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Western Equipment vs. Reyes

GR 27897, 2 December 1927; En Banc, Johns (J)
Facts: In 1925, Western Equipment and Supply Co. applied for the issuance of a
license to engage in businessin the Philippines. On the other hand, Western
Electric Co. has never been licensed to engage in business, norhas it ever
engaged in business in the Philippines. Western Equipment, since the issuance
of its license,engaged in the importation and sale of electrical and telephone
apparatus and supplies manufactured byWestern Electric. A local corporation,
Electric Supply Co. Inc. has been importing the same products in thePhilippines.
In 1926, Electric Supplys president, Henry Herman, along with other persons
sought to organizea corporation to be known as Western Electric Co. Inc.
Western Equipment, et al. filed against Herman toprevent them from organizing
said corporation. The trial court ruled in favor of Western Equipment, holdingthat
the purpose of the incorporation of the proposed corporation is illegal or void.
Issue: Whether the foreign corporation Western Electric Co. Inc. has right of
action to prevent an officer ofthe government from issuing a certificate of
incorporation to Philippine residents who attempt to pirate thecorporate name of
the foreign corporation and engage in the same business.
Held: Yes. A trademark acknowledges no territorial boundaries of municipalities,
states or nations, butextends to every market where the traders goods have
become known and identified by the use of the mark.
G.R. No. L-24295 September 30, 1971
Facts: The General Garments Corporation, organized and existing under the
laws of the Philippines, is the owner of the
trademark "Puritan.
Puritan Sportswear Corporation, organized and existing in and under the laws of
the state of Pennsylvania, U.S.A., filed a petition with the Philippine Patent Office
for the cancellation of the trademark "Puritan" registered in the name of General
Garments Corporation, alleging ownership and prior use in the Philippines of the
said trademark on the same kinds of goods, which use it had not abandoned;
and alleging further that the registration thereof by General Garments
Corporation had been obtained fraudulently and in violation of Section 17(c) of

Republic Act No. 166, as amended, in relation to Section 4(d) thereof. On March
30, 1964 General Garments Corporation moved to dismiss the petition.
Issue: Whether or not Puritan Sportswear Corporation, which is a foreign
corporation not licensed to do business and not doing business in the
Philippines, has legal capacity to maintain a suit in the Philippine Patent Office
for cancellation of a trademark registered therein.
Yes. Respondent is not suing in our courts "for the recovery of any debt, claim or
demand," for which a license to transact business in the Philippines is required
by Section 69 of the Corporation Law, subject only to the exception already
noted. The purpose of such a suit is to protect its reputation, corporate name and
goodwill which has been established, through the natural development of its
trade for a long period of years, in the doing of which it does not seek to enforce
any legal or contract rights arising from, or growing out of any business which it
has transacted in the Philippine Islands. The right to the use of the corporate or
trade name is a property right, a right in rem, which it may assert and protect in
any of the courts of the world

even in jurisdictions where it does not transact business

just the same as it may protect its tangible property, real or personal against
trespass or conversion. A foreign corporation is allowed there under to sue
"whether or not it has been licensed to do business in the Philippines" pursuant
to the Corporation Law. In any event, respondent in the present case is not suing
for infringement or unfair competition under Section 21- A, but for cancellation
under Section 17, on one of the grounds enumerated in Section 4. And while a
suit under Section 21-A requires that the mark or tradename alleged to have
been infringed has been "registered or assigned" to the suing foreign corporation,
a suit for cancellation of the registration of a mark or tradename under Section 17
has no such requirement. For such mark or tradename should not have been
registered in the first place (and consequently may be cancelled if so registered)
if it "consists of or comprises a mark or tradename which so resembles a mark or
tradename ... previously used in the Philippines by another and not abandoned,
as to be likely, when applied to or used in connection with goods, business or
services of the applicant, to cause confusion or mistake or to deceive
Emerald Garment vs. CA
G.R. No. 100098, December 29, 1995

On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with
the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for
Cancellation of Registration No. SR 5054 for the trademark "STYLISTIC MR.
LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses,
shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the
name of petitioner Emerald Garment Manufacturing Corporation.
Private respondent averred that petitioner's trademark "so closely resembled its
own trademark, 'LEE' as previously registered and used in the Philippines cause
confusion, mistake and deception on the part of the purchasing public as to the
origin of the goods.
On 19 July 1988, the Director of Patents rendered a decision granting private
respondent's petition for cancellation and opposition to registration. The Director
of Patents, using the test of dominancy, declared that petitioner's trademark was
confusingly similar to private respondent's mark because "it is the word 'Lee'
which draws the attention of the buyer and leads him to conclude that the goods
originated from the same manufacturer. It is undeniably the dominant feature of
the mark.
Whether or not a trademark causes confusion and is likely to deceive the
public is a question of fact which is to be resolved by applying the "test of
dominancy", meaning, if the competing trademark contains the main or essential
or dominant features of another by reason of which confusion and deception are
likely to result.
The word "LEE" is the most prominent and distinctive feature of the
appellant's trademark and all of the appellee's "LEE" trademarks. It is the mark
which draws the attention of the buyer and leads him to conclude that the goods
originated from the same manufacturer. The alleged difference is too
insubstantial to be noticeable. The likelihood of confusion is further made more
probable by the fact that both parties are engaged in the same line of business.
Although the Court decided in favor of the respondent, the appellee has
sufficiently established its right to prior use and registration of the trademark
"LEE" in the Philippines and is thus entitled to protection from any infringement
upon the same. The dissenting opinion of Justice Padilla is more acceptable.