1. US v Kyburz 2. Compania v Alhambra Facts:: 1.

Plaintiff Compania claims to have appropriated

and own exclusive right to use the word "Isabela" on cigarettes. 2. Defendant before the commencement of the action manufactured cigarettes offering them to public with the name "Alhambra Isabelas". 3. Plaintiff claims that there is a violation or infringement of the trade-name "Isabela" and unfair competition arising out of the use by defendant of the word "Isabelas" in their cigarette packages. 4. Trial court ruled in favor of plaintiff on the basis of the trade-mark violation. 5. The defendant appealed from the judgment of the trial court declaring plaintiff's rights in the word "Isabela" and prohibiting it from the use thereof and made a motion to suspend the operation of the injunction until the case could be resolved finally on appeal. That motion was denied and the defendant later made the same motion to the Supreme Court, which was also denied. In spite of the existence of the injunction the defendant continued to use the words "Alhambra Isabelas" on its cigarettes; 6. Thereafter the defendant placed on its cigarettes the words, "Alhambra Isabela," simply changing the word "Isabelas" to "Isabela." Hence, this petition. Note: there was a change in the theory of the case from unfair competition to violation of a trade-mark. Issue: WoN there is a violation of a trade-name rights of the Plaintiff in the word "Isabela" thus Plaintiff can recover damages Held:NO Rights of action for the violation of a trade-mark or trade-name or to restrain unfair competition are conferred by statute. The Act is No. 666 of the Philippine Commission and confers a right of action in three cases (1) for the violation of a trade-mark, (2) a trade-name, and (3) to restrain unfair competition. The statute founds the cause of action in the first two cases exclusively on the invasion of the right of property which the statute gives in the trade-mark or tradename. These actions are not based on fraud nor is the right given on the theory of unfair competition. It is founded solely in the property which the statute creates in the trade-mark or trade-name. property right. These cases trademark and tradename- are dealt with on the theory of patents, giving the owner a right

in the thing similar to the right created by a patent. No allegation or proof of fraud is necessary. The action based on UNFAIR COMPETITION is based exclusively on fraud committed on the public rather than fraud committed on the plaintiff. o To prove such the defendant must be proven to have made the general appearance of the goods the same with that of the plaintiff in order to influence and deceive the public. o The plaintiff must prove that there is an intent to deceive the public before plaintiff can recover. THEREFORE, an action for the violation of a tradename cannot be carried on in conjunction with an action of unfair competition. The facts which will support an action for the violation of a trade-name will not support an action of unfair competition. o An action of unfair competition is based exclusively on the appearance of the goods as they are exposed for sale; while, under the statute, the trade-name; unlike the trade-mark, applies exclusively to the business, profession, trade or occupation of the plaintiff and, as a consequence, it is not essential that the trade-name appear on plaintiff's goods or go into the market with them Plaintiff's action cannot prosper o there is no claim here based on the infringement or violation of the trade-mark just described, nor is there contention or claim of any kind that the use of the word "Isabela" is a violation or an infringement of the tradename "La Flor de la Isabela." o The action is not for the violation of the trade-name "La Flor de la Isabela," but for the violation of an entirely different trade-name, namely, "Isabela." The exclusive right to use this name, plaintiff claims arises from two causes: First, the contraction of the phrase "La Flor de la Isabela" into the word "Isabela" by popular expression and use and second, the use for more than twenty years of the word "Isabela." In view of the fact that there is no claim of an infringement of the trade name "La Flor de la Isabela," these two claims are identical; for, there could have been no contraction brought about by popular expression except after long lapse of time. The contraction of the phrase into the word would create no rights, there being no registration, unless it resulted from long use. Therefore, to establish a right in the word, the contraction must be shown to have existed for a length of time equivalent to that which would be necessary to give the word "Isabela" the dignity and legal status of a trade-name. If therefore, it results from the evidence in this action that the word "Isabela" has not been used by the plaintiff for a period of time sufficient to give it the special value necessary to bring it within the law relating to trade-

names (if it be admitted for the moment that that could be done), then the plaintiff must fail, whether it base its action on contraction, or use, or both.
3. 4. Mipuri v CA Shangrila v St Francis

Petitioner St. Francis Square Development Corporation (SFSDC) caused the construction of St. Francis Commercial Center (to be named later on as St. Francis Square) which became known for its bars, restaurants, banks and other establishments. SFSDC filed a petition for rehabilitation, attached to this was its plan to construct a building to be named Saint Francis Towers. Respondents The Shang Grand Towers Corporation (TSGTC) and EPHI ventured into a real estate project along the same street as St. Francis Square and named them The St. Francis Towers and St. Francis Shangri-la Place. SFSDC filed a complaint against respondents for unfair competition and false and fraudulent declaration with the IPO for the alleged unlawful use of the names The St. Francis Tower and St. Francis Shangri-la Place. SFSDC claims that its consistent use of the name St. Francis to identify its property development projects gained substantial goodwill with the general public. Respondents, on the other hand, argued that SFSDC is barred from claiming ownership and exclusive use of the name St. Francis because the same is geographically descriptive of the goods or services to which it was attached. The Bureau of Legal Affairs (BLA) of the IPO rendered a decision finding respondents liable for unfair competition with using the term St. Francis Towers and that the term is devoid of any primary significance as a geographic location being the name of a saint. The director-general reversed the BLAs decision stating that there was no unfair competition since the term St. Francis is a geographically descriptive term. Issues: 1. Whether or not the name St. Francis or St. Francis Towers as a trademark is geographically descriptive. NO. 2. Whether or not respondents use of the name St. Francis constitutes unfair competition or is otherwise unlawful. YES. Ruling: The CA ruled that SFSDC, which exclusively and continuously used the mark St. Francis for more than a decade, has gained substantial goodwill and reputation and is very much entitled to protection against indiscriminate usage by other companies. It is also true that the parties projects are all situated along St. Fra ncis Street, however, the court does not believe that respondents in using such names meant only to provide the prospective buyer with a factual backdrop as regards the place or the street where its commercial buildings are located. A scrutiny of respondents flyers reveals that the fraud lies in the patent effort on their part to capitalize the name St. Francis and pass off their real estate projects as belonging to or having any connection to SFSDC. The court has also arrived at the conclusion that if St. Francis is a geographically descriptive term, it would still be given protection under the Doctrine of Secondary Meaning.

Lastly, the court ruled that respondents are liable for unfair competition and any composite name connected with the mark St. Francis would always be confusingly construed as belonging to SFSDC. Notes on Geographic Indications: The criteria in determining whether a geographic term is descriptively used are: Is the place or region named noted for the particular goods? If buyer do not really care whether the goods come from the place named, then this is evidence that the mark is used in an arbitrary sense. But if the geographic term is likely to lead buyers to think that the goods come from the place, and the place is well known for these goods such that it is an important inducement to purchasers, then the mark is probably deceptive and cannot be registered and protected. 5. Ang v Teodoro

FACTS Respondent Toribio Teodoro, at first in partnership with Juan Katindig and later as sole proprietor, has continuously used "Ang Tibay," both as a trade-mark and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He formally registered it as trade-mark on September 29, 1915, and as trade-name on January 3, 1933. The growth of his business is a thrilling epic of Filipino industry and business capacity. Starting in an obscure shop in 1910 with a modest capital of P210 but with tireless industry and unlimited perseverance, Toribio Teodoro, then an unknown young man making slippers with his own hands but now a prominent business magnate and manufacturer with a large factory operated with modern machinery by a great number of employees, has steadily grown with his business to which he has dedicated the best years of his life and which he has expanded to such proportions that his gross sales from 1918 to 1938 aggregated P8,787,025.65. Petitioner (defendant below) registered the same trademark "Ang Tibay" for pants and shirts on April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. In the following year (1938) her gross sales amounted to P422,682.09. Neither the decision of the trial court nor that of the Court of Appeals shows how much petitioner has spent or advertisement. But respondent in his brief says that petitioner "was unable to prove that she had spent a single centavo advertising "Ang Tibay" shirts and pants prior to 1938. In that year she advertised the factory which she had just built and it was when this was brought to the attention of the appellee that he consulted his attorneys and eventually brought the present suit." The trial court (Judge Quirico Abeto) presiding absolved the defendant from the complaint, with costs against the plaintiff, on the grounds that the two trademarks are dissimilar and are used on different and non-competing goods; that there had been no exclusive use of the trademark by the plaintiff; and that there had been no fraud in the use of the said trade-mark by the defendant because the goods on which it is used are essentially different from those of the plaintiff. The second division of the Court of

