trademarks case digests

8/9/2019 Trademarks Case Digests

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TRADEMARKS Cases

1. G.R. No. 48226, December 14, 1942ANA L. ANG, pe!!o"er, #s. T$R%&%$TE$D$R$, respo"'e".

(acs)

Toribio Teodoro has continuously used Ang Tibayboth as a trademark and tradename, in themanufacture and sale of slippers, shoes andindoor baseballs since 1910. He formallyregistered it as trademark on eptember 191!and as a tradename in 19"". #etitioner registeredthe same trademark Ang Tibay for pants andshirts in 19"$. #etitioner no% assails the &alidityof respondent's trademark. He contends that thephrase Ang Tibay is a descripti&e term andtherefore, cannot be sub(ect of a trademark.#etitioner claims also that respondent committedinfringement %ith regard to the trademark Ang

Tibay. The )T* ruled in fa&or of the petitioner,absol&ing Ana Ang from the complaint on theground that t%o trademarks are dissimilar andare used on di+erent and noncompeting goods-that there had been no fraud on the use of saidtrademarks. Ho%e&er, the *A re&ersed the rulingof the )T*, holding that by uninterrupted andeclusi&e use since 1910 in the manufacture ofslippers, shoes, Teodoro's trademark has ac/uiredsecondary meaning- that the goods or articles on%hich the t%o trademarks are used are similar orbelong to the same class- and that the use byAna Ang petitioner of said trademarkconstitutes a &iolation of ection" and 2 of Act 3444.

%ss*es)

1. 5hether or not the %ords Ang Tibay is adescripti&e term.

$. 5hether or not the %ords Ang Tibay hadac/uired a secondary meaning

". 5hether or not the pants and shirts are goodssimilar to shoes and slippers %ithin the meaningof ections " and 2 of Act 3 444

+e')

1. The %ords Ang Tibay is an eclamationdenoting admiration of strength or durability. 6t isne&er used ad(ecti&ely to de7ne or describe anob(ect. Hence, the term is 8T a descripti&e %ord%ithin the meaning of the Trade:ark ;a% butrather a fanciful or coined phrase %hich mayproperly and legally be appropriated as atrademark or tradename.

$. 6t is unnecessary to apply the enson and Hedges*anada, 6nc., and ?abri/ues of Tabac )eunies.A., are ascribing %himsical eercise of thefaculty conferred upon magistrates by ection 4,)ule !@ of the )e&ised )ules of *ourt %henrespondent *ourt of Appeals lifted the %rit ofpreliminary in(unction it earlier had issued against?ortune Tobacco *orporation, herein pri&aterespondent, from manufacturing and selling:A)B cigarettes in the local market.

>anking on the thesis that petitionersC respecti&e

symbols :A)B D66, :A)B TE8, and ;A)Balso for cigarettes, must be protected againstunauthoriFed appropriation, petitioners t%icesolicited the ancillary %rit in the course the mainsuit for infringement but the court of origin %asunpersuaded.

Respondents Claim:

?ortune Tobacco *orporation admittedpetitionersC certi7cates of registration %ith the#hilippine #atent =ce sub(ect to the a=rmati&e


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and special defense on mis(oinder of partyplainti+s. #ri&ate respondent alleged further thatit has been authoriFed by the >ureau of 6nternal)e&enue to manufacture and sell cigarettesbearing the trademark :A)B, and that :A)Bis a common %ord %hich cannot be eclusi&elyappropriated.

%ss*e)

5hether to grant the petition of #hilip :orris/uestioning the lifting of the preliminaryin(unction by the *ourt of Appeals

+e')

8. 6n point of ad(ecti&e la%, the petition has itsroots on a remedial measure %hich is butancillary to the main action for infringement stillpending factual determination before the court oforigin. 6t is &irtually needless to stress the ob&iousreality that critical facts in an infringement caseare not before us more so %hen e&en Gustice?elicianoCs opinion obser&es that the e&idence isscanty and that petitioners ha&e yet to submitcopies or photographs of their registered marksas used in cigarettes %hile pri&ate respondenthas not, for its part, submitted the actual labelsor packaging materials used in selling its :arkcigarettes. #etitioners therefore, may not bepermitted to presume a gi&en state of facts ontheir so called right to the trademarks %hichcould be sub(ected to irreparable in(ury and in theprocess, suggest the fact of infringement. uch aploy %ould practically place the cart ahead of the

horse.

-. G.R. No. 11478, No#ember 19, 19990R%&+DAS . M%R05R%, pe!!o"er, #s. C$5RT$( A00EALS, D%RECT$R $( 0ATENTS a"' e&AR&%$N C$R0$RAT%$N, respo"'e"s.

(acs)

;olita Escobar 7led an application %ith the#hilippine >ureau of #atents on Gune 1!, 1920 forthe registration of the trademark >arbiFon foruse in brassieres and ladies undergarments

>arbiFon *orporation, a corporation organisedand doing business under the la%s of 8e% ork.,I..A., 7led an opposition to the application

arbiFon products

The certi7cate of registration of Escobar %ascancelled by the >ureau of #atents %hen shefailed to 7le the A=da&it of Ise of the trademarkre/uired by )epublic Act 8o. 144, the #hilippine

Trademark ;a%.

Escobar reapplied for registration of the cancelledtrademark and assigned her application topetitioner and the application %as opposed bypri&ate respondent.>arbiFon *orp alleges its trademark is /uali7edas %ellkno%n and is therefore protected by the*on&ention of #aris for the #rotection o6ntellectual #roperty %hich the #hilippines hasbound to enforce.

pposition is hereby A))E< by res(udicata and is hereby


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6t is a selfeecuting pro&ision and does notre/uire legislati&e enactment to gi&e it e+ect inthe member country.

LLLLLLLLLLLLLLLLLTrademark in ).A. 8o. @$9", the 6ntellectual#roperty *ode of the #hilippinesK de7nes as any&isible sign capable of distinguishing goods. 6n#hilippine (urisprudence, the function of atrademark is to point out distinctly the origin oro%nership of the goods to %hich it is a=ed- tosecure to him, %ho has been instrumental inbringing into the market a superior article ofmerchandise, the fruit of his industry and skill- toassure the public that they are procuring thegenuine article- to pre&ent fraud and imposition-and to protect the manufacturer againstsubstitution and sale of an inferior and di+erentarticle as his product.

4. G.R. No. :427, No#ember 1, 1991KA&5S+% KA%S+A %SETAN, aso ;"o


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N Any good%ill, reputation, or kno%ledgeregarding the name 6setann is purely the %ork ofthe pri&ate respondent.

N 6setann


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design are t%o di+erent marks- and that there isabsolutely no likelihood of confusion, mistake ordeception to purchasers through the concurrentuse of the petitionerCs mark Dictorias %ith adiamond design and the respondentsC markDalentine %ith a design in connection %ithsugar.

The


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M%LL%NG C$R0$RAT%$N a"' T%&5RC%$ S.EALLE, !" !s capac!/ as D!recor o?0ae"s, respo"'e"s.

(acs)

n ros. *o. Ho%e&er, because oincreased taes and subsidies, *entennial :illsdiscontinued shipments of Sour in the #hilippinesand e&entually sold its brands for %heat Sourincluding All :ontana brand to respondentReneral :illing *orporation in consideration of1,000 shares of stock of respondent corporation%ith a par &alue of #100.00 per share or a total of#100, 000. 00. )espondent Reneral :illing*orporation, since the start of the operation in1941 of its Sour mills located in ;apulapu *ity


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*ebu has been manufacturing and selling All:ontana Sour in the #hilippines.

:. G.R. No. 1699:4, Apr! 27, 2717S50ER%$R C$MMERC%AL ENTER0R%SES, %NC.,0e!!o"er, #s. K5NNAN ENTER0R%SES LTD.AND S0$RTS C$NCE0T D%STR%&5T$R,%NC., Respo"'e"s.

n ?ebruary $", 199", I#E)6) 7led acomplaint for trademark infringement and unfaircompetition %ith preliminary in(unction againstBI88A8 and #)T *8*E#T %ith the )T*,docketed as *i&il *ase 8o. U9"01M@@@.

6n support of its complaint, I#E)6) 7rstclaimed to be the o%ner of the trademarks,trading styles, company names and businessnames VBE88EWX, VBE88EW


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the >ureau of ;egal A+airs of the 6ntellectual#roperty =ce 6# against respondents#resident and ?ello%s of Har&ard *ollege Har&ardIni&ersity, a corporation organiFed and eistingunder the la%s of :assachusetts, Inited tates ofAmerica.

?redco alleged that the mark Har&ard for tshirts, polo shirts, sandos, briefs, (ackets andslacks %as 7rst used in the #hilippines on $

Ganuary 19@$ by 8e% ork Rarments:anufacturing Eport *o., 6nc. 8e% orkRarments, a domestic corporation and ?redco'spredecessorininterest. A certi7cate ofregistration %as issued %ith a $0year term,rene%able.

?redco alleged that at the time of issuance of)egistration 8o. !4!41 to Har&ard Ini&ersity,

8e% ork Rarments had already registered themark Har&ard for goods under *lass $!. ?redcoalleged that the registration %as cancelled on "0

Guly 199@ %hen 8e% ork Rarments inad&ertentlyfailed to 7le an a=da&it of use]nonuse on the7fth anni&ersary of the registration but the rightto the mark Har&ard remained %ith itspredecessor 8e% ork Rarments and no% %ith?redco.

