TRADEMARKS

TRADEMARK anything which is adopted and used to identify the source of origin of goods, and which is capable of distinguishing them from goods emanating from a competitor SERVICE MARK distinguishes the services of an enterprise from the service of other enterprises. It performs for services what a trademark does for goods. COLLECTIVE MARK - any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods and services of different enterprises which use the sign under the control of the registered owner of the collective mark TRADE NAMES the person (whether natural or juridical) who does business and produces the goods or the services is designated by a trade name.-Under the law, there is no need to register trade names in order to secure protection for them. TRADE DRESS involves the total image of a product, including such features as size, shape, color or color combinations, texture, and/or graphics.

I.

History of trademarks Mipuri v. CA, 318 S 516 FACTS: In 1970, Escobar filed an application with the Bureau of Patents for the registration of the trademark Barbizon for use in horsiers and ladies undergarments (IPC No. 686). Private respondent reported Barbizon Corporation, a corporation organized and doing business under the laws of New York, USA, opposed the application. It was alleged that its trademark is confusingly similar with that of Escobar and that the registration of the said trademark will cause damage to its business reputation and goodwill. In 1974, the Director of Patents gave due course to the application. Escobar later assigned all his rights and interest over the trademark to petitioner. In 1979, Escobar failed to file with the Bureau the affidavit of use of the trademark required under the Philippine Trademark Law. Due to this failure, the Bureau cancelled Escobars certificate of registration. In 1981 , Escobar and petitioner separately filed this application for registration of the same trademark. (IPC 2049). Private respondent opposed again. This time it alleged (1) that the said trademark was registered with the US Patent Office; (2) that it is entitled to protection as well-known mark under Article 6 bis of the Paris Convention, EO 913 and the two Memoranda of the Minister of Trade and Industry and (3) that its use on the same class of goods amounts to a violation of the Trademark Law and Art. 189 of the RPC. Petitioner raised the defense of Res Judicata. ISSUE/S and HELD: 1. One of the requisites of res judicata is identical causes of action. Do IPC No. 686 and IPC No. 2049 involve the same cause of action? --- No. The issue of ownership of the trademark was not raised

in IPC 686. IPC 2049 raised the issue of ownership, the first registration and use of the trademark in the US and other countries, and the international recognition of the trademark established by extensive use and advertisement of respondents products for over 40 years here and abroad. These are different from the issues of confessing similarity and damage in IPC 686. The issue of prior use may have been raised in IPC 686 but this claim was limited to prior use in the Philippines only. Prior use in IPC 2049 stems from the respondents claims originator of the word and symbol Barbizon, as the first and registered user of the mark attached to its products which have been sold and advertised would arise for a considerable number of years pr ior to petitioners first application. Indeed, these are substantial allegations that raised new issues and necessarily gave respondents a new cause of action. Moreover, the cancellation of petitioners certificate registration for failure to file the affidavit of use arose after IPC 686. This gave respondent another cause to oppose the second application. It is also to be noted that the oppositions in the first and second cases are based on different laws. Causes of action which are distinct and independent from each other, although out of the same contract, transaction, or state of facts, may be sued on separately, recovery on one being no bar to subsequent actions on others. The mere fact that the same relief is sought in the subsequent action will not render the judgment in the prior action operating as res judicata, such as where the actions are based on different statutes. 2. Whether or not the treaty (Paris Convention) affords protection to a foreign corporation against a Philippine applicant for the registration of a similar trademark. --- The Court held in the affirmative. RA 8293 defines trademark as any visible sign capable of distinguishing goods. The Paris Convention is a multilateral treaty that seeks to protect industrial property consisting of patents, utility models, industrial designs, trademarks, service marks, trade names and indications of source or appellations of origin, and at the same time aims to repress unfair competition. In short, foreign nationals are to be given the same treatment in each of the member countries as that country makes available to its own citizens. Nationals of the various member nations are thus assured of a certain minimum of international protection of their industrial property. 3. Whether IPC No. 2049 is barred on the ground of res judicata. --- IPC No. 2049 raised the issue of ownership of the trademark and the international recognition and reputation of the trademark for over 40 years here and abroad, different from the issues of confusing similarity and damage in IPC No. 686. There was also a new cause of action arising from the cancellation of petitioner's certificate of registration for failure to file the affidavit of use. Also, the first and second cases are based on different laws, one on Trademark Law and the other on the Paris Convention, E.O. No. 913 and the two Memoranda of the Minister of Trade and Industry. Thus, res judicata does not apply to the instant case. 4. Whether a treaty affords protection to a foreign corporation against a Philippine applicant for the registration of a similar trademark. --- The WTO is a common institutional framework for the conduct of trade relations among its members in matters related to the multilateral and plurilateral trade agreements annexed to the WTO Agreement, one of which is the Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPs. Members to this Agreement have agreed to adhere to minimum standards of protection set by several Conventions ,including the Paris Convention. The Philippines and the US have acceded to the WTO Agreement. Conformably,

the State must reaffirm its commitment to the global community and take part in evolving a new international economic order at the dawn of the new millenium. The petition is denied. II. Rationale for protection of trademarks Bar 1982: What is the objective of the law in protecting trademarks? The objective of the law in protecting trademarks Is to give to their registered owners the full benefit of accruing to them from the goodwill earned by them from the use of said registered trademarks. A trademark is an incorporeal property right, and like any other property right, it is entitled to be protected from any illegal use by any person without the authority given. Societe Des Produits Nestle S. A. v. CA, 356 S 207 FACTS: CFC Corp. filed application for registration of Flavor Master instant coffee. Nestle filed notice of opposition claiming trademark is confusingly similar for Master Roast and Master Blend are its own TM. Nestle claims use of CFC will cause confusion and deceive purchasers as dominant word present in the three trademarks is Master. CA used holistic test, Nestle claims dominancy test should be used. HELD: Correct. Test is ordinary purchaser who in buying more common and less expensive household products is less inclined to closely examine specific details of similarities and dissimilarities. The word Master is neither a generic nor a descriptive term, and as such, said term cannot be invalidated as a trademark and may be legally protected. A generic term is the common descriptive name of an article or substance, and a descriptive term conveys the characteristics, functions, qualities and ingredient of a product to one who has never seen it and does not know what it is. Master is a suggestive term brought about by the advertising scheme of Nestle, as when it uses Jaworski and Puno. Societe Des Produits Nestl, S.A. vs. Court of Appeals Facts: On January 18, 1984, private respondent CFC Corporation filed with the BPTTT an application for the registration of the trademark "FLAVOR MASTER" for instant coffee Petitioner Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws and domiciled in Switzerland, filed an unverified Notice of Opposition, claiming that the trademark of private respondents product is "confusingly similar to its trademarks for coffee and coffee extracts, to wit: MASTER ROAST and MASTER BLEND." A verified Notice of Opposition was filed by Nestle Philippines, Inc., a Philippine corporation and a licensee of Societe Des Produits Nestle S.A., against CFCs application for registration of the trademark FLAVOR MASTER. o Nestle claimed that the use, if any, by CFC of the trademark FLAVOR MASTER and its registration would likely cause confusion in the trade; or deceive purchasers and would falsely suggest to the purchasing public a connection in the business of Nestle, as the dominant word present in the three

(3) trademarks is "MASTER"; or that the goods of CFC might be mistaken as having originated from the latter. In answer to the two oppositions, CFC argued that its trademark, FLAVOR MASTER, is not confusingly similar with the formers trademarks, MASTER ROAST and MASTER BLEND, alleging that, "except for the word MASTER (which cannot be exclusively appropriated by any person for being a descriptive or generic name), the other words that are used respectively with said word in the three trademarks are very different from each other in meaning, spelling, pronunciation, and sound". The BPTTT denied CFCs application for registration. The Court of Appeals reversed the BPTTTs decision and ordered the Director of Patents to approve CFCs application. Hence this petition before the SC. Issue: Whether or not the CA erred in reversing the decision of the BPTTT denyin g CFCs petition for registration. YES Ruling: Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him to purchase the one supposing it to be the other. In determining if colorable imitation exists, jurisprudence has developed two kinds of tests - the Dominancy Test and the Holistic Test. o The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitute infringement. o On the other side of the spectrum, the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. The totality rule states that "the test is not simply to take their words and compare the spelling and pronunciation of said words. In determining whether two trademarks are confusingly similar, the two marks in their entirety as they appear in the respective labels must 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 on both labels." In the case at bar, other than the fact that both Nestles and CFCs products are inexpensive and common household items, the similarity ends there. What is being questioned here is the use by CFC of the trademark MASTER. In view of the difficulty of applying jurisprudential precedents to trademark cases due to the peculiarity of each case, judicial fora should not readily apply a certain test or standard just because of seeming similarities. As this Court has pointed above, there could be more telling differences than similarities as to make a jurisprudential precedent inapplicable. The Court of Appeals held that the test to be applied should be the totality or holistic test reasoning, since what is of paramount consideration is the ordinary purchaser who is, in general, undiscerningly rash in buying the more common and less expensive household products like coffee, and is therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. This Court cannot agree with the above reasoning. If the ordinary purchaser is "undiscerningly rash" in buying such common and inexpensive household products as instant coffee, and would

