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2nd Batch Case Digest Intellectual Property Law

F. Assignment and Transfer of Application and Registration (Rules
17-20, RRVL; 906-916 RRTM)

BMW expressed dissatisfaction with various aspect of petitioners

business but nonetheless also expressed willingness to continue
business relations with petitioner on the basis of a standard BMW
contract otherwise, if said offer was unacceptable to petitioner then
BMW would terminate petitioners exclusive dealership.

SECOND DIVISION
[G.R. No. 113074. January 22, 1997]
ALFRED HAHN, petitioner, vs. COURT OF APPEALS and
BAYERISCHE MOTOREN WERKE
AKTIENGESELLSCHAFT (BMW), respondents.

Petitioner refused BMWs offer in which case BMW withdrew its

alternative offer and terminated petitioners exclusive dealership.
Petitioner therefore filed an action for specific performance and
damages against BMW to compel it to continue the exclusive
dealership.

Facts:
Petitioner is a Filipino citizen doing business under the name of
Hahn-Manila. Private respondent BMW is a non-resident
corporation incorporated in Germany.

Petitioner executed in favor of private respondent a Deed of

Assignment with a Special Power of Attorney which constituted
petitioner as the exclusive dealer of private respondent as long as the
assignment of its trademark and device subsisted.

However, no formal contract was drawn between the two parties.

Thereafter, petitioner was informed that BMW was arranging to
grant the exclusive dealership of BMW cars and products to
Columbia Motors Corp. (CMC).

BMW moved to dismiss the case contending that the trial court did
not acquire jurisdiction over it through the service of summons on
DTI because BMW is a foreign corporation and is not doing business
in the Philippines.

The trial court deferred the resolution of the motion for dismissal
until after trial on the merits for the reason that the grounds advanced
by BMW did not seem indubitable. BMW appealed said order to the
CA. The CA resolved that BMW was not doing business in the
country and therefore jurisdiction over it could not have been
acquired through the service of summons on DTI and it dismissed
the petition.

Issue: W/N BMW is doing business in the Philippines so as to

enable the court to acquire jurisdiction over it through the
service of summons on the DTI.

Ruling: RA 7042 enumerates what acts are considered as doing

business. Section 3(d) enumerating such acts includes the phrase
appointing representatives or distributors in the Philippines but not
when the representative or distributor transacts business in his own
name for his own account.

A contrary determination may be made based on the courts findings

or evidence presented.

ISSUE:Whether petitioner Alfred Hahn is the agent or

distributor in the Philippines of private respondent BMW
In the case at bar, petitioner is private respondent BMWs agent and
not merely a broker.

The record reveals that private respondent exercised control over

petitioners activities as a dealer and made regular inspections of
petitioners premises to enforce its standards. Since BMW is
considered as doing business in the Philippines, the trial court validly
acquired jurisdiction over it by virtue of the service of summons on
the DTI.
Furthermore, it is now settled that, for purposes of having summons
served on a foreign corporation in accordance with the Rules of
Court, it is sufficient that it be alleged in the complaint that the
foreign corporation is doing business in the Philippines.

The court need not go beyond the allegations in the complaint in

order to determine whether or not it acquired jurisdiction. Such
determination that the foreign corporation is doing business in the
Philippines is only tentative and only for the purpose of enabling the
court to acquire jurisdiction.

HELD: Alfred Hahn is an agent of BMW. The Supreme Court held

that agency is shown when Hahn claimed he took orders for BMW
cars and transmits them to BMW.
Then BMW fixes the down payment and pricing charges and will
notify Hahn of the scheduled production month for the orders, and
reconfirm the orders by signing and returning to Hahn the acceptance
sheets.
The payment is made by the buyer directly to BMW. Title to cars
purchased passed directly to the buyer and Hahn never paid for the
purchase price of BMW cars sold in the Philippines.
Hahn was credited with a commission equal to 14% of the purchase
price upon the invoicing of a vehicle order by BMW.

Upon confirmation in writing that the vehicles had been registered in

the Philippines and serviced by him, Hahn received an additional 3%
of the full purchase price.
Hahn performed after-sale services, including, warranty services. for
which he received reimbursement from BMW. All orders were on

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invoices and forms of BMW. Moreover, the Court distinguished an
agent from a broker.

Philippine Nut in its answer stated that its registered label is not
confusingly similar to that of Standard Brands as the latter alleges.

The court ruled that an agent receives a commission upon the

successful conclusion of a sale. On the other hand, a broker earns his
pay merely by bringing the buyer and the seller together, even if no
sale is eventually made.

After the presentation of oral and documentary evidence and the

filing by the parties of their memoranda, respondent Director of
Patents rendered a Decision giving due course to Standard Brand's
petition and ordering the cancellation of Philippine Nut's Certificate
of Registration, holding that in the labels using the two trademarks in
question, the dominant part is the word "Planters", displayed "in a
very similar manner" so much so that "as to appearance and general
impression" there is "a very confusing similarity," and he concluded
that Philippine Nut "was not entitled to register the mark at the time
of its filing the application for registration" as Standard Brands will
be damaged by the registration of the same.

G. License Contracts
H. Cancellation
Philippine Nut Industry, Inc. v. Standard Brands Incorporated
and Evalle
Philippine Nut, a domestic corporation, obtained from the Patent
Office a Certificate of Registration covering the trademark
"PHILIPPINE PLANTERS CORDIAL PEANUTS," the label used
on its product of salted peanuts. Standard Brands, a foreign
corporation, then filed with the Director of Patents an Inter Partes
Case asking for the cancellation of Philippine Nut's certificate of
registration on the ground that "the registrant was not entitled to
register the mark at the time of its application for registration
thereof" for the reason that it (Standard Brands) is the owner of the
trademark "PLANTERS COCKTAIL PEANUTS".

It further alleged that Philippine Nut's trademark "PHILIPPINE

PLANTERS CORDIAL PEANUTS" closely resembles and is
confusingly similar to its trademark "PLANTERS COCKTAIL
PEANUTS" used also on salted peanuts, and that the registration of
the former is likely to deceive the buying public and cause damage to
it.

Its motion for reconsideration having been denied, Philippine Nut

came to the Supreme Court for a review of said decision.
Issue:
WHETHER OR NOT THE CANCELLATION OF PHILIPPINE
NUTS TRADEMARK WAS PROPER?
Ruling:
Yes, because (1) there is a confusing similarity between the labels or
trademarks of Philippine Nut and Standard Brands used in their
respective canned salted peanuts;
(2) respondent Standard Brands has priority of adoption and use of
the label with PLANTERS as the dominant feature and the same has
acquired secondary meaning in relation to salted peanuts; and
(3) there has been no abandonment or non-use of said trademark by
Standard Brands which would justify its adoption by petitioner or
any other competitor for the sale of salted peanuts in the market.

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The word PLANTERS printed across the upper portion of the label
in bold letters easily attracts and catches the eye of the ordinary
consumer and it is that word and none other that sticks in his mind
when he thinks of salted peanuts it is the word PLANTERS which
draws the attention of the buyer and leads him to conclude that the
salted peanuts contained in the two cans originate from one and the
same manufacturer.
Philippine Nut also used in its label the same coloring scheme of
gold, blue, and white, and basically the same lay-out of words such
as "salted peanuts" and "vacuum packed" with similar type and size
of lettering as appearing in Standard Brands' own trademark, all of
which result in a confusing similarity between the two labels.
Lastly, the applicability of the doctrine of secondary meaning to the
situation is appropriate because there is oral and documentary
evidence showing that the word PLANTERS has been used by and
closely associated with Standard Brands for its canned salted peanuts
since 1938.

