Hickok v. CA

72.
G.R. No. L-44707 August 31, 1982

HICKOK MANUFACTURING CO., INC., petitioner,
vs.
COURT OF APPEALS
Legal Concept/Definitions:
1. In the recent case of Acoje Mining Co., Inc. vs. Director of Patents, 38 SCRA 480, 482-
483, the Supreme Court stated - 1äwphï1.ñët Can it be said then that petitioner's
application would be likely to cause confusion or mistake on the part of the buying
public? The answer should be in the negative. It does not defy 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 on the rare
occasion that a mistake does occur, it can easily be rectified. Moreover, there is no
denying that the possibility of confusion is remote considering petitioner's trademark
being in yellow and red while that of the Philippine Refining Company being in green
and yellow, and the much smaller size of petitioner's trademark. When regard is had for
the principle that the two trademarks in their entirety as they appear in their respective
labels should be considered in relation to the goods advertised before registration could
be denied, the conclusion is inescapable that respondent Director ought to have
reached a different conclusion. Petitioner has successfully made out a case for
registration.
2. "emphasis should be on the similarity of the products involved and not on the arbitrary
classification or general description of their properties or characteristics
3. "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 unrelated articles
of a different kind."
4. While the law does not require that the competing trademarks be Identical, the two
marks must be considered in their entirety, as they appear in the respective labels, in
relation to the goods to which they are attached.
5. When regard is had for the principle that the two trademarks in their entirety as they
appear in their respective labels should be considered in relation to the goods
advertised before registration could be denied
Issue:
Whether or not a registered trademark can be registered by other person with unrelated or
noncompeting product
Facts:.
The Court affirms on the strength of controlling doctrine as reaffirmed in the companion case
of Esso Standard Eastern Inc. vs. Court of Appeals promulgated also on this date and the recent
case of Philippine Refining Co., Inc. vs. Ng Sam and Director of Parents the appealed decision of
the Court of Appeals reversing the patent director's decision and instead dismissing petitioner's
petition to cancel private respondent's registration of the trademark of HICKOK for its Marikina
shoes as against petitioner's earlier registration of the same trademark for its other non-
competing products (men’s wear)
Held: YES
It is established doctrine, as held in the above-cited cases, that "emphasis should be on the
similarity of the products involved and not on the arbitrary classification or general description
of their properties or characteristics" 4 and that "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 unrelated articles of a different kind." 5 Taking into account the facts of
record that petitioner, a foreign corporation registered the trademark for its diverse articles of
men's wear such as wallets, belts and men's briefs which are all manufactured here in the
Philippines by a licensee Quality House, Inc. (which pays a royalty of 1-1/2 % of the annual net
sales) but are so labelled as to give the misimpression that the said goods are of foreign
(stateside) manufacture and that respondent secured its 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 Marikina, Rizal, Philippines," no error can be
attributed to the appellate court in upholding respondent's registration of the same trademark
for his unrelated and non-competing product of Marikina shoe

Hickok v. CA

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72.

G.R. No. L-44707 August 31, 1982

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