TRADEMARKS Cases

1. G.R. No. 48226, December 14, 1942

ANA L. ANG, petitioner, vs. TORIBIO
TEODORO, respondent.
Facts:
Toribio Teodoro has continuously used Ang Tibay
both as a trademark and tradename, in the
manufacture and sale of slippers, shoes and
indoor baseballs since 1910. He formally
registered it as trademark on September 1915
and as a tradename in 1933. Petitioner registered
the same trademark Ang Tibay for pants and
shirts in 1932. Petitioner now assails the validity
of respondents trademark. He contends that the
phrase Ang Tibay is a descriptive term and
therefore, cannot be subject of a trademark.
Petitioner claims also that respondent committed
infringement with regard to the trademark Ang
Tibay. The RTC ruled in favor of the petitioner,
absolving Ana Ang from the complaint on the
ground that two trademarks are dissimilar and
are used on different and non-competing goods;
that there had been no fraud on the use of said
trademarks. However, the CA reversed the ruling
of the RTC, holding that by uninterrupted and
exclusive use since 1910 in the manufacture of
slippers, shoes, Teodoros trademark has acquired
secondary meaning; that the goods or articles on
which the two trademarks are used are similar or
belong to the same class; and that the use by
Ana Ang (petitioner) of said trademark
constitutes a violation of Section3 and 7 of Act #
666.
Issues:
1. Whether or not the words Ang Tibay is a
descriptive term.
2. Whether or not the words Ang Tibay had
acquired a secondary meaning
3. Whether or not the pants and shirts are goods
similar to shoes and slippers within the meaning
of Sections 3 and 7 of Act # 666
Held:
1. The words Ang Tibay is an exclamation
denoting admiration of strength or durability. It is
never used adjectively to define or describe an
object. Hence, the term is NOT a descriptive word
within the meaning of the Trade-Mark Law but
rather a fanciful or coined phrase which may
properly and legally be appropriated as a
trademark or tradename.

2. It is unnecessary to apply the Doctrine of

Secondary Meaning in the trademark parlance.
The phrase Ang Tibay being neither geographic
nor descriptive, was originally capable of
exclusive appropriation as a trademark. In any
event, the CAs ruling that the Doctrine of
Secondary Meaning be fully sustained is affirmed,
because Teodoros long and exclusive use of said
phrase with relative to its products and
his business,
has
acquired
a
propriety
connotation.
3. The test employed by the courts to determine
whether non-competing goods are or are not of
the same class is confusion as to the origin of the
goods of the second user. Although two noncompeting goods may be classified under two
different classes by the Patent Office, because
they are deemed not to possess the same
descriptive properties, they would nevertheless,
be held to belong to the same class if the
simultaneous use on them of identical or closely
similar trademarks would be likely to cause
confusion as to the origin, or personal source of
the second users goods. The judgment of the
Court of Appeals is affirmed, with costs against
the petitioner in the three instances.
2. G.R. No. 91332, July 16, 1993
PHILIP MORRIS, INC., BENSON & HEDGES
(CANADA), INC., AND FABRIQUES OF TABAC
REUNIES, S.A., petitioners, vs. THE COURT
OF APPEALS AND FORTUNE TOBACCO
CORPORATION, respondents.
Petitioners Claim:
Petitioners Philip Morris, Inc., Benson and Hedges
(Canada), Inc., and Fabriques of Tabac Reunies,
S.A., are ascribing whimsical exercise of the
faculty conferred upon magistrates by Section 6,
Rule 58 of the Revised Rules of Court when
respondent Court of Appeals lifted the writ of
preliminary injunction it earlier had issued against
Fortune Tobacco Corporation, herein private
respondent, from manufacturing and selling
"MARK" cigarettes in the local market.
Banking on the thesis that petitioners' respective
symbols "MARK VII", "MARK TEN", and "LARK",
also for cigarettes, must be protected against
unauthorized appropriation, petitioners twice
solicited the ancillary writ in the course the main
suit for infringement but the court of origin was
unpersuaded.
Respondents Claim:
Fortune
Tobacco
Corporation
admitted
petitioners' certificates of registration with the
Philippine Patent Office subject to the affirmative

and special defense on misjoinder of party

plaintiffs. Private respondent alleged further that
it has been authorized by the Bureau of Internal
Revenue to manufacture and sell cigarettes
bearing the trademark "MARK", and that "MARK"
is a common word which cannot be exclusively
appropriated.
Issue:
Whether to grant the petition of Philip Morris
questioning the lifting of the preliminary
injunction by the Court of Appeals
Held:
NO. In point of adjective law, the petition has its
roots on a remedial measure which is but
ancillary to the main action for infringement still
pending factual determination before the court of
origin. It is virtually needless to stress the obvious
reality that critical facts in an infringement case
are not before us more so when even Justice
Feliciano's opinion observes that "the evidence is
scanty" and that petitioners "have yet to submit
copies or photographs of their registered marks
as used in cigarettes" while private respondent
has not, for its part, "submitted the actual labels
or packaging materials used in selling its "Mark"
cigarettes." Petitioners therefore, may not be
permitted to presume a given state of facts on
their so called right to the trademarks which
could be subjected to irreparable injury and in the
process, suggest the fact of infringement. Such a
ploy would practically place the cart ahead of the
horse.
3. G.R. No. 114508, November 19, 1999
PRIBHDAS J. MIRPURI, petitioner, vs. COURT
OF APPEALS, DIRECTOR OF PATENTS and the
BARBIZON CORPORATION, respondents.
Facts:
Lolita Escobar filed an application with the
Philippine Bureau of Patents on June 15, 1970 for
the registration of the trademark "Barbizon" for
use in brassieres and ladies undergarments
Barbizon Corporation, a corporation organised
and doing business under the laws of New York.,
U.S.A., filed an opposition to the application
Director of Patents rendered a decision dismissing
the opposition and giving due course to Escoba's
application
Escobar later assigned all her rights and interests
over the trademark to petitioner Pribhdas J.
Mirpuri who was the sole and exclusive distributor
of Escobar's "Barbizon" products

The certificate of registration of Escobar was

cancelled by the Bureau of Patents when she
failed to file the Affidavit of Use of the trademark
required by Republic Act No. 166, the Philippine
Trademark Law.
Escobar reapplied for registration of the cancelled
trademark and assigned her application to
petitioner and the application was opposed by
private respondent.
Barbizon Corp alleges its trademark is qualified
as well-known and is therefore protected by the
Convention of Paris for the Protection of
Intellectual Property which the Philippines has
bound to enforce.
Opposition is hereby DECLARED BARRED by res
judicata and is hereby DISMISSED. revoked and
cancelled = DTI
The Director of Patents rendered a decision giving
due course to the patent application of Mirpuri.
The CA, however, reversed this decision and
ordered that the case be remanded to the Bureau
of Patents for further proceedings
Issue:
Whether or not the Convention of Paris for the
Protection of Intellectual Property affords
protection to a foreign corporation against a
Philippine applicant for the registration of a
similar trademark.
Held:
Affirmative. The Philippines and the United States
of America have acceded to the WTO Agreement
x x x Conformably, the State must reaffirm its
commitment to the global community and take
part in evolving a new international economic
order at the dawn of the new millennium.
Thus, the first paragraph of Article 6bis of the
Paris Convention is applicable in the instant case:
This Article governs protection of well-known
trademarks. Under the first paragraph, each
country of the Union bound itself to undertake to
refuse or cancel the registration, and prohibit the
use of a trademark which is a reproduction,
imitation or translation, or any essential part of
which trademark constitutes a reproduction,
liable to create confusion, of a mark considered
by the competent authority of the country where
protection is sought, to be well-known in the
country as being already the mark of a person
entitled to the benefits of the Convention, and
used for identical or similar goods.

It is a self-executing provision and does not

require legislative enactment to give it effect in
the member country.
*****************
Trademark in R.A. No. 8293, the Intellectual
Property Code of the Philippines: defines as any
visible sign capable of distinguishing goods. In
Philippine jurisprudence, the function of a
trademark is to point out distinctly the origin or
ownership of the goods to which it is affixed; to
secure to him, who has been instrumental in
bringing into the market a superior article of
merchandise, the fruit of his industry and skill; to
assure the public that they are procuring the
genuine article; to prevent fraud and imposition;
and to protect the manufacturer against
substitution and sale of an inferior and different
article as his product.

4. G.R. No. 75420, November 15, 1991

KABUSHI KAISHA ISETAN, also known and
trading as ISETAN CO., LTD., petitioner, vs.
THE INTERMEDIATE APPELLATE COURT, THE
DIRECTOR OF PATENTS, and ISETANN
DEPARTMENT STORE, INC. respondents.

Private respondent, Isetann Department Store,

on the other handclaims that it used the word
"Isetann" as part of its corporate name and on its
products particularly on shirts in Joymart
Department Store sometime in January 1979.
The suffix "Tann" means an altar, the place of
offering in Chinese and this was adopted to
harmonize the corporate name and the corporate
logo of two hands in cup that symbolizes the act
of offering to the Supreme Being for business
blessing.
Respondent registered "Isetann Department
Store, Inc." and Isetann and Flower Design in the
Philippine Patent Office under SR. Reg. Nos. 4701
and 4714, respectively, as well as with the
Bureau of Domestic Trade under Certificate of
Registration No. 32020 actions
On November 28, 1980, the petitioner filed with
the Phil. Patent Office two (2) petitions for the
cancellation of Certificates of Jmvdg Trademark
Cases 25, Supplemental Registration Nos. SR4717 and SR-470. The petitioner also filed with
the Securities and Exchange Commission (SEC) a
petition to cancel the mark "ISETAN" as part of
the registered corporate name of Isetann
Department Store, Inc. this was however denied
by the SEC Director of Patents dismissed the suit
for cancellation of registration filed by petitioner
IAC likewise dismissed the case
Issue:
Who has better right to use the trademark
Isetan?

Petitioner's contention:
Kabushi Kaisha Isetan is the owner of the
trademark "Isetan" and the "Young Leaves
Design".
The petitioner alleges that it first used the
trademark Isetan on November 5, 1936. It states
that the trademark is a combination of "Ise" taken
from "Iseya" the first name of the rice dealer in
Kondo, Tokyo in which the establishment was first
located and "Tan" which was taken from "Tanji
Kosuge the First".
The trademark "Isetan" and "Young Leaves
Design" were registered in Japan covering more
than 34 classes of goods. On October 3, 1983, the
petitioner applied for the registration of "Isetan"
and "Young Leaves Design" with the Philippine
Patent Office under Permanent Serial Nos. 52422
and 52423 respectively,
Defendant's contention:

Held:
A fundamental principle of Philippine
Trademarks Law is that actual use in commerce in
the Philippines is a prerequisite to the acquisition
of ownership over a trademark or a tradename.
Adoption alone of a trademark would not give
exclusive right thereto. Such right grows out of
their actual use. Adoption is not use. One may
make advertisements, issue circulars, give out
price lists on certain goods; but these alone
would not give exclusive right of use. For
trademark is a creation of use.
The records show that the petitioner has never
conducted any business in the Philippines. It has
never promoted its tradename or trademark in
the Philippines. It has absolutely no business
goodwill in the Philippines. Under the law, it has
no right to the remedy it seeks.

 Any goodwill, reputation, or knowledge

regarding the name Isetann is purely the work of
the private respondent.
Isetann Department Store, Inc. is the name of a
store and not of products sold in various parts of
the country.
There is no product with the name "Isetann"
popularized with that brand name in the
Philippines.
The records show that among Filipinos, the
name cannot claim to be internationally wellknown.
The mere origination or adoption of a particular
tradename without actual use thereof in the
market is insufficient to give any exclusive right
to its use.
Indeed, the Philippines is a signatory to this
Treaty and, hence, we must honor our obligation
thereunder on matters concerning internationally
known or well known marks.
However, this Treaty provision clearly indicated
the conditions which must exist before any
trademark owner can claim and be afforded
rights such as the Petitioner herein seeks and
those conditions are that:
the mark must be internationally known or well
known; the subject of the right must be a
trademark, not a patent or copyright or anything
else;
the mark must be for use in the same or similar
kinds of goods, and
the person claiming must be the owner of the
mark.

The petitioner, Victorias Milling Company, Inc., a

domestic corporation and engaged in the
manufacture and sale of refined granulated sugar
is the owner of the trademark "VICTORIAS" and d
design registered in the Philippines Patent Office
on November 9, 1961.
The respondent Ong Su is engaged in the
repacking and sale of refine sugar and is the
owner of the trademark "VALENTINE" and design
registered in the Philippines Patent Office on June
20, 1961.

PETITIONERs CONTENTION

Victorias Mining Company, Inc. filed with the

Philippine Patent Office a petition to cancel the
registration of the Ong Su trademark "Valentine."

The petitioner allied that its tradermrk "Victorias"

and diamond design has distinctive of its sugar
long before the respondent used its trademark;
that the registration of "Valentine" and design has
caused and will cause great damage to petitioner
by reason of mistake, confusion, or deception
among the purchasers because it is similar to its
"Victorias" trademark; that registration was
fradulently obtained by Ong Su and that
"Valentine" faisely suggests a connection with
Saint Valentine or with an institution or belief
connected therewith.

Petitioner contends that the diamond design in its

trademark is an index of origin.

5. G.R. No. L-28499,

September 30,
1977
VICTORIA
MILLING
COMPANY,
INC.,
petitioner,
vs.
ONG
SU
AND
THE
HONORABLE TIBURCIO S. EVALLE, IN HIS
CAPACITY AS DIRECTOR OF PATENTS,
respondents.

Facts:

RESPONDENTs CONTENTION

Respondent averred that he is doing business

under the name and style "Valentine Packaging"
and has registered the trademark "Valentine"
with a design for sugar and was issued Certificate
of Registration No. 8891 dated June 20, 1961;
that the trademark "Victorias" with diamond
design and the trademark "Valentine" with a

design are two different marks; and that there is

absolutely no likelihood of confusion, mistake or
deception to purchasers through the concurrent
use of the petitioner's mark "Victorias" with a
diamond design and the respondents' mark
"Valentine" with a design in connection with
sugar.

The Director of Patents denied the petition to

cancel the certificate of registration of the
respondent Ong Su covering the trademark
"Valentine" and design because:

There is no question that as to their

respective
literal
designation
the
trademarks
are
different.
One
is
VALENTINE while the other is VICTORIAS.
The diamond Portion of petitioner's
trademark argued that common geometric
shapes such as circles, ovals, squares,
triangles, diamonds, and the like, when
used as vehicles for display on word
marks, ordinarily are not retarded as
indicia of origin for goods to which the
marks are applied, unless of course they
have acquired secondary meaning. I have
scoured the records completely to
ascertain if the petitioner has submitted
satisfactory evidence in this regard, but I
find absolutely nothing to base a ruling
that the triangle (sic) design has acquired
a secondary meaning with respect to its
sugar business.
As regards the colors black and red used,
it
is
fundamental
in
trademark
jurisprudence that color alone, unless
displayed in a distinct or arbitrary design,
does not function as a trademark,
inasmuch as here, or elsewhere, the colors
black and red are not so displayed by the
petitioner,
and
are
primary
colors
commonly and freely used in the printing
business.

Finally, as regards the printing sequences

or arrangement of such legends as weight,
contents, and manufacturer or packer, I
regard it as merely a matter pertaining to
the address of the goods' a matter
involving unfair competition over which
the Patent Office has no jurisdiction.

Issue:

Whether or not the Director of Patents erred in

ordering not to cancel the registration of the
respondent.

Held:

NO. The contention of petitioner that the diamond

design in its trademark is an index of origin has
no merit. The petitioner has not shown that the
design portion of the mark has been so used that
purchasers recognize the design, standing alone,
as indicating goods coming from the registrant.
As correctly stated by the Director of Patents,
common geometric shapes such as diamonds
ordinarily are not regarded as indicia of origin for
goods to which the remarks are applied unless
they have acquired a secondary meaning. And
there is no evidence that the diamond design in
the trademark of the petitioner has acquired a
secondary meaning with respect to its sugar
business. The word "Victorias" is what Identifies
the sugar contained in the bag as the product of
the petitioner. Indeed, the petitioner has
advertised its sugar in bags marked "Victorias"
with oval, hexagor, and other designs.
It seems clear that the words "Valentine" and
"Victorias" and the names and places of business
of Victorias Milling Company, Inc. and Ong Su are
the dominant features of the trademarks in
question. The petitioner has not established such
a substantial similarity between the two
trademarks in question as to warrant the
cancellation of the trademark 'Valentine'of the
respondent Su.

The Director of Patents correctly ruled that he has

no jurisdiction over the issue of unfair
competition.

6. G.R. No. L-28554, February 28, 1983

UNNO
COMMERCIAL
ENTERPRISES,
INCORPORATED, petitioner, vs. GENERAL

MILLING CORPORATION and TIBURCIO S.

EVALLE, in his capacity as Director of
Patents, respondents.

Whether or not petitioner

trademark Al Montana.

is

entitled

the

Facts:
On December 11, 1962, respondent General
Milling Corporation filed an application for the
registration of the trademark "All Montana" to be
used in the sale of wheat flour. In view of the fact
that the same trademark was previously,
registered in favor of petitioner Unno Commercial
Enterprises, Inc., the Chief Trademark Examiner
of the Philippines Patent Office declared an
interference proceeding
between respondent
corporation's application (Serial No.9732), as
Junior - Party-Applicant and petitioner company's
registration (Registration No. 9589),as Senior
Party-Applicant, docketed in the Philippines
Patent Office as Inter Partes Case No.313, to
determine which party has previously adopted
and used the trademark "All Montana.
Respondent General Milling Corporation, in its
application for registration, alleged that it started
using the trademark "All Montana" on August 31,
1955 and subsequently was licensed to use the
same by Centennial Mills, Inc. by virtue of a deed
of assignment executed on September 20, 1962.
On the other hand petitioner Unno Commercial
Enterprises, Inc. argued that the same trademark
had been registered in its favor on March 8, 1962
asserting that it started using the trademark on
June 30, 1956, as indentor or broker for S.H.
Huang Bros. & Co., a local firm. Petitioner based
its claim of ownership over the trademark in
question by the fact that it acted as an indentor
or broker for S. H. Huang Bros. & Co., a local
importer of wheat flour, offering as evidence the
various shipments, documents, invoices and
other correspondence of Centennial Mills, Inc.,
shipping thousands of bags of wheat flour bearing
the trademark "All Montana" to the Philippines.
Petitioner argued that these documents, invoices
and correspondence proved the fact that it has
been using the trademark "All Montana" as early
as1955 in the concept of an owner and
maintained that anyone, whether he is only an
importer, broker or indentor can appropriate, use
and own a particular mark of its own choice
although he is not the manufacturer of the goods
he deals with. Relying on the provisions of
Section 2-A of the Trademarks Law (Republic Act
166), petitioner insists that "the appropriation
and ownership of a particular trademark is not
merely confined to producers or manufacturers
but likewise to anyone who lawfully deals in
merchandise who renders any lawful service in
commerce, like petitioner in the case at bar.
Issue:

Ruling:
NO. The right to register trademark is based on
ownership. When the applicant is not the owner
of the trademark being applied for, he has no
right to apply for the registration of the same.
Under the Trademark Law only the owner of the
trademark, trade name or service mark used to
distinguish his goods, business or service from
the goods, business or service of others is
entitled to register the same. The term owner
does not include the importer of the goods
bearing the trademark, trade name, service
mark, or other mark of ownership, unless such
importer is actually the owner thereof in the
country from which the goods are imported. A
local importer, however, may make application
for the registration of a foreign trademark, trade
name or service mark if he is duly authorized by
the actual owner of the name or other mark of
ownership. Thus, this Court has on several
occasions ruled that where the applicant's alleged
ownership is not shown in any notarial document
and the applicant appears to be merely an
importer or distributor of the merchandise
covered by said trademark, its application cannot
be granted. Moreover, the provision relied upon
by petitioner (Sec. 2-A, Rep. Act No. 166) allows
one "who lawfully produces or deals in
merchandise ... or who engages in any lawful
business or who renders any lawful service in
commerce, by actual use thereof . . . (to)
appropriate to his exclusive use a trademark, or a
service mark not so appropriated by another . " In
the case at bar, the evidence showed that the
trademark "All Montana" was owned and
registered in the name of Centennial Mills, Inc.
which later transferred it to respondent General
Milling Corporation byway of a deed of
assignment. It is undisputed that way back in
March, 1955, Centennial Mills, Inc. under the
trade name Wenatchee Milling Co., exported flour
to the Philippines, through its distributor, herein
petitioner Unno Commercial Enterprises, Inc.
which acted as indentor or broker for the firm S.
H. Huang Bros. & Co. However, because of
increased taxes and subsidies, Centennial Mills
discontinued shipments of flour in the Philippines
and eventually sold its brands for wheat flour,
including "All Montana" brand to respondent
General Milling Corporation in consideration of
1,000 shares of stock of respondent corporation
with a par value of P100.00 per share or a total of
P100, 000. 00. Respondent General Milling
Corporation, since the start of the operation in
1961 of its flour mills located in Lapu-lapu City,

Cebu has been manufacturing and selling "All

Montana" flour in the Philippines.

