conditions or limitations stated therein.
Moreover, the two
CASE 30: Hickok v CA Digest
G.R. No. L-44707, August 31, 1982
Facts:
Petitioner is a foreign corporation and all its products are
manufactures by Quality House Inc. The latter pays royalty to
the petitioner. Hickok registered the trademark 'Hickok' earlier
and used it in the sale of leather wallets, key cases, money
folds, belts, mens underwear, neckties, hankies, and men's
socks. While Sam Bun Liong used the same trademark in the
sale of Marikina shoes. Both products have different channels
of trade. The Patent Office did not grant the registration, but
the Court of Appeals reversed the PPO decision.
Issue: Is there infringement in this case?
NONE. Emphasis should be on the similarity of the products
involves and not on the arbitrary classification or the general
description of their properties or characteristics. Also, the mere
fact that one person has adopted and used a trademark on his
goods does not prevent the adoption and use of the same by
others on unrelated articles of different kind.
There is a different design and coloring of the trademark itself.
The 'Hickok' trademark is in red with white background in the
middle of 2 branches of laurel (in light gold) while the one used
by Sam Bun Liong is the word 'Hickok ' in white with gold
background between 2 branches of laurel in red with the word
'shoes' also in red placed below the word 'Hickok'.
CASE 31 Faberge v IAC Digest
G.R. No. 71189, November 4, 1992
Facts of the Case:
Co Beng Kay applied for the registration of the trademark
'BRUTE' to be used it its underwear (briefs) products. The
petitioner opposed on the ground that there is similarity with
their own symbol (BRUT, Brut33 & Device) used on its
aftershave, deodorant, cream shave, hairspray and hair
shampoo/soaps and that it would cause injury to their business
reputation. It must be noted that the petitioner never applied for
registration of said trademark for its brief products. The Patent
Office allowed Co Beng Kay the registration and this was
further affirmed by the Court of Appeals.
Issue: Is there confusing similarity between the
challenged marks and that its use would likely cause
confusion on the part of the purchasers?
HELD: NONE. Co Beng Kay may rightly appropriate the mark.
In this case Sec. 20 (Philippine Intellectual Property Law) is
controlling. The certificate of registration issued confers the
exclusive right to use its own symbol only to those goods
specified by the first user in the certificate, subject to any
products are so dissimilar that a purchaser of one (a brief)
would not be misled or mistaken into buying the other (such as
an aftershave).
CASE 32: ASIA BREWERY, INC. vs. THE HON. COURT OF
APPEALS and SAN MIGUEL CORPORATION
G.R. 103543 July 5, 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
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:
Are the words PALE PILSEN as part of ABIs trademark
constitute infringement of SMCs trademark?
Ruling:
No. The Supreme Court said it does not constitute an
infringement as the words PALE PILSEN, which are part of
ABIs trademark, are generic words descriptive of the color
(pale), of a type of beer (pilsen), which is a light bohemian
beer with a strong hops flavor that originated in the City of
Pilsen, Czechislovakia and became famous in the Middle
Ages.
The Supreme Court further said that the words "pale pilsen"
may not be appropriated by SMC for its exclusive use even if
they are part of its registered trademark. No one may
appropriate generic or descriptive words. They belong to the
public domain.
Petitioner ABI has neither infringed SMC's trademark nor
committed unfair competition with the latter's SAN MIGUEL
PALE PILSEN product.
 CASE 33: MIGHTY CORPORATION and LA CAMPANA
FABRICA DE TABACO, INC. vs. E.J. GALLO WINERY and
THE ANDRESONS GROUP, INC.
FACTS:
On March 12, 1993, respondents sued petitioners in
the RTC-Makati for trademark and trade name infringement
and unfair competition, with a prayer for damages and
preliminary injunction.
They claimed that petitioners adopted the Gallo
trademark to ride on Gallo Winerys and Gallo and Ernest &
Julio Gallo trademarks established reputation and popularity,
thus causing confusion, deception and mistake on the part of
the purchasing public who had always associated Gallo and
Ernest and Julio & Gallo trademarks with Gallo Winerys wines.
In their answer, petitioners alleged, among other
affirmative defenses that: petitioners Gallo cigarettes and Gallo
Winerys wine were totally unrelated products. To wit:
1. Gallo Winerys GALLO trademark registration certificates
covered wines only, and not cigarettes;
2. GALLO cigarettes and GALLO wines were sold through
different channels of trade;
3. the target market of Gallo Winerys wines was the middle or
high-income bracket while Gallo cigarette buyers were
farmers, fishermen, laborers and other low-income workers;
4. the dominant feature of the Gallo cigarette was the rooster
device with the manufacturers name clearly indicated as
MIGHTY CORPORATION, while in the case of Gallo Winerys
wines, it was the full names of the founders-owners ERNEST
& JULIO GALLO or just their surname GALLO;
On April 21, 1993, the Makati RTC denied, for lack of
merit, respondents prayer for the issuance of a writ of
preliminary injunction.
