Societe Des Produits Nestle, S.A.

vs Court of Appeals
Facts:
In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and Technology
Transfers an application for the registration of its trademark Flavor Master an instant coffee.
Nestle opposed the application as it alleged that Flavor Master is confusingly similar to Nestle
coffee products like Master Blend and Master Roast. Nestle alleged that in promoting their
products, the word Master has been used so frequently so much so that when one hears the
word Master it connotes to a Nestle product. They provided as examples the fact that theyve
been using Robert Jaworski and Ric Puno Jr. as their commercial advertisers; and that in those
commercials Jaworski is a master of basketball and that Puno is a master of talk shows; that the
brand of coffee equitable or fit to them is Master Blend and Master Roast. CFC Corporation on
the other hand alleged that the word Master is a generic and a descriptive term, hence not
subject to trademark. The Director of Patents ruled in favor of Nestle but the Court of Appeals,
using the Holistic Test, reversed the said decision.
ISSUE: Whether or not the Court of Appeals is correct.
HELD:
No. The proper test that should have been used is the Dominancy Test. The application of the
totality or holistic test is improper since the ordinary purchaser would not be inclined to notice
the specific features, similarities or dissimilarities, considering that the product is an inexpensive
and common household item. The use of the word Master by Nestle in its products and
commercials has made Nestle acquire a connotation that if its a Master product it is a Nestle
product. As such, the use by CFC of the term MASTER in the trademark for its coffee product
FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary
purchasers. In addition, the word MASTER is neither a generic nor a descriptive term. As
such, said term can not be invalidated as a trademark and, therefore, may be legally protected.
Generic terms are those which constitute the common descriptive name of an article or
substance, or comprise the genus of which the particular product is a species, or are
commonly used as the name or description of a kind of goods, or imply reference to every
member of a genus and the exclusion of individuating characters, or refer to the basic nature
of the wares or services provided rather than to the more idiosyncratic characteristics of a
particular product, and are not legally protectable.

On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in
its normal and natural sense, it forthwith conveys the characteristics, functions, qualities or
ingredients of a product to one who has never seen it and does not know what it is, or if it
forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the
goods, or if it clearly denotes what goods or services are provided in such a way that the
consumer does not have to exercise powers of perception or imagination.
Rather, the term MASTER is a suggestive term brought about by the advertising scheme of
Nestle. Suggestive terms are those which, in the phraseology of one court, require imagination,
thought and perception to reach a conclusion as to the nature of the goods. Such terms, which
subtly connote something about the product, are eligible for protection in the absence of
secondary meaning. While suggestive marks are capable of shedding some light upon certain
characteristics of the goods or services in dispute, they nevertheless involve an element of
incongruity, figurativeness, or imaginative effort on the part of the observer.

EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT OF APPEALS,

BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and H.D. LEE
COMPANY, INC.
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 thePhilippines 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:
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.

BRISTOL

MYERS

COMPANY, petitioner,

vs.
THE

DIRECTOR

OF

PATENTS

and

UNITED

AMERICAN

PHARMACEUTICALS,

INC., respondents.
FACTS:
A petition for registration in the Principal Register of the Patent Office of the trademark
"BIOFERIN" was filed on October 21, 1957 by United American Pharmaceuticals, Inc. Said
domestic corporation first used the afore-stated trademark in the Philippines on August 13,
1957. It covers "a medicinal preparation of antihistamic, analgesic, antipyritic with vitamin C and
Bioflavenoid used in the treatment of common colds, influenza and other febrile diseases with

