01 Birkenstock v.
Philippine Shoe Expo
G.R. No. 194307, November 20, 2013
RULING: YES. BIRKENSTOCK has duly established its true and lawful
FACTS:
ownership of the mark "BIRKENSTOCK."
1. Petitioner Birkenstock Orthopaedie (BIRKENSTOCK), a corporation duly
organized and existing under the laws of Germany, applied for various
trademark registrations before the IPO. However, registration proceedings
of the subject applications were suspended in view of an existing
registration of the mark "BIRKENSTOCK AND DEVICE" in the name of
Shoe Town International and Industrial Corporation, the predecessor-in-
interest of respondent Philippine Shoe Expo Marketing Corporation
(SHOE EXPO).
2. In this regard, BIRKENSTOCK filed a petition for cancellation of SHOE
EXPOS registration of BIRKENSTOCK AND DEVICE on the ground
that it is the lawful and rightful owner of the marks.
3. During its pendency however, SHOE EXPO failed to file the required 10 th
Year Declaration of Actual Use (10th Year DAU) for its registration of
BIRKENSTOCK AND DEVICE within the required period, thereby
resulting in the cancellation of SHOE EXPOS mark. Accordingly, the
cancellation case was dismissed for being moot and academic.
4. The aforesaid cancellation of Registration No. 56334 paved the way for
the publication of the subject applications in the IPO e-Gazette. In
response, SHOE EXPO filed 3 separate verified notices of oppositions,
claiming that it has been using the trademark BIRKENSTOCK AND
DEVICE for more than 16 years and BIRKENSTOCK is applying to
register one that is identical to it.
5. Bureau of Legal Affairs (BLA): Sustained SHOE EXPOS opposition,
ordering the rejection of the applications, including BIRKENSTOCKS.
Aggrieved, BIRKENSTOCK appealed to the IPO Director General.
6. IPO Director General: REVERSED and set aside the ruling of the BLA,
stating that the failure to file the 10 th Year DAU should cancel SHOE
EXPOS prior registration and that BIRKENSTOCK is the true and lawful
owner and prior user of BIRKENSTOCK marks.
7. CA: REVERSED and set aside the ruling of the IPO Director General and
reinstated that of the BLA. It stated that the registration of
BIRKENSTOCK cannot be allowed because it is CONFUSINGLY
SIMILAR if not outright identical with SHOE EXPOS mark, plus SHOE
EXPOS failure to file the 10th Year DAU did NOT deprive it of ownership
of the BIRKENSTOCK mark since it has submitted substantial evidence
showing continued use, promotion, and advertisement up to the
present.
ISSUE: W/N the subject marks should be allowed registration in the name of
BIRKENSTOCK.
A TRADEMARK is an industrial property over which its owner is
entitled to property rights which cannot be appropriated by unscrupulous
entities that, in one way or another, happen to register such trademark
ahead of its true and lawful owner.
1. BIRKENSTOCK submitted evidence relating to the origin and history of
"BIRKENSTOCK" mark and its use in commerce long before respondent
was able to register the same here in the Philippines. It has sufficiently
proven that "BIRKENSTOCK" was first adopted in Europe in 1774 by its
inventor, Johann Birkenstock.It also submitted various certificates of
registration of the mark "BIRKENSTOCK" in various countries and that it
has used such mark in different countries worldwide, including the
Philippines.
Under Section 2 of RA 166, 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 two
(2) months prior to the application for registration.
To be an owner, Section 2-A does NOT require that the
actual use of a trademark must be within the Philippines. One may be
an owner of a mark due to its actual use but may not yet have the right
to register such ownership here due to the owners failure to use the
same in the Philippines for two (2) months prior to registration.
REGISTRATION OF A TRADEMARK, by itself, is
NOT a mode of acquiring ownership. If the applicant is NOT the
owner of the trademark, he has no right to apply for its
registration
REGISTRATION merely creates a prima facie
presumption of the validity of the registration, of the registrants
ownership of the trademark, and of the exclusive right to the use
thereof. Such presumption, just like the presumptive regularity in the
performance of official functions, is rebuttable and must give way to
evidence to the contrary.
It
is not the application or registration of a trademark that vests
ownership thereof, but it is the OWNERSHIP OF A
TRADEMARK that confers the right to register the same.
2. SHOE EXPO admitted that it failed to file the 10th Year DAU within the
requisite period. RA 166 clearly reveals that failure to file the DAU within
 the requisite periods results in an automatic cancellation of registration
of a trademark. Such failure is tantamount to the abandonment or
02 MIRPURI v CA
EMERGENCY RECIT: The petitioner and private respondent were both claiming
over the trademark BARBIZON. Petitioner claims that it had been using the
trademark since 1970; whereas the resp claims that prior to petitioner, it had been
using the trademark, and it was even registered in US patent office. Resp argued
that he as a foreign corp, it is protected under Paris Convention. Court ruled that
the treaty indeed protects foreign nationals considering the importance of a
trademark.
FACTS:
1. Lolita Escobar filed an application with the Bureau of Patents for the
registration of the trademark "Barbizon" for use in brassieres and ladies
undergarments alleging that she had been manufacturing and selling these
products under the firm name "L & BM Commercial" since 1970.
2. Barbizon Corporation, a corporation organized and doing business under
the laws of New York, U.S.A., opposed the application claiming that it
will bedamaged by the registration of the mark MARBIZON and its
business reputation and goodwill will suffer.
a. said mark BARBIZON which resembles the trademark used and
owned by opposer, constitutes an unlawful appropriation of a
mark previously used in the Philippines and not abandoned and
therefore a statutory violation of Section 4 (d) of Republic Act
No. 166
3. Dir. of Patents: dismissed the opposition, gave due course to Escobar.
4. Decision became final; Escobar was issued a certificate of registration for
the trademaerk Barbizon.
5. Escobar assigned all her rights over it to Mirpuri, who was the sole and
exclusive distributor of Barbizon products.
6. Escobar failed to file with the Bureau of Patents the Affidavit of Use of
the trademark, Due to this failure, the Bureau of Patents cancelled
Escobar's certificate of registration.
7. Mirpuri wanted to register it, but the oppositor argued that they have been
using it. Escobar reapplied for registration of the cancelled
trademark. Mirpuri filed his own application for registration of Escobar's
trademark. Escobar later assigned her application to herein petitioner and
this application was opposed by private respondent.
8. Petitioners defense: red judicatsta.
9. Mirpuri registered Barbizon International with DTI, private resp opposed.
10. DTI: cancelled Mirpuris certificate.
11. Meanwhile, Dir of Patents rendered a decision declaring priv resps
opposition barred by res judicata. Private resp questioned this before CA.
12. CA: reversed. Hence, this petition.
withdrawal of any right or interest the registrant has over the trademark.
13. Private resp: BARBIZON has been used in trade or commerce in the
Philippines prior to the date of application for the registration of the
identical mark BARBIZON by Escobar
a. Argued that his corporation is protected by Paris Convention
particularly Art. 6bis
(1) The countries of the Union undertake, either administratively if their legislation
so permits, or at the request of an interested party, to refuse or to cancel the
registration and to prohibit the use, of a trademark which constitutes a
reproduction, an imitation, or a translation, liable to create confusion, of a mark
considered by the competent authority of the country of registration or use to be
well-known in that country as being already the mark of a person entitled to the
benefits of this Convention and used for identical or similar goods. These
provisions shall also apply when the essential part of the mark constitutes a
reproduction of any such well-known mark or an imitation liable to create
confusion therewith.
b. "Pursuant to the Paris Convention for the Protection of Industrial
Property to which the Philippines is a signatory it is 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.
14. Mirpuri: she first used the trademark BARBIZON for brassiere (or
'brasseire') and ladies underwear garments and panties as early as March 3,
1970.
ISSUE: WON treaty (Paris Convention) affords protection to a foreign corporation
against a Philippine applicant for the registration of a similar trademark.
HELD: Yes
RATIO:
FUNCTIONS OF TRADEMARK:
"trademark" as "any visible sign capable of distinguishing goods."
o the function of a trademark is to point out distinctly the origin or
ownership of the goods to which it is affixed; to secure to him,
who has been instrumental in bringing into the market a superior
article of merchandise, the fruit of his industry and skill; to assure
the public that they are procuring the genuine article; to prevent
fraud and imposition; and to protect the manufacturer against
substitution and sale of an inferior and different article as his
product.
 o Modern authorities on trademark law view trademarks as
performing three distinct functions: (1) they indicate origin or
ownership of the articles to which they are attached; (2) they
guarantee that those articles come up to a certain standard of
quality; and (3) they advertise the articles they symbolize.
o Today, the trademark is not merely a symbol of origin and
goodwill; it is often the most effective agent for the actual
creation and protection of goodwill. It imprints upon the public
mind an anonymous and impersonal guaranty of satisfaction,
creating a desire for further satisfaction. In other words, the
mark actually sells the goods.
o Trademarks deal with the psychological function of symbols and
the effect of these symbols on the public at large. Trademarks
play a significant role in communication, commerce and
trade, and serve valuable and interrelated business functions,
both nationally and internationally. For this reason, all
agreements concerning industrial property, like those on
trademarks and tradenames, are intimately connected with
economic development.
DUE TO THESE FUNCTIONS, THE PARIS CONVENTION LIMITS THE
REGISTRATION OF TRADEMARKS THAT ARE WELL-KNOWN.
- . The Paris Convention is a multilateral treaty that seeks to protect
industrial property consisting of patents, utility models, industrial
designs, trademarks, service marks, trade names and indications of
source or appellations of origin, and at the same time aims to repress
unfair competition. In short, foreign nationals are to be given the same
treatment in each of the member countries as that country makes
available to its own citizens. Nationals of the various member nations are
thus assured of a certain minimum of international protection of their
industrial property.
o Both the Philippines and the United States of America, herein
private respondent's country, are signatories to the
Convention. The United States acceded on May 30, 1887 while
the Philippines, through its Senate, concurred on May 10, 1965.
The Philippines' adhesion became effective on September 27,
1965, and from this date, the country obligated itself to honor and
enforce the provisions of the Convention
03 La Chemise Lacoste v Fernandez
FACTS:
1. Lacoste is a foreign corporation, organized and existing under the laws of
France and not doing business in the Philippines. It is a well-known
European manufacturer of clothings and sporting apparels sold in the
international market
2. Hemandas & Co, a duly licensed domestic firm applied for and was issued
Supplemental Register (SR) for the trademark CHEMISE LACOSTE &
CROCODILE DEVICE for use on T-shirts, sportswear and other garment
products of the company
3. It applied for the registration of the same trademark under the Principal
Register which application was allowed.
4. Lacoste filed its application for registration of the trademark
CROCODILE DEVICE and LACOSTE, the former being approved
for publication while the latter was opposed by Games and Garments.
Lacoste also filed a petition for the cancellation of Respondents SR
5. Lacoste filed with the NBI a letter-complaint alleging therein the acts of
unfair competition being committed by respondent and requesting their
assistance in his apprehension and prosecution
6. The NBI conducted an investigation and subsequently filed with
respondent court 2 applications for the issuance of search warrants which
would authorize the search of the premises used and occupied by the
Lacoste Sports Center and Games and Garments both owned and operated
by respondents
7. Respondent court issued search warrants for violation of Article 189 of the
RPC. The NBI agents executed the search warrants and as a result of the
search found and seized various goods and articles described in the
warrants
8. Respondent filed a motion to quash the search warrants alleging that the
trademark used by him was different from petitioners trademark and that
pending the resolution of the IPC, any criminal or civil action on the same
subject matter and between the same parties would be premature.
9. Respondent court was convinced that there was no probable cause to
justify the issuance of the search warrants, thus the search warrants were
recalled and set aside
ISSUE: Whether or not petitioners trademark is a well-known mark. YES.
RATIO:
[Function]
 They are to point out distinctly the origin or ownership of the article to
which it is affixed, to secure to him, who has been instrumental in
bringing into market a superior article of merchandise, the fruit of his
industry and skill, and to prevent fraud and imposition
The law against such depredations is not only for the protection of the
owner of the trademark but also, and more importantly, for the protection
of purchasers from confusion, mistake, or deception as to the goods they
are buying
The law on trademarks and tradenames is based on the principle of
business integrity and common justice' This law, both in letter and spirit, is
laid upon the premise that, while it encourages fair trade in every way and
aims to foster, and not to hamper, competition, no one, especially a trader,
is justified in damaging or jeopardizing another's business by fraud, deceit,
trickery or unfair methods of any sort. This necessarily precludes the
trading by one dealer upon the good name and reputation built up by
another
[Main Issue]
Pursuant to this obligation, the Ministry of Trade on November 20, 1980
issued a memorandum addressed to the Director of the Patents Office
directing the latter: to reject all pending applications for Philippine
registration of signature and other world famous trademarks by applicants
other than its original owners or users; This included the marks of Lacoste,
Givenchy, Ralph Lauren, etc.
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
We have carefully gone over the records of all the cases filed in this Court
and find more than enough evidence to sustain a finding that the petitioner
is the owner of the trademarks
Any pretensions of the private respondent that he is the owner are
absolutely without basis. Any further ventilation of the issue of ownership
before the Patent Office will be a superfluity and a dilatory tactic.
04 Lyceum of the Philippines v. CA
FACTS:
1. Lyceum of the Philippines Inc. commenced in the SEC a proceeding
against the Lyceum of Baguio, Inc. to require it to change its corporate
name and to adopt another name not "similar [to] or identical" to it.
2. In an Order, Associate Commissioner Sulit held that the corporate name of
petitioner and that of the Lyceum of Baguio, Inc. were substantially
identical because of the presence of a "dominant" word, i.e., "Lyceum"
3. The SEC also noted that Lyceum of the Philippines Inc. had registered as a
corporation ahead of the Lyceum of Baguio, Inc. in point of time, and
ordered the latter to change its name to another name "not similar or
identical [with]" the names of previously registered entities
4. The Lyceum of Baguio, Inc. assailed the Order of the SEC before the
Supreme Court. In a Minute Resolution, the Court denied the Petition for
Review for lack of merit
5. Armed with the Resolution of the Supreme Court, the Lyceum of the
Philippines then wrote all the educational institutions it could find using
the word "Lyceum" as part of their corporate name, and advised them to
discontinue such use of "Lyceum."
6. After some time, it became clear that this recourse had failed, Lyceum of
the Philippines instituted before the SEC to enforce what Lyceum of the
