Smith Kline Beckman Corporation vs. The Hon. Court of Appeals, et al.

G.R. No. 126627, 14 August 2003

Facts:
Petitioner Smith Kline Beckman is an American corporation licensed to do business in the
Philippines. In 1976 it filed with the Philippine Patent Office a patent application over methyl 5
propylthio-2-benzimidazole carbamate, a chemical compound that fought infections caused by
gastrointestinal parasites in farm and pet animals. In 1981 the PPO issued Letters Patent No. 14561
for the said invention for a term of 17 years.
Private respondent Tryco Pharma is a domestic corporation that dealt in veterinary products.
It manufactured and sold Impregon, a drug which fought gastrointestinal parasites in farm animals,
and which contained the compound Albendazole as active ingredient.
Claiming that Letters Patent No. 14561 covered the substance Albendazole, Smith Kline filed
before the Caloocan City Regional Trial Court a complaint against Tyco Pharma for patent
infringement, and for unfair competition under Article 189 of the Revised Penal Code and Section 29
of the Trademark Law.
In its Decision the RTC dismissed Smith Klines complaint, and ordered the cancellation of
Letters Patent No. 14561 for being null and void. Smith Kline appealed to the Court of Appeals.
The CA affirmed that Tyco Pharma was not liable for patent infringement, but reversed the
RTCs finding that Letters Patent No. 14561 was void. Smith Kline filed a petition for review with the
Supreme Court.
Issue: Whether Tyco Pharma committed patent infringement to the prejudice of Smith Kline.
Held: No, Tyco Pharma did not
1.

The claims of Letters Patent No. 14561 do not mention the compound Albendazole. All that the
claims disclose are: the covered invention, i.e., the compound methyl 5 propylthio-2benzimidazole carbamate; the compounds ability to destroy parasites without harming the host
animals; and the patented methods, compositions or preparations involving the compound to
maximize its efficacy against certain kinds of parasites infecting specified animals.
When the language of its claims is clear and distinct, the patentee is bound thereby and may
not claim anything beyond them. The courts are similarly bound: they may not add to or detract
from the claims matters not expressed or necessarily implied, nor may they enlarge the patent
beyond the scope of that which the inventor claimed and the patent office allowed, even if the
patentee may have been entitled to something more than the words it had chosen would
include.
The mere absence of the word Albendazole in the patent is not determinative of Albendazoles
non-inclusion in its claims. While Albendazole is admittedly a chemical compound that exists by
a name different from that covered in the patent, the language of the patent fails to yield
anything at all regarding Albendazole. No extrinsic evidence had been adduced to prove that
Albendazole inheres in Smith Kleins patent in spite of its omission therefrom, or that the
meaning of the claims of the patent embraces Albendazole.

2.

Smith Klein has not met the requirements for the application of the doctrine of equivalents.
The doctrine of equivalents provides that an infringement also takes place when a device appropriates a
prior invention by incorporating its innovative concept and, although with some modification and change,
performs substantially the same function in substantially the same way to achieve substantially the same
result. The doctrine thus requires satisfaction of the function-means-and-result test, the patentee having
the burden to show that all three components of such equivalency test are met.
While both compounds have the effect of neutralizing parasites in animals, identity of result does not
amount to infringement of patent unless Albendazole operates in substantially the same way or by
substantially the same means as the patented compound, even though it performs the same function and
achieves the same result. In other words, the principle or mode of operation must be the same or
substantially the same.
Apart from the fact that Albendazole is an anthelmintic agent like methyl 5 propylthio-2-benzimidazole
carbamate, nothing more is asserted and accordingly substantiated regarding the method or means by
which Albendazole weeds out parasites in animals, thus giving no information on whether that method is
substantially the same as the manner by which Smith Kleins compound works.

