as a trade-mark or trade-name. The Ang vs.

Teodoro
phrase "ang tibay" is never used G.R. No. L-48226
adjectively to define or describe an object. December 14, 1942

“Ang Tibay”, being neither geographic nor Facts:

descriptive, was originally capable of Respondent Toribio Teodoro, has
exclusive appropriation as a trade-mark, continuously used "Ang Tibay," both as a
acquired a proprietary connotation by trade-mark and as a trade-name, in the
respondent's long and exclusive use of manufacture and sale of slippers, shoes,
said phrase with reference to his products and indoor baseballs since 1910.
and his business. Petitioner, Ana L. Ang, registered the same
trade-mark "Ang Tibay" for pants and shirts
No, the mere relation or association of the on April 11, 1932, and established a
articles is not controlling. The factory for the manufacture of said articles
uninterrupted and exclusive use since in the year 1937. In the following year her
1910 of respondent's registered trade- gross sales amounted to P422,682.09.
mark on slippers and shoes manufactured
by him, , it has come to indicate the origin The Respondent filed a petition for the
and ownership of said goods.The court cancellation of the trademark of the
held that the selection by petitioner of the petitioner on the grounds that the
same trade-mark for pants and shirts was respondent’s trade mark “Ang Tibay" is not
motivated by a desire to get a free ride on a descriptive term, it acquired secondary
the reputation and selling power it has meaning since he was using it since 1910
acquired at the hands of the respondent. and pants and shirt of the petitioner and
the respondent’s shoes slippers, shoes,
Doctrine: the test employed by the courts and indoor baseballs are related goods.
to determine whether noncompeting goods Respondent contends that the petitioner
are or are not of the same class if they are never had spent a single centavo
so dissimilar or so foreign to each other as advertising "Ang Tibay" shirts and pants
to make it unlikely that the purchaser prior to 1938.
would think the first user made the second
user's goods. The Trial Court held that the products of
the parties in this case were not related
Lim Hoa vs. Directors of Patents goods.
G.R. No. L-8072. October 31, 1956
The Court of Appeals Reversed the
Facts: decision of the Trial Court.
Petitioner, Lim Hoa, filed with the Patent
Office an application for the registration of Issue:
a trademark, consisting of a representation a) WON Ang Tibay is a Descriptive name?
of two midget roosters in an attitude of b) WON Ang Tibay trade name acquired
combat with the word “Bantam” printed secondary meaning?
above them, he claiming that he had used c) WON Pants and shirt of the petitioner
said trademark on a food seasoning and the shoes slippers, shoes, and
product. indoor baseballs are related goods?

The Agricom Development Co., Inc., a Ruling:

domestic corporation, opposed the "Ang Tibay" is not a descriptive term within
application on several grounds, among the meaning of the Trade-Mark Law but
others, that the trademark sought to be rather a fanciful or coined phrase which
registered was confusingly similar to its may properly and legally be appropriated
Cuanchow Soy and Canning Co., vs. register mark, consisting of a pictorial
The Director of Patents and Villapania, representation of a hen with the words
G.R. No. L-13947 June 30, 1960 “Hen Brand” and “Marca Manok”, which
mark or brand was also used on a food
Facts: seasoning product, before the use of the
Both petitioner Chuanchow Soy & Canning trademark by the applicant.
Co. and respondent Rosario Villapania are
engaged in the manufacture and sale of Director of Patents held that applicant’s
soy sauce. Since 1950, petitioner had trademark would cause confusion or
been using as trade mark the words "Carp mistake or deceive purchasers, and he
Brand Soy", printed in a distinctive style of refused registration of said trademark.
lettering above the drawing of a fish to
distinguish its product, on labels affixed Petitioner filed an appeal to reversed the
directly to the bottles containing soy sauce, decision of the Director of Patents.
and on tissue paper in which these bottles
were wrapped. Issue:
WON the the use of two roosters would
Respondent Villapania since 1956 had cause confusion or mistakes in the mind of
been using as trademark of her soy sauce the public or deceive purchasers?