Philippines claims as its proprietary right to the word "Lyceum."
7. The SEC sustaining petitioner's claim to an exclusive right to use the word
"Lyceum." The hearing officer relied upon the SEC ruling in the Lyceum
of Baguio, Inc. case and held that the word "Lyceum" was capable of
appropriation and that petitioner had acquired an enforceable exclusive
right to the use of that word
8. On appeal, however, by Lyceum of Aparri, Lyceum Of Cabagan, Lyceum
Of Camalaniugan, Inc., Lyceum Of Lallo, Inc., Lyceum Of Tuao, Inc.,
Buhi Lyceum, Central Lyceum Of Catanduanes, Lyceum Of Southern
Philippines, Lyceum Of Eastern Mindanao, Inc. and Western Pangasinan
Lyceum, Inc., which are also educational institutions, to the SEC En Banc,
the decision of the hearing officer was reversed and set aside
9. The SEC En Banc did not consider the word "Lyceum" to have become so
identified with Lyceum of the Philippines as to render use thereof by other
institutions as productive of confusion about the identity of the schools
concerned in the mind of the general public
10. SEC En Banc held that the attaching of geographical names to the word
"Lyceum" served sufficiently to distinguish the schools from one another,
especially in view of the fact that the campuses of Lyceum of the
 Philippines and those of the other Lyceums were physically quite remote
from each other
ISSUES:
1. Whether the names of the contending Lyceum schools are confusingly
similar. NO.
2. Whether the use by the Lyceum of the Philippines of "Lyceum" in its
corporate name has been for such length of time and with such exclusivity
as to have become associated or identified with the petitioner institution in
the mind of the general public (or at least that portion of the general public
which has to do with schools). NO.
RATIO:
The Court does not consider that the corporate names of the academic
institutions are "identical with, or deceptively or confusingly similar" to
that of Lyceum of the Philippines Inc.
True enough, the corporate names of the other schools (defendant
institutions) entities all carry the word "Lyceum" but confusion and
deception are effectively precluded by the appending of geographic names
to the word "Lyceum."
To determine whether a given corporate name is "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
Lyceum of the Philippines is juxtaposed with the names of private
respondents, they are not reasonably regarded as "identical" or
"confusingly or deceptively similar" with each other
The number alone of the private respondents in the present case suggests
strongly that the Lyceum of the Philippines' use of the word "Lyceum" has
not been attended with the exclusivity essential for applicability of the
doctrine of secondary meaning
It may be noted also that at least one of the private respondents, i.e., the
Western Pangasinan Lyceum, Inc., used the term "Lyceum" 17 years
before Lyceum of the Philippines registered its own corporate name with
the SEC and began using the word "Lyceum."
It follows that if any institution had acquired an exclusive right to the
word "Lyceum," that institution would have been the Western Pangasinan
Lyceum, Inc. rather than Lyceum of the Philippines
Hence, Lyceum of the Philippines 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.
05 FREDCO V. HARVARD UNIVERSITY
Facts:
1. In 2005, Fredco Manufacturing Corp filed a petition for cancellation before the
Bureau of Legal Affairs of the Philippine Intellectual Property Office against
the President and Fellows of Harvard College for the registration of its mark
Harvard Veritas Shield Symbol under the Classes 16, 18, 21, 25 and 28 of
the Nice International Classification of Goods an Services alleging that its
predecessor-in-interest, New York Garments has been already using the mark
Harvard since 1985 when it registered the same mark under Class 25 of the
Nice Classification. Thus, Harvard University is not a prior user of the mark in
the Philippines and, therefore, has no right to register the mark
2. Harvard University claimed that the mark Harvard has been adopted by
Harvard University in Cambridge, Massachusetts, USA since 1639.
Furthermore, it alleges that the name and mark Harvard and Harvard
Veritas Shield Symbol is registered in more than 50 countries, including the
Philippines, and has been used in commerce since 1872. In fact, the name and
mark is rated as one of the top brands of the world, being worth between
$750M and $1B.
3. Decision of BLA-IPO: The Bureau of Legal Affairs, IPO ruled in favour of
Fredco ordering the cancellation of Harvard Universitys mark under Class 25
only because the other classes were not confusingly similar with respect to the
goods and services of Fredco.
4. Decision of ODG-IPO: Harvard University appealed before the Office of the
Director General of IPO wherein ODG-IPO reversed the decision of BLA-IPO.
The Director General ruled that the applicant must also be the owner of the
mark sought to be registered aside from the use of it. Thus, Fredco is not the
owner of the mark because it failed to explain how its predecessor got the mark
Harvard. There was also no evidence of the permission of Harvard
University for Fredco to use the mark.
5. CA: Fredco appealed the decision of the Director General before the CA,
which then affirmed the decision of ODG-IPO. CA ruled that Harvard
University had been using the marks way before Fredco and the petitioners
failed to explain its use of the marks bearing the words Harvard, USA,
Established 1936 and Cambridge, Massachusetts within an oblong device.
Issue: W/N CA erred in affirming the decision of ODG-IPO
Held: NO
1. Although R.A. 166 Section 2 states that before a mark can be registered, it
must have been actually used in commerce for not less than two months in the
Philippines prior to filing an application for its registration, a trademark
registered in a foreign country which is a member of the Paris Convention is
allowed to register without the requirement of use in the commerce in the
Philippines.
2. Under Section 37 of R.A. 166, registration based on home certificate is
allowed and does not require the use of the mark in the Philippines.
3. The petition should fail because:
a. The inclusion of the origin Cambridge, Massachusetts in Fredcos
mark connotes that Fredco is associated with Harvard University,
which is really not true. The registration of Fredcos mark should
have been rejected.
b. The Philippines is a signatory of the Paris Convention, which
provides for the protection against violation of intellectual property
rights to all the member countries regardless of whether the
trademarks is registered or not in a particular country.
4. 1980, Luis Villafuerte issued a memo to the Director of Patents ordering the
latter to reject all pending applications of marks which involves a well-known
brand around the world by applicants other than the owner of the mark.
5. 1983, Roberto Ongpin affirmed the memo of Villafuerte by commanding the
Director of Patents to implement measures which will comply with the
provisions of the Paris Convention. He provided criteria that should be
considered to any marks that are well-known in the Philippines or marks that
belong to persons subject to the protection of the Convention.
6. Currently, well-known marks are protected under Section 123.1(e) of R.A.
8293. Additionally, Rule 102 of the Rules and Regulations on Trademarks,
Service Marks, Trade Names and Marked or Stamped Containers provides for
the criteria in determining a well-known mark. The use of the mark in
commerce is not anymore required because it is enough that any
combination of the criteria be met in order for a mark to be well-known.
7. The ODG-IPO traced the origin of the mark Harvard. It ruled that Harvard
University had been using the mark centuries before Fredco although the latter
may have used the mark first in the Philippines before the former.
8. Likewise, CA ruled that the name and mark Harvard and Harvard Veritas
Shield Symbol were first used in the United States since 1953 under Class 25.
9. SC declared the mark Harvard to be well-known internationally, including
the Philippines.
06 Dermaline, Inc. vs. Myra Pharmaceuticals, Inc. [2010]
Sorry and haba. Pero ang chunky talaga ng discussion ng SC. Sinama ko na lahat
since twice sya nag appear sa guide questions
Facts:
2006 Pet Dermaline, Inc. filed before the Intellectual Property Office (IPO) an
application for registration of the trademark " DERMALINE DERMALINE, INC."
Resp Myra filed an Opposition alleging that
- The trademark sought to be registered by pet so resembles its trademark
"DERMALIN" and will likely cause confusion, mistake and deception to
the purchasing public
- That the registration of pets trademark will violate Sec. 123 of the IP
Code.
- That pets use and registration of its applied trademark will diminish the
distinctiveness and dilute the goodwill of Myras "DERMALIN,"
registered w/ the IPO way back July 8, 1986, renewed for 10 years on July
8, 2006. Myra has been extensively using "DERMALIN" commercially
since Oct. 31, 1977, and said mark is still valid and subsisting
- That, despite pets attempt to differentiate its applied mark, the dominant
feature is the term "DERMALINE," w/c is practically identical w/ its own
"DERMALIN," more particularly that the 1 st 8 letters of the marks are
identical, and that notwithstanding the additional letter "E" by pet
Dermaline, the pronunciation for both marks are identical; both marks
have 3 syllables each, w/ each syllable identical in sound and appearance
Myra added that even if the subject application was under Classification for various
skin treatments, it could still be connected to the "DERMALIN" mark under
Classification for pharmaceutical products, since ultimately these goods are very
closely related.
IPO sustained resps opposition. Pets MR and appeal denied. CA affirmed IPOs
decision. Hence, this pet
Issue: w/n the IPO should allow pet the registration of the trademark Dermaline.
Held: No
In determining likelihood of confusion, case law has developed 2 tests, the
Dominancy Test and the Holistic or Totality Test
The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion or deception. It is applied when
the trademark sought to be registered contains the main, essential and dominant
features of the earlier registered trademark, and confusion or deception is likely to
result. Duplication or imitation is not even required; neither is it necessary that the
label of the applied mark for registration should suggest an effort to imitate. The
important issue is whether the use of the marks involved would likely cause
confusion or mistake in the mind of or deceive the ordinary purchaser, or one who
is accustomed to buy, and therefore to some extent familiar with, the goods in
question. Given greater consideration are the aural and visual impressions created
by the marks in the public mind, giving little weight to factors like prices, quality,
sales outlets, and market segments. The test of dominancy is now explicitly
incorporated into law in Sec. 155.1 of IPC
On the other hand, the Holistic Test entails a consideration of the entirety of the
marks as applied to the products, including labels and packaging, in determining
confusing similarity. The scrutinizing eye of the observer must focus not only on
the predominant words but also on the other features appearing in both labels so
that a conclusion may be drawn as to whether one is confusingly similar to the
other.
Relative to the question on confusion of marks and trade names, jurisprudence has
noted 2 types of confusion
- (1) confusion of goods (product confusion), where the ordinarily prudent
purchaser would be induced to purchase one product in the belief that he
was purchasing the other; and
- (2) confusion of business (source or origin confusion), where, although the
goods of the parties are different, the product, the mark of which
registration is applied for by one party, is such as might reasonably be
assumed to originate with the registrant of an earlier product, and the
public would then be deceived either into that belief or into the belief that
there is some connection b/w the 2 parties, though inexistent.
In rejecting the application of Dermaline for the registration of its mark
"DERMALINE the IPO applied the Dominancy Test. It declared that both
confusion of goods and service and confusion of business or of origin were
apparent in both trademarks.
The IPO also upheld Myras right under Sec. 138 of IPC, w/c provides that a
certification of registration of a mark is prima facie evid of the validity of the
registration, the registrants ownership of the mark, and of the registrants exclusive
right to use the same in connection w/ the goods and those that are related thereto
specified in the certificate.
SC agreed w/ the findings of the IPO. While there are no set rules that can be
deduced as what constitutes a dominant feature w/ respect to trademarks applied for
registration; usually, 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 consumer.
Application and other discussions made by SC
Dermalines mark is written with the first "DERMALINE" in script going
diagonally upwards from left to right, with an upper case "D" followed by the rest
of the letters in lower case; while Myras mark "DERMALIN" is written in an
upright font, with a capital "D" and followed by lower case letters the likelihood
of confusion is still apparent. This is b/c they are almost spelled in the same way,
except for Dermalines mark w/c ends with the letter "E," and they are pronounced
practically in the same manner in 3 syllables, w/ the ending letter "E" in
Dermalines mark pronounced silently. Thus, when an ordinary purchaser, for
example, hears an advertisement of Dermalines applied trademark over the radio,
chances are he will associate it with Myras registered mark.
Further, pets stance that its product belongs to a separate and different
classification from resps products w/ the registered trademark does not eradicate
the possibility of mistake on the part of the purchasing public to associate the
former with the latter, especially considering that both classifications pertain to
treatments for the skin.
Indeed, the registered trademark owner may use its 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 is cognizant that the registered trademark owner enjoys protection in product
and market areas that are the normal potential expansion of his business. Thus, we
have held
Modern law recognizes that the protection to which the owner of
a trademark is entitled is not limited to guarding his goods or
business from actual market competition with identical or similar
products of the parties, but extends to all cases in which the use
by a junior appropriator of a trade-mark or trade-name is likely to
lead to a confusion of source, as where prospective purchasers
would be misled into thinking that the complaining party has
extended his business into the field or is in any way connected w/
the activities of the infringer; or when it forestalls the normal
potential expansion of his business [American Jurisprudence]
Thus, the public may mistakenly think that Dermaline is connected to or associated
w/ 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.
Verily, when one applies for the registration of a trademark or label which is almost
the same or that very closely resembles one already used and registered by another,
the application should be rejected and dismissed outright, even w/o 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.
 07 Societe Des Produits Nestle v. CA
Facts:
1. In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks,
and Technology Transfers an application for the registration of its
trademark Flavor Master an instant coffee
2. Nestle opposed the application as it alleged that Flavor Master is
confusingly similar to Nestle coffee products like Master Blend and
Master Roast
3. Nestle alleged that in promoting their products, the word Master has been
used so frequently so much so that when one hears the word Master it
connotes to a Nestle product
4. They provided as examples the fact that theyve been using Robert
Jaworski and Ric Puno Jr. as their commercial advertisers; and that in
those commercials Jaworski is a master of basketball and that Puno is a
master of talk shows; that the brand of coffee equitable or fit to them is
Master Blend and Master Roast
5. CFC Corporation on the other hand alleged that the word Master is a
generic and a descriptive term, hence not subject to trademark
6. The Director of Patents ruled in favor of Nestle but the Court of Appeals,
using the Holistic Test, reversed the said decision.
ISSUE: Whether or not the Court of Appeals is correct. YES.
HELD:
The proper test that should have been used is the Dominancy Test
