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COURSE/SUBJECT: INTELLECTUAL

PROPERTY LAW
What are the State Policies relating to the protection of
intellectual property?
A: Section 13 The State shall protect and secure the exclusive
rights of scientists, inventors, artists, and other gifted citizens to
their intellectual property and creations, particularly when
beneficial to the people, for such period as may be provided by
law. (1987 Constitution);
SECTION 2 Declaration of State Policy The State recognizes that
an effective intellectual and industrial property system is vital to
the development of domestic and creative activity, facilitates
transfer of technology, attracts foreign investments, and ensures
market access for our products. It shall protect and secure the
exclusive rights of scientists, inventors, artists and other gifted
citizens to their intellectual property and creations, particularly
when beneficial to the people, for such periods as provided in this
Act. (R.A. 8293 Intellectual Property Law of 1997).

TRADEMARKS AND SERVICE MARKS


DEFINITIONS:
[distinguish a trade mark from service mark from a collective mark;
distinguish a trade name from a trade or service mark]
a. Mark any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and
shall include a stamped or marked container of goods.
b.

Collective Mark
b.1. Any visible sign designated as such in the application
for registration;
b.2. Capable of distinguishing the origin or any other
common characteristic, including the quality of goods
or services of different enterprises which use the sign;
b.3. Under the control of the registered owner of the
collective mark.

c.

Trade Name name or designation identifying or


distinguishing an enterprise.

Note: Under the IP Code, it provides for the registration of the


trademarks and NOT of trade names.
FUNCTIONS OF TRADEMARKS:
a. Source-indicating Function;
b. Economic Function;
c. Guarantee Function;
d. Advertisement Function
a. Source-indicating Function ability of the trademarks to
distinguish the product, to which it is affixed, from all other
competing products of other manufacturers. It indicates the source
or origin of the goods on which it is used.
Since trademarks are considered as properties, application
for it or its registration may be assigned or transferred, with or
without transfer of business which uses the trademark.

Sources:

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

b. Economic Function it plays an important role in the vast


marketplace of competing goods, targeting to attrack consumers
or purchasers. The distinctiveness of a trademark plays an
important role in identifying, promoting and in appealing the
product(s) to the purchasers.
c. Guarantee Function it guarantees that the product to
which the trademark is affixed, comes up to a certain standard of
quality and considered as a dinstinctive mark of the products
authenticity as distinguished from those of ohter manufacturers.
Customers rely upon the trademark owners reputation
when selecting the trademarked goods.
d. Advertisement Function the guarantee function of
trademarks gives effect to its advertisement function.
The more widely advertise a branded product is, the more
the courts may concede that it has become distinctive of its
proprietors goods.
Through advertisement, in the broadcast or print media, the
owner of the product is able to establish a nexus between the
trademarked products and the public, in regions where the owner
does not manufacture or sell its own products. Therefore, the
manufacturer may well estabish and earn a reputation in countries
where the trademark owner has itself no established business
connection.
REGISTRABILITY OF TRADEMARKS:
SECTION 123. Registrability.
123.1. A mark CANNOT be registered if it:
a. Consists of immoral, deceptive or scandalous matter, or
matter which may disparage or falsely suggest a connection
with persons, living or dead, institutions, beliefs, or national
symbols, or bring them into contempt or disrepute;
b. Consists of the flag or coat of arms or other insignia of the
Philippines or any of its political subdivisions, or of any foreign
nation, or any simulation thereof;
c. Consists of a name, portrait or signature identifying a
particular living individual except by his written consent, or the
name, signature, or portrait of a deceased President of the
Philippines, during the life of his widow, if any, except by written
consent of the widow;
d. Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in
respect of:
i. The same goods or services, or
ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive
or cause confusion;
e. Is identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent
authority of the Philippines to be well-known internationally

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 1

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
and in the Philippines, whether or not it is registered here, as
being already the mark of a person other than the applicant for
registration, and used for identical or similar goods or services:
Provided, That in determining whether a mark is well-known,
account shall be taken of the knowledge of the relevant sector of
the public, rather than of the public at large, including knowledge
in the Philippines which has been obtained as a result of the
promotion of the mark;
f. Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known in accordance with
the preceding paragraph, which is registered in the Philippines
with respect to goods or services which are not similar to those
with respect to which registration is applied for: Provided, That
use of the mark in relation to those goods or services would
indicate a connection between those goods or services, and the
owner of the registered mark: Provided further, That the interests
of the owner of the registered mark are likely to be damaged by
such use;
g. Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods or
services;

IPO-BLA issued Decision No. 2006-24, holding that the NS D-10


PLUS is confusingly similar to the opposers mark, therefore,
rejecting the trademark application of Abyadang.
Abyadang appealed to the IPO Director General where the latter,
affirming the decision of the IPO-BLA. On appeal to the CA, the
latter denied the motion for lack of merit; hence, petition to the SC
was Abyadangs recourse.
ISSUE:
Whether Abyadangs NS D-10 PLUS is confusingly similar to that
of Berris D-10 80 WP or not, such that the latter can rightfully
prevent the IPO registration of the former.
RULING:
R.A. 8293 DID NOT expressely repeal in its entirety R.A. 166, but
merely provided Sec. 293.1. That Acts and parts of Acts
inconsistent with it were repealed. Only in the instance where a
substantial and irreconcilable conflict is found between the
provisions of R.A. 8293 and of R.A. 166 would the provisions of the
latter deemed repealed.

i. Consists exclusively of signs or of indications that have


become customary or usual to designate the goods or services in
everyday language or in bona fide and established trade practice;

The prima facie presumption brought about by the registration of a


mark may be challenged and overcome in an appropriate action, by
proof of the nullity of the registration or non-use of the mark,
except when excused. Moreover, the presumption may likewise be
defeated by evidence of prior use by another person x x x. This is
because a trademark is a creation of use and belongs to one who
first used it in trade or commerce.

j. Consists exclusively of signs or of indications that may serve in


trade to designate the kind, quality, quantity, intended purpose,
value, geographical origin, time or production of the goods or
rendering of the services, or other characteristics of the goods or
services;

Berris was able to establish that it was using its mark D-10 80 WP
since June 20, 2002, even before it filed for its registration with the
IPO on November 29, 2002, the DAU, which was under oath and
notarized, bearing the stamp of the Bureau of Trademarks of teh
IPO x x x.

k. Consists of shapes that may be necessitated by technical


factors or by the nature of the goods themselves or factors that
affect their intrinsic value;

In determining the similarity or likelihood of the confusion,


jurisprdence has developed tests the Dominancy Test and the
Holistic or Totality Test.

l. Consists of color alone, unless defined by a given form; or

Dominancy Test
a. Focuses on the similarity of the prevalent or dominant
features of the competing trademarks that might casue
confusion, mistake and deception in the mind of the
purchasing public.
b. Duplication or immitation is not necessary;
c. Neither is it required that the mark sought to be registered
suggest an effort to immitate;
d. Given more consideration are the aurala and visual
impressions created by the marks on the buyers of the
goods, giving little weight to factors like prices, quality, sales
outlets, and market segments.

h. Consists exclusively of signs that are generic for the goods or


services that they seek to identify;

m. Is contrary to public order or morality.


DOMINANCY TEST VIS-A-VIS HOLISTIC TEST:
BERRIS AGRICULTURAL CO., INC. vs. NORVY ABDAYANG
FACTS:
Norvy Abyadang (Abdayang) filed with the IPO a trademark
application for the mark NS D-10 PLUS where it was given due
course and was published in the IPO Gazette for opposition.
Almost two months thereafter, Berris Agricultural Co., Inc. (Berris)
filed a verified Notice of Opposition against the mark, allegedly
because the NS D-10 PLUS is similar and/or confusingly similar to
its registered trademark D-10 80 WP with the same active
ingredient (80% Mancozeb) as that of the former mark.

Holistic or Totaity Test


a. Consideration on the entirety of the mark as applied to the
products, including the labels and packaging, in determining
confusing imilarity.
b.

Sources:

The discerning eye of the observer must focus not only on


the predominant words but also on the other features

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 2

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
appearing on both labels so that the observer may draw
conclusion on whether one is confusingly similar to the
other.
Both Berris and Abyadangs makrs on their respective packages, x
x x x that both have a common component which is D-10 is the
dominant feature of the mark. The D-10 being at the beginning
of the mark is waht is most remembered of it.
Applying the Dominancy Test, it cannot be gainsaid that
Abyadangs NS D-10 PLUS is similar to Berris D-10 80 WP that
confusion or mistake is likely to occur. Undeniably, both marks
pertain to the same type of goods. They also belong to the same
classification of goods under R.A. 8293. Both depictions of D-10
as found in both marks, are similar in size, such that this prtion is
what catches the eye of the purhaser. Undeniably, the likelihood of
confusion is present.
The likelihood of confusion and mistake is made more manifest
when the Holistic Test is applied, taking into consideration the
packaging, for both use the ame type of material (foil type) and
have identical color schemes (red, green, white); and the marks are
both predominantly red in color with the same phrase, Broad
Spectrum Fungicide written underneath.
Predominantly, the D-10 buyers of both poducts, may be misled
into thinking that NS D-10 PLUS could be an upgraded
formulation of the D-10 80 WP.
DERMALINE , INC. vs. MYRA PHARMACEUTICALS, INC.
FACTS:
Dermaline, Inc. (Dermaline) filed before the IPO an application for
registration of the trademark DERMALINE DERMALINE, INC.
Few months thereafter, Myra Pharmaceuticals, Inc. (Myra) filed a
verified opposition, claiming that the dominant feature is the term
DERMALINE which is practically identical with its own
DERMALIN x x x.
It asserted that the mark DERMALINE DERMALINE, INC. is aurally
similar to its own mark such that the registration and use of
Dermalines applied mark will enable it to obtain benefit from
Myras reputation, goodwill and advertising and will lead the public
believing that Dermaline is, in any way, connected to Myra. That
even if the subject application was under classification 44 for
various skin treatments, it could still be connected to the
DERMALI mark under classification 5 for pharmaceutical
products, since ultimately, these goods are very closely related.
Dermaline countered that a simple comparison of the trademark
DERMALINE DERMALINE, INC vis-a-vis Myras DERMALIN
trademark would show that they have entirely different
featuresand distinctive presentation, thus it cannot result in
confusion, mistake or deception on the part of the puchasing
public.
The IPO Bureau of Legal Affairs rendered a decision sustaining
Myras opposition pursuant to Sec. 123.1 (d) of R.A. 8293. On
appeal to the Office of the Director General by Dermaline, the
appeal was dismissed for being filed out of time.
Sources:

Dermaline appealed to the CA, but it affirmed and upheld the


order of the IPO Director General.
ISSUE:
Whether CA erred in upholding the IPOs rejection of Dermalines
application for regstration of trademark, or not.
RULING:
As Myra correctly posits, as a registered trademark owner, it has
the right under Sec. 147 of R.A. 8293 to prevent third parties from
using a trademark, or similar signs or containers for goods or
services, without its consent, identical or similar, to its registered
trademark, where such use would result in a likelihood of
confusion.
In rejecting the application of the Dermaline, the IPO used the
dominancy test. It declared that both confusion of goods and
service and confusion of business or of origin were apparent in
both trademarks. x x x The IPO also upheld Myras right under Sec.
138 of R.A. 8293 where the clasification of registration is a prima
facie evidenceof the validity of the registration, registrants
ownership of the mark, and its exclusive right to use the same in
connection witht the goods and those that are related thereto
specified in the certificate.
While there are no set of rules that can be deduced as what
constitutes a dominant feature with respect to the trademarks
applied for registration; usally, what are taken into account are
signs, color, design, peculiar shape or name, or some special, easily
remembered earmarks of the brand that readily attracts and
catches the attention of the ordinary conumer (IPO).
Thus, the public may mistakenly think that Dermaline is connected
to or associated with Myra, such that, considering the current
proliferation of health and beauty products in the market, the
purchasers would likely be misled that Myra has already expanded
its business through Dermaline from merely carrying
pharmaceutical topical applications for the skin to health and
beauty services.
When one applies for registration of a trademark or label which is
almost the same or that very closely, or 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 is intended 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.
COFFEE PARTNERS, INC. vs.
SAN FRANCISCO COFFEE & ROASTERY, INC.
FACTS:
Coffee Partners, Inc. (CPI) is a local corporation engaged in
business of establishing and maintaining coffee shops in the
country. It has a franchise agreement with Coffee Partners, Ltd.
(CPL) for a non-exclusive right to operate coffee shops in the
Philippines using the trademarks designed by CPL such as SAN
FRANCISCO COFFEE.

