SECTION 124.

 Requirements of Application. — 124.1. The application for the

registration of the mark shall be in Filipino or in English and shall contain the following:
(a) A request for registration;

(b) The name and address of the applicant;

(c) The name of a State of which the applicant is a national or where he has

domicile; and the name of a State in which the applicant has a real
and effective industrial or commercial establishment, if any;

(d) Where the applicant is a juridical entity, the law under which it is

organized and existing;

(e) The appointment of an agent or representative, if the applicant is not

domiciled in the Philippines;

(f) Where the applicant claims the priority of an earlier application, an

indication of:

i) The name of the State with whose national office the earlier
application was filed or if filed with an office other than a
national office, the name of that office,

ii) The date on which the earlier application was filed, and

iii) Where available, the application number of the earlier

application;

(g) Where the applicant claims color as a distinctive feature of the mark, a

statement to that effect as well as the name or names of the color
or colors claimed and an indication, in respect of each color, of the
principal parts of the mark which are in that color;

(h) Where the mark is a three-dimensional mark, a statement to that effect;

(i) One or more reproductions of the mark, as prescribed in the

Regulations;

(j) A transliteration or translation of the mark or of some parts of the mark,

as prescribed in the Regulations;

(k) The names of the goods or services for which the registration is sought,
grouped according to the classes of the Nice Classification, together
with the number of the class of the said Classification to which each
group of goods or services belongs; and

(l) A signature by, or other self-identification of, the applicant or his

representative.
 124.2. The applicant or the registrant shall file a declaration of actual use of the
mark with evidence to that effect, as prescribed by the Regulations within three (3)
years from the filing date of the application. Otherwise, the application shall be refused
or the mark shall be removed from the Register by the Director.
124.3. One (1) application may relate to several goods and/or services, whether
they belong to one (1) class or to several classes of the Nice Classification.
124.4. If during the examination of the application, the Office finds factual basis
to reasonably doubt the veracity of any indication or element in the application, it may
require the applicant to submit sufficient evidence to remove the doubt. (Sec. 5, R.A.
No. 166a)
SECTION 125. Representation;  Address for Service. — If the applicant is not
domiciled or has no real and effective commercial establishment in the Philippines, he
shall designate by a written document filed in the Office, the name and address of a
Philippine resident who may be served notices or process in proceedings affecting the
mark. Such notices or services may be served upon the person so designated by leaving
a copy thereof at the address specified in the last designation filed. If the person so
designated cannot be found at the address given in the last designation, such notice or
process may be served upon the Director. (Sec. 3, R.A. No. 166a)
SECTION 126. Disclaimers. — The Office may allow or require the applicant to
disclaim an unregistrable component of an otherwise registrable mark but such
disclaimer shall not prejudice or affect the applicant's or owner's rights then
existing or thereafter arising in the disclaimed matter, nor such shall disclaimer
prejudice or affect the applicant's or owner's right on another application of later date if
the disclaimed matter became distinctive of the applicant's or owner's goods, business
or services. (Sec. 13, R.A. No. 166a)
SECTION 127. Filing Date. — 127.1. Requirements. — The filing date of an
application shall be the date on which the Office received the following indications and
elements in English or Filipino:
(a) An express or implicit indication that the registration of a mark is
sought;

(b) The identity of the applicant;

(c) Indications sufficient to contact the applicant or his representative, if

any;

(d) A reproduction of the mark whose registration is sought; and

(e) The list of the goods or services for which the registration is sought.

127.2. No filing date shall be accorded until the required fee is paid. (n)
 SECTION 128. Single Registration for Goods and/or Services. — Where goods
and/or services belonging to several classes of the Nice Classification have been
included in one (1) application, such an application shall result in one registration. (n)
SECTION 129. Division of Application. — Any application referring to several goods
or services, hereafter referred to as the "initial application," may be divided by the
applicant into two (2) or more applications, hereafter referred to as the "divisional
applications," by distributing among the latter the goods or services referred to in the
initial application. The divisional applications shall preserve the filing date of the initial
application or the benefit of the right of priority. (n)
SECTION 130. Signature and Other Means of Self-Identification. — 130.1. Where a
signature is required, the Office shall accept:
(a) A hand-written signature; or

(b) The use of other forms of signature, such as a printed or stamped

signature, or the use of a seal, instead of a hand-written
signature: Provided, That where a seal is used, it should be
accompanied by an indication in letters of the name of the
signatory.

130.2. The Office shall accept communications to it by telecopier, or by electronic

means subject to the conditions or requirements that will be prescribed by the
Regulations. When communications are made by telefacsimile, the reproduction of the
signature, or the reproduction of the seal together with, where required, the indication
in letters of the name of the natural person whose seal is used, appears. The original
communications must be received by the Office within thirty (30) days from date of
receipt of the telefacsimile.
130.3. No attestation, notarization, authentication, legalization or other
certification of any signature or other means of self-identification referred to in the
preceding paragraphs, will be required, except, where the signature concerns the
surrender of a registration. (n)
SECTION 131. Priority Right. — 131.1. An application for registration of a mark
filed in the Philippines by a person referred to in Section 3, and who previously duly
filed an application for registration of the same mark in one of those countries,
shall be considered as filed as of the day the application was first filed in the
foreign country.
131.2. No registration of a mark in the Philippines by a person described in this
section shall be granted until such mark has been registered in the country of
origin of the applicant.
131.3. Nothing in this section shall entitle the owner of a registration granted
under this section to sue for acts committed prior to the date on which his mark was
registered in this country: Provided, That, notwithstanding the foregoing, the owner of a
well-known mark as defined in Section 123.1(e) of this Act, that is not registered in the
Philippines, may, against an identical or confusingly similar mark, oppose its
registration, or petition the cancellation of its registration or sue for unfair competition,
without prejudice to availing himself of other remedies provided for under the law.
131.4. In like manner and subject to the same conditions and requirements, the
right provided in this section may be based upon a subsequent regularly filed
application in the same foreign country: Provided, That any foreign application filed
prior to such subsequent application has been withdrawn, abandoned, or otherwise
disposed of, without having been laid open to public inspection and without leaving any
rights outstanding, and has not served, nor thereafter shall serve, as a basis for
claiming a right of priority. (Sec. 37, R.A. No. 166a)
SECTION 132. Application Number and Filing Date. — 132.1. The Office shall
examine whether the application satisfies the requirements for the grant of a filing date
as provided in Section 127 and Regulations relating thereto. If the application does not
satisfy the filing requirements, the Office shall notify the applicant who shall within a
period fixed by the Regulations complete or correct the application as required,
otherwise, the application shall be considered withdrawn.
132.2 Once an application meets the filing requirements of Section 127, it shall
be numbered in the sequential order, and the applicant shall be informed of the
application number and the filing date of the application will be deemed to have been
abandoned. (n)
SECTION 133. Examination and Publication. — 133.1. Once the application meets
the filing requirements of Section 127, the Office shall examine whether the application
meets the requirements of Section 124 and the mark as defined in Section 121 is
registrable under Section 123.
133.2. Where the Office finds that the conditions referred to in Subsection 133.1
are fulfilled, it shall, upon payment of the prescribed fee, forthwith cause the
application, as filed, to be published in the prescribed manner.
133.3. If after the examination, the applicant is not entitled to registration for
any reason, the Office shall advise the applicant thereof and the reasons therefor. The
applicant shall have a period of four (4) months in which to reply or amend his
application, which shall then be re-examined. The Regulations shall determine the
procedure for the re-examination or revival of an application as well as the appeal to
the Director of Trademarks from any final action by the Examiner.
133.4. An abandoned application may be revived as a pending application within
three (3) months from the date of abandonment, upon good cause shown and the
payment of the required fee.
133.5. The final decision of refusal of the Director of Trademarks shall be
appealable to the Director General in accordance with the procedure fixed by the
Regulations. (Sec. 7, R.A. No. 166a)
 SECTION 134. Opposition. — Any person who believes that he would be damaged
by the registration of a mark may, upon payment of the required fee and within thirty
(30) days after the publication referred to in Subsection 133.2, file with the Office an
opposition to the application. Such opposition shall be in writing and verified by the
oppositor or by any person on his behalf who knows the facts, and shall specify the
grounds on which it is based and include a statement of the facts relied upon. Copies of
certificates of registration of marks registered in other countries or other supporting
documents mentioned in the opposition shall be filed therewith, together with the
translation in English, if not in the English language. For good cause shown and upon
payment of the required surcharge, the time for filing an opposition may be extended
by the Director of Legal Affairs, who shall notify the applicant of such extension. The
Regulations shall fix the maximum period of time within which to file the opposition.
(Sec. 8, R.A. No. 165a)
SECTION 135. Notice and Hearing. — Upon the filing of an opposition, the Office
shall serve notice of the filing on the applicant, and of the date of the hearing thereof
upon the applicant and the oppositor and all other persons having any right, title or
interest in the mark covered by the application, as appear of record in the Office. (Sec.
9, R.A. No. 165)
SECTION 136. Issuance and Publication of Certificate. — When the period for filing
the opposition has expired, or when the Director of Legal Affairs shall have denied the
opposition, the Office upon payment of the required fee, shall issue the certificate of
registration. Upon issuance of a certificate of registration, notice thereof making
reference to the publication of the application shall be published in the IPO Gazette.
(Sec. 10, R.A. No. 165)
SECTION 137. Registration of Mark and Issuance of a Certificate to the Owner or his
Assignee. — 137.1. The Office shall maintain a Register in which shall be registered
marks, numbered in the order of their registration, and all transactions in respect of
each mark, required to be recorded by virtue of this law.
137.2. The registration of a mark shall include a reproduction of the mark and
shall mention: its number; the name and address of the registered owner and, if the
registered owner's address is outside the country, his address for service within the
country; the dates of application and registration; if priority is claimed, an indication of
this fact, and the number, date and country of the application, basis of the priority
claims; the list of goods or services in respect of which registration has been granted,
with the indication of the corresponding class or classes; and such other data as the
Regulations may prescribe from time to time.  cdasia

