G.R. No.

114508 November 19, 1999

PRIBHDAS J. MIRPURI, petitioner,
vs.
COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON
CORPORATION, respondents.

Facts:

Respondent Barbizon Corporation, an American corporation, opposed the

application of Lolita Escobar for trademark registration for her undergarment
products, alleging that petitioner’s mark is confusingly similar to its own trademark
‘Barbizon.’ Escobar’s application was given due course and her trademark was
registered.

After some time, Escobar assigned all her rights to petitioner Mirpuri who failed to file
an Affidavit of Use resulting to the trademark cancellation. Respondent Barbizon
again opposed petitioner’s trademark application, now invoking the protection under
Article 6bis of the Paris Convention.

Issue:

Whether or not respondent may resort to Article 6bis of the Convention of Paris for
the Protection of Industrial Property.

Ruling: 

YES. 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 is essentially a compact among various countries
which, as members of the Union, have pledged to accord to citizens of the other
member countries trademark and other rights comparable to those accorded their
own citizens by their domestic laws for an effective protection against unfair
competition. Art. 6bis is a self-executing provision and does not require legislative
enactment to give it effect in the member country. It may be applied directly by the
tribunals and officials of each member country by the mere publication or
proclamation of the Convention, after its ratification according to the public law of
each state and the order for its execution.

The Philippines and the United States of America have acceded to the WTO
Agreement. Conformably, the State must reaffirm its commitment to the global
community and take part in evolving a new international economic order at the dawn
of the new millennium.
 2. BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYADANG. G.R. No. 183404.
October 13, 2010
FACTS:

Respondent applied for trademark with the IPO for the mark "NS D-10 PLUS" for use
in connection with Fungicide. Petitioner opposed respondent’s the trademark
claiming that it is confusingly similar with their trademark, "D-10 80 WP" which is also
used for Fungicide with the same active ingredient.

The IPO decided in favor of Berries but on the appeal with the CA, the CA ruled in
favor of the respondent.

ISSUE: Whether or not confusing similarity exists between the trademarks.

RULING:

Yes. The SC finds that both products have the component D-10 as their active
ingredient and that it is the dominant feature in both marks. Applying the Dominancy
Test, respondent's product is similar to Berris' and that confusion may likely to occur
especially that both in the same type of goods.

Using the Holistic Test, it was more noticeable that there is likelihood of confusion in
their packaging and color schemes of the marks. The SC states that buyers would
think that respondent's product is an upgrade of Berris'.
 G.R. No. 169504 : March 3, 2010

COFFEE PARTNERS, INC., Petitioner, v. SAN FRANCISCO COFFEE & ROASTERY,

INC., Respondent.

Facts:

Using “San Francisco Coffee” trademark, Coffee Partners entered into a franchise
agreement with Coffee Partners Ltd. to operate coffee shops in the Philippines.
Meanwhile, respondent, a local corporation engaged in the wholesale and retail sale
of coffee and uses the business name ‘San Francisco Coffee & Roastery’ registered
with the DTI.

After some time, respondent filed an infringement and/or unfair competition

complaint against petitioner claiming that the latter was about to open a coffee shop
under the name ‘San Francisco Coffee’ causing confusion in the minds of the public
as it bore a similar name and is engaged also in selling of coffee. Petitioner contends
that no infringement would arise because respondent’s tradename was not
registered.

Issue:

Whether or not petitioner’s trademark would infringe respondent’s tradename.

Ruling: Y

YES.

RA 8293, which took effect on 1 January 1998, has dispensed with the registration
requirement. Section 165.2 of RA 8293 categorically states that trade names shall be
protected, even prior to or without registration with the IPO, against any unlawful act
including any subsequent use of the trade name by a third party, whether as a trade
name or a trademark likely to mislead the public.

SC laid down what constitutes infringement of an unregistered trade name in

Prosource International, Inc. v. Horphag Research Management SA, namely:

a. The trademark being infringed is registered in the Intellectual Property Office;

however, in infringement of trade name, the same need not be registered;

b. The trademark or trade name is reproduced, counterfeited, copied, or colorably

imitated by the infringer;

c. The infringing mark or trade name is used in connection with the sale, offering for
sale, or advertising of any goods, business or services; or the infringing mark or
trade name is applied to labels, signs, prints, packages, wrappers, receptacles, or
advertisements intended to be used upon or in connection with such goods,
business, or services;
 d. The use or application of the infringing mark or trade name is likely to cause
confusion or mistake or to deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or services or the identity of
such business; and

e. It is without the consent of the trademark or trade name owner or the assignee
thereof.

