Mirpuri v. CA (G.R. No.

 114508)
Facts: Moreover, the cancellation of petitioner’s
certificate registration for failure to file the affidavit of
use arose after IPC 686. This gave respondent another
Lolita Escobar applied for the registration of the
cause to oppose the second application.
trademark ‘Barbizon’ for her products such as brassieres
and ladies undergarments. Respondent Barbizon
It is also to be noted that the oppositions in the first and
Corporation, an American corporation, opposed alleging
second cases are based on different laws. Causes of
that petitioner’s mark is confusingly similar to its own
action which are distinct and independent from each
trademark ‘Barbizon.’ Escobar’s application was given
other, although out of the same contract, transaction,
due course and her trademark was registered. Later,
or state of facts, may be sued on separately, recovery
Escobar assigned all her rights to petitioner Mirpuri who
on one being no bar to subsequent actions on others.
failed to file an Affidavit of Use resulting in the
The mere fact that the same relief is sought in the
cancellation of the trademark. Petitioner then applied
subsequent action will not render the judgment in the
for registration of the trademark to which respondent
prior action operating as res judicata, such as where the
Barbizon again opposed, now invoking the protection
actions are based on different statutes.
under Article 6bis of the Paris Convention. This time it
alleged (1) that the said trademark was registered with
the US Patent Office; (2) that it is entitled to protection Issue:
as well-known mark under Article 6 bis of the Paris
Convention, EO 913 and the two Memoranda of the Whether or not respondent may invoke the protection
Minister of Trade and Industry and (3) that its use on under Article 6bis of the Paris Convention.
the same class of goods amounts to a violation of the
Trademark Law and Art. 189 of the RPC. The Director of
Ruling: YES.
Patents declaring respondent’s opposition was already
barred, petitioner’s application was given due course.
CA reversed the judgment. etitioner raised the defense The Convention of Paris for the Protection of Industrial
of Res Judicata. Property, otherwise known as the Paris Convention, is a
multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial
Issue: One of the requisites of res judicata is identical designs, trademarks, service marks, trade names and
causes of action. Do IPC No. 686 and IPC No. 2049 indications of source or appellations of origin, and at
involve the same cause of action? the same time aims to repress unfair competition. The
Convention is essentially a compact among various
countries which, as members of the Union, have
Held: No. The issue of ownership of the trademark was pledged to accord to citizens of the other member
not raised in IPC 686. IPC 2049 raised the issue of countries trademark and other rights comparable to
ownership, the first registration and use of the those accorded their own citizens by their domestic
trademark in the US and other countries, and the laws for an effective protection against unfair
international recognition of the trademark established competition. Art. 6bis is a self-executing provision and
by extensive use and advertisement of respondents does not require legislative enactment to give it effect
products for over 40 years here and abroad. These are in the member country. It may be applied directly by
different from the issues of confessing similarity and the tribunals and officials of each member country by
damage in IPC 686. The issue of prior use may have the mere publication or proclamation of the
been raised in IPC 686 but this claim was limited to prior Convention, after its ratification according to the public
use in the Philippines only. Prior use in IPC 2049 stems law of each state and the order for its execution.
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.
Coffee Partners v. San Francisco Coffee & Roastery
(G.R. No.  169504)
Facts:
Petitioner Coffee Partners entered into a franchise
agreement with Coffee Partners Ltd. to operate coffee
shops in the country using the trademark ‘San Francisco
Coffee.’ Respondent on the other hand, is a local
corporation engaged in the wholesale and retail sale of
coffee and uses the business name ‘San Francisco
Coffee & Roastery’ registered with the DTI. Later,
respondent filed an infringement and/or unfair
competition complaint against petitioner alleging that
the latter was about to open a coffee shop under the
name ‘San Francisco Coffee’ causing confusion in the
minds of the public as it bore a similar name and is
engaged also in selling of coffee. Petitioner contended
no infringement would arise because respondent’s
tradename was not registered.
Ruling of the Office of the Director General-
Intellectual Property Office
In its 22 October 2003 Decision, the ODG-IPO reversed
the BLA-IPO. It ruled that petitioner’s use of the
trademark "SAN FRANCISCO COFFEE" did not infringe
on respondent's trade name. The ODG-IPO found that
respondent had stopped using its trade name after it
entered into a joint venture with Boyd Coffee USA in
1998 while petitioner continuously used the trademark
since June 2001 when it opened its first coffee shop in
Libis, Quezon City. It ruled that between a subsequent
user of a trade name in good faith and a prior user who
had stopped using such trade name, it would be
inequitable to rule in favor of the latter.
The Ruling of the Court of Appeals
In its 15 June 2005 Decision, the Court of Appeals set
aside the 22 October 2003 decision of the ODG-IPO in
so far as it ruled that there was no infringement. It
reinstated the 14 August 2002 decision of the BLA-IPO
finding infringement. The appellate court denied
respondent’s claim for actual damages and retained the
award of attorney’s fees. In its 1 September 2005
Resolution, the Court of Appeals denied petitioner’s
motion for reconsideration and respondent’s motion for
partial reconsideration.
