V. The Law on Trademarks, Service Marks and Trade Names Mishawaka Mfg. Co. v. Kresge Co.
Mishawaka Mfg. Co. v. Kresge Co.: The protection of trademarks is the law's recognition of the
1. Purpose of Trademark Law
Philipp Morris vs. Fortune Tobacco
Facts: Petitioners are foreign corporations not doing business in the Philippines and are suing on
an isolated transaction. They averred that the countries in which they are domiciled grant to
corporate or juristic persons of the Philippines the privilege to bring action for infringement,
without need of a license to do business in those countries.
Petitioners likewise manifested being registered owners of the trademark "MARK VII" and "MARK
TEN" for cigarettes as evidenced by the corresponding certificates of registration and an
applicant for the registration of the trademark "LARK MILDS.
They claimed that by virtue of the long and extensive usage of the same, these trademarks have
already gained international fame and acceptance.
They assert that, as corporate nationals of member-countries of the Paris Union, they can sue
before Philippine courts for infringement of trademarks, or for unfair competition, without need
of obtaining registration or a license to do business in the Philippines, and without necessity of
actually doing business in the Philippines. Petitioners now harp about their entitlement to
protection on the strength of registration of their trademarks in the Philippines.
Imputing bad faith on the part of the respondent, petitioners claimed that the respondent,
without any previous consent from any of the petitioners, manufactured and sold cigarettes
bearing the identical and/or confusingly similar trademark "MARK".
Accordingly, they argued that respondent's use of the trademark "MARK" in its cigarette
products have caused and is likely to cause confusion or mistake, or would deceive purchasers
and the public in general into buying these products under the impression and mistaken belief
that they are buying petitioners' products.
On August 18, 1982, petitioner filed a Complaint for Infringement of Trademark and Damages
against respondent Fortune Tobacco. RTC dismissed the complaint after making a finding that
respondent did not commit trademark infringement against the petitioners. CA affirmed.
Issues: (1) Whether petitioners, as Philippine registrants of trademarks, are entitled to enforce
trademark rights in this country; and
(2) Whether 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, a
trademark deserves protection.
psychological function of symbols. If it is true that we live by symbols, it is no less true that we
purchase goods by them. A trade-mark is a merchandising short-cut which induces a purchaser
to select what he wants, or what he has been led to believe what he wants. The owner of a mark
exploits this human propensity by making every effort to impregnate the atmosphere of the
market with the drawing power of a congenial symbol. Whatever the means employed, the aim is
the same — to convey through the mark, in the minds of potential customers, the desirability of
the commodity upon which it appears. Once this is attained, the trade-mark owner has
something of value. If another poaches upon the commercial magnetism of the symbol he has
created, the owner can obtain legal redress.
(1) No. The fact that their respective home countries, namely, the United States, Switzerland and
Canada, are, together with the Philippines, members of the Paris Union does not automatically
entitle petitioners to the protection of their trademarks in this country absent actual use of the
marks in local commerce and trade.
True, the Philippines' adherence to the Paris Convention effectively obligates the country to
honor and enforce its provisions as regards the protection of industrial property of foreign
nationals in this country. However, any protection accorded has to be made subject to the
limitations of Philippine laws. Hence, despite Article 2 of the Paris Convention which substantially
provides that (1) nationals of member-countries shall have in this country rights specially
provided by the Convention as are consistent with Philippine laws, and enjoy the privileges that
Philippine laws now grant or may hereafter grant to its nationals, and (2) while no domicile
requirement in the country where protection is claimed shall be required of persons entitled to
the benefits of the Union for the enjoyment of any industrial property rights, foreign nationals
must still observe and comply with the conditions imposed by Philippine law on its nationals.
Considering that R.A. No. 166, as amended, specifically Sections 2 and 2-A thereof, mandates
actual use of the marks and/or emblems in local commerce and trade before they may be
registered and ownership thereof acquired, the petitioners cannot, therefore, dispense with the
element of actual use. Their being nationals of member-countries of the Paris Union does not
alter the legal situation.
Such a foreign corporation may have the personality to file a suit for infringement but it may not
necessarily be entitled to protection due to absence of actual use of the emblem in the local
market.
The certificate of registration merely constitutes prima facie evidence that the registrant is the
owner of the registered mark. Evidence of non-usage of the mark rebuts the presumption of
trademark ownership.
Registration in the Philippines of trademarks does not ipso facto convey an absolute right or
exclusive ownership thereof. Trademark is a creation of use and, therefore, actual use is a pre-
requisite to exclusive ownership; registration is only an administrative confirmation of the
existence of the right of ownership of the mark, but does not perfect such right; actual use
thereof is the perfecting ingredient.
The registration of a trademark unaccompanied by actual use thereof in the country accords the
registrant only the standing to sue for infringement in Philippine courts. Entitlement to
protection of such trademark in the country is entirely a different matter.
(2) No. The "likelihood of confusion" is the gravamen of trademark infringement. But likelihood
of confusion is a relative concept, the particular, and sometimes peculiar, circumstances of each
case being determinative of its existence.
The dominancy test- similarity of the prevalent features of the competing trademarks that might
cause confusion and deception, thus constitutes infringement; whether the use of the marks
involved would be likely to cause confusion or mistake in the mind of the public or deceive
purchasers.
The holistic test- consideration of the entirety of the marks as applied to the products, including
the labels and packaging, in determining confusing similarity.
The Court 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.
Due regard is given to the "ordinary purchaser," Whether the general confusion made by the
article upon the eye of the casual purchaser who is unsuspicious and off his guard, is such as to
likely result in his confounding it with the original. "Ordinary purchaser" in this case means "one
accustomed to buy, and therefore to some extent familiar with, the goods in question."
2. Historical Development
PRIBHDAS J. MIRPURI, petitioner, vs. COURT OF APPEALS, DIRECTOR OF PATENTS and the
BARBIZON CORPORATION, respondents.
Facts:
In 1970, Escobar filed an application with the Bureau of Patents for the registration of the
trademark “Barbizon” for use in horsiers and ladies undergarments (IPC No. 686). Private
respondent reported Barbizon Corporation, a corporation organized and doing business under
the laws of New York, USA, opposed the application. It was alleged that its trademark is
confusingly similar with that of Escobar and that the registration of the said trademark will cause
damage to its business reputation and goodwill. In 1974, the Director of Patents gave due course
to the application. Escobar later assigned all his rights and interest over the trademark to
petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the trademark
required under the Philippine Trademark Law. Due to this failure, the Bureau cancelled Escobar’s
certificate of registration. In 1981, Escobar and petitioner separately filed this application for
registration of the same trademark. (IPC 2049). Private respondent opposed again. This time it
alleged (1) that the said trademark was registered with the US Patent Office; (2) that it is entitled
to protection as well-known mark under Article 6 bis of the Paris Convention, EO 913 and the two
Memoranda of the Minister of Trade and Industry and (3) that its use on the same class of goods
amounts to a violation of the Trademark Law and Art. 189 of the RPC. Petitioner raised the
defense of Res Judicata.
Issue:
One of the requisites of res judicata is identical causes of action. Do IPC No. 686 and IPC No. 2049
involve the same cause of action?
Ruling:
No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised the issue
of ownership, the first registration and use of the trademark in the US and other countries, and
the international recognition of the trademark established by extensive use and advertisement of
respondents products for over 40 years here and abroad. These are different from the issues of
confessing similarity and damage in IPC 686. The issue of prior use may have been raised in IPC
686 but this claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems
from the respondents claims originator of the word and symbol “Barbizon”, as the first and
registered user of the mark attached to its products which have been sold and advertised would
arise for a considerable number of years prior to petitioner’s first application. Indeed, these are
substantial allegations that raised new issues and necessarily gave respondents a new cause of
action.
Moreover, the cancellation of petitioner’s certificate registration for failure to file the affidavit of
use arose after IPC 686. This gave respondent another cause to oppose the second application.
It is also to be noted that the oppositions in the first and second cases are based on different
laws. Causes of action which are distinct and independent from each other, although out of the
same contract, transaction, or state of facts, may be sued on separately, recovery on one being
no bar to subsequent actions on others. The mere fact that the same relief is sought in the
subsequent action will not render the judgment in the prior action operating as res judicata, such
as where the actions are based on different statutes.
Note: guys will you forgive me for not reading the full text? The case is written by your favorite
ponente : PUNO….. the case is so long and it would consume much of the time… historical
development and functions of a trademark 
 Additional information
The Philippines and the United States of America have acceded to the WTO Agreement x xx
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.
Thus, the first paragraph of Article 6bis of the Paris Convention is applicable in the instant case:
This Article governs protection of well-known trademarks. Under the first paragraph, each
country of the Union bound itself to undertake to refuse or cancel the registration, and prohibit
the use of a trademark which is a reproduction, imitation or translation, or any essential part of
which trademark constitutes a reproduction, liable to create confusion, of a mark considered by
the competent authority of the country where protection is sought, to be well-known in the
country as being already the mark of a person entitled to the benefits of the Convention, and
used for identical or similar goods.
It is a self-executing provision and does not require legislative enactment to give it effect in the
member country.
*****************
 Trademark in R.A. No. 8293, the Intellectual Property Code of the Philippines: defines
as “any visible sign capable of distinguishing goods.” In Philippine jurisprudence, the function of a
trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to
secure to him, who has been instrumental in bringing into the market a superior article of
merchandise, the fruit of his industry and skill; to assure the public that they are procuring the
genuine article; to prevent fraud and imposition; and to protect the manufacturer against
substitution and sale of an inferior and different article as his product.
3. Definition of Marks, Service Marks and Collective Marks
[G.R. No. 120900. July 20, 2000.]
CANON KABUSHIKI KAISHA, petitioner, vs. COURT OF APPEALS and NSR RUBBER CORPORATION,
respondents.
Facts of the Case:
Petitioner Canon Kabushiki Kaisha seeks a review of the decision of the Court of Appeals (CA) and
the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) which approved private
respondent's application for registration of the mark CANON for sandals.
Based on the records, the evidence presented by petitioner consisted of its certificates of
registration for the mark CANON in various countries covering goods belonging to class 2 (paints,
chemical products, toner, and dye stuff). Petitioner also submitted in evidence its Philippine
Trademark Registration No. 39398, showing its ownership over the trademark CANON also under
class 2.
Issue:
Whether or not the trademark “CANON” can be used by private respondent for its sandals.
Ruling of the Court:
Yes.
On appeal, the Supreme Court upheld the decision of the CA and the BPTTT ruling that the
trademark "CANON" as used by petitioner for its paints, chemical products, toner and dyestuff,
can be used by private respondent for its sandals because the products of these two parties are
dissimilar; that petitioner failed to present evidence that it has also embarked in the production
of footwear products; and that the evident disparity of the products of the parties in this case
rendered unfounded the apprehension of petitioner that confusion of business or origin might
occur if private respondent is allowed to use the mark CANON.
Ordinarily, the ownership of a trademark or tradename is a property right that the owner is
entitled to protect as mandated by the Trademark Law. However, when a trademark is used by a
party for a product in which the other party does not deal, the use of the same trademark on the
latter's product cannot be validly objected to. A review of the records shows that with the order
of the BPTTT declaring private respondent in default for failure to file its answer, petitioner had
every opportunity to present ex-parte all of its evidence to prove that its certificates of
registration for the trademark CANON cover footwear. The certificates of registration for the
trademark CANON in other countries and in the Philippines as presented by petitioner, clearly
showed that said certificates of registration cover goods belonging to class 2 (paints, chemical
products, toner, dyestuff). On this basis, the BPTTT correctly ruled that since the certificate of
registration of petitioner for the trademark CANON covers class 2 (paints, chemical products,
toner, dyestuff), private respondent can use the trademark CANON for its goods classified as
class 25 (sandals). Clearly, there is a world of difference between the paints, chemical products,
toner, and dyestuff of petitioner and the sandals of private respondent.
Petitioner counters that notwithstanding the dissimilarity of the products of the parties, the
trademark owner is entitled to protection when the use of by the junior user "forestalls the
normal expansion of his business." Petitioner's opposition to the registration of its trademark
(CANON) by private respondent rests upon petitioner's insistence that it would be precluded
from using the mark CANON for various kinds of footwear, when in fact it has earlier used said
mark for said goods. Stretching this argument, petitioner claims that it is possible that the public
could presume that petitioner would also produce a wide variety of footwear considering the
diversity of its products marketed worldwide. We do not agree. Even in this instant petition,
except for its bare assertions, petitioner failed to attach evidence that would convince this Court
that petitioner has also embarked in the production of footwear products. . . . In Faberge,
Incorporated vs. Intermediate Appellate Court, . . . We reiterated the principle that the certificate
of registration confers upon the trademark owner the exclusive right to use its own symbol only
to those goods specified in the certificate, subject to the conditions and limitations stated therein.
Thus, the exclusive right of petitioner in this case to use the trademark CANON is limited to the
products covered by its certificate of registration.
The likelihood of confusion of goods or business is a relative concept, to be determined only
according to the particular, and sometimes peculiar, circumstances of each case. Indeed, in
trademark law cases, even more than in other litigation, precedent must be studied in the light of
the facts of the particular case. Contrary to petitioner's supposition, the facts of this case will
show that the cases of Sta. Ana vs. Maliwat, Ang vs. Teodoro and Converse Rubber Corporation
vs. Universal Rubber Products, Inc. are hardly in point. The just cited cases involved goods that
were confusingly similar, if not identical, as in the case of Converse Rubber Corporation vs.
Universal Rubber Products, Inc. Here, the products involved are so unrelated that the public will
not be misled that there is the slightest nexus between petitioner and the goods of private
respondent. In cases of confusion of business or origin, the question that usually arises is
whether the respective goods or services of the senior user and the junior user are so related as
to likely cause confusion of business or origin, and thereby render the trademark or tradenames
confusing similar. . . . Undoubtedly, the paints, chemical products, toner and dyestuff of
petitioner that carry the trademark CANON are unrelated to sandals, the product of private
respondent.
SOCIETE DES PRODUITS VS CA
FACTS
1984, private respondent CFC Corporation filed with the BPTTT (Bureau of Patents, Trademarks
and Technology Transfer) an application for the registration of the trademark "FLAVOR MASTER"
for instant coffee. The application, as a matter of due course, was published in the issue of the
BPTTT's Official Gazette.
Two oppose to the registration:
Petitioner Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws and
domiciled in Switzerland, filed an unverified Notice of Opposition, claiming that the trademark of
private respondent's product is "confusingly similar to its trademarks for coffee and coffee
extracts, to wit: MASTER ROAST and MASTER BLEND,” and Nestle Philippines, Inc., a Philippine
corporation and a licensee of Societe.
Nestle claimed that the use, if any, by CFC of the trademark FLAVOR MASTER and its registration
would likely cause confusion in the trade; or deceive purchasers and would falsely suggest to the
purchasing public a connection in the business of Nestle, as the dominant word present in the
three (3) trademarks is "MASTER"; or that the goods of CFC might be mistaken as having
originated from the latter.
BPTT denied CFC application. But CA reversed and ordered BPTT to grant application, hence, this
petition.
ISSUE: WON CFC trademark would cause confusion in trade or deceive purchaser.
HELD: GRANTED.
A trademark has been generally defined as "any word, name, symbol or device adopted and used
by a manufacturer or merchant to identify his goods and distinguish them from those
manufactured and sold by others."
Section 4 (d) of Republic Act No. 166 or the Trademark Law, as amended, which was in force at
the time, provides thus:
Registration of trade-marks, trade-names and service-marks on the principal register. — There is
hereby established a register of trade-marks, trade-names and service marks which shall be
known as the principal register. The owner of a trade-mark, trade-name or service-mark used to
distinguish his goods, business or services from the goods, business or services of others shall
have the right to register the same on the principal register, unless it:
xxxxxxxxx
(d)Consists of or comprises a mark or trade-name which so resembles a mark or trade-name
registered in the Philippines or a mark or trade-name previously used in the Philippines by
another and not abandoned, as to be likely, when applied to or used in connection with the
goods, business or services of the applicant, to cause confusion or mistake or to deceive
purchasers; (emphasis supplied)
The law prescribes a more stringent standard in that there should not only be confusing similarity
but that it should not likely cause confusion or mistake or deceive purchasers.
Hence, the question in this case is whether there is a likelihood that the trademark FLAVOR
MASTER may cause confusion or mistake or may deceive purchasers that said product is the
same or is manufactured by the same company. In other words, the issue is whether the
trademark FLAVOR MASTER is a colorable imitation of the trademarks MASTER ROAST and
MASTER BLEND.
Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive
ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser
giving such attention as a purchaser usually gives, as to cause him to purchase the one supposing
it to be the other. In determining if colorable imitation exists, jurisprudence has developed two
kinds of tests — the Dominancy Test and the Holistic Test. The test of dominancy focuses on the
similarity of the prevalent features of the competing trademarks which might cause confusion or
deception and thus constitute infringement. On the other side of the spectrum, the holistic test
mandates that the entirety of the marks in question must be considered in determining
confusing similarity.
The application of the totality or holistic test is improper since the ordinary purchaser would not
be inclined to notice the specific features, similarities or dissimilarities, considering that the
product is an inexpensive and common household item.
The totality or holistic test only relies on visual comparison between two trademarks whereas the
dominancy test relies not only on the visual but also on the aural and connotative comparisons
and overall impressions between the two trademarks.
As found by BPTT and affirmed by SC, it is sufficiently established that the word MASTER is the
dominant feature of opposer's mark. The word MASTER is printed across the middle portion of
the label in bold letters almost twice the size of the printed word ROAST. Further, the word
MASTER has always been given emphasis in the TV and radio commercials and other
advertisements made in promoting the product. This can be gleaned from the fact that Robert
Jaworski and Atty. Ric Puno Jr., the personalities engaged to promote the product, are given the
titles Master of the Game and Master of the Talk Show, respectively. In due time, because of
these advertising schemes the mind of the buying public had come to learn to associate the word
MASTER with the opposer's goods.
. . . It is the observation of this Office that much of the dominance which the word MASTER has
acquired through Opposer's advertising schemes is carried over when the same is incorporated
into respondent-applicant's trademark FLAVOR MASTER. Thus, when one looks at the label
bearing the trademark FLAVOR MASTER (Exh. 4) one's attention is easily attracted to the word
MASTER, rather than to the dissimilarities that exist. Therefore, the possibility of confusion as to
the goods which bear the competing marks or as to the origins thereof is not farfetched…”
4. Functions of a Trademark
Mirpuri, supra
PHIL REFINING CO VS NG SAM
FACTS:
>The trademark CAMIA was first used in the Phils by petitioner in 1922 on its products
> The petitioner registered CAMIA in 1949 with the Phil Patent Office
 it covers vegetable and animal fats, lard, butter, and cooking oild under Class 47 of
the Rules of Practice of the Patent Office
> Respondent, Ng Sam, filed an application in the PPO for registering an identical trademark
“CAMIA” for his product which is ham, still falling under Class 47, allegedly on 1959
>The petitioner opposed the application of the respondent under the Trademark Law:
a mark which consists of or comprises a mark or tradename which so resembles a mark
or tradename registered in the Philippines or a mark or tradename previously used in the
Philippines by another and not abandoned, as to be likely, when applied to or used in connection
with the goods, business services of the applicant, to cause confusion or mistake or to deceive
purchasers.
ISSUE: WON the product of Ng Sam, ham, and those of petitioner, lard or oil products, are so
related that the use of the same CAMIA would result to confusion of source or origin.
HELD:
A rudimentary precept in trademark protection is that "the right to a trademark is a limited one,
in the sense that others may used the same mark on unrelated goods." 1 Thus, as pronounced by
the United States Supreme Court in the case of American Foundries vs. Robertson 2, "the mere
fact that one person has adopted and used a trademark on his goods does not prevent the
adoption and use of the same trademark by others on articles of a different description."
Such restricted right over a trademark is likewise reflected in our Trademark law. Under Section
4(d) of the law, registration of a trademark which so resembles another already registered or in
use should be denied, where to allow such registration could likely result in confusion, mistake or
deception to the consumers. Conversely, where no confusion is likely to arise, as in this case,
registration of a similar or even Identical mark may be allowed.
The term "CAMIA" is descriptive of a whole genus of garden plants with fragrant white flowers.
Some people call the "CAMIA" the "white ginger plant" because of its tuberous roots, while
children refer to it as the butterfly flower because of its shape. Being a generic and common term,
its appropriation as a trademark, albeit in a fanciful manner in that it bears no relation to the
product it Identifies, is valid. However, the degree of exclusiveness accorded to each user is
closely restricted. 3
The records of this case disclose that the term "CAMIA" has been registered as a trademark not
only by petitioner but by two (2) other concerns, as follows:
1. CAMIA Application No. 280 Registration No. SR-320 Date Registered — May 26, 1960 Owner —
Everbright Development Company Business Address — 310 M. H. del Pilar Grace Park, Caloocan
City Class 4 — Thread and Yarn
2. CAMIA and Representation Application No. 538 Date Filed — August 10, 1945 Date Registered -
April 20, 1946 Owner — F.E. Zuellig, Inc. Business Address — 55 Rosario St., Manila Class 43 —
Particular Good on which mark is used: Textiles, Embroideries laces, etc.
A trademark is designed to Identify the user. But it should be so distinctive and sufficiently
original as to enable those who come into contact with it to recognize instantly the Identity of the
user. " It must be affirmative and definite, significant and distinctive, capable to indicate origin." 4
5 confusion as to the origin of their respective goods. Consequently, he recommended that the
The trademark "CAMIA" is used by petitioner on a wide range of products: lard, butter, cooking
oil, abrasive detergents, polishing materials and soap of all kinds. Respondent desires to use the
same on his product, ham. While ham and some of the products of petitioner are classified under
Class 47 (Foods and Ingredients of Food), this alone cannot serve as the decisive factor in the
resolution of whether or not they are related goods. Emphasis should be on the similarity of the
products involved and not on the arbitrary classification or general description of their properties
or characteristics.
In his decision, the Director of Patents enumerated the factors that set respondent's product
apart from the goods of petitioner. He opined and We quote:
I have taken into account such factors as probable purchaser attitude and habits, marketing
activities, retail outlets, and commercial impression likely to be conveyed by the trademarks if
used in conjunction with the respective goods of the parties. I believe that ham on one hand, and
lard, butter, oil, and soap on the other are products that would not move in the same manner
through the same channels of trade. They pertain to unrelated fields of manufacture, might be
distributed and marketed under dissimilar conditions, and are displayed separately even though
they frequently may be sold through the same retail food establishments. Opposer's products are
ordinary day-to-day household items whereas ham is not necessarily so. Thus, the goods of the
parties are not of a character which purchasers would be likely to attribute to a common origin.
(p. 23, Rollo).
The observation and conclusion of the Director of Patents are correct. The particular goods of the
parties are so unrelated that consumers would not in any probability mistake one as the source
or origin of the product of the other. "Ham" is not a daily food fare for the average consumer.
One purchasing ham would exercise a more cautious inspection of what he buys on account of its
price. Seldom, if ever, is the purchase of said food product delegated to household helps, except
perhaps to those who, like the cooks, are expected to know their business. Besides, there can be
no likelihood for the consumer of respondent's ham to confuse its source as anyone but
respondent. The facsimile of the label attached by him on his product, his business name "SAM'S
HAM AND BACON FACTORY" written in bold white letters against a reddish orange background 6,
is certain to catch the eye of the class of consumers to which he caters.
In addition, the goods of petitioners are basically derived from vegetable oil and animal fats,
while the product of respondent is processed from pig's legs. A consumer would not reasonably
assume that, petitioner has so diversified its business as to include the product of respondent.
5. Nature of a Trademark Right
ARCE SONS AND CO VS. SELECTA BISCUITS
Facts: On August 31, 1955, Selecta Biscuit Company, Inc., hereinafter referred to as respondent,
filed with the Philippine Patent Office a petition for the registration of the word "SELECTA" as
trade-mark to be used on its bakery products alleging that it is in actual use thereof for not less
than two months before said date and that "no other person, partnership, corporation, or
association . . . has the right to use said trade-mark in the Philippines, either in the identical form
or in any such near resemblance thereto, as might be calculated to deceive." Its petition was
referred to an examiner for study who found that the trade-mark sought to be registered
resembles the word "SELECTA" used by Arce Sons and Company, hereinafter referred to as
petitioner, in its milk and ice cream products so that its very use by respondent will cause
application be refused. However, upon reconsideration, the Patent Office ordered the
publication of the application - for purposes of opposition.
