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August 14, 2003]
SMITH KLINE BECKMAN CORPORATION, petitioner, vs. THE HONORABLE COURT OF APPEALS and TRYCO PHARMA CORPORATION, respondents. DECISION CARPIO-MORALES, J.: Smith Kline Beckman Corporation (petitioner), a corporation existing by virtue of the laws of the state of Pennsylvania, United States of America (U.S.) and licensed to do business in the Philippines, filed on October 8, 1976, as assignee, before the Philippine Patent Office (now Bureau of Patents, Trademarks and Technology Transfer) an application for patent over an invention entitled “Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.” The application bore Serial No. 18989. On September 24, 1981, Letters Patent No. 14561 for the aforesaid invention was issued to petitioner for a term of seventeen (17) years. The letters patent provides in its claims  that the patented invention consisted of a new compound named methyl 5 propylthio-2-benzimidazole carbamate and the methods or compositions utilizing the compound as an active ingredient in fighting infections caused by gastrointestinal parasites and lungworms in animals such as swine, sheep, cattle, goats, horses, and even pet animals. Tryco Pharma Corporation (private respondent) is a domestic corporation that manufactures, distributes and sells veterinary products including Impregon, a drug that has Albendazole for its active ingredient and is claimed to be effective against gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats. Petitioner sued private respondent for infringement of patent and unfair competition before the Caloocan City Regional Trial Court (RTC).  It claimed that its patent covers or includes the substance Albendazole such that private respondent, by manufacturing, selling, using, and causing to be sold and used the drug Impregon without its authorization, infringed Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No. 14561 as well as committed unfair competition under Article 189, paragraph 1 of the Revised Penal Code and Section 29 of Republic Act No. 166 (The Trademark Law) for advertising and selling as its own the drug Impregon although the same contained petitioner’s patented Albendazole.  On motion of petitioner, Branch 125 of the Caloocan RTC issued a temporary restraining order against private respondent enjoining it from committing acts of patent infringement and unfair competition.  A writ of preliminary injunction was subsequently issued. Private respondent in its Answer averred that Letters Patent No. 14561 does not cover the substance Albendazole for nowhere in it does that word appear; that even if the patent were to include Albendazole, such substance is unpatentable; that the Bureau of Food and Drugs allowed it to manufacture and market Impregon with Albendazole as its known ingredient; that there is no proof that it passed off in any way its veterinary products as those of petitioner; that Letters Patent No. 14561 is null and void, the application for the issuance thereof having been filed beyond the one year period from the filing of an application abroad for the same invention covered thereby, in violation of Section 15 of Republic Act No. 165 (The Patent Law); and that petitioner is not the registered patent holder. Private respondent lodged a Counterclaim against petitioner for such amount of actual damages as may be proven; P1,000,000.00 in moral damages; P300,000.00 in exemplary damages; and P150,000.00 in attorney’s fees.
Finding for private respondent, the trial court rendered a Decision dated July 23, 1991,  the dispositive portion of which reads: WHEREFORE, in view of the foregoing, plaintiff’s complaint should be, as it is hereby, DISMISSED. The Writ of injunction issued in connection with the case is hereby ordered DISSOLVED. The Letters Patent No. 14561 issued by the then Philippine Patents Office is hereby declared null and void for being in violation of Sections 7, 9 and 15 of the Patents Law. Pursuant to Sec. 46 of the Patents Law, the Director of Bureau of Patents is hereby directed to cancel Letters Patent No. 14561 issued to the plaintiff and to publish such cancellation in the Official Gazette. Defendant Tryco Pharmaceutical Corporation is hereby awarded P330,000.00 actual damages and P100,000.00 attorney’s fees as prayed for in its counterclaim but said amount awarded to defendant is subject to the lien on correct payment of filing fees. SO ORDERED. (Underscoring supplied) On appeal, the Court of Appeals, by Decision of April 21, 1995, upheld the trial court’s finding that private respondent was not liable for any infringement of the patent of petitioner in light of the latter’s failure to show that Albendazole is the same as the compound subject of Letters Patent No. 14561. Noting petitioner’s admission of the issuance by the U.S. of a patent for Albendazole in the name of Smith Kline and French Laboratories which was petitioner’s former corporate name, the appellate court considered the U.S. patent as implying that Albendazole is different from methyl 5 propylthio-2-benzimidazole carbamate. It likewise found that private respondent was not guilty of deceiving the public by misrepresenting that Impregon is its product. The appellate court, however, declared that Letters Patent No. 14561 was not void as it sustained petitioner’s explanation that Patent Application Serial No. 18989 which was filed on October 8, 1976 was a divisional application of Patent Application Serial No. 17280 filed on June 17, 1975 with the Philippine Patent Office, well within one year from petitioner’s filing on June 19, 1974 of its Foreign Application Priority Data No. 480,646 in the U.S. covering the same compound subject of Patent Application Serial No. 17280. Applying Section 17 of the Patent Law, the Court of Appeals thus ruled that Patent Application Serial No. 18989 was deemed filed on June 17, 1995 or still within one year from the filing of a patent application abroad in compliance with the one-year rule under Section 15 of the Patent Law. And it rejected the submission that the compound in Letters Patent No. 14561 was not patentable, citing the jurisprudentially established presumption that the Patent Office’s determination of patentability is correct. Finally, it ruled that petitioner established itself to be the one and the same assignee of the patent notwithstanding changes in its corporate name. Thus the appellate court disposed: WHEREFORE, the judgment appealed from is AFFIRMED with the MODIFICATION that the orders for the nullification of Letters Patent No. 14561 and for its cancellation are deleted therefrom. SO ORDERED. Petitioner’s motion for reconsideration of the Court of Appeals’ decision having been denied  the present petition for review on certiorari  was filed, assigning as errors the following: I. THE COURT OF APPEALS GRAVELY ERRED IN NOT FINDING THAT ALBENDAZOLE, THE ACTIVE INGREDIENT IN TRYCO’S “IMPREGON” DRUG, IS INCLUDED IN PETITIONER’S LETTERS PATENT NO. 14561, AND THAT CONSEQUENTLY TRYCO IS ANSWERABLE FOR PATENT INFRINGEMENT.
II. THE COURT OF APPEALS GRAVELY ERRED IN AWARDING TO PRIVATE RESPONDENT TRYCO PHARMA CORPORATION P330,000.00 ACTUAL DAMAGES AND P100,000.00 ATTORNEY’S FEES. Petitioner argues that under the doctrine of equivalents for determining patent infringement, Albendazole, the active ingredient it alleges was appropriated by private respondent for its drug Impregon, is substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since both of them are meant to combat worm or parasite infestation in animals. It cites the “unrebutted” testimony of its witness Dr. Godofredo C. Orinion (Dr. Orinion) that the chemical formula in Letters Patent No. 14561 refers to the compound Albendazole. Petitioner adds that the two substances substantially do the same function in substantially the same way to achieve the same results, thereby making them truly identical. Petitioner thus submits that the appellate court should have gone beyond the literal wordings used in Letters Patent No. 14561, beyond merely applying the literal infringement test, for in spite of the fact that the word Albendazole does not appear in petitioner’s letters patent, it has ably shown by evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate. Petitioner likewise points out that its application with the Philippine Patent Office on account of which it was granted Letters Patent No. 14561 was merely a divisional application of a prior application in the U. S. which granted a patent for Albendazole. Hence, petitioner concludes that both methyl 5 propylthio-2-benzimidazole carbamate and the U.S.-patented Albendazole are dependent on each other and mutually contribute to produce a single result, thereby making Albendazole as much a part of Letters Patent No. 14561 as the other substance is. Petitioner concedes in its Sur-Rejoinder that although methyl 5 propylthio-2-benzimidazole carbamate is not identical with Albendazole, the former is an improvement or improved version of the latter thereby making both substances still substantially the same. With respect to the award of actual damages in favor of private respondent in the amount of P330,000.00 representing lost profits, petitioner assails the same as highly speculative and conjectural, hence, without basis. It assails too the award of P100,000.00 in attorney’s fees as not falling under any of the instances enumerated by law where recovery of attorney’s fees is allowed. In its Comment, private respondent contends that application of the doctrine of equivalents would not alter the outcome of the case, Albendazole and methyl 5 propylthio-2-benzimidazole carbamate being two different compounds with different chemical and physical properties. It stresses that the existence of a separate U.S. patent for Albendazole indicates that the same and the compound in Letters Patent No. 14561 are different from each other; and that since it was on account of a divisional application that the patent for methyl 5 propylthio-2-benzimidazole carbamate was issued, then, by definition of a divisional application, such a compound is just one of several independent inventions alongside Albendazole under petitioner’s original patent application. As has repeatedly been held, only questions of law may be raised in a petition for review on certiorari before this Court. Unless the factual findings of the appellate court are mistaken, absurd, speculative, conjectural, conflicting, tainted with grave abuse of discretion, or contrary to the findings culled by the court of origin, this Court does not review them. From an examination of the evidence on record, this Court finds nothing infirm in the appellate court’s conclusions with respect to the principal issue of whether private respondent committed patent infringement to the prejudice of petitioner. The burden of proof to substantiate a charge for patent infringement rests on the plaintiff. In the case at bar, petitioner’s evidence consists primarily of its Letters Patent No. 14561, and the testimony of Dr. Orinion, its general manager in the Philippines for its Animal Health Products Division, by which it sought to show that its patent for the compound methyl 5 propylthio-2-benzimidazole carbamate also covers the substance Albendazole. From a reading of the 9 claims of Letters Patent No. 14561 in relation to the other portions thereof, no mention is made of the compound Albendazole. All that the claims disclose are: the covered invention, that is, the compound methyl 5 propylthio-2-benzimidazole carbamate; the compound’s being anthelmintic
the patentee having the burden to show that all three components of such equivalency test are met. the principle or mode of operation must be the same or substantially the same. When the language of its claims is clear and distinct. The applicant thus is required “to divide. a scrutiny of petitioner’s evidence fails to convince this Court of the substantial sameness of petitioner’s patented compound and Albendazole. As for the concept of divisional applications proffered by petitioner.00 and that sales plummeted to zero after the issuance of the injunction. to limit the claims to whichever invention he may elect. the language of Letter Patent No.000. nothing more is asserted and accordingly substantiated regarding the method or means by which Albendazole weeds out parasites in animals. Orinion lends no support to petitioner’s cause.” that is. The foregoing discussions notwithstanding. even though it performs the same function and achieves the same result. The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and. computed at the rate of 30% of its alleged P100. this Court does not sustain the award of actual damages and attorney’s fees in favor of private respondent. petitioner’s evidence fails to explain how Albendazole is in every essential detail identical to methyl 5 propylthio-2-benzimidazole carbamate. While both compounds have the effect of neutralizing parasites in animals. and the patented methods. compositions or preparations involving the compound to maximize its efficacy against certain kinds of parasites infecting specified animals. methyl 5 propylthio-2-benzimidazole carbamate would not have been the subject of a divisional application if a single patent could have been issued for it as well as Albendazole. 14561 is not determinative of Albendazole’s non-inclusion in the claims of the patent.00 representing lost profits or revenues incurred by private respondent as a result of the issuance of the injunction against it. The doctrine of equivalents thus requires satisfaction of the function-means-and-result test. And no extrinsic evidence had been adduced to prove that Albendazole inheres in petitioner’s patent in spite of its omission therefrom or that the meaning of the claims of the patent embraces the same. the patentee is bound thereby and may not claim anything beyond them.000. nor may they enlarge the patent beyond the scope of that which the inventor claimed and the patent office allowed. although with some modification and change. it comes into play when two or more inventions are claimed in a single application but are of such a nature that a single patent may not be issued for them.00 monthly gross sales for eleven months. 14561 fails to yield anything at all regarding Albendazole. thus giving no information on whether that method is substantially the same as the manner by which petitioner’s compound works. In other words. identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented compound. it urges this Court to apply the doctrine of equivalents. were supported by the testimonies of private respondent’s President  and Executive VicePresident that the average monthly sale of Impregon was P100.  While indemnification for actual or compensatory damages covers . whereas those inventions not elected may be made the subject of separate applications which are called “divisional applications.but nontoxic for animals or its ability to destroy parasites without harming the host animals.” What this only means is that petitioner’s methyl 5 propylthio-2-benzimidazole carbamate is an invention distinct from the other inventions claimed in the original application divided out. While Albendazole is admittedly a chemical compound that exists by a name different from that covered in petitioner’s letters patent. he not having been presented or qualified as an expert witness who has the knowledge or expertise on the matter of chemical compounds. As stated early on. even if the patentee may have been entitled to something more than the words it had chosen would include. While petitioner concedes that the mere literal wordings of its patent cannot establish private respondent’s infringement. And so are the courts bound which may not add to or detract from the claims matters not expressed or necessarily implied. Apart from the fact that Albendazole is an anthelmintic agent like methyl 5 propylthio-2-benzimidazole carbamate. The testimony of Dr.000. Albendazole being one of those other inventions. Yet again. Otherwise. The claimed actual damages of P330. It bears stressing that the mere absence of the word Albendazole in Letters Patent No. performs substantially the same function in substantially the same way to achieve substantially the same result.
 There exists no evidence on record indicating that petitioner was moved by malice in suing private respondent. SO ORDERED. Thus he sought from . be established with certainty. WHEREFORE. The award of actual or compensatory damages and attorney’s fees to private respondent. the assailed decision of the Court of Appeals is hereby AFFIRMED with MODIFICATION. 1996 ROBERTO L.  In the same vein. is DELETED. however. this Court does not sustain the grant by the appellate court of attorney’s fees to private respondent anchored on Article 2208 (2) of the Civil Code. 115106 March 15. grants private respondent temperate or moderate damages in the amount ofP20. J. UM-5269 dated 2 June 1983 as well as Letters Patent No. petitioner. DEL ROSARIO. from using. Tryco Pharma Corporation. attorney's fees and costs of suit. private respondent having been allegedly forced to litigate as a result of petitioner’s suit.the trial court the issuance of a writ of preliminary injunction to enjoin private respondent.00 which it finds reasonable under the circumstances. BELLOSILLO. The effectivity of both Letters Patents was for five (5) years and was extended for another five (5) years starting 2 June 1988 and 14 November 1991. Even if a claimant is compelled to litigate with third persons or to incur expenses to protect its rights. such as the echo or reverb to stimulate an opera hall or a studio sound. one or two tape mechanisms.:p Roberto del Rosario petitions this Court to review the decision of the Court of Appeals 1 which set aside the order of the Regional Trial Court of Makati granting a writ of preliminary injunction in his favor. COURT OF APPEALS AND JANITO CORPORATION. its officers and everybody elsewhere acting on its behalf. respondents. No.not only the loss suffered (damnum emergens) but also profits which the obligee failed to obtain (lucrum cessans or ganacias frustradas). it is hereby awarded the amount of P20. it having suffered some pecuniary loss the amount of which cannot. from the nature of the case. and praying for damages.R. This Court. instead. In the early part of 1990 petitioner learned that private respondent was manufacturing a sing-along system bearing the trademark miyata or miyata karaoke substantially similar if not identical to the sing-along system covered by the patents issued in his favor. optional tuner or radio and microphone mixer with features to enhance one's voice.000. UM-6237 dated 14 November 1986 issued by the Director of Patents. still attorney’s fees may not be awarded where no sufficient showing of bad faith could be reflected in a party’s persistence in a case other than an erroneous conviction of the righteousness of his cause. vs. del Rosario alleged that he was a patentee of an audio equipment and improved audio equipment commonly known as the sing-along System or karaoke under Letters Patent No.  The testimonies of private respondent’s officers are not the competent proof or best evidence obtainable to establish its right to actual or compensatory damages for such damages also require presentation of documentary evidence to substantiate a claim therefor. the injunction to be made permanent after trial. respectively. 2 Roberto L. He described his sing-along system as a handy multi-purpose compact machine which incorporates an amplifier speaker. selling and advertising the miyata or miyata karaoke brand.00 as temperate or moderate damages.000. with the whole system enclosed in one cabinet casing. . it is necessary to prove the actual amount of damages with a reasonable degree of certainty based on competent proof and on the best evidence obtainable by the injured party. G. The antecedents: On 18 January 1993 petitioner filed a complaint for patent infringement against private respondent Janito Corporation.
and that the karaoke system was a universal product manufactured. The motion to reconsider the grant of the writ was denied. the instant petition for review. petitioner herein claims. that the movant has a clear legal right to be protected and that there is a violation of such right by private respondent. (c) the Court of Appeals erred in disregarding the findings of fact of the trial court. It expressed the view that there was no infringement of the patents of petitioner by the fact alone that private respondent had manufactured the miyata karaoke or audio system. It is to be resorted to only when there is a pressing necessity to avoid injurious consequences which cannot be remedied under any standard of compensation. in view of all the circumstances. Thus. in the absence of a patent to justify the manufacture and sale by private respondent of sing-along systems. The controlling reason for the existence of the judicial power to issue the writ is that the court may thereby prevent a threatened or continuous irremediable injury to some of the parties before their claims can be thoroughly investigated and advisedly adjudicated. On 15 November 1993 respondent appellate court granted the writ and set aside the questioned order of the trial court. This petition alleges that: (a) it was improper for the Court of Appeals to consider questions of fact in a certiorariproceeding. The application of the writ rests upon an alleged existence of an emergency or of a special reason for such an order before the case can be regularly heard. and. 4 hence. Private respondent assailed the order of 24 February 1993 directing the issuance of the writ by way of a petition for certiorari with prayer for the issuance of a writ of preliminary injunction and a temporary restraining order before respondent Court of Appeals. The crux of the controversy before us hinges on whether respondent Court of Appeals erred in finding the trial court to have committed grave abuse of discretion in enjoining private respondent from manufacturing. that respondent court should not have disturbed but respected instead the factual findings of the trial court. it appears. (b) the Court of Appeals erred in taking judicial notice of private respondent's selfserving presentation of facts.On 5 February 1993 the trial court temporarily restrained private respondent from manufacturing. an adjunct to a main suit. 5 Petitioner argues that in a certiorari proceeding questions of fact are not generally permitted the inquiry being limited essentially to whether the tribunal has acted without or in excess of jurisdiction or with grave abuse of discretion. advertised and marketed in most countries of the world long before the patents were issued to petitioner. and the essential conditions for granting such temporary injunctive relief are that the complaint alleges facts which appear to be sufficient to constitute a cause of action for injunction and that on the entire showing from both sides. that the injunction is reasonably necessary to protect the legal rights of plaintiff pending the litigation. Injunction is a preservative remedy for the protection of substantive rights or interests. selling and advertising the miyata karaoke brand sing-along system for being substantially similar if not identical to the audio equipment covered by letters patent issued to petitioner. using and/or selling and advertising the miyata sing-along system or any sing-along system substantially identical to the sing-along system patented by petitioner until further orders. it is not entitled to the injunctive relief granted by respondent appellate court. (d) there was no basis for the Court of Appeals to grant a writ of preliminary injunction in favor of private respondent. On the other hand. It is not a cause of action in itself but merely a provisional remedy. On 24 February 1993 the trial court issued a writ of preliminary injunction upon a bond on the basis of its finding that petitioner was a holder of a utility model patent for a sing-along system and that without his approval and consent private respondent was admittedly manufacturing and selling its own sing-along system under the brand name miyata which was substantially similar to the patented utility mode 3 of petitioner. 6 . he has satisfied the legal requisites to justify the order of the trial court directing the issuance of the writ of injunction.
a legal right which must be shown to be clear and positive. petitioner is a holder of Letters Patent No. configuration. some act probably in violation of the plaintiff's rights.A preliminary injunction may be granted at any time after the commencement of the action and before judgment when it is established that the defendant is doing. said rear compartment being provided with a door and enclosing therein a set of tape racks and said front compartment serving as loud speaker baffle. and ornamental design for an article of manufacture and (b) new model or implements or tools or of any industrial product or of part of the same. 55 of R. . threatens. provides — Sec. known as The Patent Law.A. a transistorized amplifier circuit wired in at least two printed circuit boards attached at the back of said control panel. or is about to do. Design patents and patents for utility models. which does not possess the quality of invention but which is of practical utility by reason of its form. 8 Again. a control panel formed by vertical and horizontal sections. UM-6237 for a term of five (5) years from the grant of a Utility Model described as — In an audio equipment consisting of a first cubical casing having an opening at its rear and upper rear portion and a partition therein forming a rear compartment and a front compartment serving as a loud speaker baffle. said second cubical casing being adapted to said first cubical casing so that said first and second casings are secured . 7 For the writ to issue the interest of petitioner in the controversy or the right he seeks to be protected must be a present right. may be protected by the author thereof. — (a) Any new. and that the facts against which the injunction is to be directed are violative of said right. there are only two requisites to be satisfied if an injunction is to issue. In this regard Sec. . Thus. UM-5629 dated 2 June 1985 issued for a term of five (5) years from the grant of a Utility Model herein described — The construction of an audio equipment comprising a substantially cubical casing having a window at its rear and upper corner fitted with a slightly inclined control panel. through various controls mounted on said control panel of such casing. namely. the improvement wherein said control panel being removably fitted to said first cubical casing and further comprises a set of tape recorder and tape player mounted on the vertical section of said control panel and said recorder and player are likewise connected to said transistorized amplifier circuit. 165 as amended. said second cubical casing having (being?) provided with a vertical partition therein defining a rear compartment and a front compartment. or is procuring or suffering to be done. the former by a patent for a design and the latter by a patent for a utility model. a second cubical casing having an opening at its rear. 55. said transistorized amplifier circuit capable of being operated from outside. a loud speaker fitted inside said front compartment of said casing and connected to the output of the main audio amplifier section of said transistorized amplifier circuit and a tape player mounted on the top wall of said casing and said tape player being connected in conventional manner to said transistorized amplifier circuit. Admittedly. the existence of the right to be protected. and said front compartment serving as a speaker baffle. except as otherwise herein provide . on 14 November 1986 petitioner was granted Letters Patent No. said cubical (casing) having a vertical partition wall therein defining a rear compartment and a front compartment. . in the same manner and subject to the same provisions and requirements as relate to patents for inventions insofar as they are applicable. a first loud speaker fitted inside said first compartment of such first casing and connected to the output of said transistorized amplifier circuit. construction or composition. original. a transistorized amplifier circuit having an echo section and writhed in at least the printed circuit boards placed inside said rear compartment of said casing and attached to said vertical partition wall.
Musicmate and Asahi. i. . More than that because. The decision of the Director of Patents in granting the patent is always presumed to be correct. reissuing or withholding patents and extensions thereof. the first beginning 2 June 1988 and the second. No. Maybe I informed him already. Now you will agree with me that in your statement Sharp you put the date as 1985 agreed? A. The Patent Law expressly acknowledges that any new model of implements or tools of any industrial product even if not possessed of the quality of invention but which is of practical utility is entitled to a patent for utility model. you testified that there are (sic) so many other companies which already have (sic) the sing-along system even before the patent application of Mr. . 55 of The Patent Law a utility model shall not be considered "new" if before the application for a patent it has been publicly known or publicly used in this country or has been described in a printed publication or publications circulated within the country. there is no dispute that the letters patent issued to petitioner are for utility models of audio equipment. . to wit — Q. or if it is substantially similar to any other utility model so known. Q. You mean your lawyer was wrong when he put the word Sharp 1985? A. Q.e. 9 The terms of both Letters Patents were extended for another five (5) years each. and a second loud speaker fitted inside said front compartment of said casing and connected to the output of said amplifier circuit. 10Here. 12 Under Sec. Respondent corporation failed to present before the trial court competent evidence that the utility models covered by the Letters Patents issued to petitioner were not new. the Director decides not only questions of law but also questions of fact. Cua. it affords a prima facie presumption of its correctness and validity. and the burden then shifts to respondent to overcome this presumption by competent evidence. whether there has been a prior public use or sale of the article sought to be patented. is that right? These 18 which you enumerated here. In passing on an application. xxx xxx xxx . Sony and Sharp. In issuing. Mr. This is evident from the testimony of Janito Cua. 11 Where petitioner introduces the patent in evidence. Now do you recall that your lawyer filed with this Honorable Court an Urgent Motion to Lift Temporary Restraining Order of this Honorable Court. I am sure you were the one who provided him with the information about the many other companies selling the sing-along system.together in compact and portable form. A. is that right? A. 14 November 1991. if it is in due form. during the hearing on the issuance of the injunction. the Director of Patents determines whether the patent is new and whether the machine or device is the proper subject of patent. Q. President of respondent Janito Corporation. used or described within the country. del Rosario and as a matter of fact you mentioned Sanyo.