Issue:
Whether or not petitioner’s trademark would infringe
respondent’s tradename.
Ruling: YES.
In Prosource International, Inc. v. Horphag Research
Management SA, this Court laid down what constitutes
infringement of an unregistered trade name, thus:
(1) The trademark being infringed is registered in the
Intellectual Property Office; however, in infringement of
trade name, the same need not be registered;
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(2) The trademark or trade name is reproduced,
counterfeited, copied, or colorably imitated by the
infringer;
(3) The infringing mark or trade name is used in
connection with the sale, offering for sale, or advertising
of any goods, business or services; or the infringing
mark or trade name is applied to labels, signs, prints,
packages, wrappers, receptacles, or advertisements
intended to be used upon or in connection with such
goods, business, or services;
(4) The use or application of the infringing mark or trade
name is likely to cause confusion or mistake or to
deceive purchasers or others as to the goods or
services themselves or as to the source or origin of
such goods or services or the identity of such business;
and
(5) It is without the consent of the trademark or trade
name owner or the assignee thereof.
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.
It is the likelihood of confusion that is the gravamen of
infringement. Applying 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.
Zuneca pharmaceutical v. Natrapharm
Landmark Decision: Ownership of Trademarks may be
Acquired through Good Faith Use
On 08 September 2020, the Supreme Court of the
Philippines (“Supreme Court”) promulgated its decision
in the case of Zuneca Pharmaceutical v. Natrapharm
Inc. (“Decision”) which clarified that ownership over a
trademark may also be acquired through prior use in
good faith versus registration[1]. This ruling is of stark
difference from the previous rulings of the Supreme
Court where the first person or entity to register a
trademark defeats the right of the first person or entity
to use the trademark in good faith.
Facts
The case involves a dispute between the use and
ownership of the confusingly similar marks “ZYNAPS”
and “ZYNAPSE”.
Zuneca Pharmaceutical (“Zuneca”) has been engaged in
the sale of “ZYNAPS”, an anti-convulsant used to control
all types of seizure disorders like epilepsy [2] as early as
2004. Natrapharm, Inc. (“Natrapharm”), on the other
hand, has also been engaged in the sale of “ZYNAPSE”
for the treatment of cerebrovascular disease or stroke [3],
and is the registrant of the “ZYNAPSE” mark which was
registered with the Intellectual Property Office of the
Philippines (“IPO”) on 24 September 2007.[4]
On 29 November 2007, Natrapharm filed a Trademark
Infringement case against Zuneca, alleging that
“ZYNAPS” is confusingly similar to its registered
trademark “ZYNAPSE”. While Zuneca argued that as the
first entity to use the mark in good faith, it was the
rightful owner of the mark “ZYNAPS”.
Ruling on How Trademark Ownership is Acquired
The Supreme Court held that the language of the
Intellectual Property Code of the Philippines (“IP Code”)
clearly provides that ownership of a mark is acquired
through registration. Furthermore, the Supreme Court
stated that the intention of the lawmakers was to
abandon the rule that ownership of a mark is acquired
through prior use, and that the rule on ownership used
in Berris Agricultural Co., Inc. v. Abyadang (“Berris”)
[5]and  E. Y. Industrial Sales, Inc. et al. v. Shen Dar
Electricity and Machinery Co., Ltd. (“E. Y Industrial Sales,
Inc.”)[6] is inconsistent with the IP Code regime of
acquiring ownership through registration.
Language of the IP Code
Section 122 of the IP Code provides how marks are
acquired:
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.
(Sec. 2-A, R.A. No. 166a) (Emphasis and underscoring
supplied)[7]
The language of the IP Code as to the acquisition of
ownership of a mark provides for a stark contrast with
that of the old Trademark Law, which provided that
prior use and non-abandonment of a mark banned
future registration of an identical or confusingly similar
mark by a different proprietor. Such a change effectively
connotes that prior use no longer determines
acquisition.[8]
While doubts have been expressed by Associate Justices
Leonen and Lazaro-Javier over the supposed
abandonment of the requirement of actual use, the
Supreme Court clarified that the filing of the Declaration
of Actual Use (“DAU”) is not a prerequisite for the
acquisition of ownership of a mark as it is only
necessary to maintain ownership over the registered
Trademark. On the other hand, the prima facie nature
of the Certificate of Registration (“COR”) is only meant
to recognize the instances when the COR is no longer
reflective of the ownership of the holder thereof, such
as, but not limited to, cases when the first registrant
subsequently lost its ownership due to non-use or
abandonment.[9]
Rule on Ownership – Berris and E. Y. Industrial Sales,
Inc.
Zuneca erred in using the cases of Berris and E. Y
Industrial Sales, Inc. as bases for its arguments.
The ruling in Berris was based on the fact that Berris,
Inc. was the first to file the application and register the
mark under the IP Code. The fact of prior use was only
mistakenly given undue weight.[10]
On the other hand, the earliest dates of use by both
parties in E. Y Industrial Sales, Inc.wereduring the
effectivity of the old Trademark Law, as amended. E.Y.
