Ipl - Trademarks (DLT) 1

IPL TRADEMARKS [DLT] 1
E. Procedural: How to Register

124.4. If during the examination of the application, the Office finds factual basis to
1. Application reasonably doubt the veracity of any indication or element in the application, it may require
the applicant to submit sufficient evidence to remove the doubt. (Sec. 5, R.A. No. 166a)
SECTION 3. International Conventions and Reciprocity. Any person who is a national
or who is domiciled or has a real and effective industrial establishment in a country which is SECTION 125. Representation; Address for Service. If the applicant is not domiciled
a party to any convention, treaty or agreement relating to intellectual property rights or the or has no real and effective commercial establishment in the Philippines, he shall designate
repression of unfair competition, to which the Philippines is also a party, or extends by a written document filed in the Office, the name and address of a Philippine resident who
reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the may be served notices or process in proceedings affecting the mark. Such notices or
extent necessary to give effect to any provision of such convention, treaty or reciprocal law, services may be served upon the person so designated by leaving a copy thereof at the
in addition to the rights to which any owner of an intellectual property right is otherwise address specified in the last designation filed. If the person so designated cannot be found
entitled by this Act. at the address given in the last designation, such notice or process may be served upon the
Director.
SECTION 124. Requirements of Application.
124.1. The application for the registration of the mark shall be in Filipino or in English and SECTION 126. Disclaimers. The Office may allow or require the applicant to disclaim an
shall contain the following: unregistrable component of an otherwise registrable mark but such disclaimer shall not
a. A request for registration; prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the
b. The name and address of the applicant; disclaimed matter, nor such shall disclaimer prejudice or affect the applicant's or owner's
c. The name of a State of which the applicant is a national or where he has domicile; and right on another application of later date if the disclaimed matter became distinctive of the
the name of a State in which the applicant has a real and effective industrial or commercial applicant's or owner's goods, business or services.
establishment, if any;
d. Where the applicant is a juridical entity, the law under which it is organized and existing; SECTION 128. Single Registration for Goods and/or Services. Where goods and/or
e. The appointment of an agent or representative, if the applicant is not domiciled in the services belonging to several classes of the Nice Classification have been included in one
Philippines; (1) application, such an application shall result in one registration.
f. Where the applicant claims the priority of an earlier application, an indication of:
i. The name of the State with whose national office the earlier application was filed or if filed SECTION 130. Signature and Other Means of Self-Identification.
with an office other than a national office, the name of that office, 130.1. Where a signature is required, the Office shall accept:
ii. The date on which the earlier application was filed, and a. A hand-written signature; or
iii. Where available, the application number of the earlier application; b. The use of other forms of signature, such as a printed or stamped signature, or the use of
g. Where the applicant claims color as a distinctive feature of the mark, a statement to that a seal, instead of a hand-written signature: Provided, That where a seal is used, it should be
effect as well as the name or names of the color or colors claimed and an indication, in accompanied by an indication in letters of the name of the signatory.
respect of each color, of the principal parts of the mark which are in that color;
h. Where the mark is a three-dimensional mark, a statement to that effect; 130.2. The Office shall accept communications to it by telecopier, or by electronic means
i. One or more reproductions of the mark, as prescribed in the Regulations; subject to the conditions or requirements that will be prescribed by the Regulations. When
j. A transliteration or translation of the mark or of some parts of the mark, as prescribed in communications are made by telefacsimile, the reproduction of the signature, or the
the Regulations; reproduction of the seal together with, where required, the indication in letters of the name
k. The names of the goods or services for which the registration is sought, grouped of the natural person whose seal is used, appears. The original communications must be
according to the classes of the Nice Classification, together with the number of the class of received by the Office within thirty (30) days from date of receipt of the telefacsimile.
the said Classification to which each group of goods or services belongs; and
l. A signature by, or other self-identification of, the applicant or his representative. 130.3. No attestation, notarization, authentication, legalization or other certification of any
signature or other means of self-identification referred to in the preceding paragraphs, will
124.2. The applicant or the registrant shall file a declaration of actual use of the mark be required, except, where the signature concerns the surrender of a registration.
with evidence to that effect, as prescribed by the Regulations within three (3) years
from the filing date of the application. Otherwise, the application shall be refused or the SECTION 131. Priority Right.
mark shall be removed from the Register by the Director. 131.1. An application for registration of a mark filed in the Philippines by a person referred to
124.3. One (1) application may relate to several goods and/or services, whether they belong in Section 3, and who previously duly filed an application for registration of the same mark in
to one (1) class or to several classes of the Nice Classification.
one of those countries, shall be considered as filed as of the day the application was first shall within a period fixed by the Regulations complete or correct the application as
filed in the foreign country. required, otherwise, the application shall be considered withdrawn.
131.2. No registration of a mark in the Philippines by a person described in this section shall 132.2. Once an application meets the filing requirements of Section 127, it shall be
be granted until such mark has been registered in the country of origin of the applicant. numbered in the sequential order, and the applicant shall be informed of the application
number and the filing date of the application will be deemed to have been abandoned.
131.3. Nothing in this section shall entitle the owner of a registration granted under this
section to sue for acts committed prior to the date on which his mark was registered in this
country: Provided, That, notwithstanding the foregoing, the owner of a well-known mark as 3. Examination
defined in Section 123.1(e) of this Act, that is not registered in the Philippines, may, against
an identical or confusingly similar mark, oppose its registration, or petition the cancellation SECTION 133. Examination and Publication.
of its registration or sue for unfair competition, without prejudice to availing himself of other 133.1. Once the application meets the filing requirements of Section 127, the Office shall
remedies provided for under the law. examine whether the application meets the
requirements of Section 124 and the mark as defined in Section 121 is registrable under
131.4. In like manner and subject to the same conditions and requirements, the right Section 123.
provided in this section may be based upon a subsequent regularly filed application in the
same foreign country: Provided, That any foreign application filed prior to such subsequent 133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled,
application has been withdrawn, abandoned, or otherwise disposed of, without having been it shall, upon payment of the prescribed fee, forthwith cause the application, as filed, to be
laid open to public inspection and without leaving any rights outstanding, and has not published in the prescribed manner.
served, nor thereafter shall serve, as a basis for claiming a right of priority.
133.3. If after the examination, the applicant is not entitled to registration for any reason, the
Office shall advise the applicant thereof and the reasons therefor. The applicant shall have a
(Claim of Priority Date) period of four (4) months in which to reply or amend his application, which shall then be re-
239.2. Marks registered under Republic Act No. 166 shall remain in force but shall be examined. The Regulations shall determine the procedure for the re-examination or revival
deemed to have been granted under this Act and shall be due for renewal within the period of an application as well as the appeal to the Director of Trademarks from any final action by
provided for under this Act and, upon renewal, shall be reclassified in accordance with the the Examiner.
International Classification. Trade names and marks registered in the Supplemental
Register under Republic Act No. 166 shall remain in force but shall no longer be subject to 133.4. An abandoned application may be revived as a pending application within three (3)
renewal. months from the date of abandonment, upon good cause shown and the payment of the
required fee.
2. Assignment of Application Number and Filing Date
133.5. The final decision of refusal of the Director of Trademarks shall be appealable to the
SECTION 127. Filing Date. Director General in accordance with the procedure fixed by the Regulations.
127.1. Requirements. The filing date of an application shall be the date on which the
Office received the following indications and elements in English or Filipino: SECTION 126. Disclaimers. The Office may allow or require the applicant to disclaim an
a. An express or implicit indication that the registration of a mark is sought; unregistrable component of an otherwise registrable mark but such disclaimer shall not
b. The identity of the applicant; prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the
c. Indications sufficient to contact the applicant or his representative, if any; disclaimed matter, nor such shall disclaimer prejudice or affect the applicant's or owner's
d. A reproduction of the mark whose registration is sought; and right on another application of later date if the disclaimed matter became distinctive of the
e. The list of the goods or services for which the registration is sought. applicant's or owner's goods, business or services.
127.2. No filing date shall be accorded until the required fee is paid. SECTION 129. Division of Application. Any application referring to several goods or
services, hereafter referred to as the "initial application," may be divided by the applicant
SECTION 132. Application Number and Filing Date. into two (2) or more applications, hereafter referred to as the "divisional applications," by
132.1. The Office shall examine whether the application satisfies the requirements for the distributing among the latter the goods or services referred to in the initial application. The
grant of a filing date as provided in Section 127 and Regulations relating thereto. If the divisional applications shall preserve the filing date of the initial application or the benefit of
application does not satisfy the filing requirements, the Office shall notify the applicant who the right of priority.
2. It is not presently selling footwear under the trademark BATA in the Philippines;
4. Publication and
133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled, 3. It has no licensing agreement with any local entity or firm to sell its products in the
it shall, upon payment of the prescribed fee, forthwith cause the application, as filed, to be Philippines.
published in the prescribed manner.
Evidence received by the Philippine Patent Office showed that Bata shoes made by Gerbec
5. Opposition and Hrdina of Czechoslovakia were sold in the Philippines prior to World War II. Some
shoes made by Bata of Canada were perhaps also sold in the Philippines until 1948.
SECTION 134. Opposition. Any person who believes that he would be damaged by the However, the trademark BATA was never registered in the Philippines by any foreign entity.
registration of a mark may, upon payment of the required fee and within thirty (30) days after Under the circumstances, it was concluded that "opposer has, to all intents and purposes,
the publication referred to in Subsection 133.2, file with the Office an opposition to the technically abandoned its trademark BATA in the Philippines."
application. Such opposition shall be in writing and verified by the oppositor or by any
person on his behalf who knows the facts, and shall specify the grounds on which it is Upon the other hand, the Philippine Patent Office found that New Olympian Rubber
based and include a statement of the facts relied upon. Copies of certificates of registration Products Co., Inc.:
of marks registered in other countries or other supporting documents mentioned in the
opposition shall be filed therewith, together with the translation in English, if not in the ... has overwhelmingly and convincingly established its right to the trademark BATA and
English language. For good cause shown and upon payment of the required surcharge, the consequently, its use and registration in its favor. There is no gainsaying the truth that the
time for filing an opposition may be extended by the Director of Legal Affairs, who shall respondent has spent a considerable amount of money and effort in popularizing the
notify the applicant of such extension. The Regulations shall fix the maximum period of time trademark BATA for shoes in the Philippines through the advertising media since it was
within which to file the opposition. lawfully used in commerce on July 1, 1970. It can not be denied, therefore, that it is the
respondent-applicant's expense that created the enormous goodwill of the trademark BATA
SECTION 135. Notice and Hearing. Upon the filing of an opposition, the Office shall in the Philippines and not the opposer as claimed in its opposition to the registration of the
serve notice of the filing on the applicant, and of the date of the hearing thereof upon the BATA mark by the respondent.
applicant and the oppositor and all other persons having any right, title or interest in the
mark covered by the application, as appear of record in the Office. Additionally, on evidence of record, having also secured (three) copyright registrations for
the word BATA, respondent-applicant's right to claim ownership of the trademark BATA in
the Philippines, which it claims to be a Tagalog word which literally means "a little child"
BATA INDUSTRIES, LTD. vs. CA; TIBURCIO S. EVALLE, DIRECTOR OF PATENTS, (Exh. 5), is all the more fortified.
NEW OLYMPIAN RUBBER PRODUCTS CO., INC.
The Philippine Patent Office dismissed the opposition and ordered the registration of the
On October 27, 1980, the petition in this case was denied for lack of merit. Petitioner moved trademark BATA in favor of the domestic corporation.
to reconsider and as required, private respondent submitted comments. A hearing on the
motion for reconsideration was held on June 7, 1982. This is Our resolution on the motion Appeal from the decision of the Philippine Patent Office was made to the Court of Appeals
for reconsideration. by Bata Industries, Ltd. In a decision penned by Justice Justiniano P. Cortez dated August 9,
1979, with Justices Mariano Serrano and Jose B. Jimenez concurring, the PPO decision
In Inter Partes Case No. 654 of the Philippine Patent Office, New Olympian Rubber was reversed. A motion for reconsideration filed by New Olympian Rubber Products Co.,
Products Co., Inc. sought the registration of the mark BATA for casual rubber shoes. It Inc. was denied on October 17, 1979, by the same justices.
alleged that it has used the mark since July 1, 1970.
However, in a resolution on a second motion for reconsideration penned by Justice Hugo E.
Registration was opposed by Bata Industries, Ltd., a Canadian corporation, which alleged Gutierrez who is now a member of this Court, to which Justices Corazon J. Agrava and
that it owns and has not abandoned the trademark BATA. Rodolfo A. Nocon concurred (with the former filing a separate opinion), the decision of
August 9, 1979, was set aside and that of the Director of Patents was affirmed.
Stipulated by the parties were the following:
In addition to points of law, Bata Industries, Ltd. questions "the circumstances surrounding
1. Bata Industries, Ltd. has no license to do business in the Philippines; the issuance of the questioned resolutions of the respondent Court of Appeals." In effect, it
insinuates that there was something wrong when a new set of justices rendered a abandoned said trademark. The petitioner has no license to do business in the Philippines
completely different decision. and the trademark has never been registered in the Philippines by any foreign entity. Bata
Industries does not sell footwear under the said trademark in the Philippines nor does it
It should be stated that there is nothing wrong and unusual when a decision is reconsidered. have any licensing agreement with any local entity to sell its product.
This is so when the reconsideration is made by a division composed of the same justices
who rendered the decision but much more so when the reconsideration is made by a Evidence show that earlier, even before the World War II, Bata shoes made by Gerbec and
different set of justices as happened in this case. Obviously, the new set of justices would Hrdina (Czech company) were already sold in the country. Some shoes made by the
have a fresh perspective unencumbered by the views expressed in the decision sought to petitioner may have been sold in the Philippines ntil 1948. On the other hand, respondent
be reconsidered. Nor should it be a cause for wonder why Justices Gutierrez, Agrava and spent money and effort to popularize the trademark "BATA" since the 70's. Moreover, it also
Nocon had replaced the original justices. Justice Cortez resigned to become a candidate for secures 3 copyright registrations for the word "BATA". The Philippine Patent Office (PPO)
the governorship of Cagayan (he was elected), while Justices Serrano and Jimenez retired dismissed the opposition by the petitioner while the Court of Appeals (CA) reversed said
upon reaching the age of 65. decision. However, a 2nd resolution by the CA affirmed the PPO decision.
On the merits, the extended resolution penned by Justice Gutierrez does not have to be Issue: Does the petitioner have the right to protect its goodwill alleged to be threatened with
fortified by Us. We agree with Mr. Justice Gutierrez when he says: the registration of the mark?
We are satisfied from the evidence that any slight goodwill generated by the Held: NO. Bata Industries has no Philippine goodwill that would be damaged by the
Czechoslovakian product during the Commonwealth years was completely abandoned and registration of the mark.
lost in the more than 35 years that have passed since the liberation of Manila from the Any slight goodwill obtained by the product before World War II was completely abandoned
Japanese troops. and lost in the more than 35 years that passed since Manila's liberation from Japan. The
petitioner never used the trademark either before or after the war. It is also not the
The applicant-appellee has reproduced excerpts from the testimonies of the opposer- successor-in-interest of Gerbec & Hrdina and there there was no privity of interest between
appellant's witnesses to prove that the opposer-appellant was never a user of the trademark them, Furthermore, the Czech trademark has long been abandoned in Czechoslovakia.
BATA either before or after the war, that the appellant is not the successor-in-interest of
Gerbec and Hrdina who were not is representatives or agents, and could not have passed
any rights to the appellant, that there was no privity of interest between the Mirpuri v. Court of Appeals, 318 SCRA 516 (1999)
Czechoslovakian owner and the Canadian appellant and that the Czechoslovakian
trademark has been abandoned in Czechoslovakia. Doctrines:
We agree with the applicant-appellee that more than substantial evidence supports the FUNCTION OF A TRADEMARK
findings and conclusions of the Director of Patents. The appellant has no Philippine goodwill
that would be damaged by the registration of the mark in the appellee's favor. We agree with 1. point out distinctly the origin or ownership of the goods to which it is affixed;
the decision of the Director of Patents which sustains, on the basis of clear and convincing 2. to secure to him, who has been instrumental in bringing into the market a superior
evidence, the right of the appellee to the registration and protection of its industrial property, article of merchandise, the fruit of his industry and skill;
the BATA trademark. 3. to assure the public that they are procuring the genuine article; to prevent fraud
and imposition; and
WHEREFORE, the motion for reconsideration is hereby denied for lack of merit. No special 4. to protect the manufacturer against substitution and sale of an inferior and different
pronouncement as to costs. article as his product.
BATA INDUSTRIES V CA DIGEST Modern authorities on trademark law view trademarks as performing three distinct functions:
(1) they indicate origin or ownership of the articles to which they are attached;
G.R. No. L-53672, May 31, 1982 (2) they guarantee that those articles come up to a certain standard of quality; and
(3) they advertise the articles they symbolize.
Facts:
The respondent New Olympian Rubber Products sought to register the mark "BATA" for The essential requirement under Article 6bis is that the trademark to be protected
casual rubber shoe products, alleging it had used the said mark since the 1970s. The must be "well-known" in the country where protection is sought. The power to
petitioner, a Canadian corporation opposed with its allegations that it owns and has not determine whether a trademark is well-known lies in the "competent authority of the country
of registration or use." This competent authority would be either the registering authority if it SECTION 137. Registration of Mark and Issuance of a Certificate to the Owner or his
has the power to decide this, or the courts of the country in question if the issue comes Assignee.
before a court. 137.1. The Office shall maintain a Register in which shall be registered marks, numbered in
the order of their registration, and all transactions in respect of each mark, required to be
FACTS recorded by virtue of this law.
Lolita Escobar applied with the Bureau of Patents for the registration of the trademark 137.2. The registration of a mark shall include a reproduction of the mark and shall mention:
Barbizon, alleging that she had been manufacturing and selling these products since its number; the name and address of the registered owner and, if the registered owner's
1970. private respondent Barbizon Corp opposed the application in IPC No. 686. The address is outside the country, his address for service within the country; the dates of
Bureau granted the application and a certificate of registration was issued for the trademark application and registration; if priority is claimed, an indication of this fact, and the number,
Barbizon. Escobar later assigned all her rights and interest over the trademark to petitioner date and country of the application, basis of the priority claims; the list of goods or services
Mirpuri. In 1979, Escobar failed to file with the Bureau the Affidavit of Use of the trademark. in respect of which registration has been granted, with the indication of the corresponding
class or classes; and such other data as the Regulations may prescribe from time to time.
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. 137.3. A certificate of registration of a mark may be issued to the assignee of the applicant:
2049, claiming that it adopted said trademark in 1933 and has been using it. It obtained a Provided, That the assignment is recorded in the Office. In case of a change of ownership,
certificate from the US Patent Office in 1934. Then in 1991, DTI cancelled petitioners the Office shall at the written request signed by the owner, or his representative, or by the
registration and declared private respondent the owner and prior user of the business name new owner, or his representative and upon a proper showing and the payment of the
Barbizon International. prescribed fee, issue to such assignee a new certificate of registration of the said mark in
the name of such assignee, and for the unexpired part of the original period.
ISSUE
137.4. The Office shall record any change of address, or address for service, which shall be
Whether the treaty (Paris Convention) affords protection to a foreign corporation against a notified to it by the registered owner.
Philippine applicant for the registration of a similar trademark.
137.5. In the absence of any provision to the contrary in this Act, communications to be
made to the registered owner by virtue of this Act shall be sent to him at his last recorded
HELD address and, at the same, at his last recorded address for service. (Sec. 19, R.A. No. 166a)
The Court held in the affirmative. RA 8293 defines trademark as any visible sign capable of SECTION 138. Certificates of Registration. A certificate of registration of a mark shall
distinguishing goods. The Paris Convention is a multilateral treaty that seeks to protect be prima facie evidence of the validity of the registration, the registrant's ownership of the
industrial property consisting of patents, utility models, industrial designs, trademarks, mark, and of the registrant's exclusive right to use the same in connection with the goods or
service marks, trade names and indications of source or appellations of origin, and at the services and those that are related thereto specified in the certificate.
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 SECTION 139. Publication of Registered Marks; Inspection of Register.
citizens. Nationals of the various member nations are thus assured of a certain minimum of 139.1. The Office shall publish, in the form and within the period fixed by the Regulations,
international protection of their industrial property. the marks registered, in the order of their registration, reproducing all the particulars referred
to in Subsection 137.2.
6. Issuance and Publication of Certificate 139.2. Marks registered at the Office may be inspected free of charge and any person may
obtain copies thereof at his own expense. This provision shall also be applicable to
SECTION 136. Issuance and Publication of Certificate. When the period for filing the transactions recorded in respect of any registered mark.
opposition has expired, or when the Director of Legal Affairs shall have denied the
opposition, the Office upon payment of the required fee, shall issue the certificate of SECTION 144. Classification of Goods and Services.
registration. Upon issuance of a certificate of registration, notice thereof making reference to 144.1. Each registration, and any publication of the Office which concerns an application or
the publication of the application shall be published in the IPO Gazette. registration effected by the Office shall indicate the goods or services by their names,
grouped according to the classes of the Nice Classification, and each group shall be
preceded by the number of the class of that Classification to which that group of goods or SECTION 143. Correction of Mistakes Made by Applicant. Whenever a mistake is
services belongs, presented in the order of the classes of the said Classification. made in a registration and such mistake occurred in good faith through the fault of the
applicant, the Office may issue a certificate upon the payment of the prescribed fee:
144.2. Goods or services may not be considered as being similar or dissimilar to each other Provided, That the correction does not involve any change in the registration that requires
on the ground that, in any registration or publication by the Office, they appear in different republication of the mark.
classes of the Nice Classification.
10. Renewal
4.2. The term "technology transfer arrangements" refers to contracts or agreements SECTION 146. Renewal.
involving the transfer of systematic knowledge for the manufacture of a product, the 146.1. A certificate of registration may be renewed for periods of ten (10) years at its
application of a process, or rendering of a service including management contracts; and the expiration upon payment of the prescribed fee and upon filing of a request. The request
transfer, assignment or licensing of all forms of intellectual property rights, including shall contain the following indications:
licensing of computer software except computer software developed for mass market. a. An indication that renewal is sought; aisadc
b. The name and address of the registrant or his successor-in-interest, hereafter referred to
7. Duration of Certificate as the "right holder";
c. The registration number of the registration concerned;
SECTION 145. Duration. A certificate of registration shall remain in force for ten (10) d. The filing date of the application which resulted in the registration concerned to be
years: Provided, That the registrant shall file a declaration of actual use and evidence to that renewed;
effect, or shall show valid reasons based on the existence of obstacles to such use, as e. Where the right holder has a representative, the name and address of that
prescribed by the Regulations, within one (1) year from the fifth anniversary of the date of representative;
the registration of the mark. Otherwise, the mark shall be removed from the Register by the f. The names of the recorded goods or services for which the renewal is requested or the
Office. names of the recorded goods or services for which the renewal is not requested, grouped
according to the classes of the Nice Classification to which that
8. Voluntary Cancellation of Certificate group of goods or services belongs and presented in the order of the classes of the said
SECTION 140. Cancellation upon Application by Registrant; Amendment or Classification; and
Disclaimer of Registration. Upon application of the registrant, the Office may permit g. A signature by the right holder or his representative.
any registration to be surrendered for cancellation, and upon cancellation the appropriate
entry shall be made in the records of the Office. Upon application of the registrant and 146.2. Such request shall be in Filipino or English and may be made at any time within six
payment of the prescribed fee, the Office for good cause may permit any registration to be (6) months before the expiration of the period for which the registration was issued or
amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not renewed, or it may be made within six (6) months after such expiration on payment of the
alter materially the character of the mark. Appropriate entry shall be made in the records of additional fee herein prescribed.
the Office upon the certificate of registration or, if said certificate is lost or destroyed, upon a
certified copy thereof. 146.3. If the Office refuses to renew the registration, it shall notify the registrant of his
refusal and the reasons therefore.
9. Correction of Mistakes
146.4. An applicant for renewal not domiciled in the Philippines shall be subject to and
SECTION 142. Correction of Mistakes Made by the Office. Whenever a material comply with the requirements of this Act.
mistake in a registration incurred through the fault of the Office is clearly disclosed by the
records of the Office, a certificate stating the fact and nature of such mistake shall be issued The Madrid Protocol /International registration
without charge, recorded and a printed copy thereof shall be attached to each printed copy
of the registration. Such corrected registration shall thereafter have the same effect as the Rights Conferred
original certificate; or in the discretion of the Director of the Administrative, Financial and
Human Resource Development Service Bureau a new certificate of registration may be
issued without charge. All certificates of correction heretofore issued in accordance with the Sec. 147 (and its sub-paragraphs), IPC as amended by RA No. 9502 (Universally
Regulations and the registration to which they are attached shall have the same force and Accessible Cheaper and Quality Medicines Act of 2008)
effect as if such certificates and their issuance had been authorized by this Act. (n)
SECTION 147. Rights Conferred.
147.1. The owner of a registered mark shall have the exclusive right to prevent all third 87.10.Those which require payments for patents and other industrial property rights after
parties not having the owner's consent from using in the course of trade identical or similar their expiration, termination arrangement;
signs or containers for goods or services which are identical or similar to those in respect of 87.11.Those which require that the technology recipient shall not contest the validity of any
which the trademark is registered where such use would result in a likelihood of confusion. of the patents of the technology supplier;
In case of the use of an identical sign for identical goods or services, a likelihood of 87.12.Those which restrict the research and development activities of the licensee designed
confusion shall be presumed. to absorb and adapt the transferred technology to local conditions or to initiate research and
development programs in connection with new products, processes or equipment;
147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) 87.13.Those which prevent the licensee from adapting the imported technology to local
which is registered in the Philippines, shall extend to goods and services which are not conditions, or introducing innovation to it, as long as it does not impair the quality standards
similar to those in respect of which the mark is registered: Provided, That use of that mark in prescribed by the licensor;
relation to those goods or services would indicate a connection between those goods or 87.14.Those which exempt the licensor for liability for non-fulfilment of his responsibilities
services and the owner of the registered mark: Provided further, That the interests of the under the technology transfer arrangement and/or liability arising from third party suits
owner of the registered mark are likely to be damaged by such use. brought about by the use of the licensed product or the licensed technology; and
87.15.Other clauses with equivalent effects. (Sec. 33-C (2), RA 165a)
SECTION 148. Use of Indications by Third Parties for Purposes Other than those for
which the Mark is Used. Registration of the mark shall not confer on the registered SECTION 88. Mandatory Provisions. The following provisions shall be included in
owner the right to preclude third parties from using bona fide their names, addresses, voluntary license contracts:
pseudonyms, a geographical name, or exact indications concerning the kind, quality, 88.1. That the laws of the Philippines shall govern the interpretation of the same and in the
quantity, destination, value, place of origin, or time of production or of supply, of their goods event of litigation, the venue shall be the proper court in the place where the licensee has its
or services: Provided, That such use is confined to the purposes of mere identification or principal office;
information and cannot mislead the public as to the source of the goods or services. 88.2. Continued access to improvements in techniques and processes related to the
technology shall be made available during the period of the technology transfer
arrangement;
Section 4.2 in relation to Sections 87 and 88, 92, IPC 88.3. In the event the technology transfer arrangement shall provide for arbitration, the
Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of
SECTION 87. Prohibited Clauses. Except in cases under Section 91, the following the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of
provisions shall be deemed prima facie to have an adverse effect on competition and trade: Conciliation and Arbitration of the International Chamber of Commerce (ICC) shall apply and
87.1. Those which impose upon the licensee the obligation to acquire from a specific source the venue of arbitration shall be the Philippines or any neutral country; and
capital goods, intermediate products, raw materials, and other technologies, or of 88.4. The Philippine taxes on all payments relating to the technology transfer arrangement
permanently employing personnel indicated by the licensor; shall be borne by the licensor.
87.2. Those pursuant to which the licensor reserves the right to fix the sale or resale prices
of the products manufactured on the basis of the license; SECTION 92. Non-Registration with the Documentation, Information and Technology
87.3. Those that contain restrictions regarding the volume and structure of production; Transfer Bureau. Technology transfer arrangements that conform with the provisions of
87.4. Those that prohibit the use of competitive technologies in a non-exclusive technology Sections 86 and 87 need not be registered with the Documentation, Information and
transfer agreement; Technology Transfer Bureau. Non-conformance with any of the provisions of Sections 87
87.5. Those that establish a full or partial purchase option in favor of the licensor; and 88, however, shall automatically render the technology transfer arrangement
87.6. Those that obligate the licensee to transfer for free to the licensor the inventions or unenforceable, unless said technology transfer arrangement is approved and registered
improvements that may be obtained through the use of the licensed technology; with the Documentation, Information and Technology Transfer Bureau under the provisions
87.7. Those that require payment of royalties to the owners of patents for patents which are of Section 91 on exceptional cases.
not used;
87.8. Those that prohibit the licensee to export the licensed product unless justified for the SECTION 149. Assignment and Transfer of Application and Registration.
protection of the legitimate interest of the licensor such as exports to countries where 149.1. An application for registration of a mark, or its registration, may be assigned or
exclusive licenses to manufacture and/or distribute the licensed product(s) have already transferred with or without the transfer of the business using the mark. (n)
been granted; 149.2. Such assignment or transfer shall, however, be null and void if it is liable to mislead
87.9. Those which restrict the use of the technology supplied after the expiration of the the public, particularly as regards the nature, source, manufacturing process,
technology transfer arrangement, except in cases of early termination of the technology characteristics, or suitability for their purpose, of the goods or services to which the mark is
transfer arrangement due to reason(s) attributable to the licensee; applied.
