Intellectual Property Law Law on Trademarks, Service marks and Trade Names Test of Infringement CO TIONG Co Tiong Sa has

as been producing T-shirts since March 1947 and he had been using the brand Freedom which has been designed and imprinted on the shirts he was manufacturing. He applied his trademark to be registered but the application was opposed by Saw Woo Chiong who alleged that Freedom is an infringement of Saw Woo Chiongs trademark Freeman which is also being used in his T-Shirt business and was a registered trademark since 1938. The Director of Patents noted that there are differences between the designs but each trademark gives the same general impression and are confusingly similar and so he ruled against the application of Co Tiong Sa as he further ruled that if Co Tiong Sas application is approved and if it would not result to confusion or deception, Saw Woo Chiong would nevertheless be damaged. ISSUE: Whether or not the Director of Patents is correct. HELD: Yes. There is no question that if the details of the two trademarks are to be considered, many differences would be noted that would enable a careful and scrutinizing eye to distinguish one trademark from the other. But differences of variations in the details of one trademark and of another are not the legally accepted tests of similarity in trademarks. 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 dominantfeatures of another, and confusion and deception is likely to result, infringement takes place. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers this is the universal test applicable. In the case at bar, the dominant characteristic of Saw Woo Chiongs trademark Freeman has been imitated by Co Tiong Sas Freedom such as to confuse the unwary customers and to deceive them into believing that t he articles bearing one label are similar. Asia Brewery vs Court of Appeals and San Miguel Corporation Intellectual Property Law Law on Trademarks, Service Marks and Trade Names Unfair Competition In September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for allegedly infringing upon their trademark on their beer product popularly known as San Miguel Pale Pilsen; that Asia Brewerys Beer na Beer product, by infringing upon SMCs trademark has committed unfair competition as Beer na Beer creates confusion between the two products. The RTC ruled in favor of Asia Brewery but the Court of Appeals reversed the RTC. ISSUE: Whether or not Asia Brewery infringed upon the trademark of SMC. HELD: No. Both products are manufactured using amber colored steinie bottles of 320 ml. Both were labeled in a rectangular fashion using white color paint. But other than these similarities, there are salient differences between the two. As found by the Supreme Court, among others they are the following: 1. The dominant feature of SMCs trademark are the words San Miguel Pale Pilsen while that of Asia Brewerys trademark is the word Beer. Nowhere in SMCs product can be seen the word Beer nor in Asia Brewerys product can be seen the words San Miguel Pale Pilsen. Surely, someone buying Beer na Beer cannot mistake it as San Miguel Pale Pilsen beer. 2. The bottle designs are different. SMCs bottles have slender tapered neck while that of Beer na Beer are fat. Though both beer products use steinie bottles, SMC cannot claim that Asia Brewery copied the idea from SMC. SMC did not invent but merely borrowed the steinie bottle from abroad and SMC does not have any patent or trademark to protect the steinie bottle shape and design. 3. In SMC bottles, the words pale pilsen are written diagonally while in Beer na Beer, the words pale pilsen are written horizontally. Further, the words pale pilsen cannot be said to be copied from SMC for pale pilsen are generic words which originated from Pilsen, Czechoslovakia. Pilsen is a geographically descriptive word and is non -registrable. 4. SMC bottles have no slogans written on them while Asia Brewerys bottles have a copyrighted slogan written on them that is Beer na Beer. 5. In SMC bottles, it is expressly labeled as manufactured by SMC. In Asia Brewery beer products, it is likewise expressly labeled as manufactured by Asia Brewery. Surely, there is no intention on the part of Asia Brewery to confuse the public and make it appear that Beer na Beer is a product of SMC, a long -established and more popular brand.

Justice Cruz Dissenting:A number of courts have held that to determine whether a trademark has been infringed, we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. The court therefore should be guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the value of which may be dissipated as soon as the court assumes to analyze carefully the respective features of the mark. (Del Monte vs CA & Sunshine Sauce)

