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],
Inc.
G.R. No. 180677 February 18, 2003
Facts:
Levi Strauss Philippines, Inc. (Levis Philippines) is a licensee of Levis. After
receiving information that Diaz was selling counterfeit LEVIS 501 jeans in his
tailoring shops in Almanza and Talon, Las Pias City, Levis Philippines hired a
private investigation group to verify the information. Surveillance and the
purchase of jeans from the tailoring shops of Diaz established that the jeans
bought from the tailoring shops of Diaz were counterfeit or imitations of
LEVIS 501. Armed with search warrants, NBI agents searched the tailoring
shops of Diaz and seized several fake LEVIS 501 jeans from them. Levis
Philippines claimed that it did not authorize the making and selling of the
seized jeans; that each of the jeans were mere imitations of genuine LEVIS
501 jeans by each of them bearing the registered trademarks, like the
arcuate design, the tab, and the leather patch; and that the seized jeans
could be mistaken for original LEVIS 501 jeans due to the placement of the
arcuate, tab, and two-horse leather patch.
On his part, Diaz admitted being the owner of the shops searched, but he
denied any criminal liability. Diaz stated that he did not manufacture Levis
jeans, and that he used the label LS Jeans Tailoring in the jeans that he
made and sold; that the label LS Jeans Tailoring was registered with the
Intellectual Property Office; that his shops received clothes for sewing or
repair; that his shops offered made-to-order jeans, whose styles or designs
were done in accordance with instructions of the customers; that since the
time his shops began operating in 1992, he had received no notice or
warning regarding his operations; that the jeans he produced were easily
recognizable because the label LS Jeans Tailoring, and the names of the
customers were placed inside the pockets, and each of the jeans had an
LSJT red tab; that LS stood for Latest Style; and that the leather patch
on his jeans had two buffaloes, not two horses.
Issue:
Whether there exists a likelihood of confusion between the trademarks of
Levis and Diaz.
Held:
The Court held, through the application of the holistic test, that there was no
likelihood of confusion between the trademarks involved. Accordingly, the
jeans trademarks of Levis Philippines and Diaz must be considered as a
whole in determining the likelihood of confusion between them. The
maongpants or jeans made and sold by Levis Philippines, which included
LEVIS 501, were very popular in the Philippines. The consuming public knew
that the original LEVIS 501 jeans were under a foreign brand and quite
Yes. WINTRADE and its officers are liable for violation of the law on
trademarks and tradenames and for false designation of origin. They placed
the words "Made in Portugal" and "Original Portugal" with the disputed marks
knowing fully well because of their previous dealings with the Portuguese
company that these were the marks used in the products of another. More
importantly, they used the marks without any authority from the owner
notwithstanding that their products are, in reality, produced in the
Philippines, not in Portugal. Hence, probable cause exists to charge the
petitioners with false designation of origin. Had they intended to refer to the
source of the design or the history of the manufacture, they should have
explicitly said so in their packaging.
The Supreme Court emphasized that the law on trademarks and trade names
precisely precludes a person from profiting from the business reputation built
by another and from deceiving the public as to the origin of products.
3. In-n-out Burger Inc. vs Sehwani, Incorporated and/or Benitas
Frites
G.R. No. 179127, December 24, 2008
Facts:
On 2 June 1997, petitioner filed trademark and service mark applications
with the Bureau of Trademarks of the IPO for IN-N-OUT and IN-N-OUT
Burger & Arrow Design. Petitioner later found out that respondent Sehwani,
Incorporated had already obtained Trademark Registration for the mark IN N
OUT (the inside of the letter O formed like a star). By virtue of a licensing
agreement, Benita Frites, Inc. was able to use the registered mark of
respondent Sehwani, Incorporated.
Petitioner filed an administrative complaint against respondents for unfair
competition and cancellation of trademark registration. Petitioner averred
that it is the owner of the trade name IN-N-OUT. Petitioner claimed that
respondents are making it appear that their goods and services are those of
the petitioner, thus, misleading ordinary and unsuspecting consumers that
they are purchasing petitioners products. Petitioner then sent a demand
letter directing respondents to cease and desist from claiming ownership of
the mark IN-N-OUT and to voluntarily cancel its trademark registration. The
respondents refused to accede to petitioners demand, but expressed
willingness to surrender the registration of respondent Sehwani, Incorporated
of the IN N OUT trademark for a fair and reasonable consideration.
