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Converse v. Universal Rubber Products
Converse Rubber Corporation is an American
corporation while Universal Rubber Products,
Inc. is a corporation licensed to do business in
the country. Converse has been operating since
1946. Universal Rubber has been operating
since 1963. Later, Universal Rubber filed an
application for the trademark “Universal
Converse and Device” before the Philippine
Patent Office. Converse Rubber opposed as it
averred that the word “Converse” which is part
of its corporate name cannot be granted as part
of Universal Rubber’s trademark or trade name
because it will likely deceive purchasers of
Universal Rubber’s products as it may be
mistaken by unwary customers to be
manufactured by Converse Rubber. The
Director of Patents did not grant the opposition
by Converse Rubber.
ISSUE: Whether or not the decision of the
Director of Patents is correct.
HELD: No. From a cursory appreciation of the
Converse Rubber’s corporate name “CONVERSE
RUBBER CORPORATION” it is evident that the
word “CONVERSE” is the dominant word which
identifies Converse Rubber from other
corporations engaged in similar business.
Universal Rubber, in the stipulation of facts,
admitted Converse Rubber’s existence since
1946 as a duly organized foreign corporation
engaged in the manufacture of rubber shoes.
This admission necessarily betrays its
knowledge of the reputation and business of
petitioner even before it applied for registration
of the trademark in question. Knowing,
therefore, that the word “CONVERSE” belongs
to and is being used by Converse Rubber, and is
in fact the dominant word in its corporate
name, Universal Rubber has no right to
appropriate the same for use on its products
which are similar to those being produced by
Converse Rubber
Philips Export BV v. CA
Facts: Philips Export BV is a foreign corporation
organized in Netherlands and not engaged in
business in the Philippines. It is the registered
owner of the trademark “Phillips” and “Phillips
Shield Emblem”. Philips Electrical Lamp, Inc. and
Philips Industrial Development Inc. besides
PEBV, are corporations belonging to the Philips
Group of Companies. In 1984, PEVB filed a
letter-complaint with the SEC for the
cancellation of the word “Phillips” from
Standard Philip’s corporate name. The SEC en
banc affirmed the dismissal of PEBU’s complaint
by one of its hearing officers. The Court of
Appeals dismissed PEVB’s petition for review
certiorari, as referred by the Supreme Court.
Issue: Whether there is confusing similarity
between the corporate names to warrant the
removal of “Philips” in Standard Philip’s
corporate name.
Held: Yes. The right to exclusive use of a
corporate name with freedom from
infringement by similarity is determined by
priority of adoption. PEBV, et al. have priority in
adoption, as Standard Philips was issued a
Certificate of Registration 26 years after Philips
Electrical and Philips Industrial acquired theirs.
A reading from said corporate names, it is
obvious that “Philips” is the dominant word in
all companies affiliated with the principal
corporation, PEVB. Given that standard Philip’s
primary purpose does not prevent it from
dealing in the same line of business of electrical
devices, products or supplies, as that of Philips
Electrical, it can only be said that the
subsequent appropriator of the name or one
confusingly similar thereto usually seeks an
unfair advantage, a free ride on another’s
goodwill. Inasmuch as Standard Philips has
submitted an undertaking to the SEC
“manifesting its willingness to change its
corporate name in the event another person,
firm or entity has acquired a prior right to the
use of the said firm name or one deceptively or
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confusingly similar to it. Standard Philips must
now be held in its undertaking.
Coffee Partners Inc. v. San Francisco Coffee &
Roastery, Inc.
Facts:The petitioner holds a business in
maintaining coffee shops in the Philippines. It is
registered with the Securities and Exchange
Commission in January 2001. In its franchise
agreement with Coffee Partners Ltd, it carries
the trademark “San Francisco Coffee.”
Respondent is engaged in the wholesale and
retail sale of coffee that was registered in SEC in
May 1995 under a registered business name of
“San Francisco Coffee & Roastery, Inc.” It
entered into a joint venture with Boyd Coffee
USA to study coffee carts in malls. When
respondent learned that petitioner will open a
coffee shop in Libis, Q.C. they sent a letter to
the petitioner demanding them to stop using
the name “San Francisco Coffee” as it causes
confusion to the minds of the public. A
complaint was also filed by respondents before
the Bureau of Legal Affairs of the Intellectual
Property Office for infringement and unfair
competition with claims for damages.
Petitioners contend that there are distinct
differences in the appearance of their
trademark and that respondent abandoned the
use of their trademark when it joined venture
with Boyd Coffee USA. The Bureau of Legal
Affairs of the IPO held that petitioner’s
trademark infringed on the respondent’s trade
name as it registered its business name first
with the DTI in 1995 while petitioner only
registered its trademark in 2001. Furthermore,
it ruled that the respondent did not abandon
the use of its trade name upon its joint venture
with Boyd Coffee USA since in order for
abandonment to exist it must be permanent,
intentional and voluntary. It also held that
petitioner’s use of the trademark "SAN
FRANCISCO COFFEE" will likely cause confusion
because of the exact similarity in sound,
spelling, pronunciation, and commercial
impression of the words "SAN FRANCISCO"
which is the dominant portion of respondent’s
trade name and petitioner’s trademark. Upon
appeal before the office of the Director General
of the IPO, the decision of its legal affairs was
reversed declaring there was no infringement.
The Court of Appeals however set aside its
decision and reinstated the IPO legal affairs’
decision. Petitioner contends that the
respondent’s trade name is not registered
therefore a suit for infringement is not
available.
Issue:Whether or not the petitioner’s use of the
trademark "SAN FRANCISCO COFFEE"
constitutes infringement of respondent’s trade
name "SAN FRANCISCO COFFEE & ROASTERY,
INC.," even if the trade name is not registered
with the Intellectual Property Office (IPO).
Ruling: Registration of a trademark before the
IPO is no longer a requirement to file an action
for infringement as provided in Section 165.2 of
RA 8293. All that is required is that the trade
name is previously used in trade or commerce
in the Philippines. There is no showing that
respondent abandoned the use of its trade
name as it continues to embark to conduct
research on retailing coffee, import and sell
coffee machines as among the services for
which the use of the business name has been
registered. The court also laid down two tests
to determine similarity and likelihood of
confusion. The dominancy test focuses on
similarity of the prevalent features of the
trademarks that could cause deception and
confusion that constitutes infringement. Exact
duplication or imitation is not required. The
question is whether the use of the marks
involved is likely to cause confusion or mistake
in the mind of the public or to deceive
consumers. the holistic test entails a
consideration of the entirety of the marks as
applied to the products, including the labels and
packaging, in determining confusing
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similarity. The discerning eye of the observer
must focus not only on the predominant words
but also on the other features appearing on
both marks in order that the observer may draw
his conclusion whether one is confusingly
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similar to the other. Applying either the
dominancy test or the holistic test, petitioner’s
"SAN FRANCISCO COFFEE" trademark is a clear
infringement of respondent’s "SAN FRANCISCO
COFFEE & ROASTERY, INC." trade name. The
descriptive words "SAN FRANCISCO COFFEE"
are precisely the dominant features of
respondent’s trade name. And because both
are involved in coffee business there is always
the high chance that the public will get
confused of the source of the coffee sold by the
petitioner. Respondent has acquired an
exclusive right to the use of the trade name
"SAN FRANCISCO COFFEE & ROASTERY, INC."
since the registration of the business name with
the DTI in 1995.
