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Additional Cases

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EY Industrial Sales vs Shen Dar, G.R. No. 184850 : October 20, 2010.
http://sc.judiciary.gov.ph/jurisprudence/2010/october2010/184850.htm

E.Y. Industrial Sales Inc. and Engracio Yap vs. Shen Dar Electricity and Machinery Co.
G.R. No. 184850, October 20, 2010
FACTS:
EYIS is a domestic corporation engaged in the production, distribution and sale of air
compressors and other industrial tools and equipment. Petitioner Engracio Yap is the Chairman of
the Board of Directors of EYIS. Respondent Shen Dar, on the other hand, is a Taiwan-based
foreign corporation engaged in the manufacture of air compressors. Both companies claimed to
have the right to register the trademark “VESPA” for air compressors. From 1997 to 2004, EYIS
imported air compressors from Shen Dar through sales contracts. In the Sales Contract dated April
20, 2002, for example, Shen Dar would supply EYIS in one (1) year with 24 to 30 units of 40-ft.
containers worth of air compressors identified in the Packing/Weight Lists simply as SD-23, SD-
29, SD-31, SD-32, SD-39, SD-67 and SD-68. In the corresponding Bill of Ladings, the items were
described merely as air compressors. There is no documentary evidence to show that such air
compressors were marked “VESPA.”
On June 9, 1997, Shen Dar filed a Trademark Application with the IPO for the mark
“VESPA, Chinese Characters and Device” for use on air compressors and welding machines. On
July 28, 1999, EYIS filed a Trademark Application also for the mark “VESPA,” for use on air
compressors. On January 18, 2004, the IPO issued COR No. 4-1999-005393 in favor of EYIS.
Thereafter, on February 8, 2007, Shen Dar was also issued COR No. 4-1997-121492. In the
meantime, on June 21, 2004, Shen Dar filed a Petition for Cancellation of EYIS’ COR with the
BLA. In the Petition, Shen Dar primarily argued that the issuance of the COR in favor of EYIS
violated Section 123.1 paragraphs (d), (e) and (f) of Republic Act No. (RA) 8293, otherwise known
as the Intellectual Property Code (IP Code), having first filed an application for the mark. Shen
Dar further alleged that EYIS was a mere distributor of air compressors bearing the mark
“VESPA” which it imported from Shen Dar. Shen Dar also argued that it had prior and exclusive
right to the use and registration of the mark “VESPA” in the Philippines under the provisions of
the Paris Convention. The BLA and the IPO Director General denied Shen Dar’s petition.
However, the Court of Appeals reversed the decision and ruled in favor of herein respondent.
Hence, this appeal on Certiorari.
ISSUE:
Whether or not E.Y. Indiustrial Sales is the true owner of the mark “Vespa”
HELD:
YES. Under Section 123(d) of RA 8293, the registration of a mark is prevented with the
filing of an earlier application for registration. This must not, however, be interpreted to mean that
ownership should be based upon an earlier filing date. While RA 8293 removed the previous
requirement of proof of actual use prior to the filing of an application for registration of a mark,
proof of prior and continuous use is necessary to establish ownership of a mark. Such ownership
constitutes sufficient evidence to oppose the registration of a mark.
Sec. 134 of the IP Code provides that “any person who believes that he would be damaged
by the registration of a mark x x x” may file an opposition to the application. The term “any person”
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encompasses the true owner of the mark -- the prior and continuous user.

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Notably, the Court has ruled that the prior and continuous use of a mark may even
overcome the presumptive ownership of the registrant and be held as the owner of the mark. Here,
the incontrovertible truth, as established by the evidence submitted by the parties, is that Petitioner
E.Y. Industrial Sales is the prior user of the mark. On the other hand, Shen Dar failed to refute the
evidence cited by the BLA in its decision. More importantly, Shen Dar failed to present sufficient
evidence to prove its own prior use of the mark “VESPA.” As such, E.Y. Industrial Sales must be
considered as the prior and continuous user of the mark “VESPA” and its true owner. Hence, E.Y.
Industrial Sales is entitled to the registration of the mark in its name.

Dermaline, Inc. vs. Myra Pharmaceuticals, G.R. No. 190065 : August 16, 2010.
http://sc.judiciary.gov.ph/jurisprudence/2010/august2010/190065.htm
2 Dermaline, Inc. vs. Myra Pharmaceuticals, Inc.
FACTS
Petitioner Dermaline filed before the Intellectual Property Office (IPO) an application for
registration of the trademark “DERMALINE DERMALINE, INC.”Respondent Myra filed a
Verified Opposition alleging that the trademark sought to be registered by Dermaline so resembles
its trademark “DERMALIN” and will likely cause confusion, mistake and deception to the
purchasing public. It further alleged that Dermaline’s use and registration of its applied trademark
will diminish the distinctiveness and dilute the goodwill of Myra’s “DERMALIN,” which Myra
has been extensively commercially since October 31, 1977, and said mark is still valid and
subsisting.
Myra contends that despite Dermaline’s attempt to differentiate its applied mark, the
dominant feature is the term “DERMALINE,” which is practically identical with its own
“DERMALIN,” more particularly that the first eight (8) letters of the marks are identical, and that
notwithstanding the additional letter “E” by Dermaline, the pronunciation for both marks are
identical. Further, both marks have three (3) syllables each, with each syllable identical in sound
and appearance, even if the last syllable of “DERMALINE” consisted of four (4) letters while
“DERMALIN” consisted only of three (3). Myra asserted that the mark “DERMALINE
DERMALINE, INC.” is aurally similar to its own mark such that the registration and use of
Dermaline’s applied mark will enable it to obtain benefit from Myra’s reputation, goodwill and
advertising and will lead the public into believing that Dermaline is, in any way, connected to
Myra. Myra added that even if the subject application was under Classification 44 for various skin
treatments, it could still be connected to the “DERMALIN” mark under Classification 5 for
pharmaceutical products, since ultimately these goods are very closely related. The IPO Bureau of
Legal Affairs ruled in favor of respondent; said decision was sustained by the IPO Director General
and the Court of Appeals.
ISSUE
Whether or not petitioner’s use of“Dermaline Dermaline Inc”can result in confusion,
mistake or deception on the part of the purchasing public
RULING
Yes. A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and
distinguish them from those manufactured, sold, or dealt by others. As a registered trademark
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owner, Myra has the right under Section 147 of R.A. No. 8293 to prevent third parties from using
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a trademark, or similar signs or containers for goods or services, without its consent, identical or
similar to its registered trademark, where such use would result in a likelihood of confusion.

nazh//ela//1838

In determining likelihood of confusion, case law has developed two (2) tests, the
Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity
of the prevalent features of the competing trademarks that might cause confusion or deception. It
is applied when the trademark sought to be registered contains the main, essential and dominant
features of the earlier registered trademark, and confusion or deception is likely to result.
Duplication or imitation is not even required; neither is it necessary that the label of the applied
mark for registration should suggest an effort to imitate. The important issue is whether the use of
the marks involved would likely cause confusion or mistake in the mind of or deceive the ordinary
purchaser, or one who is accustomed to buy, and therefore to some extent familiar with, the goods
in question. Given greater consideration are the aural and visual impressions created by the marks
in the public mind, giving little weight to factors like prices, quality, sales outlets, and market
segments. The test of dominancy is now explicitly incorporated into law in Section 155.1 of R.A.
No. 8293 which provides—
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a
registered mark or the same container or a dominant feature thereof in connection with the sale,
offering for sale, distribution, advertising of any goods or services including other preparatory
steps necessary to carry out the sale of any goods or services on or in connection with which such
use is likely to cause confusion, or to cause mistake, or to deceive; (emphasis supplied)
On the other hand, the Holistic Test entails a consideration of the entirety of the marks as
applied to the products, including labels and packaging, in determining confusing similarity. The
scrutinizing eye of the observer must focus not only on the predominant words but also on the
other features appearing in both labels so that a conclusion may be drawn as to whether one is
confusingly similar to the other.
Relative to the question on confusion of marks and trade names, jurisprudence has noted
two (2) types of confusion, viz: (1) confusion of goods (product confusion), where the ordinarily
prudent purchaser would be induced to purchase one product in the belief that he was purchasing
the other; and (2) confusion of business (source or origin confusion), where, although the goods
of the parties are different, the product, the mark of which registration is applied for by one party,
is such as might reasonably be assumed to originate with the registrant of an earlier product, and
the public would then be deceived either into that belief or into the belief that there is some
connection between the two parties, though inexistent.
Both confusion of goods and service and confusion of business or of origin were apparent
in both trademarks. While there are no set rules that can be deduced as what constitutes a dominant
feature with respect to trademarks applied for registration; usually, what are taken into account are
signs, color, design, peculiar shape or name, or some special, easily remembered earmarks of the
brand that readily attracts and catches the attention of the ordinary consumer.
While it is true that the two marks are presented differently – Dermaline’s mark is written
with the first “DERMALINE” in script going diagonally upwards from left to right, with an upper
case “D” followed by the rest of the letters in lower case, and the portion “DERMALINE, INC.”
is written in upper case letters, below and smaller than the long-hand portion; while Myra’s mark
“DERMALIN” is written in an upright font, with a capital “D” and followed by lower case letters
– the likelihood of confusion is still apparent. This is because they are almost spelled in the same
way, except for Dermaline’s mark which ends with the letter “E,” and they are pronounced
practically in the same manner in three (3) syllables, with the ending letter “E” in Dermaline’s
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mark pronounced silently. Thus, when an ordinary purchaser, for example, hears an advertisement
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G.of Dermaline’s applied trademark over the radio. nazh//ela//1838 . videophones. but also to protect an already used and registered trademark and an established goodwill. Dermaline’s stance that its product belongs to a separate and different classification from Myra’s products with the registered trademark does not eradicate the possibility of mistake on the part of the purchasing public to associate the former with the latter. especially considering that both classifications pertain to treatments for the skin. when one applies for the registration of a trademark or label which is almost the same or that very closely resembles one already used and registered by another. cordless handsets. emphasis should be on the 4 Page similarity or relatedness of the goods and/or services involved and not on the arbitrary classification or general description of their properties or characteristics. AC-DC regulated power supply. 209843. but also because they are inherently similar for being electronic products and are plugged into electric sockets and perform a useful function. camcorders and other audio/video electronic equipment. VCD Amplifiers. considering the current proliferation of health and beauty products in the market. No. even without any opposition on the part of the owner and user of a previously registered label or trademark. teleprinters. Verily. facsimile machines. such that. Ltd vs Kolin Electronics Co. Kolin Electronics opposed the application on the ground that the trademark “KOLIN” is identical. Taiwan Kolin Corp.R. To confer exclusive use of a trademark. The Court is cognizant that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. Kolin Electronics argued that the products are not only closely-related because they fall under the same classification. cassette recorder. March 25. stereo booster. This is intended not only to avoid confusion on the part of the public. the purchasers would likely be misled that Myra has already expanded its business through Dermaline from merely carrying pharmaceutical topical applications for the skin to health and beauty services. converter. step-down transformer. Thus. the products are not related and the use of the trademark KOLIN on them would not likely cause confusion. the application should be rejected and dismissed outright. if not confusingly similar.. vacuum cleaners. the public may mistakenly think that Dermaline is connected to or associated with Myra. recharger. cellular phones and automatic goods vending machine. the registered trademark owner may use its mark on the same or similar products. Issue: W/N the products are closely-related Held: No. in different segments of the market.com/cralaw/2015marchdecisions. 2015. and PA amplified AC-DC.php?id=214 Taiwan Kolin vs Kolin Electronics Case Digest GR 209843 March 25 2015 Facts: Taiwan Kolin Corp sought to register the trademark “KOLIN” in Class 9 on the following combination of goods: television sets.chanrobles. and at different price levels depending on variations of the products for specific segments of the market. chances are he will associate it with Myra’s registered mark. flat iron. with its registered trademark “KOLIN” which covers the following products under Class 9 of the Nice Classification (NCL): automatic voltage regulator. Indeed. http://www.