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 3

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
While, San Francisco Coffee & Roastery, Inc. (SFCRI) is a local
corporation engaged in the wholesale and retail sale of coffee and
with a registered business name with DTI as SAN FRANCISCO
COFFEE & ROASTERY, INC.
SFCRI discovered sometime that the CPI was about to open a
coffee shop under the name SAN FRANCISCO COFFEE in Libis, QC.
SFCRI therefore claims that CPIs shop (SAN FRANCISCO COFFEE)
caused confusion in the minds of the public as it bore a similar
name and it is also engaged in the business of selling coffee. It filed
a complaint with the BLA-IPO for infringement and/or unfair
competition with claim for damages.
CPI maintained that its marked could not be confused with
respondents trade name because of the notable distinctions in
their appearances and that it alleges that it filed an application for
registration of the mark SAN FRANCISCO COFFEE & DEVICE with
the IPO.
The BLA-IPO held that CPIs trademark infringed on respondents
trade name therefore, SFCRI must be protected from infringement
of its trade name since it would cause confusion because of the
exact similarity in sound, spelling, pronunciation, and commercial
impression of the words SAN FRANCISCO which is the dominant
portion of the SFCRIs trade name and CPIs trademark.
On appeal, the Office of the Director General ruled that CPIs use of
trademark SAN FRANCISCO COFFEE did not infringe on
respondents trade name since SFCRI stopped using its trade name
after it entered into a joint venture with Boyd Coffee USA in 1998.
On appeal with the CA, the latter set aside the decision of the
Office of the Director General and sustained the BLA-IPOs
decision.
ISSUE:
Whether CPIs use of the trademark SAN FRANCISCO COFFEE
constitutes infringement of SFCRIs trade name SAN FRANCISCO
COFFEE & ROASTERY, INC. evn if the trade name is not registered
with the IPO.
RULING:
Requisites for Infringement of Unregistered Trade Name:
a. The trademark being infringed is registered in the IPO;
however, in the infringement of trade name, the same need
not be registered.
b. The trademark or trade name is reproduced, counterfeited,
copied, or collorably imitated by the infringer.
c. The infringing mark or trade name is used in connection with
the sale, offering for sale, or advertising of any goods,
business, or services; or the infringing mark or trade name is
applied to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in
connection with such goods, business, or services.
d. The use or application of the infringing mark or trade name is
likely to cause confusion or mistake or to deceive purchasers
or others as to the goods or services themselves or as to the
Sources:

source or origin of such goods or services, or the identity of


such businesses;
e. It is without the consent of the trademark or trade name
owner or the assignee thereof.
Clearly, a trade name need not be registered with the IPO before
an infringement suit may be filed by its owner against the owner of
an infringement trademark. All that is required is that the trade
name is previously used in trade or commerce in the Philippines.
Section 165.2. a. Notwithstanding any laws or regulations
providing for any obligation to register trade names, such names
shall be protected, even prior to or without registration, against
any unlawful act committed by third parties.
b. In particular, any subsequent use of the trade name by a third
party, whether as a trade name or a mark or collective mark, or any
such use of a similar trade name or mark, likely to mislead the
public, shall be deemed unlawful.
Applying either the dominancy or the holisitc test, CPIs SAN
FRANCISCO COFFEE trademark is a clear infringement of SFCRIs
trade name, SAN FRANCISCO COFFEE & ROASTERY, INC. The
descriptive words SAN FRANCISCO COFFEE are precisely the
dominant features of repondents trade name. Petitioner and
respondents 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.
PROSOURCE INTERNATIONAL, INC. vs. HORPHAG RESEARCH
MANAGEMENT, SA
FACTS:
Horphag Research Management, SA (HRM) is a corporation existing
under the laws of Switzerland and owner of the trade mark
PYCNOGENOL. It later discovered that Prosource International, Inc.
(PII) was also distributing a similar food supplement using the mark
PCO-GENOLS since 1996. This prompted HRM to demand
petitioner to cease and desist from using the aforementioned
mark.
Without notifying respondent, petitioner discontinued the use of
and withdrew from the market all products under the name PCOGENOLS. Despite such act, HRM filed a complaint for infringement
of trademark with prayer fro preliminary injunction against
petitioner, praying that the latter cease and desist from using the
brand PCO-GENOLS since 1996.
PII contended that respondent counld not file the infringement
case considering that the latter is not th registered owner of the
trademark PYCNOGENOL but one Horphag Research Limited.
The RTC decided in favor of HRM, where both marks have the same
suffix and were confusingly sounding similar.
On appeal, the CA ruled in favor of HRM and the former explained
that under both test, PCO-GENOLS is deceptively similar to
PYCNOGENOLS.

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 4

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
ISSUE:
Whether the CA erred in affirming the ruling of the RTC that HRMs
PYGNOGENOLS was infringed by PIIs PCO-GENOLS, or not.
RULING:
HRMs complaint for trademark infringement against PII should be
decided in light of the provisions of R.A. 166 for acts committed
until Dec. 31, 1997 and R.A. 8293 for those committed from
January 1, 1998 until June 19, 2000.
Trademark any distinctive word, name, symbol, emblem, sign,
device, or any combination thereof, adopted and used by a
manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt by others.
A trademark deserves protection.
SECTION 155. Remedies; Infringement. Any person who shall,
without the consent of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark or the same container or a
dominant feature thereof in connection with the sale, offering for
sale, distribution, advertising of any goods or services including
other preparatory steps necessary to carry out the sale of any
goods or services on or in connection with which such use is likely
to cause confusion, or to cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a
registered mark or a dominant feature thereof and apply such
reproduction, counterfeit, copy or colorable imitation to labels,
signs, prints, packages, wrappers, receptacles or advertisements
intended to be used in commerce upon or in connection with the
sale, offering for sale, distribution, or advertising of goods or
services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive, shall be liable in a
civil action for infringement by the registrant for the remedies
hereinafter set forth: Provided, That the infringement takes place
at the moment any of the acts stated in Subsection 155.1 or this
subsection are committed regardless of whether there is actual
sale of goods or services using the infringing material. (Sec. 22, R.A.
No 166a)
It is the element of likelihood of confusion that is the gravamen
of trademark infringment.
The trial court and the appellate court applied the Dominancy Test.
Both affirmed that: PYCNOGENOLS and PCOGENOLS have the same
suffix x x x when the two words are pronounced, the sound effects
are confusingly similar not to mention that they are both decribed
by their manufacturers as food supplements.
Although there were dissimilarities in the trademark due to the
differences in the packaging and its prints, purchasers could be
misled into believing that they are the same and/or originates from
a common source and manufacturer. The Court agrees to such
finding of the RTC and CA. Therefore, the issue of trademark
infringement is factual for being meritorious.

Sources:

McDONALDS CORPORATION vs. MACJOY FASTFOOD


CORPORATION
FACTS:
Macjoy Fastfood Corporation (Macjoy), a corporation selling fast
food products in Cebu City filed with the BPTT-IPO an application
for the registration of the trademark MACJOY & DEVICE.
McDonalds Corporation, a corporation organized under the laws
of Delaware, USA opposed against the respondents application
claiming that such trademark so resembles its corporate logo
(Golden Arches) design and its McDONALDs marks such that when
used on identical or related goods, the trademark applied for
would confuse or deceive purchasers into believeing that the
goods originated from the same source or origin.
Macjoy on the other hand averred that the it has used the mark
MACJOY for tha past many years in good faith and has spent
considerable sums of money for extensive promotions x x x.
The IPO ratiocinated that the predominnace of the lette M and
the prefixes Mac/Mc in both the Macjoy and McDonalds marks
lead to the conclusion that there is confusing similarity between
them x x x. Therefore, Macjoys application was denied.
Upon appeal to the CA it favored with MacJoy and against
McDonalds. The justifications are the following:
1. The word MacJoy is written in round script while the
word McDonalds is written in single storke 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 the word McDonalds is written in red,
yellow, and black color combination;
4. The facade of the respective stores of the parties, are
entirely different.
ISSUE:
Whether there is a confusing similarity between the McDonalds
marks of the petitioner and the respondents MACJOY & DEVICE
trademark when it applied to classes 29 ad 30 of the International
Classification of Goods.
RULING:
The Court agrees with the MacJoy that it is entirely unwarranted
for the IPO to consider the prefix Mac as the predominant
feature and the rest of the designs in MacJoys marks as details.
However, in McDonalds Corp. Vs. LC BigMak Burge, Inc., the Court
relied on the dominancy test, rather on the holistic test. Applying
the dominancy test here, both marks are confusingly similar with
each other such that an ordinary purchaser can conclude an
association or relation between the marks.
The prefix Mc and abbreviation of Mac which visually and
aurally catches the attention of the consuming public. Here, the

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 5

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
predominant features such as the M, Mc, and Mac appearing
in the marks of both parties easily attracks the attention of the
would-be cstomers.
Even non-regular customers of both 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 both trademarks are one and the
same, or an affilitate, or under the sponsorship of the other is not
far-fetched.
Since McDonalds marks were registered successively, it is clear
that it ahs duly established its ownership of the mark/s.
When one applies for registration of a trademark or label which is
almost the same or that very closely, or 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.
McDONALDS CORPORATION and MCGEORGE FOOD INDUSTIRES,
INC. vs. MACJOY L.C. BIG MAK BURGER, INC., et. al.
FACTS:
McDonalds own a family of trademarks, including Big Mac mark
for its double-decker hamburger sandwich and applied for the
registration of the same with then PBPTT (now IPO). Pending the
approval of teh application, it introduced its Big Mac sandwiches
in the Philippines in Sept. 1981, PBPTT allowed the registration of
the Big Mac mark in the principal register based on its Home
Registration in the USA.
McGeorge Food Industries (McGeorge) is McDonalds Philippine
franchisee.
L.C. Big Mak Burger Inc. (L.C. Big Mak) applied for the registration
of teh Big Mak mark for its hamburger sandwiches. McDonalds
opposed on the ground that Big Mak was a colorable imitation of
its registered Big Mac mark for the same food products.
Having received no reply from the respondent Dy (Corp. Pres. Of
L.C. Big Mak), McDonalds sued respondents in the RTC for
trademark infringement and unfari competition.
The RTC ruled in favor of McDonalds where the respondent
corporation was liable for infringement and unfair competition.
On appeal with the CA by the respondents, the CA ruled
REVERSING the RTCs decision ordering McDonalds to pay
damages to L.C. Big Mak, ruling that by the definition of a
colorable title, it is not sufficient that a similarity exists in both
names.
ISSUES:
a) Whether L.C. Big Mak used the words Big Mak not only as
part of the corporate name but also as a trademark for their
hamburger products, and
b) Whether L.C. big Mak is laible for trademark infringment and
unfair competition.
Sources:

RULING:
a) The plastic wrappings and plastic bags used by the respondents
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. Since
petitioners complaint was based on facts existing before and
during the hearings on the injunctive writ, the facts established
during those hearings are the proper factual bases for the
disposition of the issues raised herein.
b) CONFUSION OF GOODS vis-a-vis CONFUSION OF BUSINESS
Confusion of Goods (a.k.a. Product Confusion)
- An ordinary prudent purchaser will be induced to purchase
one product in the belief that he was purchasing the other.
Confusion of Business (a.k.a Origin Confusion)
- Though the goods of the other party is different from the
other, the defendants (L.C. Big Mak) products might
reasonably be assumed to originate with the plaintiff
(McDonalds), and the public would then be deceived either
into that belief or into the belief that there is some connection
between the plaintiff (McDonalds) and the defendant (L.C. Big
Mak), which in fact, does not exist.
- This type exists when the products are NOT competing BUT
related enough to produce confusion or affiliation.
L.C. Big Mak used their Big Mak mark on hamburgers, the same
food product that petitioners sell with the use of their registered
mark Big Mac. Whether a hamburger is single, double, or tripledeker, and whether wrapped in plastic or styrofoam, it reamins the
sae hamburger food product. Even respondents use of the Big
Mak mark on non-hamburger food products CANNOT excuse theri
infringement of petitioners registered mark; otherwise, registered
marks will lose their protection under the law.
The totality or holistic test is contrary to the elementary postulate
of law on trademarks and unfair competition that confusing
similarity is to be determined on the basis of visual, aural,
connotative comparisons and overall impressions engendered by
the marks in controversy as they are encountered in the realities of
marketplace.
Applying the dominancy test, respondents use of Big Mak mark
resulted into likelihood of confusion.
Aurally, the two marks are the same, therefore, respondents have
adopted Big Mak not only the dominant but also almost all
features of Big Mac.
McDonalds lack of proof of actual confusion does not negate their
claim of trademark infringement. While proof of actual confusion
is the best evidence of infringement, its absence is
inconsequential.
SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES,
INC. vs. COURT OF APPEALS and CFC CORPORATION
FACTS:

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 6

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
Private respondent CFC Corporation filed with the BPTTT an
application for the registration of the trademark "FLAVOR
MASTER" for instant coffee.

therefore, may be legally protected. Rather, the term "MASTER" is


a suggestive term brought about by the advertising scheme of
Nestle.

Petitioner Societe Des Produits Nestle, S.A., a Swiss company


registered under Swiss laws and domiciled in Switzerland, filed an
unverified Notice of Opposition claiming that the trademark of
CFCs product is "confusingly similar to its trademarks for coffee
and coffee extracts, to wit: MASTER ROAST and MASTER BLEND."

GENERIC TERMS constitute "the common descriptive name of an


article or substance," or comprise the "genus of which the
particular product is a species," or are "commonly used as the
name or description of a kind of goods," or "imply reference to
every member of a genus and the exclusion of individuating
characters," or "refer to the basic nature of the wares or services
provided rather than to the more idiosyncratic characteristics of a
particular product," and are not legally protectable.

A verified Notice of Opposition was filed by Nestle Philippines, Inc.,


a Philippine corporation and a licensee of Societe Des Produits
Nestle S.A., claiming that the use, if any, by CFC of the trademark
FLAVOR MASTER and its registration would likely cause confusion
in the trade; or deceive purchasers and would falsely suggest to the
purchasing public a connection in the business of Nestle, as the
dominant word present in the three (3) trademarks is "MASTER";
or that the goods of CFC might be mistaken as having originated
from the latter.

SUGGESTIVE TERMS require "imagination, thought and


perception to reach a conclusion as to the nature of the goods."
Such terms, "which subtly connote something about the product,"
are eligible for protection in the absence of secondary meaning.
They involve "an element of incongruity,""figurativeness," or "
imaginative effort on the part of the observer."

CFC argued that its trademark, FLAVOR MASTER, is not confusingly


similar with the formers trademarks, MASTER ROAST and MASTER
BLEND, alleging that, "except for the word MASTER (which cannot
be exclusively appropriated by any person for being a descriptive
or generic name), the other words that are used respectively with
said word in the three trademarks are very different from each
other x x x.

The term "MASTER", therefore, has acquired a certain connotation


to mean the coffee products MASTER ROAST and MASTER BLEND
produced by Nestle [based on the advertising schemes of Nestle
represented by Robert Jaworski and Atty. Ric Puno, Jr.]. As such,
the use by CFC of the term "MASTER" in the trademark for its
coffee product FLAVOR MASTER is likely to cause confusion or
mistake or even to deceive the ordinary purchasers.

BPTTT denied CFCs application for registration. CFC elevated the


matter to the Court of Appeals. The latter ruled, reversing and
setting aside the decision of the Bureau of Patents, Trademarks
and Technology Transfer (BPTTT) and ordered the Director of
Patents to approve CFCs application:

In closing, it may not be amiss to quote the case of American Chicle


Co. v. Topps Chewing Gum, Inc., to wit:

That while the contending marks depict the same product, the
glaring dissimilarities in their presentation far outweigh and dispel
any aspect of similitude. CFCs and appellees labels are entirely
different in size, background, colors, contents and pictorial
arrangement.
ISSUE:
Whether the trademark FLAVOR MASTER is a colorable imitation of
the trademarks MASTER ROAST and MASTER BLEND.
RULING:

EMERALD GARMENT MANUFACTURING CORPORATIO vs. HON.


COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND
TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC.
FACTS:

The application of the totality or holistic test is improper since the


ordinary purchaser would not be inclined to notice the specific
features, similarities or dissimilarities, considering that the product
is an inexpensive and common household item. As such, if the
ordinary purchaser is "undiscerningly rash", then he would not
have the time nor the inclination to make a keen and perceptive
examination of the physical discrepancies in the trademarks of the
products in order to exercise his choice.
The Court agrees with the BPTTT when it applied the test of
dominancy and held tha it is sufficiently established that the word
MASTER is the dominant feature of opposers mark.
The word "MASTER" is neither a generic nor a descriptive term. As
such, said term can not be invalidated as a trademark and,
Sources:

Why it should have chosen a mark that had long been employed
by [plaintiff] and had become known to the trade instead of
adopting some other means of identifying its goods is hard to see
unless there was a deliberate purpose to obtain some advantage
from the trade that [plaintiff] had built up. Indeed, it is generally
true that, as soon as we see that a second comer in a market has,
for no reason that he can assign, plagiarized the "make-up" of an
earlier comer, we need no more; . . . [W]e feel bound to compel
him to exercise his ingenuity in quarters further afield.

H.D. Lee Co., Inc., a foreign corporation organized under the laws
of Delaware, U.S.A., filed with the BPTTT a Petition for Cancellation
of Registration for the trademark "STYLISTIC MR. LEE" issued in the
name of petitioner Emerald Garment Manufacturing Corporation, a
domestic corporation organized and existing under Philippine laws.
["so closely resembled H.D. Lees own trademark, 'LEE' as
previously registered and used in the Philippines, and not
abandoned. x x x ]
H.D. Lee averred that Emeralds trademark "so closely resembled
its own trademark, 'LEE' as previously registered and used in the
Philippines, and not abandoned, x x x to cause confusion, mistake
and deception on the part of the purchasing public as to the origin
of the goods."

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 7

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
Emerald contended that its trademark was entirely and
unmistakably different from that of private respondent and that its
certificate of registration was legally and validly granted.
Director of Patents found private respondent to be the prior
registrant of the trademark "LEE" in the Philippines and that it had
been using said mark in the Philippines; and in using the test of
dominancy, declared that petitioner's trademark was confusingly
similar to private respondent's 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.
On appeal by Emerald, the Court of Appeals promulgated its
decision affirming the decision of the Director of Patents in all
respects.
ISSUE:
Whether or not Emeralds trademark "STYLISTIC MR. LEE" is
confusingly similar with the H.D. Lees trademarks "LEE or
LEERIDERS, LEE-LEENS and LEE-SURES.
RULING:
COLORABLE IMITATION refers to such similarity in form, content,
words, sound, meaning, special arrangement, or general
appearance of the trademark or tradename with that of the other
mark or tradename in their over-all presentation or in their
essential, substantive and distinctive parts as would likely mislead
or confuse persons in the ordinary course of purchasing the
genuine article. It does not mean such similitude as amounts to
identity. Nor does it require that all the details be literally copied.
Applying the tests to the present controversy x x x, the Court
considered the trademarks involved as a whole and rule that
Emerlads "STYLISTIC MR. LEE" is not confusingly similar to private
H.D. Lees "LEE" trademark.
The products involved are various kinds of jeans. These are not
your ordinary household items. Accordingly, the casual buyer is
predisposed to be more cautious and discriminating in and would
prefer to mull over his purchase. Confusion and deception, then, is
less likely.
As a general rule, an ordinary buyer does not exercise as much
prudence in buying an article for which he pays a few centavos as
he does in purchasing a more valuable thing. Expensive and
valuable items are normally bought only after deliberate,
comparative and analytical investigation. But mass products, low
priced articles in wide use, and matters of everyday purchase
requiring frequent replacement are bought by the casual consumer
without great care. . . .
ORDINARY PURCHASER is the "ordinarily intelligent buyer"
considering the type of product involved.
He is one "accustomed to buy, and therefore to some extent
familiar with, the goods in question.
The test is not found in the deception, or the possibility of
deception, of the person who knows nothing about the design
which has been counterfeited, and who must be indifferent
Sources:

between that and the other. The simulation, in order to be


objectionable, must be such as appears likely to mislead the
ordinary intelligent buyer who has a need to supply and is familiar
with the article that he seeks to purchase.
"LEE" is primarily a surname. Private respondent cannot, therefore,
acquire exclusive ownership over and singular use of said term.
. . . It has been held that a personal name or surname may not be
monopolized as a trademark or tradename as against others of the
same name or surname. For in the absence of contract, fraud, or
estoppel, any man may use his name or surname in all legitimate
ways.
The Court is constrained to agree with petitioner's contention that
private respondent failed to prove prior actual commercial use of
its "LEE" trademark in the Philippines before filing its application
for registration with the BPTTT and hence, has not acquired
ownership over said mark.
Actual use in commerce in the Philippines is an essential
prerequisite for the acquisition of ownership over a trademark
pursuant to Sec. 2 and 2-A of the Philippine Trademark Law (R.A.
No. 166)
A foreign corporation may have the capacity to sue for
infringement irrespective of lack of business activity in the
Philippines on account of Section 21-A of the Trademark Law but
the question of whether they have an exclusive right over their
symbol as to justify issuance of the controversial writ will depend
on actual use of their trademarks in the Philippines in line with
Sections 2 and 2-A of the same law (R.A. 166). Adoption is not use.
The underlying reason for all these is that purchasers have come to
understand the mark as indicating the origin of the wares. Flowing
from this is the trader's right to protection in the trade he has built
up and the goodwill he has accumulated from use of the
trademark.
H.V. Lee was the first registrant, yet it failed to fully substantiate its
claim that it used in trade or business in the Philippines the subject
mark; it did not present proof to invest it with exclusive,
continuous adoption of the trademark which should consist among
others, of considerable sales since its first use.
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.
A decision was rendered by the trial Court, dismissing SMC's
complaint because ABI "has not committed trademark
infringement or unfair competition against" SMC. SMC appealed to
the Court of Appeals and the latter reversed the trial court.
ISSUE:

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 8

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
Whether ABI infringes SMC's trademark: San Miguel Pale Pilsen
with Rectangular Hops and Malt Design, and thereby commits
unfair competition against the latter.
RULING:
This definition of infringement implies that only registered
trademarks, trade names and service marks are protected against
infringement or unauthorized use by another or others. The use of
someone else's registered trademark, trade name or service mark
is unauthorized, hence, actionable, if it is done "without the
consent of the registrant."
Infringement is determined by the "test of dominancy" rather than
by differences or variations in the details of one trademark and of
another. It is "similarity in the dominant features of the
trademarks."Similarity in size, form and color, while relevant, is not
conclusive.
If the competing trademark contains the main or essential or
dominant features of another, and confusion and deception is
likely to result, infringement takes place. Duplication or imitation is
not necessary; nor is it necessary that the infringing label should
suggest an effort to imitate.
The trial court perceptively observed that the word "BEER" does
not appear in SMC's trademark, just as the words "SAN MIGUEL"
do not appear in ABI's trademark. Hence, there is absolutely no
similarity in the dominant features of both trademarks.
Neither in sound, spelling or appearance can BEER PALE PILSEN be
said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one
who purchases.
BEER PALE PILSEN can possibly be deceived that it is SAN MIGUEL
PALE PILSEN. No evidence whatsoever was presented by SMC
proving otherwise.
Besides the dissimilarity in their names, they have other
dissimilarities in the trade dress or appearance of the competing
products:
xxx

xxx

xxx

(3) The names of the manufacturers are prominently printed on


their respective bottles. SAN MIGUEL PALE PILSEN is "Bottled by
the San Miguel Brewery, Philippines," whereas BEER PALE PILSEN is
"Especially brewed and bottled by Asia Brewery Incorporated,
Philippines."
xxx

xxx

xxx

(5) The back of the SAN MIGUEL PALE PILSEN bottle carries the
SMC logo, whereas the BEER PALE PILSEN bottle has no logo.
xxx

xxx

xxx

(7) Finally, there is a substantial price difference between BEER


PALE PILSEN and SAN MIGUEL PALE PILSEN. One who pays only
P4.25 for a bottle of beer cannot expect to receive San Miguel Pale
Pilsen from the storekeeper or bartender.
The fact that the words pale pilsen are part of ABI's trademark
does not constitute an infringement of SMC's trademark: SAN
Sources:

MIGUEL PALE PILSEN, for "pale pilsen" are generic words


descriptive of the color ("pale"), of a type of beer ("pilsen").
The words "pale pilsen" may not be appropriated by SMC for its
exclusive use even if they are part of its registered trademark. x x x
No one may appropriate generic or descriptive words. They belong
to the public domain.
The true test is whether in themselves, and as they are commonly
used by those who understand their meaning, they are reasonably
indicative and descriptive of the thing intended. A descriptive word
may be admittedly distinctive, especially if the user is the first
creator of the article. It will, however, be denied protection, not
because it lacks distinctiveness, but rather because others are
equally entitled to its use.
UNFAIR COMPETITION is the employment of deception or any
other means contrary to good faith by which a person shall pass off
the goods manufactured by him or in which he deals, or his
business, or services, for those of another who has already
established goodwill for his similar goods, business or services, or
any acts calculated to produce the same result. (Sec. 29, Republic
Act No. 166, as amended.)
The provision, Sec. 29, further enumerates the more common ways
of committing unfair competition.
The use of ABI of the steinie bottle, similar but not identical to the
SAN MIGUEL PALE PILSEN bottle, is not unlawful. As pointed out by
ABI's counsel, SMC did not invent but merely borrowed the steinie
bottle from abroad and it claims neither patent nor trademark
protection for that bottle shape and design.
SMC's being the first to use the steinie bottle does not give SMC a
vested right to use it to the exclusion of everyone else. Being of
functional or common use, and not the exclusive invention of any
one, it is available to all who might need to use it within the
industry.
There is no confusing similarity between the competing beers for
the name of one is "SAN MIGUEL" while the competitor is plain
"BEER" and the points of dissimilarity between the two outnumber
their points of similarity.
Petitioner ABI has neither infringed SMC's trademark nor
committed unfair competition with the latter's SAN MIGUEL PALE
PILSEN product. While its BEER PALE PILSEN admittedly competes
with the latter in the open market, that competition is neither
unfair nor fraudulent. Hence, we must deny SMC's prayer to
suppress it.
FRUIT OF THE LOOM, INC. vs. COURT OF APPEALS and GENERAL
GARMENTS CORPORATION
FACTS:
Petitioner, a corporation duly organized and existing under the
laws of the State of Rhode Island, United States of America, is the
registrant of a trademark, FRUIT OF THE LOOM.
Private respondent, a domestic corporation, is the registrant of a
trademark FRUIT FOR EVE.

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 9

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
Petitioner filed before the lower court, a complaint for
infringement of trademark and unfair competition against the
herein private respondent principally alleging that private
respondent's trademark FRUIT FOR EVE is confusingly similar to its
trademark FRUIT OF THE LOOM used also on women's panties and
other textile products. Furthermore, that the color get-up and
general appearance of private respondent's hang tag consisting of
a big red apple is a colorable imitation to the hang tag of
petitioner.

The Court is impressed more by the dissimilarities than by the


similarities appearing therein. The Court holds that the trademarks
FRUIT OF THE LOOM and FRUIT FOR EVE do not resemble each
other as to confuse or deceive an ordinary purchaser. The ordinary
purchaser must be thought of as having, and credited with, at least
a modicum of intelligence.

After trial, judgment was rendered by the lower court in favor of


herein petitioner. On appeal, the Court of Appeals, rendered its
questioned decision reversing the judgment of the lower court and
dismissing herein petitioner's complaint.

Cluett Peabody Co., Inc. (a New York corporation) of the filed a


case against Amigo Manufacturing Inc. (a Philippine corporation)
for cancellation of trademark is [respondent's] claim of exclusive
ownership (as successor in interest of Great American Knitting
Mills, Inc.) of the following trademark and devices, as used on
men's socks:

ISSUE:
Whether or not private respondent's trademark FRUIT FOR EVE and
its hang tag are confusingly similar to petitioner's trademark FRUIT
OF THE LOOM and its hang tag so as to constitute an infringement
of the latter's trademark rights and justify the cancellation of the
former.
RULING:
By mere pronouncing the two marks, it could hardly be said that it
will provoke confusion, as to mistake one for the other. Standing
by itself, FRUIT OF THE LOOM is wholly different from FRUIT FOR
EVE.

AMIGO MANUFACTURING, INC. vs. CLUETT PEABODY CO., INC.


FACTS:

a) GOLD TOE;
b) DEVICE, representation of a sock and magnifying glass on the toe
of a sock;
c) DEVICE, consisting of a 'plurality of gold colored lines arranged in
parallel relation within a triangular area of toe of the stocking and
spread from each other by lines of contrasting color of the major
part of the stocking; and
d) LINENIZED

The Court 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.

On the other hand, [petitioner's] trademark and device 'GOLD TOP,


Linenized for Extra Wear' has the dominant color 'white' at the
center and a 'blackish brown' background with a magnified design
of the sock's garter, and is labeled 'Amigo Manufacturing Inc.,
Mandaluyong, Metro Manila, Made in the Philippines'.

As to the design and coloring scheme of the hang tags, the Court
believes that while there are similarities in the two marks like the
red apple at the center of each mark, the Court also fond
differences or dissimilarities which are glaring and striking to the
eye:

In the Patent Office, the decision under appeal, this was adversely
against the respondent, Amigo Manufacturing, Inc. On appeal, the
CA, agreed with the Director of Patents that there is hardly any
variance in the appearance of the marks 'GOLD TOP' and 'GOLD
TOE' since both show a representation of a man's foot wearing a
sock, and the marks are printed in identical lettering.

1. The shape of petitioner's hang tag is round with a base that


looks like a paper rolled a few inches in both ends; while that of
private respondent is plain rectangle without any base.

