Berris was able to establish that it was using its mark “D-10 80 WP” since June 2002, even
before
1. BERRIS AGRICULTURAL CO., INC., Petitioner, vs. NORVY ABYADANG,
Respondent.
G.R. No. 183404, SECOND DIVISION, October 13, 2010, NACHURA, J.:
FACTS:
Norvy A. Abyadang, proprietor of NS Northern Organic Fertilizer, filed with the Intellectual Property
Office (IPO) a trademark application for the mark “NS D-10 PLUS” for use in connection with
Fungicide (Class 5) with active ingredient 80% Mancozeb. The application was given due course
and was published in the IPO e-Gazette on July 28, 2005. Berris Agricultural Co. filed with the IPO
Bureau of Legal Affairs (IPO-BLA) a verified Notice of Opposition allegedly because “NS D-10
PLUS” is similar and/or confusingly similar to its registered mark “D-10 80 WP” also used for
Fungicide (Class 5) with active ingredient 80% Mancozeb.
Director Estrellita Beltran-Abelardo sustained the opposition, holding that the marks are
confusingly similar. The trademark application was then rejected. Director Abelardo denied the
motion for reconsideration. Abyadang appealed to the Office of the Director General, Intellectual
Property Philippines (IPPDG). Director General Adrian Cristobal affirmed the decision of the
Director. Abyadang filed a petition for review before the CA. The CA reversed the IPPDG decision,
holding that the marks are not confusingly similar, and that [herein petitioner] failed to establish its
ownership of the mark “D-10 80 WP”.
ISSUE:
Whether or not there exists confusing similarity between Petitioner’s and Respondent’s marks.
RULING:
The basic law on trademark, infringement, and unfair competition is Republic Act (R.A.) No. 8293
(Intellectual Property Code of the Philippines). Prior to its effectivity, the applicable law was RA
No 166. R.A. No. 8293 did not expressly repeal in its entirety R.A. No. 166, but merely provided
in Section 239 that Acts and parts of Acts inconsistent with it were repealed.
A trademark, being a special property, is afforded protection by law. But for one to enjoy this legal
protection, legal protection ownership of the trademark should rightly be established. The
ownership of a trademark is acquired by its registration and its actual use by the manufacturer or
distributor of the goods made available to the purchasing public. Section 122 of R.A. No. 8293
provides that the rights in a mark shall be acquired by means of its valid registration with the IPO.
A certificate of registration of a mark, once issued, constitutes prima facie evidence of the validity
of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right
to use the same in connection with the goods or services and those that are related thereto
specified in the certificate. R.A. No. 8293, however, requires the applicant for registration or the
registrant to file a declaration of actual use (DAU) of the mark, with evidence to that effect, within
three (3) years from the filing of the application for registration; otherwise, the application shall be
refused or the mark shall be removed from the register. In other words, the prima facie
presumption brought about by the registration of a mark may be challenged and overcome, in an
appropriate action, by proof of the nullity of the registration or of non-use of the mark, except when
excused. Moreover, the presumption may likewise be defeated by evidence of prior use by another
person. This is because a trademark is a creation of use and belongs to one who first used it in
trade or commerce.
One may make advertisements, issue circulars, distribute price lists on certain goods, but these
alone will not inure to the claim of ownership of the mark until the goods bearing the mark are sold
to the public in the market. Accordingly, receipts, sales invoices, and testimonies of witnesses as
customers, or orders of buyers, best prove the actual use of a mark in trade and commerce during
a certain period of time.
Berris, as oppositor, presented the following evidence: its trademark application dated November
2002; its IPO certificate of registration dated October 2004; a photocopy of its packaging bearing
its mark; sales invoices and its notarized DAU.
Abyadang’s proofs consisted of the following: photocopy of the packaging; affidavit stating that NS
D-10 PLUS was his own creation (N- Norvy, S- Soledad (his wife), D – first letter of his birth month,
10 – for October, 10th month, PLUS – to connote superior quality). Abyadang argued that he could
not have copied Berris’ mark because he registered with the Fertilizer and Pesticide Authority
ahead of Berris.
it filed for its registration with the IPO as shown by its DAU. The DAU has the presumption of
regularity, and the burden of proof to overcome the presumption of authenticity and due execution
lies on the party contesting it. The question of whether or not Berris violated P.D. No. 1144,
because it sold its product without prior registration with the FPA, is a distinct and separate matter
from the jurisdiction and concern of the IPO. Thus, even a determination of violation by Berris of
P.D. No. 1144 would not controvert the fact that it did submit evidence that it had used the mark
“D-10 80 WP” earlier than its FPA registration in 2004. Therefore, Berris, as prior user and prior
registrant, is the owner of the mark “D-10 80 WP.” As such, Berris has in its favor the rights
conferred by Section 147 of R.A. No. 8293.
In determining similarity and likelihood of confusion, jurisprudence has developed tests—the
Dominancy Test and the Holistic or Totality Test.
Comparing Berris’ mark “D-10 80 WP” with Abyadang’s mark “NS D-10 PLUS,” as appearing on
their respective packages, one cannot but notice that both have a common component which is
“D-10.” On Berris’ package, the “D-10” is written with a bigger font than the “80 WP.” Admittedly,
the “D-10” is the dominant feature of the mark. The “D-10,” being at the beginning of the mark, is
what is most remembered of it. Applying the Dominancy Test, it cannot be gainsaid that
Abyadang’s “NS D-10 PLUS” is similar to Berris’ “D-10 80 WP,” that confusion or mistake is more
likely to occur. Both depictions of “D-10,” as found in both marks, are similar in size, such that this
portion is what catches the eye of the purchaser. Undeniably, the likelihood of confusion is present.
This likelihood of confusion and mistake is made more manifest when the Holistic Test is applied,
taking into consideration the packaging, for both use the same type of material (foil type) and have
identical color schemes (red, green, and white); and the marks are both predominantly red in color,
with the same phrase “BROAD SPECTRUM FUNGICIDE” written underneath. Considering these
striking similarities, predominantly the “D-10,” the buyers of both products, mainly farmers, may
be misled into thinking that “NS D-10 PLUS” could be an upgraded formulation of the “D-10 80
WP.
Berris is the owner of the mark “D-10 80 WP,” inclusive of its dominant feature “D-10,” as
established by its prior use, and prior registration with the IPO. Therefore, Berris properly opposed
and the IPO correctly rejected Abyadang’s application for registration of the mark “NS D-10 PLUS.”
-Arra
2. DERMALINE, INC., Petitioner, vs.MYRA PHARMACEUTICALS, INC. Respondent.
G.R. No. 190065, SECOND DIVISION, August 16, 2010, NACHURA,J.
When one applies for the registration of a trademark or label which is almost the same or that 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 is intended 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.
FACTS:
On October 21, 2006, petitioner Dermaline filed before the IPO an application for registration of
the trademark “DERMALINE DERMALINE, INC.” The application was published for opposition in
the IPO E-Gazette.
Respondent Myra filed a Verified Opposition alleging that the trademark sought to be registered
resembles its trademark “DERMALIN” and will likely cause confusion, mistake and deception to
the purchasing public. It further alleged that Dermaline’s use and registration of its applied
trademark will diminish the distinctiveness and dilute the goodwill of Myra’s "DERMALIN,"
registered with the IPO way back July 8, 1986, renewed for 10 years on July 8, 2006.
Myra claimed that the dominant feature is the term “DERMALINE”, which is practically identical.
With its own “DERMALIN”, more particularly the first 8 letters of the marks. The pronunciation was
also identical; both have 3 syllables which each syllable identical in sound. Myra also pointed out
that Dermaline applied for the same mark and was already refused registration by the IPO. Myra
added that even if the subject application was under Classification 44 for various skin treatments,
it could still be connected to the "DERMALIN" mark under Classification 5 for pharmaceutical
products, since ultimately these goods are very closely related.
Dermaline counters that a simple comparison of the trademarks would show that they have entirely
different features and. Distinctive presentation, thus it cannot result in confusion, mistake or
deception on the part of the purchasing public. It also contends that a comparison of the words is
not the only determinant, but their entirety must be considered in relation to the goods to which
they are attached, including the other features appearing in both labels; and that there were glaring
dissimilarities between the two trademarks, such that its trademark speaks for itself.
