BERRIS AGRICULTURAL CO v ABYADANG

Facts:
Norvy Adyabang, proprietor of NS Northern Organic Fertilizer, filed with the IPO a trademark
application for the mark NS D-10 PLUS for use in connection with Fungicide (Class 5) with
active ingredient 80% Mancozeb. Berris Agricultural Co. filed a Verified Notice of Opposition
against the mark for being similar and/or confusingly similar to its D-10 80 WP also used for
Fungicide (Class 5) with active ingredient 80% Mancozeb. The IPO Bureau of Legal Affairs
denied the mark application by Adyabang. Adyabang filed an appeal with the Office of the
Director General, Intellectual Property of the Philippines (IPPDG) but the same was denied. The
CA, in a petition for review, reversed the decision of the IPPDG on the ground that NS D-10
PLUS is not confusingly similar to D-10 80 WP, that Berris Agricultural failed to establish
ownership of D-10 80 WP, and Berris Agriculturals trademark registration may be cancelled.

Issue:
Whether or not Berris Agriculturalacquired ownership of the mark

Held:
Yes. The ownership of a trademark is acquired by its registration and its actual use by the
manufacturer or distributor of the goods made available to the purchasing public. Section
122 of R.A. No. 8293 provides that the rights in a mark shall be acquired by means of its valid
registration with the IPO. A certificate of registration of a mark, once issued, constitutes prima
facie evidence of the validity of the registration, of the registrants ownership of the mark, and
of the registrants exclusive right to use the same in connection with the goods or services and
those that are related thereto specified in the certificate. R.A. No. 8293, however, requires the
applicant for registration or the registrant to file a declaration of actual use (DAU) of the mark,
with evidence to that effect, within three (3) years from the filing of the application for
registration; otherwise, the application shall be refused or the mark shall be removed from the
register. In other words, the prima facie presumption brought about by the registration of a
mark may be challenged and overcome, in an appropriate action, by proof of the nullity of the
registration or of non-use of the mark, except when excused. Moreover, the presumption may
likewise be defeated by evidence of prior use by another person, i.e., it will controvert a claim
of legal appropriation or of ownership based on registration by a subsequent user. This is
because a trademark is a creation of use and belongs to one who first used it in trade or
commerce.
In this case, Berris was able to prove that it was using D-10 80 WP prior to its filing for
registration, as shown by the DAU presented in court. Therefore, there is prima facie
presumption that Berris has ownership of the mark and Adyabang has the burden of proving
otherwise. Adyabang failed to prove the same thus, Berris ownership of the mark stands.

SHANGRI-LA INTERNATIONAL v DEVELOPERS GROUP

Facts:
Respondent Development Group of Companies Inc (DGCI) claims ownership of the Shangri-La
mark and s logo in the Philippines on the strength of its prior use within the country. DGCI
filed with an application for registration of the trademark and logo and was given a certificate
of registration on May 31, 1983. Since then, DGCI has been using the mark and logo in its
restaurant.

Petitioners Kuok Group owns and operates a chain of hotels. As far back as 1962, petitioners
adopted the name Shangri-La as part of the corporate names of all companies and used
Shangri-La in all Shangri-La Hotels and hotel-related establishments. Since 1975, the Shangri-
La and S logo have been used by all Shangri-La hotels and companies in their paraphernalia
and has caused the registration of the mark and logo in the IPO.

Petitioners filed a petition praying for the cancellation of the registration of the mark and logo
issued to the respondents on the ground that the same were illegally obtained for the latters
restaurant business. Respondents filed a complaint for infringement with RTC against
petitioners claiming that DGCI has for the last 8 years been the prior exclusive user in the
Philippines of the mark and logo.

Issue
WON prior actual use is required for registration of mark

Held:
Yes. Under the former trademark law, RA 166, which was in effect up to Dec 31, 1997, hence
the law in force at the time DGCIs application for registration of trademark, the root of
ownership of the trademark is the actual use in commerce. Before a trademark can be
registered, it must have been actually used in commerce and service for not less than 2 months
in the Philippines prior to the filing of an application for its registration.

Registration does not confer upon the registrant an absolute right to the registered mark. The
certificate of registration is merely a prima facie proof that the registrant is the owner of the
registered mark or trade name. Evidence of prior and continuous use of the mark or trade
name by another can overcome the presumptive ownership of the registrant and may very well
entitle the former to be declared owner in an appropriate case.