Industrial Sales, Inc. had applied and registered the
mark under the IP Code, while Shen Dar Electricity and
Machinery Co. Ltd. had applied for the mark under the
old Trademark Law.
Thus, both Berris and E. Y Industrial Sales, Inc. cannot be
applied in cases where the marks of both parties are
used and/or registered under the IP Code.
Bad Faith in Trademark Registration and Use
Zuneca likewise claims that Natrapharm was in bad faith
when they registered its mark with the IPO. In cases of
registration of a mark by means of fraud or bad faith, a
party may pray for its cancellation at any time by filing a
petition for cancellation under Section 151 (b) of the IP
Code,
“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:
xxx
(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
xxx (Underscoring supplied)”
The presence of bad faith alone renders a trademark
registration void because the marks should not have
been registered in the first place. Hence, even if the
marks are registered subsequently, the registration will
not confer the registrant any of the rights under Section
147.1[11] of the IP Code.
As a rule, good faith is always presumed, and upon him
who alleges bad faith on the part of a possessor rests
the burden of proof. In this case, not only was
Natrapharm able to explain the origin of the name, it
was also able to show that it had checked the IMS-
PPI[12], IPO, and Bureau of Food and Drug Administration
Philippines (“BFAD”) databases and found that there
was no brand name which was confusingly similar to
“ZYNAPSE”.[13]
Since Natrapharm was not proven to have been in bad
faith, it was thus considered to have acquired all the
rights of a trademark owner under the IP Code upon
the registration of the “ZYNAPSE” mark.
Prior User in Good Faith
While Natrapharm is the owner of the “ZYNAPSE” mark,
this does not, however, automatically mean that its
complaint against Zuneca is with merit. Prior users in
good faith are also protected in the sense that they
will not be made liable for trademark infringement
even if they are using a mark that was subsequently
registered by another person. Section 159.1 of the IP
Code provides:
“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. (Underscoring
supplied)”
The application of Section 159.1 of the IP Code in the
case at bar results in Zuneca’s exemption from liability
for trademark infringement.
Section 159.1 of the IP Code clearly contemplates that a
prior user in good faith may continue to use its mark
even after the registration of the mark by the first-to-
file registrant in good faith. In any event, the
application of Section 159.1 necessarily results in the
co-existence of at least two entities – the unregistered
prior user in good faith, on one hand; and the first-to-
file registrant in good faith on the other – using
identical or confusingly similar marks in the market at
the same point in time, even if there exists the
likelihood of confusion. [14]
Essentially, the decision indisputably pronounced that,
under the IP Code, the ownership of a trademark is
acquired by its registration, with the exception created
by Section 159.1 of the IP Code.
Implications of the Decision Today
Co-Existence of Confusingly Similar Marks
The pronouncement of the Supreme Court allows
clients and individuals interested in the registration of
a mark an assurance that, in the absence of bad faith,
the approval of the registration of their proposed mark
will surely give rise to rights under the IP Code. Even if
there may exist another individual or entity who make
use of the same or similar mark, the rights resulting
from the registered mark will not be affected.
Nonetheless, the same ruling creates a scenario where a
mark, which was successfully registered with the IPO,
may have the risk of being in co-existence with a
confusingly similar mark, in the case where a prior user
in good faith exists.
In the case of Zuneca and Natrapharm, both parties
engage in the sale of medicine – one an anti-convulsant,
while the other, a treatment for cerebrovascular
disease. In such cases, the customers and patients go to
the pharmacy with the specific medicine and its purpose
in mind. Likewise, the personnel handling the medicine
are professionals who have expertise over the matter,
which may reduce the confusion that may arise from
the similarity of the marks.
However, should the same condition happen in a
different market where customers and clients are not as
particular, the confusion created by the co-existence of
the confusingly similar marks may defeat the very
purpose of the trademark, and may negatively affect
the goodwill of the owner of the mark.
Awareness of IP rights
The Decision highlights the importance and necessity of
trademark owners to be aware of their rights and to
register their marks as early as possible. While failure to
register a mark may not deprive a prior user in good
faith of their trademark, the non-registration of such
mark may create the absurdity of co-existence for the
same or confusingly similar mark owned by a later
registrant. Granting co-existence may be better than
deprivation of rights over the mark, it is still best and
prudent for the first user to take advantage of the
system of registration in the IP Code and register the
mark avoiding the absurd situation of co-existe
G.R. No. 184850 October 20, 2010 E.Y. INDUSTRIAL
SALES, INC. and ENGRACIO YAP, Petitioners, vs. SHEN
DAR ELECTRICITY AND MACHINERY CO., LTD.,
Respondent.
FACTS:
EYIS is a domestic corporation engaged in the
production, distribution and sale of air compressors and
other industrial tools and equipment. Respondent Shen
Dar is a Taiwan-based foreign corporation engaged in
the manufacture of air compressors. Both claimed to
have the right to register the trademark “VESPA” for air
compressors. From 1997-2004 EYIS imported air
compressors from Shen Dar through sales contracts,
without any evidence showing that they were marked
“VESPA”.
