McDONALDS CORPORATION v.

MACJOY
CORPORATION
G.R. No. 166115
Feb ruary 2, 2007

FASTFOOD

Issue:
1.
2.

Facts:

On 14 March 1991, respondent MacJoy Fastfood

Corporation, a domestic corporation engaged in the
sale of fast food products in Cebu City, filed with the
then Bureau of Patents, Trademarks and Technology
Transfer (BPTT), now the Intellectual Property Office
(IPO), an application for the registration of the
trademark "MACJOY & DEVICE" for fried chicken,
chicken barbeque, burgers, fries, spaghetti, palabok,
tacos, sandwiches, halo-halo and steaks under
classes 29 and 30 of the International Classification of
Goods.
Petitioner McDonalds Corporation, filed a verified
Notice of Opposition against the respondents
application claiming that the trademark "MACJOY &
DEVICE" so resembles its corporate logo, otherwise
known as the Golden Arches or "M" design, and its
marks "McDonalds," McChicken," "MacFries," etc.
(hereinafter MCDONALDS marks) 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.
Also, petitioner alleged that the respondents use and
adoption in bad faith of the "MACJOY & DEVICE" mark
would falsely tend to suggest a connection or affiliation
with petitioners restaurant services and food products,
thus, constituting a fraud upon the general public and
further cause the dilution of the distinctiveness of
petitioners registered and internationally recognized
MCDONALDS marks to its prejudice and irreparable
damage.
IPO ruled that the predominance of the letter "M," and
the prefixes "Mac/Mc" in both the "MACJOY" and the
"MCDONALDS" marks lead to the conclusion that
there is confusing similarity between them especially
since both are used on almost the same products
falling under classes 29 and 30 of the International
Classification of Goods, i.e., food and ingredients of
food, sustained the petitioners opposition and rejected
the respondents application. (IPO used the dominancy
test)
IPO denied MR. CA reversed the IPO decision, ruling
that there was no confusing similarity between the
marks "MACJOY" and "MCDONALDS," for the ff.
reasons:
1. The word "MacJoy" is written in round script while
the word "McDonalds" is written in single stroke
gothic;
2. The word "MacJoy" comes with the picture of a
chicken head with cap and bowtie and wings sprouting
on both sides, while the word "McDonalds" comes with
an arches "M" in gold colors, and absolutely without
any picture of a chicken;
3. The word "MacJoy" is set in deep pink and white
color scheme while "McDonalds" is written in red,
yellow and black color combination;
4. The faade of the respective stores of the parties
are entirely different. Respondents restaurant is set
also in the same bold, brilliant and noticeable color
scheme as that of its wrappers, containers, cups, etc.,
while Petitioners restaurant is in yellow and red colors,
and with the mascot of "Ronald McDonald" being
prominently displayed therein."

Ratio:
1.

W/N the dominancy test should be applied, instead of

the holistic test.
W/N there is a confusing similarity between MACJOY
and MCDONALDS trademarks as to justify the IPOs
rejection of Macjoys trademark application

YES.
In determining similarity and 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 or
deception. 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.
In recent cases with a similar factual milieu as
here, the Court has consistently used and applied
the dominancy test in determining confusing
similarity or likelihood of confusion between
competing trademarks.
Under the dominancy test, courts give greater weight
to the similarity of the appearance of the product
arising from the adoption of the dominant features of
the registered mark, disregarding minor differences.
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.
Applying the dominancy test to the instant case,
the
Court
finds
that
herein petitioners
"MCDONALDS" and respondents "MACJOY"
marks are confusingly similar with each other such
that an ordinary purchaser can conclude an
association or relation between the marks

2.

YES.
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.

It is the prefix "Mc," an abbreviation of "Mac," which

visually and aurally catches the attention of the
consuming public.

Both trademarks are used in the sale of fastfood

products. Indisputably, the respondents trademark
application for the "MACJOY & DEVICE" trademark
covers goods under Classes 29 and 30 of the
International Classification of Goods, namely, fried
chicken, chicken barbeque, burgers, fries, spaghetti,
etc. McDonalds registered trademark covers goods
similar if not identical to those covered by the
respondents application.

