RA 8293

SECTION 121. Definitions. As used in Part III, the following terms have the following
meanings:
121.1. "Mark" means any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked
container of goods; (Sec. 38, R.A. No. 166a)
121.2. "Collective mark" means any visible sign designated as such in the application
for registration and capable of distinguishing the origin or any other common
characteristic, including the quality of goods or services of different enterprises
which use the sign under the control of the registered owner of the collective
mark; (Sec. 40, R.A. No. 166a)
121.3. "Trade name" means the name or designation identifying or distinguishing an
enterprise; (Sec. 38, R.A. No. 166a)
121.4. "Bureau" means the Bureau of Trademarks;
121.5. "Director" means the Director of Trademarks;
121.6. "Regulations" means the Rules of Practice in Trademarks and Service Marks
formulated by the Director of Trademarks and approved by the Director General;
and
121.7. "Examiner" means the trademark examiner. (Sec. 38, R.A. No. 166a)

SECTION 122. How Marks are Acquired. The rights in a mark shall be acquired
through registration made validly in accordance with the provisions of this law. (Sec. 2-A,
R.A. No. 166a)
SECTION 123. Registrability.
123.1. A mark cannot be registered if it:
a. Consists of immoral, deceptive or scandalous matter, or matter which may
disparage or falsely suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
b. Consists of the flag or coat of arms or other insignia of the Philippines or any of
its political subdivisions, or of any foreign nation, or any simulation thereof;

c. Consists of a name, portrait or signature identifying a particular living individual

except by his written consent, or the name, signature, or portrait of a deceased
President of the Philippines, during the life of his widow, if any, except by written
consent of the widow;
d. Is identical with a registered mark belonging to a different proprietor or a mark
with an earlier filing or priority date, in respect of: cd
i. The same goods or services, or
ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or cause
confusion;
e. Is identical with, or confusingly similar to, or constitutes a translation of a mark
which is considered by the competent authority of the Philippines to be wellknown internationally and in the Philippines, whether or not it is registered here,
as being already the mark of a person other than the applicant for registration,
and used for identical or similar goods or services: Provided, That in determining
whether a mark is well-known, account shall be taken of the knowledge of the
relevant sector of the public, rather than of the public at large, including
knowledge in the Philippines which has been obtained as a result of the
promotion of the mark;
f. Is identical with, or confusingly similar to, or constitutes a translation of a mark
considered well-known in accordance with the preceding paragraph, which is
registered in the Philippines with respect to goods or services which are not
similar to those with respect to which registration is applied for: Provided, That
use of the mark in relation to those goods or services would indicate a connection
between those goods or services, and the owner of the registered mark: Provided
further, That the interests of the owner of the registered mark are likely to be
damaged by such use;
g. Is likely to mislead the public, particularly as to the nature, quality, characteristics
or geographical origin of the goods or services;
h. Consists exclusively of signs that are generic for the goods or services that they
seek to identify;

i.

Consists exclusively of signs or of indications that have become customary or

usual to designate the goods or services in everyday language or in bona fide
and established trade practice;

j.

Consists exclusively of signs or of indications that may serve in trade to designate

the kind, quality, quantity, intended purpose, value, geographical origin, time or
production of the goods or rendering of the services, or other characteristics of
the goods or services;

k. Consists of shapes that may be necessitated by technical factors or by the nature

of the goods themselves or factors that affect their intrinsic value;
l. Consists of color alone, unless defined by a given form; or
m. Is contrary to public order or morality.
123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall
prevent the registration of any such sign or device which has become distinctive
in relation to the goods for which registration is requested as a result of the use
that have been made of it in commerce in the Philippines. The Office may accept
as prima facie evidence that the mark has become distinctive, as used in
connection with the applicant's goods or services in commerce, proof of
substantially exclusive and continuous use thereof by the applicant in commerce
in the Philippines for five (5) years before the date on which the claim of
distinctiveness is made.
123.3. The nature of the goods to which the mark is applied will not constitute an
obstacle to registration. (Sec. 4, R.A. No. 166a)

EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT OF

APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER
and H.D. LEE COMPANY, INC. G.R. No. 100098, December 29, 1995
FACTS: 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.

ISSUE: 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.

HELD: 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, although 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 considering the type
of product involved.
There is no cause for the Court of Appeals apprehension that Emerald Garments
products might be mistaken as another variation or line of garments under H.D. Lees
LEE trademark. As one would readily observe, H.D. Lees variation follows a standard
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 Philippines. 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 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. 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 protection 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.

Fredco Manufacturing Corporation vs. President and Fellows of Harvard College

(Harvard University) [GR No. 185917, June 1, 2011]

FACTS: Petitioner Fredco Manufacturing Corporation filed a Petition for Cancellation of

Registration No. 56561 against respondent President and Fellows of Harvard College
(Harvard University). Fredco alleged that Registration No. 56561 was issued to Harvard
University on 25 November 1993 for the mark "Harvard Veritas Shield Symbol" under
Classes 16, 18, 21, 25 and 28. Fredco also alleged that the mark "Harvard" was first
issued by its predecessor-in-interest New York Garments on 2 January 1982 and was
granted a Certificate of Registration on 12 December 1988 for a period of 20
years registration under Class 25. It is also alleged that the registration was cancelled on
30 July 1988 when New York Garment inadvertently failed to file an Affidavit of Use/NonUse on the fifth anniversary of the registration but the right to the mark remained with its
predecessor and now with Fredco. Harvard University, on the other hand, alleged that it
is the lawful owner of the name and mark "Harvard" in numerous countries worldwide,
including the Philippines. The BLA, IPO cancelled the registration of the mark "Harvard"
under Class 25 but was reversed by the Director General, IPO rationing that more than
the use of the trademark, the application must be the owner of the mark sought tobe
registered. The CA affirmed the Director General.
ISSUE: Whether or nor Registration No. 56561 Class 25 must be cancelled
RULING: No. Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166),
before a trademark can be registered, it must have been actually used in commerce for
not less than two months in the Philippines prior to the filing of an application for its
registration. While Harvard University had actual prior use of its marks abroad for a long
time, it did not have actual prior use in the Philippines of the mark "Harvard Veritas Shield
Symbol" before its application for registration of the mark "Harvard" with the then
Philippine Patents Office. However, Harvard University's registration of the name
"Harvard" is based on home registration which is allowed under Section 37 of R.A. No.
166. As pointed out by Harvard University in its Comment:
Although Section 2 of the Trademark law (R.A. 166) requires for the registration of
trademark that the applicant thereof must prove that the same has been actually in use
in commerce or services for not less than two (2) months in the Philippines before the
application for registration is filed, where the trademark sought to be registered has
already been registered in a foreign country that is a member of the Paris Convention,
the requirement of proof of use in the commerce in the Philippines for the said period is
not necessary. An applicant for registration based on home certificate of registration need
not even have used the mark or trade name in this country.
In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), "[m]arks

registered under Republic Act No. 166 shall remain in force but shall be deemed to have
been granted under this Act x x x," which does not require actual prior use of the mark in
the Philippines. Since the mark "Harvard Veritas Shield Symbol" is now deemed granted
under R.A. No. 8293, any alleged defect arising from the absence of actual prior use in
the Philippines has been cured by Section 239.2.
The Supreme Court further ruled that Harvard University is entitled to protection in the
Philippines of its trade name Harvard even without registration of such trade name in
the Philippines. It explained:
There is no question then, and this Court so declares, that "Harvard" is a well-known
name and mark not only in the United States but also internationally, including the
Philippines. The mark "Harvard" is rated as one of the most famous marks in the world. It
has been registered in at least 50 countries. It has been used and promoted extensively
in numerous publications worldwide. It has established a considerable goodwill worldwide
since the founding of Harvard University more than 350 years ago. It is easily
recognizable as the trade name and mark of Harvard University of Cambridge,
Massachusetts, U.S.A., internationally known as one of the leading educational
institutions in the world. As such, even before Harvard University applied for registration
of the mark "Harvard" in the Philippines, the mark was already protected under Article
6bis and Article 8 of the Paris Convention.

