ARCE SONS AND COMPANY vs. SELECTA BISCUIT COMPANY,INC., ET AL.

FACTS:

On August 31, 1955, Selecta Biscuit Company, Inc., filed with the Philippine Patent
Office a petition for the registration of the word "SELECTA" as trade-mark to be use in its bakery
products alleging that it is in actual use thereof for not less than two months before said date
and that "no other persons, partnership, corporation or association ... has the right to use said
trade-mark in the Philippines, either in the identical form or in any such near resemblance
thereto, as might be calculated to deceive." Its petition was referred to an examiner for study
who found that the trade-mark sought to be registered resembles the word "SELECTA" used by
the Acre and Sons and Company in its milk and ice cream products so that its use by
respondent will cause confusion as to the origin of their respective goods. Consequently, he
recommended that the application be refused.

The Patent Office ordered the publication of the application for purposes of opposition.
The Arce Sons and Company then filed their opposition claiming that the mark Selecta has
already become identified with the name of Ramon Arce and its business. Moreover, that the
mark was used continuously since 1933 while the respondent herein only used it during 1955.

ISSUE:

Is the word Selecta registrable?

HELD:

A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of a

particular producer or manufacturer may be distinguished from that of others, and its sole
function is to designate distinctively the origin of the products to which it is attached."

The word 'SELECTA', it is true, may be an ordinary or common word in the sense that
may be used or employed by any one in promoting his business or enterprise, but once adopted
or coined in connection with one's business as an emblem, signor device to characterize its
products, or as a badge of authenticity, it may acquire a secondary meaning as to be exclusively
associated with its products and business. In this sense, its used by another may lead to
confusion in trade and cause damage to its business. And this is the situation of petitioner when
it used the word 'SELECTA' as a trade-mark. In this sense, the law gives its protection and
guarantees its used to the exclusion of all others a (G. & C. Merriam Co. v. Saalfield, 198 F.
369, 373). And it is also in the sense that the law postulates that "The ownership or possession
of a trade-mark, . . . shall be recognized and protected in the same manner and to the same
extent, as are other property rights known to the law," thereby giving to any person entitled to
the exclusive use of such trade-mark the right to recover damages in a civil action from any
person who may have sold goods of similar kind bearing such trademark.
SOCIETE DES PRODUITS NESTLE V. CA (G.R. NO. 112012)

Facts:
Respondent CFC Corporation filed an application for the registration of the trademark FLAVOR
MASTER for instant coffee. Petitioners, a Swiss company and a domestic corporation licensee
of Societe, opposed on the ground that it is confusingly similar to its trademark for coffee and
coffee extracts: MASTER ROAST and MASTER BLEND. Petitioners contend that the dominant
word MASTER is present in the 3 trademarks. Respondent CFC argued that the word MASTER
cannot be exclusively appropriated being a descriptive or generic term. BPTTT denied CFCs
application. CA held otherwise.

Issue: Whether or not the word MASTER is descriptive or generic term incapable of exclusive
appropriation.

Ruling: NO.
The word MASTER is neither a generic nor a descriptive term. As such, said term cannot 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. The term
MASTER, therefore, has acquired a certain connotation to mean the coffee products MASTER
ROAST and MASTER BLEND produced by Nestle. 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.

AMIGO MANUFACTURING, Inc., petitioner, vs. CLUETT PEABODY CO., INC., respondent.
PANGANIBAN, J.:

Facts: Respondent Cluett Peabody Co., Inc. (a New York corporation) filed a petition
against Petitioner Amigo Manufacturing Inc. (a Philippine corporation) for cancellation of
trademark.
 Respondent claim exclusive ownership of the following trademark and devices, as used
on men's socks: a) GOLD TOE; b) DEVICE, representation of a sock and magnifying glass on
the toe of a sock; c) DEVICE, consisting of a plurality of gold colored lines arranged in parallel
relation within a triangular area of toe of the stocking and spread from each other by lines of
contrasting color of the major part of the stocking; and d) LINENIZED.

On the other hand, [petitioner's] trademark and device 'GOLD TOP, Linenized for Extra
Wear' has the dominant color 'white' at the center and a 'blackish brown' background with a
magnified design of the sock's garter, and is labeled 'Amigo Manufacturing Inc., Mandaluyong,
Metro Manila, Made in the Philippines'.