149.3. The assignment of the application for registration of a mark, or of its registration, shall
be in writing and require the signatures of the contracting parties. Transfers by mergers or In accordance with the requirements of law, the undersigned declares that this trademark
other forms of succession may be made by any document supporting such transfer.
149.4. Assignments and transfers of registrations of marks shall be recorded at the Office on 1. Was first used by him on June 10, 1957.
payment of the prescribed fee; assignment and transfers of applications for registration
shall, on payment of the same fee, be provisionally recorded, and the mark, when 2. Was first used by him in commerce in or with the Philippines on June 10, 1957.
registered, shall be in the name of the assignee or transferee.
149.5. Assignments and transfers shall have no effect against third parties until they are 3. Has been continuously used by him in trade in or with the Philippines for more than one
recorded at the Office. year.
SECTION 150. License Contracts. 4. Is, on the date of this application, actually used by him on the following goods, classified
150.1. Any license contract concerning the registration of a mark, or an application therefor, according to the Official Classification of Goods (Rule 82):
shall provide for effective control by the licensor of the quality of the goods or services of the
licensee in connection with which the mark is used. If the license contract does not provide Class 51 Soap
for such quality control, or if such quality control is not effectively carried out, the license
contract shall not be valid. 5. Is applied to the goods or to the packages containing the same, by placing thereon a
printed label on which the trademark is shown, or by directly impressing the mark to the
150.2. A license contract shall be submitted to the Office which shall keep its contents goods.
confidential but shall record it and publish a reference thereto. A license contract shall have
no effect against third parties until such recording is effected. The Regulations shall fix the The corresponding declaration, which was under oath, contained, among others, the
procedure for the recording of the license contract. following:
SECTION 231. Reverse Reciprocity of Foreign Laws. Any condition, restriction, 3. That he believes himself to be the lawful owner of the trademark sought to be registered.
limitation, diminution, requirement, penalty or any similar burden imposed by the law of a
foreign country on a Philippine national seeking protection of intellectual property rights in 4. That the said trademark is in actual use in commerce in or with the Philippines not less
that country, shall reciprocally be enforceable upon nationals of said country, within than two months before this application is filed.
Philippine jurisdiction.
5. That no other person, partnership, corporation, or association, to the best of his
What if goods are non-competing? knowledge and belief, has the right to use said trademark in the Philippines, either in the
identical form or in any such near resemblance thereto as might be calculated to deceive.
Ang Tibay v. Teodoro, 74 Phil 50
Under date of July 6, 1959, an Examiner of the Department of Commerce and Industry,
G.R. No. L-18337 January 30, 1965 submitted a report recommending the allowance of the application, which report was
approved by the Supervising TM Examiner. After the Notice of allowance was published in
CHUA CHE vs. PHILIPPINES PATENT OFFICE and SY TUO the Official Gazette, as required, respondent Sy Tuo presented a "Notice of Opposition,"
dated October 15, 1959, anchoring said opposition on the following allegations:
This is a petition to review the decision of the Director of Patents, in Inter Partes Case No.
161, denying the application of petitioner Chua Che for the registration of "T.M. X-7" for use 1. The registration of the trademark "X-7" as applied for by CHUA CHE will not only violate
on soap Class 51, being manufactured by said Chua Che, upon the opposition of the rights and interests of the Oppositor over his registered trademark "X-7" covered by
respondent Sy Tuo. Certificate of Registration No. 5,000, issued April 21, 1951, but will also tend to mislead the
purchasing public and make it convenient for unscrupulous dealers to pass off the goods of
Under date of October 30, 1958, Chua Che presented with the Philippines Patent Office a the applicant CHUA CHE, for those of the oppositor SY TUO, to the injury of both the
petition praying for the registration in his favor the trade name "X-7". The petition, states: oppositor and the public.
The undersigned CHUA CHE, a citizen of China, a resident of 2804 Limay St., Tondo, 2. The registration of the said trademark "X-7" in the name of CHUA CHE will be in violation
Manila, and doing business at same address, has adopted and used the trademark "X-7" of, and will run counter to, Section 4 (d) of Republic Act No. 166, as amended, because it is
shown in the accompanying Drawing.
confusingly similar to the trademark "X-7" covered by Registration No. 5,000 previously
registered to, and being used by the oppositor and is not abandoned. The Director of Patents rendered judgment on January 18, 1961, the pertinent portions of
which read:
The Oppositor SY TUO, doing business as the Western Cosmetic Laboratory will rely on the
following facts: Based on those facts there is no question that opposer's first use of the trademark X-7 on
July 31, 1953, is prior to applicant's first use of the mark on June 10, 1957. The only
(a) Oppositor has prior use of the trademark "X-7" as he has been using it extensively and question then in this case is whether or not purchasers of X-7 perfume, lipstick and nail
continuously since July 31, 1952, while the applicant, Chua Che, allegedly used his polish would likely upon seeing X-7 laundry soap, attribute common origin to the products or
trademark only since June 10, 1957.1wph1.t assume that there existed some kind of trade connection between applicant and opposer.
(b) Oppositor's mark "X-7" is distinctive and his invented mark and not merely an ordinary, Opposer's record shows that he has been using since July 31, 1953 the trademark X-7 on
common and weak mark. perfume, lipstick and nail polish; that he has spent substantial amounts of money in building
upon the goodwill of this trademark through advertisements in all kinds of media through
(c) The oppositor and the applicant use the trademark "X-7" for allied and closely related newspapers of general circulation, by means of billboards in various places in the
products. Philippines, and also over the radio and television. In these advertisements opposer has
spent about P120,000.00. There is no question that opposer enjoys a valuable goodwill in
(d) The oppositor has spent a huge amount by way of advertising and advertising his "X-7" the trademark X-7.
brand.
The products of the parties, while specifically different, are products intended for use in the
(e) The oppositor has spent a big amount in expanding his business for the manufacture of home and usually have common purchasers. Furthermore, the use of X-7 for laundry soap
toilet soap and crystal laundry soap with his already popular "X-7" brand. is but a natural expansion of business of the opposer. In fact, herein opposer in 1956, prior
to the alleged date of first use by respondent-applicant of the trademark X-7 for laundry
(f) The trademark applied for by the applicant Chua Che consists of the trademark "X-7" and soap on June 10, 1957, had made steps in expanding the use of this trademark to
anyone is likely to be misled as to the source or origin by the close resemblance or identity granulated soap. Under these circumstances, it is concluded that the average purchasers
with the trademark "X-7" of the oppositor. are likely to associate X-7 laundry soap with X-7 perfume, lipstick and nail polish or to think
that the products have common origin or sponsorship.
Attached to the Opposition were labels (samples) being used by oppositor on his products,
which clearly show "X-7". IN VIEW OF THE ABOVE FINDINGS, the opposition in this case should be as it is hereby
sustained and consequently Application Serial No. 6941, of Chua Che, is also hereby
Petitioner herein presented an Answer to Notice of Opposition, claiming among others that rejected.
the grounds of opposition are not correct, since although it is admitted that "X-7" is
registered in the name of oppositor, said trademark is not being used on soap, but purely OPPOSITION SUSTAINED
toilet articles. After the presentation of the Answer the case was heard, wherein the parties
presented their respective evidence, both testimonial and documentary. In the memoranda The above judgment is now before Us, applicant-appellant claiming that it was error for the
of the contenders, they limited the principal issues, thus Director to conclude that opposer SY TUO had priority to use the trademark in question, and
that the use by appellant of the trademark "X-7" on granulated soap to be manufactured and
Oppositor SY TUO sold by him, would likely mislead purchasers.
The registration of the trademark "X-7" in the name of applicant CHUA CHE will likely At the very outset, we would like to state that in cases of the nature of the one at bar, only
mislead the public so as to make them believe that said goods are manufactured or questions of law should be raised, and the only exception to this rule, meaning that findings
sponsored by or in some way in trade associated with opposer. of facts may be reviewed, is when such findings are not supported by substantial evidence
(Sec. 2, Rule 44, Revised Rules). The finding of the Director of Patents Office to the effect
Applicant CHUA CHE that opposer-appellee Sy Tuo had priority of use and adoption of the trademark "X-7", is for
all intents and purposes, one of fact. This being the case, such finding becomes conclusive
In Inter Partes proceedings, the principal issue is "priority of adoption and use." Since to this Court. Even on this sole issue alone, the petition for review must fall.
opposer has not yet used "X-7" mark on soap, but will still use it, applicant should be entitled
to the registration of the same.
However, there are other matters which must be clarified. For instance, the fact that Facts:
appellee has not yet used the trademark "X-7" on granulated soap, the product on which On October 30, 1958, Chua Che filed a petition with the Phil. Patent Office praying
appellant wants to use the said trademark. The circumstance of non-actual use of the mark for the registration of the trade name of X-7[wanted to use it for a soap]. The following are
on granulated soap by appellee, does not detract from the fact that he has already a right to the pertinent portions of the petition:
such a trademark and should, therefore, be protected. The observation of the Director of o He is a Chinese citizen, resident of 2804 Limay St., Tondo, doing business at the
Patents to the effect that "the average purchasers are likely to associate X-7 laundry soap same address, and has adopted and used the trademark X-7(accompanied by a drawing
with X-7 perfume, lipstick and nail polish or to think that the products have common origin or in the petition, but it was not described in the case).
sponsorship," is indeed well taken. It has been pointed out by appellant that the product o He first used the TM on June 10, 1957, in commerce in or with the Philippines.
upon which the trademark X-7 will be used (laundry soap) is different from those of o He has been continuously using it in trade for more than one year, and applied it to
appellee's, and therefore no infringement and/or confusion may result. We find no merit in the goods by directly impressing the mark, or to packages containing the same by placing
the above contention, for it has been held that while it is no longer necessary to establish thereon a printed label.
that the goods of the parties possess the same descriptive properties, as previously o The TM is classified according to Rule 82 of the Official Classification of Goods as
required under the Trade Mark Act of 1905, registration of a trademark should be refused in CLASS 51 SOAP.
cases where there is a likelihood of confusion, mistake, or deception, even though the o He believes that he is the lawful owner of the TM.
goods fall into different categories. (Application of Sylvan Sweets Co., 205 F. 2nd, 207.) The o That the said trademark is in actual use in commerce not less than two months
products of appellee are common household items nowadays, in the same manner as before the application is filed.
laundry soap. The likelihood of purchasers to associate those products to a common origin o No other person, partnership, corporation, or association, to the best of his
is not far-fetched. Both from the standpoint of priority of use and for the protection of the knowledge and belief, has the right to use said trademark in the Philippines, either in the
buying public and, of course, appellee's rights to the trademark "X-7", it becomes manifest identical form or in any such near resemblance thereto as might be calculated to deceive.
that the registration of said trademark in favor of applicant-appellant should be denied. An examiner of the Department of Commerce and Industry recommended the
allowance of the application, and was approved [preliminarily] by the Supervising TM
PREMISES CONSIDERED, the decision sought to be reviewed should be, as it is hereby Examiner.
affirmed in all respects, with costs against appellant CHUA CHE in both instances. After this, the notice of allowance was published in the Official Gazette.
Respondent SyTuo saw such notice, and filed an opposition to the allowance of
Chua Ches application. The following are the pertinent portions of the opposition.
CHUA CHE vs. PHILIPPINE PATENT OFFICE o Chua Ches registration will violate the rights and interests of SyTuo over his
G.R. No. L-18337 | January 30, 1965 | Paredes, J. registered trademark X-7 covered by Certificate of Reg. No. 5000 issued on April 21, 1951.
o Such registration will also tend to mislead the purchasing public and make it
Petitioner: Chua Che convenient for unscrupulous dealers to pass off the goods of Chua Che as that of SyTuos.
Respondents: Philippine Patent Office, SyTuo o Such registration will be in violation of Sec. 4(d) of R.A. No. 166 because it is
confusingly similar to the trademark X-7 being used by SyTuo. SyTuo has not abandoned
Summary: the TM yet.
Chua Che wanted to register the trademark X-7 for use on his laundry soap products. SyTuo, doing business as the Western Cosmetic Laboratory, relies on the following
SyTuo opposed the registration because he alleged that he used such trademark first, has grounds:
already registered it and already spent heavily on advertising the mark. SyTuo uses it on o He has prior use of the TM X-7. He has been using it extensively and
perfumes, lipstick, and nail polish, and is now planning to produce granulated soap using continuously since July 31, 1952, while Chua Che allegedly used his TM only since June 10,
the same mark. Chua Che argued that his registration should be granted because laundry 1957.
soap is different from perfumes, lipstick, and nail polish. The Director of Patents ruled for o The X-7 mark, invented by SyTuo, is distinctive, and not merely an ordinary,
SyTuo because even though the products are specifically different, they nevertheless have common, and weak mark.
common purchasers, hence, confusion might arise. The Supreme Court agreed with the o SyTuo and Chua Che use the TM X-7 for allied and closely related products.
Driector of Patents, and said that while it is no longer necessary to establish that the goods o SyTuo already spent a huge amount for advertising it, and has spent a big amount
of the parties possess the same descriptive properties, registration of a trademark should be in expanding his business for the manufacture of toilet soap and crystal laundry soap with
refused in cases where there is a likelihood of confusion, mistake, or deception, even his already popular X-7 brand (CAUTION: X-7 is not yet being used on soap at this point.
though the goods fall into different categories.The products of SyTuo are common You will see later that it is being used on other articles. He only plans to use it on soap as
household items now-a-days, in the same manner as laundry soap. Registration should be well because X-7 is already popular).
denied. o Anyone is likely to be misled as to the source of origin by the close resemblance or
identity of both marks.
Chua Che countered, and claimed that the grounds of SyTuo are not correct, since IMPT: MAIN DOCTRINE - While it is no longer necessary to establish that the
although it is admitted that "X-7" is registered in the name of oppositor, said trademark is not goods of the parties possess the same descriptive properties, as previously required under
being used on soap, but purely toilet articles. the Trade Mark Act of 1905, registration of a trademark should be refused in cases where
The Director of Patents ruled in favor of SyTuo and rejected the application of there is a likelihood of confusion, mistake, or deception, even though the goods fall into
Chua Che. The following are the pertinent portions of his decision: different categories.
o There is not question that SyTuo first used the trademark on July 13, 1953, o The products of SyTuo are common household items now-a-days, in the same
compared to Chua Ches first use on June 10, 1957. The only question in this case is WON manner as laundry soap.
purchasers of X-7 perfume, lipstick, and nail polish would likely upon seeing X-7 laundry o The likelihood of purchasers to associate these products to a common origin is not
soap, attribute common origin to the products/assume that there is some kind of trade far-fetched.
connection between them. (Note: So ngayonlang to pinakita. SyTuo uses X-7 for perfumes, o Both from the standpoint of priority of use and for the protection of the buying
lipstick, and nail polish, while Chua Che uses it for Laundry Soap). public and, of course, appellees rights to the trademark "X-7", it becomes manifest that the
o SyTuo spent heavily on advertisement for the promotion of the mark. In these registration of said trademark in favor of Chua Che should be denied.
advertisements, SyTuo enjoys a valuable goodwill in the TM.
o The products of the parties, while specifically different, are products intended for
use in the home and usually have common purchasers. G.R. No. L-23023 August 31, 1968
o Furthermore, the use of X-7 for laundry soap is but a natural expansion of business
of SyTuo. JOSE P. STA. ANA vs. FLORENTINO MALIWAT and TIBURCIO S. EVALLE, in his
In fact, SyTuo, in 1956, prior to the alleged date of first use by Chua Che, had capacity as Director of Patents
made steps in expanding the use of this trademark to granulated soap.
Under these circumstances, it is concluded that the average purchasers are likely Petition for review of the decision of the respondent Director of Patents in an interference
to associate X-7 laundry soap with X-7 perfume, lipstick and nail polish or to think that the proceeding1 (Inter Partes Case No. 291), finding for the senior party applicant, Florentino
products have common origin of sponsorship. Maliwat, the herein private respondent, and against the junior party applicant2 Jose P. Sta.
Hence, this petition. Ana, the herein petitioner.
Issue/Held On 21 June 1962, Florentino Maliwat filed with the Patent Office an application for
Whether or not the use of X-7 by Chua Che would likely mislead purchasers registration of the trademark FLORMANN, which is used on shirts, pants, jackets and shoes
YES. for ladies, men, and children, claiming first use in commerce of the said mark on 15 January
1962. The claim of first use was subsequently amended to 6 July 1955.
Dispositive Portion:
PREMISES CONSIDERED, the decision sought to be reviewed should be, as it is hereby On 18 September 1962, Jose P. Sta. Ana filed an application for the registration of the
affirmed in all respects, with costs against appellant CHUA CHE in both instances.So tradename FLORMEN SHOE MANUFACTURERS (SHOE MANUFACTURERS
Ordered. disclaimed),3 which is used in the business of manufacturing ladies' and children's shoes.
His claim of first use in commerce of the said tradename is 8 April 1959.
Ratio
Preliminary: The finding of the Director of Patents to the effect that opposer- In view of the admittedly confusing similarity between the trademark FLORMANN and the
appellee SyTuo had priority of use and adoption of the trademark "X-7", is for all intents and tradename FLORMEN, the Director of Patents declared an interference. After trial, the
purposes, one of fact. This being the case, such finding becomes conclusive to this Court respondent Director gave due course to Maliwat's application and denied that of Sta. Ana.
Note that in this case, SyTuo has not yet used the trademark X-7 on soap. The The latter, not satisfied with the decision, appealed to this Court.
circumstance of non-actual use of the mark "X-7" on granulated soap by SyTuo,does not
detract from the fact that he has already a right to such a trademark and should, therefore, The petitioner assigned the following errors:
be protected.
The observation of the Director of Patents to the effect that "the average I. The Director of Patents erred in not finding that respondent (senior party-applicant) failed
purchasers are likely to associate X-7 laundry soap with X-7 perfume, lipstick and nail polish to establish by clear and convincing evidence earlier date of use of his mark FLORMANN
or to think that the products have common origin or sponsorship," is indeed well taken. than that alleged in his application for registration, hence, respondent is not entitled to carry
o The contention of Chua Che that the product upon which X-7 will be used (laundry back the date of first use to a prior date.
soap) is different from that of SyTuos does not hold water.
II. The Director erred in holding that respondent is the prior adopter and user of his mark Sec. 2. Judicial admissions. Admission made by the parties in the pleadings, or in the
and in concluding that this is strengthened with documentary evidence that respondent has course of the trial or other proceedings do not require proof and can not be contradicted
been using his mark since 1953 as tailor and haberdasher. unless previously shown to have been made through palpable mistake." (Rule 129, Revised
Rules of Court).
III. The Director of Patents erred in not finding false and fabricated respondent's testimonial
and documentary evidence and Director should have applied the rule "Falsus in uno, falsus Since the aforequoted stipulation of facts has not been shown to have been made through
in omnibus" and should have disregarded them. palpable mistake, it is vain for the petitioner to allege that the evidence for respondent
Maliwat is false, fabricated, inconsistent, indefinite, contradictory, unclear, unconvincing, and
IV. The Director of Patents erred in declaring that Maliwat has the prior right to the use of his unsubstantial.
trademark on shoes and such right may be carried back to the year 1953 when respondent
started his tailoring and haberdashery business and in holding that the manufacture of The rule on judicial admissions was not found or provided for in the old Rules but can be
shoes is within the scope of natural expansion of the business of a tailor and haberdasher. culled from rulings laid down by this Court previous to its revision (Irlanda v. Pitargue, 22
Phil. 383; 5 Moran 57-59, 1963 Ed.). It was the law, then and now, being an application of
V. The Director of Patents erred in failing to apply the stricture that parties should confine the law on estoppel.
use of their respective marks to their corresponding fields of business, and should have
allowed the concurrent use of tradename FLORMEN SHOE MANUFACTURERS and the To be true, petitioner Sta. Ana, through counsel, filed with this Court, on 24 December 1964,
trademark FLORMANN provided it is not used on shoes. a motion entitled "MOTION TO ORDER STENOGRAPHER TO PRODUCE
STENOGRAPHIC NOTES AND TO CORRECT TRANSCRIPT OF STENOGRAPHIC
The findings of the Director that Maliwat was the prior adopter and user of the mark can not NOTES; TO ALLOW PETITIONER TO WITHDRAW FROM STIPULATION OF FACTS AND
be contradicted, since his findings were based on facts stipulated in the course of the trial in BE ALLOWED TO PRESENT ADDITIONAL EVIDENCE; AND TO SUSPEND PERIOD FOR
the interference proceedings. The recorded stipulation is as follows: FILING PETITIONER'S BRIEF." The reason given was that "counsel for Mr. Jose P. Sta.
Ana does not recall making any stipulation or agreement of facts with the counsel of Mr.
ATTY. FRANCISCO: Your Honor please, with the mutual understanding of the counsel for Florentino Maliwat on 9 August 1963." Opposition thereto was filed by Maliwat, asserting
the Junior Party and the counsel for the Senior Party in their desire to shorten the that the stenographer took down notes on those things which were stated and uttered by the
proceedings of this case, especially on matters that are admitted and not controverted by parties; that movant should have moved for reconsideration in the Patent Office, instead of
both parties, they have agreed and admitted that Mr. Jose P. Sta. Ana, the Junior Party here in the Supreme Court, which is both untimely and unhonorable.
Applicant in this case, is engaged solely in the manufacture of shoes under the firm name
FLORMEN SHOE MANUFACTURERS since April 1959; that the name FLORMEN SHOE Upon requirement by this Court, stenographer Cleofe Rosales commented on petitioner's
MANUFACTURERS is registered with the Bureau of Commerce on April 8, 1959, as shown motion that what she had taken down were actually uttered by counsel for Sta. Ana, no
by Exhibits "A" and "A-2". That Mr. Florentino Maliwat has been engaged in the manufacture more, no less; that it was practically and highly impossible for her to have intercalated into
and sale of menswear shirts, polo shirts, and pants, since 1953, using FLORMANN as its the records the questioned stipulation of facts because of the length of counsel's
trademark. That Mr. Florentino Maliwat began using the trademark FLORMANN on shoes manifestations and the different subject matters of his statements, aside from the
on January 1962 and the firm name FLORMANN SHOES under which these shoes with the concurrence of Maliwat's counsel and the reservation on the resolution made by the hearing
trademark FLORMANN were manufactured and sold was first used on January 1962, officer; and that despite her length of service, since 1958, as stenographic reporter, there
having also been registered with the Bureau of Commerce on January 1962 and with other had been no complaint against her, except this one.
departments of the government, like the Bureau of Labor, the Social Security System and
the Workmen's Compensation in 1962. Counsel for Sta. Ana replied to the foregoing comments, alleging, among others, that after
his receipt of the decision, after 5 May 1964, he bought the transcript and requested the
ATTY. MARAVILLA: On behalf of the Senior Party Applicant, represented by this humble stenographer to verify the contents of pages 33 and 34 of her transcript but, despite several
representation, I respectfully concur and admit all those stipulations above mentioned. requests, and for a period of seven (7) months, for her to produce the stenographic notes,
she has failed to produce said notes.
HEARING OFFICER: The court reserves the resolution on those stipulations. We can
proceed now with the redirect examination. (T.s.n., 9 August 1963, pp. 33-34). On 2 April 1965, stenographer Rosales sent to the clerk of this Court the transcript of
stenographic notes.
And the Rules of Court provide:1wph1.t
This Court, on 2 February 1965, denied, for being late the motion to present additional pancake flour is from syrup or sugar cream (Aunt Jemima Mills Co. vs. Rigney & Co., LRA
testimonial and documentary evidence, and, on 8 April 1965, deferred action on the 1918 C 1039), or baking powder from baking soda (Layton Pure Food Co. vs. Church & Co.,
objection to a portion of the transcript until after hearing. 182 Fed. 35), or cosmetics and toilet goods from ladies' wearing apparel and costume
jewelry (Lady Esther Ltd. vs. Lady Esther Corset Shoppe, 148 ALR 6). More specifically,
We find no substantiation of the charge that the stipulation of facts appearing on pages 33 manufacturers of men's clothing were declared entitled to protection against the use of their
to 34 of the transcript of stenographic notes taken on 9 August 1963 had been intercalated; trademark in the sale of hats and caps [Rosenberg Bros. vs. Elliott, 7 Fed. (2d) 962] and of
hence, the presumption that the stenographer regularly performed her duty stands. The ladies shoes (Forsythe & Co. vs. Forsythe Shoe Corp., 254 NYS 584). In all these cases,
integrity of the record being intact, the petitioner is bound by it. We can not overlook that the courts declared the owner of a trademark from the first named goods entitled to exclude
even if his charges were true, it was plain and inexcusable negligence on his part not to use of its trademark on the related class of goods above-referred to.
discover earlier the defect he now complains of, if any, and in not taking steps to correct it
before the records were elevated to this Court. It may be that previously the respondent drew a closer distinction among kinds of goods to
which the use of similar marks could be applied; but it can not be said that the present ruling
An application for registration is not bound by the date of first use as stated by him in his under appeal is so devoid of basis in law as to amount to grave abuse of discretion
application, but is entitled to carry back said stated date of first use to a prior date by proper warranting reversal.
evidence; but in order to show an earlier date of use, he is then under a heavy burden, and
his proof must be clear and convincing (Anchor Trading Co., Inc. vs. The Director of Republic Act No. 166, as amended, provides:
Patents, et al., L-8004, 30 May 1956; Chung Te vs. Ng Kian Giab, et al.,
L-23791, 23 November 1966). In the case at bar, the proof of date of first use (1953), earlier Sec. 4. . . . The owner of a trademark, tradename or service-mark used to distinguish his
than that alleged in respondent Maliwat's application (1962), can be no less than clear and goods, business or services from the goods, business or services of others shall have the
convincing because the fact was stipulated and no proof was needed. right to register the same on the principal register, unless it:
Petitioner would confine the respondent to the use of the mark FLORMANN to tailoring and
haberdashery only, but not on shoes, on the ground that petitioner had used the name (d) Consists of or comprises a mark or tradename which resembles a mark or tradename
FLORMEN on shoes since 1959, while the respondent used his mark on shoes only in registered in the Philippines or a mark or tradename previously used in the Philippines by
1962; but the Director ruled: another and not abandoned, as to be likely, when applied to or used in connection with the
goods, business or services of the applicant, to cause confusion or mistake or to deceive
. . . I believe that it is now the common practice among local tailors and haberdashers to purchasers;
branch out into articles of manufacture which have, one way or another, some direct
relationship with or appurtenance to garments or attire to complete one's wardrobe such as Note that the provision does not require that the articles of manufacture of the previous user
belts, shoes, handkerchiefs, and the like, . . . It goes without saying that shoes on one hand and the late user of the mark should possess the same descriptive properties or should fall
and shirts, pants and jackets on the other, have the same descriptive properties for into the same categories as to bar the latter from registering his mark in the principal
purposes of our Trademark Law. register (Chua Che vs. Phil. Patent Office, et al., L-18337, 30 Jan. 1965.4 citing Application
of Sylvan Sweets Co., 205 F. 2nd, 207).5 Therefore, whether or not shirts and shoes have
Modern law recognizes that the protection to which the owner of a trademark mark is the same descriptive properties, or whether or not it is the prevailing practice or the
entitled is not limited to guarding his goods or business from actual market competition with tendency of tailors and haberdashers to expand their business into shoes making, are not
identical or similar products of the parties, but extends to all cases in which the use by a controlling. The meat of the matter is the likelihood of confusion, mistake or deception upon
junior appropriator of a trademark or tradename is likely to lead to a confusion of source, as purchasers of the goods of the junior user of the mark and the goods manufactured by the
where prospective purchasers would be misled into thinking that the complaining party has previous user. Here, the resemblance or similarity of the mark FLORMANN and the name
extended his business into the field (see 148 ALR 56 et seq; 52 Am. Jur. 576) or is in any FLORMEN and the likelihood of confusion, one to the other, is admitted; therefore, the prior
way connected with the activities of the infringer; or when it forestalls the normal potential adopter, respondent Maliwat, has the better right to the use of the mark.
expansion of his business (v. 148 ALR, 77, 84; 52 Am. Jur. 576, 577). It is on this basis that
the respondent Director of Patents adverted to the practice "among local tailors and FOR THE FOREGOING REASONS, the appealed decision is hereby affirmed, with costs
haberdashers to branch out into articles of manufacture which have some direct against the petitioner.
relationship" . . . "to garments or attire to complete one's wardrobe". Mere dissimilarity of
goods should not preclude relief where the junior user's goods are not too different or Footnotes
remote from any that the owner would be likely to make or sell; and in the present case,
wearing apparel is not so far removed from shoes as to preclude relief, any more than the
1"An interference is a proceeding instituted for the purpose of determining the question of
priority of adoption and use of a trademark, tradename, or service-mark between two or G.R. No. L-26676 July 30, 1982
more parties claiming ownership of the same or substantially similar trademark, tradename
or service-mark." (Sec. 10-A, Republic Act No. 166, as amended). PHILIPPINE REFINING CO., INC. vs. NG SAM and THE DIRECTOR OF PATENTS
2"The party whose application or registration involved in the interference has the latest filing The sole issue raised in this petition for review of the decision of the Director of patents is
date is the junior party . . ." (Rule 184, Rev. Rules of Practice in the Philippines Patent whether or not the product of respondent, Ng Sam, which is ham, and those of petitioner
Office) consisting of lard, butter, cooking oil and soap are so related that the use of the same
trademark "CAMIA" on said goods would likely result in confusion as to their source or
"Any junior party in an interference proceeding, . . ., shall be deemed to be in the position of origin.
plaintiff, and the other parties to such proceedings, in the position of defendants, with
respect thereto . . ." (Rule 167, Ibid.). The trademark "CAMIA" was first used ill the Philippines by petitioner on its products in
1922. In 1949, petitioner caused the registration of said trademark with the Philippine Patent
3"At any time, upon application of the registrant and payment of the required fee, the Office under certificates of registration Nos. 1352-S and 1353-S, both issued on May 3,
Director may permit any registration to be surrendered, cancelled, or for good cause shown 1949. Certificate of Registration No. 1352-S covers vegetable and animal fats, particularly
to be amended, and he may permit any registered mark or tradename to be disclaimed in lard, butter and cooking oil, all classified under Class 47 (Foods and Ingredients of Food) of
whole or in part: . . ." (Sec. 14, Republic Act No. 166, as amended) . the Rules of Practice of the Patent Office, while certificate of registration No. 1353-S applies
to abrasive detergents, polishing materials and soap of all kinds (Class 4).
4Between toiletries and laundry soap.
On November 25, 1960, respondent Ng Sam, a citizen residing in Iloilo City, filed an
5Between candies and cigarettes. application with the Philippine Patent office for registration of the Identical trademark
"CAMIA" for his product, ham, which likewise falls under Class 47. Alleged date of first use
Sta.Ana v. Maliwat Digest of the trademark by respondent was on February 10, 1959.
Facts of the Case: After due publication of the application, petitioner filed an opposition, in accordance with
Section 8 of Republic Act No. 166, otherwise known as the Trademark Law, as amended.
In 1962, Florentino Maliwat sought to register the trademark "FLORMANN" used on shirts, Basis of petitioner's opposition was Section 4(d) of said law, which provides as
pants, jackets and shoes for ladies men and children. He claimed its first use in commerce unregistrable:
in 1955. Also in the same year (1962), Jose P. Sta. Ana (Petitioner) filed an application for
the registration of the trademark "FLORMEN" (used in ladies and children shoes). he a mark which consists of or comprises a mark or tradename which so resembles a mark or
claimed its first use in commerce in 1959. Due to the confusing similarity , the Director of the tradename registered in the Philippines or a mark or tradename previously used in the
Patent Office ordered an interference. Maliwat's application was then granted due to his Philippines by another and not abandoned, as to be likely, when applied to or used in
prior adoption and use while that of Sta. Ana was denied. It was stipulated by the parties connection with the goods, business services of the applicant, to cause confusion or
that 'Flormann' was used as a trademark in 1953 and Maliwat used it on shoes in 1962. mistake or to deceive purchasers.
Issue: Was there any trademark infringement committed? The parties submitted the case for decision without presenting any evidence: thereafter the
Director of patents rendered a decision allowing registration of the trademark "CAMIA" in
Ruling: YES. Both products of the parties have the same descriptive properties, thus its favor of Ng Sam.
trademark must be protected.
Petitioner moved for a reconsideration, but the same was denied.
The law does not require that the goods of the previous user and the late user of the same
mark should possess the same descriptive properties or should fall into the same categories Hence, this petition.
in order to bar the latter from registering his amrk. The meat of the matter is the likelyhood
of confusion, mistake or deception upon the purchase of the goods of the parties. Herein, A rudimentary precept in trademark protection is that "the right to a trademark is a limited
the similarity of the mark 'FLORMANN' and the name 'FLORMEN', as well as the likelihood one, in the sense that others may used the same mark on unrelated goods." 1 Thus, as
