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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.

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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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but also to protect an already used and registered trademark and an established goodwill. converter. cellular phones and automatic goods vending machine. teleprinters. March 25. especially considering that both classifications pertain to treatments for the skin. stereo booster.. flat iron. No. facsimile machines. step-down transformer.chanrobles. Taiwan Kolin Corp. 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. http://www. Indeed. Issue: W/N the products are closely-related Held: No. VCD Amplifiers. 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. 209843. Verily. nazh//ela//1838 .of Dermaline’s applied trademark over the radio. the application should be rejected and dismissed outright. but also because they are inherently similar for being electronic products and are plugged into electric sockets and perform a useful function. the registered trademark owner may use its mark on the same or similar products. even without any opposition on the part of the owner and user of a previously registered label or trademark. chances are he will associate it with Myra’s registered mark. and at different price levels depending on variations of the products for specific segments of the market. AC-DC regulated power supply. To confer exclusive use of a trademark. G. Ltd vs Kolin Electronics Co. camcorders and other audio/video electronic equipment. the public may mistakenly think that Dermaline is connected to or associated with Myra. Kolin Electronics opposed the application on the ground that the trademark “KOLIN” is identical. 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. in different segments of the market. Thus. cordless handsets. considering the current proliferation of health and beauty products in the market. the products are not related and the use of the trademark KOLIN on them would not likely cause confusion. if not confusingly similar. 2015. videophones. recharger.com/cralaw/2015marchdecisions.R. and PA amplified AC-DC. Kolin Electronics argued that the products are not only closely-related because they fall under the same classification. such that. This is intended not only to avoid confusion on the part of the public. 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.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. 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. with its registered trademark “KOLIN” which covers the following products under Class 9 of the Nice Classification (NCL): automatic voltage regulator. cassette recorder. vacuum cleaners.

They are not ordinarily consumable items such as soy sauce. 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.html i. 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. Accordingly. (n) Application Procedure (Sec. confusion is less likely. . ketsup or soap which are of minimal cost. Page (b) The name and address of the applicant.1(e) which is registered in the Philippines.net/judjuris/juri2017/feb2017/gr_188996_2017. although appear to be minimal. Requirements of Application.1. 2017. http://www.147. 147. Seri Soomboonsakdikul vs. Second. 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.A. The exclusive right of the owner of a well-known mark defined in Subsection 123. are sufficient to distinguish between one brand or another. That the interests of the owner of the registered mark are likely to be damaged by such use. In case of the use of an identical sign for identical goods or services.1. The distinct visual and aural differences between the two trademarks “KOLIN”. Taiwan Kolin’s goods are categorized as audio visual equipments. 124 – 144) Requirements of Application (Sec. the ordinarily intelligent buyer is not likely to be confused. Rights Conferred.124. First. nazh//ela//1838 . . 124) Section 124. 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.2. discriminating. a likelihood of confusion shall be presumed. Orlane. Registration Rights conferred by registration (Sec. products classified under Class 9 can be further classified into five categories. 147) Section 147. The casual buyer is predisposed to be more cautious. the goods covered by the competing marks between Taiwan Kolin and Kolin Electronics fall under different categories. February 1. while Kolin Electronics’ goods fall under devices for controlling the distribution and use of electricity. shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided.R. S. 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. No.lawphil. Hence. 188996. G. Thus.

(c) The name of a State of which the applicant is a national or where he has domicile. of the principal parts of the mark which are in that color. as prescribed in the Regulations. No. together with the number of the class of the said Classification to which each group of goods or services belongs. (j) A transliteration or translation of the mark or of some parts of the mark. it may require the applicant to submit sufficient evidence to remove the doubt. grouped according to the classes of the Nice Classification. 124.2. if the applicant is not domiciled in the Philippines. the name of that office. the applicant or his representative. as prescribed in the Regulations. and (l) A signature by. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect. or other self-identification of. R. ii) The date on which the earlier application was filed.3. a statement to that effect as well as the name or names of the color or colors claimed and an indication. the application shall be refused or the mark shall be removed from the Register by the Director. if any. Otherwise. (g) Where the applicant claims color as a distinctive feature of the mark. One (1) application may relate to several goods and/or services. the Office finds factual basis to reasonably doubt the veracity of any indication or element in the application.A. (h) Where the mark is a three-dimensional mark. whether they belong to one (1) class or to several classes of the Nice Classification. (f) Where the applicant claims the priority of an earlier application. (i) One or more reproductions of the mark. a statement to that effect. as prescribed by the Regulations within three (3) years from the filing date of the application.4. 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. (k) The names of the goods or services for which the registration is sought. If during the examination of the application. and iii) Where available. (e) The appointment of an agent or representative. and the name of a State in which the applicant has a real and effective industrial or commercial establishment. (Sec. 124. 124. (d) Where the applicant is a juridical entity. the application number of the earlier application. in respect of each color. 166a) 6 Page nazh//ela//1838 . 5. the law under which it is organized and existing.