the name of "Bangos Brand" written in the
same distinctive style of lettering as that of Ruling:
the petitioner's "Carp Brand", above the Yes, the two roosters appearing in the
drawing of the fish similar to the fish trademark of the applicant and the hen
drawing on the trademark of petitioner, on appearing on the trademark of the
labels also attached to the bottles Oppositor, although of different sexes,
containing her soy sauce, and the bottles belong to the same family of chicken,
were wrapped also in tissue paper bearing known as manok in all the principal
a similar design dialects of the Philippines, and when a
cook or a household help or even a
Villapania applied for registration of her housewife buys a food seasoning product
trademark. for the kitchen the brand of “Manok” or
“Marca Manok” would most likely be upper
Petitioner company filed its opposition to most in her mind and would influence her
respondent's application. Respondent in selecting the product, regardless of
Director of Patents rendered a decision whether the brand pictures a hen or a
dismissing petitioner's opposition to the rooster or two roosters.
application.
Doctrine:
Issue: The test of dominancy
WON the features of the respondent’s
trademark would cause confusion or Similarity in size, form, and color, while
mistakes in the mind of the public or relevant, is not conclusive. If the
deceive purchasers? competing trademark contains the main or
essential or dominant features of another,
Ruling: and confusion and deception is likely to
Yes, The court held that the trademarks of result, infringement takes place.
the parties involves in this case were very Duplication or imitation is not necessary;
close resemblance between the two not nor it is necessary that the infringing label
only in the style of lettering of the words should suggest an effort to imitate.
"Carp" and “Brand" and the words "Bangos
Brand", but also in the size of the letters,
Boc on the ground that the petitioner has as well as the word "Soy" and the Chinese
failed has failed to establish satisfactorily characters underneath the said three
its claim of 'prior' use" of the subject trade words, including the letters beneath the
mark in the Philippines before World War II two fishes, all of which words are
and Petitioner "will not be damaged by the correspondingly in the same color, to say
registration of the trade mark and design in nothing of the similarity of the two fishes
favor of applicant Kee Boc." not only in their size but even in the length
and position of their respective tails and
Issue: fin. This not only to avoid confusion on the
WON petitioner-oppositor had actually part of the public, but also to protect an
used this trade mark for Japanese goods already used and registered trademark
in the Philippines prior to that of the and an established goodwill.
applicant?
Doctrine:
Ruling: To determine if that competing trade are
Yes, the trade mark sought to be similar, placed them side by side, and
registered already belongs to Kojiro Asari. compared them.
Shirts and undershirts bearing said trade
mark appear to have been imported to the Asari Yoko CO., LTD., petitioner, vs.
Philippines as early as 1949. The Kee Boc and Celedonio Agrava,
transcript of the trade mark filed by the Director of Patents,
applicant before the director in connection G.R. No. L-14086 January 20, 1961
with his petition for registration, was taken
from a mark actually used on goods Facts:
imported from Japan to the Philippines, Kee Boc, a Chinese citizen, filed a petition
except that the former does not contain the for the registration of the trade mark
inscriptions "REGISTERED TRADE "RACE" and design to be used in shirts
MARK" and "Made in Occupied Japan", and undershirts manufactured by him. He
because the inscriptions are covered by a claims to have first used the trade mark in
thin piece of paper pasted on the commerce in year1952, basing the design
inscriptions. on a movie picture.

The trade mark "RACE BRAND" applied Asari Yoko Co., Ltd., a Japanese
for is exactly the same as the trade mark corporation, opposed to the registration of
"RACE BRAND" registered in Tokyo. the trade mark of petitioner on the ground
Therefore, The petitioner-oppositor was that he is the owner of the trade mark
the first user of the trade mark in question because the same is registered in Japan
in the Philippines, it will be damaged by and in the Philippines. It was registered on
the registration of the trade mark in the August, 1929, under the provisions of Act
name of applicant-respondent. No. 666. that the trade mark as been in
continuous use in commerce in, and trade
MEAD JOHNSON and COMPANY, vs. N. with the Philippines since its registration
V. J. VAN DORP, LTD., ET AL until the early art of 1942, and then again
G.R. No. L-17501 April 27, 1963 after the liberation of the Philippines up to
the present; that the trade mark was ever
Facts: abandoned by the registrant and that it will
Respondent N. V. J. Van Dorp, Ltd, a be damaged by the registration of the
corporation doing business in Netherlands, same.