On August 19, 1993, respondents motion for
reconsideration was denied.
On February 20, 1995, the CA likewise dismissed
respondents petition for review on certiorari.
After the trial on the merits, however, the Makati RTC,
on November 26, 1998, held petitioners liable for, permanently
enjoined from committing trademark infringement and unfair
competition with respect to the GALLO trademark.
On appeal, the CA affirmed the Makati RTCs
decision and subsequently denied petitioners motion for
reconsideration.
ISSUE: Whether GALLO cigarettes and GALLO wines were
identical, similar or related goods for the reason alone that they
were purportedly forms of vice.
HELD: Wines and cigarettes are not identical, similar,
competing or related goods.
In resolving whether goods are related, several
factors come into play:
the business (and its location) to which the goods belong
the class of product to which the good belong
the products quality, quantity, or size, including the nature of
the package, wrapper or container
the nature and cost of the articles
the descriptive properties, physical attributes or essential
characteristics with reference to their form, composition,
texture or quality
the purpose of the goods
whether the article is bought for immediate consumption, that is,
day-to-day household items
the field of manufacture
the conditions under which the article is usually purchased
and
the articles of the trade through which the goods flow, how
they are distributed, marketed, displayed and sold.
The test of fraudulent simulation is to the likelihood of
the deception of some persons in some measure acquainted
with an established design and desirous of purchasing the
commodity with which that design has been associated. The
simulation, in order to be objectionable, must be as appears
likely to mislead the ordinary intelligent buyer who has a need
to supply and is familiar with the article that he seeks to
purchase.
The petitioners are not liable for trademark
infringement, unfair competition or damages. WHEREFORE,
petition is granted.
CASE 34: Societe Des Produits Nestle, S.A. vs Court of
Appeals
356 SCRA 207 Mercantile Law Intellectual Property Law
Law on Trademarks, Service Marks and Trade Names
Generic Term
FACTS: 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. Nestle opposed the application as it alleged that Flavor
Master is confusingly similar to Nestle coffee products like
Master Blend and Master Roast. 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. 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. CFC Corporation on the other
hand alleged that the word Master is a generic and a
descriptive term, hence not subject to trademark. 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.
HELD: No. 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.
In addition, the word MASTER is neither a generic nor a
descriptive term. As such, said term can not 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 applicant is the owner of the trademark in question. As a
effort on the part of the observer.
CASE 35: MARVEX COMMERCIAL CO.,
INC., petitioner, vs. PETRA HAWPIA and CO., and THE
DIRECTOR OF PATENTS, respondents.
Facts of the Case: Petra Hawpia & Co., a partnership duly
organized under the laws of the Philippines filed a petition for
the registration of the trademark "LIONPAS" used on
medicated plaster, with the Philippine Patent Office, asserting
its continuous use in the Philippines since June 9, 1958. The
Marvex Commercial Co., Inc., a corporation also duly
organized under the laws of the Philippines, on July 24, 1959
filed an opposition thereto, alleging that the registration of such
trademark would violate its right to and interest in the
trademark "SALONPAS" used on another medicated plaster,
which is registered its name under Certificate of Registration
5486, issued by the Director of Patents on September 29,
1956, and that both trademarks when used on medicated
plaster would mislead the public as they are confusingly
similar.
The Director of Patents dismissed the opposition and gave due
course to the petition, stating in part that "confusion, mistake,
or deception among the purchasers will not likely and
reasonably occur" when both trademarks are applied to
medicated plaster.
Issues: (1) Is the applicant the owner of the trademark
"LIONPAS"?;
(2) Is the trademark "LIONPAS" confusingly similar to the
trademark "SALONPAS"?
Held: Is the applicant the owner of the trademark "LIONPAS?"
On the 1st issue:
The assignment must be in writing, acknowledged before a
notary public or other officer authorized to administer oaths or
perform other notarial acts and certified under the hand and
official seal of the notary or other officer. (Sec. 31, par. 2)
In this case, although a sheet of paper is attached to exh. 6, on
which is typewritten a certification that the signatures of the
presidents of the two named companies (referring to the
signatures in exh. 6) "have been duly written by themselves",
this sheet is unmarked, unpaged, unsigned, undated and
unsealed. We have thumbed the record in quest of any
definitive evidence that it is a correct translation of the
Japanese characters found on another unmarked and
unpaged sheet, and have found none.
