E.Y. Industrial Sales Inc. and Engracio Yap vs. Shen Dar Electricity and Machinery Co.

G.R. No. 184850, October 20, 2010

FACTS:

EYIS is a domestic corporation engaged in the production, distribution and sale of air
compressors and other industrial tools and equipment. Petitioner Engracio Yap is the Chairman of the
Board of Directors of EYIS. Respondent Shen Dar, on the other hand, is a Taiwan-based foreign
corporation engaged in the manufacture of air compressors. Both companies claimed to have the right
to register the trademark VESPA for air compressors. From 1997 to 2004, EYIS imported air
compressors from Shen Dar through sales contracts. In the Sales Contract dated April 20, 2002, for
example, Shen Dar would supply EYIS in one (1) year with 24 to 30 units of 40-ft. containers worth of air
compressors identified in the Packing/Weight Lists simply as SD-23, SD-29, SD-31, SD-32, SD-39, SD-67
and SD-68. In the corresponding Bill of Ladings, the items were described merely as air compressors.
There is no documentary evidence to show that such air compressors were marked VESPA.

On June 9, 1997, Shen Dar filed a Trademark Application with the IPO for the mark VESPA,
Chinese Characters and Device for use on air compressors and welding machines. On July 28, 1999, EYIS
filed a Trademark Application also for the mark VESPA, for use on air compressors. On January 18,
2004, the IPO issued COR No. 4-1999-005393 in favor of EYIS. Thereafter, on February 8, 2007, Shen Dar
was also issued COR No. 4-1997-121492. In the meantime, on June 21, 2004, Shen Dar filed a Petition for
Cancellation of EYIS COR with the BLA. In the Petition, Shen Dar primarily argued that the issuance of
the COR in favor of EYIS violated Section 123.1 paragraphs (d), (e) and (f) of Republic Act No. (RA) 8293,
otherwise known as the Intellectual Property Code (IP Code), having first filed an application for the
mark. Shen Dar further alleged that EYIS was a mere distributor of air compressors bearing the mark
VESPA which it imported from Shen Dar. Shen Dar also argued that it had prior and exclusive right to
the use and registration of the mark VESPA in the Philippines under the provisions of the Paris
Convention. The BLA and the IPO Director General denied Shen Dars petition. However, the Court of
Appeals reversed the decision and ruled in favor of herein respondent. Hence, this appeal on Certiorari.

ISSUE:

Whether or not E.Y. Indiustrial Sales is the true owner of the mark Vespa

HELD:

YES. Under Section 123(d) of RA 8293, the registration of a mark is prevented with the filing of
an earlier application for registration. This must not, however, be interpreted to mean that ownership
should be based upon an earlier filing date. While RA 8293 removed the previous requirement of proof
of actual use prior to the filing of an application for registration of a mark, proof of prior and continuous
use is necessary to establish ownership of a mark. Such ownership constitutes sufficient evidence to
oppose the registration of a mark.

Sec. 134 of the IP Code provides that any person who believes that he would be damaged by
the registration of a mark x x x may file an opposition to the application. The term any person
encompasses the true owner of the mark -- the prior and continuous user.

Notably, the Court has ruled that the prior and continuous use of a mark may even overcome the
presumptive ownership of the registrant and be held as the owner of the mark. Here, the
incontrovertible truth, as established by the evidence submitted by the parties, is that Petitioner E.Y.
Industrial Sales is the prior user of the mark. On the other hand, Shen Dar failed to refute the evidence
cited by the BLA in its decision. More importantly, Shen Dar failed to present sufficient evidence to
prove its own prior use of the mark VESPA. As such, E.Y. Industrial Sales must be considered as the
prior and continuous user of the mark VESPA and its true owner. Hence, E.Y. Industrial Sales is entitled
to the registration of the mark in its name.
 G.R. No. 190065 August 16, 2010

Dermaline, Inc. vs. Myra Pharmaceuticals, Inc.

FACTS

Petitioner Dermaline filed before the Intellectual Property Office (IPO) an application for
registration of the trademark DERMALINE DERMALINE, INC.Respondent Myra filed a Verified
Opposition alleging that the trademark sought to be registered by Dermaline so resembles its trademark
DERMALIN and will likely cause confusion, mistake and deception to the purchasing public. It further
alleged that Dermalines use and registration of its applied trademark will diminish the distinctiveness
and dilute the goodwill of Myras DERMALIN, which Myra has been extensively commercially since
October 31, 1977, and said mark is still valid and subsisting.

Myra contends that despite Dermalines attempt to differentiate its applied mark, the dominant
feature is the term DERMALINE, which is practically identical with its own DERMALIN, more
particularly that the first eight (8) letters of the marks are identical, and that notwithstanding the
additional letter E by Dermaline, the pronunciation for both marks are identical. Further, both marks
have three (3) syllables each, with each syllable identical in sound and appearance, even if the last
syllable of DERMALINE consisted of four (4) letters while DERMALIN consisted only of three (3). Myra
asserted that the mark DERMALINE DERMALINE, INC. is aurally similar to its own mark such that the
registration and use of Dermalines applied mark will enable it to obtain benefit from Myras reputation,
goodwill and advertising and will lead the public into believing that Dermaline is, in any way, connected
to Myra. Myra added that even if the subject application was under Classification 44 for various skin
treatments, it could still be connected to the DERMALIN mark under Classification 5 for
pharmaceutical products, since ultimately these goods are very closely related. The IPO Bureau of Legal
Affairs ruled in favor of respondent; said decision was sustained by the IPO Director General and the
Court of Appeals.

ISSUE

Whether or not petitioners use ofDermaline Dermaline Inccan result in confusion, mistake or
deception on the part of the purchasing public

RULING

Yes. A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and
distinguish them from those manufactured, sold, or dealt by others. As a registered trademark owner,
Myra 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. 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 Section 155.1 of R.A. No. 8293 which provides

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a

registered mark or the same container or a dominant feature thereof in connection with the sale,
offering for sale, distribution, advertising of any goods or services including other preparatory steps
necessary to carry out the sale of any goods or services on or in connection with which such use is likely
to cause confusion, or to cause mistake, or to deceive; (emphasis supplied)

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 two
(2) types of confusion, viz: (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.

Both confusion of goods and service and confusion of business or of origin were apparent in
both trademarks. 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.

While it is true that the two marks are presented differently 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, and the portion DERMALINE, INC. is written in upper
case letters, below and smaller than the long-hand portion; 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 because they are almost spelled in the same way, except for Dermalines mark which
ends with the letter E, and they are pronounced practically in the same manner in three (3) syllables,
with 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.

