Case Digest for Intellectual Property

By Frederick Patubo

PRIBHDAS J. MIRPURI v. CA, GR No. 114508, 1999-11-19

Facts:
On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of petitioner Pribhdas J. Mirpuri, filed
an application with the Bureau of Patents for the registration of the trademark "Barbizon" for use in
brassieres and ladies undergarments.  Escobar alleged that she... had been manufacturing and selling
these products under the firm name "L & BM Commercial" since March 3, 1970.
Private respondent Barbizon Corporation, a corporation organized and doing business under the laws of
New York, U.S.A., opposed the application. It claimed that:
"The mark BARBIZON of respondent-applicant is confusingly similar to the trademark BARBIZON which
opposer owns and has not abandoned.
That opposer will be damaged by the registration of the mark BARBIZON and its business reputation and
goodwill will suffer great and irreparable injury.
That the respondent-applicant's use of the said mark BARBIZON which resembles the trademark used
and owned by opposer, constitutes an unlawful appropriation of a mark previously used in the
Philippines and not abandoned and therefore a statutory violation of Section 4 (d) of
Republic Act No. 166, as amended."[1]
On June 18, 1974, the Director of Patents rendered judgment dismissing the opposition and giving due
course to Escobar's application, thus:
"WHEREFORE, the opposition should be, as it is hereby, DISMISSED.  Accordingly, Application Serial No.
19010 for the registration of the trademark BARBIZON, of respondent Lolita R. Escobar, is given due
course.
This decision became final and on September 11, 1974, Lolita Escobar was issued a certificate of
registration for the trademark "Barbizon." The trademark was "for use in "brassieres and lady's
underwear garments like panties."[3]
Escobar later assigned all her rights and interest over the trademark to petitioner Pribhdas J. Mirpuri
who, under his firm name then, the "Bonito Enterprises," was the sole and exclusive distributor of
Escobar's "Barbizon" products.
On May 27, 1981, Escobar reapplied for registration of the cancelled trademark.  Mirpuri filed his own
application for registration of Escobar's trademark. Escobar later assigned her application to herein
petitioner and this application was opposed by private respondent.
The case was docketed as Inter Partes Case No. 2049 (IPC No. 2049).
(e)  The Opposer's goods bearing the trademark BARBIZON have been used in many countries, including
the Philippines, for at least 40 years and has enjoyed international reputation and good will for their
quality.  To protect its registrations in countries where the... goods covered by the registrations are
being sold, Opposer has procured the registration of the trademark BARBIZON in the following
countries:  Australia, Austria, Abu Dhabi, Argentina, Belgium, Bolivia, Bahrain, Canada, Chile, Colombia,
Denmark, Ecuador, France, West
Germany, Greece, Guatemala, Hongkong, Honduras, Italy, Japan, Jordan, Lebanon, Mexico, Morocco,
Panama, New Zealand, Norway, Sweden, Switzerland, Syria, El Salvador, South Africa, Zambia, Egypt,
and Iran, among others;
(g)  The trademark BARBIZON was fraudulently registered in the Philippines by one Lolita R. Escobar
under Registration No. 21920, issued on September 11, 1974, in violation of Article 189 (3) of the
Revised Penal Code and Section 4 (d) of the Trademark Law.  Herein... respondent applicant acquired by
assignment the `rights' to the said mark previously registered by Lolita Escobar, hence respondent-
applicant's title is vitiated by the same fraud and criminal act.  Besides, Certificate of Registration No.
21920 has been cancelled for... failure of either Lolita Escobar or herein respondent-applicant, to
seasonably file the statutory affidavit of use.  By applying for a re-registration of the mark BARBIZON
subject of this opposition, respondent-applicant seeks to perpetuate the fraud and criminal act...
committed by Lolita Escobar.
(h) Opposer's BARBIZON as well as its BARBIZON and Bee Design and BARBIZON and Representation of a
Woman trademarks qualify as well-known trademarks entitled to protection under Article 6bis of the
Convention of Paris for the Protection of Industrial Property and further... amplified by the
Memorandum of the Minister of Trade to the Honorable Director of Patents dated October 25, 1983
[sic],[4] Executive Order No. 913 dated October 7, 1963 and the Memorandum of the Minister of Trade
and Industry to the Honorable
Director of Patents dated October 25, 1983.
Forthwith, private respondent filed before the Office of Legal Affairs of the DTI a petition for cancellation
of petitioner's business name.
"WHEREFORE, the present Opposition in Inter Partes Case No. 2049 is hereby DECLARED BARRED by res
judicata and is hereby DISMISSED.  Accordingly, Application Serial No. 45011 for trademark BARBIZON
filed by Pribhdas J. Mirpuri is GIVEN DUE COURSE.
Private respondent questioned this decision before the Court of Appeals in CA-G.R. SP No. 28415.  On
April 30, 1993, the Court of Appeals reversed the Director of Patents finding that IPC No. 686 was not
barred by judgment in IPC No. 2049 and ordered that the case be... remanded to the Bureau of Patents
for further proceedings, viz:
