1. Del Monte Corp vs. CA 13887 dated May 9, 1968; and LINENIZED, under Certificate of Registration No.
15440
Facts: Petitioner Del Monte, an American corporation, granted Philpack the right to
manufacture, distribute and sell in the Philippines its Del Monte catsup. Petitioner’s
trademark and logo ‘Del Monte’ and its catsup bottle were subsequently registered in the
Philippines. Meanwhile respondent Sunsaahine Sauce, a company also engaged in the
manufacturing and sale of various kinds of sauces, registered its logo ‘Sunshine Fruit
Catsup.’ Philpack received reports that respondent was buying and recycling used Del
Monte’s bottle in junk shops to serve as container for its own catsup. Thus, petitioner and
Philpack filed a complaint for trademark infringement and unfair competition which the
trial court dismissed. CA affirmed holding there were substantial differences between the
2 marks.
Issue:Whether or not there is confusing similarity between the two trademarks.
Ruling: YES.At that, even if the labels were analyzed together it is not difficult to see that
the Sunshine label is a colorable imitation of the Del Monte trademark. The predominant
colors used in the Del Monte label are green and red-orange, the same with Sunshine. The
word “catsup” in both bottles is printed in white and the style of the print/letter is the
same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates
that of a tomato.
As previously stated, the person who infringes a trade mark does not normally copy out
but only makes colorable changes, employing enough points of similarity to confuse the
public with enough points of differences to confuse the courts. What is undeniable is the
fact that when a manufacturer prepares to package his product, he has before him a
boundless choice of words, phrases, colors and symbols sufficient to distinguish his
product from the others. When as in this case, Sunshine chose, without a reasonable
explanation, to use the same colors and letters as those used by Del Monte though the field
of its selection was so broad, the inevitable conclusion is that it was done deliberately to
deceive.
2. Amigo Manufacturing, INC. v Cluett Peabody Co., INC. G.R. No. 139300, March 14, 2001
Facts: Petitioner Amigo Manufacturing Inc. challenges, under Rule 45 of the Rules of Court,
the Resolution of the Court of Appeals, and sought for the cancellation of the trademark
and devices that Cluett was using on men’s socks and claimed exclusive ownership over
it. Petitioner: AMIGO Respondent: CLUETT Brand: Gold Top Brand: Gold Toe Claims that
it started the actual use of the trademark Gold Top and Device in September 1956; DEVICE
has dominant color white at the center and a blackish brown background with a magnified
design of the socks garter, and is labeled ‘ Amigo Manufacturing Inc., Mandaluyong, Metro
Manila, Made in the Philippines; LINENIZED GOLD TOE, under Certificate of Registration
No. 6797 dated September 22, 1958; DEVICE, representation of a sock and magnifying
glass on the toe of a sock, under Certificate of Registration No. 13465 dated January 25,
1968; DEVICE, consisting of a plurality of gold colored lines arranged in parallel relation
within a triangular area of toe of the stocking and spread from each other by lines of
contrasting color of the major part of the stocking under Certificate of Registration No.
dated April 13, 1970. The trial court rendered decision in favor of Cluett Peabody Co., Inc,
The Court of Appeals affirmed the decision of the trial court on the basis: A) There is hardly
any variance in the appearance of the marks GOLD TOP and GOLD TOE since both show a
representation of a man’s foot wearing a sock, and the marks are printed in identical
lettering. B) The finding of the Bureau of Patents that the two trademarks are confusingly
and deceptively similar to each other are binding upon the courts, absent any sufficient
evidence to the contrary. C) Amigo’s version is only registered with the Supplemental
Registry which gives no right of exclusivity to the owner and cannot overturn the
presumption of validity and exclusivity given to the registered mark, whereas, Cluett was
able to present Certificates of Registration. D) The Philippines and the United States are
parties to the Paris Convention and by Philipp ines’ membership, trademark rights in favor
of the respondent were created.
