Table 1

Trademark/Trdadename Related Goods confusing TEST Ratio

(YES or NO) similarity/
Infringement/
unfair
Competition/
Violation of
Trademark/
Trademark
dilusion/legal
capacity to sue
(YES or NO)
Masso Hermanos Cosmopolite Canned fish Trademark is The word "Cosmopolite" does not give the name, quality or description of the canned fish for which it
v. Director of non-registrable. is used. It does not even describe the place of origin, for it does not indicate the country or place
Patents G.R. No. where the canned fish was manufactured. It is a very general term which does not give the kind or
L-3952 December quality of the goods. For example, a dealer in shoes cannot register a trademark "Leather Shoes"
29, 1953 because that would be descriptive and it would be right to use the same words with reference to
their merchandise.
Acoje Mining Co. LOTUS vs LOTUS NO, but Both in No There is quite difference between soy sauce and edible oil. If one is in the market for the former, he
vs. Director of class 47. Soy is not likely to purchase the latter just because of the trademark LOTUS.
Patents G.R. No. Sauce vs edible oil
L-28744 April 29,
1971 (supra)
Sterling Products BAYER and BAYER No, Bayer and No, Bayer limited only to medicines registered in PH .The BAYER trademarks registered in the
Intl. vs. CROSS IN CIRCLE and Bayer in Cross Philippines to which plaintiff SPI may lay claim, as correctly stated in the decision below, are those
Farbenfabriken BAYER CROSS IN pertains to which cover medicines only. For, it was on said goods that the BAYER trademarks were actually
Bayer CIRCLE medicine and the used by it in the Philippines. Therefore, the certificates of registration for medicines issued by the
Aktiengesellschaft Bayer in Cross Director of Patents upon which the protection is enjoyed are only for medicines. Nothing in those
refer to steel drums certificates recited would include chemical or insecticides.

Luft Co., Inc. vs. Tangee vs Tango No, hair pomade vs No the word "Tango" has a well established meaning, for it describes a particular dance that is well
Ngo Guan G.R. No. chemicals for known in the Philippines. In fact, respondent's label includes the picture of a man and a woman
L-21915 December pharmaceutical dancing. Again, "Tango" is used by Ngo Guan for no other product than hair pomade, in which
17, 1966 preparations petitioner does not deal
Phil. Refining Co. Camia and Camia No, ham and lard, No The particular goods of the parties are so unrelated that consumers would not in any probability
vs. Ng Sam (G.R. oil mistake one as the source or origin of the product of the other. "Ham" is not a daily food fare for the
No. L-26676 July average consumer. One purchasing ham would exercise a more cautious inspection of what he buys
30, 1982) on account of it price.

It is evident that "CAMIA" as a trademark is far from being distinctive. By itself, it does not Identify
petitioner as the manufacturer or producer of the goods upon which said mark is used, as contra-
distinguished to trademarks derived from coined words such as "Rolex", "Kodak" or "Kotex".

The trademark "CAMIA" is used by petitioner on a wide range of products: lard, butter, cooking oil,
abrasive detergents, polishing materials and soap of all kinds. Respondent desires to use the same
on his product, ham. While ham and some of the products of petitioner are classified under Class 47
(Foods and Ingredients of Food), this alone cannot serve as the decisive factor in the resolution of
whether or not they are related goods. Emphasis should be on the similarity of the products involved
and not on the arbitrary classification or general description of their properties or characteristics.

