In the present case, the goods are obviously different from
ESSO STANDARD VS COURT OF APPEALS
G.R. NO. L- 29971
DATE AUG. 31, 1992
PONENTE TEEHANKEE, J.
FACTS: Esso Standard Eastern, Inc., then a foreign
corporation duly licensed to do business in the Philippines, is
engaged in the sale of petroleum products which are Identified
with its trademark ESSO United Cigarette Corporation is a
domestic corporation then engaged in the manufacture and
sale of cigarettes, after it acquired in November, 1963 the
business, factory and patent rights of its predecessor La
Oriental Tobacco Corporation, one of the rights thus acquired
having been the use of the trademark ESSO on its cigarettes,
for which a permit had been duly granted by the Bureau of
Internal Revenue.
The complaint of ESSO alleged that it had been for many years
engaged in the sale of petroleum products and its trademark
ESSO had acquired a considerable goodwill to such an extent
that the buying public had always taken the trademark ESSO
as equivalent to high quality petroleum products. It asserted
that the continued use by United Cigarettes Corporation of the
same trademark ESSO on its cigarettes was being carried out
for the purpose of deceiving the public as to its quality and
origin to the detriment and disadvantage of its own products.
Unite Cigarettes Corporation admitted that it used the
trademark ESSO on its own product of cigarettes, which was
not Identical to those produced and sold by the petitioner and
therefore did not in any way infringe on or imitate petitioner's
trademark. It further argues that in order that there may be
trademark infringement, it is indispensable that the mark must
be used by one person in connection or competition with goods
of the same kind as the complainant's.
ISSUE/S: Is there trademark infringment?
RULING: None.
It is undisputed that the goods on which petitioner uses the
trademark ESSO, petroleum products, and the product of
respondent, cigarettes, are non-competing. But as to whether
trademark infringement exists depends for the most part upon
whether or not the goods are so related that the public may be,
or is actually, deceived and misled that they came from the
same maker or manufacturer. For non-competing goods may
be those which, though they are not in actual competition, are
so related to each other that it might reasonably be assumed
that they originate from one manufacturer. Non-competing
goods may also be those which, being entirely unrelated, could
not reasonably be assumed to have a common source. in the
former case of related goods, confusion of business could arise
out of the use of similar marks; in the latter case of non-related
goods, it could not. The vast majority of courts today follow the
modern theory or concept of "related goods" which the Court
has likewise adopted and uniformly recognized and applied.
Goods are related when they belong to the same class or have
the same descriptive properties; when they possess the same
physical attributes or essential characteristics with reference to
their form, composition, texture or quality.
each other with "absolutely no iota of similitude" as stressed in
respondent court's judgment. They are so foreign to each other
as to make it unlikely that purchasers would think that
petitioner is the manufacturer of respondent's goods.ºThe mere
fact that one person has adopted and used a trademark on his
goods does not prevent the adoption and use of the same
trademark by others on unrelated articles of a different kind.
Considering the general appearances of each mark as a
whole, the possibility of any confusion is unlikely. A comparison
of the labels of the samples of the goods submitted by the
parties shows a great many differences on the trademarks
used. Even the lower court, which ruled initially for petitioner,
found that a "noticeable difference between the brand ESSO
being used by the defendants and the trademark ESSO of the
plaintiff is that the former has a rectangular background, while
in that of the plaintiff the word ESSO is enclosed in an oval
background."
Canon Kabushiki Kaisha v. CA (G.R. No. 120900)
Facts:
Respondent NSR Rubber filed an application for registration of
the mark CANON for sandals. Petitioner Canon, a Japanese
corporation, opposed alleging it will be damaged by the
registration. Petitioner presented evidence that it was the
owner of the mark CANON in various countries and in the
Philippines for goods such as paints, chemical products, toner
and dye stuff. BPTTT dismissed the opposition and gave due
course to respondent’s application. CA affirmed. Petitioner
invokes Article 8 of the Paris Convention which affords
protection to a tradename whether or not it forms part of a
trademark.
Issue:
Whether or not petitioner may be afforded protection of its
trade name.
Ruling: NO.
The term “trademark” is defined by RA 166, the Trademark
Law, as including “any word, name, symbol, emblem, sign or
device or any combination thereof adopted and used by a
manufacturer or merchant to identify his goods and distinguish
them for those manufactured, sold or dealt in by others.”
Tradename is defined by the same law as including “individual
names and surnames, firm names, tradenames, devices or
words used by manufacturers, industrialists, merchants,
agriculturists, and others to identify their business, vocations,
or occupations; the names or titles lawfully adopted and used
by natural or juridical persons, unions, and any manufacturing,
industrial, commercial, agricultural or other organizations
engaged in trade or commerce.” Simply put, a trade name
refers to the business and its goodwill; a trademark refers to
the goods.
The Convention of Paris for the Protection of Industrial
Property, otherwise known as the Paris Convention, of which
both the Philippines and Japan, the country of petitioner, are
signatories, is a multilateral treaty that seeks to protect
industrial property consisting of patents, utility models,
industrial designs, trademarks, service marks, trade names
and indications of source or appellations of origin, and at the
same time aims to repress unfair competition. We agree with
public respondents that the controlling doctrine with respect to
the applicability of Article 8 of the Paris Convention is that
established in Kabushi Kaisha Isetan vs. IAC. As pointed out
by the BPTTT: “Regarding the applicability of Article 8 of the
Paris Convention, this Office believes that there is no
automatic protection afforded an entity whose tradename is
alleged to have been infringed through the use of that name as
a trademark by a local entity. To illustrate – if a taxicab or bus
company in a town in the United Kingdom or India happens to
use the tradename “Rapid Transportation”, it does not
necessarily follow that “Rapid” can no longer be registered in
Uganda, Fiji, or the Philippines.”
Faberge v IAC Digest
G.R. No. 71189, November 4, 1992
Facts of the Case:
Co Beng Kay applied for the registration of the trademark
'BRUTE' to be used it its underwear (briefs) products. The
petitioner opposed on the ground that there is similarity with
their own symbol (BRUT, Brut33 & Device) used on its
aftershave, deodorant, cream shave, hairspray and hair
shampoo/soaps and that it would cause injury to their business
reputation. It must be noted that the petitioner never applied for
registration of said trademark for its brief products. The Patent
Office allowed Co Beng Kay the registration and this was
further affirmed by the Court of Appeals.
Issue: Is there confusing similarity between the challenged
marks and that its use would likely cause confusion on the part
of the purchasers?
HELD: NONE. Co Beng Kay may rightly appropriate the mark.
In this case Sec. 20 (Philippine Intellectual Property Law) is
controlling. The certificate of registration issued confers the
exclusive right to use its own symbol only to those goods
specified by the first user in the certificate, subject to any
conditions or limitations stated therein. Moreover, the two
products are so dissimilar that a purchaser of one (a brief)
would not be misled or mistaken into buying the other (such as
an aftershave).
Ang v. Teodoro (G.R. No. L-48226)
Facts:
Respondent Teodoro has long been using ‘Ang Tibay’ both as
trademark and tradename in the manufacture and sale of its
slippers, shoes and indoor baseballs when he formally
registered it. Meanwhile, petitioner Ang registered the same
trademark ‘Ang Tibay’ for its products of pants and shirts.
Respondent moved to cancel the registration of petitioner’s
mark. The trial court found for petitioner Ang. CA reversed the
judgment. Petitioner argues the validity of the mark being
descriptive; that it had not acquired secondary meaning in
favor of respondent; and that there can be no
infringement/unfair competition because the goods are not
similar.
Issues:
(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a
secondary meaning.
(3) Whether or not there is trademark infringement and/or
unfair competition between unrelated goods.
Ruling:
(2) NO. In view of the conclusion we have reached upon the
first assignment of error, it is unnecessary to apply here the
doctrine of “secondary meaning” in trade-mark parlance. This
doctrine is to the effect that a word or phrase originally
incapable of exclusive appropriation with reference to an article
of the market, because geographically or otherwise descriptive,
might nevertheless have been used so long and so exclusively
by one producer with reference to his article that, in that trade
and to that branch of the purchasing public, the word or phrase
has come to mean that the article was his product. We have
said that the phrase “Ang Tibay,” being neither geographic nor
descriptive, was originally capable of exclusive appropriation
as a trade-mark. But were it not so, the application of the
doctrine of secondary meaning made by the Court of Appeals
