ARCE SONS AND COMPANY vs. SELECTA BISCUIT COMPANY, INC., ET AL.

, has been inscribed on all its products to serve not only as a sign or symbol that may
Facts: Ramon Arce, predecessor-in-interest of herein petitioner, started a milk
business in 1933 using the name “SELECTA” as trade-name as well as trade-mark. He
sold his milk products in bottles covered with caps on which the words “SELECTA
FRESH MILK” were inscribed. For the span of more than 20 years, his business
expanded and sold, in addition to his milk product, ice cream, sandwiches and other
food products. His products were packaged in a special containers with the word
”SELECTA” written in the packaging. Several new products were eventually added to
his line of products such as biscuits, bakery items, and assorted cakes and pastries.
The word “SELECTA” was even written on the signboards of his business
establishments and upon the vehicles that were used for the delivery of his products.
Then his business was acquired by petitioner Arce Sons and Co. which eventually put a
first class restaurant aside from the manufacture of the aforementioned food products.
indicate that they are manufactured and sold by it but as a mark of authenticity that
may distinguish them from the products sold and manufactured by other merchants or
businessmen. The word 'SELECTA', it is true, may be an ordinary or common word in
the sense that may be used or employed by any one in promoting his business or
enterprise, but once adopted or coined in connection with one's business as an
emblem, sign or device to characterize its products, or as a badge of authenticity, it
may acquire a secondary meaning as to be exclusively associated with its products and
business. In this sense, its used by another may lead to confusion in trade and cause
damage to its business. And this is the situation of petitioner when it used the word
'SELECTA' as a trade-mark. In this sense, the law gives its protection and guarantees
its used to the exclusion of all others. Thus, the Director of Patent committed an error
in dismissing the opposition of the petitioner and in holding that the registration of the
trademark “SELECTA” in favour of respondent will not cause damage to petitioner.

Herein respondent on the other hand, was organized and registered as Decision of the Director of Patent office is reversed.
corporation under the name and style of Selecta Biscuits Co., Inc. The name Selecta
was chosen by the Chinese organizers of the corporation as a translation of a Chinese
word “Ching Suan.” Its business started as a biscuit factory and its products such as
biscuits and crackers were specially wrapped in cellophane pouches and place inside a
tin can. Such products of the respondent were sold throughout the Philippines. The
respondent filed a petition with the Philippine Patent Office for the registration of the
word “SELECTA” as trade-mark to be use in its bakery products. The petition was
referred to an examiner for evaluation who found out that the trademark sought to be
registered resembles the word “SELECTA” used by the petitioner so that its use by the
respondent will cause confusion as to the origin of their respective goods. So the
examiner recommended for the disapproval of the application. However, Patent Office
only ordered the publication of the application.

In due time, petitioner filed an opposition to the registration on the ground

that the mark “SELECTA” has been continuously used by it from the time of its
organization and even prior thereto by Ramon Arce, thus the said mark has already
become identified with its name and business. Petitioner also contend that the use of
SELECTA by the respondents as trademark constitutes as an unfair competition with its
products thus resulting in confusion in trade and that the product of the respondent
might be mistaken by the public as its products.

The Director of Patents rendered a decision dismissing petitioner’s opposition

stating that the registration of the trade-mark SELECTA in favour of the respondent
will not cause confusion or mistake nor will deceive the purchasers as to cause
damage to petitioner. Hence, this present petition for review.

Issue: Whether or not the use of the trade-mark “SELECTA” by the respondent will
result confusion to the prejudice of Arce Sons and Co.

Held: Yes. Trademark is a distinctive mark of authenticity through which the

merchandise of a particular producer or manufacturer may be distinguished from that
of others, and its sole function is to designate distinctively the origin of the products to
which it is attached. Verily, the word “SELECTA” has been chosen by petitioner and

