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G.R. No.

183404 October 13, 2010 have identical color schemes (red, green, and white); and the marks are both predominantly red in color,
BERRIS AGRICULTURAL CO., INC., Petitioner vs. Norvy Abyadang, Respondent. with the same phrase BROAD SPECTRUM FUNGICIDE written underneath. Considering these striking
similarities, predominantly the D-10, the buyers of both products, mainly farmers, may be misled into
FACTS: thinking that NS D-10 PLUS could be an upgraded formulation of the D-10 80 WP.
In 2005, respondent Norvy A. Abyadang (Abyadang), proprietor of NS Northern Organic Fertilizer filed
with the Intellectual Property Office (IPO) a trademark application for the mark NS D-10 PLUS for use in Moreover, notwithstanding the finding of the IPPDG that the D-10 is a fanciful component of the
connection with Fungicide (Class 5) with active ingredient 80% Mancozeb. The application was given due trademark, created for the sole purpose of functioning as a trademark, and does not give the name,
course and was published in the IPO e-Gazette for opposition. Subsequently, petitioner Berris quality, or description of the product for which it is used, nor does it describe the place of origin, such
Agricultural Co., Inc. (Berris) filed with the IPO Bureau of Legal Affairs (IPO-BLA) a Verified Notice of that the degree of exclusiveness given to the mark is closely restricted, and considering its challenge by
Opposition against the mark under application allegedly because NS D-10 PLUS is similar and/or Abyadang with respect to the meaning he has given to it, what remains is the fact that Berris is the
confusingly similar to its registered trademark D-10 80 WP, also used for Fungicide (Class 5) with active owner of the mark D-10 80 WP, inclusive of its dominant feature D-10, as established by its prior use,
ingredient 80% Mancozeb. and prior registration with the IPO. Therefore, Berris properly opposed and the IPO correctly rejected
Abyadangs application for registration of the mark NS D-10 PLUS.
Director Estrellita Beltran-Abelardo (Director Abelardo) of the IPO-BLA issued BLA decision, wherein the
opposition was sustained due to the fact that respondent-applicants mark was confusingly similar to the E.Y. INDUSTRIAL V. SHEN DAR
opposers mark. Abyadang filed a motion for reconsideration, and Berris, in turn, filed its opposition to Facts:
the motion. Director Abelardo issued BLA resolution denying the motion for reconsideration. Aggrieved, EY Industrial Sales is a domestic corporation engaged in the production, distribution and sale of air
Abyadang filed an appeal with the Office of the Director General, Intellectual Property Philippines compressors.
(IPPDG). Director General Adrian S. Cristobal, Jr. of the IPPDG rendered a decision denying the appeal Shen Dar is a Taiwan-based foreign corporation engaged in the manufacture of compressors.
and affirming the appealed Decision of the Director. Undeterred, Abyadang filed a petition for review From 1997-2004, EY Industrial imported air compressors from Shen Dar.
before the CA. In its Decision, the CA reversed the IPPDG decision. In 1997, Shen Dar filed a Trademark Application with the Intellectual Property Office (IPO) for the mark
Vespa for the use of air compressors. It was approved in 2007.
ISSUE: In 1999, EY Industrial filed a Trademark Application also for the mark VESPA for the use of air
Whether or not Abyadangs mark NS D-10 PLUS confusingly similar to that of Berris D-10 80 WP such compressors. It was approved in 2004.
that the latter can rightfully prevent the IPO registration of the former Shen Dar filed a Petition for Cancellation of the Industrials EYES COR with the Bureau of Legal Affairs
contending that: a. there was a violation of Section 123.1 (D) of the Intellectual Property Code which
HELD: YES provides that: A mark cannot be registered if it is identical to a mark with an earlier filing or priority date.