Predominant features such as the "M," "Mc," and

"Mac" appearing in both McDonalds marks and
the MACJOY & DEVICE" easily attract the attention
of
would-be
customers. Even non-regular
customers of their fastfood restaurants would
readily notice the predominance of the "M" design,
"Mc/Mac" prefixes shown in both marks. Such that
the common awareness or perception of
customers that the trademarks McDonalds mark
and MACJOY & DEVICE are one and the same, or
an affiliate, or under the sponsorship of the other
is not far-fetched.

By reason of the respondents implausible and

insufficient explanation as to how and why out of the
many choices of words it could have used for its tradename and/or trademark, it chose the word "MACJOY,"
the only logical conclusion deducible therefrom is that
the respondent would want to ride high on the
established reputation and goodwill of the
MCDONALDs marks, which, as applied to petitioners
restaurant business and food products, is undoubtedly
beyond question.
When one applies for the registration of a trademark or
label which is almost the same or 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 not only to avoid confusion on
the part of the public, but also to protect an already
used and registered trademark and an established
goodwill.

WHEREFORE, the instant petition is GRANTED. Accordingly,

the assailed Decision and Resolution of the Court of Appeals in
CA-G.R. SP NO. 57247, are REVERSED and SET ASIDE and
the Decision of the Intellectual Property Office in Inter Partes
Case No. 3861 is REINSTATED.

PHILIPPINE REFINING CO., INC. vs. NG SAM G.R. No. L26676. July 30, 1982
Facts:
Private respondent filed with the Philippine Patent Office an
application for registration of the trademark "CAMIA" for his
product, ham, which falls under Class 47 (Foods and
Ingredients of Food).
Petitioner opposed the application claiming that it first used said
trademark on his products: lard, butter, cooking oil, abrasive
detergents, polishing materials and soap of all kinds, some of
which are likewise classified under Class 47.
The trademark "CAMIA" was first used in the Philippines by
petitioner on its products in 1922 and registered the same in
1949
On November 25, 1960, respondent Ng Sam, a Chinese citizen
residing in Iloilo City, filed an application with the Philippine
Patent Office for registration of the identical trademark "CAMIA"
for his product, ham, which likewise falls under Class 47.
Alleged date of first use of the trademark by respondent was on
February 10, 1959.
Director of Patents rendered a decis ion allowing registration of
the trademark "CAMIA" in favor of Ng Sam finding that `the
goods of the parties are not of a character which purchasers
would be likely to attribute to a common origin.
Issue/Answer:
WON the product of respondent Ng Sam, which is ham, and
those of petitioner consisting of lard, butter, cooking oil and
soap are so related that the use of the same trademark
"CAMIA'' on said goods would likely result in confusion as to
their source Atty. Eric Recalde or origin./ negative
Ratio Decidendi:
The right to a trademark is a limited one, in the sense that
others may use the same mark on unrelated 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 articles of a different

description.
Where no confusion is likely to arise, as in this case, registration
of a similar or even identical mark may be allowed.
The term "CAMIA" is descriptive of a whole genus of garden
plants with fragrant white flowers.
A trademark is designed to identify the user. But it should be so
distinctive and sufficiently original as to enable those who come
into contact with it to recognize instantly the identity of the user.
"It must be affirmative and definite, significant and distinctive,
capable to indicate origin.
If a mark is so commonplace that it cannot be readily
distinguished from others, then it is apparent that it cannot
identify a particular business; and he who first adopted it cannot
be injured by any subsequent appropriation or imitation by
others, and the public will not be deceived."]
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.
Opposer's products are ordinary day-to-day household items
whereas ham is not necessarily so. Thus, the goods of the
parties are not of a character which purchasers would be likely
to attribute to a common origin."
The business of the parties are noncompetitive and their
products so unrelated that the use of identical trademarks is not
likely to give rise to confusion, much less cause damage to
petitioner.
provision:
Section 4(d) of Trademark law "a mark which consists of or
comprises a mark or trade name which so resembles a m ark or
trade name registered in the Philippines or a mark or trade
name previously used in the Philippines by another and not
abandoned, as to be likely, when applied to or used in
connection with the goods, business services of the applicant,
to cause confusion or mistake or to deceive purchasers."

G.R. No. 154491

November 14, 2008

COCA-COLA BOTTLERS, PHILS., INC. (CCBPI), Naga Plant,

petitioner,
vs.
QUINTIN J. GOMEZ, a.k.a. "KIT" GOMEZ and DANILO E.
GALICIA, a.k.a. "DANNY GALICIA", respondents.

