Distelleria Washington v.

CA,
[G.R. No. 120961.  October 17, 1996]
DISTILLERIA WASHINGTON, INC. or WASHINGTON DISTILLERY, INC.,
Petitioner,
vs.
THE HONORABLE COURT OF APPEALS and LA TONDEÑA DISTILLERS, INC.,
Respondents
 
Doctrine:
It is to be pointed out that a trademark refers to a word, name, symbol,
emblem, sign or device or any combination thereof adopted and used by a
merchant to identify, and distinguish from others, his goods of commerce.  It is
basically an intellectual creation that is  susceptible to ownership and,
consistently therewith, gives rise   to  its own elements of jus posidendi, jus
utendi, jus fruendi, jus disponendi, and   jus abutendi, along with  the 
applicable jus lex,  comprising that ownership.

Facts:·        
LTDI, under a claim of ownership, sought to seize from Distilleria Washington
18,157 empty “350 c.c. white flint bottles” bearing the blown-in marks of “La
Tondeña Inc.” and “Ginebra San Miguel.”   The court, on application of LTDI,
issued an order of replevin on 05 November 1987 for the seizure of the empty
gin bottles from Washington.  These bottles, it was averred, were being used by
Washington for its own “Gin Seven” products without the consent of
LTDI.·         
LTDI asserted that, being the owner and registrant of the bottles, it was
entitled to the protection so extended by Republic Act (“R.A.”) No. 623, as
amended, notwithstanding its sale of the Ginebra San Miguel gin product
contained in said bottles.·        
Washington countered that R.A. No. 623, invoked by LTDI, should not apply to
gin, an alcoholic beverage which is unlike that of “soda water, mineral or
aerated water, ciders, milks, cream, or other lawful beverages” mentioned in
the law, and that, in any case, ownership of the bottles should, considering the
attendant facts and circumstances, be held lawfully transferred to the buyers
upon the sale of the gin and containers at a single price.·       

Trial court ruled:

complaint is hereby DISMISSED and plaintiff is ordered:§  “1.To return to
defendant the 18,157 empty bottles seized by virtue of the writ for the Seizure
of Personal Property issued by this Court on November 6, 1987;§   “2.  In the
event of failure to return said empty bottles, plaintiff is ordered  to indemnify
defendant in the amount  ofP18,157.00 representing the value of the
bottles.·       

CA ruled in favor of LTDI:

The appellant (LTDI), being the owner, is authorized to retain in its possession
the 18,157bottles registered in its name delivered to it by the sheriff following
their seizure from the appellee pursuant to the writ of
replevin issued by the trial court on November 6, 1987
Issue:
Whether or not ownership of the empty bottles was transferred to Washington

Held: NO
The mere use of registered bottles or containers without the written consent of
the manufacturer is prohibited, the only exceptions being when they are used
as containers for ‘sisi,’ ‘bagoong,’ ‘patis’ and similar native products.·       
Republic Act No. 623 which governs the registration of marked bottles and
containers merely requires that the bottles, in order to be eligible for
registration, must be stamped or marked with the names of the manufacturers
or the names of their principals or products, or other marks of ownership.  No
drawings or labels are required but, instead, two photographs of the container,
duly signed by the applicant, showing clearly and legibly the names and other
marks of ownership sought to be registered and a bottle showing the name or
other mark or ownership, irremovably stamped or marked, shall be submitted.
It cannot be gainsaid that ownership of the containers does pass on to the
consumer albeit subject to the statutory limitations on the use of the registered
containers and to the trademark rights of the registrant.  The statement in
Section 5 of R.A. 623 to the effect that the “sale of beverage contained in the
said containers shall not include the sale of the containers unless specifically
so provided” is not a rule of proscription.  It is a rule of construction that, in
keeping with the spirit and intent of the law, establishes at best a presumption
(of non-conveyance of the container) and which by no means can be taken to
be either interdictive or conclusive in character.  Upon the other hand, LTDI’s
sales invoice, stipulating that the “sale does not include the bottles with the
blow-in marks of ownership of La Tondeña Distillers,” cannot affect those who
are not privies thereto.
Dispositive:
WHEREFORE, the decision of the appellate court is MODIFIED by ordering
LTDI to pay petitioner just compensation for the seized bottles.  Instead,
however, of remanding the case to the Court of Appeals to receive evidence on,
and thereafter resolve, the assessment thereof, this Court accepts and
accordingly adopts the quantification of P18,157.00 made by the trial court. 
No costs.
 
 
Submitted by: Darwin D. Alcala
 DISTILLERIA WASHINGTON, INC VS LA TONDEÑA DISTILLERS, INC
GR NO. 120961, OCTOBER 2, 1997

FACTS:

The petitioner sought a second motion for reconsideration of the decision of the SC last October
1996.

To recall, La Tondeña Distillers filed before the RTC for the recovery, under its claim of
ownership, of possession or replevin against Distilleria Washington of empty bottles bearing the
blown-in marks of “La Tondeَña” and “Ginebra San Miguel”, averring that Distilleria
Washington was using the bottles for its own “Gin Seven” products without the consent of
Distilleria Washington in violation of RA 623.

The trial court in its decision dismissed the complaint, upholding Distillera Washington’s
contention that a purchaser of liquor pays only a single price for the liquor and the bottle and is
not required to return the bottle at any time. The CA reversed the trial court’s decision, ruling
that RA 623, the use of marked bottles by any person other than the manufacturer, bottler or
seller without the latter’s consent, is unlawful. It emphasized that the marks of La Tondeña’s
ownership stamped or blown-in to the bottles are sufficient notice to the public that the bottles
are La Tondeña’s property; hence Distillera Washington cannot be considered a purchaser in
good faith.

ISSUE:

Whether or not Washington Distillery’s used of the bottles violate trademark protection of the
registrant, La Tondeña Distiller afforded by RA 623, as amended.

RULING:

Yes. The Court held that ownership of the bottles had passed to the consumer, ultimately, to
Washington Distillery Inc., it held that it may not use the bottles because of the trademark
protection of the registrant. The Court affirmed with modifications the CA’s decisions, the Court
at least implicitly acknowledged that there was a valid transfer of the bottles, except that its
possession of the bottles was without the consent of La Tondeña gives rise to a prima facie
presumption of illegal use under RA 623. There is no showing, and it cannot be assumed, that if
Distillera Washington would have possession of the bottles, it will exercise to other attributes of
ownership, along with the applicable jus lex over the “marks of ownership stamped or marked on
the bottles.

Submitted by: Camilo Corsino

ETEPHA, A.G., vs. DIRECTOR OF PATENTS

GR NO. L-20635, MARCH 31, 1966

Facts:

Respondent Westmont Pharmaceuticals, an American corporation, sought registration of

trademark ‘Atussin’ placed on its medicinal preparation for the treatment of coughs. Petitioner
Etepha, owner of the trademark ‘Pertussin’ placed also on preparation for cough treatment,
objected claiming that it will be damaged since the 2 marks are confusingly similar. The Director
of Patents gave due course to the application.

Issue:

Whether or not petitioner’s trademark is registrable.

Ruling: YES.

That the word “tussin” figures as a component of both trademarks is nothing to wonder at. The
Director of Patents aptly observes that it is “the common practice in the drug and pharmaceutical
industries to ‘fabricate’ marks by using syllables or words suggestive of the ailments for which
they are intended and adding thereto distinctive prefixes or suffixes”. And appropriately to be
considered now is the fact that, concededly, the “tussin” (in Pertussin and Atussin) was derived
from the Latin root-word “tussis” meaning cough.

“Tussin” is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin
of the goods; it is open for appropriation by anyone. It is accordingly barred from registration as
trademark. With jurisprudence holding the line, we feel safe in making the statement that any
other conclusion would result in “appellant having practically a monopoly” of the word “tussin”
in a trademark. While “tussin” by itself cannot thus be used exclusively to identify one’s goods,
it may properly become the subject of a trademark “by combination with another word or
phrase”. And this union of words is reflected in petitioner’s Pertussin and respondent’s Atussin,
the first with prefix “Per” and the second with Prefix “A.”

Submitted by: Arvin Ricafort

Phil Refining v, Ng Sam Digest
Phil. Refining Co. v. Ng Sam and Director of Patents G.R. No. L-26676, July
30, 1982
Facts of the Case: The petitioner Philippine Refining Co. first used'Camia' as trademark for its
products in 1922. In 1949, it caused the registration of the said trademark for its lard, butter,
cooking oil, detergents, polishing materials and soap products. In 1960, Ng Sam filed an
application for 'Camia' for its ham product (Class 47), alleging its first use in 1959. The
petitioner opposed the said application but the Patent Office allowed the registration of Ng Sam.

Issue: Is the product of Ng Sam (Ham) and those of the petitioner so related that the use of
the trademark 'Camia' on said goods would result to confusion as to their origin?

HELD: NO. The businesses of the parties are non-competitive and the products are so unrelated
that the use of the same trademark will not give rise to confusion nor cause damage to the
petitioner. The right to a trademark is a limited one, hence, others may use the same mark on
unrelated goods if no confusion would arise.

