LIST OF CASES FOR PATENTS AND TRADEMARK

(BOOK OF ERNESTO C. SALAO)

I. LAW ON PATENTS

1. PHIL. PHARMAWEALTH, INC. VS. PFIZER, INC. AND PFIZER (PHIL.), INC. G.R. NO. 167715,
NOVEMBER 17, 2010 (P. 78-80)

 Patent is valid until July 16, 2004

 Petitioner argues that respondents' exclusive right to monopolize the subject matter of
the patent exists only within the term of the patent
 Petitioner claims that since respondents' patent expired on July 16, 2004, the latter no
longer possess any right of monopoly and, as such, there is no more basis for the
issuance of a restraining order or injunction against petitioner insofar as the disputed
patent is concerned
 The exclusive right of a patentee to make, use and sell a patented product, article or
process exists only during the term of the patent
 The Court agrees with petitioner that after July 16, 2004, respondents no longer
possess the exclusive right to make, use and sell the articles or products covered by
Philippine Letters Patent No. 21116

2. ROMA DRUG AND ROMEO RODRIGUEZ VS. THE REGIONAL TRIAL COURT OF GUAGUA,
PAMPANGA. G.R. NO. 149907 APRIL 16, 2009 (P. 90-94)

 Seized medicines, which were manufactured by SmithKline, were imported directly

from abroad and not purchased through the local SmithKline, the authorized Philippine
distributor of these products
 Violation of Section 4 (in relation to Sections 3 and 5) of Republic Act No. 8203, also
known as the Special Law on Counterfeit Drugs (SLCD) – prohibits the sale of
counterfeit drugs, which under Section 3(b)(3), includes an unregistered imported drug
product – term unregistered signifies the lack of registration with the Bureau of Patent
 Subject seized drugs are identical in content with their Philippine-registered
counterparts
 constitutionality aspect of Section 4 of SLCD has been mooted with the passage in 2008
of RA 9502, also known as the Universally Accessible Cheaper and Quality Medicines
Act of 2008
 Section 7 of RA 9502 amends Section 72 of the Intellectual Property Code in that the
later law unequivocally grants third persons the right to import drugs or medicines
whose patent were registered in the Philippines by the owner of the product

3. SMITH KLINE BECKMAN CORP. VS COURT OF APPEALS AND TRYCO PHARMA, G.R. NO. 126627,
AUGUST 14, 2003 (P. 98-101)

 Smith Kline Beckman Corporation was granted patent for an invention consisted of a
new compound named methyl 5 propylthio-2-benzimidazole carbamate and the
methods or compositions utilizing the compound as an active ingredient in fighting
infections caused by gastrointestinal parasites and lungworms in animals such as swine,
sheep, cattle, goats, horses, and even pet animals
 Tryco Pharma Corporation manufactures, distributes and sells veterinary products
including Impregon, a drug that has Albendazole for its active ingredient and is claimed

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 to be effective against gastro-intestinal roundworms, lungworms, tapeworms and fluke
infestation in carabaos, cattle and goats
 Petitioner sued private respondent for infringement of patent and unfair competition
 Petitioner’s argument: Doctrine of Equivalents – an infringement also takes place
when a device appropriates a prior invention by incorporating its innovative concept
and, although with some modification and change, performs substantially the same
function in substantially the same way to achieve substantially the same result (for
determining patent infringement, Albendazole, the active ingredient it alleges was
appropriated by private respondent for its drug Impregon, is substantially the same as
methyl 5 propylthio-2-benzimidazole carbamate covered by its patent since both of
them are meant to combat worm or parasite infestation in animals)
 Ruling: While both compounds have the effect of neutralizing parasites in animals,
identity of result does not amount to infringement of patent unless Albendazole
operates in substantially the same way or by substantially the same means as the
patented compound, even though it performs the same function and achieves the same
result. In other words, the principle or mode of operation must be the same or
substantially the same.
 The doctrine of equivalents thus requires satisfaction of the function-means-and-result
test, the patentee having the burden to show that all three components of such
equivalency test are met.