FACTS:
Coca-Cola applied for a search warrant against Pepsi for
hoarding Coke empty bottles in Pepsi's yard in Concepcion
Grande, Naga City, an act allegedly penalized as unfair
competition under the IP Code. Coca-Cola claimed that the
bottles must be confiscated to preclude their illegal use,
destruction or concealment by the respondents. In support of
the application, Coca-Cola submitted the sworn statements of
three witnesses: Naga plant representative Arnel John Ponce
said he was informed that one of their plant security guards had
gained access into the Pepsi compound and had seen empty
Coke bottles; acting plant security officer Ylano A. Regaspi
said he investigated reports that Pepsi was hoarding large
quantities of Coke bottles by requesting their security guard to
enter the Pepsi plant and he was informed by the security guard
that Pepsi hoarded several Coke bottles; security guard Edwin

Lirio stated that he entered Pepsi's yard on July 2, 2001 at 4

p.m. and saw empty Coke bottles inside Pepsi shells or cases.
Municipal Trial Court (MTC) Executive Judge Julian C. Ocampo
of Naga City, after taking the joint deposition of the witnesses,
issued Search Warrant No. 2001-01 to seize 2,500 Litro and
3,000 eight and 12 ounces empty Coke bottles at Pepsi's Naga
yard for violation of Section 168.3 (c) of the IP Code.
In their counter-affidavits, Galicia and Gomez claimed that the
bottles came from various Pepsi retailers and wholesalers who
included them in their return to make up for shortages of empty
Pepsi bottles; they had no way of ascertaining beforehand the
return of empty Coke bottles as they simply received what had
been delivered; the presence of the bottles in their yard was not
intentional nor deliberate.
The respondents also filed motions for the return of their shells
and to quash the search warrant. Coca-Cola opposed the
motions as the shells were part of the evidence of the crime,
arguing that Pepsi used the shells in hoarding the bottles. It
insisted that the issuance of warrant was based on probable
cause for unfair competition under the IP Code, and that the
respondents violated R.A. 623, the law regulating the use of
stamped or marked bottles, boxes, and other similar containers.
The MTC issued the first assailed order denying the twin
motions. It explained there was an exhaustive examination of
the applicant and its witnesses through searching questions and
that the Pepsi shells are prima facie evidence that the bottles
were placed there by the respondents.
The MTC denied the motion for reconsideration in the second
assailed order, explaining that the issue of whether there was
unfair competition can only be resolved during trial.
The respondents responded by filing a petition for certiorari
under Rule 65 of the Revised Rules of Court before the
Regional Trial Court (RTC) of Naga City on the ground that the
subject search warrant was issued without probable cause and
that the empty shells were neither mentioned in the warrant nor
the objects of the perceived crime.
The RTC voided the warrant for lack of probable cause and the
non-commission of the crime of unfair competition, even as it
implied that other laws may have been violated by the
respondents. The RTC, though, found no grave abuse of
discretion on the part of the issuing MTC judge.

ISSUE:
Whether the Naga MTC was correct in issuing Search Warrant
No. 2001-01 for the seizure of the empty Coke bottles from
Pepsi's yard for probable violation of Section 168.3 (c) of the IP
Code.

HELD:
NO.
We clarify at the outset that while we agree with the RTC
decision, our agreement is more in the result than in the
reasons that supported it. The decision is correct in nullifying
the search warrant because it was issued on an invalid
substantive basis - the acts imputed on the respondents do not
violate Section 168.3 (c) of the IP Code. For this reason, we
deny the present petition.
In the context of the present case, the question is whether the
act charged - alleged to be hoarding of empty Coke bottles constitutes an offense under Section 168.3 (c) of the IP Code.
Section 168 in its entirety states:

SECTION 168. Unfair Competition, Rights, Regulation

and Remedies. 168.1. A person who has identified in the mind of the
public the goods he manufactures or deals in, his
business or services from those of others, whether or
not a registered mark is employed, has a property right
in the goodwill of the said goods, business or services
so identified, which will be protected in the same
manner as other property rights.
168.2. Any person who shall 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.
168.3. In particular, and without in any way limiting the
scope of protection against unfair competition, the
following shall be deemed guilty of unfair competition:
(a) Any person, who is selling his goods and
gives them the general appearance of goods
of another manufacturer or dealer, either as
to the goods themselves or in the wrapping of
the packages in which they are contained, or
the devices or words thereon, or in any other
feature of their appearance, which would be
likely to influence purchasers to believe that
the goods offered are those of a manufacturer
or dealer, other than the actual manufacturer
or dealer, or who otherwise clothes the goods
with such appearance as shall deceive the
public and defraud another of his legitimate
trade, or any subsequent vendor of such
goods or any agent of any vendor engaged in
selling such goods with a like purpose;
(b) Any person who by any artifice, or device,
or who employs any other means calculated
to induce the false belief that such person is
offering the services of another who has
identified such services in the mind of the
public; or
(c) Any person who shall make any false
statement in the course of trade or who shall
commit any other act contrary to good faith of
a nature calculated to discredit the goods,
business or services of another.
168.4. The remedies provided by Sections 156, 157
and 161 shall apply mutatis mutandis. (Sec. 29, R.A.
No. 166a)

From jurisprudence, unfair competition has been defined as the

passing off (or palming off) or attempting to pass off upon the
public the goods or business of one person as the goods or
business of another with the end and probable effect of
deceiving the public. It formulated the "true test" of unfair
competition: whether the acts of defendant are such as are
calculated to deceive the ordinary buyer making his purchases
under the ordinary conditions which prevail in the particular
trade to which the controversy relates. One of the essential
requisites in an action to restrain unfair competition is proof of
fraud; the intent to deceive must be shown before the right to
recover can exist. The advent of the IP Code has not
significantly changed these rulings as they are fully in accord
with what Section 168 of the Code in its entirety provides.
Deception, passing off and fraud upon the pub lic are still the
key elements that must be present for unfair competition to
exist.

The act alleged to violate the petitioner's rights under Section

168.3 (c) is hoarding which we gather to be the collection of the
petitioner's empty bottles so that they can be withdrawn from
circulation and thus impede the circulation of the petitioner's
bottled products. This, according to the petitioner, is an act
contrary to good faith - a conclusion that, if true, is indeed an
unfair act on the part of the respondents. The critical question,
however, is not the intrinsic unfairness of the act of hoarding;
what is critical for purposes of Section 168.3 (c) is to determine
if the hoarding, as charged, "is of a nature calculated to
discredit the goods, business or services" of the petitioner.
We hold that it is not. Hoarding as defined by the petitioner is
not even an act within the contemplation of the IP Code.
Under all the above approaches, we conclude that the
"hoarding" - as defined and charged by the petitioner - does not
fall within the coverage of the IP Code and of Section 168 in
particular. It does not relate to any patent, trademark, trade
name or service mark that the respondents have invaded,
intruded into or used without proper authority from the
petitioner. Nor are the respondents alleged to be fraudulently
"passing off" their products or services as those of the
petitioner. The respondents are not also alleged to be
undertaking any representation or misrepresentation that would
confuse or tend to confuse the goods of the petitioner with
those of the respondents, or vice versa. What in fact the
petitioner alleges is an act foreign to the Code, to the concepts
it embodies and to the acts it regulates; as alleged, hoardi ng
inflicts unfairness by seeking to limit the opposition's sales by
depriving it of the bottles it can use for these sales.
Based on the foregoing, we conclude that the RTC correctly
ruled that the petitioner's search warrant should properly be
quashed for the petitioner's failure to show that the acts imputed
to the respondents do not violate the cited offense. There could
not have been any probable cause to support the issuance of a
search warrant because no crime in the first place was
effectively charged. This conclusion renders unnecessary any
further discussion on whether the search warrant application
properly alleged that the imputed act of holding Coke empties
was in fact a "hoarding" in bad faith aimed to prejudice the
petitioner's operations, or whether the MTC duly complied with
the procedural requirements for the issuance of a search
warrant under Rule 126 of the Rules of Court.

SUPERIOR
COMMERCIAL
ENTERPRISES,
INC.,
vs. KUNNAN ENTERPRISES LTD. AND SPORTS CONCEPT
& DISTRIBUTOR, INC., G.R. No. 169974, April 20, 2010
Facts:
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, docketed as Civil Case No. Q-93014888.
In support of its complaint, SUPERIOR first claimed to be the
owner of the trademarks, trading styles, company names and
business names KENNEX, KENNEX & DEVICE, PRO
KENNEX
and
PRO-KENNEX
(disputed
trademarks). Second, it also asserted its prior use of these
trademarks, presenting as evidence of ownership the Principal
and Supplemental Registrations of these trademarks in its
name. Third, SUPERIOR also alleged that it extensively sold
and advertised sporting goods and products covered by its
trademark registrations. Finally, 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, which states:
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. [Emphasis supplied.]

