PHIL PHARMAWEALTH VS PFIZER

G.R. No. 167715 November 17, 2010

FACTS:

Pfizer is the registered owner of a Patent which was issued by the BLA-IPO on July 16, 1987. The patent is valid until July 16, 2004. The claims of this Patent are
directed to a method of increasing the effectiveness of a Beta-lactam antibiotic in a mammalian subject.

Pfizer is marketing the product under the patent using the brand name Unasyn. The sole and exclusive distributor of Unasyn products in the Philippines is
Zuellig Pharma Corporation, pursuant to a Distribution Services Agreement it executed with Pfizer Phils. on January 23, 2001.

Sometime in January and February 2003, Pfizer came to know that petitioner submitted bids for the supply of Unasyn to several hospitals without the consent
of Pfizer and in violation of their intellectual property rights.

Pfizer thus wrote to the hospitals and demanded that the latter immediately cease and desist from accepting bids for the supply of Unasyn or awarding the
same to entities other than respondents. respondents, in the same letters sent through undersigned counsel, also demanded that petitioner immediately
withdraw its bids to supply Unasyn.

However, the demands made was ignored. Hence, Respondents prayed for permanent injunction, damages and the forfeiture and impounding of the alleged
infringing products. .An injunction was issued and effective for 90 days.

While the case was pending before the CA, respondents filed a Complaint with the Regional Trial Court (RTC) of Makati City for infringement and unfair
competition with damages against herein petitioner. In said case, respondents prayed for the issuance of a temporary restraining order and preliminary
injunction to prevent herein petitioner from importing, distributing, selling or offering for sale Unasyn products to any entity in the Philippines. Respondents
asked the trial court that, after trial, judgment be rendered awarding damages in their favor and making the injunction permanent.

RTC directed the issuance of a writ of preliminary injunction prohibiting and restraining Petitioner, its agents, representatives and assigns from importing,
distributing or selling Sulbactam Ampicillin products to any entity in the Philippines.

ISSUE:WON an injunctive relief be issued based on an action of patent infringement when the patent allegedly infringed has already lapsed?

HELD: Petitioner argues that respondents’ exclusive right to monopolize the subject matter of the patent exists only within the term of the patent. Petitioner
claims that since respondents’ patent expired on July 16, 2004, the latter no longer possess any right of monopoly and, as such, there is no more basis for the
issuance of a restraining order or injunction against petitioner insofar as the disputed patent is concerned.

The Court agrees. Section 37 of Republic Act No. (RA) 165, which was the governing law at the time of the issuance of respondents’ patent, provides:
Section 37. Rights of patentees. A patentee shall have the exclusive right to make, use and sell the patented machine, article or product, and to use the
patented process for the purpose of industry or commerce, throughout the territory of the Philippines for the term of the patent; and such making, using, or
selling by any person without the authorization of the patentee constitutes infringement of the patent. It is clear from the above-quoted provision of law that
the exclusive right of a patentee to make, use and sell a patented product, article or process exists only during the term of the patent.

In the instant case, The patent, which was the basis of respondents in filing their complaint with the BLA-IPO, was issued on July 16, 1987. This fact was
admitted by respondents themselves in their complaint. They also admitted that the validity of the said patent is until July 16, 2004, which is in conformity
with Section 21 of RA 165, providing that the term of a patent shall be seventeen (17) years from the date of issuance thereof. Section 4, Rule 129 of the Rules
of Court provides that an admission, verbal or written, made by a party in the course of the proceedings in the same case, does not require proof and that the
admission may be contradicted only by showing that it was made through palpable mistake or that no such admission was made. In the present case, there is
no dispute as to respondents’ admission that the term of their patent expired on July 16, 2004. Neither is there evidence to show that their admission was
made through palpable mistake. Hence, contrary to the pronouncement of the CA, there is no longer any need to present evidence on the issue of expiration
of respondents’ patent.

On the basis of the foregoing, the Court agrees with petitioner that after July 16, 2004, respondents no longer possess the exclusive right to make, use and sell
the articles or products covered by Philippine Letters Patent No. 21116.

