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ELIDAD KHO V. COURT OF APPEALS

March 19, 2002

Facts:

Petitioner, doing business under the name and style

of KEC Cosmetics Laboratory, applied for the issuanceof a preliminary injunctive order on the ground that

she is entitled to the use of the trademark on Chin

Chun Su and its container based on her copyright and

patent over the same. Private respondent, on the

other hand, alleged that it is the exclusive and

authorized importer, re-packer, and distributor of

Chin Chun Su products manufactured by Shun-Yi

Factory of Taiwan, and that the said Taiwanese

manufacturing company authorized Summerville to

register its trade name Chin Chun Su Medicated

Cream with the Phil. Patent Office and other

appropriate govt agencies. The lower court affirmed

petitioners motion for preliminary injunction. Private

respondents, through a petition for certiorari,

appealed to the CA which denied petitioners motion,

to which petitioner now appeals. The trial court

continued hearing petitioners complaint for final

injunction and damages. Said trial court rendered a

Decision barring the petitioner from using the

trademark Chin Chun Su and upholding the right of

the respondents to use the same, but recognizing the

copyright of the petitioner over the oval shaped

container of her beauty cream.

Issue:

WON the copyright and patent over the name and

container of a beauty cream product would entitle the

registrant to the use and ownership over the same to

the exclusion of others.

Held:

No. Trademark, copyright and patents are different

intellectual property rights that cannot be

interchanged with one another.

Trademark: any visible sign capable of distinguishing

the goods (trademark) or services(service mark) of an

enterprise and shall include a stamped or marked

container of goods.

Trade name: the name or designation identifying or

distinguishing an enterprise.

Copyright: confined to literary and artistic works

which are original intellectual creations in the literary

and artistic domain protected from the moment of

their creation.

Patentable inventions: any technical solution of a

problem in any field of human activity, which is new,involves an inventive step and is industrially

applicable The mark and container of a beauty cream

product are proper subjects of a trademark, not

copyright or patent.

In order to be entitled to exclusively use the same in

the sale of beauty cream product, the user must

sufficiently prove that she registered or used it before

anybody else did. Petitioners copyright and patent

registration of the name and container would not

guarantee her right to the exclusive use of the same

for the reason that they are not appropriate subjects

of the said intellectual rights. The Court also

considered the trial courts finding on the finalinjunction and damages that the petitioner does not

have trademark rights on the name and container of

the beauty cream product. The issuance of a final

injunction renders any question on the preliminary

injunction moot and academic.

MCDONALDS VS. LC BIG MAK BURGER, INC.

August 18, 2004

Facts:

Petitioner, McDonalds Corporation (McDonalds) is a

corporation organized under the laws of Delaware,

US. It operates, by itself or through its franchisees, a

global chain of fast food restaurants. It owns a family

of marks including the Big Mac mark for its double

decker hamburger sandwich. McDonalds registered

his trademark with the US trademark registry

sometime 1979. Based on home registration,

McDonalds applied for registration of the same mark

in principal registry of the then Philippine Bureau of

Patents, Trademark and Technology (PBPTT), now the

Intellectual Property Office (IPO). Pending approval of

this application, McDonalds introduced its Big Mac

hamburger sandwiches in the Philippine market in

1981. On 1985, the PBPTT, allowed registration of the

Big Mac mark in the Philippine registry based on its

home registration in the US. Like its other marks,

McDonalds display the Big Mac mark in its item and

paraphernalia in its restaurant, and its outdoor and

indoor signages.

Meanwhile, McGeorge Food Industries (Petitioner

McGeorge) a domestic corporation, is a McDonalds

Philippine franchisee.

Respondent, LC Big Mak burger inc. is a domestic

corporation which operates fast food outlets and

snack vans in metro manila and nearby provinces.

Respondents corporations menu includes hamburger

sandwiches and other food items. Respondent Francis

B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus

Aycardo, Araceli Aycardo, and Grace Huero are the

incoporators, stockholders and directors of

respondent corporation.

On 1988, respondent corporation applied with the

PBPTT for the registration of the Big Mak mark for its

hamburger sandwiches. McDonalds opposedrespondent corporations application on the ground

that Big Mak was colorable imitation of its registered

Big Mac mark for the same food products. McDonalds

also informed respondent Francis Dy, the chairman of

the board of directors of the respondent corporation,

of its exclusive right to the Big Mac mark and

requested him to desist from using the Big Mak mark

or any similar mark.

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Having received no reply from respondent Dy,

petitioners sued respondents in the RTC Makati for

trademark infringement and unfair competition. RTC

issued a temporary restraining order against

respondents enjoinining them from using the Big Mak

mark in the operation of their business in the NCR. On

1990, RTC issued a writ of preliminary injunctionreplacing the TRO.

In their answer, respondents admitted that they have

been using the Big Mak burger for their fast food

business. Respondents claimed, however, that

McDonalds does not have an exclusive right to the

Big Mac mark or to any other similar marks.

Respondents point out that the Isaiyas group of

corporations registered the same mark for hamburger

sandwiches with the PBOTT on 1979. One Rodolfo

Topacio similarly registered the same mark on 1983,

prior to McDonalds registration on 1985.

Alternatively, respondents claimed that they are notliable for trademark infringement and unfair

competition, as the Big Mak mark they sought to

register does not constitute a colorable imitation of

the Big Mac mark. Respondents asserted that they

did not fraudulently pass off their hamburger

sandwiches as those of petitioners Big Mak

hamburgers. Respondents sought damages in their

counterclaim.

In their reply, petitioners denied respondents claim

that McDonalds is not the exclusive owner of the Big

Mac mark. Petitioners asserted that while the Isaiyas

group and Topacio did register the Big Mac markahead of them, the Isaiyas group did so only in the

supplemental register of PBPTT and such registration

does not provide any protection. McDonalds

disclosed that it had acquired Topacios rights to his

registration in a deed of assignment.

Issue:

WON the acts of respondents in using the name Big

Mak as a trademark or trade name in their signages,

or in causing the name Big Mak to be printed on the

wrappers and containers of their food products also

constitute an act of unfair competition under section29 of the trademark law.

Held:

Yes. The provision of the law concerning unfair

competition is broader and more inclusive than that

the law concerning the infringement of trademark,

which is more limited range, but within its narrower

range recognizes a more exclusive right derived by

the adoption and registration of the trademark by the

person whose goods or services are first associated

therewith. Notwithstanding the distinction between

an action for trademark infringement and an actionfor unfair competition, however, the law extends

substantially the same relief to the injured party for

both cases.

Any conduct may be said to constitute unfair

competition if the effect is to pass off on the public

the goods of one man as the goods of another. The

choice of Big Mak as trade name by defendant

corporation is not merely for sentimental reasons but

was clearly made to take advantage of the

reputation, popularity and the established goodwill of

plaintiff McDonalds. For as stated in Section 29, a

person is guilty of unfair competition who in selling

his goods shall give them the general appearance, of

goods of another manufacturer or dealer, either asgoods themselves or in the wrapping of the packages

in which they are contained, or the devices or words

thereon, or in any other feature of their appearance,

which would likely influence purchasers to believe

that the goods offered are those of a manufacturer or

dealer other than the actual manufacturer or dealer.

Thus, plaintiffs have established their valid cause of

action against the defendants for trademark

infringement and unfair competition and for

damages.

N.B.

TEST OF TRADEMARK INFRINGEMENT

1) Dominancy Test consists in seeking out the main,

essential or dominant features of a mark.

2) Holistic Test takes stock of the other features of a

mark, taking into consideration the entirety of the

marks.

