CASE 1 Phil. Refining Co. v. Ng Sam and Director of Patents G.R. No. L-26676, July 30, 1982
Facts: The petitioner petit ioner Philippine Refining Co. first used'Camia' as trademark for fo r its products in 1922. In 1949, it caused the registration of the said trademark for its lard, butter, cooking oil, detergents, polishing materials and soap products. In 1960, Ng Sam filed an application for 'Camia' for its ham product (Class 47), alleging its first use in 1959. The petitioner opposed the said application but the Patent Office allowed the registration of Ng Sam.
Issue: Is the product of Ng Sam (Ham) and those of the petitioner so related that the use of the trademark 'Camia' on said goods would result to confusion as to their origin?
Ruling: NO. The businesses of the parties are non-competitive and the products are so unrelated that the use of the same trademark will not give rise to confusion nor cause damage to the petitioner. The right to a trademark tradem ark is a limited one, hence, others may use the same mark on unrelated goods if no confusion would arise. A trademark is designed to identify the user, hence, it should be so distinctive distinctive and sufficiently original so as to enable those who see it to recognize instantly its source or origin. A trademark must be affirmative and definite, significant and distinctive and capable of indicating origin. 'Camia' as a trademark is far from being distinctive, It in itself does not identify the petitioner as the manufacturer of producer of the goods upon which said mark is used. If a mark is so commonplace, it is apparent that it can't identify a particular business and he who adopted it first cannot be injured by any subsequent appropriation or imitation by others and the public will not be deceived. Mere classification of the goods cannot serve as the decisive factor in the resolution of whether or not the goods a related. Emphasis should be on the similarity of products involved and not on arbitrary classification of general description of their properties or characteristics.
CASE 2 CONVERSE RUBBER CORPORATION and EDWARDSON MANUFACTURING CORPORATION, plaintiffs-appellants, vs. JACINTO RUBBER & PLASTICS CO., INC., and ACE RUBBER & PLASTICS CORPORATION, defendants-appellants. G.R. Nos. L-27425 & L-30505
April 28, 1980
Facts: This is an action for unfair competition. Plaintiff Converse Rubber Corporation, is an American Corporation, manufacturer of canvas rubber shoes under the trade name "Converse Chuck Taylor All Star"; in the Philippines, it has an exclusive licensee, plaintiff Edwardson Manufacturing Corporation, for the manufacture and sale in the Philippines of its product. Plaintiff Converse is the owner of trademarks and patent, registered with United States Patent Office, covering the words. "All Star", the representation and design of a five-pointed star, and the design of the sole. The trademark "Chuck Taylor" was registered by plaintiff Converse with the Philippines Patent Office on March 3, 1966. Since 1946, "Chuck Taylor" is being sold in the Philippines. It has been used exclusively by Philippine basketball teams competing in international competitions. It is also popular among players in various basketball leagues, like the MICAA and the NCAA, because of its high quality and attractive style. "Chuck Taylor" currently retails at P46.00 per pair. Defendant Jacinto Rubber & Plastics Company, Inc., a local corporation, likewise, manufactures and sells canvas rubber shoes. It sells its product under the trade names "Custombuilt Viscount", "Custombuilt Challenger", and "Custombuilt Jayson's". Its trademark "Custombuilt Jayson's" was registered by the Philippines Patent Office . In 1963, plaintiff Converse and defendant Jacinto entered into protracted negotiations for a licensing agreement agreem ent whereby defendant Jacinto would be the exclusive license of plaintiff Converse in the Philippines for the manufacture and sale of "Chuck Taylor" shoes but with the right to continue manufacturing and selling its own products. One of the points taken up by parties was the design and general appearance of "Custombuilt" shoes. Plaintiff Converse insisted on the condition that defendant Jacinto change the design of "Custombuilt" shoes so as to give "Custombuilt" a general appearance different from "Chuck Taylor." After an extensive discussion, defendant Jacinto gave into to the demand of plaintiff Converse; it submitted to plaintiff Converse for the latter's approval a sketch of a new design for "Custombuilt". This design was accepted by plaintiff Converse. Defendant Jacinto Rubber then proposed that the licensing agreement be made in favor of its affiliates, defendant Ace Rubber. On January 22, 1965, defendant Ace Rubber signed the licensing agreement while defendant Jacinto Rubber and Arturo Jacinto signed the guarantee agreement to secure the performance by defendant Ace Rubber of its obligations under the licensing agreement. However, the licensing agreement did not materialize, because Hermogenes Jacinto refused to sign the guarantee. Plaintiff Converse and plaintiff Edwardson then executed licensing agreement, making plaintiff Edwardson the exclusive Philippine licensee for the manufacture and sale of "Chuck Taylor." On June 18, 1966, plaintiffs sent a written demand to defendants to stop manufacturing and selling "Custombuilt" shoes of Identical
appearance as "Chuck Taylor". Defendants did not reply to plaintiffs' letter. Hence, this suit. Issue: Are the defendants defendants guilty of unfair competition by giving "Custombuilt" the same general appearance as "Chuck Taylor"? Ruling: Yes. We find the conclusions of the trial court to be correct in all respects. In fact, in their brief, defendants do not contest at all the findings of the trial court insofar as material Identity between the two kinds of shoes in question is concerned. We have ourselves examined the exhibits in detail, particularly, the comparative pictures and other representations if the shoes in question, and We do not hesitate in holding that he plaintiffs complaint of unfair competition is amply justified. From said examination, we find the shoes manufactured by defendants to contain, as found by the trial court, practically all the features of those of the plaintiff Converse Rubber Corporation and manufactured, sold or marketed by plaintiff Edwardson Manufacturing Corporation, except for heir respective brands, of course. We fully agree with the trial court that "the respective designs, shapes, the colors of the ankle patches, the bands, the toe patch and the soles of the two products are exactly the same ... (such that) at a distance of a few meters, it is impossible to distinguish "Custombuilt" from "Chuck Taylor". These elements are more than sufficient to serve as basis for a charge of unfair competition. Even if not all the details just mentioned were Identical, with the general appearances alone of the two products, any ordinary, or even perhaps even a not too perceptive and discriminating customer could be deceived, and, therefore, Custombuilt could easily be passed off for Chuck Taylor. Jurisprudence supports the view that under such circumstances, the imitator must be held liable. It stands to reason that when the law speaks of purchasers' it generally refers to ordinary or average purchasers. ... in cases of unfair competition, while the requisite degree of resemblance or similarity between the names, brands, or other indicia is not capable of exact definition, it may be stated generally that the similarity must be such, but need only be such, as is likely to mislead purchasers of ordinary caution and prudence; or in other words, the ordinary buyer, into the belief that the goods or wares are those, or that the name or business is that, of another producer or tradesman. It is not necessary in either case that the resemblance be sufficient to deceive experts, dealers, or other persons specially familiar with the trademark or goods involved. Nor is it material that a critical inspection and comparison would disclose differences, or that persons seeing the trademarks or articles side by side would not be deceived (52 Am. Jur. pp. 600-601). (Brief for Plaintiffs as Appellees, Appellees, pp. 28-29, 28-29, p. 71, Record.) Record.)
CASE 3
PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G., petitioner vs. THE INTERMEDIATE APPELLATE COURT and MIL-ORO MANUFACTURING CORPORATION, respondents. G.R. No. 75067 February 26, 1988 FACTS:
Petitioner, a foreign corporation duly organized and existing under the laws of the Federal Republic of Germany and the manufacturer and producer of "PUMA PRODUCTS," filed a complaint for infringement of patent or trademark against the private respondent. Prior to the filing of the said civil suit, three cases were pending before the Philippine Patent Office. The private respondent filed a motion to dismiss on the grounds that the petitioners' complaint states no cause of action; petitioner has no legal personality to sue, and litis pendentia . The record reveals that the Philippine Patent Office rendered a decision in the Inter Partes Cases .
1st ISSUE: Whether or not petitioner had no legal capacity to sue? RULING: The court hold that the petitioner had the legal capacity to file the action. In the leading case of La Chemise Lacoste, S.A. v. Fernandez, (129 SCRA 373) , the court ruled: As early as 1927, this Court was, and it still is, of the view that a foreign corporation not doing business in the Philippines needs no license to sue before Philippine courts for infringement of trademark and unfair competition." In relation thereto, in the case of Converse Rubber Corporation v. Universal re- affirmed our our adherence to Rubber Products, Inc. (147 SCRA 165) , the court likewise re-affirmed the Paris Convention: "the ruling in the aforecited case is in consonance with the Convention of the Union of Paris for the Protection of Industrial Property to which the Philippines became a party on September 27, 1965. Article 8 thereof provides that, 'a trade name [corporation name] shall be protected in all the countries of the Union, without the obligation of filing or registration, whether or not it forms part of the trademark.'