127. the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country: Provided.2. and has not served. or petition the cancellation of its registration or sue for unfair competition. No filing date shall be accorded until the required fee is paid. (Sec. that is not registered in the Philippines. 165) Page nazh//ela//1838 . 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. 127.A certificate of registration of a mark shall be prima facie evidence of the validity of the registration.127. Certificates of Registration. No.2. 127.1(e) of this Act. without having been laid open to public inspection and without leaving any rights outstanding. as a basis for claiming a right of priority. (n) Priority Right (Sec. (Sec.1. 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. 37. and who previously duly filed an application for registration of the same mark in one of those countries. R. notwithstanding the foregoing.Filing date (Sec. abandoned.4. (d) A reproduction of the mark whose registration is sought.A. the owner of a well-known mark as defined in Section 123. . No. That. 20. 131. oppose its registration. R. . An application for registration of a mark filed in the Philippines by a person referred to in Section 3. (c) Indications sufficient to contact the applicant or his representative. Filing Date.1. 166a) Certificate of Registration (Sec. and (e) The list of the goods or services for which the registration is sought. That any foreign application filed prior to such subsequent application has been withdrawn. Priority Right. 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. . or otherwise disposed of. Requirements.A. 131) Section 131.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. may. (b) The identity of the applicant. the registrant's ownership of the mark.3.2) Section 127. without prejudice to availing himself of other remedies provided for under the law. . shall be considered as filed as of the day the application was first filed in the foreign country. if any. against an identical or confusingly similar mark. 138) Section 138.131. 131. nor thereafter shall serve. In like manner and subject to the same conditions and requirements. 131.

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

etc.html Faberge . v IAC. 71189. Maliwat. insisting that there can be unfair competition even if the goods are noncompeting. especially since modern department stores usually place CBK’s products (briefs) and Faberge’s products (after shave lotion. Faberge is now before the SC to contest the above ruling. likewise sold in the domestic market. November 4. Decision of the CA is affirmed. an item which is not listed in its certificate of registration. and that even if the products sold under these marks are different. Holding Petition denied. The Intermediate Appellate Court and Co Beng Kay 04 November 1992.R.” which it previously registered for after shave lotion. IV. III. Incorporated v. I. it cannot and should not be allowed to feign that CBK had nazh//ela//1838 . II. shaving cream. which deleted the phrase in the former law that the merchandise must be substantially of the same descriptive properties. deodorant. following the sentiment expressed by Justice JBL Reyes in Sta. 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. deodorant. J. 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. 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. Melo. G.” In effect. No. 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. Issues WON an earlier registration of a trademark can prevent a later registration of a similarly- sounding trademark.) in one section denominated as “Men’s Accessories. shaving cream. this would supposedly allow CBK to unjustly benefit from the goodwill and reputation that Faberge has already established for its “BRUT” products. talcum powder and 9 toilet soap. 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.Faberge Inc.lawphil. especially in view of the alleged repeal of RA 166 by RA 666. talcum powder. The Director of Patents granted CBK’s application. Ratio A review of the relevant provision of the Civil Code and RA 166. Page In as much as Faberge has not ventured in the production of briefs. even if the products falling under the two are unrelated and non-competing – NO. The CA initially reversed this decision. and toilet soap. Upon CBK’s MR however. http://www. the CA reversed its earlier ruling. Petitioner Faberge opposed this application on the ground of the similarity of the said trademark with Faberge’s own symbol “BRUT. 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. holding that the marks “BRUT” and “BRUTE” were indeed quite similar. Ana v. 1992.net/judjuris/juri1992/nov1992/gr_71189_1992. Thus.

20 is controlling and. it is equally true that under Sec. subject to any conditions and limitations stated therein. How should this apparent conflict between Sec. which is defined as the use without consent of the trademark owner of any reproduction. such application does not suffice and may not vest an exclusive right in its favor that can ordinarily be protected by the Trademark Law. however the remedy is legislative and not judicial. It ineluctably follows that Sec. then a situation may arise whereby an applicant may be tempted to register a trademark on any and all goods which his mind may conceive even if he had never intended to use the trademark for the said goods. We believe that such omnibus registration is not contemplated by our Trademark Law. Ana vs. if the certificate of registration were to be deemed as including goods not specified therein. counterfeit. 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. or identity of such business. 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. 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. 4(d) and Sec. on the other. 20 of the same law.invaded its exclusive domain. on the one hand. Even its alleged application for registration of “BRUT” to other products such as briefs was not annexed to its brief. The glaring discrepancies between the products of CBK. the protective mantle of the Trademark Law extends only to the goods used by the first user as specified in the certificate of registration. 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. CBK can appropriate its symbol for the briefs it manufactures because as aptly remarked by Justice Sanchez in Sterling Products v. which invokes the wisdom imparted by Justice JBL Reyes in Sta. Farbenfabriken: “Really.” Whatever deleterious effects may arise from the above interpretation of Sec. Yet. or advertising of any goods. 4(d) of RA 166. it is indeed true that Sec. and of Faberge. offering for sale. therefore. 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. Neither can CBK be deemed to have committed infringement. 20 in relation to Sec. 4(d) of RA 166 is not entirely irreversible. 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. and in any case. copy or colorable imitation of any registered mark or trade name in connection with the sale. WRT argument raised by Faberge as regards its alleged business expansion. 10 Page nazh//ela//1838 . had been amply portrayed to such an extent that indeed.