The Bureau of Patents decided adversely against Amigo Manufacturing, Inc. The
decision pivots on two point: the application of the rule of idem sonans and the existence of a
confusing similarity in appearance between two trademarks.

It found that the two trademarks are confusingly and deceptively similar to each other
are binding upon the courts, absent any sufficient evidence to the contrary. The Bureau
considered the totality of the similarities between the two sets of marks and found that they were
of such degree, number and quality as to give the overall impression that the two products are
confusingly if not deceptively the same.

The CA found that there is hardly any variance in the appearance of the marks 'GOLD
TOP' and 'GOLD TOE' since both show a representation of a man's foot wearing a sock, and
the marks are printed in identical lettering. [Petitioner]'s mark is a combination of the different
registered marks owned by [respondent].

Issues:
(1) Was petitioner's trademark used in commerce in the Philippines earlier than
respondent's actual use of its trademarks?
(2) Is petitioner's trademark confusingly similar to respondent's trademarks?
(3) Is the Paris Convention applicable?

Held:

1st Issue: Dates of First Use of Trademark and Devices

(1)No. Respondent had actually used the trademark and the devices in question prior to
petitioner's use of its own. During the hearing at the Bureau of Patents, respondent presented
Bureau registrations indicating the dates of first use in the Philippines of the trademark and the
devices as follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the Representation of a
Sock and a Magnifying Glass; c) January 30, 1932, the Gold Toe Representation; and d)
February 28, 1952, "Linenized."

The registration of the above marks in favor of respondent constitutes prima facie
evidence, which petitioner failed to overturn satisfactorily, of respondent's ownership of those
marks, the dates of appropriation and the validity of other pertinent facts stated therein.

Moreover, the validity of the Certificates of Registration was not questioned. Neither did
petitioner present any evidence to indicate that they were fraudulently issued. Consequently, the
claimed dates of respondent's first use of the marks are presumed valid. Clearly, they were
ahead of petitioner's claimed date of first use of "Gold Top and Device" in 1958.
 Furthermore, petitioner registered its trademark only with the supplemental register.
In La Chemise Lacoste v. Fernandez, the Court held that registration with the supplemental
register gives no presumption of ownership of the trademark.

2nd Issue: Similarity of Trademarks

(2) Yes. Petitioner points out that the director of patents erred in its application of the
idem sonans rule, claiming that the two trademarks "Gold Toe" and "Gold Top" do not sound
alike and are pronounced differently. It avers that since the words gold and toe are generic,
respondent has no right to their exclusive use.
The arguments of petitioner are incorrect. True, it would not be guilty of infringement on
the basis alone of the similarity in the sound of petitioner's "Gold Top" with that of respondent's
"Gold Toe." Admittedly, the pronunciations of the two do not, by themselves, create confusion.
The Bureau of Patents, however, did not rely on the idem sonans test alone in arriving at
its conclusion. This fact is shown in the following portion of its Decision:
"As shown by the drawings and labels on file, the mark registered by Respondent
is a combination of the abovementioned trademarks registered separately by the
petitioner in the Philippines and the United States.
"With respect to the issue of confusing similarity between the marks of the
petitioner and that of the respondent-registrant applying the tests of idem sonans, the
mark 'GOLD TOP & DEVICE' is confusingly similar with the mark 'GOLD TOE'. The
difference in sound occurs only in the final letter at the end of the marks. For the same
reason, hardly is there any variance in their appearance. 'GOLD TOE' and 'GOLD TOP'
are printed in identical lettering. Both show [a] representation of a man's foot wearing a
sock. 'GOLD TOP' blatantly incorporates petitioner's 'LINENIZED' which by itself is a
registered mark."13

The Bureau considered the drawings and the labels, the appearance of the labels, the
lettering, and the representation of a man's foot wearing a sock. Obviously, its conclusion is
based on the totality of the similarities between the parties' trademarks and not on their sounds
alone.

In the present case, a resort to either the Dominancy Test or the Holistic Test shows that
colorable imitation exists between respondent's "Gold Toe" and petitioner's "Gold Top." A
glance at petitioner's mark shows that it definitely has a lot of similarities and in fact looks like a
combination of the trademark and devices that respondent has already registered; namely,
"Gold Toe," the representation of a sock with a magnifying glass, the "Gold Toe" representation
and "linenized."

