DOMICIANO A. AGUAS, petitioner, vs. CONRADO G.

DE LEON and COURT OF

APPEALS, respondents.
GR No. L-32160, January 30, 1982

DOCTRINE:
Where improvement in tile making is inventive and different from old process of tile making,
improvement is patentable.
FACTS:
Conrado G. de Leon filed in the CFI of Rizal at Quezon City a complaint for infringement of
patent against Domiciano A. Aguas and F. H. Aquino and Sons alleging that being the
original, first and sole inventor of certain new and useful improvements in the process of
making mosaic pre-cast tiles, he was lawfully granted a patent (Patent No.658). The said
invention was new, useful, not known or used by others in the country.
He alleged that Aguas infringed the patent by making, using and selling tiles embodying said
patent invention and F.H. Aquino & Sons is guilty of infringement by making and furnishing
to the defendant Domiciano A. Aguas the engravings, castings and devices designed and
intended of tiles embodying his patented invention.He has given notice to the defendants of
their said acts of infringement and requested them to desist, but, defendants have refused and
neglected to desist and have disregarded such request. He sought for the issuance of a
preliminary injunction, which was subsequently granted.
Aguas filed his answer denying the allegations of the plaintiff and alleging that: the plaintiff
is neither the original, first nor sole inventor of the improvements in the process of making
mosaic pre-cast tiles, the same having been used by several tile-making factories in the
Philippines and abroad years before the alleged invention by de Leon. He further alleged that
that (a) the invention of plaintiff is neither inventive nor new, hence, it is not patentable, (b)
defendant has been granted valid patents on designs for concrete decorative wall tiles; and (c)
that he cannot be guilty of infringement because his products are different from those of the
plaintiff. RTC ruled in favor of de Leon. On appeal, CA affirmed the RTC decision.
ISSUE:
Whether or not the alleged invention or discovery of the respondent is patentable.
RULING:
YES. The respondent’s improvement is indeed inventive and goes beyond the exercise of
mechanical skill. He has introduced a new kind of tile for a new purpose. He has improved
the old method of making tiles and precast articles which were not satisfactory because of an
intolerable number of breakages, especially if deep engravings are made on the tile. He has
overcome the problem of producing decorative tiles with deep engraving, but with sufficient
durability. Durability inspite of the thinness and lightness of the tile, is assured, provided that
a certain critical depth is maintained in relation to the dimensions of the tile.
COFFEE PARTNERS, INC., petitioner, vs. SAN FRANCISCO COFFEE &
ROASTERY, INC., respondent.
G.R. No. 169504, March 3, 2010

DOCTRINE:

A trade name need not be registered with the Intellectual Property Office (IPO) before an
infringement suit may be filed by its owner against the owner of an infringing trademark; All
that is required is that the trade name is previously used in trade or commerce in the
Philippines.

FACTS:

Petitioner Coffee Partners entered into a franchise agreement with Coffee Partners Ltd. to
operate coffee shops in the country using the trademark ‘San Francisco Coffee.’ Respondent
on the other hand, is a local corporation engaged in the wholesale and retail sale of coffee and
uses the business name ‘San Francisco Coffee & Roastery’ registered with the DTI. Later,
respondent filed an infringement and/or unfair competition complaint against petitioner
alleging that the latter was about to open a coffee shop under the name ‘San Francisco
Coffee’ causing confusion in the minds of the public as it bore a similar name and is engaged
also in selling of coffee. Petitioner contended no infringement would arise because
respondent’s tradename was not registered.

ISSUE:

Whether or not the petitioner’s use of the trademark "SAN FRANCISCO COFFEE"
constitutes infringement of respondent’s trade name "SAN FRANCISCO COFFEE &
ROASTERY, INC." even if the trade name is not registered with the Intellectual Property
Office (IPO).

RULING:

YES. A trade name need not be registered with the IPO before an infringement suit may be
filed by its owner against the owner of an infringing trademark. All that is required is that the
trade name is previously used in trade or commerce in the Philippines.