filed an application for the registration of
the trademark “ALASKA” for the use of the Director of Patents dismissed the
opposition and adjudged applicant Kee
milk which is in red. Fourth, the their product which covers milk, milk
classification of their products were both products, dairy products and infant's foods.
dissimilar. Petitioner’s product falls under
Class 6 of the official classification as Petitioner Mead Johnson & Company,
Medicines and Pharmaceutical owner of the trademark "ALACTA" used for
Preparations”. On the other hand, powdered half-skim milk, filed an
respondent’s products falls under Class 47 opposition on the ground that it will be
which refers to "Foods and Ingredients of damaged by the said registration as the
Foods”. trademark “ALASKA" is confusingly similar
to its trademark “ALACTA".
Doctrine:
In determining if they are confusingly Respondent alleged that its trademark and
similar a comparison of said words is not product "ALASKA" are entirely different
the only determinant factor. The from oppositor's trademark and product
trademarks in their entirety as they appear "ALACTA", since applicant's product
in the respective labels must also be covers milk, milk products, dairy products
considered in relation to the goods to and infant's foods which fall under Class
which they are attached. 47 Foods and Ingredients of Foods, while
oppositor's products cover pharmaceutical
preparations for nutritional needs which fall
Chua Che, petitioner, vs. Philippine under Class 6, which refers to Medicines
Patent Office and Sy Tuo and Pharmaceutical Preparations.
G.R. No. L-18337 January 30, 1965
The Director of the Patent Office dismissed
Facts: the opposition.
Petitoner, Chua Che, filed an application
for the registration of the trademark “X-7” Issue:
for use on laundry soap. Petitioner alleged WON the respondent’s trademark “alaska”
that he first used the trade name “X-7” in would cause confusion or mistakes in the
commerce on June 10, 1957. mind of the public or deceive purchasers?

Respondent Sy Tuo, engaged in the Ruling:

business of selling perfume, lipstick and No,The court held that the marks involved
nail polish, presented a "Notice of were different to one another.
Opposition” on the ground that the
registration of the trademark "X-7" in the First, The sizes of the containers of the
name of applicant CHUA CHE will likely goods of petitioner differ from those of
mislead the public so as to make them respondent. The goods of petitioner come
believe that said goods are manufactured in one-pound container while those of
or sponsored by or in some way in trade respondent come in three sizes.
associated with him. Respondents alleged
that he first used the trade name “X-7” on Second, The colors too differ. One of
July 31, 1953 prior to applicant's first use petitioner's containers has one single
of the mark on June 10, 1957. Respondent background color, the other has two
also alleged that he spent a big amount in background colors.
expanding his business for the
manufacture of toilet soap and crystal Third, Petitioner's mark "ALACTA" has only
laundry soap with his already popular "X-7" the first letter capitalized and is written in
brand. black. Respondent's mark "ALASKA" has
all the letters capitalized written in white
except that of the condensed full cream
has had the said trademark registered in Petitioner contends that he is entitled to
the Philippines since 1930. the registration of the trademark “X-7" on
the grounds that products of opposer was
Issue: not related to his product and opposer has
WON the petitioner’s trademark would not yet used "X-7" mark on soap.
cause confusion or mistakes in the mind of
the public or deceive purchasers? Issue: WON the petitioner’s tradename
would cause confusion or mistakes in the
Ruling: mind of the public or deceive purchasers?
Yes, the court considered that the
similarities in appearance and sound Ruling:
between the marks AMBISCO and Yes, the court held that the products of the
NABISCO, the nature and similarity of the parties, while specifically different, are
products of the parties together with the products intended for use in the home and
fact that opposer's NABISCO has been usually have common purchasers.
used in commerce in the Philippines for Furthermore, the use of X-7 for laundry
more than fifty five (55) years before soap is but a natural expansion of
AMBISCO was adopted by applicant, business of the opposer. In fact, herein
confusion of purchasers is likely. opposer in 1956, prior to the alleged date
of first use by respondent-applicant of the
Doctrine: The question of infringement is trademark X-7 for laundry soap on June
to be determined by the test of dominancy. 10, 1957, had made steps in expanding
The dissimilarity in size, form and color of the use of this trademark to granulated
the label and the place where applied are soap.