IN VIEW WHEREOF, the petition is denied and the Decision and Resolution of the Court of Appeals in CA-
G.R. SP No. 28415 are affirmed.
Issues:
Accordingly, the only issue for my disposition is whether or not the herein opposer would probably be
damaged by the registration of the trademark BARBIZON sought by the respondent-applicant on the
ground that it so resembles the trademark BARBIZON allegedly used and owned by... the former to be
`likely to cause confusion, mistake or to deceive purchasers.'
Ruling:
Modern authorities on trademark law view trademarks as performing three distinct functions:
With constant use, the mark acquired popularity and became voluntarily adopted.  It was not intended
to create or continue monopoly but to give the customer an index or guarantee of quality.[21
Today, the trademark is not merely a symbol of origin and goodwill; it is often the most effective agent
for the actual creation and protection of goodwill.
In other words, the mark actually sells the goods.[28] The mark has become the "silent salesman," the
conduit through which direct contact between the trademark owner and the consumer is assured.
Petitioner brings this action claiming that "Barbizon" products have been sold in the Philippines since
1970. Petitioner developed this market by working long hours and spending considerable sums of
money on... advertisements and promotion of the trademark and its products.  Now, almost thirty years
later, private respondent, a foreign corporation, "swaggers into the country like a conquering hero,"
usurps the trademark and invades petitioner's market.[32]
Justice and fairness dictate that private respondent be prevented from appropriating what is not its
own.  Legally, at the same time, private respondent is barred from questioning petitioner's ownership of
the trademark because of res judicata.
Literally, res judicata means a matter adjudged, a thing judicially acted upon or decided; a thing or
matter settled by judgment.[34] In res judicata, the judgment in the first action is considered conclusive
as to every matter offered... and received therein, as to any other admissible matter which might have
been offered for that purpose, and all other matters that could have been adjudged therein.[35] Res
judicata is an absolute bar to a subsequent action for the same cause; and... its requisites are:  (a) the
former judgment or order must be final; (b) the judgment or order must be one on the merits; (c) it
must have been rendered by a court having jurisdiction over the subject matter and parties; (d) there
must be between the first and second... actions, identity of parties, of subject matter and of causes of
action.[36]
On record, there can be no doubt that respondent-applicant's sought-to-be-registered trademark
BARBIZON is similar, in fact obviously identical, to opposer's alleged trademark BARBIZON, in spelling
and pronunciation.  The only appreciable but very negligible difference lies... in their respective
appearances or manner of presentation.  Respondent-applicant's trademark is in bold letters (set against
a black background), while that of the opposer is offered in stylish script letters.
The decision in IPC No. 686 was a judgment on the merits and it was error for the Court of Appeals to
rule that it was not.
This Article governs protection of well-known trademarks.  Under the first paragraph, each country of
the Union bound itself to undertake to refuse or cancel the registration, and prohibit the use of a
trademark which is a reproduction, imitation or... translation, or any essential part of which trademark
constitutes a reproduction, liable to create confusion, of a mark considered by the competent authority
of the country where protection is sought, to be well-known in the country as being already the mark of
a person entitled... to the benefits of the Convention, and used for identical or similar goods.
In the instant case, the issue of ownership of the trademark "Barbizon" was not raised in IPC No. 686. 
Private respondent's opposition therein was merely anchored on:
(a) "confusing similarity" of its trademark with that of Escobar's;
(b) that the registration of Escobar's similar trademark will cause damage to private respondent's
business reputation and goodwill; and
(c) that Escobar's use of the trademark amounts to an unlawful appropriation of a mark previously used
in the Philippines which act is penalized under Section 4 (d) of the Trademark Law.
A major proportion of international trade depends on the protection of intellectual property rights.[89]
Since the late 1970's, the unauthorized counterfeiting of industrial property and trademarked products
has had a considerable adverse impact on domestic... and international trade revenues.[90] The TRIPs
Agreement seeks to grant adequate protection of intellectual property rights by creating a favorable
economic environment to encourage the inflow of foreign investments, and strengthening the multi-
lateral... trading system to bring about economic, cultural and technological independence.[91] The
Philippines and the United States of America have acceded to the WTO Agreement. This Agreement has
revolutionized international business and economic relations among... states, and has propelled the