Section 165.2 of RA 8293 categorically states that trade names shall be protected, even prior
to or without registration with the IPO, against any unlawful act including any subsequent use
of the trade name by a third party, whether as a trade name or a trademark likely to mislead
the public.
SKECHERS, U.S.A., INC., petitioner, vs. INTER PACIFIC INDUSTRIAL TRADING
CORP., and/or INTER PACIFIC TRADING CORP. and/or STRONG SPORTS GEAR
CO., LTD., and/or STRONGSHOES WAREHOUSE and/or STRONG FASHION
SHOES TRADING and/or TAN TUAN HONG and/or VIOLETA T. MAGAYAGA
and/or JEFFREY R. MORALES and/or any of its other proprietor/s, directors, officers,
employees and/or occupants of its premises located at S-7, Ed & Joe’s Commercial
Arcade, No. 153 Quirino Avenue, Parañaque City, respondents.
G.R. No. 164321, March 28, 2011

DOCTRINE:
The Dominancy Test focuses on the similarity of the prevalent or dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the mind of the
purchasing public.
FACTS:
Petitioner filed a complaint with the National Bureau of Investigation (NBI) requesting
assistance in stopping the illegal importation, manufacture and sale of counterfeit products
bearing the trademarks it owns and in prosecuting the owners of the establishments engaged
therein.
Petitioner then filed with Regional Trial Court (RTC) an application for the issuance of
search warrants against an outlet and warehouse operated by respondents for infringement of
trademark, which the Court granted. After the seizure of the subject matter, the respondent
sought to quash the search warrants on the ground that there is no confusing similarity
between the petitioner’s Skechers’ rubber shoes and respondent’s Strong rubber shoes. The
court eventually issued an order quashing the search warrants.
ISSUE:
Whether or not there is a trademark infringement.
RULING:
YES. The Dominancy Test focuses on the similarity of the prevalent or dominant features of
the competing trademarks that might cause confusion, mistake, and deception in the mind of
the purchasing public. Duplication or imitation is not necessary; neither is it required that the
mark sought to be registered suggests an effort to imitate. Given more consideration are the
aural and visual impressions created by the marks on the buyers of goods, giving little weight
to factors like prices, quality, sales outlets, and market segments.
Applying the Dominancy Test to the case at bar, this Court finds that the use of the stylized
“S” by respondent in its Strong rubber shoes infringes on the mark already registered by
petitioner with the IPO. While it is undisputed that petitioner’s stylized “S” is within an oval
design, to this Court’s mind, the dominant feature of the trademark is the stylized “S,” as it is
precisely the stylized “S” which catches the eye of the purchaser. Thus, even if respondent
did not use an oval design, the mere fact that it used the same stylized “S”, the same being the
dominant feature of petitioner’s trademark, already constitutes infringement under the
Dominancy Test.
PHILIPPINE NUT INDUSTRY, INC., petitioner, vs. STANDARD BRANDS
INCORPORATED and TIBURCIO S. EVALLE, as Director of Patents, respondents.
GR No. L-23035, July 31, 1975

DOCTRINE:
Whether or not a trademark causes confusion and is likely to deceive the public is a question
of fact which is to be resolved by applying the “test of dominancy”.
FACTS:
Philippine Nut Industry Inc., a domestic corporation, obtained from the Patent Office a
certificate covering the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS," the
label used on its product of salted peanuts.
Standard Brands, a foreign corporation, filed a case with the Director of Patent, 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.
Thereafter, the Philippine Nut filed its answer invoking the special defense that its registered
label is not confusingly similar to that of Standard Brands as the latter alleges.
Respondent Director of Patents gave due course to Standard Brand's petition, ordering the
cancellation of Philippine Nut's Certificate of Registration.
Upon denial of the motion for reconsideration, the Philippine Nut petitioned for a review,
seeking the reversal of the Director of Patents’ decision.
ISSUE:
Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by
Philippine Nut on its label for salted peanuts with the same coloring scheme and the same
lay-out of words, confusingly similar to the trademark "PLANTERS COCKTAIL
PEANUTS" used by Standard Brands on its product.
RULING:
YES. 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.
McDONALD’S CORPORATION, petitioner, vs. MACJOY FASTFOOD
CORPORATION, respondent.
G.R. No. 166115 February 2, 2007

DOCTRINE:

In determining similarity and likelihood of confusion, jurisprudence has developed two tests
—the dominancy test and the holistic test; The dominancy test focuses on the similarity of the
prevalent features of the competing trademarks that might cause confusion or deception..

