Compiled Cases for Trademarks

7/22/2019 Compiled Cases for Trademarks

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1 | t h e E L O n o t e s o n T R A D E M A R K c a s e s

Table of Contents1. Diaz vs People of the Philippines and Levi Strauss Phils. Inc. .............................. 2

2. UYCO, et. al. vs Lo .............................................................................................. 4

3. In-&-Out Burger vs. Sehwani .............................................................................. 4

4. McDonalds Corporation vs MacJoy Fastfood Corp. ........................................... 5

5. Levi Strauss vs. Tony Lim .................................................................................... 7

6. Shangri-La International Hotel Management, Ltd., et. al. vs. Developers Group

of Companies Inc. .................................................................................................. 8

7. Coffee Partners, Inc. vs. San Francisco Coffee & Roastery ................................ 10

8. Manuel Espiritu, et. al. vs. Petron Corporation and Kristina Patricia Enterprises

............................................................................................................................. 13

9. Prosource International Inc. vs Horphag Research, S.A. ................................... 13

10. E.Y. Industrial Sales Inc. vs. Shen Dar Electronics and Machinery Co., Ltd. ..... 15

11. Tanada, et. al. vs. Angara, et. al. ..................................................................... 16

12. Mirpuri vs. Court of Appeals, Director of Patents and Barbizon Corp. ............ 18

13. McDonalds Corporation and McGeorge Food Industries vs. L.C. Big Mak

Burger, Inc. .......................................................................................................... 19

14. Mighty Corporation and La Campana Fabrica de Tabaco vs E.&J. Gallo Winery

and The Andresons Group Inc. ............................................................................. 21

15. Societe des Produits Nestle, S.A. vs. CA and CFC Corporation ........................ 24

16. Amigo Manufacturing, Inc. vs Cluett Peabody Co., Inc. .................................. 25

17. Asia Brewery Inc. vs CA and San Miguel Corporation ..................................... 26

18. Societe des Produits Nestle vs Dy ................................................................... 28

19. Fredco Manufacturing Corp. vs. President and Fellows of Harvard College

(Harvard University) ............................................................................................. 29


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1. Diaz vs People of the Philippines and Levi Strauss Phils. Inc.

SUMMARY: Diaz was convicted by RTC, CA upheld, for two counts of infringement

of TM. Diaz was allegedly selling counterfeit LEVIS 501 jeans in his tailoring

shops in Almanza and Talon, Las Pias City, Levis Philippines hired a private

investigation group to verify the information. SC: Acquitted, failure of State toprove his guilt beyond reasonable doubt. No likelihood of confusion between the

trademarks involved. Thereby, the evidence of guilt did not satisfy the quantum

of proof required for a criminal conviction, which is proof beyond reasonable

doubt.

The elements of the offense of trademark infringement under the Intellectual

Property Code are the following:

1. The trademark being infringed is registered in the Intellectual Property

Office;

2. The trademark is reproduced, counterfeited, copied, or colorably

imitated by the infringer;

3. The infringing mark is used in connection with the sale, offering for sale,

or advertising of any goods, business or services; or the infringing mark is

applied to labels, signs, prints, packages, wrappers, receptacles or

advertisements intended to be used upon or in connection with such

goods, business or services;

4. The use or application of the infringing mark is likely to cause confusionor 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; and

5. The use or application of the infringing mark is without the consent of

the trademark owner or the assignee thereof.

As can be seen, the likelihood of confusion is the gravamen of the offense of

trademark infringement.15

There are two tests to determine likelihood of

confusion, namely: the dominancy test, and the holistic test.

The dominancy test focuses on the similarity of the main, prevalent or essential

features of the competing trademarks that might cause confusion. Infringement

takes place when the competing trademark contains the essential features of

another. Imitation or an effort to imitate is unnecessary. The question is whether

the use of the marks is likely to cause confusion or deceive purchasers.
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The holistic test considers the entirety of the marks, including labels and

packaging, in determining confusing similarity. The focus is not only on the

predominant words but also on the other features appearing on the labels.

The holistic test is applicable here considering that the herein criminal cases alsoinvolved trademark infringement in relation to jeans products. Accordingly, the

jeans trademarks of Levis Philippines and Diaz must be considered as a whole in

determining the likelihood of confusion between them. The maong pants or jeans

made and sold by Levis Philippines, which included LEVIS 501, were very popular

in the Philippines. The consuming public knew that the original LEVIS 501 jeans

were under a foreign brand and quite expensive. Such jeans could be purchased

only in malls or boutiques as ready-to-wear items, and were not available in

tailoring shops like those of Diazs as well as not acquired on a "made-to-order"

basis. Under the circumstances, the consuming public could easily discern if thejeans were original or fake LEVIS 501, or were manufactured by other brands of

jeans. Confusion and deception were remote.

Why he isnt guilty:

Diaz used the trademark "LS JEANS TAILORING" for the jeans he produced and

sold in his tailoring shops. His trademark was visually and aurally different from

the trademark "LEVI STRAUSS & CO" appearing on the patch of original jeans

under the trademark LEVIS 501. The word "LS" could not be confused as a

derivative from "LEVI STRAUSS" by virtue of the "LS" being connected to the word"TAILORING", thereby openly suggesting that the jeans bearing the trademark "LS

JEANS TAILORING" came or were bought from the tailoring shops of Diaz, not

from the malls or boutiques selling original LEVIS 501 jeans to the consuming

public.

The prosecution also alleged that the accused copied the "two horse design" of

the petitioner-private complainant but the evidence will show that there was no

such design in the seized jeans. Instead, what is shown is "buffalo design." Again,

a horse and a buffalo are two different animals which an ordinary customer caneasily distinguish

The prosecution further alleged that the red tab was copied by the accused.

However, evidence will show that the red tab used by the private complainant

indicates the word "LEVIS" while that of the accused indicates the letters "LSJT"


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which means LS JEANS TAILORING. Again, even an ordinary customer can

distinguish the word LEVIS from the letters LSJT.

In terms of classes of customers and channels of trade, the jeans products of the

private complainant and the accused cater to different classes of customers andflow through the different channels of trade. The customers of the private

complainant are mall goers belonging to class A and B market group while that

of the accused are those who belong to class D and E market who can only afford

Php 300 for a pair of made-to order pants.

Moreover, based on the certificate issued by the Intellectual Property Office, "LS

JEANS TAILORING" was a registered trademark of Diaz. The Intellectual Property

Office would certainly not have allowed the registration had Diazs trademark

been confusingly similar with the registered trademark for LEVIS 501 jeans.

2. UYCO, et. al. vs Lo

SUMMARY: False Designation of Origin.