Dermalines stance that its product belongs to a separate and different classification from Myras
products with 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, 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.
 Taiwan Kolin vs Kolin Electronics
Case Digest GR 209843 March 25 2015

Facts:

Taiwan Kolin Corp sought to register the trademark KOLIN in Class 9 on the following
combination of goods: television sets, cassette recorder, VCD Amplifiers, camcorders and other
audio/video electronic equipment, flat iron, vacuum cleaners, cordless handsets, videophones, facsimile
machines, teleprinters, cellular phones and automatic goods vending machine.

Kolin Electronics opposed the application on the ground that the trademark KOLIN is identical,
if not confusingly similar, with its registered trademark KOLIN which covers the following products
under Class 9 of the Nice Classification (NCL): automatic voltage regulator, converter, recharger, stereo
booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC. Kolin
Electronics argued that the products are not only closely-related because they fall under the same
classification, but also because they are inherently similar for being electronic products and are plugged
into electric sockets and perform a useful function.

Issue: W/N the products are closely-related

Held:

No, the products are not related and the use of the trademark KOLIN on them would not likely
cause confusion. To confer exclusive use of a trademark, emphasis should be on the similarity or
relatedness of the goods and/or services involved and not on the arbitrary classification or general
description of their properties or characteristics.

First, products classified under Class 9 can be further classified into five categories. Accordingly,
the goods covered by the competing marks between Taiwan Kolin and Kolin Electronics fall under
different categories. Taiwan Kolins goods are categorized as audio visual equipments, while Kolin
Electronics goods fall under devices for controlling the distribution and use of electricity. Thus, it is
erroneous to assume that all electronic products are closely related and that the coverage of one
electronic product necessarily precludes the registration of a similar mark over another.

Second, the ordinarily intelligent buyer is not likely to be confused. The distinct visual and aural
differences between the two trademarks KOLIN, although appear to be minimal, are sufficient to
distinguish between one brand or another. The casual buyer is predisposed to be more cautious,
discriminating, and would prefer to mull over his purchase because the products involved are various
kind of electronic products which are relatively luxury items and not considered affordable. They are not
ordinarily consumable items such as soy sauce, ketsup or soap which are of minimal cost. Hence,
confusion is less likely.
 CANON KABUSHIKI KAISHA vs. COURT OF APPEALS

G.R. No. 120900, July 20, 2000

FACTS:

On January 15, 1985, private respondent NSR Rubber Corporation filed an application for
registration of the mark CANON for sandals in the Bureau of Patents, Trademarks, and Technology
Transfer (BPTTT). Canon Kabushiki Kaisha filed a Verified Notice of Opposition alleging that it will be
damaged by the registration of the trademark CANON in the name of private respondent since they were
using the same trademark for their footwear line of products. The private respondent will also use the
name Canon for its footwear products.

Based on the records, the evidence presented by petitioner consisted of its certificates of
registration for the mark CANON in various countries covering goods belonging to class 2, paints,
chemical products, toner, and dye stuff. Petitioner also submitted in evidence its Philippine Trademark
Registration No. 39398, showing its ownership over the trademark CANON.

The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of petitioner
and giving due course to NSR's application for the registration of the trademark CANON. Canon Kabushiki
Kaisha filed an appeal with the Court of Appeals that eventually affirmed the decision of the BPTTT.

ISSUE: Is the use of trademark, CANON, by the private respondent affects the business of Canon
Kabushiki Kaisha who has an existing ownership of a trademark also known as CANON?

HELD:

No. The Supreme Court says that ordinarily, the ownership of a trademark or tradename is a
property right that the owner is entitled to protect as mandated by the Trademark Law. However, when a
trademark is used by a party for a product in which the other party does not deal, the use of the same
trademark on the latter's product cannot be validly objected to.

The BPTTT correctly ruled that since the certificate of registration of petitioner for the trademark
CANON covers class 2 (paints, chemical products, toner, dyestuff), private respondent can use the
trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a world of difference
between the paints, chemical products, toner, and dyestuff of petitioner and the sandals of private
respondent.

Clearly, there is a world of difference between the paints, chemical products, toner, and dyestuff
of petitioner and the sandals of private respondent.

In re Treaty of Paris: the then Minister of Trade and Industry Ongpin issued guidelines in the
implementation of Article 6 of the Treaty of Paris. The conditions are:

a) the mark must be internationally known;

b) the subject of the right must be a trademark, not a patent or copyright or anything else;

c ) the mark must be for use in the same or similar kinds of goods; and

d) the person claiming must be the owner of the mark

Petitioner failed to comply with the third requirement of the said memorandum that is the mark must be
for use in the same or similar kinds of goods.
 Faberge , Incorporated v. The Intermediate Appellate Court and Co Beng Kay

04 November 1992; Melo, J.

I. Facts

Private respondent Co Beng Kay (CBK) filed with the Director of Patents an application to register
the trademark BRUTE for the briefs manufactured and sold by his Corporation in the domestic market.

Petitioner Faberge opposed this application on the ground of the similarity of the said trademark
with Faberges own symbol BRUT, which it previously registered for after shave lotion, shaving cream,
deodorant, talcum powder, and toilet soap, likewise sold in the domestic market.

The Director of Patents granted CBKs application.

The CA initially reversed this decision, holding that the marks BRUT and BRUTE were indeed
quite similar, and that even if the products sold under these marks are different, it is still reasonable to
believe that the similarity would cause confusion and even mistake and deception in the buying public as
to the origin of the goods bearing such trademarks, especially since modern department stores usually
place CBKs products (briefs) and Faberges products (after shave lotion, etc.) in one section denominated
as Mens Accessories. In effect, this would supposedly allow CBK to unjustly benefit from the goodwill
and reputation that Faberge has already established for its BRUT products.

Upon CBKs MR however, the CA reversed its earlier ruling, holding that the controlling ruling is
to the effect that the identical trademark can be used by different manufacturers for products that are
non-competing and unrelated.

Thus, Faberge is now before the SC to contest the above ruling, insisting that there can be unfair
competition even if the goods are noncompeting, especially in view of the alleged repeal of RA 166 by
RA 666, which deleted the phrase in the former law that the merchandise must be substantially of the
same descriptive properties. It also adds that it has a pending application of the trademark BRUT 33
DEVICE for briefs as proof that it intended to expand its mark "BRUT" to other goods and thus, following
the sentiment expressed by Justice JBL Reyes in Sta. Ana v. Maliwat, it is entitled to relief that is available
where the junior user's goods are not remote from any product that the senior user would be likely to
make or sell.

II. Issues

WON an earlier registration of a trademark can prevent a later registration of a similarly-

sounding trademark, even if the products falling under the two are unrelated and non-competing NO.