DIFFERENTIATED FROM UNFAIR COMPETITION

1) Cause of action: in infringement, the cause of

action is the unauthorized use of a registered

trademark; in unfair competition, it is the passing off

of ones goods as those of another merchant.

2) Fraudulent intent is not necessary in infringement,

but necessary in UC.

3) Registration of trademarks: in infringement, it is a

pre-requisite; in UC, it is not required.

4) Class of goods involved: in infringement, the goods

must be of similar class; in UC, the goods need not be

of the same class.

ANG VS. TEODORO

December 14, 1942

Facts:

Toribio Teodoro has continuously used "AngTibay,"

both as a trade-mark and as a trade-name, in the

manufacture and sale of slippers, shoes, and indoor

baseballs since 1910.

He formally registered it as a trade-mark

onSeptember 29, 1915, and as a trade-name on

January 3, 1933.

Ana Ang registered the same trade-mark"Ang Tibay"

for pants and shirts on April 11,1932, and established

a factory for themanufacture of said articles in the

year 1937.

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Teodoro filed a complaint against Ang before the RTC.

The trial court absolved the complaint 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(petitioner); and that there had been no fraud

in the use of the said trade-mark by the defendantbecause the goods on which it is used are essentially

different from those of the plaintiff. The Court of

Appeals reversed the trial courts judgment holding

that by uninterrupted and exclusive use since 1910 in

the manufacture of slippers and shoes, respondent's

trade-mark has acquired a secondary meaning; that

the goods or articles on which the two trade-marks

are used are similar or belong to the same class; and

that the use by petitioner of said trade-mark

constitutes a violation of sections 3 and 7 of Act No.

666.

Issues:

(1) WON the trademark and trade name AngTibay

is a descriptive word which will bar its registration.

(2) WON the doctrine of secondary meaning can be

applied to respondents trade-mark.

Held:

(1) No. The phrase "Ang Tibay" is an exclamation

denoting admiration of strength or durability. The

phrase "ang tibay" is never used adjectively to define

or describe an object.

"Ang Tibay" is not a descriptive term within the

meaning of the Trade-Mark Law but rather a fanciful

or coined phrase which may properly and legally be

appropriated as a trade-mark or trade-name.

(2) Yes. The Function of a trade-mark is to point

distinctively, either by its own meaning or by

association, to the origin or ownership of the wares to

which it is applied. Ang Tibay, as used by the

respondent to designate his wares, had exactly

performed that function for 22 years before the

petitioner adopted it as a trade-mark in her own

business. Ang Tibay shoes and slippers are, by

association, known throughout the Philippines as

products of the Ang Tibay factory owned and

operated by the respondent. Even if Ang Tibay,

therefore, were not capable of exclusive

appropriation as a trade-mark, the application of the

doctrine of secondary meaning could nevertheless be

fully sustained because, in any event, by

respondents long and exclusive use of said phrase

with reference to his products and his business, it has

acquired a propriety connotation.

N.B.

Doctrine of Secondary Meaning

This doctrine is to the effect that a word or phrase

originally incapable of exclusive appropriation with

reference to an article on the market, because

geographically or otherwise descriptive, might

nevertheless have been used so long and so

exclusively by one producer with reference to his

article that, in that trade and to that branch of the

purchasing public, the word or phrase has come to

mean that the article was his product.

The same trade-mark, used on unlike goods, could

not cause confusion in trade and that ,therefore,

there could be no objection to the use and

registration of a well-known mark by a third party for

a different class of goods.

Although two noncompeting articles may be classified

under two 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 trade-marks 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 the first user made the second

user's goods.

ARCE SONS AND COMPANY VS. SELECTABISCUIT

January 28, 1961

Facts:

On August 31, 1955, respondent Selecta Biscuit

Company, Inc., filed with the Philippine Patent Office

a petition for the registration of the word "SELECTA"

as trade-mark to be use in its bakery products

alleging that it is in actual use thereof for not less

than two months before said date 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." The name 'Selecta' was chosen by the

organizers of defendant corporation who are Chinese

citizens as a translation of the Chinese word

'ChingSuan' which means 'mapili' in Tagalog, and

'selected' in English.

Its petition was referred to an examiner for study who

found that the trade-mark sought to be registered

resembles the word "SELECTA" used by the petitioner

Arce and Sons and Company, in its milk and ice

cream products so that its use by respondent will

cause confusion as to the origin of their respective

goods. Consequently, he recommended that the

application be refused. However, upon

reconsideration, the Patent Office ordered the

publication of the application for purposes of

opposition.

Meanwhile, petitioner filed a case for unfair

competition with the CFI, against the respondents. On

September 28, 1958, the CFI decided in favor of the

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petitioner, perpetually enjoining respondent from

using the name "SELECTA" as a trade-mark on the

goods manufactured and/or sold by it.

On December 7, 1958, and on the strength of the

same evidence presented before the CFI, the Director

of Patents rendered a decision dismissing petitioner's

opposition and stating that the registration of the

trade-mark "SELECTA" in favor of applicant Selecta

Biscuits Company, Inc. will not cause confusion or

mistake nor will deceive the purchasers as to the

cause damage to petitioner.

Issue:

WON Selecta Biscuit may use the name Selecta as

trade-mark on the goods manufactured and/or sold

by it.

Held:

No. Petitioner, through its predecessor-in-interest,

had made use of the word "SELECTA" not only as a

trade-name indicative of the location of the

restaurant where it manufactures and sells its

products, but also as a trade-mark. This is not only in

accordance with its general acceptation but with our

law on the matter.

Verily, the word 'SELECTA' has been chosen by

petitioner and has been inscribed on all its products

to serve not only as a sign or symbol that may

indicate that they are manufactured and sold by it

but as a mark of authenticity that may distinguish

them from the products 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.

A 'trade-mark' is a distinctive mark of authenticity

through which the merchandise of a particular

producer or manufacturer may be distinguished from

that of others, and its sole function is to designate

distinctively the origin of the products to which it is

attached." The word 'SELECTA', it is true, may be an

ordinary or common word in the sense that may be

used or employed by any one in promoting his

business or enterprise, but once adopted or coined in

connection with one's business as an emblem, signor

device to characterize its products, or as a badge of

authenticity, it may acquire a secondary meaning as

to be exclusively associated with its products and

business.

In this sense, its use 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. Thus, the law givesits protection and guarantees its use to the exclusion

of all others a (G. & C. Merriam Co. v. Saalfield, 198 F.

369, 373). "The ownership or possession of a trade-

mark, . . . shall be recognized and protected in the

same manner and to the same extent, as are other

property rights known to the law," thereby giving to

any person entitled to the exclusive use of such

trade-mark the right to recover damages in a civil

action from any person who may have sold goods of

similar kind bearing such trade-mark (Sections 2-

Aand 23, Republic Act No. 166, as amended).

LEVI STRAUSS & CO. VS. CLINTON APPARELLE

September 20, 2005

Facts:

The case stemmed from the complaint for Trademark

Infringement, Injunction and Damages filed by

petitioners against respondent Clinton Aparelle and

alternative defendant Olympian Garments, Inc.,

before the RTC of QC. The complaint alleged that

petitioner is the owner by prior adoption and use

since 1986 of the internationally famous Dockers

and Design trademark, as evidenced by its valid and

existing registrations in various member countries ofthe Paris Convention, including a registration in the

Philippines. The petitioner further alleged that they

discovered the presence of jeans under the brand

name Paddocks using a device substantially similar

to the Dockers and Design trademark owned by

petitioner. According to the information, Clinton

Aparelle manufactured the said jeans.

