G.R. No. 169504 March 3, 2010 their appearances.
their appearances. Petitioner argued respondent stopped operating under the trade name "SAN
COFFEE PARTNERS, INC., Petitioner,
vs.
SAN FRANCISCO COFFEE & ROASTERY, INC., Respondent.
DECISION
CARPIO, J.:
The Case
This is a petition for review1 of the 15 June 2005 Decision2 and the 1 September 2005
Resolution3 of the Court of Appeals in CA-G.R. SP No. 80396. In its 15 June 2005 Decision, the
Court of Appeals set aside the 22 October 2003 Decision4 of the Office of the Director General-
Intellectual Property Office and reinstated the 14 August 2002 Decision5 of the Bureau of Legal
Affairs-Intellectual Property Office. In its 1 September 2005 Resolution, the Court of Appeals
denied petitioner’s motion for reconsideration and respondent’s motion for partial
reconsideration.
The Facts
Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing
and maintaining coffee shops in the country. It registered with the Securities and Exchange
Commission (SEC) in January 2001. It has a franchise agreement 6 with Coffee Partners Ltd.
(CPL), a business entity organized and existing under the laws of British Virgin Islands, for a
non-exclusive right to operate coffee shops in the Philippines using trademarks designed by CPL
such as "SAN FRANCISCO COFFEE."
Respondent is a local corporation engaged in the wholesale and retail sale of coffee. It
registered with the SEC in May 1995. It registered the business name "SAN FRANCISCO
COFFEE & ROASTERY, INC." with the Department of Trade and Industry (DTI) in June 1995.
Respondent had since built a customer base that included Figaro Company, Tagaytay
Highlands, Fat Willy’s, and other coffee companies.
In 1998, respondent formed a joint venture company with Boyd Coffee USA under the company
name Boyd Coffee Company Philippines, Inc. (BCCPI). BCCPI engaged in the processing,
roasting, and wholesale selling of coffee. Respondent later embarked on a project study of
setting up coffee carts in malls and other commercial establishments in Metro Manila.
In June 2001, respondent discovered that petitioner was about to open a coffee shop under the
name "SAN FRANCISCO COFFEE" in Libis, Quezon City. According to respondent, petitioner’s
shop caused confusion in the minds of the public as it bore a similar name and it also engaged
in the business of selling coffee. Respondent sent a letter to petitioner demanding that the latter
stop using the name "SAN FRANCISCO COFFEE." Respondent also filed a complaint with the
Bureau of Legal Affairs-Intellectual Property Office (BLA-IPO) for infringement and/or unfair
competition with claims for damages.
In its answer, petitioner denied the allegations in the complaint. Petitioner alleged it filed with the
Intellectual Property Office (IPO) applications for registration of the mark "SAN FRANCISCO
COFFEE & DEVICE" for class 42 in 1999 and for class 35 in 2000. Petitioner maintained its
mark could not be confused with respondent’s trade name because of the notable distinctions in
FRANCISCO COFFEE" when it formed a joint venture with Boyd Coffee USA. Petitioner
contended respondent did not cite any specific acts that would lead one to believe petitioner
had, through fraudulent means, passed off its mark as that of respondent, or that it had diverted
business away from respondent.
Mr. David Puyat, president of petitioner corporation, testified that the coffee shop in Libis,
Quezon City opened sometime in June 2001 and that another coffee shop would be opened in
Glorietta Mall, Makati City. He stated that the coffee shop was set up pursuant to a franchise
agreement executed in January 2001 with CPL, a British Virgin Island Company owned by
Robert Boxwell. Mr. Puyat said he became involved in the business when one Arthur Gindang
invited him to invest in a coffee shop and introduced him to Mr. Boxwell. For his part, Mr.
Boxwell attested that the coffee shop "SAN FRANCISCO COFFEE" has branches in Malaysia
and Singapore. He added that he formed CPL in 1997 along with two other colleagues, Shirley
Miller John and Leah Warren, who were former managers of Starbucks Coffee Shop in the
United States. He said they decided to invest in a similar venture and adopted the name "SAN
FRANCISCO COFFEE" from the famous city in California where he and his former colleagues
once lived and where special coffee roasts came from.
The Ruling of the Bureau of Legal Affairs-Intellectual Property Office
In its 14 August 2002 Decision, the BLA-IPO held that petitioner’s trademark infringed on
respondent’s trade name. It ruled that the right to the exclusive use of a trade name with
freedom from infringement by similarity is determined from priority of adoption. Since respondent
registered its business name with the DTI in 1995 and petitioner registered its trademark with the
IPO in 2001 in the Philippines and in 1997 in other countries, then respondent must be protected
from infringement of its trade name.
The BLA-IPO also held that respondent did not abandon the use of its trade name as substantial
evidence indicated respondent continuously used its trade name in connection with the purpose
for which it was organized. It found that although respondent was no longer involved in blending,
roasting, and distribution of coffee because of the creation of BCCPI, it continued making plans
and doing research on the retailing of coffee and the setting up of coffee carts. The BLA-IPO
ruled that for abandonment to exist, the disuse must be permanent, intentional, and voluntary.
The BLA-IPO held that petitioner’s use of the trademark "SAN FRANCISCO COFFEE" will likely
cause confusion because of the exact similarity in sound, spelling, pronunciation, and
commercial impression of the words "SAN FRANCISCO" which is the dominant portion of
respondent’s trade name and petitioner’s trademark. It held that no significant difference resulted
even with a diamond-shaped figure with a cup in the center in petitioner's trademark because
greater weight is given to words – the medium consumers use in ordering coffee products.
On the issue of unfair competition, the BLA-IPO absolved petitioner from liability. It found that
petitioner adopted the trademark "SAN FRANCISCO COFFEE" because of the authority granted
to it by its franchisor. The BLA-IPO held there was no evidence of intent to defraud on the part of
petitioner.
The BLA-IPO also dismissed respondent’s claim of actual damages because its claims of profit
loss were based on mere assumptions as respondent had not even started the operation of its
coffee carts. The BLA-IPO likewise dismissed respondent’s claim of moral damages, but granted
its claim of attorney’s fees.
Both parties moved for partial reconsideration. Petitioner protested the finding of infringement,
while respondent questioned the denial of actual damages. The BLA-IPO denied the parties’
partial motion for reconsideration. The parties appealed to the Office of the Director General-
Intellectual Property Office (ODG-IPO).
The Ruling of the Office of the Director General-
Intellectual Property Office
In its 22 October 2003 Decision, the ODG-IPO reversed the BLA-IPO. It ruled that petitioner’s
use of the trademark "SAN FRANCISCO COFFEE" did not infringe on respondent's trade name.
The ODG-IPO found that respondent had stopped using its trade name after it entered into a
joint venture with Boyd Coffee USA in 1998 while petitioner continuously used the trademark
since June 2001 when it opened its first coffee shop in Libis, Quezon City. It ruled that between
a subsequent user of a trade name in good faith and a prior user who had stopped using such
trade name, it would be inequitable to rule in favor of the latter.
The Ruling of the Court of Appeals
In its 15 June 2005 Decision, the Court of Appeals set aside the 22 October 2003 decision of the
ODG-IPO in so far as it ruled that there was no infringement. It reinstated the 14 August 2002
decision of the BLA-IPO finding infringement. The appellate court denied respondent’s claim for
actual damages and retained the award of attorney’s fees. In its 1 September 2005 Resolution,
the Court of Appeals denied petitioner’s motion for reconsideration and respondent’s motion for
partial reconsideration.
The Issue
The sole issue is whether petitioner’s use of the trademark "SAN FRANCISCO COFFEE"
constitutes infringement of respondent’s trade name "SAN FRANCISCO COFFEE &
ROASTERY, INC.," even if the trade name is not registered with the Intellectual Property Office
(IPO).
The Court’s Ruling
The petition has no merit.
Petitioner contends that when a trade name is not registered, a suit for infringement is not
available. Petitioner alleges respondent has abandoned its trade name. Petitioner points out that
respondent’s registration of its business name with the DTI expired on 16 June 2000 and it was
only in 2001 when petitioner opened a coffee shop in Libis, Quezon City that respondent made a
belated effort to seek the renewal of its business name registration. Petitioner stresses
respondent’s failure to continue the use of its trade name to designate its goods negates any
allegation of infringement. Petitioner claims no confusion is likely to occur between its trademark
and respondent’s trade name because of a wide divergence in the channels of trade, petitioner
serving ready-made coffee while respondent is in wholesale blending, roasting, and distribution
of coffee. Lastly, petitioner avers the proper noun "San Francisco" and the generic word "coffee"
are not capable of exclusive appropriation.
Respondent maintains the law protects trade names from infringement even if they are not
registered with the IPO. Respondent claims Republic Act No. 8293 (RA 8293)7 dispensed with
registration of a trade name with the IPO as a requirement for the filing of an action for
infringement. All that is required is that the trade name is previously used in trade or commerce
in the Philippines. Respondent insists it never abandoned the use of its trade name as
evidenced by its letter to petitioner demanding immediate discontinuation of the use of its
trademark and by the filing of the infringement case. Respondent alleges petitioner’s trademark
is confusingly similar to respondent’s trade name. Respondent stresses ordinarily prudent
consumers are likely to be misled about the source, affiliation, or sponsorship of petitioner’s
coffee.
As to the issue of alleged abandonment of trade name by respondent, the BLA-IPO found that
respondent continued to make plans and do research on the retailing of coffee and the
establishment of coffee carts, which negates abandonment. This finding was upheld by the
Court of Appeals, which further found that while respondent stopped using its trade name in its
business of selling coffee, it continued to import and sell coffee machines, one of the services for
which the use of the business name has been registered. The binding effect of the factual
findings of the Court of Appeals on this Court applies with greater force when both the quasi-
judicial body or tribunal like the BLA-IPO and the Court of Appeals are in complete agreement
on their factual findings. It is also settled that absent any circumstance requiring the overturning
of the factual conclusions made by the quasi-judicial body or tribunal, particularly if affirmed by
the Court of Appeals, the Court necessarily upholds such findings of fact. 8
Coming now to the main issue, in Prosource International, Inc. v. Horphag Research
Management SA,9 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.10 (Emphasis supplied)
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. 11
Section 22 of Republic Act No. 166,12 as amended, required registration of a trade name as a
condition for the institution of an infringement suit, to wit:
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. (Emphasis supplied)
However, 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.1avvph!1 Thus:
has exclusive use of the geographic word "San Francisco" or the generic word "coffee."
Geographic or generic words are not, per se, subject to exclusive appropriation. It is only the
combination of the words "SAN FRANCISCO COFFEE," which is respondent’s trade name in its
coffee business, that is protected against infringement on matters related to the coffee business
to avoid confusing or deceiving the public.
In Philips Export B.V. v. Court of Appeals,17 this Court held that a corporation has an exclusive
right to the use of its name. The right proceeds from 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 name 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.18

SEC. 165.2 (a) Notwithstanding any laws or regulations providing for any obligation to This Court is not just a court of law, but also of equity. We cannot allow petitioner to profit by the
register trade names, such names shall be protected, even prior to or without name and reputation so far built by respondent without running afoul of the basic demands of fair
registration, against any unlawful act committed by third parties. play. Not only the law but equity considerations hold petitioner liable for infringement of
respondent’s trade name.
(b) In particular, any subsequent use of a trade name by a third party, whether as a trade name
or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead The Court of Appeals was correct in setting aside the 22 October 2003 Decision of the Office of
the public, shall be deemed unlawful. (Emphasis supplied) the Director General-Intellectual Property Office and in reinstating the 14 August 2002 Decision
of the Bureau of Legal Affairs-Intellectual Property Office.
It is the likelihood of confusion that is the gravamen of infringement. But there is no absolute
standard for likelihood of confusion. Only the particular, and sometimes peculiar, circumstances WHEREFORE, we DENY the petition for review. We AFFIRM the 15 June 2005 Decision and 1
of each case can determine its existence. Thus, in infringement cases, precedents must be September 2005 Resolution of the Court of Appeals in CA-G.R. SP No. 80396.
evaluated in the light of each particular case.13
Costs against petitioner.