2nd ISSUE: Whether or not the doctrine of lis pendens is applicable as a ground for dismissing the case? RULING: NO. Anent the the issue of of lis pendens as a ground for a motion to dismiss, the petitioner submits that the relief prayed for in its civil action is different from the relief sought in the Inter Partes cases [before the Philippine Patent Office]. More important, however, is the fact that for lis pendens to be a valid ground for the dismissal of a case, the other case pending between the same parties and having the same cause must be a court action (covered by the Rules of Court) .
CASE 4 Sterling Products International Inc. Vs Farbenfabriken Bayer
Facts: Farbenfabriken Bayer is the original owner of the name and mark of BAYER, based in Germany. It had a subsidiary company in New York- The Bayer Co. Inc. New York. The US declared war on Germany and classified the Bayer New York as an enemy-controlled corporation hence all its assets was sold to Sterling Drug. The trademarks BAYER and BAYERCROSS IN CIRCLE were then registered in the Philippines by Sterling. Two certificates of registration (for BAYER CROSS IN CIRCLE and BAYER) were issued in favor of Sterling. Subsequently Farbenfabriken was issued a certificate of registration in Supplement Register by the Philippine Patent Office for the trademark BAYER CROSS IN CIRCLE for animal and plant destroying agents.
Issue: Whether or not the plaintiff may hold on to its BAYER trademarks for medicines and defendants may continue using the same trademarks for insecticides and other chemicals, not medicines.
Ruling: Yes. The plaintiff may hold on to its BAYER trademarks for medic ines and the defendants may continue using the same trademarks for insecticides and other chemicals, not medicines. The BAYER trademarks registered in thePhilippines by Sterling are those which cover medicines only for it was on said goods that the BAYER trademarks were actually used in the Philippines. The certificates of registration issued by the Director of Patents covers protection only for medicine.
Plaintiff invoked the protection of the confusion of origin rule.
The two types of confusion are:
confusion of goods - in which event the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other
confusion of business - here though the goods of the parties are different, thedefendant's product is such as might reasonably be assumed to originate with the plaintiff, and the public would be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist.
In Ang Tibay case, the court ruled that although two non-competing articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they would, nevertheless, be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trademarks would likely to cause confusion as to the origin, or source, of the second user's goods.
The case at bar is not to be analogized with Ang Tibay, since the factual setting is different. It was not plaintiff's predecessor but defendant that first introduced the medical products into the Philippine market and household with the Bayer mark half acentury ago
Plaintiff cannot say that the present worth of its BAYER tradema rks owes solely to its own efforts; it is not insulated from the charge that as it marketed its medicines it did so with an eye to the goodwill as to quality that defendants' predecessor had establi shed. Plaintiff is not the first user thereof in thePhilippines. The trademarks do not necessarily link plaintiff with the public.
Plaintiff's BAYER trademarks for medicine cannot be delisted from the Register because said trademarks had been registered since 1939 by plaintiff's predecessor, The Bayer Co., Inc. Defendants' claim is stale; it suffers from the defect of non-use.
CASE 5 DEL MONTE CORPORATION V. CA, G.R. NO. L-78325, January 25, 1990
Facts: Petitioner Del Monte, an American corporation, granted Philpack the right to manufacture, distribute and sell in the Philippines its Del Monte catsup. Petitioner’s trademark and logo ‘Del Monte’ and its catsup bottle were subsequently registered in the Philippines. Meanwhile respondent Sunshine Sauce, a company also engaged in the manufacturing and sale of various kinds of sauces, registered its logo ‘Sunshine Fruit Catsup.’ Philpack received reports that respondent was buying and recycling used Del Monte’s bottle in junk shops to serve as container for its own catsup. Thus, petitioner and Philpack filed a complaint for trademark infringement and unfair competition, which the trial court dismissed. CA affirmed holding there were substantial differences between the 2 marks.
Issue: WON the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard, is such as to likely result in his confounding it with the original
Ruling: YES. It has been held that in making purchases, the consume r must depend upon his recollection of the appearance of the product which he intends to purchase. The buyer having in mind the mark/label of the respondent must rely upon his memory of the petitioner's mark. Unlike the judge who has ample time to minutely examine the labels in question in the comfort of his sala, the ordinary shopper does not enjoy the same opportunity.
A number of courts have held that to determine whether a trademark has been infringed, we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. The court therefore should be guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the value of which may be dissipated as soon as the court assumes to analyze carefully the respective features of the mark.
We also note that the respondent court failed to take into consideration several factors which should have affected its conclusion, to wit: age, training and education of the usual purchaser, the nature and cost of the article, whether the article is bought for immediate consumption and also the conditions under which it is usually purchased. Among these, what essentially determines the attitude of the purchaser, specifically his inclination to be cautious, is the cost of the goods. As a general rule, an ordinary buyer does not exercise as much prudence in buying an article for which he pays a few centavos as he does in purchasing a more valuable thing. Expensive and valuable items are normally bought only after deliberate, comparative and analytical investigation. But mass products, low priced articles in wide use, and matters of everyday purchase requiring frequent replacement are bought by the casual consumer without great care. In this latter category is catsup.
At that, even if the labels were analyzed together it is not difficult to see that the Sunshine label is a colorable imitation of the Del Monte trademark. The predominant colors used in the Del Monte label are green and red-orange, the same with Sunshine. The word "catsup" in both bottles is printed in white and the style of the print/letter is the same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a tomato. It has been aptly observed that the ultimate ratio in cases of grave doubt is the rule that as between a newcomer who by the confusion has nothing to lose and everything to gain and one who by honest dealing has already achieved favor with the public, any doubt should be resolved against the newcomer inasmuch as the field from which he can select a desirable trademark to indicate the origin of his product is obviously a large one.
CASE 6 Mirpuri vs CA, GR No. 114508, 19 November 1999, 318 SCRA 516 FACTS
Lolita Escobar applied with the Bureau of Patents for the registration of the trademark “Barbizon”, alleging that she had been manufacturing and selling these products since 1970. private respondent Barbizon Corp opposed the application in IPC No. 686. The Bureau granted the application and a certificate of registration was issued for the trademark “Barbizon”. Escobar later assigned all her rights and interest over the trademark to petitioner Mirpuri. In 1979, Escobar failed to file with the Bureau the Affidavit of Use of the trademark. Due to his failure, the Bureau cancelled the certificate of registration. Escobar reapplied and Mirpuri also applied and this application was also opposed by private respondent in IPC No. 2049, claiming that it adopted said trademark in 1933 and has been using it. It obtained a certificate from the US Patent Office in 1934. Then in 1991, DTI cancelled petitioner’s registration and declared private respondent the owner and prior user of the business name “Barbizon International”.
ISSUE Whether or not the treaty (Paris Convention) affords protection to a foreign corporation against a Philippine applicant for the registration of a similar trademark.
HELD The Court held in the affirmative. RA 8293 defines trademark as any visible sign capable of distinguishing goods. The Paris Convention is a multilateral treaty that seeks to protect industrial property consisting of patents, utility models, industrial designs, trademarks, service marks, trade names and indications of source or appellations of origin, and at the same time aims to repress unfair competition. In short, foreign nationals are to be given the same treatment in each of the member countries as that country makes available to its own citizens. Nationals of the various member nations are thus assured of a certain minimum of international protection of their industrial property.
CASE 7 G.R. No. 100098 December 29, 1995 EMERALD GARMENT MANUFACTURING CORPORATION, petitioner, vs.
HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC., respondents. Facts: 1.
2.
3.
On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 for the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation. Private respondent averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as previously registered and used in the Philippines cause confusion, mistake and deception on the part of the purchasing public as to the origin of the goods. On 19 July 1988, the Director of Patents rendered a decision granting private respondent's petition for cancellation and opposition to registration. The Director of Patents, using the test of dominancy, declared that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. It is undeniably the dominant feature of the mark.
