Asia brewerly Inc. (ABI) v.

CA and San Miguel Corporation (SMC)

SMC filed complaint against ABI before the RTC for infringement of trademarks and
unfair
competition. RTC dismiss the complaint because the allegation was not supported by
evidenced as
to the intent of the ABI to defraud the buying public and that the allegation is
insufficient to commit
infringement of trademarks. However upon appeal to CA, CA reversed the trial court
decision and
declare that ABI is guilty of infringement of trademarks and unfair competition and
the motion for
reconsideration is likewise denied.
ISSUE: W/N ABI is guilty of infringement of trademarks and unfair competition.
RULING:
Infringement is determined by the dominancy rather than by differences or variations
in the details
of one trademark and of another. The main or essential or dominant features of
another, and
confusion and deception are likely to result, infringement take place.
In the case at bar, there is no clear showing that ABI intend to mislead the ordinary
intelligent buyer
hence there was no unfair competition. The used of the steinie bottle, amber colored
and its
rectangular labels are generic and non-registrable. SMC did not invent the same
therefore anyone
may use it in the industry. ABI in fact made its own steinie bottle which has fat
bulging neck to
differentiate it from SMC bottles.
The name used by SMC is SAN MIGUEL PALE PILSEN and ABI BEER PALE PILSEN
are not
confusingly similar.
Therefore, the petition is granted the ruling of CA is set aside and RTC ruling is
reiterated.

EMERALD GARMENT MANUFACTURING CORPORATION vs. CA, G.R. No. 100098,

Dec. 29, 1995
Topics: test of dominancy, holistic test, prior registration

Facts:

Private respondent H.D. Lee Co., Inc., a foreign corporation organized under the laws
of Delaware, U.S.A., filed with the Bureau of Patents, Trademarks & Technology
Transfer (BPTTT) a Petition for Cancellation of Registration for the trademark
STYLISTIC MR. LEE used on various types of clothing, issued on Oct. 27, 1980 in
the name of petitioner Emerald Garment Manufacturing Corporation organized and
existing under Philippine laws.
H.D. Lee Company, invoking Sec. 37 of R.A. No. 16 (Trademark Law) and Art.
VIII of the Paris Convention for the Protection of Industrial Property, averred that
Emeralds trademark so closely resembled its own trademark, LEE as previously
registered and used in the Philippines, and not abandoned, as to be likely, when
applied or used in connection with petitioners goods, to cause confusion, mistake and
deception on the part of the purchasing public.
The Director of Patents rendered a decision granting H.D. Lees petition for the
cancellation and opposition of the said registration. The Director of Patents found that
H.D. Lee is the prior registrant of the trademark LEE and in using the test of
dominancy, declared that Emeralds trademark, Stylistic Mr. Lee was confusingly
similar to private respondents mark because it is the word Lee which draws the
attention of the buyer and leads him to conclude that the goods originate from the
same manufacturer. It is the dominant feature of the mark. The CA affirmed the
decision of the Director of Patents.
Issue/s:

1. Whether or not the trademark Stylistic Mr. Lee is confusingly similar with
trademark Lee or Lee-rider, Lee-leens and Lee-sures.
2. Whether or not the CA erred when it considered private respondents prior
registration of its trademark and disregarded the fact that private respondent had
failed to prove commercial use thereof before filing of application.

Held:

1. No, the trademarks are not similar. The Court explained that the essential
element of infringement is colorable imitation. This term has been defined as such a
close or ingenious imitation as to be calculated to deceive ordinary purchasers, or
such resemblance of the infringing mark to the original as to deceive an ordinary
purchases giving such attention as a purchaser usually gives, and to cause him to
purchase the one supposing it to be the other.
In determining whether colorable imitation exists, jurisprudence has
developed two kinds of tests, the Dominancy Test and the Holistic Test. As the
name implies, the test of dominancy focuses on the similarity of the prevalent features
of the competing trademarks which might cause confusion or deception and thus
constitutes infringement. The Holistic Test, on the other hand mandates that the
entirety of the marks in question must be considered in determining confusing
similarity.
The SC, in applying the aforementioned tests, considered the trademarks
involved as a whole and ruled that petitioners STYLISTIC MR. LEE is not
confusingly similar to the LEE trademark. Petitioners trademark is the whole
STYLISTIC MR. LEE. Although on its label the word LEE is prominent, the
trademark should be considered as a whole and not piecemeal. Furthermore, LEE is
primarily a surname. Private respondent cannot, therefore, acquire exclusive
ownership over and singular use of said term.
2. Yes, the CA erred. The SC observed that the Director of Patents and the CA
mainly relied on the registration certificates as proof of use by private respondent of
the trademark LEE which, as we have previously discussed are not sufficient. The
SC did not give credence to the claim that LEE first reached the Philippines in the
1960s through local sales by the Post Exchanges of the U.S. Military Bases in the
Philippines based as it was solely on the self-serving statements of the General
Manager of Lee (Phils.) Similarly, the SC gave little weight to the numerous vouchers
representing advertising expenses in the Philippines for Lee products, noting that
those expenses were incurred only n 1981 and 1982. On the other hand, petitioner
has sufficiently shown that it has been in the business of selling jeans and other
garments adopting its STYLISTIC MR. LEE trademark since 1975 as evidenced by
appropriate sales invoices to various stores and retailers.

Bristol Myers v Director of Patents

GR L-21587 May 19, 1866
Facts: Bristol Myers is a corporation in the USA and owner in the Philippines of the
trademark BUFFERIN, a medicine intended for simple headache, colds, menstrual and
muscular pain. Myers is opposing the application for registration of the trademark
BIOFERIN filed by United American Pharmaceuticals. Bioferin is also a medicine for
the treatment of common colds, influenza and other febrile diseases. Myers argues
that the registration of Bioferin would violate its rights in the registered trademark
Bufferin. It will also mislead and confuse the public as to the source and origin of the
respective marks.
The Director of Patents granted the application for registration of Bioferin, thus
denying the opposition of Myers.
Issue: W/N the two trademarks as presented to the public in their respective labrls
confusingly similar
Held: No.
In determining whether two trademarks are confusingly similar, the test is not simply
to take their words and compare the spelling and pronunciation of said words. Rather,
it is to consider the two marks in their entirety, as they appear in the respective labels,
in relation to the goods to which they are attached.
Applying this test, Bufferin and Bioferin, though bearing similarities in spelling snd
pronunciation, appear in their respective labels with strikingly different backgrounds
and surroundings, as to color, size and design.
Further, Bioferin is dispensable only upon doctors prescription. Thus, the chances of
being confused into purchasing one for the other are rendered negligible.

SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES, INC. vs.
COURT OF APPEALS and CFC CORPORATION

FACTS:
Respondent CFC Corporation filed an application with the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT) for the registration of the trademark
FLAVOR MASTER for instant coffee. Petitioner Societe Des Produits Nestle, S.A., a
Swiss company registered under Swiss laws and domiciled in Switzerland, filed an
unverified Notice of Opposition claiming that the trademark of private respondents
product is confusingly similar to its trademarks for coffee and coffee extracts, to wit:
MASTER ROAST and MASTER BLEND. 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
Nestle.
In answer to the two oppositions, CFC argued that its trademark, FLAVOR
MASTER, is not confusingly similar with the formers trademarks, MASTER ROAST
and MASTER BLEND, alleging that, except for the word MASTER (which cannot be
exclusively appropriated by any person for being a descriptive or generic name), the
other words that are used respectively with said word in the three trademarks are very
different from each other in meaning, spelling, pronunciation, and sound. CFC further
argued that its trademark, FLAVOR MASTER, is clearly very different from any of
Nestles alleged trademarks MASTER ROAST and MASTER BLEND, especially when
the marks are viewed in their entirety, by considering their pictorial representations,
color schemes and the letters of their respective labels.
BPTTT denied CFCs application for registration. CFC elevated the matter to the
Court of Appeals. The CA reversed the decision of the BPTTT and ordered the Director
of Patents to approve CFCs application. Hence, this petition.
ISSUE:
Whether or not the trademark FLAVOR MASTER is a colorable imitation of the
trademarks MASTER ROAST and MASTER BLEND.

RULING:

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 Court believes that the dominancy test is more suitable to this case in light of
its peculiar factual milieu. In addition, the word MASTER is neither a generic nor a
descriptive term. As such, said term cannot be invalidated as a trademark and,
therefore, may be legally protected.
The term MASTER, therefore, has acquired a certain connotation to mean the
coffee products MASTER ROAST and MASTER BLEND are produced by Nestle. As
such, the use by CFC of the term MASTER in the trademark for its coffee product
FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the
ordinary purchasers

MCDONALDS CORPORATION v. L.C. BIG MAK BURGER, INC.,

FACTS

Petitioner McDonalds, a global chain of fast-food restaurants and owns a family of

marks including Big Mac and registered this trademark with the United States
Trademark Registry on 16 October 1979. McDonalds introduced its Big Mac
hamburger sandwiches in the Philippine market in September 1981. On 18 July 1985,
the PBPTT allowed registration of the Big Mac mark in the Principal Register based on
its Home Registration in the United States. McGeorge Food Industries is McDonalds
Philippine franchisee.

Respondent L.C. Big Mak Burger, Inc. operates fast-food outlets and snack vans in
Metro Manila and nearby provinces and its menu includes hamburger sandwiches and
other food items.

On 21 October 1988, Respondent Corporation applied with the PBPTT for the
registration of the Big Mak mark for its hamburger sandwiches. McDonalds opposed
respondent corporations application on the ground that Big Mak was a colorable
imitation of its registered Big Mac mark for the same food products.

Petitioners on 6 June 1990 sued respondents in the Regional Trial Court for
trademark infringement and unfair competition. The RTC issued a temporary
restraining order (TRO) against respondents enjoining them from using the Big Mak
mark in the operation of their business.

LC Big Mak admitted that they have been using the name Big Mak Burger for their
fast-food business but claimed that McDonalds does not have an exclusive right to the
Big Mac mark or to any other similar mark. They point out that there are series of
registration made on the name Big Mak by other entities. In addition, they are not
liable for trademark infringement or for unfair competition, as the Big Mak mark they
sought to register does not constitute a colorable imitation of the Big Mac mark.

