3. Trademark ( Secs.
121-170, IPC) Whether or not the Convention of Paris for the Protection of Industrial Property
a. Definition of marks, collective marks, trade name (sec 121)
Mark means any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked
container of goods.
Collective mark means any visible sign designated as such in the application for
registration and capable of distinguishing the origin or any other common
characteristic, including the quality of goods or services of different enterprises
which use the sign under the control of the registered owner of the collective mark.
Trade name means the name or designation identifying or distinguishing an
enterprise. (IPC, Sec. 121.1, 121.2, 121.3)
Add: Functions of mark
(a) Mirpuri v. Court of Appeals, G.R. no 114508, November 19,1999
Facts:
On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of
petitioner Pribhdas J. Mirpuri, filed an application with the Bureau of Patents for
the registration of the trademark "Barbizon" for use in brassieres and ladies
undergarments. Barbizon Corporation, the private respondent of the case at bar
opposed the application on the ground that the mark Barbizon of the applicant is
confusingly similar to the trademark Barbizon of which the opposer has not
abandoned. Furthermore, it was alleged by the opposer that it shall suffer
damage by the registration of the mark Barbizon and its business reputation and
goodwill will suffer great and irreparable injury, and that the use by the applicant
by the said mark which resembles the trademark used and owned by oppose
constitutes an unlawful appropriation of a mark previously used in the
Philippines and not abandoned therefore a statutory violation of Sec 4 (d) of
Republic Act No. 166, as amended. The opposition was dismissed and Escobar
was issued a certificate of registration for the trademark “Barbizon”, and
subsequently Escobar assigned all her rights and interest over the trademark to
petitioner Pribhdas J. Mirpuri. However, Escobar failed to file an Affidavit of Use
of the trademark so Escobar’s certificate of registration was cancelled.
Consequently, she reapplied for the registration of the cancelled trademark.
Opposer's BARBIZON as well as its BARBIZON and Bee Design and BARBIZON and
Representation of a Woman trademarks are deemed to qualify as well-known
trademarks.
Issue:
affords protection to a foreign corporation against a Philippine applicant for the
registration of a similar trademark
Held:
On record, there can be no doubt that respondent-applicant's sought-
to-be-registered trademark BARBIZON is similar, in fact obviously identical, to
opposer's alleged trademark BARBIZON, in spelling and pronunciation. The only
appreciable but very negligible difference lies in their respective appearances or
manner of presentation. Respondent-applicant's trademark is in bold letters (set
against a black background), while that of the opposer is offered in stylish script
letters.
The Convention of Paris for the Protection of Industrial Property,
otherwise known as the Paris Convention, is a multilateral treaty that seeks to
protect industrial property consisting of patents, utility models, industrial
designs, trademarks, service marks, trade names and indications of source or
appellations of origin, and at the same time aims to repress unfair competition.
The Convention is essentially a compact among various countries which, as
members of the Union, have pledged to accord to citizens of the other member
countries trademark and other rights comparable to those accorded their own
citizens by their domestic laws for an effective protection against unfair
competition. In short, foreign nationals are to be given the same treatment in
each of the member countries as that country makes available to its own citizens.
Nationals of the various member nations are thus assured of a certain minimum
of international protection of their industrial property.
The main argument is embedded on Art 6 of the Paris Convention which
governs the protection of well-known marks. The essential requirement of the
said article is that the trademark to be protected must be "well-known" in the
country where protection is sought. The power to determine whether a
trademark is well-known lies in the "competent authority of the country of
registration or use." This competent authority would be either the registering
authority if it has the power to decide this, or the courts of the country in
question if the issue comes before a court
(b) Berries Agricultural Co. Inc. v. Norby Abyadang G.R. no 183404, October 13,2010
Facts:
Norvy Abyadang filed a trademark application with the IPO for the mark
"NS D-10 PLUS" for use in connection with Fungicide. Berris Agricultural Co., Inc.
filed an opposition against the trademark citing that it is similar and/or confusingly
similar to its registered trademark, "D-10 80 WP" which is also used for Fungicide
 also with the same active ingredient.The IPO ruled in favor of Berries but on appeal
with the CA, the CA ruled in favor of Abyadang.
Issue:
WON there exists a confusing similarity between the trademarks of Berris and
Agyadang.
Held: YES.
