliances as opposed to Kolin Electronics’ goods which are power supply and
audio equipment accessories;ChanRoblesVirtualawlibrary

Taiwan Kolin’s television sets and DVD players perform distinct function and purpose from Kolin Electronics’ power supply and
audio equipment; and

Taiwan Kolin sells and distributes its various home appliance products on wholesale and to accredited dealers, whereas Kolin
Electronics’ goods are sold and flow through electrical and hardware stores.

BERT R. BAGANO, petitioner,
vs.
THE DIRECTOR OF PATENTS and THE INTERNATIONAL PHARMACEUTICALS, INC., respondents.

Francis M. Zosa and Cristeta Castillo-Bagano for petitioner.

Isabelo V. Gandiongco for respondent International Pharmaceuticals, Inc.
Solicitor General for respondent Director of Patents.

PAREDES, J.:

This is an inter-partes proceedings, in connection with the registration of the Trademark "EFFICASCENT OIL," between
petitioner herein and the respondent International Pharmaceuticals, Inc.

A brief on the facts shows that on June 23, 1959, Bert R. Bagano filed with the Philippines Patent Office, a petition for
registration of the trademark "Efficascent Oil" in his favor. On August 17, 1958, respondent International Pharmaceuticals, Inc.
also presented with said office a petition for registration of the same trademark. The petitions, referring to the same trademark,
were heard for the purpose of establishing the question of priority of adoption and use. The Director of Patents, on June 29, 1962,
rendered judgment, the pertinent portions of which recite:

... . It is alleged and claimed in their respective applications that Bert. R. Bagano, hereafter referred to as Senior Party, had
adopted and has been using his trademark since February 1, 1959, which he tried to amend in the course of the hearing to
December 18, 1958, while the International Pharmaceutical, Inc., hereinafter referred to as Junior Party, has adopted and had
been, through its predecessor in interest, continuously using its trademark since June 8, 1949.

The evidence on record shows that it was the Junior Party's predecessor in interest, Miguel K. Chiong of Cebu City, who owned
and who was given permit by the Board of Pharmaceutical Examiners and Inspectors to prepare through his pharmaceutical
laboratory called Tropical Herb Service his pharmaceutical preparation bearing the mark "EFFICOL" which was duly analyzed
and found to be not adulterated and misbranded under Laboratory No. D-48-1075, on October 4, 1948 (Exh. "H"). He later
changed the mark of his product to "EFFICASCENT OIL" and the name of his laboratory to Tropical Pharmaceutical Laboratory.
The changes were duly approved and noted in the record of the Board of Pharmaceutical Examiners and Inspectors on June 8,
1949 (Exh. I). Another permit, numbered 49, was issued on February 15, 1954 to Miguel K. Chiong to operate a pharmaceutical
and drug manufacturing laboratory called Tropical Pharmaceutical Laboratory under the management of pharmacist Cristeta
Castillo Bagano (Exhs. J & N).

On January 16, 1959, Miguel K. Chiong, together with his daughter Rebecca Chiong Llaguno sold the formula of his
pharmaceutical product registered under No. D3-718 with the Board of Pharmaceutical Examiners and Inspectors together with
its goodwill, tradename and the right to manufacture the said "EFFICASCENT OIL" for P10,000.00 to be paid in installments, to
the Wong Brothers namely, George, David, Sergio, Pio and Sixto, all of Cebu City (Exh. G). Upon payment of the remaining
balance of the selling price, the final deed of sale was executed on June 9, 1960 (Exh. G-1). The Wong brothers thereafter formed
a corporation, the International Pharmaceutical, Inc., to operate a laboratory for the manufacture of said product, among its other
pharmaceutical products, and to distribute the same (Exh. K).

Again, said pharmaceutical product was submitted by the Junior Party to, and was duly analyzed by, the Public Health Research
Laboratory under Laboratory No. D59-1010, and was found not adulterated nor misbranded and so was permitted, under permit
No. 157, issued on June 5, 1959, by the Drug and Cosmetic Inspection to continue to manufacture and sell the same (Exhs. L, M
& O).

On the side of the Junior Party, we do find in conclusion that, as the prior and continuous use by its predecessor in interest inures
to its benefit, it has adopted and has been continuously using its trademark on its pharmaceutical preparation thru its predecessor
in interest since 1949, as shown by sales invoices (Exhs. P to P-30).