therefore be "less inclined to closely examine specific details of similarities and dissimilarities" between the two competing products, then it would be less likely for the ordinary purchaser to notice that CFCs trademark FLAVOR MASTER carries the colors orange and mocha while that of Nestles uses red and brown. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common household item. Moreover, the totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition that confusing similarity is to be determined on the basis of visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. The totality or holistic test only relies on visual comparison between two trademarks whereas the dominancy test relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two trademarks. In addition, the word "MASTER" is neither a generic nor a descriptive term. As such, said term cannot be invalidated as a trademark and, therefore, may be legally protected. o Generic terms are those which constitute "the common descriptive name of an article or substance," or comprise the "genus of which the particular product is a species," or are "commonly used as the name or description of a kind of goods," or "imply reference to every member of a genus and the exclusion of individuating characters," or "refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product," and are not legally protectable. o On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in its normal and natural sense, it "forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not know what it is," or "if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods," or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination. Rather, the term "MASTER" is a suggestive term brought about by the advertising scheme of Nestle. Suggestive terms are those which, in the phraseology of one court, require "imagination, thought and perception to reach a conclusion as to the nature of the goods." Such terms, "which subtly connote something about the product," are eligible for protection in the absence of secondary meaning. While suggestive marks are capable of shedding "some light" upon certain characteristics of the goods or services in dispute, they nevertheless involve "an element of incongruity," "figurativeness," or " imaginative effort on the part of the observer." The term "MASTER", therefore, has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC of the term "MASTER" in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers. III. Functions of trademarks Mirpuri v. CA, 318 S 516

Function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product. Three distinct functions: (1) they indicate origin or ownership of the articles/goods to which they are attached; (2) they guarantee that those articles/goods come up to a certain standard of quality; and (3) they advertise the articles/goods they symbolize. The trademark is not merely a symbol of origin and goodwill; it is often the most effective agent for the actual creation and protection of goodwill. It imprints upon the public mind an anonymous and impersonal guaranty of satisfaction, creating a desire for further satisfaction. In other words, the mark actually sells the goods.[28] The mark has become the "silent salesman," the conduit through which direct contact between the trademark owner and the consumer is assured. It has invaded popular culture in ways never anticipated that it has become a more convincing selling point than even the quality of the article to which it refers. Article 6bis of the Paris Convention governs protection of well-known trademarks. Under the first paragraph, each country of the Union bound itself to undertake to refuse or cancel the registration, and prohibit the use of a trademark which is a reproduction, imitation or translation, or any essential part of which trademark constitutes a reproduction, liable to create confusion, of a mark considered by the competent authority of the country where protection is sought, to be well-known in the country as being already the mark of a person entitled to the benefits of the Convention, and used for identical or similar goods. It is a self-executing provision and does not require legislative enactment to give it effect in the member country. It may be applied directly by the tribunals and officials of each member country by the mere publication or proclamation of the Convention, after its ratification according to the public law of each state and the order for its execution. The essential requirement under Article 6bis is that the trademark to be protected must be "wellknown" in the country where protection is sought. The power to determine whether a trademark is well-known lies in the "competent authority of the country of registration or use." This competent authority would be either the registering authority if it has the power to decide this, or the courts of the country in question if the issue comes before a court. Intellectual and industrial property rights cases are not simple property rights. Trademarks deal with the psychological function of symbols and effects of these symbols on the public at large. It play significant role in communication, commerce and trade, and serve valuable and interrelated business functions, both nationality and internationally. All agreements concerning industrial property, like those on trademarks and tradenames, are intimately connected with economic development.

IV.

Distinguish trademark from tradename Bar 1958, 1965: What are trademarks? Distinguish trademark from tradename? A mark means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods, while tradename means the name or designation identifying or distinguishing an enterprise. Tradename refers to the business and its goodwill, while trademark refers to the goods. 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 from those manufactured, sold or dealt in by others. Trademark means any visible sign capable of distinguishing goods. Intellectual creation that is susceptible to ownership but the incorporeal right is distinct from the property in the material object subject to it. Tradename is defined by the same law as including individual names and surnames, firm names, tradenames, devices or words used by manufacturers, industrialists, merchants, agriculturists, and others to identify their business, vocations, or occupations, the names or titles lawfully adopted and used by natural or juridical persons, unions, and any manufacturing, industrial, commercial, agricultural or other organizations engaged in trade or commerce. Separate existence: Trademark, has all existence distinct from the existence of the proprietor or juridical person doing business and producing the goods or services offered by such person or enterprise; Tradename, attached to the natural or juridical person who does business and produces goods or services. Purpose: Trademark, designates the goods or services offered by person or enterprise; Tradename, identifies and dist. an enterprise. Registration: Trademark, must be registered in order to secure protection for them; Tradename, no need to register in order to secure protection for them. Transferability: Trademark, may be transferred with or without transfer of the business; Tradename, change of ownership of tradename must be made with transfer of enterprise or part thereof.

V.

Distinguish trademark from label In law, label (merely names what is within the container or package; may or may not be trademark)means any writing that is attached or annexed to a larger writing. For example, a codicil added to a will. A narrow slip of paper or parchment which is attached to a deed or writ for holding

the appended seal. In trademarks, label refers to an informative display of written, printed or graphic matter like a logo or title, affixed to goods or services for identifying their source. A label can be fixed on the wrapping, packaging or container of a manufactured product or on the packaging or surface of a natural substance. Law specifies specific labeling requirements for each product. It requires that every product package specify on its "principal display label"that part of the label most likely to be seen by consumersthe following information: 1) the product type; 2) the producer or processor's name and location; 3) the quantity (if applicable); and 4) the number and size of servings (if applicable). Trademark (designed to identify the user or origin) any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. 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 from those manufactured, sold or dealt in by others.

VI.

What may not be registered; doctrine of dilution; doctrine of secondary meaning or doctrine of distinctiveness Sec. 123; Rule 102 of the Rules and Regulations on Trademark What may not be registered? Section 123. Registrability. 123.1. A mark cannot be registered if it: (a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; (b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof; (c) Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow; (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: (i) The same goods or services, or (ii) Closely related goods or services, or (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion; (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered wellknown in accordance with the preceding paragraph, which is registered in the Philippines with respect

to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use; (g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; (h) Consists exclusively of signs that are generic for the goods or services that they seek to identify; (i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice; (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; (l) Consists of color alone, unless defined by a given form; or (m) Is contrary to public order or morality. 123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods for which registration is requested as a result of the use that have been made of it in commerce in the Philippines. The Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicant's goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made. 123.3. The nature of the goods to which the mark is applied will not constitute an obstacle to registration. (Sec. 4, R.A. No. 166a) Indeed, Section 123.1(e) of R.A. No. 8293 now categorically states that a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, cannot be registered by another in the Philippines. Section 123.1(e) does not require that the well-known mark be used in commerce in the Philippines but only that it be well-known in the Philippines. Moreover, Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers, which implement R.A. No. 8293, provides: Rule 102. Criteria for determining whether a mark is well-known. In determining whether a mark is well-known, the following criteria or any combination thereof may be taken into account: (a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; (b) the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;

(c) the degree of the inherent or acquired distinction of the mark; (d) the quality-image or reputation acquired by the mark; (e) the extent to which the mark has been registered in the world; (f) the exclusivity of registration attained by the mark in the world; (g) the extent to which the mark has been used in the world; (h) the exclusivity of use attained by the mark in the world; (i) the commercial value attributed to the mark in the world; (j) the record of successful protection of the rights in the mark; (k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and (l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that his mark is a wellknown mark.

Doctrine of Dilution - copying which while not sufficiently confusing to divert sales in the short run will tend to divert them in the long run by weakening the instantaneous favorable assoc. the public makes with highly regarded products. - provides protection for marks even when the traditional "likelihood of confusion" test for infringement is not met. - protection of a trademark owner's property right and goodwill in his mark, through prohibition of a junior user's "whittling away" of the value of the mark. Trademark infringement, on the other hand, seeks primarily to protect consumers against confusion and secondarily to protect the trademark owner's interest in preserving the integrity of his trademark. In both cases, some kind of mental association must exist in the buyer's mind between the two uses of a mark.

