A.
Standard for Registrability since 1933 the name "Selecta" as the name of its restaurant and
The mark must be distinct in order for it to be
registrable. It must not be generic.
B. What Marks May Be Registered?
Etepha v. Director of Patents, 16 SCRA 495
“Tussin” is merely descriptive; it is generic; it furnishes to the
buyer no indication of the origin of the goods; it is open for
appropriation by anyone. It is accordingly barred from registration
as a trademark. But while “Tussin” by itself cannot thus be used
exclusively to identify one’s goods, it may properly become the
subject of a trademark “by combination with another word or
phrase.”
Ang v. Teodoro, 74 Phil 50
The phrase “Ang Tibay” is an exclamation denoting administration
of strength or durability. For instance, one who tries hard but fails
to break an object exclaims, “Ang tibay!” (How strong!”) The
phrase “ang tibay” is never used adjectively to define or describe
an object. One does not say, “ang tibay sapatos” or “sapatos ang
tibay” is never used adjectively to define or describe an object.
One does not say, “ang tibay sapatos” or “sapatos ang tibay” to
mean “durable shoes,” but “matibay na sapatos” or “sapatos na
matibay.” From all of this we deduce that “Ang Tibay” is not a
descriptive term within the meaning of the Trade-Mark Law but
rather a fanciful or coined phrase which may properly and legally
be appropriated as a trademark or tradename. In this connection
we do not fail to note that when the petitioner herself took the
trouble and expense of securing the registration of these same
words as a trademark of her products she or her attorney as well
as the Director of Commerce was undoubtedly convinced that said
words (Ang Tibay) were not a descriptive term and hence could
be legally used and validly registered as a trademark.
In view of the conclusion we have reached upon the first
assignment of error, it is unnecessary to apply here the doctrine
of “secondary meaning” in trade-mark parlance. This doctrine is
to the effect that a word or phrase originally incapable of exclusive
appropriation with reference to an article of the market, because
geographically or otherwise descriptive, might nevertheless have
been used so long and so exclusively by one producer with
reference to his article that, in that trade and to that branch of
the purchasing public, the word or phrase has come to mean that
the article was his product. We have said that the phrase “Ang
Tibay,” being neither geographic nor descriptive, was originally
capable of exclusive appropriation as a trade-mark. But were it
not so, the application of the doctrine of secondary meaning made
by the Court of Appeals could nevertheless be fully sustained
because, in any event, by respondent’s long and exclusive use of
said phrase with reference to his products and his business, it has
acquired a proprietary connotation.
Arce Sons v. Selecta Biscuits, 1 SCRA 253
A 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. Where the petitioner and its predecessor have used
as the mark for its dairy and bakery products, the conclusion is
that it has used that name as a trademark to distinguish its
products from those sold by other merchants or businessmen. The
Director of Patents erred in holding that the petitioner used the
word merely as a tradename. The word "Selecta" may be an
ordinary or common word in the sense that it may be used or
employed by anyone in promoting his business or enterprise, but
once adopted 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 the user's products
and business. A word or phrase originally incapable of exclusive
appropriation with reference to an article on the market, because
geographically or otherwise descriptive, might neverthless have
been used so long and so exclusively by one producer with
reference to his article that, in that trade and to that branch of
the purchasing public, the word or phrase has come to mean that
the article was his product.
Asia Brewery v. CA, 224 SCRA 437 (1993)
The fact that the words pale pilsen are part of ABI’s trademark
does not constitute an infringement of SMC’s trademark; SAN
MIGUEL PALE PILSEN, for “pale pilsen” are generic words
descriptive of the color (“pale”), of a type of beer (“pilsen”),
which is a light bohemian beer with a strong hops flavor that
originated in the City of Pilsen in Czechoslovakia and became
famous in the Middle Ages. “Pilsen” is a “primarily geographically
descriptive word,” hence, non-registerable and not appropriable
by any beer manufacturer.
Emerald Garment Manufacturing v. CA, 251 SCRA 600
Surnames are not registrable. Sec. 2. What are registrable
Trade-marks, trade-names, and service marks owned by
persons, corporations, partnerships or associations domiciled in
the Philippines and by persons, corporations, partnerships, or
associations domiciled in any foreign country may be registered
in accordance with the provisions of this act: Provided, That said
trade-marks, trade-names, or service marks are actually in use
in commerce and services not less than two months in the
Philippines before the time the applications for registration are
filed: And Provided, further, That the country of which the
applicant for registration is a citizen grants by law substantially
similar privileges to citizens of the Philippines, and such fact is
officially certified, with a certified true copy of the foreign law
translated into the English language, by the government of the
foreign country to the Government of the Republic of the
Philippines. “LEE” is primarily a surname. Private respondent
cannot, therefore, acquire exclusive ownership over and singular
use of said term . . . It has been held that a personal name or
surname may not be monopolized as a trademark or tradename
as against others of the same name or surname. For in the
absence of contract, fraud, or estoppel, any man may use his
name or surname in all legitimate ways. Thus, “Wellington” is a
surname, and its first user has no cause of action against the
junior user of “Wellington” as it is incapable of exclusive
appropriation.
Fredco Manufacturing Corporation V. President And
Fellows Of Harvard College (Harvard University), G.R.
No. 185917, June 1, 2011
Section 4(a) of R.A. No. 166 is identical to Section 2(a) of the
Lanham Act, the trademark law of the United States. These
provisions are intended to protect the right of publicity of famous
individuals and institutions from commercial exploitation of their
goodwill by others. What Fredco has done in using the mark
“Harvard” and the words “Cambridge, Massachusetts,” “USA” to
evoke a “desirable aura” to its products is precisely to exploit
commercially the goodwill of Harvard University without the
latter’s consent. This is a clear violation of Section 4(a) of R.A. No.
166. Under Section 17(c) of R.A. No. 166, such violation is a
ground for cancellation of Fredco’s registration of the mark
“Harvard” because the registration was obtained in violation of
Section 4 of R.A. No. 166.
“Harvard” is the trade name of the world famous Harvard
University, and it is also a trademark of Harvard University. Under
Article 8 of the Paris Convention, as well as Section 37 of R.A. No.
166, Harvard University is entitled to protection in the Philippines
of its trade name “Harvard” even without registration of such
trade name in the Philippines. This means that no educational
entity in the Philippines can use the trade name “Harvard” without
the consent of Harvard University. Likewise, no entity in the
Philippines can claim, expressly or impliedly through the use of
the name and mark “Harvard,” that its products or services are
authorized, approved, or licensed by, or sourced from, Harvard
University without the latter’s consent.
Shang Properties Realty Corp v St. Francis Development
Corp.,GR No. 190706, 21 July 2014.
The CA’s contrary conclusion was faultily premised on its
impression that respondent had the right to the exclusive use of
the mark “ST. FRANCIS,” for which the latter had purportedly
established considerable goodwill. What the CA appears to have
disregarded or been mistaken in its disquisition, however, is the
geographically-descriptive nature of the mark “ST. FRANCIS”
which thus bars its exclusive appropriability, unless a secondary
meaning is acquired. As deftly explained in the U.S. case of Great
Southern Bank v. First Southern Bank: “[d]es crip tive
geographical terms are in the ‘public domain’ in the sense that
every seller should have the right to inform customers of the
geographical origin of his goods. A ‘geographically descriptive
term’ is any noun or adjective that designates geographical
location and would tend to be regarded by buyers as descriptive
of the geographic location of origin of the goods or services. A
geographically descriptive term can indicate any geographic
location on earth, such as continents, nations, regions, states,
cities, streets and addresses, areas of cities, rivers, and any other
location referred to by a recognized name. In order to determine
whether or not the geographic term in question is descriptively
used, the following question is relevant: (1) Is the mark the name
of the place or region from which the goods actually come? If the
answer is yes, then the geographic term is probably used in a
descriptive sense, and secondary meaning is required for
protection.” Unless secondary meaning has been established, a
geographically-descriptive mark, due to its general public domain
classification, is perceptibly disqualified from trademark
registration.
C. Application for Registration
1. Application
Sec. 3, IPC
2. Assignment of Application Number and Filing
Date
3. Examination
Sec. 133 (and its sub-paragraphs), IPC
4. Publication
Bata Industries v. CA, 114 SCRA 318
A slight goodwill generated by a foreign company before World
War II can be considered an abandoned after more than 35 years.
We are satisfied from the evidence that any slight goodwill
generated by the Czechoslovakian product during the
Commonwealth years was completely abandoned and lost in the
more than 35 years that have passed since the liberation of Manila
from the Japanese troops. A foreign company selling a brand
(BATA) of shoes abroad but not in the Philippines has no goodwill
that would be damaged by registration of the same trademark in
favor of a domestic corporation which has been using it for years
here.
Mirpuri v. Court of Appeals, 318 SCRA 516 (1999)
The opposition was not barred by res judicata as the two cases
do not involve the same causes of action, same issues, and were
based on different statutes. In the instant case, the issue of
ownership of the trademark "Barbizon" was not raised in IPC No.
686. IPC No. 2049 raised the issue of ownership of the trademark,
the first registration and use of the trademark in the United States
and other countries, and the international recognition and
reputation of the trademark established by extensive use and
advertisement of private respondent's products for over forty
years here and abroad. These are different from the issues of
confusing similarity and damage in IPC No. 686. The issue of prior
use may have been raised in IPC No. 686 but this claim was limited
to prior use in the Philippines only. Prior use in IPC No. 2049 stems
from private respondent's claim as originator of the word and
symbol "Barbizon,"as the first and registered user of the mark
attached to its products which have been sold and advertised
worldwide for a considerable number of years prior to petitioner's
first application for registration of her trademark in the Philippines.
Indeed, these are substantial allegations that raised new issues
and necessarily gave private respondent a new cause of action.
Res judicata does not apply to rights, claims or demands, although
growing out of the same subject matter, which constitute separate
or distinct causes of action and were not put in issue in the former
action.
It is also noted that the oppositions in the first and second cases
are based on different laws. The opposition in IPC No. 686 was
based on specific provisions of the Trademark Law, i.e., Section 4
(d) on confusing similarity of trademarks and Section 8 on the
requisite damage to file an opposition to a petition for registration.
The opposition in IPC No. 2049 invoked the Paris Convention,
particularly Article 6bis thereof, E.O. No. 913 and the two
Memoranda of the Minister of Trade and Industry. This opposition
also invoked Article 189 of the Revised Penal Code which is a
statute totally different from the Trademark Law. Causes of action
which are distinct and independent from each other, although
arising out of the same contract, transaction, or state of facts,
may be sued on separately, recovery on one being no bar to
subsequent actions on others. The mere fact that the same relief
is sought in the subsequent action will not render the judgment
in the prior action operative as res judicata, such as where the
two actions are based on different statutes. Res judicata therefore
does not apply to the instant case and respondent Court of
Appeals did not err in so ruling.
Taiwan Kolin Corporation v. Kolin Electronics,
G.R. No. 209843. March 25, 2015
It cannot be stressed enough that the products involved in the
case at bar are, generally speaking, various kinds of electronic
products. These are not ordinary consumable household items,
like catsup, soy sauce or soap which are of minimal cost. The
products of the contending parties are relatively luxury items not
easily considered affordable. Accordingly, the casual buyer is
predisposed to be more cautious and discriminating in and would
prefer to mull over his purchase. Confusion and deception, then,
is less likely.
6. Issuance and Publication of Certificate
Sections 136 and 137, IPC
7. Duration of Certificate
Sec. 145, IPC
8. Voluntary Cancellation of Certificate
Sec. 140, IPC
9. Correction of Mistakes
Sections 142 and 143, IPC
10. Renewal
Sec. 146 (and its sub-paragraphs), IPC
H. Madrid Protocol
I. Rights Conferred
Sec. 147 (and its sub-paragraphs), IPC as
amended by RA No. 9502 (Universally Accessible
Cheaper and Quality Medicines Act of 2008)
Is there infringement even if the goods are non-
competing?
Ang Tibay v. Teodoro, 74 Phil 50
The courts have come to realize that there can be unfair
competition or unfair trading even if the goods are non-
competing, and that such unfair trading can cause injury or
damage to the first user of a given trade-mark, first, by prevention
of the natural expansion of his business and, second, by having
his business reputation confused with and put at the mercy of the
second user. Then noncompetitive products are sold under the
same mark, the gradual whittling away or dispersion of the
identity and hold upon the public mind of the mark created by its
first user, inevitably results. The original owner is entitled to
the preservation of the valuable link between him and the
public that has been created by his ingenuity and the
merit of his wares or services. Experience has
demonstrated that when a well-known trade-mark is
adopted by another even for a totally different class of
goods, it is done to get the benefit of the reputation and
advertisements of the originator of said mark, to convey
to the public a false impression of some supposed
connection between the manufacturer of the article sold
under the original mark and the new articles being
tendered to the public under the same or similar mark. As
trade has developed and commercial changes have come about,
the law of unfair competition has expanded to keep pace with the
times and the element of strict competition in itself has ceased to
be the determining factor. The owner of a trade-mark or trade-
name has a property right in which he is entitled to protection,
since there is damage to him from confusion of reputation or
goodwill in the mind of the public as well as from confusion of
goods. The modern trend is to give emphasis to the unfairness of
the acts and to classify and treat the issue as a fraud.