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
The use of the word Master by Nestle in its products and commercials has
made Nestle acquire a connotation that if its a Master product it is a Nestle
product. 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
Using the dominancy test, it is sufficiently established that the word MASTER
is the dominant feature of opposers mark
08 Shang Properties v. St. Francis Development Corporation
GR No. 190706; July 21, 2014
FACTS:
The word MASTER is printed across the middle portion of the label in bold
letters almost twice the size of the printed word ROAST. Further, the word
MASTER has always been given emphasis in the TV and radio commercials
and other advertisements made in promoting the product
It is the observation of this Office that much of the dominance which the word
MASTER has acquired through Opposers advertising schemes is carried over
when the same is incorporated into respondent-applicants trademark FLAVOR
MASTER. Thus, when one looks at the label bearing the trademark FLAVOR
MASTER ones attention is easily attracted to the word MASTER, rather than
to the dissimilarities that exist. Therefore, the possibility of confusion as to the
goods which bear the competing marks or as to the origins thereof is not
farfetched
In addition, the word MASTER is neither a generic nor a descriptive term.
As such, said term cannot be invalidated as a trademark and, therefore, may be
legally protected
Generic terms are those which 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
On the other hand, a term is descriptive and therefore invalid as a trademark
if, as understood in its normal and natural sense, it forthwith conveys the
characteristics, functions, qualities or ingredients of a product to one who has
never seen it and does not know what it is, or if it forthwith conveys an
immediate idea of the ingredients, qualities or characteristics of the goods, or
if it clearly denotes what goods or services are provided in such a way that the
consumer does not have to exercise powers of perception or imagination
Rather, the term MASTER is a suggestive term brought about by the
advertising scheme of Nestle. Suggestive terms are those which, in the
phraseology of one court, 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. While suggestive marks are capable of
shedding some light upon certain characteristics of the goods or services in
dispute, they nevertheless involve an element of incongruity,
figurativeness, or imaginative effort on the part of the observer.
Respondent domestic corporation is engaged in the real estate business and is
the developer of the St. Francis Square Commercial Center (built sometime in
1992).
It filed separate complaints against petitioners before the IPO - BLA, namely:
(a) IPV Case an intellectual property violation case for unfair competition,
false or fraudulent declaration, and damages arising from petitioners use and
 filing of applications for the registration of the marks THE ST. FRANCIS
TOWERS and THE ST. FRANCIS SHANGRI-LA PLACE,; and
(b) St. Francis Towers IP Case an inter partes case opposing the
petitioners application for registration of the mark THE ST. FRANCIS
TOWERS for use relative to the latters business, particularly the construction
of permanent buildings or structures for residential and office purposes; and
(c) St. Francis Shangri-La IP Case an inter partes case opposing the
petitioners application for registration of the mark THE ST. FRANCIS
SHANGRI-LA PLACE,.
Respondent alleged that it has used the mark ST. FRANCIS to identify its
numerous property development projects located at Ortigas Center, such as the
aforementioned St. Francis Square Commercial Center, a shopping mall called
the St. Francis Square, and a mixed-use realty project plan that includes the
St. Francis Towers. Respondent added that as a result of its continuous use of
the mark ST. FRANCIS in its real estate business, it has gained substantial
goodwill with the public that consumers and traders closely identify the said
mark with its property development projects. Accordingly, respondent claimed
that petitioners could not have the mark THE ST. FRANCIS TOWERS
registered in their names, and that petitioners use of the marks THE ST.
FRANCIS TOWERS and THE ST. FRANCIS SHANGRI-LA PLACE in
their own real estate development projects constitutes unfair competition as
well as false or fraudulent declaration.
Petitioners denied committing unfair competition and false or fraudulent
declaration, maintaining that they could register the mark THE ST. FRANCIS
TOWERS and THE ST. FRANCIS SHANGRI-LA PLACE under their
names. They contended that respondent is barred from claiming ownership and
exclusive use of the mark ST. FRANCIS because the same is geographically
descriptive of the goods or services for which it is intended to be used. This is
because respondents as well as petitioners real estate development projects
are located along the streets bearing the name St. Francis, particularly, St.
Francis Avenue and St. Francis Street (now known as Bank Drive), both within
the vicinity of the Ortigas Center.
ISSUE:
Whether or not petitioners are guilty of unfair competition in using the marks
THE ST. FRANCIS TOWERS and THE ST. FRANCIS SHANGRI-LA
PLACE.
HELD:
NO.
The unfair competition concept refers to the the passing off (or palming off)
or attempting to pass off upon the public of the goods or business of one
person as the goods or business of another with the end and probable effect of
deceiving the public. Passing off (or palming off) takes place where the
defendant, by imitative devices on the general appearance of the goods,
misleads prospective purchasers into buying his merchandise under the
impression that they are buying that of his competitors. [In other words], the
defendant gives his goods the general appearance of the goods of his
competitor with the intention of deceiving the public that the goods are those
of his competitor.
The true test of unfair competition has thus been whether the acts of
the defendant have the intent of deceiving or are calculated to deceive the
ordinary buyer making his purchases under the ordinary conditions of the
particular trade to which the controversy relates. Based on the foregoing,
it is therefore essential to prove the existence of fraud, or the intent to deceive,
actual or probable, determined through a judicious scrutiny of the factual
circumstances attendant to a particular case.
Here, the Court finds the element of fraud to be wanting; hence, there can be
no unfair competition. The CAs contrary conclusion was faultily premised on
its impression that respondent had the right to the exclusive use of the mark
ST. FRANCIS, for which the latter had purportedly established considerable
goodwill. What the CA appears to have disregarded or been mistaken in its
disquisition, however, is the geographically descriptive nature of the mark ST.
FRANCIS which thus bars its exclusive appropriability, unless a secondary
meaning is acquired.
As deftly explained in the U.S. case of Great Southern Bank v. First Southern
Bank: [d]escriptive geographical terms are in the public domain in the
sense that every seller should have the right to inform customers of the
geographical origin of his goods. A geographically descriptive term is any
noun or adjective that designates geographical location and would tend to be
regarded by buyers as descriptive of the geographic location of origin of the
goods or services. A geographically descriptive term can indicate any
geographic location on earth, such as continents, nations, regions, states,
cities, streets and addresses, areas of cities, rivers, and any other location
referred to by a recognized name. In order to determine whether or not the
geographic term in question is descriptively used, the following question is
relevant: (1) Is the mark the name of the place or region from which the
goods actually come? If the answer is yes, then the geographic term is
probably used in a descriptive sense, and secondary meaning is required
for protection.
Secondary meaning is established when a descriptive mark no longer causes
the public to associate the goods with a particular place, but to associate the
goods with a particular source. In other words, it is not enough that a
geographically-descriptive mark partakes of the name of a place known
generally to the public to be denied registration as it is also necessary to show
 that the public would make a goods/place association that is, to believe that
the goods for which the mark is sought to be registered originate in that place.
However, where there is no genuine issue that the geographical significance
of a term is its primary significance and where the geographical place is
neither obscure nor remote, a public association of the goods with the
place may ordinarily be presumed from the fact that the applicants own
goods come from the geographical place named in the mark
Issue: W/N CA erred in affirming the decision of ODG-IPO
Held: NO
09 FREDCO V. HARVARD UNIVERSITY [SUPRA CASE 05]
Facts:
1. In 2005, Fredco Manufacturing Corp filed a petition for cancellation
before the Bureau of Legal Affairs of the Philippine Intellectual Property
Office against the President and Fellows of Harvard College for the
registration of its mark Harvard Veritas Shield Symbol under the
Classes 16, 18, 21, 25 and 28 of the Nice International Classification of
Goods an Services alleging that its predecessor-in-interest, New York
Garments has been already using the mark Harvard since 1985 when it
registered the same mark under Class 25 of the Nice Classification. Thus,
Harvard University is not a prior user of the mark in the Philippines and,
therefore, has no right to register the mark
2. Harvard University claimed that the mark Harvard has been adopted by
Harvard University in Cambridge, Massachusetts, USA since 1639.
Furthermore, it alleges that the name and mark Harvard and Harvard
Veritas Shield Symbol is registered in more than 50 countries, including
the Philippines, and has been used in commerce since 1872. In fact, the
name and mark is rated as one of the top brands of the world, being worth
between $750M and $1B.
3. Decision of BLA-IPO: The Bureau of Legal Affairs, IPO ruled in favour
of Fredco ordering the cancellation of Harvard Universitys mark under
Class 25 only because the other classes were not confusingly similar with
respect to the goods and services of Fredco.
4. Decision of ODG-IPO: Harvard University appealed before the Office of
the Director General of IPO wherein ODG-IPO reversed the decision of
BLA-IPO. The Director General ruled that the applicant must also be the
owner of the mark sought to be registered aside from the use of it. Thus,
Fredco is not the owner of the mark because it failed to explain how its
predecessor got the mark Harvard. There was also no evidence of the
permission of Harvard University for Fredco to use the mark.
5. CA: Fredco appealed the decision of the Director General before the CA,
which then affirmed the decision of ODG-IPO. CA ruled that Harvard
University had been using the marks way before Fredco and the
petitioners failed to explain its use of the marks bearing the words
Harvard, USA, Established 1936 and Cambridge, Massachusetts
within an oblong device.
Although R.A. 166 Section 2 states that before a mark can be registered, it
must have been actually used in commerce for not less than two months in
the Philippines prior to filing an application for its registration, a
trademark registered in a foreign country which is a member of the Paris
Convention is allowed to register without the requirement of use in the
commerce in the Philippines.
Under Section 37 of R.A. 166, registration based on home certificate is
allowed and does not require the use of the mark in the Philippines.
The petition should fail because:
a. The inclusion of the origin Cambridge, Massachusetts in Fredcos
mark connotes that Fredco is associated with Harvard University,
 which is really not true. The registration of Fredcos mark should
have been rejected.
b. The Philippines is a signatory of the Paris Convention, which
provides for the protection against violation of intellectual property
rights to all the member countries regardless of whether the
trademarks is registered or not in a particular country.
1980, Luis Villafuerte issued a memo to the Director of Patents ordering
the latter to reject all pending applications of marks which involves a well-
known brand around the world by applicants other than the owner of the
mark.
1983, Roberto Ongpin affirmed the memo of Villafuerte by commanding
the Director of Patents to implement measures which will comply with the
provisions of the Paris Convention. He provided criteria that should be
considered to any marks that are well-known in the Philippines or marks
that belong to persons subject to the protection of the Convention.
Currently, well-known marks are protected under Section 123.1(e) of R.A.
8293. Additionally, Rule 102 of the Rules and Regulations on Trademarks,
Service Marks, Trade Names and Marked or Stamped Containers provides
for the criteria in determining a well-known mark. The use of the mark in
commerce is not anymore required because it is enough that any
combination of the criteria be met in order for a mark to be well-known
The ODG-IPO traced the origin of the mark Harvard. It ruled that
Harvard University had been using the mark centuries before Fredco
although the latter may have used the mark first in the Philippines before
the former
Likewise, CA ruled that the name and mark Harvard and Harvard
Veritas Shield Symbol were first used in the United States since 1953
under Class 25.
SC declared the mark Harvard to be well-known internationally,
including the Philippines.
010 246 Corporation v. Daway, 416 SCRA 315 (2003)
Facts:
Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors
of Rolex and Crown Device, filed against petitioner 246 Corporation the
instant suit for trademark infringement and damages with prayer for the
issuance of a restraining order or writ of preliminary injunction.
Respondents alleged that sometime in July 1996, petitioner adopted and,
since then, has been using without authority the mark "Rolex" in
its business name "Rolex Music Lounge" as well as in its newspaper
advertisements as "Rolex Music Lounge, KTV, Disco & Party Club."
Petitioner argued that respondents have no cause of action because no
trademark infringement exist; that no confusion would arise from the use
by petitioner of the mark "Rolex" considering that its entertainment
business is totally unrelated to the items catered by respondents such as
watches, clocks, bracelets and parts thereof.
Issue:
Whether or not a trademark infringement exists
Ruling:
The issue of whether or not a trademark infringement exists, is a question
of fact that could best be determined by the trial court.
Section 123.1(f) of the Intellectual Property Code (Republic Act No.
8293), which took effect on January 1, 1998 provides:
Sec. 123. Registrability. 123.1. A mark cannot be registered if it:
xxxxxxxxx
(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 interest of the owner of the registered mark are
likely to be damaged by such use; (Emphasis supplied)
A junior user of a well-known mark on goods or services which are not
similar to the goods or services, and are therefore unrelated, to those
specified in the certificate of registration of the well-known mark is
precluded from using the same on the entirely unrelated goods or services,
subject to the following requisites:
1. The mark is well-known internationally and in the Philippines. Under Rule 102
of the Rules and Regulations on Trademarks, Service Marks, Trade Names and
Marked or Stamped Containers, in determining whether a mark is well known, the
following criteria or any combination thereof may be taken into account:
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 advertising or publicity and presentation, at fairs or
exhibitions, of the goods and/or services to which the mark applies;
 b) the market share in the Philippines and in other countries, of the goods
and/or services to which the mark applies;
c) the degree of the inherent or acquired distinction of the mark;
d) the quality-image or reputation acquired by the mark;
e) the extent to which the mark has been registered in the world;
present controversy considering that the requisites for the application of
Section 123.1(f), which constitute the kernel issue at bar, clearly require
determination facts of which need to be resolved at the trial court. The
existence or absence of these requisites should be addressed in a full
blown hearing and not on a mere preliminary hearing. The respondent
must be given ample opportunity to prove its claim, and the petitioner to
debunk the same.