2. Duration. (b) The name and address of the registrant or his successor-in-interest. 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) Section 146. (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. 146. within one (1) year from the fifth anniversary of the date of the registration of the mark. 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. and (g) A signature by the right holder or his representative. hereafter referred to as the "right holder". No. An applicant for renewal not domiciled in the Philippines shall be subject to and comply with 11 the requirements of this Act. 146. 146. If the Office refuses to renew the registration. or it may be made within six (6) months after such expiration on payment of the additional fee herein prescribed. or shall show valid reasons based on the existence of obstacles to such use. 166a) 146. the name and address of that representative. 166a) Page nazh//ela//1838 .1. the mark shall be removed from the Register by the Office.3. or it may be made within six (6) months after such expiration on payment of the additional fee herein prescribed. as prescribed by the Regulations. R. 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. (e) Where the right holder has a 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. (Sec. 15.A. 12. 145. it shall notify the registrant of his refusal and the reasons therefor. (c) The registration number of the registration concerned.4.146. Otherwise. R.Duration (Sec. .A certificate of registration shall remain in force for ten (10) years: Provided. 146. .2. Renewal. (d) The filing date of the application which resulted in the registration concerned to be renewed. No. That the registrant shall file a declaration of actual use and evidence to that effect. The request shall contain the following indications: (a) An indication that renewal is sought.A. Renewal (Sec. (Sec.2) Section 145.

5. be provisionally recorded. 149. of the goods or services to which the mark is applied.149. pseudonyms. addresses. quality. value. be null and void if it is liable to mislead the public.1. shall be in the name of the assignee or transferee. The assignment of the application for registration of a mark. 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. or its registration.Use of Indications by Third Parties for Other Purposes (Sec.3. and the mark. destination.4. 149.1. A license contract shall be submitted to the Office which shall keep its contents confidential but shall record it and publish a reference thereto. . 166a) License Contracts (Sec. the license contract shall not be valid. 149) Section 149. Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used. Assignments and transfers of registrations of marks shall be recorded at the Office on payment of the prescribed fee.2. a geographical name. manufacturing process. A license contract shall have no effect against third parties until such recording is effected. (n) 12 Page nazh//ela//1838 . 31.2. (n) Assignment and Transfer of Registration (Sec. or an application therefor. Any license contract concerning the registration of a mark. Such assignment or transfer shall.Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names. 149. Assignment and Transfer of Application and Registration. on payment of the same fee. or time of production or of supply. characteristics. . or of its registration. assignment and transfers of applications for registration shall. An application for registration of a mark. (Sec. when registered. 150) Section 150. 150. particularly as regards the nature.150. Transfers by mergers or other forms of succession may be made by any document supporting such transfer. or exact indications concerning the kind. 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. source. of their goods or services: Provided. Assignments and transfers shall have no effect against third parties until they are recorded at the Office. R. quantity. The Regulations shall fix the procedure for the recording of the license contract. If the license contract does not provide for such quality control. place of origin. . may be assigned or transferred with or without the transfer of the business using the mark. shall be in writing and require the signatures of the contracting parties. or suitability for their purpose.148) Section 148. License Contracts. or if such quality control is not effectively carried out.A. (n) 149. however. No.

blouses. socks. 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. No. LEE G. or a portion thereof. for which it is registered. or has been abandoned. Lee Co.. J. a petition to cancel the registration for only those goods or services may be filed. 151.Cancellation (Sec.html EMERALD GARMENT MANUFACTURING CORPORATION vs. 1995.151. 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. a foreign corporation. On the other hand. Inc. . BUREAU OF PATENTS. 1995. Corp. http://www. R. COURT OF APPEALS. 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. briefs. Cancellation. or its registration was obtained fraudulently or contrary to the provisions of this Act. 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. G. jackets. vs CA. filed with the Bureau of Patents. jogging nazh//ela//1838 .R.2. if the registered mark becomes the generic name for the goods or services. December 29. if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines. 17. HON.R. (b) At any time. No.. 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. (n) (c) At any time. 151) Section 151. 100098. or if the registered mark is being used by. 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. No. 166a) Case: Emerald Garment Mfg. December 29.lawphil. 100098. TRADEMARKS AND TECHNOLOGY TRANSFER AND H. 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. jeans.D. LEE" used on skirts. (Sec.net/judjuris/juri1995/dec1995/gr_100098_1995.A. the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.1. or with the permission of. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered.: Facts: 13 Private respondent H. 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. KAPUNAN.D. Notwithstanding the foregoing provisions.

