Intellectual Property Law Sunday

8/4/2019 Intellectual Property Law Sunday

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Sec. 147. Rights Conferred. -147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties nothaving the owner’s consent from using in the course of trade identical or similar signs orcontainers for goods or services which are identical or similar to those in respect of which thetrademark is registered where such use would result in a likelihood of confusion. In case of theuse, of an identical sign for identical goods or services, a likelihood of confusion shall bepresumed.147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) whichis registered in the Philippines, shall extend to goods and services which are not similar to thosein respect of which the mark is registered: Provided, That use of that mark in relation to thosegoods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark arelikely to be damaged by such use. (n)

Sec. 148. Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used. -Registration of the mark shall not confer on the registered owner the right to preclude third parties fromusing bona fide their names, addresses, pseudonyms, a geographical name, or exact indicationsconcerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services: Provided, That such use is confined to the purposes of mereidentification or information and cannot mislead the public as to the source of the goods or services. (n)

Sec. 149. Assignment and Transfer of Application and Registration. -

149.1. An application for registration of a mark, or its registration, may be assigned or transferred with or without the transfer of the business using the mark. (n)149.2. Such assignment or transfer shall, however, be null and void if it is liable to mislead thepublic, particularly as regards the nature, source, manufacturing process, characteristics, orsuitability for their purpose, of the goods or services to which the mark is applied.149.3. The assignment of the application for registration of a mark, or of its registration, shall bein writing and require the signatures of the contracting parties. Transfers by mergers or otherforms of succession may be made by any document supporting such transfer.149.4. Assignments and transfers of registration of marks shall be recorded at the Office onpayment of the prescribed fee; assignment and transfers of applications for registration shall, onpayment of the same fee, be provisionally recorded, and the mark, when registered, shall be in the

name of the assignee or transferee.149.5. Assignments and transfers shall have no effect against third parties until they are recordedat the Office. (Sec. 31, R. A. No. 166a)

Sec. 150. License Contracts. -150.1. Any license contract concerning the registration of a mark, or an application therefor, shallprovide for effective control by the licensor of the quality of the goods or services of the licensee inconnection with which the mark is used. If the license contract does not provide for such quality control, or if such quality control is not effectively carried out, the license contract shall not be

valid.150.2. A license contract shall be submitted to the Office which shall keep its contents confidential

but shall record it and publish a reference thereto. A license contract shall have no effect againstthird parties until such recording is effected. The Regulations shall fix the procedure for therecording of the license contract. (n)

SE P. STA. ANA, Petitioner , vs. FLORENTINO MALIWAT and TIBURCIO S. EVALLE, in his capacity asDirector of Patents, Respondents.

REYES, J.B.L., J.: chanrobles virtual lawlibrary

Petition for review of the decision of the respondent Director of Patents in an interference proceeding1 (Inter PartesCase No. 291), finding for the senior party applicant, Florentino Maliwat, the herein private respondent, andagainst the junior party applicant2 Jose P. Sta. Ana, the herein petitioner. chanroblesvirtualawlibrary chanrobles virtual law library



On 21 June 1962, Florentino Maliwat filed with the Patent Office an application for registration of the trademarkFLORMANN, which is used on shirts, pants, jackets and shoes for ladies, men, and children, claiming first use incommerce of the said mark on 15 January 1962. The claim of first use was subsequently amended to 6 July1955.chanroblesvirtualawlibrary chanrobles virtual lawlibrary

On 18 September 1962, Jose P. Sta. Ana filed an application for the registration of the tradename FLORMEN SHOEMANUFACTURERS (SHOE MANUFACTURERS disclaimed),3 which is used in the business of manufacturing ladies'

and children's shoes. His claim of first use in commerce of the said tradename is 8 April 1959.chanroblesvirtualawlibrary chanrobles virtual lawlibrary

In view of the admittedly confusing similarity between the trademark FLORMANN and the tradename FLORMEN, theDirector of Patents declared an interference. After trial, the respondent Director gave due course to Maliwat'sapplication and denied that of Sta. Ana. The latter, not satisfied with the decision, appealed to this Court.chanroblesvirtualawlibrarychanrobles virtual law library

The petitioner assigned the following errors:

I. The Director of Patents erred in not finding that respondent (senior party-applicant) failed to establish by clear

and convincing evidence earlier date of use of his mark FLORMANN than that alleged in his application forregistration, hence, respondent is not entitled to carry back the date of first use to a prior date.chanroblesvirtualawlibrary chanrobles virtual law library

II. The Director erred in holding that respondent is the prior adopter and user of his mark and in concluding thatthis is strengthened with documentary evidence that respondent has been using his mark since 1953 as tailor and

haberdasher.chanroblesvirtualawlibrary chanrobles virtual lawlibrary

III. The Director of Patents erred in not finding false and fabricated respondent's testimonial and documentaryevidence and Director should have applied the rule "Falsus in uno, falsus in omnibus" and should have disregardedthem.chanroblesvirtualawlibrarychanrobles virtual law library

IV. The Director of Patents erred in declaring that Maliwat has the prior right to the use of his trademark on shoesand such right may be carried back to the year 1953 when respondent started his tailoring and haberdashery

business and in holding that the manufacture of shoes is within the scope of natural expansion of the business of atailor and haberdasher.chanroblesvirtualawlibrary chanrobles virtual lawlibrary

V. The Director of Patents erred in failing to apply the stricture that parties should confine use of their respectivemarks to their corresponding fields of business, and should have allowed the concurrent use of tradenameFLORMEN SHOE MANUFACTURERS and the trademark FLORMANN provided it is not used on shoes.

The findings of the Director that Maliwat was the prior adopter and user of the mark can not be contradicted, sincehis findings were based on facts stipulated in the course of the trial in the interference proceedings. The recordedstipulation is as follows:

ATTY. FRANCISCO: Your Honor please, with the mutual understanding of the counsel for the Junior Party and thecounsel for the Senior Party in their desire to shorten the proceedings of this case, especially on matters that are

admitted and not controverted by both parties, they have agreed and admitted that Mr. Jose P. Sta. Ana, theJunior Party Applicant in this case, is engaged solely in the manufacture of shoes under the firm name FLORMENSHOE MANUFACTURERS since April 1959; that the name FLORMEN SHOE MANUFACTURERS is registered with theBureau of Commerce on April 8, 1959, as shown by Exhibits "A" and "A-2". That Mr. Florentino Maliwat has beenengaged in the manufacture and sale of menswear shirts, polo shirts, and pants, since 1953, using FLORMANN asits trademark. That Mr. Florentino Maliwat began using the trademark FLORMANN on shoes on January 1962 and

the firm name FLORMANN SHOES under which these shoes with the trademark FLORMANN were manufactured andsold was first used on January 1962, having also been registered with the Bureau of Commerce on January 1962

and with other departments of the government, like the Bureau of Labor, the Social Security System and theWorkmen's Compensation in 1962.chanroblesvirtualawlibrary chanrobles virtual law library

ATTY. MARAVILLA: On behalf of the Senior Party Applicant, represented by this humble representation, Irespectfully concur and admit all those stipulations above mentioned.chanroblesvirtualawlibrary chanrobles virtual lawlibrary

HEARING OFFICER: The court reserves the resolution on those stipulations. We can proceed now with the redirectexamination. (T.s.n., 9 August 1963, pp. 33-34).

And the Rules of Court provide:



Sec. 2. Judicial admissions. - Admission made by the parties in the pleadings, or in the course of the trial or otherproceedings do not require proof and can not be contradicted unless previously shown to have been made throughpalpable mistake." (Rule 129, Revised Rules of Court).

Since the aforequoted stipulation of facts has not been shown to have been made through palpable mistake, it isvain for the petitioner to allege that the evidence for respondent Maliwat is false, fabricated, inconsistent,indefinite, contradictory, unclear, unconvincing, and unsubstantial.chanroblesvirtualawlibrary chanrobles virtual lawlibrary

The rule on judicial admissions was not found or provided for in the old Rules but can be culled from rulings laiddown by this Court previous to its revision (Irlanda v. Pitargue, 22 Phil. 383; 5 Moran 57-59, 1963 Ed.). It was thelaw, then and now, being an application of the law on estoppel .chanroblesvirtualawlibrary chanrobles virtual lawlibrary

