Compiled Digests for 12-5 (Incomplete)

8/21/2019 Compiled Digests for 12-5 (Incomplete)

1/18

1. US v Kyburz2. Compania v Alhambra

Facts:: 1. Plaintiff Compania claims to have appropriated

and own exclusive right to use the word "Isabela" on

cigarettes.

2. Defendant before the commencement of the action

manufactured cigarettes offering them to public with

the name "Alhambra Isabelas".

3. Plaintiff claims that there is a violation or

infringement of the trade-name "Isabela" and unfair

competition arising out of the use by defendant of the

word "Isabelas" in their cigarette packages.

4. Trial court ruled in favor of plaintiff on the basis of

the trade-mark violation.

5. The defendant appealed from the judgment of the

trial court declaring plaintiff's rights in the word

"Isabela" and prohibiting it from the use thereof and

made a motion to suspend the operation of the

injunction until the case could be resolved finally on

appeal. That motion was denied and the defendant

later made the same motion to the Supreme Court,which was also denied. In spite of the existence of the

injunction the defendant continued to use the words

"Alhambra Isabelas" on its cigarettes;

6. Thereafter the defendant placed on its cigarettes the

words, "Alhambra Isabela," simply changing the word

"Isabelas" to "Isabela." Hence, this petition.

Note: there was a change in the theory of the case from

unfair competition to violation of a trade-mark.

Issue: WoN there is a violation of a trade-name rights ofthe Plaintiff in the word "Isabela" thus Plaintiff can

recover damages

Held:NO

Rights of action for the violation of a trade-mark or

trade-name or to restrain unfair competition are

conferred by statute.

The Act is No. 666 of the Philippine Commission and

confers a right of action in three cases (1) for the

violation of a trade-mark, (2) a trade-name, and (3) to

restrain unfair competition.

The statute founds the cause of action in the first two

cases exclusively on the invasion of the right of property

which the statute gives in the trade-mark or trade-

name.

These actions are not based on fraud nor is the right

given on the theory of unfair competition. It is founded

solely in the property which the statute creates in the

trade-mark or trade-name. property right.

These cases trademark and tradename- are dealt

with on the theory of patents, giving the owner a right

in the thing similar to the right created by a patent

No allegation or proof of fraud is necessary

The action based on UNFAIR COMPETITION is based

exclusively on fraud committed on the public rathe

than fraud committed on the plaintiff

o To prove such the defendant must be proven to have

made the general appearance of the goods the same

with that of the plaintiff in order to influence and

deceive the publico The plaintiff must prove that there is an intent to

deceive the public before plaintiff can recover

THEREFORE, an action for the violation of a trade

name cannot be carried on in conjunction with an

action of unfair competition. The facts which wil

support an action for the violation of a trade-name wil

not support an action of unfair competition

o An action of unfair competition is based exclusively on

the appearance of the goods as they are exposed fo

sale; while, under the statute, the trade-name; unlike

the trade-mark, applies exclusively to the business

profession, trade or occupation of the plaintiff and, as a

consequence, it is not essential that the trade-name

appear on plaintiff's goods or go into the market with

them

Plaintiff's action cannot prosper

o there is no claim here based on the infringement o

violation of the trade-mark just described, nor is there

contention or claim of any kind that the use of the word

"Isabela" is a violation or an infringement of the trade

name "La Flor de la Isabela."

o The action is not for the violation of the trade-name

"La Flor de la Isabela," but for the violation of anentirely different trade-name, namely, "Isabela." The

exclusive right to use this name, plaintiff claims arises

from two causes: First, the contraction of the phrase "La

Flor de la Isabela" into the word "Isabela" by popula

expression and use and second, the use for more than

twenty years of the word "Isabela." In view of the fact

that there is no claim of an infringement of the trade

name "La Flor de la Isabela," these two claims are

identical; for, there could have been no contraction

brought about by popular expression except after long

lapse of time. The contraction of the phrase into theword would create no rights, there being no

registration, unless it resulted from long use. Therefore

to establish a right in the word, the contraction must be

shown to have existed for a length of time equivalent to

that which would be necessary to give the word

"Isabela" the dignity and legal status of a trade-name. If

therefore, it results from the evidence in this action tha

the word "Isabela" has not been used by the plaintiff fo

a period of time sufficient to give it the special value

necessary to bring it within the law relating to trade


2/18

names (if it be admitted for the moment that that could

be done), then the plaintiff must fail, whether it base its

action on contraction, or use, or both.

3. Mipuri v CA4. Shangrila v St Francis

Petitioner St. Francis Square Development Corporation(SFSDC) caused the construction of St. Francis CommercialCenter (to be named later on as St. Francis Square) which

became known for its bars, restaurants, banks and otherestablishments. SFSDC filed a petition for rehabilitation,attached to this was its plan to construct a building to benamed Saint Francis Towers. Respondents The ShangGrand Towers Corporation (TSGTC) and EPHI venturedinto a real estate project along the same street as St.Francis Square and named them The St. Francis Towers

and St. Francis Shangri-la Place.SFSDC filed a complaint against respondents for unfaircompetition and false and fraudulent declaration with theIPO for the alleged unlawful use of the names The St.

Francis Tower and St. Francis Shangri-la Place. SFSDCclaims that its consistent use of the name St. Francis to

identify its property development projects gainedsubstantial goodwill with the general public. Respondents,on the other hand, argued that SFSDC is barred fromclaiming ownership and exclusive use of the name St.

Francis because the same is geographically descriptive ofthe goods or services to which it was attached. The Bureauof Legal Affairs (BLA) of the IPO rendered a decisionfinding respondents liable for unfair competition withusing the term St. Francis Towers and that the term isdevoid of any primary significance as a geographic locationbeing the name of a saint. The director-general reversedthe BLAs decision stating that there was no unfaircompetition since the term St. Francis is a geographically

descriptive term.Issues:1. Whether or not the name St. Francis or St. FrancisTowers as a trademark is geographically descriptive. NO.2. Whether or not respondents use of the name St.Francis constitutes unfair competition or is otherwiseunlawful. YES.Ruling:

The CA ruled that SFSDC, which exclusively andcontinuously used the mark St. Francis for more than adecade, has gained substantial goodwill and reputationand is very much entitled to protection againstindiscriminate usage by other companies. It is also true

that the parties projects are all situated along St. FrancisStreet, however, the court does not believe thatrespondents in using such names meant only to providethe prospective buyer with a factual backdrop as regardsthe place or the street where its commercial buildings arelocated. A scrutiny of respondents flyers reveals that thefraud lies in the patent effort on their part to capitalize thename St. Francis and pass off their real estate projects asbelonging to or having any connection to SFSDC. The courthas also arrived at the conclusion that if St. Francis is ageographically descriptive term, it would still be givenprotection under the Doctrine of Secondary Meaning.

Lastly, the court ruled that respondents are liable forunfair competition and any composite name connectedwith the mark St. Francis would always be confusinglyconstrued as belonging to SFSDC.Notes on Geographic Indications:The criteria in determining whether a geographic term isdescriptively used are: Is the place or region named notedfor the particular goods? If buyer do not really carewhether the goods come from the place named, then this is

evidence that the mark is used in an arbitrary sense. But ifthe geographic term is likely to lead buyers to think thatthe goods come from the place, and the place is welknown for these goods such that it is an importantinducement to purchasers, then the mark is probablydeceptive and cannot be registered and protected.

5. Ang v TeodoroFACTS

Respondent Toribio Teodoro, at first in partnership withJuan Katindig and later as sole proprietor, hascontinuously used "Ang Tibay," both as a trade-mark andas a trade-name, in the manufacture and sale of slippersshoes, and indoor baseballs since 1910. He formallyregistered it as trade-mark on September 29, 1915, and astrade-name on January 3, 1933. The growth of his businessis a thrilling epic of Filipino industry and business capacityStarting in an obscure shop in 1910 with a modest capitalof P210 but with tireless industry and unlimitedperseverance, Toribio Teodoro, then an unknown youngman making slippers with his own hands but now aprominent business magnate and manufacturer with alarge factory operated with modern machinery by a greatnumber of employees, has steadily grown with hisbusiness to which he has dedicated the best years of hislife and which he has expanded to such proportions thathis gross sales from 1918 to 1938 aggregatedP8,787,025.65.Petitioner (defendant below) registered the same trademark "Ang Tibay" for pants and shirts on April 11, 1932and established a factory for the manufacture of saidarticles in the year 1937. In the following year (1938) hergross sales amounted to P422,682.09. Neither the decisionof the trial court nor that of the Court of Appeals showshow much petitioner has spent or advertisement. Butrespondent in his brief says that petitioner "was unable toprove that she had spent a single centavo advertising "AngTibay" shirts and pants prior to 1938. In that year sheadvertised the factory which she had just built and it waswhen this was brought to the attention of the appellee thathe consulted his attorneys and eventually brought thepresent suit."The trial court (Judge Quirico Abeto) presiding absolvedthe defendant from the complaint, with costs against theplaintiff, on the grounds that the two trademarks aredissimilar and are used on different and non-competinggoods; that there had been no exclusive use of the trademark by the plaintiff; and that there had been no fraud inthe use of the said trade-mark by the defendant becausethe goods on which it is used are essentially different fromthose of the plaintiff. The second division of the Court of


3/18

Appeals, composed of Justices Bengson, Padilla, Lopez Vito,Tuason, and Alex Reyes, with Justice Padilla as ponente,reversed that judgment, holding that by uninterrupted anexclusive use since 191 in the manufacture of slippers andshoes, respondent's trade-mark has acquired a secondarymeaning; that the goods or articles on which the twotrade-marks are used are similar or belong to the sameclass; and that the use by petitioner of said trade-markconstitutes a violation of sections 3 and 7 of Act No. 666.