Fruit of the Loom v. CA (G.R. No. L-32747)

Facts: P, a corporation duly organized and existing under the laws of US, is the registrant
of a trademark, FRUIT OF THE LOOM, for classes of merchandise including mens,
womens and childrens underwear, which includes womens panties and which fall under
class 40 classification of goods and knitted, netted and textile fabrics.
R, a domestic corporation is the registrant of a trademark FRUIT FOR EVE for
merchandises covering garments similar to Ps products like womens panties and
pajamas.
P filed before the RTC a complaint for TMI/UC against R alleging that the latters
trademark FRUIT FOR EVE is confusingly similar to its trademark FRUIT OF THE LOOM
used also on womens panties and other textile products, and that the color get-up and
general appearance of Rs hang tag consisting of a big red apple is a colorable imitation
to the hang tag of P.

RTC rendered a decision in favor of P, but both parties appealed to the CA. CA reversed
the decision of the RTC. Ps MR was denied.

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

Ruling: Petitioner asseverates in the third and fourth assignment of errors, which, as We
have said, constitute the main argument, that the dominant features of both trademarks
is the word FRUIT. 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. 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.
In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone similar word is
FRUIT. WE agree with the respondent court that by mere pronouncing the two 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 FOR EVE. WE
do not agree with petitioner that the dominant feature of both trademarks is the word
FRUIT for even in the printing of the trademark in both hang tags, the word FRUIT is not
at all made dominant over the other words.
The similarities of the competing trademarks in this case are completely lost in the
substantial differences in the design and general appearance of their respective hang
tags. WE have examined the two trademarks as they appear in the hang tags submitted
by the parties and We are impressed more by the dissimilarities than by the similarities
appearing therein. WE hold that the trademarks FRUIT OF THE LOOM and FRUIT FOR
EVE do not resemble each other as to confuse or deceive an ordinary purchaser.
The ordinary purchaser must be thought of as having, and credited with, at least a
modicum
of
intelligence
to
be able
to see the obvious differences between the two trademarks in question.
Furthermore, the
SC
believe
that
a person who buys petitioners products and starts to have a liking for it, will not get

confused and reach out for private respondents products when she goes to a garment
store. WHEREFORE, THE DECISION APPEALED FROM IS AFFIRMED.

MCDONALD'S CORPORATION and MCGEORGE FOOD INDUSTRIES, INC.,

petitioners, vs.L.C. BIG MAK BURGER, INC., FRANCIS B. DY, EDNA A. DY, RENE
B. DY, WILLIAM B. DY, JESUS AYCARDO, ARACELI AYCARDO, and GRACE
HUERTO, respondents. G.R. No. 143993, August 18, 2004.
Facts: Petitioner McDonald's Corporation ("McDonald's") is a US corporation that
operates a global chain of fast-food restaurants, with Petitioner McGeorge Food
Industries ("McGeorge"), as the Philippine franchisee.
McDonald's owns the "Big Mac" mark for its "double-decker hamburger sandwich." with
the US Trademark Registry on 16 October 1979.
Based on this Home Registration, McDonald's applied for the registration of the same
mark in the Principal Register of the then Philippine Bureau of Patents, Trademarks and
Technology ("PBPTT") (now IPO). On 18 July 1985, the PBPTT allowed registration of
the "Big Mac."
Respondent L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food
outlets and snack vans in Metro Manila and nearby provinces. Respondent corporation's
menu includes hamburger sandwiches and other food items.
On 21 October 1988, respondent corporation applied with the PBPTT for the registration
of the "Big Mak" mark for its hamburger sandwiches, which was opposed by McDonald's.
McDonald's also informed LC Big Mak chairman of its exclusive right to the "Big Mac"
mark and requested him to desist from using the "Big Mac" mark or any similar mark.
Having received no reply, petitioners sued L.C. Big Mak Burger, Inc. and its directors
before Makati RTC Branch 137 ("RTC"), for trademark infringement and unfair
competition.
RTC rendered a Decision finding respondent corporation liable for trademark infringement
and unfair competition. CA reversed RTC's decision on appeal.

Issue: Whether there is trademark infringement or unfair competition.

Ruling: Yes, there is trademark infringement and unfair competition.

The evidence presented shows that the plastic wrappings and plastic bags used by L.C.
Big Mak for their hamburger sandwiches bore the words Big Mak. The other descriptive
words burger and 100% pure beef were set in smaller type, along with the locations of
branches. Respondents cash invoices simply refer to their hamburger sandwiches as
Big Mak.[29] It is respondents snack vans that carry the words L.C. Big Mak Burger,
Inc.
To establish trademark infringement, the following elements must be shown: (1) the
validity of plaintiffs mark; (2) the plaintiffs ownership of the mark; and (3) the use of the
mark or its colorable imitation by the alleged infringer results in likelihood of
confusion. Of these, it is the element of likelihood of confusion that is the gravamen of
trademark infringement
Validity of the Mark: The Big Mac mark, which should be treated in its entirety and not
dissected word for word, is neither generic nor descriptive. Generic marks are commonly
used as the name or description of a kind of goods, such as Lite for beer or Chocolate
Fudge for chocolate soda drink.Descriptive marks, on the other hand, convey the
characteristics, functions, qualities or ingredients of a product to one who has never seen
it or does not know it exists, such as Arthriticare for arthritis medication. On the contrary,
Big Mac falls under the class of fanciful or arbitrary marks as it bears no logical relation
to the actual characteristics of the product it represents. As such, it is highly distinctive
and thus valid.
Confusion: While there is confusion of goods when the products are competing,
confusion of business exists when the products are non-competing but related enough to
produce confusion of affiliation. The registered trademark owner may use his mark on
the same or similar products, in different segments of the market, and at different price
levels depending on variations of the products for specific segments of the market. The
Court has recognized that the registered trademark owner enjoys protection in product
and market areas that are the normal potential expansion of his business.
Likelihood of Confusion (Tests): In determining likelihood of confusion, jurisprudence
has developed two tests, the dominancy test and the holistic test. The dominancy test
focuses on the similarity of the prevalent features of the competing trademarks that might
cause confusion. In contrast, the holistic test requires the court to consider the entirety

of the marks as applied to the products, including the labels and packaging,
in determining confusing similarity.
The test of dominancy is now explicitly incorporated into law in Section 155.1 of the
Intellectual Property Code which defines infringement as the colorable imitation of a
registered mark xxx or a dominant feature thereof.
Applying the dominancy test, the Court finds that respondents use of the Big Mak mark
results in likelihood of confusion. First, Big Mak sounds exactly the same as Big
Mac. Second, the first word in Big Mak is exactly the same as the first word in Big
Mac. Third, the first two letters in Mak are the same as the first two letters in
Mac. Fourth, the last letter in Mak while a k sounds the same as c when the word
Mak is pronounced. Fifth, in Filipino, the letter k replaces c in spelling, thus
Caloocan is spelled Kalookan.
Respondents inability to explain sufficiently how and why they came to choose Big Mak
for their hamburger sandwiches indicates their intent to imitate petitioners Big Mac
mark. While proof of actual confusion is the best evidence of infringement, its absence is
inconsequential.
Unfair Competition
Unfair competition is broader than trademark infringement and includes passing off goods
with or without trademark infringement. Trademark infringement is a form of unfair
competition. Trademark infringement constitutes unfair competition when there is not
merely likelihood of confusion, but also actual or probable deception on the public
because of the general appearance of the goods. There can be trademark infringement
without unfair competition as when the infringer discloses on the labels containing the
mark that he manufactures the goods, thus preventing the public from being deceived
that the goods originate from the trademark owner.
Passing off (or palming off) takes place where the defendant, by imitative devices on the
general appearance of the goods, misleads prospective purchasers into buying his
merchandise under the impression that they are buying that of his competitors.
The wrappings of Big Mak are very similar to that of McDo, and did not indicate or inform
the public that the burgers are coming L.C. Big Mak and not McDo. Thus, L.C. Big Mak
is liable for unfair competition. Respondents have applied on their plastic wrappers and
bags almost the same words that petitioners use on their styrofoam box. What attracts
the attention of the buying public are the words Big Mak which are almost the same,
aurally and visually, as the words Big Mac.

