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Sterling Products Vs.

Farbenfabriken Bayer
GR L-19906, 30 April 1969;
The Bayer Cross in circle trademark was registered in
Germany in 1904 to Farbenfabriken vorm. Friedr. Bayer (FFB),
successor to the original Friedr. Bauyer et. Comp., and
predecessor to Farbenfabriken Bayer aktiengessel craft (FB2).
The Bayer, and Bayer Cross in circle trademarks were
acquired by sterling Drug Inc. when it acquired FFBs
subsidiary Bayer Co. of New York as a result of the
sequestration of its assets by the US Alien Property Custodian
during World War I. Bayer products have been known in
Philippines by the close of the 19th century. Sterling Drugs,
Inc., however, owns the trademarks Bayer in relation to
medicine. FBA attempted to register its chemical products
with the Bayer Cross in circle trademarks. Sterling Products
International and FBA seek to exclude each other from use of
the trademarks in the Philippines. The trial court sustained
SPIs right to use the Bayer trademark for medicines and
directed FBA to add distinctive word(s) in their mark to
indicate their products come from Germany. Both appealed.
Issue: Whether SPIs ownership of the trademarks extends to
products not related to medicine.
Held: No. SPIs certificates of registration as to the Bayer
trademarks registered in the Philippines cover medicines
only. Nothing in the certificates include chemicals or
insecticides. SPI thus may not claim first use of the
trademarks prior to the registrations thereof on any product
other than medicines. For if otherwise held, a situation may
arise whereby an applicant may be tempted to register a
trademark on any and all goods which his mind may conceive
even if he had never intended to use the trademark for the
said goods. Omnibus registration is not contemplated
by the Trademark Law.
The net result of the decision is that SPI may hold on its
Bayer trademark for medicines and FBA may continue using
the same trademarks for insecticide and other chemicals, not

The formula fashioned by the lower court avoids the mischief

of confusion of origin, and does not visit FBA with reprobation
and condemnation. A statement that its product came from
Germany anyhow is but a statement of fact.
A question basic in the field of trademarks and unfair
competition is the extent to which a registrant of a trademark
covering one product may invoke the right to protection
against the use by others of the same trademark to identify
merchandise different from those for which the trademark
has been appropriated.
Plaintiff's trenchant claim is that it should not be turned away
because its case comes within the protection of the confusion
of origin rule. Callmann notes two types of confusion. The
first is the confusion of goods "in which event the
ordinarily prudent purchaser would be induced to purchase
one product in the belief that he was purchasing the other."
In which case, "defendant's goods are then bought as the
plaintiff's, and the poorer quality of the former reflects
adversely on the plaintiff's reputation." The other is the
confusion of business: "Here 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.
A judicial test giving the scope of the rule of confusion of
origin is Ang vs. Teodoro, SC held In the present state of
development of the law on Trade-Marks, Unfair Competition,
and Unfair Trading, the test employed by the courts to
determine whether noncompeting goods are or are not of the
same class is confusion as to the origin of the goods of
the second user.
Although two noncompeting articles may be classified
under two different classes by the Patent Office because
they are deemed not to possess the same descriptive
properties, they would, nevertheless, be held by the courts to

belong to the same class if the simultaneous use on them of

identical or closely similar trademarks would be likely to
cause confusion as to the origin, or personal source, of the
second user's goods.
They would be considered as not falling under the same
class only if they are so dissimilar or so foreign to each other
as to make it unlikely that the purchaser would think the first
user made the second user's goods.
G.R. No. 169974, April 20, 2010
On February 23, 1993, SUPERIOR filed a complaint for
trademark infringement and unfair competition with
preliminary injunction against KUNNAN and SPORTS CONCEPT
with the RTC. Superior defenses:
to be owner of the trademarks, trading styles, company
names and business names KENNEX, KENNEX & DEVICE,
PRO KENNEX and PRO-KENNEX (disputed trademarks)
asserted its prior use of these trademarks, presenting
as evidence of ownership the Principal and
Supplemental Registrations of these trademarks in its
alleged that it extensively sold and advertised sporting
goods and products covered by its trademark

SUPERIOR presented as evidence of its ownership of

the disputed trademarks the preambular clause of the
Distributorship Agreement dated October 1, 1982
(Distributorship Agreement) it executed with KUNNAN,
Whereas, KUNNAN intends to acquire the ownership of
KENNEX trademark registered by the [sic] Superior in the
Philippines. Whereas, the [sic] Superior is desirous of having
been appointed [sic] as the sole distributor by KUNNAN in the
territory of the Philippines.