It is the likelihood of confusion that is the gravamen of infringement. Petitioner’s

“SAN FRANCISCO COFFEE” trademark is a clear infringement of respondent’s
“SAN FRANCISCO COFFEE & ROASTERY, INC.” trade name, when dominancy
test or holistic test is applied. “SAN FRANCISCO COFFEE” are precisely the
dominant features of respondent’s trade name.

Petitioner and respondent are engaged in the same business of selling coffee,
whether wholesale or retail. The likelihood of confusion is higher in cases where the
business of one corporation is the same or substantially the same as that of another
corporation. In this case, the consuming public will likely be confused as to the
source of the coffee being sold at petitioner’s coffee shops.
G.R. No. 185917               June 1, 2011

FREDCO MANUFACTURING CORPORATION Petitioner,

vs.
PRESIDENT AND FELLOWS OF HARVARD COLLEGE (HARVARD
UNIVERSITY), Respondents.

Facts:

Fredco alleges that the mark ‘Harvard’ was first used and registered by New York
Garments, a domestic corporation and its predecessor-in-interest, used in its clothing
articles, hence this petition to cancel the registration of respondent’s mark ‘Harvard
Veritas Shield Symbol’ used in products such as bags and t-shirts.

On the contrary, Harvard University alleges that it is the lawful owner of the name
and mark in numerous countries worldwide including in the Philippines which was
used in commerce as early as 1872. Respondent further contends that it never
authorized any person to use its name or mark in connection with any goods in the
Philippines. The IPO Bureau of Legal Affairs cancelled respondent’s registration of
the mark but only over the goods which are confusingly similar with that of petitioner.
IPO reversed the decision which was affirmed by the CA.

Issue:

Whether or not there was infringement on the trade name of the respondent. .

Ruling: 

YES.

Fredco’s registration of the mark “Harvard” should have been disallowed. Fredco’s
use of the mark “Harvard,” with its claimed origin in Cambridge, Massachusetts,
obviously suggests a false connection with Harvard University. Indisputably, Fredco
does not have any affiliation or connection with Harvard University, or even with
Cambridge, Massachusetts. Fredco or its predecessor New York Garments was not
established in 1936, or in the U.S.A. as indicated by Fredco in its oblong logo.

Under Philippine law, a trade name of a national of a State that is a party to the Paris
Convention, whether or not the trade name forms part of a trademark, is protected
“without the obligation of filing or registration.” “Harvard” is the trade name of the
world famous Harvard University, and it is also a trademark of Harvard University.
Under Article 8 of the Paris Convention, as well as Section 37 of R.A. No. 166,
Harvard University is entitled to protection in the Philippines of its trade name
“Harvard” even without registration of such trade name in the Philippines. This
means that no educational entity in the Philippines can use the trade name “Harvard”
without the consent of Harvard University. Likewise, no entity in the Philippines can
claim, expressly or impliedly through the use of the name and mark “Harvard,” that
its products or services are authorized, approved, or licensed by, or sourced from,
Harvard University without the latter’s consent.

G.R. No. L-48226         December 14, 1942

ANA L. ANG, petitioner,
vs.
TORIBIO TEODORO, respondent.

Facts:

On September 29, 1915, Toribio Teodoro formally registered “Ang Tibay," as trade-
mark and as trade-name on January 3, 1933 after using it in the manufacture and
sale of slippers, shoes, and indoor baseballs since 1910.

On the other hand, petitioner registered the same trade-mark "Ang Tibay" for pants
and shirts on April 11, 1932, and established a factory for the manufacture of said
articles in the year 1937.

The Court of First Instance of Manila absolved the defendant (Ms. Ang) on the
grounds that the two trademarks are dissimilar and are used on different and non-
competing goods; that there had been no exclusive use of the trade-mark by the
plaintiff; and that there had been no fraud in the use of the said trade-mark by the
defendant because the goods on which it is used are essentially different from those
of the plaintiff.

The Court of Appeals reversed said judgment, directing the Director of Commerce to
cancel the registration of the trade-mark "Ang Tibay" in favor of petitioner, and
perpetually enjoining the latter from using said trade-mark on goods manufactured
and sold by her.

Issue:

Whether or not the goods or articles or which the two trademarks are used similar or
belong to the same class of merchandise.

Ruling:

Yes. They belong to the same class of merchandise as shoes and slippers and are
closely related goods. Pants and shirts are goods closely similar to shoes and
slippers.
Affirming the judgment of the Court of Appeals, the Supreme Court added that
“although two non-competing articles may be classified under to 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 trademarks 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 that the first user made the second user’s goods”. 