In determining similarity and likelihood of confusion, our jurisprudence has developed two tests:
the dominancy test and the holistic test. The dominancy test focuses on the similarity of the
SO ORDERED.
prevalent features of the competing trademarks that might cause confusion and deception, thus
constituting infringement. If the competing trademark contains the main, essential, and dominant
features of another, and confusion or deception is likely to result, infringement occurs. Exact ANTONIO T. CARPIO
duplication or imitation is not required. The question is whether the use of the marks involved is Associate Justice
likely to cause confusion or mistake in the mind of the public or to deceive consumers. 14
WE CONCUR:
In contrast, the holistic test entails a consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity. 15 The
discerning eye of the observer must focus not only on the predominant words but also on the
other features appearing on both marks in order that the observer may draw his conclusion
whether one is confusingly similar to the other.16

Applying either the dominancy test or the holistic test, petitioner’s "SAN FRANCISCO COFFEE"
trademark is a clear infringement of respondent’s "SAN FRANCISCO COFFEE & ROASTERY,
INC." trade name. The descriptive words "SAN FRANCISCO COFFEE" are precisely the
dominant features of respondent’s trade name. 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. Petitioner’s argument that "San
Francisco" is just a proper name referring to the famous city in California and that "coffee" is
simply a generic term, is untenable. Respondent has acquired an exclusive right to the use of
the trade name "SAN FRANCISCO COFFEE & ROASTERY, INC." since the registration of the
business name with the DTI in 1995. Thus, respondent’s use of its trade name from then on
must be free from any infringement by similarity. Of course, this does not mean that respondent
G.R. No. L-28554 February 28, 1983
UNNO COMMERCIAL ENTERPRISES, INCORPORATED, petitioner,
vs.
GENERAL MILLING CORPORATION and TIBURCIO S. EVALLE, in his capacity as Director
of Patents, respondents.
Salem & Dionisio Law Office for petitioner.
Siguion Reyna, Montecillo, Bello & Ongsiako for private respondent.
TEEHANKEE, J.:
The Court affirms respondent Director of Patent's decision declaring respondent General Milling
Corporation as the prior user of the trademark "All Montana" on wheat flour in the Philippines
and ordering the cancellation of the certificate of registration for the same trademark previously
issued in favor of petitioner Unno Commercial Enterprises, Incorporated, it appearing that Unno
Commercial Enterprises, Inc. merely acted as exclusive distributor of All Montana wheat flour in
the Philippines. Only the owner of a trademark, trade name or service mark may applly for its
registration and an importer, broker, indentor or distributor acquires no rights to the trademark of
the goods he is dealing with in the absence of a valid transfer or assignment of the trade mark.
On December 11, 1962, respondent General Milling Corporation filed an application for the
registration of the trademark "All Montana" to be used in the sale of wheat flour. In view of the
fact that the same trademark was previously, registered in favor of petitioner Unno Commercial
Enterprises, Inc., the Chief Trademark Examiner of the Philippines Patent Office declared an
interference proceeding 1 between respondent corporation's application (Serial No. 9732), as
Junior - Party-Applicant and petitioner company's registration (Registration No. 9589), as Senior
Party-Applicant, docketed in the Philippines Patent Office as Inter Partes Case No. 313, to
determine which party has previously adopted and used the trademark "All Montana".
Respondent General Milling Corporation, in its application for registration, alleged that it started
using the trademark "All Montana" on August 31, 1955 and subsequently was licensed to use
the same by Centennial Mills, Inc. by virtue of a deed of assignment executed on September 20,
1962. On the other hand petitioner Unno Commercial Enterprises, Inc. argued that the same
trademark had been registered in its favor on March 8, 1962 asserting that it started using the
trademark on June 30, 1956, as indentor or broker for S.H. Huang Bros. & Co., a local firm.
The Director of Patents, after hearing, ruled in favor of respondent General Milling Corporation
and rendered its decision as follows:
However, there is testimony in the record (t.s.n., pp. 11-12, Jan.17,1967,
testimony of Jose Uy) to the effect that, indispensable, "ALL MONTANA"
wheat flour is a premium flour produced from premium wheat coming from
the State of Montana, U.S.A. It is apparent that the trademark is primarily
geographically descriptive of the goods. It is therefore a matter overlooked
by the Trademark Examiner, and it is incumbent upon him to determine if
the applicant should claim and is qualified to claim distinctiveness under
Section 4(f) of the Trademark Statute. Otherwise, it is registrable on the
Supplemental Register and should thus be registered therein.
WHEREFORE, the Junior Party-Applicant is adjudged prior -user of the
trademark ALL MONTANA, but 'because it is primarily geographically
descriptive, the application is herein remanded to the Chief Trademark
Examiner for proper proceeding before issuance of the certificate of
registration.
The certificate of registration issued to the Senior Party is ordered
cancelled.
IT IS SO ORDERED.
After its motion for reconsideration was denied, petitioner brought the instant petition seeking the
reversal of the decision and praying that it be declared the owner and prior user of the trademark
"All Montana" on wheat flour.
Petitioner based its claim of ownership over the trademark in question by the fact that it acted as
an indentor or broker for S. H. Huang Bros. & Co., a local importer of wheat flour, offering as
evidence the various shipments, documents, invoices and other correspondence of Centennial
Mills, Inc., shipping thousand of bags of wheat flour bearing the trademark "All Montana" to the
Philippines. Petitioner argued that these documents, invoices and correspondence proved the
fact that it has been using the trademark "All Montana" as early as 1955 in the concept of an
owner and maintained that anyone, whether he is only an importer, broker or indentor can
appropriate, use and own a particular mark of its own choice although he is not the manufacturer
of the goods he deals with. Relying on the provisions of Section 2-A of the Trademarks
Law 2 (Republic Act 166), petitioner insists that "the appropriation and ownership of a particular
trademark is not merely confined to producers or manufacturers but likewise to anyone who
lawfully deals in merchandise who renders any lawful service in commerce, like petitioner in the
case at bar. 3
The right to register trademark is based on ownership. 4 When the applicant is not the owner of
the trademark being applied for, he has no right to apply for the registration of the same. 5 Under
the Trademark Law only the owner of the trademark, trade name or service mark used to
distinguish his goods, business or service from the goods, business or service of others is
entitled to register the same. 6
The term owner does not include the importer of the goods bearing the trademark, trade name,
service mark, or other mark of ownership, unless such importer is actually the owner thereof in
the country from which the goods are imported. A local importer, however, may make application
for the registration of a foreign trademark, trade name or service mark if he is duly authorized by
the actual owner of the name or other mark of ownership. 7
Thus, this Court, has on several occasions ruled that where the applicant's alleged ownership is
not shown in any notarial document and the applicant appears to be merely an importer or
distributor of the merchandise covered by said trademark, its application cannot be granted. 8
Moreover, the provision relied upon by petitioner (Sec. 2-A, Rep. Act No. 166) allows one "who
lawfully produces or deals in merchandise ... or who engages in any lawful business or who
renders any lawful service in commerce, by actual use thereof . . . (to) appropriate to his
exclusive use a trademark, or a service mark not so appropriated by another. " In the case at
bar, the evidence showed that the trademark "All Montana" was owned and registered in the
name of Centennial Mills, Inc. which later transferred it to respondent General Milling
Corporation by way of a deed of assignment. It is undisputed that way back in March, 1955,
Centennial Mills, Inc. under the tradename Wenatchee Milling Co., exported flour to the
Philippines, through its distributor, herein petitioner Unno Commercial Enterprises, Inc. which
acted as indentor or broker for the firm S. H. Huang Bros. & Co. However, because of increased
taxes and subsidies, Centennial Mills discontinued shipments of flour in the Philippines and
eventually sold its brands for wheat flour, including "All Montana" brand to respondent General
Milling Corporation in consideration of 1,000 shares of stock of respondent corporation with a
par value of P100.00 per share or a total of P100,000.00. Respondent General Milling
Corporation, since the start of the operation in 1961 of its flour mills located in Lapu-lapu City,
Cebu has been manufacturing and selling "All Montana" flour in the Philippines.
discharged the burden of proving priority of adoption and use and is entitled to registration." It is
well-settled that we are precluded from making further inquiry, since the findings of fact of the
Director of Patents in the absence of any showing that there was grave abuse of discretion is
binding on us 12 and the findings of facts by the Director of Patents are deemed conclusive in the
Supreme Court provided that they are supported by substantial evidence. 13 Petitioner has failed
to show that the findings of fact of the Director of Patents are not substantially supported by
evidence nor that any grave abuse of discretion was committed.

As against petitioner's argument that respondent failed to establish convincingly the ownership Finally, the Court finds without merit petitioner's argument that the Director of Patents could not
of the trademark "All Montana" by its assignor Centennial Mills, Inc., the Director of Patents order the cancellation of' its certificate of registration in an interference proceeding and that the
correctly found that ample evidence was presented that Centennial Mills, Inc. was the owner and question of whether or not a certificate of registration is to be cancelled should have been
prior user in the Philippines of the trademark "All Montana" through a local importer and broker. brought in cancellation proceedings. Under Rule 178 of the Rules of the Patent Office in
The Deed of Assignment itself constitutes sufficient proof of its ownership of the trademark "All Trademark Cases, 14 the Director of Patents is expressly authorized to order the cancellation of a
Montana," showing that Centennial Mills was a corporation duly organized and existing under registered mark or trade name or name or other mark of ownership in an inter partes case, such
and by virtue of the laws of the State of Oregon, U.S.A. with principal place and business at as the interference proceeding at bar. 15
Portland, Oregon, U.S.A. and the absolute and registered owner of several trademarks for wheat
flour, i.e. (Imperial, White Lily, Duck, General, Swan, White Horse, Vinta, El Paro, Baker's Joy,
WHEREFORE, the appealed decision is hereby affirmed. No costs.
Choice, Red Bowl All Montana and Dollar.) all of which were assigned by it to respondent
General Milling Corporation. The deed of assignment was signed by its president, Dugald
MacGregor, duly acknowledged before James Hunt, a notary public for the State of Oregon, Melencio-Herrera, Plana, Vasquez, Relova and Gutierrez, Jr., JJ., concur.
accompanied by a certification issued by the Secretary of State of the State of Oregon stating
that the said James Hunt is a duly qualified Notary Public with full power and authority to take
acknowledgments of all oaths and that full faith and credit should be given to his official acts as
notary public.

The Director of Patents likewise correctly rejected petitioner's contention that in a 1954
conference in Manila the ownership and use by petitioner of the brand "All Montana" was agreed
upon, on the contrary finding that "Details of that meeting were, however, explained by Mr.
Dugald MacGregor, President of Centennial Mills, Inc., as the Junior Party's rebuttal witness. Mr.
MacGregor confirmed holding such conference in a restaurant in Manila with representatives of
the Senior Party, namely; Messrs. Jose Uy, Francisco Gonzales and S. H. Huang although he
could not remember the name of the restaurant. He further explained that his company owned
the trademark; that it had been using the mark in the United States; and that ownership of the
mark had never been conferred upon any other company, much less the Senior Party"; and
"Inasmuch as it was not the owner of the trademark, the Senior Party could not be regarded as
having used and adopted it, and had no right to apply for its registration. It acknowledged that it
was a mere importer of flour, and a mere importer and distributor acquires no rights in the mark
used on the imported goods by the foreign exporter in the absence of an assignment of any kind
... Trademarks used and adopted on goods manufactured or packed in a foreign country in
behalf of a domestic importer, broker, or indentor and distributor are presumed to be owned by
the manufacturer or packer, unless there is a written agreement clearly showing that ownership
vests in the importer, broker, indentor or distributor.

Thus, petitioner's contention that it is the owner of the mark "All Montana" because of its
certificate of registration issued by the Director of Patents, must fail, since ownership of a
trademark is not acquired by the mere fact of registration alone. 9 Registration merely creates
a prima facie presumption of the validity of the registration, of the registrant's ownership of the
trademark and of the exclusive right to the use thereof. 10 Registration does not perfect a
trademark right. 11 As conceded itself by petitioner, evidence may be presented to overcome the
presumption. Prior use by one will controvert a claim of legal appropriation, by subsequent
users. In the case at bar, the Director of Patents found that "ample evidence was presented in
the record that Centennial Mills, Inc. was the owner and prior user in the Philippines of the
trademark 'All Montana' through a local importer and broker. Use of a trademark by a mere
importer, indentor or exporter (the Senior Party herein) inures to the benefit of the foreign
manufacturer whose goods are Identified by the trademark. The Junior Party has hereby
established a continuous chain of title and, consequently, prior adoption and use" and ruled that
"based on the facts established, it is safe to conclude that the Junior Party has satisfactorily
G.R. No. L-29123 March 29, 1972
SY CHNG, petitioner-appellee,
vs.
GAW LIU, respondent-registrant-appellant. .
Manuel Dulay for petitioner-appellee.
G.S. Arbolario for respondent-registrant-appellant.
FERNANDO, J.:p
Respondent Gaw Liu would have this Court set aside an order of the Director of Patents at the
instance of petitioner Sy Chng revoking a registration for a trademark used on his product
consisting of dyestuff. What respondent seeks from us is not easy to grant. Director Tiburcio
Evalle in his well-written decision took particular pains to demonstrate the weak and inconclusive
character of claim of respondent as against the rather convincing proof offered by petitioner in
support of his stand. The questions he raised are essentially factual. On that point, it is well-
settled that in the absence of arbitrariness, the conclusion reached by the Director of Patents is
to be accorded respect and must be upheld. Respondent did likewise essay a colorable attempt
at assigning as one of the alleged errors what could pass for a legal issue, but it cannot be said
that he was any more successful. Accordingly, we affirm.