f) the exclusivity of the registration attained by the mark in the world;

g) the extent to which the mark has been used in the world;

h) the exclusivity of use attained by the mark in the world;

i) the commercial value attributed to the mark in the world;

j) the record of successful protection of the rights in the mark;

k) the outcome of litigations dealing with the issue of whether the mark is a
well-known mark; and

l) the presence of absence of identical or similar marks validly registered for

or used on identical or similar goods or services and owned by persons
other than the person claiming that his mark is a well-known mark.

2. The use of the well-known mark on the entirely unrelated goods or services
would indicate a connection between such unrelated goods or services and those
goods or services specified in the certificate of registration in the well known
mark. This requirement refers to the likelihood of confusion of origin or business or
some business connection or relationship between the registrant and the user of the
mark.

3. The interests of the owner of the well-known mark are likely to be damaged. For
instance, if the registrant will be precluded from expanding its business to those
unrelated good or services, or if the interests of the registrant of the well-known
mark will be damaged because of the inferior quality of the good or services of the
user

Section 123.1(f) is clearly in point because the Music Lounge of petitioner

is entirely unrelated to respondents business involving watches, clocks,
bracelets, etc. However, the Court cannot yet resolve the merits of the
 011 Ecole De Cuisine Manille v. Renaud Ceointreau Gr No. 185830, 5 July
2013
Facts:
1. Cointreau, a partnership registered in France, filed before the Bureau of Patents,
Trademarks, an Technology Transfer (now defunct) of the DTI a trademark
application for the mark "LE CORDON BLEU & DEVICE" forgoods falling under
classes 8, 9, 16, 21, 24, 25, 29, and 30 of the International Classification of Goods
and Services for the Purposes of Registrations of Marks (Nice Classification)
(subject mark).
2. Petitioner, Ecole, filed an opposition to the application (a) it is the owner of the
mark LE CORDON BLEU, ECOLE DE CUISINE MANILLE, which it has been
using since 1948 in cooking and other culinary activities, including in its restaurant
business; and (b) it has earned immense and invaluable goodwill such that
Cointreaus use of the subject mark will actually create confusion, mistake, and
deception to the buying public as to the origin and sponsorship of the goods, and
cause great and irreparable injury and damage to Ecoles business reputation.
3. Cointreau filed an answer. It averred that it has filed applications for the subject
marks registration in various jurisdictions, including the Philippines; (b) Le
Cordon Bleu is a culinary school of worldwide acclaim which was established in
Paris, France in 1895; (c) Le Cordon Bleu was the first cooking school to have set
the standard for the teaching of classical French cuisine and pastry making; and (d)
it has trained students from more than eighty (80) nationalities, including Ecoles
directress, Ms. Lourdes L. Dayrit. Thus, Cointreau concluded that Ecoles claim of
being the exclusive owner of the subject mark is a fraudulent misrepresentation.
4. Ruling of the Bureau of Legal Affairs: rejected Cointreu's Application. BLA did
not find the use of the subject mark outside the philippines is suficient evidence to
establish claim of prior use. The use of the trade mark must be in commerce in the
Philippines and not abroad. It also found out that the mark is used by Ecole since
1948.
5. Cointreau filed an appeal. IPO Director General: allowed registration. Section 2-
A of RA 166 does not require actual use in the Phil to be able to acquire ownership
of the mark. Also, he found that while Ecole may have prior use of the subject mark
in the Philippines since 1948, it failed to explain how it came up with such name
and mark. It concluded that Ecole has unjustly appropriated the subject mark,
rendering it beyond the mantle of protection of Section 4(d)14 of R.A. No. 166.
6. CA: affirmed IPO decision in toto. Cointreau is the true owner of the subject
mark. Cointreaus right to register the subject mark cannot be barred by Ecoles
012 Etepha A.G. v. Director of Patents
prior use because its appropriation of the mark was done in bad faith. ALso, Ecole
had no cert of reg and its application is still pending with the IPO
Issue: W/N Cointreau is the true and lawful owner of the subject mark and is
entitled to have it registered - YES, Ecola is not the rightful owner even if it was
the first entity to use the mark in the Phils
Ruling:
1. Under Section 220 of R.A. No. 166, in order to register a trademark, one must be
the owner and must have actually used the mark in commerce in the Philippines for
two (2) months prior to the application for
registration. Under Section 2-A, it is clear that actual use in commerce is also the
test of ownership but the provision went further by saying that the mark must not
have been so appropriated by another.
Additionally, it is significant to note that Section 2-A does not require that the
actual use of a trademark must be within the Philippines. (CA is correct)
2. Nevertheless, foreign marks which are not registered are still accorded protection
against infringement and/or unfair competition. It is worthy to emphasize that the
Philippines and France, Cointreaus country of origin, are both signatories to the
Paris Convention for the Protection of Industrial Property (Paris Convention, Art 6
and Art 8)
Under the Paris Convention, the Philippines is obligated to assure nationals of the
signatory-countries that they are afforded an effective protection against violation
of their intellectual property rights in the Philippines in the same way that their own
countries are obligated to accord similar protection to Philippine nationals.24
Thus, under Philippine law, a trade name of a national of a State that is a party to
the Paris Convention, whether or not the trade name forms part of a trademark, is
protected without the obligation of filing or registration.
In the instant case, it is undisputed that Cointreau has been using the subject mark
in France since 1895, prior to Ecoles averred first use of the same in the
Philippines in 1948, of which the latter was fully aware
On the other hand, Ecole has no certificate of registration over the subject mark but
only a pending application covering services limited to Class 41 of the Nice
Classification.
It is thus clear that at the time Ecole started using the subject mark, the same was
already being used by Cointreau. Hence, Ecole cannot claim any tinge of
ownership whatsoever over the subject mark as Cointreau is the true and lawful
owner thereof. IPO Director Genral and CA were correct in Declaring Contreau as
the true and lawful owner.
GR No L-20635, March 31, 1966
 one cannot be mistaken for that of the other, not even by persons
Facts: unfamiliar with the two trademarks.
1. Westmont Pharmaceuticals, a New York Corp, sought registration of the
trademark Atussin placed on its medicinal preparation of expectorant
antihistamic, bronchodilator sedative, Vitamin C used in the treatment of
cough.
2. The trademark is used exclusively in the Philippines since January 21,
1959.
3. Etepha A.G (a Liechtenstin corporation) objected to this. It claims that it
will be damaged because Atussin is confusedly similar to Pertussin
used in preparation for treatment of coughs. It argues that the buying
public will be misled into believing that Westmonts product is Etephas.
4. Director of Patents allowed the registration of the trademark Atussin,
hence this appeal.

Issue: May the trademark Atussin be registered, given the fact that Pertussin,
another trademark, had been previously registered in the Patent Office?