6. McDONALD’S CORPORATION v. MACJOY FASTFOOD CORPORATION. G.R.

No. 166115. February 2, 2007
FACTS:

McDonald's Corporation opposed the application of MacJoy Fastfood Corp., a

corporation in the sale of fastfood based in Cebu filed with IPO, for the registration of
their name.

McDonald's alleges that their logo and use of their name would falsely tend to
suggest a connection with MacJoy's services and food products, thus, constituting
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.

MacJoy Fastfood Corp contends that MACJOY has been used for the past many
years in good faith and has spent considerable sums of money for it.

The IPO ruled that there is confusing similarity  The CA held otherwise stating there
are predominant difference like the spelling, the font and color of the trademark and
the picture of the logo.

ISSUE: Whether or not the CA erred in ruling that there is no confusing simiolarty
between both marks.

RULING:

No. The dominancy and holistic test were developed to determine whether there is
confusing similarity between marks. The dominancy test focuses on the similarity of
the prevalent features of the competing trademarks that might cause confusion or
deception while the holistic test requires the court to consider the entirety of the
marks as applied to the products, including the labels and packaging, in determining
confusing similarity. Under the holistic test, a comparison of the words is not the only
determinant factor.

Although the IPO correctly used the dominancy, they should have taken more
considerations. In recent cases, the SC has consistently used and applied the
dominancy test in determining confusing similarity or likelihood of confusion between
competing trademarks. The CA, while seemingly applying the dominancy test, in fact
actually applied the holistic test.

Using the dominancy test, the Court found both marks confusingly similar with each
other such that an ordinary purchaser can conclude an association or relation
between the marks. The predominant features such as the "M," "Mc," and "Mac"
appearing in both easily attract the attention of would-be customers. Most
importantly, both trademarks are used in the sale of fastfood products.

Petitioner has the right of ownership in the said marks since it was registered in 1977
while respondent only in 1991.

G.R. No. 143993             August 18, 2004

MCDONALD'S CORPORATION and MCGEORGE FOOD INDUSTRIES, INC., petitioners,

vs.
L.C. BIG MAK BURGER, INC., FRANCIS B. DY, EDNA A. DY, RENE B. DY, WILLIAM B. DY,
JESUS AYCARDO, ARACELI AYCARDO, and GRACE HUERTO, respondents.

Facts:

Respondent L.C., a domestic corporation which operates fast-food outlets and snack
vans applied for the registration of the ‘Big Mak’ mark for its hamburger sandwiches.
Petitioner McDonald’s, an American corporation operating a global chain of fast-food
restaurants and the owner of the ‘Big Mac’ mark for its double-decker hamburger
sandwich here and in the US opposed on the ground that ‘Big Mak’ was a colorable
imitation of its registered ‘Big Mac’ mark for the same food products.

Petitioner filed a complaint for trademark infringement and unfair competition.

Respondents contended that there is no colorable imitation and argued that
petitioner cannot exclusively appropriate the mark ‘Big Mac’ because the word ‘Big’
is a generic and descriptive term. The trial court found for petitioners. However, CA
ruled on the negative.

Issues:

1. Whether or not there is colorable imitation resulting in likelihood of confusion;

2. Whether or not the word ‘Big Mac’ can be exclusively appropriated by petitioner;

3. Whether or not there is unfair competition.

Ruling:
1. There is likelihood of confusion. The dominancy test and the holistic test are
developed to determine likelihood of confusion. The dominancy test focuses on the
similarity of the prevalent features of the competing trademarks that might cause
confusion. In contrast, the holistic test requires the court to consider the entirety of
the marks as applied to the products, including the labels and packaging, in
determining confusing similarity. This Court, however, has relied on the dominancy
test rather than the holistic test. 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.”

2. The word ‘Big Mac’ can be exclusively appropriated by petitioner. A mark is valid
if it is “distinctive” and thus not barred from registration under Section 4 of RA 166.
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. 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. Significantly, the trademark “Little Debbie” for snack cakes was found arbitrary
or fanciful.

REPORT THIS AD

Applying the dominancy test, the Court finds that respondents’ use of the “Big Mak”
mark results in likelihood of confusion. 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 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. Certainly, “Big Mac” and “Big Mak” for hamburgers create even
greater confusion, not only aurally but also visually. 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.”

(3) YES.  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. 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.

Respondents’ goods are hamburgers which are also the goods of petitioners. 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. 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. We hold that as found
by the RTC, respondent corporation is liable for unfair competition.

G.R. No. 101897. March 5, 1993.

