TRADEMARK CASES:

OWNERSHIP OF TRADEMARK
1.)UNNO VS GENERAL MILLING
ISSUE: OWNERSHIP OF TRADEMARK
"ALL MONTANA" WHEAT FLOUR
UNNO - first used and applied for the trademark "All Montana" Wheat Flour,
was issued a certificate of registration
GENERAL MILLING - was the exclusive assignee of the U.S. trademark
DECISION: Registration merely creates a prima facie presumption of the
validity of registration.
Only the owner of a trademark, trade name or service mark may applly for
its registration and an importer, broker, indentor or distributor acquires no
rights to the trademark of the goods he is dealing with in the absence of a
valid transfer or assignment of the trade mark.
2.) CONVERSE RUBBER VS UNIVERSAL RUBBER
UNIVERSAL RUBBER PRODUCTS INC. applied for trademark "Universal
Converse and Device" it was opposed to by CONVERSE RUBBER
CORPORATION - trademark owners of "Chuck Taylor" and "ALL STAR" and
device
ISSUE: ... the only question for determination is whether or not the
applicant's partial appropriation of the Opposer's [petitioner'] corporate
name is of such character that in this particular case, it is calculated to
deceive or confuse the public to the injury of the corporation to which the
name belongs
DECISION: DENIAL OF UNIVERSAL RUBBER PRODUCT INC's registration for
"UNIVERSAL CONVERSE AND DEVICE" on its rubber shoes and slippers.
" Tradenames 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."
3.)SHANGRILA INT'L VS DGC, 2006
ISSUE: 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. As DGCI stresses at
every turn, it filed on October 18, 1982 with the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT) pursuant to Sections 2 and 4 of
Republic Act (RA) No. 166,3 as amended, an application for registration
covering the subject mark and logo. On May 31, 1983, the BPTTT issued in
favor of DGCI the corresponding certificate of registration therefor, i.e.,
Registration No. 31904. Since then, DGCI started using the "Shangri-La"
mark and "S" logo in its restaurant business.
On the other hand, the Kuok family owns and operates a chain of hotels with
interest in hotels and hotel-related transactions since 1969. As far back as
1962, it 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
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Kuok Group). The Kuok Group has used the name "Shangri-La" in all ShangriLa hotels and hotel-related establishments around the world which the Kuok
Family owned.
DECISION: "Ownership of a mark or trade name may be acquired not
necessarily by registration but by adoption and use in trade or commerce. As
between actual use of a mark without registration, and registration of the
mark without actual use thereof, the former prevails over the latter. For a
rule widely accepted and firmly entrenched, because it has come down
through the years, is that actual use in commerce or business is a prerequisite to the acquisition of the right of ownership"
" By itself, registration is not a mode of acquiring ownership. When the
applicant is not the owner of the trademark being applied for, he has no right
to apply for registration of the same. Registration merely creates a prima
faciepresumption of the validity of the registration, of the registrant's
ownership of the trademark and of the exclusive right to the use
thereof.20 Such presumption, just like the presumptive regularity in the
performance of official functions, is rebuttable and must give way to
evidence to the contrary."
4.)DEL MONTE VS CA
TEST APPLIED: HOLISTIC
TRADEMARK INFRINGEMENT VS UNFAIR COMPETITION
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 trade-name 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 or
colorably imitate any such mark or trade name 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.
Sec. 29. Unfair competition, rights and remedies. A person who has
identified in the mind of the public the goods he manufactures or deals in,
his business or services from those of others, whether or not a mark or
tradename is employed, has a property right in the goodwill of the said
goods, business or services so identified, which will be protected in the same
manner as other property rights. Such a person shall have the remedies
provided in section twenty- three, Chapter V hereof
USE OF SIMILAR LABELS IS TRADEMARK INFRINGEMENT
IS USE OF THE DEL MONTE BOTTLE INFRINGEMENT? NO IT IS NOT
TRADEMARK INFRINGEMENT BUT UNFAIR COMPETITION
5.) SOCIETE DES PRODUITS NESTLE VS CA
NESTLE: "MASTER ROAST" and "MASTER BLEND"
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CFC CORPORATION : :FLAVOR MASTER

NESTLE filed an opposition to respondent's application for "Flavor Master"
TEST APPLIED: DOMINANCY TEST
DECISION: DENIAL OF CFC'S APPLICATION " The term "MASTER", therefore,
has acquired a certain connotation to mean the coffee products MASTER
ROAST and MASTER BLEND produced by Nestle. 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.
6. MC DONALD'S VS L.C. BIG MAK
ISSUE: BIG MAC VS BIG MAK
TEST USED: DOMINANCY TEST
DECISION: Applying the dominancy test, the Court finds that
respondents use of the Big Mak mark results in likelihood of
confusion. First, Big Mak sounds exactly the same as Big Mac. Second,
the first word in Big Mak is exactly the same as the first word in Big
Mac. Third, the first two letters in Mak are the same as the first two
letters in Mac. Fourth, the last letter in Mak while a k sounds the same
as c when the word Mak is pronounced. Fifth, in Filipino, the letter k
replaces c in spelling, thus Caloocan is spelled Kalookan.
In short, aurally the two marks are the same, with the first word
of both marks phonetically the same, and the second word of both marks
also phonetically the same. Visually, the two marks have both two words
and six letters, with the first word of both marks having the same letters and
the second word having the same first two letters. In spelling, considering
the Filipino language, even the last letters of both marks are the same.
To establish trademark infringement, the following elements must be shown:
(1) the validity of plaintiffs mark; (2) the plaintiffs ownership of the mark;
and (3) the use of the mark or its colorable imitation by the alleged infringer
results in likelihood of confusion.[34] Of these, it is the element of likelihood
of confusion that is the gravamen of trademark infringement. [35]
7.) PHIL. NUT INDUSTRY VS STANDARD BRANDS
"PHILIPPINE PLANTERS CORDIAL PEANUTS" VERSUS "PLANTERS COCKTAIL
PEANUTS" IS THERE INFRINGEMENT?
TEST APPLIED; DOCTRINE OF SECONDARY MEANING/DOMINANCY
TEST
STANDARD BRANDS "PLANTERS" trademark has acquired secondary meaning
because of long use.
8. PHILIP MORRIS VS FORTUNE TOBACCO
MARK TEN and LARK vs MARK