It appears that Ramon Arce, predecessor-in-interest of petitioner, started his milk business as
early as 1933. He sold his milk products in bottles covered by caps on which the words "SELECTA
FRESH MILK" were inscribed. Expanding his business, he established a store at Lepanto Street,
City of Manila, where he sold, in addition to his milk products, ice cream, sandwiches and other
food products, placing right in of his establishment a signboard with the name "SELECTA"
inscribed thereon. Special containers made of tin cans with the word "SELECTA" written on their
covers were used for his products. Bottles with the same word embossed on their sides were
used for his milk products. The sandwiches he sold and distributed were wrapped in carton boxes
with covers bearing the same name. He used several cars and trucks for delivery purposes on the
sides of which were written the same word. As new products were produced for sale, the same
were placed in containers with the same name written on their covers. After the war, he added
to his business such items as cakes, bread, cookies, pastries and assorted bakery products. Then
his business was acquired by petitioner, a co-partnership organized by his sons, the purposes of
which are "to conduct a first class restaurant business; to engage in the manufacture and sale of
ice cream, milk, cakes and other dairy and bakery products; and to carry on such other legitimate
business as may produce profit
Respondent claims that it adopted the trade-mark "SELECTA" in good faith and not precisely to
engage in unfair competition with petitioner. It tried to establish that respondent was organized
as a corporation under the name of Selecta Biscuit Company, Inc. on March 2, 1955 and started
operations as a biscuit factory on June 20, 1955; that the name "SELECTA" was chosen by the
organizers of respondent who are Chinese citizens as a translation of the Chinese word
"ChingSuan" which means "mapili" in Tagalog, and "Selected" in English; that, thereupon, it
registered its articles of incorporation with the Securities and Exchange Commission and the
name "SELECTA" as a business name with the Bureau of Commerce which issued to it Certificate
of Registration No. 55594; and that it also registered the same trade-name with the Bureau of
Internal Revenue and took steps to obtain a patent from the Patent Office by filing with it an
application for the registration of said trade-name.
On September 28, 1958, the Court of First Instance of Manila rendered decision in the unfair
competition case perpetually enjoining respondent from using the name "SELECTA" as a trade-
mark on the goods manufactured and/or sold by it and ordering it to pay petitioner by way of
damages all the profits it may have realized by the use of said name, plus the sum of P5,000.00
as attorney's fees and costs of suit. From this decision, respondent brought the matter on appeal
to the Court of Appeals.
Director of Patents, on December 7, 1958, rendered decision dismissing petitioner's opposition
and stating that the registration of the trademark "SELECTA" in favor of applicant Selecta Biscuit
Company, Inc., will not cause confusion or mistake nor will deceive the purchasers as to cause
damage to petitioner. Hence, petitioner interposed the present petition for review
Issue: Which between court a quo and the Director of Patents is correct
Ruling: Court a quo.
Petitioner, through its predecessor-in-interest, had made use of the location of the restaurant
where it manufactures and sells its products, but as a trade-mark to indicate the goods it offers
for sale to the public. No other conclusion can be drawn. This is the very meaning or essence in
which a trade-mark is used. This is not only in accordance with its general acceptance but with
our law on the matter.
"'Trade-mark' or "trade-name', distinction being highly technical, is sign, device, or mark by which
articles produced are dealt in by particular person or organization are distinguished or
distinguishable from those produced or dealt in by others." (Church of God vs. Tomlinson Church
of God, 247 SW 2d. 63, 64)
"A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of a
particular producer or manufacturer may be distinguished from that of others, and its sole
function is to designate distinctively the origin of the products to which it is attached." (Reynolds
& Reynolds Co. vs. Norick, et al., 114 F 2d, 278)
"The term 'trade-mark' includes any word, name, symbol, emblem, sign or device or any
combination thereof adopted and used by a manufacturer or merchant to identify his goods and
distinguished them from those manufactured, sold or dealt in by others". (Section 38, Republic
Act No. 166)
Verily, the word "SELECTA" has been chosen by petitioner and has been inscribed on all its
products to serve not only as a sign or symbol that may indicate that they are manufactured and
sold by it but as a mark of authenticity that may distinguish them from the products
manufactured and sold by other merchants or businessmen. The Director of Patents, therefore,
erred in holding that petitioner made use of that word merely as a trade-name and not as trade-
mark within the meaning of the law.
The word "SELECTA", it is true, may be an ordinary or common word in the sense that it 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. In this sense, its use by another may lead to confusion
in trade and cause damage to its business. And this is the situation of petitioner when it used the
word "SELECTA" as a trade-mark. In this sense, the law gives it protection and guarantees its use
to the exclusion of all others (G. & C. Merrian Co. vs. Saalfield, 198 F. 369, 373). And it is also in
this sense that the law postulates that "The ownership or possession of a trade-mark, . . . shall be
recognized and protected in the same manner and to the same extent, as are other property
rights known to the law," thereby giving to any person entitled to the exclusive use of such trade-
mark the right to recover damages in a civil action from any person who may have sold goods of
similar kind bearing such trade-mark
The doctrine of secondary meaning could be applied in this case. This doctrine is to the effect
that a word or phrase originally incapable of exclusive appropriation with reference to an article
on the market, because geographically or otherwise descriptive, might nevertheless have been
used so long and so exclusively by one producer with reference to his article that, in that trade
and to that branch of the purchasing public, the word or phrase has come to mean that the
article was his product."
The suggestion that the name "SELECTA" was chosen by the organizers of respondent merely as
a translation from a Chinese word "ChingSuan" meaning "mapili" in the dialect is betrayed by the
very manner of its selection, for if the only purpose is to make an English translation of that word
and not to compete with the business of petitioner, why choose the word "SELECTA", a Spanish
word, and not "Selected", the English equivalent thereof, as was done by other well- known
enterprises? In the words of petitioner's counsel, "Why with all the words in the English
dictionary and all the words in the Spanish dictionary and all the phrases that could be coined,
should defendant- appellant (respondent) chose 'SELECTA' if its purpose was not and is not to
fool the people and to damage plaintiff-appellee?". In this respect, we find appropriate the
following comment of the trial court:
"Eventually, like the plaintiff, one is tempted to ask as to why with the richness in words of the
English language and with the affluence of the Spanish vocabulary or, for that matter, of our own
dialects, should the defendant choose the controverted word 'Selecta', which has already
acquired a secondary meaning by virtue of plaintiff's prior and continued use of the same as a
trademark or tradename for its products? The explanation given by Sy Hap, manager of the
defendant, that the word 'Selecta' was chosen for its bakery products by the organizers of said
company from the Chinese Word 'ChingSuan' meaning 'mapili', which in English means 'Selected',
and that they chose 'selecta', being the English translation, is, to say the least, very weak and
untenable. Sy Hap himself admitted that he had known EulalioArce, the person managing
plaintiff's business since 1954; that since he begun to reside at 10th Avenue, Grace Park, he had
known the Selecta Restaurant on Azcarraga street; that at the time he established the defendant
company, he knew that the word 'Selecta' was being employed in connection with the business
of EulalioArce; that he had seen signboards of 'Selecta on Azcarraga Street and Dewey Boulevard
and that he even had occasion to eat in one of the restaurants of the plaintiff. All of these
circumstances tend to conspire in inducing one to doubt defendant's motive for using the same
word 'Selecta' for its bakery products. To allow the defendant here to use the word 'Selecta' in
spite of the fact that this word has already been adopted and exploited by Ramon Arce and by his
family thru the organization of Arce Sons and Company, for the maintenance of its goodwill, for
which said plaintiff and its predecessor have spent time, effort, and fortune, is to permit business
pirates and buccaneers to appropriate for themselves and to their profit and advantage the trade
names and trade marks of well established merchants with all their attendant goodwill and
commercial benefit. Certainly, this cannot be allowed, and it becomes the duty of the court to
protect the legitimate owners of said trade-names and trade- marks, for under the law, the same
constitute one kind of property right entitled to the necessary legal protection."
NATURE OF A TRADEMARK RIGHT; BASIS OF A RIGHT TO A MARK; ORDINARY PURCHASER;
RIGHTS OF FOREIGN CORPORATION TO SUE A TRADEMARK; TRADE NAMES OR BUSINESS NAMES
CONVERSE RUBBER CORPORATION, petitioner, vs. UNIVERSAL RUBBER PRODUCTS, INC. and
TIBURCIO S. EVALLE, DIRECTOR OF PATENTS, respondents.
Facts:
Respondent Universal Rubber Products, Inc. filed an application with the Philippine Patent office
for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and
rubber slippers.
Petitioner converse rubber corporation filed an opposition to the application because the
trademark that the respondents want to register is confusingly similar to their corporate name
CONVERSE RUBBER CORPORATION and would likely deceive customers that the products that
universal rubber product may be mistaken to be manufactured by the petitioners. It would
likewise cause them great and irreparable injury to the reputation of the business and would
cause damage to the petitioner.
The petitioner has already been doing business and using the trade name for may years in USA
but the petitioners are not licensed to do business on its own in the Philippines.
the Director of Patents dismissed the opposition of the petitioner and gave due course to
respondent's application.
Issue:
whether or not the applicant's partial appropriation of the Opposer's [petitioner'] corporate
name is of such character that in this particular case, it is calculated to deceive or confuse the
public to the injury of the corporation to which the name belongs . . .
Ruling:
"A trade name is any individual name or surname, firm name, device or word used by
manufacturers, industrialists, merchants and others to identify their businesses, vocations or
occupations." 8"As the trade name refers to the business and its goodwill . . . the trademark
refers to the goods." 9 The ownership of a trademark or tradename is a property right which the
owner is entitled to protect "since there is damage to him from confusion or reputation or
goodwill in the mind of the public as well as from confusion of goods. The modern trend is to
give emphasis to the unfairness of the acts and to classify and treat the issue as fraud."
the petitioner's corporate name "CONVERSE RUBBER CORPORATION,' it is evident that the word
"CONVERSE" is the dominant word which identifies petitioner from other corporations engaged
in similar business.
Respondent, in the stipulation of facts, admitted petitioner's existence since 1946 as a duly
organized foreign corporation engaged in the manufacture of rubber shoes. This admission
necessarily betrays its knowledge of the reputation and business of petitioner even before it
applied for registration of the trademark in question. Knowing, therefore, that the word
"CONVERSE" belongs to and is being used by petitioner, and is in fact the dominant word in
petitioner's corporate name, respondent has no right to appropriate the same for use on its
products which are similar to those being produced by petitioner.
"A corporation is entitled to the cancellation of a mark that is confusingly similar to its corporate
name." 11 "Appropriation by another of the dominant part of a corporate name is an
infringement." 12
It is a corollary logical deduction that while Converse Rubber Corporation is not licensed to do
business in the country and is not actually doing business here, it does not mean that its goods
are not being sold here or that it has not earned a reputation or goodwill as regards its products.
The determinative factor in ascertaining whether or not marks are confusingly similar to each
other "is not whether the challenged mark would actually cause commission or deception of the
purchasers but whether the use of such mark would likely cause confusion or mistake on the part
of the buying public. 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 new brand for it." 19 Even if not all the details just mentioned were identical, with
the general appearance alone of the two products, any ordinary, or even perhaps even [sic] a not
too perceptive and discriminating customer could be deceived . .
When the law speaks of "purchaser," the reference is to ordinary average purchasers. 21 "It is
not necessary in either case that the resemblance be sufficient to deceive experts, dealers, or
other persons specially familiar with the trademark or goods involved." 22
The similarity in the general appearance of respondent's trademark and that of petitioner would
evidently create a likelihood of confusion among the purchasing public. But even assuming,
arguendo, that the trademark sought to be registered by respondent is distinctively dissimilar
from those of the petitioner, the likelihood of confusion would still subsists, not on the
purchaser's perception of the goods but on the origins thereof. By appropriating the word
"CONVERSE," respondent's products are likely to be mistaken as having been produced by
petitioner. "The risk of damage is not limited to a possible confusion of goods but also includes
confusion of reputation if the public could reasonably assume that the goods of the parties
originated from the same source. 23
WHEREFORE, the decision of the Director of Patents is hereby set aside and a new one entered
denying Respondent Universal Rubber Products, Inc.'s application for registration of the
trademark "UNIVERSAL CONVERSE AND DEVICE" on its rubber shoes and slippers.
SO ORDERED.
6. Trademark vs. Trade Name
Canon, supra
7. Basis of the Right to a Mark
[G.R. No. 75067. February 26, 1988.]
PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G., petitioner, vs.THE INTERMEDIATE
APPELLATE COURT and MIL-ORO MANUFACTURING CORPORATION, respondents.
Facts of the Case:
On July 25, 1985, the petitioner, a foreign corporation duly organized and existing under the laws
of the Federal Republic of Germany and the manufacturer and producer of "PUMA PRODUCTS,"
filed a complaint for infringement of patent or trademark with a prayer for the issuance of a writ
of preliminary injunction against the private respondent before the Regional Trial Court of Makati.
On August 9, 1985, the private respondent filed a motion to dismiss on the grounds that the
petitioners' complaint states no cause of action, petitioner has no legal personality to sue, and
litispendentia.
On August 19, 1985, the trial court denied the motion to dismiss and at the same time granted
the petitioner's application for a writ of injunction. The private respondents appealed to the
Court of Appeals.
On June 23, 1986, the Court of Appeals reversed the order of the trial court and ordered the
respondent judge to dismiss the civil case filed by the petitioner.
With regard to the petitioner's legal capacity to sue, the Court of Appeals likewise held that it had
no such capacity because it failed to allege reciprocity in its complaint:
"As to private respondent's having no legal personality to sue, the record discloses that private
respondent was suing under Sec. 21-A of Republic Act No. 166, as amended (p. 50, Annex "A",
Petition). This is the exception to the general rule that a foreign corporation doing business in the
Philippines must secure a license to do business before said foreign corporation could maintain a
court or administrative suit (Sec. 133, Corporation Code, in relation to Sec. 21-A, RA 638, as
amended). However, there are some conditions which must be met before that exception could
be made to apply, namely: (a) the trademark of the suing corporation must be registered in the
Philippines, or that it be the assignee thereof: and (b) that there exists a reciprocal treatment to
Philippine Corporations either by law or convention by the country of origin of the foreign
corporation (Sec. 21-A, Trademark Law). Petitioner recognizes that private respondent is the
holder of several certificates of registration, otherwise, the former would not have instituted
cancellation proceedings in the Patent's Office. Petitioner actually zeroes on the second requisite
provided by Section 21-A of the Trademark Law which is the private respondent's failure to allege
reciprocity in the complaint. . . ."
Issue:
Whether or not petitioner has the legal capacity to sue the present case.
Ruling of the Court:
We agree.
In the leading case of La Chemise Lacoste, S.A. v. Fernandez, (129 SCRA 373), we ruled:
"But even assuming the truth of the private respondent's allegation that the petitioner failed to
allege material facts in its petition relative to capacity to sue, the petitioner may still maintain the
present suit against respondent Hemandas. As early as 1927, this Court was, and it still is, of the
view that a foreign corporation not doing business in the Philippines needs no license to sue
before Philippine courts for infringement of trademark and unfair competition. Thus, in Western
Equipment and Supply Co. v. Reyes (51 Phil. 115), this Court held that a foreign corporation
which has never done any business in the Philippines and which is unlicensed and unregistered to
do business here, but is widely and favorably known in the Philippines through the use therein of
its products bearing its corporate and trade name, has a legal right to maintain an action in the
Philippines to restrain the residents and inhabitants thereof from organizing a corporation
therein bearing the same name as the foreign corporation, when it appears that they have
personal knowledge of the existence of such a foreign corporation, and it is apparent that the
purpose of the proposed domestic corporation is to deal and trade in the same goods as those of
the foreign corporation."
Quoting the Paris Convention and the case of Vanity Fair Mills, Inc. v. T. Eaton, Co. (234 F.2d 633),
this Court further said:
"By the same token, the petitioner should be given the same treatment in the Philippines as we
make available to our own citizens. We are obligated to assure to nationals of 'countries of the
Union' an effective protection against unfair competition in the same way that they are obligated
to similarly protect Filipino citizens and firms.
"Pursuant to this obligation, the Ministry of Trade on November 20, 1980 issued a memorandum
addressed to the Director of the Patents Office directing the latter —
xxxxxxxxx
" . . . [T]o reject all pending applications for Philippine registration of signature and other world
famous trademarks by applicants other than its original owners or users.
"The conflicting claims over internationally known trademarks involve such name brands as
Lacoste, Jordache, Gloria Vanderbilt, Sasson, Fila, Pierre Cardin, Gucci, Christian Dior, Oscar de la
Renta, Calvin Klein, Givenchy, Ralph Lauren, Geoffrey Beene, Lanvin and Ted Lapidus.
"It is further directed that, in cases where warranted, Philippine registrants of such trademarks
should be asked to surrender their certificates of registration, if any, to avoid suits for damages
and other legal action by the trademarks' foreign or local owners or original users.
"The memorandum is a clear manifestation of our avowed adherence to a policy of cooperation
and amity with all nations. It is not, as wrongly alleged by the private respondent, a personal
policy of Minister Luis Villafuerte which expires once he leaves the Ministry of Trade. For a treaty
or convention is not a mere moral obligation to be enforced or not at the whims of an incumbent
head of a Ministry. It creates a legally binding obligation on the parties founded on the generally
accepted principle of international law of pactasuntservanda which has been adopted as part of
the law of our land. (Constitution, Art. II, Sec. 3). The memorandum reminds the Director of
Patents of his legal duty to obey both law and treaty. It must also be obeyed." (at pp. 389-390, La
Chemise Lacoste, S.A. v. Fernandez, supra).
In the case of Converse Rubber Corporation v. Universal Rubber Products, Inc. (147 SCRA 165),
we likewise re-affirmed our adherence to the Paris Convention:
"The ruling in the aforecited case is in consonance with the Convention of the Union of Paris for
the Protection of Industrial Property to which the Philippines became a party on September 27,
1965. Article 8 thereof provides that 'a trade name [corporation name] shall be protected in all
the countries of the Union without the obligation of filing or registration, whether or not it forms
part of the trademark.'
"The object of the Convention is to accord a national of a member nation extensive protection
'against infringement and other types of unfair competition' [Vanity Fair Mills, Inc. v. T. Eaton Co.,
234 F. 2d 633]." (at p. 165)
"The mandate of the aforementioned Convention finds implementation in Section 37 of RA No.
166, otherwise known as the Trademark Law:
"Rights of Foreign Registrants. — Persons who are nationals of, domiciled in, or have a bona fide
or effective business or commercial establishment in any foreign country, which is a party to an
international convention or treaty relating to marks or tradenames on the repression of unfair
competition to which the Philippines may be party, shall be entitled to the benefits and subject
to the provisions of this Act . . .
"Tradenames of persons described in the first paragraph of this section shall be protected
without the obligation of filing or registration whether or not they form part of marks."
We, therefore, hold that the petitioner had the legal capacity to file the action below.
MARVEX vs HAWPIA
>Respondent, Hawpia, is a partnership under Philippine law, doing business in Manila
>Respondent applied for registration of trademark LIONPAS as a medical plaster
>Marvex, a corporation, filed an opposition to the application of the respondent, alleging that
LIONPAS is violative of its right to its interest in the trademark SALONPAS, on another medical
plaster.
>The Director of Patents dismissed the opposition and gave way to the petition of Hawpia
ISSUE: WON the application should be rejected because of its confusing similarity to SALONPAS
HELD: Petition Granted.
THE RESPONDENTS ARE NOT HE OWNERS
Under sections 2 and 2-A of the Trade Mark Law, as amended, the right to register trademarks,
tradenames and service marks by any person, corporation, partnership or association domiciled
in the Philippines or in any foreign country, is based on ownership, and the burden is upon the
applicant to prove such ownership (Operators, Inc. vs. The Director of Patents, et al., L-17901, Oct.
29, 1965).
A careful scrutiny of the findings of the Director of Patents in exh. 5 will reveal, however, that the
sender of the letter, "OSAKA BOEKI KAISHA LTD.", and which appears to be the seller, is merely a
representative of the manufacturer "ASUNARO PHARMACEUTICAL INDUSTRY CO." There is no
proof that as such representative, the former has been authorized by the latter to sell the
trademark in question.
Moreover, exh. 5 on its face appears to have been signed only by someone whose position in the
company's "Sundries Dept." is not described; the signature is not legible. It is even contradicted
by exh. 6. While exh. 5 shows that "OSAKA BOEKI KAISHA, LTD." is a representative of "ASUNARO
PHARMACEUTICAL INDUSTRY CO."; exh. 6 asserts that the former is not a representative of the
latter, but that it is the owner of the trademark "LIONPAS" (par. 2, exh. 6). At all events, neither
averment can be accorded the weight of an assignment of ownership of the trademark in
question under the Trade Mark Law. Exh. 5 is not acknowledged. Exh. 6 does not bear the
acknowledgment contemplated by the aforesaid law, particularly by the last paragraph of section
37 and paragraph 2 of section 31 of R.A. 166, as amended, which provide as follows:
The registration of a mark under the provisions of this section shall be independent of the
registration in the country of origin and the duration, validity or transfer in the Philippines of such
registration shall be governed by the provisions of this Act. (Sec. 37, last par.) (Emphasis ours)
The assignment must be in writing, acknowledged before a notary public or other officer
authorized to administer oaths or perform other notarial acts and certified under the hand and
official seal of the notary or other officer. (Sec. 31, par. 2)
In this case, although a sheet of paper is attached to exh. 6, on which is typewritten a certification
that the signatures of the presidents of the two named companies (referring to the signatures in
exh. 6) "have been duly written by themselves", this sheet is unmarked, unpaged, unsigned,
undated and unsealed. We have thumbed the record in quest of any definitive evidence that it is
a correct translation of the Japanese characters found on another unmarked and unpaged sheet,
and have found none.
It follows from the above disquisition that exhs. 5 and 6 are legally insufficient to prove that the
applicant is the owner of the trademark in question.
Not being the owner of the trademark "LIONPAS" but being merely an importer and/or
distributor of the said penetrative plaster, the applicant is not entitled under the law to register it
in its name (Operators, Inc. vs. Director of Patents, supra).
SALONPAS and LIONPAS ARE CONFUSINGLY SIMILAR
It is our considered view that the trademarks "SALONPAS" and "LIONPAS" are confusingly similar
in sound.
Both these words have the same suffix, "PAS", which is used to denote a plaster that adheres to
the body with curative powers. "Pas, being merely descriptive, furnishes no indication of the
origin of the article and therefore is open for appropriation by anyone (Ethepa vs. Director of
Patents, L-20635, March 31, 1966) and may properly become the subject of a trademark by
combination with another word or phrase.
Two letters of "SALONPAS" are missing in "LIONPAS"; the first letter a and the letter s. Be that as it
may, when the two words are pronounced, the sound effects are confusingly similar. And where
goods are advertised over the radio, similarity in sound is of especial significance (Co Tiong Sa vs.
Director of Patents, 95 Phil. 1 citing Nims, The Law of Unfair Competition and Trademarks, 4th ed.,
vol. 2, pp. 678-679). "The importance of this rule is emphasized by the increase of radio
advertising in which we are deprived of help of our eyes and must depend entirely on the ear"
(Operators, Inc. vs. Director of Patents, supra).
The following random list of confusingly similar sounds in the matter of trademarks, culled from
Nims, Unfair Competition and Trade Marks, 1947, vol. 1, will reinforce our view that "SALONPAS"
and "LIONPAS" are confusingly similar in sound: "Gold Dust" and "Gold Drop"; "Jantzen" and
"Jazz-Sea"; "Silver Flash" and "Supper-Flash"; "Cascarete" and "Celborite"; "Celluloid" and
"Cellonite"; "Chartreuse" and "Charseurs"; "Cutex" and "Cuticlean"; "Hebe" and "Meje"; "Kotex"
and "Femetex"; "Zuso" and "Hoo Hoo". Leon Amdur, in his book "TradeMark Law and Practice",
pp. 419-421, cites, as coming within the purview of the idem sonans rule, "Yusea" and "U-C-A",
"Steinway Pianos" and "Steinberg Pianos", and "Seven-Up" and "Lemon-Up". In Co Tiong vs.
Director of Patents, this Court unequivocally said that "Celdura" and "Cordura" are confusingly
similar in sound; this Court held in Sapolin Co. vs. Balmaceda, 67 Phil. 795 that the name
"Lusolin" is an infringement of the trademark "Sapolin", as the sound of the two names is almost
the same.
In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much alike. Similarity of
sound is sufficient ground for this Court to rule that the two marks are confusingly similar when
applied to merchandise of the same descriptive properties (see Celanese Corporation of America
vs. E. I. Du Pont, 154 F. 2d. 146, 148).
OPERATORS INC. VS. DIRECTOR OF PATENTS
Facts: Petitioner, a domestic corporation, applied to the Philippine Patent Office for registration
of AMBISCO as a trademark for its locally manufactured candy products. It has been using said
trademark since May 1956 by virtue of two contracts with the American Biscuit Company, also a
domestic corporation.
The National Biscuit Company opposed the application, having previously registered NABISCO as
trademark for its own bakery goods, such as biscuits, crackers, cakes and wafers. The oppositor, a
corporation organized in the United States, has had the said trademark registered in the
Philippines since 1930, and renewed the registration in 1948 under the latest trademark law.