Registration Rights conferred by registration (Sec. The distinct visual and aural differences between the two trademarks “KOLIN”.1. Second. 2017. February 1. .lawphil. Thus. The exclusive right of the owner of a well-known mark defined in Subsection 123. the goods covered by the competing marks between Taiwan Kolin and Kolin Electronics fall under different categories. the ordinarily intelligent buyer is not likely to be confused.R. Seri Soomboonsakdikul vs. ketsup or soap which are of minimal cost. shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided. That the interests of the owner of the registered mark are likely to be damaged by such use. 124) Section 124. Hence.2. Requirements of Application. (n) Application Procedure (Sec. That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further.1.147. S. 147. 147) Section 147. No. discriminating. and would prefer to mull over his purchase because the products involved are various kind of electronic products which are relatively luxury items and not considered affordable. http://www. Accordingly. In case of the use of an identical sign for identical goods or services. Taiwan Kolin’s goods are categorized as audio visual equipments. it is erroneous to assume that all electronic products are closely related and that the coverage of one electronic product necessarily precludes the registration of a similar mark over another.net/judjuris/juri2017/feb2017/gr_188996_2017. 188996. a likelihood of confusion shall be presumed. confusion is less likely. Orlane. Rights Conferred. G.1(e) which is registered in the Philippines.html i. while Kolin Electronics’ goods fall under devices for controlling the distribution and use of electricity. Page (b) The name and address of the applicant. The casual buyer is predisposed to be more cautious. are sufficient to distinguish between one brand or another. . although appear to be minimal. products classified under Class 9 can be further classified into five categories. They are not ordinarily consumable items such as soy sauce. The application for the registration of the mark shall be in Filipino or in English and shall contain the following: 5 (a) A request for registration. nazh//ela//1838 .124. First. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.A. 124 – 144) Requirements of Application (Sec.

(k) The names of the goods or services for which the registration is sought. if any. (i) One or more reproductions of the mark. whether they belong to one (1) class or to several classes of the Nice Classification. One (1) application may relate to several goods and/or services. 5. Otherwise. the law under which it is organized and existing. (e) The appointment of an agent or representative. (g) Where the applicant claims color as a distinctive feature of the mark.4. 124. (Sec. as prescribed by the Regulations within three (3) years from the filing date of the application. and (l) A signature by. and the name of a State in which the applicant has a real and effective industrial or commercial establishment. as prescribed in the Regulations. (c) The name of a State of which the applicant is a national or where he has domicile. 124. 166a) 6 Page nazh//ela//1838 . the applicant or his representative. a statement to that effect. 124. R. (h) Where the mark is a three-dimensional mark. together with the number of the class of the said Classification to which each group of goods or services belongs. an indication of: i) The name of the State with whose national office the earlier application was filed or if filed with an office other than a national office. (f) Where the applicant claims the priority of an earlier application. a statement to that effect as well as the name or names of the color or colors claimed and an indication. if the applicant is not domiciled in the Philippines. (j) A transliteration or translation of the mark or of some parts of the mark.2. the name of that office. or other self-identification of.3. the application number of the earlier application. ii) The date on which the earlier application was filed. If during the examination of the application. the Office finds factual basis to reasonably doubt the veracity of any indication or element in the application. in respect of each color. No. the application shall be refused or the mark shall be removed from the Register by the Director. as prescribed in the Regulations. grouped according to the classes of the Nice Classification. and iii) Where available.A. it may require the applicant to submit sufficient evidence to remove the doubt. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect. (d) Where the applicant is a juridical entity. of the principal parts of the mark which are in that color.

R. In like manner and subject to the same conditions and requirements. and has not served. shall be considered as filed as of the day the application was first filed in the foreign country. and who previously duly filed an application for registration of the same mark in one of those countries. 127. . 127. 131. 127.2. (b) The identity of the applicant.1.1(e) of this Act. (Sec.A certificate of registration of a mark shall be prima facie evidence of the validity of the registration. That.2. 138) Section 138. oppose its registration.2) Section 127.A. 131) Section 131. notwithstanding the foregoing. No. if any. 37. No registration of a mark in the Philippines by a person described in this section shall be granted until such mark has been registered in the country of origin of the applicant. That any foreign application filed prior to such subsequent application has been withdrawn. Requirements. No.127. 131. and of the registrant's exclusive right to use the same in connection with the goods or services and those that 7 are related thereto specified in the certificate. the registrant's ownership of the mark. may.131. abandoned. or otherwise disposed of. (d) A reproduction of the mark whose registration is sought. or petition the cancellation of its registration or sue for unfair competition. the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country: Provided.1. 166a) Certificate of Registration (Sec. (c) Indications sufficient to contact the applicant or his representative.4. . . 165) Page nazh//ela//1838 . without prejudice to availing himself of other remedies provided for under the law. nor thereafter shall serve. Filing Date.A. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided. . 20. No filing date shall be accorded until the required fee is paid. that is not registered in the Philippines. as a basis for claiming a right of priority. the owner of a well-known mark as defined in Section 123. (Sec. Certificates of Registration. Priority Right. An application for registration of a mark filed in the Philippines by a person referred to in Section 3. against an identical or confusingly similar mark. R.The filing date of an application shall be the date on which the Office received the following indications and elements in English or Filipino: (a) An express or implicit indication that the registration of a mark is sought. 131. and (e) The list of the goods or services for which the registration is sought. (n) Priority Right (Sec.Filing date (Sec.3. without having been laid open to public inspection and without leaving any rights outstanding.

the evidence presented by petitioner consisted of its certificates of registration for the mark CANON in various countries covering goods belonging to class 2. In re Treaty of Paris: the then Minister of Trade and Industry Ongpin issued guidelines in the implementation of Article 6 of the Treaty of Paris. The conditions are: a) the mark must be internationally known. CA. No. toner. and dyestuff of petitioner and the sandals of private respondent. 2000. chemical products. toner. and d) the person claiming must be the owner of the mark Petitioner failed to comply with the third requirement of the said memorandum that is the mark must be for use in the same or similar kinds of goods. The Supreme Court says that ordinarily.R. 8 Page nazh//ela//1838 .R. and dyestuff of petitioner and the sandals of private respondent. and dye stuff. 1992.judiciary. when a trademark is used by a party for a product in which the other party does not deal. dyestuff). toner. Clearly. 120900. http://sc. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals that eventually affirmed the decision of the BPTTT. Clearly. G. there is a world of difference between the paints. toner.Case: Canon Kabushiki Kaisha v. July 20. July 20. Canon Kabushiki Kaisha filed a Verified Notice of Opposition alleging that it will be damaged by the registration of the trademark CANON in the name of private respondent since they were using the same trademark for their footwear line of products. The BPTTT.htm CANON KABUSHIKI KAISHA vs. No. the use of the same trademark on the latter's product cannot be validly objected to. 120900. chemical products. there is a world of difference between the paints. COURT OF APPEALS G.ph/jurisprudence/2000/july2000/120900. paints. 1985. 39398. ISSUE: Is the use of trademark. However.gov. Petitioner also submitted in evidence its Philippine Trademark Registration No. 2000 FACTS: On January 15. issued its decision dismissing the opposition of petitioner and giving due course to NSR's application for the registration of the trademark CANON. private respondent NSR Rubber Corporation filed an application for registration of the mark CANON for sandals in the Bureau of Patents. Trademarks. chemical products. chemical products. c ) the mark must be for use in the same or similar kinds of goods. The BPTTT correctly ruled that since the certificate of registration of petitioner for the trademark CANON covers class 2 (paints. and Technology Transfer (BPTTT). on November 10. private respondent can use the trademark CANON for its goods classified as class 25 (sandals). showing its ownership over the trademark CANON. the ownership of a trademark or tradename is a property right that the owner is entitled to protect as mandated by the Trademark Law. The private respondent will also use the name Canon for its footwear products. not a patent or copyright or anything else. CANON. b) the subject of the right must be a trademark. by the private respondent affects the business of Canon Kabushiki Kaisha who has an existing ownership of a trademark also known as CANON? HELD: No. Based on the records.

talcum powder and 9 toilet soap. Facts Private respondent Co Beng Kay (CBK) filed with the Director of Patents an application to register the trademark “BRUTE” for the briefs manufactured and sold by his Corporation in the domestic market. following the sentiment expressed by Justice JBL Reyes in Sta. http://www. Ana v.html Faberge . G. Upon CBK’s MR however.Faberge Inc. insisting that there can be unfair competition even if the goods are noncompeting. The Intermediate Appellate Court and Co Beng Kay 04 November 1992. 71189. II. Petitioner Faberge opposed this application on the ground of the similarity of the said trademark with Faberge’s own symbol “BRUT. Faberge is now before the SC to contest the above ruling. The Director of Patents granted CBK’s application. No.R. Maliwat.” which it previously registered for after shave lotion. the CA reversed its earlier ruling. an item which is not listed in its certificate of registration. Page In as much as Faberge has not ventured in the production of briefs. and that even if the products sold under these marks are different. Melo.lawphil. It also adds that it has a pending application of the trademark “BRUT 33 DEVICE” for briefs as proof that it intended to expand its mark "BRUT" to other goods and thus. shaving cream. Decision of the CA is affirmed. I. IV. likewise sold in the domestic market. Ratio A review of the relevant provision of the Civil Code and RA 166. deodorant. especially in view of the alleged repeal of RA 166 by RA 666. even if the products falling under the two are unrelated and non-competing – NO. it cannot and should not be allowed to feign that CBK had nazh//ela//1838 . 1992. which deleted the phrase in the former law that the merchandise must be substantially of the same descriptive properties.” In effect. etc. it is entitled to relief that is available where the junior user's goods are not remote from any product that the senior user would be likely to make or sell. holding that the controlling ruling is to the effect that the identical trademark can be used by different manufacturers for products that are non-competing and unrelated. Thus.) in one section denominated as “Men’s Accessories. III. Holding Petition denied. Issues WON an earlier registration of a trademark can prevent a later registration of a similarly- sounding trademark. especially since modern department stores usually place CBK’s products (briefs) and Faberge’s products (after shave lotion. deodorant.net/judjuris/juri1992/nov1992/gr_71189_1992. The CA initially reversed this decision. J. shaving cream. Incorporated v. this would supposedly allow CBK to unjustly benefit from the goodwill and reputation that Faberge has already established for its “BRUT” products. it is still reasonable to believe that the similarity would cause confusion and even mistake and deception in the buying public as to the origin of the goods bearing such trademarks. holding that the marks “BRUT” and “BRUTE” were indeed quite similar. and toilet soap. talcum powder. as amended would yield the conclusion that CBK may be permitted to register the trademark “BRUTE” for briefs produced by it notwithstanding Faberge’s vehement protestations of unfair dealings in marketing its own set of items which are limited to: after-shave lotion. v IAC. November 4.