SOCIETE DES PRODUITS NESTLE V. CA
Facts: Respondent CFC Corporation filed an application for the registration of the
trademark FLAVOR MASTER for instant coffee. Petitioners, a Swiss company and a
domestic corporation licensee of Societe, opposed on the ground that it is confusingly
similar to its trademark for coffee and coffee extracts: MASTER ROAST and MASTER
BLEND. Petitioners contend that the dominant word MASTER is present in the 3
trademarks. Respondent CFC argued that the word MASTER cannot be exclusively
appropriated being a descriptive or generic term. BPTTT denied CFC’s application. CA
held otherwise.
Issue: Whether or not the word MASTER is descriptive or generic term incapable of
exclusive appropriation.
Ruling: NO.
The word “MASTER” is neither a generic nor a descriptive term. As such, said term
cannot be invalidated as a trademark and, therefore, may be legally protected. Generic
terms are those which constitute “the common descriptive name of an article or
substance,” or comprise the “genus of which the particular product is a species,” or
are “commonly used as the name or description of a kind of goods,” or “imply
reference to every member of a genus and the exclusion of individuating characters,”
or “refer to the basic nature of the wares or services provided rather than to the more
idiosyncratic characteristics of a particular product,” and are not legally protectable.
On the other hand, a term is descriptive and therefore invalid as a trademark if, as
understood in its normal and natural sense, it “forthwith conveys the characteristics,
functions, qualities or ingredients of a product to one who has never seen it and does
not know what it is,” or “if it forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods,” or if it clearly denotes what goods or services
are provided in such a way that the consumer does not have to exercise powers of
perception or imagination.
Rather, the term “MASTER” is a suggestive term brought about by the advertising
scheme of Nestle. Suggestive terms are those which, in the phraseology of one court,
require “imagination, thought and perception to reach a conclusion as to the nature of
the goods.” Such terms, “which subtly connote something about the product,” are
eligible for protection in the absence of secondary meaning. While suggestive marks
are capable of shedding “some light” upon certain characteristics of the goods or
services in dispute, they nevertheless involve “an element of incongruity,”
“figurativeness,” or ” imaginative effort on the part of the observer.” The term
“MASTER”, therefore, has acquired a certain connotation to mean the coffee products
MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC of
the term “MASTER” in the trademark for its coffee product FLAVOR MASTER is likely to
cause confusion or mistake or even to deceive the ordinary purchasers.
AMIGO V. CLUETT PEABODY
Cluett, owner of GOLD TOE socks, sued Amigo, producer of GOLD TOP socks, for
trademark infringement.
Guilty. Cluett had already registered its marks and devices, which, under the Law on
Trademarks, was prima facie proof of ownership and first use. Amigo failed to
overthrow this presumption.
Facts: Cluett Peabody, a New York Corporation, sued Amigo, a Filipino Corp, for
cancellation of trademark.
The dispute revolved around Cluett’s GOLD TOE brand for socks, its Linenized
copyright, and its logo, attached below. Amigo had been producing socks under the
GOLD TOP brand labeled Linenized for Extra Wear, with a dominant color white at the
center and a blackish brown background with a magnified design of the socks garter.
See below for how similar that is.
The Patent Office ruled in favor of Cluett.
CA reversed at first, but affirmed the Patent Office’s ruling on MR. Hence this petition
for review.
Issues:
1. WON Amigo was the first actual user of the trademark. (No)
2. WON the trademarks were confusingly similar (Yes)
3. WON Cluett had exclusive right to the trademark despite absence of actual
use in the Philippines. (Yes)
Ratio:
1. Contrary to Amigo’s claims, there was sufficient evidence that Cluett used
Gold Toe before Amigo did. The evidence consisted of the ff. Bureau of
Patents registrations:
a. March 16, 1954, Gold Toe
b. Feb. 1, 1952, Representation of a Sock in a Magnifiying Glass
c. Jan. 20, 1932, The Gold Toe Presentation, and
d. Feb. 28, 1952, Linenized.
These certificates of registration of trademarks are prima facie evidence of
ownership of those marks., the dates of appropriation and the validity of
other pertinent facts stated therein, in accordance with Sec. 20 of RA 166.
On the other hand, Amigo failed to present proof of the date of the
alleged first use of its Gold Top mark and device. Thus, no finding could be
made to that effect.
 Further, Amigo only registered its trademark with the supplemental
register, which, as held in La Chemise Lacoste, gives no presumption of
ownership of the trademark.
As to the dates of registration, they’re only different because each of
the marks had different dates of first use.
In conclusion, the Court upheld the findings of the Bureau of
patents, invoking the doctrine of expertise of administrative agencies over
matters falling under their jurisdiction.
2. The trademarks are similar. While, concededly, Amigo was correct that mere
similarity in sound does not by itself create confusion, the Bureau of Patents
did not rely on the “idem sonans” test.
Rather, the Bureau looked at the drawings and labels on file in
determining that the Gold Top mark and devices were combinations of Cluett’s
trademarks, in addition to the idem sonans test and determination that the marks
sounded similar. Clearly then, the Bureau used the Holistic test
Emerald Garment v. CA gave us the 2 tests in determining whether
trademarks are confusingly similar, namely the Dominancy Test and the Holistic
Test.
As the name implies, the Dominancy Test focuses on the similarity
of the prevalent features of the competing trademarks which might cause
confusion or deception, and thus infringement.
In contrast, the holistic test mandates that the entirety of the marks
in question must be considered in determining confusing similarity
In any case, an application of either of these tests would lead to the
same conclusion that the marks are confusingly similar. Under the dominancy
test, there are definitely a lot of similiarities, e..g. the gold checkered lines against
a black background, and a representation of a sock with a magnifying glass, a
man’s foot wearing a sock and the word linenized on the label.
Applying the holistic test, when compared, the features of the
trademark are strikingly similar. The overall impression is that the two products
are deceptively and confusingly similar to one aother.
3. As Cluett had already registered its trademarks, there was already a prima
facie presumption of, among others, the date of first use.
Petition denied. CA affirmed.
BIRKENSTOCK v.PHILIPPINE SHOE EXPO MARKETING CORPORATION
Birkenstock Orthopaedie GMBH (Birkenstock Orthopaedie) applied for the trademark
registration of “BIRKENSTOCK” with the IPO. Philippine Shoe Expo opposed the application
on account of prior use for more than 16 years and registration of the mark “BIRKENSTOCK
AND DEVICE”. The Bureau of legal Affairs (BLA) sustained the opposition because: (i) the
competing marks are confusingly similar and are used on the same and related goods; (ii)
Birkenstock Orthopaedie failed to prove actual use of the mark in trade and business in the
Philippines; (iii) prior right over the mark was not lost even though the registration of
“BIRKENSTOCK AND DEVICE” was cancelled, as there was proof of the mark’s continuous
and uninterrupted use in commerce in the Philippines; and (iv) “BIRKENSTOCK” is not well -
known in the Philippines and internationally. The IPO Director General set aside the BLA’s
ruling. The IPO Director General found Birkenstock Orthopaedie to be the true and lawful
owner and prior user of the “BIRKENSTOCK” marks. The IPO Director General further held
that “BIRKENSTOCK AND DEVICE” is no longer an impediment to the registration of
“BIRKENSTOCK” as the former’s registration had been cancelled on account of the
registrant’s failure to file the 10th year Declaration of Use. The Court of Appeals reinstated
the decision of the BLA.
The Supreme Court ruled in favor of Birkenstock Orthopaedie for the following reasons: (i)
under the former trademark law, Republic Act 166, failure to file the Declaration of Use
results in the automatic cancellation of the trademark which in turn is tantamount to the
abandonment or withdrawal of the registrant’s right or interest over the trade mark.
Applying this rule, the registrant is deemed to have abandoned its right or interest over the
mark “BIRKENSTOCK AND DEVICE” on account of its failure to file the 10th year
Declaration of Use; and (ii) Birkenstock Orthopaedie proved its true and lawful ownership of
the mark “Birkenstock”. Evidence was submitted on (i) the use of the mark in Europe since
1774, when its inventor, Johann Birkenstock, used the mark on his line of quality footwear,
which use was continued by numerous generations of his kin; and (ii) the worldwide
registration of the mark “BIRKENSTOCK”. The Supreme Court did not find credible the
evidence of Philippine Shoe Expo as it was able to submit only copies of sales invoices and
advertisements, which showed merely its transactions involving the same. The Supreme
Court found the registration of “BIRKENSTOCK AND DEVICE” to have been done in bad
faith and found it highly incredible that Philippine Shoe Expo came up on its own with the
mark “BIRKENSTOCK”, obviously of German origin and a highly distinct and arbitrary mark.
The Supreme Court pointed out that Philippine Shoe Expo obviously knew of the existence
of “BIRKENSTOCK” and its use by Birkenstock Orthopaedie and that it clearly intended to
take advantage of the goodwill generated by the “BIRKENSTOCK” mark.
Finally, the Supreme Court reiterated the principle that registration of the trademark merely
creates a prima facie presumption of ownership which yields to superior evidence of actual
and real ownership of a trademark. In the words of the Supreme Court:
Clearly, it is not the application or registration of a trademark that vests ownership thereof,
but it is the ownership of a trademark that confers the right to register the same. A
trademark is an industrial property over which its owner is entitled to property rightswhich
cannot be appropriated by unscrupulous entities that, in one way or another, happen to
register such trademark ahead of its true and lawful owner. The presumption of ownership
accorded to a registrant must then necessarily yield to superior evidence of actual and real
ownership of a trademark.
MIRPURI vs. CA
Facts: In 1970, Escobar filed an application with the Bureau of Patents for the
registration of the trademark “Barbizon” for use in horsiers and ladies undergarments
(IPC No. 686). Private respondent reported Barbizon Corporation, a corporation
organized and doing business under the laws of New York, USA, opposed the
application. It was alleged that its trademark is confusingly similar with that of Escobar
and that the registration of the said trademark will cause damage to its business
reputation and goodwill. In 1974, the Director of Patents gave due course to the
application. Escobar later assigned all his rights and interest over the trademark to
petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the
trademark required under the Philippine Trademark Law. Due to this failure, the
Bureau cancelled Escobar’s certificate of registration. In 1981, Escobar and petitioner
separately filed this application for registration of the same trademark. (IPC 2049).
Private respondent opposed again. This time it alleged (1) that the said trademark was
registered with the US Patent Office; (2) that it is entitled to protection as well-known
mark under Article 6 bis of the Paris Convention, EO 913 and the two Memoranda of
the Minister of Trade and Industry and (3) that its use on the same class of goods
amounts to a violation of the Trademark Law and Art. 189 of the RPC. Petitioner raised
the defense of Res Judicata.
Issue: One of the requisites of res judicata is identical causes of action. Do IPC No.
686 and IPC No. 2049 involve the same cause of action?
Held: No. The issue of ownership of the trademark was not raised in IPC 686. IPC
2049 raised the issue of ownership, the first registration and use of the trademark in
the US and other countries, and the international recognition of the trademark
established by extensive use and advertisement of respondents products for over 40
years here and abroad. These are different from the issues of confessing similarity and
damage in IPC 686. The issue of prior use may have been raised in IPC 686 but this
claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems from
the respondents claims originator of the word and symbol “Barbizon”, as the first and
registered user of the mark attached to its products which have been sold and
advertised would arise for a considerable number of years prior to petitioner’s first
application. Indeed, these are substantial allegations that raised new issues and
necessarily gave respondents a new cause of action.
Moreover, the cancellation of petitioner’s certificate registration for failure to file the
affidavit of use arose after IPC 686. This gave respondent another cause to oppose
the second application.
It is also to be noted that the oppositions in the first and second cases are based on