Issues: (1) Whether the CA overlooked the date of actual use of the two trademarks;
(2) Whether the CA erred in affirming the findings of the Director of Patents that there is
a confusing similarity of trademarks, and (3) The applicability of the Paris Convention.
Held: 1. No. The respondent were able to present with the Bureau registrations indicating
the dates of first use in the Philippines of the trademark and the devices as follows: a)
March 16, 1954, Gold Toe; b) February 1, 1952,the Representation of a Sock and a
Magnifying Glass; c)January 30, 1932, the Gold Toe Representation; and d)February 28,
1952, “ Linenized ” The registration of these marks in favor of respondent constitutes
prima facie evidence, which petitioner failed to overturn satisfactorily, of respondent’s
ownership of those marks, the dates of appropriation and the validity of other pertinent
facts stated there in which is specifically mandated by Section 20 of Republic Act 166.
Furthermore, petitioner registered its trademark only with the supplemental register. It is
already settled that registration with the supplemental register gives no presumption of
ownership of the trademark. 2. No. The Bureau of Patents considered the drawings and
the labels, the appearance of the labels, the lettering, and their presentation of a m an’s foot
wearing a sock based on the totality of the similarities between the party’s trademark
and not their sounds alone. The test of dominancy focuses on the similarity of the
prevalent features of the competing trademarks which might cause confusion or deception
and thus constitutes infringement. The holistic test mandates that the entirety of the
marks in question must be considered in determining confusing similarity. In the present
case, a resort to either the Dominancy Test orthe Holistic Test shows that colorable
imitation exists between respondent’s “ Gold Toe ” and petitioner’s “Gold Top.” Both tests
apply. An examination of the products would show the following similarities: Dominant
features are gold checkered lines against a predominantly black back ground. Both has a
representation of a sock with a magnifying glass. Both products use the same type of
lettering. Both also include a representation of a man’s foot wearing a sock and the word
“linenized” with arrows printed on the label. The names of the brands are similar “Gold
Top” and “Gold Toe.” that petitioner and respondent are engaged in the same line of
business. 3. The Philippines and the United States are members of the Paris Convention,
thus entitling them to the international protection provided therein relating to protection
of trademarks.
2. BIRKENSTOCK ORTHOPAEDIE GMBH v. PHILIPPINE SHOE EXPO
MARKETING CORPORATION, GR No. 194307, 2013-11-20
Facts:
Petitioner, a corporation duly organized and existing under the laws of Germany, applied
for various trademark registrations before the IPO, namely: (a) "BIRKENSTOCK" under
Trademark Application Serial No. (TASN) 4-1994-091508 for goods falling under Class 25
of the
International Classification of Goods and Services (Nice Classification) with filing date of
March 11, 1994; (b) "BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE COMPRISING OF
ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT, CROSS AND SUNBEAM"
under TASN 4-1994-091509 for goods... falling under Class 25 of the Nice Classification
with filing date of March 11, 1994; and (c) "BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE
COMPRISING OF ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT, CROSS AND
SUNBEAM" under TASN 4-1994-095043 for goods falling under
However, registration proceedings of the subject applications were suspended in view of
an existing registration of the mark "BIRKENSTOCK AND DEVICE" under Registration No.
56334 dated October 21, 1993 (Registration No. 56334) in the name of Shoe Town
International and
Industrial Corporation, the predecessor-in-interest of respondent Philippine Shoe Expo
Marketing Corporation.[6] In this regard, on May 27, 1997 petitioner filed a petition for
cancellation of Registration No. 56334 on the ground that it is the lawful and... rightful
owner of the Birkenstock marks (Cancellation Case).[7] During its pendency, however,
respondent and/or its predecessor-in-interest failed to file the required 10th Year
Declaration of Actual Use (10th
Year DAU) for Registration No. 56334 on or before October 21, 2004,[8] thereby resulting
in the cancellation of such mark.[9] Accordingly, the cancellation case was dismissed for
being moot and academic.[10]
The aforesaid cancellation of Registration No. 56334 paved the way for the publication of
the subject applications in the IPO e-Gazette on February 2, 2007.[11] In response,
respondent filed three (3) separate verified notices of oppositions to the subject...