Neither of the alternative defendants appeared on

the first hearing date and the rescheduled hearing

date. Clinton Aparelle claimed that it was not notified

of such hearing. It alleged that only Olympian

Garments had been issued with summons. Despite

the absence of the summons, the lower court

proceeded with the hearing for the issuance of TRO,

and subsequently granted the same. The trial court

also subsequently issued an order granting the writ of

preliminary injunction prayed for in order to maintain

status quo. The trial court based its ruling on the

following evidence: (1) certified true copy of

certificate of trademark registration; (2) pair of

Dockers pants bearing the trademark; (3) pair of

paddocks pants bearing the logo; (4) survey report

purportedly proving that there was confusing

similarity between the two; and (5) affidavits. ClintonAparelle filed a motion to dismiss and motion for

reconsideration of the order granting the writ of

preliminary injunction. The trial court denied both

motions, prompting the respondent to file a petition

for certiorari, prohibition and mandamus, and a

prayer for the issuance of a temporary restraining

order and/or writ of preliminary injunction. The CA

issued an order granting respondents petition. The

CA held that the trial court did not follow the

procedure required by law for the issuance of a

temporary restraining order as Clinton Aparelle was

not duly notified of the date of the summary hearing

for its issuance. The CA also held that the issuance ofthe writ of preliminary injunction is questionable as

petitioners failed to sufficiently establish its material

and substantial right to have the writ issued. It also

questioned the admissibility of the affidavits, which

were taken ex-parte. Lastly, it ruled that whatever

material injury petitioner would suffer may be

sufficiently compensated.

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Issue:

WON respondents may be enjoined for trademark

infringement.

Held:

No. Petitioners anchor their legal right to Dockers

and Design trademark on the Certificate of

Registration issued in their favor by the Bureau of

Patents, Trademarks and Technology Transfer.

According to Section 138 of Republic Act No. 8293,

this Certificate of Registration is prima facie evidence

of the validity of the registration, the registrants

ownership of the mark and of the exclusive right to

use the same in connection with the goods or

services and those that are related thereto specified

in the certificate. Section 147.1 of said law likewise

grants the owner of the registered mark the exclusive

right to prevent all third parties not having the

owners consent from using in the course of trade

identical or similar signs for goods or services which

are identical or similar to those in respect of which

the trademark is registered if such use results in a

likelihood of confusion.

However, attention should be given to the fact that

petitioners registered trademark consists of two

elements: (1) the word mark Dockers and (2) the

wing-shaped design or logo. Notably, there is only

one registration for both features of the trademark

giving the impression that the two should be

considered as a single unit. Clinton Apparelles

trademark, on the other hand, uses the Paddocks

word mark on top of a logo which according to

petitioners is a slavish imitation of the Dockers

design. The two trademarks apparently differ in their

word marks (Dockers and Paddocks), but again

according to petitioners, they employ similar or

identical logos. It could thus be said that respondent

only appropriates petitioners logo and not the word

mark Dockers; it uses only a portion of the

registered trademark and not the whole.

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 owners

consent of a portion of a trademark registered in its

entirety constitutes material or substantial invasion of

the owners 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 trademarkthe

feature that prevails or is retained in the minds of the

publican 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.

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 persons 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) thetrademark 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 betweentwo marks is not sufficient proof of any dilution that

the trial court must enjoin.

LEVI STRAUSS VS. VOGUE TRADERS CLOTHINGCO.

June 29, 2005

Facts:

Levi Strauss & Co. obtained certificates of registration

from the BPTTT for the following trademarks:

LEVIS; 501; Two Horse Design; Two Horse

Label; Two Horse Patch; Two Horse Label with

Patterned Arcuate Design; Arcuate Design; and

the composite trademarks, namely, Arcuate, Tab,

and Two Horse Patch.

Petitioner discovered the existence of some

trademark registrations belonging to respondent

which, in its view, were confusingly similar to its

trademarks. Thus, it instituted two cases before the

BPTTT for the cancellation of respondents trademark

registrations, to wit: Inter Partes Case No. 4216, a

petition for cancellation of Certificate of Registration

No. 53918 (for LIVES) and Inter Partes Case No.

4217, a petition for cancellation of Certificate of

Registration No. 8868 (for LIVES Label Mark).

Petitioner then applied for the issuance of a searchwarrant on the premises of respondent Vogue TradersClothing Company. On December 13, 1995, the

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search warrants were enforced and several goodsbelonging to respondent were seized. Meanwhile, itappears that criminal charges were filed against TonyLim of respondent company in the Department ofJustice, but the same were eventually dismissed andthe search warrants were quashed.

Consequently, on February 1, 1996, respondent fileda complaint for damages in the Regional Trial Court ofManila, Branch 50, against petitioner. In its amendedanswer with counterclaim, petitioner countered thatrespondents LIVES brand infringed upon its licensedbrand name LEVIS. It sought to cancel respondentsCopyright Registration No. I-3838 and enjoin therespondent from further manufacturing, selling,offering for sale, and advertising the denim jeans orslacks by using a design substantially, if not exactlysimilar to, or a colorable imitation of the trademarksof petitioner. During the pendency of the trial, thewrit of preliminary injunction prayed for by thepetitioner was granted.

Respondent went to the CA, alleging Grave Abuse ofDiscretion. The CA rendered a decision in favor of therespondent, enjoining the trial court from furtherproceeding with the case until the Bureau of Patents,Trademarks and Technology Transfer has finallyresolved Inter Partes Cases Nos. 4216 and 4217.Petitioner appealed to the SC, by way of a Petition forReview hence the instant case.

Meanwhile, the trial court found that the respondentintended to appropriate, copy, and slavishly imitatethe genuine appearance of authentic LEVIs jeans andpass off its LIVEs jeans as genuine LEVIs jeans.Respondent moved for the reconsideration of thedecision, which was denied.

Issue:

WON Levi Strauss may enjoin the respondent fromfurther manufacturing, selling, offering for sale, andadvertising the denim jeans or slacks by using adesign substantially, if not exactly similar to, or acolorable imitation of its trademarks, without a finaladjudication of their respective rights.

Held:

Yes.

(1) Petitioner is a holder of Certificate of RegistrationNo. 1379-A for its Levis trademarks. The registration

gives rise to a presumption of its validity and theright to the exclusive use of the same. An entityhaving a duly registered trademark can file a suitagainst another entity for the protection of its right.He may: (1) Apply to cancel the registration ofanother before the proper court or agency, whichshall exclude any other court or agency fromassuming jurisdiction over a subsequently filedpetition to cancel the same mark; (2) Petition tocancel the mark with the Bureau of Legal Affairs[formerly BPTTT], the earlier filing of which shall notconstitute a prejudicial question that must beresolved before an action to enforce the rights tosame registered mark may be decided; (3) Recoverdamages and in cases where actual intent to mislead

the public or to defraud the complainant is shown, inthe discretion of the court, the damages may bedoubled; and (4) Upon proper showing, may also begranted injunction.

It bears stressing that an action for infringement orunfair competition, including the available remediesof injunction and damages, in the regular courts canproceed independently or simultaneously with anaction for the administrative cancellation of a

registered trademark in the BPTTT. As applied to thepresent case, petitioners prior filing of two interpartes cases against the respondent before theBPTTT for the cancellation of the latters trademarkregistrations, namely, LIVES and LIVES LabelMark, does not preclude petitioners right (as adefendant) to include in its answer (to respondents

complaint for damages in Civil Case No. No. 96-76944) a counterclaim for infringement with a prayerfor the issuance of a writ of preliminary injunction.

(2) The requirement of certification against forumshopping under the Rules is to be executed by thepetitioner, or in the case of a corporation, its dulyauthorized director or officer, but not petitionerscounsel whose professional services have beenengaged to handle the subject case. The reason isthat it is the petitioner who has personal knowledgewhether there are cases of similar nature pendingwith the other courts, tribunals, or agencies. Thus, inthe present case, the Court of Appeals should haveoutrightly dismissed the petition for certiorari filed by

the respondent (as therein petitioner in the appealscourt) due to the defective certification of non-forumshopping.