On April 10, 2008, the IPO-bureau of Legal Affairs rendered a decision sustaining Myra’s
opposition. Dermaline’s MR was denied. Its appeal to the Office of the Director General of the IPO
was likewise dismissed. Hence this petition.
ISSUE:
Whether the CA erred in upholding the IPO’s rejection of Dermaline’s application for registration
of trademark. (NO)
RULING:
A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any combination
thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt by others. Inarguably, it is an intellectual property
deserving protection by law. In trademark controversies, each case must be scrutinized according
to its peculiar circumstances, such that jurisprudential precedents should only be made to apply if
they are specifically in point.
As Myra correctly posits, it has the right under Section 147 of R.A. No. 8293 to prevent third parties
from using a trademark, or similar signs or containers for goods or services, without its consent,
identical or similar to its registered trademark, where such use would result in a likelihood of
confusion. In determining confusion, case law has developed two (2) tests, the Dominancy Test
and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion or deception. Duplication or imitation is not even required;
neither is it necessary that the label of the applied mark for registration should suggest an effort
to imitate. Relative to the question on confusion of marks and trade names, jurisprudence noted
two (2) types of confusion, viz: (1) confusion of goods (product confusion), where the ordinarily
prudent purchaser would be induced to purchase one product in the belief that he was purchasing
the other; and (2) confusion of business (source or origin confusion), where, although the goods
of the parties are different, the product, the mark of which registration is applied for by one party,
is such as might reasonably be assumed to originate with the registrant of an earlier product, and
the public would then be deceived either into that belief or into the belief that there is some
connection between the two parties, though inexistent.
Using this test, the IPO declared that both confusion of goods and service and confusion of
business or of origin were apparent in both trademarks. While it is true that the two marks are
presented differently, they are almost spelled in the same way, except for Dermaline’s mark which
ends with the letter "E," and they are pronounced practically in the same manner in three (3)
syllables, with the ending letter "E" in Dermaline’s mark pronounced silently. Thus, when an
ordinary purchaser, for example, hears an advertisement of Dermaline’s applied trademark over
the radio, chances are he will associate it with Myra’s. When one applies for the registration of a
trademark or label which is almost the same or that 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.
Further, Dermaline’s stance that its product belongs to a separate and different classification from
Myra’s products with the registered trademark does not eradicate the possibility of mistake on the
part of the purchasing public to associate the former with the latter, especially considering that
both classifications pertain to treatments for the skin.
- Alit
3. ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC., petitioner,
vs. RENAUD COINTREAU & CIE and LE CORDON BLEU INT’L., B.V., respondents.
G.R. No. 185830. SECOND DIVISION. June 5, 2013. PERLAS-BERNABE, J.
Facts:
On June 21, 1990, Cointreau, a partnership registered under the laws of France, filed before the
(now defunct) Bureau of Patents, Trademarks, and Technology Transfer (BPTTT) of the
Department of Trade and Industry a trademark application for the mark “LE CORDON BLEU &
DEVICE” for goods falling under classes 8, 9, 16, 21, 24, 25, 29, and 30 of the International
Classification of Goods and Services for the Purposes of Registrations of Marks (“Nice
Classification”) (subject mark). The application was filed pursuant to Section 37 of Republic Act
No. 166, as amended (R.A. No. 166), on the basis of Home Registration No. 1,390,912, issued
on November 25, 1986 in France. Bearing Serial No. 72264, such application was published for
opposition in the March-April 1993 issue of the BPTTT Gazette and released for circulation on
May 31, 1993.
On July 23, 1993, petitioner Ecole De Cuisine Manille, Inc. (Ecole) filed an opposition to the
subject application, averring that: (a) it is the owner of the mark “LE CORDON BLEU, ECOLE
DE CUISINE MANILLE,” which it has been using since 1948 in cooking and other culinary
activities, including in its restaurant business; and (b) it has earned immense and invaluable
goodwill such that Cointreau’s use of the subject mark will actually create confusion, mistake,
and deception to the buying public as to the origin and sponsorship of the goods, and cause great
and irreparable injury and damage to Ecole’s business reputation and goodwill as a senior user
of the same
On October 7, 1993, Cointreau filed its answer claiming to be the true and lawful owner of the
subject mark. It averred that: (a) it has filed applications for the subject mark’s registration in
various jurisdictions, including the Philippines; (b) Le Cordon Bleu is a culinary school of
worldwide acclaim which was established in Paris, France in 1895; (c) Le Cordon Bleu was the
first cooking school to have set the standard for the teaching of classical French cuisine and
pastry making; and (d) it has trained students from more than eighty (80) nationalities, including
Ecole’s directress, Ms. Lourdes L. Dayrit. Thus, Cointreau concluded that Ecole’s claim of being
the exclusive owner of the subject mark is a fraudulent misrepresentation.6
During the pendency of the proceedings, Cointreau was issued Certificates of Registration Nos.
60631 and 54352 for the marks “CORDON BLEU & DEVICE” and “LE CORDON BLEU PARIS
1895 & DEVICE” for goods and services under classes 21 and 41 of the Nice
Classification, respectively.
The Bureau of Legal Affairs (BLA) of the IPO sustained Ecole’s opposition to the subject mark,
necessarily resulting in the rejection of Cointreau’s application. It emphasized that the
adoption and use of trademark must be in commerce in the Philippines and not abroad.
On appeal, the IPO Director General set aside the BLA’s decision, thus, granting Cointreau’s
appeal and allowing the registration of the subject mark. He held that while Section 2 of R.A. No.
166 requires actual use of the subject mark in commerce in the Philippines for at least two (2)
months before the filing date of the application, only the owner thereof has the right to register the
same, explaining that the user of a mark in the Philippines is not ipso facto its owner. Moreover,
Section 2-A of the same law does not require actual use in the Philippines to be able to acquire
ownership of a mark. The CA affirmed the IPO Director General’s Decision in toto. Hence, this
petition.
Ecole argues that it is the rightful owner of the subject mark, considering that it was the first entity
that used the same in the Philippines. Hence, it is the one entitled to its registration and not
Cointreau.
Issues:
Whether the CA was correct in upholding the IPO Director General’s ruling that Cointreau is the
true and lawful owner of the subject mark and thus, entitled to have the same registered under
its name. (Yes)
(Whether or not the first entity that used the trademark in the Philippines has better right over the
mark)
Held:
It should be noted that the instant case shall be resolved under the provisions of the old
Trademark Law, R.A. No. 166, which was the law in force at the time of Cointreau’s application
for registration of the subject mark.
Under Section 220 of R.A. No. 166, in order to register a trademark, one must be the owner
thereof and must have actually used the mark in commerce in the Philippines for two (2) months
prior to the application for registration. Section 2-A of the same law sets out to define how one
goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce
is also the test of ownership but the provision went further by saying that the mark must not have
been so appropriated by another.
Additionally, it is significant to note that Section 2-A does not require that the actual use of a
trademark must be within the Philippines. Thus, as correctly mentioned by the CA, under R.A.
No. 166, one may be an owner of a mark due to its actual use but may not yet have the right to
register such ownership here due to the owner’s failure to use the same in the Philippines for two
(2) months prior to registration.
Nevertheless, foreign marks which are not registered are still accorded protection against
infringement and/or unfair competition. Under the Paris Convention, the Philippines is obligated
to assure nationals of the signatory-countries that they are afforded an effective protection against
violation of their intellectual property rights in the Philippines in the same way that their own
countries are obligated to accord similar protection to Philippine nationals. “Thus, under
Philippine law, a trade name of a national of a State that is a party to the Paris Convention,
whether or not the trade name forms part of a trademark, is protected “without the obligation of
filing or registration.’ ”
In the instant case, it is undisputed that Cointreau has been using the subject mark in France
since 1895, prior to Ecole’s averred first use of the same in the Philippines in 1948, of which the
latter was fully aware thereof. In fact, Ecole’s present directress, Ms. Lourdes L. Dayrit (and even
its foundress, Pat Limjuco Dayrit), had trained in Cointreau’s Le Cordon Bleu culinary school in
Paris, France. Cointreau was likewise the first registrant of the said mark under various classes,
both abroad and in the Philippines, having secured Home Registration No. 1,390,912 dated
November 25, 1986 from its country of origin, as well as several trademark registrations in the
Philippines.