could nevertheless be fully sustained because, in any event, by
respondent’s long and exclusive use of said phrase with
reference to his products and his business, it has acquired a
proprietary connotation.
(3) YES. In the present state of development of the law on
Trade-Marks, Unfair Competition, and Unfair Trading, the test
employed by the courts to determine whether noncompeting
goods are or are not of the same class is confusion as to the
origin of the goods of the second user. Although two
noncompeting articles may be classified under two different
classes by the Patent Office because they are deemed not to
possess the same descriptive properties, they would,
nevertheless, be held by the courts to belong to the same class
if the simultaneous use on them of identical or closely similar
trade-marks would be likely to cause confusion as to the origin,
or personal source, of the second user’s goods. They would be
considered as not falling under the same class only if they are
so dissimilar or so foreign to each other as to make it unlikely
that the purchaser would think the first user made the second
user’s goods. The Court of Appeals found in this case that by
uninterrupted and exclusive use since 1910 of respondent’s
registered trade-mark on slippers and shoes manufactured by
him, it has come to indicate the origin and ownership of said
goods. It is certainly not farfetched to surmise that the selection
by petitioner of the same trade-mark for pants and shirts was
motivated by a desire to get a free ride on the reputation and
selling power it has acquired at the hands of the respondent.
ASIA BREWERY, INC. vs. THE HON. COURT OF APPEALS
and SAN MIGUEL CORPORATION
G.R. 103543 July 5, 1993
Facts:
San Miguel Corporation (SMC) filed a complaint against Asia
Brewery Inc. (ABI) for infringement of trademark and unfair
competition on account of the latter's BEER PALE PILSEN or
BEER NA BEER product which has been competing with
SMC's SAN MIGUEL PALE PILSEN for a share of the local
beer market.
The trial court dismissed SMC's complaint because ABI "has
not committed trademark infringement or unfair competition
against" SMC
On appeal by SMC, the Court of Appeals reversed the decision
rendered by the trial court, finding the defendant Asia Brewery
Incorporated GUILTY of infringement of trademark and unfair
competition. ABI then filed a petition for certiorari.
Issue:
Are the words PALE PILSEN as part of ABI’s trademark
constitute infringement of SMC’s trademark?
Ruling:
No. The Supreme Court said it does not constitute an
infringement as the words PALE PILSEN, which are part of
ABI’s trademark, are generic words descriptive of the color
(“pale“), of a type of beer (“pilsen”), which is a light bohemian
beer with a strong hops flavor that originated in the City of
Pilsen, Czechislovakia and became famous in the Middle
Ages.
The Supreme Court further said that the words "pale pilsen"
may not be appropriated by SMC for its exclusive use even if
they are part of its registered trademark. No one may
appropriate generic or descriptive words. They belong to the
public domain.
Petitioner ABI has neither infringed SMC's trademark nor
committed unfair competition with the latter's SAN MIGUEL
PALE PILSEN product.
Taiwan Kolin Corporation, Ltd., Petitioner v. Kolin
Electronics Co. Inc.,
Facts: On February 29, 1996, Taiwan Kolin filed with the
Intellectual Property Office (IPO), docketed as Application No.
4-1996-106310, for the use of “KOLIN” on a combination of
goods, including colored televisions, refrigerators, window-type
and split-type air conditioners, electric fans and water
dispensers. Application No. 4-1996-106310 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. However, the same application was subsequently
revived through Application Serial No. 4-2002-011002, with
petitioner 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.
On July 13, 2006, respondent Kolin Electronics Co., Inc. (Kolin
Electronics) opposed petitioner’s revived application arguing
that 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 of the NCL: automatic voltage regulator, converter,
recharger, stereo booster, AC-DC regulated power supply,
step-down transformer, and PA amplified AC-DC.5cralawred
Issue:
Whether or not petitioner is entitled to its trademark registration
of “KOLIN” over its specific goods of television sets and DVD
players.
Ruling: The Supreme Court held that he petitioner’s trademark
registration not only covers unrelated good, but is also
incapable of deceiving the ordinary intelligent buyer. The
ordinary purchaser must be thought of as having, and credited
with, at least a modicum of intelligence to be able to see the
differences between the two trademarks in question.
On the arguments that both their goods belong to Class 9 of
the NCL, the Supreme Court ruled that identical marks may be
registered for products from the same classification. The 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.
Moreover, the Supreme Court stated that the products covered
by petitioner’s application and respondent’s registration are
unrelated. It agreed with the petitioner on the following:
Taiwan Kolin’s goods are classified as home appliances as
opposed to Kolin Electronics’ goods which are power supply
and audio equipment accessories;ChanRoblesVirtualawlibrary
Taiwan Kolin’s television sets and DVD players perform distinct
function and purpose from Kolin Electronics’ power supply and
audio equipment; and
Taiwan Kolin sells and distributes its various home appliance
products on wholesale and to accredited dealers, whereas
Kolin Electronics’ goods are sold and flow through electrical
and hardware stores.
TAIWAN KOLIN CORPORATION, LTD., Petitioner, v. KOLIN
ELECTRONICS CO., INC., Respondent.
DOCTRINE:
Emphasis should be on the similarity or relatedness of the
goods and/or services involved and not on the arbitrary
classification or general description of their properties or
characteristics.
FACTS:
Taiwan Kolin filed with the Intellectual Property Office (IPO), a
trademark application for the use of “KOLIN” on a combination
of goods, including colored televisions, refrigerators, window-
type and split-type air conditioners, electric fans and water
dispensers. Said goods allegedly fall under Classes 9, 11, and
21 of the Nice Classification (NCL).
Respondent Kolin Electronics Co., Inc. (Kolin Electronics)
opposed petitioner’s revived application, docketed as Inter
Partes Case No. 14-2006-00096. As argued, 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 of the NCL:
automatic voltage regulator, converter, recharger, stereo
booster, AC-DC regulated power supply, step-down
transformer, and PA amplified AC-DC.
The BLA-IPO sustained the opposition and held that a mark
cannot be registered if it is identical with a registered mark
belonging to a different proprietor in respect of the same or
closely-related goods. Accordingly, respondent, as the
registered owner of the mark “KOLIN” for goods falling under
Class 9 of the NCL, should then be protected against anyone
who impinges on its right, including petitioner who seeks to
register an identical mark to be used on goods also belonging
to Class 9 of the NCL.
The IPO Director General rendered a Decision reversing that of
the BLA-IPO. In so ruling, the IPO Director General
ratiocinated that product classification alone cannot serve as
the decisive factor in the resolution of whether or not the goods
are related and that emphasis should be on the similarity of the
products involved and not on the arbitrary classification or
general description of their properties or characteristics. As
held, 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.
The CA reversed and set aside the decision of Director
General and found for 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; (b) there are no other
designs, special shape or easily identifiable earmarks that
would differentiate the products of both competing companies;
and (c) 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. 13819 of the IP Code.
According to Kolin Electronics, the goods associated with
Taiwan Kolin’s trademark application are closely-related and
inherently similar with the goods covered by Kolin Electronics’
registered trademark since they are all plugged into electric
sockets and perform a useful function, and thus, will create
confusion.
On the other hand, Taiwan Kolin asserts that the goods of the
competing marks are not related because (a) its goods pertain
to home appliances while Kolin Electronics’ goods involves
power supply and audio equipment accessories; (b) said goods
perform distinct functions and purposes; and (c) Taiwan Kolin
sells and distributes its various home appliance products on
wholesale and to accredited dealers as opposed to Kolin
Electronics’ goods which are sold in electrical and hardware
stores.
ISSUE:
Whether or not the goods of Taiwan Kolin over its specific
goods of television sets and DVD players are closely-related to
those of Kolin Electronics.
HELD:
No, the products are not related and the use of the trademark
KOLIN on them would not likely cause confusion. To confer
exclusive use of a trademark, emphasis should be on the
similarity or relatedness of the goods and/or services involved
and not on the arbitrary classification or general description of
their properties or characteristics.
In resolving one of the pivotal issues in this case––whether or
not the products of the parties involved are related––the
doctrine in Mighty Corporation is authoritative. There, the
Court held that the goods should be tested against several
factors before arriving at a sound conclusion on the question of
relatedness. 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
to state that the goods involved herein are electronic products
under Class 9 in order to establish relatedness between the
goods, for this only accounts for one of many considerations
enumerated in Mighty Corporation.