1
Hickock HICKOK vs HICKOK NO. leather wallets, NO. Holistic test The mere fact that one person has adopted and used a trademark on his goods does not prevent
Manufacturing vs. key cases, money the adoption and use of the same trademark by others on unrelated articles of a different kind."
CA G.R. No. folds made of
L-44707 August 31, leather, belts,
1982 men's briefs,
neckties,
handkerchiefs and
men's socks vs.
shoes
Ang vs. Wellington Wellington Company vs. NO. Manufacturer No While there is similarity between the trademark or tradename "Wellington Company" and that of
(G.R. No. L-4531 Wellington Department of clothes vs. "Wellington Department Store," no confusion or deception can possibly result or arise from such
January 10, 1953) Store Department store similarity because the latter is a "department store," while the former does not purport to be so. The
name "Wellington" is admittedly the name of the trademark on the shirts, pants, drawers, and other
articles of wear for men, women and children, whereas the name used by the defendant indicates
not these manufactured articles or any similar merchandise, but a department store. Neither can the
public be said to be deceived into the belief that the goods being sold in defendants's store originate
from the plaintiffs, because the evidence shows that defendant's store sells no shirts or wear bearing
the trademark "Wellington," but other trademarks.
Esso Standard “ESSO" vs ESSO No. Petroleum No.
Eastern Inc. vs. CA products vs The goods are obviously different from each other with "absolutely no iota of similitude". They are so
G.R. No. L-29971 cigarettes foreign to each other as to make it unlikely that purchasers would think that petitioner is the
August 31, 1982 manufacturer of respondent's goods. The mere fact that one person has adopted and used a
trademark on his goods does not prevent the adoption and use of the same trademark by others on
unrelated articles of a different kind.
Canon Kabushiki CANON vs CANON NO. sandals vs. NO. There is no automatic protection afforded an entity whose tradename is alleged to have been
Kaisha vs. CA G.R. paints, chemical infringed through the use of that name as a trademark by a local entity. Article 6bis of the Treaty of
No. 120900. July products, toner and Paris provides for conditions for foreign entity to claim for protection. These conditions are: 1.) the
20, 2000 (supra) dye stuff. mark must be internationally known; 2.) the subject of the right must be a trademark, not a patent or
copyright or anything else; 3.) the mark must be for use in the same or similar kinds of goods; and
4.) the person claiming must be the owner of the mark. CKK failed to comply with the third
requirement of the said memorandum. CKK is using the mark “CANON” for products belonging to
class 2 (paints, chemical products) while NSR is using the same mark for sandals (class 25).
Faberge Inc. vs. BRUTE vs BRUT, Brut33 NO. underwear NO. The certificate of registration issued confers the exclusive right to use its own symbol only to those
IAC (G.R. No. & Device (briefs) products vs goods specified by the first user in the certificate, subject to any conditions or limitations stated
71189 November 4, aftershave, therein. Moreover, the two products are so dissimilar that a purchaser of one (a brief) would not be
1992) deodorant, cream misled or mistaken into buying the other (such as an aftershave).
shave, hairspray
and hair shampoo/
soaps
Asia Brewery Inc. SAN MIGUEL PALE Yes, both BEER No Dominancy "Pilsen" is a "primarily geographically descriptive word", hence, non-registerable and not
vs. CA G.R. No. PILSEN vs BEER PALE appropriable by any beer manufacturer. Moreover, buyers generally order their beer by brand in the
103543 July 5, 1993 PILSEN or BEER NA supermarket, sari-sari stores, restaurants; thus dismissing the idea that Beer na Beer can be passed
(supra) BEER off as San Miguel Beer. There can be no confusion or the likelihood of deception among the
consumers.
Emerald Garment Stylistic Mr. Lee vs Lee Yes, clothing No Holistic First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not
Mfg. vs. CA G.R. your ordinary household items like catsup, soysauce or soap which are of minimal cost. Maong
No. 100098 pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious
December 29, 1995 and discriminating in and would prefer to mull over his purchase.
(supra)

2
East Pacific Vernbena vs Lupel Yes, cosmetic No Words or phrases which have been in common use and which indicate the character, kind, quality
Merchandising Verbena products and composition of the thing, may not be appropriated by any one to his exclusive use. In the
Corp. Vs. Director exclusive use of them the law will not protect.
of Patents, G.R.
No. L-14377, Dec.
29, 1960
Mead Johnson & Alaska and Alacta Yes, milk No Holistic It is true that between petitioner's trademark "ALACTA" and respondent's "ALASKA" there are
Co., vs. NW Van similarities in spelling, appearance and sound for both are composed of six letters of three syllables
Dorf Ltd. G.R. No. each and each syllable has the same vowel, but in determining if they are confusingly similar a
L-17501 April 27, comparison of said words is not the only determinant factor. The trademarks in their entirety as they
1963 appear in the respective labels must also be considered in relation to the goods to which they are
attached. The discerning eye of the observer must focus not only on the predominant words but also
on the other features appearing in both labels in order that he may draw his conclusion whether one
is confusingly similar to the other. Having this view in mind, we believe that while there are
similarities in the two marks there are also differences or dissimilarities which are glaring and striking
to the eye as the former
Lyceum of the Lyceum vs all schools Yes, schools No True enough, the corporate names of private respondent entities all carry the word "Lyceum" but
Philippines, Inc. with Lyceum confusion and deception are effectively precluded by the appending of geographic names to the
vs. Court of word "Lyceum." Thus, we do not believe that the "Lyceum of Aparri" can be mistaken by the general
Appeals, G.R. No. public for the Lyceum of the Philippines, or that the "Lyceum of Camalaniugan" would be confused
101897 with the Lyceum of the Philippines.
Coffee Partners, San Francisco Coffee and Yes, selling coffees No A trade name need not be registered with the IPO before an infringement suit may be filed by its
Inc. vs. San San Francisco Coffee & owner against the owner of an infringing trademark. All that is required is that the trade name is
Francisco Coffee Roastery Inc. previously used in trade or commerce in the Philippines.
and Roastery, Inc.,
G.R. No. 169504, THE DESCRIPTIVE WORDS SAN FRANCISCO COFFEE ARE PRECISELY THE DOMINANT
March 3, 2010 FEATURES OF RESPONDENTS TRADE NAME. PETITIONER AND RESPONDENT ARE
ENGAGED IN THE SAME BUSINESS OF SELLING COFFEE, WHETHER WHOLESALE OR
RETAIL. THE LIKELIHOOD OF CONFUSION IS HIGHER IN CASES WHERE THE BUSINESS OF
ONE CORPORATION IS THE SAME OR SUBSTANTIALLY THE SAME AS THAT OF ANOTHER
CORPORATION.
Bata Industrial Ltd. BATA vs BATA Yes, shoes No Any slight goodwill generated by the Czechoslovakian product during the Commonwealth years was
vs. CA G.R. No. completely abandoned and lost in the more than 35 years.
L-53672 May 31,
1982 Opposer-appellant was never a user of the trademark BATA either before or after the war, that the
appellant is not the successor-in-interest of Gerbec and Hrdina who were not is representatives or
agents