The case arose from a petition filed by Sy Chng to cancel a certificate of registration No. 10637,
of a trademark, LION and TIGER issued by the Philippines Patent Office on December 12, 1963
in favor of respondent Gaw Liu. The application was filed on February 20 of that year, the use of
such trademark on his product consisting of dyestuffs allegedly dating back to 1956. Petitioner
Sy Chng did seek such a cancellation on the allegation that he had previously used such a
trademark since 1952 on aniline basic colors or goods similar to those manufactured or sold by
respondent whom he accused of fraudulently appropriating and registering the same with full
knowledge that he was the owner. There was a denial by respondent.
After noting that both parties adduced evidence both oral and documentary, Director Evalle in
his decision January 29, 1968 set forth the evidence for petitioner as follows: "Petitioner's
principal witness is Sy Chang, his assistant manager, who testified that he has been connected
with Venus Commercial since 1949 up to the present. His firm allegedly is engaged in the
manufacture of dyestuff, crayone, stationery, and school supplies, and in the sale of dyestuff the
trademark LION and TIGER label has been adopted since 1952. The witness identified a LION-
TIGER label being used by Petitioner. It was designed for Venus Commercial in 1952 by Mr.
Gaudencio Eugenia, a free lance artist who confirmed this fact by testifying that around June,
1952, upon request of Sy Chang, he designed a label for dyestuff, the LION & TIGER label for
which he was duly compensated. The design was in turn first printed by Majestic Press owned
by the other witness, Antonio T. Cheng, who affirmed that he knew Venus Commercial because
of a printing job in 1952 pertaining to the 10,000 pieces of LION-TIGER label. He allegedly had
been printing lots of jobs for the firm, and for the printing of LION-TIGER labels, he confirmed
having been paid P150.00 for said job on October 14, 1952. Continuing, witness Sy Chang
presented an itemized list of customers who purchase LION-TIGER dyestuff from Venus
Commercial. The earliest sale of merchandise bearing the said trademark, as shown by the list,
the copy of the corresponding invoice issued by the firm, and the corresponding entry on
Petitioner's mercantile books was made on October 28, 1952. A total of one hundred one (101)
invoices issued since then was also presented and duly identified by the witness, the latest one
bearing the date April 27, 1965. To prove promotonal activities, calendars for the years 1958,
1961, 1964, 1965 and 1966, were presented to and identified by the witness, they having been
issued by Venus Commercial, clearly depicting the goods it deals in, including the LION-TIGER
aniline basic colors."1
Then came this portion of the decision: "The witness asserted that the Respondent knew
Petitioner's use of the label trademark because Respondent was also engaged in chemicals and
dyestuffs, and who sometimes bought from Venus Commercial raw materials, as shown by a
purchase made by Respondent from Petitioner of dyestuff on November 26, 1954. Witness Sy
Chang further asserted that he first came to know Gaw Liu when the Petitioner received a letter
dated April 24, 1964 from Respondent who demanded that Venus Commercial refrain from using
the trademark LION-TIGER, otherwise he would bring criminal and civil actions in court. This
letter was sent to Petitioner's legal counsel who arranged a meeting between Petitioner and
Respondent at Botica Boie, Escolta Manila, for possible amicable settlement which, however,
did not materialize because the Respondent, after having been offered payment of his
registration expenses and other settlement payment provided he refrained from further using the
trademark, demanded the sum of P80,000.00. The amount is allegedly the value of the
trademark. This fact was comfirmed by said legal counsel who also testified and alleged that at
that time Respondent recognized Petitioner as owner of LION-TIGER, and the respondent felt
that because the registration is in his favor, he had the right to demand P80,000.00. As a result,
and probably because they were not agreeable, the Petitioner and witness Sy Chang were
disgusted because they knew they owned and used the trademark for a long time. Since no
amicable settlement was reached, the Petitioner instituted this cancellation proceeding." 2
As for the defense of respondent, this is how the decision summarized matters: "The
Respondent also presented himself and one witness, Pua Chong Beng. The latter'stestimony,
however, was stricken from the record, upon motion of the Petitioner's counsel because said
witness failed to submit himself to further cross-examination, and it was ruled during the hearing
that his failure to further appear would result in the striking off of his testimony. Gaw Liu himself
next took the witness stand and testified that he was engaged in chemical manufacturing since
the Japanese occupation, with offices at Magdalena St., Manila. Thereafter, in 1947, he used
and adopted the brand TIGER for his dyestuff and later, he allegedly adopted LION & TIGER,
made some sales, as shown by an invoice dated December 10, 1951 issued to Pue Chong Beng
of Zamboanga. There was also another customer named Mr. Ong of Chin Cheng Trading, Jolo,
Sulu, but he could not produce an invoice because he did not send for it. Two more invoices,
one dated September 9, 1952 and the other October 31, 1952, were also exhibited to show sale
by him of LION-TIGER colors to Pua Chong Beng. He confirmed having known Venus
Commercial in 1951 or 1952 through the owner he knew only as "Mr. Cao" who used to offer him
discarded materials such as dyestuff and empty cans. He also admitted knowing witness Sy
Chng who worked for Venus Commercial, but only after 1952, but he had never been inside the
firm's establishment; neither had he received any calendar from said firm. According to him,
Venus Commercial sold dyestuff in 1950, or 1951, or 1952, using another brand he described as
a lady carrying on her back two children holding two rotating small drums. After it stopped selling
dyestuff of the "Lady" brand, they started using the LION brand in 1952 or 1953."3
The weakness of the testimony for respondent, now appellant, Gaw Liu was noted in such
decision: "Respondent affirmed the meeting which took place at Botica Boie but they merely
talked over cups of coffee. Afterwards a meeting between him and a "Mr. Ang" took place at the
Far East Restaurant where he told Mr. Ang that his trademark would cost P80,000.00 because
he had been advertising it for twenty years and he used it to support his family and to educate
his children. Mr. Ang told him that it was too high a price which the Petitioner could not afford to
pay. While being cross-examined, he said he could not produce his books and sales records
because they were all burned in the Binondo fire that occurred in 1960. (The parties however,
agreed that a fire took place in Binondo, Manila, on February 21, 1964.) After the fire, he
transferred his dyestuff business to San Juan, Rizal, where he already had a "screen process"
business. Thus, he could not relate his total annual net sales and profit for the sale of LION-
TIGER dyestuff. Asked how he advertised his trademark LION-TIGER, the Respondent said that
it was a small business so he did not advertise it either by newspaper, radio, or handbills, but he
sold it cheaper to convince people to use it. ... In the early phase of his testimony, Gaw Liu was 1. Four errors were assigned by respondent, now appellant, Gaw Liu. Three of them, except for
asked to explain why he claimed to have used the trademark in 1947 when, according to his the second assignment of error, are factual in character. Appellant would impress on this Court
application he first used it in commerce on June 10, 1956. He explained that it was because the that he did present the proof required by law to invest him with exclusive, continuous adoption
Patent Office required two months use at the time the application was filed. He also traced the and use of the trademark contrary to the finding of the Director of Patents, who moreover should
history underlying his adoption of the trademark LION-TIGER which he caused to be designed have not relied on the weak and inconsistent testimony of the witnesses for petitioner and should
by one "Roming from Guadalupe" and caused the printing of labels in 1950 by Luzon Press and not have admitted certain proofs regarding the actual and positive use of the trademark in
then by General Offset, although the invoices for the job were also burned but after his transfer question by the appellee. Appellant is oblivious of the controlling principle of law set forth
to San Juan, Rizal, he again caused the printing of the labels, and his sale was once a month in Chua Che v. Philippines Patent Office. 10 As worded in the opinion of Justice Paredes: "At the
only. Thus, he asserted that "LION TIGER was very valuable to him before, but not now." 4 very outset, we would like to state that in cases of the nature of the one at bar, only questions of
law should be raised, and the only exeption to this rule, meaning that findings of facts may be
reviewed, is when such findings are not supported by substantial evidence (Sec. 2, Rule 44,
The decision then referred to the rebuttable character of the validity of registration of the
Revised Rules). The finding of the Director of Patents Office to the effect the opposer-appellee
trademark registered in the name of respondent, the evidentiary burden of proving invalidity
Sy Tuo had priority of use and adoption of the trademark "X-7", is for all intents and purposes,
resting upon the petitioner. From the facts as presented though, the conclusion reached is that
one of fact. This being the case, such finding becomes conclusive to this Court. Even on this
the presumption had been rebutted, petitioner having shown "that at the time the respondent
sole issue alone, the petition for review must fall." 11 To the same effect is this excerpt from the
filed his application for registration and for years prior thereto, he was not the exclusive user of
later case of Lim Kiah v. Kaynee Company: 12 "It is well-settled that we are precluded from
the trademark LION-TIGER. The burden going forward is thus shifted to the respondent who
making such an inquiry as the finding of facts of the Director of Patents in the absence of any
must show that the subject matter of registration is, in fact, distinctive of his goods." 5 Why it
showing that there was a grave abuse of discretion is binding on us. As set forth by Justice
should be thus is explained in this manner: "It is very clear that the record is wanting in proof
Makalintal in Chung Te v. Ng Kian Giab: "The rule is that the findings of fact by the Director of
sufficient to show that Respondent-Registrant has actually and substantially adopted and used
Patents are conclusive on the Supreme Court provided they are supported by substantial
the trademark so as to show that his firm was the source or origin of his dyestuff. He never
evidence." 13
presented proof required by law to invest him with exclusive, continuous adoption and use of the
trademark which should consist in, inter alia, considerable sale since his adoption thereof
combined with promotional work suitable to popularize the trademark." 6 2. The second assigned error would accuse the Director of Patents of failing to pass upon two
important documents 14 which in his opinion would reveal that appellee did alter two important
documents in order to fortify his side of the case. This allegation did not pass unnoticed in the
There are additional considerations vitiating the claim of respondent. Thus: "In this case, it has
brief of appellee. It was refuted in this manner: "The Director of Patents did not err in not
been admitted by him that he never advertised the trademark, either by newspaper, radio or
dwelling lengthily on Exhibits "3" and "D-12", as he was satisfied that the goods appearing
handbills. He was not able to show extensive sales, except those made by him to Pua Chong
thereon are Tiger and Lion dyestuff of Appellee, Sy Chng. The Honorable Director of Patents did
Beng which, however, may be considered as negligible and sporadic. His sale, if it is really a
not see anything suspicious or spurious in the entry made as to the trademark carried by the
sale at all, was made in a limited area to a single individual and wanting in corroboration. No
goods appearing in the invoice because, it was issued regularly and properly in the ordinary
further sales were made as the record eloquently shows. These matters are necessary
course of Appellee's business. Appellant's claim that the letters "T" and "L" meaning Tiger and
especially when Respondent alleges use on a date earlier than that alleged in his application, in
Lion were just added and superimposed very much later, is misleading and defamatory.
which case his evidence, testimonial or documentary, must be definite, clear, and free from
Besides, this is a mere conclusion of the Appellant who merely indulged in speculation, as there
doubt or inconsistencies. In this case, he was not even able to prove use in commerce prior to
was nothing of record to show that Appellee changed the entry on his invoice. On the contrary, it
filing of his application. Thus, under the Rules of Practice in Trademark Cases (Rule 173), in
is surprising why Exhibit "3" came into the possession of Appellant, Gaw Liu, who testified on the
all inter partes proceedings, the allegation of date of use in the application for registration of the
same when the purchaser appearing therein is China Commercial owned by Pua Chong Beng,
applicant or of the registrant cannot be used as evidence in behalf of the party making the same.
the witness who refused to be further cross-examined. Pua Chong Beng, the witness of
In case no testimony is taken as to the date of use, the party will be limited to the filing of the
Appellant from Zamboanga, should have testified on Exhibit "3", because he is the only
application as the date of his first use. Therefore, because the Respondent was not able to
competent witness on said invoice and the goods covered by it, and not appellant, Gaw Liu who
prove his date of first use in commerce of the trademark LION-TIGER he is deemed to have
is not privy to the transaction." 15 Appellant could have disputed the truth of the above assertion
used it on the filing date of his application which is February 20, 1963."7
in a reply brief, but he did not submit any. It could have been due to a realization on his part that
the version offered by appellee is closer to the truth. The lack of merit of such an assignment of
Necessarily therefore, the inevitable conclusion is the superior right of petitioner in view of what error is thus apparent.
the decision called "the chain of circumstances" favorable to him namely his "use thereof in
commerce, and a systematic preservation of the records to support his claim of continuous use,
WHEREFORE, the decision of the Director of Patent of January 29, 1968 is hereby affirmed.
such as the making of the design, the printing of the design on labels, the actual use on the
Without pronouncement as to costs.
goods, advertising in calendars, and other acts of dominion, such as the filing of this petition for
cancellation."8
Concepcion, C.J., Reyes, J.B.L., Makalintal, Zaldivar, Castro, Teehankee, Barredo, Villamor and
Makasiar, JJ. concur.
