G.R. No. L-14761 January 28, 1961 ARCE SONS AND COMPANY, petitioner, vs.

SELECTA BISCUIT COMPANY, INC., ET AL., respondents. BAUTISTA ANGELO, J.: Facts: Ramon Arce, predecessor-in-interest of herein petitioner, started a milk business in 1933 using the name SELECTA as trade-name as well as trade-mark. He sold his milk products in bottles covered with caps on which the words SELECTA FRESH MILK were inscribed. For the span of more than 20 years, his business expanded and sold, in addition to his milk product, ice cream, sandwiches and other food products. His products were packaged in a special containers with the word SELECTA written in the packaging. Several new products were eventually added to his line of products such as biscuits, bakery items, and assorted cakes and pastries. The word SELECTA was even written on the signboards of his business establishments and upon the vehicles that were used for the delivery of his products. Then his business was acquired by petitioner Arce Sons and Co. which eventually put a first class restaurant aside from the manufacture of the aforementioned food products. Herein respondent on the other hand, was organized and registered as corporation under the name and style of Selecta Biscuits Co., Inc. The name Selecta was chosen by the Chinese organizers of the corporation as a translation of a Chinese word Ching Suan. Its business started as a biscuit factory and its products such as biscuits and crackers were specially wrapped in cellophane pouches and place inside a tin can. Such products of the respondent were sold throughout the Philippines. The respondent filed a petition with the Philippine Patent Office for the registration of the word SELECTA as trade-mark to be use in its bakery products. The petition was referred to an examiner for evaluation who found out that the trademark sought to be registered resembles the word SELECTA used by the petitioner so that its use by the respondent will cause confusion as to the origin of their respective goods. So the examiner recommended for the disapproval of the application. However, Patent Office only ordered the publication of the application. In due time, petitioner filed an opposition to the registration on the ground that the mark SELECTA has been continuously used by it from the time of its organization and even prior thereto by Ramon Arce, thus the said mark has already become identified with its name and business. Petitioner also contend that the use of SELECTA by the respondents as trademark constitutes as an unfair competition with its products thus resulting in confusion in trade and that the product of the respondent might be mistaken by the public as its products. The Director of Patents rendered a decision dismissing petitioners opposition stating that the registration of the trade-mark SELECTA in favour of the respondent will not cause confusion or mistake nor will deceive the purchasers as to cause damage to petitioner. Hence, this present petition for review. Issue: Whether or not the use of the trade-mark SELECTA by the respondent will result confusion to the prejudice of Arce Sons and Co. Held: Yes. Trademark is a distinctive mark of authenticity through which the merchandise of a particular producer or manufacturer may be distinguished from that of others, and its sole function is to designate distinctively the origin of the products to which it is attached. Verily, the word SELECTA has been chosen by petitioner and has been inscribed on all its products to serve not only as a sign or symbol that may indicate that they are manufactured and sold by it but as a mark of authenticity that may distinguish them from the products sold and manufactured by other merchants or businessmen. The word 'SELECTA', it is true, may be an ordinary or common word in the sense that may be used or employed by any one in promoting his business or enterprise, but once adopted or coined in connection with one's business as an emblem, sign or device to characterize its products, or as a badge of authenticity, it may acquire a secondary meaning as to be exclusively associated with its products and business. In this sense, its used by another may lead to confusion in trade and cause damage to its business. And this is the situation of petitioner when it used the word 'SELECTA' as a trade-mark. In this sense, the law gives its protection and guarantees its used to the exclusion of all others. Thus, the Director of Patent committed an error in dismissing the opposition of the petitioner and in holding that the registration of the trademark SELECTA in favour of respondent will not cause damage to petitioner. Decision of the Director of Patent office is reversed.

G.R. No. L-48226 December 14, 1942 ANA L. ANG, petitioner, vs. TORIBIO TEODORO, respondent. OZAETA, J.:

Facts:
Toribio Teodoro, herein respondent, has continuously used Ang Tibay, both as trademark and as a tradename, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. From the time he started his business until 1938, his business expanded to such proportions that his gross sales increased to millions. On the other hand, Ana Ang herein petitioner, established a factory to manufacture pants and shirts with a brand name Ang Tibay. She likewise registered the name trademark Ang Tibay for the said articles. Teodoro filed a complaint against Ana Ang for using the same trademark that he has been using since 1910. The trial judge dismissed the complaint on the grounds that the two trademarks were dissimilar and were used on different and non-competing goods; and that there has been no exclusive of the trademark by Teodoro. Not satisfied with the judgement of the lower court Teodoro appealed where the judgment of the trial court was reversed and ordered for the cancellation of the registration of the trademark Ang Tibay in favour of Ana Ang on the grounds that by uninterrupted and exclusive use of such trademark by Teodoro has acquired a secondary meaning and that the goods or articles on which the two trademarks were similar and belong to the same class. Hence, this present petition for certiorari wherein the petitioner contended that the phrase Ang Tibay is merely a descriptive term which may not bar its registration as a trademark and that such phrase did not acquire a secondary meaning which the respondent may have an exclusive use of such trademark.

Issue:
Whether or not Ana Ang can register the trademark Ang Tibay for her products pants and shirts.

Held:
No. Ang Tibay is a descriptive term within the meaning of the Trademark Law but rather a fanciful or coined phrase which may properly and legally appropriated as a trademark or trade name. The Court finds that Ang Tibay, as used by the respondent to designate his wares, had exactly performed that function for 22 years before the petitioner adopted it as a trademark in her own business. Ang Tibay shoes and slippers are, by association, known throughout the Philippines as products of the Ang Tibay factory owned and operated by the respondent Toribio Teodoro. Petitioner contend that the appellate court erred in holding that the phrase Ang Tibay has acquired a secondary meaning which gives the respondent a right to exclusive appropriation of such phrase. The Court disagrees with the petitioner. The doctrine of secondary meaning suggests that a word or phrase originally incapable of exclusive appropriation with reference to an article of the market, because geographically or otherwise, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product. The application of the secondary meaning made by the Court of Appeals could be fully sustained because by the respondents long and exclusive use of said phrase with reference to his products and his business, it has acquired a proprietary connotation. Judgement of the Court of Appeals is affirmed.

G.R. No. 91332 July 16, 1993 PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., AND FABRIQUES OF TABAC REUNIES, S.A., petitioners vs. THE COURT OF APPEALS AND FORTUNE TOBACCO CORPORATION, respondents. MELO, J.:

Facts:
Herein petitioner Philip Morris Inc., is a corporation registered under the laws of Virginia, USA and the two other petitioners are the affiliates of said corporation all of which are not doing any business here in the Philippines. They are the registered owners of the labels Mark VII, Mark Ten and Lark, all are cigarette products. On the other hand, respondent Fortune Tobacco Corp., is a corporation organized under the Philippine which manufactures and sells cigarettes using the same brand name Mark in one of its products. This controversy arose when petitioners filed a suit against the respondent alleging that the trademark Mark may not be used by the respondent because such trademark is exclusively owned by it and that the continuous manufacture and sale of the cigarettes of the same trademark by the respondent would cause an irreparable injury or damage to it. Pending the resolution of the case on its merits, petitioners prayed for the issuance of a writ of preliminary injunction to preclude the respondent from performing any of the acts complained of. On the other hand, for its defense, respondent contends that since petitioners are not doing business in the Philippines coupled with the fact that the Director of Patents has not denied their pending application for registration of its trademark MARK, the grant of preliminary injunction is premature. The trial court denied the petitioners prayer for injunction. On appeal, the appellate court initially set aside the decision of the lower, but eventually lifted said injuction. Hence, this present petition.

Issue:
Whether or not Fortune Tobacco could be precluded from manufacturing and selling cigarettes with a trademark MARK similar to that of petitioner.

Held:
No. A fundamental principle of Philippine Trademark Law is that actual use in commerce in the Philippines is a prerequisite to the acquisition of ownership over a trademark or a trade name. Adoption alone of a trademark would not give exclusive right thereto. Such right grows out of their actual use. Adoption is not use. One may make advertisements, issue circulars, give out price lists on certain goods; but these alone would not give exclusive right of use. The records show that the petitioner has never conducted any business in the Philippines. It has never promoted its trade name or trademark in the Philippines. It is unknown to Filipino except the very few who may have noticed it while travelling abroad. It has never paid a single centavo of tax to the Philippine Government. Under the law, it has no right to the remedy it seeks. In other words, the petitioner may have the capacity to sue for infringement irrespective of lack of business activity in the Philippines but the question whether they have an exclusive right over their symbol as to justify issuance of the controversial writ will depend on the actual use of their trademarks in the Philippines. A foreign corporation may have the personality to file a suit for infringement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in the local market.