Doctrine of Secondary Meaning or Doctrine of Distinctiveness Is a doctrine wherein a longtime exclusive and continuous use of a mark or name which is unregistrable for being geographical, descriptive or a surname, such that the mark or name has lost its primary meaning and it becomes associated in the public mind with particular goods , entitles the user to have said name or mark registered in the Register of Trademarks, Tradenames, and Service Marks. A generic or descriptive mark may later acquire the characteristic of distinctiveness and later be registered if it acquires a meaning which is different from its ordinary connotation. For this to happen, there must be exclusive and continuous use for a period of at least 5 years. While a generic, indicative or descriptive mark will, as a general rule, be denied registration, there is a circumstance that will allow it to be registered. Under the doctrine of secondary meaning, when a mark has become distinctive of the applicants gods in commerce and, in the mind of the public, indicates a single source of consumers, it may be registered. Under the doctrine of secondary meaning, a word or phrase originally incapable of exclusive appropriation with reference to an article in the market, because geographical or otherwise descriptive might nevertheless have been used so long and so exclusively by one producer with

reference to this article that, in that trade and to that group of the purchasing public, the word or phrase has come to mean that the article was his produce. This circumstance has been referred to as the distinctiveness into which the name or phrase has evolved through the substantial and exclusive use of the same for a considerable period of time. Consequently, the same doctrine or principle cannot be made to apply where the evidence did not prove that the business has continued for so long a time that it has become of consequence and acquired a good will of considerable value such that its articles and produce have acquired a well-known reputation, and confusion will result by the use of the disputed name

2010 Bar effect of international affiliation of an unregistered mark in the Philippines For years, Y has been engaged in the parallel importation of famous brands, including shoes carrying the foreign brand MAGIC. Exclusive distributor X demands that Y cease importation because of his appointment as exclusive distributor of MAGIC shoes in the Philippines. Y counters that the trademark MAGIC is not registered with the Intellectual Property Office as a trademark and therefore no one has the right to prevent its parallel importation. A. Who is correct? B. Suppose the shoes are covered by a Philippine patent issued to the brand owner, what would your answer be? 2005 Bar effect of international affiliation of an unregistered mark in the Philippines S Development Corporation sued Shangrila Corporation for using the S logo and the tradename Shangrila. The former claims that it was the first to register the logo and the tradename in the Philippines and that it had been using the same in its restaurant business. Shangrila Corporation counters that it is an affiliate of an international organization which has been using such logo and tradename Shangrila for over 20 years. However, Shangrila Corporation registered the tradename and logo in the Philippines only after the suit was filed. Which of the two corporations has a better right to use the logo and the tradename? S Development Corporation has a better right to use the logo and the tradename, since the protective benefits of the law are conferred by the fact of registration and not by use. Although Shangrila Corporation's parent had used the tradename and logo long before, the protection of the laws will be for S Development Corporation because it was the first entity to register the intellectual properties. Territorial limits of a trademark extend beyond the country where said trademark may have been registered. o International Conventions and Reciprocity. - Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal

law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act.

effect of international affiliation of an unregistered mark in the Philippines How does the international affiliation of Shangrila Corporation affect the outcome of the dispute? The international affiliation of Shangrila Corporation may be critical in the event that its affiliates or parent company abroad had registered in a foreign jurisdiction the tradename and the logo. A well-known mark and tradename is subject to protection under Treaty of Paris for the Protection of Intellectual Property to which the Philippines is a member.

1994 Bar infringement exists even if the goods are dissimilar Laberge, Inc., manufactures and markets after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap, using the trademark PRUT, which is registered with the Phil Patent Office. Laberge does not manufacture briefs and underwear and these items are not specified in the certificate of registration. JG who manufactures briefs and underwear, wants to know whether, under our laws, he can use and register the trademark PRUTE for his merchandise. What is your advice? Yes. The trademark registered in the name of Laberge Inc covers only after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap. It does not cover briefs and underwear. The limit of the trademark is stated in the certificate issued to Laberge Inc. It does not include briefs and underwear which are different products protected by Larberges trademark. JG can register the trademark PRUTE to cover its briefs and underwear (Faberge Inc v IAC 215 s 316) 1991 Bar - infringement exists even if the goods are dissimilar Sony is a registered trademark for TV, stereo, radio, cameras, betamax and other electronic products. A local company, Best Manufacturing Inc produced electric fans which it sold under the trademark Sony without the consent of Sony. Sony sued Best Manufacturing for infringement. Decide the case. There is no infringement. In order that a case for infringement of trademark can prosper, the products on which the trademark is used must be of the same kind. The electric fans produced by Best Manufacturing cannot be said to be similar to such products as TV, stereo and radio sets or cameras or betamax products of Sony. There is infringement. If the owner of a trademark which manufactures certain types of goods could reasonably be expected to engage in the manufacture of another product using the same trademark, another party who uses the trademark for that product can be held liable for using that trademark. Using this standard, infringement exists because Sony can be reasonably expected to use such trademark on electric fans.

1990 Bar brand name sounds similar to generic name hence cannot be registered as trademark In 1988, the Food and Drug Administration approved the labels submitted by Turbo Corporation for its new drug brand name, Axilon. Turbo is now app lying with the Bureau of Patents, Trademarks and Technology Transfer for the registration of said brand name. It was subsequently confirmed that Accilonne is a generic term for a class of anti -fungal drugs and is used as such by the medical profession and the pharmaceutical industry, and that it is used as a generic chemical name in various scientific and professional publications. A competing drug manufacturer asks you to contest the registration of the brand name Axilon by Turbo. What will you advice be? - The application for registration by Turbo Corporation may be contested. The Trademark Law would not allow the registration of a trademark which, when applied to or used in connection with his products, is merely descriptive or deceptively misdescriptive of them. Confusion can result from the use of Axilon as the generic product itself. - Medical drugs may be procured only upon prescription made by a duly licensed physician. The possibility of deception could be rather remote. Since it cannot really be said that physicians can be so easily deceived by such trademark as Axilon, it may be hard to expect an opposition thereto to succeed. - The application for registration of Turbo Corporation may be contested. The factual settings do not indicate that there had been prior use for at least 2 months of the trademark Axilon. 1985, 1972 Bar identical mark belonging to another can no longer be registered Rubberworld, Inc. sought registration of the trademark Juggler for his casual rubber shoes in Inter Partes Case No. 602 filed with the Patent Office. The registration was opposed by a Belgian Corp. which alleges that it owns and has not abandoned the trademark Juggler although it admits that it has no license to do business in the Philippines, it is not presently selling footwear under the trademark Juggler in the phils., it was not licensed nor does it have any agreement with any local entity or firm to sell any of its products in the phil. At the trial, it was estab. That Rubberworld has spent a considerable amount and effort in popularizing said trademark in the phils., had been using the same since 1969 and had built up enormous goodwill. Acting on the petition, the patent office dismissed the opposition and ordered the registration of the trademark Juggler in the name of Rubberworld. Discuss the validity of the aforesaid decision. The dismissal of the opposition of Belgian corporation was valid. A mark (juggler of rubberworld) cannot be registered if it is identical to a mark considered by competent authority in the phils. To be well known internationally and in the phils., won registered here, used for identical goods. There was no showing that Juggler of Belgian Corporation is well known. Likewise the Belgian Corporation does not use the mark on footwear. It also disallows registration on dissimilar goods where the mark would indicate a connection between the goods and services (of Rubberworld), and the owner of the mark (Belgian Corp.), where the interest of the latter are likely to be damaged, this is not shown to exist in the case at bar.

EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC. G.R. No. 100098, December 29, 1995 (SURNAME) FACTS: On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 for the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation. Private respondent averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as previously registered and used in the Philippines cause confusion, mistake and deception on the part of the purchasing public as to the origin of the goods. On 19 July 1988, the Director of Patents rendered a decision granting private respondent's petition for cancellation and opposition to registration. The Director of Patents, using the test of dominancy, declared that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. It is undeniably the dominant feature of the mark. ISSUE: Whether or not a trademark causes confusion and is likely to deceive the public is a question of fact which is to be resolved by applying the "test of dominancy", meaning, 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. HELD: The word "LEE" is the most prominent and distinctive feature of the appellant's trademark and all of the appellee's "LEE" trademarks. It is the mark which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. The alleged difference is too insubstantial to be noticeable. The likelihood of confusion is further made more probable by the fact that both parties are engaged in the same line of business. Although the Court decided in favor of the respondent, the appellee has sufficiently established its right to prior use and registration of the trademark "LEE" in the Philippines and is thus entitled to protection from any infringement upon the same. EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC. G.R. No. 100098, December 29, 1995 (SURNAME)

FACTS: HD Lee Co., a foreing corpo, seeks the cancellation of a patent in favor of Emerald Garment Manufacturing (domiciled in the Phil) for the trademark Stylistic Mr. Lee, which according to HD Lee Co. closely resembled its own trademark Lee and thus would cause confusion, mistake and deception to the purchasing public. The Director of Patents granted the cancellation on the ground that petitioners trademark was confusingly similar to private respondents 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. The CA affirmed. Issue: WON the trademark Stylistic Mr. Lee tends to mislead or confuse the public and constitutes an infringement of the trademark Lee. Held: Negative for lack of adequate proof of actual use of its trademark in the Philippines prior to Emeralds use of its own mark and for failure to establish confusing similarity between said trademarks, HD Lee Cos action for infringement must necessarily fail. Ratio: Emeralds Stylistic Mr. Lee is not confusingly similar to private respondents LEE" trademark. Colorable imitation DOES NOT APPLY because: 1. Petitioners trademark is the whole STYLISTIC MR. LEE." Although on its label the word LEE" is prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities between the two marks become conspicuous, noticeable and substantial enough to matter especially in the light of the following variables that must be factored in, among others: a. Expensive and valuable items are normally bought only after deliberate, comparative and analytical investigation; and b. The average Filipino consumer generally buys his jeans by brand. 2. LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership over and singular use of said term. 3. After a meticulous study of the records, the SC observes that the Director of Patents and the Court of Appeals relied mainly on the registration certificates as proof of use by HD Lee Co of the trademark LEE" which are not sufficient. *********************** Colorable imitation defined: "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.