To be true, petitioner Sta. Ana, through counsel, filed with this Court, on 24 December 1964, a motion entitled

"MOTION TO ORDER STENOGRAPHER TO PRODUCE STENOGRAPHIC NOTES AND TO CORRECT TRANSCRIPT OFSTENOGRAPHIC NOTES; TO ALLOW PETITIONER TO WITHDRAW FROM STIPULATION OF FACTS AND BE ALLOWEDTO PRESENT ADDITIONAL EVIDENCE; AND TO SUSPEND PERIOD FOR FILING PETITIONER'S BRIEF." The reasongiven was that "counsel for Mr. Jose P. Sta. Ana does not recall making any stipulation or agreement of facts withthe counsel of Mr. Florentino Maliwat on 9 August 1963." Opposition thereto was filed by Maliwat, asserting thatthe stenographer took down notes on those things which were stated and uttered by the parties; that movantshould have moved for reconsideration in the Patent Office, instead of here in the Supreme Court, which is bothuntimely and unhonorable.chanroblesvirtualawlibrarychanrobles virtual law library

Upon requirement by this Court, stenographer Cleofe Rosales commented on petitioner's motion that what she hadtaken down were actually uttered by counsel for Sta. Ana, no more, no less; that it was practically and highlyimpossible for her to have intercalated into the records the questioned stipulation of facts because of the length of counsel's manifestations and the different subject matters of his statements, aside from the concurrence of Maliwat's counsel and the reservation on the resolution made by the hearing officer; and that despite her length of service, since 1958, as stenographic reporter, there had been no complaint against her, except this one.chanroblesvirtualawlibrarychanrobles virtual lawlibrary

Counsel for Sta. Ana replied to the foregoing comments, alleging, among others, that after his receipt of thedecision, after 5 May 1964, he bought the transcript and requested the stenographer to verify the contents of

pages 33 and 34 of her transcript but, despite several requests, and for a period of seven (7) months, for her toproduce the stenographic notes, she has failed to produce said notes.chanroblesvirtualawlibrary chanrobles virtual lawlibrary

On 2 April 1965, stenographer Rosales sent to the clerk of this Court the transcript of stenographic notes.chanroblesvirtualawlibrary chanrobles virtual lawlibrary

This Court, on 2 February 1965, denied, for being late the motion to present additional testimonial anddocumentary evidence, and, on 8 April 1965, deferred action on the objection to a portion of the transcript untilafter hearing.chanroblesvirtualawlibrarychanrobles virtual lawlibrary

We find no substantiation of the charge that the stipulation of facts appearing on pages 33 to 34 of the transcriptof stenographic notes taken on 9 August 1963 had been intercalated; hence, the presumption that thestenographer regularly performed her duty stands. The integrity of the record being intact, the petitioner is boundby it. We can not overlook that even if his charges were true, it was plain and inexcusable negligence on his part

not to discover earlier the defect he now complains of, if any, and in not taking steps to correct it before therecords were elevated to this Court.chanroblesvirtualawlibrarychanrobles virtual law library

An application for registration is not bound by the date of first use as stated by him in his application, but isentitled to carry back said stated date of first use to a prior date by proper evidence; but in order to show anearlier date of use, he is then under a heavy burden, and his proof must be clear and convincing (Anchor TradingCo., Inc. vs. The Director of Patents, et al., L-8004, 30 May 1956; Chung Te vs. Ng Kian Giab, et al.,

L-23791, 23 November 1966). In the case at bar, the proof of date of first use (1953), earlier than that alleged inrespondent Maliwat's application (1962), can be no less than clear and convincing because the fact was stipulated

and no proof was needed.chanroblesvirtualawlibrary chanrobles virtual lawlibrary

Petitioner would confine the respondent to the use of the mark FLORMANN to tailoring and haberdashery only, but

not on shoes, on the ground that petitioner had used the name FLORMEN on shoes since 1959, while therespondent used his mark on shoes only in 1962; but the Director ruled:

. . . I believe that it is now the common practice among local tailors and haberdashers to branch out into articles of manufacture which have, one way or another, some direct relationship with or appurtenance to garments or attire



to complete one's wardrobe such as belts, shoes, handkerchiefs, and the like, . . . It goes without saying thatshoes on one hand and shirts, pants and jackets on the other, have the same descriptive properties for purposes of our Trademark Law.