Director of Patents denied the application.
Issues:
(1) whether the applicant had a right in the first place to apply for registration of AMBISCO as a
trademark at all
(2) whether the two trademarks aforesaid are so similar to each other as to cause confusion,
mistake or deception of purchasers;
Ruling: (1) No. Under section 2 of Republic Act No. 166, as amended by section 1 of Republic Act
No. 865, trademarks, trade names, and service marks owned by persons, corporations,
partnerships or associations domiciled in the Philippines or in any foreign country may be
registered here provided certain conditions enumerated in the same section are complied with.
The right to register, as may be noted, is based on ownership. In the case of the trademark
AMBISCO, the evidence shows that it is owned ,by the American Biscuit Co., Inc., and not by
petitioner Operators, Inc. Such evidence consists of the certification signed jointly by Jorge B.
Vargas, and by Eu Chua Leh presidents of the said Corporations, respectively, as follows (Exh. 2):
"On September 26, 1953, and on June 12, 1954, the American Biscuit Co., Inc., and the Operators
Incorporated, both corporations organized under the laws of the Philippines, entered into
contracts, and under such contracts, the Operators Incorporated is authorized by the American
Biscuit Co., Inc. to operate the candy business of the latter and among the various terms and
stipulations in said contracts, the Operators Incorporated agreed to distinctly label and display all
products manufactured and sold by it as products of the American Biscuit Co., Inc. and that all
the trademarks contained in such labels shall be considered as property of the American Biscuit
Co., Inc."
(2) Yes. Considering the similarities in appearance and sound between the marks AMBISCO and
NABISCO, the nature and similarity of the products of the parties together with the fact that
opposer's NABISCO has been used in commerce in the Philippines for more than fifty five (55)
years before AMBISCO was adopted by applicant, confusion of purchasers is likely.
The question of infringement is to be determined by the test of dominancy. The dissimilarity in
size, form and color of the label and the place where applied are not conclusive, If the competing
label contains the trademark of another, and confusion or deception is likely to result,
infringement takes place, regardless of the fact that the accessories are dissimilar. Duplication, or
exact imitation is not necessary; nor is it necessary that the infringing label should suggest an
effort to imitate..
CRISANTA Y. GABRIEL, petitioner, vs. DR. JOSE R. PEREZ and HONORABLE TIBURCIO EVALLE as
Director of Patents, respondents.
Facts:
Petitioner Gabriel filed a petition to cancel and revoke the certificate of registration covering the
trademark WONDER used on beauty products and alleging that the registrant was not entitled to
register the said trademark at the time of his application for registration; that the trademark was
not used and has not been actually used by the registrant at the time he applied for its
registration; that it was through fraud and misrepresentation that the registration was procured
by the registrant and that it has been actually using the said trademark since march 1959 and
she is also known as the owner thereof.
Respondent dr jose perez said that the damages imputed to him by the petitioner through the
manufacture of the beauty soap and the use of the trademark WONDER and restraining him
from manufacturing the soap is not true and the right of the petitioner is not valid.
It was in fact drperez who first obtained a trademark registration to the patents office in 1961.
And that the date of first use of the trademark in 1953 in commerce in the Philippines drperez
was a medical researcher and manufacturer. He experimented on the creation of a beuty soap
for bleaching. The certificate issued to him particularly describe “drperez wonder beauty soap”
he made an agreement with manserco a company owned by the brother of the petitioner into an
exclusive distributorship agreement with crisanta Gabriel and that the latter would make the
packaging and the design of the product and the trademark CY Gabriel WONDER SOAP will be
used.
the Exclusive Distributorship Agreement between petitioner and respondent, the latter
manufactured "WONDER" soap and delivered them to the former who in turn handled the
distribution thereof. This continued for sometime until January, 1961, when the arrangement
was stopped because as claimed and alleged by herein respondent, he discovered that petitioner
began manufacturing her own soap and placed them in the boxes which contained his name and
trademark, and for which reason respondent Dr. Perez filed an unfair competition case against
her (petitioner)
Director of Patents rendered his decision denying the petition to cancel the certificate of
registration
Issue:
Who has the better right to use the trademark?
Ruling:
Dr. Perez had priority of adoption and use of the said trademark. 'The rule is that findings of facts
by the Director of Patents are conclusive on the Supreme Court provided that they are supported
by substantial evidence.'" In the present case, the findings of fact of the respondent Director of
Patents are substantially supported by evidence and no grave abuse of discretion was committed
by said respondent.
Petitioner Crisanta Y. Gabriel appears to be a mere distributor of the product by contract with
the manufacturer, respondent Dr. Jose R. Perez and the same was only for a term. This fact is
also clearly shown by the containers-boxes used in packing the product which indicate and
describe Crisanta Y. Gabriel as the exclusive distributor of the product.
Under the Trademark Law, Republic Act No. 166, as amended, the right to register trademark is
based on ownership and a mere distributor of a product bearing a trademark, even if permitted
to use said trademark, has no right to and cannot register the said trademark
The agreement provides that the petitioner "has the exclusive right of ownership of the packages
and that said party is responsible for the costs as well as the design and manner of packing the
same" did not necessarily grant her the right to the exclusive use of the trademark; because the
agreement never mentioned transfer of ownership of the trademark. It merely empowers the
petitioner as exclusive distributor to own the package and to create a design at her pleasure, but
not the right to appropriate unto herself the sole ownership of the trademark so as to entitle her
to registration in the Patent Office. In fact, the agreement does not even grant her the right to
register the mark, as correctly stated in the appealed decision, which further held that:
"The statute provides that 'the owner of a trademark used in commerce may register his
trademark . . .' By statutory definition a trademark is 'any word, name, symbol or device or any
combination thereof adopted and used by a manufacturer or merchant to identify his goods and
distinguish them from those manufactured by others.' (Emphasis added). There is nothing in the
statute which remotely suggests that one who merely sells a manufacturer's goods bearing the
manufacturer's mark acquires any rights in the mark; nor is there anything in the statute which
suggests that such a person may register a mark which his supplier has adopted and used to
identify his goods.
The exclusive distributor does not acquire any proprietary interest in the principal's trademark.
a trademark can only be used in connection with the sale of the identical article that has been
sold under the trademark or tradename to the extent necessary to establish them as such
WHEREFORE, THE DECISION SOUGHT TO BE REVIEWED IS HEREBY AFFIRMED AND THE PETITION
IS HEREBY DISMISSED. WITH COSTS AGAINST PETITIONER.
[G.R. No. L-28554. February 28, 1983.]
UNNO COMMERCIAL ENTERPRISES, INCORPORATED, petitioner, vs. GENERAL MILLING
CORPORATION and TIBURCIO S. EVALLE, in his capacity as Director of Patents, respondents.
Facts of the Case:
On December 11, 1962, respondent General Milling Corporation filed an application for the
registration of the trademark "All Montana" to be used in the sale of wheat flour. In view of the
fact, that the same trademark was previously registered in favor of petitioner Unno Commercial
Enterprises, Inc., the Chief Trademark Examiner of the Philippines Patent Office declared an
interference proceeding 1 between respondent corporation's application (Serial No. 9732), as
Junior/Party-Applicant, and petitioner company's registration (Registration No. 9589), as Senior
Party-Applicant, docketed in the Philippines Patent Office as Inter Partes Case No. 313, to
determine which party has previously adopted and used the trademark "All Montana".
Respondent General Milling Corporation, in its application for registration, alleged that it started
using the trademark "All Montana" on August 31, 1955 and subsequently was licensed to use the
same by Centennial Mills, Inc. by virtue of a deed of assignment executed on September 20, 1962.
On the other hand, petitioner Unno Commercial Enterprises, Inc. argued that the same
trademark had been registered in its favor on March 8, 1962 asserting that it started using the
trademark on June 30, 1956, as indentor or broker for S.H. Huang Bros. & Co., a local firm.
The Director of Patents, after hearing, ruled in favor of respondent General Milling Corporation.
Issue:
Who can apply for registration of trademark?
Ruling of the Court:
When the applicant is not the owner of the trademark being applied for, he has no right to apply
for the registration of the same. Under the Trademark Law only the owner of the trademark,
trade name or service mark used to distinguish his goods, business or service from the goods,
business or service of others is entitled to register the same. A local importer, however, may
make application for the registration of a foreign trademark, trade name or other mark of
ownership.
The term owner does not include the importer of the goods bearing the trademark, trade name,
service mark, or other mark of ownership, unless such importer is actually the owner thereof in
the country from which the goods are imported. Thus this Court, has on several occasions ruled
that where the applicant's alleged ownership is not shown in any notarial document and the
applicant appears to be merely an importer or distributor of the merchandise covered by said
trademark, its application cannot be granted.
The Director of Patents correctly found that ample evidence was presented that Centennial Mills,
Inc. was the owner and prior user in the Philippines of the trademark "All Montana" through a
local importer and broker. The Deed of Assignment itself constitutes sufficient proof of its
ownership of the trademark "All Montana, "showing that Centennial Mills was a corporation duly
organized and existing under and by virtue of the laws of the State of Oregon, U.S.A. with
principal place and business at Portland, Oregon, U.S.A. and the absolute and registered owner
of several trademarks for wheat flour, i.e. (Imperial, White Lily, Duck, General, Swan, White
Horse, Vinta, El Paro, Baker's Joy, Choice, Red Bowl, All Montana and Dollar) all of which were
assigned by it to respondent General Milling Corporation.
Petitioner's contention that it is the owner of the mark "All Montana'' because of its certificate of
registration issued by the Director of Patents, must fail, since ownership of a trademark is not
acquired by the mere fact of registration alone. Registration merely creates a prima facie
presumption of the validity of the registration, of the registrant's ownership of the trademark
and of the exclusive right to the use thereof. Registration does not perfect a trademark right. As
conceded itself by petitioner, evidence may be presented to overcome the presumption. Prior
use by one will controvert a claim of legal appropriation by subsequent users.
EMERALD GARMENTS MFG. CORP VS CA
FACTS
1981, private respondent H.D. Lee Co., Inc., a foreign corporation organized under the laws of
Delaware, U.S.A., filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a
Petition for Cancellation of Registration for the trademark "STYLISTIC MR. LEE" used on skirts,
jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class
25, issued on 1980 in the name of petitioner Emerald Garment Manufacturing Corporation, a
domestic corporation organized and existing under Philippine laws.
Private respondent, invoking Sec. 37 of R.A. No. 166 (Trademark Law) and Art. VIII of the Paris
Convention, averred that petitioner's trademark "so closely resembled its own trademark, 'LEE'
as previously registered and used in the Philippines, and not abandoned, as to be likely, when
applied to or used in connection with petitioner's goods, to cause confusion, mistake and
deception on the part of the purchasing public as to the origin of the goods.”
1988, the Director of Patents rendered a decision granting private respondent's petition for
cancellation and opposition to registration, using the test of dominancy, declared that
petitioner's trademark was confusingly similar to private respondent's mark because "it is the
word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods
originated from the same manufacturer. It is undeniably the dominant feature of the mark. CA
affirmed BPTT’s decision, hence this petition.
ISSUE: WON petitioner’s trademark can be confused with that of private respondent.
HELD: GRANTED.
Proceeding to the task at hand, the essential element of infringement is colorable imitation. This
term has been defined as "such a close or ingenious imitation as to be calculated to deceive
ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an
ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to
purchase the one supposing it to be the other."
In determining whether colorable imitation exists, jurisprudence has developed two kinds of
tests — the Dominancy Test and the Holistic Test.
Applying the foregoing tenets to the present controversy and taking into account the factual
circumstances of this case, we considered the trademarks involved as a whole (HOLISTIC TEST)
and rule that petitioner's "STYLISTIC MR. LEE" is not confusingly similar to private respondent's
"LEE" trademark.
Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label the word "LEE" is
prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities
between the two marks become conspicuous, noticeable and substantial enough to matter
especially in the light of the following variables that must be factored in.
It is, therefore, improbable that the public would immediately and naturally conclude that
petitioner's "STYLISTIC MR. LEE" is but another variation under private respondent's "LEE" mark.
"LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership
over and singular use of said term.
. . . It has been held that a personal name or surname may not be monopolized as a trademark or
tradename as against others of the same name or surname. For in the absence of contract, fraud,
or estoppel, any man may use his name or surname in all legitimate ways. Thus, "Wellington" is a
surname, and its first user has no cause of action against the junior user of "Wellington" as it is
incapable of exclusive appropriation.
In addition to the foregoing, we are constrained to agree with petitioner's contention that
private respondent failed to prove prior actual commercial use of its "LEE" trademark in the
Philippines before filing its application for registration with the BPTTT and hence, has not
acquired ownership over said mark.
Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of
ownership over a trademark pursuant to Sec. 2 and 2-A of the Philippine Trademark Law (R.A. No.
166)
The credibility placed on a certificate of registration of one's trademark, or its weight as evidence
of validity, ownership and exclusive use, is qualified. A registration certificate serves merely as
prima facie evidence. It is not conclusive but can and may be rebutted by controverting evidence.
Moreover, the aforequoted provision applies only to registrations in the principal register.
Registrations in the supplemental register do not enjoy a similar privilege. A supplemental
register was created precisely for the registration of marks which are not registrable on the
principal register due to some defects.
The determination as to who is the prior user of the trademark is a question of fact and it is this
Court's working principle not to disturb the findings of the Director of Patents on this issue in the
absence of any showing of grave abuse of discretion. The findings of facts of the Director of
Patents are conclusive upon the Supreme Court provided they are supported by substantial
evidence. For lack of adequate proof of actual use of its trademark in the Philippines prior to
petitioner's use of its own mark and for failure to establish confusing similarity between said
trademarks, private respondent's action for infringement must necessarily fail.
Converse Rubber, supra
STERLING vs FARBENFABRIKEN
FACTS:
>Petitioner (SPI) and Respondent (FBA) seeks to exclude the other from use of trademarks BAYER
and BAYER CROSS IN CIRCLE
>SPI wishes to strike down FBA's registration of BAYER CROSS IN CIRCLE, covering industrial and
agricultural products
>FBA wishes to cancel the principal registration of trademarks of medicines (Aspirin, Aspirin for
Children and Cafiaspirina)
> They both use BAYER CROSS IN CIRCLE in each other's products
>The word BAYER was the surname of Freidrich Bayer, a German, who organized a drug company
in his name at Barmen, Germany
 the company was first engaged in chemical products and a year later, it also
dabbled in medicinal products
 Its products became known outside Germany and the company changed its name
to Farbenfabriken vorm. Freidr Bayer ad Co. (FFB) and it acquired more prestige when Bayer
Aspirin was made.
 IT it was not clear when the word BAYER was registered as a trademark in Germany.
 The BAYER CROSS IN CIRCLE, however was registered in 1904, and it was intenden
to be used on medicine for humans and animals, disinfectants, preservatives, dye stuffs and
chemicals for dyes and for photographic purposes.
 It included in the circle the name of the company
 After the company merged with other companies, the BAYER CROSS IN CIRCLE was
reregistered, with the deletion of the company name in the circle. This happened in 1929.
 Sometime in 1895, FFB established another subsidiary, Bayer Co. of New York. It
was authorized to negitiate and acquire trademarks and goodwill, and assets and property ffor
FFB
 However, US declared war against Germany in 1917 and Bayer Co of New York was
declared as an enemy corporation and was sold, together with all its assets and interests to
Sterling Dug Inc.
 Sterling Drug Inc. secured registrations of BAYER trademarks in different countries.
> It appears that BAYER became known in the Philippines about the end of the 19th Century.
> In 1922, major conflicts between Bayer Co. of New York and FFB in reference to BAYER and
BAYER CROSS IN CIRCLE as they were applied to various products..
 this resulted to agreements executed on 1923 in England:
 FFB stipulated to
 not contest anymore Winthrop (subsidiary of Bayer Co. and Sterling
Drugs) and its rights over the trademarks BAYER and BAYER CROSS IN CIRCLE and also
 not to continue using the trademarks in the US, which meant that it
included the Phils (subject to control by the US at the time) and also
 to disclose all secrets of manufacturing pharmaceuticals.
 Bayer, on the other hand agreed to not sell or offer any goods other than Aspirin
and compounds of aspirin, which Bayer Co. shall continue to market for their own account in the
US, Pnama, Puerto Rico and the Philippines.
> Meanwhile, in the Philippines, SPI was granted license to do business in the Philippines in 1935
and the trademarks aforementioned were registered in the Philippines ONLY FOR MEDICINES.
> When WWII came, FFB was seized by the allied powers and was decartelized by the Allies and
then became FBA in 1951.
>AMATCO then started selling FBA's products in 1958, especially Folidol, an insecticide, which
bears the BAYER CROSS IN CIRCLE.
>On 1959, FBA applied for registration of BAYER CROSS IN CIRCLE with the PPO for pesticides.
> The examiner's report revealed the similarity between FBA and SPI's products, and ruled thatit
would cause confusion or mistake which would deceive the purchasers
>FBA replied that it only mean to register in the Supplemental Register, only as a record of its use
by the applicant, and not an evidence of ownership in the Philippines.
>The application was then granted due course and was issued a certificate of registration in the
Supplemental Register in 1960.
ISSUE: Who has the better right to the trademarks?
HELD:
We now grapple with the problems raised in the separate appeals.
1. A rule widely accepted and firmly entrenched because it has come down through the
years is that actual use in commerce or business is a prerequisite to the acquisition of the right of
ownership over a trademark. This rule is spelled out in our. Trademark Law thus:
SEC. 2-A. Ownership of trade-marks, trademark names and service-mark; how acquired. —
Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful
business, or who renders any lawful service in commerce, by actual use thereof in manufacture
or trade, in business, and in the service rendered, may appropriate to his, exclusive use a
trademark, a trade-name, or a service-mark not so appropriated by another, to distinguish his
merchandise, business, or service from the merchandise, business or service of others. The
ownership or possession of a trademark, trade-name, service mark, heretofore or hereafter
appropriated, as in this section provided, shall be recognized and protected in the same manner
and to the same extent as are other property rights known to the law. (As inserted by Section 1 of
Republic Act 638)
It would seem quite clear that adoption alone of a trademark would not give exclusive right
thereto. Such right grows out of their actual use." Adoption is not use. One may make
advertisements, issue circulars, give out price lists on certain goods; but these alone would not
give exclusive right of use. For trademark is a creation of use. The underlying reason for all these
is that Purchasers have come to understand the mark as indicating the origin of the wares.
Flowing from this is the trader's right to protection in the trade he has built up and the goodwill
he has accumulated from use of the trademark. Registration of a trademark, of course, has value:
it is an administrative act declaratory of a pre-existing right. Registration does not, however,
perfect a trademark right.
The BAYER trademarks registered in the Philippines to which plaintiff SPI may lay claim, as
correctly stated in the decision below, are those which cover medicines only. For, it was on said
goods that the BAYER trademarks were actually used by it in the Philippines. Therefore, the
certificates of registration for medicines issued by the Director of Patents upon which the
protection is enjoyed are only for medicines. Nothing in those certificates recited would include
chemical or insecticides.
The fact that the Bayer trademarks were never used in the Philippines by plaintiff except for
medicines — Aspirin, Aspirin for Children and Cafiaspirina — we find ourselves unwilling to draw
a hard and fast rule which would absolutely and under all circumstances give unqualified
protection to plaintiff against the use of said trademarks by all others on goods other than
medicines.
2. Neither will the 1927 registration in the United States of the BAYER trademark for
insecticides serve plaintiff any. The United States is not the Philippines. Registration in the United
States is not registration in the Philippines. At the time of the United States registration in 1927,
we had our own Trademark Law, Act No. 666 aforesaid of the Philippine Commission, which
provided for registration here of trademarks owned by persons domiciled in the United States.
What is to be secured from unfair competition in a given territory is the trade which one
has in that particular territory. There is where his business is carried on; where the goodwill
symbolized by the trademark has immediate value; where the infringer may profit by
infringement.
3. A question basic in the field of trademarks and unfair competition is the extent to which a
registrant of a trademark covering one product may invoke the right to protection against the use
by other(s) of the same trademark to identify merchandise different from those for which the
trademark has been appropriated.
Plaintiff's trenchant claim is that it should not be turned away because its case comes
within the protection of the confusion of origin rule. Callmann notes two types of confusion. The
first is the confusion of goods "in which event the ordinarily prudent purchaser would be induced
to purchase one product in the belief that he was purchasing the other." In which case,
"defendant's goods are then bought as the plaintiff's, and the poorer quality of the former
reflects adversely on the plaintiff's reputation." The other is the confusion of business: "Here
though the goods of the parties are different, the defendant's product is such as might
reasonably be assumed to originate with the plaintiff, and the public would then be deceived
either into that belief or into the belief that there is some connection between the plaintiff and
defendant which, in fact, does not exist."24
Ang Tibay Case: "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 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 the first user made the second user's
goods.
However, we are convinced that the case before us is not to be analogized with Ang Tibay.
The factual setting is different. His Honor, Judge Magno S. Gatmaitan (now Associate Justice of
the Court of Appeals), the trial judge, so found. He reached a conclusion likewise different. And
the reasons, so well stated by His Honor, are these:
1st). — It was not plaintiff's predecessor but defendant's namely Farbenfabriken or Bayer
Germany that first introduced the medical products into the Philippine market and household
with the Bayer mark half a century ago; this is what the Court gathers from the testimony of
Frederick Umbreit and this is the implication even of Exhs. 48, 49, 66 and as already shown a few
pages back;28
2nd). — There is thus reason plausible enough for defendant' plea that as Sterling was not the
"originator" of the Bayer mark, the rule in Ang vs. Teodoro, supra, is not applicable since Bayer of
New York was only another subsidiary of Bayer Germany or Farbenfabriken which was the real
originator;
XXXXXXX
The Courts have come to realize that there can be unfair competition or unfair trading even
if the goods are non-competing, and that such unfair trading can cause injury or damage to the
first user of a given trade mark, first, by prevention of the natural expansion of his business, and
second, by having his business reputation confused with and put at the mercy of the second user.
74 Phil. 55-56;
and the Court having found out that the 'first user' was Bayer Germany and it was this that
had built up the Bayer mark and plaintiff apparently having itself encouraged that belief even
after it had acquired the Bayer mark in America, thru forced sale, of defendant's subsidiary there
in 1918, Exhs. 79, 80, 81, to apply the Ang Tibay rule in the manner advocated by Sterling would,
the Court fears, produce the reverse result and the consequence would be not equity but
injustice.34
It would seem to us that the fact that plaintiff rode on the German reputation in the Bayer
trademark has diluted the rationally of its exclusionary claim. Not that the free ride in the name
of defendant's German predecessor was sporadic. It is continuing.
With the background of prior use in the Philippines of the word BAYER by FBA's German
predecessor and the prior representations that plaintiff's medicines sold in the Philippines were
manufactured in Germany, the facts just recited hammer on the mind of the public that the
Aspirin. Cafiaspirina and Aspirin for Children being marketed for plaintiff in the Philippines come
from the same source — the German source — and in use since 1900.
The Ang Tibay doctrine, we believe, is not to be read as shunting aside the time-honored
teaching that he who comes into equity must do so with clean hands.36 Plaintiff cannot now say
that the present worth of its BAYER trademarks it owes solely to its own efforts; it is not insulated
from the charge that as it marketed its medicines it did so with an eye to the goodwill as to
quality that defendants' predecessor had established.
There is no whittling away of the identity of plaintiff's trademarks. Plaintiff is not the first
user thereof in the Philippines. The trademarks do not necessarily link plaintiff with the public.
Plaintiff must show injury; it has not.
Plaintiff, the owner in this country of the trademarks BAYER for medicines, has thus
forfeited its right to protection from the use of the same trademarks by defendants for products
different therefrom — insecticides and other chemicals.
5. But defendants ask us to delist plaintiff's BAYER trademarks for medicines from the
Principal Register, claiming right thereto for said use. Said trademarks had been registered since
1939 by plaintiff's predecessor. The Bayer Co., Inc.
Defendants' claim is stale; it suffers from the defect of non-use.39 While it is conceded that
FBA's predecessors first introduced medical products with the BAYER trademarks in the Philippine
market, it is equally true that, after World War I, no definite evidence there is that defendants or
their professors traded in the Philippines in medicines with the BAYER trademarks thereafter. FBA
did not seasonably voice its objection. Lack of protest thereto connoted acquiescence. And this;
notwithstanding the fact that the 1923 and 1926 agreements were set aside in the anti-trust suits.
Defendants did use the marks; but it was much later, i.e., in 1958 — and on chemicals and
insecticides — not on medicines. FBA only bestirred itself and challenged plaintiff's right to the
trademarks on medicines when this suit was filed. Vigilantibus non dormientibus equitas
subvenit.40
The net result is that, as the trial court aptly observed, plaintiff may hold on to its BAYER
trademarks for medicines. And defendants may continue using the same trademarks for
insecticides and other chemicals, not medicines.