Shangri-La International Hotel Management Ltd., v The Court of Appeals GR No. 111580 June 21, 2001 (prior registration in the Phils. Vs. prior use abroad) Facts: On June 21, 1988, the Shangri-La International Hotel Management, Ltd., Shangri-La Properties, Inc., Makati Shangri-La Hotel and Resort, Inc. and Kuok Philippine Properties, Inc.,

filed with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) a petition praying for the cancellation of the registration of the Shangri-La mark and S device/logo issued to the Developers Group of Companies Inc., on the ground that the same was illegally and fraudulently obtained and appropriated for the latters restaurant business. The Shangri-La Group alleged that it is the legal and beneficial owners of the subject mark and logo; that it has been using the said mark and logo for its corporate affairs and business since March 1962 and caused the same to be specially designed for their international hotels in 1975, much earlier than the alleged first use by the Developers Group in 1982. Likewise, the Shangri-La Group filed with the BPTTT its own application for registration of the subject mark and logo. The Developers Group filed an opposition to the application. Almost three (3) years later, the Developers Group instituted with the RTC a complaint for infringement and damages with prayer for injunction. When the Shangri-La Group moved for the suspension of the proceedings, the trial court denied such in a Resolution. The Shangri-La Group filed a petition for certiorari before the CA but the CA dismissed the petition for certiorari. Hence, the instant petition. Issue: Whether or not the infringement case should be dismissed or at least suspended Held: There can be no denying that the infringement case is validly pass upon the right of registration. Section 161 of Republic Act No. 8293 provides to wit: SEC. 161. Authority to Determine Right to Registration In any action involving a registered mark the court may determine the right to registration, order the cancellation of the registration, in whole or in part, and otherwise rectify the register with respect to the registration of any party to the action in the exercise of this. Judgement and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Bureau, and shall be controlled thereby. (Sec. 25, R.A. No. 166a). (Emphasis provided) To provide a judicious resolution of the issues at hand, the Court find it apropos to order the suspension of the proceedings before the Bureau pending final determination of the infringement case, where the issue of the validity of the registration of the subject trademark and logo in the name of Developers Group was passed upon.

Fredco v. Harvard University, G.R. No. 185917, June 1, 2011 Facts: In 2005, Fredco Manufacturing Corporation filed a petition for cancellation before the Bureau of Legal Affairs of the Philippine Intellectual Property Office against the President and Fellows of Harvard College for the registration of its mark Harvard Veritas Shield Symbol under the Classes 16, 18, 21, 25 and 28 of the Nice International Classification of Goods an Services alleging that its predecessor-in-interest, New York Garments Manufacturing & Export Co., Inc., has been already using the mark Harvard since 1985 when it registered the same

mark under Class 25 of the Nice Classification. Thus, Harvard University is not a prior user of the mark in the Philippines and, therefore, has no right to register the mark. On the other hand, Harvard University claimed that the mark Harvard has been adopted by Harvard University in Cambridge, Massachusetts, USA since 1639. Furthermore, it alleges that the name and mark Harvard and Harvard Veritas Shield Symbol is registered in more than 50 countries, including the Philippines, and has been used in commerce since 1872. In fact, the name and mark is rated as one of the top brands of the world, being worth between $750M and $1B. Decision of BLA-IPO The Bureau of Legal Affairs, IPO ruled in favour of Fredco ordering the cancellation of Harvard Universitys mark under Class 25 only because the other classes were not confusingly similar with respect to the goods and services of Fredco. Decision of ODG-IPO Harvard University appealed before the Office of the Director General of IPO wherein ODGIPO reversed the decision of BLA-IPO. The Director General ruled that the applicant must also be the owner of the mark sought to be registered aside from the use of it. Thus, Fredco is not the owner of the mark because it failed to explain ho w its predecessor got the mark Harvard. There was also no evidence of the permission of Harvard University for Fredco to use the mark. Decision of the Court of Appeals Fredco appealed the decision of the Director General before the Court of Appeals, which then affirmed the decision of ODG-IPO considering the facts found by the Director General. CA ruled that Harvard University had been using the marks way before Fredco and the petitioners failed to explain its use of the marks bearing the words Harvard, USA, Established 1936 and Cambridge, Massachusetts within an oblong device. Issue: W/N CA erred in affirming the decision of ODG-IPO Held: The Petition has no merit. Although R.A. 166 Section 2 states that before a mark can be registered, it must have been actually used in commerce for not less than two months in the Philippines prior to filing an application for its registration, a trademark registered in a foreign country which is a member of the Paris Convention is allowed to register without the requirement of use in the commerce in the Philippines. Under Section 37 of R.A. 166, registration based on home certificate is allowed and does not require the use of the mark in the Philippines. Furthermore, R.A. 8293 Section 239.2 provides that marks which have been registered under R.A. 166 shall remain in force but shall be subject to the provisions of R.A. 8293, which does not require the prior use of the mark in the Philippines. Why the petition must fail?

1. The inclusion of the origin Cambridge, Massachusetts in Fredcos mark connotes that Fredco is associated with Harvard University, which is really not true. The registration of Fredcos mark should have been rejected. 2. The Philippines is a signatory of the Paris Convention, which provides for the protection against violation of intellectual property rights to all the member countries regardless of whether the trademarks is registered or not in a particular country. 1980, Luis Villafuerte issued a memo to the Director of Patents ordering the latter to reject all pending applications of marks which involves a well-known brand around the world by applicants other than the owner of the mark. 1983, Roberto Ongpin affirmed the memo of Villafuerte by commanding the Director of Patents to implement measures which will comply with the provisions of the Paris Convention. He provided criteria that should be considered to any marks that are well-known in the Philippines or marks that belong to persons subject to the protection of the Convention. Currently, well-known marks are protected under Section 123.1(e) of R.A. 8293. Additionally, Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers provides for the criteria in determining a well-known mark. The use of the mark in commerce is not anymore required because it is enough that any combination of the criteria be met in order for a mark to be well -known. The ODG-IPO traced the origin of the mark Harvard. It ruled that Harvard University had been using the mark centuries before Fredco although the latter may have used the mark first in the Philippines before the former. Likewise, CA ruled that the name and mark Harvard and Harvard Veritas Shield Symbol were first used in the United States since 1953 under Class 25. Finally, the Supreme Court declared the mark Harvard to be well -known internationally, including the Philippines.

Esso Standard v CA, G.R. No. L-29971, 116 S 336 (esso as cigarettes vs. petroleum; old rule on dissimilar goods) Facts of the Case: The petitioner Esso Standard is a foreign corporation duly licensed to do business in the philippines. it is engaged in the sale of petroleum products which are identified by the trademarl 'Esso'. Esso is a successor of Standard Vacuum Oil Co, it registered as a business name with the Bureau of Commerce in 1962. United Cigarette is a domestic corporation engaged in the manufacture and sale of cigarettes. it acquired the business from La Oriental Tobacco Corp including patent rights, once of which is the use of 'Esso' on its cigarettes. The petitioner filed a trademark infringement case alleging that it acquired goodwill to such an extent that the buying public would be deceived as ti the quality and origin of the said products to the detriment and disadvantage of its own products. The lower court found United Cigarette guilty of infringement. Upon appeal, the Court of Appeals ruled that there was no infringment in this case.

Issue: Is there infringement committed? Ruling: NONE. Infringement is defined by law as the use without the consent of the trademark owner of any reproduction, counterfeit, copy or colorable imitation of any registered mark or tradename which would likely cause confusion or mistake or deceive purchasers or others as to the source or origin of such goods. The products of both parties (Petroleum and cigarettes) are non-competing. But as to whether trademark infringement exists depend on whether or not the goods are so related that the public may be or is actually deceived and misled that they come from the same maker. Under the Related Goods Theory, goods are related when they belong to the same class or have the same descriptive properties or when they have same physical attributes. The goods are absolutely different and are so foreign from each other it would be unlikely for purchasers to think that they came from the same source. Moreover, the goods flow from different channels of trade and are evidently different in kind and nature.

Faberge v IAC, G.R. No. 71189, November 4, 1992, 215 S 316 (brute as brief vs. toiletries; old rule on dissimilar goods) Facts of the Case: Co Beng Kay applied for the registration of the trademark 'BRUTE' to be used it its underwear (briefs) products. The petitioner opposed on the ground that there is similarity with their own symbol (BRUT, Brut33 & Device) used on its aftershave, deodorant, cream shave, hairspray and hair shampoo/soaps and that it would cause injury to their business reputation. It must be noted that the petitioner never applied for registration of said trademark for its brief products. The Patent Office allowed Co Beng Kay the registration and this was further affirmed by the Court of Appeals. Issue: Is there confusing similarity between the challenged marks and that its use would likely cause confusion on the part of the purchasers? HELD: NONE. Co Beng Kay may rightly appropriate the mark. In this case Sec. 20 (Philippine Intellectual Property Law) is controlling. The certificate of registration issued confers the exclusive right to use its own symbol only to those goods specified by the first user in the certificate, subject to any conditions or limitations stated therein. Moreover, the two products are so dissimilar that a purchaser of one (a brief) would not be misled or mistaken into buying the other (such as an aftershave). Faberge v IAC, G.R. No. 71189, November 4, 1992, 215 S 316 (brute as brief vs. toiletries; old rule on dissimilar goods) Laberge, Inc., manufactures and markets after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap, using the trademark PRUT, which is registered with the Phil.