G.R. No. L-26676 July 30, 1982 PHILIPPINE REFINING CO., INC., petitioner, vs. NG SAM and THE DIRECTOR OF PATENTS, respondents. ESCOLIN, J.:

Facts:
The trademark CAMIA was first used by petitioner Philippine Refining Co. (PRC) on its products consisting of vegetable and animal fats such as lard, butter and cooking oil. The petitioner caused its registration with the Philippine Patent Office in 1949. In the 1960s, Ng Sam, herein respondent, filed an application with the Philippine Patent Office for registration of the identical trademark CAMIA for his product ham. An opposition was filed by the petitioner alleging that the use of the trademark CAMIA by the respondent would cause confusion or mistake or would deceive purchasers. The Director of Patent rendered a decision allowing the registration of the trademark in question in favour of the respondent Ng Sam. Petitioner asked for reconsideration but the same was denied. Hence, this present petition for review.

Issue:
Whether or not the product of Ng Sam, which is ham, and those of the PRC consisting of lard, butter, cooking oil and soap are so related that the use of the same trademark on said goods would likely result in confusion as to their source or origin.

Held:
No. The right of a trademark is a limited one, in the sense that others may use the name mark on unrelated goods. 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 a different description. The registration of a trademark which so resembles another already 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 to arise, as in this case, registration of a similar or even identical mark may be allowed. The trademark CAMIA is used by the petitioner on wide range of products such as lard, butter, cooking oil, soaps, etc. Respondent desires to use the same on his product ham. Although such products belong to the same category, this alone cannot serve as the decisive factor in the resolution of whether or not they are related goods. Emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics. Opposers products are ordinary day to day household items whereas ham 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. The Court further holds that the business 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 less cause damage to petitioner.

G.R. No. 103543 July 5, 1993 ASIA BREWERY, INC., petitioner, vs. THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION, respondents. GRIO-AQUINO, J.:

Facts:
San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and unfair competition on account of the latters BEER PALE PILSEN or BEER NA BEER product which has been competing with SMCs SAN MIGUEL PALE PILSEN for a share of the local been market. A decision was rendered by the trial judge dismissing SMCs complaint because ABI has not committed trademark infringement or unfair competition against SMC for the reason that the trademarks of each product has no significant similarity that would likely to cause confusion or mistake or to deceive purchasers as to the source or origin of the beer in question. SMC appealed to the Court of Appeals wherein the decision of the trial court was reversed. Hence, this present petition for certiorari filed by ABI.

Issue:
Whether or not ABI infringes SMCs trademark: San Miguel Pale Pilsen with Rectangular Hops and Malt Design, and thereby commits unfair competition against the latter.

Held:
No. There is absolutely no similarity in the dominant features of both trademarks. Infringement is determined by the test of dominancy rather than by differences in variations in the details of one trademark and of another. It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor it is necessary that the infringing label should suggest an effort to imitate. The question at issue in cases of infringement of trademarks is whether the use of marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers. In the case at bar, the trial court perceptively observed that the word BEER does not appear in SMCs trademark, just as the words SAN MIGUEL do not appear in the ABIs trademark. Hence, there is absolutely no similarity in the dominant features of both trademarks. Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was presented by SMC proving otherwise.

G.R. No. L-17501 April 27, 1963 MEAD JOHNSON and COMPANY, petitioner, vs. N. V. J. VAN DORP, LTD., ET AL., respondents. BAUTISTA ANGELO, J.:

Facts:
N.V.J. Van Dorp, Ltd., herein respondent, is a corporation organized under the laws of Netherlands. Mead Johnson & Company, herein petitioner, is a corporation organized under the laws of Indiana, USA. Respondent filed an application for the registration of the trademark ALASKA and pictorial representation of a Boys Head within a rectangular design (ALASKA disclaimed). The petitioner being the owner of the trademark ALACTA used for powdered half-skim milk, filed an opposition on the ground that it will be damaged by the said registration as the trademark ALASKA and pictorial representation of a Boys Head, used for milk, milk products, dairy products and infants foods, is confusingly similar to its trademark ALACTA. The respondent contended that ALASKA is entirely different from opppsitors trademark and product ALACTA, since applicants product covers milk, milk products, dairy products and infants food, while oppositors products cover pharmaceutical preparations for nutritional needs. The Director of Patents Office, rendered decision dismissing the opposition and holding that the trademark sought to be registered does not sufficiently resemble oppositors mark as to be likely when applied to the goods of the parties to cause confusion or mistake to deceive purchasers. Hence, petitioner filed the present petition for review.