capillary hemmorrhagic tendencies." The product falls under Class 6 of the official classification,
that is, "Medicines and Pharmaceutical Preparations".
Bristol Myers Co., a corporation of the State of Delaware, U.S.A., filed on January 6, 1959 an
opposition to the application. Said oppositor is the owner in the Philippines of the trademark
"BUFFERIN" under Certificate of Registration No. 4578 issued by the Philippine Patent Office
on March 3, 1954. Its trademark is also registered in the United States under Certificate of
Registration No. 566190 issued on November 4, 1952. It was first used in the Philippines on
May 13, 1953. The product covered by "BUFFERIN" also belongs to Class 6, Medicines and
Pharmaceutical Preparations. Designated as "Antacid analgesic", it is intended for relief in
cases of "simple headaches, neuralgia, colds, menstrual pain and minor muscular aches."
The Director of Patents rendered a decision granting the petition for registration and dismissing
the opposition, on the ground that, all factors considered the trademarks in question are not
confusingly similar, so that the damage feared by the oppositor will not result.
ISSUE:
WoN the trademarks "BIOFERIN" and "BUFFERIN", as presented to the public in their
respective labels, confusingly similar?
HELD:
No, "BIOFERIN" and "BUFFERIN", as presented to the public in their respective labels, are not
confusingly similar.
In determining whether two trademarks are confusingly similar, the test is not simply to take
their words and compare the spelling and pronunciation of said words. Rather, it is to consider
the two marks in their entirety, as they appear in the respective labels, in relation to the goods to
which they are attached.
Applying this test to the trademarks involved in this case, it is at once evident that the Director of
Patents did not err in finding no confusing similarity. For though the words "BIOFERIN" and
"BUFFERIN" have the same suffix and similar sounding prefixes, they appear in their respective
labels with strikingly different backgrounds and surroundings, as to color , size and design.

Accordingly, taken as they will appear to a prospective customer, the trademark in question are
not apt to confuse. Furthermore, the product of the applicant is expressly stated as dispensable
only upon doctor's prescription, while that of oppositor does not require the same. The chances
of being confused into purchasing one for the other are therefore all the more rendered
negligible. Although oppositor avers that some drugstores sell "BIOFERIN" without asking for a
doctor's prescription, the same if true would be an irregularity not attributable to the applicant,
who has already clearly stated the requirement of a doctor's prescription upon the face of the
label of its product.
Wherefore, the decision of the Director of Patents appealed from is hereby affirmed without
costs. So ordered.
Victorio P. Diaz vs People of the Philippines and Levi Strauss [Phils.], Inc.
G.R. No. 180677 February 18, 2003
Facts:
Levi Strauss Philippines, Inc. (Levis Philippines) is a licensee of Levis. After receiving
information that Diaz was selling counterfeit LEVIS 501 jeans in his tailoring shops in Almanza
and Talon, Las Pias City, Levis Philippines hired a private investigation group to verify the
information. Surveillance and the purchase of jeans from the tailoring shops of Diaz established
that the jeans bought from the tailoring shops of Diaz were counterfeit or imitations of LEVIS
501. Armed with search warrants, NBI agents searched the tailoring shops of Diaz and seized
several fake LEVIS 501 jeans from them. Levis Philippines claimed that it did not authorize the
making and selling of the seized jeans; that each of the jeans were mere imitations of genuine
LEVIS 501 jeans by each of them bearing the registered trademarks, like the arcuate design,
the tab, and the leather patch; and that the seized jeans could be mistaken for original LEVIS
501 jeans due to the placement of the arcuate, tab, and two-horse leather patch. On his part,
Diaz admitted being the owner of the shops searched, but he denied any criminal liability. Diaz
stated that he did not manufacture Levis jeans, and that he used the label LS Jeans Tailoring
in the jeans that he made and sold; that the label LS Jeans Tailoring was registered with the
Intellectual Property Office; that his shops received clothes for sewing or repair; that his shops
offered made-to-order jeans, whose styles or designs were done in accordance with instructions
of the customers; that since the time his shops began operating in 1992, he had received no

notice or warning regarding his operations; that the jeans he produced were easily recognizable
because the label LS Jeans Tailoring, and the names of the customers were placed inside the
pockets, and each of the jeans had an LSJT red tab; that LS stood for Latest Style; and that
the leather patch on his jeans had two buffaloes, not two horses.

Issue:
Whether there exists a likelihood of confusion between the trademarks of Levis and Diaz.