not conclusive. If the competing label
contains the trademark of another, and Doctrine: Under the Trade Mark Act of
confusion or deception is likely to result, 1905, registration of a trademark should be
infringement takes place, regardless of the refused in cases where there is a
fact that the accessories are dissimilar. likelihood of confusion, mistake, or
Duplication or exact imitation is not deception, even though the goods fall into
necessary; nor is it necessary that the different categories.
infringing label should suggest an effort to
imitate. Operators, Inc. vs. The Director of
Patents, et al
Bristol Myers Co vs. The Director of G.R. No. L-17901 October 29,
Patents and United American 1965
Pharmaceuticals, Inc.
G.R. No. L-21587 May 19, 1966 Facts:
Petitioner, a domestic corporation, applied
Facts: to the Philippine Patent Office for
A petition for registration of the trademark registration of AMBISCO as a trademark
"BIOFERIN" was filed by the petitioner for its locally manufactured candy
United American Pharmaceuticals, Inc. It products. It has been using said trademark
covers medicine for simple headaches, since May 1956.
neuralgia, colds, menstrual pain and minor
muscular aches. The National Biscuit Company opposed
the application, having previously
Petitioner Bristol Myers Co., filed an registered NABISCO as trademark for its
opposition to the application. Said own bakery goods, such as biscuits,
oppositor is the owner in the Philippines of crackers, cakes and wafers. The oppositor,
the trademark “BUFFERIN" The product
Facts: covered by "BUFFERIN" also medicine for
Petitioner filed his application on simple headaches, neuralgia, colds,
November 25, 1958 for the registration of menstrual pain and minor muscular aches.
the trademark “Marca Pinya”, alleging
therein that since January 8, 1951 he had Oppositor's contention was that the
been using the trademark on undershirts registration of the applicant's trademark
(de hilo), T-shirts, and baby dresses. "BIOFERIN would violate its rights and
Because of the confusing similarity interests in its registered trademark
between said trademark and that applied "BUFFERIN" as well as mislead and
for on July 16, 1957 by Respondent Ng confuse the public as to the source and
Kian Giab, an interference was declared origin of the goods covered by the
as existing between the two applications. respective marks, in view of the allegedly
practically the same spelling, pronunciation
The respondent director of patents and letter-type design of the two
adjudged the registration of Respondent trademarks covering goods of the same
Ng Kian Giab by relying to the party who class.
first filed the application for registration of
the trademark “Marca Pinya” because Issue:
neither of them "satisfactorily adduced WON the respondent’s trademark would
definite and conclusive proof of their cause confusion or mistakes in the mind of
asserted dates of first use of the trademark the public or deceive purchasers?
"Marca Piña.
Ruling:
Issue: No, the words "BIOFERIN" and
WON the petitioner is the prior user of the "BUFFERIN" have the same suffix and
trade mark “Marca Pinya”? similar sounding prefixes, they appear in
their respective labels with strikingly
Ruling: different backgrounds and surroundings,
Yes, Respondent Director disregarded all as to color , size and design.
the evidence submitted by both parties and
relied exclusively on the filing dates of the The product of the applicant is expressly
applications in reaching his conclusion as stated as dispensable only upon doctor's
to the junior party applicant. petitioner prescription, while that of oppositor does
used the trademark in question as early as not require the same. The chances of
February 1952. January 1951 he started being confused into purchasing one for the
laying the groundwork for his own factory other are therefore all the more rendered
and registered the factory's first books of negligible.
accounts with the Bureau of Internal
Revenue, and when the business was Doctrine:
officially launched in 1952. City of Manila The test is not simply to take their words
granted petitioner a permit to operate a and compare the spelling and
shirt factory on the same year. The pronunciation of said words. Rather, it is to
petitioner’s customers and suppliers also consider the two marks in their entirety, as
testified the he first operated his business they appear in the respective labels, in
in year 1952. On the other hand, the relation to the goods to which they are
respondent’s evidence showed that th attached.
