ESSO STANDARD EASTERN, INC., petitioner, vs. THE HONORABLE COURT OF APPEALS ** and UNITED CIGARETTE CORPORATION, respondents.

& TEEHANKEE, J.:

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The Court affirms on the basis of controlling doctrine the appealed decision of the Court of Appeals reversing that of the Court of First Instance of Manila and dismissing the complaint filed by herein petitioner against private respondent for trade infringement for using petitioner's trademar !""#, since it clearly appears that the goods on $hich the trademar !""# is used by respondent is non% competing and entirely unrelated to the products of petitioner so that there is no li elihood of confusion or deception on the part of the purchasing public as to the origin or source of the goods. &etitioner !sso "tandard !astern, Inc., 1 then a foreign corporation duly licensed to do business in the &hilippines, is engaged in the sale of petroleum products $hich are Identified $ith its trademar !""# '$hich as successor of the defunct "tandard (acuum #il Co. it registered as a business name $ith the )ureaus of Commerce and Internal *evenue in April and May, +,-./. &rivate respondent in turn is a domestic corporation then engaged in the manufacture and sale of cigarettes, after it ac0uired in 1ovember, +,-2 the business, factory and patent rights of its predecessor 3a #riental Tobacco Corporation, one of the rights thus ac0uired having been the use of the trademar !""# on its cigarettes, for $hich a permit had been duly granted by the )ureau of Internal *evenue. )arely had respondent as such successor started manufacturing cigarettes $ith the trademar !""#, $hen petitioner commenced a case for trademar infringement in the Court of First Instance of Manila. The complaint alleged that the petitioner had been for many years engaged in the sale of petroleum products and its trademar !""# had ac0uired a considerable good$ill to such an e4tent that the buying public had al$ays ta en the trademar !""# as e0uivalent to high 0uality petroleum products. &etitioner asserted that the continued use by private respondent of the same trademar !""# on its cigarettes $as being carried out for the purpose of deceiving the public as to its 0uality and origin to the detriment and disadvantage of its o$n products. In its ans$er, respondent admitted that it used the trademar !""# on its o$n product of cigarettes, $hich $as not Identical to those produced and sold by petitioner and therefore did not in any $ay infringe on or imitate petitioner's trademar . *espondent contended that in order that there may be trademar infringement, it is indispensable that the mar must be used by one person in connection or competition $ith goods of the same ind as the complainant's. The trial court, relying on the old cases of Ang vs. Teodoro 2 and Arce & Sons, Inc. vs. Selecta Biscuit Company, 3referring to related products, decided in favor of petitioner and ruled that respondent $as guilty of infringement of trademar . #n appeal, respondent Court of Appeals found that there $as no trademar infringement and dismissed the complaint. *econsideration of the decision having been denied, petitioner appealed to this Court by $ay of certiorari to reverse the decision of the Court of Appeals and to reinstate the decision of the Court of First Instance of Manila. The Court finds no ground for granting the petition. The la$ defines infringement as the use $ithout consent of the trademar o$ner of any 5reproduction, counterfeit, copy or colorable limitation of any registered mar or tradename in connection $ith the sale, offering for sale, or advertising of any goods, business or services on or in