An examination of the products in question shows that their dominant features are gold
checkered lines against a predominantly black background and a representation of a sock with
a magnifying glass. In addition, both products use the same type of lettering. Both also include a
representation of a man's foot wearing a sock and the word "linenized" with arrows printed on
the label. Lastly, the names of the brands are similar -- "Gold Top" and "Gold Toe." Moreover, it
must also be considered that petitioner and respondent are engaged in the same line of
business.

3rd Issue:The Paris Convention

(3)Yes. Petitioner claims that the CA erred in applying the Paris Convention. Although
respondent registered its trademark ahead, petitioner argues that the actual use of the said
mark is necessary in order to be entitled to the protection of the rights acquired through
registration.
 As already discussed, respondent registered its trademarks under the principal register,
which means that the requirement of prior use had already been fulfilled. To emphasize, Section
5-A of Republic Act 166 requires the date of first use to be specified in the application for
registration. Since the trademark was successfully registered, there exists a prima facie
presumption of the correctness of the contents thereof, including the date of first use. Petitioner
has failed to rebut this presumption.

Thus, applicable is the Union Convention for the Protection of Industrial Property adopted in
Paris on March 20, 1883, otherwise known as the Paris Convention, of which the Philippines
and the United States are members. Respondent is domiciled in the United States and is the
registered owner of the "Gold Toe" trademark. Hence, it is entitled to the protection of the
Convention. A foreign-based trademark owner, whose country of domicile is a party to an
international convention relating to protection of trademarks,17 is accorded protection against
infringement or any unfair competition as provided in Section 37 of Republic Act 166, the
Trademark Law which was the law in force at the time this case was instituted.

Birkenstock Orthopaedie GMBH and Co. KG (formerly Birkenstock Orthopaedie GMBH)

vs. Philippine Stock Expo Marketing Corporation

FACTS:

Petitioner, a corporation duly organized and existing under the laws of Germany applied
for various trademark registrations before the Intellectual Property Office (IPO). However, the
applications were 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 Corporation, the predecessor-in-interest of respondent
Philippine Shoe Expo Marketing Corporation.

On May 27, 1997, petitioner filed a petition (Cancellation Case) for cancellation of
Registration No. 564334 on the ground that it is the lawful and rightful owner of the Birkenstock
marks. During its pendency, however, respondent and/or it predecessor-in-interest failed to file
the required 10th Year Declaration of Actual Use (10th Year DAU) for Registration No. 56334 on
or before October 21, 2004, 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.

In response, respondent filed with the Bureau of Legal Affairs (BLA) of the IPO three
separate verified notices of opposition to the subject applications docketed as Inter Partes Cases
claiming, among others, 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 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 the ruling of the BLA
thus allowing the registration of the subject applications.
 Finding the IPO Director Generals reversal of the BLA unacceptable, respondent filed a
petition for review with the Court of Appeals. In its decision dated June 25, 2010, the CA
reversed and set aside the ruling of the IPO Director General and reinstated that of the BLA. The
petitioner filed a Motion for Reconsideration but was denied by the CA. Hence , this petition to
the Supreme Court.

ISSUE:

1. Whether or not the petitioners documentary evidence, although photocopies, are

admissible in court?
2. Whether or not the subject marks should be allowed registration in the name of the
petitioner?

HELD:

1. The court ruled yes. It is a well-settled principle that the rules of procedure are mere tools
aimed at facilitating the attainment of justice, rather than its frustration. A strict and rigid
application of the rules must always be eschewed when it would subvert the primary
objective of the rules, that is, to enhance fair trials and expedite justice. In the light of
this, Section 5 of the Rules on Inter Partes Proceedings provides that, The Bureau shall
not be bound by strict technical rules of procedure and evidence but may adopt, in the
absence of any applicable rule herein, such mode of proceedings which is consistent 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 documentary evidence in the related Cancellation Case earlier before it. Under the
circumstance and the 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 justice.

2. 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 provisions of this Act shall be cancelled by the
Director, unless within one year following the fifth, tenth 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-use is due to special circumstance which excuse such non-use and is not due to any
intention to abandon the same, and pay the required fee.