Respondents, on the other hand, asserted that they had been using the mark
IN N OUT in the Philippines since 15 October 1982. On 15 November 1991,
respondent Sehwani, Incorporated filed with the then Bureau of Patents,
Trademarks and Technology Transfer (BPTTT) an application for the
registration of the mark IN N OUT (the inside of the letter O formed like a
star). Upon approval of its application, a certificate of registration of the
McDonalds,
McChicken,MacFries,
BigMac,McDo,McSpaghetti,McSnack, and Mc, such that when used
on identical or related goods, the trademark applied for would confuse or
deceive purchasers into believing that the goods originate from the same
source or origin. On Dec. 28, 1998, the IPO sustained the petitioners
opposition and rejected the respondents application. CA reversed.
Issue:
Whether or not respondents McJoy and Device marks are confusingly similar
to petitioners McDonalds marks?
Held:
Yes. In determining similarity and likelihood of confusion, jurisprudence has
developed two test-the dominancy test and the holistic test: The dominancy
Bello resolution, the DOJ then ordered the dismissal of the complaint..
Dissatisfied with the DOJ rulings, petitioner sought recourse with the CA via a
petition for review under Rule 43 of the 1997 Rules of Civil Procedure. On
October 17, 2003, the appellate court affirmed the dismissal of the unfair
competition complaint. The CA pointed out that to determine the likelihood of
confusion, mistake or deception, all relevant factors and circumstances
should be taken into consideration, such as the circumstances under which
the goods are sold, the class of purchasers, and the actual occurrence or
absence of confusion.Thus, the existence of some similarities between LIVES
jeans and LEVIS garments would not ipso facto equate to fraudulent intent
on the part of respondent. The CA noted that respondent used affirmative
and precautionary distinguishing features in his products for differentiation.
The appellate court considered the spelling and pronunciation of the marks;
the difference in the designs of the back pockets; the dissimilarity between
the carton tickets; and the pricing and sale of petitioners products in upscale
exclusive specialty shops. The CA also disregarded the theory of post-sale
confusion propounded by petitioner, relying instead on the view that the
probability of deception must be determined at the point of sale.
Issues:
Petitioner submits that the CA committed the following errors:
I. The court of appeals gravely erred in ruling that actual confusion is
necessary to sustain a charge of unfair
competition, and that there must be direct evidence or proof of intent to
deceive the public.
II. The court of appeals gravely erred in ruling that respondents lives jeans
do not unfairly compete with levis
jeans and/or that there is no possibility that the former will be confused for
the latter, considering that respondents lives
jeans blatantly copy or colorably imitate no less than six (6) trademarks of
levis jeans.
Held:
Generally, unfair competition consists in employing deception or any other
means contrary to good faith by which any person shall
pass off the goods manufactured by him or in which he deals, or his
business, or services for those of the one having established goodwill, or
committing any acts calculated to produce such result. The elements of
unfair competition under Article 189(1) of the Revised Penal Code are:
(a) That the offender gives his goods the general appearance of the goods of
another manufacturer or dealer;
(b) That the general appearance is shown in the (1) goods themselves, or in
the (2) wrapping of their packages, or in the (3) device or words therein, or in
(4) any other feature of their appearance;
(c) That the offender offers to sell or sells those goods or gives other persons
a chance or opportunity to do the same with a like purpose; and
(d) That there is actual intent to deceive the public or defraud a competitor.
All these elements must be proven. In finding that probable cause for unfair
competition does not exist, the investigating prosecutor Secretaries
Guingona and Cuevas arrived at the same conclusion that there is
insufficient evidence to prove all the elements of the crime that would allow
them to secure a conviction. Secretary Guingona discounted the element of
actual intent to deceive by taking into consideration the differences in
spelling, meaning, and phonetics between LIVES and LEVIS, as well as
the fact that respondent had registered his own mark. While it is true that
there may be unfair competition even if the competing mark is registered in
the Intellectual Property Office, it is equally true that the same may show
prima facie good faith. Indeed, registration does not negate unfair
competition where the goods are packed or offered for sale and passed off as
those of complainant. However, the marks registration, coupled with the
stark differences between the competing marks, negate the existence of
actual intent to deceive, in this particular case.
Petitioner argues that the element of intent to deceive may be inferred from
the similarity of the goods or their appearance. The argument is specious on
two fronts. First, where the similarity in the appearance of the goods as
packed and offered for sale is so striking, intent to deceive may be inferred.