different laws. Causes of action which are distinct and independent from each other,
although out of the same contract, transaction, or state of facts, may be sued on
separately, recovery on one being no bar to subsequent actions on others. The mere
fact that the same relief is sought in the subsequent action will not render the
judgment in the prior action operating as res judicata, such as where the actions are
based on different statutes.
LA CHEMISE LACOSTE VS. FERNANDEZ
Facts: La chemise Lacoste is a French corporation and the actual owner of the
trademarks “Lacoste,” “Chemise Lacoste,” “Crocodile Device” and a composite mark
consisting of the word “Lacoste” and a representation of a crocodile/alligator, used on
clothings and other goods sold in many parts of the world and which has been
marketed in the Philippines (notably by Rustans) since 1964. In 1975 and 1977,
Hemandas Q. Co. was issued certificate of registration for the trademark “Chemise
Lacoste and Q Crocodile Device” both in the supplemental and Principal Registry. In
1980, La Chemise Lacoste SA filed for the registration of the “Crocodile device” and
“Lacoste”. Games and Garments (Gobindram Hemandas, assignee of Hemandas
Q.Co.) opposed the registration of “Lacoste.”
In 1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of
unfair competition committed by Hemandas and requesting the agency’s assistance. A
search warrant was issued by the trial court. Various goods and articles were seized
upon the execution of the warrants. Hemandas filed motion to quash the warrants,
which the court granted. The search warrants were recalled, and the goods ordered
to be returned. La Chemise Lacoste filed a petition for certiorari.
Issue: Whether the proceedings before the patent office is a prejudicial question that
need to be resolved before the criminal action for unfair competition may be pursued.
Held: No. The proceedings pending before the Patent Office do not partake of the
nature of a prejudicial question which must first be definitely resolved. The case
which suspends the criminal action must be a civil case, not a mere administrative
case, which is determinative of the innocence or guilt of the accused. The issue
whether a trademark used is different from another’s trademark is a matter of defense
and will be better resolved in the criminal proceedings before a court of justice instead
of raising it as a preliminary matter in an administrative proceeding.
Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back
even before 1964, Hemandas cannot be allowed to continue the trademark “Lacoste”
for the reason that he was the first registrant in the Supplemental Register of a
trademark used in international commerce. Registration in the Supplemental Register
cannot be given a posture as if the registration is in the Principal Register. It must be
noted that one may be declared an unfair competitor even if his competing trademark
is registered. La Chemise Lacoste is world renowned mark, and by virtue of the 20
November 1980 Memorandum of the Minister of Trade to the director of patents in
compliance with the Paris Convention for the protection of industrial property,
effectively cancels the registration of contrary claimants to the enumerated marks,
which include “Lacoste"
FREDCO MANUFACTURING CORPORATION V. PRESIDENT AND FELLOWS OF
HARVARD COLLEGE
Facts: Fredco Manufacturing Corporation (Fredco) filed before the Bureau of Legal
Affairs of the Philippine Intellectual Property Office a Petition for Cancellation of
Registration No. 56561 issued to President and Fellows of Harvard College (Harvard
University) for the mark “Harvard Veritas Shield Symbol” under classes 16, 18, 21, 25
and 28.
Fredco claimed that Harvard University had no right to register the mark in class 25,
since its Philippine registration was based on a foreign registration. Thus, Harvard
University could not have been considered as a prior adopter and user of the mark in
the Philippines.
Fredco explained that the mark was first used in the Philippines by its predecessor-in-
interest New York Garments as early as 1982, and a certificate of registration was
issued in 1988 for goods under class 25. Although the registration was cancelled for
the non-filing of an affidavit of use, the fact remained that the registration preceded
Harvard University’s use of the subject mark in the Philippines.
Harvard University, on the other hand claimed that the name and mark “Harvard” was
adopted in 1639 as the name of Harvard College of Cambridge, Massachusetts, USA.
The marks “Harvard” and “Harvard Veritas Shield Symbol,” had been used in
commerce since 1872, and was registered in more than 50 countries.
The Bureau of Legal Affairs ruled in favor of Fredco and ordered the cancellation of
Registration No. 56561. It found Fredco to be the prior user and adopter of the mark
“Harvard” in the Philippines. On appeal, the Office of the Director General of the
Intellectual Property Office reversed the BLA ruling on the ground that more than the
use of the trademark in the Philippines, the applicant must be the owner of the mark
sought to be registered. Fredco, not being the owner of the mark, had no right to
register it.
The Court Appeals affirmed the decision of the Office of the Director General. Fredco
appealed the decision with the Supreme Court. In its appeal, Fredco insisted that the
date of actual use in the Philippines should prevail on the issue of who had a better
right to the mark.
Ruling: Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before
a trademark can be registered, it must have been actually used in commerce for not
less than two months in the Philippines prior to the filing of an application for its
registration. While Harvard University had actual prior use of its marks abroad for a
long time, it did not have actual prior use in the Philippines of the mark "Harvard
Veritas Shield Symbol" before its application for registration of the mark "Harvard"
with the then Philippine Patents Office. However, Harvard University's registration of
the name "Harvard" is based on home registration which is allowed under Section 37
of R.A. No. 166. As pointed out by Harvard University in its Comment:
Although Section 2 of the Trademark law (R.A. 166) requires for the registration of
trademark that the applicant thereof must prove that the same has been actually in
use in commerce or services for not less than two (2) months in the Philippines before
the application for registration is filed, where the trademark sought to be registered
has already been registered in a foreign country that is a member of the Paris
Convention, the requirement of proof of use in the commerce in the Philippines for the
said period is not necessary. An applicant for registration based on home certificate of
registration need not even have used the mark or trade name in this country.”
“In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), "[m]arks
registered under Republic Act No. 166 shall remain in force but shall be deemed to
have been granted under this Act x x x," which does not require actual prior use of the
mark in the Philippines. Since the mark "Harvard Veritas Shield Symbol" is now
deemed granted under R.A. No. 8293, any alleged defect arising from the absence of
actual prior use in the Philippines has been cured by Section 239.2.”
The Supreme Court further ruled that Harvard University is entitled to protection in the
Philippines of its trade name “Harvard” even without registration of such trade name in
the Philippines. It explained:
“There is no question then, and this Court so declares, that "Harvard" is a well-known
name and mark not only in the United States but also internationally, including the
Philippines. The mark "Harvard" is rated as one of the most famous marks in the
world. It has been registered in at least 50 countries. It has been used and promoted
extensively in numerous publications worldwide. It has established a considerable
goodwill worldwide since the founding of Harvard University more than 350 years ago.
It is easily recognizable as the trade name and mark of Harvard University of
Cambridge, Massachusetts, U.S.A., internationally known as one of the leading
educational institutions in the world. As such, even before Harvard University applied
for registration of the mark "Harvard" in the Philippines, the mark was already
protected under Article 6bis and Article 8 of the Paris Convention.”
ANA L. ANG, vs. TEODORO
Facts: Toribio Teodoro, herein respondent, has continuously used “Ang Tibay,” both
as trademark and as a tradename, in the manufacture and sale of slippers, shoes, and
indoor baseballs since 1910. From the time he started his business until 1938, his
business expanded to such proportions that his gross sales increased to millions. On
the other hand, Ana Ang herein petitioner, established a factory to manufacture pants
and shirts with a brand name “Ang Tibay.” She likewise registered the name
trademark “Ang Tibay” for the said articles. Teodoro filed a complaint against Ana Ang
for using the same trademark that he has been using since 1910. The trial judge
dismissed the complaint on the grounds that the two trademarks were dissimilar and
were used on different and non-competing goods; and that there has been no
exclusive of the trademark by Teodoro. Not satisfied with the judgement of the lower
court Teodoro appealed where the judgment of the trial court was reversed and
ordered for the cancellation of the registration of the trademark “Ang Tibay” in favour
of Ana Ang on the grounds that by uninterrupted and exclusive use of such trademark
by Teodoro has acquired a secondary meaning and that the goods or articles on
which the two trademarks were similar and belong to the same class. Hence, this
present petition for certiorari wherein the petitioner contended that the phrase “Ang
Tibay” is merely a descriptive term which may not bar its registration as a trademark
and that such phrase did not acquire a secondary meaning which the respondent may
have an exclusive use of such trademark.
Issue: Whether or not Ana Ang can register the trademark “Ang Tibay for her
products pants and shirts.
Held: No. “Ang Tibay” is a descriptive term within the meaning of the Trademark Law
but rather a fanciful or coined phrase which may properly and legally appropriated as
a trademark or trade name. The Court finds that “Ang Tibay,” as used by the
respondent to designate his wares, had exactly performed that function for 22 years
before the petitioner adopted it as a trademark in her own business. Ang Tibay shoes
and slippers are, by association, known throughout the Philippines as products of the
Ang Tibay factory owned and operated by the respondent Toribio Teodoro.
Petitioner contend that the appellate court erred in holding that the phrase
“Ang Tibay” has acquired a secondary meaning which gives the respondent a right to
exclusive appropriation of such phrase. The Court disagrees with the petitioner. The
doctrine of secondary meaning suggests that a word or phrase originally incapable of
exclusive appropriation with reference to an article of the market, because
geographically or otherwise, might nevertheless have been used so long and so
exclusively by one producer with reference to his article that, in that trade and to that
branch of the purchasing public, the word or phrase has come to mean that the article
was his product. The application of the secondary meaning made by the Court of
Appeals could be fully sustained because by the respondent’s long and exclusive use
of said phrase with reference to his products and his business, it has acquired a
proprietary connotation.
Judgement of the Court of Appeals is affirmed.
STERLING PRODUCTS VS. FARBENFABRIKEN BAYER
Facts: The Bayer Cross in circle “trademark was registered in Germany in 1904 to
Farbenfabriken vorm. Friedr. Bayer (FFB), successor to the original Friedr. Bauyer et.
Comp., and predecessor to Farbenfabriken Bayer aktiengessel craft (FB2). The “Bayer,
and “Bayer Cross in circle” trademarks were acquired by sterling Drug Inc. when it
acquired FFB’s subsidiary Bayer Co. of New York as a result of the sequestration of its
assets by the US Alien Property Custodian during World War I. Bayer products have
been known in Philippines by the close of the 19th century. Sterling Drugs, Inc.,
however, owns the trademarks “Bayer” in relation to medicine. FBA attempted to
register its chemical products with the “Bayer Cross in circle” trademarks. Sterling
Products International and FBA seek to exclude each other from use of the trademarks
in the Philippines. The trial court sustained SPI’s right to use the Bayer trademark for
medicines and directed FBA to add distinctive word(s) in their mark to indicate their
products come from Germany.” Both appealed.
Issue: Whether SPI’s ownership of the trademarks extends to products not related to
medicine.
Held: No. SPI’s certificates of registration as to the Bayer trademarks registered in the
Philippines cover
medicines only. Nothing in the certificates include chemicals or insecticides. SPI thus
may not claim “first
use” of the trademarks prior to the registrations thereof on any product other than
medicines. For if otherwise held, a situation may arise whereby an applicant may be
tempte3d 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.
Omnibus registration is not contemplated by the Trademark Law. The net result of the
decision is that SPI may hold on its Bayer trademark for medicines and FBA may