A trademark is designed to identify the user, hence, it should be so distinctive and sufficiently
original so as to enable those who see it to recognize instantly its source or origin. A trademark
must be affirmative and definite, significant and distinctive and capable of indicating origin.

'Camia' as a trademark is far from being distinctive, It in itself does not identify the petitioner as
the manufacturer of producer of the goods upon which said mark is used. If a mark is so
commonplace, it is apparent that it can't identify a particular business and he who adopted it first
cannot be injured by any subsequent appropriation or imitation by others and the public will not
be deceived.

Mere classification of the goods cannot serve as the decisive factor in the resolution of whether
or not the goods a related. Emphasis should be on the similarity of products involved and not on
arbitrary classification of general description of their properties or characteristics.

Submitted by: Ariel P. Ramada

Converse Rubber Corporation and Edwardson manufacturing Corporation vs. Jacinto Rubber
and Plastics Co., Inc and Ace Rubber and Plastics Corporation
April 28, 1980

Facts

Converse Rubber alleged that "Custombuilt" shoes are Identical in design and General appearance to
"Chuck Taylor" and, claiming prior Identification of "Chuck Taylor" in the mind of the buying public in
the Philippines, they contend that defendants are guilty of unfair competition by manufacturing
and selling "Custombuilt" in the Philippines rubber shoes having the same or confusingly similar
appearance as plaintiff Converse Rubber's Converse Chuck Taylor All Star' rubber shoes. Jacinto
Rubber contends that there is no unfair competition because the general appearance between
"Custombuilt" and "Chuck Taylor" are not the same. Jacinto Rubber alleged that "Custombuilt" is
readily Identifiable by the trade name "Custombuilt" appearing on the ankle patch, the heel patch, and
on the sole. Furthermore Jacinto contended that the registration of Jacinto Rubber's
trademark"Custombuilt" being prior to the registration in the Philippines of plaintiff Converse
Rubber'strademark "Chuck Taylor", plaintiffs have no cause of action.

Issue
Whether or not the defendant appellants are guilty of unfair completion.

Ruling

Yes. The Sumpreme Court has held that in no uncertain terms, the statute on unfair competition extends
protection to the goodwill of a manufacturer or dealer. It attaches no fetish to the word "competition". In
plain language it declares that a "person who has identified in the public the goods he manufactures or
deals in, his business or services from those of others, whether or not a right in the goodwill of the said
goods, business or services so Identified, which will be protected in the same manner as other property
rights." It denominates as "unfair competition" "any acts" calculated to result in the passing off of other
goods "for those of the one having established such goodwill." Singularly absent is a requirement that the
goodwill sought to be protected in an action for unfair competition must have been established in an
actual competitive situation. Nor does the law require that the deception or other means contrary to good
faith or any acts calculated to pass off other goods for those of one who has established a goodwill must
have been committed in an actual competitive situation. Plaintiffs-appellees have a established goodwill.
This goodwill, the trial court found, defendants-appellants have pirated in clear bad faith to their unjust
enrichment. It is strange that defendants-appellants now say that they should be spared from the penalty
of the law, because they were not really in competition with plaintiffs-appellant.

Varie A Villanobos
Student, Intellectual Property Law
Balbuena, Niñanne Nicole B.

PUMA vs. IAC

GR No. 75067
February 26, 1988

FACTS:

Petitioner, a foreign corporation duly organized and existing under the laws of the
Federal Republic of Germany and the manufacturer and producer of "PUMA PRODUCTS," filed
a complaint for infringement of patent or trademark with a prayer for the issuance of a writ of
preliminary injunction against the private respondent. However, prior to the filing of the said civil
suit, three cases were pending before the Philippine Patent Office.

The trial court issued a temporary restraining order, restraining the private respondent
and the Director of Patents from using the trademark "PUMA' or any reproduction, counterfeit
copy or colorable imitation thereof, and to withdraw from the market all products bearing the
same trademark.

Private respondent filed a motion to dismiss on the grounds that the petitioners'
complaint states no cause of action, petitioner has no legal personality to sue and litis
pendentia.

The trial court denied the motion to dismiss and at the same time granted the petitioner's
application for a writ of injunction. The Court of Appeals reversed the order of the trial court and
ordered the respondent judge to dismiss the civil case filed by the petitioner.

ISSUE:

Whether or not the petitioner, being a foreign corporation not doing business in the
Philippines, has the legal capacity to sue.

RULING:

YES. In the case of La Chemise Lacoste, S.A .v. Fernandez, the Court ruled that as
early as 1927, this Court was, and it still is, of the view that a foreign corporation not doing
business in the Philippines needs no license to sue before Philippine courts for infringement of
trademark and unfair competition.

Also in Western Equipment and Supply Co. v. Reyes, this Court held that a foreign
corporation which has never done any business in the Philippines and which is unlicensed and
unregistered to do business here, but is widely and favorably known in the Philippines through
the use therein of its products bearing its corporate and tradename, has a legal right to maintain
an action in the Philippines to restrain the residents and inhabitants thereof from organizing a
corporation therein bearing the same name as the foreign corporation, when it appears that they
have personal knowledge of the existence of such a foreign corporation, and it is apparent that
the purpose of the proposed domestic corporation is to deal and trade in the same goods as
those of the foreign corporation.

In the case of Converse Rubber Corporation V. Universal Rubber Products, Inc., we

likewise re-affirmed our adherence to the Paris Convention: the Union of Paris for the Protection
of Industrial Property to which the Philippines became a party on September 27, 1965. Article 8
thereof provides that 'a trade name [corporation name] shall be protected in all the countries of
the Union without the obligation of filing or registration, whether or not it forms part of the
trademark.

The mandate of the aforementioned Convention finds implementation in Section 37 of RA No.

166, otherwise known as the trademark Law:

Rights of Foreign Registrants. — Persons who are nationals of, domiciled in, or have a bona
fide or effective business or commercial establishment in any foreign country, which is a party to
an international convention or treaty relating to marks or tradenames on the represssion of
unfair competition to which the Philippines may be party, shall be entitled to the benefits and
subject to the provisions of this Act ...

Tradenames of persons described in the first paragraph of this section shall be protected
without the obligation of filing or registration whether or not they form part of marks.
 7. Sterling Products v Farbenfabriken Bayer

GR L-19906 April 30, 1969

FACTS:

The Bayer Cross in circle “trademark was registered in Germany in 1904 to Farbenfabriken vorm. Friedr.
Bayer (FFB), successor to the original Friedr. Bauyer et. Comp., and predecessor to Farbenfabriken Bayer
aktiengessel craft (FB2). The “Bayer, and “Bayer Cross in circle” trademarks were acquired by sterling
Drug Inc. when it acquired FFB’s subsidiary Bayer Co. of New York as a result of the sequestration of its
assets by the US Alien Property Custodian during World War I. Bayer products have been known in
Philippines by the close of the 19th century. Sterling Drugs, Inc., however, owns the trademarks “Bayer”
in relation to medicine. FBA attempted to register its chemical products with the “Bayer Cross in circle”
trademarks. Sterling Products International and FBA seek to exclude each other from use of the
trademarks in the Philippines. The trial court sustained SPI’s right to use the Bayer trademark for
medicines and directed FBA to add distinctive word(s) in their mark to indicate their products come from
Germany.” Both appealed.

ISSUE:

Whether or not SPI’s ownership of the trademarks extends to products not related to medicine.

RULING:

No. SPI’s certificates of registration as to the Bayer trademarks registered in the Philippines cover
medicines only. Nothing in the certificates include chemicals or insecticides. SPI thus may not claim “first
use” of the trademarks prior to the registrations thereof on any product other than medicines. For if
otherwise held, a situation may arise whereby an applicant may be tempte3d to register a trademark on
any and all goods which his mind may conceive even if he had never intended to use the trademark for
the said goods. Omnibus registration is not contemplated by the Trademark Law. The net result of the
decision is that SPI may hold on its Bayer trademark for medicines and FBA may continue using the same
trademarks for insecticide and other chemicals, not medicine. The formula fashioned by the lower court
avoids the mischief of confusion of origin, and does not visit FBA with reprobation and condemnation. A
statement that its product came from Germany anyhow is but a statement of fact.

Jules Yongco

CASE DIGEST

Mirpuri vs Court of Appeals

G.R. No. 114508 November 19, 1999
318 SCRA 516

FACTS:
          Lolita Escobar applied with the Bureau of Patents for the registration of the trademark
“Barbizon”, alleging that she had been manufacturing and selling these products since 1970.
private respondent Barbizon Corp opposed the application in IPC No. 686. The Bureau granted
the application and a certificate of registration was issued for the trademark “Barbizon”.
Escobar later assigned all her rights and interest over the trademark to petitioner Mirpuri. In
1979, Escobar failed to file with the Bureau the Affidavit of Use of the trademark. Due to his
failure, the Bureau cancelled the certificate of registration. Escobar reapplied and Mirpuri also
applied and this application was also opposed by private respondent in IPC No. 2049, claiming
that it adopted said trademark in 1933 and has been using it. It obtained a certificate from the
US Patent Office in 1934. Then in 1991, DTI cancelled petitioner’s registration and declared
private respondent the owner and prior user of the business name “Barbizon International”.
 