Defendants balk at the ruling below which directs them "to add a distinctive word or words
in their mark to indicate that their products come from Germany."41
We are left under no doubt as to the reasonableness of the formula thus fashioned. It
avoids the mischief of confusion of origin — defendant FBA's product would not be mistaken for
those of plaintiff. It reduces friction. We perceive of no prejudice to defendants. The order does
not visit defendant FBA with reprobation or condemnation. Rather, said defendant would be
enhancing the value of and would be sponsoring its own products. Anyway, a statement that its
products come from Germany is but a statement of fact.
8. Prior Use of a Mark
Sec. 124.2, Sec 152, Sec. 138
9. Who may apply for a mark?
Sec. 3
10. Registrability of a mark
Sec. 123.1, Sec. 123.3
Emerald Garments, supra
ANG VS. WELLINGTON
Facts: Plaintiffs-appellants herein are engaged in the business of manufacturing shirts, pants,
drawers, and other articles of wear for men, women, and children. They have been in that
business since the year 1938. In the year 1940 they registered the business name "Wellington
Company," and this registration of the name was renewed on June 11, 1946. Their invoices,
stationery, and signboard bear the trade name "Wellington Company," and in newspaper
advertisements they described their business as "Wellington Shirt Factory."
Defendant Benjamin Chua applied for the registration of the business name "Wellington
Department Store" on May 7, 1946. His application therefor was approved by the Bureau of
Commerce, and a certificate issued in his favor.
The plaintiffs-appellants allege that the use of the words "Wellington Department Store" as a
business name and as a corporate name by the defendant-appellee deceives the public into
buying defendant corporation's goods under the mistaken belief that the names are the
plaintiff's or have the same source as plaintiffs' goods, thereby resulting in damage to them. They,
therefore, pray that the defendant corporation be enjoined from using the business name
"Wellington Department Store" and the corporate name "Wellington Department Store, Inc.";
that the Director of Commerce be ordered to cancel the registration of said business name, and
the Securities and Exchange Commissioner be also ordered to cancel the corporate name
"Wellington Department Store, Inc." In their answer the defendants Wellington Department
Store, Inc., and Benjamin Chua allege, by way of special defense, that the plaintiffs are engaged
in the manufacture or production of shirts, pants, drawers, and other articles of wear for men,
women, and children, and keep a dry goods store for the sale of the same, whereas they (the
defendants) are not engaged in the same business or in the manufacture or sale of articles with
the trademark "Wellington," and that they are keeping a store for articles such as shoes, hats,
toys, perfumes, bags, apparels, and the like, most of which are different from those
manufactured and sold by plaintiffs-appellants.
The court a quo dismissed the complaint and absolved the defendants therefrom, holding that
the corporate name "Wellington Department Store, Inc.," has not been previously acquired and
appropriated by any person or corporation. Hence, instant appeal.
Issues: 1) Whether plaintiffs- appellants are entitled to damages or injunctive relief for the use by
the defendants-appellees of the name "Wellington."
2) Whether the use of the business name "Wellington Department Store, Inc.," misleads and
confuses the public that would make the defendants liable for unfair competition
Ruling: 1) No. The term "Wellington" is either a geographical name (see Webster's International
Dictionary, where it is said to be the capital of New Zealand; urban district of Shropshire, England
and of Somersetshire, England; co. seat, of Summer co., Kans, etc.), or the surname of a person.
But mere geographical names are ordinarily regarded as common property, and it is a general
rule that the same cannot be appropriated as the subject of an exclusive trademark or
tradename. (52 Am. Jur., 548.) Even if Wellington were a surname, which is not even that of the
plaintiffs-appellants, it cannot also be validly registered as a tradename. (Section 4, Paragraph (e),
Republic Act No. 166.) As the term cannot be appropriated as a trademark or a tradename, no
action for violation thereof can be maintained, as none is granted by the statute in such cases.
The right to damages and for an injunction for infringement of a trademark or a tradename is
granted only to those entitled to the exclusive use of a registered trademark or tradename.
(Section 23, Republic Act No. 166.) It is evident, therefore, that no action may lie in favor of the
plaintiffs- appellants herein for damages or injunctive relief for the use by the defendants-
appellees of the name "Wellington."
2) No. In order to determine whether defendants are liable in this respect and have deceived the
public into believing that the goods they sell are of plaintiffs' manufacture or proceed from the
same source as plaintiffs' goods, all the surrounding circumstances must be taken into account,
especially the identity or similarity of names, the identity or similarity of their business, how far
the names are a true description of the kind and quality of the articles manufactured or the
business carried on, the extent of the confusion which may be created or produced, the distance
between the place of business of one and the other party, etc.
While there is similarity between the trademark or tradename "Wellington Company" and that of
"Wellington Department Store," no confusion or deception can possibly result or arise from such
similarity because the latter is a "department store," while the former does not purport to be so.
The name "Wellington" is admittedly the name of the trademark on the shirts, pants, drawers,
and other articles of wear for men, women and children, whereas the name used by the
defendant indicates not these manufactured articles or any similar merchandise, but a
department store. Neither can the public be said to be deceived into the belief that the goods
being sold in defendant's store originate from the plaintiffs, because the evidence shows that
defendant's store sells no shirts or wear bearing the trademark "Wellington," but other
trademarks. Neither could such deception be by any possibility produced because defendant's
store is situated on the Escolta, while plaintiffs' store or place of business is located in another
business district far away from the Escolta. The mere fact that two or more customers of the
plaintiffs thought of the probable identity of the products sold by one and the other is not
sufficient proof of the supposed confusion that the public has been led into by the use of the
name adopted by the defendants. No evidence has been submitted that customers of the
plaintiffs-appellants had actually been misled into purchasing defendant's articles and
merchandise, for the very witnesses who have supposedly noted the use of plaintiffs' tradename
do not claim to have actually purchased any articles from defendant's store.
The plaintiffs- appellants have not been able to show the existence of a cause of action for
unfair competition against the defendants-appellees.
The judgment appealed from is, therefore, affirmed, with costs against the plaintiffs-appellants.
Identical with Prior Marks
CHUANCHOW SOY & CANNING CO., petitioner, vs. THE DIRECTOR OF PATENTS and ROSARIO
VILLAPANIA, respondents.
Facts:
Petitioner and private respondent are engaged in the manufacturing and sale of soy sauce. Since
1950 petitioner had been using a trademark the works CARP BRAND SOY printed in the
distinctive style of lettering above the drawing of a fish to distinguish its product on labels. In
1953, the Patent Office issued Trademark Registration Certificate 4384 to it for its aforesaid
trademark.
Respondent Villapania since 1956 had been using as trademark of her soy sauce the name of
"Bangos Brand" written in the same distinctive style of lettering as that of the petitioner's "Carp
Brand", above the drawing of a fish similar to the fish drawing on the trademark of petitioner, on
labels also attached to the bottles containing her soy sauce, and the bottles were wrapped also
in tissue paper bearing a similar design
On 1956, villapa applied for registration of her trademark. The examiner of the office of the
director of patents found that the fish representation closely resembles to applicant’s mark as
presented in the drawing. Despite the ruling of the director of patents, he is still continuing to
the use of the labels and wrappers
Issue:
Whether or not BANGUS BRAND is identical to prior mark CARP?
Ruling:
When two competing labels are placed together for inspection and still they may confuse an
ordinary person, specially cooks and maids, who as a rule are the ones in charge of buying such
household article as soy sauce, there would be more confusion and doubt when the two labels
are not placed together for comparison and the prospective purchaser is guided only by his
memory or recollection that the soy sauce he or she is planning to buy has as its label the
drawing of a fish with letters and Chinese characters, written in a certain style of lettering and
color.
When, as in the present case, one applies for the registration of a trademark or label which is
almost the same or very closely resembles one already used and registered by another, the
application should be rejected and dismissed outright, even without any opposition on the part
of the owner and user of a previously registered label or trademark, this not only to avoid
confusion on the part of the public, but also to protect an already used and registered trademark
and an established goodwill.
There should be no halfway measures, as was done in this case by the ruling of the examiner who
directed the respondent to amend or modify the label or trademark she sought to register by
eliminating some portions thereof. As a result, although the word "Soy" and the drawing of a fish
were eliminated, still, the word "Bangos" and the word "Brand" which are similar to the style of
lettering of the corresponding words in the label, Exhibit B, of petitioner, could still create
confusion or doubt in the mind of prospective purchasers, to say nothing of the fact that the
words "Carp" and "Bangos" both indicate fish, and the additional fact that both trademarks and
labels refer to or advertise the same product, namely, soy sauce.
"The danger of confusion in trademarks and brands which are similar may not be so great in the
case of commodities or articles of relatively great value, such as, radio and television sets, air
conditioning units, machinery, etc., for the prospective buyer, generally the head of the family or
a businessman, before making the purchase, reads the pamphlets and all literature available,
describing the article he is planning to buy, and perhaps even makes comparisons with similar
articles in the market. He is not likely to be deceived by similarity in the trademarks because he
makes a more or less thorough study of the same and may even consult his friends about the
relative merit and performance of the article or machinery, as compared to others also for sale.
The Director of Patents should as much as possible discourage all attempts at imitation of labels
already used and registered, as already stated, to avoid confusion, to protect the public from
purchasing the wrong article or brand and also to give protection to those who have established
goodwill, reputation and name in the manufacture and sale of their products by means of a label
of long standing and use and duly registered.
Another circumstance against the registration of the trademark or label of respondent is that she
would appear not to have used the amended or modified label she presented for registration,
but continued to use the original label or trademark which was refused registration by the
Director of Patents. This indicates not only her desire to continue taking advantage of the
goodwill acquired and established by the petitioner, but it equally shows that she had not used
the label or trademark now being applied for by her, despite the fact that the law requires at
least two months previous use prior to application for registration. 1
In view of the foregoing, the appealed decision is hereby reversed; the opposition of petitioner to
respondents application is hereby sustained and respondent's application for registration is
denied, with costs against respondent.
Phil. Refining, supra
ESSO STANDARDS EASTERN INC. VS CA
FACTS
Petitioner ESSO STANDARD EASTERN INC., then a foreign corporation duly licensed to do
business in the Philippines, is engaged in the sale of petroleum products which are identified with
its trademark ESSO (which as successor of the defunct Standard Vacuum Oil Co. it registered as a
business name with the Bureaus of Commerce and Internal Revenue in April and May, 1962).
Private respondent, UNITED CIGARETTE CORPORATION, in turn is a domestic corporation then
engaged in the manufacture and sale of cigarettes, after it the business, factory and patent rights
of its predecessor La Oriental Tobacco Corporation, one of the rights thus acquired having been
the use of the trademark ESSO on its cigarettes, for which a permit had been duly granted by the
Bureau of Internal Revenue.
Petitioner filed an action in CFI (Court of First Instance), the former asserted that the continued
use by private respondent of the same trademark ESSO on its cigarettes was being carried out for
the purpose of deceiving the public as to its quality and origin to the detriment and disadvantage
of its own products.
CFI ruled that respondent was guilty of infringement of trademark. However, CA reversed the
latter decision, hence this petition.
ISSUE: WON private respondent infringe the trademark of ESSO.
HELD. NO.
The law defines infringement as the use without consent of the trademark owner of any
"reproduction, counterfeit, copy or colorable imitation of any registered mark or tradename in
connection with the sale, offering for sale, or advertising of any goods, business or services on or
in connection with which such use is likely to cause confusion or mistake or to deceive
purchasers or others as to the source or origin of such goods or services, or identity of such
business; or reproduce, counterfeit, copy or colorably imitate any such mark or tradename and
apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in connection with such
goods, business or services." Implicit in this definition is the concept that the goods must be so
related that there is a likelihood either of confusion of goods or business. But likelihood of
confusion is a relative concept; to be determined only according to the particular, and sometimes
peculiar, circumstances of each case.
It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum
products, and the product of respondent, cigarettes, are non-competing. But as to whether
trademark infringement exists depends for the most part upon whether or not the goods are so
related that the public may be, or is actually, deceived and misled that they came from the same
maker or manufacturer. For non-competing goods may be those which, though they are not in
actual competition, are so related to each other that it might reasonably be assumed that they
originate from one manufacturer. Non-competing goods may also be those which, being entirely
unrelated, could not reasonably be assumed to have a common source. In the former case of
related goods, confusion of business could arise out of the use of similar marks; in the latter case
of non-related goods, it could not.
Goods are related when they belong to the same class or have the same descriptive properties;
when they possess the same physical attributes or essential characteristics with reference to
their form, composition, texture or quality.
Herein compared good are obviously different from each other — with "absolutely no iota of
similitude" as stressed in respondent court's judgment. They are so foreign to each other as to
make it unlikely that purchasers would think that petitioner is the manufacturer of respondent's
goods. The mere fact that one person has adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by others on unrelated articles of a
different kind.
Canon, supra
Confusingly Similar Marks
AMERICAN WIRE vs DIRECTOR OF PATENTS
FACTS:
> American Wire and Cable Co., is the registered owner of DURAFLEX trademark for electric wires
since April 1958.
>Central Banhaw applied with the PPO on June 1962 for registrartion of DYNAFLEX and Device to
be used for electric wires, which the applicant allegedly has been using since March,1962.
>American Wire opposed the application, alleging that it would likely cause confusion or result in
mistake on the part of buyers whose intent are to by DURAFLEX, the mark having practically the
same speling, pronunciation, sound, and covering the same goods.
>petitioner also alleged that there was no continuous use in commerce of the respondent's mark.
> The Director of Patents, however, denied the opposition and granted due course to the
appication.
ISSUE: WON DYNAFLEX is registrable as label for electric wires, considering that DURAFLEX is also
for electric wires and has been registered 4 years earlier.
HELD: Petition Granted
THERE IS NO NEED FOR A TRADEMARK TO ACTUALLY CAUSE CONFUSION TO BE DENIED
The pertinent law, Republic Act 166, as amended, on registrability of trademarks, prescribes:
SEC. 4. — The owner of a trademark, trade name or service-mark used to distinguish his goods,
business or services from the goods, business or services of others shall have the right to register
the same, unless it:
xxx xxx xxx
(d) Consists of or comprises a mark or trade name which so resembles a mark or trade-name
registered in the Philippines by another and not abandoned, as to be likely, when applied to or
used in connection with the goods, business or services of the applicant, to cause confusion or
mistake or to deceive purchasers. (Emphasis supplied)
It is clear from the above-quoted provision that the determinative factor in a contest involving
registration of trade mark is not whether the challenged mark would actually cause confusion or
deception of the purchasers but whether the use of such mark would likely cause confusion or
mistake on the part of the buying public.
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.
DOMINANCY TEST
The question is, when is a trademark likely to confuse or cause the public to mistake one for
another? Earlier rulings of the Court seem to indicate its reliance on the dominancy test or the
assessment of the essential ordominant features in the competing labels to determine whether
they are confusingly similar.1 On this matter, the Court said:
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 is it necessary that the infringing label should suggest an effort to
imitate (C. Neilman Brewing Co. vs. Independent Brewing Co., 191 F. 489, 495, citing Eagle White
Lead Co. vs. Pflugh [CC] 180 Fed. 579). The question at issue in cases of infringement of
trademarks is whether the use of the marks involved would be likely to cause confusion or
mistakes in the mind of the public or deceive purchasers." (Go Tiong vs. Director of Patents, 95
Phil. 1, cited in Lim Hoa vs. Director of Patents, 100 Phil. 214).2
In fact, even their similarity in sound is taken into consideration, where the marks refer to
merchandise of the same descriptive properties, for the reason that trade idem
sonans constitutes a violation of trade mark patents.3 Thus, in he case of Marvex Commercial Co.
vs. Hawpia & Co.,4 the registration of the trademark "Lionpas" for medicated plaster was denied
for being confusingly similar in sound with "Salonpas", a registered mark also for medicated
plaster.
The present case is governed by the principles laid down in the preceding cases. The similarity
between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not only are the
initial letters and the last half of the appellations identical, but the difference exists only in two
out of the eight literal elements of the designations. Coupled with the fact that both marks cover
insulated flexible wires under class 20; that both products are contained in boxes of the same
material, color, shape and size; that the dominant elements of the front designs are a red circle
and a diagonal zigzag commonly related to a spark or flash of electricity; that the back of both
boxes show similar circles of broken lines with arrows at the center pointing outward, with the
identical legend "Cut Out Ring" "Draw From Inside Circle", no difficulty is experienced in reaching
the conclusion that there is a deceptive similarity that would lead the purchaser to confuse one
product with the other.
The Director of Patents has predicated his decision mostly on the semantic difference and
connotation of the prefixes "Dura" and "Dyna" of the competing trademarks, unfortunately
forgetting that the buyers are less concerned with the etymology of the words as with their
sound and the dominant features of the design.
Of course, as in all other cases of colorable imitations, the unanswered riddle is why, of the
millions of terms and combinations of letters and designs available, the appellee had to choose
those so closely similar to another's trademark if there was no intent to take advantage of the
goodwill generated by the other mark.
ETEPHA VS. DIRECTOR OF PATENTS.
Facts: On April 23, 1959, respondent Westmont Pharmaceuticals, Inc., a New York corporation,
sought registration of trademark "Atussin" placed on its "medicinal preparation of expectorant
antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used in the treatment of
cough". The trademark is used exclusively in the Philippines since January 21, 1959.
Petitioner, Etepha, A.G., a Liechtenstein corporation, objected. Petitioner claims that it will be
damaged because Atussin is so confusedly similar to its Pertussin (Registration No. 6089, issued
on September 25, 1957) used on a preparation for the treatment of coughs, that the buying
public will be misled into believing that Westmont's product is that of petitioner's which allegedly
enjoys goodwill.
May trademark ATUSSIN be registered, given the fact that PERTUSSIN, another trademark, had
been previously registered in the Patent Office? — The Director of Patents answered
affirmatively. Hence this appeal.
Issue: Whether Atussin so resembles Pertussin "as to be likely, when applied to or used in
connection with the goods . . . of the applicant, to cause confusion or mistake or to deceive
purchasers".
Ruling: No. The objects of a trademark are "to point out distinctly the origin or ownership of the
article to which it is affixed, to secure to him who has been instrumental in bringing into market a
superior article of merchandise the fruit of his industry and skill, and to prevent fraud and
imposition".
The validity of a cause for infringement is predicated upon colorable imitation. The phrase
"colorable imitation" denotes such a "close or ingenious imitation as to be calculated to deceive
ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser
giving such attention as a purchaser usually gives, and to cause him to purchase the one
supposing it to be the other
"TUSSIN" is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of
the goods; it is open for appropriation by anyone. It is accordingly barred from registration as
trademark. But while "tussin" by itself cannot thus be used exclusively to identify one's goods, it
may properly become the subject of a trademark "by combination with another word or phrase".
A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two
trademarks pictured in their manner of display. Inspection should be undertaken from the
viewpoint of prospective buyer. The trademark complained of should be compared and
contrasted with the purchaser's memory (not in juxtaposition) of the trade mark said to be
infringed. (87 C.J.S., pp. 288-291) Some such factors as `sound; appearance; form, style, shape,
size or format; color; ideas connoted by marks; the meaning, spelling, and pronunciation of
words used; and the setting in which the words appear" may be considered, (87 C.J.S., pp. 291-
292.) For, indeed, trademark infringement is a form of unfair competition. (Clarke vs. Manila
Candy Co., 36 Phil. 100, 106; Co Tiong Sa vs. Director of Patents, 95 Phil., 1, 4,)
Confusion is likely between trademarks only if their over-all presentations in any of the
particulars of sound, appearance, or meaning are such as would lead the purchasing public into
believing that the products to which the marks are applied emanated from the same source. In
testing this issue, fixed legal rules exist — if not in harmony, certainly in abundance — but, in the
final analysis, the application of these rules in any given situation necessarily reflects a matter of
individual judgment largely predicated on opinion. There is, however, and can be no
disagreement with the rule that the purchaser is confused, if at all by the marks as a whole."
Considering the two labels in question — Pertussin and Atussin — as they appear on the
respective labels, these words are presented to the public in different styles of writing and
methods of design. The horizontal plain, block letters of Atussin and the diagonally and
artistically upward writing of Pertussin leave distinct visual impressions. One look is enough to
denude the mind of that illuminating similarity so essential for a trademark infringement case to
prosper. The two labels are entirely different in colors, contents, arrangement of words thereon,
sizes, shapes and general appearance. The contrast in pictorial effects and appeals to the eye is
so pronounced that the label of one cannot be mistaken for that of the other, not even by
persons unfamiliar with the two trademarks.
Moreover, the two words do not sound alike — when pronounced. There is not as much as
phonetic similarity between the two. In Pertussin the pronunciation of the prefix "Per", whether
correct or incorrect, includes a combination of three letters P, e and r; whereas, in Atussin the
whole word starts with the single letter A added to the suffix "tussin". Appeals to the ear are
dissimilar. And this, because in a word- combination, the part that comes first is the most
pronounced.
In the solution of a trademark infringement problem, regard too should be given to the class of
persons who buy the particular product and the circumstances ordinarily attendant to its
acquisition. (87 C.J.S., p. 295). The medicinal preparations, clothed with the trade marks in
question, are unlike articles of everyday use such as candies, ice cream, milk, soft drinks and the
like which may be freely obtained by anyone, anytime, anywhere. Petitioner's and respondent's
products are to be dispensed upon medical prescription. An intending buyer must have to go first
to a licensed doctor of medicine; he receives instructions as to what to purchase; he examines
the product sold to him; he checks to find out whether it conforms to the medical prescription.
Similarly, the pharmacist or druggist verifies the medicine sold. The margin of error in the
acquisition of one for the other is quite remote. It is possible that buyers might be able to obtain
Pertussin or Atussin without prescription. When this happens, then the buyer must be one
thoroughly familiar with what he intends to get, else he would not have the temerity to ask for a
medicine — specifically needed to cure a given ailment. For a person who purchases with open
eyes is hardly the man to be deceived.
RUEDA HERMANOS & CO., plaintiff-appellant, vs. FELIX PAGLINAWAN & CO., defendant-appellant.
Facts:
Both parties are manufacturing chocolate candies. The plaintiff have been in many years in the
business and registered trademark for its product in year 1910. In march 1914 defendant the
defendant commenced the manufacture of its confection. Both parties made their product in the
shape of flat circular pieces, each package containing 5 pieces. The package was cylindrical in
shape where practically the same packaging and appearance and also the printing. The lines are
also the same
A simple comparison of the two shows that there is no difference between the one declared
upon and the one described in the affidavit.
Issue:
Whether or not the defendant in this case acted with intent to imitate the product of the plaintiff?
Ruling:
"The true test of unfair competition is whether certain goods have been clothed with an
appearance which is likely to deceive the ordinary purchaser exercising ordinary care, and not
whether a certain limited class of purchasers with special knowledge not possessed by the
ordinary purchaser could avoid mistake by the exercise of this special knowledge."
If the contents of two packages are the same commodity, it is no defense to an action for unfair
competition to show minor differences in the size or shape of the packages, or in the wording or
color of the labels or wrappers of the packages. If the exterior size, shape, color and description,
in other words, those things which go to make up the general outside appearance of the article,
are so substantially similar as to "likely deceive the ordinary purchaser, exercising ordinary care,"
the defendant is guilty of unfair competition.
In so far as the finding of actual intent to imitate the plaintiff's product is concerned, it must be
remembered that this "may be inferred from similarity in the appearance of the goods as packed
or offered for sale to those of the complaining party."
"Even if the resemblance is accidental and not intentional, plaintiff is entitled to protection
against its injurious results to his trade."
For the foregoing reasons, the judgment appealed from is affirmed, without any pronouncement
as to the costs. So ordered.
Ordinary Purchaser
[G.R. No. L-32747. November 29, 1984.]
FRUIT OF THE LOOM, INC., petitioner, vs. COURT OF APPEALS and GENERAL GARMENTS
CORPORATION, respondents.
Facts of the Case:
Petitioner, a corporation duly organized and existing under the laws of the State of Rhode Island,
United States of America, is the registrant of a trademark, FRUIT OF THE LOOM, in the Philippines
Patent Office and was issued two Certificates of Registration Nos. 6227 and 6680, on November
29, 1957 and July 26, 1958, respectively. The classes of merchandise covered by Registration
Certificate No. 6227 are, among others, men's, women's and children's underwear, which
includes women's panties and which fall under class 40 in the Philippine Patent Office's
classification of goods. Registration Certificate No. 6680 covers knitted, netted and textile fabrics.
Private respondent, a domestic corporation, is the registrant of a trademark FRUIT FOR EVE in
the Philippine Patent Office and was issued a Certificate of Registration No. 10160, on January 10,
1963 covering garments similar to petitioner's products like women's panties and pajamas.