Modern law recognizes that the protection to which the owner of a trademark mark is entitled is not limited toguarding his goods or business from actual market competition with identical or similar products of the parties, butextends to all cases in which the use by a junior appropriator of a trademark or tradename is likely to lead to a

confusion of source, as where prospective purchasers would be misled into thinking that the complaining party hasextended his business into the field (see 148 ALR 56 et seq; 52 Am. Jur. 576) or is in any way connected with the

activities of the infringer; or when it forestalls the normal potential expansion of his business (v. 148 ALR, 77, 84;52 Am. Jur. 576, 577). It is on this basis that the respondent Director of Patents adverted to the practice "amonglocal tailors and haberdashers to branch out into articles of manufacture which have some direct relationship" . . ."to garments or attire to complete one's wardrobe". Mere dissimilarity of goods should not preclude relief wherethe junior user's goods are not too different or remote from any that the owner would be likely to make or sell; andin the present case, wearing apparel is not so far removed from shoes as to preclude relief, any more than thepancake flour is from syrup or sugar cream (Aunt Jemima Mills Co. vs. Rigney & Co., LRA 1918 C 1039), or bakingpowder from baking soda (Layton Pure Food Co. vs. Church & Co., 182 Fed. 35), or cosmetics and toilet goodsfrom ladies' wearing apparel and costume jewelry (Lady Esther Ltd. vs. Lady Esther Corset Shoppe, 148 ALR 6).More specifically, manufacturers of men's clothing were declared entitled to protection against the use of theirtrademark in the sale of hats and caps [Rosenberg Bros. vs. Elliott, 7 Fed. (2d) 962] and of ladies shoes (Forsythe& Co. vs. Forsythe Shoe Corp., 254 NYS 584). In all these cases, the courts declared the owner of a trademarkfrom the first named goods entitled to exclude use of its trademark on the related class of goods above-referredto.chanroblesvirtualawlibrarychanrobles virtual law library

It may be that previously the respondent drew a closer distinction among kinds of goods to which the use of similarmarks could be applied; but it can not be said that the present ruling under appeal is so devoid of basis in law as toamount to grave abuse of discretion warranting reversal. chanroblesvirtualawlibrary chanrobles virtual lawlibrary

Republic Act No. 166, as amended, provides:

Sec. 4. . . . The owner of a trademark, tradename or service-mark used to distinguish his goods, business orservices from the goods, business or services of others shall have the right to register the same on the principalregister, unless it:

x x x x x x x x x

x x x x x x x x x chanrobles virtual lawlibrary

(d) Consists of or comprises a mark or tradename which resembles a mark or tradename registered in thePhilippines or a mark or tradename previously used in the Philippines by another and not abandoned, as to belikely, when applied to or used in connection with the goods, business or services of the applicant, to causeconfusion or mistake or to deceive purchasers;

x x x x x x x x x

Note that the provision does not require that the articles of manufacture of the previous user and the 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 (Chua Che vs. Phil. Patent Office, et al., L-18337, 30 Jan.1965.4citing Application of Sylvan Sweets Co., 205 F. 2nd, 207).5 Therefore, whether or not shirts and shoes havethe same descriptive properties, or whether or not it is the prevailing practice or the tendency of tailors andhaberdashers to expand their business into shoes making, are not controlling. The meat of the matter is the

likelihood of confusion, mistake or deception upon purchasers of the goods of the junior user of the mark and thegoods manufactured by the previous user. Here, the resemblance or similarity of the mark FLORMANN and the

name FLORMEN and the likelihood of confusion, one to the other, is admitted; therefore, the prior adopter,respondent Maliwat, has the better right to the use of the mark.chanroblesvirtualawlibrarychanrobles virtual lawlibrary

FOR THE FOREGOING REASONS, the appealed decision is hereby affirmed, with costs against the petitioner.

Concepcion, C.J., Dizon, Makalintal, Zaldivar, Sanchez, Castro, Angeles and Fernando, JJ., concur.