(3)The writ did not have the effect of prejudging ordisposing of the merits of the case, but merelyenjoined the respondents acts of manufacturing,distributing, selling, or offering for sale the jeanswhich had allegedly incorporated exact or colorableimitations of the products belonging to petitioner.Petitioner has yet to establish during the trial that it isentitled to a permanent injunction by reason ofrespondents confusingly similar LIVES products. Thesole object of a preliminary injunction is to preservethe status quo until the merits of the case can be

heard. Since Section 4 of Rule 58 of the Rules of CivilProcedure gives the trial courts sufficient discretion toevaluate the conflicting claims in an application for aprovisional writ which often involves a factualdetermination, the appellate courts generally will notinterfere in the absence of manifest abuse of suchdiscretion.

N.B. The CA decision was reversed and set aside.Further, the court a quo was ordered to proceed withthe civil case.

CANON KABUSHIKI KAISHA VS. CA

July 20, 2000

Facts:

NSR Rubber Corporation filed an application forregistration of the mark CANON for sandals in theBureau of Patents, Trademarks, and TechnologyTransfer(BPTTT).

An opposition was filed by Canon KabushikiKaisha(CKK), a foreign corporation duly organized andexisting under the laws of Japan. CKK alleged that itwill be damaged by the registration of the trademarkCANON in the name of NSR Rubber Corporation.

The evidence presented by CKK consisted of itscertificates of registration for the mark CANON invarious countries covering goods belonging to class 2(paints, chemical products, toner, and dye stuff).

CKK also submitted in evidence its PhilippineTrademark Registration No. 39398, showing itsownership over the trademark CANON also underclass 2.

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However, the Bureau of Patents, Trademarks, andTechnology Transfer (BPTTT) dismissed the petition ofCKK and gave due course to NSRs application for theregistration of the trademark CANON.

According to BPTTT, the trademark CANON as usedby CKK for its paints, chemical products, toner, anddye stuff, can be used by NSR for its sandals becausethe products of these two parties are dissimilar.

Hence, CKK filed this case arguing that: a) it isentitled to exclusive use of the mark canon because itis its trademark and is used also for footwear; b) toallow NSR to register canon for footwear is to preventCKK from using canon for various kinds of footwear,when in fact, CKK has earlier used said markfor saidgoods; and c) it is also entitled to the right toexclusively use canon to prevent confusion ofbusiness.

Issue:

WON NSR Rubber Corporation may be allowed to use

the mark CANON.

Held:

Yes. When a trademark is used by a party for aproduct in which the other party does not deal, theuse of the same trademark on the latter's productcannot be validly objected to. The certificates ofregistration for the trademark CANON in othercountries and in the Philippines as presented by CKK,clearly showed that said certificates of registrationcover goods belonging to class 2 (paints, chemicalproducts, toner, dyestuff). On this basis, the BPTTTcorrectly ruled that since the certificate ofregistration of petitioner for the trademark CANON

covers class 2 (paints, chemical products, toner,dyestuff), NSR can use the trademark CANON for itsgoods classified as class 25 (sandals). Clearly, thereisa world of difference between the paints, chemicalproducts, toner, and dyestuff of CKK and the sandalsof NSR. The certificate of registration confers uponthe trademark owner the exclusive right to use itsown symbol only to those goods specified in thecertificate, subject to the conditions and limitationsstated therein. Thus, the exclusive right of CKK in thiscase to use the trademark CANON is limited only tothe products covered by its certificate of registration.As to the argument of CKK that there could beconfusion as to the origin of the goods, as well asconfusion of business, if NSR is allowed to register the

mark CANON, the SC ruled that in cases of confusionof business or origin, the question that usually arisesis whether the respective goods or services of thesenior user and the junior user are so related as tolikely cause confusion of business or origin, andthereby render the trademark or tradenamesconfusingly similar. Goods are related when theybelong to the same class or have the samedescriptive properties; when they possess the samephysical attributes or essential characteristics withreference to their form, composition, texture orquality. They may also be related because they servethe same purpose or are sold in grocery stores. Thepaints, chemical products, toner and dyestuff of CKK

that carry the trademark CANON are unrelated tosandals, the product of NSR. The two classes ofproducts in this case flow through different tradechannels. The products of CKK are sold throughspecial chemical stores or distributors while theproducts of NSR are sold in grocery stores, sari-saristores and department stores. Thus, the evidentdisparity of the products of the CKK and NSR rendersunfounded the apprehension of CKK that confusion of

business or origin might occur if NSR is allowed to usethe mark CANON.

FABERGE, INC. VS. IAC

November 4, 1992

Facts:

Co Beng Kay applied for the registration of thetrademark 'BRUTE' to be used for its underwear(briefs) products. The petitioner opposed on theground that there is similarity with their own symbol(BRUT, Brut 33 & Device) used on its aftershave,deodorant, cream shave, hairspray and hairshampoo/soaps and that it would cause injury to theirbusiness reputation. It must be noted that thepetitioner never applied for registration of saidtrademark for its brief products. The Patent Officeallowed Co Beng Kay the registration and this wasfurther affirmed by the Court of Appeals.

Issue:

WON Co Beng Kay may be granted the applicationdespite its similarity with petitioners symbol.

Held:

No. Co Beng Kay may rightly appropriate the mark.Since petitioner has not ventured into the productionof briefs, an item not listed in its certificate ofregistration, it would have no cause of action. Section20 of the Trademark Law provides that the certificateof registration can confer upon petitioner theexclusive right to use its own symbol only to thosegoods specified in the certificate. One who has

adopted and used a trademark on his goods does notprevent the adoption and use of the same trademarkby others for products which are of differentdescription.

Really, if the certificate of registration were to be

deemed as including goods not specified therein,

then a situation may arise whereby an applicant may

be tempted to register a trademark on any and all

goods which his mind may conceive even if he had

never intended to use the trademark for the said

goods. We believe that such omnibus registration is

not contemplated by our Trademark Law.

PEARL & DEAN VS. SM

August 15, 2003

Facts:

Facts: Pearl & Dean (P&D) is engaged in the

manufacture of advertising display units referred to

as light boxes. These units utilize specially printed

posters sandwiched between plastic sheets and

illuminated with backlights. It was able to secure

registration over these illuminated display units. Theadvertising light boxes were marketed under the

trademark Poster Ads.

In 1985, P&D negotiated with defendant Shoemart,

Inc. (SMI) for the lease and installation of the light

boxes in SM North Edsa. However, since SM North

Edsa was under construction, SMI offered as

alternative SM Makati and Cubao. During the signing

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of the Contract, SMI only returned the Contract with

SM Makati. Manager of petitioner reminded SMI that

their agreement includes SM Cubao. However, SMI

did not bother to reply. Instead, respondent informed

petitioner that they are rescinding the contract for SM

Makati due to non-performance.

Two years later, SMI engaged the services of EYD

Rainbow Advertising to make the light boxes. These

were delivered in a staggered basis and installed at

SM Megamall and SM City. In 1989, petitioner

received reports that exact copy of its light boxes was

installed by SMI. It further discovered that North Edsa

Marketing Inc. (NEMI), sister company of SMI, was set

up primarily to sell advertising space in lighted

display units located in SMIs different branches.