The appellant has no Philippine goodwill that would be damaged by the registration of the mark in
the appellee's favor.
Fruit of the Loom Fruit for Eve vs Fruit of Yes, No In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone similar word is FRUIT. WE
vs. CA G.R. No. the Loom undergarments agree with the respondent court that by mere pronouncing the two marks, it could hardly be said that
L-32747 November it will provoke a confusion, as to mistake one for the other. Standing by itself, FRUIT OF THE LOOM
29, 1984 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.

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.

3
Gabriel vs. Perez "WONDER" Yes. Beauty soap No. No CY Gabriel as exclusive distributor does not acquire any proprietary interest in the principal's
G.R. No. L-24075 infringement, trademark.
January 31, 1974 trademark is The fact that the agreement provides that the petitioner "has the exclusive right of ownership of the
registrable by the packages and that said party is responsible for the costs as well as the design and manner of
owner. packing the same" did not necessarily grant her the right to the exclusive use of the trademark;
because the agreement never mentioned transfer of ownership of the trademark. It merely
empowers the petitioner as exclusive distributor to own the package and to create a design at her
pleasure, but not the right to appropriate unto herself the sole ownership of the trademark so as to
entitle her to registration in the Patent Office.
Bristol Myers v. BIOFERIN vs. BUFFERIN YES. Both are from No Holistic The product of the applicant is expressly stated as dispensable only upon doctor's prescription, while
Director of Patents the same class - that of oppositor does not require the same. The chances of being confused into purchasing one for
17 SCRA 128 Medicines and the other are therefore all the more rendered negligible.
Pharmaceutical
Preparation
Etepha vs. Director ATUSSIN vs. Yes. Both are used No. it is "the common practice in the drug and pharmaceutical industries to 'fabricate' marks by using
of Patents G.R. No. PERTUSSIN in treatment for syllables or words suggestive of the ailments for which they are intended and adding thereto
L-20635 March 31, coughs (cough distinctive prefixes or suffixes. the "tussin" (in Pertussin and Atussin) was derived from the Latin root-
1966 syrup). word "tussis" meaning cough.
"Tussin" is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of the
goods; it is open for appropriation by anyone. While "tussin" by itself cannot thus be used exclusively
to identify one's goods, it may properly become the subject of a trademark "by combination with
another word or phrase.
Philip Morris Inc. MARK VII and “MARK 10” Yes. Cigarettes. No (infringement) Registration of a trademark unaccompanied by actual use thereof
vs. Fortune , YES (legal in the country accords the registrant only the standing to sue for
Tobacco Corp. capacity to sue) infringement in Philippine courts. Entitlement to protection of such
G.R. No. 91332 trademark in the country is entirely a different matter. For, petitioners are still foreign corporations. As
July 16, 1993 such, they ought, as a condition to availment of
the rights and privileges vis-à-vis their trademarks in this country,
to show proof that, on top of Philippine registration, their country
grants substantially similar rights and privileges to Filipino citizens
and actual use of the marks and/or
emblems in local commerce and trade before they may be registered and ownership thereof
acquired, the petitioners cannot, therefore, dispense with the element of actual use.
Shangri-la Intl. "Shangri-La" mark and YES. International NOT A BAR TO Despite the institution of an Inter Partes case for cancellation of a mark with the BPTTT (now the
Hotel Management "S" device/logo hotels vs. SUBSEQUENT Bureau of Legal Affairs, Intellectual Property Office) by one party, the adverse party can file a
vs. CA, G.R. No. restaurant business ACTION subsequent action for infringement with the regular courts of justice in connection with the same
111580, June 21, registered mark. The earlier institution of an Inter Partes case by the Shangri-La Group for the
2001 cancellation of the "Shangri-La" mark and "S" device/logo with the BPTTT cannot effectively bar the
subsequent filing of an infringement case by registrant Developers Group.
Levi Strauss vs Dockers and Design Yes. Jeans Not trademark Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish
Clinton Apparelle, trademark vs Paddocks dilution. goods or services. To be eligible for protection from dilution, there has to be a finding that: (1) the
Inc., G.R. No. trademark sought to be protected is famous and distinctive; (2) the use by another began after the
138900, Sept. 20, petitioners mark became famous; and (3) such subsequent use defames petitioners mark.
2005
In the case at bar, petitioners have yet to establish whether Dockers and Design has acquired a
strong degree of distinctiveness and whether the other two elements are present for their cause to
fall within the ambit of the invoked protection. The Trends MBL Survey Report which petitioners
presented in a bid to establish that there was confusing similarity between two marks is not sufficient
proof of any dilution that the trial court must enjoin.
Ong Ai Gui vs. 20th Century Nylon Shirts Yes. Textile; No Although a word may be descriptive and not subject to exclusive use as a trademark, it may properly
Director of Patents, Factory vs. "Nylon" and manufacturer of become the subject of a trademark by combination with another word or term which is
G.R. No. G.R. No. "Shirts Factory" shirts nondescriptive, although no exclusive right to then descriptive word or term id created.
L-6235, March 28,
1955