However, as found by the investigating prosecutor and the DOJ Secretaries,
striking similarity between the competing goods is not present. Second, the
confusing similarity of the goods was precisely in issue during the
preliminary investigation. As such, the element of intent to deceive could not
arise without the investigating prosecutors or the DOJ Secretarys finding
that such confusing similarity exists. Since confusing similarity was not
found, the element of fraud or deception could not be inferred.
We cannot sustain Secretary Bellos opinion that to establish probable cause,
it is enough that the respondent gave to his product the general
appearance of the product of petitioner. It bears stressing that that is only
one element of unfair competition. All others must be shown to exist. More
importantly, the likelihood of confusion exists not only if there is confusing
similarity. It should also be likely to cause confusion or mistake or deceive
purchasers. Thus, the CA correctly ruled that the mere fact that some
resemblance can be pointed out between the marks used does not in itself
prove unfair competition. To reiterate, the resemblance must be such as is
likely to deceive the ordinary purchaser exercising ordinary care.
The consumer survey alone does not equate to actual confusion. We note
that the survey was made by showing the interviewees actual samples of
petitioners and respondents respective products, approximately five feet
away from them. From that distance, they were asked to identify the jeans
brand and state the reasons for thinking so. This method discounted the
possibility that the ordinary intelligent buyer would be able to closely
scrutinize, and even fit, the jeans to determine if they were LEVIS or not. It
also ignored that a consumer would consider the price of the competing
goods when choosing a brand of jeans. It is undisputed that LIVES jeans
are priced much lower than LEVIS. We find no reason to go beyond the
point of sale to determine if there is probable cause for unfair competition.
WHEREFORE, the petition is DENIED and the appealed Decision of the Court
of Appeals AFFIRMED. SO ORDERED.
(3) The infringing mark or trade name is used in connection with the sale,
offering for sale, or advertising of any goods, business or services; or the
infringing mark or trade name is applied to labels, signs, prints, packages,
wrappers, receptacles, or advertisements intended to be used upon or in
connection with such goods, business, or services;
(4) The use or application of the infringing mark or trade name is likely to
cause confusion or mistake or to deceive purchasers or others as to the
goods or services themselves or as to the source or origin of such goods or
services or the identity of such business; and
(5) It is without the consent of the trademark or trade name owner or the
assignee thereof.
Clearly, a trade name need not be registered with the IPO before an
infringement suit may be filed by its owner against the owner of an infringing
trademark. All that is required is that the trade name is previously used in
trade or commerce in the Philippines. Section 22 of Republic Act No.
166,12ca as amended, required registration of a trade name as a condition
for the institution of an infringement suit. However, RA 8293, 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 x x x.
Also, applying the dominancy test or the holistic test, petitioners "SAN
FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN
FRANCISCO COFFEE & ROASTERY, INC." trade name.
Issues:
Whether or not the facts of the case warranted the filing of charges against
the Bicol Gas people for:
a)
Filing up the LPG tanks registered to another manufacturer without the
latters consent in violation of RA 623 as amended
b)
Trademark infringement consisting in Bicol Gas use of trademark that
is confusingly similar to Petrons registered Gasul trademark in violation of
Section 155 of RA 8293
c)
Unfair competition consisting in passing off Bicol Gas- produced LPGs
fro Petron produced Gasul LPG in violation of Section 168.3 of RA 8293
Held:
a)
The complaint adduced at the preliminary investigation shows that one
50 kg Petron Gasul LPG found in the Bicol Gas truck belonged to their
customer who had the same filled up by Bicol Gas. RA 623 as amended
punishes any person who without the written consent of the manufacturer or
seller of gases contained in duly registered steel cylinder tanks, fills the steel
cylinder or tanks for the purpose of sale, disposal or trafficking, other than
the purpose for which the manufacturer or seller registered the same.
Consequently, they may be prosecuted for that purpose.
b)
But as for the crime of trademark infringement, section 155 of RA 8293
provides its enumeration. However, KPE and Petron failed to prove that Bicol
Gas painted on its own tanks Petrons Gasul trademark or confusingly similar
version to deceive its customers and cheat Petron.
c)
As for the charge of unfair competition under section 168.3 of RA 8293,
there is no showing that Bicol has been giving its LPG tanks the general
appearance of the tanks of Petrons Gasul. As already stated, the truck full of
Bicol Gas tank that the KPE manager apprehended on the road in Sorsogon
just have mixed up with the one authentic Gasul tank that belong to Petron.