The dispositive portion of the decision appealed is for granting the petition. The Certificate of
Registration 10637 issued to Gaw Liu for the trademark LION & TIGER is "ordered
cancelled."9 Then came this petition for view filed on January 14, 1968. A careful study of
respective briefs of petitioner and respondent failed to disclose any justification for a reversal of
the decision reached by the Director of Patents. It must be, as set forth in the opening of this
petition, be affirmed.
G.R. No. 190065 August 16, 2010
DERMALINE, INC., Petitioner,
vs.
MYRA PHARMACEUTICALS, INC. Respondent.
DECISION
NACHURA, J.:
This is a petition for review on certiorari1 seeking to reverse and set aside the Decision dated
August 7, 20092 and the Resolution dated October 28, 20093 of the Court of Appeals (CA) in CA-
G.R. SP No. 108627.
The antecedent facts and proceedings—
On October 21, 2006, petitioner Dermaline, Inc. (Dermaline) filed before the Intellectual Property
Office (IPO) an application for registration of the trademark "DERMALINE DERMALINE, INC."
(Application No. 4-2006011536). The application was published for Opposition in the IPO E-
Gazette on March 9, 2007.
On May 8, 2007, respondent Myra Pharmaceuticals, Inc. (Myra) filed a Verified
Opposition4 alleging that the trademark sought to be registered by Dermaline so resembles its
trademark "DERMALIN" and will likely cause confusion, mistake and deception to the purchasing
public. Myra said that the registration of Dermaline’s trademark will violate Section 123 5 of
Republic Act (R.A.) No. 8293 (Intellectual Property Code of the Philippines). It further alleged
that Dermaline’s use and registration of its applied trademark will diminish the distinctiveness
and dilute the goodwill of Myra’s "DERMALIN," registered with the IPO way back July 8, 1986,
renewed for ten (10) years on July 8, 2006. Myra has been extensively using "DERMALIN"
commercially since October 31, 1977, and said mark is still valid and subsisting.
Myra claimed that, despite Dermaline’s attempt to differentiate its applied mark, the dominant
feature is the term "DERMALINE," which is practically identical with its own "DERMALIN," more
particularly that the first eight (8) letters of the marks are identical, and that notwithstanding the
additional letter "E" by Dermaline, the pronunciation for both marks are identical. Further, both
marks have three (3) syllables each, with each syllable identical in sound and appearance, even
if the last syllable of "DERMALINE" consisted of four (4) letters while "DERMALIN" consisted
only of three (3).
Myra also pointed out that Dermaline applied for the same mark "DERMALINE" on June 3, 2003
and was already refused registration by the IPO. By filing this new application for registration,
Dermaline appears to have engaged in a fishing expedition for the approval of its mark. Myra
argued that its intellectual property right over its trademark is protected under Section 1476 of
R.A. No. 8293.
Myra asserted that the mark "DERMALINE DERMALINE, INC." is aurally similar to its own mark
such that the registration and use of Dermaline’s applied mark will enable it to obtain benefit
from Myra’s reputation, goodwill and advertising and will lead the public into believing that
Dermaline is, in any way, connected to Myra. Myra added that even if the subject application
was under Classification 447 for various skin treatments, it could still be connected to the
"DERMALIN" mark under Classification 58 for pharmaceutical products, since ultimately these
goods are very closely related.
In its Verified Answer,9 Dermaline countered that a simple comparison of the trademark
"DERMALINE DERMALINE, INC." vis-à-vis Myra’s "DERMALIN" trademark would show that
they have entirely different features and distinctive presentation, thus it cannot result in
confusion, mistake or deception on the part of the purchasing public. Dermaline contended that,
in determining if the subject trademarks are confusingly similar, a comparison of the words is not
the only determinant, but their entirety must be considered in relation to the goods to which they
are attached, including the other features appearing in both labels. It claimed that there were
glaring and striking dissimilarities between the two trademarks, such that its trademark
"DERMALINE DERMALINE, INC." speaks for itself (Res ipsa loquitur). Dermaline further argued
that there could not be any relation between its trademark for health and beauty services from
Myra’s trademark classified under medicinal goods against skin disorders.
The parties failed to settle amicably. Consequently, the preliminary conference was terminated
and they were directed to file their respective position papers.10
On April 10, 2008, the IPO-Bureau of Legal Affairs rendered Decision No. 2008-7011 sustaining
Myra’s opposition pursuant to Section 123.1(d) of R.A. No. 8293. It disposed—
WHEREFORE, the Verified Opposition is, as it is, hereby SUSTAINED. Consequently,
Application Serial No. 4-2006-011536 for the mark ‘DERMALINE, DERMALINE, INC. Stylized
Wordmark’ for Dermaline, Inc. under class 44 covering the aforementioned goods filed on 21
October 2006, is as it is hereby, REJECTED.
Let the file wrapper of ‘DERMALINE, DERMALINE, INC. Stylized Wordmark’ subject matter of
this case be forwarded to the Bureau of Trademarks (BOT) for appropriate action in accordance
with this Decision.
SO ORDERED.12
Aggrieved, Dermaline filed a motion for reconsideration, but it was denied under Resolution No.
2009-12(D)13 dated January 16, 2009.
Expectedly, Dermaline appealed to the Office of the Director General of the IPO. However, in an
Order14 dated April 17, 2009, the appeal was dismissed for being filed out of time.
Undaunted, Dermaline appealed to the CA, but it affirmed and upheld the Order dated April 17,
2009 and the rejection of Dermaline’s application for registration of trademark. The CA likewise
denied Dermaline’s motion for reconsideration; hence, this petition raising the issue of whether
the CA erred in upholding the IPO’s rejection of Dermaline’s application for registration of
trademark.
The petition is without merit.
A trademark is 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. 15 Inarguably, it is an
intellectual property deserving protection by law. In trademark controversies, each case must be
scrutinized according to its peculiar circumstances, such that jurisprudential precedents should
only be made to apply if they are specifically in point.16As Myra correctly posits, as a registered
trademark owner, it has the right under Section 147 of R.A. No. 8293 to prevent third parties
from using a trademark, or similar signs or containers for goods or services, without its consent,
identical or similar to its registered trademark, where such use would result in a likelihood of
confusion.
In determining likelihood of confusion, case law has developed two (2) tests, the Dominancy Dermaline’s insistence that its applied trademark "DERMALINE DERMALINE, INC." had
Test and the Holistic or Totality Test. differences "too striking to be mistaken" from Myra’s "DERMALIN" cannot, therefore, be
sustained. While it is true that the two marks are presented differently – Dermaline’s mark is
written with the first "DERMALINE" in script going diagonally upwards from left to right, with an
The Dominancy Test focuses on the similarity of the prevalent features of the competing
upper case "D" followed by the rest of the letters in lower case, and the portion "DERMALINE,
trademarks that might cause confusion or deception.17 It is applied when the trademark sought to
INC." is written in upper case letters, below and smaller than the long-hand portion; while Myra’s
be registered contains the main, essential and dominant features of the earlier registered
mark "DERMALIN" is written in an upright font, with a capital "D" and followed by lower case
trademark, and confusion or deception is likely to result. Duplication or imitation is not even
letters – the likelihood of confusion is still apparent. This is because they are almost spelled in
required; neither is it necessary that the label of the applied mark for registration should suggest
the same way, except for Dermaline’s mark which ends with the letter "E," and they are
an effort to imitate. The important issue is whether the use of the marks involved would likely
pronounced practically in the same manner in three (3) syllables, with the ending letter "E" in
cause confusion or mistake in the mind of or deceive the ordinary purchaser, or one who is
Dermaline’s mark pronounced silently. Thus, when an ordinary purchaser, for example, hears an
accustomed to buy, and therefore to some extent familiar with, the goods in question. 18 Given
advertisement of Dermaline’s applied trademark over the radio, chances are he will associate it
greater consideration are the aural and visual impressions created by the marks in the public
with Myra’s registered mark.
mind, giving little weight to factors like prices, quality, sales outlets, and market segments. 19 The
test of dominancy is now explicitly incorporated into law in Section 155.1 of R.A. No. 8293 which
provides— Further, Dermaline’s stance that its product belongs to a separate and different classification
from Myra’s products with the registered trademark does not eradicate the possibility of mistake
on the part of the purchasing public to associate the former with the latter, especially considering
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a
that both classifications pertain to treatments for the skin.Indeed, the registered trademark owner
registered mark or the same container or a dominant feature thereof in connection with the sale,
may use its mark on the same or similar products, in different segments of the market, and at
offering for sale, distribution, advertising of any goods or services including other preparatory
different price levels depending on variations of the products for specific segments of the market.
steps necessary to carry out the sale of any goods or services on or in connection with which
The Court is cognizant that the registered trademark owner enjoys protection in product and
such use is likely to cause confusion, or to cause mistake, or to deceive; (emphasis supplied)
market areas that are the normal potential expansion of his business. Thus, we have held –

On the other hand, the Holistic Test entails a consideration of the entirety of the marks as
Modern law recognizes that the protection to which the owner of a trademark is entitled is not
applied to the products, including labels and packaging, in determining confusing similarity. The
limited to guarding his goods or business from actual market competition with identical or similar
scrutinizing eye of the observer must focus not only on the predominant words but also on the
products of the parties, but extends to all cases in which the use by a junior appropriator of a
other features appearing in both labels so that a conclusion may be drawn as to whether one is
trade-mark or trade-name is likely to lead to a confusion of source, as where prospective
confusingly similar to the other.20
purchasers would be misled into thinking that the complaining party has extended his business
into the field (see 148 ALR 56 et seq; 53 Am Jur. 576) or is in any way connected with the
Relative to the question on confusion of marks and trade names, jurisprudence has noted two activities of the infringer; or when it forestalls the normal potential expansion of his business (v.
(2) types of confusion, viz: (1) confusion of goods (product confusion), where the ordinarily 148 ALR 77, 84; 52 Am. Jur. 576, 577).23 (Emphasis supplied)
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,
Thus, the public may mistakenly think that Dermaline is connected to or associated with Myra,
although the goods of the parties are different, the product, the mark of which registration is
such that, considering the current proliferation of health and beauty products in the market, the
applied for by one party, is such as might reasonably be assumed to originate with the registrant
purchasers would likely be misled that Myra has already expanded its business through
of an earlier product, and the public would then be deceived either into that belief or into the
Dermaline from merely carrying pharmaceutical topical applications for the skin to health and
belief that there is some connection between the two parties, though inexistent. 21
beauty services.

In rejecting the application of Dermaline for the registration of its mark "DERMALINE
Verily, when one applies for the registration of a trademark or label which is almost the same or
DERMALINE, INC.," the IPO applied the Dominancy Test. It declared that both confusion of
that very closely resembles one already used and registered by another, the application should
goods and service and confusion of business or of origin were apparent in both trademarks. It
be rejected and dismissed outright, even without any opposition on the part of the owner and
also noted that, per Bureau Decision No. 2007-179 dated December 4, 2007, it already
user of a previously registered label or trademark. This is intended not only to avoid confusion
sustained the opposition of Myra involving the trademark "DERMALINE" of Dermaline under
on the part of the public, but also to protect an already used and registered trademark and an
Classification 5. The IPO also upheld Myra’s right under Section 138 of R.A. No. 8293, which
established goodwill.24
provides that a certification of registration of a mark is prima facie evidence of the validity of the
registration, the registrant’s ownership of the mark, and of the registrant’s exclusive right to use
the same in connection with the goods and those that are related thereto specified in the Besides, the issue on protection of intellectual property, such as trademarks, is factual in nature.
certificate. The findings of the IPO, upheld on appeal by the same office, and further sustained by the CA,
bear great weight and deserves respect from this Court. Moreover, the decision of the IPO had
already attained finality when Dermaline failed to timely file its appeal with the IPO Office of the
We agree with the findings of the IPO. As correctly applied by the IPO in this case, while there
Director General.
are no set rules that can be deduced as what constitutes a dominant feature with respect to
trademarks applied for registration; usually, what are taken into account are signs, color, design,
peculiar shape or name, or some special, easily remembered earmarks of the brand that readily WHEREFORE, the petition is DENIED. The Decision dated August 7, 2009 and the Resolution
attracts and catches the attention of the ordinary consumer. 22 dated October 28, 2009 of the Court of Appeals in CA-G.R. SP No. 108627 are AFFIRMED.
Costs against petitioner.
G.R. No. 96161 February 21, 1992
PHILIPS EXPORT B.V., PHILIPS ELECTRICAL LAMPS, INC. and PHILIPS INDUSTRIAL
DEVELOPMENT, INC., petitioners,
vs.
COURT OF APPEALS, SECURITIES & EXCHANGE COMMISSION and STANDARD PHILIPS
CORPORATION, respondents.
Emeterio V. Soliven & Associates for petitioners.
Narciso A. Manantan for private respondent.