Issue: 1. The only issue involved in this case is whether or not respondent-registrant's trademark "STYLISTIC MR. LEE" is confusingly similar with the petitioner's trademarks "LEE or LEERIDERS, LEE-LEENS and LEE-SURES." Held: No, the trademark "STYLISTIC MR. LEE" is entirely different from and not confusingly similar to private respondent's "LEE" trademark. Under the Trademark Law states thus: Sec. 22. 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 trade-name in connection with the sale, offering for sale, or advertising of any goods, business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or or igin of such goods or services, or identity of such business; or reproduce, counterfeit, copy or colorably imitable any such mark or trade-name 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. In determining whether colorable imitation exists, jurisprudence has developed two kinds of tests, the Dominancy Test and the Holistic. As its title implies, the test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement. In this case, Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label the word "LEE" is prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities between the two marks become conspicuous, noticeable and substantial enough to matter especially in the light of the following variables that must be factored in. First, the products involved in the case at bar are, in the main, various kinds of jeans. Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is less likely. Second, the average Filipino consumer generally buys his jeans by brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He is, therefore, more or less knowledgeable and familiar with his preference and will not easily be distracted. Finally, more credit should be given to the "ordinary purchaser." Cast in this particular controversy, the ordinary purchaser is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product involved. There is no cause for the Court of Appeal's apprehension that petitioner's products might be mistaken as "another variation or line of garments under private respondent's 'LEE' trademark". As one would readily observe, private respondent's variation follows a standard format " LEE RIDERS," " LEE SURES" and " LEE LEENS." It is, therefore, improbable that the public would immediately and naturally conclude that petitioner's "STYLISTIC MR. LEE" is but another variation under private respondent's "LEE" mark. Taking into account these unique factors, we conclude that the similarities in the trademarks in question are not sufficient as to likely cause deception and confusion tantamount to infringement. CASE 8 Gabriel-Almoradie v. CA (G.R. No. 91385) Fatcs:
Petitioner’s claim Perez filed a complaint for unfair competition with injunctions and damages, dated August 8, 1961 docketed as Civil case No. 2422, against Gabriel. In the said complained, Perez alleged that Gabriel, without just cause and in violation of the terms of the distributorship agreement, stopped selling and distributing “WONDER” soap. And instead on October 3, 1960 Gabriel tried to register the tr ademark “WONDER” in her name.
Respondents Claim On October 19, 1962, Gabriel in Inter Partes case No. 280, filed a Petition to cancel certificate of registration No. SR- 389 covering the trademark “WONDER” for beauty soap in the name of Dr. Perez. Gabriel claims that the exclusive ownership of the trademark “WONDER” is vested in her by virtue of her agreement with Perez. Petitioner now comes to us arguing that our decision in the case of Gabriel v. Perez supra, has become Funcus Officio on account of the prior registration of the trademark “WONDER” by Go Hay and its subsequent assignment to petitioner’s predecessors and that the cancellation of respondent’s trademark rendered the Civil Case No. c -8147 moot and academic. Issue: WON the decision in the case of Gabriel v.Perez, become functus officio? Held: In the interest of the public and for the expeditious administration of justice the issue on infringement shall be resolved by the court considering that this case has dragged on for years and has gone from one forum to another. It is rule of procedure leaving no root or branch to bear the seeds of future litigation. No useful purpose will be served if the case or the determination of an issue in a case is remanded to the trial court only to have its decision raised again to the Court of Appeals and from the rule to the Supreme Court. We laid down the rule that the remand of the case or of an issue to the lower court for further reception of evidence is not necessary where the court is in position to resolve the dispute based on the records before it and particularly where the ends of justice would not be subserved by the remand thereof. Moreover, the Supreme Court us clothed with ample authority to review matters, even though those not raised on appeal if it finds that their consideration is necessary in arriving at the just disposition of the case.
CASE 9 AMERICAN WIRE & CABLE COMPANY V. DIRECTOR OF PATENTS NO. L-26557) Facts:
(G.R.
Respondent Central Banahaw Industries applied for the registration of its trademark ‘Dynaflex’ to be used in electric wires. Petitioner American Wire, authorized user of the mark ‘Duraflex’ placed also on electric wires, opposed on the ground that the registration of the mark would cause confusion or result in mistake to purchasers intending to buy their products. The Director of Patents gave due course to the application holding that the two marks were not similar. Issue: Whether or not the two trademarks are confusingly similar. Ruling: YES. Earlier rulings of the Court seem to indicate its reliance on the dominancy test or the assessment of the essential or dominant features in the competing labels to determine whether they are confusingly similar. The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not only are the initial letters and the last half of the appellations identical, but the difference exists only in two out of the eight literal elements of the designations. Coupled with the fact that both marks cover insulated flexible wires under class 20; that both products are contained in boxes of the same material, color, shape and size; that the dominant elements of the front designs are a red circle and a diagonal zigzag commonly related to a spark or flash of electricity; that the back of both boxes show similar circles of broken lines with arrows at the center pointing outward, with the identical legen d “Cut Out Ring” “Draw From Inside Circle”, no difficulty is experienced in reaching the conclusion that there is a deceptive similarity that would lead the purchaser to confuse one product with the other. *Relying on the doctrine enunciated in the Etepha case and the earlier ruling in Lim Hoa vs. Director of Patents, applicant-appellee contends that the DYNAFLEX mark would not confuse or deceive the buyers and subscribers of the DURAFLEX brand, because electrical wires are of great value and the purchasers thereof are generally intelligent — the architects, engineers and building contractors. It must be realized, however, that except perhaps in big constructions, the designing architect or engineer, or the contractor who will undertake the work of building, does not himself purchase or place the order for the purchase of the materials to be used therein. The task is oftentimes delegated to another. Nor are said technical men the ones personally laying down the wiring system in the building that they could possibly check on whether or not the correct wires are being used. So that even if the engineer or contractor will specify in the bill of materials the particular brand of wires needed, there is no certainty that the desired product will be acquired. For, unlike the pharmacists or druggists, the dispensers of hardware or electrical supplies are not generally known to pay as much concern to the brand of articles asked for by the customer and of a person who knows the name of the brand but is not acquainted with it is appearance, the likelihood of the DYNAFLEX product being mistaken for DURAFLEX is not remote. (JBL Reyes’ wisdom) CASE 10 R. F. & J. ALEXANDER & CO., LTD., and KER & Co., LTD., petitioner, vs. JOSE ANG
Facts: A sewing thread named "Aurora," "Mayflower" and "Agatonica" with labels and in boxes, which in color design and general aspect closely resembled those of the thread "Alexander" manufactured in Scotland by R. F. & J. Alexander Co., Ltd., and distributed in the Philippines by Ker & Co. Ltd., for the last 50 years. The defendants, denying the similarity, and disclaiming any intention to deceive the public or defraud the plaintiffs, set up two specific defenses: (1) they were sellers — not manufacturers; (2) the trade names "Aurora" et al. had been duly registered. Issue: whether or not there is no unfair competition when a product is sold under a registered trademark. Held: Yes. There is unfair competition even when a product is under registered trademark. Section 29 of Republic Act No. 166 makes guilty of unfair competition — among others — "any person, who in selling his goods shall give them the general appearan ce of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping 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. In cases of unfair competition, while the requisite degree of resemblance or similarity between the names, brands, or other indicia is not capable of exact definition, it may be stated generally that the similarity must be such, but need only be such, as is likely to mislead purchasers of ordinary caution and prudence, or in other words, the ordinary buyer, into the belief that the goods or wares are those, or that the name or business is that, of another producer or tradesman. It is not necessary in either case that the resemblance be sufficient to deceive experts, dealers, or other persons specially familiar with the trademark or goods involved. Nor is it. material that a critical inspection and comparison would disclose differences, or that persons seeing the trademarks or articles side by side would not be deceived. The defendants' labels and boxes have the general appearance of plaintiffs' and are likely to induce ordinary purchasers to buy them as "Alexander." The plaintiffs would thereby be deprived of a portion of their legitimate trade and deceptive devices.Unfair competition there was obviously.
CASE 11 Lim Hoa vs.Director of Patents
Facts: On April 26, 1949, the Petitioner , Lim Hoa, filed with the Patent Office an application for the registration of a trademark, consisting of a representation of two midget roosters in an attitude of combat with the word “Bantam” printed above them, he claiming that he had used said trademark on a food seasoning product since April 25 of that year. The application was published in the Official Gazette in its issue of February, 1953, released for circulation on April 18, of the same year. On April 30, 1953, the Agricom Development Co., Inc., a domestic corporation, opposed the application on several grounds, among others, that the trademark sought to be registered was confusingly similar to its register mark, consisting of a pictorial representation of a hen with the words “Hen Brand” and “Marca Manok”, which mark or brand was also used on a food seasoning product, before the use of the trademark by the applicant.
Issue: Whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers.