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

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

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

That such mark is not used in such manner as to deceive the public. 23. offering for sale. in the discretion of the court. R. the damages may be doubled. (Sec. wrappers. copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction. or the profit which the defendant actually made out of the infringement.2. sales invoices and other documents evidencing sales. prints. Reproduce. distribution. Use in commerce any reproduction. Actions. (n) 156. counterfeit. (Sec. copy. No. may also be granted injunction. That the infringement takes place at the moment any of the acts stated in Subsection 155. The owner of a registered mark may recover damages from any person who infringes his rights.4.3.. (Sec. 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. 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. or advertising of goods or services on or in connection with which such use is likely to cause confusion. such use shall inure to the benefit of the registrant or applicant. or to cause mistake. or to cause mistake. No 166a) Section 156. the court may impound during the pendency of the action.1. counterfeit.A. and such use shall not affect the validity of such mark or of its registration: Provided. No. 23.A. R. without the consent of the owner of the registered mark: 155. offering for sale. (Sec.1. upon proper showing. No. had the defendant not infringed his rights. 155 – 158) Section 155. Infringement.A.152. counterfeit. In cases where actual intent to mislead the public or to defraud the complainant is shown.4. shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided.3.. or in the event such measure of damages cannot be readily ascertained with reasonable certainty. The complainant. first par. signs. 166a) nazh//ela//1838 . or 155. and Damages and Injunction for Infringement. The use of a mark by a company related with the registrant or applicant shall inure to the latter's benefit. 152. . and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made. R.2. first par. second Page par. 22.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material. (n) Remedies (Sec. 166) 17 156.A. or to deceive. packages. or to deceive. or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale.156. 166a) 156. Remedies. 23.Any person who shall. On application of the complainant. receptacles or advertisements intended to be used in commerce upon or in connection with the sale. copy or colorable imitation to labels. 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. 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. distribution.. . R.

166a) Section 158. 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. or to deceive. the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing. R.3. matrices and other means of making the same. disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder. . wrappers. signs. or other similar periodical or in an electronic communication. Power of Court to Order Infringing Material Destroyed. 166a) Limitations (Sec.A. magazines. bearing the registered mark or trade name or any reproduction. to permit the release of the goods into the channels of commerce. was using the mark for the purposes of his business or enterprise: Provided. receptacles and advertisements in the possession of the defendant. magazine. (Sec. molds. in good faith. In regard to counterfeit goods. 159) Section 159.A. 157.1. 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. 21. or to cause mistake. Requirement of Notice.In any suit for infringement.157. . Where the infringement complained of is contained in or is part of paid advertisement in a newspaper. Damages.2. in which a violation of any right of the owner of the registered mark is established. 24. 159. all plates. the court may order that goods found to be infringing be. No. the remedies given to the owner of a right infringed under this Act shall be limited as follows: 159. (Sec. Where an infringer who is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer. No. (n) nazh//ela//1838 . . the simple removal of the trademark affixed shall not be sufficient other than in exceptional cases which shall be determined by the Regulations. 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.Section 157. prints. a registered mark shall have no effect against any person who. R. or destroyed.Notwithstanding any other provision of this Act.2. copy or colorable imitation thereof. 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. shall be delivered up and destroyed. packages.1 In any action arising under this Act. That such injunctive relief shall not be available to the owner of the right infringed with respect to an issue of a newspaper. and all labels. magazine. 159. magazine. the remedies of the owner of the right infringed as against the publisher or distributor of such newspaper. 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. counterfeit. Limitations to Actions for Infringement. 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. or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers: Provided. without compensation of any sort. before the filing date or the priority date. Notwithstanding the provisions of Section 155 hereof.

