TRADEMARK CASES DIGEST

ARCE SONS AND COMPANY vs. SELECTA BISCUIT COMPANY, INC., ET AL.

DOCTRINE:

FACTS: Respondent Selecta Biscuit Company, Inc. filed with the Philippine Patent Office a petition for the registration of the word
“SELECTA” as trademark to be used in its bakery products, alleging that they have been using it for not less than 2 months and that "no
other persons, partnership, corporation or association... has the right to use said trade-mark in the Philippines, either in the identical form
or in any such near resemblance thereto, as might be calculated to deceive."

An examiner found that the word sought to be registered resembles the word “SELECTA” used by herein petitioner in its milk
and ice cream products and respondent’s use of the word would cause confusion as to the origin of their respective goods. The examiner
recommended the denial of respondent’s petition but upon reconsideration the Patent Office ordered the publication of the application for
purposes of opposition.

Petitioner files its opposition on several grounds, among which are:

(1) that the mark "SELECTA" had been continuously used by petitioner in the manufacture and sale of its products, including cakes,
bakery products, milk and ice cream from the time of its organization and even prior thereto by its predecessor-in-interest, Ramon
Arce;
(2) that the mark "SELECTA" has already become identified with name of the petitioner and its business;
(3) that petitioner had warned respondent not to use said mark because it was already being used by the former, but that the latter
ignored said warning;
(4) that respondent is using the word "SELECTA" as a trademark as bakery products in unfair competition with the products of
petitioner thus resulting in confusion in trade;
(5) that the mark to which the application of respondent refers has striking resemblance, both in appearance and meaning, to
petitioner's mark as to be mistaken therefor by the public and cause respondent's goods to be sold as petitioner's; and
(6) that actually a complaint has been filed by the petitioner against respondent for unfair competition in the Court of First Instance
of Manila asking for damages and for the issuance of a writ of injunction against respondent enjoining the latter for continuing
with the use of said mark.

The CIF of Manila rendered its decision in the unfair competition case perpetually enjoining respondent from using “SELECTA” as a
trademark. The Director of Patents, on the other hand, dismissed petitioner’s opposition, saying that respondent’s registration of
“SELECTA” as trademark will not cause confusion or mistake nor will deceive purchasers as to the cause of damage to petitioner.

ISSUE:

Whether or not respondent’s use of the word “SELECTA” as trademark would cause confusion as to petitioner’s products.

FACTS:

YES.

Ramon Arce, the predecessor-in-interest of petitioner, started his milk business as early as 1933. He sold his milk products with
“SELECTA FRESH MILK” inscribed on them as well as the word “SELECTA” on special containers of his other products. He expanded
his business in Lepanto Street, Manila and placed in front of his establishment a signboard with “SELECTA” inscribed thereon. Then his
business was acquired by petitioner, a co-partnership organized by his sons, the purposes of which are "to conduct a first class restaurant
business; to engage in the manufacture and sale of ice cream, milk, cakes and other products; and to carry on such other legitimate
business as may produce profit.".

It is unmistakably shown that petitioner, through its predecessor-in-interest, had made use of “SELECTA” not only as a trade-
name indicative of the location of the restaurant where it manufactures and sells its products, but as trademark used. This is not only in
accordance with its general acceptation but with our law on the matter. "

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 manufactured and sold by other merchants or businessmen. The Director of Patents, therefore, erred in holding that petitioner
made use of that word merely as a trade-name and not as a trade-mark within the meaning of the law.

The term 'trade-mark' includes any word, name, symbol, emblem, sign or device or any combination thereof adopted and used
by a manufacturer or merchant to identify his goods and distinguish them from those manufactured, sold or dealt in by others."
(Section 38, Republic Act No. 166).

The word 'SELECTA' 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, it’s 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

The suggestion that the name 'SELECTA' was chosen by the organizers of respondent merely as a translation from a Chinese
word "Ching Suan" meaning "mapili" in the dialect is betrayed by the very manner of its selection, for if the only purpose is to make an
English translation of that word and not to compete with the business of petitioner, why choose the word 'SELECTA', a Spanish word,
and not "Selected", the English equivalent thereof, as was done by other well-known enterprises? In the words of petitioner's counsel,
"Why with all the words in the English dictionary and all the words in the Spanish dictionary and all the phrases that could be coined,
should respondent choose 'SELECTA' if its purpose was not and is not to fool the people and to damage petitioner?"

In view of the foregoing, we hold that the Director of Patents committed an error in dismissing the opposition of petitioner and in
holding that the registration of the trade-mark 'SELECTA' in favor of respondent will not cause damage to petitioner, and consequently,
we hereby reverse his decision.

De La Rama Steamship Co, Inc v Tan

93 Phil 1034
Facts: An agreement was entered into on 1949 between the De la Rama Steamship Co. Inc. and the National Development Company
(NDC) whereby De la Rama undertook the management of the three vessels known as "Doña Aurora," "Doña Nati" and "Doña Alicia"
which had been purchased by the Philippine Government from Japan with the advise and technical supervision of De la Rama. In the
management contract, it was provided that De la Rama had the option to buy the vessels at the fifth year ff the purchase and delivery of
each of the vessels at a price which is to consist of the cost price of each vessel, plus such expenses as De la Rama may have incurred
in connection with the construction, outfitting, provisioning and operation thereof; but should De la Rama fail to exercise the right of option
it should be reimbursed of the expenses it incurred in manning, equipping, fueling, overhauling and repairing the vessels, and the payment
of loading commission discharging commission, overriding commission sub-agent's commission, etc.
The NDC cancel the general agency that it had granted to De La Rama upon one year’s notice. This was opposed by De La
Rama, which alleged that it had been granted the option to purchase the vessels. The Court however upheld the right of the NDC to
cancel the management contract and the option of De la Rama to purchase the vessels was rendered ineffective.

Issues: Whether De la Rama can demand from NDC to refrain from using the names of the three vessels?

Ruling: Yes. To permit NDC to continue using the names would be to countenance the unlawful appropriation of the benefit of a goodwill
which De la Rama has acquired as a result of the continued usage and large expense; it would be tantamount to permitting NDC to grab
the reputation or goodwill of the business of another.

ANDRES ROMERO vs. MAIDEN FORM BRASSIERE CO., INC., and THE DIRECTOR OF PATENTS

FACTS

Respondent company, a foreign corporation, filed with Director of Patents an application for registration of the trademark "Adagio" for the
brassieres manufactured by it. In its application, respondent company alleged that said trademark was first used by it in US in 1937, and
in the Philippines on 1946; that it had been continuously used by it in Philippines for over 10 years. Director issued certificate of
registration.

Petitioner filed a petition for cancellation of said trademark. Director dismissed petition. Hence, this appeal.

DECISION

Appellant claims that the trademark "Adagio" has become a common descriptive name of a particular style of brassiere and is, therefore,
unregistrable. It is urged that said trademark had been used by local brassiere manufacturers since 1948, without objection on the part
of respondent company.

This claim is without basis in fact. The evidence shows that the trademark "Adagio" is a musical term, which means slowly or in an easy
manner, and was used as a trademark by the owners thereof (the Rosenthals of Maiden Form Co., New York) because they are musically
inclined. Being a musical term, it is used in an arbitrary (fanciful) sense as a trademark for brassieres manufactured by respondent
company. It also appears that respondent company has, likewise, adopted other musical terms to identify, as a trademark, the different
styles or types of its brassieres.

It is not true that respondent company did not object to the use of said trademark by petitioner and other local brassiere manufacturers.
The records show that respondent company's agent, Mr. Schwartz, warned the Valleson Department Store to desist from the sale of the
"Adagio" Royal Form brassieres manufactured by petitioner, and even placed an advertisement in the local newspapers warning the
public against unlawful use of said trademark. The advertisement prompted petitioner to file this present petition for cancellation.

On the other hand, respondent company's long and continuous use of the trademark "Adagio" has not rendered it merely descriptive of
the product. If this argument were sound, then every time a plaintiff obtained the result of having the public purchase its article, that fact
of itself would destroy a trademark. Arbitrary trademarks cannot become generic in this way.

Appellant next contends that the trademark "Adagio at the time it was registered (in the Philippines) on 1957, had long been used by
respondent company, only to designate a particular style or quality of brassiere and, therefore, is unregistrable as a trademark.

This contention is untenable.

Brassieres are usually of different types or styles, and appellee has used different trademarks for every type. The mere fact that appellee
uses "Adagio" for one type or style, does not affect the validity of such word as a trademark.

Appellant also claims that respondent Director erred in registering the trademark in question, despite appellee's non-compliance with
Section 37, paragraphs 1 and 4 (a) of the Trademark Law.

This contention flows from a misconception of the application for registration of trademark of respondent. As we see it, respondent's
application was filed under the provisions of Section 2 of the Trademark Law as amended by Section 1 of Republic Act 865.

Section 37 can be availed of only where the Philippines is a party to an international convention or treaty relating to trademarks, in which
the trade-mark sought to be registered need not be use in the Philippines.

Appellant, likewise, contends that the registration the trademark in question was fraudulent or contrary Section 4 of the Trademark Law.
There is no evidence to show that the registration of the trademark "Adagio" was obtained fraudulently by appellee. The evidence record
shows, on the other hand, that the trademark "Adagio" was first exclusively in the Philippines by appellee in the year 1932. There being
no evidence of use of the mark by others before 1932, or that appellee abandoned use thereof, the registration of the mark was made in
accordance with the Trademark Law. Granting that appellant used the mark when appellee stopped using it during the period of time that
the Government imposed restrictions on importation of respondent's brassiere bearing the trademark, such temporary non-use did not
affect the rights of appellee because it was occasioned by government restrictions and was not permanent, intentional, and voluntary.

Appellant next argues that respondent Director erred in declaring illegal the appropriation in the Philippines of the trademark in question
by appellant and, therefore, said appropriation did not affect appellee's right thereto and the subsequent registration thereof. Appellant
urges that its appropriation of the trademark in question cannot be considered illegal under Philippine laws, because of non-compliance
by appellee of Section 37. But we have already shown that Section 37 is not the provision invoked by respondent because the Philippines
is not as yet a party to any international convention or treaty relating to trademarks.

The decision appealed from is therefore hereby AFFIRMED.

M c d o n a l d ’ s C o r p o r a t i o n e t . a l . v s . L . C . B i g M a k Burger, Inc., et. al., G.R. No. 143993, August 18, 2004

FACTS:

The court ruled that the use of the respondents of the “Big Mak” mark infringed the trademark of that of petitioner McDonald’s “Big Mac”.
Using the dominancy test, the court reasoned that both marks are closely similar (visually and orally). The law prohibits usage of marks
which might cause confusion and mistake or might deceive/mislead consumers as to the origin, general appearance, nature, and kind,
among others, of their products and/or services (Sec 155.1, ICP).

RULING:

The court not only ruled on the confusion of similar goods but also on the issue of confusion of business. The Court found that
petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark and that usage of respondents of the “Big Mak”
mark has unjustly created the impression that its business is approved and sponsored by, or affiliated with petitioners.