business tax receipt in the name of Ng
Kian Kee is dated October 18, 1955. Chung Te vs. Ng Kian Giab and The
Hence, respondent’s use began only in Honarable Director of Patents
1955. G.R. No. L-23791 November 23, 1966
descriptive, furnishes no indication of the Doctrine:
origin of the article and therefore is open In determining who was the junior party
for appropriation by anyone and may applicant in the interference. the filing date
properly become the subject of a of said abandoned application may not
trademark by combination with another properly be considered. But in the peculiar
word or phrase. situation obtaining in this case, where the
testimonial evidence for both parties has
Two letters of "SALONPAS" are missing in been entirely disregarded, and reliance is
"LIONPAS"; the first letter a and the letter placed solely on the filing dates of the
s. Be that as it may, when the two words applications as proof of the respective
are pronounced, the sound effects are dates of first use, then the abandoned
confusingly similar. application filed by the junior party
applicant becomes cogent evidence to
Doctrine: Similarity of sound is sufficient show that he first used the trademark as of
ground for this Court to rule that the two the date of its filing.
marks are confusingly similar when applied
to merchandise of the same descriptive Marvex Commercial Co., Inc. vs.Petra
properties. Hawpia and Co., and The Director of
Patents
Jose P. Sta. Ana vs. Florentino Maliwat G.R. No. L-19297 December 22, 1966
and Tiburcio S. Evalle
G.R. No. L-23023 August 31, 1968 Facts:
Respondent, Petra Hawpia & Co filed a
Facts: petition for the registration of the
Respondent Florentino Maliwat filed with trademark "LIONPAS" used on medicated
the Patent Office an application for plaster. Respondent The Marvex
registration of the trademark FLORMANN, Commercial Co. filed an opposition
which is used on shirts, pants, jackets and thereto, alleging that the registration of
shoes for ladies, men, and children. such trademark would mislead the public
as they are confusingly similar in the
Petitioner Jose P. Sta. Ana filed an trademark "SALONPAS" used on another
application for the registration of the medicated plaster.
tradename FLORMEN SHOE
MANUFACTURERS. Director of Patents dismissed the
opposition and gave due course to the
Respondent Director gave due course to petition, stating in part that "confusion,
Maliwat's application and denied that of mistake, or deception among the
Sta. Ana. purchasers will not likely and reasonably
occur" when both trademarks are applied
Petitioner would confine the respondent to to medicated plaster.
the use of the mark FLORMANN to
tailoring and haberdashery only, but not on Issue:
shoes, on the ground that petitioner had WON the respondent’s trademark would
used the name FLORMEN on shoes since cause confusion or mistakes in the mind of
1959, while the respondent used his mark the public or deceive purchasers?
on shoes only in 1962.
Ruling:
Issue: Yes, both these words have the same
WON the use of mark of the respondent suffix, "PAS", which is used to denote a
should be limited to tailoring and plaster that adheres to the body with
haberdashery only? curative powers. "Pas, being merely
Philippines by another and not abandoned.
Here, Aguinaldo's was continuously using Ruling:
the trademark KAYNEE as among those No, The court affirmed the decision of the
sold in its store. Hence, the word 'another' director of the patents that among local
used by the Statute can refer to tailors and haberdashers to branch out into
Aguinaldo's articles of manufacture which have some
direct relationship” such as to garments or
petitioner alleged that the Director of attire to complete one's wardrobe. Mere
Patents relied on the explicit and literal dissimilarity of goods should not preclude
language of the appropriate section and relief where the junior user's goods are not
ignored other relevant provision which too different or remote from any that the
could have called for a different conclusion owner would be likely to make or sell; and
in the present case, wearing apparel is not
Issue: so far removed from shoes as to preclude
WON Director of Patents ignored other relief.
relevant sections of Sec 4(d) of RA No.