On 1997, Shen Dar filed for trademark application for
the mark “VESPA”. While on 1999 EYIS filed a trademark
application for the mark “VESPA”. They were issued
certificates of registration on 2004 for EYIS, and on 2007
for Shen Dar.
Shen dar then filed a petition for cancellation of EYIS’S
COR for having first filed the mark and alleging that EYIS
was a mere distributor of the compressors bearing the
mark “VESPA”. It also argued that their rights were
protected by the Paris Convention. EYIS denied the
claim of Shend dar since they were the sole fabricator of
air compressors since 1990s and that the air
compressors provided by Shen dar only bore the mark
of “SD”.
The director of the BLA ruled in favor of EYIS and denied
the petition for cancellation. Upon appeal to the
director General of the IPO, it upheld the COR issued of
EYIS and subsequently cancelled the COR of Shen dar.
Further recourse was then made by Shen dar to the CA
which reversed the decision of the IPO General. The CA
enunciated that the IPO failed to properly apply the
provisions of Sec. 123.1(d) of RA 8293, which prohibits
the registration of a trademark in favor of a party when
there is an earlier filed application for the same mark
Shen Dar should also be considered to have prior use of
the mark based on their Declarations of Actual Use.
They also ruled that  EYIS is a mere importer of the air
compressors with the mark “VESPA” as may be gleaned
from its receipts which indicated that EYIS is an
importer, wholesaler and retailer, and therefore, cannot
be considered an owner of the mark.
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ISSUES:
1.       Whether or not EYIS is a mere importer of the air
compressors?
2.       Whether or not SHEN DAR had prior use of the
mark of “VESPA”
3.       Whether or not EYIS is the actual owner of the
mark?
Held:
1.       NO. There is no requirement that a sales invoice
should accurately state the nature of all the businesses
of the seller. There is no legal ground to state that EYIS’
“declaration” in its sales invoices that it is an importer,
wholesaler and retailer is restrictive and would preclude
its being a manufacturer. The fact that EYIS described
itself in its sales invoice as an importer, wholesaler and
retailer does not preclude it being a manufacturer.
2.       NO. A declaration of Actual use is not conclusive
as to the fact of first use of a mark. The declaration
must be accompanied by proof of actual use as of the
date clamed and that the applicant must present
evidence of such use. EYIS is the prior user of such mark
based on the adoption and continuous use of “VESPA”
on air compressors. This bolstered by numerous
documentary evidence and sales invoices which
solidified that EYIS was the first to use the mark on the
concept of an owner as early as 1991.
3.       YES. EYIS is the actual owner of the mark. Under
Sec. 123.1 of R.A 8293 the registration of a mark is
prevented with the filing of an earlier application for
registration. This must not, however, be interpreted to
mean that ownership should be based upon an earlier
filing date. Proof of prior and continuous use is
necessary to establish ownership of a mark. Such
ownership constitutes sufficient evidence to oppose the
registration of a mark.
The court ruled that the prior and continuous use of a
mark may even overcome the presumptive ownership
of the registrant and be held as the owner of the mark.
As aptly stated by the Court in Shangri-la International
Hotel Management, Ltd. v. Developers Group of
Companies, Inc.:
Registration, without more, does not confer upon the
registrant an absolute right to the registered mark. The
certificate of registration is merely a prima facie proof
that the registrant is the owner of the registered mark
or trade name. Evidence of prior and continuous use of
the mark or trade name by another can overcome the
presumptive ownership of the registrant and may very
well entitle the former to be declared owner in an
appropriate case.
                                                                                      x                     x  x
By itself, registration is not a mode of acquiring
ownership. When the applicant is not the owner of the
trademark being applied for, he has no right to apply for
registration of the same. 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.
Such presumption, just like the presumptive regularity in
the performance of official functions, is rebuttable and
must give way to evidence to the contrary.
The documentary evidence presented by EYIS together
with the Bills of lading and numerous sales invoices and
its continued use of the mark “VESPA” throughout the
Philippines proved that it is the prior and continuous
user of the mark “VESPA” and its true owner.
BERRIS AGRICULTURAL CO., INC. vs. NORVY
ABYADANG. G.R. No. 183404. October 13, 2010
FACTS:
Abyadang filed a trademark application with the IPO for
the mark "NS D-10 PLUS" for use in connection with
Fungicide. Berris Agricultural Co., Inc. filed an
opposition against the trademark citing that it is
confusingly similar with their trademark, "D-10 80 WP"
which is also used for Fungicide also with the same
active ingredient.
The IPO ruled in favor of Berries but on appeal with the
CA, the CA ruled in favor of Abyadang.
ISSUE: Whether there is confusing similarity between
the trademarks.
RULING:
Yes. The SC found that both products have the
component D-10 as their ingredient and that it is the
dominant feature in both their marks. Applying the
Dominancy Test, Abyadang's product is similar to Berris'
and that confusion may likely to occur especially that
both in the same type of goods. Also using the Holistic
Test, it was more obvious that there is likelihood of
confusion in their packaging and color schemes of the
marks. The SC states that buyers would think that
Abyadang's product is an upgrade of Berris'.