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 abandoned or withdrawn any right or interest over
the mark BIRKENSTOCK. It must be emphasized that registration of a trademark, by
 itself, is not a mode of acquiring ownership. If the applicant is not the owner of the
trademark, he has no right to apply for its registration. Registration merely creates a
prima facie presumption of the validity of the registration. Such presumption, just like the
presumptive regularity in the performance of official functions, is rebuttable and must
give way to evidence to the contrary. Besides, petitioner has duly established its true and
lawful ownership of the mark BIRKENSTOCK. It submitted evidence relating to the
origin and history of BIRKENSTOCK and it use in commerce long before respondent
was able to register the same here in the Philippines. Petitioner also 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.

Mirpuri vs CA, GR No. 114508, 19 November 1999, 318 SCRA 516

FACTS

Lolita Escobar applied with the Bureau of Patents for the registration of the trademark
Barbizon, alleging that she had been manufacturing and selling these products since 1970.
private respondent Barbizon Corp opposed the application in IPC No. 686. The Bureau granted
the application and a certificate of registration was issued for the trademark Barbizon. Escobar
later assigned all her rights and interest over the trademark to petitioner Mirpuri. In 1979,
Escobar failed to file with the Bureau the Affidavit of Use of the trademark. Due to his failure, the
Bureau cancelled the certificate of registration. Escobar reapplied and Mirpuri also applied and
this application was also opposed by private respondent in IPC No. 2049, claiming that it
adopted said trademark in 1933 and has been using it. It obtained a certificate from the US
Patent Office in 1934. Then in 1991, DTI cancelled petitioners registration and declared private
respondent the owner and prior user of the business name Barbizon International.

ISSUE: Whether or not the treaty (Paris Convention) affords protection to a foreign corporation
against a Philippine applicant for the registration of a similar trademark.

HELD

The Court held in the affirmative. RA 8293 defines trademark as any visible sign capable of
distinguishing goods. The Paris Convention is a multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial designs, trademarks, service marks,
trade names and indications of source or appellations of origin, and at the same time aims to
repress unfair competition. In short, foreign nationals are to be given the same treatment in
each of the member countries as that country makes available to its own citizens. Nationals of
the various member nations are thus assured of a certain minimum of international protection of
their industrial property.
LA CHEMISE LACOSTE, S. A. VS. FERNANDEZ

FACTS:

La chemise Lacoste is a French corporation and the actual owner of the trademarks Lacoste,
Chemise Lacoste, Crocodile Device and a composite mark consisting of the word Lacoste
and a representation of a crocodile/alligator, used on clothings and other goods sold in many
parts of the world and which has been marketed in the Philippines (notably by Rustans) since
1964.

In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the trademark
Chemise Lacoste and Q Crocodile Device both in the supplemental and Principal Registry. In
1980, La Chemise Lacoste SA filed for the registration of the Crocodile device and Lacoste.

Games and Garments (Gobindram Hemandas, assignee of Hemandas Q.Co.) opposed the
registration of Lacoste. In 1983, La Chemise Lacoste filed with the NBI a letter-complaint
alleging acts of unfair competition committed by Hemandas and requesting the agencys
assistance.

A search warrant was issued by the trial court. Various goods and articles were seized upon the
execution of the warrants. Hemandas filed motion to quash the warrants, which the court
granted. The search warrants were recalled, and the goods ordered to be returned. La
Chemise Lacoste filed a petition for certiorari.

ISSUE: Whether or not the trademark Chemise Lacoste and Q Crocodile Device is registrable.

HELD:

No. Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back even
before 1964, Hemandas cannot be allowed to continue the trademark Lacoste for the reason
that he was the first registrant in the SupplementalRegister of a trademark used in international
commerce.

Registration in the Supplemental Register cannot be given a posture as if the registration is in

the Principal Register. It must be noted that one may be declared an unfair competitor even if
his competing trademark is registered. La ChemiseLacoste is world renowned mark, and by
virtue of the 20 November 1980Memorandum of the Minister of Trade to the director of patents
in compliance with the Paris Convention for the protection of industrial property, effectively
cancels the registration of contrary claimants to the enumerated marks, which include Lacoste.