Har&ard Ini&ersity, on the other hand, alleged

that it is the la%ful o%ner of the name and markHar&ard in numerous countries %orld%ide,including the #hilippines. Har&ard Ini&ersityalleged that in :arch $00$, it disco&ered, throughits international trademark %atch program,?redco's %ebsite %%%.har&ardusa.com. The%ebsite ad&ertises and promotes the brand nameHar&ard Geans IA %ithout Har&ard Ini&ersity'sconsent.

The %ebsite's main page sho%s an oblong logobearing the mark Har&ard Geans IA^,Established 19"4, and *ambridge,:assachusetts. n $0 April $00M, Har&ardIni&ersity 7led an administrati&e complaintagainst ?redco before the 6# for trademarkinfringement and]or unfair competition %ithdamages.

Har&ard Ini&ersity stated that it ne&er authoriFedor licensed any person to use its name and markHar&ard in connection %ith any goods orser&ices in the #hilippines.

- eltranAbelardo of the>ureau of ;egal A+airs, 6# cancelledHar&ard Ini&ersity's registration of themark Har&ard under *lass $!

- Har&ard Ini&ersity 7led an appeal beforethe =ce of the


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- the #hilippines and the Inited tates ofAmerica are both signatories to the #aris*on&ention for the #rotection of 6ndustrial#roperty #aris *on&ention. The#hilippines became a signatory to the#aris *on&ention on $2 eptember 194!.

-A)T6*;E 4bis

- i The countries of the Inionundertake either administrati&ely iftheir legislation so permits, or atthe re/uest of an interested party,to refuse or to cancel theregistration and to prohibit the useof a trademark %hich constitutes areproduction, imitation ortranslation, liable to createconfusion or a mark considered bythe competent authority of the

country as being already the markof a person entitled to the bene7tsof the present *on&ention and usedfor identical or similar goods . Thesepro&isions shall also apply %henthe essential part of the markconstitutes a reproduction of anysuch %ellkno%n mark or animitation liable to create confusionthere%ith .

- A)T6*;E @

-

A trade name shall be protected inall the countries of theInion %ithout the obligation of7ling or registration, %hether or notit forms part of a trademark.Emphasis supplied

- Inder Article @ of the #aris *on&ention, as%ell as ection "2 of ).A. 8o. 144, Har&ardIni&ersity is entitled to protection in the#hilippines of its trade name Har&arde&en %ithout registration of such tradename in the #hilippines. This means that

no educational entity in the #hilippinescan use the trade name Har&ard %ithoutthe consent of Har&ard Ini&ersity.;ike%ise, no entity in the #hilippines canclaim, epressly or impliedly through theuse of the name and mark Har&ard, thatits products or ser&ices are authoriFed,appro&ed, or licensed by, or sourced from,Har&ard Ini&ersity %ithout the latter'sconsent.

- To be protected under the t%o directi&es ofthe :inistry of Trade, an internationally

%ellkno%n mark need not be registered orused in the #hilippines."$All that isre/uired is that the mark is %ellkno%ninternationally and in the #hilippines foridentical or similar goods, %hether or notthe mark is registered or used in the#hilippines.

- There is no /uestion then, and this *ourtso declares, that Har&ard is a %ellkno%n name and mark not only in theInited tates but also internationallyincluding the #hilippines. The markHar&ard is rated as one of the mostfamous marks in the %orld. 6t has beenre=!sere'in at least !0 countries. 6t hasbeen used and promoted etensi&ely innumerous publications %orld%ide. 6t hasestablished a considerable good%il%orld%ide since the founding of Har&ardIni&ersity more than "!0 years ago. 6t iseasily recogniFable as the trade name andmark of Har&ard Ini&ersity of *ambridge:assachusetts, I..A., internationallykno%n as one of the leading educationainstitutions in the %orld. As such, e&enbefore Har&ard Ini&ersity applied forregistration of the mark Har&ard in the#hilippines, the mark %as alreadyprotected under Article 4bisand Article @of the #aris *on&ention. Again, e&en%ithout applying the #aris *on&entionHar&ard Ini&ersity can in&oke ection Maof ).A. 8o. 144 %hich prohibits theregistration of a mark %hich maydisparage or ?ase/ s*==es a

co""ec!o"

9. G.R. No. 16974, Marc -, 2717

C$((EE 0ARTNERS, %NC., 0e!!o"er, #s. SAN(RANC%SC$ C$((EE R$ASTERB, %NC.,Respo"'e".

(acs)

The petitioner holds a business in maintainingco+ee shops in the #hilippines. 6t is registered%ith the ecurities and Echange *ommission in

Ganuary $001. 6n its franchise agreement %ith*o+ee #artners ;td, it carries the trademark an?rancisco *o+ee. )espondent is engaged in the%holesale and retail sale of co+ee that %asregistered in E* in :ay 199!under a registeredbusiness name of an ?rancisco *o+ee )oastery, 6nc. 6t entered into a (oint &enture %ith>oyd *o+ee IA to study co+ee carts in malls.
http://sc.judiciary.gov.ph/jurisprudence/2011/june2011/185917.html#sdfootnote32symhttp://sc.judiciary.gov.ph/jurisprudence/2011/june2011/185917.html#sdfootnote32sym


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5hen respondent learned that petitioner %illopen a co+ee shop in ;ibis, U.*. they sent a letterto the petitioner demanding them to stop usingthe name an ?rancisco *o+ee as it causesconfusion to the minds of the public. A complaint%as also 7led by respondents before the >ureauof ;egal A+airs of the 6ntellectual #roperty =cefor infringement and unfair competition %ithclaims for damages. #etitioners contend thatthere are distinct di+erences in the appearance oftheir trademark and that respondent abandonedthe use of their trademark %hen it (oined &enture%ith >oyd *o+ee IA. The >ureau of ;egal A+airsof the 6# held that petitioner's trademarkinfringed on the respondent's trade name as itregistered its business name 7rst %ith the oyd *o+ee IA since in order forabandonment to eist it must be permanent,intentional and &oluntary. 6t also held thatpetitioner's use of the trademark A8?)A8*6* *??EE %ill likely cause confusionbecause of the eact similarity in sound, spelling,pronunciation, and commercial impression of the%ords A8 ?)A8*6* %hich is the dominantportion of respondent's trade name andpetitioner's trademark. Ipon appeal before theo=ce of the


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$. )esolution dated :ay "0, $00"$ denyingpetitioners' motion for reconsideration.

(acs)

N#etitioner #hilip :orris, 6nc., a corporation tateof Dirginia, I..A, is the registered o%ner of thetrademark :A)B D66 for cigarettes.per*erti7cate of )egistration 8o.1@2$" issued onApril $4, 192" by the #hilippine #atents =ce##

Nimilarly, petitioner >enson Hedges *anada,6nc., a subsidiary of #hilip :orris, 6nc., is theregistered o%ner of the trademark :A)B TE8for cigarettes ## *erti7cate of )egistration 8o.111M2

N?abri/ues de Tabac )eunies, .A. %isscompany, another subsidiary of #hilip :orris,6nc., is the assignee of the trademark ;A)B,Trademark *erti7cate of )egistration 8o. 190!"originally registered in 194M by ;igget and :yers

Tobacco *ompany

N)espondent ?ortune Tobacco *orporation, acompany organiFed in the #hilippines,manufactures and sells cigarettes using thetrademark :A)B.

N#etitioners, on the claim that an infringement oftheir respecti&e trademarks had been committed,7led, on August 1@, 19@$, a *omplaint for6nfringement of Trademark and


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trademark infringement, petitioners %ent onappeal to the *A.Appellate recourse docket *AR.). *D 8o. 44419

o *A decision on Ganuary $1, $00" %hile rulingfor petitioners on the matter of their legalcapacity to sue in this country for trademarkinfringement a=rmed the trial court's decisionon the underlying issue of respondent's liabilityfor infringement.

N:otion for reconsideration denied by the *A)esolution of :ay "0, $00"

%ss*es)

1 %hether or not petitioners, as #hilippineregistrants of trademarks, are entitled to enforcetrademark rights in this country-$ %hether or not respondent has committedtrademark infringement against petitioners by itsuse of the mark :A)B for its cigarettes, henceliable for damages.

Respo"'e")6ssue the propriety of the petitionas it allegedly raises /uestions of fact.NThe petition is bereft of merit.N#etition raises both /uestions of fact and la%

o *es!o" o? a

R.A.3 No. 166or the

Tra'emar; La


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Nthey may not successfully sue on the basis aloneof their respecti&e certi7cates of registration oftrademarks.

o #etitionersK still foreign corporationso condition to a&ailment of the rights andpri&ileges their trademarks in thiscountryK

n top of #hilippineregistration, their country

grants substantially similarrights and pri&ileges to ?ilipinocitiFens pursuant to ection $1A$0 of ).A. 8o. 144.

N6n ;e&iton 6ndustries &. al&adoro *ourtK reciprocity re/uirements acondition sine /ua non to 7ling a suit byforeign corporation

Inless alleged in the complaint,%ould (ustify dismissal

o *omplainant is a national of a #aris*on&ention adhering country, itsallegation that it is suing under saidection $1A %ould su=ce, because thereciprocal agreement bet%een the t%ocountries is embodied and supplied by the#aris *on&ention

>eing considered part of#hilippine municipal la%s, canbe taken (udicial notice of ininfringement suits.

