G.R. No.

114508 November 19, 1999

PRIBHDAS J. MIRPURI
vs.
COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON CORPORATION

Facts:
Lolita Escobar, the predecessor-in-interest of petitioner Pribhdas J. Mirpuri, filed an application with the Bureau of Patents for the registration
of the trademark "Barbizon" for use in brassieres and ladies undergarments. Escobar alleged that she had been manufacturing and selling
these products under the firm name "L & BM Commercial" since March 3, 1970.
Private respondent Barbizon Corporation, a corporation organized and doing business under the laws of New York, U.S.A., opposed the
application. It claimed that:
The mark BARBIZON of respondent-applicant is confusingly similar to the trademark BARBIZON which opposer owns and has not
abandoned.
The Director of Patents rendered judgment dismissing the opposition and giving due course to Escobar's application.
Escobar later assigned her application to herein petitioner and this application was opposed by private respondent. The case was docketed as
Inter Partes Case No. 2049 (IPC No. 2049).
IPC No. 2049 raised the issue of ownership of the trademark, the first registration and use of the trademark in the United States and other
countries, and the international recognition and reputation of the trademark established by extensive use and advertisement of private
respondent's products for over forty years here and abroad.
Private respondent also raised the issue that its trademark is entitled to protection as a well-known mark under Article 6 of the Paris
Convention, Executive Order No. 913, and the two Memoranda dated November 20, 1980 and October 25, 1983 of the Minister of Trade and
Industry to the Director of Patents.

Issue:
Whether or not the treaty affords protection to a foreign corporation against a Philippine applicant for the registration of a similar trademark

Ruling:
Yes. The Convention of Paris for the Protection of Industrial Property is a multi-lateral treaty which the Philippines bound itself to honor and
enforce in this country.
In the case at bar, private respondent anchors its cause of action on the first paragraph of Article 6 of the Paris . This Article governs protection
of well-known trademarks. Under the first paragraph, each country of the Union bound itself to undertake to refuse or cancel the registration,
and prohibit the use of a trademark which is a reproduction, imitation or translation, or any essential part of which trademark constitutes a
reproduction, liable to create confusion, of a mark considered by the competent authority of the country where protection is sought, to be wellknown in the country as being already the mark of a person entitled to the benefits of the Convention, and used for identical or similar goods.
The essential requirement under Article 6 is that the trademark to be protected must be "well-known" in the country where protection is sought
(in the case at bar PHILIPPINES). The power to determine whether a trademark is well-known lies in the "competent authority of the country
of registration or use." This competent authority would be either the registering authority if it has the power to decide this, or the courts of the
country in question if the issue comes before a court. 54

Pursuant to Article 6, on November 20, 1980, then Minister Luis Villafuerte of the Ministry of Trade issued a Memorandum to the Director of
Patents. The Minister ordered the Director that:
Pursuant to the Paris Convention for the Protection of Industrial Property to which the Philippines is a signatory, you are hereby
directed to reject all pending applications for Philippine registration of signature and other world-famous trademarks by applicants
other than its original owners or users.
The conflicting claims over internationally known trademarks involve such name brands as Lacoste, Jordache, Vanderbilt, Sasson,
Fila, Pierre Cardin, Gucci, Christian Dior, Oscar de la Renta, Calvin Klein, Givenchy, Ralph Lauren, Geoffrey Beene, Lanvin and Ted
Lapidus.
It is further directed that, in cases where warranted, Philippine registrants of such trademarks should be asked to surrender their
certificates of registration, if any, to avoid suits for damages and other legal action by the trademarks' foreign or local owners or
original users.
The Court ruled in favor of the private respondent, affirming the decision rendered by the Court of Appeals taking into consideration the
memorandum released by then Minister Luis Villafuerte of the Ministry of Trade to the Director of Patents.

G.R. No. 154342

July 14, 2004

MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC.

vs.
E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC.