Patent Office. Laberge does not manufacture briefs and underwear and these items are not specified in the certificate of registration. JG who manufactures briefs and underwear, wants to know whether, under our laws, he can use and register the trademark PRUTE for his merchandise. What is your advice? Yes, he can use and register the trademark PRUTE for his merchandise. The trademark registered in the name of Laberge Inc. covers only after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap. It does not cover briefs and underwear. The limit of the trademark is stated in the certificate issued to Laberge Inc. It does not include briefs and underwear which are different products protected by Laberges trademark. JG can register the trademark PRUTE to cover its briefs and underwear (Faberge Inc. v. IAC, G.R. N o. 71189, Nov. 4, 1992)

LEVIS STRAUSS & CO. and LEVI STRAUSS PHILIPPINE INC. v. CLINTON APPARELLE, INC. GR. No. 138900, 20 September 2005, Second Division (Tinga, J.) (trademark dilution) The petitioners anchor their legal right to the trademark on the Certificate of Registration as well as under RA No. 8293 Section 147.1. This grants the owner of the registered mark the exclusive right to prevent all third parties not having the owners consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered if such use results in a likelihood of confusion. This case arose from the Complaint for Trademark Infringement, Injunction and Damages filed by petitioners LEVIS STRAUSS & CO. and LEVI STRAUSS PHILIPPINE INC. (LSPI) against respondent Clinton Apparelle, Inc. together with an alternative defendant, Olympian Garments, Inc., before the RTC of Quezon City. The Complaint alleged that LS & Co., a foreign corporation duly organized and existing under the laws of the State of Delaware, USA, and engaged in the apparel business, is the owner by prior adoption and use since 1986 of the internationally famous Dockers and Design trademark. The Dockers and Design trademark was first used in the Philippines in or about May 1988, by LSPI, a domestic corporation engaged in the manufacture, sale and distribution of various products bearing trademarks owned by LS & Co. LS & Co. and LSPI further alleged that they discovered the presence in the local market of jeans under the brand name Paddocks using a device which is substantially, if not exactly, similar to the Dockers and Design trademark without LS & Co.s consent. The petitioners prayed for a TRO and writ of preliminary injunctions which the court granted after the respondent failed to appear despite notice. Clinton Apparelle filed a Motion to Dismiss and Motion for Reconsideration in an Omnibus Order but this was denied for lack of merit. Thus, Clinton Apparelle filed with the Court of Appeals a Petition for certiorari, prohibition and mandamuswith prayer for the issuance of a temporary restraining order and/or writ of preliminary injunction, assailing the orders of the trial court.

The Court of Appeals ruled in favor of the respondent and held that the trial court did not follow the procedure required by law for the issuance of a temporary restraining order, as Clinton Apparelle was not duly notified of the date of the summary hearing for its issuance. Thus, the Court of Appeals ruled that the TRO had been improperly issued. The appellate court also held that such issuance is questionable for the petitioners failed to sufficiently establish their material and substantial right to have the writ issued. In addition, the Court of Appeals strongly believed that the implementation of the questioned writ would effectively shut down the respondents business, which in its opinion should not be sanctioned. Hence, this petition. ISSUES: 1. Whether or not the issuance of the writ of preliminary injunction by the trial court was proper 2. Whether or not the CA erred in setting aside the orders of the trial court HELD: Petition is denied. Section 1, Rule 58 of the Rules of Court defines a preliminary injunction as an order granted at any stage of an action prior to the judgment or final order requiring a party or a court, agency or a person to refrain from a particular act or acts. Injunction is accepted as the strong arm of equity or a transcendent remedy to be used cautiously as it affects the respective rights of the parties, and only upon full conviction on the part of the court of its extreme necessity. An extraordinary remedy, injunction is designed to preserve or maintain the status quo of things and is generally availed of to prevent actual or threatened acts until the merits of the case can be heard. It may be resorted to only by a litigant for the preservation or protection of his rights or interests and for no other purpose during the pendency of the principal action. It is resorted to only when there is a pressing necessity to avoid injurious consequences, which cannot be remedied under any standard compensation. The resolution of an application for a writ of preliminary injunction rests upon the existence of an emergency or of a special recourse before the main case can be heard in due course of proceedings. The grounds for the issuance of preliminary injunction under Section 3, Rule 58, of the Rules of Court provide that a clear and positive right especially calling for judicial protection must be shown. Injunction is not a remedy to protect or enforce contingent, abstract, or future rights; it will not issue to protect a right not in esse and which may never arise, or to restrain an act which does not give rise to a cause of action. There must exist an actual right. There must be a patent showing by the complaint that there exists a right to be protected and that the acts against which the writ is to be directed are violative of said right. In this case, the court finds scant justification for the issuance of the writ of preliminary injunction. The petitioners anchor their legal right to the Dockers and Design trademark on the Certificate of Registration issued in their favor by the Bureau of Patents, Trademarks and Technology Transfer, as well as under Republic Act No. 8293 Section 147.1. This grants the owner of the registered mark the exclusive right to prevent all third parties not having the owners consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered if such use results in a likelihood of confusion. However, attention should be given to the fact

that the petitioners registered trademark consists of two elements: (1) the word mark Dockers and (2) the wing-shaped design or logo. Notably, there is only one registration for both features of the trademark giving the impression that the two should be considered as a single unit. Clinton Apparelles trademark, on the other hand, uses the Paddocks word mark on top of a logo which according to the petitioners is a slavish imitation of the Dockers design. The two trademarks apparently differ in their word marks (Dockers and Paddocks), but again according to the petitioners, they employ similar or identical logos. It could thus be said that the respondent only appropriates the petitioners logo and not the word mark Dockers; it uses only a portion of the registered trademark and not the whole. Given the single registration of the trademark Dockers and Design and considering that the respondent only uses the assailed device but a different word mark, the right to prevent the latter from using the challenged Paddocks device is far from clear. It is also unclear whether the use without the owners consent of a portion of a trademark registered in its entirety constitutes material or substantial invasion of the owners right. It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the dominant or central feature of the petitioners trademarkthe feature that prevails or is retained in the minds of the publican imitation of which creates the likelihood of deceiving the public and constitutes trademark infringement. In sum, there are vital matters, which have yet and may only be established through a full-blown trial. The Court finds that the petitioners right to injunctive relief has not been clearly and unmistakably demonstrated. The right has yet to be determined. The petitioners also failed to show proof that there is material and substantial invasion of their right to warrant the issuance of an injunctive writ. Neither were they able to show any urgent and permanent necessity for the writ to prevent serious damage. The fact that the petitioners had suffered or continue to suffer may be compensated in terms of monetary consideration. The issued injunctive writ, if allowed, would dispose of the case on the merits as it would effectively enjoin the use of the Paddocks device without proof that there is basis for such action. The prevailing rule is that courts should avoid issuing a writ of preliminary injunction that would in effect dispose of the main case without trial. There would be a prejudgment of the main case and a reversal of the rule on the burden of proof since it would assume the proposition which the petitioners are inceptively bound to prove.

McDonald's Corporation and McGeorge Food Industries, Inc. vs. L.C. Big Mak Burger, Inc., Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo, Araceli Aycardo, and Grace Huerto (G.R. No. 143993, August 18, 2004, 480 Phil. 402) (Big Mac not generic but fanciful or arbitrary mark) FACTS: Petitioner, McDonalds Corporation (McDonalds) is a corporation organized under the laws of Delaware, US. It operates, by itself or through its franchisees, a global chain of fast food restaurants. It owns a family of marks including the Big Mac mark for its double decker hamburger sandwich. McDonalds registered his trademark with the US trademark registry

sometime 1979. Based on home registration, McDonalds applied for registration of the same mark in principal registry of the then Philippine Bureau of Patents, Trademark and Technology (PBPTT), now the Intellectual Property Office (IPO). Pending approval of this application, McDonalds introduced its Big Mac hamburger sandwiches in the Philippine market in 1981. On 1985, the PBPTT, allowed registration of the Big Mac mark in t he Philippine registry based on its home registration in the US. Like its other marks, McDonalds display the Big Mac mark in its item and paraphernalia in its restaurant, and its outdoor and indoor signages. From 1982 to 1990, McDonalds spent millions in advertisement for big mac hamburger sandwich alone. Petitioner McGeorge Food Industries (Petitioner McGeorge) a domestic corporation, is McDonalds Philippine franchisee. Respondent, LC Big Mak burger inc. is a domestic corporation which operates fast food outlets and snack vans in metro manila and nearby provinces. Respondents corporations menu includes hamburger sandwiches and other food items. Respondent Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo, Araceli Aycardo, and Grace Huero are the incoporators, stockholders and directors of respondent corporation. On 1988, respondent corporation applied with the PBPTT for the registration of the Big Mak mark for its hamburger sandwiches. McDonalds opposed respondent corporations application on the ground that Big Mak was colorable imitation of its registered Big Mac mark for the same food products. McDonalds also informed respondent Francis Dy, the chairman of the board of directors of the respondent corporation, of its exclusive right to the Big Mac mark and requested him to desist from using the Big Mak mark or any similar mark. Having received no reply from respondent Dy, petitioners sued respondents in the RTC Makati for trademark infringement and unfair competition. RTC issued a temporary restraining order against respondents enjoinining them from using the Big Mak mark in the operation of their business in the NCR. On 1990, RTC issued a writ of preliminary injunction replacing the TRO. In their answer, respondents admitted that they have been using the Big Mak burger for their fast food business. Respondents claimed, however, that McDonalds does not have an exclusive right to the Big Mac mark or to any other similar marks. Respondents point out that the Isaiyas group of corporations registered the same mark for hamburger sandwiches with the PBOTT on 1979. One Rodolfo Topacio similarly registered the same mark on 1983, prior to McDonalds registration on 1985. Alternatively, respondents claimed that they are not liable for trademark infringement and unfair competition, as the Big Mak mark they sought to register does not constitute a colorable imitation of the Big Mac mark. Respondents asserted that they did not fraudulently pass off their hamburger sandwiches as those of petitioners Big Mak hamburgers. Respondents sought damages in their counterclaim. In their reply, petitioners denied respondents claim that McDonalds is not the exclusive owner of the Big Mac mark. Petitioners asserted that while the Isaiyas group and Topacio did register the Big Mac mark ahead of them, the Isaiyas group did so only in the supplemental register of PBPTT and such registration does not provide any protection. McDonalds disclosed that it had acquired Topacios rights to his registration in a deed of assignment.