III. Holding

Petition denied. Decision of the CA is affirmed.

IV. Ratio

A review of the relevant provision of the Civil Code and RA 166, as amended would yield the
conclusion that CBK may be permitted to register the trademark BRUTE for briefs produced by it
notwithstanding Faberges vehement protestations of unfair dealings in marketing its own set of items
which are limited to: after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap.

In as much as Faberge has not ventured in the production of briefs, an item which is not listed in
its certificate of registration, it cannot and should not be allowed to feign that CBK had invaded its
exclusive domain. Even its alleged application for registration of BRUT to other products such as briefs
was not annexed to its brief, and in any case, such application does not suffice and may not vest an
exclusive right in its favor that can ordinarily be protected by the Trademark Law.

The certificate of registration issued by the Director of Patents can confer upon Faberge the
exclusive right to use its own symbol only to those goods specified in the certificate, subject to any
conditions and limitations stated therein.
 WRT argument raised by Faberge as regards its alleged business expansion, which invokes the
wisdom imparted by Justice JBL Reyes in Sta. Ana vs. Maliwat to the effect that dissimilarity of goods will
not preclude relief if the junior user's goods are not remote from any other product which the first user
would be likely to make or sell, it is indeed true that Sec. 4(d) of RA 166, as amended does not require
that the articles of manufacture of the previous user and late user of the mark should possess the same
descriptive properties or should fall into the same categories as to bar the latter from registering his
mark in the principal register.

Yet, it is equally true that under Sec. 20 of the same law, the protective mantle of the Trademark
Law extends only to the goods used by the first user as specified in the certificate of registration.

How should this apparent conflict between Sec. 4(d) and Sec. 20 be reconciled? The rule has
been laid down that the clause which comes later shall be given paramount significance over an anterior
proviso upon the presumption that it expresses the latest and dominant purpose. It ineluctably follows
that Sec. 20 is controlling and, therefore, CBK can appropriate its symbol for the briefs it manufactures
because as aptly remarked by Justice Sanchez in Sterling Products v. Farbenfabriken:

Really, if the certificate of registration were to be deemed as including goods not specified
therein, then a situation may arise whereby an applicant may be tempted to register a trademark on any
and all goods which his mind may conceive even if he had never intended to use the trademark for the
said goods. We believe that such omnibus registration is not contemplated by our Trademark Law.

Whatever deleterious effects may arise from the above interpretation of Sec. 20 in relation to
Sec. 4(d) of RA 166 is not entirely irreversible; however the remedy is legislative and not judicial.

Neither can CBK be deemed to have committed infringement, which is defined as the use
without consent of the trademark owner of any reproduction, counterfeit, copy or colorable imitation of
any registered mark or trade name in connection with the sale, offering for sale, or advertising of any
goods, business or services on or in connection with which such use is likely to cause confusion or
mistake or to deceive purchasers or others as to the source or origin of such goods or services, or
identity of such business.

The glaring discrepancies between the products of CBK, on the one hand, and of Faberge, on the
other, had been amply portrayed to such an extent that indeed, a purchaser who is out in the market for
the purpose of buying CBKs BRUTE brief would definitely be not mistaken or misled into buying
Faberges BRUT after shave lotion or deodorant.

EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT OF APPEALS, BUREAU OF

PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER AND H.D. LEE
 G.R. No. 100098, December 29, 1995, KAPUNAN, J.:

Facts:

Private respondent H.D. Lee Co., Inc., a foreign corporation, filed with the Bureau of Patents,
Trademarks & Technology Transfer (BPTTT) a petition for cancellation of registration (Supplemental
Register)and notice of opposition to petitioner's application for registration for the trademark "STYLISTIC
MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and
lingerie under Class 25, in the name of petitioner Emerald Garment Manufacturing Corporation.

Private respondent, invoking Sec. 37 of R.A. No. 166 (Trademark Law) and Art. VIII of the Paris
Convention for the Protection of Industrial Property, averred that petitioner's trademark "so closely
resembled its own trademark, 'LEE' as previously registered and used in the Philippines, and not
abandoned, as to be likely, when applied to or used in connection with petitioner's goods, to cause
confusion, mistake and deception on the part of the purchasing public as to the origin of the goods." On
the other hand, petitioner contended that its trademark was entirely and unmistakably different from
that of private respondent and that its certificate of registration was legally and validly granted.

The Director of Patents rendered a decision granting private respondent's petition for
cancellation and opposition to registration. Using the test of dominancy, the Director of Patents declared
that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word
'Lee' which draws the attention of the buyer and leads him to conclude that the goods originated from
the same manufacturer. It is undeniably the dominant feature of the mark. Court of Appeals affirmed
the decision of the Director of Patents. Hence, petition for review on certiorari was sought.

Issue: Does petitioner's trademark "STYLISTIC MR. LEE" tend to mislead and confuse the public and thus
constitutes an infringement of respondents trademark "LEE or LEE RIDERS, LEE-LEENS and LEE-SURES?"

Held: No. Negative for lack of adequate proof of actual use of its trademark in the Philippines prior to
Emeralds use of its own mark and for failure to establish confusing similarity between said trademarks,
HD Lee Cos action for infringement must necessarily fail.

The pertinent provision of R.A. No. 166 (Trademark Law) states thus:

Sec. 22. Infringement, what constitutes. Any person who shall use, without the consent of the
registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-
name in connection with the sale, offering for sale, or advertising of any goods, business or services on
or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or
others as to the source or origin of such goods or services, or identity of such business; or reproduce,
counterfeit, copy or colorably imitable any such mark or trade-name and apply such reproduction,
counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such goods, business or services; shall
be liable to a civil action by the registrant for any or all of the remedies herein provided.

The essential element of infringement is colorable imitation. This term has been defined as "such
a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of
the infringing mark 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."

Colorable imitation does not mean such similitude as amounts to identity. Nor does it require
that all the details be literally copied. Colorable imitation refers to such similarity in form, content,
words, sound, meaning, special arrangement, or general appearance of the trademark or tradename
with that of the other mark or tradename in their over-all presentation or in their essential, substantive
and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the
genuine article.
 In determining whether colorable imitation exists, jurisprudence has developed two kinds of
tests the Dominancy Test applied in Asia Brewery, Inc. v. Court of Appeals and other cases and the
Holistic Test developed in Del Monte Corporation v. Court of Appeals and its proponent cases.

As its title implies, the test of dominancy focuses on the similarity of the prevalent features of
the competing trademarks which might cause confusion or deception and thus constitutes infringement.