LYCEUM OF THE PHILIPPINES, INC., petitioner, vs. COURT OF APPEALS, LYCEUM OF

APARRI, LYCEUM OF CABAGAN, LYCEUM OF CAMALANIUGAN, INC., LYCEUM OF LALLO,
INC., LYCEUM OF TUAO, INC., BUHI LYCEUM, CENTRAL LYCEUM OF CATANDUANES,
LYCEUM OF SOUTHERN PHILIPPINES, LYCEUM OF EASTERN MINDANAO, INC. and
WESTERN PANGASINAN LYCEUM, INC., respondents.

Facts:

Petitioner Lyceum of the Philippines thru SEC asked Lyceum of Baguio to change
its corporate to change its corporate name and adopt another not similar to or
identical with that of petitioner. SEC Commissioner Sulit held that corporate name of
petitioner and Lyceum of Baguio was substantially identical that petitioner had
registered its name ahead of Lyceum of Baguio. Petitioner filed a case before the
SEC to enforce its propriety right to teh word "Lyceum."

SEC officer sustained petitioner's claim to an exclusive right to sue the said word.
However, SEC En Banc reversed said decision. It held that the attaching of
geographical names to the word Lyceum served sufficiently to distinguish the
schools from one another and the schools are physically quite remote from each
other. CA affirmed the latter's ruling.

Issues:
(1) Whether or not ‘Lyceum’ is a generic word which cannot be appropriated by
petitioner to the exclusion of others.

(2) Whether or not the word ‘Lyceum’ has acquired a secondary meaning in favor of
petitioner.

(3) Whether or not petitioner is infringed by respondent institutions’ corporate names.

Ruling:

(1) YES. “Lyceum” is in fact as generic in character as the word “university.” In the
name of the petitioner, “Lyceum” appears to be a substitute for “university;” in other
places, however, “Lyceum,” or “Liceo” or “Lycee” frequently denotes a secondary
school or a college. It may be that the use of the word “Lyceum” may not yet be as
widespread as the use of “university,” but it is clear that a not inconsiderable number
of educational institutions have adopted “Lyceum” or “Liceo” as part of their
corporate names. Since “Lyceum” or “Liceo” denotes a school or institution of
learning, it is not unnatural to use this word to designate an entity which is organized
and operating as an educational institution.

(2) NO. Under the doctrine of secondary meaning, a word or phrase originally
incapable of exclusive appropriation with reference to an article in the market,
because geographical or otherwise descriptive might nevertheless have been used
so long and so exclusively by one producer with reference to this article that, in that
trade and to that group of the purchasing public, the word or phrase has come to
mean that the article was his produce. With the foregoing as a yardstick, [we] believe
the appellant failed to satisfy the aforementioned requisites. While the appellant may
have proved that it had been using the word ‘Lyceum’ for a long period of time, this
fact alone did not amount to mean that the said word had acquired secondary
meaning in its favor because the appellant failed to prove that it had been using the
same word all by itself to the exclusion of others. More so, there was no evidence
presented to prove that confusion will surely arise if the same word were to be used
by other educational institutions.

(3) NO. We do not consider that the corporate names of private respondent
institutions are “identical with, or deceptively or confusingly similar” to that of the
petitioner institution. True enough, the corporate names of private respondent
entities all carry the word “Lyceum” but confusion and deception are effectively
precluded by the appending of geographic names to the word “Lyceum.” Thus, we
do not believe that the “Lyceum of Aparri” can be mistaken by the general public for
the Lyceum of the Philippines, or that the “Lyceum of Camalaniugan” would be
confused with the Lyceum of the Philippines.  We conclude and so hold that
petitioner institution is not entitled to a legally enforceable exclusive right to use the
word “Lyceum” in its corporate name and that other institutions may use “Lyceum” as
part of their corporate names.
G.R. No. L-78325               January 25, 1990

DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION, petitioners,

vs.
COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING
INDUSTRIES, respondents.

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.          
10. ASIA BREWERY, INC. vs. THE HON. COURT OF APPEALS and SAN MIGUEL
CORPORATION
G.R. 103543 July 5, 1993 

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 beer market.

The trial court dismissed SMC's complaint because ABI "has not committed
trademark infringement or unfair competition against" SMC

On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial
court, finding the defendant Asia Brewery Incorporated GUILTY of infringement of
trademark and unfair competition. ABI then filed a petition for certiorari.

Issue:

Are the words PALE PILSEN as part of ABI’s trademark constitute infringement of
SMC’s trademark?