152.2. The use of the mark in a form different from the form in
which it is registered, which does not alter its distinctive
character, shall not be ground for cancellation or removal of the
mark and shall not diminish the protection granted to the mark.
152.3. The use of a mark in connection with one or more of the
goods or services belonging to the class in respect of which the
mark is registered shall prevent its cancellation or removal in
respect of all other goods or services of the same class.
152.4. The use of a mark by a company related with the
registrant or applicant shall inure to the latters benefit, and
such use shall not affect the validity of such mark or of its
registration:
Provided, That such mark is not used in such manner as to
deceive the public. If use of a mark by a person is
controlled by the registrant or applicant with respect to the
nature and quality of the goods or services, such use shall
inure to the benefit of the registrant or applicant. (n)

J. Requirements of Petition; Notice and Hearing

I. Non-use of a Mark When Excused

Sec. 152. None-use of a Mark When Excused

152.1. Non-use of a mark may be excused if caused by
circumstances arising independently of the will of the
trademark owner. Lack of funds shall not excuse non-use of a
mark.

Sec. 153. Requirements of Petition; Notice and Hearing Insofar

as applicable,
the petition for cancellation shall be in the same form as that
provided in Section 134 hereof, and notice and hearing shall
be as provided in Section 135 hereof.

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World Intellectual Property Organization
PhilippinesRegulations on Interpartes Proceedings

Sec. 154. Cancellation of Registration If the Bureau of Legal

Affairs finds that a case for cancellation has been made out,

RULE 3 Cancellation of Patents

it shall order the cancellation of the registration.

Section 3. Requirement of the Petition.

- The petition for cancellation shall be in writing, verified by
the petitioner or by any person in his behalf who knows the
facts, specify the grounds upon which it is based, include a
statement of the facts relied upon, and filed in triplicate with
the Bureau.

When the order or judgment becomes final, any right conferred

by such registration upon the registrant or any person in
interest of record shall terminate.

Copies of printed publications or of patents of other countries,

and other supporting documents mentioned in the petition shall
be attached thereto, together with the translation thereof in
English, if not in the English language.
Section 4. Notice of Hearing.
The Hearing Officer shall serve in the name of the Director,
notice of the filing of the petition upon the patentee and all
persons having grants or licenses, or any other right, title or
interest
in and to the patent and the invention covered thereby, as
appears of record in the Office, and of notice of the date of
hearing thereon on such persons and the petitioner.
Notice of the filing of the petition shall be published in the IPO
Gazette.
K. Cancellation of Registration

Notice of cancellation shall be published in the IPO Gazette.

(Sec. 19. R.A. No. 166a)
L. Remedies; Infringement (Rules 1-14 Rules and Regulations on
Administrative Complaints for Violation of Laws involving
Intellectual Property Rights RRAC)
1. Grounds

Any person who shall, without the consent of the owner of the
registered mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or

colorable imitation of a registered mark or the same container
or a dominant feature thereof in connection with the sale,
offering for sale, distribution, advertising of any goods or
services including other preparatory steps necessary to carry
out the sale of any goods or services
on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a

registered mark or a dominant feature thereof and apply such
reproduction, counterfeit, copy or colorable imitation to labels,
signs, prints, packages, wrappers, receptacles or advertisements
intended to be used in commerce upon or in connection with
the sale, offering for sale, distribution, or advertising of goods
or services on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive,

rights, or the profit which the defendant actually made out of

the infringement, or in the event such measure of damages
cannot be readily ascertained with reasonable certainty,
then the court may award as damages a reasonable percentage
based upon the amount of gross sales of the defendant or the
value of the services in connection with which the mark or
trade name was used in the infringement of the rights of the
complaining party. (Sec. 23, first par., R.A. No. 166a)

shall be liable in a civil action for infringement by the

registrant for the remedies hereinafter set forth:
Provided, That the infringement takes place at the
moment any of the acts stated in Subsection 155.1 or
this subsection are committed regardless of whether
there is actual sale of goods or services using the
infringing material. (Sec. 22, R.A. No 166a)

2. Actions, Damages and Injunction for Infringement

Sec. 156. Actions, and Damages and Injunction for

Infringement
156.1. The owner of a registered mark may recover damages
from any person who infringes his rights, and the measure of
the damages suffered
shall be either the reasonable profit which the complaining
party would have made, had the defendant not infringed his

156.2. On application of the complainant, the court may

impound during the pendency of the action, sales invoices and
other documents evidencing sales. (n)
156.3. In cases where actual intent to mislead the public or to
defraud the complainant is shown, in the discretion of the
court, the damages may be doubled. (Sec. 23, first par., R.A.
No. 166)
156.4. The complainant, upon proper showing, may also be
granted injunction. (Sec. 23, second par., R.A. No. 166a)

DEL MONTE CORPORATION and PHILIPPINE PACKING

CORPORATION vs. COURT OF APPEALS and SUNSHINE
SAUCE MANUFACTURING INDUSTRIES
G.R. No. L-78325 January 25, 1990
FACTS:
Petitioner Del Monte Corporation (Del Monte), through its local
distributor and manufacturer, PhilPack filed an infringement of

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copyright complaint against respondent Sunshine Sauce
Manufacturing Industries (SSMI), also a maker of catsup and other
kitchen sauces. In its complaint, Del Monte alleged that SSMI are
using bottles and logos identical to the petitioner, to which is
deceiving and misleading to the public.
In its answer, Sunshine alleged that it had ceased to use the Del
Monte bottle and that its logo was substantially different from the
Del Monte logo and would not confuse the buying public to the
detriment of the petitioners.
The RTC of Makati dismissed the complaint. It held that there were
substantial differences between the logos or trademarks of the parties
nor on the continued use of Del Monte bottles. The decision was
affirmed in toto by the Court of Appeals.

both labels. It has been correctly held that side-by-side comparison is

not the final test of similarity. In determining whether a trademark
has been infringed, we must consider the mark as a whole and not as
dissected.
The Court is agreed that are indeed distinctions, but similarities holds
a greater weight in this case. The Sunshine label is a colorable
imitation of the Del Monte trademark. What is undeniable is the fact
that when a manufacturer prepares to package his product, he has
before him a boundless choice of words, phrases, colors and symbols
sufficient to distinguish his product from the others. Sunshine chose,
without a reasonable explanation, to use the same colors and letters
as those used by Del Monte though the field of its selection was so
broad, the inevitable conclusion is that it was done deliberately to
deceive.
With regard to the bottle use, Sunshine despite the many choices
available to it and notwithstanding that the caution "Del Monte
Corporation, Not to be Refilled" was embossed on the bottle, still
opted to use the petitioners' bottle to market a product which
Philpack also produces. This clearly shows the private respondent's
bad faith and its intention to capitalize on the latter's reputation and
goodwill and pass off its own product as that of Del Monte.

ISSUE:
Did SSMI commit an infringement against Del Monte in the use of
its logos and bottles?

Sambar v Levi Strauss

Facts:

RULING:
Yes.
In determining whether two trademarks are confusingly similar, the
two marks in their entirety as they appear in the respective labels
must be considered in relation to the goods to which they are
attached; the discerning eye of the observer must focus not only on
the precognizant words but also on the other features appearing on

Private respondents alleged in their complaint that Levi Strauss and

Co. (LS&Co.), an internationally known clothing manufacturer, own
the arcuate design trademark which was registered under US
Trademark Registration No. 404,248 on November 16, 1943. That
sometime in 1987, CVSGIC and Venancio Sambar, without the
consent and authority of private respondents and in infringement and
unfair competition, sold and advertised, and despite demands to
cease and desist, continued to manufacture, sell and advertise denim,

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pants under the brand name Europress with back pockets bearing a
design similar to the arcuate trademark of private respondents,
thereby causing confusion on the buying public, prejudiced to private
respondents goodwill and property right.
Sambar filed a separate answer. He admitted that copyright
Registration No. 1-1998 was issued to him, but he denied using it.
He said he did not authorize anyone to use the copyrighted design.
Trial court issued a writ of preliminary injunction enjoining CVSGIC
and petitioner from manufacturing, advertising and selling pants with
the arcuate design on their back pockets.
Private respondents moved for reconsideration praying for the
cancellation of petitioners copyright registration.
Trial court granted the prayer.
Petitioner appealed to the Court of Appeals which affirmed the ruling
of the trial court.