of confusion is admitted. As such, Maliwat as prior adopter has a better right to use the pronounced by the United States Supreme Court in the case of American Foundries vs.
mark. Robertson 2, "the mere fact that one person has adopted and used a trademark on his
goods does not prevent the adoption and use of the same trademark by others on articles of Emphasis should be on the similarity of the products involved and not on the arbitrary
a different description." classification or general description of their properties or characteristics.
Such restricted right over a trademark is likewise reflected in our Trademark law. Under In his decision, the Director of Patents enumerated the factors that set respondent's product
Section 4(d) of the law, registration of a trademark which so resembles another already apart from the goods of petitioner. He opined and We quote:
registered or in use should be denied, where to allow such registration could likely result in
confusion, mistake or deception to the consumers. Conversely, where no confusion is likely I have taken into account such factors as probable purchaser attitude and habits, marketing
to arise, as in this case, registration of a similar or even Identical mark may be allowed. activities, retail outlets, and commercial impression likely to be conveyed by the trademarks
if used in conjunction with the respective goods of the parties. I believe that ham on one
The term "CAMIA" is descriptive of a whole genus of garden plants with fragrant white hand, and lard, butter, oil, and soap on the other are products that would not move in the
flowers. Some people call the "CAMIA" the "white ginger plant" because of its tuberous same manner through the same channels of trade. They pertain to unrelated fields of
roots, while children refer to it as the butterfly flower because of its shape. Being a generic manufacture, might be distributed and marketed under dissimilar conditions, and are
and common term, its appropriation as a trademark, albeit in a fanciful manner in that it displayed separately even though they frequently may be sold through the same retail food
bears no relation to the product it Identifies, is valid. However, the degree of exclusiveness establishments. Opposer's products are ordinary day-to-day household items whereas ham
accorded to each user is closely restricted. 3 is not necessarily so. Thus, the goods of the parties are not of a character which purchasers
would be likely to attribute to a common origin. (p. 23, Rollo).
The records of this case disclose that the term "CAMIA" has been registered as a trademark
not only by petitioner but by two (2) other concerns, as follows: The observation and conclusion of the Director of Patents are correct. The particular goods
of the parties are so unrelated that consumers would not in any probability mistake one as
1. CAMIA Application No. 280 Registration No. SR-320 Date Registered May 26, the source or origin of the product of the other. "Ham" is not a daily food fare for the average
1960 Owner Everbright Development Company Business Address 310 M. H. del consumer. One purchasing ham would exercise a more cautious inspection of what he buys
Pilar Grace Park, Caloocan City Class 4 Thread and Yarn on account of it price. Seldom, if ever, is the purchase of said food product delegated to
household helps, except perhaps to those who, like the cooks, are expected to know their
2. CAMIA and Representation Application No. 538 Date Filed August 10, 1945 business. Besides, there can be no likelihood for the consumer of respondent's ham to
Date Registered - April 20, 1946 Owner F.E. Zuellig, Inc. Business Address confuse its source as anyone but respondent. The facsimile of the label attached by him on
55 Rosario St., Manila Class 43 Particular Good on which mark is used: Textiles, his product, his business name "SAM'S HAM AND BACON FACTORY" written in bold white
Embroideries laces, etc. letters against a reddish orange background 6, is certain to catch the eye of the class of
consumers to which he caters.
A trademark is designed to Identify the user. But it should be so distinctive and sufficiently
original as to enable those who come into contact with it to recognize instantly the Identity of In addition, the goods of petitioners are basically derived from vegetable oil and animal fats,
the user. " It must be affirmative and definite, significant and distinctive, capable to indicate while the product of respondent is processed from pig's legs. A consumer would not
origin." 4 reasonably assume that, petitioner has so diversified its business as to include the product
of respondent.
It is evident that "CAMIA" as a trademark is far from being distinctive. By itself, it does not
Identify petitioner as the manufacturer or producer of the goods upon which said mark is Mr. Runolf Callman, in Section 80.3, VOL. I, p. 1121 of his book, Unfair Competition and
used, as contra-distinguished to trademarks derived from coined words such as "Rolex", Trade Marks, declare:
"Kodak" or "Kotex". It has been held that if a mark is so commonplace that it cannot be
readily distinguished from others, then it is apparent that it cannot Identify a particular While confusion of goods can only be evident, where the litigants are actually in
business; and he who first adopted it cannot be injured by any subsequent appropriation or competition, confusion of business may arise between non-competitive interests as well.
imitation by others, and the public will not be deceived." 5 This is true whether or not the trademarks are registered. Sec. 16 of the Trademark Act, in
referring to 'merchandise of substantially the same descriptive properties, embraces
The trademark "CAMIA" is used by petitioner on a wide range of products: lard, butter, competitive and non-competitive trademark infringement but it is not so extensive as to be
cooking oil, abrasive detergents, polishing materials and soap of all kinds. Respondent applicable to cases where the public would not reasonably expect the plaintiff to make or
desires to use the same on his product, ham. While ham and some of the products of sell the same class of goods as those made or sold by the defendant. (Emphasis supplied).
petitioner are classified under Class 47 (Foods and Ingredients of Food), this alone cannot
serve as the decisive factor in the resolution of whether or not they are related goods.
In fine, We hold that the businesss of the parties are non-competitive and their products so
unrelated that the use of Identical trademarks is not likely to give rise to confusion, much Facts of the Case: The petitioner Philippine Refining Co. first used'Camia' as trademark for
less cause damage to petitioner. its products in 1922. In 1949, it caused the registration of the said trademark for its lard,
butter, cooking oil, detergents, polishing materials and soap products. In 1960, Ng Sam filed
WHEREFORE, the instant petition is hereby dismissed and the decision of the Director of an application for 'Camia' for its ham product (Class 47), alleging its first use in 1959. The
Patents in Inter Partes Case No. 231 affirmed in toto. Costs against petitioner. petitioner opposed the said application but the Patent Office allowed the registration of Ng
Sam.
Separate Opinions Issue: Is the product of Ng Sam (Ham) and those of the petitioner so related that the use of
the trademark 'Camia' on said goods would result to confusion as to their origin?
DE CASTRO, J., dissenting:
HELD: NO. The businesses of the parties are non-competitive and the products are so
I vote to grant the petition of the Philippine Refining Co. Inc. As the registered owner and unrelated that the use of the same trademark will not give rise to confusion nor cause
prior user of the trademark, "CAMIA" on a wide variety of products such as lard, butter, damage to the petitioner. The right to a trademark is a limited one, hence, others may use
cooking oil, abrasive detergents, polishing materials and soap of all kinds, the respondent's the same mark on unrelated goods if no confusion would arise.
ham which comes under the same classification of "Food and Ingredients of Foods" under
which petitioner has registered its trademark, if given the same trademark, "CAMIA" is likely A trademark is designed to identify the user, hence, it should be so distinctive and
to confuse the public that the source of the ham is the petitioner. if the respondent's ham is sufficiently original so as to enable those who see it to recognize instantly its source or
of poor quality, petitioner's business may thus be affected adversely as a result, while from origin. A trademark must be affirmative and definite, significant and distinctive and capable
the standpoint of the purchasers, some measure of deception may take effect upon them. of indicating origin.
Thus, the use of the same trademark on the ham would likely result in confusion as to the
source or origin thereof, to the damage or detriment of the petitioner. The purpose of the law 'Camia' as a trademark is far from being distinctive, It in itself does not identify the petitioner
will be served better by not allowing the registration of the trademark "CAMIA" for as the manufacturer of producer of the goods upon which said mark is used. If a mark is so
respondent's ham, with such a limitless number of other words respondent may choose commonplace, it is apparent that it can't identify a particular business and he who adopted it
from, as trademark for his product. first cannot be injured by any subsequent appropriation or imitation by others and the public
will not be deceived.
Separate Opinions Mere classification of the goods cannot serve as the decisive factor in the resolution of
whether or not the goods a related. Emphasis should be on the similarity of products
DE CASTRO, J., dissenting: involved and not on arbitrary classification of general description of their properties or
characteristics.
I vote to grant the petition of the Philippine Refining Co. Inc. As the registered owner and
prior user of the trademark, "CAMIA" on a wide variety of products such as lard, butter, G.R. No. L-29971 August 31, 1982
cooking oil, abrasive detergents, polishing materials and soap of all kinds, the respondent's
ham which comes under the same classification of "Food and Ingredients of Foods" under ESSO STANDARD EASTERN, INC. vs. CA ** and UNITED CIGARETTE CORPORATION
which petitioner has registered its trademark, if given the same trademark, "CAMIA" is likely
to confuse the public that the source of the ham is the petitioner. if the respondent's ham is The Court affirms on the basis of controlling doctrine the appealed decision of the Court of
of poor quality, petitioner's business may thus be affected adversely as a result, while from Appeals reversing that of the Court of First Instance of Manila and dismissing the complaint
the standpoint of the purchasers, some measure of deception may take effect upon them. filed by herein petitioner against private respondent for trade infringement for using
Thus, the use of the same trademark on the ham would likely result in confusion as to the petitioner's trademark ESSO, since it clearly appears that the goods on which the trademark
source or origin thereof, to the damage or detriment of the petitioner. The purpose of the law ESSO is used by respondent is non-competing and entirely unrelated to the products of
will be served better by not allowing the registration of the trademark "CAMIA" for petitioner so that there is no likelihood of confusion or deception on the part of the
respondent's ham, with such a limitless number of other words respondent may choose purchasing public as to the origin or source of the goods.
from, as trademark for his product.
Petitioner Esso Standard Eastern, Inc., 1 then a foreign corporation duly licensed to do
Phil. Refining Co. v. Ng Sam and Director of Patents business in the Philippines, is engaged in the sale of petroleum products which are
G.R. No. L-26676, July 30, 1982 Identified with its trademark ESSO (which as successor of the defunct Standard Vacuum Oil
Co. it registered as a business name with the Bureaus of Commerce and Internal Revenue even more than in other litigation, precedent must be studied in the light of the facts of the
in April and May, 1962). Private respondent in turn is a domestic corporation then engaged particular case.
in the manufacture and sale of cigarettes, after it acquired in November, 1963 the business,
factory and patent rights of its predecessor La Oriental Tobacco Corporation, one of the It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum
rights thus acquired having been the use of the trademark ESSO on its cigarettes, for which products, and the product of respondent, cigarettes, are non-competing. But as to whether
a permit had been duly granted by the Bureau of Internal Revenue. trademark infringement exists depends for the most part upon whether or not the goods are
so related that the public may be, or is actually, deceived and misled that they came from
Barely had respondent as such successor started manufacturing cigarettes with the the same maker or manufacturer. For non-competing goods may be those which, though
trademark ESSO, when petitioner commenced a case for trademark infringement in the they are not in actual competition, are so related to each other that it might reasonably be
Court of First Instance of Manila. The complaint alleged that the petitioner had been for assumed that they originate from one manufacturer. Non-competing goods may also be
many years engaged in the sale of petroleum products and its trademark ESSO had those which, being entirely unrelated, could not reasonably be assumed to have a common
acquired a considerable goodwill to such an extent that the buying public had always taken source. in the former case of related goods, confusion of business could arise out of the use
the trademark ESSO as equivalent to high quality petroleum products. Petitioner asserted of similar marks; in the latter case of non-related goods, it could not. 8 The vast majority of
that the continued use by private respondent of the same trademark ESSO on its cigarettes courts today follow the modern theory or concept of "related goods" 9 which the Court has
was being carried out for the purpose of deceiving the public as to its quality and origin to likewise adopted and uniformly recognized and applied. 10
the detriment and disadvantage of its own products.
Goods are related when they belong to the same class or have the same descriptive
In its answer, respondent admitted that it used the trademark ESSO on its own product of properties; when they possess the same physical attributes or essential characteristics with
cigarettes, which was not Identical to those produced and sold by petitioner and therefore reference to their form, composition, texture or quality. They may also be related because
did not in any way infringe on or imitate petitioner's trademark. Respondent contended that they serve the same purpose or are sold in grocery stores. 11 Thus, biscuits were held
in order that there may be trademark infringement, it is indispensable that the mark must be related to milk because they are both food products. 12 Soap and perfume, lipstick and nail
used by one person in connection or competition with goods of the same kind as the polish are similarly related because they are common household items now a days. 13 The
complainant's. trademark "Ang Tibay" for shoes and slippers was disallowed to be used for shirts and pants
because they belong to the same general class of goods. 14 Soap and pomade although
The trial court, relying on the old cases of Ang vs. Teodoro 2 and Arce & Sons, Inc. vs. non- competitive, were held to be similar or to belong to the same class, since both are toilet
Selecta Biscuit Company, 3 referring to related products, decided in favor of petitioner and articles. 15 But no confusion or deception can possibly result or arise when the name
ruled that respondent was guilty of infringement of trademark. "Wellington" which is the trademark for shirts, pants, drawers and other articles of wear for
men, women and children is used as a name of a department store. 16
On appeal, respondent Court of Appeals found that there was no trademark infringement
and dismissed the complaint. Reconsideration of the decision having been denied, Thus, in Acoje Mining Co., Inc. vs. Director of Patents, 17 the Court, through now Chief
petitioner appealed to this Court by way of certiorari to reverse the decision of the Court of Justice Fernando, reversed the patent director's decision on the question of "May petitioner
Appeals and to reinstate the decision of the Court of First Instance of Manila. The Court Acoje Mining Company register for the purpose of advertising its product, soy sauce, the
finds no ground for granting the petition. trademark LOTUS, there being already in existence one such registered in favor of the
Philippine Refining Company for its product, edible oil, it being further shown that the
The law defines infringement as the use without consent of the trademark owner of any trademark applied for is in smaller type, colored differently, set on a background which is
"reproduction, counterfeit, copy or colorable limitation of any registered mark or tradename dissimilar as to yield a distinct appearance?" and ordered the granting of petitioner's
in connection with the sale, offering for sale, or advertising of any goods, business or application for registration ruling that "there is quite a difference between soy sauce and
services on or in connection with which such use is likely to cause confusion or mistake or edible oil. If one is in the market for the former, he is not likely to purchase the latter just
to deceive purchasers or others as to the source or origin of such goods or services, or because of the trademark LOTUS" and "when regard is had for the principle that the two
Identity of such business; or reproduce, counterfeit, copy or colorably imitate any such mark trademarks in their entirety as they appear in their respective labels should be considered in
or tradename and apply such reproduction, counterfeit, copy or colorable limitation to labels, relation to the goods advertised before registration could be denied, the conclusion is
signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon inescapable that respondent Director ought to have reached a different conclusion. "
or in connection with such goods, business or services." 4 Implicit in this definition is the
concept that the goods must be so related that there is a likelihood either of confusion of By the same token, in the recent case of Philippine Refining Co., Inc. vs. Ng Sam and
goods or business. 5 But likelihood of confusion is a relative concept; to be determined only Director of Patents, 18 the Court upheld the patent director's registration of the same
according to the particular, and sometimes peculiar, circumstances of each case. 6 It is trademark CAMIA for therein respondent's product of ham notwithstanding its already being
unquestionably true that, as stated in Coburn vs. Puritan Mills, Inc. 7 "In trademark cases, used by therein petitioner for a wide range of products: lard butter, cooking oil, abrasive
detergents, polishing materials and soap of all kinds. The Court, after noting that the same samples of the goods submitted by the parties shows a great many differences on the
CAMIA trademark had been registered by two other companies, Everbright Development trademarks used. As pointed out by respondent court in its appealed decision, "(A) witness
Company and F. E. Zuellig, Inc. for their respective products of thread and yarn (for the for the plaintiff, Mr. Buhay, admitted that the color of the "ESSO" used by the plaintiff for the
former) and textiles, embroideries and laces (for the latter) ruled that "while ham and some oval design where the blue word ESSO is contained is the distinct and unique kind of blue.
of the products of petitioner are classified under Class 47 (Foods and Ingredients of Food), In his answer to the trial court's question, Mr. Buhay informed the court that the plaintiff
this alone cannot serve as the decisive factor in the resolution of whether or not they are never used its trademark on any product where the combination of colors is similar to the
related goods. Emphasis should be on the similarity of the products involved and not on the label of the Esso cigarettes," and "Another witness for the plaintiff, Mr. Tengco, testified that
arbitrary classification or general description of their properties or characteristics." The generally, the plaintiff's trademark comes all in either red, white, blue or any combination of
Court, therefore, concluded that "In fine, We hold that the businesses of the parties are non- the three colors. It is to be pointed out that not even a shade of these colors appears on the
competitive and their products so unrelated that the use of Identical trademarks is not likely trademark of the appellant's cigarette. The only color that the appellant uses in its trademark
to give rise to confusion, much less cause damage to petitioner." is green." 24
In the situation before us, the goods are obviously different from each other with "absolutely Even the lower court, which ruled initially for petitioner, found that a "noticeable difference
no iota of similitude" 19 as stressed in respondent court's judgment. They are so foreign to between the brand ESSO being used by the defendants and the trademark ESSO of the
each other as to make it unlikely that purchasers would think that petitioner is the plaintiff is that the former has a rectangular background, while in that of the plaintiff the word
manufacturer of respondent's goods.t@lF The mere fact that one person has adopted ESSO is enclosed in an oval background."
and used a trademark on his goods does not prevent the adoption and use of the same
trademark by others on unrelated articles of a different kind. 20 In point of fact and time, the Court's dismissal of the petition at bar was presaged by its
Resolution of May 21, 1979 dismissing by minute resolution the petition for review for lack of
Petitioner uses the trademark ESSO and holds certificate of registration of the trademark for merit in the Identical case of Shell Company of the Philippines, Ltd vs. Court of Appeals 25,
petroleum products, including aviation gasoline, grease, cigarette lighter fluid and other wherein the Court thereby affirmed the patent office's registration of the trademark SHELL
various products such as plastics, chemicals, synthetics, gasoline solvents, kerosene, as used in the cigarettes manufactured by therein respondent Fortune Tobacco Corporation
automotive and industrial fuel, bunker fuel, lubricating oil, fertilizers, gas, alcohol, notwithstanding the therein petitioner Shell Company's opposition thereto as the prior
insecticides and the ESSO Gasul" burner, while respondent's business is solely for the registrant of the same trademark for its gasoline and other petroleum trademarks, on the
manufacture and sale of the unrelated product of cigarettes. The public knows too well that strength of the controlling authority of Acoje Mining Co. vs. Director of Patents, Supra, and
petitioner deals solely with petroleum products that there is no possibility that cigarettes with the same rationale that "(I)n the Philippines, where buyers of appellee's (Fortune Corp.'s)
ESSO brand will be associated with whatever good name petitioner's ESSO trademark may cigarettes, which are low cost articles, can be more numerous compared to buyers of the
have generated. Although petitioner's products are numerous, they are of the same class or higher priced petroleum and chemical products of appellant (Shell Co.) and where appellant
line of merchandise which are non-competing with respondent's product of cigarettes, which (Shell) is known to be in the business of selling petroleum and petroleum-based chemical
as pointed out in the appealed judgment is beyond petitioner's "zone of potential or natural products, and no others, it is difficult to conceive of confusion in the minds of the buying
and logical expansion" 21 When a trademark is used by a party for a product in which the public in the sense it can be thought that appellant (Shell) is the manufacturer of appellee's
other party does not deal, the use of the same trademark on the latter's product cannot be (Fortune's) cigarettes, or that appellee (Fortune) is the manufacturer or processor of
validly objected to. 22 appellant's (Shell's) petroleum and chemical products." 26
Another factor that shows that the goods involved are non-competitive and non-related is ACCORDINGLY, the petition is dismissed and the decision of respondent Court of Appeals
the appellate court's finding that they flow through different channels of trade, thus: "The is hereby affirmed.
products of each party move along and are disposed through different channels of
distribution. The (petitioner's) products are distributed principally through gasoline service Esso Standard v CA Digest
and lubrication stations, automotive shops and hardware stores. On the other hand, the
(respondent's) cigarettes are sold in sari-sari stores, grocery stores, and other small G.R. No. L-29971
distributor outlets. (Respondent's) cigarettes are even peddled in the streets while
(petitioner's) 'gasul' burners are not. Finally, there is a marked distinction between oil and Facts of the Case:
tobacco, as well as between petroleum and cigarettes. Evidently, in kind and nature the The petitioner Esso Standard is a foreign corporation duly licensed to do business in the
products of (respondent) and of (petitioner) are poles apart." 23 philippines. it is engaged in the sale of petroleum products which are identified by the
trademarl 'Esso'. Esso is a successor of Standard Vacuum Oil Co, it registered as a
Respondent court correctly ruled that considering the general appearances of each mark as business name with the Bureau of Commerce in 1962. United Cigarette is a domestic
a whole, the possibility of any confusion is unlikely. A comparison of the labels of the corporation engaged in the manufacture and sale of cigarettes. it acquired the business
from La Oriental Tobacco Corp including patent rights, once of which is the use of 'Esso' on trademark for underwear (Exhibit 'R'), the word 'HICKOK' is also in red with white
its cigarettes. background in the middle of two branches of laurel in dark gold with similar ribbons and the
The petitioner filed a trademark infringement case alleging that it acquired goodwill to such words 'POSITIVELY FINER' in dark gold. And in the trademark for briefs (Exhibit 'S'), the
an extent that the buying public would be deceived as ti the quality and origin of the said word 'HICKOK' is in white but with red background in the middle of two branches of laurel,
products to the detriment and disadvantage of its own products. The lower court found the leaves being in dark gold with white edges, and with similar ribbon and words
United Cigarette guilty of infringement. Upon appeal, the Court of Appeals ruled that there 'POSITIVELY FINER' in dark gold. In contrast, in respondent-appellant's trademark (Exhibit
was no infringment in this case. 'J'), the word 'HICKOK' is in white with gold background between the two branches of laurel
Issue: Is there infringement committed? in red, with the word 'SHOES' also in red below the word 'HICKOK'.t@lF The ribbon is in
Ruling: NONE. Infringement is defined by law as the use without the consent of the red with the words 'QUALITY AT YOUR FEET,' likewise in red.
trademark owner of any reproduction, counterfeit, copy or colorable imitation of any
registered mark or tradename which would likely cause confusion or mistake or deceive While the law does not require that the competing trademarks be Identical, the two marks
purchasers or others as to the source or origin of such goods. must be considered in their entirety, as they appear in the respective labels, in relation to the
The products of both parties (Petroleum and cigarettes) are non-competing. But as to goods to which they are attached.
whether trademark infringement exists depend on whether or not the goods are so related
that the public may be or is actually deceived and misled that they come from the same The case of H.E. Heacock Co. vs. American Trading Co., 56 Phil. 763, cited by petitioner -
maker. Under the Related Goods Theory, goods are related when they belong to the same appellee, is hardly applicable here, because the defendant in that case imported and sold
class or have the same descriptive properties or when they have same physical attributes. merchandise which are very similar to, and precisely of the same designs as, that imported
In these case, the goods are absolutely different and are so foreign from each other it would and sold by the plaintiff. ...
be unlikely for purchasers to think that they came from the same source. Moreover, the
goods flow from different channels of trade and are evidently different in kind and nature. In the recent case of Acoje Mining Co., Inc. vs. Director of Patents, 38 SCRA 480, 482-483,
the Supreme Court stated - 1wph1.t
G.R. No. L-44707 August 31, 1982
Can it be said then that petitioner's application would be likely to cause confusion or mistake
HICKOK MANUFACTURING CO., INC. vs. COURT OF APPEALS ** and SANTOS LIM on the part of the buying public? The answer should be in the negative. It does not defy
BUN LIONG common sense to assert that a purchaser would be cognizant of the product he is buying.
There is quite a difference between soy sauce and edible oil. If one is in the market for the
former, he is not likely to purchase the latter just because on the trademark LOTUS. Even
The Court affirms on the strength of controlling doctrine as reaffirmed in the companion on the rare occasion that a mistake does occur, it can easily be rectified. Moreover, there is
case of Esso Standard Eastern Inc. vs. Court of Appeals 1 promulgated also on this date no denying that the possibility of confusion is remote considering petitioner's trademark
and the recent case of Philippine Refining Co., Inc. vs. Ng Sam and Director of Parents 2 being in yellow and red while that of the Philippine Refining Company being in green and
the appealed decision of the Court of Appeals reversing the patent director's decision and yellow, and the much smaller size of petitioner's trademark. When regard is had for the
instead dismissing petitioner's petition to cancel private respondent's registration of the principle that the two trademarks in their entirety as they appear in their respective labels
trademark of HICKOK for its Marikina shoes as against petitioner's earlier registration of the should be considered in relation to the goods advertised before registration could be denied,
same trademark for its other non-competing products. the conclusion is inescapable that respondent Director ought to have reached a different
conclusion. Petitioner has successfully made out a case for registration.
On the basis of the applicable reasons and considerations extensively set forth in the
above-cited controlling precedents and the leading case of Acoje Mining Co., Inc. vs. From the statements of the Supreme Court in the two cases aforementioned, we gather that
Director of Patents 3 on which the appellate court anchored its decision at bar, said decision there must be not only resemblance between the trademark of the plaintiff and that of the
must stand affirmed, as follows: 1wph1.t defendant, but also similarity of the goods to which the two trademarks are respectively
attached.
An examination of the trademark of petitioner-appellee and that of registrant-appellant
convinces us that there is a difference in the design and the coloring of, as well as in the Since in this case the trademark of petitioner-appellee is used in the sale of leather wallets,
words on the ribbons, the two trademarks. key cases, money folds made of leather, belts, men's briefs, neckties, handkerchiefs and
men's socks, and the trademark of registrant-appellant is used in the sale of shoes, which
In petitioner-appellee's trademark for handkerchiefs (Exhibit 'Q'), the word 'HICKOK' is in have different channels of trade, the Director of Patents, as in the case of Acoje Mining Co.,
red with white background in the middle of two branches of laurel in light gold. At the lower Inc. vs. Director of Patents, supra, 'ought to have reached a different conclusion.
part thereof is a ribbon on which are the words 'POSITIVELY FINER' in light gold. In the
It is established doctrine, as held in the above-cited cases, that "emphasis should be on the The Director of Patents authorized herein private respondent Co Beng Kay to register the
similarity of the products involved and not on the arbitrary classification or general trademark "BRUTE" for the briefs manufactured and sold by his Corporation in the domestic
description of their properties or characteristics" 4 and that "the mere fact that one person market vis-a-vis petitioner's opposition grounded on similarity of said trademark with
has adopted and used a trademark on his goods does not prevent the adoption and use of petitioner's own symbol "BRUT" which it previously registered for after shave lotion, shaving
the same trademark by others on unrelated articles of a different kind." 5 Taking into account cream, deodorant, talcum powder, and toilet soap. Thereafter, respondent court, through
the facts of record that petitioner, a foreign corporation registered the trademark for its Justice Gopengco with Justices Patajo and Racela, Jr. concurring, was initially persuaded
diverse articles of men's wear such as wallets, belts and men's briefs which are all by petitioner's plea for reversal directed against the permission granted by the Director of
manufactured here in the Philippines by a licensee Quality House, Inc. (which pays a royalty Patents, but the decision of the Second Special Cases Division handed down on April 29,
of 1-1/2 % of the annual net sales) but are so labelled as to give the misimpression that the 1983 was later reconsidered in favor of herein private respondent (pp. 46-54; pp. 34-36,
said goods are of foreign (stateside) manufacture and that respondent secured its Rollo).
trademark registration exclusively for shoes (which neither petitioner nor the licensee ever
manufactured or traded in) and which are clearly labelled in block letters as "Made in Hence, the petition at bar assailing the action of respondent court in affirming the ruling of
Marikina, Rizal, Philippines," no error can be attributed to the appellate court in upholding the Director of Patents (Page 7, Petition; Page 16, Rollo).
respondent's registration of the same trademark for his unrelated and non-competing
product of Marikina shoes. 6 In essence, it appears that in the course of marketing petitioner's "BRUT" products and
during the pendency of its application for registration of the trademark "BRUT 33 and
ACCORDINGLY, the petition is dismissed and the appealed judgment of the Court of DEVICE" for antiperspirant, personal deodorant, cream shave, after shave/shower lotion,
Appeals is hereby affirmed. hair spray, and hair shampoo (page 236, Rollo), respondent Co Beng Kay of Webengton
Garments Manufacturing applied for registration of the disputed emblem "BRUTE" for briefs.
Opposition raised by petitioner anchored on similarity with its own symbol and irreparable
Hickok v CA Digest injury to the business reputation of the first user was to no avail. When the legal tussle was
elevated to respondent court, Justice Gopengco remarked that:
G.R. No. L-44707, August 31, 1982
Indeed, a look at the marks "BRUT," "BRUT 33" and "BRUTE" shows that such marks are
Facts: not only similar in appearance but they are even similar in sound and in the style of
Petitioner is a foreign corporation and all its products are manufactures by Quality House presentation. It is reasonable to believe that this similarity is sufficient to cause confusion
Inc. The latter pays royalty to the petitioner. Hickok registered the trademark 'Hickok' earlier and even mistake and deception in the buying public as to the origin for source of the goods
and used it in the sale of leather wallets, key cases, money folds, belts, mens underwear, bearing such trademarks. It should be considered that, although the mark "BRUTE" was
neckties, hankies, and men's socks. While Sam Bun Liong used the same trademark in the applied for, only for briefs, yet such product has the same outlet such as department
sale of Marikina shoes. Both products have different channels of trade. The Patent Office stores and haberdashery stores in the Philippines as the goods covered by the
did not grant the registration, but the Court of Appeals reversed the PPO decision. trademarks "BRUT" and "BRUTE 33" so that such confusion, mistake or deception is not
unlikely to occur. The argument of appellee, that in modern marketing, goods of similar use
Issue: Is there infringement in this case? are grouped in one section of the supermarket and thus it is unlikely that cosmetics be
mixed with textile or wearing apparel, is hardly convincing enough, for a look at the modern
NONE. Emphasis should be on the similarity of the products involves and not on the department stores shows that merchandise intended for the use of men are now placed in a
arbitrary classification or the general description of their properties or characteristics. Also, section which is then labelled "Men's Accessories." It is not unlikely, therefore, that in said
the mere fact that one person has adopted and used a trademark on his goods does not section, appellant's products, which are cosmetics for men's use, be placed beside
prevent the adoption and use of the same by others on unrelated articles of different kind. appellee's product, and cause such confusion or mistake as to the source of the goods
There is a different design and coloring of the trademark itself. The 'Hickok' trademark is in displayed in the section. To avoid this, the Director of Patents held:
red with white background in the middle of 2 branches of laurel (in light gold) while the one
used by Sam Bun Liong is the word 'Hickok ' in white with gold background between 2 The marks KEYSTON (on shirts) and KEYSTONE (on shoes and slippers), the latter having
branches of laurel in red with the word 'shoes' also in red placed below the word 'Hickok'. been previously registered are clearly similar in sound and appearance that confusion or
mistake, or deception among purchasers as to origin and source of goods is likely to occur.
G.R. No. 71189 November 4, 1992 Shirts and shoes are both wearing apparel and there is no gainsaying the truth that these
items are ordinarily displayed in the same manner and sold through the same retail outlets
FABERGE, INCORPORATED vs. IAC and CO BENG KAY such as department and haberdashery stores in the Philippines. (Ex-Parte Keystone
Garment Manufacturing Co., Decision No. 245 of the Director of Patents, January 25, 1963.)
that the facts in said cases "are not found in the case at bar" (Page 12, Brief for the
It is also not disputed that on account of the considerable length of time that appellant has Petitioner, Page 202, Rollo). Petitioner likewise emphasis American jurisprudential doctrines
