IPL Cases Batch 1

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distribution of petitioner's products are on retail basis, limited to the City of Manilaand suburbs, and its place of business is localized at Azcarraga, corner of LepantoStreet and at Dewey Blvd., Manila, while that of respondent is on a wholesale basis,extending throughout the length and breadth of the Philippines; (3) thatpetitioner's signboard on its place of business reads 'SELECTA' and on its deliverytrucks "Selecta, Quality Always, Restaurant and Caterer, Azcarraga, Dewey Blvd.,

Balintawak and Telephone number," in contrast with respondent's signboard on itsfactory which reads "Selecta Biscuit Company, Inc.," and on its delivery trucks"Selecta Biscuit Company, Inc., Tuason Avenue, Malabon, Rizal, Telephone No. 2-13-27; (4) that the business name of petitioner is different from the business name of respondent; (5) that petitioner has only a capital investment of P25,000.00 whereasrespondent has a fully paid-up stock in the amount of P234,000.00 out of theP500,000.00 authorized capital, (6) that the use of the name 'SELECTA' by

respondent cannot lead to confusion in the business operation of the parties.

We have read carefully the reasons advanced in support of the points raised bycounsel in an effort to make inroads into the findings of the court a quo on unfaircompetition, but we believe them to be substantial and untenable. They appear tobe well answered and refuted by counsel for petitioner in his brief, which refutationwe do not need to repeat here. Suffice it to state that we agree with the authoritiesand reasons advanced therein which incidentally constitute the best support of the

decision of the court a quo.

With regard to the claim that petitioner failed to present sufficient evidence on thecontract of lease of the business from its predecessor-in-interest, we find that

under the circumstances secondary evidence is admissible.

In view of the foregoing, we hold that the Director of Patents committed an error indismissing the opposition of petitioner and in holding that the registration of thetrade-mark 'SELECTA' in favor of respondent will not cause damage to petitioner,

and consequently, we hereby reverse his decision.

Consistently with this finding, we hereby affirm the decision of the court aquo rendered in G.R. No. L-17981. No costs.

Paras, C.J., Bengzon, Labrador, Reyes, J.B.L. Barrera, Gutierrez David, Paredes and Dizon., JJ., concur.

Padilla, and Concepcion, JJ., took no part.



Factors

1. Shape &Size of Label

Rectangular, about 3-3/4" 2-1/4" Rectangular, 3-3/4"' 1-1/4"

Bengzon, C.J., Bautista Angelo, Concepcion, Reyes, J.B.L., Barrera, Dizon, Regala,

Makalintal, Zaldivar and Sanchez, JJ., concur.



Size of Label

2. Color of Label Predominantly Yellow Predominantly White

3. Colorbackground of Word-mark

Olive-green Blue

4. Over-all

Layout

At the top center-word mark "BIOFERIN";

below it are contents of medicine, arrangedhorizontally; at bottom, center, "UnitedPharmaceuticals, Inc." in olivegreenbackground. At left side dosage, printedperpendicularly; at right side,indications,alsoperpendicularly printed.

At left side of label Wood-

mark "BUFFERIN"; with "BristolMyers Co., New York, N.Y." belowat right side, contents, indicationsdosage are grouped together,printed perpendicularly

5. Form of product

Capsules label says: "50 capsules"

Tablets label says: "36 Tablets"

6. Prescription Label states:"To be dispensed only by or on the prescriptionof a physician"

No such statement

Accordingly, taken as they will appear to a prospective customer, the trademark inquestion are not apt to confuse. Furthermore, the product of the applicant is

expressly stated as dispensable only upon doctor's prescription, whilethat of oppositor does not require the same. The chances of being confused into purchasingone for the other are therefore all the more rendered negligible. Althoughoppositor avers that some drugstores sell "BIOFERIN" without asking for a doctor'sprescription, the same if true would be an irregularity not attributable to theapplicant, who has already clearly stated the requirement of a doctor's prescription

upon the face of the label of its product.

Wherefore, the decision of the Director of Patents appealed from is hereby

affirmed without costs. So ordered.



conclusion. Petitioner has successfully made out

a case for registration.