In its 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 name. KUNNAN
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 1972. It created and first used PRO
KENNEX, derived from its original corporate name, as a
distinctive trademark for its products in 1976. KUNNAN also
alleged that 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 Philippines .
Now, therefore, the parties hereto agree as
follows:
1.
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.

2. 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.
On December 3, 1991, upon the termination of its
distributorship agreement with SUPERIOR, KUNNAN appointed
SPORTS CONCEPT 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 KUNNAN.

The IPO and CA Rulings

There being sufficient evidence to prove that the PetitionerOpposer (KUNNAN) is the prior user and owner of the
trademark PRO-KENNEX, the consolidated Petitions for
Cancellation
and
the Notices
of Opposition are
herebyGRANTED.
Consequently, the trademark PROKENNEX bearing Registration Nos. 41032, 40326, 39254,
4730, 49998 for the mark PRO-KENNEX issued in favor of
Superior Commercial Enterprises, Inc., herein RespondentRegistrant under the Principal Register and SR No. 6663 are
hereby CANCELLED. Accordingly, trademark application Nos.
84565 and 84566, likewise for the registration of the mark PROKENNEX
are
hereby REJECTED.

It dismissed SUPERIORs Complaint for Infringement of

Trademark and Unfair Competition with Preliminary Injunction
on the ground that SUPERIOR failed to establish by
preponderance of evidence its claim of ownership over the
KENNEX and PRO KENNEX trademarks . The CA found the
Certificates of Principal and Supplemental Registrations and the
whereas clause of the Distributorship Agreement insufficient to
support SUPERIORs claim of ownership over the disputed
trademarks.

The CA stressed that SUPERIORs possession of the

aforementioned Certificates of Principal Registration does not
conclusively establish its ownership of the disputed trademarks
as dominion over trademarks is not acquired by the fact of
registration alone; at best, registration merely raises a
presumption of ownership that can be rebutted by contrary
evidence. The CA further emphasized that the Certificates of
Supplemental Registration issued in SUPERIORs name do not
even enjoy the presumption of ownership accorded to
registration in the principal register; it does not amount to
a prima facie evidence of the validity of registration or of the
registrants exclusive right to use the trademarks in connection
with the goods, business, or services specified in the certificate

ESSO STANDARD EASTERN, INC., petitioner, vs. THE

HONORABLE COURT OF APPEALS ** and UNITED
CIGARETTE CORPORATION, respondents.
FACTS:
Petitioners Claim:
The complaint alleged that the petitioner had been for many
years engaged in the sale of petroleum products and its
trademark ESSO had acquired a considerable goodwill to such
an extent that the buying public had always taken the trademark
ESSO as equivalent to high quality petroleum products.
Petitioner asserted that the continued use by private respondent
of the same trademark ESSO on its cigarettes was being
carried out for the purpose of deceiving the public as to its
quality and origin to the detriment and disadvantage of its own
products.
Respondents Claim:
In its answer, respondent admitted that it used the
trademark ESSO on its own product of cigarettes, which was
not Identical to those produced and sold by petitioner and
therefore did not in any way infringe on or imitate petitioner's
trademark. Respondent contended that in order that there may
be trademark infringement, it is indispensable that the mark
must be used by one person in connection or competition with
goods of the same kind as the complainant's.
ISSUE:
WHETHER THERE WAS TRADEMARK INFRINGEMENT

From jurisprudence, unfair competition has been defined as the

passing off (or palming off) or attempting to pass off upon the
public of the goods or business of one person as the goods or
business of another with the end and probable effect of
deceiving the public. The essential elements of unfair
competition are (1) confusing similarity in the general
appearance of the goods; and (2) intent to deceive the public
and defraud a competitor.

Jurisprudence also formulated the following true test of unfair

competition: whether the acts of the defendant have the intent
of deceiving or are calculated to deceive the ordinary buyer
making his purchases under the ordinary conditions of the
particular trade to which the controversy relates. One of the
essential requisites in an action to restrain unfair competition is
proof of fraud; the intent to deceive, actual or probable must be
shown before the right to recover can exist.