4
Unno vs. General "All Montana" Yes. Wheat flour No. Registration does not perfect a trademark right. Prior use by one will controvert a claim of legal
Milling G.R. No. appropriation, by subsequent users.
L-28554 February
28, 1983 The right to register trademark is based on ownership. When the applicant is not the owner of the
trademark being applied for, he has no right to apply for the registration of the same. Only the owner
of a trademark, trade name or service mark may apply for its registration and an importer, broker or
distributor acquires no rights to the trademark of the goods he is dealing with in the absence of a
valid transfer or assignment of the trade mark. Unno Commercial Enterprises, Inc. merely acted as
exclusive distributor of All Montana wheat flour in the Philippines.
Fredco Harvard Yes, harvard shirt YES To be protected under the two directives of the Ministry of Trade, an internationally well-known mark
Manufacturing vs harvard Jeans need not be registered or used in the Philippines. All that is required is that the mark is well-known
Corp. vs. President internationally and in the Philippines for identical or similar goods, whether or not the mark is
and Fellows of registered or used in the Philippines.
Harvard College,
G.R. No. 185917,
June 1, 2011
Arce Sons and Co., SELECTA NO. bakery YES. The word "SELECTA", it is true, may be an ordinary or common word in the sense that it may be
vs. Selects products vs. milk used or employed by any one in promoting his business or enterprise, but once adopted or coined in
Biscuits G.R. No. and ice cream connection with one's business as an emblem, sign or device to characterize its products, or as a
L-14761 January products badge of authenticity, it may acquire a secondary meaning as to be exclusively associated with its
28, 1961 products and business. In this sense, its use by another may lead to confusion in trade and cause
damage to its business. By the long and exclusive use of said phrase with reference to his products
and business, it has acquired a proprietary connotation.
246 Company v. Rolex watch vs. Rolex NO. Watch vs. Yes A junior user of a well-known mark on goods or services which are not similar to the goods or
Daway G.R. No. Music Lounge KTV Bar services, and are therefore unrelated, to those specified in the certificate of registration of the well-
157216. November known mark is precluded from using the same on the entirely unrelated goods or services, subject to
20, 2003 the following requisites, to wit: 1.The mark is well-known internationally and in the Philippines.; 2.
The use of the well-known mark on the entirely unrelated goods or services would indicate a
connection between such unrelated goods or services and those goods or services specified in the
certificate of registration in the well known mark. This requirement refers to the likelihood of
confusion of origin or business or some business connection or relationship between the registrant
and the user of the mark.; 3.The interests of the owner of the well-known mark are likely to be
damaged.
Del Monte vs CA Sunshine catsup logo Yes, Catsup YES. Unfair We must consider the mark as a whole and not as dissected. If the buyer is deceived, it is
G.R. No. L-78325 confusingly similar to Del competition. attributable to the marks as a totality, not usually to any part of it. The court therefore should be
January 25, 1990 Monte’s guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the value
(supra) of which may be dissipated as soon as the court assumes to analyze carefully the respective
features of the mark. A confusing similarity will justify the intervention of equity. The judge must also
be aware of the fact that usually a defendant in cases of infringement does not normally copy but
makes only colorable changes. Well has it been said that the most successful form of copying is to
employ enough points of similarity to confuse the public with enough points of difference to confuse
the courts. The Sunshine label is a colorable imitation of the Del Monte trademark. The predominant
colors used in the Del Monte label are green and red-orange, the same with Sunshine. The word
“catsup” in both bottles is printed in white and the style of the print/letter is the same. Although the
logo of Sunshine is not a tomato, the figure nevertheless approximates that of a tomato.