Panasonic 1986 is also wrong? A. It is more or less because it is urgent. Q. Q. this is also correct or wrong? A. No that is 1979. Sanyo is 1979 I think. The date? Q. Q. Nakabutshi by Asahi Electronics that is also wrong? A. National by Precision Electronic 1986 this is also wrong? A. Skylers 1985 is that correct or wrong? A. Yupangco 1981 this is more or less? You are not also sure? . We said more or less. Q. So this is also wrong.Q. It is not 1985? A. Electone by DICO 1989 is this correct or wrong? A. More or less. Q. More or less. So you don't think also that this allegation here that they manufactured in 1986 is correct? A. So that means all your allegations here from 2 to 5 are wrong? OK. Q. Wrong. Musicmate of G.A. So you don't think this is also correct. A. Q. Sanyo is wrong. I think earlier. more or less? A. Since it is urgent it is more or less. Correct. Q. Panasonic I think. Q. Earlier. We don't have time to exact the date. You mean your lawyer was wrong in alleging to this Court that Sharp manufactured and sold (in) 1985 as found in the Urgent Motion? A. Q. The same also with Sanyo 1985 which you put. By Philipps Philippines 1986.
I have the product. This one because. Q. A. Mr. 5269. you don't also have a proof that Akai instrument that you said was also in the market before 1982? You don't have any written proof. and cited the differences between its miyata equipment and petitioner's audio equipment. . do you have it. petitioner as a patentee shall have the exclusive right to make. under Sec. anything in writing that would show that all these instruments are in the market. 95% sure. both containing a transistorized amplifier circuit capable of being operated from outside through various controls mounted on the control panel. Now you are sure 1981.A. throughout the territory of the Philippines for the term of the patent. any advertisement? A. No I am satisfied with your answer. 13 As may be gleaned herein. No. Witness. and that both had loud speakers fitted inside the front compartment of the casing and connected to the output of the main audio amplifier section both having a tape recorder and a tape player mounted on the control panel with the tape recorder and tape player being both connected to the transistorized amplifier circuit. any advertisement. right? A. He also alleged that both his own patented audio equipment and respondent's sing-along system were constructed in a casing with a control panel. Q. use and sell the patented machine. using or selling by any person without authorization of the patentee constitutes infringement of his patent. . Q. But. and completely . the casing having a vertical partition wall defining the rear compartment from the front compartment. No I don't have it because. More or less. . Utility Model No. . Petitioner established before the trial court that respondent Janito Corporation was manufacturing a similar sing-along system bearing the trademark miyata which infringed his patented models. Q. the rights of petitioner as a patentee have been sufficiently established. Consequently. . But you have not brought the product in (sic) this Honorable Court. contrary to the findings and conclusions of respondent Court of Appeals. article or product for the purpose of industry or commerce. 37 of The Patent law. 14 Respondent Janito Corporation denied that there was any violation of petitioner's patent rights. . and such making. Now do you have any proof. with the front compartment consisting of a loud speaker baffle. Now Mr. respondent only confined its comparison to the first model. Witness so you are now trying to tell this Honorable Court that all your allegations here of the dates in this Urgent Motion except for Musicmate which you are only 95% sure they are all wrong or they are also more or less or not sure. A. it must be emphasized. Q. is that right? A.
Fourth. 1 tape pream. there are various controls mounted on the control panel of the casing.disregarded Utility Model No. and disregarded completely petitioner's utility Model No. Seventh. Fifth. 1 instrument and 1 wireless microphone. the various controls are all separated from the printed circuit boards and the various controls are all attached thereto. the 7 printed circuit boards (PCB) are attached to the front panel and 1 attached to the horizontal divider. In order to infringe a patent. competent and reliable comparison between its own model and that of petitioner. 6237 which improved on his first patented model. or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same. Under Utility Model 5269. Second. Under Utility Model 5269. it has only a front compartment horizontally divided into 3 compartments like a 3storey building. Under Utility Model 5269. Sixth. (d) both are used to sing with live accompaniment and to record the same. 1 main tuner. a tape player is mounted on the top wall of the casing. 1 echo IC. Notwithstanding the differences cited by respondent corporation. Third. or that both are used to play minus-one or standard cassette tapes for singing or for listening to. and the 3rd are kits. with 1 amplifier with power supply. 6237 which improved on the first. while inmiyata. (e) both . while the miyata equipment has no rear compartment and front compartment in its rectangular casing. Under Utility Model 5269. 1 equalizer (3-band). while in the miyataequipment the amplifier is mainly IC (Integrated Circuit) — powered with 8 printed circuit boards almost all of which are IC controlled. or the device. a loud speaker fitted inside the front compartment of the casing is connected to the output of the main audio amplifier section of the transistorized amplifier circuit. the printed circuit board having 1 amplifier and 1 echo. (c) both are used to sing with a minus-one tape and multiplex tape and to record the singing and the accompaniment. while in the miyata. there is no other way but to use 2 loud speakers connected to the amplifier. machine or other subject matter alleged to infringe is substantially identical with the patented invention. 5269. Under Utility Model 5269. it did not refute and disprove the allegations of petitioner before the trial court that: (a) both are used by a singer to sing and amplify his voice. while in miyata. Under Utility Model No. the cubical casing has a vertical partition wall defining a rear compartment and a front compartment serving as a speaker baffle. It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated. 15 these differences are — First. 4 printed circuits are placed inside the compartment of its casing attached to the vertical partition wall. As described by respondent corporation. the unit is a substantially cubical casing with a window at its rear and upper corner fitted with slightly inclined control panel. a transistorized amplifier circuit with an echo section wired in at least 2 printed circuit boards is placed inside the rear compartment of the casing and attached to the vertical partition wall. the 1st compartment being a kit. (b) both are used to sing with a minus-one or multiplex tapes. while the miyata equipment is a substantially rectangular casing with panel vertically positioned. 1 IC controlled volume control. while in miyata. the 2nd also the speaker. 2 tape players are used mounted side by side at the front. Under Utility Model 5269. 16 It may be noted that respondent corporation failed to present before the trial court a clear. a machine or device must perform the same function.
In view thereof. de Castro for respondent. with a right slant. 1947.L. lines. Gonzales for oppositor. In the facsimiles attached to the original application. The word "Freedom" is in hand print. (i) both can be used with one or more microphones.. In Exhibit D-2. and all of these are enclosed in a rectangle of double lines. No. the said word is preceded by a triangle. the Decision of the Court of Appeals dated 15 November 1993 is REVERSED and SET ASIDE and the Order of the trial court dated 24 February 1993 granting petitioner the writ of injunction is REINSTATED. G. The label used for boxes is similar to label Exhibit D-1. WHEREFORE. The trademark sought to be registered is "Freedom". 166 filed in the Philippine Patent Office bearing Serial No. J. except that the rectangle is in a heavy line and is longer. Antonio Fa. which vignette is preceded by the small word "The" in print and followed by two parallel lines close to each other. Panis and Rizalino L. and the words "PERFECT WEAR" in smaller letters under the word "FREEMAN". the label is the same word "Freedom" with a capital letter "M" above it. and Solicitor Pacifico P. both petitioner's and respondent's models involve substantially the same modes of operation and produce substantially the same if not identical results when used. 38.are used to enhance the voice of the singer using echo effect. oppositor. with the letter "F" inside and small letters "H. DIRECTOR OF PATENTS. SAW WOO CHIONG AND CO.. and. and both may also be used to record a speaker's voice or instrumental playing. The trial court is directed to continue with the proceedings on the main action pending before it in order to resolve with dispatch the issues therein presented. has used the trademark on undershirts and T-shirts since March. like the guitar and other instruments..R. now petitioner in this Court. or figures around the word. Quesada. applicant for registration of the trademark "Freedom" and its corresponding design." under. Manuel A. oppositor-respondent herein (Exhibit D-3). therefore. applicant-petitioner. we find that petitioner had established before the trial court prima facie proof of violation of his rights as patentee to justify the issuance of a writ of preliminary injunction in his favor during the pendency of the main suit for damages resulting from the alleged infringement. consist of the word "Freeman" in hand print. Eufemio E. vs. treble. The application in said registration proceeding. and denying the application.: This is an appeal filed by Co Tiong Sa.. a flourish under the word "Freedom". de Mesa and E. Favilla for petitioner. and the words "HIGH QUALITY" thereunder. respondent. against a decision of the Director of Patents sustaining the opposition thereto of Saw Woo Chiong and Co. LABRADOR. for recording the singer and the accompaniment. but in the label. . with a slight to the right. above the middle of which is a vignette of a man wearing a to what. CO TIONG SA. 1954 In Re Petition for Registration of Trademark "Freedom" under section 4 of Republic Act No. A capital letter "L" is on the lower right-hand corner. L. Exhibit D-1. there are no letters. (g) both are equipped with cassette tape decks which are installed with one being used for playback and the other. The label presented by Saw Woo Chiong and Co. (h) both are encased in a box-like cabinets. Floro Crisologo. SO ORDERED. L-5378 May 24. bass and other controls. First Assistant Solicitor General Ruperto Kapunan Jr. 17 Clearly.
(Alhambra Cigar and Cigarette Co. 959. The universal test has been said to be whether the public is likely to be deceived. 266. but retains a general impression. flourishes. and the central figure only is retained. Patents.. The ordinary customer does not scrutinize the details of the label. dominant features.. Pepsodent Co.. skippers. This dominant picture or idea is retained in the mind. Mojica. 18 CCPA. Prescott Co. So is it with a customer or purchaser who sees a label. 100). and color. but also on polo shirts. 49 F. which would distinguish the oppositor's label from the triangle with the letter "F" on the right hand corner of applicant's label. It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy. we have the vignette of a man wearing a to what. the four columns supporting it. 579. But differences of variations in the details of one trademark and of another are not the legally accepted tests of similarity in trademarks. the oppositor will nevertheless be damaged.) When a person sees an object.) When would a trademark cause confusion in the mind of the public or in those unwary customers or purchasers? It must be remembered that infringement of a trademark is a form of unfair competition (Clarke vs. magazines.. Pflugh (CC) 180 Fed. etc. (2) in holding that if the central idea of each trademark gives the same general impression.) The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers. citing Procter and Gamble Co.. or a central figure. and does not retain or forgets the attendant decorations. 2d. the tower thereon. 23 CCPA. 2d. disregarding their differences in details. vs. he forgets or overlooks these. There is no question that if the details of the two trademarks are to be considered. vs. The features that are retained are the peculiar. pajamas. (3) in holding that the word "FREEDOM" and "FREEMAN" convey the same general impression. attention should be centered upon the central idea of each trademark. (G.This trademark was registered in 1947 in the Bureau of Commerce and re-registered in the Patent Office on September 22. nor is it necessary that the infringing label should suggest an effort to imitate. Honover Rubber Co. (Auburn Rubber Corporation vs. discontinued manufacturing skippers and T-shirts on the ground of scarcity of materials. and confusion and deception is likely to result. and unfair competition is always a question of fact. 2d 906. 588. 1224. Heilman Brewing Co. and (5) in holding that the oppositor is not required to introduce testimony on substantiate the claim made in its opposition. This trademark has been used since 1938. 107 F. vs. 489. Thus. and the wings on both sides. or variations. 1948. (4) in holding that if the word "FREEDOM" is allowed to be registered as trademark. although in the year 1947 Saw Woo Chiong and Co.. The applicant-petitioner claims that in sustaining the objection of the oppositor-respondent. Then we also have the rectangle enclosing the applicant's mark. 83 F. is not conclusive. 27 Phil. When one sees the city hall of Baguio. The first four assignments of error are related to each other and may be considered together. the picture that is retained is that of a majestic low building with concrete columns all around. L. He retains in his mind the dominant characteristics or features or central idea in the label. and it had been advertised extensively in newspapers. and the decorations or details are forgotten. vs. infrigement takes place. the Director of Patents erred: (1) in holding that in determining an opposition in the registration of trademarks. vs. undershirts. Independent Brewing Co. while relevant. the two trademarks should be adjudged as confusingly similar. 36 Phil. The reason for the above has been explained in the following manner: . Comfort Manufacturing Co. Duplication or limitation is not necessary. a central or dominant idea or picture thereof is formed in his mind. Manila Candy Co. and T-shirts. If the competing trademark contains the main or essential or dominant features of another. which rectangle is absent in that of the oppositor's. 191 F. In this mind-picture the slight or minor decorations are lost sight of. form. 1433. This trademark is used not only on shirts. Patent. citing Eagle White Lead Co. hence must be adjudged to be confusingly similar. When on sees the Legislative Building in Manila. 495. or a dominant characteristic. J.. the dominant characteristics which are likely to be retained in the mind are the portico in the middle of the building.. many differences would be noted that would enable a careful and scrutinizing eye to distinguish one trademark from the other. Similarity in size. although no confusion and deception will actually take place.
These dominant features or characteristics of oppositor's trademarks are reproduced or imitated in applicant's trademark.) "SKOAL" and "SKOL". and often can not. pp. under such circumstances. Similarity of sound alone.. Co. 94. Olson.. form and color of the label and place where it is applied are not conclusive against infringement. Inc. The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of the help of our eyes and must depend entirely on the ear. design.) 180 F. 579.) Upon examination of the trademark of the oppositor-respondent.) .. but he will ignore these. Supp. nor is it necessary that the infringing label should suggest an effort to imitate. He may notice some variations. 151 F. ... or even a large part of the details of what he looks at. . 2d 146.. In the second place. take in at a casual glance all. sound. vs. slightly slanting to the right. It is enough if he takes the one feature which the average buyer is likely to remember... In the first place. (G. There may be infringement where the substantial and distinctive part of the trademark is copied or imitated . one will readily see that the dominant feature is the word "FREEMAN" written in a peculiar print. "CELDURA" and "CORDURA". the style in which both capital "F" are written are similar.. Inc. Dissimilarity in size. The question of infringement is to be determined by the test of dominancy... Inc. vs. 2d. with a peculiarly written capital letters "FF". citing Eagle Co. 24 F. 148. — That both marks considered as a whole are similar in meaning and appearance can not be doubted. Far from all we see or hear casually is retained sufficiently clearly or insufficient detail for us to get a lasting impression of it which we can remember when we encounter the mark again.. If the competing label contains the trademark of another. or a peculiar shape or name. Isaac Ginsberg Bros. (SKOL Co. This rule has a basis in experience. Co. regardless of the fact that the accessories are dissimilar. (1946). et al. . Heilman Brewing Co. An ordinary purchaser or an unsuspecting customer who has seen the oppositor's label sometime before will not recognize the difference between that label and applicant's label. The print and slant of the letters are also similar. When spoken as written they sound very much alike. and "SKOAL" was held identical in sound and meaning to "SKOL"..C. easily remembered earmarks of the brand he has in mind. E. Once his eyes see that or his ear hears it. and confusion or deception is likely to result.) In order to constitute infringement. Vol. . 287.. . See also Finchley. Pflugh (C. 191 F. the following words have been held to have the same significance or to have the same appearance and meaning.. it is not necessary that the trademark be literally copied. form and color of the label and the place where applied are not conclusive. The average person usually will not. I. For purposes of illustration.. he is satisfied. Independent Brewing Co. 25 F 2d 284. The dissimilarity in size. The Law of Unfair Competition and Trademarks. It may be the color. the word "FREEDOM" conveys a similar idea as the word "FREEMAN". 489. vs. 2.. (Celanes Corporation of America vs. vs. Neither is it necessary that every word be appropriated. Du Pont de Nemours and Co. infringement takes place.. An unfair competitor need not copy the entire mark to accomplish his fraudulent purpose. What part or parts of two trademarks which are alleged to be similar does the average ordinary buyer see when he looks at them? What features of them are remembered by the average buyer? We do not really hear all that is spoken in our hearing. some special.vs. The resemblances may so far dominate the differences as to be likely to deceive ordinary purchasers. 678-679). The average buyer usually seeks a sign. Duplication or exact imitation is not necessary. (Nims. 200.154 F. believing that they are variations of the same trademark to distinguish one kind or quality of goods from another. George Hess Co. 4th ed. (Queen Mfg. .. is sufficient to cause the marks to be regarded as confusingly similar when applied to merchandise of the same descriptive properties.
Salazar. and to deceive them into believing that the articles bearing one label are similar or produced by the same manufacturer as those carrying the other label. Kapunan Law Office for private respondent.In this jurisdiction we have held that that name "Lusolin" is an infringement of the trademark "Sapolin. Roco. GRIÑO-AQUINO. Failure on the part of the oppositor to submit the testimony of witnesses. and other characteristics. J. Bunag. by a mere examination and comparison of the competing trademarks. Similarity or dissimilarity can be determined by the Director of Patents. Pasig. therefore.. 67 Phil. Abad Santos & Associates and Sycip. INC. and the labels of containers being almost the same in respect to color. is to be determined by the court mainly on the basis of the facsimiles or labels or pictures submitted to the Director of Patents. while defendant's was a Filipino. petitioner. size. 75. plaintiff's label represented an European female. RTC Branch 166. No.. 47 Phil. who are to give opinions on the alleged similarity or dissimilarity. the same is hereby affirmed. or by this Court on appeal. 1993 ASIA BREWERY. 1988. . Balmeceda and Germann and Co. with costs against the applicant-petitioner Co Tiong Sa. After a careful study. Hernandez & Gatmaitan for petitioner. Asia Brewery Inc. Case. (San Miguel Corporation vs. respondents. (ABI) for infringement of trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market... be affirmed. Metro Manila. The decision of the Director of Patents sustaining the opposition and denying the application must.. COURT OF APPEALS and SAN MIGUEL CORPORATION. 56390. G. vs. No." such as to confuse the public and unwary customers and puchasers. can not. Jao Oge. 705. we find that the dominant characteristic of oppositor's trademark "FREEMAN" has been imitated in applicant's trademark "FREEDOM. THE HON." as the sound of the two names is almost the same. In spite of the fact that the posture and coloring were slightly different. (Sapolin Co. but both labels exhibited a matron seated on a platform with a view of Manila Bay looking towards Mariveles at sunset. it must be remembered that the question of similarity or dissimilarity while it is a question of opinion. 103543 July 5.). vs. San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. be a ground for a dismissal of an opposition. therefore. With respect to the fifth assignment of error (first in petitioner's brief). Finding no error in the decision appealed from.) In the case of La Insular vs.R.: On September 15. innumerable exhibits were presented to show the similarity. In the case at bar. defendant's labels were declared to constitute an infringement of plaintiff's labels. We hold that the Director of Patents did not err in denying the motion for dismissal presented by the applicant upon the failure of the oppositor to submit witnesses to sustain his opposition. Civ.
putting up.00 plus costs to this suit. or in bottles or under labels which are calculated to deceive purchasers and consumers into the belief that the beer is the product of the plaintiff or which will enable others to substitute. The dispositive part of the decision reads as follows: In the light of the foregoing analysis and under the plain language of the applicable rule and principle on the matter. to recall all its products bearing the mark "Beer Pale Pilsen" from its retailers and deliver these as well as all labels. or any similar preparation.000.00) as moral damages and Half a Million Pesos (P5. Campos. sell or palm off the said beer of the defendant as and for the beer of the plaintiff-complainant. dismissing SMC's complaint because ABI "has not committed trademark infringement or unfair competition against" SMC (p.A. On September 30. and a new judgment entered in favor of the plaintiff and against the defendant as follows: (1) The defendant Asia Brewery Inc.) Upon a motion for reconsideration filed by ABI. Aldecoa Jr. as members) reversed the trial court. Bersamira.R. (p.000. 189. a decision was rendered by the trial Court. or any similar . (4) The defendant is further ordered to pay the plaintiff attorney's fees in the amount of P250. servants and employees are hereby permanently enjoined and restrained from manufacturing. Mendoza. presided over by Judge Jesus O. prints. the Court of Appeals (Sixth Division composed of Justice Jose C. advertising.On August 27. or supplying Beer Pale Pilsen. the above dispositive part of the decision. Rollo.000. putting up. 90. SMC appealed to the Court of Appeals (C. manufacture or beer in bottles and under labels substantially identical with or like the said bottles and labels of plaintiff San Miguel Corporation employed for that purpose. molds. packages.000. offering or announcing for sale. and Filemon H. selling. 1990.000. (2) The defendant Asia Brewery Inc. We find the defendant Asia Brewery Incorporated GUILTY of infringement of trademark and unfair competition. (3) The defendant is hereby ordered to pay plaintiff the sum of Two Million Pesos (P2. or supplying Beer Pale Pilsen.-G. selling.. its officers. Rollo). We find the defendant Asia Brewery Incorporated GUILTY of infringement of trademark and unfair competition. Jr.00) by way of exemplary damages.000. was modified by the separate opinions of the Special Sixth Division 1 so that it should read thus: In the light of the foregoing analysis and under the plain language of the applicable rule and principle on the matter. agents. and a new judgment entered in favor of the plaintiff and against the defendant as follows: (1) The defendant Asia Brewery Inc. wrappers. offering or announcing for sale. its officers. The decision of the trial court is hereby REVERSED. agents. 28104). receptacles and advertisements bearing the infringing mark and all plates.. is hereby ordered to render an accounting and pay the San Miguel Corporation double any and all the payments derived by defendant from operations of its business and the sale of goods bearing the mark "Beer Pale Pilsen" estimated at approximately Five Million Pesos (P5. CV No. advertising. and Justices Venancio D. The decision of the trial court is hereby REVERSED. chairman and ponente.00). 1991. signs. materials and other means of making the same to the Court authorized to execute this judgment for destruction. or substantially identical with or like the bottles and labels now employed by the defendant for that purpose. servants and employees are hereby permanently enjoined and restrained from manufacturing.000.
Manlapaz vs. 223 citing. is hereby ordered 2 to recall all its products bearing the mark Beer Pale Pilsen from its retailers and deliver these as well as all labels. The lone issue in this appeal is whether ABI infringes SMC's trademark: San Miguel Pale Pilsen with Rectangular Hops and Malt Design. and thereby commits unfair competition against the latter. wrappers. and the same are contrary to the admissions of both the appellant and the appellee. prints.00 plus costs of this suit. 166 SCRA 458 [citing . (2) When the inference of the Court of Appeals from its findings of fact is manifestly mistaken. 336. (8) When the facts set forth in the petition as well as in the petitioner's main and reply briefs are not disputed by the respondents. In due time. Court of Appeals. (4) The defendant is further ordered to pay the plaintiff attorney's fees in the amount of P250.00) by way of exemplary damages. 142 SCRA 593. there are exceptions to this general rule. absurd and impossible. Court of Appeals. 169 SCRA 220. vs.000. also Apex Investment and Financing Corp.000. and (9) When the findings of facts of the Court of Appeals are premised on the absence of evidence and are contradicted on record. (5) When the appellate court. or substantially identical with or like the bottles and labels now employed by the defendant for that purpose. materials and other means of making the same to the Court authorized to execute this judgment for destruction. in making its findings. sell or palm off the said beer of the defendant as and for the beer of the plaintiff-complainant.. CA. or in bottles or under labels which are calculated to deceive purchasers and consumers into the belief that the beer if the product of the plaintiff or which will enable others to substitute.00) as moral damages and Half a Million Pesos (P500. receptacles and advertisements bearing the infringing mark and all plates. 198 SCRA 333. Court of Appeals. the findings of the Court of Appeals upon factual questions are conclusive and ought not to be disturbed by us. Nut Industry Inc. Sacay vs. 156 SCRA 597. ABI appealed to this Court by a petition for certiorari under Rule 45 of the Rules of Court. (7) When the findings are without citation of specific evidence on which they are based. Casanayan vs. Sandiganbayan. (6) When the findings of said court are contrary to those of the trial court. Standard Brands Inc. Mendoza vs. 147 SCRA 238. surmises and conjectures.preparation. (3) The defendant is hereby ordered to pay plaintiff the sum of Two Million Pesos (P2. Court of Appeals. (2) The defendant Asia Brewery Inc. manufacture or beer in bottles and under labels substantially identical with or like the said bottles and labels of plaintiff San Miguel Corporation employed for that purpose. (3) Where there is grave abuse of discretion. Guita vs. v. However.000. It is a factual issue (Phil. signs. (Reynolds Philippine Corporation vs. (4) When the judgment is based on a misapprehension of facts.000. molds. 65 SCRA 575) and as a general rule. 139 SCRA 576. 609. IAC. packages. and they are: (1) When the conclusion is grounded entirely on speculation. went beyond the issues of the case.