connection $ith $hich such use is li ely to cause confusion or mista e or to deceive purchasers or others as to the source or origin of such goods or services, or Identity of such business6 or reproduce, counterfeit, copy or colorably imitate any such mar or tradename and apply such reproduction, counterfeit, copy or colorable limitation to labels, signs, prints, pac ages, $rappers, receptacles or advertisements intended to be used upon or in connection $ith such goods, business or services.5 4 Implicit in this definition is the concept that the goods must be so related that there is a li elihood either of confusion of goods or business. 5 )ut li elihood of confusion is a relative concept6 to be determined only according to the particular, and sometimes peculiar, circumstances of each case. 6 It is un0uestionably true that, as stated in Coburn vs. Puritan Mills, Inc. 5In trademar cases, even more than in other litigation, precedent must be studied in the light of the facts of the particular case. It is undisputed that the goods on $hich petitioner uses the trademar !""#, petroleum products, and the product of respondent, cigarettes, are non%competing. )ut as to $hether trademar infringement e4ists depends for the most part upon $hether or not the goods are so related that the public may be, or is actually, deceived and misled that they came from the same ma er or manufacturer. For non%competing goods may be those $hich, though they are not in actual competition, are so related to each other that it might reasonably be assumed that they originate from one manufacturer. Non competing goods may also be those $hich, being entirely unrelated, could notreasonably be assumed to have a common source. in the former case of related goods, confusion of business could arise out of the use of similar mar s6 in the latter case of non%related goods, it could not. ! The vast ma7ority of courts today follo$ the modern theory or concept of 5related goods5 " $hich the Court has li e$ise adopted and uniformly recogni8ed and applied. 1# 9oods are related $hen they belong to the same class or have the same descriptive properties6 $hen they possess the same physical attributes or essential characteristics $ith reference to their form, composition, te4ture or 0uality. They may also be related because they serve the same purpose or are sold in grocery stores. 11 Thus, biscuits $ere held related to mil because they are both food products. 12 "oap and perfume, lipstic and nail polish are similarly related because they are common household items no$ a days. 13 The trademar 5Ang Tibay5 for shoes and slippers $as disallo$ed to be used for shirts and pants because they belong to the same general class of goods. 14 "oap and pomade although non% competitive, $ere held to be similar or to belong to the same class, since both are toilet articles. 15 )ut no confusion or deception can possibly result or arise $hen the name 5:ellington5 $hich is the trademar for shirts, pants, dra$ers and other articles of $ear for men, $omen and children is used as a name of a department store. 16 Thus, in Aco!e Mining Co., Inc. vs. "irector o# Patents , 1 the Court, through no$ Chief ;ustice Fernando, reversed the patent director's decision on the 0uestion of 5May petitioner Aco7e Mining Company register for the purpose of advertising its product, soy sauce, the trademar 3#T<", there being already in e4istence one such registered in favor of the &hilippine *efining Company for its product, edible oil, it being further sho$n that the trademar applied for is in smaller type, colored differently, set on a bac ground $hich is dissimilar as to yield a distinct appearance=5 and ordered the granting of petitioner's application for registration ruling that 5there is 0uite a difference bet$een soy sauce and edible oil. If one is in the mar et for the former, he is not li ely to purchase the latter 7ust because of the trademar 3#T<"5 and 5$hen regard is had for the principle that the t$o trademar s 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 >irector ought to have reached a different conclusion. 5 )y the same to en, in the recent case of P$ilippine %e#ining Co., Inc. vs. Ng Sam and "irector o# Patents, 1! the Court upheld the patent director's registration of the same trademar CAMIA for therein respondent's product of ham not$ithstanding its already being used by therein petitioner for a