Ratio: According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered
if it is identical with a registered mark belonging to a different proprietor with an
earlier filing or priority date, with respect to: (1) the same goods or services; (2)
closely related goods or services; or (3) near resemblance of such mark as to likely
deceive or cause confusion. In determining similarity and likelihood of confusion,
jurisprudence has developed tests the Dominancy Test and the Holistic or Totality
Test. The Dominancy Test focuses on the similarity of the prevalent or dominant
features of the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public. In contrast, the Holistic or Totality
Test necessitates a consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity.
The discerning eye of the observer must focus not only on the predominant words
but also on the other features appearing on both labels so that the observer may
draw conclusion on whether one is confusingly similar to the other. The Supreme
Court found that both products have the component D-10 as their ingredient and
that it is the dominant feature in both their marks. Applying the Dominancy Test,
Abyadang's product is similar to Berris' and that confusion may likely to occur
especially that both in the same type of goods. Using the Holistic Test, it was more
obvious that there is likelihood of confusion in their packaging and color schemes of
the marks. The Supreme Court states that buyers would think that Abyadang's
product is an upgrade of Berris'.Furthermore, Berris, as prior user and prior
registrant has in its favor the rights conferred by the IP law with regards to
registered mark. Dispositive: The petition is GRANTED. Costs against respondent.
b. Acquisition of ownership and mark (sec 122)
(a) Birkenstock Orthopaedic Gmbh and CO. Kg. (formerly Birkenstock Orthopaedic
GMBh vs. Philippine Shoe Expo Mktg. Corp. Gr. No 194307 November 20, 2013
Facts:
Petitioner, a corporation duly organized and existing under the laws of
Germany applied for various trademark registrations before the Intellectual
Property Office (IPO). However, the applications were suspended in view of the
existing registration of the mark “BIRKENSTOCK AND DEVICE” under Registration
No. 56334 dated October 21, 1993 in the name of Shoe Town International and
Industrial Corporation, the predecessor-in-interest of respondent Philippine Shoe
Expo Marketing Corporation.
On May 27, 1997, petitioner filed a petition (Cancellation Case) for
cancellation of Registration No. 564334 on the ground that it is the lawful and
rightful owner of the Birkenstock marks. During its pendency, however,
respondent and/or it predecessor-in-interest failed to file the required 10th Year
Declaration of Actual Use (10th Year DAU) for Registration No. 56334 on or before
October 21, 2004, thereby resulting the cancellation of such mark. Accordingly,
the cancellation case was dismissed for being moot and academic thereby paving
the way for the publication of the subject applications.
In response, respondent filed with the Bureau of Legal Affairs (BLA) of
the IPO three separate verified notices of opposition to the subject applications
docketed as Inter Partes Cases claiming, among others, it, together with its
predecessor-in-interest, has been using the Birkenstock marks in the Philippines
for more than 16 years through the mark “BIRKENSTOCK AND DEVICE”. In its
Decision, the BLA of the IPO sustained respondent’s opposition, thus ordering
the rejection of the subject applications. Aggrieved, petitioner appealed to the
IPO Director General whereby in its decision, the latter reversed and set aside
the ruling of the BLA thus allowing the registration of the subject applications.
Finding the IPO Director General’s reversal of the BLA unacceptable,
respondent filed a petition for review with the Court of Appeals. In its decision
dated June 25, 2010, the CA reversed and set aside the ruling of the IPO Director
General and reinstated that of the BLA. The petitioner filed a Motion for
Reconsideration but was denied by the CA. Hence , this petition to the Supreme
Court.
ISSUE:
1. Whether or not the petitioner’s documentary evidence, although
photocopies, are admissible in court?
2. Whether or not the subject marks should be allowed registration in the
name of the petitioner?
HELD:
1. The court ruled yes. It is a well-settled principle that the rules of procedure
are mere tools aimed at facilitating the attainment of justice, rather than its
frustration. A strict and rigid application of the rules must always be
eschewed when it would subvert the primary objective of the rules, that is,
to enhance fair trials and expedite justice. In the light of this, Section 5 of the
 Rules on Inter Partes Proceedings provides that, “The Bureau shall not be
bound by strict technical rules of procedure and evidence but may adopt, in
the absence of any applicable rule herein, such mode of proceedings which
is consistent with the requirements of fair play and conducive to the just,
speedy and inexpensive disposition of cases, and which will the Bureau the
greatest possibility to focus on the contentious issues before it.
In the case at bar, it should be noted that the IPO had already obtained the
originals of such documentary evidence in the related Cancellation Case
earlier before it. Under the circumstance and the merits of the instant case
as will be subsequently discussed, the Court holds that the IPO Director
General’s relaxation of procedure was a valid exercise of his discretion in the
interest of substantial justice.