164321. No. and deception in the mind of the purchasing public. USA contend that respondents are guilty of trademark infringement of their registered trademark “S” (within an oval design). Issue: whether or not respondent is guilty of trademark infringement.A. INC. petitioner has registered the trademark "SKECHERS" and the trademark "S" (within an oval design) with the IPO. petitioner-intervenor filed a Petition-in-Intervention with the Court claiming to be the sole licensed distributor of Skechers products here in the Philippines. in determining confusing similarity. 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. vs. Subsequently. Both petitioner and petitioner-intervenor filed separate motions for reconsideration. RTC granted the motion and quashed the search warrants. In determining similarity and likelihood of confusion. 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. http://www. IP Code of the Philippines.. (2) the Holistic or Totality Test which necessitates a consideration of the entirety of the marks as applied to the products.R. INTER PACIFIC INDUSTRIAL TRADING CORP. USA Inc. 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. 8293. mistake. quality.A. but the same was dismissed. Respondents moved to quash the warrants arguing that there was no confusing similarity between petitioner’s "Skechers" rubber shoes and its "Strong" rubber shoes. vs. Petitioner filed a petition for certiorari with the CA which affirmed the decision of the RTC.lawphil. and market segments. Duplication or imitation is not necessary. Inter Pacific et al. sales outlets. 8293 is that the infringing mark is likely to cause confusion. Ruling: Yes. March 23.S. Petitioner’s claim: Skechers. neither is it required that the mark sought to be registered suggests an effort to imitate. 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. 2011. In the course of its business.Case: Skechers. Page nazh//ela//1838 . G. in relation to Section 170 of Republic Act No. Thus. Two search warrants were issued and more than 6.000 pairs of shoes bearing the “S” logo were seized..net/judjuris/juri2011/mar2011/gr_164321_2011. giving little weight to factors like prices. including the labels and packaging. U. Given more consideration are the aural and visual impressions created by the marks on the buyers of goods. The discerning eye of the observer 19 must focus not only on the predominant words. 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. No. The essential element of infringement under R.html SKECHERS.

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

properties and physical attributes.R. 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. http://sc. the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a Page nazh//ela//1838 . 156 to 158. Actions.htm Shangri-La International Hotel Management v. Issue: Whether. otherwise known as the Intellectual Property Code. 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. 2001 Facts: On June 21. CA G. provides. 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.gov. 8293.. as follows – Section 151. 1992. and both are powdered in form. 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. 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. 1992. 111580. On January 8. The Developers Group filed an opposition to the application. et al. Finally. 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. 170) Case: Shangri-La International Hotel Management LTD. Almost 3 years later.ph/jurisprudence/2001/jun2001/111580. which was docketed as Inter Partes Case No. on the ground that the same was illegally and fraudulently obtained and appropriated for the latter's restaurant business. Held: Section 151. vs.. This was denied by the trial court in a Resolution issued on January 16. Notwithstanding the foregoing provisions.2. both are milk products. much earlier than the alleged first use thereof by the Developers Group in 1982.2 of Republic Act No. On the other hand.judiciary. Court of Appeals. 1988. or on April 15. They are also displayed in the milk section. It also filed with the BPTTT its own application for registration of the subject mark and logo. Both are classified under Class 6. et al. 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. Damages and Injunction for Infringement. June 21. Inc. 1991. Intellectual Property Office) by one party. 3529. Sec. the adverse party can file a subsequent action for infringement with the regular courts of justice in connection with the same registered mark. the Developers Group instituted with the RTC of Quezon City a complaint for infringement and damages with prayer for injunction. the Shangri-La International Hotel Management filed with the Bureau of Patents. No.

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

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

shirts. It is likewise not settled whether the wing-shaped logo. 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. 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. In the Philippines. which prompted Clinton Apparelle to file a petition for certiorari. 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. and LSPI are unsure if both or just one of impleaded defendants is behind the manufacture and sale of the “Paddocks” jeans complained of. Page nazh//ela//1838 . However. In sum. To date. LSPI continues to manufacture and sell Dockers Pants with the “Dockers and Design” Trademark. there are vital matters which have yet and may only be established through a full-blown trial. 46619 in the Principal Register for use of said trademark on pants. 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. without their consent. Moreover. 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. skirts. shorts. sale and distribution of various products bearing trademarks owned by LS & Co. Based on their belied. Stated otherwise. 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. 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. blouses. The “Dockers and Design” trademark was first used in the Philippines in or about May 1988. The trial court issued a writ of preliminary injunction. it has a Certificate of Registration No. 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. 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. as opposed to the word mark. 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. if not exactly. since LS & Co. Hence this petition.by prior adoption and use since 1986 of the internationally famous “Dockers and Design” trademark. prohibition and mandamus with the Court of Appeals. (5) the affidavit of one Bernabe Alajar which recounted petitioners’ prior adoption. by LSPI. Whereby the Appellate Court granted the petition of Clinton Apparelle’s petition. holding that the trial court did not follow the procedure required by law. they brought this suit under Sec. This ownership is evidenced by its valid and existing registrations in various member countries if Paris Convention. sweatshirts and jackets under Class 25. (4) the trends MBL Survey Report purportedly proving that there was confusing similarity between two marks. a domestic corporation engaged in the manufacture. they added Clinton Apparelle manufactured and continues to manufacture such “Paddocks” jeans and other apparel. the Court of Appeals strongly believes that the implementation of the questions writ would effectively shut down respondent’s shut down. 13 Rule 3 of the 1997 Rules of Court.