Mattel, Inc. vs. Emma Francisco
GR No. 166886, July 30 2008
FACTS:
Jimmy A. Uy (Uy) filed a trademark application with the
Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) for registration of the trademark "BARBIE" for
use on confectionary products, such as milk, chocolate,
candies, milk bar and chocolate candies. Mattel, Inc. vs.
Emma Francisco
Mattel, Inc. (Mattel), filed a Notice of Opposition against
Uy's "Barbie" trademark as the latter was confusingly
similar to its trademark on dolls, doll clothes and doll
accessories, toys and other similar commercial
products.
Public respondent Estrellita B. Abelardo, the Director of
the Bureau of Legal Affairs, IPO, rendered a Decision
dismissing Mattel's opposition and giving due course to
Uy’s application for the registration of the trademark
"Barbie" used on confectionary products. Mattel, Inc.
vs. Emma Francisco
Read: La Chemise Lacoste. VS. Fernandez
The Director held that there was no confusing similarity
between the two competing marks because the goods
were non-competing or unrelated.
Mattel filed MR which was denied then it appealed the
decision with the Director General.
Public respondent Emma C. Francisco, the Director
General, rendered a Decision denying the appeal on the
ground that there was no proof on record that Mattel
had ventured into the production of chocolates and
confectionary products under the trademark "Barbie" to
enable it to prevent Uy from using an identical "Barbie"
trademark on said goods; that the records were bereft
of the fact that the Director of the Bureau of
Trademarks (BOT) had already declared the subject
trademark application abandoned due to the non-filing
of the Declaration of Actual Use (DAU) by Uy. Mattel,
Inc. vs. Emma Francisco
ISSUE:
Whether or not the application is deemed withdrawn or
abandoned for failure to file the Declaration of Actual
Use.
HELD:
The petition is dismissed for being moot and academic.
Uy's declaration in his Comment and Memorandum
before this Court that he has not filed the DAU as
mandated by pertinent provisions of R.A. No. 8293 is a
judicial admission that he has effectively abandoned or
withdrawn any right or interest in his
trademark. Mattel, Inc. vs. Emma Francisco
Section 124.2 of R.A. No. 8293 provides:
  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
applicant shall be refused or the marks shall be
removed from the Register by the Director.
Moreover, Rule 204 of the Rules and Regulations on
Trademarks provides:
  Declaration of Actual Use. The Office will not require
any proof of use in commerce in the processing of
trademark applications.
  However, without need of any notice from the Office,
all applicants or registrants, shall file a declaration of
actual use of the mark with evidence to that effect
within three years, without possibility of extension,
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 motu propio.
Meanwhile, Memorandum Circular No. BT 2K1-3-04
dated March 29, 2001 of the IPO provides:
  2. For pending applications prosecuted under R.A. 166
we distinguish as follows:2.1. Based on use – must
submit DAU and evidence of use on or before
December 1, 2001, subject to a single six (6) month
extension. (Sec. 3.2, Final Provisions of the Trademark
Regulations, R.A. 8293, IPO Fee Structure and MC. No.
BT Y2K-8-02)
Uy's admission in his Comment and Memorandum of
non-compliance with the foregoing requirements is a
judicial admission and an admission against interest
combined. Mattel, Inc. vs. Emma Francisco
Read: Coffee Partners, Inc. vs. San Francisco Coffee and
Roastery, Inc.
A judicial admission binds the person who makes the
same. In the same vein, an admission against interest is
the best evidence which affords the greatest certainty
of the facts in dispute.
The rationale for the rule is based on the presumption
that no man would declare anything against himself
unless such declaration is true.
Thus, it is fair to presume that the declaration
corresponds with the truth, and it is his fault if it does
not. Mattel, Inc. vs. Emma Francisco
In the present case, Mattel is seeking a ruling on
whether Uy's "Barbie" trademark is confusingly similar
to it's (Mattel's) "Barbie" trademark. Given Uy's
admission that he has effectively abandoned or
withdrawn any rights or interest in his trademark by his
non-filing of the required DAU, there is no more actual
controversy, or no useful purpose will be served in
passing upon the merits of the case.
It would be unnecessary to rule on the trademark
conflict between the parties. Mattel, Inc. vs. Emma
Francisco
MCDONALD’S CORPORATION VS. L.C. BIG MAK
BURGER, INC.
G.R. No. 143993
18 August 2004
PONENTE: CARPIO, J.
FACTS:
Petitioner McDonald’s Corporation is a corporation
organized under the laws of Delaware, United States.
McDonald’s operates a global chain of fast-food
restaurants. McDonald’s own a family of marks
including the “Big Mac” mark for its double-decker
hamburger sandwich.
McDonald’s registered this trademark with the United
States Trademark Registry on 16 October 1979. Based
on this Home Registration, McDonald’s applied for the
registration of the same mark in the Principal Register
of then then Philippine Bureau of Patents, Trademarks
and Technology (PBPTT) – now the Intellectual Property
Office (IPO).