KUNNANs Defense:
KUNNAN disputed SUPERIORs claim of ownership and
maintained that SUPERIOR as mere distributor from
October 6, 1982 until December 31, 1991
fraudulently registered the trademarks in its
alleged that it was incorporated in 1972, under the
name KENNEX Sports Corporation for the purpose of
manufacturing and selling sportswear and sports
equipment; it commercially marketed its products in
different countries, including the Philippines since
It created and first used PRO KENNEX, derived from
its original corporate name, as a distinctive trademark
for its products in 1976.
It registered the PRO KENNEX trademark not only in
the Philippines but also in 31 other countries, and
widely promoted the KENNEX and PRO KENNEX
trademarks through worldwide advertisements in print
media and sponsorships of known tennis players.
On October 1, 1982, after the expiration of its initial
distributorship agreement with another company,
KUNNAN appointed SUPERIOR as its exclusive
distributor in the Philippines under a Distributorship
Agreement whose pertinent provisions state:
Whereas, KUNNAN intends to acquire ownership of KENNEX
trademark registered by the Superior in the Philippines. Whereas,
the Superior is desirous of having been appointed [sic] as
the sole distributor by KUNNAN in the territory of the

Parties agreed to following terms:

KUNNAN in accordance with this Agreement, will
appoint the sole distributorship right to Superior in the
Philippines, and this Agreement could be renewed with the
consent of both parties upon the time of expiration.

The Superior, in accordance with this Agreement, shall

assign the ownership of KENNEX trademark, under the
registration of Patent Certificate No. 4730 dated 23 May

1980 to KUNNAN on the effects [sic] of its ten (10) years

contract of distributorship, and it is required that the ownership
of the said trademark shall be genuine, complete as a whole and
without any defects.

Upon the termination of its distributorship agreement

as its new distributor. Subsequently, KUNNAN also
caused the publication of a Notice and Warning in the
Manila Bulletins January 29, 1993 issue, stating that
(1) it is the owner of the disputed trademarks
(2) it terminated its Distributorship Agreement with
SUPERIOR and (3) it appointed SPORTS CONCEPT as its
exclusive distributor. This notice prompted SUPERIOR
to file its Complaint for Infringement of Trademark and
Unfair Competition with Preliminary Injunction against
The CA decided that the registration of the KENNEX
and PRO KENNEX trademarks should be cancelled
because SUPERIOR was not the owner of, and could
not in the first place have validly registered these
trademarks. Thus, as of the finality of the CA decision
on December 3, 2007, these trademark registrations
were effectively cancelled and SUPERIOR was no
longer the registrant of the disputed trademarks.
Essentially, Section 22 of RA 166 states that only a
registrant of a mark can file a case for infringement.
Corollary to this, Section 19 of RA 166 provides that
any right conferred upon the registrant under the
provisions of RA 166 terminates when the judgment or
order of cancellation has become final.
Court has previously held that the cancellation of
registration of a trademark has the effect of depriving
the registrant of protection from infringement from the

moment judgment or order of cancellation has become

In the present case, by operation of law, Sec. 19 of RA
166, the trademark infringement aspect of SUPERIORs
case has been rendered moot and academic in view of
the finality of the decision in the Registration
Cancellation Case. SUPERIOR is left without any
cause of action for trademark infringement since
the cancellation of registration of a trademark
deprived it of protection from infringement from
the moment judgment or order of cancellation
became final.
To be sure, in a trademark
infringement, title to the trademark is indispensable to
a valid cause of action and such title is shown by its
certificate of registration.
Even assuming it was not rendered moot and
academic, there can be no infringement committed by
KUNNAN who was adjudged with finality to be the
rightful owner of the disputed trademarks in the
Registration Cancellation Case.
Even prior to the
cancellation of the registration of the disputed
trademarks, SUPERIOR as a mere distributor and
not the owner cannot assert any protection from
trademark infringement as it had no right in the first
place to the registration of the disputed trademarks.
In fact, jurisprudence holds that in the absence of any
inequitable conduct on the part of the manufacturer,
an exclusive distributor who employs the trademark of
the manufacturer does not acquire proprietary rights of
the manufacturer, and a registration of the trademark
by the distributor as such belongs to the manufacturer,
provided the fiduciary relationship does not terminate
before application for registration is filed.
An exclusive distributor does not acquire any
proprietary interest in the principals trademark and
cannot register it in his own name unless it is has
been validly assigned to him.

In no uncertain terms, the appellate court in the Registration

Cancellation Case ruled that SUPERIOR was a mere
distributor and could not have been the owner, and was thus
an invalid registrant of the disputed trademarks.
Significantly, these are the exact terms of the ruling the CA
arrived at in the present petition now under our review.
Thus, whether with one or the other, the ruling on the issue
of ownership of the trademarks is the same. Given, however,
the final and executory ruling in the Registration Cancellation
Case on the issue of ownership that binds us and the parties,
any further discussion and review of the issue of ownership
although the current CA ruling is legally correct and can
stand on its own merits becomes a pointless academic
Because the Registration Cancellation Case and the present
case involve the same parties, litigating with respect to and
disputing the same trademarks, we are bound to examine
how one case would affect the other. In the present case,
even if the causes of action of the Registration Cancellation
Case (the cancellation of trademark registration) differs from
that of the present case (the improper or unauthorized use of
trademarks), the final judgment in the Registration
Cancellation Case is nevertheless conclusive on the particular
facts and issues that are determinative of the present case.
To establish trademark infringement, the following elements
must be proven: (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.[44]
Based on these elements, we find it immediately obvious that
the second element the plaintiffs ownership of the mark
was what the Registration Cancellation Case decided with
On this element depended the validity of the
registrations that, on their own, only gave rise to the
presumption of, but was not conclusive on, the issue of

