The petitioner opposed Co Beng Kay's application to register the trademark "BRUTE" for use on underwear, arguing it was similar to their own trademarks "BRUT" and "Brut33" used on personal care products. However, the court ruled in favor of Co Beng Kay, finding that the petitioner's trademarks did not cover underwear and that the personal care products and underwear were sufficiently dissimilar that consumers would not be confused or misled. As the petitioner had not registered its trademarks for underwear specifically, Co Beng Kay was allowed to register "BRUTE" for its intended use on distinct goods.
The petitioner opposed Co Beng Kay's application to register the trademark "BRUTE" for use on underwear, arguing it was similar to their own trademarks "BRUT" and "Brut33" used on personal care products. However, the court ruled in favor of Co Beng Kay, finding that the petitioner's trademarks did not cover underwear and that the personal care products and underwear were sufficiently dissimilar that consumers would not be confused or misled. As the petitioner had not registered its trademarks for underwear specifically, Co Beng Kay was allowed to register "BRUTE" for its intended use on distinct goods.
The petitioner opposed Co Beng Kay's application to register the trademark "BRUTE" for use on underwear, arguing it was similar to their own trademarks "BRUT" and "Brut33" used on personal care products. However, the court ruled in favor of Co Beng Kay, finding that the petitioner's trademarks did not cover underwear and that the personal care products and underwear were sufficiently dissimilar that consumers would not be confused or misled. As the petitioner had not registered its trademarks for underwear specifically, Co Beng Kay was allowed to register "BRUTE" for its intended use on distinct goods.
Facts of the Case: Co Beng Kay applied for the registration of the trademark 'BRUTE' to be used it its underwear (briefs) products. The petitioner opposed on the ground that there is similarity with their own symbol (BRUT, Brut33 & Device) used on its aftershave, deodorant, cream shave, hairspray and hair shampoo/soaps and that it would cause injury to their business reputation. It must be noted that the petitioner never applied for registration of said trademark for its brief products. The Patent Office allowed Co Beng Kay the registration and this was further affirmed by the Court of Appeals. Issue: Is there confusing similarity between the challenged marks and that its use would likely cause confusion on the part of the purchasers? HELD: NONE. Co Beng Kay may rightly appropriate the mark. In this case Sec. 20 (Philippine Intellectual Property Law) is controlling. The certificate of registration issued confers the exclusive right to use its own symbol only to those goods specified by the first user in the certificate, subject to any conditions or limitations stated therein. Moreover, the two products are so dissimilar that a purchaser of one (a brief) would not be misled or mistaken into buying the other (such as an aftershave).
B6F Converse Rubber Corporation v. Jacinto Rubber - Plastics Co. Inc., GRs L-27425 and L-30505, 28 April 1980, Second Division, Barredo (J) - ROMERO PDF
(American Philological Association Classical Resources) Herbert Hausmaninger Richard Gamauf George A. Sheets George A. Sheets - A Casebook On Roman Property Law-Oxford University Press (2012)