On the other hand, Ecole has no certificate of registration over the subject mark but only a
pending application covering services limited to Class 41 of the Nice Classification, referring to
the operation of a culinary school. Its application was filed only on February 24, 1992, or after
Cointreau filed its trademark application for goods and services falling under different classes in
1990. Under the foregoing circumstances, even if Ecole was the first to use the mark in the
Philippines, it cannot be said to have validly appropriated the same.
It is thus clear that at the time Ecole started using the subject mark, the same was already being
used by Cointreau, albeit abroad, of which Ecole’s directress was fully aware, being an alumna
of the latter’s culinary school in Paris, France. Hence, Ecole cannot claim any tinge of
ownership whatsoever over the subject mark as Cointreau is the true and lawful owner thereof.
As such, the IPO Director General and the CA was correct in declaring Cointreau as the true and
lawful owner of the subject mark and as such, is entitled to have the same registered under its
name.
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the
Intellectual Property Code of the Philippines, as amended, has already dispensed with the
requirement of prior actual use at the time of registration. Thus, there is more reason to allow the
registration of the subject mark under the name of Cointreau as its true and lawful owner.
WHEREFORE, the petition is DENIED. Accordingly, the December 23, 2008 Decision of the Court
of Appeals in CA-G.R. SP No. 104672 is hereby AFFIRMED in toto. SO ORDERED.
4. BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly BIRKENSTOCK
ORTHOPAEDIE GMBH), Petitioner, vs. PHILIPPINE SHOE EXPO MARKETING
CORPORATION, Respondent.
FACTS: Petitioner is a corporation duly organized and existing under German law. It applied for
various trademark registrations before the IPO, which are as follows: (1) “BIRKENSTOCK”, (2)
BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE COMPRISING OF ROUND COMPANY SEAL
AND REPRESENTATION OF A FOOT, CROSS, AND SUNBEAM” and (3) BIRKENSTOCK BAD
HONNEF-RHEIN & DEVICE COMPRISING OF ROUND COMPANY SEAL AND
REPRESENTATION OF A FOOD CROSS, AND SUNBEAM. These are for goods falling under
Class 10 of the Nice Classification. Its filing date was on September 05, 1994.
However, registration proceedings were suspended due to an existing registration of
the mark “BIRKENSTOCK AND DEVICE” ) in the name of Shoe Town International and Industrial
Corporation, the predecessor-in-interest of respondent Philippine Shoe Expo Marketing
Corporation. In this regard, petitioner filed a petition for cancellation of registration on the ground
that it is the lawful and rightful owner of the Birkenstock marks. During its pendency, however,
respondent and/or its predecessor-in-interest failed to file the required 10th Year Declaration of
Actual Use (10th Year DAU) for the said mark on or before October 21, 2004, thereby resulting in
the cancellation of such mark. Accordingly, the cancellation case was dismissed for being moot
and academic.
Because of such cancellation, petitioner’s registration was given due course and was
published in the IPO e-Gazette. In response, three (3) separate verified notices of oppositions
were filed by respondent, claiming that: first, they have been using their mark for more than 16
years; second, that the marks sought to be registered by petitioner are identical to theirs; third,
that respondent’s predecessor-in-interest likewise obtained a Certificate of Copyright Registration
for the word “BIRKENSTOCK”; fourth, that despite the non-filing of DAU, it continued to use the
mark in lawful commerce; and fifth, it filed a re-application of its old registration to record its
continued ownership and exclusive right to use the mark.
The BLA ordered the rejection of petitioner’s applications. It ruled that the competing
marks of the parties are confusingly similar since they contained the word "BIRKENSTOCK" and
are used on the same and related goods and that petitioner failed to present evidence of actual
use in the trade and business in this country. It opined that while respondent’s registration was
cancelled, it does not follow that prior right over the mark was lost, as proof of continuous and
uninterrupted use in trade and business in the Philippines was presented. Upon appeal to the IPO
Director General, it reversed and set aside the ruling of the BLA, thus allowing the registration of
the subject applications. He held that with the cancellation of respondent’s mark for its failure to
file the 10th Year DAU, there is no more reason to reject the subject applications on the ground of
prior registration by another proprietor. The CA reversed and set aside the ruling of the IPO
Director General and reinstated that of the BLA. It disallowed the registration of the subject
applications on the ground that the marks covered by such applications "are confusingly similar, if
not outright identical" with respondent’s mark. It equally held that respondent’s failure to file the
10th Year DAU for respondent’s mark "did not deprive petitioner of its ownership of the
‘BIRKENSTOCK’ mark since it has submitted substantial evidence showing its continued use,
promotion and advertisement thereof up to the present."
ISSUE: WON the subject marks should be allowed registration in the name of petitioner.
RULING: YES. Failure to file the DAU within the requisite period results in the automatic
cancellation of registration of a trademark. In turn, such failure is tantamount to the abandonment
or withdrawal of any right or interest the registrant has over his trademark. The law requires that
registrations 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 circumstances which excuse such
non-use and is not due to any intention to abandon the same, and pay the required fee.
In this case, respondent admitted that it failed to file the 10th Year DAU for its registered
mark 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."
Neither can it invoke Section 236 of the IP Code which pertains to intellectual property rights
obtained under previous intellectual property laws, e.g., RA 166, precisely because it already lost
any right or interest over the said mark.
It must be emphasized that registration of a trademark, by itself, is not a mode of
acquiring ownership. If the applicant is not the owner of the trademark, he has no right to apply for
its registration. Registration merely creates a prima facie presumption of the validity of the
registration of the registrant’s ownership of the trademark, and of the exclusive right to the use
thereof. Such presumption, just like the presumptive regularity in the performance of official
functions, is rebuttable and must give way to evidence to the contrary. Clearly, it is not the
application or registration of a trademark that vests ownership thereof, but it is the ownership of a
trademark that confers the right to register the same. A trademark is an industrial property over
which its owner is entitled to property rights which cannot be appropriated by unscrupulous entities
that, in one way or another, happen to register such trademark ahead of its true and lawful owner.
The presumption of ownership accorded to a registrant must then necessarily yield to superior
evidence of actual and real ownership of a trademark.
In the instant case, petitioner was able to establish that it is the owner of the mark
"BIRKENSTOCK." It submitted evidence relating to the origin and history of "BIRKENSTOCK" and
its use in commerce long before respondent was able to register the same here in the Philippines.
It has sufficiently proven that "BIRKENSTOCK" was first adopted in Europe in 1774 by its inventor,
Johann Birkenstock, a shoemaker, on his line of quality footwear and thereafter, numerous
generations of his kin continuously engaged in the manufacture and sale of shoes and sandals
bearing the mark "BIRKENSTOCK" until it became the entity now known as the petitioner.
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. On the other hand, aside from the respondent’s registered mark which had been
cancelled, respondent only presented copies of sales invoices and advertisements, which are not
conclusive evidence of its claim of ownership of the mark "BIRKENSTOCK" as these merely show
the transactions made by respondent involving the same. In view of the foregoing circumstances,
the Court finds the petitioner to be the true and lawful owner of the mark "BIRKENSTOCK" and
entitled to its registration, and that respondent was in bad faith in having it registered in its name.
As a final note, the court finds that the facts and evidence failed to show that respondent
was in good faith in using and in registering the mark BIRKENSTOCK. BIRKENSTOCK, obviously
of German origin, is a highly distinct and arbitrary mark. It is very remote that two persons did coin
the same or identical marks. To come up with a highly distinct and uncommon mark previously
appropriated by another, for use in the same line of business, and without any plausible
explanation, is incredible.