Side issues:

b) What tribunal has jurisdiction to review the decisions of the Director of Legal Affairs of the Intellectual Property Office?

c) Is there forum shopping when a party files two actions with two seemingly different causes of action and yet pray for the same relief?

HELD:

b) According to IP Code, the Director General of the IPO exercises exclusive jurisdiction over decisions of the IPO-BLA. The question in the CA concerns an
interlocutory order, and not a decision. Since the IP Code and the Rules and Regulations are bereft of any remedy regarding interlocutory orders of the IPO-
BLA, the only remedy available to Pfizer is to apply the Rules and Regulations suppletorily. Under the Rules, a petition for certiorari to the CA is the proper
remedy. This is consistent with the Rules of Court. Thus, the CA had jurisdiction.

c) Yes. Forum shopping is defined as the act of a party against whom an adverse judgment has been rendered in one forum, of seeking another (and possibly
favorable) opinion in another forum (other than by appeal or the special civil action of certiorari), or the institution of two (2) or more actions or proceedings
grounded on the same cause on the supposition that one or the other court would make a favorable disposition.
The elements of forum shopping are: (a) identity of parties, or at least such parties that represent the same interests in both actions; (b) identity of rights
asserted and reliefs prayed for, the reliefs being founded on the same facts; (c) identity of the two preceding particulars, such that any judgment rendered in
the other action will, regardless of which party is successful, amount to res judicata in the action under consideration. This instance meets these elements.

The parties are clearly identical. In both the complaints in the BLA-IPO and RTC, the rights allegedly violated and the acts allegedly violative of such rights are
identical, regardless of whether the patents on which the complaints were based are different. In both cases, the ultimate objective of Pfizer was to ask for
damages and to permanently prevent Pharmawealth from selling the contested products. Relevantly, the Supreme Court has decided that the filing of two
actions with the same objective, as in this instance, constitutes forum shopping.

Owing to the substantial identity of parties, reliefs and issues in the IPO and RTC cases, a decision in one case will necessarily amount to res judicata in the
other action.
EY Industrial Sales vs Shen Dar

Facts:

EYIS is a domestic corporation engaged in the production, distribution and sale of air compressors and other industrial tools and equipment. On
the other hand, Shen Dar is a Taiwan-based foreign manufacturer of air compressors. From 1997 to 2004, EYIS imported air compressors from
Shen Dar. Both of them sought to register the mark VESPA for use on air compressors, but it was Shen Dar who first filed the application on June
1997. EYIS application was first granted on 2004, so Shen Dar sought for its cancellation on the ground of Sec 123 of the Intellectual Property
Code which provides that the registration of a similar mark is prevented with the filing of an earlier application for registration. On the other
hand, EYIS contended that Shen Dar is not entitled to register the mark VESPA on its products because EYIS has been using it as the sole
assembler and distributor of air compressors since the 1990s. EYIS was able to prove such fact.

Issue: W/N EYIS is the true owner of the mark VESPA

Yes. EYIS is the true owner because it is the prior and continuous user of the mark VESPA.

Section 123.1 of the IPC should not be interpreted to mean that ownership is based upon an earlier filing date. While RA 8293 removed the
previous requirement of proof of actual use prior to the filing of an application for registration of a mark, proof of prior and continuous use is
necessary to establish ownership of a mark. Ownership of a mark or trade name may be acquired not necessarily by registration but by adoption
and use in trade or commerce.

As between actual use of a mark without registration, and registration of the mark without actual use thereof, the former prevails over the latter.
Hence, EYIS is entitled to the registration of the mark in its name
Smith Kline Beckman Corporation vs Court of Appeals

Facts:

Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a patent was issued to it for its invention entitled “Methods and
Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate.” The invention is a means to fight off
gastrointestinal parasites from various cattles and pet animals.

Tryco Pharma is a local corporation engaged in the same business as Smith Kline.

Smith Kline sued Tryco Pharma because the latter was selling a veterinary product called Impregon which contains a drug called Albendazole which fights off
gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats.

Smith Kline is claiming that Albendazole is covered in their patent because it is substantially the same as methyl 5 propylthio-2-benzimidazole carbamate
covered by its patent since both of them are meant to combat worm or parasite infestation in animals. And that Albendazole is actually patented under Smith
Kline in the US.