ECOLE DE CUISINE MANILLE v LE CORDON BLEU

Facts:
Cointreau, a partnership registered under the law of France, filed with the Bureau of Patents,
Trademarks, and Technology Transfer a trademark application for Le Cordon Bleu & Device
for goods under several classes of the International Classification of Goods and Services for
Purposes of Registration of Marks. The application was filed pursuant to RA 166, the former IP
law. Ecole De Cuisine Manille filed an opposition to the application claiming that the mark Le
Cordon Bleu was used by Ecole since 1948 in cooking and other culinary activities. Cointreau
claimed that it is the true and lawful owner of the mark. It claimed that the mark was used by
them as a culinary school of worldwide acclaim. The directress of Ecole, Lourdes Dayrit has, in
fact, studied there. The Bureau of Legal Affairs denied the application of Cointreau on the
ground that despite being used in other countries, there was no evidence of prior use of
Cointreaus claim. The IPO Director General reversed the decision and considered the fact that
Cointreau has been using the mark since 1895 as an established culinary school while the
directress failed to show how she came about with the mark. The CA affirmed the ruling of the
IPO Director.

Issue:
Whether or not Cointreau was the true and lawful owner of the mark

Held:
Yes. Cointreau is the true and lawful owner of the mark. RA 166 provides that the owner must
have used the mark in commerce in the Philippines for 2 months prior to the application of
registration. It also provides that the mark must not have been used by another. It does not
require that the actual use of the trademark is the Philippines. Furthermore, the Philippines and
France are both signatories of the Paris Convention for the Protection of Industrial Property.
The Paris convention provides protection in all countries of the Union without the obligation of
filing or registration. The Philippines is obligated to assure nationals of the signatory-countries
the effective protection against IP rights in the same way as other countries provide protection
for the Philippines. Considering that Cointreau has been using the mark since 1985, prior to
Ecoles use of the same mark in 1948, Cointreau is the true and lawful owner of the mark.
Dayrit is also aware of the use of the mark by Cointreau as she was trained in the same culinary
school. Ecole has no certificate or registration over the mark but only a pending application
which was filed later than Cointreau.

It must be noted that RA 8293 has already dispensed of the prior actual use requirement at the
time of registration.

MATAL, INTERIM DIRECTOR v TAM

Facts:
Respondent Simon Tam is the lead singer of the band The Slants. He sought the registration
of The Slants mark but the Patent and Trademark Office denied its application in accordance
with Disparagement Clause finding that there is a substantial composite of persons which find
the mark The Slants offensive. Tam contested the denial of registration claiming that only
natural and juristic persons not non juristic entities such as racial and ethnic groups are
subject to the Disparagement Clause.

Issue:
WON the mark may be registered

Held:
No. the Disparagement Clause prohibits registration of a trademark which may disparage
persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt,
or disgrace. When deciding whether a trademark is disparaging, the Two-Part Test is applied.
The first considers the likely meaning of the matter taking into account not only the dictionary
definitions but also the relationship of the matter to the other elements in the mark, the nature
of the foods or services, and the manner in which the mark is used in the marketplace in
connection with the goods or services. If the meaning of the mark is found to refer to
identifiable persons, the examiner moves to the second step.

The second test asks whether that meaning of the mark may be disparaging to a substantial
composite of the referenced group. If the examiner finds that a substantial, although not
necessarily a majority of the preferenced group would find the proposed mark to be
disparaging in the context of contemporary attitudes, a prima facie case of disparagement is
made out, and the burden shifts to the applicant to prove that the trademark s disparaging.

The disparagement clause applies to marks that disparage not just persons but also institutions
and belief, to members of any group whose members share particular beliefs such as political,
ideological and religious groups.

ABERCROMBIE & FITCH v HUNTING WORLD

Facts:
Abercrombie & Fitch is a business engaged in men and women garments. For many years, A&F
has used the mark Safari on articles exclusively offered and sold by it. Hunting World is engaged
in the retail marketing of sporting apparel which used the term Safari and other expressions
which included the word Safari. A&F filed an infringement suit against Hunting World for the
use of the mark Safari. Hunting World claimed that the word safari is an ordinary, common,
descriptive, geographic, and generic word and should not be a subject of exclusive
appropriation as a trademark.

Issue:
Whether or not A&F has exclusive right over the mark Safari

Held:
No. A&Fs trademark of Safari is does not cover the entire use of the word. The Lanham Act
identified 4 different categories of terms with respect to trademark: generic, descriptive,
suggestive, and arbitrary or fanciful. A generic term is one that refers, or has come to be
understood as referring, to the genus of which the particular product is a species. At common
law, neither those terms which were generic nor those which were merely descriptive could
become valid trademarks. The Act provides that a registered mark may be cancelled any time if
it becomes the common descriptive name of an article or substance. A descriptive term is one
which cannot be registered as a mark when applied to the goods except in cases provided by
the Act. It immediately conveys an idea of the ingredients, qualities or characteristics of the
goods. Proof of secondary use is needed for such term to be registered. A suggestive mark is
one which is neither exactly descriptive on the one hand nor truly fanciful on the other. it is
suggestive when it requires imagination, thought and perception to reach a conclusion as to the
nature of the goods and no longer requires a proof of secondary meaning. A fanciful or
arbitrary term is one which may be registered and enjoys all the rights accorded to a suggestive
mark without the need of debate whether such term is merely descriptive. It should be noted
that a word may fall on one category in respect to one trade and fall on another with respect to
a different trade.