166? Doctrine:
The protection provided by the to the
Ruling: trademark owner is not limited to guarding
No, Construction and interpretation come his goods or business from actual market
only after it has been demonstrated that competition with identical or similar
application is impossible and inadequate products of the parties, but extends to all
without them. Such a principle has since cases in which the use by a junior
then commended itself for acceptance and appropriator of a trademark prevent the
has been invariably followed. Here, normal potential expansion of his
petitioner engaged in manufacturing and business.
selling the same kind of products would
rely on a trademark, which undeniably was Lim Kiah vs. The Kaynee Company and
previously registered abroad and which The Director of Patents
theretofore had been used and advertised G.R. No. L-24802 October 14,
extensively by Aguinaldo’s Department 1968
Store.
Facts:
American Wire & Cable Company vs. Petitioner Lim Kiah filed an application to
Central Banahaw Industries, Inc and register Kaynee trademark allegedly being
Director of Patents used by him on undershirts, polo shirts, T-
G.R. No. L-26557 February 18, 1970 shirts, pants, sporting wear and
handkerchiefs.
Facts:
Respondent Central Banahaw Industries, Respondent Kaynee Company opposed to
Inc., applied with the Director of Patents the petitioner’s application alleging that
for registration of the trademark those goods of the former were similar to
DYNAFLEX and Device to be used in those goods being sold by the applicant.
connection with electric wires.
The public respondent held that mark
Petitioner The American Wire and Cable “kanyee” were used by Aguinaldo's
Co., Inc. user of registered trade mark Department Store in late in 1949 or early
DURAFLEX for electric wires, apparatus, 1950. Under Section 4(d) of Republic Act
machines and supplies opposed the No. 166, a trademark shall not be
application on the ground that applicant's registrable if it consists of or comprises a
use of the trade mark DYNAFLEX would mark or tradename previously used in the
 cause confusion or result in mistake to
Facts: purchasers intending to buy DURAFLEX
The respondent Tiu Chian filed an electric wires and goods,
application for the registration of the
trademark SULMETINE used on medicine Applicant-appellee contends that the
for domestic. DYNAFLEX mark would not confuse or
deceive the buyers and subscribers of the
Petitioner American Cyanamid Company DURAFLEX brand, because electrical
filed a petition to cancel certificate of wires are of great value and the
registration of the respondent’s trademark. purchasers thereof are generally intelligent
Petitioner alleged that through long use in — the architects, engineers and building
the country, SULMET has become popular contractors.
and well-known and enjoys widespread
reputation brought about by extensive Director of Patents said that the
advertisement and promotion through the trademarks of the parties are different in
media. Granting the registration of the appearance, meaning, sound and
respondent would confused or deceiver connotation and hence, are not confusingly
the public purchasing because the similar.
trademarks are identical.
Issue:
Petitioner granted the application the WON the respondent’s trademark would
respondent on the ground that there are cause confusion or mistakes in the mind of
there are striking differences between the the public or deceive purchasers?
two trademarks such as the coloring
scheme, pictorial representation, clear Ruling:
indication of the source and printed matter Yes, In big constructions, the designing
on the label. architect or engineer, or the contractor who
will undertake the work of building, does
Issue: not himself purchase or place the order for
WON the respondent’s trademark would the purchase of the materials to be used
cause confusion or mistakes in the mind of therein. The task is oftentimes delegated
the public or deceive purchasers? to another. So that even if the engineer or
contractor will specify in the bill of
Ruling: materials the particular brand of wires
No, the court affirmed the decision of the needed, there is no certainty that the
director of patents. The product is for desired product will be acquired.
medicinal veterinary use and
consequently, the purchaser will be more Unlike the pharmacists, the dispensers of
wary of the nature of the product he is hardware or electrical supplies are not
buying. petitioner's SULMET label, Exhibit generally known to pay as much concern
B, is used on a drinking water solution to the brand of articles asked for by the
while that of respondent labels tablets. customer and of a person who knows the
name of the brand but is not acquainted
the word SULMET is derived from a with it is appearance. Hence, the likelihood
combination of the syllables "SUL" which is of the DYNAFLEX product being mistaken
derived from Sulfa and "MET" from methyl for DURAFLEX is not remote.
both of which are chemical compounds
present in the article manufactured by the
contending parties, and the addition of the American Cyanamid Company versus
syllable "INE" in respondent's label is Tiu Chian and Director of Patents
sufficient to distinguish respondent's G.R. No. L-23954 April 29, 1977
 product or trademark from that of
Ruling: petitioner.