Petitioner sent letters to respondents asking them to

cease using the light boxes and the discontinued use

of the trademark Poster Ads. Claiming that SMI and

NEMI failed to meet its demand, petitioner filed acase for infringement of trademark and copy right,

unfair competition and damages. SMI maintained that

it independently developed its poster panels using

commonly known techniques and available

technology without notice of or reference to P&Ds

copyright. In addition, it said that registration of

Poster Ads obtained by petitioner was only for

stationeries such as letterheads, envelopes and the

like. Poster Ads is a generic term which cannot be

appropriated as trademark, and, as such, registration

of such mark is invalid. It also stressed that P&D is

not entitled to the reliefs sought because the

advertising display units contained no copyrightnotice as provided for by law.

The RTC found SMI and NEMI jointly and severally

liable for infringement of copyright and trademark,

but the CA reversed the decision -- saying that it

agreed with SMI that what was copyrighted was the

technical drawings only and not the light boxes. Light

boxes cannot be considered as either prints, pictorial

illustrations, advertising copies, labels, tags or box

wraps, to be properly classified as copyrightable class

O work. In addition, CA stressed that the protective

mantle of the Trademark Law extends only to the

goods used by the first user as specified in its

certificate of registration. The registration of the

trademark Poster Ads covers only stationeries such

as letterheads, envelopes and calling cards and

newsletter.

Issues:

(1) If the engineering or technical drawings of an

advertising display unit are granted copyright

protection is the light box depicted in such drawings

ipso facto also protected by such copyright?

(2) Should the light box be registered separately?

(3) Can the owner of the registered trademark legally

prevent others from using such mark if it is mere

abbreviation of a term descriptive of his goods,

services or business?

Held:

(1) No. Copyright is purely statutory. As such, the

rights are limited to what the statute confers. It may

be obtained and enjoyed only with respect to the

subjects and by the persons, and on the terms and

conditions specified in the statute. Accordingly, it can

cover only the works falling within the statutory

enumeration or description. Petitioner securedcopyright under classification class O work. Thus,

copyright protection extended only to the technical

drawings and not to the light box itself because the

latter was not at all in the category of prints,

pictorial illustrations, advertising copies, labels, tags

and box wraps.

What the law does not include, it excludes, and for

the good reason: the light box was not a literary or

artistic piece which could be copyrighted under the

copyright law. And no less clearly, neither could the

lack of statutory authority to make the light box

copyrightable be remedied by the simplistic act ofentitling the copyright certificate issued by the

National Library as Advertising Display Units.

It must be noted that copyright is confined to literary

and artistic works which are original intellectual

creations in the literary and artistic domain protected

from the moment of their creation.

(2) Yes. Petitioner never secured a patent for the light

boxes. It therefore acquired no patent rights which

could have protected its invention, if in fact it really

was. And because it had no patent, petitioner could

not legally prevent anyone from manufacturing orcommercially using the contraption. To be able to

effectively and legally preclude others from copying

and profiting from the invention, a patent is a

primordial requirement. No patent, no protection. The

ultimate goal of a patent system is to bring new

designs and technologies into the public through

disclosure. Ideas, once, disclosed to the public

without protection of a valid patent, are subject to

appropriation without significant restraint.

The Patent Law has a three-fold purpose: first, patent

law seeks to foster and reward invention; second, it

promotes disclosures of inventions to stimulatefurther innovation and to permit the public to practice

the invention once the patent expires; third, the

stringent requirements for patent protection seek to

ensure that ideas in the public domain remain there

for the free use of the public. It is only after an

exhaustive examination by the patent office that

patent is issued. Therefore, not having gone through

the arduous examination for patents, petitioner

cannot exclude others from the manufacture, sale or

commercial use of the light boxes on the sole basis of

its copyright certificate over the technical drawings.

(3) No. One who has adopted and used a trademarkon his goods does not prevent the adoption and use

of the same trademark by others for products which

are of a different description.

Assuming that Poster Ads could validly qualify as a

trademark, the failure of petitioner to secure a

trademark registration for specific use on the light

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boxes meant that there could not have been any

trademark infringement since registration was an

essential element thereof.

There is no evidence that petitioners use of poster

Ads was distinctive or well-known. This fact also

prevented the application of the doctrine of

secondary meaning. Poster Ads was generic and

incapable of being used as a trademark because it

was used in the field of poster advertising the very

business engaged in by petitioner.

BATA INDUSTRIES, LTD. VS. CA

May 31, 1982

Facts:

The respondent New Olympian Rubber Productssought to register the mark "BATA" for casual rubber

shoe products, alleging it had used the said mark

since the 1970s. The petitioner, a Canadian

corporation opposed with its allegations that it owns

and has not abandoned said trademark. The

petitioner has no license to do business in the

Philippines and the trademark has never been

registered in the Philippines by any foreign entity.

Bata Industries does not sell footwear under the said

trademark in the Philippines nor does it have any

licensing agreement with any local entity to sell its

product.

Evidence shows that earlier, even before the World

War II, Bata shoes made by Gerbec and Hrdina

(Czech company) were already sold in the country.

Some shoes made by the petitioner may have been

sold in the Philippines until 1948. On the other hand,

respondent spent money and effort to popularize the

trademark "BATA" since the 70's. Moreover, it also

secures 3 copyright registrations for the word "BATA".

The Philippine Patent Office (PPO) dismissed the

opposition by the petitioner while the Court of

Appeals (CA) reversed said decision. However, a 2nd

resolution by the CA affirmed the PPO decision.

Issue:

WON petitioner has the right to protect its goodwill

alleged to be threatened with the registration of the

mark.

Held:

No. Bata Industries has no Philippine goodwill that

would be damaged by the registration of the mark.

Any slight goodwill obtained by the product before

World War II was completely abandoned and lost in

the more than 35 years that passed since Manila's

liberation from Japan. The petitioner never used the

trademark either before or after the war. It is also not

the successor-in-interest of Gerbec & Hrdina and

there was no privity of interest between them,

Furthermore, the Czech trademark has long been

abandoned in Czechoslovakia.

EMERALD GARMENT MANUFACTURING VS. CA

December 29, 1995

Facts:

On 18 September 1981 H.D. Lee Co., Inc.,(Delaware,

U.S.A.) filed with the BPTTT a Petition for Cancellation

of Registration No.SR 5054 (Supplemental Register)

for the trademark "STYLISTIC MR. LEE" used on skirts,

jeans, blouses, socks, briefs, jackets, jogging suits,

dresses, shorts, shirts and lingerie under Class 25,

issued on 27October 1980 in the name of Emerald

Garment (Philippines).

H.D. Lee Co. invokes Sec. 37 of R.A. No.166(Trademark Law) and Art. VIII of the Paris Convention

for the Protection of Industrial Property, averred that

petitioner's trademark "so closely resembled its own

trademark, 'LEE' as previously registered and used in

the Philippines, and not abandoned, as to be likely,

when applied to or used in connection with

petitioner's goods, to cause confusion, mistake and

deception on the part of the purchasing public as to

the origin of the goods."

The Director of Patents rendered a decision granting

H.D. Lee's petition for cancellation and opposition to

registration.

Using the test of dominancy, Director of Patents

declared that petitioner's trademark was confusingly

similar to private respondent's mark because "it is

the word 'Lee' which draws the attention of the buyer

and leads him to conclude that the goods originated

from the same manufacturer. It is undeniably the

dominant feature of the mark."

The CA affirmed the Director of Patents' decision.

Issue:

WON H. D. Lee's prior registration is enough to confer

upon it the exclusive ownership of the trademark

Lee.

Held:

No. It was only on the date of publication and

issuance of the registration certificate that private

respondent may be considered "officially" put on

notice that petitioner has appropriated or is using

said mark, which, after all, is the function and

purpose of registration in the supplemental register.

The essential element of infringement is colorable

imitation. This term has been defined as "such a close

or ingenious imitation as to be calculated to deceive

ordinary purchasers, or such resemblance of the

infringing mark 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."

