CASE DIGESTS – COPYRIGHT
 Dismissed the petition due to failure to file on time
01 ABS-CBN PUBLISHING, INC., v. DIRECTOR OF THE BUREAU OF
TRADEMARKS, (G.R. No. 217916, June 20, 2018 )
FACTS:
 In 2004,3 the petitioner filed with the Intellectual Property Office of the
Philippines (IPO) its application for the registration of its trademark
"METRO" (applicant mark) under class 16 of the Nice classification, with
specific reference to "magazines."4 The case was assigned to Examiner
Arlene M. Icban (Examiner Icban), who, after a judicious examination of
the application, refused the applicant mark's registration.
 According to Examiner Icban, the applicant mark is identical with three
other cited marks, and is therefore unregistrable according to Section
123.1(d) of the Intellectual Property Code of the Philippines (IPC).
 The cited marks were identified as (1) "Metro" (word) by applicant Metro
International S.A. (2) "Metro" (logo) also by applicant Metro International
S.A. and (3) "Inquirer Metro" by applicant Philippine Daily Inquirer, Inc.
BUREAU OF TRADEMARKS RULING:
 The petitioner appealed the assessment of Examiner Icban before the
Director of the Bureau of Trademarks of the IPO, who eventually affirmed
Examiner Icban's findings. The decision averred that the applicant and
cited marks were indeed confusingly similar, so much so that there may
not only be a confusion as to the goods but also a confusion as to the
source or origin of the goods.
OFFICE OF THE DIRECTOR GENERAL (ODG) OF THE IPO RULING:
 Rendered a Decision which upheld Examiner Icban's assessment and the
Bureau Director's decision
 According to the ODG; there is no merit in the petitioner's appeal
because:
(1) the applicant and cited marks are identical and
confusingly similar;
(2) the petitioner's mark was deemed abandoned under the
old Trademark Law, and thus, petitioner's prior use of the
same did not create a vested right14 under the IPC, and;
(3) the applicant mark has not acquired secondary meaning.
CA RULING:
 On the basis of the foregoing, and the prevailing jurisprudence, the Court
of Appeals consequently denied the petitioner's second motion for
extension of time, and dismissed the petition for the petitioner's failure
to file its petition for review within the deadline.
ISSUES: WON the ODG was correct in refusing to register the applicant mark
for being identical and confusingly similar with the cited marks already
registered with the IPO
SC RULING:
 Court finds no merit in the petition.
 According to Section 123.1(d) of the Intellectual Property Code of the
Philippines (IPC), 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," in respect of the following: (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.
 To determine whether a mark is to be considered as "identical" or that
which is confusingly similar with that of another, the Court has developed
two (2) tests: the dominancy and holistic tests.
 DOMINANCY TEST:
 In using this test, focus is to be given to the dominant features of
the marks in question.
 If the competing trademark contains the main or essential or
dominant features of another, and confusion and deception is
likely to result, infringement takes place.
 In committing the infringing act, the infringer merely introduces
negligible changes in an already registered mark, and then banks
on these slight differences to state that there was no identity or
confusing similarity, which would result in no infringement. This
kind of act, which leads to confusion in the eyes of the public, is
exactly the evil that the dominancy test refuses to accept.
 In the present case, the dominant feature of the applicant mark is the
word "METRO" which is identical, both visually and aurally, to the cited
marks already registered with the IPO.
 The dominant feature of the subject and cited marks is still clearly the
word "Metro", (sic) spelled and pronounced in exactly the same way. The
 identity between the marks would indubitably result in confusion of
origin as well as goods;
 The concurrent use by the parties of the word METRO is likely to cause
confusion among purchasers as well as confusion of business or origin
hence, registration of this subject application is proscribed under R.A.
8293, Sec. 123.1(d);
 The applicant mark, "METRO," is identical to and confusingly similar with
the other cited marks already registered, hence by authority of the Sec.
123.l(d) of the IPC, the applicant mark cannot be registered.
ABANDONMENT OF APPLICATION:
 The petitioner itself admitted in its petition that its
application/registration with the IPO was already "deemed abandoned.
 It remains a fact that once a trademark is considered abandoned, the
protection accorded by the IPC, or in this case the old Trademark Law, is
also withdrawn.