. . . If the competing trademark contains the main or essential or dominant features of another,
and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not
necessary; nor it is necessary that the infringing label should suggest an effort to imitate. [C. Neilman
Brewing Co. v. Independent Brewing Co., 191 F., 489, 495, citing Eagle White Lead Co., vs. Pflugh (CC) 180
Fed. 579]. The question at issue in cases of infringement of trademarks is whether the use of the marks
involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers.
(Auburn Rubber Corporation vs. Honover Rubber Co., 107 F. 2d 588; . . .)

On the other side of the spectrum, the holistic test mandates that the entirety of the marks in
question must be considered in determining confusing similarity.

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.

Applying the foregoing tenets to the present controversy and taking into account the factual
circumstances of this case, we considered the trademarks involved as a whole and rule that petitioner's
"STYLISTIC MR. LEE" is not confusingly similar to private respondent's "LEE" trademark.

Petitioner's trademark is the whole "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 not the "completely unwary
consumer" but is the "ordinarily intelligent buyer" considering the type of product involved.

"LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership
over and singular use of said term.

. . . It has been held that a personal name or surname may not be monopolized as a trademark
or tradename as against others of the same name or surname. For in the absence of contract, fraud, or
estoppel, any man may use his name or surname in all legitimate ways. Thus, "Wellington" is a surname,
and its first user has no cause of action against the junior user of "Wellington" as it is incapable of
exclusive appropriation.

After a meticulous study of the records, we observe that the Director of Patents and the Court of
Appeals relied mainly on the registration certificates as proof of use by private respondent of the
trademark "LEE" which, as we have previously discussed are not sufficient. We cannot give credence to
private respondent's claim that its "LEE" mark first reached the Philippines in the 1960's through local
sales by the Post Exchanges of the U.S. Military Bases in the Philippines based as it was solely on the self-
serving statements of Mr. Edward Poste, General Manager of Lee (Phils.), Inc., a wholly owned subsidiary
of the H.D. Lee, Co., Inc., U.S.A., herein private respondent. Similarly, we give little weight to the
numerous vouchers representing various advertising expenses in the Philippines for "LEE" products. It is
well to note that these expenses were incurred only in 1981 and 1982 by LEE (Phils.), Inc. after it entered
into a licensing agreement with private respondent on 11 May 1981.

On the other hand, petitioner has sufficiently shown that it has been in the business of selling
jeans and other garments adopting its "STYLISTIC MR. LEE" trademark since 1975 as evidenced by
appropriate sales invoices to various stores and retailers.

The Trademark Law is very clear. It requires actual commercial use of the mark prior to its
registration. There is no dispute that respondent corporation was the first registrant, yet it failed to fully
substantiate its claim that it used in trade or business in the Philippines the subject mark; it did not
present proof to invest it with exclusive, continuous adoption of the trademark which should consist
among others, of considerable sales since its first use. The invoices submitted by respondent which were
dated way back in 1957 show that the zippers sent to the Philippines were to be used as "samples" and
"of no commercial value." The evidence for respondent must be clear, definite and free from
inconsistencies. "Samples" are not for sale and therefore, the fact of exporting them to the Philippines
cannot be considered to be equivalent to the "use" contemplated by law. Respondent did not expect
income from such "samples." There were no receipts to establish sale, and no proof were presented to
show that they were subsequently sold in the Philippines.

The sales invoices provide the best proof that there were actual sales of petitioner's product in
the country and that there was actual use for a protracted period of petitioner's trademark or part
thereof through these sales.

For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner's
use of its own mark and for failure to establish confusing similarity between said trademarks, private
respondent's action for infringement must necessarily fail.

G.R. No. 164321 March 23, 2011

SKECHERS, U.S.A., INC. vs. INTER PACIFIC INDUSTRIAL TRADING CORP.

Petitioners claim: Skechers, USA contend that respondents are guilty of trademark infringement of their
registered trademark S (within an oval design).

Respondents claim: they argued that there was no confusing similarity between petitioners "Skechers"
rubber shoes and its "Strong" rubber shoes

Facts:

Petitioner filed an application for the issuance of search warrants against an outlet and
warehouse operated by respondents for infringement of trademark under Section 155, in relation to
Section 170 of Republic Act No. 8293, IP Code of the Philippines. In the course of its business, petitioner
has registered the trademark "SKECHERS" and the trademark "S" (within an oval design) with the IPO.
Two search warrants were issued and more than 6,000 pairs of shoes bearing the S logo were seized.

Respondents moved to quash the warrants arguing that there was no confusing similarity
between petitioners "Skechers" rubber shoes and its "Strong" rubber shoes. RTC granted the motion
and quashed the search warrants. Petitioner filed a petition for certiorari with the CA which affirmed the
decision of the RTC.

Thus, petitioner filed the present petition with the SC assailing that the CA committed grave
abuse of discretion when it considered matters of defense in a criminal trial for trademark infringement
in passing upon the validity of the search warrant when it should have limited itself to a determination of
whether the trial court committed grave abuse of discretion in quashing the warrants. And that it
committed grave abuse of discretion in finding that respondents are not guilty of trademark
infringement in the case where the sole triable issue is the existence of probable cause to issue a search
warrant.

Subsequently, petitioner-intervenor filed a Petition-in-Intervention with the Court claiming to be

the sole licensed distributor of Skechers products here in the Philippines, but the same was dismissed.
Both petitioner and petitioner-intervenor filed separate motions for reconsideration.

Issue: whether or not respondent is guilty of trademark infringement.

Ruling: Yes. The essential element of infringement under R.A. No. 8293 is that the infringing mark is
likely to cause confusion. In determining similarity and likelihood of confusion, two tests have been
developed: (1)the Dominancy Test which focuses on the similarity of the prevalent or dominant features
of the competing trademarks that might cause confusion, mistake, and deception in the mind of the
purchasing public. Duplication or imitation is not necessary; neither is it required that the mark sought to
be registered suggests an effort to imitate. Given more consideration are the aural and visual
impressions created by the marks on the buyers of goods, giving little weight to factors like prices,
quality, sales outlets, and market segments. (2) the Holistic or Totality Test which necessitates 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 so that the observer may
draw conclusion on whether one is confusingly similar to the other.

There are two 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.

In the case at bar, the Court applied the Dominancy Test and found that the use of the stylized
"S" by respondent in its Strong rubber shoes infringes on the mark already registered by petitioner with
the IPO. While it is undisputed that petitioners stylized "S" is within an oval design, to this Courts mind,
the dominant feature of the trademark is the stylized "S," as it is precisely the stylized "S" which catches
the eye of the purchaser. Thus, even if respondent did not use an oval design, the mere fact that it used
the same stylized "S", the same being the dominant feature of petitioners trademark, already
constitutes infringement under the Dominancy Test.