if the certificate of registration were to be deemed as including goods not specified therein. therefore. The certificate of registration issued by the Director of Patents can confer upon Faberge the exclusive right to use its own symbol only to those goods specified in the certificate. 20 be reconciled? The rule has been laid down that the clause which comes later shall be given paramount significance over an anterior proviso upon the presumption that it expresses the latest and dominant purpose. a purchaser who is out in the market for the purpose of buying CBK’s BRUTE brief would definitely be not mistaken or misled into buying Faberge’s BRUT after shave lotion or deodorant. however the remedy is legislative and not judicial. or advertising of any goods. We believe that such omnibus registration is not contemplated by our Trademark Law. as amended does not require that the articles of manufacture of the previous user and late user of the mark should possess the same descriptive properties or should fall into the same categories as to bar the latter from registering his mark in the principal register. and in any case. Farbenfabriken: “Really. it is equally true that under Sec. It ineluctably follows that Sec. WRT argument raised by Faberge as regards its alleged business expansion. copy or colorable imitation of any registered mark or trade name in connection with the sale. offering for sale. then a situation may arise whereby an applicant may be tempted to register a trademark on any and all goods which his mind may conceive even if he had never intended to use the trademark for the said goods. it is indeed true that Sec. 20 is controlling and.” Whatever deleterious effects may arise from the above interpretation of Sec. 4(d) and Sec. which is defined as the use without consent of the trademark owner of any reproduction. or identity of such business. counterfeit. 10 Page nazh//ela//1838 . Ana vs. 20 in relation to Sec. CBK can appropriate its symbol for the briefs it manufactures because as aptly remarked by Justice Sanchez in Sterling Products v.invaded its exclusive domain. Maliwat to the effect that dissimilarity of goods will not preclude relief if the junior user's goods are not remote from any other product which the first user would be likely to make or sell. business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services. The glaring discrepancies between the products of CBK. had been amply portrayed to such an extent that indeed. Yet. on the one hand. and of Faberge. Even its alleged application for registration of “BRUT” to other products such as briefs was not annexed to its brief. How should this apparent conflict between Sec. 20 of the same law. on the other. 4(d) of RA 166 is not entirely irreversible. Neither can CBK be deemed to have committed infringement. 4(d) of RA 166. such application does not suffice and may not vest an exclusive right in its favor that can ordinarily be protected by the Trademark Law. subject to any conditions and limitations stated therein. which invokes the wisdom imparted by Justice JBL Reyes in Sta. the protective mantle of the Trademark Law extends only to the goods used by the first user as specified in the certificate of registration.

No. as prescribed by the Regulations. Such request shall be in Filipino or English and may be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed. That the registrant shall file a declaration of actual use and evidence to that effect. or it may be made within six (6) months after such expiration on payment of the additional fee herein prescribed.2.3. or shall show valid reasons based on the existence of obstacles to such use. grouped according to the classes of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the said Classification. 146.A certificate of registration shall remain in force for ten (10) years: Provided. (b) The name and address of the registrant or his successor-in-interest. and (g) A signature by the right holder or his representative. Such request shall be in Filipino or English and may be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed. If the Office refuses to renew the registration. R. (c) The registration number of the registration concerned. Renewal (Sec. (Sec. (d) The filing date of the application which resulted in the registration concerned to be renewed.4.2) Section 145. (f) The names of the recorded goods or services for which the renewal is requested or the names of the recorded goods or services for which the renewal is not requested. or it may be made within six (6) months after such expiration on payment of the additional fee herein prescribed. (e) Where the right holder has a representative.2.A. . it shall notify the registrant of his refusal and the reasons therefor. 166a) Page nazh//ela//1838 . 145. 166a) 146. Duration. The request shall contain the following indications: (a) An indication that renewal is sought. hereafter referred to as the "right holder". A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request.146. (Sec. within one (1) year from the fifth anniversary of the date of the registration of the mark.Duration (Sec.1. 15. 146. 146) Section 146. the name and address of that representative. the mark shall be removed from the Register by the Office. No. Renewal. Otherwise. 146.A. 12. R. . 146. An applicant for renewal not domiciled in the Philippines shall be subject to and comply with 11 the requirements of this Act.

be provisionally recorded. 150) Section 150. pseudonyms. (Sec. . License Contracts. Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used. shall be in the name of the assignee or transferee. Assignments and transfers of registrations of marks shall be recorded at the Office on payment of the prescribed fee.149. destination. (n) Assignment and Transfer of Registration (Sec. .2. The assignment of the application for registration of a mark. R. (n) 12 Page nazh//ela//1838 . of their goods or services: Provided.4.2. or suitability for their purpose. manufacturing process. or exact indications concerning the kind. the license contract shall not be valid.1. . source. If the license contract does not provide for such quality control. 150. addresses. or time of production or of supply.Use of Indications by Third Parties for Other Purposes (Sec. 166a) License Contracts (Sec. No. on payment of the same fee. when registered. 149. Such assignment or transfer shall. 149. however. assignment and transfers of applications for registration shall.148) Section 148. may be assigned or transferred with or without the transfer of the business using the mark. 149. characteristics. or its registration.A. (n) 149. be null and void if it is liable to mislead the public. A license contract shall be submitted to the Office which shall keep its contents confidential but shall record it and publish a reference thereto.Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names. shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. An application for registration of a mark. shall be in writing and require the signatures of the contracting parties. That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services.1. 31. place of origin. of the goods or services to which the mark is applied. a geographical name. Transfers by mergers or other forms of succession may be made by any document supporting such transfer. The Regulations shall fix the procedure for the recording of the license contract.150. particularly as regards the nature. or of its registration. quality. or an application therefor.5. Assignment and Transfer of Application and Registration. 149) Section 149. or if such quality control is not effectively carried out. A license contract shall have no effect against third parties until such recording is effected. Any license contract concerning the registration of a mark. Assignments and transfers shall have no effect against third parties until they are recorded at the Office. and the mark. quantity.3. value.

jogging nazh//ela//1838 . BUREAU OF PATENTS.151. No. HON. (b) At any time.: Facts: 13 Private respondent H. . Inc. J. or a portion thereof. December 29. blouses. 100098. or its registration was obtained fraudulently or contrary to the provisions of this Act.Cancellation (Sec. 100098. TRADEMARKS AND TECHNOLOGY TRANSFER AND H. Lee Co..D. 1995. No. R. or if the registered mark is being used by.A. G. the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided. (Sec. filed with the Bureau of Patents. a petition to cancel the registration for only those goods or services may be filed. LEE" used on skirts. the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.D. 166a) Case: Emerald Garment Mfg. vs CA. the court or the administrative agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise exercise jurisdiction to determine whether the registration of said mark may be cancelled in accordance with this Act. briefs. or with the permission of. jeans. 151.2. (n) (c) At any time.1. if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines. KAPUNAN. Trademarks & Technology Transfer (BPTTT) a petition for cancellation of registration Page (Supplemental Register)and notice of opposition to petitioner's application for registration for the trademark "STYLISTIC MR. On the other hand.. The filing of a suit to enforce the registered mark with the proper court or agency shall exclude any other court or agency from assuming jurisdiction over a subsequently filed petition to cancel the same mark.lawphil. No. for which it is registered. 17. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used. if the registered mark becomes the generic name for the goods or services. socks. or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer. December 29. COURT OF APPEALS. or has been abandoned. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark under this Act as follows: (a) Within five (5) years from the date of the registration of the mark under this Act. Notwithstanding the foregoing provisions. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. Corp. 151) Section 151. a foreign corporation.html EMERALD GARMENT MANUFACTURING CORPORATION vs. LEE G. Cancellation. jackets.net/judjuris/juri1995/dec1995/gr_100098_1995.R. http://www.R. 1995.

VIII of the Paris Convention for the Protection of Industrial Property. Infringement. special arrangement. copy or colorably imitable any such mark or trade-name and apply such reproduction. copy or colorable imitation of any registered mark or trade-name in connection with the sale.A. meaning. — Any person who shall use. Negative for lack of adequate proof of actual use of its trademark in the Philippines prior to Emeralds use of its own mark and for failure to establish confusing similarity between said trademarks. and to cause him to purchase the one supposing it to be the other. nazh//ela//1838 . prints. counterfeit. what constitutes. 166 (Trademark Law) states thus: Sec. Nor does it require that all the details be literally copied. counterfeit. or colorable imitation to labels. No." Colorable imitation does not mean such similitude as amounts to identity. or identity of such business. 37 of R. wrappers. petitioner contended that its trademark was entirely and unmistakably different from that of private respondent and that its certificate of registration was legally and validly granted. shirts and lingerie under Class 25. business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services. averred that petitioner's trademark "so closely resembled its own trademark. counterfeit. 22. mistake and deception on the part of the purchasing public as to the origin of the goods. The essential element of infringement is colorable imitation. Hence. This term has been defined as "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers. words. 166 (Trademark Law) and Art. shall be liable to a civil action by the registrant for any or all of the remedies herein provided. signs. 'LEE' as previously registered and used in the Philippines. shorts. as to be likely. or reproduce. No. sound. or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives. offering for sale. substantive and distinctive parts as would likely mislead or confuse persons in the Page ordinary course of purchasing the genuine article. to cause confusion. Private respondent. and not abandoned. HD Lee Co’s action for infringement must necessarily fail. receptacles or advertisements intended to be used upon or in connection with such goods. Colorable imitation refers to such similarity in form. Issue: Does petitioner's trademark "STYLISTIC MR. packages. when applied to or used in connection with petitioner's goods. the Director of Patents declared that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. or advertising of any goods." On the other hand. It is undeniably the dominant feature of the mark. Court of Appeals affirmed the decision of the Director of Patents. content.suits. Using the test of dominancy. in the name of petitioner Emerald Garment Manufacturing Corporation. business or services. dresses. The Director of Patents rendered a decision granting private respondent's petition for cancellation and opposition to registration. invoking Sec. LEE" tend to mislead and confuse the public and thus constitutes an infringement of respondent’s trademark "LEE or LEE RIDERS. LEE- LEENS and LEE-SURES?" Held: No. or general appearance of the trademark or 14 tradename with that of the other mark or tradename in their over-all presentation or in their essential. any reproduction. without the consent of the registrant. petition for review on certiorari was sought.A. The pertinent provision of R. copy.