2. The court ruled in favor of the petitioner. Under Section 12 of Republic Act
166, it provides that, “Each certificate of registration shall remain in force for
twenty years: Provided, that the registration under the provisions of this Act
shall be cancelled by the Director, unless within one year following the fifth,
tenth and fifteenth anniversaries of the date of issue of the certificate of
registration, the registrant shall file in the Patent Office an affidavit showing
that the mark or trade-name is still in use or showing that its non-use is due
to special circumstance which excuse such non-use and is not due to any
intention to abandon the same, and pay the required fee.”
In the case at bar, respondent admitted that it failed to file the 10 th Year
DAU for Registration No. 56334 within the requisite period, or on or before
October 21, 2004. As a consequence, it was deemed to have abandoned or
withdrawn any right or interest over the mark “BIRKENSTOCK”. It must be
emphasized that registration of a trademark, by itself, is not a mode of
acquiring ownership. If the applicant is not the owner of the trademark, he
has no right to apply for its registration. Registration merely creates a prima
facie presumption of the validity of the registration. Such presumption, just
like the presumptive regularity in the performance of official functions, is
rebuttable and must give way to evidence to the contrary. Besides,
petitioner has duly established its true and lawful ownership of the mark
“BIRKENSTOCK”. It submitted evidence relating to the origin and history of
“BIRKENSTOCK” and it use in commerce long before respondent was able to
register the same here in the Philippines. Petitioner also submitted various
certificates of registration of the mark “BIRKENSTOCK” in various countries
and that it has used such mark in different countries worldwide, including
the Philippines.
c. Acquisition of ownership of Trade Name
(1) Coffee Partners v. San Francisco Coffee and Roastery Inc. Gr. No 160504, March 3,
2010
Facts:
Petitioner Coffee Partners, Inc. is a local corporation engaged in the
business of establishing and maintaining coffee shops in the country. It has a
franchise agreement6cЃa with Coffee Partners Ltd. (CPL), a business entity
organized and existing under the laws of British Virgin Islands, for a non-exclusive
right to operate coffee shops in the Philippines using trademarks designed by CPL
such as "SAN FRANCISCO COFFEE." Respondent is a local corporation engaged in
the wholesale and retail sale of coffee. It registered with the SEC in May 1995. It
registered the business name "SAN FRANCISCO COFFEE & ROASTERY, INC." with
the Department of Trade and Industry (DTI) in June 1995. Respondent formed a
joint venture company with Boyd Coffee USA under the company name Boyd
Coffee Company Philippines, Inc. (BCCPI), which is engaged in the processing,
roasting, and wholesale selling of coffee.
In 2001, respondent discovered that petitioner was about to open a
coffee shop under the name "SAN FRANCISCO COFFEE" in Libis, Quezon City.
According to respondent, petitioners shop caused confusion in the minds of the
public as it bore a similar name and it also engaged in the business of selling
coffee. Respondent also filed a complaint with the Bureau of Legal Affairs-
Intellectual Property Office (BLA-IPO) for infringement and/or unfair
competition. Petitioner denied the allegations in the complaint. Petitioner
alleged it filed with the Intellectual Property Office (IPO) applications for
registration of the mark "SAN FRANCISCO COFFEE & DEVICE" for class 42 in 1999
and for class 35 in 2000.
BLA-IPO rendered a decision favourable to the respondents and found
herein petitioners guilty of trademark ingfringement. ODG-IPO; however
reversed the decision of the Bureau which lead respondents to appeal. CA again
reversed the decision of the Office of the Director General and affirmed the BLA-
IPO’s finding, hence this petition.
Issue:
Whether petitioners use of the trademark "SAN FRANCISCO COFFEE"
constitutes infringement of respondents trade name "SAN FRANCISCO COFFEE &
ROASTERY, INC.," even if the trade name is not registered with the Intellectual
Property Office (IPO).
Held:
 In Prosource International, Inc. v. Horphag Research Management SA,
this Court laid down what constitutes infringement of an unregistered trade
name, thus:
(1) The trademark being infringed is registered in the Intellectual Property Office;
however, in infringement of trade name, the same need not be registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or
colorably imitated by the infringer;
(3) The infringing mark or trade name is used in connection with the sale,
offering for sale, or advertising of any goods, business or services; or the
infringing mark or trade name is applied to labels, signs, prints, packages,
wrappers, receptacles, or advertisements intended to be used upon or in
connection with such goods, business, or services;
(4) The use or application of the infringing mark or trade name is likely to cause
confusion or mistake or to deceive purchasers or others as to the goods or
services themselves or as to the source or origin of such goods or services or the
identity of such business; and
(5) It is without the consent of the trademark or trade name owner or the
assignee thereof.