The protection of trademarks as intellectual property is intended not only to preserve the
goodwill and reputation of the business established on the goods bearing the mark through actual use
over a period of time, but also to safeguard the public as consumers against confusion on these
goods. While respondents shoes contain some dissimilarities with petitioners shoes, this Court cannot
close its eye to the fact that for all intents and purpose, respondent had deliberately attempted to copy
petitioners mark and overall design and features of the shoes. Let it be remembered, that defendants in
cases of infringement do not normally copy but only make colorable changes. The most successful form
of copying is to employ enough points of similarity to confuse the public, with enough points of
difference to confuse the courts.

Societe Des Produits vs. Martin T. Dy

 Gr no. 172276 August 8, 2010

Facts:

Petitioner is a foreign corporation organized under Switzerland laws. Petitioner owns "NAN"
trademark for its infant powered milk products. Petitioner distributed and sells Nan milk products in the
Philippines. Respondent owns 5M Enterprises that imports Sunny Boy milk from Australia and repacks
them into 3 sizes of plastic bags carrying the name "Nanny". A letter of request was sent to Dy ordering
him to restrain from using Nanny as this infringes Nan trademark. When Dy did not act on the request, a
complaint for trademark infringement was filed before RTC Dumaguete. It was dismissed later on. On
appeal, the court remanded the case to the lower court for further proceedings. Subsequently, the case
was transferred to RTC Cebu, a special court designated for intellectual property rights' cases.

Issue: WON there was trademark infringement

Held: Yes.

The court applied the dominancy test when it found out that Nanny is confusingly similar to Nan.
Nan is the prevalent feature of Nestle's line of infant powdered milk products. The first 3 letters of Nanny
is the same as the letters of Nan. When both are pronounced, the aural effect is confusingly similar.
Furthermore, Nan and Nanny have the same classification, descriptive properties and physical attributes.
Both are classified under Class 6, both are milk products, and both are powdered in form. They are also
displayed in the milk section.

Finally, the trademark owner is not only protected by law in guarding his goods or business from
actual market competition with identical or similar products of the parties but also extends to all cases as
it would likely confuse the public into thinking that the complaining party has extended his business into
the field or is in any way connected with the activities of the infringer.

Shangri-La International Hotel Management v. CA

G.R. No. 111580, June 21, 2001
Facts: On June 21, 1988, the Shangri-La International Hotel Management filed with the Bureau of
Patents, Trademarks and Technology Transfer (BPTTT) a petition praying for the cancellation of the
registration of the "Shangri-La" mark and "S" device/logo issued to the Developers Group of Companies,
Inc., on the ground that the same was illegally and fraudulently obtained and appropriated for the
latter's restaurant business. The Shangri-La Group alleged that it is the legal and beneficial owners of the
subject mark and logo; that it has been using the said mark and logo for its corporate affairs and
business since March 1962 and caused the same to be specially designed for their international hotels in
1975, much earlier than the alleged first use thereof by the Developers Group in 1982. It also filed with
the BPTTT its own application for registration of the subject mark and logo. The Developers Group filed
an opposition to the application, which was docketed as Inter Partes Case No. 3529. Almost 3 years later,
or on April 15, 1991, the Developers Group instituted with the RTC of Quezon City a complaint for
infringement and damages with prayer for injunction.

On January 8, 1992, the Shangri-La Group moved for the suspension of the proceedings in the
infringement case on account of the pendency of the administrative proceedings before the BPTTT. This
was denied by the trial court in a Resolution issued on January 16, 1992.

Issue: Whether, despite the institution of an Inter Partes case for cancellation of a mark with the BPTTT
(now the Bureau of Legal Affairs, Intellectual Property Office) by one party, the adverse party can file a
subsequent action for infringement with the regular courts of justice in connection with the same
registered mark.

Held: Section 151.2 of Republic Act No. 8293, otherwise known as the Intellectual Property Code,
provides, as follows

Section 151.2. Notwithstanding the foregoing provisions, the court or the administrative agency
vested with jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall
likewise exercise jurisdiction to determine whether the registration of said mark may be cancelled in
accordance with this Act. The filing of a suit to enforce the registered mark with the proper court or
agency shall exclude any other court or agency from assuming jurisdiction over a subsequently filed
petition to cancel the same mark. On the other hand, the earlier filing of petition to cancel the mark with
the Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved before an
action to enforce the rights to same registered mark may be decided. (Emphasis provided)

Similarly, Rule 8, Section 7, of the Regulations on Inter Partes Proceedings, provides to wit

Section 7. Effect of filing of a suit before the Bureau or with the proper court. - The filing of a suit
to enforce the registered mark with the proper court or Bureau shall exclude any other court or agency
from assuming jurisdiction over a subsequently filed petition to cancel the same mark. On the other
hand, the earlier filing of petition to cancel the mark with the Bureau shall not constitute a prejudicial
question that must be resolved before an action to enforce the rights to same registered mark may be
decided. (Emphasis provided)

Hence, as applied in the case at bar, the earlier institution of an Inter Partes case by the Shangri-
La Group for the cancellation of the "Shangri-La" mark and "S" device/logo with the BPTTT cannot
effectively bar the subsequent filing of an infringement case by registrant Developers Group. The law and
the rules are explicit.

The rationale is plain: Certificate of Registration No. 31904, upon which the infringement case is
based, remains valid and subsisting for as long as it has not been cancelled by the Bureau or by an
infringement court. As such, Developers Group's Certificate of Registration in the principal register
continues as "prima facie evidence of the validity of the registration, the registrant's ownership of the
mark or trade-name, and of the registrant's exclusive right to use the same in connection with the goods,
business or services specified in the certificate." Since the certificate still subsists, Developers Group may
thus file a corresponding infringement suit and recover damages from any person who infringes upon
the former's rights.

PROSOURCE INTERNATIONAL, INC. vs. HORPHAG RESEARCH MANAGEMENT SA

 G.R. No. 180073, November 25, 2009

Facts:

Respondent Horphag Research Management 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. Respondent discovered that petitioner Prosource
International was also distributing a similar food supplement using the mark PCO-GENOLS since 1996
and was only discontinued in 2000. 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. Petitioner contended that the two marks
were not confusingly similar and denied liability, since it discontinued the use of the mark prior to the
institution of the infringement case.

Issue:Whether or not petitioners are liable for infringement of trademark.

Held:

The court ruled in the positive. A trademark is any distinctive word, name, symbol, emblem, sign,
or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to
identify and distinguish them from those manufactured, sold, or dealt by others. The gravamen of
trademark infringement is the element of "likelihood of confusion" which must be examined from the
particular, and sometimes peculiar, circumstances of each case.