MELENCIO-HERRERA, J.:
Petitioners challenge the Decision of the Court of Appeals, dated 31 July 1990, in CA-GR Sp.
No. 20067, upholding the Order of the Securities and Exchange Commission, dated 2 January
1990, in SEC-AC No. 202, dismissing petitioners' prayer for the cancellation or removal of the
word "PHILIPS" from private respondent's corporate name.
Petitioner Philips Export B.V. (PEBV), a foreign corporation organized under the laws of the
Netherlands, although not engaged in business here, is the registered owner of the trademarks
PHILIPS and PHILIPS SHIELD EMBLEM under Certificates of Registration Nos. R-1641 and R-
1674, respectively issued by the Philippine Patents Office (presently known as the Bureau of
Patents, Trademarks and Technology Transfer). Petitioners Philips Electrical Lamps, Inc.
(Philips Electrical, for brevity) and Philips Industrial Developments, Inc. (Philips Industrial, for
short), authorized users of the trademarks PHILIPS and PHILIPS SHIELD EMBLEM, were
incorporated on 29 August 1956 and 25 May 1956, respectively. All petitioner corporations
belong to the PHILIPS Group of Companies.
Respondent Standard Philips Corporation (Standard Philips), on the other hand, was issued a
Certificate of Registration by respondent Commission on 19 May 1982.
On 24 September 1984, Petitioners filed a letter complaint with the Securities & Exchange
Commission (SEC) asking for the cancellation of the word "PHILIPS" from Private Respondent's
corporate name in view of the prior registration with the Bureau of Patents of the trademark
"PHILIPS" and the logo "PHILIPS SHIELD EMBLEM" in the name of Petitioner, PEBV, and the
previous registration of Petitioners Philips Electrical and Philips Industrial with the SEC.
As a result of Private Respondent's refusal to amend its Articles of Incorporation, Petitioners filed
with the SEC, on 6 February 1985, a Petition (SEC Case No. 2743) praying for the issuance of a
Writ of Preliminary Injunction, alleging, among others, that Private Respondent's use of the word
PHILIPS amounts to an infringement and clear violation of Petitioners' exclusive right to use the
same considering that both parties engage in the same business.
In its Answer, dated 7 March 1985, Private Respondent countered that Petitioner PEBV has no
legal capacity to sue; that its use of its corporate name is not at all similar to Petitioners'
trademark PHILIPS when considered in its entirety; and that its products consisting of chain
rollers, belts, bearings and cutting saw are grossly different from Petitioners' electrical products.
After conducting hearings with respect to the prayer for Injunction; the SEC Hearing Officer, on
27 September 1985, ruled against the issuance of such Writ.
On 30 January 1987, the same Hearing Officer dismissed the Petition for lack of merit. In so
ruling, the latter declared that inasmuch as the SEC found no sufficient ground for the granting of
injunctive relief on the basis of the testimonial and documentary evidence presented, it cannot
order the removal or cancellation of the word "PHILIPS" from Private Respondent's corporate
name on the basis of the same evidence adopted in toto during trial on the merits. Besides,
Section 18 of the Corporation Code (infra) is applicable only when the corporate names in
question are identical. Here, there is no confusing similarity between Petitioners' and Private
Respondent's corporate names as those of the Petitioners contain at least two words different
from that of the Respondent. Petitioners' Motion for Reconsideration was likewise denied on 17
June 1987.
On appeal, the SEC en banc affirmed the dismissal declaring that the corporate names of
Petitioners and Private Respondent hardly breed confusion inasmuch as each contains at least
two different words and, therefore, rules out any possibility of confusing one for the other.
On 30 January 1990, Petitioners sought an extension of time to file a Petition for Review
on Certiorari before this Court, which Petition was later referred to the Court of Appeals in a
Resolution dated 12 February 1990.
In deciding to dismiss the petition on 31 July 1990, the Court of
Appeals1 swept aside Petitioners' claim that following the ruling in Converse Rubber Corporation
v. Universal Converse Rubber Products, Inc., et al, (G. R. No. L-27906, January 8, 1987, 147
SCRA 154), the word PHILIPS cannot be used as part of Private Respondent's corporate name
as the same constitutes a dominant part of Petitioners' corporate names. In so holding, the
Appellate Court observed that the Converse case is not four-square with the present case
inasmuch as the contending parties in Converse are engaged in a similar business, that is, the
manufacture of rubber shoes. Upholding the SEC, the Appellate Court concluded that "private
respondents' products consisting of chain rollers, belts, bearings and cutting saw are unrelated
and non-competing with petitioners' products i.e. electrical lamps such that consumers would not
in any probability mistake one as the source or origin of the product of the other."
The Appellate Court denied Petitioners' Motion for Reconsideration on 20 November 1990,
hence, this Petition which was given due course on 22 April 1991, after which the parties were
required to submit their memoranda, the latest of which was received on 2 July 1991. In
December 1991, the SEC was also required to elevate its records for the perusal of this Court,
the same not having been apparently before respondent Court of Appeals.
We find basis for petitioners' plea.
As early as Western Equipment and Supply Co. v. Reyes, 51 Phil. 115 (1927), the Court
declared that 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 (Red Line Transportation Co. vs. Rural
Transit Co., September 8, 1934, 20 Phil 549).
A name is peculiarly important as necessary to the very existence of a corporation (American
Steel Foundries vs. Robertson, 269 US 372, 70 L ed 317, 46 S Ct 160; Lauman vs. Lebanon
Valley R. Co., 30 Pa 42; First National Bank vs. Huntington Distilling Co. 40 W Va 530, 23 SE
792). Its name is one of its attributes, an element of its existence, and essential to its identity (6
Fletcher [Perm Ed], pp. 3-4). 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. The name of a corporation
in this respect designates the corporation in the same manner as the name of an individual
designates the person (Cincinnati Cooperage Co. vs. Bate. 96 Ky 356, 26 SW 538; Newport
Mechanics Mfg. Co. vs. Starbird. 10 NH 123); and the right to use its corporate name is as much
a part of the corporate franchise as any other privilege granted (Federal Secur. Co. vs. Federal
Secur. Corp., 129 Or 375, 276 P 1100, 66 ALR 934; Paulino vs. Portuguese Beneficial
Association, 18 RI 165, 26 A 36).
A corporation acquires its name by choice and need not select a name identical with or similar to
one already appropriated by a senior corporation while an individual's name is thrust upon him
(See Standard Oil Co. of New Mexico, Inc. v. Standard Oil Co. of California, 56 F 2d 973, 977).
A corporation can no more use a corporate name in violation of the rights of others than an
individual can use his name legally acquired so as to mislead the public and injure another
(Armington vs. Palmer, 21 RI 109. 42 A 308).
Our own Corporation Code, in its Section 18, expressly provides that:
No corporate name may be allowed by the Securities and Exchange
Commission if the proposed name is identical or deceptively or confusingly
similar to that of any existing corporation or to any other name already
protected by law or is patently deceptive, confusing or contrary to existing
law. Where a change in a corporate name is approved, the commission
shall issue an amended certificate of incorporation under the amended
name. (Emphasis supplied)
The statutory prohibition cannot be any clearer. To come within its scope, two requisites must be
proven, namely:
(1) that the complainant corporation acquired a prior right over the use of such corporate name;
and
(2) the proposed name is either:
(a) identical; or
(b) deceptively or confusingly
similar
to that of any existing corporation or to any other name already protected by law; or
(c) patently deceptive, confusing or contrary to existing law.
The right to the exclusive use of a corporate name with freedom from infringement by similarity
is determined by priority of adoption (1 Thompson, p. 80 citing Munn v. Americana Co., 82 N.
Eq. 63, 88 Atl. 30; San Francisco Oyster House v. Mihich, 75 Wash. 274, 134 Pac. 921). In this
regard, there is no doubt with respect to Petitioners' prior adoption of' the name ''PHILIPS" as
part of its corporate name. Petitioners Philips Electrical and Philips Industrial were incorporated
on 29 August 1956 and 25 May 1956, respectively, while Respondent Standard Philips was
issued a Certificate of Registration on 12 April 1982, twenty-six (26) years later (Rollo, p. 16).
Petitioner PEBV has also used the trademark "PHILIPS" on electrical lamps of all types and their
accessories since 30 September 1922, as evidenced by Certificate of Registration No. 1651.
The second requisite no less exists in this case. In determining the existence of confusing
similarity in corporate names, the test is whether the similarity is such as to mislead a person,
using ordinary care and discrimination. In so doing, the Court must look to the record as well as
the names themselves (Ohio Nat. Life Ins. Co. v. Ohio Life Ins. Co., 210 NE 2d 298). While the
corporate names of Petitioners and Private Respondent are not identical, a reading of
Petitioner's corporate names, to wit: PHILIPS EXPORT B.V., PHILIPS ELECTRICAL LAMPS,
INC. and PHILIPS INDUSTRIAL DEVELOPMENT, INC., inevitably leads 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.
Respondents maintain, however, that Petitioners did not present an iota of proof of actual
confusion or deception of the public much less a single purchaser of their product who has been
deceived or confused or showed any likelihood of confusion. It is settled, however, that proof of
actual confusion need not be shown. It suffices that confusion is probably or likely to occur (6
Fletcher [Perm Ed], pp. 107-108, enumerating a long line of cases).
It may be that Private Respondent's products also consist of chain rollers, belts, bearing and the
like, while petitioners deal principally with electrical products. It is significant to note, however,
that even the Director of Patents had denied Private Respondent's application for registration of
the trademarks "Standard Philips & Device" for chain, rollers, belts, bearings and cutting saw.
That office held that PEBV, "had shipped to its subsidiaries in the Philippines equipment,
machines 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
'STANDARD PHILIPS' . . . also belong" ( Inter Partes Case No. 2010, June 17, 1988,
SEC Rollo).
Furthermore, the records show that among Private Respondent's primary purposes in its Articles
of Incorporation (Annex D, Petition p. 37, Rollo) are the following:
To buy, sell, barter, trade, manufacture, import, export, or otherwise acquire,
dispose of, and deal in and deal with any kind of goods, wares, and
merchandise such as but not limited to plastics, carbon products, office
stationery and supplies, hardware parts, electrical wiring devices, electrical
component parts, and/or complement of industrial, agricultural or
commercial machineries, constructive supplies, electrical supplies and other
merchandise which are or may become articles of commerce except food,
drugs and cosmetics and to carry on such business as manufacturer,
distributor, dealer, indentor, factor, manufacturer's representative capacity
for domestic or foreign companies. (emphasis ours)
For its part, Philips Electrical also includes, among its primary purposes, the following:
To develop manufacture and deal in electrical products, including electronic,
mechanical and other similar products . . . (p. 30, Record of SEC Case No.
2743)
Given Private Respondent's aforesaid underlined primary purpose, nothing could prevent it from
dealing in the same line of business of electrical devices, products or supplies which fall under
its primary purposes. Besides, there is showing that Private Respondent not only manufactured
and sold ballasts for fluorescent lamps with their corporate name printed thereon but also
advertised the same as, among others, Standard Philips (TSN, before the SEC, pp. 14, 17, 25,
26, 37-42, June 14, 1985; pp. 16-19, July 25, 1985). As aptly pointed out by Petitioners, [p]rivate
respondent's choice of "PHILIPS" as part of its corporate name [STANDARD PHILIPS
CORPORATION] . . . tends to show said respondent's intention to ride on the popularity and
established goodwill of said petitioner's business throughout the world" (Rollo, p. 137). The
subsequent appropriator of the name or one confusingly similar thereto usually seeks an unfair
advantage, a free ride of another's goodwill (American Gold Star Mothers, Inc. v. National Gold
Star Mothers, Inc., et al, 89 App DC 269, 191 F 2d 488).
In allowing Private Respondent the continued use of its corporate name, the SEC maintains that
the corporate names of Petitioners PHILIPS ELECTRICAL LAMPS. INC. and PHILIPS
INDUSTRIAL DEVELOPMENT, INC. contain at least two words different from that of the
corporate name of respondent STANDARD PHILIPS CORPORATION, which words will readily
identify Private Respondent from Petitioners and vice-versa.
True, under the Guidelines in the Approval of Corporate and Partnership Names formulated by
the SEC, the proposed name "should not be similar to one already used by another corporation
or partnership. If the proposed name contains a word already used as part of the firm name or
style of a registered company; the proposed name must contain two other words different from
the company already registered" (Emphasis ours). It is then pointed out that Petitioners Philips
Electrical and Philips Industrial have two words different from that of Private Respondent's
name.
What is lost sight of, however, is that PHILIPS is a trademark or trade name which was
registered as far back as 1922. Petitioners, therefore, have the exclusive right 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 (18 C.J.S. 574). 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 name 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 (6 Fletcher [Perm Ed], pp. 39-40, citing Borden Ice Cream Co. v. Borden's Condensed
Milk Co., 210 F 510). Notably, too, Private Respondent's name actually contains only a single
word, that is, "STANDARD", different from that of Petitioners inasmuch as the inclusion of the
term "Corporation" or "Corp." merely serves the Purpose of distinguishing the corporation from
partnerships and other business organizations.