The defendant Director of Commerce did not appeal fromthe decision of the Court of Appeals.ISSUES

1. Is Toribios Ang Tibay trademark valid?2. Had the words Ang Tibay acquired a second

meaning?3. Ang argues that there can neither be infringement

of trade-mark under section 3 nor unfaircompetition under section 7 through her use ofthe words "Ang Tibay" in connection with pantsand shirts, because those articles do not belong tothe same class of merchandise as shoes andslippers.

HELD

1. First. Counsel for the petitioner, in a well-writtenbrief, makes a frontal sledge-hammer attack onthe validity of respondent's trade-mark "AngTibay." He contends that the phrase "Ang Tibay"as employed by the respondent on the articlesmanufactured by him is a descriptive termbecause, "freely translate in English," it means"strong, durable, lasting." He invokes section 2 ofAct No. 666, which provides that words or deviceswhich related only to the name, quality, ordescription of the merchandise cannot be thesubject of a trade-mark.XXX

We find it necessary to go into the etymology and meaningof the Tagalog words "Ang Tibay" to determine whetherthey are a descriptive term, i.e., whether they relate to thequality or description of the merchandise to whichrespondent has applied them as a trade-mark.xxx Thephrase "Ang Tibay" is an exclamation denotingadministration of strength or durability. For instance, onewho tries hard but fails to break an object exclaims, "Angtibay!" (How strong!")xxxFrom all of this we deduce that "Ang Tibay" is not adescriptive term within the meaning of the Trade-MarkLaw but rather a fanciful or coined phrase which mayproperly and legally be appropriated as a trade-mark ortrade-name. In this connection we do not fail to note thatwhen the petitioner herself took the trouble and expenseof securing the registration of these same words as atrademark of her products she or her attorney as well asthe Director of Commerce was undoubtedly convinced thatsaid words (Ang Tibay) were not a descriptive term andhence could be legally used and validly registered as atrade-mark. It seems stultifying and puerile for her now tocontend otherwise, suggestive of the story of sour grapes.

2. xxx. In view of the conclusion we have reachedupon the first assignment of error, it isunnecessary to apply here the doctrine of"secondary meaning" in trade-mark parlance. This

doctrine is to the effect that a word or phraseoriginally incapable of exclusive appropriationwith reference to an article of the market, becausegeographically or otherwise descriptive, mightnevertheless have been used so long and soexclusively by one producer with reference to hisarticle that, in that trade and to that branch of thepurchasing public, the word or phrase has come tomean that the article was his product. (G. & C

Merriam Co. vs. Salfield, 198 F., 369, 373.) Wehave said that the phrase "Ang Tibay," beingneither geographic nor descriptive, was originallycapable of exclusive appropriation as a trade-mark. But were it not so, the application of thedoctrine of secondary meaning made by the Courtof Appeals could nevertheless be fully sustainedbecause, in any event, by respondent's long andexclusive use of said phrase with reference to hisproducts and his business, it has acquired aproprietary connotation. (Landers, Frary, andClark vs. Universal Cooler Corporation, 85 F. [2d]46.)

3. The question raised by petitioner involve thescope and application of sections 3,7, 11, 13, and20 of the Trade-Mark Law (Act No. 666.) Section 3provides that "any person entitled to the exclusiveuse of a trade-mark to designate the origin orownership of goods he has made or deals in, mayrecover damages in a civil actions from any personwho has sold goods of a similar kind, bearing suchtrade-mark . . . The complaining party . . . mayhave a preliminary injunction, . . . and suchinjunction upon final hearing, if the complainant'sproperty in the trade-mark and the defendant'sviolation thereof shall be fully established, shall bemade perpetual, and this injunction shall be partof the judgment for damages to be rendered in thesame cause." Section 7 provides that any personwho, in selling his goods, shall give them thegeneral appearance of the goods of another eitherin the wrapping of the packages, or in the devicesor words thereon, or in any other feature of theirappearance, which would be likely to influencepurchasers to believe that the goods offered arethose of the complainant, shall be guilty of unfaircompetition, and shall be liable to an action fordamages and to an injunction, as in the cases oftrade-mark infringement under section 3. Section11 requires the applicant for registration of atrade-mark to state, among others, "the generaclass of merchandise to which the trade-markclaimed has been appropriated." Section 13provides that no alleged trade-mark or tradename shall be registered which is identical with aregistered or known trade-mark owned byanother and appropriate to the same class ofmerchandise, or which nearly resembles anotherperson's lawful trade-mark or trade-name as to belikely to cause confusion or mistake in the mind ofthe public, or to deceive purchasers. And section 2authorizes the Director of Commerce to


4/18

establish classes of merchandise for the purpose ofthe registration of trade-marks and to determinethe particular description of articles included ineach class; it also provides that "an application forregistration of a trade-mark shall be registeredonly for one class of articles and only for theparticular description of articles mentioned insaid application."

xxx xxx xxx

The burden of petitioner's argument is that under sections11 and 20 the registration by respondent of the trade-mark "Ang Tibay" for shoes and slippers is no safe-guardagainst its being used by petitioner for pants and shirtsbecause the latter do not belong to the same class ofmerchandise or articles as the former; that she cannot beheld guilty of infringement of trade-mark under section 3because respondent's mark is not a valid trade-mark, norhas it acquired a secondary meaning; that pants and shirtsdo not possess the same descriptive properties as shoesand slippers; that neither can she be held guilty of unfaircompetition under section 7 because the use by her of thetrade-mark "Ang Tibay" upon pants and shirts is not likelyto mislead the general public as to their origin orownership; and that there is no showing that she isunfairly or fraudulently using that mark "Ang Tibay"against the respondent. If we were interpreting the statutefor the first time and in the first decade of the twentiethcentury, when it was enacted, and were to construe itstrictly and literally, we might uphold petitioner'scontentions.xxx . Our Trade-mark Law, enacted nearlyforty years ago, has grown in its implications and practicalapplication, like a constitution, in virtue of the lifecontinually breathed into it.xxx xxx xxxIn the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair Trading, the testemployed by the courts to determine whethernoncompeting goods are or are not of the same class isconfusion as to the origin of the goods of the second user.Although two noncompeting articles may be classifiedunder two different classes by the Patent Office becausethey are deemed not to possess the same descriptiveproperties, they would, nevertheless, be held by the courtsto belong to the same class if the simultaneous use onthem of identical or closely similar trade-marks would belikely to cause confusion as to the origin, or personalsource, of the second user's goods. They would beconsidered as not falling under the same class only if theyare so dissimilar or so foreign to each other as to make itunlikely that the purchaser would think the first user madethe second user's goods.xxx xxx xxxWe think reasonable men may not disagree that shoes andshirts are not as unrelated as fountain pens and razorblades, for instance. The mere relation or association of thearticles is not controlling. As may readily be noted fromwhat we have heretofore said, the proprietary connotationthat a trade-mark or trade-name has acquired is of moreparamount consideration. The Court of Appeals found inthis case that by uninterrupted and exclusive use since

1910 of respondent's registered trade-mark on slippersand shoes manufactured by him, it has come to indicatethe origin and ownership of said goods. It is certainly notfarfetched to surmise that the selection by petitioner of thesame trade-mark for pants and shirts was motivated by adesire to get a free ride on the reputation and sellingpower it has acquired at the hands of the respondent. Asobserved in another case, 12 the field from which a personmay select a trade-mark is practically unlimited, and hence

there is no excuse for impinging upon or even closelyapproaching the mark of a business rival. In the unlimitedfield of choice, what could have been petitioner's purposein selecting "Ang Tibay" if not for its fame?

6. Inchausti v Song Fo

Facts: The plaintiff company is a general partnership dulyorganized under the laws of the Philippine Islands and isthe owner of a distillery in the city of Manila known as the"Destileria de Tanduay." The defendants are the membersof a general partnership duly organized according to theprovisions of law, and are the owners and operators of adistillery in the city of Manila known as the "Destileria LaTondea." Both firms are extensively engaged in themanufacture and sale of alcoholic liquors. Plaintiffs causedto be registered in the division of archives, patentscopyrights and trade marks of the Government of thePhilippine Islands a trade-mark for "anisados y alcoholes"It is shown to be a circular design inclosed within twoconcentric circles with the symbol of a demijohn in thecenter; across the face of the design, running in ahorizontal direction are two parallel lines, and betweenthese lines the word "Tanduay". The defendants since1906 have been using, among other labels, affixed to thecorks used in the bottling of their products, a circular labelbearing a design substantially similar to the registeredtrade-mark of plaintiffs. It is a label of practically the samesize as that of plaintiffs. The main difference in the twohorizontal designs lies in the fact that in plaintiffsregistered trade-mark the horizontal design passes acrossthe entire face of both circles, while in the trade-mark usedby defendants the horizontal design passes only across theface of the inner circle. The wording of the two designs isdifferent, but the general position of the wording is thesame in both designs. Defendants' counsel insist thaInchausti & Co. did not have the right to adopt as theirexclusive trade-mark the design shown in Exhibit A, andthat it was error on the part of the lower court to adjudgethat they had such a right.