2. REG%STRAT%$N ERS5S ACT5AL 5SE

:embers of the #aris Inion do not

automatically entitle petitioners to theprotection of their trademarks in thiscountry A>E8T A*TIA; IE ? THE:A)B68 ;*A; *::E)*E A8< T)A


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contro&ersial %rit %ill depend onactual use of their trademarks inthe #hilippines in line %ith ections$ and $A of the same la%.

6t is thus incongruous forpetitioners to claim that %hen aforeign corporation not licensed todo business in the #hilippines 7lesa complaint for infringement, the

entity need not be actually usingits trademark in commerce in the#hilippines

uch a foreign corporation mayha&e the personality to 7le a suitfor infringement but it may notnecessarily be entitled toprotection due to absence of actualuse of the emblem in the localmarket.

)egistration of trademark cannot be deemedconclusi&e as to the actual use of such

trademark in local commerce. )egistration does not confer upon theregistrant an absolute righto theregistered mark.

merely constitutes prima facie e&idencethat the registrant is the o%ner of theregistered mark

E&idence of nonusage of the mark rebutsthe presumption of trademark o%nership

5e stress that registration in the#hilippines of trademarks does not ipsofacto con&ey an absolute right or eclusi&eo%nership thereof.

hangri;a 6nternational Hotel:anagement, ;td. &.


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ince then and up to the present, the hangri;a mark and logo ha&e been usedconsistently and continuously by all hangri;ahotels in their paraphernalia, such as stationeries,en&elopes, business forms, menus, displays andreceipts. 6t started to operate in the #hilippines in19@2 %ith the opening of EEE) #A;E #6;E8 label or designinfringe upon that of A8 :6RIE; #A;E #6;E8O

+e')

8o.nly registered trade marks, trade names andser&ice marks are protected against infringement


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authoriFed use by another or others. 6t has beenconsistently held that the /uestion ofinfringement remark is to be determined by thetest of dominancy. imilarity in siFe, form andcolor, %hile rele&ant, inclusi&e. 6f the competingtrademark contains the main or essential ordominant features of another, and commanddeception is likely to result, infringement takesplace. 6's trademark does not constitute aninfringement of :*'s trademarkK A8 :6RIE;#A;E #6;E8, for pale pilsen are generic %ordsdescripti&e of color pale, of a type of beerpilsen, %hich is a light bohemian beer %ithstrong hops Sa&or that originate the *ity of #ilsenin *Fechoslo&akia and became famous in the:iddle ages. #ilsen is a primarily geologicallydescripti&e %ord.

A %ord or a combination of %ords %hich is merelydescripti&e of an article of trade, or itscomposition, characteristics, or /ualities, cannotbe appropriated and protected as a trademark tothe eclusion its use by others inasmuch as allpersons ha&e an e/ual right to produce and &endsimilar articles, they also ha&e the right todescribe them properly and ot use anyappropriate language or %ords for that purpose,and no person can appropriate to himselfeclusi&ely any %ord or epressions, properlydescripti&e of the article, its /ualities, ingredientsor characteristics, and thus limit other persons in

the use of language appropriate to thedescription of their manufacturers, the right tothe use of such language being common to all.

This rule ecluding descripti&e term has alsobeen held to apply to trademeans. As to %hether%ords employed fall %ithin this prohibition, it issaid that the true test is not %hether they areehausti&ely descripti&e of the article designated,but %hether in themsel&es and as they arecommonly used by those %ho understand theirmeaning, they are reasonably indicati&e anddescripti&e of the thing intended. 6f they are thusdescripti&e, and not arbitrary, they cannot be

appropriated from general use and become theeclusi&e property of anyone. Y!$ Am Gur. !M$!M"Z.

The circumstance that the manufacturer of >EE)#A;E #6;E8, Asia >re%ery 6ncorporated, hasprinted its name all o&er the bottle of its beerproductK on the label, on the back of the botlle, as%ell as on the bottle cap, dispro&es :*'s chargethat A>6 dishonestly and fraudently intends topalm o+ its >EE) #A;E #6;E8 as :*'s product.6n &ie% of the &isible di+erences bet%een the t%o

products, the *ourt belie&es it's /uite unlikelythat a customer of a&erage intelligence %ouldmistake a bottle of >EE) #A;E #6;E8 for A8:6RIE; #A;E #6;E8.

1-.G.R. No. L@2:89:, December 2, 192:ESTERN E5%0MENT, 0e!!o"er #s. (%DELA. REBES, Respo"'e"

An appeal from the decision of the lo%er courtgranting the plainti+Cs prayer for %rit opreliminary in(unction, re&ersing the decision ofthe >ureau of *ommerce and 6ndusty, anden(oining pri&ate and public defendant organiFingand registering a domestic corporation under aname identical to that of one of the plainti+s.

(acs)

5estern E/uipment upply *ompany, a foreigncorporation organiFed under the la%s of 8e&adais engaged in the importation and selling in the#hilippine 6slands of electrical and telephoneapparatus manufactured and marked by 5esternElectric *ompany, 6nc, another foreigncorporation. uch business in the #hilippines by5estern E/uipment upply *ompany started%hen its application for a license to operatebusiness in the #hilippines, through a dulyappointed ?ilipino agent, %as granted &iapro&isional license since :ay $0, 19$4.

5estern Electric *ompany does not engage inbusiness in and %ith the #hilippines ecept forthe eportation of its marked products to the#hilippines by 5estern E/uipment upply

*ompany and another company, the Electricupply *ompany, 6nc headed by Herman.

5estern Electric *ompany has the right o&er thetrade mark 5estern Electric by &irtue of aregistration %ith the *ommissioner on #atents in5ashington since ctober $0, 190!. The samecompany has been ad&ertising the same productunder the same trade mark and reputation inEnglish and panish speaking parts of the 5orld.

n ctober 1!, 19$4, HermanCs companysubmitted to the ureau o

*ommerce and 6ndustry its articles ofincorporation %ith the intent of registering andorganiFing business in the #hilippines under thename 5estern Electric *ompany, 6nc. for thepurpose, among other things, of manufacturingbuying, selling and dealing generally in electricaand telephone apparatus and supplies with fullknowlede of the e!isten"e of the plainti#$estern Ele"tri" Compan%& In".& of its"orporate name& of its trade'mark&($estern Ele"tri"&( and of the fa"t that themanufa"tures of said plainti# )earin its


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trade'mark or "orporate name are ineneral use in the Philippine Islands and inthe *nited States.

>y ctober $1, 19$4, through 5. `. mith,5estern Electric *ompany, the #lainti+, 7led forthe issuance of a license to engage in business inthe #hilippine 6slands, and to accept ser&ice ofsummons and process in all legal proceedingsagainst said company. mith also 7led a protestagainst defendants application by ctober 1@,19$4.

The ureau of *ommerce and6ndustry, announced his intention to o&errule saidprotest and %ill, unless (udicially restrainedtherefrom, issue to the other defendants herein acerti7cate of incorporation under the name of5estern Electric *ompany, 6nc.

The lo%er court rendered (udgment for theplainti+s as prayed for in their complaint, andmade the temporary in(unction permanent.Hence, this appeal.

%ss*es)

Here are t%o important /uestions askedK

1. Has a (a) foreign corporation which has neverdone business in the Philippine Islands, and whichis (b) unlicensed and unregistered therein, anyright to maintain an action to restrain residentsand inhabitants of the Philippine Islands fromorganizing a corporation therein (c) bearing thesame name as such foreign corporation, (d) when

said residents and inhabitants have knowledge ofthe existence of such foreign corporation, havingdealt with it, and sold its manufactures, and (e)when said foreign corporation is widely andfavorably known in the Philippine Islands throughthe use therein of its products bearing itscorporate and trade name, and when (f) the

purpose of the proposed domestic corporation isto deal in precisely the same goods as those ofthe foreign corporation

$. Has an unregistered corporation which has nottransacted business in the Philippine Islands, but

which has ac!uired a valuable goodwill and highreputation therein, through the sale, byimporters, and the extensive use within theIslands of products bearing either its corporatename, or trade"mark consisting of its corporatename, a legal right to restrain an o#cer of the$ommerce and Industry, with knowledge of thosefacts, from issuing a certi%cate of incorporationto residents of the Philippine Islands who attemptto organize a corporation for the purpose of

pirating the corporate name of such foreigncorporation, of engaging in the same business as

such foreign corporation, and of defrauding thepublic into thinking that its goods are those ofsuch foreign corporation, and of defrauding suchforeign corporation and its local dealers of theirlegitimate trade

+e')

The foreign corporation ha&e both rights.The sole purpose of the plainti+Cs action]s is]areto protect its reputation, its corporate name, itsgood%ill, %hene&er that reputation, corporatename or good%ill ha&e, through the naturade&elopment of its trade, established themsel&esAnd it contends that its rights to the use of itscorporate and trade name is a property right, aright in rem, %hich may assert and protectagainst all the %orld, in any of the courts of the%orld Q e&en in (urisdictions %here it does nottransact business Q (ust the same as it mayprotect its tangible property, real or personalagainst trespass, or con&ersion.

6n a number of decisions, the *ourt ruled thatsince it is the trade and not the mark that is tobe protected,a trade'mark a"knowledes noterritorial )oundaries of muni"ipalities orstates or nations& )ut e!tends to e+er%market where the trader,s oods ha+e)e"ome known and identi-ed )% the use ofthe mark.

