Trademarks and Tradenames

A trademark has been generally defined as any word, name, symbol or device adopted and used by a
manufacturer or merchant to identify his goods and distinguish them from those manufactured and
sold by others.
(See, Societe Des Produits Nestle, SA vs. Court of Appeals, G.R. No. 112012, April 4, 2001)
A certificate of registration shall be prima facie evidence of the validity of the registration, the
registrant's ownership of the mark or tradename, and of the registrant's exclusive right to use the same
in connection with the goods, business or services specified in the certificate, subject to the conditions
and limitations stated therein.
(See, Amigo Manufacturing vs. Cluett Peabody Co., G.R. No. 139300, March 14, 2001)
Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention.
(See,
Mirpuri
vs.
Court
of
Appeals,
G.R.
No.
114508,
November
19,
1999)
In infringement or trademark cases in the Philippines, particularly in ascertaining whether one
trademark is confusingly similar to is a colorable imitation of another, no set of rules can be deduced
-- each case must be decided on its own merits. In determining whether two trademarks are
confusingly similar, the two marks in their entirety as they appear in the respective labels must be
considered in relation to the goods to which they are attached.
(See, Mighty Corporation vs. E.&J. Gallo Winery, G.R. No. 154342, July 14, 2004; Emerald Garment Mfg.
Corp. vs. Court of Appeals, G.R. No. 100098, December 29, 1995; Distilleria Washington vs. Court of
Appeals,
G.R.
No.
120961,
October
17,
1996)
It is the tendency of the allegedly infringing mark to be confused with the registered trademark that is
the gravamen of the offense of infringement of a registered trademark. The acquittal of the accused
should follow if the allegedly infringing mark is not likely to cause confusion.
(Diaz
vs.
People
of
the
Philippines,
G.R.
No.
180677,
February
18,
2013)
Restriction on the exclusive use of a trademark is only true over unrelated goods.
(See, Heirs of Crisanta Gabriel-Almoradie vs. Court of Appeals, G.R. No. L-91385, January 4, 1994;
Armco Steel Corporation vs. SEC)
One who has adopted and used a trademark on his goods does not prevent the adoption and use of the
same trademark by others for products which are of a different description.
(See, Pearl & Dean (Phil.), Inc. vs. Shoemart, Inc., G.R. No. 148222, August 15, 2003)
The principle of res judicata applies in appropriate cases in proceedings for cancellation of trademarks
before the Philippine Patent Office.
(Wolverine
Worldwide,
Inc.
vs.
Court
of
Appeals)
G.R. No. 120961 October 17, 1996DISTILLERIA WASHINGTON, INC. or WASHINGTON DISTILLERY,
INC.,
petitioner,vs.
THE HONORABLE COURT OF APPEALS and LA TONDEA DISTILLERS, INC.,
respondents.FACTS : La Tondea Distillers , Inc. (LTDI) filed a case against Distilleria Washington for
theseizure of 18,157 empty bottles bearing the blown-in marks of La Tondea Inc. and GinebraSan
Miguel. Said bottles were being used by Washington for its own products without theconsent of LTDI.LTDI
asserted that as the owner of the bottles they were entitled for the protection extendedby RA no. 623 (An
Act to regulate the use of duly stamped or marked bottles, boxes, kegs,barrels and other similar
containers). Washington countered that RA no. 623 should notapply to alcoholic beverages and the
ownership of the bottles were lawfully transferred to thebuyer upon the sale of the gin and the containers

