G.R. No.
120961 October 17, 1996 when they are used as containers for "sisi," "bagoong," "patis" and similar
DISTILLERIA WASHINGTON, INC. or WASHINGTON DISTILLERY,
INC., petitioner,
vs.
THE HONORABLE COURT OF APPEALS and LA TONDEÑA
DISTILLERS, INC., respondents.
FACTS : La Tondeña Distillers , Inc. (LTDI) filed a case against Distilleria
Washington for the seizure of 18,157 empty bottles bearing the blown-in
marks of La Tondeña Inc. and Ginebra San Miguel. Said bottles were
being used by Washington for its own products without the consent of
LTDI.
LTDI asserted that as the owner of the bottles they were entitled for the
protection extended by RA no. 623 (An Act to regulate the use of duly
stamped or marked bottles, boxes, kegs, barrels and other similar
containers). Washington countered that RA no. 623 should not apply to
alcoholic beverages and the ownership of the bottles were lawfully
transferred to the buyer upon the sale of the gin and the containers at a
single price.
The trial court rendered a decision favoring Washington and ordered
LTDI for the return of the seized bottles. LTDI appealed the decision to
the Court of Appeals. The appellate court reversed the court a quo and
ruled against Washington.
ISSUE : Whether or not ownership of the empty bottles was transferred
to Washington?
HELD : The fact of the matter is that R.A. 623, as amended, in affording
trademark protection to the registrant, has additionally expressed a prima
facie presumption of illegal use by a possessor whenever such use or
possession is without the written permission of the registered
manufacturer, a provision that is neither arbitrary nor without appropriate
rationale.
The above-quoted provisions grant protection to a qualified manufacturer
who successfully registered with the Philippine Patent Office its duly
stamped or marked bottles, boxes, casks and other similar containers.
The mere use of registered bottles or containers without the written
consent of the manufacturer is prohibited, the only exceptions being
native products.
It is to be pointed out that a trademark refers to a word, name, symbol,
emblem, sign or device or any combination thereof adopted and used by
a merchant to identify, and distinguish from others, his goods of
commerce. It is basically an intellectual creation that is susceptible to
ownership 7 and, consistently therewith, gives rise to its own elements of
jus posidendi, jus utendi, jus fruendi, jus disponendi, and jus abutendi,
along with the applicable jus lex, comprising that ownership. The
incorporeal right, however, is distinct from the property in the material
object subject to it. Ownership in one does not necessarily vest
ownership in the other. Thus, the transfer or assignment of the intellectual
property will not necessarily constitute a conveyance of the thing it
covers, nor would a conveyance of the latter imply the transfer or
assignment of the intellectual right. 8
G.R. No. L-48226 December 14, 1942
ANA L. ANG, petitioner,
vs.
TORIBIO TEODORO, respondent.
FACTS : Petitioner has continuously used “Ang Tibay” both as trademark
and tradename in manufacture and sale of slippers, shoes and indoor
baseballs since 1910 and paid for advertising expense for such.
Respondent registered the same for pants and shirts on 1932 without
expending for advertisement. For such reason petitioner eventually filed a
case.
The trial court ruled in favor of the respondent on the grounds that the
two trademarks are dissimilar and are used on different noncompeting
goods.
ISSUE: Whether or not respondent is guilty of infringement?
HELD : The courts have come to realize that there can be unfair
competition or unfair trading even if the goods are non-competing,
and that such unfair trading can cause injury or damage to the first
user of a given trade-mark, first, by prevention of the natural
expansion of his business and, second, by having his business
reputation confused with and put at the mercy of the second user.
Then noncompetitive products are sold under the same mark, the gradual
whittling away or dispersion of the identity and hold upon the public mind
of the mark created by its first user, inevitably results. The original owner
is entitled to the preservation of the valuable link between him and the
public that has been created by his ingenuity and the merit of his wares
or services. Experience has demonstrated that when a well-known trade-
mark is adopted by another even for a totally different class of goods, it is
done to get the benefit of the reputation and advertisements of the
originator of said mark, to convey to the public a false impression of
some supposed connection between the manufacturer of the article sold
under the original mark and the new articles being tendered to the public
under the same or similar mark. As trade has developed and commercial
changes have come about, the law of unfair competition has expanded to
keep pace with the times and the element of strict competition in itself
has ceased to be the determining factor. The owner of a trade-mark or
trade-name has a property right in which he is entitled to protection, since
there is damage to him from confusion of reputation or goodwill in the
mind of the public as well as from confusion of goods. The modern trend
is to give emphasis to the unfairness of the acts and to classify and treat
the issue as a fraud.
The doctrine of "secondary meaning" in trade-mark 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.
G.R. No. L-20635 March 31, 1966
ETEPHA, A.G., petitioner,
vs.
DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS,
INC., respondents.