6n order that competition in business should beunfair it must appear that there has been, oris likely to be, a di&ersion of trade from thebusiness of the complainant to that of the

%rongdoer, or methods generally recogniFed asunfair- to de"ei+e and mislead the

pu)li" into thinkin that the oods or)usiness of the wrondoer are the oods or)usiness of the ri+al.


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13 No. )espondent had actually used thetrademark and the de&ices in /uestion prior topetitionerCs use of its o%n. ureau of #atents, respondent presented>ureau registrations indicating the dates of 7rstuse in the #hilippines of the trademark and thede&ices as follo%sK a :arch 14, 19!M, Rold Toe-

b ?ebruary 1, 19!$, the )epresentation of a ockand a :agnifying Rlass- c Ganuary "0, 19"$, theRold Toe )epresentation- and d ?ebruary $@,19!$, ;ineniFed.

The registration of the abo&e marks in fa&or ofrespondent constitutes prima facie e&idence,%hich petitioner failed to o&erturn satisfactorily,of respondentCs o%nership of those marks, thedates of appropriation and the &alidity of otherpertinent facts stated therein.

:oreo&er, the &alidity of the *erti7cates of)egistration %as not /uestioned. 8either didpetitioner present any e&idence to indicate thatthey %ere fraudulently issued. *onse/uently, theclaimed dates of respondentCs 7rst use of themarks are presumed &alid. *learly, they %ereahead of petitionerCs claimed date of 7rst use ofRold Top and


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combination of the trademark and de&ices thatrespondent has already registered- namely, Rold

Toe, the representation of a sock %ith amagnifying glass, the Rold Toe representationand lineniFed.

An eamination of the products in /uestion sho%s

that their dominant features are gold checkeredlines against a predominantly black backgroundand a representation of a sock %ith a magnifyingglass. 6n addition, both products use the sametype of lettering. >oth also include arepresentation of a manCs foot %earing a sock andthe %ord lineniFed %ith arro%s printed on thelabel. ;astly, the names of the brands are similar Rold Top and Rold Toe. :oreo&er, it mustalso be considered that petitioner and respondentare engaged in the same line of business.

Ard Issue*he Paris $onvention

-3Bes. #etitioner claims that the *A erred inapplying the #aris *on&ention. Althoughrespondent registered its trademark ahead,petitioner argues that the actual use of the saidmark is necessary in order to be entitled to theprotection of the rights ac/uired throughregistration.

As already discussed, respondent registered itstrademarks under the principal register, %hichmeans that the re/uirement of prior use hadalready been ful7lled. To emphasiFe, ection !Aof )epublic Act 144 re/uires the date of 7rst useto be speci7ed in the application for registration.ince the trademark %as successfully registered,there eists a prima facie presumption of thecorrectness of the contents thereof, including thedate of 7rst use. #etitioner has failed to rebut this

presumption.

Thus, applicable is the Inion *on&ention for the#rotection of 6ndustrial #roperty adopted in #arison :arch $0, 1@@", other%ise kno%n as the #aris*on&ention, of %hich the #hilippines and theInited tates are members. )espondent isdomiciled in the Inited tates and is theregistered o%ner of the Rold Toe trademark.Hence, it is entitled to the protection of the

*on&ention. A foreignbased trademark o%ner%hose country of domicile is a party to aninternational con&ention relating to protection oftrademarks is accorded protection againstinfringement or any unfair competition aspro&ided in ection "2 of )epublic Act 144, the

Trademark ;a% %hich %as the la% in force at thetime this case %as instituted.

1. G.R. No. 177798, December 29, 199EMERALD GARMENT MAN5(ACT5R%NGC$R0$RAT%$N, pe!!o"er, #s. +$N. C$5RT$( A00EALS, &5REA5 $( 0ATENTS,TRADEMARKS AND TEC+N$L$GB TRANS(ERa"' +.D. LEE C$M0ANB, %NC., respo"'e"s

0a!"!Hs Co"e"!o")

H.#TTT a #etition for*ancellation of )egistration 8o. ) !0!Mupplemental )egister for the trademarkT;6T6* :). ;EE used on skirts, (eansblouses, socks, briefs, (ackets, (ogging suitsdresses, shorts, shirts and lingerie under *lass$!, issued on $2 ctober 19@0 in the name ofpetitioner Emerald Rarment :anufacturing*orporation, a domestic corporation organiFedand eisting under #hilippine la%s.

The company also in&oked ec. "2 of ).A. 8o144 Trademark ;a% and Art. D666 of the #aris

*on&ention for the #rotection of 6ndustria#roperty, a&erred that petitionerCs trademarkso closely resembled its o%n trademarkC;EEC as pre&iously registered and used in the#hilippines, and not abandoned, as to belikely, %hen applied to or used in connection%ith petitionerCs goods, to cause confusionmistake and deception on the part of thepurchasing public as to the origin of thegoods.

De?e"'a"Hs Co"e"!o")

Emerald Rarment contended that itstrademark %as entirely and unmistakablydi+erent from that of pri&ate respondent andthat its certi7cate of registration %as legallyand &alidly granted.

Emerald Rarment further alleges that it hasbeen using its trademark T;6T6* :). ;EEsince 1 :ay 192!, yet, it %as only on 1@eptember 19@1 that H.


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+e')

The essential element of infringement is colorableimitation. This term has been de7ned as such aclose or ingenious imitation as to be calculated todecei&e ordinary purchasers, or suchresemblance of the infringing mark to the originalas to decei&e an ordinary purchaser gi&ing suchattention as a purchaser usually gi&es, and tocause him to purchase the one supposing it to bethe other. *olorable imitation does not meansuch similitude as amounts to identity. 8or does itre/uire that all the details be literally copied.*olorable imitation refers to such similarity inform, content, %ords, sound, meaning, specialarrangement, or general appearance of thetrademark or tradename %ith that of the othermark or tradename in their o&erall presentationor in their essential, substanti&e and distincti&eparts as %ould likely mislead or confuse personsin the ordinary course of purchasing the genuinearticle.

6n determining %hether colorable imitation eists,(urisprudence has de&eloped t%o kinds of tests Qthe


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co"ro#ers/, a;!"= !"o acco*" ese*"!*e ?acors,


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made by the enior Trademark Eaminer of the#atents =ce regarding the registrability of themark re&ealed that the concurrent registration ofsub(ect mark is not likely to cause purchasersconfusion, mistake or deception, since the o&erall commercial impression of the marks aregrossly di+erent and used on goods not onlyfalling under di+erent classi7cation, but alsopossessing di+erent descripti&e properties.

N The products are sold through di+erent tradechannels or cutlets and are noncompeting.

N The Trademark ;a% is &ery clear. 6t re/uiresactual commercial use of the mark prior to itsregistration. There is no dispute that respondentcorporation %as the 7rst registrant, yet it failed tofully substantiate its claim that it used in trade orbusiness in the present proof to in&est it %itheclusi&e, continuous adoption of the trademark%hich should consist among others, ofconsiderable sales since its 7rst use.

N The in&oices submitted by respondent %hich%ere dated %ay back in 19!2 sho% that theFippers sent to the #hilippines %ere to be used assamples and of no commercial &alue. Thee&idence for respondent must be clear, de7niteand free from inconsistencies.

N An unreasonable length of time had alreadypassed before respondent asserted its right to thetrademark. There is a presumption of neglectalready amounting to abandonment of a rightafter a party had remained silent for /uite a longtime during %hich petitioner had been openly

using the trademark in /uestion. uch inaction onthe part of respondent entitles petitioner to thee/uitable principle of laches.

N )espondent %anted good%ill and a %ide marketestablished at the epense of the petitioner butfor its bene7t. 6t is precisely the intention of thela%, including a pro&ision on e/uitable principleto protect only the &igilant, not those guilty oflaches.

N 6t is most unfair if at anytime, a pre&iousregistrant, e&en after a lapse of more than 7&e

! years, can ask for the cancellation of a similaror the same trademark, the registration of %hich%as ne&er opposed by the prior registrant.

N E/uity and (ustice, therefore, demand thatpetitioner should be allo%ed to continue the useof the sub(ect mark and the mark %hich %assupposedly registered under the name ofrespondent be deemed cancelled.

#ro&ision in /uestionKSe"tion /d0 of R1 233

21ec' B' 3egistration of trade"marks, tradenames,and service marks on the principal register' C*here is hereby established a register otrademarks, tradenames and service markswhich shall be known as the principal register*he owner of a trademark, tradename or servicemark used to distinguish his goods, business orservices from the goods, business or services ofothers shall have the right to register the sameon the principal register unless it

xxx xxx xxx2(d) $onsists of or comprises a mark or tradename which so resembles a mark or trade nameregistered in the Philippines or a mark tradename previously used in the Philippines byanother and not abandoned as to be likely, whenapplied to or used in connection with the goods,business or services of the applicant, to causeconfusion or mistake or to deceive purchasersD or

x x x

Se"tion 4& Trademark 5aw8Se"tion 6'1 of the Trademark 5aw29!uitable principles to govern proceedings Inopposition proceedings and all other inter partes

proceedings in the Patent 7#ce under this &ct,e!uitable principle of laches, estoppel andac!uiescence where applicable, may beconsidered applied'2

D!sse"!"= op!"!o") A/uinoN He %ho comes to court must come %ith cleanhands.N #agasa acted in bad faith in registering the BB

trademark as it kno%s of the eistence of oshidaBogyo Babushiki and the latterCs engineers e&enhelped #agasa %ith respect to business.