8. SHANG PROPERTIES REALTY CORPORATION (formerly THE SHANG GRAND TOWER
CORPORATION) and SHANG PROPERTIES, INC. (formerly EDSA PROPERTIES
HOLDINGS, INC.), petitioners, vs . ST.
FRANCIS DEVELOPMENT CORPORATION, respondent.
G.R. No. 190706, July 21, 2014, PERLAS-BERNABE, J.
FACTS:
Respondent — a domestic corporation engaged in the real estate business and the developer of
the St. Francis Square Commercial Center, built sometime in 1992, located at Ortigas Center,
Mandaluyong City, Metro Manila (Ortigas Center) — filed separate complaints against petitioners
before the IPO-Bureau of Legal Affairs (BLA), namely: (a) an intellectual property violation case
for unfair competition, false or fraudulent declaration, and damages arising from petitioners' use
and filing of applications for the registration of the marks "THE ST. FRANCIS TOWERS" and "THE
ST. FRANCIS SHANGRI-LA PLACE," (IPV Case); and (b ) an inter partes case opposing the
petitioners' application for registration of the mark "THE ST. FRANCIS TOWERS" for use relative
to the latter's business, particularly the construction of permanent buildings or structures for
residential and office purposes (St. Francis Towers IP Case); and (c) an inter partes case opposing
the petitioners' application for registration of the mark "THE ST. FRANCIS SHANGRI-LA PLACE"
(St. Francis Shangri-La IP Case).
The respondent alleged that it has used the mark “ST. FRANCIS” to identify its numerous property
development projects located ate Ortigas Center. Respondent added that as a result of its
continuous use of the mark “ST. FRANCIS” in its real estate business, it has gained substantial
goodwill with the public that consumers and traders closely identify the said mark with its property
development projects. Accordingly, respondent claimed that petitioners could not have the mark
"THE ST. FRANCIS TOWERS" registered in their names, and that petitioners' use of the marks
"THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE" in their own real
estate development projects constitutes unfair competition as well as false or fraudulent
declaration.
Petitioners denied committing unfair competition and false or fraudulent declaration, maintaining
that they could register the mark "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS
SHANGRI-LA PLACE" under their names. They contended that respondent is barred from
claiming ownership and exclusive use of the mark "ST.
FRANCIS" because the same is geographically descriptive of the goods or services for which it is
intended to be used. This is because respondent's as well as petitioners' real estate development
projects are located along the streets bearing the name "St. Francis," particularly, St. Francis
Avenue and St. Francis Street (now known as Bank Drive), both within the vicinity of the Ortigas
Center.
On December 19, 2006, the BLA rendered a Decision in the IPV Case, and found that petitioners
committed acts of unfair competition against respondent by its use of the mark "THE ST. FRANCIS
TOWERS" but not with its use of the mark "THE ST. FRANCIS SHANGRILA PLACE.
Meanwhile, on March 28, 2007, the BLA rendered a Decision in the St. Francis Towers IP Case,
denying petitioners' application for registration of the mark "THE ST. FRANCIS TOWERS".
Excluding the word "TOWERS" in view of petitioners' disclaimer thereof, the BLA ruled that
petitioners cannot register the mark "THE ST. FRANCIS" since it is confusingly similar to
respondent's "ST. FRANCIS" marks which are registered with the DTI.
A little over a year after, or on March 31, 2008, the BLA then rendered a Decision in the St. Francis
Shangri-La IP Case, allowing petitioners' application for registration of the mark "THE ST.
FRANCIS SHANGRI-LA PLACE." It found that respondent cannot preclude petitioners from using
the mark "ST. FRANCIS" as the records show that the former's use thereof had not been attended
with exclusivity.
Both parties appealed the decision in the IPV Case, while petitioners appealed the decision in the
St. Francis Towers IP Case. Due to the identity of the parties and issues involved, the IPO Director-
General ordered the consolidation of the separate appeals. Records are, however, bereft of any
showing that the decision in the St. Francis Shangri-La IP Case was appealed by either party and,
thus, is deemed to have lapsed into finality.
In a Decision dated September 3, 2008, then IPO Director-General Adrian S. Cristobal, Jr. affirmed
the rulings of the BLA that: (a) petitioners cannot register the mark "THEST. FRANCIS TOWERS";
and (b) petitioners are not guilty of unfair competition in its use of the mark "THE ST. FRANCIS
SHANGRI-LA PLACE." However, the IPO Director General reversed the BLA’s finding that
petitioners committed unfair competition through their use of the mark "THE ST. FRANCIS
TOWERS," thus dismissing such charge.
In a Decision dated December 18, 2009, the CA found petitioners guilty of unfair competition not
only with respect to their use of the mark "THE ST. FRANCIS TOWERS" but also of the mark
"THE ST. FRANCIS SHANGRI-LA PLACE. The CA did not adhere to the IPO Director-General's
finding that the mark "ST. FRANCIS" is geographically descriptive, and ruled that respondent —
which has exclusively and continuously used the mark "ST. FRANCIS" for more than a decade,
and, hence, gained substantial goodwill and reputation thereby — is very much entitled to be
protected against the indiscriminate usage by other companies of the trademark/name it has so
painstakingly tried to establish and maintain.
Hence, the present petition.
ISSUE:
Whether petitioners are guilty of unfair competition in using the marks "THE ST. FRANCIS
TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE".
RULING:
The Court ruled that petitioner are not guilty of unfair competition. The court finds the element of
fraud to be wanting. Hence, there can be no unfair competition. The CA’s contrary conclusion was
faulty premised on its impression that respondents had the right to the exclusive use of the mark
“ST. FRANCIS,” for which the latter has purportedly established considerable goodwill. What the
CA appears to have disregarded or been mistaken in its disquisition, however, is the
geographically descriptive nature of the mark “ST. FRANCIS” which thus bars the its exclusive
appropriability, unless a secondary meaning is acquired. As deftly explained in the U.S. case of
Great Southern Bank v. First Southern Bank: "[d]escriptive geographical terms are in the ‘public
domain’ in the sense that every seller should have the right to inform customers of the
geographical origin of his goods. A ‘geographically descriptive term’ is any noun or adjective that
designates geographical location and would tend to be regarded by buyers as descriptive of the
geographic location of origin of the goods or services. A geographically descriptive term can
indicate any geographic location on earth, such as continents, nations, regions, states, cities,
streets and addresses, areas of cities, rivers, and any other location referred to by a recognized
name. In order to determine whether or not the geographic term in question is descriptively used,
the following question is relevant: (1) Is the mark the name of the place or region from which the
goods actually come? If the answer is yes, then the geographic term is probably used in a
descriptive sense, and secondary meaning is required for protection."
The Court disagrees with the CA that petitioners committed unfair competition due to the mistaken
notion that petitioner had established goodwill for the mark "ST. FRANCIS" precisely because said
circumstance, by and of itself, does not equate to fraud under the parameters of Section 168 of
the IP Code. In fact, the records are bereft of any showing that petitioners gave their
goods/services the general appearance that it was respondent which was offering the same to the
public. Neither did petitioners employ any means to induce the public towards a false belief that it
was offering respondent's goods/services. Nor did petitioners make any false statement or commit
acts tending to discredit the goods/services offered by respondent. Accordingly, the element of
fraud which is the core of unfair competition had not been established.
Besides, respondent was not able to prove its compliance with the requirements stated in Section
123.2 of the IP Code to be able to conclude that it acquired a secondary meaning — and, thereby,
an exclusive right — to the "ST. FRANCIS" mark, which is, as the IPO Director-General correctly
pointed out, geographically-descriptive of the location in which its realty developments have been
built, i.e., St. Francis Avenue and St. Francis Street (now known as "Bank Drive"). Verily, records
would reveal that while it is true that respondent had been using the mark "ST. FRANCIS" since
1992, its use thereof has been merely confined to its realty projects within the Ortigas Center, as
specifically mentioned. As its use of the mark is clearly limited to a certain locality, it cannot be
said that there was substantial commercial use of the same recognized all throughout the country.