infringement takes place. He does not ask the sales clerk for generic jeans but for. more or less knowledgeable and familiar with his preference and will not easily be distracted. nazh//ela//1838 . therefore. the trademark should be considered as a whole and not piecemeal. Guess. 191 F. say. In determining whether the trademarks are confusingly similar. Second. therefore. v. 2d 588. As its title implies. Private respondent cannot. Wrangler or even an Armani. . soysauce or soap which are of minimal cost. acquire exclusive Page ownership over and singular use of said term. Pflugh (CC) 180 Fed. The dissimilarities between the two marks become conspicuous. noticeable and substantial enough to matter especially in the light of the following variables that must be factored in. jurisprudence has developed two kinds of tests — the Dominancy Test applied in Asia Brewery. Accordingly. Confusion and deception. The trademarks in their entirety as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. Maong pants or jeans are not inexpensive.. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers. the products involved in the case at bar are. . the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. Honover Rubber Co. Court of Appeals and other cases and the Holistic Test developed in Del Monte Corporation v. v. Applying the foregoing tenets to the present controversy and taking into account the factual circumstances of this case. more credit should be given to the "ordinary purchaser. LEE. we considered the trademarks involved as a whole and rule that petitioner's "STYLISTIC MR. 107 F. in line with the foregoing discussions.. the average Filipino consumer generally buys his jeans by brand. the test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement. a Levis. the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. then.. nor it is necessary that the infringing label should suggest an effort to imitate. and confusion and deception is likely to result. [C. LEE" is not confusingly similar to private respondent's "LEE" trademark. is less likely. Neilman Brewing Co. in the main. In determining whether colorable imitation exists. vs. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other. 579]. (Auburn Rubber Corporation vs. Inc. First." Although on its label the word "LEE" is prominent." Cast in this particular controversy. . .. the ordinary purchaser is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product 15 involved. 495. Petitioner's trademark is the whole "STYLISTIC MR.) On the other side of the spectrum. Independent Brewing Co. citing Eagle White Lead Co. . "LEE" is primarily a surname. Duplication or imitation is not necessary. 489. . various kinds of jeans. a comparison of the words is not the only determinant factor. Court of Appeals and its proponent cases. These are not your ordinary household items like catsup. Finally. He is. like his beer. If the competing trademark contains the main or essential or dominant features of another.

of considerable sales since its first use. Inc.1. . continuous adoption of the trademark which should consist among others. "Samples" are not for sale and therefore.D. shall not be ground for cancellation or removal of the mark and shall Page not diminish the protection granted to the mark. Effect of Non-use (Sec. Edward Poste.A. Similarly. a wholly owned subsidiary of the H.. as we have previously discussed are not sufficient. It is well to note that these expenses were incurred only in 1981 and 1982 by LEE (Phils. U.S. it did not present proof to invest it with exclusive. LEE" trademark since 1975 as evidenced by appropriate sales invoices to various stores and retailers. The invoices submitted by respondent which were dated way back in 1957 show that the zippers sent to the Philippines were to be used as "samples" and "of no commercial value.). . fraud.. herein private respondent. Co.152. which does not alter its distinctive character. the fact of exporting them to the Philippines cannot be considered to be equivalent to the "use" contemplated by law. Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner.S. nazh//ela//1838 . definite and free from inconsistencies. After a meticulous study of the records. It has been held that a personal name or surname may not be monopolized as a trademark or tradename as against others of the same name or surname. General Manager of Lee (Phils. after it entered into a licensing agreement with private respondent on 11 May 1981. There is no dispute that respondent corporation was the first registrant. The Trademark Law is very clear. we observe that the Director of Patents and the Court of Appeals relied mainly on the registration certificates as proof of use by private respondent of the trademark "LEE" which. Military Bases in the Philippines based as it was solely on the self-serving statements of Mr. we give little weight to the numerous vouchers representing various advertising expenses in the Philippines for "LEE" products. "Wellington" is a surname. and its first user has no cause of action against the junior user of "Wellington" as it is incapable of exclusive appropriation. . any man may use his name or surname in all legitimate ways. For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner's use of its own mark and for failure to establish confusing similarity between said trademarks. 152) Section 152. The sales invoices provide the best proof that there were actual sales of petitioner's product in the country and that there was actual use for a protracted period of petitioner's trademark or part thereof through these sales. private respondent's action for infringement must necessarily fail. Lack of funds shall not excuse non-use of a mark. 16 152. For in the absence of contract." There were no receipts to establish sale. On the other hand. Respondent did not expect income from such "samples." The evidence for respondent must be clear. Inc. It requires actual commercial use of the mark prior to its registration. petitioner has sufficiently shown that it has been in the business of selling jeans and other garments adopting its "STYLISTIC MR. or estoppel. Non-use of a Mark When Excused.2.. and no proof were presented to show that they were subsequently sold in the Philippines. The use of the mark in a form different from the form in which it is registered.. . Thus.). We cannot give credence to private respondent's claim that its "LEE" mark first reached the Philippines in the 1960's through local sales by the Post Exchanges of the U. Lee. Inc. yet it failed to fully substantiate its claim that it used in trade or business in the Philippines the subject mark.

A. R. and Damages and Injunction for Infringement. (Sec. That such mark is not used in such manner as to deceive the public. counterfeit. In cases where actual intent to mislead the public or to defraud the complainant is shown. 166) 17 156. 166a) 156.Any person who shall. or the profit which the defendant actually made out of the infringement. such use shall inure to the benefit of the registrant or applicant. or in the event such measure of damages cannot be readily ascertained with reasonable certainty. first par. 23. The owner of a registered mark may recover damages from any person who infringes his rights. and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made..A.. or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale. the damages may be doubled. copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction. Remedies. No.3. first par. Reproduce. offering for sale. distribution.3. 23. without the consent of the owner of the registered mark: 155. or to cause mistake. That the infringement takes place at the moment any of the acts stated in Subsection 155. The use of a mark by a company related with the registrant or applicant shall inure to the latter's benefit. The complainant.A. counterfeit. (Sec. (Sec. copy or colorable imitation to labels. wrappers.4. or to cause mistake. may also be granted injunction. then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party. (n) 156.152. Infringement. prints. or 155.1. and such use shall not affect the validity of such mark or of its registration: Provided.2. Use in commerce any reproduction. or advertising of goods or services on or in connection with which such use is likely to cause confusion. in the discretion of the court. packages.A. advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion. second Page par. copy. counterfeit. R. (Sec.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material. R. 152. No 166a) Section 156. receptacles or advertisements intended to be used in commerce upon or in connection with the sale. shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided. On application of the complainant. No.1. sales invoices and other documents evidencing sales. R. 166a) nazh//ela//1838 . If use of a mark by a person is controlled by the registrant or applicant with respect to the nature and quality of the goods or services. offering for sale. (n) Remedies (Sec. 23.156.4. upon proper showing. . distribution. No.. had the defendant not infringed his rights. the court may impound during the pendency of the action. signs. Actions. 155 – 158) Section 155. or to deceive. or to deceive.2. 22. . The use of a mark in connection with one or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other goods or services of the same class.

The limitations of this subparagraph shall apply only to innocent infringers: Provided. 166a) Section 158. No. . shall be delivered up and destroyed. without compensation of any sort.2. . 159) Section 159.1. Damages. or destroyed. Requirement of Notice. the remedies of the owner of the right infringed as against the publisher or distributor of such newspaper. signs. Notwithstanding the provisions of Section 155 hereof.Notwithstanding any other provision of this Act.Section 157. the simple removal of the trademark affixed shall not be sufficient other than in exceptional cases which shall be determined by the Regulations. all plates. the remedies given to the owner of a right infringed under this Act shall be limited as follows: 159. 157. magazine. or to deceive. 24. magazines. (Sec.In any suit for infringement. . or other similar periodical or in an electronic communication. bearing the registered mark or trade name or any reproduction.A. and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter. prints. R.1 In any action arising under this Act. a registered mark shall have no effect against any person who. magazine. before the filing date or the priority date. packages. matrices and other means of making the same. 159. wrappers. R. or other similar periodicals or in future transmissions of such electronic communications.A.3. the owner of the registered mark shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to cause confusion. No. receptacles and advertisements in the possession of the defendant. molds. the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing. or to cause mistake. (n) nazh//ela//1838 . magazine. disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder. Limitations to Actions for Infringement. 166a) Limitations (Sec. (Sec. Such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words '"Registered Mark" or the letter R within a circle or if the defendant had otherwise actual notice of the registration. in good faith. counterfeit. That such injunctive relief shall not be available to the owner of the right infringed with respect to an issue of a newspaper. or other similar periodical or an electronic communication containing infringing matter where restraining the dissemination of such infringing matter in any particular issue of such 18 periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication is customarily conducted in accordance with the sound business Page practice.157. 159.2. the court may order that goods found to be infringing be. and all labels. 21. was using the mark for the purposes of his business or enterprise: Provided. That his right may only be transferred or assigned together with his enterprise or business or with that part of his enterprise or business in which the mark is used. Where the infringement complained of is contained in or is part of paid advertisement in a newspaper. Where an infringer who is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer. to permit the release of the goods into the channels of commerce. In regard to counterfeit goods. copy or colorable imitation thereof. in which a violation of any right of the owner of the registered mark is established. Power of Court to Order Infringing Material Destroyed. or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers.

html SKECHERS. March 23.Case: Skechers. Subsequently. USA contend that respondents are guilty of trademark infringement of their registered trademark “S” (within an oval design). Respondents moved to quash the warrants arguing that there was no confusing similarity between petitioner’s "Skechers" rubber shoes and its "Strong" rubber shoes. but also on the other features appearing on both labels so that the observer may draw conclusion on whether one is confusingly similar to the other. neither is it required that the mark sought to be registered suggests an effort to imitate. And that it committed grave abuse of discretion in finding that respondents are not guilty of trademark infringement in the case where the sole triable issue is the existence of probable cause to issue a search warrant. Issue: whether or not respondent is guilty of trademark infringement. 2011. petitioner filed the present petition with the SC assailing that the CA committed grave abuse of discretion when it considered matters of defense in a criminal trial for trademark infringement in passing upon the validity of the search warrant when it should have limited itself to a determination of whether the trial court committed grave abuse of discretion in quashing the warrants. mistake. quality. including the labels and packaging. In determining similarity and likelihood of confusion. Duplication or imitation is not necessary. vs. No. USA Inc. RTC granted the motion and quashed the search warrants. (2) the Holistic or Totality Test which necessitates a consideration of the entirety of the marks as applied to the products. in relation to Section 170 of Republic Act No. 8293 is that the infringing mark is likely to cause confusion. Thus.. INTER PACIFIC INDUSTRIAL TRADING CORP. two tests have been developed: (1)the Dominancy Test which focuses on the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion. Ruling: Yes.. vs. The essential element of infringement under R. petitioner has registered the trademark "SKECHERS" and the trademark "S" (within an oval design) with the IPO. Two search warrants were issued and more than 6.A. Petitioner filed a petition for certiorari with the CA which affirmed the decision of the RTC. Given more consideration are the aural and visual impressions created by the marks on the buyers of goods. Both petitioner and petitioner-intervenor filed separate motions for reconsideration. INC. G. 8293. in determining confusing similarity. sales outlets. No.A. The discerning eye of the observer 19 must focus not only on the predominant words.R. http://www. 164321. IP Code of the Philippines.lawphil. Petitioner’s claim: Skechers.000 pairs of shoes bearing the “S” logo were seized. U. giving little weight to factors like prices. and deception in the mind of the purchasing public. In the course of its business. Respondents’ claim: they argued that there was no confusing similarity between petitioner’s "Skechers" rubber shoes and its "Strong" rubber shoes Facts: Petitioner filed an application for the issuance of search warrants against an outlet and warehouse operated by respondents for infringement of trademark under Section 155. Inter Pacific et al. petitioner-intervenor filed a Petition-in-Intervention with the Court claiming to be the sole licensed distributor of Skechers products here in the Philippines.S. but the same was dismissed.net/judjuris/juri2011/mar2011/gr_164321_2011. Page nazh//ela//1838 . and market segments.