1:. G. R. No. 14-99-, A*=*s 18, 2774MCD$NALDHS C$R0., 0e!!o"er #s. LC &%GMAK &5RGER, Respo"'e"

(acs)

:cig :ac mark for its double deckehamburger sand%ich. 6t registered thetrademark %ith the Inited tates trademarkregistry sometime 1929. >ased on homeregistration, :cig :ac mark in its item


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and paraphernalia in its restaurants and spentmillions in ad&ertisement for >ig :achamburger sand%ich alone from 19@$ to 1990.

;.*. >ig :ak >urger is a domestic corporationoperating fast food outlets and snack &ans in:etro :anila and nearby pro&inces. 6ts menuincluded hamburger sand%iches. 6n 19@@, itapplied for the registration of the >ig :ak markfor its hamburger sand%iches. :cig :ac mark for the same food products.:cig :ak >urger todesist from using the >ig :ak mark and ha&ingrecei&ed no reply, petitionerCs sued respondentfor trademark infringement and unfaircompetition. The trial court issued a T) againstrespondent en(oining them from using the markand subse/uently issued a %rit of preliminaryin(unction.

)espondent admitted using the >ig :ak burgerfor their fast food business. Ho%e&er, claimedthat petitioner does not ha&e eclusi&e right tothe >ig :ac mark. 6t pointed out that such markhas prior registration in 1929 by 6saiyas Rroupand 19@! by )odolfo Topacio. )espondent alsoclaimed that they are not liable for trademarkinfringement and unfair competition, as the >ig:ak mark the sought to register does notconstitute a colourable imitation of the >ig :acmark. #etitioner disclosed that it had ac/uired)odolfo TopacioCs rights to his registration in adeed of assignment. The trial court found ;.*. >ig:ak >urger liable for trademark infringement and

unfair competition %hich %as subse/uentlyre&ersed by the *ourt of Appeals.

%ss*e)

5hether or not ;.*. >ig :ak >urger used the%ords >ig :ak not only as part of its corporatename but also as a trademark for theirhamburger products %hich constitute trademarkinfringement through confusion of goods andconfusion of business.

+e')

es, there is trademark infringement throughconfusion of goods on the ground that:cig :ak mark on thesame goods %hich %as hamburger sand%iches,that the petitioner >ig :ac mark is used. Therespondent is selling hamburger sand%iches, thesame food product that petitioner sell using the>ig :ac mark, thereby, constituting trademarkinfringement through confusion of business as%ell. The e&idence sho%ed that plastic %rappings

and plastic bags used by respondent for theihamburger sand%iches bore the %ords >ig :akand %ere identical %ith those of the petitioner

The respondentCs use of >ig :ak mark onhamburgers, the same food product thatpetitioners sell %ith the use of their registered>ig :ac mark cannot negate that there %astrademark infringement through confusion ogoods and confusion of business. 5hether ahamburger is singledouble or tripledecker, and %hether %rapped inplastic or tyrofoam, it remained the samehamburger food product.

18. G.R. No. 16611, (ebr*ar/ 2, 277:MCD$NALDHS C$R0., 0e!!o"er #s. MAC$B(AST($$D C$R0$RAT%$N, Respo"'e"

(acs)

n 1M :arch 1991, respondent :acGoy ?astfood*orporation, a domestic corporation engaged inthe sale of fast food products in *ebu *ity, 7led%ith the 6#, an application for the registration ofthe trademark :A*G


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". The %ord :acGoy is set in deep pink and%hite color scheme %hile :coth marks use the corporate : designlogo and the pre7es :c and]or :ac asdominant features. The 7rst letter : in bothmarks puts emphasis on the pre7es :c and]or:ac by the similar %ay in %hich they aredepicted. 6t is the pre7 :c, an abbre&iation of:ac, %hich &isually and aurally catches theattention of the consuming public.

>oth trademarks are used in the sale of fast foodproducts. 6ndisputably, the respondent'strademark application for the :A*G


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not be allo%ed to feign that the (unior user hadin&aded the senior userCs eclusi&e domain. Thecerti7cate of registration confers upon thetrademark o%ner the eclusi&e right to use itso%n symbol only to those goods speci7ed in thecerti7cate, sub(ect to the conditions andlimitations stated therein.

N The eclusi&e right of petitioner in this case touse the trademark *A88 is limited to theproducts co&ered by its certi7cate of registration.

N The t%o classes of products in this case So%through di+erent trade channels. The products ofpetitioner are sold through special chemicalstores or distributors %hile the products of pri&aterespondent are sold in grocery stores, sarisaristores and department stores. Thus, the e&identdisparity of the products of the parties in the caseat bar renders unfounded the apprehension ofpetitioner that confusion of business or originmight occur if pri&ate respondent is allo%ed touse the mark *A88.

N The term trademark is de7ned by )A 144, theTrademark ;a%, as including any %ord, name,symbol, emblem, sign or de&ice or anycombination thereof adopted and used by amanufacturer or merchant to identify his goodsand distinguish them for those manufactured,sold or dealt in by others.

N The #aris *on&ention, of %hich both the#hilippines and Gapan, the country of petitioner,are signatories, $9 is a multilateral treaty thatseeks to protect industrial property consisting of

patents, utility models, industrial designs,trademarks, ser&ice marks, trade names andindications of source or appellations of origin, andat the same time aims to repress unfaircompetition.

N )egarding the applicability of Article @ of the#aris *on&ention, this =ce belie&es that there isno automatic protection a+orded an entity %hosetradename is alleged to ha&e been infringedthrough the use of that name as a trademark by alocal entity.

N >ased on the memorandum by ngpin,#etitioner failed to comply %ith the thirdre/uirement of the said memorandum that is themark must be for use in the same or similar kindsof goods.

Provision in !uestion

&rticle E of the Paris $onvention, to wit2& tradename shall be protected in all thecountries of the

.nion without the obligation of %ling orregistration, whether or not it forms part of atrademark'2

&rticle Fbis of the Paris $onvention states(+) *he countries of the .nion undertake, eitheradministratively if their legislation so permits, orat the re!uest of an interested party, to refuse orto cancel the registration and to prohibit the useof a trademark which constitutes a reproduction,imitation or translation, liable to createconfusion, of a mark considered by thecompetent authority of the country of registrationor use to be well known in that country as beingalready the mark of a person entitled to thebene%ts of the present $onvention and used foridentical or similar goods' *hese provisions shallalso apply when the essential part of the markconstitutes a reproduction of any such well"known mark or an imitation liable to createconfusion therewith'(0) & period of at least %ve years from the date ofregistration shall be allowed for seeking thecancellation of such a mark' *he countries of the.nion may provide for a period within which the

prohibition of use must be sought'(A) ?o time limit shall be %xed for seeking thecancellation or the prohibition of the use of marksor used in bad faith'2

Gemorandum dated 0 7ctober +EA to theirector ofPatents by Hon' 3oberto :' 7ngpina) the mark must be internationally knownDb) the subJect of the right must be a trademark,not a patent or copyright or anything elseDI91$H

c) the mark must be for use in the same orsimilar kinds of goodsD andd) the person claiming must be the owner of themark(*he Parties $onvention $ommentary on theParis $onvention' &rticle by r' L %NC., 0e!!o"er#s. (AR&EN(A&R%KEN &ABERAKT%ENGESELLSC+A(T a"' ALL%EDMAN5(ACT5R%NG AND TRAD%NG C$., %NC.Respo"'e"s

(acs)

The >ayer *ross in circle trademark %asregistered in Rermany in 190M to ?arbenfabriken


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&orm. ?riedr. >ayer ??>, successor to theoriginal ?riedr. >auyer et. *omp., and predecessorto ?arbenfabriken >ayer aktiengessel craft ?>$.

The >ayer, and >ayer *ross in circletrademarks %ere ac/uired by sterling 's subsidiary >ayer *o. of8e% ork as a result of the se/uestration of itsassets by the I Alien #roperty *ustodian during5orld 5ar 6. >ayer products ha&e been kno%n in#hilippines by the close of the 19th century.terling ayer in relation to medicine. ?>Aattempted to register its chemical products %iththe >ayer *ross in circle trademarks. terling#roducts 6nternational and ?>A seek to ecludeeach other from use of the trademarks in the#hilippines. The trial court sustained #6's right touse the >ayer trademark for medicines anddirected ?>A to add distincti&e %ords in theirmark to indicate their products come fromRermany. >oth appealed.

%ss*e)

5hether #6's o%nership of the trademarksetends to products not related to medicine.

+e')

8o. #6's certi7cates of registration as to the>ayer trademarks registered in the #hilippinesco&er medicines only. 8othing in the certi7catesincludes chemicals or insecticides. #6 thus maynot claim 7rst use of the trademarks prior tothe registrations thereof on any product otherthan medicines. ?or if other%ise held, a situation

may arise %hereby an applicant may be temptedto register a trademark on any and all goods%hich his mind may concei&e e&en if he hadne&er intended to use the trademark for the saidgoods. mnibus registration is not contemplatedby the Trademark ;a%. The net result of thedecision is that #6 may hold on its >ayertrademark for medicines and ?>A may continueusing the same trademarks for insecticide andother chemicals, not medicine. The formulafashioned by the lo%er court a&oids the mischiefof confusion of origin, and does not &isit ?>A %ithreprobation and condemnation. A statement that

its product came from Rermany anyho% is but astatement of fact.