applications docketed as Inter Partes Case Nos. 14-2007-00108, 14-2007-00115, and 14-
2007-00116,[12] claiming, inter alia, that: (a) it, together with its predecessor-in-interest,
has been using Birkenstock marks in the Philippines for... more than 16 years through the
mark "BIRKENSTOCK AND DEVICE"; (b) the marks covered by the subject applications are
identical to the one covered by Registration No. 56334 and thus, petitioner has no right to
the registration of such marks; (c) on November 15, 1991,... respondent's predecessor-in-
interest likewise obtained a Certificate of Copyright Registration No. 0-11193 for the word
"BIRKENSTOCK"; (d) while respondent and its predecessor-in-interest failed to file the
10th Year DAU, it continued the use of
"BIRKENSTOCK AND DEVICE" in lawful commerce; and (e) to record its continued
ownership and exclusive right to use the "BIRKENSTOCK" marks, it has filed TASN 4-2006-
010273 as a "re-application" of its old registration, Registration No. 56334.[13] On
November
13, 2007, the Bureau of Legal Affairs (BLA) of the IPO issued Order No. 2007-2051
consolidating the aforesaid inter partes cases (Consolidated Opposition Cases).
In its Decision15 dated May 28, 2008, the BLA of the IPO sustained respondent's
opposition, thus, ordering the rejection of the subject applications. It ruled that the
competing marks of the parties are confusingly similar since they contained the word
"BIRKENSTOCK" and are used... on the same and related goods. It found respondent and its
predecessor-in- interest as the prior user and adopter of "BIRKENSTOCK" in the
Philippines, while on the other hand, petitioner failed to present evidence of actual use in
the trade and business in this country.
the IPO Director General reversed and set aside the ruling of the BLA, thus allowing the
registration of the subject applications. He held that with the cancellation of Registration
No. 56334 for respondent's... failure to file the 10th Year DAU, there is no more reason to
reject the subject applications on the ground of prior registration by another proprietor.
In its Decision[21] dated June 25, 2010, the CA reversed and set aside the ruling of the IPO
Director General and reinstated that of the BLA. It disallowed the registration of the subject
applications on the ground that the marks covered by such... applications "are confusingly
similar, if not outright identical" with respondent's mark.[22] It equally held that
respondent's failure to file the 10th Year DAU for Registration No. 56334 "did not deprive
petitioner of its ownership... of the 'BIRKENSTOCK' mark since it has submitted substantial
evidence showing its continued use, promotion and advertisement thereof up to the
present."
Issues:
whether or not the subject marks should be allowed registration in the name of petitioner
Ruling:
A. Admissibility of Petitioner's
Documentary Evidence.
In the case at bar, while petitioner submitted mere photocopies as documentary evidence
in the Consolidated Opposition Cases, it should be noted that the IPO had already obtained
the originals of such documentary evidence in the related Cancellation Case earlier filed
before it.
Under this circumstance and the merits of the instant case as will be subsequently
discussed, the Court holds that the IPO Director General's relaxation of procedure was a
valid exercise of his discretion in the interest of substantial justice.
B. Registration and ownership of
"BIRKENSTOCK."
Republic Act No. (RA) 166,[34] the governing law for Registration No. 56334, requires the
filing of a DAU on specified periods,[35] to wit:
Section 12. Duration. Each certificate of registration shall remain in force for twenty years:
Provided, That registrations under the provisions of this Act shall be cancelled by the
Director, unless within one year following the fifth, tenth and... fifteenth anniversaries of
the date of issue of the certificate of registration, the registrant shall file in the Patent Office
an affidavit showing that the mark or trade-name is still in use or showing that its non-use
is due to special circumstance which excuse such... non-use and is not due to any intention
to abandon the same, and pay the required fee.