Issue 1: WON Inchausti and Company has the exclusiveright to use the demijohn symbol?

Held: Yes. It is urged that the demijohn is the onlydistinguishing element in plaintiffs' trade-mark uponwhich they could have been granted an exclusive trade-mark; and it is further contended that a demijohn being awell-known and generally used receptacle for alcoholicliquors, and being universally used by the distilling tradeplaintiffs for that reason are not entitled to the use of thesame as a distinguishing symbol and trade-mark for their


5/18

products. But that plaintiffs are entitled to the exclusiveuse of the above-described trade-mark upon theirproducts does not seem to us to be open to question. Whilethe symbol of a demijohn alone might not be the subject ofan exclusive trade-mark, yet we think that a demijohn usedas it is in plaintiffs' trade-mark in combination with theother distinguishing elements therein may fairly be madethe subject of an exclusive trade-mark. The componentelements of a design are not to be considered separate and

apart; we must look to the design as a whole; to thecombination of those component elements. We are ofopinion that the design is the subject of an exclusive trade-mark, and that the plaintiffs have the exclusive ownershipand right of use in the same by reason of the registrationthereof and their use of this trade-mark in the sale of theirproducts for many years.

Issue 2: WON the trademarks used by the defendants areinfringements of plaintiffs registered trademark?

Held: Yes. An examination of the two trade-marks inquestion reveals a striking similarity in the two designs,but we are not prepared to say that the likeness is suchthat the two designs could be considered one and the sametrade-mark. We can not escape the conclusion that thetwo trade-marks are so nearly alike in design and generalappearance that only the most careful examination coulddetect that they were not in fact the same. Such anexamination discloses the points of difference, but it is tobe remembered that the purchasing public has, ordinarily,no such opportunity to make such an examination nor isthere any reason to impose such an obligation on thepublic.A person thoroughly familiar with the details of design inplaintiffs' trade-mark, and exercising special care inexamining the goods offered for sale and the wording usedon the trade-mark, would hardly be deceived by the trade-mark used by the defendants. It certainly could be only inthe exercise of such careful scrutiny as this, however, thatan intending purchaser could assure himself that the twolabels were different. We are satisfied beyond a reasonabledoubt that the similarity of the two labels, and the furtherfact that they are affixed in the same way by both parties tothe corks used in the bottling of their products, would bethe means of influencing the purchaser to believe that thegoods offered by the defendants were those of plaintiff'smanufacture. We are of opinion that the charge of unfaircompetition is fully sustained by the record. The similarityin the appearance of the goods as packed and offered forsale is so striking that we are unable to attribute this factto anything other than an intent on the part of defendantsto deceive the public and defraud plaintiffs out of theirlegitimate trade, and in this case we infer such intent fromthe likeness of the goods so packed and offered for sale.

7. Ang Si Hieng v Wellington

Facts: FACTS: The plaintiffs-appellants herein are engaged in thebusiness of manufacturing shirts, pants, drawers, andother articles of wear for men, women, and children.

o They have been in the business since 1938 andobtained the registration for the said articles of thetrademark Wellingtono In 1940, they registered the business nameWellington Company and renewed it in 1946.o However, it does not appear that their trademarkfor their articles of wear was again registered after August27, 1938, nor their trade name registered after 1946. Defendant Benjamin Chua applied for the

registration of the business name "Wellington DepartmentStore" on May 7, 1946.o It does not appear, however, that his applicationwith the Bureau of Commerce for the registration of thebusiness name "Wellington Department Store" has beenrenewed, and neither does it appear that the businessname "Wellington Company" applied for by plaintiffsappellants has also been renewed. In the complaint filed by the plaintiff, they allegedthat that the use of the words "Wellington DepartmentStore" as a business name and as a corporate name by thedefendant-appellee deceives the public into buyingdefendant corporation's goods under the mistaken beliefthat the names are the plaintiff's or have the same sourceas plaintiffs' goods, thereby resulting in damage to them.o Hence, they prayed for the defendant be enjoinedfrom using the business name "Wellington DepartmentStore" and the corporate name "Wellington DepartmentStore, Inc" In their answer, the defendants contend that theplaintiffs are engaged in the manufacture or production oshirts, pants, drawers, and other articles of wear for menwomen, and children, and keep a dry goods store for thesale of the same, whereas they (the defendants) are notengaged in the same business or in the manufacture or saleof articles with the trademark "Wellington," and that theyare keeping a store for articles such as shoes, hats, toys,perfumes, bags, apparels, and the like, most of which aredifferent from those manufactured and sold by plaintiffs-appellants. TC- dismissed the complainto holding that the corporate name "WellingtonDepartment Store Inc.," has not been previously acquiredand appropriated by any person or corporation Hence, this appealo The plaintiffs alleged that the appellees' businessis similar and identical to that of the appellants;o that the use of the business name "WellingtonDepartment Store, Inc.," misleads and confuses the public;o that plaintiffs-appellants have acquired aproperty right in the name "Wellington;" and that if thedefendants-appellees are not liable for any infringement otradename, at least they are liable for unfair competition.ISSUE: WON DEFENDANTS SHOULD BE ENJOINED FROMUSING THE SAID TRADENAME BASED ON THEALLEGATIONS OF THE PLAINTIFF.

HELD: The term Wellington is a geographical name or asurname of a person


6/18

o But mere geographical names are ordinarilyregarded as common property, and it is a general rule thatthe same cannot be appropriated as the subject of anexclusive trademark or trade name. (52 Am. Jur., 548.)Even if Wellington were a surname, which is not even thatof the plaintiffs-appellants, it cannot also be validlyregistered as a trade name.o The right to damages and for an injunction forinfringement of a trademark or a trade name is granted

only to those entitled to the exclusive use of a registeredtrademark or trade name. (Section 23, Republic Act No.166.) It is evident, therefore, that no action may lie in favorof the plaintiffs-appellants herein for damages orinjunctive relief for the use by the defendants-appellees ofthe name "Wellington." Based on the allegations of the plaintiff ( actualintent to mislead and defraud the public), the action isevidently one for unfair competition, which is defined inChapter VI, Section 29, of Republic Act No. 166, not one forviolation of a trademark or a tradename.o In order to determine such acts, ll the surroundingcircumstances must be taken into account, especially theidentity or similarity of their business, how far the namesare a true description of the kind and quality of the articlesmanufactured or the business carried on, the extent of theconfusion which may be created or produced, the distancebetween the place of business of one and the other party,etc. While there is similarity between the trademarkor trade name "Wellington Department Store," noconfusion or deception can possibly result or arise fromsuch similarity because the latter is a "department store,"while the former does purport to be so.

o Neither can the public be said to be deceived intothe belief that the goods being sold in defendant's storeoriginate from the plaintiffs, because the evidence showsthat defendant's store sells no shirts or wear bearing thetrademark "Wellington," but other trademarks.o Neither could such deception be by any possibilityproduced because defendant's store is situated on theEscolta, while plaintiffs' store or place of business islocated in another business district far away from theEscolta.o No evidence has been submitted that customers ofthe plaintiffs-appellants had actually been misled intopurchasing defendant's articles and merchandise, for thevery witnesses who have supposedly noted the use ofplaintiffs' trade name do not claim to have actuallypurchased any articles from defendant's store. We agree, therefore, with the trial court thatplaintiffs-appellants have not been able to show theexistence of a cause of action for unfair competitionagainst the defendants-appellees.

8. Lim Hoa v Director of Patents

Facts: Facts:

On April 26, 1949, the Petitioner, Lim Hoa, filedwith the Patent Office an application for theregistration of a trademark, consisting of a

representation of two midget roosters in anattitude of combat with the word Bantamprinted above them.

He claims that he had used said trademark on afood seasoning product since April 25 of that year.

The application was published in the OfficiaGazette in its issue of February, 1953, released forcirculation on April 18, of the same year.

On April 30, 1953, the Agricom Development Co.Inc., a domestic corporation, opposed theapplication on several grounds, among others, thatthe trademark sought to be registered wasconfusingly similar to its register mark, consistingof a pictorial representation of a hen with thewords Hen Brand and Marca Manok, whichmark or brand was also used on a food seasoningproduct, before the use of the trademark by theapplicant.

After considering the application and theopposition thereto, and after comparing the twobrands, the Director of Patents issued his orderwherein he found and held that to allow the

registration of the applicants trademark wouldlikely cause confusion or mistake or deceivepurchasers, and he refused registration of saidtrademark, under Rule 178 of the Revised Rules ofPractice in Trademark Cases, 1953.