test applied: HOLISTIC TEST

DECISION: SURPRISINGLY NO INFRINGEMENT WHY?
" For one, as rightly concluded by the CA after comparing the
trademarks involved in their entirety as they appear on the products, [46] the
striking dissimilarities are significant enough to warn any purchaser that one
is different from the other. Indeed, 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.[47]
This said, the CA then, in finding that respondents goods cannot be
mistaken as any of the three cigarette brands of the petitioners, correctly
relied on the holistic test.
"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 complaint for infringement and the
concomitant plea for damages must be affirmed. The law, the surrounding
circumstances and the equities of the situation call for this disposition."
9. ASIA BREWERY VS CA
BEER NA BEER VS SAN MIGUEL BEER
DECISION: Moreover, SMC's brand or trademark: "SAN MIGUEL PALE PILSEN"
is not infringed by ABI's mark: "BEER NA BEER" or "BEER PALE PILSEN." ABI
makes its own bottle with a bulging neck to differentiate it from SMC's bottle,
and prints ABI's name in three (3) places on said bottle (front, back and
bottle cap) to prove that it has no intention to pass of its "BEER" as "SAN
MIGUEL."
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."
10. LYCEUM OF THE PHILIPPINES VS CA
TEST APPLIED: DOCTRINE OF SECONDARY MEANING
DECISION: We conclude and so hold that petitioner institution is not entitled
to a legally enforceable exclusive right to use the word "Lyceum" in its
corporate name and that other institutions may use "Lyceum" as part of their
corporate names. To determine whether a given corporate name is
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"identical" or "confusingly or deceptively similar" with another entity's

corporate name, it is not enough to ascertain the presence of "Lyceum" or
"Liceo" in both names. One must evaluate corporate names in their entirety
and when the name of petitioner is juxtaposed with the names of private
respondents, they are not reasonably regarded as "identical" or "confusingly
or deceptively similar" with each other.
11. PUMA SOPORTSSHUGABRIKEN VS CA;
foreign corporation has a right to maintain an action in the philippines .
12. BATA INDUSTRIES VS CA
NEW OLYMPIAN RUBBER PRODUCTS INC sought registration of the mark BATA
for casual rubber shoes alleging that it has used the mark since 1 July 1970
BATA INDUSTRIES INC (CANADIAN CORP) opposed on the grounds that it
owns the BATA brand
DECISION: OPPOSITION WAS DISMISSED. The appellant has no Philippine
goodwill that would be damaged by the registration of the mark in the appellee's
favor. We agree with the decision of the Director of Patents which sustains, on the
basis of clear and convincing evidence, the right of the appellee to the registration
and protection of its industrial property, the BATA trademark.

13. ANG VS WELLINGTON

WELLINGTON DEPARTMENT STORE vs WELLINGTON BRANDS OF T SHIRTS
IS THERE INFRINGEMENT:
DECISION : NONE
While there is similarity between the trademark or trade name "Wellington
Department Store," no confusion or deception can possibly result or arise
from such similarity because the latter is a "department store," while the
former does purport to be so. The name "Wellington" is admittedly the name
of the trademark on the shirts, pants, drawers, and other articles of wear for
men, women and children, whereas the name used by the defendant
indicates not these manufactured articles or any similar merchandise, but a
department store. Neither can the public be said to be deceived into the
belief that the goods being sold in defendant's store originate from the
plaintiffs, because the evidence shows that defendant's store sells no shirts
or wear bearing the trademark "Wellington," but other trademarks. Neither
could such deception be by any possibility produced because defendant's
store is situated on the Escolta, while plaintiffs' store or place of business is
located in another business district far away from the Escolta. The mere fact
that two or more customers of the plaintiffs thought of the probable identity
of the products sold by one and the other is not sufficient proof of the
supposed confusion that the public has been led into by the use of the name
adopted by the defendants. No evidence has been submitted that customers
of the plaintiffs-appellants had actually been misled into purchasing
defendant's articles and merchandise, for the very witnesses who have
supposedly noted the use of plaintiffs' trade name do not claim to have
actually purchased any articles from defendant's store

14. FRUIT OF THE LOOM VS CA

FRUIT OF THE LOOM VS FRUIT OF EVE
15. MC DONALD'S VS MCJOY
TEST APPLIED: DOMINANCY TEST
16. ANG VS TEODORO
"ANG TIBAY"for pants and shirts vs "ANG TIBAY" slippers, shoes, indoor
baseballs
TEST USED: DOCTRINE OF SECONDARY MEANING
DECISION: products are too similar, there is trademark infringement