Soceite Des Produits Nestle, S.A. Vs. Martin T. Dy, Jr., GR No. 172276, August 8,
2010
Facts
Martin Dy Jr., imports and repackages Sunny Powdered Milk from Australia and
sells them under the name NANNY. NANNY retails primarily in parts of Visayas
and Mindanao.

Nestle, is a foreign corporation organized under the laws of Switzerland and owns
the trademark NAN for its line of infant formula. Nestle allocates a substantial
amount of resources for the production and promotion of the NAN product line.

Nestle wrote a letter to Dy Jr. asking him to stop using the name NANNY, they
allege that it infringes upon the trademark ownership of Nestle over the trademark
NAN. He refused to recognize Nestles request and continued using the name
NANNY.

Nestle filed a case with the RTC of Dumaguete City. The case was dismissed and
elevated to the CA, the appellate court remanded the case to the trial court fo
adjudication. It was assigned to the RTC-Cebu Special Commercial Court.

The Commercial Court found Dy Jr., liable for trademark infringement on the
grounds that even though it is not apparent in the packaging of NANNY, the name
itself relates to a childs nurse, which is closely related to the product line of NAN
catering to infants.

The case was then raised to the CA, which reversed the RTCs ruling. It stated that
even though there is similarity in the products, the lower price range of NANNY
cautions and reminds the purchaser that it is different from NAN, which is more
expensive. This does not create confusion as to the consumers because the
apparent difference in price shows that they are two different products.

Issue
W/N the product name NANNY infringes upon the trademark of Nestles NAN.

Held
Yes, the decision of the RTC is reinstated. There is no question that the product
will cause confusion within the consuming public. The primary test that should be used in
determining trademark infringement in this case is the dominancy test. It is apparent that
upon first glance or even at close inspection that there is confusing similarity between
NAN and NANNY. This is sufficient to establish trademark infringement.
The dominancy test states:
-- xx -This Court x x x has relied on the dominancy test rather than the holistic
test. The dominancy test considers the dominant features in the competing
marks in determining whether they are confusingly similar. Under the
dominancy test, courts give greater weight to the similarity of the
appearance of the product arising from the adoption of the dominant
features of the registered mark, disregarding minor differences. Courts will
consider more the aural and visual impressions created by the marks in the
public mind, giving little weight to factors like prices, quality, sales outlets
and market segments.
-- xx -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 is it necessary that the
infringing label should suggest an effort to imitate.
It is incorrect to consider the prices, which the CA utilized in its determination. It is
enough that if both products were placed in front of the consumer, confusion will most
likely arise. From this either similarities or differences in the logo or design are immaterial
to the fact that co-relation and subsequently confusion, has been created in the minds of
the consumer.
-- xx -The Court agrees with the lower courts that there are differences between
NAN and NANNY: (1) NAN is intended for infants while NANNY is intended
for children past their infancy and for adults; and (2) NAN is more expensive
than NANNY. However, as the registered owner of the "NAN" mark, Nestle
should be free to use its mark on similar products, in different segments of
the market, and at different price levels.

Taiwan Kolin vs Kolin Electronics [GR 209843. March 25 2015]

The Facts: In Inter Partes No. 14-1998-00050, Kolin Electronics and Taiwan Kolin
Corporation were opposing parties for the registration of KOLIN, Taiwan Kolin opposing
Kolin Electronics application for the use of the word Kolin claiming it is the prior
registrant and user of the KOLIN trademark, having registered it in Taipei, Taiwan on
December 1, 1988. The Bureau of Legal Affairs however ruled in favour or Kolin
Electronics, which decision was affirmed by the IPO Director General. On February 23,
1996, Taiwan Kolin filed trademark Application No. 4-1996-10310 for the use of KOLIN
on a combination of goods such as coloured television, refrigerators, window-type and
split-type air conditioners and others which allegedly belong to Classes 9, 11 and 21 of
the Nice Classification (NCL). The application was considered abandoned for failure to
respond to the IPOs Paper No 5 requiring it to elect one class of goods for its coverage.
The application was revived through Application Serial no. 4-2002-011002, Taiwan Kolin
electing Class 9 as its coverage. Kolin Electronics opposed the application, thru Inter
Partes Case no. 14-2006-00096, alleging that Taiwan Kolin seeks to register a mark that
is identical, if not confusingly similar with its KOLIN trademark registered on November
23, 2003 (Inter-Partes Case No. 14-1998-00050) under Class 9 of the NCL. In answer,
Taiwan Kolin averred that it should be accorded the right of a prior registrant, having
registered the mark in other countries which are parties to the TRIPS Convention.
The IPO-BLA denied Taiwan Kolins application, citing Sec. 123(d) of the Intellectual
Property Rights Code. It ruled that a mark cannot be registered if it is identical to a
previously registered mark belonging to another in respect of the same or closely related
classification of goods. There was actual confusion in the case as shown by the various
emails it received from the public.
On appeal, the IPO Director General reversed the IPO-BLA decision. It ruled that product
classification alone cannot serve as the decisive factor in the resolution of whether or not
the goods are related and 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. As held, the mere fact that one person has adopted and used a particular
trademark for his goods does not prevent the adoption and use of the same trademark
by others on articles of a different description.
Kolin Electronics elevated the case to the CA, which ruled in its favour, reiterating the
ruling of the BLA-IPO that the mark sought to be registered by Taiwan Kolin is confusingly
similar to that registered to Kolin Elenctronics. Hence, Taiwan Kolin sought relief from
the Supreme Court.

The Issue: W/N the products are closely-related.

RULING: No, the products are not related and the use of the trademark KOLIN on them
would not likely cause confusion. To confer exclusive use of a trademark, emphasis
should be on the similarity or relatedness of the goods and/or services involved and not
on the arbitrary classification or general description of their properties or characteristics.
First, products classified under Class 9 can be further classified into five categories.
Accordingly, the goods covered by the competing marks between Taiwan Kolin and Kolin
Electronics fall under different categories. Taiwan Kolins goods are categorized as audio
visual equipments, while Kolin Electronics goods fall under devices for controlling the
distribution and use of electricity. Thus, it is erroneous to assume that all electronic
products are closely related and that the coverage of one electronic product necessarily
precludes the registration of a similar mark over another.
Second, the ordinarily intelligent buyer is not likely to be confused. The distinct visual and
aural differences between the two trademarks KOLIN, although appear to be minimal,
are sufficient to distinguish between one brand or another. The casual buyer is
predisposed to be more cautious, discriminating, and would prefer to mull over his
purchase because the products involved are various kind of electronic products which are
relatively luxury items and not considered affordable. They are not ordinarily consumable
items such as soy sauce, ketsup or soap which are of minimal cost. Hence, confusion is
less likely.