Both the trail court and the Court of Appeals found there was
infringement.

Fruit of the Loom, Inc. v. CA and General Garments

Corporation, G.R. No. L-32747 (November 29, 1984)
Petitioner, a corporation duly organized and existing under the laws
of the State of Rhode Island, United States of America, is the
registrant of a trademark, FRUIT OF THE LOOM, in the Philippines
Patent Office, while Private respondent, a domestic corporation, is
the registrant of a trademark FRUIT FOR EVE in the Philippine
Patent Office.
Petitioner filed before the lower court, a complaint for infringement
of trademark and unfair competition against the herein private
respondent.

Whether petitioner infringe on private respondents arcuate design.

Petitioner principally alleged in the complaint that private

respondent's trademark FRUIT FOR EVE is confusingly similar to
its trademark FRUIT OF THE LOOM used also on women's panties
and other textile products. Furthermore, it was also alleged therein
that the color get-up and general appearance of private respondent's
hang tag consisting of a big red apple is a colorable imitation to the
hang tag of petitioner.

HELD:

Judgment was rendered by the lower court in favor of herein

petitioner. CA reversed.

ISSUE:

To be entitled to a copyright, the thing being copyrighted must be

original, created by the author through his own skill, labor and
judgment, without directly copying or evasively imitating the work
of another.

The main issue involved in this case is whether or not private

respondent's trademark FRUIT FOR EVE and its hang tag are
confusingly similar to petitioner's trademark FRUIT OF THE LOOM
and its hang tag so as to constitute an infringement of the latter's
trademark rights and justify the cancellation of the former.

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Held: Petition dismissed
In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE,
the lone similar word is FRUIT.
WE agree with the respondent court that by mere pronouncing the
two marks, it could hardly be said that it will provoke a confusion, as
to mistake one for the other. Standing by itself, FRUIT OF THE
LOOM is wholly different from FRUIT FOR EVE. WE do not agree
with petitioner that the dominant feature of both trademarks is the
word FRUIT for even in the printing of the trademark in both hang
tags, the word FRUIT is not at all made dominant over the other
words.
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 hang 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 (Carnation Co. vs. California
Growers Wineries, 97 F. 2d 80; Hyram Walke and Sons vs. PennMaryland Corp., 79 F. 2d 836) to be able to see the obvious
differences between the two trademarks in question.
Furthermore, We believe that a person who buys petitioner's products
and starts to have a liking for it, will not get confused and reach out
for private respondent's products when she goes to a garment store.

SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE

PHILIPPINES, INC., petitioners,
vs.
COURT OF APPEALS and CFC CORPORATION.,
respondents.
G.R. No. 112012
April 4, 2001
FACTS:
On Jan18, 1984, private respondent CFC Corporation filed with the
BPTTT an application for the registration of the trademark
"FLAVOR MASTER" for instant coffee. The application, as a
matter of due course, was published in the July 18, 1988 issue of the
BPTTTs Official Gazette.
Petitioner Societe Des Produits Nestle, S.A., a Swiss company
registered under Swiss laws and domiciled in Switzerland, filed an
unverified Notice of Opposition, claiming that the trademark of
private respondents product is "confusingly similar to its
trademarks for coffee and coffee extracts, to wit:
MASTERROAST and MASTER BLEND."
Likewise, a verified Notice of Opposition was filed by Nestle
Philippines, Inc., a Philippine corporation and a licensee of Societe
Des Produits Nestle S.A., against CFCs application for registration
of the trademark FLAVOR MASTER.
Nestle claimed that the use, if any, by CFC of the trademark
FLAVOR MASTER and its registration would likely cause confusion
in the trade; or deceive purchasers and would falsely suggest to the
purchasing public a connection in the business of Nestle, as the
dominant word present in the three (3) trademarks is "MASTER"; or
that the goods of CFC might be mistaken as having originated from
the latter.
ISSUE:

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WON there is Trademark Infringement.
HELD/RATIO:
Yes.
A trademark has been generally defined as "any word, name, symbol
or device adopted and used by a manufacturer or merchant to
identify his goods and distinguish them from those manufactured and
sold by others."
Colorable imitation denotes such a close or ingenious imitation as to
be calculated to deceive ordinary persons, or such a resemblance to
the original as to deceive an ordinary purchaser giving such attention
as a purchaser usually gives, as to cause him to purchase the one
supposing it to be the other.
In determining if colorable imitation exists, jurisprudence has
developed two kinds of tests - the Dominancy Test and the Holistic
Test.
The test of dominancy focuses on the similarity of the prevalent
features of the competing trademarks which might cause confusion
or deception and thus constitute infringement.
On the other side of the spectrum, the holistic test mandates that the
entirety of the marks in question must be considered in determining
confusing similarity.
The determination of whether two trademarks are indeed confusingly
similar must be taken from the viewpoint of the ordinary purchasers
who are, in general, undiscerningly rash in buying the more common
and less expensive household products like coffee, and are therefore
less inclined to closely examine specific details of similarities and
dissimilarities between competing products.

This Court cannot agree that totality test is the one applicable in this
case.
Rather, this Court believes that the dominancy test is more suitable to
this case in light of its peculiar factual milieu.
If the ordinary purchaser is "undiscerningly rash" in buying such
common and inexpensive household products as instant coffee, and
would therefore be "less inclined to closely examine specific details
of similarities and dissimilarities" between the two competing
products, then it would be less likely for the ordinary purchaser to
notice that CFCs trademark FLAVOR MASTER carries the colors
orange and mocha while that of Nestles uses red and brown.
The application of the totality or holistic test is improper since the
ordinary purchaser would not be inclined to notice the specific
features, similarities or dissimilarities, considering that the product is
an inexpensive and common household item.
SKECHERS, U.S.A., INC. V. INTER PACIFIC INDUSTRIAL
TRADING CORP., ET.AL., G.R. NO. 164321 November 30, 2006
Trademark Infringement; Finding that there was no colourable
imitation of petitioners trademark is merely preliminary and did not
finally determine the merits of the possible criminal proceedings that
may be instituted by petitioner.
FACTS:
Petitioner is a foreign corporation existing under the laws of
California engaged in the manufacture of footwear that filed
before the trial court to protect its intellectual property
rights.

In the course of business, Petitioner registered the trademark

SKECHERS with the Intellectual Property Office under
Registration No. 63364, Class 25 on 30 August 1996, and

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trademark S (within an oval design) both used in footwear
namely shoes, boots and slippers of all kinds, clothing tshirts, sweat shirts, sweat pants, socks, shorts, and hats.