227. trade names and service marks are protected against infringement or unauthorized use by another or others. Pat. (p.) The present case is one of the exceptions because there is no concurrence between the trial court and the Court of Appeals on the lone factual issue of whether ABI.) This definition implies that only registered trade marks. Below are the words "Pale Pilsen" written diagonally across the middle of the rectangular design. (Emphasis supplied. Rollo." and at the bottom "Net Contents: 320 Ml. copy. business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services. vs. Below "Pale Pilsen" is the statement . and Moran. prints. — Any person who shall use. 36 Phil. 174.. Manero vs. 102 SCRA 817. Trademarks and Technology Transfer Trademark Certificate of Registration No.) As described by the trial court in its decision (Page 177.) The registered trademark of SMC for its pale pilsen beer is: San Miguel Pale Pilsen With Rectangular Hops and Malt Design. 133 SCRA 88]. CA. wrappers. shall be liable to a civil action by the registrant for any or all of the remedies herein provided. actionable. copy or colorably imitate any such mark or trade-name and apply such reproduction. 56 SCRA 167. 166. Carolina Industries. or reproduce. 1986. At the top is a phrase written in small print "Reg. counterfeit. Infringement of trademark is a form of unfair competition (Clarke vs. Off. vs. . counterfeit. by manufacturing and selling its BEER PALE PILSEN in amber colored steinie bottles of 320 ml.. Phil. signs. or advertising of any goods." The "S" in "San" and the "M" of "Miguel." The dominant feature is the phrase "San Miguel" written horizontally at the upper portion. business or services.) Where findings of the Court of Appeals and trial court are contrary to each other. In between is a coat of arms and the phrase "Expertly Brewed. copy or colorable imitation of any registered mark or trade-name in connection with the sale. 36103. . or colorable imitation to labels. packages. The use of someone else's registered trademark.) Under any of these exceptions. if it is done "without the consent of the registrant. the Court has to review the evidence in order to arrive at the correct findings based on the record (Roman Catholic Bishop of Malolos. defines what constitutes infringement: Sec. 106). or identity of such business. 100. 129 SCRA 222. (Cruz vs. vs. trade name or service mark is unauthorized. hence. offering for sale.Tolentino vs. Manila Candy Co. Inc. De Jesus. counterfeit. Infringement. 22. Inc. ." (Ibid. a rectangular design [is] bordered by what appears to be minute grains arranged in rows of three in which there appear in each corner hop designs. 22 of Republic Act No. Sec. the kind that first appeared in the 1780s in England and used for printing German as distinguished from Roman and Italic. Inc. 420. CA. (Philippine Bureau of Patents. capacity with a white painted rectangular label has committed trademark infringement and unfair competition against SMC. what constitutes. the Supreme Court may scrutinize the evidence on record. any reproduction. Rollo): . CMS Stock Brokerage." "P" of "Pale" and "Pilsen" are written in Gothic letters with fine strokes of serifs. without the consent of the registrant. 97 SCRA 734. Jr. 191 SCRA 411. IAC. CA. otherwise known as the Trademark Law. receptacles or advertisements intended to be used upon or in connection with such goods. dated 23 Oct.
Emphasis supplied.. written in small prints. 177. The dominant feature is "Beer" written across the upper portion of the rectangular design. there is absolutely no similarity in the dominant features of both trademarks. 107 F. If the competing trademark contains the main or essential or dominant features of another. Honover Rubber Co. Standard Brands Inc. To the left is a hop design and to the right.) Does ABI's BEER PALE PILSEN label or "design" infringe upon SMC's SAN MIGUEL PALE PILSEN WITH RECTANGULAR MALT AND HOPS DESIGN? The answer is "No. The trial court perceptively observed that the word "BEER" does not appear in SMC's trademark. while relevant. written in white Gothic letters with elaborate serifs at the beginning and end of the letters "S" and "M" on an amber background across the upper portion of the rectangular design. vs. larger than any of the letters found in the SMC label. [C. and "Philippines" (third line). . . 2d 588. Munn & Co.. Director of Patents. vs. Ang San To." In Phil. is not conclusive. Independent Brewing Co. 214. reiterated in Lim Hoa vs. citing Eagle White Lead Co. the dominant feature of ABI's trademark is the name: BEER PALE PILSEN.. a rectangular design bordered by what appear to be buds of flowers with leaves. thus: It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy.) vs. "San Miguel Brewery" (second line). Hence. (p. vs. ABI's trademark. Similarity in size. On the other hand.. and confusion and deception is likely to result.. . Pflugh (CC) 180 Fed. with the word "Beer" written in large amber letters. just as the words "SAN MIGUEL" do not appear in ABI's trademark. 100 Phil. 275. the test was similarity or "resemblance between the two (trademarks) such as would be likely to cause the one mark to be mistaken for the other. Director of Patents. Duplication or imitation is not necessary. 191 F. . 579]. and "Philippines" (third line). The rule was formulated in Co Tiong Sa vs." Immediately below "Pale Pilsen" is the statement written in three lines "Especially brewed and bottled by" (first line). as described by the trial court. consists of: . Neilman Brewing Co. infringement takes place. 272. . (p. 489. 4 (1954). .) On the other hand. 216-217 (1956). form and color."And Bottled by" (first line. . (Ltd. Emphasis supplied.) In Forbes. 1. Rollo. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers. is the phrase "Net Contents 320 ml. 177. . "Asia Brewery Incorporated" (second line). ." What are the dominant features of the competing trademarks before us? There is hardly any dispute that the dominant feature of SMC's trademark is the name of the product: SAN MIGUEL PALE PILSEN. The phrase "Pale Pilsen" appears immediately below in smaller block letters. Rollo. [But] this is not such similitude as amounts to identity." Infringement is determined by the "test of dominancy" rather than by differences or variations in the details of one trademark and of another. Nut Industry Inc. 40 Phil. the court was more specific: the test is "similarity in the dominant features of the trademarks. nor it is necessary that the infringing label should suggest an effort to imitate. 95 Phil. 65 SCRA 575. . (Auburn Rubber Corporation vs.) (Emphasis supplied. 495.
" (Sec. One who pays only P4. its copyrighted slogan: "BEER NA BEER!" Whereas SMC's bottle carries no slogan. whereas the words "pale pilsen" on ABI's bottle are half the size and printed in slender block letters on a straight horizontalband. The BEER PALE PILSEN bottle cap is stamped with the name "BEER" in the center. non-registerable and not appropriable by any beer manufacturer. (3) The names of the manufacturers are prominently printed on their respective bottles. whereas the BEER PALE PILSEN bottle has no logo. No one who purchases BEER PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. page 1716. The BEER PALE PILSEN bottle has a fat. Unabridged. Philippines. 166. 4. [e] Republic Act No. subpar. as inserted by Sec. (2) The words "pale pilsen" on SMC's label are printed in bold and laced letters along a diagonal band. for "pale pilsen" are generic words descriptive of the color ("pale").A. which is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen in Czechoslovakia and became famous in the Middle Ages. SAN MIGUEL PALE PILSEN is "Bottled by the San Miguel Brewery. Springfield.25 per bottle) and SAN MIGUEL PALE PILSEN (currently at P7. Mass. 638) hence.25 for a bottle of beer cannot expect to receive San Miguel Pale Pilsen from the storekeeper or bartender. Philippines. of a type of beer ("pilsen"). [c] 1976." whereas BEER PALE PILSEN is "Especially brewed and bottled by Asia Brewery Incorporated. there is a substantial price difference between BEER PALE PILSEN (currently at P4. (Webster's Third New International Dictionary of the English Language." (4) On the back of ABI's bottle is printed in big. bold letters. spelling or appearance can BEER PALE PILSEN be said to be confusingly similar to SAN MIGUEL PALE PILSEN. under a row of flower buds and leaves.) "Pilsen" is a "primarily geographically descriptive word. bulging neck. (6) The SAN MIGUEL PALE PILSEN bottle cap is stamped with a coat of arms and the words "San Miguel Brewery Philippines" encircling the same. The fact that the words pale pilsen are part of ABI's trademark does not constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN. the following other dissimilarities in the trade dress or appearance of the competing products abound: (1) The SAN MIGUEL PALE PILSEN bottle has a slender tapered neck. (5) The back of the SAN MIGUEL PALE PILSEN bottle carries the SMC logo. 2 of R. (See Exhibit "8-a". No evidence whatsoever was presented by SMC proving otherwise. Besides the dissimilarity in their names. surrounded by the words "Asia Brewery Incorporated Philippines. The Trademark Law provides: . No. Edited by Philip Babcock Gove." (7) Finally.00 per bottle)..).: G & C Merriam Co.Neither in sound.
the Court believes it is quite unlikely that a customer of average intelligence would mistake a bottle of BEER PALE PILSEN for SAN MIGUEL PALE PILSEN. Unfair Competition and Trademarks. disproves SMC's charge that ABI dishonestly and fraudulently intends to palm off its BEER PALE PILSEN as SMC's product. inasmuch as all persons have an equal right to produce and vend similar articles. . Others may use the same or similar descriptive word in connection with their own wares.Sec. As to whether words employed fall within this prohibition." "cheddar cheese. Jur. vs.. but whether in themselves. as well as on the bottle cap. [2d] 598." (Emphasis supplied.)" (Emphasis supplied. vs. Dr. . 542-543. business or services from the goods. or of its composition. it was held that a dealer in shoes cannot register "Leather Shoes" as his trademark because that would be merely descriptive and it would be unjust to deprive other dealers in leather shoes of the right to use the same words with reference to their merchandise. This rule excluding descriptive terms has also been held to apply to trade-names. (Richmond Remedies Co. business or services of others shall have the right to register the same [on the principal register]. ." "corn flakes" and "cooking oil" may be appropriated by any single manufacturer of these food products. they are reasonably indicative and descriptive of the thing intended. . business or services of the applicant is merely descriptive or deceptively misdescriptive of them.) The circumstance that the manufacturer of BEER PALE PILSEN. S.A. they cannot be appropriated from general use and become the exclusive property of anyone. the right to the use of such language being common to all. (52 Am. . or qualities. . It will. they also have the right to describe them properly and to use any appropriate language or words for that purpose. but rather because others are equally entitled to its use. its qualities. 4. Director of Patents. cannot be appropriated and protected as a trademark to the exclusion of its use by others. be denied protection. characteristics. on the back of the bottle. and thus limit other persons in the use of language appropriate to the description of their manufactures. business or services of the applicant isprimarily geographically descriptive or deceptively misdescriptive of them. and not arbitrary.) .) The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are part of its registered trademark: SAN MIGUEL PALE PILSEN. No one may appropriate generic or descriptive words. unless it: xxx xxx xxx (e) Consists of a mark or trade-name which. . They belong to the public domain (Ong Ai Gui vs. . . . In view of the visible differences between the two products. properly descriptive of the article. (2 Callman. or when applied to or used in connection with the goods. not because it lacks distinctiveness. especially if the user is the first creator of the article. A descriptive word may be admittedly distinctive. however. 16 E. 869-870. .) . it is said that the true test is not whether they are exhaustively descriptive of the article designated. has printed its name all over the bottle of its beer product: on the label. for no other reason than that he was the first to use them in his registered trademark. 139 (1953). Asia Brewery Incorporated. 673. 94 Phil. If they are thus descriptive. any more than such descriptive words as "evaporated milk. 676 ): A word or a combination of words which is merely descriptive of an article of trade. ingredients or characteristics. The owner of trade-mark. and as they are commonly used by those who understand their meaning. provided they take proper steps to prevent the public being deceived. Director of Patents. and no person can appropriate to himself exclusively any word or expression." "tomato ketchup. trade-name or service-mark used to distinguish his goods. 96 Phil. pp. or is primarily merely a surname. when applied to or used in connection with the goods.. . 136. InMasso Hermanos. Miles Medical Co. .
) The Cerveza Especial and the Efes Pale Pilsen use the "steinie" bottle. or device. which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer. or the devices or words thereon.The universal test question is whether the public is likely to be deceived. business or services of another. 166. the shape . . the question to be determined is whether ABI is using a name or mark for its beer that has previously come to designate SMC's beer. In this case. . firstly. broadcast. or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer. 57-E. (See rollo. as amended. (Sec. (See Exhibits 57-D. (Shell Co. or whether ABI is passing off its BEER PALE PILSEN as SMC's SAN MIGUEL PALE PILSEN. page 55. .) The trial court found no infringement of SMC's bottle — The court agrees with defendant that there is no infringement of plaintiff's bottle. or his business. the following shall be deemed guilty of unfair competition: (a) Any person. Nothing less than conduct tending to pass off one man's goods or business as that of another will constitute unfair competition.) The use of ABI of the steinie bottle.) The law further enumerates the more common ways of committing unfair competition. and to witness Jose Antonio Garcia. or any acts calculated to produce the same result.. and without in any way limiting the scope of unfair competition. capacity and is also advertised in print. Ltd.. business or services. similar but not identical to the SAN MIGUEL PALE PILSEN bottle.The fact that BEER PALE PILSEN like SAN MIGUEL PALE PILSEN is bottled in amber-colored steinie bottles of 320 ml.. et al. does not necessarily constitute unfair competition. SMC did not invent but merely borrowed the steinie bottle from abroad and it claims neither patent nor trademark protection for that bottle shape and design. In particular. vs. 439. Secondly. it is not a San Miguel Corporation design but a design originally developed in the United States by the Glass Container Manufacturer's Institute and therefore lacks exclusivity. Actual or probable deception and confusion on the part of the customers by reason of defendant's practices must always appear. for those of another who has already established goodwill for his similar goods. and television media. is not unlawful. Ltd. or who employs any other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public. Unfair competition is the employment of deception or any other means contrary to good faith by which a person shall pass off the goods manufactured by him or in which he deals. thus: Sec. 29. or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose. or in any other feature of their appearance. As pointed out by ABI's counsel. . or (c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods. 120 Phil. because according to plaintiff's witness Deogracias Villadolid. Insular Petroleum Refining Co. Republic Act No. either as to the goods themselves or in the wrapping of the packages in which they are contained. of the Philippines. 29. . or services. it is a standard type of bottle called steinie. . (b) Any person who by any artifice. 434.
was never registered as a trademark. Exhibit "C" is not a registration of a beer bottle design required under Rep. Act 165 but the registration of the name and other marks of ownership stamped on containers as required by Rep. Act 623. Thirdly, the neck of defendant's bottle is much larger and has a distinct bulge in its uppermost part. (p. 186, Rollo.) The petitioner's contention that bottle size, shape and color may not be the exclusive property of any one beer manufacturer is well taken. SMC's being the first to use the steinie bottle does not give SMC a vested right to use it to the exclusion of everyone else. Being of functional or common use, and not the exclusive invention of any one, it is available to all who might need to use it within the industry. Nobody can acquire any exclusive right to market articles supplying simple human needs in containers or wrappers of the general form, size and character commonly and immediately used in marketing such articles (Dy Buncio vs. Tan Tiao Bok, 42 Phil. 190, 194-195.) . . . protection against imitation should be properly confined to nonfunctional features. Even if purely functional elements are slavishly copied, the resemblance will not support an action for unfair competition, and the first user cannot claim secondary meaning protection. Nor can the first user predicate his claim to protection on the argument that his business was established in reliance on any such unpatented nonfunctional feature, even "at large expenditure of money." (Callman Unfair Competition, Trademarks and Monopolies, Sec. 19.33 [4th Ed.].) (Petition for Review, p. 28.) ABI does not use SMC's steinie bottle. Neither did ABI copy it. ABI makes its own steinie bottle which has a fat bulging neck to differentiate it from SMC's bottle. The amber color is a functional feature of the beer bottle. As pointed out by ABI, all bottled beer produced in the Philippines is contained and sold in ambercolored bottles because amber is the most effective color in preventing transmission of light and provides the maximum protection to beer. As was ruled in California Crushed Fruit Corporation vs. Taylor B. and Candy Co., 38 F2d 885, a merchant cannot be enjoined from using a type or color of bottle where the same has the useful purpose of protecting the contents from the deleterious effects of light rays. Moreover, no one may have a monopoly of any color. Not only beer, but most medicines, whether in liquid or tablet form, are sold in amber-colored bottles. That the ABI bottle has a 320 ml. capacity is not due to a desire to imitate SMC's bottle because that bottle capacity is the standard prescribed under Metrication Circular No. 778, dated 4 December 1979, of the Department of Trade, Metric System Board. With regard to the white label of both beer bottles, ABI explained that it used the color white for its label because white presents the strongest contrast to the amber color of ABI's bottle; it is also the most economical to use on labels, and the easiest to "bake" in the furnace (p. 16, TSN of September 20, 1988). No one can have a monopoly of the color amber for bottles, nor of white for labels, nor of the rectangular shape which is the usual configuration of labels. Needless to say, the shape of the bottle and of the label is unimportant. What is all important is the name of the product written on the label of the bottle for that is how one beer may be distinguished form the others. In Dy Buncio v. Tan Tiao Bok, 42 Phil. 190, 196-197, where two competing tea products were both labelled as Formosan tea, both sold in 5-ounce packages made of ordinary wrapping paper of conventional color, both with labels containing designs drawn in green ink and Chinese characters written in red ink, one label showing a double-decked jar in the center, the other, a flower pot, this court found that the resemblances between the designs were not sufficient to mislead the ordinary intelligent buyer, hence, there was no unfair competition. The Court held: . . . . In order that there may be deception of the buying public in the sense necessary to constitute unfair competition, it is necessary to suppose a public accustomed to buy, and therefore to some extent familiar with, the goods in question. The test of fraudulent
simulation is to be found in the likelihood of the deception of persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The test is not found in the deception, or possibility of the deception, of the person who knows nothing about the design which has been counterfeited, and who must be indifferent as between that and the other. The simulation, in order to be objectionable, must be such as appears likely to mislead the ordinarily intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase. The main thrust of SMC's complaint if not infringement of its trademark, but unfair competition arising form the allegedly "confusing similarity" in the general appearance or trade dress of ABI's BEER PALE PILSEN beside SMC's SAN MIGUEL PALE PILSEN (p. 209, Rollo) SMC claims that the "trade dress" of BEER PALE PILSEN is "confusingly similar" to its SAN MIGUEL PALE PILSEN because both are bottled in 320 ml. steinie type, amber-colored bottles with white rectangular labels. However, when as in this case, the names of the competing products are clearly different and their respective sources are prominently printed on the label and on other parts of the bottle, mere similarity in the shape and size of the container and label, does not constitute unfair competition. The steinie bottle is a standard bottle for beer and is universally used. SMC did not invent it nor patent it. The fact that SMC's bottle is registered under R.A. No. 623 (as amended by RA 5700, An Act to Regulate the Use of Duly Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels and Other Similar Containers) simply prohibits manufacturers of other foodstuffs from the unauthorized use of SMC's bottles by refilling these with their products. It was not uncommon then for products such as patis (fish sauce) and toyo (soy sauce) to be sold in recycled SAN MIGUEL PALE PILSEN bottles. Registration of SMC's beer bottles did not give SMC a patent on the steinie or on bottles of similar size, shape or color. Most containers are standardized because they are usually made by the same manufacturer. Milk, whether in powdered or liquid form, is sold in uniform tin cans. The same can be said of the standard ketchup or vinegar bottle with its familiar elongated neck. Many other grocery items such as coffee, mayonnaise, pickles and peanut butter are sold in standard glass jars. The manufacturers of these foodstuffs have equal right to use these standards tins, bottles and jars for their products. Only their respective labels distinguish them from each other. Just as no milk producer may sue the others for unfair competition because they sell their milk in the same size and shape of milk can which he uses, neither may SMC claim unfair competition arising from the fact that ABI's BEER PALE PILSEN is sold, like SMC's SAN MIGUEL PALE PILSEN in amber steinie bottles. The record does not bear out SMC's apprehension that BEER PALE PILSEN is being passed off as SAN MIGUEL PALE PILSEN. This is unlikely to happen for consumers or buyers of beer generally order their beer by brand. As pointed out by ABI's counsel, in supermarkets and tiendas, beer is ordered by brand, and the customer surrenders his empty replacement bottles or pays a deposit to guarantee the return of the empties. If his empties are SAN MIGUEL PALE PILSEN, he will get SAN MIGUEL PALE PILSEN as replacement. In sari-sari stores, beer is also ordered from the tindera by brand. The same is true in restaurants, pubs and beer gardens — beer is ordered from the waiters by brand. (Op. cit. page 50.) Considering further that SAN MIGUEL PALE PILSEN has virtually monopolized the domestic beer market for the past hundred years, those who have been drinking no other beer but SAN MIGUEL PALE PILSEN these many years certainly know their beer too well to be deceived by a newcomer in the market. If they gravitate to ABI's cheaper beer, it will not be because they are confused or deceived, but because they find the competing product to their taste. Our decision in this case will not diminish our ruling in "Del Monte Corporation vs. Court of Appeals and Sunshine Sauce Manufacturing Industries," 181 SCRA 410, 419, 3 that:
. . . to determine whether a trademark has been infringed, we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. That ruling may not apply to all kinds of products. The Court itself cautioned that in resolving cases of infringement and unfair competition, the courts should "take into consideration several factors which would affect its conclusion, to wit: the age, training and education of the usual purchaser, the nature and cost of the article, whether the article is bought for immediate consumption and also the conditions under which it is usually purchased" (181 SCRA 410, 418-419). The Del Monte case involved catsup, a common household item which is bought off the store shelves by housewives and house help who, if they are illiterate and cannot identify the product by name or brand, would very likely identify it by mere recollection of its appearance. Since the competitor, Sunshine Sauce Mfg. Industries, not only used recycled Del Monte bottles for its catsup (despite the warning embossed on the bottles: "Del Monte Corporation. Not to be refilled.") but also used labels which were "a colorable imitation" of Del Monte's label, we held that there was infringement of Del Monte's trademark and unfair competition by Sunshine. Our ruling in Del Monte would not apply to beer which is not usually picked from a store shelf but ordered by brand by the beer drinker himself from the storekeeper or waiter in a pub or restaurant. Moreover, SMC's brand or trademark: "SAN MIGUEL PALE PILSEN" is not infringed by ABI's mark: "BEER NA BEER" or "BEER PALE PILSEN." ABI makes its own bottle with a bulging neck to differentiate it from SMC's bottle, and prints ABI's name in three (3) places on said bottle (front, back and bottle cap) to prove that it has no intention to pass of its "BEER" as "SAN MIGUEL." There is no confusing similarity between the competing beers for the name of one is "SAN MIGUEL" while the competitor is plain "BEER" and the points of dissimilarity between the two outnumber their points of similarity. Petitioner ABI has neither infringed SMC's trademark nor committed unfair competition with the latter's SAN MIGUEL PALE PILSEN product. While its BEER PALE PILSEN admittedly competes with the latter in the open market, that competition is neither unfair nor fraudulent. Hence, we must deny SMC's prayer to suppress it. WHEREFORE, finding the petition for review meritorious, the same is hereby granted. The decision and resolution of the Court of Appeals in CA-G.R. CV No. 28104 are hereby set aside and that of the trial court is REINSTATED and AFFIRMED. Costs against the private respondent. SO ORDERED. G.R. No. 166115 February 2, 2007
McDONALD’S CORPORATION, Petitioner, vs. MACJOY FASTFOOD CORPORATION, Respondent. DECISION GARCIA, J.:
sandwiches. herein petitioner McDonald’s Corporation seeks the reversal and setting aside of the following issuances of the Court of Appeals (CA) in CA-G.e. 57247. In a decision4 dated December 28. Respondent denied the aforementioned allegations of the petitioner and averred that it has used the mark "MACJOY" for the past many years in good faith and has spent considerable sums of money for said mark’s extensive promotion in tri-media. fries. SP No." and "Mc. a corporation duly organized and existing under the laws of the State of Delaware. Petitioner McDonald’s Corporation. Trademarks and Technology Transfer (BPTT). 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. sustained the petitioner’s opposition and rejected the respondent’s application." and the prefixes "Mac/Mc" in both the "MACJOY" and the "MCDONALDS" marks lead to the conclusion that there is confusing similarity between them especially since both are used on almost the same products falling under classes 29 and 30 of the International Classification of Goods. burgers. the IPO." McChicken." "BigMac. the petitioner alleged that the respondent’s use and adoption in bad faith of the "MACJOY & DEVICE" mark would falsely tend to suggest a connection or affiliation with petitioner’s restaurant services and food products. sandwiches. halo-halo and steaks under classes 29 and 30 of the International Classification of Goods. and that its use of said mark would not confuse affiliation with the petitioner’s restaurant services and food products because of the differences in the design and detail of the two (2) marks. As culled from the record. an application. Likewise. spaghetti. halo-halo." "MacFries. the trademark applied for would confuse or deceive purchasers into believing that the goods originate from the same source or origin. Resolution dated 12 November 20042 denying the petitioner’s motion for reconsideration. tacos. i. and steaks is. ratiocinating that the predominance of the letter "M. 75274 of the herein RespondentApplicant is REJECTED. . USA. thereat identified as Application Serial No. especially in Cebu City where it has been doing business long before the petitioner opened its outlet thereat sometime in 1992. filed with the then Bureau of Patents. food and ingredients of food. Application Serial No.R. 3861." "McDo. otherwise known as the Golden Arches or "M" design." "McSpaghetti. now the Intellectual Property Office (IPO). Financial and Human Resources Development Bureau for appropriate action in accordance with this Decision. the Opposition to the registration of the mark MACJOY & DEVICE for use in fried chicken and chicken barbecue. Decision dated 29 July 20041 reversing an earlier decision of the Intellectual Property Office (IPO) which rejected herein respondent MacJoy FastFood Corporation’s application for registration of the trademark "MACJOY & DEVICE". Let the filewrapper of MACJOY subject matter of this case be sent to the Administrative. tacos. chicken barbeque. as it is hereby. to wit: 1. 75274. filed a verified Notice of Opposition3 against the respondent’s application claiming that the trademark "MACJOY & DEVICE" so resembles its corporate logo. fries. Accordingly." (hereinafter collectively known as the MCDONALD’S marks) such that when used on identical or related goods. and 2.In this petition for review on certiorari under Rule 45 of the Rules of Court. respondent MacJoy Fastfood Corporation. for the registration of the trademark "MACJOY & DEVICE" for fried chicken. and its marks "McDonalds." "McSnack. viz: WHEREFORE.. palabok. a domestic corporation engaged in the sale of fast food products in Cebu City. the facts are as follows: On 14 March 1991. thus. spaghetti. The application and the opposition thereto was docketed as Inter Partes Case No. SUSTAINED. palabok. 1998. burgers. with a copy to be furnished the Bureau of Trademarks for information and to update its record.