continue using the same trademarks for
insecticide and other chemicals, not medicine.
The formula fashioned by the lower court avoids the mischief of confusion of origin,
and does not visit FBA with reprobation and condemnation. A statement that its
product came from Germany anyhow is but a statement of fact.
MIGHTY CORPORATION V. E&J GALLO
E. & J. Gallo Winery, producer of wines and brandy products which is based in
California, U.S.A., registered its GALLO wine trademark in the Philippines in 1971. On
the other hand, Mighty Corporation and La Campana Fabrica de Tabaco, Inc., together
with their affiliate, Tobacco Industries of the Philippines, were engaged in the
manufacture and distribution of tobacco products for which they have been using the
GALLO cigarette trademark since 1973.
On 14 July 2004, the Supreme Court1 ruled that Mighty Corporation, et al. are not
liable for trademark infringement or unfair competition and reaffirmed the doctrine
that the use of an identical mark does not, by itself, lead to a legal conclusion that
there is trademark infringement. A crucial issue in any trademark infringement case is
the likelihood of confusion, mistake or deceit as to the identity, source or origin of the
goods, or identity of the business as a consequence of using a certain mark.
According to the High Court, there are two types of confusion in trademark
infringement, namely, "confusion of goods" and "confusion of business." Confusion of
goods is evident where the litigants are actually in competition; but confusion of
business may arise between non-competing interests as well. Thus, there is likelihood
of confusion when, although the goods of the parties are different, they are
so related that the defendant's product can reasonably be assumed to originate from
the plaintiff.
The GALLO trademark registration certificates in the Philippines and in other countries
expressly state that they cover wines only, without any evidence or indication that
registrant Gallo Winery expanded or intended to expand its business to cigarettes.
In determining likelihood of confusion, the Supreme Court considered the following
factors: [a] the resemblance between the trademarks; [b] the similarity of the goods
to which the trademarks are attached; [c] the likely effect on the purchaser; and [d]
the registrant's express or implied consent and other fair and equitable considerations.
In comparing the resemblance or colorable imitation of marks, various elements were
considered, such as the dominant color, style, size, form, meaning of letters, words,
designs and emblems used, the likelihood of deception of the mark or name's
tendency to confuse, and the commercial impression likely to be conveyed by the
trademarks if used in conjunction with the respective goods of the parties.
The Supreme Court found that the similarity between the parties' GALLO trademarks,
i.e., the use of the word "GALLO" - a family surname for Gallo Winery's wines and a
Spanish word for "rooster" for Mighty Corporation, et al.'s cigarettes, was overridden
by their different features like color schemes, art works and other markings of both
products.
In determining whether goods are related the following factors apply:
a. the business (and its location) to which the goods belong;
b. the class of product to which the goods belong;
c. the product's quality, quantity, or size, including the nature of the
package, wrapper or container;
d. the nature and cost of the articles;
e. the descriptive properties, physical attributes or essential characteristics
with reference to their form, composition, texture or quality;
f. the purpose of the goods;
g. whether the article is bought for immediate consumption, that is, day-to-
day household items;
h. the fields of manufacture;
i. the conditions under which the article is usually purchased and
j. the channels of trade through which the goods flow, how they are
distributed, marketed, displayed and sold.
As each trademark infringement case presents its own unique set of facts, no single
factor is preeminent. A very important circumstance is whether there exists likelihood
that an appreciable number of "ordinarily prudent purchasers" will be misled, or simply
confused, as to the source of the goods in question. The "purchaser" is not the
"completely unwary consumer" but is the "ordinarily intelligent buyer" who is
accustomed to buy, and therefore to some extent familiar with, the goods in question.
The Supreme Court distinguished between GALLO wines and GALLO cigarettes as
follows: (1) wines are bottled and consumed by drinking while cigarettes are packed in
cartons or packages and smoked; (2) there is a whale of a difference between their
descriptive properties, physical attributes or essential characteristics like form,
composition, texture and quality; (3) GALLO cigarettes are inexpensive items that
appeal only to simple folks like farmers, fishermen, laborers and other low-income
workers while GALLO wines are patronized by middle-to-high-income earners; and (4)
GALLO cigarettes are distributed through sidewalk vendors, sari-sari stores and
grocery stores in rural areas, mainly in Misamis Oriental, Pangasinan, Bohol, and Cebu,
whereas GALLO wines are imported and exclusively distributed by a local entity and
sold in hotels, expensive bars and restaurants, and high-end grocery stores and
supermarkets.
Based on these distinctions, the High Tribunal declared that wines and cigarettes are
non-competing and totally unrelated products which are not likely to cause confusion
vis-à-vis the goods or business of Gallo Winery and Mighty Corporation, et al. Thus,
even though similar marks are used, there is no trademark infringement if the public
does not expect the plaintiff to make or sell the same class of goods as those made or
sold by the defendant.
ETEPHA V. DIRECTOR OF PATENTS
Facts: Respondent Westmont Pharmaceuticals, an American corporation, sought
registration of trademark ‘Atussin’ placed on its medicinal preparation for the
treatment of coughs. Petitioner Etepha, owner of the trademark ‘Pertussin’ placed also
on preparation for cough treatment, objected claiming that it will be damaged since
the 2 marks are confusingly similar. The Director of Patents gave due course to the
application.
Issue: Whether or not petitioner’s trademark is registrable.
Ruling: YES. That the word “tussin” figures as a component of both trademarks is
nothing to wonder at. The Director of Patents aptly observes that it is “the common
practice in the drug and pharmaceutical industries to ‘fabricate’ marks by using
syllables or words suggestive of the ailments for which they are intended and adding
thereto distinctive prefixes or suffixes”. And appropriately to be considered now is the
fact that, concededly, the “tussin” (in Pertussin and Atussin) was derived from the
Latin root-word “tussis” meaning cough.
“Tussin” is merely descriptive; it is generic; it furnishes to the buyer no indication of
the origin of the goods; it is open for appropriation by anyone. It is accordingly barred
from registration as trademark. With jurisprudence holding the line, we feel safe in
making the statement that any other conclusion would result in “appellant having
practically a monopoly” of the word “tussin” in a trademark. While “tussin” by itself
cannot thus be used exclusively to identify one’s goods, it may properly become the
subject of a trademark “by combination with another word or phrase”. And this union
of words is reflected in petitioner’s Pertussin and respondent’s Atussin, the first with
prefix “Per” and the second with Prefix “A.”
EMERALD GARMENT V. CA
In 1981, H.D Lee Co., Inc., a foreign company, filed an opposition against the
trademark application of Emerald Garment. Allegedly, the trademark “Stylistic Mr. Lee”
sought to be applied for by Emerald Garment is too confusingly similar with the brand
“Lee” which has for its variations “Lee Riders”, “Lee Sures”, and “Lee Leens”. The
Director of Patents as well as the Court of Appeals ruled in favor of H.D. Lee Co.
ISSUE: Whether or not the decision of the Court of Appeals is correct.
HELD: No. The Supreme Court considered that the trademarks involved as a whole
and ruled that Emerald Garment’s “STYLISTIC MR. LEE” is not confusingly similar to
H.D. Lee’s “LEE” trademark. The trademark “Stylistic Mr. Lee”, although on its label
the word “LEE” is prominent, the trademark should be considered as a whole and not
piecemeal. The dissimilarities between the two marks become conspicuous, noticeable
and substantial enough to matter especially in the light of the following variables that
must be factored in.
First, the products involved in the case at bar are, in the main, various kinds of jeans.
These are not your ordinary household items like catsup, soysauce or soap which are
of minimal cost. Maong pants or jeans are not inexpensive. Accordingly, the casual
buyer is predisposed to be more cautious and discriminating in and would prefer to
mull over his purchase. Confusion and deception, then, is less likely.
Second, like his beer, the average Filipino consumer generally buys his jeans by brand.
He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler
or even an Armani. He is, therefore, more or less knowledgeable and familiar with his
preference and will not easily be distracted.
Finally, in line with the foregoing discussions, more credit should be given to the
“ordinary purchaser.” Cast in this particular controversy, the ordinary purchaser is not
the “completely unwary consumer” but is the “ordinarily intelligent buyer” considering
the type of product involved.
There is no cause for the Court of Appeal’s apprehension that Emerald Garment’s
products might be mistaken as “another variation or line of garments under H.D.
Lee’s ‘LEE’ trademark”. As one would readily observe, H.D. Lee’s variation follows a
standard format “LEERIDERS,” “LEESURES” and “LEELEENS.” It is, therefore,
improbable that the public would immediately and naturally conclude that petitioner’s
“STYLISTIC MR. LEE” is but another variation under H.D. Lee’s “LEE” mark.
The issue of confusing similarity between trademarks is resolved by considering the
distinct characteristics of each case. In the present controversy, taking into account
these unique factors, we conclude that the similarities in the trademarks in question
are not sufficient as to likely cause deception and confusion tantamount to
infringement.
Further, H.D. Lee failed to prove in court that it had prior actual commercial use of its
“LEE” trademark in the Philippines. H.D. Lee did show certificates of registrations for
its brand but registration is not sufficient. Actual use in commerce in the Philippines is
an essential prerequisite for the acquisition of ownership over a trademark pursuant to
Sec. 2 and 2-A of the Philippine Trademark Law (R.A. No. 166).
A rule widely accepted and firmly entrenched because it has come down through the
years is that actual use in commerce or business is a prerequisite in the acquisition of
the right of ownership over a trademark.
It would seem quite clear that adoption alone of a trademark would not give exclusive
right thereto. Such right “grows out of their actual use.” Adoption is not use. One may
make advertisements, issue circulars, give out price lists on certain goods; but these
alone would not give exclusive right of use. For trademark is a creation of use. The
underlying reason for all these is that purchasers have come to understand the mark
as indicating the origin of the wares. Flowing from this is the trader’s right to
protection in the trade he has built up and the goodwill he has accumulated from use
of the trademark. Registration of a trademark, of course, has value: it is an
administrative act declaratory of a pre-existing right. Registration does not, however,
perfect a trademark right.
MCDONALD'S VS. L.C. BIG MAK BURGER
FACTS: Petitioner, McDonalds Corporation (McDonalds) is a corporation organized
under the laws of Delaware, US. It operates, by itself or through its franchisees, a
global chain of fast food restaurants. It owns a family of marks including the “Big Mac”
mark for its “double decker hamburger sandwich.” McDonalds registered his trademark
with the US trademark registry sometime 1979. Based on home registration,
McDonalds applied for registration of the same mark in principal registry of the then
Philippine Bureau of Patents, Trademark and Technology (PBPTT), now the Intellectual
Property Office (IPO). Pending approval of this application, McDonalds introduced its
“Big Mac” hamburger sandwiches in the Philippine market in 1981. On 1985, the
PBPTT, allowed registration of the “Big Mac” mark in the Philippine registry based on
its home registration in the US.
Like its other marks, McDonalds display the Big Mac mark in its item and paraphernalia
in its restaurant, and its outdoor and indoor signages. From 1982 to 1990, McDonalds
spent millions in advertisement for big mac hamburger sandwich alone.
Petitioner McGeorge Food Industries (Petitioner McGeorge) a domestic corporation, is
McDonalds Philippine franchisee.
Respondent, LC Big Mak burger inc. is a domestic corporation which operates fast food
outlets and snack vans in metro manila and nearby provinces. Respondents
corporation’s menu includes hamburger sandwiches and other food items. Respondent
Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo, Araceli Aycardo,
and Grace Huero are the incoporators, stockholders and directors of respondent
corporation.
On 1988, respondent corporation applied with the PBPTT for the registration of the Big