137.3. A certificate of registration of a mark may be issued to the assignee of the

applicant: Provided, That the assignment is recorded in the Office. In case of a change of
ownership, the Office shall at the written request signed by the owner, or his
representative, or by the new owner, or his representative and upon a proper showing
and the payment of the prescribed fee, issue to such assignee a new certificate of
registration of the said mark in the name of such assignee, and for the unexpired part
of the original period.
137.4. The Office shall record any change of address, or address for service,
which shall be notified to it by the registered owner.
137.5. In the absence of any provision to the contrary in this Act,
communications to be made to the registered owner by virtue of this Act shall be sent
to him at his last recorded address and, at the same, at his last recorded address for
service. (Sec. 19, R.A. No. 166a)
SECTION 138. Certificates of Registration. — A certificate of registration of a mark
shall be  prima facie evidence of the validity of the registration, the registrant's
ownership of the mark, and of the registrant's exclusive right to use the same in
connection with the goods or services and those that are related thereto specified in
the certificate. (Sec. 20, R.A. No. 165)
SECTION 139. Publication of Registered Marks;  Inspection of Register. — 139.1. The
Office shall publish, in the form and within the period fixed by the Regulations, the
marks registered, in the order of their registration, reproducing all the particulars
referred to in Subsection 137.2.
139.2. Marks registered at the Office may be inspected free of charge and any
person may obtain copies thereof at his own expense. This provision shall also be
applicable to transactions recorded in respect of any registered mark. (n)
SECTION 140. Cancellation upon Application by Registrant;  Amendment or
Disclaimer of Registration. — Upon application of the registrant, the Office may permit
any registration to be surrendered for cancellation, and upon cancellation the
appropriate entry shall be made in the records of the Office. Upon application of the
registrant and payment of the prescribed fee, the Office for good cause may permit any
registration to be amended or to be disclaimed in part: Provided, That the amendment
or disclaimer does not alter materially the character of the mark. Appropriate entry
shall be made in the records of the Office upon the certificate of registration or, if said
certificate is lost or destroyed, upon a certified copy thereof. (Sec. 14, R.A. No. 166)
SECTION 141. Sealed and Certified Copies as Evidence. — Copies of any records,
books, papers, or drawings belonging to the Office relating to marks, and copies of
registrations, when authenticated by the seal of the Office and certified by the Director
of the Administrative, Financial and Human Resource Development Service Bureau or in
his name by an employee of the Office duly authorized by said Director, shall be
evidence in all cases wherein the originals would be evidence; and any person who
applies and pays the prescribed fee shall secure such copies. (n)
SECTION 142. Correction of Mistakes Made by the Office. — Whenever a material
mistake in a registration incurred through the fault of the Office is clearly disclosed by
the records of the Office, a certificate stating the fact and nature of such mistake shall
be issued without charge, recorded and a printed copy thereof shall be attached to
each printed copy of the registration. Such corrected registration shall thereafter have
the same effect as the original certificate; or in the discretion of the Director of the
Administrative, Financial and Human Resource Development Service Bureau a new
certificate of registration may be issued without charge. All certificates of correction
heretofore issued in accordance with the Regulations and the registration to which they
are attached shall have the same force and effect as if such certificates and their
issuance had been authorized by this Act. (n)
SECTION 143. Correction of Mistakes Made by Applicant. — Whenever a mistake is
made in a registration and such mistake occurred in good faith through the fault of the
applicant, the Office may issue a certificate upon the payment of the prescribed
fee: Provided, That the correction does not involve any change in the registration that
requires republication of the mark. (n)
SECTION 144. Classification of Goods and Services. — 144.1. Each registration, and
any publication of the Office which concerns an application or registration effected by
the Office shall indicate the goods or services by their names, grouped according to the
classes of the Nice Classification, and each group shall be preceded by the number of
the class of that Classification to which that group of goods or services belongs,
presented in the order of the classes of the said Classification.
144.2.Goods or services may not be considered as being similar or dissimilar to
each other on the ground that, in any registration or publication by the Office, they
appear in different classes of the Nice Classification. (Sec. 6, R.A. No. 166a)
SECTION 145. Duration. — A certificate of registration shall remain in force for
ten (10) years: Provided, That the registrant shall file a declaration of actual use and
evidence to that effect, or shall show valid reasons based on the existence of obstacles
to such use, as prescribed by the Regulations, within one (1) year from the fifth
anniversary of the date of the registration of the mark. Otherwise, the mark shall be
removed from the Register by the Office. (Sec. 12, R.A. No. 166a)
SECTION 146. Renewal. — 146.1. A certificate of registration may be renewed for
periods of ten (10) years at its expiration upon payment of the prescribed fee and upon
filing of a request. The request shall contain the following indications:
(a) An indication that renewal is sought;  aisadc

(b) The name and address of the registrant or his successor-in-interest,

hereafter referred to as the "right holder";

(c) The registration number of the registration concerned;

(d) The filing date of the application which resulted in the registration

concerned to be renewed;

(e )Where the right holder has a representative, the name and address of
that representative;
 (f) The names of the recorded goods or services for which the renewal is
requested or the names of the recorded goods or services for which
the renewal is not requested, grouped according to the classes of
the Nice Classification to which that group of goods or services
belongs and presented in the order of the classes of the said
Classification; and

(g) A signature by the right holder or his representative.

