Converse Rubber Corp. vs Universal Rubber Products, Inc.

GR No. L-27906
January 8, 1987

FACTS:
 Converse Rubber Corporation is an American corporation while Universal Rubber Products, Inc. is
a corporation licensed to do business in the country. Converse has been operating since 1946.
Universal Rubber has been operating since 1963.
 Universal Rubber filed an application for the trademark “Universal Converse and Device” used
on rubber shoes and rubber slippers before the Philippine Patent Office.
 Converse Rubber opposed as it averred that the word “Converse” which is part of its corporate
name cannot be granted as part of Universal Rubber’s trademark or trade name
o On the ground that the trademark sought to be registered is confusingly similar to the
word ‘Converse’ which is part of its corporate name ‘Converse Rubber Corporation’ and
will likely deceive purchasers and cause irreparable injury to its reputation and goodwill
in the Philippines. The Director of Patent dismissed the opposition of the petitioner and
gave due course to respondent’s application.
 Petitioner failed to present proof that the single word “CONVERSE’ in its corporate name has
become so identified with the corporation that whenever used, it designates to the mind of the
public that particular corporation.
o Proof of sales by a single witness is not enough proof;

ISSUE:
Whether or not there is confusing similarity between the two trademarks (Converse Rubber Corp. &
Universal Converse and Device)

HELD:
 Yes.
 From a cursory appreciation of the Converse Rubber’s corporate name “CONVERSE RUBBER
CORPORATION” it is evident that the word “CONVERSE” is the dominant word which identifies
Converse Rubber from other corporations engaged in similar business.
 Universal Rubber admitted the existence of Converse Rubber engaged in the manufacture of
rubber shoes since 1946.
o This admission necessarily betrays its knowledge of the reputation and business of
petitioner even before it applied for registration of the trademark in question.
 Knowing, therefore, that the word “CONVERSE” belongs to and is being used by Converse Rubber,
and is in fact the dominant word in its corporate name, Universal Rubber has no right to
appropriate the same for use on its products which are similar to those being produced by
Converse Rubber.