The Chief State Prosecutor found probable cause to indict the petitioners for

violation of Section 169.1, in relation with Section 170, of RA 8293. This law

punishes any person who uses in commerce any false designation of origin

which is likely to cause confusion or mistake as to the origin of the product. The

law seeks to protect the public; thus, even if Lo does not have the legal capacity

to sue, the State can still prosecute the petitioners to prevent damage and

prejudice to the public.

The presence of the words "made in Portugal" and "original Portugal" on the

wrappings of the burners and on the burners themselves which are

manufactured by Wintrade is an allusion to the fact that the origin of the design

of said burners can be traced back to Casa Hipolito SA of Portugal, and that the

history of the manufacture of said burners are rooted in Portugal. These words

were not intended to deceive or cause mistake and confusion in the minds of

the buying public.

3. In-&-Out Burger vs. Sehwani

(1) Whether the IPO (administrative bodies) have jurisdiction to cases involving

unfair competition.


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Yes. Sec. 160 and 170, which are found under Part III of the IP Code, recognize the

concurrent jurisdiction of civil courts and the IPO over unfair competition cases.

Therefore, the IPO Director of Legal Affairs have jurisdiction to decide the

petitioner's administrative case against respondents and the IPO Director General

have exclusive jurisdiction over the appeal of the judgment of the IPO Director ofLegal Affairs.

(2) Whether respondent Sehwani is liable of unfair competition

Yes. The evidence on record shows that the respondents were not using their

registered trademark but that of the petitioner. Further, respondents are giving

their products the general appearance that would likely influence purchasers to

believe that these products are those of the petitioner. The intention to deceive

may be inferred from the similarity of the goods as packed and offered for sale,

and, thus, action will lie to restrain such unfair competition. Also, respondentsuse of IN-N-OUT BURGER in businesses signages reveals fraudulent intent to

deceive purchasers.

4. McDonalds Corporation vs MacJoy Fastfood Corp.

Use dominancy test in this case. In determining similarity and likelihood of

confusion, jurisprudence has developed two tests, the dominancy test and the

holistic test. The dominancy test focuses on the similarity of the prevalent

features of the competing trademarks that might cause confusion or deception. In

contrast, the holistic test requires the court to consider the entirety of the marks

as applied to the products, including the labels and packaging, in determining

confusing similarity.

In recent cases with a similar factual milieu as here, the Court has consistently

used and applied the dominancy test in determining confusing similarity or

likelihood of confusion between competing trademarks.

Under the dominancy test, courts give greater weight to the similarity of the

appearance of the product arising from the adoption of the dominant features ofthe registered mark, disregarding minor differences. Courts will consider more 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.

Applying the dominancy test to the instant case, the Court finds that herein

petitioners "MCDONALDS" and respondents "MACJOY" marks are confusingly


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similar with each other such that an ordinary purchaser can conclude an

association or relation between the marks.

There is confusing similarity in the trademark of MacJoy as to refuse its

application. Both marks use the corporate "M" design logo and the prefixes "Mc"

and/or Mac" as dominant features. The first letter "M" in both marks puts

emphasis on the prefixes "Mc" and/or "Mac" by the similar way in which they are

depicted i.e. in an arch-like, capitalized and stylized manner.

It is the prefix "Mc," an abbreviation of "Mac," which visually and aurally catches

the attention of the consuming public.

Both trademarks are used in the sale of fast food products. Indisputably, the

respondents trademark application for the "MACJOY & DEVICE" trademark

covers goods under Classes 29 and 30 of the International Classification of Goods,namely, fried chicken, chicken barbeque, burgers, fries, spaghetti, etc.

McDonalds registered trademark covers goods similar if not identical to those

covered by the respondents application.

Predominant features such as the "M," "Mc," and "Mac" appearing in both

McDonalds marks and the MACJOY & DEVICE" easily attract the attention of

would-be customers. Even non-regular customers of their fastfood restaurants

would readily notice the predominance of the "M" design, "Mc/Mac" prefixes

shown in both marks. Such that the common awareness or perception of

customers that the trademarks McDonalds mark and MACJOY & DEVICE are oneand the same, or an affiliate, or under the sponsorship of the other is not far-

fetched.

By reason of the respondents implausible and insufficient explanation as to how

and why out of the many choices of words it could have used for its trade-name

and/or trademark, it chose the word "MACJOY," the only logical conclusion

deducible therefrom is that the respondent would want to ride high on the

established reputation and goodwill of the MCDONALDs marks, which, as applied

to petitioners restaurant business and food products, is undoubtedly beyondquestion.

When one applies for the registration of a trademark or label which is almost the

same or very closely resembles one already used and registered by another, the

application should be rejected and dismissed outright, even without any

opposition on the part of the owner and user of a previously registered label or


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trademark, this not only to avoid confusion on the part of the public, but also to

protect an already used and registered trademark and an established goodwill.

5. Levi Strauss vs. Tony Lim(Levis Jeans and Lives Jeans case)

Generally, unfair competition consists in employing deception or any other

means contrary to good faith by which any person shall pass off the goods

manufactured by him or in which he deals, or his business, or services for those of

the one having established goodwill, or committing any acts calculated to produce

such result.

In finding that probable

cause for unfair

competition does not exist,the investigating prosecutor

and Secretaries Guingona

and Cuevas arrived at the

same conclusion that there

is insufficient evidence to

prove all the elements of

the crime that would allow

them to secure a

conviction. SecretaryGuingona discounted the

element of actual intent to

deceive by taking into

consideration the

differences in spelling,

meaning, and phonetics

between LIVES and

LEVIS, as well as the fact that respondent had registered his own mark. While it

is true that there may be unfair competition even if the competing mark is

registered in the Intellectual Property Office, it is equally true that the same may

show prima facie good faith. Indeed, registration does not negate unfair

competition where the goods are packed or offered for sale and passed off as

those of complainant. However, the marks registration, coupled with the stark

The elements of unfair competition under Article 189(1) of

the Revised Penal Code are:

(a) That the offender gives his goods the general

appearance of the goods of another manufacturer or

dealer;

(b) That the general appearance is shown in the

(1) goods themselves, or in the

(2) wrapping of their packages, or in the

(3) device or words therein, or in

(4) any other feature of their appearance;

(c) That the offender offers to sell or sells those

goods or gives other persons a chance oropportunity to do the same with a like purpose; and

(d) That there is actual intent to deceive the public

or defraud a competitor.

All these must be proven.


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differences between the competing marks, negate the existence of actual intent

to deceive, in this particular case.