Petitioners also failed to show proof that there is material and substantial invasion of their right to warrant the issuance of an injunctive writ. 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. Subject to the principles of equity. 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. Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services. Goods Bearing Infringing Marks or Trade Names. 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.No article of imported merchandise which shall copy or simulate the name of any domestic product. Unfair competition (Sec.” This is intended to protect famous marks from subsequent uses that blur distinctiveness of the mark or tarnish or disparage it. (2) the use by respondent of “Paddocks and Design” began after the petitioners’ mark became famous. or which shall copy or simulate a mark registered in accordance with the provisions of this Act. regardless of the presence or absence of: (1) competition between the owner of the famous mark and other parties. shall be admitted to entry at any customhouse of the Philippines. or (2) likelihood of confusion. and (3) such subsequent use defames petitioners’ mark. In the absence of proof of a legal right and the injury sustained by the applicant. or shall bear a mark or trade name calculated to induce the public to believe that the article is manufactured in the Philippines. j. or that it is manufactured in any foreign country or locality other than the country or 25 locality where it is in fact manufactured. In the case at bar. 169) Distinguish from Trademark Infringement Section 166. and the name of the locality in which his goods are manufactured. Petitioners wish to impress upon the Court the urgent necessity for injunctive relief. Neither were petitioners able to show any urgent and permanent necessity for the writ to prevent serious damage. 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. 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. any Page person who is entitled to the benefits of this Act. mistake or deception. In order to aid the officers of the customs service in enforcing this prohibition. Conformably. or dealer. From the above discussion. urging that the erosion or dilution of their trademark is protectable. . The right has yet to be determined. there has to be a finding that: (1) the trademark sought to be protected is famous and distinctive. a copy of the certificate of registration of nazh//ela//1838 . Based on the foregoing. the Court of Appeals was correct in setting aside the assailed orders of the trial court. or manufacturer. to be eligible for protection from dilution. we find that petitioners’ right to injunctive relief has not been clearly and unmistakably demonstrated. the Court finds that petitioners did not adequately prove their entitlement to the injunctive writ. 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. 168) Add: False Designation of Origin (Sec. After a careful consideration of the facts and arguments of the parties. if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark.

2. misrepresents the nature. R. it is contrary to public order or morals and if. Trade Names or Business Names. connection. characteristics. or false or misleading representation of fact. 165. 166a) k. in particular. 35. 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.A. False Designations of Origin. 165. . (Sec. 169. 30. or any false designation of origin. or commercial activities by another person. name. or geographic origin of his or her or another person's goods. 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. or (b) In commercial advertising or promotion. false or misleading description of fact. and may furnish to the said Bureau facsimiles of his name. 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. .169. R. or as to the origin. 26 Page nazh//ela//1838 . Trade names or business names (Sec. to be recorded in books which shall be kept for this purpose in the Bureau of Customs. (Sec. importer. against any unlawful act committed by third parties.1. services. The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall apply mutatis mutandis. The owner.165. or commercial activities. on or in connection with any goods or services. or his registered mark or trade name. 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. whether as a trade name or a mark or collective mark. 165) Section 165. likely to mislead the public. False Description or Representation. shall be deemed unlawful. or association of such person with another person. or to cause mistake. or any such use of a similar trade name or mark. or device. or any combination thereof. such names shall be protected.his mark or trade name. services.A. it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name. even prior to or without registration. uses in commerce any word. No. any subsequent use of the trade name by a third party.1. (b) In particular. under such regulations as the Collector of Customs with the approval of the Secretary of Finance shall prescribe. Any person who. symbol.2. or to deceive as to the affiliation. term. or approval of his or her goods. sponsorship. or any container for goods. qualities.3. 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. which: (a) Is likely to cause confusion. the name of the locality in which his goods are manufactured. No.(a) Notwithstanding any laws or regulations providing for any obligation to register trade names. 166) Section 169.

html Converse Rubber Corporation vs Universal Rubber Products. G.” A corporation is entitled to the cancellation of a mark that is confusingly similar to its corporate name. Converse has been operating since 1946. L-27906 January 8. Inc. The trademark of “UNIVERSAL CONVERSE and DEVICE” is imprinted in a circular manner on the side of its rubber shoes. Universal Rubber has been operating since 1963. 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. In the same manner. Service Marks and Trade Names – Trade Name Infringement Facts: Converse Rubber Corporation is an American corporation while Universal Rubber Products.4 shall apply mutatis mutandis. 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.R. Universal Rubber Page admitted Converse Rubber’s existence since 1946 as a duly organized foreign corporation engaged nazh//ela//1838 . 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.net/judjuris/juri1987/jan1987/gr_l_27906_1987. Case: Converse Rubber vs Universal Rubber. 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. From a cursory appreciation of the corporate name of “CONVERSE RUBBER 27 CORPORATION. the trademark of Converse Rubber which reads “CONVERSE CHUCK TAYLOR” is imprinted on a circular base attached to the side of its rubber shoes.2 to 149. Later. 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.4. 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. Inc. Appropriation by another of the dominant part of a corporate name is an infringement. No. for purposes of the law. The provisions of Subsections 149. any ordinary. 147 SCRA 154 – Mercantile Law – Intellectual Property Law – Law on Trademarks. HELD: YES.lawphil.’ it is evident that the word “CONVERSE” is the dominant word which identifies Converse Rubber from other corporations engaged in similar business. It would be sufficient. is a corporation licensed to do business in the country.” Even if not all the details just mentioned were identical. or even perhaps even [sic] a not too perceptive and discriminating customer could be deceived. 1987. The Director of Patents did not grant the opposition by Converse Rubber.165. http://www. Universal Rubber filed an application for the trademark “Universal Converse and Device” before the Philippine Patent Office. with the general appearance alone of the two products.

