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Taiwan KolinvsKolin Electronics

Case Digest GR 209843 March 25 2015

Facts: Taiwan Kolin Corp sought to register the trademark “KOLIN” in Class 9 on the following combination of goods:
television sets, cassette recorder, VCD Amplifiers, camcorders and other audio/video electronic equipment, flat iron,
vacuum cleaners, cordless handsets, videophones, facsimile machines, teleprinters, cellular phones and automatic goods
vending machine.

Kolin Electronics opposed the application on the ground that the trademark “KOLIN” is identical, if not confusingly
similar, with its registered trademark “KOLIN” which covers the following products under Class 9 of the Nice Classification
(NCL): automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down
transformer, and PA amplified AC-DC. Kolin Electronics argued that the products are not only closely-related because they
fall under the same classification, but also because they are inherently similar for being electronic products and are plugged
into electric sockets and perform a useful function.

Issue: W/N the products are closely-related

Ruling: No, the products are not related and the use of the trademark KOLIN on them would not likely cause confusion.
To confer exclusive use of a trademark, emphasis should be on the similarity or relatedness of the goods and/or services
involved and not on the arbitrary classification or general description of their properties or characteristics.

First, products classified under Class 9 can be further classified into five categories. Accordingly, the goods covered by the
competing marks between Taiwan Kolin and Kolin Electronics fall under different categories. Taiwan Kolin’s goods are
categorized as audio visual equipments, while Kolin Electronics’ goods fall under devices for controlling the distribution and
use of electricity. Thus, it is erroneous to assume that all electronic products are closely related and that the coverage of one
electronic product necessarily precludes the registration of a similar mark over another.

Second, the ordinarily intelligent buyer is not likely to be confused. The distinct visual and aural differences between the two
trademarks “KOLIN”, although appear to be minimal, are sufficient to distinguish between one brand or another. The
casual buyer is predisposed to be more cautious, discriminating, and would prefer to mull over his purchase because the
products involved are various kind of electronic products which are relatively luxury items and not considered affordable.
They are not ordinarily consumable items such as soy sauce, ketsup or soap which are of minimal cost. Hence, confusion is
less likely. ##

Victorio P. Diaz vs People of the Philippines and Levi Strauss [Phils.], Inc.
G.R. No. 180677 February 18, 2003

Facts: Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s. After receiving information that Diaz was
selling counterfeit LEVI’S 501 jeans in his tailoring shops in Almanza and Talon, Las Piñas City, Levi’s Philippines hired a
private investigation group to verify the information. Surveillance and the purchase of jeans from the tailoring shops of Diaz
established that the jeans bought from the tailoring shops of Diaz were counterfeit or imitations of LEVI’S 501. Armed with
search warrants, NBI agents searched the tailoring shops of Diaz and seized several fake LEVI’S 501 jeans from them.
Levi’s Philippines claimed that it did not authorize the making and selling of the seized jeans; that each of the jeans were
mere imitations of genuine LEVI’S 501 jeans by each of them bearing the registered trademarks, like the arcuate design, the
tab, and the leather patch; and that the seized jeans could be mistaken for original LEVI’S 501 jeans due to the placement of
the arcuate, tab, and two-horse leather patch. On his part, Diaz admitted being the owner of the shops searched, but he
denied any criminal liability. Diaz stated that he did not manufacture Levi’s jeans, and that he used the label “LS Jeans
Tailoring” in the jeans that he made and sold; that the label “LS Jeans Tailoring” was registered with the Intellectual
Property Office; that his shops received clothes for sewing or repair; that his shops offered made-to-order jeans, whose styles
or designs were done in accordance with instructions of the customers; that since the time his shops began operating in
1992, he had received no notice or warning regarding his operations; that the jeans he produced were easily recognizable
because the label “LS Jeans Tailoring,” and the names of the customers we re placed inside the pockets, and each of the
jeans had an “LSJT” red tab; that “LS” stood for “Latest Style;” and that the leather patch on his jeans had two buffaloes, not
two horses.

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Issue: Whether there exists a likelihood of confusion between the trademarks of Levi’s and Diaz.

Ruling: The Court held, through the application of the holistic test, that there was no likelihood of confusion between the
trademarks involved. Accordingly, the jeans trademarks of Levi’s Philippines and Diaz must be considered as a whole in
determining the likelihood of confusion between them. The maongpants or jeans made and sold by Levi’s Philippines,
which included LEVI’S 501, were very popular in the Philippines. The consuming public knew that the original LEVI’S 501
jeans were under a foreign brand and quite expensive. Such jeans could be purchased only in malls or boutiques as ready-
to-wear items, and were not available in tailoring shops like those of Diaz’s as well as not acquired on a “made -to- order”
basis. Under the circumstances, the consuming public could easily discern if the jeans were original or fake LEVI’S 501, or
were manufactured by other brands of jeans.

Diaz used the trademark “LS JEANS TAILORING” for the jeans he produced and sold in his tailoring shops. His
trademark was visually and aurally different from the trademark “LEVI STRAUSS & CO” appearing on the patch of
original jeans under the trademark LEVI’S 501. The word “LS” could not be confused as a derivative from “LEVI
STRAUSS” by virtue of the “LS” being connected to the word “TAILORING”, thereby openly suggesting that the jeans
bearing the trademark “LS JEANS TAILORING”came or were bought from the tailoring shops of Diaz, not from the malls
or boutiques selling original LEVI’S 501 jeans to the
consuming public.

The prosecution also alleged that the accused copied the “two horse design” of the petitioner-private complainant but the
evidence will show that there was no such design in the seized jeans. Instead, what is shown is “buffalo design.” Again, a
horse and a buffalo are two different animals which an ordinary customer can easily distinguish.