We think reasonable men may not disagree that shoes and shirts
are not as unrelated as fountain pens and razor blades, for
instance. The mere relation or association of the articles is not
controlling. As may readily be noted from what we have
heretofore said, the proprietary connotation that a trade-mark or
trade-name has acquired is of more paramount consideration. The
Court of Appeals found in this case that by uninterrupted and
exclusive use since 1910 of respondent's registered trade-mark on
slippers and shoes manufactured by him, it has come to indicate
the origin and ownership of said goods. It is certainly not
farfetched to surmise that the selection by petitioner of the same
trade-mark for pants and shirts was motivated by a desire to get
a free ride on the reputation and selling power it has acquired at
the hands of the respondent.
Chua Che v. Philippine Patent Office, 13 SCRA 67
(1965).
… the fact that appellee has not yet used the trademark "X-7" on
granulated soap, the product on which appellant wants to use the
said trademark. The circumstance of non-actual use of the mark
on granulated soap by appellee, does not detract from the fact
that he has already a right to such a trademark and should,
therefore, be protected. The observation of the Director of Patents
to the effect that "the average purchasers are likely to associate
X-7 laundry soap with X-7 perfume, lipstick and nail polish or to
think that the products have common origin or sponsorship," is
indeed well taken. It has been pointed out by appellant that the
product upon which the trademark X-7 will be used (laundry soap)
is different from those of appellee's, and therefore no
infringement and/or confusion may result. We find no merit in the
above contention, for it has been held that while it is no longer
necessary to establish that the goods of the parties possess the
same descriptive properties, as previously required under the
Trade Mark Act of 1905, registration of a trademark should be
refused in cases where there is a likelihood of confusion, mistake,
or deception, even though the goods fall into different categories.
(Application of Sylvan Sweets Co., 205 F. 2nd, 207.) The products
of appellee are common household items nowadays, in the same
manner as laundry soap. The likelihood of purchasers to associate
those products to a common origin is not far-fetched. Both from
the standpoint of priority of use and for the protection of the
buying public and, of course, appellee's rights to the trademark
"X-7", it becomes manifest that the registration of said trademark
in favor of applicant-appellant should be denied.
Sta. Ana v. Maliwat, 24 SCRA 108
Modern law recognizes that the protection to which the owner of
a trademark mark is entitled is not limited to guarding his goods
or business from actual market competition with identical or
similar products of the parties, but extends to all cases in which
the use by a junior appropriator of a trademark or tradename is
likely to lead to a confusion of source, as where prospective
purchasers would be misled into thinking that the complaining
party has extended his business into the field or is in any way
connected with the activities of the infringer; or when it forestalls
the normal potential expansion of his business.
Mere dissimilarity of goods should not preclude relief where the
junior user's goods are not too different or remote from any that
the owner would be likely to make or sell; and in the present case,
wearing apparel is not so far removed from shoes as to preclude
relief, any more than the pancake flour is from syrup or sugar
cream (Aunt Jemima Mills Co. vs. Rigney & Co., LRA 1918 C 1039),
or baking powder from baking soda (Layton Pure Food Co. vs.
Church & Co., 182 Fed. 35), or cosmetics and toilet goods from
ladies' wearing apparel and costume jewelry (Lady Esther Ltd. vs.
Lady Esther Corset Shoppe, 148 ALR 6). More specifically,
manufacturers of men's clothing were declared entitled to
protection against the use of their trademark in the sale of hats
and caps [Rosenberg Bros. vs. Elliott, 7 Fed. (2d) 962] and of
ladies shoes (Forsythe & Co. vs. Forsythe Shoe Corp., 254 NYS
584). In all these cases, the courts declared the owner of a
trademark from the first named goods entitled to exclude use of
its trademark on the related class of goods above-referred to.
Note that the provision does not require that the articles of
manufacture of the previous user and the late user of the mark
should possess the same descriptive properties or should fall into
the same categories as to bar the latter from registering his mark
in the principal register (Chua Che vs. Phil. Patent Office, et al., L-
18337, 30 Jan. 1965.4 citing Application of Sylvan Sweets Co., 205
F. 2nd, 207).5 Therefore, whether or not shirts and shoes have
the same descriptive properties, or whether or not it is the
prevailing practice or the tendency of tailors and haberdashers to
expand their business into shoes making, are not controlling. The
meat of the matter is the likelihood of confusion, mistake or
deception upon purchasers of the goods of the junior user of the
mark and the goods manufactured by the previous user.
Philippine Refining Company v. Ng Sam, 115
SCRA 472
A trademark is designed to Identify the user. But it should be so
distinctive and sufficiently original as to enable those who come
into contact with it to recognize instantly the Identity of the user.
" It must be affirmative and definite, significant and distinctive,
capable to indicate origin."
It is evident that "CAMIA" as a trademark is far from being
distinctive. By itself, it does not Identify petitioner as the
manufacturer or producer of the goods upon which said mark is
used, as contra-distinguished to trademarks derived from coined
words such as "Rolex", "Kodak" or "Kotex". It has been held that
if a mark is so commonplace that it cannot be readily distinguished
from others, then it is apparent that it cannot Identify a particular
business; and he who first adopted it cannot be injured by any
subsequent appropriation or imitation by others, and the public
will not be deceived." 5
The trademark "CAMIA" is used by petitioner on a wide range of
products: lard, butter, cooking oil, abrasive detergents, polishing
materials and soap of all kinds. Respondent desires to use the
same on his product, ham. While ham and some of the products
of petitioner are classified under Class 47 (Foods and Ingredients
of Food), this alone cannot serve as the decisive factor in the
resolution of whether or not they are related goods. Emphasis
should be on the similarity of the products involved and not on
the arbitrary classification or general description of their
properties or characteristics.
The observation and conclusion of the Director of Patents are
correct. The particular goods of the parties are so unrelated that
consumers would not in any probability mistake one as the source
or origin of the product of the other. "Ham" is not a daily food fare
for the average consumer. One purchasing ham would exercise a
more cautious inspection of what he buys on account of it price.
Seldom, if ever, is the purchase of said food product delegated to
household helps, except perhaps to those who, like the cooks, are
expected to know their business. Besides, there can be no
likelihood for the consumer of respondent's ham to confuse its
source as anyone but respondent. The facsimile of the label
attached by him on his product, his business name "SAM'S HAM
AND BACON FACTORY" written in bold white letters against a
reddish orange background, is certain to catch the eye of the class
of consumers to which he caters.
Esso Standard Eastern, Inc. v. CA, 116 SCRA 336
... the goods are obviously different from each other with
"absolutely no iota of similitude" as stressed in respondent court's
judgment. They are so foreign to each other as to make it unlikely
that purchasers would think that petitioner is the manufacturer of
respondent's goods.ït¢@lFº 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 trademark by others on unrelated
articles of a different kind.
Another factor that shows that the goods involved are non-
competitive and non-related is the appellate court's finding that
they flow through different channels of trade, thus: "The products
of each party move along and are disposed through different
channels of distribution. The (petitioner's) products are distributed
principally through gasoline service and lubrication stations,
automotive shops and hardware stores. On the other hand, the
(respondent's) cigarettes are sold in sari-sari stores, grocery
stores, and other small distributor outlets. (Respondent's)
cigarettes are even peddled in the streets while (petitioner's)
'gasul' burners are not. Finally, there is a marked distinction
between oil and tobacco, as well as between petroleum and
cigarettes. Evidently, in kind and nature the products of
(respondent) and of (petitioner) are poles apart."
Respondent court correctly ruled that considering the general
appearances of each mark as a whole, the possibility of any
confusion is unlikely. A comparison of the labels of the samples of
the goods submitted by the parties shows a great many
differences on the trademarks used. As pointed out by respondent
court in its appealed decision, "(A) witness for the plaintiff, Mr.
Buhay, admitted that the color of the "ESSO" used by the plaintiff
for the oval design where the blue word ESSO is contained is the
distinct and unique kind of blue. In his answer to the trial court's
question, Mr. Buhay informed the court that the plaintiff never
used its trademark on any product where the combination of
colors is similar to the label of the Esso cigarettes," and "Another
witness for the plaintiff, Mr. Tengco, testified that generally, the
plaintiff's trademark comes all in either red, white, blue or any
combination of the three colors. It is to be pointed out that not
even a shade of these colors appears on the trademark of the
appellant's cigarette. The only color that the appellant uses in its
trademark is green."
Hickok Manufacturing Co. v. CA, 116 SCRA 387
It is established doctrine, as held in the above-cited cases, that
"emphasis should be on the similarity of the products involved and
not on the arbitrary classification or general description of their
properties or characteristics" and that "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 trademark by others on
unrelated articles of a different kind." Taking into account the
facts of record that petitioner, a foreign corporation registered the
trademark for its diverse articles of men's wear such as wallets,
belts and men's briefs which are all manufactured here in the
Philippines by a licensee Quality House, Inc. (which pays a royalty
of 1-1/2 % of the annual net sales) but are so labelled as to give
the misimpression that the said goods are of foreign (stateside)
manufacture and that respondent secured its trademark
registration exclusively for shoes (which neither petitioner nor the
licensee ever manufactured or traded in) and which are clearly
labelled in block letters as "Made in Marikina, Rizal, Philippines,"
no error can be attributed to the appellate court in upholding
respondent's registration of the same trademark for his unrelated
and non-competing product of Marikina shoes.
Faberge v. IAC, 215 SCRA 316
Having thus reviewed the laws applicable to the case before Us,
it is not difficult to discern from the foregoing statutory
enactments that private respondent may be permitted to register
the trademark "BRUTE" for briefs produced by it notwithstanding
petitioner's vehement protestations of unfair dealings in
marketing its own set of items which are limited to: after-shave
lotion, shaving cream, deodorant, talcum powder and toilet soap.
In as much as petitioner has not ventured in the production of
briefs, an item which is not listed in its certificate of registration,
petitioner can not and should not be allowed to feign that private
respondent had invaded petitioner's exclusive domain. To be sure,
it is significant that petitioner failed to annex in its Brief the so-
called "eloquent proof that petitioner indeed intended to expand
its mark "BRUT" to other goods" (Page 27, Brief for the Petitioner;
Page 202, Rollo). Even then, a mere application by petitioner in
this aspect does not suffice and may not vest an exclusive right in
its favor that can ordinarily be protected by the Trademark Law.
In short, paraphrasing Section 20 of the Trademark Law as
applied to the documentary evidence adduced by petitioner, the
certificate of registration issued by the Director of Patents can
confer upon petitioner the exclusive right to use its own symbol
only to those goods specified in the certificate, subject to any
conditions and limitations stated therein. This basic point is
perhaps the unwritten rationale of Justice Escolin in Philippine
Refining Co., Inc. vs. Ng Lam (115 SCRA 472 [1982]), when he
stressed the principle enunciated by the United States Supreme
Court in American Foundries vs. Robertson (269 U.S. 372, 381, 70
L ed 317, 46 Sct. 160) that one who has adopted and used a
trademark on his goods does not prevent the adoption and use of
the same trademark by other for products which are of different
description. Verily, this Court had the occasion to observe in the
1966 case of George W. Luft Co., Inc. vs. Ngo Guan (18 SCRA 944
[1966]) that no serious objection was posed by the petitioner
therein since the applicant utilized the emblem "Tango" for no
other product than hair pomade in which petitioner does not deal.
Canon Kabushiki v. CA, 336 SCRA 266 (2000)
The term "trademark" is defined by RA 166, the Trademark Law,
as including "any word, name, symbol, emblem, sign or device or
any combination thereof adopted and used by a manufacturer or
merchant to identify his goods and distinguish them for those
manufactured, sold or dealt in by others." Tradename is defined
by the same law as including "individual names and surnames,
firm names, tradenames, devices or words used by
manufacturers, industrialists, merchants, agriculturists, and
others to identify their business, vocations, or occupations; the
names or titles lawfully adopted and used by natural or juridical
persons, unions, and any manufacturing, industrial, commercial,
agricultural or other organizations engaged in trade or
commerce." Simply put, a trade name refers to the business and
its goodwill; a trademark refers to the goods.
Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)
Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one another. A
trademark is any visible sign capable of distinguishing the
goods(trademark) or services (service mark) of an enterprise and
shall include a stamped or marked container of goods. In relation
thereto, a trade name means the name or designation identifying
or distinguishing an enterprise. Meanwhile, the scope of a
copyright is confined to literary and artistic works which are
original intellectual creations in the literary and artistic domain
protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a
problem in any field of human activity which is new, involves an
inventive step and is industrially applicable.
Under the circumstances, the Court of Appeals correctly cited
Faberge Inc. vs. Intermediate Appellate Court, where we,
invoking Section 20 of the old Trademark Law, ruled that the
certificate of registration issued by the Director of Patents can
confer (upon petitioner) the exclusive right to use its own symbol
only to those goods specified in the certificate, subject to any
conditions and limitations specified in the certificate x x x. One
who has adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by others
for products which are of a different description. Faberge, Inc.
was correct and was in fact recently reiterated in Canon Kabushiki
Kaisha vs. Court of Appeals.
Assuming arguendo that Poster Ads could validly qualify as a
trademark, the failure of P & D to secure a trademark registration
for specific use on the light boxes meant that there could not have
been any trademark infringement since registration was an
essential element thereof.
246 Corporation v. Daway, 416 SCRA 315 (2003)
Section 123.1(f) is clearly in point because the Music Lounge of
petitioner is entirely unrelated to respondents business involving
watches, clocks, bracelets, etc. However, the Court cannot yet
resolve the merits of the present controversy considering that the
requisites for the application of Section 123.1(f), which constitute
the kernel issue at bar, clearly require determination facts of
which need to be resolved at the trial court. The existence or
absence of these requisites should be addressed in a full blown
hearing and not on a mere preliminary hearing. The respondent
must be given ample opportunity to prove its claim, and the
petitioner to debunk the same.