Sehwani v. In-N-Out Burger, Inc.
Petitioner Sehwani, Inc. alleged that respondent
lack the legal capacity to sue because it was not
doing business in the Philippines and that it has
no cause of action because its mark is not
registered or used in the Philippines. They
claimed that as the registered owner of the "IN-
N-OUT" mark, it enjoys the presumption that
the same was validly acquired and that it has
the exclusive right to use the mark. Moreover,
petitioners argued that other than the bare
allegation of fraud in the registration of the
mark, respondent failed to show the existence
of any of the grounds for cancellation thereof
under the IP Code. Respondents contended that
petitioners committed a violation of intellectual
property rights when they refused to accede to
the demand in desisting from claiming
ownership of the mark "IN-N-OUT" and to
voluntarily cancelling its Trademark
Registration. They argued that they have been
the owner of the tradename "IN-N-OUT" and
trademarks "IN-N-OUT," "IN-N-OUT Burger &
Arrow Design" and "IN-N-OUT Burger Logo,"
which are used in its business since 1948 up to
the present. These trade name and trademarks
were registered in the United States as well as
in other parts of the world
Issue: W/n respondent has the legal capacity to
sue for the protection of its trademarks, albeit it
is not doing business in the Philippines
Held
YES.Section 160 in relation to Section 3 of R.A.
No. 8293, provides for the Right of Foreign
Corporation to Sue in Trademark or Service
Mark Enforcement Action. In addition, Articles 6
and 8 of The Paris Convention, wherein both
the United States and the Philippines are
signatories. state that "A trade name shall be
protected in all countries of the Union without
the obligation of filing or registration whether
or not it forms part of a trademark." Article 6
which governs the protection of well-known
trademarks, is a self-executing provision and
does not require legislative enactment to give it
effect in the member country. The question of
whether or not respondent’s trademarks are
considered "well-known" is factual in nature.
Considering the factual findings of the BLA-IPO,
the SC is inclined to favor the declaration of the
mark "IN-N-OUT" as an internationally well-
known mark on the basis of "registrations in
various countries around the world and its
comprehensive advertisements therein." The
fact that respondent’s marks are neither
registered nor used in the Philippines is of no
moment
Birkenstock Orthopaedie v. Phil Shoe Expo
Birkenstock Orthopaedie GMBH (Birkenstock
Orthopaedie) applied for the trademark
registration of “BIRKENSTOCK” with the
IPO. Philippine Shoe Expo opposed the
application on account of prior use for more
than 16 years and registration of the mark
“BIRKENSTOCK AND DEVICE”. The Bureau of
legal Affairs (BLA) sustained the opposition
because: (i) the competing marks are
confusingly similar and are used on the same
and related goods; (ii) Birkenstock Orthopaedie
failed to prove actual use of the mark in trade
and business in the Philippines; (iii) prior right
over the mark was not lost even though the
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registration of “BIRKENSTOCK AND DEVICE” was
cancelled, as there was proof of the mark’s
continuous and uninterrupted use in commerce
in the Philippines; and (iv) “BIRKENSTOCK” is
not well -known in the Philippines and
internationally. The IPO Director General set
aside the BLA’s ruling. The IPO Director General
found Birkenstock Orthopaedie to be the true
and lawful owner and prior user of the
“BIRKENSTOCK” marks. The IPO Director
General further held that “BIRKENSTOCK AND
DEVICE” is no longer an impediment to the
registration of “BIRKENSTOCK” as the former’s
registration had been cancelled on account of
the registrant’s failure to file the 10th year
Declaration of Use. The Court of Appeals
reinstated the decision of the BLA.
HELD: The Supreme Court ruled in favor of
Birkenstock Orthopaedie for the following
reasons: (i) under the former trademark law,
Republic Act 166, failure to file the Declaration
of Use results in the automatic cancellation of
the trademark which in turn is tantamount to
the abandonment or withdrawal of the
registrant’s right or interest over the trade
mark. Applying this rule, the registrant is
deemed to have abandoned its right or interest
over the mark “BIRKENSTOCK AND DEVICE” on
account of its failure to file the 10th year
Declaration of Use; and (ii) Birkenstock
Orthopaedie proved its true and lawful
ownership of the mark “Birkenstock”. Evidence
was submitted on (i) the use of the mark in
Europe since 1774, when its inventor, Johann
Birkenstock, used the mark on his line of quality
footwear, which use was continued by
numerous generations of his kin; and (ii) the
worldwide registration of the mark
“BIRKENSTOCK”. The Supreme Court did not
find credible the evidence of Philippine Shoe
Expo as it was able to submit only copies of
sales invoices and advertisements, which
showed merely its transactions involving the
same. The Supreme Court found the
registration of “BIRKENSTOCK AND DEVICE” to
have been done in bad faith and found it highly
incredible that Philippine Shoe Expo came up on
its own with the mark “BIRKENSTOCK”,
obviously of German origin and a highly distinct
and arbitrary mark. The Supreme Court pointed
out that Philippine Shoe Expo obviously knew of
the existence of “BIRKENSTOCK” and its use by
Birkenstock Orthopaedie and that it clearly
intended to take advantage of the goodwill
generated by the “BIRKENSTOCK” mark.
Finally, the Supreme Court reiterated the
principle that registration of the trademark
merely creates a prima facie presumption of
ownership which yields to superior evidence of
actual and real ownership of a trademark. In the
words of the Supreme Court: Clearly, it is not
the application or registration of a trademark
that vests ownership thereof, but it is the
ownership of a trademark that confers the right
to register the same. A trademark is an
industrial property over which its owner is
entitled to property rightswhich cannot be
appropriated by unscrupulous entities that, in
one way or another, happen to register such
trademark ahead of its true and lawful owner.
The presumption of ownership accorded to a
registrant must then necessarily yield to
superior evidence of actual and real ownership
of a trademark.
Fredco Manufacturing Corp. v. Harvard College
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
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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/Non-Use 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 to be
registered. The CA affirmed the Director
General.