Shangri-La International Hotel Management Ltd., vs The Court of Appeals

GR No. 111580 June 21, 2001
Facts:

On June 21, 1988, the Shangri-La International Hotel Management, Ltd., Shangri-La
Properties, Inc., Makati Shangri-La Hotel and Resort, Inc. and Kuok Philippine Properties, Inc., filed
with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) a petition praying for the
cancellation of the registration of the Shangri-La mark and S device/logo issued to the Developers
Group of Companies Inc., on the ground that the same was illegally and fraudulently obtained and
appropriated for the latters restaurant business. The Shangri-La Group alleged that it is the legal
and beneficial owners of the subject mark and logo; that it has been using the said mark and logo
for its corporate affairs and business since March 1962 and caused the same to be specially
designed for their international hotels in 1975, much earlier than the alleged first use by the
Developers Group in 1982.
Likewise, the Shangri-La Group filed with the BPTTT its own application for registration of the
subject mark and logo. The Developers Group filed an opposition to the application.
Almost three (3) years later, the Developers Group instituted with the RTC a complaint for
infringement and damages with prayer for injunction. When the Shangri-La Group moved for the
suspension of the proceedings, the trial court denied such in a Resolution. \
The Shangri-La Group filed a petition for certiorari before the CA but the CA dismissed the
petition for certiorari. Hence, the instant petition.
Issue: Whether or not the infringement case should be dismissed or at least suspended
Held:
There can be no denying that the infringement case is validly pass upon the right of
registration. Section 161 of Republic Act No. 8293 provides to wit:
SEC. 161. Authority to Determine Right to Registration In any action involving a
registered mark the court may determine the right to registration, order the
cancellation of the registration, in whole or in part, and otherwise rectify the register
with respect to the registration of any party to the action in the exercise of this.
Judgement and orders shall be certified by the court to the Director, who shall make appropriate
entry upon the records of the Bureau, and shall be controlled thereby. (Sec. 25, R.A. No. 166a).
(Emphasis provided)
To provide a judicious resolution of the issues at hand, the Court find it apropos to order the
suspension of the proceedings before the Bureau pending final determination of the infringement
case, where the issue of the validity of the registration of the subject trademark and logo in the
name of Developers Group was passed upon.

Fruit of the Loom v CA 133 SCRA 405

Facts:
Petitioner is a corporation duly organized and existing under the laws of the State of Rhode
Island, USA. It is the registrant of the trademark Fruit of the Loom in the Philippine Patent Office
and was issued two Certificates of Registration, one of which was in 1957 and the other in 1958.
Private respondent, a domestic corporation, is the registrant of the trademark Fruit for Eve in
the Philippine Patent Office. Both are involved in the merchandise of garments.
Petitioner filed a complaint for infringement of trademark and unfair competition against
private respondent, alleging that:

The latters trademark is confusingly similar to the formers, both trademarks being used in
womens panties and other textile products
That the hang tags used by private respondent is a colorable imitation of those of the
petitioner

Petitioner respondent alleged that there was no confusing similarity between the trademarks. At
the pre-trial, the following admissions were made:

That the registered trademark Fruit for Eve bears the notice Reg. Phil. Pat. Off. While that
of Fruit of the Loom does not
That at the time of its registration, the plaintiff filed no opposition thereto.

The lower court rendered a decision in favor of the petitioner, permanently enjoining private
respondent from using the trademark Fruit for Eve.
Both parties appealed to the Court of Appeals wherein the petitioner questioned the lower
courts failure to award damages in its favor and private respondent sought the reversal of the
lower courts decision.
The Court of Appeals rendered a decision reversing the lower courts decision and dismissing
the petitioners complaint. The petitioners motion for reconsideration was denied.
Issue: Whether or not there was infringement of trademark
Held:

In cases involving infringement of trademark brought before this Court, it has been
consistently held that there is infringement of trademark when the use of the mark involved would
be likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the
origin or source of the commodity. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels in order that he may
draw his conclusion where one is confusingly similar to the other.
The similarities of the competing trademarks in this case are completely lost in the
substantial differences in the design and general appearance of their respective hangs tags. We
have examined the two trademarks as they appear in the hang tags submitted by the parties and
we are impressed more by the dissimilarities than by the similarities appearing therein. We hold
that the trademarks Fruit of the Loom and Fruit for Eve do not resemble each other as to confuse or
deceive an ordinary purchaser. The ordinary purchaser must be thought of as having, and credited
with, at least a modicum of intelligence to be able to see the obvious differences between the two
trademarks in question.

FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC vs.