Societe Des Produits Nestle v. CA, 356 SCRA 207
(2001)
It must be emphasized that the products bearing the trademarks
in question are "inexpensive and common" household items
bought off the shelf by "undiscerningly rash" purchasers. As such,
if the ordinary purchaser is "undiscerningly rash", then he would
not have the time nor the inclination to make a keen and
perceptive examination of the physical discrepancies in the
trademarks of the products in order to exercise his choice.
...
In addition, 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.
Levi Strauss v. Clinton Apparelle, GR No. 138900,
20 September 2005
However, attention should be given to the fact that petitioners
registered trademark consists of two elements: (1) the word mark
Dockers and (2) the wing-shaped design or logo. Notably, there
is only one registration for both features of the trademark giving
the impression that the two should be considered as a single unit.
Clinton Apparelles trademark, on the other hand, uses the
Paddocks word mark on top of a logo which according to
petitioners is a slavish imitation of the Dockers design. The two
trademarks apparently differ in their word marks (Dockers and
Paddocks), but again according to petitioners, they employ similar
or identical logos. It could thus be said that respondent only
appropriates petitioners logo and not the word mark Dockers; it
uses only a portion of the registered trademark and not the whole.
Given the single registration of the trademark Dockers and Design
and considering that respondent only uses the assailed device but
a different word mark, the right to prevent the latter from using
the challenged Paddocks device is far from clear. Stated
otherwise, it is not evident whether the single registration of the
trademark Dockers and Design confers on the owner the right to
prevent the use of a fraction thereof in the course of trade. It is
also unclear whether the use without the owners consent of a
portion of a trademark registered in its entirety constitutes
material or substantial invasion of the owners right.
Trademark dilution is the lessening of the capacity of a famous
mark to identify and distinguish goods or services, regardless of
the presence or absence of: (1) competition between the owner
of the famous mark and other parties; or (2) likelihood of
confusion, mistake or deception. Subject to the principles of
equity, the owner of a famous mark is entitled to an injunction
against another persons commercial use in commerce of a mark
or trade name, if such use begins after the mark has become
famous and causes dilution of the distinctive quality of the mark.
This is intended to protect famous marks from subsequent uses
that blur distinctiveness of the mark or tarnish or disparage it.
 Issue of Parallel Importation:
Yu v. CA, 217 SCRA 328
That the exclusive sales contract which links petitioner and the
House of Mayfair is solely the concern of the privies thereto and
cannot thus extend its chain as to bind private respondent herein
is, We believe, beside the point. Verily, injunction is the
appropriate remedy to prevent a wrongful interference with
contracts by strangers to such contracts where the legal remedy
is insufficient and the resulting injury is irreparable. The liability
of private respondent, if any, does not emanate from the four
corners of the contract for undoubtedly, Unisia Merchandising Co.,
Inc. is not a party thereto but its accountability is "an independent
act generative of civil liability." These observations, however, do
not in the least convey the message that We have placed the cart
ahead of the horse, so to speak, by pronouncing private
respondent's liability at this stage in view of the pendency of the
main suit for injunction below. We are simply rectifying certain
misperceptions entertained by the appellate court as regards the
feasibility of requesting a preliminary injunction to enjoin a
stranger to an agreement.
To Our mind, the right to perform an exclusive distributorship
agreement and to reap the profits resulting from such
performance are proprietary rights which a party may protect
which may otherwise not be diminished, nay, rendered illusory by
the expedient act of utilizing or interposing a person or firm to
obtain goods from the supplier to defeat the very purpose for
which the exclusive distributorship was conceptualized, at the
expense of the sole authorized distributor
J. Remedies
Leviton Industries v. Salvador, 114 SCRA 420
Undoubtedly, the foregoing section grants to a foreign
corporation, whether or not licensed to do business in the
Philippines, the right to seek redress for unfair competition before
Philippine courts. But the said law is not without qualifications. Its
literal tenor indicates as a condition sine qua non the registration
of the trade mark of the suing foreign corporation with the
Philippine Patent Office or, in the least, that it be an assignee of
such registered trademark. The said section further requires that
the country, of which the plaintiff foreign corporation or juristic
person is a citizen or domicilliary, grants to Filipino corporations
or juristic entities the same reciprocal treatment, either thru
treaty, convention or law,
All that is alleged in private respondent's complaint is that it is a
foreign corporation. Such bare averment not only fails to comply
with the requirements imposed by the aforesaid Section 21-A but
violates as well the directive of Section 4, Rule 8 of the Rules of
Court that "facts showing the capacity of a party to sue or be sued
or the authority of a party to sue or be sued in a representative
capacity or the legal existence of an organized association of
persons that is made a party, must be averred "
Puma v. IAC, 158 SCRA 233
The object of the Convention is to accord a national of a member
nation extensive protection 'against infringement and other types
of unfair competition [Vanity Fair Mills, Inc. v. T. Eaton Co., 234
F. 2d 633]." (at p. 165)
The mandate of the aforementioned Convention finds
implementation in Section 37 of RA No. 166, otherwise known as
the trademark Law:
Rights of Foreign Registrants. — Persons who are nationals of,
domiciled in, or have a bona fide or effective business or
commercial establishment in any foreign country, which is a party
to an international convention or treaty relating to marks or
tradenames on the represssion of unfair competition to which the
Philippines may be party, shall be entitled to the benefits and
subject to the provisions of this Act ...
Tradenames of persons described in the first paragraph of this
section shall be protected without the obligation of filing or
registration whether or not they form part of marks.
...
One final point. It is essential that we stress our concern at the
seeming inability of law enforcement officials to stem the tide of
fake and counterfeit consumer items flooding the Philippine
market or exported abroad from our country. The greater victim
is not so much the manufacturer whose product is being faked
but the Filipino consuming public and in the case of exportations,
our image abroad. No less than the President, in issuing Executive
Order No. 913 dated October 7, 1983 to strengthen the powers of
the Minister of Trade and Industry for the protection of
consumers, stated that, among other acts, the dumping of
substandard, imitated, hazardous, and cheap goods, the
infringement of internationally known tradenames and
trademarks, and the unfair trade Practices of business firms have
reached such proportions as to constitute economic sabotage. We
buy a kitchen appliance, a household tool, perfume, face powder,
other toilet articles, watches, brandy or whisky, and items of
clothing like jeans, T-shirts, neckties, etc. — the list is quite
lengthy — pay good money relying on the brand name as
guarantee of its quality and genuine nature only to explode in
bitter frustration and helpless anger because the purchased item
turns out to be a shoddy imitation, albeit a clever looking
counterfeit, of the quality product. Judges all over the country are
well advised to remember that court processes should not be used
as instruments to, unwittingly or otherwise, aid counterfeiters and
intellectual pirates, tie the hands of the law as it seeks to protect
the Filipino consuming public and frustrate executive and
administrative implementation of solemn commitments pursuant
to international conventions and treaties.
La Chemise Lacoste v. Fernandez, 129 SCRA 373
We held that it was not enough for Leviton, a foreign corporation
organized and existing under the laws of the State of New York,
United States of America, to merely allege that it is a foreign
corporation. It averred in Paragraph 2 of its complaint that its
action was being filed under the provisions of Section 21-A of
Republic Act No. 166, as amended. Compliance with the
requirements imposed by the abovecited provision was necessary
because Section 21-A of Republic Act No. 166 having explicitly laid
down certain conditions in a specific proviso, the same must be
expressly averred before a successful prosecution may ensue. It
is therefore, necessary for the foreign corporation to comply with
these requirements or aver why it should be exempted from them,
if such was the case. The foreign corporation may have the right
to sue before Philippine courts, but our rules on pleadings require
that the qualifying circumstances necessary for the assertion of
such right should first be affirmatively pleaded.
In the present case, however, the petitioner is a foreign
corporation not doing business in the Philippines. The marketing
of its products in the Philippines is done through an exclusive
distributor, Rustan Commercial Corporation The latter is an
independent entity which buys and then markets not only
products of the petitioner but also many other products bearing
equally well-known and established trademarks and tradenames.
in other words, Rustan is not a mere agent or conduit of the
petitioner.
Rules of Procedure for Intellectual Property Rights Cases
(A.M. No. 10-3-10-SC)
1. Administrative
a) Cancellation Proceedings
Sec. 151 (and its sub-paragraphs), IPC
Romero v. Maiden Form, 10 SCRA 556
Brassieres are usually of different types or styles, and appellee
has used different trademarks for every type as shown by its
labels, Exhibits W-2 (Etude), W-3 (Chansonette), W-4 (Prelude),
W-5 (Maidenette), and W-6, (Overture). The mere fact that
appellee uses "Adagio" for one type or style, does not affect the
validity of such word as a trademark. In. the case of Kiekhaefer
Corp. v. Willys-Overland Motors, 111 USPQ 105, it was held that
the fact that the word "Hurricane" was used to designate only one
model of automobile, did not affect the validity of that word as a
trademark. In Minnesota Mining Co. V. Motloid Co., 74 USPQ 235,
the applicant sought to register the letters "MM" in diagonal
relationship within a circle. Applicant admitted that this mark was
used only for its medium price and medium quality denture-base
materials
...
It clearly appears, however, that the mark serves to indicate
origin of applicant's goods; and the fact that it is used on only
one of several types or grades does not affect its registrability as
a trade mark.
...
Trademark rights in the Philippines, without actual use the
trademark in this country can, of course, be created artificially by
means of a treaty or convention with another country or countries.
Section 37 of the present Philippine Trademark Law, Republic Act
No. 166 (incorporated as Rule 82 in the Rules of Practice for
Registration of Trademarks) envisions the eventual entrance of
the Philippines into such convention treaty. It is provided in said
section that applications filed thereunder need not allege use in
the Philippines of the trade mark sought to be registered. The
Philippines has, however not yet entered into any such treaty or
convention and, until she does, actual use in the Philippines of the
trademark sought to be registered and allegation in the
application of such fact, will be required in all applications for
original or renewal registration submitted to the Philippine Patent
Office. (Circular Release No. 8.)
…
There is no evidence to show that the registration of the
trademark "Adagio" was obtained fraudulently by appellee. The
evidence record shows, on the other hand, that the trademark
"Adagio" was first exclusively in the Philippines by a appellee in
the year 1932. There being no evidence of use of the mark by
others before 1932, or that appellee abandoned use thereof, the
registration of the mark was made in accordance with the
Trademark Law. Granting that appellant used the mark when
appellee stopped using it during the period of time that the
Government imposed restrictions on importation of respondent's
brassiere bearing the trademark, such temporary non-use did not
affect the rights of appellee because it was occasioned by
government restrictions and was not permanent, intentional, and
voluntary.
To work an abandonment, the disuse must be permanent and not
ephemeral; it must be intentional and voluntary, and not
involuntary or even compulsory. There must be a thorough-going
discontinuance of any trade-mark use of the mark in question
(Callman, Unfair Competition and Trademark, 2nd Ed., p. 1341).
...
Non-use because of legal restrictions is not evidence of an intent
to abandon. Non-use of their ancient trade-mark and the adoption
of new marks by the Carthusian Monks after they had been
compelled to leave France was consistent with an intention to
retain their right to use their old mark. Abandonment will not be
inferred from a disuse over a period of years occasioned by
statutory restrictions on the name of liquor. (Nims Unfair
Competition and Trade-Mark p. 1269.)
Philippine Nut Industry v. Standard Brands Inc.,
65 SCRA 575
We have taken note of those alleged differences but We find them
insignificant in the sense that they are not sufficient to call the
attention of the ordinary buyer that the labeled cans come from
distinct and separate sources. The word "Philippine" printed in
small type in petitioner's label may simply give to the purchaser
the impression that that particular can of PLANTERS salted
peanuts is locally produced or canned but that what he is buying
is still PLANTERS canned salted peanuts and nothing else. As
regards "Mr. Peanut" on Standard Brands' label, the same appears
on the top cover and is not visible when the cans are displayed on
the shelves, aside from the fact that the figure of "Mr. Peanut" is
printed on the tin cover which is thrown away after opening the
can, leaving no lasting impression on the consumer. It is also for
this reason that We do not agree with petitioner that it is "Mr.
Peanut and the Humanized Peanut" which is the trademark of
Standard Brands salted peanuts, it being a mere descriptive
pictorial representation of a peanut not prominently displayed on
the very body of the label covering the can, unlike the term
PLANTERS which dominates the label.
It is not necessary, to constitute trademark "infringement", that
every word of a trade-mark should be appropriated, but it is
sufficient that enough be taken to deceive the public in the
purchase of a protected article. (Bunte Bros. v. Standard
Chocolates, D.C. Mass., 45 F. Supp. 478, 481)
A trade-name in order to be an `infringement' upon another need
not be exactly like it in form and sound, but it is enough if the one
so resembles another as to deceive or mislead persons of ordinary
caution into the belief that they are dealing with the one concern
when in fact they are dealing with the other. (Foss v. Culbertson,
136 P. 2d 711, 718, 17 Wash. 2d 610)
Where a trade-mark contains a dominating or distinguishing word,
and purchasing public has come to know and designate the article
by such dominating word, the use of such word by another in
marking similar goods may constitute Infringement though the
marks aside from such dominating word may be dissimilar.