In the present case, no evidence exists showing that KUNNAN

ever attempted to pass off the goods it sold (i.e. sportswear,
sporting goods and equipment) as those of SUPERIOR. In
addition, there is no evidence of bad faith or fraud imputable to
KUNNAN in using the disputed trademarks. Specifically,
SUPERIOR failed to adduce any evidence to show that
KUNNAN by the above-cited acts intended to deceive the public
as to the identity of the goods sold or of the manufacturer of the
goods sold. In McDonalds Corporation v. L.C. Big Mak Burger,
Inc.,we held that there can be trademark infringement without
unfair competition such as when the infringerdiscloses 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. In this case, no issue of
confusion arises because the same manufactured products are
sold; only the ownership of the trademarks is at issue.

Finally, with the established ruling that KUNNAN is the rightful

owner of the trademarks of the goods that SUPERIOR asserts
are being unfairly sold by KUNNAN under trademarks
registered in SUPERIORs name, the latter is left with no
effective right to make a claim. In other words, with the CAs
final ruling in the Registration Cancellation Case, SUPERIORs
case no longer presents a valid cause of action. For this
reason, the unfair competition aspect of the SUPERIORs case
likewise falls.

HELD:
It is undisputed that the goods on which petitioner uses
the trademark ESSO, petroleum products, and the product of
respondent, cigarettes, are non-competing. But as to whether
trademark infringement exists depends for the most part upon
whether or not the goods are so related that the public may be,
or is actually, deceived and misled that they came from the
same maker or manufacturer.
In the situation before us, the goods are obviously different from
each other with "absolutely no iota of similitude" as stressed in
respondent court's judgment. They are so foreign to each other
as to make it unlikely that purchasers would think that petitioner
is the 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.

ETEPHA, A.G., petitioner, vs. DIRECTOR OF PATENTS

and
WESTMONT
PHARMACEUTICALS,
INC.,
respondents .
(G.R. No. L-20635, March 31, 1966)
FACTS:
Res pondent Wes tmont Pha rma ceuti ca l s , Inc., a New York
corpora tion, sought registration of trademark "Atussin" placed on i ts
"medicinal preparation of expectorant a ntihistaminic, bronchodilator
s edative, ascorbic acid (Vitamin C) used i n the trea tment of cough".
The tra demark is used exclusively i n the Philippines since Ja nua ry 21,
1959.
Peti ti oner, Etepha, A. G., a Li echtens ti n (pri nci pa l i ty) corpora ti on,
objected claiming tha t i t wi l l be da ma ged beca us e Atus s i n i s s o
confusedly s imila r to i ts Pertus s i n us ed on a prepa ra ti on for the
trea tment of coughs , tha t the buyi ng publ i c wi l l be mi s l ed i nto
bel ievi ng tha t Wes tmont's product i s tha t of peti ti oner's whi ch
a l l egedl y enjoys goodwi l l .
The Di rector of Pa tents ruled tha t the tra dema rk ATUSSIN ma y be
regi stered even though PERTUSSIN had been previ ous l y regi s tered
from the s a me offi ce, hence, thi s a ppea l .
ISSUE: Whethe r or not ATUSSIN ma y be regi s tered?
HELD:

We a re to be gui ded by the rul e tha t the va l i di ty of a ca us e for

i nfri ngement i s predicated upon col ora bl e i mi ta ti on. The phra s e
"col orable i mitation" denotes s uch a "close or i ngenious i mitation a s
to be ca l culated to deceive ordinary persons, or s uch a resembl a nce
to the ori gi na l a s to decei ve a n ordi na ry purcha s er, gi vi ng s uch
a ttention a s a purchaser usually gives, and to cause him to purcha s e
the one s uppos i ng i t to be the other.
A pra cti cal a pproach to the problem of similarity or dissimilari ty i s to
go i nto the whole of the two tra demarks pictured i n their ma nner of
di s play. Inspection should be underta ken from the vi ewpoi nt of a
pros pective buyer. Confusion is likely between trademarks, however,
onl y i f their over-all presentations in a ny of the particulars of s ound,
a ppearance, or meaning are s uch a s would lead the purchasing public
i nto believi ng tha t the products to whi ch the ma rks a re a ppl i ed
ema na ted from the s a me s ource.
We concede the pos s i bi l i ty tha t buyers mi ght be a bl e to obta i n
Pertus sin or Attusin without prescription. When this ha ppens , then
the buyer must be one thoroughly familiar with wha t he i ntends to
get, el se he would not ha ve the temeri ty to a s k for a medi ci ne
s pecifically needed to cure a given ailment. In which ca s e, the more
i mprobable i t will be to palm off one for the other. For a person who
purcha s es wi th open eyes i s ha rdl y the ma n to be decei ved.

