La Chemise Lacoste vs.

Fernandez

Facts:

La chemise Lacoste is a French corporation and the actual owner of the trademarks Lacoste, Chemise
Lacoste, Crocodile Device and a composite mark consisting of the word Lacoste and a representation of a
crocodile/alligator, used on clothings and other goods sold in many parts of the world and which has been
marketed in the Philippines (notably by Rustans) since 1964. In 1975 and 1977, Hemandas Q. Co. was issued
certificate of registration for the trademark Chemise Lacoste and Q Crocodile Device both in the
supplemental and Principal Registry. In 1980, La Chemise Lacoste SA filed for the registration of the
Crocodile device and Lacoste. Games and Garments (Gobindram Hemandas, assignee of Hemandas
Q.Co.) opposed the registration of Lacoste.

In 1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of unfair competition committed
by Hemandas and requesting the agencys assistance. A search warrant was issued by the trial
court. Various goods and articles were seized upon the execution of the warrants. Hemandas filed motion to
quash the warrants, which the court granted. The search warrants were recalled, and the goods ordered to be
returned. La Chemise Lacoste filed a petition for certiorari.

Issue:

Whether the proceedings before the patent office is a prejudicial question that need to be resolved before the
criminal action for unfair competition may be pursued.

Held:

No. The proceedings pending before the Patent Office do not partake of the nature of a prejudicial
question which must first be definitely resolved. The case which suspends the criminal action must be a civil
case, not a mere administrative case, which is determinative of the innocence or guilt of the accused. The
issue whether a trademark used is different from anothers trademark is a matter of defense and will be better
resolved in the criminal proceedings before a court of justice instead of raising it as a preliminary matter in an
administrative proceeding.

Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back even before 1964,
Hemandas cannot be allowed to continue the trademark Lacoste for the reason that he was the first
registrant in the Supplemental Register of a trademark used in international commerce. Registration in the
Supplemental Register cannot be given a posture as if the registration is in the Principal Register. It must be
noted that one may be declared an unfair competitor even if his competing trademark is registered. La
Chemise Lacoste is world renowned mark, and by virtue of the 20 November 1980 Memorandum of the
Minister of Trade to the director of patents in compliance with the Paris Convention for the protection of
industrial property, effectively cancels the registration of contrary claimants to the enumerated marks, which
include Lacoste"

DEL MONTE v. CA

Del Monte Corporation is an American corporation which is not engaged in business in the Philippines. Though
not engaging business here, it has given authority to Philippine Packing Corporation (Philpack) the right to
manufacture, distribute and sell in the Philippines various agricultural products, including catsup, under the Del
Monte trademark and logo. In 1965, Del Montealso authorized PPC to register with the Patent Office the Del
Monte catsup bottle configuration. Philpack was issued a certificate of trademark registration under the
Supplemental Register.
Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing was using Del Montebottles in
selling its products and that Sunshine Sauces logo is similar to that of Del Monte. The RTC of Makati as well
as the Court of Appeals ruled that there was no infringement because the trademarks used between the two
are different in designs and that the use of Del Monte bottles by Sunshine Sauce does not constitute unfair
competition because as ruled in Shell Company vs Insular Petroleum: selling oil in containers of another with
markings erased, without intent to deceive, was not unfair competition.
ISSUE: Whether or not there is unfair competition and infringement in the case at bar.
HELD: Yes. The Supreme Court recognizes that there really are distinctions between the designs of the logos
or trademarks of Del Monte and Sunshine Sauce. However, it has been that side by side comparison is not the
final test of similarity. Sunshine Sauces logo is a colorable imitation of Del Montes trademark. 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. The person who infringes a
trade mark does not normally copy out but only makes colorable changes, employing enough points of
similarity to confuse the public with enough points of differences to confuse the courts. What is undeniable is
the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of
words, phrases, colors and symbols sufficient to distinguish his product from the others. When as in this case,
Sunshine chose, without a reasonable explanation, to use the same colors and letters as those used by Del
Monte though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to
deceive.
The Supreme Court also ruled that Del Monte does not have the exclusive right to use Del Montebottles in the
Philippines because Philpacks patent was only registered under the Supplemental Register and not with the
Principal Register. Under the law, registration under the Supplemental Register is not a basis for a case of
infringement because unlike registration under the Principal Register, it does not grant exclusive use of the
patent. However, the bottles of Del Monte do say in embossed letters: Del Monte Corporation, Not to be
Refilled. And yet Sunshine Sauce refilled these bottles with its catsup products. This clearly shows the
Sunshine Sauces bad faith and its intention to capitalize on the Del Montes reputation and goodwill and pass
off its own product as that of Del Monte.