and (2) confusion of business (source or origin confusion). Dy. to this Court’s mind. already constitutes infringement under the Dominancy Test. Nan is the prevalent feature of Nestle's line of infant powdered milk products.ph/jurisprudence/2010/august2010/172276. the case was transferred to RTC Cebu. When Dy did not act on the request. a special court designated for intellectual property rights' cases. The most successful form of copying is to employ enough points of similarity to confuse the public.judiciary. It was dismissed later on. Societe des Prodults vs Martin T. and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties. with enough points of difference to confuse the courts. the mere fact that it used the same stylized "S". Petitioner owns "NAN" trademark for its infant powered milk products. the dominant feature of the trademark is the stylized "S. where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. the aural effect is Page confusingly similar. The first 3 20 letters of Nanny is the same as the letters of Nan. A letter of request was sent to Dy ordering him to restrain from using Nanny as this infringes Nan trademark. There are two types of confusion: (1) confusion of goods (product confusion). Petitioner distributed and sells Nan milk products in the Philippines. When both are pronounced. While respondent’s shoes contain some dissimilarities with petitioner’s shoes. 172276. Dy Gr no. While it is undisputed that petitioner’s stylized "S" is within an oval design. Martin T. but also to safeguard the public as consumers against confusion on these goods. is such as might reasonably be assumed to originate with the registrant of an earlier product. The protection of trademarks as intellectual property is intended not only to preserve the goodwill and reputation of the business established on the goods bearing the mark through actual use over a period of time. though inexistent. the mark of which registration is applied for by one party. this Court cannot close its eye to the fact that for all intents and purpose. even if respondent did not use an oval design. August 8. the court remanded the case to the lower court for further proceedings. 2010. The court applied the dominancy test when it found out that Nanny is confusingly similar to Nan. Nan and Nanny have the same classification. descriptive nazh//ela//1838 . where.htm Societe Des Produits vs. respondent had deliberately attempted to copy petitioner’s mark and overall design and features of the shoes. Let it be remembered. On appeal. Issue: WON there was trademark infringement Held: Yes. http://sc. In the case at bar. No. G. Thus. a complaint for trademark infringement was filed before RTC Dumaguete. the same being the dominant feature of petitioner’s trademark. Subsequently. the product. Respondent owns 5M Enterprises that imports Sunny Boy milk from Australia and repacks them into 3 sizes of plastic bags carrying the name "Nanny". 2010 Facts: Petitioner is a foreign corporation organized under Switzerland laws. Furthermore. although the goods of the parties are different. 172276 August 8. that defendants in cases of infringement do not normally copy but only make colorable changes. the Court applied the Dominancy Test and found that the use of the stylized "S" by respondent in its Strong rubber shoes infringes on the mark already registered by petitioner with the IPO." as it is precisely the stylized "S" which catches the eye of the purchaser.gov.R.

1988.R. despite the institution of an Inter Partes case for cancellation of a mark with the BPTTT (now the Bureau of Legal Affairs. The Shangri-La Group alleged that it is the legal and beneficial owners of the subject mark and logo.judiciary. much earlier than the alleged first use thereof by the Developers Group in 1982. http://sc. 1992. Actions. Damages and Injunction for Infringement. Sec. Held: Section 151. Finally.. 111580. Trademarks and Technology Transfer (BPTTT) a petition praying for the cancellation of the registration of the "Shangri-La" mark and "S" device/logo issued to the Developers Group of Companies. They are also displayed in the milk section.properties and physical attributes. as follows – Section 151. the trademark owner is not only protected by law in guarding his goods or business from actual market competition with identical or similar products of the parties but also extends to all cases as it would likely confuse the public into thinking that the complaining party has extended his business into the field or is in any way connected with the activities of the infringer. the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a Page nazh//ela//1838 . the Developers Group instituted with the RTC of Quezon City a complaint for infringement and damages with prayer for injunction. vs. the court or the administrative agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise exercise jurisdiction to determine whether the registration of said mark may be cancelled in accordance with this Act. Both are classified under Class 6. provides. the Shangri-La Group moved for the suspension of the proceedings in the infringement case on account of the pendency of the administrative proceedings before the BPTTT. Almost 3 years later. the Shangri-La International Hotel Management filed with the Bureau of Patents. Intellectual Property Office) by one party. The filing of a suit to enforce the registered mark with the proper court or agency shall exclude any other court or agency from assuming 21 jurisdiction over a subsequently filed petition to cancel the same mark. June 21. 2001 Facts: On June 21.2 of Republic Act No. 3529. that it has been using the said mark and logo for its corporate affairs and business since March 1962 and caused the same to be specially designed for their international hotels in 1975. 1992. 156 to 158.ph/jurisprudence/2001/jun2001/111580. CA G.htm Shangri-La International Hotel Management v. It also filed with the BPTTT its own application for registration of the subject mark and logo. Notwithstanding the foregoing provisions. Court of Appeals.2. on the ground that the same was illegally and fraudulently obtained and appropriated for the latter's restaurant business.gov. Issue: Whether. On January 8. Inc. et al. The Developers Group filed an opposition to the application. 1991. both are milk products.. No. On the other hand. or on April 15. et al. the adverse party can file a subsequent action for infringement with the regular courts of justice in connection with the same registered mark. otherwise known as the Intellectual Property Code. which was docketed as Inter Partes Case No. This was denied by the trial court in a Resolution issued on January 16. 8293. 170) Case: Shangri-La International Hotel Management LTD. and both are powdered in form.

praying that the latter cease and desist from using the brand PCO-GENOLS for being confusingly similar with respondent’s trademark PYCNOGENOL. provides to wit – Section 7. 31904. Respondent discovered that petitioner Prosource International was also distributing a similar food supplement using the mark PCO- GENOLS since 1996 and was only discontinued in 2000. G. The law and the rules are explicit. v. Developers Group's Certificate of Registration in the principal register continues as "prima facie evidence of the validity of the registration. 180073. Page Held: nazh//ela//1838 . (Emphasis provided) Similarly. . vs. As such. Respondent filed a complaint for Infringement of Trademark against petitioner. the earlier filing of petition to cancel the mark with the Bureau shall not constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided. No.R.gov. Horphag Research Management SA. 2009. 180073. the registrant's ownership of the mark or trade-name. November 25. Issue:Whether or not petitioners are liable for infringement of trademark. Trademark Dilution Case: Prosource International.. (Emphasis provided) Hence.prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided. as applied in the case at bar. remains valid and subsisting for as long as it has not been cancelled by the Bureau or by an infringement court. business or services specified in the certificate. the earlier institution of an Inter Partes case by the Shangri-La Group for the cancellation of the "Shangri-La" mark and "S" device/logo with the BPTTT cannot effectively bar the subsequent filing of an infringement case by registrant Developers Group. Effect of filing of a suit before the Bureau or with the proper court. http://sc. Developers Group may thus file a corresponding infringement suit and recover damages from any person who infringes upon the former's rights.ph/jurisprudence/2009/november2009/180073. Petitioner contended that the two marks were not confusingly similar and denied 22 liability." Since the certificate still subsists.htm PROSOURCE INTERNATIONAL. Inc. On the other hand. HORPHAG RESEARCH MANAGEMENT SA G. a food supplement sold and distributed by Zuellig Pharma Corporation. November 25. 2009 Facts: Respondent Horphag Research Management is a corporation duly organized and existing under the laws of Switzerland and the owner of trademark PYCNOGENOL.judiciary. Section 7. of the Regulations on Inter Partes Proceedings. The rationale is plain: Certificate of Registration No.R. INC.The filing of a suit to enforce the registered mark with the proper court or Bureau shall exclude any other court or agency from assuming jurisdiction over a subsequently filed petition to cancel the same mark. No. upon which the infringement case is based. since it discontinued the use of the mark prior to the institution of the infringement case. and of the registrant's exclusive right to use the same in connection with the goods. Rule 8.

color and design employed on their individual packages/bottles.htm Levi Strauss & Co. G. Myra Pharmaceuticals. when the two words are pronounced. identified as such by their public consumers. GR No. emblem. Applying the test. the Holistic Test entails a consideration of the entirety of the marks as applied to the products. symbol. http://sc. August 16. 138900. v. nor is it necessary that the infringing label should suggest an effort to imitate. thus constituting infringement.htm Refer to case #2 Levi Strauss v. nevertheless. circumstances of each case. and market segments.gov. Clinton Apparelle. Duplication or imitation is not necessary. essential and dominant features of another. http://sc.ph/jurisprudence/2010/august2010/190065. In determining similarity and likelihood of confusion. name. the court found that: Athough the letters "Y" between P and C. infringement takes place. Inc. including the labels and packaging. and confusion or deception is likely to result. giving little weight to factors like prices. a foreign corporation duly organized and existing Page under the laws of the State of Delaware. sales outlets. No. jurisprudence has developed two tests: the Dominancy Test and the Holistic or Totality Test. the sound effects are confusingly similar not to mention that they are both described by their manufacturers as a food supplement and thus.judiciary. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both labels in order that the observer may draw his conclusion whether one is confusingly similar to the other. clearly indicates that purchasers could be misled into believing that they are the same and/or originates from a common source and manufacturer. A trademark is any distinctive word. The gravamen of trademark infringement is the element of "likelihood of confusion" which must be examined from the particular. sold. and sometimes peculiar. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or to deceive purchasers. is the owner nazh//ela//1838 . R. The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception. or dealt by others.judiciary.R. If the competing trademark contains the main. September 20. or any combination thereof. The court ruled in the positive. adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured. in determining confusing similarity. quality.. Dermaline Inc. USA and engaged in the apparel business. 138900 September 20. And although there were dissimilarities in the trademark due to the type of letters used as well as the size.gov. v. 190065. In the case at bar. 2010. the dominancy test was used in determining whether there was a confusing similarity between the marks PYCNOGENOL and PCO-GENOL. 2005 23 FACTS: The Complaint alleged that LS & Co. G.. Courts will consider more the aural and visual impressions created by the marks in the public mind. Inc. sign. still the close relationship of the competing products’ name in sounds as they were pronounced.ph/jurisprudence/2005/sep2005/138900. No.. Clinton Apparelle. or device. This is not the first time that the court takes into account the aural effects of the words and letters contained in the marks in determining the issue of confusing similarity. 2005. In contrast. "N" between O and C and "S" after L are missing PCO-GENOLS.