ISSUE: Whether or nor Registration No. 56561
Class 25 must be cancelled
RULING: No. 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. However, Harvard University's
registration of the name "Harvard" is based on
home registration which is allowed under
Section 37 of RA 166. Also, under Section 239.2
of RA 8293, "marks registered under RA 166
shall remain in force but shall be deemed to
have been granted under this Actxxx" which
does not require actual prior use of the mark in
the Philippines. In addition, Article 8 of the Paris
Convention, to which both the Philippines and
the US are signatories, has been incorporated in
Section 37 of RA 166; thus, under Philippine
laws, a trade name of national of a State that is
a party to the Paris Convention, whether or not
the trade name forms part of a trademark, is
protected without the obligation of filing or
registration. Be it noted that Fredco's
registration was already cancelled when it failed
to file the required Affidavit of Use/Non-Use for
the fifth anniversary of the mark's registration.
Hence, at the time of the filing of the Petition
for Cancellation, Fredco was no longer the
registrant or presumptive owner of the mark
"Harvard."
Ecole de Cuisine Manille Inc. v. Renauil
Cointreau & Cie and Le Cordon Bleu
On June 21, 1990, Cointreau, a partnership
registered under the laws of France, filed with
the then Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT)a trademark
application for the mark “Le Cordon Bleu &
Device” for goods falling under classes 8, 9, 16,
21, 24, 25, 29, and 30 of the Nice
Classification.This trademark application was
filed on the basis of Home Registration No.
1,390,912, issued on November 25, 1986 in
France. Ecole de Cuisine Manille (“Ecole”) filed
an opposition to the application alleging that as
the first to use the mark “Le Cordon Bleu, Ecole
Cuisine Manille” in the Philippines, it is the one
entitled to its registration. Ecole claimed it had
been using the mark since since 1948 in cooking
and other culinary activities, including in its
restaurant business. Ecole filed its trademark
application with the BPTTT on February 24,
1992. The Supreme Court resolved the issue of
ownership and right to register in favor of
Cointreau because Cointreau, which (i) first filed
its application (June 21, 1990 as against Ecole’s
application filed on February 24, 1992) based on
a home registration dated November 16, 1986;
(ii) had been using the mark in Paris, France
since 1895; (iii) its culinary school, Le Cordon
Bleu, was first established in 1895 and is known
worldwide, and that Ecole’s directress even
attended its culinary school; and (iv) was the
first to be granted a Certificate of Registration
by the Philippine Intellectual Property Office.
Held: The Supreme Court held that Section 2-A
of the old law, Republic Act No. 166, does not
require that the actual use of the mark must be
within the Philippines. And, that in any case, the
new law, Republic Act No. 8293 otherwise
known as the Intellectual Property Code of the
Philippines as amended, has already dispensed
with the requirement of prior actual use at the
time of registration. The Supreme Court further
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recognized the obligation of the Philippines
under the Paris Convention to afford protection
to nationals of signatory countries against
violations of their intellectual property rights in
the Philippines and thus “under Philippine law,
a trade name of a national of a State that is a
party to the Paris Convention, whether or not
the trade name forms part of a trademark is
protected “without the obligation of filing or
registration”. On a final note, the Supreme
Court further ruled that“courts will protect
trade names or marks, although not registered
or properly selected as trademarks, on the
broad ground of enforcing justice and
protecting one in the fruits of his toil”.
Developers Group of Companies Inc. v. CA
Facts: On June 21, 1988, the Shangri-La
International Hotel Management, Ltd.,Shangri-
La Properties, Inc., Makati Shangri-La Hotel and
Resort, Inc. and Kuok Philippine Properties, Inc.,
filed with the Bureau of Patents, Trademarks
and Technology Transfer (BPTTT) a petition
praying for the cancellation of the registration
of the Shangri-La mark and “S” device/logo
issued to the Developers Group of Companies
Inc., on the ground that the same was illegally
and fraudulently obtained and appropriated for
the latter’s restaurant business. The Shangri-La
Group alleged that it is the legal and beneficial
owners of the subject mark and logo; that it has
been using the said mark and logo for its
corporate affairs and business since March
1962 and caused the same to be specially
designed for their international hotels in 1975,
much earlier than the alleged first use by the
Developers Group in 1982.Likewise, the
Shangri-La Group filed with the BPTTT its own
application for registration of the subject mark
and logo. The Developers Group filed an
opposition to the application. Almost three (3)
years later, the Developers Group instituted
with the RTC a complaint for infringement and
damages with prayer for injunction. When the
Shangri-La Group moved for the suspension of
the proceedings, the trial court denied such in a
Resolution. The Shangri-La Group filed a
petition for certiorari before the CA but the CA
dismissed the petition for certiorari. Hence, the
instant petition.
Issue:Whether or not the infringement case
should be dismissed or at least suspended
Held: There can be no denying that the
infringement case is validly pass upon the
rightof registration. Section 161 of Republic Act
No. 8293 provides to wit: SEC. 161.
Authority to Determine Right to Registration In
any action involving a registered mark the court
may determine the right to registration, order
the cancellation of the registration, in whole or
in part, and otherwise rectify the register with
respect to the registration of any party to the
action in the exercise of this. Judgement and
orders shall be certified by the court to the
Director, who shall make appropriate entry
upon the records of the Bureau, and shall be
controlled thereby.(Sec. 25, R.A. No. 166a).
(Emphasis provided)
To provide a judicious resolution of the issues at
hand, the Court find it apropos to order the
suspension of the proceedings before the
Bureau pending final determination of the
infringement case, where the issue of the
validity of the registration of the subject
trademark and logo in the name of Developers
Group was passed upon.
Kabushi Kaisha Isetan v. IAC
Facts: Kabushi Kaisha Isetan is a Japanese
corporation, and owner of the trademark
“Isetan” and the “Young leave design”. Isetann
Department Store, on the other hand, is a
domestic corporation, and owner fo the
trademark “Isetann” and “flover design.” In
1980, Kabushi Kaisha Isetan field petitions for
the cancellation of the supplemental
registration of Isetann with the Philippine
Patent Office. It also filed for the cancellation of
the mark Isetan from the corporate name of
Isetann Department Store with the SEC. Both
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the SEC and the Director of Patents, eventually,
ruled against Kabushi Kaisha Isetan. It appealed
to the intermediate Appellate Court, which
denied the petition for being filed out of time.
Issue: Whether Kabushi Kaisha Isetan has the
right to seek for the cancellation of the word
“Isetan” from the corporate name of Isetann
Department Store.
Held: No. A Fundamental principle in Trademark
Law is that the actual use in commerce in the
Philippines is a pre-requisite to the acquisition
of ownership over a trademark or a trade name.
Kabushi Kaisha Isetan has never conducted any
business in the Philippines. It has never
promoted its trademark or trade name in the
Philippines. It has absolutely no business
goodwill in the Philippines. It is unknown to
Filipinos except the very few who may have
noticed it while traveling abroad. It has never
paid a single centavo of tax to the Philippine
Government. Under the law, it has no right to
the remedy it seeks. Isetann Department Store
is entitled to use its trademark in the
Philippines
Shangri-La Int’l v. Developer’s Group of
Companies.