$ide range of products? lard butter, coo ing oil, abrasive detergents, polishing materials and soap of all inds. The Court, after noting that the same CAMIA trademar had been registered by t$o other companies, !verbright >evelopment Company and F. !. @uellig, Inc. for their respective products of thread and yarn 'for the former/ and te4tiles, embroideries and laces 'for the latter/ ruled that 5$hile ham and some of the products of petitioner are classified under Class AB 'Foods and Ingredients of Food/, this alone cannot serve as the decisive factor in the resolution of $hether or not they are related goods. !mphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics.5 The Court, therefore, concluded that 5In fine, :e hold that the businesses of the parties are non%competitive and their products so unrelated that the use of Identical trademar s is not li ely to give rise to confusion, much less cause damage to petitioner.5 In the situation before us, the goods are obviously different from each other $ith 5absolutely no iota of similitude51" as stressed in respondent court's 7udgment. They are so foreign to each other as to ma e it unli ely that purchasers $ould thin that petitioner is the manufacturer of respondent's goods. The mere fact that one person has adopted and used a trademar on his goods does not prevent the adoption and use of the same trademar by others on unrelated articles of a different ind. 2#
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&etitioner uses the trademar !""# and holds certificate of registration of the trademar for petroleum products, including aviation gasoline, grease, cigarette lighter fluid and other various products such as plastics, chemicals, synthetics, gasoline solvents, erosene, automotive and industrial fuel, bun er fuel, lubricating oil, fertili8ers, gas, alcohol, insecticides and the !""# 9asul5 burner, $hile respondent's business is solely for the manufacture and sale of the unrelated product of cigarettes. The public no$s too $ell that petitioner deals solely $ith petroleum products that there is no possibility that cigarettes $ith !""# brand $ill be associated $ith $hatever good name petitioner's !""# trademar may have generated. Although petitioner's products are numerous, they are of the same class or line of merchandise $hich are non%competing $ith respondent's product of cigarettes, $hich as pointed out in the appealed 7udgment is beyond petitioner's 58one of potential or natural and logical e4pansion5 21:hen a trademar is used by a party for a product in $hich the other party does not deal, the use of the same trademar on the latter's product cannot be validly ob7ected to. 22 Another factor that sho$s that the goods involved are non%competitive and non%related is the appellate court's finding that they flo$ through different channels of trade, thus? 5The products of each party move along and are disposed through different channels of distribution. The 'petitioner's/ products are distributed principally through gasoline service and lubrication stations, automotive shops and hard$are stores. #n the other hand, the 'respondent's/ cigarettes are sold in sari%sari stores, grocery stores, and other small distributor outlets. '*espondent's/ cigarettes are even peddled in the streets $hile 'petitioner's/ 'gasul' burners are not. Finally, there is a mar ed distinction bet$een oil and tobacco, as $ell as bet$een petroleum and cigarettes. !vidently, in ind and nature the products of 'respondent/ and of 'petitioner/ are poles apart.5 23 *espondent court correctly ruled that considering the general appearances of each mar as a $hole, the possibility of any confusion is unli ely. A comparison of the labels of the samples of the goods submitted by the parties sho$s a great many differences on the trademar s used. As pointed out by respondent court in its appealed decision, 5'A/ $itness for the plaintiff, Mr. )uhay, admitted that the color of the 5!""#5 used by the plaintiff for the oval design $here the blue $ord !""# is contained is the distinct and uni0ue ind of blue. In his ans$er to the trial court's 0uestion, Mr. )uhay informed the court that the plaintiff never used its trademar on any product $here the combination of colors is similar to the label of the !sso cigarettes,5 and 5Another $itness for the plaintiff, Mr. Tengco, testified that generally, the plaintiff's trademar comes all in either red, $hite, blue or any combination of the

three colors. It is to be pointed out that not even a shade of these colors appears on the trademar of the appellant's cigarette. The only color that the appellant uses in its trademar is green.5 24 !ven the lo$er court, $hich ruled initially for petitioner, found that a 5noticeable difference bet$een the brand !""# being used by the defendants and the trademar !""# of the plaintiff is that the former has a rectangular bac ground, $hile in that of the plaintiff the $ord !""# is enclosed in an oval bac ground.5 In point of fact and time, the Court's dismissal of the petition at bar $as presaged by its *esolution of May .+, +,B, dismissing by minute resolution the petition for revie$ for lac of merit in the Identical case of S$ell Company o# t$e P$ilippines, +td vs. Court o# Appeals 25, $herein the Court thereby affirmed the patent office's registration of the trademar "C!33 as used in the cigarettes manufactured by therein respondent Fortune Tobacco Corporation not$ithstanding the therein petitioner "hell Company's opposition thereto as the prior registrant of the same trademar for its gasoline and other petroleum trademar s, on the strength of the controlling authority of Aco!e Mining Co. vs. "irector o# Patents, Supra, and the same rationale that 5'I/n the &hilippines, $here buyers of appellee's 'Fortune Corp.'s/ cigarettes, $hich are lo$ cost articles, can be more numerous compared to buyers of the higher priced petroleum and chemical products of appellant '"hell Co./ and $here appellant '"hell/ is no$n to be in the business of selling petroleum and petroleum%based chemical products, and no others, it is difficult to conceive of confusion in the minds of the buying public in the sense it can be thought that appellant '"hell/ is the manufacturer of appellee's 'Fortune's/ cigarettes, or that appellee 'Fortune/ is the manufacturer or processor of appellant's '"hell's/ petroleum and chemical products.5 26 ACC#*>I193D, the petition is dismissed and the decision of respondent Court of Appeals is hereby affirmed.