On March 31, 1965 petitioner filed before the lower court, a complaint for infringement of
trademark and unfair competition against the herein private respondent. Petitioner principally
alleged in the complaint that private respondent's trademark FRUIT FOR EVE is confusingly
similar to its trademark FRUIT OF THE LOOM used also on women's panties and other textile
products. Furthermore, it was also alleged therein that the color get-up and general appearance
of private respondent's hang tag consisting of a big red apple is a colorable imitation to the hang
tag of petitioner.
On April 19, 1965, private respondent filed an answer invoking the special defense that its
registered trademark is not confusingly similar to that of petitioner as the latter alleged. Likewise,
private respondent stated that the trademark FRUIT FOR EVE is being used on ladies' panties and
pajamas only whereas petitioner's trademark is used even on men's underwear and pajamas.
After trial, judgment was rendered by the lower court in favor of herein petitioner. On October 8,
1970, the former Court of Appeals, as already stated, rendered its questioned decision reversing
the judgment of the lower court and dismissing herein petitioner's complaint.
Issue:
Whether or not the trademarks “FRUIT OF THE LOOM” and “FRUIT OF EVER” resemble each
other.
Ruling of the Court:
No.
In cases involving infringement of trademark brought before this Court it has been consistently
held that there is infringement of trademark when the use of the mark involved would be likely
to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin
or source of commodity.
In determining whether the trademarks are confusingly similar, a comparison of the words is not
the only determinant factor. The trademarks in their entirety as they appear in their respective
labels or hang tags must also be considered in relation to the goods to which they are attached.
The discerning eye of the observer must focus not only on the predominant words but also on
the other features appearing in both labels in order that he may draw his conclusion whether
one is confusingly similar to the other (Bristol Myers Co. vs. Director of Patents, 17 SCRA 131).
In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone similar word is FRUIT By
mere pronouncing the two marks, it could hardly be said that it will provoke a confusion, as to
mistake one for the other. Standing by itself, FRUIT OF THE LOOM is wholly different from FRUIT
FOR EVE. The Court does not agree with petitioner that the dominant feature of both trademarks
is the word FRUIT for even in the printing of the trademark in both hang tags, the word FRUIT is
not at all made dominant over the other words.
As to the design and coloring scheme of the hang tags, We believe that while there are
similarities in the two marks like the red apple at the center of each mark, We also find
differences or dissimilarities which are glaring and striking to the eye. The similarities of the
competing trademarks in this case are completely lost in the substantial differences in the design
and general appearance of their respective hang tags. The Court has examined the two
trademarks as they appear in the hang tags submitted by the parties and the Court is impressed
more by the dissimilarities than by the similarities appearing therein.
The trademarks, FRUIT OF THE LOOM and FRUIT FOR EVE do not resemble each other as to
confuse or deceive an ordinary purchaser. The ordinary purchaser must be thought of as having,
and credited with, at least a modicum of intelligence (carnation Co. vs. California Growers
Wineries, 97 F. 2d 80; HyramWalke and Sons vs. Penn-Maryland Corp., 79 F. 2d 836) to be able to
see the obvious differences between the two trademarks in question. Furthermore, a person
who buys petitioner's products and starts to have a liking for it, will not get confused and reach
out for private respondent's products when she goes to a garment store.
Converse Rubber, supra
Etepha, supra
LIM HOA VS DIRECTOR OF PATENTS
FACTS:
Petitioner, Lim Hoa, application for registration consists of a representation of two midget
roosters in an attitude of combat with the word "Bantam" printed above them, he claiming that
he had used said trademark on a food seasoning product.
Respondent, Agricom Development Co., Inc., registered mark consists of a pictorial
representation of a hen with the words "Hen Brand" and "MarcaManok", which mark or brand
was also used on a food seasoning product.
ISSUE: WON petitioner application for registration of a mark is infringing on respondent mark.
HELD: YES.
After a careful examination of the facts above mentioned, and after comparing the two brands,
we do not hesitate to say and to hold that there is such similarity between the two brands as to
cause confusion in the mind of the public that buys the food seasoning product on the strength
and on the indication of the trademark or brand identifying or distinguishing the same. In the
case of Go TiongSa vs. Director of Patents, we had occasion to say the following:
". . . 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 the
marks involved would be likely to cause confusion or mistakes in the mind of the public or
deceive purchasers.
The danger of confusion in trademarks and brands which are similar may not be so great in the
case of commodities or articles of relatively great value, such as, radio and television sets, air
conditioning units, machinery, etc., for the prospective buyer, generally the head of the family or
a businessman, before making the purchase, reads the pamphlets and all literature available,
describing the article he is planning to buy, and perhaps even makes comparisons with similar
articles in the market. He is not likely to be deceived by similarity in the trademarks because he
makes a more or less thorough study of the same and may even consult his friends about the
relative merit and performance of the article or machinery, as compared to others also for sale
But in the sale of a food seasoning product, a kitchen article of everyday consumption, the
circumstances are far different. Said product is generally purchased by cooks and household help,
sometimes illiterate who are guided by pictorial representations and the sound of the word
descriptive of said representation. The two roosters appearing in the trademark of the applicant
and the hen appearing on the trademark of the oppositor, although of different sexes, belong to
the same family of chicken, known as manok in all the principal dialects of the Philippines, and
when a cook or a household help or even a housewife buys a food seasoning product for the
kitchen the brand of "Manok" or "MarcaManok" would most likely be upper most in her mind
and would influence her in selecting the product, regardless of whether the brand pictures a hen
or a rooster or two roosters. To her, they are all manok. Therein lies the confusion, even
deception.
We do not see why applicant could not have stretched his imagination even a little and extended
his choice to other members of the animal kingdom, as a brand to differentiate his product from
similar products in the market.
ASIA BREWERY, INC. petitioner, vs. THE HON. COURT OF APPEALS and SAN MIGUEL
CORPORATION, respondents.
Ordinary purchaser
FACTS:
San Miguel sued asia brewery for infringement of trademark and unfair competition on account
of the latter’s BEER PALE PILSEN OR BEER NA BEER product in the local beer market. The trial
court ruled in favor of asia brewery. The CA reversed.
ISSUE:
issue of whether ABI, by manufacturing and selling its BEER PALE PILSEN in amber colored steinie
bottles of 320 ml. capacity with a white painted rectangular label has committed trademark
infringement and unfair competition against SMC
Does ABI's BEER PALE PILSEN label or "design" infringe upon SMC's SAN MIGUEL PALE PILSEN
WITH RECTANGULAR MALT AND HOPS DESIGN? The answer is "No."
The question at issue in cases of infringement of trademarks is whether the use of the marks
involved would be likely to cause confusion or mistakes in the mind of the public or deceive
purchasers.
RULING:
"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 test was similarity or "resemblance between the two (trademarks) such as would be likely to
cause the one mark to be mistaken for the other . . . [But] this is not such similitude as amounts
to identity."
There is hardly any dispute that the dominant feature of SMC's trademark is the name of the
product: SAN MIGUEL PALE PILSEN, written in white Gothic letters with elaborate serifs at the
beginning and end of the letters "S" and "M" on an amber background across the upper portion
of the rectangular design.
On the other hand, the dominant feature of ABI's trademark is the name: BEER PALE PILSEN, with
the word "Beer" written in large amber letters, larger than any of the letters found in the SMC
label.
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 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.
The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are
part of its registered trademark: SAN MIGUEL PALE PILSEN, any more than such descriptive
words as "evaporated milk," "tomato ketchup," "cheddar cheese," "corn flakes" and "cooking oil"
may be appropriated by any single manufacturer of these food products, for no other reason
than that he was the first to use them in his registered trademark.
The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are
part of its registered trademark: SAN MIGUEL PALE PILSEN, any more than such descriptive
words as "evaporated milk," "tomato ketchup," "cheddar cheese," "corn flakes" and "cooking oil"
may be appropriated by any single manufacturer of these food products, for no other reason
than that he was the first to use them in his registered trademark.
This rule excluding descriptive terms has also been held to apply to trade-names. As to whether
words employed fall within this prohibition, it is said that the true test is not whether they are
exhaustively descriptive of the article designated, but whether in themselves, and as they are
commonly used by those who understand their meaning, they are reasonably indicative and
descriptive of the thing intended. If they are thus descriptive, and not arbitrary, they cannot be
appropriated from general use and become the exclusive property of anyone.
The test of fraudulent simulation is to be found in the likelihood of the deception of persons in
some measure acquainted with an established design and desirous of purchasing the commodity
with which that design has been associated. The test is not found in the deception, or possibility
of the deception, of the person who knows nothing about the design which has been
counterfeited, and who must be indifferent as between that and the other. The simulation, in
order to be objectionable, must be such as appears likely to mislead the ordinarily intelligent
buyer who has a need to supply and is familiar with the article that he seeks to purchase."
Considering further that SAN MIGUEL PALE PILSEN has virtually monopolized the domestic beer
market for the past hundred years, those who have been drinking no other beer but SAN MIGUEL
PALE PILSEN these many years certainly know their beer too well to be deceived by a newcomer
in the market. If they gravitate to ABI's cheaper beer, it will not be because they are confused or
deceived, but because they find the competing product to their taste.
to determine whether a trademark has been infringed, we must consider the mark as a whole
and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not
usually to any part of it."
There is no confusing similarity between the competing beers for the name of one is "SAN
MIGUEL" while the competitor is plain "BEER" and the points of dissimilarity between the two
outnumber their points of similarity.
Petition ABI has neither infringed SMC's trademark nor committed unfair competition with the
latter's SAN MIGUEL PALE PILSEN product. While its BEER PALE PILSEN admittedly competes with
the latter in the open market, the competition is neither unfair nor fraudulent. Hence, we must
deny SMC's prayer to suppress it.
DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION, petitioners, vs. COURT OF
APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES, respondents.
Facts:
DelMonte Corporation is an American corporation which is not engaged in business in the
Philippines. Though not engaging business here, it has given authority to Philippine Packing
Corporation (Philpack) the right to manufacture, distribute and sell in the Philippines various
agricultural products, including catsup, under the Del Monte trademark and logo. In 1965, Del
Monte also authorized PPC to register with the Patent Office the Del Monte catsup bottle
configuration. Philpack was issued a certificate of trademark registration under the Supplemental
Register.
Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing was using Del Monte
bottles in selling its products and that Sunshine Sauce’s logo is similar to that of Del Monte. The
RTC of Makati as well as the Court of Appeals ruled that there was no infringement because the
trademarks used between the two are different in designs and that the use of Del Monte bottles
by Sunshine Sauce does not constitute unfair competition because as ruled in Shell Company vs
Insular Petroleum: “selling oil in containers of another with markings erased, without intent to
deceive, was not unfair competition.”
Issue:
Whether there is unfair competition?
Whether trademark is confusingly similar?
Ruling:
To arrive at a proper resolution of this case, it is important to bear in mind the following
distinctions between infringement of trademark and unfair competition.
(1)Infringement of trademark is the unauthorized use of a trademark, whereas unfair
competition is the passing off of one's goods as those of another.
(2)In infringement of trademark fraudulent intent is unnecessary, whereas in unfair competition
fraudulent intent is essential.
(3)In infringement of trademark the prior registration of the trademark is a prerequisite to the
action, whereas in unfair competition registration is not necessary. 8
the discerning eye of the observer must focus not only on the predominant words but also on
the other features appearing on both labels. 9
It has been correctly held that side-by-side comparison is not the final test of similarity. 10 Such
comparison requires a careful scrutiny to determine in what points the labels of the products
differ, as was done by the trial judge. The ordinary buyer does not usually make such scrutiny nor
does he usually have the time to do so. The average shopper is usually in a hurry and does not
inspect every product on the shelf as if he were browsing in a library.
The question is not whether the two articles are distinguishable by their label when set side by
side but whether the general confusion made by the article upon the eye of the casual purchaser
who is unsuspicious and off his guard, is such as to likely result in his confounding it with the
original. 11 As observed in several cases, the general impression of the ordinary purchaser,
buying under the normally prevalent conditions in trade and giving the attention such purchasers
usually give in buying that class of goods is the touchstone. 12
It has been held that in making purchases, the consumer must depend upon his recollection of
the appearance of the product which he intends to purchase. 13 The buyer having in mind the
mark/label of the respondent must rely upon his memory of the petitioner's mark. 14 Unlike the
judge who has ample time to minutely examine the labels in question in the comfort of his sala,
the ordinary shopper does not enjoy the same opportunity. LexLib
A number of courts have held that to determine whether a trademark has been infringed, we
must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable
to the marks as a totality, not usually to any part of it. 15 The court therefore should be guided
by its first impression, 16 for a buyer acts quickly and is governed by a casual glance, the value of
which may be dissipated as soon as the court assumes to analyze carefully the respective
features of the mark. 17
As a general rule, an ordinary buyer does not exercise as much prudence in buying an article for
which he pays a few centavos as he does in purchasing a more valuable thing. 22 Expensive and
valuable items are normally bought only after deliberate, comparative and analytical
investigation. But mass products, low priced articles in wide use, and matters of everyday
purchase requiring frequent replacement are bought by the casual consumer without great care.
Anent the assumption that the Bureau of Patent had considered other existing patents, it is
reiterated that since registration was only in the Supplemental Register, this did not vest the
registrant with the exclusive right to use the label nor did it give rise to the presumption of the
validity of the registration.
The petition is granted
Confusion of Goods vs. Confusion of Business
STERLING PRODUCTS INTERNATIONAL VS. FABERFABRIKEN
Facts: each of the principal suitors, namely, plaintiff Sterling Products International, Inc., and
defendant Farbenfabriken Bayer Aktiengesellschaft, seeks to exclude the other from use in the
Philippines of the trademarks BAYER and BAYER CROSS IN CIRCLE. SPI asks this Court to strike
down FBA's registration of BAYER CROSS IN CIRCLE covering industrial and agricultural
products — insecticides and other chemicals, not medicines — from the supplemental register.
FBA, for its part, prays for the cancellation from the principal register of SPI's certificates of
registration of the trademarks aforesaid for medicines.
Contending parties are doing business in the Philippines. SPI markets Bayer Aspirin, Aspirin for
Children and Cafiaspirina. The BAYER and BAYER CROSS IN CIRCLE are being used by SPI in the
Philippines only for said products — Bayer Aspirin, Cafiaspirina and Bayer Aspirin for Children. On
the containers (bottles or printed cellophane strips, which, in turn, are placed in cardboard boxes)
of Bayer Aspirin, Aspirin for Children and Cafiaspirina, SPI features the trademarks BAYER and
BAYER CROSS IN CIRCLE.
FBA thru Allied Manufacturing & Trading Co., Inc.distributes "Folidol" and other industrial and
agricultural chemicals. FBA's "FOLIDOL" (in steel or fiber drums or aluminum containers) displays
a replica of SPI's trademark BAYER CROSS IN CIRCLE on the tin cap and label of the container.
The trial court sustained plaintiff's right to use the Bayer trademark for its medicines, and
defendants' right to use it for chemicals, insecticides, and other products not medicines, but the
Court orders, defendants to add a distinctive word or words in their mark to indicate that their
products come from Germany.
Issues: Whether there was unfair competition due to the confusion of both trademarks
Petitioner: it should not be turned away because its case comes within the protection of the
confusion of origin rule.
Ruling: Callmann notes two types of confusion. The first is the confusion of goods "in which event
the ordinarily prudent purchaser would be induced to purchase one product in the belief that he
was purchasing the other." In which case, "defendant's goods are then bought as the plaintiff's,
and the poorer quality of the former reflects adversely on the plaintiff's reputation." The other is
the confusion of business: "Here though the goods of the parties are different, the defendant's
product is such as might reasonably be assumed to originate with the plaintiff, and the public
would then be deceived either into that belief or into the belief that there is some connection
between the plaintiff and defendant which, in fact, does not exist."
"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 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 the first user made the second user's goods. Such construction of the law is induced by
cogent reasons of equity and fair dealing. The courts have come to realize that there can be
unfair competition or unfair trading even if the goods are noncompeting, and that such unfair
trading can cause injury or damage to the first user of a given trade-mark, first, by prevention of
the natural expansion of his business and second, by having his business reputation confused
with and put at the mercy of the second user. When noncompetitive products are sold under the
same mark, the gradual whittling away or dispersion of the identity and hold upon the public
mind of the mark created by its first user, inevitably results. The original owner is entitled to the
preservation of the valuable link between him and the public that has been created by his
ingenuity and the merit of his wares or services. Experience has demonstrated that when a well-
known trademark is adopted by another even for a totally different class of goods, it is done to
get the benefit of the reputation and advertisements of the originator of said mark, to convey to
the public a false impression of some supposed connection between the manufacturer of the
article sold under the original mark and the new articles being tendered to the public under the
same or similar mark. As trade has developed and commercial changes have come about, the law
of unfair competition has expanded to keep pace with the times and the element of strict
competition in itself has ceased to be the determining factor. The owner of a trade-mark or
trade-name has a property rights in which he is entitled to protection, since there is damage to
him from confusion of reputation or goodwill in the mind of the public as well as from confusion
of goods. The modern trend is to give emphasis to the unfairness of the acts and to classify and
treat the issue as a fraud."
It was not plaintiff's predecessor but defendant's namely Farbenfabriken or Bayer Germany that
first introduced the medical products into the Philippine market and household with the Bayer
mark half a century ago.
With the background of prior use in the Philippines of the word BAYER by FBA's German
predecessor and the prior representations that plaintiff's medicines sold in the Philippines were
manufactured in Germany, the facts just recited hammer on the mind of the public that the
Aspirin, Cafiaspirina and Aspirin for Children being marketed for plaintiff in the Philippines come
from the same source — the German source — and in use since 1900. That this view is far from
far-fetched, is illustrated by the testimony of plaintiff's own witness, Dr. Antonio Vasquez,
Plaintiff cannot now say that the present worth of its BAYER trademarks it owes solely to its own
efforts; it is not insulated from the charge that as it marketed its medicines it did so with an eye
to the goodwill as to quality that defendants' predecessor had established.
There is no whittling away of the identity of plaintiff's trademarks. Plaintiff is not the first user
thereof in the Philippines. The trademarks do not necessarily link plaintiff with the public. Plaintiff
must show injury; it has not. On the contrary, representations as to the place of manufacture of
plaintiff's medicines were untrue, misleading. Plaintiff could still be tagged with the same
deception "which (it) complains of in the defendant(s)." 37 Appropriate it is to recall here our
observation in the AngTibay opinion, viz: "On our part may we add, without meaning to be harsh,
that a self-respecting person does not remain in the shelter of another but builds one of his
own." Plaintiff, the owner in this country of the trademarks BAYER for medicines, has thus
forfeited its right to protection from the use of the same trademarks by defendants for products
different therefrom — insecticides and other chemicals.
Defendants' claim is stale; it suffers from the defect of non-use. While it is conceded that FBA's
predecessors first introduced medical products with the BAYER trademarks in the Philippine
market, it is equally true that, after World War I, no definite evidence there is that defendants or
their predecessors traded in the Philippines in medicines with the BAYER trademarks thereafter.
FBA did not seasonably voice its objections. Lack of protest thereto connoted acquiescence. And
this, notwithstanding the fact that the 1923 and 1926 agreements were set aside in the anti-trust
suits. Defendants did use the marks, but it was much later, i.e., in 1958 — and on chemicals and
insecticides — not on medicines. FBA only bestirred itself and challenged plaintiff's right to the
trademarks on medicines when this suit was filed. Vigilantibusnon dormientibusequitassubvenit.
The net result is that, as the trial court aptly observed, plaintiff may hold on to its BAYER
trademarks for medicines. And defendants may continue using the same trademarks for
insecticides and other chemicals, not medicines.
Mcdonals vs. LC Bigmak
[G.R. No. 71189. November 4, 1992.]
FABERGE, INCORPORATED, petitioner, vs. THE INTERMEDIATE APPELLATE COURT and CO BENG
KAY, respondents.
Facts of the Case:
The Director of Patents authorized herein private respondent Co Beng Kay to register the
trademark "BRUTE" for the briefs manufactured and sold by his Corporation in the domestic
market vis-a-vis petitioner's opposition grounded on similarity of said trademark with petitioner's
own symbol "BRUT" which it previously registered for after shave lotion, shaving cream,
deodorant, talcum powder, and toilet soap. Thereafter, respondent court, through Justice
Gopengco with Justices Patajo and Racela, Jr. concurring, was initially persuaded by petitioner's
plea for reversal directed against the permission granted by the Director of Patents, but the
decision of the Second Special Cases Division handed down on April 29, 1983 was later
reconsidered in favor of herein private respondent.
In essence, it appears that in the course of marketing petitioner's "BRUT" products and during
the pendency of its application for registration of the trademark "BRUT 33 and DEVICE" for anti-
perspirant, personal deodorant, cream shave, after shave/shower lotion, hair spray, and hair
shampoo (page 236, Rollo), respondent Co Beng Kay of Webengton Garments Manufacturing
applied for registration of the disputed emblem "BRUTE" for briefs. Opposition raised by
petitioner anchored on similarity with its own symbol and irreparable injury to the business
reputation of the first user was to no avail.
Issue:
Whether or not there was patent infringement.
Ruling of the Court:
No.
"Respondent court correctly ruled that considering the general appearances of each mark as a
whole, the possibility of any confusion is unlikely. A comparison of the labels of the samples of
the goods submitted by the parties shows a great many differences on the trademarks used. As
pointed out by respondent court in its appealed decision, "(A) witness for the plaintiff, Mr. Buhay,
admitted that the color of the 'ESSO' used by the plaintiff for the oval design where the blue
word ESSO is contained is the distinct and unique kind of blue. In his answer to the trial court's
question, Mr. Buhay informed the court that the plaintiff never used its trademark on any
product where the combination of colors is similar to the label of the Esso cigarettes," and
"Another witness for the plaintiff, Mr. Tengco, testified that generally, the plaintiff's trademark
comes all in either red, white, blue or any combination of the three colors. It is to be pointed out
that not even a shade of these colors appears on the trademark of the appellant's cigarette. The
only color that the appellant uses in its trademark is green." (339; 341-346).
The glaring discrepancies between the two products had been amply portrayed to such an extent
that indeed, "a purchaser who is out in the market for the purpose of buying respondent's BRUTE
brief would definitely be not mistaken or misled into buying BRUT after shave lotion or
deodorant" as categorically opined in the decision of the Director of Patents relative to the inter-
partes case.

Hickock Manufacturing vs. CA
ACOJE MINING vs DIRECTOR of PATENTS
FACTS
 On September 14, 1965, Acoje Mining Co., Inc. a domestic corporation, filed an
application for registration of the trademark LOTUS,
o used on Soy Sauce, Class 47.
 Use in commerce in the Philippines since June 1, 1965 is asserted.
 The Chief trademark Examiner finally rejected the application by reason of confusing
similarity with the trademark LOTUS registered in this Office under Certificate of Registration No.
12476 issued in favor of Philippine Refining CO.
o The cited mark is being used on edible oil, Class 47." 2
 The matter was then elevated to respondent Director of Patents who, on January 31,
1968, upheld the view of the Chief Trademark Examiner and rejected the application of
Petitioner
o on the ground that while there is a difference between soy sauce and edible oil and
there were dissimilarities in the trademarks due to type of letters used as well as in the size, color
and design employed, 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." 3
ISSUE: May petitioner Acoje Mining Company register for the purpose of advertising its product,
soy sauce, the trademark LOTUS, there being already in existence one such registered in favor of
the Philippine Refining Company for its product, edible oil, it being further shown that the
trademark applied for is in smaller type, colored differently, set on a background which is
dissimilar as to yield a distinct appearance?
RULING: YES.
The determinative factor in a contest involving registration of trade mark is not whether the
challenging mark would actually cause confusion or deception of the purchasers but whether the
use of such mark would likely cause confusion or mistake on the part of the buying public. In
short, to constitute an infringement of an existing trade-mark patent and warrant a denial of an
application for registration, 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." 5
Can it be said then that petitioner's application would be likely to cause confusion or mistake on
the part of the buying public? The answer should be in the negative. It does not defy common
sense to assert that a purchaser would be cognizant of the product he is buying. 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. Even on the rare occasions that a
mistake does occur, it can easily be rectified. Moreover, 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 Philippine Refining Company being in green
and yellow, and the much smaller size of petitioner's trademark. When regard is had for the
principle that the two trademarks in their entirety as they appear in their respective labels should
be considered in relation to the goods advertised before registration could be denied, the
conclusion is inescapable that respondent Director ought to have reached a different conclusion.
Petitioner has successfully made out a case for registration.
LUFT VS. NGO GUAN
Facts: Luft is the owner of the trademark "Tangee", which it has allegedly used since February 28,
1928, and is covered by certificate of Registration No. 2178-S of the Philippine Patent Office,
dated February 21, 1950. On January 22, 1959, Ngo Guan applied for the registration of the
trademark "Tango", which he claims to have used since June, 1958. Petitioner objected thereto
alleging that "Tango" is likely to be mistaken for "Tangee", upon the ground that the two
trademarks are confusingly similar.