The RTC found LC Big Mak liable for trademark infringement and unfair
competition

There exist some distinctions between the names Big Mak and Big Mak as appearing
in the respective signages, wrappers and containers of the food products of the
parties. But infringement goes beyond the physical features of the questioned name
and the original name. There are still other factors to be considered.

Significantly, the both parties are in the business of fast-food chains and restaurants.
An average person who is hungry and wants to eat a hamburger sandwich may not be
discriminating enough to look for a Mc Donalds restaurant and buy a Big Mak
hamburger. Once he sees a stall selling hamburger sandwich, in all likelihood, he will
dip into his pocket and order a Big Mak hamburger sandwich.

Though the selling point is different, but the thing is that what is being sold by both
contending parties is a food item a hamburger sandwich which is for immediate
consumption, so that a buyer may easily be confused or deceived into thinking that
the B[ig] M[ak] hamburger sandwich he bought is a food-product of plaintiff
McDonalds, or a subsidiary or allied outlet thereof. LC Big Mak appealed to the Court
of Appeals. The C.A. reversed the ruling of RTC and asks Ms. Donald to pay L.C.
with damages.

ISSUE: Whether LC Big Mak is liable for Trade Mark infringement

HELD:

YES. LC Big Mak is liable for infringement, Section 22 of Republic Act No. 166, as
amended, defines trademark infringement as follows:

Infringement, what constitutes. - Any person who [1] shall use, without the consent of
the registrant, any reproduction, counterfeit, copy or colorable imitation of any
registered mark or trade-name in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in connection with which such use
is likely to cause confusion or mistake or to deceive purchasers or others as to the
source or origin of such goods or services, or identity of such business

To establish trademark infringement, the following elements must be shown: (1) the
validity of plaintiff's mark; (2) the plaintiff's ownership of the mark; and (3) the use of
the mark or its colorable imitation by the alleged infringer results in "likelihood of
confusion." Of these, it is the element of likelihood of confusion that is the gravamen
of trademark infringement.

1st element:

A mark is valid if it is distinctive and not merely generic and descriptive.

The "Big Mac" mark, is treated in its entirety and not dissected word for word, it is
neither generic nor descriptive since it falls under the class of fanciful or arbitrary
marks as it bears no logical relation to the actual characteristics of the product it
represents. As such, it is highly distinctive and thus valid.

2nd element:

Petitioners have duly established McDonald's exclusive ownership of the "Big Mac"
mark. Prior valid registrants of the said mark had already assigned his rights to
McDonald's.

3rd element:

Section 22 covers two types of confusion arising from the use of similar or colorable
imitation marks, namely:

1. Confusion of goods -confusion in which the ordinarily prudent purchaser

would be induced to purchase one product in the belief that he was
purchasing the other.
2. Confusion of business -though the goods of the parties are different, the
defendant's product is such as might reasonably be assumed to originate with
the plaintiff, and the public would then be deceived either into that belief or
into the belief that there is some connection between the plaintiff and
defendant which, in fact, does not exist.

There is confusion of goods in this case since respondents used the "Big Mak" mark on
the same goods, i.e. hamburger sandwiches, that petitioners' "Big Mac" mark is used.
There is also confusion of business due to Respondents' use of the "Big Mak" mark in
the sale of hamburgers, the same business that petitioners are engaged in, also
results in confusion of business.

The registered trademark owner may use his mark on the same or similar products, in
different segments of the market, and at different price levels depending on variations
of the products for specific segments of the market and enjoys protection in product
and market areas that are the normal potential expansion of his business.

In determining likelihood of confusion, the Court has relied on the dominancy test
over the holistic test.

1. Dominancy test - similarity of the prevalent features of the competing

trademarks that might cause confusion
2. Holistic test - consideration of the entirety of the marks as applied to the
products, including the labels and packaging.

Applying the dominancy test, Respondents' use of the "Big Mak" mark results in
likelihood of confusion. Aurally the two marks are the same, with the first word of
both marks phonetically the same, and the second word of both marks also
phonetically the same. Visually, the two marks have both two words and six letters,
with the first word of both marks having the same letters and the second word having
the same first two letters.

SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT V. DEVELOPERS GROUP

OF COMPANIES (G.R. NO. 159938)

Facts:
DGCI claims ownership of "Shangri-La" mark and "S" logo in the Philippines
on the strength of its prior use thereof within the country and subsequently applied
for and was granted registration of the Shangri-La mark and S logo in its restaurant
business. Petitioner Shangri-La, chain of hotels and establishments moved to cancel
the registration of the mark on the ground that it was illegally and fraudulently
obtained and appropriated by respondents. Petitioner also moved to register the mark
and logo in its own name. Later, respondent DGCI filed before the trial court a
complaint for infringement against petitioner alleging that DGCI had been the prior
exclusive user and the registered owner in the Philippines of said mark and logo.
Petitioner Shangri-La argued that respondent had no right to apply for the registration
because it did not have prior actual commercial use thereof. The trial court found for
respondent. CA affirmed.

Issue: Whether respondents prior use of the mark is a requirement for its
registration?

Ruling:
Yes.While the present law on trademarks has dispensed with the requirement
of prior actual use at the time of registration, the law in force at the time of
registration must be applied. Under the provisions of the former trademark law, R.A.
No. 166, as amended, hence, the law in force at the time of respondents application
for registration of trademark, the root of ownership of a trademark is actual use in
commerce. Section 2 of said law requires that before a trademark can be registered, it
must have been actually used in commerce and service for not less than two months
in the Philippines prior to the filing of an application for its registration. Trademark is
a creation of use and therefore actual use is a pre-requisite to exclusive ownership
and its registration with the Philippine Patent Office is a mere administrative
confirmation of the existence of such right.
While the petitioners may not have qualified under Section 2 of R.A. No. 166
as a registrant, neither did respondent DGCI, since the latter also failed to fulfill the 2-
month actual use requirement. What is worse, DGCI was not even the owner of the
mark. For it to have been the owner, the mark must not have been already
appropriated (i.e., used) by someone else. At the time of respondent DGCIs
registration of the mark, the same was already being used by the petitioners, albeit
abroad, of which DGCIs president was fully aware.
McDONALDS CORPORATION vs MACJOY FASTFOOD CORPORATION

FACTS

MacJoy Fastfood Corporation filed with the Intellectual Property Office (IPO), an
application for the registration of the trademark MACJOY & DEVICE. Petitioner
McDonalds Corporation filed a verified Notice of Opposition against the respondents
application claiming that the trademark MACJOY & DEVICE so resembles its
corporate logo, (Golden Arches or M design) and its marks. Such that when used on
identical or related goods, the trademark applied for would confuse or deceive
purchasers into believing that the goods originate from the same source or origin.
That use and adoption in bad faith of the MACJOY & DEVICE mark would falsely tend
to suggest a connection or affiliation with petitioners .

Respondent denied the allegations of the petitioner and averred that it has used the
mark MACJOY for the past many years in good faith and has spent considerable sums
of money for said marks extensive promotion in tri-media, especially in Cebu City
where it has been doing business long before the petitioner opened its outlet sometime
in 1992; and that its use of said mark would not confuse affiliation with the petitioner.

The IPO, ratiocinating that the predominance of (1.) the letter M, and (2.) the prefixes
Mac/Mc in both the MACJOY and the MCDONALDS marks lead to the conclusion that
there is confusing similarity between them especially since both are used on almost
the same products

The CA,, however, found no confusing similarity between the marks MACJOY and
MCDONALDS.

ISSUE

Whether or not there is a confusingly similarity between two marks

RULING
Trademark as any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof adopted and used by a manufacturer or merchant on his goods to
identify and distinguish them from those manufactured, sold, or dealt in by others.

In determining similarity and likelihood of confusion, jurisprudence has developed two

tests, the dominancy test and the holistic test.

The dominancy test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion or deception.

The holistic test requires the court to consider the entirety of the marks as applied to
the products, including the labels and packaging, in determining confusing similarity.

The IPO used the dominancy test in concluding that there was confusing similarity
between the two (2) trademarks. The CA applied the holistic test. (The question now,
what test to apply?)

IN THIS CASE, the dominancy test being the one more suitable. Under the dominancy
test, courts give greater weight to the similarity of the appearance of the product
arising from the adoption of the dominant features of the registered mark,
disregarding minor differences. Courts will consider more the aural and visual
impressions created by the marks in the public mind, giving little weight to factors
like prices, quality, sales outlets and market segments.

The Court finds that herein petitioners MCDONALDS and respondents MACJOY
marks are confusingly similar. To wit;
1. Both marks use (1) the corporate M design logo and (2) the prefixes Mc and/or
Mac as dominant features. The first letter M in both marks puts emphasis on
the prefixes Mc and/or Mac by the similar way in which they are depicted i.e.
in an arch-like, capitalized and stylized manner. It is the prefix Mc, an
abbreviation of Mac, which visually and aurally catches the attention of the
consuming public.
2. Both trademarks are used in the sale of fastfood products.
Now, who has the rightful claim of ownership over the said marks?
GENERAL RULE: A mark is valid if it is distinctive and hence not barred from
registration under the Trademark Law. However, once registered, not only the marks
validity but also the registrants ownership thereof is prima facie presumed. Hence,
Mcdonalds is the rightful owner. Its registration can be traced back since 1977.

Respondents contention that it was the first user of the mark in the Philippines is
downright unmeritorious. For the requirement of actual use in commerce before one
may register a trademark, trade-name and service mark under the Trademark Law
pertains to the territorial jurisdiction of the Philippines and is not only confined to a
certain region, province, city or barangay.

8. LEVI STRAUSS (PHILS.) INC. V TONY LIM (2008) [GR NO.162311] J. REYES

FACTS: 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. 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.

Operatives of the Philippine National Police (PNP) Criminal Investigation Unit served
search warrants on respondents premises. As a result, several items were seized from
the premises. The PNP CIC claimed that a confusing similarity could be noted between
petitioners LEVIs jeans and respondents LIVES denim jeans and pants.

