G.R. No.
L-48226 December 14, 1942
ANA L. ANG, petitioner,
vs.
TORIBIO TEODORO, respondent.
Cirilo Lim for petitioner.
Marcial P. Lichauco and Manuel M. Mejia for respondent.
OZAETA, J.:
Petitioner has appealed to this Court by certiorari to reverse the judgment of
the Court of Appeals reversing that of the Court of First Instance of Manila
and directing the Director of Commerce to cancel the registration of the
trade-mark "Ang Tibay" in favor of said petitioner, and perpetually enjoining
the latter from using said trade-mark on goods manufactured and sold by
her.
Respondent Toribio Teodoro, at first in partnership with Juan Katindig and
later as sole proprietor, 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. He formally registered it as trade-mark on
September 29, 1915, and as trade-name on January 3, 1933. The growth of
his business is a thrilling epic of Filipino industry and business capacity. Starting
in an obscure shop in 1910 with a modest capital of P210 but with tireless
industry and unlimited perseverance, Toribio Teodoro, then an unknown
young man making slippers with his own hands but now a prominent business
magnate and manufacturer with a large factory operated with modern
machinery by a great number of employees, has steadily grown with his
business to which he has dedicated the best years of his life and which he
has expanded to such proportions that his gross sales from 1918 to 1938
aggregated P8,787,025.65. His sales in 1937 amounted to P1,299,343.10 and
in 1938, P1,133,165.77. His expenses for advertisement from 1919 to 1938
aggregated P210,641.56.
Petitioner (defendant below) registered the same trade-mark "Ang Tibay" for
pants and shirts on April 11, 1932, and established a factory for the
manufacture of said articles in the year 1937. In the following year (1938) her
gross sales amounted to P422,682.09. Neither the decision of the trial court
nor that of the Court of Appeals shows how much petitioner has spent or
advertisement. But respondent in his brief says that petitioner "was unable to
prove that she had spent a single centavo advertising "Ang Tibay" shirts and
pants prior to 1938. In that year she advertised the factory which she had just
built and it was when this was brought to the attention of the appellee that
he consulted his attorneys and eventually brought the present suit."
The trial court (Judge Quirico Abeto) presiding absolved the defendant from
the complaint, with costs against the plaintiff, on the grounds that the two
trademarks are dissimilar and are used on different and non-competing
goods; that there had been no exclusive use of the trade-mark by the
plaintiff; and that there had been no fraud in the use of the said trade-mark
by the defendant because the goods on which it is used are essentially
different from those of the plaintiff. The second division of the Court of
Appeals, composed of Justices Bengson, Padilla, Lopez Vito, Tuason, and
Alex Reyes, with Justice Padilla as ponente, reversed that judgment, holding
that by uninterrupted an exclusive use since 191 in the manufacture of
slippers and shoes, respondent's trade-mark has acquired a secondary
meaning; that the goods or articles on which the two trade-marks are used
are similar or belong to the same class; and that the use by petitioner of said
trade-mark constitutes a violation of sections 3 and 7 of Act No. 666. The
defendant Director of Commerce did not appeal from the decision of the
Court of Appeals.
First. Counsel for the petitioner, in a well-written brief, makes a frontal sledge-
hammer attack on the validity of respondent's trade-mark "Ang Tibay." He
contends that the phrase "Ang Tibay" as employed by the respondent on the
articles manufactured by him is a descriptive term because, "freely translate
in English," it means "strong, durable, lasting." He invokes section 2 of Act No.
666, which provides that words or devices which related only to the name,
quality, or description of the merchandise cannot be the subject of a trade-
mark. He cites among others the case of Baxter vs. Zuazua (5 Phil., 16), which
involved the trade-mark "Agua de Kananga" used on toilet water, and in
which this Court held that the word "Kananga," which is the name of a well-
known Philippine tree or its flower, could not be appropriated as a trade-
mark any more than could the words "sugar," "tobacco," or "coffee." On the
other hand, counsel for the respondent, in an equally well-prepared and
exhaustive brief, contend that the words "Ang Tibay" are not descriptive but
merely suggestive and may properly be regarded as fanciful or arbitrary in
the legal sense. The cite several cases in which similar words have been
sustained as valid trade-marks, such as "Holeproof" for hosiery, 1 "ideal for
tooth brushes, 2 and "Fashionknit" for neckties and sweaters. 3
We find it necessary to go into the etymology and meaning of the Tagalog
words "Ang Tibay" to determine whether they are a descriptive term, i.e.,
whether they relate to the quality or description of the merchandise to which
respondent has applied them as a trade-mark. The word "ang" is a definite
article meaning "the" in English. It is also used as an adverb, a contraction of
the word "anong" (what or how). For instance, instead of saying, "Anong
ganda!" ("How beautiful!"), we ordinarily say, "Ang ganda!" Tibay is a root
word from which are derived the verb magpatibay (to strenghten; the
nouns pagkamatibay (strength, durability), katibayan (proof, support,
strength), katibay-tibayan (superior strength); and the adjectives matibay
(strong, durable, lasting), napakatibay (very strong), kasintibay or
magkasintibay (as strong as, or of equal strength). The phrase "Ang Tibay" is
an exclamation denoting administration of strength or durability. For
instance, one who tries hard but fails to break an object exclaims, "Ang
tibay!" (How strong!") It may also be used in a sentence thus, "Ang tibay ng
sapatos mo!" (How durable your shoes are!") The phrase "ang tibay" is never
used adjectively to define or describe an object. One does not say, "ang
tibay sapatos" or "sapatos ang tibay" is never used adjectively to define or
describe an object. One does not say, "ang tibay sapatos" or "sapatos ang
tibay" to mean "durable shoes," but "matibay na sapatos" or "sapatos na
matibay."
From all of this we deduce that "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. In this connection we do not fail to note that when the petitioner
herself took the trouble and expense of securing the registration of these
same words as a trademark of her products she or her attorney as well as the
Director of Commerce was undoubtedly convinced that said words (Ang
Tibay) were not a descriptive term and hence could be legally used and
validly registered as a trade-mark. It seems stultifying and puerile for her now
to contend otherwise, suggestive of the story of sour grapes. Counsel for the
petitioner says that the function of a trade-mark is to point distinctively, either
by its own meaning or by association, to the origin or ownership of the wares
to which it is applied. That is correct, and we find that "Ang Tibay," as used by
the respondent to designate his wares, had exactly performed that function
for twenty-two years before the petitioner adopted it as a trade-mark 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.
Second. In her second assignment of error petitioner contends that the Court
of Appeals erred in holding that the words "Ang Tibay" had acquired a
secondary meaning. In view of the conclusion we have reached upon the
first assignment of error, it is unnecessary to apply here the doctrine of
"secondary meaning" in trade-mark parlance. This doctrine is to the effect
that 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. (G. & C. Merriam Co. vs. Salfield, 198 F., 369, 373.)
We have said that the phrase "Ang Tibay," being neither geographic nor
descriptive, was originally capable of exclusive appropriation as a trade-
mark. But were it not so, the application of the doctrine of secondary
meaning made by the Court of Appeals could nevertheless 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. (Landers, Frary, and Clark vs. Universal Cooler Corporation, 85 F.
[2d], 46.)
Third. Petitioner's third assignment of error is, that the Court of Appeals erred
in holding that pants and shirts are goods similar to shoes and slippers within
the meaning of sections 3 and 7 of Act No. 666. She also contends under her
fourth assignment of error (which we deem convenient to pass upon
together with the third) that there can neither be infringement of trade-mark
under section 3 nor unfair competition under section 7 through her use of the
words "Ang Tibay" in connection with pants and shirts, because those articles
do not belong to the same class of merchandise as shoes and slippers.
The question raised by petitioner involve the scope and application of
sections 3,7, 11, 13, and 20 of the Trade-Mark Law (Act No. 666.) Section 3
provides that "any person entitled to the exclusive use of a trade-mark to
designate the origin or ownership of goods he has made or deals in, may
recover damages in a civil actions from any person who has sold goods of a
similar kind, bearing such trade-mark . . . The complaining party . . . may
have a preliminary injunction, . . . and such injunction upon final hearing, if
the complainant's property in the trade-mark and the defendant's violation
thereof shall be fully established, shall be made perpetual, and this injunction
shall be part of the judgment for damages to be rendered in the same
cause." Section 7 provides that any person who, in selling his goods, shall give
them the general appearance of the goods of another either in the
wrapping of the packages, or in the devices or words thereon, or in any
other feature of their appearance, which would be likely to influence
purchasers to believe that the goods offered are those of the complainant,
shall be guilty of unfair competition, and shall be liable to an action for
damages and to an injunction, as in the cases of trade-mark infringement
under section 3. Section 11 requires the applicant for registration of a trade-
mark to state, among others, "the general class of merchandise to which the
trade-mark claimed has been appropriated." Section 13 provides that no
alleged trade-mark or trade name shall be registered which is identical with
a registered or known trade-mark owned by another and appropriate to
the same class of merchandise, or which to nearly resembles another
person's lawful trade-mark or trade-name as to be likely to cause confusion
or mistake in the mind of the public, or to deceive purchasers. And section 2
authorizes the Director of Commerce to establish classes of merchandise for
the purpose of the registration of trade-marks and to determine the
particular description of articles included in each class; it also provides that
"an application for registration of a trade-mark shall be registered only for
one class of articles and only for the particular description of articles
mentioned in said application."
We have underlined the key words used in the statute: "goods of a similar
kin," "general class of merchandise," "same class of merchandise," "classes of
merchandise," and "class of articles," because it is upon their implications that
the result of the case hinges. These phrases, which refer to the same thing,
have the same meaning as the phrase "merchandise of the same descriptive
properties" used in the statutes and jurisprudence of other jurisdictions.
The burden of petitioner's argument is that under sections 11 and 20 the
registration by respondent of the trade-mark "Ang Tibay" for shoes and
slippers is no safe-guard against its being used by petitioner for pants and
shirts because the latter do not belong to the same class of merchandise or
articles as the former; that she cannot be held guilty of infringement of trade-
mark under section 3 because respondent's mark is not a valid trade-mark,
nor has it acquired a secondary meaning; that pants and shirts do not
possess the same descriptive properties as shoes and slippers; that neither
can she be held guilty of unfair competition under section 7 because the use
by her of the trade-mark "Ang Tibay" upon pants and shirts is not likely to
mislead the general public as to their origin or ownership; and that there is
now showing that she in unfairly or fraudulently using that mark "Ang Tibay"
against the respondent. If we were interpreting the statute for the first time
and in the first decade of the twentieth century, when it was enacted, and
were to construe it strictly and literally, we might uphold petitioner's
contentions. But law and jurisprudence must keep abreast with the progress
of mankind, and the courts must breathe life into the statutes if they are to
serve their purpose. Our Trade-mark Law, enacted nearly forty years ago, has
grown in its implications and practical application, like a constitution, in virtue
of the life continually breathed into it. It is not of merely local application; it
has its counterpart in other jurisdictions of the civilized world from whose
jurisprudence it has also received vitalizing nourishment. We have to apply
this law as it has grown and not as it was born. Its growth or development
abreast with that of sister statutes and jurisprudence in other jurisdictions is
reflected in the following observation of a well-known author:
This fundamental change in attitude first manifested itself in the year 1915-
1917. Until about then, the courts had proceeded on the theory that the
same trade-mark, used on un-like goods, could not cause confusion in trade
and that, therefore, there could be no objection to the use and registration
of a well-known mark by a third party for a different class of goods. Since
1916 however, a growing sentiment began to arise that in the selection of a
famous mark by a third party, there was generally the hidden intention to
"have a free ride" on the trade-mark owner's reputation and good will.
(Derenberg, Trade-Mark Protection & Unfair Trading, 1936 edition, p. 409.)
In the present state of development of the law on Trade-Marks, Unfair
Competition, and Unfair Trading, the test employed by the courts to
determine whether noncompeting goods are or are not of the same class is
confusion as to the origin of the goods of the second user. Although two
noncompeting articles may be classified under two different classes by the
Patent Office because they are deemed not to possess the same descriptive
properties, they would, nevertheless, be held by the courts to belong to the
same class if the simultaneous use on them of identical or closely similar
trade-marks would be likely to cause confusion as to the origin, or personal
source, of the second user's goods. They would be considered as not falling
under the same class only if they are so dissimilar or so foreign to each other
as to make it unlikely that the purchaser would think the first user made the
second user's goods.
Such construction of the law is induced by cogent reasons of equity and fair
dealing. The courts have come to realize that 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. Then noncompetitive products are sold under the
same mark, the gradual whittling away or dispersion of the identity and hold
upon the public mind of the mark created by its first user, inevitably results.
The original owner is entitled to the preservation of the valuable link between
him and the public that has been created by his ingenuity and the merit of
his wares or services. Experience has demonstrated that when a well-known
trade-mark is adopted by another even for a totally different class of goods,
it is done to get the benefit of the reputation and advertisements of the
originator of said mark, to convey to the public a false impression of some
supposed connection between the manufacturer of the article sold under
the original mark and the new articles being tendered to the public under
the same or similar mark. As trade has developed and commercial changes
have come about, the law of unfair competition has expanded to keep
pace with the times and the element of strict competition in itself has ceased
to be the determining factor. The owner of a trade-mark or trade-name has
a property right in which he is entitled to protection, since there is damage to
him from confusion of reputation or goodwill in the mind of the public as well
as from confusion of goods. The modern trend is to give emphasis to the
unfairness of the acts and to classify and treat the issue as a fraud.
A few of the numerous cases in which the foregoing doctrines have been
laid down in one form or another will now be cited: (1) In Teodoro Kalaw Ng
Khe vs. Level Brothers Company (G.R. No. 46817), decided by this Court on
April 18, 1941, the respondent company (plaintiff below) was granted
injunctive relief against the use by the petitioner of the trade-mark "Lux" and
"Lifebuoy" for hair pomade, they having been originally used by the
respondent for soap; The Court held in effect that although said articles are
noncompetitive, they are similar or belong to the same class. (2) In Lincoln
Motor Co. vs. Lincoln Automobile Co. (44 F. [2d], 812), the manufacturer of
the well-known Lincoln automobile was granted injunctive relief against the
use of the word "Lincoln" by another company as part of its firm name. (3)
The case of Aunt Jemima Mills Co. vs. Rigney & Co. (247 F., 407), involved the
trade-mark "Aunt Jemima," originally used on flour, which the defendant
attempted to use on syrup, and there the court held that the goods, though
different, are so related as to fall within the mischief which equity should
prevent. (4) In Tiffany & Co., vs. Tiffany Productions, Inc. (264 N.Y.S., 459; 23
Trade-mark Reporter, 183), the plaintiff, a jewelry concern, was granted
injunctive relief against the defendant, a manufacturer of motion pictures,
from using the name "Tiffany." Other famous cases cited on the margin,
wherein the courts granted injunctive relief, involved the following trade-
marks or trade-names: "Kodak," for cameras and photographic supplies,
against its use for bicycles. 4 "Penslar," for medicines and toilet articles, against
its use for cigars; 5 "Rolls-Royce," for automobiles. against its use for radio
tubes; 6 "Vogue," as the name of a magazine, against its use for hats; 7 "Kotex,"
for sanitary napkins, against the use of "Rotex" for vaginal syringes; 8 "Sun-
Maid," for raisins, against its use for flour; 9 "Yale," for locks and keys, against its
use for electric flashlights; 10 and "Waterman," for fountain pens, against its
use for razor blades. 11lawphil.net
Against this array of famous cases, the industry of counsel for the petitioner
has enabled him to cite on this point only the following cases: (1) Mohawk
Milk Products vs. General Distilleries Corporation (95 F. [2d], 334), wherein the
court held that gin and canned milk and cream do not belong to the same
class; (2) Fawcett Publications, Inc. vs. Popular Mechanics Co. (80 F. [2d],
194), wherein the court held that the words "Popular Mechanics" used as the
title of a magazine and duly registered as a trade-mark were not infringed by
defendant's use of the words "Modern Mechanics and Inventions" on a
competitive magazine, because the word "mechanics" is merely a
descriptive name; and (3) Oxford Book Co. vs. College Entrance Book Co.
(98 F. [2d], 688), wherein the plaintiff unsuccessfully attempted to enjoin the
defendant from using the word "Visualized" in connection with history books,
the court holding that said word is merely descriptive. These cases cites and
relied upon by petitioner are obviously of no decisive application to the case
at bar.
We think reasonable men may not disagree that shoes and shirts are not as
unrelated as fountain pens and razor blades, for instance. The mere relation
or association of the articles is not controlling. As may readily be noted from
what we have heretofore said, the proprietary connotation that a trade-
mark or trade-name has acquired is of more paramount consideration. The
Court of Appeals found in this case that by uninterrupted and exclusive use
since 1910 of respondent's registered trade-mark on slippers and shoes
manufactured by him, it has come to indicate the origin and ownership of
said goods. It is certainly not farfetched to surmise that the selection by
petitioner of the same trade-mark for pants and shirts was motivated by a
desire to get a free ride on the reputation and selling power it has acquired
at the hands of the respondent. As observed in another case, 12 the field from
which a person may select a trade-mark is practically unlimited, and hence
there is no excuse for impinging upon or even closely approaching the mark
of a business rival. In the unlimited field of choice, what could have been
petitioner's purpose in selecting "Ang Tibay" if not for its fame?
Lastly, in her fifth assignment of error petitioner seems to make a frantic effort
to retain the use of the mark "Ang Tibay." Her counsel suggests that instead of
enjoining her from using it, she may be required to state in her labels affixed
to her products the inscription: "Not manufactured by Toribio Teodoro." We
think such practice would be unethical and unworthy of a reputable
businessman. To the suggestion of petitioner, respondent may say, not
without justice though with a tinge of bitterness: "Why offer a perpetual
apology or explanation as to the origin of your products in order to use my
trade-mark instead of creating one of your own?" On our part may we add,
without meaning to be harsh, that a self-respecting person does not remain
in the shelter of another but builds one of his own.
The judgment of the Court of Appeals is affirmed, with costs against the
petitioner in the three instances. So ordered.
[G.R. No. L-8072. October 31, 1956.]
LIM HOA, Petitioner, vs. DIRECTOR OF PATENTS, Respondent.
DECISION
MONTEMAYOR, J.:
On April 26, 1949, the Petitioner, Lim Hoa, filed with the Patent Office an
application for the registration of a trademark, consisting of a representation
of two midget roosters in an attitude of combat with the word “Bantam”
printed above them, he claiming that he had used said trademark on a food
seasoning product since April 25 of that year. The application was published
in the Official Gazette in its issue of February, 1953, released for circulation on
April 18, of the same year. On April 30, 1953, the Agricom Development Co.,
Inc., a domestic corporation, opposed the application on several grounds,
among others, that the trademark sought to be registered was confusingly
similar to its register mark, consisting of a pictorial representation of a hen
with the words “Hen Brand” and “Marca Manok”, which mark or brand was
also used on a food seasoning product, before the use of the trademark by
the applicant.
It is a fact that the family of C. Javier Advincula, since the year 1946, had
adopted and used as a trademark of said food seasoning product
manufactured by it, the pictorial representation of a hen. In 1947, the
members of the Advincula family organized the Agricom Development Co.,
Inc., the Oppositor in this case, and said corporation took over the
manufacture of the same food product of the Advincula family, including
the use of the brand of the pictorial representation of a hen but adding to it
the word “Hen”. In the year 1948, an addition was made to the brand with
the words “Ve-Tsin, Hen Brand” and “Marca Manok,” and since then, on its
food seasoning product at different times, labels were used, in different
colors but bearing the representation of a hen and the words just mentioned.
So that the application to register applicant’s brand, consisting of two
roosters is an attitude of combat, with the word “Bantam” printed above
them, came along after the use and registration of the mark or brand of
the Oppositor corporation and its predecessor, the Advincula family.
After considering the application and the opposition thereto, and after
comparing the two brands, the Director of Patents issued his order dated
June 26, 1954, wherein he found and held that to allow the registration of the
applicant’s trademark would likely cause confusion or mistake or deceive
purchasers, and he refused registration of said trademark, under Rule 178 of
the Revised Rules of Practice in Trademark Cases, 1953. The Petitioner is now
appealling said order.
After a careful examination of the facts above mentioned, and after
comparing the two brands, we do not hesitate to say and to hold that there
is such similarity between the two brands as to cause confusion in the mind of
the public that buys the food seasoning product on the strength and on the
indication of the trademark or brand identifying or distinguishing the same. In
the case of Go Tiong Sa vs. Director of Patents, (95 Phil., 1), we had occasion
to say the following:chanroblesvirtuallawlibrary
“ cralaw 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; chan roblesvirtualawlibrarynor it is
necessary that the infringing label should suggest an effort to imitate. (C.
Neilman Brewing Co. vs. Independent Brewing Co., 191 F. 489, 495, citing
Eagle White Lead Co. v. Pflugh (CC) 180 Fed. 579). The question at issue in
cases of infringement of trademarks is whether the use of the marks involved
would be likely to cause confusion or mistakes in the mind of the public or
deceive purchasers. (Auburn Rubber Corporation vs. Honover Rubber Co.,
107 F 2d 588, 590, citing Procter and Gamble Co. vs. J. L. Prescot Co., 49 F 2d
959, 18 CCPA, Patents, 1433; chan roblesvirtualawlibraryPepsodent Co. vs.
Comfort Manufacturing Co., 83 F 2d 906; chan roblesvirtualawlibrary23
CCPA, Patents, 124)”
The danger of confusion in trademarks and brands which are similar may not
be so great in the case of commodities or articles of relatively great value,
such as, radio and television sets, air conditioning units, machinery, etc., for
the prospective buyer, generally the head of the family or a businessman,
before making the purchase, reads the pamphlets and all literature
available, describing the article he is planning to buy, and perhaps even
makes comparisons with similar articles in the market. He is not likely to be
deceived by similarity in the trademarks because he makes a more or less
thorough study of the same and may even consult his friends about the
relative merit and performance of the article or machinery, as compared to
others also for sale. But in the sale of a food seasoning product, a kitchen
article of everyday consumption, the circumstances are far different. Said
product is generally purchased by cooks and household help, sometimes
illiterate who are guided by pictorial representations and the sound of the
word descriptive of said representation. The two roosters appearing in the
trademark of the applicant and the hen appearing on the trademark of
the Oppositor, although of different sexes, belong to the same family of
chicken, known as manok in all the principal dialects of the Philippines, and
when a cook or a household help or even a housewife buys a food
seasoning product for the kitchen the brand of “Manok” or “Marca Manok”
would most likely be upper most in her mind and would influence her in
selecting the product, regardless of whether the brand pictures a hen or a
rooster or two roosters. To her, they are all manok. Therein lies the confusion,
even deception.
We do not see why applicant could not have stretched his imagination even
a little and extended his choice to other members of the animal kingdom, as
a brand to differentiate his product from similar products in the market. In a
similar case decided by this Tribunal wherein, although one brand consisting
of the representation of a rooster was already being used by one party,
another party wanted to register a similar brand, consisting of two roosters on
a similar product, namely, candy, this Court said:chanroblesvirtuallawlibrary
“Counsel for Defendant insists that there is no real resemblance between a
picture of one rooster and a picture of two roosters; chan
roblesvirtualawlibrarythat no person could or would be deceived by the use
by the Defendant of a trade-mark wholly distinct from that of
the Plaintiff; chan roblesvirtualawlibrarythat the fact that the Defendant used
two roosters as its trademark clearly discloses its innocence of any intent to
deceive, since a comparison of the trade-mark of the Plaintiff with that of
the Defendant makes apparent at once that was not intended to be an
imitation of the other.