7. G.R. No. 169974, April 20, 2010

SUPERIOR COMMERCIAL ENTERPRISES, INC.,
Petitioner, vs. KUNNAN ENTERPRISES LTD.
AND SPORTS CONCEPT & DISTRIBUTOR,
INC., Respondents.
On February 23, 1993, SUPERIOR filed a
complaint for trademark infringement and unfair
competition with preliminary injunction against
KUNNAN and SPORTS CONCEPT with the RTC,
docketed as Civil Case No. Q-93014888.
In support of its complaint, SUPERIOR first
claimed to be the owner of the trademarks,
trading styles, company names and business
names
KENNEX,
KENNEX
&
DEVICE,
PROKENNEX and PRO-KENNEX (disputed
trademarks).Second , it also asserted its prior use
of these trademarks, presenting as evidence of
ownership the Principal and Supplemental
Registrations of these trademarks in its name.
Third, SUPERIOR also alleged that it extensively
sold and advertised sporting goods and products
covered by its trademark registrations. Finally,
SUPERIOR presented as evidence of its ownership
of the disputed trademarks the preambular
clause of the Distributorship Agreement dated
October 1, 1982(Distributorship Agreement) it
executed with KUNNAN, which states:
Whereas, KUNNAN intends to acquire the
ownership of KENNEX trademark registered by
the [sic] Superior in the Philippines. Whereas, the
[sic] Superior is desirous of having been
appointed [sic] as the sole distributor by KUNNAN
in the territory of the Philippines. [Emphasis
supplied.]
In its defense, KUNNAN disputed SUPERIORs
claim of ownership and maintained that
SUPERIOR as mere distributor from October 6,
1982 until December 31, 1991 fraudulently
registered the trademarks in its name. KUNNAN
alleged that it was incorporated in 1972, under
the name KENNEX Sports Corporation for the
purpose of manufacturing and selling sportswear
and sports equipment; it commercially marketed

its products in different countries, including the

Philippines since 1972. It created and first used
PRO KENNEX, derived from its original
corporate name, as a distinctive trademark for its
products in 1976. KUNNAN also alleged that it
registered the PRO KENNEX trademark not only
in the Philippines but also in 31 other countries,
and widely promoted the KENNEX and PRO
KENNEX
trademarks
through
worldwide
advertisements in print media and sponsorships
of known tennis players.
On October 1, 1982, after the expiration of its
initial distributorship agreement with another
company, KUNNAN appointed SUPERIOR as its
exclusive distributor in the Philippines under a
Distributorship Agreement whose pertinent
provisions state:
Whereas, KUNNAN intends to acquire ownership
of KENNEX trademark registered by the Superior
in the Philippines. Whereas, the Superior is
desirous of having been appointed [sic] as the
sole distributor by KUNNAN in the territory of the
Philippines.
Now, therefore, the parties hereto agree as
follows:
1. KUNNAN in accordance with this Agreement
will appoint the sole distributorship right to
Superior in the Philippines, and this Agreement
could be renewed with the consent of both
parties upon the time of expiration.
2. The Superior, in accordance with this
Agreement, shall assign the ownership of KENNEX
trademark, under the registration of Patent
Certificate No. 4730 dated23 May 1980 to
KUNNAN on the effects [sic] of its ten (10) years
contract of distributorship, and it is required that
the ownership of the said trademark shall be
genuine, complete as a whole and without any
defects.
On December 3, 1991, upon the termination of its
distributorship
agreement
with
SUPERIOR,
KUNNAN appointed SPORTS CONCEPT as its new
distributor. Subsequently, KUNNAN also caused
the publication of a Notice and Warning in the
Manila Bulletin's January 29, 1993 issue, stating
that (1) it is the owner of the disputed
trademarks; (2) it terminated its Distributorship
Agreement with SUPERIOR; and (3) it appointed
SPORTSCONCEPT as its exclusive distributor. This
notice prompted SUPERIOR to file its Complaint
for Infringement of Trademark and Unfair
Competition with Preliminary Injunction against
KUNNAN.
THE IPO AND CA RULINGS
There being sufficient evidence to prove that the
Petitioner-Opposer (KUNNAN) is the prior user and

owner of the trademarkPRO-KENNEX, the

consolidated Petitions for Cancellation and the
Notices of Opposition are hereby GRANTED.
Consequently,
thetrademarkPRO-KENNEX
bearing Registration Nos. 41032, 40326, 39254,
4730, 49998for the mark PRO-KENNEX issued in
favor of Superior Commercial Enterprises, Inc.,
herein Respondent-Registrant under the Principal
Register and SR No. 6663 are hereby CANCELLED.
Accordingly, trademark application Nos. 84565
and 84566, likewise for the registration of the
mark PRO-KENNEX are hereby REJECTED.
It
dismissed
SUPERIORs
Complaint
for
Infringement
of
Trademark
and
Unfair
Competition with Preliminary Injunction on the
ground that SUPERIOR failed to establish by
preponderance of evidence its claim of ownership
over the K ENNEX and P RO K ENNEX trademarks.
The CA found the Certificates of Principal and
Supplemental Registrations and the whereas
clause of the Distributorship Agreement
insufficient to support SUPERIORs claim of
ownership over the disputed trademarks.
The CA stressed that SUPERIORs possession of
the aforementioned Certificates of Principal
Registration does not conclusively establish its
ownership of the disputed trademarks as
dominion over trademarks is not acquired by the
fact of registration alone; at best, registration
merely raises a presumption of ownership that
can be rebutted by contrary evidence. The CA
further emphasized that the Certificates of
Supplemental Registration issued in SUPERIORs
name do not even enjoy the presumption of
ownership accorded to registration in the
principal register; it does not amount to a prima
facie evidence of the validity of registration or of
the registrants exclusive right to use the
trademarks in connection with the goods,
business, or services specified in the certificate.
From jurisprudence, unfair competition has been
defined as the passing off (or palming off) or
attempting to pass off upon the public of the
goods or business of one person as the goods or
business of another with the end and probable
effect of deceiving the public. The essential
elements of unfair competition are (1) confusing
similarity in the general appearance of the goods;
and (2) intent to deceive the public and defraud a
competitor.
Jurisprudence also formulated the following true
test of unfair competition: whether the acts of
the defendant have the intent of deceiving or are
calculated to deceive the ordinary buyer making
his purchases under the ordinary conditions of
the particular trade to which the controversy
relates. One of the essential requisites in an

action to restrain unfair competition is proof of

fraud; the intent to deceive, actual or probable
must be shown before the right to recover can
exist.
In the present case, no evidence exists showing
that KUNNAN ever attempted to pass off the
goods it sold (i.e. sportswear, sporting goods and
equipment) as those of SUPERIOR. In addition,
there is no evidence of bad faith or fraud
imputable to KUNNAN in using the disputed
trademarks. Specifically, SUPERIOR failed to
adduce any evidence to show that KUNNAN by
the above-cited acts intended to deceive the
public as to the identity of the goods sold or of
the manufacturer of the goods sold. In
McDonalds Corporation v. L.C. Big Mak Burger,
Inc., we held that there can be trademark
infringement without unfair competition such as
when the infringer discloses on the labels
containing the mark that he manufactures the
goods, thus preventing the public from being
deceived that the goods originate from the
trademark owner. In this case, no issue of
confusion arises because the same manufactured
products are sold; only the ownership of the
trademarks is at issue.
Finally, with the established ruling that KUNNAN is
the rightful owner of the trademarks of the goods
that SUPERIOR asserts are being unfairly sold by
KUNNAN
under
trademarks
registered
in
SUPERIORs name, the latter is left with no
effective right to make a claim. In other words,
with the CAs final ruling in the Registration
Cancellation Case, SUPERIORs case no longer
presents a valid cause of action. For this reason,
the unfair competition aspect of the SUPERIORs
case likewise falls.

8. G.R. No. 185917, June 1, 2011

FREDCO MANUFACTURING CORPORATION
Petitioner, vs. PRESIDENT AND FELLOWS OF
HARVARD COLLEGE (HARVARD UNIVERSITY),
Respondents.

Facts:

Petitioner Fredco Manufacturing Corporation

(Fredco), a corporation organized and existing
under the laws of the Philippines, filed a Petition
for Cancellation of Registration No. 56561 before

the Bureau of Legal Affairs of the Intellectual

Property Office (IPO) against respondents
President and Fellows of Harvard College (Harvard
University), a corporation organized and existing
under the laws of Massachusetts, United States of
America.

Director Estrellita Beltran-Abelardo of the

Bureau of Legal Affairs, IPO cancelled
Harvard Universitys registration of the
mark Harvard under Class 25

Harvard University filed an appeal before

the Office of the Director General of the
IPO. In a Decision9 dated 21 April 2008,
the Office of the Director General, IPO
reversed the decision of the Bureau of
Legal Affairs, IPO.

Fredco alleged that the mark Harvard for tshirts, polo shirts, sandos, briefs, jackets and
slacks was first used in the Philippines on 2
January
1982
by
New
York
Garments
Manufacturing & Export Co., Inc. (New York
Garments), a domestic corporation and Fredcos
predecessor-in-interest.
A
certificate
of
registration was issued with a 20-year term,
renewable.

Fredco alleged that at the time of issuance of

Registration No. 56561 to Harvard University,
New York Garments had already registered the
mark Harvard for goods under Class 25. Fredco
alleged that the registration was cancelled on 30
July 1998 when New York Garments inadvertently
failed to file an affidavit of use/non-use on the
fifth anniversary of the registration but the right
to the mark Harvard remained with its
predecessor New York Garments and now with
Fredco.

n addition, there was no evidence

that Fredco or New York Garments
was licensed or authorized by
Harvard University to use its name
in commerce or for any other use.
Fredco filed a petition for review before
the Court of Appeals assailing the decision
of the Director General.
the Court of Appeals affirmed the decision
of the Office of the Director General of the
IPO. MR was also denied. Hence, this
petition.
-

Harvard University, on the other hand, alleged

that it is the lawful owner of the name and mark
Harvard in numerous countries worldwide,
including the Philippines. Harvard University
alleged that in March 2002, it discovered, through
its international trademark watch program,
Fredcos website www.harvard-usa.com. The
website advertises and promotes the brand name
Harvard Jeans USA without Harvard Universitys
consent.

The Director General ruled that

more than the use of the
trademark in the Philippines, the
applicant must be the owner of the
mark sought to be registered. The
Director General ruled that the
right to register a trademark is
based on ownership and when the
applicant is not the owner, he has
no right to register the mark.

Issue:
The issue in this case is whether the Court of
Appeals committed a reversible error in affirming
the decision of the Office of the Director General
of the IPO.

Held:
The websites main page shows an oblong logo
bearing the mark Harvard Jeans USA,
Established
1936,
and
Cambridge,
Massachusetts. On 20 April 2004, Harvard
University filed an administrative complaint
against Fredco before the IPO for trademark
infringement and/or unfair competition with
damages.
Harvard University stated that it never authorized
or licensed any person to use its name and mark
Harvard in connection with any goods or
services in the Philippines.

PETITION
NOT
MERITORIOUS.
Fredcos
registration of the mark Harvard and its
identification
of
origin
as
Cambridge,
Massachusetts falsely suggest that Fredco or its
goods are connected with Harvard University,
which uses the same mark Harvard and is also
located in Cambridge, Massachusetts.

the Philippines and the United States of

America are both signatories to the Paris
Convention for the Protection of Industrial
Property
(Paris
Convention).
The
Philippines became a signatory to the
Paris Convention on 27 September 1965.

well-known mark need not be registered or

used in the Philippines.32 All that is
required is that the mark is well-known
internationally and in the Philippines for
identical or similar goods, whether or not
the mark is registered or used in the
Philippines.
-

ARTICLE 6bis

(i) The countries of the Union

undertake either administratively if
their legislation so permits, or at
the request of an interested party,
to refuse or to cancel the
registration and to prohibit the use
of a trademark which constitutes a
reproduction,
imitation
or
translation,
liable
to
create
confusion or a mark considered by
the competent authority of the
country as being already the mark
of a person entitled to the benefits
of the present Convention and used
for identical or similar goods . These
provisions shall also apply when
the essential part of the mark
constitutes a reproduction of any
such well-known mark or an
imitation liable to create confusion
therewith.

ARTICLE 8

A trade name shall be protected in

all
the
countries
of
the
Union without the obligation of
filing or registration, whether or not
it forms part of a trademark.
(Emphasis supplied)

Under Article 8 of the Paris Convention, as

well as Section 37 of R.A. No. 166, Harvard
University is entitled to protection in the
Philippines of its trade name Harvard
even without registration of such trade
name in the Philippines. This means that
no educational entity in the Philippines
can use the trade name Harvard without
the consent of Harvard University.
Likewise, no entity in the Philippines can
claim, expressly or impliedly through the
use of the name and mark Harvard, that
its products or services are authorized,
approved, or licensed by, or sourced from,
Harvard University without the latters
consent.

To be protected under the two directives of

the Ministry of Trade, an internationally

There is no question then, and this Court

so declares, that Harvard is a wellknown name and mark not only in the
United States but also internationally,
including the Philippines. The mark
Harvard is rated as one of the most
famous marks in the world. It has been
registered in at least 50 countries. It has
been used and promoted extensively in
numerous publications worldwide. It has
established
a
considerable
goodwill
worldwide since the founding of Harvard
University more than 350 years ago. It is
easily recognizable as the trade name and
mark of Harvard University of Cambridge,
Massachusetts,
U.S.A.,
internationally
known as one of the leading educational
institutions in the world. As such, even
before Harvard University applied for
registration of the mark Harvard in the
Philippines,
the mark was already
protected under Article 6bis and Article 8
of the Paris Convention. Again, even
without applying the Paris Convention,
Harvard University can invoke Section 4(a)
of R.A. No. 166 which prohibits the
registration of a mark which may
disparage
or falsely
suggest
a
connection
with persons,
living
or
dead, institutions, beliefs x x x.

9. G.R. No. 169504, March 3, 2010

COFFEE PARTNERS, INC., Petitioner, vs. SAN
FRANCISCO COFFEE & ROASTERY, INC.,
Respondent.

Facts:
The petitioner holds a business in maintaining
coffee shops in the Philippines. It is registered
with the Securities and Exchange Commission in
January 2001. In its franchise agreement with
Coffee Partners Ltd, it carries the trademark San
Francisco Coffee. Respondent is engaged in the
wholesale and retail sale of coffee that was
registered in SEC in May 1995under a registered
business name of San Francisco Coffee &
Roastery, Inc. It entered into a joint venture with
Boyd Coffee USA to study coffee carts in malls.

When respondent learned that petitioner will

open a coffee shop in Libis, Q.C. they sent a letter
to the petitioner demanding them to stop using
the name San Francisco Coffee as it causes
confusion to the minds of the public. A complaint
was also filed by respondents before the Bureau
of Legal Affairs of the Intellectual Property Office
for infringement and unfair competition with
claims for damages. Petitioners contend that
there are distinct differences in the appearance of
their trademark and that respondent abandoned
the use of their trademark when it joined venture
with Boyd Coffee USA. The Bureau of Legal Affairs
of the IPO held that petitioners trademark
infringed on the respondents trade name as it
registered its business name first with the DTI in
1995 while petitioner only registered its
trademark in 2001.
Furthermore, it ruled that the respondent did not
abandon the use of its trade name upon its joint
venture with Boyd Coffee USA since in order for
abandonment to exist it must be permanent,
intentional and voluntary. It also held that
petitioners use of the trademark "SAN
FRANCISCO COFFEE" will likely cause confusion
because of the exact similarity in sound, spelling,
pronunciation, and commercial impression of the
words "SAN FRANCISCO which is the dominant
portion of respondents trade name and
petitioners trademark. Upon appeal before the
office of the Director General of the IPO, the
decision of its legal affairs was reversed declaring
there was no infringement. The Court of Appeals
however set aside its decision and reinstated the
IPO legal affairs decision. Petitioner contends
that the respondents trade name is not
registered therefore a suit for infringement is not
available.
Issue:
Whether or not the petitioners use of the
trademark "SAN FRANCISCO COFFEE" constitutes
infringement of respondents trade name "SAN
FRANCISCO COFFEE & ROASTERY, INC., even if
the trade name is not registered with the
Intellectual Property Office (IPO).

Held:
Petition denied. Registration of a tradename
before the IPO is no longer a requirement to file
an action for infringement as provided in Section
165.2 of RA 8293. All that is required is that the
trade name is previously used in trade or
commerce in the Philippines. There is no showing
that respondent abandoned the use of its trade

name as it continues to embark to conduct

research on retailing coffee, import and sell
coffee machines as among the services for which
the use of the business name has been
registered.
The court also laid down two tests to determine
similarity and likelihood of confusion. The
dominancy test focuses on similarity of the
prevalent features of the trademarks that could
cause deception and confusion that constitutes
infringement. Exact duplication or imitation is not
required. The question is whether the use of the
marks involved is likely to cause confusion or
mistake in the mind of the public or to deceive
consumers.
the
holistic
test
entails
a
consideration of the entirety of the marks as
applied to the products, including the labels and
packaging, in determining confusing similarity.15
The discerning eye of the observer must focus
not only on the predominant words but also on
the other features appearing on both marks in
order that the observer may draw his conclusion
whether one is confusingly similar to the other.
Applying the dominancy test or the holistic test,
petitioners "SAN FRANCISCO COFFEE" trademark
is a clear infringement of respondents "SAN
FRANCISCO COFFEE & ROASTERY, INC." trade
name. The descriptive words "SANFRANCISCO
COFFEE" are precisely the dominant features of
respondents trade name. And because both are
involved in coffee business there is always the
high chance that the public will get confused of
the source of the coffee sold by the petitioner.
Respondent has acquired an exclusive right to the
use of the trade name "SAN FRANCISCO COFFEE
& ROASTERY, INC." since the registration of the
business name with the DTI in 1995.
10.G.R. No 158589, June 27, 2006
PHILIP MORRIS, INC., Petitioner vs. COURT
OF APPEALS, Respondent
(EQUAL STANDING OF INTERNATIONAL LAW
AND MUNICIPAL LAW)
Petition for review under Rule 45 of the Rules of
Court, petitioners Philip Morris, Inc., Benson &
Hedges (Canada) Inc., and Fabriques de Tabac
Reunies, S.A.(now Philip Morris Products S.A.)
seek the reversal and setting aside of the
following issuances of the Court of Appeals (CA)in
CA-G.R. CV No. 66619: PETITION DENIED
1. Decision dated January 21, 20031 affirming an
earlier decision of the Regional Trial Court of Pasig
City, Branch 166, in its Civil Case No. 47374
Dismissed
the
complaint
for
trademark
infringement and damages thereat commenced
by the petitioners against respondent Fortune
Tobacco Corporation; and

2. Resolution dated May 30, 20032 denying

petitioners motion for reconsideration.
Facts:
Petitioner Philip Morris, Inc., a corporation (State
of Virginia, U.S.A), is the registered owner of the
trademark
MARK
VII for
cigarettes.(per
Certificate of Registration No.18723 issued on
April 26, 1973 by the Philippine Patents Office
(PPO)
Similarly, petitioner Benson & Hedges (Canada),
Inc., a subsidiary of Philip Morris, Inc., is the
registered owner of the trademark MARK TEN
for cigarettes (PPO Certificate of Registration No.
11147)
Fabriques de Tabac Reunies, S.A. (Swiss
company), another subsidiary of Philip Morris,
Inc., is the assignee of the trademark LARK,
(Trademark Certificate of Registration No. 19053)
(originally registered in 1964 by Ligget and Myers
Tobacco Company)
Respondent Fortune Tobacco Corporation, a
company
organized
in
the
Philippines,
manufactures and sells cigarettes using the
trademark MARK.
Petitioners, on the claim that an infringement of
their respective trademarks had been committed,
filed, on August 18, 1982, a Complaint for
Infringement of Trademark and Damages against
respondent
Fortune
Tobacco
Corporation,
docketed as Civil Case No.47374 of the Regional
Trial Court of Pasig , Branch 166.
The decision under review summarized what
happened next, as follows:
o Prayer for the issuance of a preliminary
injunction, [petitioners] alleged that they are
foreign corporations not doing business in the
Philippines and are suing on an isolated
transaction.
Countries in which they are domiciled
grant to corporate or juristic persons of
the Philippines the privilege to bring
action for infringement, without need of
a license to do business in those
countries.
o [Petitioners] likewise manifested [being
registered owners of the trademark MARK VII
and MARK TEN
Registered the trademarks in their
respective countries of origin
by virtue of the long and extensive
usage of the same, these trademarks

have already gained international fame

and acceptance
[respondent], without any previous
consent from any of the [petitioners],
manufactured
and
sold
cigarettes
bearing the identical and/or confusingly
similar trademark MARK
have caused and is likely to cause
confusion or mistake, or would deceive
purchasers and the public in general into
buying these products under the
impression and mistaken belief that they
are buying [petitioners] products.
o Invoked provisions of the Paris Convention for
the Protection of Industrial and Intellectual
Property (Paris Convention)
Philippines is a signatory, [petitioners]
pointed out that upon the request of an
interested party, a country of the Union
may prohibit the use of a trademark
which
constitutes
a
reproduction,
imitation, or translation of a mark
already belonging to a person entitled to
the benefits of the said Convention. In
accordance with Section 21-A in relation
to Section 23 of Republic Act 166, as
amended, they are entitled to relief in
the form of damages [and] the issuance
of a writ of preliminary injunction which
should be made permanent.
[Respondent] filed its Answer denying
[petitioners] material allegations and
averred [among other things] that
MARK is a common word, which cannot
particularly identify a product to be the
product of the [petitioners]
o After the termination of the trial on the merits
trial court rendered its Decision dated November
3,
1999dismissing
the
complaint
and
counterclaim after making a finding that the
[respondent]
did
not
commit
trademark
infringement against the [petitioners].
o The issue of whether or not there was
infringement of the [petitioners] trademarks by
the [respondent] was likewise answered in the
negative. It expounded that in order for a name,
symbol or device to constitute a trademark, it
must, either by itself or by association, point
distinctly to the origin or ownership of the article
to which it is applied and be of such nature as to
permit an exclusive appropriation by one person.
Maintaining to have the standing to sue in the
local forum and that respondent has committed

trademark infringement, petitioners went on

appeal to the CA.
(Appellate recourse docket CA-G.R. CV No. 66619)
o CA decision on January 21, 2003 (while ruling
for petitioners on the matter of their legal
capacity to sue in this country for trademark
infringement) affirmed the trial courts decision
on the underlying issue of respondents liability
for infringement.
Motion for reconsideration denied by the CA
(Resolution of May 30, 2003)
Issues:
(1) whether or not petitioners, as Philippine
registrants of trademarks, are entitled to enforce
trademark rights in this country;
(2) whether or not respondent has committed
trademark infringement against petitioners by its
use of the mark MARK for its cigarettes, hence
liable for damages.
Respondent: Issue the propriety of the petition
as it allegedly raises questions of fact.
The petition is bereft of merit.
Petition raises both questions of fact and law
o question of law exists when the doubt
or difference arises as to what the law is
on a certain state of facts
o question of fact when the doubt or
difference arises as to the truth or falsity
of alleged facts
Court is not the proper venue to
consider factual issues as it is
not a trier of facts
Unless the factual findings of
the
appellate
court
are
mistaken, absurd, speculative,
conflicting, tainted with grave
abuse of discretion, or contrary
to the findings culled by the
court of origin, we will not
disturb them

Petitioners
assert
that,
as
corporate nationals of member-countries of
the Paris
Union,
they can
sue before Philippine courts for infringement of
trademarks, or for unfair competition, without
need of obtaining registration or a license
to do business in the Philippines, and
without necessity of actually doing business
in the Philippines.
o Right and mechanism are accorded by
Section 21-A of Republic Act
(R.A.)
No.
166or
the
Trademark Law, as amended
Article 2 of the Paris Convention for the
Protection of Industrial Property, aka Paris
Convention.
Not doing business in the Philippines does not
mean that cigarettes bearing their trademarks
are not available and sold locally. Citing
Converse Rubber Corporation v. Universal
Rubber Products, Inc., such availability and
sale may be affected through the acts of
importers and distributor
Entitlement to protection even in the absence of
actual use of trademarks in the country
o Philippines adherence to the Trade
Related
Aspects of Intellectual Property
Rights or the TRIPS Agreement
o enactment of R.A. No. 8293, or the
Intellectual
Property Code (IP Code)
o fame of a trademark may be acquired
through
promotion or advertising with no
explicit
requirement of actual use in local
trade or
commerce
Before
discussing
petitioners
claimed
entitlement to enforce trademark rights in the
Philippines, it must be emphasized that their
standing to sue in Philippine courts had been
recognized, and rightly so, by the CA
o such right to sue does not necessarily mean
protection of their registered marks in the
absence of actual use in the Philippines. Thus
clarified, what petitioners now harp about is their
entitlement to protection on the strength of
registration of their trademarks in the Philippines.
Held:

Petitioners: Contentions should be treated as

purely legal since they are assailing erroneous
conclusions deduced from a set of undisputed
facts
A trademark is any distinctive word, name,
symbol, emblem, sign, or device, or any
combination thereof adopted and used by a
manufacturer or merchant on his goods to
identify and distinguish them from those
manufactured, sold, or dealt in by others.
o A trademark deserves protection.
PETITIONER:

As we ruled in G.R. No. 91332, 18:

1. RECIPROCITY REQUIREMENT
Registration of a trademark gives the registrant
(petitioners) advantages denied non-registrants
or ordinary users (respondent)
o validity of the registration
o ownership and the exclusive right to use
the registered marks

they may not successfully sue on the basis alone

of their respective certificates of registration of
trademarks.
o Petitioners: still foreign corporations
o condition to availment of the rights and
privileges& their trademarks in this
country:
On
top
of
Philippine
registration,
their
country
grants
substantially
similar
rights and privileges to Filipino
citizens pursuant to Section 21A20 of R.A. No. 166.
In Leviton Industries v. Salvador
o Court: reciprocity requirements a
condition sine qua non to filing a suit by
foreign corporation
Unless alleged in the complaint,
would justify dismissal
o Complainant is a national of a Paris
Conventionadhering
country,
its
allegation that it is suing under said
Section 21-A would suffice, because the
reciprocal agreement between the two
countries is embodied and supplied by the
Paris Convention
Being
considered
part
of
Philippine municipal laws, can
be taken judicial notice of in
infringement suits.
2. REGISTRATION VERSUS ACTUAL USE

Members of the Paris Union do not

automatically entitle petitioners to the
protection of their trademarks in this
country ABSENT ACTUAL USE OF THE
MARKSIN LOCAL COMMERCE AND TRADE.
Philippines adherence to the Paris
Convention effectively obligates the
country to honor and enforce its
provisions( as regards the protection of
industrial property of foreign nationals in
this country)

o However, any protection accorded has to be

made subject to the limitations of Philippine laws.
o Hence, despite Article 2 of the Paris Convention
which substantially provides that:
(1) nationals of member-countries shall
have in this country rights specially
provided by the Convention as are
consistent with Philippine laws, and enjoy
the privileges that Philippine laws now
grant or may hereafter grant to its
national
(2) while no domicile requirement in the
country where protection is claimed shall
be required of persons entitled to the

benefits of the Union for the enjoyment of

any industrial property rights
foreign nationals must still
observe and comply with the
conditions
imposed
by
Philippine law on its nationals.