5
Puma PUMA PRODUCTS and Yes both for socks Yes Petitioner maintains that it has substantially complied with the requirements of Section 21-A of
Sportsshenfabrike PUMA and DEVICE and belts Republic Act R.A. No. 166. Its complaint specifically alleged that it is not doing business in the
n vs. IAC G.R. No. Philippines and is suing under the said Repulbic Act; that Section 21-A thereof provides that "the
75067 February 26, country of which the said corporation or juristic person is a citizen, or in which it is domiciled, by
1988 treaty, convention or law, grants a similar privilege to corporate or juristic persons of the Philippines"
but does not mandatorily require that such reciprocity between the Federal Republic of Germany
and the Philippines be pleaded; that such reciprocity arrangement is embodied in and supplied by
the Union Convention for the Protection of Industrial Property Paris Convention) to which both the
Philippines and Federal Republic of Germany are signatories and that since the Paris 'Convention is
a treaty which, pursuant to our Constitution, forms part of the law of the land, our courts are bound to
take judicial notice of such treaty, and, consequently, this fact need not be averred in the complaint.
Chuanchow Soy & Carp Brand Soy vs Yes, both soy YES When, as in the present case, one applies for the registration of a trademark or label which is almost
Canning Co. vs. Bangos Brand; both with sauce the same or very closely resembles one already used and registered by another, the application
Director of Patents Carp fish resemble should be rejected and dismissed outright, even without any opposition on the part of the owner and
G.R. No. L-13947 user of a previously registered label or trademark, this not only to avoid confusion on the part of the
June 30, 1960 public, but also to protect an already used and registered trademark and an established goodwill.
McDonalds Corp. Big Mak Yes, burger Yes Dominancy Clearly, respondents have adopted in "Big Mak" not only the dominant but also almost all the
vs. LC Big Mak features of "Big Mac." Applied to the same food product of hamburgers, the two marks will likely
G.R. No. 143993 result in confusion in the public mind.
August 18, 2004
In-N-Out Burger, In-N-Out Yes, burger YES The essential elements of an action for unfair competition are (1) confusing similarity in the general
Inc. vs. Sehwani appearance of the goods and (2) intent to deceive the public and defraud a competitor. The
Incorporated and/ confusing similarity may or may not result from similarity in the marks, but may result from other
or Benita’s Fries external factors in the packaging or presentation of the goods. The intent to deceive and defraud
Inc., G.R. No. may be inferred from the similarity of the appearance of the goods as offered for sale to the public.
179127, Dec. 24, Actual fraudulent intent need not be shown.
2008
La Chemise Lacoste, Chemise Yes, clothing and Yes The records show that the goodwill and reputation of the petitioner's products bearing the trademark
Lacoste vs. Lacoste, Crocodile Device sportswear LACOSTE date back even before 1964 when LACOSTE clothing apparels were first marketed in the
Fernandez G.R. No. and Chemise Lacoste & Philippines. To allow Hemandas to continue using the trademark Lacoste for the simple reason that
L-63796-97 May 2, Crocodile Device he was the first registrant in the Supplemental Register of a trademark used in international
1984 commerce and not belonging to him is to render nugatory the very essence of the law on trademarks
and tradenames.
Societe des MASTER ROAST and Yes, Coffee Yes Dominancy It must be emphasized that the products bearing the trademarks in question are inexpensive and
Produits vs. CA MASTER BLEND vs common household items bought off the shelf by undiscerningly rash purchasers. As such, if the
G.R. No. 112012 FLAVOR MASTER ordinary purchaser is undiscerningly rash, then he would not have the time nor the inclination to
April 4, 2001 make a keen and perceptive examination of the physical discrepancies in the trademarks of the
(supra) products in order to exercise his choice.
Prosource Intl. Inc. PYCNOGENOL vs PCO- Yes, Food YES Dominancy When the two words are pronounced, the sound effects are confusingly similar not to mention that
vs. Horphag GENOLS supplements they are both described by their manufacturers as a food supplement and thus, identified as such by
Research their public consumers. And although there were dissimilarities in the trademark due to the type of
Management SA letters used as well as the size, color and design employed on their individual packages/bottles, still
G.R. No. 180073 the close relationship of the competing products’ name in sounds as they were pronounced, clearly
November 25, 2009 indicates that purchasers could be misled into believing that they are the same and/or originates
from a common source and manufacturer.