On Apri l 21, 1993, the Ma kati RTC denied, for l ack of meri t,
res pondents pra yer for the i s s ua nce of a wri t of prel i mi na ry
i njuncti on.

On Augus t

19,

1993,

res pondents

moti on

for

recons i dera ti on wa s deni ed.

On Februa ry 20, 1995, the CA l i kewi s e di s mi s s ed
res pondents peti ti on for revi ew on certi ora ri .

After the tri a l on the meri ts , however, the Ma ka ti RTC,

on November 26, 1998, hel d peti ti oners l i a bl e for, perma nentl y
enjoi ned from commi tti ng tra dema rk i nfri ngement a nd unfa i r
competi ti on wi th res pect to the GALLO tra dema rk.

On a ppeal, the CA a ffirmed the Makati RTCs deci s i on a nd

s ubs equentl y deni ed peti ti oners moti on for recons i dera ti on.

For the reasons gi ven, the a ppea l ed deci s i on of the res pondent
Di rector of Patents gi ving due cours e to the a ppl i ca ti on for the
regi stration of tra demark ATTUSIN is hereby a ffi rmed. Cos t a ga i ns t
peti ti oner. So ordered.

ISSUE:

Whether GALLO ci garettes and GALLO wines were i dentical,

MIGHTY CORPORATION and LA CAMPANA

FABRICA DE TABACO, INC. vs. E.J. GALLO WINERY
and THE ANDRESONS GROUP, INC.

s i mi l a r or rel a ted goods for the rea s on a l one tha t they were
purportedl y forms of vi ce.

HELD:

FACTS:

Wi nes and ci garettes are not identical, s i mi l a r, competi ng or

rel a ted goods .

On Ma rch 12, 1993, res pondents sued petitioners i n the RTCMa ka ti for tra dema rk a nd tra de na me i nfri ngement a nd unfa i r
competition, wi th a prayer for damages a nd preli mi na ry i njuncti on.

In resolving whether goods are related, s evera l fa ctors come

i nto pl a y:

They cl aimed that petitioners adopted the Gallo tradema rk to

the business (and i ts location) to whi ch the goods bel ong

ri de on Gallo Wi nerys a nd Gallo a nd Ernest & Julio Gallo tra demarks

the cl a s s of product to whi ch the good bel ong

es tablis hed reputa ti on a nd popul a ri ty, thus ca us i ng confus i on,

the products quality, quantity, or s ize, including the nature

deception a nd mistake on the part of the purchasing public who ha d

of the pa cka ge, wra pper or conta i ner

a l ways associated Gallo and Ernest and Julio & Gallo tra demarks with

the na ture a nd cos t of the a rti cl es

Ga l l o Wi nerys wi nes .

the descriptive properties, physical attributes or es s enti a l

cha ra cteristics with reference to thei r form, compos i ti on,

In their answer, petitioners alleged, among other a ffi rma ti ve

texture or qua l i ty

defenses that: petitioners Gallo cigarettes a nd Ga l l o Wi nerys wi ne

the purpos e of the goods

were tota l l y unrel a ted products . To wi t:

whether the a rticle is bought for i mmediate cons umpti on,

1. Ga l lo Winerys GALLO tra demark registration certificates covered

wi nes onl y, a nd not ci ga rettes ;
2. GALLO ci ga rettes a nd GALLO wi nes were s old through di fferent

tha t i s , da y-to-da y hous ehol d i tems

the fi el d of ma nufa cture

the conditions under which the a rticle is usually purcha s ed

cha nnel s of tra de;

3. the ta rget market of Gallo Wi nerys wi nes wa s the mi ddl e or
hi gh-income bracket while Gallo ci garette buyers were fa rmers ,

a nd

the a rti cles of the tra de through which the goods flow, how
they a re di s tri buted, ma rketed, di s pl a yed a nd s ol d.

fi s hermen, l a borers a nd other l ow-i ncome workers ;