R.A. No. 166(as amended, specifically

Sections 228 and 2-A29), mandates actual
use of the marks and/or emblems in local
commerce and trade before they may be
registered and ownership thereof acquired
o the petitioners cannot, therefore,
dispense with the element of actual use.
o Their being nationals of membercountries of the Paris Union does not alter
the legal situation.

In Emerald Garment Mfg. Corporation v. Court

of Appeals, the Court reiterated its rulings in
Sterling Products International, Inc. v.
Farbenfabriken
Bayer
Aktiengesellschaft,
KabushiKaisha
Isetan
v.
Intermediate
Appellate Court, and Philip Morris v. Court of
Appeals and Fortune Tobacco Corporation on
the importance of ACTUAL COMMERCIAL
USEOF A TRADEMARK in the Philippines
notwithstanding the Paris Convention:
o The provisions of the 1965 Paris
Convention relied upon by private
respondent and Sec. 21-A of the
Trademark
Law
were
sufficiently
expounded upon and qualified in the
recent case of Philip Morris, Inc., et.al. vs.
Court of Appeals:
Following universal acquiescence
and comity, our municipal law on
trademarks
regarding
the
requirements of actual use in the
Philippines must subordinate an
international agreement inasmuch
as the apparent clash is being
decided by a municipal tribunal.
Withal, the fact that international
law has been made part of the law
of the land
does NOT by any means imply the
primacy of international law over
national law in the municipal
sphere?
Under
the
DOCTRINE
OF
INCORPORATION as applied in most
countries, rules of International
Law are given a standing EQUAL,
not superior, to national legislative
enactments.
A foreign corporation) may have
the
capacity
to
sue
for
infringement but whether they
have an exclusive right over their
symbol as to justify issuance of the

controversial writ will depend on

actual use of their trademarks in
the Philippines in line with Sections
2 and 2-A of the same law.
It
is
thus
incongruous
for
petitioners to claim that when a
foreign corporation not licensed to
do business in the Philippines files
a complaint for infringement, the
entity need not be actually using
its trademark in commerce in the
Philippines
Such a foreign corporation may
have the personality to file a suit
for infringement but it may not
necessarily
be
entitled
to
protection due to absence of actual
use of the emblem in the local
market.

Registration of trademark cannot be deemed

conclusive as to the actual use of such
trademark in local commerce.
Registration does not confer upon the
registrant
an
absolute
righto
the
registered mark.
merely constitutes prima facie evidence
that the registrant is the owner of the
registered mark
Evidence of non-usage of the mark rebuts
the presumption of trademark ownership
We stress that registration in the
Philippines of trademarks does not ipso
facto convey an absolute right or exclusive
ownership thereof.
Shangri-La
International
Hotel
Management, Ltd. v. Development Group
of Companies, Inc.
Trademark is a creation of use
Actual use is a pre-requisite to
exclusive ownership
Registration is only an administrative
confirmation of the existence of the
right of ownership of the mark
o does not perfect such right;
actual use thereof is the
perfecting ingredient
Petitioners reliance on Converse Rubber
Corporation is quite misplaced
o different factual milieu
o foreign owner of a Philippine trademark,
albeit not licensed to do, and not so engaged
in, business in the Philippines, may actually
earn reputation or goodwill for its goods in the
country.
o But unlike in the instant case, evidence of
actual sales of Converse rubber shoes, such
as sales invoices, receipts and the testimony

of a legitimate trader, was presented icon

verse.

This Court also finds the IP Code and the

TRIPS Agreement to be inapplicable
o the infringement complaint filed in August
1982 and tried under the aegis of R.A. No.166,
as amended.
o The IP Code (January 1, 1998) no
provision
on
retroactivity;
TRIPS
Agreement (December 16, 1994)

Registration of a trademark unaccompanied

by actual use thereof in the country accords
the registrant only the standing to sue for
infringement in Philippine courts.

Entitlement to protection of such trademark in

the country is entirely a different matter.

11.G.R. No. 159938, January 22, 2007

SHANGRI-LA
INTERNATIONAL
HOTEL
MANAGEMENT,
LTD.,
SHANGRI-LA
PROPERTIES, INC., MAKATI SHANGRI-LA
HOTEL
&
RESORT,
INC.,
AND
KUOK
PHILIPPINES PROPERTIES, INC., Petitioners,
vs.
DEVELOPERS GROUP OF COMPANIES, INC.,
Respondent.

Facts:
The core of the controversy is the "Shangri-La"
mark and "S" logo of Shangri-la Hotel and that of
DGCI which are similar in design and even in the
font & lettering style.
Shangri-la Hotel had been engaged in the hotel
industry since 1969. As far back as 1962, it has
been adopting the name Shangri-la in all chain
of hotels around the world. To centralize the
operations of all Shangri-la hotels and the
ownership of the Shangri-La mark and S logo,
the owner had incorporated in Hong Kong and
Singapore,
among
other
places,
several
companies that form part of the Shangri-La
International Hotel Management Ltd. Group of
Companies. In 1975, the S logo was launched.
The logo, as described, is shaped like a "S"
represents the uniquely Asean architectural
structures as well as keep to the legendary
Shangri-la theme with the mountains on top
being reflected on waters below and the
connecting centre line serving as the horizon.
This logo, which is a bold, striking definitive
design,
embodies
both
modernity
and
sophistication in balance and thought.

Since then and up to the present, the ShangriLa mark and

S logo have been used
consistently and continuously by all Shangri-La
hotels in their paraphernalia, such as stationeries,
envelopes, business forms, menus, displays and
receipts. It started to operate in the Philippines in
1987 with the opening of EDSA Shangri-la Hotel &
Makati Shangri-la Hotel.
On the other hand, DGCI owned Shangri-la Finest
Chinese Cuisine restaurant which was formerly
known as Carvajal Restaurant until December
1982 when DGCI took over. DGCI caused the filing
for the registration of the mark & logo on October
1982. Later it was granted a certificate of
registration and had been using the mark & logo
since then. According to the chairman of DGCI,
the S logo, which is very similar in almost all
aspect with the Shangri-la Hotel logo, was given
to him by a jeepney driver who he commissioned
to make the design sometime in December 1982.

Under RA 166, any person may appropriate to his

exclusive use a trademark, trade name, or a
service mark not so appropriated by another. The
exclusion did not require that the prior
appropriation of another must be in the
Philippines; hence, it was interpreted to cover
also appropriation outside the country. Shangri-la
Hotel has been continuously using their mark &
logo since 1975, while DGCI began using theirs
towards the end of 1982. Therefore, DGCI could
not be the owner of the mark & logo for Shangrila Hotel was already using or appropriating it
abroad long before DGCI could use it in the
Philippines. A person or entity who is not the
owner of a trademark could not bring an action of
infringement. Decision of the CA was set aside,
complaint of DGCI was dismissed.

When Shangri-la Hotel opened in the Philippines,

DGCI claimed ownership of said mark and logo on
the strength of its prior use thereof within the
country than Shangri-la Hotel which had no
operation in the country until 1987; hence, filed
for an infringement complaint against Shangri-la
Hotel.

12.G.R. No. 103543, July 5, 1993

ASIA BREWERY, INC. petitioner, vs. THE
HON. COURT OF APPEALS and SAN MIGUEL
CORPORATION, respondents.

Issue:

Facts:

W/n Shangri-la Hotel infringes on the logo of

DGCI.

On September 15, 1988, San Miguel Corporation

(smc) filed a complaint against (ABI) for
infringetment
of
trademark
and
unfair
competition on account of the latters BEER NA
BEER product which has been competing with
SMCs SAN MIGUEL PALE PILSENS the local beer
market. SMC claims that the trade dress of
BEER PILSEN is, confusingly SAN MIGUEL PALE
PILSEN because both are bottled in 320 ml. steine
type, amber-colored bottles with regular labels.

Held:
NO. Shangri-la Hotel did not infringe on the logo
of DGCI.
The applicable law at the time is RA 166, which
requires that there must be at least 2 months
actual use prior to registration. The registration
by DGCI is invalid for want of the actual use
requirement. Based on the facts & testimonies of
the chairman of DGCI, the logo was designed in
December 1982; yet, the application was filed as
early as October 1982. There could be no actual
use considering the foregoing facts; thus,
invalidating DGCIs registration.
Even if registration was valid, it is not enough to
confer ownership of the trademark. As already
held, registration merely creates a prima facie
presumption of the validity of the registration,
of the registrant's ownership of the trademark
and of the exclusive right to the use thereof.
This presumption is rebuttable & must give way
to evidence on the contrary.

On August 27, 1990, RTC dismissed the

complaint. SMC appealed to the Court of Appeal
the lower courts decision. Upon a motion for
reconsideration filed by ABI, the decision was the
time, ABI appealed to this court by a petition for
certiorari under Rule 45 Rules of Court.
Issue:
Does ABIs BEER PALE PILSEN label or design
infringe upon that of SAN MIGUEL PALE PILSEN?
Held:
No.
Only registered trade marks, trade names and
service marks are protected against infringement

authorized use by another or others. It has been

consistently
held
that
the
question
of
infringement remark is to be determined by the
test of dominancy. Similarity in size, form and
color, while relevant, inclusive. If the competing
trademark contains the main or essential or
dominant features of another, and command
deception is likely to result, infringement takes
place. Duplication or imitation is not necessary;
nor necessary that the infringing label should
suggest an effort to imitate.
The fact that the words pale pilsen are part of
ABIs trademark does not constitute an
infringement of SMCs trademark: SAN MIGUEL
PALE PILSEN, for pale pilsen are generic words
descriptive of color (pale), of a type of beer
(pilsen), which is a light bohemian beer with
strong hops flavor that originate the City of Pilsen
in Czechoslovakia and became famous in the
Middle ages. Pilsen is a primarily geologically
descriptive word.
A word or a combination of words which is merely
descriptive of an article of trade, or its
composition, characteristics, or qualities, cannot
be appropriated and protected as a trademark to
the exclusion its use by others inasmuch as all
persons have an equal right to produce and vend
similar articles, they also have the right to
describe them properly and ot use any
appropriate language or words for that purpose,
and no person can appropriate to himself
exclusively any word or expressions, properly
descriptive of the article, its qualities, ingredients
or characteristics, and thus limit other persons in
the use of language appropriate to the
description of their manufacturers, the right to
the use of such language being common to all.
This rule excluding descriptive term has also
been held to apply to trade-means. As to whether
words employed fall within this prohibition, it is
said that the true test is not whether they are
exhaustively descriptive of the article designated,
but whether in themselves and as they are
commonly used by those who understand their
meaning, they are reasonably indicative and
descriptive of the thing intended. If they are thus
descriptive, and not arbitrary, they cannot be
appropriated from general use and become the
exclusive property of anyone. [52 Am Jur. 542543].
The circumstance that the manufacturer of BEER
PALE PILSEN, Asia Brewery Incorporated, has
printed its name all over the bottle of its beer
product: on the label, on the back of the botlle, as
well as on the bottle cap, disproves SMCs charge
that ABI dishonestly and fraudently intends to
palm off its BEER PALE PILSEN as SMCs product.
In view of the visible differences between the two

products, the Court believes its quite unlikely

that a customer of average intelligence would
mistake a bottle of BEER PALE PILSEN for SAN
MIGUEL PALE PILSEN.
13.G.R. No. L-27897, December 2, 1927
WESTERN EQUIPMENT, Petitioner vs. FIDEL
A. REYES, Respondent
An appeal from the decision of the lower court
granting the plaintiff's prayer for writ of
preliminary injunction, reversing the decision of
the Bureau of Commerce and Industy, and
enjoining private and public defendant organizing
and registering a domestic corporation under a
name identical to that of one of the plaintiffs.
Facts:
Western Equipment Supply Company, a foreign
corporation organized under the laws of Nevada,
is engaged in the importation and selling in the
Philippine Islands of electrical and telephone
apparatus manufactured and marked by Western
Electric
Company,
Inc,
another
foreign
corporation. Such business in the Philippines by
Western Equipment Supply Company started
when its application for a license to operate
business in the Philippines, through a duly
appointed Filipino agent, was granted via
provisional license since May 20, 1926.
Western Electric Company does not engage in
business in and with the Philippines except for
the exportation of its marked products to the
Philippines by Western Equipment Supply
Company and another company, the Electric
Supply Company, Inc headed by Herman.
Western Electric Company has the right over the
trade mark Western Electric by virtue of a
registration with the Commissioner on Patents in
Washington since October 20, 1905. The same
company has been advertising the same product
under the same trade mark and reputation in
English and Spanish speaking parts of the World.
On October 15, 1926, Herman's company
submitted to the Director of the Bureau of
Commerce
and
Industry
its
articles
of
incorporation with the intent of registering and
organizing business in the Philippines under the
name Western Electric Company, Inc. for the
purpose, among other things, of manufacturing,
buying, selling and dealing generally in electrical
and telephone apparatus and supplies with full
knowledge of the existence of the plaintif
Western Electric Company, Inc., of its
corporate
name,
of
its
trade-mark,
"Western Electric," and of the fact that the
manufactures of said plaintif bearing its

trade-mark or corporate name are in

general use in the Philippine Islands and in
the United States.
By October 21, 1926, through W. Z. Smith,
Western Electric Company, the Plaintiff, filed for
the issuance of a license to engage in business in
the Philippine Islands, and to accept service of
summons and process in all legal proceedings
against said company. Smith also filed a protest
against defendants application by October 18,
1926.
The Director of the Bureau of Commerce and
Industry, announced his intention to overrule said
protest and will, unless judicially restrained
therefrom, issue to the other defendants herein a
certificate of incorporation under the name of
"Western Electric Company, Inc."
The lower court rendered judgment for the
plaintiffs as prayed for in their complaint, and
made the temporary injunction permanent.
Hence, this appeal.
Issues:
Here are two important questions asked:
1. Has a (a) foreign corporation which has never
done business in the Philippine Islands, and which
is (b) unlicensed and unregistered therein, any
right to maintain an action to restrain residents
and inhabitants of the Philippine Islands from
organizing a corporation therein (c) bearing the
same name as such foreign corporation, (d) when
said residents and inhabitants have knowledge of
the existence of such foreign corporation, having
dealt with it, and sold its manufactures, and (e)
when said foreign corporation is widely and
favorably known in the Philippine Islands through
the use therein of its products bearing its
corporate and trade name, and when (f) the
purpose of the proposed domestic corporation is
to deal in precisely the same goods as those of
the foreign corporation?
2. Has an unregistered corporation which has not
transacted business in the Philippine Islands, but
which has acquired a valuable goodwill and high
reputation therein, through the sale, by
importers, and the extensive use within the
Islands of products bearing either its corporate
name, or trade-mark consisting of its corporate
name, a legal right to restrain an officer of the
Commerce and Industry, with knowledge of those
facts, from issuing a certificate of incorporation
to residents of the Philippine Islands who attempt
to organize a corporation for the purpose of
pirating the corporate name of such foreign
corporation, of engaging in the same business as

such foreign corporation, and of defrauding the

public into thinking that its goods are those of
such foreign corporation, and of defrauding such
foreign corporation and its local dealers of their
legitimate trade?
Held:
The foreign corporation have both rights.
The sole purpose of the plaintiff's action/s is/are
to protect its reputation, its corporate name, its
goodwill, whenever that reputation, corporate
name or goodwill have, through the natural
development of its trade, established themselves.
And it contends that its rights to the use of its
corporate and trade name is a property right, a
right in rem, which may assert and protect
against all the world, in any of the courts of the
world even in jurisdictions where it does not
transact business just the same as it may
protect its tangible property, real or personal,
against trespass, or conversion.
In a number of decisions, the Court ruled that
since it is the trade and not the mark that is to
be protected, a trade-mark acknowledges no
territorial boundaries of municipalities or
states or nations, but extends to every
market where the trader's goods have
become known and identified by the use of
the mark.
In order that competition in business should be
unfair x x x it must appear that there has been, or
is likely to be, a diversion of trade from the
business of the complainant to that of the
wrongdoer, or methods generally recognized as
unfair; x x x to deceive and mislead the
public into thinking that the goods or
business of the wrongdoer are the goods or
business of the rival. Diversion of trade x x x
be accomplished by any means which according
to accepted legal canons are unfair, the
aggrieved party is entitled to relief.
The remaining question as to the jurisdiction of
the courts over the defendant Reyes, as Director
of the Bureau of Commerce and Industry, has
been adversely decided to his contention in the
case of Asuncion vs. De Yriarte (28 Phil., 67), in
which, among other things, it is said:
If, therefore, the defendant erred in determining
the question presented when the articles were
offered for registration, then that error will be
corrected by this court in this action and he will
be compelled to register the articles as offered. If,
however, he did not commit an error, but decided
that question correctly, then, of course, his action
will be affirmed to the extent that we will deny
the relief prayed for.

It is very apparent that the purpose and intent of

Herman and his associates in seeking to
incorporate under the name of Western Electric
Company, Inc., was to unfairly and unjustly
compete in the Philippine Islands with the
Western Electric Company, Inc., in articles which
are manufactured by, and bear the name of, that
company, all of which is prohibited by Act No.
666, and all these was made known to the
Director of the Bureau of Commerce and Industry.
Hence, the judgment of the lower court is
affirmed, with costs. So ordered.
14. G.R. No. 139300, March 14, 2001
AMIGO MANUFACTURING, Inc., Petitioner,
vs. CLUETT PEABODY CO., INC., Respondent.

Facts:

sonans and the existence of a confusing similarity

in appearance between two trademarks.

It found that the two trademarks are confusingly

and deceptively similar to each other are binding
upon the courts, absent any sufficient evidence to
the contrary. The Bureau considered the totality
of the similarities between the two sets of marks
and found that they were of such degree, number
and quality as to give the overall impression that
the two products are confusingly if not
deceptively the same.

The CA found that there is hardly any variance in

the appearance of the marks 'GOLD TOP' and
'GOLD TOE' since both show a representation of a
man's foot wearing a sock, and the marks are
printed in identical lettering. [Petitioner]'s mark is
a combination of the different registered marks
owned by [respondent].

Respondent Cluett Peabody Co., Inc. (a New York

corporation) filed a petition against Petitioner
Amigo
Manufacturing
Inc.
(a
Philippine
corporation) for cancellation of trademark.

Respondent claim exclusive ownership of the

following trademark and devices, as used on
men's socks: a) GOLD TOE; b) DEVICE,
representation of a sock and magnifying glass on
the toe of a sock; c) DEVICE, consisting of a
plurality of gold colored lines arranged in parallel
relation within a triangular area of toe of the
stocking and spread from each other by lines of
contrasting color of the major part of the
stocking; and d) LINENIZED.

Issues:

(1) Was petitioner's trademark used in commerce

in the Philippines earlier than respondent's actual
use of its trademarks?

(2) Is petitioner's trademark confusingly similar to

respondent's trademarks?
On the other hand, [petitioner's] trademark and
device 'GOLD TOP, Linenized for Extra Wear' has
the dominant color 'white' at the center and a
'blackish brown' background with a magnified
design of the sock's garter, and is labeled 'Amigo
Manufacturing Inc., Mandaluyong, Metro Manila,
Made in the Philippines'.

The Bureau of Patents decided adversely against

Amigo Manufacturing, Inc. The decision pivots on
two point: the application of the rule of idem

(3) Is the Paris Convention applicable?

Held:

1st Issue: Dates of First Use of Trademark and

Devices

(1) No. Respondent had actually used the

trademark and the devices in question prior to
petitioner's use of its own. During the hearing at
the Bureau of Patents, respondent presented
Bureau registrations indicating the dates of first
use in the Philippines of the trademark and the
devices as follows: a) March 16, 1954, Gold Toe;
b) February 1, 1952, the Representation of a Sock
and a Magnifying Glass; c) January 30, 1932, the
Gold Toe Representation; and d) February 28,
1952, "Linenized."

The arguments of petitioner are incorrect. True, it

would not be guilty of infringement on the basis
alone of the similarity in the sound of petitioner's
"Gold Top" with that of respondent's "Gold Toe."
Admittedly, the pronunciations of the two do not,
by themselves, create confusion.

The Bureau of Patents, however, did not rely on

the idem sonans test alone in arriving at its
conclusion. This fact is shown in the following
portion of its Decision:

The registration of the above marks in favor of

respondent constitutes prima facie evidence,
which petitioner failed to overturn satisfactorily,
of respondent's ownership of those marks, the
dates of appropriation and the validity of other
pertinent facts stated therein.