Ruling: Yes. In the case of Go Tiong Sa vs. Director of Patents, (95 Phil., 1), we had occasion to say the following:chanroblesvirtuallawlibrary “ It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor it is necessary that the infringing label should suggest an effort to imitate. (C. Neilman Brewing Co. vs. Independent Brewing Co., 191 F. 489, 495, citing Eagle White Lead Co. v. Pflugh (CC) 180 Fed. 579) The herein product is generally purchased by cooks and household help, sometimes illiterate who are guided by pictorial representations and the sound of the word descriptive of said representation. The two roosters appearing in the trademark of the applicant and the hen appearing on the trademark of the Oppositor , although of different sexes, belong to the same family of chicken, known as manok in all the principal dialects of the Philippines, and when a cook or a household help or even a housewife buys a food seasoning product for the kitchen the brand of “Manok” or “Marca Manok” would most likely be upper most in her mind and would influence her in selecting the product, regardless of whether the brand pictures a hen or a rooster or two roosters. To her, they are all manok. Therein lies the confusion, even deception. We do not see why applicant could not have stretched his imagination even a little and extended his choice to other members of the animal kingdom, as a brand to differentiate his product from similar products in the market. CASE 12 SCARVES BY VERA, INC., Plaintiff-Appellant,v.TODO IMPORTS LTD. (INC.), Defendant-Appellee. No. 769, Docket 75-7529. Facts:
Plaintiff Scarves by Vera, Inc. is a well-known and highly successful fashion designer. Plaintiff designs and manufactures a line of women's signature scarves, medium-high fashion women's sportswear, and a variety of dining room, bedroom and bathroom linens. Defendant Todo Imports Ltd. is a New York corporation which, since 1970, has been the exclusive distributor in New York of certain cosmetics and toiletries manufactured by Vera Perfumeria y Cosmetica, S.A. of Barcelona, Spain (Vera, S.A.). Plaintiff commenced this action for trademark infringement and unfair competition under the Lanham Act of 1946, 15 U.S.C. § 1051 et seq., and under state law. In its complaint, plaintiff alleged its ownership of the registered trademark "VERA" on scarves, women's sportswear, and a large variety of linens. Plaintiff claimed that the defendant had infringed its trademark by using the mark "VERA" on cosmetics and toiletries manufactured in Spain by Vera, S.A. and distributed in the United States by the defendant. Plaintiff sought injunctive relief, damages and an accounting. Vera, S.A. was not named as a defendant and has not sought to intervene in this action. Issue: 1. WON plaintiff is entitled to protection of its trademark "VERA" against defendant's use of the name on cosmetics, perfumes and toiletries? 2. WON defendant's use of the mark "VERA" infringed plaintiff's trademark? Ruling: 1. Yes. The trademark laws protect three interests which are present here: first, the senior user's interest in being able to enter a related field at some future time; second, his interest in protecting the good reputation associated with his mark from the possibility of being tarnished by inferior merchandise of the junior user; and third, the public's interest in not being misled by confusingly similar marks a factor which may weigh in the senior user's favor where the defendant has not developed the mark himself. 2. Yes. As the district court pointed out, a trademark owner's right to relief where the products are non-competitive depends upon a number of variables including the strength of his mark; the degree of similarity between the two marks; the proximity of the products; the likelihood that the prior owner will bridge the gap; actual confusion; the defendant's good faith in adopting his mark; the quality of defendant's product and the sophistication of the buyers. Plaintiff's "VERA" trademark clearly is a strong mark. Plaintiff's sales figures, its advertising expenditures and the many articles written about plaintiff clearly established that plaintiff's "VERA" trademark was highly successful and widely recognized in the medium-high fashion market. Our conclusion that
"VERA" is a strong mark is not affected by the fact that Vera is a common name. We need not decide whether such a name might provide a weaker mark in other circumstances, since we think plaintiff has clearly established secondary meaning entitling it to broad protection of the "VERA" mark. (Alfred Dunhill of London, Inc. v. Kasser Distillers Products Corp., supra, 350 F.Supp. at 135860.) Moreover, even when the mark in question is the name of the junior user, his right to use the name on his products may be limited, and he may be compelled to add some distinguishing words to reduce the possibility of confusion. S. C. Johnson & Son, Inc. v. Johnson, supra, 116 F.2d at 428-29.
CASE 13 ESSO STANDARD EASTERN, INC., petitioner, vs. THE HONORABLE COURT OF APPEALS ** and UNITED CIGARETTE CORPORATION, respondents.
G.R. No. L-29971; August 31, 1982 FACTS: Petitioner Esso Standard Eastern, Inc., then a foreign corporation duly licensed to do business in the Philippines, is engaged in the sale of petroleum products which are Identified with its trademark ESSO Private respondent in turn, is a domestic corporation then engaged in the manufacture and sale of cigarettes, after it acquired the business, factory and patent rights- one of the rights thus acquired having been the use of the trademark ESSO on its cigarettes, for which a permit had been duly granted by the Bureau of Internal Revenue. Petitioner asserted that the continued use by private respondent of the same trademark ESSO on its cigarettes was being carried out for the purpose of deceiving the public as to its quality and origin to the detriment and disadvantage of its own products.
ISSUE: Whether or not private respondent is liable for trade infringement, for using petitioner's trademark ESSO? RULING: No. According to the court, “the goods are obviously different from each other with "absolutely no iota of similitude" They are so foreign to each other as to make it unlikely that purchasers would think that petitioner is the manufacturer of respondent's goods. The mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different kind. Although petitioner's products are numerous, they are of the same class or line of merchandise which are non-competing with respondent's product of cigarettes, which as pointed out in the appealed judgment is beyond petitioner's "zone of potential or natural and logical expansion". When a trademark is used by a party for a product in which the other party does not deal, the use of the same trademark on the latter's product cannot be validly objected to. Another factor that shows that the goods involved are non-competitive and nonrelated is the appellate court's finding that they flow through different channels of trade, thus: The (petitioner's) products are distributed principally through gasoline service and lubrication stations, automotive shops and hardware stores. On the other hand, the (respondent's) cigarettes are sold in sari-sari stores, grocery stores, and other small distributor outlets. (Respondent's) cigarettes are even peddled in the streets while (petitioner's) 'gasul' burners are not. Finally, there is a marked distinction between oil and tobacco, as well as between petroleum and cigarettes. Evidently, in kind and nature the products of (respondent) and of (petitioner) are poles apart." CASE 14 CHUA CHE vs. PHILIPPINE PATENT OFFICE and SY TUO
Facts:
Chua Che presented with the Philippines Patent Office a petition for the registration in his favor the trade name of "X-7". Director of Patents denied the application upon the oppostion of respondent Sy Tuo. Sy Tuo claims that he owns the trademark and had been using it since 1951 as mark for perfume, lipstick and nail polish. The Director of Patents held that the products of the parties, while specifically different, are products intended for use in the home and usually have common purchasers. Furthermore, the use of X-7 for laundry soap is a natural expansion of business of Sy Tou.
Issue: Whether or not allowing Chua Che to register the same mark for laundry soap would likely to cause confusion on the purchasers of X-7products by SY Tou
Ruling: Yes. Registration of a trademark should be refused in cases where there is a likelihood of confusion, mistake or deception, even though the goods fall into different categories. The products of appellee are common household items in the same manner as laundry soap. The likelihood of purchasers to associate these products to a common origin is not far-fetched. From the standpoint of priority of use and for the protection of the buying public and appellee's rights to the trademark "X-7", it becomes manifest that the registration of said trademark in favor of applicant-appellant should be denied.
CASE 15 HICKOK MANUFACTURING CO., INC. vs. COURT OF APPEALS , G.R. No. L-44707 August 31, 1982
Facts: Petitioner Hickok Manufacturing Co, Inc. is a foreign corporation which registered the trademark for its adverse articles of leather wallets, key cases, money folds made of leather, belts, men’s briefs, neckties, handkerchiefs, and men’s socks. On the other hand, Lim Bun Liong (respondent) is registrant of a trademark of the same Hickok for its Marikina shoes. Hickok filed a petition to cancel the respondent’s registration of the trademark. The Director of Patent granted the petition of Hickok, but on appeal the Court of Appeals reversed the director’s decision and dismissed Hickok’s original p etition for cancellation on the ground that the trademarks of petitioner and that of the registrant were different in design and coloring of, as well as in the words on the ribbons. Hence, this present appeal. Issue: WON the registration of Lim Bun Liong’s trademeark for his Hickok Marikina shoes allowed Ruling: Yes. While the law does not require that the competing trademarks be identical, the two marks must be considered in their entirety, as they appear in the respecti ve labels, in relation to the goods to which they are attached. Thus, there must be not only resemblance between the trademark of the plaintiff and that of the defendant, but also similarity of the goods to which the two trademarks are respectively attached. Since in this case the trademark of petitioner-appellee is used in the sale of leather wallets, key cases, money folds made 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 case of Acoje Mining Co., Inc. vs. Director of Patents, supra, 'ought to have reached a different conclusion. It is established doctrine, as held in cited cases, that "emphasi s should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics" and that "the mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different kind." Taking into account the facts of record that petitioner, a foreign corporation registered the trademark for its diverse articles of men's wear such as wallets, belts and men's briefs which are all manufactured here in the Philippines by a licensee Quality House, Inc. but are so labelled as to give 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 traded in) and which are clearly labelled in block letters as "Made in Marikina, Rizal, Philippines," no error can be attributed to the appellate court in upholding respondent's registration of the same trademark for his unrelated and non-competing product of Marikina shoes. CASE 16 Faberge v IAC Digest G.R. No. 71189, November 4, 1992
Facts of the Case: Co Beng Kay applied for the registration of the trademark 'BRUTE' to be used it its underwear (briefs) products. The petitioner opposed on the ground that there is similarity with their own symbol (BRUT, Brut33 & Device) used on its af tershave, deodorant, cream shave, hairspray and hair shampoo/soaps and that it would cause injury to their business reputation. It must be noted that the petitioner never applied for registration of said trademark for its brief products. The Patent Office allowed Co Beng Kay the registration and this was further affirmed by the Court of Appeals. Issue: Is there confusing similarity between the challenged marks and that its use would likely cause confusion on the part of the purchasers?