On the side of the Senior Party, we find no convincing and conclusive proof that he had adopted and used his alleged trademark
earlier than the date of first use by the Junior Party. The "purchaser's contract" (Exhs. 7 to 8-E) submitted together with his
uncorroborated testimony when he testified in his behalf as his witness, failed to satisfactorily show that he is actually the
manufacturer and owner of the products listed in the said contract. It tends to show that he has been dealing only on the product
bearing the mark "EFFICASCENT OIL" since December 12, 1958, which, if considered as his date of first use, is very much
later than June 8, 1949, the date of first use asserted by the Junior Party.

We consider it quite significantly important that while on the one hand the Junior Party has submitted evidence that it has been
duly given permit by the proper government authority to manufacture and sell its product bearing the mark "EFFICASCENT
OIL," the Senior Party, on the other hand, has not been issued such permit to show prior use and adoption.

From the above facts and circumstances, the International Pharmaceuticals, Inc. has priority of adoption and use of its trademark,
and has a better right to its registration than the Senior Party.

WHEREFORE, Application Serial No. 7213 of International Pharmaceuticals, Inc. should be, as it is hereby given due course.
Application Serial No. 7114 of Bert R. Bagano is hereby rejected.

The above judgment is now before Us for Review on four (4) counts, all of which pose the issue of whether the respondent
Director of Patents was right in concluding that the appellee International Pharmaceuticals, Inc., had priority of adoption and use
of the trademark "EFFICASCENT OIL."

It is almost trite to state here that in cases of the nature as the one at bar, only questions of law are to be raised in order that this
Court could exercise its appellate jurisdiction and review the decision. Basically, the errors assigned call for an examination of
the evidence, which is primarily a question of fact. When the Director of Patents found that respondent International
Pharmaceuticals, Inc., had priority of adoption and use, which is fully supported by the evidence, documentary and testimonial,
such was a conclusion of fact to which this Court is bound.

The petitioner claims that the evidence adduced by the respondent company, was hearsay and self-serving. The respondent
Director of Patents found otherwise, to which We agree. The evidence on record consisted of permits granted by the Board of
Pharmaceutical Examiners and Inspectors to Miguel K. Chiong, predecessor-in-interest of respondent International
Pharmaceuticals, Inc., to prepare, sell and distribute his product "EFFICOL" (Exh. H), which name was later changed to
"EFFICASCENT OIL" with the approval of the same Board (Exh. I). Exhibits P to P-30, sales invoices, also showed that the
product "EFFICASCENT OIL" had been sold to the public since 1949 to 1959. It was also shown that after Chiong sold his
rights to the product, the purchasers thereof (the Wong Brothers) subsequently formed a corporation (respondent International
Pharmaceuticals, Inc.) for the purpose of operating a laboratory and selling drugs, one of which is the preparation known as
"EFFICASCENT OIL" (Exh. K) and that this product was submitted for analysis to the Drug and Cosmetics Inspection Division
(Exh. M). Petitioner claims that the mere issuance of permits to prepare did not necessarily connote the ownership and sale to the
public of the product. Granting this to be true, under the facts obtaining in the case, We are inclined to believe that respondent
had priority of adoption and use of the trademark. This conclusion is augmented if We take into consideration the fact that
petitioner's wife had been admittedly in the employ of Miguel K. Chiong, from 1948 to 1957, as a pharmacist, and, therefore, had
knowledge of the manufacture and sale of the product. The evidence on record, therefore, sufficiently supports the finding of
priority of adoption and use by the respondent International Pharmaceuticals, Inc. of the trademark "EFFICASCENT OIL,"
thereby giving more right to its registration than petitioner.

PREMISES CONSIDERED, the decision appealed from should be, as it is hereby affirmed in all respects, with costs against
petitioner in both instances.

ACOJE MINING CO., INC., petitioner-applicant, vs.

THE DIRECTOR OF PATENTS, respondent.