FACTS: On 18 October 1982, Developers Group
of Companies, Inc. (DGCI) filed with the Bureau
of Patents, Trademarks, and Technology
Transfer (BPTTT) for registration covering the
“Shangri-La” mark and “S” logo. On 31 May
1983, BPTTT issued in favor of DGCI,
Registration No. 31904. DGCI has used the “S”
logo since then But as far back as 1962, the
Kuok Group of Companies has adopted the
name Shangri-La in all Shangri-La hotels and
hotel-relatedestablishments worldwide(SLIHM).
In February 1975, William Lee, a Singaporean
design artist commissioned to design the logo
of Shangri-La hotels, launched the stylized “S”
logo. SLIHM has used the name “Shangri-La”
and the “S” logo since then, Shangri-La Hotel
and Resort, Inc. was incorporated in the RP
beginning 1987 when the Kuok Group put up
two hotels in Mandaluyong and Makati. On 21
June 1988, SLIHM filed with the BPTTT a
petition, praying for the cancellation of the
Registration No. 31904 and for the registration
of the mark and logo in their own name. DGCI
filed a complaint for Infringement and Damages
with the RTC of Quezon City against SLIHM
because they have been using the mark and the
logo for the last eight years. SLIHM pointed to
the Paris Convention for the Protection of
Industrial Property and further claimed that
they have used the mark and logo since 1975.
On 8 March 1996, RTC ruled in favor of DGCI
Therefrom, SLIHM went on appeal to the CA,
but the affirmed the lower court’s decision with
the modification of deleting the award of
attorney’s fees SLIHM moved a motion for
reconsideration, but was also denied
Issue: What constitutes trademark ownership
Held: RA No. 166 (law in force at the time of
DGCI’s application). The root of ownership of a
trademark is actual use in commerce. Section 2
of RA No. 166 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. Moreover,
registration does not confer upon the registrant
an absolute right to the registered mark. The
certificate of registration is merely a prima facie
proof that the registrant is the owner of the
registered mark or trade name. Evidence of
prior and continuous use of the mark or trade
name by another can overcome the
presumptive ownership of the registrant and
may very well entitle the former to be declared
owner in an appropriate case. In other words,
registration is not a mode of acquiring
ownership. The actual use in commerce or
business is a pre-requisite to the acquisition of
the right of ownership
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Philip Morris Inc. v. Fortune Tobacco Company
Facts: Petitioner Philip Morris, Inc., a
corporation (State of Virginia, U.S.A), is the
registered owner of the trademark “MARK VII”
for cigarettes. Similarly, petitioner Benson &
Hedges (Canada), Inc., a subsidiary of Philip
Morris, Inc., is the registered owner of the
trademark “MARK TEN” for cigarettes (PPO
Certificate of Registration No. 11147) Fabriques
de Tabac Reunies, S.A. (Swiss company),
another subsidiary of Philip Morris, Inc., is the
assignee of the trademark “LARK,” Respondent
Fortune Tobacco Corporation, a company
organized in the Philippines, manufactures and
sells cigarettes using the trademark “MARK.”
Petitioners, on the claim that an infringement of
their respective trademarks had been
committed, filed, on August 18, 1982, a
Complaint for Infringement of Trademark and
damages against respondent
Issue: Whether or not respondent has
committed trademark infringement against
petitioners by its use of the mark “MARK” for its
cigarettes, hence liable for damages
Held: Members of the Paris Union does not
automatically entitle petitioners to the
protection of their trademarks in this country
ABSENT ACTUAL USE OF THE MARKS IN LOCAL
COMMERCE AND TRADE. Philippines’
adherence to the Paris Convention effectively
obligates the country to honor and enforce its
provisions However, any protection accorded
has to be made subject to the limitations of
Philippine laws. Hence, despite Article 2 of the
Paris Convention which substantially provides
that:
(1) nationals of member-countries shall have in
this country rights specially provided by the
Convention as are consistent with Philippine
laws, and enjoy the privileges that Philippine
laws now grant or may hereafter grant to its
national
(2) while no domicile requirement in the
country where protection is claimed shall be
required of persons entitled to the benefits of
the Union for the enjoyment of any industrial
property rights foreign nationals must still
observe and comply with the conditions
imposed by the Philippine law on its nationals.
E.Y. Industrial Sales, Inc v. Shen Dar Electricity
and Machinery Co. Ltd
FACTS: EY Industrial Sales is a domestic
corporation engaged in the production,
distribution and sale of air compressors. Shen
Dar is a Taiwan-based foreign corporation
engaged in the manufacture of compressors.
From 1997-2004, EY Industrial imported air
compressors from Shen Dar. 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. In 1999, EY Industrial filed a
Trademark Application also for the mark
“VESPA” for the use of air compressors. It was
approved in 2004. Shen Dar filed a Petition for
Cancellation of the Industrial’s 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 provides
that: A mark cannot be registered if it is
identical to a mark with an earlier filing or
priority date. b. EY Industrial is only a
distributor of the air compressors. On the other
hand, EY Industrial alleged that it is the sole
assembler and fabricator of VESPA air
compressors since the early 1990s and that
Shen Dar supplied them air compressors with
the mark “SD” and not “VESPA”
Issue: Who between EY Industrial and Shen Dar
is entitled to the trademark “VESPA”. EY
INDUSTRIAL SALES
Held: EY INDUSTRIAL has the right to the
trademark.
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Based on the evidence, EYIS owns the “VESPA”
trademark; it has prior use, as shown by various
sales invoices. Ownership of a mark or trade
name may be acquired not necessarily by
registration but by adoption and use in trade or
commerce. As between actual use of a mark
without registration, and registration of the
mark without actual use thereof, the former
prevails over the latter.For 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 pre-requisite to
the acquisition of the right of ownership. It is
non sequitur to hold that porque EYIS is a
distributor, it is no longer the owner. Under
Section 123.1 of IPO provision, the registration
of a mark is prevented with the filing of an
earlier application for registration. This must
not, however, be interpreted to mean that
ownership should be based upon an earlier
filing date. While RA 8293 (IPC) removed the
previous requirement of proof of actual use
prior to the filing of an application for
registration of a mark, proof of prior and
continuous use is necessary to establish
ownership of a mark. Such ownership
constitutes sufficient evidence to oppose the
registration of a mark. When we talk about
trademark, we are just talking about the mark.
It does not include the product. Shen Dar is the
manufacturer of the product, but they did not
name the product as VESPA. It was EY that
named the VESPA, and used the VESPA, even
though they were only the distributors. It was
EY that 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 applied.
Arce Sons & Co v. Selecta Biscuit Co.