world towards trade liberalization and economic globalization.[92] Protectionism and isolationism
belong to the past.  Trade is no longer confined to a bilateral system.  There is now "a new era of global
economic... cooperation, reflecting the widespread desire to operate in a fairer and more open
multilateral trading system."[93] Conformably, the State must reaffirm its commitment to the global
community and take part in evolving a new international economic order at... the dawn of the new
millenium.
Principles:
The Convention of Paris for the Protection of Industrial Property is a multi-lateral treaty which the
Philippines bound itself to honor and enforce in this country.  As to whether or not the treaty affords
protection to a foreign corporation against a
Philippine applicant for the registration of a similar trademark is the principal issue in this case.
Before ruling on the issues of the case, there is need for a brief background on the function and
historical development of trademarks and trademark law.
A "trademark" is defined under R.A. 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 from those manufactured, sold or dealt in... by others."[11] This
definition has been simplified in R.A. No. 8293, the Intellectual Property Code of the Philippines, which
defines a "trademark" as "any visible sign capable of distinguishing goods."[12] In Philippine...
jurisprudence, the function of a trademark is to point out distinctly the origin or ownership of the goods
to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior
article of merchandise, the fruit of his industry and skill; to... assure the public that they are procuring
the genuine article; to prevent fraud and imposition; and to protect the manufacturer against
substitution and sale of an inferior and different article as his product.[13]
(1) they indicate origin or ownership of the articles to which they are attached; (2) they guarantee that
those articles come up to a certain standard of quality; and (3) they... advertise the articles they
symbolize.[14]
The Convention of Paris for the Protection of Industrial Property, otherwise known as 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.[41] The Convention is
essentially a compact among various countries which, as members of the Union, have pledged to accord
to citizens of the other... member countries trademark and other rights  comparable to those accorded
their own citizens by their domestic laws for an effective protection against unfair competition.[42] 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.[43] Nationals of the various member nations are thus
assured of a certain minimum of international protection of their industrial property.[44]
(1)  The countries of the Union undertake, either administratively if their legislation so permits, or at the
request of an interested party, to refuse or to cancel the registration and to prohibit the use, of a
trademark which constitutes a reproduction, an... imitation, or a translation, liable to create confusion,
of a mark considered by the competent authority of the country of registration or use to be well-known
in that country as being already the mark of a person entitled to the benefits of this Convention and
used for... identical or similar goods.  These provisions shall also apply when the essential part of the
mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion
therewith.
W LAND HOLDINGS v. STARWOOD HOTELS, GR No. 222366, 2017-12-04
Facts:
Starwood filed before the IPO an application for registration of the trademark "W" for Classes 43[6] and
44
Starwood's application was granted and thus, the "W" mark was registered in its name.
W Land applied[11] for the registration of its own "W" mark for Class 36,[12] which thereby prompted
Starwood to oppose the same.
the BLA found merit in Starwood's opposition, and ruled that W Land's "W" mark is confusingly similar
with Starwood's mark,[15] which had an earlier filing date.
W Land filed a Petition for Cancellation[18] of Starwood's mark for non-use... claiming that Starwood has
failed to use its mark in the Philippines because it has no hotel or establishment in the Philippines
rendering the services covered by its registration; and that Starwood's "W" mark application and
registration barred its own "'W" mark application and registration for use on real estate
Starwood denied having abandoned the subject mark on the ground of non-use, asserting that it filed
with the Director of Trademarks a notarized Declaration of Actual Use[23] (DAU)[24] with evidence of
use on December 2, 2008,[25] which was not rejected.
In this relation, Starwood argued that it conducts hotel and leisure business both directly and indirectly
through subsidiaries and franchisees, and operates interactive websites for its W Hotels in order to
accommodate its potential clients worldwide.[... the BLA ruled in W Land's favor, and accordingly
ordered the cancellation of Starwood's registration for the "W" mark.
the IPO DG granted Starwood's appeal,[33] thereby dismissing W Land's Petition for Cancellation.
the CA affirmed the IPO DG ruling.
Issues:
whether or not the CA correctly affirmed the IPO DG's dismissal of W Land's Petition for Cancellation of
Starwood's "W'' mark.
Ruling:
The petition is without merit.
The actual use of the mark representing the goods or services introduced and transacted in commerce
over a period of time creates that goodwill which the law seeks to protect. For this reason, the IP Code,
under Section 124.2,[54] requires the registrant or owner of a registered mark to declare "actual use of
the mark" (DAU) and present evidence of such use within the prescribed period. Failing in which, the IPO
DG may cause the motu propio removal from the register of the mark's registration.[55] Also, any
person, believing that "he or she will be damaged by the registration of a mark," which has not been
used within the Philippines, may file a petition for cancellation.[56] Following the basic rule that he who
alleges must prove his case,[57] the burden lies on the petitioner to show damage and non-use.
The IP Code and the Trademark Regulations have not specifically defined "use." However, it is
understood that the "use" which the law requires to maintain the registration of a mark must be
genuine, and not merely token. Based on foreign authorities,[58] genuine use may be characterized as a
bona fide use which results or tends to result, in one way or another, into a commercial interaction or
transaction "in the ordinary course of trade."
The Trademark Regulations was amended by Office Order No. 056-13.
RULE 205. Contents of the Declaration and Evidence of Actual Use.
Based on the amended Trademark Regulations, it is apparent that the IPO has now given due regard to
the advent of commerce on the internet. Specifically, it now recognizes, among others, "downloaded
pages from the website of the applicant or registrant clearly showing that the goods are being sold or
the services are being rendered in the Philippines," as well as "for online sale, receipts of sale of the
goods or services rendered or other similar evidence of use, showing that the goods are placed on the
market or the services are available in the Philippines or that the transaction took place in the
Philippines,"[63] as acceptable proof of actual use.
Cognizant of this current state of affairs, the Court therefore agrees with the IPO DG, as affirmed by the
CA, that the use of a registered mark representing the owner's goods or services by means of an
interactive website may constitute proof of actual use that is sufficient to maintain the registration of
the same.
Since the internet has turned the world into one vast marketplace, the owner of a registered mark is
clearly entitled to generate and further strengthen his commercial goodwill by actively marketing and
commercially transacting his wares or services throughout multiple platforms on the internet.
It must be emphasized, however, that the mere exhibition of goods or services over the internet,
without more, is not enough to constitute actual use. To reiterate, the "use" contemplated by law is
genuine use - that is, a bona fide kind of use tending towards a commercial transaction in the ordinary
course of trade. Since the internet creates a borderless marketplace, it must be shown that the owner
has actually transacted, or at the very least, intentionally targeted customers of a particular jurisdiction
in order to be considered as having used the trade mark in the ordinary course of his trade in that
country. A showing of an actual commercial link to the country is therefore imperative.
In this case, Starwood has proven that it owns Philippine registered domain names,[74] i.e.,
www.whotels.ph, www.wreservations.ph, www.whotel.ph, www.wreservation.ph, for its website that
showcase its mark.
Taken together, these facts and circumstances show that Starwood's use of its "W" mark through its
interactive website is intended to produce a discernable commercial effect or activity within the
Philippines, or at the very least, seeks to establish commercial interaction with local consumers.
Accordingly, Starwood's use of the "W" mark in its reservation services through its website constitutes
use of the mark sufficient to keep its registration in force.
Thus, Starwood's use of the "W" mark for reservation services through its website constitutes use of the
mark which is already sufficient to protect its registration under the entire subject classification from
non-use cancellation. This, notwithstanding the absence of a Starwood hotel or establishment in the
Philippines.
Finally, it deserves pointing out that Starwood submitted in 2008 its DAU with evidence of use which the
IPO, through its Director of Trademarks and later by the IPO DG in the January 10, 2014 Decision, had
accepted and recognized as valid. The Court finds no reason to disturb this recognition. According to
jurisprudence, administrative agencies, such as the IPO, by means of their special knowledge and
expertise over matters falling within their jurisdiction are in a better position to pass judgment on this
issue.[81] Thus, their findings are generally accorded respect and finality, as long as they are supported
by substantial evidence. In this case, there is no compelling basis to reverse the IPO DG's findings - to
keep Starwood's registration for the "W" mark in force - as they are well supported by the facts and the
law and thus, deserve respect from this Court.
Corporation v. Daway