McDonalds Corporation vs Macjoy Fastfood Corporation

Intellectual Property Law Law on Trademarks, Service marks and Trade Names Dominancy Test vs Holistic Test Since 1987, MacJoy Devices had been operating in Cebu. MacJoy is a fast food restaurant which sells fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks. In 1991, MacJoy filed its application for trademark before the Intellectual Property Office (IPO). McDonalds opposed the application as it alleged that MacJoy closely resembles McDonalds corporate logo such that when used on identical or related goods, the trademark applied for would confuse or deceive purchasers into believing that the goods originate from the same source or origin that the use and adoption in bad faith of the MacJoy and Device mark would falsely tend to suggest a connection or affiliation with McDonalds restaurant services and food products, thus, constituting a fraud upon the general public and further cause the dilution of the distinctiveness of McDonal ds registered and internationally recognized McDonaldS marks to its prejudice and irreparable damage. The IPO ruled in favor of McDonalds. MacJoy appealed before the Court of Appeals and the latter ruled in favor of MacJoy. The Court of Appeals, in ruling over the case, actually used the holistic test (which is a test commonly used in infringement cases). The holistic test looks upon the visual comparisons between the two trademarks. In this case, the Court of Appeals ruled that other than the letters M and C in the words MacJoy and McDonalds, there are no real similarities between the two trademarks. MacJoy is written in round script while McDonalds is written in thin gothic. MacJoy is accompanied by apicture of a (cartoonish) chicken while McDonalds is accompanied by the arches M. The color schemes between the two are also different. MacJoy is in deep pink while McDonalds is in gold color. ISSUE: Whether or not MacJoy infringed upon the trademark of McDonalds. HELD: Yes. The Supreme Court ruled that the proper test to be used is the dominancy test. The dominancy test not only looks at the visual comparisons between two trademarks but also the aural impressions created by the marks in the public mind as well as connotative comparisons, giving little weight to factors like prices, quality, sales outlets and market segments. In the case at bar, the Supreme Court ruled that McDonalds and MacJoy marks are confusingly similar with each other such that an ordinary purcha ser can conclude an association or relation between the marks. To begin with, both marks use the corporate M design logo and th e prefixes Mc and/or Mac as dominant features. The first letter M in both marks puts emphasis on the prefixes Mc and/or Mac by the similar way in which they are depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is the prefix Mc, an abbreviation of Mac, which visually and aurally catches the attention of the consuming public. Verily, the word MACJOY attracts attention the same way as did McDonalds, MacFries, McSpaghetti, McDo, Big Mac and the rest of the MCDONALDS marks which all use the prefixes Mc and/or Mac. Besides and most importantly, both trademarks are used in the sale of fastfood products. Further, the owner of MacJoy provided little explanation why in all the available names for a restaurant he chose the prefix Mac to be the dominant feature of the trademark. The prefix Mac and Macjoy has no relation or similarity what soever to the name Scarlett Yu Carcel, which is the name of the niece of MacJoys president whom he said was the basis of the trademark MacJoy. By reason of the MacJoys implausible and insufficient explanation as to how and why out of the many choices of words it could have used for its trade-name and/or trademark, it chose the word Macjoy, the only logical conclusion deducible therefrom is that the MacJoy would want to ride high on the established reputation and goodwill of the McDonalds marks, which, as applied to its restaurant business and food products, is undoubtedly beyond question.

M.A. Clarke vs Manila Candy Co.

Intellectual Property Law Law on Trademarks, Service marks and Trade Names Trademark Infringement Unfair Competition Since 1905, Clarke has been producing and selling candies in islands of the Philippines. His trademark has always been an image of a rooster or locally known as manok (Manoc). Thus, his candies have been known as Manok candies. He had the trademark registered in November 2011. Later, two of his men left his employ and they established a company of their own which was also geared to manufacture candies, the company was called Manila Candy. For their trademark, they chose to use the image of two roosters which are in a fighting position. In June 1912, Clarke sued Manila Candy. ISSUE: Whether or not Manila Candy is guilty of unfair competition. HELD: Yes. Though indeed, Manila Candys trademark of two roosters is visually different from Clarkes trademark of an i mage of just one rooster, no reason has been suggested for the use of this particular design with its predominant display of two roosters as the trade-mark of Manila Candy other than that alleged by the Clarke; that is to say, that Manila Candy well knowing that Clarke had used a rooster as his trade-mark, hoped to secure an unfair advantage by misleading the public, and inducing it to believe that its candies bearing a representation of two roosters were made in the Clarkes factory, which had always markedits goods with one or more pictures of a single rooster, and at the same time had made extensive use of this design in connection with its advertising campaigns. There were a hundred other animals or images that could have been used by Manila Candy to promote its new brand of candies yet it chose to use that of the established trademark used by Clarke.