The court affirmed the decision of the Here, Maybe Sulmentine and Sulmet has
Director of Patent. similar use but their presentation to the
purchasing public come in totally different
De la Rama Steamship Co. Inc., plaintiff, forms.
versus National Development Company
G.R. No. L-26966 October 30, 1970 Doctrine:
The law prohibits the manufacturer labels
Facts: his product in a manner strikingly Identical
The petitioner De la Rama undertook the with or similar to that of another
management of the three vessels known manufacturer as to deceive or confuse the
as "Doña Aurora," "Doña Nati" and "Doña buying public into believing that the two
Alicia" which had been purchased by the preparations are one and come from the
Philippine Government from Japan with same source.
the advise and technical supervision of De
la Rama. In the management contract it Kee Boc vs. Far Eastern Shirt Factory
was provided that De la Rama had the and the Director of Patents
option to buy the vessels at the fifth year G.R. No. L-26625. August 31, 1970
following the purchase and delivery of
each of the vessels Facts:
The case involved an application to
The NDC decided to cancel the contract register the trademark RACE, used on
but was opposed by De la Rama, which men’s undershirts and shirts, under class
alleged that it had been granted the option 40, was filed by Far Eastern Shirt Factory,
to purchase the vessels and that in 1952 it successor in interest of Asari Yoko Ltd.
exercised that right of option. In the
decision in previous cases the Court The petitioner, owner of the trademark
upheld the right of NDC to cancel the “SUN RAYS” covering the same class of
management contract, and the option of goods, namely, men’s undershirts, filed an
De la Rama to purchase the vessels was opposition against the registration of the
declared ineffective. respondent on ground that the trademark
“SUN RAYS” of the petitioner is
De la Rama contends that she is entitled to confusingly similar to the trade mark RACE
the preferential right to the use of the of the respondent.
"Doña" names and enjoining and
restraining NDC perpetually from using the Director of Patents granted the application
"Doña" names on any of its vessels, of the respondent and dismissed the
opposition of the petitioner on ground that
NDC argues that as owner of the vessels it RACE was already in use long before the
had registered the "Doña" names in the opposer adopted his trademark SUN
Bureau of Customs with full knowledge RAYS. In such case it is the Respondent-
and consent of De la Rama which, Applicant who would be damaged by the
therefore, is now estopped from registration of SUN RAYS as it has
questioning the right, or from denying the acquired, as a successor in interest,
ownership, of NDC over the "Doña" proprietary rights over the mark RACE.
names.
Issue:
De la Rama had been in the shipping WON the respondent’s trademark would
business since 1933 and had adopted, cause confusion or mistakes in the mind of
prior to the war in 1941, the word "Doña" in the public or deceive purchasers?
Facts: designating its vessels; that the three
Petitioner Philippine Nut, owner of the ocean-going vessels that it operated under
trademark "PHILIPPINE PLANTERS the management contract were named
CORDIAL PEANUTS," the label used on “Doña” after names of the wife of the
its product of salted peanuts. president of the philippines.

Respodent Standard Brands filed an NDC's contention, in its answer, that De la

petition for the cancellation of Philippine Rama, a private firm, could not appropriate
Nut's certificate of registration on the said names ("except Doña Nati") on the
ground that "the registrant was not entitled ground that those are names of wives of
to register the mark at the time of its former Presidents, does not have a legal
application for registration thereof" for the basis. Under Section 4(c) of Rep. Act No.
reason that it (Standard Brands) is the 166 as amended, which apparently is the
owner of the trademark "PLANTERS basis of the contention of NDC, what is
COCKTAIL PEANUTS” prohibited from being appropriated and
being registered are trade-names
Standard Brands alleged in its petition that consisting of, or comprising, a name
Philippine Nut's trademark "PHILIPPINE identifying a particular living individual, or
PLANTERS CORDIAL PEANUTS" closely the name of a deceased President of the
resembles and is confusingly similar to its Philippines.
trademark "PLANTERS COCKTAIL
PEANUTS" used also on salted peanuts, Issue:
and that the registration of the former is WON the names of deceased wives of
likely to deceive the buying public and Presidents are included in the prohibition?
cause damage to it.