Respondent countered 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.

ISSUE:

(1) WON the respondent was engaged in the manufacture, sale, and distribution of
products similar to those of petitioner.

(2) WON the issue of confusion should only be determined at the point of sale.

HELD:

(1) No. 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. Petitioner argues that the element of intent to
deceive may be inferred from the similarity of the goods or their appearance. The
argument is specious on two fronts. (MAY ISSUE DIN KASI NG UNFAIR COMPETITON
DITO SA CASE)

First, where the similarity in the appearance of the goods as packed and offered for
sale is so striking, intent to deceive may be inferred. However, as found by the
investigating prosecutor and the DOJ Secretaries, striking similarity between the
competing goods is not present.
Second, the confusing similarity of the goods was precisely in issue during the
preliminary investigation. As such, the element of intent to deceive could not arise
without the investigating prosecutors or the DOJ Secretarys finding that such
confusing similarity exists. Since confusing similarity was not found, the element of
fraud or deception could not be inferred.

Also, in Emerald vs 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.

In the present case, respondents goods were not clothed with an appearance which is
likely to deceive the ordinary purchaser exercising ordinary care, to wit:

First, the LIVES mark of the respondents goods is spelled and pronounced differently
from the LEVIS mark of the complainant.

Second, the design of the patches attached to the backpockets of the respondents
goods depicts three men on either side of a pair of jeans attempting to pull apart said
jeans, while the goods manufactured by complainant with patches also attached at the
right backpockets depicts two horses being whipped by two men in an attempt to tear
apart a pair of jeans. It is very clear therefore that the design of the backpocket
patches by the respondent is different from that of the complainant because obviously,
there is a great difference between a man and a horse and this will naturally not
escape the eyes of an ordinary purchaser.

Third, the manner by which Levis jeans are packed and sold with carton tickets
attached to the products cannot be appropriated solely by complainant to the
exclusion of all other manufacturers of same class.

Fourth, evidence shows that there is a copyright registration issued by the National
Library over the backpocket design of the respondent. And this copyright registration
gives the respondent the right to use the same in his goods.

(2) To determine the likelihood of confusion, mistake or deception, all relevant factors
and circumstances should be taken into consideration, such as the circumstances
under which the goods are sold, the class of purchasers, and the actual occurrence or
absence of confusion. Thus, the existence of some similarities between LIVES jeans
and LEVIS garments would not ipso facto equate to fraudulent intent on the part of
respondent. The CA noted that respondent used affirmative and precautionary
distinguishing features in his products for differentiation. The appellate court
considered the spelling and pronunciation of the marks; the difference in the designs
of the back pockets; the dissimilarity between the carton tickets; and the pricing and
sale of petitioners products in upscale exclusive specialty shops. The CA also
disregarded the theory of post-sale confusion propounded by petitioner, relying
instead on the view that the probability of deception must be determined at the point
of sale

IN-N-OUT BURGER, INC., petitioner,

vs.
SEHWANI, INCORPORATED AND/OR BENITAS FRITES, INC., respondents.

FACTS:

Petitioner IN-N-OUT BURGER, INC., a business entity incorporated under the laws of
California, United States (US) of America, which is a signatory to the Convention of
Paris on Protection of Industrial Property and the Agreement on Trade Related Aspects
of Intellectual Property Rights (TRIPS). Petitioner is engaged mainly in the restaurant
business, but it has never engaged in business in the Philippines. Respondents
Sehwani, Incorporated and Benita Frites, Inc. are corporations organized in the
Philippines.
Sometime in 1997, petitioner filed trademark and service mark applications with the
Bureau of Trademarks (BOT) of the IPO for "IN-N-OUT" and "IN-N-OUT Burger &
Arrow Design." Petitioner later found out, through the Official Action Papers issued by
the IPO, that respondent Sehwani, Incorporated had already obtained Trademark
Registration for the mark "IN N OUT (the inside of the letter "O" formed like a star)." By
virtue of a licensing agreement, Benita Frites, Inc. was able to use the registered mark
of respondent Sehwani, Incorporated.

Petitioner eventually filed before the Bureau of Legal Affairs (BLA) of the IPO an
administrative complaint against respondents for unfair competition and cancellation
of trademark registration. Petitioner averred in its complaint that it is the owner of the
trade name IN-N-OUT and the following trademarks: (1) "IN-N-OUT"; (2) "IN-N-OUT
Burger & Arrow Design"; and (3) "IN-N-OUT Burger Logo." These trademarks are
registered with the Trademark Office of the US and in various parts of the world, are
internationally well-known, and have become distinctive of its business and goods
through its long and exclusive commercial use. Petitioner pointed out that its
internationally well-known trademarks and the mark of the respondents are all
registered for the restaurant business and are clearly identical and confusingly
similar. Petitioner claimed that respondents are making it appear that their goods and
services are those of the petitioner, thus, misleading ordinary and unsuspecting
consumers that they are purchasing petitioners products.

Sometime in 1991, respondent Sehwani, Incorporated filed with the then Bureau of
Patents, Trademarks and Technology Transfer (BPTTT) an application for the
registration of the mark "IN N OUT (the inside of the letter "O" formed like a star)."
Upon approval of its application, a certificate of registration of the said mark was
issued in the name of respondent Sehwani, Incorporated. Respondents Sehwani,
Incorporated and Benita Frites, Inc. entered into a Licensing Agreement, wherein the
former entitled the latter to use its registered mark, "IN N OUT." Respondents asserted
that respondent Sehwani, Incorporated, being the registered owner of the mark "IN N
OUT," should be accorded the presumption of a valid registration of its mark with the
exclusive right to use the same. Respondents argued that none of the grounds
provided under the Intellectual Property Code for the cancellation of a certificate of
registration are present in this case.

Subsequently, the IPO Director of Legal Affairs, Estrellita Beltran-Abelardo, rendered a

Decision in favor of petitioner. According to said Decision, petitioner had the legal
capacity to sue in the Philippines, since its country of origin or domicile was a member
of and a signatory to the Convention of Paris on Protection of Industrial Property. And
although petitioner had never done business in the Philippines, it was widely known
in this country through the use herein of products bearing its corporate and trade
name. Petitioners marks are internationally well-known, given the world-wide
registration of the mark "IN-N-OUT," and its numerous advertisements in various
publications and in the Internet. Moreover, the IPO had already declared in a previous
inter partes case that "In-N-Out Burger and Arrow Design" was an internationally
well-known mark. Given these circumstances, the IPO Director for Legal Affairs
pronounced in her Decision that petitioner had the right to use its tradename and
mark "IN-N-OUT" in the Philippines to the exclusion of others, including the
respondents. However, respondents used the mark "IN N OUT" in good faith and were
not guilty of unfair competition, since respondent Sehwani, Incorporated did not
evince any intent to ride upon petitioners goodwill by copying the mark "IN-N-OUT
Burger" exactly. The inside of the letter "O" in the mark used by respondents formed a
star. In addition, the simple act of respondent Sehwani, Incorporated of inquiring into
the existence of a pending application for registration of the "IN-N-OUT" mark was not
deemed fraudulent.

Sometime in 2005, the Court of Appeals rendered a Decision denying respondents

Petition and affirming the Order of the IPO Director General. The appellate court
confirmed that respondents appeal before the IPO Director General was filed out of
time and that it was only proper to cancel the registration of the disputed trademark
in the name of respondent Sehwani, Incorporated and to permanently enjoin
respondents from using the same.

ISSUE: WON the IPO have jurisdiction over the cases involving provisions of the IPC?
HELD: Yes

The Court disagrees with the Court of Appeals.

Section 10 of the Intellectual Property Code specifically identifies the functions of the
Bureau of Legal Affairs, thus:

Section 10. The Bureau of Legal Affairs.The Bureau of Legal Affairs shall have
the following functions:

10.1 Hear and decide opposition to the application for registration of

marks; cancellation of trademarks; subject to the provisions of Section 64,
cancellation of patents and utility models, and industrial designs; and
petitions for compulsory licensing of patents;

10.2 (a) Exercise original jurisdiction in administrative complaints for

violations of laws involving intellectual property rights; Provided, That
its jurisdiction is limited to complaints where the total damages claimed
are not less than Two hundred thousand pesos
(P200,000): Provided, futher, That availment of the provisional remedies
may be granted in accordance with the Rules of Court. The Director of
Legal Affairs shall have the power to hold and punish for contempt all those
who disregard orders or writs issued in the course of the proceedings.

(b) After formal investigation, the Director for Legal Affairs may impose one (1)
or more of the following administrative penalties:

(i) The issuance of a cease and desist order which shall specify the
acts that the respondent shall cease and desist from and shall require
him to submit a compliance report within a reasonable time which
shall be fixed in the order;

(ii) The acceptance of a voluntary assurance of compliance or

discontinuance as may be imposed. Such voluntary assurance may
include one or more of the following:

(1) An assurance to comply with the provisions of the

intellectual property law violated;

(2) An assurance to refrain from engaging in unlawful and

unfair acts and practices subject of the formal investigation

(3) An assurance to recall, replace, repair, or refund the

money value of defective goods distributed in commerce; and

(4) An assurance to reimburse the complainant the expenses

and costs incurred in prosecuting the case in the Bureau of
Legal Affairs.

The Director of Legal Affairs may also require the respondent

to submit periodic compliance reports and file a bond to
guarantee compliance of his undertaking.

(iii) The condemnation or seizure of products which are subject of the

offense. The goods seized hereunder shall be disposed of in such
manner as may be deemed appropriate by the Director of Legal
Affairs, such as by sale, donation to distressed local governments or
to charitable or relief institutions, exportation, recycling into other
goods, or any combination thereof, under such guidelines as he may
provide;
 (iv) The forfeiture of paraphernalia and all real and personal
properties which have been used in the commission of the offense;

(v) The imposition of administrative fines in such amount as deemed

reasonable by the Director of Legal Affairs, which shall in no case be
less than Five thousand pesos (P5,000) nor more than One hundred
fifty thousand pesos (P150,000). In addition, an additional fine of not
more than One thousand pesos (P1,000) shall be imposed for each
day of continuing violation;

(vi) The cancellation of any permit, license, authority, or

registration which may have been granted by the Office, or the
suspension of the validity thereof for such period of time as the
Director of Legal Affairs may deem reasonable which shall not exceed
one (1) year;

(vii) The withholding of any permit, license, authority, or registration

which is being secured by the respondent from the Office;

(viii) The assessment of damages;

(ix) Censure; and

(x) Other analogous penalties or sanctions.