Appeals, composed of Justices Bengson, Padilla, Lopez Vito, Tuason, and Alex Reyes, with Justice Padilla as ponente, reversed that judgment, holding that by uninterrupted an exclusive use since 191 in the manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary meaning; that the goods or articles on which the two trade-marks are used are similar or belong to the same class; and that the use by petitioner of said trade-mark constitutes a violation of sections 3 and 7 of Act No. 666. The defendant Director of Commerce did not appeal from the decision of the Court of Appeals. ISSUES 1. Is Toribios Ang Tibay trademark valid? 2. Had the words Ang Tibay acquired a second meaning? 3. Ang argues that there can neither be infringement of trade-mark under section 3 nor unfair competition under section 7 through her use of the words "Ang Tibay" in connection with pants and shirts, because those articles do not belong to the same class of merchandise as shoes and slippers. HELD 1. First. Counsel for the petitioner, in a well-written brief, makes a frontal sledge-hammer attack on the validity of respondent's trade-mark "Ang Tibay." He contends that the phrase "Ang Tibay" as employed by the respondent on the articles manufactured by him is a descriptive term because, "freely translate in English," it means "strong, durable, lasting." He invokes section 2 of Act No. 666, which provides that words or devices which related only to the name, quality, or description of the merchandise cannot be the subject of a trade-mark.XXX We find it necessary to go into the etymology and meaning of the Tagalog words "Ang Tibay" to determine whether they are a descriptive term, i.e., whether they relate to the quality or description of the merchandise to which respondent has applied them as a trade-mark.xxx The phrase "Ang Tibay" is an exclamation denoting administration of strength or durability. For instance, one who tries hard but fails to break an object exclaims, "Ang tibay!" (How strong!")xxx From all of this we deduce that "Ang Tibay" is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trade-mark or trade-name. In this connection we do not fail to note that when the petitioner herself took the trouble and expense of securing the registration of these same words as a trademark of her products she or her attorney as well as the Director of Commerce was undoubtedly convinced that said words (Ang Tibay) were not a descriptive term and hence could be legally used and validly registered as a trade-mark. It seems stultifying and puerile for her now to contend otherwise, suggestive of the story of sour grapes. 2. xxx. In view of the conclusion we have reached upon the first assignment of error, it is unnecessary to apply here the doctrine of "secondary meaning" in trade-mark parlance. This

3.

doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article of the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product. (G. & C. Merriam Co. vs. Salfield, 198 F., 369, 373.) We have said that the phrase "Ang Tibay," being neither geographic nor descriptive, was originally capable of exclusive appropriation as a trademark. But were it not so, the application of the doctrine of secondary meaning made by the Court of Appeals could nevertheless be fully sustained because, in any event, by respondent's long and exclusive use of said phrase with reference to his products and his business, it has acquired a proprietary connotation. (Landers, Frary, and Clark vs. Universal Cooler Corporation, 85 F. [2d], 46.) The question raised by petitioner involve the scope and application of sections 3,7, 11, 13, and 20 of the Trade-Mark Law (Act No. 666.) Section 3 provides that "any person entitled to the exclusive use of a trade-mark to designate the origin or ownership of goods he has made or deals in, may recover damages in a civil actions from any person who has sold goods of a similar kind, bearing such trade-mark . . . The complaining party . . . may have a preliminary injunction, . . . and such injunction upon final hearing, if the complainant's property in the trade-mark and the defendant's violation thereof shall be fully established, shall be made perpetual, and this injunction shall be part of the judgment for damages to be rendered in the same cause." Section 7 provides that any person who, in selling his goods, shall give them the general appearance of the goods of another either in the wrapping of the packages, or in the devices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of the complainant, shall be guilty of unfair competition, and shall be liable to an action for damages and to an injunction, as in the cases of trade-mark infringement under section 3. Section 11 requires the applicant for registration of a trade-mark to state, among others, "the general class of merchandise to which the trade-mark claimed has been appropriated." Section 13 provides that no alleged trade-mark or trade name shall be registered which is identical with a registered or known trade-mark owned by another and appropriate to the same class of merchandise, or which nearly resembles another person's lawful trade-mark or trade-name as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers. And section 2 authorizes the Director of Commerce to

xxx

establish classes of merchandise for the purpose of the registration of trade-marks and to determine the particular description of articles included in each class; it also provides that "an application for registration of a trade-mark shall be registered only for one class of articles and only for the particular description of articles mentioned in said application." xxx xxx

The burden of petitioner's argument is that under sections 11 and 20 the registration by respondent of the trademark "Ang Tibay" for shoes and slippers is no safe-guard against its being used by petitioner for pants and shirts because the latter do not belong to the same class of merchandise or articles as the former; that she cannot be held guilty of infringement of trade-mark under section 3 because respondent's mark is not a valid trade-mark, nor has it acquired a secondary meaning; that pants and shirts do not possess the same descriptive properties as shoes and slippers; that neither can she be held guilty of unfair competition under section 7 because the use by her of the trade-mark "Ang Tibay" upon pants and shirts is not likely to mislead the general public as to their origin or ownership; and that there is no showing that she is unfairly or fraudulently using that mark "Ang Tibay" against the respondent. If we were interpreting the statute for the first time and in the first decade of the twentieth century, when it was enacted, and were to construe it strictly and literally, we might uphold petitioner's contentions.xxx . Our Trade-mark Law, enacted nearly forty years ago, has grown in its implications and practical application, like a constitution, in virtue of the life continually breathed into it. xxx xxx xxx In the present state of development of the law on TradeMarks, Unfair Competition, and Unfair Trading, the test employed by the courts to determine whether noncompeting goods are or are not of the same class is confusion as to the origin of the goods of the second user. Although two noncompeting articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they would, nevertheless, be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be likely to cause confusion as to the origin, or personal source, of the second user's goods. They would be considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second user's goods. xxx xxx xxx We think reasonable men may not disagree that shoes and shirts are not as unrelated as fountain pens and razor blades, for instance. The mere relation or association of the articles is not controlling. As may readily be noted from what we have heretofore said, the proprietary connotation that a trade-mark or trade-name has acquired is of more paramount consideration. The Court of Appeals found in this case that by uninterrupted and exclusive use since

1910 of respondent's registered trade-mark on slippers and shoes manufactured by him, it has come to indicate the origin and ownership of said goods. It is certainly not farfetched to surmise that the selection by petitioner of the same trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent. As observed in another case, 12 the field from which a person may select a trade-mark is practically unlimited, and hence there is no excuse for impinging upon or even closely approaching the mark of a business rival. In the unlimited field of choice, what could have been petitioner's purpose in selecting "Ang Tibay" if not for its fame? 6. Inchausti v Song Fo Facts: The plaintiff company is a general partnership duly organized under the laws of the Philippine Islands and is the owner of a distillery in the city of Manila known as the "Destileria de Tanduay." The defendants are the members of a general partnership duly organized according to the provisions of law, and are the owners and operators of a distillery in the city of Manila known as the "Destileria La Tondea." Both firms are extensively engaged in the manufacture and sale of alcoholic liquors. Plaintiffs caused to be registered in the division of archives, patents, copyrights and trade marks of the Government of the Philippine Islands a trade-mark for "anisados y alcoholes" It is shown to be a circular design inclosed within two concentric circles with the symbol of a demijohn in the center; across the face of the design, running in a horizontal direction are two parallel lines, and between these lines the word "Tanduay". The defendants since 1906 have been using, among other labels, affixed to the corks used in the bottling of their products, a circular label bearing a design substantially similar to the registered trade-mark of plaintiffs. It is a label of practically the same size as that of plaintiffs. The main difference in the two horizontal designs lies in the fact that in plaintiffs' registered trade-mark the horizontal design passes across the entire face of both circles, while in the trade-mark used by defendants the horizontal design passes only across the face of the inner circle. The wording of the two designs is different, but the general position of the wording is the same in both designs. Defendants' counsel insist that Inchausti & Co. did not have the right to adopt as their exclusive trade-mark the design shown in Exhibit A, and that it was error on the part of the lower court to adjudge that they had such a right. Issue 1: WON Inchausti and Company has the exclusive right to use the demijohn symbol? Held: Yes. It is urged that the demijohn is the only distinguishing element in plaintiffs' trade-mark upon which they could have been granted an exclusive trademark; and it is further contended that a demijohn being a well-known and generally used receptacle for alcoholic liquors, and being universally used by the distilling trade, plaintiffs for that reason are not entitled to the use of the same as a distinguishing symbol and trade-mark for their