146.2. Such request shall be in Filipino or English and may be made at any time
within six (6) months before the expiration of the period for which the registration was
issued or renewed, or it may be made within six (6) months after such expiration on
payment of the additional fee herein prescribed.
146.3. If the Office refuses to renew the registration, it shall notify the registrant
of his refusal and the reasons therefor.
146.4.An applicant for renewal not domiciled in the Philippines shall be subject
to and comply with the requirements of this Act. (Sec. 15, R.A. No. 166a)
SECTION 147. Rights Conferred. — 147.1. The owner of a registered mark shall
have the exclusive right to prevent all third parties not having the owner's consent from
using in the course of trade identical or similar signs or containers for goods or services
which are identical or similar to those in respect of which the trademark is registered
where such use would result in a likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a likelihood of confusion shall be
presumed.
147.2. The exclusive right of the owner of a well-known mark defined in
Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and
services which are not similar to those in respect of which the mark is
registered: Provided, That use of that mark in relation to those goods or services would
indicate a connection between those goods or services and the owner of the registered
mark: Provided,  further, That the interests of the owner of the registered mark are likely
to be damaged by such use. (n)
SECTION 148. Use of Indications by Third Parties for Purposes Other than those for
which the Mark is Used. — Registration of the mark shall not confer on the registered
owner the right to preclude third parties from using bona fide their names, addresses,
pseudonyms, a geographical name, or exact indications concerning the kind, quality,
quantity, destination, value, place of origin, or time of production or of supply, of their
goods or services: Provided, That such use is confined to the purposes of mere
identification or information and cannot mislead the public as to the source of the
goods or services. (n)
 SECTION 149. Assignment and Transfer of Application and Registration. — 149.1. An
application for registration of a mark, or its registration, may be assigned or transferred
with or without the transfer of the business using the mark. (n)
149.2. Such assignment or transfer shall, however, be null and void if it is liable
to mislead the public, particularly as regards the nature, source, manufacturing process,
characteristics, or suitability for their purpose, of the goods or services to which the
mark is applied.
149.3. The assignment of the application for registration of a mark, or of its
registration, shall be in writing and require the signatures of the contracting parties.
Transfers by mergers or other forms of succession may be made by any document
supporting such transfer.
149.4. Assignments and transfers of registrations of marks shall be recorded at
the Office on payment of the prescribed fee; assignment and transfers of applications
for registration shall, on payment of the same fee, be provisionally recorded, and the
mark, when registered, shall be in the name of the assignee or transferee.
149.5. Assignments and transfers shall have no effect against third parties until
they are recorded at the Office. (Sec. 31, R.A. No. 166a)
SECTION 150. License Contracts. — 150.1. Any license contract concerning the
registration of a mark, or an application therefor, shall provide for effective control
by the licensor of the quality of the goods or services of the licensee in connection
with which the mark is used. If the license contract does not provide for such quality
control, or if such quality control is not effectively carried out, the license contract shall
not be valid.

SECTION 151. Cancellation. — 151.1. A petition to cancel a

registration of a mark under this Act may be filed with the Bureau of Legal
Affairs by any person who believes that he is or will be damaged by the
registration of a mark under this Act as follows:
(a) Within five (5) years from the date of the registration of the
mark under this Act.
(b) At any time, if the registered mark becomes the generic
name for the goods or services, or a portion thereof, for
which it is registered, or has been abandoned, or its
registration was obtained fraudulently or contrary to the
provisions of this Act, or if the registered mark is being
used by, or with the permission of, the registrant so as to
misrepresent the source of the goods or services on or in
connection with which the mark is used. If the registered
 mark becomes the generic name for less than all of the
goods or services for which it is registered, a petition to
cancel the registration for only those goods or services
may be filed. A registered mark shall not be deemed to be
the generic name of goods or services solely because
such mark is also used as a name of or to identify a
unique product or service. The primary significance of the
registered mark to the relevant public rather than
purchaser motivation shall be the test for determining
whether the registered mark has become the generic
name of goods or services on or in connection with which
it has been used. (n)
(c) At any time, if the registered owner of the mark without
legitimate reason fails to use the mark within the
Philippines, or to cause it to be used in the Philippines by
virtue of a license during an uninterrupted period of
three (3) years or longer.
151.2. Notwithstanding the foregoing provisions, the court or the
administrative agency vested with jurisdiction to hear and adjudicate any
action to enforce the rights to a registered mark shall likewise exercise
jurisdiction to determine whether the registration of said mark may be
cancelled in accordance with this Act. The filing of a suit to enforce the
registered mark with the proper court or agency shall exclude any other
court or agency from assuming jurisdiction over a subsequently filed
petition to cancel the same mark. On the other hand, the earlier filing of
petition to cancel the mark with the Bureau of Legal Affairs shall not
constitute a prejudicial question that must be resolved before an action to
enforce the rights to same registered mark may be decided. (Sec. 17, R.A.
No. 166a)
SECTION 152. Non-use of a Mark When Excused. — 152.1. Non-use of
a mark may be excused if caused by circumstances arising independently
of the will of the trademark owner. Lack of funds shall not excuse non-use
of a mark.
152.2. The use of the mark in a form different from the form in
which it is registered, which does not alter its distinctive character, shall
 not be ground for cancellation or removal of the mark and shall not
diminish the protection granted to the mark.
152.3. The use of a mark in connection with one or more of the
goods or services belonging to the class in respect of which the mark is
registered shall prevent its cancellation or removal in respect of all other
goods or services of the same class.  cd

152.4. The use of a mark by a company related with the registrant or

applicant shall inure to the latter's benefit, and such use shall not affect
the validity of such mark or of its registration: Provided, That such mark is
not used in such manner as to deceive the public. If use of a mark by a
person is controlled by the registrant or applicant with respect to the
nature and quality of the goods or services, such use shall inure to the
benefit of the registrant or applicant. (n)
SECTION 153. Requirements of Petition;  Notice and Hearing. — Insofar
as applicable, the petition for cancellation shall be in the same form as
that provided in Section 134 hereof, and notice and hearing shall be as
provided in Section 135 hereof.
SECTION 154. Cancellation of Registration. — If the Bureau of Legal
Affairs finds that a case for cancellation has been made out, it shall order
the cancellation of the registration. When the order or judgment becomes
final, any right conferred by such registration upon the registrant or any
person in interest of record shall terminate. Notice of cancellation shall be
published in the IPO Gazette. (Sec. 19, R.A. No. 166a)
Prevent third persons from using identical signs
Drugs and medicines
Taiwan Kolin vs. Kolin Electronics

● On 1996, Taiwan Kolin - TRADEMARK APPLICATION, for the use of “KOLIN” on a

combination of goods, including colored televisions, refrigerators, window-type and splittype air
conditioners, electric fans and water dispenser falling under Classes 9, 11, and 21 of the Nice
Classification (NCL).
● Would eventually be considered abandoned for Taiwan Kolin’s failure to respond to IPO’s
Paper No. 5 requiring it to elect one class of good for its coverage.
● SUBSEQUENTLY REVIVED -via electing Class 9 as the subject of its application, particularly:
television sets, cassette recorder, VCD Amplifiers, camcorders and other audio/video electronic
equipment, flat iron, vacuum cleaners, cordless handsets, videophones, facsimile machines,
teleprinters, cellular phones and automatic goods vending machine. The application would in time
be duly published.
 ● Respondent (Kolin Electronics) opposed petitioner’s revived application

GROUND: the mark Taiwan Kolin seeks to register is identical, if not confusingly similar, with its “KOLIN”
mark registered on November 23, 2003, covering the following products under Class 9.

Petitioner’s Contentions:
● Petitioner argued that it should be accorded the benefits of a foreign-registered mark
under Secs. 3 and 131.1 of Republic Act No. 8293 of the IP Code; that it has already registered
the “KOLIN” mark in the People’s Republic of China, Malaysia and Vietnam, all of which are
parties to the Paris Convention for the Protection of Industrial Property (Paris Convention)
and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); and that
benefits accorded to a well-known mark should be accorded to petitioner.