One, there is no striking similarity between the appearance and packaging of the

goods offered for sale. Two, the absence of confusing similarity of the goods

could not give rise to the element of intent to deceive, as similarity or some

semblance does not by itself prove unfair competition. The consumer survey

alone does not equate to actual confusion. The survey was made by showing the

interviewees actual samples of petitioners and respondents respective products,

approximately five feet away from them. From that distance, they were asked to

identify the jeans brand and state the reasons for thinking so. This method

discounted the possibility that the ordinary intelligent buyer would be able to

closely scrutinize, and even fit, the jeans to determine if they were LEVIS or

not. It also ignored that a consumer would consider the price of the competing

goods when choosing a brand of jeans. It is undisputed that LIVES jeans are

priced much lower than LEVIS.We find no reason to go beyond the point of sale

to determine if there is probable cause for unfair competition.

6. Shangri-La International Hotel Management, Ltd., et. al. vs. Developers

Group of Companies Inc.

(See Funas book for the illustration of the S logo by the parties. Or just use your

imagination because you are supposed to have read that. N.B., Shangri-la

connotes a place of absolute bliss in Tibetan tradition and exoticism in the Orient,though the word was actually coined by British author James Hilton in his novel of

the same name.)

All hotels owned, operated and managed by the aforesaid SLIHM Group of

Companies adopted and used the distinctive lettering of the name "Shangri-La" as

part of their trade names. Since 1975 and up to the present, the "Shangri-La"

mark and "S" logo have been used consistently and continuously by all Shangri-La

hotels and companies in their paraphernalia, such as stationeries, envelopes,

business forms, menus, displays and receipts. The Kuok Group and/or petitionerSLIHM caused the registration of, and in fact registered, the "Shangri-La" mark

and "S" logo in the patent offices in different countries around the world. On June

21, 1988, the petitioners filed with the BPTTT a petition, docketed as Inter Partes

Case No. 3145, praying for the cancellation of the registration of the "Shangri-La"

mark and "S" logo issued to respondent DGCI on the ground that the same were

illegally and fraudulently obtained and appropriated for the latter's restaurant


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business. They also filed in the same office Inter Partes Case No. 3529, praying for

the registration of the same mark and logo in their own names. Until 1987 or

1988, the petitioners did not operate any establishment in the Philippines, albeit

they advertised their hotels abroad since 1972. Petitioners also argue that the

respondent's use of the "Shangri-La" mark and "S" logo was in evident bad faithand cannot therefore ripen into ownership, much less registration.

The petitioners accused DGCI of appropriating and illegally using the "Shangri-La"

mark and "S" logo, adding that the legal and beneficial ownership thereof

pertained to SLIHM and that the Kuok Group and its related companies had been

using this mark and logo since March 1962 for all their corporate names and

affairs. In this regard, they point to the Paris Convention for the Protection of

Industrial Property as affording security and protection to SLIHM's exclusive right

to said mark and logo. They further claimed having used, since late 1975, the

internationally-known and specially-designed "Shangri-La" mark and "S" logo for

all the hotels in their hotel chain.

Held: The "S" logo appears nothing like the "Old English" print that the CA makes

it out to be, but is obviously a symbol with oriental or Asian overtones. At any

rate, it is ludicrous to believe that the parties would come up with the exact same

lettering for the word "Shangri-La" and the exact same logo to boot. As correctly

observed by the petitioners, to which we are in full accord:

x x x When a trademark copycat adopts the word portion of another's trademarkas his own, there may still be some doubt that the adoption is intentional. But if

he copies not only the word but also the word's exact font and lettering style

and in addition, he copies also the logo portion of the trademark, the slightest

doubt vanishes. It is then replaced by the certainty that the adoption was

deliberate, malicious and in bad faith.31

It is truly difficult to understand why, of the millions of terms and combination of

letters and designs available, the respondent had to choose exactly the same

mark and logo as that of the petitioners, if there was no intent to take advantage

of the goodwill of petitioners' mark and logo.32

One who has imitated the trademark of another cannot bring an action for

infringement, particularly against the true owner of the mark, because he would

be coming to court with unclean hands.33

Priority is of no avail to the bad faith
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plaintiff. Good faith is required in order to ensure that a second user may not

merely take advantage of the goodwill established by the true owner.

However, since RA 166 was the law in force at the time the case was instituted,

and such was prior to the signing of the Paris Convention, petitioners cannot

claim protection from it. Complaint for infringement is dismissed. The new

Intellectual Property Code (IPC), Republic Act No. 8293, undoubtedly shows the

firm resolve of the Philippines to observe and follow the Paris Convention by

incorporating the relevant portions of the Convention such that persons who may

question a mark (that is, oppose registration, petition for the cancellation thereof,

sue for unfair competition) include persons whose internationally well-known

mark, whether or not registered, is identical with or confusingly similar to or

constitutes a translation of a mark that is sought to be registered or is actually

registered.

7. Coffee Partners, Inc. vs. San Francisco Coffee & Roastery

CPI (2001 registered with SEC) is a local franchise of Virgin Islands-based Coffee

Partners Ltd. San Francisco Coffee & Roastery (1995 registered with SEC) is a local

business engaged in the wholesale and retail of coffee. In June 2001, respondent

discovered that petitioner was about to open a coffee shop under the name "SAN

FRANCISCO COFFEE" in Libis, Quezon City. According to respondent, 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. Mr. David Puyat, president ofpetitioner corporation, testified that the coffee shop in Libis, Quezon City opened

sometime in June 2001 and that another coffee shop would be opened in

Glorietta Mall, Makati City. He stated that the coffee shop was set up pursuant to

a franchise agreement executed in January 2001 with CPL, a British Virgin Island

Company owned by Robert Boxwell. Mr. Puyat said he became involved in the

business when one Arthur Gindang invited him to invest in a coffee shop and

introduced him to Mr. Boxwell. For his part, Mr. Boxwell attested that the coffee

shop "SAN FRANCISCO COFFEE" has branches in Malaysia and Singapore. He said

they decided to invest in a similar venture and adopted the name "SANFRANCISCO COFFEE" from the famous city in California where he and his former

colleagues once lived and where special coffee roasts came from.

The BLA-IPO held that petitioners trademark infringed on respondents trade

name. It ruled that the right to the exclusive use of a trade name with freedom

from infringement by similarity is determined from priority of adoption. Since


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What constitutes infringement of an unregistered trade name:

(1) The trademark being infringed is registered in the Intellectual Property Office;however, in infringement of trade name, the same need not be registered;(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably

imitated by the infringer;(3) The infringing mark or trade name is used in connection with the sale, offering forsale, or advertising of any goods, business or services; or the infringing mark or tradename is applied to labels, signs, prints, packages, wrappers, receptacles, oradvertisements intended to be used upon or in connection with such goods, business,or services;(4) The use or application of the infringing mark or trade name is likely to causeconfusion or mistake or to deceive purchasers or others as to the goods or servicesthemselves or as to the source or origin of such goods or services or the identity ofsuch business; and(5) It is without the consent of the trademark or trade name owner or the assigneethereof.

respondent registered its business name with the DTI in 1995 and petitioner

registered its trademark with the IPO in 2001 in the Philippines and in 1997 in

other countries, then respondent must be protected from infringement of its

trade name. The BLA-IPO held that petitioners use of the trademark "SAN

FRANCISCO COFFEE" will likely cause confusion because of the exact similarity insound, spelling, pronunciation, and commercial impression of the words "SAN

FRANCISCO" which is the dominant portion of respondents trade name and

petitioners trademark.