From the statements of the Supreme Court in the two casesaforementioned, we gather that there must be not onlyresemblance between the trademark of the plaintiff and that of



resemblance between the trademark of the plaintiff and that of the defendant, but also similarity of the goods to which the two

trademarks are respectively attached.

Since in this case the trademark of petitioner-appellee is used inthe sale of leather wallets, key cases, money folds made of leather, belts, men's briefs, neckties, handkerchiefs and men'ssocks, and the trademark of registrant-appellant is used in thesale of shoes, which have different channels of trade, the Directorof Patents, as in the case of Acoje Mining Co., Inc. vs. Director of

Patents, supra, 'ought to have reached a different conclusion.

It is established doctrine, as held in the above-cited cases, that "emphasis should beon the similarity of the products involved and not on the arbitrary classification orgeneral description of their properties or characteristics"

4 and that "the mere fact

that one person has adopted and used a trademark on his goods does not preventthe adoption and use of the same trademark by others on unrelated articles of adifferent kind."

5Taking into account the facts of record that petitioner, a foreign

corporation registered the trademark for its diverse articles of men's wear such as

wallets, belts and men's briefs which are all manufactured here in the Philippines bya licensee Quality House, Inc. (which pays a royalty of 1-1/2 % of the annual netsales) but are so labelled as to give the misimpression that the said goods are of foreign (stateside) manufacture and that respondent secured its trademarkregistration exclusively for shoes (which neither petitioner nor the licensee evermanufactured or traded in) and which are clearly labelled in block letters as "Madein Marikina, Rizal, Philippines," no error can be attributed to the appellate court inupholding respondent's registration of the same trademark for his unrelated and

non-competing product of Marikina shoes.6

ACCORDINGLY, the petition is dismissed and the appealed judgment of the Court of

Appeals is hereby affirmed.

Melencio-Herrera, Plana, Relova and Gutierrez, Jr., JJ., concur.1äwphï1.ñët

Makasiar, J., is on leave.

Vasquez, J., took no part.



so to be consistent with its theory that the civil case should be dismissed in the first

place.

Considering the fact that "PUMA" is an internationally known brand name, it ispertinent to reiterate the directive to lower courts, which equally applies to

administrative agencies, found in La Chemise Lacoste, S.A. v. Fernandez, supra):

Fernan (Chairman), Feliciano, Bidin and Cortes, JJ., concur.



One final point. It is essential that we stress our concern at theseeming inability of law enforcement officials to stem the tide of fake and counterfeit consumer items flooding the Philippinemarket or exported abroad from our country. The greater victim isnot so much the manufacturer whose product is being faked butthe Filipino consuming public and in the case of exportations, ourimage abroad. No less than the President, in issuing ExecutiveOrder No. 913 dated October 7, 1983 to strengthen the powers of the Minister of Trade and Industry for the protection of consumers, stated that, among other acts, the dumping of substandard, imitated, hazardous, and cheap goods, theinfringement of internationally known tradenames andtrademarks, and the unfair trade Practices of business firms havereached such proportions as to constitute economic sabotage. Webuy a kitchen appliance, a household tool, perfume, face powder,other toilet articles, watches, brandy or whisky, and items of clothing like jeans, T-shirts, neckties, etc. the list is quite

lengthy pay good money relying on the brand name asguarantee of its quality and genuine nature only to explode inbitter frustration and helpless anger because the purchased itemturns out to be a shoddy imitation, albeit a clever lookingcounterfeit, of the quality product. Judges all over the country arewell advised to remember that court processes should not beused as instruments to, unwittingly or otherwise, aidcounterfeiters and intellectual pirates, tie the hands of the law asit seeks to protect the Filipino consuming public and frustrate

executive and administrative implementation of solemncommitments pursuant to international conventions and treaties.

(at p. 403)

WHEREFORE, the appealed decision of the Court of Appeals dated June 23, 1986 isREVERSED and SET ASIDE and the order of the Regional Trial Court of Makati is

hereby Reinstated.

SO ORDERED.

IPL Cases Batch 1

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