marketed its products bearing the trademarks "BRUT" and "BRUT 33," and its maintenance to the effect that sale of cosmetics and wearing apparel under similar marks is likely to
of high quality of its products through the years, appellant has earned and established cause confusion. Instead of applying the ESSO, PRC and Hickok cases, petitioner
immense goodwill among its customers. We agree with appellant that should appellee be continues to asseverate, the rule as announced in Ang vs. Teodoro (74 Phil. 50 [1942]) as
allowed to use the trademark "BRUTE" on the briefs manufactured by him, appellee would reiterated in Sta. Ana vs. Maliwat and Evalle (24 SCRA (1968) 101) should be applied.
be cashing in on the goodwill already established by appellant, because, as already stated
above, appellant's cosmetics and appellee's briefs are not entirely unrelated since both are In additional, it seems that petitioner would want this Court to appreciate petitioner's alleged
directed to the fashion trade and in the marketing process, they may find themselves side application for registration of the trademark "BRUT 33 DEVICE" for briefs as an explicit
by side in the "Men's Accessories Section" of the market, thus easily leading the buying proof that petitioner intended to expand its mark "BRUT" to other goods, following the
public to believe that such briefs come from the same source as appellant's cosmetics, and sentiment expressed by Justice J.B.L. Reyes in the Sta. Ana case (supra, at page 1025)
be induced to buy said briefs, to the undue advantage of appellee. Again, if after purchasing that relief is available where the junior user's goods are not remote from any product that
such briefs, the public finds them to be of non-competitive quality, or not of the high quality the senior user would be likely to make or sell (Pages 26-27, Brief for the Petitioner).
expected of appellant's products, then appellant's reputation and goodwill will be ruined, to
its damage and prejudice. Thus, for the protection of the goodwill already established by a Besides, petitioner insists that in view of the repeal of Republic Act No. 166 (which
party, the Supreme Court held: advocated the related goods theory) by Republic Act No. 666 which deleted the phrase
found in the old law that the merchandise must be substantially the same descriptive
When one applies for the registration of a trademark or label which is almost the same or properties, respondent Court should have heeded the pronouncement in the Ang case that
very closely resembles one already used and registered by another, the application should there can be unfair competition even if the goods are noncompeting (supra, at page 54).
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 not only to avoid confusion on On the other hand, private respondent echoes the glaring difference in physical appearance
the part of the public, but also to protect an already used and registered trademark and an of its products with petitioner's own goods by stressing the observations of the Director of
established goodwill. (Chuanchow Soy & Canning Co. vs. Dir. of Patents and Villapanta, Patents on May 3, 1978:
108 Phil. 833, 836.)
Considered in their entireties as depicted in the parties' sample box and can containers, the
The test of confusing similarity which would preclude the registration of a trademark is not involved trademarks are grossly different in their overall appearance that even at a distance
whether the challenged mark would actually cause confusion or deception of the purchasers a would-be purchaser could easily distinguish what is BRUTE brief and what is BRUT after
but whether the use of such mark would likely cause confusion or mistake on the part of the shave lotion, lotion and the like. Opposer's mark BRUT or BRUT 33, as shown in Exhibit "6",
buying public. In short, the law does not require that the competing marks must be so is predominantly colored green with a blue and white band at the middle portion of the
identical as to produce actual error or mistakes. It would be sufficient, for purposes of the container. Also appearing therein in bold letters is opposer's name "FABERGE" and a
law, that the similarity between the two labels be such that there is a possibility or likelihood notation "Creme Shave". On the other hand, respondent's mark as shown in Exh. "4-A"
of the purchaser of the older brand mistaking the newer brand for it. (Gopengco, Mercantile prominently displays the representation of a muscular man, underneath of which appears
Law Compendium, 1983 ed., p. 684; Acoje Mining Co., Inc. vs. Director of Patents, 38 the trademark BRUTE with a notation "Bikini Brief" . . . Equally visible at the other portions
SCRA 480). (pp. 3-6, Decision; pp. 48-51, Rollo). of respondent's labels are the pictorial representation of "briefs" which unmistakably suggest
that the product contained in the box container is that of a man's brief. The fact therefore is
On June 5, 1984, respondent's Motion for Reconsideration merited the nod of approval of obvious that the goods upon which the conflicting trademarks are used are clearly different
the appellate court brought about by private respondent's suggestion that the controlling and the intended purpose of such goods are likewise not the same. Accordingly, a
ruling is that laid down in Philippine Refining Co., Inc. vs. Ng Sam (115 SCRA 472 [1982]), purchaser who is out in the market for the purpose of buying respondent's BRUTE brief
ESSO Standard Eastern, Inc. vs. Court of Appeals (116 SCRA 336 [1982]); Hickok would definitely be not mistaken or misled into buying instead opposer's BRUT after shave
Manufacturing Co., Inc. vs. CA (116 SCRA 378 [1982]), and Acoje Mining Co., Inc. vs. lotion or deodorant.
Director of Patents (38 SCRA 480 [1971], to the effect that the identical trademark can be
used by different manufacturers for products that are non-competing and unrelated. (pp. 34- Additional, the meaning or connotation of the bare word marks of opposer, BRUT, and
36, Rollo) BRUTE of respondent, are clearly different and not likely to be confused with each other.
BRUT simply means "dry", and also, "to browse"; while BRUTE means "ferocious, sensual",
Petitioner is of the impression that respondent court could not have relied on the rulings of and in Latin, it signifies "heavy". Gleaned from the respective meanings of the two marks in
this Court in the ESSO and the PRC cases when the original decision was reconsidered question, they both suggest the resultant effects of the application of the products, upon
since respondent court already expressed the opinion in the text of the previous discourse
which the said trademarks are employed, which fact all the more renders confusion or persons, corporations, partnerships or associations domiciled in any foreign country may be
deception of purchasers a remote possibility. registered in accordance with the provisions of this Act; Provided, That said trade-marks,
trade-names, or service-marks, are actually in use in commerce and services not less than
The products covered by petitioner's trademarks "BRUT" and "BRUT 33 & Device" enjoying two months in the Philippines before the time the applications for registration are filed: And
its so-called "goodwill" are after-shave lotion, shaving cream, deodorant, talcum powder, provided, further, That the country of which the applicant for registration is a citizen grants
toilet soap, anti-perspirant, personal deodorant, cream shave, after shave/shower lotion, by law substantially similar privileges to citizens of the Philippines, and such fact is officially
hair spray and hair shampoo. Petitioner has never applied for, registered nor used its certified, with a certified true copy of the foreign law translated into the English language, by
trademarks for briefs in commerce or trade in the Philippines. Private respondent seeks to the government of the Republic of the Philippines. (As amended by Rep. Act No. 865).
register his trademark "BRUTE" only for briefs which is a product non-competitive to and
entirely unrelated with petitioner's aforementioned products. (pp. 3-4, Brief for the Sec. 2-A. Ownership of trade-marks, trade-names and service-marks; how
Respondent) acquired. Anyone who lawfully produces or deals in merchandise of any kind or who
engages in any lawful business or who renders any lawful service in commerce, by actual
in order to impress upon Us that the controlling norm is the comparison of the trademarks in use thereof in manufacture or trade, in business, and in the service rendered, may
their entirely as they appear in their labels to determine whether there is confusing similarity. appropriate to his exclusive use a trade-mark, a trade-name, or a service-mark not so
appropriated by another, to distinguish his merchandise, business or service from the
Moreover, private respondent asserts that briefs and cosmetics do not belong to the same merchandise, business or services of others. The ownership or possession of a trade-mark,
class nor do they have the same descriptive properties such that the use of a trademark on trade-name, service-mark, heretofore or hereafter appropriated, as in this section provided,
one's goods does not prevent the adoption and use of the same trademark by others on shall be recognized and protected in the same manner and to the same extent as are other
unrelated articles of a different nature in line with the ruling of this Court in Hickok property rights known to the law. (As inserted by Sec. 1 of Rep. Act 638).
Manufacturing Co., Inc. vs. Court of Appeals (116 SCRA 387 [1982]). Furthermore,
respondent belies petitioner's claim that the latter had applied for registration of the xxx xxx xxx
trademark "BRUT 33 DEVICE" for briefs since the documents on file with the Director of
Patents attached to respondent's legal Brief does not include the so-called application by Sec. 4. Registration of trade-marks, trade-names and service-marks on the principal
petitioner of the alleged trademark for briefs. register.
To the legal query of whether private respondent may appropriate the trademark "BRUTE" . . . The owner of trademark, trade-name or service-mark used to distinguish his goods,
for the briefs it manufactures and sells to the public albeit petitioner had previously business or services from the goods, business or services of others shall have right to
registered the symbol "BRUT" and "BRUT 33" for its own line of times, it is but apropos to register the same on the principal register, unless it:
shift Our attention to the pertinent provisions of the new Civil Code vis-a-vis Republic Act
No. 166, as amended, the special law patterned after the United States Trademark Act of xxx xxx xxx
1946 (Director of Patents, Circular Release No. 36, 45 O.G. 3704; Martin, Commentaries
and Jurisprudence on the Philippine Commercial Laws, 1986 Revised Edition, Volume 2, 4(d) Consists of or comprises a mark or trade-name which so resembles a mark or
page 489), thus: trade-name registered in the Philippines or a mark or trade-name previously used in the
Philippines by another and not abandoned, as to be likely, when applied to or used in
Art. 520. A trade-mark or trade-name duly registered in the proper government bureau or connection with the goods, business or services of the applicant, to cause confusion or
office is owned by and pertains to the person, corporation, or firm registering the same, mistake or to deceive purchasers.
subject to the provisions of special laws.
xxx xxx xxx
Art. 521. The goodwill of a business is property, and may be transferred together with the
right to use the name under which the business is conducted. Sec. 11. Issuance and contents of the certificate. Certificates of registration shall be
issued in the name of the Republic of the Philippines under the seal of the Patent Office,
Art. 522. Trade-marks and trade-names are governed by special laws. and shall be signed by the Director, and a record thereof together with a copy of the
specimen or facsimile and the statement of the applicant, shall be kept in books for that
xxx xxx xxx purpose. The certificate shall reproduce the specimen or facsimile of the mark or trade-
name, contain the statement of the applicant and state that the mark or trade-name is
Sec. 2. What are registrable. Trade-marks, trade-names, and service-marks owned by registered under this Act, the date of the first use in commerce or business, the particular
persons, corporations, partnerships or associations domiciled in the Philippines and by goods or services for which it is registered, the number and date of the registration, the term
thereof, the date on which the application for registration was received in the Patent Office, embodied substantially under Section 4(d) of Republic Act No. 166, as amended, the erudite
a statement of the requirement that in order to maintain the registration, periodical affidavits jurist opined that the law in point "does not require that the articles of manufacture of the
of use within the specified times hereinafter in section twelve provided, shall be filed, and previous user and late user of the mark should possess the same descriptive properties or
such other data as the rules and regulations may from time to time prescribe. should fall into the same categories as to bar the latter from registering his mark in the
principal register." (supra at page 1026).
xxx xxx xxx
Yet, it is equally true that as aforesaid, the protective mantle of the Trademark Law extends
Sec. 20. Certificate of registration prima facie evidence of validity. A certificate of only to the goods used by the first user as specified in the certificate of registration following
registration of a mark or trade-name shall be prima facie evidence of the validity of the the clear message conveyed by section 20.
registration, the registrant's ownership of the mark or trade-name, and of the registrant's
exclusive right to use the same in connection with the goods, business or services specified How do We now reconcile the apparent conflict between Section 4(d) which was relied upon
in the certificate, subject to any conditions and limitations stated therein. by Justice JBL Reyes in the Sta. Ana case and Section 20? It would seem that Section 4(d)
does not require that the goods manufactured by the second user be related to the goods
Having thus reviewed the laws applicable to the case before Us, it is not difficult to discern produced by the senior user while Section 20 limits the exclusive right of the senior user
from the foregoing statutory enactments that private respondent may be permitted to only to those goods specified in the certificate of registration. But the rule has been laid
register the trademark "BRUTE" for briefs produced by it notwithstanding petitioner's down that the clause which comes later shall be given paramount significance over an
vehement protestations of unfair dealings in marketing its own set of items which are limited anterior proviso upon the presumption that it expresses the latest and dominant purpose.
to: after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap. In as much (Graham Paper Co. vs. National Newspaper Asso. (Mo. App.) 193 S.W. 1003; Barnett vs.
as petitioner has not ventured in the production of briefs, an item which is not listed in its Merchant's L. Ins. Co., 87 Okl. 42; State ex nel Atty. Gen. vs. Toledo, 26 N.E., p. 1061; cited
certificate of registration, petitioner can not and should not be allowed to feign that private by Martin, Statutory Construction Sixth ed., 1980 Reprinted, p. 144). It ineluctably follows
respondent had invaded petitioner's exclusive domain. To be sure, it is significant that that Section 20 is controlling and, therefore, private respondent can appropriate its symbol
petitioner failed to annex in its Brief the so-called "eloquent proof that petitioner indeed for the briefs it manufactures because as aptly remarked by Justice Sanchez in Sterling
intended to expand its mark "BRUT" to other goods" (Page 27, Brief for the Petitioner; Page Products International Inc. vs. Farbenfabriken Bayer (27 SCRA 1214 [1969]):
202, Rollo). Even then, a mere application by petitioner in this aspect does not suffice and
may not vest an exclusive right in its favor that can ordinarily be protected by the Trademark Really, if the certificate of registration were to be deemed as including goods not specified
Law. In short, paraphrasing Section 20 of the Trademark Law as applied to the documentary therein, then a situation may arise whereby an applicant may be tempted to register a
evidence adduced by petitioner, the certificate of registration issued by the Director of trademark on any and all goods which his mind may conceive even if he had never intended
Patents can confer upon petitioner the exclusive right to use its own symbol only to those to use the trademark for the said goods. We believe that such omnibus registration is not
goods specified in the certificate, subject to any conditions and limitations stated therein. contemplated by our Trademark Law. (1226)
This basic point is perhaps the unwritten rationale of Justice Escolin in Philippine Refining
Co., Inc. vs. Ng Lam (115 SCRA 472 [1982]), when he stressed the principle enunciated by Withal, judging from the physical attributes of petitioner's and private respondent's products,
the United States Supreme Court in American Foundries vs. Robertson (269 U.S. 372, 381, there can be no doubt that confusion or the likelihood of deception to the average purchaser
70 L ed 317, 46 Sct. 160) that one who has adopted and used a trademark on his goods is unlikely since the goods are non-competing and unrelated. In upholding registration of the
does not prevent the adoption and use of the same trademark by other for products which brand "ESSO for cigarettes inspite previous appropriation of the same mark "ESSO" for
are of different description. Verily, this Court had the occasion to observe in the 1966 case petroleum products, then Justice, later Chief Justices Teehankee in Esso Standard Eastern,
of George W. Luft Co., Inc. vs. Ngo Guan (18 SCRA 944 [1966]) that no serious objection Inc. vs. Court of Appeals (116 SCRA 336 [1982] said:
was posed by the petitioner therein since the applicant utilized the emblem "Tango" for no
other product than hair pomade in which petitioner does not deal. The Court affirms on the basis of controlling doctrine the appealed decision of the Court of
Appeals reversing that of the Court of First Instance of Manila and dismissing the complaint
This brings Us back to the incidental issue raised by petitioner which private respondent filed by herein petitioner against private respondent for trade infringement for using
sought to belie as regards petitioner's alleged expansion of its business. It may be recalled petitioner's trademark ESSO, since it clearly appears that the goods on which the trademark
that petitioner claimed that it has a pending application for registration of the emblem "BRUT ESSO is used by respondent is non-competing and entirely unrelated to the products of
33" for briefs (page 25, Brief for the Petitioner; page 202, Rollo) to impress upon Us the petitioner so that there is no likelihood of confusion or deception on the part of the
Solomonic wisdom imparted by Justice JBL Reyes in Sta. Ana vs. Maliwat (24 SCRA 1018 purchasing public as to the origin or source of the goods.
[1968]), to the effect that dissimilarity of goods will not preclude relief if the junior user's
goods are not remote from any other product which the first user would be likely to make or xxx xxx xxx
sell (vide, at page 1025). Commenting on the former provision of the Trademark Law now
The trial court, relying on the old cases of Ang vs. Teodoro and Arce & Sons, Inc. vs. Selecta foreign to each other as to make it unlikely that purchasers would think that petitioner is the
Biscuit Company, referring to related products, decided in favor of petitioner and ruled that manufacturer of respondent' goods. The mere fact that one person has adopted and used a
respondent was guilty of infringement of trademark. trademark on his goods does not prevent the adoption and use of the same trademark by
others on unrelated articles of a different kind.
On appeal, respondent Court of Appeals found that there was no trademark infringement
and dismissed the complaint. Reconsideration of the decision having been denied, Petitioner uses the trademark ESSO and holds certificate registration of the trademark for
petitioner appealed to this court by way of certiorari to reverse the decision of the Court of petroleum products, including aviation gasoline, grease, cigarette lighter fluid and other
Appeals and to reinstate the decision of the Court of First Instance of Manila. The Court various products such as plastics, chemicals, synthetics, gasoline solvents, kerosene,
finds no ground for granting the petition. automotive and industrial fuel, bunker fuel, lubricating oil, fertilizers, gas alcohol,
insecticides and the "ESSO Gasul" burner, while respondent's business is solely for the
The law defines infringement as the use without consent of the trademark owner of any manufacture and sale of the unrelated product of cigarettes. The public knows too well that
"reproduction, counterfeit, copy or colorable imitation of any registered mark or tradename petitioner deals solely with petroleum products that there is no possibility that cigarettes with
in connection with the sale, offering for sale, or advertising of any goods, business or ESSO brand will be associated with whatever good name petitioner's ESSO trademark may
services on or in connection with which such use is likely to cause confusion or mistake or have generated. Although petitioner's products are numerous, they are of the same class or
to deceive purchasers or others as to the source or origin of such goods or services, or line of merchandise which are non-competing with respondent's product of cigarettes, which
identity of such business; or reproduce, counterfeit, copy or colorable imitate any director's as pointed out in the appealed judgment is beyond petitioner's "zone of potential or natural
decision on the question of "May petitioner Acoje Mining Company register for the purpose and logical expansion." When a trademark is used by a party for a product in which the
of advertising its product, soy sauce, the trademark LOTUS, there being already in other party does not deal, the use of the same trademark on the latter's product cannot be
existence one such registered in favor of the Philippine Refining Company for its product, validly objected to.
edible oil, it being further shown that the trademark applied for is in smaller type, colored
differently, set on a background which is dissimilar as to yield a distinct appearance?" and xxx xxx xxx
ordered the granting of petitioner's application for registration ruling that "there is quite a
difference between soy sauce and edible oil. If one is in the market for the former, he is not Respondent court correctly ruled that considering the general appearances of each mark as
likely to purchase the latter just because of the trademarks LOTUS" and "when regard is a whole, the possibility of any confusion is unlikely. A comparison of the labels of the
had for the principle that the two trademark in their entirely as they appear in their samples of the goods submitted by the parties shows a great many differences on the
respective labels should be considered in relation to the goods advertised before trademark used. As pointed out by respondent court in its appealed decision, "(A) witness
registration could be denied, the conclusion is inescapable that respondent Director ought to for the plaintiff, Mr. Buhay, admitted that the color of the "ESSO" used by the plaintiff for the
have reached a different conclusion." oval design where the blue word ESSO is contained is the distinct and unique kind of blue.
In his answer to the trial court's question, Mr. Buhay informed the court that the plaintiff
By the same token, in the recent case of Philippine Refining Co., Inc. v. Ng Sam and never used its trademark on any product where the combination of colors is similar to the
Director of Patents, the Court upheld the patent director's registration of the same trademark label of the Esso cigarettes," and "Another witness for the plaintiff, Mr. Tengco, testified that
CAMIA for therein respondent's product of ham notwithstanding its already being used by generally, the plaintiff's trademark comes all in either red, white, blue or any combination of
therein petitioner for a wide range of products: lard; butter, cooking oil, abrasive detergents, the three colors. It is to be pointed out that not even a shade of these colors appears on the
polishing material and soap of all kinds. The Court, after noting that the same CAMIA trademark of the appellant's cigarette. The only color that the appellant uses in its trademark
trademark had been registered by two other companies, Everbright Development Company is green. (339; 341-346)
and F.E. Zuellig, Inc. for their respective products of thread and yarn (for the former) and
textiles, embroideries and laces (for the latter) ruled that "while ham and some of the The glaring discrepancies between the two products had been amply portrayed to such an
products of petitioner are classified under Class 47 (Foods and Ingredients of Food), this extent that indeed, "a purchaser who is out in the market for the purpose of buying
alone cannot serve as the decisive factor in the resolution of whether or not they are related respondent's BRUTE brief would definitely be not mistaken or misled into buying BRUT after
goods. Emphasis should be on the similarity of the arbitrary classification or general shave lotion or deodorant" as categorically opined in the decision of the Director of Patents
description of their properties or characteristics. The Court, therefore, concluded that "In relative to the inter-partes case. (supra, at page 7).
fine, We hold that the businesses of the parties are noncompetitive and their products so
unrelated that the use of identical trademarks is not likely to give rise to confusion, much Petitioner's bid to persuade Us into accepting the doctrines announced in the
less cause damage to petitioner. aforementioned cases of Sta. Ana vs. Maliwat and Ang vs. Teodoro hardly inspire belief. In
Sta Ana, it was admitted that the marks were confusingly similar which is not so in the case
In the situation before us, the goods are obviously different from each other with at bar. In the 1942 case of Ang vs. Teodoro, Justice Ozaeta noted that pants and shirts are
"absolutely no iota of similitude" as stressed in respondent court's judgment. They are so similar to shoes and slippers within the meaning of Sections 3, 7, 11, 13 and 20 of Act No.
666 which was the old Trademark Law enacted on March 6, 1903 prior to the present law. user in the certificate, subject to any conditions or limitations stated therein. Moreover, the
Obviously, the conclusion reached by the ponente in the Ang case may not now be utilized two products are so dissimilar that a purchaser of one (a brief) would not be misled or
by analogy to the case at bar due to variance in the factual and legal milieu. Neither can we mistaken into buying the other (such as an aftershave).
agree with petitioner that the ruling in La Chemise Lacoste, S.A. vs. Fernandez (129 SCRA
373 [1984]) is applicable to the controversy at hand. The case adverted to by petitioner
involved the same mark for the same class of shirts manufactured by the parties therein. G.R. No. 120900 July 20, 2000
It would appear that as a consequence of this discourse, there still remains hanging in mid- CANON KABUSHIKI KAISHA vs. CA and NSR RUBBER CORPORATION
air the unanswered puzzle as to why an aspiring commercial enterprise, given the infinite
choices available to it of names for the intend product, would select a trademark or
tradename which somewhat resembles an existing emblem that had established goodwill. Before us is a petition for review that seeks to set aside the Decision1 dated February 21,
Our opinion hereinbefore expressed could even open the floodgates to similar incursions in 1995 of the Court of Appeals in CA-GR SP No. 30203, entitled "Canon Kabushiki Kaisha vs.
the future when we interpreted Section 20 of the Trademark Law as an implicit permission to NSR Rubber Corporation" and its Resolution dated June 27, 1995 denying the motion for
a manufacturer to venture into the production of goods and allow that producer to reconsideration of herein petitioner Canon Kabushiki Kaisha (petitioner).
appropriate the brand name of the senior registrant on goods other than those stated in the
certificate of registration. On January 15, 1985, private respondent NSR Rubber Corporation (private respondent)
filed an application for registration of the mark CANON for sandals in the Bureau of Patents,
But these nagging and disturbing points cannot win the day for petitioner, although We must Trademarks, and Technology Transfer (BPTTT). A Verified Notice of Opposition was filed by
hasten to add that in the final denouement, Our apprehensions in this regard are not entirely petitioner, a foreign corporation duly organized and existing under the laws of Japan,
irreversible since Section 4(d) and 20 of the law in question may still be subjected to alleging that it will be damaged by the registration of the trademark CANON in the name of
legislative modification in order to protect the original user of the symbol. private respondent. The case was docketed as Inter Partes Case No. 3043.
WHEREFORE, the petition is hereby DISMISSED without pronouncement as to costs. Petitioner moved to declare private respondent in default for its failure to file its answer
within the prescribed period. The BPTTT then declared private respondent in default and
allowed petitioner to present its evidence ex-parte.
Based on the records, the evidence presented by petitioner consisted of its certificates of
registration for the mark CANON in various countries covering goods belonging to class 2
(paints, chemical products, toner, and dye stuff). Petitioner also submitted in evidence its
Faberge v IAC Digest Philippine Trademark Registration No. 39398, showing its ownership over the trademark
CANON also under class 2.
G.R. No. 71189, November 4, 1992
Facts of the Case: On November 10, 1992, the BPTTT issued its decision dismissing the opposition of
Co Beng Kay applied for the registration of the trademark 'BRUTE' to be used it its petitioner and giving due course to private respondent's application for the registration of the
underwear (briefs) products. The petitioner opposed on the ground that there is similarity trademark CANON. On February 16, 1993, petitioner appealed the decision of the BPTTT
with their own symbol (BRUT, Brut33 & Device) used on its aftershave, deodorant, cream with public respondent Court of Appeals that eventually affirmed the decision of BPTTT.
shave, hairspray and hair shampoo/soaps and that it would cause injury to their business Hence, this petition for review.
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 Petitioner anchors this instant petition on these grounds:
this was further affirmed by the Court of Appeals.
A) PETITIONER IS ENTITLED TO EXCLUSIVE USE OF THE MARK CANON BECAUSE IT
Issue: Is there confusing similarity between the challenged marks and that its use would IS ITS TRADEMARK AND IS USED ALSO FOR FOOTWEAR.
likely cause confusion on the part of the purchasers?
B) TO ALLOW PRIVATE RESPONDENT TO REGISTER CANON FOR FOOTWEAR IS TO
HELD: NONE. Co Beng Kay may rightly appropriate the mark. In this case Sec. 20 PREVENT PETITIONER FROM USING CANON FOR VARIOUS KINDS OF FOOTWEAR,
(Philippine Intellectual Property Law) is controlling. The certificate of registration issued WHEN IN FACT, PETITIONER HAS EARLIER USED SAID MARK FOR SAID GOODS.
confers the exclusive right to use its own symbol only to those goods specified by the first
C) PETITIONER IS ALSO ENTITLED TO THE RIGHT TO EXCLUSIVELY USE CANON TO possible that the public could presume that petitioner would also produce a wide variety of
PREVENT CONFUSION OF BUSINESS. footwear considering the diversity of its products marketed worldwide.
D) PETITIONER IS ALSO ENTITLED TO THE EXCLUSIVE USE OF CANON BECAUSE IT We do not agree. Even in this instant petition, except for its bare assertions, petitioner failed
FORMS PART OF ITS CORPORATE NAME, PROTECTED BY THE PARIS to attach evidence that would convince this Court that petitioner has also embarked in the
CONVENTION.2 production of footwear products. We quote with approval the observation of the Court of
Appeals that:
The BPTTT and the Court of Appeals share the opinion that the trademark "CANON" as
used by petitioner for its paints, chemical products, toner, and dyestuff, can be used by "The herein petitioner has not made known that it intends to venture into the business of
private respondent for its sandals because the products of these two parties are dissimilar. producing sandals. This is clearly shown in its Trademark Principal Register (Exhibit "U")
Petitioner protests the appropriation of the mark CANON by private respondent on the where the products of the said petitioner had been clearly and specifically described as
ground that petitioner has used and continues to use the trademark CANON on its wide "Chemical products, dyestuffs, pigments, toner developing preparation, shoe polisher,
range of goods worldwide. Allegedly, the corporate name or tradename of petitioner is also polishing agent". It would be taxing one's credibility to aver at this point that the production
used as its trademark on diverse goods including footwear and other related products like of sandals could be considered as a possible "natural or normal expansion" of its business
shoe polisher and polishing agents. To lend credence to its claim, petitioner points out that it operation".8
has branched out in its business based on the various goods carrying its trademark
CANON3, including footwear which petitioner contends covers sandals, the goods for which In Faberge, Incorporated vs. Intermediate Appellate Court,9 the Director of patents allowed
private respondent sought to register the mark CANON. For petitioner, the fact alone that its the junior user to use the trademark of the senior user on the ground that the briefs
trademark CANON is carried by its other products like footwear, shoe polisher and polishing manufactured by the junior user, the product for which the trademark BRUTE was sought to
agents should have precluded the BPTTT from giving due course to the application of be registered, was unrelated and non-competing with the products of the senior user
private respondent. consisting of after shave lotion, shaving cream, deodorant, talcum powder, and toilet soap.
The senior user vehemently objected and claimed that it was expanding its trademark to
We find the arguments of petitioner to be unmeritorious. Ordinarily, the ownership of a briefs and argued that permitting the junior user to register the same trademark would allow
trademark or tradename is a property right that the owner is entitled to protect4 as the latter to invade the senior user's exclusive domain. In sustaining the Director of Patents,
mandated by the Trademark Law.5 However, when a trademark is used by a party for a this Court said that since "(the senior user) has not ventured in the production of briefs, an
product in which the other party does not deal, the use of the same trademark on the latter's item which is not listed in its certificate of registration, (the senior user), cannot and should
product cannot be validly objected to.6 not be allowed to feign that (the junior user) had invaded (the senior user's) exclusive
domain."10 We reiterated the principle that the certificate of registration confers upon the
A review of the records shows that with the order of the BPTTT declaring private respondent trademark owner the exclusive right to use its own symbol only to those goods specified in
in default for failure to file its answer, petitioner had every opportunity to present ex-parte all the certificate, subject to the conditions and limitations stated therein.11 Thus, the exclusive
of its evidence to prove that its certificates of registration for the trademark CANON cover right of petitioner in this case to use the trademark CANON is limited to the products
footwear. The certificates of registration for the trademark CANON in other countries and in covered by its certificate of registration.
the Philippines as presented by petitioner, clearly showed that said certificates of
registration cover goods belonging to class 2 (paints, chemical products, toner, dyestuff). On Petitioner further argues that the alleged diversity of its products all over the world makes it
this basis, the BPTTT correctly ruled that since the certificate of registration of petitioner for plausible that the public might be misled into thinking that there is some supposed
the trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private connection between private respondent's goods and petitioner. Petitioner is apprehensive
respondent can use the trademark CANON for its goods classified as class 25 (sandals). that there could be confusion as to the origin of the goods, as well as confusion of business,
Clearly, there is a world of difference between the paints, chemical products, toner, and if private respondent is allowed to register the mark CANON. In such a case, petitioner
dyestuff of petitioner and the sandals of private respondent. would allegedly be immensely prejudiced if private respondent would be permitted to take "a
free ride on, and reap the advantages of, the goodwill and reputation of petitioner Canon".12
Petitioner counters that notwithstanding the dissimilarity of the products of the parties, the In support of the foregoing arguments, petitioner invokes the rulings in Sta. Ana vs.
trademark owner is entitled to protection when the use of by the junior user "forestalls the Maliwat13 , Ang vs. Teodoro14 and Converse Rubber Corporation vs. Universal Rubber
normal expansion of his business".7 Petitioner's opposition to the registration of its Products, Inc.15.
trademark CANON by private respondent rests upon petitioner's insistence that it would be
precluded from using the mark CANON for various kinds of footwear, when in fact it has The likelihood of confusion of goods or business is a relative concept, to be determined only
earlier used said mark for said goods. Stretching this argument, petitioner claims that it is according to the particular, and sometimes peculiar, circumstances of each case.16 Indeed,
in trademark law cases, even more than in other litigation, precedent must be studied in the
light of the facts of the particular case.17 Contrary to petitioner's supposition, the facts of "A tradename shall be protected in all the countries of the Union without the obligation of
this case will show that the cases of Sta. Ana vs. Maliwat,, Ang vs. Teodoro and Converse filing or registration, whether or not it forms part of a trademark."
Rubber Corporation vs. Universal Rubber Products, Inc. are hardly in point. The just cited
cases involved goods that were confusingly similar, if not identical, as in the case of Public respondents BPTTT and the Court of Appeals allegedly committed an oversight when