Pending approval of its application, McDonald’s
introduced its “Big Mac” hamburger sandwiches in the
Philippine market in September 1981. On 18 July 1985,
the PBPTT allowed registration of the “Big Mac” mark in
the Philippine Register based on its Home Registration
in the United States. From 1982 to 1990, McDonald’s
spent P10.5 million in advertisement for “Big
Mac” hamburger sandwiches alone.
Respondent L.C. Big Mak Burger, Inc. is a domestic
corporation which operates fast-food outlets and snack
vans in Metro Manila and nearby provinces. Its menu
includes hamburger sandwiches and other food items.
On 21 October 1988, respondent corporation applied
with the PBPTT for the registration of the “Big
Mak” mark for its hamburger sandwiches.
McDonald’s opposed respondent corporation’s
application on the ground that “Big Mak” was a
colorable imitation of its registered “Big Mac” mark for
the same food products.
ISSUES:
1.      Is the respondent guilty of trademark infringement
and unfair competition?
2.      Is the “Big Mac” mark valid and does McDonald’s
have rightful ownership to the same?
RULING:
1. YES.
Trademark Infringement
RA 166 defines trademark infringement as “any person
who (1) shall use, without the consent of the registrant,
any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade-name in
connection with the sale, offering for sale, or advertising
of any goods, business or services on or in connection
with which use is likely to CAUSE CONFUSION or
otherwise mistake or to deceive purchasers or others as
to the source or origin of such goods or services or
identity of such business; or (2) reproduce, counterfeit,
copy, or colorably imitate any such mark or trade-name
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.”
Clearly, there is cause for confusion in the case at bar.
By using the “Big Mak” mark on the same goods, i.e.
hamburger sandwiches, that petitioners’ “Big
Mac” mark is used, they have unjustly created the
impression that its business is approved and sponsored
by, or affiliated with plaintiffs.
Furthermore, using the dominancy test (rather than the
holistic test), wherein the dominant features in the
competing marks are considered, Big Mak failed to
show that there could be no confusion. The Court found
that respondents’ use of the “Big Mak” mark results in
likelihood of confusion. First, “Big Mak” sounds exactly
the same as “Big Mac.” Second, the first word in “Big
Mak” is exactly the same as the first word in “Big
Mac.” Third, the first two letters in “Mak” are the same
as the first two letters in “Mac.” Fourth, the last letter
in “Mak” while a “k” sounds the same as “c” when the
word “Mak” is pronounced. Fifth, in Filipino, the
letter “k” replaces “c” in spelling, thus “Caloocan” is
spelled “Kalookan.” In short, aurally, the two marks are
the same.
Unfair Competition
With regard to unfair competition, RA 166, Section 29
defines the same as any person who will 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.
Unfair competition is broader than trademark
infringement and includes passing off goods with or
without trademark infringement. Trademark
infringement is a form of unfair competition. Trademark
infringement constitutes unfair competition when there
is not merely likelihood of confusion, but also actual or
probable deception on the public because of the
general appearance of the goods.
L.C. Big Mak tried to pass off their goods as though it
were connected to “Big Mac.” The mark “B[ig] M[ac]” is
used by plaintiff McDonald’s to identify its double
decker hamburger sandwich. The packaging material is
a styrofoam box  with the McDonald’s logo and
trademark in red with block capital letters printed on it.
All letters of the “B[ig] M[ac]” mark are also in red and
block capital letters. On the other hand,
defendants’ “B[ig] M[ak]” script print is in orange with
only the letter  “B”  and  “M”  being capitalized  and the
packaging material is plastic wrapper. x x x x Further,
plaintiffs’ logo and mascot are the
umbrella “M” and “Ronald McDonald’s,” respectively,
compared to the mascot of defendant Corporation
which is a chubby boy called “Macky” displayed or
printed between the words “Big” and “Mak.”(Emphasis
supplied)
Respondents point to these dissimilarities as proof that
they did not give their hamburgers the general
appearance of petitioners’ “Big Mac” hamburgers.
The dissimilarities in the packaging are minor compared
to the stark similarities in the words  that give
respondents’ “Big Mak” hamburgers the general
appearance of petitioners’ “Big Mac” hamburgers.
Section 29(a) expressly provides that the similarity in
the general appearance of the goods may be in
the “devices or words” used on the wrappings.
Respondents have applied on their plastic wrappers and
bags almost the same words  that petitioners use on
their styrofoam box. What attracts the attention of the
buying public are the words “Big Mak” which are almost
the same, aurally and visually, as the words “Big
Mac.” The dissimilarities in the material and other
devices are insignificant compared to the glaring
similarity in the words used in the wrappings.
YES.
A mark is valid if it is “distinctive” and thus not barred
from registration under Section 4 of RA 166. However,
once registered, not only the mark’s validity but also the
registrant’s ownership of the mark is prima
facie presumed.