Issue: W/N the Director of Patents erred in not allowingthe registration of applicants trademarkHeld:

There is such similarity between the two brands as tocause confusion in the mind of the public that buys thefood seasoning product on the strength and on theindication of the trademark or brand identifying ordistinguishing the same. In the case of Go Tiong Sa vs

Director of Patents, (95 Phil., 1), we had occasion to say thefollowing:cIt has been consistently held that the question ofinfringement of a trademark is to be determined by thetest of dominancy. Similarity in size, form, and color, whilerelevant, is not conclusive. If the competing trademarkcontains the main or essential or dominant features oanother, and confusion and deception is likely to resultinfringement takes place. Duplication or imitation is notnecessary; nor it is necessary that the infringing labelshould suggest an effort to imitate. The question at issue incases of infringement of trademarks is whether the use othe marks involved would be likely to cause confusion or

mistakes in the mind of the public or deceive purchasers.The danger of confusion in trademarks and brands whichare similar may not be so great in the case of commoditiesor articles of relatively great value, such as, radio andtelevision sets, air conditioning units, machinery, etc., forthe prospective buyer, generally the head of the family or abusinessman, before making the purchase, reads thepamphlets and all literature available, describing thearticle he is planning to buy, and perhaps even makescomparisons with similar articles in the market. He is notlikely to be deceived by similarity in the trademarksbecause he makes a more or less thorough study of thesame and may even consult his friends about the relative


7/18

merit and performance of the article or machinery, ascompared to others also for sale. But in the sale of a foodseasoning product, a kitchen article of everydayconsumption, the circumstances are far different. Saidproduct is generally purchased by cooks and householdhelp, sometimes illiterate who are guided by pictorialrepresentations and the sound of the word descriptive ofsaid representation. The two roosters appearing in thetrademark of the applicant and the hen appearing on the

trademark of the Oppositor, although of different sexes,belong to the same family of chicken, known as manok inall the principal dialects of the Philippines, and when acook or a household help or even a housewife buys a foodseasoning product for the kitchen the brand of Manok orMarca Manok would most likely be upper most in hermind and would influence her in selecting the product,regardless of whether the brand pictures a hen or arooster or two roosters. To her, they are all manok.Therein lies the confusion, even deception.

9. Arce Sons and Company v Selecta Biscuit Company

10. Romero v Maiden Form

11. Etherpa v Director of Patents

12. Marvex Commercial v Petra Hawpia

Facts: Petra Hawpia & Co., a partnership duly organizedunder the laws of thePhilippines and doing business at 543 M. de Santos (BoticaDivisoria), Manila(hereinafter referred to as the applicant), on October 14,1958 filed a petition for theregistration of the trademark "LIONPAS" used onmedicated plaster, with the PhilippinePatent Office,asserting its continuous use in the Philippines since June 9,1958. The Marvex Commercial Co., Inc., a corporation alsoduly organized under the laws of the Philippines(hereinafter referred to as the oppositor), on July 24, 1959filed an opposition thereto, alleging that the registration ofsuch trademark would violate its right to and interest inthe trademark "SALONPAS" used on another medicatedplaster, whichis registered in its name under Certificate of Registration5486, issued by the Director ofPatents on September 29, 1956, and that both trademarkswhen used on medicated plaster would mislead the publicas they are confusingly similar. After due hearing, theDirector of Patents in his decision of August 18, 1961dismissed the opposition and gave due course to thepetition, stating in part that "confusion, mistake, ordeception among the purchasers will not likely andreasonably occur" whenboth trademarks are applied to medicated plaster. Theoppositor moved to have the decision reconsidered. Thismotion was denied in a resolution of November 27, 1961.The oppositor then interposed the present appeal.ISSUE: (1) Is the applicant the owner of the trademark"LIONPAS"? (2) Is the trademark

"LIONPAS" confusingly similar to the trade mark"SALONPAS"?HELD: Director of Patents found, on the strength ofexhibits 5 and 6 for the applicant, that the latter has"satisfactorily shown" its ownership of the trademarksought to be registered. Exhibit 5 is a letter dated June 201958, sent by "OSAKA BOEKI KAISHA, LTD." to theapplicant which tends to show that the former, for a $1consideration, has assigned, ceded, and conveyed all its

"rights, interests and goodwill in the tradename LIONPASMedicated Plaster . . ." in favor of the latter.A careful scrutiny of exh. 5 will reveal, however, that thesender of the letter, "OSAKA BOEKI KAISHA, LTD.", andwhich appears to be the seller, is merely a representativeof the manufacturer "ASUNARO PHARMACEUTICALINDUSTRY CO." There is noproof that as such representative, the former has beenauthorized by the latter to sell the trademark in questionMoreover, exh. 5 on its face appears to have been signedonly by someone whose position in the company's"Sundries Dept." is not described; the signature is notlegible.It is even contradicted by exh. 6. While exh. 5 shows that"OSAKA BOEKI KAISHA,LTD." is a representative of "ASUNARO PHARMACEUTICALINDUSTRY CO."; exh. 6 asserts that the former is not arepresentative of the latter, but that it is the owner of thetrademark "LIONPAS" (par. 2, exh. 6). At all events, neitheraverment can be accorded the weight of an assignment ofownership of the trademark in question under the TradeMark Law. Exh. 5 is not acknowledged. Exh. 6 does notbear the acknowledgment contemplated by the aforesaidlaw particularly by the last paragraph of section 37 andparagraph 2 of section 31 of R. A. 166, as amended."The assignment must be in writing, acknowledged beforea notary public or other officer authorized to administeroaths or perform other notarial acts and certified underthe hand and official seal of the notary or other officer."(Sec. 31, par. 2)In this case, although a sheet of paper isattached to exh. 6, on which is typewritten a certificationthat the signatures of the presidents of the two namedcompanies (referring to the signatures inexh. 6) "have been duly written by themselves", this sheetis unmarked, unpaged, unsigned, undated and unsealedWe have thumbed the record in quest of any definitiveevidence that it is a correct translation of the Japanesecharacters found on another unmarked and unpaged sheetand have found none. It is our considered view that thetrade mark "SALONPAS" and "LIONPAS" areconfusingly similar in sound. Both these words have thesame suffix, "PAS", which is used to denote a plaster thatadheres to the body with curative power. When the twowords are pronounced, the sound effects are confusinglysimilar. And where goods are advertised over the radiosimilarity in sound is of special significance. Theimportance of this rule is emphasized by the increase ofradio advertising in whichwe are deprived of the help of our eyes and must dependentirely on the ear.In the case at bar, "SALONPAS" and "LIONPAS", whenspoken, sound very much alike. Similarity of sound is


8/18

sufficient ground for this Court to rule that the two marksare confusingly similar when applied to merchandise ofthe same descriptive properties.

13. Sta. Ana v Maliwat

14. American Wire v Dir. Of Patents

Facts: Petitioner company (AWCC) is a business engaged in

the electronics business. The petitioner has long been theregistered owner of the trademark DURAFLEX electricwires since 1958, including its logo and representations.Private respondent sought to register the trademarkDYNAFLEX with the public respondent and was challengedby the petitioner for being deceptively similar to theirproduct. Director of Patents denied the opposition ofAWCC sustaining the application for registration by privaterespondent. It stated that although the suffix FLEX wassimilar to both companies, it was not sufficient to establishdeceptive similarity between the two products based on itslogo and representations in the box. The case was elevatedto the Supreme Court for adjudication.

Issue W/N the trademark registered by Banahaw isdeceptively similar to that of AWCC.

Held: Yes, it is quite similar to that of AWCC and may causeconfusion to the consuming public. There was a closeexamination of the packaging and branding of the product,the SC observed that there was a striking similaritybetween the two products. The Courts stated that theDirector of Patents was mistaken for relying solely on theexamination of the name DURAFLEX and DYNAFLEX.Etymological comparison was insufficient to determine thesimilarity between the two products.

The Court asserted that of all the possible designwithin the contemplation of man, Banahaw chosesomething so close to the design of its competitor. As such,it appears that from the very conceptualization of itstrademark and design; the product will likely causeconfusion to the consumers to the detriment of the originaltrademark owner.

15. Acoje Mining v Dir of Patents

16. Victorias Milling v Ong Su

Facts: Petitioner, Victorias Milling Company, Inc., owner ofthe trademark "VICTORIAS" and diamond designregistered in the Philippines Patent Office on November 9,1961 while respondent ONG Su is engaged in the repackingand sale of refined sugar and is the owner of the trademark"VALENTINE" and design registered in the PhilippinesPatent Office on June 20, 1961.- Victorias Milling Company, Inc. filed with the PhilippinesPatent Office a petition to cancel the registration of theONG Su trademark "Valentine alleging that its trademark"Victorias" and diamond design has become distinctive ofits sugar long before the respondent used its trademark;Registration of "Valentine" and design has caused and will

cause great damage to petitioner by reason of mistakeconfusion, or deception among the purchasers because it issimilar to its "Victorias" trademark; Registration wasfraudulently obtained by respondent ONG Su; and that"Valentine" falsely suggests a connection with SaintValentine or with an institution or belief connectedtherewith.- Director of Patents denied the petition to cancel thecertificate of registration of the respondent ONG Su

covering the trademark "Valentine" and design since theirrespective literal designation the trademarks are different.ISSUE W/N the Director of Patents erred in denying thepetition to cancel the certificate of registration issued infavor of ONG Su covering the trademark "VALENTINE" anddesign and used on refined sugar.HELD- The words "Victorias" and "Valentine" are not similar inspelling and do not have a similar sound whenpronounced. Even the diamond designs are different. Thediamond design of the trademark "Valentine" hasprotruding lines at the corners. There is no evidence thatthe respondent ONG Su had obtained the registration of histrademark "Valentine" and design by means of fraud. Thesaid trademark was registered in the Philippines PatentOffice before the petitioner registered its trademark.- Decision of the Director of Patents is hereby affirmed.