The court also found respondents guilty of unfair competition, reasoning that respondents passed off their products as though they were
of petitioner’s. Had respondents gave due notice as to who clearly sells the products, they would have only been guilty of infringement.
FIRST DIVISION

[G.R. No. 166115. February 2, 2007.]

McDONALD'S CORPORATION, petitioner, vs. MACJOY FASTFOOD CORPORATION, respondent.

Facts: On 14 March 1991, respondent MacJoy Fastfood Corporation, a domestic corporation engaged in the sale of fast food products
in Cebu City, filed with the then Bureau of Patents, Trademarks and Technology Transfer (BPTT), now the Intellectual Property Office
(IPO), an application for the registration of the trademark "MACJOY & DEVICE" for fried chicken, chicken barbeque, burgers, fries,
spaghetti, palabok, tacos, sandwiches, halo-halo and steaks under classes 29 and 30 of the International Classification of Goods.

Petitioner McDonald's Corporation, a corporation duly organized and existing under the laws of the State of Delaware, USA, filed a
verified Notice of Opposition 3 against the respondent's application claiming that the trademark "MACJOY & DEVICE" so resembles its
corporate logo, otherwise known as the Golden Arches or "M" design, and its marks "McDonalds," McChicken," "MacFries," "BigMac,"
"McDo," "McSpaghetti," "McSnack," and "Mc," (hereinafter collectively known as the MCDONALD'S marks) 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.

Respondent denied the aforementioned allegations of the petitioner and averred that it has used the mark "MACJOY" for the past many
years in good faith and has spent considerable sums of money for said mark's extensive promotion in tri-media, especially in Cebu City
where it has been doing business long before the petitioner opened its outlet thereat sometime in 1992; and that its use of said mark
would not confuse affiliation with the petitioner's restaurant services and food products because of the differences in the design and detail
of the two (2) marks.

The IPO, ratiocinating that the predominance of the letter "M," and the prefixes "Mac/Mc" in both the "MACJOY" and the "MCDONALDS"
marks lead to the conclusion that there is confusing similarity between them especially since both are used on almost the same products
falling under classes 29 and 30 of the International Classification of Goods, i.e., food and ingredients of food, sustained the petitioner's
opposition and rejected the respondent's application.

Finding no confusing similarity between the marks "MACJOY" and "MCDONALD'S," the CA, in its herein assailed Decision 7 dated July
29, 2004, reversed and set aside the appealed IPO decision and order.

Issue: Whether or not there is a confusing similarity between the MCDONALD'S marks of the petitioner and the respondent's "MACJOY
& DEVICE" trademark

Held: The Supreme Court is not the proper venue to consider factual issues as it is not a trier of facts. Nevertheless, when the factual
findings of the appellate court are mistaken, absurd, speculative, conjectural, conflicting, tainted with grave abuse of discretion, or contrary
to the findings culled by the court of origin, as here, this Court will review them.

The old Trademark Law, Republic Act (R.A.) No. 166, as amended, defines a "trademark" as any distinctive word, name, symbol, emblem,
sign, or device, or any combination thereof adopted and used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt in by others.

Essentially, the issue here is whether there is a confusing similarity between the MCDONALD'S marks of the petitioner and the
respondent's "MACJOY & DEVICE" trademark when applied to Classes 29 and 30 of the International Classification of Goods, i.e., food
and ingredients of food.

In determining similarity and likelihood of confusion, jurisprudence has developed two tests, the dominancy test and the holistic test. The
dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception.
In contrast, the holistic test requires the court to consider the entirety of the marks as applied to the products, including the labels and
packaging, in determining confusing similarity. Under the latter test, a comparison of the words is not the only determinant factor.

Here, the IPO used the dominancy test in concluding that there was confusing similarity between the two (2) trademarks in question as it
took note of the appearance of the predominant features "M", "Mc" and/or "Mac" in both the marks.

In trademark cases, particularly in ascertaining whether one trademark is confusingly similar to another, no set rules can be deduced
because each case must be decided on its merits.

Applying the dominancy test to the instant case, the Court finds that herein petitioner's "MCDONALD'S" and respondent's "MACJOY"
marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks.

To begin with, both marks use the corporate "M" design logo and the prefixes "Mc" and/or "Mac" as dominant features. The first letter "M"
in both marks puts emphasis on the prefixes "Mc" and/or "Mac" by the similar way in which they are depicted i.e. in an arch-like, capitalized
and stylized manner.

For sure, it is the prefix "Mc," an abbreviation of "Mac," which visually and aurally catches the attention of the consuming public. Verily,
the word "MACJOY" attracts attention the same way as did "McDonalds," "MacFries," "McSpaghetti," "McDo," "Big Mac" and the rest of
the MCDONALD'S marks which all use the prefixes Mc and/or Mac.

Besides and most importantly, both trademarks are used in the sale of fastfood products. Indisputably, the respondent's trademark
application for the "MACJOY & DEVICE" trademark covers goods under Classes 29 and 30 of the International Classification of Goods,
namely, fried chicken, chicken barbeque, burgers, fries, spaghetti, etc. Likewise, the petitioner's trademark registration for the
MCDONALD'S marks in the Philippines covers goods which are similar if not identical to those covered by the respondent's application.

In the case at bar, the predominant features such as the "M," "Mc," and "Mac" appearing in both McDonald's marks and the MACJOY &
DEVICE" easily attract the attention of would-be customers. Even non-regular customers of their fastfood restaurants would readily notice
the predominance of the "M" design, "Mc/Mac" prefixes shown in both marks. Such that the common awareness or perception of
customers that the trademarks McDonalds mark and MACJOY & DEVICE are one and the same, or an affiliate, or under the sponsorship
of the other is not far-fetched.

The differences and variations in styles as the device depicting a head of chicken with cap and bowtie and wings sprouting on both sides
of the chicken head, the heart-shaped "M," and the stylistic letters in "MACJOY & DEVICE;" in contrast to the arch-like "M" and the one-
styled gothic letters in McDonald's marks are of no moment. These minuscule variations are overshadowed by the appearance of the
predominant features mentioned hereinabove.
Thus, with the predominance of the letter "M," and prefixes "Mac/Mc" found in both marks, the inevitable conclusion is there is confusing
similarity between the trademarks Mc Donald's marks and "MACJOY AND DEVICE" especially considering the fact that both marks are
being used on almost the same products falling under Classes 29 and 30 of the International Classification of Goods i.e. Food and
ingredients of food.

With the existence of confusing similarity between the subject trademarks, the resulting issue to be resolved is who, as between the
parties, has the rightful claim of ownership over the said marks.

A mark is valid if it is distinctive and hence not barred from registration under the Trademark Law. However, once registered, not only the
mark's validity but also the registrant's ownership thereof is prima facie presumed.

Pursuant to Section 37 27 of R.A. No. 166, as amended, as well as the provision regarding the protection of industrial property of foreign
nationals in this country as embodied in the Paris Convention 28 under which the Philippines and the petitioner's domicile, the United
States, are adherent-members, the petitioner was able to register its MCDONALD'S marks successively, i.e., "McDonald's" in 04 October,
1971; the corporate logo which is the "M" or the golden arches design and the "McDonald's" with the "M" or golden arches design both in
30 June 1977; and so on and so forth.

On the other hand, it is not disputed that the respondent's application for registration of its trademark "MACJOY & DEVICE" was filed only
on March 14, 1991 albeit the date of first use in the Philippines was December 7, 1987. 32

Hence, from the evidence on record, it is clear that the petitioner has duly established its ownership of the mark/s.

Respondent's contention that it was the first user of the mark in the Philippines having used "MACJOY & DEVICE" on its restaurant
business and food products since December, 1987 at Cebu City while the first McDonald's outlet of the petitioner thereat was opened
only in 1992, is downright unmeritorious. For the requirement of "actual use in commerce . . . in the Philippines" before one may register
a trademark, trade-name and service mark under the Trademark Law 33 pertains to the territorial jurisdiction of the Philippines and is not
only confined to a certain region, province, city or barangay.

Thus, the IPO was correct in rejecting and denying the respondent's application for registration of the trademark "MACJOY & DEVICE."

Petition GRANTED.

IDENTICAL OR CONFUSINGLY SIMILAR

ETEPHA, A.G., petitioner, vs. DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS, INC., respondents .
(G.R. No. L-20635, March 31, 1966)

FACTS: Respondent Westmont Pharmaceuticals, Inc., a New York corporation, sought registration of trademark "Atussin" placed on its
"medicinal preparation of expectorant antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used in the treatment of cough".
The trademark is used exclusively in the Philippines since January 21, 1959.

Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected claiming that it will be damaged because Atussin is so
confusedly similar to its Pertussin used on a preparation for the treatment of coughs, that the buying public will be misled into believing
that Westmont's product is that of petitioner's which allegedly enjoys goodwill.

The Director of Patents ruled that the trademark ATUSSIN may be registered even though PERTUSSIN had been previously registered
from the same office, hence, this appeal.

ISSUE: Whether or not ATUSSIN may be registered?

HELD: We are to be guided by the rule that the validity of a cause for infringement is predicated upon colorable imitation. The phrase
"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, and to cause him to purchase the
one supposing it to be the other.

A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of
display. Inspection should be undertaken from the viewpoint of a prospective buyer. Confusion is likely between trademarks, however,
only if their over-all presentations in any of the particulars of sound, appearance, or meaning are such as would lead the purchasing
public into believing that the products to which the marks are applied emanated from the same source.

We concede the possibility that buyers might be able to obtain Pertussin or Attusin without prescription. When this happens, then the
buyer must be one thoroughly familiar with what he intends to get, else he would not have the temerity to ask for a medicine — specifically
needed to cure a given ailment. In which case, the more improbable it will be to palm off one for the other. For a person who purchases
with open eyes is hardly the man to be deceived.

For the reasons given, the appealed decision of the respondent Director of Patents — giving due course to the application for the
registration of trademark ATTUSIN is hereby affirmed. Cost against petitioner. So ordered.
Esso Standard v CA Digest

G.R. No. L-29971

Facts of the Case: The petitioner Esso Standard is a foreign corporation duly licensed to do business in the philippines. it is engaged in
the sale of petroleum products which are identified by the trademarl 'Esso'. Esso is a successor of Standard Vacuum Oil Co, it registered
as a business name with the Bureau of Commerce in 1962. United Cigarette is a domestic corporation engaged in the manufacture and
sale of cigarettes. it acquired the business from La Oriental Tobacco Corp including patent rights, once of which is the use of 'Esso' on
its cigarettes.

The petitioner filed a trademark infringement case alleging that it acquired goodwill to such an extent that the buying public would be
deceived as ti the quality and origin of the said products to the detriment and disadvantage of its own products. The lower court found
United Cigarette guilty of infringement. Upon appeal, the Court of Appeals ruled that there was no infringment in this case.

Issue: Is there infringement committed?

Ruling: NONE. Infringement is defined by law as the use without the consent of the trademark owner of any reproduction, counterfeit,
copy or colorable imitation of any registered mark or tradename which would likely cause confusion or mistake or deceive purchasers or
others as to the source or origin of such goods.

