ipl 1st set cases

7/25/2019 IPL 1st Set Cases

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applicants condensed and evaporated il- are siilar as the1 have the sae descriptive

properties, both 'oods bein' il- products.

3ence, oppositor +led the present petition for revie).

Petitioner contends that the %irector of the Patent O7ce erred 45 in holdin' that the ar-

)hich respondent see-s to re'ister does not reseble petitioners aras to be li-el1 )hen

applied to the 'oods to cause confusion or ista-e or to deceive purchasers, and 425 in

holdin' that the tradear- sou'ht to be re'istered has becoe distinctive based on its

etensive sales.

Anent the +rst point, petitioner sees to dispute the +ndin' of the %irector of the Patent

O7ce b1 ephasi(in' the stri-in' siilarities eistin' bet)een the tradear- A&A/0A

)hich is sou'ht to be re'istered and that of A&AC6A )hich petitioner has lon' re'istered

for the protection of its products. 6hus, it is ar'ued, in appearance and sound the

tradear-s A&A/0A and A&AC6A are su7cientl1 close. 6he three vo)els are the sae in

both and the public )ould pronounce the short accentin' on the second s1llable. Both

ar-s have the sae nuber of letters and the vo)els are placed on the sae position. 6he'eneral for and sound of the )ords are of ar-ed siilarit1 so as to su''est the li-elihood

of confusion. @hile A&AC6A and A&A/0A di<er entirel1 in eanin', the1 are confusin'l1

siilar in appearance. 6he three letter pre+es of both ar-s are identical. Both ar-s end

)ith the sae letter A. 6he onl1 di<erence lies in the letters C6 in A&AC6A and /0 in

A&A/0A. And in support of its contention, petitioner cites the case of Esso /tandard Oil

Copan1 v. /un Oil Copan1, et al., =# 6MR ===, )herein it )as held that /:N$9/ and

:N9$9/ are Duite di<erent in sound and eanin' but in their entireties the1 are confusin'l1

siilar in appearance. /aid the Court

As alread1 noted, it found on the basis of the evidence before it that the t)o ar-s

are Duite di<erent in sound and eanin' but that in their entireties the ar-s areconfusin'l1 siilar in appearance, because of their havin' identical su7es and

three letter pre+es )ith the sae t)o letters :N in the sae order.

On the other hand, respondent contends that it is not correct to sa1 that in passin' on the

Duestion as to )hether the t)o ar-s are siilar onl1 the )ords A&A/0A and A&AC6A

should be ta-en into account since this )ould be a ost arbitrar1 )a1 of ascertainin'

)hether siilarit1 eists bet)een t)o ar-s. Rather, respondent contends, the t)o ar-s in

their entiret1 and the 'oods the1 cover should be considered and carefull1 copared to

deterine )hether petitioners opposition to the re'istration is capricious or )ell;ta-en. 9n

this connection, respondent invo-es the follo)in' rules of interpretation 45 appellants

ar- is to be copared )ith all of the oppositors ar-s in deterinin' the point of

confusionF 425 the li-elihood of confusion a1 be deterined b1 a coparison of the ar-s

involved and a consideration of the 'oods to )hich the1 are attachedF2 and 4G5 the court )ill

vie) the ar-s )ith respect to the 'oods to )hich the1 are applied, and fro its o)n

observation arrive at a conclusion as to the li-elihood of confusion.G

9t is true that bet)een petitioners tradear- A&AC6A and respondents A&A/0A there

are siilarities in spellin', appearance and sound for both are coposed of si letters of

three s1llables each and each s1llable has the sae vo)el, but in deterinin' if the1 are



persuaded that said %irector )as usti+ed in overrulin' petitioners opposition. 3ence, )e

are not prepared to sa1 that said %irector has erred in overrulin' said opposition.

@3ERE?ORE, the decision appealed fro is a7red, )ith costs a'ainst petitioner.

&en'(on) C.J.) Padilla) La*rador) Concepcion) Re+es) J.&.L.) &arrera) Paredes) Di(on) Re'ala)

and Ma,alintal JJ.) concur.



G.R. No. L-27906 "#)"r* +, 19+7

CON&ERSE RU''ER CORPORAT(ON, petitioner,

vs.

UN(&ERSAL RU''ER PRODUCTS, (NC. "#$ T('URC(O S. E&ALLE, D(RECTOR O

PATENTS, respondents.

Parades) Po*lador) Na(areno) -(ada /o0acru( for petitioner.

R E / O & : 6 9 O N

ERNAN, .

6he undisputed facts of the case are as follo)s

Respondent :niversal Rubber Products, 9nc. +led an application )ith the Philippine Patent

o7ce for re'istration of the tradear- :N9$ER/A& CON$ER/E AN% %E$9CE used on rubber

shoes and rubber slippers.

Petitioner Converse Rubber Corporation +led its opposition to the application for re'istration

on 'rounds that

aI 6he tradear- sou'ht to be re'istered is confusin'l1 siilar to the )ord

CON$ER/E )hich is part of petitioners corporate nae CON$ER/E R:BBER

CORPORA69ON as to li-el1 deceive purchasers of products on )hich it is to be

used to an etent that said products a1 be ista-en b1 the un)ar1 public to

be anufactured b1 the petitionerF and,

bI 6he re'istration of respondents tradear- )ill cause 'reat and irreparable

inur1 to the business reputation and 'ood)ill of petitioner in the Philippines

and )ould cause daa'e to said petitioner )ithin the, eanin' of /ection ,

R.A. No. ##, as aended.

6hereafter, respondent +led its ans)er and at the pre;trial, the parties subitted the

follo)in' partial stipulation of facts

I 6he petitioners corporate nae is CON$ER/E R:BBER CORPORA69ON and

has been in eistence since Jul1 G, !=#F it is dul1 or'ani(ed under the la)sof Massachusetts, :/A and doin' business at G!2 Pearl /t., Malden, Count1 of

Middle se, MassachusettsF

2I Petitioner is not licensed to do business in the Philippines and it is not doin'

business on its o)n in the PhilippinesF and,



GI Petitioner anufacturers rubber shoes and uses thereon the tradear-s

C3:C0 6AK&OR and A&& /6AR AN% %E$9CE. 1

At the trial, petitioners lone )itness, Mrs. Caren B. PacDuin', a dul1 licensed private

erchant )ith stores at the /ta. Mesa Mar-et and in %avao Cit1, testi+ed that she had been

sellin' CON$ER/E rubber shoes in the local ar-et since !"# and that sales of petitioners

rubber shoes in her stores avera'ed t)elve to t)ent1 pairs a onth purchased ostl1 b1

bas-etball pla1ers of local private educational institutions li-e Ateneo, &a /alle and /an

Beda.

Mrs. PacDuin', further stated that she -ne) petitioners rubber shoes cae fro the :nited

/tates because it sa1s there in the tradear- Converse Chuc- 6a1lor )ith star red or blue

and is a round +'ure and ade in :./.A. 2 9n the invoices issued b1 her store, the rubber shoes

)ere described as Converse Chuc- 6a1lor, 3 Converse All /tar, All /tar Converse Chuc-

6a1lor, 5 or Converse /hoes Chuc- 6a1lor. 6 /he also a7red that she had no business connection

)ith the petitioner.

Respondent, on the other hand, presented as its lone )itness the secretar1 of saidcorporation )ho testi+ed that respondent has been sellin' on )holesale basis :niversal

Converse sandals since !#2 and :niversal Converse rubber shoes since !#G. 9nvoices

)ere subitted as evidence of such sales. 6he )itness also testi+ed that she had no 9dea

)h1 respondent chose :niversal Converse as a tradear- and that she )as una)are of

the nae Converse prior to her corporations sale of :niversal Converse rubber shoes

and rubber sandals.

Eventuall1, the %irector of Patents disissed the opposition of the petitioner and 'ave due

course to respondents application. 3is decision reads in part

... the onl1 Duestion for deterination is )hether or not the applicants partial

appropriation of the Opposers LpetitionerI corporate nae is of such

character that in this particular case, it is calculated to deceive or confuse the

public to the inur1 of the corporation to )hich the nae belon's ...

9 cannot +nd an1thin' that )ill prevent re'istration of the )ord :N9$ER/A&

CON$ER/E in favor of the respondent. 9n arrivin' at this conclusion, 9 a

'uided b1 the fact that the opposer failed to present proof that the sin'le

)ord CON$ER/E in its corporate nae has becoe so 9denti+ed )ith the

corporation that )henever used, it desi'nates to the ind of the public that

particular corporation.

6he proofs herein are sales ade b1 a sin'le )itness )ho had never dealt)ith the petitioner . . . the entr1 of Opposers LpetitionersI 'oods in the

Philippines )ere not onl1 e<ected in a ver1 insi'ni+cant Duantit1 but )ithout

the opposer LpetitionerI havin' a direct or indirect hand in the transaction so

as to be ade the basis for tradear- pre; eeption.

Opposers proof of its corporate personalit1 cannot establish the use of the

)ord CON$ER/E in an1 sense, as it is alread1 stipulated that it is not



Respondents )itness had no 9dea )h1 respondent chose :N9$ER/A& CON$ER/E as

tradear- and the record discloses no reasonable eplanation for respondents use of the

)ord CON$ER/E in its tradear-. /uch uneplained use b1 respondent of the doinant

)ord of petitioners corporate nae lends itself open to the suspicion of fraudulent otive to

trade upon petitioners reputation, thus

A boundless choice of )ords, phrases and s1bols is available to one )ho

)ishes a tradear- su7cient unto itself to distin'uish his product fro those

of others. @hen, ho)ever, there is no reasonable eplanation for the

defendants choice of such a ar- thou'h the +eld for his selection )as so

broad, the inference is inevitable that it )as chosen deliberatel1 to deceive. 13

6he testion1 of petitioners )itness, )ho is a le'itiate trader as )ell as the invoices

evidencin' sales of petitioners products in the Philippines, 'ive credence to petitioners

clai that it has earned a business reputation and 'ood)ill in this countr1. 6he sales

invoices subitted b1 petitioners lone )itness sho) that it is the )ord CON$ER/E that

ainl1 9denti+es petitioners products, i.e. CON$ER/E C3:C0 6AK&OR, 1 CON$ER/E A&&

/6AR, 15 A&& /6AR CON$ER/E C3:C0 6AK&OR, 16 or CON$ER/E /3OE/ C3:C0 and 6AK&OR. 17 6hus, contrar1 to the deterination of therespondent %irector of Patents, the )ord CON$ER/E has 'ro)n to be 9denti+ed )ith petitioners products, and in this sense, has acDuired a

second eanin' )ithin the contet of tradear- and tradenae la)s.

?urtherore, said sales invoices provide the best proof that there )ere actual sales of

petitioners products in the countr1 and that there )as actual use for a protracted period of

petitioners tradear- or part thereof throu'h these sales. 6he ost convincin' proof of

use of a ar- in coerce is testion1 of such )itnesses as custoers, or the orders of

bu1ers durin' a certain period. 1+ Petitioners )itness, havin' a7red her lac- of business connections )ith petitioner, has

testi+ed as such custoer, supportin' stron'l1 petitioners ove for tradear- pre;eption.

6he sales of 2 to 2 pairs a onth of petitioners rubber shoes cannot be considered

insi'ni+cant, considerin' that the1 appear to be of hi'h epensive Dualit1, )hich not too

an1 bas-etball pla1ers can a<ord to bu1. An1 sale ade b1 a le'itiate trader fro hisstore is a coercial act establishin' tradear- ri'hts since such sales are ade in due

course of business to the 'eneral public, not onl1 to liited individuals. 9t is a atter of

public -no)led'e that all brands of 'oods +lter into the ar-et, indiscriinatel1 sold b1

obbers dealers and erchants not necessaril1 )ith the -no)led'e or consent of the

anufacturer. /uch actual sale of 'oods in the local ar-et establishes tradear- use )hich

serves as the basis for an1 action aied at tradear- pre; eeption. 9t is a corollar1 lo'ical

deduction that )hile Converse Rubber Corporation is not licensed to do business in the

countr1 and is not actuall1 doin' business here, it does not ean that its 'oods are not

bein' sold here or that it has not earned a reputation or 'ood)ill as re'ards its products. 6he

%irector of Patents )as, therefore, reiss in rulin' that the proofs of sales presented )as

ade b1 a sin'le )itness )ho had never dealt )ith nor had never -no)n opposerLpetitionerI )ithout Opposer havin' a direct or indirect hand in the transaction to be

the basis of tradear- pre; eeption.

Another factor )h1 respondents applications should be denied is the confusin' siilarit1

bet)een its tradear- :N9$ER/A& CON$ER/E AN% %E$9CE and petitioners corporate

nae andHor its tradear-s C3:C0 6AK&OR and A&& /6AR %E$9CE )hich could confuse

the purchasin' public to the preudice of petitioner,



6he tradear- of respondent :N9$ER/A& CON$ER/E and %E$9CE is iprinted in a circular

anner on the side of its rubber shoes. 9n the sae anner, the tradear- of petitioner

)hich reads CON$ER/E C3:C0 6AK&OR is iprinted on a circular base attached to the side

of its rubber shoes. 6he deteinative factor in ascertainin' )hether or not ar-s are

confusin'l1 siilar to each other is not )hether the challen'ed ar- )ould actuall1 cause

confusion or deception of the purchasers but )hether the use of such ar- )ould li-el1

cause confusion or ista-e on the part of the bu1in' public. 9t )ould be su7cient, for

purposes of the la), that the siilarit1 bet)een the t)o labels is such that there is a

possibilit1 or li-elihood of the purchaser of the older brand ista-in' the ne) brand for

it. 19 Even if not an the details ust entioned )ere identical, )ith the 'eneral appearance alone of the t)o products, an1 ordinar1, or even

perhaps even LsicI a not too perceptive and discriinatin' custoer could be deceived ... 20

@hen the la) spea-s co;purchaser, the reference is to ordinar1 avera'e purchaser. 21 9t is

not necessar1 in either case that the reseblance be su7cient to deceive eperts, dealers, or other

persons speciall1 failiar )ith the tradear- or 'oods involve. 22

6he siilarit1 1 in the 'eneral appearance of respondents tradear- and that of petitioner

)ould evidentl1 create a li-elihood of confusion aon' the purchasin' public. But evenassuin', ar'uendo, that the tradear- sou'ht to be re'istered b1 respondent is

distinctivel1 dissiilar fro those of the petitioner, the li-elihood of confusion )ould still

subsists, not on the purchasers perception of the 'oods but on the ori'ins thereof. B1

appropriatin' the )ord CON$ER/E, respondents products are li-el1 to be ista-en as

havin' been produced b1 petitioner. 6he ris- of daa'e is not liited to a possible

confusion of 'oods but also includes confusion of reputation if the public could reasonabl1

assue that the 'oods of the parties ori'inated fro the sae source. 23

9t is unfortunate that respondent %irector of Patents has concluded that since the petitioner

is not licensed to do business in the countr1 and is actuall1 not doin' business on its o)n in

the Philippines, it has no nae to protect iN the foru and thus, it is futile for it to establish

that CON$ER/E as part of its corporate nae identi+es its rubber shoes. 6hat a forei'ncorporation has a ri'ht to aintain an action in the foru even if it is not licensed to do

business and is not actuall1 doin' business on its o)n therein has been enunciated an1

ties b1 this Court. 9n La Che0ise Lacoste) S.-. 1s. 2ernande() 2! /CRA G>G, this Court,

reiteratin' 3estern 45uip0ent and Suppl+ Co. 1s. Re+es) " Phil. ", stated that

... a forei'n corporation )hich has never done an1 business in the Philippines

and )hich is unlicensed and unre'istered to do business here, but is )idel1

and favorabl1 -no)n in the Philippines throu'h the use therein of its products

bearin' its corporate and tradenae, has a le'al ri'ht to aintain an action in

the Philippines to restrain the residents and inhabitants thereof fro

or'ani(in' a corporation therein bearin' the sae nae as the forei'ncorporation, )hen it appears that the1 have personal -no)led'e of the

eistence of such a forei'n corporation, and it is apparent that the purpose of

the proposed doestic corporation is to deal and trade in the sae 'oods as

those of the forei'n corporation.

@e further held



6hat copan1 is not here see-in' to enforce an1 le'al or

control ri'hts arisin' fro or 'ro)in' out of, an1 business )hich

it has transacted in the Philippine 9slands. 6he sole purpose of

the action

9s to protect its reputation, its corporate nae, its 'ood)ill

)henever that reputation, corporate nae or 'ood)ill have,

throu'h the natural developent of its trade, established

theselves. And it contends that its ri'hts to the use of its

corporate and trade nae

9s a propert1 ri'ht, a ri'ht in recess )hich it a1 assert and

protect a'ainst all the )orld, in an1 of the courts of the )orld

even in urisdictions )here it does not transact business;ust the

sae as it a1 protect its tan'ible propert1, real or personal

a'ainst trespass, or conversion. Citin' sec. , Nis on :nfairCopetition and 6radear-s and cases citedF secs. 2;22,

3op-ins on 6radear-s, 6rade Naes and :nfair Copetition

and cases cited 6hat point is sustained b1 the authorities, and is

)ell stated in 6ano1er Star Millin' Co. 1s. -llen and 3heeler Co.

L2 ?ed., "G, in )hich the s1llabus sa1s

/ince it is the trade and not the ar- that is to be protected, a

tradear- ac-no)led'es no territorial boundaries of

unicipalities or states or nations, but etends to ever1 ar-et

)here the traders 'oods have becoe -no)n and 9denti+ed b1

the use of the ar-.

6he rulin' in the aforecited case is in consonance )ith the Convention of the :nion of Paris

for the Protection of 9ndustrial Propert1 to )hich the Philippines becae a part1 on

/epteber 2>, !#". Article thereof provides that a trade nae Lcorporate naeI shall be

protected in all the countries of the :nion )ithout the obli'ation of +lin' or re'istration,

)hether or not it fors part of the tradear-. Lephasis suppliedI

6he obect of the Convention is to accord a national of a eber nation etensive protection

a'ainst infrin'eent and other t1pes of unfair copetition L$anitar1 ?air Mills, 9nc. vs. 6.

Eaton Co., 2G= ?. 2d #GG.

6he andate of the aforeentioned Convention +nds ipleentation in /ec. G> of RA No.

##, other)ise -no)n as the 6radear- &a)

/ec. G>. Ri'hts of ?orei'n Re'istrants;Persons )ho are nationals of, doiciled

or have a bona +de or e<ective business or coercial establishent in an1

forei'n countr1, )hich is a part1 to an international convention or treat1

relatin' to ar-s or tradenaes on the repression of unfair copetition to



alle'edl1 nothin' to deterine as to )ho has the ri'ht to re'istration because both parties

have the ri'ht to have their respective tradear-s re'istered.

&astl1, petitioner asserts that respondent court should have a)arded daa'es in its favor

because private respondent had clearl1 pro+ted fro the infrin'eent of the forers

tradear-.

6he ain issue involved in this case is )hether or not private respondents tradear- ?R:96

?OR E$E and its han' ta' are confusin'l1 siilar to petitioners tradear- ?R:96 O? 63E

&OOM and its han' ta' so as to constitute an infrin'eent of the latters tradear- ri'hts

and ustif1 the cancellation of the forer.

9n cases involvin' infrin'eent of tradear- brou'ht before this Court it has been

consistentl1 held that there is infrin'eent of tradear- )hen the use of the ar- involved

)ould be li-el1 to cause confusion or ista-e in the ind of the public or to deceive

purchasers as to the ori'in or source of the coodit1 4Co 6ion' /a vs. %irector of Patents,

!" Phil. F Alhabra Ci'ar 8 Ci'arette Co. vs. Moica, 2> Phil. 2##F /apolin Co. vs.

Balaceda, #> Phil. >"F &a 9nsular vs. Jao O'e, => Phil. >"5.

9n cases of this nature, there can be no better evidence as to )hether there is a confusin'

siilarit1 in the contestin' tradear-s than the labels or han' ta's theselves. A visual

presentation of the labels or han' ta's is the best ar'uent for one or the other, hence, @e

are reproducin' hereunder pictures of the han' ta's of the products of the parties to the

case. 6he pictures belo) are part of the docuentar1 evidence appearin' on pa'e 2= of

the ori'inal records.

Petitioner asseverates in the third and fourth assi'nent of errors, )hich, as @e have said,

constitute the ain ar'uent, that the doinant features of both tradear-s is the )ord

?R:96. 9n deterinin' )hether the tradear-s are confusin'l1 siilar, a coparison of the)ords is not the onl1 deterinant factor. 6he tradear-s in their entiret1 as the1 appear in

their respective labels or han' ta's ust also be considered in relation to the 'oods to

)hich the1 are attached. 6he discernin' e1e of the observer ust focus not onl1 on the

predoinant )ords but also on the other features appearin' in both labels in order that he

a1 dra) his conclusion )hether one is confusin'l1 siilar to the other 4Bristol M1ers Co.

vs. %irector of Patents, > /CRA G5.

9n the tradear-s ?R:96 O? 63E &OOM and ?R:96 ?OR E$E, the lone siilar )ord is ?R:96.