Director of Patents rendered a decision overruling said opposition and granting Ngo Guan's
application.
Issue: Whether the "Tango" trademark is confusingly similar with the "Tangee" trademark
Ruling: Petitioner, which has the burden of proving its contention, has not, however, done so.
The word "Tango" has a well established meaning, for it describes a particular dance that is well
known in the Philippines. In fact, respondent's label includes the picture of a man and a woman
dancing. Again, "Tango" is used by Ngo Guan for no other product than hair pomade, in which
petitioner does not deal. Upon the other hand, petitioner's trademark is used for specified
chemicals, medical and pharmaceutical preparations — namely: "lipstick, creme rouge, compact
rouge, cleansing cream, day cream, night cream, massage cream, face lotion, astringent, face
powder, powder compacts, cosmetics for lashes, brows, and hair, hair pencils, nail polish,
perfumes, and toilet waters — and it is not claimed that Ngo Guan uses or intends to use its
"Tango" trade on articles of this kind.
Emerald Garments vs. CA, supra
[G.R. No. L-17049. May 31, 1961.]
PAULA RECARO, doing business under the name and style, "BIG FIVE PRODUCTS", and THING
ONG, plaintiffs-appellees, vs. NESTOR EMBISAN, doing business under name and style "NEL'S
COFF PRODUCTS", defendant-appellant.
Facts of the Case:
In her complaint, filed on April 4, 1958, Paula Recaro, hereafter referred to as plaintiff, alleged
that she is doing business under the registered name and style of "BIG FIVE PRODUCT"; that she
is the assignee and owner of the trade-mark "BIG FIVE 5" which is duly registered with the
Philippine Patent Office as per Registry No. 3281 dated April 29, 1952; that, since May 22, 1952,
she had been using and affixing said trade-mark on the printed labels (a facsimile of which is
appended to the complaint) of her products, namely in vegetable lard repacked for sale on retail,
with which she is identified in the mind of the public; that defendant Nestor Embisan, doing
business under the name and style "Nel-Coff Products", is, likewise, engaged in the repacking of
vegetable lard, on which he uses printed labels bearing the trade-mark "Big Three" (a facsimile of
which is, likewise, appended to the complaint) which is not registered with said Patent Office and
is but a reproduction, counterfeit copy or colorable imitation of plaintiff's aforementioned
registered trade-mark, to such an extent as is likely to cause confusion or mistake or to deceive
purchasers or others as to the source or origin of such repacked products, in gross and
unauthorized infringement of plaintiff's certificate of registration; that, by giving the wrapping of
his products the general appearance of the goods sold by plaintiff, the defendant has influenced
purchasers to believe that his goods are those of the plaintiff and has deceived the public and
defrauded the plaintiff of her legitimate trade and is, therefore, engaged in unfair competition;
that, despite notice given to him, the defendant has refused and continued to refuse to cease
and desist from his aforementioned infringement of patent and unfair competition.
Issue:
Whether or not there was trademark infringement.
Ruling of the Court:
We find no merit in the appeal. The affidavit and other documents attached to plaintiff's petition
for summary judgment show that the trade-mark "BIG FIVE 5" was duly registered with the
Philippine Patent Office since April 29, 1952, for use in packing or wrapping of Class 47, vegetable
lard; that by virtue of an instrument, dated June 1, 1954, Sy Lin, the original owner of said trade-
mark, had sold, assigned and transferred his right, title and interest thereto and to the
registration thereof, together with the goodwill of the business in connection therewith, to
plaintiff herein; and that said deed of sale, assignment and transfer in favor of plaintiff had been
duly annotated and registered with the Philippine Patent Office, and acknowledged by the same.
Upon the other hand, defendant has admitted that he is engaged in the repacking of vegetable
lard and that he has been using thereon "for sometime" printed labels bearing the trade- mark
"Nel's Big 3 Lard". What is more, defendant does not claim that the latter is registered. Lastly, a
comparison thereof with plaintiff's label readily shows such a resemblance in the general
features of both as is likely to deceive the ordinary purchaser, exercising ordinary care, and
induce him to believe that the goods bearing such labels are products of one and the same
enterprise, particularly plaintiff herein, she having been, evidently, in the business of repacking
vegetable lard before defendant herein.
Hence, there is no genuine issue about the fact that the use of the trade-mark "Nel's Big 3" on
vegetable lard repacked by the defendant constitutes an infringement upon plaintiff's registered
trade-mark "Big Five 5", which is similarly used on repacked vegetable lard, and the lower court
did not err in granting, by summary judgment, the injunction prayed for by the plaintiff, in
dismissing defendant's counterclaim, and in refusing to reconsider said judgment.
Defendant insists, however, that, he having alleged, in his answer, that he has taken steps to
substitute and has actually substituted his trade-mark "Nel's Big 3 Lard" with that of "MARCA 3
LARD", the question raised in plaintiff's complaint has become moot, and, consequently, the
lower court should not have granted the relief therein prayed for. This contention is untenable.
Firstly, it is based upon an allegation, which has not been established, not even supported by
affidavit. Secondly, the affidavit annexed to plaintiff's petition for summary judgment shows that
said "MARCA 3 LARD" label is still a colorable imitation of plaintiff's trade-mark. Thirdly, plaintiff
seeks and is entitled to a permanent injunction, in the absence of which defendant might resume
the use of his former trademark "Nel's Big 3".
Actual Confusion
AMERICAN WIRE CABLE VS DIRECTOR OF PATENT
FACTS:
Petitioner, American Wire & Cable Company, is an owner of the registered trademark DURAFLEX
for electric wires.
Respondent, Central Banahaw Industries, Inc., applied for registration of patented mark
DYNAFLEX and Device for electric wires.
Director of Patents approved the application and held that respondent mark is not similar to
herein appellant's patented mark.
ISSUE: WON petitioner application for registration of a mark is infringing on respondent mark.
HELD: YES. The pertinent law, Republic Act 166, as amended, on registrability of trademarks,
prescribes:
"SEC. 4. — The owner of a trademark, trade-name or service-mark used to distinguish his goods,
business or services from the goods, business or services of others shall have the right to register
the same, unless it:
xxxxxxxxx
"(d)Consists of or comprises a mark or trade name which so resembles a mark or trade-name
registered in the Philippines by another and not abandoned, as to be likely, when applied to or
used in connection with the goods, business or services of the applicant, to cause confusion, or
mistake or to deceive purchasers." (Italics supplied)
It is clear from the above-quoted provision that the determinative factor in a contest involving
registration of trade mark is not whether the challenged mark would actually cause confusion or
deception of the purchasers but whether the use of such mark would likely cause confusion or
mistake on the part of the buying public. In short, to constitute an infringement of an existing
trademark patent and warrant a denial of an application for registration, 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.
The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not
only are the initial letters and the last half of the appellations identical, but the difference exists
only in two out of the eight literal elements of the designations. Coupled with the fact that both
marks cover insulated flexible wires under class 20; that both products are contained in boxes of
the same material, color, shape and size; that the dominant elements of the front designs are a
red circle and a diagonal zigzag commonly related to a spark or flash of electricity; that the back
of both boxes show similar circles of broken lines with arrows at the center pointing outward,
with the identical legend "Cut Out Ring" "Draw From Inside Circle", no difficulty is experienced in
reaching the conclusion that there is a deceptive similarity that would lead the purchaser to
confuse one product with the other.
The Director of Patents has predicated his decision mostly on the semantic difference and
connotation of the prefixes "Dura" and "Dyna" of the competing trademarks, unfortunately
forgetting that the buyers are less concerned with the etymology of the words as with their
sound and the dominant features of the design.
Relying on the doctrine enunciated in the Etephacase and the earlier ruling in Lim Hoa vs.
Director of Patents, applicant-appellee contends that the DYNAFLEX mark would not confuse or
deceive the buyers and subscribers of the DURAFLEX brand, because electrical wires are of great
value and the purchasers thereof are generally intelligent — the architects, engineers and
building contractors. It must be realized, however, that except perhaps in big constructions, the
designing architect or engineer, or the contractor who will undertake the work of building, does
not himself purchase or place the order for the purchase of the materials to be used therein. The
task is oftentimes delegated to another. Nor are said technical men the ones personally laying
down the wiring system in the building that they could possibly check on whether or not the
correct wires are being used. So that even if the engineer or contractor will specify in the bill of
materials the particular brand of wires needed, there is no certainty that the desired product will
be acquired. For, unlike the pharmacists or druggists, the dispensers of hardware or electrical
supplies are not generally known to pay as much concern to the brand of articles asked for by
thecustomer and of a person who knows the name of the brand but is not acquainted with its
appearance, the likelihood of the DYNAFLEX product being mistaken for DURAFLEX is not remote.
Acoje, supra
Test of Confusing Similarity
1. Phonetic Similarity
MARVEX COMMERCIAL CO., INC. VS. PETRA HAWPIA & CO.
Facts: Petra Hawpia& Co., on October 14, 1958 filed a petition for the registration of the
trademark "LIONPAS" used on medicated plaster, with the Philippine Patent Office, asserting its
continuous use in the Philippines since June 9, 1958. The Marvex Commercial Co., Inc. filed an
opposition thereto, alleging that the registration of such trademark would violate its right to and
interest in the trademark "SALONPAS" used on another medicated plaster, which is registered in
its name under Certificate of Registration 5486, issued by the Director of Patents on September
29, 1956, and that both trademarks when used on medicated plaster would mislead the public as
they are confusingly similar.
After due hearing, the Director of Patents in his decision of August 18, 1961 dismissed the
opposition and gave due course to the petition, stating in part that "confusion, mistake, or
deception among the purchasers will not likely and reasonably occur" when both trademarks are
applied to medicated plaster
Issue: Whether or not the trademark "LIONPAS" is confusingly similar with the trademark
"SALONPAS".
Ruling: It is our considered view that the trademarks "SALONPAS" and "LIONPAS" are confusingly
similar in sound.
Both these words have the same suffix, "PAS", which is used to denote a plaster that adheres to
the body with curative powers. "Pas, being merely descriptive, furnishes no indication of the
origin of the article and therefore is open for appropriation by anyone and may properly become
the subject of a trademark by combination with another word or phrase.
Two letters of "SALONPAS" are missing in "LIONPAS"; the first letter a and the letter s. Be that as
it may, when the two words are pronounced, the sound effects are confusingly similar. And
where goods are advertised over the radio, similarity in sound is of especial significance.
The importance of this rule is emphasized by the increase of radio advertising in which we are
deprived of help of our eyes and must depend entirely on the ear"
The following random list of confusingly similar sounds in the matter of trademarks, culled from
Nims, Unfair Competition and Trade Marks, 1947 vol. 1, will reinforce our view that "SALONPAS"
and "LIONPAS" are confusingly similar in sound: "Gold Dust" and "Gold Drop"; "Jantzen" and
"Jazz-Sea"; "Silver Flash" and "Supper-Flash"; "Cascarete" and "Celborite"; "Celluloid" and
"Cellonite"; "Chartreuse" and "Charseurs"; "Cutex" and "Cuticlean"; "Hebe" and "Meje"; "Kotex"
and "Femetex"; "Zuso" and "HooHoo". Leon Amdur, in his book "TradeMark Law and Practice",
pp. 419-421, cites, as coming within the purview of the idemsonans rule, "Yusea" and "U-C-A",
"Steinway Pianos" and "Steinberg Pianos", and "Seven-Up" and "Lemon-Up". In Co Tiong vs.
Director of Patents, this Court unequivocally said that "Celdura" and "Cordura" are confusingly
similar in sound; this Court held in Sapolin Co. vs. Balmaceda, 67 Phil. 795 that the name
"Lusolin" is an infringement of the trademark "Sapolin", as the sound of the two names is almost
the same.
In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much alike. Similarity of
sound is sufficient ground for this Court to rule that the two marks are confusingly similar when
applied to merchandise of the same descriptive properties.
The registration of "LIONPAS" cannot therefore be given due course.
NOTE: the applicant is not the owner of the trademark "LIONPAS" but merely an importer and/or
distributor of the said penetrative plaster therefore not entitled under the law to register it in its
name.
Sapoline vs. Balcameda
[G.R. No. L-17901. October 29, 1965.]
OPERATORS INCORPORATED, petitioner, vs. THE DIRECTOR OF PATENTS, ET AL., respondents.
Facts of the Case:
Petitioner, a domestic corporation, applied to the Philippine Patent Office for registration of
AMBISCO as a trademark for its locally manufactured candy products. It has been using said
trademark since May 1956 by virtue of two contracts with the American Biscuit Company, also a
domestic corporation.
The National Biscuit Company opposed the application, having previously registered NABISCO as
trademark for its own bakery goods, such as biscuits, crackers, cakes and wafers. The oppositor, a
corporation organized in the United States, has had the said trademark registered in the
Philippines since 1930, and renewed the registration in 1948 under the latest trademark law.
Issues:
(1) Whether or not the two trademarks aforesaid are so similar to each other as to cause
confusion, mistake or deception of purchasers; and (2) whether or not the applicant had a right
in the first place to apply for registration of AMBISCO as a trademark at all.
Ruling of the Court:
Under section 2 of Republic Act No. 166, as amended by section 1 of Republic Act No. 865,
trademarks, trade names, and service marks owned by persons, corporations, partnerships or
associations domiciled in the Philippines or in any foreign country may be registered here
provided certain conditions enumerated in the same section are complied with. The right to
register, as may be noted, is based on ownership. In the case of the trademark AMBISCO, the
evidence shows that it is owned ,by the American Biscuit Co., Inc., and not by petitioner
Operators, Inc. Such evidence consists of the certification signed jointly by Jorge B. Vargas, and
by Eu Chua Leh presidents of the said Corporations, respectively, as follows (Exh. 2):
"On September 26, 1953, and on June 12, 1954, the American Biscuit Co., Inc., and the Operators
Incorporated, both corporations organized under the laws of the Philippines, entered into
contracts, and under such contracts, the Operators Incorporated is authorized by the American
Biscuit Co., Inc. to operate the candy business of the latter and among the various terms and
stipulations in said contracts, the Operators Incorporated agreed to distinctly label and display all
products manufactured and sold by it as products of the American Biscuit Co., Inc. and that all
the trademarks contained in such labels shall be considered as property of the American Biscuit
Co., Inc."
Petitioner objects to the consideration of the question of ownership of the trademark as an issue
on the ground that it was not raised by respondent either in its opposition or in its memorandum
filed after the parties had adduced their evidence. In the first place respondent could not have
known at the outset that petitioner was not the owner of the trademark it was seeking to
register. That fact was brought out for the first time when the certification quoted above was
presented. Secondly, it was incumbent upon petitioner, as applicant, to prove that it had a right
to register the trademark applied for and, consequently, to show compliance with all the legal
requisites, including ownership thereof. An application for registration under the Patent Law is
not an ordinary litigious controversy between private parties. Public interest is involved and all
questions as to whether or not the law is satisfied may be considered by the Patent Office or by
the Court even though not specifically raised by either of the parties.
On the other issue, we find no cogent reason to disagree with the Director of Patents that
"considering the similarities in appearance and sound between the marks AMBISCO and NABISCO,
the nature and similarity of the products of the parties together with the fact that opposer's
NABISCO has been used in commerce in the Philippines for more than fifty five (55) years before
AMBISCO was adopted by applicant, confusion of purchasers is likely."
`"The question of infringement is to be determined by the test of dominancy. The dissimilarity in
size, form and color of the label and the place where applied are not conclusive, If the competing
label contains the trademark of another, and confusion or deception is likely to result,
infringement takes place, regardless of the fact that the accessories are dissimilar. Duplication, or
exact imitation is not necessary; nor is it necessary that the infringing label should suggest an
effort to imitate. (G. Heilman Brewing Co. vs. Independent Brewing Co., 191 F. 489., 495, citing
Eagle White Lead Co. vs. Pflugh (C.C.) 180 F. 579.)"
2. Holistic Test
BRISTOL MYERS VS DIRECTOR OF PATENTS
FACTS:
Petitioner, Bristol Myers Co., oppositor, is the owner in the Philippines of the trademark
"BUFFERIN", belongs to Class 6, Medicines and Pharmaceutical Preparations. Designated as
"Antacid analgesic", it is intended for relief in cases of "simple headaches, neuralgia, colds,
menstrual pain and minor muscular aches."
Respondent, United American Pharmaceuticals, Inc, application is for "BIOFERIN”. It covers "a
medicinal preparation of antihistaminic, analgesic, antipyretic with vitamin C and Bioflavenoid
used in the treatment of common colds, influenza and other febrile diseases with capillary
hemorrhagic tendencies." The product falls under Class 6 of the official classification, that is,
"Medicines and Pharmaceutical Preparations".
ISSUE: WON petitioner application for registration of a mark is infringing on respondent mark.
HELD: NO.
In determining whether two trademarks are confusingly similar, the test is not simply to take
their words and compare the spelling and pronunciation of said words. Rather, it is consider the
two marks in their entirety, as they appear in the respective labels, in relation to the goods to
which they are attached. Said rule was enunciated by this Court through Justice Felix Bautista
Angelo in Mead Johnson & Co., vs. N.V.J. Van Dorp, Ltd., thus:
"It is true that between petitioner's trademark 'ALACTA' and respondent's 'ALASKA' there are
similarities in spelling, appears and sound for both are composed of six letters of three syllables
each and each syllable has the same vowel, but in determining if they are confusingly similar a
comparison of said words is not the only determining factor. The two marks in their marks in
their entirety as they appear in the respective labels must also be considered in relation to the
goods to which they are attached. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels in order that he may
draw his conclusion whether one is confusingly similar to the other. . . ."
Applying this test to the trademarks involved in this case, it is at once evident that the Director of
Patents did not err in finding no confusing similarity. For though the words "BIOFERING" and
"BUFFERIN" and "Bufferin" have the same suffix and similar-sounding prefixes, they appear in
their respective labels with strikingly different backgrounds and surroundings, as to color, size
and design.
Accordingly, taken as they will appear to a prospective customer, the trademarks in question are
not apt to confuse. Furthermore, the product of the applicant is expressly stated as dispensable
only upon doctor's prescription, while that of oppositor does not require the same. The chances
of being confused into purchasing one for the other are therefore all the more rendered
negligible. Although oppositor avers that some drugstores sell "BIOFERIN: without asking for a
doctor's prescription, the same if true would be an irregularity not attributable to the applicant,
who has already clearly stated the requirement of a doctor's prescription upon the face of the
label of its product.
MEAD JOHNSON and COMPANY, petitioner, vs.N. V. J. VAN DORP, LTD., ET AL., respondents.
 On June 2, 1956, N. V. J. Van Dorp, filed an application for the registration of the
trademark "ALASKA and pictorial representation of a Boy's Head within a rectangular design
 Mead Johnson & Company, being the owner of the trademark "ALACTA" used for
powdered half-skim milk, filed an opposition on the ground that it will be damaged by the said
registration as the trademark "ALASKA" and pictorial representation of a Boy's Head within a
rectangular design (ALASKA disclaimed), used for milk, milk products, dairy products and infant's
foods, is confusingly similar to its trademark "ALACTA".Wherefore, the parties respectfully pray
that the foregoing stipulation of facts be admitted and approved by this Honorable Court,
without prejudice to the parties adducing other evidence to prove their case not covered by this
stipulation of facts. 1äwphï1.ñët
ISSUE: WON Van Dorp should be allowed to register ALASKA
It is true that between petitioner's trademark "ALACTA" and respondent's "ALASKA" there are
similarities in spelling, appearance and sound for both are composed of six letters of three
syllables each and each syllable has the same vowel, but in determining if they are confusingly
similar a comparison of said words is not the only determinant factor.The trademarks in their
entirety as they appear in the respective labels must also be considered in relation to the goods
to which they are attached.
Having this view in mind, we believe that while there are similarities in the two marks there are
also differences or dissimilarities which are glaring and striking to the eye as the former. Thus we
find the following dissimilarities in the two marks:
(a) The sizes of the containers of the goods of petitioner differ from those of respondent.
(b) The colors too differ.
(c) Petitioner's mark "ALACTA" has only the first letter capitalized and is written in black.
Respondent's mark "ALASKA" has all the letters capitalized written in white except that of the
condensed full cream milk which is in red.
Again, coming to the goods covered by the trademarks in question, we also notice the following
dissimilarities:
In the petitioner's certificate of registration, it appears that the same covers "Pharmaceutical
Preparations which Supply Nutritional Needs" which fall under Class 6 of the official classification
as Medicines and Pharmaceutical Preparations", thus indicating that petitioner's products are
not foods or ingredients of foods but rather medicinal and pharmaceutical preparations that are
to be used as prescribed by physicians. On the other hand, respondent's goods cover "milk, milk
products, dairy products and infant's foods" as set forth in its application for registration which
fall under an entirely different class, or under Class 47 which refers to "Foods and Ingredients of
Foods", and for use of these products there is no need or requirement of a medical prescription.
We have examined the two trademarks as they appear in the labels attached to the containers
which both petitioner and respondent display for distribution and sale and we are impressed
more by the dissimilarities than by the similarities appearing therein in the same manner as the
Director of the Patent Office, and because of this impression we are persuaded that said Director
was justified in overruling petitioner's opposition.
Del Monte, supra
3. Dominancy Test
Asia Brewery, supra
PHILIPPINE NUT INDUSTRY VS. STANDARDS
Philippine Nut, a domestic corporation, obtained from the Patent Office on August 10, 1961,
Certificate of Registration No. SR-416 covering the trademark "PHILIPPINE PLANTERS CORDIAL
PEANUTS," the label used on its product of salted peanuts.
On May 14, 1962, Standard Brands a foreign corporation, asked for the cancellation of Philippine
Nut's certificate of registration on the ground that "the registrant was not entitled to register the
mark at the time of its application for registration thereof" for the reason that it (Standard
Brands) is the owner of the trademark "PLANTERS COCKTAIL PEANUTS" covered by Certificate of
Registration No. SR-172, issued by the Patent Office on July 28, 1958. Standard Brands alleged in
its petition that Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" closely
resembles and is confusingly similar to its trademark "PLANTERS COCKTAIL PEANUTS" used also
on salted peanuts, and that the registration of the former is likely to deceive the buying public
and cause damage to it.
Issue: Whether the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by Philippine Nut
on its label for salted peanuts is confusingly similar to the trademark "PLANTERS COCKTAIL
PEANUTS" used by Standard Brands on its product.
Ruling: (Topic: Dominancy test)
In the cases involving infringement of trademark brought before the Court it has been
consistently held that there is infringement of trademark when the use of the mark involved
would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers
as to the origin or source of the commodity; that whether or not a trademark causes confusion
and is likely to deceive the public is a question of fact which is to be resolved by applying the
"test of dominancy", meaning, if the competing trademark contains the main or essential or
dominant features of another by reason of which confusion and deception are likely to result,
then infringement takes pIace; that duplication or imitation is not necessary, a similarity in the
dominant features of the trademarks would be sufficient.
According to petitioner, PLANTERS cannot be considered as the dominant feature of the
trademarks in question because it is a mere descriptive term. We find the argument without
merit. While it is true that PLANTERS is an ordinary word, nevertheless it is used in the labels not
to describe the nature of the product, but to project the source or origin of the salted peanuts
contained in the cans. The word PLANTERS printed across the upper portion of the label in bold
letters easily attracts and catches the eye of the ordinary consumer and it is that word and none
other that sticks in his mind when he thinks of salted peanuts.
It is true that there are other words used such as "Cordial" in petitioner's can and "Cocktail" in
Standard Brands', which are also prominently displayed, but these words are mere adjectives
describing the type of peanuts in the labeled containers and are not sufficient to warn the
unwary customer that the two products come form distinct sources. As a whole it is the word
PLANTERS which draws the attention of the buyer and leads him to conclude that the salted
peanuts contained in the two cans originate from one and the same manufacturer.
The next argument of petitioner is that respondent Director should not have based his decision
simply on the use of the term PLANTERS, and that what he should have resolved is whether there
is a confusing similarity in the trademarks of the parties.
It is quite obvious from the record, that respondent Director's decision is based not only on the
fact that petitioner herein adopted the same dominant mark of Standard Brands, that is, the
word PLANTERS, but that it also used in its label the same coloring scheme of gold, blue, and
white, and basically the same lay-out of words such as "salted peanuts" and "vacuum packed"
with similar type and size of lettering as appearing in Standard Brands' own trademark, all of
which result in a confusing similarity between the two labels. 4 Thus, the decision states:
"Furthermore, as to appearance and general impression of the two trademarks, I find a very
confusing similarity."
Petitioner contends, however, that there are differences between the two trademarks, such as,
the presence of the word "Philippine" above PLANTERS on its label, and other phrases, to wit:
"For Quality and Price, Its Your Outstanding Buy", the address of the manufacturer in Quezon City,
etc., plus a pictorial representation of peanuts overflowing from a tin can, while in the label of
Standard Brands it is stated that the product is manufactured in San Francisco, California, and on
top of the tin can is printed "Mr. Peanut" and the representation of a "humanized peanut.