“We ask, however, why, with all the birds in the air, and all the fishes in the
sea, and all the animals on the face of the earth to chose from,
the Defendant company selected two roosters as its trade- mark, although its
directors, and managers must have been well aware of the long-continued
use of a rooster by the Plaintiff in connection with the sale and advertisement
of his goods?
“There is nothing in the picture of one or more roosters which in itself is
descriptive of the goods sold by the Plaintiff or by
the Defendant corporation, or suggestive of the quality of these goods. A
cat, or dog, a carabao, a shark, or an eagle stamped upon the container in
which candies are sold would serve as well as a rooster for purposes of
identification as the product of Defendant’s factory. Why
did Defendant select two roosters as its trade-mark? We cannot doubt that it
was because the Plaintiff’s candies had acquired a certain reputation under
the trade-mark of a rooster, and the Defendant corporation hoped to profit
unjustly by that reputation. Defendant knew that the use of a single rooster
would be prohibited as a technical infringement of Plaintiff’s trade-mark, but
it hoped that it could avoid that danger by the use of two roosters; chan
roblesvirtualawlibraryand at the same time get such advantage as it must
have believed it could secure from the use of a design on the containers of
its goods, not absolutely identical with that used by the Plaintiff, but so similar
in the dominant idea as to confuse or mislead the purchasers cralaw .”
(Clarke vs. Manila Candy Co., 100 Phil. 36)
In view of the foregoing, the order appealed from is hereby affirmed, with
costs. We do not deem it necessary to discuss and rule upon the other
questions raised in the appeal.
G.R. No. L-13947 June 30, 1960
CUANCHOW SOY & CANNING CO., petitioner,
vs.
THE DIRECTOR OF PATENTS and ROSARIO VILLAPANIA, respondents.
Jose W. Diokno for petitioner.
Agbayani, Galla and Abalos for respondents.
MONTEMAYOR, J.:
This is a petition to review the decision of the Director of Patents, dated May
16, 1958, dismissing the opposition of petitioner Chuanchow Soy & Canning
Co. to the application of respondent Rosario Villapania to register the
trademark "Bangos Brand", on the ground "that the trademark BANGOS and
the trademark CARP and the representation of a Carp fish do not resemble
each other as to be likely to cause confusion, mistake or to deceive the
purchaser."
The facts in the case are simple and not disputed. Both petitioner
Chuanchow Soy & Canning Co. and respondent Rosario Villapania are
engaged in the manufacture and sale of soy sauce. Since 1950, petitioner
had been using as trade mark the words "Carp Brand Soy", printed in a
distinctive style of lettering above the drawing of a fish to distinguish its
product, on labels affixed directly to the bottles containing soy sauce, and
on tissue paper in which these bottles were wrapped (Exhibits B and C). In
1953, the Patent Office issued Trademark Registration Certificate 4384 to it for
its aforesaid trademark.
Respondent Villapania since 1956 had been using as trademark of her soy
sauce the name of "Bangos Brand" written in the same distinctive style of
lettering as that of the petitioner's "Carp Brand", above the drawing of the
fish similar to the fish drawing on the trademark of petitioner, on labels also
attached to the bottles containing her soy sauce, and the bottles were
wrapped also in tissue paper bearing a similar design (Exhibits D and E).
On October 12, 1956, Villapania applied for registration of her trademark as
above-described. Upon examination of the trademark, the examiner of the
Office of the Director of Patents made the following ruling:
1. Examiner has taken into consideration a previously registered mark: CARP
BRAND & fish representation for soy sauce of the Chuanchow Soy & Caning
Co., Reg. No. 4384 dated October 27, 1953, and found that the fish
representation closely resembles to applicant's mark as presented in the
drawing. In view thereof, the applicant must submit new drawings and
facsimiles for the word: "BANGOS BRAND" only as shown in the labels
submitted, excluding SOY and fish representation.
Complying with said ruling, respondent Villapania submitted a drawing of the
word "Bangos Brand" only, the same was published in the Official Gazette.
However, she continued and is supposedly still continuing to use the labels
and wrappers Exhibits D and E on the bottles containing her product, which
as already stated, included not only "Bangos Brand" but also the word "Soy"
above the drawing of the fish. So, on October 9, 1957, petitioner company
filed its opposition to respondent's application. The case was submitted on a
stipulation of facts made verbally by them during the hearing. On May 16,
1958, respondent Director of Patents rendered a decision dismissing
petitioner's opposition to the application above-stated, which decision is
now on appeal.
The similarity and resemblance or lack of the same between the two
trademarks can be best appreciated by examining the same as they
appear in the record, particularly, the first page of the petition for review. We
have carefully and painstakingly examined the trademark or label of
petitioner, Exhibit B, and the trademark or label, Exhibit D, which respondent
Villapania sought to register, placed them side by side, and compared them,
and we note and observe a very close resemblance between the two not
only in the style of lettering of the words "Carp" and "Brand" on Exhibit B and
the words "Bangos Brand" on Exhibit D, not only in the style of lettering, but
also in the size of the letters, as well as the word "Soy" and the Chinese
characters underneath the said three words, including the letters beneath
the two fishes, all of which words are correspondingly in the same color, to
say nothing of the similarity of the two fishes not only in their size but even in
the length and position of their respective tails and fins; so that we are fully
convinced of the intention and design of the respondent to imitate as much
as possible in her label, Exhibit D, that of petitioner's, Exhibit B, evidently to
confuse, even to deceive prospective purchasers of soy sauce and thereby
take advantage of and appropriate to herself the goodwill previously
acquired by petitioner in the sale of its product. When two competing labels
are placed together for inspection and still they may confuse an ordinary
person, specially cooks and maids, who as a rule are the one in charge of
buying such household article as soy sauce, there would be more confusion
and doubt when the two labels are not placed together for comparison and
the prospective purchaser is guided only by his memory or recollection that
the soy sauce he or she is planning to buy has as its label the drawing of a
fish with letters and Chinese characters, written in a certain style of lettering
and color. When, as in the present case, 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. There should be no
halfway measures, as was done in this case by the ruling of the examiner
who directed the respondent to amend or modify the labelor trademark she
sought to register by eliminating some portions thereof. As a result, although
the word "Soy" and the drawing of a fish were eliminated, still, the word
"Bangos" and the word "Brand" which are similar to the style of lettering of the
corresponding words in the label, Exhibit B, of petitioner, could still create
confusion or doubt in the mind of prospective purchasers, to say nothing of
the fact that the words "Carp" and "Bangos" both indicate fish, and the
additional fact that both trademarks and labels refer or advertise the same
product, namely, soy sauce.
In the case of Lim Hoa vs. Director of Patents, 101 Phil., 214; 52 Off. Gaz. (17)
7259, we had occasion to say the following:
The danger of confusion in trademarks and brands which are similar may not
be so great in the case of commodities or articles of relatively great value,
such as, radio and television sets, air conditioning units, machinery etc., for
the prospective buyer, generally the head of the family or a businessman,
before making the purchase, reads the pamphlets and all literature
available, describing the article he is planning to buy, and perhaps even
makes comparisons with similar articles in the market. He is not likely to be
deceived by similarity in the trademarks because he makes a more or less
thorough study of the same and may even consult his friends about the
relative merit and performance of the article or machinery, as compared to
others also for sale. But in the sale of food seasoning product a kitchen article
of everyday consumption, the circumstances are far different. Said product is
generally purchased by cooks and household help, sometimes illiterate, who
are guided by pictorial representations and the sound of the word
descriptive of said representation. The two roosters appearing in the
trademark of the applicant and the hen appearing on the trademark of the
oppositor, although of different sexes, belong to the same family of the
chicken, known as manok in all the principal dialects of the Philippines, and
when a cook or a household help or even a housewife buys a food
seasoning products for the kitchen, the brand of "Manok" or "Marca Manok"
would most likely be uppermost in her mind and would influence her in
selecting the product, regardless of whether the brand pictures a hen or a
rooter or two roosters. To her, they are all manok. Therein lies the confusion,
even deception.
We do not see why applicant could not have stretched his imagination even
a little and extended his choice to other members of the animal kingdom, as
a brand to differentiate his product from similar products in the market. . . .
Why the respondent in the present case could not have selected as the
principal figure in her label some animal living in the surface of the earth, like
a dog, cat, monkey, etc., or an article or furniture, like a table, chair, or if she
was determined to select a creature living in the sea, that of a crab, lobster,
or octopus, is hard to understand. She had to select fish, which as already
stated, she pictured in her label similar in size, shape and form as that
appearing in the already used and registered label of petitioner. The Director
of Patents should as much as possible discourage all attempts at imitation of
labels already used and registered, as already stated, to avoid confusion, to
protect the public from purchasing the wrong article or brand and also to
give protection to those who have established goodwill, reputation and
name in the manufacture and the sale of their products by means of a label
of long standing and use and duly registered.
Another circumstance against the registration of the trademark or label of
respondent is that she would appear not to have used the amended or
modified label she presented for registration, but continued to use the
original label or trademark which was refused registration by the Director of
Patents. This indicates not only her desire to continue taking advantage of
the goodwill acquired and established by the petitioner, but it equally shows
that she had not used the label or trademark now being applied for by her,
despite the fact that the law requires at least two months previous use prior
to application for registration.1
In view of the foregoing, the appealed decision is hereby reversed; the
opposition of petitioner to respondents application is hereby sustained and
respondent's application for registration is denied, with costs against
respondent.
G.R. No. L-14086 January 20, 1961
ASARI YOKO CO., LTD., petitioner,
vs.
KEE BOC and CELEDONIO AGRAVA, Director of Patents, respondents.
LABRADOR, J.:
This is a petition for the review of a decision of the Director of Patents finding
Kee BOC, respondent herein, the first user of the trade mark "RACE" and
design (representation of three men running a race) and therefore the owner
of this trade mark, and, dismissing the opposition of Asari Yoko Co., Ltd.,
petitioner herein, on the ground that it will not be damaged by the
registration of said trade mark.
On August 27, 1953, Kee Boc, a Chinese citizen, filed a petition for the
registration of the trade mark "RACE" and design to be used in shirts and
undershirts manufactured by him. He claims to have first used the trade mark
in commerce on May 17, 1952, basing the design on a movie picture (t.s.n.,
690) he had seen with Domingo Cabatingan, his employee, who
corroborated to this fact (tsn 674).
Opposition was interposed by Asari Yoko Co., Ltd., a Japanese corporation,
on the ground that it is the owner if the trade mark because the same is
registered in Japan and in the Philippines, registration in the latter having
been made in August, 1929, under the provisions of Act No. 666 and is valid
for 30 years; that the trade mark as been in continuous use in commerce in,
and trade with the Philippines since its registration until the early art of 1942,
and then again after the liberation of the Philippines up to the present; that
the trade mark was ever abandoned by the registrant and that it will be
damaged by the registration of the same.
After due hearing, the Director of Patents dismissed the opposition and
adjudged applicant Kee Boc. the owner the trade mark. Hence this petition
for review. Petitioner assigns seven errors committed by the Director of
Patents, to wit —
1. The Director of Patents erred in holding that the Petitioner has failed to
prove registration in the Philippines of the subject trade mark before World
War II. .
2. The Director of Patents erred inholding that petitioner "has failed to
establish satisfactorily its claim of 'prior' use" of the subject trade mark in the
Philippines before World War II.
3. The Director of Patents erred in holding that granting that Petitioner "did
have such 'prior use its rights acquired by such prior use were automatically
for feited or lost by it by reason of the war."
4. The Director of Patents erred in holding that there could not have been
used by Petitioner of the subject trade mark in trade or 'commerce" after the
termination of hostilities in World War II, notwithstanding the existence of a
trade arrangement or agreement entered into between the Philippines and
Japan through the Supreme Commander for the Allied Powers.
5. The Director of Patents erred in holding that Petitioner "will not be
damaged by the registration of the trade mark and design in favor of
applicant Kee Boc."
6. The Director of Patents erred in holding that respondent Kee Boc is the "first
user" of the subject trade dent Kee Boc mark in the Philippines.
7. The Director of Patents erred in dismissing the petitioner's opposition to the
application of respondent Kee Boc for the registration of the trade mark
"race" and design.
There is no question that the trade mark "RACE BRAND" applied for is exactly
the same as the trade mark "RACE BRAND" registered in Tokyo, Japan on
June 11, 1937 by Kojiro Asri (Exhibits "G" and "G-1"). Not only is the trade mark,
sought to be registered the actual trade marks for Japanese shirts and
undershirts, belonging to Kojiro Asari, but the very names printed on the
boxes containing shirts and undershirts sold by petitioner — "Race Brand
Gentlemen's Underwear" — are exactly identical to those appearing in the
boxes used by underwear he manufactures applicant for the underwear he
manufactures.
The original facsimile of the trade mark, Exhibit "10" (5 copies), shows clearly
two thin sheets of white paper pasted thereon, to the left side of the design.
When these pasted sheets of white paper were removed, in the course of
the the exhibits (Exhibit "10-b"), it was found that said papers covered the
following words, (1) Registered Trade Mark" in big capital letters, and, (2)
"Made in Occupied Japan in small capital letters. These finding are
conclusive evidence that the trade mark applied for is the very, trade mark
on manufactured goods made in Japan and imported into the Philippines.
So the issues submitted to the Director of Patents were, (1) whether this trade
mark is registered in the Philippines prior to the application of the respondent-
applicant, and, (2) whether petitioner-oppositor had actually used this trade
mark for Japanese goods in the Philippines prior to that of the applicant.
Some employees of the former Bureau of Commerce testified that they had
seen similar trade marks in the office of the said bureau before the war but
they could not definitely that a registered certificate therefor was issued by
the Director of patents. We therefore agree with the latter that the evidence
of prior registration of the trade mark in the Philippines has not been
established by sufficient evidence.
But as to the Prior use of the trade mark by the oppositor, we find the
evidence to be conclusive in favor of the petitioner. The very facsimile of the
trade mark filed by the applicant before the director in connection with his
petition for registration, was taken from a mark actually used on goods
imported from Japan to the Philippines, except that the former does not
contain the inscriptions "REGISTERED TRADE MARK" and "Made in Occupied
Japan", because the inscriptions are covered by a thin piece of paper
pasted on the inscriptions. The trade mark sought to be registered already
belongs to Kojiro Asari, as shown by the certificate of registration thereof in
Tokyo, Japan on February 27, 1987 and June 11, 1937 (Exhibits "G" and 'G-1'
respectively). The trade mark sought to be registered is actually used an
boxes of shirts and undershirts imported to the Philippines from Japan see
(Exhibits "F', "F-1" up to "F-5"). Shirts and undershirts bearing said trade mark
appear to have been imported to the Philippines as early as 1949 (see
Exhibits "E-4" UP to "E-11"). Shirts and undershirts bearing said trade mark were
also imported by Wan Lian Trading of Manila subsequently, as evidenced by
shipping documents, Exhibits "C", "C-4" dated October 27, 1953, and shipping
documents Exhibits "D", "D-1" up to "D-4" dated September 11, 1953.
We are therefore satisfied that the trade marks sought to be registered are
registered in Tokyo, Japan on February, 1937 and June, 1937, and the same
have been used on shirts and undershirts imported into the Philippines as
early as the year 1949, and continuously up to the date of the trial. We
therefore find that the Director of Patents committed the second and sixth
assignments of error.
The third assignment of error is also well taken. There is no evidence that the
trade mark in question was confiscated by the United States in conformity
with the Trading With The Enemy Act. Furthermore, as it was not found that
the trade mark was registered in the Philippines by a Japanese before the
war, it could not have been confiscated under the Trading With The Enemy
Act. How can a non-existent property or trade mark be confiscated?
We also find merit in the fourth assignment of error. It appears that even prior
to the trade agreement between the Supreme Commander for the Allied
Powers (SCAP) and the Republic of the Philippines, the first of which was
entered into on March 3, 1951, goods bearing the trade mark in question
have already come into the Philippines as evidenced by Exhibits "E-4" to "E-
11" inclusive, all of which bear date 1949. During that year the agreement
between Occupied Japan and the Philippines had not yet been entered
into. But Japan was occupied by the United States since 1945 and was
therefore under its lawful control; and since this country has always had
commercial relations with the United State, it can not be said that the entry
of goods from Occupied Japan to the Philippines is illegal, or is not legitimate
trade or commerce which can give rise to any rights to trade marks. The view
of this subject by the Director of Patents, that the trade relations between
Japan and the Philippines is not lawful or legal, is so narrow to be justified by
the relations existing between the United States and the Philippines. Since
1949 up to the present time, commercial relations with Japan had existed
and continued, and the importations of commodities bearing the trade mark
in question into the Philippines had taken place. The lawful entry into the
Philippines of goods bearing the trade mark since 1949 should entitle the
owner of the trade mark to the right to use the same to the exclusion of
others. Modern trade and commerce demands that depredations on
legitimate trade marks of non-nationals should not be countenanced. The
strict condition imposed in the decision of the Director of Patents that a
formal commercial agreement between two nations must, exist before the
trade mark of one may be recognized in the other, is inconsistent with the
freedom of trade recognized in modern times. We therefore find that the
fourth assignment of error is meritorious.
The fifth assignment of error is also sustained. It follows from all the above that
as petitioner-oppositor was the first user of the trade mark in question in the
Philippines, it will be damaged by the registration of the trade mark in the
name of applicant-respondent.
WHEREFORE, the decision sought to be reviewed is hereby reversed, and the
application for registration of the trade mark by Kee Boc is hereby dismissed,
with costs against the respondent-applicant Kee Boc.
G.R. No. L-17501 April 27, 1963
MEAD JOHNSON and COMPANY, petitioner,
vs.
N. V. J. VAN DORP, LTD., ET AL., respondents.
Ross Selph and Carrascoso for petitioner.
Manuel Y. Macias for respondent N. V. J. Van Dorp. Ltd.
Office of the Solicitor General for respondent Director of the Patent Office.
BAUTISTA ANGELO, J.:
On June 2, 1956, N. V. J. Van Dorp, Ltd. a corporation organized under the
laws of Netherlands, located and doing business at Gouda, Netherlands,
filed an application for the registration of the trademark "ALASKA and
pictorial representation of a Boy's Head within a rectangular design (ALASKA
disclaimed)." The trademark was published in an issue of the Official Gazette
which was officially released on June 5, 1956.
Mead Johnson & Company, a corporation organized under the laws of
Indiana, U.S.A., being the owner of the trademark "ALACTA" used for
powdered half-skim milk, which was registered with the Patent Office on
June 12, 1951, filed an opposition on the ground that it will be damaged by
the said registration as the trademark "ALASKA" and pictorial representation
of a Boy's Head within a rectangular design (ALASKA disclaimed), used for
milk, milk products, dairy products and infant's foods, is confusingly similar to
its trademark "ALACTA".
In answer to the opposition the applicant alleged that its trademark and
product "ALASKA" are entirely different from oppositor's trademark and
product "ALACTA", since applicant's product covers milk, milk products, dairy
products and infant's foods which fall under Class 47 Foods and Ingredients
of Foods, while oppositor's products cover pharmaceutical preparations for
nutritional needs which fall under Class 6, which refers to Medicines and
Pharmaceutical Preparations.
Wherefore, the parties respectfully pray that the foregoing stipulation of facts
be admitted and approved by this Honorable Court, without prejudice to
the parties adducing other evidence to prove their case not covered by this
stipulation of facts. 1äwphï1.ñët
After issues were joined, and after due hearing, the Director of the Patent
Office, on August 26, 1960, rendered decision dismissing the opposition and
holding that the trademark sought to be registered does not sufficiently
resemble oppositor's mark "as to be likely when applied to the goods of the
parties to cause confusion or mistake or to deceive purchasers" even if
oppositor's goods, half-skim powdered and powdered whole milk and those
of applicant's condensed and evaporated milk are similar as they have the
same descriptive properties, both goods being milk products.
Hence, oppositor filed the present petition for review.
Petitioner contends that the Director of the Patent Office erred (1) in holding
that the mark which respondent seeks to register does not resemble
petitioner's mark as to be likely when applied to the goods to cause
confusion or mistake or to deceive purchasers, and (2) in holding that the
trademark sought to be registered has become distinctive based on its
extensive sales.
Anent the first point, petitioner seems to dispute the finding of the Director of
the Patent Office by emphasizing the striking similarities existing between the
trademark "ALASKA" which is sought to be registered and that of "ALACTA"
which petitioner has long registered for the protection of its products. Thus, it
is argued, in appearance and sound the trademarks "ALASKA" and "ALACTA"
are sufficiently close. The three vowels are the same in both and the public
would pronounce them short accenting on the second syllable. Both marks
have the same number of letters and the vowels are placed on the same
position. The general form and sound of the words are of marked similarity so
as to suggest the likelihood of confusion. While "ALACTA" and "ALASKA" differ
entirely in meaning, they are confusingly similar in appearance. The three
letter prefixes of both marks are identical. Both marks end with the same
letter "A". The only difference lies in the letters "CT" in "ALACTA" and "SK" in
"ALASKA". And in support of its contention, petitioner cites the case of Esso
Standard Oil Company v. Sun Oil Company, et al., 46 TMR 444, wherein it was
held that SUNVIS and UNIVIS are quite different in sound and meaning but in
their entireties they are confusingly similar in appearance. Said the Court:
As already noted, it found on the basis of the evidence before it that the two
marks are quite different in sound and meaning but that in their entireties the
marks are confusingly similar in appearance, because of their having
identical suffixes and three letter prefixes with the same two letters UN in the
same order.
On the other hand, respondent contends that it is not correct to say that in
passing on the question as to whether the two marks are similar only the
words "ALASKA" and "ALACTA" should be taken into account since this would
be a most arbitrary way of ascertaining whether similarity exists between two
marks. Rather, respondent contends, the two marks in their entirety and the
goods they cover should be considered and carefully compared to
determine whether petitioner's opposition to the registration is capricious or
well-taken. In this connection, respondent invokes the following rules of
interpretation: (1) appellant's mark is to be compared with all of the
oppositor's marks in determining the point of confusion;1 (2) the likelihood of
confusion may be determined by a comparison of the marks involved and a
consideration of the goods to which they are attached;2 and (3) the court
will view the marks with respect to the goods to which they are applied, and
from its own observation arrive at a conclusion as to the likelihood of
confusion.3
It is true that between petitioner's trademark "ALACTA" and respondent's
"ALASKA" there are similarities in spelling, appearance and sound for both are
composed of six letters of three syllables each and each syllable has the
same vowel, but in determining if they are confusingly similar a comparison
of said words is not the only determinant factor. The trademarks in their
entirety as they appear in the respective labels must also be considered in
relation to the goods to which they are attached. The discerning eye of the
observer must focus not only on the predominant words but also on the other
features appearing in both labels in order that he may draw his conclusion
whether one is confusingly similar to the other. Having this view in mind, we
believe that while there are similarities in the two marks there are also
differences or dissimilarities which are glaring and striking to the eye as the
former. Thus we find the following dissimilarities in the two marks:
(a) The sizes of the containers of the goods of petitioner differ from those of
respondent. The goods of petitioner come in one-pound container while
those of respondent come in three sizes, to wit: 14-ounce tin of full
condensed full cream milk; 14-1/2-ounce tin of evaporated milk; and 6-
ounce tin of evaporated milk.