FERNANDO, J.:

Facts:

Acoje Mining Co., (petitioner) filed an application for registration of the trademark Lotus to be used on its soy sauce product. On
the other hand, Philippine Refining Co., (PRC), another domestic corporation, was also using the same trademark Lotus on its
edible oil. The Chief of the trademark examiner rejected the application of Acoje due to its confusing similarity with that of the
trademark already registered in favour of the PRC. The Director of Patents upheld the view of the trademark examiner on the
ground that while there is a difference between soy sauce and edible oil and there were dissimilarities in the trademarks, still the
close relationship of the products, soy sauce and edible oil, is such that purchasers would be misled into believing that they have
a common source. Hence, this present petition for review.

Issue:

Whether or not Acoje Mining Co., may register for the purpose of advertising its product, soy sauce, the trademark Lotus.

Held:

The Court answered in the affirmative and the decision of the Director of Patents should be reversed. The determinative factor in
a contest involving registration of trademark is not whether the challenging mark would actually cause confusion or deception of
the purchasers but whether the use of the mark would likely cause confusion or mistake on the part of the buying public. The law
does not require that the competing trademarks must be so identical as to produce actual error or mistake; it would be sufficient,
for purposes of the law, that the similarity between the two labels, is such that there is a possibility or likelihood of the purchaser
of the older brand mistaking the newer brand for it.

In the present case, there is quite difference between soy sauce and edible oil. If one is in the market for the former, he
is not likely to purchase the latter just because of the trademark Lotus. There is no denying that the possibility of confusion is
remote considering the difference in the type used, the coloring, the petitioner’s trademark being in yellow and red while that of
the PRC being in green and yellow, and the much smaller size of petitioner’s trademark.

Pag-asa Industrial Corp. vs. CA 118 SCRA 526 (1982)

FACTS: Yoshida Kogyo Kabushiki Kaisha was issued a certificate of Registration in 1961 for the trademark YKK for slide
fastener and zippers. Respondent Kaisha filed with the Director of Patents a petition for cancellation of petitioner's registration of
exactly the same trademark "YKK" alleging that both trademark ("YKK") are confusingly similar, being used on similar products
(slide fasteners or zippers) under the same classification of goods. The Director of Patents, finding the trademark in question
"YKK" brand to be confusingly similar, and regretting the negligence of his office in allowing the registration of the trademark
"YKK" in favor of petitioner notwithstanding the fact that the same trademark had long been previously registered in the name of
respondent Kaisha, cancelled Registration No. 13756 in the name of Petitioner Petitioner argued that there was laches on the part
of Kaisha considering that notwithstanding the fact that the trademark was registered for the use of petitioner, it was not until
January 23, 1975, that Kaisha filed a petition for cancellation after a lapse of almost seven (7) years.

ISSUE: Whether or not Pag-asa Industrial Corp is entitled to the use of the trademark. YES

RULING: The Trademark Law is very clear. It requires actual commercial use of the mark prior to its registration. There is no
dispute that respondent corporation 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. The invoices submitted by respondent
which were dated way back in 1957 show that the zippers sent to the Philippines were to be used as "samples" and "of no
commercial, value." It appears that it was only after more than seven (7) years when respondent sought the cancellation of the
trademark. An unreasonable length of time had already passed before respondent asserted its right to the trademark. There is a
presumption of neglect already amounting to "abandonment" of a right after a party had remained silent for quite a long time
during which petitioner had been openly using the trademark in question. Such inaction on the part of respondent entitles
petitioner to the equitable principle of laches. Respondent by its silence, must be aware that its "title" to the subject mark is
defective since it failed to conform with the provision of the law regarding prior use of the mark; and it must have been afraid
that it cannot fully substantiate its claim that the mark was commercially used in the Philippines. Surely, the evidence of
respondent showing that it had advertised in magazines such as Life and Time, cannot be considered as compliance with the law,
for it is of general knowledge that said magazines are not published in the Philippines, nor was there any showing that the
product so advertised was even sold here. Hence, to grant the application for cancellation would greatly prejudice petitioner since
respondent would be taking advantage of the goodwill already established by petitioner in selling its product, without the
respondent having incurred in any expense to gain this priceless asset.