Converse Rubber Corporation vs. Universal Rubber Products, Inc. Here, the products they required petitioner to prove that its mark is a well-known mark at the time the
involved are so unrelated that the public will not be misled that there is the slightest nexus application of private respondent was filed. Petitioner questions the applicability of the
between petitioner and the goods of private respondent. guidelines embodied in the Memorandum of then Minister of Trade and Industry Roberto
Ongpin (Ongpin) dated October 25, 1983 which according to petitioner implements Article
In cases of confusion of business or origin, the question that usually arises is whether the 6bis of the Paris Convention, the provision referring to the protection of trademarks. The
respective goods or services of the senior user and the junior user are so related as to likely memorandum reads:
cause confusion of business or origin, and thereby render the trademark or tradenames
confusingly similar.18 Goods are related when they belong to the same class or have the "a) the mark must be internationally known;
same descriptive properties; when they possess the same physical attributes or essential
characteristics with reference to their form, composition, texture or quality.19 They may also b) the subject of the right must be a trademark, not a patent or copyright or anything else;
be related because they serve the same purpose or are sold in grocery stores.20
c) the mark must be for use in the same or similar class of goods;
Thus, in Esso Standard Eastern, Inc. vs. Court of Appeals, this Court ruled that the
petroleum products on which the petitioner therein used the trademark ESSO, and the d) the person claiming must be the owner of the mark."
product of respondent, cigarettes are "so foreign to each other as to make it unlikely that
purchasers would think that petitioner is the manufacturer of respondent's goods"21. According to petitioner, it should not be required to prove that its trademark is well-known
Moreover, the fact that the goods involved therein flow through different channels of trade and that the products are not similar as required by the quoted memorandum. Petitioner
highlighted their dissimilarity, a factor explained in this wise: emphasizes that the guidelines in the memorandum of Ongpin implement Article 6bis of the
Paris Convention, the provision for the protection of trademarks, not tradenames. Article
"The products of each party move along and are disposed through different channels of 6bis of the Paris Convention states:
distribution. The (petitioner's) products are distributed principally through gasoline service
and lubrication stations, automotive shops and hardware stores. On the other hand, the (1) The countries of the Union undertake, either administratively if their legislation so
(respondent's) cigarettes are sold in sari-sari stores, grocery store, and other small permits, or at the request of an interested party, to refuse or to cancel the registration and to
distributor outlets. (Respondnet's) cigarettes are even peddled in the streets while prohibit the use of a trademark which constitutes a reproduction, imitation or translation,
(petitioner's) 'gasul' burners are not. Finally, there is a marked distinction between oil and liable to create confusion, of a mark considered by the competent authority of the country of
tobacco, as well as between petroleum and cigarettes. Evidently, in kind and nature the registration or use to be well-known in that country as being already the mark of a person
products of (respondent) and of (petitioner) are poles apart."22 entitled to the benefits of the present Convention and used for identical or similar goods.
These provisions shall also apply when the essential part of the mark constitutes a
Undoubtedly, the paints, chemical products, toner and dyestuff of petitioner that carry the reproduction of any such well-known mark or an imitation liable to create confusion
trademark CANON are unrelated to sandals, the product of private respondent. We agree therewith.
with the BPTTT, following the Esso doctrine, when it noted that the two classes of products
in this case flow through different trade channels. The products of petitioner are sold (2) A period of at least five years from the date of registration shall be allowed for seeking
through special chemical stores or distributors while the products of private respondent are the cancellation of such a mark. The countries of the Union may provide for a period within
sold in grocery stores, sari-sari stores and department stores.23 Thus, the evident disparity which the prohibition of use must be sought.
of the products of the parties in the case at bar renders unfounded the apprehension of
petitioner that confusion of business or origin might occur if private respondent is allowed to (3) No time limit shall be fixed for seeking the cancellation or the prohibition of the use of
use the mark CANON. marks or used in bad faith."
In its bid to bar the registration of private respondent of the mark CANON, petitioner invokes Petitioner insists that what it seeks is the protection of Article 8 of the Paris Convention, the
the protective mantle of the Paris Convention. Petitioner asserts that it has the exclusive provision that pertains to the protection of tradenames. Petitioner believes that the
right to the mark CANON because it forms part of its corporate name or tradename, appropriate memorandum to consider is that issued by the then Minister of Trade and
protected by Article 8 of the Paris Convention, to wit: Industry, Luis Villafuerte, directing the Director of patents to:
"reject all pending applications for Philippine registration of signature and other world This office is not unmindful that in the Treaty of Paris for the Protection of Intellectual
famous trademarks by applicants other than the original owners or users." Property regarding well-known marks and possible application thereof in this case.
Petitioner, as this office sees it, is trying to seek refuge under its protective mantle, claiming
As far as petitioner is concerned, the fact that its tradename is at risk would call for the that the subject mark is well known in this country at the time the then application of NSR
protection granted by Article 8 of the Paris Convention. Petitioner calls attention to the fact Rubber was filed.
that Article 8, even as embodied in par. 6, sec. 37 of RA 166, mentions no requirement of
similarity of goods. Petitioner claims that the reason there is no mention of such a However, the then Minister of Trade and Industry, the Hon. Roberto V. Ongpin, issued a
requirement, is "because there is a difference between the referent of the name and that of memorandum dated 25 October 1983 to the Director of Patents, a set of guidelines in the
the mark"24 and that "since Art. 8 protects the tradename in the countries of the Union, such implementation of Article 6bis (sic) of the Treaty of Paris. These conditions are:
as Japan and the Philippines, Petitioner's tradename should be protected here."25
a) the mark must be internationally known;
We cannot uphold petitioner's position.
b) the subject of the right must be a trademark, not a patent or copyright or anything else;
The term "trademark" is defined by RA 166, the Trademark Law, as including "any word,
name, symbol, emblem, sign or device or any combination thereof adopted and used by a c) the mark must be for use in the same or similar kinds of goods; and
manufacturer or merchant to identify his goods and distinguish them for those
manufactured, sold or dealt in by others."26 Tradename is defined by the same law as d) the person claiming must be the owner of the mark (The Parties Convention Commentary
including "individual names and surnames, firm names, tradenames, devices or words used on the Paris Convention. Article by Dr. Bogsch, Director General of the World Intellectual
by manufacturers, industrialists, merchants, agriculturists, and others to identify their Property Organization, Geneva, Switzerland, 1985)'
business, vocations, or occupations; the names or titles lawfully adopted and used by
natural or juridical persons, unions, and any manufacturing, industrial, commercial, From the set of facts found in the records, it is ruled that the Petitioner failed to comply with
agricultural or other organizations engaged in trade or commerce."27 Simply put, a trade the third requirement of the said memorandum that is the mark must be for use in the same
name refers to the business and its goodwill; a trademark refers to the goods.28 or similar kinds of goods. The Petitioner is using the mark "CANON" for products belonging
to class 2 (paints, chemical products) while the Respondent is using the same mark for
The Convention of Paris for the Protection of Industrial Property, otherwise known as the sandals (class 25). Hence, Petitioner's contention that its mark is well-known at the time the
Paris Convention, of which both the Philippines and Japan, the country of petitioner, are Respondent filed its application for the same mark should fail. "32
signatories29, is a multilateral treaty that seeks to protect industrial property consisting of
patents, utility models, industrial designs, trademarks, service marks, trade names and Petitioner assails the application of the case of Kabushi Kaisha Isetan vs. Intermediate
indications of source or appellations of origin, and at the same time aims to repress unfair Appellate Court to this case. Petitioner points out that in the case of Kabushi Kaisha Isetan
competition.30 We agree with public respondents that the controlling doctrine with respect vs. Intermediate Appellate Court, petitioner therein was found to have never at all conducted
to the applicability of Article 8 of the Paris Convention is that established in Kabushi Kaisha its business in the Philippines unlike herein petitioner who has extensively conducted its
Isetan vs. Intermediate Appellate Court.31 As pointed out by the BPTTT: business here and also had its trademark registered in this country. Hence, petitioner
submits that this factual difference renders inapplicable our ruling in the case of Kabushi
"Regarding the applicability of Article 8 of the Paris Convention, this Office believes that Kaisha Isetan vs. Intermediate Appellate Court that Article 8 of the Paris Convention does
there is no automatic protection afforded an entity whose tradename is alleged to have been not automatically extend protection to a tradename that is in danger of being infringed in a
infringed through the use of that name as a trademark by a local entity. country that is also a signatory to said treaty. This contention deserves scant consideration.
Suffice it to say that the just quoted pronouncement in the case of Kabushi Kaisha Isetan vs.
In Kabushiki Kaisha Isetan vs. The Intermediate Appellate Court, et. al., G.R. No. 75420, 15 Intermediate Appellate Court, was made independent of the factual finding that petitioner in
November 1991, the Honorable Supreme Court held that: said case had not conducted its business in this country.
'The Paris Convention for the Protection of Industrial Property does not automatically WHEREFORE, in view of the foregoing, the instant petition for review on certiorari is
exclude all countries of the world which have signed it from using a tradename which DENIED for lack of merit.
happens to be used in one country. To illustrate if a taxicab or bus company in a town in
the United Kingdom or India happens to use the tradename "Rapid Transportation", it does
not necessarily follow that "Rapid" can no longer be registered in Uganda, Fiji, or the CANON KABUSHIKI KAISHA V. CA (G.R. NO. 120900)
Philippines.
Facts:
246 CORPORATION, doing business under the name and style of ROLEX MUSIC
Respondent NSR Rubber filed an application for registration of the mark CANON for LOUNGE vs. HON. REYNALDO B. DAWAY, in his capacity as Presiding Judge of
sandals. Petitioner Canon, a Japanese corporation, opposed alleging it will be damaged by Branch 90 of the Regional Trial Court of Quezon City, MONTRES ROLEX S.A. and
the registration. Petitioner presented evidence that it was the owner of the mark CANON in ROLEX CENTRE PHIL. LIMITED
various countries and in the Philippines for goods such as paints, chemical products, toner
and dye stuff. BPTTT dismissed the opposition and gave due course to respondents This is a petition for review on certiorari under Rule 45 of the 1997 Rules of Civil Procedure
application. CA affirmed. Petitioner invokes Article 8 of the Paris Convention which affords assailing the November 28, 2002 Decision1 of the Court of Appeals in CA-G.R. SP No.
protection to a tradename whether or not it forms part of a trademark. 64660 which dismissed the petition for certiorari filed by petitioner, as well as the
Resolution2 dated February 13, 2003 denying its motion for reconsideration.
Issue:
The undisputed facts show that on November 26, 1998, respondents Montres Rolex S.A.
Whether petitioner may be afforded protection of its trade name. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and Crown Device, filed
against petitioner 246 Corporation the instant suit for trademark infringement and damages
Ruling: NO. with prayer for the issuance of a restraining order or writ of preliminary injunction3 before
the Regional Trial Court of Quezon City, Branch 90. Respondents alleged that sometime in
The term trademark is defined by RA 166, the Trademark Law, as including any word, July 1996, petitioner adopted and, since then, has been using without authority the mark
name, symbol, emblem, sign or device or any combination thereof adopted and used by a "Rolex" in its business name "Rolex Music Lounge" as well as in its newspaper
manufacturer or merchant to identify his goods and distinguish them for those advertisements as "Rolex Music Lounge, KTV, Disco & Party Club."
manufactured, sold or dealt in by others. Tradename is defined by the same law as
including individual names and surnames, firm names, tradenames, devices or words used In its answer raising special affirmative defenses, petitioner argued that respondents have
by manufacturers, industrialists, merchants, agriculturists, and others to identify their no cause of action because no trademark infringement exist; that no confusion would arise
business, vocations, or occupations; the names or titles lawfully adopted and used by from the use by petitioner of the mark "Rolex" considering that its entertainment business is
natural or juridical persons, unions, and any manufacturing, industrial, commercial, totally unrelated to the items catered by respondents such as watches, clocks, bracelets
agricultural or other organizations engaged in trade or commerce. Simply put, a trade name and parts thereof. It also contended that the complaint was not properly verified and certified
refers to the business and its goodwill; a trademark refers to the goods. against forum shopping considering that Atty. Alonzo Ancheta, the counsel of record of
respondents who signed the verification and certification, was not authorized to represent
The Convention of Paris for the Protection of Industrial Property, otherwise known as the respondents.4
Paris Convention, of which both the Philippines and Japan, the country of petitioner, are
signatories, is a multilateral treaty that seeks to protect industrial property consisting of On July 21, 2000, petitioner filed a motion for preliminary hearing on its affirmative
patents, utility models, industrial designs, trademarks, service marks, trade names and defenses.5 Subsequently, on motion of petitioner, the trial court issued a subpoena ad
indications of source or appellations of origin, and at the same time aims to repress unfair testificandum requiring Atty. Alonzo Ancheta to appear at the preliminary hearing.6
competition. We agree with public respondents that the controlling doctrine with respect to Respondents, in the meantime, filed a Comment and Opposition7 to the motion for
the applicability of Article 8 of the Paris Convention is that established in Kabushi Kaisha preliminary hearing and a motion to quash the subpoena ad testificandum.
Isetan vs. IAC. As pointed out by the BPTTT: Regarding the applicability of Article 8 of the
Paris Convention, this Office believes that there is no automatic protection afforded an entity In an Order dated October 27, 2000, the trial court quashed the subpoena ad testificandum
whose tradename is alleged to have been infringed through the use of that name as a and denied petitioners motion for preliminary hearing on affirmative defenses with motion to
trademark by a local entity. To illustrate if a taxicab or bus company in a town in the United dismiss.8
Kingdom or India happens to use the tradename Rapid Transportation, it does not
necessarily follow that Rapid can no longer be registered in Uganda, Fiji, or the With the denial of the motion for reconsideration on March 16, 2001, petitioner filed a
Philippines. petition for certiorari with the Court of Appeals contending that the trial court gravely abused
its discretion in issuing the October 27, 2000 and March 16, 2001 orders.
Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)
On November 28, 2002, the Court of Appeals dismissed the petition. The motion for
reconsideration filed by petitioner was denied. Hence, the instant petition anchored on the
G.R. No. 157216 November 20, 2003 following grounds:
I
IV
IN ISSUING THE ASSAILED DECISIONS, THE HONORABLE COURT OF APPEALS
PERFUNCTORILY BRUSHED ASIDE THE CONTROLLING PRECEDENTS LAID DOWN IN ARBITRARILY AND CAPRICIOUSLY RULING THAT ATTY. ALONZO ANCHETA
BY THIS HONORABLE COURT IN ESSO STANDARD EASTERN, INC. VS. COURT OF PROPERLY VERIFIED AND CERTIFIED PRIVATE RESPONDENTS COMPLAINT A QUO,
APPEALS AND UNITED CIGARETTE CORPORATION AND OTHER COMPANION CASES THE HONORABLE COURT OF APPEALS VIOLATED NOT ONLY PETITIONERS
HOLDING THAT NO TRADEMARK INFRINGEMENT CAN POSSIBLY OCCUR WHERE SUBSTANTIVE DUE PROCESS RIGHTS, BUT ALSO THE DOCTRINE OF SEPARATE
THE CONTENDING PARTIES DEAL WITH GOODS AND SERVICES THAT ARE TOTALLY CORPORATE PERSONALITY; CONSIDERING THAT THE RECORDS OF THIS CASE IS
UNRELATED AND NON-COMPETING WITH EACH OTHER. (sic) COMPLETELY BEREFT AND DEVOID OF ANY DULY EXECUTED SPECIAL POWER
OF ATTORNEY, EMANATING FROM PRIVATE RESPONDENTS, WHICH EXPLICITLY
II AND SPECIFICALLY AUTHORIZES ATTY. ALONZO ANCHETA TO REPRESENT PRIVATE
RESPONDENTS MONTRES ROLEX S.A. IN THE FILING OF THE COMPLAINT A QUO.
IN ARBITRARILY AND CAPRICIOUSLY RULING THAT THE ISSUES RAISED IN BY REASON THEREOF, PRIVATE RESPONDENTS COULD NOT BE DEEMED TO HAVE
PETITIONERS CERTIORARI PETITION ARE QUESTIONS OF FACT, THE HONORABLE VOLUNTARILY APPEARED BEFORE THE RESPONDENT JUDGE; CONSEQUENTLY,
COURT OF APPEALS VIOLATED NOT ONLY PETITIONERS SUBSTANTIVE DUE THE TRIAL COURT COULD NOT HAVE VALIDLY ACQUIRED JURISDICTION OVER THE
PROCESS RIGHTS BUT ALSO THE WELL-SETTLED RULE THAT THE ALLEGATIONS PERSON OF PRIVATE RESPONDENTS.
OF THE COMPLAINT IS HYPOTHETICALLY ADMITTED WHEN THE MOTION TO
DISMISS IS GROUNDED UPON LACK OF CAUSE OF ACTION. MOREOVER, V
INDEPENDENT OF THE HYPOTHETICALLY ADMITTED FACTS EMBODIED IN THE
COMPLAINT A QUO, THERE ARE SELF-EVIDENT FACTS AND IMPLIEDLY ADMITTED IN ARBITRARILY AND CAPRICIOUSLY AFFIRMING RESPONDENT JUDGES QUASHAL
FACTS CONTAINED IN PRIVATE RESPONDENTS PLEADINGS THAT WOULD CLEARLY OF THE SUBPOENA DATED 14 AUGUST 2000 DIRECTED AGAINST ATTY. ALONZO
AND UNMISTAKABLY SHOW PRIVATE RESPONDENTS LACK OF CAUSE OF ACTION ANCHETA, THE HONORABLE COURT OF APPEALS VIOLATED NOT ONLY
AGAINST HEREIN PETITIONER. PETITIONERS SUBSTANTIVE DUE PROCESS RIGHTS, BUT ALSO SECTION 9, RULE
132 AND SECTION 7 RULE 133 OF THE 1989 REVISED RULES ON EVIDENCE, AND
III THE RULING OF THIS HONORABLE COURT IN THE CASE OF PEOPLE VS. RIVERA.9
THE HONORABLE COURT OF APPEALS VIOLATED PETITIONERS RIGHT TO Simply put, the issues are as follows (1) whether the trial court denied not only petitioners
SUBSTANTIVE DUE PROCESS WHEN IT ARBITRARILY AND CAPRICIOUSLY RULED motion for preliminary hearing on its affirmative defenses but its motion to dismiss as well;
THAT WHAT WAS SPECIFICALLY DENIED IN THE ASSAILED OCTOBER 20, 2000 (2) if the answer is in the affirmative, whether or not the trial court gravely abused its
ORDER IS PETITIONERS MOTION FOR PRELIMINARY HEARING ON DEFENDANTS discretion in denying said motions; and (3) whether the trial court gravely abused its
AFFIRMATIVE DEFENSES AND NOT PETITIONERS MOTION TO DISMISS PER SE discretion in quashing the subpoena ad testificandum issued against Atty. Ancheta.
CONSIDERING THAT:
Anent the first issue, we find that what was denied in the order dated October 27, 2000 was
A. THERE IS ABSOLUTELY NOTHING IN THE ORDER DATED OCTOBER 20, 2000 OF not only the motion for preliminary hearing but the motion to dismiss as well. A reading of
RESPONDENT JUDGE WHICH SUGGESTS THAT THE RESOLUTION OF PETITIONERS the dispositive portion of said order shows that the trial court neither qualified its denial nor
MOTION TO DISMISS PER SE WAS HELD IN ABEYANCE BY THE RESPONDENT held in abeyance the ruling on petitioners motion to dismiss thus
JUDGE. HENCE THE SAID ORDER DATED OCTOBER 20, 2000 ALSO CONSTITUTES A
DENIAL ON THE MERITS OF PETITIONERS MOTION TO DISMISS PER SE AND NOT IN VIEW OF THE FOREGOING, the aforecited Motion To Quash Subpoena Ad
MERELY OF PETITIONERS MOTION FOR PRELIMINARY HEARING THEREON. Testificandum is granted; and the aforecited Motion For Preliminary Hearing On Defendants
Affirmative Defenses With Motion To dismiss The Instant Complaint Based On Said
B. PRIVATE RESPONDENTS COMMENT AND OPPOSITION DATED 11 AUGUST 2000, Affirmative Defenses is denied.10 (Emphasis supplied)
WHICH WAS CITED AND SUSTAINED BY RESPONDENT JUDGE, CLEARLY
TRAVERSED THE MERITS OF THE GROUNDS FOR PETITIONERS MOTION TO In issuing the assailed order, the trial court ruled on the merits of petitioners Motion to
DISMISS PER SE. HENCE, THE SAID 20 OCTOBER 2000 ORDERS DENIAL OF Dismiss vis--vis respondents Comment and Opposition which clearly traversed the
PETITIONERS MOTION IS NOT LIMITED TO THE MOTION FOR PRELIMINARY affirmative defenses raised by petitioner, to wit:
HEARING BUT ALSO CONSTITUTES A DENIAL OF PETITIONERS MOTION TO
DISMISS PER SE. After carefully going over the pleadings, this Court finds, on the first motion that the
arguments raised in the said motion and the reply filed in connection thereto appear to be
meritorious; and on the second motion, that the arguments raised in the comments and the Philippines with respect to goods or services which are not similar to those with respect
opposition and the rejoinder filed by the plaintiffs likewise appear to be meritorious.11 to which registration is applied for: Provided, That use of the mark in relation to those goods
or services would indicate a connection between those goods or services, and the owner of
Moreover, it is presumed that all matters within an issue raised in a case were passed upon the registered mark: Provided, further, That the interest of the owner of the registered mark
by the court. In the absence of evidence to the contrary, the presumption is that the court a are likely to be damaged by such use; (Emphasis supplied)
quo discharged its task properly.12
A junior user of a well-known mark on goods or services which are not similar to the goods
In Municipality of Bian Laguna v. Court of Appeals,13 decided under the old Rules of Civil or services, and are therefore unrelated, to those specified in the certificate of registration of
Procedure, it was held that a preliminary hearing permitted under Rule 16, Section 5, is not the well-known mark is precluded from using the same on the entirely unrelated goods or
mandatory even when the same is prayed for. It rests largely on the sound discretion of the services, subject to the following requisites, to wit:
trial court, thus
1. The mark is well-known internationally and in the Philippines. Under Rule 102 of the
SEC. 5. Pleading grounds as affirmative defenses. Any of the grounds for dismissal Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or
provided for in this Rule, except improper venue, may be pleaded as an affirmative defense, Stamped Containers,17 in determining whether a mark is well known, the following criteria
and a preliminary hearing may be had thereon as if a motion to dismiss had been filed. or any combination thereof may be taken into account:
(Emphasis supplied)
(a) the duration, extent and geographical area of any use of the mark, in particular, the
The use of the word "may" in the aforequoted provision shows that such a hearing is not a duration, extent and geographical area of any promotion of the mark, including advertising
matter of right demandable from the trial court; it is not mandatory but discretionary. "May" is or publicity and presentation, at fairs or exhibitions, of the goods and/or services to which
an auxiliary verb indicating liberty, opportunity, permission and possibility.14 Such the mark applies;
interpretation is specifically stated under the 1997 Rules of Civil Procedure. Rule 16,
Section 6, now provides that a grant of a preliminary hearing rests on the sound discretion (b) the market share in the Philippines and in other countries, of the goods and/or services
of the court, to wit to which the mark applies;
SEC. 6. Pleading grounds as affirmative defenses. If no motion to dismiss has been filed, (c) the degree of the inherent or acquired distinction of the mark;
any of the grounds for dismissal provided for in this Rule may be pleaded as an affirmative
defense in the answer and, in the discretion of the court, a preliminary hearing may be had (d) the quality-image or reputation acquired by the mark;
thereon as if a motion to dismiss had been filed. (Emphasis supplied)
(e) the extent to which the mark has been registered in the world;
In the case at bar, the Court of Appeals did not err in finding that no abuse of discretion
could be ascribed to the trial courts denial of petitioners motion for preliminary hearing on (f) the exclusivity of the registration attained by the mark in the world;
its affirmative defenses with motion to dismiss. The issue of whether or not a trademark
infringement exists, is a question of fact that could best be determined by the trial court. (g) the extent to which the mark has been used in the world;
Under the old Trademark Law15 where the goods for which the identical marks are used are (h) the exclusivity of use attained by the mark in the world;
unrelated, there can be no likelihood of confusion and there is therefore no infringement in
the use by the junior user of the registered mark on the entirely different goods.16 This (i) the commercial value attributed to the mark in the world;
ruling, however, has been to some extent, modified by Section 123.1(f) of the Intellectual
Property Code (Republic Act No. 8293), which took effect on January 1, 1998. The said (j) the record of successful protection of the rights in the mark;
section reads:
(k) the outcome of litigations dealing with the issue of whether the mark is a well-known
Sec. 123. Registrability. 123.1. A mark cannot be registered if it: mark; and
xxx xxx xxx (l) the presence of absence of identical or similar marks validly registered for or used on
identical or similar goods or services and owned by persons other than the person claiming
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark that his mark is a well-known mark.
considered well-known in accordance with the preceding paragraph, which is registered in
2. The use of the well-known mark on the entirely unrelated goods or services would FACTS:
indicate a connection between such unrelated goods or services and those goods or Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and
services specified in the certificate of registration in the well known mark. This requirement Crown Device, filed against 246 Corporation the instant suit for trademark infringement and
refers to the likelihood of confusion of origin or business or some business connection or damages with prayer for the issuance of a restraining order or writ of preliminary
relationship between the registrant and the user of the mark. injunctionbefore the RTC of QC
3. The interests of the owner of the well-known mark are likely to be damaged. For instance, o July 1996: 246 adopted and , since then, has been using without authority the mark
if the registrant will be precluded from expanding its business to those unrelated good or Rolex in its business name Rolex Music Lounge as well as in its newspaper
services, or if the interests of the registrant of the well-known mark will be damaged advertisements as Rolex Music Lounge, KTV, Disco & Party Club.
because of the inferior quality of the good or services of the user.18
246 answered special affirmative defences: no confusion would arise from the use by
Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely petitioner of the mark Rolex considering that its entertainment business is totally unrelated
unrelated to respondents business involving watches, clocks, bracelets, etc. However, the to the items catered by respondents such as watches, clocks, bracelets and parts thereof
Court cannot yet resolve the merits of the present controversy considering that the
requisites for the application of Section 123.1(f), which constitute the kernel issue at bar, RTC: quashed the subpoena ad testificandum and denied petitioners motion for
clearly require determination facts of which need to be resolved at the trial court. The preliminary hearing on affirmative defenses with motion to dismiss
existence or absence of these requisites should be addressed in a full blown hearing and CA: affirmed
not on a mere preliminary hearing. The respondent must be given ample opportunity to
prove its claim, and the petitioner to debunk the same. ISSUE: W/N RTC performed a grave abuse of discretion
The same is true with respect to the issue of whether Atty. Alonzo Ancheta was properly HELD: NO. petition denied. RTC affirmed
authorized to sign the verification and certification against forum shopping in behalf of The issue of whether or not a trademark infringement exists, is a question of fact that
respondents. This could be properly resolved during the trial together with the substantive could best be determined by the trial court.
issues raised by petitioner.
Section 123.1(f) of the Intellectual Property Code (Republic Act No. 8293)
Considering that the trial court correctly denied petitioners motion for preliminary hearing on o (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark
its affirmative defenses with motion to dismiss, there exists no reason to compel Atty. considered well-known in accordance with the preceding paragraph, which is registered in
Ancheta to testify. Hence, no abuse of discretion was committed by the trial court in the Philippines with respect to goods or services which are not similar to those with respect
quashing the subpoena ad testificandum issued against Atty. Ancheta. to which registration is applied for: Provided, That use of the mark in relation to those goods
or services would indicate a connection between those goods or services, and the owner of
Grave abuse of discretion implies such capricious and whimsical exercise of judgment as the registered mark: Provided, further, That the interest of the owner of the registered mark
equivalent to lack of jurisdiction, or, in other words, where the power is exercised in an are likely to be damaged by such use
arbitrary or despotic manner by reason of passion or personal hostility, and it must be so
patent and gross as to amount to an evasion of positive duty or to a virtual refusal to Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely
perform the duty enjoined or to act at all in contemplation of law. None of these was unrelated to respondents business involving watches, clocks, bracelets, etc. However, the
committed by the trial court; hence, the Court of Appeals correctly dismissed the petition. Court cannot yet resolve the merits of the present controversy considering that the
requisites for the application of Section 123.1(f), which constitute the kernel issue at bar,
WHEREFORE, in view of all the foregoing, the petition for review on certiorari filed by clearly require determination facts of which need to be resolved at the trial court. The
petitioner is DENIED. The November 28, 2002 Decision and the February 13, 2003 existence or absence of these requisites should be addressed in a full blown hearing and
Resolution of the Court of Appeals in CA-G.R. SP No. 64660 which dismissed the petition not on a mere preliminary hearing. The respondent must be given ample opportunity to
for certiorari filed by petitioner are AFFIRMED. prove its claim, and the petitioner to debunk the same.
246 CORPORATION V. DAWAY G.R. No. 112012 April 4, 2001
G.R. No. 157216 November 20, 2003 SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES, INC. vs. COURT
OF APPEALS and CFC CORPORATION.
This is a petition for review assailing the Decision of the Court of Appeals in CA-G.R. SP No. Were We to take even a lackadaisical glance at the overall appearance of the contending
24101,1 reversing and setting aside the decision of the Bureau of Patents, Trademarks and marks, the physical discrepancies between appellant CFCs and appellees respective logos
Technology Transfer (BPTTT),2 which denied private respondents application for are so ostensible that the casual purchaser cannot likely mistake one for the other.
registration of the trade-mark, FLAVOR MASTER. Appellant CFCs label (Exhibit "4") is predominantly a blend of dark and lighter shade of
orange where the words "FLAVOR MASTER", "FLAVOR" appearing on top of "MASTER",
On January 18, 1984, private respondent CFC Corporation filed with the BPTTT an shaded in mocha with thin white inner and outer sidings per letter and identically lettered
application for the registration of the trademark "FLAVOR MASTER" for instant coffee, except for the slightly protruding bottom curve of the letter "S" adjoining the bottom tip of the
under Serial No. 52994. The application, as a matter of due course, was published in the letter "A" in the word "MASTER", are printed across the top of a simmering red coffee cup.
July 18, 1988 issue of the BPTTTs Official Gazette. Underneath "FLAVOR MASTER" appears "Premium Instant Coffee" printed in white, slim
and slanted letters. Appellees "MASTER ROAST" label (Exhibit "7"), however, is almost
Petitioner Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws double the width of appellant CFCs. At the top is printed in brown color the word
and domiciled in Switzerland, filed an unverified Notice of Opposition,3 claiming that the "NESCAFE" against a white backdrop. Occupying the center is a square-shaped
trademark of private respondents product is "confusingly similar to its trademarks for coffee configuration shaded with dark brown and picturing a heap of coffee beans, where the word
and coffee extracts, to wit: MASTER ROAST and MASTER BLEND." "MASTER" is inscribed in the middle. "MASTER" in appellees label is printed in taller capital
letters, with the letter "M" further capitalized. The letters are shaded with red and bounded
Likewise, a verified Notice of Opposition was filed by Nestle Philippines, Inc., a Philippine with thin gold-colored inner and outer sidings. Just above the word "MASTER" is a red
corporation and a licensee of Societe Des Produits Nestle S.A., against CFCs application window like portrait of what appears to be a coffee shrub clad in gold. Below the "MASTER"
for registration of the trademark FLAVOR MASTER.4 Nestle claimed that the use, if any, by appears the word "ROAST" impressed in smaller, white print. And further below are the
CFC of the trademark FLAVOR MASTER and its registration would likely cause confusion in inscriptions in white: "A selection of prime Arabica and Robusta coffee." With regard to
the trade; or deceive purchasers and would falsely suggest to the purchasing public a appellees "MASTER BLEND" label (Exhibit "6") of which only a xeroxed copy is submitted,
connection in the business of Nestle, as the dominant word present in the three (3) the letters are bolder and taller as compared to appellant CFCs and the word "MASTER"
trademarks is "MASTER"; or that the goods of CFC might be mistaken as having originated appears on top of the word "BLEND" and below it are the words "100% pure instant coffee"
from the latter. printed in small letters.
In answer to the two oppositions, CFC argued that its trademark, FLAVOR MASTER, is not From the foregoing description, while the contending marks depict the same product, the
confusingly similar with the formers trademarks, MASTER ROAST and MASTER BLEND, glaring dissimilarities in their presentation far outweigh and dispel any aspect of similitude.
alleging that, "except for the word MASTER (which cannot be exclusively appropriated by To borrow the words of the Supreme Court in American Cyanamid Co. v. Director of Patents
any person for being a descriptive or generic name), the other words that are used (76 SCRA 568), appellant CFCs and appellees labels are entirely different in size,
respectively with said word in the three trademarks are very different from each other in background, colors, contents and pictorial arrangement; in short, the general appearances
meaning, spelling, pronunciation, and sound". CFC further argued that its trademark, of the labels bearing the respective trademarks are so distinct from each other that
FLAVOR MASTER, "is clearly very different from any of Nestles alleged trademarks appellees cannot assert that the dominant features, if any, of its trademarks were used or
MASTER ROAST and MASTER BLEND, especially when the marks are viewed in their appropriated in appellant CFCs own. The distinctions are so well-defined so as to foreclose
entirety, by considering their pictorial representations, color schemes and the letters of their any probability or likelihood of confusion or deception on the part of the normally intelligent
respective labels." buyer when he or she encounters both coffee products at the grocery shelf. The answer
therefore to the query is a clear-cut NO.6
In its Decision No. 90-47 dated December 27, 1990, the BPTTT denied CFCs application
for registration.5 CFC elevated the matter to the Court of Appeals, where it was docketed as Petitioners are now before this Court on the following assignment of errors:
CA-G.R. SP No. 24101.
1. RESPONDENT COURT GRAVELY ERRED IN REVERSING AND SETTING ASIDE THE
The Court of Appeals defined the issue thus: "Does appellant CFCs trade dress bear a DECISION (NO. 90-47) OF THE DIRECTOR OF THE BUREAU OF PATENTS,
striking resemblance with appellees trademarks as to create in the purchasing publics mind TRADEMARKS AND TECHNOLOGY TRANSFER (BPTTT) DATED DECEMBER 27, 1990.
the mistaken impression that both coffee products come from one and the same source?"
2. RESPONDENT COURT ERRED IN FINDING THAT APPELLANT CFCS TRADE DRESS
As stated above, the Court of Appeals, in the assailed decision dated September 23, 1993, IS BEYOND THE SCOPE OF THE PROSCRIPTION LAID DOWN BY JURISPRUDENCE
reversed Decision No. 90-47 of the BPTTT and ordered the Director of Patents to approve AND THE TRADEMARK LAW.
CFCs application. The Court of Appeals ruled:
3. RESPONDENT COURT ERRED IN HOLDING THAT THE TOTALITY RULE, RATHER