The sole issue is whether petitioners use of the trademark "SAN FRANCISCO

COFFEE" constitutes infringement of respondents trade name "SAN FRANCISCO

COFFEE & ROASTERY, INC.," even if the trade name is not registered with the

Intellectual Property Office (IPO).

Held: Infringement found. 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. All that is required is that the trade name is previously

used in trade or commerce in the Philippines.


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Applying either the dominancy test or the holistic test, petitioners "SAN

FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN

FRANCISCO COFFEE & ROASTERY, INC." trade name. The descriptive words "SAN

FRANCISCO COFFEE" are precisely the dominant features of respondents trade

name. Petitioner and respondent are engaged in the same business of sellingcoffee, whether wholesale or retail. The likelihood of confusion is higher in cases

where the business of one corporation is the same or substantially the same as

that of another corporation. In this case, the consuming public will likely be

confused as to the source of the coffee being sold at petitioners coffee shops.

Petitioners argument that "San Francisco" is just a proper name referring to the

famous city in California and that "coffee" is simply a generic term, is untenable.

Respondent has acquired an exclusive right to the use of the trade name "SAN

FRANCISCO COFFEE & ROASTERY, INC." since the registration of the business

name with the DTI in 1995. Thus, respondents use of its trade name from then onmust be free from any infringement by similarity. Of course, this does not mean

that respondent has exclusive use of the geographic word "San Francisco" or the

generic word "coffee." Geographic or generic words are not, per se, subject to

exclusive appropriation. It is only the combination of the words "SAN FRANCISCO

COFFEE," which is respondents trade name in its coffee business, that is

protected against infringement on matters related to the coffee business to avoid

confusing or deceiving the public.

168.3. In particular, and without in any way limiting the scope of protection against unfair

competition, the following shall be deemed guilty of unfair competition:

a. Any person, who is selling his goods and gives them the general appearance of goods

of another manufacturer or dealer, either as to the goods themselves or in the wrapping

of the packages in which they are contained, or the devices or words thereon, or in any

other feature of their appearance, which would be likely to influence purchasers to

believe that the goods offered are those of a manufacturer or dealer, other than the

actual manufacturer or dealer, or who otherwise clothes the goods with such appearance

as shall deceive the public and defraud another of his legitimate trade, or any subsequent

vendor of such goods or any agent of any vendor engaged in selling such goods with a

like purpose;

b. Any person who by any artifice, or device, or who employs any other means calculatedto induce the false belief that such person is offering the services of another who has

identified such services in the mind of the public; or

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,

business or services of another.


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8. Manuel Espiritu, et. al. vs. Petron Corporation and Kristina Patricia

Enterprises(Captured Tanks case)

Gasul and other Petron products are solely distributed in Sorsogon by KPE. Bicol

Gas is also in the gas distribution business. In the course of trade and competition,

any given distributor of LPGs at times acquired possession of LPG cylinder tanks

belonging to other distributors operating in the same area, called "captured

cylinders." KPE alleges that Bicol Gas illegally refills the captured Gasul tanks and

then sells these. Bicol gas was sued by KPE for illegal filling up of registered

cylinder tanks, trademark infringement and unfair competition. HELD: There is no

showing that Bicol Gas has been giving its LPG tanks the general appearance of

the tanks of Petrons Gasul. As already stated, the truckfull of Bicol Gas tanks that

the KPE manager arrested on a road in Sorsogon just happened to have mixed up

with them one authentic Gasul tank that belonged to Petron. Essentially, what

the law punishes is the act of giving ones goods the general appearance of the

goods of another, which would likely mislead the buyer into believing that such

goods belong to the latter. Examples of this would be the act of manufacturing or

selling shirts bearing the logo of an alligator, similar in design to the open-jawed

alligator in La Coste shirts, except that the jaw of the alligator in the former is

closed, or the act of a producer or seller of tea bags with red tags showing the

shadow of a black dog when his competitor is producing or selling popular tea

bags with red tags showing the shadow of a black cat.

9. Prosource International Inc. vs Horphag Research, S.A. (PCO-GENOLS andPYCOGENOLS case)

Respondent Horphag Research Management SA is the owner of trademark

PYCNOGENOL, a food supplement. Respondent later discovered that petitioner

Prosource International, Inc. was also distributing a similar food supplement using

the mark PCO-GENOLS from 1996 to 2000, prompting respondent to demand that

petitioner cease and desist from using the aforesaid mark. Without notifying

respondent, petitioner discontinued the use of, and withdrew from the market,

the products under the name PCO-GENOLS as of June 19, 2000. It likewise

changed its mark from PCO-GENOLS to PCO-PLUS.

The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-

GENOLS have the same suffix "GENOL" which appears to be merely descriptive

and thus open for trademark registration by combining it with other words. The

trial court, likewise, concluded that the marks, when read, sound similar and


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thus confusingly similar especially since they both refer to food supplements.

The court added that petitioners liability was not negated by its act of pulling

out of the market the products bearing the questioned mark since the fact

remains that from 1996 until June 2000, petitioner had infringed respondents

product by using the trademark PCO-GENOLS. CA affirmed, SC affirmed.

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. Inarguably, a trademark deserves protection.

Infringement, what constitutes. Any person who shall use, without the consent

of the registrant, any reproduction, counterfeit, copy or colorable imitation of any

registered mark or tradename in connection with the sale, offering for sale, or

advertising of any goods, business or services on or in connection with which suchuse 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; or

reproduce, counterfeit, copy of colorably imitate any such mark or tradename

and apply such reproduction, counterfeit, copy or colorable imitation to labels,

signs, prints, packages, wrappers, receptacles or advertisements intended to be

used upon or in connection with such goods, business, or services, shall be liable

to a civil action by the registrant for any or all of the remedies herein provided.

It is the element of "likelihood of confusion" that is the gravamen of trademarkinfringement. But "likelihood of confusion" is a relative concept.

The Dominancy Test focuses on the similarity of the prevalent features of the

competing trademarks that might cause confusion and deception, thus

constituting infringement. If the competing trademark contains the main,

essential and dominant features of another, and confusion or deception is likely

to result, infringement takes place. Duplication or imitation is not necessary; nor

is it necessary that the infringing label should suggest an effort to imitate. 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. Courts will consider

more 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.


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The Holistic Test entails a consideration of the entirety of the marks as applied

to the products, including the labels and packaging, in determining confusing

similarity. 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 confusinglysimilar to the other.