Ruling of the Court of Appeals

● CA ruled in favor of Kolin Electronics, on the strength of the following premises:
(a) the mark sought to be registered by Taiwan Kolin is confusingly similar to the one already
registered in favor of Kolin Electronics;
-the intertwined use of television sets with amplifier, booster and voltage regulator bolstered the
fact that televisions can be considered as within the normal expansion of Kolin
Electronics, and is thereby deemed covered by its trademark as explicitly protected under Sec.
138 of the IP Code.
Petitioner’s goods are not closely related to those of Kolin Electronics

Identical marks may be registered for products from the same classification. Mere uniformity in
categorization, by itself, does not automatically preclude the registration of what appears to be an
identical mark, if that be the case. In fact, this Court, in a long line of cases, has held that such
circumstance does not necessarily result in any trademark infringement.

Verily, whether or not the products covered by the trademark sought to be registered by Taiwan Kolin,
on the one hand, and those covered by the prior issued certificate of registration in favor of Kolin
Electronics, on the other, fall under the same categories in the NCL is not the sole and decisive factor in
determining a possible violation of Kolin Electronics’ intellectual property right should petitioner’s
application be granted.

Emphasis should be on the similarity of the products involved and not on the arbitrary classification or
general description of their properties or characteristics. The mere fact that one person has adopted and
used a trademark on his goods would not, without more, prevent the adoption and use of the same
trademark by others on unrelated articles of a different kind.

Yes. Petitioner is entitled to its trademark registration of “KOLIN” over its specific goods of
television sets and DVD players

That Taiwan Kolin and Kolin Electronics’ goods are inherently similar in that they are all plugged into
electric sockets and perform a useful function is untenable for the following reasons:

The goods should be tested against several factors before arriving at a sound conclusion on the question
of relatedness. whether or not the products of the parties involved are related –– the doctrine in Mighty
Corporation v. E. & J. Gallo Winery, 434 SCRA 473 (2004), is authoritative. Among these are:
(a) the business (and its location) to which the goods belong;
(b) the class of product to which the goods belong;
(c) the product’s quality, quantity, or size, including the nature of the package, wrapper or container;
(d) the nature and cost of the articles;
(e) the descriptive properties, physical attributes or essential characteristics with reference to their
form, composition, texture or quality;
(f) the purpose of the goods;
(g) whether the article is bought for immediate consumption, that is, day-to-day household items;(h)
the fields of manufacture;
(i) the conditions under which the article is usually purchased; and
(j) the channels of trade through which the goods flow, how they are distributed, marketed,
displayed and sold.

As mentioned, the classification of the products under the NCL is merely part and parcel of the
factors to be considered in ascertaining whether the goods are related. It is not sufficient na both
under Class 9 in order to establish relatedness between the goods, for this only accounts for one of many
considerations enumerated in Mighty Corporation. In this case, credence is accorded to petitioner’s
assertions that:

a. Taiwan Kolin’s goods are classified as home appliances as opposed to Kolin Electronics’
goods which are power supply and audio equipment accessories;
Taiwan Kolin’s television sets and DVD players perform distinct function and purpose from Kolin
Electronics’ power supply and audio equipment; and

A certificate of trademark registration confers upon the trademark owner the exclusive right
to sue those who have adopted a similar mark not only in connection with the goods or
services specified in the certificate, but also with those that are related thereto.

THE ORDINARY BUYER IS NOT LIKELY TO BE CONFUSED.

Each case must be decided on its merits, with due regard to the goods or services involved, the usual
purchaser’s character and attitude, among others.

While both competing marks refer to the word “KOLIN” written in upper case letters and in bold
font, the Court at once notes the distinct visual and aural differences between them: Kolin Electronics’
mark is italicized and colored black while that of Taiwan Kolin is white in pantone red color
background. The differing features between the two, though they may appear minimal, are sufficient to
distinguish one brand from the other.

Not ordinary consumable household items

relatively luxury items
the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull
over his purchase. Confusion and deception, then, is less likely.
Mighty Corporation v. E & J. Gallo Winery, G.R. No. 154342, July 14, 2004

Gallo Winery is a foreign corporation not doing business in the Philippines but organized and existing
under the laws of the State of California, USA, where all its wineries are located. It produces different
kinds of wines and brandy products and sells them in many countries under different registered
trademarks, including the GALLO AND ERNEST & JULIO GALLO wine trademarks.

Andersons Group Inc. has been Gallo Winery’s exclusive wine importer and distributor in the
Philippines since 1991. Gallo Winery’s GALLO trademark was registered in the Philppine Patent Office
on Nov. 16, 1971, renewed on Nov. 16, 1991, renewable for another 20 years. It also applied for
registration of its ERNEST & JULIO GALLO wine trademark on Oct. 11,1990 but records do not disclose if
it was ever approved. On the other hand, Mighty Corp. and La Campana, and their sister company
Tobacco Industries of the Philippines are engaged in the cultivation, manufacture, distribution and sale
of tobacco products for which they have been using the GALLO cigarette trademark since 1973. The BIR
approved Tobacco Indsutries’ use of GALLO 100’s cigarette mark on Sept. 14,1973 and GALO filter.
Tobacco industries applied for but eventually did not pursue its registration with then Philippine Patent
Office. Tobacco Industries assigned to La Campana the GALLO cigarette trademark, which then on July
16, 1985, applied for trademark registration in the Philippine Patent Office. LA Campana authorized
Mighty Corp. to manufacture and sell cigarette bearing the GALLO trademark.

BIR approved Mighty Corp.’s use of GALLO 100’s cigarette brand. Petitioners claim that GALLO cigarettes
have been sold in the Philippines since 1973. Gallo Winery then filed a case before the RTC Makati for
Tradename infringement and unfair competition. They prayed for the issuance of a writ of injunction,
but was denied by the RTC and CA. LIABLE

TRADEMARK LAW SHALL GOVERN.

Respondents sued petitioners on March 12, 1993 for trademark infringement and unfair competition
committed during the effectivity of the Paris Convention and the Trademark Law.
NO TRADEMARK INFRINGEMENT AND UC
SEC. 20 Trademark Law- ONLY PRODUCT INDICATED IN THE REGISTRATION.
Products are of different description.
WINES AND CIGARRETES ARE NOT IDENTICAL AND NOT COMPETING PRODUCTS
Emphasis should be on the similarity of the products involved and not on the arbitrary classification or
general description of their properties or characteristics. But the mere fact that one person has adopted
and used a particular trademark for his goods does not prevent the adoption and use of the same
trademark by others on articles of a different description.

15. Infringement and Remedies

a.Trademark Infringement (Sec.

155)

i. Confusion of goods v. confusion of business

Relative to the question on confusion of marks and trade names,

jurisprudence has noted two (2) types of confusion, viz.: (1) confusion of goods
(product confusion), where the ordinarily prudent purchaser would be induced to
purchase one product in the belief that he was purchasing the other; and (2)
confusion of business (source or origin confusion), where, although the goods of
the parties are different, the product, the mark of which registration is applied for
by one party, is such as might reasonably be assumed to originate with the
registrant of an earlier product, and the public would then be deceived either into
that belief or into the belief that there is some connection between the two parties,
though inexistent.  (Citations omitted)
ii. Limitations to Actions for Infringement (Sec. 159)