products. But that plaintiffs are entitled to the exclusive use of the above-described trade-mark upon their products does not seem to us to be open to question. While the symbol of a demijohn alone might not be the subject of an exclusive trade-mark, yet we think that a demijohn used as it is in plaintiffs' trade-mark in combination with the other distinguishing elements therein may fairly be made the subject of an exclusive trade-mark. The component elements of a design are not to be considered separate and apart; we must look to the design as a whole; to the combination of those component elements. We are of opinion that the design is the subject of an exclusive trademark, and that the plaintiffs have the exclusive ownership and right of use in the same by reason of the registration thereof and their use of this trade-mark in the sale of their products for many years. Issue 2: WON the trademarks used by the defendants are infringements of plaintiffs registered trademark? Held: Yes. An examination of the two trade-marks in question reveals a striking similarity in the two designs, but we are not prepared to say that the likeness is such that the two designs could be considered one and the same trade-mark. We can not escape the conclusion that the two trade-marks are so nearly alike in design and general appearance that only the most careful examination could detect that they were not in fact the same. Such an examination discloses the points of difference, but it is to be remembered that the purchasing public has, ordinarily, no such opportunity to make such an examination nor is there any reason to impose such an obligation on the public. A person thoroughly familiar with the details of design in plaintiffs' trade-mark, and exercising special care in examining the goods offered for sale and the wording used on the trade-mark, would hardly be deceived by the trademark used by the defendants. It certainly could be only in the exercise of such careful scrutiny as this, however, that an intending purchaser could assure himself that the two labels were different. We are satisfied beyond a reasonable doubt that the similarity of the two labels, and the further fact that they are affixed in the same way by both parties to the corks used in the bottling of their products, would be the means of influencing the purchaser to believe that the goods offered by the defendants were those of plaintiff's manufacture. We are of opinion that the charge of unfair competition is fully sustained by the record. The similarity in the appearance of the goods as packed and offered for sale is so striking that we are unable to attribute this fact to anything other than an intent on the part of defendants to deceive the public and defraud plaintiffs out of their legitimate trade, and in this case we infer such intent from the likeness of the goods so packed and offered for sale. 7. Ang Si Hieng v Wellington Facts: FACTS: The plaintiffs-appellants herein are engaged in the business of manufacturing shirts, pants, drawers, and other articles of wear for men, women, and children.

o They have been in the business since 1938 and obtained the registration for the said articles of the trademark Wellington o In 1940, they registered the business name Wellington Company and renewed it in 1946. o However, it does not appear that their trademark for their articles of wear was again registered after August 27, 1938, nor their trade name registered after 1946. Defendant Benjamin Chua applied for the registration of the business name "Wellington Department Store" on May 7, 1946. o It does not appear, however, that his application with the Bureau of Commerce for the registration of the business name "Wellington Department Store" has been renewed, and neither does it appear that the business name "Wellington Company" applied for by plaintiffsappellants has also been renewed. In the complaint filed by the plaintiff, they alleged that that the use of the words "Wellington Department Store" as a business name and as a corporate name by the defendant-appellee deceives the public into buying defendant corporation's goods under the mistaken belief that the names are the plaintiff's or have the same source as plaintiffs' goods, thereby resulting in damage to them. o Hence, they prayed for the defendant be enjoined from using the business name "Wellington Department Store" and the corporate name "Wellington Department Store, Inc" In their answer, the defendants contend that the plaintiffs are engaged in the manufacture or production of shirts, pants, drawers, and other articles of wear for men, women, and children, and keep a dry goods store for the sale of the same, whereas they (the defendants) are not engaged in the same business or in the manufacture or sale of articles with the trademark "Wellington," and that they are keeping a store for articles such as shoes, hats, toys, perfumes, bags, apparels, and the like, most of which are different from those manufactured and sold by plaintiffsappellants. TC- dismissed the complaint o holding that the corporate name "Wellington Department Store Inc.," has not been previously acquired and appropriated by any person or corporation Hence, this appeal o The plaintiffs alleged that the appellees' business is similar and identical to that of the appellants; o that the use of the business name "Wellington Department Store, Inc.," misleads and confuses the public; o that plaintiffs-appellants have acquired a property right in the name "Wellington;" and that if the defendants-appellees are not liable for any infringement of tradename, at least they are liable for unfair competition. ISSUE: WON DEFENDANTS SHOULD BE ENJOINED FROM USING THE SAID TRADENAME BASED ON THE ALLEGATIONS OF THE PLAINTIFF. HELD: The term Wellington is a geographical name or a surname of a person

o But mere geographical names are ordinarily regarded as common property, and it is a general rule that the same cannot be appropriated as the subject of an exclusive trademark or trade name. (52 Am. Jur., 548.) Even if Wellington were a surname, which is not even that of the plaintiffs-appellants, it cannot also be validly registered as a trade name. o The right to damages and for an injunction for infringement of a trademark or a trade name is granted only to those entitled to the exclusive use of a registered trademark or trade name. (Section 23, Republic Act No. 166.) It is evident, therefore, that no action may lie in favor of the plaintiffs-appellants herein for damages or injunctive relief for the use by the defendants-appellees of the name "Wellington." Based on the allegations of the plaintiff ( actual intent to mislead and defraud the public), the action is evidently one for unfair competition, which is defined in Chapter VI, Section 29, of Republic Act No. 166, not one for violation of a trademark or a tradename. o In order to determine such acts, ll the surrounding circumstances must be taken into account, especially the identity or similarity of their business, how far the names are a true description of the kind and quality of the articles manufactured or the business carried on, the extent of the confusion which may be created or produced, the distance between the place of business of one and the other party, etc. While there is similarity between the trademark or trade name "Wellington Department Store," no confusion or deception can possibly result or arise from such similarity because the latter is a "department store," while the former does purport to be so. o Neither can the public be said to be deceived into the belief that the goods being sold in defendant's store originate from the plaintiffs, because the evidence shows that defendant's store sells no shirts or wear bearing the trademark "Wellington," but other trademarks. o Neither could such deception be by any possibility produced because defendant's store is situated on the Escolta, while plaintiffs' store or place of business is located in another business district far away from the Escolta. o No evidence has been submitted that customers of the plaintiffs-appellants had actually been misled into purchasing defendant's articles and merchandise, for the very witnesses who have supposedly noted the use of plaintiffs' trade name do not claim to have actually purchased any articles from defendant's store. We agree, therefore, with the trial court that plaintiffs-appellants have not been able to show the existence of a cause of action for unfair competition against the defendants-appellees. 8. Lim Hoa v Director of Patents Facts: Facts: On April 26, 1949, the Petitioner, Lim Hoa, filed with the Patent Office an application for the registration of a trademark, consisting of a

representation of two midget roosters in an attitude of combat with the word Bantam printed above them. He claims that he had used said trademark on a food seasoning product since April 25 of that year. The application was published in the Official Gazette in its issue of February, 1953, released for circulation on April 18, of the same year. On April 30, 1953, the Agricom Development Co., Inc., a domestic corporation, opposed the application on several grounds, among others, that the trademark sought to be registered was confusingly similar to its register mark, consisting of a pictorial representation of a hen with the words Hen Brand and Marca Manok, which mark or brand was also used on a food seasoning product, before the use of the trademark by the applicant. After considering the application and the opposition thereto, and after comparing the two brands, the Director of Patents issued his order, wherein he found and held that to allow the registration of the applicants trademark would likely cause confusion or mistake or deceive purchasers, and he refused registration of said trademark, under Rule 178 of the Revised Rules of Practice in Trademark Cases, 1953. Issue: W/N the Director of Patents erred in not allowing the registration of applicants trademark Held: There is such similarity between the two brands as to cause confusion in the mind of the public that buys the food seasoning product on the strength and on the indication of the trademark or brand identifying or distinguishing the same. In the case of Go Tiong Sa vs. Director of Patents, (95 Phil., 1), we had occasion to say the following:c It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor it is necessary that the infringing label should suggest an effort to imitate. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers. The danger of confusion in trademarks and brands which are similar may not be so great in the case of commodities or articles of relatively great value, such as, radio and television sets, air conditioning units, machinery, etc., for the prospective buyer, generally the head of the family or a businessman, before making the purchase, reads the pamphlets and all literature available, describing the article he is planning to buy, and perhaps even makes comparisons with similar articles in the market. He is not likely to be deceived by similarity in the trademarks because he makes a more or less thorough study of the same and may even consult his friends about the relative

merit and performance of the article or machinery, as compared to others also for sale. But in the sale of a food seasoning product, a kitchen article of everyday consumption, the circumstances are far different. Said product is generally purchased by cooks and household help, sometimes illiterate who are guided by pictorial representations and the sound of the word descriptive of said representation. The two roosters appearing in the trademark of the applicant and the hen appearing on the trademark of the Oppositor, although of different sexes, belong to the same family of chicken, known as manok in all the principal dialects of the Philippines, and when a cook or a household help or even a housewife buys a food seasoning product for the kitchen the brand of Manok or Marca Manok would most likely be upper most in her mind and would influence her in selecting the product, regardless of whether the brand pictures a hen or a rooster or two roosters. To her, they are all manok. Therein lies the confusion, even deception. 9. Arce Sons and Company v Selecta Biscuit Company 10. Romero v Maiden Form 11. Etherpa v Director of Patents 12. Marvex Commercial v Petra Hawpia Facts: Petra Hawpia & Co., a partnership duly organized under the laws of the Philippines and doing business at 543 M. de Santos (Botica Divisoria), Manila (hereinafter referred to as the applicant), on October 14, 1958 filed a petition for the registration of the trademark "LIONPAS" used on medicated plaster, with the PhilippinePatent Office, asserting its continuous use in the Philippines since June 9, 1958. The Marvex Commercial Co., Inc., a corporation also duly organized under the laws of the Philippines (hereinafter referred to as the oppositor), on July 24, 1959 filed an opposition thereto, alleging that the registration of such trademark would violate its right to and interest in the trademark "SALONPAS" used on another medicated plaster, which is registered in its name under Certificate of Registration 5486, issued by the Director of Patents on September 29, 1956, and that both trademarks when used on medicated plaster would mislead the public as they are confusingly similar. After due hearing, the Director of Patents in his decision of August 18, 1961 dismissed the opposition and gave due course to the petition, stating in part that "confusion, mistake, or deception among the purchasers will not likely and reasonably occur" when both trademarks are applied to medicated plaster. The oppositor moved to have the decision reconsidered. This motion was denied in a resolution of November 27, 1961. The oppositor then interposed the present appeal. ISSUE: (1) Is the applicant the owner of the trademark "LIONPAS"? (2) Is the trademark