ISSUE:
          Whether or not the treaty (Paris Convention) affords protection to a foreign corporation
against a Philippine applicant for the registration of a similar trademark.
 

HELD:
          The Court held in the affirmative. RA 8293 defines trademark as any visible sign capable of
distinguishing goods. The Paris Convention 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. In short, foreign nationals are to be given the same
treatment in each of the member countries as that country makes available to its own citizens.
Nationals of the various member nations are thus assured of a certain minimum of
international protection of their industrial property.
ZENNIA ZON M. BANLUTA

Emerald garments vs. CA

FACTS:

Private respondent H.D. Lee Co., Inc., a foreign corporation, filed with the Bureau of Patents,
Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 for
the trademark “STYLISTIC MR. LEE” used on clothing and lingerie issued in the name of petitioner
Emerald Garment Manufacturing Corp., a domestic corporation organized and existing under Philippine
laws.

Petitioner contended that its trademark was entirely and unmistakably different from that of private
respondent and that its certificate of registration was legally and validly granted.

The Director of Patents found private respondent to be the prior registrant of the trademark “LEE” in
the Philippines and that it had been using said mark in the Philippines.

Moreover, the Director of Patents, using the test of dominancy, declared that petitioner’s trademark
was confusingly similar to private respondent’s mark because “it is the word ‘Lee’ which draws the
attention of the buyer and leads him to conclude that the goods originated from the same
manufacturer. It is undeniably the dominant feature of the mark.”

Petitioner appealed to the CA which in turn affirmed the decision of the Director of Patents.

ISSUE:

Whether or not petitioner’s trademark Stylistic Mr. Lee, is confusingly similar with the private
respondent’s trademark Lee or Lee-Rider, Lee-Leens and Lee-Sures.

RULING:

NO. Applying the foregoing tenets to the present controversy and taking into account the factual
circumstances of this case, we considered the trademarks involved as a whole and rule that petitioner’s
“STYLISTIC MR. LEE” is not confusingly similar to private respondent’s “LEE” trademark.

Petitioner’s trademark is the whole “STYLISTIC MR. LEE.” Although on its label the word “LEE” is
prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities
between the two marks become conspicuous, noticeable and substantial enough to matter especially in
the light of the following variables that must be factored in.
For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner’s use of its
own mark and for failure to establish confusing similarity between said trademarks, private
respondent’s action for infringement must necessarily fail.

Kristian Villanueva

Gabriel-Almoradie v CA, G.R. No. 91385, January 4, 1994

Facts: In 1953 when the late Dr. Jose Perez discovered beauty soap for bleaching which whitens or
sometimes softens the skin. A certificate of label approval was issued in his name by the Bureau of
Health on June 6, 1958 for the said product with the label reading "Dr. Perez' Wonder Beauty Soap." Not
surprisingly, he later developed an improved formula for his soap after continued laboratory
experimentation, for which he obtained another certificate of label approval from the Bureau of Health
on August 10, 1959, also describing the product as "Dr. Perez Wonder Beauty Soap.”

He entered into an agreement on January 1959 with a certain company named Manserco. This venture,
however, did not last long, as the corporation allegedly went bankrupt. He then terminated his
agreement with Manserco and forged an "Exclusive Distributorship Agreement" with Crisanta Y. Gabriel,
who happened to be the sister of Mariano S. Yangga. A series of legal battles transpired thereafter
between them in the Patent and Trademark Office, the trial court, the Court of Appeals and this Court.

On October 3, 1960, Gabriel filed an application with the Patent Office to register the trademark
"WONDER." Said application was denied on the ground that Gabriel was not the owner of the trademark
sought to be registered and that as shown in the labels submitted, it appeared that Dr. Jose R. Perez is
the owner of the said mark. On the other hand, on May 11, 1961, Perez obtained in his name a
certificate of registration No. SR-389 covering the same trademark "WONDER" for beauty soap.

Issue: Whether or not Gabriel has better right to the mark “WONDER”

Ruling: NO. Ultimately, what draws the axe against petitioners is the principle of "first to use" on which
our Trademark Law is based. We have said and reiterated in the case of La Chemise Lacoste v.
Fernandez, that:

The purpose of the law protecting a trademark cannot be overemphasized. They are to point out
distinctly the origin of ownership of the article to which it is affixed, to secure to him, who has
been instrumental in bringing into market a superior article of merchandise, the fruit of his
industry and skill, and to prevent fraud and imposition.

Sec. 2 of R.A. 166 states that as a condition precedent to registration the trademark, trade name or
service marks should have been in actual use in commerce in the Philippines before the time of the filing
of the application. A careful perusal of the record shows that although Go Hay, assignor of Gabriel, first
registered the trademark "Wonder GH" on October 17, 1958 while the registration of the trademark
"WONDER" in the name of Dr. Perez was registered in the Supplemental Register on May 11, 1961 and
then the Principal Register on January 3, 1978, the certificate of registration issued to Go Hay showed
that the mark "Wonder GH" was first used on July 1, 1958, while that of the mark "WONDER" in favor of
Dr. Perez was recorded to have been in use since March 3, 1953, or five (5) years prior to Go Hay's use.
Thus, all things being equal, it is then safe to conclude that Dr. Perez had a better right to the mark
"WONDER." The registration of the mark "Wonder GH" should have been cancelled in the first place
because its use in commerce was much later and its existence would likely cause confusion to the
consumer being attached on the product of the same class as that of the mark "WONDER."

Lyle Bucol
 American Wire & Cable Company vs Director of Patents
GR No. L-26557, February 18, 2970

FACTS:
In 1962, Central Banahaw Industries, applied with the Director of Patents for registration of the
trademark DYNAFLEX and Device to be used in connection with electric wires.

The American Wire and Cable Company, authorized user since 1958 of registered trademark DURAFLEX
and Globe representation, for electric wires, apparatus, machines and supplies, opposed the application
on the ground that applicant’s use of the trademark DYNAFLEX would cause confusion or result in
mistake to purchasers.

ISSUE:
Whether or not the mark DYNAFLEX and Device is registrable as label for electric wires, considering that
the trademark DURAFLEX and Globe representation also for electric wires has been registered more
than 4 years earlier.

RULING:
The determinative factor in a contest involving registration of trade mark is NOT whether the challenged
mark would actually cause confusion or deception of the purchasers but whether the use of such mark
would likely cause confusion or mistake on the part of the buying public.

Earlier ruling of the Court seem to indicate its reliance of the dominancy test or the assessment of the
essential or dominant features in the competing labels to determine whether they are confusingly
similar. On this matter, the Court said:

“xxx if the competing trademark contains the main or essential or dominant features of another,
and confusion and deception is likely to result, infringement takes place. xxx”

The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent.

Christine Toting
RF & J Alexander v. Ang, G.R. No. L-6707

Facts: The record shows that in two separate complaints, filed in Negros Occidental, the
plaintiffs sued defendants for selling sewing thread named "Aurora," "Mayflower" and
"Agatonica" with labels and in boxes, which in color design and general aspect closely
resembled those of the thread "Alexander" manufactured in Scotland by R. F. & J. Alexander
Co., Ltd., and distributed in the Philippines by Ker & Co. Ltd., for the last 50 years.

The defendants, denying the similarity, and disclaiming any intention to deceive the public or
defraud the plaintiffs, set up two specific defenses: (1) they were sellers — not manufacturers;
(2) the trade names "Aurora" et al. had been duly registered.

Issues: 

a) WON the test of unfair competition lies in the possibility of deception of the intelligent and not
the ignorant buyer;

(b) WON an action for unfair competition should be directed against the manufacturer and not
against the seller; and

(c) WON there is no unfair competition when a product is sold under a registered trademark.

Ruling:

First Issue:
Petitioners assert in their printed brief that the Court of Appeals erred in holding that the
deception or possibility of deception of intelligent buyers in the test of unfair competition.

Section 29 of Republic Act No. 166 makes guilty of unfair competition — among others — "any
person, who in selling his goods shall give them the general appearance of goods of another
manufacturer or dealer, either as to the goods themselves or in the wrapping the packages in
which they are contained, or the devices or words thereon, or in any other feature of their
appearance, which would be likely to influence purchasers to believe that the goods offered are
those of a manufacturer or dealer other than the actual manufacturer or dealer, or who
otherwise clothes the goods with such appearance as shall deceive the public and defraud
another of his legitimate trade."

It stands to reason that when the law speaks of "purchasers" it generally refers to ordinary or
average purchasers.

It is immaterial that the words Aurora, Agatonica and Mayflower are different from Alexander.
The features and their appearance are so similar as to cause that confusion which the rules of
unfair competition seek to avoid. And unfair competition is not confined to the adoption of the
same or similar names.

The use of a trade mark, printed in the same colors and in form and general appearance so
resembling pllaintiff's mark as to deceive purchasers of the goods, should been joined as unfair
competition. (La Yebana Co. vs. Chua Seco & Co., 14 Phil 534.) It is not necessary that the
same words were used. (Sapolin Co. vs. Balmaceda, 67 Phil. 705.)