FRANKLIN DRILON, GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE MEDINA, JR., and CASEY
FRANCISCO
GR No. 108946, January 28, 1999
Facts:
Petitioner BJ Productions Inc is the holder/grantee of Certificate of Copyright No. M922 of
Rhoda and Me, a dating game show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its
certificate of copyright specifying the shows format and style of presentation. On July 14, 1991
while watching television, petitioner saw on RPN Channel 9 an episode of Its a Date, which was
produced by IXL Productions Inc. On July 18, 1991, he wrote a letter to private respondent Gabriel
M. Zosa, president and general manager of IXL, informing Zosa that BJPI had a copyright to Rhoda
and Me and demanding that IXL discontinue airing Its a Date.
Private respondent apologized to petitioner and requested a meeting to discuss a possible
settlement. IXL, however, continued airing Its a Date, prompting petitioner Joaquin to send a
second letter in which he reiterated his demand and warned that if IXL did not comply, he would
endorse the matter to his attorneys for proper legal action.
Meanwhile, private respondent sought to register IXLs copyright to the first episode of Its a
Date for which it was issued by the National Library a certificate of copyright on August 14, 1991.
Upon complaint of petitioners, an information for violation of PD No. 49 was filed against
private respondent Zosa together with certain officers of RPN Channel 9. However, private
respondent Zosa sought a review of the resolution of the Assistant City Prosecutor before the
Department of Justice.
On August 12, 1992, respondent Secretary of Justice Franklin Drilon reversed the Assistant
City Prosecutors findings and directed him to move for the dismissal of the case against private
respondents. Petitioner filed a motion for reconsideration but his motion was denied by respondent
Secretary of Justice. Hence, this petition.
Issue: Whether or not public respondent committed grave abuse of discretion when he invoked
non-presentation of the master tape as being fatal to the existence of probable cause to prove
infringement, despite the fact that private respondents never raised the same as controverted
issue; and whether or not public respondent committed grave abuse of discretion when he
arrogated unto himself the determination of what is copyrightable.
Held:

The petition is denied. In fine, the supposed pronunciamento in said case regarding the
necessity for the presentation of the master tapes of the copyrighted films for the validity of search
warrants should at most be understood to merely serve as a guidepost in determining the existence
of probable cause in copyright infringement cases where there is doubt as to the true nexus
between the master tape and the pirated copies. An objective and careful reading of the decision
in said case could lead to no other conclusion than that said directive was hardly intended to be a
sweeping and inflexible requirement in all or similar copyright infringement cases.
Copyright in the strict sense of the term is purely a statutory right. It is a new or
independent right granted by the statute and not simply a pre-existing right regulated by the
statute. Since copyright in published work is purely a statutory creation, a copyright may be
obtained only for a work falling within the statutory enumeration or description. P.D. No. 49, section
2, in enumerating what are subject to copyright, refers to finished works and not to concepts. The
copyright does not extend to an idea, procedure, process, system, method of operation, concept,
principle or discovery regardless of the form in which it is described, explained, illustrated, or
embodied in such work.

La Chemise Lacoste SA vs Hon. Oscar Fernandez

GR No. L-63796
Facts:

The petitioner is a foreign corporation, organized and existing under the laws of France and
not doing business in the Philippines, It is undeniable from the records that it is the actual owner of
the trademarks used on clothings and other goods specifically sporting apparels sold in many parts
of the world and which have been marketed in the Philippines since 1964. The main basis of the
private respondents case is its claim of alleged prior registration.
Petitioner filed its application for registration of the trademark Crocodile Device and
Lacoste. The former was approved for publication while the latter was opposed by Games and
Garments in Inter Partes Case No. 1658. Petitioner filed a petition for the Cancellation of
registration.
On March 21, 1983, the petitioner filed with the National Bureau of Investigation (NBI) a
letter-complaint alleging the acts of unfair competition being committed by Hemandas and
requesting their assistance in his apprehension and prosecution. The NBI conducted an
investigation and subsequently filed with the respondent court two applications for the issuance of
search warrants which would authorize the search of the premises used and occupied by the
Lacoste Sports Center and Games and Garments both owned and operated by Hemandas.
The respondent court issued search warrant for violation of Article 189 of the Revised Penal
Code. The NBI agents executed the two search warrants and as a result of the search found and
seized various goods and articles described in the warrants. Hemandas filed a motion to quash the
search warrants alleging that the trademark used by him was different from petitioners trademark
and that pending resolution before the Patent Office, any criminal or civil action on the same
subject matter and between the same parties would be premature.
The petitioner filed its opposition to the motion arguing that the motion to quash was fatally
defective as it cited no valid ground for the quashal of the search warrants and that the grounds
alleged in the motion were absolutely without merit. The State Prosecutor likewise filed his
opposition on the grounds that the goods seized were instrument of a crime and necessary for the
resolution of the case on preliminary investigation and that the release of the said goods would be
fatal to the case of the People should prosecution follow in court.
The respondent court was, however, convinced that there was no probable cause to justify
the issuance of the search warrants. Thus, in its order, the search warrants were recalled and set
aside and the NBI agents or officers in custody of the seized items were ordered to return the same
to Hemandas.
Issue: Whether or not the judge committed grave abuse of discretion amounting to lack of
jurisdiction in finding that the issuance of the search warrants is premature in the face of the fact
that Lacostes registration of the subject trademark is still pending with the Patent Office with
opposition from Hemandas and the subject trademarks had been earlier registered by Hemandas in
his name in the Supplemental Register of the Philippine Patent Office.
Held:
In complying with the order to decide without delay the cases specified in the memorandum, the
Director of Patents shall limit himself to the ascertainment of facts in issues not resolved by this decision
and apply the law as expounded by this Court to those facts.
One final point, it is essential that we stress our concern at the seeming inability of law
enforcement officials to stem the tide of fake and counterfeit consumer items flooding the Philippine
market or exported abroad from our country. The greater victim is not so much the manufacturer whose
product is being faked but the Filipino consuming public and in the case of exportations, our image
abroad. No less than the President, in issuing Executive Order No. 913 dated October 7, 1983 to
strengthen the powers of the Minister of Trade and Industry for the protection of consumers, stated that,
among other acts, the dumping of substandard, imitated, hazardous, and cheap goods, the infringement
of internationally known tradenames and trademarks, and the unfair trade practices of business firms
has reached such proportions as to constitute economic sabotage. We buy a kitchen appliance, a
household tool, perfume, face powder, other toilet articles, watches, brandy or whisky, and items of
clothing like jeans, T-shirts, neck, ties, etc. the list is quite length and pay good money relying on
the brand name as guarantee of its quality and genuine nature only to explode in bitter frustration and
genuine nature on helpless anger because the purchased item turns out to be a shoddy imitation, albeit
a clever looking counterfeit, of the quality product. Judges all over the country are well advised to
remember that court processes should not be used as instruments to, unwittingly or otherwise, aid
counterfeiters and intellectual pirates, tie the hands of the law as it seeks to protect the Filipino
consuming public and frustrate executive and administrative implementation of solemn commitments
pursuant to international conventions and treaties.

Pearl & Dean (Phil.), Incorporated v Shoemart Incorporated

GR No. 148222 August 15, 2003
Facts:

Pearl & Dean (P&D) is engaged in the manufacture of advertising display units referred to as
light boxes. These units utilize specially printed posters sandwiched between plastic sheets and
illuminated with backlights. It was able to secure registration over these illuminated display units.
The advertising light boxes were marketed under the trademark Poster Ads.
In 1985, P&D negotiated with defendant Shoemart, Inc. (SMI) for the lease and installation of
the light boxes in SM North Edsa. However, since SM North Edsa was under construction, SMI
offered as alternative SM Makati and Cubao. During the signing of the Contract, SMI only returned
the Contract with SM Makati. Manager of petitioner reminded SMI that their agreement includes SM
Cubao. However, SMI did not bother to reply. Instead, respondent informed petitioner that they are
rescinding the contract for SM Makati due to non-performance.
Two years later, SMI engaged the services of EYD Rainbow Advertising to make the light
boxes. These were delivered in a staggered basis and installed at SM Megamall and SM City. In
1989, petitioner received reports that exact copy of its light boxes was installed by SMI. It further
discovered that North Edsa Marketing Inc. (NEMI), sister company of SMI, was set up primarily to
sell advertising space in lighted display units located in SMIs different branches. Petitioner sent
letters to respondents asking them to cease using the light boxes and the discontinued use of the
trademark Poster Ads.
Claiming that SMI and NEMI failed to meet its demand, petitioner filed a case for
infringement of trademark and copy right, unfair competition and damages. SMI maintained that it
independently developed its poster panels using commonly known techniques and available
technology without notice of or reference to P&Ds copyright. In addition, it said that registration of
Poster Ads obtained by petitioner was only for stationeries such as letterheads, envelopes and the
like. Poster Ads is a generic term which cannot be appropriated as trademark, and, as such,
registration of such mark is invalid. It also stressed that P&D is not entitled to the reliefs sought
because the advertising display units contained no copyright notice as provided for by law.
RTC found SMI and NEMI jointly and severally liable for infringement of copyright and
trademark. CA reversed saying that it agreed with SMI that what was copyrighted was the technical
drawings only and not the light boxes. Light boxes cannot be considered as either prints, pictorial
illustrations, advertising copies, labels, tags or box wraps, to be properly classified as copyrightable
class O work. In addition, CA stressed that the protective mantle of the Trademark Law extends
only to the goods used by the first user as specified in its certificate of registration. The registration
of the trademark Poster Ads covers only stationeries such as letterheads, envelopes and calling
cards and newsletter.
Issues:
1. If the engineering or technical drawings of an advertising display unit are granted copyright
protection is the light box depicted in such drawings ipso facto also protected by such
copyright?
2. Should the light box be registered separately?
3. Can the owner of the registered trademark legally prevent others from using such mark if it
is mere abbreviation of a term descriptive of his goods, services or business?
Held:
1. No. Copyright is purely statutory. As such, the rights are limited to what the statute confers.
It may be obtained and enjoyed only with respect to the subjects and by the persons, and on
the terms and conditions specified in the statute. Accordingly, it can cover only the works
falling within the statutory enumeration or description. Petitioner secured copyright under
classification class O work. Thus, copyright protection extended only to the technical
drawings and not to the light box itself because the latter was not at all in the category of
prints, pictorial illustrations, advertising copies, labels, tags and box wraps. What the law
does not include, it excludes, and for the good reason: the light box was not a literary or
artistic piece which could be copyrighted under the copyright law. And no less clearly,
neither could the lack of statutory authority to make the light box copyrightable be remedied
by the simplistic act of entitling the copyright certificate issued by the National Library as
Advertising Display Units. It must be noted that copyright is confined to literary and artistic
works which are original intellectual creations in the literary and artistic domain protected
from the moment of their creation.
2. Yes. Petitioner never secured a patent for the light boxes. It therefore acquired no patent
rights which could have protected its invention, if in fact it really was. And because it had no
patent, petitioner could not legally prevent anyone from manufacturing or commercially

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

LYCEUM OF THE PHILIPPINES, INC vs COURT OF APPEALS

G.R. No. 101897. March 5, 1993
FACTS:

The Lyceum of the Philippines, Inc. is an educational institution duly registered with the
Securities and Exchange Commission, using said corporate name since its first registration with the
latter.
LPI commenced in the SEC a proceeding against Lyceum of Baguio, Inc. to require it to
change its corporate name and to adopt another name not similar to or identical with that of LPI.
Associate Commissioner Julio Sulit held that the corporate name of LPI and LBI were
substantially identical because of the presence of a "dominant" word (Lyceum), the name of the
geographical location of the campus being the only word which distinguished one from the other.
The SEC also noted that LPI had registered as a corporation ahead of LBI and ordered the latter to
change its name to another name "not similar or identical with" the names of previously registered
entities.
LBI assailed the SECs order before the Supreme Court, which denied the same.
Armed with said SC resolution, LPI wrote to all the educational institutions it could find using
the word "Lyceum" as part of their corporate name, advising them to discontinue such use of
"Lyceum".
LPI claimed proprietary right over the word Lyceum and instituted proceedings before the
SEC to compel Lyceum of Aparri, Lyceum of Cabagan, Lyceum of Camalanuigan, Inc., Lyceum of
Lallo, Inc., Lyceum of Tuao, Inc., Buhi Lyceum, Central Lyceum of Catanduanes, Lyceum of Southern
Philippines, Lyceum of Eastern Mindanao, Inc., and Western Pangasinan Lyceum, Inc., also
educational institutions, to delete the word "Lyceum" from their corporate names and to
permanently enjoin them from using "Lyceum" as part of their respective names.
The SEC hearing officer ruled in favor of LPI, relying upon the SECs ruling in the LBI case
and holding that the word "Lyceum" was capable of appropriation, LPI having acquired an
enforceable exclusive right to the use of that word.
On appeal, the SEC En Banc reversed and set aside the hearing officers decision, not
considering the word "Lyceum" to have become so identified with LPI as to render use thereof by
other institutions as productive of confusion about the identity of the schools concerned in the mind
of the general public and holding that the attaching of geographical names to the word "Lyceum"
served sufficiently to distinguish the schools from one another.
The Court of Appeals affirmed the SEC En Bancs ruling
ISSUE:

WON the word Lyceum (1) can be appropriated by LPI to the exclusion of others and (2)
acquired a secondary meaning in relation to LPI.
HELD:
1. NO. The Articles of Incorporation of a corporation must set out the name of the corporation.
Section 18 of the Corporation Code establishes a restrictive rule insofar as corporate names are
concerned:
"SECTION 18. Corporate name. No corporate name may be allowed by the Securities
and Exchange Commission if the proposed name is identical or deceptively or confusingly similar
to that of any existing corporation or to any other name already protected by law or is patently
deceptive, confusing or contrary to existing laws. When a change in the corporate name is
approved, the Commission shall issue an amended certificate of incorporation under the
amended name."
The policy underlying the prohibition in Section 18 against the registration of a corporate name
which is "identical or deceptively or confusingly similar" to that of any existing corporation or
which is "patently deceptive" or "patently confusing" or "contrary to existing laws," is the
avoidance of fraud upon the public which would have occasion to deal with the entity concerned,
the evasion of legal obligations and duties, and the reduction of difficulties of administration and
supervision over corporations.
The corporate names of LA, et. al. not are "identical with, or deceptively or confusingly similar" to
that of LPI. The corporate names of LA, et. al. all carry the word "Lyceum", but confusion and
deception are effectively precluded by the appending of geographic names to the word "Lyceum".
Etymologically, the word "Lyceum" is the Latin word for the Greek lykeion, which refers to a
locality on the river Ilissius in ancient Athens "comprising an enclosure dedicated to Apollo and
adorned with fountains and buildings erected by Pisistratus, Pericles and Lycurgus frequented by
the youth for exercise and by the philosopher Aristotle and his followers for teaching." In time,

the word "Lyceum" became associated with schools and other institutions providing public
lectures and concerts and public discussions. Today, the word "Lyceum" generally refers to a
school or an institution of learning. "Lyceum" is in fact as generic in character as the word
"university." In the name of LPI, "Lyceum" appears to be a substitute for "university". In other
places, "Lyceum", or "Liceo", or "Lycee", denotes a secondary school or a college. It may be that
the use of the word "Lyceum" may not yet be as widespread as the use of "university," but it is
clear that a not inconsiderable number of educational institutions have adopted "Lyceum" or
"Liceo" as part of their corporate names. Since "Lyceum" or "Liceo" denotes a school or institution
of learning, it is not unnatural to use this word to designate an entity which is organized and
operating as an educational institution.
2. NO. LPI claimed that the word "Lyceum" has acquired a secondary meaning in relation to it,
hence, appropriable by it to the exclusion of other institutions.
The doctrine of secondary meaning originated in the field of trademark law. Its application
has been extended to corporate names, since the right to use a corporate name to the exclusion
of others is based upon the same principle which underlies the right to use a particular trademark
or tradename. In Philippine Nut Industry, Inc. v. Standard Brands, Inc., the doctrine of secondary
meaning was elaborated thus:
" . . . a word or phrase originally incapable of exclusive appropriation with reference to an
article on the market, because geographically or otherwise descriptive, might nevertheless have
been used so long and so exclusively by one producer with reference to his article that, in that
trade and to that branch of the purchasing public, the word or phrase has come to mean that the
article was his product."
No evidence was ever presented in the hearing before the Commission which sufficiently proved
that the word 'Lyceum' has indeed acquired secondary meaning in favor of LPI. If there was any
of this kind, the same tend to prove only that LPI had been using the disputed word for a long
period of time. Nevertheless, LPIs exclusive use of the word Lyceum was never established or
proven, as in fact the WPLI was already using the word Lyceum seventeen (17) years prior to
the date LPI started using the same word in its corporate name. Furthermore, educational
institutions of the Roman Catholic Church had been using the same or similar word ('Liceo de
Manila,' 'Liceo de Baleno', 'Liceo de Masbate,' 'Liceo de Albay') long before LPI started using the
word 'Lyceum'. LPI also failed to prove that the word Lyceum has become so identified with its
educational institution that confusion will surely arise in the minds of the public if the same word
were to be used by other educational institutions.
While LPI may have proved that it had been using the word Lyceum for a long period of time,
this fact alone did not amount to mean that the said word had acquired secondary meaning in its
favor because LPI failed to prove that it had been using the same word all by itself to the
exclusion of others. More so, there was no evidence presented to prove that confusion will surely
arise if the same word were to be used by other educational institutions.
THUS: LPI is not entitled to a legally enforceable exclusive right to use the word "Lyceum" in its
corporate name and other institutions may use "Lyceum" as part of their corporate names. To
determine whether a given corporate name is "identical" or "confusingly or deceptively similar"
with another entity's corporate name, it is not enough to ascertain the presence of "Lyceum" or
"Liceo" in both names. One must evaluate corporate names in their entirety and when the name
of petitioner is juxtaposed with the names of LA, et. al., they are not reasonably regarded as
"identical" or "confusingly or deceptively similar" with each other.