at a single price.The trial court rendered a decision favoring Washington and ordered LTDI for the return
of the seized bottles. LTDI appealed the decision to the Court of Appeals. The appellate courtreversed the
court
a quo
and ruled against Washington.ISSUE : Whether or not ownership of the empty bottles was transferred to
Washington?HELD : The fact of the matter is that R.A. 623, as amended, in affording trademark
protectionto the registrant, has additionally expressed a
prima facie
presumption of illegal use by apossessor whenever such use or possession is without the written
permission of theregistered manufacturer, a provision that is neither arbitrary nor without
appropriaterationale.The above-quoted provisions grant protection to a qualified manufacturer who
successfullyregistered with the Philippine Patent Office its duly stamped or marked bottles, boxes,
casksand other similar containers. The mere use of registered bottles or containers without thewritten
consent of the manufacturer is prohibited, the only exceptions being when they areused as containers for
"sisi," "bagoong," "patis" and similar native products.It is to be pointed out that a trademark refers to
a word, name, symbol, emblem, sign or device or any combination thereof adopted and used by a
merchant to identify, anddistinguish from others, his goods of commerce. It is basically an intellectual
creation that issusceptible to ownership
7
and, consistently therewith, gives rise to its own elements of
jus posidendi
,
jus utendi
,
jus fruendi
,
jus disponendi
, and
jus abutendi
, along with the applicable
jus lex
, comprising that ownership. The incorporeal right, however, is distinct from theproperty in the material
object subject to it. Ownership in one does not necessarily vestownership in the other. Thus, the transfer
or assignment of the intellectual property will notnecessarily constitute a conveyance of the thing it
covers, nor would a conveyance of thelatter imply the transfer or assignment of the intellectual right.
Mirpuri vs CA, GR No. 114508, 19 November 1999, 318 SCRA 516
FACTS
Lolita Escobar applied with the Bureau of Patents for the registration of the trademark Barbizon,
alleging that she had been manufacturing and selling these products since 1970. private respondent
Barbizon Corp opposed the application in IPC No. 686. The Bureau granted the application and a
certificate of registration was issued for the trademark Barbizon. Escobar later assigned all her rights
and interest over the trademark to petitioner Mirpuri. In 1979, Escobar failed to file with the Bureau the
Affidavit of Use of the trademark. Due to his failure, the Bureau cancelled the certificate of registration.
Escobar reapplied and Mirpuri also applied and this application was also opposed by private respondent
in IPC No. 2049, claiming that it adopted said trademark in 1933 and has been using it. It obtained a
certificate from the US Patent Office in 1934. Then in 1991, DTI cancelled petitioners registration and
declared private respondent the owner and prior user of the business name Barbizon International.

ISSUE
Whether or not the treaty (Paris Convention) affords protection to a foreign corporation against a
Philippine applicant for the registration of a similar trademark.

HELD
The Court held in the affirmative. RA 8293 defines trademark as any visible sign capable of
distinguishing goods. 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. 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.
Etepha v. Director of Patents
G.R. No. L-20635 March 31, 1966ETEPHA, A.G.,
petitioner,vs.
DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS, INC.,
respondents.FACTS : On April 23, 1959, respondent Westmont Pharmaceuticals, Inc., a New
Yorkcorporation, sought registration of trademark "Atussin" placed on its "medicinal preparationof
expectorant antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used in the
treatment of cough". The trademark is used exclusively in the Philippines since January 21,1959.
1
Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected. Petitioner claimsthat it will
be damaged because Atussin is so confusedly similar to its Pertussin (RegistrationNo. 6089, issued
on September 25, 1957) used on a preparation for the treatment of coughs,that the buying public will be
misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill.To the
question: May trademark ATUSSIN be registered, given the fact that PERTUSSIN,another trademark, had
been previously registered in the Patent Office? the Director of Patents answered affirmatively. Hence
this appeal.ISSUE : Whether or not ATUSSIN may be registered?HELD: We are to be guided by the rule
that the validity of a cause for infringement ispredicated upon colorable imitation. The phrase "colorable
imitation" denotes such a "closeor ingenious imitation as to be calculated to deceive ordinary persons, or
such aresemblance to the original as to deceive an ordinary purchaser, giving such attention as
apurchaser usually gives, and to cause him to purchase the one supposing it to be the other.A practical
approach to the problem of similarity or dissimilarity is to go into the
whole
of thetwo trademarks pictured in their manner of display. Inspection should be undertaken from
theviewpoint of a prospective buyer. The trademark complained of should be compared andcontrasted
with the purchaser's memory (not in juxtaposition) of the trademark said to beinfringed.
10
Some such factors as "sound; appearance; form, style, shape, size or format;color; ideas connoted by
marks; the meaning, spelling, and pronunciation, of words used;and the setting in which the words
appear" may be considered.
11
For, indeed, trademarkinfringement is a form of unfair competition.Confusion is likely between
trademarks, however, only if their
over-all
presentations in any of the particulars of sound,