II. LAW ON TRADEMARK

1. BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG VS. PHILIPPINE SHOE EXPO MARKETING
CORPORATION, G.R. NO. 194307, NOVEMBER 20, 2013 (P.125-129)

 Petitioner applied for various trademark registrations before the IPO

 However, registration proceedings of the subject applications were suspended in view
of an existing registration of the mark "BIRKENSTOCK AND DEVICE" under Registration
No. 56334 in the name of Shoe Town International and Industrial Corporation, the
predecessor-in-interest of respondent Philippine Shoe Expo Marketing Corporation
 Petitioner filed a petition for cancellation of Registration No. 56334 on the ground that
it is the lawful and rightful owner of the Birkenstock marks
 Issue: Whether or not the subject marks should be allowed registration in the
name of petitioner
 Ruling: Yes.
 Respondent failed to file the 10th Year Declaration of Actual Use (DAU) for Registration
No. 56334 within the requisite period, as required by RA 166, the governing law for
Registration No. 56334
 Petitioner has duly established its true and lawful ownership of the mark
"BIRKENSTOCK"
 It must be emphasized that registration of a trademark, by itself, is not a mode of
acquiring ownership. If the applicant is not the owner of the trademark, he has no right
to apply for its registration.
 Registration merely creates a prima facie presumption of the validity of the registration,
of the registrant’s ownership of the trademark, and of the exclusive right to the use
thereof. Such presumption, just like the presumptive regularity in the performance of
official functions, is rebuttable and must give way to evidence to the contrary.
 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
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2. FREDCO MANUFACTURING CORP. VS PRESIDENT AND FELLOWS OF HARVARD COLLEGE, G.R.
NO. 185917, JUNE 1, 2011 (P. 136-144)

 Fredco filed a petition for the Cancellation of Registration No. 56561 against
respondents
 Registration No. 56561 was issued to Harvard University on 25 November 1993 for the
mark Harvard Veritas Shield Symbol for decals, tote bags, serving trays, sweatshirts, t-
shirts, hats and flying discs
 Fredco alleged that the mark Harvard for t-shirts, polo shirts, sandos, briefs, jackets and
slacks was first used in the Philippines on 2 January 1982 by New York Garments
Manufacturing & Export Co., Inc., Fredco’s predecessor-in-interest. On 24 January 1985,
New York Garments filed for trademark registration of the mark Harvard for goods.
 Fredco’s petition must fail
i. Fredco’s registration of the mark Harvard should not have been allowed
because Section 4(a) of RA 166 prohibits the registration of a mark which may
disparage or falsely suggest a connection with persons, living or dead,
institutions, beliefs x x x (Fredco does not have any affiliation or connection
with Harvard University, or even with Cambridge, Massachusetts)
ii. The Philippines and the USA are both signatories to the Paris Convention for
the Protection of Industrial Property (Paris Convention)
 This Court has ruled that the Philippines is obligated to assure nationals of countries of
the Paris Convention that they are afforded an effective protection against violation of
their intellectual property rights in the Philippines in the same way that their own
countries are obligated to accord similar protection to Philippine nationals
 Thus, under Philippine law, a trade name of a national of a State that is a party to the
Paris Convention, whether or not the trade name forms part of a trademark, is
protected without the obligation of filing or registration

3. ANA ANG VS TORIBIO TEODORO, G.R. NO. L-48226, DECEMBER 14, 1942 (P.145-148)

 Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark
and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor
baseballs since 1910
 Petitioner registered the same trade-mark "Ang Tibay" for pants and shirts on April 11,
1932
 "Ang Tibay" is not a descriptive term within the meaning of the Trade-Mark Law but
rather a fanciful or coined phrase which may properly and legally be appropriated as a
trade-mark or trade-name
 Doctrine of Secondary Meaning – a word or phrase originally incapable of exclusive
appropriation with reference to an article of the market, because geographically or
otherwise descriptive, 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
 "Ang Tibay", being neither geographic nor descriptive, was originally capable of
exclusive appropriation as a trade-mark
 The application of the doctrine of secondary meaning made by the Court of Appeals
could be fully sustained because, in any event, by respondent's long and exclusive use
of said phrase with reference to his products and his business, it has acquired a
proprietary connotation
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  There can be unfair competition or unfair trading even if the goods are non-competing,
and that such unfair trading can cause injury or damage to the first user of a given
trade-mark, first, by prevention of the natural expansion of his business and, second, by
having his business reputation confused with and put at the mercy of the second user