(Queen Mfg. Co. v. lsaac Ginsberg & Bros., C.C.A. Mon., 25 F. 2d
284, 287)
(d) "Infringement" of trade-mark does not depend on the use of
identical words, nor on the question whether they are so similar
that a person looking at one would be deceived into the belief that
it was the other; it being sufficient if one mark is so like another
in form, spelling, or sound that one with not a very definite or
clear recollection as to the real mark is likely to be confused or
misled. (Northam Warren Corporation v. Universal Cosmetic Co.,
C. C. A; III., 18 F. 2d 774, 775)
This Court held that the doctrine is to the effect that a word or
phrase originally incapable of exclusive appropriation with
reference to an article on the market, because geographically or
otherwise descriptive, might nevertheless have been used so long
and so exclusively by one producer with reference to his article
that, in that trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his product.
Anchor Trading Co. v. Director of Patents, 99
Phil.1040
The only consequence resulting from a late filing of an opposition
to any application for registration of a trademark is the oppositor’s
relinquishment of the privilege given to him by laws to object to
such registration, but such cannot prevent him from asking later
for its cancellation when in his opinion there are good grounds
justifying it (Section 17, R.A. No. 166).
Shangrila v. CA, 359 SCRA 273 (1999)
The earlier institution of an Inter Partes case by the Shangri-La
Group for the cancellation of the "Shangri-La" mark and "S"
device/logo with the BPTTT cannot effectively bar the subsequent
filing of an infringement case by registrant Developers Group. The
law and the rules are explicit.
Section 151.2 of Republic Act No. 8293, otherwise known as the
Intellectual Property Code, provides, as follows –
Section 151.2. Notwithstanding the foregoing provisions, the
court or the administrative agency vested with jurisdiction to
hear and adjudicate any action to enforce the rights to a
registered mark shall likewise exercise jurisdiction to
determine whether the registration of said mark may be
cancelled in accordance with this Act. The filing of a suit to
enforce the registered mark with the proper court or agency
shall exclude any other court or agency from assuming
jurisdiction over a subsequently filed petition to cancel the
same mark. On the other hand, the earlier filing of
petition to cancel the mark with the Bureau of Legal
Affairs shall not constitute a prejudicial question that
must be resolved before an action to enforce the
rights to same registered mark may be decided.
(Emphasis provided)
Similarly, Rule 8, Section 7, of the Regulations on Inter Partes
Proceedings, provides to wit –
Section 7. Effect of filing of a suit before the Bureau or with
the proper court. - The filing of a suit to enforce the
registered mark with the proper court or Bureau shall exclude
any other court or agency from assuming jurisdiction over a
subsequently filed petition to cancel the same mark. On the
other hand, the earlier filing of petition to cancel the
mark with the Bureau shall not constitute a
prejudicial question that must be resolved before an
action to enforce the rights to same registered mark
may be decided. (Emphasis provided)
The rationale is plain: Certificate of Registration No. 31904, upon
which the infringement case is based, remains valid and subsisting
for as long as it has not been cancelled by the Bureau or by an
infringement court. As such, Developers Group's Certificate of
Registration in the principal register continues as "prima facie
evidence of the validity of the registration, the registrant's
ownership of the mark or trade-name, and of the registrant's
exclusive right to use the same in connection with the goods,
business or services specified in the certificate."
Since the certificate still subsists, Developers Group may thus file
a corresponding infringement suit and recover damages from any
person who infringes upon the former's rights.
Superior Commercial Enterprises vs. Kunnan Enterprises
Ltd., G.R. No. 169974, April 20, 2010.
Trademark Infringement.
 To establish trademark infringement, the following
elements must be proven: (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.
 Based on these elements, we find it immediately obvious
that the second element – the plaintiff’s ownership of the
mark – was what the Registration Cancellation Case
decided with finality. On this element depended the
validity of the registrations that, on their own, only gave
rise to the presumption of, but was not conclusive on,
the issue of ownership.
 In no uncertain terms, the appellate court in the
Registration Cancellation Case ruled that SUPERIOR was
a mere distributor and could not have been the owner,
and was thus an invalid registrant of the disputed
trademarks.
 The right to register a trademark is based on ownership,
and therefore only the owner can register it. In finding
 that Kunnan owned the marks, the court considered the
distributorship agreement and the so-called assignment
agreement in their entirety; it confirmed that Superior
had sought to be Kunnan’s exclusive distributor.
 As enunciated in the case of Gabriel vs. Perez, 50 SCRA
406, “a mere distributor of a product bearing a
trademark, even if permitted to use said trademark has
no right to and cannot register the said trademark.
 The CA decided that the registration of the KENNEX and
PRO KENNEX trademarks should be cancelled because
SUPERIOR was not the owner of, and could not in the
first place have validly registered these trademarks.
Thus, as of the finality of the CA decision on December
3, 2007, these trademark registrations were effectively
cancelled and SUPERIOR was no longer the registrant of
the disputed trademarks.
 Section 22 of RA 166 states that only a registrant of a
mark can file a case for infringement. Corollary to this,
Section 19 of RA 166 provides that any right conferred
upon the registrant under the provisions of RA 166
terminates when the judgment or order of cancellation
has become final
 In the present case, by operation of law, specifically
Section 19 of RA 166, the trademark infringement aspect
of SUPERIORs case has been rendered moot and
academic in view of the finality of the decision in the
Registration Cancellation Case. In short, SUPERIOR is
left without any cause of action for trademark
infringement since the cancellation of registration of a
trademark deprived it of protection from infringement
from the moment judgment or order of cancellation
became final. To be sure, in a trademark infringement,
title to the trademark is indispensable to a valid cause of
action and such title is shown by its certificate of
registration. With its certificates of registration over the
disputed trademarks effectively cancelled with finality,
SUPERIORs case for trademark infringement lost its legal
basis and no longer presented a valid cause of action
UNFAIR COMPETITION
 Unfair competition has been defined as the passing off
(or palming off) or attempting to pass off upon the public
of the goods or business of one person as the goods or
business of another with the end and probable effect of
deceiving the public. The essential elements of unfair
competition are (1) confusing similarity in the general
appearance of the goods; and (2) intent to deceive the
public and defraud a competitor.
 Jurisprudence also formulated the following “true test”
of unfair competition: whether the acts of the defendant
have the intent of deceiving or are calculated to deceive
the ordinary buyer making his purchases under the
ordinary conditions of the particular trade to which the
controversy relates. One of the essential requisites in an
action to restrain unfair competition is proof of fraud; the
intent to deceive, actual or probable must be shown
before the right to recover can exist.
In the present case, no evidence exists showing that KUNNAN
ever attempted to pass off the goods it sold (i.e. sportswear,
sporting goods and equipment) as those of SUPERIOR. In
addition, there is no evidence of bad faith or fraud imputable to
KUNNAN in using the disputed trademarks. Specifically,
SUPERIOR failed to adduce any evidence to show that KUNNAN
by the above-cited acts intended to deceive the public as to the
identity of the goods sold or of the manufacturer of the goods
sold.
b) Intellectual Property Rights Violations
Sec. 10(2) (and its sub-paragraphs), IPC
IN-N-Out Burger v. Sehwani, G.R. No. 179127.
December 24, 2008.
 Section 10 of the Intellectual Property Code specifically
identifies the functions of the Bureau of Legal Affairs,
especially:
 Exercise of original jurisdiction in
administrative complaints for violations of laws
involving intellectual property rights;
 The cancellation of any permit, license,
authority, or registration which may have been
granted by the Office, or the suspension of the
validity thereof for such period of time as the
Director of Legal Affairs may deem reasonable
which shall not exceed one (1) year;
 The assessment of damages;
 Unquestionably, petitioner’s complaint, which
seeks the cancellation of the disputed mark in
the name of respondent Sehwani, Incorporated,
and damages for violation of petitioners
intellectual property rights, falls within the
jurisdiction of the IPO Director of Legal Affairs.
 While Section 163 of the IPC thereof vests in civil courts
jurisdiction over cases of unfair competition, nothing in
the said section states that the regular courts have sole
jurisdiction over unfair competition cases, to the
exclusion of administrative bodies. On the contrary,
Sections 160 and 170, which are also found under Part
III of the Intellectual Property Code, recognize the
concurrent jurisdiction of civil courts and the IPO over
unfair competition cases.
 The Court will no longer touch on the issue of the
validity or propriety of the 22 December 2003 Decision
of the IPO Director of Legal Affairs which: (1) directed
the cancellation of the certificate of registration of
respondent Sehwani, Incorporated for the mark IN-N-
OUT and (2) ordered respondents to permanently cease
and desist from using the disputed mark on its goods
and business. Such an issue has already been
settled by this Court in its final and executory
Decision dated 15 October 2007 in G.R. No.
171053, Sehwani, Incorporated v. In-N-Out
Burger [appears later on in the syllabus], ultimately
affirming the foregoing judgment of the IPO Director of
Legal Affairs. That petitioner has the superior right to
own and use the IN-N-OUT trademarks vis--vis
respondents is a finding which this Court may no longer
disturb under the doctrine of conclusiveness of
judgment. In conclusiveness of judgment, any right,
fact, or matter in issue directly adjudicated or
necessarily involved in the determination of an action
 before a competent court in which judgment is
rendered on the merits is conclusively settled by the
judgment therein and cannot again be litigated
between the parties and their privies whether or not
the claims, demands, purposes, or subject matters of
the two actions are the same.
 Thus, the only remaining issue for this Court to resolve
is whether the IPO Director General correctly found
respondents guilty of unfair competition for which he
awarded damages to petitioner. The essential
elements of an action for unfair competition are
(1) confusing similarity in the general appearance of
the goods and (2) intent to deceive the public and
defraud a competitor. The confusing similarity may or
may not result from similarity in the marks, but may
result from other external factors in the packaging or
presentation of the goods. The intent to deceive and
defraud may be inferred from the similarity of the
appearance of the goods as offered for sale to the
public. Actual fraudulent intent need not be shown.
Administrative proceedings are governed by the
substantial evidence rule. A finding of guilt in an
administrative case would have to be sustained for as
long as it is supported by substantial evidence that
the respondent has committed acts stated in the
complaint or formal charge. As defined, substantial
evidence is such relevant evidence as a reasonable
mind may accept as adequate to support a conclusion.
As recounted by the IPO Director General in his
decision, there is more than enough substantial
evidence to support his finding that respondents are
guilty of unfair competition.
c) Prohibition of Importation
Sec. 166, IPC
2. Civil Infringement
Sec. 155 - Sec. 164, IPC
Rule on Search and Seizure in Civil Actions for
Infringement of Intellectual Property Rights (A.M. No.
02-1-06-SC)
Rules of Procedure for Intellectual Property Rights Cases
(A.M. No. 10-3-10-SC) issued on 3 October 2011
Societe Des Produits Nestle v. CA, 356 SCRA 207
(2001) (Supra.)
It must be emphasized that the products bearing the trademarks
in question are "inexpensive and common" household items
bought off the shelf by "undiscerningly rash" purchasers. As such,
if the ordinary purchaser is "undiscerningly rash", then he would
not have the time nor the inclination to make a keen and
perceptive examination of the physical discrepancies in the
trademarks of the products in order to exercise his choice.
...
In addition, 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.
Mighty Corporation v. E. & J. Gallo Winery, GR No.
154342, 14 July 2004
1. The use of an identical mark does not, by itself, lead to
a legal conclusion that there is trademark infringement.
Mighty’s use of the GALLO cigarette trademark is not likely to
cause confusion or mistake, or to deceive the “ordinarily
intelligent buyer” of either wines or cigarettes or both as to
the identity of the goods, their source and origin, or identity
of the business of Mighty’s and Gallo’s. Obviously, wines and
cigarettes are not identical or competing products. Neither do
they belong to the same class of goods. Gallo’s wines belong
to Class 33 under Rule 84[a] Chapter III, Part II of the Rules
of Practice in Trademark Cases while Mighty’s GALLO
cigarettes fall under Class 34.
2. Wines and cigarettes are non-competing and are totally
unrelated products not likely to cause confusion vis-à-
vis the goods or the business of the Mighty’s and
Gallo’s.
3. Wines are bottled and consumed by drinking while
cigarettes are packed in cartons or packages and
smoked. There is a whale of a difference between their
descriptive properties, physical attributes or essential
 characteristics like form, composition, texture and
quality. Nothing less than conduct tending to pass off
one man’s goods or business as that of another
constitutes unfair competition. Actual or probable
deception and confusion on the part of customers by
reason of defendant’s practices must always appear. On
this score, SC found that Mighty never attempted to
pass off their cigarettes as those of Gallo’s. There is no
evidence of bad faith or fraud imputable to Mighty’s in
using their GALLO cigarette mark.
4. The Paris Convention protects well-known trademarks
only (to be determined by domestic authorities), while
the Trademark Law protects all trademarks, whether
well-known or not, provided that they have been
registered and are in actual commercial use in the
Philippines.
Following universal acquiescence and comity, in case of
domestic legal disputes on any conflicting provisions between
the Paris Convention (which is an international agreement)
and the Trademark law (which is a municipal law) the latter
will prevail.Under both the Paris Convention and the
Trademark Law, the protection of a registered trademark is
limited only to goods identical or similar to those in respect
of which such trademark is registered and only when there is
likelihood of confusion. Under both laws, the time element in
commencing infringement cases is material in ascertaining
the registrantÊs express or implied consent to another’s use
of its trademark or a colorable imitation thereof. This is why
acquiescence, estoppel or laches may defeat the registrant’s
otherwise valid cause of action. Hence, proof of all the
elements of trademark infringement is a condition precedent
to any finding of liability.