Facts:Ramon Arce, predecessor-in-interest of
herein petitioner, started a milk business in
1933 using the name “SELECTA” as trade-name
as well as trade-mark. He sold his milk products
in bottles covered with caps on which the words
“SELECTA FRESH MILK” were inscribed. For the
span of more than 20 years, his business
expanded and sold, inaddition to his milk
product, ice cream, sandwiches and other food
products. His products were packaged in a
special containers with the word ”SELECTA”
written in the packaging. Several new products
were eventually added to his line of products
such as biscuits, bakery items, and assorted
cakes and pastries. The word “SELECTA” was
even written on the signboards of his business
establishments and upon the vehicles that were
used for the delivery of his products. Then his
business was acquired by petitioner Arce Sons
and Co. which eventually put a first class
restaurant aside from the manufacture of the
aforementioned food products. Herein
respondent on the other hand, was organized
and registered as corporation under the name
and style of Selecta Biscuits Co., Inc. The name
Selecta was chosen by the Chinese organizers of
the corporation as a translation of a Chinese
word “Ching Suan.” Its business started as a
biscuit factory and its products such as biscuits
and crackers were specially wrapped in
cellophane pouches and place inside a tin can.
Such products of the respondent were sold
throughout the Philippines. The respondent
filed a petition with the Philippine Patent Office
for the registration of the word “SELECTA” as
trade-mark to be use in its bakery products. The
petition was referred to an examiner for
evaluation who found out that the trademark
sought to be registered resembles the word
“SELECTA” used by the petitioner so that its use
by the respondent will cause confusion as to the
origin of their respective goods. So the
examiner recommended for the disapproval of
the application. However, Patent Office only
ordered the publication of the application. In
due time, petitioner filed an opposition to the
registration on the ground that the mark
“SELECTA” has been continuously used by it
from the time of its organization and even prior
thereto by Ramon Arce, thus the said mark has
already become identified with its name and
business. Petitioner also contend that the use of
SELECTA by the respondents as trademark
constitutes as an unfair competition with its
 10
products thus resulting in confusion in trade
and that the product of the respondent might
be mistaken by the public as its products. The
Director of Patents rendered a decision
dismissing petitioner’s opposition stating that
the registration of the trade-mark SELECTA in
favour of the respondent will not cause
confusion or mistake nor will deceive the
purchasers as to cause damage to petitioner.
Hence, this present petition for review.
Issue: Whether or not the use of the trade-mark
“SELECTA” by the respondent will result
confusion to the prejudice of Arce Sons and Co.
Held: Yes. Trademark 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. Verily,
the word “SELECTA” has been chosen by
petitioner and has been inscribed on all its
products to serve not only as a sign or symbol
that may indicate that they are manufactured
and sold by it but as a mark of authenticity that
may distinguish them from the products sold
and manufactured by other merchants or
businessmen. 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, sign or 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. Inthis 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. Thus, the Director of
Patent committed an error in dismissing the
opposition of the petitioner and in holding that
the registration of the trademark “SELECTA” in
favour of respondent will not cause damage to
petitioner. Decision of the Director of Patent
office is reversed
Ang v. Teodoro
Facts: Respondent Toribio Teodoro has
continuously used "Ang Tibay," both as a trade-
mark and as a trade-name, in the manufacture
and sale of slippers, shoes, and indoor baseballs
since 1910. On September 29, 1915, he formally
registered it as trade-mark and as trade-name
on January 3, 1933.
Petitioner Ana Ang registered the same trade-
mark "Ang Tibay" for pants and shirts on April
11, 1932, and established a factory for the
manufacture of said articles in the year 1937.
The Court of First Instance of Manila absolved
the defendant (Ms. Ang) on the grounds that
the two trademarks are dissimilar and are used
on different and non-competing goods; that
there had been no exclusive use of the trade-
mark by the plaintiff; and that there had been
no fraud in the use of the said trade-mark by
the defendant because the goods on which it is
used are essentially different from those of the
plaintiff. The Court of Appeals reversed said
judgment, directing the Director of Commerce
to cancel the registration of the trade-mark
"Ang Tibay" in favor of petitioner, and
perpetually enjoining the latter from using said
trade-mark on goods manufactured and sold by
her. Thus, this case, a petition for certiorari.
Issue: Are the goods or articles or which the two
trademarks are used similar or belong to the
same class of merchandise?
Ruling: Yes, pants and shirts are goods closely
similar to shoes and slippers. They belong to the
same class of merchandise as shoes and
slippers. They are closely related goods. The
Supreme Court affirmed the judgment of the
Court of Appeals and added that “although two
non-competing articles may be classified under
to different classes by the Patent Office because
they are deemed not to possess the same
descriptive properties, they would,
nevertheless, be held by the courts to belong to
 11
the same class if the simultaneous use on them
of identical or closely similar trademarks would
be likely to cause confusion as to the origin, or
personal source, of the second user’s goods.
They would be considered as not falling under
the same class only if they are so dissimilar or
so foreign to each other as to make it unlikely
that the purchaser would think that the first
user made the second user’s goods”
Del Monte v. CA
Facts: Del Monte granted Philippine Packing
corp. the right to manufacture, distribute and
sell in the Philippine various products under the
Del Monte trademark and logo. Del Monte was
able to acquire certificate of registration for its
marks “del monte” and its logo; besides the Del
Monte catsup battle configuration. Years later,
Sunshine Sauce Manufacturing acquired
certificate of registration for the logo of its
Sunshine Fruit Catsup. Sunshine’s product is
contained in various bottles, including Del
Monte bottles. Having received reports that
Sunshine was using its exclusively designed
bottles and a logo confusingly similar to Del
Monte’s PhilPack warned sunshine to desist
from doing so. Ignored, PhilPack and Del Monte
sued. The trial court ruled in favor of sunshine.
The Court of Appeals affirmed the decision.
Hence, the petition for certiorari.
Issue: Whether the Sunshine label is a colorable
imitation of the Del Monte trademark.
Held: Yes. The predominant colors used in both
labels are green and red orange. The word
“catsup” in both bottles is printed in white and
the print/letter style is the same. Although the
logo of sunshine is not a tomato, it
approximates that of a tomato. The person who
infringes a trademark does not normally copy
out but only makes colorable changes,
employing enough points of similarity to
confuse the public and enough points of
differences to confuse the courts. When a
manufacturer prepares to package his product,
he has before him a boundless choice of words,
phrases, color and symbols sufficient to
distinguish his product from others. When
sunshine chose, without reasonable
explanation, to use the same colors and letters
as used by Del Monte, when the field of
selection is so broad, the inevitable conclusion
is that it was done deliberately to deceive.
Further, despite the many choices available to
it, Sunshine opted to use Del Monte’s bottle to
market a product which PhilPack also produces,
notwithstanding the caution “Del Monte
Corporation, not to be refilled.” This shows
Sunshine’s bad faith and its intention to
capitalize3 on the reputation of Del Monte, and
pass off its product as that of the latter.
Emerald Garments v. CA
Facts: HD Lee Co. owns the trademarks “Lee”,
“Lee Riders” and “Lee sures” in both the
supplementary and principal registers, as early
as 1969 to 1973. In 1981, it filed for the
cancellation for the registration of the
trademark “stylistic Mr. Lee”, applied/owned by
Emerald Garment Manufacturing Corp. In 1988,
the Director of Patents ruled in favor of HD Lee.