The prosecution further alleged that the red tab was copied by the accused. However, evidence will show that the red tab
used by the private complainant indicates the word “LEVI’S” while that of the accused indicates the letters “LSJT” which
means LS JEANS TAILORING. Again, even an ordinary customer can distinguish the word LEVI’S from the letters LSJT.

In terms of classes of customers and channels of trade, the jeans products of the private complainant and the accused cater
to different classes of customers and flow through the different channels of trade. The customers of the private complainant
are mall goers belonging to class A and B market group – while that of the accused are those who belong to class D and E
market who can only afford Php 300 for a pair of made-to-order pants.

Ecole De Cuisine Manille (Cordon Bleu of thePhilippines), Inc., vs. Renaud Cointreau &Cie and Le Cordon
Bleu Int'l., B.V.

Facts: Cointreau, a partnership registered under the laws of France, filed for a trademark application for the mark "LE
CORDON BLEU & DEVICE" pursuant to Section 37 of Republic Act No. 166. Petitioner Ecole filed an opposition to the
subject application, averring that it is the owner of the mark "LE CORDON BLEU, ECOLE DE CUISINE MANILLE,"
which it has been using since 1948 in cooking and other culinary activities, including in its restaurant business; and it has
earned immense and invaluable goodwill such that Cointreau’s use of the subject mark will actually create confusion,
mistake, and deception to the buying public as to the origin and sponsorship of the goods, and cause great and irreparable
injury and damage to Ecole’s business reputation and goodwill as a senior user of the same.

The Bureau of Legal Affairs (BLA) sustained Ecole’s opposition to the subject mark, necessarily resulting in the rejection of
Cointreau’s application. While noting the certificates of registration obtained from other countries and other pertinent
materials showing the use of the subject mark outside the Philippines, the BLA did not find such evidence sufficient to
establish Cointreau’s claim of prior use of the same in the Philippines. It emphasized that the adoption and use of trademark
must be in commerce in the Philippines and not abroad. Cointreau has not established any proprietary right entitled to
protection in the Philippine jurisdiction because the law on trademarks rests upon the doctrine of nationality or territoriality.

The IPO Director General reversed and set aside the BLA’s decision.. The CA affirmed and declared
Cointreau as the true and actual owner of the subject mark with a right to register the same in the Philippines under Section
37 of R.A. No. 166, having registered such mark in its country of origin on November 25, 1986

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Issue: Whether the CA was correct in upholding the IPO Director General’s ruling that Cointreau is the true and lawful
owner of the subject mark and thus, entitled to have the same registered under its name.

Ruling: Yes, the CA was correct. At the time Ecole started using the subject mark, the same was already being used by
Cointreau, albeit abroad, of which Ecole’s directress was fully aware, being an alumna of the latter’s culinary school in Paris,
France. Hence, Ecole cannot claim any tinge of ownership whatsoever over the subject mark as Cointreau is the true and
lawful owner thereof. As such, the IPO Director General and the CA were correct in declaring Cointreau as the true and
lawful owner of the subject mark and as such, is entitled to have the same registered under its name.

In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the Intellectual Property Code of
the Philippines, as amended, has already dispensed with the requirement of prior actual use at the time of registration. Thus,
there is more reason to allow the registration of the subject mark under the name of Cointreau as its true and lawful owner.

Great Whiteshark Enterprises, Inc. v Danilo M. Caralde, Jr.

G.R. No. 192294 . November 21, 2012

Facts: On July 31, 2002, Caralde filed before the Bureau of Legal Affairs (BLA), IPO a trademark application seeking to
register the mark "SHARK & LOGO" for his manufactured goods under Class 25, such as slippers, shoes and sandals.
Petitioner, a foreign corporation domiciled in Florida, USA, opposed the application claiming to be the owner of the mark
consisting of a representation of a shark in color. It alleged that the mark pending registration is confusingly similar with
theirs which is likely to confuse the public.

Caralde averred that the subject marks are distinctively different from one another and easily distinguishable.

The BLA Director ruled in favor of petitioners citing that the shark logo was both a dominant feature and are similar and
that both trademarks belong to the same class. The Director General of the IPO affirmed this decision. The CA, however,
reversed the decision citing that there were no confusing similarity.

Issue: Whether there is confusing similarity between the trademarks.

Ruling: No. A trademark device is susceptible to registration if it is crafted fancifully or arbitrarily and is capable of
identifying and distinguishing the goods of one manufacturer or seller from those of another. Apart from its commercial
utility, the benchmark of trademark registrability is distinctiveness. Thus, a generic figure, as that of a shark in this case, if
employed and designed in a distinctive manner, can be a registrable trademark device, subject to the provisions of the IP
Code.

Irrespective of the Holistic and Dominancy tests, the Court finds no confusing similarity between the subject marks. While
both marks use the shape of a shark, the Court noted distinct visual and aural differences between them.

As may be gleaned from the foregoing, the visual dissimilarities between the two (2) marks are evident and significant,
negating the possibility of confusion in the minds of the ordinary purchaser, especially considering the distinct aural
difference between the marks.

Finally, there being no confusing similarity between the subject marks, the matter of whether Great White Shark’s mark has
gained recognition and acquired becomes unnecessary.

Fredco Manufacturing Corporation v. President and Fellows of Harvard College

G.R. No. 185917, 1 June 2011

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Facts: Fredco Manufacturing Corporation (Fredco) filed before the Bureau of Legal Affairs of the Philippine Intellectual
Property Office a Petition for Cancellation of Registration No. 56561 issued to President and Fellows of Harvard College
(Harvard University) for the mark “Harvard Veritas Shield Symbol” under classes 16, 18, 21, 25 and 28.

Fredco claimed that Harvard University had no right to register the mark in class 25, since its Philippine registration was
based on a foreign registration. Thus, Harvard University could not have been considered as a prior adopter and user of the
mark in the Philippines.