10. E.Y. Industrial Sales Inc. vs. Shen Dar Electronics and Machinery Co.,

Ltd.

EYIS is a domestic corporation engaged in the production, manufacture, sales and

distribution of air compressors, etc. Shen Dar is a Taiwan-based foreign

corporation engaged in the manufacture of air compressors. Both companies

claim to have the right to register the trademark VESPA for air compressors.

1997Shen Dar applied with IPO to register VESPA, Chinese characters and

devise for use on air compressors and welding machines; 2007 approved, COR

received

1999EYIS applied with IPO to register VESPA for use on air compressors; 2004

approved, COR received

Shen Dar thus filed a Petition for Cancellation of EYIS COR with the BLA, arguingthat EYIS is a mere distributor of air compressors bearing the mark VESPA which

it imported from Shen Dar. It further argued that it had prior and exclusive right

to use VESPA in the Philippines under the Paris Convention.

EYIS denied Shen Dars claims, saying it has been the sole assembler and

fabricator of VESPA air compressors since the early 90s. They further contend

that Shen Dar supplied them SD air compressors, and that Shen Dar is not the

owner of the mark and thus could not seek protection from the Paris Convention

or the IP Code.

BLA, IP Director-General, found for EYIS and cancelled Shen Dars COR. CA

reversed IPO.

Issue 1. If IPO Director General can validly cancel Shen Dars COR.Yes, SC

upholds IPO-DGs statement: the interest of justice requires that Certificate of


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Registration No. 4-1997-121492 be cancelled. While the normal course of

proceedings should have been the filing of a petition for cancellation of

Certificate of Registration No. 4-1997-121492, that would involve critical facts

and issues that have already been resolved in this case. To allow the Applicant to

still maintain in the Trademark Registry Certificate of Registration No. 4-1997-121492 would nullify the exclusive rights of Appellee as the true and registered

owner of the mark VESPA and defeat the purpose of the trademark registration

system.

Issue 2.Ownership of the VESPA mark.Based on the evidence, EYIS owns the

VESPA trademark; it has prior use, as shown by various sales invoices.

Ownership of a mark or trade name may be acquired not necessarily by

registration but by adoption and use in trade or commerce. As between actual

use of a mark without registration, and registration of the mark without actualuse thereof, the former prevails over the latter. For a rule widely accepted and

firmly entrenched, because it has come down through the years, is that actual use

in commerce or business is a pre-requisite to the acquisition of the right of

ownership. It is non sequitur to hold that porque EYIS is a distributor, it is no

longer the owner.

11. Tanada, et. al. vs. Angara, et. al. (Constitutionality of our signing the GATT WTOAgreement)

Issue 1: If the Philippines signing of the WTO Agreement is unconstitutional onthe ground that it violates the Filipino-first policy of the Consti. Court held:

We are not pursuing an isolationist economic policy. The Constitution takes into

account the realities of the outside world as it requires the pursuit of "a trade

policy that serves the general welfare and utilizes all forms and arrangements of

exchange on the basis of equality ad reciprocity"; and speaks of industries "which

are competitive in both domestic and foreign markets" as well as of the

protection of "Filipino enterprises against unfair foreign competition and trade

practices."Economic nationalism should be read with other constitutionalmandates to attain balanced development of economy. The constitutional policy

of a "self-reliant and independent national economy" 35 does not necessarily rule

out the entry of foreign investments, goods and services. It contemplates neither

"economic seclusion" nor "mendicancy in the international community."

Issue 2: The WTO Agreement and Judicial Power.


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A WTO Member is required to provide a rule of disputable (not the words "in

the absence of proof to the contrary") presumption that a product shown to be

identical to one produced with the use of a patented process shall be deemed to

have been obtained by the (illegal) use of the said patented process, (1) where

such product obtained by the patented product is new, or (2) where there is"substantial likelihood" that the identical product was made with the use of the

said patented process but the owner of the patent could not determine the exact

process used in obtaining such identical product. Hence, the "burden of proof"

contemplated by Article 34 should actually be understood as the duty of the

alleged patent infringer to overthrow such presumption. Such burden, properly

understood, actually refers to the "burden of evidence" (burden of going forward)

placed on the producer of the identical (or fake) product to show that his product

was produced without the use of the patented process.

The foregoing notwithstanding, the patent owner still has the "burden of proof"

since, regardless of the presumption provided under paragraph 1 of Article 34,

such owner still has to introduce evidence of the existence of the alleged identical

product, the fact that it is "identical" to the genuine one produced by the

patented process and the fact of "newness" of the genuine product or the fact of

"substantial likelihood" that the identical product was made by the patented

process.

The foregoing should really present no problem in changing the rules of evidence

as the present law on the subject, Republic Act No. 165, as amended, otherwise

known as the Patent Law, provides a similar presumption in cases of infringement

of patented design or utility model, thus:

Sec. 60. Infringement. Infringement of a design patent or of a

patent for utility model shall consist in unauthorized copying of the

patented design or utility model for the purpose of trade or industry

in the article or product and in the making, using or selling of the

article or product copying the patented design or utility

model. Identity or substantial identity with the patented design or

utility model shall constitute evidence of copying.

Moreover, it should be noted that the requirement of Article 34 to provide a

disputable presumption applies only if (1) the product obtained by the patented

process in NEW or (2) there is a substantial likelihood that the identical product


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was made by the process and the process owner has not been able through

reasonable effort to determine the process used. Where either of these two

provisos does not obtain, members shall be free to determine the appropriate

method of implementing the provisions of TRIPS within their own internal

systems and processes..

So too, since the Philippine is a signatory to most international conventions on

patents, trademarks and copyrights, the adjustment in legislation and rules of

procedure will not be substantial.

12. Mirpuri vs. Court of Appeals, Director of Patents and Barbizon Corp.

The trademark BARBIZON was (fraudulently) registered in the Philippines by one

Lolita R. Escobar under Registration No. 21920, issued on September 11, 1974. Byapplying for a re-registration of the mark BARBIZON subject of this opposition,

respondent-applicant seeks to perpetuate the fraud and criminal act committed

by Lolita Escobar. The trademark applied for by respondent applicant is identical

to Opposer's BARBIZON trademark and constitutes the dominant part of

Opposer's two other marks namely, BARBIZON and Bee design and BARBIZON and

a Representation of a Woman. The continued use by respondent-applicant of

Opposer's trademark BARBIZON on goods belonging to Class 25 constitutes a

clear case of commercial and criminal piracy and if allowed registration will

violate not only the Trademark Law but also Article 189 of the Revised Penal Codeand the commitment of the Philippines to an international treaty. On November

26, 1991, the DTI, Office of Legal Affairs, cancelled petitioner's certificate of

registration, and declared private respondent the owner and prior user of the

business name "Barbizon International."