10.3 The Director General may by Regulations establish the procedure to

govern the implementation of this Section.43 (Emphasis provided.)

The Intellectual Property Code also expressly recognizes the appellate jurisdiction of
the IPO Director General over the decisions of the IPO Director of Legal Affairs, to wit:

Section 7. The Director General and Deputies Director General. 7.1 Fuctions.
The Director General shall exercise the following powers and functions:

xxxx

b) Exercise exclusive appellate jurisdiction over all decisions rendered by the

Director of Legal Affairs, the Director of Patents, the Director of Trademarks,
and the Director of Documentation, Information and Technology Transfer
Bureau. The decisions of the Director General in the exercise of his appellate
jurisdiction in respect of the decisions of the Director of Patents, and the
Director of Trademarks shall be appealable to the Court of Appeals in
accordance with the Rules of Court; and those in respect of the decisions of
the Director of Documentation, Information and Technology Transfer Bureau
shall be appealable to the Secretary of Trade and Industry;

Based on the foregoing discussion, the IPO Director of Legal Affairs had jurisdiction to
decide the petitioners administrative case against respondents and the IPO Director
General had exclusive jurisdiction over the appeal of the judgment of the IPO Director
of Legal Affairs.

ESPIRITU VS. PETRON CORPORATION

FACTS: Respondent Petron Corporation (Petron) sold and distributed liquefied

petroleum gas (LPG) in cylinder tanks that carried its trademark "Gasul."1 Respondent
Carmen J. Doloiras owned and operated Kristina Patricia Enterprises (KPE), the
exclusive distributor of Gasul LPGs in the whole of Sorsogon.2 Jose Nelson Doloiras
(Jose) served as KPEs manager. Bicol Gas Refilling Plant Corporation (Bicol Gas) was
also in the business of selling and distributing LPGs in Sorsogon but theirs carried the
trademark "Bicol Savers Gas." Petitioner Audie Llona managed Bicol Gas. Bicol Gas
agreed with KPE for the swapping of "captured cylinders" since one distributor could
not refill captured cylinders with its own brand of LPG. KPEs Jose saw a particular
Bicol Gas truck on the Maharlika Highway and it had on it one unsealed 50-kg Gasul
tank and one 50-kg Shellane tank. Jose found out that the Gasul and Shellane tanks
were filled up by Bicol Gas. KPE filed a complaint against petitioners for illegally
filling up registered cylinder tanks, infringement of trademarks and unfair
competition. The provincial prosecutor ruled that there was probable cause only for
unlawfully filling up registered tanks. Petron and KPE filed a petition for review with
the Office of the Regional State Prosecutor which initially denied the petition but
partially granted it on motion for reconsideration. The Office of the Regional State
Prosecutor ordered the filing of additional information for unfair competition. It ruled,
however, that no case for trademark infringement was present. The Secretary of
Justice denied the appeal of Petron and KPE and their motion for reconsideration.
Petron and KPE filed a special civil action for certiorari with the Court of Appeals
which reversed the Secretary of Justices ruling. It held that unfair competition does
not necessarily absorb trademark infringement. Consequently, the court ordered the
filing of additional charges of trademark infringement.

ISSUE: Whether or not the facts of the case warranted the filing of charges against the
petitioners for Trademark infringement consisting in Bicol Gas use of a trademark
that is confusingly similar to Petrons registered "Gasul" trademark?

RULING: No, there is no trademark infringement. The crime of trademark

infringement provides that it is committed by any person who shall, without the
consent of the owner of the registered mark:

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

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.

KPE and Petron have to show that the alleged infringer, the responsible officers and
staff of Bicol Gas, used Petrons Gasul trademark or a confusingly similar trademark
on Bicol Gas tanks with intent to deceive the public and defraud its competitor as to
what it is selling. However, the allegations in the complaint do not show that Bicol Gas
painted on its own tanks Petrons Gasul trademark or a confusingly similar version of
the same to deceive its customers and cheat Petron. Indeed, in this case, the one tank
bearing the mark of Petron Gasul found in a truck full of Bicol Gas tanks was a
genuine Petron Gasul tank, more of a captured cylinder belonging to competition. No
proof has been shown that Bicol Gas has gone into the business of distributing
imitation Petron Gasul LPGs.

PROSOURCE INTERNATIONAL, INC. vs. HORPHAG RESEARCH MANAGEMENT SA

FACTS

Respondent Horphag Research Management SA is a corporation duly

organized and existing under the laws of Switzerland and the owner of trademark
PYCNOGENOL, a food supplement sold and distributed by Zuellig Pharma
Corporation. Respondent later discovered that petitioner Prosource International, Inc.
was also distributing a similar food supplement using the mark PCO-GENOLS since
1996. This prompted respondent to demand that petitioner cease and desist from
using the aforesaid mark. Without notifying respondent, petitioner discontinued the
use of, and withdrew from the market, the products under the name PCO-GENOLS as
of June 19, 2000. It, likewise, changed its mark from PCO-GENOLS to PCO-PLUS.
Respondent filed a Complaint for Infringement of Trademark with Prayer for
Preliminary Injunction against petitioner, praying that the latter cease and desist from
using the brand PCO-GENOLS for being confusingly similar with respondents
trademark PYCNOGENOL. It, likewise, prayed for actual and nominal damages, as
well as attorneys fees.

ISSUE: Whether or not Court of Appeals erred in affirming the ruling of the Lower
Court that Respondents trademark pycnogenols was infringed by Petitioners pco-
genols.

HELD:

NO. It must be recalled that respondent filed a complaint for trademark

infringement against petitioner for the latters use of the mark PCO-GENOLS which
the former claimed to be confusingly similar to its trademark PYCNOGENOL.
Petitioners use of the questioned mark started in 1996 and ended in June 2000. The
instant case should thus be decided in light of the provisions of Republic Act No. 166
for the acts committed until December 31, 1997, and R.A. No. 8293 for those
committed from January 1, 1998 until June 19, 2000. A trademark is any distinctive
word, name, symbol, emblem, sign, or device, or any combination thereof, adopted
and used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt by others. Inarguably, a trademark
deserves protection. In determining similarity and likelihood of confusion,
jurisprudence has developed two tests: the Dominancy Test and the Holistic or Totality
Test. The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion and deception, thus constituting
infringement. If the competing trademark contains the main, essential and dominant
features of another, and confusion or deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor is it necessary that the infringing
label should suggest an effort to imitate. 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
purchasers. Courts will consider more the aural and visual impressions created by the
marks in the public mind, giving little weight to factors like prices, quality, sales
outlets, and market segments. Petitioner is liable for trademark infringement.

Coffee Planters Inc. vs San Francisco Coffee and Roastery

Facts:

Petitioner Coffee Partners entered into a franchise agreement with Coffee Partners Ltd.
to operate coffee shops in the country using the trademark San Francisco Coffee.
Respondent on the other hand, is a local corporation engaged in the wholesale and
retail sale of coffee and uses the business name San Francisco Coffee & Roastery
registered with the DTI. Later, respondent filed an infringement and/or unfair
competition complaint against petitioner alleging that the latter was about to open a
coffee shop under the name San Francisco Coffee causing confusion in the minds of
the public as it bore a similar name and is engaged also in selling of coffee. Petitioner
contended no infringement would arise because respondents tradename was not
registered.

The Ruling of the Bureau of Legal Affairs-Intellectual Property Office

In its 14 August 2002 Decision, the BLA-IPO held that petitioners trademark
infringed on respondents trade name. It ruled that the right to the exclusive use of a
trade name with freedom from infringement by similarity is determined from priority of
adoption. Since respondent registered its business name with the DTI in 1995 and
petitioner registered its trademark with the IPO in 2001 in the Philippines and in 1997
in other countries, then respondent must be protected from infringement of its trade
name.

The Ruling of the Office of the Director General-Intellectual Property Office

In its 22 October 2003 Decision, the ODG-IPO reversed the BLA-IPO. It ruled that
petitioners use of the trademark SAN FRANCISCO COFFEE did not infringe on
respondent's trade name. The ODG-IPO found that respondent had stopped using its
trade name after it entered into a joint venture with Boyd Coffee USA in 1998 while
petitioner continuously used the trademark since June 2001 when it opened its first
coffee shop in Libis, Quezon City. It ruled that between a subsequent user of a trade
name in good faith and a prior user who had stopped using such trade name, it would
be inequitable to rule in favor of the latter.

The Ruling of the Court of Appeals

In its 15 June 2005 Decision, the Court of Appeals set aside the 22 October 2003
decision of the ODG-IPO in so far as it ruled that there was no infringement. It
reinstated the 14 August 2002 decision of the BLA-IPO finding infringement. The
appellate court denied respondents claim for actual damages and retained the award
of attorneys fees. In its 1 September 2005 Resolution, the Court of Appeals denied
petitioners motion for reconsideration and respondents motion for partial
reconsideration.

Issue:

The sole issue is whether 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:

YES.

In Prosource International, Inc. v. Horphag Research Management SA, this Court laid
down what constitutes infringement of an unregistered trade name, thus:

(1) The trademark being infringed is registered in the Intellectual Property Office;
however, in infringement of trade name, the same need not be registered;

(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably

imitated by the infringer;

(3) The infringing mark or trade name is used in connection with the sale, offering for
sale, or advertising of any goods, business or services; or the infringing mark or trade
name is applied to labels, signs, prints, packages, wrappers, receptacles, or
advertisements intended to be used upon or in connection with such goods, business,
or services;

(4) The use or application of the infringing mark or trade name is likely to cause
confusion or mistake or to deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or services or the identity of
such business; and

(5) It is without the consent of the trademark or trade name owner or the assignee
thereof.
RA 8293, which took effect on 1 January 1998, has dispensed with the registration
requirement. Section 165.2 of RA 8293 categorically states that trade names shall be
protected, even prior to or without registration with the IPO, against any unlawful act
including any subsequent use of the trade name by a third party, whether as a trade
name or a trademark likely to mislead the public.