The documents are legally insufficient to prove that the
matter of fact, the other evidence on record states that the
applicant is merely the "exclusive distributor" in the Philippines
of the "LIONPAS" penetrative plaster; describes the applicant
as the "Philippine sole distributor" of "LIONPAS"; exh. B simply
states that "LIONPAS" is "manufactured exclusively for Petra
Hawpia & Co. for distribution in the Philippines." Not being the
owner of the trademark "LIONPAS" but being merely an
importer and/or distributor of the said penetrative plaster, the
applicant is not entitled under the law to register it in its name.
On the 2nd issue:
The trademarks "SALONPAS" and "LIONPAS" are confusingly
similar in sound. Both these words have the same suffix,
"PAS", which is used to denote a plaster that adheres to the
body with curative powers. "Pas, being merely descriptive,
furnishes no indication of the origin of the article and therefore
is open for appropriation by anyone (Ethepa vs. Director of
Patents, L-20635, March 31, 1966) and may properly become
the subject of a trademark by combination with another word or
phrase.
Two letters of "SALONPAS" are missing in "LIONPAS"; the
first letter a and the letter s. Be that as it may, when the two
words are pronounced, the sound effects are confusingly
similar. And where goods are advertised over the radio,
similarity in sound is of especial significance (Co Tiong Sa vs.
Director of Patents, 95 Phil. 1 citing Nims, The Law of Unfair
Competition and Trademarks, 4th ed., vol. 2, pp. 678-679).
"The importance of this rule is emphasized by the increase of
radio advertising in which we are deprived of help of our eyes
and must depend entirely on the ear" (Operators, Inc. vs.
Director of Patents, supra).
In the case at bar, "SALONPAS" and "LIONPAS", when
spoken, sound very much alike. Similarity of sound is sufficient
ground for this Court to rule that the two marks are confusingly
similar when applied to merchandise of the same descriptive
properties (see Celanese Corporation of America vs. E. I. Du
Pont, 154 F. 2d. 146, 148).
The registration of "LIONPAS" cannot therefore be given due
course.
Decision of the respondent Director of Patents is set aside,
and the petition of the respondent Petra Hawpia & Co. is
hereby dismissed.
CASE 36: SOCIETE DES PRODUITS NESTLE V. DY, JR.
(G.R. NO. 172276)
Facts:
Petitioner Nestle, a Swiss corporation, owns the NAN
trademark for its line of infant powdered milk products in the
Philippines. Respondent Dy, Jr. on the other hand, owner of
5M Enterprises, imports and repacks powdered milk for adults
bearing the mark NANNY. Petitioner Nestle filed before the
trial court an infringement complaint against respondent. The
trial court held that respondents trademark is an infringement
to petitioners mark because it would imply that respondents
NANNY product came from petitioner. CA reversed and held
that the two marks are not confusingly similar thus respondent
cannot be held liable for infringement.
Issue: Whether or not respondent is liable for trademark
infringement.
Ruling: YES.
In accordance with Section 22 of R.A. No. 166, as well as
Sections 2, 2-A, 9-A, and 20 thereof, the following constitute
the elements of trademark infringement: (a) A trademark
actually used in commerce in the Philippines and registered in
the principal register of the Philippine Patent Office; (b) It is
used by another person in connection with the sale, offering for
sale, or advertising of any goods, business or services or in
connection with which such use is likely to cause confusion or
mistake or to deceive purchasers or others as to the source or
origin of such goods or services, or identity of such business;
or such trademark is reproduced, counterfeited, copied or
colorably imitated by another person and such reproduction,
counterfeit, copy or colorable imitation is applied to labels,
signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with
such goods, business or services as to likely cause confusion
or mistake or to deceive purchasers; (c) The trademark is used
for identical or similar goods; and (d) Such act is done without
the consent of the trademark registrant or assignee.
On the other hand, the elements of infringement under R.A.
No. 8293 are as follows: (a) The trademark being infringed is
registered in the Intellectual Property Office; however, in
infringement of trade name, the same need not be registered;
(b) The trademark or trade name is reproduced, counterfeited,
copied, or colorably imitated by the infringer; (c) The infringing
mark or trade name is used in connection with the sale,
offering for sale, or advertising of any goods, business or
services; or the infringing mark or trade name is applied to
labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with
such goods, business or services; (d) The use or application of
the infringing mark or trade name is likely to cause confusion
or mistake or to deceive purchasers or others as to the goods
or services themselves or as to the source or origin of such
goods or services or the identity of such business; and (e) It is
without the consent of the trademark or trade name owner or
the assignee thereof.
Among the elements, the element of likelihood of confusion is
the gravamen of trademark infringement. Applying the
dominancy test in the present case, the Court finds that
NANNY is confusingly similar to NAN. NAN is the
prevalent feature of Nestles line of infant powdered milk
products. It is written in bold letters and used in all products.
The line consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2.
Clearly, NANNY contains the prevalent feature NAN. The
first three letters of NANNY are exactly the same as the
letters of NAN. When NAN and NANNY are pronounced,
the aural effect is confusingly similar.