21. G.R. No. L@2-72-, A*=*s -1, 1968

$SE 0. STA. ANA, 0e!!o"er, #s(L$RENT%N$ MAL%AT a"' T%&5RC%$ SEALLE, Respo"'e"s

(acs)

ta. Ana, the Gunior #arty applicant, is engagedsolely in the manufacture of shoes under the 7rmname ?;):E8 HE :A8I?A*TI)E) sinceApril 19!9.

:ali%at, the enior #arty applicant, is engaged inthe manufacture sale of mens%ear shirts, poloshirts, and pants, since 19!", using ?;):A88as its trademark. ;ater or in 194$, he startedmanufacturing shoes.

n Gune $1, 194$, :ali%at 7led an application forthe registration of the trademark ?;):A88 forhis goods that include shirts, pants, (acket andshoes. Although his claim for 7rst use %as Guly19!!, he started using the trademark on shoeson Ganuary 194$.

n ep 1@, 194$, ta. Ana 7led an application forthe registration of the tradename ?;):E8 forhis ladies' children's shoe manufacturingbusiness. His claim for 7rst use %as April 19!9.


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business or ser&ices from the goods, business orser&ices of others shall ha&e the right to registerthe same on the principal register, unless itK

d *onsists of or comprises a mark or tradename%hich resembles a mark or tradename registeredin the #hilippines or a mark or tradenamepre&iously used in the #hilippines by another andnot abandoned, as to be likely, %hen applied to orused in connection %ith the goods, business orser&ices of the applicant, to cause confusion ormistake or to decei&e purchasers-

The pro&ision has been interpreted to ha&e notlimited the protection of goods or business fromactual market competition %ith identical orsimilar products. The protection also etend%here there is a likelihood of a confusion ofsource, as %hen the public %ould be misled intothinking that a certain company has etended itsbusiness into another 7eld or has engaged in theproduction of other goods. 6n se&eral cases, the*ourt already declared the o%ner of atrademark]tradename]ser&icemark is entitled toeclude the use thereof on the related class ofgoods.

6n the case at bar, shoes, mens%ear shirts polobelonged to the same class or category of goods.

The resemblance or similarity of the mark?;):A8 %ith the tradename ?;):E8 and thelikelihood of confusion resulted to the denial ofthe application of registration by ta. Ana, infa&or of :ali%at.

22. G.R. No. L@266:6, */ -7, 19820+%L%00%NE RE(%N%NG C$., %NC., 0e!!o"er,#s. NG SAM a"' T+E D%RECT$R $( 0ATENTS,Respo"'e"s.

A petition to re&ie% the decision of the


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The obser&ation and conclusion of the


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o%nership of 8estle o&er the trademark8A8. He refused to recogniFe 8estle'sre/uest and continued using the name8A88.

8estle 7led a case %ith the )T* of


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appearance but they are e&en similar in soundand in the style of presentation- that it isreasonable to belie&e that this similarity issu=cient to cause confusion and e&en mistakeand deception in the buying public as to theorigin for source of the goods bearing suchtrademarks.

;ater, respondentCs :otion for )econsiderationmerited the nod of appro&al of the appellate courtbrought about by pri&ate respondentCs suggestionthat the controlling ruling is that laid do%n in9117 1tandard 9astern, Inc.vs.$ourt of &ppeals,to the e+ect that the identical trademark can beused by di+erent manufacturers for products thatare noncompeting and unrelated.

#etitioner asserts that the alleged application forregistration of the trademark >)IT "" )IT to othergoods, and that relief is a&ailable %here the (unioruserCs goods are not remote from any productthat the senior user %ould be likely to make orsell.

n the other hand, pri&ate respondent echoes theglaring di+erence in physical appearance of itsproducts %ith petitionerCs o%n goods by stressingthe obser&ations of the )ITE brief and %hat is >)ITafter sha&e lotion, lotion and the like.

:oreo&er, pri&ate respondent asserts that briefsand cosmetics do not belong to the same classnor do they ha&e the same descripti&e propertiessuch that the use of a trademark on oneCs goodsdoes not pre&ent the adoption and use of thesame trademark by others on unrelated articlesof a di+erent nature.

%ss*e)

5hether pri&ate respondent may appropriate thetrademark >)ITE for the briefs it manufacturesand sells to the public albeit petitioner had

pre&iously registered the symbol >)IT and>)IT "" for its o%n line of times.+e')

es. 6t is aproposto shift ur attention to thepertinent pro&isions of the ne% *i&il *ode Arts.!$0, !$1, and !$$ vis"a"vis )epublic Act 8o. 144ecs. $, $A,M, Md,11 and $0, as amended, thespecial la% patterned after the Inited tates

Trademark Act of 19M4.

Ha&ing thus re&ie%ed the la%s applicable to thecase, pri&ate respondent may be permitted toregister the trademark >)ITE for briefsproduced by it not%ithstanding petitionerCs&ehement protestations of unfair dealings inmarketing its o%n set of items %hich are limitedtoK aftersha&e lotion, sha&ing cream, deodoranttalcum po%der and toilet soap.

6n as much as petitioner has not &entured in theproduction of briefs, an item %hich is not listed inits certi7cate of registration, petitioner cannotand should not be allo%ed to feign that pri&aterespondent had in&aded petitionerCs eclusi&edomain. To be sure, it is signi7cant that petitionerfailed to anne in its >rief the socalled elo/uentproof that petitioner indeed intended to epandits mark >)IT to other goods. E&en then, amere application by petitioner in this aspect doesnot su=ce and may not &est an eclusi&e right inits fa&or that can ordinarily be protected by the

Trademark ;a%.

6n short, paraphrasing ection $0 of theTrademark ;a% as applied to the documentarye&idence adduced by petitioner, the certi7cate ofregistration issued by the ; )eyes opined that the ection Md of)epublic Act 8o. 144, as amended, does notre/uire that the articles of manufacture of thepre&ious user and late user of the mark shouldpossess the same descripti&e properties or shouldfall into the same categories as to bar the latterfrom registering his mark in the principaregister. et, it is e/ually true that as aforesaid,the protecti&e mantle of the Trademark ;a%etends only to the goods used by the 7rst useras speci7ed in the certi7cate of registrationfollo%ing the clear message con&eyed by section$0.

Ho% do 5e no% reconcile the apparent conSictbet%een ection Md %hich %as relied upon by

Gustice G>; )eyes in the 1ta.&nacase and ection$0O 6t %ould seem that ection Md does notre/uire that the goods manufactured by thesecond user be related to the goods produced bythe senior user %hile ection $0 limits theeclusi&e right of the senior user only to thosegoods speci7ed in the certi7cate of registration>ut the rule has been laid do%n that the clause%hich comes later shall be gi&en paramount


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patent or trademark %ith a prayer for theissuance of a %rit of preliminary in(unctionagainst the pri&ate respondent :ilro. n Guly"1, 19@!, the trial court issued a temporaryrestraining order, restraining the pri&aterespondent and the


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such goods or ser&ices, or identity of suchbusiness- or reproduce, counterfeit, copy orcolorably imitate any such mark or tradenameand apply such reproduction, counterfeit, copy orcolorable imitation to labels, signs, prints,packages, %rappers, receptacles orad&ertisements intended to be used upon or inconnection %ith such goods, business orser&ices.

N 6mplicit in this de7nition is the concept that thegoods must be so related that there is a likelihoodeither of confusion of goods or business.

N 6t is undisputed that the goods on %hichpetitioner uses the trademark E, petroleumproducts, and the product of respondent,cigarettes, are noncompeting.

N 8oncompeting goods may be those %hich,though they are not in actual competition, are sorelated to each other that it might reasonably beassumed that they originate from onemanufacturer.

N Roods are related %hen they belong to thesame class or ha&e the same descripti&eproperties- %hen they possess the same physicalattributes or essential characteristics %ithreference to their form, composition, teture or/uality.

N The goods are ob&iously di+erent from eachother Q %ith absolutely no iota of similitude

N They are so foreign to each other as to make it

unlikely that purchasers %ould think thatpetitioner is the manufacturer of respondentCsgoods. The mere fact that one person hasadopted and used a trademark on his goods doesnot pre&ent the adoption and use of the sametrademark by others on unrelated articles of adi+erent kind.

N The products of each party mo&e along and aredisposed through di+erent channels ofdistribution.

29. G.R. No. 164-21, Marc 2-, 2711

SKEC+ERS 5SA %NC., 0e!!o"er %"c. #s.%NTER 0AC%(%C %ND5STR%AL TRAD%NG C$R0.,Respo"'e"

(acs)

kechers, IA 6nc. is the o%ner of the registeredtrademarks kechers and %ithin an o&allogo. kechers 7led a criminal case fortrademark infringement against se&eral storeo%ners that %ere selling shoes branded astrong and bearing a similar logo. The

)egional Trial *ourt )T* issued search %arrants,allo%ing the 8ational >ureau of 6n&estigation8>6 to raid the stores and con7scate 4,000 pairsof shoes.

The accused mo&ed to /uash the %arrantssaying that there %as no confusing similaritybet%een the kechers and the trong brands.

The )T* granted the motion to /uash and orderedthe 8>6 to return the seiFed goods. The court saidthat the t%o brands had glaring di+erences andthat an ordinary prudent consumer %ould notmistake one for the other.

n certiorari, the *ourt of Appeals *A a=rmedthe )T* ruling.