Clearly, a trade name need not be registered with the IPO before an
infringement suit may be filed by its owner against the owner of an infringing
trademark. All that is required is that the trade name is previously used in trade
or commerce in the Philippines. Section 22 of Republic Act No. 166, 12cЃa as
amended, required registration of a trade name as a condition for the institution
of an infringement suit. However, RA 8293, Section 165.2 of RA 8293
categorically states that trade names shall be protected, even prior to or without
registration with the IPO, against any unlawful act x x x. Also, applying the
dominancy test or the holistic test, petitioners "SAN FRANCISCO COFFEE"
trademark is a clear infringement of respondents "SAN FRANCISCO COFFEE &
ROASTERY, INC." trade name.
(2) GSIS Family Bank and Thrift Bank v. BPI Family Bank G.R no. 175278, September
23, 2015
d. Non Registrable Marks (Sec 123)
(1) Fredco Manufacturing Corp. v. President and Fellow of Harvard College G.R. no
185917, June 1, 2011
Facts:
Fredco Manufacturing Corporation filed before the Bureau of Legal
Affairs of the Philippine Intellectual Property Office a Petition for
Cancellation of Registration No. 56561 issued to President and Fellows of
Harvard College for the mark “Harvard Veritas Shield Symbol”.
Fredco claimed that Harvard University had no right to register the
mark, since its Philippine registration was based on a foreign registration.
Hence,Harvard University could not have been considered as a prior user of
the mark in the Philippines.
Fredco explained that the mark was first used in the Philippines by
its predecessor-in-interest New York Garments as early as 1982, and a
certificate of registration was then issued in 1988 for goods under class 25.
Although the registration was cancelled for the non-filing of an affidavit of
use, the fact remained that the registration preceded Harvard University’s
use of the subject mark in the Philippines.
Harvard University, on the other hand claimed that the name and mark
“Harvard” was adopted in 1639 as the name of Harvard College of
Cambridge, Massachusetts, USA.
The Bureau of Legal Affairs ruled in favor of Fredco and ordered the
cancellation of Registration No. 56561. It found Fredco to be the prior user
and adopter of the mark “Harvard” in the Philippines. On appeal, the Office
of the Director General of the Intellectual Property Office reversed the BLA
ruling on the ground that more than the use of the trademark in the
Philippines, the applicant must be the owner of the mark sought to be
registered. Fredco, not being the owner of the mark, had no right to register
it.
The Court Appeals affirmed the decision of the Office of the
Director General. Fredco appealed the decision with the Supreme Court. In
its appeal, Fredco insisted that the date of actual use in the Philippines
should prevail on the issue of who had a better right to the mark.
The SC held that:
Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before
a trademark can be registered, it must have been actually used in commerce
for not less than two months in the Philippines prior to the filing of an
application for its registration. While Harvard University had actual prior use
of its marks abroad for a long time, it did not have actual prior use in the
Philippines of the mark "Harvard Veritas Shield Symbol" before its
application for registration of the mark "Harvard" with the then Philippine
Patents Office. However, Harvard University's registration of the name
 "Harvard" is based on home registration which is allowed under Section 37
of R.A. No. 166. As pointed out by Harvard University in its Comment:
Section 2 of the Trademark law (R.A. 166) requires for the registration of
trademark that the applicant thereof must prove that the same has been
actually in use in commerce or services for not less than two (2) months in
the Philippines before the application for registration is filed, where the
trademark sought to be registered has already been registered in a foreign
country that is a member of the Paris Convention, the requirement of proof
of use in the commerce in the Philippines for the said period is not
necessary. An applicant for registration based on home certificate of
registration need not even have used the mark or trade name in this
country.”
“In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293),
"[m]arks registered under Republic Act No. 166 shall remain in force but
shall be deemed to have been granted under this Act x x x," which does not
require actual prior use of the mark in the Philippines. Since the mark
"Harvard Veritas Shield Symbol" is now deemed granted under R.A. No.
8293, any alleged defect arising from the absence of actual prior use in the
Philippines has been cured by Section 239.2.”