Ruling:

No. The Supreme Court said it does not constitute an infringement as the words
PALE PILSEN, which are part of ABI’s trademark, are generic words descriptive of
the color (“pale“), of a type of beer (“pilsen”), which is a light bohemian beer with a
strong hops flavor that originated in the City of Pilsen, Czechislovakia and became
famous in the Middle Ages.

The Supreme Court further said that the words "pale pilsen" may not be appropriated
by SMC for its exclusive use even if they are part of its registered trademark. No one
may appropriate generic or descriptive words. They belong to the public domain.

Petitioner ABI has neither infringed SMC's trademark nor committed unfair
competition with the latter's SAN MIGUEL PALE PILSEN product.

Prosource International, Inc v Horphag Research Management SA

 [G.R. NO. 180073 : November 25, 2009]

PROSOURCE INTERNATIONAL, INC., Petitioner, v. HORPHAG

RESEARCH MANAGEMENT SA, Respondent.

DECISION

FACTS:

Respondent is a corporation and owner of trademark PYCNOGENOL, a food.

Respondent later discovered that petitioner was also distributing a similar food
supplement using the mark PCO-GENOLS since 1996. This prompted respondent to
demand that petitioner cease and desist from using the aforesaid mark.

Respondent filed a Complaint for Infringement of Trademark with Prayer for

Preliminary Injunction against petitioner, in using the name PCO-GENOLS for being
confusingly similar. Petitioner appealed otherwise.

The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-
GENOLS have the same suffix "GENOL" which appears to be merely descriptive
and thus open for trademark registration by combining it with other words and
concluded that the marks, when read, sound similar, and thus confusingly similar
especially since they both refer to food supplements.

On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate
court explained that under the Dominancy or the Holistic Test, PCO-GENOLS is
deceptively similar to PYCNOGENOL.

ISSUE: Whether the names are  confusingly similar.

RULING:

Yes. There is confusing similarity and the petition is denied. Jurisprudence

developed two test to prove such.

The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion and deception, thus constituting
infringement. If the competing trademark contains the main, essential and dominant
features of another, and confusion or 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 is whether the use of the
marks involved is likely to cause confusion or mistake in the mind of the public or to
deceive purchasers. 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 Holistic Test entails a consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity. Not
only on the predominant words should be the focus but also on the other features
appearing on both labels in order that the observer may draw his conclusion whether
one is confusingly similar to the other.

SC applied the Dominancy Test.Both the words have the same suffix "GENOL"
which on evidence, appears to be merely descriptive and furnish no indication of the
origin of the article and hence, open for trademark registration by the plaintiff through
combination with another word or phrase. When the two words are pronounced, the
sound effects are confusingly similar not to mention that they are both described by
their manufacturers as a food supplement and thus, identified as such by their public
consumers. And although there were dissimilarities in the trademark due to the type
of letters used as well as the size, color and design employed on their individual
packages/bottles, still the close relationship of the competing products’ name in
sounds as they were pronounced, clearly indicates that purchasers could be misled
into believing that they are the same and/or originates from a common source and
manufacturer.
 12. 246 Corporation v. Daway (G.R. No. 157216)

[G.R. No. 157216. November 20, 2003.]

246 CORPORATION, doing business under the name and style of ROLEX
MUSIC LOUNGE, Petitioner, v. HON. REYNALDO B. DAWAY, in his capacity as
Presiding Judge of Branch 90 of the Regional Trial Court of Quezon City,
MONTES ROLEX S.A. and ROLEX CENTRE PHIL. LIMITED, Respondents.

Facts:

Respondents Montres Rolex and Rolex Centre Phil., owners/proprietors of Rolex

and Crown Device, filed a complaint for trademark infringement alleging petitioner
adopted and used without authority the mark ‘Rolex’ in its business name ‘Rolex
Music Lounge.’ Petitioner argued that there is no trademark infringement since no
confusion would arise by the use of ‘Rolex’ considering that its entertainment
business is totally unrelated to respondent’s business or products such as watches,
clocks, etc.

Issue:

Whether or not likelihood of confusion would arise from the use of identical marks
over unrelated goods/business.

Ruling: YES.

Under the old Trademark Law where the goods for which the identical marks are
used are unrelated, there can be no likelihood of confusion and there is therefore no
infringement in the use by the junior user of the registered mark on the entirely
different goods. This ruling, however, has been to some extent, modified by Section
123.1(f) of the Intellectual Property Code.

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, subject to the following requisites, to wit:

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 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.

*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.

G.R. No. 190065               August 16, 2010

DERMALINE, INC., Petitioner,
vs.
MYRA PHARMACEUTICALS, INC. Respondent.