Held: YES.
Ratio:
The validity of a cause for infringement is predicated upon colorable
imitation. Colorable imitaion is a close or ingenious imitation as to be
calculated to deceive ordinary persons, or such a resemblance to the
original as to deceive an ordinary purchaser giving such attention as a
purchaser usually gives, and to cause him to purchase the one supposing it
to be the other.
That the word tussin figures as a component of both trademarks is
nothing to wonder at. The Director of Patents aptly observes that it is the
common practice in the drug and pharmaceutical industries to fabricate
marks by using syllables or words suggestive of the ailments for which
they are intended and adding thereto distinctive prefixes or suffixes. And
appropriately to be considered now is the fact that, concededly, the
tussin (in Pertussin and Atussin) was derived from the Latin root-word
tussis meaning cough.
Tussin is merely descriptive; it is generic; it furnishes to the buyer no
indication of the origin of the goods; it is open for appropriation by
anyone. It is accordingly barred from registration as trademark. Any other
conclusion would result in appellant having practically a monopoly of
the word tussin in a trademark.
While tussin by itself cannot thus be used exclusively to identify ones
goods, it may properly become the subject of a trademark by
combination with another word or phrase. (ex: Pertussin and Atussin)
The two labels are entirely different in colors, contents, arrangement of
words theeon, sizes, shapes and general appearance. The contrasts in
pictorial effects and appeals to the eye is so pronounced that the label of
 013 Ang Tibay v. Teodoro
Emergency Recit:
Toribio Teodoro was the entrepreneur of the famous Ang Tibay brand of
slippers/shoes, which he started in 1910. He registered the trademark on 1915. In
1932, Ana Ang sought to register Ang Tibay which was the brand of the
pants/shirts she was selling. Ana Angs defense against infringement was the
dissimilarity between her products (clothing) and Teodoros (footwear). SC ruled
that Ana Ang cannot use Ang Tibay because the continued use would cause
confusion as to the origin of said goods (IE: people might think Ana Angs products
were made under Teodoros Ang Tibay brand).
Facts:
Teodoro used the term Ang Tibay as a trademark and tradename, in
manufacturing slippers and shoes.
He registered the trademark on Sep. 29, 1915, and the trade name on Jan. 3,
1933
Teodoros business has grown massively since the trademark was registered.
Meanwhile, Ana Ang also registered the trademark Ang Tibay, for pants and
shirts, on Apr. 11, 1932.
Teodoro found out about the name when Ana Ang built a factory to
manufacture her clothing line.
Teodoro thus brought suit to enjoin Ana Ang from using the name Ang Tibay
RTC: no infringement
o No similarity because the name was used on different kinds of goods
(Slippers, Shoes on one hand. Clothing on the other)
o Teodoro did not exclusively use the trademeark
o No fraud on the part of Ana Ang, since her products are different from
Teodoros
CA: reversed RTC judgment; rules in favor of Teodoro
o Since 1910, Teodoro was uninterrupted in the use of Ang Tibay in
making his products
o As such, his use as acquired a secondary meaning
o Teodoros products (slippers, shoes) belong to the same class of products
as that of Ana Ang (pants, shirts)
o Ana Ang appeals to the SC
Ana Angs contention
o Ang Tibay is a descriptive term, meaning strong, durable or long
lasting
o As such, it cannot be the subject of a trademark, invoking Sec. 2 of Act
666, which provides that words which relate to the name, quality or
description of merchandise cannot be the subject of trademark.
Teodoros contention
Ang Tibay is not descriptive, but merely suggestive, and as such can be
subject of trademark.
Issue 1: Can there be confusing similarity if the products are not the same?
Issue 2: Can the mark Ang Tibay be registered by Teodoro?
Held 1: YES. Different products can be considered in the same class if the
simultaneous use on them would cause confusion as to the origin or personal
source of the second users goods.
The test employed by courts, to determine whether non-competing goods are
of the same class, is confusion as to the origin of the goods of the second user.
When non-competiiive products are sold under the same mark, the gradual
whittling away or dispersion of the identity and hold upon the public mind of
the mark created by its first user, inevitably results.
The original owner is entitled to the preservation of the valuable link
between him and the public that has been created by his ingenuity and the
merit of his wares or services.
Experience has demonstrated that when a well-known trade-mark is adopted
by another even for a totally different class of goods, it is done to get the
benefit of the reputation and advertisements of the originator of said mark, to
convey to the public a false impression of some supposed connection between
the manufacturer of the article sold under the original mark and the new
articles being tendered to the public under the same or similar mark.
The Court of Appeals found in this case that by uninterrupted and exclusive
use since 1910 of respondent's registered trade-mark on slippers and shoes
manufactured by him, it has come to indicate the origin and ownership of said
goods.
It is certainly not farfetched to surmise that the selection by Ana Ang of the
same trademark for pants and shirts was motivated by a desire to get a free ride
on the reputation and selling power it has acquired at the hands of the Teodoro.
The field from which a person may select a trade-mark is practically unlimited,
and hence there is no excuse for impinging upon or even closely
approaching the mark of a business rival.
In the unlimited field of choice, what could have been petitioner's purpose in
selecting "Ang Tibay" if not for its fame?
Held 2: YES. Ang Tibay is not a descriptive term, but merely a fanciful or
coined phrase which may be appropriated as trademark or tradename.
Ang Tibay" is an exclamation denoting admiration of strength or durability.
For instance, one who tries hard but fails to break an object exclaims, "Ang
tibay!" ("How strong!")
It may also be used in a sentence thus, "Ang tibay ng sapatos mo!" ("How
durable your shoes are!")
The phrase "ang tibay" is never used adjectively to define or describe an
object.
 One does not say, "ang tibay sapatos" or "sapatos ang tibay" to mean "durable
shoes
014 Emerald Garment Manufacturing v CA
GR 100098
Dec 29, 1995
FACTS:
In 1981, H.D Lee Co., Inc., a foreign company, filed an opposition against the
trademark application of Emerald Garment. Allegedly, the trademark Stylistic Mr.
Lee sought to be applied for by Emerald Garment is too confusingly similar with
the brand Lee which has for its variations Lee Riders, Lee Sures, and Lee
Leens. The Director of Patents as well as the Court of Appeals ruled in favor of
H.D. Lee Co.
ISSUE: Whether or not the decision of the Court of Appeals is correct.
HELD: No. The Supreme Court considered that the trademarks involved as a
whole and ruled that Emerald Garments STYLISTIC MR. LEE is not
confusingly similar to H.D. Lees LEE trademark. The trademark Stylistic Mr.
Lee, although on its label the word LEE is prominent, the trademark should be
considered as a whole and not piecemeal. The dissimilarities between the two
marks become conspicuous, noticeable and substantial enough to matter especially
in the light of the following variables that must be factored in.
First, the products involved in the case at bar are, in the main, various kinds of
jeans. These are not your ordinary household items like catsup, soysauce or soap
which are of minimal cost. Maong pants or jeans are not inexpensive. 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.
Second, like his beer, the average Filipino consumer generally buys his jeans by
brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess,
Wrangler or even an Armani. He is, therefore, more or less knowledgeable and
familiar with his preference and will not easily be distracted.
Finally, in line with the foregoing discussions, more credit should be given to the
ordinary purchaser. Cast in this particular controversy, the ordinary purchaser is
015 ASIA BREWERY v. CA (1993)
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
not the completely unwary consumer but is the ordinarily intelligent buyer
considering the type of product involved.
There is no cause for the Court of Appeals apprehension that Emerald Garments
products might be mistaken as another variation or line of garments under H.D.
Lees LEE trademark. As one would readily observe, H.D. Lees variation
follows a standard format LEERIDERS, LEESURES and LEELEENS. It is,
therefore, improbable that the public would immediately and naturally conclude
that petitioners STYLISTIC MR. LEE is but another variation under H.D. Lees
LEE mark.
The issue of confusing similarity between trademarks is resolved by considering
the distinct characteristics of each case. In the present controversy, taking into
account these unique factors, we conclude that the similarities in the trademarks in
question are not sufficient as to likely cause deception and confusion tantamount to
infringement.
Further, H.D. Lee failed to prove in court that it had prior actual commercial use of
its LEE trademark in the Philippines. H.D. Lee did show certificates of
registrations for its brand but registration is not sufficient. 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 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 in the
acquisition of the right of ownership over a trademark.
It would seem quite clear that adoption alone of a trademark would not give
exclusive right thereto. Such right grows out of their actual use. Adoption is not
use. One may make advertisements, issue circulars, give out price lists on certain
goods; but these alone would not give exclusive right of use. For trademark is a
creation of 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
traders right to protection in the trade he has built up and the goodwill he has
accumulated from use of the trademark. Registration of a trademark, of course, has
value: it is an administrative act declaratory of a pre-existing right. Registration
does not, however, perfect a trademark right.
SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market.
The trial court dismissed SMC's complaint because ABI "has not committed
trademark infringement or unfair competition against" SMC
On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial
court, finding the defendant Asia Brewery Incorporated GUILTY of infringement
of trademark and unfair competition. ABI then filed a petition for certiorari.
Issue: Whether or not ABI infringes SMCs trademark and as such constitutes
unfair competition
Ruling:
Infringement is determined by a test of dominancy. 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. A closer look at the
trademark of both companies will show that the dominant features of each
absolutely bear no similarity to each other. SMCs dominant trademark is the name
of the product, San Miguel Pale Pilsen written in white Gothic letters with
elaborate serifs at the beginning and end of the letters S and M on an amber
background while ABIs is the name Beer Pale Pilsen with the word Beer written
in large amber letters, larger than any of the letter found in SMC label.
The word pale pilsen on ABIs trademark does not constitute trademark
infringement for it is a generic word descriptive of the color of a type of beer. No
one may appropriate generic or descriptive words for they belong to the public
domain.
ABI is likewise not guilty of unfair competition for unfair competition is the
employment of deception or any other means contrary to good faith by which a
016 McDonalds Corporation vs. MacJoy Fastfood Corporation
Facts: On March 14, 1991 MacJoy Fastfood Corporation, a domestic corporation
engaged in the sale of fast food products in Cebu City, filed with the Bureau of
Patents, Trademarks and Technology Transfer (now Intellectual Property Office),
an application for the registration of the trademark MACJOY & DEVICE for
fried chicken, burgers, fries, spaghetti etc. McDonalds Corporation, a corporation
existing under the laws of the State of Delaware USA, filed a notice of Opposition
against the respondents application claiming that the trademark MACJOY &
DEVICE resembles its corporate logo and its marks McChicken, MacFries,
BigMac etc., such that the trademark applied for would confuse or deceive
purchasers into believing that the goods originate from the same source or origin.
IPO then denied the application of MacJoy. Upon appeal, CA reversed and set aside
the IPO decision, explaining that the pronounced differences are miniscule and
considered them to have been overshadowed by the appearance of the
predominant features; Whether a mark or label of a competitor resembles another
is to be determined by an inspection of the points of difference and resemblance as
a whole, and not merely the points of resemblance. x x x The Macjoy & Device
person shall pass off the goods manufactured by him for those of another who has
already established goodwill for his similar goods. The universal test for this is
whether the public is likely to be deceived. Actual or probable deception and
confusion on the part of the customers by reason of defendants practices must
appear. However, this is unlikely to happen in the case at bar for consumers
generally order beer by brand. Also, the fact that ABI also uses amber-colored
steinie bottles cannot constitute unfair competition for ABI did not copy SMCs
bottle. SMC did not invent but merely borrowed the steinie bottle from abroad.
Likewise, amber is the most effective color in preventing transmission of light thus
providing maximum protection to beer. 320 ml is likewise the standard prescribed
under Metrication Circular No. 778. The fact that it is the first to use the steinie
bottle does not give SMC a vested right to use it to the exclusion of everyone else.
Nobody can acquire any exclusive right to market articles supplying the simple
human needs in containers or wrappers of the general form, size and character
commonly and immediately used in marketing such articles.
There is no confusing similarity between the competing beers therefore ABI neither
infringed SMCs trademark nor did it commit unfair competition.
Dissenting Opinion of J. Cruz:
Side-by-side comparison is not the final test of similarity because average buyers
do not make minute scrutiny of label details. The average shopper is usually in a
hurry and does not inspect every product on the shelf is if he were browsing in a
library
mark is dissimilar in color, design, spelling ,size, concept and appearance to the
McDonladss marks. Hence this petition
Issue: WON the two trademarks are confusingly similar YES, the dominancy test
is applied
Who has the rightful claim over the ownership of the marks -McDonalds
Dominancy test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion or deception. In contrast, the holistic test
requires the court to consider the entirety of the marks as applied to the products,
including the labels and packaging, in determining similarity.
In the case at bar, the predominant features such as the M, Mc, and Mac
appearing in both McDonalds marks and the MACJOY & DEVICE easily attract
the attention of would be customers. Even nonregular customers of their fastfood
restaurants would readily notice the predominance of the M design, Mc/Mac
prefixes shown in both marks. Such that the common awareness or perception of
customers that the trademarks McDonalds mark and MACJOY & DEVICE are one
and the same, or an affiliate, or under the sponsorship of the other is not farfetched.

A mark is valid if it is distinctive and hence not barred from registration. However,
once registered, not only the marks validity but also the registrants ownership
thereof is prima facie presumed.

McDonalds was able to register its marks since 1971, the corporate logo M or the
golden arches design on 1977. On the other hand, it is not disputer that
respondents application for registration was filed only in 1991 albeit the date of
first use in the Phils was 1987.