THAN THE TEST OF DOMINANCY, APPLIES TO THE CASE. (Emphasis supplied)
4. RESPONDENT COURT ERRED IN INVOKING THE TOTALITY RULE APPLIED IN THE The law prescribes a more stringent standard in that there should not only be confusing
CASES OF BRISTOL MYERS V. DIRECTOR OF PATENTS, ET AL. (17 SCRA 128), MEAD similarity but that it should not likely cause confusion or mistake or deceive purchasers.
JOHNSON & CO. V. NVJ VAN DORF LTD., (7 SCRA 768) AND AMERICAN CYANAMID
CO. V. DIRECTOR OF PATENTS (76 SCRA 568). Hence, the question in this case is whether there is a likelihood that the trademark FLAVOR
MASTER may cause confusion or mistake or may deceive purchasers that said product is
The petition is impressed with merit. the same or is manufactured by the same company. In other words, the issue is whether the
trademark FLAVOR MASTER is a colorable imitation of the trademarks MASTER ROAST
A trademark has been generally defined as "any word, name, symbol or device adopted and and MASTER BLEND.
used by a manufacturer or merchant to identify his goods and distinguish them from those
manufactured and sold by others."7 Colorable imitation denotes such a close or ingenious imitation as to be calculated to
deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary
A manufacturers trademark is entitled to protection. As Mr. Justice Frankfurter observed in purchaser giving such attention as a purchaser usually gives, as to cause him to purchase
the case of Mishawaka Mfg. Co. v. Kresge Co.:8 the one supposing it to be the other.9 In determining if colorable imitation exists,
jurisprudence has developed two kinds of tests - the Dominancy Test and the Holistic
The protection of trade-marks is the laws recognition of the psychological function of Test.10 The test of dominancy focuses on the similarity of the prevalent features of the
symbols. If it is true that we live by symbols, it is no less true that we purchase goods by competing trademarks which might cause confusion or deception and thus constitute
them. A trade-mark is a merchandising short-cut which induces a purchaser to select what infringement. On the other side of the spectrum, the holistic test mandates that the entirety
he wants, or what he has been led to believe he wants. The owner of a mark exploits this of the marks in question must be considered in determining confusing similarity.11
human propensity by making every effort to impregnate the atmosphere of the market with
the drawing power of a congenial symbol. Whatever the means employed, the aim is the In the case at bar, the Court of Appeals held that:
same --- to convey through the mark, in the minds of potential customers, the desirability of
the commodity upon which it appears. Once this is attained, the trade-mark owner has The determination of whether two trademarks are indeed confusingly similar must be taken
something of value. If another poaches upon the commercial magnetism of the symbol he from the viewpoint of the ordinary purchasers who are, in general, undiscerningly rash in
has created, the owner can obtain legal redress. buying the more common and less expensive household products like coffee, and are
therefore less inclined to closely examine specific details of similarities and dissimilarities
Section 4 (d) of Republic Act No. 166 or the Trademark Law, as amended, which was in between competing products. The Supreme Court in Del Monte Corporation v. CA, 181
force at the time, provides thus: SCRA 410, held that:
Registration of trade-marks, trade-names and service-marks on the principal register. - "The question is not whether the two articles are distinguishable by their labels when set
There is hereby established a register of trade-marks, trade-names and service marks side by side but whether the general confusion made by the article upon the eye of the
which shall be known as the principal register. The owner of a trade-mark, trade-name or casual purchaser who is unsuspicious and off his guard, is such as to likely result in his
service-mark used to distinguish his goods, business or services from the goods, business confounding it with the original. As observed in several cases, the general impression of the
or services of others shall have the right to register the same on the principal register, ordinary purchaser, buying under the normally prevalent conditions in trade and giving the
unless it: attention such purchasers usually give in buying that class of goods, is the touchstone."
xxx xxx xxx From this perspective, the test of similarity is to consider the two marks in their entirety, as
they appear in the respective labels, in relation to the goods to which they are attached
(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade- (Bristol Myers Company v. Director of Patents, et al., 17 SCRA 128, citing Mead Johnson &
name registered in the Philippines or a mark or trade-name previously used in the Co. v. NVJ Van Dorp, Ltd., et al., 7 SCRA 768). The mark must be considered as a whole
Philippines by another and not abandoned, as to be likely, when applied to or used in and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not
connection with the goods, business or services of the applicant, to cause confusion or usually to any part of it (Del Monte Corp. v. CA, supra), as what appellees would want it to
mistake or to deceive purchasers; be when they essentially argue that much of the confusion springs from appellant CFCs use
of the word "MASTER" which appellees claim to be the dominant feature of their own
xxx xxx xxx trademarks that captivates the prospective consumers. Be it further emphasized that the
discerning eye of the observer must focus not only on the predominant words but also on primarily used for the relief of pains such as headaches and colds, and their names are
the other features appearing in both labels in order that he may draw his conclusion whether practically the same in spelling and pronunciation, both labels have strikingly different
one is confusingly similar to the other (Mead Johnson & Co. v. NVJ Van Dorp, Ltd., backgrounds and surroundings. In addition, one is dispensable only upon doctors
supra).12 prescription, while the other may be purchased over-the-counter.
The Court of Appeals applied some judicial precedents which are not on all fours with this In the Mead Johnson case, the differences between ALACTA and ALASKA are glaring and
case. It must be emphasized that in infringement or trademark cases in the Philippines, striking to the eye. Also, ALACTA refers to "Pharmaceutical Preparations which Supply
particularly in ascertaining whether one trademark is confusingly similar to or is a colorable Nutritional Needs," falling under Class 6 of the official classification of Medicines and
imitation of another, no set rules can be deduced. Each case must be decided on its own Pharmaceutical Preparations to be used as prescribed by physicians. On the other hand,
merits.13 In Esso Standard, Inc. v. Court of Appeals,14 we ruled that the likelihood of ALASKA refers to "Foods and Ingredients of Foods" falling under Class 47, and does not
confusion is a relative concept; to be determined only according to the particular, and require medical prescription.
sometimes peculiar, circumstances of each case. In trademark cases, even more than in
any other litigation, precedent must be studied in light of the facts of the particular case. The In the American Cyanamid case, the word SULMET is distinguishable from the word
wisdom of the likelihood of confusion test lies in its recognition that each trademark SULMETINE, as the former is derived from a combination of the syllables "SUL" which is
infringement case presents its own unique set of facts. Indeed, the complexities attendant to derived from sulfa and "MET" from methyl, both of which are chemical compounds present
an accurate assessment of likelihood of confusion require that the entire panoply of in the article manufactured by the contending parties. This Court held that the addition of the
elements constituting the relevant factual landscape be comprehensively examined.15 syllable "INE" in respondents label is sufficient to distinguish respondents product or
trademark from that of petitioner. Also, both products are for medicinal veterinary use and
The Court of Appeals application of the case of Del Monte Corporation v. Court of the buyer will be more wary of the nature of the product he is buying. In any case, both
Appeals16 is, therefore, misplaced. In Del Monte, the issue was about the alleged similarity products are not identical as SULMETs label indicates that it is used in a drinking water
of Del Montes logo with that of Sunshine Sauce Manufacturing Industries. Both solution while that of SULMETINE indicates that they are tablets.
corporations market the catsup product which is an inexpensive and common household
item. It cannot also be said that the products in the above cases can be bought off the shelf
except, perhaps, for ALASKA. The said products are not the usual "common and
Since Del Monte alleged that Sunshines logo was confusingly similar to or was a colorable inexpensive" household items which an "undiscerningly rash" buyer would unthinkingly
imitation of the formers logo, there was a need to go into the details of the two logos as well buy.In the case at bar, other than the fact that both Nestles and CFCs products are
as the shapes of the labels or marks, the brands printed on the labels, the words or lettering inexpensive and common household items, the similarity ends there. What is being
on the labels or marks and the shapes and colors of the labels or marks. The same criteria, questioned here is the use by CFC of the trademark MASTER. In view of the difficulty of
however, cannot be applied in the instant petition as the facts and circumstances herein are applying jurisprudential precedents to trademark cases due to the peculiarity of each case,
peculiarly different from those in the Del Monte case. judicial fora should not readily apply a certain test or standard just because of seeming
similarities. As this Court has pointed above, there could be more telling differences than
In the same manner, the Court of Appeals erred in applying the totality rule as defined in the similarities as to make a jurisprudential precedent inapplicable.
cases of Bristol Myers v. Director of Patents;17 Mead Johnson & Co. v. NVJ Van Dorf
Ltd.;18 and American Cyanamid Co. v. Director of Patents.19 The totality rule states that Nestle points out that the dominancy test should have been applied to determine whether
"the test is not simply to take their words and compare the spelling and pronunciation of said there is a confusing similarity between CFCs FLAVOR MASTER and Nestles MASTER
words. In determining whether two trademarks are confusingly similar, the two marks in their ROAST and MASTER BLEND.
entirety as they appear in the respective labels must be considered in relation to the goods
to which they are attached; the discerning eye of the observer must focus not only on the We agree.
predominant words but also on the other features appearing on both labels."20
As the Court of Appeals itself has stated, "[t]he determination of whether two trademarks are
As this Court has often declared, each case must be studied according to the peculiar indeed confusingly similar must be taken from the viewpoint of the ordinary purchasers who
circumstances of each case. That is the reason why in trademark cases, jurisprudential are, in general, undiscerningly rash in buying the more common and less expensive
precedents should be applied only to a case if they are specifically in point. household products like coffee, and are therefore less inclined to closely examine specific
details of similarities and dissimilarities between competing products."21
In the above cases cited by the Court of Appeals to justify the application of the totality or
holistic test to this instant case, the factual circumstances are substantially different. In the The basis for the Court of Appeals application of the totality or holistic test is the "ordinary
Bristol Myers case, this Court held that although both BIOFERIN and BUFFERIN are purchaser" buying the product under "normally prevalent conditions in trade" and the
attention such products normally elicit from said ordinary purchaser. An ordinary purchaser advertisements made in promoting the product. This can be gleaned from the fact that
or buyer does not usually make such scrutiny nor does he usually have the time to do so. Robert Jaworski and Atty. Ric Puno Jr.., the personalities engaged to promote the product,
The average shopper is usually in a hurry and does not inspect every product on the shelf are given the titles Master of the Game and Master of the Talk Show, respectively. In due
as if he were browsing in a library.22 time, because of these advertising schemes the mind of the buying public had come to learn
to associate the word MASTER with the opposers goods.
The Court of Appeals held that the test to be applied should be the totality or holistic test
reasoning, since what is of paramount consideration is the ordinary purchaser who is, in x x x. It is the observation of this Office that much of the dominance which the word
general, undiscerningly rash in buying the more common and less expensive household MASTER has acquired through Opposers advertising schemes is carried over when the
products like coffee, and is therefore less inclined to closely examine specific details of same is incorporated into respondent-applicants trademark FLAVOR MASTER. Thus, when
similarities and dissimilarities between competing products. one looks at the label bearing the trademark FLAVOR MASTER (Exh. 4) ones attention is
easily attracted to the word MASTER, rather than to the dissimilarities that exist. Therefore,
This Court cannot agree with the above reasoning. If the ordinary purchaser is the possibility of confusion as to the goods which bear the competing marks or as to the
"undiscerningly rash" in buying such common and inexpensive household products as origins thereof is not farfetched. x x x.24
instant coffee, and would therefore be "less inclined to closely examine specific details of
similarities and dissimilarities" between the two competing products, then it would be less In addition, the word "MASTER" is neither a generic nor a descriptive term. As such, said
likely for the ordinary purchaser to notice that CFCs trademark FLAVOR MASTER carries term can not be invalidated as a trademark and, therefore, may be legally protected.
the colors orange and mocha while that of Nestles uses red and brown. The application of Generic terms25 are those which constitute "the common descriptive name of an article or
the totality or holistic test is improper since the ordinary purchaser would not be inclined to substance," or comprise the "genus of which the particular product is a species," or are
notice the specific features, similarities or dissimilarities, considering that the product is an "commonly used as the name or description of a kind of goods," or "imply reference to every
inexpensive and common household item. member of a genus and the exclusion of individuating characters," or "refer to the basic
nature of the wares or services provided rather than to the more idiosyncratic characteristics
It must be emphasized that the products bearing the trademarks in question are of a particular product," and are not legally protectable. On the other hand, a term is
"inexpensive and common" household items bought off the shelf by "undiscerningly rash" descriptive26 and therefore invalid as a trademark if, as understood in its normal and
purchasers. As such, if the ordinary purchaser is "undiscerningly rash", then he would not natural sense, it "forthwith conveys the characteristics, functions, qualities or ingredients of
have the time nor the inclination to make a keen and perceptive examination of the physical a product to one who has never seen it and does not know what it is," or "if it forthwith
discrepancies in the trademarks of the products in order to exercise his choice. conveys an immediate idea of the ingredients, qualities or characteristics of the goods," or if
it clearly denotes what goods or services are provided in such a way that the consumer
While this Court agrees with the Court of Appeals detailed enumeration of differences does not have to exercise powers of perception or imagination.
between the respective trademarks of the two coffee products, this Court cannot agree that
totality test is the one applicable in this case. Rather, this Court believes that the dominancy Rather, the term "MASTER" is a suggestive term brought about by the advertising scheme
test is more suitable to this case in light of its peculiar factual milieu. of Nestle. Suggestive terms27 are those which, in the phraseology of one court, require
"imagination, thought and perception to reach a conclusion as to the nature of the goods."
Moreover, the totality or holistic test is contrary to the elementary postulate of the law on Such terms, "which subtly connote something about the product," are eligible for protection
trademarks and unfair competition that confusing similarity is to be determined on the basis in the absence of secondary meaning. While suggestive marks are capable of shedding
of visual, aural, connotative comparisons and overall impressions engendered by the marks "some light" upon certain characteristics of the goods or services in dispute, they
in controversy as they are encountered in the realities of the marketplace.23 The totality or nevertheless involve "an element of incongruity," "figurativeness," or " imaginative effort on
holistic test only relies on visual comparison between two trademarks whereas the the part of the observer."
dominancy test relies not only on the visual but also on the aural and connotative
comparisons and overall impressions between the two trademarks. This is evident from the advertising scheme adopted by Nestle in promoting its coffee
products. In this case, Nestle has, over time, promoted its products as "coffee perfection
For this reason, this Court agrees with the BPTTT when it applied the test of dominancy and worthy of masters like Robert Jaworski and Ric Puno Jr."
held that:
In associating its coffee products with the term "MASTER" and thereby impressing them
From the evidence at hand, it is sufficiently established that the word MASTER is the with the attributes of said term, Nestle advertised its products thus:
dominant feature of opposers mark. The word MASTER is printed across the middle portion
of the label in bold letters almost twice the size of the printed word ROAST. Further, the Robert Jaworski. Living Legend. A true hard court hero. Fast on his feet. Sure in every shot
word MASTER has always been given emphasis in the TV and radio commercials and other he makes. A master strategist. In one word, unmatched.
Respondent CFC argued that the word MASTER cannot be exclusively appropriated being
MASTER ROAST. Equally unmatched. Rich and deeply satisfying. Made from a unique a descriptive or generic term. BPTTT denied CFCs application. CA held otherwise.
combination of the best coffee beans - Arabica for superior taste and aroma, Robusta for
strength and body. A masterpiece only NESCAFE, the worlds coffee masters, can create. Issue:
MASTER ROAST. Coffee perfection worthy of masters like Robert Jaworski.28 Whether the word MASTER is descriptive or generic term incapable of exclusive
appropriation.
In the art of conversation, Ric Puno Jr. is master. Witty. Well-informed. Confident.
Ruling: NO.
In the art of coffee-making, nothing equals Master Roast, the coffee masterpiece from
Nescafe, the worlds coffee masters. A unique combination of the best coffee beans - The word MASTER is neither a generic nor a descriptive term. As such, said term cannot
Arabica for superior taste and aroma, Robusta for strength and body. Truly distinctive and be invalidated as a trademark and, therefore, may be legally protected. Generic terms are
rich in flavor. those which constitute the common descriptive name of an article or substance, or
comprise the genus of which the particular product is a species, or are commonly used as
Master Roast. Coffee perfection worthy of masters like Ric Puno Jr.29 the name or description of a kind of goods, or imply reference to every member of a genus
and the exclusion of individuating characters, or refer to the basic nature of the wares or
The term "MASTER", therefore, has acquired a certain connotation to mean the coffee services provided rather than to the more idiosyncratic characteristics of a particular
products MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by product, and are not legally protectable. On the other hand, a term is descriptive and
CFC of the term "MASTER" in the trademark for its coffee product FLAVOR MASTER is therefore invalid as a trademark if, as understood in its normal and natural sense, it
likely to cause confusion or mistake or even to deceive the ordinary purchasers. forthwith conveys the characteristics, functions, qualities or ingredients of a product to one
who has never seen it and does not know what it is, or if it forthwith conveys an immediate
In closing, it may not be amiss to quote the case of American Chicle Co. v. Topps Chewing idea of the ingredients, qualities or characteristics of the goods, or if it clearly denotes what
Gum, Inc.,30 to wit: goods or services are provided in such a way that the consumer does not have to exercise
powers of perception or imagination.
Why it should have chosen a mark that had long been employed by [plaintiff] and had
become known to the trade instead of adopting some other means of identifying its goods is Rather, the term MASTER is a suggestive term brought about by the advertising scheme
hard to see unless there was a deliberate purpose to obtain some advantage from the trade of Nestle. Suggestive terms are those which, in the phraseology of one court, require
that [plaintiff] had built up. Indeed, it is generally true that, as soon as we see that a second imagination, thought and perception to reach a conclusion as to the nature of the goods.
comer in a market has, for no reason that he can assign, plagiarized the "make-up" of an Such terms, which subtly connote something about the product, are eligible for protection
earlier comer, we need no more; . . . [W]e feel bound to compel him to exercise his ingenuity in the absence of secondary meaning. While suggestive marks are capable of shedding
in quarters further afield. some light upon certain characteristics of the goods or services in dispute, they
nevertheless involve an element of incongruity, figurativeness, or imaginative effort on
WHEREFORE, in view of the foregoing, the decision of the Court of Appeals in CA-G.R. SP the part of the observer. The term MASTER, therefore, has acquired a certain connotation
No. 24101 is REVERSED and SET ASIDE and the decision of the Bureau of Patents, to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle.
Trademarks and Technology Transfer in Inter Partes Cases Nos. 3200 and 3202 is As such, the use by CFC of the term MASTER in the trademark for its coffee product
REINSTATED. FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary
purchasers.
SOCIETE DES PRODUITS NESTLE V. CA (G.R. NO. 112012)
Facts: G.R. No. 138900 September 20, 2005
Respondent CFC Corporation filed an application for the registration of the trademark LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC., Petitioners,
FLAVOR MASTER for instant coffee. Petitioners, a Swiss company and a domestic vs.
corporation licensee of Societe, opposed on the ground that it is confusingly similar to its CLINTON APPARELLE, INC., Respondent.
trademark for coffee and coffee extracts: MASTER ROAST and MASTER BLEND.
Petitioners contend that the dominant word MASTER is present in the 3 trademarks. DECISION
Tinga, J.: defendants, their officers, employees, agents, representatives, dealers and retailers or
assigns, to cease and desist from manufacturing, distributing, selling, offering for sale,
Before us is a petition for review on certiorari1 under Rule 45 of the 1997 Rules of Civil advertising, or otherwise using denims, jeans or pants with the design herein complained of
Procedure filed by Levi Strauss & Co. (LS & Co.) and Levi Strauss (Philippines), Inc. (LSPI) as substantially, if not exactly similar, to plaintiffs "Dockers and Design" trademark.
assailing the Court of Appeals Decision2 and Resolution3 respectively dated 21 December
1998 and 10 May 1999. The questioned Decision granted respondents prayer for a writ of 2. That after notice and hearing, and pending trial on the merits, a writ of preliminary
preliminary injunction in its Petition4 and set aside the trial courts orders dated 15 May injunction be issued enjoining defendants, their officers, employees, agents, dealers,
19985 and 4 June 19986 which respectively granted petitioners prayer for the issuance of a retailers, or assigns from manufacturing, distributing, selling, offering for sale, advertising,
temporary restraining order (TRO) and application for the issuance of a writ of preliminary jeans the design herein complained of as substantially, if not exactly similar, to plaintiffs
injunction. "Dockers and Design" trademark.
This case stemmed from the Complaint7 for Trademark Infringement, Injunction and 3. That after trial on the merits, judgment be rendered as follows:
Damages filed by petitioners LS & Co. and LSPI against respondent Clinton Apparelle, Inc.*
(Clinton Aparelle) together with an alternative defendant, Olympian Garments, Inc. a. Affirming and making permanent the writ of preliminary injunction;
(Olympian Garments), before the Regional Trial Court of Quezon City, Branch 90.8 The
Complaint was docketed as Civil Case No. Q-98-34252, entitled "Levi Strauss & Co. and b. Ordering that all infringing jeans in the possession of either or both defendants as the
Levi Strauss (Phils.), Inc. v. Clinton Aparelle, Inc. and/or Olympian Garments, Inc." evidence may warrant, their officers, employees, agents, retailers, dealers or assigns, be
delivered to the Honorable Court of plaintiffs, and be accordingly destroyed;13
The Complaint alleged that LS & Co., a foreign corporation duly organized and existing
under the laws of the State of Delaware, U.S.A., and engaged in the apparel business, is Acting on the prayer for the issuance of a TRO, the trial court issued an Order14 setting it
the owner by prior adoption and use since 1986 of the internationally famous "Dockers and for hearing on 5 May 1998. On said date, as respondent failed to appear despite notice and
Design" trademark. This ownership is evidenced by its valid and existing registrations in the other defendant, Olympian Garments, had yet to be notified, the hearing was re-
various member countries of the Paris Convention. In the Philippines, it has a Certificate of scheduled on 14 May 1998.15
Registration No. 46619 in the Principal Register for use of said trademark on pants, shirts,
blouses, skirts, shorts, sweatshirts and jackets under Class 25.9 On 14 May 1998, neither Clinton Apparelle nor Olympian Garments appeared. Clinton
Apparelle claimed that it was not notified of such hearing. Only Olympian Garments
The "Dockers and Design" trademark was first used in the Philippines in or about May 1988, allegedly had been issued with summons. Despite the absence of the defendants, the
by LSPI, a domestic corporation engaged in the manufacture, sale and distribution of hearing on the application for the issuance of a TRO continued.16
various products bearing trademarks owned by LS & Co. To date, LSPI continues to
manufacture and sell Dockers Pants with the "Dockers and Design" trademark.10 The following day, the trial court issued an Order17 granting the TRO applied for, the
pertinent portions of which state:
LS & Co. and LSPI further alleged that they discovered the presence in the local market of
jeans under the brand name "Paddocks" using a device which is substantially, if not exactly, Considering the absence of counsel/s for the defendant/s during the summary hearing
similar to the "Dockers and Design" trademark owned by and registered in the name of LS & scheduled on May 5, 1998 and also during the re-scheduled summary hearing held on May
Co., without its consent. Based on their information and belief, they added, Clinton 14, 1998 set for the purpose of determining whether or not a Temporary Restraining Order
Apparelle manufactured and continues to manufacture such "Paddocks" jeans and other shall be issued, this Court allowed the counsel for the plaintiffs to present on May 14, 1998
apparel. their arguments/evidences in support of their application. After hearing the arguments
presented by the counsel for the plaintiffs during the summary hearing, this Court is of the
However, since LS & Co. and LSPI are unsure if both, or just one of impleaded defendants considered and humble view that grave injustice and irreparable injury to the plaintiffs would
are behind the manufacture and sale of the "Paddocks" jeans complained of, they brought arise before the matter of whether or not the application for the issuance of a Writ of
this suit under Section 13, Rule 311 of the 1997 Rules of Civil Procedure.12 Preliminary Injunction can be heard, and that, in the interest of justice, and in the meantime,
a Temporary Restraining Order be issued.
The Complaint contained a prayer that reads as follows:
WHEREFORE, let this Temporary Restraining Order be issued restraining the defendants,
1. That upon the filing of this complaint, a temporary restraining order be immediately issued their officers, employees, agents, representatives, dealers, retailers or assigns from
restraining defendants, their officers, employees, agents, representatives, dealers, retailers committing the acts complained of in the verified Complaint, and specifically, for the
or assigns from committing the acts herein complained of, and, specifically, for the defendants, their officers, employees, agents, representatives, dealers and retailers or
assigns, to cease and desist from manufacturing, distributing, selling, offering for sale, pair of DOCKERS pants bearing the "Dockers and Design" trademark; (3) a pair of
advertising or otherwise using denims, jeans or pants with the design complained of in the "Paddocks" pants bearing respondents assailed logo; (4) the Trends MBL Survey Report
verified Complaint as substantially, if not exactly similar, to plaintiffs "Dockers and Design" purportedly proving that there was confusing similarity between two marks; (5) the affidavit
trademark; until after the application/prayer for the issuance of a Writ of Preliminary of one Bernabe Alajar which recounted petitioners prior adoption, use and registration of the
Injunction is heard/resolved, or until further orders from this Court. "Dockers and Design" trademark; and (6) the affidavit of one Mercedes Abad of Trends
MBL, Inc. which detailed the methodology and procedure used in their survey and the
The hearing on the application for the issuance of a Writ of Preliminary Injunction as results thereof.21
embodied in the verified Complaint is set on May 26, 1998 (Tuesday) at 2:00 P.M. which
setting is intransferable in character considering that the lifetime of this Temporary Clinton Apparelle thereafter filed a Motion to Dismiss22 and a Motion for Reconsideration23
Restraining Order is twenty (20) days from date hereof.18 of the Order granting the writ of preliminary injunction. Meantime, the trial court issued an
Order24 approving the bond filed by petitioners.
On 4 June 1998, the trial court issued another Order19 granting the writ of preliminary
injunction, to wit: On 22 June 1998, the trial court required25 the parties to file their "respective citation of
authorities/ jurisprudence/Supreme Court decisions" on whether or not the trial court may
ORDER issue the writ of preliminary injunction pending the resolution of the Motion for
Reconsideration and the Motion to Dismiss filed by respondent.
This resolves the plaintiffs application or prayer for the issuance of a writ of preliminary
injunction as embodied in the verified complaint in this case. Parenthetically, this Court On 2 October 1998, the trial court denied Clinton Apparelles Motion to Dismiss and Motion
earlier issued a temporary restraining order. (see Order dated May 15, 1998; see also Order for Reconsideration in an Omnibus Order,26 the pertinent portions of which provide:
dated May 26, 1998)
After carefully going over the contents of the pleadings in relation to pertinent portions of the
After a careful perusal of the contents of the pleadings and documents on record insofar as records, this Court is of the considered and humble view that:
they are pertinent to the issue under consideration, this Court finds that at this point in time,
the plaintiffs appear to be entitled to the relief prayed for and this Court is of the considered On the first motion, the arguments raised in the plaintiffs aforecited Consolidated
belief and humble view that, without necessarily delving on the merits, the paramount Opposition appears to be meritorious. Be that as it may, this Court would like to emphasize,
interest of justice will be better served if the status quo shall be maintained and that an among other things, that the complaint states a cause of action as provided under
injunction bond of P2,500,000.00 appears to be in order. (see Sections 3 and 4, Rule 58, paragraphs 1 to 18 thereof.
1997 Rules of Civil Procedure)
On the second motion, the arguments raised in the plaintiffs aforecited Consolidated
IN VIEW OF THE FOREGOING, the plaintiffs prayer for the issuance of a writ of preliminary Opposition likewise appear to be impressed with merit. Besides, there appears to be no
injunction is GRANTED. Accordingly, upon the plaintiffs filing, within ten (10) days from their strong and cogent reason to reconsider and set aside this Courts Order dated June 4, 1998
receipt hereof, an injunction bond of P2,500,000.00 executed to the defendants to the effect as it has been shown so far that the trademark or logo of defendants is substantially, if not
that the plaintiffs will pay all damages the defendants may sustain by reason of this exactly, similar to plaintiffs "DOCKERS and DESIGN" trademark or logo as covered by
injunction in case the Court should finally decide that the plaintiffs are not entitled thereto, let BPTTT Certificate of Registration No. 46619 even as the BPTTT Certificate of Registration
a writ of preliminary injunction issue enjoining or restraining the commission of the acts No. 49579 of Clinton Apparelle, Inc. is only for the mark or word "PADDOCKS" (see
complained of in the verified Complaint in this case, and specifically, for the defendants, Records, p. 377) In any event, this Court had issued an Order dated June 18, 1998 for the
their officers, employees, agents, representatives, dealers and retailers or assigns or issuance of the writ of preliminary injunction after the plaintiffs filed the required bond of
persons acting in their behalf to cease and desist from manufacturing, distributing, selling, P2,500,000.00.
offering for sale, advertising, or otherwise using, denims, jeans or pants with the design
complained of in the verified Complaint in this case, which is substantially, if not exactly, IN VIEW OF THE FOREGOING, the aforecited Motion To Dismiss and Motion For
similar to plaintiffs "DOCKERS and DESIGN" trademark or logo as covered by the Bureau Reconsideration are both DENIED for lack of merit, and accordingly, this Courts Order
of Patents, Trademarks and Technology Transfer Certificate of Registration No. 46619, until dated June 18, 1998 for the issuance of the writ of preliminary injunction is REITERATED so
after this case shall have been decided on the merits and/or until further orders from this the writ of preliminary injunction could be implemented unless the implementation thereof is
Court.20 restrained by the Honorable Court of Appeals or Supreme Court.
The evidence considered by the trial court in granting injunctive relief were as follows: (1) a The writ of preliminary injunction was thereafter issued on 8 October 1998.27
certified true copy of the certificate of trademark registration for "Dockers and Design"; (2) a
Thus, Clinton Apparelle filed with the Court of Appeals a Petition28 for certiorari, prohibition Court of Appeals acted correctly when it overturned the writ of preliminary injunction issued
and mandamus with prayer for the issuance of a temporary restraining order and/or writ of by the trial court. It believes that the issued writ in effect disturbed the status quo and
preliminary injunction, assailing the orders of the trial court dated 15 May 1998, 4 June 1998 disposed of the main case without trial.
and 2 October 1998.
There is no merit in the petition.
On 20 October 1998, the Court of Appeals issued a Resolution29 requiring herein
petitioners to file their comment on the Petition and at the same time issued the prayed-for At issue is whether the issuance of the writ of preliminary injunction by the trial court was
temporary restraining order. proper and whether the Court of Appeals erred in setting aside the orders of the trial court.
The appellate court rendered on 21 December 1998 its now assailed Decision granting Section 1, Rule 58 of the Rules of Court defines a preliminary injunction as an order granted
Clinton Apparelles petition. The Court of Appeals held that the trial court did not follow the at any stage of an action prior to the judgment or final order requiring a party or a court,
procedure required by law for the issuance of a temporary restraining order as Clinton agency or a person to refrain from a particular act or acts. Injunction is accepted as the
Apparelle was not duly notified of the date of the summary hearing for its issuance. Thus, strong arm of equity or a transcendent remedy to be used cautiously as it affects the
the Court of Appeals ruled that the TRO had been improperly issued.30 respective rights of the parties, and only upon full conviction on the part of the court of its
extreme necessity. An extraordinary remedy, injunction is designed to preserve or maintain
The Court of Appeals also held that the issuance of the writ of preliminary injunction is the status quo of things and is generally availed of to prevent actual or threatened acts until
questionable. In its opinion, herein petitioners failed to sufficiently establish its material and the merits of the case can be heard.34 It may be resorted to only by a litigant for the
substantial right to have the writ issued. Secondly, the Court of Appeals observed that the preservation or protection of his rights or interests and for no other purpose during the
survey presented by petitioners to support their contentions was commissioned by pendency of the principal action.35 It is resorted to only when there is a pressing necessity
petitioners. The Court of Appeals remarked that affidavits taken ex-parte are generally to avoid injurious consequences, which cannot be remedied under any standard
considered to be inferior to testimony given in open court. The appellate court also compensation. The resolution of an application for a writ of preliminary injunction rests upon
considered that the injury petitioners have suffered or are currently suffering may be the existence of an emergency or of a special recourse before the main case can be heard
compensated in terms of monetary consideration, if after trial, a final judgment shall be in due course of proceedings.36
rendered in their favor.31
Section 3, Rule 58, of the Rules of Court enumerates the grounds for the issuance of a
In addition, the Court of Appeals strongly believed that the implementation of the questioned preliminary injunction:
writ would effectively shut down respondents business, which in its opinion should not be
sanctioned. The Court of Appeals thus set aside the orders of the trial court dated 15 May SEC. 3. Grounds for issuance of preliminary injunction. A preliminary injunction may be
1998 and 4 June 1998, respectively issuing a temporary restraining order and granting the granted when it is established:
issuance of a writ of preliminary injunction.
(a) That the applicant is entitled to the relief demanded, and the whole or part of such relief
With the denial of their Motion for Reconsideration,32 petitioners are now before this Court consists in restraining the commission or continuance of the act or acts complained of, or in
seeking a review of the appellate courts Decision and Resolution. LS & Co. and LSPI claim requiring the performance of an act or acts, either for a limited period or perpetually;
that the Court of Appeals committed serious error in: (1) disregarding the well-defined limits
of the writ of certiorari that questions on the sufficiency of evidence are not to be resolved in (b) That the commission, continuance, or non-performance of the act or acts complained of
such a petition; (2) in holding that there was no confusion between the two marks; (3) in during the litigation would probably work injustice to the applicant; or
ruling that the erosion of petitioners trademark is not protectable by injunction; (4) in
ignoring the procedure previously agreed on by the parties and which was adopted by the (c) That a party, court, agency or a person is doing, threatening, or is attempting to do, or is
trial court; and (5) in declaring that the preliminary injunction issued by the trial court will procuring or suffering to be done, some act or acts probably in violation of the rights of the
lead to the closure of respondents business. applicant respecting the subject of the action or proceeding, and tending to render the
judgment ineffectual.
In its Comment,33 Clinton Apparelle maintains that only questions of law may be raised in
an appeal by certiorari under Rule 45 of the Rules of Court. It asserts that the question of Under the cited provision, a clear and positive right especially calling for judicial protection
whether the Court of Appeals erred in: (1) disregarding the survey evidence; (2) ruling that must be shown. Injunction is not a remedy to protect or enforce contingent, abstract, or
there was no confusion between the two marks; and (c) finding that the erosion of future rights; it will not issue to protect a right not in esse and which may never arise, or to
petitioners trademark may not be protected by injunction, are issues not within the ambit of restrain an act which does not give rise to a cause of action. There must exist an actual
a petition for review on certiorari under Rule 45. Clinton Apparelle also contends that the right.37 There must be a patent showing by the complaint that there exists a right to be
protected and that the acts against which the writ is to be directed are violative of said on the owner the right to prevent the use of a fraction thereof in the course of trade. It is also
right.38 unclear whether the use without the owners consent of a portion of a trademark registered
in its entirety constitutes material or substantial invasion of the owners right.
There are generally two kinds of preliminary injunction: (1) a prohibitory injunction which
commands a party to refrain from doing a particular act; and (2) a mandatory injunction It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the
which commands the performance of some positive act to correct a wrong in the past.39 dominant or central feature of petitioners trademarkthe feature that prevails or is retained
in the minds of the publican imitation of which creates the likelihood of deceiving the
The Court of Appeals did not err in reviewing proof adduced by petitioners to support its public and constitutes trademark infringement.43 In sum, there are vital matters which have
application for the issuance of the writ. While the matter of the issuance of a writ of yet and may only be established through a full-blown trial.
preliminary injunction is addressed to the sound discretion of the trial court, this discretion
must be exercised based upon the grounds and in the manner provided by law. The From the above discussion, we find that petitioners right to injunctive relief has not been
exercise of discretion by the trial court in injunctive matters is generally not interfered with clearly and unmistakably demonstrated. The right has yet to be determined. Petitioners also
save in cases of manifest abuse.40 And to determine whether there was abuse of failed to show proof that there is material and substantial invasion of their right to warrant
discretion, a scrutiny must be made of the bases, if any, considered by the trial court in the issuance of an injunctive writ. Neither were petitioners able to show any urgent and
granting injunctive relief. Be it stressed that injunction is the strong arm of equity which must permanent necessity for the writ to prevent serious damage.
be issued with great caution and deliberation, and only in cases of great injury where there
is no commensurate remedy in damages.41 Petitioners wish to impress upon the Court the urgent necessity for injunctive relief, urging
that the erosion or dilution of their trademark is protectable. They assert that a trademark
In the present case, we find that there was scant justification for the issuance of the writ of owner does not have to wait until the mark loses its distinctiveness to obtain injunctive relief,
preliminary injunction. and that the mere use by an infringer of a registered mark is already actionable even if he
has not yet profited thereby or has damaged the trademark owner.
Petitioners anchor their legal right to "Dockers and Design" trademark on the Certificate of
Registration issued in their favor by the Bureau of Patents, Trademarks and Technology Trademark dilution is the lessening of the capacity of a famous mark to identify and
Transfer.* According to Section 138 of Republic Act No. 8293,42 this Certificate of distinguish goods or services, regardless of the presence or absence of: (1) competition
Registration is prima facie evidence of the validity of the registration, the registrants between the owner of the famous mark and other parties; or (2) likelihood of confusion,
ownership of the mark and of the exclusive right to use the same in connection with the mistake or deception. Subject to the principles of equity, the owner of a famous mark is
goods or services and those that are related thereto specified in the certificate. Section entitled to an injunction "against another persons commercial use in commerce of a mark or
147.1 of said law likewise grants the owner of the registered mark the exclusive right to trade name, if such use begins after the mark has become famous and causes dilution of
prevent all third parties not having the owners consent from using in the course of trade the distinctive quality of the mark." This is intended to protect famous marks from
identical or similar signs for goods or services which are identical or similar to those in subsequent uses that blur distinctiveness of the mark or tarnish or disparage it.44
respect of which the trademark is registered if such use results in a likelihood of confusion.
Based on the foregoing, to be eligible for protection from dilution, there has to be a finding
However, attention should be given to the fact that petitioners registered trademark consists that: (1) the trademark sought to be protected is famous and distinctive; (2) the use by
of two elements: (1) the word mark "Dockers" and (2) the wing-shaped design or logo. respondent of "Paddocks and Design" began after the petitioners mark became famous;
Notably, there is only one registration for both features of the trademark giving the and (3) such subsequent use defames petitioners mark. In the case at bar, petitioners have
impression that the two should be considered as a single unit. Clinton Apparelles yet to establish whether "Dockers and Design" has acquired a strong degree of
trademark, on the other hand, uses the "Paddocks" word mark on top of a logo which distinctiveness and whether the other two elements are present for their cause to fall within
according to petitioners is a slavish imitation of the "Dockers" design. The two trademarks the ambit of the invoked protection. The Trends MBL Survey Report which petitioners
apparently differ in their word marks ("Dockers" and "Paddocks"), but again according to presented in a bid to establish that there was confusing similarity between two marks is not
petitioners, they employ similar or identical logos. It could thus be said that respondent only sufficient proof of any dilution that the trial court must enjoin.
"appropriates" petitioners logo and not the word mark "Dockers"; it uses only a portion of
the registered trademark and not the whole. The Court also finds that the trial courts order granting the writ did not adequately detail the
reasons for the grant, contrary to our ruling in University of the Philippines v. Hon. Catungal
Given the single registration of the trademark "Dockers and Design" and considering that Jr., 45 wherein we held that:
respondent only uses the assailed device but a different word mark, the right to prevent the
latter from using the challenged "Paddocks" device is far from clear. Stated otherwise, it is The trial court must state its own findings of fact and cite particular law to justify grant of
not evident whether the single registration of the trademark "Dockers and Design" confers preliminary injunction. Utmost care in this regard is demanded.46
for preliminary injunction, the requirement of hearing and prior notice before injunction may
The trial court in granting the injunctive relief tersely ratiocinated that "the plaintiffs appear to issue has been relaxed to the point that not all petitions for preliminary injunction must
be entitled to the relief prayed for and this Court is of the considered belief and humble view undergo a trial-type hearing, it being a hornbook doctrine that a formal or trial-type hearing
that, without necessarily delving on the merits, the paramount interest of justice will be is not at all times and in all instances essential to due process. Due process simply means
better served if the status quo shall be maintained." Clearly, this statement falls short of the giving every contending party the opportunity to be heard and the court to consider every
requirement laid down by the above-quoted case. Similarly, in Developers Group of piece of evidence presented in their favor. Accordingly, this Court has in the case of Co v.
Companies, Inc. v. Court of Appeals,47 we held that it was "not enough" for the trial court, in Calimag, Jr.,52 rejected a claim of denial of due process where such claimant was given the
its order granting the writ, to simply say that it appeared "after hearing that plaintiff is entitled opportunity to be heard, having submitted his counter-affidavit and memorandum in support
to the relief prayed for." of his position.53
In addition, we agree with the Court of Appeals in its holding that the damages the After a careful consideration of the facts and arguments of the parties, the Court finds that
petitioners had suffered or continue to suffer may be compensated in terms of monetary petitioners did not adequately prove their entitlement to the injunctive writ. In the absence of
consideration. As held in Government Service Insurance System v. Florendo:48 proof of a legal right and the injury sustained by the applicant, an order of the trial court
granting the issuance of an injunctive writ will be set aside for having been issued with
a writ of injunction should never have been issued when an action for damages would grave abuse of discretion.54 Conformably, the Court of Appeals was correct in setting aside
adequately compensate the injuries caused. The very foundation of the jurisdiction to issue the assailed orders of the trial court.
the writ of injunction rests in the probability of irreparable injury, inadequacy of pecuniary
estimation and the prevention of the multiplicity of suits, and where facts are not shown to WHEREFORE, the instant petition is DENIED. The Decision of the Court of Appeals dated
bring the case within these conditions, the relief of injunction should be refused.49 21 December 1998 and its Resolution dated 10 May 1999 are AFFIRMED. Costs against
petitioners.
We also believe that the issued injunctive writ, if allowed, would dispose of the case on the
merits as it would effectively enjoin the use of the "Paddocks" device without proof that there
is basis for such action. The prevailing rule is that courts should avoid issuing a writ of
preliminary injunction that would in effect dispose of the main case without trial.50 There LEVI STRAUSS & CO. VS. CLINTON APPARELLE
would be a prejudgment of the main case and a reversal of the rule on the burden of proof G.R. No. 138900 September 20, 2005
since it would assume the proposition which petitioners are inceptively bound to prove.51 Topic: Issuance of the writ of preliminary injunction; Trademark dilution
Parenthetically, we find no flaw in the Court of Appeals disquisition on the consequences of DOCTRINE:
the issued injunction. An exercise of caution, we believe that such reflection is necessary to According to Section 138 of Republic Act No. 8293, [the Certificate of Registration] is prima
weigh the alleged entitlement to the writ vis--vis its possible effects. The injunction issued facie evidence of the validity of the registration, the registrants ownership of the mark and of
in the instant case is of a serious nature as it tends to do more than to maintain the status the exclusive right to use the same in connection with the goods or services and those that
quo. In fact, the assailed injunction if sustained would bring about the result desired by are related thereto specified in the certificate. Section 147.1 of said law likewise grants the
petitioners without a trial on the merits. owner of the registered mark the exclusive right to prevent all third parties not having the
owners consent from using in the course of trade identical or similar signs for goods or
Then again, we believe the Court of Appeals overstepped its authority when it declared that services which are identical or similar to those in respect of which the trademark is
the "alleged similarity as to the two logos is hardly confusing to the public." The only issue registered if such use results in a likelihood of confusion.
brought before the Court of Appeals through respondents Petition under Rule 65 of the
Rules of Court involved the grave abuse of discretion allegedly committed by the trial court Trademark dilution is the lessening of the capacity of a famous mark to identify and
in granting the TRO and the writ of preliminary injunction. The appellate court in making distinguish good or services; To be eligible for the protection from dilution, there has to be a
such a statement went beyond that issue and touched on the merits of the infringement finding that: (1) the trademark sought to be protected is famous and distinctive; (2) the use
case, which remains to be decided by the trial court. In our view, it was premature for the by another began after the owners mark became famous; and (3) such subsequent use
Court of Appeals to declare that there is no confusion between the two devices or logos. defames the owners mark.
That matter remains to be decided on by the trial court.
_________________________________________________________________________
Finally, we have no contention against the procedure adopted by the trial court in resolving
the application for an injunctive writ and we believe that respondent was accorded due FACTS:
process. Due process, in essence, is simply an opportunity to be heard. And in applications
Petitioners LS & Co. and LSPI filed a Complaint for Trademark Infringement, Injunction and
Damages against respondent Clinton Apparelle, Inc. together with an alternative defendant,
Olympian Garments, Inc. before the RTC. The complaint alleged that LS & Co., a foreign ISSUE: Whether the issuance of the writ of preliminary injunction by the trial court was
corporation duly organized and existing under the laws of the State of Delaware, U.S.A., proper and whether the Court of Appeals erred in setting aside the orders of the trial court.
and engaged in the apparel business, is the owner by prior adoption and use since 1986 of
the internationally famous Dockers and Design trademark. This ownership is evidenced by No. After a careful consideration of the facts and arguments of the parties, the Court finds
its valid and existing registrations in various member countries of the Paris Convention. In that petitioners did not adequately prove their entitlement to the injunctive writ. In the
the Philippines, it has a Certificate of Registration No. 46619 in the Principal Register for absence of proof of a legal right and the injury sustained by the applicant, an order of the
use of said trademark on pants, shirts, blouses, skirts, shorts, sweatshirts and jackets under trial court granting the issuance of an injunctive writ will be set aside for having been issued
Class 25. with grave abuse of discretion. Conformably, the Court of Appeals was correct in setting
aside the assailed orders of the trial court.
The Dockers and Design trademark was first used in the Philippines in or about May 1988, __________________________________________________________________
by LSPI, a domestic corporation engaged in the manufacture, sale and distribution of
various products bearing trademarks owned by LS & Co. LS & Co. and LSPI further alleged RULING: Section 1, Rule 58 of the Rules of Court defines a preliminary injunction as an
that they discovered the presence in the local market of jeans under the brand name order granted at any stage of an action prior to the judgment or final order requiring a party
Paddocks using a device which is substantially, if not exactly, similar to the Dockers and or a court, agency or a person to refrain from a particular act or acts. An extraordinary
Design trademark owned by and registered in the name of LS & Co., without its consent. remedy, injunction is designed to preserve or maintain the status quo of things and is
Based on their information and belief, Clinton Apparelle manufactured and continues to generally availed of to prevent actual or threatened acts until the merits of the case can be
manufacture such Paddocks jeans and other apparel. heard. It is resorted to only when there is a pressing necessity to avoid injurious
consequences, which cannot be remedied under any standard compensation. The
resolution of an application for a writ of preliminary injunction rests upon the existence of an
The petitioners prayed for the issuance of a TRO. On the date of the hearing for the emergency or of a special recourse before the main case can be heard in due course of
issuance of the TRO, respondents Clinton Apparelle and Olympian Garments failed to proceedings. Section 3, Rule 58, of the Rules of Court enumerates the grounds for the
appear despite notice. Clinton Apparelle claimed that it was not notified of such hearing. issuance of a preliminary injunction:
Only Olympian Garments allegedly had been issued with summons. Despite the absence of
the defendants, the hearing on the application for the issuance of a TRO continued. (a) That the applicant is entitled to the relief demanded, and the whole or part of such
relief consists in restraining the commission or continuance of the act or acts complained
The RTC then issued a TRO and a writ of preliminary injuction. The evidence considered by of, or in requiring the performance of an act or acts, either for a limited period or
the trial court in granting injunctive relief were as follows: perpetually;
(b) That the commission, continuance, or non-performance of the act or acts complained
of during the litigation would probably work injustice to the applicant; or
(1) a certified true copy of the certificate of trademark registration for Dockers and Design; (c) That a party, court, agency or a person is doing, threatening, or is attempting to do, or
(2) a pair of DOCKERS pants bearing the Dockers and Design trademark; (3) a pair of is procuring or suffering to be done, some act or acts probably in violation of the rights of
Paddocks pants bearing respondents assailed logo; (4) the Trends MBL Survey Report the applicant respecting the subject of the action or proceeding, and tending to render
purportedly proving that there was confusing similarity between two marks; (5) the affidavit the judgment ineffectual.
of one Bernabe Alajar which recounted petitioners prior adoption, use and registration of the
Dockers and Design trademark; and (6) the affidavit of one Mercedes Abad of Trends MBL, Under the cited provision, a clear and positive right especially calling for judicial protection
Inc. which detailed the methodology and procedure used in their survey and the results must be shown. Injunction is not a remedy to protect or enforce contingent, abstract, or
thereof. future rights. There must exist an actual right. There must be a patent showing by the
complaint that there exists a right to be protected and that the acts against which the writ is
On appeal, the CA held that the trial court did not follow the procedure required by law for to be directed are violative of said right.
the issuance of a TRO as Clinton Apparelle was not duly notified of the date of the summary
hearing for its issuance. Thus, the CA ruled that the TRO had been improperly issued. The The Court of Appeals did not err in reviewing proof adduced by petitioners to support its
CA also held that the issuance of the writ of preliminary injunction is questionable. According application for the issuance of the writ. While the matter of the issuance of a writ of
to the CA, petitioners LS & Co. and LSPI failed to sufficiently establish its material and preliminary injunction is addressed to the sound discretion of the trial court, this discretion
substantial right to have the writ issued. must be exercised based upon the grounds and in the manner provided by law.
owner does not have to wait until the mark loses its distinctiveness to obtain injunctive relief,
In the present case, we find that there was scant justification for the issuance of the and that the mere use by an infringer of a registered mark is already actionable even if he
writ of preliminary injunction. Petitioners anchor their legal right to Dockers and Design has not yet profited thereby or has damaged the trademark owner.
trademark on the Certificate of Registration issued in their favor by the Bureau of Patents,
Trademarks and Technology Transfer.* According to Section 138 of Republic Act No. 8293, Trademark dilution is the lessening of the capacity of a famous mark to identify and
this Certificate of Registration is prima facie evidence of the validity of the registration, the distinguish goods or services, regardless of the presence or absence of: (1) competition
registrants ownership of the mark and of the exclusive right to use the same in connection between the owner of the famous mark and other parties; or (2) likelihood of confusion,
with the goods or services and those that are related thereto specified in the certificate. mistake or deception. Subject to the principles of equity, the owner of a famous mark is
Section 147.1 of said law likewise grants the owner of the registered mark the exclusive entitled to an injunction against another persons commercial use in commerce of a mark or
right to prevent all third parties not having the owners consent from using in the course of trade name, if such use begins after the mark has become famous and causes dilution of
trade identical or similar signs for goods or services which are identical or similar to those in the distinctive quality of the mark. This is intended to protect famous marks from subsequent
respect of which the trademark is registered if such use results in a likelihood of confusion. uses that blur distinctiveness of the mark or tarnish or disparage it.
However, attention should be given to the fact that petitioners registered trademark consists Based on the foregoing, to be eligible for protection from dilution, there has to be a finding
of two elements: (1) the word mark Dockers and (2) the wing-shaped design or logo. that: (1) the trademark sought to be protected is famous and distinctive; (2) the use by
Notably, there is only one registration for both features of the trademark giving the respondent of Paddocks and Design began after the petitioners mark became famous; and
impression that the two should be considered as a single unit. Clinton Apparelles (3) such subsequent use defames petitioners mark. In the case at bar, petitioners have yet
trademark, on the other hand, uses the Paddocks word mark on top of a logo which to establish whether Dockers and Design has acquired a strong degree of distinctiveness
according to petitioners is a slavish imitation of the Dockers design. The two trademarks and whether the other two elements are present for their cause to fall within the ambit of the
apparently differ in their word marks (Dockers and Paddocks), but again according to invoked protection. The Trends MBL Survey Report which petitioners presented in a bid to
petitioners, they employ similar or identical logos. It could thus be said that respondent only establish that there was confusing similarity between two marks is not sufficient proof of any
appropriates petitioners logo and not the word mark Dockers; it uses only a portion of the dilution that the trial court must enjoin.
registered trademark and not the whole.
The Court also finds that the trial courts order granting the writ did not adequately detail the
Given the single registration of the trademark Dockers and Design and considering that reasons for the grant. The trial court in granting the injunctive relief tersely ratiocinated that
respondent only uses the assailed device but a different word mark, the right to prevent the the plaintiffs appear to be entitled to the relief prayed for and this Court is of the considered
latter from using the challenged Paddocks device is far from clear. Stated otherwise, it is not belief and humble view that, without necessarily delving on the merits, the paramount
evident whether the single registration of the trademark Dockers and Design confers on the interest of justice will be better served if the status quo shall be maintained. Clearly, this
owner the right to prevent the use of a fraction thereof in the course of trade. It is also statement falls short of the requirement laid down. In addition, we agree with the Court of
unclear whether the use without the owners consent of a portion of a trademark registered Appeals in its holding that the damages the petitioners had suffered or continue to suffer
in its entirety constitutes material or substantial invasion of the owners right. may be compensated in terms of monetary consideration.
It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the We also believe that the issued injunctive writ, if allowed, would dispose of the case on the
dominant or central feature of petitioners trademark the feature that prevails or is retained in merits as it would effectively enjoin the use of the Paddocks device without proof that there
the minds of the publican imitation of which creates the likelihood of deceiving the public is basis for such action. The prevailing rule is that courts should avoid issuing a writ of
and constitutes trademark infringement. In sum, there are vital matters which have yet and preliminary injunction that would in effect dispose of the main case without trial. There would
may only be established through a full-blown trial. be a prejudgment of the main case and a reversal of the rule on the burden of proof since it
would assume the proposition which petitioners are inceptively bound to prove.
From the above discussion, we find that petitioners right to injunctive relief has not been
clearly and unmistakably demonstrated. The right has yet to be determined. Petitioners also
failed to show proof that there is material and substantial invasion of their right to warrant DISPOSITIVE: WHEREFORE, the instant petition is DENIED. The Decision of the Court of
the issuance of an injunctive writ. Neither were petitioners able to show any urgent and Appeals dated 21 December 1998 and its Resolution dated 10 May 1999 are AFFIRMED.
permanent necessity for the writ to prevent serious damage. Costs against petitioners.
Petitioners wish to impress upon the Court the urgent necessity for injunctive relief, urging
that the erosion or dilution of their trademark is protectable. They assert that a trademark
Example: a drug sold here at 45 pesos per tablet and sold at 8 pesos in
Section 20, RA 166 as compared to Sec. 138, IPC another country, an importer may now bring the quality cheaper medicine in
the country and sell it cheaper for our countrymen.
CHAPTER V - Rights and Remedies G.R. No. 86683 January 21, 1993
Section 20. Certificate of registration prima facie evidence of validity. - A certificate of PHILIP S. YU vs. CA, THE HONORABLE PRESIDING JUDGE, RTC OF MANILA,
registration of a mark or trade-name shall be prima facie evidence of the validity of the BRANCH XXXIV (34) and UNISIA MERCHANDISING CO., INC.
registration, the registrant's ownership of the mark or trade-name, and of the registrant's
exclusive right to use the same in connection with the goods, business or services specified Petitioner, the exclusive distributor of the House of Mayfair wallcovering products in the
in the certificate, subject to any conditions and limitations stated therein. Philippines, cried foul when his former dealer of the same goods, herein private respondent,
purchased the merchandise from the House of Mayfair in England through FNF Trading in
West Germany and sold said merchandise in the Philippines. Both the court of origin and
SECTION 138. Certificates of Registration. A certificate of registration of a mark shall the appellate court rejected petitioner's thesis that private respondent was engaged in a
be prima facie evidence of the validity of the registration, the registrant's ownership of the sinister form of unfair competition within the context of Article 28 of the New Civil Code (pp.
mark, and of the registrant's exclusive right to use the same in connection with the goods or 23 and 64, Rollo). Hence, the petition at bar.
services and those that are related thereto specified in the certificate.
There is no dispute that petitioner has had an exclusive sales agency agreement with the
House of Mayfair since 1987 to promote and procure orders for Mayfair wallcovering
What is Parallel Importation: products from customers in the Philippines (Annex "B", Petition; p. 30, Rollo). Even as
Parallel imports (sometimes referred to as gray market goods) refer to branded goods that petitioner was such exclusive distributor, private respondent, which was then petitioner's
are imported into a market and sold there without the consent of the owner of the trademark dealer, imported the some goods via the FNF Trading which eventually sold the
in that market. merchandise in the domestic market (TSN, September 20, 1988, p. 9; p. 117, Rollo). In the
suit for injunction which petitioner filed before the Regional Trial Court of the National
The goods are genuine goods (as distinct from counterfeit goods), in that they have been Capital Judicial Region stationed at Manila, petitioner pressed the idea that he was
manufactured by or for or under license from the brand owner. However, they may have practically by-passed and that private respondent acted in concert with the FNF Trading in
been formulated or packaged for a particular jurisdiction, and then are imported into a misleading Mayfair into believing that the goods ordered by the trading firm were intended
different jurisdiction from that intended by the brand owner. for shipment to Nigeria although they were actually shipped to and sold in the Philippines
(Paragraph 5, Complaint: p. 34, Rollo). Private respondent professed ignorance of the
- When a product made legally (i.e. not pirated) abroad is imported without the exclusive contract in favor of petitioner. Even then, private respondent responded by
permission of the intellectual property right-holder (e.g. the trademark or asserting that petitioner's understanding with Mayfair is binding only between the parties
patent owner). Some countries allow this, others do not. thereto (Paragraph 5, Answer; p. 50, Rollo).
- Parallel importation (Sec. 7), as applied to the local setting, is when a patented
drug is brought into the country by Government or any private third party even In the course of hearing the arguments for and against the issuance of the requested writ of
without the consent of the patent holder as long as any of the 2 condition is preliminary injunction, petitioner impressed before the lower court that he is seeking to
met: enjoin the sale and distribution by private respondent of the same goods in the market
(TSN, September 20, 1988, p. 35; p. 142, Rollo) but the Honorable Cesar V. Alejandria,
a. It has been introduced in the Philippines by the patent holder, or Presiding Judge of Branch 34 was unperturbed, thusly:
b. It has been introduced anywhere in the world by the patent owner. Resolving plaintiff's motion embodied in the complaint for the issuance of a writ of
preliminary injunction after hearing, but without prejudging the merits of the case, and
It allows for an importer to shop around for a good price for a patented finding from the evidences adduced by the plaintiff, that the terms and conditions of the
product, bring this into the country and sell it to a more competitive and agency agreement, Exhibit "A-inj." between the plaintiff and The House of Mayfair of
affordable price than the prevailing price of the same patented product England for the exclusive distributorship by the plaintiff of the latter's goods, apertain to
sourced locally from the innovator company. them; that there is no privity of contract between the plaintiff and the defendant; that the
controversy in this case arose from a breach of contract by the FNF Trading of Germany, for
having shipped goods it had purchased from The House of Mayfair to the Philippines: that
as shown in Exh. "J-inj.", the House of Mayfair was demanding payment of 4,500.00 from Recoletos, 39 Phil. 587 [1919]; 4 Paras, Civil Code of the Philippines Annotated, 1981 10th
the FNF Trading for restitution of plaintiff's alleged loss on account of the shipment of the Ed., p. 439; 4 Tolentino, Commentaries and Jurisprudence on the Civil Code, 1986 Ed.,
goods in question here in the Philippines and now in the possession of the defendant; it p. 439). These observations, however, do not in the least convey the message that We have
appears to the Court that to restrain the defendant from selling the goods it has ordered placed the cart ahead of the horse, so to speak, by pronouncing private respondent's liability
from the FNF Trading of Germany, would be without legal justification. at this stage in view of the pendency of the main suit for injunction below. We are simply
rectifying certain misperceptions entertained by the appellate court as regards the feasibility
WHEREFORE, the motion for the issuance of a writ of preliminary injunction to restrain the of requesting a preliminary injunction to enjoin a stranger to an agreement.
defendant from selling the goods it has ordered from the FNF Trading of Germany is hereby
DENIED. (p. 64, Rollo.) To Our mind, the right to perform an exclusive distributorship agreement and to reap the
profits resulting from such performance are proprietary rights which a party may protect (30
The indifference of the trial court towards petitioner's supplication occasioned the filing of a Am. Jur. Section 19, pp. 71-72: Jurado, Comments and Jurisprudence on Obligations and
petition for review on certiorari with the Court of Appeals but Justice Ordoez-Benitez, with Contracts, 1983 8th Rev. Ed., p. 336) which may otherwise not be diminished, nay, rendered
whom Justices Bellosillo and Kalalo concurred, reacted in the same nonchalant fashion. illusory by the expedient act of utilizing or interposing a person or firm to obtain goods from
According to the appellate court, petitioner was not able to demonstrate the unequivocal the supplier to defeat the very purpose for which the exclusive distributorship was
right which he sought to protect and that private respondent is a complete stranger vis-a-vis conceptualized, at the expense of the sole authorized distributor (43 C.J.S. 597).
the covenant between petitioner and Mayfair. Apart from these considerations, the reviewing
authority noted that petitioner could be fully compensated for the prejudice he suffered Another circumstance which respondent court overlooked was petitioner's suggestion,
judging from the tenor of Mayfair's correspondence to FNF Trading wherein Mayfair took the which was not disputed by herein private respondent in its comment, that the House of
cudgels for petitioner in seeking compensation for the latter's loss as a consequence of Mayfair in England was duped into believing that the goods ordered through the FNF
private respondent's scheme (p. 79, Rollo; pp. 23-29, Rollo). Trading were to be shipped to Nigeria only, but the goods were actually sent to and sold in
the Philippines. A ploy of this character is akin to the scenario of a third person who induces
In the petition at hand, petitioner anchors his plea for redress on his perception that private a party to renege on or violate his undertaking under a contract, thereby entitling the other
respondent has distributed and continues to sell Mayfair covering products in contravention contracting party to relief therefrom (Article 1314, New Civil Code). The breach caused by
of petitioner's exclusive right conferred by the covenant with the House of Mayfair. private respondent was even aggravated by the consequent diversion of trade from the
business of petitioner to that of private respondent caused by the latter's species of unfair
On March 13, 1989, a temporary restraining order was issued to last until further notice from competition as demonstrated no less by the sales effected inspite of this Court's restraining
this Court directed against private respondent (p. 188, Rollo). Notwithstanding such order. This brings Us to the irreparable mischief which respondent court misappreciated
proscription, private respondent persisted in the distribution and sole (p. 208; 228-229, when it refused to grant the relief simply because of the observation that petitioner can be
Rollo), triggering petitioner's motion to cite private respondent's manager in contempt of fully compensated for the damage. A contrario, the injury is irreparable where it is
court (p. 223, Rollo). Considering that private respondent's manager, Frank Sia, admitted continuous and repeated since from its constant and frequent recurrence, no fair and
the acts complained of, a fine of P500.00 was imposed on him but he failed to pay the same reasonable redress can be had therefor by petitioner insofar as his goodwill and business
within the five-day period provided in Our Resolution of June 21, 1989 reputation as sole distributor are concerned. Withal, to expect petitioner to file a complaint
(p. 236, Rollo). for every sale effected by private respondent will certainly court multiplicity of suits (3
Francisco, Revised Rules of Court, 1985 Edition, p. 261).
Did respondent appellate court correctly agree with the lower court in disallowing the writ
solicited by herein petitioner? WHEREFORE, the petition is hereby GRANTED. The decision of the Court of Appeals
dated January 13, 1989 in CA-G.R. SP No. 16019 and the Order dated October 16, 1988
That the exclusive sales contract which links petitioner and the House of Mayfair is solely issued by the magistrate at the court of origin are hereby REVERSED and SET ASIDE. Let
the concern of the privies thereto and cannot thus extend its chain as to bind private this case be remanded to the court of origin for issuance of a writ of preliminary injunction
respondent herein is, We believe, beside the point. Verily, injunction is the appropriate upon petitioner's posting of a bond in the sum of Fifty Thousand (P50,000.00) Pesos to be
remedy to prevent a wrongful interference with contracts by strangers to such contracts approved by said court, to remain effective during the trial on the merits until final
where the legal remedy is insufficient and the resulting injury is irreparable (Gilchrist vs. determination of the case. The manager of private respondent. Frank Sia, is hereby ordered
Cuddy, 29 Phil. 542 [1915]; 4-A Padilla, Civil Code Annotated, 1988 Ed., p. 90). The liability to pay to the Clerk of Court within five (5) days from notice hereof the fine of P500.00, as
of private respondent, if any, does not emanate from the four corners of the contract for previously imposed on him, with a warning that failure to do so will be dealt with more
undoubtedly, Unisia Merchandising Co., Inc. is not a party thereto but its accountability is severely.
"an independent act generative of civil liability" (Daywalt vs. Corporacion de PP. Agustinos
Upon issuance of the writ of preliminary injunction, the restraining order issued on March reasonable redress can be had therefor by petitioner insofar as his goodwill and business
13, 1989 by this Court shall be deemed automatically lifted. reputation as sole distributor are concerned. Furthermore, the CA overlooked that the
House of Mayfair in England was duped into believing that the goods ordered through the
FNF Trading were to be shipped to Nigeria only, but the goods were actually sent to and
YU V. CA sold in the Philippines. A ploy of this character is akin to the scenario of a third person who
induces a party to renege on or violate his undertaking under a contract, thereby entitling
FACTS: Philip Yu, Petitioner, the exclusive distributor of the House of Mayfair wallcovering the other contracting party to relief therefrom (Article 1314, New Civil Code).
products in the Philippines, cried foul when his former dealer of the same goods, herein
private respondent, purchased the merchandise from the House of Mayfair in England
through FNF Trading in West Germany and sold said merchandise in the Philippines.
Philip YU, the petitioner has had an exclusive sales agency agreement with the House of I. Available Remedies
Mayfair since 1987 to promote and procure orders for Mayfair wallcovering products from
customers in the Philippines. Rules of Procedure for Intellectual Property Rights Cases (A.M. No. 10-3-
10-SC)
Even as petitioner was such exclusive distributor, private respondent, which was then Sec. 3, IPC
petitioner's dealer, imported the same goods via the FNF Trading which eventually sold the Sec. 160, IPC
merchandise in the domestic market. Sec. 231, IPC
Leviton Industries v. Salvador, 114 SCRA 420
A suit for injunction was filed by YU before the Regional Trial Court of the National Capital Puma v. IAC, 158 SCRA 233
Judicial Region stationed at Manila, petitioner pressed the idea that he was practically by- La Chemise Lacoste v. Fernandez, 129 SCRA 373
passed and that private respondent acted in concert with the FNF Trading in misleading
Mayfair into believing that the goods ordered by the trading firm were intended for shipment 1. Administrative
to Nigeria although they were actually shipped to and sold in the Philippines.
a) Cancellation Proceedings
Private respondent professed ignorance of the exclusive contract in favor of petitioner. Even
then, private respondent responded by asserting that petitioner's understanding with Mayfair Sec. 151 (and its sub-paragraphs), IPC
is binding only between the parties thereto. Sec. 152 (and its sub-paragraphs), IPC
Sections 153 and 154, IPC
RTC denied the motion for the issuance of a writ of preliminary injunction to restrain the Sec. 230, IPC
defendant from selling the goods it has ordered from the FNF Trading of Germany. In its Sec. 232.2, IPC
decision the court stated that the terms and conditions of the agreement between the Romero v. Maiden Form, 10 SCRA 556
plaintiff (Philip YU) and The House of Mayfair of England for the exclusive distributorship by Philippine Nut Industry v. Standard Brands Inc., 65 SCRA
the plaintiff of the latter's goods, appertain only to them and that there is no privity of 575
contract between the plaintiff and the defendant. Anchor Trading Co. v. Director of Patents, 99 Phil.1040
Clorox Company v. Director of Patents, 20 SCRA 965 (1967)
Philip yu filed a petition for review on certiorari with the Court of Appeals but the CA reacted Wolverine Worldwide, Inc. v. CA, 169 SCRA 627 (1989)
in the same nonchalant fashion. According to the appellate court, petitioner was not able to Shangrila v. CA, 359 SCRA 273 (1999)
demonstrate the unequivocal right which he sought to protect and that private respondent is Superior Commercial Enterprises vs. Kunnan Enterprises
a complete stranger vis-a-vis the covenant between petitioner and Mayfair. Ltd., G.R. No. 169974, April 20, 2010.
ISSUE: Did respondent appellate court correctly agree with the lower court in disallowing b) Intellectual Property Rights Violations
the writ solicited by herein petitioner?
Sec. 10(2) (and its sub-paragraphs), IPC
RULING: No. According to the SC, injunction is the appropriate remedy to prevent a Sec. 232, IPC
wrongful interference with contracts by strangers to such contracts where the legal remedy Sec. 232.2, IPC
is insufficient and the resulting injury is irreparable. The injury is irreparable where it is
continuous and repeated since from its constant and frequent recurrence, no fair and
IN-N-Out Burger v. Sehwani, G.R. No. 179127, December 24, Distilleria Washington v. CA, 263 SCRA 303
2008, 536 SCRA 225 Distilleria Washington v. La Tondena, 280 SCRA 116
Twin Ace Holdings v. CA, 280 SCRA 884
c) Prohibition of Importation
Sec. 166, IPC c) Unfair Competition
2. Civil Sec. 168 (and its sub-paragraphs), IPC