Issue:
Whether or not the trademarks ALASAK and ALACTA are similar as would likely to cause confusion or mistake.

Held:
No. It is true that between petitioners trademark ALACTA and respondents ALASKA there are similarities in spelling, appearance and sound for both composed of six letters of three syllables each and each syllable has the same words, but in determining if they are confusingly similar a comparison of said words is not the only determinant factor. The trademarks in their entirety as they appear in the respective labels must also be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other. Having this view in mind, the Court believes that while there are similarities in the two marks there are also differences or dissimilarities which are glaring and striking to the eye as the former. The Court further holds that the petitioners are not food or ingredients of foods but rather medicinal and pharmaceutical preparations that are to be used as prescribed by physicians. On the other hand, respondents goods cover milk, milk products, dairy products and infants food, and for the use of these products there is no need or requirement of a medicinal preparation. Thus, it is concluded that the applicants mark does not resemble opposers mark as to be likely when applied to the goods of the parties to cause confusion or mistake or to deceive purchasers. Decision appealed from is affirmed.

G.R. No. L-27906 January 8, 1987 CONVERSE RUBBER CORPORATION, petitioner, vs. UNIVERSAL RUBBER PRODUCTS, INC. and TIBURCIO S. EVALLE, DIRECTOR OF PATENTS, respondents. FERNAN, J.:

Facts:
Respondent Universal Rubber Products, Inc. filed an application with the Philippine Patent Office for the registration of the trademark Universal Converse and Device used on rubber shoes and rubber slippers. The petitioner Converse Rubber Corporation, duly organized under the laws of Massachusetts, USA, manufactures rubber shoes and uses the trademarks Chuck Taylor and All Star and Device. The latter filed an opposition to the application for registration filed by respondent on the ground, among others, that the trademark sought to be registered is confusingly similar to the word Converse which is part of its corporate name as to likely deceive purchasers of products on which it is to be used to an extent that said products may be mistaken by the unwary public to be manufactured by it. The Director of Patents dismissed the opposition of the petitioner and gave due course to respondents application. The petitioner prayed for reconsideration and the same was denied. Hence, this present petition for review.

Issue:
Whether or not the applicants partial appropriation of the petitioners corporate name is of such character that it is calculated to deceive or confuse the public to the injury of the corporation to which the name belongs.

Held:
Yes. The similarity in the general appearance of the respondents trademark and that of the petitioner would evidently create a likelihood of confusion among the purchasing public. But even assuming, arguendo, that the trademark sought to be registered by respondent is distinctively dissimilar from those of the petitioner, the likelihood of confusion would still subsists, not on the purchasers perception of the goods but on the origin thereof. By appropriating the word Converse, respondents products are likely to be mistaken as having been produced by petitioner. The risk of damage is not limited to a possible confusion of goods but also includes confusion of reputation if the public could reasonably assume that the goods of the partied originated from the same source. Knowing, therefore, that the word Converse belongs to and is being used by petitioner, and in fact the dominant word in petitioners corporate name, respondent has no right to appropriate the same for use in its products which are similar to those being produced by petitioner.

Note: It is unfortunate that respondent Director of Patents has concluded that since the petitioner is not licensed to do business in the country and is actually not doing business on its own in the Philippines, it has no name to protect in the forum and thus, it is futile for it to establish that "CONVERSE" as part of its corporate name identifies its rubber shoes. That a foreign corporation has a right to maintain an action in the forum even if it is not licensed to do business and is not actually doing business on its own therein has been enunciated many times by this Court. In La Chemise Lacoste, S.A. vs. Fernandez, 129 SCRA 373, this Court, reiterating Western Equipment and Supply Co. vs. Reyes, 51 Phil. 115, stated that: ... a foreign corporation which has never done any business in the Philippines and which is unlicensed and unregistered to do business here, but is widely and favorably known in the Philippines through the use therein of its products bearing its corporate and tradename, has a legal right to maintain an action in the Philippines to restrain the residents and inhabitants thereof from organizing a corporation therein bearing the same name as the foreign corporation, when it appears that they have personal knowledge of the existence of such a foreign corporation, and it is apparent that the purpose of the proposed domestic corporation is to deal and trade in the same goods as those of the foreign corporation.