Neither is there any showing of a mental recognition in buyers' and potential buyers' minds that
products connected with the mark "ST. FRANCIS" are associated with the same source — that is,
the enterprise of respondent. Thus, absent any showing that there exists a clear goods/service-
association between the realty projects located in the aforesaid area and herein respondent as
the developer thereof, the latter cannot be said to have acquired a secondary meaning as to its
use of the "ST. FRANCIS" mark.
Digested by: Paola Camilon
10. GSIS FAMILY BANK - THRIFT BANK [Formerly Inc.], Petitioner, vs. BPI FAMILY BANK,
Respondent.
G.R. NO. 175278, THIRD DIVISION, September 23, 2015, JARDELEZA, J.:
(NOTE: I included the history part, baka lang matanong ni Sir.)
FACTS:
Summarized History:
Petitioner was originally organized as Royal Savings Bank and started operations in 1971.
Beginning 1983 and 1984, petitioner encountered liquidity problems. In 1984, it was placed under
receivership and later temporarily closed by the Central Bank of the Philippines. Two (2) months
after its closure, petitioner reopened and was renamed Comsavings Bank, Inc. under the
management of the Commercial Bank of Manila.
In 1987, the GSIS acquired petitioner from the Commercial Bank of Manila. To improve its
marketability to the public, especially to the members of the GSIS, petitioner sought SEC approval
to change its corporate name to "GSIS Family Bank, a Thrift Bank." Petitioner likewise applied
with the DTI and BSP for authority to use "GSIS Family Bank, a Thrift Bank" as its business name.
The DTI and the BSP approved the applications. Thus, petitioner operates under the corporate
name "GSIS Family Bank – a Thrift Bank,".
Respondent BPI Family Bank was a product of the merger between the FBTC and the BPI. In
1969, the Gotianum family registered with the SEC the corporate name "Family First Savings
Bank," which was amended to "Family Savings Bank," and then later to "Family Bank and Trust
Company." Since its incorporation, the bank has been commonly known as "Family Bank." In
1985, Family Bank merged with BPI, and the latter acquired all the rights, privileges, properties,
and interests of Family Bank, including the right to use names, such as "Family First Savings
Bank," "Family Bank," and "Family Bank and Trust Company." BPI Family Savings Bank was
registered with the SEC as a wholly-owned subsidiary of BPI. BPI Family Savings Bank then
registered with the Bureau of Domestic Trade the trade or business name "BPI Family Bank," and
acquired a reputation and goodwill under the name.
CASE:
Respondent petitioned the SEC CRMD to disallow or prevent the registration of the name "GSIS
Family Bank" or any other corporate name with the words "Family Bank" in it.
SEC CRMD: Ruled in favor of BPI Family Savings Bank. The SEC CRMD declared that upon the
merger of FBTC with the BPI in 1985, the latter acquired the right to the use of the name of the
absorbed corporation. Thus, BPI Family Bank has a prior right to the use of the name. The SEC
CRMD also held that there exists a confusing similarity between the corporate names BPI Family
Bank and GSIS Family Bank. The SEC En Banc affirmed the SEC CRMD.
CA: affirmed the SEC En Banc Resolution.
ISSUE:
1) Whether or not the CA gravely erred in affirming the SEC Resolution finding the word "Family"
not generic despite its unregistered status with the IPO of the Bureau of Patents and the use by
GSIS-Family Bank in its corporate name of the words "[F]amily [B]ank" as deceptive and
[confusingly similar] to the name BPI Family Bank. (NO)
2) Whether or not the CA gravely erred when it completely disregarded the opinion of the BSP
that the use by the herein petitioner of the trade name GSIS Family Bank – Thrift Bank is not
similar or does not deceive or likely cause any deception to the public. (NO)
RULING:
1) No, the CA did not err in finding the word "Family" not generic.
In Philips Export B.V. v. Court of Appeals, this Court ruled that to fall within the prohibition of the
law on the right to the exclusive use of a corporate name, two requisites must be proven,
namely:
(1) that the complainant corporation acquired a prior right over the use of such
corporate name; and
(2) the proposed name is either
(a) identical or
 (b) deceptive or confusingly similar to that of any existing corporation or to
any other name already protected by law; or
(c) patently deceptive, confusing or contrary to existing law.
(NOTE: Basis of requisites was Sec. 18 of the Corporation Code)
In this case, respondent was incorporated in 1969 as Family Savings Bank and in 1985 as BPI
Family Bank. Petitioner, on the other hand, was incorporated as GSIS Family – Thrift Bank only
in 2002, or at least seventeen (17) years after respondent started using its name..
The second requisite in the Philips Export case likewise obtains on two points: the proposed name
is (a) identical or (b) deceptive or confusingly similar to that of any existing corporation or to any
other name already protected by law.
1st requisite
The words "Family Bank" present in both petitioner and respondent's corporate name satisfy the
requirement that there be identical names in the existing corporate name and the proposed one.
To show contrast with respondent's corporate name, petitioner used the words "GSIS" and "thrift."
But these are not sufficiently distinct words that differentiate petitioner's corporate name from
respondent's. While "GSIS" is merely an acronym of the proper name by which petitioner is
identified, the word "thrift" is simply a classification of the type of bank that petitioner is.
Even if the classification of the bank as "thrift" is appended to petitioner's proposed corporate
name, it will not make the said corporate name distinct from respondent's because the latter is
likewise engaged in the banking business.
This Court used the same analysis in Ang mga Kaanib sa Iglesia ng Dios Kay Kristo Hesus, H.S.K.
sa Bansang Pilipinas, Inc. v. Iglesia ng Dios Kay Cristo Jesus, Haligi at Suhay ng Katotohanan…
The additional words "Ang Mga Kaanib" and "Sa Bansang Pilipinas, Inc." in petitioner's
name are, as correctly observed by the SEC, merely descriptive of and also referring to
the members, or kaanib, of respondent who are likewise residing in the Philippines.
These words can hardly serve as an effective differentiating medium necessary to avoid
confusion or difficulty in distinguishing petitioner from respondent. This is especially so,
since both petitioner and respondent corporations are using the same acronym –
H.S.K.; not to mention the fact that both are espousing religious beliefs and operating
in the same place. Xxx
2nd requisite:
In determining the existence of confusing similarity in corporate names, the test is whether the
similarity is such as to mislead a person using ordinary care and discrimination. And even without
such proof of actual confusion between the two corporate names, it suffices that confusion is
probable or likely to occur.
The overriding consideration in determining whether a person, using ordinary care and
discrimination, might be misled is the circumstance that both petitioner and respondent are
engaged in the same business of banking. "..
Petitioner cannot argue that the word "family" is a generic or descriptive name, which cannot be
appropriated exclusively by respondent. "Family," as used in respondent's corporate name, is
not generic. Generic marks are commonly used as the name or description of a kind of goods,
such as "Lite" for beer or "Chocolate Fudge" for chocolate soda drink. Descriptive marks, on the
other hand, convey the characteristics, function, qualities or ingredients of a product to one who
has never seen it or does not know it exists, such as "Arthriticare" for arthritis medication.
Under the facts of this case, the word "family" cannot be separated from the word "bank."
… This coined phrase, neither being generic nor descriptive, is merely suggestive and may
properly be regarded as arbitrary. Arbitrary marks are "words or phrases used as a mark that
appear to be random in the context of its use…Suggestive marks, on the other hand, "are marks
which merely suggest some quality or ingredient of goods. xxx The strength of the suggestive
marks lies on how the public perceives the word in relation to the product or service."
NOTE: important case cited
In Ang v. Teodoro, this Court ruled that the words "Ang Tibay" is not a descriptive term within the
meaning of the Trademark Law but rather a fanciful or coined phrase…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" to mean "durable shoes," but "matibay na sapatos" or "sapatos na
matibay."…
The word "family" is defined as "a group consisting of parents and children living together in a
household" or "a group of people related to one another by blood or marriage." Bank, on the other
hand, is defined as "a financial establishment that invests money deposited by customers, pays it
out when requested, makes loans at interest, and exchanges currency. By definition, there can
be no expected relation between the word "family" and the banking business of
respondent. Rather, the words suggest that respondent’s bank is where family savings
should be deposited. More, as in the Ang case, the phrase "family bank" cannot be used to
define an object.