According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered if it is identical with a b. EY Industrial is only a distributor of the air compressors
registered mark belonging to a different proprietor with an earlier filing or priority date, with respect to: On the other hand, EY Industrial alleged that it is the sole assembler and fabricator of VESPA air
(1) the same goods or services; (2) closely related goods or services; or (3) near resemblance of such compressors since the early 1990s and that Shen Dar supplied them air compressors with the mark SD
mark as to likely deceive or cause confusion. and not VESPA
Issues:
In determining similarity and likelihood of confusion, jurisprudence has developed teststhe Dominancy 1. Who between EY Industrial and Shen Dar is entitled to the trademark VESPA. EY INDUSTRIAL
Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the prevalent or SALES
dominant features of the competing trademarks that might cause confusion, mistake, and deception in 2. WON the Bureau of Legal Affairs has the power to cancel the application of Shen Dar even if it is
the mind of the purchasing public. In contrast, the Holistic or Totality Test necessitates a consideration of Shen Dar who filed the case? YES
the entirety of the marks as applied to the products, including the labels and packaging, in determining Held:
confusing similarity. 1st: EY INDUSTRIAL has the right to the trademark.
Based on the evidence, EYIS owns the VESPA trademark; it has prior use, as shown by various sales
Comparing Berris mark D-10 80 WP with Abyadangs mark NS D-10 PLUS, as appearing on their invoices.
respective packages, one cannot but notice that both have a common component which is D-10. On Ownership of a mark or trade name may be acquired not necessarily by registration but by adoption and
Berris package, the D-10 is written with a bigger font than the 80 WP. Admittedly, the D-10 is the use in trade or commerce. As between actual use of a mark without registration, and registration of the
dominant feature of the mark. The D-10, being at the beginning of the mark, is what is most mark without actual use thereof, the former prevails over the latter.
remembered of it. Although, it appears in Berris certificate of registration in the same font size as the For a rule widely accepted and firmly entrenched, because it has come down through the years, is that
80 WP, its dominancy in the D-10 80 WP mark stands since the difference in the form does not alter actual use in commerce or business is a pre-requisite to the acquisition of the right of ownership. It is
its distinctive character. non sequitur to hold that porque EYIS is a distributor, it is no longer the owner.

Applying the Dominancy Test, it cannot be gainsaid that Abyadangs NS D-10 PLUS is similar to Berris FIRST-TO-FILE RULE
D-10 80 WP, that confusion or mistake is more likely to occur. Undeniably, both marks pertain to the Under Section 123.1 of IPO provision, the registration of a mark is prevented with the filing of an earlier
same type of goods fungicide with 80% Mancozeb as an active ingredient and used for the same group application for registration.
of fruits, crops, vegetables, and ornamental plants, using the same dosage and manner of This must not, however, be interpreted to mean that ownership should be based upon an earlier filing
application. They also belong to the same classification of goods under R.A. No. 8293. Both depictions of date. While RA 8293 (IPC) removed the previous requirement of proof of actual use prior to the filing of
D-10, as found in both marks, are similar in size, such that this portion is what catches the eye of the an application for registration of a mark, proof of prior and continuous use is necessary to establish
purchaser. The likelihood of confusion and mistake is made more manifest when the Holistic Test is ownership of a mark. Such ownership constitutes sufficient evidence to oppose the registration of a
applied, taking into consideration the packaging, for both use the same type of material (foil type) and mark.
When we talk about trademark, we are just talking about the mark. It does not include the product. Shen trademark must be within the Philippines. Thus, as correctly mentioned by the CA, under R.A. No. 166,
Dar is the manufacturer of the product, but they did not name the product as VESPA. It was EY that one may be an owner of a mark due to its actual use but may not yet have the right to register such
named the VESPA, and used the VESPA, even though they were only the distributors. It was EY that ownership here due to the owners failure to use the same in the Philippines for 2 months prior to
registration. In the instant case, it is undisputed that Cointreau has been using the subject mark in
actually used the trademark through the use of receipts, and other documents.