@E a'ree )ith the respondent court that b1 ere pronouncin' the t)o ar-s, it could hardl1

be said that it )ill provo-e a confusion, as to ista-e one for the other. /tandin' b1 itself,

?R:96 O? 63E &OOM is )holl1 di<erent fro ?R:96 ?OR E$E. @E do not a'ree )ith petitioner

that the doinant feature of both tradear-s is the )ord ?R:96 for even in the printin' of

the tradear- in both han' ta's, the )ord ?R:96 is not at all ade doinant over the other

)ords.

As to the desi'n and colorin' schee of the han' ta's, @e believe that )hile there are

siilarities in the t)o ar-s li-e the red apple at the center of each ar-, @e also +nd

di<erences or dissiilarities )hich are 'larin' and stri-in' to the e1e such as



G.R. No. L-215+7 M"* 19, 1966

'R(STOL M%ERS COMPAN%, petitioner,vs.T!E D(RECTOR O PATENTS "#$ UN(TED AMER(CAN P!ARMACEUT(CALS,

(NC., respondents.

Pica(o and -'caoili for petitioner.S+cip) Sala(ar) Luna and -ssociates for respondent 8nited -0erican Phar0aceuticals) 9nc.Oce of the Solicitor General -rturo -. -lafri() -ssistant Solicitor General -. -. /orres andSolicitor -. V. Se0pio:Di+) for Director of Patents.

'ENG4ON, .P., J.:

A petition for re'istration in the Principal Re'ister of the Patent O7ce of the tradear-B9O?ER9N )as +led on October 2, !"> b1 :nited Aerican Pharaceuticals, 9nc. /aiddoestic corporation +rst used the afore;stated tradear- in the Philippines on Au'ust G,!">. 9t covers a edicinal preparation of antihistaic, anal'esic, antip1ritic )ith vitain Cand Bioavenoid used in the treatent of coon colds, inuen(a and other febrilediseases )ith capillar1 heorrha'ic tendencies. 6he product falls under Class # of theo7cial classi+cation, that is, Medicines and Pharaceutical Preparations.

Bristol M1ers Co., a corporation of the /tate of %ela)are, :./.A., +led on Januar1 #, !"! anopposition to the application. /aid oppositor is the o)ner in the Philippines of the tradear-B:??ER9N under Certi+cate of Re'istration No. ="> issued b1 the Philippine Patent O7ceon March G, !"=. 9ts tradear- is also re'istered in the :nited /tates under Certi+cate ofRe'istration No. "##! issued on Noveber =, !"2. 9t )as +rst used in the Philippines onMa1 G, !"G. 6he product covered b1 B:??ER9N also belon's to Class #, Medicines andPharaceutical Preparations. %esi'nated as Antacid anal'esic, it is intended for relief incases of siple headaches, neural'ia, colds, enstrual pain and inor uscular aches.

6he thrust of oppositors contention )as that the re'istration of the applicants tradear-B9O?ER9N )ould violate its ri'hts and interests in its re'istered tradear- B:??ER9N as)ell as islead and confuse the public as to the source and ori'in of the 'oods covered b1the respective ar-s, in vie) of the alle'edl1 practicall1 the sae spellin', pronunciationand letter;t1pe desi'n of the t)o tradear-s coverin' 'oods of the sae class.

6he parties thereafter +led on Januar1 , !# a oint petition stipulatin' as to the facts andsubittin' the case upon the issue of )hether or not, considerin' all the factors involved, inboth tradear-s as the parties "ould discuss in their 0e0oranda); there )ill be suchconfusin' siilarit1 bet)een the t)o tradear-s as )ill be li-el1 to deceive the purchasin'public.

After subission of eoranda, on June 2, !#G the %irector of Patents rendered adecision 'rantin' the petition for re'istration and disissin' the opposition, on the 'roundthat, all factors considered the tradear-s in Duestion are not confusin'l1 siilar, so thatthe daa'e feared b1 the oppositor )ill not result.

?ro said decision the oppositor appealed to this Court b1 petition for revie) +led on Jul12=, !#G. 6he sole issue raised thereb1 is Are the tradear-s B9O?ER9N and B:??ER9N,as presented to the public in their respective labels, confusin'l1 siilar



4Auburn Rubber Corporation vs. 3onover Rubber Co., > ? 2d ", "!, citin' Procter and*able Co. vs. J. &. Prescot Co., =! ? 2d !"!, CCPA, Patents, =GGF chan roblesvirtuala)librar1Pepsodent Co. vs.Cofort Manufacturin' Co., G ? 2d !#F chanroblesvirtuala)librar12G CCPA, Patents, 2=5

6he dan'er of confusion in tradear-s and brands )hich are siilar a1 not be so 'reat inthe case of coodities or articles of relativel1 'reat value, such as, radio and televisionsets, air conditionin' units, achiner1, etc., for the prospective bu1er, 'enerall1 the head of

the fail1 or a businessan, before a-in' the purchase, reads the paphlets and allliterature available, describin' the article he is plannin' to bu1, and perhaps even a-escoparisons )ith siilar articles in the ar-et. 3e is not li-el1 to be deceived b1 siilarit1in the tradear-s because he a-es a ore or less thorou'h stud1 of the sae and a1even consult his friends about the relative erit and perforance of the article orachiner1, as copared to others also for sale. But in the sale of a food seasonin' product,a -itchen article of ever1da1 consuption, the circustances are far di<erent. /aid productis 'enerall1 purchased b1 coo-s and household help, soeties illiterate )ho are 'uided b1pictorial representations and the sound of the )ord descriptive of said representation. 6het)o roosters appearin' in the tradear- of the applicant and the hen appearin' on thetradear- of the Oppositor , althou'h of di<erent sees, belon' to the sae fail1 of chic-en, -no)n as ano- in all the principal dialects of the Philippines, and )hen a coo- or ahousehold help or even a house)ife bu1s a food seasonin' product for the -itchen the brand

of QMano- or QMarca Mano- )ould ost li-el1 be upper ost in her ind and )ouldinuence her in selectin' the product, re'ardless of )hether the brand pictures a hen or arooster or t)o roosters. 6o her, the1 are all ano-. 6herein lies the confusion, evendeception.

@e do not see )h1 applicant could not have stretched his ia'ination even a little andetended his choice to other ebers of the anial -in'do, as a brand to di<erentiate hisproduct fro siilar products in the ar-et. 9n a siilar case decided b1 this 6ribunal)herein, althou'h one brand consistin' of the representation of a rooster )as alread1 bein'used b1 one part1, another part1 )anted to re'ister a siilar brand, consistin' of t)oroosters on a siilar product, nael1, cand1, this Court saidchanroblesvirtualla)librar1

QCounsel for Defendant insists that there is no real reseblance bet)een a picture of onerooster and a picture of t)o roostersF chan roblesvirtuala)librar1that no person could or )ould be deceived b1 the

use b1 theDefendant of a trade;ar- )holl1 distinct fro that of the Plainti> Fchan roblesvirtuala)librar1

that the factthat theDefendant used t)o roosters as its tradear- clearl1 discloses its innocence of an1intent to deceive, since a coparison of the trade;ar- of the Plainti> )ith that of the Defendant a-es apparent at once that )as not intended to be an iitation of the other.

Q@e as-, ho)ever, )h1, )ith all the birds in the air, and all the +shes in the sea, and all theanials on the face of the earth to chose fro, the Defendant copan1 selected t)oroosters as its trade; ar-, althou'h its directors, and ana'ers ust have been )ell a)areof the lon';continued use of a rooster b1 the Plainti> in connection )ith the sale andadvertiseent of his 'oods

Q6here is nothin' in the picture of one or ore roosters )hich in itself is descriptive of the'oods sold b1 the Plainti> or b1 the Defendant corporation, or su''estive of the Dualit1 of these 'oods. A cat, or do', a carabao, a shar-, or an ea'le staped upon the container in

)hich candies are sold )ould serve as )ell as a rooster for purposes of identi+cation as theproduct of Defendant Ss factor1. @h1 did Defendant select t)o roosters as its trade;ar- @ecannot doubt that it )as because the Plainti> Ss candies had acDuired a certain reputationunder the trade;ar- of a rooster, and the Defendant corporation hoped to pro+t unustl1 b1that reputation. Defendant -ne) that the use of a sin'le rooster )ould be prohibited as atechnical infrin'eent of Plainti> Ss trade;ar-, but it hoped that it could avoid that dan'erb1 the use of t)o roostersF chan roblesvirtuala)librar1and at the sae tie 'et such advanta'e as it ust havebelieved it could secure fro the use of a desi'n on the containers of its 'oods, notabsolutel1 identical )ith that used b1 the Plainti> , but so siilar in the doinant idea as toconfuse or islead the purchasers crala) . 4Clar-e vs. Manila Cand1 Co., Phil. G#5



discover earlier the defect he no) coplains of, if an1, and in not ta-in' steps to correct it

before the records )ere elevated to this Court.

An application for re'istration is not bound b1 the date of +rst use as stated b1 hi in his

application, but is entitled to carr1 bac- said stated date of +rst use to a prior date b1 proper

evidenceF but in order to sho) an earlier date of use, he is then under a heav1 burden, and

his proof ust be clear and convincin' 4Anchor 6radin' Co., 9nc. vs. 6he %irector of Patents,

et al., &;=, G Ma1 !"#F Chun' 6e vs. N' 0ian *iab, et al.,

&;2G>!, 2G Noveber !##5. 9n the case at bar, the proof of date of +rst use 4!"G5, earlier

than that alle'ed in respondent Mali)ats application 4!#25, can be no less than clear and

convincin' because the fact )as stipulated and no proof )as needed.

Petitioner )ould con+ne the respondent to the use of the ar- ?&ORMANN to tailorin' and

haberdasher1 onl1, but not on shoes, on the 'round that petitioner had used the nae

?&ORMEN on shoes since !"!, )hile the respondent used his ar- on shoes onl1 in !#2F

but the %irector ruled

. . . 9 believe that it is no) the coon practice aon' local tailors and haberdashersto branch out into articles of anufacture )hich have, one )a1 or another, soe

direct relationship )ith or appurtenance to 'arents or attire to coplete ones

)ardrobe such as belts, shoes, hand-erchiefs, and the li-e, . . . 9t 'oes )ithout sa1in'

that shoes on one hand and shirts, pants and ac-ets on the other, have the sae

descriptive properties for purposes of our 6radear- &a).

Modern la) reco'ni(es that the protection to )hich the o)ner of a tradear- ar- is

entitled is not liited to 'uardin' his 'oods or business fro actual ar-et copetition )ith

identical or siilar products of the parties, but etends to all cases in )hich the use b1 a

unior appropriator of a tradear- or tradenae is li-el1 to lead to a confusion of source, as

)here prospective purchasers )ould be isled into thin-in' that the coplainin' part1 hasetended his business into the +eld 4see = A&R "# et seDF "2 A. Jur. ">#5 or is in an1 )a1

connected )ith the activities of the infrin'erF or )hen it forestalls the noral potential

epansion of his business 4v. = A&R, >>, =F "2 A. Jur. ">#, ">>5. 9t is on this basis that

the respondent %irector of Patents adverted to the practice aon' local tailors and

haberdashers to branch out into articles of anufacture )hich have soe direct

relationship . . . to 'arents or attire to coplete ones )ardrobe. Mere dissiilarit1 of

'oods should not preclude relief )here the unior users 'oods are not too di<erent or

reote fro an1 that the o)ner )ould be li-el1 to a-e or sellF and in the present case,

)earin' apparel is not so far reoved fro shoes as to preclude relief, an1 ore than the

panca-e our is fro s1rup or su'ar crea 4Aunt Jeia Mills Co. vs. Ri'ne1 8 Co., &RA

! C G!5, or ba-in' po)der fro ba-in' soda 4&a1ton Pure ?ood Co. vs. Church 8 Co.,

2 ?ed. G"5, or cosetics and toilet 'oods fro ladies )earin' apparel and costue

e)elr1 4&ad1 Esther &td. vs. &ad1 Esther Corset /hoppe, = A&R #5. More speci+call1,

anufacturers of ens clothin' )ere declared entitled to protection a'ainst the use of their

tradear- in the sale of hats and caps LRosenber' Bros. vs. Elliott, > ?ed. 42d5 !#2I and of

ladies shoes 4?ors1the 8 Co. vs. ?ors1the /hoe Corp., 2"= NK/ "=5. 9n all these cases, the

courts declared the o)ner of a tradear- fro the +rst naed 'oods entitled to eclude use

of its tradear- on the related class of 'oods above;referred to.



9t a1 be that previousl1 the respondent dre) a closer distinction aon' -inds of 'oods to

)hich the use of siilar ar-s could be appliedF but it can not be said that the present

rulin' under appeal is so devoid of basis in la) as to aount to 'rave abuse of discretion

)arrantin' reversal.

Republic Act No. ##, as aended, provides

/ec. =. . . . 6he o)ner of a tradear-, tradenae or service;ar- used to distin'uish

his 'oods, business or services fro the 'oods, business or services of others shall

have the ri'ht to re'ister the sae on the principal re'ister, unless it

4d5 Consists of or coprises a ar- or tradenae )hich resebles a ar- or

tradenae re'istered in the Philippines or a ar- or tradenae previousl1 used in

the Philippines b1 another and not abandoned, as to be li-el1, )hen applied to orused in connection )ith the 'oods, business or services of the applicant, to cause

confusion or ista-e or to deceive purchasersF

Note that the provision does not reDuire that the articles of anufacture of the previous user

and the late user of the ar- should possess the sae descriptive properties or should fall

into the sae cate'ories as to bar the latter fro re'isterin' his ar- in the principal

re'ister 4Chua Che vs. Phil. Patent O7ce, et al., &;GG>, G Jan. !#". = citin' Application of

/1lvan /)eets Co., 2" ?. 2nd, 2>5." 6herefore, )hether or not shirts and shoes have the

sae descriptive properties, or )hether or not it is the prevailin' practice or the tendenc1 of tailors and haberdashers to epand their business into shoes a-in', are not controllin'.

6he eat of the atter is the li-elihood of confusion, ista-e or deception upon purchasers

of the 'oods of the unior user of the ar- and the 'oods anufactured b1 the previous

user. 3ere, the reseblance or siilarit1 of the ar- ?&ORMANN and the nae ?&ORMEN

and the li-elihood of confusion, one to the other, is adittedF therefore, the prior adopter,

respondent Mali)at, has the better ri'ht to the use of the ar-.

?OR 63E ?ORE*O9N* REA/ON/, the appealed decision is hereb1 a7red, )ith costs a'ainst

the petitioner.

Concepcion) C.J.) Di(on) Ma,alintal) =aldi1ar) Sanche() Castro) -n'eles and 2ernando) JJ.)

concur.!"ph#.$%t



such that there is a possibilit1 or li-elihood of the purchaser of the older brand ista-in' the ne)er

brand for it. 5

Can it be said then that petitioners application )ould be li-el1 to cause confusion or ista-e

on the part of the bu1in' public 6he ans)er should be in the ne'ative. 9t does not def1

coon sense to assert that a purchaser )ould be co'ni(ant of the product he is bu1in'.

6here is Duite di<erence bet)een so1 sauce and edible oil. 9f one is in the ar-et for the

forer, he is not li-el1 to purchase the latter ust because of the tradear- &O6:/. Even on

the rare occasions that a ista-e does occur, it can easil1 be recti+ed. Moreover, there is no

den1in' that the possibilit1 of confusion is reote considerin' the di<erence in the t1pe

used, the colorin', the petitioners tradear- bein' in 1ello) and red )hile that of the

Philippine Re+nin' Copan1 bein' in 'reen and 1ello), and the uch saller si(e of

petitioners tradear-. @hen re'ard is had for the principle that the t)o tradear-s in their

entiret1 as the1 appear in their respective labels should be considered in relation to the

'oods advertised before re'istration could be denied, the conclusion is inescapable that

respondent %irector ou'ht to have reached a di<erent conclusion. Petitioner has successfull1

ade out a case for re'istration. 6

@3ERE?ORE, the decision of respondent %irector of Patents of Januar1 G, !# is reversed

and petitioners application for re'istration of its tradear- &O6:/ 'ranted. @ithout costs.



6he case of 6.4. 6eacoc, Co. 1s. -0erican /radin' Co., "# Phil. >#G, cited b1

petitioner ; appellee, is hardl1 applicable here, because the defendant in that

case iported and sold erchandise )hich are ver1 siilar to, and precisel1

of the sae desi'ns as, that iported and sold b1 the plainti<. ...

9n the recent case of -co?e Minin' Co.) 9nc. 1s. Director of Patents, G /CRA

=, =2;=G, the /upree Court stated ; !"ph#.$%t

Can it be said then that petitioners application )ould be li-el1

to cause confusion or ista-e on the part of the bu1in' public

6he ans)er should be in the ne'ative. 9t does not def1 coon

sense to assert that a purchaser )ould be co'ni(ant of the

product he is bu1in'. 6here is Duite a di<erence bet)een so1

sauce and edible oil. 9f one is in the ar-et for the forer, he is

not li-el1 to purchase the latter ust because on the tradear-

&O6:/. Even on the rare occasion that a ista-e does occur, it

can easil1 be recti+ed. Moreover, there is no den1in' that the

possibilit1 of confusion is reote considerin' petitionerstradear- bein' in 1ello) and red )hile that of the Philippine

Re+nin' Copan1 bein' in 'reen and 1ello), and the uch

saller si(e of petitioners tradear-. @hen re'ard is had for

the principle that the t)o tradear-s in their entiret1 as the1

appear in their respective labels should be considered in

relation to the 'oods advertised before re'istration could be

denied, the conclusion is inescapable that respondent %irector

ou'ht to have reached a di<erent conclusion. Petitioner has

successfull1 ade out a case for re'istration.

?ro the stateents of the /upree Court in the t)o cases aforeentioned,)e 'ather that there ust be not onl1 reseblance bet)een the tradear- of

the plainti< and that of the defendant, but also siilarit1 of the 'oods to

)hich the t)o tradear-s are respectivel1 attached.

/ince in this case the tradear- of petitioner;appellee is used in the sale of

leather )allets, -e1 cases, one1 folds ade of leather, belts, ens briefs,

nec-ties, hand-erchiefs and ens soc-s, and the tradear- of re'istrant;

appellant is used in the sale of shoes, )hich have di<erent channels of trade,

the %irector of Patents, as in the case of -co?e Minin' Co.) 9nc. 1s. Director of

Patents) supra, ou'ht to have reached a di<erent conclusion.

9t is established doctrine, as held in the above;cited cases, that ephasis should be on the

siilarit1 of the products involved and not on the arbitrar1 classi+cation or 'eneral

description of their properties or characteristics and that the ere fact that one person has

adopted and used a tradear- on his 'oods does not prevent the adoption and use of the sae

tradear- b1 others on unrelated articles of a di<erent -ind. 5 6a-in' into account the facts of record

that petitioner, a forei'n corporation re'istered the tradear- for its diverse articles of ens )ear

such as )allets, belts and ens briefs )hich are all anufactured here in the Philippines b1 a licensee

Tualit1 3ouse, 9nc. 4)hich pa1s a ro1alt1 of ;H2 U of the annual net sales5 but are so labelled as to

'ive the isipression that the said 'oods are of forei'n 4stateside5 anufacture and that respondent



G.R. No. 75067 r)"r* 26, 19++

PUMA SPORTSC!U!A'R(EN RUDOL DASSLER, .G., petitioner

vs.

T!E (NTERMED(ATE APPELLATE COURT "#$ M(L-ORO MANUACTUR(NG

CORPORAT(ON, respondents.

GUT(ERRE4, R., J.:

6his is a petition for revie) b1 )a1 of certiorari of the Court of Appeals decision )hich

reversed the order of the Re'ional 6rial Court and disissed the civil case +led b1 the

petitioner on the 'rounds of litis pendentia and lac- of le'al capacit1 to sue.

On Jul1 2", !", the petitioner, a forei'n corporation dul1 or'ani(ed and eistin' under the

la)s of the ?ederal Republic of *eran1 and the anufacturer and producer of P:MA

PRO%:C6/, +led a coplaint for infrin'eent of patent or tradear- )ith a pra1er for the

issuance of a )rit of preliinar1 inunction a'ainst the private respondent before the

Re'ional 6rial Court of Ma-ati.

Prior to the +lin' of the said civil suit, three cases )ere pendin' before the Philippine Patent

O7ce, nael1

9nter Partes Case No. 2"! entitled P:MA /POR6/C3:3?ABR90EN v. M9&;ORO

MAN:?AC6:R9N* CORPORA69ON, respondent;applicant )hich is an opposition

to the re'istration of petitioners tradear- P:MA and %E$9CE in the

PR9NC9PA& RE*9/6ERF

9nter Partes Case No. #>" siilarl1 entitled, P:MA /POR6/C3:3?ABR90EN

R:%O&? %A//&ER, 0.*., petitioner, versus M9&;ORO MAN:?AC6:R9N*CORPORA69ON, respondent;re'istrant, )hich is a case for the cancellation of

the tradear- re'istration of the petitionerF and

9nter Partes Case No. !=" also bet)een the sae parties this tie the

petitioner pra1in' for the cancellation of private respondents Certi+cate of

Re'istration No. 2#>" 4pp. =;=, 2"", Rollo5 4pp. " ;"2, Rollo5

On Jul1 G, !", the trial court issued a teporar1 restrainin' order, restrainin' the private

respondent and the %irector of Patents fro usin' the tradear- P:MA or an1

reproduction, counterfeit cop1 or colorable iitation thereof, and to )ithdra) fro the

ar-et all products bearin' the sae tradear-.