(b) The colors too differ. One of petitioner's containers has one single
background color, to wit: light blue; the other has two background colors,
pink and white. The containers of respondent's goods have two color bands,
yellowish white and red.
(c) Petitioner's mark "ALACTA" has only the first letter capitalized and is written
in black. Respondent's mark "ALASKA" has all the letters capitalized written in
white except that of the condensed full cream milk which is in red.
Again, coming to the goods covered by the trademarks in question, we also
notice the following dissimilarities:
In the petitioner's certificate of registration, it appears that the same covers
"Pharmaceutical Preparations which Supply Nutritional Needs" which fall
under Class 6 of the official classification as Medicines and Pharmaceutical
Preparations", thus indicating that petitioner's products are not foods or
ingredients of foods but rather medicinal and pharmaceutical preparations
that are to be used as prescribed by physicians. On the other hand,
respondent's goods cover "milk, milk products, dairy products and infant's
foods" as set forth in its application for registration which fall under an entirely
different class, or under Class 47 which refers to "Foods and Ingredients of
Foods", and for use of these products there is no need or requirement of a
medical prescription.
In view of the above dissimilarities, the Director of the Patent Office overruled
petitioner's opposition in the following wise:.
Considering the substantial difference in the marks as displayed on the
respective labels of the parties and considering the distinctiveness of the
mark of applicant, acquired from its extensive sales, it is concluded that the
applicant's mark does not resemble opposer's mark as to be likely when
applied to the goods of the parties to cause confusion or mistake or to
deceive purchasers.
We have examined the two trademarks as they appear in the labels
attached to the containers which both petitioner and respondent display for
distribution and sale and we are impressed more by the dissimilarities than by
the similarities appearing therein in the same manner as the Director of the
Patent Office, and because of this impression we are persuaded that said
Director was justified in overruling petitioner's opposition. Hence, we are not
prepared to say that said Director has erred in overruling said opposition.
WHEREFORE, the decision appealed from is affirmed, with costs against
petitioner.
G.R. No. L-18337 January 30, 1965
CHUA CHE, petitioner,
vs.
PHILIPPINES PATENT OFFICE and SY TUO, respondents.
Chipeco & Alcaraz, Jr. for petitioner.
Perfecto E. de Vera for respondents.
PAREDES, J.:
This is a petition to review the decision of the Director of Patents, in Inter
Partes Case No. 161, denying the application of petitioner Chua Che for the
registration of "T.M. X-7" for use on soap Class 51, being manufactured by said
Chua Che, upon the opposition of respondent Sy Tuo.
Under date of October 30, 1958, Chua Che presented with the Philippines
Patent Office a petition praying for the registration in his favor the trade
name "X-7". The petition, states:
The undersigned CHUA CHE, a citizen of China, a resident of 2804 Limay St.,
Tondo, Manila, and doing business at same address, has adopted and used
the trademark "X-7" shown in the accompanying Drawing.
In accordance with the requirements of law, the undersigned declares that
this trademark —
1. Was first used by him on June 10, 1957.
2. Was first used by him in commerce in or with the Philippines on June 10,
1957.
3. Has been continuously used by him in trade in or with the Philippines for
more than one year.
4. Is, on the date of this application, actually used by him on the following
goods, classified according to the Official Classification of Goods (Rule 82):
Class 51 — Soap
5. Is applied to the goods or to the packages containing the same, by
placing thereon a printed label on which the trademark is shown, or by
directly impressing the mark to the goods.
The corresponding declaration, which was under oath, contained, among
others, the following:
3. That he believes himself to be the lawful owner of the trademark sought to
be registered.
4. That the said trademark is in actual use in commerce in or with the
Philippines not less than two months before this application is filed.
5. That no other person, partnership, corporation, or association, to the best
of his knowledge and belief, has the right to use said trademark in the
Philippines, either in the identical form or in any such near resemblance
thereto as might be calculated to deceive.
Under date of July 6, 1959, an Examiner of the Department of Commerce
and Industry, submitted a report recommending the allowance of the
application, which report was approved by the Supervising TM Examiner.
After the Notice of allowance was published in the Official Gazette, as
required, respondent Sy Tuo presented a "Notice of Opposition," dated
October 15, 1959, anchoring said opposition on the following allegations:
1. The registration of the trademark "X-7" as applied for by CHUA CHE will not
only violate the rights and interests of the Oppositor over his registered
trademark "X-7" covered by Certificate of Registration No. 5,000, issued April
21, 1951, but will also tend to mislead the purchasing public and make it
convenient for unscrupulous dealers to pass off the goods of the applicant
CHUA CHE, for those of the oppositor SY TUO, to the injury of both the
oppositor and the public.
2. The registration of the said trademark "X-7" in the name of CHUA CHE will
be in violation of, and will run counter to, Section 4 (d) of Republic Act No.
166, as amended, because it is confusingly similar to the trademark "X-7"
covered by Registration No. 5,000 previously registered to, and being used
by the oppositor and is not abandoned.
The Oppositor SY TUO, doing business as the Western Cosmetic Laboratory
will rely on the following facts:
(a) Oppositor has prior use of the trademark "X-7" as he has been using it
extensively and continuously since July 31, 1952, while the applicant, Chua
Che, allegedly used his trademark only since June 10, 1957.1äwphï1.ñët
(b) Oppositor's mark "X-7" is distinctive and his invented mark and not merely
an ordinary, common and weak mark.
(c) The oppositor and the applicant use the trademark "X-7" for allied and
closely related products.
(d) The oppositor has spent a huge amount by way of advertising and
advertising his "X-7" brand.
(e) The oppositor has spent a big amount in expanding his business for the
manufacture of toilet soap and crystal laundry soap with his already popular
"X-7" brand.
(f) The trademark applied for by the applicant Chua Che consists of the
trademark "X-7" and anyone is likely to be misled as to the source or origin by
the close resemblance or identity with the trademark "X-7" of the oppositor.
Attached to the Opposition were labels (samples) being used by oppositor
on his products, which clearly show "X-7".
Petitioner herein presented an Answer to Notice of Opposition, claiming
among others that the grounds of opposition are not correct, since although
it is admitted that "X-7" is registered in the name of oppositor, said trademark
is not being used on soap, but purely toilet articles. After the presentation of
the Answer the case was heard, wherein the parties presented their
respective evidence, both testimonial and documentary. In the memoranda
of the contenders, they limited the principal issues, thus —
Oppositor SY TUO —
The registration of the trademark "X-7" in the name of applicant CHUA CHE
will likely mislead the public so as to make them believe that said goods are
manufactured or sponsored by or in some way in trade associated with
opposer.
Applicant CHUA CHE —
In Inter Partes proceedings, the principal issue is "priority of adoption and
use." Since opposer has not yet used "X-7" mark on soap, but will still use it,
applicant should be entitled to the registration of the same.
The Director of Patents rendered judgment on January 18, 1961, the pertinent
portions of which read:
Based on those facts there is no question that opposer's first use of the
trademark X-7 on July 31, 1953, is prior to applicant's first use of the mark on
June 10, 1957. The only question then in this case is whether or not purchasers
of X-7 perfume, lipstick and nail polish would likely upon seeing X-7 laundry
soap, attribute common origin to the products or assume that there existed
some kind of trade connection between applicant and opposer.
Opposer's record shows that he has been using since July 31, 1953 the
trademark X-7 on perfume, lipstick and nail polish; that he has spent
substantial amounts of money in building upon the goodwill of this trademark
through advertisements in all kinds of media — through newspapers of
general circulation, by means of billboards in various places in the
Philippines, and also over the radio and television. In these advertisements
opposer has spent about P120,000.00. There is no question that opposer
enjoys a valuable goodwill in the trademark X-7.
The products of the parties, while specifically different, are products intended
for use in the home and usually have common purchasers. Furthermore, the
use of X-7 for laundry soap is but a natural expansion of business of the
opposer. In fact, herein opposer in 1956, prior to the alleged date of first use
by respondent-applicant of the trademark X-7 for laundry soap on June 10,
1957, had made steps in expanding the use of this trademark to granulated
soap. Under these circumstances, it is concluded that the average
purchasers are likely to associate X-7 laundry soap with X-7 perfume, lipstick
and nail polish or to think that the products have common origin or
sponsorship.
IN VIEW OF THE ABOVE FINDINGS, the opposition in this case should be as it is
hereby sustained and consequently Application Serial No. 6941, of Chua
Che, is also hereby rejected.
OPPOSITION SUSTAINED
The above judgment is now before Us, applicant-appellant claiming that it
was error for the Director to conclude that opposer SY TUO had priority to use
the trademark in question, and that the use by appellant of the trademark
"X-7" on granulated soap to be manufactured and sold by him, would likely
mislead purchasers.
At the very outset, we would like to state that in cases of the nature of the
one at bar, only questions of law should be raised, and the only exception to
this rule, meaning that findings of facts may be reviewed, is when such
findings are not supported by substantial evidence (Sec. 2, Rule 44, Revised
Rules). The finding of the Director of Patents Office to the effect that
opposer-appellee Sy Tuo had priority of use and adoption of the trademark
"X-7", is for all intents and purposes, one of fact. This being the case, such
finding becomes conclusive to this Court. Even on this sole issue alone, the
petition for review must fall.
However, there are other matters which must be clarified. For instance, the
fact that appellee has not yet used the trademark "X-7" on granulated soap,
the product on which appellant wants to use the said trademark. The
circumstance of non-actual use of the mark on granulated soap by
appellee, does not detract from the fact that he has already a right to such
a trademark and should, therefore, be protected. The observation of the
Director of Patents to the effect that "the average purchasers are likely to
associate X-7 laundry soap with X-7 perfume, lipstick and nail polish or to think
that the products have common origin or sponsorship," is indeed well taken.
It has been pointed out by appellant that the product upon which the
trademark X-7 will be used (laundry soap) is different from those of
appellee's, and therefore no infringement and/or confusion may result. We
find no merit in the above contention, for it has been held that while it is no
longer necessary to establish that the goods of the parties possess the same
descriptive properties, as previously required under the Trade Mark Act of
1905, registration of a trademark should be refused in cases where there is a
likelihood of confusion, mistake, or deception, even though the goods fall
into different categories. (Application of Sylvan Sweets Co., 205 F. 2nd, 207.)
The products of appellee are common household items nowadays, in the
same manner as laundry soap. The likelihood of purchasers to associate
those products to a common origin is not far-fetched. Both from the
standpoint of priority of use and for the protection of the buying public and,
of course, appellee's rights to the trademark "X-7", it becomes manifest that
the registration of said trademark in favor of applicant-appellant should be
denied.
PREMISES CONSIDERED, the decision sought to be reviewed should be, as it is
hereby affirmed in all respects, with costs against appellant CHUA CHE in
both instances.
G.R. No. L-17901 October 29, 1965
OPERATORS, INCORPORATED, petitioner,
vs.
THE DIRECTOR OF PATENTS, ET AL., respondents.
Rafael R. Lasam for petitioner.
Ponce Enrile, Siguion Reyna, Montecillo & Belo for respondent National Biscuit
Company.
Office of the Solicitor General for respondent Director of Patents.
MAKALINTAL, J.:
Petitioner, a domestic corporation, applied to the Philippine Patent Office for
registration of AMBISCO as a trademark for its locally manufactured candy
products. It has been using said trademark since May 1956 by virtue of two
contracts with the American Biscuit Company, also a domestic corporation.
The National Biscuit Company opposed the application, having previously
registered NABISCO as trademark for its own bakery goods, such as biscuits,
crackers, cakes and wafers. The oppositor, a corporation organized in the
United States, has had the said trademark registered in the Philippines since
1930, and renewed the registration in 1948 under the latest trademark law.
In his decision of September 20, 1960 the Director of Patents defined the
issues in this case to be: (1) whether or not the two trademarks aforesaid are
so similar to each other as to cause confusion, mistake or deception of
purchasers; and (2) whether or not the applicant had a right in the first place
to apply for registration of AMBISCO as a trademark at all. And reaching an
affirmative conclusion on the first issue, the Director denied the application
without considering it necessary to resolve the second. Petitioner moved to
reconsider, and upon denial of the motion brought up the case to this Court
for review.
The second issue commands first consideration. Under section 2 of Republic
Act No. 166, as amended by section 1 of Republic Act No. 865, trademarks,
tradenames, and service marks, owned by persons, corporations,
partnerships or associations domiciled in the Philippines or in any foreign
country may be registered here provided certain conditions enumerated in
the same section are complied with. The right to register, as may be noted, is
based on ownership. In the case of the trademark AMBISCO, the evidence
shows that it is owned by the American Biscuit Co., Inc., and not by petitioner
Operators, Inc. Such evidence consists of the certification signed jointly by
Jorge B. Vargas and by Eu Chua Leh, presidents of the said Corporations,
respectively, as follows (Exh. 2):
On September 26, 1953, and on June 12, 1954, the American Biscuit Co., Inc.,
and the Operators Incorporated, both corporations organized under the
laws of the Philippines, entered into contracts, and under such contracts, the
Operators Incorporated is authorized by the American Biscuit Co., Inc. to
operate the candy business of the latter and among the various terms and
stipulations in said contracts, the Operators Incorporated agreed to distinctly
label and display all products manufactured and sold by it as products of the
American Biscuit Co., Inc. and that all the trademarks contained in such
labels shall be considered as property of the American Biscuits Co., Inc.
Petitioner objects to the consideration of the question of ownership of the
trademark as an issue on the ground that it was not raised by respondent
either in its opposition or in its memorandum filed after the parties had
adduced their evidence. In the first place respondent could not have known
at the outset that petitioner was not the owner of the trademark it was
seeking to register. That fact was brought out for the first time when the
certification quoted above was presented. Secondly, it was incumbent upon
petitioner, as applicant, to prove that it had a right to register the trademark
applied for and consequently, to show compliance with all the legal
requisites including ownership thereof. An application for registration under
the Patent Law is not an ordinary litigious controversy between private
parties. Public interest is involved and all questions as to whether or not the
law is satisfied may be considered by the Patent Office or by the Court even
though not specifically raised by either of the parties.
On the other issue, we find no cogent reason to disagree with the Director of
Patents that "considering the similarities in appearance and sound between
the marks AMBISCO and NABISCO, the nature and similarity of the products
of the parties together with the fact that opposer's NABISCO has been used
in commerce in the Philippines for more than fifty five (55) years before
AMBISCO was adopted by applicant, confusion of purchasers is likely.
In the case of Co Tiong vs. Director of Patents, 95 Phil. 1, this Court said:
... 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 is it
necessary that the infringing label should suggest an effort to imitate. (G.
Heilman Brewing Co. vs. Independent Brewing, Co., 191 F. 489, 495, citing
Eagle White Lead Co. vs. Pflugh [CC] 180 Fed. 579). ...
... The ordinary customer does not Scrutinize the details of the label; he
forgets or overlooks these, but retains a general impression, or a central
figure, or a dominant characteristic. The reason for the above has been
explained in the following manner:
"... This rule has a basis in experience. The average person usually will not, and
often cannot, take in at a casual glance all, or even a large part of the
details of what he looks at. What part or parts of two trademarks which are
alleged to be similar does the average ordinary buyer see when he looks at
them? What features of them are remembered by the average buyer? We
do not really hear all that is spoken in our hearing. Far from all we see or hear
casually is retained sufficiently clearly or in sufficient detail for us to get a
lasting impression of it which we can remember when we encounter the
mark again. The importance of this rule is emphasized by the increase of
radio advertising in which we are deprived of the help of our eyes and must
depend entirely on the ear.
xxx xxx xxx
"The question of infringement is to be determined by the test of dominancy.
The dissimilarity in size, form and color of the label and the place where
applied are not conclusive. If the competing label contains the trademark of
another, and confusion or deception is likely to result, infringement takes
place, regardless of the fact that the accessories are dissimilar. Duplication
or exact imitation is not necessary; nor is it necessary that the infringing label
should suggest an effort to imitate. (G. Heilman Brewing Co. vs. Independent
Brewing Co., 191 F. 489., 495, citing Eagle White Lead Co. vs. Pflugh (C.C.),
180 P. 579."
Thus "Celdura" and "Corduara" were held to be confusingly similar in sound
when applied to merchandise of the same descriptive properties (Celanese
Corp. of America vs. Du Pont, 154 F. 2nd 146, 148); and "Lusolin" was
considered as an infringement of the trademark "Sapolin" for the same
reason (Sapolin Co. vs. Balmaceda, et al., 67 Phil. 705).
On the whole we find no reversible error in the decision appealed from and
therefore affirm the same, with costs.
G.R. No. L-21587 May 19, 1966
BRISTOL MYERS COMPANY, petitioner,
vs.
THE DIRECTOR OF PATENTS and UNITED AMERICAN PHARMACEUTICALS,
INC., respondents.
Picazo and Agcaoili for petitioner.
Sycip, Salazar, Luna and Associates for respondent United American
Pharmaceuticals, Inc.
Office of the Solicitor General Arturo A. Alafriz, Assistant Solicitor General A. A.
Torres and Solicitor A. V. Sempio-Diy, for Director of Patents.
BENGZON, J.P., J.:
A petition for registration in the Principal Register of the Patent Office of the
trademark "BIOFERIN" was filed on October 21, 1957 by United American
Pharmaceuticals, Inc. Said domestic corporation first used the afore-stated
trademark in the Philippines on August 13, 1957. It covers "a medicinal
preparation of antihistamic, analgesic, antipyritic with vitamin C and
Bioflavenoid used in the treatment of common colds, influenza and other
febrile diseases with capillary hemmorrhagic tendencies." The product falls
under Class 6 of the official classification, that is, "Medicines and
Pharmaceutical Preparations".
Bristol Myers Co., a corporation of the State of Delaware, U.S.A., filed on
January 6, 1959 an opposition to the application. Said oppositor is the owner
in the Philippines of the trademark "BUFFERIN" under Certificate of Registration
No. 4578 issued by the Philippine Patent Office on March 3, 1954. Its
trademark is also registered in the United States under Certificate of
Registration No. 566190 issued on November 4, 1952. It was first used in the
Philippines on May 13, 1953. The product covered by "BUFFERIN" also belongs
to Class 6, Medicines and Pharmaceutical Preparations. Designated as
"Antacid analgesic", it is intended for relief in cases of "simple headaches,
neuralgia, colds, menstrual pain and minor muscular aches."
The thrust of oppositor's contention was that the registration of the
applicant's trademark "BIOFERIN would violate its rights and interests in its
registered trademark "BUFFERIN" as well as mislead and confuse the public as
to the source and origin of the goods covered by the respective marks, in
view of the allegedly practically the same spelling, pronunciation and letter-
type design of the two trademarks covering goods of the same class.
The parties thereafter filed on January 18, 1961 a joint petition stipulating as
to the facts and submitting the case upon the issue of whether or not,
considering all the factors involved, in both trademarks — as the parties
would discuss in their memoranda,— there will be such confusing similarity
between the two trademarks as will be likely to deceive the purchasing
public.
After submission of memoranda, on June 21, 1963 the Director of Patents
rendered a decision granting the petition for registration and dismissing the
opposition, on the ground that, all factors considered the trademarks in
question are not confusingly similar, so that the damage feared by the
oppositor will not result.
From said decision the oppositor appealed to this Court by petition for review
filed on July 24, 1963. The sole issue raised thereby is: Are the trademarks
"BIOFERIN" and "BUFFERIN", as presented to the public in their respective
labels, confusingly similar?
Appellant contends that confusing similarity will obtain because both
products are primarily used for the relief of pains such as headaches and
colds; and because words "BIOFERIN and "BUFFERIN" are practically the same
in spelling and pronunciation.
In determining whether two trademarks are confusingly similar, the test is
not simply to take their words and compare the spelling and pronunciation
of said words. Rather, it is to consider the two marks in their entirety, as they
appear in the respective labels, in relation to the goods to which they are
attached. Said rule was enunciated by this by this Court through Justice Felix
Bautista Angelo in Mead Johnson & Co. vs. N.V.J Van Dorp, Ltd., L,17501,
April 27, 1963, thus:
It is true that between petitioner's trademark "ALACTA" and respondent's
"ALASKA" there are similarities in spelling, appearance and sound for both are
composed of six letters of three syllables each and each syllable has the
same vowel, but in determining if they are confusingly similar a comparison
of said words is not the only determining factor. The two marks in their
entirety as they appear in the respective labels must also be considered in
relation to the goods to which they are attached. The discerning eye of the
observer must focus not only on the predominant words but also on the other
features appearing in both labels in order that he may draw his conclusion
whether one is confusingly similar to the other. ...
Applying this test to the trademarks involved in this case, it is at once evident
that the Director of Patents did not err in finding no confusing similarity. For
though the words "BIOFERIN" and "BUFFERIN" have the same suffix and similar
sounding prefixes, they appear in their respective labels with strikingly
different backgrounds and surroundings, as to color , size and design.
For convenience we sum up these differences, as follows:
 Accordingly, taken as they will appear to a prospective customer, the
Relevant Factors "BIOFERIN" "BUFFERIN"
trademark in question are not apt to confuse. Furthermore, the product of
the applicant is expressly stated as dispensable only upon doctor's
prescription, while that of oppositor does not require the same. The chances
Rectangular, about 3-3/4"
1. Shape & Size of Label of being confused into purchasing one for the other are therefore all the
Rectangular, 3-3/4"' 1-1/4"
2-1/4"
more rendered negligible. Although oppositor avers that some drugstores sell
"BIOFERIN" without asking for a doctor's prescription, the same if true would
be an irregularity not attributable to the applicant, who has already clearly
2. Color of Label Predominantly Yellow Predominantly White
stated the requirement of a doctor's prescription upon the face of the label
of its product.
3. Color background of
Olive-green Blue Wherefore, the decision of the Director of Patents appealed from is hereby
Word-mark
affirmed without costs. So ordered.

At the top center-word

mark "BIOFERIN"; below it [G.R. No. L-23791. November 23, 1966.]
At left side of label —
are contents of medicine,
Wood-mark "BUFFERIN";CHUNGwith TE, Petitioner, v. NG KIAN GIAB and THE HONORABLE DIRECTOR OF
arranged horizontally;
"Bristol Myers Co., New York, PATENTS, Respondents.
at bottom, center, "United
4. Over-all Layout N.Y." below at right
Pharmaceuticals, Inc." in
side, contents, indications Generoso V. Jacinto for Petitioner.
olivegreen background. At
dosage are grouped
left side — dosage, printed
together, printed Federico Diaz for Respondent.
perpendicularly; at right
perpendicularly
side,indications,also
perpendicularly printed.
SYLLABUS
Capsules — Tablets —
5. Form of product
label says: "50 capsules" label says: "36 Tablets"

1. PATENT OFFICE; FACTUAL FINDING CONCLUSIVE ON SUPREME COURT. —

Label states: The rule is that the findings of fact by the Director of Patents are conclusive
"To be dispensed only by on the Supreme Court, provided they are supported by substantial evidence
6. Prescription No such statement
or on the prescription of a (Anchor Trading Co, v. Director of Patents, G.R. No. L-8004, May 30, 1956).
physician"
2. ID.; APPLICATION FOR TRADEMARK; FILLING DATES OF APPLICATION AS
PROOF OF THE DATE OF FIRST USE. — Where the testimonial evidence for both
parties has been entirely disregarded, and reliance is placed solely on the
filing dates of the applications as proof of the respective dates of first use,
then the abandoned application filed by the junior party applicant becomes
cogent evidence to show that he first used the trademark as of the date of
its filing (Smith v. Hall, 81 L. ed. 1049).