ISSUE: Did the same acts of defendants in using the name Big Mak as a trademark or trade name in their signages, or in causing the name Big Mak to be printed on the wrappers and containers of their food products also constitute an act of unfair competition under section 29 of the trademark law? RULING: Yes. The provision of the law concerning unfair competition is broader and more inclusive than that the law concerning the infringement of trademark, which is more limited range, but within its narrower range recognizes a more exclusive right derived by the adoption and registration of the trademark by the person whose goods or services are first associated therewith. Notwithstanding the distinction between an action for trademark infringement and an action for unfair competition, however, the law extends substantially the same relief to the injured party for both cases. Any conduct may be said to constitute unfair competition if the effect is to pass off on the public the goods of one man as the goods of another. The choice of Big Mak as trade name by defendant corporation is not merely for sentimental reasons but was clearly made to take advantage of the reputation, popularity and the established goodwill of plaintiff McDonalds. For as stated in Section 29, a person is guilty of unfair competition who in selling his goods shall give them the general appearance, of goods of another manufacturer or dealer, either as goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would likely influence purchasers to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer. Thus, plaintiffs have established their valid cause of action against the defendants for trademark infringement and unfair competition and for damages. XXXXXXXXXXX On August 18, 2004, the Supreme Court issued an important decision concerning trademark infringement and unfair competition in a case entitled McDonalds Corporation and McGeorge Food Industries, Inc. vs. L.C. Big Mak Burger, Inc., et al. (G.R. No. 143993, August 18, 2004). The Petitioners are the Delaware company, McDonalds Corporation (McDonalds) and its Philippine franchisee, McGeorge Food Industries, Inc. The Respondents are the Philippine company, L.C. Big Mak Burger, Inc. and its incorporators, stockholders and directors. Respondent company (Respondent) operates fast-food outlets and snack vans. Snack vans are van-shaped food stands which serve as store outlets for Respondents food items. Respondents name, L.C. Big Mak Burger, Inc. is displayed outside the snack vans. Respondents menu includes hamburger sandwiches and other food items. In court Respondent admitted that it used the name Big Mak Burger for its fast food business. Respondent used the mark Big Mak on its hamburger products, showing the words Big Mak on the plastic wrappings and plastic bags of the hamburgers, with the descriptions, burger and 100% pure beef set in smaller type, displayed along with indications of

locations or addresses of Respondents branches or outlets. Respondents cash invoices referred to the hamburger sandwiches asBig Mak. McDonalds, on the other hand, has used its trademark Big Mac in the Philippines since 1981, in connection with its double-decker hamburgers. It has obtained a Philippine trademark registration for Big Mac in 1985. McDonalds displays the Big Mac mark in items and paraphernalia in its restaurants, and in outdoor and indoor signages. Petitioners filed an action with the Regional Trial Court for trademark infringement and unfair competition with preliminary injunction. The lower court awarded Petitioners P400,000.00 in actual damages, P100,000.00 in exemplary damages, and P100,000 in attorneys fees and costs of litigation. Preliminary injunction was also granted. On appeal, the Court of Appeals reversed the Regional Trial Courts decision; hence Petitioners filed with the Supreme Court (also the Court) a petition for review under Rule 45. The Court resolved the following issues: (1) Whether or not the questions raised are proper for Rule 45 petition for review; (2) Whether Respondents used the word Big Mak not only as part of the corporate name L.C. Mak Burger, Inc. but also as a trademark for their hamburger products; (3) Whether Respondent corporation is liable for trademark infringement and unfair competition. On the first issue, the Court ruled that the petition for review is proper under the recognized exception to Section 1, Rule 45 because of the contradictory findings of fact of the RTC and Court of Appeals. The Court cited the case of Asia Brewery, Inc. vs. Court of Appeals which also involved trademark infringement and unfair competition and was reviewed under Rule 45 which was reviewed under Rule 45 due to the conflicting decisions of the RTC and the Court of Appeals. On the issue of whether Respondents corporate name, L.C. Big Mak Burger, Inc. appears in the packaging of Respondents hamburgers, the Supreme Court reversed the Court of Appeals and ruled that the evidence presented during the hearing on the preliminary injunction at the Regional Trial Court showed that the plastic wrappings and plastic bags used by Respondents for their hamburger sandwiches bore the words Big Mak not the Respondents company name. Quoted below are the findings and rulings made by the Supreme Court on trademark infringement. 1. To establish trademark infringement, the following elements must be shown: (1) the validity of plaintiffs mark; (2) the plaintiffs ownership of the mark; and (3) the use of the mark or its colorable imitation by the alleged infringer results in likelihood of confusion. Of these, it is the element of likelihood of confusion that is the gravamen of trademark infringement. 2. The Big Mac mark which should be treated in its entirety and not dissected word for word, is neither generic nor descriptive. Generic marks are commonly used as the name or description of a kind of goods, such as Lite for beer or Chocolate Fudge for chocolate soda drink. Descriptive marks, on the other hand, convey the characteristics, functions, qualities or ingredients of a product to one who has never seen it or does not know it exists, such as Arthriticare for arthritis medication. On the contrary, Big Mac falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the product it represents. As such, it is highly distinctive and thus valid.

3. A mark that is not registered under the Principal Register is not distinctive and has no real protection. Registration in the Supplemental Register is not even a prima facie evidence of the validity of the registrants exclusive right to use the mark in the goods specified in the certificate. 4. Section 22 of R.A. 166 as amended covers 2 types of confusion arising from the use of similar or colorable imitation marks, namely, confusion of goods (product confusion) and confusion of business (source or origin confusion). The first trademark law, Act No. 666 (prior to R.A. 166), infringement was limited to confusion of goods only. Thus there was no infringement if the colorable imitation or the registered mark is used on different although related goods. The amendment introduced by Section 22, R.A. 166 expanded the scope of infringement to include use the mark or its colorable imitation that is likely to result in confusion on the source or origin of such goods or services or identity of such business. As amended, even if the goods are non-competing, the goods are related enough to product confusion of affiliation. 5. In this case, the other factors raised by the Respondents, such as the differences in income of the target market, the variety of goods on which Respondents use Big Mak, the differences in the color and stylization of the marks Big Mac and Big Mak, the price difference of the parties respective hamburgers, and the differences in the restaurants in which the parties hamburgers are being served --- all these cannot negate the fact that Respondents used Big Mak on hamburgers the very same products on which Petitioners use their Big Mac trademark. Such use by Respondents is infringement. 6. The registered trademark owner may use his mark on the same or similar products, in different segments of the mark, and at different price levels depending on the variations of the products for specific segments of the market. The Court has recognized that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. 7. In determining the likelihood of confusion, the Supreme Court chose to rely on the dominancy test rather than the holistic test. It said: The dominancy test considers the dominant features in the competing marks in determining whether they are confusingly similar. Under the dominancy test, courts give greater weight to the similarity of the appearance of the products arising from the adoption of the dominant features of the registered mark, disregarding minor differences. Courts will consider more the aural and visual impressions created by the marks in the public mind, giving little weight to factors like prices, quality, sales outlets and market segments. The Court cited the cases of Co Tiong Sa vs. Director of Patents (91 Phil 1), Lim Hoa vs. Director of Patents (100 Phil 214), Phil Nut Industry, Inc. vs. Standard Brands, Inc. 65 SCRA 575), Converse Rubber Corporation vs. Universal Rubber Products, Inc. (147 SCRA 154) and Asia Brewery, Inc. vs. Court of Appeals, and Societe Des Produits Nestle, S.A. vs. Court of Appeals (224 SCRA 437). Applying the dominancy test, the Court found that Respondents use of the Big Mak mark results in likelihood of confusion. It stated that the respondents have adopted in Big Mak not only the dominant but also almost all the features of Big Mac. Citing the case of Marvex Commercial Co., Inc. vs. Petra Hapia & Co., et al. (125 Phil 295) the Supreme Court said that Big Mac and Big Mak for hamburgers create even greater confusion, not only aurally but also visually. xxx A person cannot distinguish Big Mac from Big Mak by their sound.

