COMPAÑIA GENERAL DE TABACOS DE FILIPINAS v.

ALHAMBRA
CIGAR & CIGARETTE MANUFACTURING COMPANY
FACTS:
Compañia General filed an action against Alhambra for the violation
of the tradename “Isabela” and for unfair competition wherein the trial court
found that Compana General was entitled to the exclusive use of “Isabela”
as a trademark with cigarettes. On appeal, said motion was denied and
likewise received the same decision with the SC.
Inspite the injunction, the defendant continued to use the said name.
Thereafter, they placed on their cigarettes the words “Alhambra Isabela,"
simply changing the word "Isabelas" to "Isabela." It also placed on the back
of the packages the words "Blue Ribbon Cigarillos" as a distinctive name or
brand for its cigarettes.
ISSUE:
WON the plaintiff has the exclusive right over the said name
RULING:
Yes. It clearly prohibits the defendant from the use of the word
"Isabelas" or any word or name confusingly similar thereto as a
distinguishing brand or name of its cigarettes. It would be difficult to make
language clearer. That it is not so indefinite and vague that the defendant
was misled with respect to the acts with it prohibited is demonstrated by
defendant itself. It made no effort to change the word "Isabelas" which had
been the whole subject matter of the litigation and which was the word
expressly set out in the injunction; but, rather, it continued to use the same
word, reducing it from the plural to the singular as the only change. It did
not relocate the word on its cigarettes or change its form or size. It left it in
precisely the form, shape and style and in precisely the place as before.
With all these, the defendant will not be permitted to say that it sought
to use a different word or phrase and that by reason of the indefiniteness of
the injunction it fell into error, although in good faith it attempted to obey its
terms. It continued to use the prohibited word in precisely the manner prior
to the injunction; and it cannot be said that it was misled by the vagueness
of the injunction, for, however vague the injunction may have been, the
defendant could not have been ignorant of the fact that it had been
prohibited from using the word "Isabelas" the word that had been the very
center of the controversy in which the injunction was issued.
G.R. No. 114508 November 19, 1999
PRIBHDAS J. MIRPURI, vs. COURT OF APPEALS, DIRECTOR OF
PATENTS and the BARBIZON CORPORATION
PUNO, J.:
FACTS:
Escobar, the predecessor-in-interest of petitioner 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, claiming among others, that the trademark applied for is too
similar and confusing to the one that petitioner has and is still using.
(docketed as IPC No. 686). The Director of Patents rendered
judgment giving due course to Escobar’s application.
Escobar later assigned all her rights and interest over the trademark to
petitioner Mirpuri who, under his firm name then, the "Bonito Enterprises,"
was the sole and exclusive distributor of Escobar's "Barbizon" products.
In 1979, however, Escobar failed to file with the Bureau of Patents the
Affidavit of Use of the trademark required under Section 12 of R.A. 166.
Due to this failure, the Bureau of Patents cancelled Escobar's certificate of
registration.
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. (docketed as IPC No. 2049) Petitioner
raised the defense of res judicata.
Escobar assigned to petitioner the use of the business name "Barbizon
International." Petitioner registered the name with the Department of Trade
and Industry (DTI) for which a certificate of registration was issued in 1987.
Private respondent filed before the Office of Legal Affairs of the DTI a
petition for cancellation of petitioner's business name. DTI, Office of Legal
Affairs, cancelled petitioner's certificate of registration, and declared private
respondent the owner and prior user of the business name "Barbizon
International."
Director rendered a decision declaring private respondent's opposition
barred by res judicata and giving due course to petitioner's application for
registration. CA reversed the Director’s decision that case was barred and
ordered that the case be remanded to the Bureau of Patents for further
proceedings.
ISSUE :
Whether or not the Paris Convention affords protection to a foreign
corporation against a Philippine applicant for the registration of a similar
trademark.
RULING :
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.
It 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. Both the Philippines and the United States of America, are
signatories to the Convention. 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.
Private respondent anchors its cause of action on the first paragraph of
Article 6 of the Paris Convention, said Article governing protection of well-
known trademarks.
Art. 6 is a self-executing provision and does not require legislative
enactment to give it effect in the member country. It may be applied directly
by the tribunals and officials of each member country by the mere
publication or proclamation of the Convention, after its ratification according
to the public law of each state and the order for its execution.
The essential requirement under Article 6 is that the trademark to be
protected must be "well-known" in the country where protection is sought.
The power to determine whether a trademark is well-known lies in the
"competent authority of the country of registration or use." This competent
authority would be either the registering authority if it has the power to
decide this, or the courts of the country in question if the issue comes
before a court.
Pursuant to Article 6, then Minister Villafuerte of the Ministry of Trade
issued a Memorandum instructing Director of Patents to reject all pending
applications for Philippine registration of signature and other world-famous
trademarks by applicants other than their original owners or users,
enumerating several internationally-known trademarks and ordered the
Director of Patents to require Philippine registrants of such marks to
surrender their certificates of registration.
After, Minister Ongpin issued Memorandum which did not enumerate well-
known trademarks but laid down guidelines for the Director of Patents to
observe in determining whether a trademark is entitled to protection as a
well-known mark in the Philippines under Article 6 of the Paris Convention.
All pending applications for registration of world-famous trademarks by
persons other than their original owners were to be rejected forthwith.
The Supreme Court in the 1984 landmark case of La Chemise Lacoste,
S.A. v. Fernandez ruled therein that under the provisions of Article 6bis of
the Paris Convention, the Minister of Trade and Industry was the
"competent authority" to determine whether a trademark is well-known in
this country.
The Villafuerte Memorandum was issued in 1980. In the case at bar, the
first inter partes case, was filed in 1970, before the Villafuerte
Memorandum but 5 years after the effectivity of the Paris Convention.
Private respondent, however, did not cite the protection of Article 6bis,
neither did it mention the Paris Convention at all. It was only in 1981 when
second case was instituted that the Paris Convention and the Villafuerte
Memorandum, and, during the pendency of the case, the 1983 Ongpin
Memorandum were invoked by private respondent.
G.R. No. L-28499 September 30, 1977

VICTORIAS MILLING COMPANY, INC., petitioner,

vs.
ONG SU AND THE HONORABLE TIBURCIO S. EVALLE IN HIS
CAPACITY AS DIRECTOR OF PATENT'S, respondents.