The Supreme Court found that Class 9 goods can be sub-

categorized into five classifications and the goods of the
competing marks belong in different categories. Taiwan Kolin’s
goods are categorized as power supply audio equipment
accessories. On the other hand, Kolin Electronics’ goods fall
under devices for controlling the distribution and use of
electricity. Thus, although the goods of the competing marks
belong in the same class (Class 9), they are not related since
their purpose, channels of trade and nature are different.

In determining that there is NO likelihood of confusion between

the competing marks, the Supreme Court likewise noted that
said marks have distinct visual and aural differences and, given
that their goods are deemed as relatively luxury items, the
consumers of said goods are predisposed to be more
discerning, cautious and discriminating.
Dy vs. Koninklijke Philips Electronics, N.V.
821 SCRA 241; G.R. No. 186088; March 22, 2017
FACTS:
On April 12, 2000, petitioner Wilton Dy and/or Philites
Electronic & Lighting Products (PHILITES) filed a trademark
application, Application Serial Number 4-2000-002937,
covering its fluorescent bulb, incandescent light, starter and
ballast. After publication, respondent Koninklijke Philips
Electronics, N.V. (PHILIPS) filed its opposition on March 17,
2006. PHILITES filed an answer, stating that its “PHILITES &
LETTER P DEVICE” trademark and respondent’s “PHILIPS”
have vast dissimilarities in terms of spelling, sound and
meaning. At the conclusion of the hearing, on November 9,
2006, IPP-BLA Director Estrellita Beltran-Abelardo rendered a
decision denying the opposition filed by respondent PHILIPS.
In upholding PHILITES’s trademark application, the
IPP-BLA stated that assuming PHILIPS’s mark was well-known
in the Philippines, there should have been prior determination
of whether or not the mark under application for registration
was identical with, or confusingly similar to, or constitutes a
translation of such well-known mark in order that the owner of
the well-known mark can prevent its registration. From the
evidence presented, the IPP-BLA concluded that the “PHILIPS”
and “PHILITES” marks were so unlike, both visually and
aurally. It held that no confusion was likely to occur, despite
their simultaneous use.
Upon appeal, the IPP-DG rendered a decision on
April 16, 2008, affirming the ruling of the IPP-BLA. In so ruling,
the IPP-DG noted that the dominant feature of the
respondent’s trademark is “PHILIPS” while that of the
petitioner’s trademark is “PHILITES” while the first syllables of
the marks are identical the second syllables are not. The
differences in the last syllable accounted for the variance of the
trademarks visually and aurally. Moreover, there were glaring
differences and dissimilarities in the design and general
appearance of the Philips shield emblem mark and the letter
“P” of Philites mark.
Upon appeal, the Court of Appeals (CA) ruled in favor
of PHILIPS and dismissed the application for trademark
registration respondent PHILITES. The CA reasoned that the
drawing of the trademark submitted by PHILITES has a
different appearance from that of PHILITES’s actual wrapper or
packaging that contain the light bulbs, which the CA find
confusingly similar with that of PHILIPS’s registered trademark
and packaging. Moreover, it found to be self-serving the
PHILITES’s asseveration that the mark “PHILITES” is a coined
or arbitrary mark from the words ‘Philippines’ and ‘lights.’ Of all
the marks that the petitioner could possibly think of for his light
bulbs, it is odd that he chose a mark with the letters ‘PHILI,’
which are the same prevalent or dominant five letters found in
respondent’s trademark “PHILIPS” for the same products, light
bulbs. Hence, the CA concluded that PHILITES had intended
to ride on the long-established reputation and goodwill of
PHILIPS’s trademark. PHILITES filed a Motion for
Reconsideration, however it was denied; hence, this petition.
ISSUE:
Whether or not the mark applied for by PHILITES is
identical or confusingly similar with that of PHILIPS.
HELD:
Yes, the mark applied for by PHILITES is identical or
confusingly similar with that of PHILIPS.
Despite PHILIPS’s diversification to numerous and
varied industries, the records show that both parties are
engaged in the same line of business: selling identical or
similar goods such as fluorescent bulbs, incandescent lights,
starters and ballasts. In determining similarity and likelihood of
confusion, jurisprudence has developed two 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. While
the holistic or totality test necessitates a consideration of the
entirety of the marks as applied to the products, including the
labels and packaging, in determining confusing similarity. The
discerning eye of the observer must focus not only on the
predominant words, but also on the other features appearing
on both labels so that the observer may draw conclusion on
whether one is confusingly similar to the other.
Applying the dominancy test in the case at bar
required the Court to look only at the mark submitted by
PHILITES in its application, while giving importance to the
aural and visual impressions the mark is likely to create in the
minds of the buyers. The Court agrees with the findings of the
CA that the mark “PHILITES” bears an uncanny resemblance
or confusing similarity with respondent’s mark “PHILIPS.” An
examination of the trademarks shows that their dominant or
prevalent feature is the five-letter “PHILI,” for “PHILIPS” and
“PHILITES” respectively. The marks are confusingly similar
with each other such that an ordinary purchaser can conclude
an association or relation between the marks. The consuming
public does not have the luxury of time to ponder the phonetic
sounds of the trademarks, to find out which one has a short or
long vowel sound. At bottom, the letters “PHILI” visually catch
the attention of the consuming public and the use of
respondent’s trademark will likely deceive or cause confusion.
Most importantly, both trademarks are used in the sale of the
same goods, which are light bulbs. The confusing similarity
becomes even more prominent when we examine the entirety
of the marks used by both parties, including the way the
products are packaged.
In using the holistic test, the Court find that there is a confusing
similarity between the registered marks “PHILIPS” and
“PHILITES,” and note that the mark PHILITES seeks to register
is vastly different from that which it actually uses in the
packaging of its products. The holistic test entails a
consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining
confusing similarity. A comparison between PHILIPS’s
registered trademark “PHILIPS” as used in the wrapper or
packaging of its light bulbs and that of PHILITES’s applied for
trademark “PHILITES” as depicted in the container or actual
wrapper/packaging of the latter’s light bulbs will readily show
that there is a strong similitude and likeness between the two
trademarks that will likely cause deception or confusion to the
purchasing public. The fact that the parties’ wrapper or
packaging reflects negligible differences considering the use of
a slightly different font and hue of the yellow is immaterial
because taken in their entirety, PHLITES’s trademark
“PHILITES” will likely cause confusion or deception to the
ordinary purchaser with a modicum of intelligence.
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.
Thereafter, respondent filed its answer and at the pre-trial, the
parties submitted the following partial stipulation of facts:
. The petitioner’s corporate name is ‘CONVERSE
RUBBER CORPORATION' and has been in existence
since July 31, 1946; it is duly organized under the
laws of Massachusetts, USA and doing business at
392 Pearl St., Malden, County of Middlesex,
Massachusetts;
. Petitioner is not licensed to do business in the
Philippines and it is not doing business on its own in
the Philippines; and,
. Petitioner manufacturers rubber shoes and uses
thereon the trademarks ‘CHUCK TAYLOR' and ‘ALL
STAR AND DEVICE'.1
At the trial, petitioner’s lone witness, Mrs. Carmen B. Pacquing,
a duly licensed private merchant with stores at the Sta. Mesa
Market and in Davao City, testified that she had been selling
CONVERSE rubber shoes in the local market since 1956 and
that sales of petitioner’s rubber shoes in her stores averaged
twelve to twenty pairs a month purchased mostly by basketball
players of local private educational institutions like Ateneo, La
Salle and San Beda.
Mrs. Pacquing, further stated that she knew petitioner’s
rubber shoes came from the United States “because it says
there in the trademark Converse Chuck Taylor with star red or
blue and is a round figure and made in U.S.A. “2 In the
invoices issued by her store, the rubber shoes were described
as “Converse Chuck Taylor",3 “Converse All Star,"4 “All Star
Converse Chuck Taylor,"5 or “Converse Shoes Chuck
Taylor."6 She also affirmed that she had no business
connection with the petitioner.
Respondent, on the other hand, presented as its lone
witness the secretary of said corporation who testified that
respondent has been selling on wholesale basis “Universal
Converse” sandals since 1962 and “Universal Converse” rubber
shoes since 1963. Invoices were submitted as evidence of such
sales. The witness also testified that she had no idea why
respondent chose “Universal Converse” as a trademark and
that she was unaware of the name “Converse” prior to her
corporation’s sale of “UniversalConverse” rubber shoes and
rubber sandals.
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.
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.