SECTION 159. Limitations to Actions for Infringement. —

Notwithstanding any other provision of this Act, the remedies given to the
owner of a right infringed under this Act shall be limited as follows:
159.1. Notwithstanding the provisions of Section 155 hereof, a
registered mark shall have no effect against any person who, in good
faith, before the filing date or the priority date, was using the mark for the
purposes of his business or enterprise: Provided, That his right may only
be transferred or assigned together with his enterprise or business or
with that part of his enterprise or business in which the mark is used.
159.2. Where an infringer who is engaged solely in the business of
printing the mark or other infringing materials for others is an innocent
infringer, the owner of the right infringed shall be entitled as against such
infringer only to an injunction against future printing.
159.3. Where the infringement complained of is contained in or is
part of paid advertisement in a newspaper, magazine, or other similar
periodical or in an electronic communication, the remedies of the owner
of the right infringed as against the publisher or distributor of such
newspaper, magazine, or other similar periodical or electronic
communication shall be limited to an injunction against the presentation
of such advertising matter in future issues of such newspapers,
magazines, or other similar periodicals or in future transmissions of such
electronic communications. The limitations of this subparagraph shall
apply only to innocent infringers: Provided, That such injunctive relief shall
not be available to the owner of the right infringed with respect to an
issue of a newspaper, magazine, or other similar periodical or an
electronic communication containing infringing matter where restraining
the dissemination of such infringing matter in any particular issue of such
periodical or in an electronic communication would delay the delivery of
such issue or transmission of such electronic communication is
customarily conducted in accordance with the sound business practice,
and not due to any method or device adopted to evade this section or to
prevent or delay the issuance of an injunction or restraining order with
respect to such infringing matter. (n)
Shangri-La International Hotel Management, Ltd. v. Developers Group of
Companies, Inc., (2006)
1. Respondent Developers Group of Companies, Inc. (DGCI) claimed ownership of the
“Shangri-La” mark and the “S” logo in the PH on the strength of its prior use within the
PH. DGCI stressed that it filed on 18 OCT 1982 with the Bureau of Patents, Trademarks,
and Technology Transfer (BPTTT) pursuant to Section 2 and 4 of RA No. 166, as amended,
an application for registration of the subject mark and logo. On 31 MAY 1983, BPTTT
issued in favor of DGCI the certificate of registration (Registration No. 31904). DGCI
started using the subject mark and logo in its restaurant business. 

2. KUOK FAMILY is in the hotel business since 1969. As far back as 1962, it adopted the
name “Shangri-La” as part of the corporate names of all companies organized under the
aegis of the Kuok Group of Companies. It has used the name “Shangri-La” in all Shangri-La
hotels and hotel-related establishments around the world which the Kuok Family owned. 
 EDSA Shangri-La and Makati Shangri-La were incorporated in the PH in 1987 yet
they advertised their hotels abroad since 1972 in numerous business, news, travel
magazines widely circulated around the world including the PH. 
 All hotels owned, operated, managed by SLIHM adopted and used the distinctive
lettering of the name “Shangri-La” as part of their trade names.
 Shangri-La Hotel SG commissioned Singaporean design artist Mr. William Lee to
conceptualize and design the logo of Shangi-La hotels. Mr. Lee explained that the
logo is shaped like a “S” to represent the unique Asean architectural structures as
well as keep to the legendary Shangri-la theme with the mountains on top being
reflected on waters below and the connecting centre line serving as the horizon; the
logo is a bold, striking definitive design, embodies both modernity and
sophistication in balance and thought. 
 From 1975 and up to the present, the subject mark and logo have been used
consistently and continuously by all Shangri-La hotels and companies in their
paraphernalia. 
- Registetered on different countries around the world.

On 21 JUNE 1988, petitioners filed prayed for the cancellation of the registration of the
subject mark and logo issued to the respondent on the ground that the same were
illegally and fraudulently obtained and appropriated for the respondent’s business.
Petitioners also filed [2] Inter Partes Case No. 3529 which prayed for the registration of
the same mark and logo in their own names

Respondent filed an Infringement case against petitioners  

it has been the prior exclusive user in the PH of the subject mark and logo

Petitioners : respondent of appropriating and illegally using the subject mark and logo.
 they have used the internationally-known and specially designed subject mark
and logo for all the hotels in their hotel chain since late 1975.

RTC rendered judgement in favor of respondent and against the petitioner. It ruled that
petitioners’ use of the subject mark and logo constitutes an infringement of DGCI’s right. 
CA affirmed.

RULING: PRIOR USE OF MARK IS REQUIREMENT FOR THE REGISTRATION acc. To trademark law.
(governing at the time of the respondent’s application)

Must have been used in commerce and service for not less than two months prior to the application for
registration.

The certificate of registration is merely a prima facie proof that the registrant is the owner of the
registered mark or trade name; 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.
Ownership of a mark or trade name may be acquired not necessarily by registration but by adoption
and use in trade or commerce. As between actual use of a mark without registration, and registration of
the mark without actual use thereof, the former prevails over the latter. For 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 pre-requisite to the acquisition of the right of ownership.

Prosource International, Inc. v. Horphag Research Management (2009)

Respondent Horphag Research Management SA is a corporation duly organized and existing under
the laws of Switzerland and the owner of trademark PYCNOGENOL, a food supplement sold and
distributed by Zuellig Pharma Corporation. Respondent later discovered that petitioner Prosource
International, Inc. was also distributing a similar food supplement using the mark PCO-GENOLS
since 1996. This prompted respondent to DEMAND THAT PETITIONER CEASE AND DESIST from
using the aforesaid mark.

Without notifying respondent, petitioner discontinued the use of, and withdrew from the
market, the products under the name PCO-GENOLS as of June 19, 2000. It, likewise, changed its
mark from PCO-GENOLS to PCO-PLUS.

On August 22, 2000, RESPONDENT FILED A COMPLAINT FOR INFRINGEMENT OF TRADEMARK

with Prayer for Preliminary Injunction against petitioner, praying that the latter cease and desist
from using the brand PCO-GENOLS for being confusingly similar with respondent's trademark
PYCNOGENOL. It, likewise, prayed for actual and nominal damages, as well as attorney's fees

RTC ruled that there is infringement. Used same suffix which is “GENOL”- merely descriptive. Thus open
for registration. SOUND SIMILAR

RULING: THERE IS CONFUSING SIMILARITY on the marks.

SC applied the Dominancy Test. Both the words have the same suffix "GENOL" which on evidence,
appears to be merely descriptive and furnish no indication of the origin of the article and hence, open
for trademark registration by the plaintiff through combination with another word or phrase. When the
two words are pronounced, the sound effects are confusingly similar not to mention that they are both
described by their manufacturers as a food supplement and thus, identified as such by their public
consumers. And although there were dissimilarities in the trademark due to the type of letters used as
well as the size, color and design employed on their individual packages/bottles, still the close
relationship of the competing products‘ name in sounds as they were pronounced MISLED INTO
BELIEVING THAT THEY ARE THE SAME AND/OR ORIGINATES FROM A COMMON SOURCE AND
MANUFACTURER.

Coffee Partners, Inc. v. San Francisco Coffee & Roastery, Inc. (2010)

● Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing and
maintaining coffee shops in the country. It registered with the Securities and Exchange
Commission (SEC) in January 2001. It has a franchise agreement with Coffee Partners Ltd. (CPL),
a business entity organized and existing under the laws of British Virgin Islands, for a non-
exclusive right to operate coffee shops in the Philippines using trademarks designed by CPL such
as “SAN FRANCISCO COFFEE.”
● Respondent is a local corporation engaged in the wholesale and retail sale of coffee. It registered
with the SEC in May 1995. It registered the business name “SAN FRANCISCO COFFEE &
ROASTERY, INC.” with the Department of Trade and Industry (DTI) in June 1995. Respondent
had since built a customer base that included Figaro Company, Tagaytay Highlands, Fat Willy’s,
and other coffee companies.
● In 1998, respondent formed a joint venture company with Boyd Coffee USA under the company
name Boyd Coffee Company Philippines, Inc. (BCCPI). BCCPI engaged in the processing,
roasting, and wholesale selling of coffee. Respondent later embarked on a project study of
setting up coffee carts in malls and other commercial establishments in Metro Manila.
● In June 2001, respondent discovered that petitioner was about to open a coffee shop under the
name “SAN FRANCISCO COFFEE” in Libis, Quezon City. According to respondent, petitioner’s
shop caused confusion in the minds of the public as it bore a similar name and it also engaged in
the business of selling coffee.
● Respondent sent a letter to petitioner demanding that the latter stop using the name “SAN
FRANCISCO COFFEE.”
● Respondent also filed a complaint with the Bureau of Legal Affairs-Intellectual Property Office
(BLA-IPO) for infringement and/or unfair competition with claims for damages.
● In its answer, petitioner denied the allegations in the complaint. Petitioner alleged it filed with the
Intellectual Property Office (IPO) applications for registration of the mark “SAN FRANCISCO
COFFEE & DEVICE” for class 42 in 1999 and for class 35 in 2000. Petitioner maintained its mark
could not be confused with respondent’s trade name because of the notable distinctions in their
appearances.
● Petitioner argued respondent stopped operating under the trade name “SAN FRANCISCO
COFFEE” when it formed a joint venture with Boyd Coffee USA.
● Petitioner contended respondent did not cite any specific acts that would lead one to believe
petitioner had, through fraudulent means, passed off its mark as that of respondent, or that it
had diverted business away from respondent.
Whether or not petitioner’s use of the trademark “SAN FRANCISCO COFFEE” constitutes infringement of
respondent’s trade name “SAN FRANCISCO COFFEE & ROASTERY, INC.,” even if the trade name is not
registered with the Intellectual Property Office (IPO)? - Yes