Facts:
1. Petitioner Victorias Milling is the registered owner of the trademark
“VICTORIAS” with diamond design and is engaged in the
manufacture and sale of refined granulated sugar.
2. Respondent Ong Su is engaged in the repacking and sale of refine
sugar and is the registered owner of the trademark "VALENTINE".
3. Petitioner filed a petition to cancel respondent’s registration of
“VALENTINE”.
4. The Director of Patents denied the petition to cancel registration
because common geometric shapes such as diamonds ordinarily
are not regarded as indicia of origin for goods to which the
remarks are applied unless they have acquired a secondary
meaning.
5. Hence, this petition
Issue:
WON the diamond design in petitioner’s trademark has acquired
secondary meaning as to entitle the latter to exclusive use thereof.
Held:
No. The contention of petitioner that the diamond design in its
trademark is an index of origin has no merit.
The petitioner has not shown that the design portion of the mark has
been so used that purchasers recognize the design, standing alone, as
indicating goods coming from the registrant.
As correctly stated by the Director of Patents, common geometric
shapes such as diamonds ordinarily are not regarded as indicia of origin for
goods to which the marks are applied unless they have acquired a
secondary meaning. And there is no evidence that the diamond design in
the trademark of the petitioner has acquired a secondary meaning with
respect to its sugar business. The word “Victorias” is what identifies the
sugar contained in the bag as the product of the petitioner. Indeed, the
petitioner has advertised its sugar in bags marked “Victorias” with oval,
hexagon and other designs.
In addition, the evidence is that respondent Ong Su has been using
his trademark since prior to the last World War and he obtained the
registration thereof on June 20, 1961. Vijandre declared that the petitioner
started to use its trademark only in 1947. Said trademark was registered on
November 9, 1961. It cannot be said, therefore, that the respondent ONG
Su imitated the trademark of the petitioner.
It seems clear that the words “Valentine” and “Victorias” and the
names and places of business of Victorias Milling Company, Inc. and ONG
Su are the dominant features of the trademarks in question but the
petitioner has not established such a substantial similarity between the two
trademarks in question as to warrant the cancellation of the trademark
‘Valentine’ of the respondent ONG Su.
Ana L. Ang, petitioner, vs. Toribio Teodoro, respondent.
FACTS:
Toribio Teodoro has continuously used "Ang Tibay," both as a trademark
and as a tradename, in the manufacture and sale of slippers, shoes, and
indoor baseballs since 1910. He formally registered it as a trademark on
September 29, 1915, and as a tradename on January 3, 1933.
Teodoro, then an unknown young man making slippers with his own hands
with only P210 as capital but now a prominent business magnate and
manufacturer with a large factory operated with modern machinery by a
great number of employees, has steadily grown his business. His gross
sales from 1918 to 1938 aggregated P8M. His expenses for advertisement
from 1919 to 1938 aggregated P200k.
Ana L. Ang registered the same trademark "Ang Tibay" for pants and shirts
on April 11, 1932 and established a factory for the manufacture of said
articles in the year 1937. In the following year, her gross sales amounted to
P400k. Her advertising expenses were not shown.
Teodoro alleges that Ang had not spent a single centavo for advertising
“Ang Tibay”. It was only when she advertised her newly built factory that it
came to his attention, thus prompting Teodoro to file this same suit.
The trial court absolved Ang of any wrong-doing, on the ground that: that
the two trade-marks are dissimilar and are used on different and non-
competing goods; that there had been no exclusive use of the trademark by
the plaintiff; and that there had been no fraud in the use of the said trade-
mark by the defendant because the goods on which it is used are
essentially different from those of the plaintiff.
The CA reversed the trial court, holding that by uninterrupted and exclusive
use since 1910 in the manufacture of slippers and shoes, respondent's
trademark has acquired a secondary meaning; and that the goods or
articles on which the two trademarks are used are similar or belong to the
same class.
ISSUE:
Whether or not the mark “Ang Tibay”had acquired secondary meaning
HELD:
AFFIRMATIVE. The function of a trademark is to point distinctively, either
by its own meaning or by association, to the origin or ownership of the
wares to which it is applied. "Ang Tibay," as used by the Teodoro to
designate his wares, had exactly performed that function for twenty-two
years before Ang adopted it as a trademark in her own business. "Ang
Tibay" shoes and slippers are, by association, known throughout the
Philippines as products of the "Ang Tibay" factory owned and operated by
the Teodoro. Even if "Ang Tibay," therefore, were not capable of exclusive
appropriation as a trademark, the application of the doctrine of secondary
meaning could nevertheless be fully sustained because, in any event, by
Teodoro's long and exclusive use of said phrase with reference to his
products and his business, it has acquired a proprietary connotation.
This 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.
ONG AI GUI, vs. the Director of the Philippines Patent Office, E. I.
DUPONT DE NEMOURS AND COMPANY

FACTS:

Ong Ai Gui filed an application with the Director of Patents for the
registration of the trade-name: "20th Century Nylon Shirts Factory." The
business is described as "General merchandise dealing principally in
textiles, haberdasheries; also operating as manufacturer of shirts, pants
and other men's and woman's wears." The examiner in a report held that
the words "shirts factory" are not registrable; so the applicant made a
disclaimer of said words (shirts factory) inserting a statement to that effect
in his original application. The Director ordered the publication of the trade-
name in the official Gazette.

An opposition was filed by Atty. Wolfson, on behalf of E. I. De Pont de

Nemours and Company on the ground that the word "nylon" was a name
coined by E. I. Du Pont as the generic name of a synthetic fabric material;
and that the use of the name "nylon" is descriptive or deceptively
misdescriptive of the goods, business of manufactures of the applicant.
This opposition, however, was dismissed by the Director on the ground that
at the time it was submitted Atty. Wolfson did not have authority to file an
opposition in the corporate name.

But while he dismissed the opposition, the Director ruled that the
application must be disapproved unless the word "nylon" is also disclaimed.
"Nylon" is merely descriptive of the business of shirt-making if the shirts are
made of nylon. "Nylon" can never become distinctive, can never acquire
secondary meaning, because it is a generic term, like cotton, silk, linen, or
ramie. Just as no length of use and no amount of advertising will make
"cotton," "silk," "linen," or "ramie," distinctive of shirts or of the business of
making them, so no length of use and no amount of advertising will make
"nylon" distinctive of shirts or of the business of manufacturing them."

While applicant-appellant admits that the term "nylon" is by itself alone

descriptive and generic, what he desires to register is not the said word
alone but the whole combination of "20th Century Nylon Shirts Factory." It
is to be noted that the Director of Patents has made a conditional denial
only, permitting the registration of the name but with the disclaimer of the
terms "shirt factory" and "nylon."
ISSUE:

Whether or not the word ‘nylon’ being generic or descriptive can acquire a
secondary meaning to be registrable.

RULING:

NEGATIVE. The trade-name may be registered, but applicant-appellant

may not be entitled to the exclusive use of the terms "shirts factory" and
"nylon" as against any other who may subsequently use the said terms,
juris publici, incapable of appropriation by any single individual to the
exclusion of others.

No claim is made in the application that the trade-name sought to be

registered has acquired what is known as a secondary meaning within the
provisions of paragraph (f) of section 4 of Republic Act No. 166. All that the
applicant declares in his statement is that the said trade-name has been
continuously used by it in business in the Philippines for about seven years,
without allegation or proof that the trade-name has become distinctive of
the applicant's business or services. Furthermore, the use of the term
"nylon" in the trade-name is both "descriptive" and "deceptively and
misdescriptive" of the applicant-appellant's business, for apparently he
does not use nylon in the manufacture of the shirts, pants and wears that
he produces and sells. How can a secondary meaning be acquired if
appellant's products are not made of nylon? Certainly no exclusive right
can be acquired by deception of fraud.

A word or a combination of words which is merely descriptive of an article

of trade, or of its composition, characteristics, or qualities, cannot be
appropriated and protected as a trademark to the exclusion of its use by
others. The reason for this is that inasmuch as all persons have an equal
right to produce and vend similar articles, they also have the right to
describe them properly and to use any appropriate to himself exclusively
any word or expression, properly descriptive of the article, its qualities,
ingredients, or characteristics, and thus limit other persons in the use of
language appropriate to the description of their manufactures, the right to
the use of such language being common to all. This rule excluding
descriptive terms has also been held to apply to trade-names. As to
whether words employed fall within this prohibition, it is said that the true
test is not whether they are exhaustively descriptive of the article
designated, but whether in themselves, and as they are commonly used by
those who understand their meaning, they are reasonably indicative and
descriptive of the thing intended. If they are thus descriptive, and not
arbitrary, they cannot be appropriated from general use and become the
exclusive property of anyone. (52 Am. Jur. 542-543.)