The Director shall notify the registrant who files the above- prescribed affidavits of his
acceptance or refusal thereof and, if a refusal, the reasons therefor. (Emphasis and
underscoring supplied)
The aforementioned provision clearly reveals that failure to file the DAU within the
requisite period results in the automatic cancellation of registration of a trademark. In
turn, such failure is tantamount to the abandonment or withdrawal of any right or interest
the... registrant has over his trademark.
In this case, respondent admitted that it failed to file the 10th Year DAU for Registration
No. 56334 within the requisite period, or on or before October 21, 2004. As a consequence,
it was deemed to have abandoned or withdrawn any right or interest over... the mark
"BIRKENSTOCK." Neither can it invoke Section 236[37] of the IP Code which pertains to
intellectual property rights obtained under previous intellectual property laws, e.g., RA
166, precisely because it already lost any right or interest over... the said mark.
Besides, petitioner has duly established its true and lawful ownership of the mark
"BIRKENSTOCK."
Under Section 2[38] of RA 166, which is also the law governing the subject applications, in
order to register a trademark, one must be the owner thereof and must have actually used
the mark in commerce in the Philippines for two (2) months prior to the... application for
registration. Section 2-A[39] of the same law sets out to define how one goes about
acquiring ownership thereof. Under the same section, it is clear that actual use in
commerce is also the test of ownership but the provision went further by... saying that the
mark must not have been so appropriated by another. Significantly, to be an owner, Section
2-A does not require that the actual use of a trademark must be within the Philippines.
Thus, under RA 166, one may be an owner of a mark due to its actual use but may not... yet
have the right to register such ownership here due to the owner's failure to use the same
in the Philippines for two (2) months prior to registration.[40]
It must be emphasized that registration of a trademark, by itself, is not a mode of acquiring
ownership. If the applicant is not the owner of the trademark, he has no right to apply for
its registration. Registration merely creates a prima facie presumption of the... validity of
the registration, of the registrant's ownership of the trademark, and of the exclusive right
to the use thereof. Such presumption, just like the presumptive regularity in the
performance of official functions, is rebuttable and must give way to evidence to the...
contrary.[41]
Clearly, it is not the application or registration of a trademark that vests ownership thereof,
but it is the ownership of a trademark that confers the right to register the same. A
trademark is an industrial property over which its owner is entitled to property rights
which... cannot be appropriated by unscrupulous entities that, in one way or another,
happen to register such trademark ahead of its true and lawful owner. The presumption of
ownership accorded to a registrant must then necessarily yield to superior evidence of
actual and real ownership... of a trademark.
In the instant case, petitioner was able to establish that it is the owner of the mark
"BIRKENSTOCK." It submitted evidence relating to the origin and history of
"BIRKENSTOCK" and its use in commerce long before respondent was able to register the
same here in the Philippines.
It has sufficiently proven that "BIRKENSTOCK" was first adopted in Europe in 1774 by its
inventor, Johann Birkenstock, a shoemaker, on his line of quality footwear and thereafter,
numerous generations of his kin continuously engaged in the manufacture and sale of
shoes and... sandals bearing the mark "BIRKENSTOCK" until it became the entity now
known as the petitioner. Petitioner also submitted various certificates of registration of the
mark "BIRKENSTOCK" in various countries and that it has used such mark in different
countries worldwide, including... the Philippines.[44]
On the other hand, aside from Registration No. 56334 which had been cancelled,
respondent only presented copies of sales invoices and advertisements, which are not
conclusive evidence of its claim of ownership of the mark "BIRKENSTOCK" as these merely
show the transactions made... by respondent involving the same.[45]
In view of the foregoing circumstances, the Court finds the petitioner to be the true and
lawful owner of the mark "BIRKENSTOCK" and entitled to its registration, and that
respondent was in bad faith in having it registered in its name.