LS & Co and LSPI alleged that they discovered the presence in the local market of jeans under the brand name “Paddocks” using a device which is substantially. Moreover. HELD: Given the single registration of the trademark “Dockers and Design” and considering that respondent only uses the assailed device but a different word mark. (5) the affidavit of one Bernabe Alajar which recounted petitioners’ prior adoption. use and registration of the “Dockers and Design” Trademark and (6) the affidavit of Mercedes Abad of Trends MBL Inc which detailed the methodology and procedure used in their survey and results thereof. However. Based on their belied. (4) the trends MBL Survey Report purportedly proving that there was confusing similarity between two marks. The “Dockers and Design” trademark was first used in the Philippines in or about May 1988. prohibition and mandamus with the Court of Appeals. sweatshirts and jackets under Class 25. Page nazh//ela//1838 . shorts. as opposed to the word mark. a domestic corporation engaged in the manufacture. skirts. In the Philippines. 13 Rule 3 of the 1997 Rules of Court. they brought this suit under Sec. Hence this petition. and LSPI are unsure if both or just one of impleaded defendants is behind the manufacture and sale of the “Paddocks” jeans complained of. is the dominant or central feature of petitioners’ trademark—the feature that prevails or is retained in the minds of the public—an imitation of which creates the likelihood of deceiving the public and 24 constitutes trademark infringement. holding that the trial court did not follow the procedure required by law. To date. if not exactly. In sum. which prompted Clinton Apparelle to file a petition for certiorari. Stated otherwise. holding the issuance of the writ of preliminary injunction is questionable after petitioner’s failure to sufficiently establish its material and substantial right to have the writ issued. there are vital matters which have yet and may only be established through a full-blown trial. It is likewise not settled whether the wing-shaped logo. sale and distribution of various products bearing trademarks owned by LS & Co. the Court of Appeals strongly believes that the implementation of the questions writ would effectively shut down respondent’s shut down. This ownership is evidenced by its valid and existing registrations in various member countries if Paris Convention. The trial court issued a writ of preliminary injunction. the right to prevent the latter from using the challenged “Paddocks” device is far from clear. similar to the “Dockers and Design” trademark owned and registered in their name. without their consent. since LS & Co. it is not evident whether the single registration of the trademark “Dockers and Design” confers on the owner the right to prevent the use of a fraction thereof in the course of trade. blouses. shirts. 46619 in the Principal Register for use of said trademark on pants. by LSPI. It is also unclear whether the use without the owner’s consent of a portion of a trademark registered in its entirety constitutes material or substantial invasion of the owner’s right. LSPI continues to manufacture and sell Dockers Pants with the “Dockers and Design” Trademark. The evidence considered by the trial court in granting injunctive relief were as follows: (1) a certified true copy of the certificate of trademark registration for “Dockers and Design” (2) a pair of DOCKERS pants bearing the trademark (3) a pair of “Paddocks” pants bearing the respondents assailed logo. it has a Certificate of Registration No. they added Clinton Apparelle manufactured and continues to manufacture such “Paddocks” jeans and other apparel.by prior adoption and use since 1986 of the internationally famous “Dockers and Design” trademark. Whereby the Appellate Court granted the petition of Clinton Apparelle’s petition. ISSUE: whether or not the single registration of the trademark “Dockers and Design” confers on the owner the right to prevent the use of a fraction thereof. Thus.

and (3) such subsequent use defames petitioners’ mark. From the above discussion. Subject to the principles of equity. if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark. In the case at bar. the Court finds that petitioners did not adequately prove their entitlement to the injunctive writ. or (2) likelihood of confusion. or manufacturer. Conformably. a copy of the certificate of registration of nazh//ela//1838 . Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services. Neither were petitioners able to show any urgent and permanent necessity for the writ to prevent serious damage. shall be admitted to entry at any customhouse of the Philippines. 169) Distinguish from Trademark Infringement Section 166. an order of the trial court granting the issuance of an injunctive writ will be set aside for having been issued with grave abuse of discretion. . The Trends MBL Survey Report which petitioners presented in a bid to establish that there was confusing similarity between two marks is not sufficient proof of any dilution that the trial court must enjoin. petitioners have yet to establish whether “Dockers and Design” has acquired a strong degree of distinctiveness and whether the other two elements are present for their cause to fall within the ambit of the invoked protection. j. Goods Bearing Infringing Marks or Trade Names. the Court of Appeals was correct in setting aside the assailed orders of the trial court. or shall bear a mark or trade name calculated to induce the public to believe that the article is manufactured in the Philippines. Petitioners also failed to show proof that there is material and substantial invasion of their right to warrant the issuance of an injunctive writ. After a careful consideration of the facts and arguments of the parties. urging that the erosion or dilution of their trademark is protectable. there has to be a finding that: (1) the trademark sought to be protected is famous and distinctive. and that the mere use by an infringer of a registered mark is already actionable even if he has not yet profited thereby or has damaged the trademark owner. any Page person who is entitled to the benefits of this Act. regardless of the presence or absence of: (1) competition between the owner of the famous mark and other parties. Based on the foregoing. Unfair competition (Sec. may require that his name and residence. They assert that a trademark owner does not have to wait until the mark loses its distinctiveness to obtain injunctive relief. 168) Add: False Designation of Origin (Sec. we find that petitioners’ right to injunctive relief has not been clearly and unmistakably demonstrated. Petitioners wish to impress upon the Court the urgent necessity for injunctive relief. The right has yet to be determined. mistake or deception. In the absence of proof of a legal right and the injury sustained by the applicant.No article of imported merchandise which shall copy or simulate the name of any domestic product. or dealer. (2) the use by respondent of “Paddocks and Design” began after the petitioners’ mark became famous. In order to aid the officers of the customs service in enforcing this prohibition. or that it is manufactured in any foreign country or locality other than the country or 25 locality where it is in fact manufactured. the owner of a famous mark is entitled to an injunction “against another person’s commercial use in commerce of a mark or trade name.” This is intended to protect famous marks from subsequent uses that blur distinctiveness of the mark or tarnish or disparage it. and the name of the locality in which his goods are manufactured. or which shall copy or simulate a mark registered in accordance with the provisions of this Act. to be eligible for protection from dilution.

or (b) In commercial advertising or promotion. False Description or Representation. . 30. Trade names or business names (Sec. 166a) k.3.165. even prior to or without registration. importer. against any unlawful act committed by third parties. such names shall be protected. and may furnish to the said Bureau facsimiles of his name. term. whether as a trade name or a mark or collective mark. likely to mislead the public. 169. or any container for goods. No. uses in commerce any word. 165. or association of such person with another person. or false or misleading representation of fact. or any such use of a similar trade name or mark. . on or in connection with any goods or services. A name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put. The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall apply mutatis mutandis. shall be deemed unlawful. or to cause mistake. (b) In particular. misrepresents the nature. or to deceive as to the affiliation. or commercial activities. 165) Section 165. Trade Names or Business Names. in particular. services.A.(a) Notwithstanding any laws or regulations providing for any obligation to register trade names. R. characteristics. 165. R. false or misleading description of fact. to be recorded in books which shall be kept for this purpose in the Bureau of Customs.1. The owner. or as to the origin. Any person who.169. or device. or consignee of goods refused entry at any customhouse under this section may have any recourse under the customs revenue laws or may have the remedy given by this Act in cases involving goods refused entry or seized. No. shall be liable to a civil action for damages and injunction provided in Sections 156 and 157 of this Act by any person who believes that he or she is or is likely to be damaged by such act. any subsequent use of the trade name by a third party. it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name. the name of the locality in which his goods are manufactured. it is contrary to public order or morals and if. symbol. or geographic origin of his or her or another person's goods.2. (Sec. name.A.1. and thereupon the Collector of Customs shall cause one (1) or more copies of the same to be transmitted to each collector or to other proper officer of the Bureau of Customs. or any false designation of origin. or approval of his or her goods. or his registered mark or trade name. (Sec. or commercial activities by another person. Any goods marked or labelled in contravention of the provisions of this Section shall not be imported into the Philippines or admitted entry at any customhouse of the Philippines. 26 Page nazh//ela//1838 . qualities. or any combination thereof. connection.2. under such regulations as the Collector of Customs with the approval of the Secretary of Finance shall prescribe. services. sponsorship. False Designations of Origin.his mark or trade name. which: (a) Is likely to cause confusion. 166) Section 169. 35.

or even perhaps even [sic] a not too perceptive and discriminating customer could be deceived. Case: Converse Rubber vs Universal Rubber. Any change in the ownership of a trade name shall be made with the transfer of the enterprise or part thereof identified by that name. HELD: YES. The trademark of “UNIVERSAL CONVERSE and DEVICE” is imprinted in a circular manner on the side of its rubber shoes.” Even if not all the details just mentioned were identical. Inc. 147 SCRA 154 – Mercantile Law – Intellectual Property Law – Law on Trademarks. It would be sufficient. Universal Rubber Page admitted Converse Rubber’s existence since 1946 as a duly organized foreign corporation engaged nazh//ela//1838 .2 to 149. The provisions of Subsections 149.4. In the same manner.” A corporation is entitled to the cancellation of a mark that is confusingly similar to its corporate name. From a cursory appreciation of the corporate name of “CONVERSE RUBBER 27 CORPORATION. There is confusing similarity between its trademark “UNIVERSAL CONVERSE AND DEVICE” and Converse Rubber’s corporate name and/or its trademarks “CHUCK TAYLOR” and “ALL STAR DEVICE” which could confuse the purchasing public to the prejudice of Converse Rubber. The Director of Patents did not grant the opposition by Converse Rubber. No. any ordinary.R. The determinative factor in ascertaining whether or not marks are confusingly similar to each other “is not whether the challenged mark would actually cause commission or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the part of the buying public.lawphil. with the general appearance alone of the two products. Converse Rubber opposed as it averred that the word “Converse” which is part of its corporate name cannot be granted as part of Universal Rubber’s trademark or trade name because it will likely deceive purchasers of Universal Rubber’s products as it may be mistaken by unwary customers to be manufactured by Converse Rubber. Universal Rubber has been operating since 1963.net/judjuris/juri1987/jan1987/gr_l_27906_1987. Later. Converse has been operating since 1946.4 shall apply mutatis mutandis. ISSUE: whether or not the respondent's partial appropriation of petitioner's corporate name is of such character that it is calculated to deceive or confuse the public to the injury of the petitioner to which the name belongs. the trademark of Converse Rubber which reads “CONVERSE CHUCK TAYLOR” is imprinted on a circular base attached to the side of its rubber shoes.html Converse Rubber Corporation vs Universal Rubber Products.’ it is evident that the word “CONVERSE” is the dominant word which identifies Converse Rubber from other corporations engaged in similar business. 1987. Appropriation by another of the dominant part of a corporate name is an infringement. G.165. for purposes of the law. L-27906 January 8. http://www. is a corporation licensed to do business in the country. that the similarity between the two labels is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the new brand for it. Inc. Service Marks and Trade Names – Trade Name Infringement Facts: Converse Rubber Corporation is an American corporation while Universal Rubber Products. Universal Rubber filed an application for the trademark “Universal Converse and Device” before the Philippine Patent Office.