 This abandonment is the very reason why the petitioner lost its rights
over its trademark, and that it is also the reason why, after twenty years
(20) from the initial application and after actual use of the applicant mark,
the petitioner once again came before the IPO to apply for registration;
It must be emphasized that absolute certainty of confusion or even actual
confusion is not required to refuse registration. Indeed, it is the mere
likelihood of confusion that provides the impetus to accord protection to
trademarks already registered with the IPO.
02 FOODSPHERE vs SAN MIGUEL PUREFOODS COMPANY, INC. (2018)
FACTS:
 The parties herein are both engaged in the business of the manufacture,
sale, and distribution of food products, with SMPFCI owning the
trademark "PUREFOODS FIESTA HAM" while Foodsphere, Inc. products
(Foodsphere) bear the "CDO" brand.
 SMPFCI filed a Complaint3 for trademark infringement and unfair
competition with prayer for preliminary injunction and temporary
restraining order against Foodsphere before the Bureau of Legal Affairs
(BLA) of the Intellectual Property Office (IPO) pursuant to Sections 155
and 168 of Republic Act (R.A.) No. 8293, for using, in commerce, a
colorable imitation of its registered trademark in connection with the
sale, offering for sale, and advertising of goods that are confusingly
similar to that of its registered trademark;
 SMPFCI alleged that its "FIESTA" ham, first introduced in 1980, has been
sold in countless supermarkets in the country, and is, therefore, a popular
fixture in dining tables during the Christmas season. Its registered
"FIESTA" mark has acquired goodwill to mean sumptuous ham of great
taste, superior quality, and food safety, and its trade dress "FIESTA",
combined with a figure of a partly sliced ham served on a plate with fruits
on the side had likewise earned goodwill.
 Sometime in 2006, however, Foodsphere introduced its "PISTA" ham and
aggressively promoted it in 2007, claiming the same to be the real
premium ham.
 SMPFCI launched its "Dapat ganito ka-espesyal" campaign, meanwhile
Foodsphere launched its "Make Christmas even more special" campaign,
directly copying SMPFCI's "Dapat ganito ka-espesyal" campaign.
 Thus, according to SMPFCI, the striking similarities between the marks
and products of Foodsphere with those of SMPFCI warrant its claim of
trademark infringement on the ground of likelihood of confusion as to
origin, and being the owner of "FIESTA," it has the right to prevent
Foodsphere from the unauthorized use of a deceptively similar mark.
 Moreover, "FIESTA" and "PISTA" are similarly pronounced, have the same
number of syllables, share common consonants and vowels, and have the
same general appearance in their respective product packages.
 Further, SMPFCI contends that Foodsphere's use, therefore, of the
"PISTA" mark will mislead the public into believing that its goods
originated from, or are licensed or sponsored by SMPFCI, or that
Foodsphere is associated with SMPFCI, or its affiliate. The use of the
"PISTA" trademark would not only result in likelihood of confusion, but in
actual confusion.
 Apart from trademark infringement, SMPFCI further alleged that
Foodsphere is likewise guilty of unfair competition, because there is
confusing similarity in the general appearance of the goods of the parties
and intent on the part of Foodsphere, to deceive the public and defraud
SMPFCI;
FOODSPHERE’s CONTENTION:
 Foodsphere denied the charges of trademark infringement and
countered that the marks "PISTA" and "PUREFOODS FIESTA HAM" are not
 confusingly similar and are, in fact, visually and aurally distinct from each
other. This is because PISTA is always used in conjunction with its house
mark "CDO" and that "PUREFOODS FIESTA HAM" bears the housemark
"PUREFOODS," rendering confusion impossible.
 Also, there are other products in supermarkets that bear the mark
"FIESTA" such as "ARO FIESTA HAM," "ROYAL FIESTA," and "PUREGOLD
FIESTA HAM," but SMPFCI has done nothing against those manufacturers,
making it guilty of estoppel in pais, and is, therefore, estopped from
claiming that the use of other manufacturers of the mark "FIESTA" will
result in confusion and/or damage to itself.
 Foodsphere noted that it has been using "PISTA" since 2006 which is
earlier than SMPFCI's filing for registration of "FIESTA" in 2007; Confusion
between the marks, moreover, is rendered impossible because the
products are sold in booths manned by different "promodisers." Also,
hams are expensive products and their purchasers are well-informed not
only as to their features but also as to the manufacturers thereof.