"As shown by the drawings and

labels on file, the mark registered by
Respondent is a combination of the
abovementioned trademarks registered
separately by the petitioner in the
Philippines and the United States.

Moreover, the validity of the Certificates of

Registration was not questioned. Neither did
petitioner present any evidence to indicate that
they were fraudulently issued. Consequently, the
claimed dates of respondent's first use of the
marks are presumed valid. Clearly, they were
ahead of petitioner's claimed date of first use of
"Gold Top and Device" in 1958.

"With respect to the issue of

confusing similarity between the marks of
the petitioner and that of the respondentregistrant applying the tests of idem
sonans, the mark 'GOLD TOP & DEVICE' is
confusingly similar with the mark 'GOLD
TOE'. The difference in sound occurs only
in the final letter at the end of the marks.
For the same reason, hardly is there any
variance in their appearance. 'GOLD TOE'
and 'GOLD TOP' are printed in identical
lettering. Both show [a] representation of
a man's foot wearing a sock. 'GOLD TOP'
blatantly
incorporates
petitioner's
'LINENIZED' which by itself is a registered
mark."13

Furthermore, petitioner registered its trademark

only with the supplemental register. In La
Chemise Lacoste v. Fernandez, the Court held
that registration with the supplemental register
gives no presumption of ownership of the
trademark.

2nd Issue: Similarity of Trademarks

(2) Yes. Petitioner points out that the director of

patents erred in its application of the idem
sonans rule, claiming that the two trademarks
"Gold Toe" and "Gold Top" do not sound alike and
are pronounced differently. It avers that since the
words gold and toe are generic, respondent has
no right to their exclusive use.

The Bureau considered the drawings and the

labels, the appearance of the labels, the lettering,
and the representation of a man's foot wearing a
sock. Obviously, its conclusion is based on the
totality of the similarities between the parties'
trademarks and not on their sounds alone.

In the present case, a resort to either the

Dominancy Test or the Holistic Test shows that
colorable imitation exists between respondent's
"Gold Toe" and petitioner's "Gold Top." A glance
at petitioner's mark shows that it definitely has a
lot of similarities and in fact looks like a

combination of the trademark and devices that

respondent has already registered; namely, "Gold
Toe," the representation of a sock with a
magnifying glass, the "Gold Toe" representation
and "linenized."

An examination of the products in question shows

that their dominant features are gold checkered
lines against a predominantly black background
and a representation of a sock with a magnifying
glass. In addition, both products use the same
type of lettering. Both also include a
representation of a man's foot wearing a sock and
the word "linenized" with arrows printed on the
label. Lastly, the names of the brands are similar
-- "Gold Top" and "Gold Toe." Moreover, it must
also be considered that petitioner and respondent
are engaged in the same line of business.

Convention. A foreign-based trademark owner,

whose country of domicile is a party to an
international convention relating to protection of
trademarks is
accorded
protection
against
infringement or any unfair competition as
provided in Section 37 of Republic Act 166, the
Trademark Law which was the law in force at the
time this case was instituted.

15. G.R. No. 100098, December 29, 1995

EMERALD
GARMENT
MANUFACTURING
CORPORATION, petitioner, vs. HON. COURT
OF
APPEALS,
BUREAU
OF
PATENTS,
TRADEMARKS AND TECHNOLOGY TRANSFER
and H.D. LEE COMPANY, INC., respondents
Plaintiffs Contention:

H.D. Lee Co., Inc., a foreign corporation

organized under the laws of Delaware, U.S.A.,
filed with the Bureau of Patents, Trademarks &
Technology Transfer (BPTTT) a Petition for
Cancellation of Registration No. SR 5054
(Supplemental Register) for the trademark
"STYLISTIC MR. LEE" used on skirts, jeans,
blouses, socks, briefs, jackets, jogging suits,
dresses, shorts, shirts and lingerie under Class
25, issued on 27 October 1980 in the name of
petitioner Emerald Garment Manufacturing
Corporation, a domestic corporation organized
and existing under Philippine laws.

The company also invoked Sec. 37 of R.A. No.

166 (Trademark Law) and Art. VIII of the Paris
Convention for the Protection of Industrial
Property, averred that petitioner's trademark
"so closely resembled its own trademark,
'LEE' as previously registered and used in the
Philippines, and not abandoned, as to be
likely, when applied to or used in connection
with petitioner's goods, to cause confusion,
mistake and deception on the part of the
purchasing public as to the origin of the
goods."

3rd Issue:The Paris Convention

(3)Yes. Petitioner claims that the CA erred in

applying
the
Paris
Convention.
Although
respondent registered its trademark ahead,
petitioner argues that the actual use of the said
mark is necessary in order to be entitled to the
protection of the rights acquired through
registration.

As already discussed, respondent registered its

trademarks under the principal register, which
means that the requirement of prior use had
already been fulfilled. To emphasize, Section 5-A
of Republic Act 166 requires the date of first use
to be specified in the application for registration.
Since the trademark was successfully registered,
there exists a prima facie presumption of the
correctness of the contents thereof, including the
date of first use. Petitioner has failed to rebut this
presumption.

Thus, applicable is the Union Convention for the

Protection of Industrial Property adopted in Paris
on March 20, 1883, otherwise known as the Paris
Convention, of which the Philippines and the
United States are members. Respondent is
domiciled in the United States and is the
registered owner of the "Gold Toe" trademark.
Hence, it is entitled to the protection of the

Defendants Contention:

Emerald
Garment
contended
that
its
trademark was entirely and unmistakably
different from that of private respondent and
that its certificate of registration was legally
and validly granted.

Emerald Garment further alleges that it has

been using its trademark "STYLISTIC MR. LEE"
since 1 May 1975, yet, it was only on 18
September 1981 that H.D. Lee Co. filed a
petition
for
cancellation
of
Emeralds
certificate of registration for the said
trademark.

Held:
The essential element of infringement is colorable
imitation. This term has been defined as "such a
close or ingenious imitation as to be calculated to
deceive
ordinary
purchasers,
or
such
resemblance of the infringing mark to the original
as to deceive an ordinary purchaser giving such
attention as a purchaser usually gives, and to
cause him to purchase the one supposing it to be
the other." Colorable imitation does not mean
such similitude as amounts to identity. Nor does it
require that all the details be literally copied.
Colorable imitation refers to such similarity in
form, content, words, sound, meaning, special
arrangement, or general appearance of the
trademark or tradename with that of the other
mark or tradename in their over-all presentation
or in their essential, substantive and distinctive
parts as would likely mislead or confuse persons
in the ordinary course of purchasing the genuine
article.

In determining whether colorable imitation exists,

jurisprudence has developed two kinds of tests
the Dominancy Test applied and the Holistic Test.

As its title implies, the test of dominancy focuses

on the similarity of the prevalent features of the
competing trademarks which might cause
confusion or deception and thus constitutes
infringement. If the competing trademark
contains the main or essential or dominant
features of another, and confusion and deception
is likely to result, infringement takes place.
Duplication or imitation is not necessary; nor it is
necessary that the infringing label should suggest
an effort to imitate.

On the other side of the spectrum, the holistic

test mandates that the entirety of the marks in
question must be considered in determining
confusing similarity. In determining whether the
trademarks are confusingly similar, a comparison
of the words is not the only determinant factor.
The trademarks in their entirety as they appear in
their respective labels or hang tags must also be
considered in relation to the goods to which they
are attached. The discerning eye of the observer
must focus not only on the predominant words
but also on the other features appearing in both
labels in order that he may draw his conclusion
whether one is confusingly similar to the other.

Applying the foregoing tenets to the

present controversy and taking into account
the factual circumstances of this case, we
considered the trademarks involved as a
whole and rule that petitioner's "STYLISTIC
MR. LEE" is not confusingly similar to
private respondent's "LEE" trademark.

Petitioner's 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 not piecemeal. The dissimilarities
between the two marks become conspicuous,
noticeable and substantial enough to matter
especially in the light of the following variables
that must be factored in.

First, the products involved in the case at bar

are, in the main, various kinds of jeans. These are
not your ordinary household items like catsup,
soysauce or soap which are of minimal cost.
Maong pants or jeans are not inexpensive.
Accordingly, the casual buyer is predisposed to
be more cautious and discriminating in and would
prefer to mull over his purchase. Confusion and
deception, then, is less likely.

Second, like his beer, the average Filipino

consumer generally buys his jeans by brand. He
does not ask the sales clerk for generic jeans but
for, say, a Levis, Guess, Wrangler or even an
Armani. He is, therefore, more or less
knowledgeable and familiar with his preference
and will not easily be distracted.

Finally, in line with the foregoing discussions,

more credit should be given to the "ordinary
purchaser." Cast in this particular controversy,
the ordinary purchaser is not the "completely
unwary consumer" but is the "ordinarily
intelligent buyer" considering the type of product
involved.

As we have previously intimated the issue

of confusing similarity between trademarks
is resolved by considering the distinct
characteristics of each case. In the present

controversy, taking into account these

unique factors, we conclude that the
similarities in the trademarks in question
are not sufficient as to likely cause
deception and confusion tantamount to
infringement.

Another way of resolving the conflict is to

consider the marks involved from the point of
view of what marks are registrable. "LEE" is
primarily a surname. Private respondent cannot,
therefore, acquire exclusive ownership over and
singular use of said term. It has been held that a
personal name or surname may not be
monopolized as a trademark or tradename as
against others of the same name or surname. For
in the absence of contract, fraud, or estoppel, any
man may use his name or surname in all
legitimate ways. Thus, "Wellington" is a surname,
and its first user has no cause of action against
the junior user of "Wellington" as it is incapable of
exclusive appropriation.
In addition to the foregoing, we are constrained
to agree with petitioner's contention that private
respondent failed to prove prior actual
commercial use of its "LEE" trademark in the
Philippines before filing its application for
registration with the BPTTT and hence, has not
acquired ownership over said mark.

Actual use in commerce in the Philippines is an

essential prerequisite for the acquisition of
ownership over a trademark pursuant to the
Philippine Trademark Law (R.A. No. 166).

For lack of adequate proof of actual use of its

trademark in the Philippines prior to Emerald
Garments use of its own mark and for failure to
establish confusing similarity between said
trademarks, H.D. Lee Co's action for infringement
must necessarily fail.

16. G.R. No. L-54158, November 19, 1982

PAGASA
INDUSTRIAL
CORPORATION,
Petitioner
vs.
COURT
OF
APPEALS,
Respondent
Facts:
Sometime on November 9, 1961, the Philippines
Patent Office issued Certificate of Registration No.
9331 in favor of respondent Kaisha covering the

trademark "YKK" (Yoshida Kogyo Kabushiki) for

slide fasteners and zippers in class 41.
5 1/2 years after respondent's registration
Pagasa filed an application for registration of
exactly the same or identical trademark of "YKK"
for zippers under class 41 which was allowed on
April 4, 1968 with Certificate of Registration No.
13756.
Alleging that both trademark ("YKK") are
confusingly similar, being used on similar
products under the same classification of goods,
respondent Kaisha filed with the Director of
Patents a petition for cancellation of petitioner's
registration of exactly the same trademark "YKK".
Director of Patents cancelled Registration No.
13756 in the name of Pagasa based on Section 4
(d) of RA 166, as amended (An Act to Provide for
the Registration and
Protection of Trade-Marks, Trade Names and
Service-Marks; etc.)
On appeal to CA, Pagasa argued that there was
laches on the part of Kaisha considering that
notwithstanding the fact that the trademark was
registered for the use of petitioner, it was not
until January 23, 1975, that Kaisha filed a petition
for cancellation after a lapse of almost seven (7)
years.
CA held that the equitable principles of laches,
estoppel and acquiescence would not apply in
this case for it has not been shown that Kaisha
abandoned the use of the trademark
CA further held that Pagasa knew of the use of
trademark "YKK" by respondent which are the
initials of the company, and notwithstanding this
knowledge it later on sought trade registration of
the same trademark in its favor.
Issue:
WON it is correct to say that the equitable
principles of laches, estoppel and acquiescence
cannot be applied in the instant case/ negative
(Sec. 9, Trademark
Law)
WON it is the fact of registration that vests
one's right to a trademark/ negative (there must
be prior commercial use)
Held:
The Director of Patents, stressed in his order of
cancellation that the trademarks in question are
"confusingly similar". However, the discussion

made by the Senior Trademark Examiner of the

Patents Office regarding the registrability of the
mark revealed that "the concurrent registration of
subject mark is not likely to cause purchasers
confusion, mistake or deception," since the "overall commercial impression of the marks are
grossly different and used on goods not only
falling under different classification, but also
possessing different descriptive properties.
The products are sold through different trade
channels or cutlets and are noncompeting.
The Trademark Law is very clear. It requires
actual commercial use of the mark prior to its
registration. There is no dispute that respondent
corporation was the first registrant, yet it failed to
fully substantiate its claim that it used in trade or
business in the present proof to invest it with
exclusive, continuous adoption of the trademark
which
should
consist
among
others,
of
considerable sales since its first use.
The invoices submitted by respondent which
were dated way back in 1957 show that the
zippers sent to the Philippines were to be used as
"samples" and "of no commercial value." The
evidence for respondent must be clear, definite
and free from inconsistencies.
An unreasonable length of time had already
passed before respondent asserted its right to the
trademark. There is a presumption of neglect
already amounting to "abandonment" of a right
after a party had remained silent for quite a long
time during which petitioner had been openly
using the trademark in question. Such inaction on
the part of respondent entitles petitioner to the
equitable principle of laches.
Respondent wanted goodwill and a wide market
established at the expense of the petitioner but
for its benefit. It is precisely the intention of the
law, including a provision on equitable principle
to protect only the vigilant, not those guilty of
laches.
It is most unfair if at anytime, a previous
registrant, even after a lapse of more than five
(5) years, can ask for the cancellation of a similar
or the same trademark, the registration of which
was never opposed by the prior registrant.
Equity and justice, therefore, demand that
petitioner should be allowed to continue the use
of the subject mark and the mark which was
supposedly registered under the name of
respondent be deemed cancelled.
Provision in question:
Section 4 (d) of RA 166

"Sec. 4. Registration of trade-marks, tradenames,

and service marks on the principal register.
There is hereby established a register of
trademarks, tradenames and service marks
which shall be known as the principal register.
The owner of a trademark, tradename or service
mark used to distinguish his goods, business or
services from the goods, business or services of
others shall have the right to register the same
on the principal register unless it:
xxx xxx xxx
"(d) Consists of or comprises a mark or trade
name which so resembles a mark or trade name
registered in the Philippines or a mark trade
name previously used in the Philippines by
another and not abandoned as to be likely, when
applied to or used in connection with the goods,
business or services of the applicant, to cause
confusion or mistake or to deceive purchasers; or
xxx
Section 2, Trademark Law
&
Section 9-A of the Trademark Law
"Equitable principles to govern proceedings: In
opposition proceedings and all other inter partes
proceedings in the Patent Office under this Act,
equitable principle of laches, estoppel and
acquiescence
where
applicable,
may
be
considered applied."
Dissenting opinion: (Aquino)
He who comes to court must come with clean
hands.
Pagasa acted in bad faith in registering the YKK
trademark as it knows of the existence of Yoshida
Kogyo Kabushiki and the latter's engineers even
helped Pagasa with respect to business.
17. G. R. No. 143993, August 18, 2004
MCDONALDS CORP., Petitioner vs. LC BIG
MAK BURGER, Respondent
Facts:
McDonald's is a corporation operating by itself or
through its franchisees, a global chain of fast food
restaurants. It owned a family of marks including
the "Big Mac" mark for its "double decker
hamburger
sandwich."
It
registered
the
trademark with the United States trademark
registry sometime 1979. Based on home
registration, McDonald's applied for registration
of the same mark in the principal registry with
the Intellectual Property Office. Pending approval
of this application, McDonald's introduced its "Big
Mac" hamburger sandwiches in the Philippine
market in 1981 which was subsequently allowed
registration
in
1985. It displayed the "Big Mac" mark in its item

and paraphernalia in its restaurants and spent

millions in advertisement for "Big Mac"
hamburger sandwich alone from 1982 to 1990.
L.C. Big Mak Burger is a domestic corporation
operating fast food outlets and snack vans in
Metro Manila and nearby provinces. Its menu
included hamburger sandwiches. In 1988, it
applied for the registration of the "Big Mak" mark
for its hamburger sandwiches. McDonald's
opposed such application on the ground that the
mark was a colourable imitation of its registered
"Big Mac" mark for the same food products.
McDonald's also informed L.C. Big Mak Burger to
desist from using the "Big Mak" mark and having
received no reply, petitioner's sued respondent
for
trademark
infringement
and
unfair
competition. The trial court issued a TRO against
respondent enjoining them from using the mark
and subsequently issued a writ of preliminary
injunction.
Respondent admitted using the "Big Mak" burger
for their fast food business. However, claimed
that petitioner does not have exclusive right to
the "Big Mac" mark. It pointed out that such mark
has prior registration in 1979 by Isaiyas Group
and 1985 by Rodolfo Topacio. Respondent also
claimed that they are not liable for trademark
infringement and unfair competition, as the "Big
Mak" mark the sought to register does not
constitute a colourable imitation of the "Big Mac"
mark. Petitioner disclosed that it had acquired
Rodolfo Topacio's rights to his registration in a
deed of assignment. The trial court found L.C. Big
Mak Burger liable for trademark infringement and
unfair competition which was subsequently
reversed
by
the
Court
of
Appeals.
Issue:
Whether or not L.C. Big Mak Burger used the
words "Big Mak" not only as part of its corporate
name but also as a trademark for their
hamburger products which constitute trademark
infringement through confusion of goods and
confusion of business.
Held:
Yes, there is trademark infringement through
confusion of goods on the ground that
McDonald's has the exclusive use of such mark
and respondent used the "Big Mak" mark on the
same goods which was hamburger sandwiches,
that the petitioner "Big Mac" mark is used. The
respondent is selling hamburger sandwiches, the
same food product that petitioner sell using the
"Big Mac" mark, thereby, constituting trademark
infringement through confusion of business as
well. The evidence showed that plastic wrappings

and plastic bags used by respondent for their

hamburger sandwiches bore the words "Big Mak"
and were identical with those of the petitioner.
The respondent's use of "Big Mak" mark on
hamburgers, the same food product that
petitioners sell with the use of their registered
"Big Mac" mark cannot negate that there was
trademark infringement through confusion of
goods and confusion of business. Whether a
hamburger
is
single,
double or triple-decker, and whether wrapped in
plastic or Styrofoam, it remained the same
hamburger food product.
18. G.R. No. 166115, February 2, 2007
MCDONALDS CORP., Petitioner vs. MACJOY
FASTFOOD CORPORATION, Respondent
Facts:
On 14 March 1991, respondent MacJoy Fastfood
Corporation, a domestic corporation engaged in
the sale of fast food products in Cebu City, filed
with the IPO, an application for the registration of
the trademark "MACJOY & DEVICE" for fried
chicken, chicken barbecue, burgers, fries,
spaghetti, palabok, tacos, sandwiches, halo-halo
and steaks under classes 29 and 30 of the
International Classification of Goods. Petitioner
McDonalds Corporation, filed a verified Notice of
Opposition against the respondents application
claiming that the trademark "MACJOY & DEVICE"
so resembles its corporate logo, otherwise known
as the Golden Arches or "M"design, and its marks
"McDonalds," McChicken," "MacFries," etc. (herein
after MCDONALDS marks) such that when used
on identical or related goods, the trademark
applied for would confuse or deceive purchasers
into believing that the goods originate from the
same source or origin.
IPO ruled that the predominance of the letter "M,"
and the prefixes "Mac/Mc" in both the "MACJOY"
and the "MCDONALDS" marks lead to the
conclusion that there is confusing similarity
between them especially since both are used on
almost the same products falling under classes
29 and 30 of the International Classification of
Goods. IPO denied MR. CA reversed the IPO
decision, ruling that there was no confusing
similarity between the marks "MACJOY" and
"MCDONALDS," for the ff. reasons:
1. The word "MacJoy" is written in round script
while the word "McDonalds" is written in single
stroke Gothic;
2. The word "MacJoy" comes with the picture of a
chicken head with cap and bowtie and wings
sprouting on both sides, while the word
"McDonalds" comes with an arches "M" in gold
colors, and absolutely without any picture of a
chicken;

3. The word "MacJoy" is set in deep pink and

white color scheme while "McDonalds" is written
in red, yellow and black color combination;
4. The facade of the respective stores of the
parties are entirely different. Respondents
restaurant is set also in the same bold, brilliant
and noticeable color scheme as that of its
wrappers,
containers,
cups,
etc.,
while
Petitioners restaurant is in yellow and red colors,
and with the mascot of "Ronald McDonald" being
prominently displayed therein."
Issue:
W/N there is a confusing similarity between
MACJOY and MCDONALDS trademarks as to justify
the IPOs rejection of Macjoys trademark
application.
Held:
YES. Both marks use the corporate "M" design
logo and the prefixes "Mc" and/or "Mac" as
dominant features. The first letter "M" in both
marks puts emphasis on the prefixes "Mc" and/or
"Mac" by the similar way in which they are
depicted. It is the prefix "Mc," an abbreviation of
"Mac," which visually and aurally catches the
attention of the consuming public.
Both trademarks are used in the sale of fast food
products.
Indisputably,
the
respondents
trademark application for the "MACJOY & DEVICE"
trademark covers goods under Classes 29 and 30
of the International Classification of Goods,
namely, fried chicken, chicken barbecue, burgers,
fries, spaghetti, etc. McDonalds registered
trademark covers goods similar if not identical to
those covered by the respondents application.
By reason of the respondents implausible and
insufficient explanation as to how and why out of
the many choices of words it could have used for
its trade-name and/or trademark, it chose the
word "MACJOY," the only logical conclusion
deducible therefrom is that the respondent would
want to ride high on the established reputation
and goodwill of the MCDONALDs marks, which,
as applied to petitioners restaurant business and
food products, is undoubtedly beyond question.
WHEREFORE, the instant petition is GRANTED.
Accordingly, the assailed Decision and Resolution
of the Court of Appeals are REVERSED and SET
ASIDE and the Decision of the Intellectual
Property Office in Inter Parties is REINSTATED.
19. G.R. No. 120900, July 20, 2000
CANON KABUSHIKI KAISHA, Petitioner vs.
COURT OF APPEALS and NSR RUBBER
CORPORATION, Respondents
Facts:

On January 15, 1985, private respondent NSR

Rubber Corporation filed an application for
registration of the mark CANON for sandals in the
BPTTT.
A Verified Notice of Opposition was filed by
petitioner alleging that it will be damaged by the
registration of the trademark CANON in the name
of NSR Rubber Corp.
The BPTTT declared NSR Rubber Corp in default
for failure to file Answer within the prescribed
period and allowed petitioner to present its
evidence ex-parte.
On November 10, 1992, the BPTTT issued its
decision dismissing the opposition of petitioner
and giving due course to private respondent's
application for the registration of the trademark
CANON.
CA affirmed the BPTTT decision and held that
CANON can be used by private respondent for
its sandals because the products of these two
parties are dissimilar.
Issue:
WON the use of the tradename CANON by
defendant would cause prejudice to petitioner /
negative
Held:
The ownership of a trademark or tradename is
a property right that the owner is entitled to
protect as mandated by the Trademark Law.
However, when a trademark is used by a party
for a product in which the other party does not
deal, the use of the same trademark on the
latter's product cannot be validly objected to.
Since the certificate of registration of petitioner
for the trademark CANON covers class 2 (paints,
chemical products, toner, dyestuff), private
respondent can use the trademark CANON for its
goods classified as class 25 (sandals). Clearly,
there is a world of difference between the paints,
chemical products, toner, and dyestuff of
petitioner and the sandals of private respondent.
Petitioner failed to attach evidence that would
convince the Court that petitioner has also
embarked in the production of footwear products.
In Faberge, Incorporated vs. Intermediate
Appellate Court, the Court held: since the senior
user has not ventured in the production of briefs,
an item which is not listed in its certificate of
registration, the senior user, cannot and should

not be allowed to feign that the junior user had

invaded the senior user's exclusive domain. The
certificate of registration confers upon the
trademark owner the exclusive right to use its
own symbol only to those goods specified in the
certificate, subject to the conditions and
limitations stated therein.
The exclusive right of petitioner in this case to
use the trademark CANON is limited to the
products covered by its certificate of registration.
The two classes of products in this case flow
through different trade channels. The products of
petitioner are sold through special chemical
stores or distributors while the products of private
respondent are sold in grocery stores, sari-sari
stores and department stores. Thus, the evident
disparity of the products of the parties in the case
at bar renders unfounded the apprehension of
petitioner that confusion of business or origin
might occur if private respondent is allowed to
use the mark CANON.
The term "trademark" is defined by RA 166, the
Trademark Law, as including "any word, name,
symbol, emblem, sign or device or any
combination thereof adopted and used by a
manufacturer or merchant to identify his goods
and distinguish them for those manufactured,
sold or dealt in by others."
The Paris Convention, of which both the
Philippines and Japan, the country of petitioner,
are signatories, 29 is a multilateral treaty that
seeks to protect industrial property consisting of
patents, utility models, industrial designs,
trademarks, service marks, trade names and
indications of source or appellations of origin, and
at the same time aims to repress unfair
competition.
Regarding the applicability of Article 8 of the
Paris Convention, this Office believes that there is
no automatic protection afforded an entity whose
tradename is alleged to have been infringed
through the use of that name as a trademark by a
local entity.
Based on the memorandum by Ongpin,
Petitioner failed to comply with the third
requirement of the said memorandum that is the
mark must be for use in the same or similar kinds
of goods.
Provision in question:
Article 8 of the Paris Convention, to wit:
"A tradename shall be protected in all the
countries of the

Union without the obligation of filing or

registration, whether or not it forms part of a
trademark."
Article 6bis of the Paris Convention states:
(1) The countries of the Union undertake, either
administratively if their legislation so permits, or
at the request of an interested party, to refuse or
to cancel the registration and to prohibit the use
of a trademark which constitutes a reproduction,
imitation or translation, liable to create
confusion, of a mark considered by the
competent authority of the country of registration
or use to be well known in that country as being
already the mark of a person entitled to the
benefits of the present Convention and used for
identical or similar goods. These provisions shall
also apply when the essential part of the mark
constitutes a reproduction of any such wellknown mark or an imitation liable to create
confusion therewith.
(2) A period of at least five years from the date of
registration shall be allowed for seeking the
cancellation of such a mark. The countries of the
Union may provide for a period within which the
prohibition of use must be sought.
(3) No time limit shall be fixed for seeking the
cancellation or the prohibition of the use of marks
or used in bad faith."
Memorandum dated 25 October 1983 to the
Director of
Patents by Hon. Roberto V. Ongpin
a) the mark must be internationally known;
b) the subject of the right must be a trademark,
not a patent or copyright or anything else;
IESDCH
c) the mark must be for use in the same or
similar kinds of goods; and
d) the person claiming must be the owner of the
mark
(The Parties Convention Commentary on the
Paris Convention. Article by Dr. Bogsch, Director
General of the World Intellectual Property
Organization, Geneva, Switzerland, 1985)

20. G.R. No. L-19906. April 30, 1969

STERLING PRODUCTS INT'L INC., Petitioner
vs.
FARBENFABRIKEN
BAYER
AKTIENGESELLSCHAFT
and
ALLIED
MANUFACTURING AND TRADING CO., INC.,
Respondents
Facts:
The Bayer Cross in circle trademark was
registered in Germany in 1904 to Farbenfabriken

vorm. Friedr. Bayer (FFB), successor to the

original Friedr. Bauyer et. Comp., and predecessor
to Farbenfabriken Bayer aktiengessel craft (FB2).
The Bayer, and Bayer Cross in circle
trademarks were acquired by sterling Drug Inc.
when it acquired FFBs subsidiary Bayer Co. of
New York as a result of the sequestration of its
assets by the US Alien Property Custodian during
World War I. Bayer products have been known in
Philippines by the close of the 19th century.
Sterling Drugs, Inc., however, owns the
trademarks Bayer in relation to medicine. FBA
attempted to register its chemical products with
the Bayer Cross in circle trademarks. Sterling
Products International and FBA seek to exclude
each other from use of the trademarks in the
Philippines. The trial court sustained SPIs right to
use the Bayer trademark for medicines and
directed FBA to add distinctive word(s) in their
mark to indicate their products come from
Germany. Both appealed.
Issue:
Whether SPIs ownership of the trademarks
extends to products not related to medicine.
Held:
No. SPIs certificates of registration as to the
Bayer trademarks registered in the Philippines
cover medicines only. Nothing in the certificates
includes chemicals or insecticides. SPI thus may
not claim first use of the trademarks prior to
the registrations thereof on any product other
than medicines. For if otherwise held, a situation
may arise whereby an applicant may be tempted
to register a trademark on any and all goods
which his mind may conceive even if he had
never intended to use the trademark for the said
goods. Omnibus registration is not contemplated
by the Trademark Law. The net result of the
decision is that SPI may hold on its Bayer
trademark for medicines and FBA may continue
using the same trademarks for insecticide and
other chemicals, not medicine. The formula
fashioned by the lower court avoids the mischief
of confusion of origin, and does not visit FBA with
reprobation and condemnation. A statement that
its product came from Germany anyhow is but a
statement of fact.

JOSE
P.
STA.
ANA,
Petitioner,
vs.
FLORENTINO MALIWAT and TIBURCIO S.
EVALLE, Respondents
Facts:
Sta. Ana, the Junior Party applicant, is engaged
solely in the manufacture of shoes under the firm
name FLORMEN SHOE MANUFACTURERS since
April 1959.
Maliwat, the Senior Party applicant, is
the manufacture & sale of menswear
shirts, and pants, since 1953, using
as its trademark. Later or in 1962,
manufacturing shoes.

engaged in
shirts, polo
FLORMANN
he started

On June 21, 1962, Maliwat filed an application for

the registration of the trademark FLORMANN for
his goods that include shirts, pants, jacket and
shoes. Although his claim for first use was July
1955, he started using the trademark on shoes
on January 1962.
On Sep 18, 1962, Sta. Ana filed an application for
the registration of the tradename FLORMEN for
his ladies & childrens shoe manufacturing
business. His claim for first use was April 1959.
Due to the confusing similarity between the
trademark FLORMANN and the tradename
FLORME, the Director of Patents declared an
interference. After trial, the Director approved
Maliwats application and denied that of Sta. Ana.
Sta. Ana appealed. He contended that his
application should not be denied because he was
first to use said tradename on his shoe
manufacturing business as early as 1959, while
Maliwat had used the trademark on the latters
shoes in 1962, although same trademark was
used as early as 1953 on menswear shirts, polo
shirts & pants.
Issue:
W/r the mark FLORMANN should be confined to
Maliwats tailoring & haberdashery only, not on
shoes, on the ground that Sta. Ana used
FLORMEN on shoes since 1959, while Maliwat
used his mark on shoes only in 1962.
Held:
NO. The mark should not only be confined to
Maliwats tailoring & haberdashery, but should
also include his shoe products.

21. G.R. No. L-23023, August 31, 1968

Republic Act No. 166, as amended, provides:

Sec. 4. . . . The owner of a trademark, tradename
or service-mark used to distinguish his goods,

business or services from the goods, business or

services of others shall have the right to register
the same on the principal register, unless it:
xxx
xxx
xxx
(d) Consists of or comprises a mark or tradename
which resembles a mark or tradename registered
in the Philippines or a mark or tradename
previously used in the Philippines by another and
not abandoned, as to be likely, when applied to or
used in connection with the goods, business or
services of the applicant, to cause confusion or
mistake or to deceive purchasers;
The provision has been interpreted to have not
limited the protection of goods or business from
actual market competition with identical or
similar products. The protection also extend
where there is a likelihood of a confusion of
source, as when the public would be misled into
thinking that a certain company has extended its
business into another field or has engaged in the
production of other goods. In several cases, the
Court already declared the owner of a
trademark/tradename/service-mark is entitled to
exclude the use thereof on the related class of
goods.
In the case at bar, shoes, menswear shirts & polo
belonged to the same class or category of goods.
The resemblance or similarity of the mark
FLORMAN with the tradename FLORMEN and the
likelihood of confusion resulted to the denial of
the application of registration by Sta. Ana, in
favor of Maliwat.
22. G.R. No. L-26676, July 30, 1982
PHILIPPINE REFINING CO., INC., Petitioner,
vs. NG SAM and THE DIRECTOR OF PATENTS,
Respondents.
A petition to review the decision of the Director of
Patents approving application for trademark
registration for CAMIA of respondent Ng Sam for
his ham products.
Facts:
Since 1922, petitioner has been using trademark
CAMIA for its products. It was only on 1949 that
petitioner registered the trademark under animal
and vegetable fat, cooking oil, butter and lard
classified under Classification 47 (Foods and
Ingredients of Food) and under Class 4 (abrasive
detergents, polishing materials and soap of all
kinds). Respondent, on 1960, filed with the
Director of Patents an application for trademark
registration of the Identical trademark "CAMIA"
for his product, ham, which likewise falls under
Class 47. Alleged date of first use of the

trademark by respondent was on February 10,

1959.
After publication, petitioner filed opposition
questioning such application maintaining that a
mark or tradename which so resembles a mark or
tradename (1) registered in the Philippines or a
mark or tradename previously (2) used in the
Philippines by another and not abandoned, as to
be likely, when applied to or used in connection
with the goods, business services of the
applicant, to cause confusion or mistake or to
deceive purchasers is unregistrable. The Director
ruled in favor of the respondent, thereby allowing
the registration of the identical mark for Ng Sam's
ham products. Hence this appeal.
Issue:
Whether or not the CAMIA trademark for Ng
Sam is registrable despite the apparent similarity
with another trademark registered at an earlier
date and continuously used by the petitionerowner?
Held:
Yes it is.
The right to a trademark is a limited one,
in the sense that others may use the same
mark
on
unrelated
goods."Thus,
as
pronounced by the United States Supreme
Court in the case of American Foundries vs.
Robertson, "the mere fact that one person
has adopted and used a trademark on his
goods does not prevent the adoption and
use of the same trademark by others on
articles of a diferent description." Emphasis
should be on the similarity of the products
involved and not on the arbitrary classification or
general description of their properties or
characteristics.
In his decision, the Director of Patents
enumerated the factors that set respondent's
product apart from the goods of petitioner. He
opined and We quote:
x x x I believe that ham on one hand, and lard,
butter, oil, and soap on the other are products
that would not move in the same manner through
the same channels of trade. They pertain to
unrelated fields of manufacture, might be
distributed and marketed under dissimilar
conditions, and are displayed separately even
though they frequently may be sold through the
same retail food establishments. Opposer's
products are ordinary day-to-day household items
whereas ham is not necessarily so. Thus, the
goods of the parties are not of a character which
purchasers would be likely to attribute to a
common origin. (p. 23, Rollo).

The observation and conclusion of the Director of

Patents are correct. The particular goods of
the parties are so unrelated that consumers
would not in any probability mistake one as
the source or origin of the product of the
other. "Ham" is not a daily food fare for the
average consumer. One purchasing ham would
exercise a more cautious inspection of what he
buys on account of it price. Besides, there can
be no likelihood for the consumer of
respondent's ham to confuse its source as
anyone but respondent. The facsimile of the
label attached by him on his product, his
business name "SAM'S HAM AND BACON
FACTORY" written in bold white letters
against a reddish orange background, is
certain to catch the eye of the class of
consumers to which he caters.
In addition, the goods of petitioners are
basically derived from vegetable oil and
animal
fats,
while
the
product
of
respondent is processed from pig's legs. A
consumer would not reasonably assume
that, petitioner has so diversified its
business as to include the product of
respondent. In fine, We hold that the businesss
of the parties are non-competitive and their
products so unrelated that the use of Identical
trademarks is not likely to give rise to confusion,
much less cause damage to petitioner.
WHEREFORE, the instant petition is hereby
dismissed and the decision of the Director of
Patents in Inter Partes Case No. 231 affirmed in
toto. Costs against petitioner. SO ORDERED.
23. G.R. No. 154342, July 14, 2004
MIGHTY CORPORATION and LA CAMPANA
FABRICA DE TABACO, INC. Petitioners, vs. E.
& J. GALLO WINERY and THE ANDRESONS
GROUP, INC. Respondents.

The SC held that there was no infringement. The

use of the respondent of the mark Gallo for its
wine products was exclusive in nature. The court
mentioned two types of confusion in Trademark
Infringement:
Confusion of Goods when an otherwise
prudent purchaser is induced to purchase one
product in the belief that he is purchasing
another, in which case defendants goods are
then brought as the plaintiffs and its poor quality
reflects badly on the plaintiffs reputation.
Confusion of Business wherein the goods
of the parties are different but the defendants
product can reasonably (though mistakenly) be
assumed to originate from the plaintiff, thus
deceiving the public into believing that there is
some
connection
between
the
plaintiff
and defendant which, in fact, does not exist. In
determining the likelihood of confusion, the Court
must consider:
(a) The resemblance between the trademarks;
(b) The similarity of the goods to which the
trademark is attached;
(c) The likely effect on the purchaser; and
(d) The registrants express or implied consent
and other fair and equitable considerations.
In this case, the SC employing the dominancy
test concluded that there is no likelihood of
confusion. They materially differ in color scheme,
art work sand markings. Further, the two goods
are not closely related because her products
belong
to
different
classifications,
form,
composition and they have different intended
markets or consumers.
24. G.R. No. 172276 - August 8, 2010
SOCIETE DES PRODUITS NESTLE, S.A.,
Petitioner,
vs.
MARTIN
T.
DY,
JR.,
Respondent.

Facts:

Facts:

Respondent manufacture wines and uses the

trademark Gallo for its product. On the other
hand, the petitioner is a manufacturer of
cigarette and also uses Gallo in its products.

Martin Dy Jr., imports and repackages Sunny

Powdered Milk from Australia and sells them
under the name NANNY.NANNY retails
primarily in parts of Visayas and Mindanao.

Issue:

Nestle, is a foreign corporation organized

under the laws of Switzerland and owns the
trademark NAN for its line of infant formula.
Nestle allocates a substantial amount of
resources for the production and promotion of
the NAN product line.

Nestle wrote a letter to Dy Jr. asking him to

stop using the name NANNY, they allege
that it infringes upon the trademark

Is there infringement?
Held:
At the time the cause of action accrued in this
case, the IPC was not yet enacted so the relevant
laws used were the Trademark Law and the Paris
Convention.

ownership of Nestle over the trademark

NAN. He refused to recognize Nestles
request and continued using the name
NANNY.

Nestle filed a case with the RTC of Dumaguete

City. The case was dismissed and elevated to
the CA, the appellate court remanded the
case to the trial court fo adjudication. It was
assigned to the RTC-Cebu Special Commercial
Court.

The Commercial Court found Dy Jr., liable for

trademark infringement on the grounds that
even though it is not apparent in the
packaging of NANNY, the name itself relates
to a childs nurse, which is closely related to
the product line of NAN catering to infants.

The case was then raised to the CA, which

reversed the RTCs ruling. It stated that even
though there is similarity in the products, the
lower price range of NANNY cautions and
reminds the purchaser that it is different from
NAN, which is more expensive. This does not
create confusion as to the consumers because
the apparent difference in price shows that
they are two different products.

Issue:
W/N the product name NANNY infringes upon the
trademark of Nestles NAN.
Held:
Yes, the decision of the RTC is reinstated. There is
no question that the product will cause confusion
within the consuming public. The primary test
that should be used in determining trademark
infringement in this case is the dominancy test.
It is apparent that upon first glance or even at
close inspection that there is confusing similarity
between NAN and NANNY. This is sufficient to
establish trademark infringement. The dominancy
test states:
-- xx
This Court x x x 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 minor differences.
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.
-- xx
It has been consistently held that the question of
infringement of a trademark is to be determined
by the test of dominancy. Similarity in size, form
and color, while relevant, is not conclusive. If the
competing trademark contains the main or
essential or dominant features of another, and
confusion and deception is likely to result,
infringement takes place. Duplication or imitation
is not necessary; nor is it necessary that the
infringing label should suggest an effort to
imitate. It is incorrect to consider the prices,
which the CA utilized in its determination. It is
enough that if both products were placed in front
of the consumer, confusion will most likely arise.
From this either similarities or differences in the
logo or designare immaterial to the fact that corelation and subsequently confusion, has been
created in the minds of the consumer.
-- xx
The Court agrees with the lower courts that
there are differences between NAN and
NANNY:
(1) NAN is intended for infants while NANNY is
intended for children past their infancy and for
adults; and
(2) NAN is more expensive than NANNY. However,
as the registered owner of the "NAN" mark,
Nestle should be free to use its mark on similar
products, in different segments of the market,
and at different price levels
25. G.R. No. 71189, November 4, 1992
FABERGE, INCORPORATED, Petitioner, vs.
THE INTERMEDIATE APPELLATE COURT and
CO BENG KAY, Respondents
Facts:
In the course of marketing petitioner's "BRUT"
products and during the pendency of its
application for registration of the trademark
"BRUT 33 and DEVICE" for antiperspirant,
personal
deodorant,
cream
shave,
after
shave/shower lotion, hair spray, and hair
shampoo, respondent Co Beng Kay of Webengton
Garments Manufacturing applied for registration
of the disputed emblem "BRUTE" for briefs.
Opposition raised by petitioner anchored on
similarity with its own symbol and irreparable
injury to the business reputation of the first user
was to no avail.
When the legal tussle was elevated to respondent
court, Justice Gopengco remarked that a look at
the marks "BRUT," "BRUT 33" and "BRUTE" shows
that such marks are not only similar in

appearance but they are even similar in sound

and in the style of presentation; that it is
reasonable to believe that this similarity is
sufficient to cause confusion and even mistake
and deception in the buying public as to the
origin for source of the goods bearing such
trademarks.
Later, respondent's Motion for Reconsideration
merited the nod of approval of the appellate court
brought about by private respondent's suggestion
that the controlling ruling is that laid down in
ESSO Standard Eastern, Inc. vs. Court of Appeals,
to the effect that the identical trademark can be
used by different manufacturers for products that
are non-competing and unrelated.
Petitioner asserts that the alleged application for
registration of the trademark "BRUT 33 DEVICE"
for briefs is an explicit proof that petitioner
intended to expand its mark "BRUT" to other
goods, and that relief is available where the junior
user's goods are not remote from any product
that the senior user would be likely to make or
sell.
On the other hand, private respondent echoes the
glaring difference in physical appearance of its
products with petitioner's own goods by stressing
the observations of the Director of Patents in that
the involved trademarks are grossly different in
their overall appearance and that even at a
distance a would-be purchaser could easily
distinguish what is BRUTE brief and what is BRUT
after shave lotion, lotion and the like.
Moreover, private respondent asserts that briefs
and cosmetics do not belong to the same class
nor do they have the same descriptive properties
such that the use of a trademark on one's goods
does not prevent the adoption and use of the
same trademark by others on unrelated articles
of a different nature.
Issue:
Whether private respondent may appropriate the
trademark "BRUTE" for the briefs it manufactures
and sells to the public albeit petitioner had
previously registered the symbol "BRUT" and
"BRUT 33" for its own line of times.
Held:
Yes. It is apropos to shift Our attention to the
pertinent provisions 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 and 20), as amended, the
special law patterned after the United States
Trademark Act of 1946.