Respondents contend that of the two words in the “Big
Mac” mark, it is only the word “Mac” that is valid
because the word “Big” is generic and descriptive
(proscribed under Section 4[e]), and thus “incapable of
exclusive appropriation.”
The contention has no merit. The “Big Mac” mark,
which should be treated in its entirety and not dissected
word for word,is neither generic nor descriptive.
Converse Rubber Corporation v. Universal Rubber
Products (G.R. No.  L-27906)
Facts:
Respondent Universal Rubber applied for the
registration of the trademark ‘Universal Converse and
Device’ used on its rubber shoes and rubber slippers.
Petitioner Converse opposed on the ground that the
trademark sought to be registered is confusingly similar
to the word ‘Converse’ which is part of its corporate
name ‘Converse Rubber Corporation’ and will likely
deceive purchasers and cause irreparable injury to its
reputation and goodwill in the Philippines. Respondent
argued that the trademarks petitioner uses on its
rubber shoes are ‘Chuck Taylor’ and ‘All Star Device.’
The Director of Patents gave due course to respondent’s
application. MR was denied.
Issue:
Whether or not there is confusing similarity between
the two trademarks.
*Click here for the Corpo Law issue
Ruling: YES.
The trademark of respondent “UNIVERSAL CONVERSE
and DEVICE” is imprinted in a circular manner on the
side of its rubber shoes. In the same manner, the
trademark of petitioner which reads “CONVERSE CHUCK
TAYLOR” is imprinted on a circular base attached to the
side of its rubber shoes. The determinative factor in
ascertaining whether or not marks are confusingly
similar to each other “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 new brand
for it.” 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 … “
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.
UFC PHILIPPINES VS. FIESTA BARRIO
Avg. Rating:
Summary:
The SC upheld the finding of the IPP in denying
petitioner's prayer for registration for finding
probability of confusing similarity. The SC applied the
Dominancy Test in the instant case.
Doctrine:
Under the Dominancy Test, the dominant features of
the competing marks are considered in determining
whether these competing marks are confusingly similar.
Greater weight is given to the similarity of the
appearance of the products arising from the adoption of
the dominant features of the registered mark,
disregarding minor differences. The visual, aural,
connotative, and overall comparisons and impressions
engendered by the marks in controversy as they are
encountered in the realities of the marketplace are the
main considerations
Facts:
Petitioner Nutri-Asia, Inc. (petitioner) is a corporation
duly organized and existing under Philippine laws. It is
the emergent entity in a merger with UFC Philippines,
Inc. that was completed on February 11, 2009.
Respondent Barrio Fiesta Manufacturing Corporation
(respondent) is likewise a corporation organized and
existing under Philippine laws.
On April 4, 2002, respondent filed Application No. 4-
2002-002757 for the mark "PAPA BOY & DEVICE" for
goods under Class 30, specifically for "lechon sauce."
The Intellectual Property Office (IPO) published said
application for opposition in the IP Phil. e-Gazette
released on September 8, 2006.
In its verified opposition before the IPO, petitioner
contended that "PAPA BOY & DEVICE" is confusingly
similar with its "PAPA" marks inasmuch as the former
incorporates the term "PAPA," which is the dominant
feature of petitioner's "PAPA" marks. Petitioner averred
that respondent's use of "PAPA BOY & DEVICE" mark for
its lechon sauce product, if allowed, would likely lead
the consuming public to believe that said lechon sauce
product originates from or is authorized by petitioner,
and that the "PAPA BOY & DEVICE" mark is a variation
or derivative of petitioner's "PAPA" marks. Petitioner
argued that this was especially true considering that
petitioner's ketchup product and respondent's lechon
sauce product are related articles that fall under the
same Class 30.
 
Petitioner alleged that the registration of respondent's
challenged mark was also likely to damage the
petitioner, considering that its former sister company,
Southeast Asia Food, Inc., and the latter's predecessors-
in-interest, had been major manufacturers and
distributors of lechon and other table sauces since
1965, such as products employing the registered "Mang
Tomas" mark.
Issues Ratio:
Issue:
Whether “PAPA BOY & DEVICE” is confusingly similar
with “PAPA BANANA KETSUP”.
    Ruling:
There is confusing similarity. The guideline for courts in
determining likelihood of confusion is found in A.M. No.
10-3-10-SC, or the Rules of Procedure for Intellectual
Property Rights Cases, Rule 18, which provides:
SECTION 3.  Presumption of Likelihood of Confusion.
Likelihood of confusion shall be presumed in case an
identical sign or mark is used for identical goods or
services.
SECTION 4.  Likelihood of Confusion in Other Cases.  In
determining whether one trademark is confusingly
similar to or is a colorable imitation of another, the
court must consider 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. Visual, aural, connotative comparisons and
overall impressions engendered by the marks in
controversy as they are encountered in the realities of
the marketplace must be taken into account. Where
there are both similarities and differences in the marks,
these must be weighed against one another to see
which predominates.
In determining likelihood of confusion between marks
used on non-identical goods or services, several factors
may be taken into account, such as, but not limited to:
a) the strength of plaintiff s mark;
b) the degree of similarity between the plaintiffs and the
defendant's marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.
