Trademark Cases - Digest

Intellectual Property Law AUF School of Law

Atty. Eric Recalde

PRIORITY IN ADOPTION AND USE/ EXCLUSIVE USE

CHUNG TE vs. NG KIAN GIAB and THE HONORABLE DIRECTOR OF PATENTS G.R. No. L-23791. November 23, 1966 Facts: Chung Te's contention: • March 13, 1957 an application for the registration of the same trademark "MARCA PIÑA. and Representation" was filed by Chung Te (Application No. 5544), although it was subsequently considered abandoned by reason of his failure to answer the communication of the Principal Trademark Examiner dated September 25, 1957. • Chung Te claims that since January 8, 1951 he had been using the trademark on undershirts (de hilo), T-shirts, and baby dresses. • For a long time petitioner was the purchasing agent for his father-in-law, who owned the Liong Bee Shirt Factory. Afterwards he decided to go into the same business for himself. His father-in-law, who theretofore had been using the tr • the factory became a member of the Philippine Chinese Underwear Manufacturers Association. According to Juanito Vitug, secretary of the association, before a firm was admitted as member it was required to inform the association of the trademark it was using to identify its products; and he found that among the files of the association the sample labels "Marca Piña" submitted by petitioner when he applied for membership were included. • Petitioner also applied for business permit (LIONG SUN Shirt Factory) It appears from his application that he had commenced business on February 1, 1952. Ng Kian Giab's contention: • Ng Kian Giab stated in his application that he had been using the trademark on undershirts since December 6, 1955. • At the hearing he sought to prove that his family had been using it since 1946. Jmvdg

From 1946 to 1955 Ng Kian Giab's family merely bought ready made polo shirts and undershirts to each of which they then sewed the label "Marca Piña" before resale to the public. • In 1955 the father transferred the business to Ng Kian Kee, who put up a factory — the Hongkong T-Shirt Manufacturer — and started producing undershirts bearing the trademark. When he decided to continue his studies in 1957, he, in turn, transferred the business to respondent. Decision of the Director of Patents • Director of Patents, however, declared that neither of them "satisfactorily adduced definite and conclusive proof of their asserted dates of first use of the trademark "Marca Piña"; and relying on the rule that "in inter plates cases, when neither of the parties have (has) satisfactorily proven the date of first use alleged in their applications, such date shall be confined to the filing date of the said application,” and granted the application of senior party applicant Ng Kian Giab. • Respondent Director disregarded all the evidence submitted by both parties and relied exclusively on the filing dates of the applications in reaching his conclusion as to the dates of first use by the senior party applicant and the junior party applicant, respectively. • Director of Patents gave due course to the application of Ng Kian Giab for registration of the trademark "Marca Piña" and representation thereof, and rejected Chung Te's own application for registration of the same trademark and a similar representation. Issue/ Answer: • Who between Chu Teng and Ng Kian Gab should be allowed to register the trademark "Marca Piña"? / Chung Te Ratio Decidendi: • Where an applicant for registration of a trademark states under oath the date of his earliest use, and later on he wishes to carry •

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back his first date of use to an earlier date he then takes on the greater burden of presenting "clear and convincing evidence" of adoption and use as of that earlier date. testimonial evidence presented by Ng Kian Giab and their witnesses falls short of the kind of proof required of respondent. It is doubtful that respondent's father would pay Genoveva Santos as high as P0.02 per label (which did not even bear his name) on polo shirts which he had purchased readymade, and which he could very well have sold without any label. The documentary evidence show clearly that respondent's use began only in 1955. petitioner has established prior use and adoption of the questioned trademark, for which reason he and not respondent Ng Giab is the one entitled to registration thereof. the decision of the Director of Patents is reversed. Petitioner is adjudged prior user of the trademark MARCA PIÑA and representation thereof, and its registration in his name is ordered Where the testimonial evidence for both parties has been entirely disregarded, and reliance is placed solely on the filing dates of the applications as proof of the respective dates of first use, then the abandoned application filed by the junior party applicant becomes cogent evidence to show that he first used the trademark as of the date of its filing SY CHANG vs. GAW LIU G.R. No. L-29123. March 29, 1972

Facts: • a petition was filed by Sy Chang to cancel a certificate of registration No. 10637, of a trademark, LION and TIGER issued by the Philippines Patent Office on December 12, 1963 in favor of respondent Gaw Liu • grounds: he had previously used such a trademark since 1952 on aniline basic colors or goods similar to those manufactured or sold by respondent whom Jmvdg

he accused of fraudulently appropriating and registering the same with full knowledge that he was not the owner. • The application was filed on February 20 of that year, the use of such trademark on his product consisting of dyestuffs allegedly dating back to 1956. • His firm allegedly is engaged in the manufacture of dyestuff, crayone, stationery, and school supplies, and in the sale of dyestuff the trademark LION and TIGER label has been adopted since 1952. • The witness identified a LION-TIGER label being used by Petitioner. It was designed for Venus Commercial in 1952 by Mr. Gaudencio Eugenio, a free lance artist who confirmed this fact by testifying that around June, 1952, upon request of Sy Chang, he designed a label for dyestuff, the LION & TIGER label, for which he was duly compensated. • The design was in turn first printed by Majestic Press owned by the other witness, Antonio T. Cheng, who affirmed that he knew Venus Commercial because of a printing job in 1952 pertaining to the 10,000 pieces of LION-TIGER label. Gaw Liu's contention: • Gaw Liu himself testified that he was engaged in chemical manufacturing since the Japanese occupation, with offices at Magdalena St., Manila. • in 1947, he used and adopted the brand TIGER for his dyestuff and later, he allegedly adopted LION & TIGER, made some sales, as shown by an invoice dated December 10, 1951 issued to Pue Chong Beng of Zamboanga. • He confirmed having known Venus Commercial in 1951 or 1952 through the owner he knew only as 'Mr. Cao' who used to offer him discarded materials such as dyestuff and empty cans. He also admitted knowing witness Sy Chang who worked for Venus Commercial, but only after 1952, but he had never been inside the firm's establishment; neither had he received any

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calendar from said firm. According to him, Venus Commercial sold dyestuff in 1950, or 1951, or 1952, using another brand he described as a lady carrying on her back two children holding two rotating small drums. After it stopped selling dyestuff of the 'Lady' brand, they started using the LION brand in 1952 or 1953. Asked how he advertised his trademark LION-TIGER, the Respondent said that it was a small business so he did not advertise it either by newspaper, radio, or handbills, but he sold it cheaper to convince people to use it both parties admitted that there was an arranged meeting between them to reach an amicable settlement with regard the trademark Lion & Tiger, but such meeting never pushed through as Gaw Liu is asking for 80,000 as value for the trademark which was then registered in his name

Issue: • WON Gaw Liu had proven that he has prior use of the trademark Lion and Tiger as oppose to the claim of Sy Chang Answer: • negative. He never presented proof required by law to invest him with exclusive, continuous adoption and use of the trademark which should consist in, inter alia, considerable sale since his adoption thereof combined with promotional work suitable to popularize the trademark. Ratio Decidendi: • Gaw Liu was asked to explain why he claimed to have used the trademark in 1947 when, according to his application he first used it in commerce on June 10, 1956. He explained that it was because the Patent Office required two months use at the time the application was filed • Where the rebuttable character of the validity of registration of the trademark registered in the name of respondent is put in issue, the evidentiary burden of proving invalidity rests upon the petitioner. From the Jmvdg

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facts as presented though, the conclusion reached is that the presumption had been rebutted, petitioner having shown "that at the time the respondent filed his application for registration and for years prior thereto, he was not the exclusive user of the trademark LION-TIGER. The burden of going forward is thus shifted to the respondent who must show that the subject matter of registration is, in fact, distinctive of his goods. the record is wanting in proof sufficient to show that Respondent-Registrant has actually and substantially adopted and used the trademark so as to show that his firm was the source or origin of his dyestuff. it has been admitted by respondent that he never advertised the trademark, either by newspaper, radio or handbills. He was not able to show extensive sales, except those made by him to Pua Chong Beng, which, however, may be considered as negligible and sporadic. No further sales were made as the record eloquently shows. These matters are necessary especially when Respondent alleges use on a date earlier than that alleged in his application, in which case his evidence, testimonial or documentary, must be definite, clear, and free from doubt or inconsistencies. Under the Rules of Practice in Trademark Cases (Rule 173), in all inter partes proceedings, the allegation of date of use in the application for registration of the applicant or of the registrant cannot be used as evidence in behalf of the party making the same. In case no testimony is taken as to the date of use, the party will be limited to the filing of the application as the date of his first use. because the Respondent was not able to prove his date of first use in commerce of the trademark LION-TIGER he is deemed to have used it on the filing date of his application which is February 20, 1963 the superior right of petitioner in view of

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what the decision called "the chain of circumstances" favorable to him namely his "use thereof in commerce, and a systematic preservation of the records to support his claim of continuous use, such as the making of the design, the printing of the design on labels, the actual use on the goods, advertising in calendars, and other acts of dominion, such as the filing of this petition for cancellation. The Certificate of Registration No. 10637 issued to Gaw Liu for the trademark LION & TIGER is "ordered cancelled.