The products of both parties (Petroleum and cigarettes) are non-competing. But as to whether trademark infringement exists depend on
whether or not the goods are so related that the public may be or is actually deceived and misled that they come from the same maker.
Under the Related Goods Theory, goods are related when they belong to the same class or have the same descriptive properties or when
they have same physical attributes. In these case, the goods are absolutely different and are so foreign from each other it would be
unlikely for purchasers to think that they came from the same source. Moreover, the goods flow from different channels of trade and are
evidently different in kind and nature.

20. Pag-asa Industrial Corp. vs. CA 118 SCRA 526 (1982)

FACTS:

Yoshida Kogyo Kabushiki Kaisha was issued a certificate of Registration in 1961 for the trademark YKK for slide fastener and zippers.
Respondent Kaisha filed with the Director of Patents a petition for cancellation of petitioner's registration of exactly the same trademark
"YKK" alleging that both trademark ("YKK") are confusingly similar, being used on similar products (slide fasteners or zippers) under the
same classification of goods.

The Director of Patents, finding the trademark in question "YKK" brand to be confusingly similar, and regretting the negligence of his
office in allowing the registration of the trademark "YKK" in favor of petitioner notwithstanding the fact that the same trademark had long
been previously registered in the name of respondent Kaisha, cancelled Registration No. 13756 in the name of Petitioner

Petitioner argued that there was laches on the part of Kaisha considering that notwithstanding the fact that the trademark was registered
for the use of petitioner, it was not until January 23, 1975, that Kaisha filed a petition for cancellation after a lapse of almost seven (7)
years.

ISSUE:

Whether or not Pag-asa Industrial Corp is entitled to the use of the trademark. YES

RULING:

The Trademark Law is very clear. It requires actual commercial use of the mark prior to its registration. There is no dispute that respondent
corporation was the first registrant, yet it failed to fully substantiate its claim that it used in trade or business in the Philippines the subject
mark; it did not present proof to invest it with exclusive, continuous adoption of the trademark which should consist among others, of
considerable sales since its first use. The invoices submitted by respondent which were dated way back in 1957 show that the zippers
sent to the Philippines were to be used as "samples" and "of no commercial, value."

It appears that it was only after more than seven (7) years when respondent sought the cancellation of the trademark. An unreasonable
length of time had already passed before respondent asserted its right to the trademark. There is a presumption of neglect already
amounting to "abandonment" of a right after a party had remained silent for quite a long time during which petitioner had been openly
using the trademark in question. Such inaction on the part of respondent entitles petitioner to the equitable principle of laches.

Respondent by its silence, must be aware that its "title" to the subject mark is defective since it failed to conform with the provision of the
law regarding prior use of the mark; and it must have been afraid that it cannot fully substantiate its claim that the mark was commercially
used in the Philippines. Surely, the evidence of respondent showing that it had advertised in magazines such as Life and Time, cannot
be considered as compliance with the law, for it is of general knowledge that said magazines are not published in the Philippines, nor
was there any showing that the product so advertised was even sold here. Hence, to grant the application for cancellation would greatly
prejudice petitioner since respondent would be taking advantage of the goodwill already established by petitioner in selling its product,
without the respondent having incurred in any expense to gain this priceless asset.

FRUIT VS CA PAGE 11 PDF

EMERALD VS CA PAGE 12

CANON KABUSHIKI VS CA
Facts:

Respondent NSR Rubber filed an application for registration of the mark CANON for sandals. Petitioner Canon, a Japanese corporation,
opposed alleging it will be damaged by the registration. Petitioner presented evidence that it was the owner of the mark CANON in various
countries and in the Philippines for goods such as paints, chemical products, toner and dye stuff. BPTTT dismissed the opposition and
gave due course to respondent’s application. CA affirmed. Petitioner invokes Article 8 of the Paris Convention which affords protection to
a tradename whether or not it forms part of a trademark.

Issue: Whether or not petitioner may be afforded protection of its trade name.

Ruling: NO.The term “trademark” is defined by RA 166, the Trademark Law, as including “any word, name, symbol, emblem, sign or
device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them for those
manufactured, sold or dealt in by others.” Tradename is defined by the same law as including “individual names and surnames, firm
names, tradenames, devices or words used by manufacturers, industrialists, merchants, agriculturists, and others to identify their
business, vocations, or occupations; the names or titles lawfully adopted and used by natural or juridical persons, unions, and any
manufacturing, industrial, commercial, agricultural or other organizations engaged in trade or commerce.” Simply put, a trade name refers
to the business and its goodwill; a trademark refers to the goods.

The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, of which both the Philippines
and Japan, the country of petitioner, are signatories, is a multilateral treaty that seeks to protect industrial property consisting of patents,
utility models, industrial designs, trademarks, service marks, trade names and indications of source or appellations of origin, and at the
same time aims to repress unfair competition. We agree with public respondents that the controlling doctrine with respect to the
applicability of Article 8 of the Paris Convention is that established in Kabushi Kaisha Isetan vs. IAC. As pointed out by the BPTTT:
“Regarding the applicability of Article 8 of the Paris Convention, this Office believes that there is no automatic protection afforded an entity
whose tradename is alleged to have been infringed through the use of that name as a trademark by a local entity. To illustrate – if a
taxicab or bus company in a town in the United Kingdom or India happens to use the tradename “Rapid Transportation”, it does not
necessarily follow that “Rapid” can no longer be registered in Uganda, Fiji, or the Philippines.”

Societe Des Produits Nestlé, 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 respondent’s 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 CFC’s 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 former’s
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 CFC’s application for registration.
 The Court of Appeals reversed the BPTTT’s decision and ordered the Director of Patents to approve CFC’s application. Hence
this petition before the SC.

Issue:

Whether or not the CA erred in reversing the decision of the BPTTT denying CFC’s 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 Nestle’s and CFC’s 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 CFC’s trademark FLAVOR MASTER carries the colors orange and mocha while that of Nestle’s 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.
 Shangri-La International Hotel Management v. CA
 G.R. No. 111580, June 21, 2001
 Facts: On June 21, 1988, the Shangri-La International Hotel Management filed with the Bureau of Patents, Trademarks and
Technology Transfer (BPTTT) a petition praying for the cancellation of the registration of the "Shangri-La" mark and "S"
device/logo issued to the Developers Group of Companies, Inc., on the ground that the same was illegally and fraudulently
obtained and appropriated for the latter's restaurant business. The Shangri-La Group alleged that it is the legal and beneficial
owners of the subject mark and logo; that it has been using the said mark and logo for its corporate affairs and business since
March 1962 and caused the same to be specially designed for their international hotels in 1975, much earlier than the alleged
first use thereof by the Developers Group in 1982. It also filed with the BPTTT its own application for registration of the subject
mark and logo. The Developers Group filed an opposition to the application, which was docketed as Inter Partes Case No. 3529.
Almost 3 years later, or on April 15, 1991, the Developers Group instituted with the RTC of Quezon City a complaint for
infringement and damages with prayer for injunction.
 On January 8, 1992, the Shangri-La Group moved for the suspension of the proceedings in the infringement case on account of
the pendency of the administrative proceedings before the BPTTT. This was denied by the trial court in a Resolution issued on
January 16, 1992.
 Issue: Whether, despite the institution of an Inter Partes case for cancellation of a mark with the BPTTT (now the Bureau of
Legal Affairs, Intellectual Property Office) by one party, the adverse party can file a subsequent action for infringement with the
regular courts of justice in connection with the same registered mark.
 Held: Section 151.2 of Republic Act No. 8293, otherwise known as the Intellectual Property Code, provides, as follows –
 Section 151.2. Notwithstanding the foregoing provisions, the court or the administrative agency vested with jurisdiction to
hear and adjudicate any action to enforce the rights to a registered mark shall likewise exercise jurisdiction to determine
whether the registration of said mark may be cancelled in accordance with this Act. The filing of a suit to enforce the
registered mark with the proper court or agency shall exclude any other court or agency from assuming jurisdiction over
a subsequently filed petition to cancel the same mark. On the other hand, the earlier filing of petition to cancel the
 mark with the Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved before an
action to enforce the rights to same registered mark may be decided. (Emphasis provided)
 Similarly, Rule 8, Section 7, of the Regulations on Inter Partes Proceedings, provides to wit –
 Section 7. Effect of filing of a suit before the Bureau or with the proper court. - The filing of a suit to enforce the registered
mark with the proper court or Bureau shall exclude any other court or agency from assuming jurisdiction over a
subsequently filed petition to cancel the same mark. On the other hand, the earlier filing of petition to cancel the
mark with the Bureau shall not constitute a prejudicial question that must be resolved before an action to enforce
the rights to same registered mark may be decided. (Emphasis provided)
 Hence, as applied in the case at bar, the earlier institution of an Inter Partes case by the Shangri-La Group for the cancellation
of the "Shangri-La" mark and "S" device/logo with the BPTTT cannot effectively bar the subsequent filing of an infringement
case by registrant Developers Group. The law and the rules are explicit.
 The rationale is plain: Certificate of Registration No. 31904, upon which the infringement case is based, remains valid and
subsisting for as long as it has not been cancelled by the Bureau or by an infringement court. As such, Developers Group's
Certificate of Registration in the principal register continues as "prima facie evidence of the validity of the registration, the
registrant's ownership of the mark or trade-name, and of the registrant's exclusive right to use the same in connection with the
goods, business or services specified in the certificate." Since the certificate still subsists, Developers Group may thus file a
corresponding infringement suit and recover damages from any person who infringes upon the former's rights.

MIGHTY CORP. vs. E&J GALLOG.R. NO. 154342July 14, 2004PONENTE CORONA; J.

FACTS:
On March 12, 1993, E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC (respondents) sued MIGHTY CORPORATION and
LA CAMPANA FABRICA DE TABACO, INC. (petitioners) in the RTC-Makati for trademark and trade name infringement and unfair
competition, with a prayer for damages and preliminary injunction.

They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winery’s and Gallo and Ernest & Julio Gallo trademark’s
established reputation and popularity, thus causing confusion, deception and mistake on the part of the purchasing public who had always
associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s wines.

In their answer, petitioners alleged, among other affirmative defenses that: petitioners Gallo cigarettes and Gallo Winery’s wine were
totally unrelated products. To wit:
1. Gallo Winery’s GALLO trademark registration certificates covered wines only, and not cigarettes;
2. GALLO cigarettes and GALLO wines were sold through different channels of trade;
3. the target market of Gallo Winery’s wines was the middle or high-income bracket while Gallo cigarette buyers were farmers,
fishermen, laborers and other low-income workers;
4. that the dominant feature of the Gallo cigarette was the rooster device with the manufacturer’s name clearly indicated as MIGHTY
CORPORATION, while in the case of Gallo Winery’s wines, it was the full names of the founders-owners ERNEST & JULIO GALLO
or just their surname GALLO;

The Makati RTC denied, for lack of merit, respondent’s prayer for the issuance of a writ of preliminary injunction. CA likewise dismissed
respondent’s petition for review on certiorari.

After the trial on the merits, however, the Makati RTC held petitioners liable for committing trademark infringement and unfair competition
with respect to the GALLO trademark.