"LIONPAS" confusingly similar to the trade mark "SALONPAS"? HELD: Director of Patents found, on the strength of exhibits 5 and 6 for the applicant, that the latter has "satisfactorily shown" its ownership of the trademark sought to be registered. Exhibit 5 is a letter dated June 20, 1958, sent by "OSAKA BOEKI KAISHA, LTD." to the applicant which tends to show that the former, for a $1 consideration, has assigned, ceded, and conveyed all its "rights, interests and goodwill in the tradename LIONPAS Medicated Plaster . . ." in favor of the latter. A careful scrutiny of exh. 5 will reveal, however, that the sender of the letter, "OSAKA BOEKI KAISHA, LTD.", and which appears to be the seller, is merely a representative of the manufacturer "ASUNARO PHARMACEUTICAL INDUSTRY CO." There is no proof that as such representative, the former has been authorized by the latter to sell the trademark in question. Moreover, exh. 5 on its face appears to have been signed only by someone whose position in the company's "Sundries Dept." is not described; the signature is not legible. It is even contradicted by exh. 6. While exh. 5 shows that "OSAKA BOEKI KAISHA, LTD." is a representative of "ASUNARO PHARMACEUTICAL INDUSTRY CO."; exh. 6 asserts that the former is not a representative of the latter, but that it is the owner of the trademark "LIONPAS" (par. 2, exh. 6). At all events, neither averment can be accorded the weight of an assignment of ownership of the trademark in question under the Trade Mark Law. Exh. 5 is not acknowledged. Exh. 6 does not bear the acknowledgment contemplated by the aforesaid law particularly by the last paragraph of section 37 and paragraph 2 of section 31 of R. A. 166, as amended. "The assignment must be in writing, acknowledged before a notary public or other officer authorized to administer oaths or perform other notarial acts and certified under the hand and official seal of the notary or other officer." (Sec. 31, par. 2)In this case, although a sheet of paper is attached to exh. 6, on which is typewritten a certification that the signatures of the presidents of the two named companies (referring to the signatures in exh. 6) "have been duly written by themselves", this sheet is unmarked, unpaged, unsigned, undated and unsealed. We have thumbed the record in quest of any definitive evidence that it is a correct translation of the Japanese characters found on another unmarked and unpaged sheet, and have found none. It is our considered view that the trade mark "SALONPAS" and "LIONPAS" are confusingly similar in sound. Both these words have the same suffix, "PAS", which is used to denote a plaster that adheres to the body with curative power. When the two words are pronounced, the sound effects are confusingly similar. And where goods are advertised over the radio, similarity in sound is of special significance. The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of the help of our eyes and must depend entirely on the ear. In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much alike. Similarity of sound is

sufficient ground for this Court to rule that the two marks are confusingly similar when applied to merchandise of the same descriptive properties. 13. Sta. Ana v Maliwat 14. American Wire v Dir. Of Patents Facts: Petitioner company (AWCC) is a business engaged in the electronics business. The petitioner has long been the registered owner of the trademark DURAFLEX electric wires since 1958, including its logo and representations. Private respondent sought to register the trademark DYNAFLEX with the public respondent and was challenged by the petitioner for being deceptively similar to their product. Director of Patents denied the opposition of AWCC sustaining the application for registration by private respondent. It stated that although the suffix FLEX was similar to both companies, it was not sufficient to establish deceptive similarity between the two products based on its logo and representations in the box. The case was elevated to the Supreme Court for adjudication. Issue W/N the trademark registered by Banahaw is deceptively similar to that of AWCC. Held: Yes, it is quite similar to that of AWCC and may cause confusion to the consuming public. There was a close examination of the packaging and branding of the product, the SC observed that there was a striking similarity between the two products. The Courts stated that the Director of Patents was mistaken for relying solely on the examination of the name DURAFLEX and DYNAFLEX. Etymological comparison was insufficient to determine the similarity between the two products. The Court asserted that of all the possible design within the contemplation of man, Banahaw chose something so close to the design of its competitor. As such, it appears that from the very conceptualization of its trademark and design; the product will likely cause confusion to the consumers to the detriment of the original trademark owner. 15. Acoje Mining v Dir of Patents 16. Victorias Milling v Ong Su Facts: Petitioner, Victorias Milling Company, Inc., owner of the trademark "VICTORIAS" and diamond design registered in the Philippines Patent Office on November 9, 1961 while respondent ONG Su is engaged in the repacking and sale of refined sugar and is the owner of the trademark "VALENTINE" and design registered in the Philippines Patent Office on June 20, 1961. - Victorias Milling Company, Inc. filed with the Philippines Patent Office a petition to cancel the registration of the ONG Su trademark "Valentine alleging that its trademark "Victorias" and diamond design has become distinctive of its sugar long before the respondent used its trademark; Registration of "Valentine" and design has caused and will

cause great damage to petitioner by reason of mistake, confusion, or deception among the purchasers because it is similar to its "Victorias" trademark; Registration was fraudulently obtained by respondent ONG Su; and that "Valentine" falsely suggests a connection with Saint Valentine or with an institution or belief connected therewith. - Director of Patents denied the petition to cancel the certificate of registration of the respondent ONG Su covering the trademark "Valentine" and design since their respective literal designation the trademarks are different. ISSUE W/N the Director of Patents erred in denying the petition to cancel the certificate of registration issued in favor of ONG Su covering the trademark "VALENTINE" and design and used on refined sugar. HELD - The words "Victorias" and "Valentine" are not similar in spelling and do not have a similar sound when pronounced. Even the diamond designs are different. The diamond design of the trademark "Valentine" has protruding lines at the corners. There is no evidence that the respondent ONG Su had obtained the registration of his trademark "Valentine" and design by means of fraud. The said trademark was registered in the Philippines Patent Office before the petitioner registered its trademark. - Decision of the Director of Patents is hereby affirmed. 17. Converse v Universal Rubber Products Facts: Respondent Universal Rubber Products, Inc.[Respondent/Applicant] filed an application with the Philippine Patent office for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and rubber slippers. Converse Rubber Corporation [Petitioner/Opposer] filed its opposition to the application for registration on grounds that the trademark sought to be registered is confusingly similar to the word "CONVERSE" which is part of petitioner's corporate name "CONVERSE RUBBER CORPORATION" to an extent that said products may be mistaken by the unwary public to be manufactured by the petitioner; the registration of respondent's trademark will cause great and irreparable injury to the business reputation and goodwill of petitioner in the Philippines. Trial ensued. Petitioner at the trial, presented a private merchant [Mrs. Pacquing] who testified that she had been selling CONVERSE rubber shoes in the local market since 1956 and that sales of petitioner's rubber shoes in her stores averaged twelve to twenty pairs a month purchased mostly by basketball players of local private educational institutions. That she issued invoices for the rubber shoes were described as "Converse Chuck Taylor", "Converse All Star," "All Star Converse Chuck Taylor," or "Converse Shoes Chuck Taylor." She also affirmed that she had no business connection with the petitioner. The Director of Patents dismissed the opposition of the petitioner and gave due course to respondent's

application. It concluded that the opposer failed to present proof that the single word "CONVERSE' in its corporate name has become so Identified with the corporation that whenever used, it designates to the mind of the public that particular corporation. The proofs herein are sales made by a single witness who had never dealt with the petitioner . . . the entry of Opposer's [petitioner's] goods in the Philippines were not only effected in a very insignificant quantity but without the opposer [petitioner] having a direct or indirect hand in the transaction so as to be made the basis for trademark pre- exemption. It further concluded that the petitioner is not licensed to do business in the country and is actually not doing business on its own in the Philippines, it has no name to protect in the forum and thus, it is futile for it to establish that "CONVERSE" as part of its corporate name identifies its rubber shoes. That a foreign corporation has a right to maintain an action in the forum even if it is not licensed to do business and is not actually doing business on its own therein has been enunciated many times by this Court. Petitioners motion for reconsideration having been denied by the respondent Director of Patents, petitioner instituted the instant petition for review. ISSUE: Whether or not the respondent's partial appropriation of petitioner's corporate name is of such character that it is calculated to deceive or confuse the public to the injury of the petitioner to which the name belongs. WHEREFORE, the decision of the Director of Patents is hereby set aside and a new one entered denying Respondent Universal Rubber Products, Inc.'s application for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" on its rubber shoes and slippers.