McDonald's Corp v. L.C. Big Mak, GR 143993
dated 18 August 2004
To establish trademark infringement, the following elements must
be shown: (1) the validity of plaintiffs mark; (2) the plaintiffs
ownership of the mark; and (3) the use of the mark or its colorable
imitation by the alleged infringer results in likelihood of confusion.
Of these, it is the element of likelihood of confusion that is the
gravamen of trademark infringement.
A mark is valid if it is distinctive and thus not barred from
registration under Section 4 of RA 166 (Section 4). However, once
registered, not only the marks validity but also the registrants
ownership of the mark is prima facie presumed.
Respondents contend that of the two words in the Big Mac mark,
it is only the word Mac that is valid because the word Big is generic
and descriptive (proscribed under Section 4[e]), and thus
incapable of exclusive appropriation. The Big Mac mark, which
should be treated in its entirety and not dissected word for word,
is neither generic nor descriptive. Generic marks are commonly
used as the name or description of a kind ofgoods, such as Lite
for beer or Chocolate Fudge for chocolate soda drink. Descriptive
marks, on the other hand, convey the characteristics, functions,
qualities or ingredients of a product to one who has never seen it
or does not know it exists, such as Arthriticare for arthritis
medication.On the contrary, Big Mac falls under the class of
fanciful or arbitrary marks as it bears no logical relation to the
actual characteristics of the product it represents. As such, it is
highly distinctive and thus valid.
Section 22 covers two types of confusion arising from the use of
similar or colorable imitation marks, namely, confusion of goods
(product confusion) and confusion of business (source or origin
confusion).
Under Act No. 666, the first trademark law, infringement was
limited to confusion of goods only, when the infringing mark is
used on goods of a similar kind. Thus, no relief was afforded to
the party whose registered mark or its colorable imitation is used
on different although related goods. To remedy this situation,
Congress enacted RA 166 on 20 June 1947. In defining trademark
infringement, Section 22 of RA 166 deleted the requirement in
question and expanded its scope to include such use of the mark
or its colorable imitation that is likely to result in confusion on the
source or origin of such goods or services, or identity of such
business.Thus, while there is confusion of goods when the
products are competing, confusion of business exists when the
products are non-competing but related enough to produce
confusion of affiliation.
The registered trademark owner may use his mark on the same
or similar products, in different segments of the market, and at
different price levels depending on variations of the products for
specific segments of the market. The Court has recognized that
the registered trademark owner enjoys protection in product and
market areas that are the normal potential expansion of his
business.
In determining likelihood of confusion, jurisprudence has
developed two tests, the dominancy test and the holistic test. The
dominancy test focuses on the similarity of the prevalent features
of the competing trademarks that might cause confusion. In
contrast, the holistic test requires the court to consider the
entirety of the marks as applied to the products, including the
labels and packaging, in determining confusing similarity.
This Court, however, has relied on the dominancy test rather than
the holistic test. The dominancy test considers the dominant
features in the competing marks in determining whether they are
confusingly similar. Under the dominancy test, courts give greater
weight to the similarity of the appearance of the product arising
from the adoption of the dominant features of the registered
mark, disregarding minor differences. Courts will consider more
the aural and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality, sales
outlets and market segments. Applying the dominancy test, the
Court finds that respondents use of the Big Mak mark results in
likelihood of confusion. First, Big Mak sounds exactly the same as
Big Mac. Second, the first word in Big Mak is exactly the same as
the first word in Big Mac. Third, the first two letters in Mak are the
same as the first two letters in Mac. Fourth, the last letter in Mak
while a k sounds the same as c when the word Mak is pronounced.
Fifth, in Filipino, the letter k replaces c in spelling, thus Caloocan
is spelled Kalookan.
Certainly, Big Mac and Big Mak for hamburgers create even
greater confusion, not only aurally but also visually. Indeed, a
person cannot distinguish Big Mac from Big Mak by their sound.
When one hears a Big Mac or Big Mak hamburger advertisement
over the radio, one would not know whether the Mac or Mak ends
with a c or a k.
Petitioners’ aggressive promotion of the Big Mac mark, as borne
by their advertisement expenses, has built goodwill and reputation
for such mark making it one of the easily recognizable marks in
the market today. This increases the likelihood that consumers
will mistakenly associate petitioners hamburgers and business
with those of respondents.
Thus, we hold that confusion is likely to result in the public mind.
We sustain petitioners’ claim of trademark infringement.
McDonald's Corp. v. Macjoy Fastfood Corp., GR
No. 166115, 2 February 2007
RA 166 (Old Trademark Law):
 TRADEMARK – any distinctive word, name,
symbol, emblem, sign, or device, or any
combination thereof adopted and used by a
manufacturer or merchant on his goods to
identify and distinguish them from those
manufactured, sold, or dealt in by others
 Sec 4. Registration of trademarks, trade-
names and service-marks on the principal
register. xxx The owner of the trade-mark,
trade-name or service-mark used to distinguish
his goods, business or services of others shall
have the right to register the same on the
principal register, UNLESS it:
Consists of or comprises a mark or
trade-name which so resembles a
mark or trade-name registered in
the Philippines or a mark or trade-
name previously used in the
Philippines by another and not
abandoned, as to be likely, when
applied to or used in connection with
the goods, business or services of the
applicant, to cause confusion or
mistake or to deceive purchasers;
In determining similarity and likelihood of confusion,
jurisprudence has developed two tests
 DOMINANCY TEST – similarity of the
prevalent features of the competing
trademarks that might cause confusion or
deception
 greater weight given to the similarity
of appearance from the adoption of
the registered mark’s dominant
features, ignoring minor differences.
 consider more the visual impressions,
aural and connotative comparisons,
and overall impressions created in the
public mind
 give little weight to factors like prices,
quality, market segments, and sales
outlets
 HOLISTIC TEST – consider the entirety of
the marks as applied to the products,
including the labels and packaging
 a comparison of the words is NOT the
only determinant factor
 only relies on visual comparisons
between two trademarks
 IPO used the dominancy test in concluding that
there was confusing similarity, noting the
appearance of the predominant features M, Mc
and/or Mac
 CA applied the holistic test
Dominancy test should have been applied
 In trademark cases, particularly in ascertaining
confusingly similar, NO set rules can be
deduced because each case must be
decided on its merits.
 Precedent must be studied in the light of the
facts of the particular case – jurisprudence
should be applied ONLY if they are
specifically in point
 In recent cases with similar factual milieu, the
Court consistently applied the dominancy test
in determining confusing similarity or likelihood
of confusion between competing trademarks
(McDo v. LC Big Mak; Societe Des Produits
Nestle v. CA)
There is confusing similarity, such that an ordinary
purchaser can conclude an association or relation between
the marks
 both marks use the corporate M design logo
and the prefixes Mc and/or Mac as dominant
features
 first letter M in both marks puts emphasis on
the prefixes Mc and/or Mac by the similar way
in which they are depicted
 prefix Mc, an abbreviation of Mac, visually and
aurally catches the attention of the consuming
public
 both trademarks are used in the sale of fastfood
products
 predominant features in both marks attract
attention, such that the common perception of
customers McDo and MacJoy are the same or
affiliated
 differences and variations in styles are of no
moment and are overshadowed by the
predominant features
Petitioner has the rightful claim of ownership over the
marks
 Pursuant to RA 166 Sec 37 and the Paris
Convention, McDo was able to register its
MCDONALDS marks successively (McDonalds
in 04 Oct 1971; M or the golden arches design
corporate logo; and the McDonalds with the M
or golden arches design both in 30 Jun 1977)
  MacJoy’s registration was only on Mar 14, 1991,
but its first actual use in the PH was on Dec 7,
1987
 requirement of actual use in commerce in
the PH before one may register a trademark,
trade-name and service mark under the
Trademark Law pertains to the territorial
jurisdiction of the PH and is NOT only
confined to a certain region, province, city or
barangay
 Respondent failed to present evidence to
support its claim that MacJoy is based on the
name of its presidents niece (Scarlett Yu
Carcell). There is no connection between that
name and MacJoy to merit the coinage of the
latter word. Even assuming it was a term of
endearment, why – out of all the possible
letters or combinations available – did its
president choose to adopt a mark with the
prefix Mac as the dominant feature. Only logical
conclusion deducible is that MacJoy wanted to
ride on the established goodwill of the
MCDONALDs marks
Skechers v. Inter Pacific Industrial Trading, G.R.
No. 164321, March 28, 2011
The essential element of infringement under R.A. No. 8293 is that
the infringing mark is likely to cause confusion. In determining
similarity and likelihood of confusion, two tests have been
developed: (1)the Dominancy Test which focuses on the similarity
of the prevalent or dominant features of the competing
trademarks that might cause confusion, mistake, and deception in
the mind of the purchasing public. Duplication or imitation is not
necessary; neither is it required that the mark sought to be
registered suggests an effort to imitate. Given more consideration
are the aural and visual impressions created by the marks on the
buyers of goods, giving little weight to factors like prices, quality,
sales outlets, and market segments. (2) the Holistic or Totality
Test which necessitates a consideration of the entirety of the
marks as applied to the products, including the labels and
packaging, in determining confusing similarity. The discerning eye
of the observer must focus not only on the predominant words,
but also on the other features appearing on both labels so that
the observer may draw conclusion on whether one is confusingly
similar to the other.
There are two types of confusion: (1) confusion of goods (product
confusion), where the ordinarily prudent purchaser would be
induced to purchase one product in the belief that he was
purchasing the other; and (2) confusion of business (source or
origin confusion), where, although the goods of the parties are
different, the product, the mark of which registration is applied
for by one party, is such as might reasonably be assumed to
originate with the registrant of an earlier product, and the public
would then be deceived either into that belief or into the belief
that there is some connection between the two parties, though
inexistent.
In the case at bar, the Court applied the Dominancy Test and
found that the use of the stylized "S" by respondent in its Strong
rubber shoes infringes on the mark already registered by
petitioner with the IPO. While it is undisputed that petitioner’s
stylized "S" is within an oval design, to this Court’s mind, the
dominant feature of the trademark is the stylized "S," as it is
precisely the stylized "S" which catches the eye of the purchaser.
Thus, even if respondent did not use an oval design, the mere fact
that it used the same stylized "S", the same being the dominant
feature of petitioner’s trademark, already constitutes infringement
under the Dominancy Test.
The protection of trademarks as intellectual property is intended
not only to preserve the goodwill and reputation of the business
established on the goods bearing the mark through actual use
over a period of time, but also to safeguard the public as
consumers against confusion on these goods. While respondent’s
shoes contain some dissimilarities with petitioner’s shoes, this
Court cannot close its eye to the fact that for all intents and
purpose, respondent had deliberately attempted to copy
petitioner’s mark and overall design and features of the shoes. Let
it be remembered, that defendants in cases of infringement do
not normally copy but only make colorable changes. The most
successful form of copying is to employ enough points of similarity
to confuse the public, with enough points of difference to confuse
the courts.
UFC v Fiesta Barrio, G.R. No. 198889, January
20, 2016
In Dermaline, Inc. v. Myra Pharmaceuticals, Inc., we defined a
trademark as "any distinctive word, name, symbol, emblem, sign,
or device, or any combination thereof, adopted and used by a
manufacturer or merchant on his goods to identify and
distinguish them from those manufactured, sold, or dealt by
others." We held that a trademark is "an intellectual property
deserving protection by law."
The Intellectual Property Code provides:
Section 147. Rights Conferred. - 147.1. The owner of a
registered mark shall have the exclusive right to prevent
all third parties not having the owner's consent from
using in the course of trade identical or similar
signs or containers for goods or services which are
identical or similar to those in respect of which the
trademark is registered where such use would result in a
likelihood of confusion. In case of the use of an identical
sign for identical goods or services, a likelihood of
confusion shall be presumed.
To determine the likelihood of confusion, the Rules of Procedure
for Intellectual Property Rights Cases, Rule 18, provides:
RULE 18
Evidence in Trademark Infringement and Unfair
Competition Cases
SECTION 1. Certificate of Registration. - A certificate of
registration of a mark shall be prima facie evidence of:
a) the validity of the registration;
b) the registrant's ownership of the mark; and
c) the registrant's exclusive right to use the same in
connection with the goods or services and those that are
related thereto specified in the certificate.
 SECTION 3. Presumption of Likelihood of Confusion. -
Likelihood of confusion shall be presumed in case
an identical sign or mark is used for identical goods
or services.
SECTION 4. Likelihood of Confusion in Other Cases. - In
determining whether one trademark is confusingly similar
to or is a colorable imitation of another, the court must
consider the general
impression of the ordinary purchaser, buying under
the normally prevalent conditions in trade and giving the
attention such purchasers usually give in buying that class
of goods. Visual, aural, connotative comparisons and
overall impressions engendered by the marks in
controversy as they are encountered in the realities of the
marketplace must be taken into account.
Where there are both similarities and differences in the
marks, these must be weighed against one another to see
which predominates.
In determining likelihood of confusion between marks
used on non-identical goods or services, several factors
may be taken into account, such as, but not limited to:
a) the strength of plaintiffs mark;
b) the degree of similarity between the plaintiffs and the
defendant's marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.