SOMBOONSAKDIKUL v. ORLANE
SERI SOMBOONSAKDIKUL, Petitioner vs. ORLANE S.A.,
Respondent
G.R. No. 188996
February 1, 2017
Facts:
On September 23, 2003, petitioner Seri Somboonsakdikul
(petitioner) filed an application for registration of the mark
LOLANE with the IPO for goods classified under Class 3
(personal care products) of the International Classification of
Goods and Services for the Purposes of the Registration of
Marks (International Classification of Goods). Orlane S.A.
(respondent) filed an opposition to petitioner's application, on
the ground that the mark LOLANE was similar to ORLANE in
presentation, general appearance and pronunciation, and thus
would amount to an infringement of its mark. Respondent
alleged that: (1) it was the rightful owner of the ORLANE mark
which was first used in 1948; (2) the mark was earlier
registered in the Philippines on July 26, 1967 under
Registration No. 129961 with the following goods: x x x
perfumes, toilet water, face powders, lotions, essential oils,
cosmetics, lotions for the hair, dentrifices, eyebrow pencils,
make-up creams, cosmetics & toilet preparations under
Registration No. 12996 and (3) on September 5, 2003, it filed
another application for use of the trademark on its additional
products.
Petitioner denied that the LOLANE mark was confusingly
similar to the mark ORLANE. He averred that he was the lawful
owner of the mark LOLANE which he has used for various
personal care products sold worldwide. He alleged that the first
worldwide use of the mark was in Vietnam on July 4, 1995.
Petitioner also alleged that he had continuously marketed and
advertised Class 3 products bearing LOLANE mark in the
Philippines and in different parts of the world and that as a
result, the public had come to associate the mark with him as
provider of quality personal care products.
Petitioner maintained that the marks were distinct and not
confusingly similar either under the dominancy test or the
holistic test.
The Bureau of Legal Affairs (BLA) rejected petitioner's
application in a Decision dated February 27, 2007, finding that
respondent's application was filed, and its mark registered,
much earlier. The BLA ruled that there was likelihood of
confusion based on the following observations: (1) ORLANE
and LOLANE both consisted of six letters with the same last
four letters - LANE; (2) both were used as label for similar
products; (3) both marks were in two syllables and that there
was only a slight difference in the first syllable; and (4) both
marks had the same last syllable so that if these marks were
read aloud, a sound of strong similarity would be produced and
such would likely deceive or cause confusion to the public as to
the two trademarks.16
Petitioner filed a motion for reconsideration but this was denied
by the Director of the BLA on May 7, 2007. On appeal, the
Director General of the IPO affirmed the Decision of the BLA
Director. Thus, petitioner filed a petition for review before the
CA arguing that there is no confusing similarity between the
two marks. The Court of Appeals denied the petition and held
that there exists colorable imitation of respondent's mark by
LOLANE. The CA accorded due respect to the Decision of the
Director General and ruled that there was substantial evidence
to support the IPO's findings of fact. Applying the dominancy
test, the CA ruled that LOLANE' s mark is confusingly or
deceptively similar to ORLANE.
Issue:
Wether or not there is confusing similarity between ORLANE
and LOLANE which would bar the registration of LOLANE
before the IPO.
Ruling:
No, there is no confusing similarity between ORLANE and
LOLANE which would bar the registration of LOLANE before
the IPO. The Court ruled that the CA erred when it affirmed the
Decision of the IPO.
There is no colorable imitation between the marks LOLANE
and ORLANE which would lead to any likelihood of confusion
to the ordinary purchasers. A trademark is defined under
Section 121.1 of RA 8293 as any visible sign capable of
distinguishing the goods. It is susceptible to registration if it is
crafted fancifully or arbitrarily and is capable of identifying and
distinguishing the goods of one manufacturer or seller from
those of another. Thus, the mark must be distinctive. The
registrability of a trademark is governed by Section 123 of RA
8293. Section 123.1 provides: Section 123. 1. A mark cannot
be registered if it: xxx...d. Is identical with a registered mark
belonging to a different proprietor or a mark with an earlier
filing or priority date, in respect of: i. The same goods or
services, or ii. Closely related goods or services, or iii. If it
nearly resembles such a mark as to be likely to deceive or
cause confusion; e. Is identical with, or confusingly similar to,
or constitutes a translation of a mark which is considered by
the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is
registered here, as being already the mark of a person other
than the applicant for registration, and used for identical or
similar goods or services: provided, that in determining whether
a mark is well-known, account shall be taken of the knowledge
of the relevant sector of the public, rather than of the public at
large, including knowledge in the Philippines which has been
obtained as a result of the promotion of the mark; xxx.
In determining the likelihood of confusion, the Court must
consider: [a] the resemblance between the trademarks; [b] the
similarity of the goods to which the trademarks are attached; [c]
the likely effect on the purchaser and [d] the registrant's
express or implied consent and other fair and equitable
considerations. Likewise, the Court finding that LOLANE is not
a colorable imitation of ORLANE due to distinct visual and
aural differences using the dominancy test, it no longer finds