PAGASA INDUSTRIAL CORPORATION vs. CA G.R. No. L-54158. November 19, 1982 Facts: • Sometime on November 9, 1961, the Philippines Patent Office issued Certificate of Registration No. 9331 in favor of respondent Kaisha covering the trademark "YKK" (Yoshida Kogyo Kabushiki) for slide fasteners and zippers in class 41. • 5 1/2 years after respondent's registration Pagasa filed an application for registration of exactly the same or identical trademark of "YKK" for zippers under class 41 which was allowed on April 4, 1968 with Certificate of Registration No. 13756. • Alleging that both trademark ("YKK") are confusingly similar, being used on similar products under the same classification of goods, respondent Kaisha filed with the Director of Patents a petition for cancellation of petitioner's registration of exactly the same trademark "YKK". • Director of Patents cancelled Registration No. 13756 in the name of Pagasa based on Section 4 (d) of RA 166, as amended (An Act to Provide for the Registration and Protection of Trade-Marks, Trade Names and Service-Marks; etc.) • on appeal to CA, Pagasa argued that there was laches on the part of Kaisha considering that notwithstanding the fact that the trademark was registered for the use of petitioner, it was not until January 23,

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1975, that Kaisha filed a petition for cancellation after a lapse of almost seven (7) years. • CA held that the equitable principles of laches, estoppel and acquiescence would not apply in this case for it has not been shown that Kaisha abandoned the use of the trademark • CA further held that Pagasa knew of the use of trademark "YKK" by respondent which are the initials of the company, and notwithstanding this knowledge it later on sought trade registration of the same trademark in its favor. Issue/Answer: • WON it is correct to say that the equitable principles of laches, estoppel and acquiescence cannot be applied in the instant case/ negative (Sec. 9, Trademark Law) • WON it is the fact of registration that vests one's right to a trademark/ negative (there must be prior commercial use) Ratio Decidendi: • The Director of Patents, stressed in his order of cancellation that the trademarks in question are "confusingly similar". However, the discussion made by the Senior Trademark Examiner of the Patents Office regarding the registrability of the mark revealed that "the concurrent registration of subject mark is not likely to cause purchasers confusion, mistake or deception," since the "over-all commercial impression of the marks are grossly different and used on goods not only falling under different classification, but also possessing different descriptive properties. • The products are sold through different trade channels or cutlets and are noncompeting. • The Trademark Law is very clear. It requires actual commercial use of the mark prior to its registration. There is no dispute that respondent corporation was the first registrant, yet it failed to fully substantiate its claim that it used in trade or business in the

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Philippines the subject mark; it did not present proof to invest it with exclusive, continuous adoption of the trademark which should consist among others, of considerable sales since its first use. • The invoices submitted by respondent which were dated way back in 1957 show that the zippers sent to the Philippines were to be used as "samples" and "of no commercial value." The evidence for respondent must be clear, definite and free from inconsistencies. • An unreasonable length of time had already passed before respondent asserted its right to the trademark. There is a presumption of neglect already amounting to "abandonment" of a right after a party had remained silent for quite a long time during which petitioner had been openly using the trademark in question. Such inaction on the part of respondent entitles petitioner to the equitable principle of laches. • respondent wanted goodwill and a wide market established at the expense of the petitioner but for its benefit. It is precisely the intention of the law, including a provision on equitable principle to protect only the vigilant, not those guilty of laches. • It is most unfair if at anytime, a previous registrant, even after a lapse of more than five (5) years, can ask for the cancellation of a similar or the same trademark, the registration of which was never opposed by the prior registrant. • Equity and justice, therefore, demand that petitioner should be allowed to continue the use of the subject mark and the mark which was supposedly registered under the name of respondent be deemed cancelled. Provision in question: Section 4 (d) of RA 166 "Sec. 4. Registration of trade-marks, tradenames, and service marks on the principal register. — There is hereby established a register of trademarks, tradenames and service marks which shall be known as the principal register. The owner of a trademark, tradename or service mark used to distinguish his goods, business or services from the goods. business or services of others shall have the right to register the same on the principal register unless it:

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xxx xxx xxx "(d) Consists of or comprises a mark or trade name which so resembles a mark or trade name registered in the Philippines or a mark trade name previously used in the Philippines by another and not abandoned as to be likely, when applied to or used in connection with the goods, business or services of the applicant, to cause confusion or mistake or to deceive purchasers; or x x x section 2, Trademark Law see page 11 Section 9-A of the Trademark Law "Equitable principles to govern proceedings: In opposition proceedings and all other inter partes proceedings in the Patent Office under this Act, equitable principle of laches, estoppel and acquiescence where applicable, may be considered applied."

dissenting opinion: (Aquino) • He who comes to court must come with clean hands • Pagasa acted in bad faith in registering the YKK trademark as it knows of the existence of Yoshida Kogyo Kabushiki and the latter's engineers even helped Pagasa with respect to business UNNO COMMERCIAL ENTERPRISES, INC. vs. GENERAL MILLING CORPORATION G.R. No. L-28554. February 28, 1983 Facts: • On December 11, 1962, respondent General Milling Corporation filed an application for the registration of the trademark "All Montana" to be used in the sale of wheat flour. • As the same trademark had been previously registered in favor of Unno, the Chief Trademark Examiner declared an interference proceeding between General Milling's application (Serial No. 9732), as Junior/Party-Applicant, and Unno's registration (Registration No. 9589), as Senior Party-Applicant to determine which party has previously adopted and used the trademark "All Montana. General Milling Corp's contention: • alleged that it started using the trademark "All Montana" on August 31, 1955 and

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subsequently was licensed to use the same by Centennial Mills, Inc. by virtue of a deed of assignment executed on September 20, 1962. Unno Commercial Enterprise's contention: • argued that the same trademark had been registered in its favor on March 8, 1962 asserting that it started using the trademark on June 30, 1956, as indentor or broker for S.H. Huang Bros. & Co., a local firm. • various shipments, documents, invoices and other correspondence of Centennial Mills, Inc., shipping thousand of bags of wheat flour bearing the trademark "All Montana" were shown by petitioner and maintained that anyone, whether he is only an importer, broker or indentor can appropriate, use and own a particular mark of its own choice although he is not the manufacturer of the goods he deals with. Director of Patents' decision • the Junior Party-Applicant is adjudged prior user of the trademark ALL MONTANA, but because it is primarily geographically descriptive, the application is remanded to the Chief Trademark Examiner for proper proceeding before issuance of the certificate of registration. Issue/Answer: • WON Unno, as a mere indentor can apply for the registration of the trademark of its principal / negative. Only owners of the trademark can apply for its registration. Ratio Decidendi: • 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 used to distinguish his goods, business or service from the goods, business or service of others is entitled to register the same. • The term owner does not include the importer of the goods bearing the trademark, trade name, service mark, or Jmvdg

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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 he is duly authorized by the actual owner of the name or other mark of ownership. The Deed of Assignment itself constitutes sufficient proof of General Milling Corporation's ownership of the trademark "All Montana," showing that Centennial Mills was a corporation duly organized and existing under and by virtue of the laws of the State of Oregon, U.S.A. and the absolute and registered owner of several trademarks for wheat flour all of which were assigned by it to respondent General Milling Corporation. Unno Commercial Enterprises, Inc. merely acted as exclusive distributor of All Montana wheat flour in the Philippines. Only the owner of a trademark, trade name 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 absence of a valid transfer or assignment of the trade mark. Inasmuch as it was not the owner of the trademark, the Senior Party could not be regarded as having used and adopted it, and had no right to apply for its registration. a mere importer and distributor acquires no rights in the mark used on the imported goods by the foreign exporter in the absence of an assignment of any kind Trademarks used and adopted on goods manufactured or packed in a foreign country in behalf of a domestic importer, broker, or indentor and distributor are presumed to be owned by the manufacturer or packer, unless there is a written agreement clearly showing that ownership vests in the importer, broker, indentor or distributor. ownership of a trademark is not acquired by the mere fact of registration alone.

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Registration merely creates a 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 a trademark right. • The Court affirms respondent Director of Patent's decision declaring respondent General Milling Corporation as the prior user of the trademark "All Montana" on wheat flour in the Philippines and ordering the cancellation of the certificate of registration for the same trademark previously issued in favor of petitioner Unno Commercial Enterprises, • Under Rule 178 of the Rules of the Patent Office in Trademark Cases, 14 the Director of Patents is expressly authorized to order the cancellation of a registered mark or trade name or name or other mark of ownership in an inter partes case, such as the interference proceeding at bar. provision in question: •

Section 2-A of the Trademarks Law (Republic Act 166), see page 11 herein

CANON KABUSHIKI KAISHA vs. CA and NSR RUBBER CORPORATION G.R. No. 120900. July 20, 2000 Facts: • On January 15, 1985, private respondent NSR Rubber Corporation filed an application for registration of the mark CANON for sandals in the BPTTT. • A Verified Notice of Opposition was filed by petitioner alleging that it will be damaged by the registration of the trademark CANON in the name of NSR Rubber Corp. • The BPTTT declared NSR Rubber Corp in default for failure to file Answer within the prescribed period and allowed petitioner to present its evidence ex-parte. • On November 10, 1992, the BPTTT issued its decision dismissing the opposition of petitioner and giving due course to private respondent's application for the registration of the trademark CANON. • CA affirmed the BPTTT decision and held Jmvdg

that “CANON” can be used by private respondent for its sandals because the products of these two parties are dissimilar. Issue/ Answer: • WON the use of the tradename CANON by defendant would cause prejudice to petitioner / negative Ratio Decidendi: • the ownership of a trademark or tradename is a property right that the owner is entitled to protect as mandated by the Trademark Law. However, 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. • since the certificate of registration of petitioner for the trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private respondent can use the trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a world of difference between the paints, chemical products, toner, and dyestuff of petitioner and the sandals of private respondent. • petitioner failed to attach evidence that would convince the Court that petitioner has also embarked in the production of footwear products. • In Faberge, Incorporated vs. Intermediate Appellate Court, the Court held: since the senior user has not ventured in the production of briefs, an item which is not listed in its certificate of registration, the senior user, cannot and should not be allowed to feign that the junior user had invaded the senior user's exclusive domain. The certificate of registration confers upon the trademark owner the exclusive right to use its own symbol only to those goods specified in the certificate, subject to the conditions and limitations stated therein. • the exclusive right of petitioner in this case to use the trademark CANON is limited to the products covered by its certificate of registration.