[G.R. No. 4392. February 17, 1909. ]

PATRICIO UBEDA, Plaintiff-Appellant, v. AGAPITO
ZIALCITA, Defendant-Appellee.
Patricio Ubeda, owner of registered trademark Ginebra Tres
Companas claims damages against defendant alleging latter
imitated his trademark by selling gin in bottles bearing said
trademark and using a label design that greatly resembles
his, the only difference was defendant used words, Ginebra
de Dos Campanas and in center instead of Patricio Ubeda ,
it read Gavino Barretto
He prayed defendant be accountable for all sales made by
him of gin put in bottles bearing the trademark, design and
that he be ordered to pay double the amount of indemnity for
loss and damages. Defendant opposed demand for various
reasons. CFI ruled in defendants favor dismissing complaint.
Plaintiff appealed from judgment and moved for new trial, his
motion was overruled, he submitted bill of exceptions to
court for purposes of appeal and a review of facts and
evidence offered in CFI.
The defendant, Agapito Zialcita, opposed the demand for
various reasons which he advanced as a special denial to the
complaint, and the Court of First Instance of Manila, after
hearing the evidence adduced at the trial, absolved him
from the complaint filed by the plaintiff herein,
Patricio Ubeda, with the costs against the latter. The
plaintiff appealed from the judgment and moved for a
new trial; his motion was overruled, to which motion he
excepted, and submitted a bill of exceptions to this court for
the purposes of his appeal and a review of the facts and
evidence offered in the first instance.
ISSUE: WON action for infringement is maintainable?
No action, suit, or criminal prosecution can be maintained in
a case where a trade-mark or trade-name has been used by
the complaining party, for the purpose of himself deceiving
the public with respect to the character of the merchandise
sold by him or of the business or profession or occupation

carried on by him (Sec. 9, Act No. 666.)

Upon comparing the trade-mark that appears at the foot of
the title of ownership presented by the plaintiff, and which
bears the word "Amberes" on the lower outer part, with the
real and undisputed mark of Van Den Bergh & co., of
Antwerp, also bearing the said word upon the lower outer
part, it is found that the description given in clause 3 of the
complaint applies to the salient features of both, and that
when viewed from a distance they appear alike; even to the
characters used in the respective autographs stamped across
both marks, the resemblance is perfect, and the type
employed in the legend, the cautio, class, and place of origin
is the same in both. So that it may be said of Van Den Bergh
& Co.s trade-mark (Exhibit 3), as of that of Patricio Ubedas
(Exhibit A): Two concentric circles, the larger of 50
millimeters in diameter and the smaller 33, 8 millimeters
apart. On the lower part of the bell the words "Extra
Superior" are written. Above the two circles and almost
diametrically crossing them, the facsimile of the signature
and rubric of Van Den Bergh & Co. is stamped in black ink;
said facsimile commences on the first letter of the word
"Ginebra" and ends at the letter "P" of the word "Campana."
The whole of the substitution consists of "Tres Campanas" for
"La Campana," and "Patricio Ubeda" in lieu of "Van Den Bergh
& Co.," both in the text and the signature; all are of the same
color, and, viewed from a certain distance as a whole, of
exactly the same appearance; in other words such a mark as
is applied to a bottle of characteristic design as that used for
putting up gin.
The plaintiff presents a registered trade-mark which can be

seen at the foot of the title of ownership obtained for

imported gin. According to the registered mark it would be
gin imported from Antwerp. As the plaintiff was well aware,
this mark existed here, although he says he was given to
understand that the copyright had expired.
In order to recover for a violation of trade-mark rights, it is
not necessary that the mark shall have been registered. It is
sufficient if the party complaining shall prove that he has
used the mark upon his goods so long that its use by another
would injure him and is calculated to deceive the public. (Sec.
4, Act No. 666.)
The fact that both have fraudulently imitated the trade-mark
of a third person, one which antedated both of theirs, and
which with variations was copied in order to sell as "La
Campana" gin from Antwerp, those gins which the one and
the other have offered the public under the trade-marks of
"Dos Campanas" and "Tres Campanas," can not be
considered res inter alios acta for the foundation of an action
between the plaintiff and the defendant. although the
usurped trade-mark was not entered or registered, legitimate
must also be the defense, although the mark, usurped in turn
by the complaining and injured party, may not have been
recorded or registered.
One person can not maintain an action to recover damages
for an injury to his business caused by another, when he is
himself guilty of causing the same injury and damage to the
business of his opponent.