Mak mark for its hamburger sandwiches. McDonalds opposed respondent corporation’s
application on the ground that Big Mak was colorable imitation of its registered Big
Mac mark for the same food products. McDonalds also informed respondent Francis
Dy, the chairman of the board of directors of the respondent corporation, of its
exclusive right to the Big Mac mark and requested him to desist from using the Big
Mak mark or any similar mark.
Having received no reply from respondent Dy, petitioners sued respondents in the RTC
Makati for trademark infringement and unfair competition. RTC issued a temporary
restraining order against respondents enjoinining them from using the Big Mak mark in
the operation of their business in the NCR. On 1990, RTC issued a writ of preliminary
injunction replacing the TRO.
In their answer, respondents admitted that they have been using the Big Mak burger
for their fast food business. Respondents claimed, however, that McDonalds does not
have an exclusive right to the Big Mac mark or to any other similar marks.
Respondents point out that the Isaiyas group of corporations registered the same
mark for hamburger sandwiches with the PBOTT on 1979. One Rodolfo Topacio
similarly registered the same mark on 1983, prior to McDonalds registration on
1985. Alternatively, respondents claimed that they are not liable for trademark
infringement and unfair competition, as the Big Mak mark they sought to register does
not constitute a colorable imitation of the Big Mac mark. Respondents asserted that
they did not fraudulently pass off their hamburger sandwiches as those of petitioners
Big Mak hamburgers. Respondents sought damages in their counterclaim.
In their reply, petitioners denied respondents claim that McDonalds is not the exclusive
owner of the Big Mac mark. Petitioners asserted that while the Isaiyas group and
Topacio did register the Big Mac mark ahead of them, the Isaiyas group did so only in
the supplemental register of PBPTT and such registration does not provide any
protection. McDonalds disclosed that it had acquired Topacio’s rights to his
registration in a deed of assignment.
ISSUE: Did the same acts of defendants in using the name Big Mak as a trademark
or trade name in their signages, or in causing the name Big Mak to be printed on the
wrappers and containers of their food products also constitute an act of unfair
competition under section 29 of the trademark law?
RULING: Yes. The provision of the law concerning unfair competition is broader and
more inclusive than that the law concerning the infringement of trademark, which is
more limited range, but within its narrower range recognizes a more exclusive right
derived by the adoption and registration of the trademark by the person whose goods
or services are first associated therewith. Notwithstanding the distinction between an
action for trademark infringement and an action for unfair competition, however, the
law extends substantially the same relief to the injured party for both cases.
Any conduct may be said to constitute unfair competition if the effect is to
pass off on the public the goods of one man as the goods of another. The
choice of Big Mak as trade name by defendant corporation is not merely for
sentimental reasons but was clearly made to take advantage of the reputation,
popularity and the established goodwill of plaintiff McDonalds. For as stated in Section
29, a person is guilty of unfair competition who in selling his goods shall
give them the general appearance, of goods of another manufacturer or
dealer, either as goods themselves or in the wrapping of the packages in
which they are contained, or the devices or words thereon, or in any other
feature of their appearance, which would likely influence purchasers to
believe that the goods offered are those of a manufacturer or dealer other
than the actual manufacturer or dealer. Thus, plaintiffs have established their
valid cause of action against the defendants for trademark infringement and unfair
competition and for damages.
MCDO V. MACJOY
Since 1987, MacJoy Devices had been operating in Cebu. MacJoy is a fast food restaurant
which sells fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos,
sandwiches, halo-halo and steaks. In 1991, MacJoy filed its application for trademark before
the Intellectual Property Office (IPO). McDonald’s opposed the application as it alleged that
MacJoy closely resembles McDonald’s corporate logo such that when used on identical or
related goods, the trademark applied for would confuse or deceive purchasers into believing
that the goods originate from the same source or origin that the use and adoption in bad
faith of the “MacJoy and Device” mark would falsely tend to suggest a connection or
affiliation with McDonald’s restaurant services and food products, thus, constituting a fraud
upon the general public and further cause the dilution of the distinctiveness of McDonald’s
registered and internationally recognized McDonald’S marks to its prejudice and irreparable
damage.
The IPO ruled in favor of McDonald’s. MacJoy appealed before the Court of Appeals and the
latter ruled in favor of MacJoy. The Court of Appeals, in ruling over the case, actually used
the holistic test (which is a test commonly used in infringement cases). The holistic test
looks upon the visual comparisons between the two trademarks. In this case, the Court of
Appeals ruled that other than the letters “M” and “C” in the words MacJoy and McDonald’s,
there are no real similarities between the two trademarks. “MacJoy” is written in round
script while “McDonald’s” is written in thin gothic. “MacJoy” is accompanied by a picture of
a (cartoonish) chicken while “McDonald’s” is accompanied by the arches “M”. The color
schemes between the two are also different. “MacJoy” is in deep pink while “McDonald’s” is
in gold color.
ISSUE: Whether or not MacJoy infringed upon the trademark of McDonald’s.
HELD: Yes. The Supreme Court ruled that the proper test to be used is the dominancy test.
The dominancy test not only looks at the visual comparisons between two trademarks but
also the aural impressions created by the marks in the public mind as well as connotative
comparisons, giving little weight to factors like prices, quality, sales outlets and market
segments. In the case at bar, the Supreme Court ruled that “McDonald’s” and “MacJoy”
marks are confusingly similar with each other such that an ordinary purchaser can conclude
an association or relation between the marks. To begin with, both marks use the corporate
“M” design logo and the prefixes “Mc” and/or “Mac” as dominant features. The first letter
“M” in both marks puts emphasis on the prefixes “Mc” and/or “Mac” by the similar way in
which they are depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is
the prefix “Mc,” an abbreviation of “Mac,” which visually and aurally catches the attention of
the consuming public. Verily, the word “MACJOY” attracts attention the same way as did
“McDonalds,” “MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the
MCDONALD’S marks which all use the prefixes Mc and/or Mac. Besides and most
importantly, both trademarks are used in the sale of fastfood products.
Further, the owner of MacJoy provided little explanation why in all the available names for a
restaurant he chose the prefix “Mac” to be the dominant feature of the trademark. The
prefix “Mac” and “Macjoy” has no relation or similarity whatsoever to the name Scarlett Yu
Carcel, which is the name of the niece of MacJoy’s president whom he said was the basis of
the trademark MacJoy. By reason of the MacJoy’s implausible and insufficient explanation
as to how and why out of the many choices of words it could have used for its trade-name
and/or trademark, it chose the word “Macjoy,” the only logical conclusion deducible
therefrom is that the MacJoy would want to ride high on the established reputation and
goodwill of the McDonald’s marks, which, as applied to its restaurant business and food
products, is undoubtedly beyond question.
ASIA BREWERY v. SAN MIGUEL CORPORATION
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 been market. A decision was rendered
by the trial judge dismissing SMC’s complaint because ABI has not committed
trademark infringement or unfair competition against SMC for the reason that the
trademarks of each product has no significant similarity that would likely to cause
confusion or mistake or to deceive purchasers as to the source or origin of the beer in
question. SMC appealed to the Court of Appeals wherein the decision of the trial court
was reversed. Hence, this present petition for certiorari filed by ABI.
Issue: Whether or not ABI infringes SMC’s trademark: “San Miguel Pale Pilsen with
Rectangular Hops and Malt Design,” and thereby commits unfair competition against
the latter.
Held: No. There is absolutely no similarity in the dominant features of both
trademarks. Infringement is determined by the “test of dominancy” rather than by
differences in variations in the details of one trademark and of another. It has been
consistently held that the question of infringement of a trademark is to be determined
by the test of dominancy. Similarity in size, form and color, while relevant, is not
conclusive. 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. The question at issue in cases of
infringement of trademarks is whether the use of marks involved would be likely to
cause confusion or mistakes in the mind of the public or deceive purchasers.
In the case at bar, the trial court perceptively observed that the word “BEER”
does not appear in SMC’s trademark, just as the words “SAN MIGUEL” do not appear
in the ABI’s trademark. Hence, there is absolutely no similarity in the dominant
features of both trademarks. Neither in sound, spelling or appearance can BEER PALE
PILSEN be said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one who
purchases BEER PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE
PILSEN. No evidence whatsoever was presented by SMC proving otherwise.
DEL MONTE CORPORATION v. SUNSHINE SAUCE MANUFACTURING
INDUSTRIES
FACTS: Petitioner Del Monte Corporation (Del Monte), through its local distributor and
manufacturer, PhilPack filed an infringement of copyright complaint against
respondent Sunshine Sauce Manufacturing Industries (SSMI), also a maker of catsup
and other kitchen sauces. In its complaint, Del Monte alleged that SSMI are using
bottles and logos identical to the petitioner, to which is deceiving and misleading to
the public.
In its answer, Sunshine alleged that it had ceased to use the Del Monte bottle and that
its logo was substantially different from the Del Monte logo and would not confuse the
buying public to the detriment of the petitioners.
The Regional Trial Court of Makati dismissed the complaint. It held that there were
substantial differences between the logos or trademarks of the parties nor on the
continued use of Del Monte bottles. The decision was affirmed in toto by the Court of
Appeals.
ISSUE: Whether or not SSMI committed infringement against Del Monte in the use of
its logos and bottles.
HELD: Yes. In determining whether two trademarks are confusingly similar, the two
marks in their entirety as they appear in the respective labels must be considered in
relation to the goods to which they are attached; the discerning eye of the observer
must focus not only on the precognizant words but also on the other features
appearing on both labels. It has been correctly held that side-by-side comparison is
not the final test of similarity. In determining whether a trademark has been infringed,
we must consider the mark as a whole and not as dissected.
The Court is agreed that are indeed distinctions, but similarities holds a greater weight
in this case. The Sunshine label is a colorable imitation of the Del Monte trademark.
What is undeniable is the fact that when a manufacturer prepares to package his
product, he has before him a boundless choice of words, phrases, colors and symbols
sufficient to distinguish his product from the others. Sunshine chose, without a
reasonable explanation, to use the same colors and letters as those used by Del Monte
though the field of its selection was so broad, the inevitable conclusion is that it was
done deliberately to deceive.
With regard to the bottle use, Sunshine despite the many choices available to it and
notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was
embossed on the bottle, still opted to use the petitioners' bottle to market a product
which Philpack also produces. This clearly shows the private respondent's bad faith
and its intention to capitalize on the latter's reputation and goodwill and pass off its
own product as that of Del Monte.
SKECHERS, U.S.A., INC. vs. INTER PACIFIC INDUSTRIAL TRADING CORP.
Petitioner’s 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
petitioner’s "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 petitioner’s "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.
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 petitioner’s stylized
"S" is within an oval design, to this Court’s 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 petitioner’s
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 respondent’s shoes contain some
dissimilarities with petitioner’s shoes, this Court cannot close its eye to the fact that for
all intents and purpose, respondent had deliberately attempted to copy petitioner’s
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.