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the two classes of products in this case flow through different trade channels. The products of petitioner are sold through special chemical stores or distributors while the products of private respondent are sold in grocery stores, sari-sari stores and department stores. Thus, the evident disparity of the products of the parties in the case at bar renders unfounded the apprehension of petitioner that confusion of business or origin might occur if private respondent is allowed to use the mark CANON. • The term "trademark" is defined by RA 166, the Trademark Law, as including "any word, name, symbol, emblem, sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them for those manufactured, sold or dealt in by others." • the Paris Convention, of which both the Philippines and Japan, the country of petitioner, are signatories, 29 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. • Regarding the applicability of Article 8 of the Paris Convention, this Office believes that there is no automatic protection afforded an entity whose tradename is alleged to have been infringed through the use of that name as a trademark by a local entity. • Based on the memorandum by Ongpin, Petitioner failed to comply with the third requirement of the said memorandum that is the mark must be for use in the same or similar kinds of goods. Provision in question: •

Article 8 of the Paris Convention, to wit: "A tradename shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark." Article 6bis of the Paris Convention states:

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(1) The countries of the Union undertake, either administratively if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration and to prohibit the use of a trademark which constitutes a reproduction, imitation or translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be wellknown in that country as being already the mark of a person entitled to the benefits of the present Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith. (2) A period of at least five years from the date of registration shall be allowed for seeking the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be sought. (3) No time limit shall be fixed for seeking the cancellation or the prohibition of the use of marks or used in bad faith." Memorandum dated 25 October 1983 to the Director of Patents by Hon. Roberto V. Ongpin a) the mark must be internationally known; b) the subject of the right must be a trademark, not a patent or copyright or anything else; IESDCH c) the mark must be for use in the same or similar kinds of goods; and d) the person claiming must be the owner of the mark (The Parties Convention Commentary on the Paris Convention. Article by Dr. Bogsch, Director General of the World Intellectual Property Organization, Geneva, Switzerland, 1985)'

EMERALD GARMENT MFTG. CORP vs. CA, BOP and H.D. LEE COMPANY, INC G.R. No. 100098. December 29, 1995 Facts: • On 18 September 1981 H.D. Lee Co., Inc., (Delaware, U.S.A.) filed with the BPTTT a Petition for Cancellation of Registration No. SR 5054 (Supplemental Register) 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 Emerald Garment (Philippines) • H.D. Lee Co. invokes Sec. 37 of R.A. No. 166 (Trademark Law) and Art. VIII of the Paris Convention for the Protection of Industrial Property, averred that petitioner's

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trademark "so closely resembled its own trademark, 'LEE' as previously registered and used in the Philippines, and not abandoned, as to be likely, when applied to or used in connection with petitioner's goods, to cause confusion, mistake and deception on the part of the purchasing public as to the origin of the goods." • the Director of Patents rendered a decision granting H.D. Lee's petition for cancellation and opposition to registration. • using the test of dominancy, Director of Patents declared that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. It is undeniably the dominant feature of the mark." • CA affirmed the Director of Patents' decision • Emerald contends that H.D. Lee is estopped from instituting an action for infringement before the BPTTT under the equitable principle of laches pursuant to Sec. 9-A of R.A. No. 166, otherwise known as the Law on Trade-marks, Trade-names and Unfair Competition • Emerald alleges that it has been using its trademark "STYLISTIC MR. LEE" since 1 May 1975, yet, it was only on 18 September 1981 that private respondent filed a petition for cancellation of petitioner's certificate of registration for the said trademark. Issue/ Answer: • WON H. D. Lee's prior registration is enough to confer upon it the exclusive ownership of the trademark Lee in opposition to Emerald's / negative Ratio Decidendi: • the reckoning point of ownership of Emerald is 27 October 1980, 20 the date the certificate of registration SR No. 5054 was published in the Official Gazette and issued to petitioner and not May 1, 1975. • It was only on the date of publication and issuance of the registration certificate that Jmvdg

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private respondent may be considered "officially" put on notice that petitioner has appropriated or is using said mark, which, after all, is the function and purpose of registration in the supplemental register. the essential element of infringement is colorable imitation. This term has been defined as "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other." Colorable imitation refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or tradename with that of the other mark or tradename in their over-all presentation or in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article. 2 tests: ◦ test of dominancy: if the competing trademark contains the main or essential or dominant features of another by reason of which confusion and deception are likely to result, then infringement takes place; that duplication or imitation is not necessary, a similarity in the dominant features of the trademark would be sufficient. ◦ The likelihood of confusion is further made more probable by the fact that both parties are engaged in the same line of business. It is well to reiterate that the determinative factor in ascertaining whether or not the marks are confusingly similar to each other is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the part of the buying

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public. ◦ Holistic test: mandates that the entirety of the marks in question must be considered in determining confusing similarity. ◦ The trademarks in their entirety as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other. the trademarks involved as a whole and rule that petitioner's "STYLISTIC MR. LEE" is not confusingly similar to private respondent's "LEE" trademark. 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 ◦ the products involved in the case at bar are, in the main, various kinds of jeans. ◦ the average Filipino consumer generally buys his jeans by brand. ◦ the ordinary purchaser is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product involved. "LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership over and singular use of said term. private respondent failed to prove prior actual commercial use of its "LEE" trademark in the Philippines before filing its application for registration with the BPTTT and hence, has not acquired ownership over said mark. Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of ownership over a trademark

The Trademark Law is very clear. It requires actual commercial use of the mark prior to its registration. There is no dispute that respondent corporation was the first registrant, yet it failed to fully substantiate its claim that it used in trade or business in the Philippines the subject mark; it did not present proof to invest it with exclusive, continuous adoption of the trademark which should consist among others, of considerable sales since its first use. • For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner's use of its own mark and for failure to establish confusing similarity between said trademarks, private respondent's action for infringement must necessarily fail. Provisions in question: •

Sec. 9-A of R.A. No. 166, otherwise known as the Law on Trade-marks, Trade-names and Unfair Competition SEC. 9-A. Equitable principles to govern proceedings. — In opposition proceedings and in all other inter partes proceedings in the patent office under this act, equitable principles of laches, estoppel, and acquiescence, where applicable, may be considered and applied. 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 origin of such goods or services, or identity of such business; or reproduce, counterfeit, copy or colorably imitate 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. Sec. 4 of R.A. No. 166, particularly paragraph 4(e): CHAPTER II-A. — The Principal Register SEC. 4. Registration of trade-marks, trade-names and service-marks on the principal register. — There is hereby established a register of trade-marks, trade-names and service-marks which shall be known as the principal register. The owner of a trade-mark, trade-name or servicemark used to distinguish his goods, business or services from the goods, business or services of others shall have

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the right to register the same on the principal register, unless it: xxx xxx xxx. (e) Consists of a mark or trade-name which, when applied to or used in connection with the goods, business or services of the applicant is merely descriptive or deceptively misdescriptive of them, or when applied to or used in connection with the goods, business or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, or is primarily merely a surname Sec. 2 and 2-A of the Philippine Trademark Law (R.A. No. 166) which explicitly provides that: CHAPTER II. Registration of Marks and Trade-names. SEC. 2. What are registrable. — Trade-marks, tradenames, and service marks owned by persons, corporations, partnerships or associations domiciled in the Philippines and 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 trade-marks, 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: 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. SEC. 2-A. Ownership of trade-marks, trade-names and service-marks; how acquired. — Anyone who lawfully produces or deals in merchandise of any kind or who engages in lawful business, or who renders any lawful service in commerce, by actual use hereof in manufacture or trade, in business and in the service rendered; may appropriate to his exclusive use a trade-mark, a trade-name, or a service-mark not so appropriated by another, to distinguish his merchandise, business or services from others. The ownership or possession of trade-mark, 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 to the law. Sec. 20 of the Trademark Law SEC. 20. Certificate of registration prima facie evidence of validity. — A certificate of registration of a mark or tradename shall be a prima facie evidence of the validity of the registration, the registrant's ownership of the mark or trade-name, and of the registrant's exclusive right to use the same in connection with the goods, business or services specified in the certificate, subject to any conditions and limitations stated therein.