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Colorable imitation refers to such similarity in form,

content, words, sound, meaning, special

arrangement, or general appearance of the

trademark or trade name with that of the other mark

or trade name in their over-all presentation or in their

essential, substantive and distinctive parts as would

likely mislead or confuse persons in the ordinarycourse of purchasing the genuine article.

2 TESTS:

Test of Dominancy: If the competing trademarkcontains the main or essential or dominant features

of another by reason of which confusion and

deception are likely to result, the infringement takes

place. Duplication or imitation is not necessary, a

similarity in the dominant features of the trademark

would be sufficient.

The likelihood of confusion is further made more

probable by the fact that both parties are engaged in

the same line of business. It is well to reiterate that

the determinative factor in ascertaining whether or

not the marks are confusingly similar to each other is

not whether the challenged mark would actually

cause confusion or deception of the purchasers but

whether the use of such mark would likely cause

confusion or mistake on the part of the buying public.

Holistic Test: Mandates that the entirety of themarks in question must be considered in determining

confusing similarity.

The trademarks in their entirety as they appear in

their respective labels or hangtags must also 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 in both labels in order

that he may draw his conclusion whether one is

confusingly similar to the other.

Moreover, "LEE" is primarily a surname. Private

respondent cannot, therefore, acquire exclusive

ownership over and singular use of said term. Private

respondent also failed to prove prior actualcommercial use of its "LEE" trademark in the

Philippines before filing its application for registration

with the BPTTT and hence, has not acquired

ownership over said mark. 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.

For lack of adequate proof of actual use of its

trademark in the Philippines prior to petitioner's use

of its own mark and for failure to establish confusing

similarity between said trademarks, private

respondent's action for infringement must necessarily

fail.

ASIA BREWERY, INC. VS. CA

July 5, 1993

Facts:

San Miguel Corporation (SMC) filed a complaint

against Asia Brewery Inc. (ABI) for infringement of

trademark and unfair competition on account of the

latter's BEER PALE PILSEN or BEER NA BEER product

which has been competing with SMC's SAN MIGUEL

PALE PILSEN for a share of the local beer market.

The trial court dismissed SMC's complaint because

ABI "has not committed trademark infringement or

unfair competition against" SMC

On appeal by SMC, the Court of Appeals reversed the

decision rendered by the trial court, finding thedefendant Asia Brewery Incorporated GUILTY of

infringement of trademark and unfair competition.

ABI then filed a petition for certiorari.

Issue:

WON the words PALE PILSEN as part of ABIs

trademark constitute infringement of SMCs

trademark.

Held:

No. The dominant feature of SMCs trademark is SanMiguel Pale Pilsen while ABIs is Beer Pale Pilsen.

The word Beer does not appear in SMCs product,

nor the words San Miguel appear in ABIs product.

Neither the sound, spelling nor appearance can Beer

Pale Pilsen be said to be confusingly similar to San

Miguel Pale Pilsen.

San Miguel does not have exclusive rights to the

generic or descriptive words pale and pilsen.

Verily, generic or descriptive words belong to the

public domain and cannot thus be appropriated.

Neither does San Miguel have the exclusive right touse the 320 ml. steinie bottle with white rectangular

label. The amber color is a functional feature of the

beer bottle as the color prevents the transmission of

light and provides the maximum protection to beer.

The bottle capacity is the standard prescribed by the

Metric System Board of the Department of Trade. The

white label is the most economical to use and

presents the strongest contrast to the bottle. San

Miguel cannot claim monopoly to such features as the

protection provided by law is confined to non-

functional features. Further, Beer Pale Pilsen is not

being passed off as San Miguel Beer Pale Pilsen. It

does not result to confusion inasmuch as beer isordered by brand, and is not taken freely from

supermarket shelves. The points of dissimilarity of

the products outnumber their points of similarity.

SOCIETE DES PRODUITS NESTL VS. CA

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April 4, 2001

Facts:

On January 18, 1984, private respondent CFC

Corporation filed with the BPTTT an application forthe

registration of the trademark "FLAVOR MASTER" for

instant coffee.

Petitioner Societe Des Produits Nestle, S.A., a Swiss

company registered under Swiss laws anddomiciled in

Switzerland, filed an unverified Notice of Opposition,

claiming that the trademark of private respondents

product is "confusingly similar to its trademarks for

coffee and coffee extracts, to wit: MASTER ROAST

and MASTER BLEND."

A verified Notice of Opposition was filed by Nestle

Philippines, Inc., a Philippine corporation and

alicensee of Societe Des Produits Nestle S.A., against

CFCs application for registration of the trademark

FLAVOR MASTER.

Nestle claimed that the use, if any, by CFC of the

trademark FLAVOR MASTER and its registration would

likely cause confusion in the trade; or deceive

purchasers and would falsely suggest to the

purchasing public a connection in the business of

Nestle, as the dominant word present in the three (3)

trademarks is "MASTER"; or that the goods of CFC

might be mistaken as having originated from the

latter.

In answer to the two oppositions, CFC argued that its

trademark, FLAVOR MASTER, is not confusingly

similar with the formers trademarks, MASTER ROAST

and MASTER BLEND, alleging that, "except for the

word MASTER (which cannot be exclusively

appropriated by any person for being a descriptive or

generic name), the other words that are used

respectively with said word in the three trademarks

are very different from each other in meaning,

spelling, pronunciation, and sound".

The BPTTT denied CFCs application for registration.

The CA reversed the BPTTTs decision and ordered

the Director of Patents to approve CFCs application.

Hence this petition before the SC.

Issue:

WON the CA erred in reversing the decision of the

BPTTT denying CFCs petition for registration.

Held:

Yes. Colorable imitation denotes such a close or

ingenious imitation as to be calculated to deceive

ordinary persons, or such a resemblance to theoriginal 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.

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.

On the other side of the spectrum, the holistic test

mandates that the entirety of the marksin 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 word sand compare the spelling

and pronunciation of said words.

In determining whether two trademarks are

confusingly similar, the two marks in their entirety as

they appear in the respective labels must be

considered in relation to the goods to which they are

attached; the discerning eye of the observer must

focus not only on the predominant words but also on

the other features appearing on both labels.

In the case at bar, other than the fact that both

Nestles and CFCs products are inexpensive and

common household items, the similarity ends there

What is being questioned here is the use by CFC of

the trademark MASTER. In view of the difficulty of

applying jurisprudential precedents to trademark

cases due to the peculiarity of each case, judicial fora

should not readily apply a certain test or standard

just because of seeming similarities. As this Court has

pointed above, there could be more telling

differences than similarities as to make a

jurisprudential precedent inapplicable.

The Court of Appeals held that the test to be applied

should be the totality or holistic test, 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 toclosely examine specific details of similarities and

dissimilarities between competing products.

This Court cannot agree with the above reasoning. If

the ordinary purchaser is "undiscerningly rash" in

buying such common and inexpensive household

products as instant coffee, and would therefore be

"less inclined to closely examine specific details of

similarities and dissimilarities" between the two

competing products, then it would be less likely for

the ordinary purchaser to notice that CFCs trademark

FLAVOR MASTER carries the colors orange and mocha

while that of Nestles uses red and brown.

The application of the totality or holistic test is

improper since the ordinary purchaser would not be

inclined to notice the specific features, similarities or

dissimilarities, considering that the product is an

inexpensive and common household item.

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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 orholistic 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.

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.

