PHILIP MORRIS, INC. VS.

FORTUNE TOBACCO CORPORATION (Equal Standing of International

Law and Municipal Law)
Petition for review under Rule 45 of the Rules of Court, petitioners Philip Morris, Inc., Benson &
Hedges (Canada) Inc., and Fabriques de Tabac Reunies, S.A. (now Philip Morris Products S.A.) seek the
reversal and setting aside of the following issuances of the Court of Appeals (CA) in CA-G.R. CV
No. 66619: PETITION DENIED
1. Decision dated January 21, 20031 affirming an earlier decision of the Regional Trial Court of Pasig
City, Branch 166, in its Civil Case No. 47374
Dismissed the complaint for trademark infringement and damages thereat commenced by
the petitioners against respondent Fortune Tobacco Corporation; and
2. Resolution dated May 30, 20032 denying petitioners motion for reconsideration.
FACTS OF THE CASE:
Petitioner Philip Morris, Inc., a corporation (State of Virginia, U.S.A), is the registered owner
of the trademark MARK VII for cigarettes. (per Certificate of Registration No. 18723 issued
on April 26, 1973 by the Philippine Patents Office (PPO)
Similarly, petitioner Benson & Hedges (Canada), Inc., a subsidiary of Philip Morris, Inc., is the
registered owner of the trademark MARK TEN for cigarettes (PPO Certificate of Registration
No. 11147)
Fabriques de Tabac Reunies, S.A. (Swiss company), another subsidiary of Philip Morris, Inc.,
is the assignee of the trademark LARK, (Trademark Certificate of Registration No. 19053)
(originally registered in 1964 by Ligget and Myers Tobacco Company)
Respondent Fortune Tobacco Corporation, a company organized in the Philippines,
manufactures and sells cigarettes using the trademark MARK.

Petitioners, on the claim that an infringement of their respective trademarks had been committed,
filed, on August 18, 1982, a Complaint for Infringement of Trademark and Damages against
respondent Fortune Tobacco Corporation, of the Regional Trial Court of Pasig, Branch 166.

The decision under review summarized what happened next, as follows:

o Prayer for the issuance of a preliminary injunction, [petitioners] alleged that they are foreign
corporations not doing business in the Philippines and are suing on an isolated transaction.
o Countries in which they are domiciled grant to corporate or juristic persons of the
Philippines the privilege to bring action for infringement, without need of a license to do
business in those countries.
o [Petitioners] likewise manifested [being registered owners of the trademark MARK VII and
MARK TEN
o registered the trademarks in their respective countries of origin
by virtue of the long and extensive usage of the same, these trademarks have
already gained international fame and acceptance
[respondent], without any previous consent from any of the [petitioners],
manufactured and sold cigarettes bearing the identical and/or confusingly similar
trademark MARK
have caused and is likely to cause confusion or mistake, or would deceive
purchasers and the public in general into buying these products under the
impression and mistaken belief that they are buying [petitioners] products.
o Invoked provisions of the Paris Convention for the Protection of Industrial and Intellectual
Property (Paris Convention)
o Philippines is a signatory, [petitioners] pointed out that upon the request of an interested
party, a country of the Union may prohibit the use of a trademark which constitutes a
reproduction, imitation, or translation of a mark already belonging to a person entitled to
the benefits of the said Convention. In accordance with Section 21-A in relation to
Section 23 of Republic Act 166, as amended, they are entitled to relief in the form of
damages [and] the issuance of a writ of preliminary injunction which should be made
permanent.
o [Respondent] filed its Answer denying [petitioners] material allegations and averred [among
other things] that MARK is a common word, which cannot particularly identify a product
to be the product of the [petitioners]
o After the termination of the trial on the merits trial court rendered its Decision dated November 3,
1999 dismissing the complaint and counterclaim after making a finding that the [respondent] did
not commit trademark infringement against the [petitioners].
o The issue of whether or not there was infringement of the [petitioners] trademarks by the
[respondent] was likewise answered in the negative. It expounded that in order for a name,
symbol or device to constitute a trademark, it must, either by itself or by association, point

distinctly to the origin or ownership of the article to which it is applied and be of such nature as to
permit an exclusive appropriation by one person.

Maintaining to have the standing to sue in the local forum and that respondent has committed
trademark infringement, petitioners went on appeal to the CA. (Appellate recourse docket CAG.R. CV No. 66619)
o CA decision on January 21, 2003 (while ruling for petitioners on the matter of their legal
capacity to sue in this country for trademark infringement) affirmed the trial courts
decision on the underlying issue of respondents liability for infringement.
Motion for reconsideration denied by the CA (Resolution of May 30, 2003)

ISSUES
Petitioners seek petition for review (Court of Appeals):
o (1) whether or not petitioners, as Philippine registrants of trademarks, are entitled
to enforce trademark rights in this country;
o (2) whether or not respondent has committed trademark infringement against petitioners
by its use of the mark MARK for its cigarettes, hence liable for damages.

Respondent: issue the propriety of the petition as it allegedly raises questions of fact.
The petition is bereft of merit.
Petition raises both questions of fact and law
o question of law exists when the doubt or difference arises as to what the law is on a
certain state of facts
o question of fact when the doubt or difference arises as to the truth or falsity of alleged
facts
Court is not the proper venue to consider factual issues as it is not a trier of facts
Unless the factual findings of the appellate court are mistaken, absurd,
speculative, conflicting, tainted with grave abuse of discretion, or contrary to the
findings culled by the court of origin, we will not disturb them
Petitioners: contentions should be treated as purely legal since they are assailing erroneous
conclusions deduced from a set of undisputed facts
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 in by others.
o A trademark deserves protection.

PETITIONER:
Petitioners assert that, as corporate nationals of member-countries of the Paris Union,
they can sue before Philippine courts for infringement of trademarks, or for unfair competition ,
without need of obtaining registration or a license to do business in the Philippines, and
without necessity of actually doing business in the Philippines.
o Right and mechanism are accorded by

Section 21-A of Republic Act (R.A.) No. 166 or the Trademark Law, as
amended
Article 2 of the Paris Convention for the Protection of Industrial Property,
aka Paris Convention.
Not doing business in the Philippines does not mean that cigarettes bearing their trademarks are
not available and sold locally. Citing Converse Rubber Corporation v. Universal Rubber
Products, Inc., such availability and sale may be effected through the acts of importers and
distributors.
Entitlement to protection even in the absence of actual use of trademarks in the country
o Philippines adherence to the Trade Related Aspects of Intellectual Property Rights or
the TRIPS Agreement
o enactment of R.A. No. 8293, or the Intellectual Property Code (IP Code)
o fame of a trademark may be acquired through promotion or advertising with no explicit
requirement of actual use in local trade or commerce

Before discussing petitioners claimed entitlement to enforce trademark rights in the Philippines, it
must be emphasized that their standing to sue in Philippine courts had been recognized,
and rightly so, by the CA
o such right to sue does not necessarily mean protection of their registered marks
in the absence of actual use in the Philippines.