Respondents contention that it was the first user of the mark in the Philippines
having used MACJOY & DEVICE on its restaurant business and food products
since December, 1987 at Cebu City while the first McDonalds outlet of the
petitioner thereat was opened only in 1992, is downright unmeritorious. For the
requirement of actual use in commerce x x x in the Philippines before one may
register a trademark, trade name and service mark under the Trademark Law
pertains to the territorial mark under the Trademark Law pertains to the territorial
jurisdiction of the Philippines ippines and is not only confined to a certain region,
province, city or barangay.
 017 McDonalds Corporation vs. MacJoy Fastfood Corporation
G.R. No. 166115. February 2, 2007
Author: Andre Mina
FACTS:
1. On 14 March 1991, MacJoy Fastfood, a domestic corporation engaged in
the sale of fast food products in Cebu City, filed with the Intellectual
Property Office (IPO), an application for the registration of the trademark
MACJOY & DEVICE for fried chicken, chicken barbeque, burgers,
fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks under
classes 29 and 30 of the International Classification of Goods.
2. McDonalds Corporation, a corporation duly organized and existing under
the laws of the State of Delaware, USA, filed a verified Notice of
Opposition against the respondents application claiming that the
trademark MACJOY & DEVICE so resembles its corporate logo,
otherwise known as the Golden Arches or M design, and its marks
McDonalds, McChicken, MacFries, BigMac, McDo, While the Court agrees with the CAs detailed enumeration of differences between
McSpaghetti, McSnack, and Mc, (MCDONALDS marks) such that the two competing trademarks herein involved, we believe that the holistic test is
when used on identical or related goods, the trademark applied for would
confuse or deceive purchasers into believing that the goods originate from
the same source or origin.
3. MacJoy averred that it has used the mark MACJOY for the past many
years in good faith and has spent considerable sums of money for said
marks extensive promotion in tri-media, especially in Cebu City where it
has been doing business long before the petitioner opened its outlet there
sometime in 1992; and that its use of said mark would not confuse
affiliation with the petitioners restaurant services and food products
because of the differences in the design and detail of the two marks.
4. IPO Rejected Application; CA Reversed. According to the CA no
confusing similarity between the marks MACJOY and
MCDONALDS
Differences:
The word MacJoy is written in round script while the word
McDonalds is written in single stroke gothic;
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;
The word MacJoy is set in deep pink and white color scheme while
McDonalds is written in red, yellow and black color combination;
The facade of the respective stores of the parties are entirely different. Exhibits 1
and 1-A, show that MacJoy restaurant is set also in the same bold, brilliant and
noticeable color scheme as that of its wrappers, containers, cups, etc., while
McDonalds restaurant is in yellow and red colors, and with the mascot of Ronald
McDonald being prominently displayed therein.
ISSUE: WON the CA erred in ruling that there is no confusing similarity between
the marks
HELD: YES
In determining similarity and likelihood of confusion, jurisprudence has developed
two tests, the dominancy test and the holistic test. The dominancy test focuses on
the similarity of the prevalent features of the competing trademarks that might
cause confusion or deception. In contrast, the holistic test requires the court to
consider the entirety of the marks as applied to the products, including the labels
and packaging, in determining confusing similarity. Under the latter test, a
comparison of the words is not the only determinant factor.
not the one applicable in this case, the dominancy test being the one more suitable.
The Court held that:
The dominancy test considers the dominant features in the competing marks in
determining whether they are confusingly similar. Under the dominancy test, courts
give greater weight to the similarity of the appearance of the product arising from
the adoption of the dominant features of the registered mark, disregarding minor
differences. Courts will consider more the aural and visual impressions created by
the marks in the public mind, giving little weight to factors like prices, quality,
sales outlets and market segments.
In this case, the Court observed that:
X x x the predominant features such as the M, Mc, and Mac appearing in
both McDonalds marks and the MACJOY & DEVICE easily attract the attention
of would-be customers. Even non-regular customers of their fastfood restaurants
would readily notice the predominance of the M design, Mc/Mac prefixes
shown in both marks. Such that the common awareness or perception of customers
that the trademarks McDonalds mark and MACJOY & DEVICE are one and the
same, or an affiliate, or under the sponsorship of the other is not far-fetched.
The differences and variations in styles as the device depicting a head of chicken
with cap and bowtie and wings sprouting on both sides of the chicken head, the
heart-shaped M, and the stylistic letters in MACJOY & DEVICE; in contrast to
the arch-like M and the one-styled gothic letters in McDonalds marks are of no
moment. These minuscule variations are overshadowed by the appearance of the
predominant features mentioned hereinabove.
 018 PROSOURCE INTERNATIONAL, INC., vs. HORPHAG RESEARCH
MANAGEMENT SA
(G.R. No. 180073; November 25, 2009)
EMERGENCY RECIT: Respondent Horphag Research Management SA is the
owner of trademark PYCNOGENOL. It later discovered that petitioner Prosource
International, Inc. was also distributing a similar food supplement using the mark
PCO-GENOLS since 1996. Respondent filed a Complaint for Infringement of
Trademark against petitioner praying that the latter cease and desist from using the
brand PCO-GENOLS for being confusingly similar with respondents trademark
PYCNOGENOL. The issue in this case is whether the words are deceptively
similar. SC held yes. In determining similarity and likelihood of confusion,
jurisprudence has developed two tests: the Dominancy Test and the Holistic or
Totality Test. In this case, SC confirmed the trial and appellate courts application
of the Dominancy Test and found out that there was a confusing similarity between
the marks PYCNOGENOL and PCO-GENOL.
Facts:
1. Respondent Horphag Research Management SA is a corporation duly
organized and existing under the laws of Switzerland and the owner of
trademark PYCNOGENOL, a food supplement sold and distributed by
Zuellig Pharma Corporation.
2. Respondent later discovered that petitioner Prosource International, Inc.
was also distributing a similar food supplement using the mark PCO-
GENOLS since 1996. This prompted respondent to demand that petitioner
cease and desist from using the aforesaid mark.
3. Without notifying respondent, petitioner discontinued the use of, and
withdrew from the market, the products under the name PCO-GENOLS as
of June 19, 2000. It, likewise, changed its mark from PCO-GENOLS to
PCO-PLUS.
4. On August 22, 2000, respondent filed a Complaint for Infringement of
Trademark with Prayer for Preliminary Injunction against petitioner,
praying that the latter cease and desist from using the brand PCO-
GENOLS for being confusingly similar with respondents trademark
PYCNOGENOL. It, likewise, prayed for actual and nominal damages, as
well as attorneys fees.
5. Petitioner Prosource International, Inc argued that respondent could not
file the infringement case considering that the latter is not the registered
owner of the trademark PYCNOGENOL, but one Horphag Research
Limited. And that the two marks were not confusingly similar. Finally, it
denied liability, since it discontinued the use of the mark prior to the
institution of the infringement case.
6. RTC decided in favor of respondent. CA affirmed and explained that under
the Dominancy or the Holistic Test, PCO-GENOLS is deceptively similar
to PYCNOGENOL.
ISSUE: whether the words are deceptively similar
HELD:
In determining similarity and likelihood of confusion, jurisprudence has
developed two tests: the Dominancy Test and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of the prevalent features
of the competing trademarks that might cause confusion and deception,
thus constituting infringement. If the competing trademark contains the
main, essential and dominant features of another, and confusion or
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 question is whether the use of the
marks involved is likely to cause confusion or mistake in the mind of the
public or to deceive purchasers. Courts will consider more the aural and
visual impressions created by the marks in the public mind, giving little
weight to factors like prices, quality, sales outlets, and market segments.
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. The discerning eye of the observer must focus not
only on the predominant words but also on the other features appearing on
both labels in order that the observer may draw his conclusion whether
one is confusingly similar to the other.
SC confirmed the trial and appellate courts application of the Dominancy
Test in determining whether there was a confusing similarity between the
marks PYCNOGENOL and PCO-GENOL. Applying the test, they found
out that:
Both PYCNOGENOL and PCO-GENOLS have the same suffix
"GENOL" which on evidence, appears to be merely descriptive and
furnish no indication of the origin of the article and hence, open for
trademark registration by the plaintiff thru combination with another word
or phrase such as PYCNOGENOL. Furthermore, although the letters "Y"
between P and C, "N" between O and C and "S" after L are missing in the
petitioners mark PCO-GENOLS, nevertheless, when the two words are
pronounced, the sound effects are confusingly similar not to mention that
they are both described by their manufacturers as a food supplement and
thus, identified as such by their public consumers. And although there
were dissimilarities in the trademark due to the type of letters used as well
as the size, color and design employed on their individual
packages/bottles, still the close relationship of the competing products
name in sounds as they were pronounced, clearly indicates that purchasers
 could be misled into believing that they are the same and/or originates
from a common source and manufacturer.
This is not the first time that the Court takes into account the aural effects
of the words and letters contained in the marks in determining the issue of
confusing similarity
Petitioner is liable for trademark infringement.
019 Sketchers v. Inter Pacific (2006)
G.R. No: 164321
FACTS:
1. Petitioner is a foreign corp. existing under the California laws and engaged in
the manufacture of footwear. Petitioner is not doing business in the
Philippines and is suing before the trial court only to protect its IP rights. In
the course of business, petitioner registered the tm SKECHERS with the IPO
and the tm S (w/in an oval design), both to be used in footwear, clothing.
Petitioner also has a pending application for the trademark S and design to be
used for the same kinds of goods.
2. Sometime in March 2002, petitioner contracted Zetetic, to conduct an
investigation w/ the NBI on Inter to confirm if Inter Pacific is indeed engaged
in the importation, distribution and sale of unauthorized products bearing
counterfeit or unauthorized trademarks owned by petitioner.
3. On 11 April 2002, Ambion of Zetetic, visited Inter Pacific Warehouse Upon
entering, Ambion saw different kinds and models of rubber shoes including
shoes bearing the S logo. During the visit, Ambion allegedly talked with the
caretakers of said warehouse who informed him that Inter Pacific directly
imports the goods from China and that their company distributes them to
wholesalers and retailers in the Baclaran area. A caretaker allegedly
claimed that the shoes bearing the Strong name with the S logo have the same
style as Skechers shoes. Another caretaker purportedly informed Ambion that
they have an outlet located at Baclaran.
4. Ambion again visited respondents warehouse on 12 April 2002 and purchased
four pairs of rubber shoes bearing the Strong mark containing the S logo
for P730.00.
5. On 17 May 2002, counsel for petitioner filed a letter complaint with the Office
of the NBI Director requesting their assistance in stopping the illegal
importation, manufacture and sale of counterfeit products bearing the
trademarks owned by petitioner, and in prosecuting the owners of the
establishments engaged therein. Thus, on 21 May 2002 Ambion and
Angeles, together with NBI Special Investigator Borromeo III of the IP Rights
Division of the NBI, visited respondents warehouse and outlet and went
shopping again.
6. On 11 June 2002, Borromeo w/ Ambion as witness, proceeded to RTC, Manila,
to apply for search warrants against the warehouse and outlet store being
operated and managed by respondent for infringement of trademark under
Section 155 of IP Code.
7. Upon finding probable cause, The court issued the search warrants applied
for. That same afternoon, the search warrants were simultaneously served by
the operatives of the NBI and seized from the warehouse around 6500 pairs of
shoes.
8. On 28 August 2002, respondents filed their Amended Comment with Motion
to Quash Search Warrants on the ground that there is no confusing similarity
 between the petitioners Skechers rubber shoes and respondents Strong
rubber shoes.
9. On 7 November 2002, the lower court quashed Search Warrant and directed
the NBI to return to respondents the items seized. CA affirmed. Hence this
petition.
ISSUE: Will the purchaser be deceived or likely to be deceived into purchasing
respondents Strong Rubber Shoes because of the belief that they are Skechers shoes
in the ordinary course of purchase? NO.
HELD/RATIO: NO.
TC: Respondent revealed glaring differences that an ordinary prudent
purchaser would not likely be misled or confused in purchasing the wrong article:
1. The mark S found in Strong Shoes is not enclosed in an oval design;
2. The word Strong is conspicuously placed at the backside and insoles;
3. The hang tags and labels attached to the shoes bears the word Strong for
respondent and Sketchers U.S.A. for private complainant; Strong Shoes are
modestly priced compared to the costs of Sketchers Shoes.
Similarly as in this case, although the mark S is prominent on both products, the
same should be considered as a whole and not piecemeal. Factoring the variables
already cited make the dissimilarities between the two marks conspicuous,
noticeable and substantial.
20 Del Monte Corporation v. CA 181 SCRA 410
Emergency Recit: Petitioner filed a case for trademark infringement and unfair
competition against Sunshine Sauce. The latter for a time used the bottles of Del
Monte in packaging their own catsup sauce. It also used bottles which were similar
to those of petitioner. The court ruled that Sunshine is guilty of trademark
infringement and unfair competition because the appearance of the two bottles
cause general confusion to the consumers, and it was shown that Sunshine used the
bottles in bad faith.
FACTS:
1. Del Monte, a foreign company, granted Petitioner Philpack the right to
manufacture, distribute and sell in the Philippines various agricultural
products, including catsup, under the Del Monte trademark and logo.
2. Del Monte authorized Philpack to register with the Patent Office the Del
Monte catsup bottle for which it was granted Cert. of Trademark
Registration under the Supplemental Register. It also obtained 2
registration certificates for its trademark DEL MONTE and its logo.
3. Respondent Sunshine Sauce was issued a Cert. 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
CA: The letter S has been used in many existing trademarks. What is extremely
and profoundly identifiable to the products of the petitioner is the whole trademark
consisting of the letter S enclosed by a uniquely designed oval. Confusion and
deception are less likely in the instant case considering that the private respondents
rubber shoes were distinctly and conspicuously marked STRONG at their front
side, back side and insoles. Their hang tags and labels attached to the shoes bear the
word STRONG. In view of these, the dissimilarities between the private
respondents and petitioners shoes became more striking and noticeable to the
ordinary purchaser who could not in any way be deceived or misled that the shoes
he buys is produced by the petitioner. With this, the holistic test is squarely
applicable.
SC: Based on its appreciation of the respective parties arguments and the pieces
of evidence, particularly the samples of the original Skechers rubber shoes vis--
vis respondents Strong rubber shoes, the trial court concluded that respondents
appropriation of the symbol S on their rubber shoes does not constitute an
infringement on the trademark of petitioner. This exercise of judgment was further
strengthened by the affirmation of the Court of Appeals that public respondent
judge did not commit GADALEJ in ruling that the acts of respondent do not
constitute trademark infringement in light of the factual and legal issues presented
before it for consideration.
RULING: Petition DENIED. CA AFFIRMED
Sunshine Fruit Catsup. The product itself was contained in various kinds
of bottles including the Del Monte bottle which they bought from the junk
shops for recycling.
4. Philpack and Del Monte filed a complaint against Sunshine for
infringement of trademark and unfair competition with a prayer for
damages and writ of preliminary injunction.
5. Sunshine alleged that it had long ceased to use the Del Monte bottle, and
that its logo was substantially different from the Del Monte logo; that this
would not confuse the buying public to Del Montes detriment
6. RTC: there were substantial differences between the logos and trade marks
of the parties; sunshine had ceased to use the Del Monte Bottles; that
Sunshine became the owner of the bottles when it purchased it from the
junk yards; Del Monte failed to establish defendants malice or bad faith
which was an essential element of infringement of trademark or unfair
competiton. CA affirmed. Thus, Del Monte filed a petition for certiorari
under Rule 45.
ISSUE: WON there was unfair competition and infringement YES
RATIO:
There is a distinction between infringment of trademark and unfair competition: 1. As to the shape of label or
1. Infringement is the unauthorized use of a trademark while unfair competition is make:
the passing off of ones goods as that of another Del Monte: Semi-rectangular with
2. In infringement, fraudulent intent is unnecessary while it is otherwise for unfair a crown or tomato shape design on
competition top of the rectangle.
Sunshine: Regular rectangle.
3. In infringement, prior registration of the trademark is needed whereas in unfair
competition, registration is not necessary. 2. As to brand printed on label:
Del Monte: Tomato catsup mark.
1. The respondent court, in assessing the two trademarks, focused not only on the Sunshine: Fruit catsup.
predominant words but also on the other features appearing on both labels.
Applying this test, it was held that there was no colorable imitation of the 3. As to the words or lettering on
petitioners trademark and logo. The SCs comparison: label or mark:
Del Monte: Clearly indicated
words packed by Sysu
International, Inc., Q.C.,
Philippines.
Sunshine: Sunshine fruit catsup is
clearly indicated "made in the
Philippines by Sunshine Sauce
Manufacturing Industries" No. 1
Del Monte Avenue, Malabon,
Metro Manila.
4. As to color of logo:
Del Monte: Combination of yellow
and dark red, with words "Del
Monte Quality" in white.
Sunshine: White, light green and
light red, with words "Sunshine
Brand" in yellow.
5. As to shape of logo:
Del Monte: In the shape of a
tomato.
Sunshine: Entirely different in
shape.
6. As to label below the cap:
Del Monte: Seal covering the cap
down to the neck of the bottle,
with picture of tomatoes with
words "made from real tomatoes."
Sunshine: There is a label below
the cap which says "Sunshine
Brand."
7. As to the color of the products:
Del Monte: Darker red.
Sunshine: Lighter than Del Monte.