In 1990, the Court of Appeals affirmed the
decision of the Director of Patents. Hence, the
petition for review on certiorari.
Issue: Whether the trademark “stylistic Mr.
Lee” is confusingly similar to HD Lee’s
trademarks to warrant its cancellation in the
supplemental Registry.
Held: No. Stylistic Mr. Lee is not a variation of
the Lee mark. HD Lee’s variation follows the
format leeriders, “ leesure”, and “leeleens” and
thus does not allow the conclusion that
“Stylistic Mr. Lee” is another variation under HD
Lee’s mark. Although on stylistic Mr. Lee’s label,
the word “lee” is prominent, the trademark
should be considered as a whole and not
piecemeal. Further, “Lee” is a surname.
Personal names nor surnames cannot be
monopolized as trademarks or trade names as
against others of the same name or surname.
Furthermore, inasmuch as Emerald Garment
 12
has shown the use of stylistic Mr. Lee since
1975through sales invoice from stores and
retailers; and that HD Lee was not able for
transactions period to 1981;the Supreme Court
allowed the use of stylistic Mr. Lee by Emerald
Garment.
Hickok v. CA
Facts:
Petitioner is a foreign corporation and all its
products are manufactures by Quality House
Inc. The latter pays royalty to the petitioner.
Hickok registered the trademark 'Hickok' earlier
and used it in the sale of leather wallets, key
cases, money folds, belts, men’s underwear,
neckties, hankies, and men's socks. While Sam
Bun Liong used the same trademark in the sale
of Marikina shoes. Both products have different
channels of trade. The Patent Office did not
grant the registration, but the Court of Appeals
reversed the PPO decision.
Issue: Is there infringement in this case?
NONE. Emphasis should be on the similarity of
the products involves and not on the arbitrary
classification or the general description of their
properties or characteristics. Also, the mere fact
that one person has adopted and used a
trademark on his goods does not prevent the
adoption and use of the same by others on
unrelated articles of different kind.
There is a different design and coloring of the
trademark itself. The 'Hickok' trademark is in
red with white background in the middle of 2
branches of laurel (in light gold) while the one
used by Sam Bun Liong is the word 'Hickok ' in
white with gold background between 2
branches of laurel in red with the word 'shoes'
also in red placed below the word 'Hickok'
Faberge Inc. v. CA
Facts of the Case: Co Beng Kay applied for the
registration of the trademark 'BRUTE' to be
used it its underwear (briefs) products. The
petitioner opposed on the ground that there is
similarity with their own symbol (BRUT, Brut33
& Device) used on its aftershave, deodorant,
cream shave, hairspray and hair
shampoo/soaps and that it would cause injury
to their business reputation. It must be noted
that the petitioner never applied for
registration of said trademark for its brief
products. The Patent Office allowed Co Beng
Kay the registration and this was further
affirmed by the Court of Appeals.
Issue: Is there confusing similarity between the
challenged marks and that its use would likely
cause confusion on the part of the purchasers?
HELD: NONE. Co Beng Kay may rightly
appropriate the mark. In this case Sec. 20
(Philippine Intellectual Property Law) is
controlling. The certificate of registration issued
confers the exclusive right to use its own
symbol only to those goods specified by the first
user in the certificate, subject to any conditions
or limitations stated therein. Moreover, the two
products are so dissimilar that a purchaser of
one (a brief) would not be misled or mistaken
into buying the other
Asia Brewery Inc. v. CA
Facts: In 1988, san Miguel Corporation filed a
complaint against Asia Brewery Inc. for
infringement of trademark and unfair
competition on account of the latter’s Beer Pale
Pilsen or Beer na Beer product which has been
competing with the former’s San Miguel Pale
Pilsen for a share of the local beer market. The
trial court ruled in favor of Asia Brewery. The
appellate court, however, over turned the trial
court’s ruling. Asia Brewery appealed.
Issue: Whether Asia Brewery is guilty of unfair
competition, arising from the allegedly
 13
“confusing similarity” in the general appearance
of ABI’s Beer Pale Pilsen against SMC’s San
Miguel Pale Pilsen.
Held: No. The dominant feature of SMC’s
trademark is “San Miguel Pale Pilsen” while
ABI’s is “Beer Pale Pilsen”. The word “Beer”
does not appear in SMC’s product, nor the
words “San Miguel” appear in ABI’s product.
Neither the sound, spelling or appearance can
Beer Pale Pilsen be said to be confusingly
similar to San Miguel Pale Pilsen. San Miguel
does not have exclusive rights to the generic or
descriptive words “pale”and “pilsen”. Neither
does it have the exclusive right to use 320 ml.
steinie bottle with white rectangular label. The
amber color is a functional feature of the beer
bottle as the color prevents the transmission of
light and provides the maximum protection to
beer. The bottle capacity is the standard
prescribed by the Metric System Board of the
Department of Trade. The white label is the
most economical to use and presents the
strongest contrast to the bottle. San Miguel
cannot claim monopoly to such features as the
protection provided by law is confined to non-
functional features. Further, Beer Pale Pilsen is
not being passed off as San Miguel Beer Pale
Pilsen. It does not result to confusion inasmuch
as beer is ordered by brand, and is not taken
freely from supermarket shelves. The points of
dissimilarity of the products outnumber their
points of similarity. The appellate court is
correct in its finding that Asia Brewery does not
infringe upon SMC’s trademark nor does it
commit unfair competition.
McDonald’s v. L.C. Big Mak Burger, Inc.,
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.
Issue: W/N respondent corporation is liable for
trademark infringement and unfair competition.
Held: Yes. To establish trademark infringement,
the following elements must be shown: (1) the
validity of plaintiff's mark; (2) the plaintiff's
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. There is confusion of goods in this
case since respondents used the "Big Mak"
mark on the same goods, i.e. hamburger
sandwiches, that petitioners' "Big Mac" mark is
used. There is also confusion of business due to
Respondents' use of the "Big Mak" mark in the
sale of hamburgers, the same business that
petitioners are engaged in, also results in
confusion of business. 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 registered trademark owner
enjoys protection in product and market areas
that are the normal potential expansion of his
business. Furthermore, In determining
likelihood of confusion, the SC has relied on the
 14
dominancy test (similarity of the prevalent
features of the competing trademarks that
might cause confusion) over the holistic test
(consideration of the entirety of the marks as
applied to the products, including the labels and
packaging). Applying the dominancy test,
Respondents' use of the "Big Mak" mark results
in likelihood of confusion. Aurally the two marks
are the same, with the first word of both marks
phonetically the same, and the second word of
both marks also phonetically the same. Visually,
the two marks have both two words and six
letters, with the first word of both marks having
the same letters and the second word having
the same first two letters. Lastly, since Section
22 only requires the less stringent standard of
"likelihood of confusion," Petitioners' failure to
present proof of actual confusion does not
negate their claim of trademark infringement.