FACTS:

MacJoy Fastfood Corp. is a corporation in the sale of fastfood based in Cebu filed with IPO
for the registration of their name. McDonald's Corporation filed an opposition to the
application. McDonald's claims that their logo and use of their name would falsely tend to
suggest a connection with MacJoy's services and food products, thus, constituting a fraud
upon the general public and further cause the dilution of the distinctiveness of petitioner’s
registered and internationally recognized MCDONALD’S marks to its prejudice and
irreparable damage.

Respondent averred that MACJOY has been used for the past many years in good faith and
has spent considerable sums of money for said mark. The IPO held that there is confusing
similarity The CA held otherwise stating there are predominant difference like the spelling,
the font and color of the trademark and the picture of the logo.

ISSUE:

Whether there is a confusing similarity between the McDonald’s marks of the petitioner and
the respondent’s “MACJOY & DEVICE” trademark.

RULING:

YES. The Supreme Court ruled that the proper test to be used is the dominancy test. The
dominancy test not only looks at the visual comparisons between two trademarks but also the
aural impressions created by the marks in the public mind as well as connotative
comparisons, giving little weight to factors like prices, quality, sales outlets and market
segments. In the case at bar, the Supreme Court ruled that “McDonald’s” and “MacJoy”
marks are confusingly similar with each other such that an ordinary purchaser can conclude
an association or relation between the marks. To begin with, both marks use the corporate
“M” design logo and the prefixes “Mc” and/or “Mac” as dominant features. The first letter
“M” in both marks puts emphasis on the prefixes “Mc” and/or “Mac” by the similar way in
which they are depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is the
prefix “Mc,” an abbreviation of “Mac,” which visually and aurally catches the attention of the
consuming public. Verily, the word “MACJOY” attracts attention the same way as did
“McDonalds,” “MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the
MCDONALD’S marks which all use the prefixes Mc and/or Mac. Besides and most
importantly, both trademarks are used in the sale of fastfood products.
DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION,
petitioners, vs. COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING
INDUSTRIES, respondents.
G.R. No. 78325, January 25, 1990

DOCTRINE:
Side-by-side comparison not final test of similarity because average buyers do not make
minute scrutiny of label details.

FACTS:

Petitioner Del Monte Corporation (Del Monte), through its local distributor and
manufacturer, PhilPack filed an infringement of copyright complaint against respondent
Sunshine Sauce Manufacturing Industries (SSMI), also a maker of catsup and other kitchen
sauces. In its complaint, Del Monte alleged that SSMI are using bottles and logos identical to
the petitioner, to which is deceiving and misleading to the public.

In its answer, Sunshine alleged that it had ceased to use the Del Monte bottle and that its logo
was substantially different from the Del Monte logo and would not confuse the buying public
to the detriment of the petitioners.

The Regional Trial Court of Makati dismissed the complaint. It held that there were
substantial differences between the logos or trademarks of the parties nor on the continued
use of Del Monte bottles. The decision was affirmed in toto by the Court of Appeals.

ISSUE:

Whether or not SSMI committed infringement against Del Monte in the use of its logos and
bottles.

RULING:

YES. In determining whether two trademarks are confusingly similar, the two marks in their
entirety as they appear in the respective labels must be considered in relation to the goods to
which they are attached; the discerning eye of the observer must focus not only on the
precognizant words but also on the other features appearing on both labels. It has been
correctly held that side-by-side comparison is not the final test of similarity. In determining
whether a trademark has been infringed, we must consider the mark as a whole and not as
dissected.

The Court is agreed that are indeed distinctions, but similarities holds a greater weight in this
case. The Sunshine label is a colorable imitation of the Del Monte trademark. What is
undeniable is the fact that when a manufacturer prepares to package his product, he has
before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish
his product from the others. Sunshine chose, without a reasonable explanation, to use the
same colors and letters as those used by Del Monte though the field of its selection was so
broad, the inevitable conclusion is that it was done deliberately to deceive.