[January 20, 2016. G.R. No. 198889]

UFC PHILIPPINES, INC. (now merged with NUTRI-ASIA, INC., with NUTRI-ASIA, INC.
as the surviving entity) vs. BARRIO FIESTA MANUFACTURING CORPORATION.
FACTS: Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized and existing
under Philippine laws.5 It is the emergent entity in a merger with UFC Philippines, Inc.
that was completed on February 11, 2009.6 Respondent Barrio Fiesta Manufacturing
Corporation (respondent) is likewise a corporation organized and existing under
Philippine laws.
On April 4, 2002, respondent filed Application No. 4-2002-002757 for the mark "PAPA
BOY & DEVICE" for goods under Class 30, specifically for "lechon sauce."7 The

Intellectual Property Office (IPO) published said application for opposition in the IP Phil.
e-Gazette released on September 8, 2006.
On December 11, 2006, petitioner filed with the IPO-BLA a Verified Notice of Opposition
to the above-mentioned application and alleged that:
1. The mark "PAPA" for use on banana catsup and other similar goods was first used
[in] 1954 by Neri Papa, and thus, was taken from his surname;
2. After using the mark "PAP A" for about twenty-seven (27) years, Neri Papa
subsequently assigned the mark "PAPA" to Heman D. Reyes who, on September 17,
1981, filed an application to register said mark "PAP A" for use on banana catsup,
chili sauce, achara, banana chips, and instant ube powder;
3. On August 14, 1983, Heman D. Reyes was issued Certificate of Registration No.
32416;
4. Certificate of] Registration No. 32416 was subsequently assigned to the following in
successive fashion: Acres & Acres Food, Inc., Southeast Asia Food, Inc., Heinz-UFC
Philippines, Inc., and Opposer UFC Philippines, Inc.;
5. Last October 28, 2005, Heinz-UFC Philippines, Inc. filed Application Serial No. 42005-010788 which, in effect, is a re-registration of Registration No. 32416 which
expired on August 11, 2003;
6. Heman D. Reyes also filed on March 04, 1982 an application to register in the
Supplemental Register the "PAPA BANANA CATSUP Label";
7. On August 11, 1983, Heman D. Reyes was issued Certificate of Registration No. SR6282 which was subsequently assigned to Acres & Acres Food, Inc., Southeast Asia
Food, Inc., Heinz-UFC Philippines, Inc.;
8. After its expiration, Opposer filed on November 15, 2006 Trademark Application
Serial No. 4-2006-012346 for the re-registration of the "PAP A Label Design";
9. The mark "PAP A KETSARAP" for use on banana sauce falling under Class 30 was
also registered in favor of Acres & Acres Food, Inc. under Registration No. 34681
issued on August 23, 1985 and renewed last August 23, 2005 by Heinz-UFC
Philippines, Inc. for ten (10) years;
10. On November 07, 2006, Registration No. 34681 was assigned to Opposer;
11. Opposer has not abandoned the use of the mark "PAP A" and the variations thereof
as Opposer has continued their use up to the present;
12. The mark "PAPA BOY & DEVICE" is identical to the mark "PAPA" owned by Opposer
and duly registered in its favor, particularly the dominant feature thereof;
13. [With the] dominant feature of respondent-applicant's mark "PAPA BOY & DEVICE",
which is Opposer's "PAPA" and the variations thereof, confusion and deception is
likely to result: The consuming public, particularly the unwary customers, will be
deceived, confused, and mistaken into believing that respondent-applicant's goods

come from Opposer or are authorized by Opposer to Opposer's prejudice, which is

particularly true considering that Opposer's sister company, Southeast Asia Food,
Inc., and its predecessors-in-interest have been major manufacturers and distributors
of lechon sauce and other table sauces since 1965 under its registered mark "Mang
Tomas";
14. Respondent-applicant's mark "PAPA BOY & DEVICE" which nearly resembles
Opposer's mark "PAPA" and the variations thereof will impress upon the gullible or
unsuspecting public that it is the same or related to Opposer as to source because
its dominant part is the same as Opposer's mark and, thus, will likely be mistaken to
be the mark, or related to, or a derivative or variation of, Opposer's mark;
15. The goods covered by respondent-applicant's application fall under Class 30, the
same Class under which Opposer's goods enumerated in its earlier issued
registrations;
16. The test of dominancy is now explicitly incorporated into law in Section 155 .1 of the
IP Code which defines infringement as the colorable imitation of a registered mark or
a dominant feature thereof, and is provided for by jurisprudence;
17. As a corporation also engaged in the food business, Respondent-applicant knew
and/or ought to know that Opposer and its predecessors-in-interest have been using
the mark "PAPA" and the variations thereof for the last fifty-two (52) years while its
sister company is engaged in the business of manufacturing and distributing "lechon
sauce" and other table sauces for the last forty-one (41) years;
18. The approval of the subject application will violate Opposer's right to the exclusive
use of its registered mark "PAPA" and the variations thereof per Section 138 of the
IP Code;
19. The approval of the subject application has caused and will continue to cause great
and irreparable damage and injury to Opposer;
20. Respondent-applicant filed the subject application fraudulently and in bad faith; and
21. Respondent-applicant is not entitled to register the subject mark in its favor.
In its verified opposition before the IPO, petitioner contended that "PAPA BOY & DEVICE"
is confusingly similar with its "PAPA" marks inasmuch as the former incorporates the term
"PAP A," which is the dominant feature of petitioner's "PAPA" marks. Petitioner averred
that respondent's use of "PAPA BOY & DEVICE" mark for its lechon sauce product, if
allowed, would likely lead the consuming public to believe that said lechon sauce product
originates from or is authorized by petitioner, and that the "PAPA BOY & DEVICE" mark
is a variation or derivative of petitioner's "PAPA" marks. Petitioner argued that this was
especially true considering that petitioner's ketchup product and respondent's lechon
sauce product are related articles that fall under the same Class 30.

Petitioner alleged that the registration of respondent's challenged mark was also likely to
damage the petitioner, considering that its former sister company, Southeast Asia Food,
Inc., and the latter's predecessors-in-interest, had been major manufacturers and
distributors of lechon and other table sauces since 1965, such as products employing the
registered "Mang Tomas" mark.
In its Verified Answer, respondent argued that there is no likelihood of confusion between
petitioner's family of "PAPA" trademarks and respondent's "PAPA BOY & DEVICE"
trademark.
In its Verified Answer, respondent argued that there is no likelihood of confusion between
petitioner's family of "PAPA" trademarks and respondent's "PAPA BOY & DEVICE"
trademark.
The case was referred to mediation but the parties failed to arrive at an amicable
settlement. The case was thus set for preliminary conference. Subsequently, the IPOBLA directed the parties to file their respective position papers and draft decisions.
The IPO-BLA rendered a Decision on March 26, 2008 sustaining petitioner's Opposition
and rejecting respondent's application for "PAPA BOY & DEVICE."
The file wrapper of PAPA BOY & Device subject matter of this case was forwarded to the
Bureau of Trademarks (BOT) for appropriate action in accordance with this Decision.
Respondent filed an appeal before the IPO Director General, who found it unmeritorious.
On June 2011, Ruled in favor of Barrio Fiesta to use the "Papa Boy & Device" brand. The
CA said that UFC cannot trademark the word Papa because it is a common term of
endearment for a father. Hence the petition before the SC.

ISSUE: W/N the Court of Appeals erred in applying the holistic test and in reversing and
setting aside the decision of the IPO-BLA and that of the IPO Director General, both of
which rejected respondent's application for the mark "PAPA BOY & DEVICE."

RULING: The petition has merit.

In Dermaline, Inc. v. Myra Pharmaceuticals, Inc.,43 we defined a trademark as "any
distinctive word, name, symbol, emblem, sign, or device, or any combination thereof,

adopted and used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt by others." We held that a trademark is "an
intellectual property deserving protection by law."
The rights of the trademark owner are found in the Intellectual Property Code, which
provides:
Section 147. Rights Conferred. - 147.1. The owner of a registered mark shall have the
exclusive right to prevent all third parties not having the owner's consent from using in the
course of trade identical or similar signs or containers for goods or services which are
identical or similar to those in respect of which the trademark is registered where such
use would result in a likelihood of confusion. In case of the use of an identical sign for
identical goods or services, a likelihood of confusion shall be presumed.
Section 168. Unfair Competition, Rights, Regulation and Remedies. - 168.1. A
person who has identified in the mind of the public the goods he manufactures or deals
in, his business or services from those of others, whether or not a registered mark is
employed, has a property right in the goodwill of the said goods, business or services so
identified, which will be protected in the same manner as other property rights.
The guideline for courts in determining likelihood of confusion is found in A.M. No. 10-310-SC, or the Rules of Procedure for Intellectual Property Rights Cases, Rule 18, which
provides:
RULE
Evidence in Trademark Infringement and Unfair Competition Cases

18

SECTION 1. Certificate of Registration. - A certificate of registration of a mark shall

be prima faci eevidence of:
a) the validity of the registration;
b) the registrant's ownership of the mark; and
c) the registrant's exclusive right to use the same in connection with the goods or
services and those that are related thereto specified in the certificate.
xxxx
SECTION 3. Presumption of Likelihood of Confusion. - Likelihood of confusion shall be
presumed in case an identical sign or mark is used for identical goods or services.