The Supreme Court further ruled that Harvard University is entitled to
protection in the Philippines of its trade name “Harvard” even without
registration of such trade name in the Philippines. It explained:
“There is no question then, and this Court so declares, that "Harvard" is a
well-known name and mark not only in the United States but also
internationally, including the Philippines.
(3)
(2) Ana Ang vs. Toribio Teodoro, G.R. no L-48226, December 14, 1942
FACTS
Respondent Toribio Teodoro, has continuously used "Ang Tibay," both
as a trade-mark and as a trade-name, in the manufacture and sale of slippers,
shoes, and indoor baseballs since 1910. He formally registered it as trade-mark
on September 29, 1915, and as trade-name on January 3, 1933.
Petitioner 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 that year she advertised the factory which she had
just built and it was when this was brought to the attention of the herein
respondent filed a complaint against the petitioner.
The trial court absolved the complaint 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(petitioner); 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 Court of Appeals reversed
the trial court’s judgment holding that by uninterrupted and exclusive use since
1910 in the manufacture of slippers and shoes, respondent's trade-mark has
acquired a secondary meaning.
ISSUE
Whether or not the “doctrine of secondary meaning” can be applied to
respondent’s trade-mark.
RULING OF THE COURT
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. “Ang Tibay,” as used by the respondent to designate his wares, had
exactly performed that function for 22 years before the petitioner adopted it as a
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. Even if “Ang Tibay,” therefore,
were not capable of exclusive appropriation as a trade-mark, the application of
the doctrine of secondary meaning 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 propriety
connotation.
Mcdonalds Corporation v. LC Big Mac Burger, Inc. G.R no 14399
Facts:
McDonald’s is a corporation organized under the laws of Delaware which
operates by itself or through its franchisees a global chain of fast-food
restaurants. It owns a family of marks including “Big Mac” for their “double-
decker hamburger sandwich.” This trademark was registered with the US
Trademark Registry on October 16, 1979. Thus, McDonald’s displays the “Big
Mac” mark in their items and paraphernalia.
L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food
outlets and snack vans in Metro Manila and nearby provinces. The menu includes
hamburger sandwiches. On October 25, 1988, they applied for the registration of
the “Big Mak” mark for their hamburger sandwiches which McDonald’s opposed,
 the latter alleging that “Big Mak” was a colorable imitation of its registered “Big
Mac” mark for the same food products.
McDonald’s wrote to the chairman of the Board of Directors of L.C. Big Mak
Burger requesting the latter to desist from using “Big Mac” mark but there was
no reply. McDonald’s then sued L.C. Big Mak for infringement and unfair
competition.
Issue:
Whether or not L.C. Big Mak Burger, Inc. is liable for infringement and unfair
competition.
Held:
Yes. The Court, in holding the respondents liable, relied on the dominancy test
rather than holistic test. The dominancy test considers the dominant features in
the competing marks in determining whether they are confusingly similar. Under
the dominancy test, courts give greater weight to the similarity of the
appearance of the product arising from theadoption of the dominant features of
the registered mark, disregarding minor differences. Courts will consider more
the aural and visual impressions created by the marks in the public mind, giving
little weight to factors like prices, quality, sales outlets and market segments.
Applying the dominancy test, the Court finds that respondents' use of the "Big
Mak" mark results in likelihood of confusion. First, "Big Mak" sounds exactly the
same as "Big Mac." Second, the first word in "Big Mak" is exactly the same as the
first word in "Big Mac." Third, the first two letters in "Mak" are the same as the
first two letters in "Mac." Fourth, the last letter in "Mak" while a "k" sounds the
same as "c" when the word "Mak" is pronounced. Fifth, in Filipino, the letter "k"
replaces "c" in spelling, thus "Caloocan" is spelled "Kalookan."
In short, aurally the two marks are the same, with the first word of both marks
phonetically the same, and the second word of both marks also phonetically the
same. Visually, the two marks have both two words and six letters, with the first
word of both marks having the same letters and the second word having the
same first two letters. In spelling, considering the Filipino language, even the last
letters of both marks are the same.
Clearly, respondents have adopted in "Big Mak" not only the dominant but also
almost all the features of "Big Mac." Applied to the same food product of
hamburgers, the two marks will likely result in confusion in the public mind.