The use of a generic term in a trade-name is always conditional, i. e.,

subject to the limitation that the registrant does not acquire the exclusive
right to the descriptive or generic term or word.

xxx Although a word may be descriptive and not subject to exclusive use as
a trademark, it may properly become the subject of a trademark by
combination with another word or term which is nondescriptive, although no
exclusive right to then descriptive word or term is created . . . (52 Am. Jur.
553.)
LYCEUM OF THE PHILIPPINES, INC. 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.,
FELICIANO, J.:
FACTS:
Petitioner is an educational institution registered with the SEC. When it
registered on the 21st of September 1950, it used the name Lyceum of the
Philippines, Inc.
On 24th of February 1984, petitioner instituted proceedings before the
SEC to compel the private respondents, also educational institutions, to
delete the word “Lyceum” from their corporate names and to permanently
enjoin them from using the term “Lyceum” as part of their name. This case
stems from when petitioner commenced before the SEC a proceeding
against the Lyceum of Baguio. The Associate Commissioner Julio Sulit
held that the corporate names of the petitioner and the Lyceum of Baguio
to be substantially identical and that petitioner had already registered as a
corporation before the Lyceum of Baguio. The Supreme Court denied the
Petition for Review for lack of merit.
Petitioner wrote all the educational institutions it could find using the
term “Lyceum” as part of their corporate names. Petitioner then instituted
with the SEC to enforce petitioner’s claim as to its proprietary right to the
word “Lyceum”. The SEC hearing officer rendered a decision which
sustained petitioner’s claim.
On appeal, the SEC En Banc reversed and set aside the decision of
the hearing officer. On appeal to the CA, the appellate court affirmed the
questioned decisions. A motion for reconsideration was denied.
ISSUE: Whether the CA erred in holding that the word “Lyceum” has not
acquired a secondary meaning in favor of petitioner?
HELD: No, it did not. In Philippine Nut Industry, Inc. v. Standard Brands,
Inc., the doctrine of secondary meaning was elaborated in the following
terms:
"x x x 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."
As written by the Court of Appeals, and agreed to by the Supreme
Court: “No evidence was ever presented in the hearing before the
Commission which suf iciently 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.
xxx
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.”
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."
The Articles of Incorporation of a corporation must, among other
things, set out the name of the corporation. 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 and 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."
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.
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.
Bata Industries, Ltd. vs. Court of Appeals
FACTS
Olympian Rubber Products Co. Inc sought registration of the mark BATA
for casual rubber shoes alleging that it has used said mark since July 1970.
The registration was opposed by petitioner, a Canadian corporation who
alleged that it owns the mark.
Olympian argued that petitioner does not have liscense to do business in
the Philippines and that it is not selling any footwear under the trademark
BATA in the Philippines. However evidence showed that that Bata shoes
made by Gerbec and Hrdina of Czechoslovakia were sold inthe Philippines
prior to World War II. Some shoes made by Bata ofCanada were perhaps
also sold in the Philip-pines until 1948.However, the trademark BATA was
never registered in the Philippines by any foreign entity.
The Philippine Patent Office ruled in favor of Olympian to use and register
in its favor the disputed trademark. It also ruled that it is Olympian who
created enormous goodwill of BATA in the Philippines through
advertisements. Thus, PPO ordered for the registration of the mark in favor
of Olympian.
ISSUE:
WHETHER OR NOT BATA TRADEMARK CANNOT BE REGISTERED
DUE TO GOODWILL GENERATED BY HRDINA PRIOR WWII.
RULING
NO.
The court ruled that any slight goodwill generated by the Czechoslovakian
product during the Commonwealth years was completely abandoned and
lost in the more than 35 years that have passed since the liberation of
Manila from the Japanese troops. Petitioner was never a user of the
trademark BATA either before or after the war, that it is not the successor-
in-interest of Gerbec and Hrdina who were not its representatives or
agents, and could not have passed any rights to the petitioner, that there
was no privity of interest between the Czechoslovakian owner and the
petitioner and that the Czechoslovakian trademark has been abandoned in
Czechoslovakia.
Additionally, even if petitioner is selling shoes abroad it has no goodwill that
would be damaged by the registration of the same trademark in the
Philippines.
PRIBHDAS J. MIRPURI, petitioner, vs. COURT OF APPEALS, DIRECTOR
OF PATENTS and the BARBIZON CORPORATION, respondents.
Facts:
one Lolita Escobar, the predecessor-in-interest of petitioner 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., however, opposed the
application. It claims that:
6. The mark BARBIZON of respondent-applicant is confusingly
similar to the trademark BARBIZON
7. its business reputation and goodwill will suffer great and
irreparable injury.
8. 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
Director of Patents rendered judgment dismissing the opposition
and giving due course to Escobar’s(predecessor-in-interest of
petitioner) application who later assigned all her rights and interest over
the trademark to petitioner Mirpuri but the Bureau of Patents cancelled
Escobar’s certificate of registration because Escobar failed to file with the
Bureau of Patents the Affidavit of Use of the trademark under the Philippine
trademark law.
Upon reapplication, Private respondent again opposed the attempt.
Alleging that:
9. he Opposer has adopted the trademark BARBIZON (word),
sometime in June 1933 and has then used it on various kinds of
wearing apparel.
10. On March 15, 1977, Opposer secured from the United States
Patent Office a registration of the said mark
 11. Opposer has not abandoned the use of the said trademarks. In
fact, Opposer, through a wholly-owned Philippine subsidiary, the
Philippine Lingerie Corporation, has been manufacturing the
goods covered by said registrations and selling them to various
countries, thereby earning valuable foreign exchange for the
country
12. The Opposer’s goods bearing the trademark BARBIZON have
been used in many countries, including the Philippines
13. The trademark BARBIZON was fraudulently registered in the
Philippines by one Lolita R. Escobar
14. 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
15. The trademark applied for by respondent applicant is identical
to Opposer’s BARBIZON trademark
Respondent raised the defense of res judicata. In IPC No. 2049, the
evidence of both parties were received by the Director of Patents.
On June 18, 1992, the Director rendered a decision declaring
private respondent’s opposition barred by res judicata and giving
due course to petitioner’s application for registration.
The CA Remanded the case back to the bureau of patents
Issue:
principal issue in this case is whether or not the treaty in question
affords protection to a foreign corporation against a Philippine applicant
for the registration of a similar trademark
Ruling:
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. 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. 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.
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 wellknown 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.
The essential requirement under Article 6bis is that the
trademark to be protected must be “well-known” in the country
where protection is sought. The power to determine whether a
trademark is well-known lies in the “competent authority of the
country of registration or use.” This competent authority would be
either the registering authority if it has the power to decide this, or
the courts of the country in question if the issue comes before a
court.
The Philippines and the United States of America have ceded 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.
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.” 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 millennium
A major proportion of international trade depends on the protection of
intellectual property rights. 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. 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
multilateral trading system to bring about economic, cultural and
technological independence.
G.R. No. L-48226 December 14, 1942