BUREAU OF LEGAL AFFIARS:
 NO INFRINGEMENT. NO UNFAIR COMPETITION.
 Rendered its Decision dismissing SMPFCI's complaint for lack of merit.
 BLA held that there could be no trademark infringement because
Foodsphere began using the "PISTA" mark in 2006 and even filed a
trademark application therefor in the same year, while SMPFCI's
application for trademark registration for "FIESTA" was filed and
approved only in 2007. SMPFCI, thus, had no cause of action.
 SMPFCI's complaint was filed beyond the four (4)-year prescriptive period
prescribed under the Rules and Regulation on Administrative Complaints
for Violation of Law Involving Intellectual Property Rights.
 Comparing the competing marks would not lead to confusion, much less
deception of the public.
 That SMPFCI failed to convincingly prove the presence of the elements of
unfair competition
OFFICE OF THE DIRECTOR GENERAL:
 NO INFRINGEMENT. BUT LIABLE FOR UNFAIR COMPETITION.
 Partially granted SMPFCI's appeal, affirming the BLA's ruling on the
absence of trademark infringement but finding Foodsphere liable for
unfair competition.
 Applying the 'Dominancy Test' and the 'Holistic Test' show that
Foodsphere cannot be held liable for trademark infringement due to the
fact that the marks are not visually or aurally similar and that the glaring
differences in the presentation of these marks will prevent any likely
confusion, mistake, or deception to the purchasing public.
 On the other hand, the Director General found Foodsphere to be guilty
of unfair competition for it gave its "PISTA" ham the general appearance
that would likely influence purchasers to believe that it is similar with
SMPFCI's "FIESTA" ham. Moreover, its intention to deceive is inferred
from the similarity of the goods as packed and offered for sale.
CA RULING:
 CA denied SMPFCI's petition and affirmed the ruling of the Director
General on the absence of trademark infringement.
 CA likewise denied Foodsphere's petition, affirming the Director
General's finding that Foodsphere was guilty of unfair competition. The
CA held that the elements thereof are present herein.
ISSUE/S: WON Foodsphere is liable for unfair competition
SC RULING:
 YES. FOODSPHERE IS LIABLE FOR UNFAIR COMPETITION.
 This Court has held that unfair competition consists of the passing off (or
palming off) or attempting to pass off upon the public of the goods or
business of one person as the goods or business of another with the end
and probable effect of deceiving the public.
 The "true test," therefore, of unfair competition has thus been "whether
the acts of the defendant have the intent of deceiving or are calculated
to deceive the ordinary buyer making his purchases under the ordinary
conditions of the particular trade to which the controversy relates.”
 Essential elements of an action for unfair competition are:
(1) confusing similarity in the general appearance of the goods; and
(2) intent to deceive the public and defraud a competitor.
 The confusing similarity may or may not result from similarity in the
marks, but may result from other external factors in the packaging or
presentation of the goods. The intent to deceive and defraud may be
inferred from the similarity of the appearance of the goods as offered for
sale to the public.
 First of all, there exists a substantial and confusing similarity in the
packaging of Foodsphere's product with that of SMPFCI, which, as the
 records reveal, was changed by Foodsphere from a paper box to a paper
ham bag that is significantly similar to SMPFCI's paper ham bag.
 Both packages use paper ham bags as the container for the hams, both
paper ham bags use the red color as the main colors, and both have the
layout design appearing on the bags consisting of a partly sliced ham and
fruits on the front and other ham varieties offered at the back. Thus,
Foodsphere's packaging in its entirety, and not merely its "PISTA" mark
thereon, renders the general appearance thereof confusingly similar
with the packaging of SMPFCI's ham;
 Foodsphere's intent to deceive the public, to defraud its competitor, and
to ride on the goodwill of SMPFCI's products is evidenced by the fact that
not only did Foodsphere switch from its old box packaging to the same
paper ham bag packaging as that used by SMPFCI, it also used the same
layout design printed on the same.
03 ASIA PACIFIC RESOURCES INTERNATIONAL HOLDINGS, LTD. VS.
PAPERONE, INC.,
FACTS:
PETITIONER’S CONTENTION:
 Petitioner is engaged in the production, marketing, and sale of pulp and
premium wood free paper.[5] It alleged that it is the owner of a well-
known trademark, PAPER ONE, with Certificate of Registration No. 4-
1999-01957 issued on September 5, 2003. The said trademark enjoyed
legal protection in different countries worldwide and enjoyed goodwill
and high reputation because of aggressive marketing and promotion.