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. In contrast, the Holistic Test entails a consideration of the entirety of
the marks as applied to the products, including the labels and packaging, in determining confusing
similarity. 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.

In the case at bar, the dominancy test was used in determining whether there was a confusing
similarity between the marks PYCNOGENOL and PCO-GENOL. Applying the test, the court found that:

Athough the letters "Y" between P and C, "N" between O and C and "S" after L are missing 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.

Levi Strauss & Co. v. Clinton Apparelle, GR No. 138900 September 20, 2005
FACTS:

The Complaint alleged that LS & Co., a foreign corporation duly organized and existing under the
laws of the State of Delaware, USA and engaged in the apparel business, is the owner by prior adoption
and use since 1986 of the internationally famous Dockers and Design trademark. This ownership is
evidenced by its valid and existing registrations in various member countries if Paris Convention. In the
Philippines, it has a Certificate of Registration No. 46619 in the Principal Register for use of said
trademark on pants, shirts, blouses, skirts, shorts, sweatshirts and jackets under Class 25. The Dockers
and Design trademark was first used in the Philippines in or about May 1988, by LSPI, a domestic
corporation engaged in the manufacture, sale and distribution of various products bearing trademarks
owned by LS & Co. To date, LSPI continues to manufacture and sell Dockers Pants with the Dockers and
Design Trademark. LS & Co and LSPI alleged that they discovered the presence in the local market of
jeans under the brand name Paddocks using a device which is substantially, if not exactly, similar to the
Dockers and Design trademark owned and registered in their name, without their consent. Based on
their belied, they added Clinton Apparelle manufactured and continues to manufacture such Paddocks
jeans and other apparel. However, since LS & Co. and LSPI are unsure if both or just one of impleaded
defendants is behind the manufacture and sale of the Paddocks jeans complained of, they brought this
suit under Sec. 13 Rule 3 of the 1997 Rules of Court.

The evidence considered by the trial court in granting injunctive relief were as follows: (1) a
certified true copy of the certificate of trademark registration for Dockers and Design (2) a pair of
DOCKERS pants bearing the trademark (3) a pair of Paddocks pants bearing the respondents assailed
logo; (4) the trends MBL Survey Report purportedly proving that there was confusing similarity between
two marks; (5) the affidavit of one Bernabe Alajar which recounted petitioners prior adoption, use and
registration of the Dockers and Design Trademark and (6) the affidavit of Mercedes Abad of Trends
MBL Inc which detailed the methodology and procedure used in their survey and results thereof.

The trial court issued a writ of preliminary injunction, which prompted Clinton Apparelle to file a
petition for certiorari, prohibition and mandamus with the Court of Appeals. Whereby the Appellate
Court granted the petition of Clinton Apparelles petition; holding that the trial court did not follow the
procedure required by law. Thus, holding the issuance of the writ of preliminary injunction is
questionable after petitioners failure to sufficiently establish its material and substantial right to have
the writ issued. Moreover, the Court of Appeals strongly believes that the implementation of the
questions writ would effectively shut down respondents shut down. Hence this petition.

ISSUE: whether or not the single registration of the trademark Dockers and Design confers on the
owner the right to prevent the use of a fraction thereof.

HELD: Given the single registration of the trademark Dockers and Design and considering that
respondent only uses the assailed device but a different word mark, the right to prevent the latter from
using the challenged Paddocks device is far from clear. Stated otherwise, it is not evident whether the
single registration of the trademark Dockers and Design confers on the owner the right to prevent the
use of a fraction thereof in the course of trade. It is also unclear whether the use without the owners
consent of a portion of a trademark registered in its entirety constitutes material or substantial invasion
of the owners right.

It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the
dominant or central feature of petitioners trademarkthe feature that prevails or is retained in the
minds of the publican imitation of which creates the likelihood of deceiving the public and constitutes
trademark infringement. In sum, there are vital matters which have yet and may only be established
through a full-blown trial.

From the above discussion, we find that petitioners right to injunctive relief has not been clearly
and unmistakably demonstrated. The right has yet to be determined. Petitioners also failed to show
proof that there is material and substantial invasion of their right to warrant the issuance of an injunctive
writ. Neither were petitioners able to show any urgent and permanent necessity for the writ to prevent
serious damage.
 Petitioners wish to impress upon the Court the urgent necessity for injunctive relief, urging that the
erosion or dilution of their trademark is protectable. They assert that a trademark owner does not have
to wait until the mark loses its distinctiveness to obtain injunctive relief, and that the mere use by an
infringer of a registered mark is already actionable even if he has not yet profited thereby or has
damaged the trademark owner.

Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish
goods or services, regardless of the presence or absence of: (1) competition between the owner of the
famous mark and other parties; or (2) likelihood of confusion, mistake or deception. Subject to the
principles of equity, the owner of a famous mark is entitled to an injunction against another persons
commercial use in commerce of a mark or trade name, if such use begins after the mark has become
famous and causes dilution of the distinctive quality of the mark. This is intended to protect famous
marks from subsequent uses that blur distinctiveness of the mark or tarnish or disparage it.

Based on the foregoing, to be eligible for protection from dilution, there has to be a finding that: (1)
the trademark sought to be protected is famous and distinctive; (2) the use by respondent of Paddocks
and Design began after the petitioners mark became famous; and (3) such subsequent use defames
petitioners mark. In the case at bar, petitioners have yet to establish whether Dockers and Design has
acquired a strong degree of distinctiveness and whether the other two elements are present for their
cause to fall within the ambit of the invoked protection. The Trends MBL Survey Report which petitioners
presented in a bid to establish that there was confusing similarity between two marks is not sufficient
proof of any dilution that the trial court must enjoin.

After a careful consideration of the facts and arguments of the parties, the Court finds that
petitioners did not adequately prove their entitlement to the injunctive writ. In the absence of proof of a
legal right and the injury sustained by the applicant, an order of the trial court granting the issuance of
an injunctive writ will be set aside for having been issued with grave abuse of discretion. Conformably,
the Court of Appeals was correct in setting aside the assailed orders of the trial court.

Converse Rubber Corporation vs Universal Rubber Products, Inc.

 147 SCRA 154 Mercantile Law Intellectual Property Law Law on Trademarks, Service Marks and
Trade Names Trade Name Infringement

Facts:

Converse Rubber Corporation is an American corporation while Universal Rubber Products, Inc.
is a corporation licensed to do business in the country. Converse has been operating since 1946.
Universal Rubber has been operating since 1963. Later, Universal Rubber filed an application for the
trademark Universal Converse and Device before the Philippine Patent Office. Converse Rubber
opposed as it averred that the word Converse which is part of its corporate name cannot be granted as
part of Universal Rubbers trademark or trade name because it will likely deceive purchasers of Universal
Rubbers products as it may be mistaken by unwary customers to be manufactured by Converse Rubber.
The Director of Patents did not grant the opposition by Converse Rubber.