ANA L. ANG, petitioner,

vs.
TORIBIO TEODORO, respondent
Paks:
Respondent Toribio Teodoro, at first in partnership with Juan Katindig and
later as sole proprietor, has continuously used "Ang Tibay," both as a
trade-mark and as a trade-name, in the manufacture and sale of slippers,
shoes, and indoor baseballs since 1910. He formally registered it as trade-
mark on September 29, 1915, and as trade-name on January 3, 1933. The
growth of his business is a thrilling epic of Filipino industry and business
capacity.
Toribio Teodoro, then an unknown young man making slippers with his own
hands but now a prominent business magnate and manufacturer with a
large factory operated with modern machinery by a great number of
employees, has steadily grown with his business to which he has dedicated
the best years of his life and which he has expanded to such proportions
that his gross sales from 1918 to 1938 aggregated P8,787,025.65.
Petitioner (defendant below) registered the same trade-mark "Ang Tibay"
for pants and shirts on April 11, 1932, and established a factory for the
manufacture of said articles in the year 1937.
Neither the decision of the trial court nor that of the Court of Appeals shows
how much petitioner has spent or advertisement.
In that year she advertised the factory which she had just built and it was
when this was brought to the attention of the appellee that he consulted his
attorneys and eventually brought the present suit.
Trial Court
The trial court absolved the defendant from the complaint, on the grounds
that the two trademarks are dissimilar and are used on different and non-
competing goods.
CA
The second division of the Court of Appeals reversed that judgment,
holding that by uninterrupted an exclusive use since 1910 in the
manufacture of slippers and shoes, respondent's trade-mark has acquired
a secondary meaning; that the goods or articles on which the two trade-
marks are used are similar or belong to the same class; and that the use by
petitioner of said trade-mark constitutes a violation of sections 3 and 7 of
Act No. 666.
Issue:
WN the word “ang tibay” is capable of exclusive appropriation in this case?
Held:
YES. The word "ang" is a definite article meaning "the" in English. It is also
used as an adverb, a contraction of the word "anong" Tibay is a root word
from which are derived the verb magpatibay. The phrase "Ang Tibay" is an
exclamation denoting administration of strength or durability.
From all of this we deduce that "Ang Tibay" is not a descriptive term within
the meaning of the Trade-Mark Law but rather a fanciful or coined phrase
which may properly and legally be appropriated as a trade-mark or trade-
name.
The doctrine of secondary meaning states that a word or phrase
originally incapable of exclusive appropriation with reference to an
article of the market, because geographically or otherwise descriptive,
might nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that branch of
the purchasing public, the word or phrase has come to mean that the article
was his product.
The application of the doctrine of secondary meaning made by the
Court of Appeals could nevertheless be fully sustained because, in
any event, by respondent's long and exclusive use of said phrase
(Ang Tibay) with reference to his products and his business, it has
acquired a proprietary connotation.
Chua Che vs Philippine Patent Office
Registration of a trademark should be refused in cases -where there is a
likelihood of confusion, mistake, or deception, even though the goods fall
under different categories
Facts:
- In 1958, Chua Che filed a petition with the PPO for the registration
of the tradename "X-7". It was alleged that he was the first user of such
term, is the lawful owner, used in the Philippines for not less than two
months before the application and that no other entity to the best of his
knowledge is using the same or in any identical form and resemblance.
- After a year, the examiner of the Department of Commerce and
industry submitted a report which recommends the approval of the
application. An oppositor in the name of Sy Tuo filed a notice wherein he
alleged that the trademark seeked to be registered is actually already
registered in his name in 1951 and that he has prior use of the said
trademark.
- Furthermore, he alleged that his mark is distinctive and not ordinary,
that both of them are using the same for allied and closely related products
and that the public would be misled as to the source or origin as there is
close resemblance between the two trademark.
- In response, petitioner presented an answer to the opposition and
contended that although it is admitted that “X-7” is registered in the name of
oppositor, said trademark is not being used on soap, but purely toilet
articles.
- The director of patents then rendered a judgement which is in favor
of the oppositor. Hence, this petition.
Issue:
Whether Chua Che's application for registration of trademark be accepted
Ruling:
No.
The circumstance of non-actual use of the mark on granulated soap by
appellee, does not detract from the fact that he already has a right to such
a trademark and should, therefore, be protected.
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.
In this case, the products of appellee are common household items
nowadays, in the same manner as laundry soap. The likelihood of
purchasers to associate those products to a common origin is highly likely.
Both from the standpoint of priority of use and for the protection of the
buying” public and, of course, 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.
PHILIPPINE REFINING CO., INC. vs. NG SAM and THE DIRECTOR OF
PATENTS
G.R. No. L-26676 July 30, 1982
ESCOLIN, J.
Facts:
The trademark “CAMIA” was first used in the Philippines by petitioner
on its products in 1922. In 1949, petitioner caused the registration of said
trademark with the Philippine Patent Office under certificates of registration
Nos. 1352-S and 1353-S. Certificate of Registration No. 1352-S covers
vegetable and animal fats, particularly lard, butter and cooking oil, all
classified under Class 47 (Foods and Ingredients of Food) of the Rules of
Practice of the Patent Office, while certificate of registration No. 1353-S
applies to abrasive detergents, polishing materials and soap of all kinds
(Class 4).
Respondent Ng Sam, a Chinese citizen residing in Iloilo City, filed an
application with the Philippine Patent Office for registration of the identical
trademark “CAMIA” for his product, ham, which likewise falls under Class
47. Alleged date of first use of the trademark by respondent was on
February 10, 1959. After due publication of the application, petitioner filed
an opposition, in accordance with Section 8 of Republic Act No. 166. Basis
of petitioner’s opposition was Section 4(d) of said law, which provides as
unregistrable. The parties submitted the case for decision without
presenting any evidence; thereafter the Director of Patents rendered a
decision allowing registration of the trademark “CAMIA” in favor of Ng Sam.
Petitioner moved for a reconsideration, but the same was denied. Hence,
this petition.
Issue:
Whether or not the product of respondent Ng Sam, which is ham, and
those of petitioner consisting of lard, butter, cooking oil and soap are so
related that the use of the same trademark “CAMIA” on said goods would
likely result in confusion as to their source or origin.
Held:
 NO. A rudimentary precept in trademark protection is that “the right to
a trademark is a limited one, in the sense that others may use the same
mark on unrelated goods.” Such restricted right over a trademark is
likewise reflected in our Trademark Law. Under Section 4(d) of the law,
registration of a trademark which so resembles another already registered
or in use should be denied, where to allow such registration could likely
result in confusion, mistake or deception to the consumers. Conversely,
where no confusion is likely to arise, as in this case, registration of a similar
or even identical mark may be allowed.
The term “CAMIA” is descriptive of a whole genus of garden plants with
fragrant white flowers. Some people call the “CAMIA” the “white ginger
plant” because of its tuberous roots, while children refer to it as the butterfly
flower because of its shape. Being a generic and common term, its
appropriation as a trademark, albeit in a fanciful manner in that it bears no
relation to the product it identifies, is valid. However, the degree of
exclusiveness accorded to each user is closely restricted.
It is evident that “CAMIA” as a trademark is far from being distinctive.
By itself, it does not identify petitioner as the manufacturer or producer of
the goods upon which said mark is used, as contra-distinguished to
trademarks derived from coined words such as “Rolex”, “Kodak” or “Kotex”.
It has been held that “if a mark is so commonplace that it cannot be readily
distinguished from others, then it is apparent that it cannot identify a
particular business; and he who first adopted it cannot be injured by any
subsequent appropriation or imitation by others, and the public will not be
deceived.”
Emphasis should be on the similarity of the products involved and not
on the arbitrary classification or general description of their properties or
characteristics.
ESSO Standard Eastern, INC., petitioner, vs. The Honorable Court of
Appeals
Facts:
Esso Standard Eastern, Inc., then a foreign corporation duly licensed to do
business in the Philippines, is engaged in the sale of petroleum products
which are Identified with its trademark ESSO. Private respondent in turn is
a domestic corporation then engaged in the manufacture and sale of
cigarettes, after it acquired in November, 1963 the business, factory and
patent rights of its predecessor La Oriental Tobacco Corporation, one of
the rights thus acquired having been the use of the trademark ESSO on its
cigarettes, for which a permit had been duly granted by the Bureau of
Internal Revenue.
Barely had respondent as such successor started manufacturing
cigarettes with the trademark ESSO, when petitioner commenced a case
for trademark infringement in the Court of First Instance of Manila. The
complaint alleged that the petitioner 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 that the mark must be used
by one person in connection or competition with goods of the same kind as
the complainant's.
The trial court, relying on the old cases of Ang vs. Teodoro and Arce
& Sons, Inc. vs. Selecta Biscuit Company, referring to related products,
decided in favor of petitioner and ruled that respondent was guilty of
infringement of trademark.
 On appeal, respondent Court of Appeals found that there was no
trademark infringement and dismissed the complaint. Reconsideration of
the decision having been denied, petitioner appealed to this Court by way
of certiorari to reverse the decision of the Court of Appeals and to reinstate
the decision of the Court of First Instance of Manila. The Court finds no
ground for granting the petition.
Issue:
Whether or not there is a trademark infringement.
Held:
Negative.
It is undisputed that the goods on which petitioner uses the trademark
ESSO, petroleum products, and the product of respondent, cigarettes, are
non-competing. But as to whether trademark infringement exists depends
for the most part upon whether or not the goods are so related that the
public may be, or is actually, deceived and misled that they came from the
same maker or manufacturer. For non-competing goods may be those
which, though they are not in actual competition, are so related to each
other that it might reasonably be assumed that they originate from one
manufacturer. Non-competing goods may also be those which, being
entirely unrelated, could not reasonably be assumed to have a common
source. in the former case of related goods, confusion of business could
arise out of the use of similar marks; in the latter case of non-related goods,
it could not. The vast majority of courts today follow the modern theory or
concept of "related goods" which the Court has likewise adopted and
uniformly recognized and applied.
Goods are related when they belong to the same class or have the same
descriptive properties; when they possess the same physical attributes or
essential characteristics with reference to their form, composition, texture
or quality.
In the present case, the goods are obviously different from each other with
"absolutely no iota of similitude" as stressed in respondent court's
judgment. They are so foreign to each other as to make it unlikely that
purchasers would think that petitioner is the manufacturer of respondent's
goods. 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 articles of a different kind.
Considering the general appearances of each mark as a whole, the
possibility of any confusion is unlikely. A comparison of the labels of the
samples of the goods submitted by the parties shows a great many
differences on the trademarks used. Even the lower court, which ruled
initially for petitioner, found that a "noticeable difference between the brand
ESSO being used by the defendants and the trademark ESSO of the
plaintiff is that the former has a rectangular background, while in that of the
plaintiff the word ESSO is enclosed in an oval background."
HICKOK MANUFACTURING CO., INC., petitioner, vs. COURT OF
APPEALS ** and SANTOS LIM BUN LIONG, respondents.