in its similarly challenged Resolution 8 of November 12. In time. the respondent moved for a reconsideration but the IPO denied the motion in its Order5 of January 14. 57247. 75274. The word "MacJoy" is written in round script while the word "McDonald’s" is written in single stroke gothic. SP No. Finding no confusing similarity between the marks "MACJOY" and "MCDONALD’S." (Words in brackets supplied. brilliant and noticeable color scheme as that of its wrappers. The façade of the respective stores of the parties are entirely different. the respondent went to the CA via a Petition for Review with prayer for Preliminary Injunction6 under Rule 43 of the Rules of Court. in view of the foregoing." and "Mac" appearing in both MCDONALD’S and MACJOY marks. judgment is hereby rendered by us REVERSING and SETTING ASIDE the Decision of the IPO dated 28 December 1998 and its Order dated 14 January 2000 and ORDERING the IPO to give due course to petitioner’s Application Serial No. while [petitioner’s] restaurant is in yellow and red colors. while the word "McDonald’s" comes with an arches "M" in gold colors. The IPO brushed aside and ignored the following irrefutable facts and circumstances showing differences between the marks of MACJOY and MCDONALD’S. as it further held: Whether a mark or label of a competitor resembles another is to be determined by an inspection of the points of difference and resemblance as a whole. letters and marks in the trademark sought to be registered. 2004. reversed and set aside the appealed IPO decision and order. the CA denied the motion. as averred by the petitioner [now respondent]: 1. containers. Explains the CA in its decision: xxx. SO ORDERED. However.) Petitioner promptly filed a motion for reconsideration. The word "MacJoy" comes with the picture of a chicken head with cap and bowtie and wings sprouting on both sides. show that [respondent’s] restaurant is set also in the same bold. The word "MacJoy" is set in deep pink and white color scheme while "McDonald’s" is written in red. 2. it is clear that the IPO brushed aside and rendered useless the glaring and drastic differences and variations in style of the two trademarks and even decreed that these pronounced differences are "miniscule" and considered them to have been "overshadowed by the appearance of the predominant features" such as "M. etc.SO ORDERED. They are. yellow and black color combination. Instead of taking into account these differences." the CA. 3. The articles and trademarks employed and used by the [respondent] Macjoy Fastfood Corporation are so different and distinct as to preclude any probability or likelihood of confusion or deception on the part of the public to . cups.R. the IPO unreasonably shrugged off these differences in the device. 2004. 2000. Therefrom. 4. whereat its appellate recourse was docketed as CA-G. Exhibits 1 and 1-A. thus: WHEREFORE." "Mc. and not merely the points of resemblance. and absolutely without any picture of a chicken.. in its herein assailed Decision7 dated July 29. and with the mascot of "Ronald McDonald" being prominently displayed therein.
the afore-stated authority given to Lehr necessarily includes the authority to execute and sign the mandatorily required certification of nonforum shopping to support the instant petition for review which stemmed from the "opposition proceedings" lodged by the petitioner before the IPO. because the person who signed the certification against forum shopping in behalf of the petitioner was not specifically authorized to do so. and to do such other acts and things and to execute such other documents as may be necessary and appropriate to effect and carry out the intent of this resolution. was specifically authorized to sign on behalf of the petitioner the Verification and Certification 10 attached to the petition." IT FAILED TO CORRECTLY APPLY THE DOMINANCY TEST WHICH HAS BEEN CONSISTENTLY APPLIED BY THIS HONORABLE COURT IN DETERMINING THE EXISTENCE OF CONFUSING SIMILARITY BETWEEN COMPETING MARKS.11 Sheila Lehr was one of those authorized and empowered "to execute and deliver for and on behalf of [the petitioner] all documents as may be required in connection with x x x the protection and maintenance of any foreign patents. B. The McDonald’s Marks belong to a well-known and established "family of marks" distinguished by the use of the prefix "Mc" and/or "Mac" and the corporate "M" logo design. In its Comment. x x x documents required to institute opposition or cancellation proceedings against conflicting trademarks. as embodied in the Certificate of the Assistant Secretary dated December 21. THE COURT OF APPEALS ERRED IN RULING THAT THE DECISION OF THE IPO DATED 28 DECEMBER 1998 AND ITS ORDER DATED 14 JANUARY 2000 WERE NOT BASED ON SUBSTANTIAL EVIDENCE. Considering that the person who executed and signed . the marks are confusingly similar under the Dominancy Test. II. A. As such. trade-names. spelling.) Hence. because the petition does not present a reviewable issue as what it challenges are the factual findings of the CA. and copyrights owned now or hereafter by [the petitioner]. Petitioner’s McDonald’s Marks are well-known and world-famous marks which must be protected under the Paris Convention. Contrary to respondent’s claim. design. size. the respondent insists that the CA committed no reversible error in finding no confusing similarity between the trademarks in question. The petition is impressed with merit. 2004. concept and appearance to the McDonald’s marks.the injury of the trade or business of the [petitioner] McDonald’s Corporation. (Words in brackets supplied. As can be gleaned from the petitioner’s Board of Director’s Resolution dated December 5. The prefix "Mc" and/or "Mac" is the dominant portion of both Petitioner’s McDonald’s Marks and the Respondent’s "Macjoy & Device" mark. The "Macjoy & Device" mark is dissimilar in color. 2002. the petitioner’s Managing Counsel. and second." Indeed. THE COURT OF APPEALS ERRED IN RULING THAT RESPONDENT’S "MACJOY & DEVICE" MARK IS NOT CONFUSINGLY SIMILAR TO PETITIONER’S "McDONALD’S MARKS. C. trademarks.9 the respondent asserts that the petition should be dismissed outright for being procedurally defective: first. but not limited to. the petitioner’s present recourse on the following grounds: I. Sheila Lehr. including. In any event.
The old Trademark Law.17 Under the latter test. business or services of the applicant. the CA. or device. 166. this Court is not the proper venue to consider factual issues as it is not a trier of facts. conflicting. True. the IPO should have taken into consideration the entirety of the two marks instead of simply fixing its gaze on the single letter "M" or on the combinations "Mc" or "Mac". sold. this Court will review them. this being one of the recognized exceptions to Section 1. in fact actually applied the holistic test. The owner of the trade-mark. save for the letters "M" and "c". tainted with grave abuse of discretion.A. "Mc" and/or "Mac" in both the marks.15 The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. name. or dealt in by others. while seemingly applying the dominancy test. business or services of others shall have the right to register the same on the principal register. emblem. The appellate court ruled in this wise: Applying the Dominancy test to the present case.) No. the IPO used the dominancy test in concluding that there was confusing similarity between the two (2) trademarks in question as it took note of the appearance of the predominant features "M". trade-name or service-mark used to distinguish his goods. when the factual findings of the appellate court are mistaken. no other similarity exists in the subject marks.14 Under the same law. suffice it to say that the contradictory findings of the IPO and the CA constrain us to give due course to the petition. the holistic test requires the court to consider the entirety of the marks as applied to the products. i. 16 In contrast. Registration of trademarks. the petition. tradenames and service-marks which shall be known as the principal register.18 1awphi1. when applied to or used in connection with the goods. Rule 45 of the Rules of Court. defines a "trademark" as any distinctive word. food and ingredients of food. paragraph (d) of which is pertinent to this case.12 Nevertheless. absurd. trade-names and service-marks on the principal register. the registration of a trademark is subject to the provisions of Section 4 thereof. . including the labels and packaging. therefore. symbol. or any combination thereof adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured. Republic Act (R. as to be likely.e. – There is hereby established a register of trademarks.. in determining confusing similarity. to cause confusion or mistake or to deceive purchasers. is not procedurally defective. or contrary to the findings culled by the court of origin. In reversing the conclusion reached by the IPO.net Here. In determining similarity and likelihood of confusion.the certification against forum shopping has the authority to do so. sign. speculative. as amended. the issue here is whether there is a confusing similarity between the MCDONALD’S marks of the petitioner and the respondent’s "MACJOY & DEVICE" trademark when applied to Classes 29 and 30 of the International Classification of Goods. jurisprudence has developed two tests. conjectural. a comparison of the words is not the only determinant factor. the dominancy test and the holistic test.13 as here. xxx xxx xxx Essentially. unless it: xxx xxx xxx (d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned. As regards the respondent’s argument that the petition raises only questions of fact which are not proper in a petition for review. The provision reads: Section 4. A mere cursory look of the subject marks will reveal that.
no set rules can be deduced because each case must be decided on its merits. Under the dominancy test. Taking into account such paramount factors as color. LC Big Mak Burger. giving little weight to factors like prices. precedent must be studied in the light of the facts of the particular case. the prefix "Mc" will appear to be the only similarity in the two completely different marks. In trademark cases. courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark. designs. in McDonalds Corp. disregarding minor differences. Moreover. applying the dominancy test.23 a case where the trademark "Big Mak" was found to be confusingly similar with the "Big Mac" mark of the herein the petitioner. (Words in brackets supplied. even more than in any other litigation. the two marks reflect a distinct and disparate visual impression that negates any possible confusing similarity in the mind of the buying public. quality. has relied on the dominancy test rather than the holistic test. . In recent cases with a similar factual milieu as here. xxx.20 That is the reason why in trademark cases. and it is the prefix "Mc" that would thus appear as the miniscule detail. the Court explicitly held: This Court. jurisprudential precedents should be applied only to a case if they are specifically in point.. v. sales outlets and market segments. The totality or holistic test only relies on visual comparisons 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. The dominancy test considers the dominant features in the competing marks in determining whether they are confusingly similar.21 While we agree with the CA’s detailed enumeration of differences between the two (2) competing trademarks herein involved.22 Notably. Applying the dominancy test to the instant case. particularly in ascertaining whether one trademark is confusingly similar to another. the Court finds that herein petitioner’s "MCDONALD’S" and respondent’s "MACJOY" marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks.A. we believe that the holistic test is not the one applicable in this case. Inc. Courts will consider more the aural and visual impressions created by the marks in the public mind. the Court has consistently used and applied the dominancy test in determining confusing similarity or likelihood of confusion between competing trademarks. spelling. sound. concluded that the use by the respondent therein of the word "MASTER" for its coffee product "FLAVOR MASTER" was likely to cause confusion with therein petitioner’s coffee products’ "MASTER ROAST" and "MASTER BLEND" and further ruled: xxx. the dominancy test being the one more suitable. S. connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the marketplace. v. concept. CA24 the Court. 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. sizes and audio and visual effects. We agree.We agree with the [respondent] that it is entirely unwarranted for the IPO to consider the prefix "Mac" as the predominant feature and the rest of the designs in [respondent’s] mark as details. 19 In such cases. When pitted against each other. in Societe Des Produits Nestle.) Petitioner now vigorously points out that the dominancy test should be the one applied in this case. aural.
Even non-regular customers of their fastfood restaurants would readily notice the predominance of the "M" design. 166. capitalized and stylized manner.e. the United States. as between the parties. both trademarks are used in the sale of fastfood products. it is the prefix "Mc. with the predominance of the letter "M. "McDonald’s" in 04 October. the corporate logo which is the "M" or the golden arches design and the "McDonald’s" with the "M" or golden arches design both in 30 June 197730 . Thus." "MacFries. i. 25 For sure.. the petitioner’s trademark registration for the MCDONALD’S marks in the Philippines covers goods which are similar if not identical to those covered by the respondent’s application. 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. the inevitable conclusion is there is confusing similarity between the trademarks Mc Donald’s marks and "MACJOY AND DEVICE" especially considering the fact that both marks are being used on almost the same products falling under Classes 29 and 30 of the International Classification of Goods i. These minuscule variations are overshadowed by the appearance of the predominant features mentioned hereinabove. fried chicken. The differences and variations in styles as the device depicting a head of chicken with cap and bowtie and wings sprouting on both sides of the chicken head. spaghetti. Thus. the predominant features such as the "M. the resulting issue to be resolved is who.A." "McDo." which visually and aurally catches the attention of the consuming public. the petitioner was able to register its MCDONALD’S marks successively. once registered.To begin with. or under the sponsorship of the other is not far-fetched.e. 31 . chicken barbeque. not only the mark’s validity but also the registrant’s ownership thereof is prima facie presumed. are adherent-members." "Mc. both marks use the corporate "M" design logo and the prefixes "Mc" and/or "Mac" as dominant features." an abbreviation of "Mac. the word "MACJOY" attracts attention the same way as did "McDonalds. the respondent’s trademark application for the "MACJOY & DEVICE" trademark covers goods under Classes 29 and 30 of the International Classification of Goods. as well as the provision regarding the protection of industrial property of foreign nationals in this country as embodied in the Paris Convention 28 under which the Philippines and the petitioner’s domicile. Food and ingredients of food." "Big Mac" and the rest of the MCDONALD’S marks which all use the prefixes Mc and/or Mac.26 Pursuant to Section 3727 of R. Likewise. in an arch-like. Besides and most importantly.e." and "Mac" appearing in both McDonald’s marks and the MACJOY & DEVICE" easily attract the attention of would-be customers." and prefixes "Mac/Mc" found in both marks." in contrast to the arch-like "M" and the one-styled gothic letters in McDonald’s marks are of no moment. Such that the common awareness or perception of customers that the trademarks McDonalds mark and MACJOY & DEVICE are one and the same. and so on and so forth. has the rightful claim of ownership over the said marks. A mark is valid if it is distinctive and hence not barred from registration under the Trademark Law. Verily. etc. fries. No. as amended. the heart-shaped "M. burgers." and the stylistic letters in "MACJOY & DEVICE." "McSpaghetti. we concur with the IPO’s findings that: In the case at bar. namely. However. 197129 . We rule for the petitioner. Indisputably. With the existence of confusing similarity between the subject trademarks. or an affiliate. "Mc/Mac" prefixes shown in both marks.
it is not disputed that the respondent’s application for registration of its trademark "MACJOY & DEVICE" was filed only on March 14. are REVERSED and SET ASIDE and the Decision of the Intellectual Property Office in Inter Partes Case No. v. is undoubtedly beyond question. allegedly the niece of Respondent’s president. For the requirement of "actual use in commerce x x x in the Philippines" before one may register a trademark. As stated earlier. city or barangay. Even assuming that the word "MacJoy" was chosen as a term of endearment. is downright unmeritorious. as well as to supposedly bring good luck to Respondent’s business. its president had to choose and adopt a mark with the prefix "Mac" as the dominant feature thereof. but also to protect an already used and registered trademark and an established goodwill. Scarlett Yu Carcell. the validity of the mark is prima facie presumed. Respondent failed to present evidence to support the foregoing claim which. this not only to avoid confusion on the part of the public. it chose the word "MACJOY. it is clear that the petitioner has duly established its ownership of the mark/s." 34 By reason of the respondent’s implausible and insufficient explanation as to how and why out of the many choices of words it could have used for its trade-name and/or trademark. which. SP NO.35 citing Chuanchow Soy & Canning Co. the IPO was correct in rejecting and denying the respondent’s application for registration of the trademark "MACJOY & DEVICE. the application should be rejected and dismissed outright.On the other hand. 1987 at Cebu City while the first McDonald’s outlet of the petitioner thereat was opened only in 1992. Thus. WHEREFORE. No pronouncement as to costs. the respondent failed to overcome such presumption. one cannot help but wonder why out of all the possible letters or combinations of letters available to Respondent. v. Respondent’s contention that it was the first user of the mark in the Philippines having used "MACJOY & DEVICE" on its restaurant business and food products since December. A more plausible explanation perhaps is that the niece of Respondent’s president was fond of the food products and services of the Respondent. Secondly. Accordingly. trade-name and service mark under the Trademark Law33 pertains to the territorial jurisdiction of the Philippines and is not only confined to a certain region. is a mere self-serving assertion. We agree with the observations of the petitioner regarding the respondent’s explanation that the word "MACJOY" is based on the name of its president’s niece. 57247. the instant petition is GRANTED. from the evidence on record. once a trademark has been registered." As this Court ruled in Faberge Inc. 1991 albeit the date of first use in the Philippines was December 7. 1987. fondness and affection for a certain Scarlett Yu Carcel." the only logical conclusion deducible therefrom is that the respondent would want to ride high on the established reputation and goodwill of the MCDONALD’s marks. at best. Likewise wanting in merit is the respondent’s claim that the petitioner cannot acquire ownership of the word "Mac" because it is a personal name which may not be monopolized as a trademark as against others of the same name or surname.32 Hence. even without any opposition on the part of the owner and user of a previously registered label or trademark. it cannot be denied that there is absolutely no connection between the name "Scarlett Yu Carcel" and "MacJoy" to merit the coinage of the latter word. province. In this case. as applied to petitioner’s restaurant business and food products. Dir. In the words of the petitioner: First of all. IAC. . but that is beside the point. 3861 is REINSTATED.R. of Patents and Villapanta: 36 When one applies for the registration of a trademark or label which is almost the same or very closely resembles one already used and registered by another. the assailed Decision and Resolution of the Court of Appeals in CA-G.
no other manufacturer of or dealer in candy in the Philippine Islands has used such representation in connection with the manufacture and sale of candy in any form. A. defendant-appellee. Cohn and Fisher for appellee. That since July 31. and for a considerable time before it. and that until the wrongful and unlawful acts of the defendant hereinafter specified. for individual pieces of candy. That on the 10th day of November. III. That ever since the year 1905.SO ORDERED. That the defendant is a corporation organized under the laws of the Philippine Islands. L-10487 January 23. Williams for appellant. R. IV. the plaintiff caused to be duly filed and registered in the division of archives. vs. D. said trademark. MANILA CANDY CO. V. VI. plaintiff has distributed in connection with the manufacture and sale of his candy many hundreds of the cards of which Exhibit C hereto attached and made a part hereof is a sample. "VI. patents. the plaintiff has used as a wrapper. 1911. plaintiff-appellant. II. J. . the plaintiff has used as a trade-mark to designate his various candy products the representation of a rooster. the label containing said trade-mark has been used extensively by the plaintiff upon all packages containing the candy of plaintiff. That ever since said registration. Gilbert. That the plaintiff for twelve years last past has been and still engaged in the manufacture of a large line of confectionery products including candy of various and numerous kinds in the said city of Manila. with principal office and residence in the city of Manila. 1911. G. as shown in Exhibit A hereto attached and made a part of this complaint. paper bearing said rooster trade-mark in substantially the form shown on Exhibit B hereto attached and made a part hereof. (LTD. CARSON. No. That from the year 1905.).: The complaint filed in this action (omitting the exhibits) is as follows: Plaintiffs states: I. copyrights and trade-marks for the Philippine Islands. 1917 M.R. CLARKE.
and the limited use of those that do exist. a copy of which accompanies this complaint as Exhibit J. plaintiff has used for various kinds of his candy. is a copy. display. and to the consumers of candy as the rooster or Manoc brand. of which Exhibit E hereto attached and made a part hereof. the date of incorporation of the defendant company. That on January 12. 1912. as shown by Exhibits F and G hereto attached. That notwithstanding the fact that said directors were well aware of the use of said trademark by plaintiff. and that no other manufacturer of or dealer in candy in these Islands except the plaintiff has ever used such mark in connection with the manufacture or sale of candy. 1912. or chickens. and advertising of said mark in the manner above indicated. the defendant company was organized as shown by a copy of the Articles of Incorporation hereto attached and made a part of this complaint. That on the 5th day of June. XV. a complaint of which Exhibit I hereto attached and made a part of this complaint. That notwithstanding said criminal prosecution. That besides the use. A. That a various times prior to January 12. X. That since August. XVII. display and advertising of said rooster as the trade-mark for plaintiff's candies. and notwithstanding the warning to the defendant company contained in said judgment. XIV. That the word Manoc is the generic term for chicken in all the principal native dialects of these Islands. presiding in Sala I of this court. S. said candies have for several years last past been known and are now known to the trade in these Islands. VIII. plaintiff has used as an advertising poster upon shipping cases and in public places generally throughout the Islands many hundreds of the labels of which Exhibit D hereto attached and made a part hereof is a simple. is a simple. the said corporation defendant has since the rendition of said judgment continued to sell and dispose of its candy products under the said label Exhibit H as rooster orManoc candy and that retail dealers of defendant's candy are also selling and disposing of said candy asManoc candy. as well as long prior thereto. XII. XI. there was filed against the said two directors of the defendant company. That in consequence of such use. and after trial thereon before the Hon. paper boxes. 1912. XIII. in connection with the manufacture and sale of the various candy products of the defendant company. 1912. will naturally and inevitably become known to all persons who speak and transact business . were aware of the use by plaintiff of the said rooster or Manoc as a trade-mark in connection with the manufacture and sale of plaintiff's candy. 1911. on a label. any representation of a chicken. XVI. began the use of the label Exhibit H which accompanies. IX. Crossfield. were acquitted in the manner and form shown by the court's decision. used paper mache roosters of large size. That the said defendants pleaded not guilty to said complaint. and within the exhibition grounds of said festivals. plaintiff advertised his candy products extensively in the local papers. the said defendant corporation through its said directors. both wholesale and retail. carried about said grounds during the exhibition with the words Clarke's candies written upon said roosters. shortly after the organization of the defendant corporation. That since January. by the prosecuting attorney of the city of Manila.VII. plaintiff has during public festivals held in the city of Manila for several years past. and that two of the directors of said defendant company are ex-employees of the plaintiff. and that because of the limited number of descriptive adjectives in each of said dialects.
it be ordered: (a) That a temporary injunction be issued against the defendant company. its officers. and this plaintiff has been and is being defrauded thereby to his great damage. has given and is giving said goods the general appearance of the goods of this plaintiff in such a way as likely to influence purchasers to believe that the goods offered by the defendant are those of the plaintiff. its officers." Counsel for the defendant corporation lay some stress upon their contention that "the exact nature of the action is impossible to define. 1912. plaintiff relied in part on his allegations of a technical infringement of his trade-mark. as he alleged. agents. sell or consume candy in the Philippines speak one or more of such native dialects. restraining them and each of them from any further use of the said label Exhibit H in the sale or other disposition of candy by defendant. and is now influencing purchasers. the defendant "in selling his goods. and judgment entered in favor of the defendant. (c) That judgment be entered against the defendant company. and that judgment be entered in favor of the plaintiff and against defendant for double the amount thereof.. Wherefore. pp. (b) That after due hearing herein the defendant corporation be directed to render under oath of its proper officer a true and complete account of profits upon all sales and other dispositions of its candy products under the said label Exhibit H. until further order in this case. plaintiff asks this honorable court that. To this complaint the defendant company interposed a general denial and in due course the case was heard in the Court of First Instance of Manila. 2-7) embraces both causes of action. although they are essentially different and distinct. That the said defendant corporation. and that such appearance has so influence. MANILA. and that the public have been and are being deceived. agents. has given and is giving said goods the general appearance of the goods of this plaintiff in such a way as is likely to influence purchasers to believe that the goods offered by the defendant are those of the plaintiff. or to restrain unfair competition. and employees perpetually enjoining them from using the said label Exhibit H or any other like imitation of plaintiff's said mark. and (d) That the court grant to plaintiff any other remedy that may be proper under the law. in that. and employees. upon filing and approval of bond herein. together with the costs herein. it is either to restrain the alleged infringement of a trade-mark. that the great majority of persons who buy." and this "for the purpose of deceiving the public and defrauding the plaintiff of his legitimate trade. and the case is now before us on his bill of exceptions. XVIII. July 11. and in part upon his allegations of unfair competition. The complaint of plaintiff (bill of ex." .in any of said dialects as chicken or Manoc brand. From this judgment plaintiff appealed." and that "the fact that appellant himself is wholly unable to determine whether his alleged case is one of infringement or of unfair competition demonstrates quite conclusively that it is neither. It will be seen that in support of his prayer for relief. in selling its goods. That such imitation of plaintiff's mark has been done by the defendant for the purpose of deceiving the public and defrauding the plaintiff of his legitimate trade. through the use of said label Exhibit H. XIX.