Lastly, Bicol Gas is a Corporation. It is an entity separate and distinct from
persons of its officer, directors and stockholders. It has been held however,
that corporate officers and employees through whose act, default or
omission of the crime, they will be held answerable for the crime but
respondents failed to show that Bicol Gas officers and stockholders
participated in the crime.
made with the use of the said patented process but the owner of the patent
could not determine the exact process used in obtaining such identical
product. Hence, the burden of proof contemplated by Article 34 should
actually be understood as the duty of the alleged patent infringer to
overthrow such presumption. Such burden, properly understood, actually
refers to the burden of evidence (burden of going forward) placed on the
producer of the identical (or fake) product to show that his product was
produced without the use of the patented process.
The Senate Act, after deliberation and voting, of voluntarily and
overwhelmingly giving its consent to the WTO Agreement thereby making it
a part of the law of the land, is a legitimate exercise of its sovereign duty
and power. By the doctrine of incorporation, the country is bound by
generally accepted principles of international law, which are considered to be
autom atically part of our own laws. One of the oldest and most fundamental
rules in international law is pacta sunt servandainternational agreements
must be performed in good faith. A treaty engagement is not a mere moral
obligation but creates a legally binding obligation on the parties.
Lastly, notwithstanding objections against possible limitations on national
sovereignty, the WTO remains as the only viable structure for multilateral
trading and the veritable forum for the development of international trade
law.
In short, aurally the two marks are the same, with the first word of both
marks phonetically the same, and the second word of both marks also
phonetically the same. Visually, the two marks have both two words and six
letters, with the first word of both marks having the same letters and the
second word having the same first two letters. In spelling, considering the
Filipino language, even the last letters of both marks are the same.
Clearly, respondents have adopted in "Big Mak" not only the dominant but
also almost all the features of "Big Mac." Applied to the same food product of
hamburgers, the two marks will likely result in confusion in the public mind.
GALLO filters. Directly below the large rooster device is the word GALLO. The
rooster device is given prominence in the GALLO cigarette packs in terms of
size and location on the labels. Also, as admitted by respondents
themselves, on the side of the GALLO cigarette packs are the words "MADE
BY MIGHTY CORPORATION," thus clearly informing the public as to the
identity of the manufacturer of the cigarettes.
On the other hand, GALLO Winerys wine and brandy labels are diverse. In
many of them, the labels are embellished with sketches of buildings and
trees, vineyards or a bunch of grapes while in a few, one or two small
roosters facing right or facing each other (atop the EJG crest, surrounded by
leaves or ribbons), with additional designs in green, red and yellow colors,
appear as minor features thereof. Directly below or above these sketches is
the entire printed name of the founder-owners, "ERNEST & JULIO GALLO" or
just their surname "GALLO," which appears in different fonts, sizes, styles
and labels, unlike petitioners uniform casque-font bold-lettered GALLO mark.
Moreover, on the labels of Gallo Winerys wines are printed the words
"VINTED AND BOTTLED BY ERNEST & JULIO GALLO, MODESTO, CALIFORNIA."
Second, the products are not sold in the same channels of trade.
GALLO cigarettes are inexpensive items while GALLO wines are not. GALLO
wines are patronized by middle-to-high-income earners while GALLO
cigarettes appeal only to simple folks like farmers, fishermen, laborers and
other low-income workers. Indeed, the big price difference of these two
products is an important factor in proving that they are in fact unrelated and
that they travel in different channels of trade. There is a distinct price
segmentation based on vastly different social classes of purchasers.
GALLO cigarettes and GALLO wines are not sold through the same channels
of trade. GALLO cigarettes are Philippine-made and petitioners neither claim
nor pass off their goods as imported or emanating from Gallo Winery. GALLO
cigarettes are distributed, marketed and sold through ambulant and sidewalk
vendors, small local sari-sari stores and grocery stores in Philippine rural
areas, mainly in Misamis Oriental, Pangasinan, Bohol, and Cebu. On the other
hand, GALLO wines are imported, distributed and sold in the Philippines
through Gallo Winerys exclusive contracts with a domestic entity, which is
currently Andresons. By respondents own testimonial evidence, GALLO
wines are sold in hotels, expensive bars and restaurants, and high-end
grocery stores and supermarkets, not through sari-sari stores or ambulant
vendors.