necessary to discuss the contentions of the petitioner as to the
appearance of the marks together with the packaging, nature
of the goods represented by the marks and the price
difference, as well as the applicability of foreign judgments.
The Court ruled that the mark LOLANE is entitled to
registration. Hence, the petition is GRANTED and the Decision
of the Court of Appeals dated July 14, 2009 is REVERSED and
SET ASIDE.
MANG INASAL v. IFP MANUFACTURING CORPORATION
MANG INASAL PHILIPPINES, INC., Petitioner Vs. IFP
MANUFACTURING CORPORATION, Respondent
G.R. No. 221717
June 19, 2017
FACTS:
The Trademark Application and the Opposition Respondent
IFP Manufacturing Corporation is a local manufacturer of
snacks and beverages.
On May 26, 2011, respondent filed with the Intellectual
Property Office (IPO) an application for the registration of the
mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark"in
connection with goods under Class 30 of the Nice
Classification. The said mark, which respondent intends to use
on one of its curl snack products. The application of
respondent was opposed by petitioner Mang Inasal Philippines,
Inc. Petitioner is a domestic fast food company and the owner
of the mark "Mang Inasal, Home of Real Pinoy Style Barbeque
and Device" (Mang Inasal mark) for services under Class 43 of
the Nice Classification. The said mark, which was registered
with the IPO in 2006 and had been used by petitioner for its
chain of restaurants since 2003.
Petitioner, in its opposition, contended that the registration of
respondent's OK Hotdog Inasal mark is prohibited under
Section 123.l (d)(iii) of Republic Act No. (RA) 8293. Petitioner
averred that the OK Hotdog Inasal mark and the Mang Inasal
mark share similarities-both as to their appearance and as to
the goods or services that they epresent which tend to suggest
a false connection or association between the said marks and,
in that regard, would likely cause confusion on the part of the
public. As petitioner explained:
1. The OK Hotdog Inasal mark is similar to the Mang Inasal
mark. Both marks feature the same dominant element-i.e., the
word "INASAL"-printed and stylized in the exact same manner,
viz:
a. In both marks, the word "INASAL" is spelled using the same
font style and red color;
b. In both marks, the word "INASAL" is placed inside the same
black outline and yellow background; and
c. In both marks, the word "INASAL" is arranged in the same
staggered format.
2. The goods that the OK Hotdog Inasal mark is intended to
identify (i.e., curl snack products) are also closely related to the
services represented by the Mang Inasal mark (i.e., fast food
restaurants). Both marks cover inasal or inasal-flavored food
products. Petitioner's opposition was referred to the Bureau of
Legal Affairs (BLA) of the IPO for hearing and disposition.
ISSUE:
Whether or not the registration of respondent's OK Hotdog
Inasal mark is prohibited under Section 123.l (d) (iii) of
Republic Act No. (RA) 8293
HELD:
Yes. The OK Hotdog Inasal mark meets the two conditions of
the proscription under Sec. 123.l(d)(iii) of RA 8293. First, it is
similar to the Mang Inasal mark, an earlier mark. Second, it
pertains to goods that are related to the services represented
by such earlier mark.
The Proscription: Sec. 123.l(d)(iii) of RA 8293 A mark that is
similar to a registered mark or a mark with an earlier filing or
priority date (earlier mark) and which is likely to cause
confusion on the part of the public cannot be registered with
the IPO. Such is the import of Sec. 123.l(d)(iii) of RA 8293:
SECTION 123. Registrability. – 123. 1. A mark cannot be
registered if it:
Verily, to fall under the ambit of Sec. 123. l(d)(iii) and be
regarded as likely to deceive or cause confusion upon the
purchasing public, a prospective mark must be shown to meet
two (2) minimum conditions:
1. The prospective mark must nearly resemble or be similar to
an earlier mark; and
2. The prospective mark must pertain to goods or services that
are either identical, similar or related to the goods or services
represented by the earlier mark.
Given the foregoing premises, and applying the dominancy
test, we hold that the OK Hotdog Inasal mark is a colorable
imitation of the Mang Inasal mark.
First. The fact that the conflicting marks have exactly the
same dominant element is key. It is undisputed that the OK
Hotdog Inasal mark copied and adopted as one of its dominant
features the “INASAL” element of the Mang Inasal mark. Given
that the “INASAL” element is, at the same time, the dominant
and most distinctive feature of the Mang Inasal mark, the said
element’s incorporation in the OK Hotdog Inasal mark, thus,
has the potential to project the deceptive and false impression
that the latter mark is somehow linked or associated with the
former mark.
Second. The differences between the two marks are
trumped by the overall impression created by their similarity.
The mere fact that there are other elements in the OK Hotdog
Inasal mark that are not present in the Mang Inasal mark
actually does little to change the probable public perception
that both marks are linked or associated. It is worth reiterating
that the OK Hotdog Inasal mark actually brandishes a literal
copy of the most recognizable feature of the Mang Inasal
mark. We doubt that an average buyer catching a casual
glimpse of the OK Hotdog Inasal mark would pay more
attention to the peripheral details of the said mark than it
would to the mark’s more prominent feature, especially when
the same invokes the distinctive feature of another more
popular brand.
 All in all, we find that the OK Hotdog Inasal mark is similar
to the Mang Inasal mark.
 agreement relation to intellectual property right or the
repression of unfair competition wherein Philippines is also a
party; and b) An extension therein of reciprocal rights.