4. MCDONALD’S CORPORATION VS. L.C. BIG MAK BURGER, INC., G.R. NO. 143993, AUGUST 18,
2004 (P.150-153)

 Respondent L.C. Big Mak Burger, Inc. applied for the registration of the Big Mak mark
for its hamburger sandwiches
 McDonalds opposed respondent corporations application on the ground that Big Mak
was a colorable imitation of its registered Big Mac mark for the same food products
 Petitioners sued respondents for trademark infringement and unfair competition
 Trademark infringement – (1) use, without the consent of the registrant, any
reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-
name in connection with the sale, offering for sale, or advertising of any goods, business
or services on or in connection with which such use is likely to cause confusion or
mistake or to deceive purchasers or others as to the source or origin of such goods or
services, or identity of such business; or (2) reproduce, counterfeit, copy, or colorably
imitate any such mark or trade-name and apply such reproduction, counterfeit, copy, or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such goods, business or
services
 Elements to establish trademark infringement
i. the validity of plaintiff’s mark;
ii. the plaintiff’s ownership of the mark; and
iii. the use of the mark or its colorable imitation by the alleged infringer results in
likelihood of confusion
 The Big Mac mark, which should be treated in its entirety and not dissected word for
word, is neither generic nor descriptive
 Generic marks – commonly used as the name or description of a kind of goods
 Descriptive marks – convey the characteristics, functions, qualities or ingredients of a
product to one who has never seen it or does not know it exists
 Fanciful or arbitrary marks - it bears no logical relation to the actual characteristics of
the product it represents (Big Mac falls in this category); Thus, highly distinctive and
valid.
 Two types of confusion arising from the use of similar or colorable imitation marks:
i. product confusion – confusion of goods
ii. source or origin confusion – confusion of business
 The first is the confusion of goods in which event the ordinarily prudent purchaser
would be induced to purchase one product in the belief that he was purchasing the
other. xxx The other is the confusion of business: Here though the goods of the parties
are different, the defendants product is such as might reasonably be assumed to
originate with the plaintiff, and the public would then be deceived either into that
belief or into the belief that there is some connection between the plaintiff and
defendant which, in fact, does not exist.
 Two tests in determining likelihood of confusion:
i. dominancy test – focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion (giving greater weight to the
similarity of the appearance of the product arising from the adoption of the
dominant features of the registered mark, disregarding minor differences)
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 ii. holistic test – requires the court to consider the entirety of the marks as applied
to the products, including the labels and packaging, in determining confusing
similarity
 Petitioner’s failure to present proof of actual confusion does not negate their claim of
trademark infringement. Section 22 requires the less stringent standard of likelihood of
confusion only. While proof of actual confusion is the best evidence of infringement, its
absence is inconsequential.
 Essential elements of an action for unfair competition:
i. confusing similarity in the general appearance of the goods; and
ii. intent to deceive the public and defraud a competitor
 Unfair competition is broader than trademark infringement and includes passing off
goods with or without trademark infringement. Trademark infringement is a form of
unfair competition.

5. MCDONALD’S CORP. VS MACJOY FASTFPPD CORP., G.R. NO. 166115, FEBRUARY 2, 2007 (P.154-
157)

 Dominancy test was the one relied upon by the Court in its decision
 Notice of Opposition was filed by Mc Donald’s against the respondent’s application for
the registration of the trademark "MACJOY & DEVICE" claiming that the said trademark
so resembles its corporate logo, otherwise known as the Golden Arches or "M" design,
and its marks
 Issue: Whether there is a confusing similarity between the MCDONALD’S marks of
the petitioner and the respondent’s "MACJOY & DEVICE" trademark
 The totality or holistic test only relies on visual comparisons between two trademarks
whereas the dominancy test relies not only on the visual but also on the aural and
connotative comparisons and overall impressions between the two trademarks
 Applying the dominancy test to the instant case, the Court finds that herein petitioner’s
"MCDONALD’S" and respondent’s "MACJOY" marks are confusingly similar with each
other such that an ordinary purchaser can conclude an association or relation between
the marks
 When one applies for the registration of a trademark or label which is almost the same
or very closely resembles one already used and registered by another, the application
should be rejected and dismissed outright, even without any opposition on the part of
the owner and user of a previously registered label or trademark, this not only to avoid
confusion on the part of the public, but also to protect an already used and registered
trademark and an established goodwill.