Petitioners are not liable for trademark infringement or unfair competition
because the petitioners never attempted to pass off their cigarettes as those
of respondents. There is no evidence of bad faith or fraud imputable to
petitioners in using their GALLO cigarette vmark.
The mark must be considered as a whole and not as dissected. If the buyer is
deceived, it is attributable to the marks as a totality, not usually to any part
of it. As what appellees would want it to be when they essentially argue that
much of the confusion springs from appellant CFCs use of the word
"MASTER" which appellees claim to be the dominant feature of their own
trademarks that captivates the prospective consumers. Be it further
emphasized that the discerning eye of the observer must focus not only on
the predominant words but also on the other features appearing in both
labels in order that he may draw his conclusion whether one is confusingly
similar to the other.
If the ordinary purchaser is "undiscerningly rash" in buying such common
and inexpensive household products as instant coffee, and would therefore
be "less inclined to closely examine specific details of similarities and
dissimilarities" between the two competing products, then it would be less
likely for the ordinary purchaser to notice that CFCs trademark FLAVOR
MASTER carries the colors orange and mocha while that of Nestles uses red
and brown. The application of the totality or holistic test is improper since
the ordinary purchaser would not be inclined to notice the specific features,
similarities or dissimilarities, considering that the product is an inexpensive
and common household item.
It must be emphasized that the products bearing the trademarks in question
are "inexpensive and common" household items bought off the shelf by
"undiscerningly rash" purchasers. As such, if the ordinary purchaser is
"undiscerningly rash", then he would not have the time nor the inclination to
make a keen and perceptive examination of the physical discrepancies in the
trademarks of the products in order to exercise his choice.
Court agrees with the BPTTT when it applied the test of dominancy.
It is the observation of this Office that much of the dominance which the
word MASTER has acquired through Opposers advertising schemes is carried
over when the same is incorporated into respondent-applicants trademark
FLAVOR MASTER. Thus, when one looks at the label bearing the trademark
FLAVOR MASTER (Exh. 4) ones attention is easily attracted to the word
MASTER, rather than to the dissimilarities that exist. Therefore, the
possibility of confusion as to the goods which bear the competing marks or
as to the origins thereof is not farfetched.
The term "MASTER", therefore, has acquired a certain connotation to mean
the coffee products MASTER ROAST and MASTER BLEND produced by Nestle.
As such, the use by CFC of the term "MASTER" in the trademark for its coffee
product FLAVOR MASTER is likely to cause confusion or mistake or even to
deceive the ordinary purchasers.
b)
DEVICE, representation of a sock and magnifying glass on the toe of a
sock, under Certificate of Registration No. 13465 dated January 25, 1968.
c)
DEVICE, consisting of a plurality of gold colored lines arranged in
parallel relation within a triangular area of toe of the stocking and spread
from each other by lines of contrasting color of the major part of the
stocking under Certificate of Registration No. 13887 dated May 9, 1968; and
d)
LINENIZED, under Certificate of Registration No. 15440 dated April 13,
1970.
On the other hand, petitioners trademark and device GOLD TOP, Linenized
for Extra Wear has the dominant color white at the center and a blackish
brown background with a magnified design of the socks garter, and is
labeled Amigo Manufacturing Inc., Mandaluyong, Metro Manila, Made in the
Philippines.
In the Patent Office, this case was heard by no less than six Hearing Officers:
Attys. Rodolfo Gilbang, Rustico Casia, M. Yadao, Fabian Rufina, Neptali Bulilan
and Pausi Sapak. The last named officer drafted the decision under appeal
which was in due court signed and issued by the Director of Patents (who
never presided over any hearing) adversely against the respondent Amigo
Manufacturing, Inc. as heretofore mentioned. The said decision was appealed
to the CA, finding respondents motion for reconsideration meritorious
because Petitioner's mark is a combination of the different registered marks
owned by respondent.
Issue:
Since the petitioners actual use of its trademark was ahead of the
respondent, whether or not the Court of Appeals erred in canceling the
registration of petitioners trademark instead of canceling the trademark of
the respondent.
Held:
No. Even if Petitioner claims that it started the actual use of the trademark
Gold Top and Device in September 1956, while respondent began using the
trademark Gold Toe only on May 15, 1962. It contends that the claim of
respondent that it had been using the Gold Toe trademark at an earlier
date was not substantiated. The latters witnesses supposedly contradicted
themselves as to the date of first actual use of their trademark, coming up
with different dates such as 1952, 1947 and 1938.