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

required registration of a trade name as a condition for the institution of an infringement suit.167.2. 166) Section 166. In order to aid the officers of the customs service in enforcing this prohibition. 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." trade name. applying the dominancy test or the holistic test. and (5) It is without the consent of the trademark or trade name owner or the assignee thereof. (Sec. 167) 121. except that references therein to "mark" shall be read as "collective mark". or which shall copy or simulate a mark registered in accordance with the provisions of this Act. or manufacturer.2 of RA 8293 categorically states that trade names shall be protected. Clearly.12cЃa as amended. or dealer. against any unlawful act x x x. R. R. or shall bear a mark or trade name calculated to induce the public to believe that the article is manufactured in the Philippines. or advertisements intended to be used upon or in connection with such goods. Also. petitioners "SAN FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN FRANCISCO COFFEE & ROASTERY. Collective Marks.A. Goods Bearing Infringing Marks or Trade Names. Sections 122 to 29 164 and 166 shall apply to collective marks. (3) The infringing mark or trade name is used in connection with the sale. a copy of the certificate of registration of his mark or trade name. INC. 166. 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. Page nazh//ela//1838 . or services. business or services. Goods bearing infringing marks or trade names (Sec. However.1. receptacles. and the name of the locality in which his goods are manufactured. 40. the name of the locality in which his goods are manufactured. 121. or his registered mark or trade name. may require that his name and residence. . prints. No. "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. Section 165. All that is required is that the trade name is previously used in trade or commerce in the Philippines. and may furnish to the said Bureau facsimiles of his name. RA 8293.No article of imported merchandise which shall copy or simulate the name of any domestic product. or advertising of any goods. shall be admitted to entry at any customhouse of the Philippines.2 in relation to Sec. signs. to be recorded in books which shall be kept for this purpose in the Bureau of Customs. Subject to Subsections 167. under such regulations as the Collector of Customs with the approval of the Secretary of Finance shall prescribe. 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. offering for sale. or that it is manufactured in any foreign country or locality other than the country or locality where it is in fact manufactured. l. Collective marks (Sec. or the infringing mark or trade name is applied to labels. business.A. 166a) Section 167. wrappers. 166) m. No. packages. Section 22 of Republic Act No. any person who is entitled to the benefits of this Act. (Sec. (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. .3. 35.2 and 167. even prior to or without registration with the IPO.

business or services so identified. who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer. or his business.2.3. other than the actual manufacturer or dealer. which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer.2. Unfair Competition. if any. nazh//ela//1838 .3. Page business or services of another. governing the use of the collective mark. 168. or services for those of the one having established such goodwill. or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose. or the devices or words thereon. either as to the goods themselves or in the wrapping of the packages in which they are contained. whether or not a registered mark is employed.A. The registration of a collective mark. 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. or device. 167. and shall be subject to an action therefor.1. In addition to the grounds provided in Section 149. 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. or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. A person who has identified in the mind of the public the goods he manufactures or deals in.(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. In particular. Unfair Competition. Regulation and Remedies. Rights. 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. (Sec. or an application therefor shall not be the subject of a license contract. 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. 40.167. or in any other feature of their appearance.4. (b) Any person who by any artifice. No.168. . Regulation and Remedies (Sec. 166a) n.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. shall be guilty of unfair competition. his business or services from those of others. R. has a property right in the goodwill of the said goods. the following shall be deemed guilty of unfair competition: (a) Any person. or who shall commit any acts calculated to produce said result. (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). and without in any way limiting the scope of protection against unfair competition. 168) Section 168. 167. 168. or that he uses or permits its use in contravention of the agreements referred to in Subsection 166. which will be protected in the same manner as other property rights. Rights.