Fredco explained that the mark was first used in the Philippines by its predecessor-in-interest New York Garments as early
as 1982, and a certificate of registration was issued in 1988 for goods under class 25. Although the registration was cancelled
for the non-filing of an affidavit of use, the fact remained that the registration preceded Harvard University’s use of the
subject mark in the Philippines.

Harvard University, on the other hand claimed that the name and mark “Harvard” was adopted in 1639 as the name of
Harvard College of Cambridge, Massachusetts, USA. The marks “Harvard” and “Harvard Veritas Shield Symbol,” had
been used in commerce since 1872, and was registered in more than 50 countries.

The Bureau of Legal Affairs ruled in favor of Fredco and ordered the cancellation of Registration No. 56561. It found
Fredco to be the prior user and adopter of the mark “Harvard” in the Philippines. On appeal, the Office of the Director
General of the Intellectual Property Office reversed the BLA ruling on the ground that more than the use of the trademark
in the Philippines, the applicant must be the owner of the mark sought to be registered. Fredco, not being the owner of the
mark, had no right to register it.

The Court Appeals affirmed the decision of the Office of the Director General. Fredco appealed the decision with the
Supreme Court. In its appeal, Fredco insisted that the date of actual use in the Philippines should prevail on the issue of
who had a better right to the mark.

Ruling: “The petition has no merit.

Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before a trademark can be registered, it must have
been actually used in commerce for not less than two months in the Philippines prior to the filing of an application for its
registration. While Harvard University had actual prior use of its marks abroad for a long time, it did not have actual prior
use in the Philippines of the mark "Harvard Veritas Shield Symbol" before its application for registration of the mark
"Harvard" with the then Philippine Patents Office. However, Harvard University's registration of the name "Harvard" is based
on home registration which is allowed under Section 37 of R.A. No. 166. As pointed out by Harvard University in its
Comment:

Although Section 2 of the Trademark law (R.A. 166) requires for the registration of trademark that the applicant thereof
must prove that the same has been actually in use in commerce or services for not less than two (2) months in the
Philippines before the application for registration is filed, where the trademark sought to be registered has already been
registered in a foreign country that is a member of the Paris Convention, the requirement of proof of use in the commerce
in the Philippines for the said period is not necessary. An applicant for registration based on home certificate of registration
need not even have used the mark or trade name in this country.”

“In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), "[m]arks registered under Republic Act No.
166 shall remain in force but shall be deemed to have been granted under this Act x xx," which does not require actual prior
use of the mark in the Philippines. Since the mark "Harvard Veritas Shield Symbol" is now deemed granted under R.A. No.
8293, any alleged defect arising from the absence of actual prior use in the Philippines has been cured by Section 239.2.”

The Supreme Court further ruled that Harvard University is entitled to protection in the Philippines of its trade name
“Harvard” even without registration of such trade name in the Philippines. It explained:

“There is no question then, and this Court so declares, that "Harvard" is a well-known 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

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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.”

Skechers, U.S.A. vs. Inter Pacific Industrial Trading Corporation, et.al.

[GR No. 164321, March 23, 2011]

Petitioner’s claim:Skechers, USA contend that respondents are guilty of trademark infringement of their registered
trademark “S” (within an oval design).

Respondents’ claim: they argued that there was no confusing similarity betweenpetitioner’s "Skechers" rubber shoes and its
"Strong" rubber shoes

Facts: Petitioner filed an application for the issuance of search warrants against an outlet and warehouse operated by
respondents for infringement of trademark underSection 155, in relation to Section 170 of Republic Act No. 8293, IP Code
of the Philippines. In the course of its business, petitioner has registered the trademark "SKECHERS" and the trademark "S"
(within an oval design) with the IPO. Two search warrants were issued and more than 6,000 pairs of shoes bearing the “S”
logo were seized. Respondents moved to quash the warrants arguing that there was no confusing similarity between
petitioner’s "Skechers" rubber shoes and its "Strong" rubber shoes. RTC granted the motion and quashed the search
warrants. Petitioner filed a petition for certiorari with the CA which affirmed the decision of the RTC. Thus, petitioner filed
the present petition with the SC assailing that the CA committed grave abuse of discretion when it considered matters of
defense in acriminal trial for trademark infringement in passing upon the validity of the search warrant when it should have
limited itself to a determination of whether the trial court committed grave abuse of discretion in quashing the warrants. And
that it committed grave abuse of discretion in finding that respondents are not guilty of trademark infringement in the case
where the sole triable issue is the existence of probable cause to issue a search warrant. Subsequently, petitioner-intervenor
filed a Petition-in-Intervention with the Court claiming to be the sole licensed distributor of Skechers products here in the
Philippines, but the same was dismissed. Both petitioner and petitioner-intervenor filed separate motions for reconsideration

Issue: Whether or not respondents are guilty of Infringement

Ruling: Yes. Applying the Dominancy Test, even if respondents did not use the oval design, the mere fact that it used the
same stylized "S" (same font and size of the lettering) the same being the dominant feature of petitioner's trademark
constitutes infringement. Applying the Holistic Test, the dissimilarities between the shoes are too trifling and frivolous that it
is indubitable that respondent's products will cause confusion and mistakes in the eyes of the public. Respondent's shoes
may not be an exact replica of the petitioner's shoes, but the features and overall design are so similar and alike that
confusion is higly likely. Registered trademark owner may use its mark on the same or similar products, in different
segments of the market, and at different price levels depending on variations of the products for specific segments of the
market. The purchasing public might be mistaken in thinking that petitioner had ventured into a lower market segment
which scenario is plausible especially since both petitioner and respondent manufacture rubber shoes.