S. An examination of Exhibits A. and thus secure the relief prayed for. 485).. C.. plaintiff may set forth in his complaint as many distinct causes of action as he may deem proper. But what was said there must not be understood as denying the right of a plaintiff to allege as many distinct causes of action as he may deem proper on support of his prayer for relief. Alhambra Cigar and Cigarette Manufacturing Co. "if the complaint contains more than one cause of action. in truth. a form of unfair competition.We are of opinion. the defendant corporation has given and is giving its goods the general appearance of the goods of the plaintiff. which prescribes that. either as a trade-mark. and G. Rep. in fact. Wolf Brothers and Co. the representation of a rooster. E. The law. Under the code system of pleadings in force in this jurisdiction. There is no substantial dispute as the various allegations of the foregoing complaint. 240 U. and that in thus imitating the goods of the plaintiff the purpose and intention of the defendant corporation has been and is to deceive the public and defraud the plaintiff of his legitimate trade. and in such a case he may desire to offer additional evidence to support his contention that. or wherein the complainant may be satisfied that he can establish his right to relief under one or the other theory. that in making use of the trade-mark. the evidence is sufficient to sustain a charge of unfair competition. except perhaps of Exhibit A. which were made a part of the above-cited complaint. is not seriously disputed. It was said in the opinion in that case that a clear distinction must be drawn under our statute between actions for infringement and actions for unfair competition. that the defendant corporation has sold and continues to sell its candies as Manoc candy. may not allege in support of his prayer for relief facts which he believes will establish his claim that there has been either an infringement or unfair competition. vs. each distinct cause of action must be set forth in a separate paragraph containing all the facts constituting the particular cause of action. (Cf. except as to plaintiff's contentions that his candies have become known to the wholesale and retail trade as Manoc brand candies. which. however.. and as a prominent feature of all his advertising matter. (33 Phil. that under the terms of Act No. in cases of this kind. by the use of misleading emblems or designs upon the goods of the defendant. whichever theory the court is of opinion is sustained by the proof adduced at the trial. or for the purpose of dressing his goods in imitation of those manufactured by the plaintiff. 666. Plaintiff's case rests wholly upon his claim that by long-continued use upon the wrappers and containers in which his goods are packed. with a small circular insert. 251. containing the figure of the rooster as shown in the other exhibits. taken together with the evidence of record conclusively establish this claim. The original of this exhibit was registered by the defendant has made any improper use of this rural scene taken as a whole. Exhibit H. D. if in the opinion of the court a technical infringement has not been established. he has lawfully adopted and appropriated as a trade-mark. the only limitation upon his right to do so being the provisions of section 90 of the Code of Civil Procedure. evidence sufficient to justify relief upon one or the other theory necessitates the grant of relief upon that theory and precludes the grant of relief under the other. Plaintiff may be in doubt as to whether he can establish a technical infringement of a trade-mark to the satisfaction of the court. Exhibit A is a representation in colors of a rural scene in the Philippines. is a single rooster standing in an attitude of challenge. Cases may well arise wherein the conduct complained of constitutes a wrong under neither theory. a prayer for an injunction forbidding the use of a specific emblem or design and for damages for its use may properly rest upon allegations of a technical infringement of a trade-mark united in the same complaint with allegations of unfair competition. F. uncolored. allows relief from the wrong done by a trade-mark infringement under circumstances and upon proof which would not entitle the plaintiff to relief upon the theory of unfair competition where it does not appear that there was a technical infringement of a trade-mark. or of any part of it except the picture of the rooster which is found in the insert. but this does not mean that the plaintiff. and these exhibits. the recent case of Hamilton-Brown Shoe Co. in that under our statute. leaves no room for doubt that the dominant and striking pictorial feature of each and all of them. and in such cases the plaintiff should not be forced to an election of either theory in the introduction of evidence in support of the prayer of his complaint. B.) We are not unmindful of what was said in the case of Compañia General de Tabacos vs. though he is in doubt as to which theory will prove acceptable to the court. . We know of no reason why he should not be permitted to do so." The infringement of a trade-mark is. and the words "trade-mark" on the lower margin of the circle. however.
which had always marked its goods with one or more pictures of a single rooster. We ask. a dog. or suggestive of the quality of these goods. had for many years made use of a pictorial representation of a rooster upon the packages and wrappers used in connection with his business. that no person could or would be deceived by the use by the defendant of a trade-mark wholly distinct from that of the plaintiff. two large and highly colored roosters in an attitude of combat.Exhibit H is an oval panel which has. and the defendant corporation hoped to profit unjustly by that reputation. that is to say. The plaintiff. or that its candies are sold in the retail trade under that name. however. that the fact that the defendant used two roosters as its trade-mark clearly discloses its innoncence of any intent to deceive. We think that the bare statement of the undisputed facts disclosed by the record leaves no room for reasonable doubt as to the guilt of the defendant corporation of unfair competitions as defined in Act No. hoped to secure an unfair advantage by misleading the public. nor does it sustain his allegations that the defendant corporation has sold or is selling its candy as Manoc candy. and in advertising his goods and made continuous use of a rooster as his trade-mark." the corporate name of the defendant company. and all the fishes in the sea. Manila. well knowing that the plaintiff had used a rooster as his trade-mark. and at the . why. and along the lower margin the words. Two of his workmen left his employ and organized a corporation which engaged in the business of manufacturing candy. "Trade-mark. This corporation adopted as its trademark a pictorial representation of two roosters. or unfair competition by the defendant corporation by the use on the containers of their goods and otherwise of the design set forth in Exhibit H. the defendant company selected two roosters as its trade-mark. with all the birds in the air. Ltd. 666. and all the animals on the face of the earth to choose from. a candy manufacturer. A cat. since a comparison of the trade-mark of the plaintiff with that of the defendant makes apparent at once that one was not intended to be an imitation of the other. "as its central and predominating feature. the other evidence of record is sufficient to sustain a finding that there has been either a technical infringement of plaintiff's unregistered trade-mark." Upon the whole record we are of opinion that the evidence of record does not affirmatively and satisfactorily sustain plaintiff's claim that his candy has actually become known to the trade as Manoc candy. No reason has been suggested for the use of this particular design with its predominant display of two roosters as the trade-mark of the defendant corporation other than that alleged by the plaintiff. Defendant knew that the use of a single rooster would be prohibited as a technical infringement of plaintiff's trade-mark. but it hoped that it could avoid that danger by the use of two rooster.. Why did defendant select two roosters as its trade-mark? We cannot doubt that it was because the plaintiff's candies has acquired a certain reputation under the trade-mark of a rooster. a shark or an eagle stamped upon the container in which candies are sold would serve as well as a rooster for purposes of identification as the product of defendant's factory. The question then which presents itself is whether in the absence of proof of these allegations. and at the same time had made extensive use of this design in connection with its advertising campaigns. Counsel for defendant insist that there is no real resemblance between a picture of one rooster and a picture of two roosters. although its directors and managers must have been well aware of the long-continued use of a rooster by the plaintiff in connection with the sale and advertisement of his goods? There is nothing in the picture of one or more roosters which in itself is descriptive of the goods sold by the plaintiff or by the defendant corporation. and inducing it to believe that its candies bearing a representation of two roosters were made in the plaintiff's factory. in the language of counsel for the defendant. in large and distinct letters running along the upper margin." with the words "Manila Candy Co. and it has made extensive use of this trade-mark upon the packages and containers in which it put its candy on the market.. that the new manufacturer. a carabao.
To most lawyers." are used in connection with defendant's trade-mark. as suggested by counsel for the plaintiff. not absolutely identical with that used by the plaintiff. Ltd. and it must be confessed that it is difficult if not wholly impossible to reconcile the principles upon which some of those cases seem to turn. and to accept candies made by the defendant company as candy of the same mark. had pictures of a rooster on the outside. is in itself a clear recognition of the more modern attitude of the lawmaker with relation to these practices. Act No. or dictionary. 3. in such manner as to be likely to cause confusion in the minds of the ordinary purchasers as to the origin of the goods. 666. might well be expected to recall that packages containing Clark's candies. it is safe to say. p. By the terms of section 61 of Act No. as the designation of a legal wrong which the law will undertake to redress or prevent. though the apparent conflict would seem to arise in most instances from the application by the various courts of recognized principles to the varying facts of each case. that there has been a very marked change in the attitude of the public and of the courts in recent years. has only of late years begun to make its appearance in the books. are highly colored. unlike the rooster in plaintiff's trade-mark. the title carries no very definite meaning. misleading as to original ownership. Children. for as yet its use is almost entirely confined to the Reports.. Mr. 265 [vol." and we are satisfied that the predominant idea conveyed to the mind by the use of that trade-mark is substantially identical with that conveyed to the mind by the use of the single rooster by the plaintiff as his trade-mark. We have no doubt the use of the pictorial representation of two roosters on the containers of the goods of the defendant rendered the defendant corporation guilty of unfair competition. in dealing with the offense known as "unfair competition. and always with the facts of the particular case in view.same time get such advantage as it must have believed it could secure from the use of a design on the containers of its goods. are wholly insufficient to relieve the design used by the defendant of the vice of an unfair and misleading use of the predominant idea set forth in plaintiff's unregistered trade-mark. but so similar in the dominant idea as to confuse or mislead the purchasers. for under all the circumstances of the case. 666 unfair competition may be found to exist where the deceitful appearance of the goods. and the further fact that the words "Manila Candy Co. while it is quite unrecognized in digest." which is reflected in the progress made by the law in developing rules and remedies relating to dishonest and unfair commercial practices. p. Justice Holmes said twenty-five years ago that: The law has got to be stated over again. 10. Our own statute. 275] observed that: Unfair competition. Our statute crystallizing as it does the modern view as to what the law should be on this subject is a striking realization of that prophecy. And I venture to say that in fifty years we shall have it in a form of which no one could have dreamed fifty years ago. and in these it is used only in the most general way. and for that matter the average purchasers of candies. and that these rooster. is affected either by the general appearance of the package containing the goods or by the devices or words used thereon. text book. In 1895 a writer in the Harvard Law Review. in attitude of combat. . The fact that defendant used two roosters. which they had been accustomed to buy and for which they had acquired a taste. "as its central and predominating feature. The truth is. two large and highly colored roosters. we are of opinion that we are justified in inferring the intent of the defendant corporation to deceive the public and defraud the plaintiff. A large number of cases are cited by counsel in their briefs in support of their respective contentions. vol. although the design used displayed two roosters in each instance instead of the single rooster used by the plaintiff. In the language of counsel for defendant the trade-mark used by defendant on the packages and containers in which it shipped its goods has.
" No. Bulte vs. 69.Finzer. 573. 66 N. Igleheart Bros. Y. during this time very marked progress has been made by the law in developing rules and remedies relating to dishonest and unfair commercial practices. 502 with which contrast the discussions of "The Owl Case. such use constituted a technical infringement of the original trade-mark.. 129 U. Co. Liggett and Myers Tobacco Co. in which they soon suffer wrongs which the court seems powerless to prevent or to end. and redress is granted where the similarity is sufficient to convey a false impression to the public mind. as if the progress of the unscrupulous merchant and manufacturer in inventing new schemes for filching away the trade of others unfairly. vol. idem. Cole. Bickmore. Y." Now we find that phrases "Passing Off. vs. 3.. But whatever has been the activity of these unscrupulous members of the business community in the lastdecade. "The Star Tea Case. Some of the courts have gone to greater lengths than others in holding that in such cases. Popham vs. Tousey.The following extracts from the introduction to Nim's work on Unfair Business Competition explain in some sort the tendency of the courts in recent years to hold to more rigid account those charged with unfair competition: There is a maxim as old as the law that there can be no right without a remedy. 7. 129 N. and penalizes these offenses.) But it would seem that the recognition of the wrong complained of in such cases as a technical trade-mark infringement involves in many instances an undue strain upon the well-settled rules and principles which have long controlled this branch of the law — while no difficulty presents itself in dealing with abuses of . etc. and provides for the enforcement of civil remedies for the wrongs resulting therefrom." and also of what is generally recognized as "technical infringement of a trade-mark. recently enacted. 137 Fed. And in order to furnish a remedy for the manifest wrong involved in such conduct. which quite clearly defines. through a failure to perceive that the remedy for the wrong is to be found in the application of the modern doctrine of unfair competition. 7. are recognized legal terms. as disclosed by judicial interpretation.. TradeMark Association. if the use of such design was likely to cause confusion as to the origin of the goods. Karns Mfg. "The Metropolitan Candy Case.." No. 10. delimits. (Cf. of the illegal acts now generally known the United States as "unfair competition. the difficulty in applying the rules touching technical infringements of trade-marks was notably increased. No little difficulty seems to have been encountered by the courts in determining the degree of similarity between an alleged infringing trade-mark and the original which should be required in order to sustain a claim of technical infringement. or to entitle the complaining party to protection." idem. signs or devices as trade-marks. 11. 574. It is but few years since cases involving applications for relief against unfair dealing were indifferently classed as trade-mark cases or injunction cases. though it is generally recognized that exact similitude is not required to constitute an infringement. idem. Bulletin of the U. vs. Co.. vol. Munro vs. "Concurrence Deloyale. vol. "The Hercules Wrestling Match Case.. without the necessity for the straining of established principles controlling technical infringements of trade-marks. has been far more rapid than that of the courts in finding ways of protecting the honest business man against such schemes. But in cases wherein it could hardly be said that there was any colorable imitation of the form and arrangement of the original trade-mark. vol. 492. and in lawful ways are putting themselves in new positions. although the presence of some predominant feature in both designs was likely to create confusion or uncertainty. 7. in the exercise of ordinary care and caution in such matters. embracing rules of law applicable to cases of this character." in England. Colorable imitation is deemed sufficient. some authorities would appear to have unduly expanded the doctrine as to the right of appropriation of emblems. or hidden away in digest under headings most surprisingly disassociated from ideas conveyed by the term "Unfair Competition." But for this purpose we can and should look to our own statute. 11. "The Teddy Bear Case.." No. S. Rep.. 8. but it is equally true that men are constantly acquiring new rights and new kinds of property almost unknown to the law. 126 Fed." in France and "Unfair Competition" in America. 38. idem. sometimes. and is of a character to mislead and deceive the ordinary purchaser." No. The citation of authority in the briefs would seem to have for its object the development of a definition. It seems. S. 184.
Singson for private respondent. Bito. be reversed. signs. which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer. emblems. all difficulty can and should be avoided by limiting relief prayed for on the ground of trade-mark infringement to cases wherein there is an exact or at least a colorable imitation of the original trade-mark. L-78325 January 25. devices. but by the general appearance of the package containing the goods." and it is further provided that "this section applied in cases where the deceitful appearance of the goods. which would be likely to cause confusion as to the origin of the goods. 1990 DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION. the use under the conditions therein specified of devices or words. or words are not by law capable of appropriation as trade-marks. therefore. misleading as to origin or ownership. and in other cases applying the provisions of section 7 of the statute (Act No.this kind under the modern doctrine of unfair competition. and the record returned to the court wherein it originated. therefore (in order to give a remedy for the wrong involved in such conduct). without costs in this instance. Reynaldo F." Under the precise terms of this statute. respondents.: . and there is no necessity. although they may not amount to a colorable imitation of the form and arrangement of a trade-mark. The judgment entered in the court below denying relied must. Certainly. for the straining of the well settled principles which have long controlled in cases of technical infringements of trade-marks. and who clothes the goods with such appearance for the purpose of deceiving the public and defrauding another of his legitimate trade. even though such packages. That section expressly provides that unfair competition exists when one selling his goods "gives them the general appearance of goofs of another manufacturer or dealer. CRUZ. Misa & Lozada for petitioners. either in the wrapping of the packages in which they are contained. vs. 666) which defines the offense of unfair competition. or devices.R. We have already indicated that the use by the defendant company of the pictorial device of which the predominating idea is two roosters upon the containers or wrappers in which the goods of the defendant are sold is "likely to influence purchasers to believe that the goods offered" for sale by the defendant are those of the plaintiff manufacturer. or in any other feature of their appearance. or by the devices or words thereon. under our statute. COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES. No. G. is effected not by means of technical trade-marks. and that the manifest purpose of the use of this device is to deceive the public and defraud the plaintiff of his legitimate trade. It follows therefore that plaintiff is entitled to the relief prescribed in the statute notwithstanding the fact that the devices are dissimilar in so many respects as to preclude a finding that the device of the defendant is a reproduction or a colorable imitation of plaintiff's trade-mark. J. So ordered. petitioners. constitutes the offense of unfair competition. where judgment will be entered in conformity herewith granting injunctive relief as hereinbefore indicated and making proper provision for the accounting prayed for in the complaint. or the devices or words thereon.
SR913 by the Philippine Patent Office under the Supplemental Register. Philpack warned it to desist from doing so on pain of legal action. Thereafter. which is now faulted in this petition for certiorari under Rule 45 of the Rules of Court. under the Del Monte trademark and logo. On April 11. offering for sale. to engage in the manufacture. 1983. Petitioner Del Monte Corporation is a foreign company organized under the laws of the United States and not engaged in business in the Philippines. the complainants had failed to establish the defendant's malice or bad faith. provides in part as follows: Sec. and that in any case the defendant became the owner of the said bottles upon its purchase thereof from the junk yards. Petitioner Philippine Packing Corporation (Philpack) is a domestic corporation duly organized under the laws of the Philippines. Del Monte granted Philpack the right to manufacture. 1 On November 20. any reproduction.1980. including the Del Monte bottle. 1965.A. copy or colorable imitation of any registered mark or trade-name in connection with the sale. claiming that the demand had been ignored. 166. On October 27. packing. 6 After trial. distribution and sale of various kinds of sauce. with a prayer for damages and the issuance of a writ of preliminary injunction. without the consent of the registrant. Philpack and Del Monte filed a complaint against the private respondent for infringement of trademark and unfair competition.The petitioners are questioning the decision of the respondent court upholding the dismissal by the trial court of their complaint against the private respondent for infringement of trademark and unfair competition. including catsup. 3 This logo was registered in the Supplemental Register on September 20. 1972. No. counterfeit. 7 This decision was affirmed in toto by the respondent court. Del Monte authorized Philpack to register with the Philippine Patent Office the Del Monte catsup bottle configuration. identified by the logo Sunshine Fruit Catsup. otherwise known as the Trademark Law. Both the Philippines and the United States are signatories to the Convention of Paris of September 27. Infringement. Furthermore. 1969. for which it was granted Certificate of Trademark Registration No. which was an essential element of infringement of trademark or unfair competition. 4 The product itself was contained in various kinds of bottles. Sunshine alleged that it had long 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. Having received reports that the private respondent was using its exclusively designed bottles and a logo confusingly similar to Del Monte's. — Any person who shall use. 22. Section 22 of R. which grants to the nationals of the parties rights and advantages which their own nationals enjoy for the repression of acts of infringement and unfair competition. that the defendant had ceased using the petitioners' bottles. or advertising of any goods. what constitutes. It held that there were substantial differences between the logos or trademarks of the parties. 2 Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of Registration by the Bureau of Domestic Trade on April 17. 5 In its answer. business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or .1965. the Regional Trial Court of Makati dismissed the complaint. which the private respondent bought from the junk shops for recycling. distribute and sell in the Philippines various agricultural products. Del Monte also obtained two registration certificates for its trademark "DEL MONTE" and its logo.
or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. counterfeit copy or colorable imitation to labels. or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose. or his business. which will be protected in the same manner as other property rights.three. or in any other feature of their appearance. business or services so identified. or (c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods. shall be guilty of unfair competition.origin of such goods or services or identity of such business. Such a person shall have the remedies provided in section twenty. signs. . and shall be subject to an action therefor. (1) Infringement of trademark is the unauthorized use of a trademark. whereas unfair competition is the passing off of one's goods as those of another. packages. and without in any way limiting the scope of unfair competition. receptacles or advertisements intended to be used upon or in connection with such goods. the following shall be deemed guilty of unfair competition: (a) Any person. 29 of the same law states as follows: Sec. Chapter V hereof. Unfair competition. shall be liable to a civil action by the registrant for any or all of the remedies herein provided. business or services of another. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals. (b) Any person who by any artifice. business or services. it is important to bear in mind the following distinctions between infringement of trademark and unfair competition. 29. Sec. prints. To arrive at a proper resolution of this case. or device. has a property right in the goodwill of the said goods. counterfeit copy or colorably imitate any such mark or trade name and apply such reproduction. his business or services from those of others. either as to the goods themselves or in the wrapping of the packages in which they are contained. who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer. rights and remedies. whether or not a mark or tradename is employed. wrappers. or who shall commit any acts calculated to produce said result. — A person who has identified in the mind of the public the goods he manufactures or deals in. or who employs ally other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public. In particular. or the devices or words thereon. which would likely influence purchasers to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer. or services for those of the one having established such goodwill. or reproduce.
held that there was no colorable imitation of the petitioners' trademark and logo by the private respondent. to wit: 1. Metro Manila. 8 In the challenged decision. Sunshine: Fruit catsup. Inc. Philippines. The respondent court agreed with the findings of the trial court that: In order to resolve the said issue. Sunshine: White. Sunshine: Regular rectangle. the discerning eye of the observer must focus not only on the predorninant words but also on the other features appearing on both labels. 9 and applying the same. As to the words or lettering on label or mark: Del Monte: Clearly indicated words packed by Sysu International. whereas in unfair competition registration is not necessary. 3.. with words "Sunshine Brand" in yellow. (3) In infringement of trademark the prior registration of the trademark is a prerequisite to the action. As to color of logo: Del Monte: Combination of yellow and dark red. light green and light red. As to the shape of label or make: Del Monte: Semi-rectangular with a crown or tomato shape design on top of the rectangle. 5. 2.C. Malabon. 4. As to brand printed on label: Del Monte: Tomato catsup mark.(2) In infringement of trademark fraudulent intent is unnecessary whereas in unfair competition fraudulent intent is essential. the respondent court cited the following test laid down by this Court in a number of cases: In determining whether two trademarks are confusingly similar. with words "Del Monte Quality" in white. the Court now attempts to make a comparison of the two products. 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. Q. 1 Del Monte Avenue. As to shape of logo: . Sunshine: Sunshine fruit catsup is clearly indicated "made in the Philippines by Sunshine Sauce Manufacturing Industries" No..