G.R. No. 157216  November 20, 2003

Lessons Applicable: Jurisdiction of Trial court, special affirmative defences on infringement

Laws Applicable:

FACTS:
•    Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and Crown Device,
filed against 246 Corporation the instant suit for trademark infringement and damages with prayer for
the issuance of a restraining order or writ of preliminary injunctionbefore the RTC of QC
o    July 1996: 246 adopted and , since then, has been using without authority the mark “Rolex” in its
business name “Rolex Music Lounge” as well as in its newspaper advertisements as “Rolex Music
Lounge, KTV, Disco & Party Club.”
•    246 answered special affirmative defences: no confusion would arise from the use by petitioner of
the mark “Rolex” considering that its entertainment business is totally unrelated to the items catered by
respondents such as watches, clocks, bracelets and parts thereof
•    RTC: quashed the subpoena ad testificandum and denied petitioner’s motion for preliminary hearing
on affirmative defenses with motion to dismiss
•    CA: affirmed

ISSUE: W/N RTC performed a grave abuse of discretion

HELD: NO. petition denied. RTC affirmed

•    The issue of whether or not a trademark infringement exists, is a question of fact that could best be
determined by the trial court.
•    Section 123.1(f) of the Intellectual Property Code (Republic Act No. 8293)
o    (f)      Is identical with, or confusingly similar to, or constitutes a translation of a mark considered
well-known in accordance with the preceding paragraph, which is registered in the Philippines with
respect to goods or services which are not similar to those with respect to which registration is applied
for: Provided, That use of the mark in relation to those goods or services would indicate a connection
between those goods or services, and the owner of the registered mark: Provided, further, That the
interest of the owner of the registered mark are likely to be damaged by such use
•    Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely unrelated to
respondents’ business involving watches, clocks, bracelets, etc.  However, the Court cannot yet resolve
the merits of the present controversy considering that the requisites for the application of Section
123.1(f), which constitute the kernel issue at bar, clearly require determination facts of which need to
be resolved at the trial court.  The existence or absence of these requisites should be addressed in a full
blown hearing and not on a mere preliminary hearing.  The respondent must be given ample
opportunity to prove its claim, and the petitioner to debunk the same.
G.R. No. 101897. March 5, 1993.

LYCEUM OF THE PHILIPPINES, INC., petitioner, vs. COURT OF APPEALS, LYCEUM OF APARRI, LYCEUM OF
CABAGAN, LYCEUM OF CAMALANIUGAN, INC., LYCEUM OF LALLO, INC., LYCEUM OF TUAO, INC., BUHI
LYCEUM, CENTRAL LYCEUM OF CATANDUANES, LYCEUM OF SOUTHERN PHILIPPINES, LYCEUM OF
EASTERN MINDANAO, INC. and WESTERN PANGASINAN LYCEUM, INC., respondents.

DECISION

FELICIANO, J p:

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.

On 24 February 1984, 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 following private respondents were declared in default for failure to file an answer despite service
of summons:

Buhi Lyceum;

Central Lyceum of Catanduanes;

Lyceum of Eastern Mindanao, Inc.; and

Lyceum of Southern Philippines

Petitioner's original complaint before the SEC had included three (3) other entities:

1. The Lyceum of Malacanay;

2. The Lyceum of Marbel; and

3. The Lyceum of Araullo

The complaint was later withdrawn insofar as concerned the Lyceum of Malacanay and the Lyceum of
Marbel, for failure to serve summons upon these two (2) entities. The case against the Liceum of Araullo
was dismissed when that school motu proprio change its corporate name to "Pamantasan ng Araullo."

The background of the case at bar needs some recounting. Petitioner had sometime before commenced
in the SEC a proceeding (SEC-Case No. 1241) against the Lyceum of Baguio, Inc. to require it to change its
corporate name and to adopt another name not "similar [to] or identical" with that of petitioner. In an
Order dated 20 April 1977, Associate Commissioner Julio Sulit held that the corporate name of
petitioner and that of the Lyceum of Baguio, Inc. were substantially identical because of the presence of
a "dominant" word, i.e., "Lyceum," 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 Lyceum of Baguio, Inc. assailed the Order of the SEC before the Supreme Court in a case docketed as
G.R. No. L-46595. In a Minute Resolution dated 14 September 1977, the Court denied the Petition for
Review for lack of merit. Entry of judgment in that case was made on 21 October 1977. 2

Armed with the Resolution of this Court in G.R. No. L-46595, petitioner then wrote all the educational
institutions it could find using the word "Lyceum" as part of their corporate name, and advised them to
discontinue such use of "Lyceum." When, with the passage of time, it became clear that this recourse
had failed, petitioner instituted before the SEC SEC-Case No. 2579 to enforce what petitioner claims as
its proprietary right to the word "Lyceum." 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 (SEC-Case No. 1241) 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.

Before this Court, petitioner asserts that the Court of Appeals committed the following errors:

1. The Court of Appeals erred in holding that the Resolution of the Supreme Court in G.R. No. L-46595
did not constitute stare decisis as to apply to this case and in not holding that said Resolution bound
subsequent determinations on the right to exclusive use of the word Lyceum.