Facts:
Respondent Gallo Winery is a foreign corporation not doing business in the Philippines but organized and existing under the laws of the State
of California, United States of America (U.S.), where all its wineries are located. Respondent domestic corporation, Andresons, has been Gallo
Winerys exclusive wine importer and distributor in the Philippines since 1991, selling these products in its own name and for its own account.
Gallo Winerys GALLO wine trademark was registered in the principal register of the Philippine Patent Office (now Intellectual Property Office)
on November 16, 1971
On the other hand, petitioners Mighty Corporation and La Campana and their sister company, Tobacco Industries of the Philippines (Tobacco
Industries), are engaged in the cultivation, manufacture, distribution and sale of tobacco products for which they have been using the GALLO
cigarette trademark since 1973. Subsequently, La Campana authorized Mighty Corporation to manufacture and sell cigarettes bearing the
GALLO trademark.
Petitioners claim that GALLO cigarettes have been sold in the Philippines since 1973, initially by Tobacco Industries, then by La Campana and
finally by Mighty Corporation.
On the other hand, although the GALLO wine trademark was registered in the Philippines in 1971, respondents claim that they first introduced
and sold the GALLO and ERNEST & JULIO GALLO wines in the Philippines circa 1974 within the then U.S. military facilities only. By 1979,
they had expanded their Philippine market through authorized distributors and independent outlets.
Respondents claim that they first learned about the existence of GALLO cigarettes in the latter part of 1992 when an Andresons employee saw
such cigarettes on display with GALLO wines in a Davao supermarket wine cellar section.
Respondents sued petitioners in the Makati RTC for trademark and tradename infringement and unfair competition, with a prayer for damages
and preliminary injunction.
Respondents charged petitioners with violating Article 6 of the Paris Convention for the Protection of Industrial Property (Paris
Convention) and RA 166 (Trademark Law), specifically, Sections 22 and 23 (for trademark infringement), 29 and 30 (for unfair competition and
false designation of origin) and 37 (for tradename infringement). They claimed that petitioners adopted the GALLO trademark to ride on Gallo
Winerys GALLO and ERNEST & JULIO GALLO trademarks established reputation and popularity, thus causing confusion, deception and
mistake on the part of the purchasing public who had always associated GALLO and ERNEST & JULIO GALLO trademarks with Gallo
Winerys wines.
Makati RTC denied, as well as Respondents motion for reconsideration. The CA likewise dismissed respondents petition for review on
certiorari, affirming the Makati RTCs decision against petitioners. After trial on the merits, however, the Makati RTC, held petitioners liable for,
and permanently enjoined them from, committing trademark infringement and unfair competition with respect to the GALLO trademark.
Hence this petition.

Issue:
Whether or not infringement or unfair competition was committed on the part of the petitioners.

Ruling:
No. The petitioners did not commit infringement or unfair competition.
It is important to establish that the Trademark Law and the Paris Convention are the applicable laws in the case at bar. Under both laws, 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.
Firstly, the actual commercial use in the Philippines of Gallo Cigarette Trademark preceded that of Gallo Wine Trademark. Nothing at all,
however, was presented to evidence the alleged sales of GALLO wines in the Philippines in 1974 or, for that matter, prior to July 9, 1981. In
view of the respondents judicial admission that 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, the Court ruled that, on this account, 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.
By strict application of Section 20 of the Trademark Law, Gallo Winerys exclusive right to use the GALLO trademark should be limited to
wines, the only product indicated in its registration certificates.
Secondly, the petitioners are not guilty of infringement. Whether a trademark causes confusion and is likely to deceive the public hinges on
"colorable imitation", jurisprudence has developed two tests in determining similarity and likelihood of confusion in trademark resemblance:
(a) the Dominancy Test applied in Asia Brewery, Inc. vs. Court of Appeals and other cases, and
(b) the Holistic or Totality Test used in Del Monte Corporation vs. Court of Appeals and its preceding cases.
The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or
deception, and thus infringement.