Mighty Corp v E.J. Gallo Winery et.al
Facts: Gallo Winery was organized under the
laws of the State of California where all its
wineries are located. It sells its products in
different countries using various trademarks,
including GALLO. The GALLO wine trademark
was registered with the Philippine Patent Office
in 1971. Despite said registration, GALLO wines
were introduced in the Philippines only in 1974
within the U.S. military facilities. In 1979, GALLO
wines saw a bigger Philippine market through
distributors and independent outlets. However,
in 1992, a distributor’s employee found GALLO
cigarettes on display in the wine cellar section
of a supermarket in Davao City. GALLO
cigarettes were products of Mighty Corp. and its
sister company, Tobacco Industries, which have
been manufacturing, selling, and distributing
GALLO cigarettes throughout the Philippines
since 1973. That same year, the Bureau of
Internal Revenue approved Tobacco Industries’
use of the GALLO 100’s cigarette mark, and
three years later or in 1976, of the GALLO filter
cigarette mark. The GALLO cigarette trademark
was registered with the Philippine Patent Office
in 1985. Gallo Winery filed suit for trademark
infringement and unfair competition] against
Mighty Corp. and Tobacco Industries, claiming
that the use of GALLO cigarettes caused
confusion on the part of the purchasing public
who had always associated GALLO with Gallo
Winery’s products, thus constituting a violation
of the Paris Convention for the Protection of
Industrial Property and Republic Act No. 166 or
the Trademark Law. The RTC decided the case
in favor of Gallo Winery, applying not only the
Paris Convention and Republic Act No. 166, but
also Republic Act No. 8293 or the Intellectual
Property Code of the Philippines, and reasoning
that GALLO cigarettes and GALLO wines were
identical, similar or related goods since they
were “forms of vice.” The Court of Appeals
affirmed the RTC decision. Mighty Corp. and
Tobacco Industries elevated the matter to the
Supreme Court.
Issue: Whether or not Gallo Winery has
exclusive right to use the trademark GALLO.
Held: a foreign corporation may have the
capacity to sue for infringement irrespective of
lack of business activity in the country but the
question of whether they have an exclusive
right over their symbol will depend on actual
use of their trademarks in the Philippines in line
with Sections 2 and 2-A of Republic Act 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.
Regasco Corp v. Petron
Facts: Petron Corporation and Pilipinas Shell are
two of the largest bulk suppliers and producers
of LPG in the Philippines. Petron is the
registered owner of the trademark GASUL and
GASUL cylinders used for its LPG products. Shell,
on the other hand, is the authorized user of the
trademark SHELLANE in connection with the
production, sale and distribution of its LPGs.
Petron and Shell received reports that certain
entities were engaged in the unauthorized
refilling, sale and distribution of LPG cylinders
 15
bearing their registered trade names and
trademarks. The National Bureau of
Investigation acted upon the letter-complaint of
Petron and Shell and conducted an undercover
operation wherein several NBI agents posed as
customers of these LPG refillers, including
Republic Gas Corporation (REGASCO). After the
agents had their empty LPG containers refilled
by REGASCO, they were able to obtain a
warrant to search REGASCO’s premises and
confiscate several empty and filled SHELLANE
and GASUL cylinders.
Issue: W/N Regasco Corp is liable for unfair
competition.
Held: SC found REGASCO liable not only for
trademark infringement but also unfair
competition. REGASCO refilled and sold its LPG
containers bearing the registered marks of
Petron and Shell. The Court observed that the
consumers may be misled into believing that
the LPGs contained in the cylinders bearing the
marks “GASUL” and “SHELLANE” are those
goods or products of REGASCO when, in fact,
they are not. On the other hand, trademark
infringement, which consists of the
unauthorized use of a container bearing a
registered trademark in connection with the
sale, distribution or advertising of goods and
services which is likely to cause confusion,
mistake or deception among the buyers or
consumers, was also present in this case as
REGASCO refilled the marked containers
without Petron and Shell’s consent. The High
Court allowed the criminal prosecution of
REGASCO’s corporate officers to proceed.
Societe des Produits Nestle S.A. v. Martin t. Dy
Facts: Petitioner is a foreign corporation
organized under the laws of Switzerland and
manufactures food products and beverages. A
Certificate of Registration was issued on April 7,
1969 by the BPTTT which as a result Nestle
owns the “NAN” trademark for its line of infant
powdered milk (PRE-NAN, NAN-H.A., NAN-1,
and NAN-2). It is classified under Class-6,
“diactetic preparations for infant feeding”.
Nestle sells its NAN products throughout the
Philippines and invested substantial amount of
resources for its marketing. Respondent owns
5M Enterprises which imports Sunny Boy
powdered milk from Australia, and repacks the
milk into plastic bags bearing the name NANNY,
and is also classified as Class-6 “full cream milk
for adults”. Respondent sells the milk in parts of
Mindanao. In 1985, petitioner requested
respondent to refrain from using NANNY and to
stop infringing the NAN trademark. Respondent
did not act which forced Nestle to file in March
1, 1990 in the RTC of Dumaguete. The RTC
stated that considering that NANNY belongs to
the same class as that of NAN because both are
food products, the defendant’s unregistered
trade mark NANNY should be held an
infringement to plaintiff’s registered trademark
NAN because defendant’s use of NANNY would
imply that it came from the manufacturer of
NAN
ISSUE: Whether or not respondent is liable for
infringement.
HELD: the SC finds that NANNY is confusingly
similar to NAN as it is the prevalent feature of
petitioner’s infant powdered milk (PRE-NAN,
NAN-H.A.., NAN-1 and NAN-2). NANNY contains
the prevalent feature NAN, and the first three
letters of NANNY are exactly the same as the
letters of NAN. The aural effect is confusingly
similar.
Victorio P. Diaz v. People
Facts: Levi Strauss Philippines, Inc. (Levi’s
Philippines) is a licensee of Levi’s. After
receiving information that Diaz was selling
counterfeit LEVI’S 501 jeans in his tailoring
shops in Almanza and Talon, Las Piñas City,
Levi’s 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 limitations of LEVI’S 501. Armed
 16
with search warrants, NBI agents searched the
tailoring shops of Diaz and seized several fake
LEVI’S 501 jeans from them. Levi’s 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 LEVI’S
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
LEVI’S 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 Levi’s 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 Levi’s 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 Levi’s
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 Levi’s Philippines, which
included LEVI’S 501, were very popular in the
Philippines. The consuming public knew that
the original LEVI’S 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 Diaz’s 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
LEVI’S 501, or were manufactured by other
brands of jeans.
Skechers U.S.A. Inc. v. Inter Pacific Industrial
Trading Corp.