Tryco Pharma averred that nowhere in Smith Kline’s patent does it mention that Albendazole is present but even if it were, the same is “unpatentable”.

Smith Kline thus invoked the doctrine of equivalents, which implies that the two substances substantially do the same function in substantially the same way
to achieve the same results, thereby making them truly identical for in spite of the fact that the word Albendazole does not appear in Tryco Paharma’s letters
of patent, it has ably shown by evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate.

ISSUE: Whether or not there is patent infringement in this case

HELD: No. Smith Kline failed to prove that Albendazole is a compound inherent in the patented invention. Nowhere in the patent is the word Albendazole
found. When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them. Further, there was a
separate patent for Albendazole given by the US which implies that Albendazole is indeed separate and distinct from the patented compound here.

A scrutiny of Smith Kline’s evidence fails to prove the substantial sameness of the patented compound and Albendazole. While both compounds have the
effect of neutralizing parasites in animals, identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same
way or by substantially the same means as the patented compound, even though it performs the same function and achieves the same result. In other words,
the principle or mode of operation must be the same or substantially the same.

The doctrine of equivalents thus requires satisfaction of the function-means-and-result test, the patentee having the burden to show that all three
components of such equivalency test are met.
PARKE, DAVIS and COMPANY vs. DOCTORS' PHARMACEUTICALS, INC., ET AL.,G.R. No. L-22221 August 31, 1965

Principle in the case:In order that any person may be granted a license under a particular patentedinvention relating to any of those enumerated under
Section 34, it is sufficient that (1) theapplication be made after the expiration of three years from the date of the grant of the patent and(2) that the Director
should find that a case for granting such license has been made out.

Facts:Parke Davis & Company, is a foreign corporation is the owner of a patent entitled "Process for theManufacturing of Antibiotics" (Letters Patent No. 50)
The patent relates to a chemical compoundrepresented by a formula commonly called chloramphenicol. The patent contains ten claims, nine of whichare
process claims, and the other is a product claim to the chemical substance chloramphenicol.Doctors' Pharmaceuticals, Inc., on the other hand, is a domestic
corporation which applied for a petitionwith the Director of Patents, which was later amended, praying that it be granted a compulsory licenseunder Letters
Patent No. 50 granted to Parke Davis & Company based on the following grounds:(1) the patented invention relates to medicine and is necessary for public
health and safety;(2) Parke Davis & Company is unwilling to grant petitioner a voluntary license under said patent by reasonof which the production and
manufacture of needed medicine containing chloramphenicol has been undulyrestrained to a certain extent that it is becoming a monopoly;(3) the demand for
medicine containing chloramphenicol is not being met to an adequate extent and onreasonable prices; and(4) the patented invention is not being worked in
the Philippines on a commercial scale. In its petition,Doctors' Pharmaceuticals, Inc. prayed that it be authorized to manufacture, use, and sell its own
productscontaining chloramphenicol as well as choose its own brand or trademark.Parke Davis & Company filed a written opposition setting up the following
affirmative defenses: (1) acompulsory license may only be issued to one who will work the patent and doctor’s pharma does notintend to work it itself but
merely to import the patented product; (2) doctor’s pharma has not requestedany license to work the patented invention in the Philippines; (3) doctor’s
pharma is not competent to workthe patented invention; (4) to grant doctor’s pharma the requested license would be against public interestand would only
serve its monetary interest; and (5) the patented invention is not necessary for publichealth and safety. The Director of Patents rendered a decision granting to
Doctor’s Pharma the license prayed for.Issue: WON Doctor’s Pharma should be given the said compulsory license under sec. 34 (d)of Republic ActNo. 165