the general impression of the ordinary purchaser." 7. the ordinary shopper does not enjoy the same opportunity.Del Monte: In the shape of a tomato. It has been correctly held that side-by-side comparison is not the final test of similarity. The ordinary buyer does not usually make such scrutiny nor does he usually have the time to do so. A number of courts have held that to determine whether a trademark has been infringed. Sunshine: Lighter than Del Monte. 17 It has also been held that it is not the function of the court in cases of infringement and unfair competition to educate purchasers but rather to take their carelessness for granted. While the Court does recognize these distinctions. she is apt to be confused by similar labels even if they do have minute differences. The question is not whether the two articles are distinguishable by their label when set side by side but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard. is such as to likely result in his confounding it with the original. Where the housewife has to return home as soon as possible to her baby or the working woman has to make quick purchases during her off hours. 12 It has been held that in making purchases. the value of which may be dissipated as soon as the court assumes to analyze carefully the respective features of the mark. 16 for a buyer acts quickly and is governed by a casual glance." Sunshine: There is a label below the cap which says "Sunshine Brand. not usually to any part of it. If the buyer is deceived. it does not agree with the conclusion that there was no infringement or unfair competition. The male shopper is worse as he usually does not bother about such distinctions. It seems to us that the lower courts have been so pre-occupied with the details that they have not seen the total picture. A confusing similarity will justify the intervention of equity. The average shopper is usually in a hurry and does not inspect every product on the shelf as if he were browsing in a library. and to be ever conscious of the fact that marks need not be identical. 15 The court therefore should be guided by its first impression. 14 Unlike the judge who has ample time to minutely examine the labels in question in the comfort of his sala. 6. buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods is the touchstone. 18 The judge must also be aware of the fact that usually a defendant in cases of infringement does not normally copy but . As to the color of the products: Del Monte: Darker red. with picture of tomatoes with words "made from real tomatoes. Sunshine: Entirely different in shape. 11 As observed in several cases. we must consider the mark as a whole and not as dissected. 13 The buyer having in mind the mark/label of the respondent must rely upon his memory of the petitioner's mark. the consumer must depend upon his recollection of the appearance of the product which he intends to purchase. as was done by the trial judge. it is attributable to the marks as a totality. As to label below the cap: Del Monte: Seal covering the cap down to the neck of the bottle. 10 Such comparison requires a careful scrutiny to determine in what points the labels of the products differ.
comparative and analytical investigation. 22Expensive and valuable items are normally bought only after deliberate. 24 It has been aptly observed that the ultimate ratio in cases of grave doubt is the rule that as between a newcomer who by the confusion has nothing to lose and everything to gain and one who by honest dealing has already achieved favor with the public. 25 Coming now to the second issue. without a reasonable explanation. What is undeniable is the fact that when a manufacturer prepares to package his product. 26 we declared that: (1) Registration in the Principal Register gives rise to a presumption of the validity of the registration. When as in this case. It is not subject to opposition . to use the same colors and letters as those used by Del Monte though the field of its selection was so broad. training and education of the usual purchaser. low priced articles in wide use. Sunshine chose. the nature and cost of the article. There is no such presumption in the registration in the Supplemental Register. As previously stated. employing enough points of similarity to confuse the public with enough points of differences to confuse the courts. The reason is that the configuration of the said bottle was merely registered in the Supplemental Register. while registration in the Supplemental Register is merely proof of actual use of the trademark and notice that the registrant has used or appropriated it. after registration. the figure nevertheless approximates that of a tomato. 20 We also note that the respondent court failed to take into consideration several factors which should have affected its conclusion. what essentially determines the attitude of the purchaser. any doubt should be resolved against the newcomer inasmuch as the field from which he can select a desirable trademark to indicate the origin of his product is obviously a large one. the same with Sunshine. 19 Well has it been said that the most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts. Registration in the Principal Register is constructive notice of the registrant's claim of ownership. phrases. But mass products. a person who buys a box of candies will not exercise as much care as one who buys an expensive watch. the inevitable conclusion is that it was done deliberately to deceive . whether the article is bought for immediate consumption and also the conditions under which it is usually purchased . specifically his inclination to be cautious. even if the labels were analyzed together it is not difficult to see that the Sunshine label is a colorable imitation of the Del Monte trademark. 21 Among these. (2) Registration in the Principal Register is limited to the actual owner of the trademark and proceedings therein on the issue of ownership which may be contested through opposition or interference proceedings or. 23 In this latter category is catsup. he has before him a boundless choice of words. Although the logo of Sunshine is not a tomato. to wit: age. we find that the private respondent is not guilty of infringement for having used the Del Monte bottle. an ordinary buyer does not exercise as much prudence in buying an article for which he pays a few centavos as he does in purchasing a more valuable thing. To be sure. the registrant's ownership of the mark and his right to the exclusive use thereof. is the cost of the goods. The word "catsup" in both bottles is printed in white and the style of the print/letter is the same. in a petition for cancellation. and matters of everyday purchase requiring frequent replacement are bought by the casual consumer without great care. the person who infringes a trade mark does not normally copy out but only makes colorable changes.makes only colorable changes. As a general rule. In the case of Lorenzana v. The predominant colors used in the Del Monte label are green and red-orange. Macagba. colors and symbols sufficient to distinguish his product from the others. At that.
the Shell Case is not on all fours with the case at bar because: (1) In Shell. Second. the registrant's ownership of the mark and his right to its exclusive use are all absent. For it is the form in which the wares come to the final buyer that is of significance. the absence of intent to deceive was supported by the fact that the respondent therein. it declared that the registration of the Sunshine label belied the company's malicious intent to imitate petitioner's product. On the argument that no unfair competition was committed. Corollarily. it is reiterated that since registration was only in the Supplemental Register. 27 where this Court declared that selling oil in containers of another with markings erased. v. there was only one container where the Shell label was not erased. First. dealers are well acquainted with the manufacturer from whom they make their purchases and since they are more experienced. before marketing its product. Not to be Refilled" was embossed on the bottle. we find that Sunshine. it cited the case of Shell Co. There may well be similarities and imitations which deceive all. still opted to use the petitioners' bottle to market a product which Philpack also produces. the petitioners cannot claim exclusive use thereof because it has not been registered in the Principal Register. registration in the Principal Register is a basis for an action for infringement while registration in the Supplemental Register is not.although it may be cancelled after the issuance. Regarding the fact of registration. not to ultimate consumers. the product of respondent was sold to dealers. As a general rule. Anent the assumption that the Bureau of Patent had considered other existing patents. publication of the application is necessary. totally obliterated and erased the brands/mark of the different companies stenciled on the containers thereof. The Court observes that the reasons given by the respondent court in resolving the case in favor of Sunshine are untenable. was not unfair competition. Insular Petroleum. However. Of the many drums used. Third. the respondent admitted that it made use of several Del Monte bottles and without obliterating the embossed warning. except for a single isolated transaction. they cannot be so easily deceived like the inexperienced public. (2) In Shell. It can be inferred from the foregoing that although Del Monte has actual use of the bottle's configuration. without intent to deceive. it is to be noted that the Sunshine label was registered not in the Principal Register but only in the Supplemental Register where the presumption of the validity of the trademark. it held that the Sunshine label was not improper because the Bureau of Patent presumably considered other trademarks before approving it. but generally the interests of the dealers are not regarded with the same solicitude as are the interests of the ordinary consumer. (3) In applications for registration in the Principal Register. this did not vest the registrant with the exclusive right to use the label nor did it give rise to the presumption of the validity of the registration. This clearly shows the private respondent's bad faith and its intention to capitalize on the latter's reputation and goodwill and pass off its own product as that of Del Monte. while in the case at hand. The respondent in the present case made no similar effort. This is not so in applications for registrations in the Supplemental Register. what was involved was a single isolated transaction. despite the many choices available to it and notwithstanding that the caution "Del Monte Corporation. 28 . (3) In Shell.
hence. as it hereby does award. in the discretion of the court. however. SR-6310 and permanently enjoining the private respondent from using a label similar to that of the petitioners. had the defendant not infringed his said rights or the profit which the defendant actually made out of the infringement. WHEREFORE. and the costs of the suit.00. the petition is GRANTED. SO ORDERED. 166 provides: Sec.000.A. and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made.000.1987. the damages may be doubled. (2) Prohibiting the private respondent from using the empty bottles of the petitioners as containers for its own products. law and equity call for the cancellation of the private respondent's registration and withdrawal of all its products bearing the questioned label from the market. nominal damages in the amount of Pl. the respondent should be permanently enjoined from the use of such bottles. upon proper showing may also be granted injunction. or in the event such measure of damages cannot be readily ascertained with reasonable certainty the court may award as damages reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party. 2222. No. Accordingly. Fortunately for the petitioners. The court may award nominal damages in every obligation arising from any source enumerated in Art. The decision of the Court of Appeals dated December 24.00. — Any person entitled to the exclusive use of a registered mark or trade name may recover damages in a civil action from any person who infringes his rights. The complaining party. 1986 and the Resolution dated April 27. Section 23 of R. 23. 2222 of the Civil Code. With regard to the use of Del Monte's bottle. that the damage prayed for cannot be granted because the petitioner has not presented evidence to prove the amount thereof. they may still find some small comfort in Art. or in every case where any property right has been invaded. 1157. The court must rule. the Court can only award to the petitioners. Actions and damages and injunction for infringement.As Sunshine's label is an infringement of the Del Monte's trademark. . In cases where actual intent to mislead the public or to defraud the complaining party shall be shown. the same constitutes unfair competition. (3) Ordering the private respondent to pay the petitioners nominal damages in the amount of Pl. are REVERSED and SET ASIDE and a new judgment is hereby rendered: (1) Canceling the private respondent's Certificate of Register No. which provides: Art.
Thereafter.A. The undisputed facts of the case are as follows: Respondent Universal Rubber Products. and TIBURCIO S. b] The registration of respondent's trademark will cause great and irreparable injury to the business reputation and goodwill of petitioner in the Philippines and would cause damage to said petitioner within the. meaning of Section 8.R. No. respondents. as amended. vs. No. Nazareno. Parades. 166. respondent filed its answer and at the pre-trial. INC. Petitioner Converse Rubber Corporation filed its opposition to the application for registration on grounds that: a] The trademark sought to be registered is confusingly similar to the word "CONVERSE" which is part of petitioner's corporate name "CONVERSE RUBBER CORPORATION" as to likely deceive purchasers of products on which it is to be used to an extent that said products may be mistaken by the unwary public to be manufactured by the petitioner. the parties submitted the following partial stipulation of facts: . 1987 CONVERSE RUBBER CORPORATION. EVALLE. L-27906 January 8. UNIVERSAL RUBBER PRODUCTS. Azada & Tomacruz for petitioner. Inc. DIRECTOR OF PATENTS. Poblador. filed an application with the Philippine Patent office for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and rubber slippers. and. R.G. petitioner.
" 5 or "Converse Shoes Chuck Taylor." 4 "All Star Converse Chuck Taylor...A. the Director of Patents dismissed the opposition of the petitioner and gave due course to respondent's application. . the entry of Opposer's [petitioner's] goods in the Philippines were not only effected in a very insignificant quantity but without the opposer [petitioner] having a direct or indirect hand in the transaction so as to be made the basis for trademark preexemption.. the rubber shoes were described as "Converse Chuck Taylor". The proofs herein are sales made by a single witness who had never dealt with the petitioner .. Mrs. Massachusetts. and. " 2 In the invoices issued by her store. USA and doing business at 392 Pearl St.. I cannot find anything that will prevent registration of the word 'UNIVERSAL CONVERSE' in favor of the respondent. The witness also testified that she had no Idea why respondent chose "Universal Converse" as a trademark and that she was unaware of the name "Converse" prior to her corporation's sale of "Universal Converse" rubber shoes and rubber sandals. His decision reads in part: . Pacquing." 6 She also affirmed that she had no business connection with the petitioner. Mrs. the only question for determination is whether or not the applicant's partial appropriation of the Opposer's [petitioner'] corporate name is of such character that in this particular case. Eventually. Mesa Market and in Davao City. If so. petitioner's lone witness. it is duly organized under the laws of Massachusetts. it designates to the mind of the public that particular corporation. it is calculated to deceive or confuse the public to the injury of the corporation to which the name belongs . County of Middle sex. 1 At the trial. 1946. In arriving at this conclusion. presented as its lone witness the secretary of said corporation who testified that respondent has been selling on wholesale basis "Universal Converse" sandals since 1962 and "Universal Converse" rubber shoes since 1963. . 3 "Converse All Star. 3] Petitioner manufacturers rubber shoes and uses thereon the trademarks "CHUCK TAYLOR "and "ALL STAR AND DEVICE". Malden. a duly licensed private merchant with stores at the Sta. testified that she had been selling CONVERSE rubber shoes in the local market since 1956 and that sales of petitioner's rubber shoes in her stores averaged twelve to twenty pairs a month purchased mostly by basketball players of local private educational institutions like Ateneo. as it is already stipulated that it is not licensed to do business in the Philippines. .1] The petitioner's corporate name is "CONVERSE RUBBER CORPORATION" and has been in existence since July 31. on the other hand. Pacquing. Respondent. I am guided by the fact that the opposer failed to present proof that the single word "CONVERSE' in its corporate name has become so Identified with the corporation that whenever used. La Salle and San Beda. Invoices were submitted as evidence of such sales.S. further stated that she knew petitioner's rubber shoes came from the United States "because it says there in the trademark Converse Chuck Taylor with star red or blue and is a round figure and made in U. Opposer's proof of its corporate personality cannot establish the use of the word "CONVERSE" in any sense. 2] Petitioner is not licensed to do business in the Philippines and it is not doing business on its own in the Philippines. Carmen B. and is not doing business of its own in the Philippines.
whereon the label may be seen.it will be futile for it to establish that "CONVERSE" as part of its corporate name Identifies its rubber shoes. the trademark refers to the goods. thus: A boundless choice of words. there is no reasonable explanation for the defendant's choice of such a mark though the field for his selection was so broad.the record is wanting in proof to establish likelihood of confusion so as to cause probable damage to the Opposer. As correctly phrased by public respondent Director of Patents. no determination can be made as to whether the word 'CONVERSE' appears thereon.' it is evident that the word "CONVERSE" is the dominant word which Identifies petitioner from other corporations engaged in similar business. admitted petitioner's existence since 1946 as a duly organized foreign corporation engaged in the manufacture of rubber shoes. 8 As the trade name refers to the business and its goodwill . 7 Its motion for reconsideration having been denied by the respondent Director of Patents. Besides. it was also stipulated that opposer [petitioner]. phrases and symbols is available to one who wishes a trademark sufficient unto itself to distinguish his product from those of others."12 Respondent's witness had no Idea why respondent chose "UNIVERSAL CONVERSE" as trademark and the record discloses no reasonable explanation for respondent's use of the word "CONVERSE" in its trademark. A trade name is any individual name or surname. however. This admission necessarily betrays its knowledge of the reputation and business of petitioner even before it applied for registration of the trademark in question. When. Respondent. in manufacturing rubber shoes uses thereon the trademark "CHUCK TAYLOR" and "ALL STAR and DEVICE" and none other. notwithstanding its witness' testimony touching upon her Identification of the rubber shoes sold in her stores. or specimen of its shoes.. in the stipulation of facts. and is in fact the dominant word in petitioner's corporate name. respondent has no right to appropriate the same for use on its products which are similar to those being produced by petitioner. . device or word used by manufacturers. Knowing. vocations or occupations.. that the word "CONVERSE" belongs to and is being used by petitioner. the inference is inevitable that it was chosen deliberately to deceive. merchants and others to Identify their businesses. 13 . industrialists. inasmuch as the Opposer never presented any label herein. Furthermore. The modern trend is to give emphasis to the unfairness of the acts and to classify and treat the issue as fraud. A corporation is entitled to the cancellation of a mark that is confusingly similar to its corporate name. petitioner instituted the instant petition for review. firm name."11"Appropriation by another of the dominant part of a corporate name is an infringement. . therefore. the basic issue presented for our consideration is whether or not the respondent's partial appropriation of petitioner's corporate name is of such character that it is calculated to deceive or confuse the public to the injury of the petitioner to which the name belongs." 9 The ownership of a trademark or tradename is a property right which the owner is entitled to protect "since there is damage to him from confusion or reputation or goodwill in the mind of the public as well as from confusion of goods. Such unexplained use by respondent of the dominant word of petitioner's corporate name lends itself open to the suspicion of fraudulent motive to trade upon petitioner's reputation. 10 From a cursory appreciation of the petitioner's corporate name "CONVERSE RUBBER CORPORATION. .
supporting strongly petitioner's move for trademark pre-emption. having affirmed her lack of business connections with petitioner.exemption. The sales of 12 to 20 pairs a month of petitioner's rubber shoes cannot be considered insignificant. and in this sense. But even assuming. "The most convincing proof of use of a mark in commerce is testimony of such witnesses as customers. that the . indiscriminately sold by jobbers dealers and merchants not necessarily with the knowledge or consent of the manufacturer. or even perhaps even [sic] a not too perceptive and discriminating customer could be deceived .. In the same manner. the trademark of petitioner which reads "CONVERSE CHUCK TAYLOR" is imprinted on a circular base attached to the side of its rubber shoes.. not only to limited individuals. any ordinary. Any sale made by a legitimate trader from his store is a commercial act establishing trademark rights since such sales are made in due course of business to the general public. 14 "CONVERSE ALL STAR. i. therefore. contrary to the determination of the respondent Director of Patents. The Director of Patents was." 19 Even if not an the details just mentioned were identical. or the orders of buyers during a certain period." 17 Thus.e. has testified as such customer. it does not mean that its goods are not being sold here or that it has not earned a reputation or goodwill as regards its products. 18 Petitioner's witness. arguendo. the word "CONVERSE" has grown to be Identified with petitioner's products. which not too many basketball players can afford to buy. The trademark of respondent "UNIVERSAL CONVERSE and DEVICE" is imprinted in a circular manner on the side of its rubber shoes. or other persons specially familiar with the trademark or goods involve. The sales invoices submitted by petitioner's lone witness show that it is the word "CONVERSE" that mainly Identifies petitioner's products. said sales invoices provide the best proof that there were actual sales of petitioner's products in the country and that there was actual use for a protracted period of petitioner's trademark or part thereof through these sales. 21 It is not necessary in either case that the resemblance be sufficient to deceive experts. who is a legitimate trader as well as the invoices evidencing sales of petitioner's products in the Philippines. It is a matter of public knowledge that all brands of goods filter into the market." Another factor why respondent's applications should be denied is the confusing similarity between its trademark "UNIVERSAL CONVERSE AND DEVICE" and petitioner's corporate name and/or its trademarks "CHUCK TAYLOR" and "ALL STAR DEVICE" which could confuse the purchasing public to the prejudice of petitioner. remiss in ruling that the proofs of sales presented "was made by a single witness who had never dealt with nor had never known opposer [petitioner] x x x without Opposer having a direct or indirect hand in the transaction to be the basis of trademark pre. " 20 When the law speaks co-purchaser. has acquired a second meaning within the context of trademark and tradename laws. dealers. Such actual sale of goods in the local market establishes trademark use which serves as the basis for any action aimed at trademark pre." 16 or "CONVERSE SHOES CHUCK and TAYLOR." 15 ALL STAR CONVERSE CHUCK TAYLOR. "CONVERSE CHUCK TAYLOR. Furthermore." 22 The similarity y in the general appearance of respondent's trademark and that of petitioner would evidently create a likelihood of confusion among the purchasing public. with the general appearance alone of the two products. for purposes of the law. It would be sufficient. The deteminative factor in ascertaining whether or not marks are confusingly similar to each other "is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the part of the buying public." the reference is to ordinary average purchaser.The testimony of petitioner's witness.exemption. give credence to petitioner's claim that it has earned a business reputation and goodwill in this country. It is a corollary logical deduction that while Converse Rubber Corporation is not licensed to do business in the country and is not actually doing business here. considering that they appear to be of high expensive quality. that the similarity between the two labels is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the new brand for it.
21-22. The sole purpose of the action: Is to protect its reputation. Fernandez. established themselves. a foreign corporation which has never done any business in the Philippines and which is unlicensed and unregistered to do business here. 115. this Court. In La Chemise Lacoste. any business which it has transacted in the Philippine Islands.. "The risk of damage is not limited to a possible confusion of goods but also includes confusion of reputation if the public could reasonably assume that the goods of the parties originated from the same source. corporate name or goodwill have. Hopkins on Trademarks. 10. Trade Names and Unfair Competition and cases cited That point is sustained by the authorities. vs. in which the syllabus says: Since it is the trade and not the mark that is to be protected.A." respondent's products are likely to be mistaken as having been produced by petitioner. has a legal right to maintain an action in the Philippines to restrain the residents and inhabitants thereof from organizing a corporation therein bearing the same name as the foreign corporation. in any of the courts of the world even in jurisdictions where it does not transact business-just the same as it may protect its tangible property. By appropriating the word "CONVERSE.' And it contends that its rights to the use of its corporate and trade name: Is a property right.. Nims on Unfair Competition and Trademarks and cases cited.trademark sought to be registered by respondent is distinctively dissimilar from those of the petitioner. reiterating Western Equipment and Supply Co. through the natural development of its trade. a right in recess which it may assert and protect against all the world. and it is apparent that the purpose of the proposed domestic corporation is to deal and trade in the same goods as those of the foreign corporation. but extends to every market where the trader's goods have become known and Identified by the use of the mark. it is futile for it to establish that "CONVERSE" as part of its corporate name identifies its rubber shoes. vs. [208 Fed. a trademark acknowledges no territorial boundaries of municipalities or states or nations. it has no name to protect iN the forum and thus. its goodwill whenever that reputation. real or personal against trespass. but is widely and favorably known in the Philippines through the use therein of its products bearing its corporate and tradename. 23 It is unfortunate that respondent Director of Patents has concluded that since the petitioner is not licensed to do business in the country and is actually not doing business on its own in the Philippines. Allen and Wheeler Co. vs. and is well stated in Hanover Star Milling Co. its corporate name. We further held: xxx xxx xxx That company is not here seeking to enforce any legal or control rights arising from or growing out of. stated that: . Citing sec. the likelihood of confusion would still subsists. 51 Phil. Reyes. That a foreign corporation has a right to maintain an action in the forum even if it is not licensed to do business and is not actually doing business on its own therein has been enunciated many times by this Court. 5131. not on the purchaser's perception of the goods but on the origins thereof. 129 SCRA 373. secs. S. or conversion. when it appears that they have personal knowledge of the existence of such a foreign corporation. ..
R. shall be entitled to the benefits and subject to the provisions of this Act ... SR 5054 (Supplemental Register) for the trademark "STYLISTIC MR. LEE" used on skirts.The ruling in the aforecited case is in consonance with the Convention of the Union of Paris for the Protection of Industrial Property to which the Philippines became a party on September 27.R. SP No. jogging suits.A. socks. Article 8 thereof provides that "a trade name [corporate name] shall be protected in all the countries of the Union without the obligation of filing or registration. otherwise known as the Trademark Law: Sec. Emerald Garment Manufacturing Corporation seeks to annul the decision of the Court of Appeals dated 29 November 1990 in CA-G. 1965. private respondent H. shorts. respondents. KAPUNAN. Inc.. whether or not it forms part of the trademark. Tradenames of persons described in the first paragraph of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks.D. domiciled or have a bona fide or effective business or commercial establishment in any foreign country. vs. J. Inc.. HON. BUREAU OF PATENTS.'s application for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" on its rubber shoes and slippers. Lee Co.D. TRADEMARKS AND TECHNOLOGY TRANSFER and H.. the decision of the Director of Patents is hereby set aside and a new one entered denying Respondent Universal Rubber Products.S. briefs. . 37 of RA No. Eaton Co. T. which is a party to an international convention or treaty relating to marks or tradenames on the repression of unfair competition to which the Philippines may be a party. [emphasis supplied] WHEREFORE. 100098 December 29. " [emphasis supplied] The object of the Convention is to accord a national of a member nation extensive protection "against infringement and other types of unfair competition" [Vanitary Fair Mills. 1995 EMERALD GARMENT MANUFACTURING CORPORATION. filed with the Bureau of Patents.: In this petition for review on certiorari under Rule 45 of the Revised Rules of Court. The record reveals the following antecedent facts: On 18 September 1981. LEE COMPANY. petitioner. jeans. . Inc. 2d 6331. a foreign corporation organized under the laws of Delaware. G. 15266 declaring petitioner's trademark to be confusingly similar to that of private respondent and the resolution dated 17 May 1991 denying petitioner's motion for reconsideration. No. jackets.. Rights of Foreign Registrants-Persons who are nationals of. The mandate of the aforementioned Convention finds implementation in Sec. vs. issued on 27 October 1980 in the name of petitioner Emerald Garment . 166.. . 234 F. INC. blouses. COURT OF APPEALS. SO ORDERED. dresses. shirts and lingerie under Class 25. 37. Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. U.