3. ID.; ID.; BURDEN OF PRESENTING CLEAR AND CONVINCING EVIDENCE OF
ADOPTION AND USE AT EARLIER DATE OF TRADEMARK. — Where an applicant
for registration of a trademark states under oath the date of his earliest use,
and later on he wishes to carry back his first date of use to an earlier date, he
then takes on the greater burden of presenting "clear and convincing
evidence" of adoption and use as of that earlier date, (B. R.. Baker Co. v.
Lebow Bros., 150 F. 2d. 580).
4. TRADEMARKS AND TRADENAMES; ESTABLISHMENT OF FIRST USE; DECISION
OF DIRECTOR OF PATENTS, EFFECT ON. — Where it appears that petitioner has
established prior use and adoption of questioned trademark for which
reason he and not respondent Ng Giab is entitled to registration thereof, the
decision of the Director of Patents is reversed. Petitioner is adjudged prior
user of the trademark MARCA PIÑA and representation thereof, and its
registration in his name is hereby ordered.
DECISION
MAKALINTAL, J.:
Petitioner Chung Te interposed this appeal from the decision of the Director
of Patents giving due course to the application of respondent Ng Kian Giab
for registration of the trademark "Marca Piña" and representation thereof,
and rejecting his own application for registration of the same trademark and
a similar representation.
Petitioner filed his application on November 25, 1958, alleging therein that
since January 8, 1951 he had been using the trademark on undershirts (de
hilo), T-shirts, and baby dresses. Because of the confusing similarity between
said trademark and that applied for on July 16, 1957 by Ng Kian Giab, an
interference was declared as existing between the two applications. 1 Ng
Kian Giab stated in his application that he had been using the trademark on
undershirts since December 6, 1955. At the hearing both parties presented
testimonial as well as documentary evidence to prove their respective claims
of priority of adoption and use. Respondent Director of Patents, however,
declared that neither of them "satisfactorily adduced definite and
conclusive proof of their asserted dates of first use of the trademark "Marca
Piña" ; and relying on the rule that "in inter plates cases, when neither of the
parties have (has) satisfactorily proven the date of first use alleged in their
applications, such date shall be confined to the filing date of the said
application," 2 granted the application of senior party applicant Ng Kian
Giab. Junior party applicant Chung Te moved for reconsideration of the
decision, but the Director declined to reconsider, hence this appeal.
Chung Te avers that respondent Director erred (1) in not giving due weight to
his documentary evidence which tends to prove that he has been using the
trademark since 1951; (2) in not finding that respondent Ng Kian Giab had
admitted he first used the trademark only in 1955; (3) in disregarding
petitioner’s prior application No. 5544 and thus finding that respondent had
filed his application earlier then petitioner; and (4) in declaring respondent as
the prior user when there is no substantial evidence in support thereof.
The rule is that the findings of fact by the Director of Patents are conclusive
on the Supreme Court provided they are supported by substantial evidence.
3
Respondent Director disregarded all the evidence submitted by both parties
and relied exclusively on the filing dates of the applications in reaching his
conclusion as to the dates of first use by the senior party applicant and the
junior party applicant, respectively. Even if the evidence for both parties
were entirely unreliable — and we do not find it so — we cannot completely
disregard the fact that on March 13, 1957 an application for the registration
of the same trademark "MARCA PIÑA. and Representation" was filed by
Chung Te (Application No. 5544), although it was subsequently considered
abandoned by reason of his failure to answer 4 the communication of the
Principal Trademark Examiner dated September 25, 1957. 5 To be sure, for the
purpose of determining who was the junior party applicant in the
interference 6 the filing date of said abandoned application may not
properly be considered. But in the peculiar situation obtaining in this case,
where the testimonial evidence for both parties has been entirely
disregarded, and reliance is placed solely on the filing of the applications as
proof of the respective dates of first use, then the abandoned application
filed by the junior party applicant becomes cogent evidence to show that
he first used the trademark as of the date of its filing. 7 Chung Te’s petition in
said abandoned case was duly submitted in evidence and forms part of the
record. (Exhibits X, X-1, to X-3).
The fact, however, is that there is other substantial evidence adduced by
petitioner tending to show that he first used the trademark in question as
early as February 1952. For a long time petitioner was the purchasing agent
for his father-in-law, who owned the Liong Bee Shirt Factory. Afterwards he
decided to go into the same business for himself. His father-in-law, who
theretofore had been using the trademark "Marca Piña," transferred it to him.
In January 1951 he started laying the groundwork for his own factory. Jose
Lim, 8 whom he had engaged the previous year, helped him with the
preliminary paper work, registered the factory’s first books of accounts with
the Bureau of Internal Revenue, and when the business was officially
launched in 1952, continued therein as bookkeeper. In January 1951
petitioner started producing undershirts labeled "Marca Piña." However, he
sold them under the firm name of his father-in-law because he had yet no
license in his own name.
Julieta Francisco testified that she started working with petitioner in 1951. Her
job was to sew skippers and "sandos" and to affix the trademark "Marca Piña"
(Exhibit B-1) and "Pineapple" on the nape of the neck of each finished
undershirt. The trademark, (Exhibit B-2), she added, as well as the legend
indicating the size of the undershirt (Exhibit B-3) were pressed on the lower
portion of the garment (Exhibits E and E-1). The undershirts were then placed
inside cellophane wrappers (Exhibit C), put together in half dozens by means
of paper labels (Exhibits F and F-1), and then placed on box containers
(Exhibit D). All these exhibits (Exhibits C, F, F-1 and D) bear the trademark in
question.
On November 20, 1951 the factory became a member of the Philippine
Chinese Underwear Manufacturers Association (certificate of membership,
Exhibit N). According to Juanito Vitug, secretary of the association, before a
firm was admitted as member it was required to inform the association of the
trademark it was using to identify its products; and he found that among the
files of the association the sample labels "Marca Piña" (Exhibit O) submitted
by petitioner when he applied for membership were included.
On January 31, 1952 the City of Manila granted petitioner a permit to
operate a shirt factory (Exhibit T). On February 1, 1952 he paid the
corresponding business taxes (Exhibits U, U-1 to U-3). On February 5, 1952 the
Bureau of Commerce issued to him a certificate of registration as private
merchant (Exhibit V) and two days later a certificate of registration of the
business name "Liong Sun Shirt Factory" (Exhibit W). It appears from his
application that he had commenced business on February 1, 1952.
He obtained the labels he was using from the Asiatic Press. On February 7,
1952 he bought 5000 pieces of "Marca Piña" box labels (Exhibit Q). On
December 29, 1952 he purchased 100,000 "Marca Piña" shirt labels and
10,000 "Marca Piña" cover labels (Exhibit Q-1). And on July 21, 1954 he
bought 100,000 sheets of "Pineapple Brand" shirt labels (Exhibit Q-2). The box
labels were delivered by him to the Avenue Paper Box Factory, which used
them in covering the cardboard boxes (a sample is Exhibit D) which
petitioner had ordered from it (Exhibit S, dated March 17, 1952; Exhibits S-1 to
S-7). Petitioner also ordered boxes from the De Luxe Cardboard Box from
Factory (Exhibits AA and AA-1). Co In, manager of the Asiatic Printing Press,
affirmed that petitioner had purchased "Marca Piña" labels from him, while
Tan Dy, manager of the Avenue Paper Box Factory, attested that he used
the "Marca Pina" box covers in covering the boxes which petitioner had
ordered from him. 9
On November 19, 1952 petitioner ordered from the Victory Printing Company
500 calendars (Exhibit Z), one of which (Exhibit Z-1) was submitted in
evidence. Written thereon are the words: "LIONG SUN Shirt Factory,
Manufacturer of the well known brand ‘Pineapple and Piña’ the best cotton
and De Hilo Skippers."cralaw virtua1aw library
Petitioner first sold skippers under his firm name "Liong Sun Shirt Factory" on
February 1, 1952 to Tay Liong Kian (Receipt No. 1, Exhibit Z) and Yap Suy Yu
(Receipt No. 2, Exhibit R). Both of these customers regularly bought skippers
and undershirts by the dozens as shown by receipt dated from that time up
to July 14, 1952 (Exhibits L-1 to L-9, R-1 to R-10). Although the receipts do not
state that the merchandise purchased bore the trademark "Marca Piña",
both customers testified that what they bought had that label. At the time of
the hearing Tay Liong Kian 10 had a store in Yangco Market. On the other
hand, at the time he bought undershirts, Yap Suy Yu had a store at Tabora
Market.
According to the statement (Exhibit G-1) attached to the application (Exhibit
G) of respondent Ng Kian Giab he first used the trademark on December 6,
1955. At the hearing he sought to prove that his family had been using it
since 1946. Where an applicant for registration of a trademark states under
oath the date of his earliest use, and later on he wishes to carry back his first
date of use to an earlier date he then takes on the greater burden of
presenting "clear and convincing evidence" of adoption and use as of that
earlier date. 11
To prove such earlier date respondent relies purely on testimonial evidence
consisting of the declarations of his father Ng Kian Soy, his brother Ng Kian
Kee, their supposed seamstress Genoveva Santos, and two customers Diego
Magpantay and Cleto Sarmiento. The substance of their testimony is as
follows: since 1946 Ng Kian Soy operated a general merchandise store, the
Sin Kian Ning Store, 12 in Batangas, Batangas, where he sold polo shirts
bearing the trademark. After the fire in 1953 the family rebuilt their store and
expanded the business by including undershirt with the same trademark. The
name of the store was changed to Hongkong Bazar. From 1946 to 1955 they
merely bought ready made polo shirts and undershirts to each of which they
then sewed the label "Marca Piña" before resale to the public. In 1955 the
father transferred the business to Ng Kian Kee, who put up a factory — the
Hongkong T-Shirt Manufacturer — and started producing undershirts bearing
the trademark. When he decided to continue his studies in 1957, he, in turn,
transferred the business to Respondent.
Such testimonial evidence falls short of the kind of proof required
of Respondent. It is doubtful that respondent’s father would pay Genoveva
Santos as high as P0.02 per label (which did not even bear his name) on polo
shirts which he had purchased ready-made, and which he could very well
have sold without any label. Santos testified that the stamped label used was
only "Marca Piña" without any representation or name of the owner (Exhibit
1-D), while Magpantay said there was the representation of a pineapple on
the labels used by respondent’s family. To explain the discrepancy,
Sarmiento, who testified later, declared that there were ,three kinds of labels
used (Exhibits 1-A, 1-B and 1-C), two of which bore the representation of a
pineapple, and these were attached to goods of better quality.
While Ng Kian Kee declared that they rebuilt their store several months after
the fire in 1953, Sarmiento, who was supposed to be a regular customer, said
they had no store in 1954, and they resumed selling garments only in 1955.
Santos declared that from 1954 up to the time the business moved to Manila
(in 1958) her job was to sew labels on ready made polo shirts. In answer to a
leading question, she added "undershirts." But in 1955 the factory was already
in operation and producing undershirts to which labels were attached in the
process of production, thus rendering her services unnecessary.
The documentary evidence show clearly that respondent’s use began only
in 1955. The business tax receipt in the name of Ng Kian Kee is dated
October 18, 1955 (Exhibit 6). In his application for original registration of the
business name "Hongkong T-Shirt Manufacturer," Ng Kian Kee stated that his
business was that of Manufacturing T-shirts, and that as of that date, October
25, 1955, the same was not yet in operation. It seems that it actually started
operations on December 3, 1955, the date of its Receipt No. 1 (Exhibit 4-A). It
sold its first half dozen undershirts bearing the trademark on December 5,
1955 (Receipt No. 7, Exhibit 4-G). Noteworthy is the fact that in his statement
attached to the application respondent alleged that he first used the
trademark "on or about December 6, 1955," which statement appears to be
the truth.
From all the foregoing we are convinced that petitioner has established prior
use and adoption of the questioned trademark, for which reason he and not
respondent Ng Giab is the one entitled to registration thereof.
WHEREFORE, the decision of the Director of Patents is reversed. Petitioner is
adjudged prior user of the trademark MARCA PIÑA and representation
thereof, and its registration in his name is hereby ordered; and the resolution
of this Court dated December 24, 1965, enjoining petitioner to comply with
the decision appealed from is set aside. Costs against respondent Ng Kian
Giab.
G.R. No. L-19297 December 22, 1966
MARVEX COMMERCIAL CO., INC., petitioner,
vs.
PETRA HAWPIA and CO., and THE DIRECTOR OF PATENTS, respondents.
Sta. Ana and Lasam for petitioner.
A.S. Donato for respondent Petra Hawpia and Co.
Office of the Solicitor General for respondent Director of Patents.
CASTRO, J.:
Petra Hawpia & Co., a partnership duly organized under the laws of the
Philippines and doing business at 543 M. de Santos (Botica Divisoria), Manila
(hereinafter referred to as the applicant), on October 14, 1958 filed a petition
for the registration of the trademark "LIONPAS" used on medicated plaster,
with the Philippine Patent Office, asserting its continuous use in the Philippines
since June 9, 1958.1 The Marvex Commercial Co., Inc., a corporation also
duly organized under the laws of the Philippines (hereinafter referred to as
the oppositor), on July 24, 1959 filed an opposition thereto, alleging that the
registration of such trademark would violate its right to and interest in the
trademark "SALONPAS" used on another medicated plaster, which is
registered in its name under Certificate of Registration 5486, issued by the
Director of Patents on September 29, 1956, and that both trademarks when
used on medicated plaster would mislead the public as they are confusingly
similar.
After due hearing, the Director of Patents in his decision of August 18, 1961
dismissed the opposition and gave due course to the petition, stating in part
that "confusion, mistake, or deception among the purchasers will not likely
and reasonably occur" when both trademarks are applied to medicated
plaster. The oppositor moved to have the decision reconsidered. This motion
was denied in a resolution of November 27, 1961. The oppositor then
interposed the present appeal.
The issues stated by the Director of Patents in his decision are the same ones
now tendered by the oppositor for resolution, namely, (1) Is the applicant the
owner of the trademark "LIONPAS"?; (2) Should the application be rejected
on the ground that the applicant made false representations in placing the
phrase "Reg. Phil. Pat. Off." below the trademark "LIONPAS" on its cartons?,
and (3) Is the trademark "LIONPAS" confusingly similar to the trademark
"SALONPAS"?
We do not consider the second issue of any importance; we will thus
proceed to resolve the first and third issues.
Is the applicant the owner of the trademark "LIONPAS?"
Under sections 2 and 2-A of the Trade Mark Law, as amended, the right to
register trademarks, tradenames and service marks by any person,
corporation, partnership or association domiciled in the Philippines or in any
foreign country, is based on ownership, and the burden is upon the applicant
to prove such ownership (Operators, Inc. vs. The Director of Patents, et al., L-
17901, Oct. 29, 1965).
The Director of Patents found, on the strength of exhibits 5 and 6 for the
applicant, that the latter has "satisfactorily shown" its ownership of the
trademark sought to be registered. Exhibit 5 is a letter dated June 20, 1958,
sent by "OSAKA BOEKI KAISHA, LTD." to the applicant which tends to show
that the former, for a $1 consideration, has assigned, ceded, and conveyed
all its "rights, interests and goodwill in the tradename LIONPAS Medicated
Plaster . . ." in favor of the latter. Exhibit 6 is a joint "SWORN STATEMENT" which
appears to have been executed by the presidents of "OSAKA BOEKI KAISHA,
LTD." and "ASUNARO PHARMACEUTICAL INDUSTRY CO.", and tends to confirm
the contents of exhibit 5.
A careful scrutiny of exh. 5 will reveal, however, that the sender of the letter,
"OSAKA BOEKI KAISHA LTD.", and which appears to be the seller, is merely a
representative of the manufacturer "ASUNARO PHARMACEUTICAL INDUSTRY
CO." There is no proof that as such representative, the former has been
authorized by the latter to sell the trademark in question. Moreover, exh. 5 on
its face appears to have been signed only by someone whose position in the
company's "Sundries Dept." is not described; the signature is not legible. It is
even contradicted by exh. 6. While exh. 5 shows that "OSAKA BOEKI KAISHA,
LTD." is a representative of "ASUNARO PHARMACEUTICAL INDUSTRY CO."; exh.
6 asserts that the former is not a representative of the latter, but that it is the
owner of the trademark "LIONPAS" (par. 2, exh. 6). At all events, neither
averment can be accorded the weight of an assignment of ownership of the
trademark in question under the Trade Mark Law. Exh. 5 is not
acknowledged. Exh. 6 does not bear the acknowledgment contemplated
by the aforesaid law, particularly by the last paragraph of section 37 and
paragraph 2 of section 31 of R.A. 166, as amended, which provide as follows:
The registration of a mark under the provisions of this section shall be
independent of the registration in the country of origin and the duration,
validity or transfer in the Philippines of such registration shall be governed by
the provisions of this Act. (Sec. 37, last par.) (Emphasis ours)
The assignment must be in writing, acknowledged before a notary public or
other officer authorized to administer oaths or perform other notarial acts
and certified under the hand and official seal of the notary or other officer.
(Sec. 31, par. 2)
In this case, although a sheet of paper is attached to exh. 6, on which is
typewritten a certification that the signatures of the presidents of the two
named companies (referring to the signatures in exh. 6) "have been duly
written by themselves", this sheet is unmarked, unpaged, unsigned, undated
and unsealed. We have thumbed the record in quest of any definitive
evidence that it is a correct translation of the Japanese characters found on
another unmarked and unpaged sheet, and have found none.
It follows from the above disquisition that exhs. 5 and 6 are legally insufficient
to prove that the applicant is the owner of the trademark in question.
As a matter of fact, the other evidence on record conclusively belies the
import of exh. 6. Thus exh. A states that the applicant is merely the "exclusive
distributor" in the Philippines of the "LIONPAS" penetrative plaster; exh. A-1
describes the applicant as the "Philippine sole distributor" of "LIONPAS"; exh. B
simply states that "LIONPAS" is "manufactured exclusively for Petra Hawpia &
Co. for distribution in the Philippines."
Not being the owner of the trademark "LIONPAS" but being merely an
importer and/or distributor of the said penetrative plaster, the applicant is not
entitled under the law to register it in its name (Operators, Inc. vs. Director of
Patents, supra).
Upon the third issue, the applicant preliminarily asserts that there is no
justification for this Court to disturb any finding made by the Director of
Patents on appeal. This assertion is not tenable. Although the Director of
Patents is the official vested by law with the power to administer the
registration of trademarks and tradenames, his opinion on the matter of
similarity or dissimilarity of trademarks and tradenames is not conclusive upon
this Court which may pass upon such determination.
The "SALONPAS" mark is not before this Court. Our meticulous examination of
the entire record has failed to yield a sample of such mark. We have
therefore proceeded to analyze the two marks, vis-a-vis each other, on the
basis of what we can derive from the record for a comparative study. And
our conclusion, in disagreement with that of the Director of Patents, is not
based on a comparison of the appearance, form, style, shape, size or format
of the trademarks, which we can not make because, as we have already
observed, the "SALONPAS" mark is not before us, but on a comparison of the
spelling, sound and pronunciation of the two words.
It is our considered view that the trademarks "SALONPAS" and "LIONPAS" are
confusingly similar in sound.
Both these words have the same suffix, "PAS", which is used to denote a
plaster that adheres to the body with curative powers. "Pas, being merely
descriptive, furnishes no indication of the origin of the article and therefore is
open for appropriation by anyone (Ethepa vs. Director of Patents, L-20635,
March 31, 1966) and may properly become the subject of a trademark by
combination with another word or phrase.
Two letters of "SALONPAS" are missing in "LIONPAS"; the first letter a and the
letter s. Be that as it may, when the two words are pronounced, the sound
effects are confusingly similar. And where goods are advertised over the
radio, similarity in sound is of especial significance (Co Tiong Sa vs. Director of
Patents, 95 Phil. 1 citing Nims, The Law of Unfair Competition and Trademarks,
4th ed., vol. 2, pp. 678-679). "The importance of this rule is emphasized by the
increase of radio advertising in which we are deprived of help of our eyes
and must depend entirely on the ear" (Operators, Inc. vs. Director of
Patents, supra).
The following random list of confusingly similar sounds in the matter of
trademarks, culled from Nims, Unfair Competition and Trade Marks, 1947, vol.
1, will reinforce our view that "SALONPAS" and "LIONPAS" are confusingly
similar in sound: "Gold Dust" and "Gold Drop"; "Jantzen" and "Jazz-Sea"; "Silver
Flash" and "Supper-Flash"; "Cascarete" and "Celborite"; "Celluloid" and
"Cellonite"; "Chartreuse" and "Charseurs"; "Cutex" and "Cuticlean"; "Hebe" and
"Meje"; "Kotex" and "Femetex"; "Zuso" and "Hoo Hoo". Leon Amdur, in his book
"TradeMark Law and Practice", pp. 419-421, cites, as coming within the
purview of the idem sonans rule, "Yusea" and "U-C-A", "Steinway Pianos" and
"Steinberg Pianos", and "Seven-Up" and "Lemon-Up". In Co Tiong vs. Director
of Patents, this Court unequivocally said that "Celdura" and "Cordura" are
confusingly similar in sound; this Court held in Sapolin Co. vs. Balmaceda, 67
Phil. 795 that the name "Lusolin" is an infringement of the trademark "Sapolin",
as the sound of the two names is almost the same.
In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very
much alike. Similarity of sound is sufficient ground for this Court to rule that
the two marks are confusingly similar when applied to merchandise of the
same descriptive properties (see Celanese Corporation of America vs. E. I.
Du Pont, 154 F. 2d. 146, 148).
The registration of "LIONPAS" cannot therefore be given due course.
ACCORDINGLY, the decision of the respondent Director of Patents is set
aside, and the petition below of the respondent Petra Hawpia & Co. is
hereby dismissed, at the cost of the latter respondent.
G.R. No. L-23023 August 31, 1968
JOSE P. STA. ANA, petitioner,
vs.
FLORENTINO MALIWAT and TIBURCIO S. EVALLE, in his capacity as Director of
Patents, respondents.
Rodolfo A. Francisco for petitioner.
Catalino S. Maravilla for respondent Florentino Maliwat.
Office of the Solicitor General for respondent Tiburcio S. Evalle.
REYES, J.B.L., J.:
Petition for review of the decision of the respondent Director of Patents in an
interference proceeding1 (Inter Partes Case No. 291), finding for the senior
party applicant, Florentino Maliwat, the herein private respondent, and
against the junior party applicant 2 Jose P. Sta. Ana, the herein petitioner.
On 21 June 1962, Florentino Maliwat filed with the Patent Office an
application for registration of the trademark FLORMANN, which is used on
shirts, pants, jackets and shoes for ladies, men, and children, claiming first use
in commerce of the said mark on 15 January 1962. The claim of first use was
subsequently amended to 6 July 1955.
On 18 September 1962, Jose P. Sta. Ana filed an application for the
registration of the tradename FLORMEN SHOE MANUFACTURERS (SHOE
MANUFACTURERS disclaimed),3 which is used in the business of
manufacturing ladies' and children's shoes. His claim of first use in commerce
of the said tradename is 8 April 1959.
In view of the admittedly confusing similarity between the trademark
FLORMANN and the tradename FLORMEN, the Director of Patents declared
an interference. After trial, the respondent Director gave due course to
Maliwat's application and denied that of Sta. Ana. The latter, not satisfied
with the decision, appealed to this Court.