Moreoever, Article 6 of The Paris Convention, which governs

the protection of well-known trademarks, is a self-executing
provision and does not require legislative enactment to give it
effect in the member country. The essential requirement
therein is that the trademark must be well-known in the country
where protection is sought. In this case, Director Beltran-
SEHWANI INCORPORATED vs. IN-N-OUT BURGER, INC. Abelardo found that In-n-out Burger and Arrow Design is an
G.R. No. 171053 internationally well known mark as evidenced by its trademark
October 15, 2007 registrations around the world and its comprehensive
YNARES-SANTIAGO, J.: advertisements therein.

FACTS: 2. Yes. Section 151(b) of RA 8293 provides that a petition to

Respondent IN-N-OUT Burger, Inc., a foreign corporation
(California, USA), and not doing business in the Philippines,
filed before the Bureau of Legal Affairs of the IPO, an
administrative complaint against petitioners Sehwani, Inc. and
Benita’s Frites, Inc. for violation of intellectual property rights,
attorney’s fees and damages with prayer for the issuance of a
restraining order or writ of preliminary injunction.
Respondent, alleges that it is the owner of the tradename “IN-
N-OUT” and trademarks “IN-N-OUT,” “IN-N-OUT Burger &
Arrow Design” and “IN-N-OUT Burger Logo” which are used in
its business since 1948 up to the present. These tradename
and trademarks were registered in the United States as well as
in other parts of the world. Petitioner Sehwani allegedly had
obtained a trademark registration for the mark “IN N OUT” (with
the inside letter O formed like a star) without its authority.
cancel a registration of a mark 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 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 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 goods or services on or in
connection with which the mark is used. The evidence showed
that not only did the petitioners use the IN-N-OUT Burger
trademark for the name of their restaurant, but they also used
identical or confusingly similar mark for their hamburger
wrappers and French-fries receptacles, thereby effectively
misrepresenting the source of the goods and services.

In their answer with counterclaim, petitioners alleged that

respondent lack the legal capacity to sue because it was not
doing business in the Philippines and that it has no cause of
action because its mark is not registered or used in the
Philippines. Petitioner Sehwani, Inc. also claimed that as the
registered owner of the "IN-N-OUT" mark, it enjoys the
presumption that the same was validly acquired and that it has
the exclusive right to use the mark. Moreover, petitioners
argued that other than the bare allegation of fraud in the
registration of the mark, respondent failed to show the
existence of any of the grounds for cancellation thereof under
Section 151 of Republic Act (R.A.) No. 8293, otherwise known
as The Intellectual Property Code of the Philippines.

The Bureau ruled in favor of In-N-Out and cancelled the

registration of Shwani.