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REGISTRABILITY

ANA L. ANG vs. TORIBIO TEODORO G.R. No. 48226. December 14, 194 Facts: • Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and as a tradename, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. • He formally registered it as a trade-mark on September 29, 1915, and as a trade-name on January 3, 1933. • Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. • Teodoro filed a complaint against Ang • RTC rendered decision in faor of Ang on the grounds that the two trade-marks are dissimilar and are used on different and non-competing goods • CA reversed the RTC decision and ruled that by uninterrupted and exclusive use since 1910 in the manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary meaning; that the goods or articles on which the two trademarks are used are similar or belong to the same class; and that the use by petitioner of said trade-mark constitutes a violation of sections 3 and 7 of Act No. 666. Issue/Answer: • WON the trademark and tradename “Ang Tibay” is a descriptive word which will bar its registration. / negative Ratio Decidendi: • The phrase "Ang Tibay" is an exclamation denoting admiration of strength or durability. • The phrase "ang tibay" is never used adjectively to define or describe an object. • "Ang Tibay" is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trade-mark or trade-name.

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Issue on who is the lawful registrant: Teodoro • Doctrine of secondary meaning: ◦ This doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product. • the same trade-mark, used on unlike goods, could not cause confusion in trade and that, therefore, there could be no objection to the use and registration of a well-known mark by a third party for a different class of goods. • Although two noncompeting 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 trade-marks would be likely to cause confusion as to the origin, or personal source, of the second user's goods. • They would be considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second user's goods. • It is certainly not farfetched to surmise that the selection by petitioner of the same trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent. As observed in another case, 3 the field from which a person may select a trade-mark is practically unlimited, and hence there is no excuse for impinging upon or even closely

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approaching the mark of a business rival. ANG SI HENG and SALUSTIANA DEE vs. WELLINGTON DEPT STORE INC G.R. No. L-4531. January 10, 1953 Facts: • Si Heng & Dee are engaged in the business of manufacturing shirts, pants, drawers, and other articles of wear for men, women, and children. They have been in that business since the year 1938, having obtained the registration for the said articles the trademark of "Wellington." • Benjamin Chua applied for the registration of the business name "Wellington Department Store" on May 7, 1946. His application therefor was approved by the Bureau of Commerce, and a certificate issued in his favor. • Petitioners allege that the use of the words "Wellington Department Store" as a business name and as a corporate name by the defendant-appellee deceives the public into buying defendant corporation's goods under the mistaken belief that the names are the plaintiff's or have the same source as plaintiffs' goods, thereby resulting in damage to them. • Defendants raises the defense of dissimilarity of the goods that they deal in • court a quo dismissed the complaint and held that Wellington Co. has not been used by any enterprise. Issue/Answer: • WON Wellington, bing a geographical can be registered - negative • WON defendant is guilty of unfair competition - negative Ratio Decidendi: • mere geographical names are ordinarily regarded as common property, and it is a general rule that the same cannot be appropriated as the subject of an exclusive trademark or tradename. • As the term cannot be appropriated as a trademark or a tradename, no action for violation thereof can be maintained, as

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none is granted by the statute in such cases. • no action may lie in favor of the plaintiffsappellants herein for damages or injunctive relief for the use by the defendantsappellees of the name "Wellington." issue of unfair competition: • While there is similarity between the trademark or tradename "Wellington Company" and that of "Wellington Department Store," no confusion or deception can possibly result or arise from such similarity because the latter is a "department store," while the former does not purport to be so. • Neither can the public be said to be deceived into the belief that the goods being sold in defendant's store originate from the plaintiffs, because the evidence shows that defendant's store sells no shirts or wear bearing the trademark "Wellington," but other trademarks • doctrine in Ang vs Teodoro cannot be applied because the evidence submitted by the appellants did not prove that their business has continued for so long a time that it has become of consequence and acquired a goodwill of considerable value, such that its articles and products have acquired a well-known reputation, and confusion will result by the use of the disputed name by the defendants' department store. • plaintiffsappellants have not been able to show the existence of a cause of action for unfair competition against the defendantsappellees. ANDRES ROMERO vs. MAIDEN FORM BRASSIERE CO., INC G.R. No. L-18289. March 31, 1964 Facts: • On February 12, 1957, respondent company, a foreign corporation, filed with respondent Director of Patents an application for registration (pursuant to Republic Act No. 166) of the trademark

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'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 on October 26, 1937, and in the Philippines on August 31, 1946 • Director, on August 13, 1957, 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; • 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 • Appellant claims that the trademark "Adagio" has become a common descriptive name of a particular style of brassiere and is, therefore, unregistrable. It is urged that said trademark had been used by local brassiere manufacturers since 1948, without objection on the part of respondent company. • Director of Patents (of January 17, 1961) dismissed Romero's petition for cancellation of the registration of the trademark "Adagio" for brassieres manufactured by respondent Maiden Form Brassiere Co., Inc. Issue/Answer: • WON Adagio is a descriptive word incapable of registration / negative Ratio Decidendi: • 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

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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", "Chansonette", "Prelude", "Over-ture", and "Concerto", to identify, as a trademark, the different styles or types of its brassieres. • On the other hand, respondent company's long and continuous use of the trademark "Adagio" has not rendered it merely descriptive of the product. On abandonment of trademark by private defendant: • "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 thoroughgoing discontinuance of any trade-mark use of the mark in question" • "Non-use because of legal restrictions is not evidence of an intent to abandon. • respondent Director of Patents did not err in dismissing the present petition for cancellation of the registered trademark of appellee company, and the decision appealed from is therefore hereby affirmed, with costs against the appellant. Provisions in question: Section 2 of Republic Act No. 166 as amended by Section 1 of Republic Act 865 see page 11 herein

CHUA CHE vs. PHILIPPINE PATENT OFFICE and SY TUO G.R. No. L-18337. January 30, 1965 Facts: • Under date of October 30, 1958, Chua Che presented with the Philippines Patent Office a petition praying for the registration in his favor the trade name of "X-7" • Director of Patents denied the application for use on soap Class 51, being manufactured by said Chua Che, upon the opposition of respondent Sy Tuo. • Sy Tuo claims that he owns the tademark and had been using it since 1951 as mark Jmvdg

for perfume, lipstick, and nail polish as opposed to Chua Che's use which was admittedly only in 1957. • Director of Patents held: 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 but a natural expansion of business of the opposer. Issue/ Answer: • WON allowing Chua Che to register the same mark for laundry soap would likely to cause confusion on the purchasers of X-7 products by SY Tou / affirmative. Ratio Decidendi: • while it is no longer necessary to establish that the goods of the parties possess the same descriptive properties, as previously required under the Trade Mark Act of 1905, 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 now-a-days, in the same manner as laundry soap. • The likelihood of purchasers to associate these products to a common origin is not far-fetched. Both from the standpoint of priority of use and for the protection of the buying public and, of course, 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. STERLING PRODUCTS INT'L INC. vs. FARBENFABRIKEN BAYER AKTIENGESELLSCHAFT and ALLIED MANUFACTURING AND TRADING CO., INC. G.R. No. L-19906. April 30, 1969 Facts: • each of the principal suitors, namely, Sterling Products International, Inc., (SPI on medicine) and defendant Farbenfabriken

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•

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Atty. Eric Recalde

Bayer Aktiengesellschaft, (FBA on insecticides) seeks to exclude the other from use in the Philippines of the trademarks BAYER and BAYER CROSS IN CIRCLE. The trial court declared itself "in favor of the solution that favors division of the market rather than monopoly." But to avoid confusion, it directed defendants "to add a distinctive word or words in their mark to indicate that their products come from Germany." The word BAYER was the surname of Friedrich Bayer, a German, who, on August 1, 1863, organized a drug company bearing his name — Friedr. Bayer et comp. — at Barmen, Germany. The company was at first engaged in the manufacture and sale of chemicals. At about the year 1888 it started to manufacture pharmaceutical preparations also. FFB is the original owner of the name and mark. FFB was based in Germany and had a subsidiary company in New York. When the war broke out, the subsidiary in New York was declared as an enemy controlled corp so its assets were sold to Sterling Corp. disputes with regard the ownership of the name and mark were resolved by 2 agreements between Winthrop's and FFB U.S. District Court for Southern New York held that: The Bayer contract of 1923, the Bayer contract of 1926, and any and all amendments or supplements thereto are declared and adjudged to be unlawful under the Anti-Trust Laws of the United States, and the defendants Bayer and Sterling, and their respective successors and subsidiaries, or any of them, be and they are hereby enjoined and restrained from carrying out or enforcing any of the aforesaid contracts, or any supplements, amendments or modifications thereof, or from paying to I.G. Farben, its subsidiaries, successors or assigns, any royalties or share of profits pursuant to said contracts

with respect to sales following the effective date of this decree.Provided, however, that nothing herein contained in this Sec. III shall: ◦

◦

•

•

•

•

•

Affect in any way the rights or title of the defendants Bayer, its successors, subsidiaries or assigns, in or to the name 'Bayer' and the 'Bayer Cross' mark or registrations thereof, or. Affect or diminish any right, title or interest of said defendants, their successors, subsidiaries or assigns, in or to or under any heretofore acquired and presently existing patents, patent applications, patent licenses, trademarks, trade-names (such as the name 'Bayer' and the 'Bayer Cross' mark and registrations thereof), processes or formulae relating to the manufacturing, processing, use or sale of aspirin, aspirin compounds, pharmaceutical or other drug or chemical products, or impair any rights or remedies of said defendants, their successors, subsidiaries or assigns, provided by statute or convention, and by suits for damages, injunction or other remedy with respect to any such patents, patent applications, patent licenses or trademarks"