On appeal, the CA affirmed the Makati RTC’s decision and subsequently denied petitioner’s motion for reconsideration.
ISSUE/S: Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for the reason alone that they
were purportedly forms of vice.
RULING: NO.Wines and cigarettes are not identical, similar, competing or related goods.
In resolving whether goods are related, several factors come into play:
the business (and its location) to which the goods belong
the class of product to which the good belong
the product’s quality, quantity, or size, including the nature of the package, wrapper or container
the nature and cost of the articles
the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or quality
the purpose of the goods
whether the article is bought for immediate consumption, that is, day-to-day household items
the field of manufacture
the conditions under which the article is usually purchased and
the articles of the trade through which the goods flow, how they are distributed, marketed, displayed and sold.
The test of fraudulent simulation is to the likelihood of the deception of some persons in some measure acquainted with an
established design and desirous of purchasing the commodity with which that design has been associated. The simulation, in order
to be objectionable, must be as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with
the article that he seeks to purchase.
The petitioners are not liable for trademark infringement, unfair competition or damages.

Levi Strauss & Co. v. Clinton Apparelle, GR No. 138900 September 20, 2005
  FACTS: The Complaint alleged that LS & Co., a foreign corporation duly organized and existing under the laws of the State of
Delaware, USA and engaged in the apparel business, is the owner by prior adoption and use since 1986 of the internationally
famous “Dockers and Design” trademark. This ownership is evidenced by its valid and existing registrations in various member
countries if Paris Convention. In the Philippines, it has a Certificate of Registration No. 46619 in the Principal Register for use of
said trademark on pants, shirts, blouses, skirts, shorts, sweatshirts and jackets under Class 25. The “Dockers and Design”
trademark was first used in the Philippines in or about May 1988, by LSPI, a domestic corporation engaged in the manufacture,
sale and distribution of various products bearing trademarks owned by LS & Co. To date, LSPI continues to manufacture and
sell Dockers Pants with the “Dockers and Design” Trademark. LS & Co and LSPI alleged that they discovered the presence in
the local market of jeans under the brand name “Paddocks” using a device which is substantially, if not exactly, similar to the
“Dockers and Design” trademark owned and registered in their name, without their consent. Based on their belied, they added
Clinton Apparelle manufactured and continues to manufacture such “Paddocks” jeans and other apparel. However, since LS &
Co. and LSPI are unsure if both or just one of impleaded defendants is behind the manufacture and sale of the “Paddocks” jeans
complained of, they brought this suit under Sec. 13 Rule 3 of the 1997 Rules of Court.
 The evidence considered by the trial court in granting injunctive relief were as follows: (1) a certified true copy of the certificate
of trademark registration for “Dockers and Design” (2) a pair of DOCKERS pants bearing the trademark (3) a pair of “Paddocks”
pants bearing the respondents assailed logo; (4) the trends MBL Survey Report purportedly proving that there was confusing
similarity between two marks; (5) the affidavit of one Bernabe Alajar which recounted petitioners’ prior adoption, use and
registration of the “Dockers and Design” Trademark and (6) the affidavit of Mercedes Abad of Trends MBL Inc which detailed
the methodology and procedure used in their survey and results thereof.
 The trial court issued a writ of preliminary injunction, which prompted Clinton Apparelle to file a petition for certiorari, prohibition
and mandamus with the Court of Appeals. Whereby the Appellate Court granted the petition of Clinton Apparelle’s petition;
holding that the trial court did not follow the procedure required by law. Thus, holding the issuance of the writ of preliminary
injunction is questionable after petitioner’s failure to sufficiently establish its material and substantial right to have the writ issued.
Moreover, the Court of Appeals strongly believes that the implementation of the questions writ would effectively shut down
respondent’s shut down. Hence this petition.
 ISSUE: whether or not the single registration of the trademark “Dockers and Design” confers on the owner the right to prevent
the use of a fraction thereof.
 HELD: Given the single registration of the trademark “Dockers and Design” and considering that respondent only uses the
assailed device but a different word mark, the right to prevent the latter from using the challenged “Paddocks” device is far from
clear. Stated otherwise, it is not evident whether the single registration of the trademark “Dockers and Design” confers on the
owner the right to prevent the use of a fraction thereof in the course of trade. It is also unclear whether the use without the
owner’s consent of a portion of a trademark registered in its entirety constitutes material or substantial invasion of the owner’s
right.
 It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the dominant or central feature of
petitioners’ trademark—the feature that prevails or is retained in the minds of the public—an imitation of which creates the
likelihood of deceiving the public and constitutes trademark infringement. In sum, there are vital matters which have yet and may
only be established through a full-blown trial.
 From the above discussion, we find that petitioners’ right to injunctive relief has not been clearly and unmistakably
demonstrated. The right has yet to be determined. Petitioners also failed to show proof that there is material and substantial
invasion of their right to warrant the issuance of an injunctive writ. Neither were petitioners able to show any urgent and
permanent necessity for the writ to prevent serious damage.
 Petitioners wish to impress upon the Court the urgent necessity for injunctive relief, urging that the erosion or dilution of
their trademark is protectable. They assert that a trademark owner does not have to wait until the mark loses its distinctiveness
to obtain injunctive relief, and that the mere use by an infringer of a registered mark is already actionable even if he has not yet
profited thereby or has damaged the trademark owner.
 Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of
the presence or absence of: (1) competition between the owner of the famous mark and other parties; or (2) likelihood of
confusion, mistake or deception. Subject to the principles of equity, the owner of a famous mark is entitled to an injunction
“against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become
famous and causes dilution of the distinctive quality of the mark.” This is intended to protect famous marks from subsequent
uses that blur distinctiveness of the mark or tarnish or disparage it.
 Based on the foregoing, to be eligible for protection from dilution, there has to be a finding that: (1) the trademark sought
to be protected is famous and distinctive; (2) the use by respondent of “Paddocks and Design” began after the petitioners’ mark
became famous; and (3) such subsequent use defames petitioners’ mark. In the case at bar, petitioners have yet to establish
whether “Dockers and Design” has acquired a strong degree of distinctiveness and whether the other two elements are present
for their cause to fall within the ambit of the invoked protection. The Trends MBL Survey Report which petitioners presented in
a bid to establish that there was confusing similarity between two marks is not sufficient proof of any dilution that the trial court
must enjoin.
 After a careful consideration of the facts and arguments of the parties, the Court finds that petitioners did not adequately prove
their entitlement to the injunctive writ. In the absence of proof of a legal right and the injury sustained by the applicant, an order
of the trial court granting the issuance of an injunctive writ will be set aside for having been issued with grave abuse of discretion.
Conformably, the Court of Appeals was correct in setting aside the assailed orders of the trial court.

Philip Morris, Inc. vs. Fortune Tobacco Corporation

G.R. No. 158589. June 27, 2006

Facts:
 Petitioner Philip Morris, Inc. a corporation organized under the laws of the state of Virginia, USA, is the registered owner of the
trademark MARK VII for cigarettes. Benson and Hedges (Canada), Inc., a subsidiary of Philip Morris, Inc., is the registered owner of the
trademark MARK TEN for cigarettes. Another subsidiary of Philip Morris, Inc. the Swiss Company Fabriques de Tabac Reunies, S.A., is
the assignee of the trademark LARK. All are evidenced by Trademark Certificate of Registration. On the other hand, Fortune Tobacco
Corporation, a company organized in the Philippines, manufactures and sells cigarettes using the trademark MARK.
Philip Morris, Inc. filed a complaint for trademark infringement and damages against Fortune Tobacco Corporation. The
complaint was dismissed by the RTC Pasig City in its decision dated January 21, 2003.
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 but CA affirmed the trial court’s decision. The CA found that MARK VII, MARK TEN and LARK do not qualify
as well-known marks entitled to protection even without the benefit of actual use in the local market and that the similarities in the
trademarks in question are insufficient as to cause deception or confusion tantamount to infringement.
With the motion for reconsideration denied in the CA, the petitioners filed a petition for review with the Supreme Court.

Issues:

1.) Whether or not petitioners, as Philippine registrants of trademarks, are entitled to enforce trademark rights in the country.
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.

Ruling:
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. Inarguably,
trademark deserves protection. It is for this reason that the petitioner’s recourse for their entitlement to enforce trademark rights in this
country and also the right to sue for trademark infringement in Philippine courts and be accorded protection against unauthorized use of
the Philippine-registered trademarks is understandable. Their standing to sue in Philippine courts had been recognized by the CA but
such right to sue does not necessarily mean protection of their trademarks in the absence of actual use in the Philippines.
But the petitioners are still foreign corporations. They may not sue on that basis alone of their respective certificates of registration
of trademarks unless their country grants similar rights and privileges to Filipino citizens pursuant to Section 21-A of R.A. No. 166. This
reciprocity requirement is a condition to file a suit by a foreign corporation as ruled in Leviton Industries v. Salvador.
The respective home country of the petitioner, namely, the United States, Switzerland and Canada, together with the Philippines
are members of the Paris Union. Philippines adherence to the Paris Convention obligates the country to honor and enforce its provisions,
however, this does not automatically entitle petitioners to the protection of their trademark in our country without actual use of the marks
in local commerce and trade because any protection accorded has to be made subject to the limitations of Philippine laws.
Significantly, registration in the Philippines of trademarks does not convey an absolute right or exclusive ownership thereof. In
Shangri-la v. Development Group of Companies, the Court emphasized that trademark is a creation of use and, therefore, actual use is
a prerequisite to exclusive ownership; registration is only an administrative confirmation of the existence of the right of ownership of the
mark, but does not perfect such right.
With the foregoing perspective, it may be stated right off that the registration of a trademark unaccompanied by actual use in the
country accords the registrants only the standing to sue for infringements in Philippine Courts but entitlement to protection of such
trademark in the country is entirely different matter.
On the main issue of infringement, the court, relying on the holistic test ruled against the likelihood of confusion resulting in
infringement arising from the respondent’s use of the trademark MARK for its particular cigarette product. The striking dissimilarities are
significant enough to warn any purchaser that one is different from the other. This is upon considering the entire marking as a whole
For lack of convincing proof on the part of the petitioners of actual use of their registered trademark prior to respondents use of
its mark and for petitioners failure to demonstrate confusing similarity between said trademarks, the dismissal of their basic complaint of
infringement and the plea for damages are affirmed.
The petition is denied. The assailed decision and resolution of the Court of Appeals are affirmed.

Shangri-La International Hotel Management, Ltd. (SLIHM) Vs. Developers Group of Companies, Inc. (DGCI)

NATURE:
petition for review on certiorari of the decision & resolution of the Court of Appeals

FACTS:
petitioners (Shangri-La) assail to set & seek to set aside the decision of the Court of Appeals & its resolution w/c affirmed w/ modification
an earlier decision of the RTC of QC, an action for infringement & damages threat commenced by respondent (DCGI) against them.

core of this controversy: “Shangri-La” mark & “S” logo. Respondent DGCI claims ownership of said mark & logo in the Philippines.

Bureau of Patents, Trademarks & Technology Transfer (BPTTT) issued DGCI a certificate of registration (may 31, 2983) and since
then, DGCI started using the “Shangri-La” & “S” in its restaurant business.

on the other hand, Kuok family (owns & operates a chain of hotels & hotel-related transactions since 1969) adopted the name “Shangri-
La” as part of corporate names of all companies under the Kuok Grp. Of Companies as far back as 1962. Name “Shangri-La” has been
used in all their hotels & hotel-related establishments worldwide.