Thus clarified, what petitioners now harp about is their entitlement to protection on the strength of
registration of their trademarks in the Philippines.
HELD/RATIO:
As we ruled in G.R. No. 91332,18 :
1. RECIPROCITY REQUIREMENT
Registration of a trademark gives the registrant (petitioners) advantages denied nonregistrants or ordinary users (respondent)
o validity of the registration
o ownership and the exclusive right to use the registered marks
they may not successfully sue on the basis alone of their respective certificates of
registration of trademarks.
o Petitioners: still foreign corporations
o condition to availment of the rights and privileges & their trademarks in this country:

On top of Philippine registration, their country grants substantially similar

rights and privileges to Filipino citizens pursuant to Section 21-A20 of R.A.
No. 166.
In Leviton Industries v. Salvador
o Court: reciprocity requirement is a condition sine qua non to filing a suit by a foreign
corporation
Unless alleged in the complaint, would justify dismissal
o complainant is a national of a Paris Convention- adhering country, its allegation
that it is suing under said Section 21-A would suffice, because the reciprocal
agreement between the two countries is embodied and supplied by the Paris
Convention
being considered part of Philippine municipal laws, can be taken judicial
notice of in infringement suits.
2. REGISTRATION VERSUS ACUAL USE!!

members of the Paris Union does not automatically entitle petitioners to the protection of
their trademarks in this country ABSENT ACTUAL USE OF THE MARKS IN LOCAL
COMMERCE AND TRADE.

Philippines adherence to the Paris Convention effectively obligates the country to honor
and enforce its provisions( as regards the protection of industrial property of foreign nationals
in this country)
o However, any protection accorded has to be made subject to the limitations of
Philippine laws.
o Hence, despite Article 2 of the Paris Convention which substantially provides that:

(1) nationals of member-countries shall have in this country rights specially

provided by the Convention as are consistent with Philippine laws, and enjoy the
privileges that Philippine laws now grant or may hereafter grant to its national

(2) while no domicile requirement in the country where protection is claimed

shall be required of persons entitled to the benefits of the Union for the
enjoyment of any industrial property rights

foreign nationals must still observe and comply with the conditions
imposed by Philippine law on its nationals.

R.A. No. 166 (as amended, specifically Sections 228 and 2-A29), mandates actual use of the
marks and/or emblems in local commerce and trade before they may be registered and
ownership thereof acquired
o the petitioners cannot, therefore, dispense with the element of actual use.
o Their being nationals of member-countries of the Paris Union does not alter the legal
situation.

In Emerald Garment Mfg. Corporation v. Court of Appeals, the Court reiterated its rulings in
Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, Kabushi Kaisha
Isetan v. Intermediate Appellate Court, and Philip Morris v. Court of Appeals and Fortune Tobacco
Corporation on the importance of ACTUAL COMMERCIAL USE OF A TRADEMARK in the
Philippines notwithstanding the Paris Convention:
o The provisions of the 1965 Paris Convention relied upon by private respondent and
Sec. 21-A of the Trademark Law were sufficiently expounded upon and qualified in the
recent case of Philip Morris, Inc., et. al. vs. Court of Appeals :

Following universal acquiescence and comity, our municipal law on trademarks

regarding the requirements of actual use in the Philippines must subordinate an
international agreement inasmuch as the apparent clash is being decided by a
municipal tribunal.
Withal, the fact that international law has been made part of the law of the land
does NOT by any means imply the primacy of international law over
national law in the municipal sphere.
Under the DOCTRINE OF INCORPORATION as applied in most countries,
rules of International Law are given a standing EQUAL, not superior, to
national legislative enactments.
A foreign corporation) may have the capacity to sue for infringement but
whether they have an exclusive right over their symbol as to justify issuance of
the controversial writ will depend on actual use of their trademarks in the
Philippines in line with Sections 2 and 2-A of the same law.
It is thus incongruous for petitioners to claim that when a foreign corporation not
licensed to do business in the Philippines files a complaint for infringement,
the entity need not be actually using its trademark in commerce in the
Philippines.
Such a foreign corporation may have the personality to file a suit for
infringement but it may not necessarily be entitled to protection due to
absence of actual use of the emblem in the local market.

Registration of trademark cannot be deemed conclusive as to the actual use of such trademark
in local commerce.
o registration does not confer upon the registrant an absolute right to the registered mark.
o merely constitutes prima facie evidence that the registrant is the owner of the registered
mark.
o Evidence of non-usage of the mark rebuts the presumption of trademark
ownership
We stress that registration in the Philippines of trademarks does not ipso facto convey an
absolute right or exclusive ownership thereof.
o Shangri-La International Hotel Management, Ltd. v. Development Group of
Companies, Inc.
Trademark is a creation of use
Actual use is a pre-requisite to exclusive ownership
Registration is only an administrative confirmation of the existence of the right of
ownership of the mark
does not perfect such right; actual use thereof is the perfecting
ingredient.

Petitioners reliance on Converse Rubber Corporation is quite misplaced

o different factual milieu
o foreign owner of a Philippine trademark, albeit not licensed to do, and not so engaged in,
business in the Philippines, may actually earn reputation or goodwill for its goods in the
country.
o But unlike in the instant case, evidence of actual sales of Converse rubber shoes,
such as sales invoices, receipts and the testimony of a legitimate trader, was
presented in Converse.
This Court also finds the IP Code and the TRIPS Agreement to be inapplicable
o the infringement complaint filed in August 1982 and tried under the aegis of R.A. No.
166, as amended.
o The IP Code (January 1, 1998) no provision on retroactivity; TRIPS Agreement
(December 16, 1994)
registration of a trademark unaccompanied by actual use thereof in the country accords the
registrant only the standing to sue for infringement in Philippine courts. Entitlement to
protection of such trademark in the country is entirely a different matter.

MIRPURI vs. CA G.R. No. 114508, November 19, 1999

Facts:
In 1970, Escobar filed an application with the Bureau of Patents for the registration of the
trademark Barbizon for use in horsiers and ladies undergarments (IPC No. 686).