The trademarks BAYER and BAYER CROSS IN CIRCLE were then registered in the Philippines under the old Trademark Law (Act 666) by The Bayer Co., Inc.: the BAYER CROSS IN CIRCLE trademark on April 18, 1939 for which it was issued Certificate of Registration No. 13081 These trademark rights were assigned to SPI on December 30, 1942 and the assignment was recorded in the Philippines Patent Office on March 5, 1947. SPI was issued by the Philippines Patent Office on June 18, 1948 two new certificates of registration: No. 1260-S for BAYER CROSS IN CIRCLE; No. 1262-S for BAYER. The registration of these trademarks was only for "Medicines." AMATCO) started selling FBA's products especially "Folidol," a chemical insecticide which bears the BAYER CROSS IN CIRCLE trademark. On November 18, 1959, FBA applied for the registration of the BAYER CROSS IN CIRCLE trademark with the Philippines Patent Office for animal and plant

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destroying agents. On February 25, 1960, FBA was issued a certificate of registration in the Supplemental Register, SR-304. Issue/Answer: Ratio Decidendi: • actual use in commerce or business is a prerequisite to the acquisition of the right of ownership over a trademark. This rule is spelled out in our Trademark Law • adoption alone of a trademark would not give exclusive right thereto. Such right "grows out of their actual use • The BAYER trademarks registered in the Philippines to which plaintiff SPI may lay claim are those which cover medicines only. For, it was on said goods that the BAYER trademarks were actually used by it in the Philippines. Therefore, the certificates of registration for medicines issued by the Director of Patents upon which the protection is enjoyed are only for medicines. Nothing in those certificates recited would include chemicals or insecticides. • if the certificate of registration were to be deemed as including goods not specified therein, then a situation may arise whereby an applicant may be tempted to register a trademark on any and all goods which his mind may conceive even if he had never intended to use the trademark for the said goods. • Neither will the 1927 registration in the United States of the BAYER trademark for insecticides serve plaintiff any. Registration in the United States is not registration in the Philippines. • two types of confusion ◦ 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, the defendant's product is such as might reasonably be assumed to originate with the plaintiff, and the public would then •

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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. • Although two noncompeting 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 be likely to cause confusion as to the origin, or personal source, of the second user's goods. (relate “Ang Tibay” case) • It was not plaintiff's predecessor but defendant's namely Farbenfabriken or Bayer Germany that first introduced the medical products into the Philippine market and household with the Bayer mark half a century ago • Plaintiff cannot now say that the present worth of its BAYER trademarks it 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 established. • Plaintiff is not the first user thereof in the Philippines. The trademarks do not necessarily link plaintiff with the public. • But defendants ask us to delist plaintiff's BAYER trademarks for medicine from the Principal Register, claiming right thereto for said use. 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. • 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. provision: Sec. 2-A, RA 166 see page ii herein

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CRISANTA Y. GABRIEL vs. DR. JOSE R. PEREZ G.R. No. L-24075. January 31, 1974 Facts: • Dr. Jose R. Perez filed with the Patents Office on February 23, 1961 an application for registration of the trademark "WONDER" in the Supplemental Register. • On October 19, 1962, petitioner Crisanta Y. Gabriel claiming that he had been using the subject mark since 1959 filed with the Patent Office a petition for cancellation of the trademark "WONDER from the supplemental register alleging that the registrant was not entitled to register the said trademark at the time of his application for registration • In support of her petition, she further alleged the written contract between her and the registrant (respondent) wherein, according to her, the latter has recognized her right of use and ownership of said trademark; and that the labels submitted by the registrant are the very containers bearing the trademark "WONDER" which are owned by her and which she has been exclusively and continuously using in commerce • after Dr. Perz had perfected his research and obtained a certificate of label, he made an agreement (January, 1959) with a certain company named 'Manserco' for the distribution of his soap. It was then being managed by Mariano S. Yangga who happens to be the brother of the Petitioner Crisanta Y. Gabriel • "Because the corporation was allegedly going bankrupt and the members were deserting, the Respondent terminated the agreement in July, 1959, and thereafter he asked the Petitioner to become the distributor of his products • Director of Patents rendered his decision denying the petition of Gabriel to cancel the certificate of registration Issue/Answer: • WON Gabriel, as a mere distributor have the right to register the subject mark in her Jmvdg

own name/ negative Ratio Decidendi: • "Because the corporation was allegedly going bankrupt and the members were deserting, the Respondent terminated the agreement in July, 1959, and thereafter he asked the Petitioner to become the distributor of his products • Crisanta Y. Gabriel appears to be a mere distributor of the product by contract with the manufacturer, respondent Dr. Jose R. Perez and the same was only for a term. • Under Sections 2 and 2-A of the Trademark Law, Republic Act No. 166, as amended, the right to register trademark is based on ownership and a mere distributor of a product bearing a trademark, even if permitted to use said trademark, has no right to and cannot register the said trademark • Petitioner urges that the agreement of exclusive distributorship executed by and between her and respondent vested in her the exclusive ownership of the trademark "WONDER". But a scrutiny of the provisions of said contract does not yield any right in favor of petitioner other than that expressly granted to her — to be the sole and exclusive distributor of respondent Dr. Perez' product. • the agreement never mentioned transfer of ownership of the trademark. It merely empowers the petitioner as exclusive distributor to own the package and to create a design at her pleasure, but not the right to appropriate unto herself the sole ownership of the trademark so as to entitle her to registration in the Patent Office. • The exclusive distributor does not acquire any proprietary interest in the principal's trademark. • the trademark "WONDER" has long been identified and associated with the product manufactured and produced by the Dr. Jose R. Perez Cosmetic Laboratory. • Petitioner's act in defraying substantial expenses in the promotion of the

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Respondent's goods and the printing of the packages are the necessary or essential consequences of Paragraph 6 of the agreement because, anyway, those activities are normal in the field of sale and distribution, as it would redound to her own benefit as distributor, and those acts are incumbent upon her to do. PHILIPPINE REFINING CO., INC.vs. NG SAM G.R. No. L-26676. July 30, 1982 Facts: • Private respondent filed with the Philippine Patent Office an application for registration of the trademark "CAMIA" for his product, ham, which falls under Class 47 (Foods and Ingredients of Food). Petitioner opposed the application claiming that it first used said trademark on his products: lard, butter, cooking oil, abrasive detergents, polishing materials and soap of all kinds, some of which are likewise classified under Class 47. • The trademark "CAMIA" was first used in the Philippines by petitioner on its products in 1922 and registered the same in 1949 • On November 25, 1960, respondent Ng Sam, a Chinese citizen residing in Iloilo City, filed an application with the Philippine Patent Office for registration of the identical trademark "CAMIA" for his product, ham, which likewise falls under Class 47. Alleged date of first use of the trademark by respondent was on February 10, 1959. • Director of Patents rendered a decision allowing registration of the trademark "CAMIA" in favor of Ng Sam.finding that `the goods of the parties are not of a character which purchasers would be likely to attribute to a common origin. Issue/Answer: • WON the product of respondent Ng Sam, which is ham, and those of petitioner consisting of lard, butter, cooking oil and soap are so related that the use of the same trademark "CAMIA'' on said goods would likely result in confusion as to their source

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or origin. / negative Ratio Decidendi: • the right to a trademark is a limited one, in the sense that others may use the same mark on unrelated 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 articles of a different description. • where no confusion is likely to arise, as in this case, registration of a similar or even identical mark may be allowed. • The term "CAMIA" is descriptive of a whole genus of garden plants with fragrant white flowers. • A trademark is designed to identify the user. But it should be so distinctive and sufficiently original as to enable those who come into contact with it to recognize instantly the identity of the user. "It must be affirmative and definite, significant and distinctive, capable to indicate origin. • if a mark is so commonplace that it cannot be readily distinguished from others, then it is apparent that it cannot identify a particular business; and he who first adopted it cannot be injured by any subsequent appropriation or imitation by others, and the public will not be deceived." • 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 general description of their properties or characteristics. • Opposer's products are ordinary day-to-day household items whereas ham is not necessarily so. Thus, the goods of the parties are not of a character which purchasers would be likely to attribute to a common origin." • the business of the parties are non-

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competitive and their products so unrelated that the use of identical trademarks is not likely to give rise to confusion, much less cause damage to petitioner. provision: Section 4(d) of Trademark law "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 the Philippines by another and not abandoned, as to be likely, when applied to or used in connection with the goods, business services of the applicant, to cause confusion or mistake or to deceive purchasers."