And for centralization purposes= they use “Shangri-La” & “S” logo in their hotels in places such as Singapore and Hong Kong. They
also incorporated it in the Phils. In the beginning of 1987 in Edsa Shangri-La (Mandaluyong) & Makati Shangri-La (Makati)
Ramon Syhunliong as DGCI’s witness (businessman; named his restaurant business “Shangri-la”)

DGCI filed a complaint for Infringement & Damages, lower court’s judgment was in favor of the respondent (DGCI)
1. Kuok Group’s bulk use of the tradename was abroad, not in the Phils (until 1987)
2. The Paris Convention must yield to a municipal law

ISSUES:
1. Whether certification against forum-shopping submitted on the behalf of the petitioners is efficient (NOT RELEVANT TO CONSTI
TOPIC)
2. Whether the issue posed by petitioners are purely factual in nature hence improper for resolution in the instant petition for review
on certiorati

DECISION:
the instant petition is GRANTED

RATIO:
The new Intellectual Property Code (IPC), R.A. No. 8293, undoubtedly shows the firm resolve of the Philippines to observe & follow the
Paris Convention by incorporating the relevant portions of the Convention such that persons who may question a mark (that is, oppose
registration, petition for the cancellation thereof, sue for unfair competition) include persons whose internationally well-known mark,
whether or not registered, is identical with or confusingly similar to or constitutes a translation of a mark that is sought to be registered or
is actually registered.

Paris Convention mandates that protection should be afforded to internationally known marks as signatory to the Paris Convention w/o
regard as to whether the foreign corporation registered, licensed or doing business in the Phils.

our municipal law on trademarks regarding the requirement of actual use in the Phils must subordinate a international agreement

the fact that international law has been made part of the law of the land does not 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
equal footage

petitioners’ separate personalities from their mother corporation be an obstacle in the enforcement of their rights as part of Kuok Grp
of Companies

SKECHERS, U.S.A., INC., vs. INTER PACIFIC INDUSTRIAL TRADING CORP., et al

GR No. 164321 March 23, 2011

Facts:
Skechers (petitioner) filed with RTC Manila application for issuance of search warrants against an outlet or warehouse operated
by respondents for infringement of trademark. Petitioner has registered the trademark “Skechers” and the trademark “S” (within an oval
design) with the IPO.
Respondents moved to quash the search warrants, arguing that there was no confusing similarity between petitioner’s Skechers
rubber shoes and its “Strong”rubber shoes.
RTC – agreed with respondents
CA – affirmed RTC’s ruling

Issue:
Whether or not there was trademark infringement.

SC Ruling:
Yes.
The essential element of infringement under R.A. No. 8293 is that the infringing mark is likely to cause confusion. In determining
similarity and likelihood of confusion, jurisprudence has developed tests: the Dominancy Test and the Holistic or Totality Test. The
Dominancy Test focuses on the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion,
mistake, and deception in the mind of the purchasing public. Given more consideration are the aural and visual impressions created by
the marks on the buyers. In contrast, the Holistic or Totality Test necessitates a consideration of the entirety of the marks as applied to
the products, including the labels and packaging, in determining confusing similarity.
Applying the Dominancy Test to the case at bar, the Court held that the use of the stylized “S” by respondent in its Strong rubber
shoes infringes on the mark already registered by petitioner with the IPO. While it is undisputed that petitioner’s stylized “S” is within an
oval design, the dominant feature of the trademark is the stylized “S,” as it is precisely the stylized “S” which catches the eye of the
purchaser. Thus, even if respondent did not use an oval design, the mere fact that it used the same stylized “S”, the same being the
dominant feature of petitioner’s trademark, already constitutes infringement under the Dominancy Test.
Comparing petitioner’s Energy model and respondent’s Strong rubber shoes, respondent also used the color scheme of blue,
white and gray utilized by petitioner. Even the design and “wavelike” pattern of the midsole and outer sole of respondent’s shoes are very
similar to petitioner’s shoes, if not exact patterns thereof. The protection of trademarks as intellectual property is intended not only to
preserve the goodwill and reputation of the business established on the goods bearing the mark through actual use over a period of time,
but also to safeguard the public as consumers against confusion on these goods.
Fredco Manufacturing Corporation v. President and Fellows of Harvard College
G.R. No. 185917, 1 June 2011

By: Erwin V. Zamora

Fredco Manufacturing Corporation (Fredco) filed before the Bureau of Legal Affairs of the Philippine Intellectual Property Office a Petition
for Cancellation of Registration No. 56561 issued to President and Fellows of Harvard College (Harvard University) for the mark “Harvard
Veritas Shield Symbol” under classes 16, 18, 21, 25 and 28.

Fredco claimed that Harvard University had no right to register the mark in class 25, since its Philippine registration was based on a
foreign registration. Thus, Harvard University could not have been considered as a prior adopter and user of the mark in the Philippines.

Fredco explained that the mark was first used in the Philippines by its predecessor-in-interest New York Garments as early as 1982, and
a certificate of registration was issued in 1988 for goods under class 25. Although the registration was cancelled for the non-filing of an
affidavit of use, the fact remained that the registration preceded Harvard University’s use of the subject mark in the Philippines.

Harvard University, on the other hand claimed that the name and mark “Harvard” was adopted in 1639 as the name of Harvard College
of Cambridge, Massachusetts, USA. The marks “Harvard” and “Harvard Veritas Shield Symbol,” had been used in commerce since 1872,
and was registered in more than 50 countries.

The Bureau of Legal Affairs ruled in favor of Fredco and ordered the cancellation of Registration No. 56561. It found Fredco to be the
prior user and adopter of the mark “Harvard” in the Philippines. On appeal, the Office of the Director General of the Intellectual Property
Office reversed the BLA ruling on the ground that more than the use of the trademark in the Philippines, the applicant must be the owner
of the mark sought to be registered. Fredco, not being the owner of the mark, had no right to register it.

The Court Appeals affirmed the decision of the Office of the Director General. Fredco appealed the decision with the Supreme Court. In
its appeal, Fredco insisted that the date of actual use in the Philippines should prevail on the issue of who had a better right to the mark.

The Supreme Court ruled:

“The petition has no merit.

Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before a trademark can be registered, it must have been actually
used in commerce for not less than two months in the Philippines prior to the filing of an application for its registration. While Harvard
University had actual prior use of its marks abroad for a long time, it did not have actual prior use in the Philippines of the mark "Harvard
Veritas Shield Symbol" before its application for registration of the mark "Harvard" with the then Philippine Patents Office. However,
Harvard University's registration of the name "Harvard" is based on home registration which is allowed under Section 37 of R.A. No. 166.
As pointed out by Harvard University in its Comment:

Although Section 2 of the Trademark law (R.A. 166) requires for the registration of trademark that the applicant thereof must prove that
the same has been actually in use in commerce or services for not less than two (2) months in the Philippines before the application for
registration is filed, where the trademark sought to be registered has already been registered in a foreign country that is a member of the
Paris Convention, the requirement of proof of use in the commerce in the Philippines for the said period is not necessary. An applicant
for registration based on home certificate of registration need not even have used the mark or trade name in this country.”

“In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), "[m]arks registered under Republic Act No. 166 shall remain
in force but shall be deemed to have been granted under this Act x x x," which does not require actual prior use of the mark in the
Philippines. Since the mark "Harvard Veritas Shield Symbol" is now deemed granted under R.A. No. 8293, any alleged defect arising
from the absence of actual prior use in the Philippines has been cured by Section 239.2.”

The Supreme Court further ruled that Harvard University is entitled to protection in the Philippines of its trade name “Harvard” even without
registration of such trade name in the Philippines. It explained:

“There is no question then, and this Court so declares, that "Harvard" is a well-known name and mark not only in the United States but
also internationally, including the Philippines. The mark "Harvard" is rated as one of the most famous marks in the world. It has been
registered in at least 50 countries. It has been used and promoted extensively in numerous publications worldwide. It has established a
considerable goodwill worldwide since the founding of Harvard University more than 350 years ago. It is easily recognizable as the trade
name and mark of Harvard University of Cambridge, Massachusetts, U.S.A., internationally known as one of the leading educational
institutions in the world. As such, even before Harvard University applied for registration of the mark "Harvard" in the Philippines, the mark
was already protected under Article 6bis and Article 8 of the Paris Convention.”

Facts: This is a petition for review, assailing the decisions of the RTC and the Court of Appeals. Fredco Manufacturing Corporation, a
corporation handling the manufacture, promotion and

marketing of “Harvard” clothing articles as successor

-in-interest of New York Garments Manufacturing & Export Co., Inc., filed a Petition for Cancellation of Registration No. 56561 before

the Bureau of Legal Affairs of the IPO against the respondents for the trademark “Harvard Veritas Shield Symbol.” The name and mark
“Harvard” is valued between US $750 million to US $ 1 billion.

The petitioner alleged that, at the time of issuance of Registration No. 56561 to Harvard

University in 1993, New York Garments had already registered the mark “Harvard” for goods under

Class 25 of the Nice International Classification of Goods and Services in the year 1988. Moreover, despite the can

cellation of registration on July 1998 due to New York Garments’ failure to file an

affidavit of use/non-

use on the fifth year of the registration, the right to the mark “Harvard”

remained with its predecessor New York Garments and now with Fredco. Harvard

alleged however that it is the lawful owner of the name and mark “Harvard” in

numerous countries worldwide, including the Philippines. The Director of the Bureau of Legal

Affairs of the IPO granted Fredco’s Petition for Cancellation of Registration. The

matter, through an appeal by Harvard University, was brought to the Director General of the IPO who reversed the

decision of the Legal Affairs’ director. The IPO Director General’s decision was affirmed when

brought to the Court of Appeals. Fredco insists that the date of registration in the Philippines should prevail in determining who has the
better right to register the marks. Issue: Whether the Court of Appeals committed a reversible error in affirming the decision of the Office
of the Director General of the IPO. Decision: The petition has no merit; thus, it is denied.

Harvard University’s registration of the name “Harvard” is based on home registration which

is allowed under Section 37 of RA 166 (Trademark Law), although Section 2 of the same law requires the use of trademark in commerce
of services for not less than 2 months in the Philippines before

application for registration is filed. This is based on the ground that “where the trademark sought

to be registered has already been registered in a foreign country that is a member of the Paris

Convention, the requirement of proof of use in the commerce in the Philippines is not necessary.” Moreover, Harvard University has been
using the mark “Harvard” in commerce since 1872 and the “Harvard Veritas Shield Symbol” for Class 25 goods in the United States since
1953.

UFC Philippines, Inc. vs Fiesta Barrio Manufacturing Corporation

G.R. 198889, January 20, 2016

Facts:

On April 4, 2002, FBMC filed an application for the mark “Papa Boy & Device” for goods under Class 30, specifically for lechon sauce.
The Intellectual Property Office published said application for opposition in the IP Phil e-Gazette released on September 8, 2006.