FACTS:

Petitioner, a foreign corporation registered the trademark (Hickok) for its

diverse articles of men's wear such as wallets, belts and men's briefs which
are all manufactured here in the Philippines by a licensee Quality House,
Inc. (which pays a royalty of 1-1/2 % of the annual net sales) but are so
labelled as to give the misimpression that the said goods are of foreign
manufacture.

Respondent secured its trademark registration exclusively for shoes (which

neither petitioner nor the licensee ever manufactured or traded in) and
labelled in block letters as "Made in Marikina, Rizal, Philippines.”

The patent director denied the respondent’s registration. However, the CA

reversed the patent director's decision and instead dismissed petitioner's
petition to cancel private respondent's registration of the trademark of
HICKOK for its Marikina shoes as against petitioner's earlier registration of
the same trademark for its other non-competing products.

ISSUE:

Whether or not the CA erred in dismissing petitioner’s petition to cancel

private respondent’s registration of Hickok.

RULING:

NEGATIVE. No error can be attributed to the appellate court in upholding

respondent's registration of the same trademark for his unrelated and non-
competing product of Marikina shoes. 

It is established doctrine, that "emphasis should be on the similarity of the

products involved and not on the arbitrary classification or general
description of their properties or characteristics"  and that "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 articles of a different kind." 
While the law does not require that the competing trademarks be Identical,
the two marks must be considered in their entirety, as they appear in the
respective labels, in relation to the goods to which they are attached.

An examination of the trademark of petitioner-appellee and that of

registrant-appellant convinces the Court that there is a difference in the
design and the coloring of, as well as in the words on the ribbons, the two
trademarks.

In petitioner-appellee's trademark for handkerchiefs, the word 'HICKOK' is

in red with white background in the middle of two branches of laurel in light
gold. At the lower part thereof is a ribbon on which are the words
'POSITIVELY FINER' in light gold. In the trademark for underwear, the
word 'HICKOK' is also in red with white background in the middle of two
branches of laurel in dark gold with similar ribbons and the words
'POSITIVELY FINER' in dark gold. And in the trademark for briefs, the
word 'HICKOK' is in white but with red background in the middle of two
branches of laurel, the leaves being in dark gold with white edges, and with
similar ribbon and words 'POSITIVELY FINER' in dark gold.

Respondent-appellant's trademark, the word 'HICKOK' is in white with gold

background between the two branches of laurel in red, with the word
'SHOES' also in red below the word 'HICKOK'. The ribbon is in red with the
words 'QUALITY AT YOUR FEET,' likewise in red.