ESSO STANDARD EASTERN, INC vs.CA and UNITED CIGARETTE CORPORATION G.R. No. L-29971. August 31, 1982 Facts: • Esso filed a case against United Cigarette Corp for trademark infringement alleging that after the latter had acquired in November, 1963 the business, factory and patent rights of La Oriental Tobacco Corporation, it began to use the trademark ESSO on its cigarettes, the same trademark used by petitioner in its quality petroleum products which was likely to cause confusion or deception on the part of the purchasing public as to its origin or source, to the detriment of its own products. • In its answer, private respondent admitted the use of the trademark ESSO on its own product of cigarettes but claimed that these were not identical to those produced and sold by the petitioner • The trial court found United Cigarette Corp guilty of infringement of trademark. • On appeal, the judgment was reversed and the complaint was dismissed. Issue/Answer: • WON United Cigarette Corp can be held liable for trademark infringement / negative Ratio Decidendi: • The law defines infringement as the use without consent of the trademark owner of any "reproduction, counterfeit, copy or colorable imitation of any registered mark or tradename in connection with the sale, Jmvdg

•

•

•

•

•

•

•

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 origin of such goods or services, or identity of such business; or reproduce, counterfeit, copy or colorably imitate any such mark or tradename and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services." Implicit in this definition is the concept that the goods must be so related that there is a likelihood either of confusion of goods or business. 1 It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum products, and the product of respondent, cigarettes, are non-competing. non-competing goods may be those which, though they are not in actual competition, are so related to each other that it might reasonably be assumed that they originate from one manufacturer. Goods are related when they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. 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. 2 The products of each party move along and are disposed through different channels of distribution.

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Intellectual Property Law AUF School of Law •

•

Atty. Eric Recalde

3

A comparison of the labels of the samples of the goods submitted by the parties shows a great many differences on the trademarks used. CA decision affirmed.

CONVERSE RUBBER CORP. vs. UNIVERSAL RUBBER PRODUCTS, INC. and TIBURCIO S. EVALLE G.R. No. L-27906. January 8, 1987 Facts: • Respondent Universal Rubber Products, Inc. filed an application with the Philippine Patent office for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and rubber slippers. • Petitioner Converse Rubber Corporation filed its opposition to the application for registration • Director of Patents dismissed the opposition of the petitioner and gave due course to respondent's application. Issue/Answer: • WON the respondent's partial appropriation of petitioner's corporate name is of such character that it is calculated to deceive or confuse the public to the injury of the petitioner to which the name belongs./ affirmative Ratio Decidendi: • The ownership of a trademark or tradename is a property right which the owner is entitled to protect "since there is damage to him from confusion or reputation or goodwill in the mind of the public as well as from confusion of goods. • CONVERSE" is the dominant word which identifies petitioner from other corporations engaged in similar business. • Respondent, in the stipulation of facts, admitted petitioner's existence since 1946 as a duly organized foreign corporation engaged in the manufacture of rubber shoes. This admission necessarily betrays its knowledge of the reputation and business of petitioner even before it applied Jmvdg

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for registration of the trademark in question. Knowing, therefore, that the word "CONVERSE" belongs to and is being used by petitioner, and is in fact the dominant word in petitioner's corporate name, respondent has no right to appropriate the same for use on its products which are similar to those being produced by petitioner. Appropriation by another of the dominant part of a corporate name is an infringement The unexplained use by respondent of the dominant word of petitioner's corporate name lends itself open to the suspicion of fraudulent motive to trade upon petitioner's reputation. The sales of 12 to 20 pairs a month of petitioner's rubber shoes cannot be considered insignificant, considering that they appear to be of high expensive quality, which not too many basketball players can afford to buy. Another factor why respondent's application should be denied is the confusing similarity between its trademark "UNIVERSAL CONVERSE AND DEVICE" and petitioner's corporate name and/or its trademarks "CHUCK TAYLOR" and "ALL STAR DEVICE" which could confuse the purchasing public to the prejudice of petitioner. The determinative factor in ascertaining whether or not marks are confusingly similar to each other "is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the part of the buying public When the law speaks of "purchaser," the reference is to ordinary average purchasers a foreign corporation which has never done any business in the Philippines and which is unlicensed and unregistered to do business here, but is widely and favorably known in the Philippines through the use therein of its products bearing its corporate and

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tradename, has a legal right to maintain an action in the Philippines to restrain the residents and inhabitants thereof from organizing a corporation therein bearing the same name as the foreign corporation, when it appears that they have personal knowledge of the existence of such a foreign corporation, and it is apparent that the purpose of the proposed domestic corporation is to deal and trade in the same goods as those of the foreign corporation. Provision: Article 8 of Paris Convention provides that "a trade name [corporate 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. Sec. 37 of RA No. 166, otherwise known as the Trademark Law: "Sec. 37. Rights of Foreign Registrants-Persons who are nationals of, domiciled in, or have a bona fide or effective business or commercial establishment in any foreign country, which is a party to an international convention or treaty relating to marks or tradenames on the repression of unfair competition to which the Philippines may be a party, shall be entitled to the benefits and subject to the provisions of this Act . . . "Tradenames of persons described in the first paragraph of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks."

CAPACITY TO SUE OF FOREIGN ENTITIES

central issue: WON the foreign company not doing business nor registered in the Philippines has the standing to sue a Philippine domiciled business entity for infringement before Philippine courts. Answer: affirmative GENERAL GARMENTS CORP vs. DIRECTOR OF PATENTS and PURITAN SPORTSWEAR G.R. No. L-24295. September 30, 1971 Facts: • GGC is the owner of the trademark "Puritan," under Registration No. 10059 issued on November 15, 1962 by the Philippine Patent Office, for assorted men's wear, such as sweaters, shirts jackets, undershirts and briefs. • On March 9, 1964 the Puritan Sportswear Jmvdg

Corporation, organized and existing in and under the laws of the state of Pennsylvania, U.S.A., filed a petition with the Philippine Patent Office for the cancellation of the trademark "Puritan" registered in the name of General Garments Corporation, Ratio Decidendi: • It should be postulated at this point that respondent is not suing in our courts "for the recovery of any debt, claim or demand," for which a license to transact business in the Philippines is required by Section 69 of the Corporation Law, • "A foreign corporation which has never done . . . business in the Philippine Islands and which is unlicensed and unregistered to do business here, but is widely and favorably known in the Islands through the use therein of its products bearing its corporate and trade name has a legal right to maintain an action in the Islands. • "The purpose of such a suit is to protect its reputation, corporate name and goodwill which has been established through the natural development of its trade for a long period of years, in the doing of which it does not seek to enforce any legal or contract rights arising from, or growing out of any business which it has transacted in the Philippine Islands. • "The right to the use of the corporate or trade name is a property right, a right in rem, which it may assert and protect in any of the courts of the world — even in jurisdictions where it does not transact business — just the same as it may protect its tangible property, real or personal against trespass or conversion." • Republic Act No. 638, inserting Section 21-A in the Trademark Law, allows a foreign corporation or juristic person to bring an action in Philippine courts for infringement of a mark or trade-name, for unfair competition, or false designation of origin and false description, "whether or not it has been licensed to do business in the Philippines under Act Numbered Fourteen

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hundred and fifty-nine, as amended, otherwise known as the Corporation Law, at the time it brings complaint." • In any event, respondent in the present case is not suing for infringement or unfair competition under Section 21-A, but for cancellation under Section 17, on one of the grounds enumerated in Section 4. ◦ The first kind of action, it may be stated, is cognizable by the Courts of First Instance (Sec. 27); the second partakes of an administrative proceeding before the Patent Office (Sec. 18, in relation to Sec. 8). ◦ while a suit under Section 21-A requires that the mark or tradename alleged to have been infringed has been "registered or assigned" to the suing foreign corporation, a suit for cancellation of the registration of a mark or tradename under Section 17 has no such requirement. Provisions: "Section 17(c) and Section 4(d) of the Trade Law provide respectively as follows: "SEC. 17. Grounds for cancellation. — Any person, who believes that he is or will be damaged by the registration of a mark or trade-name, may, upon the payment of the prescribed fee, apply to cancel said registration upon any of the following grounds: xxx xxx xxx (c) That the registration was obtained fraudulently or contrary to the provisions of section four, Chapter II thereof; . . ." "SEC. 4. Registration of trade-marks, trade-names and service-marks which shall be known as the principal register. The owner of a trade-mark, trade-name or servicemark used to distinguish his goods, business or services from the goods, business or services of others shall have the right to register the same on the principal register, unless it: xxx xxx xxx (d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned, as to be likely, when applied to or used in connection with goods, business or services of the applicant, to cause confusion or mistake or to deceive purchasers; or . . ."