Del Monte vs Court of Appeals and Sunshine Sauce

Intellectual Property Law Law on Trademarks, Service marks and Trade Trademark Infringement Unfair Competition Del Monte Corporation is an American corporation which is not engaged in business in the Philippines. Though not engaging business here, it has given authority to Philippine Packing Corporation (Philpack) the right to manufacture, distribute and sell in the Philippines various agricultural products, including catsup, under the Del Monte trademark and logo. In 1965, Del Monte also authorized PPC to register with the Patent Office the Del Monte catsup bottle configuration. Philpack was issued a certificate of trademark registration under the Supplemental Register. Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing was using Del Monte bottles in selling its products and that Sunshine Sauces logo is similar to that of Del Monte. The RTC of Makati as well as the Court of Appeals ruled that there was no infringement because the trademarks used between the two are different in designs and that the use of Del Monte bottles by Sunshine Sauce does not constitute unfair competition because as ruled in Shell Company vs Insular Petroleum: selling oil in containers of another with markings erased, without intent to deceive, was not unfair competition. ISSUE: Whether or not there is unfair competition and infringement in the case at bar. HELD: Yes. The Supreme Court recognizes that there really are distinctions between the designs of the logos or trademarks of Del Monte and Sunshine Sauce. However, it has been that side by side comparison is not the final test of similarity. Sunshine Sauces logo is a colorable imitation of Del Montes trademark. The word catsup in both bottles is printed in white and the style of the print/letter is the same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a tomato. The person who infringes a trade mark does not normally copy out but only makes colorable changes, employing enough points of similarity to confuse the public with enough points of differences to confuse the courts. What is undeniable is the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from the others. When as in this case, Sunshine chose, without a reasonable explanation, to use the same colors and letters as those used by Del Monte though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive. The Supreme Court also ruled that Del Monte does not have the exclusive right to use Del Monte bottles in the Philippines because Philpacks patent was only registered under the Supplemental Register and not with the Principal Register. Under the law, registration under the Supplemental Register is not a basis for a case of infringement because unlike registration under the Principal Register, it does not grant exclusive use of the patent. However, the bottles of Del Monte do say in embossed letters: Del M onte Corporation, Not to be Refilled. And yet Sunshine Sauce refilled these bottles with its catsup products. This clearly shows the Sunshine Sauces bad faith and its intention to capitalize on the Del Montes reputation and goodwill and pass off its own product as that of Del Monte.

Compare it with the case of Asia Brewery vs CA and SMC. Note: This case (Del Monte case) is a prime example of how to apply the Holistic Test as opposed to the Asia Brewery case which applied the Dominancy Test.

The distinctions between the two are: 1. Infringement of trademark is the unauthorized use of a trademark, whereas unfair competition is the passing off of ones goods as those of another. 2. In infringement of trademark fraudulent intent is unnecessary whereas in unfair competition fraudulent intent is essential. 3. In infringement of trademark the prior registration of the trademark is a prerequisite to the action, whereas in unfair competition registration is not necessary Converse Rubber vs Universal Rubber

Intellectual Property Law Law on Trademarks, Service marks and Trade Names Trade Name Infringement Converse Rubber Corporation is an American corporation while Universal Rubber Product is a corporation licensed to do business in the country. Converse has been operating since 1946. Universal Rubber has been operating since 1963. Later, Universal Rubber filed an application for the trademark Universal Converse and Device before the Philippine Patent Office. Converse Rubber opposed as it averred that the word Converse which is part of its corporate name cannot be granted as part of Universal Rubbers tr ademark or trade name because it will likely deceive purchasers of Universal Rubbers products as it may be mistaken by unwary customers to be manufactured by Converse Rubber. The Director of Patents did not grant the opposition by Converse Rubber. ISSUE: Whether or not the decision of the Director of Patents is correct. HELD: No. From a cursory appreciation of the Converse Rubbers corporate name CONVERSE RUBBER CORPORATION, it is evident that the word CONVERSE is the dominant word which identifies Converse Rubber from other corporations engaged insimilar business. Universal Rubber, in the stipulation of facts, admitted Converse Rubbers existence since 1946 as a duly organized foreign corporation engaged in the manufacture of rubber shoes. This admission necessarily betrays its knowledge of the reputation and business of petitioner even before it applied for registration of the trademark in question. Knowing, therefore, that the word CONVERSE belongs to and is being used by Converse Rubber, and is in fact the dominant word in its corporate name, Universal Rubber has no right to appropriate the same for use on its products which are similar to those being produced by Converse Rubber.