(5)
(4) Mcdonalds Corporation vs. MacJoy Fastfood Corp. G.R no 166155, February 2,
2007
Facts:
On Mar. 14, 1991, respondent Macjoy Fastfood Corporation, a domestic
corporation engaged in the sale of Fast food products in Cebu city, filed with
BPTT, now IPO, an application for registration of the trademark ‘’MACJOY &
DEVICE’’ for fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok,
tacos, sandwiches, halo-halo and steaks. Petitioner McDonald’s Corporation,
filed a verified Notice of Opposition against the respondent’s application claiming
that the trademark ‘’MACJOY & DEVICE’’ so resembles its corporate logo
otherwise known as the Golden Arches or ‘’M’’ design, and its marks ‘’
McDonalds, ‘’McChicken’’,’’MacFries’’,
‘’BigMac’’,’’McDo’’,’’McSpaghetti,’’McSnack’’, and ‘’Mc, such that when used on
identical or related goods, the trademark applied for would confuse or deceive
purchasers into believing that the goods originate from the same source or
origin. On Dec. 28, 1998, the IPO sustained the petitioner’s opposition and
rejected the respondent’s application. CA reversed.
Issue:
Whether or not respondent’s McJoy and Device marks are confusingly
similar to petitioner’s ‘’McDonald’s marks’’?
Held:
Yes. In determining similarity and likelihood of confusion, jurisprudence
has developed two test-the dominancy test and the holistic test: The dominancy
test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion or deception; the holistic test requires
the court to consider the entirety of the marks as applied to the products,
including the labels and packaging. Applying the dominancy test, ‘’ McDonald’s
and ‘’MACJOY’’ marks are confusingly similar with each other such that an
ordinary purchaser can conclude an association or relation between the marks.
Respondent alleged that the word ‘’MACJOY’’ is based on the name of its
president’s niece, Scarlett Yu Carcell. By its implausible and insufficient
explanation as to how and why out of the many choices of words if could have
used for its trade name and/or trademark, it chose the word ‘’MACJOY’’, the only
logical conclusion deducible therefrom is that the respondent would want to ride
high on the establish reputation and goodwill of the MCDONALD’S marks, which,
as applied to petitioner’s restaurant business and food products, is undoubtedly
beyond question.
Seri Somboonsakdikul vs. Orlane SA G.R. no 188996, February 1, 2007
Facts:
On September 23, 2003, petitioner Seri Somboonsakdikul (petitioner) filed an
application for registration of the mark LOLANE with the IPO for goods classified
under Class 3 (personal care products) of the International Classification of Goods
and Services for the Purposes of the Registration of Marks (International
Classification of Goods). Orlane S.A. (respondent) filed an opposition to petitioner's
application, on the ground that the mark LOLANE was similar to ORLANE in
presentation, general appearance and pronunciation, and thus would amount to an
infringement of its mark. Respondent alleged that: (1) it was the rightful owner of
the ORLANE mark which was first used in 1948; (2) the mark was earlier registered
in the Philippines on July 26, 1967 under Registration No. 129961 with the following
goods: x x x perfumes, toilet water, face powders, lotions, essential oils, cosmetics,
lotions for the hair, dentrifices, eyebrow pencils, make-up creams, cosmetics &
toilet preparations under Registration No. 12996 and (3) on September 5, 2003, it
filed another application for use of the trademark on its additional products.
Petitioner denied that the LOLANE mark was confusingly similar to the mark
ORLANE. He averred that he was the lawful owner of the mark LOLANE which he
has used for various personal care products sold worldwide. He alleged that the
first worldwide use of the mark was in Vietnam on July 4, 1995. Petitioner also
alleged that he had continuously marketed and advertised Class 3 products bearing
LOLANE mark in the Philippines and in different parts of the world and that as a
result, the public had come to associate the mark with him as provider of quality
personal care products.
Petitioner maintained that the marks were distinct and not confusingly similar
either under the dominancy test or the holistic test.
The Bureau of Legal Affairs (BLA) rejected petitioner's application in a Decision
dated February 27, 2007, finding that respondent's application was filed, and its
mark registered, much earlier. The BLA ruled that there was likelihood of confusion
based on the following observations: (1) ORLANE and LOLANE both consisted of six
letters with the same last four letters - LANE; (2) both were used as label for similar
products; (3) both marks were in two syllables and that there was only a slight
difference in the first syllable; and (4) both marks had the same last syllable so that
if these marks were read aloud, a sound of strong similarity would be produced and
such would likely deceive or cause confusion to the public as to the two
trademarks.16
Petitioner filed a motion for reconsideration but this was denied by the Director of
the BLA on May 7, 2007. On appeal, the Director General of the IPO affirmed the
Decision of the BLA Director. Thus, petitioner filed a petition for review before the
CA arguing that there is no confusing similarity between the two marks. The Court
of Appeals denied the petition and held that there exists colorable imitation of
respondent's mark by LOLANE. The CA accorded due respect to the Decision of the
Director General and ruled that there was substantial evidence to support the IPO's
findings of fact. Applying the dominancy test, the CA ruled that LOLANE' s mark is
confusingly or deceptively similar to ORLANE
Issue: Wether or not there is confusing similarity between ORLANE and LOLANE
which would bar the registration of LOLANE before the IPO.