17. Converse v Universal Rubber Products

Facts: Respondent Universal Rubber Products

Inc.[Respondent/Applicant] filed an application with the

Philippine Patent office for registration of the trademark

"UNIVERSAL CONVERSE AND DEVICE" used on rubber

shoes and rubber slippers.

Converse Rubber Corporation [Petitioner/Opposer] filedits opposition to the application for registration ongrounds that the trademark sought to be registered isconfusingly similar to the word "CONVERSE" which is partof petitioner's corporate name "CONVERSE RUBBERCORPORATION" to an extent that said products may bemistaken by the unwary public to be manufactured by thepetitioner; the registration of respondent's trademark wilcause great and irreparable injury to the businessreputation and goodwill of petitioner in the Philippines.

Trial ensued. Petitioner at the trial, presented a privatemerchant [Mrs. Pacquing] who testified that she had been

selling CONVERSE rubber shoes in the local market since1956 and that sales of petitioner's rubber shoes in herstores averaged twelve to twenty pairs a month purchasedmostly by basketball players of local private educationalinstitutions. That she issued invoices for the rubber shoeswere described as "Converse Chuck Taylor", "Converse AlStar," "All Star Converse Chuck Taylor," or "ConverseShoes Chuck Taylor." She also affirmed that she had nobusiness connection with the petitioner.

The Director of Patents dismissed the opposition of thepetitioner and gave due course to respondent's


9/18

application. It concluded that the opposer failed to presentproof that the single word "CONVERSE' in its corporatename has become so Identified with the corporation thatwhenever used, it designates to the mind of the public thatparticular corporation. The proofs herein are sales madeby a single witness who had never dealt with the petitioner. . . the entry of Opposer's [petitioner's] goods in thePhilippines were not only effected in a very insignificantquantity but without the opposer [petitioner] having a

direct or indirect hand in the transaction so as to be madethe basis for trademark pre- exemption. It furtherconcluded that the petitioner is not licensed to dobusiness in the country and is actually not doing businesson its own in the Philippines, it has no name to protect inthe forum and thus, it is futile for it to establish that"CONVERSE" as part of its corporate name identifies itsrubber shoes. That a foreign corporation has a right tomaintain an action in the forum even if it is not licensed todo business and is not actually doing business on its owntherein has been enunciated many times by this Court.

Petitioners motion for reconsideration having beendenied by the respondent Director of Patents, petitionerinstituted the instant petition for review.

ISSUE: Whether or not the respondent's partialappropriation of petitioner's corporatename is of such character that it iscalculated to deceive or confuse thepublic to the injury of the petitioner towhich the name belongs.

RULING: WHEREFORE, the decision of theDirector of Patents is hereby set aside anda new one entered denying RespondentUniversal Rubber Products, Inc.'sapplication for registration of thetrademark "UNIVERSAL CONVERSE ANDDEVICE" on its rubber shoes and slippers.

HELD:

A corporation is entitled to the cancellation of a mark thatis confusingly similar to its corporate name." "Appropriation by another of the dominant part of acorporate name is an infringement.

When there is no reasonable explanation for thedefendant's choice of such a mark though the field for hisselection was so broad, the inference is inevitable that itwas chosen deliberately to deceive.

The deteminative factor in ascertaining whether or notmarks are confusingly similar, for the purposes of the lawis that the similarity between the two labels is such thatthere is a possibility or likelihood of the purchaser of theolder brand mistaking the new brand for it.

Even if not licensed to do business in the country or notdoing business here, it does not mean that its goods arenot being sold here or that it has not earned a reputation

or goodwill as regards its products. While ConverseRubber Corporation is not licensed to do business in thecountry and is not actually doing business here, it does notmean that its goods are not being sold here or that it hasnot earned a reputation or goodwill as regards itsproducts.

CO-PURCHASER MEANING: When the law speaks co-purchaser," the reference is to ordinary average purchaser

Does not necessarily pertains to deception of expertsdealers, or other persons specially familiar with thetrademark or goods involve."

CONVERSE is a dominant word that identifies

CONVERSE RUBBER CORPRORATION. The Court basis insuch decision that respondent has no right to appropriatethe word CONVERSE for use on its products which aresimilar to those being produced by petitioner:

1. The word "CONVERSE" has grown to beIdentified with petitioner's products and

acquired second meaning within the context of

trademark and tradename laws. The Court usedthe testimony of petitioner's witness, who is alegitimate trader as well as the invoicesevidencing sales of petitioner's products in thePhilippines, give credence to petitioner's claimthat it has earned a business reputation andgoodwill in this country.

2. The most convincing proof of use of a mark incommerce is testimony of such witnesses ascustomers, or the orders of buyers during acertain period. Petitioner's witness, havingaffirmed her lack of business connections withpetitioner, has testified as such customersupporting strongly petitioner's move fortrademark pre-emption.

3. Sales Invoices best proof of actual sales andactual use of petitioners trademark

Furthermore, said sales invoices provide the bestproof that there were actual sales of petitioner'sproducts in the country and that there was actualuse for a protracted period of petitioner'strademark or part thereof through these sales. "

4. Actual sale of goods in the local marketestablishes trademark use which serves as the

basis for any action aimed at trademark pre-

exemption. Any sale made by a legitimate traderfrom his store is a commercial act establishingtrademark rights since such sales are made in duecourse of business to the general public, not onlyto limited individuals. It is a matter of publicknowledge that all brands of goods filter into themarket, indiscriminately sold by jobbers dealersand merchants not necessarily with theknowledge or consent of the manufacturer.

5. The use of the word CONVERSE would confusethe purchasers perception on the products

origin."The risk of damage is not limited to apossible confusion of goods but also includesconfusion of reputation if the public couldreasonably assume that the goods of the partiesoriginated from the same source. Even if the


10/18

marks are dissimilar from those of the petitioner,there would be still confusion not on thepurchaser's perception of the goods but on theorigins thereof. By appropriating the word"CONVERSE," respondent's products are likely tobe mistaken as having been produced bypetitioner. The trademark of respondent"UNIVERSAL CONVERSE and DEVICE" isimprinted in a circular manner on the side of its

rubber shoes. In the same manner, the trademarkof petitioner which reads "CONVERSE CHUCKTAYLOR" is imprinted on a circular base attachedto the side of its rubber shoes. Even if not an thedetails just mentioned were identical, with thegeneral appearance alone of the two products, anyordinary, or even perhaps even [sic] a not tooperceptive and discriminating customer could bedeceived ... "

6. The unexplained use of the dominant word ofpetitioners corporate name lends itself open

to the suspicion of fraudulent motive to trade

upon petitioner's reputation. The Court onceruled that There was an ADMISSION of applicantUNIVERSAL CONVERSE AND DEVICE ofpetitioner's existence since 1946 (found in theSTIPULATION OF FACTS) as a duly organizedforeign corporation engaged in the manufacture ofrubber shoe in its stipulation of fact betrays itsknowledge of the reputation and business ofpetitioner even before it applied for registration ofthe trademark in question

PETITIONERS STANDING TO SUE: Article 8 of theConvention of the Union of Paris for the Protection ofIndustrial Property to which the Philippines became aparty on September 27, 1965 provides that "a trade name[corporate name] shall be protected in all the countries ofthe Union without the obligation of filing or registration,whether or not it forms part of the trademark. This is toaccord a national of a member nation extensive protection"against infringement and other types of unfaircompetition

The mandate of the Convention was adopted under in Sec.37 of RA No. 166 (Trademark Law). Sec. 37. Rights ofForeign Registrants-Persons who are nationals of,domiciled or have a bona fide or effective business orcommercial establishment in any foreign country, which isa party to an international convention or treaty relating tomarks or tradenames on the repression of unfaircompetition to which the Philippines may be a party, shallbe entitled to the benefits and subject to the provisions ofthis Act . . . ...

Tradenames of persons described in the first paragraph of

this section shall be protected without the obligation of

filing or registration whether or not they form parts of

marks.