Since in this case the trademark of petitioner-appellee is used in the sale of

leather wallets, key cases, money folds made of leather, belts, men's briefs,
neckties, handkerchiefs and men's socks, and the trademark of registrant-
appellant is used in the sale of shoes, which have different channels of
trade.
FABERGE, INCORPORATED vs. THE INTERMEDIATE APPELLATE
COURT and CO BENG KAY
FACTS:
The Director of Patents authorized herein private respondent Co
Beng Kay to register the trademark "BRUTE" for the briefs manufactured
and sold by his Corporation in the domestic market vis-a-vis petitioner's
opposition grounded on similarity of said trademark with petitioner's own
symbol "BRUT" which it previously registered for after shave lotion, shaving
cream, deodorant, talcum powder, and toilet soap.
In essence, it appears that in the course of marketing petitioner's
"BRUT" products and during the pendency of its application for registration
of the trademark "BRUT 33 and DEVICE" for antiperspirant, personal
deodorant, cream shave, after shave/shower lotion, hair spray, and hair
shampoo, respondent Co Beng Kay of Webengton Garments
Manufacturing applied for registration of the disputed emblem "BRUTE" for
briefs.
Opposition raised by petitioner anchored on similarity with its own
symbol and irreparable injury to the business reputation of the first user
was to no avail. When the legal tussle was elevated to respondent court,
Justice Gopengco remarked that:
The test of confusing similarity which would preclude the registration
of a trademark 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. In
short, the law does not require that the competing marks must be so
identical as to produce actual error or mistakes. It would be sufficient, for
purposes of the law, that the similarity between the two labels be such that
there is a possibility or likelihood of the purchaser of the older brand
mistaking the newer brand for it.
Respondent’s Motion for Reconsideration merited the nod of approval
of the appellate court brought about by private respondent's suggestion
that the controlling ruling is that the identical trademark can be used by
different manufacturers for products that are non-competing and unrelated.
 Also, it seems that petitioner would want this Court to appreciate
petitioner's alleged application for registration of the trademark "BRUT 33
DEVICE" for briefs as an explicit proof that petitioner intended to expand its
mark "BRUT" to other goods, following the sentiment expressed by Justice
J.B.L. Reyes in the Sta. Ana case that relief is available where the junior
user's goods are not remote from any product that the senior user would be
likely to make or sell.
On the other hand, private respondent echoes the glaring difference
in physical appearance of its products with petitioner's own goods by
stressing the observations of the Director of Patents that in the parties'
sample box and can containers, the involved trademarks are grossly
different in their overall appearance that even at a distance a would-be
purchaser could easily distinguish what is BRUTE brief and what is BRUT
after shave lotion, lotion and the like.
Opposer's mark BRUT or BRUT 33, is predominantly colored green
with a blue and white band at the middle portion of the container. Also
appearing therein in bold letters is opposer's name "FABERGE" and a
notation "Creme Shave".
On the other hand, respondent's mark prominently displays the
representation of a muscular man, underneath of which appears the
trademark BRUTE with a notation "Bikini Brief" . .
Additionally, the meaning or connotation of the bare word marks of
opposer, BRUT, and BRUTE of respondent, are clearly different and not
likely to be confused with each other. BRUT simply means "dry", and also,
"to browse"; while BRUTE means "ferocious, sensual", and in Latin, it
signifies "heavy". Gleaned from the respective meanings of the two marks
in question, they both suggest the resultant effects of the application of the
products, upon which the said trademarks are employed, which fact all the
more renders confusion or deception of purchasers a remote possibility.
ISSUE:
Whether private respondent may appropriate the trademark “BRUTE”
for the briefs it manufactures and sells to the public albeit petitioner had
previously registered the symbol “BRUT” and “BRUT 33” for its own line of
items.
RULING:
Yes. Having thus reviewed the laws applicable to the case before the
Court, 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.
The protective mantle of the Trademark Law extends only to the
goods used by the first user as specified in the certificate of registration
following the clear message conveyed by section 20.
How do we now reconcile the apparent conflict between Section
4(d) which was relied upon by Justice JBL Reyes in the Sta. Ana case
and Section 20?
It would seem that Section 4(d) does not require that the goods
manufactured by the second user be related to the goods produced by the
senior user while Section 20 limits the exclusive right of the senior user
only to those goods specified in the certificate of registration. But the rule
has been laid down that the clause which comes later shall be given
paramount significance over an anterior proviso upon the presumption that
it expresses the latest and dominant purpose. It ineluctably follows that
Section 20 is controlling and, therefore, private respondent can appropriate
its symbol for the briefs it manufactures.
“Really, if the certificate of registration were to be deemed as
including goods not specified therein, then a situation may arise whereby
an applicant may be tempted 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. We believe that such omnibus registration is
not contemplated by our Trademark Law.”
Withal, judging from the physical attributes of petitioner’s and private
respondent’s products, there can be no doubt that confusion or the
likelihood of deception to the average purchaser is unlikely since the goods
are non-competing and unrelated.
CANON KABUSHIKI KAISHA, petitioner, vs.COURT OF APPEALS and
NSR RUBBER CORPORATION, respondents.

FACTS:
On January 15, 1985, private respondent NSR Rubber Corporation 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.
Petitioner moved to declare private respondent in default for its failure to
file its answer. The BPTTT then declared private respondent in default and
allowed petitioner to present its evidence ex-parte.
Petitioner presented 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.
The BPTTT issued its decision dismissing the opposition of petitioner and
giving due course to private respondent's application for the registration.
Petitioner appealed the decision of the BPTTT with public respondent Court
of Appeals that eventually affirmed the decision of BPTTT.
The BPTTT and the CA share the opinion that the trademark "CANON" as
used by CANON for its paints, chemical products, toner, and dyestuff, can
be used by NSR for its sandals because the products of these two parties
are dissimilar.
CANON protests the appropriation of the mark CANON by NSR on the
ground that : a) they used and continues to use the trademark CANON on
its wide range of goods worldwide; b) The corporate name of CANON is
also used as its trademark on diverse goods including footwear and other
related products like shoe polisher and polishing agents; c) it has branched
out in its business including footwear which covers sandals; d) CANON
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; e) the
public could presume that CANON would also produce a wide variety of
footwear
considering the diversity of its products marketed worldwide; and f) the
public might be misled into thinking that there is some supposed
connection between private respondent's goods and petitioner.
ISSUE:
Whether or not CANON KABUSHIKI’s rights can validly preclude the
registration of trademark of CANON for NSR’s sandals.
HELD:
NEGATIVE. Ordinarily, the ownership of a trademark or tradename is a
property right that the owner is entitled to protect as mandated by the
Trademark Law. 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.