HELD: NONE. Co Beng Kay may rightly appropriate the mark. In this case Sec. 20 (Philippine Intellectual Property Law) is controlling. The certificate of registration issued confers the exclusive right to use its own symbol only to those goods specified by the first user in the certificate, subject to any conditions or limitations stated therein. Moreover, the two products are so dissimilar that a purchaser of one (a brief) would not be misled or mistaken into buying the other (such as an aftershave).
CASE 17 G.R. No. L-21915 December 17, 1966 THE GEORGE W. LUFT COMPANY INC., NGO GUAN and DIRECTOR OF PATENTS, respondents. Facts:
petitioner,
vs.
1. Petitioner, George W. Luft Co., Inc. — a foreign corporation organized under the laws of the State of New York — is the owner of the trademark "Tangee", which it has allegedly used since February 28, 1928, and is covered by Certificate of Registration No. 2178-S of the Philippine Patent Office, dated February 21, 1950. 2. On January 22, 1959, Ngo Guan applied for the registration of the trademark "Tango", which he claims to have used since June, 1958. Petitioner objected thereto alleging that "Tango" is likely to be mistaken for "Tangee", upon the ground that the two trademarks are confusingly similar. 3. After appropriate proceedings the Director of Patents rendered a decision overruling said opposition and granting Ngo Guan's application. 4. Petitioner brought the matter before this Court for a review of said decision. Petitioner, which has the burden of proving its contention, has not, however, done so. Issue: The only issue for our determination is whether or not the "Tango" trademark is confusingly similar with the "Tangee" trademark, as contended by petitioner herein, as to be likely to be mistaken for the latter by the unsuspecting public. Held: To begin with, one of the factors essential therefor is whether or not there is a general similarity in the appearance of the trademarks in question, which can not be determined with reasonable certainty without a physical examination and comparison thereof. Petitioner has rendered such examination impossible, by not introducing any evidence whatsoever as to the appearance of the "Tangee" trademark. What is more, such omission suggests that its appearance is not analogous to that of respondent's "Tango", for, otherwise, petitioner would not have failed to present a sample of its trademark, for comparison with that of respondent Ngo Guan. Moreover, "Tango" is used by Ngo Guan for no other product than hair pomade, in which petitioner does not deal. Upon the other hand, petitioner's trademark is used for specified chemicals, medical and pharmaceutical preparations — namely: "lipstick, creme rouge, compact rouge, cleansing cream, day cream, night cream, massage cream, face lotion, astringent, face powder, powder compacts, cosmetics for lashes, brows, and hair, hair pencils, nail polish, perfumes, and toilet waters — and it is not claimed that Ngo Guan uses or intends to use its "Tango" trademark on articles of this kind. Thus, there is no confusion between the two trademark. CASE 18 Corporation v. Daway G.R. No. 157216 November 20, 2003
Lessons Applicable: Jurisdiction of Trial court, special affirmative defences on infringement Laws Applicable: FACTS: • Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and Crown Device, filed against 246 Corporation the instant suit for trademark infringement and damages with prayer for the issuance of a restraining order or writ of preliminary injunctionbefore the RTC of QC o July 1996: 246 adopted and , since then, has been using without authority the mark “Rolex” in its business name “Rolex Music Lounge” as well as in its newspaper advertisements as “Rolex Music Lounge, KTV, Disco & Party Club.” • 246 answered special affirmative defences: no confusion would arise from the use by petitioner of the mark “Rolex” considering that its entertainment business is totally unrelated to the items catered by respondents such as watches, clocks, bracelets and parts thereof • RTC: quashed the subpoena ad testificandum and denied petitioner’s motion for preliminary hearing on affirmative defenses with motion to dismiss • CA: affirmed ISSUE: W/N RTC performed a grave abuse of discretion HELD: NO. petition denied. RTC affirmed • The issue of whether or not a trademark infringement exists, is a question of fact that could best be determined by the trial court. • Section 123.1(f) of the Intellectual Property Code (Republic Act No. 8293) o (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided, further, That the interest of the owner of the registered mark are likely to be damaged by such use • Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely unrelated to respondents’ business involving watches, cl ocks, bracelets, etc. However, the Court cannot yet resolve the merits of the present controversy considering that the requisites for the application of Section 123.1(f), which constitute the kernel issue at bar, clearly require determination facts of which need to be resolved at the trial court. The existence or absence of these requisites should be addressed in a full blown hearing and not on a mere preliminary hearing. The respondent must be given ample opportunity to prove its claim, and the petitioner to debunk the same. CASE19 FRUIT OF THE LOOM, INC. v. COURT OF APPEALS and GENERAL GARMENTS CORPORATION. G.R. No. L-32747. November 29, 1984
FACTS: Petitioner is a corporation who owns the trademark Fruit of the Loom wherein the business is the selling of underwear. Respondent is a domestic corporation who owns the trademark Fruit for Eve whose business is similar to petitioners. Petitioner filed before the lower a complaint for trademark infringement and unfair competition against respondent citing that their names and hang tags are confusingly similar and is a colorable imitation. The trial court held in favor of petitioner. Respondent then appealed to the CA wherein the decision was reversed. The CA held that the word Fruit is a generic word, thus is not capable of exclusive appropriation and that petitioner is not entitled to the exclusive use of every word in their trademark. ISSUE: Whether there is trademark infringement. RULING: No. The SC stated that the there is no confusing similarity which would deceive buyers. The SC declared that the word Fruit in both goods is not enough to show that buyers will get confused over such. It was not the dominant feature of both products. In relation to the hang tags, the SC did find similarities but the differences were more glaring and striking, The similarities of the competing trademarks in this case are completely lost in the substantial differences in the design and general appearance of their respective hang tags
CASE 20 Co Tiong Sa vs Director
Co Tiong Sa has been producing T-shirts since March 1947 and he had been using the brand “Freedom” which has been designed and imprinted on the shirts he was
manufacturing. He applied his trademark to be registered but the application was opposed by Saw Woo Chiong who alleged that “Freedom” is an infringement of Saw Woo Chiong’s trademark “Freeman” which is also being used in his T -Shirt business and was a registered trademark since 1938. The Director of Patents noted that there are differences between the designs but each trademark gives the same general impression and are confusingly similar and so he ruled against the application of Co Tiong Sa as he further ruled that if Co Tiong Sa’s application is approved and, if it would not result to confusion or deception, Saw Woo Chiong would nevertheless be damaged. ISSUE: Whether or not the Director of Patents is correct. HELD: Yes. There is no question that if the details of the two trademarks are to be considered, many differences would be noted that would enable a careful and scrutin izing eye to distinguish one trademark from the other. But diffe rences of variations in the details of one trademark and of another are not the legally accepted tests of similarity in trademarks. It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likel y to result, infringement takes place. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers – this is the universal test applicable. In the case at bar, the dominant characteristic of Saw Woo Chiong’s trademark “Freeman” has bee n imitated by Co Tiong Sa’s “Freedom” such as to confuse the unwary customers and to deceive them into believing that the articles bearing one label are similar.
CASE 21 PHILIPPINE NUT INDUSTRY, INC. vs. STANDARD BRANDS INCORPORATED and TIBURCIO S. EVALLE as Director of Patents G.R. No. L-23035 July 31, 1975 Facts: Philippine Nut Industry Inc., a domestic corporation, obtained from the Patent Office on August 10, 1961, a certificate covering the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS," the label used on its product of salted peanuts.