or goodwill as regards its products. While Converse Rubber Corporation is not licensed to do business in the country and is not actually doing business here, it does not mean that its goods are not being sold here or that it has not earned a reputation or goodwill as regards its products. CO-PURCHASER MEANING: When the law speaks copurchaser," the reference is to ordinary average purchaser. Does not necessarily pertains to deception of experts, dealers, or other persons specially familiar with the trademark or goods involve." CONVERSE is a dominant word that identifies CONVERSE RUBBER CORPRORATION. The Court basis in such decision that respondent has no right to appropriate the word CONVERSE for use on its products which are similar to those being produced by petitioner: 1. The word "CONVERSE" has grown to be Identified with petitioner's products and acquired second meaning within the context of trademark and tradename laws. The Court used the testimony of petitioner's witness, who is a legitimate trader as well as the invoices evidencing sales of petitioner's products in the Philippines, give credence to petitioner's claim that it has earned a business reputation and goodwill in this country. 2. The most convincing proof of use of a mark in commerce is testimony of such witnesses as customers, or the orders of buyers during a certain period. Petitioner's witness, having affirmed her lack of business connections with petitioner, has testified as such customer, supporting strongly petitioner's move for trademark pre-emption. 3. Sales Invoices best proof of actual sales and actual use of petitioners trademark. Furthermore, said sales invoices provide the best proof that there were actual sales of petitioner's products in the country and that there was actual use for a protracted period of petitioner's trademark or part thereof through these sales. " 4. Actual sale of goods in the local market establishes trademark use which serves as the basis for any action aimed at trademark preexemption. Any sale made by a legitimate trader from his store is a commercial act establishing trademark rights since such sales are made in due course of business to the general public, not only to limited individuals. It is a matter of public knowledge that all brands of goods filter into the market, indiscriminately sold by jobbers dealers and merchants not necessarily with the knowledge or consent of the manufacturer. 5. The use of the word CONVERSE would confuse the purchasers perception on the products origin."The risk of damage is not limited to a possible confusion of goods but also includes confusion of reputation if the public could reasonably assume that the goods of the parties originated from the same source. Even if the

RULING:

HELD: A corporation is entitled to the cancellation of a mark that is confusingly similar to its corporate name." "Appropriation by another of the dominant part of a corporate name is an infringement. When there is no reasonable explanation for the defendant's choice of such a mark though the field for his selection was so broad, the inference is inevitable that it was chosen deliberately to deceive. The deteminative factor in ascertaining whether or not marks are confusingly similar, for the purposes of the law is that the similarity between the two labels is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the new brand for it. Even if not licensed to do business in the country or not doing business here, it does not mean that its goods are not being sold here or that it has not earned a reputation

6.

marks are dissimilar from those of the petitioner, there would be still confusion not on the purchaser's perception of the goods but on the origins thereof. By appropriating the word "CONVERSE," respondent's products are likely to be mistaken as having been produced by petitioner. The trademark of respondent "UNIVERSAL CONVERSE and DEVICE" is imprinted in a circular manner on the side of its rubber shoes. In the same manner, the trademark of petitioner which reads "CONVERSE CHUCK TAYLOR" is imprinted on a circular base attached to the side of its rubber shoes. Even if not an the details just mentioned were identical, with the general appearance alone of the two products, any ordinary, or even perhaps even [sic] a not too perceptive and discriminating customer could be deceived ... " The unexplained use of the dominant word of petitioners corporate name lends itself open to the suspicion of fraudulent motive to trade upon petitioner's reputation. The Court once ruled that There was an ADMISSION of applicant UNIVERSAL CONVERSE AND DEVICE of petitioner's existence since 1946 (found in the STIPULATION OF FACTS) as a duly organized foreign corporation engaged in the manufacture of rubber shoe in its stipulation of fact betrays its knowledge of the reputation and business of petitioner even before it applied for registration of the trademark in question

PETITIONERS STANDING TO SUE: Article 8 of the Convention of the Union of Paris for the Protection of Industrial Property to which the Philippines became a party on September 27, 1965 provides that "a trade name [corporate name] shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of the trademark. This is to accord a national of a member nation extensive protection "against infringement and other types of unfair competition The mandate of the Convention was adopted under in Sec. 37 of RA No. 166 (Trademark Law). Sec. 37. Rights of Foreign Registrants-Persons who are nationals of, domiciled or have a bona fide or effective business or commercial establishment in any foreign country, which is a party to an international convention or treaty relating to marks or tradenames on the repression of unfair competition to which the Philippines may be a party, shall be entitled to the benefits and subject to the provisions of this Act . . . ... Tradenames of persons described in the first paragraph of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks. 18. Faberge v IAC

Facts: In the course of marketing petitioner's "BRUT" products and during the pendency of its application for registration of the trademark "BRUT 33 and DEVICE" for antiperspirant, personal deodorant, cream shave, after shave/shower lotion, hair spray, and hair shampoo ,respondent Co Beng Kay of Webengton Garments Manufacturing applied for registration of the disputed emblem "BRUTE" for briefs. Opposition was raised by petitioner anchored on similarity with its own symbol and irreparable injury to the business reputation of the first user was to no avail. When the legal tussle was elevated to respondent court, Justice Gopengco remarked that a look at the marks "BRUT," "BRUT 33" and "BRUTE" shows that such marks are not only similar in appearance but they are even similar in sound and in the style of presentation; that it is reasonable to believe that this similarity is sufficient to cause confusion and even mistake and deception in the buying public as to the origin for source of the goods bearing such trademarks .Later, respondent's Motion for Reconsideration merited the nod of approval of the appellate court brought about by private respondent's suggestion that the controlling ruling is that laid down in ESSO Standard Eastern, Inc vs Court of Appeals, to the effect that the identical trademark can be used by different manufacturers for products that are non-competing and unrelated. Petitioner asserts that the alleged application for registration of the trademark "BRUT 33, DEVICE" for briefs is an explicit proof that petitioner intended to expand its mark "BRUT" to other goods, and that relief is available where the junior user's goods are not remote from any product that the senior user would be likely to make or sell. On the other hand, private respondent echoes the glaring difference in physical appearance of its products with petitioner's own goods by stressing the observations of the Director of Patents in that the involved trademarks are grossly different in their overall appearance and that even at a distance a would-be purchaser could easily distinguish what is BRUTE brief and what is BRUT after shave lotion, lotion and the like. Moreover, private respondent asserts that briefs and cosmetics do not belong to the same class nor do they have the same descriptive properties such that the use of a trademark on one's goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different nature Issue whether private respondent may appropriate the trademark "BRUTE" for the briefs it manufactures and sells to the public albeit petitioner had previously registered the symbol "BRUT" and "BRUT 33" for its own line of times Held: Yes. It is apropos to shift Our attention to the pertinent provisions of the new Civil Code (Arts. 520, 521, and 522) vis-a-vis Republic Act No. 166 (Secs. 2, 2-A,4, 4(d),11 and 20),as amended, the special law patterned after the United States Trademark Act of 1946. Having thus reviewed the laws applicable to the case, private respondent may be permitted to register the trademark "BRUTE" for briefs

produced by it notwithstanding petitioner's vehement protestations of unfair dealings in marketing its own set of items which are limited to: after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap. In as much as petitioner has not ventured in the production of briefs, an item which is not listed in its certificate of registration, petitioner cannot and should not be allowed to feign that private respondent had invaded petitioner's exclusive domain. To be sure, it is significant that petitioner failed to annex in its Brief the so-called "eloquent proof that petitioner indeed intended to expand its mark "BRUT" to other goods". Even then, a mere application by petitioner in this aspect does not suffice and may not vest an exclusive right in its favor that can ordinarily be protected by the Trademark Law. In short, paraphrasing Section 20 of the Trademark Law as applied to the documentary evidence adduced by petitioner, the certificate of registration issued by the Director of Patent scan confer upon petitioner the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any conditions and limitations stated therein. One who has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by other for products which are of different description. Justice JBL Reyes opined that the Section 4(d) of Republic Act No. 166, as amended, "does not require that the articles of manufacture of the previous user and late user of the mark should possess the same descriptive properties or should fall into the same categories as to bar the latter from registering his mark in the principal register." Yet, it is equally true that as aforesaid, the protective mantle of the Trademark Law extends only to the goods used by the first user as specified in the certificate of registration following the clear message conveyed by section 20. How do We now reconcile the apparent conflict between Section 4(d) which was relied upon by Justice JBL Reyes in the Sta. Ana case and Section 20? It would seem that Section4 (d) does not require that the goods manufactured by the second user be related to the goods produced by the senior user while Section 20 limits the exclusive right of the senior user only to those goods specified in the certificate of registration. But the rule has been laid down that the clause which comes later shall be given paramount significance over an anterior proviso upon the presumption that it expresses the latest and dominant purpose. It ineluctably follows that Section 20 is controlling and, therefore, private respondent can appropriate its symbol for the briefs it manufactures. The glaring discrepancies between the two products had been amply portrayed to such an extent that indeed, "a purchaser who is out in the market for the purpose of buying respondent's BRUTE brief would definitely be not mistaken or misled into buying BRUT after shave lotion or deodorant" as categorically opined in the decision of the Director of Patents relative to the inter-partes case. 19. Asia Brewery v CA 20. Emerald Garment v CA