The term Safari means a journey or adventure into the African wilderness. In this context, it is
a generic term incapable of trademark registration. As regards specific types of clothing, safari
has become a generic term in relation to contemporary American fashion apparel and sale of
clothing. However, Safari in terms of boots have not acquired generic meaning. There is no
evidence showing the same. A&F has a valid trademark for boots. However, Hunting World has
used the term Safari as merely descriptive of the material used in the boots. It is covered under
fair use of the term.

ZATARAINS v OAK GROVE

Facts:
Zatarains is a manufacturer and distributor of coating or batter mixes including Fish Fri and
Chick Fri. It has used Fish Fri since 1950 and registered it as a trademark since 1962 while
Chick Fri was registered only as a trademark only in 1976. Oak Grove Smokehouse, in 1979,
began marketing a fish fry and chicken fry batter with a different packaging but the packets
were with the words Fish Fri and Chick Fri.

Zatarains filed a complaint for trademark infringement and unfair competition against Oak
Grove. The court ruled that the term Fish Fri as a descriptive term identifying a function of
the product being sold and that such has acquired secondary meaning therefore was entitled to
trademark protection but concluded that Oak Grove was entitled for fair use of the term Fish
Fri to describe characteristics of their goods. With respect to Chick Fri, it was a descriptive
term but has not acquired a secondary meaning in the minds of consumers therefore, the claim
for infringement of its trademark failed and the court ordered that the trademark registration
of Chick Fri should be cancelled.

Issue:
(1) WON Fish Fri and Chick Fri is registrable
(2) WON there is trademark infringement

Held:
(1)Potential trademarks are divided into 4 categories.
First, generic term, is the name of a particular genus or class of which an individual article or
service is a member. It connotes the basic nature of articles or services and can never attain
trademark protection. If at any time a registered trademark becomes generic as to a particular
product or service, the marks registration is subject to cancellation.

Second, descriptive term identifies a characteristic or quality of an article or service such as

color, odor, function, dimensions or ingredients. Ordinarily, it is not protectable as trademarks
but by acquiring a secondary meaning in the minds of the consuming public, it may be
registrable.

Third, suggestive term suggests, rather than describes, some particular characteristic of the
goods or services to which it applies and requires the consumer to exercise the imagination in
order to draw conclusion as tot eh nature of the goods and services. It is protectable without
the necessity for proof of secondary meaning.

Fourth, arbitrary or fanciful term bears no relationship to the products or services to which
they are applied. They are protectable without proof of secondary meaning.

The tests or standards used in classifying a mark as descriptive, first, is its dictionary definition
of the word which indicates the ordinary significance and meaning of the word to the public.
Second is the Imagination Test that seeks to mesure the relationship between the actual
words of the mark and the product to which they are applied. If the term requires imagination
and perception to reach a conclusion as to the nature of goods it is a suggestive term but if
standing alone it conveys information as to the characteristics of the product, it is descriptive.
Third, is whether competitors would be likely to need the terms used in the trademark in
describing their products. A descriptive term generally relates so closely and directly to a
product or service that other merchants marketing similar goods would find the term useful in
identifying their own goods. Fourth test, examines the extent to which a term actually has been
used by others marketing a similar service or product. This test is closely related to the question
whether competitors are likely to find a mark useful in describing their products.

In the case of Fish Fri, is it a descriptive term which has acquired a secondary meaning which
has been proven by Zatarains from the amount and manner of advertising Fish Fri and also
from surveys conducted by its expert witness. It is therefore, registrable. In the case of Chick
Fri, it is also a descriptive term but such has not acquired secondary meaning therefore, it is
not registrable.

(2)There is no trademark infringement in both fish fri and chick fri. In Fish Fri although the
term has acquired secondary meaning and has become registrable, Zatarains cannot prevent
the fair use of the term. The fair use defense applies only to descriptive terms and requires that
the term be used fairly and in good faith only to describe to users the goods or services of such
party, of their geographic origin. Zatarains has no legal claim to an exclusive right in the
original, descriptive sense of the term therefore, Oak Grove is istill free to use the words Fish
Fry in their ordinary, descriptive sense, so long as such use will not tend to confuse customers
as to the source of the goods.