ISSUE:

2. The designs differ. Petitioner's trademark is written in almost


semi-circle while that of private respondent is written in straight
line in bigger letters than petitioner's. Private respondent's tag has
only an apple in its center but that of petitioner has also clusters of
grapes that surround the apple in the center.
3. The colors of the hang tag are also very distinct from each other.
Petitioner's hang tag is fight brown while that of respondent is pink
with a white colored center piece.
The apples which are the only similarities in the hang tag are
differently colored.
Petitioner's apple is colored dark red, while that of private
respondent is light red.
Sources:

Whether or not the Court of Appeals erred in affirming the findings


of the Director of Patents that petitioner's trademark [was]
confusingly similar to respondent's trademarks.
Whether or not the Court of Appeals erred in applying the Paris
Convention in holding that respondent had an exclusive right to the
trademark 'gold toe' without taking into consideration the absence
of actual use in the Philippines.
RULING:
The Petition has no merit. Petitioner contends that the claim of
respondent that it had been using the "Gold Toe" trademark at an
earlier date was not substantiated.
Based on the evidence presented, the Court concurs that
respondent had actually used the trademark and the devices in
question prior to petitioner's use of its own.

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 10

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
The registration of the above marks in favor of respondent
constitutes prima facie evidence, which petitioner failed to
overturn satisfactorily, of respondent's ownership of those marks,
the dates of appropriation and the validity of other pertinent facts
stated therein (Section 20, R.A. 166).
Petitioner points out that the director of patents erred in its
application of the idem sonans rule. It avers that since the words
gold and toe are generic, respondent has no right to their exclusive
use.
The Bureau of Patents, however, did not rely on the idem sonans
test alone in arriving at its conclusion.
Applying the tests of idem sonans, the mark 'GOLD TOP & DEVICE'
is confusingly similar with the mark 'GOLD TOE'. The difference in
sound occurs only in the final letter at the end of the marks. For
the same reason, hardly is there any variance in their appearance.
'GOLD TOE' and 'GOLD TOP' are printed in identical lettering. Both
show [a] representation of a man's foot wearing a sock.
'GOLD TOP' blatantly incorporates petitioner's 'LINENIZED' which
by itself is a registered mark." The Bureau considered the drawings
and the labels, the appearance of the labels, the lettering, and the
representation of a man's foot wearing a sock. Obviously, its
conclusion is based on the totality of the similarities between the
parties' trademarks and not on their sounds alone.
In the present case, a resort to either the Dominancy Test or the
Holistic Test shows that colorable imitation exists between
respondent's "Gold Toe" and petitioner's "Gold Top." A glance at
petitioner's mark shows that it definitely has a lot of similarities
and in fact looks like a combination of the trademark and devices
that respondent has already registered; namely, "Gold Toe,"
therepresentation of a sock with a magnifying glass, the "Gold Toe"
representation and "linenized."
Petitioner cannot therefore ignore the fact that, when compared,
most of the features of its trademark are strikingly similar to those
of respondent.
As to the third issue, respondent registered its trademarks under
the principal register, which means that the requirement of prior
use had already been fulfilled. Since the trademark was
successfully registered, there exists a prima facie presumption of
the correctness of the contents thereof, including the date of first
use. Petitioner has failed to rebut this presumption.
SKECHERS, U.S.A., INC. vs. INTER PACIFIC INDUSTRIAL TRADING
CORP., et. al.

RTC issued an Order quashing the search warrants and directing


the NBI to return the seized goods due to the glaring differences
such that an ordinary prudent purchaser would not likely be misled
or confused in purchasing the wrong article.
On appeal, the CA issued a Decision affirming the ruling of the RTC.
Skechers filed a petition in the SC, and on November 30, 2006, the
Court rendered a Decision dismissing the petition.
ISSUE:
Whether or not respondent (Inter Pacific) is guilty of trademark
infringement.
RULING:
The essential element of infringement under R.A. No. 8293 is that
the infringing mark is likely to cause confusion.
Applying the Dominancy Test to the case at bar, the use of the
stylized "S" by respondent in its Strong rubber shoes infringes on
the mark already registered by Skechers USA with the IPO.
The dominant feature of the trademark is the stylized "S" as it is
precisely the stylized "S" which catches the eye of the purchaser.
Thus, even if respondent did not use an oval design, the mere fact
that it used the same stylized "S", the same being the dominant
feature of petitioners trademark, already constitutes infringement
under the Dominancy Test.
Indubitably, the likelihood of confusion is present as purchasers
will associate the respondents use of the stylized "S" as having
been authorized by petitioner or that respondents product is
connected with petitioners business.
Both the RTC and the CA applied the Holistic Test in ruling that
respondent had not infringed petitioners trademark. While there
may be dissimilarities between the appearances of the shoes, such
dissimilarities do not outweigh the stark and blatant similarities in
their general features.
The dissimilarities between the shoes are indubitable that
respondents products will cause confusion and mistake in the eyes
of the public. There is therefore colorable immitation.
The features and overall design are so similar and alike that
confusion is highly likely. Even if not all the details are identical, as
long as the general appearance of the two products, are such that
any ordinary purchaser would be deceived, the imitator should be
liable. Neither can the difference in price be a complete defense in
trademark infringement.
VICTORIO P. DIAZ vs. PEOPLE OF THE PHILIPPINES and LEVI
STRAUSS [PHILS.], INC.

FACTS:
Skechers filed with RTC of Manila an application for the issuance of
search warrants against an outlet and warehouse operated by Inter
Pacific for infringement of trademark under Section 155, in relation
to Section 170 of Republic Act No. 8293.
Two search warrants were issued by the RTC and were served on
the premises of respondents. As a result of the raid, more than
6,000 pairs of shoes bearing the "S" logo were seized, which was
later on countered through a motion to quash by the respondent.
Sources:

FACTS:
The Department of Justice filed two informations in the RTC
charging Diaz with violation of Section 155, in relation to Section
170, of Republic Act No. 8293 where the abovenamed accused,
with criminal intent to defraud Levis Strauss (Phil.) Inc.
(hereinafter referred to as LEVIS), intentionally engaged in
commerce by reproducing, counterfeiting, copying and colorably

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 11

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
imitating Levis registered trademarks or dominant features, which
likely caused confusion, mistake, and /or deceived the general
consuming public, without the consent, permit or authority of the
registered owner, LEVIS.
Diaz stated that he did not manufacture Levis jeans, and that he
used the label "LS Jeans Tailoring" in the jeans that he made and
sold; that the label "LS Jeans Tailoring" was registered with the
Intellectual Property Office; x x x; that the jeans he produced were
easily recognizable because the label "LS Jeans Tailoring"; and that
the leather patch on his jeans had two buffaloes, not two horses.
RTC rendered its decision finding Diaz guilty as charged. Diaz
appealed, but the CA dismissed the appeal on July 17, 2007 on the
ground that Diaz had not filed his appellants brief on time despite
being granted his requested several extension periods.
ISSUE:
Whether the CA properly dismissed the appeal of Diaz due to the
late filing of his appellants brief.
RULING:
The records reveal that Diazs counsel thrice sought an extension of
the period to file the appellants brief. Notwithstanding the
liberality of the CA, the counsel did not literally comply, filing the
appellants brief 18 days beyond the third extension period. The
failure to file the appellants brief on time rightly deserved the
outright rejection of the appeal.
Despite the CA being probably right in dismissing the excuses of
oversight and excusable negligence tendered by Diazs counsel to
justify the belated filing of the appellants brief as unworthy of
serious consideration, Diaz should not be made to suffer the dire
consequence.
The elements of the offense of trademark infringement under the
Intellectual Property Code are, therefore, the following:
1. The trademark being infringed is registered in the Intellectual
Property Office;
2. The trademark is reproduced, counterfeited, copied, or colorably
imitated by the infringer;
3. The infringing mark is used in connection with the sale, offering
for sale, or advertising of any goods, business or services; or the
infringing mark is applied to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon
or in connection with such goods, business or services;
4. The use or application of the infringing mark is likely to cause
confusion or mistake or to deceive purchasers or others as to the
goods or services themselves or as to the source or origin of such
goods or services or the identity of such business; and
5. The use or application of the infringing mark is without the
consent of the trademark owner or the assignee thereof.
The holistic test is applicable here considering that the herein
criminal cases also involved trademark infringement in relation to
jeans products.
Sources:

The consuming public knew that the original LEVIS 501 jeans were
under a foreign brand and quite expensive. Such jeans could be
purchased only in malls or boutiques as ready-to-wear items, and
were not available in tailoring shops like those of Diazs as well as
not acquired on a "made-to-order" basis. Under the circumstances,
the consuming public could easily discern if the jeans were original
or fake LEVIS 501, or were manufactured by other brands of jeans.
Confusion and deception were remote.
Diaz used the trademark "LS JEANS TAILORING" for the jeans he
produced and sold in his tailoring shops. His trademark was visually
and aurally different from the trademark "LEVI STRAUSS & CO"
appearing on the patch of original jeans under the trademark
LEVIS 501.
The customers of the private complainant are mall goers belonging
to class A and B market group while that of the accused are those
who belong to class D and E market who can only afford Php 300
for a pair of made-toorder pants.
LS JEANS TAILORING" was a registered trademark of Diaz. He had
registered his trademark prior to the filing of the present cases.
The Intellectual Property Office would certainly not have allowed
the registration had Diazs trademark been confusingly similar with
the registered trademark for LEVIS 501 jeans.
IDENTICAL OR RELATED GOODS AND CONFUSION OF BUSINESS:
MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO,
INC. vs. E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC.
FACTS:
Gallo Winery is a foreign corporation not doing business in the
Philippines but organized and existing under the laws of California,
USA, where all its wineries are located, under different registered
trademarks, including the GALLO and ERNEST & JULIO GALLO wine
trademarks.
Mighty Corporation and La Campana and their sister company,
Tobacco Industries of the Philippines (Tobacco Industries), are
engaged in tobacco products for which they have been using the
GALLO cigarette trademark.
Subsequently, La Campana authorized Mighty Corporation to
manufacture and sell cigarettes bearing the GALLO trademark.
Respondents sued petitioners in the Makati RTC for trademark and
tradename infringement and unfair competition, and charged
petitioners with violating Article 6 of the Paris Convention for the
Protection of Industrial Property and RA 166 (Trademark Law),
specifically, Sections 22, 23, 20, 29, 30, and 37; that petitioners
adopted the GALLO trademark to ride on GALLO and ERNEST &
JULIO GALLO trademarks established reputation and popularity.
The Makati RTC denied, for lack of merit, respondents prayer for
the issuance of a writ of preliminary injunction; that respondents
wines and petitioners cigarettes were not related goods. On
appeal, the CA affirmed the Makati RTCs denial.
the Makati RTC, subsequently held petitioners liable for
committing trademark infringement and unfair competition with

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 12

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
respect to the GALLO trademark. On appeal, the CA affirmed the
Makati RTC decision.
ISSUE:
[b] Whether or not GALLO cigarettes and GALLO wines were
identical, similar or related goods;
[d] Whether or not petitioners were liable for trademark
infringement and unfair competition, and damages.
RULING:
DISTINCTIONS BETWEEN
UNFAIR COMPETITION:

TRADEMARK

INFRINGEMENT

AND

TRADEMARK INFRINGEMENT
UNFAIR COMPETITION
A person shall not be permitted to misrepresent his goods or
his business as the goods or business of another.
More limited;
Broader and more inclusive.
The unauthorized use of a
trademark;

The passing off of one's


goods as those of another;

Fraudulent
unnecessary;

Fraudulent
essential;

intent

Registration
necessary.

is

intent

is

Prior registration of the


trademark is a prerequisite

is
not

TWO TYPES OF CONFUSION IN TRADEMARK INFRINGEMENT:


a.

b.

CONFUSION OF GOODS prudent purchaser is induced to


purchase one product in the belief that he is purchasing
another, in which case defendants goods are then bought
as the plaintiffs and its poor quality reflects badly on the
plaintiffs reputation.
CONFUSION OF BUSINESS goods of the parties are
different but the defendants product can reasonably
(though mistakenly) be assumed to originate from the
plaintiff, thus deceiving the public into believing that there is
some connection between the plaintiff and defendant
which, in fact, does not exist.

In summary, the Paris Convention protects well-known trademarks


only, while the Trademark Law protects all trademarks, whether
well-known or not, provided that they have been registered and
are in actual commercial use in the Philippines.
Under both the Paris Convention and the Trademark Law, the
protection of a registered trademark is limited only to goods
identical or similar to those in respect of which such trademark is
registered and only when there is likelihood of confusion.
Under both laws, the time element in commencing infringement
cases is material in ascertaining the registrants express or implied
consent to anothers use of its trademark or a colorable imitation
thereof.
The actual commercial use of the GALLO wine trademark was
subsequent to its registration in 1971 and to Tobacco Industries
commercial use of the GALLO cigarette trademark in 1973,
Sources:

respondents never enjoyed the exclusive right to use the GALLO


wine trademark to the prejudice of Tobacco Industries and its
successors-in-interest, herein petitioners, either under the
Trademark Law or the Paris Convention.
GALLO trademark registration certificates in the Philippines and in
other countries expressly state that they cover wines only, without
any evidence or indication that registrant Gallo Winery expanded
or intended to expand its business to cigarettes.
Whether a trademark causes confusion and is likely to deceive the
public hinges on "colorable imitation."
The GALLO mark appears to be a fanciful and arbitrary mark for the
cigarettes as it has no relation at all to the product but was chosen
merely as a trademark due to the fondness for fighting cocks of the
son of petitioners president. On the side of the GALLO cigarette
packs are the words "MADE BY MIGHTY CORPORATION.
On the other hand, GALLO Winerys wine and brandy labels are
diverse. Moreover, on the labels of Gallo Winerys wines are
printed the words "VINTED AND BOTTLED BY ERNEST & JULIO
GALLO, MODESTO, CALIFORNIA.
The many different features like color schemes, art works and
other markings of both products drown out the similarity between
them
Confusion of goods is evident where the litigants are actually in
competition; but confusion of business may arise between noncompeting interests as well.
In resolving whether goods are related, several factors
come into play:
(a) the business (and its location) to which the goods belong
(b) the class of product to which the goods belong
(c) the product's quality, quantity, or size, including the nature of
the package, wrapper or container
(d) the nature and cost of the articles
(e) the descriptive properties, physical attributes or essential
characteristics with reference to their form, composition, texture
or quality
(f) the purpose of the goods
(g) whether the article is bought for immediate consumption, that
is, day-to-day
household items
(h) the fields of manufacture
(i) the conditions under which the article is usually purchased and
(j) the channels of trade through which the goods flow, how they
are distributed, marketed, displayed and sold.
Petitioners use of the GALLO cigarette trademark is not likely to
cause confusion or mistake, or to deceive the "ordinarily intelligent
buyer" of either wines or cigarettes or both as to the identity of the
goods, their source and origin, or identity of the business of

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 13

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
petitioners and respondents. Obviously, wines and cigarettes are
not identical or competing products. Neither do they belong to the
same class of goods.