The certificates of registration for the trademark CANON in other countries

and in the Philippines as presented by petitioner, clearly showed that said
certificates of registration cover goods belonging to class 2 (paints,
chemical products, toner, dyestuff). On this basis, the BPTTT correctly
ruled that since the certificate of registration of petitioner for the trademark
CANON covers class 2 (paints, chemical products, toner, dyestuff), private
respondent can use the trademark CANON for its goods classified as class
25 (sandals). Clearly, there is a world of difference between the paints,
chemical products, toner, and dyestuff of petitioner and the sandals of
private respondent.
CANON failed to attach evidence that would convince this Court that
petitioner has also embarked in the production of footwear products. In
Faberge, Incorporated vs. Intermediate Appellate Court, the Director of
patents allowed the junior user to use the trademark of the senior user on
the ground that the briefs manufactured by the junior user, the product for
which the trademark BRUTE was sought to be registered, was unrelated
and non-competing with the products of the senior user consisting of after
shave lotion, shaving cream, deodorant, talcum powder, and toilet soap.
The senior user vehemently objected and claimed that it was expanding its
trademark to briefs and argued that permitting the junior user to register the
same trademark would allow the latter to invade the senior user's exclusive
domain. In sustaining the Director of Patents, this Court said that since
"(the senior user) has not ventured in the production of briefs, an item
which is not listed in its certificate of registration, (the senior user), cannot
and should not be allowed to feign that (the junior user) had invaded (the
senior user's) exclusive domain.The court reiterated the principle that
the certificate of registration confers upon the trademark owner the
exclusive right to use its own symbol only to those goods specified in
the certificate, subject to the conditions and limitations stated therein.
In 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 trade names confusingly similar. 1)
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.
2) 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 NSR. The two classes of products in this case flow
through different trade channels. The products of CANON are sold through
special chemical stores or distributors while the products of NSR are sold in
grocery stores, sari-sari stores and department stores.
PEARL & DEAN (PHIL.), INCORPORATED, petitioner, vs. SHOEMART,
INCORPORATED and NORTH EDSA MARKETING, INCORPORATED,
respondents.
Intellectual Property; Trademark; One who has adopted and used a
trademark on his goods does not prevent the adoption and use of the same
trademark by others for products which are of a different description
FACTS
Petitioner Pearl and Dean (Phil.), Inc. is a corporation engaged in the
manufacture of advertising display units simply referred to as light boxes.
The advertising light boxes were marketed under the trademark “Poster
Ads”, which was registered for the following products: stationeries such as
letterheads, envelopes and calling cards and newsletters. Pearl and Dean
employed the services of Metro Industrial Services to manufacture its
advertising display.
Sometime in 1985, Pearl and Dean negotiated with respondent Shoemart,
Inc. (SMI) for the lease and installation of the light boxes in SM City North
Edsa, later changed to SM Cubao and SM Makati. However, SMI later
rescinded the contract.
Pearl and Dean later discovered that SMI contracted Metro Industrial
Services to manufacture its advertising display based off its own (P&D)
designs. It further discovered that respondent North Edsa Marketing Inc.
(NEMI) was set up primarily to sell advertising space in lighted display units
located in SMI’s different branches. Pearl and Dean noted that NEMI is a
sister company of SMI. Consequently, it demanded SMI and NEMI to
cease using the light boxes and to discontinue the use of the trademark
“Poster Ads” and to pay P20M as damages.
SMI suspended the leasing of two hundred twenty-four (224) light boxes
and NEMI took down its advertisements for “Poster Ads” from the lighted
display units in SMI’s stores.
Unsatisfied, Pearl and Dean filed the instant case for infringement of
trademark and copyright, unfair competition and damages.
The RTC ruled in favor of Pearl and Dean. CA reversed the trial court.
ISSUE: Whether there was trademark infringement in this case.
RULING: NEGATIVE. SC Held:
Faberge Inc. vs. Intermediate Appellate Court ruled that the certificate of
registration issued by the Director of Patents can confer the exclusive right
to use its own symbol only to those goods specified in the certificate,
subject to any conditions and limitations specified in the certificate. One
who has adopted and used a trademark on his goods does not prevent the
adoption and use of the same trademark by others for products which are
of a different description.
Assuming arguendo that “Poster Ads” could validly qualify as a trademark,
the failure of P & D to secure a trademark registration for specific use on
the light boxes meant that there could not have been any trademark
infringement since registration was an essential element thereof.
246 Corporation (Rolex Music Lounge) v. Hon. Reynaldo B. Daway
G.R. No. 157216. November 20, 2003.
FACTS:
Montres Rolex S.A. and Rolex Centre Phil., Limited,
owners/proprietors of Rolex and Crown Device filed an instant suit against
246 Corp., for trademark infringement and damages. The latter argued that
there is no cause of action as no trademark infringement exists and no
confusion would arise as there is a difference with their nature of business.
ISSUE:
WON 246 Daway can use the name Rolex Music Lounge
RULING:
Yes. Under the old Trademark Law 15 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 the junior
user of the registered mark on the entirely goods. Per Section 123.1(f), A
junior user of a well-known mark on 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 the well-known mark is precluded from
using the same on the entirely unrelated goods or services, subj to the ff.
requisites x x x the exclusivity of the registration attained by the mark in the
world.
In the case at bar, said provision is clearly in point because the Music
Lounge of petitioner is entirely unrelated to respondents’ business involving
watches, clocks, bracelets, etc.
SOCIETE DES PRODUITS NESTLÉ, S.A. VS. COURT OF APPEALS

Facts:

 On January 18, 1984, private respondent CFC Corporation filed with

the BPTTT an application for the registration of the trademark
"FLAVOR MASTER" for instant coffee

 Petitioner Societe Des Produits Nestle, S.A., a Swiss company

registered under Swiss laws and domiciled in Switzerland, filed an
unverified Notice of Opposition, claiming that the trademark of private
respondent’s product is "confusingly similar to its trademarks for
coffee and coffee extracts, to wit: MASTER ROAST and MASTER
BLEND."
 A verified Notice of Opposition was filed by Nestle Philippines, Inc., a
Philippine corporation and a licensee of Societe Des Produits Nestle
S.A., against CFC’s application for registration of the trademark
FLAVOR MASTER.
o Nestle claimed that the use, if any, by CFC of the trademark
FLAVOR MASTER and its registration would likely cause
confusion in the trade; or deceive purchasers and would falsely
suggest to the purchasing public a connection in the business
of Nestle, as the dominant word present in the three (3)
trademarks is "MASTER"; or that the goods of CFC might be
mistaken as having originated from the latter.
 In answer to the two oppositions, CFC argued that its trademark,
FLAVOR MASTER, is not confusingly similar with the former’s
trademarks, MASTER ROAST and MASTER BLEND, alleging that,
"except for the word MASTER (which cannot be exclusively
appropriated by any person for being a descriptive or generic name),
the other words that are used respectively with said word in the three
trademarks are very different from each other – in meaning, spelling,
pronunciation, and sound".
 The BPTTT denied CFC’s application for registration.
 The Court of Appeals reversed the BPTTT’s decision and ordered the
Director of Patents to approve CFC’s application. Hence this petition
before the SC.
Issue:
Whether the trademark FLAVOR MASTER is a colorable imitation of the
trademarks MASTER ROAST and MASTER BLEND.

Ruling:

AFFIRMATIVE.

 Colorable imitation denotes such a close or ingenious imitation

as to be calculated to deceive ordinary persons, or such a
resemblance to the original as to deceive an ordinary purchaser
giving such attention as a purchaser usually gives, as to cause
him to purchase the one supposing it to be the other. In
determining if colorable imitation exists, jurisprudence has developed
two kinds of tests - the Dominancy Test and the Holistic Test.

o The test of dominancy focuses on the similarity of the prevalent

features of the competing trademarks which might cause
confusion or deception and thus constitute infringement.
o On the other side of the spectrum, the holistic test mandates
that the entirety of the marks in question must be considered in
determining confusing similarity.

 The Court of Appeals erred in applying the totality rule as defined

in the cases of Bristol Myers v. Director of Patents; Mead Johnson &
Co. v. NVJ Van Dorf Ltd.; and American Cyanamid Co. v. Director of
Patents. The totality rule states that "the test is not simply to take
their words and compare the spelling and pronunciation of said
words. 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 predominant words but also on the
other features appearing on both labels."

 In the case at bar, other than the fact that both Nestle’s and
CFC’s products are inexpensive and common household items,
the similarity ends there. What is being questioned here is the use
by CFC of the trademark MASTER. In view of the difficulty of applying
 jurisprudential precedents to trademark cases due to the peculiarity of
each case, judicial fora should not readily apply a certain test or
standard just because of seeming similarities. As this Court has
pointed above, there could be more telling differences than
similarities as to make a jurisprudential precedent inapplicable.

 The Court of Appeals held that the test to be applied should be the
totality or holistic test reasoning, since what is of paramount
consideration is the ordinary purchaser who is, in general,
undiscerningly rash in buying the more common and less expensive
household products like coffee, and is therefore less inclined to
closely examine specific details of similarities and dissimilarities
between competing products.
 This Court cannot agree with the above reasoning. If the ordinary
purchaser is "undiscerningly rash" in buying such common and
inexpensive household products as instant coffee, and would
therefore be "less inclined to closely examine specific details of
similarities and dissimilarities" between the two competing products,
then it would be less likely for the ordinary purchaser to notice that
CFC’s trademark FLAVOR MASTER carries the colors orange and
mocha while that of Nestle’s uses red and brown. The application of
the totality or holistic test is improper since the ordinary purchaser
would not be inclined to notice the specific features, similarities or
dissimilarities, considering that the product is an inexpensive and
common household item.