Private respondent reported Barbizon Corporation, a corporation organized and doing business
under the laws of New York, USA, opposed the application.
It was alleged that its trademark is confusingly similar with that of Escobar and that the
registration of the said trademark will cause damage to its business reputation and
goodwill. In 1974, the Director of Patents gave due course to the application.
Escobar later assigned all his rights and interest over the trademark to petitioner.
In 1979, Escobar failed to file with the Bureau the affidavit of use of the trademark required under
the Philippine Trademark Law.
Due to this failure, the Bureau cancelled Escobars certificate of registration. In 1981,
Escobar and petitioner separately filed this application for registration of the same
trademark. (IPC 2049).
Private respondent opposed again.
This time it alleged (1) that the said trademark was registered with the US Patent Office;
(2) that it is entitled to protection as well-known mark under Article 6 bis of the Paris
Convention, EO 913 and the two Memoranda of the Minister of Trade and Industry and
(3) that its use on the same class of goods amounts to a violation of the Trademark Law
and Art. 189 of the RPC. Petitioner raised the defense of Res Judicata.

Issue:
One of the requisites of res judicata is identical causes of action. Do IPC No. 686 and IPC No.
2049 involve the same cause of action?
Held:
No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049 raised the
issue of ownership, the first registration and use of the trademark in the US and other countries,
and the international recognition of the trademark established by extensive use and
advertisement of respondents products for over 40 years here and abroad. These are different
from the issues of confessing similarity and damage in IPC 686. The issue of prior use may have
been raised in IPC 686 but this claim was limited to prior use in the Philippines only. Prior use in
IPC 2049 stems from the respondents claims originator of the word and symbol Barbizon, as the
first and registered user of the mark attached to its products which have been sold and advertised
would arise for a considerable number of years prior to petitioners first application. Indeed, these
are substantial allegations that raised new issues and necessarily gave respondents a new cause
of action.
Moreover, the cancellation of petitioners certificate registration for failure to file the affidavit of use
arose after IPC 686. This gave respondent another cause to oppose the second application.
It is also to be noted that the oppositions in the first and second cases are based on different
laws. Causes of action which are distinct and independent from each other, although out of the
same contract, transaction, or state of facts, may be sued on separately, recovery on one being
no bar to subsequent actions on others. The mere fact that the same relief is sought in the
subsequent action will not render the judgment in the prior action operating as res judicata, such
as where the actions are based on different statutes.

Canon Kabushiki Kaisha v. CA

FACTS:

NSR Rubber Corporation filed an application for registration of the mark CANON for sandals in
the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT).
An opposition was filed by Canon Kabushiki Kaisha (CKK), a foreign corporation duly organized
and existing under the laws of Japan. CKK alleged that it will be damaged by the registration of
the trademark CANON in the name of NSR Rubber Corporation.
The evidence presented by CKK consisted of its certificates of registration for the mark CANON
in various countries covering goods belonging to class 2 (paints, chemical products, toner, and
dye stuff).
CKK also submitted in evidence its Philippine Trademark Registration No. 39398, showing its
ownership over the trademark CANON also under class 2.
However, the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT) dismissed the
petition of CKK and gave due course to NSRs application for the registration of the trademark
CANON.
According to BPTTT, the trademark CANON as used by CKK for its paints, chemical products,
toner, and dyestuff, can be used by NSR for its sandals because the products of these two parties
are dissimilar.
Hence, CKK filed this case arguing that:

a) it is entitled to exclusive use of the mark canon because it is its trademark and is used also
for footwear.
b) to allow NSR to register canon for footwear is to prevent CKK from using canon for various
kinds of footwear, when in fact, CKK has earlier used said mark for said goods.
c) it is also entitled to the right to exclusively use canon to prevent confusion of business.
ISSUE:

WON NSR RUBBER CORPORATION MAY BE ALLOWED TO USE THE MARK CANON.

HELD:

Yes.

When a trademark is used by a party for a product in which the other party does not deal, the use
of the same trademark on the latter's product cannot be validly objected to.

The certificates of registration for the trademark CANON in other countries and in the Philippines
as presented by CKK, clearly showed that said certificates of registration cover goods belonging
to class 2 (paints, chemical products, toner, dyestuff). On this basis, the BPTTT correctly ruled
that since the certificate of registration of petitioner for the trademark CANON covers class 2
(paints, chemical products, toner, dyestuff), NSR can use the trademark CANON for its goods
classified as class 25 (sandals). Clearly, there is a world of difference between the paints,
chemical products, toner, and dyestuff of CKK and the sandals of NSR.

The certificate of registration confers upon the trademark owner the exclusive right to use its own
symbol only to those goods specified in the certificate, subject to the conditions and limitations
stated therein. Thus, the exclusive right of CKK in this case to use the trademark CANON is
limited only to the products covered by its certificate of registration.

As to the argument of CKK that there could be confusion as to the origin of the goods, as well as
confusion of business, if NSR is allowed to register the mark CANON, the SC ruled that in cases
of confusion of business or origin, the question that usually arises is whether the respective
goods or services of the senior user and the junior user are so related as to likely cause
confusion of business or origin, and thereby render the trademark or tradenames confusingly
similar.

Goods are related when they belong to the same class or have the same descriptive properties;
when they possess the same physical attributes or essential characteristics with reference to their
form, composition, texture or quality. They may also be related because they serve the same
purpose or are sold in grocery stores.

The paints, chemical products, toner and dyestuff of CKK that carry the trademark CANON are
unrelated to sandals, the product of NSR. The two classes of products in this case flow through
different trade channels. The products of CKK are sold through special chemical stores or
distributors while the products of NSR are sold in grocery stores, sari-sari stores and department
stores.

Thus, the evident disparity of the products of the CKK and NSR renders unfounded the
apprehension of CKK that confusion of business or origin might occur if NSR is allowed to use the
mark CANON.

Societe Des Produits Nestl, S.A. vs. Court of Appeals

Facts:

On January 18, 1984, private respondent CFC Corporation filed with the BPTTT an application for
the registration of the trademark "FLAVOR MASTER" for instant coffee
Petitioner Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws and
domiciled in Switzerland, filed an unverified Notice of Opposition, claiming that the trademark of
private respondents product is "confusingly similar to its trademarks for coffee and coffee
extracts, to wit: MASTER ROAST and MASTER BLEND."

A verified Notice of Opposition was filed by Nestle Philippines, Inc., a Philippine corporation and a
licensee of Societe Des Produits Nestle S.A., against CFCs application for registration of the
trademark FLAVOR MASTER.
o

Nestle claimed that the use, if any, by CFC of the trademark FLAVOR MASTER and its
registration would likely cause confusion in the trade; or deceive purchasers and would
falsely suggest to the purchasing public a connection in the business of Nestle, as the
dominant word present in the three (3) trademarks is "MASTER"; or that the goods of
CFC might be mistaken as having originated from the latter.

In answer to the two oppositions, CFC argued that its trademark, FLAVOR MASTER, is not
confusingly similar with the formers trademarks, MASTER ROAST and MASTER BLEND,
alleging that, "except for the word MASTER (which cannot be exclusively appropriated by any
person for being a descriptive or generic name), the other words that are used respectively with
said word in the three trademarks are very different from each other in meaning, spelling,
pronunciation, and sound".