6
American Wire DURAFLEX and Yes, Insulated Yes Dominancy The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not
Cable Co. vs. DYNAFLEX flexible wires only are the initial letters and the last half of the appellations identical, but the difference exists only
Director of Patents in two out of the eight literal elements of the designations. Coupled with the fact that both marks
G.R. No. L-26557 cover insulated flexible wires under class 20; that both products are contained in boxes of the same
February 18, 1970 material, color, shape and size; that the dominant elements of the front designs are a red circle and
a diagonal zigzag commonly related to a spark or flash of electricity; that the back of both boxes
show similar circles of broken lines with arrows at the center pointing outward, with the identical
legend "Cut Out Ring" "Draw From Inside Circle", no difficulty is experienced in reaching the
conclusion that there is a deceptive similarity that would lead the purchaser to confuse one product
with the other.
Phil. Nut Industry PHILIPPINE PLANTERS Yes, Peanuts YES Dominancy As a whole it is the word PLANTERS which draws the attention of the buyer and leads him to
vs. Standard, G.R. CORDIAL PEANUTS vs conclude that the salted peanuts contained in the two cans originate from one and the same
No. L-23055, July PLANTERS COCKTAIL manufacturer. In fact, when a housewife sends her housemaid to the market to buy canned salted
31, 1975 PEANUTS peanuts, she will describe the brand she wants by using the word PLANTERS and not "Cordial" nor
"Cocktail."
Ang vs Teodoro 74 "Ang Tibay" Yes. Ang's products Yes. Even If “Ang Tibay” was not capable of exclusive appropriation as a trade-mark, the application of
Phil. 50 (1942) are pants and the doctrine of secondary meaning could nevertheless be fully sustained because, in any event, by
shirts, while respondent’s long and exclusive use of said phrase with reference to his products and his business,
Teodoro's are it has acquired proprietary connotation.
slippers, shoes,
and indoor
baseballs.
General Garments Puritan trademark vs Yes. Assorted Yes Foreign corporations not licensed to do business in the Phil. Can file cancellation of trademark. The
vs. Director of Puritan tradename of men's wear. right to the use of the corporate or trade name is a property right, a right in rem, which it may assert
Patents 41 SCRA foreign corp. and protect in any of the courts of the world — even in jurisdictions where it does not transact
50 (1971) business — just the same as it may protect its tangible property, real or personal against trespass or
conversion.
Conrad and "Sunshine" Yes. Biscuits and YES An action for injunction with damages may proceed notwithstanding the pendency of an
Company Inc. vs. cookies administrative case for the cancellation of a trademark.
CA, G.R. No.
115115, 1995 An application for administrative cancellation of a registered trademark on any of the grounds
enumerated in Section 17 of R.A. No. 166 or the Trade-Mark Law, as amended, falls under the
exclusive jurisdiction of BPTTT. But, for infringement or unfair competition, as well as the remedy of
injunction and relief for damages, it is explicitly and unquestionably within the competence and
jurisdiction of ordinary courts.

An application with BPTTT for an administrative cancellation of a registered trade mark cannot per
se have the effect of restraining or preventing the courts from the exercise of their lawfully conferred
jurisdiction. A contrary rule would unduly expand the doctrine of primary jurisdiction which, simply
expressed, would merely behoove regular courts, in controversies involving specialized disputes, to
defer to the findings of resolutions of administrative tribunals on certain technical matters.

7
Mirpuri vs. CA G.R. "Barbizon" Yes. Brassieres YES The Paris Convention is a multilateral treaty that seeks to protect industrial property consisting of
No. 114508. and ladies patents, utility models, industrial designs, trademarks, service marks, trade names and indications of
November 19, 1999 undergarments vs. source or appellations of origin, and at the same time aims to repress unfair competition. It is
wearing apparel: essentially a compact among various countries which, as members of the Union, have pledged to
robes, pajamas, accord to citizens of the other member countries trademark and other rights comparable to those
lingerie, accorded their own citizens by their domestic laws for an effective protection against unfair
nightgowns and competition. Both the Philippines and the United States of America are signatories to the
slips Convention.