Endnotes:

1"An interference is a proceeding instituted for the purpose of determining the question of priority of adoption anduse of a trademark, tradename, or service-mark between two or more parties claiming ownership of the same orsubstantially similar trademark, tradename or service-mark." (Sec. 10-A, Republic Act No. 166, as amended).chanroblesvirtualawlibrarychanrobles virtual

lawlibrary

2"The party whose application or registration involved in the interference has the latest filing date is the juniorparty . . ." (Rule 184, Rev. Rules of Practice in the Philippines Patent Office)

"Any junior party in an interference proceeding, . . ., shall be deemed to be in the position of plaintiff, and theother parties to such proceedings, in the position of defendants, with respect thereto . . ." (Rule 167, Ibid .).

3"At any time, upon application of the registrant and payment of the required fee, the Director may permit anyregistration to be surrendered, cancelled, or for good cause shown to be amended, and he may permit anyregistered mark or tradename to be disclaimed in whole or in part: . . ." (Sec. 14, Republic Act No. 166, asamended) .

4Between toiletries and laundry soap.

5

Between candies and cigarettes.

G.R. No. L-44707 August 31, 1982

HICKOK MANUFACTURING CO., INC., Petitioner , vs. COURT OF APPEALS ** and SANTOS LIM BUNLIONG,Respondents.

Sycip, Salazar, Feliciano, Hernandez & Castillo Law Offices for petitioner.chanrobles virtual lawlibrary

Ta� ada, Sanchez, Tafiada & Tanada Law Offices and George R. Arbolario for respondents.

& chanrobles virtuallaw library

TEEHANKEE, J.: chanrobles virtual law library

The Court affirms on the strength of controlling doctrine as reaffirmed in the companion case of Esso Standard Eastern Inc. vs. Court of Appeals 1promulgated also on this date and the recent case of Philippine Refining Co., Inc.vs. Ng Sam and Director of Parents 2the appealed decision of the Court of Appeals reversing the patent director'sdecision and instead dismissing petitioner's petition to cancel private respondent's registration of the trademark of HICKOK for its Marikina shoes as against petitioner's earlier registration of the same trademark for its other non-

competing products.chanroblesvirtualawlibrary chanrobles virtual law library

On the basis of the applicable reasons and considerations extensively set forth in the above-cited controllingprecedents and the leading case of Acoje Mining Co., Inc. vs. Director of Patents 3on which the appellate courtanchored its decision at bar, said decision must stand affirmed, as follows: chanrobles virtual law library

An examination of the trademark of petitioner-appellee and that of registrant-appellant convinces us that there is adifference in the design and the coloring of, as well as in the words on the ribbons, the two trademarks.chanroblesvirtualawlibrary chanrobles virtual law library

In petitioner-appellee's trademark for handkerchiefs (Exhibit 'Q'), the word 'HICKOK' is in red with whitebackground in the middle of two branches of laurel in light gold. At the lower part thereof is a ribbon on which arethe words 'POSITIVELY FINER' in light gold. In the trademark for underwear (Exhibit 'R'), the word 'HICKOK' is alsoin red with white background in the middle of two branches of laurel in dark gold with similar ribbons and the

words 'POSITIVELY FINER' in dark gold. And in the trademark for briefs (Exhibit 'S'), the word 'HICKOK' is in whitebut with red background in the middle of two branches of laurel, the leaves being in dark gold with white edges,and with similar ribbon and words 'POSITIVELY FINER' in dark gold. In contrast, in respondent-appellant's



trademark (Exhibit 'J'), the word 'HICKOK' is in white with gold background between the two branches of laurel inred, with the word 'SHOES' also in red below the word 'HICKOK'. The ribbon is in red with the words 'QUALITY ATYOUR FEET,' likewise in red. chanroblesvirtualawlibrarychanrobles virtual law library

While the law does not require that the competing trademarks be Identical, the two marks must be considered intheir entirety, as they appear in the respective labels, in relation to the goods to which they are attached.chanroblesvirtualawlibrary chanrobles virtual lawlibrary

The case of H.E. Heacock Co. vs. American Trading Co., 56 Phil. 763, cited by petitioner - appellee, is hardlyapplicable here, because the defendant in that case imported and sold merchandise which are very similar to, andprecisely of the same designs as, that imported and sold by the plaintiff. ...chanroblesvirtualawlibrarychanrobles virtual law library