Facts: Dermaline filed before the IPO an application for registration of the trademark
DERMALINE DERMALINE, INC. Myra  filed an Opposition alleging that the
trademark sought to be registered by Dermaline so resembles its trademark
DERMALIN and will likely cause confusion to the purchasing public. Myra claimed
that, despite Dermalines attempt to differentiate its applied mark, the dominant
feature is the term DERMALINE, which is practically identical with its own
DERMALIN, more particularly that the first eight (8) letters of the marks are identical,
and that notwithstanding the additional letter E by Dermaline, the pronunciation for
both marks are identical. Further, both marks have three (3) syllables each, with
each syllable identical in sound and appearance, even if the last syllable of
DERMALINE consisted of four (4) letters while DERMALIN consisted only of three
(3).

         Myra also pointed out that Dermaline applied for the same mark DERMALINE
on June 3, 2003 and was already refused registration by the IPO. By filing this new
application for registration, Dermaline appears to have engaged in a fishing
expedition for the approval of its mark. In its Verified Answer, Dermaline contended
that its trademark DERMALINE DERMALINE, INC. speaks for itself (Res ipsa
loquitur). Dermaline further argued that there could not be any relation between its
trademark for health and beauty services from Myra’s trademark classified under
medicinal goods against skin disorders. the IPO-Bureau of Legal Affairs sustained
Myra’s opposition. Director General of the IPO dismissed the appeal of Dermaline.
CA affirmed the rejection of the latter’s trademark application

Issue: Should the application for registration be allowed?

Ruling: No.  In rejecting the application of Dermaline for the registration of its mark
DERMALINE DERMALINE, INC., the IPO applied the Dominancy Test. It declared
that both confusion of goods and service and confusion of business or of origin were
apparent in both trademarks. Dermalines insistence that its applied trademark
DERMALINE DERMALINE, INC. had differences too striking to be mistaken from
Myra’s DERMALIN cannot be sustained because they are almost spelled in the
same way, except for Dermaline’s mark which ends with the letter E, and they are
pronounced practically in the same manner in three (3) syllables, with the ending
letter E in Dermaline’s mark pronounced silently. Thus, when an ordinary purchaser,
for example, hears an advertisement of Dermaline’s applied trademark over the
radio, chances are he will associate it with Myra’s registered mark. Further,
Dermalines stance that its product belongs to a separate and different classification
from Myra’s products with the registered trademark does not eradicate the possibility
of mistake on the part of the purchasing public to associate the former with the latter,
especially considering that both classifications pertain to treatments for the skin. The
Court is cognizant that the registered trademark owner enjoys protection in product
and market areas that are the normal potential expansion of his business. Thus, the
public may mistakenly think that Dermaline is connected to or associated with Myra,
such that, considering the current proliferation of health and beauty products in the
market, the purchasers would likely be misled that Myra has already expanded its
business through Dermaline from merely carrying pharmaceutical topical
applications for the skin to health and beauty services.
14. LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC., Petitioners, vs.
CLINTON APPARELLE, INC., Respondent. G.R. No. 138900, SECOND DIVISION,
September 20, 2005, Tinga, J.

FACTS:
This case stemmed from the Complaint for Trademark Infringement, Injunction and
Damages filed by petitioners LS & Co. and LSPI against respondent Clinton
Apparelle, Inc. (Clinton Aparelle) together with an alternative defendant, Olympian
Garments, Inc. (Olympian Garments). The Complaint alleged that LS & Co., a
foreign corporation duly organized and existing under the laws of the State of
Delaware, U.S.A., and engaged in the apparel business, is the owner by prior
adoption and DEAN’S CIRCLE 2019 – UST FACULTY OF CIVIL LAW 162 use since
1986 of the internationally famous "Dockers and Design" trademark. This ownership
is evidenced by its valid and existing registrations in various member countries of the
Paris Convention. In the Philippines, it has a Certificate of Registration No. 46619 in
the Principal Register for use of said trademark on pants, shirts, blouses, skirts,
shorts, sweatshirts and jackets. LS & Co. and LSPI alleged that 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.
Based on their information and belief, they added, Clinton Apparelle manufactured
 and continues to manufacture such "Paddocks" jeans and other apparel. The trial
court issued a TRO in favor of LEVI after CLINTON and OLYMPIAN failed to appear.
Thereafter, the issuance of a writ of preliminary injunction was granted in favor of
LEVI. However, the appellate court reserved the decision of the trial court and
granted the petition of CLINTON for certiorari, prohibition and mandamus with prayer
for the issuance of a temporary restraining order and/or writ of preliminary injunction.
In its defense, CLINTON maintained among others that it was not validly served with
summons since the same was only served upon OLYMPIAN; hence, the TRO was
void. It also asserted that there was no confusion between the two marks and that
the erosion of petitioners’ trademark may not be protected by injunction. It believes
that the issued writ in effect disturbed the status quo and disposed of the main case
without trial.