It is the likelihood of confusion that is the gravamen of infringement. Applying 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. The descriptive words SAN FRANCISCO COFFEE are precisely the
dominant features of respondents trade name. Petitioner and respondent are engaged
in the same business of selling coffee, whether wholesale or retail. The likelihood of
confusion is higher in cases where the business of one corporation is the same or
substantially the same as that of another corporation. In this case, the consuming
public will likely be confused as to the source of the coffee being sold at petitioners
coffee shops.

Chester Uyco et al., v. Vicente Lo

The controversy was taken from the case where respondent Lo and Philippine
Burners
Manufacturing Corporation (PBMC) filed a complaint against Wintrade Industrial
Sales Corporation
(Wintrade) and its officers and National Hardware for violation of Section 169.1 in
relation to section
170 of RA 8293.
Lo claimed that GASIREL was the owner of the disputed trademark and assigned to
him to be used in
all countries except those in Europe and America. Lo also claimed that Wintrade has
no authority to
use these mark because while prior authority was given to wintrade predecessor in
interest the
same was revoked already. The kerosene burners manufactured by wintrade cause
confusion,
mistake, and deception on the part of the buying public.
Wintrade contend that Lo was not a real party in interest but GASIREL and that the
mark Made in
Portugal and Original Portugal are merely descriptive and refer to the source of the
design and
history of manufacture.
State prosecutor found probable cause and gave credence to the assignment of
trademark in favour
of Mr. Vicente Lo and the same was affirmed by the DOJ and subsequently by the CA.
The SC on
review of the matters likewise affirmed the decision of the CA.
Now MR was filed by the petitioners maintaining its contention that the used of words
Made in
Portugal and Original Portugal are merely descriptive and refer to the source of the
design and
history of manufacture and not to the goods and only purchased during the test buy
made by
GASIREL.

ISSUE: W/N MR should be given credence.

RULING:
No, the owner of National Hardware certain Chua made an admission that wintrade
has been
furnishing him with kerosene burners with the marking made in Portugal for the past
20 years. Also
that he is aware that Wintrade is no longer authorized to deal, distribute or sell
kerosene burners
bearing the mark of HIPOLITO and SEAHORSE device with markings Made in Portugal
on the Wrapper.
Therefore Wintrade knowingly used the mark without authority for purposes of
deceiving the buyer
in public. The argument that the used of the word made in Portugal refer to the origin
of the design
does not negate the findings of probable cause.

VICTIORIO P. DIAZ V. PEOPLE OF THE PHILIPPINES, GR. 180677, FEB. 18, 2013

Facts:

On Feb. 10, 2000, the DOJ filed two informations in the RTC of Las Pinas charging
Diaz with violation of Section 155, in relation to Section 170 of R.A. No. 8293, also
known as the Intellectual Property Code.
Levis Strauss and Company (Levis), a foreign corporation based in the State
of Delaware, USA, had been engaged in the apparel business. It is the owner of
trademarks and designs of Levis 501, the accurate design, the two-horse brand, the
two-horse patch with pattern accurate, and the composite tab accurate.
After receiving information that Diaz was selling counterfeit Levis 501 jeans
in his tailoring shops in Almanza and Talon, Las Pinas City, Levis Philippines hired a
private investigation group to verify the information. Surveillance and the purchase of
jeans from the tailoring shops of Diaz established that the jeans bought from the
tailoring shops of Diaz were counterfeit or imitations of Levis 501. Levis sought the
assistance of the NBI, search warrants were issued and executed.
The RTC found Diaz guilty while the CA dismissed the appeal for late filing.

Issue:

Whether or not Diaz is guilty of trademark infringement.

Held:

In ruling in favor of Diaz, the SC explained that the holistic test is applicable
considering that the herein criminal cases also involved trademark infringement in
relation to jeans products as used in Emerald Marketing Manufacturing Corporation
v. Court of Appeals. Accordingly, the jeans trademarks of Levis Philippines and Diaz
must be considered as a whole in determining the likelihood of confusion between
them.

In deciding the case the SC provided the following reasons:

1. The products involved in the case at bar are various kinds of jeans. These are
not ordinary household items which are inexpensive. Accordingly the casual
buyer is predisposed to be more cautious and discriminating and would prefer
to mull over his purchase. Confusion and deception, is less likely.
2. The average Filipino consumer generally buys his jeans by brand. He does not
ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or
even an Armani. He is, therefore, more or less knowledgeable and familiar
with his preference and will not be easily distracted.
3. More credit should be given to the ordinary purchaser. Cast in this
particular controversy, the ordinary purchaser is not completely unwary
consumer but is the ordinary intelligent buyer considering the type of
product involved.
4. Diaz used the trademark LS JEANS TAILORING for the jeans he produced
and sold in his tailoring shops. His trademark was visually and aurally
different from the trademark LEVI STRAUSS & CO appearing on the patch of
the original jeans under the trademark . The world LS could not be confused
as derivative form LEVI STRAUSS by virtue of the LS being connected to
the word TAILORING, thereby openly suggesting that the jeans bearing the
trademark LS JEANS TAILORING came or were brought from the tailoring
shops of Diaz. Even the two-horse design are not imitations because what
appears in Diazs jeans is a buffalo design.
Birkenstock v Philippine Shoe Expo Marketing Corp
GR 194307 Nov 20, 2013
Facts: Birkenstock is a corporation organized and existing under German laws. It filed
for trademark registration of BIRKENSTOCK for shoe products. The registration
proceedings were suspended in view of an existing registration of the mark
BIRKENSTOCK AND DEVICE in favor of Philippine Shoe Expo.
Phil Shoe Expo, however, failed to file the required 10th Year Declaration of Actual Use
(DAU) of the trademark thereby resulting in the cancellation of the mark. Following
this, petitioners application for registration was published in IPOs e-Gazette. In
response, Phil Shoe Expo filed its opposition, claiming continues use in trade of the
subject trademark despite failure to file the DAU. It likewise filed a re-application for
the trademark.
The Bureau of Legal Affairs (BLA) of IPO sustained Phil Shoe Expos opposition. The
IPO director General set aside said decision and allowed Petitioner to register. CA,
however, reinstated the decision of BLA.
Issue: W/N the subject marks should be allowed registration in the name of petitioner
Held: YES.
Section 12 of RA 166 clearly provides for the automatic cancellation of registration of a
trademark for failure to file the DAU within the requisite period. Such failure is
tantamount to abandonment of any right over the trademark.
Moreover, petitioner was able to duly establish that it is the true and lawful owner of
the mark BIRKENSTOCK. It submitted evidence relating to the origin and history of
the mark from the time of its first adoption in Europe in 1774. Respondent, however,
has only used the mark for 16 years.
Section 2 of RA 166 states that in order to register a mark, one must be the owner
thereof, and must have actually used the mark in commerce in the Philippines for two
months prios to application for registration. Further, actual use in commerce is the
test of ownership, but this actual use need not be in the Philippines. Also, the mark
must not have been so appropriated by another.
Registration of trademark does not vest ownership thereof. Rather, it is ownership of
the mark that confers right to register the same. The Court found respondent to be in
bad faith for registering the Birkenstock trademark, a highly distinct and uncommon
mark obviously of German origin, for use in the same line of business

WILLAWARE PRODUCTS CORPORATION vs. JESICHRIS MANUFACTURING

CORPORATION
G.R. No. 195549 September 3, 2014

FACTS:

Jesichris Manufacturing Company filed this present complaint for damages

for unfair competition with prayer for permanent injunction to enjoin Willaware
Products Corporation from manufacturing and distributing plastic-made automotive
parts similar to those of respondent.

Jesichris alleged that since its registration in 1992, it has been manufacturing
in its Caloocan plant and distributing throughout the Philippines plastic-made
automotive parts. Willaware, on the other hand, which is engaged in the manufacture
and distribution of kitchenware items made of plastic and metal has its office near
that of Jesichris. Jesichris further alleged that in view of the physical proximity of
Willawares office to the former and in view of the fact that some of the latters
employees had transferred to the former, Willaware had developed familiarity with
Jesichris products, especially its plastic-made automotive parts.

Jesichris discovered that Willaware had been manufacturing and distributing

the same automotive parts with exactly similar design, same material and colors but
was selling these products at a lower price as the formers plastic-made automotive
parts and to the same customers.
 Jesichris alleged that it had originated the use of plastic in place of rubber in
the manufacture of automotive underchassis parts such as spring eye bushing,
stabilizer bushing, shock absorber bushing, center bearing cushions, among others.
Willawares manufacture of the same automotive parts with plastic material was taken
from Jesichris idea of using plastic for automotive parts. Also, Willaware deliberately
copied Jesichris products all of which acts constitute unfair competition.

The RTC ruled in favor of respondent. Petitioner appealed to the CA. The CA
affirmed with modification the ruling of the RTC. Dissatisfied, petitioner moved for
reconsideration. However, the same was denied for lack of merit. Hence, the present
Petition for Review.

ISSUE:

Whether or not petitioner committed acts amounting to unfair competition

under Article 28 of the Civil Code.

RULING:

Yes. The instant case falls under Article 28 of the Civil Code on human
relations, and not unfair competition under Republic Act No. 8293, as the present suit
is a damage suit and the products are not covered by patent registration. The concept
of "unfair competition" under Article 28 is very much broader than that covered by
intellectual property laws. Under the present article, which follows the extended
concept of "unfair competition" in American jurisdictions, the term covers even cases
of discovery of trade secrets of a competitor, bribery of his employees,
misrepresentation of all kinds, interference with the fulfillment of a competitors
contracts, or any malicious interference with the latters business.

In order to qualify the competition as "unfair," it must have two

characteristics: (1) it must involve an injury to a competitor or trade rival, and (2) it
must involve acts which are characterized as "contrary to good conscience," or
"shocking to judicial sensibilities," or otherwise unlawful; in the language of our law,
these include force, intimidation, deceit, machination or any other unjust, oppressive
or high-handed method. The public injury or interest is a minor factor; the essence of
the matter appears to be a private wrong perpetrated by unconscionable means.