2) Petitioner’s argument that the opinion of the BSP and the certificate of registration
granted to it by the DTI constitute authority for it to use "GSIS Family Bank" as corporate
name is also untenable.
The enforcement of the protection accorded by Section 18 of the Corporation Code to corporate
names is lodged exclusively in the SEC. The jurisdiction of the SEC is not merely confined to the
adjudicative functions provided in Section 5 of the SEC Reorganization Act, as amended. By
express mandate, the SEC has absolute jurisdiction, supervision and control over all corporations.
It is the SEC’s duty to prevent confusion in the use of corporate names not only for the protection
of the corporations involved, but more so for the protection of the public. It has authority to de-
register at all times, and under all circumstances corporate names which in its estimation are likely
to generate confusion.
Other matters
Finally, we uphold the Court of Appeals' finding that the issue of forum shopping was belatedly
raised by petitioner and, thus, cannot anymore be considered at the appellate stage of the
proceedings. Petitioner raised the issue of forum shopping for the first time only on appeal. In this
case, the fact that respondent filed a case before the DTI was made known to petitioner long
before the SEC rendered its decision. Yet, despite its knowledge, petitioner failed to question the
alleged forum shopping before the SEC. The exceptions to the general rule that forum shopping
should be raised in the earliest opportunity, as explained in the cited case of Young v. Keng Seng,
do not obtain in this case.
Prepared by: ROCHELLE NIEVA D. CURIBA
7. UFC PHILIPPINES, INC. (NOW MERGED WITH NUTRI-ASIA, INC., WITH NUTRI-ASIA,
INC. AS THE SURVIVING ENTITY), Petitioner, v. FIESTA BARRIO MANUFACTURING
CORPORATION, Respondent.
G.R. No. 198889, January 20, 2016
FACTS
On April 4, 2002, respondent filed Application No. 4-2002-002757 for the mark "PAPA BOY &
DEVICE" for goods under Class 30, specifically for "lechon sauce."7 The Intellectual Property
Office (IPO) published said application for opposition in the IP Phil. e-Gazette released on
September 8, 2006. On December 11, 2006, petitioner filed with the IPO-BLA a Verified Notice
of Opposition to the above-mentioned application
In its verified opposition before the IPO, petitioner contended that "PAPA BOY & DEVICE" is
confusingly similar with its "PAPA" marks inasmuch as the former incorporates the term "PAPA,"
which is the dominant feature of petitioner's "PAPA" marks. Petitioner averred that respondent's
use of "PAPA BOY & DEVICE" mark for its lechon sauce product, if allowed, would likely lead
the consuming public to believe that said lechon sauce product originates from or is authorized
by petitioner, and that the "PAPA BOY & DEVICE" mark is a variation or derivative of petitioner's
"PAPA" marks. Petitioner argued that this was especially true considering that petitioner's
ketchup product and respondent's lechon sauce product are related articles that fall under the
same Class 30.
In its Verified Answer, respondent argued that there is no likelihood of confusion between
petitioner's family of "PAPA" trademarks and respondent's "PAPA BOY & DEVICE" trademark.
The IPO-BLA rendered a Decision on March 26, 2008 sustaining petitioner's Opposition and
rejecting respondent's application for "PAPA BOY & DEVICE." CA reversed.
ISSUE
W/N the CA erred in holding that PAPA KETSARAP can be registered as a trademark.
RULING
YES.
Section 123. l(d) of the IP Code provides:
A mark cannot be registered if it:
xxxx
(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[.]
A scrutiny of petitioner's and respondent's respective marks would show that the IPO-BLA and
the IPO Director General correctly found the word "PAPA" as the dominant feature of petitioner's
mark "PAPA KETSARAP." Contrary to respondent's contention, "KETSARAP" cannot be the
dominant feature of the mark as it is merely descriptive of the product. Furthermore, it is the
"PAPA" mark that has been in commercial use for decades and has established awareness and
goodwill among consumers. We likewise agree with the IPO-BLA that the word "PAPA" is also
the dominant feature of respondent's "PAPA BOY & DEVICE" mark subject of the application,
such that "the word 'PAPA' is written on top of and before the other words such that it is the first
word/figure that catches the eyes."49 Furthermore, as the IPO Director General put it, the part of
respondent's mark which appears prominently to the eyes and ears is the phrase "PAPA BOY"
and that is what a purchaser of respondent's product would immediately recall, not the smiling
hog.
We quote the relevant portion of the IPO-BLA decision on this point below:
A careful examination of Opposer's and Respondent-applicant's respective marks shows that the
word "PAPA" is the dominant feature: In Opposer's marks, the word "PAPA" is either the mark
by itself or the predominant word considering its stylized font and the conspicuous placement of
the word "PAPA" before the other words. In Respondent-applicant's mark, the word "PAPA" is
written on top of and before the other words such that it is the first word figure that catches the
eyes. The visual and aural impressions created by such dominant word "PAPA" at the least is
that the respective goods of the parties originated from the other, or that one party has permitted
or has been given license to the other to use the word "PAPA" for the other party's product, or
that there is a relation/connection between the two parties when, in fact, there is none. This is
especially true considering that the products of both parties belong to the same class and are
closely related: Catsup and lechon sauce or liver sauce are both gravy-like condiments used to
spice up dishes. Thus, confusion of goods and of business may likely result.
Under the Dominancy Test, the dominant features of the competing marks are considered in
determining whether these competing marks are confusingly similar. Greater weight is given to
the similarity of the appearance of the products arising from the adoption of the dominant
features of the registered mark, disregarding minor differences. The visual, aural, connotative,
and overall comparisons and impressions engendered by the marks in controversy as they are
encountered in the realities of the marketplace are the main considerations (McDonald's
Corporation, et al., v. L. C. Big Mak Burger, Inc., et al., G. R. No. 143993, August 18, 2004;
Societe Des Produits Nestle, S. A." et al. v. Court of Appeals, et al., G. R. No. 112012, April 4,
2001). 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. (Lim Hoa v.
Director of Patents, 100 Phil. 214 [1956]); Co Tiong Sa v. Director of Patents, et al., G. R. No. L-
5378, May 24, 1954). Duplication or imitation is not necessary; nor is it necessary that the
infringing label should suggest an effort to imitate (Lim Hoa v. Director of Patents, supra, and Co
Liong Sa v. Director of Patents, supra). Actual confusion is not required: Only likelihood of
confusion on the part of the buying public is necessary so as to render two marks confusingly
similar so as to deny the registration of the junior mark (Sterling Products International, Inc. v.
Farbenfabriken Bayer Aktiengesellschaft, 137 Phil. 838 [1969]).
As to the first issue of whether PAPA BOY is confusingly similar to Opposer's PAPA mark, this
Bureau rules in the affirmative.
The records bear the following:
1. Registration No. 32416 issued for the mark "PAPA" under Class 29 goods was deemed
expired as of February 11, 2004 (Exhibit "A" attached to the VERIFIED NOTICE OF
OPPOSITION). Application Serial No. 4- 2005-010788 was filed on October 28, 2005 for the
same mark "PAPA" for Class 30 goods and Registration No. 42005010788 was issued on March
19,2007;
2. Opposer was issued for the mark "PAPA BANANA CATSUP LABEL" on August 11, 1983
Registration No. SR-6282 for Class 30 goods in the Supplemental Register, which registration
expired in 2003. Application Serial No. 4-2006-012364 was filed for the mark "PAPA LABEL
DESIGN" for Class 30 goods on November 15, 2006, and Registration No. 42006012364 was
issued on April 30, 2007; and
3. Lastly, Registration No. 34681 for the mark "PAPA KETSARAP" for Class 30 goods was
issued on August 23, 1985 and was renewed on August 23, 2005.