The petitioner assigned the following errors:
I. The Director of Patents erred in not finding that respondent (senior party-
applicant) failed to establish by clear and convincing evidence earlier date
of use of his mark FLORMANN than that alleged in his application for
registration, hence, respondent is not entitled to carry back the date of first
use to a prior date.
II. The Director erred in holding that respondent is the prior adopter and user
of his mark and in concluding that this is strengthened with documentary
evidence that respondent has been using his mark since 1953 as tailor and
haberdasher.
III. The Director of Patents erred in not finding false and fabricated
respondent's testimonial and documentary evidence and Director should
have applied the rule "Falsus in uno, falsus in omnibus" and should have
disregarded them.
IV. The Director of Patents erred in declaring that Maliwat has the prior right
to the use of his trademark on shoes and such right may be carried back to
the year 1953 when respondent started his tailoring and haberdashery
business and in holding that the manufacture of shoes is within the scope of
natural expansion of the business of a tailor and haberdasher.
V. The Director of Patents erred in failing to apply the stricture that parties
should confine use of their respective marks to their corresponding fields of
business, and should have allowed the concurrent use of tradename
FLORMEN SHOE MANUFACTURERS and the trademark FLORMANN provided it
is not used on shoes.
The findings of the Director that Maliwat was the prior adopter and user of
the mark can not be contradicted, since his findings were based on facts
stipulated in the course of the trial in the interference proceedings. The
recorded stipulation is as follows:
ATTY. FRANCISCO: Your Honor please, with the mutual understanding of the
counsel for the Junior Party and the counsel for the Senior Party in their desire
to shorten the proceedings of this case, especially on matters that are
admitted and not controverted by both parties, they have agreed and
admitted that Mr. Jose P. Sta. Ana, the Junior Party Applicant in this case, is
engaged solely in the manufacture of shoes under the firm name FLORMEN
SHOE MANUFACTURERS since April 1959; that the name FLORMEN SHOE
MANUFACTURERS is registered with the Bureau of Commerce on April 8, 1959,
as shown by Exhibits "A" and "A-2". That Mr. Florentino Maliwat has been
engaged in the manufacture and sale of menswear shirts, polo shirts, and
pants, since 1953, using FLORMANN as its trademark. That Mr. Florentino
Maliwat began using the trademark FLORMANN on shoes on January 1962
and the firm name FLORMANN SHOES under which these shoes with the
trademark FLORMANN were manufactured and sold was first used on
January 1962, having also been registered with the Bureau of Commerce on
January 1962 and with other departments of the government, like the Bureau
of Labor, the Social Security System and the Workmen's Compensation in
1962.
ATTY. MARAVILLA: On behalf of the Senior Party Applicant, represented by
this humble representation, I respectfully concur and admit all those
stipulations above mentioned.
HEARING OFFICER: The court reserves the resolution on those stipulations. We
can proceed now with the redirect examination. (T.s.n., 9 August 1963, pp.
33-34).
And the Rules of Court provide:1äwphï1.ñët
Sec. 2. Judicial admissions. — Admission made by the parties in the
pleadings, or in the course of the trial or other proceedings do not require
proof and can not be contradicted unless previously shown to have been
made through palpable mistake." (Rule 129, Revised Rules of Court).
Since the aforequoted stipulation of facts has not been shown to have been
made through palpable mistake, it is vain for the petitioner to allege that the
evidence for respondent Maliwat is false, fabricated, inconsistent, indefinite,
contradictory, unclear, unconvincing, and unsubstantial.
The rule on judicial admissions was not found or provided for in the old Rules
but can be culled from rulings laid down by this Court previous to its revision
(Irlanda v. Pitargue, 22 Phil. 383; 5 Moran 57-59, 1963 Ed.). It was the law, then
and now, being an application of the law on estoppel.
To be true, petitioner Sta. Ana, through counsel, filed with this Court, on 24
December 1964, a motion entitled "MOTION TO ORDER STENOGRAPHER TO
PRODUCE STENOGRAPHIC NOTES AND TO CORRECT TRANSCRIPT OF
STENOGRAPHIC NOTES; TO ALLOW PETITIONER TO WITHDRAW FROM
STIPULATION OF FACTS AND BE ALLOWED TO PRESENT ADDITIONAL EVIDENCE;
AND TO SUSPEND PERIOD FOR FILING PETITIONER'S BRIEF." The reason given
was that "counsel for Mr. Jose P. Sta. Ana does not recall making any
stipulation or agreement of facts with the counsel of Mr. Florentino Maliwat
on 9 August 1963." Opposition thereto was filed by Maliwat, asserting that the
stenographer took down notes on those things which were stated and
uttered by the parties; that movant should have moved for reconsideration
in the Patent Office, instead of here in the Supreme Court, which is both
untimely and unhonorable.
Upon requirement by this Court, stenographer Cleofe Rosales commented
on petitioner's motion that what she had taken down were actually uttered
by counsel for Sta. Ana, no more, no less; that it was practically and highly
impossible for her to have intercalated into the records the questioned
stipulation of facts because of the length of counsel's manifestations and the
different subject matters of his statements, aside from the concurrence of
Maliwat's counsel and the reservation on the resolution made by the hearing
officer; and that despite her length of service, since 1958, as stenographic
reporter, there had been no complaint against her, except this one.
Counsel for Sta. Ana replied to the foregoing comments, alleging, among
others, that after his receipt of the decision, after 5 May 1964, he bought the
transcript and requested the stenographer to verify the contents of pages 33
and 34 of her transcript but, despite several requests, and for a period of
seven (7) months, for her to produce the stenographic notes, she has failed
to produce said notes.
On 2 April 1965, stenographer Rosales sent to the clerk of this Court the
transcript of stenographic notes.
This Court, on 2 February 1965, denied, for being late the motion to present
additional testimonial and documentary evidence, and, on 8 April 1965,
deferred action on the objection to a portion of the transcript until after
hearing.
We find no substantiation of the charge that the stipulation of facts
appearing on pages 33 to 34 of the transcript of stenographic notes taken
on 9 August 1963 had been intercalated; hence, the presumption that the
stenographer regularly performed her duty stands. The integrity of the record
being intact, the petitioner is bound by it. We can not overlook that even if
his charges were true, it was plain and inexcusable negligence on his part
not to discover earlier the defect he now complains of, if any, and in not
taking steps to correct it before the records were elevated to this Court.
An application for registration is not bound by the date of first use as stated
by him in his application, but is entitled to carry back said stated date of first
use to a prior date by proper evidence; but in order to show an earlier date
of use, he is then under a heavy burden, and his proof must be clear and
convincing (Anchor Trading Co., Inc. vs. The Director of Patents, et al., L-8004,
30 May 1956; Chung Te vs. Ng Kian Giab, et al.,
L-23791, 23 November 1966). In the case at bar, the proof of date of first use
(1953), earlier than that alleged in respondent Maliwat's application (1962),
can be no less than clear and convincing because the fact was stipulated
and no proof was needed.
Petitioner would confine the respondent to the use of the mark FLORMANN
to tailoring and haberdashery only, but not on shoes, on the ground that
petitioner had used the name FLORMEN on shoes since 1959, while the
respondent used his mark on shoes only in 1962; but the Director ruled:
. . . I believe that it is now the common practice among local tailors and
haberdashers to branch out into articles of manufacture which have, one
way or another, some direct relationship with or appurtenance to garments
or attire to complete one's wardrobe such as belts, shoes, handkerchiefs,
and the like, . . . It goes without saying that shoes on one hand and shirts,
pants and jackets on the other, have the same descriptive properties for
purposes of our Trademark Law.
Modern law recognizes that the protection to which the owner of a
trademark mark is entitled is not limited to guarding his goods or business
from actual market competition with identical or similar products of the
parties, but extends to all cases in which the use by a junior appropriator of a
trademark or tradename is likely to lead to a confusion of source, as where
prospective purchasers would be misled into thinking that the complaining
party has extended his business into the field (see 148 ALR 56 et seq; 52 Am.
Jur. 576) or is in any way connected with the activities of the infringer; or
when it forestalls the normal potential expansion of his business (v. 148 ALR,
77, 84; 52 Am. Jur. 576, 577). It is on this basis that the respondent Director of
Patents adverted to the practice "among local tailors and haberdashers to
branch out into articles of manufacture which have some direct
relationship" . . . "to garments or attire to complete one's wardrobe". Mere
dissimilarity of goods should not preclude relief where the junior user's goods
are not too different or remote from any that the owner would be likely to
make or sell; and in the present case, wearing apparel is not so far removed
from shoes as to preclude relief, any more than the pancake flour is from
syrup or sugar cream (Aunt Jemima Mills Co. vs. Rigney & Co., LRA 1918 C
1039), or baking powder from baking soda (Layton Pure Food Co. vs. Church
& Co., 182 Fed. 35), or cosmetics and toilet goods from ladies' wearing
apparel and costume jewelry (Lady Esther Ltd. vs. Lady Esther Corset
Shoppe, 148 ALR 6). More specifically, manufacturers of men's clothing were
declared entitled to protection against the use of their trademark in the sale
of hats and caps [Rosenberg Bros. vs. Elliott, 7 Fed. (2d) 962] and of ladies
shoes (Forsythe & Co. vs. Forsythe Shoe Corp., 254 NYS 584). In all these cases,
the courts declared the owner of a trademark from the first named goods
entitled to exclude use of its trademark on the related class of goods above-
referred to.
It may be that previously the respondent drew a closer distinction among
kinds of goods to which the use of similar marks could be applied; but it can
not be said that the present ruling under appeal is so devoid of basis in law
as to amount to grave abuse of discretion warranting reversal.
Republic Act No. 166, as amended, provides:
Sec. 4. . . . The owner of a trademark, tradename or service-mark used to
distinguish his goods, business or services from the goods, business or services
of others shall have the right to register the same on the principal register,
unless it:
xxx xxx xxx
xxx xxx xxx
(d) Consists of or comprises a mark or tradename which resembles a mark or
tradename registered in the Philippines or a mark or tradename previously
used in the Philippines by another and not abandoned, as to be likely, when
applied to or used in connection with the goods, business or services of the
applicant, to cause confusion or mistake or to deceive purchasers;
xxx xxx xxx
Note that the provision does not require that the articles of manufacture of
the previous user and the late user of the mark should possess the same
descriptive properties or should fall into the same categories as to bar the
latter from registering his mark in the principal register (Chua Che vs. Phil.
Patent Office, et al., L-18337, 30 Jan. 1965.4 citing Application of Sylvan
Sweets Co., 205 F. 2nd, 207).5 Therefore, whether or not shirts and shoes have
the same descriptive properties, or whether or not it is the prevailing practice
or the tendency of tailors and haberdashers to expand their business into
shoes making, are not controlling. The meat of the matter is the likelihood of
confusion, mistake or deception upon purchasers of the goods of the junior
user of the mark and the goods manufactured by the previous user. Here,
the resemblance or similarity of the mark FLORMANN and the name
FLORMEN and the likelihood of confusion, one to the other, is admitted;
therefore, the prior adopter, respondent Maliwat, has the better right to the
use of the mark.
FOR THE FOREGOING REASONS, the appealed decision is hereby affirmed,
with costs against the petitioner.
Lim Kiah vs Kaynee - http://www.federislaw.com.ph/wp-
content/themes/federis/files/KIAH%20vs.%20THE%20KAYNEE%20COMPANY%2
0[G.R.%20No.%20L-24802,%20October%2014,%201968].pdf
G.R. No. L-26557 February 18, 1970
AMERICAN WIRE & CABLE COMPANY, petitioner,
vs.
DIRECTOR OF PATENTS and CENTRAL BANAHAW INDUSTRIES, respondents.
Sotero H. Laurel and Florencio Z. Sioson for petitioner.
Celso P. Mariano for respondents.
REYES, J.B.L., J.:
Appeal filed by the American Wire & Cable Company, owner of the
registered trademark DURAFLEX for electric wires, questioning the correctness
of the decision of the Director of Patents (in Inter Partes Case No. 290)
holding that the label DYNAFLEX and Device for electric wires, sought to be
registered by the Central Banahaw Industries, Inc., is not similar to herein
appellant's patented mark.
On 2 June 1962, Central Banahaw Industries, Inc., applied with the Director of
Patents for registration of the trademark DYNAFLEX and Device to be used in
connection with electric wires, class 20, which mark applicant allegedly had
been using since 29 March 1962. The American Wire and Cable Co., Inc.,
another domestic corporation and authorized user since 10 April 1958 of the
registered trade mark DURAFLEX and Globe representation, for electric wires,
apparatus, machines and supplies, class 20, opposed the application on the
ground that applicant's use of the trade mark DYNAFLEX would cause
confusion or result in mistake to purchasers intending to buy DURAFLEX
electric wires and goods, the mark being registered allegedly having
practically the same spelling, pronunciation and sound, and covering the
same good, as that of the opposer. Besides, opposer contended that there
has been no continuous use in commerce of the applicant's mark.
After due hearing, the Director of Patents rendered decision holding the
applicant's mark DYNAFLEX not to be similar to the previously registered
trademark DURAFLEX. Consequently, the application of Central Banahaw
Industries for registration of DYNAFLEX was given due course and the
opposition thereto by American Wire & Cable Company dismissed. The latter
interposed the present appeal.
The issue to be resolved in this proceeding is simple: whether or not the mark
DYNAFLEX and Device is registrable as label for electric wires, class 20,
considering that the trademark DURAFLEX and Globe representation also for
electric wires, machines and supplies under class 20, has been registered
more than 4 years earlier.
In ruling in favor of the herein application, the Director of Patents said:
... The applicant's trademark is a composite mark consisting of the word
DYNAFLEX printed in small letters of the English alphabet except that letter "D"
is capitalized, within a fanciful device, on top of which is the encircled initials,
in downward sequence, of the Respondent's corporate name, and jutting
out on two sides of the circle are bolts of lightning, symbolic of electricity.
On the other hand, Opposer's trademark is DURAFLEX in Capitalized print,
except that one cross piece of the letter X is in the form of a bolt of lightning.
The word slants slightly upward, traversing the center of a figure of the earth
or globe.
Resorting now to the semantics of the words, it is clear that both marks are
suffixed by the word FLEX. The word appears in any dictionary having as
common meaning "to bend." In Webster's International Dictionary, it is used
by the British on electric cord. However, one mark (Respondent's) is prefixed
with DYNA suggesting power. It is not in itself a rootword but it has been
commonly associated with any source of power. At most, it could have been
derived from the Greek word "Dynamis" and, generally, the root words
commonly derived therefrom are ''dynam'' and "dynamo". The other
(Opposer's) is prefixed with DURA, suggesting durability, strength and
endurance.
Based on the foregoing comparisons, the trademarks of the parties are
different in appearance, meaning, sound and connotation and hence, are
not confusingly similar.
The pertinent law, Republic Act 166, as amended, on registrability of
trademarks, prescribes:
SEC. 4. — The owner of a trademark, trade name or service-mark used to
distinguish his goods, business or services from the goods, business or services
of others shall have the right to register the same, unless it:
xxx xxx xxx
(d) Consists of or comprises a mark or trade name which so resembles a mark
or trade-name registered in the Philippines by another and not abandoned,
as to be likely, when applied to or used in connection with the goods,
business or services of the applicant, to cause confusion or mistake or to
deceive purchasers. (Emphasis supplied)
It is clear from the above-quoted provision that the determinative factor in a
contest involving registration of trade mark is not whether the challenged
mark would actually cause confusion or deception of the purchasers but
whether the use of such mark would likely cause confusion or mistake on the
part of the buying public. In short, to constitute an infringement of an existing
trademark patent and warrant a denial of an application for registration, the
law does not require that the competing trademarks must be so identical as
to produce actual error or mistake; it would be sufficient, for purposes of the
law, that the similarity between the two labels is such that there is a possibility
or likelihood of the purchaser of the older brand mistaking the newer brand
for it.
The question is, when is a trademark likely to confuse or cause the public to
mistake one for another? Earlier rulings of the Court seem to indicate its
reliance on the dominancy test or the assessment of the essential
or dominantfeatures in the competing labels to determine whether they are
confusingly similar.1 On this matter, the Court said:
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 is it necessary that the infringing label should suggest an
effort to imitate (C. Neilman Brewing Co. vs. Independent Brewing Co., 191 F.
489, 495, citing Eagle White Lead Co. vs. Pflugh [CC] 180 Fed. 579). The
question at issue in cases of infringement of trademarks is whether the use of
the marks involved would be likely to cause confusion or mistakes in the mind
of the public or deceive purchasers." (Go Tiong vs. Director of Patents, 95 Phil.
1, cited in Lim Hoa vs. Director of Patents, 100 Phil. 214).2
In fact, even their similarity in sound is taken into consideration, where the
marks refer to merchandise of the same descriptive properties, for the reason
that trade idem sonans constitutes a violation of trade mark patents.3 Thus, in
he case of Marvex Commercial Co. vs. Hawpia & Co.,4 the registration of the
trademark "Lionpas" for medicated plaster was denied for being confusingly
similar in sound with "Salonpas", a registered mark also for medicated plaster,
the Court saying:
Two letters of "SALONPAS" are missing in "LIONPAS" the first letter a and the
letter s. Be that as it may, when the two words are pronounced, the sound
effects are confusingly similar. And where goods are advertised over the
radio, similarity in sound is of especial significance (Co Tiong Sa vs. Director of
Patents, 95 Phil. 1, citing Nims, The Law of Unfair Competition and
Trademarks, 4th ed., vol. 2, pp. 678-679). "The importance of this rule is
emphasized by the increase of radio advertising in which we are deprived of
help of our eyes and must depend entirely on the ear (Operators, Inc. vs.
Director of Patents, supra.)
Along the same line are the rulings denying registration of a mark containing
the picture of a fish (Bañgus), as label for soy sauce, for being similar to
another registered brand of soy sauce that bears the picture of the fish
carp;5 or that of the mark bearing the picture of two roosters with the word
"Bantam", as label for food seasoning (vetsin), which would confuse the
purchasers of the same article bearing the registered mark "Hen Brand" that
features the picture of a hen.6
The present case is governed by the principles laid down in the preceding
cases. The similarity between the competing trademarks, DURAFLEX and
DYNAFLEX, is apparent. Not only are the initial letters and the last half of the
appellations identical, but the difference exists only in two out of the eight
literal elements of the designations. Coupled with the fact that both marks
cover insulated flexible wires under class 20; that both products are
contained in boxes of the same material, color, shape and size; that the
dominant elements of the front designs are a red circle and a diagonal
zigzag commonly related to a spark or flash of electricity; that the back of
both boxes show similar circles of broken lines with arrows at the center
pointing outward, with the identical legend "Cut Out Ring" "Draw From Inside
Circle", no difficulty is experienced in reaching the conclusion that there is a
deceptive similarity that would lead the purchaser to confuse one product
with the other.
The Director of Patents has predicated his decision mostly on the semantic
difference and connotation of the prefixes "Dura" and "Dyna" of the
competing trademarks, unfortunately forgetting that the buyers are less
concerned with the etymology of the words as with their sound and the
dominant features of the design.
Of course, as pointed out in the decision now on appeal there are some
differences in the mark on the front portion of the box. But they pale into
insignificance in view of the close resemblance in the general appearance
of the box and the tradenames of the articles. Indeed, measured against the
dominant-feature standard, applicant's mark must be disallowed. For,
undeniably, the dominant and essential feature of the article is the
trademark itself. Unlike in the case of commodities that are ordinarily picked
up by the purchaser himself from the grocery or market counters, electric
wires are purchased not by their appearance but by the size (voltage) and
length and, most importantly, by brand. It is even within layman's knowledge
that different brands of wire have different characteristics and properties;
and for an essential building item as electric wires and supplies, the owner of
the building would not dare risk his property, perhaps his life, on an unknown
or untested brand. He would only demand for what is recognized to be the
best.
Relying on the doctrine enunciated in the Etepha case 7 and the earlier ruling
in Lim Hoa vs. Director of Patents,8applicant-appellee contends that the
DYNAFLEX mark would not confuse or deceive the buyers and subscribers of
the DURAFLEX brand, because electrical wires are of great value and the
purchasers thereof are generally intelligent — the architects, engineers and
building contractors. It must be realized, however, that except perhaps in big
constructions, the designing architect or engineer, or the contractor who will
undertake the work of building, does not himself purchase or place the order
for the purchase of the materials to be used therein. The task is oftentimes
delegated to another. Nor are said technical men the ones personally laying
down the wiring system in the building that they could possibly check on
whether or not the correct wires are being used. So that even if the engineer
or contractor will specify in the bill of materials the particular brand of wires
needed, there is no certainty that the desired product will be acquired. For,
unlike the pharmacists or druggists, the dispensers of hardware or electrical
supplies are not generally known to pay as much concern to the brand of
articles asked for by the customer and of a person who knows the name of
the brand but is not acquainted with it is appearance, the likelihood of the
DYNAFLEX product being mistaken for DURAFLEX is not remote.
Of course, as in all other cases of colorable imitations, the unanswered riddle
is why, of the millions of terms and combinations of letters and designs
available, the appellee had to choose those so closely similar to another's
trademark if there was no intent to take advantage of the goodwill
generated by the other mark.
FOR THE FOREGOING CONSIDERATIONS, the decision appealed from is
hereby set aside, and the application for registration of the trademark
DYNAFLEX for electric wires, class 20, is ordered denied. No costs.
Kee Kee Boc vs. Director of Patents
G.R. No. L-26966 October 30, 1970
DE LA RAMA STEAMSHIP CO., plaintiff-appellee,
vs.
NATIONAL DEVELOPMENT CO., defendant-appellant.
E. del Rosario and Associates for plaintiff-appellee.
Gov't. Corporate Counsel L. M. Abellera and Special Counsel Leonardo R.
Reyes for defendant-appellant.
ZALDIVAR, J.:.
This case originated in the Court of First Instance of Manila as Civil Case No.
5161, entitled "De la Rama Steamship Co. Inc., plaintiff, versus National
Development Company, defendant." This is the third time that this case has
come up to this Court.
This case is the outcome of an agreement entered into on October 26, 1949
between the De la Rama Steamship Co. Inc. (hereinafter referred to as De la
Rama) and the National Development Company (hereinafter referred to as
NDC) whereby De la Rama undertook the management of the three vessels
known as "Doña Aurora," "Doña Nati" and "Doña Alicia" which had been
purchased by the Philippine Government from Japan with the advise and
technical supervision of De la Rama. In the management contract it was
provided that De la Rama had the option to buy the vessels at the fifth year
following the purchase and delivery of each of the vessels at a price which is
to consist of the cost price of each vessel, plus such expenses as De la Rama
may have incurred in connection with the construction, outfitting,
provisioning and operation thereof; but should De la Rama fail to exercise
the right of option it should be reimbursed of the expenses it incurred in
manning, equipping, fueling, overhauling and repairing the vessels, and the
payment of loading commission discharging commission, overriding
commission sub-agent's commission, etc.
The first time that this case came up to this Court was in G.R. No. L-8784,
decided on May 21, 1956, which involved the principal question regarding
the right granted by the management contract to NDC to cancel upon one
year's notice the general agency granted Dela Rama. The NDC decided to
cancel the contract but was opposed by De la Rama, which alleged that it
had been granted the option to purchase the vessels and that in 1952 it
exercised that right of option. In the decision in G.R. No. L-8784 this Court
upheld the right of NDC to cancel the management contract, and the
option of De la Rama to purchase the vessels was declared ineffective.