18. Faberge v IAC

Facts: In the course of marketing petitioner's "BRUT"products and during the pendency of its application forregistration of the trademark "BRUT 33 and DEVICE" forantiperspirant, personal deodorant, cream shave, aftershave/shower lotion, hair spray, and hair shampoo,respondent Co Beng Kay of Webengton GarmentsManufacturing applied for registration of the disputedemblem "BRUTE" for briefs. Opposition was raised bypetitioner anchored on similarity with its own symbol and

irreparable injury to the business reputation of the firstuser was to no avail. When the legal tussle was elevated torespondent court, Justice Gopengco remarked that a lookat the marks "BRUT," "BRUT 33" and "BRUTE" shows thatsuch marks are not only similar in appearance but they areeven similar in sound and in the style of presentation; thatit is reasonable to believe that this similarity is sufficient tocause confusion and even mistake and deception in thebuying public as to the origin for source of the goodsbearing such trademarks .Later, respondent's Motion forReconsideration merited the nod of approval of theappellate court brought about by private respondent'ssuggestion that the controlling ruling is that laid down inESSO Standard Eastern, Inc vs Court of Appeals, to theeffect that the identical trademark can be used by differentmanufacturers for products that are non-competing andunrelated. Petitioner asserts that the alleged applicationfor registration of the trademark "BRUT 33, DEVICE" forbriefs is an explicit proof that petitioner intended toexpand its mark "BRUT" to other goods, and that relief isavailable where the junior user's goods are not remotefrom any product that the senior user would be likely tomake or sell. On the other hand, private respondent echoesthe glaring difference in physical appearance of itsproducts with petitioner's own goods by stressing theobservations of the Director of Patents in that the involvedtrademarks are grossly different in their overalappearance and that even at a distance a would-bepurchaser could easily distinguish what is BRUTE brief andwhat is BRUT after shave lotion, lotion and the likeMoreover, private respondent asserts that briefs andcosmetics do not belong to the same class nor do they havethe same descriptive properties such that the use of atrademark on one's goods does not prevent the adoptionand use of the same trademark by others on unrelatedarticles of a different nature

Issuewhether private respondent may appropriate thetrademark "BRUTE" for the briefs it manufactures andsells to the public albeit petitioner had previouslyregistered the symbol "BRUT" and "BRUT 33" for its ownline of times

Held:Yes. It is apropos to shift Our attention to the pertinentprovisions of the new Civil Code (Arts. 520, 521, and 522)vis-a-vis Republic Act No. 166 (Secs. 2, 2-A,4, 4(d),11 and20),as amended, the special law patterned after the UnitedStates Trademark Act of 1946. Having thus reviewed thelaws applicable to the case, private respondent may bepermitted to register the trademark "BRUTE" for briefs


11/18

produced by it notwithstanding petitioner's vehementprotestations of unfair dealings in marketing its own set ofitems which are limited to: after-shave lotion, shavingcream, deodorant, talcum powder and toilet soap. In asmuch as petitioner has not ventured in the production ofbriefs, an item which is not listed in its certificate ofregistration, petitioner cannot and should not be allowedto feign that private respondent had invaded petitioner'sexclusive domain. To be sure, it is significant that

petitioner failed to annex in its Brief the so-called"eloquent proof that petitioner indeed intended to expandits mark "BRUT" to other goods". Even then, a mereapplication by petitioner in this aspect does not suffice andmay not vest an exclusive right in its favor that canordinarily be protected by the Trademark Law. In short,paraphrasing Section 20 of the Trademark Law as appliedto the documentary evidence adduced by petitioner, thecertificate of registration issued by the Director of Patentscan confer upon petitioner the exclusive right to use itsown symbol only to those goods specified in the certificate,subject to any conditions and limitations stated therein.One who has adopted and used a trademark on his goodsdoes not prevent the adoption and use of the sametrademark by other for products which are of differentdescription. Justice JBL Reyes opined that the Section 4(d)of Republic Act No. 166, as amended, "does not requirethat the articles of manufacture of the previous user andlate user of the mark should possess the same descriptiveproperties or should fall into the same categories as to barthe latter from registering his mark in the principalregister." Yet, it is equally true that as aforesaid, theprotective mantle of the Trademark Law extends only tothe goods used by the first user as specified in thecertificate of registration following the clear messageconveyed by section 20. How do We now reconcile theapparent conflict between Section 4(d) which was reliedupon by Justice JBL Reyes in the Sta. Ana case and Section20? It would seem that Section4 (d) does not require thatthe goods manufactured by the second user be related tothe goods produced by the senior user while Section 20limits the exclusive right of the senior user only to thosegoods specified in the certificate of registration. But therule has been laid down that the clause which comes latershall be given paramount significance over an anteriorproviso upon the presumption that it expresses the latestand dominant purpose. It ineluctably follows that Section20 is controlling and, therefore, private respondent canappropriate its symbol for the briefs it manufactures. Theglaring discrepancies between the two products had beenamply portrayed to such an extent that indeed, "apurchaser who is out in the market for the purpose ofbuying respondent's BRUTE brief would definitely be notmistaken or misled into buying BRUT after shave lotion ordeodorant" as categorically opined in the decision of theDirector of Patents relative to the inter-partes case.

19. Asia Brewery v CA

20. Emerald Garment v CA

Facts: 1) HD Lee Co., a foreign corporation, seeksthe cancellation of a patent in favor of Emerald GarmentManufacturing (domiciled in the Phil) for the trademarkStylistic Mr. Lee, which according to HD Lee Co. closelyresembled its own trademark Lee and thus would causeconfusion, mistake and deception to the purchasing public.2) The Director of Patents granted the cancellationon the ground that petitioners trademark was confusinglysimilar to private respondents mark because it is the

word Lee which draws the attention of the buyer andleads him to conclude that the goods originated from thesame manufacturer.3) It is undeniably the dominant feature of the mark.4) The CA affirmed.

Issue: Whether the trademark Stylistic Mr. Lee tends tomislead or confuse the public and constitutes aninfringement of the trademark Lee.Held: NO, because lack of adequate proof of actual use ofits trademark in the Philippines prior to Emeralds use oits own mark and for failure to establish confusingsimilarity between said trademarks, HD Lee Cosaction forinfringement must necessarily fail.Emeralds Stylistic Mr. Lee is not confusingly similar to

private respondents LEE trademark. Colorable imitationDOES NOT APPLY because:1. Petitioners trademark is the whole STYLISTIC MR

LEE. Although on its label the word LEE is prominent,the trademark should be considered as a whole and notpiecemeal. The dissimilarities between the two marksbecome conspicuous, noticeable and substantial enough tomatter especially in the light of the following variables thatmust be factored in, among others:a. Expensive and valuable items are normally bought onlyafter deliberate, comparative and analytical investigationandb. The average Filipino consumer generally buys his jeansby brand.2. LEE is primarily a surname. Private respondentcannot, therefore, acquire exclusive ownership over andsingular use of said term.3. After a meticulous study of the records, the SC observesthat the Director of Patents and the Court of Appeals reliedmainly on the registration certificates as proof of use byHD Lee Co of the trademark LEE which are not sufficient

21. Canon v CA- NSR Rubber Corporation filed an application forregistration of the mark CANON for sandals (class 25) inthe BPTTT (Bureau of Patents, Trademarks, andTechnology Transfer)- CANON KABUSHIKI KAISHA, a foreign corporationorganized in Japan, filed a Verified Notice of Oppositionalleging that it will be damaged if registration will beapproved

Canon has used and continues to use thetrademark CANON on its wide range of goods worldwideAllegedly, the corporate name or tradename of Canon isalso used as its trademark on diverse goods includingfootwear and other related products like shoe polisher andpolishing agents.


12/18

Canon points out that it has branched out in itsbusiness based on the various goods carrying itstrademark CANON, including footwear which petitionercontends covers sandals.o Evidence Canon Kabushiki presented:

certificates of registration for the mark CANON invarious countries covering goods belonging to class 2(paints, chemical products, toner, and dye stuff)

Philippine Trademark Registration showing its

ownership over the trademark CANON also under class 2- BPTT dismissed Canon Kabushikis oppositiono Held that products of the two parties aredissimilar- Canon Kabushiki appealed before CA- CA affirmedCANONs contention:Canon asserts that it has the exclusive right to the markCANON because it forms part of its corporate name ortradename, protected by Article 8 of the Paris Convention,to wit:"A tradename shall be protected in all the countries of theUnion without the obligation of filing or registration,whether or not it forms part of a trademark."Memorandum of then Minister of Trade and IndustryRoberto Ongpin (Ongpin) dated October 25, 1983 whichaccording to petitioner Canon implements Article 6bis ofthe Paris Convention, the provision referring to theprotection of trademarks. The memorandum reads:"a) the mark must be internationally known;b) the subject of the right must be a trademark, not apatent or copyright or anything else;c) the mark must be for use in the same or similar class ofgoods;d) the person claiming must be the owner of the mark."According to petitioner, it should not be required to provethat its trademark is well-known and that the products arenot similar as required by the quoted memorandum.Petitioner emphasizes that the guidelines in thememorandum of Ongpin implement Article 6bis of theParis Convention, the provision for the protection oftrademarks, not tradenames.Petitioner insists that what it seeks is the protection ofArticle 8 of the Paris Convention, the provision thatpertains to the protection of tradenames. Petitionerbelieves that the appropriate memorandum to consider isthat issued by the then Minister of Trade and Industry,Luis Villafuerte, directing the Director of patents to:"reject all pending applications for Philippine registrationof signature and other world famous trademarks byapplicants other than the original owners or users."As far as petitioner is concerned, the fact that itstradename is at risk would call for the protection grantedby Article 8 of the Paris Convention. Petitioner callsattention to the fact that Article 8, even as embodied inpar. 6, sec. 37 of RA 166, mentions no requirement ofsimilarity of goods. Petitioner claims that the reason thereis no mention of such a requirement, is "because there is adifference between the referent of the name and that of themark"24 and that "since Art. 8 protects the tradename inthe countries of the Union, such as Japan and the

Philippines, Petitioner's tradename should be protectedhere."