The fact that there are other companies engaged in other lines of business using the word
"PHILIPS" as part of their corporate names is no defense and does not warrant the use by
Private Respondent of such word which constitutes an essential feature of Petitioners' corporate
name previously adopted and registered and-having acquired the status of a well-known mark in
the Philippines and internationally as well (Bureau of Patents Decision No. 88-35 [TM], June 17,
1988, SEC Records).
In support of its application for the registration of its Articles of Incorporation with the SEC,
Private Respondent had submitted an undertaking "manifesting its willingness to change its
corporate name in the event another person, firm or entity has acquired a prior right to the use of
the said firm name or one deceptively or confusingly similar to it." Private respondent must now
be held to its undertaking.
As a general rule, parties organizing a corporation must choose a name at
their peril; and the use of a name similar to one adopted by another
corporation, whether a business or a nonbusiness or non-profit organization
if misleading and likely to injure it in the exercise in its corporate functions,
regardless of intent, may be prevented by the corporation having the prior
right, by a suit for injunction against the new corporation to prevent the use
of the name (American Gold Star Mothers, Inc. v. National Gold Star
Mothers, Inc., 89 App DC 269, 191 F 2d 488, 27 ALR 2d 948).
WHEREFORE, the Decision of the Court of Appeals dated 31 July 1990, and its Resolution
dated 20 November 1990, are SET ASIDE and a new one entered ENJOINING private
respondent from using "PHILIPS" as a feature of its corporate name, and ORDERING the
Securities and Exchange Commission to amend private respondent's Articles of Incorporation by
deleting the word PHILIPS from the corporate name of private respondent.
G.R. No. L-24295 September 30, 1971
GENERAL GARMENTS CORPORATION, petitioner,
vs.
THE DIRECTOR OF PATENTS and PURITAN SPORTSWEAR CORPORATION, respondents.
Rafael R. Lasam for petitioner.
Office of the Solicitor General Antonio A. Alafriz, Assistant Solicitor General Pacifico P. de
Castro and Solicitor Celso P. Ylagan for respondent Director of Patents.
Parades, Poblador, Cruz & Nazareno for respondent Corporation.
MAKALINTAL, J.:
The General Garments Corporation, organized and existing under the laws of the Philippines, is
the owner of the trademark "Puritan," under Registration No. 10059 issued on November 15,
1962 by the Philippine Patent Office, for assorted men's wear, such as sweaters, shirts, jackets,
undershirts and briefs.
On March 9, 1964 the Puritan Sportswear Corporation, organized and existing in and under the
laws of the state of Pennsylvania, U.S.A., filed a petition with the Philippine Patent Office for the
cancellation of the trademark "Puritan" registered in the name of General Garments Corporation,
alleging ownership and prior use in the Philippines of the said trademark on the same kinds of
goods, which use it had not abandoned; and alleging further that the registration thereof by
General Garments Corporation had been obtained fraudulently and in violation of Section 17(c)
of Republic Act No. 166, as amended, in relation to Section 4(d) thereof.
On March 30, 1964 General Garments Corporation moved to dismiss the petition on several
grounds, all of which may be synthesized in one single issue: whether or not Puritan Sportswear
Corporation, which is a foreign corporation not licensed to do business and not doing business in
the Philippines, has legal capacity to maintain a suit in the Philippine Patent Office for
cancellation of a trademark registered therein. The Director of Patents denied the motion to
dismiss on August 6, 1964, and denied likewise the motion for reconsideration on March 5,
1965, whereupon General Garments Corporation, hereinafter referred to as petitioner, filed the
instant petition for review.
Section 17 (c) and Section 4 (d) of the Trademark Law provide respectively as follows:
SEC. 17. Grounds for cancellation. — Any person, who believes that he is
or will be damaged by the registration of a mark or trade-name, may, upon
the payment of the prescribed fee, apply to cancel said registration upon
any of the following grounds:
 xxx xxx xxx
(c) That the registration was obtained fraudulently or contrary to the
provisions of section four, Chapter II thereof: ...
(d) SEC. 4. Registration of trademarks, tradenames and service-marks
which shall be known as the principal register. The owner of a trade-mark,
trade-name or service-mark used to distinguish his goods, business or
services from the goods, business or services of others shall have the right
to register the same on the principal register, unless it:
xxx xxx xxx
(d) 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 tradename
previously used in the Philippines by another and not abandoned, as to be
likely, when applied to or used in connection with goods, business or
services of the applicant, to cause confusion or mistake or to deceive
purchasers; or ...
Petitioner contends that Puritan Sportswear Corporation (hereinafter referred to as respondent),
being a foreign corporation which is not licensed to do and is not doing business in the
Philippines, is not considered as a person under Philippine laws and consequently is not
comprehended within the term "any person" who may apply for cancellation of a mark or trade-
name under Section 17(c) of the Trademark Law aforequoted. That respondent is a juridical
person should be beyond serious dispute. The fact that it may not transact business in the
Philippines unless it has obtained a license for that purpose, nor maintain a suit in Philippine
courts for the recovery of any debt, claim or demand without such license (Secs. 68 and 69,
Corporation Law) does not make respondent any less a juridical person. Indeed an exception to
the license requirement has been recognized in this jurisdiction, namely, where a foreign
corporation sues on an isolated transaction. As first enunciated in Marshall-Wells Co. v. Elser &
Co.1"the object of the statute (Secs. 68 and 69, Corporation Law) was not to prevent the foreign
corporation from performing single acts, but to prevent it from acquiring a domicile for the
purpose of business without taking the steps necessary to render it amenable to suit in the local
courts ... the implication of the law (being) that it was never the purpose of the legislature to
exclude a foreign corporation which happens to obtain an isolated order for business from the
Philippines, from securing redress in the Philippine Courts. ..." The principle has since then been
applied in a number of other cases.2
To recognize respondent as a juridical person, however, does not resolve the issue in this case.
It should be postulated at this point that respondent is not suing in our courts "for the recovery of
any debt, claim or demand," for which a license to transact business in the Philippines is
required by Section 69 of the Corporation Law, subject only to the exception already noted.
Respondent went to the Philippine Patent Office on a petition for cancellation of a trademark
registered by petitioner, invoking Section 17(c) in relations to Section 4(d) of the Trademark Law.
A more or less analogous question arose in Western Equipment & Supply Co. v. Reyes, 51 Phil.
115. The syllabus of the report, which is a correct statement of the doctrine laid down in the
decision, reads as follows:
A foreign corporation which has never done ... business in the Philippine
Islands and which is unlicensed and unregistered to do business here, but is
widely and favorably known in the Islands through the use therein of its
products bearing its corporate and trade name has a legal right to maintain
an action in the Islands.
xxx xxx xxx
The purpose of such a suit is to protect its reputation, corporate name and goodwill which has
been established, through the natural development of its trade for a long period of years, in the
doing of which it does not seek to enforce any legal or contract rights arising from, or growing
out of any business which it has transacted in the Philippine Islands.
The right to the use of the corporate or trade name is a property right, a right in rem, which it
may assert and protect 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.
In Asari Yoko Co., Ltd. v. Kee Boc (Jan. 20, 1961) 1 SCRA 1, the plaintiff, a Japanese
corporation which had acquired prior use in the Philippines of the trademark "RACE" for men's
shirts and undershirts but which had not shown prior registration thereof, successfully
maintained a suit opposing the application of the defendant, a local businessman, to register the
same trademark for similar goods produced by him. This Court said: "The lawful entry into the
Philippines of goods bearing the trademark since 1949 should entitle the owner of the trademark
to the right to use the same to the exclusion of others. Modern trade and commerce demands
that depredations on legitimate trademarks of non-nationals should not be countenanced." It
may be added here that the law against such depredations is not only for the protection of the
owner of the trademark who has acquired prior use thereof but also, and more importantly, for
the protection of purchasers from confusion, mistake or deception as to the goods they are
buying. This is clear from a reading of Section 4(d) of the Trademark Law.
Petitioner argues that the ruling in Western Equipment has been superseded by the later
decision of this Court in Mentholatum Co., Inc. v. Mangaliman (1941), 72 Phil. 524, where it was
held that inasmuch as Mentholatum Co., Inc. was a foreign corporation doing business in the
Philippines without the license required by Section 68 of the Corporation Law it could not
prosecute an action for infringement of its trademark which was the subject of local registration.
The court itself, however, recognized a distinction between the two cases, in that in Western
Equipment the foreign corporation was not engaged in business in the Philippines, and observed
that if it had been so engaged without first obtaining a license "another and a very different
question would be presented."
Parenthetically, it may be stated that the ruling in the Mentholatum case was subsequently
derogated when Congress, purposely to "counteract the effects" of said case, enacted Republic
Act No. 638, inserting Section 21-A in the Trademark Law, which allows a foreign corporation or
juristic person to bring an action in Philippine courts for infringement of a mark or trade-name, for
unfair competition, or false designation of origin and false description, "whether or not it has
been licensed to do business in the Philippines under Act Numbered Fourteen hundred and fifty-
nine, as amended, otherwise known as the Corporation Law, at the time it brings complaint."
Petitioner argues that Section 21-A militates against respondent's capacity to maintain a suit for
cancellation, since it requires, before a foreign corporation may bring an action, that its
trademark or tradename has been registered under the Trademark Law. The argument misses
the essential point in the said provision, which is that the foreign corporation is allowed there
under to sue "whether or not it has been licensed to do business in the Philippines" pursuant to
the Corporation Law (precisely to counteract the effects of the decision in the Mentholatum
case).
In any event, respondent in the present case is not suing for infringement or unfair competition
under Section 21-A, but for cancellation under Section 17, on one of the grounds enumerated in
Section 4. The first kind of action, it maybe stated, is cognizable by the Courts of First Instance
(Sec. 27); the second partakes of an administrative proceeding before the Patent Office (Sec.
18, in relation to Sec. 8). And while a suit under Section 21-A requires that the mark or
tradename alleged to have been infringed has been "registered or assigned" to the suing foreign
corporation, a suit for cancellation of the registration of a mark or tradename under Section 17
has no such requirement. For such mark or tradename should not have been registered in the
first place (and consequently may be cancelled if so registered) if it "consists of or comprises a
mark or tradename which so resembles a mark or tradename ... previously used in the
Philippines by another and not abandoned, as to be likely, when applied to or used in connection
with goods, business or services of the applicant, to cause confusion or mistake or to deceive
purchasers; ..."(Sec. 4d).
Petitioner's last argument is that under Section 37 of the Trademark Law respondent is not
entitled to the benefits of said law because the Philippines is not a signatory to any international
treaty or convention relating to marks or tradenames or to the repression of unfair competition.
Section 37 reads in part:
SEC. 37. 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 any international
convention or treaty relating to marks or tradenames, or the repression of
unfair competition to which the Philippines may be a party, shall be entitled
to the benefits and subject to the provisions of this Act to the extent and
under the conditions essential to give effect to any such convention and
treaties so long as the Philippines shall continue to be a party thereto,
except as provided in the following paragraphs of this section.
As correctly pointed out by respondents, this provision was incorporated in the law in anticipation
of the eventual adherence of the Philippines to any international convention or treaty for the
protection of industrial property. It speaks of 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 any international convention or treaty relating to industrial property to which the
Philippines may be a party. In other words, the provision will be operative only when the
Philippines becomes a party to such a convention or treaty. .That this was the intention of
Congress is clear from the explanatory note to House Bill No. 1157 (now Republic Act 166), in
reference to Section 37, which is the only provision in Chapter XI of the Trademark Law on
Foreign Industrial Property: "The necessary provisions to qualify the Philippines under the
international convention for the protection of industrial property have been specifically
incorporated in the Act."3 In the meantime, regardless of Section 37, aliens or foreign
corporations are accorded benefits under the law. Thus, under Section 2, for instance, the
trademarks, tradenames and service-marks owned by persons, corporations, partnerships or
associations domiciled in any foreign country may be registered in the Philippines, provided that
the country of which the applicant for registration is a citizen grants bylaw substantially similar
privileges to citizens of the Philippines.
WHEREFORE, the petition is dismissed, and the resolution of the Director of Patents dated
August 6, 1964 is affirmed, with costs.
G.R. No. 111580 June 21, 2001
SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT LTD., SHANGRI-LA PROPERTIES,
INC., MAKATI SHANGRI-LA HOTEL AND RESORT, INC. and KUOK PHILIPPINE
PROPERTIES, INC., petitioners,
vs.
THE COURT OF APPEALS, HON. FELIX M. DE GUZMAN, as Judge, RTC of Quezon City,
Branch 99 and DEVELOPERS GROUP OF COMPANIES, INC., respondents.