G.R. No. L-32747 November 29, 1984 FRUIT OF THE LOOM, INC., petitioner, vs. COURT OF APPEALS and GENERAL GARMENTS CORPORATION, respondents. MAKASIAR, J.:

Facts:
Fruit of the Loom, herein petitioner, is a corporation duly organized and existing under the laws of the State of Rhode Island, USA, and a registrant of a trademark Fruit of the Loom in the Philippine Patent Office. On the other hand, herein private respondent, General Garments Corporation, is a domestic corporation and a registrant of trademark Fruit of Eve. Both the petitioner and the respondent were engaged in the selling and manufacture of garments and other textile products. Petitioner filed before the lower court a complaint against the respondent alleging that the latters trademark is confusingly similar to its trademark because of the word FRUIT found in the respondents trademark and the big apple appearing in the latters hang tag was a colourable imitation of the its hang tag. The lower court rendered a judgment in favour of the petitioner and ordered the cancellation of the registration of the respondent. On appeal, the appellate court reversed the trial courts decision. Hence, petitioner filed this petition for review on certiorari alleging that the word FRUIT being the prominent word appearing in both of its trademark and that of the respondents would lead the purchasers to believe that the latters products are those of the petitioner.

Issue:
Whether or not private respondents trademark FRUIT FOR EVE and its hang tag are confusingly similar to petitioners trademark FRUIT OF THE LOOM and its hang tag so as to constitute and infringement of the latters trademark rights and justify the cancellation of the former.

Held:
No. The Court believes that there is no infringement of trademark in this case. There is infringement of trademark when the use of the mark involved would likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the commodity. In determining whether the trademarks are confusingly similar, a comparison of the words is not the only determinant factor. The trademarks in their entirety as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other. In the case at bar, the trademarks Fruit of the Loom and Fruit for Eve, the lone similar is word FRUIT. The Court agrees with the appellate court that by mere pronouncing the marks, it could hardly be said that it will provoke a confusion, as to mistake one for the other. Standing by itself, Fruit of the Loom is wholly different from Fruit of Eve. The Court disagrees with the petitioner that the dominant feature of both trademarks is the word FRUIT for even if in the printing of the trademark in both hang tags, the word FRUIT is not at all made dominant over the other words.

G.R. No. L-21587 May 19, 1966 BRISTOL MYERS COMPANY, petitioner, vs. THE DIRECTOR OF PATENTS and UNITED AMERICAN PHARMACEUTICALS, INC., respondents. BENGZON, J.P., J.: Facts: United American Pharmaceuticals, Inc., (respondent), a domestic corporation, filed petition for registration of the trademark BIOFERIN. It covers a medicinal preparation of antihistamic, analgesic, antipyretic with Vitamin C and Bioflavenoid used in the treatment of common colds. The said application for registration was opposed by Bristol Myers Co., (petitioner), a corporation organized under the laws of Delaware, USA, and owner of the trademark BUFFERIN in the Philippines. Designated as Antacid analgesic, it is intended for relief in cases of simple headaches, neuralgia, colds, menstrual pain and minor muscular aches. Bristol Myers contended that the trademarks BIOFERIN and BUFFERIN will mislead and confuse the public as to the source and origin of the goods covered by the respective marks because both products are primarily used for the relief of pains such as headaches and colds; and because words BIOFERIN and BUFFERIN are practically the same in spelling and pronunciation. Issue: Are the trademarks BIOFERIN and BUFFERIN, as presented to the public in their respective labels, confusingly similar? Held: No. In determining whether two trademarks are confusingly similar, the test is not simply to take their words and compare the spelling and pronunciation of said words. Rather, it 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. In the instant case, the trademarks in question are not apt to confuse. Furthermore, the product of the applicant is expressly stated as dispensable only upon doctors prescription, while that of the oppositor does not require the same. The chances of being confused into purchasing one for the other are therefore all the more rendered negligible. Although oppositor avers that some drugstores sell BIOFERIN without asking for a doctors prescription, the same if true would be an irregularity not attributable to the applicant, who has already clearly stated the requirement of doctors prescription upon the face of the label of its product.