The right of NDC to cancel the management contract having been upheld
by the Court and De la Rama's right to exercise the option to purchase the
vessels could not thereby be exercised, De la Rama filed on August 21, 1956
a "Supplemental Pleading" in Civil Case No. 25161 then pending in the Court
of First Instance of Manila. This supplemental pleading, in the nature of a
supplemental complaint gave rise to the proceeding which later brought
Civil Case No. 25161 to this Court for the second time in G.R. No. L-
25659.1 Under the first cause of action of the "Supplemental Pleading," De la
Rama demanded that NDC refrain from using the names "Doña Aurora,"
"Doña Nati" and "Doña Alicia" on the three vessels subject of the original
action, claiming that it had acquired exclusive property right to the use of
said names of the three vessels as trade names; under the second cause of
action, De la Rama sought the payment to it by the NDC of P1,505,603.82 as
reimbursement for various advances and expenses it had made in behalf of,
and commissions earned as agent of, NDC; and under the third cause of
action, De la Rama sought the payment of P1,000,000.00 as damages on
account of NDC's continued use of the names "Doña Aurora," "Doña Nati"
and "Doña Alicia," on the vessels that De la Rama had turned over to it
(NDC), and P100,000.00 as expenses and attorney's fees. 2
Over the opposition of NDC to the admission of the "Supplemental Pleading,"
upon the grounds that De la Rama could not file a supplemental pleading
because it had already been, held in G.R. No. L-8784 that it had no right of
action and a party may not file a supplemental pleading if it had no valid
and subsisting cause of action, and that all the causes pleaded were only
remotely connected with, and not material to, the original action in Civil
Case No. 25161, the lower court, in an order dated October 18, 1956,
granted De la Rama's motion to file the "Supplemental Pleading."3
In its answer to De la Rama's supplemental pleading, NDC denied De la
Rama's exclusive right to use the names "Doña Aurora," "Doña Nati" and
"Doña Alicia" on the vessels upon the ground that said names (except Doña
Nati) represented names of wives of former Presidents of the Philippines and
could not be approriated by a private individual; NDC averred that the
alleged advances and commissions claimed in the second cause of action
were never alleged and claimed in the original complaint and should be
deemed barred and dismissed together with the original principal action;
NDC also averred that the demands in the third cause of action were
unreasonable, and that De la Rama had tried to retain all the benefits arising
from the operation of the vessels and shifted to NDC the liabilities and
obligations. NDC also set forth special defenses and a counterclaim, alleging
that De la Rama was under obligation to submit a true and correct
accounting of the operation of the three vessels, and to remit to NDC the
amounts due to the latter from January 1, 1954 to the dates the vessels were
separately returned; and that plaintiff had charged excessive commissions of
17-½% when the reasonable rate should only be 9.45% after the notice of
cancellation, and should account for and deliver to NDC the excess
commissions actually received.4
In its reply to NDC's answer, and in its answer to NDC's counterclaim, De la
Rama alleged that the names "Doña Aurora," "Doña Nati" and "Doña Alicia"
were its property, having used the name "Doña" on its vessels in its shipping
business even before the last war and had acquired a vested right on that
trade name, that the claim for reimbursement and/or payment of advances
and/or expenses made, and commissions earned by virtue and pursuant to
the management contract matured after the filing of the amended
complaint;5 that true and correct accounting of the operations of the vessels
had always been submitted to NDC. De la Rama denied, for lack of
knowledge or information sufficient to form a belief, the allegations in
defendant's counterclaim.6
On March 20, 1957, the trial court, in consonance with its order given in open
court on March 8, 1957, considering that the case involved mainly
accounting, issued an order appointing a Board of Accountants to make an
examination of the accounts submitted by De la Rama to determine what
amount is due De la Rama, and what amount is due NDC, and to make such
recommendations as, in its opinion, are proper. The Court appointed Mr.
Gregorio Licaros, then President of the Philippine Institute of Accountants, to
represent the court and to act as chairman of the Board; Mr. Miguel
Calingasan comptroller of De la Rama, recommended by counsel for De la
Rama, to represent De la Rama; and Delfin Diangco, accountant and
manager of the shipping department of NDC, recommended by counsel for
NDC, represent the NDC. The deputy clerk of court. The deputy clerk of court
of the branch of the Court of First Instance of Manila where the case was
pending was appointed secretary of the Board. The order of the court
provided for the compensation of the members of the Board of Accountants
and its Secretary. The court gave the Board thirty days from the date of
qualification by its members within which to receive the evidence and
thereafter another thirty days within which to submit its report.7
The Chairman of the Board of Accountants, on April 13, 1959, submitted his
report and recommendations to the court. Based on said report and
recommendations the trial court rendered its decision, dated April 29, 1959,
the dispositive portion of which reads as follows:.
IN VIEW OF ALL THE FOREGOING CONSIDERATION, the Court hereby renders
judgment:.
"(a) Approving the report and recommendations of Mr. Gregorio S. Licaros,
Chairman, Board of Governors, Development Bank of the Philippines, dated
April 13, 1959, and ordering defendant National Development Company to
pay to plaintiff the sum of P244,277.81, representing the balance of the
advances made by plaintiff's operation of the Doña Nati, Doña Alicia and
Doña Aurora, with legal interest thereof from January 24, 1955.
"(b) Enjoining and restraining defendant perpetually from using the 'Doña'
name or title on any of its vessels; and
"(c) Ordering defendant to pay plaintiff, nominal or temperate damages in
the sum of P20,000.00, and attorney's fees in the amount of P20,000.00.
With costs against the defendant. 8
From the above-mentioned decision NDC interposed an appeal to this
Court, docketed herein as G.R. No. L-15659. This is the second time that Civil
Case No. 25161 of the Court of First Instance of Manila came up to this Court.
In its decision in G.R. No. L-15659 this Court upheld NDC's contention that the
causes of action in the "Supplemental Pleading" were not in any way
relevant and material to the original action of De la Rama to compel the
NDC to sell the three "Doña" vessels to it, and that, therefore, the
"Supplemental Pleading" was improperly admitted. This Court also sustained
the contention of the NDC that the lower court did not follow the suggestion
of the Chairman of the Board of Accountants to give opportunity to the NDC
to submit its objections to the amounts stated in the report of the chairman of
the board. This Court, therefore, set aside the decision appealed from.
However, in the interest of a prompt termination of the suit, this Court ordered
the remand of the case to the court below "with instructions to enroll the
pleadings and papers starting with the "supplemental pleading," registering
the complaint, collecting the corresponding fee based on the amount
demanded in the complaint and entering the complaint and all the papers
in the dockets of the court." This Court also gave instructions "to give, the
defendant NDC the opportunity to submit its objections to the report of the
board of accountants and to have a hearing on this report in accordance
with the rules as above pointed out," and "thereafter the action shall
proceed or continue in accordance with this decision." 9
So the case was before the trial court for the third proceedings. The trial court
complied with the instructions of this Court, as stated in the decision in G.R.
No. L-15659. After the trial court had repeatedly given the NDC the
opportunity to file its objections, if any, to the report submitted by the
Chairman of the Board of Accountants, and the NDC failed so to do, the trial
court rendered its decision dated February 23, 1966, the dispositive part of
which reads:.
WHEREFORE, judgment is hereby rendered approving the conclusions and
recommendations contained in the aforesaid Report of April 13, 1959, and
ordering defendant National Development Company to pay to the plaintiff
De la Rama Steamship Co., Inc., the sum of P244,227.81 with legal interest
thereon from January 24, 1955 until fully paid.
With costs against the defendant. 10
On February 24, 1966 De la Rama filed a motion for the partial execution of
the decision dated April 29, 1959 regarding the damages in the sum of
P20,000.00 and attorney's fees in the sum, of P20,000.00 on the ground that
those portions of the decision had not been appealed from and had
therefore become the "law of the case" as far as the parties were
concerned. 11 NDC filed its opposition to the motion on the ground that the
decision of April 29, 1959 was "set aside" by the Supreme Court, and
consequently there was no legal basis for execution.
On March 18, 1966 the lower court issued an "order and/or amendatory
decision," the concluding portion of which reads as follows:.
PREMISES CONSIDERED, plaintiff's motion of February 23, 1966 for partial
execution is hereby denied. Instead, in the interest of justice, and the
decision of this Court of February 7, 1966 not having yet become final, the
same is hereby amended by adding thereto the findings of fact and
conclusion of law made above, and by amending its dispositive part to read
as follows:
WHEREFORE, judgment is hereby rendered:.
"(a) Enjoining and restraining the defendant perpetually from using the
"Doña" name or title on any of its vessels;
"(b) Approving the conclusions and recommendations contained in the
aforesaid Report of April 13, 1959, and ordering the defendant National
Development Company to pay to the plaintiff De la Rama Steamship Co.,
Inc., the sum of P244,222.81 with legal interest thereon from January 24, 1955
until fully paid; and
"(c) Ordering the defendant to pay to the plaintiff by way of damages, as
and/or attorney's fee, the amount of P20,000.00. Said decision of February 7,
1966 is maintained in all other respects.
With costs against the defendant.12
From both the decision dated February 7, 1966 and the amendatory decision
dated March 18, 1966 NDC appealed directly to this Court, because of the
amount involved, stating that it would raise questions both of fact and of
law. 13 The present appeal is the third time that this case 14 has come up to
this Court.
NDC in its brief, assigns six errors which, it claims, were committed by the
lower court in deciding the case.
The first four errors refer to the lower court's having adopted in toto the
findings and recommendations of the Board of Accountants, as contained in
the Report submitted to this court dated April 13, 1959, regarding:.
1. "the net results of the operational expenses of the "Doña" vessels;"
2. "the inventory of equipment, supplies, materials, provisions, fuel, etc. on
board the vessels upon the delivery thereof;"
3. "the commission on cargos booked and loaded after delivery of the
vessels;" and
4. "the additional charges to NDC;"
The fifth error assigned is that.
5. "The lower court erred in holding that the plaintiff is entitled to the
preferential right to the use of the "Doña" names and enjoining and
restraining the defendant-appellant perpetually from using the "Doña"
names or title on any of its vessels."
The sixth error assigned is that.
6. "The lower court, finally, erred in condemning defendant-appellant to pay
to the plaintiff-appellee the sum of P244,227.81 with legal interest thereon
from Jan. 24, 1955 until fully paid and also the sum of P20,000.00 by way of
damages and attorney's fees."
In support of its first assignment of error, that the lower court erred in
adopting in toto the findings and recommendations of the Board of
Accountants regarding the net results of the operational expenses of the
"Doña" vessels, as contained in the Board's Report submitted to the Court,
dated April 13, 1959, NDC contends that De la Rama had overcharged NDC
as per NDC Report dated April 10, 1959 in the amount of P53,393.94 before
the cancellation of the contract and P12,705.59 after the cancellation of the
contract as 17-1/2% commissions on "arbitraries" which cannot be included in
the terms "cargo freight" or "freight revenue" on the basis of which alone De
la Rama should receive the agency commissions as per paragraph 4 of the
management contract; that De la Rama had also charged excess
commissions in the amount of P803,973.94, as shown in the NDC audit
verification report dated April 10, 1959, on freight revenues and passage
revenues after the cancellation of the management contract effective July
11, 1955, because the 17-1/2% commission on "freight revenue" and the 10%
commission on "passage revenue" under the management contract were
applicable only while said contract was in force, such that after the rescission
of said contract, until the vessels, were returned, De la Rama operated the
vessels at its own risk and should be entitled only to 7-½% commission on
freight revenues and 7-½% commission on, passage revenues which rates
were those agreed upon by NDC and A. V. Rocha and Company; that De la
Rama overcharged NDC P46,627.83 as expenses for advertising, which
should have been borne by De la Rama pursuant to stipulation No. 4 of the
management contract which in part reads:.
... in consideration of said overriding commission, De la Rama shall assume all
expenses of the service with respect to sub-agents' commissions, advertising,
entertaining, documentation of cargo office rent and expenses, telephone
costs and general travelling expenses. Cable and telegram expenses,
however, shall be directly chargeable to the respective vessel's voyage
accounts.
but which De la Rama charged directly to the miscellaneous expense
accounts of the respective voyage account of the vessels; that De la Rama
also overcharged NDC, without specifying the amount, for expenses for
entertainment, telephone costs, general traveling expenses, sub-agents'
commission of cargo, all of which NDC must assume pursuant to paragraph 4
of the management contract; that NDC was overcharged P4,710.94 for
subsistence, which amount was spent not for the meals of the passengers,
officers, and crew, but for various parties, and, which, not having been
previously authorized by NDC, should be chargeable to De la Rama; that De
la Rama overcharged operational expenses in the amount of P182,376.35
which were without supporting vouchers; that there was an understatement
of the operational income of NDC vessels in the amount of P27,418.56; that
the operational expenses of the NDC vessels was overcharged for various
expenses in the amount of P5,462.09. 15
In support of its second assignment of error, that the lower court erred in
adopting in toto the findings and recommendations of the Board of
Accountants regarding the inventory of equipment, supplies, materials,
provisions, fuels, etc. on board the vessels upon the delivery thereof to NDC
as contained in the report dated April 13, 1959, NDC contends that De la
Rama's claim on this matter was only P626,304.70, but Schedule B (Exh. PP),
purporting to be the final inventory, showed only a total of P573,979.53 as
against NDC audit report dated March 31, 1958 in the amount of only
P496,637.10. 16
In support of the third assignment of error, that the lower court erred in
adopting in toto the findings and recommendations of the Board of
Accountants regarding the commission on cargoes booked and loaded
after delivery of the vessels as convinced in the Board's Report dated April
13, 1959, NDC avers that when the "Doña Alicia" was delivered to NDC the
latter honored the De la Rama commitments on cargo and passengers
without however stipulating the commissions to be earned by De la Rama;
that the claim of De la Rama for P16,927.72, or 9-½% of P178,186.56, freight
revenues was 7% higher than those charged for the same service and should
be reduced to 2-½% only; that De la Rama also overcharged NDC in the
amount of P113.75 passage commission, because De la Rama should not be
allowed to charge more than 7-½% which NDC pays to its present agent. 17
In its fourth assignment of error, that the lower court erred in adopting in
toto the recommendations of the Board of Accountants regarding the
additional charges to NDC as contained in the Board's Report dated April 13,
1959 NDC avers that of the P21,998.11 claimed by De la Rama, the bills for
general averages in the amount of P20,478.52 for "Doña Alicia" and "Doña
Aurora" were for services that were normal duties of the relationship between
NDC and De la Rama, and were therefore without basis, more so because all
of De la Rama's expenses including travel, hotel and entertainment expenses
of its officials incident thereto in the amount of P51,583.33 had been included
in the casualty account claimed by De la Rama and the designated
adjuster, Funch, Edye, and Co., already collected their fees of P6,000; so that
said amount of P20,478.52 should have been disallowed. 18
In refutation of the reasons adduced by NDC in support of its four
assignments of error, De la Rama contends that the alleged errors involve
principally factual matters which had been twice resolved by the lower court
— first in the decision of April 29, 1959 and again in the decisions of February
7 and March 18, 1966, and those alleged errors relate to matters that NDC
had been given many opportunities to object to in the lower court, but
which it did not do; that for having failed to object, NDC is bound by the
findings embodied in the report. 19
We sustain the stand of De la Rama. NDC complains against the adoption in
toto by the trial court of the findings and recommendations of the Board of
Accountants. We find the actuation of the trial court to be in accordance
with Rule 33, Section 11, of the Rules of Court — which authorizes the trial
court to render judgment, after the report of the commissioner has been set
for hearing, by adopting, modifying, or rejecting the report in whole or in
part. The report of the Board of Accountants in the case at bar is similar to
the report of the commissioner, or referee, as provided in Rule 33 of the Rules
of Court. This Court, in the case of Apurillo v. Graciano, 20 held that the trial
Judge's adoption in toto of the findings of the Commissioner is allowed under
Rule 33 of those Rules of Court. In the case at bar, NDC's repeated failures to
file its objections, if any, to the report, left the trial court no other choice but
to render judgment base, on the report. Section, 11 of Rule 33 of the Rules of
Court was taken from Section 140 of the former Code of Civil Procedure (Act
190).têñ.£îhqw⣠Interpreting Section 140 of the said Code of Civil
Procedure, this Court, in the case of Kreidt vs. E. C. McCullough &
Co., 21 held:.
... Section 140 of the Code of Civil Procedure must be interpreted as placing
upon the litigant parties the duty of discovering and exhibiting to the court
the reasons, if any there be, why the report should not be confirmed; and it is
not ordinarily incumbent upon the court to discover the errors that may lurk
therein. The duty which the law imposes upon the court is to render judgment
in accordance with the report, and this will ordinarily be done unless the
party aggrieved shall, in a manner conformable with proper practice,
demonstrate the existence of error in the report. It is in elementary rule of
procedure that the exceptions to the referee's report should specifically point
out the error, or error relied upon by the party excepting, when the report
comes up for confirmation the court cannot be expected to rehear the case
upon the entire record but will review only so much as may be drawn in
question by proper exceptions ...
When a referee is appointed he becomes for the time being an accredited
agent and an officer of the court, and the reference is clearly a judicial
proceeding. What the referee does while acting within the scope of his
authority is, therefore, in the contemplation of law done by the court itself.
Hence his conclusions must be assumed to be correct until error is properly
shown ... It follows that when the referee has examined the evidence and
reached his conclusions of fact and law, those conclusions have a
presumption in their favor both of law and of reason. It would be impossible
to administer justice on any other theory than that as facts are found and
determined in accordance with the proper procedure of the court they must
be assumed to be true until the contrary is shown.
In the case at bar, NDC neglected to perform the duty of pointing and
demonstrating the alleged errors in the report of the Board of Accountants,
in spite of the fact that this Court in G.R. No. L-15659 had ordered the case to
be remanded to the lower court precisely in order that NDC might be given
the opportunity, which it claimed it had previously been derived of by the
trial court, to submit its objections to the report, and to have a hearing on the
report, not withstanding the repeated opportunities given to it by the trial
court for a period of three years to submit its objections. On this matter, the
following is what the trial court said in its decision which is now appealed to
this Court:.
... and as directed by the Supreme Court, the defendant was given
repeated opportunities to submit its objections to the Report of the Chairman
of the Board. Unfortunately, however, the defendant's, conduct for the last
three years amounts to waiver of its right to be heard on the subject report,
to paraphrase the language of the Supreme Court in this regard in its
decision quoted above. Thus defendant NDC requested and was granted
on October 10, 1963 a first extension of time to submit its objections to the
Report (p. 1342, Records). As late as October 30, 1963 (p. 1390, Records), that
is, after several extensions of time totalling more than one (1) year, this Court
granted NDC a final and last extension of three weeks within which to submit
NDC's objections, if any to said Report. This period expired without the filing
by defendant NDC of objections, if any, to said Report; but this Court,
notwithstanding the absence of any objection to said report, and with a
view to giving the defendant a last chance to assail any part of said Report,
exercised its discretion to, as it did, set said Report for bearing on May 3, 1965
(p. 1395, Records), and thereafter on May 6, May 28, July 9, August 5,
September 16, October 22 and November 12, 1965, which hearings were
cancelled at the instance and request of the defendant. At the hearing on
November 12, 1965 the parties agreed that defendant be granted two
weeks within which to file its objections, if any, to said Report; that plaintiff
shall submit its reply to the objections within a similar period and that if the
defendant failed to file the objections within said stipulated period it shall be
deemed to have waived its right to do so. The defendant again failed to file
its objections to said Report, and instead filed an urgent motion, dated
November 26, 1965, to extend the period, but said urgent motion was filed
after several days after the expiration of the period granted for the purpose
in this Court's Order of November 12, 1965, and as the defendant actually
failed to file the intended objections within the extension of time prayed for in
said urgent motion (see Order of this Court of December 7, 1965), on motion
of the plaintiff this Court found no other alternative proper under the
circumstances mentioned above than to issue its Order of December 13,
1965 to the effect that said Report was deemed submitted for decision
and/or approval as of the last mentioned date. 22
The appellant having failed to file its objections to the report, it was the duty
imposed by the law upon the court, to quote against Kriedt vs. E. C.
McCullough & Co., supra, "to render judgement in accordance with the
report," as though the facts had been found by the judge himself.
If a party fails to file opportunely his objections to the report of the
commissioner or referee, such that the record does not disclose the
objections thereto, as in the instant case, questions relating to the report
cannot be reviewed and he cannot dispute the finding in the report or
escape the legal consequences flowing therefrom. Thus, in the case
of Santos v. De Guzman and Martinez, 23 this Court ruled:.
By way of emphasis, we now desire to add that if a party desires to
challenge the findings of a referee, he must do so by timely and specific
exceptions to the referee's report. If he fails to make such exceptions and the
report is confirmed by the trial judge, he is bound by the findings and cannot
be heard to dispute their truthfulness or escape the legal consequences
flowing therefrom. Questions relating to the report of a referee can be
reviewed only where the record discloses the exceptions taken thereto.
Another reason why NDC's first four assignments of errors should no longer be
considered is that, as appears in the trial court's decision, NDC agreed that
should it fail to file its objections within two weeks from November 12, 1965, "it
shall be deemed to have waived its right to do so." Furthermore, it has been
repealed time and again by this Court, that issues not raised in the lower
court cannot be raised for the first time on appeal. 24 In the recent case
of Kalalo v. Luz 25 this Court refused to consider on appeal the correctness of
the amount due from appellant to appellee as found by the Commissioner, it
being too late to question on appeal its correctness, the same not having
been, submitted to the trial court for resolution.
It has also been held, in this connection, that when the findings of the
Commissioner are approved by the trial court, they will not generally be
disturbed by the reviewing court, unless the findings are unsupported by the
evidence. 26The trial court adopted the findings and recommendations
embodied in the Report in the instant case "after a careful consideration of
said report and after a careful evaluation of the pertinent data and figures
taken from authentic records as to which the members of the Board of
Accountants are in agreement." 27
In support of the fifth assignment of error, that the lower court erred in holding
that De la Rama is entitled to the preferential right to the use of the "Doña"
names and enjoining and restraining NDC perpetually from using the "Doña"
names on any of its vessels, NDC argues that as owner of the vessels it had
registered the "Doña" names in the Bureau of Customs with full knowledge
and consent of De la Rama which, therefore, is now estopped from
questioning the right, or from denying the ownership, of NDC over the "Doña"
names (Art. 1431, Civil Code).têñ.£îhqw⣠28 De la Rama, on the other hand
maintains that the findings and conclusion of the lower court on this matter,
quoting the pertinent portion of the lower court's decision, are well founded.