petitioners shop caused confusion in the minds of the public as it bore a similar name and it also engaged in the business of selling coffee. This admission necessarily betrays its knowledge of the reputation and business of petitioner even before it applied for registration of the trademark in question. Petitioner alleged it filed with the Intellectual Property Office (IPO) applications for registration of the mark "SAN FRANCISCO COFFEE & DEVICE" for class 42 in 1999 and for class 35 in 2000.judiciary. 2010 Facts: Petitioner Coffee Partners. the same need not be registered. (CPL). Knowing. Inc. It registered with the SEC in May 1995. which is engaged in the processing.gov.." even if the trade name is not registered with the Intellectual Property Office (IPO). (BCCPI). and is in fact the dominant word in Converse Rubber’s corporate name. INC. CA again reversed the decision of the Office of the Director General and affirmed the BLA-IPO’s finding. respondent discovered that petitioner was about to open a coffee shop under the name "SAN FRANCISCO COFFEE" in Libis. a business entity organized and existing under the laws of British Virgin Islands. and wholesale selling of coffee." Respondent is a local corporation engaged in the wholesale and retail sale of coffee. Horphag Research Management SA. Coffee Partners. nazh//ela//1838 . roasting. counterfeited. Held: In Prosource International. Universal Rubber has no right to appropriate the same for use on its products which are similar to those being produced by Converse Rubber.in the manufacture of rubber shoes. therefore. Inc.R. v. Respondent formed a joint venture company with Boyd Coffee USA under the company name Boyd Coffee Company Philippines. that the word “CONVERSE” belongs to and is being used by Converse Rubber. INC. Inc. 169504 : March 3. G. v. vs San Francisco Coffee & Roastery. is a local corporation engaged in the business of establishing and maintaining coffee shops in the country. ODG-IPO." with the Department of Trade and Industry (DTI) in June 1995. No. 169504. It registered the business name "SAN FRANCISCO COFFEE & ROASTERY. 2010 http://sc. Page (2) The trademark or trade name is reproduced. Issue: Whether petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes infringement of respondents trade name "SAN FRANCISCO COFFEE & ROASTERY. hence this petition. It has a franchise agreement6cЃa with Coffee Partners Ltd. this Court laid down what constitutes infringement of an unregistered trade name.ph/jurisprudence/2010/march2010/169504... copied. Inc. Inc. Inc. Inc. Petitioner denied the allegations in the complaint. March 3. G.htm Coffee Partners. Respondent also filed a complaint with the Bureau of Legal Affairs- Intellectual Property Office (BLA-IPO) for infringement and/or unfair competition. or colorably imitated by the infringer. Quezon City. In 2001. BLA-IPO rendered a decision favourable to the respondents and found herein petitioners guilty of trademark ingfringement. however reversed the decision of the Bureau which lead respondents to appeal. for a non-exclusive right to operate coffee shops in the Philippines using trademarks designed by CPL such as "SAN FRANCISCO COFFEE.R. San Francisco Coffee and Roastery. thus: (1) The trademark being infringed is registered in the Intellectual Property Office. however. 28 in infringement of trade name. No. According to respondent.

(Sec. or advertisements intended to be used upon or in connection with such goods.2 in relation to Sec. or which shall copy or simulate a mark registered in accordance with the provisions of this Act. RA 8293. Collective marks (Sec. 35. or shall bear a mark or trade name calculated to induce the public to believe that the article is manufactured in the Philippines. may require that his name and residence. or manufacturer. However. any person who is entitled to the benefits of this Act. Goods Bearing Infringing Marks or Trade Names. the name of the locality in which his goods are manufactured. receptacles. . a trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark.12cЃa as amended. business or services.3. (Sec. or dealer. Sections 122 to 29 164 and 166 shall apply to collective marks. Section 22 of Republic Act No. (4) The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business. or services. R.2 and 167. packages.2. under such regulations as the Collector of Customs with the approval of the Secretary of Finance shall prescribe.A. or advertising of any goods.A. and (5) It is without the consent of the trademark or trade name owner or the assignee thereof.2 of RA 8293 categorically states that trade names shall be protected. and thereupon the Collector of Customs shall cause one (1) or more copies of the same to be transmitted to each collector or to other proper officer of the Bureau of Customs. 166) m. and the name of the locality in which his goods are manufactured. Page nazh//ela//1838 . offering for sale. even prior to or without registration with the IPO.1. applying the dominancy test or the holistic test. 167) 121. In order to aid the officers of the customs service in enforcing this prohibition. signs. Collective Marks. Section 165. and may furnish to the said Bureau facsimiles of his name. All that is required is that the trade name is previously used in trade or commerce in the Philippines. Subject to Subsections 167.167. against any unlawful act x x x. 166) Section 166. 166. prints. to be recorded in books which shall be kept for this purpose in the Bureau of Customs.No article of imported merchandise which shall copy or simulate the name of any domestic product. or the infringing mark or trade name is applied to labels. except that references therein to "mark" shall be read as "collective mark". wrappers. Goods bearing infringing marks or trade names (Sec. R. Clearly. INC. required registration of a trade name as a condition for the institution of an infringement suit. 40. including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark. a copy of the certificate of registration of his mark or trade name." trade name. business. . or his registered mark or trade name. "Collective mark" means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic. Also. 121. petitioners "SAN FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN FRANCISCO COFFEE & ROASTERY. (3) The infringing mark or trade name is used in connection with the sale. No. 166a) Section 167. shall be admitted to entry at any customhouse of the Philippines. or that it is manufactured in any foreign country or locality other than the country or locality where it is in fact manufactured. l. No.

or in any other feature of their appearance. (b) Any person who by any artifice. or who employs any other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public. or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. governing the use of the collective mark.167. whether or not a registered mark is employed. or the devices or words thereon. Unfair Competition. (Sec. or 30 (c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods. or that he uses or permits its use in contravention of the agreements referred to in Subsection 166.(a) An application for registration of a collective mark shall designate the mark as a collective mark and shall be accompanied by a copy of the agreement.3. if any. . his business or services from those of others. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals. has a property right in the goodwill of the said goods. Rights. 40. either as to the goods themselves or in the wrapping of the packages in which they are contained. and without in any way limiting the scope of protection against unfair competition. or an application therefor shall not be the subject of a license contract. Page business or services of another. The registration of a collective mark. which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer. Regulation and Remedies. 168.168. nazh//ela//1838 . 167.4. or device. In addition to the grounds provided in Section 149. Regulation and Remedies (Sec. (b) The registered owner of a collective mark shall notify the Director of any changes made in respect of the agreement referred to in paragraph (a). or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose. who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer.3. 168. A person who has identified in the mind of the public the goods he manufactures or deals in. other than the actual manufacturer or dealer.2. the Court shall cancel the registration of a collective mark if the person requesting the cancellation proves that only the registered owner uses the mark. 168) Section 168. or who shall commit any acts calculated to produce said result.2 or that he uses or permits its use in a manner liable to deceive trade circles or the public as to the origin or any other common characteristics of the goods or services concerned.A. shall be guilty of unfair competition. which will be protected in the same manner as other property rights. Unfair Competition. or his business. or services for those of the one having established such goodwill. the following shall be deemed guilty of unfair competition: (a) Any person. No. In particular. 167. 166a) n. Rights.2.1. business or services so identified. and shall be subject to an action therefor. R.

respondent Sehwani. Benita Frites. 179127. Incorporated and/or Benita’s Frites G. a certificate of registration of the said mark was issued in the name of respondent Sehwani. Petitioner averred that it is the owner of the trade name IN- N-OUT. No.judiciary. was able to use the registered mark of respondent Sehwani. the respondents started constructing the restaurant only after the petitioner demanded that the latter desist from claiming ownership of the mark IN-N-OUT and voluntarily cancel their trademark 31 registration. 157 and 161 shall apply mutatis mutandis.” Upon approval of its application. The intent to deceive and defraud may be inferred from the similarity of the appearance of the goods as offered for sale to the public. http://sc. Petitioner filed an administrative complaint against respondents for unfair competition and cancellation of trademark registration. Inc vs Sehwani. The evidence on record shows that the respondents were not using their registered trademark but that of the petitioner. Petitioner claimed that respondents are making it appear that their goods and services are those of the petitioner. 29. Incorporated had already obtained Trademark Registration for the mark “IN N OUT (the inside of the letter “O” formed like a star). Page nazh//ela//1838 . The essential elements of an action for unfair competition are (1) confusing similarity in the general appearance of the goods and (2) intent to deceive the public and defraud a competitor. Respondents. The remedies provided by Sections 156.ph/jurisprudence/2008/december2008/179127. 2008 Facts: On 2 June 1997.168. petitioner filed trademark and service mark applications with the Bureau of Trademarks of the IPO for “IN-N-OUT” and “IN-N-OUT Burger & Arrow Design. Issue: Whether respondent Sehwani Incorporated is liable for unfair competition. thus. On 15 November 1991.” Petitioner later found out that respondent Sehwani.htm In-n-out Burger Inc. The respondents refused to accede to petitioner’s demand. Inc.” By virtue of a licensing agreement. Trademarks and Technology Transfer (BPTTT) an application for the registration of the mark “IN N OUT (the inside of the letter “O” formed like a star).A. asserted that they had been using the mark “IN N OUT” in the Philippines since 15 October 1982. Actual fraudulent intent need not be shown. Apparently. on the other hand.gov. misleading ordinary and unsuspecting consumers that they are purchasing petitioner’s products. The restaurant opened only in 2000 but under the name IN-N-OUT BURGER. Incorporated of the “IN N OUT” trademark for a fair and reasonable consideration. Inc G.R. Incorporated. Petitioner then sent a demand letter directing respondents to cease and desist from claiming ownership of the mark “IN-N-OUT” and to voluntarily cancel its trademark registration. vs Sehwani. No. Incorporated filed with the then Bureau of Patents. 166a) Case: In-N-Out Burger.R. 2008.4. Respondent was issued a Certificate of Registration for IN N OUT (with the Inside of the Letter “O” Formed like a Star) for restaurant business in 1993. December 24. 179127 : December 24. Held: Yes. Incorporated on 17 December 1993. (Sec. but expressed willingness to surrender the registration of respondent Sehwani. R. No.