Clearly, a trade name need not be registered with the IPO before an infringement suit may be filed by its
owner against the owner of an infringing trademark. All that is required is that the trade name is
previously used in trade or commerce in the Philippines. Section 22 of Republic Act No. 166,12 as
amended, required registration of a trade name as a condition for the institution of an infringement suit.
However, RA 8293, which took effect on 1 January 1998, has dispensed with the registration
requirement. Section 165.2 of RA 8293 categorically states that trade names shall be protected, even
prior to or without registration with the IPO, against any unlawful act including any subsequent use of
the trade name by a third party, whether as a trade name or a trademark likely to mislead the public.

Applying either the dominancy test or the holistic test, petitioner’s “SAN FRANCISCO COFFEE” trademark
is a clear infringement of respondent’s “SAN FRANCISCO COFFEE & ROASTERY, INC.” trade name. The
descriptive words “SAN FRANCISCO COFFEE” are precisely the dominant features of respondent’s trade
name. Petitioner and respondent are engaged in the same business of selling coffee, whether wholesale
or retail. The likelihood of confusion is higher in cases where the business of one corporation is the same
or substantially the same as that of another corporation. In this case, the consuming public will likely be
confused as to the source of the coffee being sold at petitioner’s coffee shops. Petitioner’s argument that
“San Francisco” is just a proper name referring to the famous city in California and that “coffee” is simply
a generic term, is untenable. Respondent has acquired an exclusive right to the use of the trade name
“SAN FRANCISCO COFFEE & ROASTERY, INC.” since the registration of the business name with the DTI
in 1995. Thus, respondent’s use of its trade name from then on must be free from any infringement by
similarity. Of course, this does not mean that respondent has exclusive use of the geographic word “San
Francisco” or the generic word “coffee.” Geographic or generic words are not, per se, subject to exclusive
appropriation. It is only the combination of the words “SAN FRANCISCO COFFEE,” which is respondent’s
trade name in its coffee business, that is protected against infringement on matters related to the coffee
business to avoid confusing or deceiving the public.

Ong v. People, G.R. no. 169440 (2011)

On July 28, 2000, petitioner Gemma Ong a.k.a. Maria Teresa Gemma Catacutan (Gemma) was
charged before the RTC for Infringement under Section 155 in relation to Section 170 of
Republic Act No. 8293 or the Intellectual Property Code. The accusatory portion of the Information
reads: 

knowingly, maliciously, unlawfully and feloniously engage in the distribution, sale, [and]
offering for sale of counterfeit Marlboro cigarettes which had caused confusion, deceiving the
public that such cigarettes [were] Marlboro cigarettes

Warrant was issued. FOUND SEVERAL BOXES containing Marlboro cigarettes.

RULING: GEMMA IS GUILTY OF TRADEMARK INFRINGEMENT

Both the RTC and the Court of Appeals have correctly held that the counterfeit cigarettes seized
from Gemma’s possession were intended to confuse and deceive the public as to the origin of the
cigarettes intended to be sold, as they not only bore PMPI’s mark, but they were also packaged
almost exactly as PMPI’s products 
In McDonald’s Corporation and McGeorge Food Industries, Inc. v. L.C. Big Mak Burger, Inc., 437 SCRA 10
(2004), this Court held: To establish trademark infringement, the following elements must be shown: (1) the
validity of plaintiff’s mark; (2) the plaintiff’s ownership of the mark; and (3) the use of the mark or its
colorable imitation by the alleged infringer results in “likelihood of confusion.” Of these, it is the element of
likelihood of confusion that is the gravamen of trademark infringement.

IDENTITY. easy to fabricate and difficult to prove

Republic Gas Corporation v. Petron Corporation (2013)

Emzee Foods, Inc. v. Elarfoods, Inc., (2021)
DOCTRINE:

In fine, petitioner's use of marks similar to those of the respondent's constitutes a

violation of the latter's intellectual property rights. It is high time for petitioner to desist from
conveniently latching on to the good will and reputation built by the respondent over the years. To
fully protect the respondent's rights, it is imperative to order the petitioner to cease and desist
from using the former's marks. This remedy is recognized under Section 156.4  of the IP Code,
which grants the complainant the right to demand an injunction, upon proper showing of its
entitlement thereto. A similar redress was granted in the case of Asia Pacific Resources International
Holdings, Ltd. v. Paperone, Inc.,  where the Court affirmed the orders of the BLA and the IPO
Director General commanding the party guilty of unfair competition to cease and desist from using
the complainant's marks. 

FACTS:

Sometime in 1970, spouses Jose and Leonor Lontoc (spouses Lontoc) established a
business of selling Filipino food and roasted pigs, which they marketed under the name "ELARS
Lechon."  Desiring to leave a legacy, in 1989, the spouses Lontoc incorporated their food business.
Thus, on May 19, 1989, Elarfoods, Inc. (respondent) was granted a Certificate of Registration by
the Securities and Exchange Commission (SEC).  Since then, the spouses Lontoc actively managed
the respondent corporation. Over the years, respondent used Elarfoods, Inc. as its business name
and marketed its products, particularly, its roasted pigs as "ELAR'S LECHON ON A BAMBOO TRAY."
Eventually, it rose to notoriety as the "ELAR'S LECHON'' brand.  However, without respondent's
knowledge and permission, petitioner sold and distributed roasted pigs using the marks "ELARZ
LECHON," "ELAR LECHON," "PIG DEVICE" and "ON A BAMBOO TRAY," thereby making it appear
that petitioner was a branch or franchisee of the respondent.
On September 25, 2001, respondent filed with the IPO an application for registration of the
trademark "ELARS LECHON." Thereafter, on October 1, 2001, respondent filed two more
applications for the marks "ON A BAMBOO TRAY" and "ROASTED PIG DEVICE" (collectively, subject
marks).  The mark "ROASTED PIG DEVICE" is a design or representation of a roasted pig on a bamboo
stick placed on top of a bamboo tray. 
On October 2, 2001, respondent sent the petitioner a Cease and Desist Letter  urging the
latter to stop using the subject marks or any variations thereof. However, petitioner ignored the
demand and continued selling its roasted pigs under the marks "ELARZLECHON," "ELAR LECHON,"
"PIG DEVICE," and "ON A BAMBOO TRAY," thereby causing confusion as to the source and origin of
the products. 
Thereafter, respondent filed three separate complaints  for unfair competition and
violation of intellectual property rights against petitioner for the latter's use of the former's
trademarks "ELARS LECHON," "ROASTED PIG DEVICE," and "ON A BAMBOO TRAY." Respondent
claimed that petitioner unfairly rode on its fame, goodwill and reputation, causing its sales and
profits to be diverted to petitioner. 
 On November 12, 2001, the Bureau of Legal Affairs (BLA) of the IPO ordered the
consolidation of the cases. 
Petitioner filed an Answer, where it countered that the respondent is not the owner of the
subject marks. Rather, respondent is a mere alter ego or business conduit of the spouses Lontoc
who have proprietary rights over the marks. Petitioner related that the mark "Elar" stands for "L.R.,"
which are the initials of the spouses Lontoc-Rodriguez's family names. In fact, since 1967, the
spouses Lontoc have used "Elar" for their other corporations, such as Elar Development (ELARDEV)
for their livestock business; Casa Elar Incorporated (CASA ELAR) for their restaurant business; and
Elar Foods (Elarfoods) for their meat business. Petitioner further narrated that Jose Lontoc (Jose)
himself designed the logo which became the symbol and mark of "ELARS LECHON." The phrase "ON
A BAMBOO TRAY'' was loosely used by Jose and through word of mouth, became associated with
"ELARS LECHON."
On August 8, 2005, BLA Director Estrelita Beltran-Abelardo (Beltran-Abelardo) dismissed
the complaint. She ruled that the spouses Lontoc are the owners of the subject marks by prior
commercial use.
Ruling of the IPO Director General
Reversed the BLA. He stated that there was no need for a written assignment of the subject
trademarks because the spouses Lontoc themselves, in their desire to leave a legacy, incorporated
and registered respondent with the SEC. As a result, all rights and interests of the spouses Lontoc,
including the subject trademarks were transferred to respondent. In fact, the spouses Lontoc
actively managed respondent and represented to the public that they were its owners. Even
petitioner admitted that respondent is an alter ego of the spouses Lontoc, implying that the rights
and interests of respondent are identical and inseparable from those of the spouses Lontoc.
Ruling of the CA
CA affirmed the ruling of IPO .CA held petitioner liable for unfair competition. It explained
that petitioner's use of the marks "ELARZLECHON," "ELAR LECHON," "PIG DEVICE" and "ON A
BAMBOO TRAY" on its packaging materials and signages has clothed its goods with the general
appearance of respondent's products.  Worse, petitioner did not issue a notice to the buying public
that "ELARZ LECHON'' is not respondent's product. Hence, petitioner's intent to deceive the public is
clear. 