 Petitioner claimed that the use of PAPERONE in respondent's corporate
name without its prior consent and authority was done in bad faith and
designed to unfairly ride on its good name and to take advantage of its
goodwill. It was calculated to mislead the public into believing that
respondent's business and/or products were manufactured, licensed or
sponsored by petitioner.
RESPONDENT’S CONTENTION:
 Respondent, on its part, averred that it had no obligation to secure prior
consent or authority from petitioner to adopt and use its corporate
name. The Department of Trade and Industry (DTI) and the SEC had
allowed it to use Paperone, Inc., thereby negating any violation on
petitioner's alleged prior rights.
 Respondent also denied any awareness of the existence of petitioner
and/or the registration of PAPER ONE, as the latter is a foreign
corporation not doing business in the Philippines.
 While the business of respondent dealt with paper conversion such as
manufacture of table napkins, notebooks and intermediate/collegiate
writing pads, it did not use its corporate name PAPERONE on any of its
products.
BUREAU OF LEGAL AFFAIRS:
 found respondent liable for unfair competition;
 ordered respondent to cease and desist from using PAPERONE in its
corporate name, and to pay petitioner;
 It ruled that petitioner was the first to use PAPER ONE in 1999 which had
become a symbol of goodwill of its paper business. Respondent's use of
PAPERONE in its corporate name was to benefit from the established
goodwill of petitioner.
 There was, however, no trademark infringement since PAPERONE was
registered in the Philippines only in 2003
IPO DIRECTOR GENERAL: BLA decision was affirmed with modification insofar
as the increase in the award of attorney's fees to P300,000.00.
CA RULING:
 CA reversed and set aside the IPO Director General's decision.
 It held that there was no confusing similarity in the general appearance
of the goods of both parties. Petitioner failed to establish through
substantial evidence that respondent intended to deceive the public or
to defraud petitioner.
 Thus, the essential elements of unfair competition were not present.
ISSUES: WON RESPONDENT IS LIABLE FOR UNFAIR COMPETITION
SC RULING:
 YES. THERE IS UNFAIR COMPETITION.
 A careful scrutiny of the mark shows that the use of PAPERONE by
respondent would likely cause confusion or deceive the ordinary
purchaser, exercising ordinary care, into believing that the goods bearing
the mark are products of one and the same enterprise.
 This case falls under the second type of confusion: CONFUSION OF
BUSINESS
 Although we see a noticeable difference on how the trade name of
respondent is being used in its products as compared to the trademark
 of petitioner, there could likely be confusion as to the origin of the
products. Thus, a consumer might conclude that PAPER ONE products are
manufactured by or are products of Paperone, Inc.
 Although respondent claims that its products are not the same as
petitioner's, the goods of the parties are obviously related as they are
both kinds of paper products.
 Records will show that there was prior use and adoption by Complainant
of the word "PaperOne." PaperOne was filed for trademark registration
on 22 March 1999 in the name of Complainant Asia Pacific Resources
International Holdings, Ltd. and matured into registration on 10 February
2003.
 Factual circumstances were established showing that respondent
adopted PAPERONE in its trade name even with the prior knowledge of
the existence of PAPER ONE as a trademark of petitioner.
04 CITIGROUP, INC., v. CITYSTATE SAVINGS BANK, INC.
FACTS:
 In the late 1970s, Citibank N.A., a wholly-owned subsidiary of petitioner
Citigroup, Inc., installed its first automated teller machines in over a
hundred New York City branches.
 In 1984, Citibank N.A., Philippine Branch, began the development of its
domestic Automated Teller Machine (ATM) network, and started
operating ATMs and issuing ATM cards in the Philippines. Citibank N.A.,
Philippine Branch then joined Bancnet Inc. ("Bancnet") in 1990, the first
year Bancnet commenced operations.
 In 2005, Citibank Savings, Inc. became an indirect wholly-owned
subsidiary of Citibank, N.A. As a pre-existing thrift bank, it offered ATM
services in the Philippines in 1995 and joined Bancnet in 2005.