Facts: 1) HD Lee Co., a foreign corporation, 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. 2) 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. 3) It is undeniably the dominant feature of the mark. 4) The CA affirmed. Issue: Whether the trademark Stylistic Mr. Lee tends to mislead or confuse the public and constitutes an infringement of the trademark Lee. Held: NO, because 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. 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. 21. Canon v CA NSR Rubber Corporation filed an application for registration of the mark CANON for sandals (class 25) in the BPTTT (Bureau of Patents, Trademarks, and Technology Transfer) CANON KABUSHIKI KAISHA, a foreign corporation organized in Japan, filed a Verified Notice of Opposition, alleging that it will be damaged if registration will be approved Canon has used and continues to use the trademark CANON on its wide range of goods worldwide. Allegedly, the corporate name or tradename of Canon is also used as its trademark on diverse goods including footwear and other related products like shoe polisher and polishing agents.

Canon points out that it has branched out in its business based on the various goods carrying its trademark CANON, including footwear which petitioner contends covers sandals. o Evidence Canon Kabushiki presented: certificates of registration for the mark CANON in various countries covering goods belonging to class 2 (paints, chemical products, toner, and dye stuff) Philippine Trademark Registration showing its ownership over the trademark CANON also under class 2 BPTT dismissed Canon Kabushikis opposition o Held that products of the two parties are dissimilar Canon Kabushiki appealed before CA CA affirmed CANONs contention: Canon asserts that it has the exclusive right to the mark CANON because it forms part of its corporate name or tradename, protected by Article 8 of the Paris Convention, to wit: "A tradename shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark." Memorandum of then Minister of Trade and Industry Roberto Ongpin (Ongpin) dated October 25, 1983 which according to petitioner Canon implements Article 6bis of the Paris Convention, the provision referring to the protection of trademarks. The memorandum reads: "a) the mark must be internationally known; b) the subject of the right must be a trademark, not a patent or copyright or anything else; c) the mark must be for use in the same or similar class of goods; d) the person claiming must be the owner of the mark." According to petitioner, it should not be required to prove that its trademark is well-known and that the products are not similar as required by the quoted memorandum. Petitioner emphasizes that the guidelines in the memorandum of Ongpin implement Article 6bis of the Paris Convention, the provision for the protection of trademarks, not tradenames. Petitioner insists that what it seeks is the protection of Article 8 of the Paris Convention, the provision that pertains to the protection of tradenames. Petitioner believes that the appropriate memorandum to consider is that issued by the then Minister of Trade and Industry, Luis Villafuerte, directing the Director of patents to: "reject all pending applications for Philippine registration of signature and other world famous trademarks by applicants other than the original owners or users." As far as petitioner is concerned, the fact that its tradename is at risk would call for the protection granted by Article 8 of the Paris Convention. Petitioner calls attention to the fact that Article 8, even as embodied in par. 6, sec. 37 of RA 166, mentions no requirement of similarity of goods. Petitioner claims that the reason there is no mention of such a requirement, is "because there is a difference between the referent of the name and that of the mark"24 and that "since Art. 8 protects the tradename in the countries of the Union, such as Japan and the

Philippines, Petitioner's tradename should be protected here." Issue: WON the Ongpin Memorandum applies Held: YES The term "trademark" is defined by RA 166, the Trademark Law, as including "any word, name, symbol, emblem, sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them for those manufactured, sold or dealt in by others."26 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."27 Simply put, a trade name refers to the business and its goodwill; a trademark refers to the goods.28 The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, of which both the Philippines and Japan, the country of petitioner, are signatories29, 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.30 We agree with public respondents that the controlling doctrine with respect to the applicability of Article 8 of the Paris Convention is that established in Kabushi Kaisha Isetan vs. Intermediate Appellate Court.31 As pointed out by the BPTTT: "Regarding the applicability of Article 8 of the Paris Convention, this Office believes that there is no automatic protection afforded an entity whose tradename is alleged to have been infringed through the use of that name as a trademark by a local entity. In Kabushiki Kaisha Isetan vs. The Intermediate Appellate Court, et. al., G.R. No. 75420, 15 November 1991, the Honorable Supreme Court held that: 'The Paris Convention for the Protection of Industrial Property does not automatically exclude all countries of the world which have signed it from using a tradename which happens to be used in one country. To illustrate if a taxicab or bus company in a town in the United Kingdom or India happens to use the tradename "Rapid Transportation", it does not necessarily follow that "Rapid" can no longer be registered in Uganda, Fiji, or the Philippines. This office is not unmindful that in the Treaty of Paris for the Protection of Intellectual Property regarding wellknown marks and possible application thereof in this case. Petitioner, as this office sees it, is trying to seek refuge under its protective mantle, claiming that the subject mark is well known in this country at the time the then application of NSR Rubber was filed.

However, the then Minister of Trade and Industry, the Hon. Roberto V. Ongpin, issued a memorandum dated 25 October 1983 to the Director of Patents, a set of guidelines in the implementation of Article 6bis (sic) of the Treaty of Paris. These conditions are: a) the mark must be internationally known; b) the subject of the right must be a trademark, not a patent or copyright or anything else; c) the mark must be for use in the same or similar kinds of goods; and d) the person claiming must be the owner of the mark (The Parties Convention Commentary on the Paris Convention. Article by Dr. Bogsch, Director General of the World Intellectual Property Organization, Geneva, Switzerland, 1985)' From the set of facts found in the records, it is ruled that the Petitioner failed to comply with the third requirement of the said memorandum that is the mark must be for use in the same or similar kinds of goods. The Petitioner is using the mark "CANON" for products belonging to class 2 (paints, chemical products) while the Respondent is using the same mark for sandals (class 25). Hence, Petitioner's contention that its mark is well-known at the time the Respondent filed its application for the same mark should fail. " Other Issues: Issue 1: WON use of trademark by the junior user forestalls the normal expansion of Canons business. Held: NO Petitioner's opposition to the registration of its trademark CANON by private respondent rests upon petitioner's insistence that it would be precluded from using the mark CANON for various kinds of footwear, when in fact it has earlier used said mark for said goods. Stretching this argument, petitioner claims that it is possible that the public could presume that petitioner would also produce a wide variety of footwear considering the diversity of its products marketed worldwide. We do not agree. Even in this instant petition, except for its bare assertions, petitioner failed to attach evidence that would convince this Court that petitioner has also embarked in the production of footwear products. We quote with approval the observation of the Court of Appeals that: "The herein petitioner has not made known that it intends to venture into the business of producing sandals. This is clearly shown in its Trademark Principal Register (Exhibit "U") where the products of the said petitioner had been clearly and specifically described as "Chemical products, dyestuffs, pigments, toner developing preparation, shoe polisher, polishing agent". It would be taxing one's credibility to aver at this point that the production of sandals could be considered as a possible "natural or normal expansion" of its business operation".8 Issue 2: WON the public might be misled into thinking that there is some supposed connection between NSRs goods and CANON Held: NO Petitioner is apprehensive that there could be confusion as to the origin of the goods, as well as confusion of business,

if private respondent is allowed to register the mark CANON. In such a case, petitioner would allegedly be immensely prejudiced if private respondent would be permitted to take "a free ride on, and reap the advantages of, the goodwill and reputation of petitioner Canon. The likelihood of confusion of goods or business is a relative concept, to be determined only according to the particular, and sometimes peculiar, circumstances of each case. In cases of confusion of business or origin, the question that usually arises is whether the respective goods or services of the senior user and the junior user are so related as to likely cause confusion of business or origin, and thereby render the trademark or tradenames confusingly similar. Goods are related when they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality.19 They may also be related because they serve the same purpose or are sold in grocery stores. Undoubtedly, the paints, chemical products, toner and dyestuff of petitioner that carry the trademark CANON are unrelated to sandals, the product of private respondent. We agree with the BPTTT, following the Esso doctrine, when it noted that the two classes of products in this case flow through different trade channels. The products of petitioner are sold through special chemical stores or distributors while the products of private respondent are sold in grocery stores, sari-sari stores and department stores.23 Thus, the evident disparity of the products of the parties in the case at bar renders unfounded the apprehension of petitioner that confusion of business or origin might occur if private respondent is allowed to use the mark CANON. 22. Amigo v Cluett Facts: The source of the controversy that precipitated the filling by Cluette Peabody Co., Inc. of the present case against Amigo Manufacturing Inc. for cancellation of trademark is respondents claim of exclusive ownership of the trademark and devices used on mens socks. The two companies had trademarks with confusing similarities in appearance. The petitioners mark is only registered with Supplemental Registry while the respondents mark is a registered mark.Petitioner claimed that it started the actual use of the trademark Gold Top and Device in September 1956, while respondent began using the trademark Gold Toe only on May 15, 1962. Issue: Whether or not Amigo Manufacturing has the exclusive right to use of the trademark. Ruling: The Supreme Court ruled in favor of Cluett Peabody Co. Based on the evidence presented, this Court concurs in the findings of the Bureau of Patents that respondent had