Having thus reviewed the laws applicable to the

case, private respondent may be permitted to
register the trademark "BRUTE" for briefs
produced by it notwithstanding petitioner's
vehement protestations of unfair dealings in
marketing its own set of items which are limited
to: after-shave lotion, shaving cream, deodorant,
talcum powder and toilet soap.
In as much as petitioner has not ventured in the
production of briefs, an item which is not listed in
its certificate of registration, petitioner cannot
and should not be allowed to feign that private
respondent had invaded petitioner's exclusive
domain. To be sure, it is significant that petitioner
failed to annex in its Brief the so-called "eloquent
proof that petitioner indeed intended to expand
its mark "BRUT" to other goods". Even then, a
mere application by petitioner in this aspect does
not suffice and may not vest an exclusive right in
its favor that can ordinarily be protected by the
Trademark Law.
In short, paraphrasing Section 20 of the
Trademark Law as applied to the documentary
evidence adduced by petitioner, the certificate of
registration issued by the Director of Patents can
confer upon petitioner the exclusive right to use
its own symbol only to those goods specified in
the certificate, subject to any conditions and
limitations stated therein. One who has adopted
and used a trademark on his goods does not
prevent the adoption and use of the same
trademark by other for products which are of
different description.
Justice JBL Reyes opined that the Section 4(d) of
Republic Act No. 166, as amended, "does not
require that the articles of manufacture of the
previous user and late user of the mark should
possess the same descriptive properties or should
fall into the same categories as to bar the latter
from registering his mark in the principal
register." Yet, it is equally true that as aforesaid,
the protective mantle of the Trademark Law
extends only to the goods used by the first user
as specified in the certificate of registration
following the clear message conveyed by section
20.
How do We now reconcile the apparent conflict
between Section 4(d) which was relied upon by
Justice JBL Reyes in the Sta. Ana case and Section
20? It would seem that Section 4(d) does not
require that the goods manufactured by the
second user be related to the goods produced by
the senior user while Section 20 limits the
exclusive right of the senior user only to those
goods specified in the certificate of registration.
But the rule has been laid down that the clause
which comes later shall be given paramount

significance over an anterior proviso upon the

presumption that it expresses the latest and
dominant purpose.. It ineluctably follows that
Section 20 is controlling and, therefore, private
respondent can appropriate its symbol for the
briefs it manufactures.
The glaring discrepancies between the two
products had been amply portrayed to such an
extent that indeed, "a purchaser who is out in the
market for the purpose of buying respondent's
BRUTE brief would definitely be not mistaken or
misled into buying BRUT after shave lotion or
deodorant" as categorically opined in the decision
of the Director of Patents relative to the interpartes case.
It would appear that as a consequence of this
discourse, there still remains hanging in mid-air
the unanswered puzzle as to why an aspiring
commercial enterprise, given the infinite choices
available to it of names for the intend product,
would select a trademark or trade name which
somewhat resembles an existing emblem that
had
established
goodwill.
Our
opinion
hereinbefore expressed could even open the
floodgates to similar incursions in the future when
we interpreted Section 20 of the Trademark Law
as an implicit permission to a manufacturer to
venture into the production of goods and allow
that producer to appropriate the brand name of
the senior registrant on goods other than those
stated in the certificate of registration.
But these nagging and disturbing points cannot
win the day for petitioner, although we must
hasten to add that in the final denouement, our
apprehensions in this regard are not entirely
irreversible since Section 4(d) and 20 of the law
in question may still be subjected to legislative
modification in order to protect the original user
of the symbol.
26. G.R. Nos. L-63796-97, May 21, 1984
LA CHEMISE LACOSTE, S. A., Petitioner, vs.
HON.
OSCAR C. FERNANDEZ, Presiding Judge of
Branch XLIX, Regional Trial Court, National
Capital
Judicial
Region,
Manila
and
GOBINDRAM HEMANDAS, Respondents.
Facts:
La chemise Lacoste is a French corporation and
the actual owner of the trademarks Lacoste,
Chemise Lacoste, Crocodile Device and a
composite mark consisting of the word Lacoste
and a representation of a crocodile/alligator, used
on clothings and other goods sold in many parts
of the world and which has been marketed in the
Philippines (notably by Rustans) since 1964. In

1975 and 1977, Hemandas Q. Co. was issued

certificate of registration for the trademark
Chemise Lacoste and Q Crocodile Device both
in the supplemental and Principal Registry. In
1980, La Chemise Lacoste SA filed for the
registration of the Crocodile device and
Lacoste. Games and Garments (Gobindram
Hemandas, assignee of Hemandas Q.Co.)
opposed the registration of Lacoste.In 1983, La
Chemise Lacoste filed with the NBI a lettercomplaint alleging acts of unfair competition
committed by Hemandas and requesting the
agencys assistance. A search warrant was
issued by the trial court. Various goods and
articles were seized upon the execution of the
warrants. Hemandas filed motion to quash the
warrants, which the court granted. The search
warrants were recalled, and the goods ordered to
be returned. La Chemise Lacoste filed a petition
for certiorari.
Issue:
WON the trademark Chemise Lacoste and Q
Crocodile Device is registrable.
Held:
No. Inasmuch as the goodwill and reputation of La
Chemise Lacoste products date back even before
1964, Hemandas cannot be allowed to continue
the trademark Lacoste for the reason that he
was the first registrant in the Supplemental
Register of a trademark used in international
commerce. Registration in the Supplemental
Register cannot be given a posture as if the
registration is in the Principal Register. It must be
noted that one may be declared an unfair
competitor even if his competing trademark is
registered.
La Chemise Lacoste is world
renowned mark, and by virtue of the 20
November 1980 Memorandum of the Minister of
Trade to the director of patents in compliance
with the Paris Convention for the protection of
industrial property, effectively cancels the
registration of contrary claimants to the
enumerated marks, which include Lacoste.
27. G.R. No. 75067, February 26, 1988
PUMA
SPORTSCHUHFABRIKEN
RUDOLF
DASSLER,
K.G.,
Petitioner
vs.
THE
INTERMEDIATE APPELLATE COURT and MILORO
MANUFACTURING
CORPORATION,
Respondents
Facts:
The petitioner, a foreign corporation duly
organized and existing under the laws of the
Federal
Republic
of
Germany
and
the
manufacturer
and
producer
of
"PUMA
PRODUCTS," filed a complaint for infringement of

patent or trademark with a prayer for the

issuance of a writ of preliminary injunction
against the private respondent Mil-Oro. On July
31, 1985, the trial court issued a temporary
restraining
order,
restraining
the
private
respondent and the Director of Patents from using
the trademark "PUMA' or any reproduction,
counterfeit copy or colorable imitation thereof,
and to withdraw from the market all products
bearing the same trademark.
On August 9, 1985, the private respondent filed a
motion to dismiss on the grounds that the
petitioners' complaint states no cause of action,
petitioner has no legal personality to sue, and litis
pendentia. On August 19, 1985, the trial court
denied the motion to dismiss and at the same
time granted the petitioner's application for a writ
of injunction. The private respondents appealed
to the Court of Appeals. On June 23, 1986, the
Court of Appeals reversed the order of the trial
court and ordered the respondent judge to
dismiss the civil case filed by the petitioner.
In reversing the order of the trial court, the Court
of Appeals ruled that the requisites of lis pendens
as ground for the motion to dismiss have been
met. With regard to the petitioner's legal capacity
to sue, the Court of Appeals likewise held that it
had no such capacity because it failed to allege
reciprocity in its complaint under Sec. 21-A of
Republic Act No. 166. The Court of Appeals
further ruled that in issuing the writ of
preliminary injunction, the trial court committed
grave abuse of discretion because it deprived the
private respondent of its day in court as the latter
was not given the chance to present its counterevidence.
Issue:
WON CA erred in holding that petitioner had no
legal capacity to sue.
Held:
Yes. Petitioner maintains that it has substantially
complied with the requirements of Section 21-A of
Republic Act R.A. No. 166, as amended. According
to the petitioner, its complaint specifically alleged
that it is not doing business in the Philippines and
is suing under the said Repulbic Act; that Section
21-A thereof provides that "the country of which
the said corporation or juristic person is a citizen,
or in which it is domiciled, by treaty, convention
or law, grants a similar privilege to corporate or
juristic persons of the Philippines" but does not
mandatorily require that such reciprocity between
the Federal Republic of Germany and the
Philippines be pleaded; that such reciprocity
arrangement is embodied in and supplied by the

Union Convention for the Protection of Industrial

Property Paris Convention) to which both the
Philippines and Federal Republic of Germany are
signatories and that since the Paris 'Convention is
a treaty which, pursuant to our Constitution,
forms part of the law of the land, our courts are
bound to take judicial notice of such treaty, and,
consequently, this fact need not be averred in the
complaint.
WHEREFORE, the appealed decision of the Court
of Appeals dated June 23, 1986 is REVERSED and
SET ASIDE and the order of the Regional Trial
Court of Makati is hereby Reinstated.
28. G.R. No. L-29971, August 31, 1982
ESSO STANDARD EASTERN, INC., Petitioner
vs. COURT OF APPEALS and UNITED
CIGARETTE CORPORATION, Respondents
Facts:
Esso filed a case against United Cigarette Corp
for trademark infringement alleging that after the
latter had acquired in November, 1963 the
business, factory and patent rights of La Oriental
Tobacco Corporation, it began to use the
trademark ESSO on its cigarettes, the same
trademark used by petitioner in its quality
petroleum products which was likely to cause
confusion or deception on the part of the
purchasing public as to its origin or source, to the
detriment of its own products.
In its answer, private respondent admitted the
use of the trademark ESSO on its own product of
cigarettes but claimed that these were not
identical to those produced and sold by the
petitioner
The trial court found United Cigarette Corp
guilty of infringement of trademark.
On appeal, the judgment was reversed and the
complaint was dismissed.
Issue:
WON United Cigarette Corp can be held liable
for trademark infringement / negative
Held:
The law defines infringement as the use without
consent of the trademark owner of any
"reproduction, counterfeit, copy or colorable
imitation of any registered mark or tradename in
connection with the sale, offering for sale, or
advertising of any goods, business or services on
or in connection with which such use is likely to
cause confusion or mistake or to deceive
purchasers or others as to the source or origin of

such goods or services, or identity of such

business; or reproduce, counterfeit, copy or
colorably imitate any such mark or tradename
and apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints,
packages,
wrappers,
receptacles
or
advertisements intended to be used upon or in
connection with such goods, business or
services."
Implicit in this definition is the concept that the
goods must be so related that there is a likelihood
either of confusion of goods or business.
It is undisputed that the goods on which
petitioner uses the trademark ESSO, petroleum
products, and the product of respondent,
cigarettes, are non-competing.
Non-competing goods may be those which,
though they are not in actual competition, are so
related to each other that it might reasonably be
assumed
that
they
originate
from
one
manufacturer.

Regional Trial Court (RTC) issued search warrants,

allowing the National Bureau of Investigation
(NBI) to raid the stores and confiscate 6,000 pairs
of shoes.
The accused moved to quash the warrants,
saying that there was no confusing similarity
between the Skechers and the Strong brands.
The RTC granted the motion to quash and ordered
the NBI to return the seized goods. The court said
that the two brands had glaring differences and
that an ordinary prudent consumer would not
mistake one for the other.
On certiorari, the Court of Appeals (CA) affirmed
the RTC ruling.
The matter was elevated to the Supreme Court
(SC).
Issue:
Did the accused commit trademark infringement?

Goods are related when they belong to the

same class or have the same descriptive
properties; when they possess the same physical
attributes or essential characteristics with
reference to their form, composition, texture or
quality.

Held:

The goods are obviously different from each

other with "absolutely no iota of similitude"

Remedies; Infringement. Any person who shall,

without the consent of the owner of the
registered mark:

They are so foreign to each other as to make it

unlikely that purchasers would think that
petitioner is the manufacturer of respondent's
goods. The mere fact that one person has
adopted and used a trademark on his goods does
not prevent the adoption and use of the same
trademark by others on unrelated articles of a
different kind.
The products of each party move along and are
disposed
through
different
channels
of
distribution.
29. G.R. No. 164321, March 23, 2011
SKECHERS USA INC., Petitioner Inc. vs.
INTER PACIFIC INDUSTRIAL TRADING CORP.,
Respondent
Facts:
Skechers, USA Inc. is the owner of the registered
trademarks Skechers and S within an oval
logo. Skechers filed a criminal case for
trademark infringement against several storeowners that were selling shoes branded as
Strong and bearing a similar S logo. The

Yes, the accused is guilty of trademark

infringement.
Under the IP Code (RA No. 8293), trademark
infringement is committed when:

155.1. Use in commerce any reproduction,

counterfeit, copy, or colorable imitation of a
registered mark or the same container or a
dominant feature thereof in connection with the
sale, offering for sale, distribution, advertising of
any goods or services including other preparatory
steps necessary to carry out the sale of any
goods or services on or in connection with which
such use is likely to cause confusion, or to cause
mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or color ably
imitate a registered mark or a dominant feature
thereof and apply such reproduction, counterfeit,
copy or colorable imitation to labels, signs, prints,
packages,
wrappers,
receptacles
or
advertisements intended to be used in commerce
upon or in connection with the sale, offering for
sale, distribution, or advertising of goods or
services on or in connection with which such use
is likely to cause confusion, or to cause mistake,
or to deceive, shall be liable in a civil action for
infringement by the registrant for the remedies
hereinafter set forth: Provided, That the
infringement takes place at the moment any of
the acts stated in Subsection 155.1 or this

subsection are committed regardless of whether

there is actual sale of goods or services using the
infringing material. (emphasis supplied)
There is trademark infringement when the second
mark used is likely to cause confusion. There are
two tests to determine this:
1. Dominancy Test the court focuses on the
similarity of the dominant features of the marks
that might cause confusion in the mind of the
consumer. Duplication or imitation is not
necessary. Even accidental confusion may be
cause
for
trademark
infringement.
More
consideration is given to the aural and visual
impressions created by the marks on the buyers
and less weight is given to factors like price,
quality, sales outlets and market segments.
Applied to this case:
The SC found that the use of the S symbol
by Strong rubber
shoes
infringes
on
the
registered Skechers trademark. It is the most
dominant feature of the mark -- one that catches
the buyers eye first. Even if the accused claims
that there was a difference because the S used
by Skechers is found inside an oval, the fact that
the accused used the dominant S symbol
already constitutes trademark infringement.
The SC disagreed with the CA reasoning that the
S symbol is already used for many things,
including the Superman symbol. Even if this is
true, the fact that Strong used same stylized S
symbol as that of the Skechers brand makes this
a case of trademark infringement. The same font
and style was used in this case. The Superman
S symbol is clearly different from the S in this
case.
2. Holistic or Totality Test the court looks at
the entirety of the marks as applied to the
products, including the labels and packaging. You
must not only look at the dominant features but
all other features appearing on both marks.
Applied to this case: Both RTC and CA used
the Holistic Test to rule that there was no
infringement. Both courts argued the following
differences:
The mark S found in Strong Shoes is not
enclosed in an oval design.
The word Strong is conspicuously placed at
the backside and insoles.
The hang tags and labels attached to the
shoes bears the word Strong for respondent
and
Skechers
U.S.A.
for
private
complainant;
Strong shoes are modestly priced compared
to the costs of Skechers Shoes. Also using
the Holistic Test, the SC corrected the lower
courts and ruled that the striking similarities

between
the
products
outweigh
the
differences argued by the respondents:
Same color scheme of blue, white and gray;
Same wave-like pattern on the midsole and
the outer sole;
Same elongated designs at the side of the
midsole near the heel;
Same number of ridges on the outer soles
(five at the back and six in front);
Same location of the stylized S symbol;
The words "Skechers Sport Trail" at the back
of the Skechers shoes and "Strong Sport Trail"
at the back of the Strong shoes, using the
same font, color, size, direction and
orientation;
Same two grayish-white semi-transparent
circles on top of the heel collars.
The features and overall design of the two
products are so similar that there is a high
likelihood of confusion.
Two products do not need to be identical, they
just need to be similar enough to confuse the
ordinary buyer in order to constitute
trademark infringement (Converse Rubber
Corporation v. Jacinto Rubber & Plastic Co.,
186 Phil. 85 [1980]). Also, the difference in
price cannot be a defense in a case for
trademark
infringement
(McDonalds
Corporation v. L.C. Big Mak Burger, Inc., 480
Phil.
402,434
[2004]).

There are two types of confusion:

1. Product Confusion where the ordinary
prudent purchaser would be induced to purchase
on product in the belief that he was buying
another.
2. Source or Origin Confusion although the
goods are different, the use of the mark causes
the consumer to assume that both products
originate from the same source.
Trademark law protects the owner not only from
product confusion but also from source confusion.
Protection is not limited to the same or similar
products but extends to all cases where:
The consumer is misled into thinking that the
trademark owner extended his business into a
new field;
The consumer is misled into thinking that the
trademark owner is in any way connected to
the infringers activities; or
The infringement forestalls the normal
potential expansion of the trademark owners
business.
Trademark law does not only protect the owners
reputation and goodwill, it also protects the
consumers from fraud and confusion.
In this case, it is clear that there was an attempt
to copy the trademark owners mark and product
design. In trademark infringement cases, you do

not need to copy another's mark or product

exactly. Colorable imitation is enough.

30. G.R. No. 164321, November 30, 2006

SKECHERS USA INC., Petitioner Inc. vs.
INTER PACIFIC INDUSTRIAL TRADING CORP.,
Respondent
In March 2002, Skechers USA, Inc., with the
assistance
of
the
National
Bureau
of
Investigation, obtained from the Regional Trial
Court of Manila (lower court) search warrants
against an outlet and warehouse operated by
Inter Pacific Trading et al. that was suspected of
infringing its registered trademark SKECHERS and
its trademark S (within an oval design) on
shoes. Seized from these locations were more
than 6,000 pairs of shoes with the mark STRONG,
the S of which was similar to the S logo of
Skechers. On motion by Inter Pacific the lower
court quashed the search warrants, holding that
there were glaring differences between the
contending marks such that an ordinary and
prudent purchaser would not likely be misled or
confused and purchase the wrong article. On
Skechers appeal, the Court of Appeals affirmed
the lower courts decision.
Dissatisfied with the ruling of the appellate court,
Skechers appealed to the Supreme Court
(Skechers USA, Inc. v. Inter Pacific Industrial
Trading Corp., G.R. No. 164321). In its March 23,
2011, ruling setting aside the appeals court
decision, the Supreme Court held: [A]pplying the
dominancy test to the case at bar, this Court
finds that the use of the stylized S by
respondent in its Strong rubber shoes infringes on
the mark already registered by the petitioner with
the IPO. While it is undisputed that petitioners
stylized S is within an oval design, to this
Courts mind, the dominant feature of the
trademark is the stylized S, as it is precisely the
stylized S which catches the eye of the
purchaser.
31. G.R. No. 190065, August 16, 2010
DERMALINE, INC., Petitioner vs. MYRA
PHARMACEUTICALS, Respondent
Facts:
Dermaline filed with the IPO an application to
register the trademark Dermaline. Myra
opposed this alleging that the trademark
resembles its trademark Dermalin and will
cause confusion, mistake and deception to the
purchasing public. Dermalin was registered way
back 1986 and was commercially used since
1977. Myra claims that despite attempts of
Dermaline to differentiate its mark, the dominant

feature is the term Dermaline to which the first

8 letters were identical to that of Dermalin. The
pronunciation for both is also identical. Further,
both have 3 syllables each with identical sound
and appearance.
Issue:
W/N the IPO should allow the registration of the
trademark Dermaline.
Held:
NO.
As Myra correctly posits, it has the right under
Section 147 of R.A. No. 8293 to prevent third
parties from using a trademark, or similar signs or
containers for goods or services, without its
consent, identical or similar to its registered
trademark, where such use would result in a
likelihood of confusion. In determining confusion,
case law has developed two (2) tests, the
Dominancy Test and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of
the prevalent features of the competing
trademarks that might cause confusion or
deception. Duplication or imitation is not even
required; neither is it necessary that the label of
the applied mark for registration should suggest
an effort to imitate. Relative to the question on
confusion
of
marks
and
trade
names,
jurisprudence noted two (2) types of confusion,
viz:
(1) confusion of goods (product confusion), where
the ordinarily prudent purchaser would be
induced to purchase one product in the belief that
he was purchasing the other; and
(2) confusion of business (source or origin
confusion), where, although the goods of the
parties are different, the product, the mark of
which registration is applied for by one party, is
such as might reasonably be assumed to
originate with the registrant of an earlier product,
and the public would then be deceived either into
that belief or into the belief that there is some
connection between the two parties, though
inexistent.
Using this test, the IPO declared that both
confusion of goods and service and confusion of
business or of origin were apparent in both
trademarks. While it is true that the two marks
are presented differently, they are almost spelled
in the same way, except for Dermalines mark
which ends with the letter "E," and they are
pronounced practically in the same manner in
three (3) syllables, with the ending letter "E" in
Dermalines mark pronounced silently. Thus,
when an ordinary purchaser, for example, hears

an
advertisement
of
Dermalines
applied
trademark over the radio, chances are he will
associate it with Myras. When one applies for the
registration of a trademark or label which is
almost the same or that very closely resembles
one already used and registered by another, the
application should be rejected and dismissed
outright, even without any opposition on the part
of the owner and user of a previously registered
label
or
trademark.
Further, Dermalines stance that its product
belongs to a separate and different classification
from Myras products with the registered
trademark does not eradicate the possibility of
mistake on the part of the purchasing public to
associate the former with the latter, especially
considering that both classifications pertain to
treatments for the skin.

32. G.R. No. 171053, October 15, 2007

SEHWANI, INC., Petitioner vs. IN-N-OUT
BURGER, Respondent
What evidence proves that a trademark is
internationally well-known?
In this case, the Supreme Court affirmed the
decision of the Intellectual Property Office that
the trademark IN-N-OUT is internationally wellknown. The proof on which the IPO based its
decision are: IN-N-OUT registrations in various
countries around the world and its comprehensive
advertisements therein, articles about IN-N-OUT
Burger appearing in magazines, newspapers, and
print-out of what appears to be printed
representations of its website (www.innout.com),
as well as object evidence consisting of
videotapes of famous celebrities mentioning IN-NOUT burgers in the course of their interviews
showing
a
tremendous
following
among
celebrities.
33. G.R. No. 180073, November 25, 2009
PROSOURCE
INTERNATIONAL,
INC.,
Petitioner
vs.
HORPHAG
RESEARCH
MANAGEMENT SA, Respondent
Facts:
Horphag Research Management SA is a corporati
on duly organized an existing under the laws of
Switzerland and the owner of trademark
PYCNOGENOL, a food supplement sold and
distributed by Zuellig Pharma Corporation.
Prosource International, Inc., is a corporation duly
organized and existing under the laws of the

Republic of the Philippine, was also distributing a

similar food supplement using the mark PCOGENOLS. Horphag Research Management SA
filed a complaint for trademark infringement
against Zuellig Pharma Corporation for the
latters use of the mark PCO-GENOLS which the
former claimed to be confusingly similar to its
trademark
PYCNOGENOL. .Prosource International, Inc. conte
nded that respondent could not file the infringem
ent caseconsidering that the latter is not the
registered owner of the trademark PYCNOGENOL,
but
one
Horphag
Research
Limited. It claimed that it discontinued the use of
the mark prior to the institution of the
infringement case. The RTC decided in favor of
Horphag finding that PYCNOGENOL and PCOGENOLS have the same suffix GENOL which
appears to be merely descriptive and thus open
for trademark registration by combining it with
other words. The trial court, likewise, concluded
that the marks, when read, sound similar, and
thus
confusingly
similar
especially
since
they both refer to food supplements. The court
added that petitioners liability was not negated
by its act of pulling out of the market the
products
bearing
the
questioned
mark since the fact remains that from 1996 until J
une 2000, petitioner had infringedrespondents
product by using the trademark PCO-GENOLS.
On appeal
to the
CA, the
petition was
dismissed. The appellate court explained that
under the Dominancy or the Holistic Test, PCOGENOLS is deceptively similar to PYCNOGENOL.
Issue:
Whether or not the use of PCOGENOLS which is si
milar to PYCNOGENOL constitutes
infringement
case?
Held:
A trademark is any distinctive word, name, symb
ol, emblem, sign, or device, or any combinationth
ereof, adopted and used by a manufacturer or
merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt by
others. Inarguably, a trademark deserves
protection.
In
determining
similarity
and
likelihood of confusion, jurisprudence has
developed two tests: the Dominancy Test and
the Holistic or Totality Test. The Dominancy Test
focuses
on
the
similarity
of
the
prevalent features of the competing trademarks t
hat might cause confusion and deception, thus
constituting infringement. If the competing
trademark contains the main, essential and
dominant features of another, and confusion or
deception is likely to result, infringement takes

place. Duplication
or
imitation
is
not necessary; nor
is it necessary
that
the infringing label should suggest an effort
to imitate. The question is whether the use of the
marks involved is likely to cause confusion
or mistake in the mind of the public or to deceive
purchasers. 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. In contrast, the Holistic Test entails a
consideration of the entirety of the marks as
applied to the products, including the labels and
packaging, in determining confusing similarity.
The discerning eye of the observer must focus
not only on the predominant words but also on
the other features appearing on both labels in
order
that
the
observer may draw his conclusion whether one is
confusingly similar to theother.Both the word[s] P
YCNOGENOL an
PCO-GENOLS have the same
suffix GENOL which on evidence, appears to
be merely descriptive and furnish no indication
of the origin of the article and hence, open for
trademark registration by the plaintiff thru
combination with another word or phrase such as
PYCNOGENOL, Exhibits A to A-3. Furthermore,
although the letters Y between P and C, N
between O and C and S after L are missing in
the
[petitioners]
mark
PCO-GENOLS,
nevertheless,
when
the
two
words
are
pronounced, the sound effects are confusingly si
milar not to mention that they are bothdescribed
by their manufacturers as a food supplement and
thus,
identified
as
such
by
their public
consumers.
And
although
there
were
dissimilarities in the trademark due to the type of
letters used as well as the size, color and design
employed on their individual packages/bottles,
still the close relationship of the competing
products name in sounds as they were
pronounced, clearly indicates that purchasers
could be misled into believing that they are the
same and/or originates from a common source
and manufacturer.