Hickok v CA Digest

G.R. No. L-44707, August 31, 1982

Facts:

Petitioner is a foreign corporation and all its products are manufactures by Quality House Inc. The latter pays royalty to the
petitioner. Hickok registered the trademark 'Hickok' earlier and used it in the sale of leather wallets, key cases, money folds,
belts, men’s underwear, neckties, hankies, and men's socks. While Sam Bun Liong used the same trademark in the sale of
Marikina shoes. Both products have different channels of trade. The Patent Office did not grant the registration, but the Court of
Appeals reversed the PPO decision.

Issue: Is there infringement in this case?

NONE. Emphasis should be on the similarity of the products involves and not on the arbitrary classification or the general
description of their properties or characteristics. Also, 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 by others on unrelated articles of different kind.

There is a different design and coloring of the trademark itself. The 'Hickok' trademark is in red with white background in the
middle of 2 branches of laurel (in light gold) while the one used by Sam Bun Liong is the word 'Hickok ' in white with gold
background between 2 branches of laurel in red with the word 'shoes' also in red placed below the word 'Hickok'.

Faberge v IAC Digest

G.R. No. 71189, November 4, 1992

Facts of the Case:

Co Beng Kay applied for the registration of the trademark 'BRUTE' to be used it its underwear (briefs) products. The petitioner
opposed on the ground that there is similarity with their own symbol (BRUT, Brut33 & Device) used on its aftershave,
deodorant, cream shave, hairspray and hair shampoo/soaps and that it would cause injury to their business reputation. It must be
noted that the petitioner never applied for registration of said trademark for its brief products. The Patent Office allowed Co Beng
Kay the registration and this was further affirmed by the Court of Appeals.

Issue: Is there confusing similarity between the challenged marks and that its use would likely cause confusion on the part of the
purchasers?

HELD: NONE. Co Beng Kay may rightly appropriate the mark. In this case Sec. 20 (Philippine Intellectual Property Law) is
controlling. The certificate of registration issued confers the exclusive right to use its own symbol only to those goods specified
by the first user in the certificate, subject to any conditions or limitations stated therein. Moreover, the two products are so
dissimilar that a purchaser of one (a brief) would not be misled or mistaken into buying the other (such as an aftershave).

Mcdonald’s Corporation et.al. vs. L.C. Big Mak Burger, Inc., et. al., G.R. No. 143993, August 18, 2004

FACTS:

The court ruled that the use of the respondents of the “Big Mak” mark infringed the trademark of that of petitioner McDonald’s
“Big Mac”. Using the dominancy test, the court reasoned that both marks are closely similar (visually and orally). The law
prohibits usage of marks which might cause confusion and mistake or might deceive/mislead consumers as to the origin, general
appearance, nature, and kind, among others, of their products and/or services (Sec 155.1, ICP).

RULING:

The court not only ruled on the confusion of similar goods but also on the issue of confusion of business. The Court found that
petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark and that usage of respondents of the
“Big Mak” mark has unjustly created the impression that its business is approved and sponsored by, or affiliated with petitioners.

The court also found respondents guilty of unfair competition, reasoning that respondents passed off their products as though
they were of petitioner’s. Had respondents gave due notice as to who clearly sells the products, they would have only been guilty
of infringement.

Developers Group of Companies, Inc. vs. Shangri-la International Hotel Management, Inc. et. al. CA- G. R. CVNo. 53351

FACTS:

Petitioner was the owner of the “Shangri-La” and the “S” Logo since 1962 and is internationally well-known but is not doing
business in the Philippines since early 1980s. Respondent, on the other hand, was the registered owner of the Shangri-la and S
logo since 1983 and is using them since then. Petitioner prayed for the granting of its application for registration in the
Philippines while respondent filed for infringement against petitioner.
RULING: 

Since IPC of 1988 (RA 8293) did not provide for retroactive application, the Court held that petitioner cannot claim protection
under the Paris Convention and ruled that provisions under RA 166 should be applied. Thus, for not meeting the requirement of
actual use of commerce in the Philippines(Sec 2, RA 166, requirement for registration), petitioner’s registration cannot be
granted.

The Court also ruled that respondent also failed to meet the same requirement when it had the marks registered. Not only that,
respondent could not even be deemed the owner of the mark since ownership under Sec 2-A of RA 166 require that the name or
mark used must not be appropriated to another and it does not require actual use of a trademark within the Philippines in
contradistinction to Sec2. Petitioner was proven to be the owner and originator of the marks even if petitioner failed to comply
with Sec2 since it had been using said marks earlier and longer than respondent; such fact respondent knew. Petitioner could not,
therefore, be guilty of infringement for a mark which originally came from it.