Nestle vs Court of Appeals and CFC

ntellectual Property Law Law on Trademarks, Service Marks and Trade Names Generic Term In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and Technology Transfers an application for theregistration of its trademark Flavor Master an instant coffee. Nestle opposed the application as it alleged that Flavor Master is confusingly similar to Nestle coffee products like Master Blend and Master Roast. Nestle alleged that in promoting their products, the word Master has been used so frequently so much so that when one hears the word Master it connotes to a Nestle product. They provided as examples the fact that theyve been using Robert Jaworski and Ric Puno Jr. as their commercial advertisers; and t hat in those commercials Jaworski is a master of basketball and that Puno is a master of talk shows; that the brand of coffee equitable or fit to them is Master Blend and Master Roast. CFC Corporation on the other hand alleged that the word Master is a generic a nd a descriptive term, hence not subject to trademark. The Director of Patents ruled in favor of Nestle but the Court of Appeals, using the Holistic Test, reversed the said decision. ISSUE: Whether or not the Court of Appeals is correct. HELD: No. The proper test that should have been used is the Dominancy Test. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common household item. The use of the word Master by Nestle in its products and commercials has made Nestle acquire a connotation that if its a Master product it is a Nestle product. As such, the use by C FC of the term MASTER in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers. In addition, the word MASTER is neither a generic nor a descriptive term. As such, said term can not be invalidated as a tr ademark and, therefore, may be legally protected. Generic terms are 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 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 service s provided rather than to the more idiosyncratic characteristics of a particular product, and are not legally protectable. On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in its normal and natural sense, it 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 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 does not have to exercise powers of perception or imagination. Rather, the term MASTER is a suggestive term brought about by the advertising scheme of Nestle. Suggestive terms are those which, in the phraseology of one court, require imagination, thought and p erception to reach a conclusion as to the nature of the goods. Such terms, which subtly connote something about the product, are eligible for protection in the absence of secondary meaning. While suggestive marks are capable of shedding some light upon certain characteristics of the goods or services in dispute, they nevertheless involve an element of incongruity, figurativeness, or imaginative effort on the part of the observer. Emerald Garment vs Court of Appeals

Intellectual Property Law Law on Trademarks, Service marks and Trade Names Trademark Infringement In 1981, H.D Lee Co. filed an opposition against the trademark application of Emerald Garment. Allegedly, the trademark Styl istic Mr. Lee sought to be applied for by Emerald Garment is too confusingly similar with the brand Lee which has for its variations Lee Riders, Lee Sures, and Lee Leens. The Director of Patents as well as the Court of Appeals ruled in favor of H.D. Lee Co. ISSUE: Whether or not the decision of the Court of Appeals is correct. HELD: No. The Supreme Court considered that the trademarks involved as a whole and ruled that Emerald Garments STYLISTIC MR. LEE is not confusingly similar to H.D. Lees LEE trademark. The trademark Stylistic Mr. Lee, alth ough on its label the word LEE is prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities between the two marks become conspicuous, noticeable and substantial enough to matter especially in the light of the following variables that must be factored in. First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not your ordinary household items like catsup, soysauce or soap which are of minimal cost. Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is less likely. Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He is, therefore, more or less knowledgeable and familiar with his preference and will not easily be distracted. Finally, in line with the foregoing discussions, more credit should be given to the ordinary purchaser. Cast in this particular controversy, the ordinary purchaser is not the completely unwary consumer but is the ordinarily intelligent buyer conside ring the type of product involved. There is no cause for the Court of Appeals apprehension that Emerald Garments products might be mistaken as another variat ion or line of garments under H.D. Lees LEE trademark. As one would readily observe, H.D. Lees variation follows astandard format

LEERIDERS, LEESURES and LEELEENS. It is, therefore, improbable that the public would immediately and naturally conclude that petitioners STYLISTIC MR. LEE is but another variation under H.D. Lees LEE mark. The issue of confusing similarity between trademarks is resolved by considering the distinct characteristics of each case. In the present controversy, taking into account these unique factors, we conclude that the similarities in the trademarks in question are not sufficient as to likely cause deception and confusion tantamount to infringement. Further, H.D. Lee failed to prove in court that it had prior actual commercial use of its LEE trademark in the Philippine s. H.D. Lee did show certificates of registrations for its brand but registration is not sufficient. Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of ownership over a trademark pursuant to Sec. 2 and 2-A of the Philippine Trademark Law (R.A. No. 166). A rule widely accepted and firmly entrenched because it has come down through the years is that actual use in commerce or business is a prerequisite in the acquisition of the right of ownership over a trademark. It would seem quite clear that adoption alone of a trademark would not give exclusive right thereto. Such right grows out of th eir 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. For trademark is a creation of use. The underlying reason for all these is that purchasers have come to understand the mark as indicating the origin of the wares. Flowing from this is the traders right to pro tection in the trade he has built up and the goodwill he has accumulated from use of the trademark. Registration of a trademark, of course, has value: it is an administrative act declaratory of a pre-existing right. Registration does not, however, perfect a trademark right.