34. G.R. No. 138900, September 20,

2005
LEVI STRAUSS, Petitioner vs. CLINTON
APARELLE, Respondent
Facts:
This case arose from the Complaint for Trademark
Infringement, Injunction and Damages filed by
petitioners LEVIS STRAUSS & CO. and LEVI
STRAUSS
PHILIPPINE
INC.
(LSPI)
against
respondent Clinton Apparelle, Inc. together with

an alternative defendant, Olympian Garments,

Inc., before the RTC of Quezon City.
The Complaint alleged that LS & Co., a foreign
corporation duly organized and existing under the
laws of the State of Delaware, USA, and engaged
in the apparel business, is the owner by prior
adoption
and
use
since
1986
of
the
internationally famous "Dockers and Design"
trademark. The "Dockers and Design" trademark
was first used in the Philippines in or about May
1988, by LSPI, a domestic corporation engaged in
the manufacture, sale and distribution of various
products bearing trademarks owned by LS & Co.
LS & Co. and LSPI further alleged that they
discovered the presence in the local market of
jeans under the brand name "Paddocks" using a
device which is substantially, if not exactly,
similar to the "Dockers and Design" trademark
without LS & Co.'s consent. The petitioners
prayed for a TRO and writ of preliminary
injunctions which the court granted after the
respondent failed to appear despite notice.
Clinton Apparelle filed a Motion to Dismiss and
Motion for Reconsideration in an Omnibus Order
but this was denied for lack of merit.
Thus, Clinton Apparelle filed with the Court of
Appeals a Petition for certiorari, prohibition and
mandamus with prayer for the issuance of a
temporary restraining order and/or writ of
preliminary injunction, assailing the orders of the
trial court. The Court of Appeals ruled in favor of
the respondent and held that the trial court did
not follow the procedure required by law for the
issuance of a temporary restraining order, as
Clinton Apparelle was not duly notified of the date
of the summary hearing for its issuance. Thus,
the Court of Appeals ruled that the TRO had been
improperly issued. The appellate court also held
that such issuance is questionable for the
petitioners failed to sufficiently establish their
material and substantial right to have the writ
issued. In addition, the Court of Appeals strongly
believed that the implementation of the
questioned writ would effectively shut down the
respondent's business, which in its opinion should
not be sanctioned. Hence, this petition.
Issue:
Whether or not the petitioners are entitled the
urgent necessity for injunctive relief, urging that
the erosion or dilution of their trademark is
protectable on the ground of trademark dilution.
Ruling:
No, the petitioners did not adequately prove their
entitlement to the injunctive writ on the ground of

trademark dilution. Their assertion that a

trademark owner does not have to wait until the
mark loses its distinctiveness to obtain injunctive
relief, and that the mere use by an infringer of a
registered mark is already actionable even if he
has not yet profited thereby or has damaged the
trademark owner is of no merit.
Trademark dilution is the lessening of the
capacity of a famous mark to identify and
distinguish goods or services, regardless of the
presence or absence of:
(1) competition between the owner of the famous
mark and other parties; or
(2) likelihood of confusion, mistake or deception.
Subject to the principles of equity, the owner of a
famous mark is entitled to an injunction "against
another person's commercial use in commerce of
a mark or trade name, if such use begins after
the mark has become famous and causes dilution
of the distinctive quality of the mark." This is
intended to protect famous marks from
subsequent uses that blur distinctiveness of the
mark or tarnish or disparage it as provided in the
case of Toys "R" Us v. Akkaoui.
Based on the foregoing, to be eligible for
protection from dilution, there has to be a finding
that:
(1) the trademark sought to be protected is
famous and distinctive;
(2) the use by respondent of "Paddocks and
Design" began after the petitioners' mark became
famous; and (3) such subsequent use defames
petitioners' mark. In the case at bar, petitioners
have yet to establish whether "Dockers and
Design" has acquired a strong degree of
distinctiveness and whether the other two
elements are present for their cause to fall within
the ambit of the invoked protection. The Trends
MBL Survey Report which petitioners presented in
a bid to establish that there was confusing
similarity between two marks is not sufficient
proof of any dilution that the trial court must
enjoin.
35. G.R. No. 157216, November 20, 2003
246 CORPORATION, doing business under
the name and style of ROLEX MUSIC
LOUNGE, Petitioner, vs. HON. REYNALDO B.
DAWAY, Presiding Judge of Branch 90 of RTC
of Quezon City, MONTRES ROLEX S.A. and
ROLEX CENTRE PHIL. LIMITED, Respondents
Facts:
In 1998, Montres Rolex SA and Rolex Centre Phil.
Ltd., owners and proprietors of Rolex and Crown
Device filed against 246 Corporation, doing
business as Rolex Music Lounge, a suit for

trademarkinfringement and damages. In 2000,

246 Corp. filed a motion for preliminary hearing
on its affirmative defense; which the court
thereafter issued a subpoena ad testificandum to
Atty. Atienza. Montres Rolex opposed, and the
trial court quashed the subpoena. 246 corp. filed
a petition for certiorari before the Court of
Appeals, which was dismissed. Hence, the
petition for review on certiorari.
Issue:
Whether the junior use of a registered mark on
entirely different goods subsists.
Held:
The rule, that there is no infringement in the use
of a junior user of the registered mark on the
entirely different goods, has been modified b
Section 123.1 (f) of RA 8293 (Intellectual Property
code). Hs use is precluded when that the mark is
well known internationally and in the Philippines,
the use of the mark would indicate a connection
or relationship between the user and the
registrant, and that the interests of the wellknown mark are likely to be damaged. The court
however cannot resolve the merits considering
the facts as to the existence/absence of the
requisites should be addressed in a full- blown
hearing and not on a mere preliminary hearing.
36. G.R. No. 166866, July 30, 2008
MATTEL,
INC.,
Petitioner
vs.
EMMA
FRANCISCO, Respondent
Facts:

Jimmy A. Uy (Uy) filed a trademark application

with the Bureau of Patents, Trademarks and
Technology Transfer (BPTTT) for registration of
the
trademark "BARBIE" for
use
on
confectionary products,
such as milk,
chocolate, candies, milk bar and chocolate
candies.

Mattel, Inc. (Mattel), filed a Notice of

Opposition against Uy's "Barbie" trademark as
the latter was confusingly similar to its
trademark on dolls, doll clothes and doll
accessories,
toys
and
other
similar
commercial products.

Public respondent Estrellita B. Abelardo, the

Director of the Bureau of Legal Affairs, IPO,
rendered a Decision dismissing Mattel's
opposition and giving due course to Uys
application for the registration of the
trademark "Barbie" used on confectionary
products. The Director held that there was no
confusing
similarity
between
the
two

competing marks because the goods were

non-competing or unrelated.

Mattel filed MR which was denied then it

appealed the decision with the Director
General.

Public respondent Emma C. Francisco, the

Director General, rendered a Decision denying
the appeal on the ground that there was no
proof on record that Mattel had ventured into
the
production
of
chocolates
and
confectionary products under the trademark
"Barbie" to enable it to prevent Uy from using
an identical "Barbie" trademark on said
goods; that the records were bereft of the fact
that the Director of the Bureau of Trademarks
(BOT) had already declared the subject
trademark application abandoned due to the
non-filing of the Declaration of Actual Use
(DAU) by Uy.

Issue:
Whether the application is deemed withdrawn or
abandoned for failure to file the DAU
Held:
Uy's
declaration
in
his
Comment
and
Memorandum before this Court that he has not
filed the DAU as mandated by pertinent
provisions of R.A. No. 8293 is a judicial admission
that he has effectively abandoned or withdrawn
any right or interest in his trademark.
Section 124.2 of R.A. No. 8293 provides:
The applicant or the registrant shall file a
declaration of actual use of the mark with
evidence to that effect, as prescribed by the
Regulations within three (3) years from the filing
date of the application. Otherwise, the applicant
shall be refused or the marks shall be removed
from the Register by the Director. (Emphasis
supplied)
Moreover, Rule 204 of the Rules and Regulations
on Trademarks provides:
Declaration of Actual Use. The Office will not
require any proof of use in commerce in the
processing of trademark applications. However,
without need of any notice from the Office, all
applicants or registrants, shall file a declaration of
actual use of the mark with evidence to that
effect within three years, without possibility of
extension, from the filing date of the application.
Otherwise, the application shall be refused or the
mark shall be removed from the register by the
Director motu propio. (Emphasis supplied)

Meanwhile, Memorandum Circular No. BT 2K1-304 dated March 29, 2001 of the IPO provides:
2. For pending applications prosecuted under R.A.
166 we distinguish as follows:
2.1. Based on use must submit DAU and
evidence of use on or before December 1, 2001,
subject to a single six (6) month extension. (Sec.
3.2,
Final
Provisions
of
the
Trademark
Regulations, R.A. 8293, IPO Fee Structure and MC.
No. BT Y2K-8-02)
Uy's admission in his Comment and Memorandum
of
non-compliance
with
the
foregoing
requirements is a judicial admission and an
admission against interest combined. A judicial
admission binds the person who makes the same.
In the same vein, an admission against interest is
the best evidence which affords the greatest
certainty of the facts in dispute. The rationale for
the rule is based on the presumption that no man
would declare anything against himself unless
such declaration is true. Thus, it is fair to
presume that the declaration corresponds with
the truth, and it is his fault if it does not.
In the present case, Mattel is seeking a ruling on
whether Uy's "Barbie" trademark is confusingly
similar to it's (Mattel's) "Barbie" trademark. Given
Uy's admission that he has effectively abandoned
or withdrawn any rights or interest in his
trademark by his non-filing of the required DAU,
there is no more actual controversy, or no useful
purpose will be served in passing upon the merits
of the case. It would be unnecessary to rule on
the trademark conflict between the parties.
WHEREFORE, the petition is DISMISSED for being
moot and academic.
37. G.R. No. 132993, June 29, 2005
LEVI STRAUSS (PHILS.), INC., Petitioner vs.
VOGUE
TRADERS
CLOTHING
COMPANY,
Respondent
(from http://www.tmcnet.com
Case Law)

Business

Can an action in a regular court for infringement

of
trademark
or
trade
name
proceed
independently of a petition for cancellation of
trademark registration before the Bureau of
Patents, Trademarks and Technology Transfer?
In this case Levi Strauss (Phils.), Inc. filed a
petition for cancellation of the trademark
registrations of Vogue Traders Clothing Co. that
were confusingly similar to its trademarks, for
example "LIVE" for "LEVI." Levi Strauss filed
criminal charges against the owner of Vogue
Traders but the same were eventually dismissed
and the search warrants issued upon application

of Levi Strauss were quashed. Consequently,

Vogue Traders sought to recover in an action
before the regional trial court the seized articles
that it claimed did not have any deceptive
resemblance with the trademarks of Levi Strauss.
The trial court, after it found that there was a
colorable imitation of Levis Strauss' designs,
issued a writ of preliminary injunction to restrain
Vogue Traders from further infringing on the
trademark.
Vogue Traders took that matter to the Court of
Appeals which rendered a decision enjoining the
trial court from further proceeding with the case
until the petition for the cancellation of the
trademark registration with the Patent bureau is
resolved.
It was held that while an administrative
cancellation of a registered trademark, on any of
the grounds enumerated in Section 17 of Republic
Act 166 (later expanded by R.A. No. 8293, the
"Intellectual Property Code of the Philippines"), an
action for infringement or any other incidental
remedy sought is within the jurisdiction of the
ordinary courts.
Thus, the regional trial court was ordered to
proceed with the hearing of the case.
38. G.R. No. 182147, December 15, 2010
ARNEL TY, Petitioner vs. NBI SUPERVISING
AGENTS DE JEMIL, Respondent
Facts:
Petitioners are stockholders of Omni Gas
Corporation ("Omni"). They are being suspected
of engaging in illegal trading of petroleum
products and under filling of branded LPG
cylinders in violation of B.P. 33, as amended by
P.D. 1865. NBI Agents Marvin De Jemil and
Edgardo
Kawada
conducted
surveillance
operations on Omni. On 15 April 2004, the NBI
Agents carried out a test-buy. Using eight
branded LPG cylinders from Shell, Petron and
Total, they went to Omni for refilling. Omni refilled
the cylinders. The NBI agents paid more than
P1500. LPG Inspector Noel Navio found that the
LPG cylinders were without LPG valve seals and
one of the cylinders was actually under filled.
On 28 April 2004, Agent De Jemil obtained a
search warrant from Pasig RTC branch 167. The
NBI seized several items from Omni's premises.
Subsequently, Agent De Jemil filed his ComplaintAffidavit before the DOJ. The Assistant City
Prosecutor of Pasig found probable cause for
violation of BP 33. This was later approved by
Chief State Prosecutor Jovencito Zuno.

Petitioners appealed the decision to the Secretary

of Justice, who later reversed the decision of the
Office of the Chief State Prosecutor. NBI Agent De
Jemil moved for reconsideration. Denied. He thus
filed a petition for certiorari under Rule 65 with
the
Court
of
Appeals.
The Court of Appeals affirmed the decision of
Secretary of Justice. It later reversed itself and
reinstated the Resolution of the Chief State
Prosecutor.
Issues:
(1) Whether the petition for certiorari with the
Court of Appeals was proper even if Agent De
Jemil did not appeal to the Office of the
President?
(2) Whether probable cause exists against
petitioners for violations of Sec. 2 (a) and (c) of
BP
33,
as
amended?
(3) Whether
therefor?

petitioners

can

be

held

liable

Held:
(1) YES. The determination of probable cause by
the public prosecutor, and, later on, by the
Secretary of Justice, is subject to judicial review
where it is established that grave abuse of
discretion tainted the determination. The
aggrieved party need not resort to the Office of
the President before availing of judicial remedies
because the Secretary of Justice is an alter ego of
the President who may opt to exercise or not to
exercise his or her power of review over the
formers determination in criminal investigation
cases. Also, under the doctrine of qualified
political agency, the determination of probable
cause by the Secretary of Justice is presumably
that of the Chief Executive unless disapproved or
reprobated
by
the
latter.
(2) YES. The test-buy conducted on 15 April 2004
tends to show that Omni illegally refilled the eight
branded cylinders. Such act is a clear violation of
Sec. 2 (a), in relation to Secs. 3 (c) and 4 of BP
33, as amended.
Omni has no authority to refill LPG cylinders as
shown by the certifications provided by Shell,
Petron and Total. The seized items also show that
Omni has no authority to refill the cylinders. It
shows that Omni really refilled branded cylinders
without authorization. Omnis unauthorized
refilling of branded LPG cylinders, contrary to Sec.
2 (a) in relation to Sec. 3 (c) of BP 33, as
amended.

Granting arguendo that the customers already

owned the LPG cylinders, such fact does give
Omni authority to refill the cylinders without
authorization from the brand owners. Only the
duly authorized dealers and refillers of the brand
owners may refill the branded LPG cylinders. The
offense of refilling a branded LPG cylinder without
the written consent of the brand owner
constitutes the offense regardless of the buyer or
possessor of the branded LPG cylinder.
Petitioner's contention that they are not liable
because the under filling that took place during
the test-buy is an isolated event is UNTENABLE. A
single under filling under BP 33 is already a
criminal act.
(3) Only Arnel Ty, as President of Omni, is liable.
The other petitioners, who are members of
Omni's Board of Directors, are not liable. Sec. 4 of
BP 33 enumerates the persons who may be held
liable, viz:
(1) the president,
(2) general manager,
(3) managing partner,
(4) such other officer charged with the
management of the business affairs of the
corporation or juridical entity, or
(5) the employee responsible for such
violation.
The Board of Directors is primarily
a policymaking body of the Corporation
who doesn't concern itself with day-to-day
operations.
39. G.R. No. 181572, December 16, 2009
JUNO BATISTIS, Petitioner vs. PEOPLE OF
THE PHILIPPINES, Respondent
Facts:
Agents of the NBI conducted a test-buy operation
in the premises of Batistis and thereby confirmed
that he was actively engaged in the manufacture,
sale and distribution of counterfeit Fundador
brandy products. Upon application of the NBI
agents based on the positive results of the testbuy, Judge Antonio M. Eugenio, Jr. of the Manila
RTC issued a Search Warrant, authorizing the
search of the premises of Batistis. The search
yielded counterfeit boxes, bottles and caps of
Fundador. Juno Batistis was charged for
infringement
of
trademark
and
unfair
competition. The RTC found JUNO BATISTIS Guilty
beyond Reasonable Doubt of the crime of
Violation of Section 155 of the Intellectual
Property Code and hereby sentences him to
suffer the penalty of imprisonment of TWO(2)
YEARS and to pay a fine of FIFTY THOUSAND
(P50,000.00) PESOS.

This Court likewise finds accused JUNO BATISTIS

Guilty beyond Reasonable Doubt of the crime of
Violation of Section 168 of the IP Code, and to
suffer the penalty of imprisonment of TWO (2)
YEARS and to pay a fine of FIFTY THOUSAND
(Php50,000.00) PESOS. Batistis appealed to the
CA, which affirmed his conviction for infringement
of trademark, but acquitted him of unfair
competition.Batistis further appealed to the SC co
ntending that the basis of his conviction in the
RTC is the self-serving affidavits and testimonies
of the policemen who raided his premises.
Issue:
Whether or not the penalty given to Batistis was
proper?
Held:
The Supreme Court ruled that the straight
penalty the CA imposed was contrary to the
Indeterminate Sentence Law, whose Section
1 requires that the penalty of imprisonment
should
be
an
indeterminate
sentence. The need for
specifying the minimum and maximum periods of
the indeterminate sentence is to prevent the
unnecessary and excessive deprivation of liberty
and to enhance the economic usefulness of the
accused, since he may be exempted from serving
the entire sentence, depending upon his behavior
and his physical, mental, and moral record.
The requirement of imposing an indeterminate
sentence
in all criminal
offenses
whether
punishable by the Revised Penal Code or by
special laws, with definite minimum and
maximum terms, as the Court deems proper
within the legal range of the penalty specified by
the law must, therefore, be deemed mandatory.
In this case, the large number of Fundador
articles confiscated from Batistis house (namely,
241 empty bottles of Fundador, 163 Fundador
boxes, a half sack full of Fundador plastic caps,
and two filled bottles of Fundador Brandy) clearly
demonstrated that Batistis had been committing
a grave economic offense over a period of time,
thereby deserving for him the indeterminate,
rather than the straight and lower, penalty. SC
modified the penalty to imprisonment ranging
from two years, as minimum, to three years, as
maximum, and a fine of P50, 000.00.

40. G.R. No. 164324, August 14, 2009

TANDUAY DISTILLERS, INC., Petitioner vs.

GINEBRA SAN MIGUEL, Respondent

questioned writ and not with the merits of the

case pending before the trial court).

Facts:

Held:

In 2002, Tanduay, who has been engaged in the

liquor business since 1854 developed a new gin.
The brand name eventually chosen was Ginebra
Kapitan
with
the
representation
of
a
revolutionary Kapitan on horseback as the
dominant feature of its label. It began selling
Ginebra Kapitan in 2003.

NO.
Clear and Unmistakable Right
In this case, a cloud of doubt exists over San
Miguels exclusive right relating to the word
Ginebra. San Miguels claim to the exclusive
use of the word Ginebra is clearly still in dispute
because of Tanduays claim that it has, as others
have, also registered the word Ginebra for its
gin products. This issue can be resolved only after
a full-blown trial.