Ruling: Yes.Rationale: The pertinent statutory provisions that govern the issues raised herein are found in Chapter VIII of RepublicAct No. 165, as amended,
which for ready reference are hereunder quoted:CHAPTER VIII. — Compulsory LicensingSEC. 34.Grounds for compulsory license. — Any person may apply to
the Director for the grant of a licenseunder a particular patent at any time after the expiration of three years from the date of the grant of thepatent, under
any of the following circumstances:(a) If the patented invention is not being worked within the Philippines on a commercial scale, althoughcapable of being so
worked, without satisfactory reason;(b) If the demand for the patented article in the Philippines is not being met to an adequate extent and onreasonable
terms, without satisfactory reason; (c) If by reason of the refusal of the patentee to grant a license or licenses on reasonable terms, or byreason of the
conditions attached by the patentee to licenses or to the purchase, lease or use of thepatented article or working of the patented process or machine of
production the establishment of anynew trade or industry in the Philippines is prevented, or the trade or industry therein is unduly restrained;or(d) If the
patented invention relates to food or medicine or is necessary for public health or public safety.A cursory reading of the provisions above-quoted will reveal
that any person may apply for the grant of alicense under any of the circumstances stated in Section 34 (a), (b), (c) or (d), which are in the disjunctive,showing
that any of the circumstances thus enumerated would be sufficient to support the grant, asevidenced by the use of the particle "or" between paragraphs (c)
and (d).
As may be noted, each of these circumstances stands alone and is independent of the others.And from them we can see that in order that any person may be
granted a license under aparticular patented invention relating to medicine under Section 34(d), it is sufficient that theapplication be made after the expiration
of three years from the date of the grant of thepatent and that the Director should find that a case for granting such license has been madeout.Since in the
instant case it is admitted by Parke Davis that the chemical substance chloramphenicolis a medicine, while Letters Patent No. 50 covering said substance
weregranted to Parke Davis & Company on February 9, 1950, and the instant application for licenseunder said patent was only filed in 1960, verily the period
that had elapsed then is more thanthree years, and so the conditions for the grant of the license had been fulfilled. We find,therefore, no error in the decision
of the Director of Patents on this aspect of the controversy.Finally, we may add that it is not a valid ground to refuse the license applied for the fact thatthe
patentee is working the invention and as such has the exclusive right to the invention for aterm of 17 years (Sections 20 & 21, Republic Act 165) as claimed in
the third assignment of error, the reason for it being that the provision permitting the grant of compulsory license isintended not only to give a chance to
others to supply the public with the quantity of thepatented article but especially to prevent the building up of patent monopolies.The grant of such license
may work disadvantage on petitioner but the law must be observeduntil modified or repealed. On the other hand, there is the advantage that the importation
of chloramphenicol might redound to the benefit of the public in general as it will increase thesupply of medicines in our country containing chloramphenicol
thereby reducing substantiallythe price of this drug.
Del Rosaria vs CA

Facts:

Roberto Del Rosario was granted a patent for his innovation called the “Minus One” karaoke. The patent was issued in June 1988 for five years and was
renewed in November 1991 for another five years as there were improvement introduced to his “minus one” karaoke. In 1993, while the patent was still
effective, Del Rosario sued Janito Corporation, a Japanese company owned by Janito Cua, for allegedly infringing upon the patent of Del Rosario. Del Rosario
alleged that Janito was manufacturing a sing-along system under the brand “miyata karaoke” which is substantially, if not identical, the same to his “minus
one” karaoke. The lower court ruled in favor of Del Rosario but the Court of Appeals ruled that there was no infringement because the karaoke system was a
universal product manufactured, advertised, and marketed all over the world long before Del Rosario was issued his patents.

ISSUE: Whether or not the Court of Appeals erred in its ruling.

HELD: Yes. The Patent Law expressly acknowledges that any new model of implements or tools of any industrial product even if not possessed of the quality of
invention but which is of practical utility is entitled to a patent for utility model. Here, there is no dispute that the letters patent issued to Del Rosario are for
utility models of audio equipment. It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are
taken or appropriated, or the device, machine or other subject matter alleged to infringe is substantially identical with the patented invention. In order to
infringe a patent, a machine or device must perform the same function, or accomplish the same result by identical or substantially identical means and the
principle or mode of operation must be substantially the same. In the case at bar, miyata karaoke was proven to have substantial if not identical functionality
as that of the minus one karaoke which was covered by the second patent issued to Del Rosario. Further, Janito failed to present competent evidence that will
show that Del Rosario’s innovation is not new.
CANON KABUSHIKI KAISHA vs. COURT OF APPEALS

G.R. No. 120900, July 20, 2000

FACTS:

On January 15, 1985, private respondent NSR Rubber Corporation filed an application for registration of the mark CANON for sandals in the Bureau of
Patents, Trademarks, and Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a Verified Notice of Opposition alleging that it will be damaged by the
registration of the trademark CANON in the name of private respondent since they were using the same trademark for their footwear line of products. The
private respondent will also use the name Canon for its footwear products.