G.R. No. L-8072. October 31, 1956. LIM HOA, Petitioner, vs. DIRECTOR OF PATENTS, Respondent. MONTEMAYOR, J.: Facts: Lim Hoa, herein petitioner, filed an application for the registration of a trademark, consisting of a representation of two midget roosters in an attitude of combat with the word Bantam printed above them. The trademark being registered covered products consisting of food seasonings. Agricom Development Corp., a domestic corporation, opposed the application on several grounds, among others, that the trademark sought to be registered was confusingly similar to its registered mark, consisting of a pictorial representation of a hen with the words Hen Brand and Marca Manok, which brand or mark was also used on a food seasoning product, before the use of the trademark by the applicant. Agricom likewise asserted that the trademark had been adopted by its predecessor, the Advincula Family, since 1946 for said food seasoning. The Director of Patents disallowed the registration of the Lim Hoas trademark because it would likely cause confusion or mistake or deceive purchasers. Hence, this present appeal by the petitioner. Issue: Whether or not there is similarity between the two trademarks as to cause confusion or mistake in the mind of the public. Held: Yes. It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor it is necessary that the infringing label should suggest an effort to imitate. The danger of confusion in trademarks and brands which are similar may not be so great in the case of commodities or articles of relatively great value, for the prospective buyer, generally the head of the family or a businessman, before making the purchase, reads the pamphlets and all literature available, describing the article he is planning to buy, and perhaps even makes comparisons with similar articles in the market. But in the sale of a food seasoning product, a kitchen article of everyday consumption, the circumstances are far different. Said product is generally purchased by cooks and household help, sometimes illiterate who are guided by pictorial representations and the sound of the word descriptive of said representation. The two roosters appearing in the trademark of the applicant and the hen appearing on the trademark of the Oppositor, although of different sexes, belong to the same family of chicken, known as manok in all the principal dialects of the Philippines, and when a cook or a household help or even a housewife buys a food seasoning product for the kitchen the brand of Manok or Marca Manok would most likely be upper most in her mind and would influence her in selecting the product, regardless of whether the brand pictures a hen or a rooster or two roosters. To her, they are all manok. Therein lies the confusion, even deception.

G.R. No. L-23023 August 31, 1968 JOSE P. STA. ANA, petitioner, vs. FLORENTINO MALIWAT and TIBURCIO S. EVALLE, in his capacity as Director of Patents, respondents. REYES, J.B.L., J.:

Facts: In 1962, Florentino Maliwat, respondent, filed an application for the registration of the trademark FLORMANN, which is used on shirts, pants, jackets and shoes for ladies, men and children. He claimed that such mark was first used in commerce since the early part of that year. However, the claim of first use was amended to 1953. Jose Sta. Ana, petitioner, in same year 1962, filed an application for the registration of the trade name FLORMEN SHOE MANUFACTURERS (SHOE MANUFACTURERS , disclaimed), which is used in the business of manufacturing ladies and childrens shoes. His claim of first use in commerce of said trade name is 1959. In view of the admittedly confusing similarity between the trademark Flormann and the trade name Flormen, the Director of Patents declared an interference. After trial, the Director gave due course Maliwats application and denied that of Sta. Ana. In this present petition, Sta. Ana avers that the Director of Patents erred in declaring that Maliwat has a prior right to the use of his trademark on shoes and such right may be carried back to the year 1953 when Maliwat started his tailoring and haberdashery business Issue: Whether or not Florentino Maliwat has a prior right to use the trademark Flormann. Held: Yes. An application for registration is not bound by the date of first use as stated by him in his application, but is entitled to carry back said stated date of first use to a prior date by proper 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. In the case at bar, the proof of date of first use (1953), earlier than that alleged in respondent Maliwat's application (1962), can be no less than clear and convincing because the fact was stipulated and no proof was needed. The law does not require that the articles of manufacture of the previous user and the late user of the mark should possess the same descriptive properties or should fall into the same categories as to bar the latter from registering his mark in the principal register. Therefore, whether or not shirts and shoes have the same descriptive properties, or whether or not it is the prevailing practice or the tendency of tailors and haberdashers to expand their business into shoes making, are not controlling. The meat of the matter is the likelihood of confusion, mistake or deception upon purchasers of the goods of the junior user of the mark and the goods manufactured by the previous user. Here, the resemblance or similarity of the mark FLORMANN and the name FLORMEN and the likelihood of confusion, one to the other, is admitted; therefore, the prior adopter, respondent Maliwat, has the better right to the use of the mark.