Though Respondent-applicant was first to file the subject application on April 04, 2002 vis-a-vis
the mark "PAPA" the filing date of which is reckoned on October 28, 2005, and the mark "PAPA
LABEL DESIGN" the filing date of which is reckoned on November 15, 2006, Opposer was able
to secure a registration for the mark "PAPA KETSARAP" on August 23, 1985 considering that
Opposer was the prior registrant and that its renewal application timely filed on August 23, 2005.
xxxx
Pursuant to [Section 123.l(d) of the IP Code], the application for registration of the subject mark
cannot be allowed considering that Opposer was earlier registrant of the marks PAPA and PAPA
KETSARAP which registrations were timely renewed upon its expiration. Respondent-applicant's
mark "PAPA BOY & DEVICE" is confusingly similar to Opposer's mark "PAPA KETSARAP" and
is applied to goods that are related to Opposer's goods, but Opposer's mark "PAPA KETSARAP"
was registered on August 23, 1985 per Certificate of Registration No. 34681, which registration
was renewed for a period of 10 years counted from August 23, 2005 per Certificate of Renewal
of Registration No. 34681 issued on August 23, 2005. To repeat, Opposer has already
registered a mark which Respondent-applicant's mark nearly resembles as to likely deceive or
cause confusion as to origin and which is applied to goods to which respondent-applicant's
goods under Class 30 are closely related.
Section 138 of the IP Code provides that a certificate of registration of a mark is prima facie
evidence of the validity of the registration, the registrant's ownership of the mark, and of the
registrant's exclusive right to use the same in connection with the goods and those that are
related thereto specified in the certificate.
We agree that respondent's mark cannot be registered. Respondent's mark is related to a
product, lechon sauce, an everyday all-purpose condiment and sauce, that is not subjected to
great scrutiny and care by the casual purchaser, who knows from regular visits to the grocery
store under what aisle to find it, in which bottle it is contained, and approximately how much it
costs. Since petitioner's product, catsup, is also a household product found on the same grocery
aisle, in similar packaging, the public could think that petitioner had expanded its product mix to
include lechon sauce, and that the "PAPA BOY" lechon sauce is now part of the "PAPA" family
of sauces, which is not unlikely considering the nature of business that petitioner is in. Thus, if
allowed registration, confusion of business may set in, and petitioner's hard-earned goodwill may
be associated to the newer product introduced by respondent, all because of the use of the
dominant feature of petitioner's mark on respondent's mark, which is the word "PAPA." The
words "Barrio Fiesta" are not included in the mark, and although printed on the label of
respondent's lechon sauce packaging, still do not remove the impression that "PAPA BOY" is a
product owned by the manufacturer of "PAPA" catsup, by virtue of the use of the dominant
feature. It is possible that petitioner could expand its business to include lechon sauce, and that
would be well within petitioner's rights, but the existence of a "PAPA BOY" lechon sauce would
already eliminate this possibility and deprive petitioner of its rights as an owner of a valid mark
included in the Intellectual Property Code.

The Court of Appeals likewise erred in finding that "PAPA," being a common term of endearment
for one's father, is a word over which petitioner could not claim exclusive use and ownership.
The Merriam-Webster dictionary defines "Papa" simply as "a person's father." True, a person's
father has no logical connection with catsup products, and that precisely makes "PAPA" as an
arbitrary mark capable of being registered, as it is distinctive, coming from a family name that
started the brand several decades ago. What was registered was not the word "Papa" as
defined in the dictionary, but the word "Papa" as the last name of the original owner of the brand.
In fact, being part of several of petitioner's marks, there is no question that the IPO has found
"PAPA" to be a registrable mark.

Respondent had an infinite field of words and combinations of words to choose from to coin a
mark for its lechon sauce. While its claim as to the origin of the term "PAPA BOY" is plausible, it
is not a strong enough claim to overrule the rights of the owner of an existing and valid mark.
Furthermore, this Court cannot equitably allow respondent to profit by the name and reputation
carefully built by petitioner without running afoul of the basic demands of fair play.

MADE BY: ANDREA

2. FIREMAN’S FUND INSURANCE COMPANY and FIRESTONE TIRE AND RUBBER COMPANY OF
THE PHILIPPINES, plaintiffs-appellants, vs. JAMILA & COMPANY, INC. and FIRST QUEZON
CITY INSURANCE CO., INC., defendants-appellees.
No. L-27427. SECOND DIVISION. April 7, 1976. AQUINO, J.
Facts:
Fireman’s Fund and Insurance Company (Fireman’s Fund for short) and Firestone Tire and Rubber
Company of the Philippines appealed from the order dated October 18, 1966 of the Court of First
Instance of Manila, dismissing their complaint against Jamila & Co., Inc. (hereinafter called Jamila)
for the recovery of the sum of P11,925.00 plus interest, damages and attorney’s fees.
The gist of the complaint is that Jamila or the Veterans Philippine Scouts Security Agency contracted
to supply security guards to Firestone; that Jamila assumed responsibility for the acts of its security
guards; that First Quezon City Insurance Co., Inc. executed a bond in the sum of P20,000.00 to
guarantee Jamila’s obligations under that contract; that on May 18, 1963 properties of Firestone
valued at P11,925.00 were lost allegedly due to the acts of its employees who connived with Jamila’s
security guard; that Fireman’s Fund, as insurer, paid to Firestone the amount of the loss; that
Fireman’s Fund was subrogated to Firestone’s right to get reimbursement from Jamila, and that
Jamila and its surety, First Quezon City Insurance refused to pay the amount of the loss in spite of
repeated demands.
Upon defendants’ motions, the lower court in its order of July 22, 1966 dismissed the complaint as to
Jamila on the ground that there was no allegation that it had consented to the subrogation and,
therefore, Fireman’s Fund had no cause of action against it.
In the same order the lower court dismissed the complaint as to First Quezon City Insurance Co., Inc.
on the ground of res judicata. It appears that the same action was previously filed in Civil Case No.
56311 which was dismissed because of the failure of the same plaintiffs and their counsel to appear
at the pre trial.
The plaintiffs cited article 2207 of the Civil Code which provides that “if the plaintiffs property has
been insured, and he has received indemnity from the insurance company for the injury or loss
arising out of the wrong or breach of contract complained of, the insurance company shall be
subrogated to the rights of the insured against the wrongdoer or the person who has violated the
contract.
In this appeal Firestone and Fireman’s Fund contend that the trial court’s dismissal of their complaint
is contrary to the aforementioned article 2207 which provides for legal subrogation.
Jamila, in reply, stubbornly argues that legal subrogation under article 2207 requires the
debtor’s consent; that legal subrogation takes place in the cases mentioned in article 1302 of the Civil
Code and the instant case is not among the three cases enumerated in that article, and that there
could be no subrogation in this case because according to the plaintiffs the contract between. Jamila
and Firestone was entered into on June 1, 1965 but the loss complained of occurred on May 18, 1963
Issue:
Whether the complaint of Firestone and Fireman’s Fund states a cause of action against Jamila. (Yes)
Held:
We hold that Firestone is really a nominal party in this case.
Fireman’s Fund’s action against Jamila is squarely sanctioned by article 2207. As the insurer,
Fireman’s Fund is entitled to go after the person or entity that violated its contractual commitment
to answer for the loss insured against.
The trial court erred in applying to this case the rules on novation. The plaintiffs in alleging in their
complaint that Fireman’s Fund “became a party in interest in this case by virtue of a subrogation right
given in its favor by” Firestone, were not relying on the novation by change of creditors as
contemplated in articles 1291 and 1300 to 1303 of the Civil Code but rather on article 2207.
Article 2207 is a restatement of a settled principle of American jurisprudence. Subrogation has been
referred to as the doctrine of substitution. It “is an arm of equity that may guide or even force one to
pay a debt for which an obligation was incurred but which was in whole or in part paid by another.”