 The ATM cards issued by Citibank N.A., Philippine Branch and Citibank
Savings, Inc. are labelled "CITICARD". The trademark CITICARD is owned
by Citibank N.A. and is registered in the [Intellectual Property Office] of
the Philippines;
 In addition, petitioner or Citibank N.A., a wholly-owned subsidiary of
petitioner, owns the following other trademarks currently registered
with the Philippine [Intellectual Property Office], to wit: "CITI and arc
design", "CITIBANK", "CITIBANK PAYLINK", "CITIBANK SPEEDCOLLECT",
"CITIBANKING", "CITICARD", "CITICORP", "CITIFINANCIAL", "CITIGOLD",
"CITIGROUP", "CITIPHONE BANKING'', and "CITISERVICE".
 On the other hand, sometime in the mid-nineties, a group of Filipinos and
Singaporean companies formed a consortium to establish respondent
Citystate Savings Bank, Inc. The consortium included established
Singaporean companies, specifically Citystate Insurance Group and
Citystate Management Group Holdings Pte, Ltd.
 In line with this, respondent filed an application for registration with the
[Intellectual Property Office] on 21 June 2005 of the trademark "CITY
CASH WITH GOLDEN LION'S HEAD" for its ATM service;
 Citigroup, Inc. (Citigroup) filed an opposition to Citystate's application.
Citigroup claimed that the "CITY CASH WITH GOLDEN LION'S HEAD" mark
is confusingly similar to its own "CITI" marks.
BUREAU OF LEGAL AFFAIRS:
 Concluded that the dominant features of the marks were the words "CITI"
and "CITY," which were almost the same in all aspects.
 It further ratiocinated that Citigroup had the better right over the mark,
considering that 'its "CITI" and "CITI"-related marks have been registered
with the Intellectual Property Office, as well as with the United States
Patent and Trademark Office, covering "financial services" under Class 36
of the International Classification of Goods;
 Application was denied.
OFFICE OF DIRECTOR GENERAL OF IPO:
 Reversed the Decision of the Director of the Bureau of Legal Affairs and
gave due course to Citystate's trademark application.
 He made a visual comparison of the parties' respective marks and
considered the golden lion head device to be the prominent or dominant
feature of Citystate's mark, and not the word "CITY." Thus, Citystate's
mark did not resemble Citigroup's mark such that deception or confusion
was likely.
CA RULING:
 Dismissed the appeal.
 It found that Citystate's mark was not confusingly or deceptively similar
to Citigroup's marks;
 Appellate court held that:
 [Citystate's] trademark is the entire "CITY CASH WITH GOLDEN
LION'S HEAD". Although the words "CITY CASH" are prominent,
 the entirety of the trademark must be considered, and focus  Application of registration of trademark by Respondent Citystate should
should not be made solely on the phonetic similarity of the words be allowed.
"CITY" and "CITI".
 The products or services involved are not the ordinary everyday
products that one can just pick up in a supermarket or grocery
stores (sic). These products generally require sales
representatives explaining to their prospective customers the
features of and entitlements thereto.
 Which means that the person is wel[l]informed and thus, cannot
be misled into believing that the product or service is that of
[Citystate] when in fact it is different from [Citigroup's].
ISSUES: WON Citystate is liable for trademark infringement
SC RULING:
 NO TRADEMARK INFRINGEMENT.
 This Court denies the Petition.
 This Court finds that the use of the "CITY CASH WITH GOLDEN LION'S
HEAD" mark will not result in the likelihood of confusion in the minds of
customers.
 Court agrees with the observation of Director General Cristobal that the
most noticeable part of this mark is the golden lion's head device, and
finds that after noticing the image of the lion's head, the words "CITY"
and "CASH" are equally prominent.
 The only similar feature between respondent's mark and petitioner's
collection of marks is the word "CITY" in the former, and the "CITI" prefix
found in the latter. This Court agrees with the findings of the Court of
Appeals that this similarity alone is not enough to create a likelihood of
confusion. The dis[s]imilarities between the two marks are noticeable
and substantial.
 Verily, the variations in the appearance of the "CITI" marks by petitioner,
when conjoined with other words, would dissolve the alleged similarity
between them and the trademark of respondent.
 This Court also agrees with the Court of Appeals that the context where
respondent's mark is to be used, namely, for its ATM services, which
could only be secured at respondent's premises and not in an open
market of ATM services, further diminishes the possibility of confusion
on the part of prospective customers.