ISSUE/S:
1. Whether or not the Respondent has the legal capacity to sue
for the protection of its trademarks albeit it is not doing
business in the Philippines

2. Whether or not a ground exists for the cancellation of the

Petitioners’ registration

RULING:

1. Yes. Section 160 RA No. 8293 provides for the right of

foreign corporations to sue in trademark or service mark
enforcement action, provided that it meets the requirements
under Section 3 thereof, which are a) Any convention, treaty or
246 Corporation v. Daway (G.R. No. 157216)
Facts:
La Chemise Lacoste v. Fernandez (G.R. No. L-63796-97)
Respondents Montres Rolex and Rolex Centre Phil.,
Facts:
owners/proprietors of Rolex and Crown Device, filed a
complaint for trademark infringement alleging petitioner
Petitioner La Chemise Lacoste is a foreign corporation and the
adopted and used without authority the mark ‘Rolex’ in its
actual owner of the trademarks ‘Lacoste,’ ‘Chemise Lacoste,’
business name ‘Rolex Music Lounge.’ Petitioner argued that
and ‘Crocodile Device’ used on clothing and other goods that
there is no trademark infringement since no confusion would
are sold in many parts of the world. Herein respondent
arise by the use of ‘Rolex’ considering that its entertainment
Hemadas & Co., a domestic firm, applied and was granted
business is totally unrelated to respondent’s business or
registration of the mark ‘Chemise Lacoste and Crocodile
products such as watches, clocks, etc.
Device’ for its garment products. Sometime later, petitioner
applied for the registration of its mark ‘Crocodile Device’ and
Issue:
‘Lacoste’ but was opposed by herein respondent. Later,
petitioner filed a letter-complaint of unfair competition before
Whether or not likelihood of confusion would arise from the use
the NBI which led to the issuance of search warrants and the
of identical marks over unrelated goods/business.
seizure of goods of respondent Hemadas. Respondent moved
to quash the warrants alleging that its trademark was different
Ruling: YES.
from petitioner’s trademark. Respondent court ruled to set
aside the warrants and to return the seized goods.
Under the old Trademark Law where the goods for which the
identical marks are used are unrelated, there can be no
Issue:
likelihood of confusion and there is therefore no infringement in
the use by the junior user of the registered mark on the entirely
Whether or not petitioner’s trademark is a well-known mark
different goods. This ruling, however, has been to some extent,
protected under the Paris Convention.
modified by Section 123.1(f) of the Intellectual Property Code.
Ruling: YES.
A junior user of a well-known mark on goods or services which
are not similar to the goods or services, and are therefore
In upholding the right of the petitioner to maintain the present
unrelated, to those specified in the certificate of registration of
suit before our courts for unfair competition or infringement of
the well-known mark is precluded from using the same on the
trademarks of a foreign corporation, we are moreover
entirely unrelated goods or services, subject to the following
recognizing our duties and the rights of foreign states under the
requisites, to wit:
Paris Convention for the Protection of Industrial Property to
which the Philippines and France are parties.
The mark is well-known internationally and in the Philippines.
The use of the well-known mark on the entirely unrelated
Pursuant to this obligation, the Ministry of Trade issued a
goods or services would indicate a connection between such
memorandum addressed to the Director of the Patents Office
unrelated goods or services and those goods or services
directing the latter to reject all pending applications for
specified in the certificate of registration in the well known
Philippine registration of signature and other world famous
mark. This requirement refers to the likelihood of confusion of
trademarks by applicants other than its original owners or
origin or business or some business connection or relationship
users. The conflicting claims over internationally known
between the registrant and the user of the mark.
trademarks involve such name brands as Lacoste, et. al. It is
The interests of the owner of the well-known mark are likely to
further directed that, in cases where warranted, Philippine
be damaged. For instance, if the registrant will be precluded
registrants of such trademarks should be asked to surrender
from expanding its business to those unrelated good or
their certificates of registration, if any, to avoid suits for
services, or if the interests of the registrant of the well-known
damages and other legal action by the trademarks’ foreign or
mark will be damaged because of the inferior quality of the
local owners or original users.
good or services of the user.
The Intermediate Appellate Court, in the La Chemise Lacoste
*Section 123.1(f) is clearly in point because the Music Lounge
S.A. v. Sadhwani decision which we cite with approval
of petitioner is entirely unrelated to respondents’ business
sustained the power of the Minister of Trade to issue the
involving watches, clocks, bracelets, etc. However, the Court
implementing memorandum and declared La Chemise Lacoste
cannot yet resolve the merits of the present controversy
S.A. the owner of the disputed trademark, stating: “In the case
considering that the requisites for the application of Section
at bar, the Minister of Trade, as ‘the competent authority of the
123.1(f), which constitute the kernel issue at bar, clearly
country of registration,’ has found that among other well-known
require determination facts of which need to be resolved at the
trademarks ‘Lacoste’ is the subject of conflicting claims. For
trial court.
this reason, applications for its registration must be rejected or
refused, pursuant to the treaty obligation of the Philippines.”
Lyceum of the Philippines v. CA (G.R. No. 101897)
Facts:
Petitioner is an educational institution duly registered with the
Securities and Exchange Commission ("SEC"). When it first
registered with the SEC on 21 September 1950, it used the
corporate name Lyceum of the Philippines, Inc. and has used that
name ever since.
petitioner instituted proceedings before the SEC to compel the
private respondents, which are also educational institutions, to
delete the word "Lyceum" from their corporate names and
permanently to enjoin them from using "Lyceum" as part of their
respective names.
Some of the private respondents actively participated in the
proceedings before the SEC. These are the following, the dates of
their original SEC registration being set out below opposite their
respective names:
Western Pangasinan Lyceum—27 October 1950
Lyceum of Cabagan—31 October 1962
Lyceum of Lallo, Inc.—26 March 1972
Lyceum of Aparri—28 March 1972
Lyceum of Tuao, Inc.—28 March 1972
Lyceum of Camalaniugan—28 March 1972
The background of the case at bar needs some recounting.
Petitioner had sometime before commenced in the SEC a
proceeding against the Lyceum of Baguio, Inc. to require it to
change its corporate name and to adopt another name not "similar
[to] or identical" with that of petitioner. Associate Commissioner
Julio Sulit held that the corporate name of petitioner and that of
the Lyceum of Baguio, Inc. were substantially identical because of
the presence of a "dominant" word, i.e., "Lyceum," the name of
the geographical location of the campus being the only word which
distinguished one from the other corporate name. The SEC also
noted that petitioner had registered as a corporation ahead of the
Lyceum of Baguio, Inc. in point of time,1 and ordered the latter to
change its name to another name "not similar or identical [with]"
the names of previously registered entities.
The SEC hearing officer rendered a decision sustaining
petitioner's claim to an exclusive right to use the word "Lyceum."
The hearing officer relied upon the SEC ruling in the Lyceum of
Baguio, Inc. case and held that the word "Lyceum" was capable of
appropriation and that petitioner had acquired an enforceable
exclusive right to the use of that word.