ISSUE:
1. Whether or not Petitioner is liable for unfair competition.
2. Whether or not a cease and desist should be ordered in the name of petitioner.

RULING:
1. YES. Petitioner is liable for unfair competition

For the Court to properly determine liability for damages, it must first resolve the issue of
ownership of the subject marks.
 It cannot be gainsaid that respondent corporation is a creation of the spouses Lontoc
themselves. In 1989, the spouses Lontoc wanted to leave their legacy, and thus incorporated the
respondent to ensure the continuation of their lechon and food business. From that moment, the
spouses Lontoc transferred to the respondent the ownership of ELARS Lechon and the subject
marks in connection with the sale of its roasted pigs and other products.  Moreover, all throughout
their lives, the spouses Lontoc actively managed respondent and consistently used the subject
trademarks in promoting the latter's goods. Certainly, the spouses Lontoc's overt acts of
incorporating respondent, actively managing it, and consistently representing to the public that
ELARS Lechon is operating under the respondent, conclusively prove that indeed the "ELARS
LECHON" brand has been transferred to, and is owned by respondent. As such, the respondent has
the exclusive right to use the name ELARS LECHON to the exclusion of all other parties, including the
descendants of the spouses Lontoc. 
In fact, Jose, as then President and General Manager of respondent, eagerly promoted Elar's
Lechon as the respondent's business.  This was established through Jose's Letter dated October 7,
1996 under respondent's letterhead, where he declared that "we are one of the biggest lechon
producers in the country under our brand name — "ELAR LECHON on a BAMBOO TRAY." Similarly,
respondent's prior adoption and continuous use of the subject trademarks since 1990 are bolstered
by documents consisting of various commercial sales invoices from November 1990 to February
1995.  In addition, respondent invested time and money in promoting and advertising its food
products and roasted pigs "ELARS LECHON ON A BAMBOO TRAY" or popularly known by the public
as "Elar's Lechon."  Certainly, these cumulative acts that have been done for decades have resulted
in respondent's notoriety to the public as the source of roasted pigs bearing the subject
trademarks. 
On this score, the Court finds that petitioner's use of the marks "ELARZ LECHON" "ELAR
LECHON," "PIG DEVICE," and "ON A BAMBOO TRAY," which are substantially identical to the
respondents' marks, constitute unfair competition.
The IP Code defines unfair competition as:
Section 168. Unfair Competition, Rights, Regulation and Remedies. —
xxx xxx xxx
168.2. Any person who shall employ deception or any other means contrary to good
faith by which he shall pass off the goods manufactured by him or in which he deals,
or his business, or services for those of the one having established such goodwill, or
who shall commit any acts calculated to produce said result, shall be guilty of unfair
competition, and shall be subject to an action therefor.
168.3. In particular, and without in any way limiting the scope of protection against
unfair competition, the following shall be deemed guilty of unfair competition:
(a) Any person, who is selling his goods and gives them the general appearance of
goods of another manufacturer or dealer, either as to the goods themselves or in
the wrapping of the packages in which they are contained, or the devices or words
thereon, or in any other feature of their appearance, which would be likely to
influence purchasers to believe that the goods offered are those of a manufacturer
or dealer, other than the actual manufacturer or dealer, or who otherwise clothes
the goods with such appearance as shall deceive the public and defraud another of
 his legitimate trade, or any subsequent vendor of such goods or any agent of any
vendor engaged in selling such goods with a like purpose;
(b) Any person who by any artifice, or device, or who employs any other means
calculated to induce the false belief that such person is offering the services of
another who has identified such services in the mind of the public; or
xxx xxx xxx
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis
mutandis. (Sec. 29, R.A. No. 166a)
Applying the dominancy test to the case at bar, it is very obvious that the petitioner's
marks "ELARZ LECHON'' and "ELAR LECHON'' bear an indubitable likeness with respondent's
"ELARS LECHON." As can easily be seen, both marks use the essential and dominant word "ELAR."
The only difference between the petitioner's mark from that of respondent's are the last letters Z
and S, respectively. However, the letters Z and S sound similar when pronounced. Thus, both marks
are not only visually similar, but are phonetically and aurally similar as well. To top it all off, both
marks are used in selling lechon products. Verily, there exists a high likelihood that the consumers
may conclude an association or relation between the products. Likewise, the uncanny resemblance
between the marks may even lead purchasers to believe that the petitioner and respondent are the
same entity.
2. YES. Cease and desist order should be issued to the petitioner.
In fine, petitioner's use of marks similar to those of the respondent's constitutes a
violation of the latter's intellectual property rights. It is high time for petitioner to desist from
conveniently latching on to the good will and reputation built by the respondent over the years. To
fully protect the respondent's rights, it is imperative to order the petitioner to cease and desist
from using the former's marks. This remedy is recognized under Section 156.4  of the IP Code,
which grants the complainant the right to demand an injunction, upon proper showing of its
entitlement thereto. A similar redress was granted in the case of Asia Pacific Resources International
Holdings, Ltd. v. Paperone, Inc.,  where the Court affirmed the orders of the BLA and the IPO
Director General commanding the party guilty of unfair competition to cease and desist from using
the complainant's marks. 
Unfortunately, despite the IPO Director General's finding that the petitioner is liable for
unfair competition, and thus, "should have been subject to injunction,"  it failed to categorically
order the latter to cease and desist from using the respondent's marks. Similarly, the CA affirmed
the petitioner's culpability for unfair competition, yet failed to issue an order directing the latter to
refrain from using the subject marks. Hence, to afford the respondent full relief, an injunction must
be issued against the petitioner.
Emzee Foods, Inc. is hereby ORDERED to CEASE and DESIST from using "ELARZ LECHON,"
"ELAR LECHON," "PIG DEVICE," and "ON A BAMBOO TRAY" on its products.