In the recent case of Acoje Mining Co., Inc. vs. Director of Patents, 38 SCRA 480, 482-483, the Supreme Courtstated -

Can it be said then that petitioner's application would be likely to cause confusion or mistake on the part of thebuying public? The answer should be in the negative. It does not defy common sense to assert that a purchaser

would be cognizant of the product he is buying. There is quite a difference between soy sauce and edible oil. If oneis in the market for the former, he is not likely to purchase the latter just because on the trademark LOTUS. Evenon the rare occasion that a mistake does occur, it can easily be rectified. Moreover, there is no denying that thepossibility of confusion is remote considering petitioner's trademark being in yellow and red while that of thePhilippine Refining Company being in green and yellow, and the much smaller size of petitioner's trademark. Whenregard is had for the principle that the two trademarks in their entirety as they appear in their respective labels

should be considered in relation to the goods advertised before registration could be denied, the conclusion isinescapable that respondent Director ought to have reached a different conclusion. Petitioner has successfullymade out a case for registration.

From the statements of the Supreme Court in the two cases aforementioned, we gather that there must be notonly resemblance between the trademark of the plaintiff and that of the defendant, but also similarity of the goodsto which the two trademarks are respectively attached.chanroblesvirtualawlibrary chanrobles virtual lawlibrary

Since in this case the trademark of petitioner-appellee is used in the sale of leather wallets, key cases, money foldsmade of leather, belts, men's briefs, neckties, handkerchiefs and men's socks, and the trademark of registrant-appellant is used in the sale of shoes, which have different channels of trade, the Director of Patents, as in the caseof Acoje Mining Co., Inc. vs. Director of Patents, supra, 'ought to have reached a different conclusion.

It is established doctrine, as held in the above-cited cases, that "emphasis should be on the similarity of the

products involved and not on the arbitrary classification or general description of their properties orcharacteristics"4and that "the mere fact that one person has adopted and used a trademark on his goods does notprevent the adoption and use of the same trademark by others on unrelated articles of a different kind." 5Takinginto account the facts of record that petitioner, a foreign corporation registered the trademark for its diversearticles of men's wear such as wallets, belts and men's briefs which are all manufactured here in the Philippines bya licensee Quality House, Inc. (which pays a royalty of 1-1/2 % of the annual net sales) but are so labelled as togive the misimpression that the said goods are of foreign (stateside) manufacture and that respondent secured its

trademark registration exclusively for shoes (which neither petitioner nor the licensee ever manufactured or tradedin) and which are clearly labelled in block letters as "Made in Marikina, Rizal, Philippines," no error can beattributed to the appellate court in upholding respondent's registration of the same trademark for his unrelated andnon-competing product of Marikina shoes. 6

chanrobles virtual lawlibrary

ACCORDINGLY, the petition is dismissed and the appealed judgment of the Court of Appeals is hereby affirmed.

Melencio-Herrera, Plana, Relova and Gutierrez, Jr., JJ., concur.chanroblesvirtualawlibrary chanrobles virtual law library

Makasiar, J., is on leave.chanroblesvirtualawlibrary chanrobles virtual lawlibrary

Vasquez, J., took no part.

& G.R. No. L-26676 July 30, 1982



PHILIPPINE REFINING CO., INC., petitioner,vs.NG SAM and THE DIRECTOR OF PATENTS, respondents.

Ponce Enrile, Siguion Reyna, Montecillo & Bello and Associates for petitioner.

Primitivo C. Bucasas for respondents.

ESCOLIN, J.:

The sole issue raised in this petition for review of the decision of the Director of patents is whether or not theproduct of respondent, Ng Sam, which is ham, and those of petitioner consisting of lard, butter, cooking oil andsoap are so related that the use of the same trademark "CAMIA" on said goods would likely result in confusionas to their source or origin.