The first to file rule According to the SC that Shen Dar filed under the old IPC where prior use is the one France, prior to Ecoles averred first use of the same in the Philippines, of which the latter was fully
aware thereof. On the other hand, Ecole has no certificate of registration over the subject mark but only
applied. a pending application. Under the foregoing circumstances, even if Ecole was the first to use the mark in
the Philippines, it cannot be said to have validly appropriated the same.
2nd: BLA has the power to cancel the application.
Shen Dar challenges the propriety of such cancellation on the ground that there was no petition for In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the Intellectual
cancellation as required under Sec. 151 of RA 8293. Property Code of the Philippines, as amended, has already dispensed with the requirement of prior
actual use at the time of registration. Thus, there is more reason to allow the registration of the subject
The IPO Director General stated that, despite the fact that the instant case was for the cancellation of mark under the name of Cointreau as its true and lawful owner.
the COR issued in favor of EYIS, the interests of justice dictate, and in view of its findings, that the COR of
Shen Dar must be cancelled. Birkenstock vs. Philippine Stock Expo Marketing Corporation 15 SCRA 469
FACTS:
The above rule reflects the oft-repeated legal principle that quasi-judicial and administrative bodies are Petitioner, a corporation duly organized and existing under the laws of Germany applied for various
not bound by technical rules of procedure. Such principle, however, is tempered by fundamental trademark registrations before the Intellectual Property Office (IPO). However, the applications were
evidentiary rules, including due process. suspended in view of the existing registration of the mark BIRKENSTOCK AND DEVICE under
Registration No. 56334 dated October 21, 1993 in the name of Shoe Town International and Industrial
The fact that no petition for cancellation was filed against the COR issued to Shen Dar does not preclude Corporation, the predecessor-in-interest of respondent Philippine Shoe Expo Marketing Corporation.
the cancellation of Shen Dars COR. It must be emphasized that, during the hearing for the cancellation
of EYIS COR before the BLA, Shen Dar tried to establish that it, not EYIS, was the true owner of the mark On May 27, 1997, petitioner filed a petition (Cancellation Case) for cancellation of Registration No.
VESPA and, thus, entitled to have it registered. Shen Dar had more than sufficient opportunity to 564334 on the ground that it is the lawful and rightful owner of the Birkenstock marks. During its
present its evidence and argue its case, and it did. It was given its day in court and its right to due pendency, however, respondent and/or it predecessor-in-interest failed to file the required 10th Year
process was respected. The IPO Director Generals disregard of the procedure for the cancellation of a Declaration of Actual Use (10th Year DAU) for Registration No. 56334 on or before October 21, 2004,
registered mark was a valid exercise of his discretion. thereby resulting the cancellation of such mark. Accordingly, the cancellation case was dismissed for
being moot and academic thereby paving the way for the publication of the subject applications.
Remember, EYs application was the one granted, and it is Shen Dars application that was cancelled. It
does not mean that even you were the one who filed, it your application cannot be cancelled. The BLA, In response, respondent filed with the Bureau of Legal Affairs (BLA) of the IPO three separate verified
who has jurisdiction over the case, were able to determine that it is Shen Dars trademark that should notices of opposition to the subject applications docketed as Inter Partes Cases claiming, among others,
not have been issued with registration, even it is the plaintiff. it, together with its predecessor-in-interest, has been using the Birkenstock marks in the Philippines for
more than 16 years through the mark BIRKENSTOCK AND DEVICE. In its Decision, the BLA of the IPO
ECOLE DE CUISINE MANILLE V. COINTREAU (G.R. NO. 185830) sustained respondents opposition, thus ordering the rejection of the subject applications. Aggrieved,
petitioner appealed to the IPO Director General whereby in its decision, the latter reversed and set aside
Facts: the ruling of the BLA thus allowing the registration of the subject applications.