In Brook Bros. vs. Froelich, 8 Phil. 580, this Court found unfair competition in the labelling and
selling of cotton thread. Facsimiles of the competing labels are therein reproduced. By
comparison, petitioners' case here is very much better.3

Second Issue:
There is no merit to the contention, because section 29 hereinabove partly quoted makes liable
for the imitation of goods not only the manufacturer but also the vendor. It reads in part:

Any person, who is selling goods shall give them the general appearance of goods of another
manufacturer or dealer, . . .or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose.

Third Issue:
The third defense is that the objected labels have been registered as trade-marks. We have
held in several decisions that one may be declared unfair competitor even if his competing
trade-mark is registered.4 The registration might in some way minimize damages against the
seller as showing good faith prima facie. But surely it does not preclude unfair competitive
actions.

Submitted by: Empress January Ariate

Submitted by:
Ranzel V. Ondangan

Case 13: Lim Hoa v. Director of Patents

No. L-8072; 100 Phil. 215
October 31, 1956

Facts

Petitioner, Lim Hoa, filed with the Patent Office an application for the registration of a
trademark, consisting of a representation of two midget roosters in an attitude of combat with the
word “Bantam” printed above them, he claiming that he had used said trademark on a food
seasoning product since April 25 of that year. On April 30, 1953, Agricom Development Co.,
Inc., a domestic corporation, opposed the application on several grounds, among others, that the
trademark sought to be registered was confusingly similar to its register mark, consisting of a
pictorial representation of a hen with the words “Hen Brand” and “Marca Manok”, which mark
or brand was also used on a food seasoning product, before the use of the trademark by the
applicant.

After considering the application and the opposition thereto, and after comparing the two brands,
the Director of Patents issued his order dated June 26, 1954, wherein he found and held that to
allow the registration of the applicant’s trademark would likely cause confusion or mistake or
deceive purchasers, and he refused registration of said trademark, under Rule 178 of the Revised
Rules of Practice in Trademark Cases, 1953.

Issue

Whether there is such similarity between the two brands as to cause confusion in the mind of the
public that buys the food seasoning product on the strength and on the indication of the
trademark or brand identifying or distinguishing the same.

Ruling

Yes. It has been consistently held that the question of infringement of a trademark is to be
determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not
conclusive. If the competing trademark contains the main or essential or dominant features of
another, and confusion and deception is likely to result, infringement takes place. Duplication or
imitation is not necessary; nor it is necessary that the infringing label should suggest an effort to
imitate (Co. Tiong Sa vs. Director of Patents, L- 5372, May 24, 1954.)
The two roosters appearing on the trademark of the applicant and the hen appearing on the
trademark of the oppositor, although of diffirent sexes, belong to the same family of the chicken,
known as manok in all the principal dialects of the Philippines, and when a cook or a household
help or even a housewife buys a food seasoning product for the kitchen, the brand of “Manok” or
“Marca Manok” would most likely be upper most in her mind and would influence her in
selecting the product, regardless of whether the brand pictures a hen or a rooster or two rooster.
To her, they are all manok. Therein lies the
confusion, even deception.
SCARVES BY VERA, INC., Plaintiff-Appellant,v.TODO IMPORTS LTD. (INC.), Defendant-
Appellee. No. 769, Docket 75-7529.

Facts:

Plaintiff Scarves by Vera, Inc. is a well-known and highly successful fashion designer. Plaintiff
designs and manufactures a line of women's signature scarves, medium-high fashion women's
sportswear, and a variety of dining room, bedroom and bathroom linens. Defendant Todo
Imports Ltd. is a New York corporation which, since 1970, has been the exclusive distributor in
New York of certain cosmetics and toiletries manufactured by Vera Perfumeria y Cosmetica,
S.A. of Barcelona, Spain (Vera, S.A.).

Plaintiff commenced this action for trademark infringement and unfair competition under the
Lanham Act of 1946, 15 U.S.C. § 1051 et seq., and under state law. In its complaint, plaintiff
alleged its ownership of the registered trademark "VERA" on scarves, women's sportswear, and
a large variety of linens. Plaintiff claimed that the defendant had infringed its trademark by using
the mark "VERA" on cosmetics and toiletries manufactured in Spain by Vera, S.A. and
distributed in the United States by the defendant. Plaintiff sought injunctive relief, damages and
an accounting. Vera, S.A. was not named as a defendant and has not sought to intervene in this
action.

Issue: 

1. WON plaintiff is entitled to protection of its trademark "VERA" against defendant's use of the
name on cosmetics, perfumes and toiletries?

2. WON defendant's use of the mark "VERA" infringed plaintiff's trademark?

Ruling:
1. Yes. The trademark laws protect three interests which are present here: first, the senior
user's interest in being able to enter a related field at some future time; second, his interest in
protecting the good reputation associated with his mark from the possibility of being tarnished
by inferior merchandise of the junior user; and third, the public's interest in not being misled by
confusingly similar marks a factor which may weigh in the senior user's favor where the
defendant has not developed the mark himself.

2. Yes. As the district court pointed out, a trademark owner’s right to relief where the products
are non-competitive depends upon a number of variables including the strength of his mark; the
degree of similarity between the two marks; the proximity of the products; the likelihood that the
prior owner will bridge the gap; actual confusion; the defendant's good faith in adopting his
mark; the quality of defendant's product and the sophistication of the buyers.
Plaintiff's "VERA" trademark clearly is a strong mark. Plaintiff's sales figures, its advertising
expenditures and the many articles written about plaintiff clearly established that plaintiff's
"VERA" trademark was highly successful and widely recognized in the medium-high fashion
market. Our conclusion that “VERA" is a strong mark is not affected by the fact that Vera is a
common name. We need not decide whether such a name might provide a weaker mark in
other circumstances, since we think plaintiff has clearly established secondary meaning entitling
it to broad protection of the "VERA" mark. (Alfred Dunhill of London, Inc. v. Kasser Distillers
Products Corp., supra, 350 F.Supp. at 1358- 60.) Moreover, even when the mark in question is
the name of the junior user, his right to use the name on his products may be limited, and he
may be compelled to add some distinguishing words to reduce the possibility of confusion. S. C.
Johnson & Son, Inc. v. Johnson, supra, 116 F.2d at 428-29

Submitted By: Kitchi Alonzo-Badon Amores

Esso Standard vs CA
G.R. No. L-29971

Facts:

The petitioner’s contention was 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. Petitioner asserted
that the continued use by private respondent of the same
trademark ESSO on its cigarettes was being carried out for the
purpose of deceiving the public as to its quality and origin to the
detriment and disadvantage of its own products.

In its answer, respondent admitted that it used the trademark

ESSO on its own product of cigarettes, which was not identical to
those produced and sold by petitioner and therefore did not in any
way infringe on or imitate petitioner's trademark. Respondent
contended that in order that there may be trademark infringement,
it is indispensable with the mark must be used by one person in
connection or competition with goods of the same kind as the
complainant’s.

Issue:

Whether or not there was trademark infringement?

Held:

No.

Ruling:

The Court affirms on the basis of controlling doctrine the

appealed decision of the Court of Appeals reversing that of the
Court of First Instance of Manila and dismissing the complaint filed
by herein petitioner against private respondent for trade
infringement for using petitioner's trademark ESSO, since it clearly
appears that the goods on which the trademark ESSO is used by
respondent is non-competing and entirely unrelated to the products
of petitioner so that there is no  likelihood of confusion or deception
on the part of the purchasing public as to the origin or source of the
goods.

The Court said that in this case the goods are obviously
different from each other - with "absolutely no iota of similitude".
They are so foreign to each other as to make it unlikely that
purchasers would think that petitioner is the manufacturer of
respondent's goods. The mere fact that one person has adopted and
used a trademark on his goods does not prevent the adoption and
use of the same trademark by others on unrelated titles of a
different kind. Petitioner uses the trademark ESSO and holds
certificate of registration of the trademark for petroleum products
while respondent's business is solely for the manufacture and sale
of the unrelated product of cigarettes. Another factor that shows
that the goods involved are non-competitive and non-related is that
they flow through different channels of trade. The (petitioner's)
products are distributed principally through gasoline service and
lubrication stations, automotive shops and hardware stores. On the
other hand, the (respondent's) cigarettes are sold in sari-sari stores,
grocery stores, and other small distributor outlets. (Respondent's)
cigarettes are even peddled in the streets while (petitioner's) 'gasul'
burners are not. Finally, there is a marked distinction between oil
and tobacco, as well as between petroleum and cigarettes.
Evidently, in kind and nature the products of (respondent) and of
(petitioner) are poles apart."

Melanie R. Lim
PELESMINO, ANTHLYN EVE I.

CHUA CHE vs. PHILIPPINE PATENT OFFICE and SY TUO

G.R. No. L-18337. January 30, 1965

Facts:

On October 30, 1958, Chua Che presented with the Philippines Patent Office a petition for the
registration in his favor the trade name of "X-7". Chua Che declares that the trade name was
used by him in commerce within the Philippines on June 10, 1957, and had been continuously
used by him in trade in the Philippines for more than one year.