In 2003, San Miguel filed a complaint for

trademark infringement, unfair competition and
damages, with applications for issuance of TRO
and writ of preliminary injunction against Tanduay
before the Regional Trial Court. San Miguel
alleges that it has registered the trademark
Ginebra San Miguel and that it has been
continuously using GINEBRA, as a dominant
feature in its product since 1834. It claims among
others that the close similarity between Ginebra
San Miguel and Ginebra Kapitan may give rise
to confusion of goods since San Miguel and
Tanduay are competitors in the business of
manufacturing and selling liquors.
The RTC in its orders dated September 23, 2003
and October 17, 2003 granted San Miguels
prayer for issuance of a temporary restraining
order (TRO) and writ of preliminary injunction
against Tanduay. Thus, Tanduay filed a petition for
certiorari before the Court of Appeals assailing
the injunction order filed by RTC. The CA
dismissed the petition. Hence, Tanduay elevated
the case to the Supreme Court.
Tanduay asserts that not one of the requisites for
the valid issuance of a preliminary injunction is
present in this case because: 1) San Miguels
alleged exclusive right to use the generic word
Ginebra (Spanish term for gin) is far from clear
and unmistakable. 2) The CA, in upholding the
issuance of the writ of preliminary injunction, has
prejudged the merits of the case since nothing is
left to be decided by the trial court except the
amount of damages to be awarded to San Miguel.
3) The supposed damages that San Miguel will
suffer as a result of Tanduays infringement or
unfair
competition
cannot
be
considered
irreparable because the damages are susceptible
of mathematical computation as Sec 156.1 of the
IP Code can be the basis of the mathematical
computation.
Issue:
Whether or not San Miguel is entitled to the writ
of preliminary injunction granted by the trial court
as affirmed by the CA (SC shall deal only with the

Prejudging the Merits of the Case

We believe that the issued writ of preliminary
injunction, if allowed, disposes of the case on the
merits as it effectively enjoins the use of the word
Ginebra without the benefit of a full-blown trial.
In Rivas v. Securities and Exchange Commission,
we ruled that courts should avoid issuing a writ of
preliminary injunction which would in effect
dispose of the main case without trial. The
issuance of the writ of preliminary injunction had
the effect of granting the main prayer of the
complaint such that there is practically nothing
left for the trial court to try except the plaintiffs
claim for damages.
Irreparable Injury
Based on the affidavits and market survey report
submitted during the injunction hearings, San
Miguel has failed to prove the probability of
irreparable injury which it will stand to suffer if
the sale of Ginebra Kapitan is not enjoined. San
Miguel has not presented proof of damages
incapable of pecuniary estimation. At most, San
Miguel only claims that it has invested hundreds
of millions over a period of 170 years to establish
goodwill and reputation now being enjoyed by the
Ginebra San Miguel mark such that the full
extent of the damage cannot be measured with
reasonable accuracy. Without the submission of
proof that the damage is irreparable and
incapable of pecuniary estimation, San Miguels
claim cannot be the basis for a valid writ of
preliminary injunction.
WHEREFORE: SC sets aside the Court of Appeals
rulings affirming the RTC orders (TRO & writ of
preliminary injunction). The Regional Trial Court is
directed to continue expeditiously with the trial to
resolve the merits of the case.
41. G.R. No. 162311, December 4, 2008
LEVI STRAUSS (PHILS.), INC., Petitioner vs.
TONY LIM, Respondent
Facts:

Issues:
Petitioner Levi Strauss (Phils.), Inc. is a dulyregistered domestic corporation. It is a whollyowned subsidiary of Levi Strauss & Co. (LS & Co.)
A Delaware,USA company. In 1972, LS & Co.
Granted petitioner a non-exclusive license to use
its registered trademarks and trade names for the
manufacture and sale of various garment
products, primarily pants, jackets, and shirts, in
the Philippines. Presently, it is the only company
that has authority to manufacture, distribute, and
sell products bearing the LEVIS trademarks or to
use such trademarks in the Philippines. These
trademarks are registered in over 130 countries,
including the Philippines, and were first used in
commerce in the Philippines in 1946.
Sometime in 1995, petitioner lodged a complaint
before the Inter-Agency Committee on Intellectual
Property
Rights,
alleging that a certain
establishment owned by respondent Tony Lim,
doing business under the name Vogue Traders
Clothing Company, was engaged in the
manufacture, sale, and distribution of products
similar to those of petitioner and under the brand
name LIVES, and was granted the filing of an
information against respondent. Respondent then
filed his own motion for reconsideration of
the Bello resolution, the DOJ then ordered the
dismissal of the complaint.. Dissatisfied with the
DOJ rulings, petitioner sought recourse with the
CA via a petition for review under Rule 43 of the
1997 Rules of Civil Procedure. On October 17,
2003, the appellate court affirmed the dismissal
of the unfair competition complaint. The CA
pointed out that to determine the likelihood of
confusion, mistake or deception, all relevant
factors and circumstances should be taken into
consideration, such as the circumstances under
which the goods are sold, the class of purchasers,
and the actual occurrence or absence of
confusion.
Thus,
the
existence of some similarities between LIVES
jeans and LEVIS garments would not ipso
facto equate to fraudulent intent on the part of
respondent. The CA noted that respondent used
affirmative and precautionary distinguishing
features in his products for differentiation. The
appellate court considered the spelling and
pronunciation of the marks; the difference in the
designs of the back pockets; the dissimilarity
between the carton tickets; and the pricing and
sale of petitioners products in upscale exclusive
specialty shops. The CA also disregarded the
theory of post-sale confusion propounded by
petitioner, relying instead on the view that the
probability of deception must be determined at
the point of sale.

Petitioner submits that the CA committed the

following errors:
I.

The court of appeals gravely erred in

ruling
that
actual
confusion
is
necessary to sustain a charge of unfair
competition, and that there must be
direct evidence or proof of intent to
deceive the public.

II.

The court of appeals gravely erred in

ruling that respondents lives jeans do
not unfairly compete with levis
jeans and/or that there is no possibility
that the former will be confused for the
latter, considering that respondents
lives jeans blatantly copy or colorably
imitate no less than six (6) trademarks
of levis jeans.

Held:
Generally,
unfair
competition
consists
in
employing deception or any other means
contrary to good faith by which any person shall
pass off the goods manufactured by him or in
which he deals, or his business, or services for
those of the one having established goodwill, or
committing any acts calculated to produce such
result. The elements of unfair competition under
Article 189(1) of the Revised Penal Code are:
(a) That the offender gives his goods the general
appearance of the goods of another manufacturer
or dealer;
(b) That the general appearance is shown in the
(1) goods themselves, or in the
(2) wrapping of their packages, or in the
(3) device or words therein, or in
(4) any other feature of their appearance;
(c) That the offender offers to sell or sells those
goods or gives other persons a chance or
opportunity to do the same with a like purpose;
and
(d) That there is actual intent to deceive the
public or defraud a competitor.
All these elements must be proven. In finding
that probable cause for unfair competition does
not exist, the investigating prosecutor and
Secretaries Guingona and Cuevas arrived at the
same conclusion that there is insufficient
evidence to prove all the elements of the crime
that would allow them to secure a conviction.
Secretary Guingona discounted the element of
actual intent to deceive by taking into
consideration
the
differences
in
spelling,
meaning, and phonetics between LIVES and
LEVIS, as well as the fact that respondent had

registered his own mark. While it is true that

there may be unfair competition even if the
competing mark is registered in the Intellectual
Property Office, it is equally true that the same
may
show
prima
facie
good
faith.
Indeed, registration does
not
negate
unfair
competition where the goods are packed or
offered for sale and passed off as those of
complainant. However, the marks registration,
coupled with the stark differences between the
competing marks, negate the existence of actual
intent to deceive, in this particular case.
Petitioner argues that the element of intent to
deceive may be inferred from the similarity of the
goods or their appearance. The argument is
specious on two fronts. First, where the similarity
in the appearance of the goods as packed and
offered for sale is so striking, intent to deceive
may be inferred. However, as found by the
investigating prosecutor and the DOJ Secretaries,
striking similarity between the competing goods
is not present. Second, the confusing similarity of
the goods was precisely in issue during the
preliminary investigation. As such, the element
of intent to deceive could not arise without the
investigating
prosecutors
or
the
DOJ
Secretarys finding that such confusing similarity
exists. Since confusing similarity was not found,
the element of fraud or deception could not be
inferred.
We cannot sustain Secretary Bellos opinion that
to establish probable cause, it is enough that the
respondent gave to his product the general
appearance of the product of petitioner. It bears
stressing that that is only one element of unfair
competition. All others must be shown to
exist. More importantly, the likelihood of
confusion exists not only if there is confusing
similarity. It should also be likely to cause
confusion or mistake or deceive purchasers. Thus,
the CA correctly ruled that the mere fact that
some resemblance can be pointed out between
the marks used does not in itself prove unfair
competition. To reiterate, the resemblance must
be such as is likely to deceive the ordinary
purchaser exercising ordinary care.
The consumer survey alone does not equate to
actual confusion. We note that the survey was
made by showing the interviewees actual
samples of petitioners and respondents
respective products, approximately five feet
away from them. From that distance, they were
asked to identify the jeans brand and state the
reasons for thinking so. This method discounted
the possibility that the ordinary intelligent buyer
would be able to closely scrutinize, and even fit,
the jeans to determine if they were LEVIS or
not. It also ignored that a consumer would

consider the price of the competing goods when

choosing a brand of jeans. It is undisputed that
LIVES jeans are priced much lower than
LEVIS.
We find no reason to go beyond the point of sale
to determine if there is probable cause for unfair
competition.
WHEREFORE,
the
petition
is DENIED and the appealed Decision of the
Court of Appeals AFFIRMED.
SO ORDERED.
42. G.R. No. 154491, November 14, 2008
COCA-COLA
BOTTLERS
PLANT,
INC.,
Petitioner vs. QUINTIN GOMEZ, Respondent
Facts:
Coca-Cola applied for a search warrant against
Pepsi for hoarding Coke empty bottles in Pepsi's
yard in Concepcion Grande, Naga City, an act
allegedly penalized as unfair competition under
the IP Code. Coca-Cola claimed that the bottles
must be confiscated to preclude their illegal use,
destruction or concealment by the respondents.
Municipal Trial Court of Naga City, after taking the
joint deposition of the witnesses, issued Search
Warrant to seize 2,500 Litro and 3,000 eight and
12 ounces empty Coke bottles at Pepsi's Naga
yard for violation of Section 168.3
(c) of the IP Code. The local police seized and
brought to the MTC's custody 2,464 Litro and
4,036 eight and 12 ounces empty Coke bottles,
205 Pepsi shells for Litro, and 168 Pepsi shells for
smaller (eight and 12 ounces) empty Coke
bottles, and later filed with the Office of the City
Prosecutor of Naga a complaint against two Pepsi
officers for violation of Section 168.3 (c) in
relation to Section 170 of the IP Code. The named
respondents, also the respondents in this petition,
were Pepsi regional sales manager Danilo E.
Galicia (Galicia) and its Naga general manager
Quintin J. Gomez, Jr.
In their counter-affidavits, Galicia and Gomez
claimed that the bottles came from various Pepsi
retailers and wholesalers who included them in
their return to make up for shortages of empty
Pepsi bottles; they had no way of ascertaining
beforehand the return of empty Coke bottles as
they simply received what had been delivered;
the presence of the bottles in their yard was not
intentional nor deliberate. There is no mention in
the IP Code of the crime of possession of empty
bottles. The respondents also filed motions for
the return of their shells and to quash the search
warrant. They contended that no probable cause
existed to justify the issuance of the search
warrant; the facts charged do not constitute an

offense; and their Naga plant was in urgent need

of the shells.
Coca-Cola opposed the motions as the shells
were part of the evidence of the crime, arguing
that Pepsi used the shells in hoarding the bottles.
It insisted that the issuance of warrant was based
on probable cause for unfair competition under
the IP Code, and that the respondents violated
R.A. 623, the law regulating the use of stamped
or marked bottles, boxes, and other similar
containers.
Issue:
Whether or not "hoarding" of a competitor's
product
containers
punishable
as
unfair
competition under the Intellectual Property Code
that would entitle the aggrieved party to a search
warrant against the hoarder.
Held:
No, "hoarding" as defined by the petitioner is not
an act within the contemplation of the IP Code.
The theory of the petitioner that Section 168.3 (c)
of the IP Code does not limit the scope of
protection on the particular acts enumerated as it
expands the meaning of unfair competition to
include "other acts contrary to good faith of a
nature calculated to discredit the goods, business
or services of another" is of no merit. The court
disagreed with the petitioner's expansive
interpretation of Section 168.3 (c) which alleged
respondents' hoarding of Coca Cola empty bottles
is one such act.
Unfair competition has been defined as the
passing off (or palming off) or attempting to pass
off upon the public the goods or business of one
person as the goods or business of another with
the end and probable effect of deceiving the
public. It formulated the "true test" of unfair
competition: whether the acts of defendant are
such as are calculated to deceive the ordinary
buyer making his purchases under the ordinary
conditions which prevail in the particular trade to
which the controversy relates. One of the
essential requisites in an action to restrain unfair
competition is proof of fraud; the intent to
deceive must be shown before the right to
recover can exist. The advent of the IP Code has
not significantly changed these rulings as they
are fully in accord with what Section 168 of the
Code in its entirety provides. Deception, passing
off and fraud upon the public are still the key
elements that must be present for unfair
competition to exist. The court conclude that the
"hoarding" - as defined and charged by the
petitioner - does not fall within the coverage of
the IP Code and of Section 168 in particular. It

does not relate to any patent, trademark, trade

name or service mark that the respondents have
invaded, intruded into or used without proper
authority from the petitioner. Nor are the
respondents alleged to be fraudulently "passing
off" their products or services as those of the
petitioner. The respondents are not also alleged
to be undertaking any representation or
misrepresentation that would confuse or tend to
confuse the goods of the petitioner with those of
the respondents, or vice versa. What in fact the
petitioner alleges is an act foreign to the Code, to
the concepts it embodies and to the acts it
regulates; as alleged, hoarding inflicts unfairness
by seeking to limit the opposition's sales by
depriving it of the bottles it can use for these
sales.
43. G.R. No. 161051, July 23, 2009
COMPANIA GENERAL DE TABACOS DE
FILIPINAS and LA FLOR DE ISABEA INC.,
Petitioners vs. HON. VIRGILIO SEVANDAL, ET
AL., Respondents
Facts:
Petitioner Compania General de Tabacos de
Filipinas, also known as Tabacalera, is a foreign
corporation organized and existing under the
laws of Spain. It is the owner of 24 trademarks
registered with the IPO. Tabacalera authorized
petitioner La Flor de la Isabela, Inc. to
manufacture and sell cigars and cigarettes using
the Tabacalera trademarks. Respondent Gabriel
Ripoll, Jr. was an employee of petitioners for 28
years and was the General Manager before he
retired sometime in 1993. In the same year,
Ripoll organized Tabaqueria de Filipinas, Inc.
(Tabaqueria), a domestic corporation also
engaged in the manufacture of tobacco products
like cigars. Ripoll is the managing director of
Tabaqueria. Petitioners filed a Letter-Complaint
with the Securities and Exchange Commission
praying for the cancellation of the corporate
name of Tabaqueria on the ground that it
confuses and deceive the public. Petitioners also
filed with the Department of Justice (DOJ)-Task
Force on Anti-Intellectual Property Piracy a
criminal complaint against Ripoll for Infringement
of Trademark and Unfair Competition for violation
of Articles 188 and 189 of the Revised Penal
Code.
In the Complaint petitioners sought,
among others, the issuance of a preliminary
order requiring respondents to refrain from
manufacturing, distributing and/or selling the
Tabaqueria products.
Tabaqueria and Ripoll opposed the issuance of
injunctive relief pending investigation on the
ground that petitioners allegation of unfair
competition is unproved and unsubstantiated.

In Sept. 1994, DOJ dismissed the complaint for

unfair competition and/or infringement of
trademark. Petitioners moved reconsideration of
the above resolution, but their motion was
denied. On March 24, 1995, petitioners filed a
Motion to Issue Cease and Desist Order with the
DTI against the respondents. Private respondents
opposed the motion on the ground of forum
shopping due to petitioners filing of prior cases
of infringement and unfair competition with the
DOJ. As to the Motion to Issue Cease and Desist
Order, private respondents claimed that such
motion was premature considering that the
alleged evidence for the issuance of the order
was just then marked. Moreover, they alleged
that the acts that petitioners sought to be
restrained would not cause irreparable injury to
them.
In an Order dated April 30, 1996, the Office of
Legal Affairs of the DTI ruled that there was no
similarity in the general appearance of the
products of the parties and that consumers would
not be misled. In the same order, the DTI partially
granted petitioners prayer for the issuance of a
writ of preliminary injunction.
Petitioners filed a Motion for Reconsideration with
DTI but was denied. They then filed a Petition for
Certiorari with the CA. CA ruled that the dismissal
of the infringement of trademarks and unfair
competition case against respondent Ripoll, Jr.,
renders petitioners right to an injunctive relief
doubtful. Thus, the issuance of an injunction in
that case would not be proper. The CA further
ruled that petitioners failed to show that there
was an urgent and paramount necessity for the
issuance of the writ having failed to substantiate
their claim that the abrupt drop in the sales of
their products was the direct result of the acts of
respondents. Hence, we have this petition.
Issues:
1. WON CA gravely erred in not declaring the
Orders of Public Respondent as completely
null and void for having been rendered with
Grave Abuse of Discretion amounting to Lack
[or] Excess of Jurisdiction.
2. WON CA gravely erred in ruling that there is
no urgent and paramount necessity for the
issuance of a writ of injunction.
Held:
1. No. By grave abuse of discretion is meant
such capricious and whimsical exercise of
judgment which is equivalent to an excess or
lack of jurisdiction. The abuse of discretion

must be so patent and gross as to amount to

an evasion of a positive duty or a virtual
refusal to perform a duty enjoined by law or to
act at all in contemplation of law, as where
the power is exercised in an arbitrary and
despotic manner by reason of passion or
hostility. Not every error in the proceedings, or
every erroneous conclusion of law or fact, is
grave abuse of discretion. Petitioners must
prove that the elements above-mentioned
were present in the rendering of the
questioned Orders of the DTI in order to
establish grave abuse of discretion. The mere
fact that the CA ruled that the DTI prejudged
the main case filed before it does not by itself
establish grave abuse of discretion.
2. No. In order that an injunctive relief may be
issued, the applicant must show that: (1) the
right of the complainant is clear and
unmistakable; (2) the invasion of the right
sought to be protected is material and
substantial; and (3) there is an urgent and
paramount necessity for the writ to prevent
serious damage. Petitioners failed to present
one iota of evidence in support of their
allegations. They failed to present evidence
that indeed their sales dropped by an alleged
25% and that such losses resulted from the
alleged infringement by private respondents.
Without presenting evidence to prove their
allegations, petitioners arguments cannot be
given any merit. Clearly, it was incumbent
upon the petitioners to support with evidence
their claim for the issuance of a preliminary
injunction. They failed to do so. Hence, the
instant petition must fail. CA's decision
AFFIRMED.
44. G.R. No. 179127, December 24, 2008
IN-N-OUT BURGER, Petitioner vs. SEHWANI,
INC., Respondent
(from International Trademark Association
[INTA] Bulletin)
On October 15, 2007, the Third Division of the
Supreme Court, the highest judiciary authority in
the Philippines, confirmed that the owner of a
well-known trademark has the legal capacity to
sue for violation of IP rights in the Philippines
even if the trademark was neither registered nor
used in the Philippines.
In-N-Out Burger, Inc. (INOB), a U.S.-based
hamburger fast food chain, applied to register its
trademark IN-N-OUT Burger & Arrow Design and
service mark IN-N-OUT in the Philippines in June
1997. During the application, INOB discovered
that a local company, Sehwani, Inc., had already
registered IN-N-OUT in 1993 for restaurant

services, without INOBs permission. Sehwani had

appointed a licensee, Benitas Frites Inc., and is
connected to a restaurant in Pasig City that was
using INOBs trademarks. INOBs demands to
Sehwani were basically ignored.
As a result, INOB filed with the Philippines
Intellectual
Property
Office
(IPO)
an
administrative
complaint
against
Sehwani,
Benitas Frites, Inc. and the restaurant operator in
Pasig City for unfair competition and for
cancellation of the trademark registration, along
with a claim for damages.
In 2003, the Bureau of Legal Affairs (BLA) of the
IPO rendered its decision on the administrative
complaint. The BLA held, on the basis of the
evidence filed, that IN-N-OUT is an internationally
well-known mark and ordered that Sehwanis
prior registration of IN-N-OUT be cancelled. In
coming to its decision, the BLA also remarked
that INOB has legal capacity to sue in the
Philippines for IP violations. Sehwanis appeal to
the Director General of the IPO was filed too late
and accordingly dismissed on the technicality.
Sehwanis petition to the Court of Appeal was
also dismissed for lack of merit. Not giving up,
Sehwani took the matter further up to the
Supreme Court and argued strenuously that INOB
did not have legal capacity to sue in the
Philippines because it was not conducting
business in the Philippines and its marks were
neither registered nor used in the Philippines.
The Supreme Court was unmoved by Sehwanis
submissions. In ruling for INOB, the Supreme
Court noted that both the United States and the
Philippines
are
signatories
to
the
Paris
Convention. INOBs causes of action were
anchored in Articles 6bis and 8 of the Paris
Convention. In particular, the Supreme Court held
that competent authority for determining whether
a trademark is well known in the country where
protection is sought under Article 6bis is the
competent authority of the registration or use,
which in the Philippines is the IPO.

scope of protection afforded by Article 6bis by the

1999 Joint Resolution Concerning Provisions on
the Protection of Well-Known Marks. It was agreed
in the Joint Resolution between the World
Intellectual
Property
Organization
General
Assembly and the Paris Union to support a nonbinding recommendation that a well-known mark
should be protected in a country even if the mark
is neither registered nor used in that country.
The decision affirms the Philippines commitment
to protect the rights of owners of internationally
well-known marks.
(from subaylawco23.weebly.com)
The essential elements of an action for unfair
competition are (1) confusing similarity in the
general appearance of the goods and (2) intent to
deceive the public and defraud a competitor. The
confusing similarity may or may not result from
similarity in the marks, but may result from other
external factors in the packaging or presentation
of the goods. The intent to deceive and defraud
may be inferred from the similarity of the
appearance of the goods as offered for sale to the
public. Actual fraudulent intent need not be
shown.
With such finding, the award of damages in favor
of petitioner is but proper. This is in accordance
with Section 168.4 of the Intellectual Property
Code, which provides that the remedies under
Sections 156, 157 and 161 for infringement shall
apply mutatis mutandis to unfair competition.
The remedies provided under Section 156 include
the right to damages, to be computed in the
following manner:

Whether a trademark is well known is a factual

question and involves an appreciation of the
evidence adduced before the BLA. In the face of
the numerous trademark registrations of INOB
around the world and the comprehensive
advertisements presented at trial, the Supreme
Court held that the BLA correctly found that the
trademarks of INOB are internationally well
known.

Section 156.
Actions, and Damages and
Injunction for Infringement.--156.1 The owner of
a registered mark may recover damages from
any person who infringes his rights, and the
measure of the damages suffered shall be either
the reasonable profit which the complaining party
would have made, had the defendant not
infringed his rights, or the profit which the
defendant actually made out of the infringement,
or in the event such measure of damages cannot
be readily ascertained with reasonable certainty,
then the court may award as damages a
reasonable percentage based upon the amount of
gross sales of the defendant or the value of the
services in connection with which the mark or
trade name was used in the infringement of the
rights of the complaining party.

The Supreme Court went on to explain that the

fact that INOBs trademarks were neither
registered nor used in the Philippines is of no
consequence because of the expansion of the

45. G.R. Nos. 160054-55, July 21, 2004

MANOLO P. SAMSON, Petitioner, vs. HON.
REYNALDO B. DAWAY, Presiding Judge, RTC
of Quezon City, Branch 90, PEOPLE OF THE

PHILIPPINES
and
INC., Respondents.

CATERPILLAR,

Facts:
The
petitioner,
owner/proprietor
of
ITTI
Shoes/Mano Shoes Manufacturing Corporation,
allegedly sold or offers the sale of garment
product using the trademark Caterpillar to the
prejudice of Caterpillar, Inc., private respondent
in this case. The respondent filed the case with
the RTC. The petitioner questioned the jurisdiction
of the trial court over the offense charged
contending that the case should be filed with the
MTC because violation of unfair competition is
penalized with imprisonment not exceeding 6
years under RA 7691.
Issue:

Which court has jurisdiction over criminal and

civil cases for violation of intellectual property
rights?
Held:
The SC held that under Section 163 of the IPC,
actions for unfair competition shall be brought
before the proper courts with appropriate
jurisdiction under existing laws. The law
contemplated in Section 163 of IPC is RA 166
otherwise known as the Trademark Law. Section
27 of the Trademark Law provides that
jurisdiction over cases for infringement of
registered marks, unfair competition, false
designation of origin and false description or
representation, is lodged with the Court of First
Instance (now Regional Trial Court). Since RA
7691 is a general law and IPC in relation to
Trademark Law is a special law, the latter shall
prevail. Actions for unfair competition therefore
should be filed with the RTC.