Ruling:
The Director of Patents found and held No, Section 4(f) of said Act does not
that in the labels using the two trademarks prohibit the registration, and hence
in question, the dominant part is the word appropriation, of a trade-name that has
"Planters", displayed "in a very similar become distinctive and the substantial and
manner" so much so that "as to exclusive use of a trade-name for five
appearance and general impression" there years accepted as prima facie proof that
is "a very confusing similarity," and he the trade-name has become distinctive.
concluded that Philippine Nut "was not
entitled to register the mark. Doctrine:
that even a name or phrase not capable of
According to petitioner, PLANTERS cannot appropriation as a trade name may, by
be considered as the dominant feature of long and exclusive use by a business with
the trademarks in question because it is a reference thereto of to its products, acquire
mere descriptive term, an ordinary word a proprietary connotation, such that, to the
which is defined in Webster International purchasing public, the name or phrase
Dictionary as "one who or that which becomes associated with the service or
plants or sows, a farmer or an the products of the business, and so it is
agriculturist." entitled to protection against unfair
competition.
Issue:
WON the Petitioner’s trademark would Philippine Nut Industry, Inc. vs.
cause confusion or mistakes in the mind of Standard Brands Inc and Tiburcio
the public or deceive purchasers? Evalle
G.R. No. L-23035 July 31, 1975
use dating as far back as 1938, WON the trademark “PLANTERS” of the
respondent Standard Brands has acquired respondent has acquired secondary
a preferential right to its adoption as its meaning?
trademark warranting protection against its
usurpation by another. Ruling:
Yes, The court affirmed the decision of the
Doctrine: Director of Patents. PLANTERS is an
There is infringement of trademark when ordinary word, nevertheless it is used in
the use of the mark involved would be the labels not to describe the nature of the
likely to cause confusion or mistake in the product, but to project the source or origin
mind of the public or to deceive purchasers of the salted peanuts contained in the
as to the origin or source of the cans. The word PLANTERS printed across
commodity; that whether or not a the upper portion of the label in bold letters
trademark causes confusion and is likely to easily attracts and catches the eye of the
deceive the public is a question of fact ordinary consumer and it is that word and
which is to be resolved by applying the none other that sticks in his mind when he
"test of dominancy", meaning, if the thinks of salted peanuts. Hence, word
competing trademark contains the main or PLANTERS is the dominant, striking mark
essential or dominant features of another of the labels in question.
by reason of which confusion and
deception are likely to result, then The merchandize or goods being sold by
infringement takes pIace; that duplication the parties herein are very ordinary
or imitation is not necessary, a similarity in commodities purchased by the average
the dominant features of the trademarks person and many times by the ignorant
would be sufficient. and unlettered and these are the persons
who will not as a rule examine the printed
Where a trade-mark contains a dominating small letterings on the container but will
or distinguishing word, and purchasing simply be guided by the presence of the
public has come to know and designate striking mark PLANTERS on the label.
the article by such dominating word, the Differences there will always be, but
use of such word by another in marking whatever differences exist, these pale into
similar goods may constitute Infringement insignificance in the face of an evident
though the marks aside from such similarity in the dominant feature and
dominating word may be dissimilar. overall appearance of the labels of the
parties.
It is not necessary, to constitute trademark
"infringement", that every word of a trade- Director's decision is based not only on the
mark should be appropriated, but it is fact that petitioner herein adopted the
sufficient that enough be taken to deceive same dominant mark of Standard Brands,
the public in the purchase of a protected that is, the word PLANTERS, but that it
article. also used in its label the same coloring
scheme of gold, blue, and white, and
A trade-name in order to be an basically the same lay-out of words such
`infringement' upon another need not be as "salted peanuts" and "vacuum packed"
exactly like it in form and sound, but it is with similar type and size of lettering as
enough if the one so resembles another as appearing in Standard Brands' own
to deceive or mislead persons of ordinary trademark.
caution into the belief that they are dealing
with the one concern when in fact they are Yes, the term PLANTERS has become a
dealing with the other. distinctive mark or symbol insofar as salted
peanuts are concerned, and by priority of