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 ingredientsof 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 andperception 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. Assuch, 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 INTL HOTEL MANAGEMENT VS. CA

June 21, 2001

Facts:

On June 21, 1988, the Shangri-La International Hotel

Management, Ltd., Shangri-La Properties, Inc., Makati

Shangri-La Hotel and Resort, Inc. and Kuok Philippine

Properties, Inc., 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 latters 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 hotelsin 1975, much earlier than the alleged first use by the

Developers Group in 1982.

Likewise, the Shangri-La Group filed with the BPTTT

its own application for registration of the subject

mark and logo. The Developers Group filed an

opposition to the application.

Almost three (3) years later, the Developers Group

instituted with the RTC a complaint for infringement

and damages with prayer for injunction. When the

Shangri-La Group moved for the suspension of the

proceedings, the trial court denied such in aResolution.

The Shangri-La Group filed a Petition for Certiorari

before the CA, which was dismissed.

Issue:

WON the infringement case could proceed

independently of the cancellation case.

Held:

Yes. The institution of an inter partes case for

cancellation of a mark with the BPTT (now Bureau ofLegal Affairs) does not bar the adverse party from

filing a subsequent action for infringement with the

regular courts of justice in connection with the same

registered mark. This is because the certificate of

registration, 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.

Furthermore, the issue raised before the BPTT is quite

different from that raised in the trial court. The issue

raised before the BPTT was whether the mark

registered by the Developers Group is subject to

cancellation, as the Shangri-La Group claims prior

ownership of the disputed mark. On the other hand,

the issue raised before the trial court was whether

Shangri-La Group infringed upon the rights of

Developers Group within the contemplation of Sec. 22

of R.A. 166.

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NBI-MICROSOFT CORP. VS. HWANG

June 21, 2005

Facts:

In May 1993, Microsoft and Beltron Computer

Philippines, Inc. entered into a Licensing Agreement.

Under Section 2(a) of the Agreement Microsoft

authorized Beltron, for a fee, to:

Reproduce and install no more than one copy of

Windows on each Customer System hard disk;

Distribute directly or indirectly and license copies of

Windows (reproduced as per Section 2 of the

Agreement and/or acquired from an Authorized

Replicator or Authorized Distributor.

Their agreement allowed either party to terminate ifone fails to comply with their respective obligations.

Microsoft terminated the Agreement in June 1995 by

reason of Beltrons non-payment of royalties. Later,

Microsoft learned that Beltron was illegally copying

and selling copies of Windows. Microsoft then sought

the assistance of the National Bureau of

Investigation. NBI agents made some purchase from

Beltron where they acquired a computer unit pre-

installed with Windows, 12 windows installer CDs

packed as Microsoft products. The agents were not

given the end-user license agreements, user

manuals, and certificates of authenticity for the

products purchased. They were given a receipt which

has a header of T.M.T.C. (Phils) Inc. BELTRON

COMPUTER. TMTC stands for Taiwan Machinery

Display and Trade Center.

A search warrant was subsequently issued where

2,831 CDs of Windows installers, among others, were

seized. Based on the items seized from Beltron,

Microsoft filed a case of copyright infringement

against Beltron and TMTC as well as their officers

(Hwang et al) before the Department of Justice (DOJ).

Beltron, in its counter-affidavit, argued the following:

That Microsofts issue with Beltron was really just to

have leverage in forcing Beltron to pay the unpaid

royalties; and that Microsoft should have filed a

collection suit.

That the computer unit allegedly purchased by the

NBI agents from them cannot be decisively traced as

coming from Beltron because the receipt issued to

the agents did not list the computer unit as one of the

items bought.

That the 12 installers purchased by the agents which

are actually listed in the receipt were not

manufactured by Beltron but rather they were

genuine copies purchased by TMTC from an

authorized Microsoft seller in Singapore.

That the 2,831 installers seized from them were not a

property of Beltron but rather they were left to them

by someone for safekeeping.

The DOJ secretary agreed with Beltron and dismissed

the case. The Secretary ruled that the issue of the

authority of Beltron to copy and sell Microsoft

products should first be resolved in a civil suit.

Microsoft appealed the decision of the DOJ secretary

before the Supreme Court. Meanwhile, Beltron filed a

motion to quash the search warrant before the RTCthat issued the same. The RTC partially granted the

quashal. The Court of Appeals reversed the RTC.

Hwang et al did not appeal the CA decision.

Issue:

WON the gravamen of copyright infringement is

merely unauthorized manufacturing of intellectual

works.

Held:

No. Copyright infringement is not merely

unauthorized manufacturing of intellectual works,

but rather the unauthorized performance of any of

the acts covered by Sec.5 i.e. to copy, distribute,

multiply and sell intellectual works. Hence, any

person who performs any of the acts under Section 5

without obtaining the copyright owners prior consent

renders himself civilly and criminally liable for

copyright infringement.

Infringement of a copyright is a trespass on a private

domain owned and occupied by the owner of the

copyright, and, therefore, protected by law, and

infringement of copyright, or piracy, which is a

synonymous term in this connection, consists in the

doing by any person, without the consent of the

owner of the copyright, of anything the sole right to

do which is conferred by statute on the owner of the

copyright.

Being the copyright and trademark owner of Microsoft

software, Microsoft acted well within its rights in filing

the complaint before DOJ on the incriminating

evidence obtained from Beltron. Hence, it was highly

irregular for the DOJ to hold that Microsoft sought the

issuance of the search warrants and the filing of the

complaint merely to pressure Beltron to pay itsoverdue royalties to Microsoft.

There is no basis for the DOJ to rule that Microsoft

must await a prior resolution from the proper court

of whether or not the Agreement is still binding

between the parties. Beltron has not filed any suit to

question Microsofts termination of the Agreement.

Microsoft can neither be expected nor compelled to

wait until Beltron decides to sue before Microsoft can

seek remedies for violation of its intellectual property

rights.

Furthermore, the articles seized from Beltron arecounterfeit per se because Microsoft does not (and

could not have authorized anyone to) produce such

CD installers The copying of the genuine Microsoft

software to produce these fake CDs and their

distribution are illegal even if the copier or distributor

is a Microsoft licensee. As far as these installer CD-

ROMs are concerned, the Agreement (and the alleged

question on the validity of its termination) is

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immaterial to the determination of Beltrons liability

for copyright infringement and unfair competition.

Beltrons defense that the box of CD installers found

in their possession was only left to them for

safekeeping is not tenable.

PRO-LINE SPORTS CENTER VS. CA

October 23, 1997

Facts:

By virtue of its merger with A.G. Spalding Bros., Inc.,

on 31 December 1971, QUESTOR, a US-based

corporation, became the owner of the trademark

"Spalding", while PRO LINE is the exclusive distributor

of "Spalding" sports products in the Philippines.

UNIVERSAL, on the other hand, is a domestic

corporation engaged in the sale and manufacture ofsporting goods while Monico Sehwani is impleaded in

his capacity as president of the corporation.

16 years ago, Edwin Dy Buncio, General Manager of

PRO LINE, sent a letter-complaint to the NBI regarding

the alleged manufacture of fake "Spalding" balls by

UNIVERSAL. By virtue of a search warrant, some

1,200 basketballs and volleyballs marked "Spalding"

were seized and confiscated by the NBI. The molds,

rubber mixer, boiler and other instruments at

UNIVERSAL's factory, which were too impracticable to

be seized, were ordered by Judge Rizalina Vera to be

sealed and padlocked, as the said items were simply

too heavy to be removed from the premises and

brought under the actual physical custody of the

court. Upon motion of UNIVERSAL, Judge Vera

ordered the lifting of the seal and padlock on the

machineries, prompting the People of the Philippines,

the NBI, together with PRO LINE and QUESTOR, to file

with the CA a joint petition for certiorari and

prohibition with preliminary injunction. The CA

granted the TRO.