6. SKECHERS, U.S.A., INC. VS INTER PACIFIC INDUSTRIAL TRADING CORP., ET. AL., G.R. NO. 164321,
MARCH 23, 2011(P.158-163)
 Dominancy test was used in this case
 Petitioner filed for the issuance of search warrants against the outlet and warehouse
operated by respondents for infringement of trademark under Section 155, in relation
to Section 170 of RA 8293, otherwise known as the Intellectual Property Code of the
Philippines
 Respondents moved to quash the search warrants, arguing that there was no confusing
similarity between petitioner’s "Skechers" rubber shoes and its "Strong" rubber shoes
 The essential element of infringement under R.A. No. 8293 is that the infringing mark is
likely to cause confusion
 The Court finds 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
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  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 likelihood of confusion is present as purchasers will associate the respondent’s use
of the stylized "S" as having been authorized by petitioner or that respondent’s product
is connected with petitioner’s business
 This Court, in a case for unfair competition, had opined that even if not all the details
are identical, as long as the general appearance of the two products are such that any
ordinary purchaser would be deceived, the imitator should be liable
 Neither can the difference in price be a complete defense in trademark infringement

7. ASIA BREWERY, INC. VS THE HONORABLE COURT OF APPEALS AND SAN MIGUEL CORPORATION,
G.R. NO. 103543, JULY 5, 1993 (P.164-167)

 San Miguel Corporation filed a complaint against Asia Brewery Inc. 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
 Issue: Whether ABI infringes SMC's trademark: San Miguel Pale Pilsen with
Rectangular Hops and Malt Design, and thereby commits unfair competition against
the latter
 Sec. 22 of Republic Act No. 166, otherwise known as the Trademark Law implies that
only registered trademarks, trade names and service marks are protected against
infringement or unauthorized use by another or others
 Ruling: No.
 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
 Emphasis is put in the resemblance of the dominant features of the marks in
comparison
 The fact that the words pale pilsen are part of ABI's trademark does not constitute an
infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are
generic words descriptive of the color ("pale"), of a type of beer ("pilsen"), which is a
light bohemian beer with a strong hops flavor that originated in the City of Pilsen in
Czechoslovakia
 "Pilsen" is a "primarily geographically descriptive word", hence, non-registerable and
not appropriable by any beer manufacturer
 The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if
they are part of its registered trademark: SAN MIGUEL PALE PILSEN, any more than
such descriptive words as "evaporated milk," "tomato ketchup," "cheddar cheese,"
"corn flakes" and "cooking oil" may be appropriated by any single manufacturer of
these food products, for no other reason than that he was the first to use them in his
registered trademark
 No one may appropriate generic or descriptive words. They belong to the public
domain.
 The fact that BEER PALE PILSEN like SAN MIGUEL PALE PILSEN is bottled in amber-
colored steinie bottles of 320 ml. capacity and is also advertised in print, broadcast, and
television media, does not necessarily constitute unfair competition

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  Bottle size, shape and color may not be the exclusive property of any one beer
manufacturer. Being of functional or common use, and not the exclusive invention of
any one, it is available to all who might need to use it within the industry.
 No one can have a monopoly of the color amber for bottles, nor of white for labels, nor
of the rectangular shape which is the usual configuration of labels. Needless to say, the
shape of the bottle and of the label is unimportant. What is all important is the name of
the product written on the label of the bottle for that is how one beer may be
distinguished from the others.
 The fact that SMC's bottle is registered under RA 623 (as amended by RA 5700, An Act
to Regulate the Use of Duly Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels and
Other Similar Containers) simply prohibits manufacturers of other foodstuffs from the
unauthorized use of SMC's bottles by refilling these with their products
 Our decision in this case will not diminish our ruling in "Del Monte Corporation vs.
Court of Appeals and Sunshine Sauce Manufacturing Industries", that xxx to determine
whether a trademark has been infringed, we must consider the mark as a whole and
not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not
usually to any part of it.

8. PROSOURCE INTERNATIONAL, INC., VS HORPHAG RESEARCH MANAGEMENT SA, G.R. NO.

180073, NOVEMBER 25, 2009 (P.167-170)