Issue: WON the Ongpin Memorandum applies

Held: YES

The term "trademark" is defined by RA 166, theTrademark Law, as including "any word, name, symbol

emblem, sign or device or any combination thereoadopted and used by a manufacturer or merchant toidentify his goods and distinguish them for thosemanufactured, sold or dealt in by others."26 Tradename isdefined by the same law as including "individual namesand surnames, firm names, tradenames, devices or wordsused by manufacturers, industrialists, merchantsagriculturists, and others to identify their businessvocations, or occupations; the names or titles lawfullyadopted and used by natural or juridical persons, unionsand any manufacturing, industrial, commercialagricultural or other organizations engaged in trade orcommerce."27 Simply put, a trade name refers to thebusiness and its goodwill; a trademark refers to thegoods.28The Convention of Paris for the Protection of IndustriaProperty, otherwise known as the Paris Convention, owhich both the Philippines and Japan, the country opetitioner, are signatories29, is a multilateral treaty thatseeks to protect industrial property consisting of patentsutility models, industrial designs, trademarks, servicemarks, trade names and indications of source orappellations of origin, and at the same time aims to repressunfair competition.30 We agree with public respondentsthat the controlling doctrine with respect to theapplicability of Article 8 of the Paris Convention is thatestablished in Kabushi Kaisha Isetan vs. IntermediateAppellate Court.31 As pointed out by the BPTTT:"Regarding the applicability of Article 8 of the ParisConvention, this Office believes that there is no automaticprotection afforded an entity whose tradename is allegedto have been infringed through the use of that name as atrademark by a local entity.In Kabushiki Kaisha Isetan vs. The Intermediate AppellateCourt, et. al., G.R. No. 75420, 15 November 1991, theHonorable Supreme Court held that:'The Paris Convention for the Protection of IndustriaProperty does not automatically exclude all countries othe world which have signed it from using a tradenamewhich happens to be used in one country. To illustrate ia taxicab or bus company in a town in the United Kingdomor India happens to use the tradename "RapidTransportation", it does not necessarily follow that "Rapid"can no longer be registered in Uganda, Fiji, or thePhilippines.This office is not unmindful that in the Treaty of Paris forthe Protection of Intellectual Property regarding wellknown marks and possible application thereof in this casePetitioner, as this office sees it, is trying to seek refugeunder its protective mantle, claiming that the subject markis well known in this country at the time the thenapplication of NSR Rubber was filed.


13/18

However, the then Minister of Trade and Industry, the Hon.Roberto V. Ongpin, issued a memorandum dated 25October 1983 to the Director of Patents, a set of guidelinesin the implementation of Article 6bis (sic) of the Treaty ofParis. These conditions are:a) the mark must be internationally known;b) the subject of the right must be a trademark, not apatent or copyright or anything else;c) the mark must be for use in the same or similar kinds of

goods; andd) the person claiming must be the owner of the mark (TheParties Convention Commentary on the Paris Convention.Article by Dr. Bogsch, Director General of the WorldIntellectual Property Organization, Geneva, Switzerland,1985)'From the set of facts found in the records, it is ruled thatthe Petitioner failed to comply with the third requirementof the said memorandum that is the mark must be for usein the same or similar kinds of goods. The Petitioner isusing the mark "CANON" for products belonging to class 2(paints, chemical products) while the Respondent is usingthe same mark for sandals (class 25). Hence, Petitioner'scontention that its mark is well-known at the time theRespondent filed its application for the same mark shouldfail. "

Other Issues:Issue 1: WON use of trademark by the junior userforestalls the normal expansion of Canons business.Held: NOPetitioner's opposition to the registration of its trademarkCANON by private respondent rests upon petitioner'sinsistence that it would be precluded from using the markCANON for various kinds of footwear, when in fact it hasearlier used said mark for said goods. Stretching thisargument, petitioner claims that it is possible that thepublic could presume that petitioner would also produce awide variety of footwear considering the diversity of itsproducts marketed worldwide.We do not agree. Even in this instant petition, except for itsbare assertions, petitioner failed to attach evidence thatwould convince this Court that petitioner has alsoembarked in the production of footwear products. Wequote with approval the observation of the Court ofAppeals that:- "The herein petitioner has not made known that itintends to venture into the business of producing sandals.This is clearly shown in its Trademark Principal Register(Exhibit "U") where the products of the said petitioner hadbeen clearly and specifically described as "Chemicalproducts, dyestuffs, pigments, toner developingpreparation, shoe polisher, polishing agent". It would betaxing one's credibility to aver at this point that theproduction of sandals could be considered as a possible"natural or normal expansion" of its business operation".8Issue 2: WON the public might be misled into thinking thatthere is some supposed connection between NSRs goodsand CANONHeld: NOPetitioner is apprehensive that there could be confusion asto the origin of the goods, as well as confusion of business,

if private respondent is allowed to register the markCANON. In such a case, petitioner would allegedly beimmensely prejudiced if private respondent would bepermitted to take "a free ride on, and reap the advantagesof, the goodwill and reputation of petitioner Canon.The likelihood of confusion of goods or business is arelative concept, to be determined only according to theparticular, and sometimes peculiar, circumstances of eachcase.

In cases of confusion of business or origin, the questionthat usually arises is whether the respective goods orservices of the senior user and the junior user are sorelated as to likely cause confusion of business or originand thereby render the trademark or tradenamesconfusingly similar. Goods are related when they belong tothe same class or have the same descriptive propertieswhen they possess the same physical attributes oressential characteristics with reference to their formcomposition, texture or quality.19 They may also berelated because they serve the same purpose or are sold ingrocery stores.Undoubtedly, the paints, chemical products, toner anddyestuff of petitioner that carry the trademark CANON areunrelated to sandals, the product of private respondentWe agree with the BPTTT, following the Esso doctrinewhen it noted that the two classes of products in this caseflow through different trade channels. The products opetitioner are sold through special chemical stores ordistributors while the products of private respondent aresold in grocery stores, sari-sari stores and departmentstores.23 Thus, the evident disparity of the products of theparties in the case at bar renders unfounded theapprehension of petitioner that confusion of business ororigin might occur if private respondent is allowed to usethe mark CANON.

22. Amigo v Cluett

Facts: The source of the controversy that precipitated thefilling by Cluette Peabody Co., Inc. of the present caseagainst Amigo Manufacturing Inc. for cancellation otrademark is respondents claim of exclusive ownership ofthe trademark and devices used on mens socks. The twocompanies had trademarks with confusing similarities inappearance. The petitioners mark is only registered withSupplemental Registry while the respondents mark is aregistered mark.Petitioner claimed that it started theactual use of the trademark Gold Top and Device inSeptember 1956, while respondent began using thetrademark Gold Toe only on May 15, 1962.

Issue:Whether or not Amigo Manufacturing has the

exclusive right to use of the trademark.

Ruling:The Supreme Court ruled in favor of Cluett

Peabody Co.

Based on the evidence presented, this Court concurs in thefindings of the Bureau of Patents that respondent had


14/18

actually used the trademark and the devices in questionprior to petitioners use of its own. During the hearing atthe Bureau of Patents, respondent presented Bureauregistrations indicating the dates of first use in thePhilippines of the trademark and the devices as follows: a)March 16, 1954, Gold Toe; b) February 1, 1952, theRepresentation of a Sock and a Magnifying Glass; c)January 30, 1932, the Gold Toe Representation; and d)February 28, 1952, Linenized.

The registration of the above marks in favor of respondentconstitutes prima facie evidence, which petitioner failed tooverturn satisfactorily, of respondents ownership of thosemarks, the dates of appropriation and the validity of otherpertinent facts stated therein. Indeed, Section 20 ofRepublic Act 166 provides as follows:

Sec. 20.Certificate of registration prima facie evidence ofvalidity. - A certificate of registration of a mark or trade-name shall be prima facie evidence of the validity of theregistration, the registrant's ownership of the mark ortrade-name, and of the registrant's exclusive right to usethe same in connection with the goods, business orservices specified in the certificate, subject to anyconditions and limitations stated therein.

Section 5-A of Republic Act No. 166 states that an applicantfor a trademark or trade name shall, among others, statethe date of first use. The fact that the marks were indeedregistered by respondent shows that it did use them on thedate indicated in the Certificate of Registration.

Furthermore, petitioner registered its trademark only withthe supplemental register. In La Chemise Lacoste v.Fernandez, the Court held that registration with thesupplemental register gives no presumption of ownershipof the trademark.

Petitioner claims that the Court of Appeals erred inapplying the Paris Convention. Although respondentregistered its trademark ahead, petitioner argues that theactual use of the said mark is necessary in order to beentitled to the protection of the rights acquired throughregistration.As already discussed, respondent registered itstrademarks under the principal register, which means thatthe requirement of prior use had already been fulfilled. Toemphasize, Section 5-A of Republic Act 166 requires thedate of first use to be specified in the application forregistration. Since the trademark was successfullyregistered, there exists a prima facie presumption of thecorrectness of the contents thereof, including the date offirst use. Petitioner has failed to rebut this presumption.Thus, applicable is the Union Convention for the Protectionof Industrial Property adopted in Paris on March 20, 1883,otherwise known as the Paris Convention, of which thePhilippines and the United States are members.Respondent is domiciled in the United States and is theregistered owner of the Gold Toe trademark. Hence, it isentitled to the protection of the Convention. A foreign-based trademark owner, whose country of domicile is a

party to an international convention relating to protectionof trademarks is accorded protection against infringementor any unfair competition as provided in Section 37 oRepublic Act 166, the Trademark Law which was the lawin force at the time this case was instituted.