----------------------------------------
G.R. No. 114802 June 21, 2001
DEVELOPERS GROUP OF COMPANIES, INC., petitioner,
vs.
THE COURT OF APPEALS, HON. IGNACIO S. SAPALO, in his capacity as Director, Bureau
of Patents, Trademarks and Technology Transfer, and SHANGRI-LA INTERNATIONAL
HOTEL MANAGEMENT, LTD.,respondents.
YNARES-SANTIAGO, J.:
On June 21, 1988, the Shangri-La International Hotel Management, Ltd., Shangri-La Properties,
Inc., Makati Shangri-La Hotel and Resort, Inc. and Kuok Philippine Properties, Inc. (hereinafter
collectively referred as the "Shangri-La Group"), filed with the Bureau of Patents, Trademarks
and Technology Transfer (BPTTT) a petition, docketed as Inter Partes Case No. 3145, praying
for the cancellation of the registration of the "Shangri-La" mark and "S" device/logo issued to the
Developers Group of Companies, Inc., on the ground that the same was illegally and
fraudulently obtained and appropriated for the latter's restaurant business. The Shangri-La
Group alleged that it is the legal and beneficial owners of the subject mark and logo; that it has
been using the said mark and logo for its corporate affairs and business since March 1962 and
caused the same to be specially designed for their international hotels in 1975, much earlier than
the alleged first use thereof by the Developers Group in 1982.
Likewise, the Shangri-La Group filed with the BPTTT its own application for registration of the
subject mark and logo. The Developers Group filed an opposition to the application, which was
docketed as Inter Partes Case No. 3529.
Almost three (3) years later, or on April 15, 1991, the Developers Group instituted with the
Regional Trial Court of Quezon City, Branch 99, a complaint for infringement and damages with
prayer for injunction, docketed as Civil Case No. Q-91-8476, against the Shangri-La Group.
On January 8, 1992, the Shangri-La Group moved for the suspension of the proceedings in the
infringement case on account of the pendency of the administrative proceedings before the
BPTTT.1 This was denied by the trial court in a Resolution issued on January 16, 1992.2 The
Shangri-La Group filed a Motion for Reconsideration.3 Soon thereafter, it also filed a Motion to
Inhibit against Presiding Judge Felix M. de Guzman.4 On July 1, 1992, the trial court denied both
motions.5
The Shangri-La Group filed a petition for certiorari before the Court of Appeals, docketed as CA-
G.R. SP No. 29006.6 On February 15, 1993, the Court of Appeals rendered its decision
dismissing the petition for certiorari.7 The Shangri-La Group filed a Motion for Reconsideration,
which was denied on the ground that the same presented no new matter that warranted
consideration.8
Hence, the instant petition, docketed as G.R. No. 111580, based on the following grounds:
THE HONORABLE COURT OF APPEALS GRAVELY ABUSED ITS DISCRETION
AND COMMITTED A REVERSIBLE ERROR IN NOT FINDING THAT:
I. THE INFRINGEMENT CASE SHOULD BE DISMISSED OR AT LEAST
SUSPENDED; AND
 II. THE HONORABLE PRESIDING JUDGE SHOULD INHIBIT HIMSELF FROM
TRYING THE INFRINGEMENT CASE.9
Meanwhile, on October 28, 1991, the Developers Group filed in Inter Partes Case No. 3145 an
Urgent Motion to Suspend Proceedings, invoking the pendency of the infringement case it filed
before the Regional Trial Court of Quezon City.10 On January 10, 1992, the BPTTT, through
Director Ignacio S. Sapalo, issued an Order denying the Motion.11 A Motion for Reconsideration
was filed which was, however, denied in a Resolution dated February 11, 1992. 12
From the denial by the BPTTT of its Urgent Motion to Suspend Proceedings and Motion for
Reconsideration, the Developers Group filed with the Court of Appeals a petition for certiorari,
mandamus and prohibition, docketed as CA-G.R. SP No. 27742.13 On March 29, 1994, the Court
of Appeals dismissed the petition for lack of merit.14
A petition for review was thereafter filed, docketed as G.R. No. 114802, raising the issue of:
WHETHER OR NOT, GIVEN THE ESTABLISHED FACTS AND CIRCUMSTANCES
ON RECORD AND THE LAW AND JURISPRUDENCE APPLICABLE TO THE
MATTER, THE RESPONDENT COURT ERRED IN HOLDING THAT, INASMUCH AS
BOTH THE CIVIL ACTION AND THE ADMINISTRATIVE PROCEEDINGS HERE
INVOLVED MAY CO-EXIST AND THE LAW DOES NOT PROVIDE FOR ANY
PREFERENCE BY ONE OVER THE OTHER, THE RESPONDENT DIRECTOR HAD
JURISDICTION TO RULE AS HE DID AND HAD NOT INCURRED ANY GRAVE
ABUSE OF DISCRETION CORRECTIBLE BY THE EXTRAORDINARY REMEDIES
OF CERTIORARI, PROHIBITION AND MANDAMUS.15
On February 2, 1998, G.R. Nos. 111580 and 114802 were ordered consolidated.
The core issue is simply whether, despite the institution of an Inter Partes case for cancellation
of a mark with the BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) by one
party, the adverse party can file a subsequent action for infringement with the regular courts of
justice in connection with the same registered mark.
We rule in the affirmative.
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)
Hence, as applied in the case at bar, 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.
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." 16 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. 17
Furthermore, the issue raised before the BPTTT is quite different from that raised in the trial
court. The issue raised before the BPTTT was whether the mark registered by Developers
Group is subject to cancellation, as the Shangri-La Group claims prior ownership of the disputed
mark. On the other hand, the issue raised before the trial court was whether the Shangri-La
Group infringed upon the rights of Developers Group within the contemplation of Section 22 of
Republic Act 166.
The case of Conrad and Company, Inc. v. Court of Appeals18 is in point. We held:
We cannot see any error in the above disquisition. It might be mentioned that while an
application for the administrative cancellation of a registered trademark on any of the
grounds enumerated in Section 17 of Republic Act No. 166, as amended, otherwise
known as the Trade-Mark Law, falls under the exclusive cognizance of BPTTT (Sec.
19, Trade-Mark Law), an action, however, for infringement or unfair competition, as
well as the remedy of injunction and relief for damages, is explicitly and
unquestionably within the competence and jurisdiction of ordinary courts.
xxx xxx xxx
Surely, an application with BPTTT for an administrative cancellation of a registered
trade mark cannot per se have the effect of restraining or preventing the courts from
the exercise of their lawfully conferred jurisdiction. A contrary rule would unduly
expand the doctrine of primary jurisdiction which, simply expressed, would merely
behoove regular courts, in controversies involving specialized disputes, to defer to the
findings or resolutions of administrative tribunals on certain technical matters. This
rule, evidently, did not escape the appellate court for it likewise decreed that for "good
cause shown, the lower court, in its sound discretion, may suspend the action pending
outcome of the cancellation proceedings" before the BPTTT.
However, while the instant Petitions have been pending with this Court, the infringement court
rendered a Decision, dated March 8, 1996, in Civil Case No. Q-91-8476,19 the dispositive portion
of which reads:
 WHEREFORE, judgment is hereby rendered in favor of plaintiff Developers Group of
Companies, Inc. and against defendants Shangri-La International Hotel Management,
Ltd., Shangri-La Properties, Inc., Makati Shangri-La Hotel and Resort, Inc., and Kuok
Philippine Properties, Inc. –
a) Upholding the validity of the registration of the service mark "Shangri-La" and "S-
Logo" in the name of plaintiff;
b) Declaring defendants' use of said mark and logo as an infringement of plaintiff's
right thereto;
c) Ordering defendants, their representatives, agents, licensees, assignees and other
persons acting under their authority and with their permission, to permanently cease
and desist from using and/or continuing to use said mark and logo, or any copy,
reproduction or colorable imitation thereof, in the promotion, advertisement, rendition
of their hotel and allied projects and services or in any other manner whatsoever;
d) Ordering defendants to remove said mark and logo from any premises, objects,
materials and paraphernalia used by them and/or destroy any and all prints, signs,
advertisements or other materials bearing said mark and logo in their possession
and/or under their control; and
e) Ordering defendants, jointly and severally, to indemnify plaintiff in the amounts of
P2,000,000.00 as actual and compensatory damages, P500,000.00 as attorney's fees
and expenses of litigation.
Let a copy of this Decision be certified to the Director, Bureau of Patents, Trademarks
and Technology Transfer, for his information and appropriate action in accordance
with the provisions of Section 25, Republic Act No. 166.
Costs against defendants.
SO ORDERED.20
The said Decision is now on appeal with respondent Court of Appeals. 21
Following both law and the jurisprudence enunciated in Conrad and Company, Inc. v. Court of
Appeals,22 the infringement case can and should proceed independently from the cancellation
case with the Bureau so as to afford the owner of certificates of registration redress and
injunctive writs. In the same light, so must the cancellation case with the BPTTT (now the
Bureau of Legal Affairs, Intellectual Property Office) continue independently from the
infringement case so as to determine whether a registered mark may ultimately be cancelled.
However, the Regional Trial Court, in granting redress in favor of Developers Group, went
further and upheld the validity and preference of the latter's registration over that of the Shangri-
La Group.
There can be no denying that the infringement court may validly pass upon the right of
registration. Section 161 of Republic Act No. 8293 provides to wit –
SEC. 161. Authority to Determine Right to Registration – In any action involving a
registered mark the court may determine the right to registration, order the
cancellation of the registration, in whole or in part, and otherwise rectify the
register with respect to the registration of any party to the action in the exercise
of this. Judgement and orders shall be certified by the court to the Director, who shall
make appropriate entry upon the records of the Bureau, and shall be controlled
thereby. (Sec. 25, R.A. No. 166a). (Emphasis provided)
With the decision of the Regional Trial Court upholding the validity of the registration of the
service mark "Shangri-La" and "S" logo in the name of Developers Group, the cancellation case
filed with the Bureau hence becomes moot. To allow the Bureau to proceed with the cancellation
case would lead to a possible result contradictory to that which the Regional Trial Court has
rendered, albeit the same is still on appeal. Such a situation is certainly not in accord with the
orderly administration of justice. In any event, the Court of Appeals has the competence and
jurisdiction to resolve the merits of the said RTC decision.
We are not unmindful of the fact that in G.R. No. 114802, the only issue submitted for resolution
is the correctness of the Court of Appeals' decision sustaining the BPTTT's denial of the motion
to suspend the proceedings before it. Yet, to provide a judicious resolution of the issues at hand,
we find it apropos to order the suspension of the proceedings before the Bureau pending final
determination of the infringement case, where the issue of the validity of the registration of the
subject trademark and logo in the name of Developers Group was passed upon.
WHEREFORE, in view of the foregoing, judgment is hereby rendered dismissing G.R. No.
111580 for being moot and academic, and ordering the Bureau of Legal Affairs, Intellectual
Property Office, to suspend further proceedings in Inter Partes Case No. 3145, to await the final
outcome of the appeal in Civil Case No. Q-91-8476.1âwphi1.nêt
G.R. No. 115758 March 19, 2002
ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS
LABORATORY, petitioner,
vs.
HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and
COMPANY, and ANG TIAM CHAY, respondents.
DE LEON, JR., J.:
Before us is a petition for review on certiorari of the Decision1 dated May 24, 1993 of the Court of
Appeals setting aside and declaring as null and void the Orders 2 dated February 10, 1992 and
March 19, 1992 of the Regional Trial Court, Branch 90, of Quezon City granting the issuance of
a writ of preliminary injunction.
The facts of the case are as follows:
On December 20, 1991, petitioner Elidad C. Kho filed a complaint for injunction and damages
with a prayer for the issuance of a writ of preliminary injunction, docketed as Civil Case No. Q-
91-10926, against the respondents Summerville General Merchandising and Company
(Summerville, for brevity) and Ang Tiam Chay.
The petitioner's complaint alleges that petitioner, doing business under the name and style of
KEC Cosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval
Facial Cream Container/Case, as shown by Certificates of Copyright Registration No. 0-1358
and No. 0-3678; that she also has patent rights on Chin Chun Su & Device and Chin Chun
Su for medicated cream after purchasing the same from Quintin Cheng, the registered owner
thereof in the Supplemental Register of the Philippine Patent Office on February 7, 1980 under
Registration Certificate No. 4529; that respondent Summerville advertised and sold petitioner's
cream products under the brand name Chin Chun Su, in similar containers that petitioner uses,
thereby misleading the public, and resulting in the decline in the petitioner's business sales and
income; and, that the respondents should be enjoined from allegedly infringing on the copyrights
and patents of the petitioner.