The trademark "CAMIA" was first used ill the Philippines by petitioner on its products in 1922. In 1949,petitioner caused the registration of said trademark with the Philippine Patent Office under certificates of

registration Nos. 1352-S and 1353-S, both issued on May 3, 1949. Certificate of Registration No. 1352-Scovers vegetable and animal fats, particularly lard, butter and cooking oil, all classified under Class 47 (Foodsand Ingredients of Food) of the Rules of Practice of the Patent Office, while certificate of registration No. 1353-S applies to abrasive detergents, polishing materials and soap of all kinds (Class 4).

On November 25, 1960, respondent Ng Sam, a citizen residing in Iloilo City, filed an application with thePhilippine Patent office for registration of the Identical trademark "CAMIA" for his product, ham, which likewisefalls under Class 47. Alleged date of first use of the trademark by respondent was on February 10, 1959.

After due publication of the application, petitioner filed an opposition, in accordance with Section 8 of RepublicAct No. 166, otherwise known as the Trademark Law, as amended. Basis of petitioner's opposition was Section4(d) of said law, which provides as unregistrable:

a mark which consists of or comprises a mark or tradename which so resembles a mark or tradename registered in the Philippines or a mark or tradename previously used in thePhilippines by another and not abandoned, as to be likely, when applied to or used inconnection with the goods, business services of the applicant, to cause confusion or mistakeor to deceive purchasers.

The parties submitted the case for decision without presenting any evidence: thereafter the Director of patentsrendered a decision allowing registration of the trademark "CAMIA" in favor of Ng Sam.

Petitioner moved for a reconsideration, but the same was denied.

Hence, this petition.

A rudimentary precept in trademark protection is that "the right to a trademark is a limited one, in the sense thatothers may used the same mark on unrelated goods." 1 Thus, as pronounced by the United States SupremeCourt in the case of American Foundries vs. Robertson 2, "the mere fact that one person has adopted and useda trademark on his goods does not prevent the adoption and use of the same trademark by others on articles of a different description."

Such restricted right over a trademark is likewise reflected in our Trademark law. Under Section 4(d) of the law,registration of a trademark which so resembles another already registered or in use should be denied, where toallow such registration could likely result in confusion, mistake or deception to the consumers. Conversely,



where no confusion is likely to arise, as in this case, registration of a similar or even Identical mark may beallowed.

The term "CAMIA" is descriptive of a whole genus of garden plants with fragrant white flowers. Some peoplecall the "CAMIA" the "white ginger plant" because of its tuberous roots, while children refer to it as the butterflyflower because of its shape. Being a generic and common term, its appropriation as a trademark, albeit in afanciful manner in that it bears no relation to the product it Identifies, is valid. However, the degree of exclusiveness accorded to each user is closely restricted. 3

The records of this case disclose that the term "CAMIA" has been registered as a trademark not only bypetitioner but by two (2) other concerns, as follows:

1. CAMIA Application No. 280 Registration No. SR-320 Date Registered — May 26, 1960Owner — Everbright Development Company Business Address — 310 M. H. del Pilar GracePark, Caloocan City Class 4 — Thread and Yarn

2. CAMIA and Representation Application No. 538 Date Filed — August 10, 1945 DateRegistered - April 20, 1946 Owner — F.E. Zuellig, Inc. Business Address — 55 Rosario St.,Manila Class 43 — Particular Good on which mark is used: Textiles, Embroideries laces, etc.

A trademark is designed to Identify the user. But it should be so distinctive and sufficiently original as to enablethose who come into contact with it to recognize instantly the Identity of the user. " It must be affirmative anddefinite, significant and distinctive, capable to indicate origin." 4

It is evident that "CAMIA" as a trademark is far from being distinctive. By itself, it does not Identify petitioner asthe manufacturer or producer of the goods upon which said mark is used, as contra-distinguished totrademarks derived from coined words such as "Rolex", "Kodak" or "Kotex". It has been held that if a mark is socommonplace that it cannot be readily distinguished from others, then it is apparent that it cannot Identify aparticular business; and he who first adopted it cannot be injured by any subsequent appropriation or imitationby others, and the public will not be deceived." 5

The trademark "CAMIA" is used by petitioner on a wide range of products: lard, butter, cooking oil, abrasivedetergents, polishing materials and soap of all kinds. Respondent desires to use the same on his product, ham.