Here, the products involved are so unrelated that the public will
not be misled that there is the slightest nexus between petitioner
and the goods of private respondent.

The petitioners never attempted to pass off their cigarettes as


those of respondents. There is no evidence of bad faith or fraud
imputable to petitioners; not liable for trademark infringement,
unfair competition or damages.

In cases of confusion of business or origin, the question that usually


arises is whether the respective goods or services of the senior
user and the junior user are so related as to likely cause confusion
of business or origin, and thereby render the trademark or
tradenames confusingly similar.

CANON KABUSHIKI KAISHA vs. COURT OF APPEALS and NSR


RUBBER CORPORATION
FACTS:
NSR Rubber Corporation (private respondent) filed an application
for registration of the mark CANON for sandals in the BPTTT.
A Verified Notice of Opposition was filed by petitioner, duly
organized and existing under the laws of Japan, alleging that it will
be damaged by the registration of the trademark CANON in the
name of private respondent.
Petitioner moved to declare private respondent in default for its
failure to file its answer within the prescribed period. The BPTTT
then declared private respondent in default and allowed petitioner
to present its evidence ex-parte.
BPTTT issued its decision dismissing the opposition of petitioner
and giving due course to private respondent's application for the
registration of the trademark CANON. On appeal, the Court of
Appeals that eventually affirmed the decision of BPTTT.
ISSUES:
a) Whether or not petitioner is entitled to exclusive use of the mark
canon because it is its trademark and is used also for footwear.
b) Whether or not to allow private respondent to register canon for
footwear is to prevent petitioner from using canon for various kinds
of footwear, when in fact, petitioner has earlier used said mark for
said goods.
c) Whether or not petitioner is also entitled to the right to
exclusively use of canon to prevent confusion of business.
d) Whether or not petitioner is also entitled to the exclusive use of
canon because it forms part of its corporate name, protected by the
paris convention.
RULING:
Ordinarily, the ownership of a trademark or tradename is a
property right that the owner is entitled to protect as mandated by
the Trademark Law.
However, when a trademark is used by a party for a product in
which the other party does not deal, the use of the same
trademark on the latter's product CANNOT be validly objected to.
BPTTT correctly ruled that since the certificate of registration of
petitioner for the trademark CANON covers class 2 (paints,
chemical products, toner, dyestuff), private respondent can use the
trademark CANON for its goods classified as class 25 (sandals).

Sources:

The products of petitioner and the responden flow through


different trade channels. Thus, the evident disparity of the
products of the parties in the case at bar renders unfounded the
apprehension of petitioner that confusion of business or origin
might occur, if private respondent is allowed to use the mark
CANON.
FABERGE, INCORPORATED vs. THE INTERMEDIATE APPELLATE
COURT and CO BENG KAY
FACTS:
The Director of Patents authorized herein private respondent Co
Beng Kay to register the trademark "BRUTE" for the briefs
manufactured and sold by his Corporation in the domestic market
vis-a-vis petitioner's opposition grounded on similarity of said
trademark with petitioner's own symbol "BRUT" which it previously
registered for after shave lotion, shaving cream, deodorant, talcum
powder, and toilet soap.
On appeal with the Second Special Cases Division of the CA, it
reversed and directed against the permission granted by the
Director of Patents and was later reconsidered by the CA in favor
of Co Beng Kay.
ISSUE:
Whether private respondent (CO BENG KAY) may appropriate the
trademark "BRUTE" for the briefs it manufactures and sells to the
public albeit petitioner (FABERGE, INCORPORATED) had previously
registered the symbol "BRUT" and "BRUT 33" for its own line of
times.
RULING:
The controlling norm is the comparison of the trademarks in their
entirely (HOLISTIC TEST) as they appear in their labels to determine
whether there is confusing similarity.
Under the Civil Code:
Art. 520. A trade-mark or trade-name duly registered in the
proper government bureau or office is owned by and pertains to
the person, corporation, or firm registering the same, subject to
the provisions of special laws.
Art. 521. The goodwill of a business is property, and may be
transferred together with the right to use the name under which
the business is conducted.
Art. 522. Trade-marks and trade-names are governed by special
laws.

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 14

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
Under the Intellectual Property Law:
Sec. 11. Issuance and contents of the certificate. contain the x x
x, the particular goods or services for which it is registered, x x x.
Sec. 20. Certificate of registration prima facie evidence of validity.
A certificate of registration of a mark or trade-name shall be
prima facie evidence x x x of the registrant's exclusive right to use
the same in connection with the goods, business or services
specified in the certificate x x x.
Thus, Co Beng Kay may be permitted to register the trademark
"BRUTE" for briefs produced by it notwithstanding petitioner's
vehement protestations of unfair dealings in marketing its own set
of items which are limited to: after-shave lotion, shaving cream,
deodorant, talcum powder and toilet soap. In as much as petitioner
has not ventured in the production of briefs, an item which is not
listed in its certificate of registration, petitioner can not and should
not be allowed to feign that private respondent had invaded
petitioner's exclusive domain.
Withal, judging from the physical attributes of petitioner's and
private respondent's products, there can be no doubt that
confusion or the likelihood of deception to the average purchaser
is unlikely since the goods are non-competing and unrelated.
The glaring discrepancies between the two products had been
amply portrayed to such an extent that indeed, "a purchaser who is
out in the market for the purpose of buying respondent's BRUTE
brief would definitely be not mistaken or misled into buying BRUT
after shave lotion or deodorant" x x x.
PHILIPPINE REFINING CO., INC. vs. NG SAM and THE DIRECTOR OF
PATENTS
FACTS:
The trademark "CAMIA" was first used ill the Philippines by
petitioner on its products in 1922. In 1949, petitioner caused the
registration of said trademark with the Philippine Patent Office,
covering covers vegetable and animal fats, particularly lard, butter
and cooking oil, all classified under Class 47.
On November 25, 1960, respondent Ng Sam, 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.

After due publication of the application, petitioner filed an


opposition. Director of patents rendered a decision allowing
registration of the trademark "CAMIA" in favor of Ng Sam.
ISSUE:
Whether or not 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 or
origin.

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. That 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.
As observed by the Bureau of Patents, the particular goods of the
parties are so unrelated that consumers would not in any
probability mistake one as the source or origin of the product of
the other.
In addition, the goods of petitioners are basically derived from
vegetable oil and animal fats, while the product of respondent is
processed from pig's legs. The Court holds further that, the
businesss of the parties are non-competitive.
HICKOK MANUFACTURING CO., INC. vs. COURT OF APPEALS and
SANTOS LIM BUN LIONG
FACTS:
The patent director's decision was to dismiss the private
respondent's registration of the trademark of HICKOK for its
Marikina shoes.
The Court of Appeals reversed the patent director's decision and
instead allowed the registration of the trademark HICKOK in favor
of the private respondent.
ISSUE:
Whether or not Santos Lim Bun Liongs HICKOK Marikina Shoes
would
likely
result
into
confusion
against
HICKOK
MANUFACTURING CO., INCs handkerchiefs, briefs, belts and
wallets.
RULING:
An examination of the trademark of petitioner-appellee and that of
registrant-appellant convinces us that there is a difference in the
design and the coloring of, as well as in the words on the ribbons,
the two trademarks.
While the law does not require that the competing trademarks be
Identical, the two marks must be considered in their entirety, as
they appear in the respective labels, in relation to the goods to
which they are attached. There must be not only resemblance
between the trademark of the plaintiff and that of the defendant,
but also similarity of the goods to which the two trademarks are
respectively attached.
Since in this case the trademark of petitioner-appellee is used in
the sale of leather wallets, key cases, money folds made of leather,
belts, men's briefs, neckties, handkerchiefs and men's socks, and
the trademark of registrant-appellant is used in the sale of shoes,
which have different channels of trade, the Director of Patents,
ought to have reached a different conclusion.

RULING:
Sources:

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 15

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
"Emphasis should be on the similarity of the products involved and
not on the arbitrary classification or general description of their
properties or characteristics."
And that "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."
ESSO STANDARD EASTERN, INC. vs. COURT OF APPEALS and
UNITED CIGARETTE CORPORATION
FACTS:
Petitioner Esso Standard Eastern, Inc. is engaged in the sale of
petroleum products identified with its trademark ESSO. Private
respondent in turn is engaged in the manufacture and sale of
cigarettes, and acquired the use of the trademark ESSO on its
cigarettes, for which a permit had been duly granted by the Bureau
of Internal Revenue.
Barely had respondent as such successor started manufacturing
cigarettes with the trademark ESSO, petitioner commenced a case
for trademark infringement in the Court of First Instance of Manila.
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.
The trial court decided in favor of petitioner and ruled that
respondent was guilty of infringement of trademark. On appeal
with the CA, the latter found that there was no trademark
infringement and dismissed the complaint.

the goods submitted by the parties shows a great many differences


on the trademarks used.
ACCORDINGLY, the petition is dismissed and the decision of
respondent Court of Appeals is hereby affirmed.
INFRINGEMENT:
SOCIETE DES PRODUITS NESTLE, S.A. vs.MARTIN T. DY, JR.,
FACTS:
Petitioner is a foreign corporation organized under the laws of
Switzerland. It manufactures food products and beverages and is
the owner of the "NAN" trademark for its line of infant powdered
milk products, consisting of PRE-NAN, NANH.A., NAN-1, and NAN-2.
NAN is classified under Class 6 "diatetic preparations for infant
feeding."
Dy, Jr. owns 5M Enterprises. He imports Sunny Boy powdered milk
from Australia and repacks the powdered milk into three sizes of
plastic packs bearing the name "NANNY." It is also classified under
Class 6 "full cream milk for adults in [sic] all ages."
Nestle filed before the RTC a complaint against Dy, Jr. for
infringement. Dy, Jr. filed a motion to dismiss alleging that the
complaint did not state a cause of action.
The trial court found Dy, Jr. liable for infringement.. On appeal, the
Court of Appeals set aside the trial courts order and found Dy, Jr.
not liable for infringement.
ISSUE:
Whether Dy, Jr. is liable for infringement.

ISSUE:

RULING:

Whether the tradename ESSO petroleum products sold by the


petitioner would similarly result into confusion of goods with the
ESSO products of the private respondent.

The petition is meritorious.


The elements of infringement under R.A. No. 8293 are as follows:
a.

RULING:
The Court finds no ground for granting the petition.
It is undisputed that the goods on which petitioner uses the
trademark ESSO, petroleum products, and the product of
respondent, cigarettes, are non-competing.

b.

c.

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 public knows too well that petitioner deals solely with
petroleum products that there is no possibility that cigarettes with
ESSO brand will be associated with whatever good name
petitioner's ESSO trademark may have generated.

d.

Respondent court correctly ruled that considering the general


appearances of each mark as a whole, the possibility of any
confusion is unlikely. A comparison of the labels of the samples of

e.

Sources:

The trademark being infringed is registered in the


Intellectual Property Office; however, in infringement of
trade name, the same need not be registered;
The trademark or trade name is reproduced,
counterfeited, copied, or colorably imitated by the
infringer;
The infringing mark or trade name is used in connection
with the sale, offering for sale, or advertising of any goods,
business or services; or the infringing mark or trade name
is applied to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon
or in connection with such goods, business or services;
The use or application of the infringing mark or trade
name is likely to cause confusion or mistake or to deceive
purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or
services or the idenity of such business; and
It is without the consent of the trademark or trade name
owner or the assignee thereof.

Thus, in the 1954 case of Co Tiong Sa v. Director of Patents, the


Court ruled: x x x It has been consistently held that the question of

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 16

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
infringement of a trademark is to be determined by the test of
dominancy.
Moreover, the totality or holistic test is contrary to the elementary
postulate of the law on trademarks and unfair competition, for
such test only relies on visual comparison between two trademarks
whereas the dominancy test relies not only on the visual but also
on the aural and connotative comparisons and overall impressions
between the two trademarks.
Applying the dominancy test in the present case, the Court finds
that "NANNY" is confusingly similar to "NAN." "NAN" is the
prevalent feature of Nestles line of infant powdered milk products.
It is written in bold letters and used in all products. The line
consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly,
"NANNY" contains the prevalent feature "NAN." The first three
letters of "NANNY" are exactly the same as the letters of "NAN."
When "NAN" and "NANNY" are pronounced, the aural effect is
confusingly similar.
NANNY and NAN have the same classification, descriptive
properties and physical attributes. Both are classified under Class
6, both are milk products, and both are in powder form. Also,
NANNY and NAN are displayed in the same section of stores the
milk section.
The Court agrees with the lower courts that there are differences
between NAN and NANNY. However, as the registered owner of
the "NN" mark, Nestle should be free to 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.
Certificates of Registration. shall be a prima facie evidence of
validity of the registration, the registrants ownership of the mark,
and of the registrants exclusive right to use the same in
connection with the goods or services and those that are related
thereto specified in the certificate.
PHILIP MORRIS, INC., vs. FORTUNE TOBACCO CORPORATION
FACTS:
Philip Morris, Inc., a corporation organized under the laws of the
State of Virginia, USA, is, per Certificate of Registration No. 18723
issued, the registered owner of the trademark "MARK VII" for
cigarettes. Benson & Hedges (Canada) Inc., a subsidiary, is the
registered owner of the trademark "MARK TEN" for cigarettes as
evidenced by PPO Certificate of Registration. Another subsidiary
Fabriques de Tabac Reunies, S.A., is the assignee of the trademark
"LARK". Fortune Tobacco Corporation, a company organized in the
Philippines, manufactures and sells cigarettes using the trademark
"MARK."
Complaint for Infringement of Trademark and Damages against
respondent Fortune Tobacco Corporation was filed by petitioners,
in the Regional Trial Court, invoking the provisions of the Paris
Convention for the Protection of Industrial and Intellectual
Sources:

Property. Respondent on the other hand averred that MARK is a


common word and cannot particularly identify a product to that of
petitioners.
Trial court rendered its Decision finding that the Fortune Tobacco
did not commit trademark infringement against the petitioners.
Petitioners went on appeal to the CA. That while ruling for
petitioners on the matter of their legal capacity to sue in this
country for trademark infringement, nevertheless affirmed the trial
courts decision on the underlying issue of respondents liability for
infringement.
ISSUE:
(1) Whether or not petitioners, as Philippine registrants of
trademarks, are entitled to enforce trademark rights in this
country; and
(2) Whether or not respondent has committed trademark
infringement against petitioners by its use of the mark "MARK" for
its cigarettes, hence liable for damages.
RULING:
The petition is bereft [deprived of] of merit.
For, petitioners are still foreign corporations. As such, they ought,
as a condition to availment of the rights and privileges vis--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 pursuant to Section 21-A,
and 20 of R.A. No. 166.
The certificate of registration merely constitutes prima facie
evidence that the registrant is the owner of the registered mark.
Evidence of non-usage of the mark rebuts the presumption of
trademark ownership, as what happened here when petitioners no
less admitted not doing business in this country.
The registration of a trademark unaccompanied by actual use
thereof in the country accords the registrant only the standing to
sue for infringement in Philippine courts. Entitlement to protection
of such trademark in the country is entirely a different matter.
As already found herein, while petitioners have registered the
trademarks "MARK VII," "MARK TEN" and "LARK" for cigarettes in
the Philippines, prior actual commercial use thereof had not been
proven. In fact, petitioners judicial admission of not doing business
in this country effectively belies any pretension to the contrary.
As to the issue of infringement, since the word "MARK," be it alone
or in combination with the word "TEN" and the Roman numeral
"VII," does not point to the origin or ownership of the cigarettes to
which they apply, the local buying public could not possibly be
confused or deceived that respondents "MARK" is the product of
petitioners and/or originated from the U.S.A., Canada or
Switzerland.
For lack of convincing proof on the part of the petitioners of actual
use of their registered trademarks prior to respondents use of its
mark and for petitioners failure to demonstrate confusing
similarity between said trademarks, the dismissal of their basic

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 17

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
complaint for infringement and the concomitant plea for damages
must be affirmed.
DEL MONTE CORPORATION vs. COURT OF APPEALS and
SUNSHINE SAUCE MANUFACTURING INDUSTRIES

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.
As to the second issue, the Court finds that the private respondent
is not guilty of infringement for having used the Del Monte bottle.

FACTS:
Del Monte Corporation is a foreign company not engaged in
business in the Philippines. Philippine Packing Corporation
(Philpack) is a domestic corporation duly organized under the laws
of the Philippines. Del Monte granted Philpack the right to
manufacture, distribute and sell in the Philippines under the Del
Monte trademark and logo, and authorized Philpack to register the
Del Monte catsup bottle configuration, for which it was granted
the Certificate.
Sunshine Sauce Manufacturing Industries was issued a Certificate
of Registration by the Bureau of Domestic Trade to engage in the
manufacture, packing, distribution and sale of various kinds of
sauce, identified by the logo Sunshine Fruit Catsup contained in
various kinds of bottles, including the Del Monte bottle, which the
private respondent bought from the junk shops for recycling.
Philpack and Del Monte filed a complaint against the private
respondent for infringement of trademark and unfair competition,
with a prayer for damages and the issuance of a writ of preliminary
injunction.
Regional Trial Court dismissed the complaint. It held that there
were substantial differences between the logos or trademarks of
the parties. On appeal, decision was affirmed in toto by the
respondent court.
ISSUE:
Whether the general confusion made by the article upon the eye of
the casual purchaser who is unsuspicious and off his guard, is such
as to likely result in his confounding it with the original.
RULING:
TRADEMARK INFRINGEMENT
unauthorized use of a
trademark
fraudulent intent unnecessary
prior registration of the
trademark is a prerequisite to
the action

UNFAIR COMPETITION
passing off of one's goods as
those of another.
fraudulent intent is essential.
registration is not necessary.

While the Court does recognize these distinctions, it does not


agree with the conclusion that there was no infringement or unfair
competition. Even if the labels were analyzed together it is not
difficult to see that 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.
Sources:

The reason is that the configuration of the said bottle was merely
registered in the Supplemental Register.
PRINCIPAL REGISTER
Gives rise to a presumption of
the validity of the registration,
the registrant's ownership of
the mark and his right to the
exclusive use thereof.
Limited to the actual owner of
the trademark and proceedings therein on the issue
of ownership which may be
contested through opposition
or interference proceedings
or, after registration, in a
petition for cancellation.
A constructive notice of the
registrant's claim of ownership.
Basis for an action for
infringement.
Publication of the application
is necessary.

SUPPLEMENTAL REGISTER
There is no such presumption
in the registration

Not subject to opposition


although it may be cancelled
after the issuance.

Merely proof of actual use of


the trademark and notice
that the registrant has used
or appropriated it.
Not a basis for an action for
infringement.
Publication of the application
is not necessary

Though Del Monte has actual use of the bottle's configuration, the
petitioners cannot claim exclusive use thereof because it has not
been registered in the Principal Register. However, we find that
Sunshine, despite the many choices available to it and
notwithstanding that the caution "Del Monte Corporation, Not to
be Refilled" was embossed on the bottle, still opted to use the
petitioners' bottle to market its product which Philpack also
produces. This clearly shows the private respondent's bad faith and
its intention to capitalize on the latter's reputation and goodwill
and pass off its own product as that of Del Monte.
As Sunshine's label is an infringement of the Del Monte's
trademark, calls for the cancellation of the private respondent's
registration and withdrawal of all its products bearing the
questioned label from the market. With regard to the use of Del
Monte's bottle, the same constitutes unfair competition; hence,
the respondent should be permanently enjoined from the use of
such bottles.
CONVERSE RUBBER CORPORATION vs. UNIVERSAL RUBBER
PRODUCTS, INC.
FACTS:
Respondent Universal Rubber Products, Inc. filed an application
with the Philippine Patent office for registration of the trademark

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 18

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
"UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and
rubber slippers.

Philippines may be a party, shall be entitled to the benefits and


subject to the provisions of this Act x x x.

Petitioner Converse Rubber Corporation filed its opposition to the


application for registration based on the following:

Trade names of persons described in the first paragraph of this


section shall be protected without the obligation of filing or
registration whether or not they form parts of marks.

a.

b.

Trademark sought to be registered is confusingly similar to


the word "CONVERSE" which is part of petitioner's corporate
name "CONVERSE RUBBER CORPORATION" as to likely
deceive purchasers of products x x x; and,
The registration of respondent's trademark will cause great
and irreparable injury to the business reputation and
goodwill of petitioner in the Philippines and would cause
damage to said petitioner.

The Director of Patents dismissed the opposition of the petitioner


and gave due course to respondent's application.
ISSUE:
Whether or not the respondent's partial appropriation of etitioner's
corporate name is of such character that it is calculated to deceive
or confuse the public to the injury of the petitioner to which the
name belongs.
RULING:
From a cursory appreciation of the petitioner's corporate name
"CONVERSE RUBBER CORPORATION,' it is evident that the word
"CONVERSE" is the dominant word which Identifies petitioner from
other corporations engaged in similar business.
An admission of knowledge, that petitioner since 1946, necessarily
betrays its knowledge of the reputation and business of petitioner
even before it applied for registration of the trademark in question.
A corporation is entitled to the cancellation of a mark that is
confusingly similar to its corporate name. Appropriation by another
of the dominant part of a corporate name is an infringement.
The testimony of petitioner's witness, who is a legitimate trader as
well as the invoices evidencing sales of petitioner's products in the
Philippines, give credence to petitioner's claim that it has earned a
business reputation and goodwill in this country. The word
"CONVERSE" has grown to be Identified with petitioner's products,
and in this sense, has acquired a second meaning within the
context of trademark and trade name laws.
Also, the confusing similarity between its trademark "UNIVERSAL
CONVERSE AND DEVICE" and petitioner's corporate name and/or
its trademarks "CHUCK TAYLOR" and "ALL STAR DEVICE" which
could confuse the purchasing public to the prejudice of petitioner.
The mandate of the Convention of the Union of Paris for the
Protection of Industrial Property finds implementation in Sec. 37 of
RA No. 166, otherwise known as the Trademark Law:
Sec. 37. Rights of Foreign Registrants Persons who are nationals
of, domiciled or have a bona fide or effective business or
commercial establishment in any foreign country, which is a party
to an international convention or treaty relating to marks or trade
names on the repression of unfair competition to which the
Sources:

CONVERSE RUBBER CORPORATION and EDWARDSON


MANUFACTURING CORPORATION vs. JACINTO RUBBER &
PLASTICS CO., INC., and ACE RUBBER & PLASTICS CORPORATION
FACTS:
Plaintiff Converse Rubber Corporation, manufacturer and owner of
trade name "Converse Chuck Taylor All Star"; owner of trademarks
and patent, registered with United States Patent Office, covering
the words "All Star". The trademark "Chuck Taylor" was registered
by plaintiff Converse with the Philippines Patent Office.
Defendant Jacinto Rubber & Plastics Company, Inc., a local
corporation, likewise, manufactures and sells canvas rubber shoes.
Its trademark "Custombuilt Jayson's" was registered by the
Philippines Patent Office.
Converse and Jacinto entered into licensing agreement whereby
Jacinto would be the exclusive licensee of Converse in the
Philippines for the manufacture and sale of "Chuck Taylor" shoes
but with the right to continue manufacturing and selling its own
products.
Jacinto Rubber then proposed that the licensing agreement be
made in favor of its affiliates, defendant Ace Rubber. However, the
licensing agreement between Jacinto Rubber and Ace Rubber did
not materialize, because Hermogenes Jacinto refused to sign the
guarantee. Converse and Edwardson, on the other hand executed
licensing agreement, making plaintiff Edwardson the exclusive
Philippine licensee for the manufacture and sale of "Chuck Taylor."
Thereafter, plaintiffs sent a written demand to defendants to stop
manufacturing and selling "Custombuilt" shoes of identical
appearance as "Chuck Taylor". Defendants did not reply to
plaintiffs' letter.
ISSUE:
Whether the court a quo erred in arriving at the conclusion that the
defendants are guilty of unfair competition when defendant Jacinto
Rubber & Plastics Co., Inc., manufactured and sold rubber-soled
canvass shoes under its registered trade mark "Custombuilt".
RULING:
The Court does not hesitate in holding that the plaintiffs complaint
of unfair competition is amply justified.
The Court fully agrees with the trial court that "the respective
designs, shapes, the colors of the ankle patches, the bands, the toe
patch and the soles of the two products are exactly the same...
(such that ) at a distance of a few meters, it is impossible to
distinguish "Custombuilt" from "Chuck Taylor".
In plain language Section 29 of R.A. 166 declares that a "person
who has Identified in the public the goods he manufactures or

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 19

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
deals in, his business or services from those of others, whether or
not a 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."
Unfair Competition "any acts" calculated to result in the passing
off of other goods "for those of the one having established such
goodwill."
Absent is a requirement that the goodwill sought to be protected
in an action for unfair competition must have been established in
an actual competitive situation. Nor does the law require that the
deception or other means contrary to good faith or any acts
calculated to pass off other goods for those of one who has
established a goodwill must have been committed in an actual
competitive situation.
Plaintiffs-appellees have a established goodwill. This goodwill, the
trial court found, defendants-appellants have pirated in clear bad
faith to their unjust enrichment.
REMEDIES:
KABUSHI KAISHA ISETAN, (ISETAN CO.,LTD.) vs. INTERMEDIATE
APPELLATE COURT, DIRECTOR OF PATENTS, and ISETANN
DEPARTMENT STORE, INC.
FACTS:
Petitioner Kabushi Kaisha Isetan is a foreign corporation organized
and existing under the laws of Japan, and the owner of the
trademark "Isetan" and the "Young Leaves Design". Private
respondent, Isetann Department Store, on the other hand, is a
domestic corporation organized and existing under the laws of the
Philippines.
The private respondent registered "Isetann Department Store, Inc."
and Isetann and Flower Design in the Philippine Patent Office as
well as with the Bureau of Domestic Trade. The petitioner filed
with the Phil. Patent Office two petitions for the cancellation of
Certificates of Supplemental Registration.
The Director of Patents ruled in favour of the private respondent.
The petitioner appealed to the Intermediate Appellate Court and
the latter, dismissed the appeal on the ground that it was filed out
of time.

The appeal shall be governed by the provisions of Republic Act No.


5434, which provides in its Section 2;
Sec. 2. Appeals to Court of Appeals. - Appeals to the Court of
Appeals shall be filed x x x then within ten (10) days from notice or
publication, when required by law, of the resolution denying the
motion for reconsideration. No more than one motion for
reconsideration shall be allowed any party. x x x x x x x x x.
The petitioner had only up to August 1, 1986 (from July 17, 1986)
to file a petition for review with the SC. The present petition was
posted on August 2, 1986. There is no question that it was, again,
filed late because the petitioner filed an ex-parte motion for
admission explaining the delay.
The decision of the Patent Office has long become final and
executory. So has the Court of Appeal decision.
The records also show that the petitioner has never conducted any
business in the Philippines. It has never promoted its tradename or
trademark in the Philippines. It has absolutely no business goodwill
in the Philippines. It is unknown to Filipinos except the very few
who may have noticed it while travelling abroad. It has never paid
a single centavo of tax to the Philippine government. Under the
law, it has no right to the remedy it seeks.
The respondent registered its trademark in 1979. It has
continuously used that name in commerce. It has established a
goodwill through extensive advertising. There is no showing that
the Japanese firm's registration in Japan or Hongkong has any
influence whatsoever on the Filipino buying public.
SEHWANI, INCORPORATED and/or BENITAS FRITES, INC.,vs. IN-NOUT BURGER, INC.,
FACTS:
Respondent IN-N-OUT Burger, Inc., a foreign corporation organized
under the laws of California, U.S.A., and not doing business in the
Philippines, applied with the IPO for the registration of its
trademark IN-N-OUT Burger & Arrow Design and servicemark
IN-N-OUT.

ISSUE:

It discovered that petitioner Sehwani, Inc. had obtained Trademark


Registration for the mark IN N OUT (THE INSIDE OF THE LETTER
O FORMED LIKE A STAR), and filed before the BLA-IPO, an
administrative complaint against petitioners for violation of
intellectual property rights.