ISSUE: whether or not the respondent's partial appropriation of petitioner's corporate name is of such
character that it is calculated to deceive or confuse the public to the injury of the petitioner to which the
name belongs.

HELD: YES. There is confusing similarity between its trademark UNIVERSAL CONVERSE AND DEVICE
and Converse Rubbers corporate name and/or its trademarks CHUCK TAYLOR and ALL STAR DEVICE
which could confuse the purchasing public to the prejudice of Converse Rubber. The trademark of
UNIVERSAL CONVERSE and DEVICE is imprinted in a circular manner on the side of its rubber shoes. In
the same manner, the trademark of Converse Rubber which reads CONVERSE CHUCK TAYLOR is
imprinted on a circular base attached to the side of its rubber shoes.

The determinative factor in ascertaining whether or not marks are confusingly similar to each
other is not whether the challenged mark would actually cause commission or deception of the
purchasers but whether the use of such mark would likely cause confusion or mistake on the part of the
buying public. It would be sufficient, for purposes of the law, that the similarity between the two labels is
such that there is a possibility or likelihood of the purchaser of the older brand mistaking the new brand
for it. Even if not all the details just mentioned were identical, with the general appearance alone of the
two products, any ordinary, or even perhaps even [sic] a not too perceptive and discriminating customer
could be deceived.

A corporation is entitled to the cancellation of a mark that is confusingly similar to its corporate
name. Appropriation by another of the dominant part of a corporate name is an infringement. From a
cursory appreciation of the corporate name of CONVERSE RUBBER CORPORATION, it is evident that the
word CONVERSE is the dominant word which identifies Converse Rubber from other corporations
engaged in similar business. Universal Rubber admitted Converse Rubbers existence since 1946 as a duly
organized foreign corporation engaged in the manufacture of rubber shoes. This admission necessarily
betrays its knowledge of the reputation and business of petitioner even before it applied for registration
of the trademark in question. Knowing, therefore, that the word CONVERSE belongs to and is being
used by Converse Rubber, and is in fact the dominant word in Converse Rubbers corporate name,
Universal Rubber has no right to appropriate the same for use on its products which are similar to those
being produced by Converse Rubber.
 Coffee Partners, Inc., vs San Francisco Coffee & Roastery, Inc..
G.R. No. 169504 : March 3, 2010
Facts:

Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing and
maintaining coffee shops in the country. It has a franchise agreement6ca with Coffee Partners Ltd. (CPL),
a business entity organized and existing under the laws of British Virgin Islands, for a non-exclusive right
to operate coffee shops in the Philippines using trademarks designed by CPL such as "SAN FRANCISCO
COFFEE." Respondent is a local corporation engaged in the wholesale and retail sale of coffee. It
registered with the SEC in May 1995. It registered the business name "SAN FRANCISCO COFFEE &
ROASTERY, INC." with the Department of Trade and Industry (DTI) in June 1995. Respondent formed a
joint venture company with Boyd Coffee USA under the company name Boyd Coffee Company
Philippines, Inc. (BCCPI), which is engaged in the processing, roasting, and wholesale selling of coffee.

In 2001, respondent discovered that petitioner was about to open a coffee shop under the name
"SAN FRANCISCO COFFEE" in Libis, Quezon City. According to respondent, petitioners shop caused
confusion in the minds of the public as it bore a similar name and it also engaged in the business of
selling coffee. Respondent also filed a complaint with the Bureau of Legal Affairs-Intellectual Property
Office (BLA-IPO) for infringement and/or unfair competition. Petitioner denied the allegations in the
complaint. Petitioner alleged it filed with the Intellectual Property Office (IPO) applications for
registration of the mark "SAN FRANCISCO COFFEE & DEVICE" for class 42 in 1999 and for class 35 in
2000.

BLA-IPO rendered a decision favourable to the respondents and found herein petitioners guilty
of trademark ingfringement. ODG-IPO; however reversed the decision of the Bureau which lead
respondents to appeal. CA again reversed the decision of the Office of the Director General and affirmed
the BLA-IPOs finding, hence this petition.

Issue: Whether petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes infringement of
respondents trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.," even if the trade name is not
registered with the Intellectual Property Office (IPO).

Held:

In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down what
constitutes infringement of an unregistered trade name, thus:

(1) The trademark being infringed is registered in the Intellectual Property Office; however, in
infringement of trade name, the same need not be registered;

(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by
the infringer;

(3) 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;

(4) 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

(5) It is without the consent of the trademark or trade name owner or the assignee thereof.

Clearly, a trade name need not be registered with the IPO before an infringement suit may be
filed by its owner against the owner of an infringing trademark. All that is required is that the trade
name is previously used in trade or commerce in the Philippines. Section 22 of Republic Act No.
166,12ca as amended, required registration of a trade name as a condition for the institution of an
infringement suit. However, RA 8293, Section 165.2 of RA 8293 categorically states that trade names
shall be protected, even prior to or without registration with the IPO, against any unlawful act x x x. Also,
applying the dominancy test or the holistic test, petitioners "SAN FRANCISCO COFFEE" trademark is a
clear infringement of respondents "SAN FRANCISCO COFFEE & ROASTERY, INC." trade name.
 In-n-out Burger Inc. vs Sehwani, Incorporated and/or Benitas Frites

G.R. No. 179127, December 24, 2008

Facts:

On 2 June 1997, petitioner filed trademark and service mark applications with the Bureau of
Trademarks of the IPO for IN-N-OUT and IN-N-OUT Burger & Arrow Design. Petitioner later found
out that respondent Sehwani, Incorporated had already obtained Trademark Registration for the mark
IN N OUT (the inside of the letter O formed like a star). By virtue of a licensing agreement,
Benita Frites, Inc. was able to use the registered mark of respondent Sehwani, Incorporated.

Petitioner filed an administrative complaint against respondents for unfair competition and
cancellation of trademark registration. Petitioner averred that it is the owner of the trade name IN-N-
OUT. Petitioner claimed that respondents are making it appear that their goods and services are those of
the petitioner, thus, misleading ordinary and unsuspecting consumers that they are purchasing
petitioners products. Petitioner then sent a demand letter directing respondents to cease and desist
from claiming ownership of the mark IN-N-OUT and to voluntarily cancel its trademark
registration. The respondents refused to accede to petitioners demand, but expressed willingness to
surrender the registration of respondent Sehwani, Incorporated of the IN N OUT trademark for a fair
and reasonable consideration.