G.R. No. L-28744 April 29, 1971 ACOJE MINING CO., INC., petitioner-applicant, vs. THE DIRECTOR OF PATENTS, respondent. FERNANDO, J.:

Facts: Acoje Mining Co., (petitioner) filed an application for registration of the trademark Lotus to be used on its soy sauce product. On the other hand, Philippine Refining Co., (PRC), another domestic corporation, was also using the same trademark Lotus on its edible oil. The Chief of the trademark examiner rejected the application of Acoje due to its confusing similarity with that of the trademark already registered in favour of the PRC. The Director of Patents upheld the view of the trademark examiner on the ground that while there is a difference between soy sauce and edible oil and there were dissimilarities in the trademarks, still the close relationship of the products, soy sauce and edible oil, is such that purchasers would be misled into believing that they have a common source. Hence, this present petition for review. Issue: Whether or not Acoje Mining Co., may register for the purpose of advertising its product, soy sauce, the trademark Lotus. Held: The Court answered in the affirmative and the decision of the Director of Patents should be reversed. The determinative factor in a contest involving registration of trademark is not whether the challenging mark would actually cause confusion or deception of the purchasers but whether the use of the mark would likely cause confusion or mistake on the part of the buying public. The law does not require that the competing trademarks must be so identical as to produce actual error or mistake; it would be sufficient, for purposes of the law, that the similarity between the two labels, is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the newer brand for it. In the present case, there is quite 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 of the trademark Lotus. There is no denying that the possibility of confusion is remote considering the difference in the type used, the coloring, the petitioners trademark being in yellow and red while that of the PRC being in green and yellow, and the much smaller size of petitioners trademark.

G.R. No. L-44707 August 31, 1982 HICKOK MANUFACTURING CO., INC., petitioner, vs. COURT OF APPEALS and SANTOS LIM BUN LIONG, respondents. TEEHANKEE, J.: Facts: Petitioner Hickok Manufacturing Co., (Hickok), is a foreign corporation, which the registered the trademark HICKOK for its diverse articles of leather wallets, key cases, money folds made of leather, belts, mens briefs, neckties, handkerchiefs and mens socks. On the other hand, Lim Bun Liong (respondent) is registrant of a trademark of the same name HICKOK for its Marikina shoes. Hickok filed a petition to cancel the respondents registration of the trademark. The Director of Patent granted the petition of Hickok, but on appeal the Court of Appeals reversed the directors decision and dismissed Hickoks original petition for cancellation on the ground that the trademarks of petitioner and that of the registrant were different in design and coloring of, as well as in the words on the ribbons. Hence, this present appeal. Issue: Whether or not the registration of Lim Bun Liongs trademark for his Hickok Marikina shoes can be allowed. Held: The Court affirmed the appellate courts decision. 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. Emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics 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. 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 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 noncompeting product of Marikina shoes.

G.R. No. 75067 February 26, 1988 PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G., petitioner, vs. THE INTERMEDIATE APPELLATE COURT and MIL-ORO MANUFACTURING CORPORATION, respondents. GUTIERREZ, JR., J.: Facts: Petitioner Puma Sportschuhfabriken, a foreign corporation duly organized under the existing laws of Germany, is a manufacturer and producer of Puma products. It filed a complaint for infringement of patent or trademark against Mil-Oro Manufacturing Corporation, which is a registrant of the trademark Puma and Device, with a prayer for issuance of writ of preliminary injunction. The trial court granted petitioners prayer and ordering Mil-Oro to restrain from using the trademark PUMA and to withdraw from the market all products bearing the same trademark. On appeal, the CA reversed the order of the trial court on the ground that petitioner has no legal capacity to sue. Hence, this present petition for review. Both parties in this case maintain that they are the rightful owners of the trademark PUMA for socks and belts such that both parties seek the cancellation of the trademark of the other. Issue: Whether or not petitioner has legal capacity to sue in this jurisdiction. Held: The Court holds that the petitioner had the legal capacity to file an action in this jurisdiction. As early as 1927, the Court was, and it still is, of the view that foreign corporation not doing business in the Philippines needs no license to sue before Philippine courts for infringement of trademark and unfair competition. A foreign corporation which has never done any business in the Philippines and which is unlicensed and unregistered to do business here, but is widely and favorably known in the Philippines through the use therein of its products bearing its corporate and trade name, has a legal right to maintain an action in the Philippines to restrain the residents and inhabitants thereof from organizing a corporation therein bearing the same name as the foreign corporation, when it appears that they have personal knowledge of the existence of such a foreign corporation, and it is apparent that the purpose of the proposed domestic corporation is to deal and trade in the same goods as those of the foreign corporation.