actually used the trademark and the devices in question prior to petitioners use of its own. During the hearing at the Bureau of Patents, respondent presented Bureau registrations indicating the dates of first use in the Philippines of the trademark and the devices as follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the Representation of a Sock and a Magnifying Glass; c) January 30, 1932, the Gold Toe Representation; and d) February 28, 1952, Linenized. The registration of the above marks in favor of respondent constitutes prima facie evidence, which petitioner failed to overturn satisfactorily, of respondents ownership of those marks, the dates of appropriation and the validity of other pertinent facts stated therein. Indeed, Section 20 of Republic Act 166 provides as follows: Sec. 20.Certificate of registration prima facie evidence of validity. - A certificate of registration of a mark or tradename shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark or trade-name, and of the registrant's exclusive right to use the same in connection with the goods, business or services specified in the certificate, subject to any conditions and limitations stated therein. Section 5-A of Republic Act No. 166 states that an applicant for a trademark or trade name shall, among others, state the date of first use. The fact that the marks were indeed registered by respondent shows that it did use them on the date indicated in the Certificate of Registration. Furthermore, petitioner registered its trademark only with the supplemental register. In La Chemise Lacoste v. Fernandez, the Court held that registration with the supplemental register gives no presumption of ownership of the trademark. Petitioner claims that the Court of Appeals erred in applying the Paris Convention. Although respondent registered its trademark ahead, petitioner argues that the actual use of the said mark is necessary in order to be entitled to the protection of the rights acquired through registration. As already discussed, respondent registered its trademarks under the principal register, which means that the requirement of prior use had already been fulfilled. To emphasize, Section 5-A of Republic Act 166 requires the date of first use to be specified in the application for registration. Since the trademark was successfully registered, there exists a prima facie presumption of the correctness of the contents thereof, including the date of first use. Petitioner has failed to rebut this presumption. Thus, applicable is the Union Convention for the Protection of Industrial Property adopted in Paris on March 20, 1883, otherwise known as the Paris Convention, of which the Philippines and the United States are members. Respondent is domiciled in the United States and is the registered owner of the Gold Toe trademark. Hence, it is entitled to the protection of the Convention. A foreignbased trademark owner, whose country of domicile is a

party to an international convention relating to protection of trademarks is accorded protection against infringement or any unfair competition as provided in Section 37 of Republic Act 166, the Trademark Law which was the law in force at the time this case was instituted. 23. 246 Co, v Daway Facts: Respondents Montres Rolex and Rolex Centre Phil., Limited owned the ROLEX trademark, which was used for watches. Petitioner used the same trademark for a music lounge, called 'ROLEX MUSIC LOUNGE'. Upon learning of said lounge, respondents filed a complaint for trademark infringement and damages against petitioner, with a prayer for the issuance of a TRO/Writ of Preliminary Injunction. Petitioner, in its Answer, raised the following affirmative defenses. First, it argued that no infringement had occurred for no confusion would arise from the use of the ROLEX trademark. Petitioner pointed out that its business (a music lounge) differed from the goods on which the respondents used the mark, which were watches. It was averred that, for this reason, no confusing similarity could arise, and by corollary, no infringement had taken place. Secondly, petitioner argued that the complaint should be dismissed for lack of verification and certification against forum-shopping. Petitioner pointed out that Atty. Ancheta, counsel for respondents, verified and signed the complaint. But this was despite Atty. Ancheta having allegedly been unauthorized to represent the respondents. On 21 July 2000, petitioner filed a motion for preliminary hearing on its affirmative defenses. On petitioner's motion, the trial court issued a subpoena ad testificandum requiring a certain Atty. Ancheta to appear in said preliminary hearing. However, acting upon respondents' Comment and Opposition, the trial court subsequently quashed the subpoena and denied petitioner's motion for preliminary hearing. Aggrieved, the petitioner filed a Petition for Certiorari before the CA. It was denied, as was the subsequent Motion for Reconsideration. Hence, petitioner filed a Petition for Review on Certiorari before the Supreme Court. ISSUE: 1) W/N the trial court correctly denied petitioner's motion for preliminary hearing 2) W/N the trial court correctly quashed petitioner's subpoena ad testificandum DECISION: YES RATIO: 1) 123.1, (f) of the Intellectual Property Code treats of infringement where the registered trademark is used on goods or services different from those of the registrant. The determination of whether the same is extant is a question of fact requiring a full-brown trial, and not a mere preliminary hearing. Hence, the trial court was correct in denying the motion for preliminary hearing, for a preliminary hearing is improper for the affirmative

defense raised, i.e. that no infringement had been made by petitioner. 2) The trial court is likewise correct in quashing petitioner's subpoena ad testificandum. As stated, the court correctly denied petitioner's motion for preliminary hearing. Since there is no longer a preliminary hearing in which Atty. Ancheta is to testify, the subpoena is thus of no moment. 24. McDo v Big Mak Facts: McDonald's Corporation ("McDonald's") is a corporation organized under the laws of Delaware, United States. McDonald's owns a family of marks including the "Big Mac" mark for its "double-decker hamburger sandwich." McDonald's registered this trademark with the United States Trademark Registry as well as in the Philippine Bureau of Patents, Trademarks and Technology ("PBPTT"), now the Intellectual Property Office ("IPO"). Pending approval of its application, McDonald's introduced its "Big Mac" hamburger sandwiches in the Philippine market in September 1981. On 18 July 1985, the PBPTT allowed registration of the "Big Mac" mark in the Principal Register based on its Home Registration in the United States. Like its other marks, McDonald's displays the "Big Mac" mark in items and paraphernalia in its restaurants, and in its outdoor and indoor signages. From 1982 to 1990, McDonald's spent P10.5 million in advertisement for "Big Mac" hamburger sandwiches alone. Petitioner McGeorge Food Industries ("petitioner McGeorge"), a domestic corporation, is McDonald's Philippine franchisee. Respondent L.C. Big Mak Burger, Inc. ("respondent corporation") is a domestic corporation which operates fast-food outlets and snack vans in Metro Manila and nearby provinces. Respondent corporation's menu includes hamburger sandwiches and other food items. Respondents Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo, Araceli Aycardo, and Grace Huerto ("private respondents") are the incorporators, stockholders and directors of respondent corporation. On 21 October 1988, respondent corporation applied with the PBPTT for the registration of the "Big Mak" mark for its hamburger sandwiches. McDonald's opposed respondent corporation's application on the ground that "Big Mak" was a colorable imitation of its registered "Big Mac" mark for the same food products. McDonald's also informed respondent Francis Dy ("respondent Dy"), the chairman of the Board of Directors of respondent corporation, of its exclusive right to the "Big Mac" mark and requested him to desist from using the "Big Mac" mark or any similar mark.

Having received no reply from respondent Dy, petitioners on 6 June 1990 sued respondents in the Regional Trial Court of Makati, Branch 137 ("RTC"), for trademark infringement and unfair competition. RTC dismissed the complaint. CA reversed and sentenced petitioner to pay damages to respondent. Hence this instant appeal. ISSUE: whether respondent corporation is liable for trademark infringement and unfair competition. HELD: Section 22 ("Section 22) of Republic Act No. 166, as amended ("RA 166"), the law applicable to this case, defines trademark infringement as follows: Infringement, what constitutes. Any person who [1] shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-name in connection with the sale, offering for sale, or advertising of any goods, business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or identity of such business; or [2] reproduce, counterfeit, copy, or colorably imitate any such mark or trade-name and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services, shall be liable to a civil action by the registrant for any or all of the remedies herein provided. A mark is valid if it is "distinctive" and thus not barred from registration under Section 4 of RA 166 ("Section 4"). However, once registered, not only the mark's validity but also the registrant's ownership of the mark is prima facie presumed. The "Big Mac" mark, which should be treated in its entirety and not 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. Significantly, the trademark "Little Debbie" for snack cakes was found arbitrary or fanciful. The Court also finds that petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark.