" 8 On 3 August 1988. Private respondent submitted its opposition on 22 August 1988. 1558 and 1860 on grounds that a common question of law was involved. 1860.9 On 23 September 1988. when applied to or used in connection with petitioner's goods. petitioner appealed to the Court of Appeals and on 8 August 1988." 4 On 27 July 1984. 3 On 20 February 1984. 37 of R. The Director of Patents found private respondent to be the prior registrant of the trademark "LEE" in the Philippines and that it had been using said mark in the Philippines. petitioner contended that its trademark was entirely and unmistakably different from that of private respondent and that its certificate of registration was legally and validly granted. the Director of Patents. petitioner caused the publication of its application for registration of the trademark "STYLISTIC MR. the BPTTT issued Resolution No. LEE". invoking Sec. averred that petitioner's trademark "so closely resembled its own trademark. No. LEE" in the Principal Register. That under this resolution. to cause confusion. all goods bearing the mark . it filed with the BPTTT a Motion to Stay Execution of the 19 July 1988 decision of the Director of Patents on grounds that the same would cause it great and irreparable damage and injury. 1558. 1 Private respondent. VIII of the Paris Convention for the Protection of Industrial Property. 6 On 19 July 1988. a domestic corporation organized and existing under Philippine laws. 'LEE' as previously registered and used in the Philippines. The petition was docketed as Inter Partes Case No." 2 In its answer dated 23 March 1982. as to be likely. using the test of dominancy. declared that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. issued an order consolidating Inter Partes Cases Nos. 7 Moreover.A. LEE) in addition to its current stock. the Director of Patents rendered a decision granting private respondent's petition for cancellation and opposition to registration. That Respondent-Registrant is strictly prohibited from further production. private respondent filed a notice of opposition to petitioner's application for registration also on grounds that petitioner's trademark was confusingly similar to its "LEE" trademark. if the Respondent's appeal loses. regardless of mode and source. 88-33 granting petitioner's motion to stay execution subject to the following terms and conditions: 1. the Director of Patents. 2. It is undeniably the dominant feature of the mark. On 21 June 1985.Manufacturing Corporation. 5 The case was docketed as Inter Partes Case No. of the mark in question (STYLISTIC MR. 3. That this relief Order shall automatically cease upon resolution of the Appeal by the Court of Appeals and. 166 (Trademark Law) and Art. on motion filed by private respondent dated 15 May 1985. and not abandoned. Respondent-Registrant is authorized only to dispose of its current stock using the mark "STYLISTIC MR. mistake and deception on the part of the purchasing public as to the origin of the goods.
a similarity in the dominant features of the trademark would be sufficient. by the ignorant and the unlettered. otherwise such goods shall be seized in accordance with the law. then infringement takes place. thus: xxx xxx xxx 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". While it is true that there are other words such as "STYLISTIC". 10 On 29 November 1990. "LEESURES" and "LEE LEENS". The word "LEE" is the most prominent and distinctive feature of the appellant's trademark and all of the appellee's "LEE" trademarks. that duplication or imitation is not necessary. Ordinary purchasers will not as a rule examine the small letterings printed on the label but will simply be guided by the presence of the striking mark "LEE". The alleged difference is too insubstantial to be noticeable. bold letters and of the same color. SO ORDERED. LEE" shall be removed from the market. Even granting arguendo that the word "STYLISTIC" is conspicuous enough to draw attention. The likelihood of confusion is further made more probable by the fact that both parties are engaged in the same line of business. The merchandise or goods being sold by the parties are not that expensive as alleged to be by the appellant and are quite ordinary commodities purchased by the average person and at times. It is well to reiterate that the determinative factor in ascertaining whether or not the marks are confusingly similar to each other is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the part of the buying public. style. printed in the appellant's label. It is thus axiomatic that one who has identified a peculiar symbol or mark with his goods thereby acquires a property right in such symbol or mark. 12 ."STYLISTIC MR. if the competing trademark contains the main or essential or dominant features of another by reason of which confusion and deception are likely to result. he thereby invokes this property right. type and size of lettering as that of the trademark of the appellee. the goods may easily be mistaken for just another variation or line of garments under the ap appelle's "LEE" trademarks in view of the fact that the appellee has registered trademarks which use other words in addition to the principal mark "LEE" such as "LEE RIDERS". It is the mark which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. the Court of Appeals promulgated its decision affirming the decision of the Director of Patents dated 19 July 1988 in all respects. meaning. 11 In said decision the Court of Appeals expounded. Whatever difference there may be will pale in insignificance in the face of an evident similarity in the dominant features and overall appearance of the labels of the parties. and if another infringes the trademark. such word is printed in such small letters over the word "LEE" that it is not conspicuous enough to draw the attention of ordinary buyers whereas the word "LEE" is printed across the label in big. xxx xxx xxx The appellee has sufficiently established its right to prior use and registration of the trademark "LEE" in the Philippines and is thus entitled to protection from any infringement upon the same.
Neither defenses were raised by the appellant in the proceedings before the Bureau of Patents. so that this Court on appeal may determine whether or not such ruling was erroneous. To permit him to do so would be unfair to the adverse party. 13 On 17 May 1991. appellant's main defense pleaded in its answer dated March 23. the same must also be within the issues raised by the parties in their pleadings. when a party deliberately adopts a certain theory.xxx xxx xxx On 19 December 1990. for a question to be raised on appeal. there having opportunity to raise them in the court of origin constitutes a change of theory which is not permissible on appeal. 44220. An issue raised for the first time on appeal and not raised timely in the proceedings in the lower court is barred by estoppel. A question raised for the first time on appeal. In the instant case. he will not be permitted to change his theory on appeal. Appellant cannot raise them now for the first time on appeal. The purpose is also in furtherance of justice to require the party to first present the question he contends for in the lower court so that the other party may not be taken by surprise and may present evidence to properly meet the issues raised. and the case is tried and decided based upon such theory presented in the court below. Consequently. LEE-LEENS and LEE-SURES. The object of requiring the parties to present all questions and issues to the lower court before they can be presented to this Court is to have the lower court rule upon them. On appeal. let alone on a mere motion for reconsideration of the decision of this Court dismissing the appellant's appeal. Private respondent opposed said motion on 8 January 1991 on grounds that it involved an impermissible change of theory on appeal. the Court of Appeals issued a resolution rejecting petitioner's motion for reconsideration and ruled thus: xxx xxx xxx A defense not raised in the trial court cannot be raised on appeal for the first time. Appellant claims although belatedly that appellee went to court with "unclean hands" by changing the appearance of its trademark to make it identical to the appellant's trademark. petitioner filed a motion for reconsideration of the above-mentioned decision of the Court of Appeals." Appellant's main argument in this motion for reconsideration on the other hand is that the appellee is estopped by laches from asserting its right to its trademark. . 1982 was that there was "no confusing similarity between the competing trademark involved. LEE" is confusingly similar with the petitioner's trademarks "LEE or LEERIDERS. Moreover. to wit: The only issue involved in this case is whether or not respondentregistrant's trademark "STYLISTIC MR. the appellant raised a single issue. Petitioner allegedly raised entirely new and unrelated arguments and defenses not previously raised in the proceedings below such as laches and a claim that private respondent appropriated the style and appearance of petitioner's trademark when it registered its "LEE" mark under Registration No.
15 In addition. may be considered and applied. IS CONFUSINGLY SIMILAR WITH THE PRIVATE RESPONDENT'S TRADEMARK LEE OR LEE-RIDER. otherwise known as the Law on Trade-marks. No. II. Petitioner alleges that it has been using its trademark "STYLISTIC MR. — In opposition proceedings and in all other inter partes proceedings in the patent office under this act. Trade-names and Unfair Competition: Sec.While there may be instances and situations justifying relaxation of this rule. III. 14 xxx xxx xxx Twice rebuffed. THE COURT OF APPEALS ERRED IN NOT FINDING THAT PRIVATE RESPONDENT CAUSED THE ISSUANCE OF A FOURTH "LEE" TRADEMARK IMITATING THAT OF THE PETITIONER'S ON MAY 5. PETITIONER'S EVIDENCES ARE CLEAR AND SUFFICIENT TO SHOW THAT IT IS THE PRIOR USER AND ITS TRADEMARK IS DIFFERENT FROM THAT OF THE PRIVATE RESPONDENT. where applicable. equity would be better served by applying the settled rule it appearing that appellant has not given any reason at all as to why the defenses raised in its motion for reconsideration was not invoked earlier. 9-A. 9-A of R. and acquiescence. III. PETITIONER'S TRADEMARK IS ENTIRELY DIFFERENT FROM THE PRIVATE RESPONDENT'S AND THE REGISTRATION OF ITS TRADEMARK IS PRIMA FACIE EVIDENCE OF GOOD FAITH. the circumstance of the instant case. estoppel. 1989 OR MORE THAN EIGHT MONTHS AFTER THE BUREAU OF PATENT'S DECISION DATED JULY 19. II. petitioner presents its case before this Court on the following assignment of errors: I. 16 Petitioner contends that private respondent is estopped from instituting an action for infringement before the BPTTT under the equitable principle of laches pursuant to Sec. petitioner reiterates the issues it raised in the Court of Appeals: I. PETITIONER'S "STYLISTIC MR.A. TRADEMARKS AND TECHNOLOGY TRANSFER. 1988. it was only on 18 September 1981 that private respondent filed a petition for cancellation of petitioner's . THE COURT OF APPEALS ERRED IN RULING THAT THE DEFENSE OF ESTOPPEL BY LACHES MUST BE RAISED IN THE PROCEEDINGS BEFORE THE BUREAU OF PATENTS. LEE-LEENS AND LEE-SURES. LEE" since 1 May 1975. THE COURT OF APPEALS ERRED WHEN IT CONSIDERED PRIVATE RESPONDENT'S PRIOR REGISTRATION OF ITS TRADEMARK AND DISREGARDED THE FACT THAT PRIVATE RESPONDENT HAD FAILED TO PROVE COMMERCIAL USE THEREOF BEFORE FILING OF APPLICATION FOR REGISTRATION. yet. THE ISSUE INVOLVED IN THIS CASE IS WHETHER OR NOT PETITIONER'S TRADEMARK SYTLISTIC MR. Equitable principles to govern proceedings. equitable principles of laches. IV. LEE" TRADEMARK CANNOT BE CONFUSED WITH PRIVATE RESPONDENT'S LEE TRADEMARK. LEE. 166.
the date of alleged use by petitioner of its assailed trademark but 27 October 1980. LEE" is entirely different from and not confusingly similar to private respondent's "LEE" trademark. No.certificate of registration for the said trademark. or colorable imitation to labels. counterfeit. Infringement. business or services. or identity of such business. 20 the date the certificate of registration SR No. the delay must be lengthy. The Trademark Law (R. — Any person who shall use. 5054 was published in the Official Gazette and issued to petitioner. should not be 1 May 1975." 19 The reckoning point. 23 More crucial is the issue of confusing similarity between the two trademarks. Similarly. It was only on the date of publication and issuance of the registration certificate that private respondent may be considered "officially" put on notice that petitioner has appropriated or is using said mark. copy or colorably imitable any such mark or trade-name and apply such reproduction. receptacles or advertisements intended to be used upon or in connection with such goods. prints. after all. It asserts that petitioner's trademark tends to mislead and confuse the public and thus constitutes an infringement of its own mark. To be barred from bringing suit on grounds of estoppel and laches. Petitioner vehemently contends that its trademark "STYLISTIC MR. 22 From the time of publication to the time of filing the opposition on 27 July 1984 barely five (5) months had elapsed. offering for sale. business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services. wrappers. counterfeit. therefore." The pertinent provision of R. the only contention in the proceedings below being the presence or absence of confusing similarity between the two trademarks in question. what constitutes. 22. or advertising of any goods.A. which. 166 (Trademark Law) states thus: Sec. any reproduction. is the function and purpose of registration in the supplemental register. counterfeit. No. when private respondent instituted cancellation proceedings on 18 September 1981. shall be liable to a civil action by the registrant for any or all of the remedies herein provided. signs. less than a year had passed. packages. Hence. 166) provides that "marks and tradenames for the supplemental register shall not be published for or be subject to opposition. copy or colorable imitation of any registered mark or trade-name in connection with the sale. . 21 The record is bereft of evidence that private respondent was aware of petitioner's trademark before the date of said publication and issuance. private respondent could hardly be accused of inexcusable delay in filing its notice of opposition to petitioner's application for registration in the principal register since said application was published only on 20 February 1984. Private respondent maintains otherwise. or reproduce. private respondent's notice of opposition to petitioner's application for registration in the principal register was belatedly filed on 27 July 1984. 18 We reject petitioner's contention. 17 Private respondent counters by maintaining that petitioner was barred from raising new issues on appeal. Corollarily. Petitioner's trademark is registered in the supplemental register. without the consent of the registrant. but shall be published on registration in the Official Gazette. copy.A. since the dominant feature therein is the word "LEE.
the likelihood of deception or the mark or name's tendency to confuse. including its wrapper or container. meaning of letters. Inc. This term has been defined as "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers. Duplication or imitation is not necessary. the product's quality. 31 As its title implies. It is unquestionably true that. words. jurisprudence has developed two kinds of tests — the Dominancy Test applied in Asia Brewery. In the history of trademark cases in the Philippines. 495. The . wrapper or container. v. meaning." 26 Colorable imitation does not mean such similitude as amounts to identity. and to cause him to purchase the one supposing it to be the other. xxx xxx xxx . the character of the product's purchasers. . [C. quantity. 579]. substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article. no set rules can be deduced. 489. particularly in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another. no all-embracing rule seems possible in view of the great number of factors which must necessarily be considered in resolving this question of fact. 191 F. Nor does it require that all the details be literally copied. Independent Brewing Co. such as the class of product or business to which the article belongs. circumstances of each case. Neilman Brewing Co. as stated inCoburn vs. infringement takes place. etc. Each case must be decided on its own merits. 25 Proceeding to the task at hand. or size. v.. it has been observed that: In determining whether a particular name or mark is a "colorable imitation" of another. style. size. the essential element of infringement is colorable imitation. . vs. Pflugh (CC) 180 Fed. . Court of Appeals. of the aforesaid provision is easier said than done. and confusion and deception is likely to result. designs and emblems used. even more than in other litigation.Practical application. words. or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives. Puritan Mills. form. If the competing trademark contains the main or essential or dominant features of another. sound. location of the business.: "In trademark cases. the test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement. But likelihood of confusion is a relative concept. however. to be determined only according to the particular. and sometimes peculiar. content. precedent must be studied in the light of the facts of the particular case. Inc. the dominant color. Colorable imitation refers to such similarity in form. special arrangement. the nature of the package. nor it is necessary that the infringing label should suggest an effort to imitate. Court of Appeals 30 and its proponent cases. 27 In determining whether colorable imitation exists. 24 we held: . In Esso Standard Eastern. citing Eagle White Lead Co. . Court of Appeals 28 and other cases 29 and the Holistic Test developed in Del Monte Corporation v. v. Inc... or general appearance of the trademark or tradename with that of the other mark or tradename in their over-all presentation or in their essential." xxx xxx xxx Likewise.
107 F. 34 we noted that: . As a general rule. . what essentially determines the attitudes of the purchaser. Wrangler or even an Armani. . the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. the products involved in the case at bar are. In Del Monte Corporation v. 2d 588. . is the cost of the goods. more or less knowledgeable and familiar with his preference and will not easily be distracted. Maong pants or jeans are not inexpensive. Confusion and deception. in the main. say. then. But mass products. Among these. (Auburn Rubber Corporation vs. the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. a comparison of the words is not the only determinant factor. is less likely. . He is. The trademarks in their entirety as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other." Although on its label the word "LEE" is prominent. Second. soysauce or soap which are of minimal cost. various kinds of jeans. therefore. First. xxx xxx xxx In determining whether the trademarks are confusingly similar.. a Levis. we considered the trademarks involved as a whole and rule that petitioner's "STYLISTIC MR. . noticeable and substantial enough to matter especially in the light of the following variables that must be factored in. specifically his inclination to be cautious.) 32 xxx xxx xxx On the other side of the spectrum. . Accordingly. a person who buys a box of candies will not exercise as much care as one who buys an expensive watch. comparative and analytical investigation. Expensive and valuable items are normally bought only after deliberate. the trademark should be considered as a whole and not piecemeal. 33 xxx xxx xxx Applying the foregoing tenets to the present controversy and taking into account the factual circumstances of this case.question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers. the average Filipino consumer generally buys his jeans by brand. . and matters of everyday purchase requiring frequent replacement are bought by the casual consumer without great care. like his beer. To be sure. He does not ask the sales clerk for generic jeans but for. Honover Rubber Co. an ordinary buyer does not exercise as much prudence in buying an article for which he pays a few centavos as he does in purchasing a more valuable thing. LEE" is not confusingly similar to private respondent's "LEE" trademark. Petitioner's trademark is the whole "STYLISTIC MR. Guess. The dissimilarities between the two marks become conspicuous. Court of Appeals. . LEE. . low priced articles in wide use. These are not your ordinary household items like catsup.
No. 2. Tan Tiao Bok 35 is better suited to the present case.Finally. unless it: xxx xxx xxx (e) Consists of a mark or trade-name which. the goods in question. For in the ." There is no cause for the Court of Appeal's apprehension that petitioner's products might be mistaken as "another variation or line of garments under private respondent's 'LEE' trademark". As we have previously intimated the issue of confusing similarity between trademarks is resolved by considering the distinct characteristics of each case. trade-names and service-marks which shall be known as the principal register. 36 As one would readily observe. or is primarily merely a surname. There. or when applied to or used in connection with the goods.) xxx xxx xxx "LEE" is primarily a surname. business or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them. the "ordinary purchaser" was defined as one "accustomed to buy. when applied to or used in connection with the goods. the ordinary purchaser is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product involved. Act No. 4 of R. taking into account these unique factors. in order to be objectionable. (Emphasis ours. The test of fraudulent simulation is to be found in the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. business or services from the goods. business or services of others shall have the right to register the same on the principal register. and therefore to some extent familiar with. . or the possibility of deception." It is. private respondent's variation follows a standard format "LEERIDERS. 4.A. 166. Rep. Another way of resolving the conflict is to consider the marks involved from the point of view of what marks are registrable pursuant to Sec. trade-name or service-mark used to distinguish his goods. in line with the foregoing discussions. In the present controversy.) Sec." Cast in this particular controversy. — There is hereby established a register of trade-marks. therefore. ." "LEESURES" and "LEELEENS. trade-names and service-marks on the principal register. more credit should be given to the "ordinary purchaser. therefore. particularly paragraph 4 (e): CHAPTER II-A. The definition laid down in Dy Buncio v. must be such as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase. acquire exclusive ownership over and singular use of said term. and who must be indifferent between that and the other. The owner of a trade-mark. we conclude that the similarities in the trademarks in question are not sufficient as to likely cause deception and confusion tantamount to infringement. It has been held that a personal name or surname may not be monopolized as a trademark or tradename as against others of the same name or surname. Private respondent cannot. . 638. Registration of trade-marks. The simulation. of the person who knows nothing about the design which has been counterfeited. business or services of the applicant is merely descriptive or deceptively misdescriptive of them. improbable that the public would immediately and naturally conclude that petitioner's "STYLISTIC MR.— The Principal Register (Inserted by Sec. LEE" is but another variation under private respondent's "LEE" mark. The test is not found in the deception.
(As amended. our municipal law on trademarks regarding the requirement of actual use in the Philippines must subordinate an international agreement inasmuch as the apparent clash is being decided by a municipal tribunal (Mortisen vs. shall be recognized and protected in the same manner and to the same extent as are other property rights to the law.A. 166) 39 were sufficiently expounded upon and qualified in the recent case of Philip Morris. What are registrable. by the government of the foreign country to the Government of the Republic of the Philippines. further. by actual use hereof in manufacture or trade. Registration of Marks and Trade-names.A. with a certified true copy of the foreign law translated into the English language. Paras. to national legislative enactments. and service marks owned by persons. The ownership or possession of trade-mark. and in the service rendered. and its first user has no cause of action against the junior user of "Wellington" as it is incapable of exclusive appropriation. how acquired. in business. 8 Sessions. 37 In addition to the foregoing. may appropriate to his exclusive use a trade-mark. or estoppel. corporations. has not acquired ownership over said mark. 20). That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines. any man may use his name or surname in all legitimate ways.) (Emphasis ours. corporations. trade-names. 2. Withal. heretofore or hereafter appropriated. — Anyone who lawfully produces or deals in merchandise of any kind or who engages in lawful business. Great Britain. — Trade-marks. and such fact is officially certified. (As amended. 1906. service-mark. International Law and World Organization. trade-names. Under the doctrine of incorporation as applied in most countries. "Wellington" is a surname. business or services from others.absence of contract. Sec. we are constrained to agree with petitioner's contention that private respondent failed to prove prior actual commercial use of its "LEE" trademark in the Philippines before filing its application for registration with the BPTTT and hence.) The provisions of the 1965 Paris Convention for the Protection of Industrial Property 38 relied upon by private respondent and Sec. partnerships or associations domiciled in the Philippines and by persons. 93. v.. That said trademarks.) (Emphasis ours. trade-name. Peters. to distinguish his merchandise. 2 and 2-A of the Philippine Trademark Law (R. p. 2-A. or a service-mark not so appropriated by another. or associations domiciled in any foreign country may be registered in accordance with the provisions of this act: Provided. trade-names and service-marks. No. rules of international law are given a standing equal. partnerships. a trade-name. xxx xxx xxx . Court of Appeals: 40 xxx xxx xxx Following universal acquiescence and comity. fraud. Inc. the fact that international law has been made part of the law of the land does not by any means imply the primacy of international law over national law in the municipal sphere.) Sec. No. Ownership of trade-marks. Thus. Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of ownership over a trademark pursuant to Sec. High Court of Judiciary of Scotland. not superior. 166) which explicitly provides that: CHAPTER II. 1971 Ed. or who renders any lawful service in commerce. as in this section provided. or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed: And Provided. 21-A of the Trademark Law (R.