Sy Tuo opposed, claiming that he owns the trademark and had been using it since 1951 as
mark for perfume, lipstick, and nail polish as opposed to Chua Che's use which was admittedly
only in 1957.

The Director of Patents denied the application for use on soap Class 51, being manufactured by
said Chua Che, upon the opposition of respondent Sy Tuo. The Director of Patents held that
the products of the parties, while specifically different, are products intended for use in the
home and usually have common purchasers. Furthermore, the use of X-7 for laundry soap is
but a natural expansion of business of the opposer.

Issue:

WON allowing Chua Che to register the same mark for laundry soap would likely to cause
confusion on the purchasers of X-7 products by SY Tou.

Ruling:

Yes. While it is no longer necessary to establish that the goods of the parties possess the same
descriptive properties, as previously required under the Trade Mark Act of 1905, registration of
a trademark should be refused in cases where there is a likelihood of confusion, mistake, or
deception, even though the goods fall into different categories

The products of appellee are common household items now-a-days, in the same manner as
laundry soap. The likelihood of purchasers to associate these products to a common origin is
not far-fetched. Both from the standpoint of priority of use and for the protection of the buying
public and appellee's rights to the trademark "X-7", it becomes manifest that the registration of
said trademark in favor of applicant-appellant should be denied.
 DIVISION
[ GR No. L-44707, Aug 31, 1982 ]
HICKOK MANUFACTURING CO. v. CA*

Facts:
Petitioner is a foreign corporation and all its products are manufactures by Quality
House Inc. The latter pays royalty to the petitioner. Hickok registered the trademark
'Hickok' earlier and used it in the sale of leather wallets, key cases, money folds, belts,
men’s underwear, neckties, hankies, and men's socks. While Sam Bun Liong used the
same trademark in the sale of Marikina shoes. Both products have different channels of
trade. The Patent Office did not grant the registration, but the Court of Appeals reversed
the PPO decision.

Issue: Is there infringement in this case?

Ruling:
NONE. Emphasis should be on the similarity of the products involves and not on the
arbitrary classification or the general description of their properties or characteristics.
Also, the mere fact that one person has adopted and used a trademark on his goods
does not prevent the adoption and use of the same by others on unrelated articles of
different kind.
There is a different design and coloring of the trademark itself. The 'Hickok' trademark is
in red with white background in the middle of 2 branches of laurel (in light gold) while
the one used by Sam Bun Liong is the word 'Hickok ' in white with gold background
between 2 branches of laurel in red with the word 'shoes' also in red placed below the
word 'Hickok'.

MICK IAN M. CORNELIA, MPA

Foundation University
Intellectual Property Law
Christen Nina Bermejo

FABERGE INC., VS. IAC & CO BENG KAY

G.R. NO. 711894
November, 1992
PONENTE: Melo, J.

FACTS:

Petitioner Faberge manufactures and sells after-shave lotion, shaving cream, deodorant, toilet soap, etc.
under its registered trademark ‘BRUT’. On the other hand, respondent Co Beng Kay manufactures and
sells briefs under the trademark ‘BRUTE.’

Petitioner tried to oppose the registration by respondent of the trademark ‘BRUTE’ for being confusingly
similar with petitioner’s ‘BRUT’ but Director of Patents denied such opposition observing that considering
the overall appearance of both trademarks, there are glaring differences which would unlikely cause a
confusion among customers.

On appeal, the CA initially ruled in favor of petitioner stating that the products of the petitioner and the
respondent have the same outlet (e,g, ‘Men’s accessories’ in a department store). Thus, even if the
trademark ‘BRUTE’ was only applied for briefs, the similarity of the same with ‘BRUT’ would likely cause
confusion to the buying public.

On respondent’s motion for reconsideration, the CA reversed itself in favor of respondent relying on
the ESSO and PRC cases wherein the SC ruled that identical trademark can be used by different
manufacturers for products that are non-competing and unrelated. Hence, this appeal.

Petitioner argues that the ruling in Teodoro which was reiterated in Sta. Ana where the SC ruled that a
registration may be opposed if the junior user’s goods (Co Beng Kay’s in this case) are not remote from
any product that the senior user (Faberge) would be likely to make or sell. To bolster this argument,
petitioner presented an alleged application of the trademark ‘BRUT 33 Device’ for briefs.

ISSUE: WON the respondent is permitted to use the trademark ‘BRUTE’ for briefs.

RULING: YES. The provisions applicable to this case are the following:

            Sec. 4. Registration of trade-marks, trade-names and service-marks on the principal register. —

. . . The owner of trademark, trade-name or service-mark used to distinguish his goods, business or
services from the goods, business or services of others shall have right to register the same on the
principal register, unless it:
                                                            xxx xxx xxx
4(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered
in the Philippines or a mark or trade-name previously used in the Philippines by another and not
abandoned, as to be likely, when applied to or used in connection with the goods, business or services of
the applicant, to cause confusion or mistake or to deceive purchasers.
                                                            xxx xxx xxx
Sec. 20. Certificate of registration prima facie evidence of validity. — A certificate of registration of a mark
or trade-name shall be prima facie evidence of the validity of the registration, the registrant's ownership of
the mark or trade-name, and of the registrant's exclusive right to use the same in connection with the
goods, business or services specified in the certificate, subject to any conditions and limitations stated
therein.
It is not difficult to discern from the foregoing statutory enactments that private respondent may be
permitted to register the trademark "BRUTE" for briefs produced by it notwithstanding petitioner's
vehement protestations of unfair dealings in marketing its own set of items which are limited to: after-
shave lotion, shaving cream, deodorant, talcum powder and toilet soap. In as much as petitioner has not
ventured in the production of briefs, an item which is not listed in its certificate of registration, petitioner
cannot and should not be allowed to feign that private respondent had invaded petitioner's exclusive
domain. To be sure, it is significant that petitioner failed to annex in its Brief the so-called "eloquent proof
that petitioner indeed intended to expand its mark "BRUT" to other goods. Even then, a mere application
by petitioner in this aspect does not suffice and may not vest an exclusive right in its favor that can
ordinarily be protected by the Trademark Law. In short, paraphrasing Section 20 of the Trademark Law as
applied to the documentary evidence adduced by petitioner, the certificate of registration issued by the
Director of Patents can confer upon petitioner the exclusive right to use its own symbol only to those
goods specified in the certificate, subject to any conditions and limitations stated therein.
Dawn M. Raaging
IV – FU College of Law and Jurisprudence

Case: George W. Luft Co., vs. Ngo Guan. No. L-21915, December 17, 1966

Facts:
Petitioner, George W. Luft Co., Inc. – a foreign corporation organized
under the laws of State of New York is the owner of the Trademark “Tangee”,
which has allegedly used since February 28, 1928, and is covered by Certificate
of Registration No. 2178-S of the Philippine Patent Office. On January 22,1959,
Ngo Guan applied for the registration of the trademark “Tango”, which he
claims to have used since June 1958. Petitioner objected thereto alleging that
“Tango” is likely to be mistaken for “Tangee,” upon the ground that the two
trademarks are confusingly similar.

Issue :
Whether or not the “Tango” trademark is confusingly similar with the
“Tangee” trademark as contented by the petitioner?

Ruling:
No. One of the factors essential in determining whether two trademarks
are confusingly similar is whether or not there is a general similarity in their
appearance which cannot be determined with reasonable certainty without
physical examination and comparison thereof. Petitioner has rendered such
examination impossible, by not introducing evidence whatsoever as to the
appearance of the “Tangee” trademark. Moreover, the word “Tango” has a well-
established meaning, for it describes a particular dance that is well known in
the Philippines. In fact, respondent’s label includes the picture of a man and a
woman dancing. Furthermore, “Tango” is used by Ngo Guan for no other
product than hair pomade, in which petitioner does not deal with.

MARNEIL JOHN J. DINGAL

LLB-JD 4
FOUNDATION UNIVERSITY

CORPORATION VS DAWAY

Facts:

Respondents Montres Rolex and Rolex Centre Phil, owners/proprietors of Rolex and Crown
Device, filed a cpmplaint for trademark infringement alleging petitioner adopted and used
without authority the mark “ROLEX” in its business name Rolex Music Lounge. Petitioner
argued that there is no trademark infringement since no confusion would arise by the use of
Rolex considering that its entertainment business is totally unrelated to respondent”s business
or products such as watches,clock, etc.

Issue:

Whether or not there was likelihood of confusion arises on the use of identical marks over
unrelated business.

Held:

Yes, Under the old trademark Law where the goods for which the identical marks are used
are unrelated, there can be no likelihood of confusion and there is therefore no infringement in
the use by junior user of the registered mark on the entirely different goods. This ruling
however, has been to some extent, modified by Section 123.1(f) of the Intellectual Property
Code. A junior user of a well-known mark goods or services which are not similar to the goods
or services and are therefore unrelated, to those specified in the certificate of registration of a
well-known brand/mark is precluded from using the same on the entirely unrelated goods or
services.
Cindy D. Boltiador
LLB-4

Fruit of the Loom v. CA

FRUIT OF THE LOOM INCN., petitioner

vs.
COURT OF APPEALS and GENERAL GRAMENTS
CORPORATION
G.R. No. L- 32747 November 29, 2004

This is a petition for review on certiorari of the decision dated October 8. 1970 of the former
Court of Appeals reversing the decision of the defunct Court of First Instance of Manila, Branch Xiv,
ordering the cancellation of private respondent’s registration of the trademark FRUIT OF EVE, enjoining
it permanently from using trademark and ordering it to pay herein petitioner P10,000.00 as attorney’s
fees.