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
PROSOURCE INTERNATIONAL, INC. v. HORPHAG RESEARCH MANAGEMENT
FACTS:Respondent is a corporation and owner of trademark PYCNOGENOL, a food.
Respondent later discovered that petitioner was also distributing a similar food
supplement using the mark PCO-GENOLS since 1996. This prompted respondent to
demand that petitioner cease and desist from using the aforesaid mark.
Respondent filed a Complaint for Infringement of Trademark with Prayer for
Preliminary Injunction against petitioner, in using the name PCO-GENOLS for being
confusingly similar. Petitioner appealed otherwise.
The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-
GENOLS have the same suffix "GENOL" which appears to be merely descriptive and
thus open for trademark registration by combining it with other words and concluded
that the marks, when read, sound similar, and thus confusingly similar especially since
they both refer to food supplements.
SC applied the Dominancy Test.Both the words have the same suffix "GENOL" which
on evidence, appears to be merely descriptive and furnish no indication of the origin of
the article and hence, open for trademark registration by the plaintiff through
combination with another word or phrase. 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.

On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate
court explained that under the Dominancy or the Holistic Test, PCO-GENOLS is
deceptively similar to PYCNOGENOL.

ISSUE: Whether the names are confusingly similar.

RULING: Yes. There is confusing similarity and the petition is denied. Jurisprudence
developed two test to prove such.

The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion and deception, thus constituting
infringement. If the competing trademark contains the main, essential and dominant
features of another, and confusion or deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor is it necessary that the infringing
label should suggest an effort to imitate. The question is whether the use of the marks
involved is likely to cause confusion or mistake in the mind of the public or to deceive
purchasers. Courts will consider more the aural and visual impressions created by the
marks in the public mind, giving little weight to factors like prices, quality, sales
outlets, and market segments.

The Holistic Test entails a consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity. Not
only on the predominant words should be the focus 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.
FRUIT OF THE LOOM, INC v. CA BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYADANG

Facts: Fruit of the Loom, herein petitioner, is a corporation duly organized and
existing under the laws of the State of Rhode Island, USA, and a registrant of a
trademark Fruit of the Loom in the Philippine Patent Office. On the other hand, herein
private respondent, General Garments Corporation, is a domestic corporation and a
registrant of trademark Fruit of Eve. Both the petitioner and the respondent were
engaged in the selling and manufacture of garments and other textile products.
Petitioner filed before the lower court a complaint against the respondent alleging that
the latter’s trademark is confusingly similar to its trademark because of the word
“FRUIT” found in the respondent’s trademark and the big apple appearing in the
latter’s hang tag was a colourable imitation of the its hang tag. The lower court
rendered a judgment in favour of the petitioner and ordered the cancellation of the
registration of the respondent. On appeal, the appellate court reversed the trial
court’s decision. Hence, petitioner filed this petition for review on certiorari alleging
that the word “FRUIT” being the prominent word appearing in both of its trademark
and that of the respondent’s would lead the purchasers to believe that the latter’s
products are those of the petitioner.
Issue: Whether or not private respondent’s trademark FRUIT FOR EVE and its hang
tag are confusingly similar to petitioner’s trademark FRUIT OF THE LOOM and its hang
tag so as to constitute and infringement of the latter’s trademark rights and justify the
cancellation of the former.
FACTS: Abyadang filed a trademark application with the IPO for the mark "NS D-10
PLUS" for use in connection with Fungicide. Berris Agricultural Co., Inc. filed an
opposition against the trademark citing that it is confusingly similar with their
trademark, "D-10 80 WP" which is also used for Fungicide also with the same active
ingredient.
The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in favor of
Abyadang.
ISSUE: Whether there is confusing similarity between the trademarks.
RULING: Yes. The SC found that both products have the component D-10 as their
ingredient and that it is the dominant feature in both their marks. Applying the
Dominancy Test, Abyadang's product is similar to Berris' and that confusion may likely
to occur especially that both in the same type of goods. Also using the Holistic Test, it
was more obvious that there is likelihood of confusion in their packaging and color
schemes of the marks. The SC states that buyers would think that Abyadang's product
is an upgrade of Berris'.

Held: No. The Court believes that there is no infringement of trademark in this case.
There is infringement of trademark when the use of the mark involved would likely to
cause confusion or mistake in the mind of the public or to deceive purchasers as to the
origin or source of the commodity. 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 on the other features appearing in both labels in order
that he may draw his conclusion whether one is confusingly similar to the other.