2. The Court of Appeals erred in holding that respondent Western Pangasinan Lyceum, Inc. was
incorporated earlier than petitioner.

3. The Court of Appeals erred in holding that the word Lyceum has not acquired a secondary meaning in
favor of petitioner.

4. The Court of Appeals erred in holding that Lyceum as a generic word cannot be appropriated by the
petitioner to the exclusion of others. 5

We will consider all the foregoing ascribed errors, though not necessarily seriatim. We begin by noting
that the Resolution of the Court in G.R. No. L-46595 does not, of course, constitute res adjudicata in
respect of the case at bar, since there is no identity of parties. Neither is stare decisis pertinent, if only
because the SEC En Banc itself has re-examined Associate Commissioner Sulit's ruling in the Lyceum of
Baguio case. The Minute Resolution of the Court in G.R. No. L-46595 was not a reasoned adoption of the
Sulit ruling.

The Articles of Incorporation of a corporation must, among other things, set out the name of the
corporation. 6 Section 18 of the Corporation Code establishes a restrictive rule insofar as corporate
names are concerned:

"SECTION 18. Corporate name. — No corporate name may be allowed by the Securities an Exchange
Commission if the proposed name is identical or deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by law or is patently deceptive, confusing or
contrary to existing laws. When a change in the corporate name is approved, the Commission shall issue
an amended certificate of incorporation under the amended name." (Emphasis supplied)

The policy underlying the prohibition in Section 18 against the registration of a corporate name which is
"identical or deceptively or confusingly similar" to that of any existing corporation or which is "patently
deceptive" or "patently confusing" or "contrary to existing laws," is the avoidance of fraud upon the
public which would have occasion to deal with the entity concerned, the evasion of legal obligations and
duties, and the reduction of difficulties of administration and supervision over corporations. 7

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.

Etymologically, the word "Lyceum" is the Latin word for the Greek lykeion which in turn referred to a
locality on the river Ilissius in ancient Athens "comprising an enclosure dedicated to Apollo and adorned
with fountains and buildings erected by Pisistratus, Pericles and Lycurgus frequented by the youth for
exercise and by the philosopher Aristotle and his followers for teaching." 8 In time, the word "Lyceum"
became associated with schools and other institutions providing public lectures and concerts and public
discussions. Thus today, the word "Lyceum" generally refers to a school or an institution of learning.
While the Latin word "lyceum" has been incorporated into the English language, the word is also found
in Spanish (liceo) and in French (lycee). As the Court of Appeals noted in its Decision, Roman Catholic
schools frequently use the term; e.g., "Liceo de Manila," "Liceo de Baleno" (in Baleno, Masbate), "Liceo
de Masbate," "Liceo de Albay." 9 "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
(though this is a question of fact which we need not resolve) 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.

It is claimed, however, by petitioner that the word "Lyceum" has acquired a secondary meaning in
relation to petitioner with the result that that word, although originally a generic, has become
appropriable by petitioner to the exclusion of other institutions like private respondents herein.

The doctrine of secondary meaning originated in the field of trademark law. Its application has,
however, been extended to corporate names sine the right to use a corporate name to the exclusion of
others is based upon the same principle which underlies the right to use a particular trademark or
tradename. 10 In Philippine Nut Industry, Inc. v. Standard Brands, Inc., 11 the doctrine of secondary
meaning was elaborated in the following terms:

" . . . 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." 12

Issue: The question which arises, therefore, is whether or not the use by petitioner of "Lyceum" in its
corporate name has been for such length of time and with such exclusivity as to have become associated
or identified with the petitioner institution in the mind of the general public (or at least that portion of
the general public which has to do with schools).

Held: The Court of Appeals recognized this issue and answered it in the negative:

"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 (Ana Ang vs. Toribio Teodoro, 74 Phil. 56). This circumstance has
been referred to as the distinctiveness into which the name or phrase has evolved through the
substantial and exclusive use of the same for a considerable period of time. Consequently, the same
doctrine or principle cannot be made to apply where the evidence did not prove that the business (of
the plaintiff) has continued for so long a time that it has become of consequence and acquired a good
will of considerable value such that its articles and produce have acquired a well-known reputation, and
confusion will result by the use of the disputed name (by the defendant) (Ang Si Heng vs. Wellington
Department Store, Inc., 92 Phil. 448).