CASE LAW/DOCTRINE:

There is infringement of trademark when the use of the mark involved would be likely to cause
confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the
commodity.

A comparison between trademarks must be made. Comparison of the words is not the only
determinant factor. The trademarks in their entirety as they appear in their respective labels or hang tags
must also be considered in relation to the goods to which they are attached.

FACTS:

Petitioner is a US corporation, with the trademark Fruit of the Loom. It manufactures

undergarments.

Respondent is a domestic corporation, with the trademark Fruit for Eve. It also manufactures
undergarments.

Petitioner filed a case for cancellation of Respondent's trademark Fruit for Eve. It alleges there is
colorable imitation as regards the sound "Fruit" and the appearance of the hang tag consisting of a big red
apple. Petitioner claims that the prominent and dominant features found in both Petitioner's and
Respondent' trademark are the word "Fruit" and the big red apple design.
ISSUE:

Whether or not here is confusing similarity to support a claim of infringement and warrant the
cancellation of Respondent's trademark.

HELD:

NO. There are substantial differences that overcome any similarities, hence, there is no
infringement.

There is infringement of trademark when the use of the mark involved would be likely to cause
confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the
commodity.

A comparison between trademarks must be made. Comparison of the words is not the only
determinant factor. The trademarks in their entirety as they appear in their respective labels or hang tags
must also be considered in relation to the goods to which they are attached.

Standing by itself, Fruit of the Loom is wholly different from Fruit for Eve. The Court does not
agree with Petitioner that the dominant feature of both trademarks is the word Fruit, for even in the
printing of such word in both hang tags, there is no special emphasis made.

As to the design and coloring scheme of the hang tags, while there are similarities in the two
marks like the red apple, there are striking differences:

(a) Shape of hang tag: Petitioner's is round, Respondent's is rectangular

(b) Different designs, apart from red apple
(c) Different colors: Petitioner's is brown, Respondent's is pink

The similarities of the competing trademarks in this case are completely lost in the substantial
differences in the design and general appearance of their respective hang tags. The trademarks are not
similar to each other, so as to cause confusion to consumers. The ordinary purchaser must be credited
with a minimum level of intelligence to be able to see the obvious differences between the two
trademarks.
G.R. No. L-5378             May 24, 1954

CO TIONG SA,  vs. DIRECTOR OF PATENTS, respondent, 

FACTS:

This is an appeal filed by Co Tiong Sa, applicant for registration of the trademark "Freedom" and
its corresponding design, against a decision of the Director of Patents sustaining the opposition thereto
of Saw Woo Chiong and Co., and denying the application. The application in said registration proceeding,
now petitioner in this Court, has used the trademark on undershirts and T-shirts since March, 1947. The
trademark sought to be registered is "Freedom". The word "Freedom" is in hand print, with a slight to
the right. In the facsimiles attached to the original application, there are no letters, lines, or figures
around the word, but in the label, the said word is preceded by a triangle, with the letter "F" inside and
small letters "H.L." under. A capital letter "L" is on the lower right-hand corner; and all of these are
enclosed in a rectangle of double lines. The label is the same word "Freedom" with a capital letter "M"
above it, a flourish under the word "Freedom", and the words "HIGH QUALITY" thereunder. The label
used for boxes is similar to label, except that the rectangle is in a heavy line and is longer. The label
presented by Saw Woo Chiong and Co., oppositor-respondent herein, consist of the word "Freeman" in
hand print, with a right slant, above the middle of which is a vignette of a man wearing a to what, which
vignette is preceded by the small word "The" in print and followed by two parallel lines close to each
other, and the words "PERFECT WEAR" in smaller letters under the word "FREEMAN". This trademark
was registered in 1947 in the Bureau of Commerce and re-registered in the Patent Office on September
22, 1948. This trademark is used not only on shirts, but also on polo shirts, undershirts, pajamas,
skippers, and T-shirts, although in the year 1947 Saw Woo Chiong and Co. discontinued manufacturing
skippers and T-shirts on the ground of scarcity of materials. This trademark has been used since 1938,
and it had been advertised extensively in newspapers, magazines, etc. The applicant-petitioner claims
that in sustaining the objection of the oppositor-respondent, the Director of Patents erred in its
decision.

ISSUE: Whether or not the trademarks are confusingly similar?

RULING:

YES, The Supreme Court held that that name "Lusolin" is an infringement of the trademark
"Sapolin," as the sound of the two names is almost the same, and the labels of containers being almost
the same in respect to color, size, and other characteristics. In spite of the fact that the posture and
coloring were slightly different, defendant's labels were declared to constitute an infringement of
plaintiff's labels. After a careful study, the dominant characteristic of oppositor's trademark "FREEMAN"
has been imitated in applicant's trademark "FREEDOM," such as to confuse the public and unwary
customers and puchasers, and to deceive them into believing that the articles bearing one label are
similar or produced by the same manufacturer as those carrying the other label. The decision of the
Director of Patents be affirmed. With respect to the fifth assignment of error (first in petitioner's brief),
it must be remembered that the question of similarity or dissimilarity while it is a question of opinion, is
to be determined by the court mainly  on the basis of the facsimiles or labels or pictures submitted to
the Director of Patents. In the case at bar, innumerable exhibits were presented to show the similarity.
Similarity or dissimilarity can be determined by the Director of Patents, or by this Court on appeal, by a
mere examination and comparison of the competing trademarks. Failure on the part of the oppositor to
submit the testimony of witnesses, who are to give opinions on the alleged similarity or dissimilarity, can
not, therefore, be a ground for a dismissal of an opposition. We hold that the Director of Patents did not
err in denying the motion for dismissal presented by the applicant upon the failure of the oppositor to
submit witnesses to sustain his opposition.

Daryl Sarong
Rochelle G. Raipan
CASE 23

Phil. Nut Industry, Inc. vs. Standard Brands Inc.

No. L-23035; 65 SCRA 575
July 31, 1975

Facts:

Philippine Nut a domestic corporation, obtained from the Patent Office on

August 10, 1961, Certificate of Registration No. SR-416 covering the trademark
“PHILIPPINE PLANTERS CORDIAL PEANUTS,” the label used on its product of
salted peanuts. On May 14, 1962, Standard Brands a foreign corporation, filed
with the Director of Patente Inter Partes Case No. 268 asking for the
cancellation of Philippine Nut’s certificate of registration on the ground that
“the registrant was not entitled to register the mark at the time of its
application for registration thereof” for the reason that it (Standard Brands) is
the owner of the trademark “PLANTERS COCKTAIL PEANUTS” covered by
Certificate of Registration No. SR-172, issued by the Patent Office on July 28,
1958. Standard Brands alleged in its petition that Philippine Nut’s trademark
“PHILIPPINE PLANTERS CORDIAL PEANUTS” closely resembles and is
confusingly similar to its trademark “PLANTERS COCKTAIL PEANUTS” used
also on salted peanuts, and that the registration of the former is likely to
deceive the buying public and cause damage to it.

Respondent Director of Patents rendered Decision No. 281 giving due

course to Standard Brand’s petition and ordering the cancellation of Philippine
Nut’s Certificate of Registration No. SR-416. The Director of Patents found and
held that in the labels using the twotrademarks in question, the dominant part
is the word “Planters”, displayed “in a very similar manner” so much so that “as
to appearance and general impression” there is “a very confusing similarity,”
and he concluded that Philippine Nut “was not entitled to register the mark at
the time of its filing the application for registration” as Standard Brands will be
damaged by the registration of the same.

Issue:
 Is the trademark “PHILIPPINE PLANTERS CORDIAL PEANUTS” used by
Philippine Nut on its label for salted peanuts confusingly similar to the
trademark “PLANTERS COCKTAIL PEANUTS” used by Standard Brands on its
product so as to constitute an infrigements of the latter’s trademark rights and
justify its cancellation?

Ruling:
Yes.

Rationale:
While it is true that PLANTERS is an ordinary word, nevertheless it is
used in the labels not to describe the nature of the product, but to project the
source or origin of the salted peanuts contained in the cans, the
word PLANTERS printed across the upper portion of the label in bold letters
easily attracts and catches the eye of the ordinary consumer and it is that word
and none other that sticks in his mind when he thinks of salted peanuts.

No producer or manufacturer may have a monopoly of any color scheme

or form of words in a label. But when a competitor adopts a distinctive or
dominant mark or feature of another’s trademark and with it makes use of the
same color ensemble, employs similar words written in a style, type and size of
lettering almost identical with those found in the other trademark, the intent to
pass to the public his product as that of the other is quite obvious.