Article 6bis is a self-executing provision and does not require legislative enactment to give it effect in
the member country. It may be applied directly by the tribunals and officials of each member country
by the mere publication or proclamation of the Convention, after its ratification according to the
public law of each state and the order for its execution.

The essential requirement under Article 6bis is that the trademark to be protected must be "well-
known" in the country where protection is sought. The power to determine whether a trademark is
well-known lies in the "competent authority of the country of registration or use." This competent
authority would be either the registering authority if it has the power to decide this, or the courts of
the country in question if the issue comes before a court.
Operators Inc. vs. AMBISCO vs. NABISCO YES. candy YES. dominancy The ordinary customer does not Scrutinize the details of the label; he forgets or overlooks these, but
Director of Patents products vs. bakery test retains a general impression, or a central figure, or a dominant characteristic. We do not really hear
G.R. No. L-17901, goods, such as all that is spoken in our hearing. Far from all we see or hear casually is retained sufficiently clearly or
Oct. 29, 1965 biscuits, crackers, in sufficient detail for us to get a lasting impression of it which we can remember when we encounter
cakes and wafers. the mark again. The importance of this rule is emphasized by the increase of radio advertising in
which we are deprived of the help of our eyes and must depend entirely on the ear. Duplication or
exact imitation is not necessary; nor is it necessary that the infringing label should suggest an effort
to imitate.
Rueda Hermanos Fabrica de Chocolates de Yes. Chocolates. Yes. Unfair In so far as the finding of actual intent to imitate the plaintiff's product is concerned, it must be
vs. Paglinawan 'La Marina' vs. La Patria competition. remembered that this "may be inferred from similarity in the appearance of the goods as packed or
G.R. No. L-10738 de Fabrica de Chocolates offered for sale to those of the complaining party." In United States vs. Gow Chiong, (23 Phil. Rep.,
January 14, 1916 138) we said: The intention to deceive may be inferred from the similarity of the goods as packed
and offered for sale, and an action will lie to restrain such unfair competition, and for damages. In
Alhambra Cigar, etc., Co. vs. Mojica (27 Phil. Rep., 266) we said: Even if the resemblance is
accidental and not intentional, plaintiff is entitled to protection against its injurious results to his trade.
Philips Export vs. PHILIPS trademark vs Yes. Electric lamps YES The right to the exclusive use of a corporate name with freedom from infringement by similarity is
CA 206 SCRA 457 Standard PHILIPS determined by priority of adoption. In this regard, there is no doubt with respect to Petitioners' prior
(1992) adoption of' the name ''PHILIPS" as part of its corporate name. Philips Electrical and Philips
Corp tradename Industrial were incorporated on 1956, while Standard Philips was issued a Certificate of Registration
on 1982, twenty-six (26) years later. PEBV has also used the trademark "PHILIPS" on electrical
lamps of all types and their accessories. While the corporate names are not identical, a reading of
Petitioner's corporate names, to wit: PHILIPS EXPORT B.V., PHILIPS ELECTRICAL LAMPS, INC.
and PHILIPS INDUSTRIAL DEVELOPMENT, INC., inevitably leads one to conclude that "PHILIPS"
is, indeed, the dominant word in that all the companies affiliated or associated with the principal
corporation, PEBV, are known in the Philippines and abroad as the PHILIPS Group of Companies.
Leviton Industries Leviton Manufacturing Yes. Electrical Yes Foreign corporations not licensed to do business in the Phil. Can file cancellation of trademark.and
vs. Salvador 114 Co. vs. Leviton Industries wiring vs. Electrical has the right to seek redress for unfair competition before Philippine courts.
SCRA 420 (1982) Co. ballasts