With the foregoing as a yardstick, [we] believe the appellant failed to satisfy the aforementioned
requisites. No evidence was ever presented in the hearing before the Commission which sufficiently
proved that the word 'Lyceum' has indeed acquired secondary meaning in favor of the appellant. If there
was any of this kind, the same tend to prove only that the appellant had been using the disputed word
for a long period of time. Nevertheless, its (appellant) exclusive use of the word (Lyceum) was never
established or proven as in fact the evidence tend to convey that the cross-claimant was already using
the word 'Lyceum' seventeen (17) years prior to the date the appellant started using the same word in
its corporate name. Furthermore, educational institutions of the Roman Catholic Church had been using
the same or similar word like 'Liceo de Manila,' 'Liceo de Baleno' (in Baleno, Masbate), 'Liceo de
Masbate,' 'Liceo de Albay' long before appellant started using the word 'Lyceum'. The appellant also
failed to prove that the word 'Lyceum' has become so identified with its educational institution that
confusion will surely arise in the minds of the public if the same word were to be used by other
educational institutions.

In other words, 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. Consequently, the
allegations of the appellant in its first two assigned errors must necessarily fail." 13 (Underscoring partly
in the original and partly supplied)

We agree with the Court of Appeals. The number alone of the private respondents in the case at bar
suggests strongly that petitioner's use of the word "Lyceum" has not been attended with the exclusivity
essential for applicability of the doctrine of secondary meaning. It may be noted also that at least one of
the private respondents, i.e., the Western Pangasinan Lyceum, Inc., used the term "Lyceum" seventeen
(17) years before the petitioner registered its own corporate name with the SEC and began using the
word "Lyceum." It follows that if any institution had acquired an exclusive right to the word "Lyceum,"
that institution would have been the Western Pangasinan Lyceum, Inc. rather than the petitioner
institution.

In this connection, petitioner argues that because the Western Pangasinan Lyceum, Inc. failed to
reconstruct its records before the SEC in accordance with the provisions of R.A. No. 62, which records
had been destroyed during World War II, Western Pangasinan Lyceum should be deemed to have lost all
rights it may have acquired by virtue of its past registration. It might be noted that the Western
Pangasinan Lyceum, Inc. registered with the SEC soon after petitioner had filed its own registration on
21 September 1950. Whether or not Western Pangasinan Lyceum, Inc. must be deemed to have lost its
rights under its original 1933 registration, appears to us to be quite secondary in importance; we refer to
this earlier registration simply to underscore the fact that petitioner's use of the word "Lyceum" was
neither the first use of that term in the Philippines nor an exclusive use thereof. Petitioner's use of the
word "Lyceum" was not exclusive but was in truth shared with the Western Pangasinan Lyceum and a
little later with other private respondent institutions which registered with the SEC using "Lyceum" as
part of their corporation names. There may well be other schools using Lyceum or Liceo in their names,
but not registered with the SEC because they have not adopted the corporate form of organization.

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. To determine whether a given corporate name is "identical" or "confusingly or
deceptively similar" with another entity's corporate name, it is not enough to ascertain the presence of
"Lyceum" or "Liceo" in both names. One must evaluate corporate names in their entirety and when the
name of petitioner is juxtaposed with the names of private respondents, they are not reasonably
regarded as "identical" or "confusingly or deceptively similar" with each other.

WHEREFORE, the petitioner having failed to show any reversible error on the part of the public
respondent Court of Appeals, the Petition for Review is DENIED for lack of merit, and the Decision of the
Court of Appeals dated 28 June 1991 is hereby AFFIRMED. No pronouncement as to costs.