The BPTTT denied CFCs application for registration.

The Court of Appeals reversed the BPTTTs decision and ordered the Director of Patents to
approve CFCs application. Hence this petition before the SC.
Issue:
Whether or not the CA erred in reversing the decision of the BPTTT denying CFCs petition for
registration. YES
Ruling:
Colorable imitation denotes such a close or ingenious imitation as to be calculated to
deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually gives, as to cause him to purchase
the one supposing it to be the other. In determining if colorable imitation exists, jurisprudence
has developed two kinds of tests - the Dominancy Test and the Holistic Test.
o The test of dominancy focuses on the similarity of the prevalent features of the competing
trademarks which might cause confusion or deception and thus constitute infringement.
o On the other side of the spectrum, the holistic test mandates that the entirety of the
marks in question must be considered in determining confusing similarity.
The Court of Appeals erred in applying the totality rule as defined in the cases of Bristol
Myers v. Director of Patents; Mead Johnson & Co. v. NVJ Van Dorf Ltd.; and American Cyanamid
Co. v. Director of Patents. The totality rule states that "the test is not simply to take their words
and compare the spelling and pronunciation of said words. In determining whether two
trademarks are confusingly similar, the two marks in their entirety as they appear in the
respective labels must be considered in relation to the goods to which they are attached;
the discerning eye of the observer must focus not only on the predominant words but also
on the other features appearing on both labels."
In the case at bar, other than the fact that both Nestles and CFCs products are
inexpensive and common household items, the similarity ends there. What is being
questioned here is the use by CFC of the trademark MASTER. In view of the difficulty of applying
jurisprudential precedents to trademark cases due to the peculiarity of each case, judicial fora
should not readily apply a certain test or standard just because of seeming similarities. As this
Court has pointed above, there could be more telling differences than similarities as to make a
jurisprudential precedent inapplicable.
The Court of Appeals held that the test to be applied should be the totality or holistic test
reasoning, since what is of paramount consideration is the ordinary purchaser who is, in general,
undiscerningly rash in buying the more common and less expensive household products like

coffee, and is therefore less inclined to closely examine specific details of similarities and
dissimilarities between competing products.

This Court cannot agree with the above reasoning. 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.

Moreover, the totality or holistic test is contrary to the elementary postulate of the law on
trademarks and unfair competition that confusing similarity is to be determined on the basis of
visual, aural, connotative comparisons and overall impressions engendered by the marks in
controversy as they are encountered in the realities of the marketplace. The totality or holistic test
only relies on visual comparison between two trademarks whereas the dominancy test relies not
only on the visual but also on the aural and connotative comparisons and overall impressions
between the two trademarks.
In addition, the word "MASTER" is neither a generic nor a descriptive term. As such, said
term cannot be invalidated as a trademark and, therefore, may be legally protected.
o Generic terms are those which constitute "the common descriptive name of an article or
substance," or comprise the "genus of which the particular product is a species," or are
"commonly used as the name or description of a kind of goods," or "imply reference to
every member of a genus and the exclusion of individuating characters," or "refer to the
basic nature of the wares or services provided rather than to the more idiosyncratic
characteristics of a particular product," and are not legally protectable.
o On the other hand, a term is descriptive and therefore invalid as a trademark if, as
understood in its normal and natural sense, it "forthwith conveys the characteristics,
functions, qualities or ingredients of a product to one who has never seen it and does not
know what it is," or "if it forthwith conveys an immediate idea of the ingredients, qualities
or characteristics of the goods," or if it clearly denotes what goods or services are
provided in such a way that the consumer does not have to exercise powers of
perception or imagination.
Rather, the term "MASTER" is a suggestive term brought about by the advertising scheme
of Nestle. Suggestive terms are those which, in the phraseology of one court, require
"imagination, thought and perception to reach a conclusion as to the nature of the goods." Such
terms, "which subtly connote something about the product," are eligible for protection in the
absence of secondary meaning. While suggestive marks are capable of shedding "some light"
upon certain characteristics of the goods or services in dispute, they nevertheless involve "an
element of incongruity," "figurativeness," or " imaginative effort on the part of the observer."
The term "MASTER", therefore, has acquired a certain connotation to mean the coffee products
MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC of the
term "MASTER" in the trademark for its coffee product FLAVOR MASTER is likely to cause
confusion or mistake or even to deceive the ordinary purchasers.
Phil. Refining Co. v. Ng Sam and Director of Patents G.R. No. L-26676, July 30, 1982
Facts of the Case:

The petitioner Philippine Refining Co. first used'Camia' as trademark for its products in 1922. In
1949, it caused the registration of the said trademark for its lard, butter, cooking oil, detergents,
polishing materials and soap products. In 1960, Ng Sam filed an application for 'Camia' for its
ham product (Class 47), alleging its first use in 1959. The petitioner opposed the said application
but the Patent Office allowed the registration of Ng Sam.

Issue:

Is the product of Ng Sam (Ham) and those of the petitioner so related that the use of the
trademark 'Camia' on said goods would result to confusion as to their origin?

HELD:

NO. The businesses of the parties are non-competitive and the products are so unrelated that the
use of the same trademark will not give rise to confusion nor cause damage to the petitioner. The
right to a trademark is a limited one, hence, others may use the same mark on unrelated goods if
no confusion would arise.

A trademark is designed to identify the user, hence, it should be so distinctive and sufficiently
original so as to enable those who see it to recognize instantly its source or origin. A trademark
must be affirmative and definite, significant and distinctive and capable of indicating origin.

'Camia' as a trademark is far from being distinctive, It in itself does not identify the petitioner as
the manufacturer of producer of the goods upon which said mark is used. If a mark is so
commonplace, it is apparent that it can't identify a particular business and he who adopted it first
cannot be injured by any subsequent appropriation or imitation by others and the public will not
be deceived.

Mere classification of the goods cannot serve as the decisive factor in the resolution of whether or
not the goods a related. Emphasis should be on the similarity of products involved and not on
arbitrary classification of general description of their properties or characteristics.

ARCE SONS AND COMPANY vs. SELECTA BISCUIT COMPANY, INC., ET AL.,
Facts:
Ramon Arce, predecessor-in-interest of herein petitioner, started a milk business in 1933 using
the name SELECTA as trade-name as well as trade-mark. He sold his milk products in bottles
covered with caps on which the words SELECTA FRESH MILK were inscribed. For the span of
more than 20 years, his business expanded and sold, in addition to his milk product, ice cream,
sandwiches and other food products. His products were packaged in a special containers with
the word SELECTA written in the packaging. Several new products were eventually added to
his line of products such as biscuits, bakery items, and assorted cakes and pastries. The word
SELECTA was even written on the signboards of his business establishments and upon the
vehicles that were used for the delivery of his products. Then his business was acquired by
petitioner Arce Sons and Co. which eventually put a first class restaurant aside from the
manufacture of the aforementioned food products.