The Convention of Paris for the Protection of Industrial Property is a multi-lateral

treaty which the Philippines bound itself to honor and enforce in this country. As

to whether or not the treaty affords protection to a foreign corporation against a

Philippine applicant for the registration of a similar trademark is the principalissue in this case.

Yes. The essential requirement under Article 6bis is that the trademark to be

protected must be "well-known" in the country where protection is sought. The

power to determine whether a trademark is well-known lies in the "competent

authority of the country of registration or use." This competent authority would


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Elos Gist: It matters not how long one has used an illegally acquired

trademark. If its an infringement of a well-known mark, no amount of time

can vest ownership of the mark upon the infringer.

be either the registering authority if it has the power to decide this, or the

courts of the country in question if the issue comes before a court.

In the Villafuerte Memorandum, the Minister of Trade instructed the Director of

Patents to reject all pending applications for Philippine registration of signatureand other world-famous trademarks by applicants other than their original

owners or users. The Minister enumerated several internationally-known

trademarks and ordered the Director of Patents to require Philippine registrants

of such marks to surrender their certificates of registration.

In the Ongpin Memorandum, the Minister of Trade and Industry did not

enumerate well-known trademarks but laid down guidelines for the Director of

Patents to observe in determining whether a trademark is entitled to protection

as a well-known mark in the Philippines under Article 6bis of the Paris Convention.

This was to be established through Philippine Patent Office procedures in inter

partes and ex parte cases pursuant to the criteria enumerated therein. The

Philippine Patent Office was ordered to refuse applications for, or cancel the

registration of, trademarks which constitute a reproduction, translation or

imitation of a trademark owned by a person who is a citizen of a member of the

Union. All pending applications for registration of world-famous trademarks by

persons other than their original owners were to be rejected forthwith. The

Ongpin Memorandum was issued pursuant to Executive Order No. 913 dated

October 7, 1983 of then President Marcos which strengthened the rule-making

and adjudicatory powers of the Minister of Trade and Industry for the effective

protection of consumers and the application of swift solutions to problems in

trade and industry.

13. McDonalds Corporation and McGeorge Food Industries vs. L.C. Big

Mak Burger, Inc.

Summary: Petition granted, RTC ruling upheldliable for trademark infringement

and unfair competition.


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Dominancy test applied. Respondents' use of the "Big Mak" mark results in

likelihood of confusion.

First, "Big Mak" sounds exactlythe same as "Big Mac."

Second, the first word in "Big Mak" is exactlythe same as the first word in"Big Mac."

Third, the first two letters in "Mak" are the same as the first two letters in

"Mac."

Fourth, the last letter in "Mak" while a "k" sounds the same as "c" when the

word "Mak" is pronounced.

Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus "Caloocan" is

spelled "Kalookan."

The Court finds that petitioners have duly established McDonald's exclusive

ownership of the "Big Mac" mark. Obviously the Justices have at some point

eaten at McDo. Lulz.

To establish trademark infringement, the following elements must be shown:

(1) the validity of plaintiff's mark;

(2) the plaintiff's ownership of the mark; and

(3) the use ofthe mark or its colorable imitation by the alleged infringer

results in "likelihood of confusion."

Of these, it is the element oflikelihood of confusion that is the gravamen of

trademark infringement.

A mark is valid if it is "distinctive" and thus not barred from registration under

Section 436

of RA 166 ("Section 4"). However, once registered, not only the mark's

validity but also the registrant's ownership of the mark is prima facie presumed.

The "Big Mac" mark, which should be treated in its entirety and not dissectedword for word,

39is neither generic nor descriptive. Generic marks are commonly

used as the name or description of kind ofgoods,40

such as "Lite" for beer41

or

"Chocolate Fudge" for chocolate soda drink.42

Descriptive marks, on the other

hand, convey the characteristics,functions, qualities or ingredients of a product

to one who has never seen it or does not know it exists ,43

such as "Arthriticare"

for arthritis medication.44

On the contrary, "Big Mac" falls
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under the class offanciful or arbitrary marks as it bears no logical relation to

the actualcharacteristics of the product it represents.45

As such, it is highly

distinctive and thus valid. Significantly, the trademark "Little Debbie" for snack

cakes was found arbitrary or fanciful.46

While there is confusion of goods when the products are competing, confusion of

business exists when the products are non-competing but related enough to

produce confusion of affiliation.53

Section 22 covers two types of confusion arising

from the use ofsimilar or colorable imitation marks, namely, confusion of goods

(product confusion) and confusion of business (source or origin confusion).

14. Mighty Corporation and La Campana Fabrica de Tabaco vs E.&J. Gallo

Winery and The Andresons Group Inc.

1. Petition granted, reversing RTC, CA which found Mighty and La Campana liable

for trademark infringement and unfair competition (use of Gallo in their ciggy

products na registered trademark ng Gallo Winery na based sa US at ng

Andersons Group na sole distributor nito).

Petitioners use of the GALLO cigarette trademark is not likely to cause confusion

or mistake, or to deceive the "ordinarily intelligent buyer" of either wines or

cigarettes or both as to the identity of the goods, their source and origin, or

identity of the business of petitioners and respondents. Tobacco and alcoholproducts may be considered related only in cases involving special

circumstanceswhich exist only if a famous mark is involved and there is a

demonstrated intent to capitalize on it. Both of these are absent in the present

case.

Also, we find that petitioners never attempted to pass off their cigarettes as those

of respondents. There is no evidence of bad faith or fraud imputable to

petitioners in using their GALLO cigarette mark.

The Gallo wine trademark is not a well-known mark in the context of the Paris

convention, since wines and ciggies are not identical or similar goods.
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Guidelines in the implementation of Article 6bis

of the Treaty of Paris. These

conditions are:

a) the mark must be internationally known;

b) the subject of the right must be a trademark, not a patent or copyright oranything else;

c) the mark must be for use in the same or similar kinds of goods; and

d) the person claiming must be the owner of the mark (The Parties

Convention Commentary on the Paris Convention. Article by Dr. Bogsch,

Director General of the World Intellectual Property Organization, Geneva,

Switzerland, 1985)

2. Difference of infringement and unfair competition

Infringement Unfair Competition

Unauthorized use of

trademark

Definition Passing off of ones

goods as anothers

Unnecessary Fraudulent intent Essential to establish this

Essential to establish this Prior registration of

trademark

Unnecessary to establish

this

3. Two types of confusion

Confusion of goodswhen an otherwise prudent purchaser is induced to

purchase one product in the belief that he is purchasing another, in which case

defendants goods are then bought as the plaintiffs and its poor quality reflects

badly on the plaintiffs reputation

Confusion of businesswherein the goods of the parties are different but the

defendants product can reasonably (though mistakenly) be assumed to originatefrom the plaintiff, thus deceiving the public into believing that there is some

connection between the plaintiff and defendant which, in fact, does not exist.66
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In determining the likelihood of confusion, the Court must consider:

[a] the resemblance between the trademarks;

[b] the similarity of the goods to which the trademarks are attached;

[c] the likely effect on the purchaser and[d] the registrants express or implied consent and other fair and equitable

considerations.