In trademark controversies, each case must be
scrutinized according to its peculiar circumstances, such
that jurisprudential precedents should only be made to
apply if they are specifically in point.
The SC likewise agree with the IPO-BLA that the word
"PAPA" is also the dominant feature of respondent's
"PAPA BOY & DEVICE" mark subject of the application,
such that "the word 'PAPA' is written on top of and
before the other words such that it is the first
word/figure that catches the eyes." Furthermore, as the
IPO Director General put it, the part of respondent's
mark which appears prominently to the eyes and ears is
the phrase "PAPA BOY" and that is what a purchaser of
respondent's product would immediately recall, not the
smiling hog.
A careful examination of Opposer's and Respondent-
applicant's respective marks shows that the word
"PAPA" is the dominant feature: In Opposer's marks, the
word "PAPA" is either the mark by itself or the
predominant word considering its stylized font and the
conspicuous placement of the word "PAPA" before the
other words. In Respondent-applicant's mark, the word
"PAPA" is written on top of and before the other words
such that it is the first word figure that catches the eyes.
The visual and aural impressions created by such
dominant word "PAPA" at the least is that the
respective goods of the parties originated from the
other, or that one party has permitted or has been given
license to the other to use the word "PAPA" for the
other party's product, or that there is a
relation/connection between the two parties when, in
fact, there is none. This is especially true considering
that the products of both parties belong to the same
class and are closely related: Catsup and lechon sauce
or liver sauce are both gravy-like condiments used to
spice up dishes. Thus, confusion of goods and of
business may likely result.
Under the Dominancy Test, the dominant features of
the competing marks are considered in determining
whether these competing marks are confusingly similar.
Greater weight is given to the similarity of the
appearance of the products arising from the adoption of
the dominant features of the registered mark,
disregarding minor differences. The visual, aural,
connotative, and overall comparisons and impressions
engendered by the marks in controversy as they are
encountered in the realities of the marketplace are the
main considerations
Dermaline, INC vs. MYRA PHARMACEUTICALS, INC.,
Facts: Dermaline filed before the IPO an application for
registration of the trademark DERMALINE DERMALINE,
INC. Myra  filed an Opposition alleging that the
trademark sought to be registered by Dermaline so
resembles its trademark DERMALIN and will likely cause
confusion to the purchasing public. Myra claimed that,
despite Dermalines attempt to differentiate its applied
mark, the dominant feature is the term DERMALINE,
which is practically identical with its own DERMALIN,
more particularly that the first eight (8) letters of the
marks are identical, and that notwithstanding the
additional letter E by Dermaline, the pronunciation for
both marks are identical. Further, both marks have
three (3) syllables each, with each syllable identical in
sound and appearance, even if the last syllable of cognizant that the registered trademark owner enjoys
DERMALINE consisted of four (4) letters while protection in product and market areas that are
DERMALIN consisted only of three (3). the normal potential expansion of his business. Thus,
the public may mistakenly think that Dermaline is
         Myra also pointed out that Dermaline applied for
connected to or associated with Myra, such that,
the same mark DERMALINE on June 3, 2003 and was
considering the current proliferation of health and
already refused registration by the IPO. By filing this
beauty products in the market, the purchasers would
new application for registration, Dermaline appears to
likely be misled that Myra has already expanded its
have engaged in a fishing expedition for the approval of
business through Dermaline from merely carrying
its mark. In its Verified Answer, Dermaline contended
pharmaceutical topical applications for the skin to
that its trademark DERMALINE DERMALINE, INC. speaks
health and beauty services.
for itself (Res ipsa loquitur). Dermaline further argued
that there could not be any relation between its
trademark for health and beauty services from Myra’s
trademark classified under medicinal goods against skin
disorders. the IPO-Bureau of Legal Affairs sustained
Myra’s opposition. Director General of the IPO
dismissed the appeal of Dermaline. CA affirmed the
rejection of the latter’s trademark application

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Issue: Should the application for registration be

allowed?

Ruling: No.  In rejecting the application of Dermaline for

the registration of its mark DERMALINE DERMALINE,
INC., the IPO applied the Dominancy Test. It declared
that both confusion of goods and service and confusion
of business or of origin were apparent in both
trademarks. Dermalines insistence that its applied
trademark DERMALINE DERMALINE, INC. had
differences too striking to be mistaken from Myra’s
DERMALIN cannot be sustained because they are
almost spelled in the same way, except for Dermaline’s
mark which ends with the letter E, and they are
pronounced practically in the same manner in three (3)
syllables, with the ending letter E in Dermaline’s mark
pronounced silently. Thus, when an ordinary purchaser,
for example, hears an advertisement of Dermaline’s
applied trademark over the radio, chances are he will
associate it with Myra’s registered mark. Further,
Dermalines stance that its product belongs to a
separate and different classification from Myra’s
products with the registered trademark does not
eradicate the possibility of mistake on the part of the
purchasing public to associate the former with the
latter, especially considering that both classifications
pertain to treatments for the skin. The Court is