Societe Des Produits Nestle S.A and Nestle Phi. Inc vs CA

GR No 112012, April 4, 2001
Facts:
In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and Technology
Transfers an application for the registration of its trademark Flavor Master an instant coffee.
Nestle opposed the application as it alleged that Flavor Master is confusingly similar to Nestle
coffee products like Master Blend and Master Roast. Nestle alleged that in promoting their products,
the word Master has been used so frequently so much so that when one hears the word Master it
connotes to a Nestle product. They provided as examples the fact that theyve been using Robert
Jaworski and Ric Puno Jr. as their commercial advertisers; and that in those commercials Jaworski is
a master of basketball and that Puno is a master of talk shows; that the brand of coffee equitable or
fit to them is Master Blend and Master Roast. CFC Corporation on the other hand alleged that the
word Master is a generic and a descriptive term, hence not subject to trademark. The Director of
Patents ruled in favor of Nestle but the Court of Appeals, using the Holistic Test, reversed the said
decision.
ISSUE: Whether or not the Court of Appeals is correct.
HELD:
No. The proper test that should have been used is the Dominancy Test. The application of
the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice
the specific features, similarities or dissimilarities, considering that the product is an inexpensive
and common household item. The use of the word Master by Nestle in its products and commercials
has made Nestle acquire a connotation that if its a Master product it is a Nestle product. As such,
the use by CFC of the term MASTER in the trademark for its coffee product FLAVOR MASTER is
likely to cause confusion or mistake or even to deceive the ordinary purchasers.
In addition, the word MASTER is neither a generic nor a descriptive term. As such, said
term can not be invalidated as a trademark and, therefore, may be legally protected.
Generic terms are those which constitute the common descriptive name of an article or
substance, or comprise the genus of which the particular product is a species, or are commonly
used as the name or description of a kind of goods, or imply reference to every member of a
genus and the exclusion of individuating characters, or refer to the basic nature of the wares or
services provided rather than to the more idiosyncratic characteristics of a particular product, and
are not legally protectable.
On the other hand, a term is descriptive and therefore invalid as a trademark if, as
understood in its normal and natural sense, it forthwith conveys the characteristics, functions,
qualities or ingredients of a product to one who has never seen it and does not know what it is, or
if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the
goods, or if it clearly denotes what goods or services are provided in such a way that the consumer
does not have to exercise powers of perception or imagination.
Rather, the term MASTER is a suggestive term brought about by the advertising scheme of
Nestle. Suggestive terms are those which, in the phraseology of one court, require imagination,
thought and perception to reach a conclusion as to the nature of the goods. Such terms, which
subtly connote something about the product, are eligible for protection in the absence of
secondary meaning. While suggestive marks are capable of shedding some light upon certain
characteristics of the goods or services in dispute, they nevertheless involve an element of
incongruity, figurativeness, or imaginative effort on the part of the observer.