Here, both characteristics are present.

PILIPINAS SHELL PETROLEUM CORPORATION and PETRON CORPORATION vs.

ROMARS INTERNATIONAL GASES CORPORATION

Petitioners received information that respondent was selling, offering for sale, or
distributing liquefied petroleum gas (LPG) by illegally refilling the steel cylinders
manufactured by and bearing the duly registered trademark and device of respondent
Petron. Petron then investigated the report. The investigators went to respondent's
premises located in San Juan, Baao, Camarines Sur, bringing along four empty
cylinders of Shellane, Gasul, Total and Superkalan and asked that the same be
refilled.

Respondent's employees then refilled said empty cylinders at respondent's refilling

station. The refilled cylinders were brought to the Marketing Coordinator of Petron
Gasul who verified that respondent was not authorized to distribute and/or sell, or
otherwise deal with Petron LPG products, and/or use or imitate any Petron
trademarks.

Petitioners then requested the National Bureau of Investigation (NBI) to investigate

said activities of respondent for the purpose of apprehending and prosecuting
establishments conducting illegal refilling, distribution and/or sale of LPG products
using the same containers of Petron and Shell, which acts constitute a violation of
Section 168,3 in relation to Section 1704 of Republic Act (R.A.) No. 8293, otherwise
known as the Intellectual Property Code of the Philippines, and/or Section 25 of R.A.
No. 623, otherwise known as An Act To Regulate the Use of Duly Stamped or Marked
Bottles, Boxes, Casks, Kegs, Barrels and Other Similar Containers.

The NBI proceeded with their investigation and reportedly found commercial
quantities of Petron Gasul and Shellane cylinders stockpiled at respondent's
warehouse. The NBI filed with RTC-Naga, 2 separate Applications for Search Warrant
for Violation of Section 155.1,6 in relation to Section 1707 of R.A. No. 8293 against
respondent and/or its occupants. A Search Warrant were issued. On the same day,
the NBI served the warrants at the respondent's premises in an orderly and peaceful
manner, and articles or items described in the warrants were seized.

On November 4, 2002, respondent filed a Motion to Quash Search on the following

grounds:

1. No probable cause
2. There had been a lapse of four weeks from the date of the test-buy to the date
of the search and seizure operations
3. Most of the cylinders seized were not owned by respondent but by a third
person; and (d) Edrich Enterprises is an authorized outlet of Gasul and
Marsflame.

The RTC-Naga denied the Motion to Quash.However, on March 27, 2003, respondent's
new counsel filed an Appearance with Motion for Reconsideration. It was only in said
motion where respondent raised for the first time, the issue of the impropriety of filing
the Application for Search Warrant at the RTC-Naga City when the alleged crime was
committed in a place within the territorial jurisdiction of the RTC-Iriga City. The RTC-
Naga issued an Order granting respondent's Motion for Reconsideration.

Petitioner then appealed to the CA, but the appellate court, in its Decision dated
March 13,2009, affirmed the RTC Order quashing the search warrants.

ISSUE:

1. The Court Of Appeals Gravely Erred In Ruling That Venue In An Application

For Search Warrant Is Jurisdictional. This Is Because A Search Warrant case
Is Not A Criminal Case
2. Whether the RTC-Naga acted properly in taking into consideration the issue of
the said defect in resolving respondent's motion for reconsideration where the
issue was raised for the very first time

HELD:

Section 2, Rule 126 of the Revised Rules of Criminal Procedure provides thus:

SEC. 2. Court where applications for search warrant shall be filed. - An application for
search warrant shall be filed with the following:

(a) Any court within whose territorial jurisdiction a crime was committed.

(b) For compelling reasons stated in the application, any court within the judicial
region where the crime was committed if the place of the commission of the crime is
known, or any court within the judicial region where the warrant shall be enforced.

However, if the criminal action has already been filed, the application shall only be
made in the court where the criminal action is pending.

Clearly under paragraph (b), the application for search warrant in this case should
have stated compelling reasons why the same was being filed with the RTC-Naga
instead of the RTC-Iriga City, considering that it is the latter court that has territorial
jurisdiction over the place where the alleged crime was committed and also the place
where the search warrant was enforced.

The wordings of the provision is of a mandatory nature, requiring a statement of

compelling reasons if the application is filed in a court which does not have territorial
jurisdiction over the place of commission of the crime. Since the same is protected
under Section 2, Article III of the 1987 Constitution guarantees the right of persons to
be free from unreasonable searches and seizures, and search warrants constitute a
limitation on this right. Hence, it should be construed strictly against state authorities
who would be enforcing the search warrants. On this point, then, petitioner's
application for a search warrant was indeed insufficient for failing to comply with the
requirement to state therein the compelling reasons why they had to file the
application in a court that did not have territorial jurisdiction over the place where the
alleged crime was committed.

As to the 2nd issue, the record bears out that, indeed, respondent failed to include
said issue at the first instance in its motion to quash.

The omnibus motion rule embodied in Section 8, Rule 15, in relation to Section 1,
Rule 9, demands that all available objections be included in a party's motion,
otherwise, said objections shall be deemed waived; and, the only grounds as an
exception to this rule are the following:

(a) Lack of jurisdiction over the subject matter

(b) Existence of another action pending between the same parties for the same cause

(c) Bar by prior judgment or by statute of limitations.

However, in Malaloan v. Court of Appeals, the Court held that an application for a
search warrant is a "special criminal process," rather than a criminal action:

A search warrant is defined in our jurisdiction as an order in writing issued in the

name of the People of the Philippines signed by a judge and directed to a peace officer,
commanding him to search for personal property and bring it before the court. A
search warrant is in the nature of a criminal process akin to a writ of discovery. It is a
special and peculiar remedy, drastic in its nature, and made necessary because of a
public necessity.

Clearly then, an application for a search warrant is not a criminal action.

The C.A. erred in equating the proceedings for applications for search warrants with
criminal actions themselves. As elucidated by the Court, proceedings for said
applications are not criminal in nature and, thus, the rule that venue is jurisdictional
does not apply thereto.

Evidently, the issue of whether the application should have been filed in RTC-Iriga
City or RTC-Naga, is not one involving jurisdiction because, as stated in the afore-
quoted case, the power to issue a special criminal process is inherent in all courts.

Inferring from the foregoing, the Court deems it improper for the RTC-Naga to have
even taken into consideration an issue which respondent failed to raise in its motion
to quash, as it did not involve a question of jurisdiction over the subject matter. It is
quite clear that the RTC-Naga had jurisdiction to issue criminal processes such as a
search warrant.
CATERPILLAR, INC., Petitioner, v. MANOLO P. SAMSON, Respondent.

Facts:

Caterpillar which was engaged in the manufacture and distribution of

footwear, clothing and known for six core trademarks, namely,
"CATERPILLAR", "CAT", "CATERPILLAR & DESIGN", "CAT AND
DESIGN", "WALKING MACHINES" and "TRACK-TYPE TRACTOR &
DESIGN (Core Marks filed several criminal complaints for unfair competition
in the Department of Justice (DOJ) against Samson, the proprietor of various
retail outlets in the Philippines selling footwear, bags, clothing, and related
items under the trademark "CATERPILLAR", registered in 1997 under
Trademark Registration No. 64705 issued by the Intellectual Property Office
for violation of Intellectual Property Code of the Philippines (IP Code). It also
commenced a civil action for Unfair Competition, Damages and Cancellation
of Trademark with Application for Temporary Restraining Order (TRO) and/or
Writ of Preliminary Injunction. Samson filed a Motion to Suspend Arraignment
on the ground that there exists a prejudicial question. The RTC granted the
motion stating that since the determination of who is really the lawful or
registered user of the trademark "CATERPILLAR" will ultimately determine
whether the instant criminal action shall proceed.

Issue: Whether the determination of who is the lawful or registered user of

trademark CATERPILLAR is a prejudicial question?

Ruling:

No. there is no prejudicial question if the civil and the criminal action
can, according to law, proceeds independently of each other. Under Rule 111,
Section 3 of the Revised Rules on Criminal Procedure, in the cases provided in
Articles 32, 33, 34 and 2176 of the Civil Code, the independent civil action
may be brought by the offended party. It shall proceed independently of the
criminal action and shall require only a preponderance of evidence.
In the case at bar, the common element in the acts constituting unfair
competition under Section 168 of R.A. No. 8293 is fraud. Pursuant to Article
33 of the Civil Code, in cases of defamation, fraud, and physical injuries, a
civil action for damages, entirely separate and distinct from the criminal action,
may be brought by the injured party. Hence, Civil Case No. Q-00-41446,
which as admitted by private respondent also relate to unfair competition, is an
independent civil action under Article 33 of the Civil Code. As such, it will not
operate as a prejudicial question that will justify the suspension of the criminal
cases at bar.
An action for the cancellation of trademark like Civil Case No. Q-00-
41446 is a remedy available to a person who believes that he is or will be
damaged by the registration of a mark. On the other hand, the criminal actions
for unfair competition (Criminal Cases Nos. Q-02-108043-44) involved the
determination of whether or not Samson had given his goods the general
appearance of the goods of Caterpillar, with the intent to deceive the public or
defraud Caterpillar as his competitor. In the suit for the cancellation of
trademark, the issue of lawful registration should necessarily be determined,
but registration was not a consideration necessary in unfair
competition. Indeed, unfair competition is committed if the effect of the act
is "to pass off to the public the goods of one man as the goods of another;" it is
independent of registration.

JUNO BATISTIS vs PEOPLE OF THE PHILIPPINES

FACTS
Allied Domecq Philippines, Inc., a Philippine corporation exclusively authorized to
distribute Fundador brandy products imported from Spain wholly in finished form,
initiated this case against Batistis. NBI conducted a test-buy in the premises of
Batistis, and confirmed that he was actively engaged in the manufacture, sale and
distribution of counterfeit Fundador.
The Prosecutor formally charged Batistis in the RTC with two separate offenses,
namely, infringement of trademark and unfair competition.
Batistis claims that the only direct proofs of his guilt were the self-serving 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.
RTC: 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).
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.