9. DEL MONTE CORPORATION VS COURT OF APPEALS, G.R. NO. L-78325, JANUARY 25, 1990
(P.171-176)

 Del Monte authorized Philpack to register with the Philippine Patent Office the Del
Monte catsup bottle configuration, for which it was granted
 The product itself of Sunshine Sauce Manufacturing Industries was contained in various
kinds of bottles, including the Del Monte bottle, which the private respondent bought
from the junk shops for recycling
 Distinctions between infringement of trademark and unfair competition:
i. Infringement of trademark is the unauthorized use of a trademark, whereas
unfair competition is the passing off of one's goods as those of another;
ii. In infringement of trademark fraudulent intent is unnecessary whereas in unfair
competition fraudulent intent is essential;
iii. In infringement of trademark the prior registration of the trademark is a
prerequisite to the action, whereas in unfair competition registration is not
necessary
 To determine whether a trademark has been infringed, we must consider the mark as a
whole and not as dissected
 It is not difficult to see that the Sunshine label is a colorable imitation of the Del Monte
trademark
 As between a newcomer who by the confusion has nothing to lose and everything to
gain and one who by honest dealing has already achieved favor with the public, any
doubt should be resolved against the newcomer inasmuch as the field from which he
can select a desirable trademark to indicate the origin of his product is obviously a large
one
 Although Del Monte has actual use of the bottle's configuration, the petitioners cannot
claim exclusive use thereof because it has not been registered in the Principal Register,
thus, private respondent is not guilty of infringement for having used the Del Monte
bottle since the configuration of the said bottle was merely registered in the
Supplemental Register
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  As Sunshine's label is an infringement of the Del Monte's trademark, law and equity call
for the cancellation of the private respondent's registration and withdrawal of all its
products bearing the questioned label from the market. With regard to the use of Del
Monte's bottle, the same constitutes unfair competition; hence, the respondent should
be permanently enjoined from the use of such bottles.

10. FRUIT OF THE LOOM, INC., VS COURT OF APPEALS AND GENERAL GARMENTS CORPORATION,
G.R. NO. L-32747, NOVEMBER 29, 2004(P.176-179)

11. BERRIES AGRICULTURAL CO., INC., VS NORVY ABYADANG, G.R. NO 183404, OCTOBER 13,
2010(P.179-182)

12. FREDCO MANUFACTURING CORP. VS PRESIDENT AND FELLOWS OF HARVARD COLLEGE, G.R.
NO. 185917, JUNE 1, 2011(P.183-189)

13. 246 CORPORATION VS HON. REYNALDO B. DAWAY, G.R. NO. 157216, NOVEMBER 20,
2003(P.189-192)

14. ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES) INC., VS RENAUD COINTREAU
& CIE AND LE CORDON BLEU INT’L., B.V., G.R. NO. 185830, JUNE 5, 2013(P.192-198)

15. LYCEUM OF THE PHILIPPINES, INC. VS COURT OF APPEALS, ET. AL., G.R. NO. 101897, MARCH 5,
1993(P.202-204)

16. ASIA BREWERY, INC. VS THE HONORABLE COURT OF APPEALS AND SAN MIGUEL CORPORATION,
G.R. NO. 103543, JULY 5, 1993(P.204-206)

17. SHANG PROPERTIES REALTY CORPORATION AND SHANG PROPERTIES INC. VS ST. FRANCIS
DEVELOPMENT CORPORATION, G.R. NO. 190706, JULY 21, 2014(P.206-208)

 Fraud is an essential element in unfair competition

 Respondent filed separate complaints against petitioners before the IPO-BLA for unfair
competition, and an opposition to the petitioners’ application for registration of the
mark "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE"
 Issue: Whether petitioners are guilty of unfair competition in using the marks
"THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE"
 Ruling: No.
 The Court finds the element of fraud to be wanting; hence, there can be no unfair
competition
 The geographically descriptive nature of the mark "ST. FRANCIS" bars its exclusive
appropriability, unless a secondary meaning is acquired
 Geographically descriptive term – any noun or adjective that designates geographical
location and would tend to be regarded by buyers as descriptive of the geographic
location of origin of the goods or services
 Specific requirements to conclude that a geographically-descriptive mark has acquired
secondary meaning:
i. The secondary meaning must have arisen as a result of substantial commercial
use of a mark in the Philippines;
ii. Such use must result in the distinctiveness of the mark insofar as the goods or
the products are concerned; and
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 iii. proof of substantially exclusive and continuous commercial use in the
Philippines for 5 years before the date on which the claim of distinctiveness is
made

18. DERMALINE, INC., VS MYRA PHARMACEUTICALS, INC., G.R. NO. 190065, AUGUST 16,
2010(P.223-225)

19. ROMA DRUG AND ROMEO RODRIGUEZ VS THE REGIONAL TRIAL COURT OF GUAGUA
PAMPANGA, G.R. NO. 149907, APRIL 16, 2009(P.225-228)