Even if these distinctions are recognized by the SC, it does not agree that there was
no infringement or unfair competition. Side-by-side comparison is not the final test
of similarity because average buyers dont make minute scrutiny of label details.
The final test is whether the general confusion made by the article upon the eye of a
casual purchaser who is off his guard, is such as to likely result in his confounding
it with the original. The mark must be considered as a whole, and not as dissected.
The court shall be guided by its first impression for a buyer is governed by a casual
glance.

Additionally, the predominant colors used in Del Monte are the same with
Sunshine. The word catsup is also printed in both bottles with the same style and
color. And, although the logo of Sunshine is not a tomato, it approximates that of a
tomato.

2. Sunshine is not guilty because the bottle was merely registered in the
Supplemental Register. Although Del Monte has actual use of the bottles
configuration, the petitioners cannot claim exclusive use 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 a 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.
3. As Sunshine's label is an infringement of the Del Monte's trademark, law and
equity call for the cancellation of the private respondent's registration and
021 Fruit of the Loom vs. CA
EMERGENCY RECIT: Petitioner filed against respondent a complaint for
infringement of trademark and unfair competition, alleging that the latter s
trademark (FRUIT FOR EVE) is confusingly similar to the formers own (FRUIT
OF THE LOOM). It further alleged that the color and general appearance of the
respondents hang tags is a colorable imitation of the petitioners. Respondent
denied the same. Petitioner put emphasis on the word FRUIT as the dominant
feature of both trademarks. The Court ruled that in determining w/n two trademarks
are confusingly similar, the entirety of both and not just a comparison of words
used must be considered and where two trademarks presents striking or glaring
dissimilarities, no infringement case obtains, as in this case.
FACTS:
1. 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.
2. Respondent, a domestic corporation, is the registrant of a trademark
FRUIT FOR EVE in the Philippine Patent Office.
3. Petitioner filed before the lower court, a complaint for infringement of
trademark and unfair competition against the herein respondent. Petitioner
principally alleged in the complaint that 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, it
was also alleged therein that the color get-up and general appearance of
respondent's hang tags, consisting of a big red apple, is a colorable
imitation to the hang tag of petitioner.
4. Respondent filed an answer invoking the special defense that its registered
trademark is not confusingly similar to that of petitioner as the latter
alleged. Likewise, respondent stated that the trademark FRUIT FOR EVE
is being used on ladies' panties and pajamas only whereas petitioner's
trademark is used even on men's underwear and pajamas.
5. Petitioner asseverates that the dominant feature of both trademarks is the
word FRUIT.
ISSUE: WON respondent's trademark FRUIT FOR EVE and its hang-tag are
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.
The injunction is granted but damage prayed for cannot be granted because no
evidence as to the amount of damage was presented. Nominal damages in the
amount of P1000 was granted pursuant to Art. 2222 of the CC.
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:
No. It is no confusingly similar and therefore, there is no infringement.
In determining whether the trademarks are confusingly similar, a comparison of the
words is not the only determinant factor. The trademarks in their entirety as they
appear in their respective labels or hang tags must also be considered in relation to
the goods to which they are attached. The discerning eye of the observer must focus
not only on the predominant words but also on the other features appearing in both
labels in order that he may draw his conclusion whether one is confusingly similar
to the other.
In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone similar
word is FRUIT. SC affirmed the respondent courts observation that by mere
pronouncing the two marks, it could hardly be said that it will provoke such
confusion, as to mistake one for the other. Standing by itself, FRUIT OF THE
LOOM is wholly different from FRUIT FOR EVE. The Court did 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.
As to the design and coloring scheme of the hang tags, the SC held that while there
are similarities in the two marks like the red apple at the center of each mark, there
are also differences or dissimilarities which are glaring and striking to the eye such
as:
1. The shape of petitioner's hang tags is round with a base that looks like a
paper rolled a few inches in both ends; while that of respondent is plain
rectangle without any base.
2. The designs differ. Petitioner's trademark is written in an almost semi-
circle shape, while that of respondent is written in a straight line, and in
bigger letters as compared with that of the petitioner's. 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 tags are also very distinct from each other.
Petitioner's hang tags are light brown while that of respondent is pink with
a white colored center piece. The apples which are the only similarities in
the hang tags are differently colored. Petitioner's apple is colored dark red,
while that of respondent is light red.

The similarities of the competing trademarks in this case are completely lost in the
substantial differences in the design and general appearance of their respective
hang tags. The Court examined the two trademarks as they appear in the hang tags
submitted by the parties and was impressed more by the dissimilarities than by the
similarities appearing therein. As such, the Court held that the trademarks FRUIT
OF THE LOOM and FRUIT FOR EVE do not resemble each other as to confuse or
deceive an ordinary purchaser.

022 Berris Agricultural Co., Inc. v. Norvy Abyadang,
633 SCRA 196 (2010)
FACTS:
Abyadang filed a trademark application with the IPO for the mark "NS D-10
PLUS" for use in connection with Fungicide. Berris Agricultural Co., Inc. filed an
opposition against the trademark citing that it is confusingly similar with their
trademark, "D-10 80 WP" which is also used for Fungicide also with the same
active ingredient.
The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in favor
of Abyadang.
ISSUE:
Whether there is confusing similarity between the trademarks.
RULING:
Yes. The SC found that both products have the component D-10 as their ingredient
and that it is the dominant feature in both their marks. Applying the Dominancy
Test, Abyadang's product is similar to Berris' and that confusion may likely to occur
especially that both in the same type of goods. Also using the Holistic Test, it was
more obvious that there is likelihood of confusion in their packaging and color
schemes of the marks. The SC states that buyers would think that Abyadang's
product is an upgrade of Berris'.
023 Shang Properties Realty Corp. v. St. Francis Development Corp.
(SUPRA BUT UNDER A DIFFERENT TOPIC)
G.R. No. 190706.July 21, 2014.
TOPIC: Dominancy v. Holistic Test NO DOMINANCY OR HOLISTIC TEST IN
THIS CASE. I DECIDED TO DIGEST THE RULING OF THE COURT ON
UNFAIR COMPETITION.
EMERGENCY RECIT: St. Francis filed a case against Shang Properties for
unfair competition. The latter has been using the marks THE ST. FRANCIS
TOWERS and THE ST. FRANCIS SHANGRI-LA PLACE. St. Francis claims that
it has exclusive use to the mark since it had been using it for numerous
developments projects in Ortigas City. BLA and CA ruled that St. Francis has
exclusive use because St. Francis is a geographically descriptive and by use of
the mark for more than a decade, it gained substantial goodwill and reputation
thereby. HOWEVER, SC held NO UNFAIR COMPETITION. There was no fraud
on the part of Shang Properties when it used and tried to register the aforesaid
marks. The records are bereft of any showing that petitioners gave their
goods/services the general appearance that it was respondent which was offering
the same to the public. Neither did petitioners employ any means to induce the
public towards a false belief that it was offering respondents goods/services.
FACTS:
1. The respondent is the developer of St. Francis Square. It filed separate
complaints against petitioner (Shang Properties) before the IPO-Bureau of
Legal Affairs namely:
a. IP violation case for unfair competition, false or fraudulent
declaration, and damages arising from petitioners use and filing of
applications for the registration of the marks THE ST. FRANCIS
TOWERS and THE ST. FRANCIS SHANGRI-LA PLACE
b. Opposing the petitioners application for registration of the mark
THE ST. FRANCIS TOWERS and THE ST. FRANCIS SHANGRI-
LA PLACE for use relative to petitioners business.
2. Respondent alleged in its complaint that
a. it has used the mark ST. FRANCIS to identify its numerous
property development projects located at Ortigas Center
b. it has gained substantial goodwill with the public that consumers and
traders closely identify the said mark with its property development
projects
c. petitioners use of the aforesaid marks in their own real estate
development projects constitutes unfair competition as well as false or
fraudulent declaration
3. Petitioners argues that
a. denied committing unfair competition and false or fraudulent
declaration, maintaining that they could register the mark THE ST.
FRANCIS TOWERS and THE ST. FRANCIS SHANGRI-LA
PLACE under their names
b. respondent is barred from claiming ownership and exclusive use of
the mark ST. FRANCIS because the same is geographically
descriptive of the goods or services for which it is intended to be used
-- (respondents as well as petitioners real estate development
projects are located along the streets bearing the name St. Francis)
BLA: found that petitioner committed acts of unfair competition by use of the
aforesaid marks but did not award damages (insufficient evidence to warrant
amount)
respondent has been known to be the only real estate firm to transact business
using such name within the Ortigas Center vicinity
considered respondent to have gained goodwill and reputation for its mark,
which therefore entitles it to protection against the use by other persons, at
least, to those doing business within the Ortigas Center
IPO Director-General:
petitioners cannot register the mark THE ST. FRANCIS TOWERS
petitioners are not guilty of unfair competition in its use of the mark THE ST.
FRANCIS SHANGRI-LA PLACE and THE ST. FRANCIS TOWERS
CA: found petitioners guilty of unfair competition not only with respect to their use
of the mark THE ST. FRANCIS TOWERS but also of the mark THE ST.
FRANCIS SHANGRI-LA PLACE.
did not adhere to the IPO Director-Generals finding that the mark ST.
FRANCIS is geographically descriptive, and ruled that respondent has
exclusively and continuously used the mark ST. FRANCIS for more than a
decade, and, hence, gained substantial goodwill and reputation thereby
ISSUE: Whether the the use by the petitioner of the mark St. Francis constitutes
unfair competition against respondent.
HELD: NO element of fraud is lacking
The true test of unfair competition has thus been whether the acts of
the defendant have the intent of deceiving or are calculated to deceive the
ordinary buyer making his purchases under the ordinary conditions of the
particular trade to which the controversy relates. Based on the foregoing, it is
therefore essential to prove the existence of fraud, or the intent to deceive, actual or
probable, determined through a judicious scrutiny of the factual circumstances
attendant to a particular case.
Here, the Court finds the element of fraud to be wanting; hence, there can
be no unfair competition. The CAs contrary conclusion was faultily premised on its
impression that respondent had the right to the exclusive use of the mark ST.
FRANCIS, for which the latter had purportedly established considerable goodwill.
What the CA appears to have disregarded or been mistaken in its disquisition,
however, is the geographically-descriptive nature of the mark ST. FRANCIS
which thus bars its exclusive appropriability, unless a secondary meaning is
acquired.
As deftly explained in the U.S. case of Great Southern Bank v. First
Southern Bank: [d]escriptive geographical terms are in the public domain in
the sense that every seller should have the right to inform customers of the
geographical origin of his goods. In order to determine whether or not the
geographic term in question is descriptively used, the following question is
relevant: (1) Is the mark the name of the place or region from which the goods
actually come? If the answer is yes, then the geographic term is probably used
in a descriptive sense, and secondary meaning is required for protection.
Cognizant of the foregoing, the Court disagrees with the CA that
petitioners committed unfair competition due to the mistaken notion that petitioner
had established goodwill for the mark ST. FRANCIS precisely because said
circumstance, by and of itself, does not equate to fraud under the parameters of
Section 1681 of the IP Code. In fact, the records are bereft of any showing that
1Section168.1qualifieswhoisentitledtoprotectionagainstunfaircompetition.Itstatesthat[a]
personwhohasidentifiedinthemindofthepublicthegoodshemanufacturesordealsin,hisbusiness
orservicesfromthoseofothers,whetherornotaregisteredmarkisemployed,hasapropertyrightin
thegoodwillofthesaidgoods,businessorservicessoidentified,whichwillbeprotectedinthesame
petitioners gave their goods/services the general appearance that it was respondent
which was offering the same to the public. Neither did petitioners employ any
means to induce the public towards a false belief that it was offering respondents
goods/services. Nor did petitioners make any false statement or commit acts
tending to discredit the goods/services offered by respondent. Accordingly, the
element of fraud which is the core of unfair competition had not been established.