Respondent Cointreau, a partnership registered under the laws of France, applied for the registration of
the mark Le Cordon Bleu & Device. Petitioner Ecole De Cuisine opposed on the ground that it is the Finding the IPO Director Generals reversal of the BLA unacceptable, respondent filed a petition for
owner of the mark Le Cordon Bleu, Ecole De Cuisine Manille used in its culinary activities and restaurant review with the Court of Appeals. In its decision dated June 25, 2010, the CA reversed and set aside the
business and that the registration will create confusion to the public. Respondent Cointreau answered ruling of the IPO Director General and reinstated that of the BLA. The petitioner filed a Motion for
claiming it is the true and lawful owner of the mark and had long been using it worldwide. The IPO Reconsideration but was denied by the CA. Hence , this petition to the Supreme Court.
Bureau of Legal Affairs sustained petitioners opposition stating that Cointreau had no prior use of the
mark in the Philippines to be entitled to a proprietary right over it. The IPO Director General reversed the ISSUE:
decision and allowed the marks registration holding that under RA No. 166, actual use in the Philippines Whether or not the petitioners documentary evidence, although photocopies, are admissible in court?
is not necessary to acquire ownership of the mark. Whether or not the subject marks should be allowed registration in the name of the petitioner?

Issue: Whether or not respondents prior use of the mark is a requirement for its registration. HELD:
1. The court ruled yes. It is a well-settled principle that the rules of procedure are mere tools aimed at
Ruling: YES. Under Section 2 of R.A. No. 166, in order to register a trademark, one must be the owner facilitating the attainment of justice, rather than its frustration. A strict and rigid application of the rules
thereof and must have actually used the mark in commerce in the Philippines for 2 months prior to the must always be eschewed when it would subvert the primary objective of the rules, that is, to enhance
application for registration. Section 2-A of the same law sets out to define how one goes about acquiring fair trials and expedite justice. In the light of this, Section 5 of the Rules on Inter Partes Proceedings
ownership thereof. Under Section 2-A, it is clear that actual use in commerce is also the test of provides that, The Bureau shall not be bound by strict technical rules of procedure and evidence but
ownership but the provision went further by saying that the mark must not have been so appropriated may adopt, in the absence of any applicable rule herein, such mode of proceedings which is consistent
by another. Additionally, it is significant to note that Section 2-A does not require that the actual use of a with the requirements of fair play and conducive to the just, speedy and inexpensive disposition of cases,
and which will the Bureau the greatest possibility to focus on the contentious issues before it.
In the case at bar, it should be noted that the IPO had already obtained the originals of such Petitioner brought the case before the Supreme Court, seeking the reversal of the decision and
documentary evidence in the related Cancellation Case earlier before it. Under the circumstance and the resolution of the CA.
merits of the instant case as will be subsequently discussed, the Court holds that the IPO Director
Generals relaxation of procedure was a valid exercise of his discretion in the interest of substantial Issue:
justice. Whether or not by using the dominant feature of Nutri-Asias PAPA mark for PAPA BOY & DEVICE
would constitute trademark infringement.
The court ruled in favour of the petitioner. Under Section 12 of Republic Act 166, it provides that, Each
certificate of registration shall remain in force for twenty years: Provided, that the registration under the Held:
provisions of this Act shall be cancelled by the Director, unless within one year following the fifth, tenth Petition has merit.
and fifteenth anniversaries of the date of issue of the certificate of registration, the registrant shall file in
the Patent Office an affidavit showing that the mark or trade-name is still in use or showing that its non- In Dermaline, Inc. v. Myra Pharmaceuticals, Inc., 43 we defined a trademark as "any distinctive word,
use is due to special circumstance which excuse such non-use and is not due to any intention to abandon name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a
the same, and pay the required fee. 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."