On Au'ust !, !", the private respondent +led a otion to disiss on the 'rounds that the

petitioners coplaint states no cause of action, petitioner has no le'al personalit1 to sue,

and litis pendentia.

On Au'ust !, !", the trial court denied the otion to disiss and at the sae tie

'ranted the petitioners application for a )rit of inunction. 6he private respondents

appealed to the Court of Appeals.



concluded that petitioner is the prior and actual adaptor of the tradear-

P:MA and %E$9CE used on sports soc-s and belts, and that M9&;ORO

CORPORA69ON is the ri'htful o)ner thereof. ... 4pp. #;>, CA decision, pp. ";

"2, Rollo5

@ith re'ard to the petitioners le'al capacit1 to sue, the Court of Appeals li-e)ise held that

it had no such capacit1 because it failed to alle'e reciprocit1 in its coplaint

As to private respondents havin' no le'al personalit1 to sue, the record

discloses that private respondent )as suin' under /ec. 2;A of Republic Act

No. ##, as aended 4p. ", Anne A, Petition5. 6his is the eception to the

'eneral rule that a forei'n corporation doin' business in the Philippines ust

secure a license to do business before said forei'n corporation could aintain

a court or adinistrative suit 4/ec. GG, Corporation Code, in relation to /ec.

2;A, RA #G, as aended5. 3o)ever, there are soe conditions )hich ust

be et before that eception could be ade to appl1, nael1 4a5 the

tradear- of the suin' corporation ust be re'istered in the Philippines, or

that it be the assi'nee thereof and 4b5 that there eists a reciprocal treatentto Philippine Corporations either b1 la) or convention b1 the countr1 of ori'in

of the forei'n corporation 4/ec. 2;A 6radear- &a)5. Petitioner reco'ni(es

that private respondent is the holder of several certi+cates of re'istration,

other)ise, the forer )ould not have instituted cancellation proceedin's in

the Patents O7ce. Petitioner actuall1 (eroes on the second reDuisite provided

b1 /ection 2;A of the 6radear- &a) )hich is the private respondents failure

to alle'e reciprocit1 in the coplaint. ...

Citin' the case of Le1iton 9ndustries 1. Sal1ador 4= /CRA =25, it further ruled

?ailure to alle'e reciprocit1, it bein' an essential fact under the tradear- la)re'ardin' its capacit1 to sue before the Philippine courts, is fatal to the forei'n

corporations cause. 6he Concurrin' Opinion of Chief Justice ADuino on the

sae case is ore ephatic )hen he said

Respondent &eviton Manufacturin' Co. 9nc., alle'ed in par. 2 of

its coplaint for unfair copetition that its action is bein' +led

under the provisions of /ection 2;A of Republic Act No. ##, as

aended. Respondent is bound b1 the alle'ation in its

coplaint. 9t cannot sue under /ection 2;A because it has not

coplied )ith the reDuireents hereof that 45 its tradear-

&eviton has been re'istered )ith the Patent O7ce and 425 that it

should sho) that the /tate of Ne) Kor- 'rants to Philippine

Corporations the privile'e to brin' an action for unfair

copetition in that state. Respondent &eviton has to copl1

)ith those reDuireents before it can be allo)ed to aintain an

action for unfair copetition. 4p. !, CA decision5. 4p. "",

Rollo5.



6he Court of Appeals further ruled that in issuin' the )rit of preliinar1 inunction, the trial

court coitted 'rave abuse of discretion because it deprived the private respondent of its

da1 in court as the latter )as not 'iven the chance to present its counter;evidence.

9n this petition for revie), the petitioner contends that the Court of appeals erred in holdin'

that 45 it had no le'al capacit1 to sueF 425 the doctrine of lis pendens is applicable as a

'round for disissin' the case and 4G5 the )rit of inunction )as iproperl1 issued.

Petitioner aintains that it has substantiall1 coplied )ith the reDuireents of /ection 2;A

of Republic Act R.A. No. ##, as aended. Accordin' to the petitioner, its coplaint

speci+call1 alle'ed that it is not doin' business in the Philippines and is suin' under the said

Repulbic ActF that /ection 2;A thereof provides that the countr1 of )hich the said

corporation or uristic person is a citi(en, or in )hich it is doiciled, b1 treat1, convention or

la), 'rants a siilar privile'e to corporate or uristic persons of the Philippines but does not

andatoril1 reDuire that such reciprocit1 bet)een the ?ederal Republic of *eran1 and the

Philippines be pleadedF that such reciprocit1 arran'eent is ebodied in and supplied b1

the :nion Convention for the Protection of 9ndustrial Propert1 Paris Convention5 to )hich

both the Philippines and ?ederal Republic of *eran1 are si'natories and that since theParis Convention is a treat1 )hich, pursuant to our Constitution, fors part of the la) of the

land, our courts are bound to ta-e udicial notice of such treat1, and, conseDuentl1, this fact

need not be averred in the coplaint.

@e a'ree.

9n the leadin' case of La Che0ise Lacoste) S.- .1. 2ernande( , 42! /CRA G>G5, )e ruled

But even assuin' the truth of the private respondents alle'ation that the

petitioner failed to alle'e aterial facto in its petition relative to capacit1 to

sue, the petitioner a1 still aintain the present suit a'ainst respondent3ernandes. As earl1 as !2>, this Court )as, and it still is, of the vie) that a

forei'n corporation not doin' business in the Philippines needs no license to

sue before Philippine courts for infrin'eent of tradear- and unfair

copetition. 6hus, in 3estern 45uip0ent and Suppl+ Co. 1. Re+es 4" Phil.

"5, this Court held that a forei'n corporation )hich has never done an1

business in the Philippines and )hich is unlicensed and unre'istered to do

business here, but is )idel1 and favorabl1 -no)n in the Philippines throu'h

the use therein of its products bearin' its corporate and tradenae, has a

le'al ri'ht to aintain an action in the Philippines to restrain the residents and

inhabitants thereof fro or'ani(in' a corporation therein bearin' the sae

nae as the forei'n corporation, )hen it appears that the1 have personal

-no)led'e of the eistence of such a forei'n corporation, and it is apparent

that the purpose of the proposed doestic corporation is to deal and trade in

the sae 'oods as those of the forei'n corporation.

Tuotin' the Paris Convention and the case of Vanit+ 2air Mills) 9nc. 1. /. 4aton) Co. 42G= ?. 2d

#GG5, this Court further said



:nion )ithout the obli'ation of +lin' or re'istration, "hether or not it for0s

part of the trade0ar,.<

6he obect of the Convention is to accord a national of a eber nation

etensive protection a'ainst infrin'eent and other t1pes of unfair

copetition L$anit1 ?air Mills, 9nc. v. 6. Eaton Co., 2G= ?. 2d #GGI. 4at p. #"5

6he andate of the aforeentioned Convention +nds ipleentation in

/ection G> of RA No. ##, other)ise -no)n as the tradear- &a)

Ri'hts of 2orei'n Re'istrants. Persons )ho are nationals of, doiciled in, or

have a bona +de or e<ective business or coercial establishent in an1

forei'n countr1, )hich is a part1 to an international convention or treat1

relatin' to ar-s or tradenaes on the represssion of unfair copetition to

)hich the Philippines a1 be part1, shall be entitled to the bene+ts and

subect to the provisions of this Act ...

6radenaes of persons described in the +rst para'raph of this section shall beprotected )ithout the obli'ation of +lin' or re'istration )hether or not the1

for part of ar-s.

@e, therefore, hold that the petitioner had the le'al capacit1 to +le the action belo).

Anent the issue of lis pendens as a 'round for a otion to disiss, the petitioner subits

that the relief pra1ed for in its civil action is di<erent fro the relief sou'ht in the 9nter

Partes cases. More iportant, ho)ever, is the fact that for lis pendens to be a valid 'round

for the disissal of a case, the other case pendin' bet)een the sae parties and havin' the

sae cause ust be a court action. As )e have held in Solancho 1. Ra0os 4! /CRA =5

As noted above, the defendants contend that the pendenc1 of an

adinistrative bet)een theselves and the plainti< before the Bureau of

&ands is a su7cient 'round to disiss the action. On the other hand, the

plainti<, believin' that this 'round as interposed b1 the defendants is a

su7cient 'round for the disissal of his coplaint, +led a otion to )ithdra)

his free patent application No. ##=!.

6his is not )hat is conteplated under the la) because under section 4d5,

Rule # 4forerl1 Rule 5 of the Rules of Court, one of the 'rounds for the

disissal of an action is that there is another action pendin' bet)een the

sae parties for the sae cause. Note that the Rule uses the phrase another

action. 6his phrase should be construed in line )ith /ection of Rule 2, )hich

de+nes the )ord action, thus;;

Action eans an ordinar1 suit in a court of ustice b1 )hich one

part1 prosecutes another for the enforceent or protection of

alri'ht, or the prevention or redress of a )ron'. Ever1 other

reed1 is a special proceedin'.



9t is,therefore,ver1 clear that the Bureau of &and is not covered under the

aforeentioned provisions of the Rules of Court. 4at p. "5

6hus, the Court of Appeals li-e)ise erred in holdin' that the reDuisites of lis pendens )ere

present so as to ustif1 the disissal of the case belo).

As re'ards the propriet1 of the issuance of the )rit of preliinar1 inunuction, the records

sho) that herein private respondent )as 'iven the opportunit1 to present its counter;

evidence a'ainst the issuance thereof but it intentionall1 refused to do so to be consistent

)ith its theor1 that the civil case should be disissed in the +rst place.

Considerin' the fact that P:MA is an internationall1 -no)n brand nae, it is pertinent to

reiterate the directive to lo)er courts, )hich eDuall1 applies to adinistrative a'encies,

found in La Che0ise Lacoste) S.-. 1. 2ernande() supraI

One +nal point. 9t is essential that )e stress our concern at the seein'

inabilit1 of la) enforceent o7cials to ste the tide of fa-e and counterfeit

consuer ites oodin' the Philippine ar-et or eported abroad fro ourcountr1. 6he 'reater victi is not so uch the anufacturer )hose product is

bein' fa-ed but the ?ilipino consuin' public and in the case of eportations,

our ia'e abroad. No less than the President, in issuin' Eecutive Order No.

!G dated October >, !G to stren'then the po)ers of the Minister of 6rade

and 9ndustr1 for the protection of consuers, stated that, aon' other acts,

the dupin' of substandard, iitated, ha(ardous, and cheap 'oods, the

infrin'eent of internationall1 -no)n tradenaes and tradear-s, and the

unfair trade Practices of business +rs have reached such proportions as to

constitute econoic sabota'e. @e bu1 a -itchen appliance, a household tool,

perfue, face po)der, other toilet articles, )atches, brand1 or )his-1, and

ites of clothin' li-e eans, 6;shirts, nec-ties, etc. the list is Duite len'th1 pa1 'ood one1 rel1in' on the brand nae as 'uarantee of its Dualit1 and

'enuine nature onl1 to eplode in bitter frustration and helpless an'er

because the purchased ite turns out to be a shodd1 iitation, albeit a clever

loo-in' counterfeit, of the Dualit1 product. Jud'es all over the countr1 are )ell

advised to reeber that court processes should not be used as instruents

to, un)ittin'l1 or other)ise, aid counterfeiters and intellectual pirates, tie the

hands of the la) as it see-s to protect the ?ilipino consuin' public and

frustrate eecutive and adinistrative ipleentation of solen

coitents pursuant to international conventions and treaties. 4at p. =G5

@3ERE?ORE, the appealed decision of the Court of Appeals dated June 2G, !# is

RE$ER/E% and /E6 A/9%E and the order of the Re'ional 6rial Court of Ma-ati is hereb1

Reinstated. /O OR%ERE%.

G.R. No. 7+29+ "#)"r* 30, 19+9

<OL&ER(NE <ORLD<(DE, (NC., petitioner,

vs.

!ONORA'LE COURT O APPEALS "#$ LOL(TO P. CRU4, respondents.



obtained re'istration contrar1 to the aboveentioned PAR9/ CON$EN69ON

andHor Philippine &a), the1 shall be directed to surrender their Certi+cates of

Re'istration to the Philippine Patent O7ce for iediate cancellation

proceedin's. 13

9t is thus contended that despite the previous 'rant of re'istration to the private respondent,

the present petition for cancellation could still be brou'ht, and the sae should be 'ranted

b1 the %irector of Patents, pursuant to the aboveDuoted clause. /tated other)ise, the

petitioner su''ests that the petition is not barred b1 res ?udicatabecause )hile the forer

petitions )ere +led under Republic Act ##, the present one )as brou'ht pursuant to the

cited eorandu )hich epressl1 sanctions the cancellation of re'istration of a tradear-

'ranted even prior to the sae eorandu.

9n the +rst place, the subect eorandu never aended, nor )as it eant to aend, the

6radear- &a). 9t did not indicate a ne) polic1 )ith respect to the re'istration in the

Philippines of )orld;faous tradear-s. 6he protection a'ainst unfair copetition, and

other bene+ts, accorded to o)ners of internationall1 -no)n ar-s, as andated b1 the Paris

Convention, is alread1 'uaranteed under the 6radear- &a). 1 6hus, the subect eorandu,as )ell as Eecutive Order No. !G, erel1 reiterated the polic1 alread1 eistin' at the tie of its

issuance. As accuratel1 enunciated b1 the Court of Appeals

/uch bein' the case, appellant;oppositor could have properl1 ventilated the

issue of )hether or not it fell )ithin the protective abit of the Paris

Convention in the previous proceedin's )hich culinated in the re'istration

of the 3ush Puppies tradear- in appellee;ovants nae, i.e., in Case No.

!#> before the Philippine Patent O7ce. 6he %irector of Patents in that case,

after hearin' both parties and thereafter, decidin' that appellee;ovant )as

entitled to the re'istration of the tradear- in its nae, ust have concluded

that appellant;oppositor had not established the fact that it )as entitled to the

application of the favorable provisionF of the Paris Convention. 15

?urtherore, )e a'ree )ith the conclusion of the Court of Appeals that the eorandu

discussed here is subect to the doctrine of res ?udicata. 6he sae eorandu has, in the

)ords of the Court of Appeals

... no roo for application )here the oppositor previousl1 availed of the sae

reed1 to contest and cancel the re'istration of subect tradear- but did not

prevail, a'ainst the sae re'istrant re'ardin' the sae subect atter 4the

tradear- in Duestion5 and for the sae cause of action. 6his is the ore so

)hen, as in this present controvers1, the certi+cate of re'istration,

cancellation of )hich is sou'ht ane), )as issued b1 the Patent o7ce after duehearin' in the prior appropriate inter partes case, pursuant to a decision of

the %irector of Patents )hich )as a7red on appeal b1 the Court of Appeals,

and has becoe +nal and eecutor1. 16

9n the sae li'ht, the repeated +lin' of petitions for cancellation founded on substantiall1

the sae 'round as provided in /ec. > of the 6radear- &a), )e rule, is not perissible.

?or to allo) )ithout an1 liitation )hatsoever such a practice )ould be clearl1 violative of



the tie;honored doctrine of res ?udicata. 6he present petition for cancellation raises

basicall1 the sae issue of o)nership of the tradear- 3:/3 P:PP9E/, )hich issue )as

alread1 discussed and settled in 9nter Partes Cases Nos. >, >, and >!. As pointed out

b1 the private respondent, the petitioner itself epressl1 reco'ni(ed the issue of o)nership

)hen in the brief it +led in the Court of Appeals it included the follo)in' in the assi'nent of

errors

6hat the Philippine Patent O7ce erred in holdin' that respondent;appellee has established

prior use and adoption of the tradear- 3:/3 P:PP9E/ and is the true and la"ful o"ner

thereof) instead of petitioner;appellant herein. 4Ephasis supplied5. 17

6he aforesaid cases, involvin' as the1 )ere the re'istration of a tradear-, necessaril1

liti'ated the issue of o)nership of such tradear- because o)nership is, indeed, the basis of

re'istration of a tradear-. 1+ 6hus, /ection = of R.A. ## provides . . . 6he o)ner of a tradear-,

trade nae or service;ar- used to distin'uish his 'oods, business or services fro the 'oods,

business or services of others shall have the ri'ht to re'ister the sae on the principal re'ister. . .

Res ?udicata no) bars the petitioner fro reopenin', b1 )a1 of another petition for cancellation 4the

present 9nter Partes Case No. >5, the issue of o)nership of the tradear- 3:/3 P:PP9E/.Other)ise, there )ill never be an end to liti'ation.

@3ERE?ORE, the petition for revie) is %EN9E%.

/O OR%ERE%.



6he Court of Appeals de+ned the issue thus %oes appellant C?CSs trade dress bear a

stri-in' reseblance )ith appelleeSs tradear-s as to create in the purchasin' publicSs ind

the ista-en ipression that both co<ee products coe fro one and the sae source

As stated above, the Court of Appeals, in the assailed decision dated /epteber 2G, !!G,

reversed %ecision No. !;=> of the BP666 and ordered the %irector of Patents to approve

C?CSs application. 6he Court of Appeals ruled

@ere @e to ta-e even a lac-adaisical 'lance at the overall appearance of the

contendin' ar-s, the ph1sical discrepancies bet)een appellant C?CSs and

appelleeSs respective lo'os are so ostensible that the casual purchaser cannot li-el1

ista-e one for the other. Appellant C?CSs label 4Ehibit =5 is predoinantl1 a blend

of dar- and li'hter shade of oran'e )here the )ords ?&A$OR MA/6ER, ?&A$OR

appearin' on top of MA/6ER, shaded in ocha )ith thin )hite inner and outer

sidin's per letter and identicall1 lettered ecept for the sli'htl1 protrudin' botto

curve of the letter / adoinin' the botto tip of the letter A in the )ord MA/6ER,

are printed across the top of a sierin' red co<ee cup. :nderneath ?&A$OR

MA/6ER appears Preiu 9nstant Co<ee printed in )hite, sli and slanted letters.AppelleesS MA/6ER ROA/6 label 4Ehibit >5, ho)ever, is alost double the )idth

of appellant C?CSs. At the top is printed in bro)n color the )ord NE/CA?E a'ainst a

)hite bac-drop. Occup1in' the center is a sDuare;shaped con+'uration shaded )ith

dar- bro)n and picturin' a heap of co<ee beans, )here the )ord MA/6ER is

inscribed in the iddle. MA/6ER in appelleesS label is printed in taller capital

letters, )ith the letter M further capitali(ed. 6he letters are shaded )ith red and

bounded )ith thin 'old;colored inner and outer sidin's. Just above the )ord

MA/6ER is a red )indo) li-e portrait of )hat appears to be a co<ee shrub clad in

'old. Belo) the MA/6ER appears the )ord ROA/6 ipressed in saller, )hite

print. And further belo) are the inscriptions in )hite A selection of prie Arabica

and Robusta co<ee. @ith re'ard to appelleesS MA/6ER B&EN% label 4Ehibit #5 of)hich onl1 a eroed cop1 is subitted, the letters are bolder and taller as copared

to appellant C?CSs and the )ord MA/6ER appears on top of the )ord B&EN% and

belo) it are the )ords U pure instant co<ee printed in sall letters.

?ro the fore'oin' description, )hile the contendin' ar-s depict the sae product,

the 'larin' dissiilarities in their presentation far out)ei'h and dispel an1 aspect of

siilitude. 6o borro) the )ords of the /upree Court in Aerican C1anaid Co. v.

%irector of Patents 4># /CRA "#5, appellant C?CSs and appelleesS labels are entirel1

di<erent in si(e, bac-'round, colors, contents and pictorial arran'eentF in short, the

'eneral appearances of the labels bearin' the respective tradear-s are so distinct

fro each other that appellees cannot assert that the doinant features, if an1, of its

tradear-s )ere used or appropriated in appellant C?CSs o)n. 6he distinctions are so)ell;de+ned so as to foreclose an1 probabilit1 or li-elihood of confusion or deception

on the part of the norall1 intelli'ent bu1er )hen he or she encounters both co<ee

products at the 'rocer1 shelf. 6he ans)er therefore to the Duer1 is a clear;cut NO.#

Petitioners are no) before this Court on the follo)in' assi'nent of errors



. RE/PON%EN6 CO:R6 *RA$E&K ERRE% 9N RE$ER/9N* AN% /E669N* A/9%E 63E

%EC9/9ON 4NO. !;=>5 O? 63E %9REC6OR O? 63E B:REA: O? PA6EN6/, 6RA%EMAR0/

AN% 6EC3NO&O*K 6RAN/?ER 4BP6665 %A6E% %ECEMBER 2>, !!.

2. RE/PON%EN6 CO:R6 ERRE% 9N ?9N%9N* 63A6 APPE&&AN6 C?CS/ 6RA%E %RE// 9/

BEKON% 63E /COPE O? 63E PRO/CR9P69ON &A9% %O@N BK J:R9/PR:%ENCE AN% 63E

6RA%EMAR0 &A@.