The matter %as ele&ated to the upreme *ourt*.

%ss*e)


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subsection are committed regardless of %hetherthere is actual sale of goods or ser&ices using theinfringing material. emphasis supplied

There is trademark infringement %hen the secondmark used is likely to cause confusion. There aret%o tests to determine thisK

1. Dom!"a"c/ Tes the court focuses on thesimilarity of the dominant features of the marksthat might cause confusion in the mind of theconsumer.


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not need to copy anotherCs mark or producteactly. *olorable imitation is enough.

-7. G.R. No. 164-21, No#ember -7, 2776SKEC+ERS 5SA %NC., 0e!!o"er %"c. #s.%NTER 0AC%(%C %ND5STR%AL TRAD%NG C$R0.,Respo"'e"

6n :arch $00$, kechers IA, 6nc., %ith theassistance of the 8ational >ureau of6n&estigation, obtained from the )egional Trial*ourt of :anila lo%er court search %arrantsagainst an outlet and %arehouse operated by6nter #aci7c Trading et al. that %as suspected ofinfringing its registered trademark BE*HE) andits trademark %ithin an o&al design onshoes. eiFed from these locations %ere morethan 4,000 pairs of shoes %ith the mark T)8R,the of %hich %as similar to the logo ofkechers. n motion by 6nter #aci7c the lo%ercourt /uashed the search %arrants, holding thatthere %ere glaring di+erences bet%een thecontending marks such that an ordinary andprudent purchaser %ould not likely be misled orconfused and purchase the %rong article. nkechers' appeal, the *ourt of Appeals a=rmedthe lo%er court's decision.


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place. oth the %ordYsZ #

*8RE8; an #*RE8; ha&e the samesu= RE8; %hich on e&idence, appears tobe merely descripti&e and furnish no indicationof the origin of the article and hence, open fortrademark registration by the plainti+ thrucombination %ith another %ord or phrase such as#*8RE8;, Ehibits A to A". ?urthermore,although the letters bet%een # and *, 8bet%een and * and after ; are missing inthe Ypetitioner'sZ mark #*RE8;,ne&ertheless, %hen the t%o %ords arepronounced, the sound e+ects are confusingly similar not to mention that they are bothdescribedby their manufacturers as a food supplement andthus, identi7ed as such by their publicconsumers. And although there %ere

dissimilarities in the trademark due to the type ofletters used as %ell as the siFe, color and designemployed on their indi&idual packages]bottles,still the close relationship of the competingproducts' name in sounds as they %erepronounced, clearly indicates that purchaserscould be misled into belie&ing that they are thesame and]or originates from a common sourceand manufacturer.

-4. G.R. No. 1-8977, Sepember 27,

277LE% STRA5SS, 0e!!o"er #s. CL%NT$NA0ARELLE, Respo"'e"

(acs)

This case arose from the *omplaint for Trademark6nfringement, 6n(unction and


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trademark dilution. Their assertion that atrademark o%ner does not ha&e to %ait until themark loses its distincti&eness to obtain in(uncti&erelief, and that the mere use by an infringer of aregistered mark is already actionable e&en if hehas not yet pro7ted thereby or has damaged thetrademark o%ner is of no merit.

Trademark dilution is the lessening of thecapacity of a famous mark to identify anddistinguish goods or ser&ices, regardless of thepresence or absence ofK

1 competition bet%een the o%ner of the famousmark and other parties- or$ likelihood of confusion, mistake or deception.ub(ect to the principles of e/uity, the o%ner of afamous mark is entitled to an in(unction againstanother personCs commercial use in commerce ofa mark or trade name, if such use begins afterthe mark has become famous and causes dilutionof the distincti&e /uality of the mark. This isintended to protect famous marks fromsubse/uent uses that blur distincti&eness of themark or tarnish or disparage it as pro&ided in thecase of Toys ) Is &. Akkaoui.

>ased on the foregoing, to be eligible forprotection from dilution, there has to be a 7ndingthatK1 the trademark sought to be protected isfamous and distincti&e-$ the use by respondent of #addocks and


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competing marks because the goods %erenoncompeting or unrelated.

:attel 7led :) %hich %as denied then itappealed the decision %ith the T had already declared the sub(ecttrademark application abandoned due to thenon7ling of the arbie trademark. Ri&enIyCs admission that he has e+ecti&ely abandonedor %ithdra%n any rights or interest in histrademark by his non7ling of the re/uired


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of ;e&i trauss %ere /uashed. *onse/uently,Dogue Traders sought to reco&er in an actionbefore the regional trial court the seiFed articlesthat it claimed did not ha&e any decepti&eresemblance %ith the trademarks of ;e&i trauss.

The trial court, after it found that there %as acolorable imitation of ;e&is traussC designs,issued a %rit of preliminary in(unction to restrainDogue Traders from further infringing on thetrademark.

Dogue Traders took that matter to the *ourt ofAppeals %hich rendered a decision en(oining thetrial court from further proceeding %ith the caseuntil the petition for the cancellation of thetrademark registration %ith the #atent bureau isresol&ed.

6t %as held that %hile an administrati&ecancellation of a registered trademark, on any ofthe grounds enumerated in ection 12 of )epublicAct 144 later epanded by ).A. 8o. @$9", the6ntellectual #roperty *ode of the #hilippines, anaction for infringement or any other incidentalremedy sought is %ithin the (urisdiction of theordinary courts.

Thus, the regional trial court %as ordered toproceed %ith the hearing of the case.

-8. G.R. No. 18214:, December 1, 2717ARNEL TB, 0e!!o"er #s. N&% S50ER%S%NGAGENTS DE EM%L, Respo"'e"

(acs)

#etitioners are stockholders of mni Ras*orporation mni. They are being suspectedof engaging in illegal trading of petroleumproducts and under 7lling of branded ;#Rcylinders in &iolation of >.#. "", as amended by#.6 Agents :ar&in 6Agents carried out a testbuy. Ising eightbranded ;#R cylinders from hell, #etron and

Total, they %ent to mni for re7lling. mni re7lledthe cylinders. The 8>6 agents paid more than#1!00. ;#R 6nspector 8oel 8a&io found that the

;#R cylinders %ere %ithout ;#R &al&e seals andone of the cylinders %as actually under 7lled.

n $@ April $00M, Agent 6 seiFed se&eral items from mniCs premises.ubse/uently, Agent 6 Agent #"", as amended.

mni has no authority to re7ll ;#R cylinders assho%n by the certi7cations pro&ided by hell#etron and Total. The seiFed items also sho% thatmni has no authority to re7ll the cylinders. 6tsho%s that mni really re7lled branded cylinders%ithout authoriFation. mni's unauthoriFedre7lling of branded ;#R cylinders, contrary to ec$ a in relation to ec. " c of ># "", asamended.


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Rranting arguendo that the customers alreadyo%ned the ;#R cylinders, such fact does gi&emni authority to re7ll the cylinders %ithoutauthoriFation from the brand o%ners. nly theduly authoriFed dealers and re7llers of the brando%ners may re7ll the branded ;#R cylinders. Theo+ense of re7lling a branded ;#R cylinder %ithoutthe %ritten consent of the brand o%nerconstitutes the o+ense regardless of the buyer orpossessor of the branded ;#R cylinder.

#etitionerCs contention that they are not liablebecause the under 7lling that took place duringthe testbuy is an isolated e&ent is I8TE8A>;E. Asingle under 7lling under ># "" is already acriminal act.

" nly Arnel Ty, as #resident of mni, is liable.The other petitioners, %ho are members ofmniCs >oard of # "" enumerates the persons %ho may be heldliable, &iFK

1 the president,$ general manager," managing partner,M such other o=cer charged %ith themanagement of the business a+airs of thecorporation or (uridical entity, or! the employee responsible for such

&iolation. The >oard of atistis' house namely$M1 empty bottles of ?undador, 14" ?undadorboes, a half sack full of ?undador plastic capsand t%o 7lled bottles of ?undador >randy clearlydemonstrated that >atistis had been committinga gra&e economic o+ense o&er a period of time,thereby deser&ing for him the indeterminate

rather than the straight and lo%er, penalty. *modi7ed the penalty to imprisonment rangingfrom t%o years, as minimum, to three years, asmaimum, and a 7ne of #!0, 000.00.

47. G.R. No. 164-24, A*=*s 14, 2779


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TAND5AB D%ST%LLERS, %NC., 0e!!o"er #s.G%NE&RA SAN M%G5EL, Respo"'e"

(acs)

6n $00$, Tanduay, %ho has been engaged in theli/uor business since 1@!M de&eloped a ne% gin.

The brand name e&entually chosen %as RinebraBapitan %ith the representation of are&olutionary Napitan on horseback as thedominant feature of its label. 6t began sellingRinebra Bapitan in $00".

6n $00", an :iguel 7led a complaint fortrademark infringement, unfair competition anddamages, %ith applications for issuance of T)and %rit of preliminary in(unction against Tanduaybefore the )egional Trial *ourt. an :iguelalleges that it has registered the trademarkRinebra an :iguel and that it has beencontinuously using OR68E>)A, as a dominantfeature in its product since 1@"M. 6t claims amongothers that the close similarity bet%een Rinebraan :iguel and Rinebra Bapitan may gi&e riseto confusion of goods since an :iguel and

Tanduay are competitors in the business ofmanufacturing and selling li/uors.