"Colorable imitation" denotes such a close or
ingenious imitation as to be calculated to deceive ordinary
persons, or such a resemblance to the original as to
deceive an ordinary purchaser giving such attention as a
purchaser usually gives, as to cause him to purchase the
one supposing it to be the other.
SECTION 5. Determination of Similar and Dissimilar Goods
or Services. - Goods or services may not be considered as
being similar or dissimilar to each other on the ground
that, in any registration or publication by the Office, they
appear in different classes of the Nice Classification.
On the other hand, R.A. No. 166 defines a "trademark" as any
distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof, adopted and used by a manufacturer or
merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt by another. A trademark, being a
special property, is afforded protection by law. But for one to
enjoy this legal protection, legal protection ownership of the
trademark should right be established.
The ownership of a trademark is acquired by its registration and
its actual use by the manufacturer or distributor of the goods
made available to the purchasing public. The prima facie
presumption brought by the registration of a mark may be
challenge in an appropriate action. Moreover the protection may
likewise be defeated by evidence of prior use by another person.
This is because the trademark is a creation of use and belongs to
one who first used it in trade or commerce.
The essential element of infringement under the law is
that the infringing mark is likely to cause confusion. There
are two tests used to determine likelihood of confusion: the
dominancy test and the holistic test. The dominancy test applies
to this case.
The Dominancy Test
focuses on the similarity of the prevalent or dominant features of
the competing trademarks that might cause confusion, mistake,
and deception in the mind of the purchasing public. Duplication or
imitation is not necessary; neither is it required that the mark
sought to be registered suggests an effort to imitate. Given more
consideration are the aural and visual impressions created by the
marks on the buyers of goods, giving little weight to factors like
prices, quality, sales outlets, and market segments.
xx xx
The Totality Test
The totality or holistic test is contrary to the elementary postulate
of the law on trademarks and unfair competition that confusing
similarity is to be determined on the basis of visual, aural,
connotative comparisons and overall impressions engendered by
the marks in controversy as they are encountered in the realities
of the marketplace. The totality or holistic test only relies on visual
comparison between two trademarks whereas the dominancy test
relies not only on the visual but also on the aural and connotative
comparisons and overall impressions between the two
trademarks.
There are two types of confusion in trademark infringement:
confusion of goods and confusion of business. In Sterling Products
International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, the
Court distinguished the two types of confusion:
Callman notes two types of confusion. The first is the
confusion of goods "in which event the ordinarily
prudent purchaser would be induced to purchase one
product in the belief that he was purchasing the other." In
which case, "defendant's goods are then bought as the
plaintiff's, and the poorer quality of the former reflects
adversely on the plaintiff's reputation." The other is the
confusion of business: "Here though the goods of the
parties are different, the defendant's product is such as
might reasonably be assumed to originate with the
plaintiff, and the public would then be deceived either into
that belief or into the belief that there is some connection
between the plaintiff and defendant which, in fact, does
not exist."
In relation to this, the court has held that the registered trademark
owner may use his mark on the same or similar products, in
different segments of the market, and at different price levels
depending on variations of the products for specific segments of
the market. The Court has recognized that the registered
trademark owner enjoys protection in product and market areas
that are the normal potential expansion of his business. The scope
of protection thus extends to protection from infringers with
related goods.
It cannot be denied that since petitioner’s product, catsup, and
respondent’s product, lechon sauce, are both household products
in similar packaging the public could think that petitioner Nutri-
Asia has expanded its product mix to include lechon sauce, which
is not unlikely considering the nature of petitioner’s business.
Moreover, the CA erred in finding that “PAPA” is a common term
of endearment for “father” and therefore could not be claimed for
exclusive use and ownership. What was registered was not “Papa”
as denied in dictionary, but “Papa” as the last name of the owner
of the brand, making it a registrable mark.
Cases on bottles and containers:
Cagayan Valley Enterprises v. CA, 179 SCRA 218
The above-quoted provisions grant protection to a qualified
manufacturer who successfully registered with the Philippine
Patent Office its duly stamped or marked bottles, boxes, casks
and other similar containers. The mere use of registered bottles
or containers without the written consent of the manufacturer is
prohibited, the only exceptions being when they are used as
containers for "sisi," bagoong," "patis" and similar native
products.
It is an admitted fact that herein petitioner Cagayan buys from
junk dealers and retailers bottles which bear the marks or names
La Tondeña Inc." and "Ginebra San Miguel" and uses them as
containers for its own liquor products. The contention of Cagayan
that the aforementioned bottles without the words "property of"
indicated thereon are not the registered bottles of LTI, since they
do not conform with the statement or description in the
supporting affidavits attached to the original registration
certificate and renewal, is untenable.
Republic Act No. 623 which governs the registration of marked
bottles and containers merely requires that the bottles, in order
to be eligible for registration, must be stamped or marked with
the names of the manufacturers or the names of their principals
or products, or other marks of ownership. No drawings or labels
are required but, instead, two photographs of the container, duly
signed by the applicant, showing clearly and legibly the names
and other marks of ownership sought to be registered and a bottle
showing the name or other mark or ownership, irremovably
stamped or marked, shall be submitted. 1
The term "Name or Other Mark of Ownership" 12means the name
of the applicant or the name of his principal, or of the product, or
other mark of ownership. The second set of bottles of LTI without
the words "property of" substantially complied with the
requirements of Republic Act No. 623, as amended, since they
bear the name of the principal, La Tondeña Inc., and of its
product, Ginebra San Miguel. The omitted words "property of" are
not of such vital indispensability such that the omission thereof
will remove the bottles from the protection of the law. The owner
of a trade-mark or trade-name, and in this case the marked
containers, does not abandon it by making minor modifications in
the mark or name itself. 1 With much more reason will this be true
where what is involved is the mere omission of the words
"property of" since even without said words the ownership of the
bottles is easily Identifiable. The words "La Tondeña Inc." and
"Ginebra San Miguel" stamped on the bottles, even without the
words "property of," are sufficient notice to the public that those
bottles so marked are owned by LTI.
...
Section 3 of Republic Act No. 623, as amended, creates a prima
facie presumption against Cagayan for its unlawful use of the
bottles registered in the name of LTI Corollarily, the writ of
injunction directing petitioner to desist from using the subject
bottles was properly issued by the trial court. Hence, said writ
could not be simply disregarded by Cagayan without adducing
proof sufficient to overcome the aforesaid presumption. Also,
based on the findings of respondent court, and the records before
us being sufficient for arbitrament without remanding the incident
to the court a quo petitioner can be adjudged guilty of contempt
and imposed a sanction in this appeal since it is a cherished rule
of procedure for this Court to always strive to settle the entire
controversy in a single proceeding
Distilleria Washington v. CA, 263 SCRA 303
1. R.A. No. 623 Covers Gin bottles
YES. The title of the law itself, which reads "An Act to
Regulate the Use of Duly Stamped or Marked Bottles,
Boxes, Casks, Kegs, Barrels and Other Similar
Containers" clearly shows the legislative intent to give
protection to all marked bottles and containers of all
lawful beverages regardless of the nature of their
contents. The words "other lawful beverages" is used in
its general sense, referring to all beverages not
prohibited by law. Beverage is defined as a liquor or
liquid for drinking. Hard liquor, although regulated, is
not prohibited by law, hence it is within the purview
and coverage of Republic Act No. 623, as amended.
2. The case before us, however, goes beyond just seeking
to have such use stopped but it so takes on even the
ownership issue as well.
The instant suit is one for replevin (manual delivery)
where the claimant must be able to show convincingly
that he is either the owner or clearly entitled to the
possession of the object sought to be recovered.
Replevin is a possessory action the gist of which
focuses on the right of possession that, in turn, is
dependent on a legal basis that, not infrequently, looks
to the ownership of the object sought to be replevied.
3. It is to be pointed out that a trademark refers to a
word, name, symbol, emblem, sign or device or any
combination thereof adopted and used by a merchant
to identify, and distinguish from others, his goods of
commerce. It is basically an intellectual creation that is
susceptible to ownership (Article 721, Civil Code) and,
consistently therewith, gives rise to its own elements of
jus posidendi, jus utendi, jus fruendi, jus disponendi,
and jus abutendi, along with the applicable jus lex,
comprising that ownership.
The incorporeal right, however, is distinct from the
property in the material object subject to it. Ownership
in one does not necessarily vest ownership in the other.
Thus, the transfer or assignment of the
intellectual property will not necessarily
constitute a conveyance of the thing it covers,
nor would a conveyance of the latter imply the
transfer or assignment of the intellectual right.
4. R.A. No. 623 evidently does not disallow the sale or
transfer of ownership of the marked bottles or
containers. In fact, the contrary is implicit in the law;
thus —
Sec. 5. No action shall be brought under this Act
against any person to whom the registered
manufacturer, bottler or seller, has transferred
by way of sale, any of the containers herein
referred to, but the sale of the beverage
contained in the said containers shall not
include the sale of the containers unless
specifically so provided.
Sec. 6. The provisions of this Act shall not be
interpreted as prohibiting the use of bottles as
containers for "sisi," "bagoong," "patis," and
similar native products.
5. Scarcely disputed are certain and specific industry
practices in the sale of gin:
The manufacturer sells the product in marked
containers, through dealers, to the public in
supermarkets, grocery shops, retail stores and
other sales outlets.
The buyer takes the item; he is neither required to
return the bottle nor required to make a deposit
to assure its return to the seller. He could return
the bottle and get a refund.
A number of bottles at times find their way to
commercial users.
Ownership of the containers does pass on to the
consumer albeit subject to the statutory
limitation on the use of the registered
containers and to the trademark right of the
registrant.
i. The statement in Section 5 of
R.A. 623 to the effect that the "sale of
beverage contained in the said
containers shall not include the sale of
the containers unless specifically so
provided" is not a rule of proscription.
It is a rule of construction that, in
keeping with the spirit and intent of
the law, establishes at best a
presumption (of non-conveyance of
the container) and which by no means
can be taken to be either interdictive
or conclusive in character.
ii. Upon the other hand, LTDI's
sales invoice, stipulating that the "sale
does not include the bottles with the
blown-in marks of ownership of La
Tondeña Distillers," cannot affect
those who are not privies thereto.
6. While it may be unwarranted then for LTDI to simply
seize the empty containers, this Court finds it to be
legally absurd, however, to still allow petitioner to
recover the possession thereof.
The fact of the matter is that R.A. 623, as amended,
in affording trademark protection to the
registrant, has additionally expressed a prima
facie presumption of illegal use by a possessor
whenever such use or possession is without the
written permission of the registered
manufacturer, a provision that is neither
arbitrary nor without appropriate rationale.
Indeed, the appellate court itself has made a finding
of such unauthorized use by petitioner. The
Court sees no other logical purpose for
petitioner's insistence to keep the bottles,
except for such continued use. The practical
and feasible alternative is to merely require the
payment of just compensation to petitioner for
the bottles seized from it by LTDI. Conventional
wisdom, along with equity and justice to both
parties, dictates it.
Distilleria Washington v. La Tondena, 280 SCRA
116
The manufacturer sells the product in marked containers, through
dealers, to the public in supermarkets, grocery shops, retail stores
and other sales outlets. The buyer takes the item; he is neither
required to return the bottle nor required to make a deposit to
assure its return to the seller. He could return the bottle and get
a refund. A number of bottles at times find their way to
commercial users. It cannot be gainsaid that ownership of the
containers does pass on the consumer albeit subject to the
statutory limitations on the use of the registered containers and
to the trademark rights of the registrant.
In plain terms, therefore, La Tondeña not only sold its gin
products but also the marked bottles or containers, as well. And
when these products were transferred by way of sale, then
ownership over the bottles and all its attributes (jus utendi, jus
abutendi, just fruendi, jus disponendi) passed to the buyer. It
necessarily follows that the transferee has the right to possession
of the bottles unless he uses them in violation of the original
owner’s registered or incorporeal rights.
Furthermore, Sec. 5 of R.A. 623 states that when the bottles have
been “transferred by way of sale,” there should not be any need
of institution of any action included in the same act (where there
is a need of the written consent of the manufacturer, bottler, or
seller). Since the Court has found that the bottles have been
transferred by way of sale then, La Tondeña has relinquished all
its proprietary rights over the bottles in favor of Distilleria
Washington who has obtained them in due course. Now as owner,
it can exercise all attributes of ownership over the bottles.
The general rule on ownership, therefore, must apply and
petitioner be allowed to enjoy all the rights of an owner in regard
the bottles in question, to wit: the jus utendi or the right to receive
from the thing what it produces; the jus abutendi or the right to
consume the thing by its use; the jus disponendi or the power of
the owner to alienate, encumber, transform and even destroy the
thing owned; and the jus vindicandi or the right to exclude from
the possession of the thing owned any other person to whom the
owner has not transmitted such thing. What is proscribed is the
use of the bottles in infringement of another’s trademark or
incorporeal rights.
Twin Ace Holdings v. CA, 280 SCRA 884
Republic Act No. 623, "An Act to Regulate the Use of Duly
Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels and Other
Similar Containers," as amended by RA No. 5700, was meant to
protect the intellectual property rights of the registrants of the
containers and prevent unfair trade practices and fraud on the
public. However, the exemption granted in Sec. 6 thereof was
deemed extremely necessary to provide assistance and incentive
to the backyard, cottage and small-scale manufacturers of
indigenous native products such as patis, sisi and toyo who do not
have the capital to buy brand new bottles as containers nor afford
to pass the added cost to the majority of poor Filipinos who use
the products as their daily condiments or viands. If the contention
of petitioner is accepted, i.e., to construe the exemption as to
apply to criminal liability only but not to civil liability, the very
purpose for which the exemption was granted will be defeated.