G. RE/PON%EN6 CO:R6 ERRE% 9N 3O&%9N* 63A6 63E 6O6A&96K R:&E, RA63ER 63AN

63E 6E/6 O? %OM9NANCK, APP&9E/ 6O 63E CA/E.

=. RE/PON%EN6 CO:R6 ERRE% 9N 9N$O09N* 63E 6O6A&96K R:&E APP&9E% 9N 63E

CA/E/ O? BR9/6O& MKER/ $. %9REC6OR O? PA6EN6/, E6 A&. 4> /CRA 25, MEA%

JO3N/ON 8 CO. $. N$J $AN %OR? &6%., 4> /CRA >#5 AN% AMER9CAN CKANAM9% CO.

$. %9REC6OR O? PA6EN6/ 4># /CRA "#5.

6he petition is ipressed )ith erit.

A tradear- has been 'enerall1 de+ned as an1 )ord, nae, s1bol or device adopted and

used b1 a anufacturer or erchant to identif1 his 'oods and distin'uish the fro those

anufactured and sold b1 others.>

A anufacturerSs tradear- is entitled to protection. As Mr. Justice ?ran-furter observed in

the case of Misha"a,a Mf'. Co. 1. res'e Co.

6he protection of trade;ar-s is the la)Ss reco'nition of the ps1cholo'ical function of

s1bols. 9f it is true that )e live b1 s1bols, it is no less true that )e purchase 'oods

b1 the. A trade;ar- is a erchandisin' short;cut )hich induces a purchaser to

select )hat he )ants, or )hat he has been led to believe he )ants. 6he o)ner of aar- eploits this huan propensit1 b1 a-in' ever1 e<ort to ipre'nate the

atosphere of the ar-et )ith the dra)in' po)er of a con'enial s1bol. @hatever

the eans eplo1ed, the ai is the sae ;;; to conve1 throu'h the ar-, in the

inds of potential custoers, the desirabilit1 of the coodit1 upon )hich it

appears. Once this is attained, the trade;ar- o)ner has soethin' of value. 9f

another poaches upon the coercial a'netis of the s1bol he has created, the

o)ner can obtain le'al redress.

/ection = 4d5 of Republic Act No. ## or the 6radear- &a), as aended, )hich )as in force

at the tie, provides thus

Re'istration of trade:0ar,s) trade:na0es and ser1ice:0ar,s on the principal re'ister .

; 6here is hereb1 established a re'ister of trade;ar-s, trade;naes and service

ar-s )hich shall be -no)n as the principal re'ister. 6he o)ner of a trade;ar-,

trade;nae or service;ar- used to distin'uish his 'oods, business or services fro

the 'oods, business or services of others shall have the ri'ht to re'ister the sae on

the principal re'ister, unless it



?ro this perspective, the test of siilarit1 is to consider the t)o ar-s in their

entiret1, as the1 appear in the respective labels, in relation to the 'oods to )hich

the1 are attached 4&ristol M+ers Co0pan+ 1. Director of Patents) et al., > /CRA

2, citin' Mead Johnson Co. 1. NVJ Van Dorp) Ltd.) et al., > /CRA >#5. 6he ar-

ust be considered as a )hole and not as dissected. 9f the bu1er is deceived, it is

attributable to the ar-s as a totalit1, not usuall1 to an1 part of it 4Del Monte Corp. 1.

C-, supra5, as )hat appellees )ould )ant it to be )hen the1 essentiall1 ar'ue that

uch of the confusion sprin's fro appellant C?CSs use of the )ord MA/6ER )hich

appellees clai to be the doinant feature of their o)n tradear-s that captivates

the prospective consuers. Be it further ephasi(ed that the discernin' e1e of the

observer ust focus not onl1 on the predoinant )ords but also on the other

features appearin' in both labels in order that he a1 dra) his conclusion )hether

one is confusin'l1 siilar to the other 4Mead Johnson Co. 1. NVJ Van Dorp)

Ltd., supra5.2

6he Court of Appeals applied soe udicial precedents )hich are not on all fours )ith this

case. 9t ust be ephasi(ed that in infrin'eent or tradear- cases in the Philippines,

particularl1 in ascertainin' )hether one tradear- is confusin'l1 siilar to or is a colorableiitation of another, no set rules can be deduced. Each case ust be decided on its o)n

erits.G 9n 4sso Standard) 9nc. 1. Court of -ppeals,= )e ruled that the li-elihood of confusion

is a relative conceptF to be deterined onl1 accordin' to the particular, and soeties

peculiar, circustances of each case. 9n tradear- cases, even ore than in an1 other

liti'ation, precedent ust be studied in li'ht of the facts of the particular case. 6he )isdo

of the li-elihood of confusion test lies in its reco'nition that each tradear- infrin'eent

case presents its o)n uniDue set of facts. 9ndeed, the copleities attendant to an accurate

assessent of li-elihood of confusion reDuire that the entire panopl1 of eleents

constitutin' the relevant factual landscape be coprehensivel1 eained."

6he Court of AppealsS application of the case of Del Monte Corporation 1. Court of -ppeals# is, therefore, isplaced. 9n Del Monte, the issue )as about the alle'ed siilarit1 of

%el MonteSs lo'o )ith that of /unshine /auce Manufacturin' 9ndustries. Both corporations

ar-et the catsup product )hich is an inepensive and coon household ite.

/ince %el Monte alle'ed that /unshineSs lo'o )as confusin'l1 siilar to or )as a colorable

iitation of the forerSs lo'o, there )as a need to 'o into the details of the t)o lo'os as )ell

as the shapes of the labels or ar-s, the brands printed on the labels, the )ords or letterin'

on the labels or ar-s and the shapes and colors of the labels or ar-s. 6he sae criteria,

ho)ever, cannot be applied in the instant petition as the facts and circustances herein are

peculiarl1 di<erent fro those in the Del Monte case.

9n the sae anner, the Court of Appeals erred in appl1in' the totalit1 rule as de+ned in the

cases of &ristol M+ers 1. Director of PatentsF> Mead Johnson Co. 1. NVJ Van Dorf

Ltd.F and -0erican C+ana0id Co. 1. Director of Patents.! 6he totalit1 rule states that the

test is not sipl1 to ta-e their )ords and copare the spellin' and pronunciation of said

)ords. 9n deterinin' )hether t)o tradear-s are confusin'l1 siilar, the t)o ar-s in

their entiret1 as the1 appear in the respective labels ust be considered in relation to the

'oods to )hich the1 are attachedF the discernin' e1e of the observer ust focus not onl1 on

the predoinant )ords but also on the other features appearin' on both labels.2

http://www.lawphil.net/judjuris/juri2001/apr2001/gr_112012_2001.html#fnt12





















As this Court has often declared, each case ust be studied accordin' to the peculiar

circustances of each case. 6hat is the reason )h1 in tradear- cases, urisprudential

precedents should be applied onl1 to a case if the1 are speci+call1 in point.

9n the above cases cited b1 the Court of Appeals to ustif1 the application of the totalit1 or

holistic test to this instant case, the factual circustances are substantiall1 di<erent. 9n

the &ristol M+ers case, this Court held that althou'h both B9O?ER9N and B:??ER9N are

priaril1 used for the relief of pains such as headaches and colds, and their naes are

practicall1 the sae in spellin' and pronunciation, both labels have stri-in'l1 di<erent

bac-'rounds and surroundin's. 9n addition, one is dispensable onl1 upon doctorSs

prescription, )hile the other a1 be purchased over;the;counter.

9n the Mead Johnson case, the di<erences bet)een A&AC6A and A&A/0A are 'larin' and

stri-in' to the e1e. Also, A&AC6A refers to Pharaceutical Preparations )hich /uppl1

Nutritional Needs, fallin' under Class # of the o7cial classi+cation of Medicines and

Pharaceutical Preparations to be used as prescribed b1 ph1sicians. On the other hand,

A&A/0A refers to ?oods and 9n'redients of ?oods fallin' under Class =>, and does not

reDuire edical prescription.

9n the -0erican C+ana0id case, the )ord /:&ME6 is distin'uishable fro the )ord

/:&ME69NE, as the forer is derived fro a cobination of the s1llables /:& )hich is

derived fro sulfa and ME6 fro eth1l, both of )hich are cheical copounds present in

the article anufactured b1 the contendin' parties. 6his Court held that the addition of the

s1llable 9NE in respondentSs label is su7cient to distin'uish respondentSs product or

tradear- fro that of petitioner. Also, both products are for edicinal veterinar1 use and

the bu1er )ill be ore )ar1 of the nature of the product he is bu1in'. 9n an1 case, both

products are not identical as /:&ME6Ss label indicates that it is used in a drin-in' )ater

solution )hile that of /:&ME69NE indicates that the1 are tablets.

9t cannot also be said that the products in the above cases can be bou'ht o< the shelf

ecept, perhaps, for A&A/0A. 6he said products are not the usual coon and inepensive

household ites )hich an undiscernin'l1 rash bu1er )ould unthin-in'l1 bu1.9n the case at

bar, other than the fact that both NestleSs and C?CSs products are inepensive and coon

household ites, the siilarit1 ends there. @hat is bein' Duestioned here is the use b1 C?C

of the tradear- MA/6ER. 9n vie) of the di7cult1 of appl1in' urisprudential precedents to

tradear- cases due to the peculiarit1 of each case, udicial fora should not readil1 appl1 a

certain test or standard ust because of seein' siilarities. As this Court has pointed

above, there could be ore tellin' di<erences than siilarities as to a-e a urisprudential

precedent inapplicable.

Nestle points out that the doinanc1 test should have been applied to deterine )hether

there is a confusin' siilarit1 bet)een C?CSs ?&A$OR MA/6ER and NestleSs MA/6ER ROA/6

and MA/6ER B&EN%.

@e a'ree.

As the Court of Appeals itself has stated, LtIhe deterination of )hether t)o tradear-s

are indeed confusin'l1 siilar ust be ta-en fro the vie)point of the ordinar1 purchasers



)ho are, in 'eneral, undiscernin'l1 rash in bu1in' the ore coon and less epensive

household products li-e co<ee, and are therefore less inclined to closel1 eaine speci+c

details of siilarities and dissiilarities bet)een copetin' products.2

6he basis for the Court of AppealsS application of the totalit1 or holistic test is the ordinar1

purchaser bu1in' the product under norall1 prevalent conditions in trade and the

attention such products norall1 elicit fro said ordinar1 purchaser. An ordinar1 purchaser

or bu1er does not usuall1 a-e such scrutin1 nor does he usuall1 have the tie to do so.

6he avera'e shopper is usuall1 in a hurr1 and does not inspect ever1 product on the shelf as

if he )ere bro)sin' in a librar1.22

6he Court of Appeals held that the test to be applied should be the totalit1 or holistic test

reasonin', since )hat is of paraount consideration is the ordinar1 purchaser )ho is, in

'eneral, undiscernin'l1 rash in bu1in' the ore coon and less epensive household

products li-e co<ee, and is therefore less inclined to closel1 eaine speci+c details of

siilarities and dissiilarities bet)een copetin' products.

6his Court cannot a'ree )ith the above reasonin'. 9f the ordinar1 purchaser isundiscernin'l1 rash in bu1in' such coon and inepensive household products as

instant co<ee, and )ould therefore be less inclined to closel1 eaine speci+c details of

siilarities and dissiilarities bet)een the t)o copetin' products, then it )ould be less

li-el1 for the ordinar1 purchaser to notice that C?CSs tradear- ?&A$OR MA/6ER carries the

colors oran'e and ocha )hile that of NestleSs uses red and bro)n. 6he application of the

totalit1 or holistic test is iproper since the ordinar1 purchaser )ould not be inclined to

notice the speci+c features, siilarities or dissiilarities, considerin' that the product is an

inepensive and coon household ite.

9t ust be ephasi(ed that the products bearin' the tradear-s in Duestion are

inepensive and coon household ites bou'ht o< the shelf b1 undiscernin'l1 rashpurchasers. As such, if the ordinar1 purchaser is undiscernin'l1 rash, then he )ould not

have the tie nor the inclination to a-e a -een and perceptive eaination of the ph1sical

discrepancies in the tradear-s of the products in order to eercise his choice.

@hile this Court a'rees )ith the Court of AppealsS detailed enueration of di<erences

bet)een the respective tradear-s of the t)o co<ee products, this Court cannot a'ree that

totalit1 test is the one applicable in this case. Rather, this Court believes that the doinanc1

test is ore suitable to this case in li'ht of its peculiar factual ilieu.

Moreover, the totalit1 or holistic test is contrar1 to the eleentar1 postulate of the la) on

tradear-s and unfair copetition that confusin' siilarit1 is to be deterined on the basis

of visual, aural, connotative coparisons and overall ipressions en'endered b1 the ar-s

in controvers1 as the1 are encountered in the realities of the ar-etplace.2G 6he totalit1 or

holistic test onl1 relies on visual coparison bet)een t)o tradear-s )hereas the

doinanc1 test relies not onl1 on the visual but also on the aural and connotative

coparisons and overall ipressions bet)een the t)o tradear-s.

?or this reason, this Court a'rees )ith the BP666 )hen it applied the test of doinanc1 and

held that









?ro the evidence at hand, it is su7cientl1 established that the )ord MA/6ER is the

doinant feature of opposerSs ar-. 6he )ord MA/6ER is printed across the iddle

portion of the label in bold letters alost t)ice the si(e of the printed )ord ROA/6.

?urther, the )ord MA/6ER has al)a1s been 'iven ephasis in the 6$ and radio

coercials and other advertiseents ade in prootin' the product. 6his can be

'leaned fro the fact that Robert Ja)ors-i and Att1. Ric Puno Jr.., the personalities

en'a'ed to proote the product, are 'iven the titles Master of the *ae and Master

of the 6al- /ho), respectivel1. 9n due tie, because of these advertisin' schees the

ind of the bu1in' public had coe to learn to associate the )ord MA/6ER )ith the

opposerSs 'oods.

. 9t is the observation of this O7ce that uch of the doinance )hich the )ord

MA/6ER has acDuired throu'h OpposerSs advertisin' schees is carried over )hen

the sae is incorporated into respondent;applicantSs tradear- ?&A$OR MA/6ER.

6hus, )hen one loo-s at the label bearin' the tradear- ?&A$OR MA/6ER 4Eh. =5

oneSs attention is easil1 attracted to the )ord MA/6ER, rather than to the

dissiilarities that eist. 6herefore, the possibilit1 of confusion as to the 'oods )hich

bear the copetin' ar-s or as to the ori'ins thereof is not farfetched. .2=

9n addition, the )ord MA/6ER is neither a 'eneric nor a descriptive ter. As such, said

ter can not be invalidated as a tradear- and, therefore, a1 be le'all1 protected.

*eneric ters2" are those )hich constitute the coon descriptive nae of an article or

substance, or coprise the 'enus of )hich the particular product is a species, or are

coonl1 used as the nae or description of a -ind of 'oods, or ipl1 reference to ever1

eber of a 'enus and the eclusion of individuatin' characters, or refer to the basic

nature of the )ares or services provided rather than to the ore idios1ncratic characteristics

of a particular product, and are not le'all1 protectable. On the other hand, a ter is

descriptive2# and therefore invalid as a tradear- if, as understood in its noral and natural

sense, it forth)ith conve1s the characteristics, functions, Dualities or in'redients of aproduct to one )ho has never seen it and does not -no) )hat it is, or if it forth)ith

conve1s an iediate idea of the in'redients, Dualities or characteristics of the 'oods, or if

it clearl1 denotes )hat 'oods or services are provided in such a )a1 that the consuer does

not have to eercise po)ers of perception or ia'ination.

Rather, the ter MA/6ER is a su''estive ter brou'ht about b1 the advertisin' schee of

Nestle. /u''estive ters2> are those )hich, in the phraseolo'1 of one court, reDuire

ia'ination, thou'ht and perception to reach a conclusion as to the nature of the 'oods.

/uch ters, )hich subtl1 connote soethin' about the product, are eli'ible for protection

in the absence of secondar1 eanin'. @hile su''estive ar-s are capable of sheddin'

soe li'ht upon certain characteristics of the 'oods or services in dispute, the1

nevertheless involve an eleent of incon'ruit1, +'urativeness, or ia'inative e<ort onthe part of the observer.

6his is evident fro the advertisin' schee adopted b1 Nestle in prootin' its co<ee

products. 9n this case, Nestle has, over tie, prooted its products as co<ee perfection

)orth1 of asters li-e Robert Ja)ors-i and Ric Puno Jr.











9n associatin' its co<ee products )ith the ter MA/6ER and thereb1 ipressin' the )ith

the attributes of said ter, Nestle advertised its products thus

Robert Ja)ors-i. &ivin' &e'end. A true hard court hero. ?ast on his feet. /ure in ever1

shot he a-es. A aster strate'ist. 9n one )ord, unatched.

MA/6ER ROA/6. EDuall1 unatched. Rich and deepl1 satisf1in'. Made fro a uniDue

cobination of the best co<ee beans ; Arabica for superior taste and aroa, Robusta

for stren'th and bod1. A asterpiece onl1 NE/CA?E, the )orldSs co<ee asters, can

create.

MA/6ER ROA/6. Co<ee perfection )orth1 of asters li-e Robert Ja)ors-i.2

9n the art of conversation, Ric Puno Jr. is aster. @itt1. @ell;infored. Con+dent.

9n the art of co<ee;a-in', nothin' eDuals Master Roast, the co<ee asterpiece fro

Nescafe, the )orldSs co<ee asters. A uniDue cobination of the best co<ee beans ;

Arabica for superior taste and aroa, Robusta for stren'th and bod1. 6rul1 distinctiveand rich in avor.

Master Roast. Co<ee perfection )orth1 of asters li-e Ric Puno Jr.2!

6he ter MA/6ER, therefore, has acDuired a certain connotation to ean the co<ee

products MA/6ER ROA/6 and MA/6ER B&EN% produced b1 Nestle. As such, the use b1 C?C

of the ter MA/6ER in the tradear- for its co<ee product ?&A$OR MA/6ER is li-el1 to

cause confusion or ista-e or even to deceive the ordinar1 purchasers.

9n closin', it a1 not be aiss to Duote the case of -0erican Chicle Co. 1. /opps Che"in'

Gu0) 9nc.,G

to )it

@h1 it should have chosen a ar- that had lon' been eplo1ed b1 Lplainti<I and

had becoe -no)n to the trade instead of adoptin' soe other eans of identif1in'

its 'oods is hard to see unless there )as a deliberate purpose to obtain soe

advanta'e fro the trade that Lplainti<I had built up. 9ndeed, it is 'enerall1 true that,

as soon as )e see that a second coer in a ar-et has, for no reason that he can

assi'n, pla'iari(ed the a-e;up of an earlier coer, )e need no oreF . . . L@Ie

feel bound to copel hi to eercise his in'enuit1 in Duarters further a+eld.

@3ERE?ORE, in vie) of the fore'oin', the decision of the Court of Appeals in CA;*.R. /P No.

2= is RE$ER/E% and /E6 A/9%E and the decision of the Bureau of Patents, 6radear-s

and 6echnolo'1 6ransfer in 9nter Partes Cases Nos. G2 and G22 is RE9N/6A6E%.

/O OR%ERE%.










CANON A'US!(( A(S!A, petitioner, vs. COURT O APPEALS "#$

NSR RU''ER CORPORAT(ON, respondents.

D E C ( S ( O N

GON4AGA-RE%ES, J.

Before us is a petition for revie) that see-s to set aside the %ecision LI dated

?ebruar1 2, !!" of the Court of Appeals in CA;*R /P No. G2G, entitled

Canon 0abushi-i 0aisha vs. N/R Rubber Corporation and its Resolution

dated June 2>, !!" den1in' the otion for reconsideration of herein

petitioner Canon 0abushi-i 0aisha 4petitioner5.

On Januar1 ", !", private respondent N/R Rubber Corporation 4private

respondent5 +led an application for re'istration of the ar- CANON for

sandals in the Bureau of Patents, 6radear-s, and 6echnolo'1 6ransfer

4BP6665. A $eri+ed Notice of Opposition )as +led b1 petitioner, a forei'n

corporation dul1 or'ani(ed and eistin' under the la)s of Japan, alle'in'

that it )ill be daa'ed b1 the re'istration of the tradear- CANON in the

nae of private respondent. 6he case )as doc-eted as 9nter Partes Case No.

G=G.

Petitioner oved to declare private respondent in default for its failure to +le

its ans)er )ithin the prescribed period. 6he BP666 then declared private

respondent in default and allo)ed petitioner to present its evidence eK: parte.

Based on the records, the evidence presented b1 petitioner consisted of its

certi+cates of re'istration for the ar- CANON in various countries coverin'

'oods belon'in' to class 2 4paints, cheical products, toner, and d1e stu<5.

Petitioner also subitted in evidence its Philippine 6radear- Re'istration

No. G!G!, sho)in' its o)nership over the tradear- CANON also under

class 2.