Based on the records, the evidence presented by petitioner consisted of its certificates of registration for the mark CANON in various countries covering goods
belonging to class 2, paints, chemical products, toner, and dye stuff. Petitioner also submitted in evidence its Philippine Trademark Registration No. 39398,
showing its ownership over the trademark CANON.

The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of petitioner and giving due course to NSR's application for the registration of
the trademark CANON. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals that eventually affirmed the decision of the BPTTT.

ISSUE: Is the use of trademark, CANON, by the private respondent affects the business of Canon Kabushiki Kaisha who has an existing ownership of a
trademark also known as CANON?

HELD:

The Supreme Court says that ordinarily, the ownership of a trademark or tradename is a property right that the owner is entitled to protect as
mandated by the Trademark Law. However, when a trademark is used by a party for a product in which the other party does not deal, the use of the same
trademark on the latter's product cannot be validly objected to.

The BPTTT correctly ruled that since the certificate of registration of petitioner for the trademark CANON covers class 2 (paints, chemical products,
toner, dyestuff), private respondent can use the trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a world of difference between
the paints, chemical products, toner, and dyestuff of petitioner and the sandals of private respondent.
SOCIETE DES PRODUITS NESTLE V. CA (G.R. NO. 112012)

Facts:

Respondent CFC Corporation filed an application for the registration of the trademark FLAVOR MASTER for instant coffee. Petitioners, a Swiss company and a
domestic corporation licensee of Societe, opposed on the ground that it is confusingly similar to its trademark for coffee and coffee extracts: MASTER ROAST
and MASTER BLEND. Petitioners contend that the dominant word MASTER is present in the 3 trademarks. Respondent CFC argued that the word MASTER
cannot be exclusively appropriated being a descriptive or generic term. BPTTT denied CFC’s application. CA held otherwise.

Issue:

Whether or not the word MASTER is descriptive or generic term incapable of exclusive appropriation.

Ruling: NO.

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. Generic terms are those which constitute “the common descriptive name of an article or substance,” or comprise the “genus of which the particular
product is a species,” or are “commonly used as the name or description of a kind of goods,” or “imply reference to every member of a genus and the
exclusion of individuating characters,” or “refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a
particular product,” and are not legally protectable. On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in its
normal and natural sense, it “forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not
know what it is,” or “if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods,” or if it clearly denotes what goods
or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination.

Rather, the term “MASTER” is a suggestive term brought about by the advertising scheme of Nestle. Suggestive terms are those which, in the phraseology of
one court, require “imagination, thought and perception to reach a conclusion as to the nature of the goods.” Such terms, “which subtly connote something
about the product,” are eligible for protection in the absence of secondary meaning. While suggestive marks are capable of shedding “some light” upon
certain characteristics of the goods or services in dispute, they nevertheless involve “an element of incongruity,” “figurativeness,” or ” imaginative effort on
the part of the observer.” The term “MASTER”, therefore, has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND
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
ANG V. TEODORO (G.R. NO. L-48226)

Facts:

Respondent Teodoro has long been using ‘Ang Tibay’ both as trademark and tradename in the manufacture and sale of its slippers, shoes and indoor baseballs
when he formally registered it. Meanwhile, petitioner Ang registered the same trademark ‘Ang Tibay’ for its products of pants and shirts. Respondent moved
to cancel the registration of petitioner’s mark. The trial court found for petitioner Ang. CA reversed the judgment. Petitioner argues the validity of the mark
being descriptive; that it had not acquired secondary meaning in favor of respondent; and that there can be no infringement/unfair competition because the
goods are not similar.

Issues:

(1) Whether or not ‘ANG TIBAY’ is a descriptive term not registrable.