On May 14, 1962, Standard Brands, a foreign corporation, filed a case with the Director of Patent, asking for the cancellation of Philippine Nut's certificate of registration on the ground that "the registrant was not entitled to register the mark at the time of its application for registration thereof" for the reason that it (Standard Brands) is the owner of the trademark "PLANTERS COCKTAIL PEANUTS" covered by Certificate of Registration No. SR-172, issued by the Patent Office on July 28, 1958. Thereafter, the Philippine Nut filed its answer invoking the special defense that its registered label is not confusingly similar to that of Standard Brands as the latter alleges. Respondent Director of Patents gave due course to Standard Brand's petition, ordering the cancellation of Philippine Nut's Certificate of Registration. Upon denial of the motion for reconsideration, the Philippine Nut petitioned for a review, seeking the reversal of the Director of Patents’ d ecision. Issue: Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by Philippine Nut on its label for salted peanuts with the same coloring scheme and the same lay-out of words, confusingly similar to the trademark "PLANTERS COCKTAIL PEANUTS" used by Standard Brands on its product. Ruling: Yes. As to appearance and general impression of the two trademarks, the Supreme Court said it found a very confusing similarity. The word PLANTERS printed across the upper portion of the label in bold letters easily attracts and catches the eye of the ordinary consumer and it is that word and none other that sticks in his mind when he thinks of salted peanuts. The Supreme Court also held that although it is true that no producer or manufacturer may have a monopoly of any color scheme or form of words in a label, but when a competitor adopts a distinctive or dominant mark or feature of another's trademark and with it makes use of the same color ensemble, employs similar words written in a style, type and size of lettering almost identical with those found in the other trademark, the intent to pass to the public his product as that of the other is quite obvious. It deceives the public. Hence, the decision of respondent Director of Patents was affirmed. CASE 22 ANDRES ROMERO, petitioner, vs. MAIDEN FORM BRASSIERE CO., INC., and THE DIRECTOR OF PATENTS, respondents. G.R. No. L-18289 March 31, 1964 Facts:
Respondent company, a foreign corporation, filed with respondent Director of Patents an application for registration (pursuant to Republic Act No. 166) of the trademark "Adagio" for the brassieres manufactured by it. In its application, respondent company alleged that said trademark was first used by it in the United States and in the Philippine; that it had been continuously used by it in trade in, or with the Philippines for over 10 years; that said trademark "is on the date of this application, actually used by respondent company on the following goods, classified according to the official classification of goods (Rule 82) - Brassieres, Class 40"; and that said trademark is applied or affixed by respondent to the goods by placing thereon a woven label on which the trademark is shown. Acting on said application, respondent Director approved for publication in the Official Gazette said trademark of respondent company, in accordance with Section 7 of Republic Act No. 166 (Trademark Law), having found, inter alia, that said trademark is "a fanciful and arbitrary use of a foreign word adopted by applicant as a trademark for its product; that it is neither a surname nor a geographical term, nor any that comes within the purview of Section 4 of Republic Act No. 166; and that the mark as used by respondent company convincingly shows that it identifies and distinguishes respondent company's goods from others." Respondent Director issued to respondent company a certificate of registration of with, trademark "Adagio". Petitioner filed with respondent Director a petition for cancellation of said trademark, on the grounds that it is a common descriptive name of an article or substance on which the patent has expired; that its registration was obtained fraudulently or contrary to the provisions of Section 4, Chapter II of Republic Act No. 166; and that the application for its registration was not filed in accordance with the provisions of Section 37, Chapter XI of the same Act. Petitioner also alleged that said trademark has not become distinctive of respondent company's goods or business; that it has been used by respondent company to classify the goods (the brassieres) manufactured by it, in the same manner as petitioner uses the same; that said trademark has been used by petitioner for almost 6 years; that it has become a common descriptive name; and that it is not registered in accordance with the requirements of Section 37(a), Chapter XI of Republic Act No. 166.
Issue: 1. WON the trademark "Adagio" has become a common descriptive name of a particular style of brassiere and is, therefore, unregistrable? 2. WON Respondent Director erred in registering the trademark in question, despite appellee's non-compliance with Section 37, paragraphs 1 and 4 (a) of Republic Act No. 166?
3. WON the registration of the trademark in question was fraudulent or contrary Section 4 of Republic Act No. 166?
Ruling: 1. This claim is without basis in fact. The evidence shows that the trademark "Adagio" is a musical term, which means slowly or in an easy manner, and was used as a trademark by the owners thereof (the Rosenthals of Maiden Form Co., New York) because they are musically inclined. Being a musical term, it is used in an arbitrary (fanciful) sense as a trademark for brassieres manufactured by respondent company. It also appears that respondent company has, likewise, adopted other musical terms such as "Etude" (Exh. W2), "Chansonette" (Exh. W-3), "Prelude" (Exh. W-4), "Over-ture" (Exh. W-6), and "Concerto" (Exh. V), to identify, as a trademark, the different styles or types of its brassieres. As respondent Director pointed out, "the fact that said mark is used also to designate a particular style of brassiere, does not affect its registrability as a trademark" (Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 111 USPQ 105).1äwphï1.ñët It is not true that respondent company did not object to the use of said trademark by petitioner and other local brassiere manufacturers. The records show that respondent company's agent, Mr. Schwartz, warned the Valleson Department Store to desist from the sale of the "Adagio" Royal Form brassieres manufactured by petitioner, and even placed an advertisement (Exhs. 3 & 4) in the local newspapers (Manila Daily Bulletin, Manila Times, Fookien Times, and others) warning the public against unlawful use of said trademark. The advertisement (Exh. U) in the Manila Times made by respondent company on February 9, 1958, was brought to petitioner's attention, which must have prompted him to file this present petition for cancellation, on February 26, 1958. On the other hand, respondent company's long and continuous use of the trademark "Adagio" has not rendered it merely descriptive of the product. In Winthrop Chemical Co. v. Blackman (268 NYS 653), it was held that widespread dissemination does not justify the defendants in the use of the trademark. 2. This contention flows from a misconception of the application for registration of trademark of respondent. As we see it, respondent's application was filed under the provisions of Section 2 of Republic Act No. 166 as amended by Section 1 of Republic Act 865 which reads as follows:
"SEC. 2. What are registrable — Trademarks, ... own by persons, corporations, partnerships or associations domiciled ... in any foreign country may be registered in accordance with the provisions of this Act: Provided, That said trademarks, trade-names, or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed: ..." Section 37 of Republic Act No. 166 can be availed of only where the Philippines is a party to an international convention or treaty relating to trademarks, in which the trade-mark sought to be registered need not be use in the Philippines. The applicability of Section 37 has been commented on by the Director of Patents, in this wise: Trademark rights in the Philippines, without actual use the trademark in this country can, of course, be created artificially by means of a treaty or convention with another country or countries. Section 37 of the present Philippine Trademark Law, Republic Act No. 166 (incorporated as Rule 82 in the Rules of Practice for Registration of Trademarks) envisions the eventual entrance of the Philippines into such convention treaty. It is provided in said section that applications filed thereunder need not allege use in the Philippines of the trade mark sought to be registered. The Philippines has, however not yet entered into any such treaty or convention and, until she does, actual use in the Philippines of the trademark sought to be registered and allegation in the application of such fact, will be required in all applications for original or renewal registration submitted to the Philippine Patent Office. (Circular Release No. 8.) 3. There is no evidence to show that the registration of the trademark "Adagio" was obtained fraudulently by appellee. The evidence record shows, on the other hand, that the trademark "Adagio" was first exclusively in the Philippines by a appellee in the year 1932. There being no evidence of use of the mark by others before 1932, or that appellee abandoned use thereof, the registration of the mark was made in accordance with the Trademark Law. Granting that appellant used the mark when appellee stopped using it during the period of time that the Government imposed restrictions on importation of respondent's brassiere bearing the trademark, such temporary non-use did not affect the rights of appellee because it was occasioned by government restrictions and was not permanent, intentional, and voluntary. To work an abandonment, the disuse must be permanent and not ephemeral; it must be intentional and voluntary, and not involuntary or even
compulsory. There must be a thorough-going discontinuance of any trade-mark use of the mark in question (Callman, Unfair Competition and Trademark, 2nd Ed., p. 1341). The use of the trademark by other manufacturers did not indi cate an intention on the part of appellee to abandon it. "The instances of the use by others of the term 'Budweiser, cited by the defendant, fail, even when liberally construed, to indicate an intention upon the part of the complainant to abandon its rights to that name. 'To establish the defense of abandonment, it is necessary to show not only acts indicating a practical abandonment, but an actual intention to abandon. Saxlehner v. Eisener & Mendelson Co., 179 U.S. 19, 21 S. Ct. 7 (45 L. Ed. 60). (AnheuserBusch, Inc. v. Budweiser Malt Products Corp., 287 F. 245.)