Berris Agricultural Co., Inc v NorvyAbyadong

G.R. No. 183404. October 13, 2010

Facts:Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in connection with
Fungicide. Berris Agricultural Co., Inc. filed an opposition against the trademark citing that it is confusingly similar with their
trademark, "D-10 80 WP" which is also used for Fungicide also with the same active ingredient.

The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in favor of Abyadang.

Issue: Whether there is confusing similarity between the trademarks.

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Ruling: Yes. The SC found that both products have the component D-10 as their ingredient and that it is the dominant
feature in both their marks. Applying the Dominancy Test, Abyadang's product is similar to Berris' and that confusion may
likely to occur especially that both in the same type of goods. Also using the Holistic Test, it was more obvious that there is
likelihood of confusion in their packaging and color schemes of the marks. The SC states that buyers would think that
Abyadang's product is an upgrade of Berris'.

Dermaline, Inc. vs. Myra Pharmaceuticals, Inc.

G.R. No. 190065 August 16, 2010

Facts: Petitioner Dermaline filed before the Intellectual Property Office (IPO) an application for registrationof the
trademark “DERMALINE DERMALINE, INC.”Respondent Myra filed a Verified Oppositionalleging that the
trademark sought to be registered by Dermaline so resembles its trademark “DERMALIN” and will likely
cause confusion, mistake and deception to the purchasing public. It furtheralleged that Dermaline’s use and registration of
its applied trademark will diminish the distinctiveness anddilute the goodwill of Myra’s “DERMALIN,” which Myra has
been extensively commercially sinceOctober 31, 1977, and said mark is still valid and subsisting.

Myra contends that despite Dermaline’s attempt to differentiate its applied mark, the dominantfeature is the term
“DERMALINE,” which is practically identical with its own “DERMALIN,” moreparticularly that the first eight (8) letters of
the marks are identical, and that notwithstanding the additionalletter “E” by Dermaline, the pronunciation for both marks
are identical. Further, both marks have three(3) syllables each, with each syllable identical in sound and appearance, even if
the last syllable of“DERMALINE” consisted of four (4) letters while “DERMALIN” consisted only of three (3).
Myraasserted that the mark “DERMALINE DERMALINE, INC.” is aurally similar to its own mark such thatthe
registration and use of Dermaline’s applied mark will enable it to obtain benefit from Myra’sreputation, goodwill and
advertising and will lead the public into believing that Dermaline is, in any way,connected to Myra. Myra added that even if
the subject application was under Classification 44 forvarious skin treatments, it could still be connected to the
“DERMALIN” mark under Classification 5 forpharmaceutical products, since ultimately these goods are very closely
related. The IPO Bureau of LegalAffairs ruled in favor of respondent; said decision was sustained by the IPO Director
General and theCourt of Appeals.

Issue: Whether or not petitioner’s use of“DermalineDermalineInc”can result in confusion, mistake ordeception on the part
of the purchasing public

Ruling: Yes.

A trademark is any distinctive word, name, symbol, emblem, sign, or device, or anycombination thereof,
adopted and used by a manufacturer or merchant on his goods to identify and
distinguish them from those manufactured, sold, or dealt by others. As a registered trademark owner,
Myra has the right under Section 147 of R.A. No. 8293 to prevent third parties from using a trademark, orsimilar signs or
containers for goods or services, without its consent, identical or similar to its registeredtrademark, where such use would
result in a likelihood of confusion. In determining likelihood of confusion, case law has developed two (2) tests, the
DominancyTest and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the prevalentfeatures of
the competing trademarks that might cause confusion or deception. It is applied when thetrademark sought to be registered
contains the main, essential and dominant features of the earlierregistered trademark, and confusion or deception is likely to
result. Duplication or imitation is not evenrequired; neither is it necessary that the label of the applied mark for registration
should suggest an effortto imitate. The important issue is whether the use of the marks involved would likely cause confusion
ormistake in the mind of or deceive the ordinary purchaser, or one who is accustomed to buy, and thereforeto some extent
familiar with, the goods in question. Given greater consideration are the aural and visualimpressions created by the marks in
the public mind, giving little weight to factors like prices, quality,
sales outlets, and market segments. The test of dominancy is now explicitly incorporated into law in
Section 155.1 of R.A. No. 8293 which provides—155.1. Use in commerce any reproduction, counterfeit, copy, or colorable
imitationof a registered mark or the same container or a dominant feature thereof in connectionwith 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 inconnection with which such use is
likely to cause confusion, or to cause mistake, or todeceive; (emphasis supplied)

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On the other hand, the Holistic Test entails a consideration of the entirety of the marks asapplied to the products, including
labels and packaging, in determining confusing similarity. Thescrutinizing eye of the observer must focus not only on the
predominant words but also on the otherfeatures appearing in both labels so that a conclusion may be drawn as to whether
one is confusinglysimilar to the other.

Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2)types of confusion, viz:
(1) confusion of goods (product confusion), where the ordinarily prudentpurchaser 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 mightreasonably be assumed to
originate with the registrant of an earlier product, and the public would then bedeceived either into that belief or into the
belief that there is some connection between the two parties,though inexistent.

Both confusion of goods and service and confusion of business or of origin were apparent in bothtrademarks. While there
are no set rules that can be deduced as what constitutes a dominant feature withrespect to trademarks applied for
registration; usually, what are taken into account are signs, color, design,peculiar shape or name, or some special, easily
remembered earmarks of the brand that readily attractsand catches the attention of the ordinary consumer.