On appeal, however, by private respondents to the SEC En
Banc, the decision of the hearing officer was reversed and set
aside. The SEC En Banc did not consider the word "Lyceum" to
have become so identified with petitioner as to render use thereof
by other institutions as productive of confusion about the identity
of the schools concerned in the mind of the general public. Unlike
its hearing officer, the SEC En Banc held that the attaching of
geographical names to the word "Lyceum" served sufficiently to
distinguish the schools from one another, especially in view of the
fact that the campuses of petitioner and those of the private
respondents were physically quite remote from each other.3
Petitioner then went on appeal to the Court of Appeals. In its
Decision dated 28 June 1991, however, the Court of Appeals
affirmed the questioned Orders of the SEC En Banc.4 Petitioner
filed a motion for reconsideration, without success.
Issues:
(1) Whether or not ‘Lyceum’ is a generic word which cannot be
appropriated by petitioner to the exclusion of others.
(2) Whether or not the word ‘Lyceum’ has acquired a
secondary meaning in favor of petitioner.
(3) Whether or not petitioner is infringed by respondent
institutions’ corporate names.
Ruling:
(1) YES. “Lyceum” is in fact as generic in character as the word
“university.” In the name of the petitioner, “Lyceum” appears to
be a substitute for “university;” in other places, however,
“Lyceum,” or “Liceo” or “Lycee” frequently denotes a secondary
school or a college. It may be that the use of the word
“Lyceum” may not yet be as widespread as the use of
“university,” but it is clear that a not inconsiderable number of
educational institutions have adopted “Lyceum” or “Liceo” as
part of their corporate names. Since “Lyceum” or “Liceo”
denotes a school or institution of learning, it is not unnatural to
use this word to designate an entity which is organized and
operating as an educational institution.
(2) NO. Under the doctrine of secondary meaning, a word or
phrase originally incapable of exclusive appropriation with
reference to an article in the market, because geographical or
otherwise descriptive might nevertheless have been used so
long and so exclusively by one producer with reference to this
article that, in that trade and to that group of the purchasing
public, the word or phrase has come to mean that the article
was his produce. With the foregoing as a yardstick, [we]
believe the appellant failed to satisfy the aforementioned
requisites. While the appellant may have proved that it had
been using the word ‘Lyceum’ for a long period of time, this fact
alone did not amount to mean that the said word had acquired
secondary meaning in its favor because the appellant failed to
prove that it had been using the same word all by itself to the
exclusion of others. More so, there was no evidence presented
to prove that confusion will surely arise if the same word were
to be used by other educational institutions.
(3) NO. We do not consider that the corporate names of private
respondent institutions are “identical with, or deceptively or
confusingly similar” to that of the petitioner institution. True
enough, the corporate names of private respondent entities all
carry the word “Lyceum” but confusion and deception are
effectively precluded by the appending of geographic names to
the word “Lyceum.” Thus, we do not believe that the “Lyceum
of Aparri” can be mistaken by the general public for the
Lyceum of the Philippines, or that the “Lyceum of
Camalaniugan” would be confused with the Lyceum of the
Philippines. We conclude and so hold that petitioner institution
is not entitled to a legally enforceable exclusive right to use the
word “Lyceum” in its corporate name and that other institutions
may use “Lyceum” as part of their corporate names.
De La Salle Montessori International of Malolos vs. De La
Salle Brothers
G.R. No. 205548, February 7, 2018 Jardeleza, J.
FACTS
The Petitioner reserved with the SEC its corporate name De La
Salle Montessori International Malolos, Inc. from June August
2007,the SEC issued a certificate of incorporation to petitioner
and DepEd Region III granted petitioner government
recognition for its pre-elementary and elementary and for its
secondarycourses.
The respondents, De La Salle Brothers et al. filed a petition
with the SEC seeking to compel petitioner to change its
corporate name, claiming that petitioner's corporate name is
confusingly similar to that which respondents have acquired a
prior right to use, and that respondents' consent to use such
name was not obtained.
Thus, The SEC-OGC issued an Orderdirecting petitioner to
change or modify its corporate name. It held, among others,
that respondents have acquired the right to the exclusive use
of the name "La Salle" with freedom from infringement by
priority of adoption, as they have all been incorporated using
the name ahead of petitioner.
The SEC OGC disagreed with petitioner's argument that the
case of Lyceum of the Philippines, Inc. v. Court of Appeals15
applies since the word "lyceum" is clearly descriptive of the
very being and defining purpose of an educational corporation,
unlike the term "De La Salle" or "La Salle."16 Hence, the Court
held in that case that the Lyceum of the Philippines, Inc. cannot
claim exclusive use of the name "lyceum."
Generic terms are those which constitute "the common
descriptive name of an article or substance," or comprise the
"genus of which the particular product is a species," or are
"commonly used as the name or description of a kind of
goods," or "characters," or "refer to the basic nature of the
wares or services provided rather than to the more
idiosyncratic characteristics of a particular product," and are
not legally protectable.
In that case, the Lyceum of the Philippines, Inc., an educational
institution registered with the SEC, commenced proceedings
before the SEC to compel therein private respondents who
were all educational institutions, to delete the word "Lyceum"
from their corporate names and permanently enjoin them from
using the word as part of their respective names.
The Court there held that the word "Lyceum" today generally
refers to a school or institution of learning. It is as generic in
character as the word "university." Since "Lyceum" denotes a
school or institution of learning, it is not unnatural to use this
word to designate an entity which is organized and operating
as an educational institution.
Here, the phrase "De La Salle" is not generic in relation to
respondents. It is not descriptive of respondent's business as
institutes of learning, unlike the meaning ascribed to "Lyceum."
There is thus no similarity between the Lyceum of the
Philippines case and this case that would call for a similar
ruling.

On appeal, both SEC en banc and Court of Appeals affirmed

the decision of the SEC OSG. Hence this present petition.

ISSUE: Whether or not there exists a confusing similarity in the

names of the petitioners and the respondents.

RULING
YES. The Supreme Court held that a corporation's right to use
its corporate and trade name is a property right, a right in rem,
which it may assert and protect against the world in the same
manner as it may protect its tangible property, real or personal,
against trespass or conversion.24 It is regarded, to a certain
extent, as

a property right and one which cannot be impaired or defeated

by subsequent appropriation by another corporation in the
same field.

Petitioner's assertion that the words "Montessori International

of Malolos, Inc." are four distinctive words that are not found in
respondents' corporate names so that their corporate name is
not identical, confusingly similar, patently deceptive or contrary
to existing laws,38 does not avail. As correctly held by the SEC
OGC, all these words, when used with the name "De La Salle,"
can reasonably mislead a person using ordinary care and
discretion into thinking that petitioner is an affiliate or a branch
of, or is likewise founded by, any or all of the respondents,
thereby causing confusion.