(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a secondary meaning.

(3) Whether or not there is trademark infringement and/or unfair competition between unrelated goods.

Ruling:

(1) NO. The phrase “Ang Tibay” is an exclamation denoting administration of strength or durability. For instance, one who tries hard but fails to break an object
exclaims, “Ang tibay!” (How strong!”) The phrase “ang tibay” is never used adjectively to define or describe an object. One does not say, “ang tibay sapatos” or
“sapatos ang tibay” is never used adjectively to define or describe an object. One does not say, “ang tibay sapatos” or “sapatos ang tibay” to mean “durable
shoes,” but “matibay na sapatos” or “sapatos na matibay.” From all of this we deduce that “Ang Tibay” is not a descriptive term within the meaning of the
Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trademark or tradename. In this connection we do
not fail to note that when the petitioner herself took the trouble and expense of securing the registration of these same words as a trademark of her products
she or her attorney as well as the Director of Commerce was undoubtedly convinced that said words (Ang Tibay) were not a descriptive term and hence could
be legally used and validly registered as a trademark.

(2) NO. In view of the conclusion we have reached upon the first assignment of error, it is unnecessary to apply here the doctrine of “secondary meaning” in
trade-mark parlance. This doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article of the
market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his
article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product. We have said that
the phrase “Ang Tibay,” being neither geographic nor descriptive, was originally capable of exclusive appropriation as a trade-mark. But were it not so, the
application of the doctrine of secondary meaning made by the Court of Appeals could nevertheless be fully sustained because, in any event, by respondent’s
long and exclusive use of said phrase with reference to his products and his business, it has acquired a proprietary connotation.

(3) YES. In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair Trading, the test employed by the courts to determine
whether noncompeting goods are or are not of the same class is confusion as to the origin of the goods of the second user. Although two noncompeting
articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they
would, nevertheless, be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be
likely to cause confusion as to the origin, or personal source, of the second user’s goods. They would be considered as not falling under the same class only if
they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second user’s goods. The Court
of Appeals found in this case that by uninterrupted and exclusive use since 1910 of respondent’s registered trade-mark on slippers and shoes manufactured by
him, it has come to indicate the origin and ownership of said goods. It is certainly not farfetched to surmise that the selection by petitioner of the same trade-
mark for pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent.
ANG V. TEODORO (G.R. NO. L-48226)

Facts:

Respondent Teodoro has long been using ‘Ang Tibay’ both as trademark and tradename in the manufacture and sale of its slippers, shoes and indoor baseballs
when he formally registered it. Meanwhile, petitioner Ang registered the same trademark ‘Ang Tibay’ for its products of pants and shirts. Respondent moved
to cancel the registration of petitioner’s mark. The trial court found for petitioner Ang. CA reversed the judgment. Petitioner argues the validity of the mark
being descriptive; that it had not acquired secondary meaning in favor of respondent; and that there can be no infringement/unfair competition because the
goods are not similar.

Issues:

(1) Whether or not ‘ANG TIBAY’ is a descriptive term not registrable.

(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a secondary meaning.

(3) Whether or not there is trademark infringement and/or unfair competition between unrelated goods.

Ruling:

(1) NO. The phrase “Ang Tibay” is an exclamation denoting administration of strength or durability. For instance, one who tries hard but fails to break an object
exclaims, “Ang tibay!” (How strong!”) The phrase “ang tibay” is never used adjectively to define or describe an object. One does not say, “ang tibay sapatos” or
“sapatos ang tibay” is never used adjectively to define or describe an object. One does not say, “ang tibay sapatos” or “sapatos ang tibay” to mean “durable
shoes,” but “matibay na sapatos” or “sapatos na matibay.” From all of this we deduce that “Ang Tibay” is not a descriptive term within the meaning of the
Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trademark or tradename. In this connection we do
not fail to note that when the petitioner herself took the trouble and expense of securing the registration of these same words as a trademark of her products
she or her attorney as well as the Director of Commerce was undoubtedly convinced that said words (Ang Tibay) were not a descriptive term and hence could
be legally used and validly registered as a trademark.