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LA CHEMISE LACOSTE, S. A. vs. FERNANDEZ and GOBINDRAM HEMANDAS G.R. Nos. 63796-97. May 21, 1984 Facts: • In 1975, Hemandas & Co., a duly licensed domestic firm applied for and was issued Reg. No. SR-2225 (SR stands for Supplemental Register) for the trademark "CHEMISE LACOSTE & CROCODILE DEVICE" by the Philippine Patent Office for use on T-shirts, sportswear and other garment products of the company. Two years later, it applied for the registration of the same trademark under the Principal Register. • Hemandas & Co. assigned to respondent Gobindram Hemandas all rights, title, and interest in the trademark "CHEMISE LACOSTE & DEVICE". • On November 21, 1980, the petitioner filed its application for registration of the trademark "Crocodile Device" (Application Serial No. 43242) and "Lacoste" (Application Serial No. 43241). The former was approved for publication while the latter was opposed by Games and Garments • On March 21, 1983, the petitioner filed with the National Bureau of Investigation (NBI) a letter-complaint alleging therein the acts of unfair competition being committed by Hemandas and requesting their assistance in his apprehension and prosecution. • Search warrants based on violation of Art. 189 of RPC were issued against Hemandas • Hemandas filed a motion to quash the search warrants and the same was granted by the respondent court Ratio Decidendi: • 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. • Since it is the trade and not the mark that is to be protected, a trade-mark acknowledges no territorial boundaries of municipalities or

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states or nations, but extends to every market where the trader's goods have become known and identified by the use of the mark. The case filed by petitioner is a criminal case. Since the violation is against the State, petitioner's capacity to sue would become, therefore, of not much significance. We cannot allow a possible violator of our criminal statutes to escape prosecution upon a far-fetched contention that the aggrieved party or victim of a crime has no standing to sue. upholding the right of the petitioner to maintain the present suit before our courts for unfair competition or infringement of trademarks of a foreign corporation, is recognizing our duties and the rights of foreign states under the Paris Convention for the Protection of Industrial Property to which the Philippines and France are parties. a treaty or convention is not a mere moral obligation to be enforced or not at the whims of an incumbent head of a Ministry. It creates a legally binding obligation on the parties founded on the generally accepted principle of international law of pacta sunt servanda which has been adopted as part of the law of our land. petitioner is the owner of the trademarks "LACOSTE", "CHEMISE LACOSTE", the crocodile or alligator device, and the composite mark of LACOSTE and the representation of the crocodile or alligator. Any pretensions of the private respondent that he is the owner are absolutely without basis The records show that the goodwill and reputation of the petitioner's products bearing the trademark LACOSTE date back even before 1964 when LACOSTE clothing apparels were first marketed in the Philippines. To allow Hemandas to continue using the trademark Lacoste for the simple reason that he was the first registrant in the Supplemental Register of a trademark used

in international commerce and not belonging to him is to render nugatory the very essence of the law on trademarks and tradenames. Issue of probable cause: • Probable cause has traditionally meant such facts and circumstances antecedent to the issuance of the warrant that are in themselves sufficient to induce a cautious man to rely upon them and act in pursuance thereof • probable cause "presupposes the introduction of competent proof that the party against whom it is sought has performed particular acts, or committed specific omissions, violating a given provision of our criminal laws • True, the lower court should be given the opportunity to correct its errors, if there be any, but the rectification must be based on sound and valid grounds. In this case, there was no compelling justification for the about face. Supplemental Registration • A certificate of registration in the Supplemental Register is not prima facie evidence of the validity of registration, of the registrant's exclusive right to use the same in connection with the goods, business, or services specified in the certificate. Such a certificate of registration cannot be filed, with effect, with the Bureau of Customs in order to exclude from the Philippines, foreign goods bearing infringement marks or trade names (Rule 124, Revised Rules of Practice Before the Phil. Pat. Off. in Trademark Cases) • Section 19-A of Republic Act 166 as amended not only provides for the keeping of the supplemental register in addition to the principal register but specifically directs that: ◦ "The certificates of registration for marks and trade names registered on the supplemental register shall be conspicuously different from certificates issued for marks and trade names

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registered on the principal register." • The registration of a mark upon the supplemental register is not, as in the case of the principal register, prima facie evidence of... ◦ the validity of registration; ◦ the registrant's ownership of the mark ◦ and the registrant's exclusive right to use the mark. • It is not subject to opposition, although it may be cancelled after its issuance. Neither may it be the subject of interference proceedings. • Registration on the supplemental register is not constructive notice of registrant's claim of ownership. • A supplemental register is provided for the registration of marks which are not registrable on the principal register because of some defects prejudicial question • The proceedings pending before the Patent Office involving IPC Co. 1658 do not partake of the nature of a prejudicial question which must first be definitely resolved. • The case which suspends the criminal prosecution must be a civil case which is determinative of the innocence or, subject to the availability of other defenses, the guilt of the accused. The pending case before the Patent Office is an administrative proceeding and not a civil case. • In the case at bar, the Minister of Trade, as 'the competent authority of the country of registration,' has found that among other well-known trademarks 'Lacoste' is the subject of conflicting claims. For this reason, applications for its registration must be rejected or refused, pursuant to the treaty obligation of the Philippines. Provisions RPC: Art. 189. Unfair competition, fraudulent registration of trade-mark, trade-name or service mark, fraudulent designation of origin, and false description. — The penalty provided in the next proceeding article shall be imposed upon:

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1. Any person who, in unfair competition and for the purposes of deceiving or defrauding another of his legitimate trade or the public in general, shall sell his goods giving them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves, or in the wrapping of the packages in which they are contained or the device or words thereon or in any other features of their appearance which would be likely to induce the public to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer or shall give other persons a chance or opportunity to do the same with a like purpose. 2. Any person who shall affix, apply, annex or use in connection with any goods or services or any container or containers for goods a false designation of origin or any false description or representation and shall sell such goods or services. 3. Any person who by means of false or fraudulent representation or declarations orally or in writing or by other fraudulent means shall procure from the patent office or from any other office which may hereafter be established by law for the purposes the registration of a trade-name, trade-mark or service mark or of himself as the owner of such trade-name, trade-mark or service mark or an entry respecting a trade-name, trade-mark or service mark. Section 21-A of Republic Act No. 166 "Sec. 21-A. Any foreign corporation or juristic person to which a mark or tradename has been registered or assigned under this Act may bring an action hereunder for infringement, for unfair competition, or false designation of origin and false description, whether or not it has been licensed to do business in the Philippines under Act numbered Fourteen Hundred and Fifty-Nine, as amended, otherwise known as the Corporation Law, at the time it brings the complaint; Provided, That the country of which the said foreign corporation or juristic person is a citizen, or in which it is domiciled, by treaty, convention or law, grants a similar privilege to corporate or juristic persons of the Philippines." Rule I, Sec 1 (g) Omnibus Investment Code(1) “A foreign firm which does business through middlemen acting on their own names, such as indentors, commercial brokers or commission merchants, shall not be deemed doing business in the Philippines. But such indentors, commercial brokers or commission merchants shall be the ones deemed to be doing business in the Philippines. "(2) Appointing a representative or distributor who is domiciled in the Philippines, unless said representative or distributor has an independent status, i.e., it transacts business in its name and for its account, and not in the name or for the account of a principal. Thus, where a foreign firm is represented by a person or local company which does not act in its name but in the name of the foreign firm, the latter is doing business in the Philippines."

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Section 5 of Rule 111 of the Rules of Court "A petition for the suspension of the criminal action based upon the pendency of a pre-judicial question in a civil case, may only be presented by any party before or during the trial of the criminal action."

PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G., vs. IAC and MIL-ORO MANUFACTURING CORPORATION G.R. No. 75067 February 26, 1988 Facts: • Puma filed a complaint for infringement of patent or trademark with a prayer for the issuance of a writ of preliminary injunction against Mil-Oro • On July 31, 1985, the trial court issued a temporary restraining order, restraining the private respondent and the Director of Patents from using the trademark "PUMA' or any reproduction, counterfeit copy or colorable imitation thereof, and to withdraw from the market all products bearing the same trademark. • the Court of Appeals reversed the order of the trial court and ordered the respondent judge to dismiss the civil case filed by the petitioner and further held that petitioner has no legal capacity to sue under Sec. 21A of RA 166 Ratio Decidendi: • supra, as in cases of La Chemise Lacoste and Converse Rubber Corp. issue of lis pendens • 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. • Action means an ordinary suit in a court of justice by which one party prosecutes another for the enforcement or protection of alright, or the prevention or redress of a wrong. Every other remedy is a special proceeding. • the Court of Appeals likewise erred in holding that the requisites of lis pendens were present so as to justify the dismissal of the case

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KABUSHI KAISHA ISETAN vs. IAC and ISETANN DEPARTMENT STORE, INC. G.R. No. 75420. November 15, 1991 Facts: Petitioner's contention: • Kabushi Kaisha Isetan 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. It states that the trademark is a combination of "Ise" taken from "Iseya" the first name of the rice dealer in Kondo, Tokyo in which the establishment was first located and "Tan" which was taken from "Tanji Kosuge the First". • The trademark "Isetan" and "Young Leaves Design" were registered in Japan covering more than 34 classes of goods. 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, Defendant's contention: • Private respondent, Isetann Department Store, on the other handclaims that it used the word "Isetann" as part of its corporated name and on its products particularly on shirts in Joymart Department Store sometime in January 1979. • The suffix "Tann" means an altar, the place of offering in Chinese and this was adopted to harmonize the corporate name and the corporate logo of two hands in cup that symbolizes the act of offering to the Supreme Being for business blessing. • respondent registered "Isetann Department Store, Inc." and Isetann and Flower Design in the Philippine Patent Office under SR. Reg. Nos. 4701 and 4714, respectively, as well as with the Bureau of Domestic Trade under Certificate of Registration No. 32020. actions • On November 28, 1980, the petitioner filed with the Phil. Patent Office two (2) petitions for the cancellation of Certificates of