mannerasotherpropertyrights.
Section168.2proceedstothecoreoftheprovision,describingforthwithwhomaybefoundguiltyof
andsubjecttoanactionofunfaircompetitionthatis,[a]nypersonwhoshallemploydeceptionor
anyothermeanscontrarytogoodfaithbywhichheshallpassoffthegoodsmanufacturedbyhim
orinwhichhedeals,orhisbusiness,orservicesforthoseoftheonehavingestablishedsuch
goodwill,orwhoshallcommitanyactscalculatedtoproducesaidresultxxx.
 024 Dermaline, Inc. v. Myra Pharmaceuticals, Inc.
G.R. No. 190065. August 16, 2010
TOPIC: Trade Name or Business Name (Sec. 165 IPC)
EMERGENCY RECIT: Dermaline filed an application for registration of the
trademark DERMALINE DERMALINE INC. Myra opposed the application,
alleging that the trademark sought to be registered, resembles its tradename
DERMALIN. SC: When one applies for the registration of a trademark or label
which is almost the same or that very closely resembles one already used and
registered by another, the application should be rejected and dismissed outright,
even without any opposition on the part of the owner and user of a previously
registered label or trademark
FACTS:
1. Dermaline filed before the IP Office an application for registration of
trademark DERMALINE DERMALINE, INC..
2. When the application was published for opposition, Myra Pharmaceuticals
filed a verified Opposition alleging that:
a. the trademark sought to be registered by Dermaline so resembles
its trademark DERMALIN and will likely cause confusion,
mistake, and deception to the consumers;
b. registration of Dermalines trademark will violate sec. 123 of the
RA 8293 (Intellectual Property Code); and
c. 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 into
believing that Dermaline is, in any way, connected to Myra.
3. Dermaline countered that:
a. a simple comparison of trademark would show that they have
entirely different features and distinctive presentation, thus it
cannot result in confusion, mistake or deception on the part of the
purchasing public;
b. in determining if the subject trademarks are confusingly similar, a
comparison of the words is not the only determinant, but their
entirety must be considered in relation to the goods to which they
are attached including the other features appearing in both labels;
and
c. There could not be any relation between its trademark for health
and beauty services from Myras trademark classified under
medicinal goods against skin disorders.
ISSUE: Whether the IP Office should allow the registration of Dermalines
trademark. NO
RATIO:
As Myra correctly posits, as a registered trademark owner, it has the right under
Section 147 of R.A. No. 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 determining likelihood of confusion, case law has developed two (2) tests, the
Dominancy Test and the Holistic or Totality Test.
1. The Dominancy Test focuses on the similarity of the prevalent features of
the competing trademarks that might cause confusion or deception. (The
IPO applied Dominancy test)
2. The Holistic Test entails a consideration of the entirety of the marks as
applied to the products, including labels and packaging, in determining
confusing similarity.
Relative to the question on confusion of marks and trade names, jurisprudence
has noted two (2) types of confusion:
1. confusion of goods (product confusion), where the ordinarily prudent
purchaser would be induced to purchase one product in the belief that he
was purchasing the other; and
2. confusion of business (source or origin confusion), where, although the
goods of the parties are different, the product, the mark of which
registration is applied for by one party, is such as might reasonably be
assumed to originate with the registrant of an earlier product, and the
public would then be deceived either into that belief or into the belief that
there is some connection between the two parties, though inexistent.
As correctly applied by the IPO in this case, while there are no set rules that can be
deduced as what constitutes a dominant feature with respect to trademarks applied
for registration; usually, 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 consumer.
Dermalines insistence that its applied trademark DERMALINE DERMALINE,
INC. had differences too striking to be mistaken from Myras DERMALIN cannot,
therefore, be sustained.
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.

Verily, when one applies for the registration of a trademark or label which is almost
the same or that very closely resembles one already used and registered by another,
the application should be rejected and dismissed outright, even without any
opposition on the part of the owner and user of a previously registered label or
trademark. This 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.
025 Roma Drug vs. RTC
G.R. No. 144907
Facts:
1.) A team of NBI and BFAD agents raided the compound of Roma Drug, a duly
registered sole proprietorship of petitioner Romeo Rodriguez. The raiding team
seized several imported medicines, including Augmentin (375mg.) tablets, Orbenin
(500mg.) capsules, Amoxil (250mg.) capsules and Ampiclox (500mg.)
2.) The raid was executed upon the request of SmithKline Beecham Research
Limited, a duly registered corporation which is the local distributor of
pharmaceutical products manufactured by its parent London-based corporation.
The local SmithKline has since merged with Glaxo Wellcome Phil. Inc to form
Glaxo SmithKline (GSK), and was the sole authorized distributor of the said
medicines.
3.) The NBI subsequently filed a complaint against Rodriguez for violation of
Section 4 (in relation to Sections 3 and 5) of Republic Act No. 8203, also known as
the Special Law on Counterfeit Drugs (SLCD). The section prohibits the sale of
counterfeit drugs, which under Section 3(b)(3), includes "an unregistered imported
drug product." The term "unregistered" signifies the lack of registration with the
Bureau of Patent, Trademark and Technology Transfer of a trademark, tradename
or other identification mark of a drug in the name of a natural or juridical person,
the process of which is governed under Part III of the Intellectual Property Code.
4.) It is not disputed that the seized drugs are identical in content with their locally
registered counterparts. Their classification as "counterfeit" is based solely on the
fact that they were imported from abroad and not purchased from the Philippine-
registered owner of the patent or trademark of the drugs.
5.) Rodriguez challenged the constitutionality of the SLCD but however was
ignored hence this petition for prohibition.
Issue:
W/N Rodriguez should be prosecuted for his alleged violations of the said
provisions of the SLCD
Held:
No. Reasons:
A.) The questions relating to the constitutionality of the provisions of the SLCD
have already been rendered moot with the passage in 2008 of Republic Act No.
9502, also known as the "Universally Accessible Cheaper and Quality Medicines
Act of 2008" and the promulgation of the "Implementing Rules to Republic Act
No. 9502" which repealed the SLCDs classification of "unregistered imported
drugs" as "counterfeit drugs," and of corresponding criminal penalties by granting
private third persons the unqualified right to import or otherwise use such
drugs.
"Sec. 72. Limitations of Patent Rights. The owner of a patent has no right to
prevent third parties from performing, without his authorization, the acts
referred to in Section 71 hereof in the following circumstances:
"72.1. Using a patented product which has been put on the market in the
Philippines by the owner of the product, or with his express consent, insofar as
such use is performed after that product has been so put on the said market:
Provided, That, with regard to drugs and medicines, the limitation on patent
rights shall apply after a drug or medicine has been introduced in the
Philippines or anywhere else in the world by the patent owner, or by any party
authorized to use the invention: Provided,
further, That the right to import the drugs and medicines contemplated in this
section shall be available to any government agency or any private third
party;
B.) Had the Court proceeded to directly confront the constitutionality of the
assailed provisions of the SLCD, it is apparent that it would have at least placed in
doubt the validity of the provisions. The act of ciminalizing the importation of
unregistered drug regardless of the purpose, even if the medicine can spell life or
death for someone in the Philippines absurdly results to implications that deny the
basic decencies of humanity. It equates the importers of such drugs, many of whom
motivated to do so out of altruism or basic human love, with the malevolents who
would alter or counterfeit pharmaceutical drugs for reasons of profit at the expense
of public safety.
Dispositive:
WHEREFORE, the petition is GRANTED in part. A writ of prohibition is hereby
ISSUED commanding respondents from prosecuting petitioner Romeo Rodriguez
for violation of Section 4 or Rep. Act No. 8203. The Temporary Restraining Order
dated 15 October 2001 is hereby made PERMANENT. No pronouncements as to
costs.
26. Chester Uyco, et al. v. Vicente Lo
GR No. 202423, 18 January 2013
Facts
The disputed marks in this case are the "HIPOLITO & SEA HORSE &
TRIANGULAR DEVICE," "FAMA," and other related marks, service marks and
trade names of Casa Hipolito S.A. Portugal appearing in kerosene burners.
Respondent Vicente Lo and Philippine Burners Manufacturing Corporation
(PBMC) filed a complaint for false designation of origin against the officers of
WINTRADE, including petitioners Chester Uyco and 4 others for violation of
Section 169.1, in relation to Section 170, of RA 8293 or Intellectual Property
Code of the Philippines (IPC).
In a test buy, Lo purchased from National Hardware kerosene burners with the
subject marks and the designations "Made in Portugal" and "Original Portugal"
in the wrappers. These products were manufactured by Wintrade.
RESPONDENTS ARGUMENTS: Lo claimed that GASIREL, owner of subject
trademarks, assigned the latter in his favor and as the assignee, he had not
authorized Wintrade to use these marks, nor had Casa Hipolito S.A. Portugal.
While a prior authority was given to Wintrades predecessor-in-interest,
WONDER, Casa Hipolito S.A. Portugal had already revoked this authority in
the past. The kerosene burners manufactured by Wintrade have caused
confusion, mistake and deception on the part of the buying public. Lo stated
that the real and genuine burners are those manufactured by its agent, PBMC.
PETITIONERS ANSWER: They stated that they are the officers of Wintrade
which owns the subject trademarks and their variants. They submitted as
evidence the certificates of registration with the IPO. They alleged that
GASIREL, not Lo, was the real party-in-interest. They allegedly derived their
authority to use the marks from Casa Hipolito S.A. Portugal through WONDER,
their predecessor-in-interest. Moreover, PBMC had already ceased to be a
corporation and, thus, the licensing agreement between PBMC and Lo could
not be given effect, particularly because the agreement was not notarized and
did not contain the provisions required by Section 87 of RA 8293. The
petitioners pointed out that Lo failed to sufficiently prove that the burners
 bought from National Hardware were those that they manufactured. But at the
same time, they also argued that the marks "Made in Portugal" and "Original
Portugal" are merely descriptive and refer to the source of the design and the
history of manufacture.
DOJ found probable cause to charge the Petitioners.
CA affirmed the resolution DOJ.
SC affirmed the resolution of the CA.
Petitioners filed an MR to set aside said SC Resolution. Hence, this case.
Issue
Whether or not WINTRADE and its officers are liable for violation of the law on
trademarks, trade names and false designation of origin?
Held
Yes. WINTRADE and its officers are liable for violation of the law on
trademarks and trade names and for false designation of origin.
Ratio
They placed the words "Made in Portugal" and "Original Portugal" with the
disputed marks knowing fully well because of their previous dealings with
the Portuguese company that these were the marks used in the products of
another.
More importantly, they used the marks without any authority from the owner
notwithstanding that their products are, in reality, produced in the Philippines,
not in Portugal. Hence, probable cause exists to charge the petitioners with
false designation of origin. Had they intended to refer to the source of the
design or the history of the manufacture, they should have explicitly said so in
their packaging. The Supreme Court emphasized that the law on trademarks
and trade names precisely precludes a person from profiting from the business
reputation built by another and from deceiving the public as to the origin of
products.