The doctrine is to the effect that a word or phrase originally incapable of

exclusive appropriation with reference to an article on the market, because
geographically or otherwise descriptive, might nevertheless have been used so
long and so exclusively by one producer with reference to his article that, in
that trade and to that branch of the purchasing public, the word or phrase has
come to mean that the article was his product.
Tan, Anna Katrina

Andres Romero vs Maiden Form Brassierre Co., Inc., GR No. L-18289, March 31. 1964
Facts:
Respondent company, a foreign corporation, filed with respondent Director of Patents an
application for registration (pursuant to Republic Act No. 166) of the trademark ‘Adagio" for the
Brassieres manufactured by it. In its application, respondent company alleged that said
trademark was first used by it in the United States on October 26, 1937, and in the Philippines
on August 31, 1946, that it had been continuously used by it in trade in, or with the Philippines
for over 10 years.

Petitioner filed with respondent Director a petition for cancellation of said trademark, on the
grounds that it is a common descriptive name of an article or substance on which the patent
has expired; that its registration was obtained fraudulently or contrary to the provision of
Section 4, Chapter II of Republic Act No. 166; and that the application for its registration was
not filed in accordance with the provisions of Section 37, Chapter XI of the same Act. Petitioner
also alleged that said trademark has not become distinctive of respondent company’s goods or
business; that it has been used by respondent company to classify the goods (the brassieres)
manufactured by it, in the same manner as petitioner uses the same; that said trademark has
been used by petitioner for almost 6 years, that it has become a common descriptive name;
and that it is not registered in accordance with the requirements of Section 37 (a), Chapter XI of
Republic Act No. 166.

Issue 1: Whether or not “Adiago” has become a common descriptive name.

NO. The evidence shows that the trademark "Adagio" is a musical term, which means slowly or
in an easy manner, and was used as a trademark by the owners thereof (the Rosenthals of
Maiden Form Co., New York) because they are musically inclined. Being a musical term, it is
used in an arbitrary (fanciful) sense as a trademark for brassieres manufactured by respondent
company. As respondent Director pointed out, "the fact that said mark is used also to designate
a particular style of brassiere, does not affect its registrability as a trademark. Respondent
company’s long and continuous use of the trademark "Adagio" has not rendered it merely
descriptive of the product.
Issue 2: Whether or not the long continuous use of trademark renders it descriptive of a
product.

This contention is untenable. Said sentence appearing on the package, standing alone, does not
conclusively indicate that the trademark "Adagio" is merely a style of brassiere. Brassieres are
usually of different types or styles, and appellee has used different trademarks for every type as
shown by its labels, The mere fact that appellee uses "Adagio" for one type or style, does not
affect the validity of such word as a trademark.

Issue 3: Whether or not respondent Director erred in registering the trademark in question,
despite appellee’s non-compliance with Section 37, paragraphs 1 and 4(a) of Republic Act No.
166.
library
Section 37 of Republic Act No. 166 can be availed of only where the Philippines is a party to an
international convention or treaty relating to trademarks, in which case the trade-mark sought
to be registered need not be in use in the Philippines. The applicability of Section 37 has been
commented on by the Director of Patents, in this wise:jgc:chanrobles.com.
"Trademark rights in the Philippines, without actual use of the trademark, in this country can, of
course, be created artificially by means of a treaty or convention with another country or
countries. Section 37 of the present Philippine Trademark Law, Republic Act No. 166,
(incorporated as Rule 82 in the Rules of Practice for Registration of Trademarks) envisions the
eventual entrance of the Philippines into such convention or treaty. It is provided in said section
that applications filed thereunder need not allege use in the Philippines of the trademark
sought to be registered. The Philippines has, however, not yet entered into any such treaty or
convention and, until she does, actual use in the Philippines of the trademark sought to be
registered and allegation in the application of such fact, will be required in all applications for
original or renewal registration submitted to the Philippine Patent Office." (Circular Release No.
8)

Issue 4: Whether or not the registration of the trademark was fraudulent or contrary to Section
4 of Republic Act No. 166.

There is no evidence to show that the registration of the trademark "Adagio" was obtained
fraudulently by appellee. The evidence on record shows, on the other hand, that the trademark
"Adagio" was first used exclusively in the Philippines by appellee in the year 1932. There, being
no evidence of use of the mark by others before 1932, or that appellee abandoned use thereof, the
registration of the mark was made in accordance with the Trademark Law. Granting that
appellant used the mark when appellee stopped using it during the period of time that the
Government imposed restrictions on importation of respondent’s brassiere bearing the
trademark, such temporary non-use did not affect the rights of appellee because it was
occasioned by government restrictions and was not permanent, intentional, and voluntary.
The use of the trademark by other manufacturers did not indicate an intention on the part of
appellee to abandon it.
G.R. No. L-3952        December 29, 1953
King-Seeley Thermos Co. vs Aladdin Industries, Inc.
321 F.2d 577 (2d Cir. 1963)
Facts:
King-Seeley Thermos Co. began advertising the term “Thermos” to describe its vacuum-
insulated bottle. At first, Thermos Co. made no attempt to designate the term Thermos as an
indicator of the source of the product rather than a generic term descriptive of the product. Over
the years the word came to be understood by consumers as a generic term for vacuum-
insulated bottles.
Realizing that the Thermos trademark was in danger of becoming generic, Thermos Co.
campaigned to identify Thermos as a trademark. The campaign failed.
Aladdin Industries, Inc. (Aladdin) developed its own vacuum-insulated bottles to be sold as
thermos bottles. Thermos Co. brought a trademark-infringement suit against Aladdin to enjoin
the use of the Thermos trademark. Aladdin argued that the term thermos had become generic.
The district court held in favor of Aladdin. Thermos Co. appealed the decision.
Issue:
Is the use of the term “Thermos” by Aladdin valid?
Ruling:
The court held that Aladdin may validly use the term “thermos” because such became part of
the public domain. However, such use is subject to certain conditions in order to protect
Thermos Co.’s exclusive use of the term and prevent confusion and deception.
The test in identifying whether a term is generic is what the public's understanding is of the word
that it uses. Here, the public had become accustomed to calling vacuum bottles by the word "thermos".
The two terms had become synonymous over time. It would then be unfair to restrict Aladdin to use the
word that had become generic despite Thermos Co.’s efforts to protect the trademark.

Milcah Inggo
MASSO HERMANOS, S.A., Petitioner, vs. DIRECTOR OF PATENTS,
Respondent.

FACTS:
Masso Hermanos, S.A., is the registered owner of the trademark
composed of the word "Cosmopolite" used on canned fish. Said trademark was
first registered and the certificate of registration issued therefor by the Director
of the Philippine library and museum for a period of thirty years. A renewal of
the certificate of registration was applied for and issued by the Director of the
Bureau of Commerce.

The petitioner applied to the Director of Patents for a new certificate of

registration of said trademark which was denied by the examining officer on
the ground that the word "Cosmopolite", as a trademark for canned fish is
descriptive of said goods and, therefore, could not have been legally registered
as a trademark and, consequently, is not entitled to registration. The petitioner
appealed from said ruling to the Director of Patents on the ground that the
examining officer was not authorized to re-examine certificates which were
originally issued under Act No. 666 and surrendered for re-registration under
section 41(a) of Republic Act No. 166. The Director of Patents affirmed the
ruling of the trademark examiner; hence, the present petition for certiorari was
filed in his court.

ISSUE:
Whether or not the word “cosmopolite” is descriptive and therefore, the
registration thereunder is not subsisting.

RULING:
Section 13 of Act No. 666 provides that – “But no alleged trademark shall be
registered which is merely the name, quality or description of the mechandise
upon which it is to be used. In an application for registration, the Director of
the Bureau of Commerce shall decide the presumptive lawfulness of claim to
the alleged trademark.”

The word "Cosmopolite" does not give the name, quality or description of the
canned fish for which it is used. It does not even describe the place of origin,
for it does not indicate the country or place where the canned fish was
manufactured. It is a very general term which does not give the kind or quality
of the goods.

The court is, therefore, of the opinion that the registration of the trademark
"Cosmopolite" under Act No. 666 was valid and is subsisting. The Director of
Patents should not for light and unsubstantial reasons reverse the ruling of the
former officer in charge of trademark registration, which has been accepted
and in force since 1917 up to the present.