Respondents, on the other hand, asserted that they had been using the mark IN N OUT in
the Philippines since 15 October 1982. On 15 November 1991, respondent Sehwani, Incorporated filed
with the then Bureau of Patents, Trademarks and Technology Transfer (BPTTT) an application for the
registration of the mark IN N OUT (the inside of the letter O formed like a star). Upon approval of its
application, a certificate of registration of the said mark was issued in the name of respondent Sehwani,
Incorporated on 17 December 1993.

Issue: Whether respondent Sehwani Incorporated is liable for unfair competition.

Held: Yes. The essential elements of an action for unfair competition are (1) confusing similarity in the
general appearance of the goods and (2) intent to deceive the public and defraud a competitor. The
intent to deceive and defraud may be inferred from the similarity of the appearance of the goods as
offered for sale to the public. Actual fraudulent intent need not be shown.

The evidence on record shows that the respondents were not using their registered trademark
but that of the petitioner. Respondent was issued a Certificate of Registration for IN N OUT (with the
Inside of the Letter O Formed like a Star) for restaurant business in 1993. The restaurant opened only
in 2000 but under the name IN-N-OUT BURGER. Apparently, the respondents started constructing the
restaurant only after the petitioner demanded that the latter desist from claiming ownership of the mark
IN-N-OUT and voluntarily cancel their trademark registration.
 G.R. No. 118192. October 23, 1997.]

PRO LINE SPORTS CENTER, INC., and QUESTOR CORPORATION, petitioners, vs. COURT OF APPEALS,
UNIVERSAL ATHLETICS INDUSTRIAL PRODUCTS, INC., and MONICO SEHWANI, respondents.

Facts:

Proline is the exclusive distributor of Spalding sports products in the Philippines, while Questor, a
US-based corporation became the owner of the trademark Spalding. They filed a petition against
respondent Universal, a domestic corporation which manufactures and sell sports goods including fake
spalding balls. By virtue of valid search warrant, Universals factory was searched resulting to the
seizure of fake spalding balls and the instruments used in the manufacture thereof. Civil and criminal
cases were filed against Universal. The civil case was dropped for it was doubtful whether Questor had
indeed acquired the registration rights over the mark spalding. The criminal case was also dismissed
due to insufficiency of evidence through a demurrer. The CA affirmed the lower courts decision.
Universal thereafter, filed for damages against Proline and Questor which was granted by the lower court
and affirmed by the CA.

Issue: Are Proline and Questor liable for damages to Universal for the wrongful recourse to court
proceedings?

Held:

Proline and Questor cannot be adjudged liable for damages for the alleged unfounded suit.
Universal failed to show that the filing of criminal charges of petitioner herein was bereft of probable
cause. Petitioners could not have been moved by legal malice in instituting the criminal complaint for
unfair competition.

We are disposed, under circumstances, to hold that Proline as the authorized agent of Questor,
exercised sound judgment in taking the necessary legal steps to safeguard the interest of its principal
with respect to the trademark in question.
 CATERPILLAR INC. V. SAMSON

Facts

Petitioner Caterpillar, Inc. is a foreign corporation engaged in the business of manufacturing

shoes, clothing items, among others. Search warrant applications were filed against Manolo Samson
(herein after referred to as Samson) for violations of unfair competition provided under Section 168.3(a)
in relation to Sections 131.3, 123(e) and 170 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code. Search warrants were then issued against respondent Samson and his other
business establishments (Itti Shoes Corporation, Kolms Manufacturing, and Caterpillar Boutique and
General Merchandise). Pursuant to the search warrants various merchandise garments, footwear, bags,
wallets, deodorant sprays, shoe cleaners and accessories, all bearing the trademarks "CAT," "CAT AND
DESIGN," "CATERPILLAR," "CATERPILLAR AND DESIGN," "WALKING MACHINES" and/or "Track-type
Tractor and Design" were seized. Respondent Samson filed a motion to quash the search warrants but
was denied. However, the Court ordered the release of the articles that were seized since there was no
criminal action filed against the respondent. Petitioner then filed Motion for Partial Reconsideration but
was denied by the TC. CA also denied the petition after noting that all the criminal complaints that were
filed against the respondent were dismissed by the investigating prosecutor and that the respondent
never denied the existence of the said items.

Issue/s 1) W/N CA erred in upholding the immediate release of the seized items on the ground that
there was no criminal action for unfair competition filed against the respondent?

2) W/N the CA erred in ruling that the subsequent dismissal of the investigating State Prosecutor
of the criminal complaints against respondent justifies the return of the seized items?

Held/Ratio: 1) NO. The Joint Resolution of the DOJ has become final; therefore no criminal case was filed
against the respondent in relation with the five search warrants that were issued by the Trial Court.
There was also no criminal case filed against the articles that were seized. With these, the seized articles
should be immediately released. Also, the numerous articles of clothing, footwear and accessories,
among others, that were seized had little, if any, evidentiary value for the criminal action of unfair
competition.

An action for unfair competition is based on the proposition that no dealer in merchandise
should be allowed to dress his goods in simulation of the goods of another dealer, so that purchasers
desiring to buy the goods of the latter would be induced to buy the goods of the former. The most usual
devices employed in committing this crime are the simulation of labels and the reproduction of form,
color and general appearance of the package used by the pioneer manufacturer or dealer. In the case at
hand the respondent already admitted the existence of the seized articles. The Court therefore ruled
that the admissions of the respondent in the case at hand are already suffiecient to establish that he
used such trademarks in order to sell merchandise at a commercial scale and that the actual products
manufactured by the respondent need not be presented to prove such fact. Also, there were already
available samples from the purchases as well as photographs of the particular parts of the merchandise
where the trademark in dispute were attached or used, therefore there is no more need for the court to
take custody of the countless articles that were seized.

2) NO. In the case at hand there is no criminal action that has been filed. The Court therefore
was left with no custody of the highly depreciable merchandise that were seized. More importantly,
these highly depreciable articles would have been superfluous if presented as evidence for the following
reasons: (1) the respondent had already admitted that he is the owner of the merchandise seized, which
made use of the trademarks in dispute; (2) the court required the respondent to execute an undertaking
to produce the articles seized when the court requires and had already in its possession a complete
inventory of the items seized as secondary evidence; (3) actual samples of the respondents merchandise
are in the possession of the police officers who had applied for the search warrant, and photographs
thereof had been made part of the records, and respondent did not dispute that these were obtained
from his stores. Where the purpose of presenting as evidence the articles seized is no longer served,
there is no justification for severely curtailing the rights of a person to his property. Hence, petition
denied.
 Shang Properties v. St. Francis Development Corporation
GR No. 190706; July 21, 2014
FACTS:

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.

RULING: 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.