(2) NO. In view of the conclusion we have reached upon the first assignment of error, it is unnecessary to apply here the doctrine of “secondary meaning” in
trade-mark parlance. This doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article of the
market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his
article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product. We have said that
the phrase “Ang Tibay,” being neither geographic nor descriptive, was originally capable of exclusive appropriation as a trade-mark. But were it not so, the
application of the doctrine of secondary meaning made by the Court of Appeals could nevertheless be fully sustained because, in any event, by respondent’s
long and exclusive use of said phrase with reference to his products and his business, it has acquired a proprietary connotation.

(3) YES. In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair Trading, the test employed by the courts to determine
whether noncompeting goods are or are not of the same class is confusion as to the origin of the goods of the second user. Although two noncompeting
articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they
would, nevertheless, be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be
likely to cause confusion as to the origin, or personal source, of the second user’s goods. They would be considered as not falling under the same class only if
they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second user’s goods. The Court
of Appeals found in this case that by uninterrupted and exclusive use since 1910 of respondent’s registered trade-mark on slippers and shoes manufactured by
him, it has come to indicate the origin and ownership of said goods. It is certainly not farfetched to surmise that the selection by petitioner of the same trade-
mark for pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent.
ANG SI HENG V. WELLINGTON DEPARTMENT STORE (G.R. NO. L-4531)

Facts:

Plaintiff-appellant Ang Si Heng is a manufacturer of articles of wear and registered owner of the mark ‘Wellington.’ Meanwhile, defendant is a store for
different articles and is registered with the business name ‘Wellington Department Store.’ Plaintiff Heng filed a complaint for unfair competition against
defendant alleging that the latter’s use of its business name/corporate name deceives the public into buying defendant’s goods under the mistaken belief that
the goods are of plaintiff’s or have the same source as plaintiff’s goods. The court dismissed the complaint.

Issue:Whether or not defendant has misled the public constitutive of unfair competition.

Ruling: NO.

While there is similarity between the trademark or trade name “Wellington Department Store,” no confusion or deception can possibly result or arise from
such similarity because the latter is a “department store,” while the former does purport to be so. The name “Wellington” is admittedly the name of the
trademark on the shirts, pants, drawers, and other articles of wear for men, women and children, whereas the name used by the defendant indicates not
these manufactured articles or any similar merchandise, but a department store. Neither can the public be said to be deceived into the belief that the goods
being sold in defendant’s store originate from the plaintiffs, because the evidence shows that defendant’s store sells no shirts or wear bearing the trademark
“Wellington,” but other trademarks. Neither could such deception be by any possibility produced because defendant’s store is situated on the Escolta, while
plaintiffs’ store or place of business is located in another business district far away from the Escolta. The mere fact that two or more customers of the plaintiffs
thought of the probable identity of the products sold by one and the other is not sufficient proof of the supposed confusion that the public has been led into
by the use of the name adopted by the defendants. As we have stated, appellant have not shown any well-established reputation or goodwill previous to the
establishment of appellees’ business, such that it can be said that something was unfairly taken by the use of such reputation by the appellees’ department
store. We agree, therefore, with the trial court that plaintiffs-appellants have not been able to show the existence of a cause of action for unfair competition
against the defendants-appellees.
CHUA CHE vs. PHILIPPINE PATENT OFFICE and SY TUO
G.R. No. L-18337. January 30, 1965

Facts:

On October 30, 1958, Chua Che presented with the Philippines Patent Office a petition for the registration in his favor the trade name of "X-7". Chua Che
declares that the trade name was used by him in commerce within the Philippines on June 10, 1957, and had been continuously u sed by him in trade in the
Philippines for more than one year.

Sy Tuo opposed, claiming that he owns the trademark and had been using it since 1951 as mark for perfume, lipstick, and nail polish as opposed to Chua Che's
use which was admittedly only in 1957.

The Director of Patents denied the application for use on soap Class 51, being manufactured by said Chua Che, upon the opposition of respondent Sy Tuo. The
Director of Patents held that the products of the parties, while specifically different, are products intended for use in the home and usually have common
purchasers. Furthermore, the use of X-7 for laundry soap is but a natural expansion of business of the opposer.