appearance
, or meaning are such as would lead the purchasingpublic into believing that the products to which the
marks are applied emanated from thesame source. In testing this issue, fixed legal rules exist if not
in harmony, certainly inabundance but, in the final analysis, the application of these rules in any given
situationnecessarily reflects a matter of individual judgment largely predicated on opinion. There
is,however, and can be no disagreement with the rule that the purchaser is confused, if at all,by the marks
as a whole
.As we take up Pertussin and Atussin once again, we cannot escape notice of the fact thatthe two words
do not sound alike when pronounced. There is not much phonetic similaritybetween the two. The
Solicitor General well-observed that in Pertussin the pronunciation of the prefix "Per", whether correct or
incorrect, includes a combination of three letters P,
e
and
r
; whereas, in Atussin the whole starts with the single letter A added to suffix "tussin".Appeals to the ear
are disimilar. And this, because in a word combination, the part thatcomes first is the
most pronounced
. An expositor of the applicable rule here is the decision inthe Syrocol-Cheracol controversy.
15
There, the ruling is that trademark Syrocol (a coughmedicine preparation) is not confusedly similar to
trademark
Cheracol
(also a coughmedicine preparation). Reason: the two words "do not look or sound enough alike to justify
aholding of trademark infringement", and the "only similarity is in the last syllable, and that isnot
uncommon in names given drug compounds".
ARCESONSANDCOMPANY vs.SELECTABISCUITCOMPANY,INC., ET AL.,FACTS:On August 31, 1955, Selecta Biscuit
Company, Inc., filed with the PhilippinePatent Office apetition for the registration of the word"SELECTA"
as trade-mark to be use in its bakery productsalleging that it is in actual use thereof for not less than two
months before said date and that "noother persons,partnership, corporation or association ... has the right
to usesaid trade-mark inthe Philippines, either in the identical form or in any such near resemblance
thereto, as might becalculated to deceive." Its petition was referred to an EX aminer for study who found
that thetrade-mark sought to be registered resembles the word "SELECTA" used by the Acre and Sons
andCompany in its milk and ice cream products so that its use by respondent will cause confusion asto the
origin of their respective goods. Consequently, he recommended that the application berefused.The
Patent Office ordered the publication of the application for purposes of opposition. TheArce Sons and
Company then filed their opposition claiming that the mark
Selecta
has alreadybecome identified with the name of Ramon Arce and its business. Moreover, that the mark was
usedcontinuously since 1933 while the respondent herein only used it during 1955.ISSUE:Is the word
Selecta
registrable?HELD:A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of
aparticular producer or manufacturer may be distinguished from that of others, and its sole functionis
to designate distinctively the origin of theproducts to which it is attached."The word 'SELECTA', it is true,
may be an ordinary or common word in the sense that maybe used or employed by any onein promoting
his business or enterprise, but once adopted orcoined in connection with one's business as an emblem,
signor device to characterize its products,or as a badge of authenticity, it may acquire a secondary
meaning as to be exclusively associatedwith its products and business. In this sense, its used by another
may lead to confusion in trade andcause damage to its business. And this is the situation of petitioner
when it used the word'SELECTA' as a trade-mark. In this sense, the law gives its protection and
guarantees its used to theexclusion of all others a (G. & C. Merriam Co. v.Saalfield, 198 F. 369, 373). And
it is also in the sensethat the law postulates that "The ownership or possession of a trade-mark, . . . shall
be recognizedand protected in the same manner and to the same extent, as are other property rights
known tothe law," thereby giving to any person entitled to the exclusive use of such trade-mark the right