While it is true that the two marks are presented differently – Dermaline’s mark is written with thefirst “DERMALINE” in
script going diagonally upwards from left to right, with an upper case “D”followed by the rest of the letters in lower case, and
the portion “DERMALINE, INC.” is written in uppercase letters, below and smaller than the long-hand portion; while
Myra’s mark “DERMALIN” is writtenin an upright font, with a capital “D” and followed by lower case letters – the
likelihood of confusion isstill apparent. This is because they are almost spelled in the same way, except for Dermaline’s
markwhich ends with the letter “E,” and they are pronounced practically in the same manner in three (3)syllables, with the
ending letter “E” in Dermaline’s mark pronounced silently. Thus, when an ordinarypurchaser, for example, hears an
advertisement of Dermaline’s applied trademark over the radio, chancesare he will associate it with Myra’s registered mark.

Dermaline’s stance that its product belongs to a separate and different classification from Myra’sproducts 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.

Indeed, the registered trademark owner may use its mark on the same or similar products, indifferent segments of the
market, and at different price levels depending on variations of the products forspecific segments of the market. The Court
is cognizant that the registered trademark owner enjoysprotection in product and market areas that are the normal potential
expansion of his business.

Thus, the public may mistakenly think that Dermaline is connected to or associated with Myra,such that, considering the
current proliferation of health and beauty products in the market, the purchasers
would likely be misled that Myra has already expanded its business through Dermaline from merelycarrying pharmaceutical
topical applications for the skin to health and beauty services.

Verily, when one applies for the registration of a trademark or label which is almost the same orthat 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. This is intended not only to avoid confusion on the part of the public, butalso to protect an
alreadu used and registered trademark and an established goodwill.

Coffee Partners, Inc. vs. San Francisco Coffee and Roastery, Inc. G.R. No. 169504, March 3, 2010

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 1995

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under 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 petitioner’s trademark infringed on the respondent’s 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 petitioner’s
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
respondent’s trade name and petitioner’s 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 respondent’s trade name is not registered
therefore a suit for infringement is not available.

Issue: Whether or not the petitioner’s use of the trademark "SAN FRANCISCO COFFEE" constitutes infringement of
respondent’s trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.," even if the trade name is not registered with
the Intellectual Property Office (IPO).

Ruling: Registration of a trademark 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
either the dominancy test or the holistic test, petitioner’s "SAN FRANCISCO COFFEE" trademark is a clear infringement
of respondent’s "SAN FRANCISCO COFFEE & ROASTERY, INC." trade name. The descriptive words "SAN
FRANCISCO COFFEE" are precisely the dominant features of respondent’s 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.

Prosource International, Inc. v. Horphag Research Management Sa.

G.R. No. 180073. November 25, 2009

Facts: Respondent is a corporation and owner of trademark PYCNOGENOL, a food. Respondent later discovered that
petitioner was also distributing a similar food supplement using the mark PCO-GENOLS since 1996. This prompted
respondent to demand that petitioner cease and desist from using the aforesaid mark.

Respondent filed a Complaint for Infringement of Trademark with Prayer for Preliminary Injunction against petitioner, in
using the name PCO-GENOLS for being confusingly similar. Petitioner appealed otherwise.

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The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-GENOLS have the same suffix
"GENOL" which appears to be merely descriptive and thus open for trademark registration by combining it with other words
and concluded that the marks, when read, sound similar, and thus confusingly similar especially since they both refer to food
supplements.

On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court explained that under the
Dominancy or the Holistic Test, PCO-GENOLS is deceptively similar to PYCNOGENOL.

Issue: Whether the names are confusingly similar.

Ruling: Yes. There is confusing similarity and the petition is denied. Jurisprudence developed two test to prove such.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that 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.

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. Not only on the predominant words should be the focus 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 the other.

SC applied the Dominancy Test.Both the words 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
through combination with another word or phrase. When the two words are pronounced, the sound effects are confusingly
similar not to mention that they are both described 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.

Mcdonald’s Corp v MacjoyFastfood Corporation

GR 166115 Feb 2, 2007

Facts: Since 1987, MacJoy Devices had been operating in Cebu. MacJoy is a fast food restaurant which sells fried chicken,
chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks. In 1991, MacJoy filed its
application for trademark before the Intellectual Property Office (IPO). McDonald’s opposed the application as it alleged
that MacJoy closely resembles McDonald’s corporate logo 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 that
the use and adoption in bad faith of the “MacJoy and Device” mark would falsely tend to suggest a connection or affiliation
with McDonald’s restaurant services and food products, thus, constituting a fraud upon the general public and further cause
the dilution of the distinctiveness of McDonald’s registered and internationally recognized McDonald’S marks to its
prejudice and irreparable damage.

The IPO ruled in favor of McDonald’s. MacJoy appealed before the Court of Appeals and the latter ruled in favor of
MacJoy. The Court of Appeals, in ruling over the case, actually used the holistic test (which is a test commonly used in
infringement cases). The holistic test looks upon the visual comparisons between the two trademarks. In this case, the Court
of Appeals ruled that other than the letters “M” and “C” in the words MacJoy and McDonald’s, there are no real similarities
between the two trademarks. “MacJoy” is written in round script while “McDonald’s” is written in thin gothic. “MacJoy” is
accompanied by a picture of a (cartoonish) chicken while “McDonald’s” is accompanied by the arches “M”. The color
schemes between the two are also different. “MacJoy” is in deep pink while “McDonald’s” is in gold color.

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Issue: Whether or not MacJoy infringed upon the trademark of McDonald’s.

Ruling: Yes. The Supreme Court ruled that the proper test to be used is the dominancy test. The dominancy test not only
looks at the visual comparisons between two trademarks but also the aural impressions created by the marks in the public
mind as well as connotative comparisons, giving little weight to factors like prices, quality, sales outlets and market segments.
In the case at bar, the Supreme Court ruled that “McDonald’s” and “MacJoy” marks are confusingly similar with each other
such that an ordinary purchaser can conclude an association or relation between the marks. To begin with, 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 i.e. in an arch-like,
capitalized and stylized manner. For sure, it is the prefix “Mc,” an abbreviation of “Mac,” which visually and aurally catches
the attention of the consuming public. Verily, the word “MACJOY” attracts attention the same way as did “McDonalds,”
“MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the MCDONALD’S marks which all use the prefixes Mc
and/or Mac. Besides and most importantly, both trademarks are used in the sale of fastfood products.