Sometime in March 2002, petitioner engaged the services of

Zetetic Far East, a private investigative firm, to conduct an
investigation on Inter Pacific Industrial Trading
Corporation in coordination with NBI to confirm if Inter
Pacific is engaged in the importation, distribution and sale of
unauthorized products bearing counterfeit or unauthorized
trademarks owned by petitioner.
On April 11 2002, the market researcher for Zetetic visited
Inter Pacifics Warehouse in Quirino Ave. Paraaque City,
where he found different kinds and models of rubber shoes
including shoes bearing the S logo. He also found out that
the goods come straight from China. One of the caretakers
allegedly claimed that the shoes bearing the Strong name
with the S logo have the same style as Skechers shoes.
Another caretaker purportedly informed Mr. Ambion that
they have an outlet located at Taft Avenue. Thus they filed a
complaint with the NBI for stopping the illegal importation,
manufacture and sale of counterfeit products bearing the
trademarks owned by Skechers.(Trademark Infringement)

ISSUE(S):
WHETHER OR NOT The imitation of S by Strong shoes
constitute Trademark Infringement. NO.
RATION/RULING:
Based on the evidence presented, particularly the sample of both the
shoes, the appropriation of the symbol S on their rubber shoes

DOES NOT CONSTITUTE an infringement on the trademark of

petitioner.(HOLISTIC TEST IS APPLIED)
WHY?
The letter S in the petitioners shoes IS NEITHER EXTREMELY
AND PROFOUNDLY IDENTIFIABLE to the petitioners ALONE,
nor has it acquired a certain connotation to mean the rubber shoes
produced by petitioner.
ALTHOUGH one of the essential features of the private respondents
shoes is the letter S, suffice it to state that this alone would NOT
LIKELY CAUSE CONFUSION, DECEPTION or MISTAKE on the
part of the ordinary purchaser of a product like a pair of rubber shoes
is an intelligent buyer, who is accustomed to buy, and therefore to
some extent familiar with the goods.
It is NOT AMISS to state that the letter S has been used in many
existing trademarks, the most popular of which is the trademark S
enclosed by an inverted triangle, which is extremely profoundly
identifiable to the well-known comics action hero, Superman!!
LEVI STRAUSS (PHILS.), INC vs.
TONY LIM
G.R. No. 162311, December 4, 2008
FACTS: Petitioner Levi Strauss (Phils.), Inc. is a dulyregistered domestic corporation. It is a wholly-owned subsidiary of
Levi Strauss & Co. (LS & Co.) a Delaware, USA company.

In 1972, LS & Co. granted petitioner a non-exclusive license

to use its registered trademarks and trade name for the manufacture
and sale of various garment products, primarily pants, jackets, and

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shirts, in the Philippines. Presently, it is the only company that has
authority to manufacture, distribute, and sell products bearing the
LEVIS trademarks or to use such trademarks in the Philippines.

(3) the appearance of the word/phrase LIVES and LIVES

ORIGINAL JEANS is confusingly similar to petitioners LEVIS
trademark;

In 1995, petitioner lodged a complaint before the InterAgency

Committee
on
Intellectual
Property
Rights,
alleging that a certain establishment in Metro Manila was
manufacturing garments using colorable imitations of the LEVIS
trademarks. Thus, surveillance was conducted on the premises of
respondent Tony Lim, doing business under the name Vogue Traders
Clothing Company.

(4) a red tab, made of fabric, attached at the left seam of the
right back pocket of petitioners standard five-pocket jeans, also
appears at the same place on LIVES jeans;

The investigation revealed that respondent was engaged in

the manufacture, sale, and distribution of products similar to those of
petitioner and under the brand name LIVES.

On Dec 13, 1995, operatives of the (PNP) Criminal

Investigation Unit served search warrants on respondents premises
The (PNP CIC) then filed a complaint against respondent before the
DOJ for unfair competition under the old Article 189 of the Revised
Penal Code, prior to its repeal by Section 239 of Republic Act (RA)
No. 8293. PNP CIC claimed that a confusing similarity could be
noted between petitioners LEVIs jeans and respondents LIVES
denim jeans and pants.
The petitioner maintained that there is likelihood of
confusion between the competing products because:
(1) a slavish imitation of petitioners arcuate trademark has
been stitched on the backpocket of LIVES jeans;
(2) the appearance of the mark 105 on respondents product
is obviously a play on petitioners 501 trademark;

(5) the patch used on LIVES jeans (depicting three men on

each side attempting to pull apart a pair of jeans) obviously thrives
on petitioners own patch showing two horses being whipped by two
men in an attempt to tear apart a pair of jeans; and
(6) LEVIS jeans are packaged and sold with carton tickets,
which are slavishly copied by respondent in his own carton ticket
bearing the marks LIVES, 105, the horse mark, and basic features of
petitioners ticket designs, such as two red arrows curving and
pointing outward, the arcuate stitching pattern, and a rectangular
portion with intricate border orientation.

In his counter-affidavit, respondent alleged, among others, that (1)

his products bearing the LIVES brand name are not fake LEVIS
garments; (2) LIVES is a registered trademark while the patch pocket
design for LIVES pants has copyright registration, thus conferring
legal protection on his own intellectual property rights, which stand
on equal footing as LEVIS; (3) confusing similarity, the central issue
in the trademark cancellation proceedings lodged by petitioner, is a
prejudicial question that complainant, the police, and the court that
issued the search warrants cannot determine without denial of due
process or encroachment on the jurisdiction of the agencies
concerned; and (4) his goods are not clothed with an appearance
which is likely to deceive the ordinary purchaser exercising ordinary
care.
DOJ = DISMISSED

13
CA= RULE 43 (DENIED)

the resemblance must be such as is likely to deceive the ordinary

purchaser
exercising
ordinary
care.

ISSUE: THE COURT OF APPEALS GRAVELY ERRED IN

RULING THAT ACTUAL CONFUSION IS NECESSARY TO
SUSTAIN A CHARGE OF UNFAIR COMPETITION, AND THAT
THERE MUST BE DIRECT EVIDENCE OR PROOF OF INTENT
TO DECEIVE THE PUBLIC.

The SC further agreed with the CA that the probability of deception

must be tested at the point of sale since it is at this point that the
ordinary purchaser mulls upon the product and is likely to buy the
same under the belief that he is buying another.

RULING: NO. The SC reiterated its ruling in Emerald Garment

Manufacturing Corporation v. CA. The Court explained that since
maong pants or jeans are not inexpensive, the casual buyer is more
cautious and discerning and would prefer to mull over his purchase,
making confusion and deception less likely.

The test of fraudulent simulation is to be found in the likelihood of

deception, or the possibility of deception of some persons in some
measure acquainted with an established design and desirous of
purchasing the commodity with which that design has been
associated.

Where the Court held that in resolving cases of infringement and

unfair competition, the courts should take into consideration several
factors which would affect its conclusion, to wit: the age, training
and education of the usual purchaser, the nature and cost of the
article, whether the article is bought for immediate consumption and
also the conditions under which it is usually purchased.

Prosource v. Horphag
GR. 180073
Nov. 25, 2009

We cannot sustain Secretary Bellos opinion that to establish

probable cause, it is enough that the respondent gave to his product
the general appearance of the product of petitioner. It bears stressing
that that is only one element of unfair competition. All others must
be shown to exist.
More importantly, the likelihood of confusion exists not only if there
is confusing similarity. It should also be likely to cause confusion or
mistake or deceive purchasers. Thus, the CA correctly ruled that the
mere fact that some resemblance can be pointed out between the
marks used does not in itself prove unfair competition. To reiterate,

FACTS:
Horphag Research Management SA is a Swiss corporation and the
owner of trademark PYCOGENOL, a food supplement distributed
by Zuellig Pharma Corporation. Prosource International is a
domestic corporation which distributed a similar food supplement
using the mark PCO-GENOLS since 1996.
Horphag demanded that Prosource cease and desist from using the
trademark. Without notifying Horphag, Prosource stopped using
PCO-GENOLS and changed its mark to PCO-PLUS, as of June
2000. Nonetheless, on August 2000, Horphag filed a complaint for
infringement, preliminary injunction, actual and nominal damages
and attorneys fees. On January 2006, the RTC ruled in favor of
Horphag. It observed that PYCNOGENOL and PCOGENOLS have
the same suffix GENOL which appears to be merely descriptive and

14
thus open for trademark registration by combining it with other
words.
The trial court, likewise, concluded that the marks, when read, sound
similar, and thus confusingly similar especially since they both refer
to food supplements.
The court added that Prosources liability was not negated by its act
of pulling out of the market the products bearing the questioned mark
since the fact remains that from 1996 until June 2000, Prosource had
infringed Horphags product by using the trademark PCOGENOLS.
As Horphag manifested that it was no longer interested in recovering
actual damages, Prosource was made to answer only for attorneys
fees amounting to P50,000.00. For lack of sufficient factual and legal
basis, the court dismissed petitioners counterclaim. Prosources
motion for reconsideration was likewise denied. CA affirmed.