8. Petitioners aggressive promotion of the Big Mac mark, as borne by their advertisements expenses, has built goodwill and reputation for such mark making it one of the easily recognizable marks in the market today. This increases the likelihood that consumers will mistakenly associate petitioners hamburgers and business with those of respondents. 9. Respondents inability to explain sufficiently how and why they came to choose Big Mak for their hamburger sandwiches indicates their intent to imitate petitionewrs Big Mac mark. Xxxx Absent proof that respondents adoption of the Big Mak mark was due to honest mistake or was fortuitous, the inescapable conclusion is that respondents adopted the Big Mak mark to ride on the coattails of the mor established Big Mac mark. This saves the respondents much of the expense in advertising to create market recognition of their mark and hamburgers. 10. Petitioners failure to present proof of actual confusion does not negate their claim of trademark infringement. As noted in American Wire & Cable Co. vs. Director of Patents (31 SCRA 544), Section 22 requires the less stringent standard of likelihood of confusion only. While proof of actual confusion is the best evidence of infringement, its absence is inconsequential. On the issue of unfair competition, the Court stated that confusing similarity in the general appearance of the goods is an essential element in unfair competition; that confusing similarity may not be due to the similarity of the marks used but to other external factors in the packaging or presentation of the goods as offered to the public. The Court quoted Section 29 of the R.A. 166 as amended (the trademark law in effect prior to the current law, R.A. 8293, Intellectual Property Code) under which a person is guilty of unfair competition if in the course of selling his goods he gives them the general appearance of the goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer. Respondents argued that the findings and observations of the lower court as to how the respective marks and goods of the parties appeared prove that it did not give its hamburgers the general appearance of Petitioners Big Mac hamburgers. The Court quoted the lower courts description as to the appearance of the goods and marks of the parties herein, as follows: The mark Big Mac is used by plaintiff McDonalds to identif y its double decker hamburger sandwich. The packaging material is a styrofoam box with the McDonalds logo and trademark in red with block capital letters printed on it. All letters of the Big Mac mark are also in red and block capital letters. On the other hand, defendants Big Mak script print is in orange with only the letter B and M being capitalized and the packaging material is plastic wrapper. xxxx Further, plaintiffs logo and mascot are the umbrella M and Ronald McDonalds, respectively, compared to the mascot of defendant Corporation which is a chubby boy called Macky displayed or printed between the word Big and Mak. To Respondents argument, the Court said:

" The dissimilarities in the packaging are minor compared to the stark similarities in the words that give respondents Big Mak hamburgers the general appearance of petitioners Big Mac hamburgers. Section 29(a) expressly provides that the similarity in the general appearance of the goods may be in the devices or words used on the wrappings. Respondents have applied on their plastic wrappers and bags almost the same words that petitioners use on their styrofoam box. What attract the attention of the buying public are the words Big Mak which are almost the same, aurally and visually, as the word Big Mac. The dissimilarities in the material and other devices are insignificant compared to the glaring similarity in the words used in the wrappings. The Court observed that the parties goods are both hamburgers; that when Respondents used Big Mak on their hamburgers, such use constituted an act of clothing or giving their goods the general appearance as those of Petitioners goods, within the contemplation of Section 29. However, the Court qualified this ruling by stating that had Respondents placed a notice on their plastic wrappers and bags that the hamburgers are sold by L.C. Big Mak Burger, Inc. then Respondents could validly claim that they did not intend to deceive the public. In such case, Respondents could not have been guilty of unfair competition but only of trademark infringement.

Pearl & Dean (Phil.), Incorporated v Shoemart Incorporated GR No. 148222 August 15, 2003 (poster ads generic) Facts: Pearl & Dean (P&D) is engaged in the manufacture of advertising display units referred to as light boxes. These units utilize specially printed posters sandwiched between plastic sheets and illuminated with backlights. It was able to secure registration over these illuminated display units. The advertising light boxes were marketed under the trademark Poster Ads. In 1985, P&D negotiated with defendant Shoemart, Inc. (SMI) for the lease and installation of the light boxes in SM North Edsa. However, since SM North Edsa was under construction, SMI offered as alternative SM Makati and Cubao. During the signing of the Contract, SMI only returned the Contract with SM Makati. Manager of petitioner reminded SMI that their agreement includes SM Cubao. However, SMI did not bother to reply. Instead, respondent informed petitioner that they are rescinding the contract for SM Makati due to nonperformance. Two years later, SMI engaged the services of EYD Rainbow Advertising to make the light boxes. These were delivered in a staggered basis and installed at SM Megamall and SM City. In 1989, petitioner received reports that exact copy of its light boxes was installed by SMI. It further discovered that North Edsa Marketing Inc. (NEMI), sister company of SMI, was set up primarily to sell advertising space in lighted display units located in SMIs different branches. Petitioner sent letters to respondents asking them to cease using the light boxes and the discontinued use of the trademark Poster Ads. Claiming that SMI and NEMI failed to meet its demand, petitioner filed a case for infringement of trademark and copy right, unfair competition and damages. SMI maintained

that it independently developed its poster panels using commonly known techniques and available technology without notice of or reference to P&Ds copyright. In addition, it said that registration of Poster Ads obtained by petitioner was only for s tationeries such as letterheads, envelopes and the like. Poster Ads is a generic term which cannot be appropriated as trademark, and, as such, registration of such mark is invalid. It also stressed that P&D is not entitled to the reliefs sought because the advertising display units contained no copyright notice as provided for by law. RTC found SMI and NEMI jointly and severally liable for infringement of copyright and trademark. CA reversed saying that it agreed with SMI that what was copyrighted was the technical drawings only and not the light boxes. Light boxes cannot be considered as either prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be properly classified as copyrightable class O work. In addition, CA stressed that the protective mantle of the Trademark Law extends only to the goods used by the first user as specified in its certificate of registration. The registration of the trademark Poster Ads covers only stationeries such as letterheads, envelopes and calling cards and newsletter. Issue: (1) If the engineering or technical drawings of an advertising display unit are granted copyright protection is the light box depicted in such drawings ipso facto also protected by such copyright? (2) Should the light box be registered separately? (3) Can the owner of the registered trademark legally prevent others from using such mark if it is mere abbreviation of a term descriptive of his goods, services or business? Held: 1. No. Copyright is purely statutory. As such, the rights are limited to what the statute confers. It may be obtained and enjoyed only with respect to the subjects and by the persons, and on the terms and conditions specified in the statute. Accordingly, it can cover only the works falling within the statutory enumeration or description. Petitioner secured copyright under classification class O work. Thus, copyright protection extended only to the technical drawings and not to the light box itself because the latter was not at all in the category of prints, pictorial illustrations, advertising copies, labels, tags and box wraps. What the law does not include, it excludes, and for the good reason: the light box was not a literary or artistic piece which could be copyrighted under the copyright law. And no less clearly, neither could the lack of statutory authority to make the light box copyrightable be remedied by the simplistic act of entitling the copyright certificate issued by the National Library as Advertising Display Units. It must be noted that copyright is confined to literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation. 2. Yes. Petitioner never secured a patent for the light boxes. It therefore acquired no patent rights which could have protected its invention, if in fact it really was. And because it had no patent, petitioner could not legally prevent anyone from manufacturing or commercially using the contraption. To be able to effectively and legally preclude others from copying and profiting from the invention, a patent is a primordial requirement. No patent, no protection. The ultimate goal of a patent system is to bring new designs and technologies into the public through disclosure. Ideas, once, disclosed to the public without protection of a valid

patent, are subject to appropriation without significant restraint. The Patent Law has a threefold purpose: first, patent law seeks to foster and reward invention; second, it promotes disclosures of inventions to stimulate further innovation and to permit the public to practice the invention once the patent expires; third, the stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the free use of the public. It is only after an exhaustive examination by the patent office that patent is issued. Therefore, not having gone through the arduous examination for patents, petitioner cannot exclude other s from the manufacture, sale or commercial use of the light boxes on the sole basis of its copyright certificate over the technical drawings. 3. Court agrees with CA that the certificate of registration issued by the Director of Patents can confer the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any conditions and limitations specified in the certificate. One who has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others for products which are of a different description. Assuming arguendo that Poster Ads could validly qualify as a trademark, the failure of petitioner to secure a trademark registration for specific use on the light boxes meant that there could not have been any trademark infringement since registration was an essential element thereof. There is no evidence that petitioners use of poster Ads was distinctive or well -known. As noted by CA, petitioners expert witness himself had testified that Poster Ads was not too generic a name. SO it was difficult to identify it with any company. This fact also prevented the application of the doctrine of secondary meaning. Poster Ads was generic and incapable of being used as a trademark because it was used in the field of poster advertising the very business engaged in by petitioner. Secondary meaning means that a word or phrase originally incapable of exclusive appropriation with reference to an article in the market might nevertheless have been used for so long and so exclusively by one producer with reference to his article that , in the trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his property. PETITION WAS DENIED