vs Sehwani. was able to use the registered mark of respondent Sehwani. 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. Incorporated filed with the then Bureau of Patents. Issue: Whether respondent Sehwani Incorporated is liable for unfair competition.” Petitioner later found out that respondent Sehwani. No. a certificate of registration of the said mark was issued in the name of respondent Sehwani. but expressed willingness to surrender the registration of respondent Sehwani.168.” Upon approval of its application. 166a) Case: In-N-Out Burger. respondent Sehwani. http://sc. Benita Frites. 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. R.R. Incorporated. Inc. Inc G. 29. Held: Yes. Incorporated of the “IN N OUT” trademark for a fair and reasonable consideration. misleading ordinary and unsuspecting consumers that they are purchasing petitioner’s products. Actual fraudulent intent need not be shown. asserted that they had been using the mark “IN N OUT” in the Philippines since 15 October 1982. Incorporated on 17 December 1993.judiciary. 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). 2008. on the other hand. 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. 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. Page nazh//ela//1838 . The restaurant opened only in 2000 but under the name IN-N-OUT BURGER. Inc vs Sehwani.A.ph/jurisprudence/2008/december2008/179127. Petitioner filed an administrative complaint against respondents for unfair competition and cancellation of trademark registration. Respondents. Petitioner claimed that respondents are making it appear that their goods and services are those of the petitioner. Petitioner averred that it is the owner of the trade name IN- N-OUT. The respondents refused to accede to petitioner’s demand. Apparently. Incorporated had already obtained Trademark Registration for the mark “IN N OUT (the inside of the letter “O” formed like a star). The remedies provided by Sections 156.R. 157 and 161 shall apply mutatis mutandis. 179127. On 15 November 1991. (Sec. No.htm In-n-out Burger Inc. 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.4.” By virtue of a licensing agreement.gov. The evidence on record shows that the respondents were not using their registered trademark but that of the petitioner. 179127 : December 24. 2008 Facts: On 2 June 1997. 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. No. December 24. thus. Incorporated and/or Benita’s Frites G.

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

there is no justification for severely curtailing the rights of a person to his property. petition denied. 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. if any. 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.denied. The Joint Resolution of the DOJ has become final. Petitioner then filed Motion for Partial Reconsideration but was denied by the TC. among others. and respondent did not dispute that these were obtained from his stores. which made use of the trademarks in dispute. that were seized had little. and photographs thereof had been made part of the records. Also. In the case at hand the respondent already admitted the existence of the seized articles. the numerous articles of clothing. evidentiary value for the criminal action of unfair competition. Also. In the case at hand there is no criminal action that has been filed. 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. 2) NO. 33 Page nazh//ela//1838 . 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. so that purchasers desiring to buy the goods of the latter would be induced to buy the goods of the former. Hence. the seized articles should be immediately released. therefore there is no more need for the court to take custody of the countless articles that were seized. Where the purpose of presenting as evidence the articles seized is no longer served. therefore no criminal case was filed against the respondent in relation with the five search warrants that were issued by the Trial Court. 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. 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. However. (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. The Court therefore was left with no custody of the highly depreciable merchandise that were seized. color and general appearance of the package used by the pioneer manufacturer or dealer. More importantly. the Court ordered the release of the articles that were seized since there was no criminal action filed against the respondent. There was also no criminal case filed against the articles that were seized. (3) actual samples of the respondent’s merchandise are in the possession of the police officers who had applied for the search warrant. The most usual devices employed in committing this crime are the simulation of labels and the reproduction of form. With these.

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

Here. What the CA appears to have disregarded or been mistaken in its disquisition.” Secondary meaning is established when a descriptive mark no longer causes the public to associate the goods with a particular place. unfair competition. Criminal penalties for infringement. FRANCIS” which thus bars its exclusive appropriability. there can be no unfair competition. but to associate the goods with a particular source.S. or the intent to deceive. then the geographic term is probably used in a descriptive sense. 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. rivers. however. o. states. and any other location referred to by a recognized name. such as continents. and secondary meaning is required for protection. cities. to believe that the goods for which the mark is sought to be registered originate in that place. hence. FRANCIS. 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. 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. However. areas of cities. In order to determine whether or not the geographic term in question is descriptively used. actual or probable. false designation of origin. 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. 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. it is therefore essential to prove the existence of fraud. In other words. determined through a judicious scrutiny of the factual circumstances attendant to a particular case.appearance of the goods of his competitor with the intention of deceiving the public that the goods are those of his competitor.” Based on the foregoing. case of Great Southern Bank v. the Court finds the element of fraud to be wanting. The CA’s contrary conclusion was faultily premised on its impression that respondent had the right to the exclusive use of the mark “ST.” for which the latter had purportedly established considerable goodwill. is the geographically descriptive nature of the mark “ST. and false description or misrepresentation 35 Page nazh//ela//1838 . unless a secondary meaning is acquired. streets and addresses. As deftly explained in the U. regions. nations.” 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. A geographically descriptive term can indicate any geographic location on earth. 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.