Cabana, Adrian C.

Mcdonald’s Corp vs Mcjoy

G.R. No. 166115
February 2, 2007

Facts

Respondent – Mcjoy Fastfood Corporation, a corporation that sells

fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos,
sandwiches, halo-halo and steaks in Cebu City filed with the Bureau of
Trademarks - IPO an application for the registration of the trademark
“Macjoy”. Petitioner – Mcdonalds a corporation organized under the laws
opposed the application of respondent claiming that such trademark was
identical and similarly related to goods; the trademark applied by
respondent could cause confusion to the public buyer.

Macjoy on the other hand contends that the trademark applied was
used in several years and made in good faith.

Issue

Whether or not the word “Macjoy” was similarly and identical to goods
of petitioner-mcdonalds?

Ruling

Yes. The Supreme Court ruled that the proper test to be used is the
dominancy test. The latter test not only looks at the visual comparisons
between two trademarks but also the aural impressions created by the
marks in the public mind as well as connotative comparisons, giving little
weight to factors like prices, quality, sales outlets and market segments.

In the case at bar, the Supreme Court ruled that “Mcdonalds” and
“Macjoy” marks are confusingly similar with each other such that an
ordinary purchaser can conclude an association or relation between the
marks.
Cabana, Adrian C.

Asia Brewery Inc. vs C.A and San Miguel Corporation

G.R. No. 103543
July 5, 1993

Facts

Defendant - San Miguel filed a case against petitioner- Asia Brewery

for infringement of trademark and unfair competition. Asia brewery used the
trademark Beer Pale Pilsen or Beer na Beer which has been competing
with San Miguel Pale Pilsen for the share of local beer. The trial court
dismissed San Miguel Corporation’s complaint because Asia Brewery has
not committed trademark infringement or unfair competition against SMC’s.
The C.A reversed the decision of RTC.

Issue

Whether or Not Asia brewery Inc. committed infringement of

trademark and unfair competition against San Miguel Corporation?

Ruling

No. the Supreme Court ruled that infringement is determined by the

“test of dominancy” rather than by differences or variations in the details of
a trademark. In the instant case, San Miguel’s bottle has a slender tapered
neck while Beer na Beer’s bottle has a flat, bulging neck, their bottle cap is
stamped with a coat of arms and the words “San Miguel Brewery
Philippines” encircling the same, while Beer na Beer’s bottle cap is
stamped with the name “Beer” in the center, surrounded by the words “Asia
Brewery Incorporated Philippines”. Based on dominancy test, the dominant
features of sound, spelling & appearance of Beer na Beer cannot be said to
be similarly confusing with San Miguel Pale Pinsen.
Cabana, Adrian C.

Arce Sons and Company vs Selecta Biscuit Company

G.R No. L-14761

Facts

Respondent – Selecta Biscuit Company applied for the registration of

the word “Selecta” to be used in its bakery products. Petitioner – Arce Sons
opposed on the ground that it had continuously used the mark “Selecta”
and became their identity with their business. The latter also contends that
the word “Selecta” could cause confusion with the public buyer and to other
businesses.

Petitioner filed a complaint for unfair competition against respondent

for infringement of trademark and unfair competition. On the other hand,
Director of Patents dismissed petitioner’s opposition

Issue

Whether or Not Petitioner’s mark has acquired secondary meaning in

its favor?

Ruling

Yes. The word SELECTA may be an ordinary or common word in the

sense that may be used or employed by any one in promoting his business
or enterprise, but once adopted or coined in connection with one’s business
as an emblem, sign or device to characterize its products or as a badge of
authenticity, it may acquire a secondary meaning as to be exclusively
associated with its products and business. Its use by another may lead to
confusion in trade and cause damage to its business. The law gives its
protection and guarantees its use to the exclusion of all others.
Cabana, Adrian C. Cabana

Lyceum of the Philippines vs C.A

G.R No. 101897
March 5, 1993

Facts

Petitioner – Lyceum of the Philippines had commenced before the

Security of Exchange Commission a complaint against Lyceum of Baguio
to change its corporate name and to adopt another name not similar or
related to Lyceum of the Philippines, alleging that the two names are
substantially identical and related to each other. During the commencement
of the complaint before SEC, the latter favoured the petitioner as a result
respondent filed a petition for certiorari before Supreme Court but was
denied for lack of merit.

Armed with the resolution of the Court, Petitioner institute before the
SEC to compel private respondents to delete the word “Lyceum” from their
corporate names and permanently to enjoin them from using such as part
of their respective names. SEC ruled in favour of the petitioner, but the
respondent appeal to SEC En Banc and C.A which overturned the ruling of
SEC. Petitioner contends that the word “Lyceum” has acquired a secondary
meaning in its favor.

Issue

Whether or not the word “Lyceum” has acquired a secondary

meaning in favor of petitioner?

Ruling

No. The Supreme Court ruled that 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. The doctrine cannot be made to
apply where the evidence didn't prove that the business has continued for
so long a time that it has become of consequence and acquired good will of
considerable value such that its articles and produce have acquired a well-
known reputation, and confusion will result by the use of the disputed
name.

Petitioner didn't present evidence, which provided that the word “Lyceum”
acquired secondary meaning. The petitioner failed to adduce evidence that
it had exclusive use of the word. Even if petitioner used the word for a long
period of time, it hadn’t acquired any 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.
Cabana, Adrian C.

246 Corporation vs Hon. Reynaldo B. Daway, Montres Rolex

G.R No. 157216
November 20, 2003

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 states that there is no infringement and also no
confusion would arise because their business was in entertainment while
respondent's business relate to watches.

Petitioner filed a motion for preliminary hearing on its affirmative defenses

in which the trial court quashed. Petitioner filed a petition with the CA which
was also dismissed.

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.