IN-N-OUT BURGER v. SEHWANI, GR No. 179127, 2008-12-24

Facts:

On 2 June 1997, petitioner filed trademark and service mark applications with the Bureau of Trademarks (BOT) of the IPO for
"IN-N-OUT" and "IN-N-OUT Burger & Arrow Design."  Petitioner later found out, through the Official Action Papers issued by
the  IPO on

31 May 2000, that respondent Sehwani, Incorporated had already obtained Trademark Registration for the mark "IN N OUT (the
inside of the letter "O" formed like a star).

Petitioner eventually filed on 4 June 2001 before the Bureau of Legal Affairs (BLA) of the IPO an administrative complaint
against respondents for unfair competition and cancellation of trademark registration.

Petitioner pointed out that its internationally well-known trademarks and the mark of the respondents are all registered for the...
restaurant business and are clearly identical and confusingly similar.

Issues:

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.

Ruling:

In his Decision dated 23 December 2005, the IPO Director General ably explains the basis for his finding of the existence of
unfair competition in this case, viz:

The evidence on record shows that the [herein respondents] were not using their registered trademark but that of the [petitioner].

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.

[Respondents'] use of IN-N-OUT BURGER in busineses signages reveals fraudulent intent to deceive purchasers.

[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.
Principles:

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.

ASIA BREWERY, INC., petitioner,

vs.
THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION, respondents.

GRIÑO-AQUINO, J.:

Facts:

San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and unfair
competition on account of the latter’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 been market. A decision was rendered by the trial judge
dismissing SMC’s complaint because ABI has not committed trademark infringement or unfair competition against SMC for the
reason that the trademarks of each product has no significant similarity that would likely to cause confusion or mistake or to
deceive purchasers as to the source or origin of the beer in question. SMC appealed to the Court of Appeals wherein the decision
of the trial court was reversed. Hence, this present petition for certiorari filed by ABI.

Issue:

Whether or not ABI infringes SMC’s trademark: “San Miguel Pale Pilsen with Rectangular Hops and Malt Design,” and thereby
commits unfair competition against the latter.

Held:

No. There is absolutely no similarity in the dominant features of both trademarks. Infringement is determined by the “test of
dominancy” rather than by differences in variations in the details of one trademark and of another. It has been consistently held
that the question of infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form and color,
while relevant, is not conclusive. If the competing trademark contains the main or 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 marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive
purchasers.

In the case at bar, the trial court perceptively observed that the word “BEER” does not appear in SMC’s trademark,
just as the words “SAN MIGUEL” do not appear in the ABI’s trademark. 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.

Philip Morris, Inc. vs. Fortune Tobacco Corporation G.R. No. 158589. June 27, 2006

Facts: Petitioner Philip Morris, Inc. a corporation organized under the laws of the state of Virginia, USA, is the registered owner
of the trademark MARK VII for cigarettes. Benson and Hedges (Canada), Inc., a subsidiary of Philip Morris, Inc., is the
registered owner of the trademark MARK TEN for cigarettes. Another subsidiary of Philip Morris, Inc. the Swiss Company
Fabriques de Tabac Reunies, S.A., is the assignee of the trademark LARK. All are evidenced by Trademark Certificate of
Registration. On the other hand, Fortune Tobacco Corporation, a company organized in the Philippines, manufactures and sells
cigarettes using the trademark MARK. Philip Morris, Inc. filed a complaint for trademark infringement and damages against
Fortune Tobacco Corporation. The complaint was dismissed by the RTC Pasig City in its decision dated January 21, 2003.
Maintaining to have the standing to sue in the local forum and that respondent has committed trademark infringement, petitioners
went on appeal to the CA but CA affirmed the trial court’s decision. The CA found that MARK VII, MARK TEN and LARK do
not qualify as well-known marks entitled to protection even without the benefit of actual use in the local market and that the
similarities in the trademarks in question are insufficient as to cause deception or confusion tantamount to infringement. With the
motion for reconsideration denied in the CA, the petitioners filed a petition for review with the Supreme Court.