20. PROSOURCE INTERNATIONAL, INC. VS HORPHAG RESEARCH MANAGEMENT SA, G.R. NO.
180073, NOVEMBER 25, 2009 (P. 234-235)

21. LEVI STRAUSS & CO. VS CLINTON APPARELLE, INC., G.R. NO. 138900 (P. 236-242)

 Levi’s filed a complaint for trademark infringement against Clinton Apparelle

 Petitioners alleged that they discovered the presence in the local market of jeans under
the brand name Paddocks using a device which is substantially, if not exactly, similar to
the Dockers and Design trademark owned by and registered in the name of Levi Strauss
without its consent
 Given the single registration of the trademark Dockers and Design and considering that
respondent only uses the assailed device but a different word mark, the right to
prevent the latter from using the challenged Paddocks device is far from clear. Stated
otherwise, it is not evident whether the single registration of the trademark Dockers
and Design confers on the owner the right to prevent the use of a fraction thereof in
the course of trade. It is also unclear whether the use without the owner’s consent of a
portion of a trademark registered in its entirety constitutes material or substantial
invasion of the owner’s right.
 It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is
the dominant or central feature of petitioners trademark the feature that prevails or is
retained in the minds of the public an imitation of which creates the likelihood of
deceiving the public and constitutes trademark infringement. In sum, there are vital
matters which have yet and may only be established through a full-blown trial.
 Trademark dilution – the lessening of the capacity of a famous mark to identify and
distinguish goods or services, regardless of the presence or absence of: (1) competition
between the owner of the famous mark and other parties; or (2) likelihood of
confusion, mistake or deception

22. COFFEE PARTNERS, INC. VS SAN FRANCISCO COFFEE & ROASTERY INC., G.R. NO. 169504,
MARCH 3, 2010 (P.246-252)

 There is infringement using either the Dominancy Test or the Holistic Test
 Respondent discovered that petitioner was about to open a coffee shop under the
name SAN FRANCISCO COFFEE in Libis, Quezon City
 According to respondent, petitioner’s shop caused confusion in the minds of the public
as it bore a similar name and it also engaged in the business of selling coffee
 Respondent filed a complaint with the Bureau of Legal Affairs-Intellectual Property
Office (BLA-IPO) for infringement and/or unfair competition
 Petitioner argued respondent stopped operating under the trade name SAN FRANCISCO
COFFEE when it formed a joint venture with Boyd Coffee USA

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  Issue: Whether petitioner’s use of the trademark SAN FRANCISCO COFFEE
constitutes infringement of respondent’s trade name SAN FRANCISCO COFFEE &
ROASTERY, INC., even if the trade name is not registered with the IPO
 Ruling: Yes.
 A trade name need not be registered with the IPO before an infringement suit may be
filed by its owner against the owner of an infringing trademark. All that is required is
that the trade name is previously used in trade or commerce in the Philippines
 RA 8293, which took effect on 1 January 1998, has dispensed with the registration
requirement. Section 165.2 of RA 8293 categorically states that trade names shall be
protected, even prior to or without registration with the IPO, against any unlawful act
including any subsequent use of the trade name by a third party, whether as a trade
name or a trademark likely to mislead the public.
 It is the likelihood of confusion that is the gravamen of infringement
 Petitioner’s argument that San Francisco is just a proper name referring to the famous
city in California, and that coffee is simply a generic term, is untenable
 Respondent has acquired an exclusive right to the use of the trade name San Francisco
Coffee & Roastery, Inc. since the registration of the business name with the DTI in 1995
 Of course, this does not mean that respondent has exclusive use of the geographic
word San Francisco or the generic word coffee
 It is only the combination of the words San Francisco Coffee, which is respondent’s
trade name in its coffee business, that is protected against infringement on matters
related to the coffee business to avoid confusing or deceiving the public

23. CHESTER UYCO, WINSTON UYCHIYONG AND CHERRY C. UYCO-ONG VS VICENTE LO, G.R. NO.
202423, JANUARY 28, 2013(P.259-263)

24. WILLAWARE PRODUCTS CORPORATION VS. JESICHRIS MANUFACTURING CORPORATION, G.R.

NO. 195549, SEPTEMBER 3, 2014 (P.264-269)

25. JUNO BATISTIS VS PEOPLE OF THE PHILIPPINES, G.R. NO. 181571, DECEMBER 16, 2009(P.269-
272)

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