ISSUE Whether the issuance of the writ of preliminary injunction by the trial court
was proper

RULING No, the issuance of the writ of preliminary injunction is not proper. 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. An extraordinary remedy, injunction
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. 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. 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 recourse before the main case can be heard in due
course of proceedings. According to Section 138 of Republic Act No. 8293, 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. Section 147.1 of said law likewise grants the owner of the registered
mark DEAN’S CIRCLE 2019 – UST FACULTY OF CIVIL LAW 163 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, petitioners’ registered trademark consists of two
elements: (1) the word mark "Dockers" and (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. CLINTON’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. The two
trademarks apparently differ in their word marks ("Dockers" and "Paddocks"), but
again according to petitioners, they employ similar or identical logos. 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. 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—the feature that prevails or is retained in the minds of the
public—an imitation of which creates the likelihood of deceiving the public and
constitutes trademark infringement. In sum, there are vital matters which have yet
and may only be established through a full-blown trial. Hence, petitioners’ right to
injunctive relief has not been clearly and unmistakably demonstrated. The right has
yet to be determined. 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. In addition, the damages the petitioners had suffered or
continue to suffer may be compensated in terms of monetary consideration. As held
in Government Service Insurance System v. Florendo, a writ of injunction should
never have been issued when an action for damages would adequately compensate
the injuries caused. The very foundation of the jurisdiction to issue the writ of
injunction rests in the probability of irreparable injury, inadequacy of pecuniary
estimation and the prevention of the multiplicity of suits, and where facts are not
shown to bring the case within these conditions, the relief of injunction should be
refused.
G.R. No. 108946 January 28, 1999

FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners,

vs.
HONORABLE FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA,
JR., and CASEY FRANCISCO, respondents.

FACTS:

            Petitioner BJ Productions, Inc. (BJPI) is the holder / grantee of Certificate of

Copyright No. M922, dated January 28, 1971, of Rhoda and Me, a dating game
show aired from 1970 to 1977.

            On June 28, 1973, petitioner BJPI submitted to the National Library an
addendum to its certificate of copyright specifying the show’s format and style of
presentation.

            Upon complaint of petitioners, information for violation of PD No. 49 was filed
against private respondent Zosa together with certain officers of RPN 9 for airing It’s
a Date. It was assigned to Branch 104 of RTC Quezon City.

            Zosa sought review of the resolution of the Assistant City Prosecutor before
the Department of Justice.

            On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon

reversed the Assistant City Prosecutor’s findings and directed him to move for the
dismissal of the case against private respondents.

            Petitioner Joaquin filed motion for reconsideration but such was denied.

ISSUE:

            Whether the format or mechanics or petitioner’s television show is entitled to

copyright protection.

HELD:

            The Court ruled that the format of the show is not copyrightable. Sec. 2 of PD
No. 49, otherwise known as the Decree on Intellectual Property, enumerates the
classes of work entitled to copyright protection. The provision is substantially the
same as Sec. 172 of the Intellectual Property Code of the Philippines (RA 8293). The
format or mechanics of a television show is not included in the list of protected works
in Sec. 2 of PD No. 49. For this reason, the protection afforded by the law cannot be
extended to cover them.

 Copyright, in the strict sense of the term, is purely a statutory right. It is a new
independent right granted by the statute and not simply a pre-existing right regulated
by the statute. Being a statutory grant, the rights are only such as the statute
confers, and may be obtained and enjoyed only with respect to the subjects and by
the person and on terms and conditions specified in the statute.
The Court is of the opinion that petitioner BJPI’s copyright covers audio-visual
recordings of each episode of Rhoda and Me, as falling within the class of works
mentioned in PD 49.

The copyright does not extend to the general concept or format of its dating game
show.

Mere description by words of the general format of the two dating game shows is
insufficient; the presentation of the master videotape in evidence was indispensable
to the determination of the existence of a probable cause.