Fredco Manufacturing Corporation v. President and Fellows of Harvard College application for registration of the mark "Harvard" with the then Philippine Patents Office.
G.R. No. 185917, 1 June 2011 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
By: Erwin V. Zamora University in its Comment:

Fredco Manufacturing Corporation (Fredco) filed before the Bureau of Legal Affairs of the Although Section 2 of the Trademark law (R.A. 166) requires for the registration of
Philippine Intellectual Property Office a Petition for Cancellation of Registration No. 56561 trademark that the applicant thereof must prove that the same has been actually in use in
issued to President and Fellows of Harvard College (Harvard University) for the mark commerce or services for not less than two (2) months in the Philippines before the
“Harvard Veritas Shield Symbol” under classes 16, 18, 21, 25 and 28. 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
Fredco claimed that Harvard University had no right to register the mark in class 25, since requirement of proof of use in the commerce in the Philippines for the said period is not
its Philippine registration was based on a foreign registration. Thus, Harvard University necessary. An applicant for registration based on home certificate of registration need not
could not have been considered as a prior adopter and user of the mark in the Philippines. even have used the mark or trade name in this country.”

Fredco explained that the mark was first used in the Philippines by its predecessor-in- “In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), "[m]arks
interest New York Garments as early as 1982, and a certificate of registration was issued registered under Republic Act No. 166 shall remain in force but shall be deemed to have
in 1988 for goods under class 25. Although the registration was cancelled for the non-filing been granted under this Act x x x," which does not require actual prior use of the mark in
of an affidavit of use, the fact remained that the registration preceded Harvard University’s the Philippines. Since the mark "Harvard Veritas Shield Symbol" is now deemed granted
use of the subject mark in the Philippines. 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.”
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 The Supreme Court further ruled that Harvard University is entitled to protection in the
marks “Harvard” and “Harvard Veritas Shield Symbol,” had been used in commerce since Philippines of its trade name “Harvard” even without registration of such trade name in
1872, and was registered in more than 50 countries. the Philippines. It explained:

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.
“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
5. Ana Ang vs Toribio

Facts:
The Supreme Court ruled:
Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and
“The petition has no merit.
as a trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since
1910. On September 29, 1915, he formally registered it as trade-mark and as trade-name
Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before a trademark
on January 3, 1933.
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
Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on
Harvard University had actual prior use of its marks abroad for a long time, it did not have
April 11, 1932, and established a factory for the manufacture of said articles in the year
actual prior use in the Philippines of the mark "Harvard Veritas Shield Symbol" before its
1937.
The Court of First Instance of Manila absolved the defendant (Ms. Ang) on the grounds that
the two trademarks are dissimilar and are used on different and non-competing goods;
that there had been no exclusive use of the trade-mark by the plaintiff; and that there had
been no fraud in the use of the said trade-mark by the defendant because the goods on
which it is used are essentially different from those of the plaintiff.
The Court of Appeals reversed said judgment, directing the Director of Commerce to cancel
the registration of the trade-mark "Ang Tibay" in favor of petitioner, and perpetually
enjoining the latter from using said trade-mark on goods manufactured and sold by her.
Thus, this case, a petition for certiorari.
Issue:
Are the goods or articles or which the two trademarks are used similar or belong to the
same class of merchandise?
Ruling:
Yes, pants and shirts are goods closely similar to shoes and slippers. They belong to the
same class of merchandise as shoes and slippers. They are closely related goods.
The Supreme Court affirmed the judgment of the Court of Appeals and added that
“although two non-competing articles may be classified under to different classes by the
Patent Office because they are deemed not to possess the same descriptive properties, they
would, nevertheless, be held by the courts to belong to the same class if the simultaneous
use on them of identical or closely similar trademarks would be likely to cause confusion
as to the
origin, or personal source, of the second user’s goods. They would be considered as not
falling under the same class only if they are so dissimilar or so foreign to each other as to
make it unlikely that the purchaser would think that the first user made the second user’s
goods
6. MANG INASAL PHILIPPINES, INC., Petitioner Vs. IFP MANUFACTURING
CORPORATION, Respondent
G.R. No. 221717
June 19, 2017
FACTS:
The Trademark Application and the Opposition Respondent IFP Manufacturing
Corporation is a local manufacturer of snacks and beverages.