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

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

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 ABIs trademark constitute infringement of SMCs trademark?

Ruling:

No. The Supreme Court said it does not constitute an infringement as the words PALE PILSEN, which are part
of ABIs 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.

MCDONALDS vs. LC BIG MAK

FACTS
Mcdo registered its Big Mac with the Philippine IPO, which was granted as far back as 18 July 1985. From
1982 to 1990, Mcdo spent P10.5 million in advertisement for Big Mac hamburger sandwiches, and displayed
the Big Mac mark on paraphernalia and other items.
L.C. Big Mak Burger is a domestic corporation which operates fast-food outlets and snack vans in Metro
Manila and nearby provinces. Their menu includes hamburger sandwiches and other food items.
L.C. Big Mak tried to register the Big Mak mark with the then PBPTT (now IPO), which was opposed by
McDo. McDo also wrote L.C. Big Mak and its owners to desist. Receiving no response, McDo filed a case for
trademark infringement and unfair competition.
ISSUE
Whether there is trademark infringement or unfair competition.
RULING
Yes, there is trademark infringement and unfair competition.
The evidence presented shows that the plastic wrappings and plastic bags used by L.C. Big Mak for their
hamburger sandwiches bore the words Big Mak. The other descriptive words burger and 100% pure beef
were set in smaller type, along with the locations of branches. Respondents cash invoices simply refer to their
hamburger sandwiches as Big Mak.[29] It is respondents snack vans that carry the words L.C. Big Mak
Burger, Inc.
To establish trademark infringement, the following elements must be shown: (1) the validity of plaintiffs mark;
(2) the plaintiffs 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
Validity of the Mark: 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 or Chocolate Fudge for chocolate soda drink.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.
Confusion: While there is confusion of goods when the products are competing, confusion of business exists
when the products are non-competing but related enough to produce confusion of affiliation. 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 Court
has recognized that the registered trademark owner enjoys protection in product and market areas that are
the normal potential expansion of his business.
Likelihood of Confusion (Tests): In determining likelihood of confusion, jurisprudence has developed two tests,
the dominancy test and the holistic test. The dominancy test focuses on the similarity of
the prevalent features of the competing trademarks that might cause confusion. In contrast, the holistic
test requires the court to consider the entirety of the marks as applied to the products, including the labels and
packaging, in determining confusing similarity.
The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code
which defines infringement as the colorable imitation of a registered mark xxx or a dominant
feature thereof.
Applying the dominancy test, the Court finds that respondents use of the Big Mak mark results in likelihood
of confusion. First, Big Mak sounds exactly the same as Big Mac. Second, the first word in Big Mak
is exactly the same as the first word in Big Mac. Third, the first two letters in Mak are the same as the first
two letters in Mac. Fourth, the last letter in Mak while a k sounds the same as c when the word Mak is
pronounced. Fifth, in Filipino, the letter k replaces c in spelling, thus Caloocan is spelled Kalookan.
Respondents inability to explain sufficiently how and why they came to choose Big Mak for their hamburger
sandwiches indicates their intent to imitate petitioners Big Mac mark. While proof of actual confusion is the
best evidence of infringement, its absence is inconsequential.
Unfair Competition
Unfair competition is broader than trademark infringement and includes passing off goods with or without
trademark infringement. Trademark infringement is a form of unfair competition. Trademark infringement
constitutes unfair competition when there is not merely likelihood of confusion, but also actual or probable
deception on the public because of the general appearance of the goods. There can be trademark
infringement without unfair competition as when the infringer discloses on the labels containing the mark that
he manufactures the goods, thus preventing the public from being deceived that the goods originate from the
trademark owner.
Passing off (or palming off) takes place where the defendant, by imitative devices on the general appearance
of the goods, misleads prospective purchasers into buying his merchandise under the impression that they are
buying that of his competitors.
The wrappings of Big Mak are very similar to that of McDo, and did not indicate or inform the public that the
burgers are coming L.C. Big Mak and not McDo. Thus, L.C. Big Mak is liable for unfair competition.
Respondents have applied on their plastic wrappers and bags almost the same words that petitioners use on
their styrofoam box. What attracts the attention of the buying public are the words Big Mak which are almost
the same, aurally and visually, as the words Big Mac.