SAPOLIN vs BALMACEDA, 1939 Facts: The cross-plaintiff, Sapolin Co.

Inc is a foreign corporation who alleges to be the holder of patent certificates issued by the US Patent Office for the exclusive use of the trademark and tradename SAPOLIN, an enamel paint. The paints with the trademark and tradename SAPOLIN were first imported into the Philippines by MULLER & PHIPPS, a foreign company, and thereafter by the crossplaintiff. The demand for said paints in 1929 up to 1931 was such that the proceeds from the sales would ran to between 70,000 to 80,000 USD, of which only 5 percent was spent to advertise and popularize the goods in the Philippines. The trademark and tradename LUSOLIN first came into existence only in 1932, when Co Lu So & Co, a local business entity who imports and sells construction materials, sold for several years the paints marked SAPOLIN which he acquired from MULLER & PHIPPS and from the cross-plaintiff. Co Lu So later filed an application with the Bureau of Commerce and Industry for the exclusive use of the trademark and tradename LUSOLIN, to which the Bureau later granted a trademark certificate on said application. Co Lu So, thereafter, conveyed the right to use the aforesaid trademark and tradename LUSOLIN to cross-defendant, who later registered the same with the Bureau of Commerce and Industry. The cross-defendant, later (after one month of sales) notified the cross-plaintiff to stop using the trademark SAPOLIN as this was violative of its rights as owner of the trademark LUSOLIN. The court further noted that LUSOLIN paints are the same ones under the tradename HAWELIT, which were imported from Germany to the Philippines by the cross-defendant, prior to the European war. When the war broke out in Europe, the cross-defendant discontinued the importation of HAWELIT paints and in 1927 SAPOLIN paints appeared and found its way in the local market. Thus crossdefendant, after acquiring from Co Lu So the certificate to use the tradename and trademark LUSOLIN, the former resumed the sale of HAWELIT paints presenting them to the public as LUSOLIN. Issue: WON (the CFI of Manila erred in not holding that) the trade-mark "Lusolin" of the crossdefendant Germann & Co., Ltd., constitutes an infringement of the cross-plaintiff's trade-mark "Sapolin"; The Court observed that the color, design, size and other characteristics as well as the sound produced by the pronunciation of the tradename LUSOLIN and SAPOLIN are alomost the same. The cross-defendant itself admits in its letter to the cross-plaintiff the striking similarity between the two trademarks and tradenames in question, in shape, design, color, and printing as to deceive the public specially that both are being used for paints The manner of presentation, in extent and in pronunciation between the two trademarks and tradenames are the same as it appears in the evidence.xxx The violation of the trademark is established by showing that the resemblance between the two is of such a nature that one can be taken for the other. And it has been held that the resemblance is the test of whether or not there is a trademark violation. The Court said that it is not necessary to prove that an exact copy was made or that the same words appearing therein were used. Is is sufficient that its essential characteristics have been imitated or copied, to hold that there is a violation of a trademark. As to syllabication and sound of the two tradenames SAPOLIN and LUSOLIN, it seems plain that whoever hears or sees them cannot but think of paints of the same kind and make.

And it has been held that tradenames idem sonans constitute a violation in matters of patents and trademarks and tradenames.

In conclusion, the appealed decision is reversed, and it is ordered that this case be remanded to the court of origin to the end that it may enter therein the proper orders and decision, upon presentation by the parties concerned of the evidence which they may deem necessary to adduce, taking into account the findings and opinion herein set forth in favor of the contention of the cross-plaintiff. The costs will be taxed against the cross-defendant. So ordered. Avancea, C. J., Villa-Real, Imperial, Laurel and Moran, JJ., concur. The Lawphil Project - Arellano Law Foundation