Herein respondent on the other hand, was organized and registered as corporation under the
name and style of Selecta Biscuits Co., Inc. The name Selecta was chosen by the Chinese
organizers of the corporation as a translation of a Chinese word Ching Suan. Its business
started as a biscuit factory and its products such as biscuits and crackers were specially wrapped
in cellophane pouches and place inside a tin can. Such products of the respondent were sold
throughout the Philippines. The respondent filed a petition with the Philippine Patent Office for
the registration of the word SELECTA as trademark to be use in its bakery products. The
petition was referred to an examiner for evaluation who found out that the trademark sought to be
registered resembles the word SELECTA used by the petitioner so that its use by the
respondent will cause confusion as to the origin of their respective goods. So the examiner
recommended for the disapproval of the application. However, Patent Office only ordered the
publication of the application.

In due time, petitioner filed an opposition to the registration on the ground that the mark
SELECTA has been continuously used by it from the time of its organization and even prior
thereto by Ramon Arce, thus the said mark has already become identified with its name and
business. Petitioner also contend that the use of SELECTA by the respondents as trademark
constitutes as an unfair competition with its products thus resulting in confusion in trade and that
the product of the respondent might be mistaken by the public as its products.

The Director of Patents rendered a decision dismissing petitioners opposition stating that the
registration of the trade-mark SELECTA in favour of the respondent will not cause confusion or
mistake nor will deceive the purchasers as to cause damage to petitioner. Hence, this present
petition for review.

Issue:
Whether or not the use of the trade-mark SELECTA by the respondent will result confusion to
the prejudice of Arce Sons and Co.
Held:

Yes. Trademark is a distinctive mark of authenticity through which the merchandise of a particular
producer or manufacturer may be distinguished from that of others, and its sole function is to
designate distinctively the origin of the products to which it is attached. Verily, the word
SELECTA has been chosen by petitioner and has been inscribed on all its products to serve not
only as a sign or symbol that may indicate that they are manufactured and sold by it but as a
mark of authenticity that may distinguish them from the products sold and manufactured by other
merchants or businessmen. The word 'SELECTA', it is true, may be an ordinary or common word
in the sense that may be used or employed by any one in promoting his business or enterprise,
but once adopted or coined in connection with one's business as an emblem, sign or device to
characterize its products, or as a badge of authenticity, it may acquire a secondary meaning as to
be exclusively associated with its products and business. In this sense, its used by another may
lead to confusion in trade and cause damage to its business. And this is the situation of petitioner
when it used the word 'SELECTA' as a trade-mark. In this sense, the law gives its protection and
guarantees its used to the exclusion of all others. Thus, the Director of Patent committed an error
in dismissing the opposition of the petitioner and in holding that the registration of the trademark
SELECTA in favour of respondent will not cause damage to petitioner.

Decision of the Director of Patent office is reversed.

CONVERSE RUBBER CORPORATION, vs.UNIVERSAL RUBBER PRODUCTS, INC. and TIBURCIO

S. EVALLE, DIRECTOR OF PATENTS,

FACTS:

Respondent Universal Rubber Products, Inc.[Respondent/Applicant] filed an application with the

Philippine Patent office for registration of the trademark "UNIVERSAL CONVERSE AND
DEVICE" used on rubber shoes and rubber slippers.

Converse Rubber Corporation [Petitioner/Opposer] filed its opposition to the application for
registration on grounds that the trademark sought to be registered is confusingly similar to the
word "CONVERSE" which is part of petitioner's corporate name "CONVERSE RUBBER
CORPORATION" to an extent that said products may be mistaken by the unwary public to be
manufactured by the petitioner; the registration of respondent's trademark will cause great and
irreparable injury to the business reputation and goodwill of petitioner in the Philippines.

Trial ensued. Petitioner at the trial, presented a private merchant [Mrs. Pacquing] who testified
that she had been selling CONVERSE rubber shoes in the local market since 1956 and that sales
of petitioner's rubber shoes in her stores averaged twelve to twenty pairs a month purchased
mostly by basketball players of local private educational institutions. That she issued invoices for
the rubber shoes were described as "Converse Chuck Taylor", "Converse All Star," "All Star
Converse Chuck Taylor," or "Converse Shoes Chuck Taylor." She also affirmed that she had no
business connection with the petitioner.

The Director of Patents dismissed the opposition of the petitioner and gave due course to
respondent's application. It concluded that the opposer failed to present proof that the single word
"CONVERSE' in its corporate name has become so Identified with the corporation that whenever
used, it designates to the mind of the public that particular corporation. The proofs herein are
sales made by a single witness who had never dealt with the petitioner . . . the entry of Opposer's
[petitioner's] goods in the Philippines were not only effected in a very insignificant quantity but
without the opposer [petitioner] having a direct or indirect hand in the transaction so as to be
made the basis for trademark pre- exemption. It further concluded that the petitioner is not
licensed to do business in the country and is actually not doing business on its own in the
Philippines, it has no name to protect in the forum and thus, it is futile for it to establish that
"CONVERSE" as part of its corporate name identifies its rubber shoes. That a foreign corporation

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has a right to maintain an action in the forum even if it is not licensed to do business and is not
actually doing business on its own therein has been enunciated many times by this Court.

Petitioners motion for reconsideration having been denied by the respondent Director of Patents,
petitioner instituted the instant petition for review.

ISSUE:

Whether or not the respondent's partial appropriation of petitioner's corporate name is of such
character that it is calculated to deceive or confuse the public to the injury of the petitioner to
which the name belongs.

RULING:

WHEREFORE, the decision of the Director of Patents is hereby set aside and a new one entered
denying Respondent Universal Rubber Products, Inc.'s application for registration of the
trademark "UNIVERSAL CONVERSE AND DEVICE" on its rubber shoes and slippers.