CASE 23 KING-SEELEY THERMOS CO., plaintiff-appellee, vs. ALADDIN INDUSTRIES, INCORPORATED, defendant-appellant.
FACTS: In 1907 King-Seeley Thermos Co. (petitioner) began marketing a vacuuminsulated liquid container under the name “Thermos”. In the early 1960s, Aladdin Industries, Inc. (defendant) began ma rketing a container with the name “thermos” in it. Petitioner brought an action seeking to enjoin use of the name. The district court, finding that most of the public had come to associate the word “thermos” as a generic description of a vacuum liquid con tainers, decline to enjoin its use. The court’s order merely mandated that defendant not try to pass off its thermos, as the original thermos. King-Seeley appealed.
ISSUE: Is a trademark that acquires a generic meaning enforceable? RULING: NO. A trademark that acquires a generic meaning is no longer enforceable (rule of law). With respect to trademarks, the ultimate question is what the public understands when a word is used. If the public understands that word to mean a particular brand of a product, that word is a valid trademark. If the public, on the other hand, believes the word to describe the type of product it represents, then the name is generic and the trademark may not be enforced. That is true no matter what steps a manufacturer may have taken to avoid this result. Once a trademark is appropriated by the public, it is no longer a trademark. Here, the district court found the word “thermos” to have acquired a generic meaning, and this is supported by the record.
[Analysis: The rule stated above presents an innovative party with the danger of becoming a victim of its own success. If a party manages to get the public to identify a product with its own brand, the brand name may lose its distinctiveness. History abounds with brand names that eventually became generic. Examples include “aspirin” and “cellophane”. ]
CASE 24 MASSO HERMANOS vs Director of Patents
Facts:
Masso Hermanos is the registered owner of the trademark composed of the word "Cosmopolite" used on canned fish. Said trademark was first register ed and the certificate of registration was issued on March 16, 1917 for a period of thirty years. On June 14, 1948, Masso Hermanos, applied for a new certificate of registration of said trademark but the trademark examiner denied the petition on the ground that the word "Cosmopolite", as a trademark for canned fish is descriptive of said goods, therefore is not entitled to registration. The Director of Patents affirmed the ruling of the trademark examiner.
Issue: Is the word "Cosmopolite" descriptive?
Ruling: No. The word "Cosmopolite" does not give the name, quality or description of the canned fish for which it is used. It does not even describe the place of origin, for it does not indicate the country or place where the canned fish was manufactured. It is a very general term which does not give the kind or quality of the goods. For example, a dealer in shoes cannot register a trademark "Leather Shoes" because that would be descriptive and it would be right to use the same words with reference to their merchandise. Therefore the registration of the trademark "Cosmopolite" is valid and subsisting and the Director of Bureau of Patents should not reverse the former officer in charge of trademark registration, which has been accepted and in force since 1917 up to the present.
CASE 25 G.R. No. L-28554 February 28, 1983 UNNO COMMERCIAL ENTERPRISES, INCORPORATED, petitioner,vs. GENERAL MILLING CORPORATION and TIBURCIO S. EVALLE, in his capacity asDirector of Patents, respondents.
FACTS : The Court affirms respondent Director of Patent's decision declaring respondentGeneral Milling Corporation as the prior user of the trademark "All Montana" on wheat flour inthe Philippines and ordering the cancellation of the certificate of registration for the sametrademark previously issued in favor of petitioner Unno Commercial Enterprises,Incorporated, it appearing that Unno Commercial Enterprises, Inc. merely acted as exclusivedistributor of All Montana wheat flour in the Philippines. Only the owner of a trademark, tradename or service mark may apply for its registration and an importer, broker, indentor or distributor acquires no rights to the trademark of the goods he is dealing with in the absenceof a valid transfer or assignment of the trade mark.On December 11, 1962, respondent General Milling Corporation filed an application for theregistration of the trademark "All Montana" to be used in the sale of wheat flour. In view of the fact that the same trademark was previously, registered in favor of petitioner UnnoCommercial Enterprises, Inc.. Respondent General Milling Corporation, in its application for registration, alleged that it started using the trademark "All Montana" on August 31, 1955 andsubsequently was licensed to use the same by Centennial Mills, Inc. by virtue of a deed of assignment executed on September 20, 1962. On the other hand petitioner UnnoCommercial Enterprises, Inc. argued that the same trademark had been registered in itsfavor on March 8, 1962 asserting that it started using the trademark on June 30, 1956, asindentor or broker for S.H. Huang Bros. & Co., a local firm.The Director of Patents, after hearing, ruled in favor of respondent General MillingCorporation. and rendered its decision as follows:ISSUE : Whether or not director of patents can issue cancellation of the certification of registration?HELD : The Court finds without merit petitioner's argument that the Director of Patents couldnot order the cancellation of' its certificate of registration in an interference proceeding andthat the question of whether or not a certificate of registration is to be cancelled should havebeen brought in cancellation proceedings. Under Rule 178 of the Rules of the Patent Officein Trademark Cases, the Director of Patents is expressly authorized to order thecancellation of a registered mark or trade name or name or other mark of ownership in aninter partes case, such as the interference proceeding at bar.The right to register trademark is based on ownership. When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. Under the Trademark Law only the owner of the trademark, trade name or service mark usedto distinguish his goods, business or service from the goods, business or service of others isentitled to register the same. The term owner does not include the importer of the goods bearing the trademark, tradename, service mark, or other mark of ownership, unless such importer is actually the owner thereof in the country from which the goods are imported. A local importer, however, may make application for the registration of a foreign trademark, trade name or service mark if heis duly authorized by the actual owner of the name or other mark of ownership. Thus, petitioner's contention that it is the owner of the mark "All Montana" because of itscertificate of registration issued by the Director of Patents, must fail, since ownership of atrademark is not acquired by the mere fact of registration alone.
Registration merely createsa prima facie presumption of the validity of the registration, of the registrant's ownership of the trademark and of the exclusive right to the use thereof. Registration does not perfect atrademark right. As conceded itself by petitioner, evidence may be presented to overcomethe presumption. Prior use by one will controvert a claim of legal appropriation, bysubsequent users. In the case at bar, the Director of Patents found that "ample evidence waspresented in the record that Centennial Mills, Inc. was the owner and prior user in thePhilippines of the trademark 'All Montana' through a local importer and broker. Use of atrademark by a mere importer, indentor or exporter (the Senior Party herein) inures to thebenefit of the foreign manufacturer whose goods are Identified by the trademark. The Junior Party has hereby established a continuous chain of title and, consequently, prior adoptionand use" and ruled that "based on the facts established, it is safe to conclude that the Junior Party has satisfactorily discharged the burden of proving priority of adoption and use and isentitled to registration." It is well-settled that we are precluded from making further inquiry,since the findings of fact of the Director of Patents in the absence of any showing that therewas grave abuse of discretion is binding on us and the findings of facts by the Director of Patents are deemed conclusive in the Supreme Court provided that they are supported bysubstantial evidence. Petitioner has failed to show that the findings of fact of the Director of Patents are not substantially supported by evidence nor that any grave abuse of discretionwas committed.
CASE 26 Conrad and Company, Inc. v. CA, et.al., G.R. No. 115115, July 18, 1995 Crim Pro - Jurisdiction Facts: The respondents Fitrite, Inc. and its sister company, Victoria Biscuit Co., Inc. are domestic corporations engaged in the business of manufacturing, selling and distributing biscuits and cookies. Their products bear the trademark "SUNSHINE" in the Philippines
which was awarded by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) listing Fitrite as principal registrant.
Since May 20, 1983 when Fitrite was issued the Certificate of Registration for its trademark to the filing of its complaint against Conrad Company Inc., Fitrite and Victoria Biscuit have been manufacturing, selling and distributing on a massive scale biscuits and cookies bearing the "Sunshine" trademark making it popular in Metro Manila and in the provinces.
On May 30, 1990, Conrad's own Import Manager and Executive Assistant, Raul Olaya, executed an affidavit stating that Conrad had also been importing, selling and distributing biscuits and cookies, and other items bearing the same trademark as Fitrite and Victoria's. It was traced by the mentioned domestic corporations that on April 18, 1988, Conrad was designated as an exclusive importer and dealer of the products of "Sunshine Biscuits, Inc." for sale in the Philippine market.