None of the small-scale manufacturers of the indigenous native
products protected would possibly wish to use the registered
bottles if they are vulnerable to civil suits. The effect is a virtual
elimination of the clear and unqualified exemption embodied in
Sec. 6. It is worthy to note that House Bill No. 20585 was
completely rejected because it sought to expressly and directly
eliminate that which petitioner indirectly proposes to do with this
petition.
Petitioner cannot seek refuge in Sec. 5 of RA No. 623 to support
its claim of continuing ownership over the subject bottles. In
United States v. Manuel we held that since the purchaser at his
discretion could either retain or return the bottles, the transaction
must be regarded as a sale of the bottles when the purchaser
actually exercised that discretion and decided not to return them
to the vendor. We also take judicial notice of the standard practice
today that the cost of the container is included in the selling price
of the product such that the buyer of liquor or any such product
from any store is not required to return the bottle nor is the liquor
placed in a plastic container that possession of the bottle is
retained by the store.
b) Unfair Competition
Sec. 168 (and its sub-paragraphs), IPC
Difference between Infringement and Unfair
Competition:
Del Monte Corporation v. CA, 181 SCRA 410
The Supreme Court recognizes that there really are distinctions
between the designs of the logos or trademarks of Del Monte and
Sunshine Sauce. However, it has been that side by side
comparison is not the final test of similarity. Sunshine
Sauce’s logo is a colorable imitation of Del Monte’s trademark. The
word “catsup” in both bottles is printed in white and the style of
the print/letter is the same. Although the logo of Sunshine is not
a tomato, the figure nevertheless approximates that of a tomato.
The person who infringes a trade mark does not normally copy
out but only makes colorable changes, employing enough points
of similarity to confuse the public with enough points of
differences to confuse the courts. What is undeniable is the fact
that when a manufacturer prepares to package his product, he
has before him a boundless choice of words, phrases, colors and
symbols sufficient to distinguish his product from the others.
When as in this case, Sunshine chose, without a reasonable
explanation, to use the same colors and letters as those used by
Del Monte though the field of its selection was so broad, the
inevitable conclusion is that it was done deliberately to deceive.
The Supreme Court also ruled that Del Monte does not have the
exclusive right to use Del Monte bottles in the Philippines because
Philpack’s patent was only registered under the Supplemental
Register and not with the Principal Register. Under the law,
registration under the Supplemental Register is not a basis for a
case of infringement because unlike registration under the
Principal Register, it does not grant exclusive use of the patent.
However, the bottles of Del Monte do say in embossed letters:
“Del Monte Corporation, Not to be Refilled”. And yet Sunshine
Sauce refilled these bottles with its catsup products. This clearly
shows the Sunshine Sauce’s bad faith and its intention to
capitalize on the Del Monte’s reputation and goodwill and pass off
its own product as that of Del Monte.
Co vs. Spouses Yeung, GR 212705, September
10, 2014
Unfair competition is defined as the passing off (or palming off)
or attempting to pass off upon the public of the goods or business
of one person as the goods or business of another with the end
and probable effect of deceiving the public. This takes place where
the defendant gives his goods the general appearance ofthe
goods of his competitor with the intention of deceiving the public
that the goods are those of his competitor.
Although liable for unfair competition, the Court deems it apt to
clarify that Co was properly exculpated from the charge of
trademark infringement considering that the registration of the
trademark "Greenstone" – essential as it is in a trademark
infringement case – was not proven to have existed during the
time the acts complained of were committed, i.e., in May 2000. In
this relation, the distinctions between suits for trademark
infringement and unfair competition prove useful: (a) the former
is the unauthorized use of a trademark, whereas the latter is the
passing off of one's goods as those of another; (b) fraudulent
intent is unnecessary in the former, while it is essential in the
latter; and (c) in the former, prior registration of the trademark is
a pre-requisite to the action, while it is not necessary in the latter.
Pro Line Sports Center v. CA, 281 SCRA 162
The existence of probable cause for unfair competition by
UNIVERSAL is derivable from the facts and circumstances of the
case. The affidavit of Graciano Lacanaria, a former employee of
UNIVERSAL, attesting to the illegal sale and manufacture of
“Spalding” balls and seized “Spalding” products and instruments
from UNIVERSAL’s factory was sufficient prima facie evidence to
warrant the prosecution of private respondents. That a
corporation other than the certified owner of the trademark is
engaged in the unauthorized manufacture of products bearing the
same trademark engenders a reasonable belief that a criminal
offense for unfair competition is being committed.
 Universal Rubber Products v. CA, 130 SCRA 104
As a general rule, on obtaining an injunction for infringement of a
trademark, complainant is entitled to an accounting and recovery
of defendant's profits on the goods sold under that mark, as
incident to, and a part of, his property right, and this rule applies
in cases of unfair competition. In such case, the infringer or unfair
trader is required in equity to account for and yield up his gains
on a principle analogous to that which charges as trustee with the
profits acquired by the wrongful use of the property of the
cestuique trust, and defendant's profits are regarded as an
equitable measure of the compensation plaintiff should receive for
the past harm suffered by him.
Well-settled is Our jurisprudence that, in order to entitle a party
to the issuance of a "subpoena duces tecum ", it must appear, by
clear and unequivocal proof, that the book or document sought to
be produced contains evidence relevant and material to the issue
before the court, and that the precise book, paper or document
containing such evidence has been so designated or described
that it may be identified. A "subpoena duces tecum once issued
by the court may be quashed upon motion if the issuance thereof
is unreasonable and oppressive or the relevancy of the books,
documents or things does not appear, or if the persons in whose
behalf the subpoena is issued fails to advance the reasonable cost
of production thereof.
Converse Rubber Corp. v. Jacinto Rubber and
Plastic Co., 97 SCRA 158
In cases of unfair competition, while the requisite degree of
resemblance or similarity between the names, brands, or other
indicia is not capable of exact definition, it may be stated generally
that the similarity must be such, but need only be such, as is likely
to mislead purchasers of ordinary caution and prudence; or in
other words, the ordinary buyer, into the belief that the goods or
wares are those, or that the name or business is that, of another
producer or tradesman. It is not necessary in either case that the
resemblance be sufficient to deceive experts, dealers, or other
persons specially familiar with the trademark or goods involved.
Nor is it material that a critical inspection and comparison would
disclose differences, or that persons seeing the trademarks or
articles side by side would not be deceived.
Under Sec. 29 of the RA 166, it will be observed that the first
paragraph thereof refers to the property rights in goodwill of a
"person who has Identified in the mind of the public goods he
manufactures or deals in, his business or offices from those of
others, whether or not a mark or trade name is employed", while
the second paragraph speaks of "any person who shall employ
deception or any other means contrary to good faith by which he
shall pass off the goods manufactured by him ... for those of the
one having established such goodwill." This second paragraph,
which may be read together with the first paragraph, makes the
deceiver or imitator "guilty of unfair competition and shall be
subjected to an action therefore", meaning what the first
paragraph refers to as the "remedies provided in Section twenty-
three, Chapter V" of the Act. It is implicit in the decision of the
trial court and the briefs of the parties that everyone here
concerned has acted on the basis of the assumptions just stated.
Asia Brewery v. CA, 224 SCRA 437 (1993)
Sec. 22. Infringement, what constitutes. — Any person who shall
use, without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of any registered mark or
trade-name in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in connection
with which such use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such
goods or services, or identity of such business; or reproduce,
counterfeit, copy or colorably imitate any such mark or trade-
name and apply such reproduction, counterfeit, copy, or colorable
imitation to labels, signs, prints, packages, wrappers, receptacles
or advertisements intended to be used upon or in connection with
such goods, business or services, shall be liable to a civil action
by the registrant for any or all of the remedies herein provided.
Unfair competition is the employment of deception or any
other means contrary to good faith by which a person
shall pass off the goods manufactured by him or in which
he deals, or his business, or services, for those of another
who has already established goodwill for his similar
goods, business or services, or any acts calculated to
produce the same result.
Solid Triangle v. Sheriff, 370 SCRA 491 (2001)
Unfair Competition; There is no unfair competition under Section
168 of the Intellectual Property Code where a person did not pass
off the subject goods as that of another.—We disagree with
petitioners and find that the evidence presented before the trial
court does not prove unfair competition under Section 168 of the
Intellectual Property Code. Sanly Corporation did not pass off the
subject goods as that of another. Indeed, it admits that the goods
are genuine Mitsubishi photographic paper, which it purchased
from a supplier in Hong Kong. Petitioners also allege that private
respondents “made it appear that they were duly authorized to
sell or distribute Mitsubishi Photo Paper in the Philippines.”
Assuming that this act constitutes a crime, there is no proof to
establish such an allegation.
Sony Computer v. Supergreen, Inc., GR No.
161823, 22 March 2007
However, the case involves a transitory or continuing offense of
unfair competition under Sec 168 of Ra 8293 and pertinent to it is
Art 189 of the RPC which enumerates the elements of unfair
competition as:
a. That the offender gives his goods the general
appearance of the goods of another manufacturer or
dealer;
b. That the general appearance is shown in the (1) goods
themselves, or in the (2) wrapping of their packages, or
in the (3) device or words therein, or in (4) any other
feature of their appearance;
c. That the offender offers to sell or sells those goods or
gives other persons a chance or opportunity to do the
same with a like purpose; and
d. That there is actual intent to deceive the public or
defraud a competitor
Supergreen’s imitation of the general appearance of Sony’s goods
was done allegedly in Cavite. It sold the goods allegedly in
Mandaluyong City, Metro Manila. The alleged acts would
constitute a transitory or continuing offense. Thus, clearly, under
Section 2 (b) of Rule 126, Section 168 of Rep. Act No. 8293 and
Article 189 (1) of the Revised Penal Code, petitioner may apply
for a search warrant in any court where any element of the alleged
offense was committed, including any of the courts within the
National Capital Region (Metro Manila)
Sehwani, Inc. and Benita’s Frites, Inc. vs. IN-N-
OUT Burger, Inc., 536 SCRA 255 (2007)
SECTION 151. Cancellation. 151.1. A petition to cancel a
registration of a mark under this Act may be filed with the Bureau
of Legal Affairs by any person who believes that he is or will be
damaged by the registration of a mark under this Act as follows:
xxxx
(b) At any time, if the registered mark becomes the generic name
for the goods or services, or a portion thereof, for which it is
registered, or has been abandoned, or its registration was
obtained fraudulently or contrary to the provisions of this Act, or
if the registered mark is being used by, or with the permission of,
the registrant so as to misrepresent the source of the goods or
services on or in connection with which the mark is used. x x x.
Section 151(b) of R.A. No. 8293 specifically provides that a
petition to cancel the registration of a mark which is registered
contrary to the provisions thereof, or which is used to
misrepresent the source of the goods or services, may be filed at
any time.
Coca Cola v. Gomez, G.R. No. 154491, November
14, 2008
“Unfair competition,” previously defined in Philippine
jurisprudence in relation with R.A. No. 166 and Articles 188 and
189 of the Revised Penal Code, is now covered by Section 168 of
the Intellectual Property Code as this Code has expressly repealed
R.A. No. 165 and R.A. No. 166, and Articles 188 and 189 of the
Revised Penal Code; The law does not cover every unfair act
committed in the course of business—it covers only acts
characterized by “deception or any other means contrary to good
faith” in the passing off of goods and services as those of another
who has established goodwill in relation with these goods or
services, or any other act calculated to produce the same result.
Unfair competition has been defined as the passing off (or palming
off) or attempting to pass off upon the public the goods or
business of one person as the goods or business of another with
the end and probable effect of deceiving the public; Under Section
168 of the Intellectual Property Code, deception, passing off and
fraud upon the public are still the key elements that must be
present for unfair competition to exist.
Superior Commercial Enterprises vs. Kunnan Enterprises
Ltd., G.R. No. 169974. April 20, 2010.
Elements of trademark infringement: (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.”
Elements of Unfair Competition: (1) confusing similarity in the
general appearance of the goods; and (2) intent to deceive the
public and defraud a competitor.
There can be trademark infringement without unfair
competition such as when the infringer discloses on the
labels containing the mark that he manufactures the
goods, thus preventing the public from being deceived
that the goods originate from the trademark owner.
c) Action for False or Fraudulent Declaration
Sec. 162, IPC
Section 162. Action for False or Fraudulent Declaration. -
Any person who shall procure registration in the Office of a mark
by a false or fraudulent declaration or representation, whether
oral or in writing, or by any false means, shall be liable in a civil
action by any person injured thereby for any damages sustained
in consequence thereof (Sec. 26, R.A. No. 166)
d) Action for False Designation of Origin
Chester Uyco, et. al. vs. Vicente Lo, G.R. No.
202423, 28 January 2013
 Contrary to petitioners’ assertion, they made admissions
in their joint affidavit, which, in effect, controvert their
argument that they have not manufactured the products
bearing the marks “Made in Portugal” and “Original
Portugal” that were bought by Lo during the test buy.
 Said admissions show Wintrade’s former association with
Casa Hipolito S.A. Portugal; their decision to produce the
burners in the Philippines; their use of the disputed
marks; and their justification for their use.