Whether or not private respondent's act of registering a trademark


and adopting a corporate name similar to that of the petitioner
cashed the goodwill and popularity of the petitioner's reputation,
thereby causing great and irreparable injury and damage to it.

The Bureau Director rendered a decision finding that respondent


has the legal capacity to sue and that it is the owner of the
internationally well-known trademarks; however, she held that
petitioners are not guilty of unfair competition.

RULING:

Aggrieved, petitioners filed a petition before the Court of Appeals


which was dismissed for lack of merit. The appeal being filed out of
time, the Decision and the Orders of Bureau Director BeltranAbelardo are now final and executory.

There is no dispute and the petitioner does not question the fact
that the appeal was filed out of time. Not only was the appeal filed
late in the Court of Appeals, the petition for review was also filed
late with the SC. In common parlance, the petitioner's case is
"twice dead" and may no longer be reviewed. The Court of Appeals
correctly rejected the appeal on the sole ground of late filing.
Sources:

Meanwhile, respondent filed a Manifestation with the Court of


Appeals that on December 23, 2005, Director General Adrian S.

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 20

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
Cristobal, Jr. had rendered a Decision in Appeal finding petitioners
guilty of unfair competition.

MELBAROSE R. SASOT and ALLANDALE R. SASOT vs. PEOPLE OF


THE PHILIPPINES

ISSUE:

FACTS:

Whether or not the Court of Appeals erred when it dismissed the


petition on mere technicality which resulted in a miscarriage of
justice and deprivation of intellectual property rights.

National Bureau of Investigation (NBI) conducted an investigation


pursuant to a complaint by the NBA Properties, Inc., against
petitioners for possible violation of Article 189 of the Revised Penal
Code on unfair competition. It was discovered that petitioners are
engaged in the manufacture, printing, sale, and distribution of
counterfeit "NBA" garment products. Subsequently, the
Prosecution Attorney recommended the filing of an Information
against petitioners.

RULING:
The petition has no merit.
The Court has invariably ruled that perfection of an appeal within
the statutory or reglementary period is not only mandatory but
also jurisdictional; failure to do so renders the questioned
decision/final order final and executory, and deprives the appellate
court of jurisdiction to alter the judgment or final order, much less
to entertain the appeal. True, this rule had been relaxed but only in
highly meritorious cases to prevent a grave injustice from being
done. Such does not obtain in this case.

In a Special Power of Attorney, Rick Welts, as President of NBA


Properties, Inc., constituted a law firm, as the companys attorneyin-fact, and to act for and on behalf of the company, in the filing of
criminal, civil and administrative complaints, among others.

The Respondents-Appellants received a copy of the Resolution on


29 October 2004. Hence the deadline for the filing of the APPEAL
MEMORANDUM was on 13 November 2004. Since said date fell on
a Saturday, the appeal should have been filed on the ensuing
working day, that is, 15 November 2004.

Petitioners argue that the fiscal should have dismissed Weltss


(President of NBA Properties, Inc.) complaint because under the
rules, the complaint must be sworn to before the prosecutor and
the copy on record appears to be only a fax transmittal and that
complainant is a foreign corporation not doing business in the
Philippines, and cannot be protected by Philippine patent laws
since it is not a registered patentee.

The question of whether or not respondents trademarks are


considered well-known is factual in nature, involving as it does
the appreciation of evidence adduced before the BLA-IPO.

The trial court sustained the prosecutions arguments and denied


petitioners motion to quash. Petitioners filed a special civil action
for certiorari with the Court of Appeals (CA) which was dismissed.

In the aforementioned case, we are inclined to favor the


declaration of the mark IN-N-OUT as an internationally wellknown mark on the basis of registrations in various countries
around the world and its comprehensive advertisements therein.

ISSUES:

The quality image and reputation acquired by the complainants


IN-N-OUT mark is unmistakable. With this, complainants mark
have met other criteria set in the Implementing Rules of Republic
Act 8293, namely, a and d of Rule 102, to wit:

Whether a foreign corporation not engaged and license (sic)


to do business in the Philippines may maintain a cause of
action for unfair competition.

2.

Whether the respondent regional trial court correctly


assumed jurisdiction over the case and the persons of the
Accused.

RULING:

Rule 102:
(a) the duration, extent and geographical area of any use of the
mark, in particular, the duration, extent and geographical
area of any promotion of the mark, including publicity and
the presentation at fairs or exhibitions, of the goods and/or
services to which the mark applies;
xxxx
(d) the quality image or reputation acquired by the mark
The fact that respondents marks are neither registered nor used in
the Philippines is of no moment. The scope of protection initially
afforded by Article 6 of the Paris Convention has been expanded in
the 1999 Joint Recommendation Concerning Provisions on the
Protection of Well-Known Marks, wherein the World Intellectual
Property Organization (WIPO) General Assembly and the Paris
Union agreed to a nonbinding recommendation that a well-known
mark should be protected in a country even if the mark is neither
registered nor used in that country.
Sources:

1.

The petition must be denied.


In this case, Weltss Complaint-Affidavit contains an
acknowledgement by Notary Public Nicole Brown of the State of
New York that the same has been subscribed and sworn to before
her, duly authenticated by the Philippine Consulate. Moreover,
records show that there are other supporting documents from
which the prosecutor based his recommendation.
Consequently, if the information is valid on its face, and there is no
showing of manifest error, grave abuse of discretion and prejudice
on the part of public prosecutor, as in the present case, the trial
court should respect such determination.
More importantly, the crime of Unfair Competition punishable
under Article 189 of the Revised Penal Code is a public crime. It is
essentially an act against the State and it is the latter which
principally stands as the injured party. The complainants capacity
to sue in such case becomes immaterial therefore.

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 21

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
If prosecution follows after the completion of the preliminary
investigation being conducted by the Special Prosecutor the
information shall be in the name of the People of the Philippines
and no longer the petitioner which is only an aggrieved party since
a criminal offense is essentially an act against the State. It is the
state which is principally the injured party although there is a
private right violated.

they have personal knowledge of the existence of such a foreign


corporation, and it is apparent that the purpose of the proposed
domestic corporation is to deal and trade in the same goods as
those of the foreign corporation.
For lis pendens to be a valid ground for the dismissal of a case, the
other case pending between the same parties and having the same
cause must be a court action.

In upholding the right of the petitioner to maintain the present suit


before our courts for unfair competition or infringement of
trademarks of a foreign corporation, we are moreover recognizing
our duties and the rights of foreign states under the Paris
Convention for the Protection of Industrial Property to which the
Philippines and France are parties.

Under section 1(d), Rule 16 of the Rules of Court, one of the


grounds for the dismissal of an action is that "there is another
action pending between the same parties for the same cause."
Section 1 of Rule 2, which defines the word action as an ordinary
suit in a court of justice x x x.

PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G vs. IAC and


MIL-ORO MANUFACTURING CORPORATION,

Thus, the Court of Appeals likewise erred in holding that the


requisites of lis pendens were present so as to justify the dismissal
of the case below.

FACTS:
Petitioner, a foreign corporation, and the manufacturer and
producer of "PUMA PRODUCTS," filed a complaint for infringement
of patent or trademark with a prayer for the issuance of a writ of
preliminary injunction against the private respondent.
Prior to the filing of the said civil suit, three cases were pending
before the Philippine Patent Office.
The trial court issued a temporary restraining order. Private
respondent filed a motion to dismiss on the grounds that the
petitioners' complaint states no cause of action, petitioner has no
legal personality to sue, and litis pendentia.
The trial court denied the motion to dismiss and at the same time
granted the petitioner's application for a writ of injunction. On
appeal, the Court of Appeals reversed the order of the trial court
and ordered the respondent judge to dismiss the civil case filed by
the petitioner. With regard to the petitioner's legal capacity to sue,
the Court of Appeals likewise held that it had no such capacity
because it failed to allege reciprocity in its complaint.

As regards the propriety of the issuance of the writ of preliminary


injunuction, the records show that herein private respondent was
given the opportunity to present its counter-evidence against the
issuance thereof but it intentionally refused to do so to be
consistent with its theory that the civil case should be dismissed in
the first place.
Considering the fact that "PUMA" is an internationally known
brand name, it is pertinent to reiterate the directive to lower
courts, which equally applies to administrative agencies: The
greater victim is not so much the manufacturer whose product is
being faked but the Filipino consuming public and in the case of
exportations, our image abroad.
Practices of business firms (among other acts, the dumping of
substandard, imitated, hazardous, and cheap goods, the
infringement of internationally known trade names and
trademarks, and the unfair trade) have reached such proportions
as to constitute economic sabotage.
TANDUAY DISTILLERS, INC vs. GINEBRA SAN MIGUEL, INC.,

ISSUE:

FACTS:

Whether or not the Court of appeals erred in holding that:


(1) petitioner had no legal capacity to sue;
(2) the doctrine of lis pendens is applicable as a ground for
dismissing the case and
(3) the writ of injunction was improperly issued.

Tanduay has been engaged in the liquor business since 1854. In


2002, Tanduay developed a new gin product distinguished by its
sweet smell, smooth taste, and affordable price. The brand name
eventually chosen was Ginebra Kapitan.

RULING:
The Court agrees.
Thus, in Western Equipment and Supply Co. v. Reyes (51 Phil. 115) ,
this Court held that a foreign corporation which has never done
any business in the Philippines and which is unlicensed and
unregistered to do business here, but is widely and favorably
known in the Philippines through the use therein of its products
bearing its corporate and trade name, has a legal right to maintain
an action in the Philippines to restrain the residents and
inhabitants thereof from organizing a corporation therein bearing
the same name as the foreign corporation, when it appears that
Sources:

After filing the trademark application for Ginebra Kapitan with


the IPO and after securing the approval of the permit to
manufacture and sell BIR, Tanduay began selling Ginebra Kapitan
in northern and southern Luzon areas in May 2003. In June 2003,
Ginebra Kapitan was also launched in Metro Manila.
San Miguel filed a complaint for trademark infringement, unfair
competition and damages. The trial court issued a TRO prohibiting
Tanduay from manufacturing, selling and advertising Ginebra
Kapitan.
Tanduay filed a petition for certiorari with the CA, and after the
defendants were granted a writ of preliminary injuction, the
petitioner filed a supplemental petition in the CA assailing the

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 22

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
injunction order. The CA issued a TRO enjoining the trial court from
implementing its injunction order and from further proceeding
with the case.
ISSUE:
Whether San Miguel is entitled to the writ of preliminary injunction
granted by the trial court as affirmed by the CA.
RULING:
The Court holds that the CA committed a reversible error.
A preliminary injunction is a provisional remedy for the protection
of substantive rights and interests. It is not a cause of action in
itself but merely an adjunct to the main case.
Before an injunctive writ is issued, it is essential that the following
requisites are present:
(1) the existence of a right to be protected and
(2) the acts against which the injunction is directed are violative of
the right.
In this case, a cloud of doubt exists over San Miguels exclusive
right relating to the word Ginebra. San Miguels claim to the
exclusive use of the word Ginebra is clearly still in dispute
because of Tanduays claim that it has, as others have, also
registered the word Ginebra for its gin products.
We find that San Miguels right to injunctive relief has not been
clearly and unmistakably demonstrated. The right to the exclusive
use of the word Ginebra has yet to be determined in the main
case. The trial courts grant of the writ of preliminary injunction in
favor of San Miguel, despite the lack of a clear and unmistakable
right on its part, constitutes grave abuse of discretion amounting to
lack of jurisdiction.
Based on the affidavits and market survey report submitted during
the injunction hearings, San Miguel has failed to prove the
probability of irreparable injury which it will stand to suffer if the
sale of Ginebra Kapitan is not enjoined. San Miguel has not
presented proof of damages incapable of pecuniary estimation.
Without the submission of proof that the damage is irreparable
and incapable of pecuniary estimation, San Miguels claim cannot
be the basis for a valid writ of preliminary injunction.
LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.) INC. vs. CLINTON
APPARELLE, INC.,
FACTS:
LS & Co., a foreign corporation and engaged in the apparel
business, is the owner by prior adoption and use since 1986 of the
internationally famous Dockers and Design trademark evidenced
by its valid and existing registrations in various member countries
of the Paris Convention. In the Philippines, it has a Certificate of
Registration No. 46619 in the Principal Register for use of said
trademark.
Based on their information and belief, they added, Clinton
Apparelle manufactured and continues to manufacture such
Paddocks jeans and other apparel.
Sources:

On the date of the reset hearing, either Clinton Apparelle or


Olympian Garments appeared. Clinton Apparelle claimed that it
was not notified of such hearing. Only Olympian Garments
allegedly had been issued with summons.
The trial court issued another Order granting the writ of
preliminary injunction. The trial court denied Clinton Apparelles
Motion to Dismiss and Motion for Reconsideration in an Omnibus
Order.
The Court of Appeals held that the issuance of the writ of
preliminary injunction (in favour of the petitioners herein) is
questionable. In its opinion, herein petitioners failed to sufficiently
establish its material and substantial right to have the writ issued.
ISSUE:
Whether the issuance of the writ of preliminary injunction by the
trial court was proper and whether the Court of Appeals erred in
setting aside the orders of the trial court.
RULING:
There is no merit in the petition. The Court of Appeals did not err in
reviewing proof adduced by petitioners to support its application
for the issuance of the writ.
There are generally two kinds of preliminary injunction:
(1) a prohibitory injunction which commands a party to refrain
from doing a particular act; and
(2) a mandatory injunction which commands the performance of
some positive act to correct a wrong in the past.
While the matter of the issuance of a writ of preliminary injunction
is addressed to the sound discretion of the trial court, this
discretion must be exercised based upon the grounds and in the
manner provided by law. The exercise of discretion by the trial
court in injunctive matters is generally not interfered with save in
cases of manifest abuse. And to determine whether there was
grave abuse of discretion, a scrutiny must be made of the bases, if
any, considered by the trial court in granting injunctive relief. Be it
stressed that injunction is the strong arm of equity which must be
issued with great caution and deliberation, and only in cases of
great injury where there is no commensurate remedy in damages.
Notably, there is only one registration for both (the word mark
Dockers and the wing-shaped design or logo) features of the
trademark giving the impression that the two should be considered
as a single unit.
It is not evident whether the single registration of the trademark
Dockers and Design confers on the owner the right to prevent
the use of a fraction thereof (use of Paddocks word mark on top
of a logo, by defendant) in the course of trade. It is also unclear
whether the use without the owners consent of a portion of a
trademark registered in its entirety constitutes material or
substantial invasion of the owners right.
The Court finds that petitioners right to injunctive relief has not
been clearly and unmistakably demonstrated. The right has yet to
be determined. Petitioners also failed to show proof that there is
material and substantial invasion of their right to warrant the