ISSUE
Whether or not Batistis is in violation of infringement of trademark and/or unfair
competition

RULING
1. Batistis assigned errors stated in the petition require a re-appreciation and re-
examination of the trial evidence. As such, they raise issues evidentiary and factual in
nature. The appeal is dismissible on that basis.

2. The RTC and the CA correctly appreciated the evidence against the accused.
Batistis exerted the effort to make the counterfeit products look genuine to deceive the
unwary public into regarding the products as genuine. The buying public would be
easy to fall for the counterfeit products due to their having been given the appearance
of the genuine products, particularly with the difficulty of detecting whether the
products were fake or real if the buyers had no experience and the tools for detection,
like black light. He thereby infringed the registered Fundador trademark by the
colorable imitation of it through applying the dominant features of the trademark on
the fake products, particularly the two bottles filled with Fundador brandy. His acts
constituted infringement of trademark as set forth in Section 155

Several characteristics of counterfeited products

(a)BIR seal label attached to the confiscated products did not reflect the word tunay
when flashed a black light;
(b) the tamper evident ring on the confiscated item did not contain the word Fundador;
(c) the word Fundador on the label was printed flat with sharper edges

3. The penalty thus fixed was contrary to the Indeterminate Sentence Law. CA
imposed the the penalty of imprisonment of TWO (2) YEARS.

TAIWAN KOLIN VS KOLIN ELECTRONICS

FACTS: Taiwan Kolin Corp sought to register the trademark KOLIN in Class 9 on the
following combination of goods: television sets, cassette recorder, VCD Amplifiers,
camcorders and other audio/video electronic equipment, flat iron, vacuum cleaners,
cordless handsets, videophones, facsimile machines, teleprinters, cellular phones and
automatic goods vending machine. Kolin Electronics opposed the application on the
ground that the trademark KOLIN is identical, if not confusingly similar; with its
registered trademark KOLIN which covers the following products under Class 9 of
the Nice Classification (NCL): automatic voltage regulator, converter, recharger, stereo
booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-
DC. Kolin Electronics argued that the products are not only closely-related because
they fall under the same classification, but also because they are inherently similar for
being electronic products and are plugged into electric sockets and perform a useful
function.

ISSUE:

(1) WON petitioners KOLIN is closely-related to that of respondents.

(2) WON petitioner is entitled to its trademark registration of KOLIN.

HELD:

(1) No. The products are not related and the use of the trademark KOLIN on them
would not likely cause confusion. To confer exclusive use of a trademark, emphasis
should be on the similarity or relatedness of the goods and/or services involved and
not on the arbitrary classification or general description of their properties or
characteristics.

First, products classified under Class 9 can be further classified into five categories.
Accordingly, the goods covered by the competing marks between Taiwan Kolin and
Kolin Electronics fall under different categories. Taiwan Kolins goods are categorized
as audio visual equipments, while Kolin Electronics goods fall under devices for
controlling the distribution and use of electricity. Thus, it is erroneous to assume that
all electronic products are closely related and that the coverage of one electronic
product necessarily precludes the registration of a similar mark over another.

Second, the ordinarily intelligent buyer is not likely to be confused. The distinct visual
and aural differences between the two trademarks KOLIN, although appear to be
minimal, are sufficient to distinguish between one brand or another. The casual buyer
is predisposed to be more cautious, discriminating, and would prefer to mull over his
purchase because the products involved are various kind of electronic products which
are relatively luxury items and not considered affordable. They are not ordinarily
consumable items such as soy sauce, ketchup or soap which are of minimal cost.
Hence, confusion is less likely.

(2) Yes. Mere uniformity in categorization, by itself, does not automatically preclude
the registration of what appears to be an identical mark, if that be the case. In fact,
this Court, in a long line of cases, has held that such circumstance does not
necessarily result in any trademark infringement.

Whether or not the products covered by the trademark sought to be registered by

Taiwan Kolin, on the one hand, and those covered by the prior issued certificate of
registration in favor of Kolin Electronics, on the other, fall under the same categories
in the NCL is not the sole and decisive factor in determining a possible violation of
Kolin Electronics intellectual property right should petitioners application be granted.
It is hornbook doctrine, that emphasis should be on the similarity of the products
involved and not on the arbitrary classification or general description of their
properties or characteristics. The mere fact that one person has adopted and used a
trademark on his goods would not, without more, prevent the adoption and use of the
same trademark by others on unrelated articles of a different kind.
UFC PHILIPPINES, INC. (now merged with NUTRI-ASIA, INC., with NUTRI-ASIA,
INC. as the surviving entity),Petitioner,
vs.
BARRIO FIESTA MANUFACTURING CORPORATION, Respondent.

Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized and existing

under Philippine laws. It is the emergent entity in a merger with UFC Philippines, Inc.
that was completed on February 11, 2009. Respondent Barrio Fiesta Manufacturing
Corporation (respondent) is likewise a corporation organized and existing under
Philippine laws.

Respondent filed Application for the mark "PAPA BOY & DEVICE" for goods under
Class 30, specifically for "lechon sauce." The Intellectual Property Office (IPO)
published said application for opposition in the IP Phil. e-Gazette released.

Sometime in 2006, petitioner filed with the IPO-BLA a Verified Notice of Opposition to
the above-mentioned application and alleged that the mark "PAPA" for use on banana
catsup and other similar goods was first used [in] 1954 by Neri Papa, and thus, was
taken from his surname; After using the mark "PAP A" for about twenty-seven (27)
years, Neri Papa subsequently assigned the mark "PAPA" to Heman D. Reyes who filed
an application to register said mark "PAP A" for use on banana catsup, chili sauce,
achara, banana chips, and instant ube powder;

On November 07, 2006, Registration No. 34681 was assigned to Opposer.

Opposer has not abandoned the use of the mark "PAP A" and the variations thereof as
Opposer has continued their use up to the present. The mark "PAPA BOY & DEVICE"
is identical to the mark "PAPA" owned by Opposer and duly registered in its favor,
particularly the dominant feature thereof;

[With the] dominant feature of respondent-applicant's mark "PAPA BOY & DEVICE",
which is Opposer's "PAPA" and the variations thereof, confusion and deception is likely
to result: The consuming public, particularly the unwary customers, will be deceived,
confused, and mistaken into believing that respondent-applicant's goods come from
Opposer or are authorized by Opposer to Opposer's prejudice, which is particularly
true considering that Opposer's sister company, Southeast Asia Food, Inc., and its
predecessors-in-interest have been major manufacturers and distributors of lechon
sauce and other table sauces since 1965 under its registered mark "Mang Tomas";

In its verified opposition before the IPO, petitioner contended that "PAPA BOY &
DEVICE" is confusingly similar with its "PAPA" marks inasmuch as the former
incorporates the term "PAP A," which is the dominant feature of petitioner's "PAPA"
marks. Petitioner averred that respondent's use of "PAPA BOY & DEVICE" mark for its
lechon sauce product, if allowed, would likely lead the consuming public to believe
that said lechon sauce product originates from or is authorized by petitioner, and that
the "PAPA BOY & DEVICE" mark is a variation or derivative of petitioner's "PAPA"
marks. Petitioner argued that this was especially true considering that petitioner's
ketchup product and respondent's lechon sauce product are related articles that fall
under the same Class 30.9

Petitioner alleged that the registration of respondent's challenged mark was also likely
to damage the petitioner, considering that its former sister company, Southeast Asia
Food, Inc., and the latter's predecessors-in-interest, had been major manufacturers
and distributors of lechon and other table sauces since 1965, such as products
employing the registered "Mang Tomas" mark.

The case was referred to mediation but the parties failed to arrive at an amicable
settlement. The case was thus set for preliminary conference. Subsequently, the IPO-
BLA directed the parties to file their respective position papers and draft decisions.

The IPO-BLA rendered a Decision, sustaining petitioner's Opposition and rejecting

respondent's application for "PAPA BOY & DEVICE."
Respondent then filed a petition with the Court of Appeals, questioning the above
decision of the IPO Director General that affirmed the decision of the IPO Bureau of
Legal Affairs Director, which disallowed respondent's application for trademark
registration.

ISSUE: WON by using the dominant feature of Nutri Asias PAPA mark for PAPA
BOY & DEVICE would constitute trademark infringement?

HELD:

The petition has merit.

In Dermaline, Inc. v. Myra Pharmaceuticals, Inc., we defined a trademark as "any

distinctive word, name, symbol, emblem, sign, or device, or any combination thereof,
adopted and used by a manufacturer or merchant on his goods to identify and
distinguish them from those manufactured, sold, or dealt by others." We held that a
trademark is "an intellectual property deserving protection by law."

The rights of the trademark owner are found in the Intellectual Property Code, which
provides:

Section 147. Rights Conferred. - 147.1. The owner of a registered mark shall have
the exclusive right to prevent all third parties not having the owner's consent from
using in the course of trade identical or similar signs or containers for goods or
services which are identical or similar to those in respect of which the trademark is
registered where such use would result in a likelihood of confusion. In case of the use
of an identical sign for identical goods or services, a likelihood of confusion shall be
presumed.

Section 168. Unfair Competition, Rights, Regulation and Remedies. - 168.1. A

person who has identified in the mind of the public the goods he manufactures or
deals in, his business or services from those of others, whether or not a registered
mark is employed, has a property right in the goodwill of the said goods, business or
services so identified, which will be protected in the same manner as other property
rights.