On Noveber , !!2, the BP666 issued its decision disissin' theopposition of petitioner and 'ivin' due course to private respondents

application for the re'istration of the tradear- CANON. On ?ebruar1 #,

!!G, petitioner appealed the decision of the BP666 )ith public respondent

Court of Appeals that eventuall1 a7red the decision of BP666. 3ence, this

petition for revie).

http://sc.judiciary.gov.ph/jurisprudence/2000/july2000/120900.htm#_ftn1




Petitioner anchors this instant petition on these 'rounds

A5 PE6969ONER 9/ EN696&E% 6O EC&:/9$E :/E O? 63E MAR0

CANON BECA:/E 96 9/ 96/ 6RA%EMAR0 AN% 9/ :/E% A&/O ?OR

?OO6@EAR.

B5 6O A&&O@ PR9$A6E RE/PON%EN6 6O RE*9/6ER CANON ?OR

?OO6@EAR 9/ 6O PRE$EN6 PE6969ONER ?ROM :/9N* CANON ?OR

$AR9O:/ 09N%/ O? ?OO6@EAR, @3EN 9N ?AC6, PE6969ONER 3A/

EAR&9ER :/E% /A9% MAR0 ?OR /A9% *OO%/.

C5 PE6969ONER 9/ A&/O EN696&E% 6O 63E R9*36 6O EC&:/9$E&K

:/E CANON 6O PRE$EN6 CON?:/9ON O? B:/9NE//.

%5 PE6969ONER 9/ A&/O EN696&E% 6O 63E EC&:/9$E :/E O?

CANON BECA:/E 96 ?ORM/ PAR6 O? 96/ CORPORA6E NAME,

PRO6EC6E% BK 63E PAR9/ CON$EN69ON.L2I

6he BP666 and the Court of Appeals share the opinion that the tradear-

CANON as used b1 petitioner for its paints, cheical products, toner, and

d1estu<, can be used b1 private respondent for its sandals because the

products of these t)o parties are dissiilar. Petitioner protests the

appropriation of the ar- CANON b1 private respondent on the 'round that

petitioner has used and continues to use the tradear- CANON on its )ide

ran'e of 'oods )orld)ide. Alle'edl1, the corporate nae or tradenae ofpetitioner is also used as its tradear- on diverse 'oods includin' foot)ear

and other related products li-e shoe polisher and polishin' a'ents. 6o lend

credence to its clai, petitioner points out that it has branched out in its

business based on the various 'oods carr1in' its tradear- CANONLGI,

includin' foot)ear )hich petitioner contends covers sandals, the 'oods for

)hich private respondent sou'ht to re'ister the ar- CANON. ?or petitioner,

the fact alone that its tradear- CANON is carried b1 its other products li-e

foot)ear, shoe polisher and polishin' a'ents should have precluded the

BP666 fro 'ivin' due course to the application of private respondent.

@e +nd the ar'uents of petitioner to be uneritorious. Ordinaril1, the

o)nership of a tradear- or tradenae is a propert1 ri'ht that the o)ner is

entitled to protectL=I as andated b1 the 6radear- &a).L"I 3o)ever, )hen a

tradear- is used b1 a part1 for a product in )hich the other part1 does not

deal, the use of the sae tradear- on the latters product cannot be validl1

obected to.L#I













A revie) of the records sho)s that )ith the order of the BP666 declarin'

private respondent in default for failure to +le its ans)er, petitioner had

ever1 opportunit1 to present eK:parte all of its evidence to prove that its

certi+cates of re'istration for the tradear- CANON cover foot)ear. 6he

certi+cates of re'istration for the tradear- CANON in other countries and in

the Philippines as presented b1 petitioner, clearl1 sho)ed that said

certi+cates of re'istration cover 'oods belon'in' to class 2 4paints, cheical

products, toner, d1estu<5. On this basis, the BP666 correctl1 ruled that since

the certi+cate of re'istration of petitioner for the tradear- CANON covers

class 2 4paints, cheical products, toner, d1estu<5, private respondent can

use the tradear- CANON for its 'oods classi+ed as class 2" 4sandals5.

Clearl1, there is a )orld of di<erence bet)een the paints, cheical products,

toner, and d1estu< of petitioner and the sandals of private respondent.

Petitioner counters that not)ithstandin' the dissiilarit1 of the products ofthe parties, the tradear- o)ner is entitled to protection )hen the use of b1

the unior user forestalls the noral epansion of his business. L>IPetitioners

opposition to the re'istration of its tradear- CANON b1 private respondent

rests upon petitioners insistence that it )ould be precluded fro usin' the

ar- CANON for various -inds of foot)ear, )hen in fact it has earlier used

said ar- for said 'oods. /tretchin' this ar'uent, petitioner clais that it is

possible that the public could presue that petitioner )ould also produce a

)ide variet1 of foot)ear considerin' the diversit1 of its products ar-eted

)orld)ide.

@e do not a'ree. Even in this instant petition, ecept for its bare assertions,

petitioner failed to attach evidence that )ould convince this Court that

petitioner has also ebar-ed in the production of foot)ear products. @e

Duote )ith approval the observation of the Court of Appeals that

6he herein petitioner has not ade -no)n that it intends to

venture into the business of producin' sandals. 6his is clearl1

sho)n in its 6radear- Principal Re'ister 4Ehibit :5 )here the

products of the said petitioner had been clearl1 and speci+call1

described as Cheical products, d1estu<s, pi'ents, toner

developin' preparation, shoe polisher, polishin' a'ent. 9t )ould

be tain' ones credibilit1 to aver at this point that the production

of sandals could be considered as a possible natural or noral

epansion of its business operation.LI







9n 2a*er'e) 9ncorporated 1s. 9nter0ediate -ppellate Court ,L!I the %irector of

patents allo)ed the unior user to use the tradear- of the senior user on

the 'round that the briefs anufactured b1 the unior user, the product for

)hich the tradear- BR:6E )as sou'ht to be re'istered, )as unrelated and

non;copetin' )ith the products of the senior user consistin' of after shave

lotion, shavin' crea, deodorant, talcu po)der, and toilet soap. 6he senior

user veheentl1 obected and claied that it )as epandin' its tradear-

to briefs and ar'ued that perittin' the unior user to re'ister the sae

tradear- )ould allo) the latter to invade the senior users eclusive

doain. 9n sustainin' the %irector of Patents, this Court said that since 4the

senior user5 has not ventured in the production of briefs, an ite )hich is not

listed in its certi+cate of re'istration, 4the senior user5, cannot and should not

be allo)ed to fei'n that 4the unior user5 had invaded 4the senior users5

eclusive doain.LI @e reiterated the principle that the certi+cate of

re'istration confers upon the tradear- o)ner the eclusive ri'ht to use itso)n s1bol onl+ to those 'oods speci7ed in the certi7cate, subect to the

conditions and liitations stated therein.LI 6hus, the eclusive ri'ht of

petitioner in this case to use the tradear- CANON is liited to the products

covered b1 its certi+cate of re'istration.

Petitioner further ar'ues that the alle'ed diversit1 of its products all over the

)orld a-es it plausible that the public i'ht be isled into thin-in' that

there is soe supposed connection bet)een private respondents 'oods and

petitioner. Petitioner is apprehensive that there could be confusion as to the

ori'in of the 'oods, as )ell as confusion of business, if private respondent is

allo)ed to re'ister the ar- CANON. 9n such a case, petitioner )ould

alle'edl1 be iensel1 preudiced if private respondent )ould be peritted

to ta-e a free ride on, and reap the advanta'es of, the 'ood)ill and

reputation of petitioner Canon.L2I 9n support of the fore'oin' ar'uents,

petitioner invo-es the rulin's in Sta. -na 1s. Mali"at LGI) -n' 1s. /eodoroL=I and

Con1erse Ru**er Corporation 1s. 8ni1ersal Ru**er Products) 9nc.L"I.

6he li-elihood of confusion of 'oods or business is a relative concept, to be

deterined onl1 accordin' to the particular, and soeties peculiar,circustances of each case.L#I 9ndeed, in tradear- la) cases, even ore

than in other liti'ation, precedent ust be studied in the li'ht of the facts of

the particular case.L>I Contrar1 to petitioners supposition, the facts of this

case )ill sho) that the cases of Sta. -na 1s. Mali"at)) -n' 1s. /eodoro and

Con1erse Ru**er Corporation 1s. 8ni1ersal Ru**er Products) 9nc. are hardl1

in point. 6he ust cited cases involved 'oods that )ere confusin'l1 siilar, if





















not identical, as in the case of Con1erse Ru**er Corporation 1s. 8ni1ersal

Ru**er Products) 9nc. 3ere, the products involved are so unrelated that the

public )ill not be isled that there is the sli'htest neus bet)een petitioner

and the 'oods of private respondent.

9n cases of confusion of business or ori'in, the Duestion that usuall1 arises is

)hether the respective 'oods or services of the senior user and the unior

user are so related as to li-el1 cause confusion of business or ori'in, and

thereb1 render the tradear- or tradenaes confusin'l1 siilar. LI *oods are

related )hen the1 belon' to the sae class or have the sae descriptive

propertiesF )hen the1 possess the sae ph1sical attributes or essential

characteristics )ith reference to their for, coposition, teture or Dualit1.L!I 6he1 a1 also be related because the1 serve the sae purpose or are sold

in 'rocer1 stores.L2I

6hus, in 4sso Standard 4astern) 9nc. 1s. Court of -ppeals, this Court ruled

that the petroleu products on )hich the petitioner therein used the

tradear- E//O, and the product of respondent, ci'arettes are so forei'n to

each other as to a-e it unli-el1 that purchasers )ould thin- that petitioner

is the anufacturer of respondents 'oodsL2I. Moreover, the fact that the

'oods involved therein o) throu'h di<erent channels of trade hi'hli'hted

their dissiilarit1, a factor eplained in this )ise

6he products of each part1 ove alon' and are disposed

throu'h di<erent channels of distribution. 6he 4petitioners5products are distributed principall1 throu'h 'asoline service and

lubrication stations, autootive shops and hard)are stores. On

the other hand, the 4respondents5 ci'arettes are sold in sari;sari

stores, 'rocer1 store, and other sall distributor outlets.

4Respondents5 ci'arettes are even peddled in the streets )hile

4petitioners5 'asul burners are not. ?inall1, there is a ar-ed

distinction bet)een oil and tobacco, as )ell as bet)een

petroleu and ci'arettes. Evidentl1, in -ind and nature the

products of 4respondent5 and of 4petitioner5 are poles apart.L22I

:ndoubtedl1, the paints, cheical products, toner and d1estu< of petitioner

that carr1 the tradear- CANON are unrelated to sandals, the product of

private respondent. @e a'ree )ith the BP666, follo)in' the Esso doctrine,

)hen it noted that the t)o classes of products in this case o) throu'h

di<erent trade channels. 6he products of petitioner are sold throu'h special













cheical stores or distributors )hile the products of private respondent are

sold in 'rocer1 stores, sari;sari stores and departent stores.L2GI 6hus, the

evident disparit1 of the products of the parties in the case at bar renders

unfounded the apprehension of petitioner that confusion of business or ori'in

i'ht occur if private respondent is allo)ed to use the ar- CANON.

9n its bid to bar the re'istration of private respondent of the ar- CANON,

petitioner invo-es the protective antle of the Paris Convention. Petitioner

asserts that it has the eclusive ri'ht to the ar- CANON because it fors

part of its corporate nae or tradenae, protected b1 Article of the Paris

Convention, to )it

A tradenae shall be protected in all the countries of the :nion

)ithout the obli'ation of +lin' or re'istration, )hether or not it

fors part of a tradear-.

Public respondents BP666 and the Court of Appeals alle'edl1 coitted an

oversi'ht )hen the1 reDuired petitioner to prove that its ar- is a )ell;

-no)n ar- at the tie the application of private respondent )as +led.

Petitioner Duestions the applicabilit1 of the 'uidelines ebodied in the

Meorandu of then Minister of 6rade and 9ndustr1 Roberto On'pin 4On'pin5

dated October 2", !G )hich accordin' to petitioner ipleents Article

#bis of the Paris Convention, the provision referrin' to the protection of

tradear-s. 6he eorandu reads

a5 the ar- ust be internationall1 -no)nF

b5 the subect of the ri'ht ust be a tradear-, not a patent or

cop1ri'ht or an1thin' elseF

c5 the ar- ust be for use in the sae or siilar class of 'oodsF

d5 the person claiin' ust be the o)ner of the ar-.

Accordin' to petitioner, it should not be reDuired to prove that its tradear-is )ell;-no)n and that the products are not siilar as reDuired b1 the Duoted

eorandu. Petitioner ephasi(es that the 'uidelines in the

eorandu of On'pin ipleent Article #bis of the Paris Convention, the

provision for the protection of tradear-s, not tradenaes. Article #bis of

the Paris Convention states





@e cannot uphold petitioners position.

6he ter tradear- is de+ned b1 RA ##, the 6radear- &a), as includin'

an1 )ord, nae, s1bol, eble, si'n or device or an1 cobination

thereof adopted and used b1 a anufacturer or erchant to identif1 his

'oods and distin'uish the for those anufactured, sold or dealt in b1

others.L2#I 6radenae is de+ned b1 the sae la) as includin' individual

naes and surnaes, +r naes, tradenaes, devices or )ords used b1

anufacturers, industrialists, erchants, a'riculturists, and others to identif1

their business, vocations, or occupationsF the naes or titles la)full1

adopted and used b1 natural or uridical persons, unions, and an1

anufacturin', industrial, coercial, a'ricultural or other or'ani(ations

en'a'ed in trade or coerce.L2>I /ipl1 put, a trade nae refers to the

business and its 'ood)illF a tradear- refers to the 'oods.L2I

6he Convention of Paris for the Protection of 9ndustrial Propert1, other)ise

-no)n as the Paris Convention, of )hich both the Philippines and Japan, the

countr1 of petitioner, are si'natoriesL2!I, is a ultilateral treat1 that see-s to

protect industrial propert1 consistin' of patents, utilit1 odels, industrial

desi'ns, tradear-s, service ar-s, trade naes and indications of source

or appellations of ori'in, and at the sae tie ais to repress unfair

copetition.LGI @e a'ree )ith public respondents that the controllin' doctrine

)ith respect to the applicabilit1 of Article of the Paris Convention is that

established in a*ushi aisha 9setan 1s. 9nter0ediate -ppellate Court.LGI As

pointed out b1 the BP666

Re'ardin' the applicabilit1 of Article of the Paris Convention,

this O7ce believes that there is no autoatic protection a<orded

an entit1 )hose tradenae is alle'ed to have been infrin'ed

throu'h the use of that nae as a tradear- b1 a local entit1.

9n 0abushi-i 0aisha 9setan vs. 6he 9nterediate Appellate Court,

et. al., *.R. No. >"=2, " Noveber !!, the 3onorable

/upree Court held that

6he Paris Convention for the Protection of 9ndustrial

Propert1 does not autoaticall1 eclude all countries

of the )orld )hich have si'ned it fro usin' a

tradenae )hich happens to be used in one countr1.

6o illustrate if a taicab or bus copan1 in a to)n in

the :nited 0in'do or 9ndia happens to use the















tradenae Rapid 6ransportation, it does not

necessaril1 follo) that Rapid can no lon'er be

re'istered in :'anda, ?ii, or the Philippines.

6his o7ce is not unindful that in the 6reat1 of Paris for the

Protection of 9ntellectual Propert1 re'ardin' )ell;-no)n ar-s

and possible application thereof in this case. Petitioner, as this

o7ce sees it, is tr1in' to see- refu'e under its protective antle,

claiin' that the subect ar- is )ell -no)n in this countr1 at

the tie the then application of N/R Rubber )as +led.

3o)ever, the then Minister of 6rade and 9ndustr1, the 3on.

Roberto $. On'pin, issued a eorandu dated 2" October

!G to the %irector of Patents, a set of 'uidelines in the

ipleentation of Article #bis 4sic5 of the 6reat1 of Paris. 6heseconditions are

a5 the ar- ust be internationall1 -no)nF

b5 the subect of the ri'ht ust be a tradear-, not a patent or

cop1ri'ht or an1thin' elseF

c 5 the ar- ust be for use in the sae or siilar -inds of

'oodsF and

d5 the person claiin' ust be the o)ner of the ar- 46he

Parties Convention Coentar1 on the Paris Convention. Article

b1 %r. Bo'sch, %irector *eneral of the @orld 9ntellectual Propert1

Or'ani(ation, *eneva, /)it(erland, !"5

?ro the set of facts found in the records, it is ruled that the

Petitioner failed to copl1 )ith the third reDuireent of the said

eorandu that is the ar- ust be for use in the sae or

siilar -inds of 'oods. 6he Petitioner is usin' the ar- CANON

for products belon'in' to class 2 4paints, cheical products5)hile the Respondent is usin' the sae ar- for sandals 4class

2"5. 3ence, Petitioners contention that its ar- is )ell;-no)n at

the tie the Respondent +led its application for the sae ar-

should fail. LG2I





Petitioner assails the application of the case of a*ushi aisha 9setan 1s.

9nter0ediate -ppellate Court to this case. Petitioner points out that in the

case of a*ushi aisha 9setan 1s. 9nter0ediate -ppellate Court) petitioner

therein )as found to have never at all conducted its business in the

Philippines unli-e herein petitioner )ho has etensivel1 conducted its

business here and also had its tradear- re'istered in this countr1. 3ence,

petitioner subits that this factual di<erence renders inapplicable our rulin'

in the case of a*ushi aisha 9setan 1s. 9nter0ediate -ppellate Court that

Article of the Paris Convention does not autoaticall1 etend protection to

a tradenae that is in dan'er of bein' infrin'ed in a countr1 that is also a

si'nator1 to said treat1. 6his contention deserves scant consideration.

/u7ce it to sa1 that the ust Duoted pronounceent in the case of a*ushi

aisha 9setan 1s. 9nter0ediate -ppellate Court) )as ade independent of the

factual +ndin' that petitioner in said case had not conducted its business in

this countr1.

<!EREORE, in vie) of the fore'oin', the instant petition for revie) on

certiorari is %EN9E% for lac- of erit.

SO ORDERED.



0n !% Bune %"15, the 3irector of )atents, on motion filed $ private respondent dated %5 Ma %"15,

issued an order consolidating Inter )artes Cases #os. %551 and %1*& on grounds that a common

uestion of law was involved. )

0n %" Bul %"11, the 3irector of )atents rendered a decision granting private respondent+s petition

for cancellation and opposition to registration.

he 3irector of )atents found private respondent to $e the prior registrant of the trademark ;EE; in

the )hilippines and that it had $een using said mark in the )hilippines. *

Moreover, the 3irector of )atents, using the test of dominanc, declared that petitioner+s trademark

was confusingl similar to private respondent+s mark $ecause ;it is the word +ee+ which draws the

attention of the $uer and leads him to conclude that the goods originated from the same

manufacturer. It is undenia$l the dominant feature of the mark.; 8

0n ? ugust %"11, petitioner appealed to the Court of ppeals and on 1 ugust %"11, it filed with the

7) a Motion to (ta E>ecution of the %" Bul %"11 decision of the 3irector of )atents ongrounds that the same would cause it great and irrepara$le damage and in=ur. )rivate respondent

su$mitted its opposition on !! ugust %"11.9

0n !? (eptem$er %"11, the 7) issued Resolution #o. 11'?? granting petitioner+s motion to sta

e>ecution su$=ect to the following terms and conditions/

%. hat under this resolution, Respondent'Registrant is authoried onl to dispose of

its current stock using the mark ;(<I(IC MR. EE;D

!. hat Respondent'Registrant is strictl prohi$ited from further production,

regardless of mode and source, of the mark in uestion 9(<I(IC MR. EE: inaddition to its current stockD

?. hat this relief 0rder shall automaticall cease upon resolution of the ppeal $

the Court of ppeals and, if the Respondent+s appeal loses, all goods $earing the

mark ;(<I(IC MR. EE; shall $e removed from the market, otherwise such

goods shall $e seied in accordance with the law.

(0 0R3ERE3. 10

0n !" #ovem$er %""&, the Court of ppeals promulgated its decision affirming the decision of the

3irector of )atents dated %" Bul %"11 in all respects. 11

In said decision the Court of ppeals e>pounded, thus/

>>> >>> >>>

hether or not a trademark causes confusion and is likel to deceive the pu$lic is a

uestion of fact which is to $e resolved $ appling the ;test of dominanc;, meaning,



if the competing trademark contains the main or essential or dominant features of

another $ reason of which confusion and deception are likel to result, then

infringement takes placeD that duplication or imitation is not necessar, a similarit in

the dominant features of the trademark would $e sufficient.

he word ;EE; is the most prominent and distinctive feature of the appellant+strademark and all of the appellee+s ;EE; trademarks. It is the mark which draws the

attention of the $uer and leads him to conclude that the goods originated from the

same manufacturer. hile it is true that there are other words such as ;(<I(IC;,

printed in the appellant+s la$el, such word is printed in such small letters over the

word ;EE; that it is not conspicuous enough to draw the attention of ordinar $uers

whereas the word ;EE; is printed across the la$el in $ig, $old letters and of the

same color, stle, tpe and sie of lettering as that of the trademark of the appellee.

he alleged difference is too insu$stantial to $e noticea$le. Even

granting arguendo that the word ;(<I(IC; is conspicuous enough to draw

attention, the goods ma easil $e mistaken for =ust another variation or line of

garments under the ap appelle+s ;EE; trademarks in view of the fact that theappellee has registered trademarks which use other words in addition to the principal

mark ;EE; such as ;EE RI3ER(;, ;EE(6RE(; and ;EE EE#(;. he likelihood

of confusion is further made more pro$a$le $ the fact that $oth parties are engaged

in the same line of $usiness. It is well to reiterate that the determinative factor in

ascertaining whether or not the marks are confusingl similar to each other is not

whether the challenged mark would actuall cause confusion or deception of the

purchasers $ut whether the use of such mark would likel cause confusion or

mistake on the part of the $uing pu$lic.