In the case at bar, the trademarks Fruit of the Loom and Fruit for Eve, the
lone similar is word FRUIT. The Court agrees with the appellate court that by mere
pronouncing the marks, it could hardly be said that it will provoke a confusion, as to
mistake one for the other. Standing by itself, Fruit of the Loom is wholly different
from Fruit of Eve. The Court disagrees with the petitioner that the dominant feature
of both trademarks is the word FRUIT for even if in the printing of the trademark in
both hang tags, the word FRUIT is not at all made dominant over the other words.
246 CORPORATION V. DAWAY
Facts: Respondents Montres Rolex and Rolex Centre Phil., owners/proprietors of
Rolex and Crown Device, filed a complaint for trademark infringement alleging
petitioner adopted and used without authority the mark ‘Rolex’ in its business name
‘Rolex Music Lounge.’ Petitioner argued that there is no trademark infringement since
no confusion would arise by the use of ‘Rolex’ considering that its entertainment
business is totally unrelated to respondent’s business or products such as watches,
clocks, etc.
Issue: Whether or not likelihood of confusion would arise from the use of identical
marks over unrelated goods/business.
Ruling: YES. Under the old Trademark Law where the goods for which the identical
marks are used are unrelated, there can be no likelihood of confusion and there is
therefore no infringement in the use by the junior user of the registered mark on the
entirely different goods. This ruling, however, has been to some extent, modified by
Section 123.1(f) of the Intellectual Property Code.
A junior user of a well-known mark on goods or services which are not similar to the
goods or services, and are therefore unrelated, to those specified in the certificate of
registration of the well-known mark is precluded from using the same on the entirely
unrelated goods or services, subject to the following requisites, to wit:
1. The mark is well-known internationally and in the Philippines.
2. The use of the well-known mark on the entirely unrelated goods or services
would indicate a connection between such unrelated goods or services and
those goods or services specified in the certificate of registration in the well
known mark. This requirement refers to the likelihood of confusion of origin
or business or some business connection or relationship between the
registrant and the user of the mark.
3. The interests of the owner of the well-known mark are likely to be damaged.
For instance, if the registrant will be precluded from expanding its business to
those unrelated good or services, or if the interests of the registrant of the
well-known mark will be damaged because of the inferior quality of the good
or services of the user.
*Section 123.1(f) is clearly in point because the Music Lounge of petitioner
is entirely unrelated to respondents’ business involving watches, clocks,
bracelets, etc. However, the Court cannot yet resolve the merits of the
present controversy considering that the requisites for the application of
Section 123.1(f), which constitute the kernel issue at bar, clearly require
determination facts of which need to be resolved at the trial court.
ECOLE DE CUSINE MANILLE V. RENAUD COINTREAU
the Supreme Court of the Philippines denied the opposition filed by Ecole de Cuisine
Manille, Inc., a.k.a. Cordon Bleu of the Philippines (Ecole), against the trademark
application of Renaud Cointreau & Cie and Le Cordon Bleu Int’l. (Cointreau) for LE
CORDON BLEU & Device, covering goods falling under Classes 8, 9, 16, 21, 24, 25, 29
and 30.
Cointreau's application was filed in 1990 and was opposed by Ecole in 1993. Ecole’s
opposition was based on its prior use of the subject mark in the Philippines for its
cooking and culinary activities since 1948. In its defense, Cointreau argued that it had
been using the mark since as early as 1895 for its Le Cordon Bleu culinary school in
Paris, France, where Ecole’s director, Lourdes L. Dayrit, had trained as a student.
On July 31, 2006, the Bureau of Legal Affairs of the Intellectual Property Office of the
Philippines (IPOPHIL) rejected Cointreau’s application on the ground that there was
not sufficient evidence to establish Cointreau’s prior use of the mark in the Philippines.
It further stated that adoption and use of the trademark must be in Philippine
commerce and not abroad. However, this decision was reversed by the Director
General of the IPOPHIL, who held that the old Trademarks Law does not require
actual use in the Philippines to acquire ownership of the mark. The IPOPHIL Director
General considered Cointreau’s earlier use of the mark outside the Philippines and
noted that Ecole failed to explain how it came up with the mark. For these reasons,
the IPOPHIL Director General concluded that Ecole had unjustly appropriated the
mark.
The decision of the IPOPHIL Director General was affirmed by the Court of Appeals
and the Supreme Court.
In denying the opposition, the Supreme Court explained that only the owner of a mark
has the right to register the mark, and a prior user of the mark in the Philippines is not
necessarily the owner. A prior user of a mark in commerce can prove ownership only
when the mark has not been validly appropriated by another. In this case, the
Supreme Court noted, Cointreau had been using the subject mark in France well
before Ecole started using it in the Philippines. Ecole de Cuisine Manille (Cordon Bleu
of the Philippines), Inc. v. Renaud Cointreau & Cie & Le Cordon Bleu Int’l., B.V., G.R.
No. 185830 (S. Ct. June 5, 2013).
The Court also noted that the Philippines and France are both signatories to the Paris
Convention for the Protection of Industrial Property. Thus, Cointreau’s mark, even if
not registered in the Philippines, was also afforded protection against infringement
and/or unfair competition. The Court found that prior use of the mark in France
effectively barred its subsequent registration by another party in the Philippines. That
being the case, even if Ecole was the first to use the mark in the Philippines, it could
not be said to have legally appropriated the mark, and hence was not entitled to
registration.
This case is significant because it clarifies that prior use of a mark in the Philippines
does not guarantee registration.
ESSO STANDARD V CA
Facts: The petitioner Esso Standard is a foreign corporation duly licensed to do
business in the philippines. it is engaged in the sale of petroleum products which are
identified by the trademarl 'Esso'. Esso is a successor of Standard Vacuum Oil Co, it
registered as a business name with the Bureau of Commerce in 1962. United Cigarette
is a domestic corporation engaged in the manufacture and sale of cigarettes. it
acquired the business from La Oriental Tobacco Corp including patent rights, once of
which is the use of 'Esso' on its cigarettes.
The petitioner filed a trademark infringement case alleging that it acquired goodwill to
such an extent that the buying public would be deceived as ti the quality and origin of
the said products to the detriment and disadvantage of its own products. The lower
court found United Cigarette guilty of infringement. Upon appeal, the Court of Appeals
ruled that there was no infringment in this case.
Issue: Is there infringement committed?
Ruling: NONE. Infringement is defined by law as the use without the consent of the
trademark owner of any reproduction, counterfeit, copy or colorable imitation of any
registered mark or tradename which would likely cause confusion or mistake or
deceive purchasers or others as to the source or origin of such goods.
The products of both parties (Petroleum and cigarettes) are non-competing. But as to
whether trademark infringement exists depend on whether or not the goods are so
related that the public may be or is actually deceived and misled that they come from
the same maker. Under the Related Goods Theory, goods are related when they
belong to the same class or have the same descriptive properties or when they have
same physical attributes. In these case, the goods are absolutely different and are so
foreign from each other it would be unlikely for purchasers to think that they came
from the same source. Moreover, the goods flow from different channels of trade and
are evidently different in kind and nature.
CANON KABUSHIKI KAISHA vs. COURT OF APPEALS
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: 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.
FABERGE V IAC
Facts: 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?
Ruling: 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 conditions or limitations stated
therein. Moreover, the two 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).
LYCEUM OF THE PHILIPPINES VS. COURT OF APPEALS
Facts: Lyceum of the Philippines Inc. had sometime before commenced in the SEC a
proceeding (SEC-Case No. 1241) against the Lyceum of Baguio, Inc. to require it to
change its corporate name and to adopt another name not "similar [to] or identical"
with that of petitioner. In an Order dated 20 April 1977, Associate Commissioner Julio
Sulit held that the corporate name of petitioner and that of the Lyceum of Baguio, Inc.
were substantially identical because of the presence of a "dominant" word, i.e.,
"Lyceum," the name of the geographical location of the campus being the only word
which distinguished one from the other corporate name. The SEC also noted that
Lyceum of the Philippines Inc. had registered as a corporation ahead of the Lyceum of
Baguio, Inc. in point of time, and ordered the latter to change its name to another
name "not similar or identical [with]" the names of previously registered entities. The
Lyceum of Baguio, Inc. assailed the Order of the SEC before the Supreme Court (GR L-
46595). In a Minute Resolution dated 14 September 1977, the Court denied the
Petition for Review for lack of merit. Entry of judgment in that case was made on 21
October 1977.
Armed with the Resolution of the Supreme Court, the Lyceum of the Philippines then
wrote all the educational institutions it could find using the word "Lyceum" as part of
their corporate name, and advised them to discontinue such use of "Lyceum." When,
with the passage of time, it became clear that this recourse had failed, and on 24
February 1984, Lyceum of the Philippines instituted before the SEC SEC-Case 2579 to
enforce what Lyceum of the Philippines claims as its proprietary right to the word
"Lyceum." The SEC hearing officer rendered a decision sustaining petitioner's claim to
an exclusive right to use the word "Lyceum." The hearing officer relied upon the SEC
ruling in the Lyceum of Baguio, Inc. case (SEC-Case 1241) and held that the word
"Lyceum" was capable of appropriation and that petitioner had acquired an
enforceable exclusive right to the use of that word. On appeal, however, by Lyceum Of
Aparri, Lyceum Of Cabagan, Lyceum Of Camalaniugan, Inc., Lyceum Of Lallo, Inc.,
Lyceum Of Tuao, Inc., Buhi Lyceum, Central Lyceum Of Catanduanes, Lyceum Of
Southern Philippines, Lyceum Of Eastern Mindanao, Inc. and Western Pangasinan
Lyceum, Inc.,, which are also educational institutions, to the SEC En Banc, the decision
of the hearing officer was reversed and set aside. The SEC En Banc did not consider
the word "Lyceum" to have become so identified with Lyceum of the Philippines as to
render use thereof by other institutions as productive of confusion about the identity
of the schools concerned in the mind of the general public. Unlike its hearing officer,
the SEC En Banc held that the attaching of geographical names to the word "Lyceum"
served sufficiently to distinguish the schools from one another, especially in view of
the fact that the campuses of Lyceum of the Philippines and those of the other
Lyceums were physically quite remote from each other. Lyceum of the Philippines then
went on appeal to the Court of Appeals. In its Decision dated 28 June 1991, however,
the Court of Appeals affirmed the questioned Orders of the SEC En Banc. Lyceum of
the Philippines filed a motion for reconsideration, without success. Lyceum of the
Philippines filed the petition for review.
Issue: Whether the names of the contending Lyceum schools are confusingly
similar.
 2. Whether the use by the Lyceum of the Philippines of "Lyceum" in its corporate "Lyceum." It follows that if any institution had acquired an exclusive right to the word
name has been for such length of time and with such exclusivity as to have become "Lyceum," that institution would have been the Western Pangasinan Lyceum, Inc.
associated or identified with the petitioner institution in the mind of the general rather than Lyceum of the Philippines. Hence, Lyceum of the Philippines is not entitled
public (or at least that portion of the general public which has to do with schools). to a legally enforceable exclusive right to use the word "Lyceum" in its corporate name
Ruling: 1. The Articles of Incorporation of a corporation must, among other things, and that other institutions may use "Lyceum" as part of their corporate names.
set out the name of the corporation. Section 18 of the Corporation Code establishes a SHANG PROPERTIES V. ST. FRANCIS DEVELOPMENT
restrictive rule insofar as corporate names are concerned. It provides that "No
Facts: St. Francis Development Corporation, a corporation engaged in real
corporate name may be allowed by the Securities an Exchange Commission if the
estate business, filed an intellectual property violation case for unfair
proposed name is identical or deceptively or confusingly similar to that of any existing
competition, false or fraudulent declaration, and for damages against Shang
corporation or to any other name already protected by law or is patently deceptive,
Properties Realty Corporation before the IPO – Bureau of Legal Affairs arising
confusing or contrary to existing laws. When a change in the corporate name is
from the latter’s use and filing of applications for the registration of the marks
approved, the Commission shall issue an amended certificate of incorporation under
“The St. Francis Towers” and “The St. Francis Shangri-La Place”. The real
the amended name." The policy underlying the prohibition in Section 18 against the
estate development projects of the aforementioned c ompanies are located
registration of a corporate name which is "identical or deceptively or confusingly
along the streets bearing the name “St. Francis,” particularly, St. Francis
similar" to that of any existing corporation or which is "patently deceptive" or "patently
Avenue and St. Francis, both within the vicinity of the Ortigas Center.
confusing" or "contrary to existing laws," is the avoidance of fraud upon the public
which would have occasion to deal with the entity concerned, the evasion of legal
Issue: whether or not “St. Francis”, a geographically-descriptive term, can be
obligations and duties, and the reduction of difficulties of administration and
registered as a mark under the Intellectual Property (IP) Code of the
supervision over corporations. Herein, the Court does not consider that the corporate
Philippines.
names of the academic institutions are "identical with, or deceptively or confusingly
similar" to that of Lyceum of the Philippines Inc.. True enough, the corporate names of
Ruling: In general, a geographically-descriptive mark, because of its general
the other schools (defendant institutions) entities all carry the word "Lyceum" but
public domain classification, is perceptibly disqualified from trademark
confusion and deception are effectively precluded by the appending of geographic
registration. Section 123.1(j) of the IP Code provides that a mark cannot be
names to the word "Lyceum." Thus, the "Lyceum of Aparri" cannot be mistaken by the
registered if it “consists exclusively of signs or of indications that may serve in
general public for the Lyceum of the Philippines, or that the "Lyceum of
trade to designate the kind, quality, quantity, intended purpose, value,
Camalaniugan" would be confused with the Lyceum of the Philippines. Further,
geographical origin, time or production of the goods or rendering of the
etymologically, the word "Lyceum" is the Latin word for the Greek lykeion which in
services, or other characteristics of the goods or services”.
turn referred to a locality on the river Ilissius in ancient Athens "comprising an
enclosure dedicated to Apollo and adorned with fountains and buildings erected by
The rationale of the policy was deftly explained in the U.S. case of Great
Pisistratus, Pericles and Lycurgus frequented by the youth for exercise and by the
Southern Bank v. First Southern Bank. The US Court held that “descriptive
philosopher Aristotle and his followers for teaching." In time, the word "Lyceum"
geographical terms are in the ‘public domain’ simply because every seller
became associated with schools and other institutions providing public lectures and
should have the right to inform customers of the geographical origin of his or
concerts and public discussions. Thus today, the word "Lyceum" generally refers to a
her goods or services. ‘Geographically descr iptive term’ is defined as any noun
school or an institution of learning. Since "Lyceum" or "Liceo" denotes a school or
or adjective that designates a geographical location on earth, such as
institution of learning, it is not unnatural to use this word to designate an entity which
continents, nations, regions, states, cities, streets and addresses, areas of
is organized and operating as an educational institution. To determine whether a given
cities, rivers, or any other location referred to by a recognized name, that are
corporate name is "identical" or "confusingly or deceptively similar" with another
regarded by buyers as descriptive of the geographic location of origin of the
entity's corporate name, it is not enough to ascertain the presence of "Lyceum" or
goods or services.
"Liceo" in both names. One must evaluate corporate names in their entirety and when
the name of Lyceum of the Philippines is juxtaposed with the names of private
Thus, if the mark sought to be registered is the name of the place or region
respondents, they are not reasonably regarded as "identical" or "confusingly or
from which the goods actually come, then the geographic term is probabl y
deceptively similar" with each other.
used in a descriptive sense. Hence, the term is ineligible for trademark
registration.
2. The number alone of the private respondents in the present case suggests strongly
that the Lyceum of the Philippines' use of the word "Lyceum" has not been attended
Is there an exception to the rule? A geographically descriptive mark can still
with the exclusivity essential for applicability of the doctrine of secondary meaning. It
be registered if the same has acquired a secondary meaning. This means, that
may be noted also that at least one of the private respondents, i.e., the Western
a descriptive mark no longer causes the public to associate the goods with a
Pangasinan Lyceum, Inc., used the term "Lyceum" 17 years before Lyceum of the
particular place, but to associate the goods with a particular source (seller or
Philippines registered its own corporate name with the SEC and began using the word
producer). It must be shown that the purchasers come to immediately
associate the mark with only the seller or producer of the goods. In other
words, the mark itself has acquired another meaning no longer that of a
particular place, but it has come to mean that the goods or services are that of
the seller or producer.