While ham and some of the products of petitioner are classified under Class 47 (Foods and Ingredients of Food), this alone cannot serve as the decisive factor in the resolution of whether or not they are related goods.Emphasis should be on the similarity of the products involved and not on the arbitrary classification or generaldescription of their properties or characteristics.

In his decision, the Director of Patents enumerated the factors that set respondent's product apart from thegoods of petitioner. He opined and We quote:

I have taken into account such factors as probable purchaser attitude and habits, marketingactivities, retail outlets, and commercial impression likely to be conveyed by the trademarks if used in conjunction with the respective goods of the parties. I believe that ham on one hand,and lard, butter, oil, and soap on the other are products that would not move in the samemanner through the same channels of trade. They pertain to unrelated fields of manufacture,

might be distributed and marketed under dissimilar conditions, and are displayed separatelyeven though they frequently may be sold through the same retail food establishments.Opposer's products are ordinary day-to-day household items whereas ham is not necessarilyso. Thus, the goods of the parties are not of a character which purchasers would be likely toattribute to a common origin. (p. 23, Rollo).

The observation and conclusion of the Director of Patents are correct. The particular goods of the parties areso unrelated that consumers would not in any probability mistake one as the source or origin of the product of the other. "Ham" is not a daily food fare for the average consumer. One purchasing ham would exercise a morecautious inspection of what he buys on account of it price. Seldom, if ever, is the purchase of said food product



delegated to household helps, except perhaps to those who, like the cooks, are expected to know their business. Besides, there can be no likelihood for the consumer of respondent's ham to confuse its source asanyone but respondent. The facsimile of the label attached by him on his product, his business name "SAM'SHAM AND BACON FACTORY" written in bold white letters against a reddish orange background 6, is certain tocatch the eye of the class of consumers to which he caters.

In addition, the goods of petitioners are basically derived from vegetable oil and animal fats, while the productof respondent is processed from pig's legs. A consumer would not reasonably assume that, petitioner has sodiversified its business as to include the product of respondent.

Mr. Runolf Callman, in Section 80.3, VOL. I, p. 1121 of his book, Unfair Competition and Trade Marks, declare:

While confusion of goods can only be evident, where the litigants are actually in competition,confusion of business may arise between non-competitive interests as well. This is truewhether or not the trademarks are registered. Sec. 16 of the Trademark Act, in referring to'merchandise of substantially the same descriptive properties, embraces competitive and non-competitive trademark infringement but it is not so extensive as to be applicable to caseswhere the public would not reasonably expect the plaintiff to make or sell the same class of goods as those made or sold by the defendant . (Emphasis supplied).

In fine, We hold that the businesss of the parties are non-competitive and their products so unrelated that theuse of Identical trademarks is not likely to give rise to confusion, much less cause damage to petitioner.

WHEREFORE, the instant petition is hereby dismissed and the decision of the Director of Patents in Inter Partes Case No. 231 affirmed in toto. Costs against petitioner.

SO ORDERED.

Barredo (Chairman), Aquino, Concepcion, Jr., Guerrero, Abad Santos and De Castro, JJ., concur.

Faberge Incorporated v. IAC and Co Beng Kay, GR No. 71189, 4 November 1992

Facts: The Director of Patents allowed Co Beng Kay to register the trademark

"BRUTE" for briefs despite petitioner's opposition grounded on similarity of said

trademark with petitioner's own symbol "BRUT" which it previously registered for

after-shave lotion, shaving cream, deodorant, talcum powder, and toilet soap. Both

marks are similar in appearance, sound and style of presentation.

Issue: Are briefs on one hand and aftershave lotion, shaving cream, deodorant, talcum

powder and toilet soap on the other hand, related goods?

Ruling: The Court ruled that the private respondent may be permitted to register the

trademark "BRUTE" for briefs. Petitioner has not ventured into the production of

briefs, an item not listed in its certificate of registration. One who has adopted and

used a trademark on his goods does not prevent the adoption and use of the same

trademark by others for products which are of a different description.



Comment: As a result of this decision, Article 138 of R.A. 8293 now provides that a

"certificate of registration of a mark shall be prima facie evidence of…the registrant's

exclusive right to use the same in connection with the goods or service and those that

are related thereto specified in the certificate." Under the old trademark law, the

phrase "and those that are related thereto" is not found.

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