 Thus, the evidence shows that petitioners, who are
officers of Wintrade, placed the words “Made in Portugal”
and "Original Portugal" with the disputed marks knowing
fully well — because of their previous dealings with the
Portuguese company — that these were the marks used
in the products of Casa Hipolito S.A. Portugal.
 More importantly, the products that Wintrade sold were
admittedly produced in the Philippines, with no authority
from Casa Hipolito S.A. Portugal.
 The law on trademarks and trade names precisely
precludes a person from profiting from the business
reputation built by another and from deceiving the public
as to the origins of products. These facts support the
consistent findings of the State Prosecutor, the DOJ and
the CA that probable cause exists to charge the
petitioners with false designation of origin.
 The fact that the evidence did not come from Lo, but had
been given by the petitioners, is of no significance.
 The argument that the words “Made in Portugal” and
“Original Portugal” refer to the origin of the design and
not to the origin of the goods does not negate the finding
of probable cause; nevertheless, petitioners are not
precluded from raising such argument as a defense
during the hearing of the case on the merits.
3. Criminal
Sec. 170, IPC
 Sy v. Court of Appeals, 113 SCRA 334
Art. 189. Unfair competition, fraudulent registration of trade-
mark, trade-name or service mark, fraudulent designation of
origin, and false description. — The penalty provided in the next
proceeding article shall be imposed upon:
1. Any person who, in unfair competition and for the purposes of
deceiving or defrauding another of his legitimate trade or the
public in general, shall sell his goods giving them the general
appearance of goods of another manufacturer or dealer, either as
to the goods themselves, or in the wrapping of the packages in
which they are contained or the device or words thereon or in any
other features of their appearance which would be likely to induce
the public to believe that the goods offered are those of a
manufacturer or dealer other than the actual manufacturer or
dealer or shall give other persons a chance or opportunity to do
the same with a like purpose.
Art. 188. Substituting and altering trade-mark, trade-names, or
service marks. — The penalty of prision correccional in its
minimum period or a fine ranging from 50 to 2,000 pesos, or both,
shall be imposed upon:
2. Any person who shall sell such articles of commerce or offer
the same for sale, knowing that the trade-name or trade- mark
has been fraudulently used in such goods as described in the
preceding subdivision;
Samson v. Judge Daway, GR Nos. 160054-55, July
21, 2004
The Supreme Court held that under Section 163 of the IPC,
actions for unfair competition shall be brought before the proper
courts with appropriate jurisdiction under existing laws. The law
contemplated in Section 163 of IPC is RA 166 otherwise known as
the Trademark Law. Section 27 of the Trademark Law provides
that jurisdiction over cases for infringement of registered marks,
unfair competition, false designation of origin and false description
or representation, is lodged with the Court of First Instance (now
Regional Trial Court). Since RA 7691 is a general law and IPC in
relation to Trademark Law is a special law, the latter shall prevail.
Actions for unfair competition therefore should be filed with the
RTC.
In the case at bar, the common element in the acts constituting
unfair competition under Section 168 of R.A. No. 8293 is fraud.
Pursuant to Article 33 of the Civil Code, in cases of defamation,
fraud, and physical injuries, a civil action for damages, entirely
separate and distinct from the criminal action, may be brought by
the injured party. Hence, Civil Case No. Q-00-41446, which as
admitted by private respondent also relate to unfair competition,
is an independent civil action under Article 33 of the Civil Code.
As such, it will not operate as a prejudicial question that will justify
the suspension of the criminal cases at bar.
William C. Yao, Sr. vs. The People Of The Philippines,
G.R. No. 168306. June 19, 2007.
Mere unauthorized use of a container bearing a 
registered trademark in connection with the sale,
distribution or advertising of goods or services which is
likely to cause confusion, mistake or deception among the
buyers/consumers can be considered as trademark
infringement.
In this case, certain facts and circumstances was deemed
sufficient to warrant probable cause. As the term implies,
“probable cause” is concerned with probability, not absolute or
even moral certainty. The standards of judgment are those of a
reasonably prudent man, not the exacting calibrations of a judge
after a full blown trial.
K. TRADENAMES
1. Definition
Sec. 121.3, IPC
Converse Rubber Corporation v. Universal Rubber
Products, 117 SCRA 154
A trade name is any individual name or surname, firm name,
device or word used by manufacturers, industrialists, merchants
and others to Identify their businesses, vocations or occupations.
As the trade name refers to the business and its goodwill ... the
trademark refers to the goods." The ownership of a trademark or
tradename is a property right which the owner is entitled to
protect "since there is damage to him from confusion or
reputation or goodwill in the mind of the public as well as from
confusion of goods. The modern trend is to give emphasis to the
unfairness of the acts and to classify and treat the issue as fraud.
2. What May Not Be Used As A Tradename?
Sec. 165.1, IPC
3. Rights of the Tradename Owner
Secs. 165.2, IPC
Philips Export v. CA, 206 SCRA 457
A corporation’s right to use its corporate and trade name is a
property right, a right in rem, which it may assert and protect
against the world in the same manner as it may protect its tangible
property, real or personal, against trespass or conversion.
It is regarded, to a certain extent as a property right and one
which cannot be impaired or defeated by subsequent
appropriation by another corporation in the same field.
Its name is one of its attributes, an element of its existence, a and
essential to its identity. The general rule as to corporations is that
each corporation must have a name by which it is to sue and be
sued and do all legal acts.
Confusing similarity – the test is whether the similarity is such as
to mislead a person using ordinary care and discrimination.
 The corporate names inevitably lead one to conclude that
“PHILIPS” is, indeed, the dominant word in that all the
companies affiliated or associated with the principal
corporation, PEBV, are known in the Philippines and
abroad as the PHILIPS Group of Companies.
Proof of actual confusion need not be shown. It suffices
that confusion is probably or likely to occur.
 Director of Patents had denied Respondent’s application
for registration of the trademarks for chains, rollers, belts,
bearings and cutting saw. That office held that PEBV had
 shipped to its subsidiaries in the PH equipment, machine
and their parts which fall under international class where
chains, rollers, belts, bearings, and cutting saw; the goods
in connection with which Respondent is seeking to register
also belong.
 Records show that there is similarity in the purposes in
Articles of Incorporation.
PHILIPS is a trademark or trade name which was registered as far
back as 1922. The petitioners, therefore, have the exclusive rights
to its use which must be free from any infringement by similarity.
A corporation has an exclusive right to the use of its name, which
may be protected by injunction upon a principle similar to that
upon which persons are protected in the use of trademarks and
tradenames. Such principle proceeds upon the theory that it is a
fraud on the corporation which has acquired a right to that name
and perhaps carried on its business thereunder, that another
should attempt to use the same name, or the same with a slight
variation in such a way as to induce persons to deal with it in the
belief that they are dealing with the corporation which has given
a reputation to the name.
Armco Steel Corporation v. SEC, 156 SCRA 822
ARMCO-STEEL-OHIO, having patented the term 'Armco' as part of
its trademark on its steel products, is entitled to protection in the
use thereof in the Philippines. The term "Armco" is now being
used on the products being manufactured and sold in this country
by Armco-Marsteel by virtue of its tie-up with ARMCO-STEEL-
OHIO. Clearly, the two companies have the right to the exclusive
use and enjoyment of said term.
Tradename owner may file a petition to compel the change of
name of another entity on the ground that it is very similar, if not
exactly the same as the name of the owner.
Western Equipments & Supply Co. v. Reyes, 51
Phil 115
The noncompliance of a foreign corporation with the statute may
be pleaded as an affirmative defense. Thereafter, it must appear
from the evidence, first, that the plaintiff is a foreign corporation,
second, that it is doing business in the Philippines, and third, that
it has not obtained the proper license as provided by the statute.
If it had been stipulated that the plaintiff, Western Electric
Company, Inc., had been doing business in the Philippine Islands
without first obtaining a license, another and a very different
question would be presented. That company is not here seeking
to enforce any legal or contract rights arising from, or growing out
of, any business which it has transacted in the Philippine Islands.
The sole purpose of the action:
"Is to protect its reputation, its corporate name, its goodwill,
whenever that reputation, corporate name or goodwill have,
through the natural development of its trade, established
themselves." And it contends that its rights to the use of its
corporate and trade name:
Is a property right, a right in rem, which may assert and protect
against all the world, in any of the courts of the world — even in
jurisdictions where it does not transact business — just the same
as it may protect its tangible property, real or personal, against
trespass, or conversion.
Since it is the trade and not the mark that is to be protect, a trade-
mark acknowledges no territorial boundaries of municipalities or
states or nations, but extends to every market where the trader's
goods have become known and identified by the use of the mark.
The plaintiff, Western Electric Company, Inc., has been in
existence as a corporation for over fifty years, during which time
it has established a reputation all over the world including the
Philippine Islands, for the kind and quality of its manufactured
articles, and it is very apparent that the whole purpose and intent
of Herman and his associates in seeking to incorporate another
corporation under the identical name of Western Electric
Company, Inc., and for the same identical purpose as that of the
plaintiff, is to trespass upon and profit by its good name and
business reputation. The very fact that Herman and his associates
have sought the use of that particular name for that identical
purpose is conclusive evidence of the fraudulent intent with which
it is done.
Coffee Partners, Inc. vs. San Francisco Coffee & Roastery,
Inc., G.R. No. 169504, 03 March 2010
… in Prosource International, Inc. v. Horphag Research
Management SA, this Court laid down what constitutes
infringement of an unregistered trade name, thus:
1. The trademark being infringed is registered in the
Intellectual Property Office; however, in infringement
of trade name, the same need not be registered;
2. The trademark or trade name is reproduced,
counterfeited, copied, or colorably imitated by the
infringer;
3. The infringing mark or trade name is used in connection
with the sale, offering for sale, or advertising of any
goods, business or services; or the infringing mark or
trade name is applied to labels, signs, prints, packages,
wrappers, receptacles, or advertisements intended to be
used upon or in connection with such goods, business,
or services;
4. The use or application of the infringing mark or trade
name is likely to cause confusion or mistake or to deceive
purchasers or others as to the goods or services
themselves or as to the source or origin of such goods
or services or the identity of such business; and
5. It is without the consent of the trademark or trade name
owner or the assignee thereof.
Clearly, a trade name need not be registered with the IPO before
an infringement suit may be filed by its owner against the owner
of an infringing trademark. All that is required is that the trade
name is previously used in trade or commerce in the Philippines.
RA 8293, which took effect on 1 January 1998, has dispensed with
the registration requirement. Section 165.2 of RA 8293
categorically states that trade names shall be protected, even
prior to or without registration with the IPO, against any unlawful
act including any subsequent use of the trade name by a third
party, whether as a trade name or a trademark likely to mislead
the public.
It is the likelihood of confusion that is the gravamen of
infringement. Applying 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. Petitioner and respondent are engaged
in the same business of selling coffee, whether wholesale or retail.
The likelihood of confusion is higher in cases where the business
of one corporation is the same or substantially the same as that
of another corporation. In this case, the consuming public will
likely be confused as to the source of the coffee being sold at
petitioner’s coffee shops.
Fredco Manufacturing Corporation V. President And
Fellows Of Harvard College (Harvard University), G.R. No.
185917, June 1, 2011
competent authority would either be the registering authority if it
has the power to decide this, or the courts of the country in
question if the issue comes before the courts.
To be protected under the two directives of the Ministry of Trade,
an internationally well-known mark need not be registered or
used in the Philippines. All that is required is that the mark is well-
known internationally and in the Philippines for identical or similar
goods, whether or not the mark is registered or used in the
Philippines.
L. COLLECTIVE MARKS
1. Definition
Sec. 121.2, IPC

Indisputably, Fredco does not have any affiliation or connection

with Harvard University, or even with Cambridge, Massachusetts.
Fredco or its predecessor New York Garments was not established
in 1936, or in the U.S.A. as indicated by Fredco in its oblong logo.
Fredco offered no explanation to the Court of Appeals or to the
IPO why it used the mark Harvard on its oblong logo with the
words Cambridge, Massachusetts, Established in 1936, and USA.
Fredco now claims before this Court that it used these words to
evoke a lifestyle or suggest a desirable aura of petitioners clothing
lines. Fredcos belated justification merely confirms that it sought
to connect or associate its products with Harvard University, riding
on the prestige and popularity of Harvard University, and thus
appropriating part of Harvard Universitys goodwill without the
latters consent.

… this Court has ruled that the Philippines is obligated to assure

nationals of countries of the Paris Convention that they are
afforded an effective protection against violation of their
intellectual property rights in the Philippines in the same way that
their own countries are obligated to accord similar protection to
Philippine nationals.

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.

Harvard is the trade name of the world famous Harvard

University, and it is also a trademark of Harvard University. Under
Article 8 of the Paris Convention, as well as Section 37 of R.A. No.
166, Harvard University is entitled to protection in the Philippines
of its trade name Harvard even without registration of such trade
name in the Philippines. This means that no educational entity in
the Philippines can use the trade name Harvard without the
consent of Harvard University. Likewise, no entity in the
Philippines can claim, expressly or impliedly through the use of
the name and mark Harvard, that its products or services are
authorized, approved, or licensed by, or sourced from, Harvard
University without the latters consent.

In Mirpuri, the Court ruled that the essential requirement under

Article 6bis of the Paris Convention is that the trademark to be
protected must be well-known in the country where protection is
sought. The Court declared that the power to determine whether
a trademark is well-known lies in the competent authority of the
country of registration or use. The Court then stated that the