The )T* in its orders dated eptember $", $00"and ctober 12, $00" granted an :iguel'sprayer for issuance of a temporary restrainingorder T) and %rit of preliminary in(unctionagainst Tanduay. Thus, Tanduay 7led a petition forcertiorari before the *ourt of Appeals assailingthe in(unction order 7led by )T*. The *Adismissed the petition. Hence, Tanduay ele&ated

the case to the upreme *ourt.

Tanduay asserts that not one of the re/uisites forthe &alid issuance of a preliminary in(unction ispresent in this case becauseK 1 an :iguel'salleged eclusi&e right to use the generic %ordRinebra panish term for gin is far from clearand unmistakable. $ The *A, in upholding theissuance of the %rit of preliminary in(unction, haspre(udged the merits of the case since nothing isleft to be decided by the trial court ecept theamount of damages to be a%arded to an :iguel." The supposed damages that an :iguel %ill

su+er as a result of Tanduay's infringement orunfair competition cannot be consideredirreparable because the damages are susceptibleof mathematical computation as ec 1!4.1 of the6# *ode can be the basis of the mathematicalcomputation.

%ss*e)

5hether or not an :iguel is entitled to the %ritof preliminary in(unction granted by the trial courtas a=rmed by the *A * shall deal only %ith the

/uestioned %rit and not %ith the merits of thecase pending before the trial court.

+e')

8.Clear and *nmistaka)le Riht6n this case, a cloud of doubt eists o&er an:iguel's eclusi&e right relating to the %ordRinebra. an :iguel's claim to the eclusi&euse of the %ord Rinebra is clearly still in disputebecause of Tanduay's claim that it has, as othersha&e, also registered the %ord Rinebra for itsgin products. This issue can be resol&ed only aftera fullblo%n trial.

Pre=udin the erits of the Case5e belie&e that the issued %rit of preliminaryin(unction, if allo%ed, disposes of the case on themerits as it e+ecti&ely en(oins the use of the %ordRinebra %ithout the bene7t of a fullblo%n trial6n 3ivas v' 1ecurities and 9xchange $ommission%e ruled that courts should a&oid issuing a %rit ofpreliminary in(unction %hich %ould in e+ectdispose of the main case %ithout trial. Theissuance of the %rit of preliminary in(unction hadthe e+ect of granting the main prayer of thecomplaint such that there is practically nothingleft for the trial court to try ecept the plainti+'sclaim for damages.

Irrepara)le In=ur%>ased on the a=da&its and market sur&ey reportsubmitted during the in(unction hearings, an:iguel has failed to pro&e the probability oirreparable in(ury %hich it %ill stand to su+er if

the sale of Rinebra Bapitan is not en(oined. an:iguel has not presented proof of damagesincapable of pecuniary estimation. At most, an:iguel only claims that it has in&ested hundredsof millions o&er a period of 120 years to establishgood%ill and reputation no% being en(oyed by theRinebra an :iguel mark such that the fuletent of the damage cannot be measured %ithreasonable accuracy. 5ithout the submission ofproof that the damage is irreparable andincapable of pecuniary estimation, an :iguel'sclaim cannot be the basis for a &alid %rit ofpreliminary in(unction.

5HE)E?)EK * sets aside the *ourt of Appealsrulings a=rming the )T* orders T) %rit ofpreliminary in(unction.The )egional Trial *ourt isdirected to continue epeditiously %ith the trial toresol&e the merits of the case.

41. G.R. No. 162-11, December 4, 2778LE% STRA5SS 0+%LS.3, %NC., 0e!!o"er #sT$NB L%M, Respo"'e"

(acs)


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#etitioner ;e&i trauss #hils., 6nc. is a dulyregistered domestic corporation. 6t is a %hollyo%ned subsidiary of ;e&i trauss *o. ; *o.A ello resolution, the


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registered his o%n mark. 5hile it is true thatthere may be unfair competition e&en if thecompeting mark is registered in the 6ntellectual#roperty =ce, it is e/ually true that the samemay sho% prima facie good faith.6ndeed, registration does not negate unfaircompetition %here the goods are packed oro+ered for sale and passed o+ as those ofcomplainant. Ho%e&er, the mark's registration,coupled %ith the stark di+erences bet%een thecompeting marks, negate the eistence of actualintent to decei&e, in this particular case.

#etitioner argues that the element of intent todecei&e may be inferred from the similarity of thegoods or their appearance. The argument isspecious on t%o fronts. -irst, %here the similarityin the appearance of the goods as packed ando+ered for sale is so sr!;!"=, intent to decei&emay be inferred. Ho%e&er, as found by thein&estigating prosecutor and the ello's opinion thatto establish probable cause, it is enough that therespondent ga&e to his product the generalappearance of the product of petitioner. 6t bears

stressing that that is only one element of unfaircompetition. All others must be sho%n toeist. :ore importantly, the likelihood ofconfusion eists not only if there is confusingsimilarity. 6t should also be likely to causeconfusion or mistake or decei&e purchasers. Thus,the *A correctly ruled that the mere fact thatsome resemblance can be pointed out bet%eenthe marks used does not in itself pro&e unfaircompetition. To reiterate, the resemblance mustbe such as is likely to decei&e the ordinarypurchaser eercising ordinary care.

The consumer sur&ey alone does not e/uate toactual confusion. 5e note that the sur&ey %asmade by sho%ing the inter&ie%ees actualsamples of petitioner's and respondent'srespecti&e products, approO!mae/ P#e ?eea


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o+ense- and their 8aga plant %as in urgent needof the shells.

*oca*ola opposed the motions as the shells%ere part of the e&idence of the crime, arguingthat #epsi used the shells in hoarding the bottles.6t insisted that the issuance of %arrant %as basedon probable cause for unfair competition underthe 6# *ode, and that the respondents &iolated).A. 4$", the la% regulating the use of stampedor marked bottles, boes, and other similarcontainers.

%ss*e)

5hether or not hoarding of a competitorCsproduct containers punishable as unfaircompetition under the 6ntellectual #roperty *odethat %ould entitle the aggrie&ed party to a search%arrant against the hoarder.

+e')

8o, hoarding as de7ned by the petitioner is notan act %ithin the contemplation of the 6# *ode.

The theory of the petitioner that ection 14@." cof the 6# *ode does not limit the scope ofprotection on the particular acts enumerated as itepands the meaning of unfair competition toinclude other acts contrary to good faith of anature calculated to discredit the goods, businessor ser&ices of another is of no merit. The courtdisagreed %ith the petitionerCs epansi&einterpretation of ection 14@." c %hich allegedrespondentsC hoarding of *oca *ola empty bottlesis one such act.

Infair competition has been de7ned as thepassing o+ or palming o+ or attempting to passo+ upon the public the goods or business of oneperson as the goods or business of another %iththe end and probable e+ect of decei&ing thepublic. 6t formulated the true test of unfaircompetitionK %hether the acts of defendant aresuch as are calculated to decei&e the ordinarybuyer making his purchases under the ordinaryconditions %hich pre&ail in the particular trade to%hich the contro&ersy relates. ne of theessential re/uisites in an action to restrain unfair

competition is proof of fraud- the intent todecei&e must be sho%n before the right toreco&er can eist. The ad&ent of the 6# *ode hasnot signi7cantly changed these rulings as theyare fully in accord %ith %hat ection 14@ of the*ode in its entirety pro&ides.


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6n ept. 199M, y gra&e abuse of discretion is meantsuch capricious and %himsical eercise of

(udgment %hich is e/ui&alent to an ecess orlack of (urisdiction. The abuse of discretion

must be so patent and gross as to amount toan e&asion of a positi&e duty or a &irtuarefusal to perform a duty en(oined by la% or toact at all in contemplation of la%, as %herethe po%er is eercised in an arbitrary anddespotic manner by reason of passion ohostility. 8ot e&ery error in the proceedings, ore&ery erroneous conclusion of la% or fact, isgra&e abuse of discretion. #etitioners mustpro&e that the elements abo&ementioned%ere present in the rendering of the/uestioned rders of the


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0+%L%00%NES a"' CATER0%LLAR,%NC., Respo"'e"s.

(acs)

The petitioner, o%ner]proprietor of 6TT6hoes]:ano hoes :anufacturing *orporation,allegedly sold or o+ers the sale of garmentproduct using the trademark *aterpillar to thepre(udice of *aterpillar, 6nc., pri&ate respondentin this case. The respondent 7led the case %iththe )T*. The petitioner /uestioned the (urisdictionof the trial court o&er the o+ense chargedcontending that the case should be 7led %ith the:T* because &iolation of unfair competition ispenaliFed %ith imprisonment not eceeding 4years under )A 2491.

%ss*e)

5hich court has (urisdiction o&er criminal andci&il cases for &iolation of intellectual propertyrightsO

+e')

The * held that under ection 14" of the 6#*actions for unfair competition shall be broughtbefore the proper courts %ith appropriate

(urisdiction under eisting la%s. The la%contemplated in ection 14" of 6#* is )A 144other%ise kno%n as the Trademark ;a%. ection$2 of the Trademark ;a% pro&ides that

(urisdiction o&er cases for infringement ofregistered marks, unfair competition, falsedesignation of origin and false description orrepresentation, is lodged %ith the *ourt of ?irst6nstance no% )egional Trial *ourt. ince )A2491 is a general la% and 6#* in relation to

Trademark ;a% is a special la%, the latter shalpre&ail. Actions for unfair competition thereforeshould be 7led %ith the )T*.

trademarks case digests

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