The Dominancy Test focuses on the similarity of the prevalent features of the

competing trademarks which might cause confusion or deception, and thus

infringement. If the competing trademark contains the main, essential or

dominant features of another, and confusion or deception is likely to result,

infringement takes place. Duplication or imitation is not necessary; nor is it

necessary that the infringing label should suggest an effort to imitate. Thequestion is whether the use of the marks involved is likely to cause confusion or

mistake in the mind of the public or deceive purchasers.80

The Holistic Test requires that the entirety of the marks in question be

considered in resolving confusing similarity. Comparison of words is not the only

determining factor. 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 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.

4. In resolving whether goods are related,96

several factors come into play:

(a) the business (and its location) to which the goods belong

(b) the class of product to which the goods belong

(c) the product's quality, quantity, or size, including the nature of the package,

wrapper or container97

(d) the nature and cost of the articles98(e) the descriptive properties, physical attributes or essential characteristics with

reference to their form, composition, texture or quality

(f) the purpose of the goods99

(g) whether the article is bought for immediate consumption,100

that is, day-to-

day household items101
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(h) the fields of manufacture102

(i) the conditions under which the article is usually purchased103

and

(j) the channels of trade through which the goods flow,104

how they are

distributed, marketed, displayed and sold.

15. Societe des Produits Nestle, S.A. vs. CA and CFC Corporation

Summary: Bureau of Patents, Trademarks and Technology transfer denied the

registration of CFC Corporations Flavor Master for instant coffee when Nestle

objected; Nestle products include Master Roast and Master Blend for instant

coffee as well. CFCs trademark FLAVOR MASTER carries the colors orange and

mocha while that of Nestles uses red and brown. Court of Appeals reversed

BPTTT, saying that there is no confusion between the two. Hence, the question in

this case is whether there is a likelihood that the trademark FLAVOR MASTERmay cause confusion or mistake or may deceive purchasers that said product is

the same or is manufactured by the same company. In other words, the issue is

whether the trademark FLAVOR MASTER is a colorable imitation of the

trademarks MASTER ROAST and MASTER BLEND.

Generic terms25

are those which constitute "the common descriptive name of an

article or substance," or comprise the "genus of which the particular product is

a species," or are "commonly used as the name or description of a kind of

goods," or "imply reference to every member of a genus and the exclusion ofindividuating characters," or "refer to the basic nature of the wares or services

provided rather than to the more idiosyncratic characteristics of a particular

product," and are not legally protectable.

Descriptive terms are invalid as a trademark if, as understood in its normal and

natural sense, it "forthwith conveys the characteristics, functions, qualities or

ingredients of a product to one who has never seen it and does not know what

it is," or "if it forthwith conveys an immediate idea of the ingredients, qualities

or characteristics of the goods," or if it clearly denotes what goods or servicesare provided in such a way that the consumer does not have to exercise powers

of perception or imagination.

N.B.: Mas lenient ang court pag gamot na ginagamit ng mga vet or other

specialists, viz. trademarks. --> This Court held that the addition of the syllable

"INE" in respondents label is sufficient to distinguish respondents product or
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trademark from that of petitioner. Also, both products are for medicinal

veterinary use and the buyer will be more wary of the nature of the product he is

buying. In any case, both products are not identical as SULMETs label indicates

that it is used in a drinking water solution while that of SULMETINE indicates that

they are tablets.

16. Amigo Manufacturing, Inc. vs Cluett Peabody Co., Inc.

Summary: Amigo makes Gold Top socks and tries to register its trademark sa

Bureau of Patents; TM has dominant white color at the center, with black-brown

background and a magnified design of the sock garter, and the name Amigo

Manufacturing Inc. on the label. Cluett Peabody, US corporation, opposes the

registration on ground that Amigos TM looks like their TM: a sock and a

magnifying glass on the toe. Same font din ng Gold Top at Gold Toe. Bureauof Patents denies registration; appeal on CA says there is hardly any variance in

the appearance of the marks 'GOLD TOP' and 'GOLD TOE' since both show a

representation of a man's foot wearing a sock, and the marks are printed in

identical lettering.

Idem sonans not applicable. The Bureau considered the drawings and the labels,

the appearance of the labels, the lettering, and the representation of a man's

foot wearing a sock. Obviously, its conclusion is based on the totality of the

similarities between the parties' trademarks and not on their sounds alone.

Respondent is domiciled in the United States and is the registered owner of the

"Gold Toe" trademark. Hence, it is entitled to the protection of the Convention.

A foreign-based trademark owner, whose country of domicile is a party to an

international convention relating to protection of trademarks,17

is accorded

protection against infringement or any unfair competition as provided in Section

37 of Republic Act 166.


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17. Asia Brewery Inc. vs CA and San Miguel Corporation

SMB sued ABI for trademark

infringement and unfair competition

because the Pale bottle looks like theBeer na Beer steinie bottle. Petition

denied.

There is hardly any dispute that the

dominant feature of SMC's trademark

is the name of the product: SAN

MIGUEL PALE PILSEN, written in

white Gothic letters with elaborate

serifs at the beginning and end of theletters "S" and "M" on an amber

background across the upper portion of the rectangular design.

On the other hand, the dominant feature of ABI's trademark is the name: BEER

PALE PILSEN, with the word "Beer" written in large amber letters, larger than

any of the letters found in the SMC label.

Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be

confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER

PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No

evidence whatsoever was presented by SMC proving otherwise.

The fact that the wordspale pilsen are part of ABI's trademark does not

constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for

"pale pilsen" are generic words descriptive of the color ("pale"), of a type of

beer ("pilsen"), which is a light bohemian beer with a strong hops flavor that

originated in the City of Pilsen in Czechoslovakia and became famous in the

Middle Ages. "Pilsen" is a "primarily geographically descriptive word," (sa

Pilsen, Bohemia, Czech Republic)

The use of ABI of the steinie bottle, similar but not identical to the SAN MIGUEL

PALE PILSEN bottle, is not unlawful. Moreover, the shape was never registered as

a trademark.


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With regard to the white label of both beer bottles, ABI explained that it used the

color white for its label because white presents the strongest contrast to the

amber color of ABI's bottle; it is also the most economical to use on labels, and

the easiest to "bake" in the furnace.No one can have a monopoly of the color

amber for bottles, nor of white for labels, nor of the rectangular shape which isthe usual configuration of labels. Needless to say, the shape of the bottle and of

the label is unimportant. What is all important is the name of the product written

on the label of the bottle for that is how one beer may be distinguished from the

others.