Furthermore, although the letters Y between P and C, N between O

and C and S after L are missing in the [petitioners] mark PCOGENOLS, nevertheless, when the two words are pronounced, the
sound effects are confusingly similar not to mention that they are
both described by their manufacturers as a food supplement and thus,
identified as such by their public consumers.
And although there were dissimilarities in the trademark due to the
type of letters used as well as the size, color and design employed on
their individual packages/bottles, still the close relationship of the
competing products name in sounds as they were pronounced,
clearly indicates that purchasers could be misled into believing that
they are the same and/or originates from a common source and
manufacturer.
The award for attorneys fees was sustained in favor of Horphag even
if no moral and exemplary damages were awarded.

ISSUE: w/n the Prosource is liable for trademark infringement?

HELD: Yes. The petition for certiorari by Prosource was denied for
lack of merit.
The SC affirmed the decision of the RTC and CA.
The SC applied the dominancy test to determine the similarity and
likelihood of confusion.
Applying the test, the trial court found, and the CA affirmed, that:
Both the word[s] PYCNOGENOL and PCOGENOLS have the same
suffix GENOL which on evidence, appears to be merely descriptive
and furnish no indication of the origin of the article and hence, open
for trademark registration by the plaintiff thru combination with
another word or phrase such as PYCNOGENOL, Exhibits A to A3.

Batistis v People of the Phil

On January 23, 2006, the Regional Trial Court (RTC), Branch 24, in
Manila convicted Juno Batistis for violations of Section 155
(infringement of trademark) and Section 168 (unfair competition) of
the Intellectual Property Code (Republic Act No. 8293).
1 On September 13, 2007, the Court of Appeals (CA) affirmed the
conviction for infringement of trademark, but reversed the conviction
for unfair competition for failure of the State to prove guilt beyond
reasonable doubt.
2 Batistis now appeals via petition for review on certiorari to
challenge the CAs affirmance of his conviction for infringement of
trademark.

15
We affirm the conviction, but we modify the penalty by imposing an
indeterminate sentence, conformably with the Indeterminate
Sentence Law and pertinent jurisprudence.

Fundador plastic caps, two filled bottles of Fundador brandy, and

eight cartons of empty Jose Cuervo bottles.

Facts

The Office of the City Prosecutor of Manila formally charged

Batistis in the RTC in Manila with two separate offenses, namely,
infringement of trademark and unfair competition.

The Fundador trademark characterized the brandy products

manufactured by Pedro Domecq, S.A. of Cadiz, Spain.3 It was duly
registered in the Principal Register of the Philippines Patent Office
on July 12, 1968 under Certificate of Registration No. 15987,4 for a
term of 20 years from November 5, 1970.
The registration was renewed for another 20 years effective
November 5, 1990.
Allied Domecq Philippines, Inc., a Philippine corporation
exclusively authorized6 to distribute Fundador brandy products
imported from Spain wholly in finished form,7 initiated this case
against Batistis.
Upon its request, agents of the National Bureau of Investigation
(NBI) conducted a test-buy in the premises of Batistis, and thereby
confirmed that he was actively engaged in the manufacture, sale and
distribution of counterfeit Fundador brandy products.
8 Upon application of the NBI agents based on the positive results of
the test-buy,9 Judge Antonio M. Eugenio, Jr. of the Manila RTC
issued on December 20, 2001 Search Warrant No. 01-2576,10
authorizing the search of the premises of Batistis located at No.1664
Onyx St., San Andres Bukid, Sta. Ana, Manila.
The search yielded 20 empty Carlos I bottles, 10 empty bottles of
Black Label whiskey, two empty bottles of Johnny Walker Swing, an
empty bottle of Remy Martin XO, an empty bottle of Chabot, 241
empty Fundador bottles, 163 boxes of Fundador, a half sack of

With Batistis pleading not guilty on June 3, 2003,13 the RTC

proceeded to trial.
On January 23, 2006, the RTC found Batistis guilty beyond
reasonable doubt of infringement of trademark and unfair
competition,
viz:
Court finds the accused JUNO BATISTIS Guilty Beyond Reasonable
Doubt of the crime of Violation of Section 155 of the Intellectual
Property Code and hereby sentences him to suffer the penalty of
imprisonment of TWO (2) YEARS and to pay a fine of FIFTY
THOUSAND (P50,000.00) PESOS.
This Court likewise finds accused JUNO BATISTIS Guilty Beyond
Reasonable Doubt of the crime of Violation of Section 168 (sic)
penalty of imprisonment of TWO (2) YEARS and to pay a fine of
FIFTY THOUSAND (Php50,000.00) PESOS.
Accused is further ordered to indemnify the private complainant the
sum of TWENTY-FIVE (Php25,000.00) PESOS as actual damages.
Batistis appealed to the CA, which, on September 13, 2007, affirmed
his conviction for infringement of trademark, but acquitted him of
unfair competition.
However, for failure of the prosecution to prove to a moral certainty
the guilt of the said Appellant, for violation of Section 168 of the

16
same code a judgment of ACQUITTAL is hereby rendered in his
favor.

Batistis, as appellant, did not sufficiently prove any extraordinary

circumstance justifying a departure from such doctrine.

Issue
THE REGIONAL TRIAL COURT ERRED IN CONVICTING THE
ACCUSED ON THE BASIS OF THE SELF-SERVING
AFFIDAVITS AND TESTIMONIES OF THE POLICE OFFICERS
WHO CONDUCTED THE RAID ON THE HOUSE OF THE
ACCUSED.
He submits that the only direct proofs of his guilt were the selfserving testimonies of the NBI raiding team; that he was not present
during the search; that one of the NBI raiding agents failed to
immediately identify him in court; and that aside from the two
bottles of Fundador brandy, the rest of the confiscated items were not
found in his house.
Ruling
The petition for review has no merit. Appeal confined only to
Questions of Law. Accordingly, we reject the appeal for the
following reasons: The petition for review replicates Batistis
appellant's brief filed in the CA,19 a true indication that the errors he
submits for our review and reversal are those he had attributed to the
RTC.
He thereby rests his appeal on his rehashed arguments that the CA
already discarded. His appeal is, therefore, improper, considering
that his petition for review on certiorari should raise only the errors
committed by the CA as the appellate court, not the errors of the
RTC.
To accord with the established doctrine of finality and bindingness of
the trial courts findings of fact, we do not disturb such findings of
fact of the RTC, particularly after their affirmance by the CA, for

ACCORDINGLY, we affirm the decision dated September 13, 2007

rendered in C.A.-G.R. CR No. 30392 entitled People of the
Philippines v. Juno Batistis, but modify the penalty to imprisonment
ranging from two years, as minimum, to three years, as maximum,
and a fine of P50,000.00.
The accused shall pay the costs of suit.

Coffee Partners, Inc. vs. San Francisco Coffee and Roastery, Inc.
Facts:
The petitioner holds a business in maintaining coffee shops in
the Philippines. It is registered with the Securities and Exchange
Commissionin January 2001.
In its franchise agreement with Coffee Partners Ltd, it carries the
trademark San Francisco Coffee.
Respondent is engaged in the wholesale and retail sale of coffee that
was registered in SEC in May 1995 under a registered business
name of San Francisco Coffee &Roastery, Inc. It entered into a
joint venture with Boyd Coffee USA to study coffee carts in malls.
When respondent learned that petitioner will open a coffee shop in
Libis, Q.C. they sent a letter to the petitioner demanding them to stop
using the name San Francisco Coffee as it causes confusion to the
minds of the public.