SECTION 4. Likelihood of Confusion in Other Cases. - In determining whether one

trademark is confusingly similar to or is a colorable imitation of another, the court must
consider the general impression of the ordinary purchaser, buying under the normally
prevalent conditions in trade and giving the attention such purchasers usually give in
buying that class of goods. Visual, aural, connotative comparisons and overall
impressions engendered by the marks in controversy as they are encountered in the
realities of the marketplace must be taken into account. Where there are both similarities
and differences in the marks, these must be weighed against one another to see which
predominates.
In determining likelihood of confusion between marks used on non-identical goods or
services, several factors may be taken into account, such as, but not limited to:
a) the strength of plaintiffs mark;
b) the degree of similarity between the plaintiffs and the defendant's marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.
"Colorable imitation" denotes such a close or ingenious imitation as to be calculated to
deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually gives, as to cause him to purchase
the one supposing it to be the other.
SECTION 5. Determination of Similar and Dissimilar Goods or Services. - Goods or
services may not be considered as being similar or dissimilar to each other on the ground
that, in any registration or publication by the Office, they appear in different classes of the
Nice Classification.
In this case, the findings of fact of the highly technical agency, the Intellectual Property
Office, which has the expertise in this field, should have been given great weight by the
Court of Appeals.
In trademark controversies, each case must be scrutinized according to its peculiar
circumstances, such that jurisprudential precedents should only be made to apply if they
are specifically in point.

There are two tests used in jurisprudence to determine likelihood of confusion, namely
the dominancy test used by the IPO, and the holistic test adopted by the Court of Appeals.
A scrutiny of petitioner's and respondent's respective marks would show that the IPOBLA and the IPO Director General correctly found the word "PAPA" as the dominant
feature of petitioner's mark "PAPA KETSARAP." Contrary to respondent's contention,
"KETSARAP" cannot be the dominant feature of the mark as it is merely descriptive of
the product. Furthermore, it is the "PAPA" mark that has been in commercial use for
decades and has established awareness and goodwill among consumers.
We likewise agree with the IPO-BLA that the word "PAPA" is also the dominant feature
of respondent's "PAPA BOY & DEVICE" mark subject of the application, such that "the
word 'PAPA' is written on top of and before the other words such that it is the first
word/figure that catches the eyes." Furthermore, as the IPO Director General put it, the
part of respondent's mark which appears prominently to the eyes and ears is the phrase
"PAPA BOY" and that is what a purchaser of respondent's product would immediately
recall, not the smiling hog.
We agree that respondent's mark cannot be registered. Respondent's mark is related to
a product, lechon sauce, an everyday all-purpose condiment and sauce, that is not
subjected to great scrutiny and care by the casual purchaser, who knows from regular
visits to the grocery store under what aisle to find it, in which bottle it is contained, and
approximately how much it costs. Since petitioner's product, catsup, is also a household
product found on the same grocery aisle, in similar packaging, the public could think that
petitioner had expanded its product mix to include lechon sauce, and that the "PAPA
BOY" lechon sauce is now part of the "PAPA" family of sauces, which is not unlikely
considering the nature of business that petitioner is in. Thus, if allowed. registration,
confusion of business may set in, and petitioner's hard-earned goodwill may be
associated to the newer product introduced by respondent, all because of the use of the
dominant feature of petitioner's mark on respondent's mark, which is the word "PAPA."
The words "Barrio Fiesta" are not included in the mark, and although printed on the label
of respondent's lechon sauce packaging, still do not remove the impression that "PAPA
BOY" is a product owned by the manufacturer of "PAPA" catsup, by virtue of the use of
the dominant feature. It is possible that petitioner could expand its business to include
lechon sauce, and that would be well within petitioner's rights, but the existence of a
"PAPA BOY" lechon sauce would already eliminate this possibility and deprive petitioner
of its rights as an owner of a valid mark included in the Intellectual Property Code.
The Court of Appeals likewise erred in finding that "PAPA," being a common term of
endearment for one's father, is a word over which petitioner could not claim exclusive use

and ownership. The Merriam-Webster dictionary defines "Papa" simply as "a person's
father." True, a person's father has no logical connection with catsup products, and that
precisely makes "PAPA" as an arbitrary mark capable of being registered, as it is
distinctive, coming from a family name that started the brand several decades ago. What
was registered was not the word "Papa" as defined in the dictionary, but the word "Papa"
as the last name of the original owner of the brand. In fact, being part of several of
petitioner's marks, there is no question that the IPO has found "PAPA" to be a registrable
mark.
Respondent had an infinite field of words and combinations of words to choose from to
coin a mark for its lechon sauce. While its claim as to the origin of the term "PAPA BOY"
is plausible, it is not a strong enough claim to overrule the rights of the owner of an existing
and valid mark. Furthermore, this Court cannot equitably allow respondent to profit by the
name and reputation carefully built by petitioner without running afoul of the basic
demands of fair play.
WHEREFORE, we hereby GRANT the petition. We SET ASIDE the June 23,
2011 Decision and the October 4, 2011 Resolution of the Court of Appeals in CA-G.R.
SP No. 107570, and REINSTATE the March 26, 2008Decision of the Bureau of Legal
Affairs of the Intellectual Property Office (IPO-BLA) and the January 29, 2009Decision of
the Director General of the IPO.

GSIS FAMILY BANK vs. BPI FAMILY BANK

The Case: Petitioner GSIS Family Bank was originally registered as Royal Savings Bank
in 1971. Due to liquidity problems, it was placed under the receivership of the Central
Bank of the Philippines, and temporarily closed. When it reopened, it was acquired by
Commercial Bank of Manila, and renamed Comsavings Bank, Inc. In 1987, the GSIS
acquired the bank from its owner. To improve its marketability, the bank sought SEC
approval to change its corporate name to GSIS Family Bank, a Thrift Bank. It also applied
with the Department of Trade and Industry and the BSP authority to use the GSIS Family
Bank, A Thrift Bank, which the DTI and BSP approved. Hence, it had been using the
name GSIS Family Bank-A Thrift Bank under SEC Registration No. 74135.
On the other hand, BPI Family Bank came about as a result of the merger between the
Family Bank and Trust Company and the Bank of the Philippine Islands. The former
started out as Family First Savings Bank, later amended to Family Savings Bank and
lastly, Family Bank and Trust Company. After the merger with the BPI in 1985, BPI

acquired all the rights, interests, privileges, and properties of Family Bank, including the
right to use the names Family Bank, Family First Savings Bank, and Family Bank and
Trust Company. It was registered with the SEC as a wholly owned subsidiary of BPI, and
the name BPI Family Bank was registered with the Bureau of Domestic Trade to which it
acquired reputation and good will. When it learned that petitioner was trying to use the
word Family Bank, BPI Family Bank petitioned the SEC Company Registration and
Monitoring Department (SEC CRMD) to disallow or prevent the registration of the
corporate name GSIS Family Bank or any other corporate name with the words Family
Bank, and to cancel any corporate name if any have been registered with the SEC.
The SEC decided the issue in favour of BPI Family Bank, which it held, acquired the right
to the use of the name of the absorbed corporation. Thus, BPI Family Bank has a prior
right to the use of the name Family Bank in the banking industry, arising from its long and
extensive nationwide use, coupled with its registration with the Intellectual Property Office
(IPO) of the name Family Bank as its trade name. Applying the rule of priority in
registration based on the legal maxim first in time, first in right, the SEC CRMD concluded
that BPI has the preferential right to the use of the name Family Bank. More, GSIS and
Comsavings Bank were then fully aware of the existence and use of the name Family
Bank by FBTC prior to the latters merger with BPI. There also exists confusing similarity
between the corporate names of the two banks; though not identical, the corporate names
are indisputably similar. It directed the petitioner to refrain from using the word Family
as part of its name. The SEC En Banc denied the appeal of petitioner, thus it raised the
matter to the Court of Appeal, which in turn denied its petition. The CA held that the SEC
has absolute jurisdiction and control over all corporations, and approvals by the DTI and
BSP of the petitioners corporate name do not constitute authority for its lawful and valid
use. Proof of actual confusion need not be shown, specially in this case when both
companies belong to the banking industry. The petitioner appealed to the Supreme Court.

