ASIA BREWERY, INC. vs. THE HON.

COURT OF APPEALS and SAN MIGUEL

CORPORATION
G.R. 103543 July 5, 1993
FACTS:
San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement
of trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA
BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share
of the local beer market.
The trial court dismissed SMC's complaint because ABI "has not committed trademark
infringement or unfair competition against" SMC
On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial court,
finding the defendant Asia Brewery Incorporated GUILTY of infringement of trademark and
unfair competition. ABI then filed a petition for certiorari.
ISSUE: Whether or not ABI infringes SMCs trademark and as such constitutes unfair competition
HELD: NO
Infringement is determined by a test of dominancy. 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. A closer look at
the trademark of both companies will show that the dominant features of each absolutely bear no similarity to each
other. SMCs dominant trademark is the name of the product, San Miguel Pale Pilsen written in white Gothic letters
with elaborate serifs at the beginning and end of the letters S and M on an amber background while ABIs is the
name Beer Pale Pilsen with the word Beer written in large amber letters, larger than any of the letter found in SMC
label.

The word pale pilsen on ABIs trademark does not constitute trademark infringement for it is a generic word
descriptive of the color of a type of beer. No one may appropriate generic or descriptive words for they belong to the
public domain.
ABI is likewise not guilty of unfair competition for unfair competition is the employment of deception or any other
means contrary to good faith by which a person shall pass off the goods manufactured by him for those of another
who has already established goodwill for his similar goods. The universal test for this is whether the public is likely to
be deceived. Actual or probable deception and confusion on the part of the customers by reason of defendants
practices must appear. However, this is unlikely to happen in the case at bar for consumers generally order beer by
brand. Also, the fact that ABI also uses amber-colored steinie bottles cannot constitute unfair competition for ABI did
not copy SMCs bottle. SMC did not invent but merely borrowed the steinie bottle from abroad. Likewise, amber is the
most effective color in preventing transmission of light thus providing maximum protection to beer. 320 ml is likewise
the standard prescribed under Metrication Circular No. 778. The fact that it is the first to use the steinie bottle does
not give SMC a vested right to use it to the exclusion of everyone else. Nobody can acquire any exclusive right to

market articles supplying the simple human needs in containers or wrappers of the general form, size and character
commonly and immediately used in marketing such articles.
There is no confusing similarity between the competing beers therefore ABI neither infringed SMCs trademark nor
did it commit unfair competition.
Dissenting Opinion of J. Cruz:
Side-by-side comparison is not the final test of similarity because average buyers do not make minute scrutiny of
label details. The average shopper is usually in a hurry and does not inspect every product on the shelf is if he were
browsing in a library.