On the other hand, the Holistic Test requires that the entirety of the marks in question be considered in resolving confusing similarity.
Applying the Dominancy and Holistic Tests, we find that the dominant feature of the GALLO cigarette trademark is the device of a large rooster
facing left, outlined in black against a gold background. Also, as admitted by respondents themselves, on the side of the GALLO cigarette
packs are the words "MADE BY MIGHTY CORPORATION," thus clearly informing the public as to the identity of the manufacturer of the
cigarettes.
On the other hand, GALLO Winerys wine and brandy labels are diverse. In many of them, the labels are embellished with sketches of
buildings and trees, vineyards or a bunch of grapes while in a few, one or two small roosters facing right or facing each other, with additional
designs in green, red and yellow colors, appear as minor features thereof. Moreover, on the labels of Gallo Winerys wines are printed the
words "VINTED AND BOTTLED BY ERNEST & JULIO GALLO, MODESTO, CALIFORNIA."
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 petitioners and
respondents. Obviously, wines and cigarettes are not identical or competing products. Neither do they belong to the same class of goods.
Emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or
characteristics Wines and cigarettes are non-competing and are totally unrelated products not likely to cause confusion vis--vis the goods or
the business of the petitioners and respondents.
Lastly, petitioners are also not liable for unfair competition. Under Section 29 of the Trademark Law, any person who employs deception or any
other means contrary to good faith by which he passes off the goods manufactured by him or in which he deals, or his business, or services
for those of the one having established such goodwill, or who commits any acts calculated to produce said result, is guilty of unfair
competition. On this score, the Court found that petitioners never attempted to pass off their cigarettes as those of respondents. There is no
evidence of bad faith or fraud imputable to petitioners in using their GALLO cigarette mark.
Therefore, the petitioners are not liable for trademark infringement and unfair competition.

G.R. No. 158589

June 27, 2006

PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., and FABRIQUES DE TABAC REUNIES, S.A., (now known as PHILIP
MORRIS PRODUCTS S.A.)
vs.
FORTUNE TOBACCO CORPORATION

Facts:
Petitioner Philip Morris, Inc., a corporation organized under the laws of the State of Virginia, United States of America, is, per Certificate of
Registration No. 18723 issued on April 26, 1973 by the Philippine Patents Office (PPO), the registered owner of the trademark "MARK VII" for
cigarettes. Petitioner Benson & Hedges (Canada), Inc., a subsidiary of Philip Morris, Inc., is the registered owner of the trademark "MARK
TEN" for cigarettes.
On the other hand, respondent Fortune Tobacco Corporation, a company organized in the Philippines, manufactures and sells cigarettes using
the trademark "MARK."
The legal dispute between the parties started when the herein petitioners, on the claim that an infringement of their respective trademarks had
been committed. Petitioners filed a Complaint for Infringement of Trademark and Damages against respondent Fortune Tobacco Corporation.
Issue:
Whether or not respondent has committed trademark infringement against petitioners by its use of the mark "MARK"
Ruling:
No. The respondent did not commit trademark infringement.
A "trademark" is any distinctive word, name, symbol, emblem, sign, or 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 in by others. Inarguably, a
trademark deserves protection.
Section 22 of R.A. No. 166, as amended, defines what constitutes trademark infringement, as follows:
Sec. 22. Infringement, what constitutes. Any person who shall use, without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of any registered mark or tradename in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in connection with which such use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such goods or services, or identity of such business; or reproduce,
counterfeit, copy of color ably imitate any such mark or tradename and apply such reproduction, counterfeit, copy or colorable
imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with
such goods, business, or services, shall be liable to a civil action by the registrant for any or all of the remedies herein provided.
Petitioners would insist of infringement since respondents mark "MARK" for cigarettes is confusingly or deceptively similar with their duly
registered "MARK VII," "MARK TEN" and "LARK" marks likewise for cigarettes. To them, the word "MARK" would likely cause confusion in the
trade, or deceive purchasers, particularly as to the source or origin of respondents cigarettes.
In determining similarity and likelihood of confusion, jurisprudence has developed two tests: the dominancy test and the holistic test. The
dominancy test sets sight on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception,
thus constitutes infringement. In contrast, the holistic test entails a consideration of the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing similarity.
Upon consideration of the foregoing, the Court ruled against the likelihood of confusion resulting in infringement arising from the respondents
use of the trademark "MARK" for its particular cigarette product. Although the perceived offending word "MARK" is itself prominent in
petitioners trademarks "MARK VII" and "MARK TEN," the entire marking system should be considered as a whole and not dissected, because
a discerning eye would focus not only on the predominant word but also on the other features appearing in the labels. Only then would such
discerning observer draw his conclusion whether one mark would be confusingly similar to the other and whether or not sufficient differences
existed between the marks.
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. And lest it be overlooked, no actual commercial use of
petitioners marks in local commerce was proven. There can thus be no occasion for the public in this country, unfamiliar in the first place with
petitioners marks, to be confused.
Likewise, the petitioners even failed to support their claim that their respective marks are well-known and/or have acquired goodwill in the
Philippines so as to be entitled to protection even without actual use in this country in accordance with Article 6 of the Paris Convention.
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 Court denied such petition. Therefore, the respondents
did not commit trademark infringement.