The Issue:
-

Whether or not the word Family is generic entitling petitioner to use it in its
corporate name.
Whether or not BPI Family Bank is guilty of forum shopping
Whether the BSP opinion that the use of the corporate name by petitioner is not
similar or does not deceive or cause any deception to the public, should be
disregarded by the CA

The Ruling: We uphold the decision of the Court of Appeals.

Section 18 of the Corporation Code provides,

Section 18. Corporate name. No corporate name may be allowed by the Securities and
Exchange Commission if the proposed name is identical or deceptively or confusingly
similar to that of any existing corporation or to any other name already protected by law
or is patently deceptive, confusing or contrary to existing laws. When a change in the
corporate name is approved, the Commission shall issue an amended certificate of
incorporation under the amended name.
In Philips Export B.V. v. Court of Appeals, this Court ruled that to fall within the prohibition
of the law on the right to the exclusive use of a corporate name, two requisites must be
proven, namely:
(1) that the complainant corporation acquired a prior right over the use of such corporate
name; and
(2) the proposed name is either
(a) identical or
(b) deceptive or confusingly similar to that of any existing corporation or to any other name
already protected by law; or
(c) patently deceptive, confusing or contrary to existing law.
These two requisites are present in this case. On the first requisite of a prior right,
Industrial Refractories Corporation of the Philippines v. Court of Appeals (IRCP case)[3]
is instructive. In that case, Refractories Corporation of the Philippines (RCP) filed before
the SEC a petition to compel Industrial Refractories Corporation of the Philippines (IRCP)
to change its corporate name on the ground that its corporate name is confusingly similar
with that of RCPs such that the public may be confused into believing that they are one
and the same corporation. The SEC and the Court of Appeals found for petitioner, and
ordered IRCP to delete or drop from its corporate name the word Refractories. Upon
appeal of IRCP, this Court upheld the decision of the CA.
Applying the priority of adoption rule to determine prior right, this Court said that RCP has
acquired the right to use the word Refractories as part of its corporate name, being its
prior registrant. In arriving at this conclusion, the Court considered that RCP was
incorporated on October 13, 1976 and since then continuously used the corporate name

Refractories Corp. of the Philippines. Meanwhile, IRCP only started using its corporate
name Industrial Refractories Corp. of the Philippines when it amended its Articles of
Incorporation on August 23, 1985.
In this case, respondent was incorporated in 1969 as Family Savings Bank and in 1985
as BPI Family Bank. Petitioner, on the other hand, was incorporated as GSIS Family
Thrift Bank only in 2002, or at least seventeen (17) years after respondent started using
its name. Following the precedent in the IRCP case, we rule that respondent has the prior
right over use of the corporate name.
The second requisite in the Philips Export case likewise obtains on two points: the
proposed name is (a) identical or (b) deceptive or confusingly similar to that of any existing
corporation or to any other name already protected by law.
On the first point (a), the words Family Bank present in both petitioner and respondents
corporate name satisfy the requirement that there be identical names in the existing
corporate name and the proposed one. Respondent cannot justify its claim under Section
3 of the Revised Guidelines in the Approval of Corporate and Partnership Names, to wit:
1. The name shall not be identical, misleading or confusingly similar to one already
registered by another corporation or partnership with the Commission or a sole
proprietorship registered with the Department of Trade and Industry.
If the proposed name is similar to the name of a registered firm, the proposed name must
contain at least one distinctive word different from the name of the company already
registered.
Section 3 states that if there be identical, misleading or confusingly similar name to one
already registered by another corporation or partnership with the SEC, the proposed
name must contain at least one distinctive word different from the name of the company
already registered. To show contrast with respondents corporate name, petitioner used
the words GSIS and thrift. But these are not sufficiently distinct words that differentiate
petitioners corporate name from respondents. While GSIS is merely an acronym of the
proper name by which petitioner is identified, the word thrift is simply a classification of
the type of bank that petitioner is. Even if the classification of the bank as thrift is
appended to petitioners proposed corporate name, it will not make the said corporate
name distinct from respondents because the latter is likewise engaged in the banking
business.
This Court used the same analysis in Ang mga Kaanib sa Iglesia ng Dios Kay Kristo
Hesus, H.S.K. sa Bans ang Pilipinas, Inc. v. Iglesia ng Dios Kay Cristo Jesus, Haligi at

Suhay ng Katotohanan. In that case, Iglesia ng Dios Kay Cristo Jesus filed a case before
the SEC to compel Ang mga Kaanib sa Iglesia ng Dios Kay Kristo Hesus to change its
corporate name, and to prevent it from using the same or similar name on the ground that
the same causes confusion among their members as well as the public. Ang mga Kaanib
sa Iglesia ng Dios Kay Kristo Hesus claimed that it complied with SEC Memorandum
Circular No. 14-2000 by adding not only two, but eight words to their registered name, to
wit: Ang Mga Kaanib and Sa Bansang Pilipinas, Inc., which effectively distinguished it
from Iglesia ng Dios Kay Cristo Jesus. This Court rejected the argument, thus:
The additional words Ang Mga Kaanib and Sa Bansang Pilipinas, Inc. in petitioners
name are, as correctly observed by the SEC, merely descriptive of and also referring to
the members, or kaanib, of respondent who are likewise residing in the Philippines. These
words can hardly serve as an effective differentiating medium necessary to avoid
confusion or difficulty in distinguishing petitioner from respondent. This is especially so,
since both petitioner and respondent corporations are using the same acronym H.S.K.;
not to mention the fact that both are espousing religious beliefs and operating in the same
place. Xxx
On the second point (b), there is a deceptive and confusing similarity between petitioners
proposed name and respondents corporate name, as found by the SEC. In determining
the existence of confusing similarity in corporate names, the test is whether the similarity
is such as to mislead a person using ordinary care and discrimination. And even without
such proof of actual confusion between the two corporate names, it suffices that confusion
is probable or likely to occur.
Petitioners corporate name is GSIS Family BankA Thrift Bank and respondents
corporate name is BPI Family Bank. The only words that distinguish the two are BPI,
GSIS, and Thrift. The first two words are merely the acronyms of the proper names by
which the two corporations identify themselves; and the third word simply describes the
classification of the bank. The overriding consideration in determining whether a person,
using ordinary care and discrimination, might be misled is the circumstance that both
petitioner and respondent are engaged in the same business of banking. The likelihood
of confusion is accentuated in cases where the goods or business of one corporation are
the same or substantially the same to that of another corporation.
Respondent alleged that upon seeing a Comsavings Bank branch with the signage GSIS
Family Bank displayed at its premises, some of the respondents officers and their clients
began asking questions. These include whether GSIS has acquired Family Bank; whether
there is a joint arrangement between GSIS and Family Bank; whether there is a joint
arrangement between BPI and GSIS regarding Family Bank; whether Comsavings Bank

has acquired Family Bank; and whether there is there an arrangement among
Comsavings Bank, GSIS, BPI, and Family Bank regarding BPI Family Bank and GSIS
Family Bank.
The SEC made a finding that [i]t is not a remote possibility that the public may entertain
the idea that a relationship or arrangement indeed exists between BPI and GSIS due to
the use of the term Family Bank in their corporate names.
Findings of fact of quasi-judicial agencies, like the SEC, are generally accorded respect
and even finality by this Court, if supported by substantial evidence, in recognition of their
expertise on the specific matters under their consideration, more so if the same has been
upheld by the appellate court, as in this case.
Petitioner cannot argue that the word family is a generic or descriptive name, which
cannot be appropriated exclusively by respondent. Family, as used in respondents
corporate name, is not generic. Generic marks are commonly used as the name or
description of a kind of goods, such as Lite for beer or Chocolate Fudge for chocolate
soda drink. Descriptive marks, on the other hand, convey the characteristics, function,
qualities or ingredients of a product to one who has never seen it or does not know it
exists, such as Arthriticare for arthritis medication.
Under the facts of this case, the word family cannot be separated from the word bank.
In asserting their claims before the SEC up to the Court of Appeals, both petitioner and
respondent refer to the phrase Family Bank in their submissions. This coined phrase,
neither being generic nor descriptive, is merely suggestive and may properly be regarded
as arbitrary. Arbitrary marks are words or phrases used as a mark that appear to be
random in the context of its use. They are generally considered to be easily remembered
because of their arbitrariness. They are original and unexpected in relation to the products
they endorse, thus, becoming themselves distinctive. Suggestive marks, on the other
hand, are marks which merely suggest some quality or ingredient of goods, xxx The
strength of the suggestive marks lies on how the public perceives the word in relation to
the product or service.
In Ang v. Teodoro, this Court ruled that the words Ang Tibay is not al descriptive term
within the meaning of the Trademark Law but rather a fanciful or coined phrase. In so
ruling, this Court considered the etymology and meaning of the Tagalog words, Ang
Tibay to determine whether they relate to the quality or description of the merchandise
to which respondent therein applied them as trademark, thus:

We find it necessary to go into the etymology and meaning of the Tagalog words Ang
Tibay to determine whether they are a descriptive term, i.e., whether they relate to the
quality or description of the merchandise to which respondent has applied them as a
trade-mark. The word ang is a definite article meaning the in English. It is also used
as an adverb, a contraction of the word anong (what or how). For instance, instead of
saying, Anong ganda! (How beautiful!), we ordinarily say, Ang ganda! Tibay is a root
word from which are derived the verb magpatibay (to strengthen); the nouns
pagkamatibay (strength, durability), katibayan (proof, support, strength), katibaytibayan
(superior strength); and the adjectives matibay (strong, durable, lasting), napakatibay
(very strong), kasintibay or magkasintibay (as strong as, or of equal strength). The phrase
Ang Tibay is an exclamation denoting admiration of strength or durability. For instance,
one who tries hard but fails to break an object exclaims, Ang tibay! (How strong!) It
may also be used in a sentence thus, Ang tibay ng sapatos mo! (How durable your
shoes are!) The phrase ana tibay is never used adjectively to define or describe an
object. One does not say, ang tibay sapatos or sapatos ang tibay to mean durable
shoes, but matibay na sapatos or sapatos na matibay.
From all of this we deduce that Ang Tibay is not a descriptive term within the meaning
of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and
legally be appropriated as a trade-mark or trade-name, xxx (Underscoring supplied).
The word family is defined as a group consisting of parents and children living together
in a household or a group of people related to one another by blood or marriage. Bank,
on the other hand, is defined as a financial establishment that invests money deposited
by customers, pays it out when requested, makes loans at interest, and exchanges
currency. By definition, there can be no expected relation between the word family and
the banking business of respondent. Rather, the words suggest that respondents bank
is where family savings should be deposited. More, as in the Ang case, the phrase family
bank cannot be used to define an object.
Petitioners argument that the opinion of the BSP and the certificate of registration granted
to it by the DTI constitute authority for it to use GSIS Family Bank as corporate name is
also untenable.
The enforcement of the protection accorded by Section 18 of the Corporation Code to
corporate names is lodged exclusively in the SEC. The jurisdiction of the SEC is not
merely confined to the adjudicative functions provided in Section 5 of the SEC
Reorganization Act,[25] as amended.[26] By express mandate, the SEC has absolute
jurisdiction, supervision and control over all corporations.[27] It is the SECs duty to
prevent confusion in the use of corporate names not only for the protection of the

corporations involved, but more so for the protection of the public. It has authority to deregister at all times, and under all circumstances corporate names which in its estimation
are likely to generate confusion.
The SEC correctly applied Section 18 of the Corporation Code, and Section 15 of SEC
Memorandum Circular No. 14-2000, pertinent portions of which provide:
In implementing Section 18 of the Corporation Code of the Philippines (BP 69), the
following revised guidelines in the approval of corporate and partnership names are
hereby adopted for the information and guidance of all concerned:
xxx
1. Registrant corporations or partnership shall submit a letter undertaking to change
their corporate or partnership name in case another person or firm has acquired a
prior right to the use of the said firm name or the same is deceptively or confusingly
similar to one already registered unless this undertaking is already included as one
of the provisions of the articles of incorporation or partnership of the registrant.
The SEC, after finding merit in respondents claims, can compel petitioner to abide by its
commitment to change its corporate name in the event that another person, firm or entity
has acquired a prior right to use of said name or one similar to it.
Clearly, the only determination relevant to this case is that one made by the SEC in the
exercise of its express mandate under the law. The BSP opinion invoked by petitioner
even acknowledges that the issue on whether a proposed name is identical or
deceptively similar to that of any of existing corporation is matter within the official
jurisdiction and competence of the SEC.
Judicial notice may also be taken of the action of the IPO in approving respondents
registration of the trademark BPI Family Bank and its logo on October 17, 2008. The
certificate of registration of a mark shall be prima facie evidence of the validity of the
registration, the registrants ownership of the mark, and of the registrants exclusive right
to use the same in connection with the goods or services and those that are related
thereto specified in the certificate.
Finally, we uphold the Court of Appeals finding that the issue of forum shopping was
belatedly raised by petitioner and, thus, cannot anymore be considered at the appellate
stage of the proceedings. Petitioner raised the issue of forum shopping for the first time
only on appeal. Petitioner argued that the complaints filed by respondent did not contain
certifications against non-forum shopping, in violation of Section 5, Rule 7 of the Rules of
Court.

In S.C. Megaworld Construction and Development Corporation vs. Parada,[36] this Court
said that objections relating to non-compliance with the verification and certification of
non-forum shopping should be raised in the proceedings below, and not for the first time
on appeal. In that case, S.C. Megaworld argued that the complaint for collection of sum
of money should have been dismissed outright by the trial court on account of an invalid
non-forum shopping certification. It alleged that the Special Power of Attorney granted to
Parada did not specifically include an authority for the latter to sign the verification and
certification of non-forum shopping, thus rendering the complaint defective for violation of
Sections 4 and 5 of Rule 7 of the Rules of Court. On motion for reconsideration of the
decision of the Court of Appeals, petitioner raised for the first time, the issue of forum
shopping. The Court ruled against S.C. Megaworld, thus:
It is well-settled that no question will be entertained on appeal unless it has been raised
in the proceedings below. Points of law, theories, issues and arguments not brought to
the attention of the lower court, administrative agency or quasi-judicial body, need not be
considered by a reviewing court, as they cannot be raised for the first time at that late
stage. Basic considerations of fairness and due process impel this rule. Any issue raised
for the first time on appeal is barred by estoppel.
In this case, the fact that respondent filed a case before the DTI was made known to
petitioner long before the SEC rendered its decision. Yet, despite its knowledge, petitioner
failed to question the alleged forum shopping before the SEC. The exceptions to the
general rule that forum shopping should be raised in the earliest opportunity, as explained
in the cited case of Young v. Keng Seng, do not obtain in this case.
WHEREFORE, the petition is DENIED. The decision of the Court of Appeals dated March
29, 2006 is hereby AFFIRMED.

Shangri-la International Hotel Management v. Developers Group of Companies

(G.R. No. 159938)

Facts: R claims ownership SHANGRI-LA mark and S logo in the Philippines on the
strength of its prior use thereof within the country. It filed an application pursuant to
Sections 2 and 4 of RA No. 166 as amended and was issued corresponding certificate of
registration and since then, started using the mark and logo in its restaurant business.