Further, the owner of MacJoy provided little explanation why in all the available names for a restaurant he chose the prefix
“Mac” to be the dominant feature of the trademark. The prefix “Mac” and “Macjoy” has no relation or similarity whatsoever
to the name Scarlett Yu Carcel, which is the name of the niece of MacJoy’s president whom he said was the basis of the
trademark MacJoy. By reason of the MacJoy’s implausible and insufficient explanation as to how and why out of the many
choices of words it could have used for its trade-name and/or trademark, it chose the word “Macjoy,” the only logical
conclusion deducible therefrom is that the MacJoy would want to ride high on the established reputation and goodwill of the
McDonald’s marks, which, as applied to its restaurant business and food products, is undoubtedly beyond question.

McDonald's Corporation v. L.C. Big Mak Burger, Inc.

G.R. No. 143993, August 18, 2004.

Facts: Petitioner McDonald's Corporation ("McDonald's") is a US corporation that operates a global chain of fast-food
restaurants, with Petitioner McGeorge Food Industries ("McGeorge"), as the Philippine franchisee.

McDonald's owns the "Big Mac" mark for its "double-decker hamburger sandwich." with the US Trademark Registry on 16
October 1979.

Based on this Home Registration, McDonald's applied for the registration of the same mark in the Principal Register of the
then Philippine Bureau of Patents, Trademarks and Technology ("PBPTT") (now IPO). On 18 July 1985, the PBPTT
allowed registration of the "Big Mac."

Respondent L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food outlets and snack vans in Metro
Manila and nearby provinces. Respondent corporation's menu includes hamburger sandwiches and other food items.

On 21 October 1988, respondent corporation applied with the PBPTT for the registration of the "Big Mak" mark for its
hamburger sandwiches, which was opposed by McDonald's. McDonald's also informed LC Big Mak chairman of its
exclusive right to the "Big Mac" mark and requested him to desist from using the "Big Mac" mark or any similar mark.

Having received no reply, petitioners sued L.C. Big Mak Burger, Inc. and its directors before Makati RTC Branch 137
("RTC"), for trademark infringement and unfair competition.

RTC rendered a Decision finding respondent corporation liable for trademark infringement and unfair competition. CA
reversed RTC's decision on appeal.

Issue: W/N respondent corporation is liable for trademark infringement and unfair competition.
W/N Respondents committed Unfair Competition

Ruling 1st issue: Yes

Section 22 of Republic Act No. 166, as amended, defines trademark infringement as follows:

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Infringement, what constitutes. - Any person who [1] shall use, without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of any registered mark or trade-name 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 [2]
reproduce, counterfeit, copy, or colorably imitate any such mark or trade-name 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, shall be liable to a civil action by the registrant for any or all of
the remedies herein provided.

To establish trademark infringement, the following elements must be shown: (1) the validity of plaintiff's mark; (2) the
plaintiff's ownership of the mark; and (3) the use of the mark or its colorable imitation by the alleged infringer results in
"likelihood of confusion." Of these, it is the element of likelihood of confusion that is the gravamen of trademark
infringement.

1st element:

A mark is valid if it is distinctive and not merely generic and descriptive.

The "Big Mac" mark, which should be treated in its entirety and not dissected word for word, is neither generic nor
descriptive. Generic marks are commonly used as the name or description of a kind of goods, such as "Lite" for beer.
Descriptive marks, on the other hand, convey the characteristics, functions, qualities or ingredients of a product to one who
has never seen it or does not know it exists, such as "Arthriticare" for arthritis medication. On the contrary, "Big Mac" falls
under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the product it
represents. As such, it is highly distinctive and thus valid.

2nd element:

Petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark. Prior valid registrants of the said
mark had already assigned his rights to McDonald's.

3rd element:

Section 22 covers two types of confusion arising from the use of similar or colorable imitation marks, namely, confusion of
goods (confusion in which the ordinarily prudent purchaser would be induced to purchase one product in the belief that he
was purchasing the other) and confusion of business (though the goods of the parties are different, the defendant's product is
such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that
belief or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist).

There is confusion of goods in this case since respondents used the "Big Mak" mark on the same goods, i.e. hamburger
sandwiches, that petitioners' "Big Mac" mark is used.

There is also confusion of business due to Respondents' use of the "Big Mak" mark in the sale of hamburgers, the same
business that petitioners are engaged in, also results in confusion of business. The registered trademark owner may use his
mark on the same or similar products, in different segments of the market, and at different price levels depending on
variations of the products for specific segments of the market. The registered trademark owner enjoys protection in product
and market areas that are the normal potential expansion of his business.

Furthermore, In determining likelihood of confusion, the SC has relied on the dominancy test (similarity of the prevalent
features of the competing trademarks that might cause confusion) over the holistic test (consideration of the entirety of the
marks as applied to the products, including the labels and packaging).

Applying the dominancy test, Respondents' use of the "Big Mak" mark results in likelihood of confusion. Aurally the two
marks are the same, with the first word of both marks phonetically the same, and the second word of both marks also

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phonetically the same. Visually, the two marks have both two words and six letters, with the first word of both marks having
the same letters and the second word having the same first two letters.

Lastly, since Section 22 only requires the less stringent standard of "likelihood of confusion," Petitioners' failure to present
proof of actual confusion does not negate their claim of trademark infringement.

Ruling 2nd issue: Yes.