On December 11, 2006, UFC filed with the IPO-BLA a verified notice of opposition to the application alleging that: The mark “PAPA” was
derived from the name Neri Papa which was 1 st used in 1954; Certificate of Reg of PAPA was issued on August 14, 1983 and renewed
on October 28, 2005 after it expired on August 11, 2003; “PAPA BANANA CATSUP LABEL” was registered in August 11, 1983 and
renewed in November 15, 2006 after its expiration; “PAPA KETSARAP” was registered on August 23, 1985 and was renewed on August
23, 2005; “Papa Boy & Device” is identical to “PAPA” which is duly registered, particularly the dominant feature; That the dominant feature
of “PAPA Boy & Device”, which is the “PAPA” of UFC, confusion and deception would result, particularly product confusion and confusion
as to its origin;

FBMC argued that there is no likelihood of confusion. It states that: there was no likelihood of confusion since “PAPAKETSARAP” is
limited to products covered by its registration which is class 30 for banana sauce while “Papa Boy” in lechon sauce; “Papa Boy” is the
dominant mark while the dominant feature of “PAPAKETSARAP” are the words “PAPA” and “KETSARAP” and the word “KETSARAP” is
more prominently printed and displayed in the foreground than the word “PAPA” for which opposer’s reference to the dominancy test
fails; “PAPA Boy” would not damage “MANG TOMAS”; “PAPA Boy” differs in overall sound, spelling, meaning, style, configuration,
presentation, and appearance to “PAPAKETSARAP”; “PAPA Boy” is unrelated and noncompeting to “PAPAKETSARAP” hence
registration of marks covering un-related goods is applicable.

Case was brought to IPO-BLA which rendered in favor of UFC. An appeal was made by FBMC to IPO Director General which dismissed
it.

Petition was made to CA which reversed the decision of IPO-BLA and IPO-DG. CA stated that “Papa Boy” is not confusingly similar to
“papaketsarap” and “papa banana catsup”. It stated that: although the word “papa” is prominent, the trademark should be taken as a
whole and not piecemeal, since the difference of the marks is noticeable and that UFC’s is labeled as banana sauce, while BFMC is
labeled as lechon sauce; the consumers cannot be confused over the 2 marks, since, Barrio Fiesta was indicated clearly identifying the
manufacturer of the lechon sauce; consumers cannot be confused on the products since UFC’s product is banana sauce which is clearly
physically distinguished from BFMC’s product of lechon sauce; papa is a term of endearment for one’s father, hence, UFC cannot claim
exclusive ownership over the term.

Hence, petition to the SC by UFC.

Issue:

WON CA erred in applying the holistic test to determine if there is confusing similarity between marks.

WON CA erred in stating that there is no likelihood of confusion between marks.

WON the expiration of “PAPA” and “PAPA BANANA CATSUP LABEL” which was expired and renewed later than registration of “PAPA
Boy” be a bar for the latter’s registration.

WON UFC can claim exclusive ownership and use of “PAPA” since it is a common term of endearment for one’s

father.

Held: Yes. The Court held it to be so. The Court time and time again applied the dominancy test in determining the likelihood of confusion.
It is true, since, the test of dominancy is explicitly incorporated into law in Sec. 155.1 of RA 8293. In the case at bar, since RA 8293 took
effect on January 1, 1998 which is way before the issue occurred, dominancy test would then be applied.

Yes. While the CA stated that there wouldn’t likely be confusion from the consumers on buying either products, but that only refers to
product confusion. According to the SC, there are 2 types of confusion: product confusion; and origin confusion. Product confusion refers
to the likely chance that the consumer would be induced to purchase a product believing it to be the other, while origin confusion refers
to the likely chance that consumers would be deceived that a product originated from the registrant of an earlier product.

Sec. 123 of the IP Code provides:

A mark cannot be registered of it:

d. Is identical with a registered mark belonging to a different proprietor or a marj with an earlier filing or priority date, in respect of:

i. the same goods or services; or

ii. closely related goods or services; or

iii. if it nearly resembles such a mark as to be likely to deceive or cause confusion

A scrutiny of UFC and BFMC’s marks would show that IPO-BLA and IPO-DG correctly found the word “PAPA” as the dominant feature
of “PAPA KETSARAP”. “Ketsarap” cannot be the dominant feature of the mark as it merely describes the product. “PAPA” is also the
dominant feature of “PAPA BOY & DEVICE” since the word “PAPA” is written on top of and before the other words such that it is the 1st
word that catches the eyes.
No.A certificate of registration of a mark is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark,
and of the registrant’s exclusive right to use the same in connection with the goods and those that are related thereto specified in the
certificate. In the case at bar, though BFMC’s mark was 1 st to file for application on April 4, 2002 which is prior to the late file for renewal
of “PAPA” and “PAPA LABEL DESIGN” which is on 2005 and 2006 respectively. UFC however was able to secure registration for the
mark “PAPA KETSARAP” on August 23, 1985 and that its renewal was timely filed on August 23, 2005. Hence, “PAPA KETSARAP” was
still prior to “PAPA BOY & DEVICE”.

Yes. The Merriam-Webster dictionary defines “papa” simply as “a person’s father.” A person’s father has no logical connection with catsup
products, hence, “PAPA” is an arbitrary mark capable of being registered, as it is distinctive, which comes from a family name that started
the brand. Furthermore, what was registered was not the word “papa” as defined in the dictionary, but the word “papa” as the last name
of the original owner of the brand.

The Court adds that Section 123.1(e) of RA 8293 categorically states that “a mark which is considered by the competent authority of the
Philippines, whether or not it is registered here”

cannot be registered by another in the Philippines.

Moreover, Fredco’s registration was already cancelled on July 30, 1998 when it failed to file

the required affidavit of use/non-

use for the fifth year of the mark’s registration.

SERI SOMBOONSAKDIKUL VS. ORLANE S. A.

G. R. NO. 188996, 01 FEBRUARY 2017

Facts: On September 23, 2003, petitioner Seri Somboonsakdikul (petitioner) filed an application for registration of the mark LOLANE with
the IPO for goods classified under Class 3 (personal care products) of the International Classification of Goods and Services for the
Purposes of the Registration of Marks (International Classification of Goods). Orlane S.A. (respondent) filed an opposition to petitioner's
application, on the ground that the mark LOLANE was similar to ORLANE in presentation, general appearance and pronunciation, and
thus would amount to an infringement of its mark. Respondent alleged that: (1) it was the rightful owner of the ORLANE mark which was
first used in 1948; (2) the mark was earlier registered in the Philippines on July 26, 1967 under Registration No. 129961 for the following
goods:

x x x perfumes, toilet water, face powders, lotions, essential oils, cosmetics, lotions for the hair, dentrifices, eyebrow pencils,
make-up creams, cosmetics & toilet preparations under Registration No. 12996.

and (3) on September 5, 2003, it filed another application for use of the trademark on its additional products:

x x x toilet waters; revitalizing waters, perfumes, deodorants and body deodorants, anti-perspiration toiletries; men and women
perfume products for face care and body care; face, eye, lips, nail, hand make-up products and make-up removal products, towels
impregnated with cosmetic lotions; tanning and instant tanning sunproducts, sunprotection products, (not for medical use), after-
suncosmetic products; cosmetic products; slimming cosmetic aids; toiletries; lotions, shampoos and hair care products; shave and after
shave products, shaving and hair removing products; essential oils; toothpastes; toiletry, cosmetic and shaving kits for travel, filled or
fitted vanity-cases.

Respondent adds that by promotion, worldwide registration, widespread and high standard use, the mark had acquired
distinction, goodwill, superior quality image and reputation and was now well-known. Imputing bad faith on the petitioner, respondent
claimed that LOLANE' s first usage was only on August 19, 2003.

In his answer, petitioner denied that the LOLANE mark was confusingly similar to the mark ORLANE. He averred that he was
the lawful owner of the mark LOLANE which he has used for various personal care products sold worldwide. He alleged that the first
worldwide use of the mark was in Vietnam on July 4, 1995. Petitioner also alleged that he had continuously marketed and advertised
Class 3 products bearing LOLANE mark in the Philippines and in different parts of the world and that as a result, the public had come to
associate the mark with him as provider of quality personal care products.

Petitioner maintained that the marks were distinct and not confusingly similar either under the dominancy test or the holistic test.
The mark ORLANE was in plain block upper case letters while the mark LOLANE was printed in stylized word with the second letter L
and the letter A co-joined. Furthermore, the similarity in one syllable would not automatically result in confusion even if used in the same
class of goods since his products always appear with Thai characters while those of ORLANE always had the name Paris on it. The two
marks are also pronounced differently. Also, even if the two marks contained the word LANE it would not make them confusingly similar
since the IPO had previously allowed the co-existence of trademarks containing the syllable "joy" or "book" and that he also had existing
registrations and pending applications for registration in other countries.

The Bureau of Legal Affairs (BLA) rejected petitioner's application in a Decision dated February 27, 2007, finding that
respondent's application was filed, and its mark registered, much earlier. The BLA ruled that there was likelihood of confusion based on
the following observations: (1) ORLANE and LOLANE both consisted of six letters with the same last four letters - LANE; (2) both were
used as label for similar products; (3) both marks were in two syllables and that there was only a slight difference in the first syllable; and
(4) both marks had the same last syllable so that if these marks were read aloud, a sound of strong similarity would be produced and
such would likely deceive or cause confusion to the public as to the two trademarks.

Petitioner filed a motion for reconsideration but this was denied by the Director of the BLA on May 7, 2007. The BLA ruled that
the law did not require the marks to be so identical as to produce actual error or mistake as the likelihood of confusion was enough. The
BLA also found that the dominant feature in both marks was the word LANE; and that the marks had a strong visual and aural resemblance
that could cause confusion to the buying public. This resemblance was amplified by the relatedness of the goods.

On appeal, the Director General of the IPO affirmed the Decision of the BLA Director. Despite the difference in the first syllable,
there was a strong visual and aural resemblance since the marks had the same last four letters, i.e., LANE, and such word is pronounced
in this jurisdiction as in "pedestrian lane." Also, the mark ORLANE is a fanciful mark invented by the owner for the sole purpose of
functioning as a trademark and is highly distinctive. Thus, the fact that two or more entities would accidentally adopt an identical or similar
fanciful mark was too good to be true especially when they dealt with the same goods or services. The Director General also noted that
foreign judgments invoked by petitioner for the grant of its application are not judicial precedents.

Thus, petitioner filed a petition for review before the CA arguing that there is no confusing similarity between the two marks.
Petitioner maintained that LANE is not the dominant feature of the mark and that the dominancy test did not apply since the trademarks
are only plain word marks and the dominancy test presupposes that the marks involved are composite marks. Petitioner pointed out that
the IPO had previously allowed the mark GIN LANE under Registration No. 4-2004-006914 which also involved products under Class
3. While petitioner admitted that foreign judgments are not judicial precedents, he argued that the IPO failed to recognize relevant foreign
judgments, i.e., the Australian Registrar of Trademarks and the IPO of Singapore which ruled that there was no confusing similarity
between the marks LOLANE and ORLANE. Lastly, the Director General should have deferred to the findings of the Trademark Examiner
who made a substantive examination of the application for trademark registration, and who is an expert in the field and is in the best
position to determine whether there already exists a registered mark or mark for registration. Since petitioner's application for registration
of the mark LOLANE proceeded to allowance and publication without any adverse citation of a prior confusingly similar mark, this meant
that the Trademark Examiner was of the view that LO LANE was not confusingly similar to ORLANE.