Ruling: No, there is no confusing similarity between ORLANE and LOLANE which
would bar the registration of LOLANE before the IPO. The Court ruled that the CA
erred when it affirmed the Decision of the IPO.
There is no colorable imitation between the marks LOLANE and ORLANE which
would lead to any likelihood of confusion to the ordinary purchasers. A trademark is
defined under Section 121.1 of RA 8293 as any visible sign capable of distinguishing
the goods. It is susceptible to registration if it is crafted fancifully or arbitrarily and is
capable of identifying and distinguishing the goods of one manufacturer or seller
from those of another. Thus, the mark must be distinctive. The registrability of a
trademark is governed by Section 123 of RA 8293. Section 123.1 provides: Section
123. 1. A mark cannot be registered if it: xxx...d. Is identical with a registered mark
belonging to a different proprietor or a mark with an earlier filing or priority date, in
respect of: i. The same goods or services, or ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion; e.
Is identical with, or confusingly similar to, or constitutes a translation of a mark
which is considered by the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is registered here, as being
already the mark of a person other than the applicant for registration, and used for
identical or similar goods or services: provided, that in determining whether a mark
is well-known, account shall be taken of the knowledge of the relevant sector of the
public, rather than of the public at large, including knowledge in the Philippines
which has been obtained as a result of the promotion of the mark; xxx.
In determining the likelihood of confusion, the Court must consider: [a] the
resemblance between the trademarks; [b] the similarity of the goods to which the
 trademarks are attached; [c] the likely effect on the purchaser and [d] the
registrant's express or implied consent and other fair and equitable considerations.
Likewise, the Court finding that LOLANE is not a colorable imitation of ORLANE due
to distinct visual and aural differences using the dominancy test, it no longer finds
necessary to discuss the contentions of the petitioner as to the appearance of the
marks together with the packaging, nature of the goods represented by the marks
and the price difference, as well as the applicability of foreign judgments. The Court
ruled that the mark LOLANE is entitled to registration. Hence, the petition is
GRANTED and the Decision of the Court of Appeals dated July 14, 2009 is REVERSED
and SET ASIDE.
(6) Lyceum of the Philippines vs. Court of Appeals, G.R. no. 101897, March 5, 1993
Facts:
Petitioner Lyceum of the Philippines had commenced before the SEC a proceeding
against the Lyceum of Baguio to change its corporate name alleging that the 2
names are substantially identical because of the word ‘Lyceum’. SEC found for
petitioner and the SC denied the consequent appeal of Lyceum of Baguio in a
resolution. Petitioner then basing its ground on the resolution, wrote to all
educational institutions which made use of the word ‘Lyceum’ as part of their
corporate name to discontinue their use. When this recourse failed, petitioner
moved before the SEC to enforce its exclusive use of the word ‘Lyceum.’ Petitioner
further claimed that the word ‘Lyceum’ has acquired a secondary meaning in its
favor. The SEC Hearing Officer found for petitioner. Both SEC En Banc and CA ruled
otherwise.
Issues:
(1) Whether or not ‘Lyceum’ is a generic word which cannot be appropriated by
petitioner to the exclusion of others.
(2) Whether or not the word ‘Lyceum’ has acquired a secondary meaning in favor of
petitioner.
(3) Whether or not petitioner is infringed by respondent institutions’ corporate
names.
Ruling:
(1) YES. “Lyceum” is in fact as generic in character as the word “university.” In the
name of the petitioner, “Lyceum” appears to be a substitute for
“university;” in other places, however, “Lyceum,” or “Liceo” or “Lycee”
frequently denotes a secondary school or a college. It may be that the use
of the word “Lyceum” may not yet be as widespread as the use of
“university,” but it is clear that a not inconsiderable number of educational
institutions have adopted “Lyceum” or “Liceo” as part of their corporate
names. Since “Lyceum” or “Liceo” denotes a school or institution of
learning, it is not unnatural to use this word to designate an entity which is
organized and operating as an educational institution.