HELD:

A corporation is entitled to the cancellation of a mark that is confusingly similar to its corporate
name." "Appropriation by another of the dominant part of a corporate name is an infringement.
When there is no reasonable explanation for the defendant's choice of such a mark though the
field for his selection was so broad, the inference is inevitable that it was chosen deliberately to
deceive.
The deteminative factor in ascertaining whether or not marks are confusingly similar, for the
purposes of the law is that the similarity between the two labels is such that there is a possibility
or likelihood of the purchaser of the older brand mistaking the new brand for it.
Even if not licensed to do business in the country or not doing business here, it does not mean
that its goods are not being sold here or that it has not earned a reputation or goodwill as regards
its products. While Converse Rubber Corporation is not licensed to do business in the country
and is not actually doing business here, it does not mean that its goods are not being sold here or
that it has not earned a reputation or goodwill as regards its products.
CO-PURCHASER MEANING: When the law speaks co-purchaser," the reference is to ordinary
average purchaser. Does not necessarily pertains to deception of experts, dealers, or other
persons specially familiar with the trademark or goods involve."
CONVERSE is a dominant word that identifies CONVERSE RUBBER CORPRORATION.
The Court basis in such decision that respondent has no right to appropriate the word
CONVERSE for use on its products which are similar to those being produced by petitioner:
1. The word "CONVERSE" has grown to be Identified with petitioner's products and acquired
second meaning within the context of trademark and tradename laws . The Court used the
testimony of petitioner's witness, who is a legitimate trader as well as the invoices evidencing
sales of petitioner's products in the Philippines, give credence to petitioner's claim that it has
earned a business reputation and goodwill in this country.

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2. The most convincing proof of use of a mark in commerce is testimony of such witnesses
as customers, or the orders of buyers during a certain period. Petitioner's witness, having
affirmed her lack of business connections with petitioner, has testified as such customer,
supporting strongly petitioner's move for trademark pre-emption.
3. Sales Invoices best proof of actual sales and actual use of petitioners trademark.
Furthermore, said sales invoices provide the best proof that there were actual sales of petitioner's
products in the country and that there was actual use for a protracted period of petitioner's
trademark or part thereof through these sales. "
4. Actual sale of goods in the local market establishes trademark use which serves as the
basis for any action aimed at trademark pre- exemption. Any sale made by a legitimate
trader from his store is a commercial act establishing trademark rights since such sales are made
in due course of business to the general public, not only to limited individuals. It is a matter of
public knowledge that all brands of goods filter into the market, indiscriminately sold by jobbers
dealers and merchants not necessarily with the knowledge or consent of the manufacturer.
5. The use of the word CONVERSE would confuse the purchasers perception on the
products origin."The risk of damage is not limited to a possible confusion of goods but also
includes confusion of reputation if the public could reasonably assume that the goods of the
parties originated from the same source. Even if the marks are dissimilar from those of the
petitioner, there would be still confusion not on the purchaser's perception of the goods but on the
origins thereof. By appropriating the word "CONVERSE," respondent's products are likely to be
mistaken as having been produced by petitioner. The trademark of respondent "UNIVERSAL
CONVERSE and DEVICE" is imprinted in a circular manner on the side of its rubber shoes. In the
same manner, the trademark of petitioner which reads "CONVERSE CHUCK TAYLOR" is
imprinted on a circular base attached to the side of its rubber shoes. Even if not an the details just
mentioned were identical, with the general appearance alone of the two products, any ordinary, or
even perhaps even [sic] a not too perceptive and discriminating customer could be deceived ... "
6. The unexplained use of the dominant word of petitioners corporate name lends itself open
to the suspicion of fraudulent motive to trade upon petitioner's reputation. The Court once
ruled that There was an ADMISSION of applicant UNIVERSAL CONVERSE AND DEVICE of
petitioner's existence since 1946 (found in the STIPULATION OF FACTS) as a duly organized
foreign corporation engaged in the manufacture of rubber shoe in its stipulation of fact betrays its
knowledge of the reputation and business of petitioner even before it applied for registration of
the trademark in question

PETITIONERS STANDING TO SUE: Article 8 of the Convention of the Union of Paris for the
Protection of Industrial Property to which the Philippines became a party on September 27, 1965
provides that "a trade name [corporate name] shall be protected in all the countries of the Union
without the obligation of filing or registration, whether or not it forms part of the trademark. This is
to accord a national of a member nation extensive protection "against infringement and other
types of unfair competition

The mandate of the Convention was adopted under in Sec. 37 of RA No. 166 (Trademark Law).
Sec. 37. Rights of Foreign Registrants-Persons who are nationals of, domiciled or have a bona
fide or effective business or commercial establishment in any foreign country, which is a party to
an international convention or treaty relating to marks or tradenames on the 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 . . . ...

Tradenames of persons described in the first paragraph of this section shall be protected without
the obligation of filing or registration whether or not they form parts of marks.

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PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G., vs THE INTERMEDIATE APPELLATE

COURT and MIL-ORO MANUFACTURING CORPORATION,

Facts:
Petitioner Puma Sportschuhfabriken, a foreign corporation duly organized under the existing laws
of Germany, is a manufacturer and producer of Puma products. It filed a complaint for
infringement of patent or trademark against Mil-Oro Manufacturing Corporation, which is a
registrant of the trademark Puma and Device, with a prayer for issuance of writ of preliminary
injunction. The trial court granted petitioners prayer and ordering Mil-Oro to restrain from using
the trademark PUMA and to withdraw from the market all products bearing the same trademark.
On appeal, the CA reversed the order of the trial court on the ground that petitioner has no legal
capacity to sue. Hence, this present petition for review. Both parties in this case maintain that
they are the rightful owners of the trademark PUMA for socks and belts such that both parties
seek the cancellation of the trademark of the other.
Issue:
Whether or not petitioner has legal capacity to sue in this jurisdiction.
Held:

The Court holds that the petitioner had the legal capacity to file an action in this jurisdiction. As
early as 1927, the Court was, and it still is, of the view that foreign corporation not doing business
in the Philippines needs no license to sue before Philippine courts for infringement of trademark
and unfair competition. A foreign corporation which has never done any business in the
Philippines and which is unlicensed and unregistered to do business here, but is widely and
favorably known in the Philippines through the use therein of its products bearing its corporate
and trade name, has a legal right to maintain an action in the Philippines to restrain the residents
and inhabitants thereof from organizing a corporation therein bearing the same name as the
foreign corporation, when it appears that they have personal knowledge of the existence of such
a foreign corporation, and it is apparent that the purpose of the proposed domestic corporation is
to deal and trade in the same goods as those of the foreign corporation.