A television show includes more than mere words can describe because it involves a
whole spectrum of visuals and effects, video and audio, such that no similarity or
dissimilarity may be found by merely describing the general copyright / format of both
dating game shows.
 16. PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs.
FELICIDAD C. ROBLES and GOODWILL TRADING CO., INC.
G.R. No. 131522, July 19, 1999

FACTS: Pacita Habana et al., are authors and copyright owners of duly issued of the
book, College English For Today (CET). Respondent Felicidad Robles was the
author of the book Developing English Proficiency (DEP). Petitioners found that
several pages of the respondent's book are similar, if not all together a copy of
petitioners' book. Habana et al. filed an action for damages and injunction, alleging
respondent’s infringement of copyrights, in violation of P.D. 49. They allege
respondent Felicidad C. Robles being substantially familiar with the contents of
petitioners' works, and without securing their permission, lifted, copied, plagiarized
and/or transposed certain portions of their book CET.

On the other hand, Robles contends that the book DEP is the product of her own
intellectual creation, and was not a copy of any existing valid copyrighted book and
that the similarities may be due to the authors' exercise of the "right to fair use of
copyrighted materials, as guides."

The trial court ruled in favor of the respondents, absolving them of any liability.  
Later, the Court of Appeals rendered judgment in favor of respondents Robles and
Goodwill Trading Co., Inc. In this appeal, petitioners submit that the appellate court
erred in affirming the trial court's decision.

ISSUE: Whether Robles committed infringement in the production of DEP.

HELD: A perusal of the records yields several pages of the book DEP that are
similar if not identical with the text of CET. The court finds that respondent Robles'
act of lifting from the book of petitioners substantial portions of discussions and
examples, and her failure to acknowledge the same in her book is an infringement of
petitioners' copyrights.

In the case at bar, the least that respondent Robles could have done was to
acknowledge petitioners Habana et. al. as the source of the portions of DEP. The
final product of an author's toil is her book. To allow another to copy the book without
appropriate acknowledgment is injury enough.
17.
G.R. No. 175769-70             January 19, 2009

ABS-CBN BROADCASTING CORPORATION, Petitioners,

vs.
PHILIPPINE MULTI-MEDIA SYSTEM, INC., CESAR G. REYES, FRANCIS CHUA (ANG BIAO),
MANUEL F. ABELLADA, RAUL B. DE MESA, AND ALOYSIUS M. COLAYCO, Respondents.

Facts:

Petitioner ABS-CBN, a broadcasting corporation, filed a complaint against

respondent PMSI alleging that the latter’s unauthorized rebroadcasting of Channels
2 and 23 infringed on its broadcasting rights and copyright. PMSI posits that it was
granted a franchise to operate a digital direct-to-home satellite service and that the
rebroadcasting was in accordance with the NTC memo to carry television signals of
authorized television broadcast stations, which includes petitioner’s programs. The
IPO Bureau of Legal Affairs found PMSI to have infringed petitioner’s broadcasting
rights and ordered it to permanently desist from rebroadcasting. On appeal, the IPO
Director General found for PMSI. CA affirmed.

Issue:

Whether or not petitioner’s broadcasting rights and copyright are infringed.

Ruling: NO.

The Director-General of the IPO correctly found that PMSI is not engaged in
rebroadcasting and thus cannot be considered to have infringed ABS-CBN’s
broadcasting rights and copyright.

Section 202.7 of the IP Code defines broadcasting as “the transmission by wireless

means for the public reception of sounds or of images or of representations thereof;
such transmission by satellite is also ‘broadcasting’ where the means for decrypting
are provided to the public by the broadcasting organization or with its consent.” On
the other hand, rebroadcasting as defined in Article 3(g) of the International
Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations, otherwise known as the 1961 Rome Convention, of
which the Republic of the Philippines is a signatory, is “the simultaneous
broadcasting by one broadcasting organization of the broadcast of another
broadcasting organization.” The Working Paper prepared by the Secretariat of the
Standing Committee on Copyright and Related Rights defines broadcasting
organizations as “entities that take the financial and editorial responsibility for the
selection and arrangement of, and investment in, the transmitted content.” Evidently,
PMSI would not qualify as a broadcasting organization because it does not have the
aforementioned responsibilities imposed upon broadcasting organizations, such as
ABS-CBN.

ABS-CBN creates and transmits its own signals; PMSI merely carries such signals
which the viewers receive in its unaltered form. PMSI does not produce, select, or
determine the programs to be shown in Channels 2 and 23. Likewise, it does not
pass itself off as the origin or author of such programs. Insofar as Channels 2 and 23
are concerned, PMSI merely retransmits the same in accordance with Memorandum
Circular 04-08-88. With regard to its premium channels, it buys the channels from
content providers and transmits on an as-is basis to its viewers. Clearly, PMSI does
not perform the functions of a broadcasting organization; thus, it cannot be said that
it is engaged in rebroadcasting Channels 2 and 23.