Meanwhile, PRO LINE and QUESTOR filed a criminal

complaint for unfair competition against respondent

Monico Sehwani together with Robert, Kisnu, Arjan

and Sawtri, all surnamed Sehwani, and Arcadio del los

Reyes before the Provincial Fiscal of Rizal. The

complaint was dropped on 24 June 1981 for the

reason that it was doubtful whether QUESTOR had

indeed acquired the registration rights over the mark

"Spalding" from A. G. Spalding Bros., Inc., and

complainants failed to adduce an actual receipt for

the sale of "Spalding" balls by UNIVERSAL. On 9 July

1981 a petition for review seeking reversal of the

dismissal of the complaint was filed with the Ministry

of Justice.

While this was pending, the CA rendered judgment

affirming the order of Judge Vera. The People, NBI,

PRO LINE and QUESTOR challenged the decision of

the appellate court. Before the SC, a TRO was

granted against the CA vis--vis the aforesaid

decision.

In connection with the criminal complaint for unfair

competition, the Minister of Justice issued on 10

September 1981 a Resolution overturning the earlier

dismissal of the complaint and ordered the Provincial

Fiscal of Rizal to file an Information for unfair

competition against Monico Sehwani, which was

complied with. Sehwani pleaded not guilty to thecharge.

But, while he admitted to having manufactured

"Spalding" basketballs and volleyballs, he

nevertheless stressed that this was only for the

purpose of complying with the requirement of

trademark registration with the Philippine Patent

Office. He cited Chapter 1, Rule 43, of the Rules of

Practice on Trademark Cases, which requires that the

mark applied for be used on applicant's goods for at

least sixty (60) days prior to the filing of the

trademark application and that the applicant must

show substantial investment in the use of the mark.He also disclosed that UNIVERSAL applied for

registration with the Patent Office on 20 February

1981.

After the prosecution rested its case, Sehwani filed a

demurrer to evidence arguing that the act of selling

the manufactured goods was an essential and

constitutive element of the crime of unfair

competition under Art. 189 of the Revised Penal

Code, and the prosecution was not able to prove that

he sold the products. In its Order of 12 January 1981

the trial court granted the demurrer and dismissed

the charge against Sehwani.

PRO LINE and QUESTOR impugned before the SC the

dismissal of the criminal case. The SC consolidated

the aforesaid criminal and civil cases, and found that:

the dismissal by the trial court of the criminal case

was based on the merits of the case which amounted

to an acquittal and that the civil case had already

been rendered moot and academic by the acquittal of

Sehwani.

Thereafter, UNIVERSAL and Sehwani filed a civil case

for damages with the RTC of Pasig against PRO LINE

and QUESTOR for the suits previously filed by thelatter against the former, alleging that they were

malicious and without legal bases. Defendants PRO

LINE and QUESTOR denied all the allegations in the

complaint and filed a counterclaim for damages

based mainly on the unauthorized and illegal

manufacture by UNIVERSAL of athletic balls bearing

the trademark "Spalding." The trial court granted the

claim of UNIVERSAL. On appeal, the decision of the

trail court was only affirmed by the CA.

Issue:

WON the respondents' act may constitute unfaircompetition even if the element of selling has not

been proved, thereby absolving the petitioners from

liability for damages.

Held:

Yes. Arguably, respondents' act may constitute unfair

competition even if the element of selling has not

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been proved. To hold that the act of selling is an

indispensable element of the crime of unfair

competition is illogical because if the law punishes

the seller of imitation goods, then with more reason

should the law penalize the manufacturer. In U. S. v.

Manuel, the Court ruled that the test of unfair

competition is whether certain goods have beenintentionally clothed with an appearance which is

likely to deceive the ordinary purchasers exercising

ordinary care. In this case, it was observed by the

Minister of Justice that the manufacture of the

"Spalding" balls was obviously done to deceive

would-be buyers. The projected sale would have

pushed through were it not for the timely seizure of

the goods made by the NBI. That there was intent to

sell or distribute the product to the public cannot also

be disputed given the number of goods manufactured

and the nature of the machinery and other equipment

installed in the factory.

The criminal complaint for unfair competition,

including all other legal remedies incidental thereto,

was initiated by petitioners in their honest belief that

the charge was meritorious. The law brands business

practices which are unfair, unjust or deceitful not only

as contrary to public policy but also as inimical to

private interests. In the instant case, we find quite

aberrant Sehwani's reason for the manufacture of

1,200 "Spalding" balls, i.e., the pending application

for trademark registration of UNIVERSAL with the

Patent Office, when viewed in the light of his

admission that the application for registration with

the Patent Office was filed on 20 February 1981, agood nine (9) days after the goods were confiscated

by the NBI. This apparently was an afterthought but

nonetheless too late a remedy. Be that as it may,

what is essential for registrability is proof of actual

use in commerce for at least sixty (60) days and not

the capability to manufacture and distribute samples

of the product to clients.

A resort to judicial processes is not per se evidence of

ill will upon which a claim for damages may be based.

A contrary rule would discourage peaceful recourse to

the courts of justice and induce resort to methods

less than legal, and perhaps even violent.

We are more disposed, under the circumstances, to

hold that PRO LINE as the authorized agent of

QUESTOR exercised sound judgment in taking the

necessary legal steps to safeguard the interest of its

principal with respect to the trademark in question. If

the process resulted in the closure and padlocking of

UNIVERSAL's factory and the cessation of its business

operations, these were unavoidable consequences of

petitioners' valid and lawful exercise of their right.

One who makes use of his own legal right does no

injury. Qui jure suo utitur nullum damnum facit. If

damage results from a person's exercising his legal

rights, it is damnum absque injuria.

CONVERSE RUBBER CORP. VS. UNIVERSALRUBBER PRODUCTS

January 8, 1987

Facts:

Universal Rubber Products filed an application with

the Patents office for the registration of the

trademark Universal Converse and Device used on

rubber shoes and rubber slippers. Converse Rubber

Corp. filed its opposition on the ground that the

trademark is confusingly similar to the word

converse which was part of its corporate name, and

which would result in injury to its business reputation

and goodwill. The director of Patents dismissed

converse Rubbers opposition. With its motion for

reconsideration denied, it filed a petition for review

with the Supreme Court.

Issue:

Whether Universal Rubber can appropriate

Converse.

Held:

No. Converse Rubber has earned a business

reputation and goodwill in the Philippines. The word

converse has been associated with its products,

converse chuck Taylor, Converse all Star, All

Star Converse Chuck Taylor, or Converse Shoes

Chuck and Taylor. Converse has grown to be

identified with Converse rubber products and has

acquired a second meaning within the context of

trademark and trad ename laws. There is confusing

similarity between Universal converse and Device

and Converse Chuck Taylor and All Star Device

which would confuse the public to the prejudice of

Converse Rubber inasmuch as Universal Converse

and Device is imprinted in a circular manner on the

side of its rubber shoes, similar to that of Converse

Chuck Taylor.

The similarity in the general appearance of

respondent's trademark and that of petitioner would

evidently create a likelihood of confusion among the

purchasing public. But even assuming, arguendo, that

the trademark sought to be registered by respondent

is distinctively dissimilar from those of the petitioner,

the likelihood of confusion would still subsists, not on

the purchaser's perception of the goods but on the

origins thereof. By appropriating the word

"CONVERSE," respondent's products are likely to be

mistaken as having been produced by petitioner. The

risk of damage is not limited to a possible confusion

of goods but also includes confusion of reputation if

the public could reasonably assume that the goods of

the parties originated from the same source.

AIR PHILIPPINES VS. PENNSWELL

Facts:

Petitioner Air Philippines Corporation is a domestic

corporation engaged in the business of air

transp