Although Topacio and the Isaiyas Group registered the "Big Mac" mark ahead of McDonald's, Topacio, as petitioners disclosed, had already assigned his rights to McDonald's. The Isaiyas Group, on the other hand, registered its trademark only in the Supplemental Register. A mark which is not registered in the Principal Register, and thus not distinctive, has no real protection. Indeed, we have held that registration in the Supplemental Register is not even a prima facie evidence of the validity of the registrant's exclusive right to use the mark on the goods specified in the certificate. In determining likelihood of confusion, jurisprudence has developed two tests, the dominancy test and the holistic test. The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion. In contrast, the holistic test requires the court to consider the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. This Court, however, has relied on the dominancy test rather than the holistic test. 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 product 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. 25. Mcdo v Macjoy Macjoy Food Corporation, engaged in the sale of fast food products in Cebu City, filed with the then Bureau of Patents, Trademarks and Technology Transfer (BPTT), now the IPO, an application for the registration of the trademark MACJOY & DEVICE for food under classes 29 and 30. Mcdonalds Corporation filed a verified Notice of Opposition against the application claiming that the trademark MACJOY & DEVICE so resembles its corporate logo, otherwise known as the Golden Archers or the M design and its marks McDonalds McChicken, MacFries, BigMac, McDo, McSpaghetti, McSnack and MC. McDonalds claimed that the trademark applied for would confuseor deceive purchasers into believing that the goods originate from the same source or origin. Moreover, they claimed that the MACJOY &DEVICE would falsely tend to suggest a

connection or affliation with McDonalds restaurant services and food products. Respondent Macjoy denied the allegations and averred that it has used the mark MACJOY & DEVICE for the past many years in good faith and has spent considerable sums of money for its promotion. They further averred that the use of said mark would not confuse affiliation with the petitioners restaurant services and food products because of the differences in the design and detail of the two marks. IPO sustained the opposition and rejecting the application ruling that there is confusing similarity between them especially since both are used on almost the same products falling under classes 29 and 30. The Court of Appeals reversed the decision of the IPO. The CA found no confusing similarity between the marks MACJOY & DEVICE and MCDONALDS. The CA laid down several differences: font used; logo; color scheme and the faade of different stores. Petitioner filed MR denied. Petitioner filed with the SC. ISSUE: WHETHER MACJOY & DEVICE MARKS IS CONFUSINGLY SIMILAR WITH MCDONALDS. HELD: Yes. In determining similarity and likelihood of confusion, jurisprudence has developed two tests, the dominancy test and the holistic test. The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. In contrast, the holistic test requires the court to consider the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. Under the latter test, a comparison of the words is not the only determinant factor. Here, the IPO used the dominancy test in concluding that there was confusing similarity between the two (2) trademarks in question as it took note of the appearance of the predominant features "M", "Mc" and/or "Mac" in both the marks. In reversing the conclusion reached by the IPO, the CA, while seemingly applying the dominancy test, in fact actually applied the holistic test. While we agree with the CAs detailed enumeration of differences between the two (2) competing trademarks herein involved, we believe that the holistic test is not the one applicable in this case, the dominancy test being the one more suitable.

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 product 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. Applying the dominancy test to the instant case, the Court finds that herein petitioners "MCDONALDS" and respondents "MACJOY" marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks. To begin with, both marks use the corporate "M" design logo and the prefixes "Mc" and/or "Mac" as dominant features. The first letter "M" in both marks puts emphasis on the prefixes "Mc" and/or "Mac" by the similar way in which they are depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is the prefix "Mc," an abbreviation of "Mac," which visually and aurally catches the attention of the consuming public. Verily, the word "MACJOY" attracts attention the same way as did "McDonalds," "MacFries," "McSpaghetti," "McDo," "Big Mac" and the rest of the MCDONALDS marks which all use the prefixes Mc and/or Mac. Besides and most importantly, both trademarks are used in the sale of fastfood products. Indisputably, the respondents trademark application for the "MACJOY & DEVICE" trademark covers goods under Classes 29 and 30 of the International Classification of Goods, namely, fried chicken, chicken barbeque, burgers, fries, spaghetti, etc. Likewise, the petitioners trademark registration for the MCDONALDS marks in the Philippines cov ers goods which are similar if not identical to those covered by the respondents application. WHO HAS THE RIGHTFUL CLAIM OF OWNERSHIP OVER THE MARK? A mark is valid if it is distinctive and hence not barred from registration under the Trademark Law. However, once registered, not only the marks validity but also the registrants ownership thereof is prima facie presumed. Pursuant to Section 37 of R.A. No. 166, as amended, as well as the provision regarding the protection of industrial property of foreign nationals in this country as embodied in the Paris Convention under which the Philippines and the petitioners domicile, the United States, are adherentmembers, the petitioner was able to register its MCDONALDS marks successively, i.e., "McDonalds" in 04 October, 1971; the corporate logo which is the "M" or the golden arches design and the "McDonalds" with the "M" or

golden arches design both in 30 June 1977 ; and so on and so forth. On the other hand, it is not disputed that the respondents application for registration of its trademark "MACJOY & DEVICE" was filed only on March 14, 1991 albeit the date of first use in the Philippines was December 7, 1987. Respondents contention that it was the first user of the mark in the Philippines having used "MACJOY & DEVICE" on its restaurant business and food products since December, 1987 at Cebu City while the first McDonalds outlet of the petitioner thereat was opened only in 1992, is downright unmeritorious. For the requirement of "actual use in commerce x x x in the Philippines" before one may register a trademark, trade-name and service mark under the Trademark Law pertains to the territorial jurisdiction of the Philippines and is not only confined to a certain region, province, city or barangay. 26. Shang Rila v Developers Gropu company 27. Tanduay v Ginebra 28. Dermaline v Myra 29. Ong ai Gui v Director of Patent Facts: Ong Ai Gui filed an application with the Director of Patents for the registration of the following trade-name: "20th Century Nylon Shirts Factory." The application was referred by the Director to an examiner. The latter in a report held that the words "shirts factory" are not registrable; so the applicant made a disclaimer of said words (shirts factory) inserting a statement to that effect in his original application. The Director ordered the publication of the trade-name in the official Gazette. Publication was made but before the expiration of the period for filing opposition, Atty. J. A. Wolfson, on behalf of E. I. De Pont de Nemours and Company, presented an opposition on the ground that the word "nylon" was a name coined by E. I. Du Pont de Nemours and Company as the generic name of a synthetic fabric material, invented, patented, manufactured and sold by it and that this word is a generic term. This opposition, was dismissed by the Director on the ground that at the time it was submitted Atty. J. A. Wolfson did not have authority to file it (opposition) in the corporate name. But while he dismissed the opposition, the Director ruled that the application must be disapproved unless the word "nylon" is also disclaimed. The ground for disapproval was because"Nylon" is merely descriptive of the business of shirt-making if the shirts are made of nylon. It is deceptively misdescriptive of said business, if the shirts are not made of nylon. Issues: 1. Can nylon be registered?; 2. Did the Director of patents comply with the rules on procedure under RA 166.

Ruling: As to the first issue, while applicant admits that the term "nylon" is by itself alone descriptive and generic, what he desires to register is not the said word alone but the whole combination of "20th Century Nylon Shirts Factory." It is to be noted that the Director of Patents has not completely denied the registration of the whole tradename. He has made a conditional denial only, permitting the registration of the name but with the disclaimer of the terms "shirt factory" and "nylon." The import of the decision is that the trade-name may be registered, but applicant-appellant may not be entitled to the exclusive use of the terms "shirts factory" and "nylon" as against any other who may subsequently use the said terms, juris publici, incapable of appropriation by any single individual to the exclusion of others. The procedural question arises from the fact that after the Director had ordered publication and notwithstanding dismissal of an opposition, the Director nevertheless conditionally denied the application after its publication and failed to give applicant opportunity for a hearing, as specifically required by section 7 of Republic Act No. 166. It is argued that after approval of the findings of the commissioner to whom the application id referred and giving of the order of publication, it becomes the ministerial duty of the Director to issue the corresponding certificate of registration and that his power is confined to this issuance alone. However, applicant fails to consider that the law allows oppositions to be filed after publication. First, the application is referred to an examiner, who, after study and investigation makes a report and recommendation to the Director who, upon finding that applicant is entitled to registration, orders publication of the publication. If he finds that applicant is not entitled to registration, he may then and there dismiss the application. In the second, opportunity is offered the public or any interested party to come in and object to the petition, giving proofs and reasons for the objection, applicant being given opportunity also to submit proofs or arguments in support of the application. It is the decision of the Director, given after this hearing, or opportunity to every interested party to be heard, that finally terminates the proceedings and in which the registration is finally approved or disapproved. Thereafter, notice of the issuance of the certificate of registration is published. It is evident that the decision of the Director after the first step, ordering publication, can not have any finality. His first decision is merely provisional, in the sense that the application appears to be meritorious and is entitled to be given course leading to the more formal and important second step of hearing and trial, where the public and interested parties are allowed to take part.