A few days later, Conrad started its first importation and continuously did so. Through their counsel, Fitrite and Victoria addressed a letter to Conrad demanding that it cease and desist from continuing its operation and use of the subject trademark, but was ignored. This led Fitrite and Victoria to file a complaint against Conrad for infringement and unfair competition. Conrad sought to dismiss the complaint by invoking litis pendentia, the doctrine of primary jurisdiction, and failure to state a cause of action. Conrad argued that it has been granted distributorship by Sunshine Biscuits USA over the Philippine territory, and so, it follows that the basis of Fitrite and Victoria's claim is lodged under the exclusive jurisdiction of the BPTTT. The trial court found merit on the motion to dismiss the complaint.
Fitrite and Victoria filed a motion for reconsideration, but was denied by the lower court. The Court of Appeals, however, found merit on their claims and reinstated the complaint. Hence, this petition by Conrad praying that the Civil Case for "Injunction with Damages with Prayer for Preliminary Injunction" based on infringement and unfair competition filed by Fitrite and Victoria be dismissed.
Issue: Whether or not Fitrite and Victoria’s civil action against Conrad which was based on infringement and unfair competition be dismissed because of the doctrine of litis pendentia.
Held: No, the petition is without merit. An application for administrative cancellation of a registered trademark on any of the grounds enumerated in Section 17 of R.A. No. 166 or the Trade-Mark Law, as amended, falls under the exclusive jurisdiction of BPTTT. But, for infringement or unfair competition, as well as the remedy of injunction and relief for damages, it is explicitly and unquestionably within the competence and jurisdiction of ordinary courts. As held in an earlier decision by the Supreme Court, that the registration in the Principal Register gives rise to a presumption of validity of the registration and of the registrant's ownership and right to the exclusive use of the mark. Such registration can serve as the basis for an action of infringement which entitles the registrant whose right was invaded for court protection and relief.
Section 23 and Section 27 of Chapter V, of the Trade-Mark Law provides: Sec. 23. Actions, and damages and injunction for infringement. — Any person entitled to the exclusive use of a registered mark or trade-name may recover damages in a civil action from any person who infringes his rights, and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made, had the defendant not infringe his said rights, or the profit which the defendant actually made out of the infringement, or in the event such measure of damages cannot be readily ascertained with reasonable certainty, then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade-name was used in the infringement of the rights of the complaining party. In cases where actual intent to mislead the public or to defraud the complaining party shall be shown, in the discretion of the court, the damages may be doubled.
The complaining party, upon proper showing, may also be granted injunction.
CASE 27 G.R. No. L-75420 November 15, 1991 KABUSHI KAISHA ISETAN, petitioner, vs. THE INTERMEDIATE APPELLATE COURT, THE DIRECTOR OF PATENTS, and ISETANN DEPARTMENT STORE, INC., respondents.
FACTS: Petitioner Kabushi Kaisha Isetan is a foreign corporation organized and existing under the laws of Japan. It is the owner of the trademark "Isetan" and the "Young Leaves Design". The petitioner alleges that it first used the trademark Isetan on November 5, 1936. The petitioner claims to have expanded its line of business internationally from 1936 to 1974. On October 3, 1983, the petitioner applied for the registration of "Isetan" and "Young Leaves Design" with the Philippine Patent Office under Permanent Serial Nos. 52422 and 52423 respectively. Private respondent, Isetann Department Store, on the other hand, is a domestic corporation organized and existing under the laws of the Philippines. On May 30, 1980 and May 20, 1980, the private respondent registered "Isetann Department Store, Inc." and Isetann and Flower Design in the Philippine Patent Office. On November 28, 1980, the petitioner filed with the Phil. Patent Office two (2) petitions for the cancellation of Certificates of Supplemental Registration of the respondent stating that except for the additional letter "N" in the word "Isetan", the mark registered by the registrant is exactly the same as the trademark ISETAN owned by the petitioner and that the young leaves registered by the registrant is exactly the same as the young leaves design owned by the petitioner. Meanwhile, the petitioner also filed with the Securities and Exchange Commission (SEC) a petition to cancel the mark "ISETAN" as part of the registered corporate name of Isetann Department Store, Inc. On May 17, 1985, this petition was denied in a decision rendered by SEC's Hearing Officer, Atty. Joaquin C. Garaygay. On appeal, the Commission reversed the decision of the Hearing Officer on February 25, 1986. It directed the private respondent to amend its Articles of Incorporation within 30 days from finality of the decision. On April 15, 1986, however, respondent Isetann Department Store filed a motion for reconsideration. And on September 10, 1987, the Commission reversed its earlier decision dated February 25, 1986 thereby affirming the decision rendered by the Hearing Officer on May 17, 1985. The Commission stated that since the petitioner's trademark and tradename have never been used in commerce on the petitioner's products marketed in the Philippines, the trademark or tradename have not acquired a reputation and goodwill deserving of protection from usurpation by local competitors. This SEC decision which denied and dismissed the petition to cancel was submitted to the Director of Patents as part of the evidence for the private respondent.
On January 24, 1986, the Director of Patents after notice and hearing rendered a joint decision in Inter Partes Cases Nos. 1460 and 1461, this Office is constrained to hold that the herein Petitioner has not successfully made out a case of cancellation. On February 21, 1986, Isetan Company Limited moved for the reconsideration of said decision but the motion was denied on April 2, 1986. From this adverse decision of the Director of Patents, the petitioner appealed to the Intermediate Appellate Court (now Court of Appeals). On June 2, 1986, the IAC dismissed the appeal on the ground that it was filed out of time. ISSUE: 1. Whether or not the appeal is filed on time. 2. Whether or not petitioner may be afforded protection of its trade name. HELD: There is no dispute and the petitioner does not question the fact that the appeal was filed out of time.Not only was the appeal filed late in the Court of Appeals, the petition for review was also filed late with us. In common parlance, the petitioner's case is "twice dead" and may no longer be reviewed. The decision sought to be appealed is one rendered by the Philippine Patent Office, a quasi-judicial body. Consequently, under Section 23(c) of the Interim Rules of Court, the appeal shall be governed by the provisions of Republic Act No. 5434, which provides in its Section 2; Sec. 2. Appeals to Court of Appeals . - Appeals to the Court of Appeals shall be filed within fifteen (15) days from notice of the ruling, award, order, decision or judgment or from the date of its last publication, if publication is required by law for its effectivity; or in case a motion for reconsideration is filed within that period of fifteen (15) days, then within ten (10) days from notice or publication, when required by law, of the resolution denying the motion for reconsideration. No more than one motion for reconsideration shall be allowed any party. If no appeal is filed within the periods here fixed, the ruling, award, order, decision or judgment shall become final and may be executed as provided by existing law. Attention is invited to that portion of Section 2 which states that in case a motion for reconsideration is filed, an appeal should be filed within ten (10) days from notice of the resolution denying the motion for reconsideration. The decision of the Patent Office has long become final and executory. So has the Court of Appeal decision.
Regarding the petitioner's claims of substantial justice which led us to give due course, we decline to disturb the rulings of the Patent Office and the Court of Appeals. A fundamental principle of Philippine Trademark Law is that actual use in commerce in the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename. The trademark Law, Republic Act No. 166, as amended, under which this case heard and decided provides: SEC. 2. What are registrable.- Trademark, tradenames and service marks owned by persons, corporation, partnerships or associations domiciled in the Philippines and by persons, corporations, partnerships or associations domicided in any foreign country may be registered in accordance with the provisions of this Act: Provided, That said trademarks, tradenames, or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed: And provided, further, That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines, and such fact is officially certified, with a certified true copy of the foreign law translated into the English language, by the government of the foreign country to the Government of the Republic of the Philippines. (As amended by R.A. No. 865). SEC. 2-A. Ownership of trademarks, tradenames and service marks; how acquired . - Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful business, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade, in business, and in the service rendered, may appropriate to his exclusive use a trademark, a tradename, or a service mark not so appropriated by another, to distinguish his merchandise, business or service from the merchandise, business or service of others. The ownership or possession of a trademark, tradename, service mark, heretofore or hereafter appropriated, as in this section provided, shall be recognized and protected in the same manner and to the same extent as are other property rights known to the law. (As amended by R.A. No. 638)" These provisions have been interpreted in Sterling Products International, Inc. v. Farbenfabriken Bayer Actiengesellschaft (27 SCRA 1214 [1969]) in this way: 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 prerequisite to the acquisition of the right of ownership over a trademark. In fact, a prior registrant cannot claim exclusive use of the trademark unless it uses it in commerce.