On May 26, 2011, respondent filed with the Intellectual Property Office (IPO) an
application for the registration of the mark "OK Hotdog Inasal Cheese Hotdog Flavor
Mark"in connection with goods under Class 30 of the Nice Classification. The said mark,
which respondent intends to use on one of its curl snack products. The application of
respondent was opposed by petitioner Mang Inasal Philippines, Inc. Petitioner is a
domestic fast food company and the owner of the mark "Mang Inasal, Home of Real Pinoy
Style Barbeque and Device" (Mang Inasal mark) for services under Class 43 of the Nice
Classification. The said mark, which was registered with the IPO in 2006 and had been used
by petitioner for its chain of restaurants since 2003.
Petitioner, in its opposition, contended that the registration of respondent's OK Hotdog
Inasal mark is prohibited under Section 123.l (d)(iii) of Republic Act No. (RA) 8293.
Petitioner averred that the OK Hotdog Inasal mark and the Mang Inasal mark share
similarities-both as to their appearance and as to the goods or services that they epresent
which tend to suggest a false connection or association between the said marks and, in that
regard, would likely cause confusion on the part of the public. As petitioner explained:
1. The OK Hotdog Inasal mark is similar to the Mang Inasal mark. Both marks feature the
same dominant element-i.e., the word "INASAL"-printed and stylized in the exact same
manner, viz:
a. In both marks, the word "INASAL" is spelled using the same font style and red color;
b. In both marks, the word "INASAL" is placed inside the same black outline and yellow
background; and
c. In both marks, the word "INASAL" is arranged in the same staggered format.
2. The goods that the OK Hotdog Inasal mark is intended to identify (i.e., curl snack
products) are also closely related to the services represented by the Mang Inasal mark (i.e.,
fast food restaurants). Both marks cover inasal or inasal-flavored food products.
Petitioner's opposition was referred to the Bureau of Legal Affairs (BLA) of the IPO for
hearing and disposition.
ISSUE:
Whether or not the registration of respondent's OK Hotdog Inasal mark is prohibited under
Section 123.l (d) (iii) of Republic Act No. (RA) 8293
HELD:
Yes. The OK Hotdog Inasal mark meets the two conditions of the proscription under Sec.
123.l(d)(iii) of RA 8293. First, it is similar to the Mang Inasal mark, an earlier mark. Second,
it pertains to goods that are related to the services represented by such earlier mark.
The Proscription: Sec. 123.l(d)(iii) of RA 8293 A mark that is similar to a registered mark
or a mark with an earlier filing or priority date (earlier mark) and which is likely to cause
confusion on the part of the public cannot be registered with the IPO. Such is the import of
Sec. 123.l(d)(iii) of RA 8293: SECTION 123. Registrability. – 123. 1. A mark cannot be
registered if it:
Verily, to fall under the ambit of Sec. 123. l(d)(iii) and be regarded as likely to deceive or
cause confusion upon the purchasing public, a prospective mark must be shown to meet
two (2) minimum conditions:
1. The prospective mark must nearly resemble or be similar to an earlier mark; and
2. The prospective mark must pertain to goods or services that are either identical, similar
or related to the goods or services represented by the earlier mark.