Marvex vs. Petra Hawpia

FACTS:
Petra Hawpia & Co., a partnership duly organized under the laws of the Philippines and doing
business at 543 M. de Santos (Botica Divisoria), Manila (hereinafter referred to as the applicant),
on October 14, 1958 filed a petition for the registration of the trademark "LIONPAS" used on
medicated plaster, with the Philippine Patent Office, asserting its continuous use in the
Philippines since June 9, 1958.
The Marvex Commercial Co., Inc., a corporation also duly organized under the laws of the
Philippines (hereinafter referred to as the oppositor), on July 24, 1959 filed an opposition thereto,
alleging that the registration of such trademark would violate its right to and interest in the
trademark "SALONPAS" used on another medicated plaster, which is registered in its name under
Certificate of Registration 5486, issued by the Director of Patents on September 29, 1956, and
that both trademarks when used on medicated plaster would mislead the public as they are
confusingly similar.
After due hearing, the Director of Patents in his decision of August 18, 1961 dismissed the
opposition and gave due course to the petition, stating in part that "confusion, mistake, or
deception among the purchasers will not likely and reasonably occur" when both trademarks are
applied to medicated plaster.
The oppositor moved to have the decision reconsidered. This motion was denied in a resolution
of November 27, 1961. The oppositor then interposed the present appeal.
ISSUE:
Is the applicant the owner of the trademark "LIONPAS"?
(2) Is the trademark "LIONPAS" confusingly similar to the trade mark "SALONPAS"?
HELD:
Director of Patents found, on the strength of exhibits 5 and 6 for the applicant, that the latter has
"satisfactorily shown" its ownership of the trademark sought to be registered. Exhibit 5 is a letter
dated June 20, 1958, sent by "OSAKA BOEKI KAISHA, LTD." to the applicant which tends to

13

show that the former, for a $1 consideration, has assigned, ceded, and conveyed all its "rights,
interests and goodwill in the tradename LIONPAS Medicated Plaster . . ." in favor of the latter.
A careful scrutiny of exh. 5 will reveal, however, that the sender of the letter, "OSAKA BOEKI
KAISHA, LTD.", and which appears to be the seller, is merely a representative of the
manufacturer "ASUNARO PHARMACEUTICAL INDUSTRY CO." There is no proof that as such
representative, the former has been authorized by the latter to sell the trademark in question.
Moreover, exh. 5 on its face appears to have been signed only by someone whose position in the
company's "Sundries Dept." is not described; the signature is not legible.
It is even contradicted by exh. 6. While exh. 5 shows that "OSAKA BOEKI KAISHA,LTD." is a
representative of "ASUNARO PHARMACEUTICAL INDUSTRY CO."; exh.6 asserts that the
former is not a representative of the latter, but that it is the owner of the trademark "LIONPAS"
(par. 2, exh. 6). At all events, neither averment can be accorded the weight of an assignment of
ownership of the trademark in question under the TradeMark Law. Exh. 5 is not acknowledged.
Exh. 6 does not bear the acknowledgment contemplated by the aforesaid law particularly by the
last paragraph of section 37 and paragraph 2 of section 31 of R. A. 166, as amended.
"The assignment must be in writing, acknowledged before a notary public or other officer
authorized to administer oaths or perform other notarial acts and certified under the hand and
official seal of the notary or other officer." (Sec. 31, par. 2)In this case, although a sheet of paper
is attached to exh. 6, on which is typewritten a certification that the signatures of the presidents of
the two named companies (referring to the signatures in exh. 6) "have been duly written by
themselves", this sheet is unmarked, unpaged, unsigned, undated and unsealed. We have
thumbed the record in quest of any definitive evidence that it is a correct translation of the
Japanese characters found on another unmarked and unpaged sheet, and have found none.
It is our considered view that the trade mark "SALONPAS" and "LIONPAS" are confusingly similar
in sound. Both these words have the same suffix, "PAS", which is used to denote a plaster that
adheres to the body with curative power
When the two words are pronounced, the sound effects are confusingly similar. And where goods
are advertised over the radio, similarity in sound is of special significance.
The importance of this rule is emphasized by the increase of radio advertising in which we are
deprived of the help of our eyes and must depend entirely on the ear.
In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much alike.
Similarity of sound is sufficient ground for this Court to rule that the two marks are confusingly
similar when applied to merchandise of the same descriptive properties

Emerald Garment v. CA
Facts:

HD Lee Co., a foreign corporation, seeks the cancellation of a patent in favor of Emerald
Garment Manufacturing (domiciled in the Phil) for the trademark Stylistic Mr. Lee, which
according to HD Lee Co. closely resembled its own trademark Lee and thus would cause
confusion, mistake and deception to the purchasing public.

The Director of Patents granted the cancellation on the ground that petitioners trademark was
confusingly similar to private respondents mark because it is the word Lee which draws the
attention of the buyer and leads him to conclude that the goods originated from the same
manufacturer.

It is undeniably the dominant feature of the mark.

The CA affirmed.

Issue:

Whether the trademark Stylistic Mr. Lee tends to mislead or confuse the public and constitutes
an infringement of the trademark Lee.

Held:

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NO, because lack of adequate proof of actual use of its trademark in the Philippines prior to
Emeralds use of its own mark and for failure to establish confusing similarity between said
trademarks, HD Lee Cos action for infringement must necessarily fail.

Emeralds Stylistic Mr. Lee is not confusingly similar to private respondents LEE trademark.
Colorable imitation DOES NOT APPLY because:
1. Petitioners trademark is the whole STYLISTIC MR. LEE. Although on its label the word
LEE is prominent, the trademark should be considered as a whole and not piecemeal. The
dissimilarities between the two marks become conspicuous, noticeable and substantial
enough to matter especially in the light of the following variables that must be factored in,
among others:
a. Expensive and valuable items are normally bought only after deliberate,
comparative and analytical investigation; and
b. The average Filipino consumer generally buys his jeans by brand.
2. LEE is primarily a surname. Private respondent cannot, therefore, acquire exclusive
ownership over and singular use of said term.
3. After a meticulous study of the records, the SC observes that the Director of Patents and
the Court of Appeals relied mainly on the registration certificates as proof of use by HD Lee
Co of the trademark LEE which are not sufficient

Sterling Products Vs. Farbenfabriken Bayer GR L-19906, 30 April 1969; En Banc, Sanchez (J).
Facts:

The Bayer Cross in circle trademark was registered in Germany in 1904 to Farbenfabriken vorm.
Friedr. Bayer (FFB), successor to the original Friedr. Bauyer et. Comp., and predecessor to
Farbenfabriken Bayer aktiengessel craft (FB2). The Bayer, and Bayer Cross in circle
trademarks were acquired by sterling Drug Inc. when it acquired FFBs subsidiary Bayer Co. of
New York as a result of the sequestration of its assets by the US Alien Property Custodian during
World War I. Bayer products have been known in Philippines by the close of the 19th century.
Sterling Drugs, Inc., however, owns the trademarks Bayer in relation to medicine. FBA
attempted to register its chemical products with the Bayer Cross in circle trademarks. Sterling
Products International and FBA seek to exclude each other from use of the trademarks in the
Philippines. The trial court sustained SPIs right to use the Bayer trademark for medicines and
directed FBA to add distinctive word(s) in their mark to indicate their products come from
Germany. Both appealed.

Issue:

Whether SPIs ownership of the trademarks extends to products not related to medicine.