SHANG PROPERTIES REALTY CORP v ST. FRANCIS DEVELOPMENT CORP

Facts:
St. Francis Devt Corp. (SFDC), is a domestic corporation engaged in real estate business and the
developer of St. Francis Square Commercial Center, built in 1992 located at Ortigas Center.
SFDC sued Shang Properties for unfair competition, false or fraudulent declaration, and
damagers. Shang Properties used the names The St. Francis Towers and The St. Francis Shangri-
La Place in its own real estate development properties and applied for trademark registration of
the same to which SFDC opposed. The BLA ruled that Shang Properties committed acts of unfair
competition when it used SFDCs mark in St. Francis Towers but ruled that there is no unfair
competition as regards St. Francis Shangri-La Place. It also denied the application for The St.
Francis Towers trademark but allowed the use of The St. Francis Shangri-La Place because of
the addition of the word Shangri-La as its composite mark distinguishing it from SFDC. Both
parties appealed but did not appeal the ruling on the St. Francis Shangri-La case. On appeal to
the IPO Director General, it affirmed the ruling of the BLA stating that the use of the term St.
Francis is a geographically descriptive mark as the properties were located in St. Francis Avenue
and St. Francis Street (now known as Bank Drive), Ortigas Center. SFDC elevated the case to the
CA as regards only to the unfair competition ruling. The ruling on the St. Francis Towers lapsed
into finality. The CA ruled that Shang Properties was guilty of unfair competition for both the St.
Francis Towers and St. Francis Shangri-La Place and ordered it to cease and desist from using St.
Francis as a mark. It ruled based on the exclusive and continuous use of the mark St. Francis for
more than a decade, and hence, gained substantial goodwill and reputation. The CA further
ruled that assuming St. Francis was indeed a geographically descriptive mark, the same is
protected under the Doctrine of Secondary Meaning.

Issue:
Whether or not Shang Properties is guilty of unfair competition

Held:
No. The Court ruled that Shang Properties was not guilty of unfair competition. The CA is
incorrect in concluding that SFDC has exclusive use of the mark St. Francis. The SC ruled that the
term St. Francis is a geographically descriptive term relating to the location of the properties in
Ortigas Center. A geographically descriptive term can indicate any geographic location on earth,
such as continents, nations, regions, states, cities, streets, addresses, areas of cities, rivers, and
any other location referred to by a recognized name. The question in determining whether or
not a term is geographically descriptive is whether the mark is the name of the place or region
from which the goods actually come. If yes, then it is a geographic term probably used in a
descriptive sense. For a term to acquire secondary meaning, it must be established that the
descriptive mark no longer causes the public to associate the goods with a particular place, but
associates the goods with a particular source. The more a geographical area is obscure and
remote, it becomes less likely that the public shall have a goods/place association and the mark
may not be deemed as geographically descriptive.

Sec. 123.2 of the IP Code provides that in order to conclude that a geographically descriptive
mark has acquired secondary meaning, it must meet the following requirements: a) the
secondary meaning must have arisen as a result of substantial commercial use ofa mark in the
Philippines b) such use must result in the distinctiveness of the mark insofar as the goods or the
products are concerned, and c) proof of substantially exclusive and continuous commercial use
in the Philippines for 5 years before the date on which the claim of distinctiveness is made.
Furthermore, the IP Code provides that for unfair competition to exist, there must be intent to
deceive the public. In this case, there was no intention on the part of Shang Properties to
deceive the public that the properties were owned by SFDC.

E.Y INDUSTRIAL SALES INC v SHENDAR ELECTRICITY AND MACHINERY CO

Facts:
EY Industrial is a domestic corporation engaged in the production, distribution and sale of air
compressors. Shen Dar is a Taiwan-based corporation engaged in the manufacture of
compressors. From 19997 2004, EY Industrial imported air compressors from Shen Dar. Shen
Dar registered the mark Vespa for air compressors in 1997 while EY Industrial registered
Vespa in 1999.

Issue:
Who is entitled to the trademark Vespa

Held:
EY Industrial. Based on the evidence, EY owns the vespa trademark as it has prior use over it
as indicated by various sales invoices. Ownership of a mark o trade name may be acquired not
necessarily by registration but by adoption and use un trade or commerce. As between actual
use of a mark without registration, and registration of the mark without actual use, the former
prevails over the latter.

Under Sec 123.1, the registration of a mark is prevented with the filing of an earlier application
for registration.

This must not, however, be interpreted to mean that ownership should be based upon an
earlier filing date. While the Intellectual Property Code removed the previous requirement of
proof of actual use prior to the filing of an application for registration of a mark, proof of prior
and continuous use is necessary to establish ownership of a mark. Such ownership constitutes
sufficient evidence to oppose the registration of a mark.