Issues: 1.) Whether or not petitioners, as Philippine registrants of trademarks, are entitled to enforce trademark rights in the
country.

2.) Whether or not respondent has committed trademark infringement against petitioners by its use of the mark MARK for its
cigarettes, hence liable for damages.

Ruling: 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, trademark deserves protection. It is for this reason that the petitioner’s recourse for their entitlement to
enforce trademark rights in this country and also the right to sue for trademark infringement in Philippine courts and be accorded
protection against unauthorized use of the Philippine-registered trademarks is understandable. Their standing to sue in Philippine
courts had been recognized by the CA but such right to sue does not necessarily mean protection of their trademarks in the
absence of actual use in the Philippines. But the petitioners are still foreign corporations. They may not sue on that basis alone of
their respective certificates of registration of trademarks unless their country grants similar rights and privileges to Filipino
citizens pursuant to Section 21-A of R.A. No. 166. This reciprocity requirement is a condition to file a suit by a foreign
corporation as ruled in Leviton Industries v. Salvador. The respective home country of the petitioner, namely, the United States,
Switzerland and Canada, together with the Philippines are members of the Paris Union. Philippines adherence to the Paris
Convention obligates the country to honor and enforce its provisions, however, this does not automatically entitle petitioners to
the protection of their trademark in our country without actual use of the marks in local commerce and trade because any
protection accorded has to be made subject to the limitations of Philippine laws. Significantly, registration in the Philippines of
trademarks does not convey an absolute right or exclusive ownership thereof. In Shangri-la v. Development Group of Companies,
the Court emphasized that trademark is a creation of use and, therefore, actual use is a prerequisite 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. With the foregoing perspective, it may be stated right off that the registration of a trademark unaccompanied by actual
use in the country accords the registrants only the standing to sue for infringements in Philippine Courts but entitlement to
protection of such trademark in the country is entirely different matter. On the main issue of infringement, the court, relying on
the holistic test ruled against the likelihood of confusion resulting in infringement arising from the respondent’s use of the
trademark MARK for its particular cigarette product. The striking dissimilarities are significant enough to warn any purchaser
that one is different from the other. This is upon considering the entire marking as a whole For lack of convincing proof on the
part of the petitioners of actual use of their registered trademark prior to respondents use of its mark and for petitioners failure to
demonstrate confusing similarity between said trademarks, the dismissal of their basic complaint of infringement and the plea for
damages are affirmed. The petition is denied. The assailed decision and resolution of the Court of Appeals are affirmed.

Del Monte vs Ca

Facts:

Petitioner Del Monte, an American corporation, granted Philpack the right to manufacture, distribute and sell in the Philippines
its Del Monte catsup. Petitioner’s trademark and logo ‘Del Monte’ and its catsup bottle were subsequently registered in the
Philippines. Meanwhile respondent Sunshine Sauce, a company also engaged in the manufacturing and sale of various kinds of
sauces, registered its logo ‘Sunshine Fruit Catsup.’ Philpack received reports that respondent was buying and recycling used Del
Monte’s bottle in junk shops to serve as container for its own catsup. Thus, petitioner and Philpack filed a complaint for
trademark infringement and unfair competition which the trial court dismissed. CA affirmed holding there were substantial
differences between the 2 marks.

Issue:

Whether or not there is confusing similarity between the two trademarks.

Ruling: YES.
At that, even if the labels were analyzed together it is not difficult to see that the Sunshine label is a colorable imitation of the Del
Monte trademark. The predominant colors used in the Del Monte label are green and red-orange, the same with Sunshine. The
word “catsup” in both bottles is printed in white and the style of the print/letter is the same. Although the logo of Sunshine is not
a tomato, the figure nevertheless approximates that of a tomato.

As previously stated, the person who infringes a trade mark does not normally copy out but only makes colorable changes,
employing enough points of similarity to confuse the public with enough points of differences to confuse the courts. What is
undeniable is the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of words,
phrases, colors and symbols sufficient to distinguish his product from the others. When as in this case, Sunshine chose, without a
reasonable explanation, to use the same colors and letters as those used by Del Monte though the field of its selection was so
broad, the inevitable conclusion is that it was done deliberately to deceive.