Held:

No. SPIs certificates of registration as to the Bayer trademarks registered in the Philippines cover
medicines only. Nothing in the certificates include chemicals or insecticides. SPI thus may not
claim first use of the trademarks prior to the registrations thereof on any product other than
medicines. For if otherwise held, a situation may arise whereby an applicant may be tempte3d to
register a trademark on any and all goods which his mind may conceive even if he had never
intended to use the trademark for the said goods. Omnibus registration is not contemplated by
the Trademark Law. The net result of the decision is that SPI may hold on its Bayer trademark for
medicines and FBA may continue using the same trademarks for insecticide and other chemicals,
not medicine. The formula fashioned by the lower court avoids the mischief of confusion of origin,

15

and does not visit FBA with reprobation and condemnation. A statement that its product came
from Germany anyhow is but a statement of fact.

BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYADANG, G.R. No. 183404, October 13, 2010

Facts:

Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in
connection with Fungicide (Class 5) with active ingredient 80% Mancozeb. Berris Agricultural Co.,
Inc. (Berris), filed with the IPO Bureau of Legal Affairs (IPO-BLA) a Verified Notice of
Opposition against the mark under application allegedly because "NS D-10 PLUS" is similar
and/or confusingly similar to its registered trademark "D-10 80 WP," also used for Fungicide
(Class 5) with active ingredient 80% Mancozeb.

Director Estrellita Beltran-Abelardo of the IPO-BLA decided in favor of Berris. However, Abyadang
appealed to the CA which reversed the decision.

Issues:
1. W/N there exists no confusing similarity between the marks
2. W/N the cancellation of Petitioners duly registered and validly existing trademark in the absence
of a properly filed Petition for Cancellation before the Intellectual Property Office is not in accord
with the Intellectual Property Code and applicable Decisions of the Supreme Court.

Held:

First Issue

The determination of priority of use of a mark is a question of fact. Adoption of the mark alone
does not suffice. One may make advertisements, issue circulars, distribute price lists on certain
goods, but these alone will not inure to the claim of ownership of the mark until the goods bearing
the mark are sold to the public in the market. Accordingly, receipts, sales invoices, and
testimonies of witnesses as customers, or orders of buyers, best prove the actual use of a mark
in trade and commerce during a certain period of time.

In the instant case, both parties have submitted proof to support their claim of ownership of their
respective trademarks. Berris presented the following evidence: (1) its trademark application
dated November 29, 2002 with Application No. 4-2002-0010272; (2) its IPO certificate of
registration dated October 25, 2004 and July 8, 2004 as the date of registration; (3) a photocopy
of its packaging bearing the mark "D-10 80 WP"; (4) photocopies of its sales invoices and official
receipts; and (5) its notarized DAU dated April 23, 2003, stating that the mark was first used on
June 20, 2002, and indicating that, as proof of actual use, copies of official receipts or sales
invoices of goods using the mark were attached as Annex "B."

Abyadangs proofs consisted of the following: (1) a photocopy of the packaging for his marketed
fungicide bearing mark "NS D-10 PLUS"; (2) Abyadangs Affidavit dated February 14,
2006, stating among others that the mark "NS D-10 PLUS" was his own creation derived from: N
for Norvy, his name; S for Soledad, his wifes name; D the first letter for December, his birth
month; 10 for October, the 10th month of the year, the month of his business name registration;
and PLUS to connote superior quality; that when he applied for registration, there was nobody
applying for a mark similar to "NS D-10 PLUS" (3) Certification dated December 19, 2005 issued
by the FPA, stating that "NS D-10 PLUS" is owned and distributed by NS Northern Organic

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Fertilizer, registered with the FPA since May 26, 2003, and had been in the market since July 30,
2003;

Berris is the prior user of the mark. Berris was able to establish that it was using its mark "D-10 80
WP" since June 20, 2002, even before it filed for its registration with the IPO on November 29,
2002, as shown by its DAU which was under oath and notarized, bearing the stamp of the Bureau
of Trademarks of the IPO on April 25, 2003, and the DAU, being a notarized document, especially
when received in due course by the IPO, is evidence of the facts it stated and has the
presumption of regularity, entitled to full faith and credit upon its face. The DAU is supported by
the Certification dated April 21, 2006 issued by the Bureau of Trademarks that Berris mark is still
valid and existing.

According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered if it is identical with
a registered mark belonging to a different proprietor with an earlier filing or priority date, with
respect to: (1) the same goods or services; (2) closely related goods or services; or (3) near
resemblance of such mark as to likely deceive or cause confusion.

Comparing Berris mark "D-10 80 WP" with Abyadangs mark "NS D-10 PLUS," as appearing on
their respective packages, one cannot but notice that both have a common component which is
"D-10." On Berris package, the "D-10" is written with a bigger font than the "80 WP." Admittedly,
the "D-10" is the dominant feature of the mark. The "D-10," being at the beginning of the mark, is
what is most remembered of it. Although, it appears in Berris certificate of registration in the
same font size as the "80 WP," its dominancy in the "D-10 80 WP" mark stands since the
difference in the form does not alter its distinctive character.

Applying the Dominancy Test, it cannot be gainsaid that Abyadangs "NS D-10 PLUS" is similar to
Berris "D-10 80 WP," that confusion or mistake is more likely to occur. Undeniably, both marks
pertain to the same type of goods fungicide with 80% Mancozeb as an active ingredient and
used for the same group of fruits, crops, vegetables, and ornamental plants, using the same
dosage and manner of application. They also belong to the same classification of goods under
R.A. No. 8293. Both depictions of "D-10," as found in both marks, are similar in size, such that
this portion is what catches the eye of the purchaser. Undeniably, the likelihood of confusion is
present.

This likelihood of confusion and mistake is made more manifest when the Holistic Test is applied,
taking into consideration the packaging, for both use the same type of material (foil type) and
have identical color schemes (red, green, and white); and the marks are both predominantly red
in color, with the same phrase "BROAD SPECTRUM FUNGICIDE" written underneath.

Considering these striking similarities, predominantly the "D-10," the buyers of both products,
mainly farmers, may be misled into thinking that "NS D-10 PLUS" could be an upgraded
formulation of the "D-10 80 WP."

As to the Second Issue

IPO, by reason of their special knowledge and expertise over matters falling under their
jurisdiction, are in a better position to pass judgment on matters regarding intellectual
property. Thus, their findings of fact in that regard are generally accorded great respect, if not
finality by the courts, as long as they are supported by substantial evidence, even if such
evidence might not be overwhelming or even preponderant. It is not the task of the appellate
court to weigh once more the evidence submitted before the administrative body and to substitute
its own judgment for that of the administrative agency in respect to sufficiency of evidence.

Inasmuch as the ownership of the mark D-10 80 WP fittingly belongs to Berris, and because the
same should not have been cancelled by the CA, we consider it proper not to belabor anymore
the issue of whether cancellation of a registered mark may be done absent a petition for
cancellation.

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