Facts: Skechers filed a criminal case for
trademark infringement against several store-
owners that were selling shoes branded as
“Strong” and bearing a similar “S” logo. The
Regional Trial Court (RTC) issued search
warrants, allowing the National Bureau of
Investigation (NBI) to raid the stores and
confiscate 6,000 pairs of shoes.
The accused moved to quash the warrants,
saying that there was no confusing similarity
between the “Skechers” and the “Strong”
brands. The RTC granted the motion to quash
and ordered the NBI to return the seized goods.
The court said that the two brands had glaring
differences and that an ordinary prudent
consumer would not mistake one for the other.
Issue: Did the accused commit trademark
infringement?
Yes, the accused is guilty of trademark
infringement.
Both RTC and CA used the Holistic Test to rule
that there was no infringement. Both courts
argued the following differences:
 The mark “S” found in Strong Shoes is
not enclosed in an “oval design.”
 The word “Strong” is conspicuously
placed at the backside and insoles.
 The hang tags and labels attached to
the shoes bears the word “Strong” for
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respondent and “Skechers U.S.A.” for
private complainant;
 Strong shoes are modestly priced
compared to the costs of Skechers
Shoes.
Also using the Holistic Test, the SC corrected the
lower courts and ruled that the striking
similarities between the products outweigh the
differences argued by the respondents:
 Same color scheme of blue, white and
gray;
 Same wave-like pattern on the midsole
and the outer sole;
 Same elongated designs at the side of
the midsole near the heel;
 Same number of ridges on the outer
soles (five at the back and six in front);
 Same location of the stylized “S”
symbol;
 The words "Skechers Sport Trail" at the
back of the Skechers shoes and "Strong
Sport Trail" at the back of the Strong
shoes, using the same font, color, size,
direction and orientation;
 Same two grayish-white semi-
transparent circles on top of the heel
collars.
The features and overall design of the two
products are so similar that there is a high
likelihood of confusion. Two products do not
need to be identical, they just need to be similar
enough to confuse the ordinary buyer in order
to constitute trademark infringement. Also, the
difference in price cannot be a defense in a case
for trademark infringement.
Berris Agricultural Co. Inc. v. Norvy Abyadang
FACTS: Abyadang filed a trademark application
with the IPO for the mark "NS D-10 PLUS" for
use in connection with Fungicide. Berris
Agricultural Co., Inc. filed an opposition against
the trademark citing that it is confusingly similar
with their trademark, "D-10 80 WP" which is
also used for Fungicide also with the same
active ingredient. The IPO ruled in favor of
Berries but on appeal with the CA, the CA ruled
in favor of Abyadang.
ISSUE: Whether there is confusing similarity
between the trademarks.
RULING:
Yes. The SC found that both products have the
component D-10 as their ingredient and that it
is the dominant feature in both their marks.
Applying the Dominancy Test, Abyadang's
product is similar to Berris' and that confusion
may likely to occur especially that both in the
same type of goods. Also using the Holistic Test,
it was more obvious that there is likelihood of
confusion in their packaging and color schemes
of the marks. The SC states that buyers would
think that Abyadang's product is an upgrade of
Berris'
Dermaline Inc. v. Myra Pharmaceuticals Inc.
Facts: Dermaline filed with the IPO an
application to register the trademark
“Dermaline.” Myra opposed this alleging that
the trademark resembles its trademark
“Dermalin” and will cause confusion, mistake
and deception to the purchasing public.
“Dermalin” was registered way back 1986 and
was commercially used since 1977. Myra claims
that despite attempts of Dermaline to
differentiate its mark, the dominant feature is
the term “Dermaline” to which the first 8 letters
were identical to that of “Dermalin.” The
pronunciation for both is also identical. Further,
both have 3 syllables each with identical sound
and appearance.
Issue: W/N the IPO should allow the
registration of the trademark “Dermaline.”
Held: As Myra correctly posits, it has the right
under Section 147 of R.A. No. 8293 to prevent
third parties from using a trademark, or similar
signs or containers for goods or services,
without its consent, identical or similar to its
registered trademark, where such use would
result in a likelihood of confusion. In
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determining confusion, case law has developed
two (2) tests, the Dominancy Test and the
Holistic or Totality Test. the IPO declared that
both confusion of goods and service and
confusion of business or of origin were
apparent in both trademarks. While it is true
that the two marks are presented differently,
they are almost spelled in the same way, except
for Dermaline’s mark which ends with the letter
"E," and they are pronounced practically in the
same manner in three (3) syllables, with the
ending letter "E" in Dermaline’s mark
pronounced silently. Thus, when an ordinary
purchaser, for example, hears an advertisement
of Dermaline’s applied trademark over the
radio, chances are he will associate it with
Myra’s. When one applies for the registration of
a trademark or label which is almost the same
or that very closely resembles one already used
and registered by another, the application
should be rejected and dismissed outright, even
without any opposition on the part of the
owner and user of a previously registered label
or trademark. Further, Dermaline’s stance that
its product belongs to a separate and different
classification from Myra’s products with the
registered trademark does not eradicate the
possibility of mistake on the part of the
purchasing public to associate the former with
the latter, especially considering that both
classifications pertain to treatments for the skin
Prosource International Inc. v. Horphang
Research Mgt SA
FACTS:
Respondent is a corporation and owner of
trademark PYCNOGENOL, a food. Respondent
later discovered that petitioner was also
distributing a similar food supplement using the
mark PCO-GENOLS since 1996. This prompted
respondent to demand that petitioner cease
and desist from using the aforesaid mark.
Respondent filed a Complaint for Infringement
of Trademark with Prayer for Preliminary
Injunction against petitioner, in using the name
PCO-GENOLS for being confusingly similar.
Petitioner appealed otherwise. The RTC decided
in favor of respondent. It observed that
PYCNOGENOL and PCO-GENOLS have the same
suffix "GENOL" which appears to be merely
descriptive and thus open for trademark
registration by combining it with other words
and concluded that the marks, when read,
sound similar, and thus confusingly similar
especially since they both refer to food
supplements. On appeal to the CA, petitioner
failed to obtain a favorable decision. The
appellate court explained that under the
Dominancy or the Holistic Test, PCO-GENOLS is
deceptively similar to PYCNOGENOL.
ISSUE: Whether the names are confusingly
similar.
RULING:
Yes. There is confusing similarity and the
petition is denied. SC applied the Dominancy
Test.Both the words have the same suffix
"GENOL" which on evidence, appears to be
merely descriptive and furnish no indication of
the origin of the article and hence, open for
trademark registration by the plaintiff through
combination with another word or phrase.
When the two words are pronounced, the
sound effects are confusingly similar not to
mention that they are both described by their
manufacturers as a food supplement and thus,
identified as such by their public consumers.
And although there were dissimilarities in the
trademark due to the type of letters used as
well as the size, color and design employed on
their individual packages/bottles, still the close
relationship of the competing products’ name in
sounds as they were pronounced, clearly
indicates that purchasers could be misled into
believing that they are the same and/or
originates from a common source and
manufacturer
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