>>> >>> >>>

he appellee has sufficientl esta$lished its right to prior use and registration of the

trademark ;EE; in the )hilippines and is thus entitled to protection from an

infringement upon the same. It is thus a>iomatic that one who has identified a

peculiar sm$ol or mark with his goods there$ acuires a propert right in such

sm$ol or mark, and if another infringes the trademark, he there$ invokes this

propert right.

he merchandise or goods $eing sold $ the parties are not that e>pensive as

alleged to $e $ the appellant and are uite ordinar commodities purchased $ the

average person and at times, $ the ignorant and the unlettered. 0rdinar

purchasers will not as a rule e>amine the small letterings printed on the la$el $ut willsimpl $e guided $ the presence of the striking mark ;EE;. hatever difference

there ma $e will pale in insignificance in the face of an evident similarit in the

dominant features and overall appearance of the la$els of the parties. 12

>>> >>> >>>



0n %" 3ecem$er %""&, petitioner filed a motion for reconsideration of the a$ove'mentioned decision

of the Court of ppeals.

)rivate respondent opposed said motion on 1 Banuar %""% on grounds that it involved an

impermissi$le change of theor on appeal. )etitioner allegedl raised entirel new and unrelated

arguments and defenses not previousl raised in the proceedings $elow such as laches and a claimthat private respondent appropriated the stle and appearance of petitioner+s trademark when it

registered its ;EE; mark under Registration #o. 44!!&. 1'

0n %- Ma %""%, the Court of ppeals issued a resolution re=ecting petitioner+s motion for

reconsideration and ruled thus/

>>> >>> >>>

defense not raised in the trial court cannot $e raised on appeal for the first time. n

issue raised for the first time on appeal and not raised timel in the proceedings in

the lower court is $arred $ estoppel.

he o$=ect of reuiring the parties to present all uestions and issues to the lower

court $efore the can $e presented to this Court is to have the lower court rule upon

them, so that this Court on appeal ma determine whether or not such ruling was

erroneous. he purpose is also in furtherance of =ustice to reuire the part to first

present the uestion he contends for in the lower court so that the other part ma

not $e taken $ surprise and ma present evidence to properl meet the issues

raised.

Moreover, for a uestion to $e raised on appeal, the same must also $e within the

issues raised $ the parties in their pleadings. Conseuentl, when a partdeli$eratel adopts a certain theor, and the case is tried and decided $ased upon

such theor presented in the court $elow, he will not $e permitted to change his

theor on appeal. o permit him to do so would $e unfair to the adverse part.

uestion raised for the first time on appeal, there having opportunit to raise them in

the court of origin constitutes a change of theor which is not permissi$le on appeal.

In the instant case, appellant+s main defense pleaded in its answer dated March !?,

%"1! was that there was ;no confusing similarit $etween the competing trademark

involved. 0n appeal, the appellant raised a single issue, to wit/

he onl issue involved in this case is whether or not respondent'registrant+s trademark ;(<I(IC MR. EE; is confusingl similar

with the petitioner+s trademarks ;EE or EERI3ER(, EE'EE#(

and EE'(6RE(.;

ppellant+s main argument in this motion for reconsideration on the other hand is that

the appellee is estopped $ laches from asserting its right to its trademark. ppellant

claims although $elatedl that appellee went to court with ;unclean hands; $



changing the appearance of its trademark to make it identical to the appellant+s

trademark.

#either defenses were raised $ the appellant in the proceedings $efore the 7ureau

of )atents. ppellant cannot raise them now for the first time on appeal, let alone on

a mere motion for reconsideration of the decision of this Court dismissing theappellant+s appeal.

hile there ma $e instances and situations =ustifing rela>ation of this rule, the

circumstance of the instant case, euit would $e $etter served $ appling the

settled rule it appearing that appellant has not given an reason at all as to wh the

defenses raised in its motion for reconsideration was not invoked earlier. 1(

>>> >>> >>>

wice re$uffed, petitioner presents its case $efore this Court on the following assignment of errors/

I. 2E C06R 0A ))E( ERRE3 I# #0 AI#3I#G 2 )RI@E

RE()0#3E# C6(E3 2E I((6#CE 0A A06R2 ;EE; R3EMRF

IMII#G 2 0A 2E )EII0#ER+( 0#MAY 5, 1989 0R M0RE 2# EIG2

M0#2( AER 2E 76RE6 0A )E#+( 3ECI(I0# 3E3 JULY 19, 1988 .

II. 2E C06R 0A ))E( ERRE3 I# R6I#G 2 2E 3EAE#(E 0A

E(0))E 7< C2E( M6( 7E RI(E3 I# 2E )R0CEE3I#G( 7EA0RE 2E

76RE6 0A )E#(, R3EMRF( #3 EC2#00G< R#(AER.

III. 2E C06R 0A ))E( ERRE3 2E# I C0#(I3ERE3 )RI@E

RE()0#3E#+( )RI0R REGI(RI0# 0A I( R3EMRF #33I(REGR3E3 2E AC 2 )RI@E RE()0#3E# 23 AIE3 0

)R0@E C0MMERCI

6(E 2ERE0A 7EA0RE AII#G 0A ))ICI0# A0R REGI(RI0#. 15

In addition, petitioner reiterates the issues it raised in the Court of ppeals/

I. 2E I((6E I#@0@E3 I# 2I( C(E I( 2E2ER 0R #0 )EII0#ER+(

R3EMRF (<I(IC MR. EE, I( C0#A6(I#G< (IMIR I2 2E

)RI@E RE()0#3E#+( R3EMRF EE 0R EE'RI3ER, EE'EE#( #3

EE'(6RE(.

II. )EII0#ER+( E@I3E#CE( RE CER #3 (6AAICIE# 0 (20 2 I

I( 2E )RI0R 6(ER #3 I( R3EMRF I( 3IAAERE# AR0M 2 0A 2E

)RI@E RE()0#3E#.

III. )EII0#ER+( R3EMRF I( E#IRE< 3IAAERE# AR0M 2E )RI@E

RE()0#3E#+( #3 2E REGI(RI0# 0A I( R3EMRF I( PRIMA

FACIE E@I3E#CE 0A G003 AI2.



I@. )EII0#ER+( ;(<I(IC MR. EE; R3EMRF C##0 7E C0#A6(E3

I2 )RI@E RE()0#3E#+( EE R3EMRF. 1)

)etitioner contends that private respondent is estopped from instituting an action for infringement

$efore the 7) under the euita$le principle of laches pursuant to (ec. "' of R.. #o. %**,

otherwise known as the aw on rade'marks, rade'names and 6nfair Competition/

(ec. "'. Euita$le principles to govern proceedings. In opposition proceedings

and in all other inter partes proceedings in the patent office under this act, euita$le

principles of laches, estoppel, and acuiescence, where applica$le, ma $e

considered and applied.

)etitioner alleges that it has $een using its trademark ;(<I(IC MR. EE; since % Ma %"-5, et,

it was onl on %1 (eptem$er %"1% that private respondent filed a petition for cancellation of

petitioner+s certificate of registration for the said trademark. (imilarl, private respondent+s notice of

opposition to petitioner+s application for registration in the principal register was $elatedl filed on !-

Bul %"14. 1*

)rivate respondent counters $ maintaining that petitioner was $arred from raising new issues on

appeal, the onl contention in the proceedings $elow $eing the presence or a$sence of confusing

similarit $etween the two trademarks in uestion. 18

e re=ect petitioner+s contention.

)etitioner+s trademark is registered in the supplemental register. he rademark aw 9R.. #o. %**:

provides that ;marks and tradenames for the supplemental register shall not $e pu$lished for or $e

su$=ect to opposition, $ut shall $e pu$lished on registration in the 0fficial Gaette.; 19 he reckoning

point, therefore, should not $e % Ma %"-5, the date of alleged use $ petitioner of its assailed trademark$ut !- 0cto$er %"1&, 20 the date the certificate of registration (R #o. 5&54 was pu$lished in the 0fficial

Gaette and issued to petitioner.

It was onl on the date of pu$lication and issuance of the registration certificate that private

respondent ma $e considered ;officiall; 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. 21 he record is $ereft of evidence that private respondent was aware of petitioner+s trademark

$efore the date of said pu$lication and issuance. 2ence, when private respondent instituted cancellation

proceedings on %1 (eptem$er %"1%, less than a ear had passed.

Corollaril, private respondent could hardl $e accused of ine>cusa$le dela in filing its notice of

opposition to petitioner+s application for registration in the principal register since said application

was pu$lished onl on !& Ae$ruar %"14. 22 Arom the time of pu$lication to the time of filing the

opposition on !- Bul %"14 $arel five 95: months had elapsed. o $e $arred from $ringing suit on

grounds of estoppel and laches, the dela must $e

length. 2'



More crucial is the issue of confusing similarit $etween the two trademarks. )etitioner vehementl

contends that its trademark ;(<I(IC MR. EE; is entirel different from and not confusingl

similar to private respondent+s ;EE; trademark.

)rivate respondent maintains otherwise. It asserts that petitioner+s trademark tends to mislead and

confuse the pu$lic and thus constitutes an infringement of its own mark, since the dominant featuretherein is the word ;EE.;

he pertinent provision of R.. #o. %** 9rademark aw: states thus/

(ec. !!. Infringement , !at con"titute". n person who shall use, without the

consent of the registrant, an reproduction, counterfeit, cop or colora$le imitation of

an registered mark or trade'name in connection with the sale, offering for sale, or

advertising of an goods, $usiness or services on or in connection with which such

use is likel to cause confusion or mistake or to deceive purchasers or others as to

the source or origin of such goods or services, or identit of such $usinessD or

reproduce, counterfeit, cop or colora$l imita$le an such mark or trade'name andappl such reproduction, counterfeit, cop, or colora$le imitation to la$els, signs,

prints, packages, wrappers, receptacles or advertisements intended to $e used upon

or in connection with such goods, $usiness or servicesD shall $e lia$le to a civil action

$ the registrant for an or all of the remedies herein provided.

)ractical application, however, of the aforesaid provision is easier said than done. In the histor of

trademark cases in the )hilippines, particularl in ascertaining whether one trademark is confusingl

similar to or is a colora$le imitation of another, no set rules can $e deduced. Each case must $e

decided on its own merits.

In E""o #tandard Ea"tern, Inc . $ . Court of A%%ea&", 2(

we held/

. . . 7ut likelihood of confusion is a relative conceptD to $e determined onl according

to the particular, and sometimes peculiar, circumstances of each case. It is

unuestiona$l true that, as stated inCo'urn $". Puritan Mi&&", Inc ./ ;In trademark

cases, even more than in other litigation, precedent must $e studied in the light of the

facts of the particular case.;

>>> >>> >>>

ikewise, it has $een o$served that/

In determining whether a particular name or mark is a ;colora$le imitation; of

another, no all'em$racing rule seems possi$le in view of the great num$er of factors

which must necessaril $e considered in resolving this uestion of fact, such as the

class of product or $usiness to which the article $elongsD the product+s ualit,

uantit, or sie, including its wrapper or containerD the dominant color, stle, sie,

form, meaning of letters, words, designs and em$lems usedD the nature of the

package, wrapper or containerD the character of the product+s purchasersD location of



the $usinessD the likelihood of deception or the mark or name+s tendenc to confuseD

etc. 25

)roceeding to the task at hand, the essential element of infringement is colora$le imitation. his term

has $een defined as ;such a close or ingenious imitation as to $e calculated to deceive ordinar

purchasers, or such resem$lance of the infringing mark to the original as to deceive an ordinarpurchaser giving such attention as a purchaser usuall gives, and to cause him to purchase the one

supposing it to $e the other.; 2)

Colora$le imitation does not mean such similitude as amounts to identit. #or does it

reuire that all the details $e literall copied. Colora$le imitation refers to such

similarit in form, content, words, sound, meaning, special arrangement, or general

appearance of the trademark or tradename with that of the other mark or tradename

in their over'all presentation or in their essential, su$stantive and distinctive parts as

would likel mislead or confuse persons in the ordinar course of purchasing the

genuine article. 2*

In determining whether colora$le imitation e>ists, =urisprudence has developed two kinds of tests

the 3ominanc est applied in A"ia (reer), Inc . $ . Court of A%%ea&" 28 and other cases 29 and the

2olistic est developed in *e& Monte Cor%oration $ . Court of A%%ea&" '0 and its proponent cases. '1

s its title implies, the test of dominanc focuses on the similarit of the prevalent features of the

competing trademarks which might cause confusion or deception and thus constitutes infringement.

>>> >>> >>>

. . . If the competing trademark contains the main or essential or dominant features of

another, and confusion and deception is likel to result, infringement takes place.3uplication or imitation is not necessarD nor it is necessar that the infringing la$el

should suggest an effort to imitate. HC. #eilman 7rewing Co. v. Independent 7rewing

Co., %"% A., 41", 4"5, citing Eagle hite ead Co., vs. )flugh 9CC: %1& Aed. 5-".

he uestion at issue in cases of infringement of trademarks is whether the use of

the marks involved would $e likel to cau"e confu"ion or mi"ta+e" in t!e mind of t!e

%u'&ic or decei$e %urc!a"er". 9u$urn Ru$$er Corporation vs. 2onover Ru$$er Co.,

%&- A. !d 511D . . .: '2

>>> >>> >>>

0n the other side of the spectrum, the holistic test mandates that the entiret of the marks inuestion must $e considered in determining confusing similarit.

>>> >>> >>>

In determining whether the trademarks are confusingl similar, a comparison of the

words is not the onl determinant factor. he trademarks in their entiret as the

appear in their respective la$els or hang tags must also $e considered in relation to



the goods to which the are attached. he discerning ee of the o$server must focus

not onl on the predominant words $ut also on the other features appearing in $oth

la$els in order that he ma draw his conclusion whether one is confusingl similar to

the other. ''

>>> >>> >>>

ppling the foregoing tenets to the present controvers and taking into account the factual

circumstances of this case, we considered the trademarks involved as a whole and rule that

petitioner+s ;(<I(IC MR. EE; is not confusingl similar to private respondent+s ;EE; trademark.

)etitioner+s trademark is the whole ;(<I(IC MR. EE.; lthough on its la$el the word ;EE; is

prominent, the trademark should $e considered as a whole and not piecemeal. he dissimilarities

$etween the two marks $ecome conspicuous, noticea$le and su$stantial enough to matter

especiall in the light of the following varia$les that must $e factored in.

Airst, the products involved in the case at $ar are, in the main, various kinds of =eans. hese are notour ordinar household items like catsup, sosauce or soap which are of minimal cost. Maong

pants or =eans are not ine>pensive. ccordingl, the casual $uer is predisposed to $e more cautious

and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is

less likel. In *e& Monte Cor%oration $ . Court of A%%ea&", '( we noted that/

. . . mong these, what essentiall determines the attitudes of the purchaser,

specificall his inclination to $e cautious, is the cost of the goods. o $e sure, a

person who $us a $o> of candies will not e>ercise as much care as one who $us

an e>pensive watch. s a general rule, an ordinar $uer does not e>ercise as much

prudence in $uing an article for which he pas a few centavos as he does in

purchasing a more valua$le thing. E>pensive and valua$le items are normall $oughtonl after deli$erate, comparative and analtical investigation. 7ut mass products,

low priced articles in wide use, and matters of everda purchase reuiring freuent

replacement are $ought $ the casual consumer without great

care. . . .

(econd, like his $eer, the average Ailipino consumer generall $us his =eans $ $rand. 2e does not

ask the sales clerk for generic =eans $ut for, sa, a evis, Guess, rangler or even an rmani. 2e is,

therefore, more or less knowledgea$le and familiar with his preference and will not easil $e

distracted.

Ainall, in line with the foregoing discussions, more credit should $e given to the ;ordinarpurchaser.; Cast in this particular controvers, the ordinar purchaser is not the ;completel unwar

consumer; $ut is the ;ordinaril intelligent $uer; considering the tpe of product involved.

he definition laid down in *) (uncio $ . an iao (o+ '5 is $etter suited to the present case. here, the

;ordinar purchaser; was defined as one ;accustomed to $u, and therefore to some e>tent familiar with,

the goods in uestion. he test of fraudulent simulation is to $e found in the likelihood of the deception of

some persons in some measure acuainted with an esta$lished design and desirous of purchasing the



commodit with which that design has $een associated. he test is not found in the deception, or the

possi$ilit of deception, of the person who knows nothing a$out the design which has $een counterfeited,

and who must $e indifferent $etween that and the other. he simulation, in order to $e o$=ectiona$le, must

$e such as appears likel to mislead the ordinar intelligent $uer who has a need to suppl and is

familiar with the article that he seeks to purchase.;

here is no cause for the Court of ppeal+s apprehension that petitioner+s products might $e

mistaken as ;another variation or line of garments under private respondent+s +EE+ trademark;. ') s

one would readil o$serve, private respondent+s variation follows a standard format ;LEE RI3ER(,;

;LEE (6RE(; and ;LEE EE#(.; It is, therefore, impro$a$le that the pu$lic would immediatel and

naturall conclude that petitioner+s ;(<I(IC MR. EE; is $ut another variation under private

respondent+s ;EE; mark.

s we have previousl intimated the issue of confusing similarit $etween trademarks is resolved $

considering the distinct characteristics of each case. In the present controvers, taking into account

these uniue factors, we conclude that the similarities in the trademarks in uestion are not sufficient

as to likel cause deception and confusion tantamount to infringement.

nother wa of resolving the conflict is to consider the marks involved from the point of view of what

marks are registra$le pursuant to (ec. 4 of R.. #o. %**, particularl paragraph 4 9e:/

C2)ER II'. !e Princi%a& Regi"ter

9Inserted $ (ec. !, Rep. ct #o. *?1.:

(ec. 4. Regi"tration of trade-mar+", trade-name" and "er$ice-mar+" on t!e %rinci%a&

regi"ter . here is here$ esta$lished a register of trade'marks, trade'names and

service'marks which shall $e known as the principal register. he owner of a trade'

mark, trade'name or service'mark used to distinguish his goods, $usiness or

services from the goods, $usiness or services of others shall have the right to

register the same on the principal register, unless it/

>>> >>> >>>

9e: Consists of a mark or trade'name which, when applied to or used in connection

with the goods, $usiness or services of the applicant is merel descriptive or

deceptivel misdescriptive of them, or when applied to or used in connection with the

goods, $usiness or services of the applicant is primaril geographicall descriptive or

deceptivel misdescriptive of them, or i" %rimari&) mere&) a "urnameD 9Emphasis

ours.:

>>> >>> >>>

;EE; is primaril a surname. )rivate respondent cannot, therefore, acuire e>clusive ownership

over and singular use of said term.

. . . It has $een held that a personal name or surname ma not $e monopolied as a

trademark or tradename as against others of the same name or surname. Aor in the



Aollowing universal acuiescence and comit, our municipal law on trademarks

regarding the reuirement of actual use in the )hilippines must su$ordinate an

international agreement inasmuch as the apparent clash is $eing decided $ a

municipal tri$unal 9Mortisen vs. )eters, Great 7ritain, 2igh Court of Budiciar of

(cotland, %"&*, 1 (essions, "?D )aras, International aw and orld 0rganiation,

%"-% Ed., p. !&:. ithal, the fact that international law has $een made part of the lawof the land does not $ an means impl the primac of international law over

national law in the municipal sphere. 6nder the doctrine of incorporation as applied in

most countries, rules of international law are given a standing eual, not superior, to

national legislative enactments.

>>> >>> >>>

In other words, 9a foreign corporation: ma have the capacit to sue for infringement

irrespective of lack of $usiness activit in the )hilippines on account of (ection !%'

of the rademark aw $ut the uestion of whether the have an e>clusive right over

their sm$ol as to =ustif issuance of the controversial writ will depend on actual useof their trademarks in the )hilippines in line with (ections ! and !' of the same law.

It is thus incongruous for petitioners to claim that when a foreign corporation not

licensed to do $usiness in the )hilippines files a complaint for infringement, the entit

need not $e actuall using its trademark in commerce in the )hilippines. (uch a

foreign corporation ma have the personalit to file a suit for infringement $ut it ma

not necessaril $e entitled to protection due to a$sence of actual use of the em$lem

in the local market.