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Supplemental Registration Nos. SR-4717 and SR-4701 • 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. this was however denied by the SEC • Director of Patents dismissed the suit for cancellation of registration filed by petitioner • IAC likewise dismissed the case Ratio Decidendi: • A fundamental principle of Philippine Trademarks Law is that actual use in commerce in the Philippines is a prerequisite to the acquisition of ownership over a trademark or a tradename. • Adoption alone of a trademark would not give exclusive right thereto. Such right grows out of their actual use. Adoption is not use. One may make advertisements, issue circulars, give out price lists on certain goods; but these alone would not give exclusive right of use. For trademark is a creation of use. • The records show that the petitioner has never conducted any business in the Philippines. It has never promoted its tradename or trademark in the Philippines. It has absolutely no business goodwill in the Philippines. Under the law, it has no right to the remedy it seeks. • Any goodwill, reputation, or knowledge regarding the name Isetann is purely the work of the private respondent. • Isetann Department Store, Inc. is the name of a store and not of products sold in various parts of the country. • There is no product with the name "Isetann" popularized with that brand name in the Philippines. • The records show that among Filipinos, the name cannot claim to be internationally well-known. • The mere origination or adoption of a particular tradename without actual use thereof in the market is insufficient to give Jmvdg

any exclusive right to its use Indeed, the Philippines is a signatory to this Treaty and, hence, we must honor our obligation thereunder on matters concerning internationally known or well known marks. However, this Treaty provision clearly indicated the conditions which must exist before any trademark owner can claim and be afforded rights such as the Petitioner herein seeks and those conditions are that: ◦ the mark must be internationally known or well known; ◦ the subject of the right must be a trademark, not a patent or copyright or anything else; ◦ the mark must be for use in the same or similar kinds of goods, and ◦ the person claiming must be the owner of the mark. provisions: •

Sec. 2 RA 5343 SECTION 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. RA 166 SECTION 2. & Section 2-A see page 11 herein

PHILIP MORRIS, et. Al vs. CA and FORTUNE TOBACCO CORP G.R. No. 91332. July 16, 1993 Facts: petitioner's contention: • Philip Morris and the 2 other companies as subsidiaries of Philip Morris. The last 2 are suing on isolated transactions • As registered owners of "MARK VII", "MARK TEN", and "LARK" per certificates of registration issued by the Philippine Patent

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Office on April 26, 1973, May 28, 1964, and March 25, 1964, plaintiffs-petitioners asserted that defendant Fortune Tobacco Corporation has no right to manufacture and sell cigarettes bearing the allegedly identical or confusingly similar trademark "MARK" in contravention of Section 22 of the Trademark Law, and should, therefore, be precluded during the pendency of the case from performing the acts complained of via a preliminary injunction defendant's contention: • Fortune Tobacco Corporation admitted petitioners' certificates of registration with the Philippine Patent Office subject to the affirmative and special defense on misjoinder of party plaintiffs • it claims that the word “mark” is a common word which cannot be exclusively appropriated Ratio Decidendi: • there is no proof whatsoever that any of plaintiffs' products which they seek to protect from any adverse effect of the trademark applied for by defendant, is in actual use and available for commercial purposes anywhere in the Philippines. Secondly, as shown by plaintiffs' own evidence furnished by no less than the chief of Trademarks Division of the Philippine Patent Office, Atty. Enrique Madarang, the abandonment of an application is of no moment, for the same can always be refiled. He said there is no specific provision in the rules prohibiting such refiling • The petitioner will not be prejudiced nor stand to suffer irreparably as a consequence of the lifting of the preliminary injunction considering that they are not actually engaged in the manufacture of the cigarettes with the trademark in question and the filing of the counterbond will amply answer for such damages. • a foreign corporation not doing business in the Philippines may have the right to sue before Philippine Courts, but existing adjective axioms require that qualifying

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circumstances necessary for the assertion of such right should first be affirmatively pleaded it is not sufficient for a foreign corporation suing under Section 21-A to simply allege its alien origin. Rather, it must additionally allege its personality to sue. Relative to this condition precedent, it may be observed that petitioners were not remiss in averring their personality to lodge a complaint for infringement especially so when they asserted that the main action for infringement is anchored on an isolated transaction Given these confluence of existing laws amidst the cases involving trademarks, there can be no disagreement to the guiding principle in commercial law that foreign corporations not engaged in business in the Philippines may maintain a cause of action for infringement primarily because of Section 21-A of the Trademark Law when the legal standing to sue is alleged, which petitioners have done in the case at hand. the fact that international law has been made part of the law of the land does not by any means imply the primacy of international law over national law in the municipal sphere. Under the doctrine of incorporation as applied in most countries, rules of international law are given a standing equal, not superior, to national legislative enactments A fundamental principle of Philippine Trademark Law is that actual use in commerce in the Philippines is a prerequisite to the acquisition of ownership over a trademark or a tradename. In other words, petitioners may have the capacity to sue for infringement irrespective of lack of business activity in the Philippines on account of Section 21-A of the Trademark Law but the question of whether they have an exclusive right over their symbol as to justify issuance of the controversial writ will depend on actual use of their trademarks in the Philippines in line

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with Sections 2 and 2-A of the same law. It is thus incongruous for petitioners to claim that when a foreign corporation not licensed to do business in the Philippines files a complaint for infringement, the entity need not be actually using its trademark in commerce in the Philippines. Such a foreign corporation may have the personality to file a suit for infringement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in the local market. • In view of the explicit representation of petitioners in the complaint that they are not engaged in business in the Philippines, it inevitably follows that no conceivable damage can be suffered by them not to mention the foremost consideration heretofore discussed on the absence of their "right" to be protected. • Petition dismissed separate opinion: Justice FELICIANO: dissenting issues: • is there a clear legal right to the relief asked by petitioners in the form of a preliminary injunction to restrain private respondent from manufacturing, selling and distributing cigarettes under the trademark "MARK"? • are private respondent's acts complained of by petitioners causing irreparable injury to petitioners' rights in the premises? Ratio: -I• the legal effects of registration of a trademark in the Principal Register in the Office of the Director of Patents. Section 20 of R.A. No. 166, as amended, sets out the principal legal effects of such registration: ◦ "Sec. 20. Certificate of registration prima facie evidence of validity. — A certificate of registration of a mark or trade name shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark or trade name, and of the registrant's exclusive right to use the •

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same in connection with the goods, business or services specified in the certificate, subject to any conditions and limitations stated therein." Registration in the Principal Register gives rise to a presumption of the validity of the registration, the registrant's ownership of the mark, and his right to the exclusive use thereof . There is no such presumption in registrations in the Supplemental Register. Registration in the Principal Register is limited to the actual owner of the trademark (Unno Commercial Enterprises v. Gen. Milling Corp., 120 SCRA 804 [1983]) and proceedings therein pass on the issue of ownership, which may be contested through opposition or interference proceedings, or after registration, in a petition for cancellation. Registration in the Principal Register is constructive notice of the registrant's claims of ownership, while registration in the Supplemental Register is merely proof of actual use of the trademark and notice that the registrant has used or appropriated it. registration in the Principal Register is a basis for an action for infringement, while registration in the Supplemental Register is not. In application for registration in the Principal Register, publication of the application is necessary. This is not so in applications for registration in the Supplemental Register. Certificates of registration under both Registers are also different from each other. Proof of registration in the Principal Register may be filed with the Bureau of Customs to exclude foreign goods bearing infringing marks while it does not hold true for registrations in the Supplemental Register." a mere application for registration cannot be a sufficient reason for denying injunctive relief, whether preliminary or definitive. - II foreign corporations and corporations domiciled in a foreign country are not disabled from bringing suit in Philippine

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courts to protect their rights as holders of trademarks registered in the Philippines. Article 2, paragraph 1 of the Paris Convention embodies the principle of "national treatment" or "assimilation with nationals," one of the basic rules of the Convention. Article 2 paragraph 2 of the Paris Convention restrains the Philippines from imposing a requirement of local incorporation or establishment of a local domicile as a pre-requisite for granting to foreign nationals the protection which nationals of the Philippines are entitled to under Philippine law in respect of their industrial property rights. a corporate national of a member country of the Paris Union is entitled to bring in Philippine courts an action for infringement of trademarks, or for unfair competition, without necessity for obtaining registration or a license to do business in the Philippines, and without necessity of actually doing business in the Philippines. That petitioners are not doing business and are not licensed to do business in the Philippines, does not by any means mean either that petitioners have not complied with the requirements of Section 12 of R.A. No. 166 relating to affidavits of continued use, or that petitioners' trademarks are not in fact used in trade and commerce in the Philippines. - III That petitioners are not doing business and are not licensed to do business in the Philippines, does not necessarily mean that petitioners are not in a position to sustain, and do not in fact sustain, damage through trademark infringement on the part of a local enterprise. The damage which petitioners claim they are sustaining by reason of the acts of private respondents, are not limited to impact upon the volume of actual imports into the Philippines of petitioners' cigarettes. Petitioners urge that private respondent's

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use of its confusingly similar trademark "MARK" is invasive and destructive of petitioners' property right in their registered trademarks Modern authorities on trademark law view trademarks as symbols which perform three (3) distinct functions: ◦ first, they indicate origin or ownership of the articles to which they are attached; ◦ second, they guarantee that those articles come up to a certain standard of quality; ◦ third, they advertise the articles they symbolize. "Modern law recognizes that the protection to which the owner of a trade-mark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties, but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to lead to a confusing of source, as where prospective purchasers would be misled into thinking that the complaining party has extended 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 Damages are irreparable within the meaning of the rule relative to the issuance of injunction where there is no standard by which their amount can be measured with reasonable accuracy

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Trademark Cases - Digest

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