23. 246 Co, v Daway

Facts: Respondents Montres Rolex and Rolex Centre Phil.

Limited owned the ROLEX trademark, which was used forwatches. Petitioner used the same trademark for a musiclounge, called 'ROLEX MUSIC LOUNGE'. Upon learning osaid lounge, respondents filed a complaint for trademarkinfringement and damages against petitioner, with aprayer for the issuance of a TRO/Writ of PreliminaryInjunction.

Petitioner, in its Answer, raised the followingaffirmative defenses. First, it argued that no infringementhad occurred for no confusion would arise from the use othe ROLEX trademark. Petitioner pointed out that itsbusiness (a music lounge) differed from the goods onwhich the respondents used the mark, which werewatches. It was averred that, for this reason, no confusingsimilarity could arise, and by corollary, no infringementhad taken place.

Secondly, petitioner argued that the complaintshould be dismissed for lack of verification andcertification against forum-shopping. Petitioner pointedout that Atty. Ancheta, counsel for respondents, verifiedand signed the complaint. But this was despite AttyAncheta having allegedly been unauthorized to representthe respondents.

On 21 July 2000, petitioner filed a motion forpreliminary hearing on its affirmative defenses. Onpetitioner's motion, the trial court issued a subpoena adtestificandum requiring a certain Atty. Ancheta to appearin said preliminary hearing. However, acting uponrespondents' Comment and Opposition, the trial courtsubsequently quashed the subpoena and deniedpetitioner's motion for preliminary hearing.

Aggrieved, the petitioner filed a Petition forCertiorari before the CA. It was denied, as was thesubsequent Motion for Reconsideration. Hence, petitionerfiled a Petition for Review on Certiorari before theSupreme Court.ISSUE:1) W/N the trial court correctly denied petitioner'smotion for preliminary hearing2) W/N the trial court correctly quashed petitioner'ssubpoena ad testificandumDECISION: YESRATIO:1)

123.1, (f) of the Intellectual Property Code treatsof infringement where the registered trademark is used ongoods or services different from those of the registrantThe determination of whether the same is extant is aquestion of fact requiring a full-brown trial, and not a merepreliminary hearing. Hence, the trial court was correct indenying the motion for preliminary hearing, for apreliminary hearing is improper for the affirmative


15/18

defense raised, i.e. that no infringement had been made bypetitioner.2)

The trial court is likewise correct in quashingpetitioner's subpoena ad testificandum. As stated, thecourt correctly denied petitioner's motion for preliminaryhearing. Since there is no longer a preliminary hearing inwhich Atty. Ancheta is to testify, the subpoena is thus of nomoment.

24. McDo v Big Mak

Facts: McDonald's Corporation ("McDonald's") is a

corporation organized under the laws of Delaware, United

States. McDonald's owns a family of marks including the

"Big Mac" mark for its "double-decker hamburger

sandwich." McDonald's registered this trademark with the

United States Trademark Registry as well as in the

Philippine Bureau of Patents, Trademarks and Technology

("PBPTT"), now the Intellectual Property Office ("IPO").

Pendingapproval of its application, McDonald's introduced

its "Big Mac" hamburger sandwiches in the Philippinemarket in September 1981. On 18 July 1985, the PBPTT

allowed registration ofthe "Big Mac" mark in the Principal

Register based on its Home Registration in the United

States.

Like its other marks, McDonald's displays the "Big Mac"mark in items and paraphernalia in its restaurants, and inits outdoor and indoor signages. From 1982 to 1990,McDonald's spent P10.5 million in advertisement for "BigMac" hamburger sandwiches alone.

Petitioner McGeorge Food Industries ("petitionerMcGeorge"), a domestic corporation, is McDonald'sPhilippine franchisee.

Respondent L.C. Big Mak Burger, Inc. ("respondentcorporation") is a domestic corporation which operatesfast-food outlets and snack vans in Metro Manila andnearby provinces. Respondent corporation's menuincludes hamburger sandwiches and other food items.Respondents Francis B. Dy, Edna A. Dy, Rene B. Dy, WilliamB. Dy, Jesus Aycardo, Araceli Aycardo, and Grace Huerto("private respondents") are the incorporators,stockholders and directors of respondent corporation.

On 21 October 1988, respondent corporation applied withthe PBPTT for theregistration ofthe "Big Mak" mark for itshamburger sandwiches. McDonald's opposed respondentcorporation's application on the ground that "Big Mak"was a colorable imitation of its registered "Big Mac" markfor the same food products. McDonald's also informedrespondent Francis Dy ("respondent Dy"), the chairman ofthe Board of Directors of respondent corporation, of itsexclusive right to the "Big Mac" mark and requested him todesistfrom using the "Big Mac" mark or anysimilar mark.

Having received no reply from respondent Dy, petitionerson 6 June 1990 sued respondents in the Regional TriaCourt of Makati, Branch 137 ("RTC"), for trademarkinfringement and unfair competition. RTC dismissed thecomplaint. CA reversed and sentenced petitioner to paydamages to respondent. Hence this instant appeal.

ISSUE: whether respondent corporation is liable fortrademark infringement and unfair competition.

HELD: Section 22 ("Section 22) of Republic ActNo. 166, as amended ("RA 166"), the law applicable to thiscase, defines trademark infringement as follows:

Infringement, what constitutes. Any personwho [1] shall use, without the consent of theregistrant, any reproduction, counterfeit, copy orcolorable imitation of any registered mark ortrade-name in connection with the sale, offeringfor sale, or advertising of any goods, business orservices on or in connection withwhich such use islikely to cause confusion or mistake or to deceive

purchasers or others as to the source or origin osuch goods or services, or identity of suchbusiness; or [2] reproduce, counterfeit, copy, orcolorably imitate any such mark or trade-nameand apply such reproduction, counterfeit, copy, orcolorable imitation to labels, signs, printspackages, wrappers, receptacles oradvertisements intended to be used upon or inconnection with such goods, business or servicesshallbe liable toa civil action by the registrant foranyor all ofthe remedies hereinprovided.

A mark is valid if it is "distinctive" and thus not barred

from registration under Section 4 of RA 166 ("Section 4")However, once registered, not only the mark's validity butalso the registrant's ownership of the mark is prima faciepresumed.

The "Big Mac" mark, which should be treated in its entirety

and not dissected word for word, is neither generic nor

descriptive. Generic marks are commonly used as the

name or description of a kindofgoods, such as "Lite" for

beer or "Chocolate Fudge" for chocolate soda drink

Descriptive marks, on the other hand, convey the

characteristics, functions, qualities or ingredients of a

product to one who has never seen it or does not know it

exists, such as "Arthriticare" for arthritis medication. On

the contrary, "Big Mac" falls under the class of fanciful or

arbitrary marks as it bears no logical relation to the actua

characteristics of the product it represents. As such, it is

highly distinctive and thus valid. Significantly, the

trademark "Little Debbie" for snack cakes was found

arbitrary or fanciful.

The Court also finds that petitioners have duly established

McDonald's exclusive ownership of the "Big Mac" mark


16/18

Although Topacio and the Isaiyas Group registered the

"Big Mac" mark ahead of McDonald's, Topacio, as

petitioners disclosed, had already assigned his rights to

McDonald's. The Isaiyas Group, on the other hand,

registered its trademark only in the Supplemental

Register. A mark which is not registered in the Principal

Register, and thus not distinctive, has no real protection.

Indeed, we have held that registration in the Supplemental

Register is not even a prima facie evidence of the validityof the registrant's exclusive right to use the mark on the

goods specified in the certificate.

In determining likelihood of confusion, jurisprudence has

developed two tests, the dominancy test and the holistic

test. The dominancy test focuses on the similarity of the

prevalentfeatures of the competing trademarks that might

cause confusion. In contrast, the holistic test requires the

court to consider the entirety of the marks as applied to

the products, including the labels and packaging, in

determiningconfusing similarity.

This Court, however, has relied on the dominancy test

rather than the holistic test. The dominancy test considers

the dominant features in the competing marks in

determining whether they are confusingly similar. Under

the dominancy test, 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, disregarding minordifferences. Courts will consider

more the aural and visual impressions created by the

marks in the public mind, giving little weight to factors like

prices, quality, sales outlets and market segments.

25. Mcdo v Macjoy

Macjoy Food Corporation, engaged in the sale offast food products in Cebu City, filed with the then

Bureau of Patents, Trademarks and Technology

Transfer (BPTT), now the IPO, an application for

the registration of the trademark MACJOY &

DEVICE for food under classes 29 and 30.

Mcdonalds Corporation filed a verified Notice ofOpposition against the application claiming that

the trademark MACJOY & DEVICE so resemblesits corporate logo,

Compiled Digests for 12-5 (Incomplete)

Documents

Transcript of Compiled Digests for 12-5 (Incomplete)