Section 29 ("Section 29")73 of RA 166 defines unfair competition, thus:

Any person who will employ deception or any other means contrary to good faith by which he shall pass off the goods
manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill,
or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to
an action therefor.

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.

In the case at bar, Respondents have applied on their plastic wrappers and bags almost the same words that petitioners use
on their styrofoam box. Further, Respondents' goods are hamburgers which are also the goods of petitioners. Moreover,
there is actually no notice to the public that the "Big Mak" hamburgers are products of "L.C. Big Mak Burger, Inc." This
clearly shows respondents' intent to deceive the public.

Societe Des Produits Nestle v CA

GR 112012, April 4, 2001

Facts: In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and Technology Transfers an application
for the registration of its trademark “Flavor Master” – an instant coffee. Nestle opposed the application as it alleged that
“Flavor Master” is confusingly similar to Nestle coffee products like Master Blend and Master Roast. Nestle alleged that in
promoting their products, the word Master has been used so frequently so much so that when one hears the word Master it
connotes to a Nestle product. They provided as examples the fact that they’ve been using Robert Jaworski and Ric Puno Jr.
as their commercial advertisers; and that in those commercials Jaworski is a master of basketball and that Puno is a master of
talk shows; that the brand of coffee equitable or fit to them is Master Blend and Master Roast. CFC Corporation on the
other hand alleged that the word “Master” is a generic and a descriptive term, hence not subject to trademark. The Director
of Patents ruled in favor of Nestle but the Court of Appeals, using the Holistic Test, reversed the said decision.

Issue: Whether or not the Court of Appeals is correct.

Ruling: No. The proper test that should have been used is the Dominancy Test. The application of the totality or holistic
test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or
dissimilarities, considering that the product is an inexpensive and common household item. The use of the word Master by
Nestle in its products and commercials has made Nestle acquire a connotation that if it’s a Master product it is a Nestle
product. As such, the use by CFC of the term “MASTER” in the trademark for its coffee product FLAVOR MASTER is
likely to cause confusion or mistake or even to deceive the ordinary purchasers.

In addition, the word “MASTER” is neither a generic nor a descriptive term. As such, said term can not be invalidated as a
trademark and, therefore, may be legally protected.

Generic terms are those which constitute “the common descriptive name of an article or substance,” or comprise the “genus
of which the particular product is a species,” or are “commonly used as the name or description of a kind of goods,” or
“imply reference to every member of a genus and the exclusion of individuating characters,” or “refer to the basic nature of
the wares or services provided rather than to the more idiosyncratic characteristics of a particular product,” and are not
legally protectable.

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On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in its normal and natural
sense, it “forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it
and does not know what it is,” or “if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of
the goods,” or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to
exercise powers of perception or imagination.

Rather, the term “MASTER” is a suggestive term brought about by the advertising scheme of Nestle. Suggestive terms are
those which, in the phraseology of one court, require “imagination, thought and perception to reach a conclusion as to the
nature of the goods.” Such terms, “which subtly connote something about the product,” are eligible for protection in the
absence of secondary meaning. While suggestive marks are capable of shedding “some light” upon certain characteristics of
the goods or services in dispute, they nevertheless involve “an element of incongruity,” “figurativeness,” or ” imaginative
effort on the part of the observer.”

Emerald Garment Manufacturing Corp. v CA, Bureau of Patents, trademarks and technology transfer and HD Lee
Company, Inc
GR 100098, Dec. 29, 1995

Facts: On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau of Patents, Trademarks &
Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 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.

Private respondent averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as previously
registered and used in the Philippines cause confusion, mistake and deception on the part of the purchasing public as to the
origin of the goods.

On 19 July 1988, the Director of Patents rendered a decision granting private respondent's petition for cancellation and
opposition to registration. The Director of Patents, using the test of dominancy, declared that petitioner's trademark was
confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads
him to conclude that the goods originated from the same manufacturer. It is undeniably the dominant feature of the mark.

Issue: Whether or not a trademark causes confusion and is likely to deceive the public is a question of fact which is to be
resolved by applying the "test of dominancy", meaning, if the competing trademark contains the main or essential or
dominant features of another by reason of which confusion and deception are likely to result.

Ruling: The word "LEE" is the most prominent and distinctive feature of the appellant's trademark and all of the appellee's
"LEE" trademarks. It is the mark which draws the attention of the buyer and leads him to conclude that the goods originated
from the same manufacturer. The alleged difference is too insubstantial to be noticeable. The likelihood of confusion is
further made more probable by the fact that both parties are engaged in the same line of business.

Although the Court decided in favor of the respondent, the appellee has sufficiently established its right to prior use and
registration of the trademark "LEE" in the Philippines and is thus entitled to protection from any infringement upon the
same. The dissenting opinion of Justice Padilla is more acceptable.

Asia Brewery, Inc v CA and San Miguel Corp.

GR 103543, July 5, 1993

Facts: San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and
unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product which has been competing
with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market.

The trial court dismissed SMC's complaint because ABI "has not committed trademark infringement or unfair competition
against" SMC

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On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial court, finding the defendant Asia
Brewery Incorporated GUILTY of infringement of trademark and unfair competition. ABI then filed a petition for
certiorari.

Issue: Are the words PALE PILSEN as part of ABI’s trademark constitute infringement of SMC’s trademark?

Ruling:No. The Supreme Court said it does not constitute an infringement as the words PALE PILSEN, which are part of
ABI’s trademark, are generic words descriptive of the color (“pale“), of a type of beer (“pilsen”), which is a light bohemian
beer with a strong hops flavor that originated in the City of Pilsen, Czechislovakia and became famous in the Middle Ages.

The Supreme Court further said that the words "pale pilsen" may not be appropriated by SMC for its exclusive use even if
they are part of its registered trademark. No one may appropriate generic or descriptive words. They belong to the public
domain.