Societe Des Produits Nestle S. A. v. CA, 356 S 207 (master not generic but suggestive term) FACTS: CFC Corp. filed application for registration of Flavor Master instant coffee. Nestle filed notice of opposition claiming trademark is confusingly similar for Master Roast and Master Blend are its own TM. Nestle claims use of CFC will cause confusion and deceive purchasers as dominant word present in the three trademarks is Master. CA used holistic test, Nestle claims dominancy test should be used. HELD: Correct. Test is ordinary purchaser who in buying more common and less expensive household products is less inclined to closely examine specific details of similarities and dissimilarities. The word Master is neither a generic nor a descriptive term, and as such, said term cannot be invalidated as a trademark and may be legally protected. A generic term is the common descriptive name of an article or substance, and a descriptive term conveys the characteristics, functions,

qualities and ingredient of a product to one who has never seen it and does not know what it is. Master is a suggestive term brought about by the advertising scheme of Nestle, as when it uses Jaworski and Puno. Societe Des Produits Nestl, S.A. vs. Court of Appeals (master not generic but suggestive term) Facts: On January 18, 1984, private respondent CFC Corporation filed with the BPTTT an application for the registration of the trademark "FLAVOR MASTER" for instant coffee Petitioner Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws and domiciled in Switzerland, filed an unverified Notice of Opposition, claiming that the trademark of private respondents product is "confusingly similar to its trademarks for coffee and coffee extracts, to wit: MASTER ROAST and MASTER BLEND." A verified Notice of Opposition was filed by Nestle Philippines, Inc., a Philippine corporation and a licensee of Societe Des Produits Nestle S.A., against CFCs application for registration of the trademark FLAVOR MASTER. o Nestle claimed that the use, if any, by CFC of the trademark FLAVOR MASTER and its registration would likely cause confusion in the trade; or deceive purchasers and would falsely suggest to the purchasing public a connection in the business of Nestle, as the dominant word present in the three (3) trademarks is "MASTER"; or that the goods of CFC might be mistaken as having originated from the latter. In answer to the two oppositions, CFC argued that its trademark, FLAVOR MASTER, is not confusingly similar with the formers trademarks, MASTER ROAST and MASTER BLEND, alleg ing that, "except for the word MASTER (which cannot be exclusively appropriated by any person for being a descriptive or generic name), the other words that are used respectively with said word in the three trademarks are very different from each other in meaning, spelling, pronunciation, and sound". The BPTTT denied CFCs application for registration. The Court of Appeals reversed the BPTTTs decision and ordered the Director of Patents to approve CFCs application. Hence this petition before the SC. Issue: Whether or not the CA erred in reversing the decision of the BPTTT denying CFCs petition for registration. YES Ruling: Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him to purchase the one supposing it to be the other. In determining if colorable imitation exists, jurisprudence has developed two kinds of tests - the Dominancy Test and the Holistic Test. o The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitute infringement.

o On the other side of the spectrum, the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. The totality rule states that "the test is not simply to take their words and compare the spelling and pronunciation of said words. In determining whether two trademarks are confusingly similar, the two marks in their entirety as they appear in the respective labels must 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 on both labels." In the case at bar, other than the fact that both Nestles and CFCs products are inexpensive and common household items, the similarity ends there. What is being questioned here is the use by CFC of the trademark MASTER. In view of the difficulty of applying jurisprudential precedents to trademark cases due to the peculiarity of each case, judicial fora should not readily apply a certain test or standard just because of seeming similarities. As this Court has pointed above, there could be more telling differences than similarities as to make a jurisprudential precedent inapplicable. The Court of Appeals held that the test to be applied should be the totality or holistic test reasoning, since what is of paramount consideration is the ordinary purchaser who is, in general, undiscerningly rash in buying the more common and less expensive household products like coffee, and is therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products. This Court cannot agree with the above reasoning. If the ordinary purchaser is "undiscerningly rash" in buying such common and inexpensive household products as instant coffee, and would therefore be "less inclined to closely examine specific details of similarities and dissimilarities" between the two competing products, then it would be less likely for the ordinary purchaser to notice that CFCs trademark FLAVOR MASTER carries the colors orange and mocha while that of Nestles uses red and brown. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common household item. Moreover, the totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition that confusing similarity is to be determined on the basis of visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. The totality or holistic test only relies on visual comparison between two trademarks whereas the dominancy test relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two trademarks. In addition, the word "MASTER" is neither a generic nor a descriptive term. As such, said term cannot be invalidated as a trademark and, therefore, may be legally protected. o Generic terms are those which constitute "the common descriptive name of an article or substance," or comprise the "genus of which the particular product is a species," or are "commonly used as the name or description of a kind of goods," or "imply reference to every member of a genus and the exclusion of individuating characters," or "refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product," and are not legally protectable. o On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in its normal and natural sense, it "forthwith conveys the characteristics, functions, qualities or

ingredients of a product to one who has never seen it and does not know what it is," or "if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods," or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination. Rather, the term "MASTER" is a suggestive term brought about by the advertising scheme of Nestle. Suggestive terms are those which, in the phraseology of one court, require "imagination, thought and perception to reach a conclusion as to the nature of the goods." Such terms, "which subtly connote something about the product," are eligible for protection in the absence of secondary meaning. While suggestive marks are capable of shedding "some light" upon certain characteristics of the goods or services in dispute, they nevertheless involve "an element of incongruity," "figurativeness," or " imaginative effort on the part of the observer." The term "MASTER", therefore, has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC of the term "MASTER" in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers.

Asia Brewery v Court of Appeals, 224 SCRA 437 (pale pilsen generic; use of shape and color) Facts: SMC filed a case against petitioner for infringement of trademark. It alleged that the bottles used by Asia Brewery were confusingly similar to those used by SMC in the packaging of its beer. The trial court held in favor of Asia Brewery but was reversed in the appellate court. Issue: Whether or not there was infringement Held: Using the holistic test, wherein all circumstances were given consideration, there was no infringement committed by petitioner. There are two tests available for colorable imitation. One is the dominancy test. If the form, marks, contents, words of other special arrangement or general appearance of the two marks or devices are such as would likely mislead persons in the ordinary course of purchasing the genuine article, then the similarity is such as would entitle the oppose to equitable protection. Under the holistic test, on the other hand, the opposing trademarks are compared in their entirety to determine confusing similarity.

LYCEUM OF THE PHILIPPINES VS. CA, 219 S 437 - (DOCTRINE OF SECONDARY MEANING/DOCTRINE OF DISTINCTIVENESS) Doctrine of secondary meaning can be extended to corporation name but must comply with the requirement that it has been used so long and so exclusively by one and that the said name has come to mean that it is referred to as that corporation.

FACTS: Petitioner is an educational institution duly registered with the SEC since Sept 1950. Before the case at bar, Petitioner commenced a proceeding against Lyceum of Baguio with the SEC to require it to change its corporate name and adopt a new one not similar or identical to the Petitioner. SEC granted noting that there was substantial because of the dominant word Lyceum. CA and SC affirmed. Petitioner filed similar complaint against other schools and obtain a favorable decision from the hearing officer. On appeal, SEC En banc reversed the decision and held that the word Lyceum have not become so identified with the petitioner and that the use thereof will cause confusion to the general public. ISSUE: 1. Whether or not the corporate names of the private respondents are identical with or deceptively similar to that of the petitioner. 2. Whether or not the use by the petitioner of Lyceum in its corporate name has been for such length of time and with such exclusivity as to have become associated or identified with the petitioner institution in the mind of the general public (Doctrine of Secondary meaning). RULING: NO to both. True enough, the corporate names of the parties carry the word Lyceum but confusion and deception are precluded by the appending of geographic names. Lyceum generally refers to a school or an institution of learning and it is natural to use this word to designate an entity which is organized and operating as an educational institution. Doctrine of Secondary meaning is a word of phrase originally incapable of exclusive appropriation, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product. The corporate names of private respondents are not identical or deceptively or confusingly similar to that of petitioners. Confusion and deception has been precluded by the appending of geographic names to the word Lyceum. Furthermore, the word Lyceum has become associated in time with schools and other institutions providing public lectures, concerts, and public discussions. Thus, it generally refers to a school or an institution of learning. Petitioner claims that the word has acquired a secondary meaning in relation to petitioner with the result that the word, although originally generic, has become appropriable by petitioner to the exclusion of other institutions. The doctrine of secondary meaning is a principle used in trademark law but has been extended to corporate names since the right to use a corporate name to the exclusion of others is based upon the same principle, which underlies the right to use a particular trademark or tradename. Under this doctrine, a word or phrase originally incapable of exclusive appropriation with reference to an article in the market, because geographical or

otherwise descriptive might nevertheless have been used for so long and so exclusively by one producer with reference to this article that, in that trade and to that group of purchasing public, the word or phrase has come to mean that the article was his produce. The doctrine cannot be made to apply where the evidence didn't prove that the business has continued for so long a time that it has become of consequence and acquired good will of considerable value such that its articles and produce have acquired a well known reputation, and confusion will result by the use of the disputed name. Petitioner didn't present evidence, which provided that the word Lyceum acquired secondary meaning. The petitioner failed to adduce evidence that it had exclusive use of the word. Even if petitioner used the word for a long period of time, it hadnt acquired any secondary meaning in its favor because the appellant failed to prove that it had been using the same word all by itself to the exclusion of others. Lyceum of the Philippines has not gained exclusive use of Lyceum by long passage of time. The number alone of the private respondents suggests strongly that the use of Lyceum has not been attended with the exclusivity essential for the applicability of the doctrine. It may be noted that one of the respondents Western Pangasinan Lyceum used such term 17 years before the petitioner registered with the SEC. Moreover, there may be other schools using the name but not registered with the SEC because they have not adopted the corporate form of organization.