Under Section 123.234 of the IP Code, specific requirements have to be met in

order to conclude that a geographically descriptive mark has acquired
secondary meaning, to wit:

(a) the secondary meaning must have arisen as a result of substantial

commercial use of a mark in the Philippines;

(b) such use must result in the distinctiveness of the mark insofar as the
goods or the products are concerned; and

(c) proof of substantially exclusive and continuous commercial use in the

Philippines for five (5) years before the date on which the claim of
distinctiveness is made.

The above provision spells out the essential elements that must be present
before a mark is considered to have acquired secondary meaning. First, there
must be a substantial commercial use of the mark. Obviously, it is only
through substantial commercial use of a mark that the public will come to
associate the mark to its source. Second, the use of a mark resulted to its
being distinct or well-known. Finally, the claim of distinctiveness can only be
established after five (5) years of substantially exclusive and continuous
commercial use of the mark in the Philippines. As the saying goes, it takes
long years to build a good reputation. Indeed, the same is true with a
geographically descriptive mark.

In the instant case, the Supreme Court held that the use of the marks “The St.
Francis Towers” and “The St. Francis Shangri-La Place” was meant only to
identify, or at least associate, the real estate projects with its geographical
location. Considering that both companies are business comp etitors engaged in
real estate or property development, providing goods and services directly
connected thereto, there can be no description of its geographical origin as
precise and accurate as that of the name of the place where they are situated.