Subrogation is founded on principles of justice and equity, and its operation is governed by principles
of equity. It rests on the principle that substantial justice should be attained regardless of form, that
is, its basis is the doing of complete, essential, and perfect justice between all the parties without
regard to form. It is also a normal incident of indemnity insurance. Upon payment of the loss, the
insurer is entitled to be subrogated pro tanto to any right of action which the insured may have
against the third person whose negligence or wrongful act caused the loss
The right of subrogation is of the highest equity. The loss in the first instance is that of the insured
but after reimbursement or compensation, it becomes the loss of the insurer when the insurance
company pays for the loss, such payment operates as an equitable assignment to the insurer of the
property and all remedies which the insured may have for the recovery thereof. That right is not
dependent upon, nor does it grow out of, any privity of contract, or upon written assignment of claim,
and payment to the insured makes the insurer an assignee in equity
Finding the trial court’s order of dismissal to be legally untenable, the same is set aside with costs
against defendant-appellee Jamila & Co., Inc. SO ORDERED
11. FILIPINO MERCHANTS INSURANCE CO., INC., petitioner, vs. COURT OF APPEALS and CHOA
TIEK SENG, respondents.
G.R. No. 85141. SECOND DIVISION. November 28, 1989. REGALADO, J.
Facts:
This is an action brought by the consignee of the shipment of fishmeal loaded on board the vessel SS
Bougainville and unloaded at the Port of Manila on or about December 11, 1976 and seeks to recover
from the defendant insurance company the amount of P51,568.62 representing damages to said
shipment which has been insured by the defendant insurance company under Policy No. M-2678.
The defendant brought a third party complaint against third party defendants Compagnie Maritime
Des Chargeurs Reunis and/or E. Razon, Inc. seeking judgment against the third (sic) defendants in
case judgment is rendered against the third party plaintiff.
It appears from the evidence presented that plaintiff insured said shipment with defendant insurance
company under said cargo Policy No. M-2678 for the sum of P267,653.59 for the goods described as
600 metric tons of fishmeal in new gunny bags of 90 kilos each from Bangkok, Thailand to Manila
against all risks under warehouse to warehouse terms.
Actually, what was imported was 59.940 metric tons not 600 tons at $395.42 a ton CNF Manila.
The fishmeal in 666 new gunny bags were unloaded from the ship on December 11, 1976 at Manila
unto the arrastre contractor E. Razon, Inc. and defendant’s surveyor ascertained and certified that in
such discharge 105 bags were in bad order condition as jointly surveyed by the ship’s agent and the
arrastre contractor.
The condition of the bad order was reflected in the turn over survey report. The cargo was also
surveyed by the arrastre contractor before delivery of the cargo to the consignee and the condition
of the cargo on such delivery was reflected in E. Razon’s Bad Order Certificate covering a total of 227
bags in bad order condition.
Defendant’s surveyor has conducted a final and detailed survey of the cargo in the warehouse for
which he prepared a survey report with the findings on the extent of shortage or loss on the bad
order bags totalling 227 bags amounting to 12,148 kilos
Based on said computation the plaintiff made a formal claim against the defendant Filipino Merchants
Insurance Company. A formal claim statement was also presented by the plaintiff against the vessel
but the defendant Filipino Merchants Insurance Company refused to pay the claim.
Consequently, the plaintiff brought an action against said defendant as adverted to above and
defendant presented a third party complaint against the vessel and the arrastre contractor
The court below, after trial on the merits, rendered judgment in favor of private respondent. On
appeal, the respondent court affirmed the decision of the lower court insofar as the award on the
complaint is concerned and modified the same with regard to the adjudication of the third-party
complaint.
Petitioner contends that an “all risks” marine policy has a technical meaning in insurance in that
before a claim can be compensable it is essential that there must be “some fortuity,” “casualty”
or “accidental cause” to which the alleged loss is attributable and the failure of herein private
respondent, upon whom lay the burden, to adduce evidence showing that the alleged loss to the
cargo in question was due to a fortuitous event precludes his right to recover from the
insurance policy.
Issues:
1. Whether the Court of Appeals erred in its interpretation and application of the ‘all risks’ clause of interest; or (c) an expectancy, coupled with an existing interest in that out of which the expectancy
the marime insurance policy. (No) arises.
2. Whether the Court of Appeals erred in not holding that the private respondent had no insurable Herein private respondent, as vendee/consignee of the goods in transit has such existing interest
interest in the subject cargo, hence, the marine insurance policy taken out by private respondent is therein as may be the subject of a valid contract of insurance. His interest over the goods is based on
null and void. (No) the perfected contract of sale.The perfected contract of sale between him and the shipper of the
Held: goods operates to vest in him an equitable title even before delivery or before he performed the
1. The “all risks clause” of the Institute Cargo Clauses read as follows: conditions of the sale. The contract of shipment, whether under F.O.B., C.I.F., or C. & F. as in this case,
“5. This insurance is against all risks of loss or damage to the subject-matter insured but shall is immaterial in the determination of whether the vendee has an insurable interest or not in the goods
in no case be deemed to extend to cover loss, damage, or expense proximately caused by in transit. The perfected contract of sale even without delivery vests in the vendee an equitable title,
delay or inherent vice or nature of the subject-matter insured. Claims recoverable hereunder an existing interest over the goods sufficient to be the subject of insurance.
shall be payable irrespective of percentage.” WHEREFORE, the instant petition is DENIED and the assailed decision of the respondent Court of
Appeals is AFFIRMED in toto. SO ORDERED.
An “all risks policy” should be read literally as meaning all risks whatsoever and covering all losses
by an accidental cause of any kind. The terms “accident” and “accidental”, as used in insurance
contracts, have not acquired any technical meaning. They are construed by the courts in their
ordinary and common acceptance. Thus, the terms have been taken to mean that which happens by
chance or fortuitously, without intention and design, and which is unexpected, unusual and
unforeseen.
The very nature of the term “all risks” must be given a broad and comprehensive meaning as covering
any loss other than a wilful and fraudulent act of the insured. This is pursuant to the very purpose of
an “all risks” insurance to give protection to the insured in those cases where difficulties of logical
explanation or some mystery surround the loss or damage to property. An “all risks” policy has been
evolved to grant greater protection than that afforded by the “perils clause,” in order to assure that
no loss can happen through the incidence of a cause neither insured against nor creating liability in
the ship; it is written against all losses, that is, attributable to external causes.
The term “all risks” cannot be given a strained technical meaning, the language of the clause under
the Institute Cargo Clauses being unequivocal and clear, to the effect that it extends to all
damages/losses suffered by the insured cargo except (a) loss or damage or expense proximately
caused by delay, and (b) loss or damage or expense proximately caused by the inherent vice or nature
of the subject matter insured.
Generally, the burden of proof is upon the insured to show that a loss arose from a covered peril, but
under an “all risks” policy the burden is not on the insured to prove the precise cause of loss or
damage for which it seeks compensation. The insured under an “all risks insurance policy” has the
initial burden of proving that the cargo was in good condition when the policy attached and that
the cargo was damaged when unloaded from the vessel; thereafter, the burden then shifts to the
insurer to show the exception to the coverage
The burden of the insured, therefore, is to prove merely that the goods he transported have been
lost, destroyed or deteriorated. Thereafter, the burden is shifted to the insurer to prove that the loss
was due to excepted perils. To impose on the insured the burden of proving the precise cause of the
loss or damage would be inconsistent with the broad protective purpose of “all risks” insurance.
In the present case, there being no showing that the loss was caused by any of the excepted perils,
the insurer is liable under the policy. There is no evidence presented to show that the condition of the
gunny bags in which the fishmeal was packed was such that they could not hold their contents in the
course of the necessary transit, much less any evidence that the bags of cargo had burst as the result
of the weakness of the bags themselves. Had there been such a showing that spillage would have been
a certainty, there may have been good reason to plead that there was no risk covered by the policy.
Under an ‘all risks’ policy, it was sufficient to show that there was damage occasioned by
some accidental cause of any kind, and there is no necessity to point to any particular cause
2. Private respondent, as consignee of the goods in transit under an invoice containing the terms
under “C & F Manila,” has insurable interest in said goods.
Section 13 of the Insurance Code defines insurable interest in property as every interest in property,
whether real or personal, or any relation thereto, or liability in respect thereof, of such nature that a
contemplated peril might directly damnify the insured. In principle, anyone has an insurable interest
in property who derives a benefit from its existence or would suffer loss from its destruction whether
he has or has not any title in, or lien upon or possession of the property. 16 Insurable interest in
property may consist in (a) an existing interest; (b) an inchoate interest founded on an existing