But based on the evidence presented, this Court concurs in the findings of
the Bureau of Patents that respondent had actually used the trademark and
the devices in question prior to petitioners use of its own. During the
hearing at the Bureau of Patents, respondent presented Bureau registrations
indicating the dates of first use in the Philippines of the trademark and the
devices as follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the
Representation of a Sock and a Magnifying Glass; c) January 30, 1932, the
Gold Toe Representation; and d) February 28, 1952, Linenized.
The registration of the above marks in favor of respondent constitutes prima
facie evidence, which petitioner failed to overturn satisfactorily, of
respondents ownership of those marks, the dates of appropriation and the
validity of other pertinent facts stated therein. Indeed, Section 20 of
Republic Act 166 provides as follows:
Sec. 20. Certificate of registration prima facie evidence of validity. - A
certificate of registration of a mark or trade-name shall be 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,
subject to any conditions and limitations stated therein.
Moreover, the validity of the Certificates of Registration was not questioned.
Neither did petitioner present any evidence to indicate that they were
fraudulently issued. Consequently, the claimed dates of respondents first
use of the marks are presumed valid. Clearly, they were ahead of
petitioners claimed date of first use of Gold Top and Device in 1958.
Section 5-A of Republic Act No. 166 states that an applicant for a trademark
or trade name shall, among others, state the date of first use. The fact that
the marks were indeed registered by respondent shows that it did use them
on the date indicated in the Certificate of Registration.
On the other hand, petitioner failed to present proof of the date of alleged
first use of the trademark Gold Top and Device. Thus, even assuming that
respondent started using it only on May 15, 1962, we can make no finding
that petitioner had started using it ahead of respondent.
The findings of the Bureau of Patents that two trademarks are confusingly
and deceptively similar to each other are binding upon the courts, absent
any sufficient evidence to the contrary. In this case, the Bureau considered
the totality of the similarities between the two sets of marks and found that
they were of such degree, number and quality as to give the overall
impression that the two products are confusingly if not deceptively the same.
16. ASIA BREWERY, INC , vs.THE HON. COURT OF APPEALS and SAN
MIGUEL CORPORATION
G.R. No. 103543, July 5, 1993
Facts:
San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc.
(ABI) for infringement of trademark and unfair competition on account of the
latter's BEER PALE PILSEN or BEER NA BEER product which has been
competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer
market.
Trial Court dismissed SMC's complaint because ABI "has not committed
trademark infringement or unfair competition against" SMC.
SMC appealed to the Court of Appeals, the Court of Appeals reversed the trial
court.
Issue:
Whether ABI's BEER PALE PILSEN label or "design" infringe upon SMC's SAN
MIGUEL PALE PILSEN WITH RECTANGULAR MALT AND HOPS DESIGN?
Held:
No.
Infringement is determined by the "test of dominancy" rather than by
differences or variations in the details of one trademark and of another.
The fact that the words pale pilsen are part of ABI's trademark does not
constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for
"pale pilsen" are generic words descriptive of the color ("pale"), of a type of
beer ("pilsen"), which is a light bohemian beer with a strong hops flavor that
originated in the City of Pilsen in Czechoslovakia and became famous in the
Middle Ages. "Pilsen" is a "primarily geographically descriptive word," hence,
non-registerable and not appropriable by any beer manufacturer.
Facts:
Petitioner is a foreign corporation organized under Switzerland laws.
Petitioner owns "NAN" trademark for its infant powered milk products.
Petitioner distributed and sells Nan milk products in the Philippines.
Respondent owns 5M Enterprises that imports Sunny Boy milk from Australia
and repacks them into 3 sizes of plastic bags carrying the name "Nanny". A
letter of request was sent to Dy ordering him to restrain from using Nanny as
this infringes Nan trademark. When Dy did not act on the request, a
complaint for trademark infringement was filed before RTC Dumaguete. It
was dismissed later on. On appeal, the court remanded the case to the lower
court for further proceedings. Subsequently, the case was transferred to RTC
Cebu, a special court designated for intellectual property rights' cases.
Issue:
WON there was trademark infringement
Held: Yes.