We have taken note of those alleged differences but We find them insignificant in the sense that
they are not sufficient to call the attention of the ordinary buyer that the labeled cans come from
distinct and separate sources. The word "Philippine" printed in small type in petitioner's label
may simply give to the purchaser the impression that that particular can of PLANTERS salted
peanuts is locally produced or canned but that what he is buying is still PLANTERS canned salted
peanuts and nothing else. As regards "Mr. Peanut" on Standard Brands' label, the same appears
on the top cover and is not visible when the cans are displayed on the shelves, aside from the
fact that the figure of "Mr. Peanut" is printed on the tin cover which is thrown away after
opening the can, leaving no lasting impression on the consumer. It is also for this reason that We
do not agree with petitioner that it is "Mr. Peanut and the Humanized Peanut" which is the
trademark of Standard Brands salted peanuts, it being a mere descriptive pictorial representation
of a peanut not prominently displayed on the very body of the label covering the can, unlike the
term PLANTERS which dominates the label.
(Topic: Secondary meaning)
Petitioner, invoking American jurisprudence, asserts that the first user of a tradename composed
of common words is given no special preference unless it is shown that such words have
acquired secondary meaning, and this, respondent Standard Brands failed to do when no
evidence was presented to establish that fact.
The doctrine of secondary meaning is found in Sec. 4 (f), Chapter II-A of the Trade-Mark Law, viz:
Except as expressly excluded in paragraphs (a), (b), (c) and (d) of this section, nothing herein shall
prevent the registration of a mark or trade-name used by the applicant which has become
distinctive of the applicant's goods, business or services. The Director may accept as prima facie
evidence that the mark or trade-name has become distinctive, as applied to or used in
connection with the applicant's goods, business or services, proof of substantially exclusive and
continuous use thereof as a mark or trade-name by the applicant in connection with the sale of
goods, business or services for the five years next preceding the date of the filing of the
application for its registration. (As amended by Sec. 3, Rep. Act No. 638.)
This Court held that the doctrine is to the effect that a word or phrase originally incapable of
exclusive appropriation with reference to an article on the market, because geographically or
otherwise descriptive, might nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article was his product.
By way of illustration, is the word "Selecta" which according to this Court is a common ordinary
term in the sense that it may be used or employed by any one in promoting his business or
enterprise, but which 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, may acquire a secondary
meaning as to be exclusively associated with its products and business, so that its use by another
may lead to confusion in trade and cause damage to its business.
The applicability of the doctrine of secondary meaning to the situation now before Us is
appropriate because there is oral and documentary evidence showing that the word PLANTERS
has been used by and closely associated with Standard Brands for its canned salted peanuts since
1938 in this country. In other words, there is evidence to show that the term PLANTERS has
become a distinctive mark or symbol insofar as salted peanuts are concerned, and by priority of
use dating as far back as 1938, respondent Standard Brands has acquired a preferential right to
its adoption as its trademark warranting protection against its usurpation by another. Ubi jus
ibiremedium. Where there is a right there is a remedy. Standard Brands has shown the existence
of a property right and respondent Director, has afforded the remedy.
Applying the words of Justice Roman Ozaeta in the "AngTibay" case (Ang vs. ToribioTeodoro, p.
56, supra) to the case now before Us, petitioner herein must not be allowed to get a free ride on
the reputation and selling power of Standard Brands PLANTERS salted peanuts, for a self-
respecting person, or a reputable business concern as is the case here, does not remain in the
shelter of another's popularity and goodwill but builds one of his own.
American Wire, supra
Emerald Garments, supra
Generic and Descriptive Marks
Societe des Produits, supra
[G.R. No. L-14377. December 29, 1960.]
THE EAST PACIFIC MERCHANDISING CORPORATION, petitioner, vs. THE DIRECTOR OF PATENTS
and LUIS P. PELLICER, respondents.
Facts of the Case:
The records disclose that on June 14, 1947, Marcelo T. Pua filed with the Office of the Director of
Commerce an application for the registration under Act 666 of the composite trademark
consisting of the word "Verbena" and the representation of a Spanish lady, more particularly
described as follows:
"Against a blue background is the bust figure of a Spanish Señorita dressed in a typically pink
dancer's attire with her upper arms partly covered with a Spanish shawl of green and white. The
figure appears with black well groomed hair adorned by red roses. The figure also appears to be
wearing two green earrings. At the left of this figure is shown a balcony decked with plants and
flowers characteristics of Spanish houses." (p. 10, Records)
The applicant further alleged that the trade-mark applied for has continuously been used by him
in commerce since August 15,1947 on such merchandise as lotion, face powder, hair pomade,
brilliantine, and other allied products.
On or about November 4, 1953, Pua assigned his rights to the trade-mark in question, as well as
to the pending application for the registration thereof, to the herein petitioner, East Pacific
Merchandising Corporation. The latter renewed the application under the new trade-mark law
(R.A. 166) at the Patents Office on November 8, 1957.
Issue:
Why are generic and descriptive terms not registrable?
Ruling of the Court:
These types of marks cannot be susceptible for exclusive appropriation.
In a leading case, Caswell vs. Davis, 17 Am. Rep. 233 241, 242, the court, on a similar issue, said:
"There is no principle more firmly settled in the law of trademarks, than that words or phrases
which have been in common use and which indicate the character, kind, quality and composition
of the thing, may not be appropriated by any one to his exclusive use. In the exclusive use of
them the law will not protect. . . . Nor does it matter that the form of the words or phrases
adopted also indicate the origin and maker of the article. The combination of words must express
only the latter. It is the result of all the decisions, that known words and phrases indicative of
quality and composition are the common property of all mankind. They may not be appropriated
by one to mark an article of his manufacture, when they may be used truthfully by another to
inform the public of the ingredients which make up an article made by him. Even when the sole
purpose of the one who first uses them is to form of them a trademark for himself expressing
only of origin with himself, if they do in fact show forth the quality and composition of the article
sold by him, he may not be protected in the exclusive use of them. Still less, then, when joined to
the fact that they do thus show forth the quality and composition, there is a purpose that they
should do so. It is a right which everyone has, and from the exercise of which he may not be
debarred, to make an article of the same ingredients, of the same composition and of as good
quality as that made by ,another, when that other has no exclusive privilege of manufacture
conferred by law. Having this right to make, he has also the right to indicate the ingredients; the
composition and quality of that which he has made, by any usual words or phrases apt therefor.
Hence, when he adopts usual phrases which do no more than this, he but takes from a stock
common to all mankind, and does not infringe upon any exclusive right of another, who has,
before that, used the same, or like words or phrases. . . ." (cited with approval in 52 Am. Jur., Sec.
58, pp. 544-545)
The result would not change even if the Director erred in ruling that the figure of a lady, as
previously described, is likewise not registerable as a trademark. The figure, it may be granted,
was drawn on arbitrary and whimsical lines and styled in a peculiarly distinctive manner; but that
fact will not qualify the word "Verbena" for registration, since the combination of the two marks
would still be inadequate to guard against the misleading effects that flow from the use of the
term by petitioner.
The claim that the petitioner is entitled to registration because the term "Verbena" has already
acquired a secondary significance is without merit. The provisions of law (Rep. Act No. 166, sec. 4)
require that the trademark applied for must have "become distinctive of the applicant's goods",
and that a prima facie proof of this fact exists when the applicant has been in the "substantially
exclusive and continuous use thereof as a mark or tradename . . . for the five years next
preceding the date of the filing of the application for its registration". Here it appears not only
that applicant and his assignor (Pua) only began use of the alleged mark in the year 1947, the
same year when the application was filed; but that such trademarks as "Verbena Povil" and
"Lupel Verbena" had long been in use by respondent Pellicer on his own cosmetic products, and
that, as a matter of fact, he is the holder of a certificate of registration from the Patents Office
for the trademark "Lupel Verbena". Said facts preclude us from concluding that the trademark in
question has become distinctive of applicant's goods within the meaning of the law.
MASSO HERMANOS VS DIRECTOR OF PATENTS
FACTS:
Petitioner, MassoHermanos, S. A., is the registered owner of the trademark composed of the
word "Cosmopolite" used on canned fish. Masso applied to the Director of Patents for a renew
certificate of registration of said trademark.
Respondent, Director of Patents, denied application on the ground that the word "Cosmopolite",
as a trademark for canned fish is descriptive of said goods and, therefore, could not have been
legally registered as a trademark under the law.
ISSUE: WON petitioner application for registration of a mark is valid.
HELD: YES.
It is clear that the renewal of the registration under section 41 of Republic Act No. 166 is subject
to the following requirements:
(1)The trademark must have been registered under the old laws:
(2)The registration must be subsisting under said laws; and
(3)The certificate issued under the old laws must have been surrendered to the Patents Office
within one year from the time Republic Act No. 166 went into effect, which was on June 20, 1947.
There is no question that the above requirements Nos. (1) and (3) have been complied with by
the petitioner.
The question is whether the condition required under No. (2) exists in favor of the petitioner.
The respondent Director of Patents contends that the original registration of the trademark
under Act No. 666 was "null and void ab initio" because the word "Cosmopolite" is descriptive
and, therefore, the registration thereunder is not subsisting.
Is the word "Cosmopolite" descriptive? Section 13 of Act No. 666 provides that — ". . . But no
alleged trademark . . . shall be registered which is merely the name, quality or description of the
merchandise upon which it is to be used . . . In an application for registration, the Director of the
Bureau of Commerce shall decide the presumptive lawfulness of claim to the alleged trademark."
The word "Cosmopolite" does not give the name, quality, or description of the canned fish for
which it is used. It does not even describe the place of origin, for it does not indicate the country
or place where the canned fish was manufactured. It is a very general term which does not give
the kind or quality of the goods. For example, a dealer in shoes cannot register a trademark
"Leather Shoes" because that would be descriptive and it would be unjust to deprive other
dealers in leather shoes of the right to use the same words with reference to their merchandise.
The court is, therefore, of the opinion that the registration of the trademark "Cosmopolite' under
Act No. 666 was valid and is subsisting. The Director of Patents should not for light and
unsubstantial reasons reverse the ruling of the former officer in charge of trademark
registrations, which has been accepted and in force since 1917 up to the present.
Phil, Refining Co., supra
Asia Brewery, supra
ONG AI GUI VS. DIRECTOR OF PATENTS
Facts: On November 8, 1948, Ong Ai Gui, filed an application with the Director of Patents for the
registration of the following trade-name: "20th Century Nylon Shirts Factory." It is stated in
connection with the application that the trade-name was used for the first time by the applicant
on September 12, 1941 for his business: General merchandise dealing principally in textiles,
haberdasheries; also operating as manufacturer of shirts, pants and other men's and women's
wears.
Director referred it to examiner who reported that the words "shirts factory" are not registrable;
so the applicant made a disclaimer of said words (shirts factory) inserting a statement to that
effect in his original application. Director ordered the publication of the trade-name in the
Official Gazette.
Opposed by Wolfson, on behalf of E. I. Du Pont de Nemours and Company, that the word "nylon"
was a name coined by E. I. Du Pont de Nemours and Company as the generic name of a synthetic
fabric material, invented, patented, manufactured and sold by it and that this word is a generic
term; that the use of the name "nylon" is descriptive or deceptively misdescriptive of the goods,
business of manufactures of the applicant; that the use of the name would produce confusion in
trade and would deceive the public; and that "nylon" is not distinctive of applicant's goods;
business and manufactures and applicant does not claim that it has so become, Director ruled
that the application must be disapproved unless the word "nylon" is also disclaimed. The grounds
are: Nylon" is merely descriptive of the business of shirt-making if the shirts are made of nylon. It
is deceptively misdescriptive of said business, if the shirts are not made of nylon. Used in
connection with shirt-making, "Nylon" can never become distinctive, can never acquire
secondary, meaning, because it is a generic term, like cotton, silk, linen, or ramie. No length of
use and no amount of advertising will make "nylon" distinctive of shirts or of the business of
manufacturing them."
Issue: (while applicant admits that the term "nylon" is by itself alone descriptive and generic,)
whether he can register is not the said word alone but the whole combination of "20th Century
Nylon Shirts Factory."
Director of Patents has not completely denied the registration of the whole trade-name. He has
made a conditional denial only, permitting the registration of the name but with the disclaimer of
the terms "shirt factory" and "nylon."
Ruling: The trade-name may be registered, but applicant-appellant may not be entitled to the
exclusive use of the terms "shirts factory" and "nylon" as against any other who may
subsequently use the said terms, for the latter are merely descriptive or general terms,
jurispublici, incapable of appropriation by any single individual to the exclusion of others.
A word or a combination of words which is merely descriptive of an article of trade, or of its
composition, characteristics, or qualities, cannot be appropriated and protected as a trademark
to the exclusion of its use by others. The reason for this is that inasmuch as all persons have an
equal right to produce and vend similar articles, they also have the right to describe them
properly and to use any appropriate language or words for that purpose, and no person can
appropriate to himself exclusively any word or expression, properly descriptive of the article, its
qualities, ingredients, or characteristics, and thus limit other persons in the use of language
appropriate to the description of their manufactures, the right to the use of such language being
common to all. This rule excluding descriptive terms has also been held to apply to trade-names.
The true test is not whether they are exhaustively descriptive of the article designated, but
whether in themselves, and as they are commonly used by those who understand their meaning,
they are reasonably indicative and descriptive of the thing intended. If they are thus descriptive,
and not arbitrary, they cannot be appropriated from general use and become the exclusive
property of anyone."
If the trade-name consists of a descriptive word, no monopoly of the right to use the same can
be acquired. This is but a corollary of the proposition that a descriptive word cannot be the
subject of a trade mark. Others may use the same or similar descriptive word in connection with
their own wares, provided they take proper steps to prevent the public being deceived.
The so-called descriptive terms, which may be used to describe the product adequately, can not
be monopolized by a single user and are available to all. It is only natural that the trade will
prefer those marks which bear some reference to the article itself. Therefore, even those
descriptive marks which are distinctive by themselves can be appropriated by others with
impunity. A descriptive word may be admittedly distinctive, especially if the user is the first
creator of the article. It will, however, be denied protection, not because it lacks distinctiveness,
but rather because others are equally entitled to its use.
The claim that a combination of word may be registered as a trade-name is no justification for
not applying the rules or principles hereinabove mentioned. The use of a generic term in a trade-
name is always conditional, i. e., subject to the limitation that the registrant does not acquire the
exclusive right to the descriptive or generic term or word.
A combination of marks or words may constitute a valid trademark or (in the case of words) a
tradename even though some of the constituent portions thereof would not be subject,
separately, to exclusive appropriation as such. Thus, although a word may be descriptive and not
subject to exclusive use as a trademark, it may properly become the subject of a trademark by
combination with another word or term which is nondescriptive, although no exclusive right to
the descriptive word or term is created".
It must also be noted that no claim is made in the application that the trade-name sought to be
registered has acquired what is known as a secondary meaning. All that the applicant declares in
his statement accompanying his application is that the said trade-name has been continuously
used by it in business in the Philippines for about seven years, without allegation or proof that
the trade-name has become distinctive of the applicant's business or services. Furthermore, the
use of the term "nylon" in the tradename is both "descriptive" and "deceptively and
misdescriptive" of the applicant-appellant's business, for apparently he does not use nylon in the
manufacture of the shirts, pants and wears that he produces and sells. How can a secondary
meaning be acquired if appellant's products are not made of nylon? Certainly no exclusive right
can be acquired by deception or fraud.
Doctrine of Secondary Meaning
Phil. Nut Industry, supra
ANA L. ANG, petitioner, vs. TORIBIO TEODORO, respondent.
Facts of the Case:Respondent ToribioTeodoro, at first in partnership with Juan Katindig and later
as sole proprietor, has continuously used "AngTibay," both as a trade-mark and as a trade-name,
in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He formally
registered it as a trade-mark on September 29, 1915, and as a trade-name on January 3, 1933.
The growth of his business is a thrilling epic of Filipino industry and business capacity. Starting in
an obscure shop in 1910 with a modest capital of P210 but with tireless industry and unlimited
perseverance, ToribioTeodoro, then an unknown young man making slippers with his own hands
but now a prominent business magnate and manufacturer with a large factory operated with
modern machinery by a great number of employees, has steadily grown with his business to
which he has dedicated the best years of his life and which he has expanded to such proportions
that his gross sales from 1918 to 1938 aggregated P8,787,025.65. His sales in 1937 amounted to
P1,299,343.10 and in 1938, P1,133,165.77. His expenses for advertisement from 1919 to 1938
aggregated P210,641.56.
Petitioner (defendant below) registered the same trade-mark "AngTibay" for pants and shirts on
April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. In
the following year (1938) her gross sales amounted to P422,682.09. Neither the decision of the
trial court nor that of the Court of Appeals shows how much petitioner has spent for
advertisement. But respondent in his brief says that petitioner "was unable to prove that she had
spent a single centavo advertising 'AngTibay' shirts and pants prior to 1938. In that year she
advertised the factory which she had just built and it was when this was brought to the attention
of the appellee that he consulted his attorneys and eventually brought the present suit."
Issue:Whether or not the phrase "AngTibay," being neither geographic nor descriptive, was
originally capable of exclusive appropriation as a trademark.
Ruling of the Court:Yes. We have said that the phrase "AngTibay," 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.
Respondent has continuously used "AngTibay," both as a trade-mark and as a trade- name, in the
manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He formally registered
it as a trade-mark on September 29, 1915, and as a trade-name on January 3, 1933. Petitioner
registered the same trade-mark "AngTibay" for pants and shirts on April 11, 1932, and
established a factory for the manufacture of said articles in the year 1937. Held: That petitioner's
registration of the trade-mark "AngTibay" should be cancelled, and that she should be
perpetually enjoined from using said trade-mark on goods manufactured and sold by her.
An inquiry into the etymology and meaning of the Tagalog words "AngTibay," made in the
decision, shows that the phrase is never used adjectively to define or describe an object. It is,
therefore, not a descriptive term within the meaning of the Trade-mark Law but rather a fanciful
or coined phrase which may properly and legally be appropriated as a trade-mark or trade-name.
Hence, it was originally capable of exclusive appropriation as a trade-mark by the respondent.
The function of a trade-mark is to point distinctively, either by its own meaning or by association,
to the origin or ownership of the wares to which it is applied. "AngTibay," as used by the
respondent to designate his wares, had exactly performed that function for twenty-two years
before the petitioner adopted it as a trade-mark in her own business. "AngTibay" shoes and
slippers are, by association, known throughout the Philippines as products of the "AngTibay"
factory owned and operated by the respondent. Even if "AngTibay," therefore, were not capable
of exclusive appropriation as a trade-mark, the application of the doctrine of secondary meaning
could nevertheless be fully sustained because, in any event, by respondent's long and exclusive
use of said phrase with reference to his products and his business, it has acquired a proprietary
connotation. This doctrine is to the effect that a word or phrase originally incapable of exclusive
appropriation with reference to an article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and so exclusively by one producer with
reference to his article that, in that trade and to that branch of the purchasing public, the word
or phrase has come to mean that the article was his product.
In the present stage 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. Such construction of the law is induced by
cogent reasons of equity and fair dealing discussed in the decision.
Tested by the foregoing rule, and in the light of other considerations set out in greater detail in
the decision, Held: That pants and shirts are goods similar to shoes and slippers within the
meaning of sections 3, 7, 11, 13, and 20 of the Trade-mark Law.
ARCE SONS AND CO. VS SELECTA BISCUITS
FACTS:
Respondent, Selecta Biscuit Company, Inc, filed with the Philippine Patent Office a petition for
the registration of the word "SELECTA" as trade-mark to be used on its bakery products.
Petitioner, filed its opposition thereto on several grounds, among which are:
(1) that the mark "SELECTA" had been continuously used by petitioner in the manufacture and
sale of its products, including cakes, bakery products, milk and ice cream, from the time of its
organization and even prior thereto by its predecessor-in-interest, Ramon Arce;
(2) that the mark "SELECTA" has already become identified with the name of petitioner and its
business;
(3) that petitioner had warned respondent not to use said mark because it was already being
used by the former, but that the latter ignored said warning;
(4) that respondent is using the word "SELECTA" as a trade-mark in bakery products in unfair
competition with the products of petitioner thus resulting in confusion in trade;
(5) that the mark to which the application of respondent refers has striking resemblance, both in
appearance and meaning, to petitioner's mark as to be mistaken therefore by the public and
cause respondent's goods to be sold as petitioner's.
ISSUE: WON respondent application for registration of a mark is infringing on petitioner’s mark.
HELD: YES. The word "SELECTA", it is true, may be an ordinary or common word in the sense that
it 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. In this sense, its use by another may
lead to confusion in trade and cause damage to its business. And this is the situation of petitioner
when it used the word "SELECTA" as a trade-mark. In this sense, the law gives it protection and
guarantees its use to the exclusion of all others. And it is also in this sense that the law postulates
that "The ownership or possession of a trade-mark, . . . shall be recognized and protected in the
same manner and to the same extent, as are other property rights known to the law," thereby
giving to any person entitled to the exclusive use of such trade-mark the right to recover
damages in a civil action from any person who may have sold goods of similar kind bearing such
trade-mark (Sections 2-A and 23, Republic Act No. 166, as amended).
The term "SELECTA" may be placed at par with the words "AngTibay" which this Court has
considered not merely as a descriptive term within the meaning of the Trade-mark Law but as a
fanciful or coined phrase, or a trade-mark. In that case, this Court found that respondent has
consistently used the term "AngTibay", both as a trade-mark and a trade-name, in the
manufacture and sale of slippers, shoes, and indoor baseballs for twenty-two years before
petitioner registered it as a trade-name for pants and shirts so that it has performed during that
period the function of a trade-mark to point distinctively, or by its own meaning or by association,
to the origin or ownership of the wares to which it applies. And in holding that respondent was
entitled to protection in the use of that trade-mark, this Court made the following comment:
"The function of a trade-mark is to point distinctively, either by its own meaning or by association,
to the origin or ownership of the wares to which it is applied. 'AngTibay,' as used by the
respondent to designate his wares, had exactly performed that function for twenty-two years
before the petitioner adopted it as a trade-mark in her own business. 'AngTibay' shoes and
slippers are, by association, known throughout the Philippines as products of the 'AngTibay'
factory owned and operated by the respondent. Even if 'AngTibay, therefore, were not capable
of exclusive appropriation as a trade-mark, the application of the doctrine of secondary meaning
could nevertheless be fully sustained because, in any event, by respondent's long and exclusive
use of said phrase with reference to his products and business, it has acquired a proprietary
connotation. This doctrine is to the effect that a word or phrase originally incapable of exclusive
appropriation with reference to an article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and so exclusively by one producer with
reference to his article that, in that trade and to that branch of the purchasing public, the word
or phrase has come to mean that the article was his product." (Ang vs. Teodoro, supra.)
The rationale in the AngTibay case applies on all fours to the case of petitioner.
LYCEUM OF THE PHILIPPINES VS CA AND OTHER SCHOOLS SUCH AS LYCEUM OF BAGUO, OF
TAGUIG OR WHATEVER
FACTS:
 Petitioner commenced in the SEC a proceeding (SEC-Case No. 1241) against the
Lyceum of Baguio, Inc. to require it to change its corporate name and to adopt another name not
"similar [to] or identical" with that of petitioner.
 In an Order dated 20 April 1977, Associate Commissioner Julio Sulit held that the
corporate name of petitioner and that of the Lyceum of Baguio, Inc. were substantially identical
because of the presence of a "dominant" word, i.e., "Lyceum,"
o The SEC also noted that petitioner had registered as a corporation ahead of the
Lyceum of Baguio, Inc. in point of time
o SEC ordered the latter to change its name to another name "not similar or identical
[with]" the names of previously registered entities.
 On appeal, however, by private respondents to the SEC En Banc, the decision of the
hearing officer was reversed and set aside.
o The SEC En Banc did not consider the word "Lyceum" to have become so identified
with petitioner as to render use thereof by other institutions as productive of confusion about
the identity of the schools concerned in the mind of the general public.
 the SEC En Banc held that the attaching of geographical names to the word "Lyceum" have acquired a well-known reputation, and confusion will result by the use of the disputed
served sufficiently to distinguish the schools from one name (by the defendant) (Ang Si Heng vs. Wellington Department Store, Inc., 92 Phil. 448).