Sec. 232, IPC
a) Infringement Difference between Infringement and Unfair Competition:
Sehwani, Inc. and Benitas Frites, Inc. vs. IN-N-OUT Burger,
Sec. 155 (and its sub-paragraphs), IPC Inc., 536 SCRA 255 (2007)
Sec. 156 (and its sub-paragraphs), IPC Del Monte Corporation v. CA, 181 SCRA 410
Sec. 157 (and its sub-paragraphs). IPC Pro Line Sports Center v. CA, 281 SCRA 162
Sec. 158, IPC Universal Rubber Products v. CA, 130 SCRA 104
Sec. 159 (and its sub-paragraphs), IPC, as amended by RA No. Converse Rubber Corp. v. Jacinto Rubber and Plastic Co.,
9502 (Universally Accessible Cheaper and Quality Medicines Act 97 SCRA 158
of 2008) Asia Brewery v. CA, 224 SCRA 437 (1993)
Sec. 161, IPC Solid Triangle v. Sheriff, 370 SCRA 491 (2001)
Sec. 163, IPC Sony Computer v. Supergreen, Inc., GR No. 161823, 22
Sec. 164, IPC March 2007
Sec. 232, IPC Coca Cola v. Gomez, G.R. No. 154491, November 14, 2008
Superior Commercial Enterprises vs. Kunnan Enterprises
Rule on Search and Seizure in Civil Actions for Infringement Ltd., G.R. No. 169974. April 20, 2010.
of Intellectual Property Rights (A.M. No. 02-1-06-SC)
Rules of Procedure for Intellectual Property Rights Cases c) Action for False or Fraudulent Declaration
(A.M. No. 10-3-10-SC) issued on 3 October 2011 Sec. 162, IPC
Sec. 163, IPC
Etepha v. Director of Patents, 16 SCRA 495 (1966) Sec. 164, IPC
Esso Standard Eastern v. CA, 116 SCRA 338 Sec. 232, IPC
Fruit of the Loom v. CA, 133 SCRA 405 (1984)
Del Monte Corporation v. CA, 181 SCRA 410 d) Action for False Designation of Origin
Asia Brewery v. CA, 224 SCRA 437 Sec. 169 (and its sub-paragraphs), IP Code
Conrad v. CA, 246 SCRA 691 Sec. 232, IPC
Emerald Garment Manufacturing v. CA, 251 SCRA 600
Amigo v. Cluett Peabody, 354 SCRA 434 (2001) 3. Criminal
Societe Des Produits Nestle v. CA, 356 SCRA 207 (2001) Sec. 170, IPC
Mighty Corporation v. E. & J. Gallo Winery, GR No. 154342, Rule 10, Sec. 2, Rules of Procedure for Intellectual Property
14 July 2004 Rights Cases (A.M. No. 10-3-10-SC) courts that can issue
McDonald's Corp v. L.C. Big Mak, GR 143993 dated 18 August search warrants
2004 Sy v. Court of Appeals, 113 SCRA 334
McDonald's Corp. v. Macjoy Fastfood Corp., GR No. 166115,
2 February 2007 Samson v. Judge Daway, GR Nos. 160054-55, July 21, 2004
Skechers v. Inter Pacific Industrial Trading, G.R. No. 164321, William C. Yao, Sr. vs. The People Of The Philippines, G.R.
March 28, 2011 No. 168306. June 19, 2007.
Cases on bottles and containers: J. TRADENAMES