17
A complaint was also filed by respondents before the Bureau of
Legal Affairs of the Intellectual Property Office for infringement and
unfair competition with claims for damages. Petitioners contend that
there are distinct differences in the appearance of their trademark and
that respondent abandoned the use of their trademark when it joined
venture with Boyd Coffee USA.
The Bureau of Legal Affairs of the IPO held that petitioners
trademark infringed on the respondents trade name as
it registered its business name first with the DTI in 1995 while
petitioner only registered its trademark in 2001.
Furthermore, it ruled that the respondent did not abandon the use of
its trade name upon its joint venture with Boyd Coffee USA since in
order for abandonment to exist it must be permanent, intentional and
voluntary.
It also held that petitioners use of the trademark "SAN
FRANCISCO COFFEE" will likely cause confusion because of the
exact similarity in sound, spelling, pronunciation, and commercial
impression of the words "SAN FRANCISCO" which is the dominant
portion of respondents trade name and petitioners trademark. Upon
appeal before the office of the Director General of the IPO, the
decision of its legal affairs was reversed declaring there was no
infringement. The Court of Appeals however set aside its decision
and reinstated the IPO legal affairs decision. Petitioner contends that
the respondents trade name is not registered therefore a suit for
infringement is not available.
Issue:
Whether or not the petitioners use of the trademark "SAN
FRANCISCO COFFEE" constitutes infringement of respondents
trade name"SAN FRANCISCO COFFEE & ROASTERY, INC.,"
even if the trade name is not registered with the Intellectual Property
Office (IPO).

Ruling:
Registration of a trademark before the IPO is no longer
a requirement to file an action for infringement as provided in
Section 165.2 of RA 8293.
All that is required is that the trade name is previously used in trade
or commerce in the Philippines. There is no showing that respondent
abandoned the use of its trade name as it continues to embark to
conduct research on retailing coffee, import and sell coffee
machines as among the services for which the use of the business
name has been registered.
The court also laid down two tests to determine similarity and
likelihood of confusion.
The dominancy test focuses on similarity of the prevalent features of
the trademarks that could cause deception and confusion that
constitutes infringement. Exact duplication or imitation is not
required. The question is whether the use of the marks involved is
likely to cause confusion or mistake in the mind of the public or to
deceive consumers. the holistic test entails a consideration of the
entirety of the marks as applied to the products, including the labels
and packaging, in determining confusing similarity.15 The discerning
eye of the observer must focus not only on the predominant words
but also on the other features appearing on both marks in order that
the observer may draw his conclusion whether one is confusingly
similar to the other.
Applying either the dominancy test or the holistic test, petitioners
"SAN FRANCISCO COFFEE" trademark is a clear infringement of
respondents "SAN FRANCISCO COFFEE & ROASTERY, INC."
trade name.

18

The descriptive words "SAN FRANCISCO COFFEE" are precisely

the dominant features of respondents trade name. And because both
are involved in coffee business there is always the high chance that
the public will get confused of the source of the coffee sold by the
petitioner.
Respondent has acquired an exclusive right to the use of the trade
name "SAN FRANCISCO COFFEE & ROASTERY, INC." since the
registration of the business name with the DTI in 1995.

Pro Kennex asa trademark to SUPERIOR, on condition that

SUPERIOR acknowledged that KUNNAN was still the real owner
ofthe mark and agreed to return it to KUNNAN on request.
On December 3, 1991, upon the termination of its distributorship
agreement with SUPERIOR, KUNNAN appointedSPORTS
CONCEPT as its new distributor.
Subsequently, KUNNAN also caused the publication of a Notice
andWarning in the Manila Bulletins January 29, 1993 issue, stating
that
(1) it is the owner of the disputed trademarks;
(2) it terminated its Distributorship Agreement with
SUPERIOR; and
(3) it appointed SPORTS CONCEPT as its exclusive
distributor.

SUPERIOR COMMERCIAL ENTERPRISES INC. vs.

KUNNAN ENTERPRISES LTD. AND SPORTSCONCEPT &
DISTRIBUTOR, INC., G.R. No. 169974, April 20, 2010
FACTS:
On October 1, 1982, KUNNAN appointed SUPERIOR as its
exclusive distributor in the Philippines under aDistributorship
Agreement which states that: Kunnan intends to acquire ownership
of the Kennex trademark registered by Superior Commercial in
thePhilippines.
Superior Commercial is desirous of being appointed as the sole
distributor of Kunnan productsin the Philippines.SUPERIORs
President and General Manager, misled KUNNANs officers into
believing that KUNNAN could notacquire trademark rights in the
Philippines. KUNNAN decided to assign its applications to register

This notice prompted SUPERIOR to file its Complaint for

Infringement of Trademark andUnfair Competition with Preliminary
Injunction against KUNNAN.Prior to and during the pendency of the
infringement and unfair competition case before the RTC, KUNNAN
filedwith the Bureau of Patents, Trademarks and Technology
Transfer separate Petitions for the Cancellation ofRegistration
Trademarks well as Opposition to Applications (Consolidated
Petitions for Cancellation) involving theKENNEX and PRO
KENNEX trademarks.
In essence, KUNNAN filed the Petition for Cancellation and
Oppositionon the ground that SUPERIOR fraudulently registered
and appropriated the disputed trademarks;
as mere distributor and not as lawful owner, it obtained the
registrations and assignments of the disputed trademarks in violation
of theterms of the Distributorship Agreement and Sections 2-A and
17 of Republic Act No. 166, as amended. These cases were resolved

19
in favour of Kunnan by the BPTTT and the Court of Appeals. This
decision became final.
Issue: WON Superior, as a distributor, is the true and rightful owner
of the trademarks
Held: No. An exclusive distributor does not acquire any proprietary
interest in the principals trademark and cannotregister it, unless the
owner has assigned the right.
Trademark infringement
To establish trademark infringement, the following elements must be
proven:
(1) the validity of plaintiffs mark;
(2) the plaintiffs ownership of the mark; and
(3) the use of the mark or its colorable imitation by the alleged
infringer results in likelihood of confusion.
Based on these elements, we find it immediately obvious that the
second element the plaintiffs ownership of the mark was what
the Registration Cancellation Case decided with finality.
On this element depended the validity of the registrations that, on
their own, only gave rise to the presumption of, but was not
conclusive on, the issue of ownership. In no uncertain terms, the
appellate court in the Registration Cancellation Case ruled that
SUPERIOR was a mere distributor and could not have been the
owner, and was thus an invalid registrant of the disputed trademarks.
The right to register a trademark is based on ownership, and
therefore only the owner can register it.
In finding that Kunnan owned the marks, the court considered
the distributorship agreement and the so-called assignment
agreement in their entirety; it confirmed that Superior had sought to
be Kunnans exclusive distributor.

As enunciated in the case of Gabriel vs. Perez, 50 SCRA 406, a

mere distributor of a product bearing a trademark ,even if permitted
to use said trademark has no right to and cannot register the said
trademark.
Unfair competition
Unfair competition has been defined as the passing off (or palming
off) or attempting to pass off upon the public ofthe goods or business
of one person as the goods or business of another with the end and
probable effect ofdeceiving the public.
The essential elements of unfair competition are
(1) confusing similarity in the general appearance of the goods; and
(2) intent to deceive the public and defraud a
competitor.Jurisprudence also formulated the following true test of
unfair competition:
whether the acts of the defendant have the intent of deceiving or are
calculated to deceive the ordinary buyer making his purchases under
the ordinary conditions of the particular trade to which the
controversy relates.
One of the essential requisites in an action to restrain unfair
competition is proof of fraud; the intent to deceive, actual or
probable must be shown before the right to recover can exist .In the
present case, no evidence exists showing that KUNNAN ever
attempted to pass off the goods it sold ( i.e. sportswear, sporting
goods and equipment) as those ofS UPERIOR.
In addition, there is no evidence of bad faith or fraud imputable to
KUNNAN in using the disputed trademarks.
Specifically, SUPERIOR failed to adduce any evidence to show that
KUNNAN by the above-cited acts intended to deceive the public as

20
to the identity of the goods sold or of the manufacturer of the goods
sold.