petitioners.R.3(a) in relation to Sections 131. among others. under circumstances. vs. Facts: Proline is the exclusive distributor of Spalding sports products in the Philippines. The civil case was dropped for it was doubtful whether Questor had indeed acquired the registration rights over the mark “spalding”. COURT OF APPEALS. Universal thereafter. shoe cleaners 32 and accessories.. Search warrants were then issued against respondent Samson and his other business establishments (Itti Shoes Corporation. 2016. INC." "CAT AND DESIGN. Inc. No. Petitioners could not have been moved by legal malice in instituting the criminal complaint for unfair competition. vs. INC. UNIVERSAL ATHLETICS INDUSTRIAL PRODUCTS.php?id=1046 CATERPILLAR INC.htm PRO LINE SPORTS CENTER. Universal failed to show that the filing of criminal charges of petitioner herein was bereft of probable cause. Issue: Are Proline and Questor liable for damages to Universal for the wrongful recourse to court proceedings? Held: Proline and Questor cannot be adjudged liable for damages for the alleged unfounded suit. and MONICO SEHWANI. SAMSON Facts Petitioner Caterpillar. is a foreign corporation engaged in the business of manufacturing shoes. Caterpillar. Inc. 281 SCRA 162 . V. and QUESTOR CORPORATION. The CA affirmed the lower court’s decision. November 09." "WALKING MACHINES" and/or "Track-type Tractor and Page Design" were seized." "CATERPILLAR AND DESIGN. bags.gov. http://sc. while Questor. Pursuant to the search warrants various merchandise garments.com/cralaw/2016novemberdecisions. Respondent Samson filed a motion to quash the search warrants but was nazh//ela//1838 . otherwise known as the Intellectual Property Code. footwear. The criminal case was also dismissed due to insufficiency of evidence through a demurrer. Kolm’s Manufacturing. http://www. filed for damages against Proline and Questor which was granted by the lower court and affirmed by the CA. 123(e) and 170 of Republic Act No. to hold that Proline as the authorized agent of Questor.. 1997. deodorant sprays. a US-based corporation became the owner of the trademark “Spalding”. Court of Appeals. Inc. G. exercised sound judgment in taking the necessary legal steps to safeguard the interest of its principal with respect to the trademark in question.judiciary. and Caterpillar Boutique and General Merchandise). Samson.3. We are disposed. Search warrant applications were filed against Manolo Samson (herein after referred to as Samson) for violations of unfair competition provided under Section 168. Universal’s factory was searched resulting to the seizure of fake “spalding balls” and the instruments used in the manufacture thereof. October 23." "CATERPILLAR.Pro Line Sports Center. By virtue of valid search warrant. 8293. wallets.chanrobles. Civil and criminal cases were filed against Universal. 205972. respondents.ph/jurisprudence/1997/oct1997/118192. vs. all bearing the trademarks "CAT. They filed a petition against respondent Universal. clothing items. a domestic corporation which manufactures and sell sports goods including fake “spalding balls”.

(3) actual samples of the respondent’s merchandise are in the possession of the police officers who had applied for the search warrant. color and general appearance of the package used by the pioneer manufacturer or dealer. Petitioner then filed Motion for Partial Reconsideration but was denied by the TC. petition denied. In the case at hand there is no criminal action that has been filed. Issue/s 1) W/N CA erred in upholding the immediate release of the seized items on the ground that there was no criminal action for unfair competition filed against the respondent? 2) W/N the CA erred in ruling that the subsequent dismissal of the investigating State Prosecutor of the criminal complaints against respondent justifies the return of the seized items? Held/Ratio: 1) NO. Also. footwear and accessories. The Court therefore ruled that the admissions of the respondent in the case at hand are already suffiecient to establish that he used such trademarks in order to sell merchandise at a commercial scale and that the actual products manufactured by the respondent need not be presented to prove such fact. The Court therefore was left with no custody of the highly depreciable merchandise that were seized. CA also denied the petition after noting that all the criminal complaints that were filed against the respondent were dismissed by the investigating prosecutor and that the respondent never denied the existence of the said items. evidentiary value for the criminal action of unfair competition. In the case at hand the respondent already admitted the existence of the seized articles. With these. Hence. There was also no criminal case filed against the articles that were seized. the Court ordered the release of the articles that were seized since there was no criminal action filed against the respondent. there is no justification for severely curtailing the rights of a person to his property. However. that were seized had little. More importantly. the seized articles should be immediately released. there were already available samples from the purchases as well as photographs of the particular parts of the merchandise where the trademark in dispute were attached or used. therefore there is no more need for the court to take custody of the countless articles that were seized. the numerous articles of clothing. and photographs thereof had been made part of the records. Where the purpose of presenting as evidence the articles seized is no longer served. among others. 33 Page nazh//ela//1838 . so that purchasers desiring to buy the goods of the latter would be induced to buy the goods of the former. The Joint Resolution of the DOJ has become final. and respondent did not dispute that these were obtained from his stores.denied. 2) NO. An action for unfair competition is based on the proposition that no dealer in merchandise should be allowed to dress his goods in simulation of the goods of another dealer. (2) the court required the respondent to execute an undertaking to produce the articles seized when the court requires and had already in its possession a complete inventory of the items seized as secondary evidence. Also. these highly depreciable articles would have been superfluous if presented as evidence for the following reasons: (1) the respondent had already admitted that he is the owner of the merchandise seized. The most usual devices employed in committing this crime are the simulation of labels and the reproduction of form. if any. therefore no criminal case was filed against the respondent in relation with the five search warrants that were issued by the Trial Court. which made use of the trademarks in dispute.

Francis Towers IP Case – an inter partes case opposing the petitioners’ application for registration of the mark “THE ST. misleads prospective purchasers into buying his merchandise under the impression that Page they are buying that of his competitors. FRANCIS TOWERS” for use relative to the latter’s business. Accordingly. St. FRANCIS SHANGRI-LA PLACE.”. Respondent added that as a result of its continuous use of the mark “ST. false or fraudulent declaration.net/judjuris/juri2014/jul2014/gr_190706_2014. it has gained substantial goodwill with the public that consumers and traders closely identify the said mark with its property development projects. [In other words]. Francis Avenue and St. FRANCIS TOWERS” and “THE ST. vs St. FRANCIS SHANGRI-LA PLACE. a shopping mall called the “St. 190706. No.BLA.The unfair competition concept refers to the “‘the passing off (or palming off) or attempting to pass off upon the public of the goods or business of one person as the goods or business of another with the end and probable effect of deceiving the public. Francis Street (now known as Bank Drive). Respondent alleged that it has used the mark “ST. FRANCIS TOWERS” and “THE ST. and (c) St. Francis Shangri-La IP Case – an inter partes case opposing the petitioners’ application for registration of the mark “THE ST. Francis Towers. namely: (a) IPV Case – an intellectual property violation case for unfair competition. St. Francis Square Commercial Center (built sometime in 1992). FRANCIS” in its real estate business. FRANCIS TOWERS” and “THE ST.” particularly.”..’ Passing off (or 34 palming off) takes place where the defendant. 2014 FACTS: Respondent domestic corporation is engaged in the real estate business and is the developer of the St. respondent claimed that petitioners could not have the mark “THE ST. They contended that respondent is barred from claiming ownership and exclusive use of the mark “ST. Francis Development Corporation GR No. July 21. 190706. maintaining that they could register the mark “THE ST. Francis. This is because respondent’s as well as petitioners’ real estate development projects are located along the streets bearing the name “St.Shang Properties et al. 2014. and that petitioners’ use of the marks “THE ST. FRANCIS SHANGRI-LA PLACE” in their own real estate development projects constitutes unfair competition as well as false or fraudulent declaration. Francis Square.html Shang Properties v. such as the aforementioned St.. and (b) St. G. FRANCIS SHANGRI-LA PLACE” under their names. http://www.” RULING: NO. the defendant gives his goods the general nazh//ela//1838 . FRANCIS TOWERS” registered in their names. Francis Development Corp. FRANCIS SHANGRI- LA PLACE. particularly the construction of permanent buildings or structures for residential and office purposes. It filed separate complaints against petitioners before the IPO . FRANCIS” to identify its numerous property development projects located at Ortigas Center.lawphil. both within the vicinity of the Ortigas Center. Francis Square Commercial Center. Petitioners denied committing unfair competition and false or fraudulent declaration. and damages arising from petitioners’ use and filing of applications for the registration of the marks “THE ST.R. ISSUE: Whether or not petitioners are guilty of unfair competition in using the marks “THE ST. by imitative devices on the general appearance of the goods. July 21.” and a mixed-use realty project plan that includes the St. FRANCIS TOWERS” and “THE ST. FRANCIS” because the same is geographically descriptive of the goods or services for which it is intended to be used.

such as continents. hence. determined through a judicious scrutiny of the factual circumstances attendant to a particular case. but to associate the goods with a particular source. nations.” Based on the foregoing. and any other location referred to by a recognized name. states. and secondary meaning is required for protection.” Secondary meaning is established when a descriptive mark no longer causes the public to associate the goods with a particular place. First Southern Bank: “[d]escriptive geographical terms are in the ‘public domain’ in the sense that every seller should have the right to inform customers of the geographical origin of his goods. case of Great Southern Bank v. As deftly explained in the U. however. rivers. it is not enough that a geographically-descriptive mark partakes of the name of a place known generally to the public to be denied registration as it is also necessary to show that the public would make a goods/place association – that is. or the intent to deceive.” for which the latter had purportedly established considerable goodwill. FRANCIS.appearance of the goods of his competitor with the intention of deceiving the public that the goods are those of his competitor. The CA’s contrary conclusion was faultily premised on its impression that respondent had the right to the exclusive use of the mark “ST. is the geographically descriptive nature of the mark “ST.” The “true test” of unfair competition has thus been “whether the acts of the defendant have the intent of deceiving or are calculated to deceive the ordinary buyer making his purchases under the ordinary conditions of the particular trade to which the controversy relates. However. unfair competition. regions. then the geographic term is probably used in a descriptive sense. areas of cities. false designation of origin. Criminal penalties for infringement. A geographically descriptive term can indicate any geographic location on earth. A ‘geographically descriptive term’ is any noun or adjective that designates geographical location and would tend to be regarded by buyers as descriptive of the geographic location of origin of the goods or services. it is therefore essential to prove the existence of fraud. In order to determine whether or not the geographic term in question is descriptively used. the following question is relevant: (1) Is the mark the name of the place or region from which the goods actually come? If the answer is yes. o. unless a secondary meaning is acquired.S. FRANCIS” which thus bars its exclusive appropriability. In other words. actual or probable. cities. and false description or misrepresentation 35 Page nazh//ela//1838 . a public association of the goods with the place may ordinarily be presumed from the fact that the applicant’s own goods come from the geographical place named in the mark. Here. to believe that the goods for which the mark is sought to be registered originate in that place. where there is no genuine issue that the geographical significance of a term is its primary significance and where the geographical place is neither obscure nor remote. there can be no unfair competition. streets and addresses. the Court finds the element of fraud to be wanting. What the CA appears to have disregarded or been mistaken in its disquisition.