7. McDonald’s Corporation v. L.C. Big Mak Burger (G.R. No. 143993)
Date: June 9, 2016Author: jaicdn 0 Comments
Facts:
Petitioner McDonald’s, an American corporation operating a global chain of fast-food
restaurants, is the owner of the ‘Big Mac’ mark for its double-decker hamburger sandwich
here and in the US. Meanwhile, respondent L.C., a domestic corporation which operates
fast-food outlets and snack vans applied for the registration of the ‘Big Mak’ mark for its
hamburger sandwiches. Petitioner opposed on the ground that ‘Big Mak’ was a colorable
imitation of its registered ‘Big Mac’ mark for the same food products. Respondents denied
there is colorable imitation and argued that petitioner cannot exclusively appropriate the
mark ‘Big Mac’ because the word ‘Big’ is a generic and descriptive term. Petitioner filed a
complaint for trademark infringement and unfair competition. The trial court found for
petitioners. CA held otherwise.
Issues:
(1) Whether or not the word ‘Big Mac’ can be exclusively appropriated by petitioner;
(2) Whether or not there is colorable imitation resulting in likelihood of confusion;
(3) Whether or not there is unfair competition.
Ruling:
(1) YES. A mark is valid if it is “distinctive” and thus not barred from registration under
Section 4 of RA 166. However, once registered, not only the mark’s validity but also the
registrant’s ownership of the mark is prima facie presumed. The “Big Mac” mark, which
should be treated in its entirety and not dissected word for word, is neither generic nor
descriptive. Generic marks are 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, on the other hand, convey the characteristics, functions, 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. On the contrary, “Big Mac” falls under the class of fanciful or arbitrary
marks as it bears no logical relation to the actual characteristics of the product it
represents. As such, it is highly distinctive and thus valid. Significantly, the trademark
“Little Debbie” for snack cakes was found arbitrary or fanciful.s
(2) YES. In determining 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. 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. This
Court, however, has relied on the dominancy test rather than the holistic test. The test of
dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual
Property Code which defines infringement as the “colorable imitation of a registered mark
xxx or a dominant feature thereof.”
Applying the dominancy test, the Court finds that respondents’ use of the “Big Mak” mark
results in likelihood of confusion. Aurally the two marks are the same, with the first word
of both marks phonetically the same, and the second word of both marks also phonetically
the same. Visually, the two marks have both two words and six letters, with the first word
of both marks having the same letters and the second word having the same first two
letters. In spelling, considering the Filipino language, even the last letters of both marks are
the same. Clearly, respondents have adopted in “Big Mak” not only the dominant but also
almost all the features of “Big Mac.” Applied to the same food product of hamburgers, the
two marks will likely result in confusion in the public mind. Certainly, “Big Mac” and “Big
Mak” for hamburgers create even greater confusion, not only aurally but also visually.
Indeed, a person cannot distinguish “Big Mac” from “Big Mak” by their sound. When one
hears a “Big Mac” or “Big Mak” hamburger advertisement over the radio, one would not
know whether the “Mac” or “Mak” ends with a “c” or a “k.”
(3) YES. The 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. Actual fraudulent intent need not
be shown. Unfair competition is broader than trademark infringement and includes
passing off goods with or without trademark infringement. Trademark infringement is a
form of unfair competition. Trademark infringement constitutes unfair competition when
there is not merely likelihood of confusion, but also actual or probable deception on the
public because of the general appearance of the goods. There can be trademark
infringement without unfair competition as when the infringer discloses on the labels
containing the mark that he manufactures the goods, thus preventing the public from being
deceived that the goods originate from the trademark owner.
Respondents’ goods are hamburgers which are also the goods of petitioners. Since
respondents chose to apply the “Big Mak” mark on hamburgers, just like petitioner’s use of
the “Big Mac” mark on hamburgers, respondents have obviously clothed their goods with
the general appearance of petitioners’ goods. There is actually no notice to the public that
the “Big Mak” hamburgers are products of “L.C. Big Mak Burger, Inc.” and not those of
petitioners who have the exclusive right to the “Big Mac” mark. This clearly shows
respondents’ intent to deceive the public. We hold that as found by the RTC, respondent
corporation is liable for unfair competition.