In the case at bar, respondent admitted that it failed to file the 10th Year DAU for Registration No. 56334
within the requisite period, or on or before October 21, 2004. As a consequence, it was deemed to have The Intellectual Property Code provides:
abandoned or withdrawn any right or interest over the mark BIRKENSTOCK. It must be emphasized Section 147. Rights Conferred. - 147.1. The owner of a registered
that registration of a trademark, by itself, is not a mode of acquiring ownership. If the applicant is not the mark shall have the exclusive right to prevent all third parties not having
owner of the trademark, he has no right to apply for its registration. Registration merely creates a prima the owner's consent from using in the course of trade identical or similar
facie presumption of the validity of the registration. Such presumption, just like the presumptive signs or containers for goods or services which are identical or similar to
regularity in the performance of official functions, is rebuttable and must give way to evidence to the those in respect of which the trademark is registered where such use would
contrary. Besides, petitioner has duly established its true and lawful ownership of the mark result in a likelihood of confusion. In case of the use of an identical sign
BIRKENSTOCK. It submitted evidence relating to the origin and history of BIRKENSTOCK and it use in for identical goods or services, a likelihood of confusion shall be
commerce long before respondent was able to register the same here in the Philippines. Petitioner also presumed.
submitted various certificates of registration of the mark BIRKENSTOCK in various countries and that it
has used such mark in different countries worldwide, including the Philippines. To determine the likelihood of confusion, the Rules of Procedure for Intellectual Property Rights Cases,
Rule 18, provides:
UFC PHILIPPINES v BARRIO FIESTA RULE 18
GR No. 198889 Evidence in Trademark Infringement and Unfair Competition Cases
SECTION 1. Certificate of Registration. - A certificate of
Facts: registration of a mark shall be prima facie evidence of:
Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized and existing under Philippine laws. a) the validity of the registration;
It is the emergent entity in a merger with UFC Philippines Inc. that was completed on Feb. 11, 2009. b) the registrant's ownership of the mark; and
On April 4, 2002, respondent Barrio Fiesta Manufacturing Coroporation filed ofr the mark PAPA BOY & c) the registrant's exclusive right to use the same in connection
DEVICE for goods under Class 30, specifically for lechon sauce. The Intellectual Property Office (IPO) with the goods or services and those that are related thereto
published said application for opposition in the IP Phil e-Gazette on Sept. 8 2006. specified in the certificate.
Petitioner Nutri-asia filed with the IPO Bureau of Legal Affairs a Verified Notice of Opposition to the
application alleging that the mark PAPA is for use on banana catsup and other similar goods first used SECTION 3. Presumption of Likelihood of Confusion. -
in 1954 by Neri Papa. Likelihood of confusion shall be presumed in case an identical sign or
After using PAPA for 27 years, Neri Papa subsequently assigned the mark to Herman Reyes who filed mark is used for identical goods or services.
an application to register the said PAPA mark for use on banana catsup, chili sauce, achara, banana
chips and instate ube powder. SECTION 4. Likelihood of Confusion in Other Cases. - In
On November 7, 2006 the registration was assigned to Nutri-Asia. The company has not abandoned the determining whether one trademark is confusingly similar to or is a
use of the mark PAPA and the variations (such as PAPA BANANA CATSUP label and PAPA colorable imitation of another, the court must consider the general
KETSARAP.) thereof as it continued the use of the mark up to the present. Petitioner further allege that impression of the ordinary purchaser, buying under the normally prevalent
PAPA BOY & DEVICE is identical to the mark PAPA owned by Nutri-Asia and duly registered in its conditions in trade and giving the attention such purchasers usually give in
favor. The petitioner contends that the use of PAPA by the respondent-applicant would likely result in buying that class of goods. Visual, aural, connotative comparisons and
confusion and deception. The consuming public, particularly the unwary customers, will be deceived, overall impressions engendered by the marks in controversy as they are
confused, and mistaken into believing that respondent-applicant's goods come from Nutri-Asia, which is encountered in the realities of the marketplace must be taken into account.
particularly true since Southeast Asia Food Inc, sister company of Nutri-Asia, have been major Where there are both similarities and differences in the marks, these must
manufacturers and distributors of lechon sauce since 1965 under the registered mark Mang Tomas. be weighed against one another to see which predominates.