 Moreover, the totality or holistic test is contrary to the elementary

postulate of the law on trademarks and unfair competition that
confusing similarity is to be determined on the basis of visual, aural,
connotative comparisons and overall impressions engendered by the
marks in controversy as they are encountered in the realities of the
marketplace. The totality or holistic test only relies on visual
comparison between two trademarks whereas the dominancy test
relies not only on the visual but also on the aural and connotative
comparisons and overall impressions between the two trademarks.

 In addition, the word "MASTER" is neither a generic nor a

descriptive term. As such, said term cannot be invalidated as a
trademark and, therefore, may be legally protected.
 o Generic terms are those which constitute "the common
descriptive name of an article or substance," or comprise the
"genus of which the particular product is a species," or are
"commonly used as the name or description of a kind of goods,"
or "imply reference to every member of a genus and the
exclusion of individuating characters," or "refer to the basic
nature of the wares or services provided rather than to the more
idiosyncratic characteristics of a particular product," and are not
legally protectable.

o On the other hand, a term is descriptive and therefore invalid

as a trademark if, as understood in its normal and natural
sense, it "forthwith conveys the characteristics, functions,
qualities or ingredients of a product to one who has never seen
it and does not know what it is," or "if it forthwith conveys an
immediate idea of the ingredients, qualities or characteristics of
the goods," or if it clearly denotes what goods or services are
provided in such a way that the consumer does not have to
exercise powers of perception or imagination.

 Rather, the term "MASTER" is a suggestive term brought about

by the advertising scheme of Nestle. Suggestive terms are those
which, in the phraseology of one court, require "imagination, thought
and perception to reach a conclusion as to the nature of the goods."
Such terms, "which subtly connote something about the product," are
eligible for protection in the absence of secondary meaning. While
suggestive marks are capable of shedding "some light" upon certain
characteristics of the goods or services in dispute, they nevertheless
involve "an element of incongruity," "figurativeness," or " imaginative
effort on the part of the observer."

 The term "MASTER", therefore, has acquired a certain

connotation to mean the coffee products MASTER ROAST and
MASTER BLEND produced by Nestle. As such, the use by CFC of
the term "MASTER" in the trademark for its coffee product FLAVOR
MASTER is likely to cause confusion or mistake or even to deceive
the ordinary purchasers.
CFC’S APPLICATION TO REGISTER THE FLAVOR MASTER WAS
DENIED.
 Levi Strauss & Co. vs. Clinton Apparelle, Inc.
FACTS
LS & Co. And LSPI filed a Complaint for Trademark Infringement
against Clinton Apparelle and Olympian Garments before RTC Quezon
CIty. The complaint alleged that LS & Co. Is engaged in the apparel
business and is the owner of “Dockers and Design” trademark. This
ownership is evidenced by its valid and existing registrations in various
member countries of the Paris Convention. In the Philippines, it has a
Certificate of Registration No. 46619 in the Principal Register for use of
said trademark on pants, shirts, blouses, skirts, shorts, sweatshirts and
jackets under Class 25.
LS & Co. and LSPI alleged that they discovered the presence in the
local market of jeans under the brand name "Paddocks" using a device
which is substantially, if not exactly, similar to the "Dockers and Design"
trademark owned by and registered in the name of LS & Co., without its
consent. Based on their information and belief, they added, Clinton
Apparelle manufactured and continues to manufacture such "Paddocks"
jeans and other apparel.
Petitioners prayed for issuance of TRO for the application of such
trademark. The trial court issued a TRO in favor of LEVI after CLINTON
and OLYMPIAN failed to appear. Thereafter, the issuance of a writ of
preliminary injunction was granted in favor of LEVI. However, the appellate
court reserved the decision of the trial court and granted the petition of
CLINTON for certiorari, prohibition and mandamus with prayer for the
issuance of a temporary restraining order and/or writ of preliminary
injunction. In its defense, CLINTON maintained among others that it was
not validly served with summons since the same was only served upon
OLYMPIAN; hence, the TRO was void. It also asserted that there was no
confusion between the two marks and that the erosion of petitioners’
trademark may not be protected by injunction. It believes that the issued
writ in effect disturbed the status quo and disposed of the main case
without trial.
ISSUE:
Whether or not CA erred in setting aside the orders of the trial court
regarding issuance of TRO.
RULING:
No, the issuance of the writ of preliminary injunction by the RTC is not
proper.
Petitioners’ registered trademark consists of two elements: (1) the word
mark "Dockers" and (2) the wing-shaped design or logo. Notably, there is
only one registration for both features of the trademark giving the
impression that the two should be considered as a single unit. CLINTON’s
trademark, on the other hand, uses the "Paddocks" word mark on top of a
logo which according to petitioners is a slavish imitation of the "Dockers"
design. The two trademarks apparently differ in their word marks
("Dockers" and "Paddocks"), but again according to petitioners, they
employ similar or identical logos. It could thus be said that respondent only
"appropriates" petitioners’ logo and not the word mark "Dockers"; it uses
only a portion of the registered trademark and not the whole. The single
registration of the trademark "Dockers and Design" and considering that
respondent only uses the assailed device but a different word mark, the
right to prevent the latter from using the challenged "Paddocks" device is
far from clear. Stated otherwise, it is not evident whether the single
registration of the trademark "Dockers and Design" confers on the owner
the right to prevent the use of a fraction thereof in the course of trade. It is
also unclear whether the use without the owner’s consent of a portion of a
trademark registered in its entirety constitutes material or substantial
invasion of the owner’s right.
It is likewise not settled whether the wing-shaped logo, as opposed to
the word mark, is the dominant or central feature of petitioners’ trademark
—the feature that prevails or is retained in the minds of the public—an
imitation of which creates the likelihood of deceiving the public and
constitutes trademark infringement. In sum, there are vital matters which
have yet and may only be established through a full-blown trial. Hence,
petitioners’ right to injunctive relief has not been clearly and unmistakably
demonstrated. The right has yet to be determined. Petitioners also failed to
show proof that there is material and substantial invasion of their right to
warrant the issuance of an injunctive writ. Neither were petitioners able to
show any urgent and permanent necessity for the writ to prevent serious
damage.
Petitioners wish to impress upon the Court the urgent necessity for
injunctive relief, urging that the erosion or dilution of their trademark is
protectable. They assert that a trademark owner does not have to wait until
the mark loses its distinctiveness to obtain injunctive relief, and that the
mere use by an infringer of a registered mark is already actionable even if
he has not yet profited thereby or has damaged the trademark owner.
Trademark dilution is the lessening of the capacity of a famous mark
to identify and distinguish goods or services, regardless of the presence or
absence of: (1) competition between the owner of the famous mark and
other parties; or (2) likelihood of confusion, mistake or deception. Subject to
the principles of equity, the owner of a famous mark is entitled to an
injunction against another persons commercial use in commerce of a mark
ortrade name, if such use begins after the mark has become famous and
causes dilution of the distinctive quality of the mark. This is intended to
protect famous marks from subsequent uses that blur distinctiveness of the
mark or tarnish or disparage it.
Based on the foregoing, to be eligible for protection from dilution
there has to be a finding that : (1) the trademark sought to be protected is
famous and distinctive; (2) the use by respondent of Paddocks and Design
began after the petitioners mark became famous; and (3) such subsequent
use defames petitioners mark. In the case at bar, petitioners have yet to
establish whether Dockers and Design has acquired a strong degree of
distinctiveness and whether the other two elements are present for their
cause to fall within the ambit of the invoked protection.
The Trends MBL Survey Report which petitioners presented in a bid
to establish that there was confusing similarity between two marks is not
sufficient proof of any dilution that the trial court must enjoin.