The CA denied the petition of the petitioner for the very reason that there was substantial evidence to support the IPO's findings of fact.
Applying the dominancy test, the CA ruled that LOLANE' s mark is confusingly or deceptively similar to ORLANE. There are predominantly
striking similarities in the two marks including LANE, with only a slight difference in the first letters, thus the two marks would likely cause
confusion to the eyes of the public. The similarity is highlighted when the two marks are pronounced considering that both are one word
consisting of two syllables. The CA ruled that when pronounced, the two marks produce similar sounds. The CA did not heed petitioner's
contention that since the mark ORLANE is of French origin, the same is pronounced as "ORLAN." Filipinos would invariably pronounce
it as "OR-LEYN." The CA also noted that the trademark ORLANE is a fanciful name and petitioner was not able to explain why he chose
the word LOLANE as trademark for his personal care products. Thus, the only logical conclusion is that he would want to benefit from the
established reputation and goodwill of the ORLANE mark.

The dominancy test is also preferred over the holistic test. This is because the latter relies only on the visual comparison between
two trademarks, whereas the dominancy test relies not only on the visual, but also on their aural and connotative comparisons, and their
overall impressions created. Nonetheless, the CA stated that there is nothing in this jurisdiction dictating that the dominancy test is
applicable for composite marks.
ISSUE: Resolving the issue of whether there is confusing similarity between ORLANE and LOLANE which would bar the registration of
LOLANE before the IPO.

RULING OF THE SUPREME COURT

The CA erred in its Decision when it affirmed the Decision of the IPO.

There is no colorable imitation between the marks LOLANE and ORLANE which would lead to any likelihood of confusion to the
ordinary purchasers.

In determining colorable imitation, we have used either the dominancy test or the holistic or totality test. The dominancy test
considers the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public. More consideration is given on the aural and visual impressions created by the marks on
the buyers of goods, giving little weight to factors like process, quality, sales outlets, and market segments. On the other hand, the holistic
test considers the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity.
The focus is not only on the predominant words but also on the other features appearing on the labels.

While there are no set rules as what constitutes a dominant feature with respect to trademarks applied for registration, usually,
what are taken into account are signs, color, design, peculiar shape or name, or some special, easily remembered earmarks of the brand
that readily attracts and catches the attention of the ordinary consumer. What we considered as the dominant feature of the mark is the
first word/figure that catches the eyes or that part which appears prominently to the eyes and ears.

However, while we agree with the CA's use of the dominancy test, we arrive at a different conclusion. Based on the distinct
visual and aural differences between LOLANE and ORLANE, we find that there is no confusing similarity between the two marks.

The suffix LANE is not the dominant feature of petitioner's mark. Neither can it be considered as the dominant feature of ORLANE
which would make the two marks confusingly similar.

First, an examination of the appearance of the marks would show that there are noticeable differences in the way they are written
or printed.

As correctly argued by petitioner in his answer before the BLA, there are visual differences between LOLANE and ORLANE
since the mark ORLANE is in plain block upper case letters while the mark LOLANE was rendered in stylized word with the second letter
L and the letter A co-joined.

Second, as to the aural aspect of the marks, LOLANE and ORLANE do not sound alike.

It appeals to the ear in pronouncing ORLANE and LOLANE are dissimilar. The first syllables of each mark, i.e., OR and LO do
not sound alike, while the proper pronunciation of the last syllable LANE-"LEYN" for LOLANE and "LAN" for ORLANE, being of French
origin, also differ. We take exception to the generalizing statement of the Director General, which was affirmed by the CA, that Filipinos
would invariably pronounce ORLANE as "ORLEYN." This is another finding of fact which has no basis, and thus, justifies our reversal of
the decisions of the IPO Director General and the CA. While there is possible aural similarity when certain sectors of the market would
pronounce ORLANE as "ORLEYN," it is not also impossible that some would also be aware of the proper pronunciation--especially since,
as respondent claims, its trademark ORLANE has been sold in the market for more than 60 years and in the Philippines, for more than
40 years.

Respondent failed to show proof that the suffix LANE has registered in the mind of consumers that such suffix is exclusively or
even predominantly associated with ORLANE products. Notably and as correctly argued by petitioner, the IPO previously allowed the
registration of the mark GIN LANE for goods also falling under Class 3, i.e., perfume, cologne, skin care preparations, hair care
preparations and toiletries.

Finding that LOLANE is not a colorable imitation of ORLANE due to distinct visual and aural differences using the dominancy
test, we no longer find it necessary to discuss the contentions of the petitioner as to the appearance of the marks together with the
packaging, nature of the goods represented by the marks and the price difference, as well as the applicability of foreign judgments. We
rule that the mark LOLANE is entitled to registration.

WHEREFORE, the petition is GRANTED. The Decision of the Court of Appeals dated July 14, 2009 is REVERSED and SET
ASIDE. Petitioner's application of the mark LOLANE for goods classified under Class 3 of the International Classification of Goods
is GRANTED.

G.R. No. 186088 March 22, 2017

WILTON DY and/or PHILITES ELECTRONIC & LIGHTING PRODUCTS v KONINKLIJKE PHILIPS ELECTRONICS, N.V.

Commercial Law; Intellectual Property; Trademark; A trademark is "any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt by others." It is "intellectual property deserving protection by law," and "susceptible to registration if it is
crafted fancifully or arbitrarily and is capable of identifying and distinguishing the goods of one manufacturer or seller from those of
another.

Same; same; same; Dominancy test; Dominancy test focuses on "the similarity of the prevalent or dominant features of the competing
trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation is not
necessary; neither is it required that the mark sought to be registered suggests an effort to imitate. Given more consideration are the
aural and visual impressions created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets,
and market segments.

Same; same; same; Holistic test; holistic or totality test necessitates a "consideration of the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the
predominant words, but also on the other features appearing on both labels so that the observer may draw conclusion on whether one is
confusingly similar to the other

SERENO,C J.:

FACTS: On March 2006, Koninklijke Philips Electronics, N .V. ("PHILIPS") opposed the trademark application of petitioner PHILITES on
the ground that PHILITES' registration will mislead the public over an identical or confusingly similar mark of PHILIPS, which is registered
and internationally well-known mark specifically invoking the provisions of Section 123 of the Intellectual Property Law of the Philippines
which states that a mark cannot be registered if it Is identical with a registered mark belonging to a different proprietor or a mark with an
earlier filing or priority date xxx is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the
competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being
already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That
in determining whether a mark is well known, account shall be taken of the knowledge of the relevant sector of the public, rather than of
the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark.

Petitioner filed its answer denying the allegations made by the respondent. IPP-BLA denied the opposition of the respondent which, later
on was upheld by IPP-DG. On appeal to the Court of Appeals, the appellate court reversed the decision finding the trademark applied by
the petitioner is confusingly similar with that of respondent’s registered trademark and packaging. Also, the appellate court belied
asseveration that the mark 'PHILITES' is a coined or arbitrary mark from the words 'Philippines' and 'lights stating that of all the marks
that petitioner could possibly think of for his light bulbs, it is odd that the latter chose a mark with the letters 'PHILI,' which are the same
prevalent or dominant five letters found in respondent's trademark 'PHILIPS' for the same products, light bulbs.

ISSUE/S: WoN the mark applied for by petitioner is identical or confusingly similar with that of respondent?

RULING:

AFFIRMATIVE. A trademark is "any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and
used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others." It
is "intellectual property deserving protection by law," and "susceptible to registration if it is crafted fancifully or arbitrarily and is capable
of identifying and distinguishing the goods of one manufacturer or seller from those of another.

In determining similarity and likelihood of confusion, jurisprudence has developed two tests: the dominancy test, and the holistic or totality
test.

On one hand, the dominancy test focuses on "the similarity of the prevalent or dominant features of the competing trademarks that might
cause confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it
required that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual impressions
created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments.
Applying the dominancy test, the Supreme Court upheld the CA in ruling that there is uncanny resemblance or confusing similarity
between the trademarks applied for by respondent with that of petitioner's registered trademark. An examination of the trademarks shows
that their dominant or prevalent feature is the five-letter "PHILI", "PHILIPS" for petitioner, and "PHILITES" for respondent. The marks are
confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks.

On the other hand, the holistic or totality test necessitates a "consideration of the entirety of the marks as applied to the products, including
the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant
words, but also on the other features appearing on both labels so that the observer may draw conclusion on whether one is confusingly
similar to the other." Applying the test in the case, SC agrees with the appellate court that a comparison between petitioner's registered
trademark "PHILIPS'' as used in the wrapper or packaging of its light bulbs and that of respondent's applied for trademark "PHILITES" as
depicted in the container or actual wrapper/packaging of the latter's light bulbs will readily show that there is a strong similitude and
likeness between the two trademarks that will likely cause deception or confusion to the purchasing public. The fact that the parties'
wrapper or packaging reflects negligible differences considering the use of a slightly different font and hue of the yellow is of no moment
because taken in their entirety, respondent's trademark "PHILITES" will likely cause confusion or deception to the ordinary purchaser with
a modicum of intelligence. DENIED.
De La Salle Montesorri v. De la Salle Brothers (waley pa…)

12. GSIS Family Bank - Thrift Bank vs. BPI Family AUTHOR: GOJAR
Bank Notes: [issue as to the corp. names]
G.R. No. 175278, Sept. 23, 2015  BPI Family Bank
TOPIC: Trademark  GSIS Family Bank