Paulin Vinna Ocat Paragas

UNNO COMMERCIAL ENTERPRISES, INC. vs.
GENERAL MILLING CORPORATION
G.R. No. L-28554. February 28, 1983
Facts:
• On December 11, 1962, respondent
UNNO COMMERCIAL ENTERPRISES, INC. vs.
GENERAL MILLING CORPORATION
G.R. No. L-28554. February 28, 1983
UNNO COMMERCIAL ENTERPRISES, INC. vs.
GENERAL MILLING CORPORATION
G.R. No. L-28554. February 28, 1983
UNNO COMMERCIAL ENTERPRISES, INC. VS GENERAL MILLING CORPORATION

G.R. NO. L-28554 February 28, 1983

FACTS:

Respondent General Milling Corp. filed an application for the registration of the trademark “All Montana” to be
used in the sale of wheat flour. As the same trademark had been previously registered in favor of Unno, the Chief
Trademark Examiner declared an interference proceeding between General Milling’s application as Junior/Party-
party has previously adopted and used the trademark “All Montana”. General Milling Corp. alleged that it has been
using the trademark and subsequently was licensed to use the same by Centennial Mills Inc. by virtue of a Deed of
Assignment. Unno Commercial Enterprise argued on the other hand that the same trademark has been registered
in its favor asserting that its started using the trademark as indentor or broker for S.H. Huang Bros & Co., a local
firm. Unno contends that various shipments, invoices and correspondence of Centennial Mills Inc., shipping
thousands of bags of wheat flour bearing the trademark “All Montana” were shown by petitioner and maintained
that anyone, whether he is only an importer, indentor or broker can appropriate, use and own a particular mark of
its own choice although he is not the manufacturer of the goods he deals with. General Milling Corp. is adjudged as
prior user of the trademark ALL MONTANA, but because it is primarily geographically descriptive, the application
is remanded to the Chief Trademark Examiner for proper proceeding before issuance of the certificate of
registration.

ISSUE:

Issue/Answer:
• WON Unno, as a mere indentor can apply
Whether or not UNNO, as a mere indentor can apply for the registration of the trademark of its principal/negative.
Only owners of the trademark can apply for its registration.

RULING:
When the applicant is not the owner of the trademark being applied for, he has no right to apply for the
registration of the same. Under the Trademark Law, the trademark, trade name or service mark used to distinguish
his goods, business or service from the goods, business or service of others is entitled to register the same. The
term owner does not include the importer of the goods bearing the trademark, trade name, service mark, or
other mark of ownership, unless such importer is actually the owner thereof in the country from which the goods
are imported. A local importer however, may make application for the registration of a foreign trademark, trade
name or service mark if he is duly authorized by the actual owner of the name or other mark of ownership. The
Deed of Assignment itself constitutes sufficient proof of General Milling Corporation's ownership of the
trademark "All Montana," showing that Centennial Mills was a corporation duly organized and existing under
and by virtue of the laws of the State of Oregon, U.S.A. and the absolute and registered owner of
several trademarks for wheat flour all of which were assigned by it to respondent General Milling Corporation.
Unno Commercial Enterprises Inc. merely acted as exclusive distributor of All Montana wheat flour in the
Philippines. The Senior Party could not be regarded as having used and adopted it, and had no right to apply for its
registration. A mere importer and distributor acquires no rights in the mark used on the imported goods by the
foreign exporter in the absence of an assignment of any kind. Trademarks used and adopted on goods
manufactured or packed in a foreign country in behalf of a domestic importer, broker, or indentor and distributor
are presumed to be owned by the manufacturer or packer, unless there is a written agreement clearly showing
that ownership vests in the importer, broker, indentor or distributor. The Court affirms respondent Director of
Patent's decision declaring respondent General Milling Corporation as the prior user of the trademark "All
Montana" on wheat flour in the Philippines and ordering the cancellation of the certificate of registration for the
same trademark previously issued in favor of petitioner Unno Commercial Enterprises, Inc.

Jean Marion O. Parmes

Office in Trademark Cases, 14 the Director
of Patents is expressly authorized to order
the cancellation of a registered mark or
trade name or name or other mark of
ownership in an inter partes case, such as
the interference proceeding at bar.

Office in Trademark Cases, 14 the Director

of Patents is expressly authorized to order
the cancellation of a registered mark or
trade name or name or other mark of
ownership in an inter partes case, such as
the interference proceeding at ba
Office in Trademark Cases, 14 the Director
of Patents is expressly authorized to order
the cancellation of a registered mark or
trade name or name or other mark of
ownership in an inter partes case, such as
the interference proceeding at bar.
BANNY M. PORNOBI

Conrad v. CA

G.R. No. 115115 | 246 SCRA 691 | July 18, 1995

Petitioner: CONRAD AND COMPANY, INC.

Respondents: CA, FITRITE INC., and VICTORIA BISCUITS CO., INC.

FACTS

1. FITRITE, INC. and VICTORIA BISCUIT CO., INC., both domestic corporations, are engaged in
manufacturing, selling and distributing biscuits and cookies bearing the trademark "SUNSHINE" in the
Philippines.
2. CONRAD AND COMPANY is also engaged in importing, selling and distributing biscuits and cookies in the
Philippines.
3. In April 1982, FITRITE filed in the Bureau of Patents, Trademarks and Technology Transfer (BPTTT)
applications for registration of the trademark "SUNSHINE," both in the Supplemental and Principal
Registers, to be used on biscuits and cookies. Since March 31, 1981 FITRITE had exclusively used this
trademark in the concept of owner on its biscuits and cookies.
o On May 20, 1983, Supplemental Register was Approved
o On March 22, 1990, Principal Register was Approved
4. On May 20, 1990, FITRITE discovered that CONRAD had been importing, selling and distributing biscuits
bearing its trademark in Philippines. Being acts of infringement and unfair competition, FITRITE filed an
action for injunction with damages.
5. CONRAD filed a motion to dismiss on the grounds of the doctrine of primary jurisdiction and failure to state
the cause of action.
6. Trial Court granted the motion to dismiss. Held that CONRAD having been granted distributorship by
Sunshine Biscuits USA over Philippine territory it follows that the resolution of the issue with respect to the
ownership of Sunshine Biscuits which is the basis of FITRITE’s claim is lodged under the exclusive
jurisdiction of the BPTTT.
7. Court of Appeals reversed the decision of the Trial Court. It held that No evidence had been introduced to
show that “SUNHINE” trademark has been registered in the USA. Hence, unless and until FITRITE’s
certificate as registrant of the said trademark cancelled by BPTTT, the trademark belongs to FITRITE.
8. CA also ordered the trial court to proceed with the case for "injunction with damages" filed by FITRITE
notwithstanding the pendency of an administrative case for the cancellation.

Hence, this petition.

ISSUE/S

1. W/N the Trial Court may proceed with the infringement case despite the pendency of Administrative case for
cancellation.

RULING & RATIO

1. YES.
2. While an application for the administrative cancellation of a registered trademark on any of the grounds
enumerated in Sec. 176 of RA 166, falls under the exclusive cognizance of BPTTT, HOWEVER, action for
infringement or unfair competition, as well as the remedy of injunction and relief for damages, is
explicitly and unquestionably within the competence and jurisdiction of ordinary courts.
3. FITRITE are the holder of the Principal Register for the questioned trademark. Registration in the Principal
Register gives rise to a presumption of validity of the registration and of the registrant's ownership and right
to the exclusive use of the mark. It is precisely such a registration that can serve as the basis for an
action for infringement.
 4. An application with BPTTT for an administrative cancellation of a registered trade mark cannot per
se have the effect of restraining or preventing the courts from the exercise of their lawfully conferred
jurisdiction.

DISPOSITION

WHEREFORE, the petition for review is DENIED for lack of merit, and the questioned amended decision of the Court
of Appeals is AFFIRMED. Costs against petitioner.

Kabushi Kaisha Isetan v. Intermediate Appellate Court

G.R. No. 75420 November 15, 1991

Facts:
Petitioner Kabushi Kaisha Isetan is a foreign corporation organized and existing
under the laws of Japan. Private respondent, Isetann Department Store, on the other
hand, is a domestic corporation organized and existing under the laws of the
Philippines.

In 1980, the petitioner filed with the Phil. Patent Office two (2) petitions for the
cancellation of Certificates of Supplemental Registration. It alleged that private
respondent’s act of registering a trademark which is exactly the same as its trademark
and adopting a corporate name similar to that of the petitioner were with the illegal and
immoral intention of cashing in on the long established goodwill and popularity of the
petitioner’s reputation, thereby causing great and irreparable injury and damage to it.
It also filed with the Securities and Exchange Commission (SEC) a petition to cancel the
mark “ISETAN” as part of the registered corporate name of Isetann Department Store,
Inc.

Issue:
Whether Kabushi Kaisha Isetan has the right to seek cancellation of the word
“Isetan” from the corporate name of Isetann Department Store.

Ruling:
No. Kabushi Kaisha Isetan has no right to seek cancellation of the word “Isetan”
from the corporate name of Isetann Department Store.

A fundamental principle of Philippine Trademarks Law is that actual use in

commerce in the Philippines is a prerequisite to the acquisition of ownership over a
trademark or a tradename.

The records show that the petitioner has never conducted any business in the
Philippines. It has never promoted its tradename or trademark in the Philippines. It has
absolutely no business goodwill in the Philippines. It is unknown to Filipinos except the
very few who may have noticed it while travelling abroad. It has never paid a single
centavo of tax to the Philippine government. Therefore, it has no right to the remedy it
seeks.

Submitted by: Emmy Lou Tolin

Office in Trademark Cases, 14 the Director
of Patents is expressly authorized to order
the cancellation of a registered mark or
trade name or name or other mark of
ownership in an inter partes case, such as
the interference proceeding at bar
Office in Trademark Cases, 14 the Director
of Patents is expressly authorized to order
the cancellation of a registered mark or
trade name or name or other mark of
ownership in an inter partes case, such as
the interference proceeding at bar