NOTES: (if applicable)

Notably, a mark pertains to "any visible sign capable of distinguishing the goods (trademark)
or services (service mark) of an enterprise and shall include a stamped or marked container of
goods."  Particularly, 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 by others."  A trademark is an
intellectual property that deserves protection under the law. 
On this score, the Intellectual Property Code (IP Code) states how a mark is obtained and,
correlatively, enumerates the rights of a trademark owner:
Section 122. How Marks are Acquired. — The rights in a mark shall be acquired
through registration made validly in accordance with the provisions of this law.
xxx xxx xxx
Section 147. Rights Conferred. — 147.1. The owner of a registered mark shall have
the exclusive right to prevent all third parties not having the owner's consent from
using in the course of trade identical or similar signs or containers for goods or
services which are identical or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of confusion. In case of the
use of an identical sign for identical goods or services, a likelihood of confusion shall
be presumed.
xxx xxx xxx
Section 168. Unfair Competition, Rights, Regulation and Remedies. — 168.1. A
person who has identified in the mind of the public the goods he manufactures or
deals in, his business or services from those of others, whether or not a registered
mark is employed, has a property right in the goodwill of the said goods, business or
services so identified, which will be protected in the same manner as other property
rights. 

Remarkably, in UFC Philippines, Inc. v. Barrio Fiesta Manufacturing Corporation,  the Court

enumerated the kinds of confusion caused by similar marks, and the tests that aid in determining
the likelihood of confusion:
There are two tests used in jurisprudence to determine likelihood of
confusion, namely the dominancy test used by the IPO, and the holistic test
adopted by the Court of Appeals. In Skechers, U.S.A., Inc. v. Inter Pacific Industrial
Trading Corp., we held:
The essential element of infringement under R.A. No. 8293 is that the
infringing mark is likely to cause confusion. In determining similarity and likelihood
of confusion, jurisprudence has developed tests — the Dominancy Test and the
Holistic or Totality Test. The Dominancy Test focuses on the similarity of the
prevalent or dominant features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the purchasing public.
Duplication or imitation is not necessary; neither is it required that the mark sought
to be registered suggests an effort to imitate. Given more consideration are the
aural and visual impressions created by the marks on the buyers of goods, giving
little weight to factors like prices, quality, sales outlets, and market segments.
xxx xxx xxx
 Relative to the question on confusion of marks and trade names,
jurisprudence has noted two (2) types of confusion, viz.: (1) confusion of goods
(product confusion), where the ordinarily prudent purchaser would be induced to
purchase one product in the belief that he was purchasing the other; and (2)
confusion of business (source or origin confusion), where, although the goods of the
parties are different, the product, the mark of which registration is applied for by
one party, is such as might reasonably be assumed to originate with the registrant of
an earlier product, and the public would then be deceived either into that belief or
into the belief that there is some connection between the two parties, though
inexistent.  (Citations omitted)

b.Damages (Secs. 156- 158, 179)

SECTION 156. Actions,  and Damages and Injunction for Infringement. — 156.1. The
owner of a registered mark may recover damages from any person who infringes his
rights, and the measure of the damages suffered shall be either the reasonable profit
which the complaining party would have made, had the defendant not infringed his
rights, or the profit which the defendant actually made out of the infringement, or in
the event such measure of damages cannot be readily ascertained with reasonable
certainty, then the court may award as damages a reasonable percentage based upon
the amount of gross sales of the defendant or the value of the services in connection
with which the mark or trade name was used in the infringement of the rights of the
complaining party. (Sec. 23, first par., R.A. No. 166a)
156.2. On application of the complainant, the court may impound during the
pendency of the action, sales invoices and other documents evidencing sales. (n)
156.3. In cases where actual intent to mislead the public or to defraud the
complainant is shown, in the discretion of the court, the damages may be doubled.
(Sec. 23, first par., R.A. No. 166)
156.4. The complainant, upon proper showing, may also be granted injunction.
(Sec. 23, second par., R.A. No. 166a)
SECTION 157. Power of Court to Order Infringing Material Destroyed. — 157.1 In
any action arising under this Act, in which a violation of any right of the owner of the
registered mark is established, the court may order that goods found to be infringing
be, without compensation of any sort, disposed of outside the channels of commerce in
such a manner as to avoid any harm caused to the right holder, or destroyed; and all
labels, signs, prints, packages, wrappers, receptacles and advertisements in the
possession of the defendant, bearing the registered mark or trade name or any
reproduction, counterfeit, copy or colorable imitation thereof, all plates, molds,
matrices and other means of making the same, shall be delivered up and destroyed.
 157.2.In regard to counterfeit goods, the simple removal of the trademark
affixed shall not be sufficient other than in exceptional cases which shall be determined
by the Regulations, to permit the release of the goods into the channels of commerce.
(Sec. 24, R.A. No. 166a)
SECTION 158. Damages;  Requirement of Notice. — In any suit for infringement,
the owner of the registered mark shall not be entitled to recover profits or damages
unless the acts have been committed with knowledge that such imitation is likely to
cause confusion, or to cause mistake, or to deceive. Such knowledge is presumed if the
registrant gives notice that his mark is registered by displaying with the mark the words
'"Registered Mark" or the letter R within a circle or if the defendant had otherwise
actual notice of the registration. (Sec. 21, R.A. No. 166a)
i. Civil(156-157)

SECTION 156. Actions,  and Damages and Injunction for Infringement. —

156.1. The owner of a registered mark may recover damages from any person
who infringes his rights, and the measure of the damages suffered shall be
either the reasonable profit which the complaining party would have made, had
the defendant not infringed his rights, or the profit which the defendant actually
made out of the infringement, or in the event such measure of damages cannot
be readily ascertained with reasonable certainty, then the court may award as
damages a reasonable percentage based upon the amount of gross sales of the
defendant or the value of the services in connection with which the mark or
trade name was used in the infringement of the rights of the complaining party.
(Sec. 23, first par., R.A. No. 166a)
156.2. On application of the complainant, the court may impound during
the pendency of the action, sales invoices and other documents evidencing
sales. (n)
156.3. In cases where actual intent to mislead the public or to defraud the
complainant is shown, in the discretion of the court, the damages may be
doubled. (Sec. 23, first par., R.A. No. 166)
156.4. The complainant, upon proper showing, may also be granted
injunction. (Sec. 23, second par., R.A. No. 166a)
SECTION 157. Power of Court to Order Infringing Material Destroyed. —
157.1 In any action arising under this Act, in which a violation of any right of the
owner of the registered mark is established, the court may order that goods
found to be infringing be, without compensation of any sort, disposed of outside
 the channels of commerce in such a manner as to avoid any harm caused to the
right holder, or destroyed; and all labels, signs, prints, packages, wrappers,
receptacles and advertisements in the possession of the defendant, bearing the
registered mark or trade name or any reproduction, counterfeit, copy or
colorable imitation thereof, all plates, molds, matrices and other means of
making the same, shall be delivered up and destroyed.
157.2.In regard to counterfeit goods, the simple removal of the trademark
affixed shall not be sufficient other than in exceptional cases which shall be
determined by the Regulations, to permit the release of the goods into the
channels of commerce. (Sec. 24, R.A. No. 166a)

ii. Criminal Infringement (sec 170 and art. 189 RPC)

SECTION 170. Penalties. — Independent of the civil and
administrative sanctions imposed by law, a criminal penalty of
imprisonment from two (2) years to five (5) years and a fine
ranging from Fifty thousand pesos (P50,000) to Two hundred
thousand pesos (P200,000), shall be imposed on any person
who is found guilty of committing any of the acts mentioned
in Section 155, Section 168 and Subsection 169.1.
Unfair competition, fraudulent registration of trademark, tradename or service mark,
fraudulent designation of origin, and false description

ii. Action for False or Fraudulent Declaration (Sec. 162)

c.Jurisdiction (Secs. 10.2 and 163