torecover damages in a civil action from any person who may have sold goods of similar kind bearingsuch
trademark
G.R. No. L-14761 January 28, 1961
ARCE SONS AND COMPANY,
petitioner, vs.
SELECTA BISCUIT COMPANY, INC., ET AL.,
respondents.
BAUTISTA ANGELO,
J
.:Facts:
Ramon Arce, predecessor-in-interest of herein petitioner, started a milk business in 1933 using the
name SELECTA
as trade-name as well as trade-mark. He sold his milk products in bottles covered with caps on
which the words
SELECTA FRESH MILK were inscribed. For the span of more than 20 years, his business
expanded
and sold, inaddition to his milk product, ice cream, sandwiches and other food products. His
products were packaged in a special
containers with the word SELECTA written in the packaging. Several new products were
eventually added to his
line of products such as biscuits, bakery items
, and assorted cakes and pastries. The word SELECTA was even
written on the signboards of his business establishments and upon the vehicles that were used for
the delivery of hisproducts. Then his business was acquired by petitioner Arce Sons and Co. which
eventually put a first classrestaurant aside from the manufacture of the aforementioned food
products.Herein respondent on the other hand, was organized and registered as corporation under
the name and styleof Selecta Biscuits Co., Inc. The name Selecta was chosen by the
Chinese organizers of the corporation as a
translation of a Chinese word Ching Suan. Its business started as a biscuit factory and its
products such as biscuits
and crackers were specially wrapped in cellophane pouches and place inside a tin can. Such products
of therespondent were sold throughout the Philippines. The respondent filed a petition with the
Philippine Patent Office
for the registration of the word SELECTA as trade
-mark to be use in its bakery products. The petition was referredto an examiner for evaluation who
found out that the trademark sought to be registered resembles the word
SELECTA used by the petitioner so that i
ts use by the respondent will cause confusion as to the origin of theirrespective goods. So
the examiner recommended for the disapproval of the application. However, Patent Officeonly
ordered the publication of the application.
In due time, petitioner filed an opposition to the registration on the ground that the mark
SELECTA has
been continuously used by it from the time of its organization and even prior thereto by Ramon
Arce, thus the saidmark has already become identified with its name and business. Petitioner also

contend that the use of SELECTA bythe respondents as trademark constitutes as an unfair
competition with its products thus resulting in confusion intrade and that the product of the
respondent might be mistaken by the public as its products.
The Director of Patents rendered a decision dismissing petitioners op
position stating that the registration of the trade-mark SELECTA in favour of the respondent will
not cause confusion or mistake nor will deceive thepurchasers as to cause damage
to petitioner. Hence, this present petition for review.
Issue:
Whether or not the use of the trademark SELECTA by the respondent will result confusion to the prejudice of Arce
Sons and Co.
Held:
Yes. Trademark is a distinctive mark of authenticity through which the merchandise of a particular
producer ormanufacturer may be distinguished from that of others, and its sole function is to
designate distinctively the origin of the products to which it is attached.
Verily, the word SELECTA has been chosen by petitioner and has been
inscribed on all its products to serve not only as a sign or symbol that may indicate that they are
manufactured andsold by it but as a mark of authenticity that may distinguish them from the
products sold and manufactured by othermerchants or businessmen. The word 'SELECTA', it
is true, may be an ordinary or common word in the sense thatmay be used or employed by any one in
promoting his business or enterprise, but once adopted or coined inconnection with one's business
as an emblem, sign or device to characterize its products, or as a badge of authenticity, it may
acquire a secondary meaning as to be exclusively associated with its products and business. Inthis
sense, its used by another may lead to confusion in trade and cause damage to its business. And this
is thesituation of petitioner when it used the word 'SELECTA' as a trade-mark. In this sense, the
law gives its protection andguarantees its used to the exclusion of all others. Thus, the Director of
Patent committed an error in dismissing theopposition of the petitioner and in holding
that the registration of the trademark SELECTA in favour of respondent
will not cause damage to petitioner.Decision of the Director of Patent office is reversed.