SO ORDERED.
CANON KABUSHIKI KAISHA v. CA, GR No. 120900, 2000-07-20
Facts:
On January 15, 1985, private respondent NSR Rubber Corporation (private respondent) filed an
application for registration of the mark CANON for sandals in the Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT). A Verified Notice of Opposition was filed by petitioner,... a foreign
corporation duly organized and existing under the laws of Japan, alleging that it will be damaged by the
registration of the trademark CANON in the name of private respondent. The case was docketed as Inter
Partes Case No. 3043.
Based on the records, the evidence presented by petitioner consisted of its certificates of registration
for the mark CANON in various countries covering goods belonging to class 2 (paints, chemical products,
toner, and dye stuff). Petitioner also submitted in evidence its
Philippine Trademark Registration No. 39398, showing its ownership over the trademark CANON also
under class 2.
We find the arguments of petitioner to be unmeritorious. Ordinarily, the ownership of a trademark or
tradename is a property right that the owner is entitled to protect[4] as mandated by the Trademark
Law.[5] However, when a trademark... is used by a party for a product in which the other party does not
deal, the use of the same trademark on the latter's product cannot be validly objected to
Issues:
The BPTTT and the Court of Appeals share the opinion that the trademark "CANON" as used by
petitioner for its paints, chemical products, toner, and dyestuff, can be used by private respondent for
its sandals because the products of these two parties are dissimilar.
Ruling:
Petitioner counters that notwithstanding the dissimilarity of the products of the parties, the trademark
owner is entitled to protection when the use of by the junior user "forestalls the normal expansion of his
business".[7] Petitioner's opposition to the... registration of its trademark CANON by private respondent
rests upon petitioner's insistence that it would be precluded from using the mark CANON for various
kinds of footwear, when in fact it has earlier used said mark for said goods. Stretching this argument,
petitioner claims... that it is possible that the public could presume that petitioner would also produce a
wide variety of footwear considering the diversity of its products marketed worldwide.
We do not agree. Even in this instant petition, except for its bare assertions, petitioner failed to attach
evidence that would convince this Court that petitioner has also embarked in the production of
footwear products.
The herein petitioner has not made known that it intends to venture into the business of producing
sandals. This is clearly shown in its Trademark Principal Register (Exhibit "U") where the products of the
said petitioner had been clearly and specifically described... as "Chemical products, dyestuffs, pigments,
toner developing preparation, shoe polisher, polishing agent". It would be taxing one's credibility to aver
at this point that the production of sandals could be considered as a possible "natural or normal
expansion" of its business... operation"
Petitioner further argues that the alleged diversity of its products all over the world makes it plausible
that the public might be misled into thinking that there is some supposed connection between private
respondent's goods and petitioner. Petitioner is apprehensive that... there could be confusion as to the
origin of the goods, as well as confusion of business, if private respondent is allowed to register the
mark CANON. In such a case, petitioner would allegedly be immensely prejudiced if private respondent
would be permitted to take "a free ride... on, and reap the advantages of, the goodwill and reputation of
petitioner Canon"... n cases of confusion of business or origin, the question that usually arises is whether
the respective goods or services of the senior user and the junior user are so related as to likely cause
confusion of business or origin, and thereby render the trademark or tradenames... confusingly similar.
[18] 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.[19] They may also be related because they serve the same purpose or
are sold in grocery stores.
Undoubtedly, the paints, chemical products, toner and dyestuff of petitioner that carry the trademark
CANON are unrelated to sandals, the product of private respondent. We agree with the BPTTT, following
the Esso doctrine, when it noted that the two classes of products in this... case flow through different
trade channels. The products of petitioner are sold through special chemical stores or distributors while
the products of private respondent are sold in grocery stores, sari-sari stores and department stores.
Thus, the... evident disparity of the products of the parties in the case at bar renders unfounded the
apprehension of petitioner that confusion of business or origin might occur if private respondent is
allowed to use the mark CANON.
PACITA I. HABANA, ALICIA L. CINCO and JOVITA N. FERNANDO vs. FELICIDAD C. ROBLES and GOODWILL
TRADING CO., INC.
G.R. No. 131522, July 19, 1999

FACTS: Pacita Habana et al., are authors and copyright owners of duly issued of the book, College English
For Today (CET). Respondent Felicidad Robles was the author of the book Developing English Proficiency
(DEP). Petitioners found that several pages of the respondent's book are similar, if not all together a
copy of petitioners' book. Habana et al. filed an action for damages and injunction, alleging respondent’s
infringement of copyrights, in violation of P.D. 49. They allege respondent Felicidad C. Robles being
substantially familiar with the contents of petitioners' works, and without securing their permission,
lifted, copied, plagiarized and/or transposed certain portions of their book CET.

On the other hand, Robles contends that the book DEP is the product of her own intellectual creation,
and was not a copy of any existing valid copyrighted book and that the similarities may be due to the
authors' exercise of the "right to fair use of copyrighted materials, as guides."

The trial court ruled in favor of the respondents, absolving them of any liability.  Later, the Court of
Appeals rendered judgment in favor of respondents Robles and Goodwill Trading Co., Inc. In this appeal,
petitioners submit that the appellate court erred in affirming the trial court's decision.

ISSUE: Whether Robles committed infringement in the production of DEP.

HELD: A perusal of the records yields several pages of the book DEP that are similar if not identical with
the text of CET. The court finds that respondent Robles' act of lifting from the book of petitioners
substantial portions of discussions and examples, and her failure to acknowledge the same in her book is
an infringement of petitioners' copyrights.

In the case at bar, the least that respondent Robles could have done was to acknowledge petitioners
Habana et. al. as the source of the portions of DEP. The final product of an author's toil is her book. To
allow another to copy the book without appropriate acknowledgment is injury enough.