In the amendatory decision, dated March 18, 1966, the lower court found
that De la Rama had been in the shipping business since 1933 and had
adopted, prior to the war in 1941, the word "Doña" in designating its vessels;
that the three ocean-going vessels that it operated under the management
contract were named "Doña Nati" after the wife of the late Don Esteban de
la Rama, who was founder of the steamship company; "Doña Alicia" after
the late wife of former President Elpidio Quirino; and "Doña Aurora" after the
late widow of President Manuel Quezon; that there is unrebutted testimony
that in the shipping business, goodwill and reputation are inevitably acquired
by the names given to a
vessel. 29
NDC's contention, in its answer, that De la Rama, a private firm, could not
appropriate said names ("except Doña Nati") on the ground that those are
names of wives of former Presidents, does not have a legal basis. Under
Section 4(c) of Rep. Act No. 166 as amended, which apparently is the basis
of the contention of NDC, what is prohibited from being appropriated and
being registered are trade-names consisting of, or comprising, a name
identifying a particular living individual, or the name of a deceased President
of the Philippines. The names of deceased wives of Presidents are not
included in the prohibition. Moreover, Section 4(f) of said Act does not
prohibit the registration, and hence appropriation, of a trade-name that has
become distinctive and the substantial and exclusive use of a trade-name
for five years accepted as prima facie proof that the trade-name has
become distinctive. And this Court has said, in Ang vs. Teodoro, 30 that even
a name or phrase not capable of appropriation as a trade name may, by
long and exclusive use by a business with reference thereto of to its products,
acquire a proprietary connotation, such that, to the purchasing public, the
name or phrase becomes associated with the service or the products of the
business, and so it is entitled to protection against unfair competition.
Neither is the claim of estoppel, allegedly based on acquiescence, in that
NDC had registered with full knowledge and/or consent of De la Rama the
"Doña" names in the Bureau of Customs, tenable. A reading of Sections 1166
to 1176 of the Revised Administrative Code, under which the "Doña" vessels
were presumably registered, would show that the principally purpose of the
registration is to determine the ownership of the vessel, although for
registration it is necessary that the vessel should have a name as a
prerequisite under the provision of Section 1170. De la Rama certainly could
not, and had no right, to oppose the registration of the vessels by NDC
because the vessels were in fact owned by NDC. Neither could De la Rama
then oppose the registration of the "Doña" names of the vessels for it was De
la Rama itself that gave those names when it operated the vessels, and it
had also expectant right to become owners of said vessels. De la Rama's
consent to the registration of the vessels as owned by NDC did not
necessarily imply that it also consented to NDC's appropriation of the "Doña"
names, for almost immediately after the right of NDC to cancel the
management contract had been upheld by this Court in G.R. No. L-8784,
decided on May 21, 1956, De la Rama formally notified, on August 10, 1956
NDC or its agent to refrain from using, announcing or in any manner referring
to the three vessels here in question as the 'Doña Aurora,' 'Doña Nati' or
'Doña Alicia'."31From these facts if cannot reasonably be urged that De la
Rama is estopped from preventing NDC to use the "Doña" names on its
vessels. Anent this matter, it has been held that:.
... an estoppel will not ordinarily arise from a consent given under an
excusable misapprehension of facts... likewise, the estoppel will not be given
effect beyond the precise thing consented to and matters which are
necessarily, or at least, reasonably, to be implied therefrom. (28 Am Jur 2d,
pp. 662-663.)
And even if it be assumed, gratia argumenti, that De la Rama acquiesced to
the registration of the "Doña" names of the vessels, as NDC contends, that
acquiescence could not necessarily estop De la Rama to claim its right to
said names, after the conditions had changed, that is when the
management contract had been cancelled by NDC. Regarding this matter
it has been held that:.
Acquiescence in the past does not necessarily estop a party from changing
his course of conduct as to the future, especially where there has been a
change in conditions. (28 Am Jur 2d p. 675.)
NDC does not dispute the fact that the "Doña" names had been originally
used by De la Rama, 32 and according to the lower court De la Rama had
been using the "Doña" names even before the war, and that said names
have acquired goodwill and reputation. Goodwill is protected by the law on
unfair competition. Goodwill is easily damaged, and is easily vulnerable to
assault, through the brand which symbolizes it. When a person has
established a trade or business in which he has used a name or device to
designate his goods, he will be protected in the use of the name or device.
"Such person has a right to complain when another adopts this symbol or
manner of making of his goods so as to mislead the public into purchasing
the same as and for the goods of the complainant." 33.
The goodwill in business is a valuable asset, and in modern commercial life it
is frequently built upon a trade-name. Any trade-mark or name ... which has
become of a pecuniary value or a business advantage, becomes a property
right, and, as such, is entitled to the protection afforded by the courts
(American Agricultural Chemical Co. v. Moore, 17 F (2d) 196, 199.)
In Ang v. Teodoro 34 this Court said:.
The owner of a trade-mark or trade-name has a property right in which he is
entitled to protection, since there is damage to him from confusion of
reputation or goodwill in the mind of the public as well as confusion of
goods. The modern trend is to give emphasis to the unfairness of the acts
and to treat the issue as a fraud.
To permit NDC to continue using the "Doña" names would be to
countenance the unlawful appropriation of the benefit of a goodwill which
De la Rama has acquired as a result of continued usage and large expense;
it would be tantamount to permitting NDC to grab the reputation or goodwill
of the business of another. 35 We find that the decision of the trial court on this
matter is in accordance with the law on unfair competition.
Regarding NDC's sixth assignment of error, that the lower court erred in
condemning defendant-appellant to pay to the plaintiff-appellee the sum of
P244,227.81 with legal interest thereon, from January 24, 1955 until fully paid
and also the sum of P20,000 by way of damages and attorney's fees, We
believe that no such error was committed by the lower court. The view We
have expressed regarding the first four errors assigned by NDC fully supports
the correctness of the lower court's holding that NDC should pay De la Rama
the sum of P244,227.81 with legal interest, as stated in the decision. The facts
and circumstances extant in the record, likewise, amply warrant the award
to De la Rama of the sum of P20,000.00 by way of damages and attorney's
fee's.
WHEREFORE, the decision appealed from is affirmed, with cost against the
defendant-appellant National Development Company. It is so ordered.
G.R. No. L-23035 July 31, 1975
PHILIPPINE NUT INDUSTRY, INC., petitioner,
vs.
STANDARD BRANDS INCORPORATED and TIBURCIO S. EVALLE as Director of
Patents, respondents.
Perfecta E. De Vera for petitioner.
Paredes, Poblador, Cruz and Nazareno for private respondent.
Office of the Solicitor General Arturo A. Alafriz, Acting Assistant Solicitor
General Isidro C. Borromeo and Solicitor Francisco J. Bautista for respondent
Director.
MUNOZ PALMA, J.:
Challenged in this petition for review is the decision of respondent Director of
Patents which orders the cancellation of Certificate of Registration No. SR-
416 issued in favor of herein petitioner Philippine Nut Industry, Inc. (hereinafter
called Philippine Nut) for the trademark "PHILIPPINE PLANTERS CORDIAL
PEANUTS," upon complaint of Standard Brands Inc. (hereinafter to be called
Standard Brands).
The records of the case show the following incidents:
Philippine Nut, a domestic corporation, obtained from the Patent Office on
August 10, 1961, Certificate of Registration No. SR-416 covering the
trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS," the label used on its
product of salted peanuts.
On May 14, 1962, Standard Brands a foreign corporation,1 filed with the
Director of Patents Inter Partes Case No. 268 asking for the cancellation of
Philippine Nut's certificate of registration on the ground that "the registrant
was not entitled to register the mark at the time of its application for
registration thereof" for the reason that it (Standard Brands) is the owner of
the trademark "PLANTERS COCKTAIL PEANUTS" covered by Certificate of
Registration No. SR-172, issued by the Patent Office on July 28, 1958. Standard
Brands alleged in its petition that Philippine Nut's trademark "PHILIPPINE
PLANTERS CORDIAL PEANUTS" closely resembles and is confusingly similar to its
trademark "PLANTERS COCKTAIL PEANUTS" used also on salted peanuts, and
that the registration of the former is likely to deceive the buying public and
cause damage to it.
On June 1, 1962, Philippine Nut filed its answer invoking the special defense
that its registered label is not confusingly similar to that of Standard Brands as
the latter alleges.
At the hearing of October 4, 1962, the parties submitted a partial stipulation
of facts. On December 12, 1962, an amended partial stipulation of facts was
submitted, the pertinent agreements contained in which are: (1) that
Standard Brands is the present owner of the trademark "PLANTERS COCKTAIL
PEANUTS" covered by Certificate of Registration No. SR-172 issued on July 28,
1958; (2) that Standard Brands trademark was first used in commerce in the
Philippines in December, 1938 and (3) that Philippine Nut's trademark
"PHILIPPINE PLANTERS CORDIAL PEANUTS" was first used in the Philippines on
December 20, 1958 and registered with the Patent Office on August 10, 1961.
On December 10, 1963, after the presentation of oral and documentary
evidence and the filing by the parties of their memoranda, respondent
Director of Patents rendered Decision No. 281 giving due course to Standard
Brand's petition and ordering the cancellation of Philippine Nut's Certificate
of Registration No. SR-416. The Director of Patents found and held that in the
labels using the two trademarks in question, the dominant part is the word
"Planters", displayed "in a very similar manner" so much so that "as to
appearance and general impression" there is "a very confusing similarity,"
and he concluded that Philippine Nut "was not entitled to register the mark
at the time of its filing the application for registration" as Standard Brands will
be damaged by the registration of the same. Its motion for reconsideration
having been denied, Philippine Nut came up to this Court for a review of said
decision.
In seeking a reversal of the decision of respondent Director of Patents,
petitioner brings forth eleven assigned errors all of which revolve around one
main issue: is the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by
Philippine Nut on its label for salted peanuts confusingly similar to the
trademark "PLANTERS COCKTAIL PEANUTS" used by Standard Brands on its
product so as to constitute an infringement of the latter's trademark rights
and justify its cancellation?2
The applicable law to the case is found in Republic Act 166 otherwise known
as the Trade-Mark Law from which We quote the following pertinent
provisions:
Chapter II-A. —
Sec. 4. Registration of trade-marks, trade-names and service-marks on the
principal register. — There is hereby established a register of trade-marks,
trade-names and service-marks which shall be known as the principal
register. The owner of a trade-mark, trade-name or service-mark used to
distinguish his goods, business or services from the goods, business or services
of others shall have the right to register the same on the principal
register, unless it:
(d) Consists of or comprises a mark or trade-name which so resembles a mark
or trade-name registered in the Philippines or a mark or trade-name
previously used in the Philippines by another and not abandoned, as to be
likely, when applied to or used in connection with the goods, business or
services of the applicant, to cause confusion or mistake or to deceive
purchasers; ... (emphasis Ours)
Sec. 17. Grounds for cancellation — Any person, who believes that he is or
will be damaged by the registration of a mark or trade-name, may, upon the
payment of the prescribed fee, apply to cancel said registration upon any of
the following grounds:
(c) That the registration was obtained fraudulently or contrary to the
provisions of section four, Chapter II hereof; ....
Sec. 22. Infringement, what constitutes. — Any person who shall use, without
the consent of the registrant, any reproduction, counterfeit, copy or
colorable imitation of any registered mark or trade-name in connection with
the sale, offering for sale, or advertising of any goods, business or services on
or in connection with which such use is likely to cause confusion or mistake or
to deceive purchasers or others as to the source or origin of such goods or
services, or identity of such business; or reproduce, counterfeit, copy or
colorably 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, shall be liable to
a civil action by the registrant for any or all of the remedies herein provided.
(emphasis supplied).
In the cases involving infringement of trademark brought before the Court it
has been consistently held that there is infringement of trademark when the
use of the mark involved would be 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; that whether or not a trademark causes confusion and is likely to
deceive the public is a question of fact which is to be resolved by applying
the "test of dominancy", meaning, if the competing trademark contains the
main or essential or dominant features of another by reason of which
confusion and deception are likely to result, then infringement takes pIace;
that duplication or imitation is not necessary, a similarity in the dominant
features of the trademarks would be sufficient.3
1. The first argument advanced by petitioner which We believe goes to the
core of the matter in litigation is that the Director of Patents erred in holding
that the dominant portion of the label of Standard Brands in its cans of salted
peanuts consists of the word PLANTERS which has been used in the label of
Philippine Nut for its own product. According to petitioner, PLANTERS cannot
be considered as the dominant feature of the trademarks in question
because it is a mere descriptive term, an ordinary word which is defined in
Webster International Dictionary as "one who or that which plants or sows, a
farmer or an agriculturist." (pp. 10-11, petitioner's brief)
We find the argument without merit. While it is true that PLANTERS is an
ordinary word, nevertheless it is used in the labels not to describe the nature
of the product, but to project the source or origin of the salted peanuts
contained in the cans. The word PLANTERS printed across the upper portion
of the label in bold letters easily attracts and catches the eye of the ordinary
consumer and it is that word and none other that sticks in his mind when he
thinks of salted peanuts.
In cases of this nature there can be no better evidence as to what is the
dominant feature of a label and as to whether there is a confusing similarity
in the contesting trademarks than the labels themselves. A visual and
graphic presentation of the labels will constitute the best argument for one or
the other, hence, we are reproducing hereunder a picture of the cans of
salted peanuts of the parties to the case.
The picture below is part of the documentary evidence appearing in the
original records, and it clearly demonstrates the correctness of the finding of
respondent Director that the word PLANTERS is the dominant, striking mark of
the labels in question.
It is true that there are other words used such as "Cordial" in petitioner's can
and "Cocktail" in Standard Brands', which are also prominently displayed, but
these words are mere adjectives describing the type of peanuts in the
labeled containers and are not sufficient to warn the unwary customer that
the two products come form distinct sources. As a whole it is the word
PLANTERS which draws the attention of the buyer and leads him to conclude
that the salted peanuts contained in the two cans originate from one and
the same manufacturer. In fact, when a housewife sends her housemaid to
the market to buy canned salted peanuts, she will describe the brand she
wants by using the word PLANTERS and not "Cordial" nor "Cocktail".
2. The next argument of petitioner is that respondent Director should not
have based his decision simply on the use of the term PLANTERS, and that
what he should have resolved is whether there is a confusing similarity in the
trademarks of the parties.
It is quite obvious from the record, that respondent Director's decision is
based not only on the fact that petitioner herein adopted the same
dominant mark of Standard Brands, that is, the word PLANTERS, but that it
also used in its label the same coloring scheme of gold, blue, and white, and
basically the same lay-out of words such as "salted peanuts" and "vacuum
packed" with similar type and size of lettering as appearing in Standard
Brands' own trademark, all of which result in a confusing similarity between
the two labels.4 Thus, the decision states: "Furthermore, as to appearance
and general impression of the two trademarks, I find a very confusing
similarity." (Emphasis supplied)5
Referring again to the picture We have reproduced, the striking similarity
between the two labels is quite evident not only in the common use of
PLANTERS but also in the other words employed. As a matter of fact, the
capital letter "C" of petitioner's "Cordial" is alike to the capital "C" of
Standard's "Cocktail", with both words ending with an "1".
Admittedly, no producer or manufacturer may have a monopoly of any
color scheme or form of words in a label. But when a competitor adopts a
distinctive or dominant mark or feature of another's trademark and with it
makes use of the same color ensemble, employs similar words written in a
style, type and size of lettering almost identical with those found in the other
trademark, the intent to pass to the public his product as that of the other is
quite obvious. Hence, there is good reason for Standard Brands' to ask why
did petitioner herein use the word PLANTERS, the same coloring scheme,
even almost identical size and contour of the cans, the same lay-out of
words on its label when there is a myriad of other words, colors, phrases,
symbols, and arrangements to choose from to distinguish its product from
Standard Brands, if petitioner was not motivated to simulate the label of the
latter for its own can of salted peanuts, and thereby deceive the public?
A similar question was asked by this Court in Clarke vs. Manila Candy Co., 36
Phil. 100, when it resolved in favor of plaintiff a case of unfair competition
based on an imitation of Clarke's packages and wrappers of its candies the
main feature of which was one rooster. The Court queried thus: "... why, with
all the birds in the air, and all the fishes in the sea, and all the animals on the
face of the earth to choose from, the defendant company (Manila Candy
Co.) selected two roosters as its trademark, although its directors and
managers must have been well aware of the long-continued use of a rooster
by the plaintiff with the sale and advertisement of its goods? ... A cat, a dog,
a carabao, a shark or an eagle stamped upon the container in which
candies are sold would serve as well as a rooster for purposes of
identification as the product of defendant's factory. Why did defendant
select two roosters as its trademark ?" (p.109, supra)
Petitioner contends, however, that there are differences between the two
trademarks, such as, the presence of the word "Philippine" above PLANTERS
on its label, and other phrases, to wit: "For Quality and Price, Its Your
Outstanding Buy", the address of the manufacturer in Quezon City, etc., plus
a pictorial representation of peanuts overflowing from a tin can, while in the
label of Standard Brands it is stated that the product is manufactured in San
Francisco, California, and on top of the tin can is printed "Mr. Peanut" and
the representation of a "humanized peanut". (pp. 30-33, petitioner's brief)
We have taken note of those alleged differences but We find them
insignificant in the sense that they are not sufficient to call the attention of
the ordinary buyer that the labeled cans come from distinct and separate
sources. The word "Philippine" printed in small type in petitioner's label may
simply give to the purchaser the impression that that particular can of
PLANTERS salted peanuts is locally produced or canned but that what he is
buying is still PLANTERS canned salted peanuts and nothing else. As regards
"Mr. Peanut" on Standard Brands' label, the same appears on the top cover
and is not visible when the cans are displayed on the shelves, aside from the
fact that the figure of "Mr. Peanut" is printed on the tin cover which is thrown
away after opening the can, leaving no lasting impression on the consumer.
It is also for this reason that We do not agree with petitioner that it is "Mr.
Peanut and the Humanized Peanut" which is the trademark of Standard
Brands salted peanuts, it being a mere descriptive pictorial representation of
a peanut not prominently displayed on the very body of the label covering
the can, unlike the term PLANTERS which dominates the label.
It is correctly observed by respondent Director that the merchandize or
goods being sold by the parties herein are very ordinary commodities
purchased by the average person and many times by the ignorant and
unlettered 6 and these are the persons who will not as a rule examine the
printed small letterings on the container but will simply be guided by the
presence of the striking mark PLANTERS on the label. Differences there will
always be, but whatever differences exist, these pale into insignificance in
the face of an evident similarity in the dominant feature and overall
appearance of the labels of the parties.
It is not necessary, to constitute trademark "infringement", that every word of
a trade-mark should be appropriated, but it is sufficient that enough be
taken to deceive the public in the purchase of a protected article. (Bunte
Bros. v. Standard Chocolates, D.C. Mass., 45 F. Supp. 478, 481)
A trade-name in order to be an `infringement' upon another need not be
exactly like it in form and sound, but it is enough if the one so resembles
another as to deceive or mislead persons of ordinary caution into the belief
that they are dealing with the one concern when in fact they are dealing
with the other. (Foss v. Culbertson, 136 P. 2d 711, 718, 17 Wash. 2d 610)
Where a trade-mark contains a dominating or distinguishing word, and
purchasing public has come to know and designate the article by such
dominating word, the use of such word by another in marking similar goods
may constitute Infringement though the marks aside from such dominating
word may be dissimilar. (Queen Mfg. Co. v. lsaac Ginsberg & Bros., C.C.A.
Mon., 25 F. 2d 284, 287)
(d) "Infringement" of trade-mark does not depend on the use of identical
words, nor on the question whether they are so similar that a person looking
at one would be deceived into the belief that it was the other; it being
sufficient if one mark is so like another in form, spelling, or sound that one with
not a very definite or clear recollection as to the real mark is likely to be
confused or misled. (Northam Warren Corporation v. Universal Cosmetic Co.,
C. C. A; III., 18 F. 2d 774, 775)
3. What is next submitted by petitioner is that it was error for respondent
Director to have enjoined it from using PLANTERS in the absence of evidence
showing that the term has acquired secondary meaning. Petitioner, invoking
American jurisprudence, asserts that the first user of a tradename composed
of common words is given no special preference unless it is shown that such
words have acquired secondary meaning, and this, respondent Standard
Brands failed to do when no evidence was presented to establish that fact.
(pp. 14-16, petitioner's brief)
The doctrine of secondary meaning is found in Sec. 4 (f), Chapter II-A of the
Trade-Mark Law, viz:
Except as expressly excluded in paragraphs (a), (b), (c) and (d) of this
section, nothing herein shall prevent the registration of a mark or trade-name
used by the applicant which has become distinctive of the applicant's
goods, business or services. The Director may accept as prima
facie evidence that the mark or trade-name has become distinctive, as
applied to or used in connection with the applicant's goods, business or
services, proof of substantially exclusive and continuous use thereof as a
mark or trade-name by the applicant in connection with the sale of goods,
business or services for the five years next preceding the date of the filing of
the application for its registration. (As amended by Sec. 3, Rep. Act No. 638.)
This Court held that the doctrine is to the effect that a word or phrase
originally incapable of exclusive appropriation with reference to an article on
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.7
By way of illustration, is the word "Selecta" which according to this Court is a
common ordinary term in the sense that it may be used or employed by any
one in promoting his business or enterprise, but which 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, may acquire a
secondary meaning as to be exclusively associated with its products and
business, so that its use by another may lead to confusion in trade and cause
damage to its business.8
The applicability of the doctrine of secondary meaning to the situation now
before Us is appropriate because there is oral and documentary evidence
showing that the word PLANTERS has been used by and closely associated
with Standard Brands for its canned salted peanuts since 1938 in this country.
Not only is that fact admitted by petitioner in the amended stipulation of
facts (see p. 2 of this Decision), but the matter has been established by
testimonial (tsn October 4, 1962, pp. 2-8) and documentary evidence
consisting of invoices covering the sale of "PLANTERS cocktail peanuts".
(Exhibits C to C-4; D to D-10; E to E-10; F to F-2) In other words, there is
evidence to show that the term PLANTERS has become a distinctive mark or
symbol insofar as salted peanuts are concerned, and by priority of use dating
as far back as 1938, respondent Standard Brands has acquired a preferential
right to its adoption as its trademark warranting protection against its
usurpation by another. Ubi jus ibi remedium. Where there is a right there is a
remedy. Standard Brands has shown the existence of a property right(Arce
Sons & Co. vs. Selecta Biscuit Co., Inc., supra, pp. 262-263) and respondent
Director, has afforded the remedy.
Still on this point, petitioner contends that Standard Brands' use of the
trademark PLANTERS was interrupted during the Japanese occupation and
in fact was discontinued when the importation of peanuts was prohibited by
Central Bank regulations effective July 1, 1953, hence it cannot be presumed
that it has acquired a secondary meaning. We hold otherwise. Respondent
Director correctly applied the rule that non-use of a trademark on an article
of merchandize due to legal restrictions or circumstances beyond one's
control is not to be considered as an abandonment.
In the case of Andres Romero vs. Maiden Form Brassiere Co., Inc., L-18289,
March 31, 1964, 10 SCRA 556, the same question was raised by petitioner
Romero when he filed with the Bureau of Patents a petition to cancel the
registration of the trademark "Adagio" for brassieres manufactured by
Maiden Form Brassiere Co., Inc. His petition having been dismissed by the
Director of Patents, Romero appealed to this Court and one of the issues
posed by him was that when the Government imposed restrictions on
importations of brassieres bearing that particular trademark, there was
abandonment of the same by respondent company which entitled
petitioner to adopt it for his own use and which in fact he had been using for
a number of years. That argument was met by the Court in the words of
Justice Jesus Barrera thus:
... The evidence on record shows, on the other hand, that the trademark
"Adagio" was first used exlusively in the Philippines by appellee in the year
1932. There being no evidence of use of the mark by others before 1932, or
that appellee abandoned use thereof, the registration of the mark was
made in accordance with the Trademark Law. Granting that appellant used
the mark when appellee stopped using it during the period of time that the
Government imposed restrictions on importation of respondent's brassiere
being the trademark, such temporary non-use did not affect the rights of
appellee because it was occasioned by government restrictions and was
not permanent, intentional, and voluntary.