 Petitioner then went on appeal to the Court of Appeals whichaffirmed the questioned With the foregoing as a yardstick, [we] believe the appellant failed to satisfy the aforementioned
Orders of the SEC En Banc. requisites. No evidence was ever presented in the hearing before the Commission which
sufficiently proved that the word 'Lyceum' has indeed acquired secondary meaning in favor of
ISSUE: WON Lyceum holds the name exclusively against Lyceum Baguio
the appellant. If there was any of this kind, the same tend to prove only that the appellant had
 We do not consider that the corporate names of private respondent institutions are been using the disputed word for a long period of time. Nevertheless, its (appellant) exclusive
"identical with, or deceptively or confusingly similar" to that of the petitioner institution. True use of the word (Lyceum) was never established or proven as in fact the evidence tend to convey
enough, the corporate names of private respondent entities all carry the word "Lyceum" but that the cross-claimant was already using the word 'Lyceum' seventeen (17) years prior to the
confusion and deception are effectively precluded by the appending of geographic names to the date the appellant started using the same word in its corporate name.
word "Lyceum." Thus, we do not believe that the "Lyceum of Aparri" can be mistaken by the
 In other words, while the appellant may have proved that it had been using the word
general public for the Lyceum of the Philippines, or that the "Lyceum of Camalaniugan" would be
'Lyceum' for a long period of time, this fact alone did not amount to mean that the said word had
confused with the Lyceum of the Philippines.
acquired secondary meaning in its favor because the appellant failed to prove that it had been
Tthe word "Lyceum" became associated with schools and other institutions providing public using the same word all by itself to the exclusion of others.
lectures and concerts and public discussions. Thus today, the word "Lyceum" generally refers to a
 More so, there was no evidence presented to prove that confusion will surely arise if
school or an institution of learning. Since "Lyceum" or "Liceo" denotes a school or institution of
the same word were to be used by other educational institutions. Consequently, the allegations
learning, it is not unnatural to use this word to designate an entity which is organized and
of the appellant in its first two assigned errors must necessarily fail." 13 (Underscoring partly in
operating as an educational institution.
the original and partly supplied)
 It is claimed, however, by petitioner that the word "Lyceum" has acquired a secondary
 Petitioner's use of the word "Lyceum" was not exclusive but was in truth shared with
meaning in relation to petitioner with the result that that word, although originally a generic, has
the Western Pangasinan Lyceum and a little later with other private respondent institutions
become appropriable by petitioner to the exclusion of other institutions like private respondents
which registered with the SEC using "Lyceum" as part of their corporation names. There may well
herein.
be other schools using Lyceum or Liceo in their names, but not registered with the SEC because
The doctrine of secondary meaning originated in the field of trademark law. Its application has, they have not adopted the corporate form of organization.
however, been extended to corporate names sine the right to use a corporate name to the
PILDI ang LYCEUM OF THE PHILs
exclusion of others is based upon the same principle which underlies the right to use a particular
trademark or tradename. 10 In Philippine Nut Industry, Inc. v. Standard Brands, Inc., 11 the
doctrine of secondary meaning was elaborated in the following terms:
Well-known Marks
" . . . a word or phrase originally incapable of exclusive appropriation with reference to an article
Sec. 123.1, Sec. 147.2, Rule 100 par C, Trademark Regulations, Rule 102
on the market, because geographically or otherwise descriptive, might nevertheless have been
used so long and so exclusively by one producer with reference to his article that, in that trade 246 Corp vs. Daway
and to that branch of the purchasing public, the word or phrase has come to mean that the
article was his product." 12
The question which arises, therefore, is whether or not the use by petitioner of "Lyceum" in its 11. Trademark Infringement is a relative concept
corporate name has been for such length of time and with such exclusivity as to have become Canon, supra
associated or identified with the petitioner institution in the mind of the general public (or at
least that portion of the general public which has to do with schools). The Court of Appeals Mcdonald’s, supra
recognized this issue and answered it in the negative:
 This circumstance has been referred to as the distinctiveness into which the name or 12. Well-known marks
phrase has evolved through the substantial and exclusive use of the same for a considerable
period of time. Sec. 123.1 (e) and (f), Sec. 147.2

o the same doctrine or principle cannot be made to apply where the evidence did not Mirpuri, supra
prove that the business (of the plaintiff) has continued for so long a time that it has become of Mcdonald’s, supra
consequence and acquired a good will of considerable value such that its articles and produce
13. Formal Requirements for application of registration
Sec. 124
14. Filing Date; Priority Right of a Foreign Applicant
Sec. 127, 127.2; 131
15. Certificate of Registration
Canon, supra
Faberge, supra
16. Duration of Registration – Sec. 145, 146.2
17. Rights Conferred with Registration – Sec. 127, 147.2
18. Limitation of Rights – Sec. 148
Canon, supra
19. Assignment and Transfer of Application and Registration – Sec. 149, 149.2, 149.4, 149.5
20. License Contracts – Sec. 150, 150.2
21. Cancellation of Registration – Sec. 151, 151.2
BATA INDUSTRIES, LTD., petitioner, vs.THE HONORABLE COURT OF APPEALS; TIBURCIO S. EVALLE,
DIRECTOR OF PATENTS, NEW OLYMPIAN RUBBER PRODUCTS CO., INC., respondents.
 Respondents, New Olympian Rubber Products Co., Inc. sought the registration of the
mark BATA for casual rubber shoes. It alleged that it has used the mark since July 1, 1970.
 Registration was opposed by Bata Industries, Ltd., a Canadian corporation, which
alleged that it owns and has not abandoned the trademark BATA.
 Evidence received by the Philippine Patent Office showed that Bata shoes made by
Gerbec and Hrdina of Czechoslovakia were sold in the Philippines prior to World War II.
o However, the trademark BATA was never registered in the Philippines by any foreign
entity.
o Under the circumstances, it was concluded that "opposer has, to all intents and
purposes, technically abandoned its trademark BATA in the Philippines."
 Upon the other hand, the Philippine Patent Office found that New Olympian Rubber
Products Co., Inc. has overwhelmingly and convincingly established its right to the trademark
BATA and consequently, its use and registration in its favor.
o it is the respondent-applicant's expense that created the enormous goodwill of the
trademark BATA in the Philippines and not the opposer’s
ISSUE: WON Bata Industries from Czechoslovakia can oppose.
HELD: NO.
We are satisfied from the evidence that any slight goodwill generated by the Czechoslovakian
product during the Commonwealth years was completely abandoned and lost in the more than
35 years that have passed since the liberation of Manila from the Japanese troops.
The applicant-appellee has reproduced excerpts from the testimonies of the opposer-appellant's
witnesses to prove that the opposer-appellant was never a user of the trademark BATA either
before or after the war, that the appellant is not the successor-in-interest of Gerbec and Hrdina
who were not is representatives or agents, and could not have passed any rights to the appellant,
that there was no privity of interest between the Czechoslovakian owner and the Canadian
appellant and that the Czechoslovakian trademark has been abandoned in Czechoslovakia.
Emerald, supra
22. Non-use of Mark when excused – Sec. 152 – 152.4
23. Remedies of Infringement – Sec. 155
24. Actions, Damages and Injunction for Infringement – Sec. 156 – 158, 170
SHANGRI-LA INT’L HOTEL MGT. VS. CA
The Shangri-La Group, filed with BPTTT a petition praying for the cancellation of the registration
of the "Shangri-La" mark and "S" device/logo issued to the Developers Group of Companies, Inc.,
on the ground that the same was illegally and fraudulently obtained and appropriated for the
latter's restaurant business. The Shangri-La Group alleged that it has been using the said mark
and logo for its corporate affairs and business since March 1962. Likewise, the Shangri-La Group
filed with the BPTTT its own application for registration of the subject mark and logo. The
Developers Group filed an opposition to the application.
Almost 3 years later, the Developers Group instituted with the RTC a complaint for infringement
and damages with prayer for injunction against the Shangri-La Group. The Shangri-La Group
moved for the suspension of the proceedings in the infringement case on account of the
pendency of the administrative proceedings before the BPTTT. This was denied by the trial court.
The Shangri-La Group filed a Motion for Reconsideration. Soon thereafter, it also filed a Motion
to Inhibit against Presiding Judge. The trial court denied both motions.
The Shangri-La Group filed a petition for certiorari before the CA, however, the CA dismissed the
petition as well as the Motion for Reconsideration.
Meanwhile, the Developers Group filed with the BPTTT an Urgent Motion to Suspend
Proceedings, invoking the pendency of the infringement case it filed before the RTC. The motion
was denied and the Motion for Reconsideration as well.
From the denial of the BPTTT, the Developers Group filed with the CA a petition for certiorari,
mandamus and prohibition, which was dismissed for lack of merit.
Issue: whether despite the institution of an Inter Partes case for cancellation of a mark with the
BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) by one party, the adverse
party can file a subsequent action for infringement with the regular courts of justice in
connection with the same registered mark.
Ruling: Yes. In applying Section 151.2 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code in the case at bar, the earlier institution of an Inter Partes case by the
Shangri-La Group for the cancellation of the "Shangri-La" mark and "S" device/logo with the
BPTTT cannot effectively bar the subsequent filing of an infringement case by registrant
Developers Group. The law and the rules are explicit. The issue raised before the BPTTT was quite
different from that raised in the trial court. Before the BPTTT was the issue of whether the mark
registered by Developers Group is subject to cancellation, as the Shangri-La Group claims prior
ownership of the disputed mark. On the other hand, the issue raised before the trial court was
whether the Shangri-La Group infringed upon the right of Developers Group within the
contemplation of Section 22 of Republic Act 166. However, while the instant petitions were still
pending with the Supreme Court, the infringement court rendered its decision upholding the
validity of the registration of the service mark "Shangri-La" and "S-Logo" in the name of the
Developers Group. The said decision was appealed with the Court of Appeals. There can be no
denying that the infringement court may validly pass upon the right of registration. With the
decision of the RTC upholding the validity of the registration of the service mark "Shangri-La" and
"S" logo in the name of Developers Group, the cancellation case filed with the Bureau became
moot. To allow the Bureau to proceed with the cancellation case would lead to a possible result
contradictory to that which the RTC had rendered, albeit the same was still on appeal.
Following both law and the jurisprudence enunciated in Conrad and Company, Inc. v. Court of
Appeals, the infringement case can and should proceed independently from the cancellation case
with the Bureau so as to afford the owner of certificates of registration redress and injunctive
writs. In the same light, so must the cancellation case with the BPTTT continue independently
from the infringement case so as to determine whether a registered mark may ultimately be
cancelled. However, the RTC, in granting redress in favor of Developers Group, went further and
upheld the validity and preference of the latter's registration over that of the Shangri-La Group.
There can be no denying that the infringement court may validly pass upon the right of
registration under Sec 161. With the decision of the Regional Trial Court upholding the validity of
the registration of the service mark "Shangri-La" and "S" logo in the name of Developers Group,
the cancellation case filed with the Bureau hence becomes moot. To allow the Bureau to proceed
with the cancellation case would lead to a possible result contradictory to that which the
Regional Trial Court has rendered, albeit the same is still on appeal. Such a situation is certainly
not in accord with the orderly administration of justice.
Conrad and Company vs. CA
25. Limitations to Actions for Infringement – Sec. 159
26. Rights of Foreign Corporation to sue in Trademark or Service Mark Enforcement action – Sec.
160
LEVITON INDUSTRIES, NENA DE LA CRUZ LlM, DOMINGO GO, and LIM KIAT, petitioners, vs. HON.
SERAFIN SALVADOR, Judge, Court of First Instance of Rizal, Caloocan City, Branch XIV and
LEVITON MANUFACTURING CO., INC., respondents.
Facts of the Case:Private respondent Leviton Manufacturing Co., Inc. led a complaint for unfair
competition with prayer for damages and the issuance of a writ of preliminary injunction, under
the provisions of Section 21-A of Republic Act No. 166 against petitioners who allegedly used the
trademark Leviton, belonging to private respondent and copied its design which would cause
confusion in the minds of the consumers. All that is alleged in private respondent's complaint is
that it is a foreign corporation. Petitioners moved to dismiss the complaint for failure to state a
cause of action, drawing attention to the failure to allege therein private respondent's capacity to
sue under said law. The lower court denied both the motion and supplemental motion of
petitioners to dismiss the complaint as well as their motion for reconsideration of said denial.
Issue:Whether or not a foreign corporation can seek redress for unfair competition.
Ruling of the Court:Yes.
Undoubtedly, Section 21-A of the Trademark Law (Republic Act No. 166) grants to a foreign
corporation, whether or not licensed to do business in the Philippines, the right to seek redress
for unfair competition before Philippine courts, But the said law is not without qualifications. Its
literal tenor indicates as a condition sine qua non the registration of the trademark of the suing
foreign corporation with the Philippine Patent Officer or, in the least, that it bean assignee of
such registered trademark. The said section further requires that the country, of which the
plaintiff foreign corporation or juristic person is a citizen or democilliary, grants to Filipino
corporations or juristic entities the same reciprocal treatment, either thru treaty, convention or
law.
Private respondent has chosen to anchor its action under the Trademark Law of the Philippines, a
law which, as pointed out, explicitly sets down the conditions precedent for the successful
prosecution thereof. It is therefore incumbent upon private respondent to comply with these
requirements or over its exemption therefrom, if such be the case. It may be that private
respondent has the right to sue before Philippine courts, but our rules on pleadings require that
the necessary qualifying circumstances which clothe it with such right be affirmatively pleaded.
Hence, where in the case at bar, all that is alleged in private respondent's complaint is that it is a
foreign corporation, such bare averment not only fails to comply with the requirements imposed
by the aforesaid Section 21-A but violates as well the directive of Section 4, Rule 8 of the Rules of
Court.
The reason for the rule requiring the necessary qualifying circumstances which clothe the party-
with the right to sue be affirmatively pleaded is enunciated in "Atlantic Mutual Insurance Co et al.
versus Cebu Stevedoring Co., Inc.'' as follows: "these are matters peculiarly within the knowledge
of appellants alone, and it would be unfair to impose upon appellees the burden of asserting and
proving the contrary. It is enough that foreign corporations are allowed by law to seek redress in
our courts under certain conditions.- the interpretation of the law should not go so far as to
include, in effect, an inference that those conditions had been met from the mere fact that the
party sued is a foreign corporation." (17 SCRA 1037)
GENERAL GARMENTS CORP. VS DIRECTOR OF PATENTS
FACTS:
Petitioner, General Garments Corporation, is the owner of the trademark "Puritan,” issued since
1962 by the Philippine Patent Office, for assorted men's wear, such as sweaters, shirts jackets,
undershirts and briefs.
Respondent, Puritan Sportswear Corporation, on 1964, filed a petition for the cancellation of the
trademark "Puritan" registered in the name of petitioner, alleging ownership and prior use in the
Philippines of the said trademark on the same kinds of goods, which use it had not abandoned;
and alleging further that the registration thereof by General Garments Corporation had been
obtained fraudulently and in violation of Section 17(c) of Republic Act No. 166, as amended, in
relation to Section 4(d) thereof.
"Section 17(c) and Section 4(d) of the Trade Law provide respectively as follows:
"SEC. 17.Grounds for cancellation. — Any person, who believes that he is or will be damaged by
the registration of a mark or trade-name, may, upon the payment of the prescribed fee, apply to
cancel said registration upon any of the following grounds:
xxxxxxxxx
(c)That the registration was obtained fraudulently or contrary to the provisions of section four,
Chapter II thereof; . . ."
"SEC. 4.Registration of trade-marks, trade-names and service-marks which shall be known as the
principal register. The owner of a trade-mark, trade-name or service-mark used to distinguish his
goods, business or services from the goods, business or services of others shall have the right to
register the same on the principal register, unless it:
xxxxxxxxx
(d)Consists of or comprises a mark or trade-name which so resembles a mark or trade-name
registered in the Philippines or a mark or trade-name previously used in the Philippines by
another and not abandoned, as to be likely, when applied to or used in connection with goods,
business or services of the applicant, to cause confusion or mistake or to deceive purchasers;
or . . .
ISSUE: WON respondent as foreign corporation cancel the registration of petitioner.
HELD: YES.
The fact that it may not transact business in the Philippines unless it has obtained a license for
that purpose, nor maintain a suit in Philippine courts for the recovery of any debt, claim or
demand without such license does not make respondent any less a juridical person.
To recognize respondent as a juridicial person, however, does not resolve the issue in this case. It
should be postulated at this point that respondent is not suing in our courts "for the recovery of
any debt, claim or demand," for which a license to transact business in the Philippines is required
by Section 69 of the Corporation Law, subject only to the exception already noted. Respondent
went to the Philippine Patent Office on a petition for cancellation of a trademark registered by
petitioner, invoking Section 17(c) in relation to Section 4(d) of the Trademark Law. A more or less
analogous question arose in Western Equipment & Supply Co. v. Reyes. The syllabus of the report,
which is a correct statement of the doctrine laid down in the decision, reads as follows:
"A foreign corporation which has never done . . . business in the Philippine Islands and which is
unlicensed and unregistered to do business here, but is widely and favorably known in the Islands
through the use therein of its products bearing its corporate and trade name has a legal right to
maintain an action in the Islands.
xxxxxxxxx
"The purpose of such a suit is to protect its reputation, corporate name and goodwill which has
been established through the natural development of its trade for a long period of years, in the
doing of which it does not seek to enforce any legal or contract rights arising from, or growing
out of any business which it has transacted in the Philippine Islands.
"The right to the use of the corporate or trade name is a property right, a right in rem, which it
may assert and protect in any of the courts of the world — even in jurisdictions where it does not
transact business — just the same as it may protect its tangible property, real or personal against
trespass or conversion."
In Asari Yoko Co., Ltd. v. KeeBoc, the plaintiff, a Japanese corporation which had acquired prior
use in the Philippines of the trademark "RACE" for men's shirts and undershirts but which had
not shown prior registration thereof, successfully maintained a suit opposing the application of
the defendant, a local businessman, to register the same trademark for similar goods produced
by him. This Court said: "The lawful entry into the Philippines of goods bearing the trademark
since 1949 should entitle the owner of the trademark to the right to use the same to the
exclusion of others. Modern trade and commerce demands that depredations on legitimate
trademarks of non-nationals should not be countenanced." It may be added here that the law
against such depredations is not only for the protection of the owner of the trademark who has
acquired prior use thereof but also, and more importantly, for the protection of purchasers from
confusion, mistake or deception as to the goods they are buying. This is clear from a reading of
Section 4(d) of the Trademark Law.
Petitioner's last argument is that under Section 37 of the Trademark Law respondent is not
entitled to the benefits of said law because the Philippines is not a signatory to any international
treaty or convention relating to marks or tradenames or to the repression of unfair competition.
Section 37 reads in part:
"SEC. 37.Rights of foreign registrants. — Persons who are nationals of, domiciled in, or have a
bona fide or effective business or commercial establishment in any foreign country, which is a
party to any international convention or treaty relating to marks or trade-names, or the
repression of unfair competition to which the Philippines may be a party, shall be entitled to the
benefits and subject to the provisions of this Act to the extent and under the conditions essential
to give effect to any such convention and treaties as long as the Philippines shall continue to be a
party thereto, except as provided in the following paragraphs of this section."
As correctly pointed out by respondents, this provision was incorporated in the law in
anticipation of the eventual adherence of the Philippines to any international convention or
treaty for the protection of industrial property. It speaks of persons who are nationals of,
domiciled in, or have a bona fide or effective business or commercial establishment in any
foreign country, which is a party to any international convention or treaty relating to industrial
property to which the Philippines may be a party. In other words, the provision will be operative
only when the Philippines becomes a party to such a convention or treaty. That this was the
intention of Congress is clear from the explanatory note to House Bill No. 1157 (now Republic Act
166)TRADEMARK LAW, in reference to Section 37, which is the only provision in Chapter XI of the
Trademark Law on Foreign Industrial Property: "The necessary provisions to qualify the
Philippines under the international convention for the protection of industrial property have
been specifically incorporated in the Act." In the meantime, regardless of Section 37, aliens or
foreign corporations are accorded benefits under the law. Thus, under Section 2, for instance,
the trade-marks, trade-names and service-marks owned by persons, corporations, partnerships
or associations domiciled in any foreign country may be registered in the Philippines, provided
that the country of which the applicant for registration is a citizen grants by law substantially
similar privileges to citizens of the Philippines.
La Chemise Lacoste vs. Fernandez, supra
Converse Rubber, supra
27. Tradenames or business names – Sec. 165 – 165.4
Converse Rubber, supra
PHILIPPS EXPORT VS. CA
Facts: Petitioners Philips Electrical and Philips Industrial were incorporated on 29 August 1956
and 25 May 1956, respectively, while Respondent Standard Philips was issued a Certificate of
Registration on 19 April 1982, twenty-six (26) years later. Petitioner PEBV has also used the
trademark "PHILIPS" on electrical lamps of all types and their accessories since 30 September
1922, as evidenced by Certificate of Registration No. 1651.
On 24 September 1984, Petitioners filed a letter complaint with the SEC asking for the
cancellation of the word "PHILIPS" from Private Respondent's corporate name in view of the
prior registration with the Bureau of Patents of the trademark "PHILIPS" and the logo "PHILIPS
SHIELD EMBLEM" in the name of Petitioner PEBV, and the previous registration of Petitioners
Philips Electrical and Philips Industrial with the SEC. As a result of Private Respondent's refusal to
amend its Articles of Incorporation, Petitioners filed with the SEC, on 6 February 1985, a Petition
(SEC Case No. 2743), praying for the issuance of a Writ of Preliminary Injunction, alleging, among
others, that Private Respondent's use of the word PHILIPS amounts to an infringement and clear
violation of Petitioner's exclusive right to use the same considering that both parties engage in
the same business.
SEC Hearing Officer ruled against the issuance of such Writ and dismissed the Petition for lack of
merit. Petitioner appealed to CA but was later dismissed.
Issue: Whether petitioner has exclusive right to its corporate name and trade name
Ruling: A corporation's right to use its corporate and trade name is a property right, a right in
rem, which it may assert and protect against the world in the same manner as it may protect its
tangible property, real or personal, against trespass or conversion. It is regarded, to a certain
extent, as a property right and one which cannot be impaired or defeated by subsequent
appropriation by another corporation in the same field.
A name is peculiarly important as necessary to the very existence of a corporation. Its name is
one of its attributes, an element of its existence, and essential to its identity.
A corporation acquires its name by choice and need not select a name identical with or similar to
one already appropriated by a senior corporation while an individual's name is thrust upon him. ).
A corporation can no more use a corporate name in violation of the rights of others than an
individual can use his name legally acquired so as to mislead the public and injure another.
Our own Corporation Code, in its Section 18, expressly provides that: "No corporate name may
be allowed by the Securities and Exchange Commission if the proposed name is identical or
deceptively or confusingly similar to that of any existing corporation or to any other name
already protected by law or is patently deceptive, confusing or contrary to existing law. Where a
change in the corporate name is approved, the commission shall issue an amended certificate of
incorporation under the amended name." (Emphasis supplied). The statutory prohibition cannot
be any clearer. To come within its scope, two requisites must be proven, namely:
(1) that the complainant corporation acquired a prior right over the use of such corporate name;
and
(2) the proposed name is either:
(a)identical or
(b)deceptively or confusingly similar to that of any existing corporation or to any other
name already protected by law; or
(c)patently deceptive, confusing or contrary to existing law.
The right to the exclusive use of a corporate name with freedom from infringement by similarity
is determined by priority of adoption.
In determining the existence of confusing similarity in corporate names, the test is whether the
similarity is such as to mislead a person using ordinary care and discrimination.
Proof of actual confusion need not be shown. It suffices that confusion is probably or likely to
occur. Private respondent's choice of 'PHILIPS' as part of its corporate name [STANDARD PHILIPS
CORPORATION] . . . tends to show said respondent's intention to ride on the popularity and
established goodwill of said petitioner's business throughout the world" The subsequent
appropriator of the name or one confusingly similar thereto usually seeks an unfair advantage, a
free ride on another's goodwill.

PHILIPS is a trademark or trade name which was registered as far back as 1922. Petitioners,
therefore, have the exclusive right to its use which must be free from any infringement by
similarity. A corporation has an exclusive right to the use of its name, which may be protected by
injunction upon a principle similar to that upon which persons are protected in the use of
trademarks and tradenames.

Such principle proceeds upon the theory that it is a fraud on the corporation which has acquired
a right to that name and perhaps carried on its business thereunder, that another should
attempt to use the same name, or the same name with a slight variation in such a way as to
induce persons to deal with it in the belief that they are dealing with the corporation which has
given a reputation to the name.

As a general rule, parties organizing a corporation must choose a name at their peril; and the use
of a name similar to one adopted by another corporation, whether a business or a nonbusiness
or nonprofit organization if misleading and likely to injure it in the exercise of its corporate
functions, regardless of intent, may be prevented by the corporation having the prior right, by a
suit for injunction against the new corporation to prevent the use of the name

Wherefore, ENJOINING private respondent from using "PHILIPS" as a feature of its corporate
name, and ORDERING the SEC to amend private respondent's Articles of Incorporation by
deleting the word PHILIPS from the corporate name of private respondent

28. Goods bearing infringing marks or trade names – Sec. 166

29. Unfair Competition – Sec. 168

Proline vs. CA
American Wire, supra

30. false designation – Sec. 169