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Lim Hoa vs. two midget roosters in an Yes. food YES. dominancy We do not hesitate to say and to hold that there is such similarity between the two brands as to
Director of Patents attitude of combat with seasoning product cause confusion in the mind of the public that buys the food seasoning product on the strength and
G.R. No. L-8072. the word “Bantam” vs. on the indication of the trademark or brand identifying or distinguishing the same. In the sale of a
October 31, 1956 pictorial representation of food seasoning product, a kitchen article of everyday consumption, said product is generally
a hen with the words “Hen purchased by cooks and household help, sometimes illiterate who are guided by pictorial
Brand” and “Marca representations and the sound of the word descriptive of said representation. The two roosters
Manok” appearing in the trademark of the applicant and the hen appearing on the trademark of the
Oppositor, although of different sexes, belong to the same family of chicken, known as manok in all
the principal dialects of the Philippines, and when a cook or a household help or even a housewife
buys a food seasoning product for the kitchen the brand of “Manok” or “Marca Manok” would most
likely be upper most in her mind and would influence her in selecting the product, regardless of
whether the brand pictures a hen or a rooster or two roosters. To her, they are all manok. Therein
lies the confusion, even deception.
McDONALD'S , vs. MACJOY & DEVICE vs YES. fried chicken, YES. dominancy A mere cursory look of the subject marks will reveal that, save for the letters "M" and "c", no other
MACJOY MCDONALD'S ("M", "Mc" chicken barbecue, test similarity exists in the subject marks. We agree with the [respondent] that it is entirely unwarranted
FASTFOOD G.R. and/or "Mac" ) burgers, fries, for the IPO to consider the prefix "Mac" as the predominant feature and the rest of the designs in
No. 166115 spaghetti, etc. [respondent's] mark as details. Taking into account such paramount factors as color, designs,
February 2, 2007 spelling, sound, concept, sizes and audio and visual effects, the prefix "Mc" will appear to be the
only similarity in the two completely different marks; and it is the prefix "Mc" that would thus appear
as the miniscule detail. When pitted against each other, the two marks reflect a distinct and
disparate visual impression that negates any possible confusing similarity in the mind of the buying
public.
Marvex "LIONPAS" vs. Yes. Medicated Yes. "SALONPAS" and "LIONPAS", when spoken, sound very much alike. Similarity of sound is sufficient
Commercial Co. "SALONPAS" plaster. ground for this Court to rule that the two marks are confusingly similar when applied to merchandise
vs. Petra Hawpia & of the same descriptive properties. And where goods are advertised over the radio, similarity in
Co. G.R. No. sound is of especial significance.
L-19297 December
22, 1966
Converse Rubber UNIVERSAL CONVERSE Yes. Rubber shoes. Yes. Confusingly The deteminative factor in ascertaining whether or not marks are confusingly similar to each other "is
vs. Universal AND DEVICE vs. similar. not whether the challenged mark would actually cause confusion or deception of the purchasers but
Rubber G.R. No. CONVERSE whether the use of such mark would likely cause confusion or mistake on the part of the buying
L-27906 January 8, public. It would be sufficient, for purposes of the law, that the similarity between the two labels is
198 such that there is a possibility or likelihood of the purchaser of the older brand mistaking the new
brand for it.The similarity in the general appearance of respondent's trademark and that of petitioner
would evidently create a likelihood of confusion among the purchasing public. By appropriating the
word "CONVERSE," respondent's products are likely to be mistaken as having been produced by
petitioner. "The risk of damage is not limited to a possible confusion of goods but also includes
confusion of reputation if the public could reasonably assume that the goods of the parties originated
from the same source.
Proline Sports Spalding YES. Spalding YES. The affidavit of Graciano Lacanaria, a former employee of UNIVERSAL, attesting to the illegal sale
Center vs. CA 281 sports products vs. and manufacture of "Spalding" balls and seized "Spalding" products and instruments from
SCRA 162 sports goods UNIVERSAL's factory was sufficient prima facie evidence to warrant the prosecution of private
including fake respondents. That a corporation other than the certified owner of the trademark is engaged in the
“spalding balls” unauthorized manufacture of products bearing the same trademark engenders a reasonable belief
that a criminal offense for unfair competition is being committed.
Berris Agricultural "NS D-10 PLUS" vs. Yes. Used in Yes. There is Dominancy The Supreme Court found that both products have the same component D-10 as their ingredient
Co. Inc. vs. Norby "D-10 80 WP" connection with confusing Test and and that it is the dominant feature in both their marks. Applying the Dominancy Test, Abyadang‘s
Abyadang G.R. No. Fungicide similarity between Holistic Test product is similar to Berris‘ and that confusion may likely to occur especially that both are the same
183404 October 13, the two type of goods. Using the Holistic Test, it was more obvious that there is likelihood of confusion in
2010 trademarks. their packaging and color schemes of the marks.

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Recaro vs. "Big Five 5" and "Big Yes. Vegetable lard Yes. A comparison thereof with plaintiff‘s label readily shows such of a resemblance in the general
Embisan G.R. No. Three 3" features of both as is likely on deceive the ordinary purchaser, exercising ordinary are, and induce
L-17049 May 31, him to believe that the goods bearing such labels are products of one and the same enterprise,
1961 particularly plaintiff herein, she having been, evidently, in the business of repacking vegetable lard
before defendant herein.

Defendant has admitted that he is engaged in the repacking of vegetable lard and that he has been
using thereon "for sometime" printed labels bearing the trade-mark "Nel's Big 3 Lard". What is more,
defendant does not claim that the latter is registered.

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