Cagayan Valley Enterprises v. CA, 179 SCRA 218
1. Definition Armco Steel Corporation v. SEC, 156 SCRA 822

Sec. 121.3, IPC Western Equipments & Supply Co. v. Reyes, 51 Phil 115
Converse Rubber Corporation v. Universal Rubber Fredco Manufacturing Corporation V. President And Fellows
Products, 117 SCRA 154 Of Harvard College (Harvard University), G.R. No. 185917,
June 1, 2011
2. Tradename when not allowed
Sec. 165.1, IPC K. COLLECTIVE MARKS
3. Rights of the Tradename Owner 1. Definition

Secs. 165.2, IPC Sec. 121.2, IPC
Sec. 165.3, IPC 2. Section 167 (and its sub-paragraphs), IPC
Sec. 165.4, IPC
Philips Export v. CA, 206 SCRA 457

Ipl - Trademarks (DLT) 1

Uploaded by

Document Information

Original Description:

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Ipl - Trademarks (DLT) 1

Uploaded by

Copyright:

Available Formats

IPL TRADEMARKS [DLT] 1

E. Procedural: How to Register

246 CORPORATION V. DAWAY G.R. No. 112012 April 4, 2001

3. RESPONDENT COURT ERRED IN HOLDING THAT THE TOTALITY RULE, RATHER

Facts: G.R. No. 138900 September 20, 2005

2. Civil Sec. 168 (and its sub-paragraphs), IPC

Cases on bottles and containers: J. TRADENAMES

1. Definition Armco Steel Corporation v. SEC, 156 SCRA 822

3. Rights of the Tradename Owner 1. Definition

You might also like