To work an abandonment, the disuse must be permanent and not
ephemeral; it must, be intentional and voluntary, and not involuntary or even
compulsory. There must be a thoroughgoing discontinuance of any trade-
mark use of the mark in question (Callman, Unfair Competition and
Trademark, 2nd Ed., p. 1341).1äwphï1.ñët
The use of the trademark by other manufacturers did not indicate an
intention on the part of appellee to abandon it.
The instances of the use by others of the term Budweiser, cited by the
defendant, fail, even when liberally construed, to indicate an intention upon
the part of the complainant to abandon its rights to that name. "To establish
the defense of abandonment, it is necessary to show not only acts indicating
a practical abandonment, but an actual intention to abandon." Sanlehner v.
Eisener & Mendelson Co., 179 U.S. 19, 21 S. Ct. 7 (45 L. Ed. 6.0).(Anheuser-
Busch, Inc, v. Budweiser Malt Products Corp., 287 F. 245.)
xxx xxx xxx
Non-use because of legal restrictions is not evidence of an intent to
abandon. Non-use of their ancient trade-mark and the adoption of new
marks by the Carthusian Monks after they had been compelled to leave
France was consistent with an intention to retain their right to use their old
mark. Abandonment will not be inferred from a disuse over a period of years
occasioned by statutory restrictions on the name of liquor. (Nims, Unfair
Competition and Trade-Mark, p. 1269.) (pp. 562-564, supra) (emphasis Ours)
Applying the words of Justice Roman Ozaeta in the "Ang Tibay" case (Ang vs.
Toribio Teodoro, p. 56, supra) to the case now before Us, petitioner herein
must not be allowed to get a free ride on the reputation and selling power of
Standard Brands PLANTERS salted peanuts, for a self-respecting person, or a
reputable business concern as is the case here, does not remain in the
shelter of another's popularity and goodwill but builds one of his own.
4. Findings of fact by the Director of Patents are conclusive and binding on
this Court provided they are supported by substantial evidence. 9 The
testimonial and documentary evidence in addition to the stipulation of facts
submitted by the parties fully support the findings of respondent Director
that(1) there is a confusing similarity between the labels or trademarks of
Philippine Nut and Standard Brands used in their respective canned salted
peanuts; (2) respondent Standard Brands has priority of adoption and use of
the label with PLANTERS as the dominant feature and the same has acquired
secondary meaning in relation to salted peanuts; and (3) there has been no
abandonment or non-use of said trademark by Standard Brands which
would justify its adoption by petitioner or any other competitor for the sale of
salted peanuts in the market.
PREMISES CONSIDERED, We AFFIRM the decision of respondent Director of
Patents with costs against petitioner.
G.R. No. L-23954 April 29, 1977
AMERICAN CYANAMID COMPANY, petitioner,
vs.
THE DIRECTOR OF PATENTS and TIU CHIAN, respondents.
Picazo & Agcaoili and Roque Recio for petitioner.
Solicitor General Arturo A. Alafriz, Assistant Solicitor General Antonio A. Torres
and Solicitor Alicia V. Sempio-Diy for respondent The Director of Patents.
Rafael R. Lasam for respondent.
MUÑOZ PALMA, J.:
This is an appeal from a decision of the Director of Patents in Inter
Partes Case No. 140 entitled "American Cyanamid Company, petitioner,
versus Tiu Chian, respondent which denied the petition of American
Cyanamid Company to cancel the registration of the trademark SULMETINE
issued in favor of Tiu Chian.
The factual background of this case follows:
Petitioner to which We shall refer at times as Cyanamid field on April 3, 1959,
a petition to cancel certificate of registration No. 5348 issued on July 6, 1956,
in favor of respondent Tiu Chian of the Latter's trademark SULMETINE used on
medicine for the control of infectious coryza and for the prevention of cold
rhinitis, roup, cecal coccidiosis and intestinal coccidiosis of chicken and
other domesticated birds. Cyanamid claims that it is the owner of a
trademark SULMET which it had used for many years in the United States
since 1946 and which was duly Registration No. 431929 and which was first
used in the Philippines on May 25, 1950, for which it filed an application for
registration of the same in this country on May 3, 1956. SULMET is the
trademark of a veterinary product used, among other purposes, "for the
control of outbreaks of ceal and intestinal coccidiosis in turkeys' and for
reducing mortality in pullorum disease in baby chicks, acute fowl cholera in
chickens, turkeys and ducks and anatipistifer disease in ducks." Through long
use in the country, SULMET has become popular and well-known and enjoys
widespread reputation brought about by extensive advertisement and
promotion through the media. Notwithstanding the above, respondent filed
an application for registration of SULMETINE as his trademark on a veterinary
product used for the same purposes thereby making respondent's product
confusingly with that of petitioner which is unfair and unjust to the label.
In support of its Petition for cancellation, Cyanamid presented as its Exhibit B
a sample of the label used on its product and as Exhibit C a sample of the
label of respondent Tiu Chian used on the latter's product. (pp. 264-265,
original record) It likewise submitted among its exhibits several indent orders
issued by F.E. ZUELLIG, INC. to various business companies,; covering
petitioner's Sulmet Solution (Exhibits H, H-1, J, J-1, I, I-1, K, and L).
Respondent Tiu Chian opposed this Petition for cancellation of his trademark
SULMETINE.
On June 9, 1964, the Director of Patents rendered his decision denying the
Petition for cancellation of respondent's certificate of registration of the
trademark SULMETINE, based on the following findings:
(1) Petitioner's trademark SULMET (Exhibit B) is used on a preparation for
practically all domesticated animals such as fowl, cattle, pigs, horses and
sheep, whereas, SULMENTINE is limited only to chicken and other
domisticated birds. This distinction is evident from the printed matter
appearing on the respective labels of the parties. Thus, on respondent's label
(Exhibit C) it is indicated thereon that the preparation is for treatment of birds
and chicken (p. 265 volume of exhibits), whereas, the label (Exhibit B) of
petitioner indicates that the product is for chicken, turkey, duck, and may be
employed in the treatment of certain conditions in horses, cattle, calves,
sheep, and swine (p. 264, Idem).
(2) On top of petitioner's label, Exhibit B, the word "CYANAMID" is printed in
prominent letters and at the bottom of the label there appears in bold letters
the words "AMERICAN CYANAMID COMPANY, NEW YORK 20, N.Y." indicating
the manufacturer of the product. On the other hand, at the top of
respondent's label, Exhibit C, there appears the pictures of two roosters with
the word "HENRY'S" in-between, and at the bottom "HENRY'S LABORATORIES
PHILIPPINES" are clearly printed indicating the source of the product.
(3) Petitioner's preparation consists of a dringking water solution and this is
clearly indicated in bold letters on the label, whereas, the of respondent
consists of tablets for veterinary use prominently indicated in red letters on
the label, Exhibit C.
The above differences in the physical aspect or appearance of the
respective labels were found by the Director of Patents substantial and
striking enough so as to prevent any confusing similarity between the two
which may lead a buyer to confuse one with the other.
With respect to Petitioner's contention that respondent's trademark bears the
two syllables of petitioner's SULMET and that respondent merely added the
syllable "INE", the Director of Patents reasoned out that the syllables "SUL" and
"MET" are coined from a common source suggestive of chemical
compounds which are attributes of the products of the parties herein, that is,
"SUL" being derived from "SULFA" and "MET" from methyl, so that neither party
may claim exclusive use to them, and that with the addition of the syllable
"INE" by respondent, a marked distinction is affected to distinguished the two
trademarks.
The Director of Patents likewise found that no material damage was
sustained by petitioner during the time that respondent was using SULMETINE
on its products. Thus, it is shown from Exhibit S that the total of the sales of
SULMET product was P72,824.35 in 1959, which increased to P123,641.85 in
1960, and that although in 1961 the sales decreased slightly to P118,621.25,
that was offset considerably by the sudden increase to P161,238.65 in 1962.
From the foregoing decision, American Cyanamid Company appeals to this
Court and submits five assigned errors, to wit:
First Assignment of Error
Respondent Director of Patents erred in finding that petitioner did not have
priority in the use of its trademark SULMET over respondent Tiu Chian's use of
his trademark SULMETINE.
Second Assignment of Error
Respondent Director of Patents erred in holding that the trademark
SULMETINE is not confusingly similar to the trademark SULMET.
Third Assignment of Error
Respondent Director of Patents erred in holding that respondent Tiu Chian's
certificate of registration No. 5348 for the trademark SULMETINE was not
obtained by fraud.
 Fourth Assignment of Error
Respondent Director of Patents erred in holding that petitioner is legally
obliged to prove damages by reason of the issuance of certificate of
registration No. 5348 as a condition precedent for obtaining its cancellation.
Fifth Assignment of Error
Respondent Director of Patents erred in delegating the authority to hear and
receive the evidence in this case to a so-called hearing officer and therefor
he has no jurisdiction to render the decision appealed from because he did
not hear the case nor receive the evidence thereof.
We view the second assignment of error as the issue which goes to the very
heart of the litigation, the disposition of which renders the treatment of the,
other assigned errors unnecessary.
The problem therefore to be resolved is whether or not petitioner correctly
claims that respondent's trademark SULMETINE was copied from its trademark
SULMETINE giving rise to a confusing similarity between the two in violation of
Republic Act 166 otherwise known as the Trade-Mark Law.
We find petitioner's submittal devoid of merit and hold that there is no
infringement of trademark which justify a cancellation of respondent's
registered trademark SULMETINE.
1. An examination of the documentary evidence submitted by the parties
confirms the findings of the Director of Patents that there are striking
differences between the two labels, Exhibits B and C, which preclude the
possibility of the purchasing public confusing one product with the other.
Said labels are entirely different in size, background, colors, contents, and
pictorial arrangement: in short. the general appearances of the labels
bearing the respective trademarks are so distinct from each other that
petitioner cannot assert that the dominant features, if any, of its trademark
were used or appropriated in respondent's own.
Thus —
(a) The coloring scheme: Petitioner's SULMETINE label, Exhibit B, has a white
background with the word SULMETINE printed in dark green, while
respondent's SULMETINE label, Exhibit C, is dark yellow in color, and the word
SULMETINE. is printed in dark blue. In fact, Exhibit B carries mainly two colors —
white and green, while Exhibit C uses yellow, blue, and red
(b) The pictorial representation: Respondent's label, Exhibit C, presents at its
top the pictures of two roosters and in between is the word "HENRY'S" printed
in an egg-shaped enclosure, while petitioner's label carries no such pictorial
representation nor even one similar to it, for what appears on the top of its
label is the word "CYANAMID" printed in bold and widely-spaced green
letters.
(c) The printed matter on the label: A very important point of difference
between the labels of the parties is found in the cotents of the printed
matter. In the label Exhibit B, the product is described in bold green letters as
"Drinking Water Solution" and the printed directions indicate that it is for use
of chicken flocks, turkeys, ducks, as well as in certain conditions for horses,
cattle, calvess, sheep, and swine. On the other hand, in respondent's label
Exhibit C what are printed in bold red letters are "Tablets Veterinary". Except
for the use of the words "Adult birds" and "Small chicks", there is nothing in
Exhibit C which indicates that the preparation may be used for turkesy,
ducks, or for any other domesticated animals mentioned in the SULMET label.
On this point, it is significant to note that the product represented by the
trademarks of the parties is a medicianal preparation for veterinary use,
consequently, a prospective buyer will be cautious and prudent enough to
examine the contents of the printed matter on the label, unlike in a situation
where the product is for ordinary personal or household use, such as soap
and other tiolet articles, biscuits, candies, and ther like where the consumer is
not expected to exercise moer than ordinary diligence in the choice or
selectioon a purchase not to ascertain that what he is purchasing is a
animals, and in the process mistake a water solution for a tablet over vice
versa.
(d) The clear indication of the source: Petitioner's label clearly indicates that
the product SULMET is of foreign origin.
Not only is the word "CYANAMID" printed in big widely-spaced letters at the
top of the label but at the bottom thereof the words "AMERICAN CYANAMID
COMPANY, NEW YORK 20, N.Y." are printed in white capital letters against a
dark green background. In respondent's SULMENTINE label, Exhibit C, the
name "HENRY'S" in turn is printed clearly above the word SULMETINE and at
the bottom of the label the phrase "HENRY'S LABORATORIES PHILIPPINES"" is
printed in white letters against a dark blue background making it distinctly
visible.
Thus, looking at the two labels Exhibits B and C it is quite apparent that
the source of the product is predominantly indicated thereby discounting
petitioner's assertion that the SULMETINE trademark is a plain copy of its own
with intent to pass respondent's article as coming from the same source as
that of petitioner's medicinal preparation.
What have been stated above sufficiently throws out petitioner's second
assignment of error.
2. In page 56 of petitioner's brief the case of Lim Hoa vs. Director of Patents,
L-8072, October 31, 1956, is invoked in support of this appeal. However, that
case is not controlling because the article in question in Lim Hoa was a food
seasoning product which according to this Court is "generally purchased by
cooks and household help, sometimes illiterate, who are guided by pictorial
representations"; that the two roosters appearing in the trademark of
applicant and the hen appearing in the trademark of the oppositor although
of different sexes belong to the same family of chicken known as "manok" so
that when a cook or a housewife buys a food seasoning product for the
kitchen the brand of "manok" or "marka manok" will be uppermost in her
mind and regardless of whether the picture is a hen or a rooster, to her, they
are all "manok", and consequently there lies the confusion, even deception.
In this case of SULMET and SULMETINE, the product is for medicinal veterinary
use and consequently, the purchaser will be more wary of the nature of the
product he is buying. Contrary to the allegation of petitioner herein, the
source or manufacturer of the article will be a most important factor in the
mind of the purchaser in selecting the article he will buy, and a preparation
manufactured by a well-known foreign company such as the "American
Cyanamid Company, New York", enjoys a decided advantage over one
which is locally produced and manufactured by an unknown entity such as
"Henry's Laboratories".
What is relevant to and decisive of the case at bar is Mead Johnson & Co. vs.
N.V.J. Van Dorp. Ltd., et al., L-17501, decided on April 27, 1963, barely a year
before the appealed decision in the instant case. Van Dorp, Ltd., a
Netherlands corporation, filed an application for the registration of its
trademark "ALASKA and pictorial presentation of a Boy's Head with a
rectangular design." Mead Johnson, a corporation organized under the laws
of Indiana, U.S.A., being the owner of a trademark "ALACTA" used for
powdered half-skim milk, which was registered with the Patent Office on
June 12, 1951, opposed the registration on the ground that it will be
damaged by the use of the trademark "ALASKA" on milk products, etc., the
same being confusedly similar to its trademark "ALACTA". The Director of
Patents dismissed the opposition and approved for registration the
trademark "ALASKA" on the ground that the applicant's trademark does not
sufficiently resemble oppositor's mark as to cause confusion or mistake or
deceive purchasers. This Court through Justice Bautista Angelo upheld the
findings of the Director of Patents. The Court held that while there are
similarities in spelling, appearance and sound between "ALACTA" and
"ALASKA" the trademarks in their entirety as they appear in their respective
labels show glaring and striking differences or dissimilarities such as in size of
the containers, the colors of the labels, inasmuch as one uses light blue, pink,
and white, while Van Dorp contains uses two colors "ALACTA" has only the
first letter capitalized and is written in black while the mark "ALASKA" has all
the letters capitalized written in while except that of the condensed full
cream milk which is in red. 1
Ethepa vs. the Director of Patents, Westmont Pharamaceutical, Inc. is
another case in point. In Ethepa, the question was whether the trademark
"ATUSSIN" of Westmont may be registered in the Philippines notwithstanding
the objection of Ethepa which claimed that it would be damaged because
"ATUSSIN" is so confusingly similar with "PERTUSSIN" registered in this country on
September 25, 1957. The Director of Patents approved the application for the
registration of the trademark "ATUSIN" and his decision was appealed to this
Court. In disposing of the appeal, the Court affirmed the decision of the
Director of Patents holding, inter alia, that a practical approach to the
problem of similarity or dissimilarity is to go into the whole of the two
trademarks pictured in their manner of display; that taking a casual look at
the two labels it is shown that they are entirely different in color, contents,
arrangement of words thereon, sizes, shape, and general appearance so
that the label of one cannot be mistaken for that the other; that the use of
the word "tussin" as an component of both trademarks cannot be
considered as a factor for declaring the two confusingly similar for "tussin" is
descriptive and generic and is open for apropriation by anyone, and that
while the word by itself cannot be used exclusively to Identify one goods it
may properly become a subject of a a trademark by combination with
another word or phrase; hence, Ethepa's "Pertussin "
and Westmonth's Atussin" 2
Similarly, in the case before Us, as correctly stated by the Director of Patents,
the word SULMET is derived from a combination of the syllables "SUL" which is
derived from Sulfa and "MET" from methyl both of which are chemical
compounds present in the article manufactured by the contending parties,
and the addition of the syllable "INE" in respondent's label is sufficient to
distinguish respondent's product or trademark from that of petitioner.
3. Petitioner also asserts that the trademarks of the parties are used on
Identical goods and for Identical purposes and that this is an important
factor in determining whether or not there is infringement of a trademark. (p.
49, petitioner's brief). We cannot agree with petitioner that the trademarks
are used on Identical goods because as already indicated earlier,
petitioner's SULMET label, Exhibit B, is used on a drinking water solution while
that of respondent labels tablets. That both products are for Identical use
may be admitted to the extent that respondent's tablets are indicated for
the treatment, control and prevention in chicken of infectious coryza also
known as colds, rhinitis and roup) and for the prevention of cecal and
intestinal coccidiosis which is also indicate in petitioner's SULMET label.
However, no one including petitioner can claim a monopoly in the
preparation of a medicinal product for the use indicated above. The field is
open for the manufacture of medicinal preparations for the same veterinary
purposes. What the law prohibits is that one manufacturer labels his product
in a manner strikingly Identical with or similar to that of another manufacturer
as to deceive or confuse the buying public into believing that the two
preparations are one and come from the same source. In the case however
of SULMETINE and SULMETINE it is satisfactorily shown from the evidence of the
parties that while their products may be for a similar use, their presentation to
the purchasing public come in totally different forms.
Bistol Myers Company vs. The Director of Patents and United American
Pharmaceuticals, Inc., presents a similar Problem or situation. In this case,
United American Pharmaceuticals filed on October 21, 1957 a petition for
registration with the patent office of its trademark "BIOFERIN" intended for the
treatment of common colds, influenza, etc. This application was opposed by
Bristol Myers Company which is the owner in the Philippines of the trademark
'BUFFERIN" and which is also intended for relief in cases of "simple headaches,
neuralgia, colds, menstrual pain and minor muscular aches." The Director of
Patents approved the registration of "BIOFERIN" and his decision was
appealed to this Court, the appellant contending principally that both
products are used for the relief of pains such as headaches and colds and
that the words 'BIOFERIN" and "BUFFERIN" are practically the same in spelling
and pronunciation. Affirming the decision of the Director of Patents, the
Court through Justice J.P. Bengzon held that although the two words
"BIOFERIN" and 'BUFFERIN' have the same suffix and similar sounding prefixes,
they appear in their respective labels with striking different backgrounds and
surroundings, as to color, size and design, and consequently there is no
confusing similarity between the trademarks.
Similarly, the trademarks "ALACTA" and "ALASKA" were used for milk products
and the like (Mead Johnson vs N.V.J. Van Dorp, Ltd., supra) while "ATUSSIN"
and "PERTUSSIN" as trademarks were used for cough and other bronchial
ailments Ethepa vs Director of Patents, supra), and all were duly recognized
as registrable trademarks.
4. In view of our conclusion that there is no confusing of deceptive similarity
between SULMET and SULMETINE, it is unnecessary to pass upon the merits of
the first, third and fourth assigned errors.
Absent a finding of confusing similarity between two trademarks, the priority
in the use of the marks SULMET by the petitioner will have no decesive effect
in the granting of his petition for cancellation of the registration of
respondent trademark (First Assignment of Error).
With respect to the allegation of petitioner that the trademark SULMETINE
was obtained by fraud, as held in La Estrella Distillery, Inc. vs. the Director of
Patents, et al., 105 Phil. 1213, the question whether or not the registration of
the trademark had been obtained with the fraud and false representation
becomes necessary and important only when there is a finding of similarity
between the contesting trademarks, and in order that proof of fraud might
produce cancellation it is necessary that it be coupled with a showing that
the label trademarks of the parties are similar and that the maintenance of
one trademark would work to the damage of the other. (Third Assignment of
Error).
On the contention of petitioner herein that there it was error for the Director
of Patents to rule that the burden rests on petitioner to show probable
damage which it has not discharged, suffice it to the state that any error or
mistake committed by respondent Director of Patents on this point will not
affect one way or the other Decision in this case which is principally based
on the finding that there is no similarity between the two trademarks SULMET
and SULMETINE likely to cause confusion in the buying public so as constitute
a violation of the Trademark Statute. (Fourth Assignment of Error).
In its fifth assignment of error, petitioner questions the delegation by the
Director of Patents of his authority to hear and receive the evidence in this
case to a Hearing Officer and alleges that respondent Director had no
jurisdiction to render the decision appealed from. Third matter has now been
put to rest in American Tobacco Company, et al. vs. Director of Patents, et
al., L-26803, decided on October 15, 1975 which involved the authority of the
Director of Patents Office to hear Inter Partes Proceedings in the registration
of trademarks and tradenames under Republic Act 166. This Court through
Justice Felix Antonio held inter alia:
The nature of the power and authority entrusted to the Director of Patents
suggests that the aforecited laws (Republic Act No. 166, in relation to
Republic Act No. 165) should be construed so as to give the aforesaid official
the administrative flexibility necessary for the prompt and expeditious
discharge of his duties in the administration of said laws. As such officer, he is
required, among others, to determine the question of priority in patent
interference proceedings, decide applications for reinstatement of a lapsed
patent, cancellation of patents under Republic Act No. 165, inter
partes proceedings such as Oppositions, claims of interference, cancellation
cases under the Trade-mark Law and other matters in connection with the
enforcement of the aforesaid laws. ...
Thus, it is well-settled that while the power to decide resides solely in the
administrative agency vested by law, this does not preclude a delegation of
the power to hold a hearing on the basis of which the decision of the
administrative agency will be made.
The rule that requires an administrative officer to exercise his own judgment
and discretion does not preclude him from utilizing, as a matter of practical
administrative procedure, the aid of subordinates to investigate and report
to him the facts, on the basis of which the officer makes his decisions. It is
sufficient that the judgment and discretion finally exercised are those of the
officer authorized by law. 4
As correctly observed in the foregoing case, the point involved is procedural
and not jurisdictional. Being so, the jurisdiction of respondent Director to
render the decision assailed is not affected by lapses in the observance of
the procedural rules, if no objection thereto is seasonably raised. Non-
conformity with rules on procedure is deemed waived in the absence of any
objection thereto. The entire records of the case at bar fail to disclose any
objection on the part of petitioner to the hearing of the case and the
reception of evidence by a Hearing Officer. It surprises us why the petitioner
participated throughout the proceedings before the Hearing Officer from
1959 to 1964, actively prosecuting its case therein, and now asks this Court to
nullify the whole proceedings together with the decision rendered which
happened to be adverse to him.
WHEREFORE, We affirm the decision of respondent Director of Patents, with
costs against petitioner. So Ordered.