ARMCO Marsteel-Alloy Corporation was also incorporated on July

11, 1972 under its original name Marsteel Alloy Company, Inc. but
on March 28, 1973 its name was changed to ARMCO-Marsteel
Alloy Corporation hereinafter called ARMCO-Marsteel, by
amendment of its Articles of Incorporation after the ARMCOOhio purchased 40% of its capital stock. Both said corporations
are engaged in the manufacture of steel products.
On the other hand ARMCO Steel Corporation was incorporated in
the Philippines on April 25, 1973, hereinafter called ARMCOPhilippines.

ARMCO STEEL CORPORATION (OF THE PHILIPPINES),

petitioner, vs.SECURITIES AND EXCHANGE COMMISSION,
ARMCO STEEL CORPORATION (of Ohio, U.S.A.) and
ARMCO MARSTEEL ALLOY CORPORATION, respondents.
G.R. No. L-54580

December 29, 1987

GANCAYCO, J.:
Facts:
On July 1, 1965 ARMCO Steel Corporation, a corporation organized
in Ohio, U.S.A., hereinafter called ARMCO-OHIO, obtained from
the Philippine Patent Office, Certificate of Registration No. 11750
for its trademark consisting of the word "ARMCO", pursuant to
trademark rules, the petitioner filed with the said patent office an
"Affidavit of Use" for said trademark, which was subsequently
accepted and for which the Patent.

ARMCO-Ohio and ARMCO-Marsteel then filed a petition in the

Securities and Exchange Commission (SEC) to compel ARMCOPhilippines to change its corporate name on the ground that it is very
similar, if not exactly the same as the name of one of the petitioners.
In due course an order was issued by the SEC on February 14, 1975
granting the petition, the dispositive part of which reads as follows:
ARMCO STEEL CORPORATION, is hereby ordered to take out
'ARMCO' and substitute another word in lieu thereof in its corporate
name by amending the articles of incorporation to that effect.
A motion for reconsideration of the said order was filed by said
respondent on but this was denied.
On March 22, 1976 said respondent amended its articles of
incorporation by changing its name to "ARMCO structures, Inc."
which was filed with and approved by the SEC.
Nevertheless, in an order of January 6, 1977, the SEC issued an order
requiring respondent, its directors and officers to comply with the
aforesaid order of the Commission of February 14, 1975 within ten
(10) days from notice thereof.

21
A manifestation and motion was filed by respondent informing SEC
that it had already changed its corporate name with the approval of
the SEC to ARMCO Structures, Inc.
Petitioners then filed a comment to said manifestation alleging that
the change of name of said respondent was not done in good faith
and is not in accordance with the order of the Commission of
February 14, 1975 so that drastic action should be taken against the
respondent and its officers.
SEC thus said respondent, its directors, and officers were ordered
within ten (10) days from notice to comply with the order of
February 14, 1975.
An appeal was interposed by the respondent to the SEC en banc. The
Commission en banc in an order of December 14, 1979 dismissed
the appeal for lack of merit.
Issue:
WHETHER OR NOT SHOULD AMCRO PHILIPPINES SHOULD
CHANGE ITS CORPORATE NAME PERSUANT TO SECS
ORDER
Held:
YES.The order of the public respondent SEC of February 14, 1975
which has long become final and executory clearly spells out that
petitioner must "take out ARMCO and substitute another word in
lieu thereof in its corporate name by amending the articles of
incorporation to that effect, ... " Far from complying with said order
petitioner amended its corporate name into ARMCO Structures, Inc.,
and secured its approval by the SEC on March 22, 1976.

The Order of February 14, 1975, cannot but be clearer than what
it purports to require or demand from respondent. Under in no
distinct terms, it enjoins the removal or deletion of the word
'Armco' from respondent's corporate name, which was not so
complied with. The Commission, therefore, cannot give its
imprimatur to the new corporate name because there was no
compliance at all.
The fact that the Securities and Exchange Commission issued its
certificate of filing of amended articles of incorporation on March
22, 1976, is nothing but an illusory approval of the change of
corporate name and a self-induced protection from the Commission
to further exact compliance of the Order of February 14, 1975.
Craftily, the Securities and Exchange Commission and/or its
administrative personnel were made to issue such certificate during
its unguarded moment. Verily, the certificate could not have been
issued were it not for such lapses or had respondent been in good
faith by making the proper disclosures of the circumstances which
led it to amend its articles of incorporation.
It is indisputable that ARMCO-STEEL-OHIO, having patented the
term 'Armco' as part of its trademark on its steel products, is entitled
to protection in the use thereof in the Philippines. The term "Armco"
is now being used on the products being manufactured and sold in
this country by Armco-Marsteel by virtue of its tie-up with ARMCOSTEEL-OHIO. Clearly, the two companies have the right to the
exclusive use and enjoyment of said term.
ARMCO STEEL-PHILIPPINES, has not only an Identical name
but also a similar line of business, as shown above, as that of
ARMCO STEEL- OHIO. People who are buying and using
products bearing the trademark "Armco" might be led to
believe that such products are manufactured by the respondent,

22
when in fact, they might actually be produced by the petitioners.
Thus, the goodwill that should grow and inure to the benefit of
petitioners could be impaired and prejudiced by the continued
use of the same term by the respondent.
Obviously, the petition for review is designed to further delay if not
simply evade compliance with the said final and executory SEC
order. Petitioner also seeks a review of the orders of execution of the
SEC of the said February 14, 1975 order. An order or resolution
granting execution of the final judgment cannot be appealed 9
otherwise there will be no end to the litigation.

Philips Export B.V., et al v. CA, et al G.R. No. 96161 February 21,

1992
Facts:
Philips Export B.V. (PEBV), a foreign corporation, is the
registered owner of the trademarks PHILIPS and PHILIPS SHIELD
EMBLEM issued by the Philippine Patent Office (presently know as
the Bureau of Patents, Trademarks and Technology Transfer).
Later, Philips Electrical Lamps, Inc. (Philips Electrical) and Philips
Industrial Development Inc. (Philips Industrial), authorized users of
the trademarks PHILIPS and PHILIPS SHIELD EMBLEM, were
later incorporated. On the other hand, Standard Philips Corporation
(Standard Philips) was issued a Certificate of Registration. Thus,
petitioners filed a letter complaint with SEC asking for the
cancellation of the word PHILIPS from Standard Philips
(respondent) corporate name.
Subsequently, petitioners, because of Standard Philips refusal to
amend, filed a petition praying for the issuance of a Writ of
Preliminary Injunction, alleging that Standard Philips use of the
word PHILIPS amounts to an infringement and clear violation of

petitioners exclusive right to use the same considering that both

parties engage in the same business.
Later, Standard Philips countered that PEBV has no legal capacity to
sue and that Standard Philips use of its corporate name is not at all
similar to petitioners trademark PHILIPS.
Also, its products consisting of chain rollers, belts, bearings and
cutting saw are grossly different from petitioners electrical products.
The SEC Hearing Officer ruled against the issuance of such Writ,
which he later dismissed.
It held that there is no confusing similarity. The SEC en banc
affirmed the dismissal. The CA also dismissed the Petition for
Review on Certiorari.
Issue
Whether or not there was infringement and violation of
exclusive right to use the trademarks
Held:
Yes. The Supreme Court sets aside the decision of the CA
and enjoined Standard Philips to enjoin from using PHILIPS as a
feature of its corporate name.
The Court held that a corporations right to use its corporate and
trade name is a property right, a right in rem, which it may assert and
protect against the world in the same manner as it may assert and
protect against the world in the same manner as it may protect its
tangible property, real or personal, against trespass or conversion. It
is regard, to a certain extent, as a property right and one which
cannot be impaired or defeated by subsequent appropriation by
another corporation in the same field.
As to the name of the corporation, a corporation requires its name by
choice and need not select a name identical with or similar to one

23
already appropriated by a senior corporation while an individuals
name is thrust upon him.

Lastly, the Court points out that PHILIPS is a trademark or trade

name which was registered as far back as 1922.