>>> >>> >>>

6ndisputa$l, private respondent is the senior registrant, having o$tained several registrationcertificates for its various trademarks ;EE,; ;EERI3ER(,; and ;EE(6RE(; in $oth the

supplemental and principal registers, as earl as %"*" to %"-?. (1 2owever, registration alone will not

suffice. In #ter&ing Product" Internationa& , Inc . $ .Far'enfa'ri+en (a)er A+tienge"e&&"c!aft , (2 we declared/

>>> >>> >>>

rule widel accepted and firml entrenched $ecause it has come down through the

ears is that actual use in commerce or $usiness is a prereuisite in the acuisition

of the right of ownership over a trademark.

>>> >>> >>>

It would seem uite clear that adoption alone of a trademark would not give e>clusive

right thereto. (uch right ;grows out of their actual use.; doption is not use. 0ne ma

make advertisements, issue circulars, give out price lists on certain goodsD $ut these

alone would not give e>clusive right of use. Aor trademark is a creation of use. he

underling reason for all these is that purchasers have come to understand the mark

as indicating the origin of the wares. Alowing from this is the trader+s right to



protection in the trade he has $uilt up and the goodwill he has accumulated from use

of the trademark. Registration of a trademark, of course, has value/ it is an

administrative act declarator of a pre'e>isting right. Regi"tration doe" not, !oe$er,

%erfect a trademar+ rig!t . 9Emphasis ours.:

>>> >>> >>>

o augment its arguments that it was, not onl the prior registrant, $ut also the prior user, private

respondent invokes (ec. !& of the rademark aw, thus/

(ec. !&. Certificate of registration %rima facie evidence of validit. certificate of

registration of a mark or tradename shall $e a %rima facie evidence of the validit of

the registration, the registrant+s ownership of the mark or trade'name, and of the

registrant+s e>clusive right to use the same in connection with the goods, $usiness or

services specified in the certificate, su$=ect to an conditions and limitations stated

therein.

he credi$ilit placed on a certificate of registration of one+s trademark, or its weight as evidence of

validit, ownership and e>clusive use, is ualified. registration certificate serves merel as %rima

facie evidence. It is not conclusive $ut can and ma $e re$utted $ controverting evidence.

Moreover, the aforeuoted provision applies onl to registrations in the principal

register. (' Registrations in the supplemental register do not en=o a similar privilege. supplemental

register was created precisel for the registration of marks which are not registra$le on the principal

register due to some defects. ((

he determination as to who is the prior user of the trademark is a uestion of fact and it is this

Court+s working principle not to distur$ the findings of the 3irector of )atents on this issue in thea$sence of an showing of grave a$use of discretion. he findings of facts of the 3irector of )atents

are conclusive upon the (upreme Court %ro$ided the are supported $ su$stantial evidence. (5

In the case at $ench, however, we reverse the findings of the 3irector of )atents and the Court of

ppeals. fter a meticulous stud of the records, we o$serve that the 3irector of )atents and the

Court of ppeals relied mainl on the registration certificates as proof of use $ private respondent of

the trademark ;EE; which, as we have previousl discussed are not sufficient. e cannot give

credence to private respondent+s claim that its ;EE; mark first reached the )hilippines in the %"*&+s

through local sales $ the )ost E>changes of the 6.(. Militar 7ases in the )hilippines () $ased as it

was solel on the self'serving statements of Mr. Edward )oste, General Manager of ee 9)hils.:, Inc., a

wholl owned su$sidiar of the 2.3. ee, Co., Inc., 6.(.., herein private respondent. (* (imilarl, we give

little weight to the numerous

vouchers representing various advertising e>penses in the )hilippines for ;EE; products. (8 It is well to

note that these e>penses were incurred onl in %"1% and %"1! $ EE 9)hils.:, Inc. after it entered into a

licensing agreement with private respondent on %% Ma %"1%. (9

0n the other hand, petitioner has sufficientl shown that it has $een in the $usiness of selling =eans

and other garments adopting its ;(<I(IC MR. EE; trademark since %"-5 as evidenced $

appropriate sales invoices to various stores and retailers. 50



0ur rulings in Paga"a Indu"tria& Cor%. $ . Court of A%%ea&" 51 and Con$er"e Ru''er Cor%. $ . Uni$er"a& Ru''er

Product", Inc ., 52respectivel, are instructive/

he rademark aw is ver clear. It reuires actual commercial use of the mark prior

to its registration. here is no dispute that respondent corporation was the first

registrant, et it failed to full su$stantiate its claim that it used in trade or $usiness inthe )hilippines the su$=ect markD it did not present proof to invest it with e>clusive,

continuous adoption of the trademark which should consist among others, of

considera$le sales since its first use. he invoices su$mitted $ respondent which

were dated wa $ack in %"5- show that the ippers sent to the )hilippines were to $e

used as ;samples; and ;of no commercial value.; he evidence for respondent must

$e clear, definite and free from inconsistencies. ;(amples; are not for sale and

therefore, the fact of e>porting them to the )hilippines cannot $e considered to $e

euivalent to the ;use; contemplated $ law. Respondent did not e>pect income from

such ;samples.; here were no receipts to esta$lish sale, and no proof were

presented to show that the were su$seuentl sold in the )hilippines.

>>> >>> >>>

he sales invoices provide the $est proof that there were actual sales of petitioner+s

product in the countr and that there was actual use for a protracted period of

petitioner+s trademark or part thereof through these sales.

Aor lack of adeuate proof of actual use of its trademark in the )hilippines prior to petitioner+s use of

its own mark and for failure to esta$lish confusing similarit $etween said trademarks, private

respondent+s action for infringement must necessaril fail.

2EREA0RE, premises considered, the uestioned decision and resolution are here$RE@ER(E3 and (E (I3E.

(0 0R3ERE3.



G.R. No. L+5')*2 M$ '1, 1982

!ATA INDUTRIE, LTD., petitioner,

vs.

THE HONORA!LE COURT OF APPEAL- TI!URCIO . EALLE, DIRECTOR OF PATENT,

NE/ OL#MPIAN RU!!ER PRODUCT CO., INC., respondents.

R E ( 0 6 I 0 #

A!AD ANTO, J.:

0n 0cto$er !-, %"1&, the petition in this case was denied for lack of merit. )etitioner moved to

reconsider and as reuired, private respondent su$mitted comments. hearing on the motion for

reconsideration was held on Bune -, %"1!. his is 0ur resolution on the motion for reconsideration.

In Inter )artes Case #o. *54 of the )hilippine )atent 0ffice, #ew 0lmpian Ru$$er )roducts Co.,

Inc. sought the registration of the mark 7 for casual ru$$er shoes. It alleged that it has used themark since Bul %, %"-&.

Registration was opposed $ 7ata Industries, td., a Canadian corporation, which alleged that it

owns and has not a$andoned the trademark 7.

(tipulated $ the parties were the following/

%. 7ata Industries, td. has no license to do $usiness in the )hilippinesD

!. It is not presentl selling footwear under the trademark 7 in the )hilippinesD and

?. It has no licensing agreement with an local entit or firm to sell its products in the )hilippines.

Evidence received $ the )hilippine )atent 0ffice showed that 7ata shoes made $ Ger$ec and

2rdina of Cechoslovakia were sold in the )hilippines prior to orld ar II. (ome shoes made $

7ata of Canada were perhaps also sold in the )hilippines until %"41. 2owever, the trademark 7

was never registered in the )hilippines $ an foreign entit. 6nder the circumstances, it was

concluded that ;opposer has, to all intents and purposes, technicall a$andoned its trademark 7

in the )hilippines.;

6pon the other hand, the )hilippine )atent 0ffice found that #ew 0lmpian Ru$$er )roducts Co.,

Inc./

... has overwhelmingl and convincingl esta$lished its right to the trademark 7 and

conseuentl, its use and registration in its favor. here is no gainsaing the truth that the

respondent has spent a considera$le amount of mone and effort in populariing the trademark

7 for shoes in the )hilippines through the advertising media since it was lawfull used in

commerce on Bul %, %"-&. It can not $e denied, therefore, that it is the respondent'applicant+s



e>pense that created the enormous goodwill of the trademark 7 in the )hilippines and not the

opposer as claimed in its opposition to the registration of the 7 mark $ the respondent.

dditionall, on evidence of record, having also secured 9three: copright registrations for the word

7, respondent'applicant+s right to claim ownership of the trademark 7 in the )hilippines,

which it claims to $e a agalog word which literall means ;a little child; 9E>h. 5:, is all the morefortified.

he )hilippine )atent 0ffice dismissed the opposition and ordered the registration of the trademark

7 in favor of the domestic corporation.

ppeal from the decision of the )hilippine )atent 0ffice was made to the Court of ppeals $ 7ata

Industries, td. In a decision penned $ Bustice Bustiniano ). Corte dated ugust ", %"-", with

Bustices Mariano (errano and Bose 7. Bimene concurring, the ))0 decision was reversed.

motion for reconsideration filed $ #ew 0lmpian Ru$$er )roducts Co., Inc. was denied on 0cto$er

%-, %"-", $ the same =ustices.

2owever, in a resolution on a second motion for reconsideration penned $ Bustice 2ugo E.

Gutierre who is now a mem$er of this Court, to which Bustices Coraon B. grava and Rodolfo .

#ocon concurred 9with the former filing a separate opinion:, the decision of ugust ", %"-", was set

aside and that of the 3irector of )atents was affirmed.

In addition to points of law, 7ata Industries, td. uestions ;the circumstances surrounding the

issuance of the uestioned resolutions of the respondent Court of ppeals.; In effect, it insinuates

that there was something wrong when a new set of =ustices rendered a completel different decision.

It should $e stated that there is nothing wrong and unusual when a decision is reconsidered. his is

so when the reconsideration is made $ a division composed of the same =ustices who rendered thedecision $ut much more so when the reconsideration is made $ a different set of =ustices as

happened in this case. 0$viousl, the new set of =ustices would have a fresh perspective

unencum$ered $ the views e>pressed in the decision sought to $e reconsidered. #or should it $e a

cause for wonder wh Bustices Gutierre, grava and #ocon had replaced the original =ustices.

Bustice Corte resigned to $ecome a candidate for the governorship of Cagaan 9he was elected:,

while Bustices (errano and Bimene retired upon reaching the age of *5.

0n the merits, the e>tended resolution penned $ Bustice Gutierre does not have to $e fortified $

6s. e agree with Mr. Bustice Gutierre when he sas/

e are satisfied from the evidence that an slight goodwill generated $ the Cechoslovakianproduct during the Commonwealth ears was completel a$andoned and lost in the more than ?5

ears that have passed since the li$eration of Manila from the Bapanese troops.

he applicant'appellee has reproduced e>cerpts from the testimonies of the opposer'appellant+s

witnesses to prove that the opposer'appellant was never a user of the trademark 7 either $efore

or after the war, that the appellant is not the successor'in'interest of Ger$ec and 2rdina who were

not is representatives or agents, and could not have passed an rights to the appellant, that there



was no privit of interest $etween the Cechoslovakian owner and the Canadian appellant and that

the Cechoslovakian trademark has $een a$andoned in Cechoslovakia.

e agree with the applicant'appellee that more than su$stantial evidence supports the findings and

conclusions of the 3irector of )atents. he appellant has no )hilippine goodwill that would $e

damaged $ the registration of the mark in the appellee+s favor. e agree with the decision of the3irector of )atents which sustains, on the $asis of clear and convincing evidence, the right of the

appellee to the registration and protection of its industrial propert, the 7 trademark.

2EREA0RE, the motion for reconsideration is here$ denied for lack of merit. #o special

pronouncement as to costs. (0 0R3ERE3.

G.R. No. 9)1)1 Febr$r 21, 1992

PHILIP EPORT !.., PHILIP ELECTRICAL LAMP, INC. $%& PHILIP INDUTRIAL

DEELOPMENT, INC.,petitioners,

vs.COURT OF APPEAL, ECURITIE ECHANGE COMMIION $%& TANDARD PHILIP

CORPORATION,respondents.

Emeterio 2 #o&i$en 3 A""ociate" for %etitioner"2

4arci"o A2 Manantan for %ri$ate re"%ondent2

MELENCIO+HERRERA, J.:

)etitioners challenge the 3ecision of the Court of ppeals, dated ?% Bul %""&, in C'GR (p. #o.

!&&*-, upholding the 0rder of the (ecurities and E>change Commission, dated ! Banuar %""&, in

(EC'C #o. !&!, dismissing petitioners+ praer for the cancellation or removal of the word

;)2II)(; from private respondent+s corporate name.

)etitioner )hilips E>port 7.@. 9)E7@:, a foreign corporation organied under the laws of the

#etherlands, although not engaged in $usiness here, is the registered owner of the trademarks

)2II)( and )2II)( (2IE3 EM7EM under Certificates of Registration #os. R'%*4% and R'

%*-4, respectivel issued $ the )hilippine )atents 0ffice 9presentl known as the 7ureau of

)atents, rademarks and echnolog ransfer:. )etitioners )hilips Electrical amps, Inc. 9)hilips

Electrical, for $revit: and )hilips Industrial 3evelopments, Inc. 9)hilips Industrial, for short:,authoried users of the trademarks )2II)( and )2II)( (2IE3 EM7EM, were incorporated on

!" ugust %"5* and !5 Ma %"5*, respectivel. ll petitioner corporations $elong to the )2II)(

Group of Companies.

Respondent (tandard )hilips Corporation 9(tandard )hilips:, on the other hand, was issued a

Certificate of Registration $ respondent Commission on %" Ma %"1!.



0n !4 (eptem$er %"14, )etitioners filed a letter complaint with the (ecurities 8 E>change

Commission 9(EC: asking for the cancellation of the word ;)2II)(; from )rivate Respondent+s

corporate name in view of the prior registration with the 7ureau of )atents of the trademark

;)2II)(; and the logo ;)2II)( (2IE3 EM7EM; in the name of )etitioner, )E7@, and the

previous registration of )etitioners )hilips Electrical and )hilips Industrial with the (EC.

s a result of )rivate Respondent+s refusal to amend its rticles of Incorporation, )etitioners filed

with the (EC, on * Ae$ruar %"15, a )etition 9(EC Case #o. !-4?: praing for the issuance of a

rit of )reliminar In=unction, alleging, among others, that )rivate Respondent+s use of the word

)2II)( amounts to an infringement and clear violation of )etitioners+ e>clusive right to use the

same considering that $oth parties engage in the same $usiness.

In its nswer, dated - March %"15, )rivate Respondent countered that )etitioner )E7@ has no legal

capacit to sueD that its use of its corporate name is not at all similar to )etitioners+ trademark

)2II)( when considered in its entiretD and that its products consisting of chain rollers, $elts,

$earings and cutting saw are grossl different from )etitioners+ electrical products.

fter conducting hearings with respect to the praer for In=unctionD the (EC 2earing 0fficer, on !-

(eptem$er %"15, ruled against the issuance of such rit.

0n ?& Banuar %"1-, the same 2earing 0fficer dismissed the )etition for lack of merit. In so ruling,

the latter declared that inasmuch as the (EC found no sufficient ground for the granting of in=unctive

relief on the $asis of the testimonial and documentar evidence presented, it cannot order the

removal or cancellation of the word ;)2II)(; from )rivate Respondent+s corporate name on the

$asis of the same evidence adopted in toto during trial on the merits. 7esides, (ection %1 of the

Corporation Code 9infra: is applica$le onl when the corporate names in uestion are identical.

2ere, there is no confusing similarit $etween )etitioners+ and )rivate Respondent+s corporate

names as those of the )etitioners contain at least two words different from that of the Respondent.)etitioners+ Motion for Reconsideration was likewise denied on %- Bune %"1-.

0n appeal, the (EC en 'anc affirmed the dismissal declaring that the corporate names of )etitioners

and )rivate Respondent hardl $reed confusion inasmuch as each contains at least two different

words and, therefore, rules out an possi$ilit of confusing one for the other.

0n ?& Banuar %""&, )etitioners sought an e>tension of time to file a )etition for Review

on Certiorari $efore this Court, which )etition was later referred to the Court of ppeals in a

Resolution dated %! Ae$ruar %""&.

In deciding to dismiss the petition on ?% Bul %""&, the Court of ppeals 1 swept aside )etitioners+ claim that following the ruling in Con$er"e Ru''er Cor%oration $2

Uni$er"a& Con$er"e Ru''er Product", Inc2, et a&, 9G. R. #o. '!-"&*, Banuar 1, %"1-, %4- (CR %54:,

the word )2II)( cannot $e used as part of )rivate Respondent+s corporate name as the same

constitutes a dominant part of )etitioners+ corporate names. In so holding, the ppellate Court o$served

that the Con$er"e case is not four'suare with the present case inasmuch as the contending parties

in Con$er"e are engaged in a similar $usiness, that is, the manufacture of ru$$er shoes. 6pholding the

(EC, the ppellate Court concluded that ;private respondents+ products consisting of chain rollers, $elts,

$earings and cutting saw are unrelated and non'competing with petitioners+ products i2e2 electrical lamps



such that consumers would not in an pro$a$ilit mistake one as the source or origin of the product of the

other.;

he ppellate Court denied )etitioners+ Motion for Reconsideration on !& #ovem$er %""&, hence,

this )etition which was given due course on !! pril %""%, after which the parties were reuired to

su$mit their memoranda, the latest of which was received on ! Bul %""%. In 3ecem$er %""%, the

(EC was also reuired to elevate its records for the perusal of this Court, the same not having $een

apparentl $efore respondent Court of ppeals.

e find $asis for petitioners+ plea.

s earl as .e"tern E0ui%ment and #u%%&) Co2 $2 Re)e", 5% )hil. %%5 9%"!-:, the Court declared

that a corporation+s right to use its corporate and trade name is a propert right, a right in rem, which

it ma assert and protect against the world in the same manner as it ma protect its tangi$le

propert, real or personal, against trespass or conversion. It is regarded, to a certain e>tent, as a

propert right and one which cannot $e impaired or defeated $ su$seuent appropriation $

another corporation in the same field 9Red ine ransportation Co. vs. Rural ransit Co., (eptem$er

1, %"?4, !& )hil 54":.

name is peculiarl important as necessar to the ver e>istence of a corporation 9merican (teel

Aoundries vs. Ro$ertson, !*" 6( ?-!, -& ed ?%-, 4* ( Ct %*&D auman vs. e$anon @alle R.

Co., ?& )a 4!D Airst #ational 7ank vs. 2untington 3istilling Co. 4& @a 5?&, !? (E -"!:. Its name is

one of its attri$utes, an element of its e>istence, and essential to its identit 9* Aletcher H)erm Ed,

pp. ?'4:. he general rule as to corporations is that each corporation must have a name $ which it

is to sue and $e sued and do all legal acts. he name of a corporation in this respect designates the

corporation in the same manner as the name of an individual designates the person 9Cincinnati

Cooperage Co. vs. 7ate. "* F ?5*, !* ( 5?1D #ewport Mechanics Mfg. Co. vs. (tar$ird. %& #2

%!?:D and the right to use its corporate name is as much a part of the corporate franchise as an

other privilege granted 9Aederal (ecur. Co. vs. Aederal (ecur. Corp., %!" 0r ?-5, !-* ) %%&&, **

R "?4D )aulino vs. )ortuguese 7eneficial ssociation, %1 RI %*5, !* ?*:.

corporation acuires its name $ choice and need not select a name identical with or similar to one

alread appropriated $ a senior corporation while an individual+s name is thrust upon him

9#ee (tandard 0il Co. of #ew Me>ico, Inc. v. (tandard 0il Co. of California, 5* A !d "-?, "--:.

corporation can no more use a corporate name in violation of the rights of others than an individual

can use his name legall acuired so as to mislead the pu$lic and in=ure another 9rmington vs.

)almer, !% RI %&". 4! ?&1:.

0ur own Corporation Code, in its (ection %1, e>pressl provides that/

#o corporate name ma $e allowed $ the (ecurities and E>change Commission if

the proposed name is identica& or dece%ti$e&) or confu"ing&) "imi&ar to t!at of an)

ei"ting cor%oration or to an) ot!er name a&read) %rotected ') &a or i" %atent&)

dece%ti$e, confu"ing or contrar) to ei"ting &a2here a change in a corporate name

is approved, the commission shall issue an amended certificate of incorporation

under the amended name. 9Emphasis supplied:



he statutor prohi$ition cannot $e an clearer. o come within its scope, two reuisites must $e

proven, namel/

9%: that the complainant corporation acuired a prior right over the use of such corporate nameD and

9!: the proposed name is either/

9a: identicalD or

9$: deceptivel or confusingl similar

to that of an e>isting corporation or to an other name alread protected $ lawD or

9c: patentl deceptive, confusing or contrar to e>isting law.

he right to the e>clusive use of a corporate name with freedom from infringement $ similarit is

determined $ priorit of adoption 9% hompson, p. 1& citing Munn v. mericana Co., 1! #. E. *?,11 tl. ?&D (an Arancisco 0ster 2ouse v. Mihich, -5 ash. !-4, %?4 )ac. "!%:. In this regard, there

is no dou$t with respect to )etitioners+ prior adoption of+ the name ++)2II)(; as part of its corporate

name. )etitioners )hilips Electrical and )hilips Industrial were incorporated on !" ugust %"5* and

!5 Ma %"5*, respectivel, while Respondent (tandard )hilips was issued a Certificate of

Registration on %! pril %"1!, twent'si> 9!*: ears later 9Ro&&o, p. %*:. )etitioner )E7@ has also

used the trademark ;)2II)(; on electrical lamps of all tpes and their accessories since ?&

(eptem$er %"!!, as evidenced $ Certificate of Registration #o. %*5%.

he second reuisite no less e>ists in this case. In determining the e>istence of confusing similarit

in corporate names, the test is whether the similarit is such as to mislead a person, using ordinar

care and discrimination. In so doing, the Court must look to the record as well as the namesthemselves 90hio #at. ife Ins. Co. v. 0hio ife Ins. Co., !%& #E !d !"1:. hile the corporate names

of )etitioners and )rivate Respondent are not identical, a reading of )etitioner+s corporate names, to

wit/ )2II)( EJ)0R 7.@., )2II)( EECRIC M)(, I#C. and )2II)( I#36(RI

3E@E0)ME#, I#C., inevita$l leads one to conclude that ;)2II)(; is, indeed, the dominant

word in that all the companies affiliated or associated with the principal corporation, )E7@, are

known in the )hilippines and a$road as the )2II)( Group of Companies.