On the other hand, the Kuok family owns and operates a chain of hotels with
interest in hotels and hotel-related transactions and has adopted the name ShangriLa as part of the corporate names of all companies organized under its aegis. To
centralize the operations of all Shangri-la hotels and the ownership of the Shangri-La
mark and S logo, the Kuok Group had incorporated several companies that form
part of the SLIHM and has caused the registration of, and in fact registered, the ShangriLa mark and S logo in the patent offices in different countries around the world.
P filed an Inter Partes Case, praying for the cancellation of the registration of the mark
and logo issued to R on the ground that the same were illegally and fraudulently obtained
and appropriated.
R filed a complaint for TMI & Damages alleging that it has, for the last 8 years, been the
prior exclusive user in the Philippines of the mark and logo in question and the registered
owner thereof for its restaurant and allied services.
P pointed the Paris Convention for the Protection of Industrial Property as affording
security and protection to SLIHMs exclusive right to said mark and logo claiming having
used, since late 1975, the internationally known and specially-designed Shangri-La
mark and S logo for all the hotels in their hotel chain.
The trial court came out with its decision rendering judgment in favor for R. P appealed
to the CA which affirmed that of the lower courts decision and further denied their MR.

Issue: Whether or not prior use of a mark is a requirement for registration.

Ruling: Under the provisions of the former trademark law, R.A. No. 166, as amended,
which was in effect up to December 31, 1997, hence, the law in force at the time of
respondents application for registration of trademark, the root of ownership of a
trademark is actual use in commerce. Section 2 of said law requires that before a
trademark can be registered, it must have been actually used in commerce and service
for not less than two months in the Philippines prior to the filing of an application for its
registration.
While the present law on trademarks has dispensed with the requirement of prior actual
use at the time of registration, the law in force at the time of registration must be applied,
and thereunder it was held that as a condition precedent to registration of trademark,

trade name or service mark, the same must have been in actual use in the Philippines
before the filing of the application for registration.
Here, respondents own witness, Ramon Syhunliong, testified that a jeepney signboard
artist allegedly commissioned to create the mark and logo submitted his designs only in
December 1982. This was two-and-a-half months after the filing of the respondents
trademark application on October 18, 1982 with the BPTTT. It was also only in December
1982 when the respondents restaurant was opened for business. Respondent cannot
now claim before the Court that the certificate of registration itself is proof that the twomonth prior use requirement was complied with, what with the fact that its very own
witness testified otherwise in the trial court. And because at the time (October 18, 1982)
the respondent filed its application for trademark registration of the Shangri-La
mark and S logo, respondent was not using these in the Philippines commercially,
the registration is void.
Admittedly, the CA was not amiss in saying that the law requires the actual use in
commerce of the said trade name and S logo in the Philippines. Hence, consistent with
its finding that the bulk of the petitioners evidence shows that the alleged use of the
Shangri-La trade name was done abroad and not in the Philippines, it is understandable
for that court to rule in respondents. Unfortunately, however, what the CA failed to
perceive is that there is a crucial difference between the aforequoted Section 2 and
Section 2-A of R.A. No. 166. For, while Section 2 provides for what is registrable,
Section 2-A, on the other hand, sets out how ownership is acquired. These are two distinct
concepts.
Under Section 2, in order to register a trademark, one must be the owner thereof and
must have actually used the mark in commerce in the Philippines for 2 months prior to
the application for registration.Since ownership of the trademark is required for
registration, Section 2-A of the same law sets out to define how one goes about acquiring
ownership thereof. Under Section 2-A, it is clear that actual use in commerce is also the
test of ownership but the provision went further by saying that the mark must not have
been so appropriated by another. Additionally, it is significant to note that Section 2-A
does not require that the actual use of a trademark must be within the Hence,
under R.A. No. 166, as amended, one may be an owner of a mark due to actual use
thereof but not yet have the right to register such ownership here due to failure to use it
within the Philippines for two months.
While the petitioners may not have qualified under Section 2 of RA. No. 166 as a
registrant neither did respondent DGCI, since the latter also failed to fulfill the 2-month
actual use requirement. What is worse, DGCI was not even the owner of the mark. For

it to have been the owner, the mark must not have been already appropriated
(i.e.,used) by someone else. At the time of respondent DGCIs registration of the
mark, the same was already being used by the petitioners, albeit abroad, of which
DGCIs president was fully aware.
However, while the Philippines was already a signatory to the Paris Convention, the IPC
only took effect on January 1, 1988, and in the absence of a retroactivity clause, R.A. No.
166 still applies. Consequently, the petitioners cannot claim protection under the Paris
Convention. Nevertheless, with the double infirmity of lack of two-month prior use, as
well as bad faith in the respondents registration of the mark, it is evident that the
petitioners cannot be guilty of infringement. It would be a great injustice to adjudge the
petitioners guilty of infringing a mark when they are actually the originator and creator
thereof.
WHEREFORE, the instant petition is GRANTED. The assailed Decision and Resolution
of the CA and the RTC are hereby SET ASIDE. Accordingly, the complaint for is ordered
DISMISSED.

SECTION 134. Opposition. Any person who believes that he would be damaged by
the registration of a mark may, upon payment of the required fee and within thirty (30)
days after the publication referred to in Subsection 133.2, file with the Office an opposition
to the application. Such opposition shall be in writing and verified by the oppositor or by
any person on his behalf who knows the facts, and shall specify the grounds on which it
is based and include a statement of the facts relied upon. Copies of certificates of
registration of marks registered in other countries or other supporting documents
mentioned in the opposition shall be filed therewith, together with the translation in
English, if not in the English language. For good cause shown and upon payment of the
required surcharge, the time for filing an opposition may be extended by the Director of
Legal Affairs, who shall notify the applicant of such extension. The Regulations shall fix
the maximum period of time within which to file the opposition. (Sec. 8, R.A. No. 165a)

SECTION 135. Notice and Hearing. Upon the filing of an opposition, the Office shall
serve notice of the filing on the applicant, and of the date of the hearing thereof upon
the applicant and the oppositor and all other persons having any right, title or interest
in the mark covered by the application, as appear of record in the Office. (Sec. 9, R.A.
No. 165)

SECTION 153. Requirements of Petition; Notice and Hearing. Insofar as applicable,

the petition for cancellation shall be in the same form as that provided in Section 134
hereof, and notice and hearing shall be as provided in Section 135 hereof.

SECTION 155. Remedies; Infringement. Any person who shall, without the consent
of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of
a registered mark or the same container or a dominant feature thereof in
connection with the sale, offering for sale, distribution, advertising of any goods
or services including other preparatory steps necessary to carry out the sale of
any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a
dominant feature thereof and apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or in connection with the
sale, offering for sale, distribution, or advertising of goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake,
or to deceive, shall be liable in a civil action for infringement by the registrant for
the remedies hereinafter set forth: Provided, That the infringement takes place
at the moment any of the acts stated in Subsection 155.1 or this subsection are
committed regardless of whether there is actual sale of goods or services using
the infringing material. (Sec. 22, R.A. No 166a)

SECTION 168. Unfair Competition, Rights, Regulation and Remedies.

168.1. A person who has identified in the mind of the public the goods he manufactures
or deals in, his business or services from those of others, whether or not a
registered mark is employed, has a property right in the goodwill of the said
goods, business or services so identified, which will be protected in the same
manner as other property rights.

168.2. Any person who shall employ deception or any other means contrary to good
faith by which he shall pass off the goods manufactured by him or in which he
deals, or his business, or services for those of the one having established such
goodwill, or who shall commit any acts calculated to produce said result, shall
be guilty of unfair competition, and shall be subject to an action therefor.
168.3. In particular, and without in any way limiting the scope of protection against
unfair competition, the following shall be deemed guilty of unfair competition:
a. Any person, who is selling his goods and gives them the general appearance
of goods of another manufacturer or dealer, either as to the goods
themselves or in the wrapping of the packages in which they are contained,
or the devices or words thereon, or in any other feature of their appearance,
which would be likely to influence purchasers to believe that the goods
offered are those of a manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise clothes the goods with such
appearance as shall deceive the public and defraud another of his legitimate
trade, or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose;
b. Any person who by any artifice, or device, or who employs any other means
calculated to induce the false belief that such person is offering the services
of another who has identified such services in the mind of the public; or
c. Any person who shall make any false statement in the course of trade or
who shall commit any other act contrary to good faith of a nature calculated
to discredit the goods, business or services of another.
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis
mutandis. (Sec. 29, R.A. No. 166a)