Petitioner ABI has neither infringed SMC's trademark nor committed unfair competition with the latter's SAN MIGUEL
PALE PILSEN product.

Fruit of the Loom v. CA

G.R. No. L-32747, Nov. 29, 1984

Facts: P, a corporation duly organized and existing under the laws of US, is the registrant of a trademark, FRUIT OF THE
LOOM, for classes of merchandise including men’s, women’s and children’s underwear, which includes women’s panties
and which fall under class 40 classification of goods and knitted, netted and textile fabrics.

R, a domestic corporation is the registrant of a trademark FRUIT FOR EVE for merchandises covering garments similar to
P’s products like women’s panties and pajamas.

P filed before the RTC a complaint for TMI/UC against R alleging that the latter’s trademark FRUIT FOR EVE is
confusingly similar to its trademark FRUIT OF THE LOOM used also on women’s panties and other textile products, and
that the color get-up and general appearance of R’s hang tag consisting of a big red apple is a colorable imitation to the hang
tag of P.

RTC rendered a decision in favor of P, but both parties appealed to the CA. CA reversed the decision of the RTC. P’s MR
was denied.

Issue: Whether or not R’s trademark FRUIT FOR EVE and its hang tag are confusingly similar to P’s trademark FRUIT
OF THE LOOM and its hang tag so as to constitute an infringement of the latter’s trademark rights and justify the
cancellation of the former.

Ruling: Petitioner asseverates in the third and fourth assignment of errors, which, as We have said, constitute the main
argument, that the dominant features of both trademarks is the word FRUIT. 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
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.

In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone similar word is FRUIT. WE agree with the
respondent court that by mere pronouncing the two marks, it could hardly be said that it will provoke a confusion, as to
mistake one for the other. Standing by itself, FRUIT OF THE LOOM is wholly different from FRUIT FOR EVE. WE do
not agree with petitioner that the dominant feature of both trademarks is the word FRUIT for even in the printing of the
trademark in both hang tags, the word FRUIT is not at all made dominant over the other words.

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The similarities of the competing trademarks in this case are completely lost in the substantial differences in the design and
general appearance of their respective hang tags. WE have examined the two trademarks as they appear in the hang tags
submitted by the parties and We are impressed more by the dissimilarities than by the similarities appearing therein. WE
hold that the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE do not resemble each other as to confuse or
deceive an ordinary purchaser. The ordinary purchaser must be thought of as having, and credited with, at least a
modicum of intelligence to be able to see the obvious differences between the two trademarks in question.
Furthermore, We believe that a person who buys petitioner’s products and starts to have a liking for it, will not
get confused and reach out for private respondent’s products when she goes to a garment store.

WHEREFORE, THE DECISION APPEALED FROM IS AFFIRMED.

Amigo Manufacturing Inc. v CluettPeaobody Inc.

GR 139300. March 14 2001

Facts: The source of the controversy that precipitated the filing by Cluett Peabody Co., Inc. (a New York corporation) of the
present case against Amigo Manufacturing Inc. (a Philippine corporation) for cancellation of trademark is Cluett‟s claim of
exclusive ownership (as successor in interest of Great American Knitting Mills, Inc.) of the following trademark and devices,
as used on men‟s socks:

 GOLD TOE, under Certificate of Registration No. 6797 dated September 22, 1958;
 DEVICE, representation of a sock and magnifying glass on the toe of a sock, under Certificate of Registration No.
13465 dated January 25, 1968;
 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‟ under
 Certificate of Registration No. 13887 dated May 9, 1968; and
 LINENIZED, under Certificate of Registration No. 15440 dated April 13, 1970.

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 Patent office ruled in favor of Cluett because of idem sonans and the existence of a confusing similarity in appearance
between two trademarks.

The Court of Appeals upheld the ruling of the patent office by stating the ff:
 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 and that it can not be
allowed to be registered because it runs counter to the Section 4 of Republic Act 166.
 Amigo‟s mark is only registered with the Supplemental Registry which gives no right of exclusivity to the owner and
cannot overturn the presumption of validity and exclusivity given to a registered mark.
 the Philippines and the United States are parties to the Paris Convention. The object of the Convention is to accord
a national of a member nation extensive protection against infringement and other types of unfair competition.

Issue: 1. Who among the parties had first actual use over the trademark?
2. Are confusing similarities on the trademark and device of the parties?
3. Does the Paris Convention apply in the given case?

Ruling: The petition of Amigo has no merit.

1st Issue - The respondent were able to present with the 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 registration of these marks in favor of respondent constitutes prima facie evidence, which petitioner

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failed to overturn satisfactorily, of respondent‟s ownership of those marks, the dates of appropriation and the validity of
other pertinent facts stated therein which is specifically mandated by Section 20 of Republic Act 166.

Furthermore, petitioner registered its trademark only with the supplemental register. It is already settled that registration with
the supplemental register gives no presumption of ownership of the trademark.

2nd Issue - The Bureau of Patents, did not rely on the idemsonans test alone in arriving at its conclusion. 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.

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 is it necessary that the infringing label
should suggest an effort to imitate. The question at issue in cases of infringement of trademarks is whether the use of
the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers.

The holistic test mandates that the entirety of the marks in question must be considered in determining
confusing similarity.

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.” Both tests apply.

An examination of the products would show the following similarities:

 Dominant features are gold checkered lines against a predominantly black background
 Both has a representation of a sock with a magnifying glass.
 both products usethe 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.
 The names of the brands are similar “Gold Top” and “Gold Toe.”
 that petitioner and respondent are engaged in the same line of business.

3rd Issue - Cluett registered its trademarks under the principal register, which means that the requirement of prior use had
already been fulfilled. 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.

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.

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