(2) NO. Under the doctrine of secondary meaning, a word or phrase originally
incapable of exclusive appropriation with reference to an article in the
market, because geographical or otherwise descriptive might nevertheless
have been used so long and so exclusively by one producer with reference
to this article that, in that trade and to that group of the purchasing public,
the word or phrase has come to mean that the article was his produce.
With the foregoing as a yardstick, [we] believe the appellant failed to
satisfy the aforementioned requisites. While the appellant may have
proved that it had been using the word ‘Lyceum’ for a long period of time,
this fact alone did not amount to mean that the said word had acquired
secondary meaning in its favor because the appellant failed to prove that it
had been using the same word all by itself to the exclusion of others. More
so, there was no evidence presented to prove that confusion will surely
arise if the same word were to be used by other educational institutions.
(3) NO. We do not consider that the corporate names of private respondent
institutions are “identical with, or deceptively or confusingly similar” to
that of the petitioner institution. True enough, the corporate names of
private respondent entities all carry the word “Lyceum” but confusion and
deception are effectively precluded by the appending of geographic names
to the word “Lyceum.” Thus, we do not believe that the “Lyceum of Aparri”
can be mistaken by the general public for the Lyceum of the Philippines, or
that the “Lyceum of Camalaniugan” would be confused with the Lyceum of
the Philippines. We conclude and so hold that petitioner institution is not
 entitled to a legally enforceable exclusive right to use the word “Lyceum” Issue:
in its corporate name and that other institutions may use “Lyceum” as part Whether ABI's BEER PALE PILSEN label or "design" infringe upon SMC's
of their corporate names. SAN MIGUEL PALE PILSEN WITH RECTANGULAR MALT AND HOPS DESIGN?

(7) UFC Philippines v. Fiesta Barrio Manufacturing G.R. no 198889, January 20, 2016 Held:
No. Infringement is determined by the "test of dominancy" rather than
by differences or variations in the details of one trademark and of another.
The fact that the words pale pilsen are part of ABI's trademark does not
(8) Mang Inasal Philippines Inc. v. IFP Manufacturing Corp. G.R no. 221717, June 19,
constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for
2017
"pale pilsen" are generic words descriptive of the color ("pale"), of a type of beer
(9) Ecole de Cuisine Marule vs. Contreu, June 5, 2013 ("pilsen"), which is a light bohemian beer with a strong hops flavor that
originated in the City of Pilsen in Czechoslovakia and became famous in the
(10) Shang Properties Realty Corporation and Shang Properties Inc. vs. St Francis Middle Ages. "Pilsen" is a "primarily geographically descriptive word," hence,
Development Corporation G.R. no 190706, July 21, 2014 non-registerable and not appropriable by any beer manufacturer.
(11) Wilton Dy and/or Philites Electronics & Lighting Products v. Koninklejke Philips
Electronics, G.R. no 186088, March 22, 2017 (3) Berries Agricultural Co. Inc. v. Norvy Abyadang., G.R. no. 183404, October
13, 2010
e. Prior Use of Mark as a requirement
(4) Prosource International v. Harphag Research Management SA, G.R. no
(1) W. Land Holdings, Inc. v. Starwood Hotels and Resort Worldwide, G.R. no 180073, November 25, 2009
222366, December 4, 2017
(5) Skechers, USA, Inc. vs. Inter Pacific Industrial Trading Corp, et al G.R. no.
f. Test to Determine Confusing Similarity between Marks 164321, March 23, 2011

(1) Dominancy Test (6) Hon Ne Chan vs. Honda Motors G.R. no. 172775, Dec 19,2007

(2) Holistic Test

Add: Lack of Proof of Actual Confusion

(1) Del Monte Corp. v. Court of Appeals, G.R. no. L-78325, January 25, 1990

(2) Asia Brewery v. Court of Appeals and San Miguel Corporation, G.R. no. 103543,
July 5, 1993

Facts:
San Miguel Corporation (SMC) filed a complaint against Asia Brewery
Inc. (ABI) for infringement of trademark and unfair competition on account of the
latter's BEER PALE PILSEN or BEER NA BEER product which has been competing
with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market.
Trial Court dismissed SMC's complaint because ABI "has not committed
trademark infringement or unfair competition against" SMC.
SMC appealed to the Court of Appeals, the Court of Appeals reversed the trial
court.