In Dy Buncio v. Tan Tiao Bok, where two competing tea products were both

labeled as Formosan tea, both sold in 5-ounce packages made of ordinary

wrapping paper of conventional color, both with labels containing designs

drawn in green ink and Chinese characters written in red ink, one label showinga double-decked jar in the center, the other, a flower pot, this court found that

the resemblances between the designs were not sufficient to mislead the

ordinary intelligent buyer, hence, there was no unfair competition.

The test of fraudulent simulation is to be found in the likelihood of the

deception of persons in some measure acquainted with an established design

and desirous of purchasing the commodity with which that design has been

associated. The test is not found in the deception, or possibility of the

deception, of the person who knows nothing about the design which has been

counterfeited, and who must be indifferent as between that and the other.

The record does not bear out SMC's apprehension that BEER PALE PILSEN is being

passed off as SAN MIGUEL PALE PILSEN. This is unlikely to happen for consumers

or buyers of beer generally order their beer by brand. As pointed out by ABI's

counsel, in supermarkets and tiendas, beer is ordered by brand, and the

customer surrenders his empty replacement bottles or pays a deposit to

guarantee the return of the empties. If his empties are SAN MIGUEL PALE

PILSEN, he will get SAN MIGUEL PALE PILSEN as replacement. In sari-sari stores,

beer is also ordered from the tindera by brand. The same is true in restaurants,

pubs and beer gardens beer is ordered from the waiters by brand. (Op. cit.

page 50.)

Considering further that SAN MIGUEL PALE PILSEN has virtually monopolized the

domestic beer market for the past hundred years, those who have been drinking


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no other beer but SAN MIGUEL PALE PILSEN these many years certainly know

their beer too well to be deceived by a newcomer in the market. If they gravitate

to ABI's cheaper beer, it will not be because they are confused or deceived, but

because they find the competing product to their taste.

18. Societe des Produits Nestle vs Dy

Summary: Dy owns NANNY, repacked Australian powdered milk sold in provinces

in the South. Nestle owns NAN, milk for babies. Both are powdered milk products.

Trial court found Dy liable for infringement. CA reversed RTC.

Applying the dominancy test in the present case, the Court finds that "NANNY"

is confusingly similar to "NAN." "NAN" is the prevalent feature of Nestles line

of infant powdered milk products. It is written in bold letters and used in allproducts."NANNY" contains the prevalent feature "NAN." The first three letters

of "NANNY" are exactly the same as the letters of "NAN." When "NAN" and

"NANNY" are pronounced, the aural effect is confusingly similar.

In Mighty Corporation v. E. & J. Gallo Winery, the Court held that, "Non-

competing goods may be those which, though they are not in actual

competition, are so related to each other that it can reasonably be assumed

that they originate from one manufacturer, in which case, confusion of business

can arise out of the use of similar marks."

Court enumerated factors in determining whether goods are related:

(1) classification of the goods;

(2) nature of the goods;

(3) descriptive properties, physical attributes or essential characteristics of the

goods, with reference to their form, composition, texture or quality; and

(4) style of distribution and marketing of the goods, including how the goods are

displayed and sold.

Differences between NAN and NANNY: (1) NAN is intended for infants while

NANNY is intended for children past their infancy and for adults; and (2) NAN is

more expensive than NANNY. However, as the registered owner of the "NAN"

mark, Nestle should be free to use its mark on similar products, in different

segments of the market, and at different price levels.


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19. Fredco Manufacturing Corp. vs. President and Fellows of Harvard

College (Harvard University)

Summary: Fredco filed a petition to cancel Harvard Us trademark sa Harvard

clothing, on ground that Fredco had a prior registration. Bureau of Legal Affairs

cancelled Harvard Us TM; Director General of IPO reversed BLA; CA affirmed

Director-General. Hence this petition, which is DENIED.

One who has imitated the trademark of another cannot bring an action for

infringement, particularly against the true owner of the mark, because he would

be coming to court with unclean hands.

Although Section 2 of the Trademark law (R.A. 166) requires for the registration

of trademark that the applicant thereof must prove that the same has been

actually in use in commerce or services for not less than two (2) months in the

Philippines before the application for registration is filed, where the trademark

sought to be registered has already been registered in a foreign country that is amember of the Paris Convention, the requirement of proof of use in the

commerce in the Philippines for the said period is not necessary.Under Section

239.2 of Republic Act No. 8293 (R.A. No. 8293),18

"[m]arks registered under

Republic Act No. 166 shall remain in force but shall be deemed to have been

granted under this Act x x x," which does not require actual prior use of the

mark in the Philippines

Elements of Trademark Infringement:

(a) A trademark actually used in commerce in the Philippines and registered in the principalregister of the Philippine Patent Office;

(b) It is used by another person in connection with the sale, offering for sale, or advertisingof any goods, business or services 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; or such trademark is reproduced,

counterfeited, copied or colorably imitated by another person and such reproduction,

counterfeit, copy or colorable imitation is applied to labels, signs, prints, packages,

wrappers, receptacles or advertisements intended to be used upon or in connection

with such goods, business or services as to likely cause confusion or mistake or to

deceive purchasers;

(c) The trademark is used for identical or similar goods; and(d) Such act is done without the consent of the trademark registrant or assignee.
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Pursuant to the Paris Convention for the Protection of Industrial Property to

which the Philippines is a signatory, you are hereby directed to reject all

pending applications for Philippine registration of signature and other world-

famous trademarks by applicants other than its original owners or users.

in cases where warranted, Philippine registrants of such trademarks should be

asked to surrender their certificates of registration, if any, to avoid suits for

damages and other legal action by the trademarks foreign or local owners or

original users.

Fredco does not have any affiliation or connection with Harvard University, or

even with Cambridge, Massachusetts. Fredcos belated justification merely

confirms that it sought to connect or associate its products with Harvard

University, riding on the prestige and popularity of Harvard University, and thus

appropriating part of Harvard Universitys goodwill without the latters consent.

Section 123.1(e) of R.A. No. 8293 now categorically states that "a mark which is

considered by the competent authority of the Philippines to be well-known

internationally and in the Philippines, whether or not it is registered here,"

cannot be registered by another in the Philippines.

Section 123.1(e) does not require that the well-known mark be used in

commerce in the Philippines but only that it be well-known in the Philippines.

Traced to its roots or origin, HARVARD is not an ordinary word. It refers to no

other than Harvard University, a recognized and respected institution of higher

learning located in Cambridge, Massachusetts, U.S.A.The first use of the name

HARVARD was in 1638 for educational services, policy courses of instructions

and training at the university level.

Documents

Compiled Cases for Trademarks