The essential element of infringement under R.A. No. 8293 is that the infringing mark
is likely to cause confusion. In determining similarity and likelihood of confusion,
jurisprudence has developed tests - the Dominancy Test and the Holistic or Totality
Test. The Dominancy Test focuses on the similarity of the prevalent or dominant
features of the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public. Duplication or imitation is not
necessary; neither is it required that the mark sought to be registered suggests an
effort to imitate. Given more consideration are the aural and visual impressions
created by the marks on the buyers of goods, giving little weight to factors like prices,
quality, sales outlets, and market segments.

xxxx

There are two tests to determine likelihood of confusion: the dominancy test and
holistic test. The dominancy test focuses on the similarity of the main, prevalent or
essential features of the competing trademarks that might cause confusion.
Infringement takes place when the competing trademark contains the essential
features of another. Imitation or an effort to imitate is unnecessary. The question is
whether the use of the marks is likely to cause confusion or deceive purchasers.

xxxx

The scope of protection afforded to registered trademark owners is not limited

to protection from. infringers with identical goods.1wphi1 The scope of
protection extends to protection from infringers with related goods, and to
market areas that are the normal expansion of business of the registered
trademark owners. Section 138 of R.A. No. 8293 states:
Certificates of Registration. - A certificate of registration of a mark shall be prima
facie evidence of validity of the registration, the registrant's ownership of the mark,
and of the registrant's exclusive right to use the same in connection with the goods or
services and those that are related thereto specified in the certificate. x x x.

Again, this Court discussed the dominancy test and confusion of business
in Dermaline, Inc. v. Myra Pharmaceuticals, Inc.,48 and we quote:

The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion or deception. It is applied when the
trademark sought to be registered contains the main, essential and dominant features
of the earlier registered trademark, and confusion or deception is likely to result.
Duplication or imitation is not even required; neither is it necessary that the label of
the applied mark for registration should suggest an effort to imitate. The important
issue is whether the use of the marks involved would likely cause confusion or
mistake in the mind of or deceive the ordinary purchaser, or one who is accustomed to
buy, and therefore to some extent familiar with, the goods in question. Given greater
consideration are the aural and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality, sales outlets, and market
segments. The test of dominancy is now explicitly incorporated into law in Section
155.l of R.A. No. 8293 which provides-

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 xx x.

xxxx

A scrutiny of petitioner's and respondent's respective marks would show that the IPO-
BLA and the IPO Director General correctly found the word "PAPA" as the dominant
feature of petitioner's mark "PAPA KETSARAP." Contrary to respondent's contention,
"KETSARAP" cannot be the dominant feature of the mark as it is merely descriptive of
the product. Furthermore, it is the "PAPA" mark that has been in commercial use for
decades and has established awareness and goodwill among consumers.

We likewise agree with the IPO-BLA that the word "PAPA" is also the dominant feature
of respondent's "PAPA BOY & DEVICE" mark subject of the application, such that "the
word 'PAPA' is written on top of and before the other words such that it is the first
word/figure that catches the eyes."49 Furthermore, as the IPO Director General put it,
the part of respondent's mark which appears prominently to the eyes and ears is the
phrase "PAPA BOY" and that is what a purchaser of respondent's product would
immediately recall, not the smiling hog.

Under the Dominancy Test, the dominant features of the competing marks are
considered in determining whether these competing marks are confusingly similar.
Greater weight is given to the similarity of the appearance of the products arising from
the adoption of the dominant features of the registered mark, disregarding minor
differences. The visual, aural, connotative, and overall comparisons and impressions
engendered by the marks in controversy as they are encountered in the realities of the
marketplace are the main considerations (McDonald's Corporation, et al., v. L. C. Big
Mak Burger, Inc., et al., G. R. No.143993, August 18, 2004; Societe Des Produits
Nestle, S. A." et al. v. Court of Appeals, et al., G. R. No. 112012, April 4, 2001). 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. (Lim Hoa v.
Director of Patents, 100 Phil. 214 [1956]); Co Tiong Sa v. Director of Patents, et al., G.
R. No. L-5378, May 24, 1954). Duplication or imitation is not necessary; nor is it
necessary that the infringing label should suggest an effort to imitate (Lim Hoa v.
Director of Patents, supra, and Co Liang Sa v. Director of Patents, supra). Actual
confusion is not required: Only likelihood of confusion on the part of the buying public
is necessary so as to render two marks confusingly similar so as to deny the
registration of the junior mark (Sterling Products International, Inc. v. Farbenfabriken
Bayer Aktiengesellschaft, 137 Phil. 838 [1969]).

The Court of Appeals likewise erred in finding that "PAPA," being a common term of
endearment for one's father, is a word over which petitioner could not claim exclusive
use and ownership. The Merriam-Webster dictionary defines "Papa" simply as "a
person's father." True, a person's father has no logical connection with catsup
products, and that precisely makes "PAPA" as an arbitrary mark capable of being
registered, as it is distinctive, coming from a family name that started the brand
several decades ago. What was registered was not the word "Papa" as defined in the
dictionary, but the word "Papa" as the last name of the original owner of the brand. In
fact, being part of several of petitioner's marks, there is no question that the IPO has
found "PAPA" to be a registrable mark.

Respondent had an infinite field of words and combinations of words to choose from to
coin a mark for its lechon sauce. While its claim as to the origin of the term "PAPA
BOY" is plausible, it is not a strong enough claim to overrule the rights of the owner of
an existing and valid mark. Furthermore, this Court cannot equitably allow
respondent to profit by the name and reputation carefully built by petitioner without
running afoul of the basic demands of fair play.

SHANG PROPERTIES REALTY CORP VS. ST. FRANCIS DEVELOPMENT CORP

FACTS: Respondent, a domestic corporation engaged in the real estate business and
the developer of the St. Francis Square Commercial Center located at Ortigas Center,
Mandaluyong City, Metro Manila, filed separate complaints against petitioners before
the IPO-Bureau of Legal Affairs (BLA), namely: (a) an intellectual property violation
case for unfair competition, false or fraudulent declaration, and damages arising from
petitioners use and filing of applications for the registration of the marks "THE ST.
FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE,"; and (b) an inter
partes case opposing the petitioners application for registration of the mark "THE ST.
FRANCIS TOWERS" for use relative to the latters business, particularly the
construction of permanent buildings or structures for residential and office purposes;
and (c) an inter partes case opposing the petitioners application for registration of the
mark "THE ST. FRANCIS SHANGRI-LA PLACE,". Respondent alleged that it has used
the mark "ST. FRANCIS" to identify its numerous property development projects
located at Ortigas Center and a mixed-use realty project plan that includes the St.
Francis Towers. Respondent added that as a result of its continuous use of the mark
"ST. FRANCIS" in its real estate business, it has gained substantial goodwill with the
public that consumers and traders closely identify the said mark with its property
development projects. Accordingly, respondent claimed that petitioners could not have
the mark "THE ST. FRANCIS TOWERS" registered in their names, and that petitioners
use of the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA
PLACE" in their own real estate development projects constitutes unfair competition
as well as false or fraudulent declaration. Petitioners contended that respondent is
barred from claiming ownership and exclusive use of the mark "ST. FRANCIS" because
the same is geographically descriptive of the goods or services for which it is intended
to be used. This is because respondents as well as petitioners real estate development
projects are located along the streets bearing the name "St. Francis," particularly, St.
Francis Avenue and St. Francis Street both within the vicinity of the Ortigas Center.

ISSUE: Whether or not petitioners are guilty of unfair competition in using the marks
"THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE"?

RULING: No, because ST. FRANCIS is a descriptive geographical term which thus
bars its exclusive appropriability, unless a secondary meaning is acquired and the
Court finds the element of fraud to be wanting; hence, there can be no unfair
competition. As deftly explained in the U.S. case of Great Southern Bank v. First
Southern Bank: "descriptive geographical terms are in the public domain in the sense
that every seller should have the right to inform customers of the geographical origin
of his goods. A geographically descriptive term is any noun or adjective that
designates geographical location and would tend to be regarded by buyers as
descriptive of the geographic location of origin of the goods or services. A
geographically descriptive term can indicate any geographic location on earth, such as
continents, nations, regions, states, cities, streets and addresses, areas of cities,
rivers, and any other location referred to by a recognized name. In order to determine
whether or not the geographic term in question is descriptively used, the following
question is relevant: (1) Is the mark the name of the place or region from which the
goods actually come? If the answer is yes, then the geographic term is probably used
in a descriptive sense, and secondary meaning is required for protection."

ROBERTO CO vs. KENG HUAN JERRY YEUNG and EMMA YEUNG

G.R. No. 212705 September 10, 2014
PERLAS-BERNABE, J.:

FACTS:

Greenstone Medicated Oil Item No. 16 (Greenstone) is manufactured by

Greenstone Pharmaceutical, a traditional Chinese medicine manufacturing firm based
in Hong Kong and owned by Keng HuanJerry Yeung (Yeung), and is exclusively
imported and distributed in the Philippines by Taka Trading owned by Yeungs wife,
Emma Yeung (Emma). Sps. Yeung filed a civil complaint for trademark infringement
and unfair competition before the RTC against Ling Na Lau, her sister Pinky Lau (the
Laus), and Cofor allegedly conspiring in the sale of counterfeit Greenstone products to
the public. According to Pinky, Co offered the products on April 28, 2000 as "Tienchi
Fong Sap Oil Greenstone" (Tienchi) which she eventually availed from him. Co denied
having supplied counterfeit items to Royal and maintained that the stocks of
Greenstone came only from Taka Trading. Meanwhile, the Laus denied selling
Greenstone and claimed that the seven (7) items of Tienchi were left by an unidentified
male person at the counter of their drug store and that when Yeung came and
threatened to report the matter to the authorities, the items were surrendered to him.
As to Pinkys note, it was claimed that she was merely forced by Yeung to sign the
same.

ISSUE: Whether or not the CA correctly upheld Cos liability for unfair competition.

HELD:

NO. The Court finds that both the RTC and the CA fully considered the
evidence presented by the parties, and have adequately explained the legal and
evidentiary reasons in concluding that Co committed acts of unfair competition.

Unfair competition is defined as the passing off (or palming off) or attempting to pass
off upon the public of the goods or business of one person as the goods or business of
another with the end and probable effect of deceiving the public. This takes place
where the defendant gives his goods the general appearance of the goods of his
competitor with the intention of deceiving the public that the goods are those of his
competitor.

The Court deems it apt to clarify that Co was properly exculpated from the charge of
trademark infringement considering that the registration of the trademark
"Greenstone" essential as it is in a trademark infringement case was not proven to
have existed during the time the acts complained of were committed.