Inc. as early as 1969 to 1973." "LEERIDERS. ownership and exclusive use. A registration certificate serves merely as prima facie evidence. Such right "grows out of their actual use. issue circulars. In Sterling Products International. having obtained several registration certificates for its various trademarks "LEE. xxx xxx xxx Undisputably. It is not conclusive but can and may be rebutted by controverting evidence. private respondent invokes Sec. is qualified. private respondent is the senior registrant. has value: it is an administrative act declaratory of a pre-existing right. thus: Sec. Flowing from this is the trader's right to protection in the trade he has built up and the goodwill he has accumulated from use of the trademark." Adoption is not use. subject to any conditions and limitations stated therein. or its weight as evidence of validity. The underlying reason for all these is that purchasers have come to understand the mark as indicating the origin of the wares. (a foreign corporation) may have the capacity to sue for infringement irrespective of lack of business activity in the Philippines on account of Section 21-A of the Trademark Law but the question of whether they have an exclusive right over their symbol as to justify issuance of the controversial writ will depend on actual use of their trademarks in the Philippines in line with Sections 2 and 2-A of the same law. Registration does not. the entity need not be actually using its trademark in commerce in the Philippines. perfect a trademark right. however. Registration of a trademark. of course. xxx xxx xxx It would seem quite clear that adoption alone of a trademark would not give exclusive right thereto. Such a foreign corporation may have the personality to file a suit for infringement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in the local market. 20. give out price lists on certain goods. One may make advertisements. For trademark is a creation of use. registration alone will not suffice. but also the prior user. . v. the registrant's ownership of the mark or trade-name. It is thus incongruous for petitioners to claim that when a foreign corporation not licensed to do business in the Philippines files a complaint for infringement." and "LEESURES" in both the supplemental and principal registers. Certificate of registration prima facie evidence of validity. and of the registrant's exclusive right to use the same in connection with the goods. The credibility placed on a certificate of registration of one's trademark. 41 However.In other words. not only the prior registrant.) xxx xxx xxx To augment its arguments that it was. 20 of the Trademark Law. 42 we declared: xxx xxx xxx A rule widely accepted and firmly entrenched because it has come down through the years is that actual use in commerce or business is a prerequisite in the acquisition of the right of ownership over a trademark.Farbenfabriken Bayer Aktiengesellschaft. business or services specified in the certificate. — A certificate of registration of a mark or tradename shall be a prima facie evidence of the validity of the registration. but these alone would not give exclusive right of use. (Emphasis ours.
are instructive: The Trademark Law is very clear. it did not present proof to invest it with exclusive. WHEREFORE.S. 43 Registrations in the supplemental register do not enjoy a similar privilege. Lee. as we have previously discussed are not sufficient. Inc. 50 Our rulings in Pagasa Industrial Corp. Respondent did not expect income from such "samples. For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner's use of its own mark and for failure to establish confusing similarity between said trademarks.. we reverse the findings of the Director of Patents and the Court of Appeals. The findings of facts of the Director of Patents are conclusive upon the Supreme Courtprovided they are supported by substantial evidence.). herein private respondent." The evidence for respondent must be clear. 52 respectively. the aforequoted provision applies only to registrations in the principal register.S. 48 It is well to note that these expenses were incurred only in 1981 and 1982 by LEE (Phils. however. Court of Appeals 51 and Converse Rubber Corp. a wholly owned subsidiary of the H. we give little weight to the numerous vouchers representing various advertising expenses in the Philippines for "LEE" products. yet it failed to fully substantiate its claim that it used in trade or business in the Philippines the subject mark.. petitioner has sufficiently shown that it has been in the business of selling jeans and other garments adopting its "STYLISTIC MR. 45 In the case at bench.Moreover. We cannot give credence to private respondent's claim that its "LEE" mark first reached the Philippines in the 1960's through local sales by the Post Exchanges of the U. the fact of exporting them to the Philippines cannot be considered to be equivalent to the "use" contemplated by law. Military Bases in the Philippines 46 based as it was solely on the self-serving statements of Mr. It requires actual commercial use of the mark prior to its registration... After a meticulous study of the records. Edward Poste. The invoices submitted by respondent which were dated way back in 1957 show that the zippers sent to the Philippines were to be used as "samples" and "of no commercial value.D. xxx xxx xxx The sales invoices provide the best proof that there were actual sales of petitioner's product in the country and that there was actual use for a protracted period of petitioner's trademark or part thereof through these sales. A supplemental register was created precisely for the registration of marks which are not registrable on the principal register due to some defects. Co.A. Universal Rubber Products. continuous adoption of the trademark which should consist among others. . LEE" trademark since 1975 as evidenced by appropriate sales invoices to various stores and retailers. definite and free from inconsistencies. the questioned decision and resolution are hereby REVERSED and SET ASIDE. and no proof were presented to show that they were subsequently sold in the Philippines. 47Similarly. after it entered into a licensing agreement with private respondent on 11 May 1981. private respondent's action for infringement must necessarily fail. There is no dispute that respondent corporation was the first registrant. v.. Inc. Inc. 44 The determination as to who is the prior user of the trademark is a question of fact and it is this Court's working principle not to disturb the findings of the Director of Patents on this issue in the absence of any showing of grave abuse of discretion. General Manager of Lee (Phils. premises considered. v. of considerable sales since its first use. Inc. we observe that the Director of Patents and the Court of Appeals relied mainly on the registration certificates as proof of use by private respondent of the trademark "LEE" which. "Samples" are not for sale and therefore. 49 On the other hand. U.)." There were no receipts to establish sale.
spelling. FLAVOR MASTER. the other words that are used respectively with said word in the three trademarks are very different from each other – in meaning.A. reversed Decision No. alleging that. Trademarks and Technology Transfer (BPTTT). a Swiss company registered under Swiss laws and domiciled in Switzerland. and NESTLE PHILIPPINES. J. private respondent CFC Corporation filed with the BPTTT an application for the registration of the trademark "FLAVOR MASTER" for instant coffee.. Inc. Petitioner Societe Des Produits Nestle.SO ORDERED. 52994. 1993.R. YNARES-SANTIAGO. was published in the July 18. under Serial No.. 2 which denied private respondent’s application for registration of the trade-mark.A. respondents. 24101. On January 18. in the assailed decision dated September 23. CFC argued that its trademark. if any. SP No. the Court of Appeals. against CFC’s application for registration of the trademark FLAVOR MASTER. the BPTTT denied CFC’s application for registration. FLAVOR MASTER. "is clearly very different from any of Nestle’s alleged trademarks MASTER ROAST and MASTER BLEND.. by CFC of the trademark FLAVOR MASTER and its registration would likely cause confusion in the trade. is not confusingly similar with the former’s trademarks. S. as the dominant word present in the three (3) trademarks is "MASTER". pronunciation. filed an unverified Notice of Opposition.. 24101. 1990. 90-47 dated December 27. vs. or that the goods of CFC might be mistaken as having originated from the latter. a verified Notice of Opposition was filed by Nestle Philippines. 112012 April 4. MASTER ROAST and MASTER BLEND.1 reversing and setting aside the decision of the Bureau of Patents. SP No. "except for the word MASTER (which cannot be exclusively appropriated by any person for being a descriptive or generic name)." In its Decision No. The application. petitioners. by considering their pictorial representations. as a matter of due course.. 3 claiming that the trademark of private respondent’s product is "confusingly similar to its trademarks for coffee and coffee extracts. G.R. The Court of Appeals ruled: . 2001 SOCIETE DES PRODUITS NESTLE. and sound". where it was docketed as CA-G. INC. CFC further argued that its trademark.A. S. to wit: MASTER ROAST and MASTER BLEND. 5 CFC elevated the matter to the Court of Appeals. or deceive purchasers and would falsely suggest to the purchasing public a connection in the business of Nestle.R." Likewise. especially when the marks are viewed in their entirety. 1988 issue of the BPTTT’s Official Gazette. COURT OF APPEALS and CFC CORPORATION. a Philippine corporation and a licensee of Societe Des Produits Nestle S.: This is a petition for review assailing the Decision of the Court of Appeals in CA-G. color schemes and the letters of their respective labels. FLAVOR MASTER. 90-47 of the BPTTT and ordered the Director of Patents to approve CFC’s application. No. The Court of Appeals defined the issue thus: "Does appellant CFC’s trade dress bear a striking resemblance with appellee’s trademarks as to create in the purchasing public’s mind the mistaken impression that both coffee products come from one and the same source?" As stated above. In answer to the two oppositions. 4 Nestle claimed that the use. 1984.
(7 SCRA 768) AND AMERICAN CYANAMID CO. MEAD JOHNSON & CO. shaded in mocha with thin white inner and outer sidings per letter and identically lettered except for the slightly protruding bottom curve of the letter "S" adjoining the bottom tip of the letter "A" in the word "MASTER". Just above the word "MASTER" is a red window like portrait of what appears to be a coffee shrub clad in gold. Occupying the center is a square-shaped configuration shaded with dark brown and picturing a heap of coffee beans. with the letter "M" further capitalized. 90-47) OF THE DIRECTOR OF THE BUREAU OF PATENTS. is almost double the width of appellant CFC’s. slim and slanted letters. The letters are shaded with red and bounded with thin gold-colored inner and outer sidings. To borrow the words of the Supreme Court in American Cyanamid Co. Appellant CFC’s label (Exhibit "4") is predominantly a blend of dark and lighter shade of orange where the words "FLAVOR MASTER". are printed across the top of a simmering red coffee cup. ET AL. (17 SCRA 128). contents and pictorial arrangement.6 Petitioners are now before this Court on the following assignment of errors: 1. "FLAVOR" appearing on top of "MASTER". if any. where the word "MASTER" is inscribed in the middle. of its trademarks were used or appropriated in appellant CFC’s own. V. . At the top is printed in brown color the word "NESCAFE" against a white backdrop. RESPONDENT COURT ERRED IN FINDING THAT APPELLANT CFC’S TRADE DRESS IS BEYOND THE SCOPE OF THE PROSCRIPTION LAID DOWN BY JURISPRUDENCE AND THE TRADEMARK LAW. in short. 4. TRADEMARKS AND TECHNOLOGY TRANSFER (BPTTT) DATED DECEMBER 27. RESPONDENT COURT ERRED IN INVOKING THE TOTALITY RULE APPLIED IN THE CASES OF BRISTOL MYERS V. v. "MASTER" in appellees’ label is printed in taller capital letters. The answer therefore to the query is a clear-cut NO.Were We to take even a lackadaisical glance at the overall appearance of the contending marks. The distinctions are so well-defined so as to foreclose any probability or likelihood of confusion or deception on the part of the normally intelligent buyer when he or she encounters both coffee products at the grocery shelf. Appellees’ "MASTER ROAST" label (Exhibit "7"). RESPONDENT COURT GRAVELY ERRED IN REVERSING AND SETTING ASIDE THE DECISION (NO. V. white print. the letters are bolder and taller as compared to appellant CFC’s and the word "MASTER" appears on top of the word "BLEND" and below it are the words "100% pure instant coffee" printed in small letters. RATHER THAN THE TEST OF DOMINANCY. Director of Patents (76 SCRA 568). 1990. From the foregoing description. DIRECTOR OF PATENTS. the physical discrepancies between appellant CFC’s and appellee’s respective logos are so ostensible that the casual purchaser cannot likely mistake one for the other. DIRECTOR OF PATENTS (76 SCRA 568). the glaring dissimilarities in their presentation far outweigh and dispel any aspect of similitude. the general appearances of the labels bearing the respective trademarks are so distinct from each other that appellees cannot assert that the dominant features. And further below are the inscriptions in white: "A selection of prime Arabica and Robusta coffee. Below the "MASTER" appears the word "ROAST" impressed in smaller.. 3. appellant CFC’s and appellees’ labels are entirely different in size. NVJ VAN DORF LTD. Underneath "FLAVOR MASTER" appears "Premium Instant Coffee" printed in white. colors. 2. background." With regard to appellees’ "MASTER BLEND" label (Exhibit "6") of which only a xeroxed copy is submitted. however. The petition is impressed with merit. while the contending marks depict the same product. RESPONDENT COURT ERRED IN HOLDING THAT THE TOTALITY RULE. APPLIES TO THE CASE.
name. unless it: xxx xxx xxx (d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned. trade-names and service-marks on the principal register.There is hereby established a register of trade-marks. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants. 166 or the Trademark Law. symbol or device adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured and sold by others.as to be likely. trade-names and service marks which shall be known as the principal register. or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives. Section 4 (d) of Republic Act No. Hence. Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons. Once this is attained."7 A manufacturer’s trademark is entitled to protection. the owner can obtain legal redress. as amended. v.10 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. 9 In determining if colorable imitation exists. Kresge Co. Co. Whatever the means employed. If it is true that we live by symbols. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. xxx xxx xxx (Emphasis supplied) The law prescribes a more stringent standard in that there should not only be confusing similarity but that it should not likely cause confusion or mistake or deceive purchasers. jurisprudence has developed two kinds of tests . business or services from the goods. In other words. the trade-mark owner has something of value. as to cause him to purchase the one supposing it to be the other.to cause confusion or mistake or to deceive purchasers. or what he has been led to believe he wants.11 . business or services of others shall have the right to register the same on the principal register.the Dominancy Test and the Holistic Test. in the minds of potential customers. The owner of a trade-mark. the aim is the same --. provides thus: Registration of trade-marks. As Mr. . On the other side of the spectrum. when applied to or used in connection with the goods. which was in force at the time. the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity.A trademark has been generally defined as "any word.:8 The protection of trade-marks is the law’s recognition of the psychological function of symbols. the desirability of the commodity upon which it appears.to convey through the mark. trade-name or service-mark used to distinguish his goods. If another poaches upon the commercial magnetism of the symbol he has created. the issue is whether the trademark FLAVOR MASTER is a colorable imitation of the trademarks MASTER ROAST and MASTER BLEND. it is no less true that we purchase goods by them. business or services of the applicant. the question in this case is whether there is a likelihood that the trademark FLAVOR MASTER may cause confusion or mistake or may deceive purchasers that said product is the same or is manufactured by the same company. Justice Frankfurter observed in the case of Mishawaka Mfg.
as what appellees would want it to be when they essentially argue that much of the confusion springs from appellant CFC’s use of the word "MASTER" which appellees claim to be the dominant feature of their own trademarks that captivates the prospective consumers. not usually to any part of it (Del Monte Corp. to be determined only according to the particular. v.." From this perspective. in general. precedent must be studied in light of the facts of the particular case. v. Director of Patents. Inc. Be it further emphasized that the discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other (Mead Johnson & Co. citing Mead Johnson & Co..19 The totality rule states that "the test is not simply to take their words . in relation to the goods to which they are attached (Bristol Myers Company v. et al. Court of Appeals16 is. is the touchstone. CA.. it is attributable to the marks as a totality. 17 SCRA 128. v. NVJ Van Dorf Ltd. even more than in any other litigation. and sometimes peculiar. Director of Patents. Since Del Monte alleged that Sunshine’s logo was confusingly similar to or was a colorable imitation of the former’s logo. NVJ Van Dorp. the Court of Appeals erred in applying the totality rule as defined in the cases of Bristol Myers v. NVJ Van Dorp. In trademark cases. Court of Appeals. the Court of Appeals held that: The determination of whether two trademarks are indeed confusingly similar must be taken from the viewpoint of the ordinary purchasers who are. v. there was a need to go into the details of the two logos as well as the shapes of the labels or marks. no set rules can be deduced. Indeed. et al. held that: "The question is not whether the two articles are distinguishable by their labels when set side by side but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard.. Director of Patents. and are therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. As observed in several cases.18 and American Cyanamid Co.17 Mead Johnson & Co.14 we ruled that the likelihood of confusion is a relative concept. however. The same criteria. v. the complexities attendant to an accurate assessment of likelihood of confusion require that the entire panoply of elements constituting the relevant factual landscape be comprehensively examined. as they appear in the respective labels.In the case at bar. cannot be applied in the instant petition as the facts and circumstances herein are peculiarly different from those in the Del Monte case. particularly in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another. CA. The wisdom of the likelihood of confusion test lies in its recognition that each trademark infringement case presents its own unique set of facts. In the same manner.13 In Esso Standard. It must be emphasized that in infringement or trademark cases in the Philippines. 7 SCRA 768). 15 The Court of Appeals’ application of the case of Del Monte Corporation v. misplaced. buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods. The mark must be considered as a whole and not as dissected. Both corporations market the catsup product which is an inexpensive and common household item. the words or lettering on the labels or marks and the shapes and colors of the labels or marks.12 The Court of Appeals applied some judicial precedents which are not on all fours with this case. circumstances of each case. undiscerningly rash in buying the more common and less expensive household products like coffee.. In Del Monte. therefore. the brands printed on the labels. Ltd. supra). The Supreme Court in Del Monte Corporation v. Ltd. Each case must be decided on its own merits. is such as to likely result in his confounding it with the original. supra). v. the test of similarity is to consider the two marks in their entirety. 181 SCRA 410. If the buyer is deceived. the issue was about the alleged similarity of Del Monte’s logo with that of Sunshine Sauce Manufacturing Industries. the general impression of the ordinary purchaser.
ALASKA refers to "Foods and Ingredients of Foods" falling under Class 47. other than the fact that both Nestle’s and CFC’s products are inexpensive and common household items. undiscerningly rash in buying the more common and less expensive household products like coffee. for ALASKA. As the Court of Appeals itself has stated. both products are not identical as SULMET’s label indicates that it is used in a drinking water solution while that of SULMETINE indicates that they are tablets. in general. Nestle points out that the dominancy test should have been applied to determine whether there is a confusing similarity between CFC’s FLAVOR MASTER and Nestle’s MASTER ROAST and MASTER BLEND. the differences between ALACTA and ALASKA are glaring and striking to the eye. As this Court has pointed above. That is the reason why in trademark cases. there could be more telling differences than similarities as to make a jurisprudential precedent inapplicable. In any case. The said products are not the usual "common and inexpensive" household items which an "undiscerningly rash" buyer would unthinkingly buy. "[t]he determination of whether two trademarks are indeed confusingly similar must be taken from the viewpoint of the ordinary purchasers who are. On the other hand. one is dispensable only upon doctor’s prescription. In the above cases cited by the Court of Appeals to justify the application of the totality or holistic test to this instant case. It cannot also be said that the products in the above cases can be bought off the shelf except. ALACTA refers to "Pharmaceutical Preparations which Supply Nutritional Needs. judicial fora should not readily apply a certain test or standard just because of seeming similarities. This Court held that the addition of the syllable "INE" in respondent’s label is sufficient to distinguish respondent’s product or trademark from that of petitioner." falling under Class 6 of the official classification of Medicines and Pharmaceutical Preparations to be used as prescribed by physicians. What is being questioned here is the use by CFC of the trademark MASTER. the similarity ends there.In the case at bar. In the American Cyanamid case. both of which are chemical compounds present in the article manufactured by the contending parties. the factual circumstances are substantially different. while the other may be purchased over-the-counter. and does not require medical prescription. perhaps. Also. In view of the difficulty of applying jurisprudential precedents to trademark cases due to the peculiarity of each case. the discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both labels. Also. We agree. as the former is derived from a combination of the syllables "SUL" which is derived from sulfa and "MET" from methyl."20 As this Court has often declared. both labels have strikingly different backgrounds and surroundings. jurisprudential precedents should be applied only to a case if they are specifically in point. and their names are practically the same in spelling and pronunciation. each case must be studied according to the peculiar circumstances of each case. both products are for medicinal veterinary use and the buyer will be more wary of the nature of the product he is buying. In the Bristol Myers case. In addition. the word SULMET is distinguishable from the word SULMETINE. In determining whether two trademarks are confusingly similar. In the Mead Johnson case. this Court held that although both BIOFERIN and BUFFERIN are primarily used for the relief of pains such as headaches and colds.and compare the spelling and pronunciation of said words. and are therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. 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."21 .
As such.22 The Court of Appeals held that the test to be applied should be the totality or holistic test reasoning. 4) one’s attention is easily attracted to the word . if the ordinary purchaser is "undiscerningly rash". and would therefore be "less inclined to closely examine specific details of similarities and dissimilarities" between the two competing products. It is the observation of this Office that much of the dominance which the word MASTER has acquired through Opposer’s advertising schemes is carried over when the same is incorporated into respondent-applicant’s trademark FLAVOR MASTER. similarities or dissimilarities. Rather. For this reason.23 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. respectively. since what is of paramount consideration is the ordinary purchaser who is. connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. This can be gleaned from the fact that Robert Jaworski and Atty. then he would not have the time nor the inclination to make a keen and perceptive examination of the physical discrepancies in the trademarks of the products in order to exercise his choice. it is sufficiently established that the word MASTER is the dominant feature of opposer’s mark. Further. are given the titles Master of the Game and Master of the Talk Show. the word MASTER has always been given emphasis in the TV and radio commercials and other advertisements made in promoting the product.The basis for the Court of Appeals’ application of the totality or holistic test is the "ordinary purchaser" buying the product under "normally prevalent conditions in trade" and the attention such products normally elicit from said ordinary purchaser. In due time. It must be emphasized that the products bearing the trademarks in question are "inexpensive and common" household items bought off the shelf by "undiscerningly rash" purchasers. x x x. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features. If the ordinary purchaser is "undiscerningly rash" in buying such common and inexpensive household products as instant coffee. This Court cannot agree with the above reasoning.. 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. and is therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. 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. the personalities engaged to promote the product. The word MASTER is printed across the middle portion of the label in bold letters almost twice the size of the printed word ROAST. this Court believes that the dominancy test is more suitable to this case in light of its peculiar factual milieu. this Court cannot agree that totality test is the one applicable in this case. Moreover. aural. Ric Puno Jr. undiscerningly rash in buying the more common and less expensive household products like coffee. An ordinary purchaser or buyer does not usually make such scrutiny nor does he usually have the time to do so. when one looks at the label bearing the trademark FLAVOR MASTER (Exh. in general. considering that the product is an inexpensive and common household item. The average shopper is usually in a hurry and does not inspect every product on the shelf as if he were browsing in a library.. While this Court agrees with the Court of Appeals’ detailed enumeration of differences between the respective trademarks of the two coffee products. this Court agrees with the BPTTT when it applied the test of dominancy and held that: From the evidence at hand. Thus. because of these advertising schemes the mind of the buying public had come to learn to associate the word MASTER with the opposer’s goods.
A unique combination of the best coffee beans . Ric Puno Jr. the coffee masterpiece from Nescafe. promoted its products as "coffee perfection worthy of masters like Robert Jaworski and Ric Puno Jr." In associating its coffee products with the term "MASTER" and thereby impressing them with the attributes of said term. over time. they nevertheless involve "an element of incongruity. 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." 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. A master strategist. On the other hand. has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle." Such terms. Rich and deeply satisfying. qualities or characteristics of the goods." or comprise the "genus of which the particular product is a species. Nestle advertised its products thus: Robert Jaworski. Coffee perfection worthy of masters like Robert Jaworski. MASTER ROAST. Therefore. is master. While suggestive marks are capable of shedding "some light" upon certain characteristics of the goods or services in dispute. Rather. the world’s coffee masters. . as understood in its normal and natural sense." This is evident from the advertising scheme adopted by Nestle in promoting its coffee products. Living Legend. in the phraseology of one court. Sure in every shot he makes." and are not legally protectable. Robusta for strength and body. functions.MASTER.Arabica for superior taste and aroma." or are "commonly used as the name or description of a kind of goods." or "refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product. Robusta for strength and body. Nestle has. Master Roast. therefore. Truly distinctive and rich in flavor.Arabica for superior taste and aroma. the word "MASTER" is neither a generic nor a descriptive term. it "forthwith conveys the characteristics. Confident. As such. the term "MASTER" is a suggestive term brought about by the advertising scheme of Nestle. In the art of coffee-making. the possibility of confusion as to the goods which bear the competing marks or as to the origins thereof is not farfetched. require "imagination. can create. nothing equals Master Roast. A masterpiece only NESCAFE." are eligible for protection in the absence of secondary meaning. Made from a unique combination of the best coffee beans . In one word. Equally unmatched." or "imply reference to every member of a genus and the exclusion of individuating characters. Witty.29 The term "MASTER". therefore." or "if it forthwith conveys an immediate idea of the ingredients. As such. may be legally protected. Well-informed. unmatched. Fast on his feet. x x x. In this case. "which subtly connote something about the product. rather than to the dissimilarities that exist. Suggestive terms27 are those which. Coffee perfection worthy of masters like Ric Puno Jr. a term is descriptive26 and therefore invalid as a trademark if. thought and perception to reach a conclusion as to the nature of the goods. 28 In the art of conversation. A true hard court hero.24 In addition. MASTER ROAST." or " imaginative effort on the part of the observer. the world’s coffee masters. said term can not be invalidated as a trademark and. qualities or ingredients of a product to one who has never seen it and does not know what it is." "figurativeness. Generic terms25 are those which constitute "the common descriptive name of an article or substance.
in view of the foregoing.In closing. it may not be amiss to quote the case of American Chicle Co. 24101 is REVERSED and SET ASIDE and the decision of the Bureau of Patents. SO ORDERED. the decision of the Court of Appeals in CA-G. Indeed. 3200 and 3202 is REINSTATED. as soon as we see that a second comer in a market has. . Trademarks and Technology Transfer in Inter Partes Cases Nos.R. . . Inc. Topps Chewing Gum. [W]e feel bound to compel him to exercise his ingenuity in quarters further afield. it is generally true that. for no reason that he can assign. v. ..30 to wit: Why it should have chosen a mark that had long been employed by [plaintiff] and had become known to the trade instead of adopting some other means of identifying its goods is hard to see unless there was a deliberate purpose to obtain some advantage from the trade that [plaintiff] had built up. SP No. plagiarized the "make-up" of an earlier comer. we need no more. WHEREFORE.
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