1. Mirpuri vs.

CA

Facts:

GR 114508

HD Lee Co., a foreign corporation, seeks the cancellation of a patent in favor of Emerald Garment Manufacturing
(domiciled in the Phil) for the trademark Stylistic Mr. Lee, which according to HD Lee Co. closely resembled its own
trademark Lee and thus would cause confusion, mistake and deception to the purchasing public. The Director of Patents
granted the cancellation on the ground that petitioners trademark was confusingly similar to private respondents 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. The CA affirmed.

Facts:
Barbizon Corp (foreign corp) has adopted the trademark Barbizon. Thus, upon finding that Mirpuri (domiciled in the Phil)
seeks to register the same trademark in the Philippines, Barbizon Corp filed its opposition. Barbizon Corp alleges its trademark
is qualified as well-known and is therefore protected by the Convention of Paris for the Protection of Intellectual Property
which the Philippines has bound to enforce. The Director of Patents rendered a decision giving due course to the patent
application of Mirpuri. The CA, however, reversed this decision.

Issue:
WON the trademark Stylistic Mr. Lee tends to mislead or confuse the public and constitutes an infringement of the
trademark Lee.

Issue:
Whether or not the Convention of Paris for the Protection of Intellectual Property affords protection to a foreign corporation
against a Philippine applicant for the registration of a similar trademark.

Held:
Negative for lack of adequate proof of actual use of its trademark in the Philippines prior to Emeralds use of its own mark
and for failure to establish confusing similarity between said trademarks, HD Lee Cos action for infringement must
necessarily fail.

Held:

Ratio:

Affirmative. The Philippines and the United States of America have acceded to the WTO Agreement x x x Conformably, the
State must reaffirm its commitment to the global community and take part in evolving a new international economic order at the
dawn of the new millennium.

Emeralds Stylistic Mr. Lee is not confusingly similar to private respondents LEE trademark. Colorable imitation DOES
NOT APPLY because:

Thus, the first paragraph of Article 6bis of the Paris Convention is applicable in the instant case:
This Article governs protection of well-known trademarks. Under the first paragraph, each country of the Union bound itself to
undertake to refuse or cancel the registration, and prohibit the use of a trademark which is a reproduction, imitation or
translation, or any essential part of which trademark constitutes a reproduction, liable to create confusion, of a mark considered
by the competent authority of the country where protection is sought, to be well-known in the country as being already the mark
of a person entitled to the benefits of the Convention, and used for identical or similar goods.

1. Petitioners trademark is the whole STYLISTIC MR. LEE. Although on its label the word LEE is prominent, the
trademark should be considered as a whole and not piecemeal. The dissimilarities between the two marks become
conspicuous, noticeable and substantial enough to matter especially in the light of the following variables that must be
factored in, among others:
a. Expensive and valuable items are normally bought only after deliberate, comparative and analytical
investigation; and
b. The average Filipino consumer generally buys his jeans by brand.

It is a self-executing provision and does not require legislative enactment to give it effect in the member country.

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

2. Emerald Garment vs CA
GR 100098

2. LEE is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership over and singular use of
said term.
3. After a meticulous study of the records, the SC observes that the Director of Patents and the Court of Appeals relied
mainly on the registration certificates as proof of use by HD Lee Co of the trademark LEE which are not sufficient.

***********************
Colorable imitation defined: "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such
resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser
usually gives, and to cause him to purchase the one supposing it to be the other.

E.Y Industrial Sales, Inc. v. Shen Dar Electricity and Machinery, G.R. No. 184850, October 20, 2010

A registered trademark owners certificate of registration may be cancelled even that trademark owner is the
complainant in a petition for cancellation of an adverse trademark. You can fall on your sword, so to speak.
A Declaration of Actual Use (requirement for trademark registration) although notorized, hence a public document,
must be accompanied by proof of actual use as of the date claimed. The trademark owner must, therefore, present
evidence of such actual use.

An earlier valid trademark registration may still be cancelled upon proof of prior and continuous use by rival
trademark applicant.
Evidence of prior and continuous use of the mark or trade name by another can overcome the presumptive
ownership of the registrant and may very well entitle the former to be declared owner in an appropriate case.
When the applicant is not the owner of the trademark being applied for, he has no right to apply for registration of
the same