The IPO-BLA rejected Barrio Fiestas application for PAPA BOY & DEVICE. Respondent appealed before
the IPO Director General, but the appeal was denied. The CA, however, reversed the decision of the IPO- In determining likelihood of confusion between marks used on
BLA and ruled to grant the application. non-identical goods or services, several factors may be taken into account,
such as, but not limited to:
a) the strength of plaintiffs mark; realities of the marketplace. The totality or holistic test only
b) the degree of similarity between the plaintiffs and the defendant's relies on visual comparison between two trademarks
marks; whereas the dominancy test relies not only on the visual but
c) the proximity of the products or services; also on the aural and connotative comparisons and overall
d) the likelihood that the plaintiff will bridge the gap; impressions between the two trademarks.
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark; There are two types of confusion in trademark infringement: confusion of goods and confusion of
g) the quality of defendant's product or service; and/or business. In Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, the Court
h) the sophistication of the buyers. distinguished the two types of confusion:

"Colorable imitation" denotes such a close or ingenious imitation Callman notes two types of confusion. The first is the
as to be calculated to deceive ordinary persons, or such a resemblance to confusion of goods "in which event the ordinarily prudent
the original as to deceive an ordinary purchaser giving such attention as a purchaser would be induced to purchase one product in the
purchaser usually gives, as to cause him to purchase the one supposing it belief that he was purchasing the other." In which case,
to be the other. "defendant's goods are then bought as the plaintiff's, and
the poorer quality of the former reflects adversely on the
SECTION 5. Determination of Similar and Dissimilar Goods or plaintiff's reputation." The other is the confusion of
Services. - Goods or services may not be considered as being similar or business: "Here though the goods of the parties are
dissimilar to each other on the ground that, in any registration or different, the defendant's product is such as might
publication by the Office, they appear in different classes of the Nice reasonably be assumed to originate with the plaintiff, and
Classification. the public would then be deceived either into that belief or
into the belief that there is some connection between the
On the other hand, R.A. No. 166 defines a "trademark" as any distinctive word, name, symbol, emblem, plaintiff and defendant which, in fact, does not exist."
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 another. A trademark, In relation to this, the court has held that the registered trademark owner may use his mark on the same
being a special property, is afforded protection by law. But for one to enjoy this legal protection, legal or similar products, in different segments of the market, and at different price levels depending on
protection ownership of the trademark should right be established. 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
The ownership of a trademark is acquired by its registration and its actual use by the manufacturer or expansion of his business. The scope of protection thus extends to protection from infringers with
distributor of the goods made available to the purchasing public. The prima facie presumption brought related goods.
by the registration of a mark may be challenge in an appropriate action. Moreover the protection may
likewise be defeated by evidence of prior use by another person. This is because the trademark is a It cannot be denied that since petitioners product, catsup, and respondents product, lechon sauce, are
creation of use and belongs to one who first used it in trade or commerce. both household products in similar packaging the public could think that petitioner Nutri-Asia has
expanded its product mix to include lechon sauce, which is not unlikely considering the nature of
The essential element of infringement under the law is that the infringing mark is likely to cause petitioners business.
confusion. There are two tests used to determine likelihood of confusion: the dominancy test and the
holistic test. The dominancy test applies to this case. Moreover, the CA erred in finding that PAPA is a common term of endearment for father and
therefore could not be claimed for exclusive use and ownership. What was registered was not Papa as
The Dominancy Test denied in dictionary, but Papa as the last name of the owner of the brand, making it a registrable mark.
focuses on the similarity of the prevalent or dominant features of the
competing trademarks that might cause confusion, mistake, and deception Petition granted.
in the mind of the purchasing public. Duplication or imitation is not
necessary; neither is it required that the mark sought to be registered
suggests an effort to imitate. Given more consideration are the aural and
visual impressions created by the marks on the buyers of goods, giving
little weight to factors like prices, quality, sales outlets, and market
segments.
xx xx

The Totality Test


The totality or holistic test is contrary to the elementary postulate of the law on trademarks and
unfair competition that confusing similarity is to be
determined on the basis of visual, aural, connotative
comparisons and overall impressions engendered by the
marks in controversy as they are encountered in the

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