Respondents maintain, however, that )etitioners did not present an iota of proof of actual confusion

or deception of the pu$lic much less a single purchaser of their product who has $een deceived or

confused or showed an likelihood of confusion. It is settled, however, that proof of actual confusion

need not $e shown. It suffices that confusion is pro$a$l or likel to occur 9* Aletcher H)erm Ed, pp.%&-'%&1, enumerating a long line of cases:.

It ma $e that )rivate Respondent+s products also consist of chain rollers, $elts, $earing and the like,

while petitioners deal principall with electrical products. It is significant to note, however, that even

the 3irector of )atents had denied )rivate Respondent+s application for registration of the

trademarks ;(tandard )hilips 8 3evice; for chain, rollers, $elts, $earings and cutting saw. hat office

held that )E7@, ;had shipped to its su$sidiaries in the )hilippines euipment, machines and their



parts which fall under international class where ;chains, rollers, $elts, $earings and cutting saw,; the

goods in connection with which Respondent is seeking to register +(#3R3 )2II)(+ . . . also

$elong; 9 Inter )artes Case #o. !&%&, Bune %-, %"11, (EC Ro&&o:.

Aurthermore, the records show that among )rivate Respondent+s primar purposes in its rticles of

Incorporation 9nne> 3, )etition p. ?-, Ro&&o: are the following/

o 'u), "e&&, 'arter, trade, manufacture, im%ort, e%ort, or ot!eri"e ac0uire, di"%o"e

of, and dea& in and dea& it! an) +ind of goods, wares, and merchandise such as $ut

not limited to plastics, car$on products, office stationer and supplies, hardware

parts, e&ectrica& iring de$ice", e&ectrica& com%onent %art", and6or com%&ement

of industrial, agricultural or commercial machineries, constructive supplies, e&ectrica&

"u%%&ie" and other merchandise which are or ma $ecome articles of commerce

e>cept food, drugs and cosmetics and to carr on such $usiness as manufacturer,

distri$utor, dealer, indentor, factor, manufacturer+s representative capacit for

domestic or foreign companies. 9emphasis ours:

Aor its part, )hilips Electrical also includes, among its primar purposes, the following/

o develop manufacture and deal in electrical products, including electronic,

mechanical and other similar products . . . 9p. ?&, Record of (EC Case #o. !-4?:

Given )rivate Respondent+s aforesaid underlined primar purpose, nothing could prevent it from

dealing in the same line of $usiness of electrical devices, products or supplies which fall under its

primar purposes. 7esides, there is showing that )rivate Respondent not onl manufactured and

sold $allasts for fluorescent lamps with their corporate name printed thereon $ut also advertised the

same as, among others, (tandard )hilips 9(#, $efore the (EC, pp. %4, %-, !5, !*, ?-'4!, Bune %4,

%"15D pp. %*'%", Bul !5, %"15:. s aptl pointed out $ )etitioners, Hprivate respondent+s choice of;)2II)(; as part of its corporate name H(#3R3 )2II)( C0R)0RI0# . . . tends to show

said respondent+s intention to ride on the popularit and esta$lished goodwill of said petitioner+s

$usiness throughout the world; 9Ro&&o, p. %?-:. he su$seuent appropriator of the name or one

confusingl similar thereto usuall seeks an unfair advantage, a free ride of another+s goodwill

9merican Gold (tar Mothers, Inc. v. #ational Gold (tar Mothers, Inc., et al, 1" pp 3C !*", %"% A

!d 411:.

In allowing )rivate Respondent the continued use of its corporate name, the (EC maintains that the

corporate names of )etitioners )2II)( EECRIC M)(. I#C. and )2II)( I#36(RI

3E@E0)ME#, I#C. contain at least two words different from that of the corporate name of

respondent (#3R3 )2II)( C0R)0RI0#, which words will readil identif )rivateRespondent from )etitioners and vice'versa.

rue, under the Guidelines in the pproval of Corporate and )artnership #ames formulated $ the

(EC, the proposed name ;should not $e similar to one alread used $ another corporation or

partnership. If the proposed name contains a word alread used as part of the firm name or stle of

a registered companD t!e %ro%o"ed name mu"t contain to ot!er ord" different from t!e com%an)



a&read) regi"tered ; 9Emphasis ours:. It is then pointed out that )etitioners )hilips Electrical and

)hilips Industrial have two words different from that of )rivate Respondent+s name.

hat is lost sight of, however, is that )2II)( is a trademark or trade name which was registered as

far $ack as %"!!. )etitioners, therefore, have the e>clusive right to its use which must $e free from

an infringement $ similarit. corporation has an e>clusive right to the use of its name, which ma$e protected $ in=unction upon a principle similar to that upon which persons are protected in the

use of trademarks and tradenames 9%1 C.B.(. 5-4:. (uch principle proceeds upon the theor that it

is a fraud on the corporation which has acuired a right to that name and perhaps carried on its

$usiness thereunder, that another should attempt to use the same name, or the same name with a

slight variation in such a wa as to induce persons to deal with it in the $elief that the are dealing

with the corporation which has given a reputation to the name 9* Aletcher H)erm Ed, pp. ?"'

4&, citing 7orden Ice Cream Co. v. 7orden+s Condensed Milk Co., !%& A 5%&:. #ota$l, too, )rivate

Respondent+s name actuall contains onl a single word, that is, ;(#3R3;, different from that of

)etitioners inasmuch as the inclusion of the term ;Corporation; or ;Corp.; merel serves the )urpose

of distinguishing the corporation from partnerships and other $usiness organiations.

he fact that there are other companies engaged in other lines of $usiness using the word

;)2II)(; as part of their corporate names is no defense and does not warrant the use $ )rivate

Respondent of such word which constitutes an essential feature of )etitioners+ corporate name

previousl adopted and registered and'having acuired the status of a well'known mark in the

)hilippines and internationall as well 97ureau of )atents 3ecision #o. 11'?5 HM, Bune %-, %"11,

(EC Records:.

In support of its application for the registration of its rticles of Incorporation with the (EC, )rivate

Respondent had su$mitted an undertaking ;manifesting its willingness to change its corporate name

in the event another person, firm or entit has acuired a prior right to the use of the said firm name

or one deceptivel or confusingl similar to it.; )rivate respondent must now $e held to itsundertaking.

s a general rule, parties organiing a corporation must choose a name at their perilD

and the use of a name similar to one adopted $ another corporation, whether a

$usiness or a non$usiness or non'profit organiation if misleading and likel to in=ure

it in the e>ercise in its corporate functions, regardless of intent, ma $e prevented $

the corporation having the prior right, $ a suit for in=unction against the new

corporation to prevent the use of the name 9merican Gold (tar Mothers, Inc. v.

#ational Gold (tar Mothers, Inc., 1" pp 3C !*", %"% A !d 411, !- R !d "41:.

2EREA0RE, the 3ecision of the Court of ppeals dated ?% Bul %""&, and its Resolution dated !&#ovem$er %""&, are (E (I3E and a new one entered E#B0I#I#G private respondent from using

;)2II)(; as a feature of its corporate name, and 0R3ERI#G the (ecurities and E>change

Commission to amend private respondent+s rticles of Incorporation $ deleting the word )2II)(

from the corporate name of private respondent.

#o costs.



(0 0R3ERE3.



G.R. No. L+299*1 A34 '1, 1982

EO TANDARD EATERN, INC., petitioner,

vs.

THE HONORA!LE COURT OF APPEAL 66 $%& UNITED CIGARETTE CORPORATION, respondents.

8

TEEHAN"EE, J.:1äwphï1.ñët

he Court affirms on the $asis of controlling doctrine the appealed decision of the Court of ppeals

reversing that of the Court of Airst Instance of Manila and dismissing the complaint filed $ herein

petitioner against private respondent for trade infringement for using petitioner+s trademark E((0,

since it clearl appears that the goods on which the trademark E((0 is used $ respondent is non'

competing and entirel unrelated to the products of petitioner so that there is no likelihood of

confusion or deception on the part of the purchasing pu$lic as to the origin or source of the goods.

)etitioner Esso (tandard Eastern, Inc., 1 then a foreign corporation dul licensed to do $usiness in the

)hilippines, is engaged in the sale of petroleum products which are Identified with its trademark E((0

9which as successor of the defunct (tandard @acuum 0il Co. it registered as a $usiness name with the

7ureaus of Commerce and Internal Revenue in pril and Ma, %"*!:. )rivate respondent in turn is a

domestic corporation then engaged in the manufacture and sale of cigarettes, after it acuired in

#ovem$er, %"*? the $usiness, factor and patent rights of its predecessor a 0riental o$acco

Corporation, one of the rights thus acuired having $een the use of the trademark E((0 on its cigarettes,

for which a permit had $een dul granted $ the 7ureau of Internal Revenue.

7arel had respondent as such successor started manufacturing cigarettes with the trademark

E((0, when petitioner commenced a case for trademark infringement in the Court of Airst Instance

of Manila. he complaint alleged that the petitioner had $een for man ears engaged in the sale of

petroleum products and its trademark E((0 had acuired a considera$le goodwill to such an e>tent

that the $uing pu$lic had alwas taken the trademark E((0 as euivalent to high ualit petroleum

products. )etitioner asserted that the continued use $ private respondent of the same trademark

E((0 on its cigarettes was $eing carried out for the purpose of deceiving the pu$lic as to its ualit

and origin to the detriment and disadvantage of its own products.

In its answer, respondent admitted that it used the trademark E((0 on its own product of cigarettes,

which was not Identical to those produced and sold $ petitioner and therefore did not in an wa

infringe on or imitate petitioner+s trademark. Respondent contended that in order that there ma $e

trademark infringement, it is indispensa$le that the mark must $e used $ one person in connection

or competition with goods of the same kind as the complainant+s.

he trial court, reling on the old cases of Ang $"2 eodoro 2 and Arce 3 #on", Inc2 $"2 #e&ecta (i"cuit

Com%an) , 'referring to related products, decided in favor of petitioner and ruled that respondent was

guilt of infringement of trademark.

0n appeal, respondent Court of ppeals found that there was no trademark infringement and

dismissed the complaint. Reconsideration of the decision having $een denied, petitioner appealed to



this Court $ wa of certiorari to reverse the decision of the Court of ppeals and to reinstate the

decision of the Court of Airst Instance of Manila. he Court finds no ground for granting the petition.

he law defines infringement as the use without consent of the trademark owner of an

;reproduction, counterfeit, cop or colora$le limitation of an registered mark or tradename in

connection with the sale, offering for sale, or advertising of an goods, $usiness or services on or inconnection with which such use is likel to cause confusion or mistake or to deceive purchasers or

others as to the source or origin of such goods or services, or Identit of such $usinessD or

reproduce, counterfeit, cop or colora$l imitate an such mark or tradename and appl such

reproduction, counterfeit, cop or colora$le limitation to la$els, signs, prints, packages, wrappers,

receptacles or advertisements intended to $e used upon or in connection with such goods, $usiness

or services.; ( Implicit in this definition is the concept that the goods must $e so related that there is a

likelihood either of confusion of goods or $usiness.5 7ut likelihood of confusion is a relative conceptD to $e

determined onl according to the particular, and sometimes peculiar, circumstances of each case. ) It is

unuestiona$l true that, as stated in Co'urn $"2 Puritan Mi&&", Inc . * ;In trademark cases, even more than

in other litigation, precedent must $e studied in the light of the facts of the particular case.

It is undisputed that the goods on which petitioner uses the trademark E((0, petroleum products,

and the product of respondent, cigarettes, are non'competing. 7ut as to whether trademark

infringement e>ists depends for the most part upon whether or not the goods are so re&ated that the

pu$lic ma $e, or is actuall, deceived and misled that the came from the same maker or

manufacturer. Aor non'competing goods ma $e those which, though the are not in actual

competition, are so related to each other that it might reasona$l $e assumed that the originate

from one manufacturer. 4on-com%eting goods ma also $e those which, $eing entirel unre&ated ,

could not reasona$l $e assumed to have a common source. in the former case of related goods,

confusion of $usiness could arise out of the use of similar marksD in the latter case of non'related

goods, it could not. 8 he vast ma=orit of courts toda follow the modern theor or concept of ;related

goods; 9 which the Court has likewise adopted and uniforml recognied and applied. 10

Goods are related when the $elong to the same class or have the same descriptive propertiesD

when the possess the same phsical attri$utes or essential characteristics with reference to their

form, composition, te>ture or ualit. he ma also $e related $ecause the serve the same

purpose or are sold in grocer stores. 11 hus, $iscuits were held related to milk $ecause the are $oth

food products. 12 (oap and perfume, lipstick and nail polish are similarl related $ecause the are

common household items now a das. 1' he trademark ;ng i$a; for shoes and slippers was

disallowed to $e used for shirts and pants $ecause the $elong to the same general class of

goods. 1( (oap and pomade although non' competitive, were held to $e similar or to $elong to the same

class, since $oth are toilet articles.15 7ut no confusion or deception can possi$l result or arise when the

name ;ellington; which is the trademark for shirts, pants, drawers and other articles of wear for men,

women and children is used as a name of a department store. 1)

hus, in Aco7e Mining Co2, Inc2 $"2 *irector of Patent", 1* the Court, through now Chief Bustice

Aernando, reversed the patent director+s decision on the uestion of ;Ma petitioner co=e Mining

Compan register for the purpose of advertising its product, "o) "auce, the trademark 06(, there

$eing alread in e>istence one such registered in favor of the )hilippine Refining Compan for its

product, edi'&e oi& , it $eing further shown that the trademark applied for is in smaller tpe, colored

differentl, set on a $ackground which is dissimilar as to ield a distinct appearanceK; and ordered the



granting of petitioner+s application for registration ruling that ;there is uite a difference $etween so

sauce and edi$le oil. If one is in the market for the former, he is not likel to purchase the latter =ust

$ecause of the trademark 06(; and ;when regard is had for the principle that the two trademarks in

their entiret as the appear in their respective la$els should $e considered in relation to the goods

advertised $efore registration could $e denied, the conclusion is inescapa$le that respondent 3irector

ought to have reached a different conclusion. ;

7 the same token, in the recent case of P!i&i%%ine Refining Co2, Inc2 $"2 4g #am and *irector of

Patent", 18 the Court upheld the patent director+s registration of the same trademark CMI for therein

respondent+s product of ham notwithstanding its alread $eing used $ therein petitioner for a wide range

of products/ lard $utter, cooking oil, a$rasive detergents, polishing materials and soap of all kinds. he

Court, after noting that the same CMI trademark had $een registered $ two other companies,

Ever$right 3evelopment Compan and A. E. Luellig, Inc. for their respective products of thread and arn

9for the former: and te>tiles, em$roideries and laces 9for the latter: ruled that ;while ham and some of the

products of petitioner are classified under Class 4- 9Aoods and Ingredients of Aood:, this alone cannot

serve as the decisive factor in the resolution of whether or not the are related goods. Emphasis should

$e on the similarit of the products involved and not on the ar$itrar classification or general description of

their properties or characteristics.; he Court, therefore, concluded that ;In fine, e hold that the$usinesses of the parties are non'competitive and their products sounre&ated that the use of Identical

trademarks is not likel to give rise to confusion, much less cause damage to petitioner.;

In the situation $efore us, the goods are o$viousl different from each other with ;a$solutel no iota

of similitude;19 as stressed in respondent court+s =udgment. he are so foreign to each other as to make

it unlikel that purchasers would think that petitioner is the manufacturer of respondent+s goods. t:&F;he mere

fact that one person has adopted and used a trademark on his goods does not prevent the adoption and

use of the same trademark $ others on unrelated articles of a different kind. 20

)etitioner uses the trademark E((0 and holds certificate of registration of the trademark for

petroleum products, including aviation gasoline, grease, cigarette lighter fluid and other variousproducts such as plastics, chemicals, snthetics, gasoline solvents, kerosene, automotive and

industrial fuel, $unker fuel, lu$ricating oil, fertiliers, gas, alcohol, insecticides and the E((0 Gasul;

$urner, while respondent+s $usiness is solel for the manufacture and sale of the unrelated product

of cigarettes. he pu$lic knows too well that petitioner deals solel with petroleum products that

there is no possi$ilit that cigarettes with E((0 $rand will $e associated with whatever good name

petitioner+s E((0 trademark ma have generated. lthough petitioner+s products are numerous,

the are of the same class or line of merchandise which are non'competing with respondent+s

product of cigarettes, which as pointed out in the appealed =udgment is 'e)ond petitioner+s ;one of

potential or natural and logical e>pansion; 21hen a trademark is used $ a part for a product in which

the other part does not deal, the use of the same trademark on the latter+s product cannot $e validl

o$=ected to. 22

nother factor that shows that the goods involved are non'competitive and non'related is the

appellate court+s finding that the flow through different channels of trade, thus/ ;he products of

each part move along and are disposed through different channels of distri$ution. he 9petitioner+s:

products are distri$uted principall through gasoline service and lu$rication stations, automotive

shops and hardware stores. 0n the other hand, the 9respondent+s: cigarettes are sold in sari'sari

stores, grocer stores, and other small distri$utor outlets. 9Respondent+s: cigarettes are even



peddled in the streets while 9petitioner+s: +gasul+ $urners are not. Ainall, there is a marked distinction

$etween oil and to$acco, as well as $etween petroleum and cigarettes. Evidentl, in kind and nature

the products of 9respondent: and of 9petitioner: are poles apart.; 2'

Respondent court correctl ruled that considering the general appearances of each mark as a whole,

the possi$ilit of an confusion is unlikel. comparison of the la$els of the samples of the goodssu$mitted $ the parties shows a great man differences on the trademarks used. s pointed out $

respondent court in its appealed decision, ;9: witness for the plaintiff, Mr. 7uha, admitted that the

color of the ;E((0; used $ the plaintiff for the oval design where the $lue word E((0 is contained

is the distinct and uniue kind of $lue. In his answer to the trial court+s uestion, Mr. 7uha informed

the court that the plaintiff never used its trademark on an product where the com$ination of colors is

similar to the la$el of the Esso cigarettes,; and ;nother witness for the plaintiff, Mr. engco, testified

that generall, the plaintiff+s trademark comes all in either red, white, $lue or an com$ination of the

three colors. It is to $e pointed out that not even a shade of these colors appears on the trademark

of the appellant+s cigarette. he onl color that the appellant uses in its trademark is green.; 2(

Even the lower court, which ruled initiall for petitioner, found that a ;noticea$le difference $etweenthe $rand E((0 $eing used $ the defendants and the trademark E((0 of the plaintiff is that the

former has a rectangular $ackground, while in that of the plaintiff the word E((0 is enclosed in an

oval $ackground.;

In point of fact and time, the Court+s dismissal of the petition at $ar was presaged $ its Resolution of

Ma !%, %"-" dismissing $ minute resolution the petition for review for lack of merit in the Identical

case of #!e&& Com%an) of t!e P!i&i%%ine", Ltd $"2 Court of A%%ea&" 25, wherein the Court there$

affirmed the patent office+s registration of the trademark (2E as used in the cigarettes manufactured $

therein respondent Aortune o$acco Corporation notwithstanding the therein petitioner (hell Compan+s

opposition thereto as the prior registrant of the same trademark for its gasoline and other petroleum

trademarks, on the strength of the controlling authorit of Aco7e Mining Co2 $"2 *irector of Patent", #u%ra,

and the same rationale that ;9I:n the )hilippines, where $uers of appellee+s 9Aortune Corp.+s: cigarettes,

which are low cost articles, can $e more numerous compared to $uers of the higher priced petroleum

and chemical products of appellant 9(hell Co.: and where appellant 9(hell: is known to $e in the $usiness

of selling petroleum and petroleum'$ased chemical products, and no others, it is difficult to conceive of

confusion in the minds of the $uing pu$lic in the sense it can $e thought that appellant 9(hell: is the

manufacturer of appellee+s 9Aortune+s: cigarettes, or that appellee 9Aortune: is the manufacturer or

processor of appellant+s 9(hell+s: petroleum and chemical products.; 2)

CC0R3I#G<, the petition is dismissed and the decision of respondent Court of ppeals is here$

affirmed.

ipl 1st set cases

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