The court applied the dominancy test when it found out that Nanny is
confusingly similar to Nan. Nan is the prevalent feature of Nestle's line of
infant powdered milk products. The first 3 letters of Nanny is the same as the
letters of Nan. When both are pronounced, the aural effect is confusingly
similar. Furthermore, Nan and Nanny have the same classification,
descriptive properties and physical attributes. Both are classified under Class
6, both are milk products, and both are powdered in form. They are also
displayed in the milk section.
Finally, the trademark owner is not only protected by law in guarding his
goods or business from actual market competition with identical or similar
products of the parties but also extends to all cases as it would likely confuse
the public into thinking that the complaining party has extended his business
into the field or is in any way connected with the activities of the infringer.
19. E.Y. Industrial Sales Inc. and Engracio Yap vs. Shen Dar
Electricity and Machinery Co.
G.R. No. 184850, October 20, 2010
FACTS:
EYIS is a domestic corporation engaged in the production, distribution and
sale of air compressors and other industrial tools and equipment. Petitioner
Engracio Yap is the Chairman of the Board of Directors of EYIS. Respondent
Shen Dar, on the other hand, is a Taiwan-based foreign corporation engaged
in the manufacture of air compressors. Both companies claimed to have the
right to register the trademark VESPA for air compressors. From 1997 to
2004, EYIS imported air compressors from Shen Dar through sales contracts.
In the Sales Contract dated April 20, 2002, for example, Shen Dar would
supply EYIS in one (1) year with 24 to 30 units of 40-ft. containers worth of
air compressors identified in the Packing/Weight Lists simply as SD-23, SD29, SD-31, SD-32, SD-39, SD-67 and SD-68. In the corresponding Bill of
Ladings, the items were described merely as air compressors. There is no
documentary evidence to show that such air compressors were marked
VESPA.
On June 9, 1997, Shen Dar filed a Trademark Application with the IPO for the
mark VESPA, Chinese Characters and Device for use on air compressors
and welding machines. On July 28, 1999, EYIS filed a Trademark Application
also for the mark VESPA, for use on air compressors. On January 18, 2004,
the IPO issued COR No. 4-1999-005393 in favor of EYIS. Thereafter, on
February 8, 2007, Shen Dar was also issued COR No. 4-1997-121492. In the
meantime, on June 21, 2004, Shen Dar filed a Petition for Cancellation of
EYIS COR with the BLA. In the Petition, Shen Dar primarily argued that the
issuance of the COR in favor of EYIS violated Section 123.1 paragraphs (d),
(e) and (f) of Republic Act No. (RA) 8293, otherwise known as the Intellectual
Property Code (IP Code), having first filed an application for the mark. Shen
Dar further alleged that EYIS was a mere distributor of air compressors
bearing the mark VESPA which it imported from Shen Dar. Shen Dar also
argued that it had prior and exclusive right to the use and registration of the
mark VESPA in the Philippines under the provisions of the Paris Convention.
The BLA and the IPO Director General denied Shen Dars petition. However,
the Court of Appeals reversed the decision and ruled in favor of herein
respondent. Hence, this appeal on Certiorari.
ISSUE:
Whether or not E.Y. Indiustrial Sales is the true owner of the mark Vespa
HELD:
YES. Under Section 123(d) of RA 8293, the registration of a mark is
prevented with the filing of an earlier application for registration. This must
not, however, be interpreted to mean that ownership should be based upon
an earlier filing date. While RA 8293 removed the previous requirement of
proof of actual use prior to the filing of an application for registration of a
mark, proof of prior and continuous use is necessary to establish ownership
of a mark. Such ownership constitutes sufficient evidence to oppose the
registration of a mark.
Sec. 134 of the IP Code provides that any person who believes that he
would be damaged by the registration of a mark x x x may file an opposition
to the application. The term any person encompasses the true owner of the
mark -- the prior and continuous user.
Notably, the Court has ruled that the prior and continuous use of a mark may
even overcome the presumptive ownership of the registrant and be held as
the owner of the mark. Here, the incontrovertible truth, as established by the
evidence submitted by the parties, is that Petitioner E.Y. Industrial Sales is
the prior user of the mark. On the other hand, Shen Dar failed to refute the
evidence cited by the BLA in its decision. More importantly, Shen Dar failed
to present sufficient evidence to prove its own prior use of the mark VESPA.
As such, E.Y. Industrial Sales must be considered as the prior and continuous
user of the mark VESPA and its true owner. Hence, E.Y. Industrial Sales is
entitled to the registration of the mark in its name.