4. the domina nt fea ture of the Ga l l o ci ga rette wa s the roos ter
devi ce wi th the ma nufa cturers na me cl ea rl y i ndi ca ted a s
MIGHTY CORPORATION, whi l e i n the ca s e of Ga l l o Wi nerys
wi nes, i t was the full names of the founders -owners ERNEST &
JULIO GALLO or jus t thei r s urna me GALLO;

The tes t of fra udulent simulation is to the likelihood of the

deception of some persons i n s ome mea s ure a cqua i nted wi th a n
es tablished design and desirous of purchas i ng the commodi ty wi th
whi ch that design has been associated. The simulation, in order to be
objectionable, must be as a ppea rs l i kel y to mi s l ea d the ordi na ry

i ntelligent buyer who has a need to s upply a nd i s fa mi l i a r wi th the

a rti cl e tha t he s eeks to purcha s e.

broa d, the inevitable conclusion is that i t wa s done del i bera tel y to

decei ve.

The petitioners a re not liable for tra demark i nfri ngement,

unfa i r competi ti on or da ma ges .

WHEREFORE, petition is granted.

DEL MONTE CORPORATION and PHILIPPINE

PACKING CORPORATION vs. COURT OF APPEALS
and
SUNSHINE
SAUCE
MANUFACTURING
INDUSTRIES
G.R. No. L-78325 Ja nua ry 25, 1990

FACTS: Peti ti oner Del Monte Corpora ti on (Del Monte), through i ts

l oca l distributor a nd manufacturer, PhilPack filed an i nfringement of
copyri ght compl a i nt a ga i ns t res pondent Suns hi ne Sa uce
Ma nufacturing Industries (SSMI), also a ma ker of ca ts up a nd other
ki tchen sauces. In i ts compla i nt, Del Monte a l l eged tha t SSMI a re
us i ng bottl es a nd l ogos i denti ca l to the peti ti oner, to whi ch i s
decei vi ng a nd mi s l ea di ng to the publ i c.

In i ts answer, Sunshine a l l eged tha t i t ha d cea s ed to us e the Del

Monte bottle and that its l ogo was substanti a l l y di fferent from the
Del Monte l ogo a nd woul d not confus e the buyi ng publ i c to the
detri ment of the peti ti oners .

The Regional Trial Court of Makati dismissed the compl a i nt. It hel d
tha t there were s ubs ta nti a l di fferences between the l ogos or
tra demarks of the parties nor on the conti nued us e of Del Monte
bottl es. The decision was affirmed i n toto by the Court of Appea l s .

ISSUE: Whether or not SSMI commi tted i nfri ngement a ga i ns t Del

Monte i n the us e of i ts l ogos a nd bottl es .

HELD: Yes . In determining whether two trademarks a re confus i ngl y

s i mi l a r, the two ma rks i n thei r enti rety a s they a ppea r i n the
res pective l abels mus t be cons i dered i n rel a ti on to the goods to
whi ch they a re a ttached; the di s cerni ng eye of the obs erver mus t
focus not onl y on the precogni za nt words but a l s o on the other
fea tures appearing on both l abel s . It ha s been correctl y hel d tha t
s i de-by-s i de compa ri s on i s not the fi na l tes t of s i mi l a ri ty. In
determini ng whether a tra dema rk ha s been i nfri nged, we mus t
cons i der the ma rk a s a whol e a nd not a s di s s ected.

The Court i s a greed that are i ndeed distinctions, but similarities holds
a grea ter wei ght i n thi s ca s e. The Suns hi ne l a bel i s a col ora bl e
i mi tation of the Del Monte tra demark. What is undeniable is the fa ct
tha t when a ma nufacturer prepares to package hi s product, he ha s
before him a boundless choice of words, phrases, colors a nd s ymbols
s ufficient to distinguish his product from the others. Sunshine chos e,
wi thout a reasonable explanation, to use the s ame colors a nd l etters
a s those used by Del Monte though the field of its s el ecti on wa s s o

Wi th regard to the bottle use, Sunshi ne des pi te the ma ny choi ces

a va ilable to i t a nd notwi ths ta ndi ng tha t the ca uti on "Del Monte
Corpora tion, Not to be Refilled" was embos s ed on the bottl e, s ti l l
opted to us e the peti ti oners ' bottl e to ma rket a product whi ch
Phi l pack also produces. This cl early s hows the pri va te res pondent's
ba d faith and its intention to ca pitalize on the l atter's reputation a nd
goodwi l l a nd pa s s off i ts own produ ct a s tha t of Del Monte.