Held:
The Court held, through the application of the holistic test, that there was no likelihood of
confusion between the trademarks involved. Accordingly, the jeans trademarks of Levis
Philippines and Diaz must be considered as a whole in determining the likelihood of confusion
between them. The maong pants or jeans made and sold by Levis Philippines, which included
LEVIS 501, were very popular in the Philippines. The consuming public knew that the original
LEVIS 501 jeans were under a foreign brand and quite expensive. Such jeans could be
purchased only in malls or boutiques as ready-to-wear items, and were not available in tailoring
shops like those of Diazs as well as not acquired on a made-to-order basis. Under the
circumstances, the consuming public could easily discern if the jeans were original or fake
LEVIS 501, or were manufactured by other brands of jeans. Diaz used the trademark LS
JEANS TAILORING for the jeans he produced and sold in his tailoring shops. His trademark
was visually and aurally different from the trademark LEVISTRAUSS & CO appearing on the
patch of original jeans under the trademark LEVIS 501.The word LS could not be confused as
a derivative from LEVI STRAUSS by virtue of the LS being connected to the word
TAILORING, thereby openly suggesting that the jeans bearing the trademark LS JEANS
TAILORING came or were bought from the tailoring shops of Diaz, not from the malls or
boutiques selling original LEVIS 501 jeans to the consuming public.
The prosecution also alleged that the accused copied the two horse design of the petitionerprivate complainant but the evidence will show that there was no such design in the seized
jeans. Instead, what is shown is buffalo design. Again, a horse and a buffalo are two different
animals which an ordinary customer can easily distinguish. The prosecution further alleged that
the red tab was copied by the accused. However, evidence will show that the red tab used by
the private complainant indicates the word LEVIS while that of the accused indicates the
letters LSJT which means LS JEANS TAILORING. Again, even an ordinary customer can
distinguish the word LEVIS from the letters LSJT. In terms of classes of customers and

channels of trade, the jeans products of the private complainant and the accused cater to
different classes of customers and flow through the different channels of trade. The customers
of the private complainant are mall goers belonging to class A and B market group
while that of the accused are those who belong to class D and E market who can only afford
Php 300 for a pair of made-to-order pants.

In-N-Out Burger, Inc. vs. Sehwani Inc., et. al

Facts:
Petitioner IN-N-OUT BURGER, INC., is a business entity incorporated under the laws of
California. It is a signatory to the Convention of Paris on Protection of Industrial Property and
the TRIPS Agreement. It is engaged mainly in the restaurant business, but it has never engaged
in business in the Philippines.
Respondents Sehwani, Incorporated and Benita Frites, Inc. are corporations organized in the
Philippines. Sometime in 1991, Sehwani filed with the BPTTT an application for the registration
of the mark IN N OUT (the inside of the letter O formed like a star). Its application was
approved and a certificate of registration was issued in its name on 1993. In 2000, Sehwani,
Incorporated and Benita Frites, Inc. entered into a Licensing Agreement, wherein the former
entitled the latter to use its registered mark, IN N OUT.
Sometime in 1997, In-N-Out Burger filed trademark and service mark applications with the
Bureau of Trademarks for the IN-N-OUT and IN-N-OUT Burger & Arrow Design. In 2000, InN-Out Burger found out that Sehwani, Incorporated had already obtained Trademark
Registration for the mark IN N OUT (the inside of the letter O formed like a star). Also in
2000, In-N-Out Burger sent a demand letter directing Sehwani, Inc. to cease and desist from
claiming ownership of the mark IN-N-OUT and to voluntarily cancel its trademark registration.
Sehwani Inc. did not accede to In-N-Out Burgers demand but it expressed its willingness to
surrender its registration for a consideration.
In 2001 In-N-Out Burger filed before the Bureau of Legal Affairs an administrative complaint
against the Sehwani, Inc. and Benita Frites, Inc. for unfair competition and cancellation of
trademark registration.

Issues:

Whether or not the Intellectual Property Office (an administrative body) have jurisdiction
of cases involving provisions of the IPC (e.g. unfair competition).[1]

Whether or not there was unfair competition.

Held:

SECOND ISSUE: Yes. The evidence on record shows that Sehwani Inc. and Benita Frites were
not using their registered trademark but that of In-n-Out Burger. Sehwani and Benita Frites are
also giving their products the general appearance that would likely influence the purchasers to
believe that their products are that of In-N-Out Burger. The intention to deceive may be inferred
from the similarity of the goods as packed and offered for sale, and, thus, an action will lie to
restrain unfair competition. The respondents frauduulent intention to deceive purchasers is also
apparent in their use of the In-N-Out Burger in business signages.
The essential elements of an action for unfair competition are (1) confusing similarity in the
general appearance of the goods and (2) intent to deceive the public and defraud a competitor.
The confusing similarity may or may not result from similarity in the marks, but may result from
other external factors in the packaging or presentation of the goods. The intent to deceive and
defraud may be inferred from the similarity of the appearance of the goods as offered for sale to
the public. Actual fraudulent intent need not be shown.