CASE LAW/ DOCTRINE: To fall w/n the prohibition of the law on the right to exclusive use of a corporate name,
2 requisites must be proven: [w/c are present in this case]
1. That the complainant corporation acquired a prior right over the use of such corporate name; and
2. The proposed name is either
a. identical; or
b. deceptive or confusingly similar to that of any existing corporation or to any other name already
protected by law; or
c. patently deceptive, confusing or contrary to existing law.
Emergency Recit: Respondent filed a petition to disallow petitioner from using the word “Family Bank” in its
corporate name. SEC ruled in favor of respondent and stated that it had the prior/preferential right to use the name
“Family Bank” in the banking industry. SC affirmed this and cited 2 requisites to be proven to fall w/n the prohibition
of the law on the right to exclusive use of a corporate name [see doctrine]. Applying it in the case (1) Petitioner was
incorporated only 17 yrs after respondent using its name ; (2) The words “Family Bank” are both identical AND
the overriding consideration in determining whether a person, using ordinary care & discrimination might be
misled is the circumstance that both of them are engaged in banking business.
FACTS:
1. Royal Savings Bank encountered liquidity problems so in 1984 it was placed under receivership & was
closed. 2 mos. after it reopened & was renamed Commsavings Bank Inc.
2. 1987- GSIS acquired petitioner, hence, it management & control was transferred to GSIS
3. DTI & BSP - approved the application to change its corporate name now to “GSIS, Family Bank, a Thrift
Bank”.
 So petitioner operated under such business name pursuant to the DTI certificate of registration &
Montary Board Circular approval.
4. Respondent BPI Family Bank now assails this change in petitioner’s corporate name.
 BPI Family Bank was a product of merger b/w Family Bank & Trust Company (FBTC) and the
Bank of the Philippine Islands (BPI).
 1969 - the corporate name “Family First Savings Bank” was registered w/ SEC
 Since its incorporation, it has been commonly known as “Family Bank”.
 1985 - BPI acquired all the rights, properties, interest of Family Bank WHICH INCLUDED the
right to use the names such as “Family First Savings Bank”, “Family Bank” & “Family Bank and
Trust Company”
 Hence, BPI Family Savings Bank was registered w/ SEC as a wholly-owned subsidiary of BPI.
 BPI Family Savings Bank then registered with the Bureau of Domestic Trade the trade or business
name “BPI Family Bank” and acquired a reputation and goodwill under the name.
5. SEC proceedings: [Respondent filed a petitioner w/ SEC Company Registration and Monitoring Department
(SEC CRMD)]
 To disallow or prevent the registration of the name “GSIS Family Bank” or any other corporate
name with the words “Family Bank” in it
 Claimed exclusive ownership to the name “Family Bank” since it acquired the name since its
purchase & merger way back 1985
 Thru the years, it has been known as “BPI Family Bank” or “Family Bank” both locally and
internationally. As such, it has acquired a reputation and goodwill under the name, not only
with clients here and abroad, but also with correspondent and competitor banks, and the
public in general.
6. SEC ruling: BPI Family Bank has a PRIOR/ preferential RIGHT to the use of the name Family Bank in the
banking industry
 arising from its long & extensive nationwide use
 coupled w/ registration w/ the Intellectual Property Office (IPO) of the name “Family Bank"
as its trade name
 applied the rule of “priority in registration” based on the legal maxim first in time, first in right
  there is confusing similarity b/w the corporate names although not identical, are indisputably
similar, as to cause confusion in the public mind, even with the exercise of reasonable care and
observation, especially so since both corporations are engaged in the banking business.
 So it ordered GSIS Family Bank to refrain from using the word “Family” as part of its name & make
goods its commitment to change its name by deleting / dropping the word w/n 30 days from actual
receipt.
7. SEC En Bank affirmed SEC CRMD
8. CA: Affirmed. Further ruled that proof actual confusion need not be shown. It is enough that confusion is
probably or likely to occur.
ISSUES: Should GSIS Family Bank change its corporate name? YES. Sec. 18 of the Corp Code. - No corporate
name may be allowed by the SEC if the proposed name is identical or deceptively or confusingly similar to that
of any existing corporation or to any other name already protected by law or is patently deceptive, confusing
or contrary to existing laws. When a change in the corporate name is approved, the Commission shall issue an
amended certificate of incorporation under the amended name.
RATIO: To fall w/n the prohibition of the law on the right to exclusive use of a corporate name, 2 requisites must be
proven: [w/c are present in this case]
1. That the complainant corporation acquired a prior right over the use of such corporate name; and
2. The proposed name is either
a. identical; or
b. deceptive or confusingly similar to that of any existing corporation or to any other name already
protected by law; or
c. patently deceptive, confusing or contrary to existing law.

1st requisite of a PRIOR RIGHT/Priority of adoption rule.

 Here, respondent was incorporated in 1969 as Family Savings Bank then in 1985 as BPI Family Bank.
 While petitioner was incorporated as GSIS Family-Thrift Bank only in 2002 / 17 yrs after respondent
started using its name.

2nd requisite, the proposed name is

(a) identical; or
(b) deceptive or confusingly similar to that of any existing corporation or to any other name already protected
by law.

As to letter (a): The words “Family Bank” are both in their corporate names, hence, identical.
 Respondent can’t claim under Sec. 3 of the Revised Guidelines in the Approval of Corporate and
Partnership Names wherein it states that if there be identical, misleading or confusingly similar name
to one already registered by another corporation or partnership with the SEC, the proposed name must
contain at least one distinctive word different from the name of the company already registered.
o To show contrast w/ respondent’s corporate name, petitioner used the words GSIS & thrift. BUT
these are not sufficiently distinct from that of respondent’s corporate name
o GSIS = is merely an acronym of the proper name by which petitioner is identified
o Thrift = classification of the type of bank that petitioner is AND still not distinct since both of them
are engaged in the banking business.

As to letter (b): There is deceptive & confusing similarity b/w the 2 as found by SEC.
 Test is whether the similarity is such as to mislead a person using ordinary care and discrimination.
And even without such proof of actual confusion between the two corporate names, it suffices that
confusion is probable or likely to occur.
 HERE, the only words that distinguish the 2 are the “BPI” “GSIS” & “Thrift”.
o The first 2 are merely acronyms of the proper names by w/c the two corp identify themselves
o While thrift only describes the classification of the bank.
 The overriding consideration in determining whether a person, using ordinary care & discrimination might
be misled is the circumstance that both of them are engaged in banking business.
 Respondent even alleged that when its clients saw the signage of petitioner “GSIS Family Bank”, their
clients began asking questions such as whether GSIS acquired Family Bank, whether there is a joint
agreement b/w GSIS & Family Bank. Hence, it is not a remote possibility that the public may entertain the
idea that a relationship or arrangement indeed exists between BPI and GSIS due to the use of the term
“Family Bank” in their corporate names.

Petitioner can’t argue that the word “family” is a generic/descriptive name w/c can’t be appropriated by respondent
but SC disagreed. Family as used in respondent’s corporate name is NOT generic.
  Generic marks - commonly used as the name or description of a kind of goods, such as “Lite” for beer or
“Chocolate Fudge” for chocolate soda drink.
 Descriptive marks - convey the characteristics, function, qualities or ingredients of a product to one who
has never seen it or does not know it exists, such as “Arthriticare” for arthritis medication.
 Here, the word family can’t be separated from the word bank. Both parties refer to the phrase “Family
Bank”. This phrase is neither generic nor descriptive” but is merely suggestive & may properly
regarded as arbitrary.
 Arbitrary marks - words or phrases used as a mark that appear to be random in the context of its use.
Easy to remember due to their arbitrariness. They are original & unexpected in relation to the products they
endorse, thus, becoming themselves distinctive.
 Suggestive marks - are marks, which merely suggest some quality or ingredient of goods. The strength
of this lies on how the public perceives the word in relation to the product or service.
 Family - a group consisting of parents and children living together in a household / group of people related
to one another by blood or marriage
 Bank - a financial establishment that invests money deposited by customers, pays it out when requested,
makes loans at interest, and exchanges currency
o Hence, by definition, there can be no expected relation between the word “family” and the
banking business of respondent. Rather, the words suggest that respondent bank is where
family savings should be deposited. And “family bank” can’t be used to define an object.

As to petitioner’s argument that the opinion of BSP + DTI certificate of registration constitute authority for it to use
“GSIS Family Bank” as corporate name = untenable ; it is lodged w/ the SEC.
 The enforcement of the protection accorded by Section 18 of the Corporation Code to corporate names is
lodged exclusively in the SEC. SEC has absolute jurisdiction, supervision and control over all corporations
 SEC has the duty to prevent confusion in the use of corporate names not only for the protection of the
corporations involved, but also of the public.
 It has authority to de-register at all time corporate names which are likely to generate confusion
 In implementing Sec. 18 of Corp. Code, the guideline was issued wherein registrant coloration must submit
a letter undertaking to change its corporate name in the event that another person, firm or entity has
acquired a prior right to use of said name or one similar to it
SC also ruled that: Judicial notice may also be taken of the action of the IP in approving respondent’s registration of
the trademark “BPI Family Bank” & its logo on 2008. Because the certificate of registration of a mark shall be
prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the same in connection with the goods or services and those that are
related thereto specified in the certificate
Lyceum of the Philippines v. CA (G.R. No. 101897)Date: June 9, 2016Author: jaicdn0 Comments

Facts:Petitioner Lyceum of the Philippines had commenced before the SEC a proceeding against the Lyceum of Baguio
to change its corporate name alleging that the 2 names are substantially identical because of the word ‘Lyceum’. SEC
found for petitioner and the SC denied the consequent appeal of Lyceum of Baguio in a resolution. Petitioner then
basing its ground on the resolution, wrote to all educational institutions which made use of the word ‘Lyceum’ as part
of their corporate name to discontinue their use. When this recourse failed, petitioner moved before the SEC to enforce
its exclusive use of the word ‘Lyceum.’ Petitioner further claimed that the word ‘Lyceum’ has acquired a secondary
meaning in its favor. The SEC Hearing Officer found for petitioner. Both SEC En Banc and CA ruled otherwise.
Issues:
(1) Whether or not ‘Lyceum’ is a generic word which cannot be appropriated by petitioner to the exclusion of others.
(2) Whether or not the word ‘Lyceum’ has acquired a secondary meaning in favor of petitioner.
(3) Whether or not petitioner is infringed by respondent institutions’ corporate names.
Ruling:

(1) YES. “Lyceum” is in fact as generic in character as the word “university.” In the name of the petitioner, “Lyceum”
appears to be a substitute for “university;” in other places, however, “Lyceum,” or “Liceo” or “Lycee” frequently denotes
a secondary school or a college. It may be that the use of the word “Lyceum” may not yet be as widespread as the use
of “university,” but it is clear that a not inconsiderable number of educational institutions have adopted “Lyceum” or
“Liceo” as part of their corporate names. Since “Lyceum” or “Liceo” denotes a school or institution of learning, it is not
unnatural to use this word to designate an entity which is organized and operating as an educational institution.

(2) NO. Under the doctrine of secondary meaning, a word or phrase originally incapable of exclusive appropriation with
reference to an article in the market, because geographical or otherwise descriptive might nevertheless have been
used so long and so exclusively by one producer with reference to this article that, in that trade and to that group of the
purchasing public, the word or phrase has come to mean that the article was his produce. With the foregoing as a
yardstick, [we] believe the appellant failed to satisfy the aforementioned requisites. While the appellant may have
proved that it had been using the word ‘Lyceum’ for a long period of time, this fact alone did not amount to mean that
the said word had acquired secondary meaning in its favor because the appellant failed to prove that it had been using
the same word all by itself to the exclusion of others. More so, there was no evidence presented to prove that confusion
will surely arise if the same word were to be used by other educational institutions.
(3) NO. We do not consider that the corporate names of private respondent institutions are “identical with, or deceptively
or confusingly similar” to that of the petitioner institution. True enough, the corporate names of private respondent
entities all carry the word “Lyceum” but confusion and deception are effectively precluded by the appending of
geographic names to the word “Lyceum.” Thus, we do not believe that the “Lyceum of Aparri” can be mistaken by the
general public for the Lyceum of the Philippines, or that the “Lyceum of Camalaniugan” would be confused with the
Lyceum of the Philippines. We conclude and so hold that petitioner institution is not entitled to a legally enforceable
exclusive right to use the word “Lyceum” in its corporate name and that other institutions may use “Lyceum” as part of
their corporate names.