A corporation can no more use a corporate name in violation of the

right of others than a individual can use his name legally acquired so
as to mislead the public and injure another.

Therefore, petitioners have the exclusive right to its name, which

must be free from any infringement by similarity.

The Corporation Code, Section 18 provides that 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 law
To come within the scope of the law, two requisites must be proven:
1) that the complainant corporation acquired a prior right over the
use of such corporate name; and

G.R. No. 122174. October 3, 2002

INDUSTRIAL REFRACTORIES CORPORATION OF THE
PHILIPPINES, petitioner, vs. COURT OF APPEALS,
SECURITIES AND EXCHANGE COMMISSION and
REFRACTORIES CORPORATION OF THE PHILIPPINES,
respondents.

2) the proposed name is either;

a) identical or
b) deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by law;
or
c) patently deceptive, confusing or contrary to existing law.

In the case, the second requisite no less exists.

In determining the existence of confusing similarity in corporate
names,
the test is whether the similarity is such as to mislead a person using
ordinary care and discrimination.

Facts:
Respondent Refractories Corporation of the Philippines (RCP) is a
corporation duly organized on October 13, 1976 for the purpose of
engaging in the business of manufacturing, producing, selling,
exporting and otherwise dealing in any and all refractory bricks, its
by-products and derivatives. On June 22, 1977, it registered its
corporate and business name with the Bureau of Domestic Trade.
Petitioner IRCP on the other hand, was incorporated on August 23,
1979 originally under the name Synclaire Manufacturing
Corporation. It amended its Articles of Incorporation on August 23,
1985 to change its corporate name to Industrial Refractories Corp. of

24
the Philippines. It is engaged in the business of manufacturing all
kinds of ceramics and other products, except paints and zincs.

already protected by law or is patently deceptive, confusing or

contrary to existing laws.

Securities and Exchange Commission (SEC) a petition to compel

petitioner to change its corporate name on the ground that its
corporate name is confusingly similar with that of petitioners such
that the public may be confused or deceived into believing that they
are one and the same corporation.

Petitioner appealed to the SEC En Banc. The SEC En Banc modified

the appealed decision in that petitioner was ordered to delete or drop
from its corporate name only the word Refractories.

The policy behind the foregoing prohibition is to avoid fraud

upon the public that will 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
corporation. Pursuant thereto, the Revised Guidelines in the
Approval of Corporate and Partnership Names specifically requires
that:

A petition for review on certiorari to the Court of Appeals which then

rendered the herein assailed decision. The appellate court upheld the
jurisdiction of the SEC over the case.

(1) a corporate name shall not be identical, misleading or

confusingly similar to one already registered by another corporation
with the Commission; and
(2) if the proposed name is similar to the name of a registered
firm, the proposed name must contain at least one distinctive word
different from the name of the company already registered.

Issue:
Whether or not the Respondents corporate name is confusingly
similar with that of petitioners?
Ruling:
Petitioners argument is untenable, that there is no confusing or
deceptive similarity between petitioner and respondent RCPs
corporate names.
Section 18 of the Corporation Code expressly prohibits the use
of a corporate name which is identical or deceptively or confusingly
similar to that of any existing corporation or to any other name

As held in Philips Export B.V. vs. Court of Appeals,[28] to fall

within the prohibition of the law, two requisites must be proven, to
wit:
(1) that the complainant corporation acquired a prior right over
the use of such corporate name; and
(2) the proposed name is either:
(a) identical, or
(b) deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by law; or

25
(c) patently deceptive, confusing or contrary to existing law. As
regards the first requisite, it has been held that the right to the
exclusive use of a corporate name with freedom from
infringement by similarity is determined by priority of
adoption.

In this case, respondent RCP was incorporated on October 13,

1976 and since then has been using the corporate name Refractories
Corp. of the Philippines.

Phils. Obviously, both names contain

Refractories, Corporation and Philippines.

the

identical

words

The only word that distinguishes petitioner from respondent

RCP is the word Industrial which merely identifies a corporations
general field of activities or operations.
We need not linger on these two corporate names to conclude
that they are patently similar that even with reasonable care and
observation, confusion might arise.

Meanwhile, petitioner was incorporated on August 23, 1979

originally under the name Synclaire Manufacturing Corporation.
It only started using the name Industrial Refractories Corp. of
the Philippines when it amended its Articles of Incorporation on
August 23, 1985, or nine (9) years after respondent RCP started
using its name.
Thus, being the prior registrant, respondent RCP has acquired
the right to use the word Refractories as part of its corporate name.
Anent the second requisite, in determining the existence of
confusing similarity in corporate names, the test is whether the
similarity is such as to mislead a person using ordinary care and
discrimination and the Court must look to the record as well as the
names themselves.
Petitioners corporate name is Industrial Refractories Corp. of
the Phils., while respondents is Refractories Corp. of the

United Laboratories Inc. v. Isip

A Special Investigator of the National Bureau of Investigation (NBI),
filed an application in the RTC of Manila, for the issuance of a
search warrant concerning the first and second floors of the Shalimar
Building, located at No. 1571, Aragon Street (formerly No. 1524,
Lacson Avenue, Sta. Cruz, Manila) occupied and/or used by
Shalimar Philippines, owned/operated by Ernesto Isip; and for the
seizure of finished or unfinished products of UNITED
LABORATORIES (UNILAB), particularly REVICON multivitamins
for violation of Section 4(a), in relation to Section 8, of Republic Act
(R.A.) No. 8203.
After conducting the requisite searching questions, the court granted
the application and issued the search warrant.
The search warrant was implemented.
However, no fake Revicon multivitamins were found; instead, there
were ten boxes of Disudrin 60 ml., and at least one box of Inoflox.

26
The petitioners filed a motion that the said items be turned over to
the custody of the Bureau of Food and Drugs (BFAD) for
examination, which the court granted.
The respondents then filed an "Urgent Motion to Quash the Search
Warrant or to Suppress Evidence" and asserted that the NBI officers
seized Disudrin and Inoflox products which were not included in the
list of properties to be seized in the search warrant.
Thus, the court granted the motion of the respondents and issued an
advisory that the seized articles could no longer be admitted in
evidence against the respondents in any proceedings, as the search
warrant had already been quashed.
The petitioners argue that the seizure of the said items were valid in
accordance with the plain view doctrine.

The immediately apparent aspect, after all, is central to the plain

view exception relied upon by the petitioner and the NBI. There is no
showing that the NBI and the petitioner even attempted to adduce
such evidence.
In fact, the petitioner and the NBI failed to present any of the NBI
agents who executed the warrant, or any of the petitioners
representative who was present at the time of the enforcement of the
warrant to prove that the enforcing officers discovered the sealed
boxes inadvertently, and that such boxes and their contents were
incriminating and immediately apparent.
It must be stressed that only the NBI agent/agents who enforced the
warrant had personal knowledge whether the sealed boxes and their
contents thereof were incriminating and that they were immediately
apparent. There is even no showing that the NBI agents knew the
contents of the sealed boxes before they were opened.

WHETHER OR NOT THE SEIZURE OF THE SAID ITEMS

WERE VALID IN ACCORDANCE WITH THE PLAIN VIEW
DOCTRINE?

In this case, Disudrin and/or Inoflox were not listed in the search
warrant issued by the court a quo as among the properties to be
seized by the NBI agents.

No, because it is not enough to prove that the sealed boxes were in
the plain view of the NBI agents;

The implementing officers failed to find any counterfeit Revicon

multivitamins, and instead seized sealed boxes which, when opened
at the place where they were found, turned out to contain Inoflox and
Disudrin.

evidence should have been adduced to prove the existence of all the
essential requirements for the application of the doctrine during the
hearing of the respondents motion to quash, or at the very least,
during the hearing of the NBI and the petitioners motion for
reconsideration on April 16, 2004.

In sum then, the Court finds and so hold that the petitioner and the
NBI failed to prove the essential requirements for the application of
the plain view doctrine.