The respondents, on the other hand, alleged as their defense that Summerville is the exclusive
and authorized importer, re-packer and distributor of Chin Chun Su products manufactured by
Shun Yi Factory of Taiwan; that the said Taiwanese manufacturing company authorized
Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine
Patent Office and other appropriate governmental agencies; that KEC Cosmetics Laboratory of
the petitioner obtained the copyrights through misrepresentation and falsification; and, that the
authority of Quintin Cheng, assignee of the patent registration certificate, to distribute and
market Chin Chun Suproducts in the Philippines had already been terminated by the said
Taiwanese Manufacturing Company.
After due hearing on the application for preliminary injunction, the trial court granted the same in
an Order dated February 10, 1992, the dispositive portion of which reads:
ACCORDINGLY, the application of plaintiff Elidad C. Kho, doing business under the
style of KEC Cosmetic Laboratory, for preliminary injunction, is hereby granted.
Consequentially, plaintiff is required to file with the Court a bond executed to
defendants in the amount of five hundred thousand pesos (P500,000.00) to the effect
that plaintiff will pay to defendants all damages which defendants may sustain by
reason of the injunction if the Court should finally decide that plaintiff is not entitled
thereto.
SO ORDERED.3
The respondents moved for reconsideration but their motion for reconsideration was denied by
the trial court in an Order dated March 19, 1992.4
On April 24, 1992, the respondents filed a petition for certiorari with the Court of Appeals,
docketed as CA-G.R. SP No. 27803, praying for the nullification of the said writ of preliminary
injunction issued by the trial court. After the respondents filed their reply and almost a month
after petitioner submitted her comment, or on August 14 1992, the latter moved to dismiss the
petition for violation of Supreme Court Circular No. 28-91, a circular prohibiting forum shopping.
According to the petitioner, the respondents did not state the docket number of the civil case in
the caption of their petition and, more significantly, they did not include therein a certificate of
non-forum shopping. The respondents opposed the petition and submitted to the appellate court
a certificate of non-forum shopping for their petition.
On May 24, 1993, the appellate court rendered a Decision in CA-G.R. SP No. 27803 ruling in
favor of the respondents, the dispositive portion of which reads:
WHEREFORE, the petition is hereby given due course and the orders of respondent
court dated February 10, 1992 and March 19, 1992 granting the writ of preliminary
injunction and denying petitioners' motion for reconsideration are hereby set aside and
declared null and void. Respondent court is directed to forthwith proceed with the trial
of Civil Case No. Q-91-10926 and resolve the issue raised by the parties on the
merits.
SO ORDERED.5
In granting the petition, the appellate court ruled that:
The registration of the trademark or brandname "Chin Chun Su" by KEC with the
supplemental register of the Bureau of Patents, Trademarks and Technology Transfer
cannot be equated with registration in the principal register, which is duly protected by
the Trademark Law.1âwphi1.nêt
xxx xxx xxx
As ratiocinated in La Chemise Lacoste, S.S. vs. Fernandez, 129 SCRA 373, 393:
"Registration in the Supplemental Register, therefore, serves as notice that
the registrant is using or has appropriated the trademark. By the very fact
that the trademark cannot as yet be on guard and there are certain defects,
some obstacles which the use must still overcome before he can claim legal
ownership of the mark or ask the courts to vindicate his claims of an
exclusive right to the use of the same. It would be deceptive for a party with
nothing more than a registration in the Supplemental Register to posture
before courts of justice as if the registration is in the Principal Register.
The reliance of the private respondent on the last sentence of the Patent
office action on application Serial No. 30954 that 'registrants is presumed to
be the owner of the mark until after the registration is declared cancelled' is,
therefore, misplaced and grounded on shaky foundation. The supposed
presumption not only runs counter to the precept embodied in Rule 124 of
the Revised Rules of Practice before the Philippine Patent Office in
Trademark Cases but considering all the facts ventilated before us in the
four interrelated petitions involving the petitioner and the respondent, it is
devoid of factual basis. As even in cases where presumption and precept
may factually be reconciled, we have held that the presumption is
rebuttable, not conclusive, (People v. Lim Hoa, G.R. No. L-10612, May 30,
1958, Unreported). One may be declared an unfair competitor even if his
competing trademark is registered (Parke, Davis & Co. v. Kiu Foo & Co., et
al., 60 Phil 928; La Yebana Co. v. chua Seco & Co., 14 Phil 534)."6
The petitioner filed a motion for reconsideration. This she followed with several motions to
declare respondents in contempt of court for publishing advertisements notifying the public of the
promulgation of the assailed decision of the appellate court and stating that genuine Chin Chun
Su products could be obtained only from Summerville General Merchandising and Co.
In the meantime, the trial court went on to hear petitioner's complaint for final injunction and
damages. On October 22, 1993, the trial court rendered a Decision7 barring the petitioner from
using the trademark Chin Chun Su and upholding the right of the respondents to use the same,
but recognizing the copyright of the petitioner over the oval shaped container of her beauty
cream. The trial court did not award damages and costs to any of the parties but to their
respective counsels were awarded Seventy-Five Thousand Pesos (P75,000.00) each as
attorney's fees. The petitioner duly appealed the said decision to the Court of Appeals.
On June 3, 1994, the Court of Appeals promulgated a Resolution8 denying the petitioner's
motions for reconsideration and for contempt of court in CA-G.R. SP No. 27803.
Hence, this petition anchored on the following assignment of errors:
 I Trademark, copyright and patents are different intellectual property rights that cannot be
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE
OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO RULE
ON PETITIONER'S MOTION TO DISMISS.
II
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE
OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN REFUSING TO
PROMPTLY RESOLVE PETITIONER'S MOTION FOR RECONSIDERATION.
III
IN DELAYING THE RESOLUTION OF PETITIONER'S MOTION FOR
RECONSIDERATION, THE HONORABLE COURT OF APPEALS DENIED
PETITIONER'S RIGHT TO SEEK TIMELY APPELLATE RELIEF AND VIOLATED
PETITIONER'S RIGHT TO DUE PROCESS.
IV
RESPONDENT HONORABLE COURT OF APPEALS COMMITTED GRAVE ABUSE
OF DISCRETION AMOUNTING TO LACK OF JURISDICTION IN FAILING TO CITE
THE PRIVATE RESPONDENTS IN CONTEMPT.9
The petitioner faults the appellate court for not dismissing the petition on the ground of violation
of Supreme Court Circular No. 28-91. Also, the petitioner contends that the appellate court
violated Section 6, Rule 9 of the Revised Internal Rules of the Court of Appeals when it failed to
rule on her motion for reconsideration within ninety (90) days from the time it is submitted for
resolution. The appellate court ruled only after the lapse of three hundred fifty-four (354) days, or
on June 3, 1994. In delaying the resolution thereof, the appellate court denied the petitioner's
right to seek the timely appellate relief. Finally, petitioner describes as arbitrary the denial of her
motions for contempt of court against the respondents.
We rule in favor of the respondents.
Pursuant to Section 1, Rule 58 of the Revised Rules of Civil Procedure, one of the grounds for
the issuance of a writ of preliminary injunction is a proof that the applicant is entitled to the relief
demanded, and the whole or part of such relief consists in restraining the commission or
continuance of the act or acts complained of, either for a limited period or perpetually. Thus, a
preliminary injunction order may be granted only when the application for the issuance of the
same shows facts entitling the applicant to the relief demanded. 10 This is the reason why we
have ruled that it must be shown that the invasion of the right sought to be protected is material
and substantial, that the right of complainant is clear and unmistakable, and, that there is an
urgent and paramount necessity for the writ to prevent serious damage. 11
In the case at bar, the petitioner applied for the issuance of a preliminary injunctive order on the
ground that she is entitled to the use of the trademark on Chin Chun Su and its container based
on her copyright and patent over the same. We first find it appropriate to rule on whether the
copyright and patent over the name and container of a beauty cream product would entitle the
registrant to the use and ownership over the same to the exclusion of others.
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.12 In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise.13 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.14 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.15
Petitioner has no right to support her claim for the exclusive use of the subject trade name and
its container. The name and container of a beauty cream product are proper subjects of a
trademark inasmuch as the same falls squarely within its definition. In order to be entitled to
exclusively use the same in the sale of the beauty cream product, the user must sufficiently
prove that she registered or used it before anybody else did. The petitioner's copyright and
patent registration of the name and container would not guarantee her the right to the exclusive
use of the same for the reason that they are not appropriate subjects of the said intellectual
rights. Consequently, a preliminary injunction order cannot be issued for the reason that the
petitioner has not proven that she has a clear right over the said name and container to the
exclusion of others, not having proven that she has registered a trademark thereto or used the
same before anyone did.
We cannot likewise overlook the decision of the trial court in the case for final injunction and
damages. The dispositive portion of said decision held that the petitioner does not have
trademark rights on the name and container of the beauty cream product. The said decision on
the merits of the trial court rendered the issuance of the writ of a preliminary injunction moot and
academic notwithstanding the fact that the same has been appealed in the Court of Appeals.
This is supported by our ruling in La Vista Association, Inc. v. Court of Appeals16, to wit:
Considering that preliminary injunction is a provisional remedy which may be granted
at any time after the commencement of the action and before judgment when it is
established that the plaintiff is entitled to the relief demanded and only when his
complaint shows facts entitling such reliefs xxx and it appearing that the trial court had
already granted the issuance of a final injunction in favor of petitioner in its decision
rendered after trial on the merits xxx the Court resolved to Dismiss the instant petition
having been rendered moot and academic. An injunction issued by the trial court after
it has already made a clear pronouncement as to the plaintiff's right thereto, that is,
after the same issue has been decided on the merits, the trial court having
appreciated the evidence presented, is proper, notwithstanding the fact that the
decision rendered is not yet final xxx. Being an ancillary remedy, the proceedings for
preliminary injunction cannot stand separately or proceed independently of the
decision rendered on the merit of the main case for injunction. The merit of the main
case having been already determined in favor of the applicant, the preliminary
determination of its non-existence ceases to have any force and effect. (italics
supplied)
La Vista categorically pronounced that the issuance of a final injunction renders any question on
the preliminary injunctive order moot and academic despite the fact that the decision granting a
final injunction is pending appeal. Conversely, a decision denying the applicant-plaintiff's right to
a final injunction, although appealed, renders moot and academic any objection to the prior
dissolution of a writ of preliminary injunction.
The petitioner argues that the appellate court erred in not dismissing the petition for certiorari for
non-compliance with the rule on forum shopping. We disagree. First, the petitioner improperly
raised the technical objection of non-compliance with Supreme Court Circular No. 28-91 by filing
a motion to dismiss the petition for certiorari filed in the appellate court. This is prohibited by
Section 6, Rule 66 of the Revised Rules of Civil Procedure which provides that "(I)n petitions
for certiorari before the Supreme Court and the Court of Appeals, the provisions of Section 2,
Rule 56, shall be observed. Before giving due course thereto, the court may require the
respondents to file their comment to, and not a motion to dismiss, the petition xxx (italics
supplied)". Secondly, the issue was raised one month after petitioner had filed her
answer/comment and after private respondent had replied thereto. Under Section 1, Rule 16 of
the Revised Rules of Civil Procedure, a motion to dismiss shall be filed within the time for but
before filing the answer to the complaint or pleading asserting a claim. She therefore could no
longer submit a motion to dismiss nor raise defenses and objections not included in the
answer/comment she had earlier tendered. Thirdly, substantial justice and equity require this
Court not to revive a dissolved writ of injunction in favor of a party without any legal right thereto
merely on a technical infirmity. The granting of an injunctive writ based on a technical ground
rather than compliance with the requisites for the issuance of the same is contrary to the primary
objective of legal procedure which is to serve as a means to dispense justice to the deserving
party.

The petitioner likewise contends that the appellate court unduly delayed the resolution of her
motion for reconsideration. But we find that petitioner contributed to this delay when she filed
successive contentious motions in the same proceeding, the last of which was on October 27,
1993, necessitating counter-manifestations from private respondents with the last one being filed
on November 9, 1993. Nonetheless, it is well-settled that non-observance of the period for
deciding cases or their incidents does not render such judgments ineffective or void.17With
respect to the purported damages she suffered due to the alleged delay in resolving her motion
for reconsideration, we find that the said issue has likewise been rendered moot and academic
by our ruling that she has no right over the trademark and, consequently, to the issuance of a
writ of preliminary injunction.1âwphi1.nêt

Finally, we rule that the Court of Appeals correctly denied the petitioner's several motions for
contempt of court. There is nothing contemptuous about the advertisements complained of
which, as regards the proceedings in CA-G.R. SP No. 27803 merely announced in plain and
straightforward language the promulgation of the assailed Decision of the appellate court.
Moreover, pursuant to Section 4 of Rule 39 of the Revised Rules of Civil Procedure, the said
decision nullifying the injunctive writ was immediately executory.

WHEREFORE, the petition is DENIED. The Decision and Resolution of the Court of Appeals
dated May 24, 1993 and June 3, 1994, respectively, are hereby AFFIRMED. With costs against
the petitioner.

SO ORDERED.

Bellosillo, Mendoza, Quisumbing, and Buena, JJ., concur.