Issue:

WON allowing Chua Che to register the same mark for laundry soap would likely to cause confusion on the purchasers of X-7 products by SY Tou.

Ruling:

Yes. While it is no longer necessary to establish that the goods of the parties possess the same descriptive properties, as previously required under the Trade
Mark Act of 1905, registration of a trademark should be refused in cases where there is a likelihood of confusion, mistake, or deception, even though the goods
fall into different categories

The products of appellee are common household items now-a-days, in the same manner as laundry soap. The likelihood of purchasers to associate these
products to a common origin is not far-fetched. Both from the standpoint of priority of use and for the protection of the buying public and appellee's rights to the
trademark "X-7", it becomes manifest that the registration of said trademark in favor of applicant-appellant should be denied.
AMERICAN WIRE & CABLE COMPANY, petitioner, vs. DIRECTOR OF PATENTS and CENTRAL BANAHAW INDUSTRIES, respondents.

Facts:

On 2 June 1962, Central Banahaw Industries, Inc., applied with the Director of Patents for registration of the trademark DYNAFLEX and Device to be used in
connection with electric wires, class 20, which mark applicant allegedly had been using since 29 March 1962. The American Wire and Cable Co., Inc., another
domestic corporation and authorized user since 10 April 1958 of the registered trade mark DURAFLEX and Globe representation, for electric wires, apparatus,
machines and supplies, class 20, opposed the application on the ground that applicant's use of the trade mark DYNAFLEX would cause confusion or result in
mistake to purchasers intending to buy DURAFLEX electric wires and goods, the mark being registered allegedly having practically the same spelling,
pronunciation and sound, and covering the same good, as that of the opposer. Besides, opposer contended that there has been no continuous use in
commerce of the applicant's mark.

After due hearing, the Director of Patents rendered decision holding the applicant's mark DYNAFLEX not to be similar to the previously registered trademark
DURAFLEX. Consequently, the application of Central Banahaw Industries for registration of DYNAFLEX was given due course and the opposition thereto by
American Wire & Cable Company dismissed. The latter interposed the present appeal.

Issue:

The issue to be resolved in this proceeding is simple: whether or not the mark DYNAFLEX and Device is registrable as label for electric wires, class 20,
considering that the trademark DURAFLEX and Globe representation also for electric wires, machines and supplies under class 20, has been registered more
than 4 years earlier.

Held: NO.

It is clear from the above-quoted provision that the determinative factor in a contest involving registration of trade mark is not whether the challenged mark
would actually cause confusion or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the part of the
buying public. In short, to constitute an infringement of an existing trademark patent and warrant a denial of an application for registration, the law does not
require that the competing trademarks must be so identical as to produce actual error or mistake; it would be sufficient, for purposes of the law, that the
similarity between the two labels is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the newer brand for it.

The question is, when is a trademark likely to confuse or cause the public to mistake one for another? Earlier rulings of the Court seem to indicate its reliance
on the dominancy test or the assessment of the essential or dominant features in the competing labels to determine whether they are confusingly similar.1
Along the same line are the rulings denying registration of a mark containing the picture of a fish (Bañgus), as label for soy sauce, for being similar to another
registered brand of soy sauce that bears the picture of the fish carp;5 or that of the mark bearing the picture of two roosters with the word "Bantam", as label
for food seasoning (vetsin), which would confuse the purchasers of the same article bearing the registered mark "Hen Brand" that features the picture of a
hen.6

The present case is governed by the principles laid down in the preceding cases. The similarity between the competing trademarks, DURAFLEX and DYNAFLEX,
is apparent. Not only are the initial letters and the last half of the appellations identical, but the difference exists only in two out of the eight literal elements of
the designations. Coupled with the fact that both marks cover insulated flexible wires under class 20; that both products are contained in boxes of the same
material, color, shape and size; that the dominant elements of the front designs are a red circle and a diagonal zigzag commonly related to a spark or flash of
electricity; that the back of both boxes show similar circles of broken lines with arrows at the center pointing outward, with the identical legend "Cut Out Ring"
"Draw From Inside Circle", no difficulty is experienced in reaching the conclusion that there is a deceptive similarity that would lead the purchaser to confuse
one product with the other.