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 23

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
issuance of an injunctive writ. Neither were petitioners able to
show any urgent and permanent necessity for the writ to prevent
serious damage.
Trademark Dilution is the lessening of the capacity of a famous
mark to identify and distinguish goods or services, regardless of the
presence or absence of:
(1) competition between the owner of the famous mark and
other parties; or
(2) likelihood of confusion, mistake or deception.
Subject to the principles of equity, the owner of a famous mark is
entitled to an injunction against another persons commercial use
in commerce of a mark or trade name, if such use begins after the
mark has become famous and causes dilution of the distinctive
quality of the mark.
This is intended to protect famous marks from subsequent uses
that blur distinctiveness of the mark or tarnish or disparage it.
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.
SUPERIOR COMMERCIAL ENTERPRISES, INC. vs. KUNNAN
ENTERPRISES LTD. AND SPORTS CONCEPT & DISTRIBUTOR, INC.
FACTS:
SUPERIOR filed a complaint for trademark infringement and unfair
competition with preliminary injunction against KUNNAN and
SPORTS CONCEPT with the RTC.
Prior to and during the pendency of the infringement and unfair
competition case before the RTC, KUNNAN filed with the now
defunct Bureau of Patents, Trademarks and Technology Transfer
separate Petitions for the Cancellation of Registration Trademark,
Partes, as well as Opposition to Application (Consolidated Petitions
for Cancellation) involving the KENNEX and PRO KENNEX
trademarks.
KUNNAN filed the Petition for Cancellation and Opposition on the
ground that SUPERIOR fraudulently registered and appropriated
the disputed trademarks; as mere distributor and not as lawful
owner, it obtained the registrations and assignments of the
disputed trademarks in violation of the terms of the Distributorship
Agreement and Sections 2-A and 17 of Republic Act No. 166, as
amended.
Upon the termination of its distributorship agreement with
SUPERIOR, KUNNAN appointed SPORTS CONCEPT as its new
distributor.
The RTC held KUNNAN liable for trademark infringement and unfair
competition. CA issued its decision, reversing and setting aside the
RTCs decision.
ISSUE:
Whether or not the CA erred in reversing and setting aside the
decision of the RTC, lifting the preliminary injunction issued against
respondents Kunnan and sports concept and dismissing the
Sources:

complaint for infringement of trademark and unfair competition


with preliminary injunction.
RULING:
The Court did not find the petition meritorious.
As to whether respondent Kunnan was able to overcome the
presumption of ownership in favor of Superior, the former
sufficiently established the fraudulent registration of the
questioned trademarks by Superior.
Thus, we have 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 final.
In the present case, by operation of law, specifically Section 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.
Even assuming that SUPERIORs case for trademark infringement
had not been 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.
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.
On the Issue of Unfair Competition the records shows that the
neither the RTC nor the CA made any factual findings with respect
to the issue of unfair competition.
Finally, SUPERIOR 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.
SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD. vs.
DEVELOPERS GROUP OF COMPANIES, INC.
FACTS:
At the core of the controversy are the "Shangri-La" mark and "S"
logo.
Respondent DGCI claims ownership of said mark and logo in the
Philippines on the strength of its prior use thereof within the
country. Since the issuance of the Certificate of Registration by
the BPTTT on May 31, 1983, DGCI started using the "Shangri-La"
mark and "S" logo in its restaurant business.
As far back as 1962, Kuok family adopted the name "Shangri-La" as
part of the corporate names of all companies organized under the
aegis of the Kuok Group of Companies.
The Kuok Group and/or petitioner SLIHM caused the registration
of, and in fact registered, the "Shangri-La" mark and "S" logo in the
patent offices in different countries around the world. It caused the
registration of, and in fact registered, the "Shangri-La" mark and

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 24

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
"S" logo in the patent offices in different countries around the
world.
The petitioners filed with the BPTTT a petition, praying for the
cancellation of the registration of the "ShangriLa" mark and "S"
logo issued to respondent They also filed in the same office an
Inter Partes Case, praying for the registration of the same mark and
logo in their own names.
Respondent DGCI filed a complaint for Infringement and Damages
with the RTC against the herein petitioners, alleging that DGCI has,
for the last eight (8) years, been the prior exclusive user in the
Philippines of the mark and logo in question and the registered
owner thereof for its restaurant and allied services.
The trial court came out with its decision rendering judgment for
DGCI, as to the issue of infringement. Petitioners went on appeal to
the CA, and affirmed that of the lower court with the modification.
ISSUE:
Whether the issues posed by petitioners are purely factual in nature
hence improper for resolution in the instant petition for review on
certiorari.
RULING:
DGCI claims that the present petition for review should be
dismissed outright for certain procedural defects, to wit: an
insufficient certification against forum shopping and raising pure
questions of fact. On both counts, we find the instant petition
formally and substantially sound.
While the present law on trademarks has dispensed with the
requirement of prior actual use at the time of registration, the law
in force at the time of registration must be applied, and thereunder
it was held that as a condition precedent to registration of
trademark, trade name or service mark, the same must have been
in actual use in the Philippines before the filing of the application
for registration.

actual use in commerce is


also the test of ownership
but the mark must not
have been so appropriated by another.
in order to register a
trademark, one must be the
owner thereof and must
have actually used the mark
in
commerce
in
the
Philippines for 2 months
prior to the application for
registration.

does not require that the


actual use of a trademark
must be within the
Philippines.

Following universal acquiescence and comity, our municipal law on


trademarks regarding the requirement of actual use in the
Philippines must subordinate an international agreement inasmuch
as the apparent clash is being decided by a municipal tribunal.
Trademark is a creation of use and, therefore registration is only an
administrative confirmation of the existence of the right of
ownership of the mark, but does not perfect such right.
UNNO COMMERCIAL ENTERPRISES, INCORPORATED vs. GENERAL
MILLING CORPORATION
FACTS:
General Milling Corporation filed an application for the registration
of the trademark "All Montana" to be used in the sale of wheat
flour. In view of the fact that the same trademark was previously,
registered in favor of Unno Commercial Enterprises, Inc., the Chief
Trademark Examiner of the Philippines Patent Office declared an
interference proceeding to determine which party has previously
adopted and used the trademark "All Montana".

The word or name "Shangri-la" and the S-logo, are not uncommon.

The Director of Patents, after hearing, ruled in favor of respondent


General Milling Corporation prior-user of the trademark ALL
MONTANA.

One who has imitated the trademark of another cannot bring an


action for infringement, particularly against the true owner of the
mark, because he would be coming to court with unclean hands.

After its motion for reconsideration was denied, petitioner brought


the instant petition seeking the reversal of the decision and praying
that it be declared the owner and prior user of the trademark.

Priority is of no avail to the bad faith plaintiff. Good faith is


required in order to ensure that a second user may not merely take
advantage of the goodwill established by the true owner.

ISSUE:

This point is further bolstered by the fact that under either Section
17 of R.A. No. 166, or Section 151 of R.A. No. 8293, or Article 6bis
(3) of the Paris Convention, no time limit is fixed for the
cancellation of marks registered or used in bad faith.
For, while Section 2 of R.A. 166, Section 2-A, on the other hand,
sets out how ownership is acquired. These are two distinct
concepts.
Section 2 of R.A. 166
provides
for
what
registrable;
Sources:

is

Section 2-A of R.A. 166


sets out how ownership is
acquired;

Whether the Director of Patents erred when he declared the Junior


Party, and defendant herein (General Milling Corp.) as the true and
legal owner of the trademark All Montana.
RULING:
Petitioner's contention that it is the owner of the mark "All
Montana" because of its certificate of registration issued by the
Director of Patents, must fail, since ownership of a trademark is
not acquired by the mere fact of registration alone.
Under the Trademark Law only the owner of the trademark, trade
name or service mark used to distinguish his goods, business or
service from the goods, business or service of others is entitled to
register the same. The term owner does not include the importer

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 25

COURSE/SUBJECT: INTELLECTUAL

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

PROPERTY LAW
of the goods bearing the trademark, trade name, service mark, or
other mark of ownership, unless such importer is actually the
owner thereof in the country from which the goods are imported.
A local importer, however, may make application for the
registration of a foreign trademark, trade name or service mark if
he is duly authorized by the actual owner of the name or other
mark of ownership.
In the case at bar, the evidence showed that the trademark "All
Montana" was owned and registered in the name of Centennial
Mills, Inc. which later transferred it to respondent General Milling
Corporation by way of a deed of assignment. The Deed of
Assignment itself constitutes sufficient proof of its ownership of
the trademark "All Montana," all of which were assigned by it to
respondent General Milling Corporation.
Registration merely creates a prima facie presumption of the
validity of the registration, of the registrant's ownership of the
trademark and of the exclusive right to the use thereof.
Registration does not perfect a trademark right. In the case at bar,
the Director of Patents found that "ample evidence was presented
in the record that Centennial Mills, Inc. was the owner and prior
user in the Philippines of the trademark 'All Montana' through a
local importer and broker. Use of a trademark by a mere importer,
indentor or exporter (the Senior Party herein) inures to the benefit
of the foreign manufacturer whose goods are identified by the
trademark.

repression of unfair competition, to which the Philippines


is also a party, or
d. extends reciprocal rights to nationals of the Philippines by
law,
- shall be entitled to benefits to the extent necessary to give effect
to any provision of such convention, treaty or reciprocal law, in
addition to the rights to which any owner of an intellectual
property right is otherwise entitled by this Act.
CONTENTS AND DECLARATION OF USE
The IP Code does not require any use in commerce of the
trademark at the time of filing. However, the applicant must file a
declaration of actual use of trademark and evidence to that effect,
within three (3) years from filing of the application. Otherwise, the
mark shall be removed from the registry or the application shall be
refused, whether the mark involved is well-known or not.
The declaration must be under oath and refers to only one
application or registration, containing the name and address of the
registrant declaring that the mark is in actual use in the Philippines;
mark attached; and the list and names and exact location of outlets
where the products are sold or services rendered.
OWNERSHIP AS A BASIS OF REGISTRATION
The notion of registered owner does not mean that ownership
is established by mere registration but such registration is only a
presumptive right of ownership.

REGISTRATION PROCESS:

REQUIREMENTS FOR APPLICATION

FIRST-TO-FILE AND FIRST-TO-USE

Section 124. Requirements of Application.

Section 122 of the IP Code inaccurately suggests that trademark


rights are acquired by mere registration in accordance with the IP
Code. In truth, mere registration without actual use does not lead
to the acquisition of trademark rights since the failure to use the
mark in commerce within three years from the date of filing of an
application leads to the rejection of the application or cancellation
of the registration if the certificate has been issued.

124.1. The application for the registration of the mark shall be in


Filipino or in English and shall contain the following:

However, a trademark owner who is first to file an application


for the registration of the mark acquires a limited right to have his
application examined ahead of any identical or similar mark.
The applicant who has the earliest filing date may not necessarily
end up as the registered owner of a mark since his application may
be rejected if it is identical with or confusingly similar to, or
constitutes a translation of a mark which is considered, by
competent authorities, to be well-known internationally and in the
Philippines, whether or not registered here.
Q: Who are entitled for registration of Trademarks under our
jursidiction?
A: Any person who is:
a. A national or
b. who is domiciled or
c. has a real and effective industrial establishment in a
country which is a party to any convention, treaty or
agreement relating to intellectual property rights or the
Sources:

(a) A request for registration;


(b) The name and address of the applicant;
(c) The name of a State of which the applicant is a national or
where he has domicile; and the name of a State in which the
applicant has a real and effective industrial or commercial
establishment, if any;
(d) Where the applicant is a juridical entity, the law under which it
is organized and existing;
(e) The appointment of an agent or representative, if the applicant
is not domiciled in the Philippines;
(f) Where the applicant claims the priority of an earlier application,
an indication of:
i)

The name of the State with whose national office the


earlier application was filed or if filed with an office other
than a national office, the name of that office,

ii)

The date on which the earlier application was filed, and

iii) Where available, the application number of the earlier


application;
(g) Where the applicant claims color as a distinctive feature of the
mark, a statement to that effect as well as the name or names
of the color or colors claimed and an indication, in respect of

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 26

COURSE/SUBJECT: INTELLECTUAL

PROPERTY LAW

Disclaimer: These notes are for review purposes only and are not
intended to replace any book on Intellectual Property Law. Readers of
these notes are responsible for its contents.

each color, of the principal parts of the mark which are in that
color;
(h) Where the mark is a three-dimensional mark, a statement to
that effect;
(i) One or more reproductions of the mark, as prescribed in the
Regulations;
(j) A transliteration or translation of the mark or of some parts of
the mark, as prescribed in the Regulations;
(k) The names of the goods or services for which the registration is
sought, grouped according to the classes of the Nice
Classification, together with the number of the class of the said
Classification to which each group of goods or services belongs;
and
(l) A signature by, or other self-identification of, the applicant or his
representative.
124.3. One (1) application may relate to several goods and/or
services, whether they belong to one (1) class or to several
classes of the Nice Classification.

A non-resident foreigner may apply for trademark


registration if he is a national of a member country of the
Paris Convention.

An applicant seeking to register foreign trade mark, trade


name, or service mark or other marks of ownership in the
Philippines must prove his ownership thereof by submitting a
certified and authenticated copy of the certificate of
registration issued to him by his home country.

RIGHT OF REGISTRANT
The owner of a registered trademark shall have the exclusive right
to prevent all third parties not having the owners consent from
using in the course of trade, identical or similar signs, containers
for goods, or services which are identical or similar to those in
respect of which the trademark is registered where such use would
result into likelihood of confusion.
The exclusive right of an owner of a well-known mark under Sec.
123.1 (e), which is registered in the Philippines, extends to goods
or services which are not similar to those in respect of which the
mark is registered.

Sources:

Intellectual Property Fundamentals (by: Amador); R.A. 8293 Intellectual Property Law;
R.A. 9502 Universally Accessible Cheaper and Quality Medicines Act of 2008, amending
R.A. 8293; Course Syllabus of Atty. Allan Gepty.

PAGE 27

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