FACTS : On April 23, 1959, respondent Westmont Pharmaceuticals, Inc.,
a New York corporation, sought registration of trademark "Atussin" placed
on its "medicinal preparation of expectorant antihistaminic, bronchodilator
sedative, ascorbic acid (Vitamin C) used in the treatment of cough". The
trademark is used exclusively in the Philippines since January 21, 1959. 1
Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation,
objected. Petitioner claims that it will be damaged because Atussin is so
confusedly similar to its Pertussin (Registration No. 6089, issued on
September 25, 1957) used on a preparation for the treatment of coughs,
that the buying public will be misled into believing that Westmont's
product is that of petitioner's which allegedly enjoys goodwill.
To the question: May trademark ATUSSIN be registered, given the fact
that PERTUSSIN, another trademark, had been previously registered in
the Patent Office? — the Director of Patents answered affirmatively.
Hence this appeal.
ISSUE : Whether or not ATUSSIN may be registered?
HELD: We are to be guided by the rule that the validity of a cause for
infringement is predicated upon colorable imitation. The phrase
"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, and to cause him to purchase the one
supposing it to be the other.
A practical approach to the problem of similarity or dissimilarity is to go
into the whole of the two trademarks pictured in their manner of display.
Inspection should be undertaken from the viewpoint of a prospective
buyer. The trademark complained of should be compared and contrasted
with the purchaser's memory (not in juxtaposition) of the trademark said
to be infringed. 10 Some such factors as "sound; appearance; form, style,
shape, size or format; color; ideas connoted by marks; the meaning,
spelling, and pronunciation, of words used; and the setting in which the
words appear" may be considered. 11 For, indeed, trademark infringement
is a form of unfair competition.
Confusion is likely between trademarks, however, only if their over-all
presentations in any of the particulars of sound, appearance, or meaning
are such as would lead the purchasing public into believing that the
products to which the marks are applied emanated from the same
source. In testing this issue, fixed legal rules exist — if not in harmony,
certainly in abundance — but, in the final analysis, the application of
these rules in any given situation necessarily reflects a matter of
individual judgment largely predicated on opinion. There is, however, and
can be no disagreement with the rule that the purchaser is confused, if at
all, by the marks as a whole.
As we take up Pertussin and Atussin once again, we cannot escape
notice of the fact that the two words do not sound alike — when
pronounced. There is not much phonetic similarity between the two. The
Solicitor General well-observed that in Pertussin the pronunciation of the
prefix "Per", whether correct or incorrect, includes a combination of three
letters P, e and r; whereas, in Atussin the whole starts with the single
letter A added to suffix "tussin". Appeals to the ear are disimilar. And this,
because in a word combination, the part that comes first is the most
pronounced. An expositor of the applicable rule here is the decision in the
Syrocol-Cheracol controversy. 15 There, the ruling is that trademark
Syrocol (a cough medicine preparation) is not confusedly similar to
trademark Cheracol (also a cough medicine preparation). Reason: the
two words "do not look or sound enough alike to justify a holding of
trademark infringement", and the "only similarity is in the last syllable, and
that is not uncommon in names given drug compounds".
G.R. No. L-28554 February 28, 1983
UNNO COMMERCIAL ENTERPRISES, INCORPORATED, petitioner,
vs.
GENERAL MILLING CORPORATION and TIBURCIO S. EVALLE, in
his capacity as Director of Patents, respondents.
FACTS : The Court affirms respondent Director of Patent's decision
declaring respondent General Milling Corporation as the prior user of the
trademark "All Montana" on wheat flour in the Philippines and ordering
the cancellation of the certificate of registration for the same trademark
previously issued in favor of petitioner Unno Commercial Enterprises,
Incorporated, it appearing that Unno Commercial Enterprises, Inc. merely
acted as exclusive distributor of All Montana wheat flour in the
Philippines. Only the owner of a trademark, trade name or service mark
may apply for its registration and an importer, broker, indentor or
distributor acquires no rights to the trademark of the goods he is dealing
with in the absence of a valid transfer or assignment of the trade mark.
On December 11, 1962, respondent General Milling Corporation filed an
application for the registration of the trademark "All Montana" to be used
in the sale of wheat flour. In view of the fact that the same trademark was
previously, registered in favor of petitioner Unno Commercial Enterprises,
Inc.. Respondent General Milling Corporation, in its application for
registration, alleged that it started using the trademark "All Montana" on
August 31, 1955 and subsequently was licensed to use the same by
Centennial Mills, Inc. by virtue of a deed of assignment executed on
September 20, 1962. On the other hand petitioner Unno Commercial
Enterprises, Inc. argued that the same trademark had been registered in
its favor on March 8, 1962 asserting that it started using the trademark on
June 30, 1956, as indentor or broker for S.H. Huang Bros. & Co., a local
firm.
The Director of Patents, after hearing, ruled in favor of respondent
General Milling Corporation. and rendered its decision as follows:
ISSUE : Whether or not director of patents can issue cancellation of the
certification of registration?
HELD : The Court finds without merit petitioner's argument that the
Director of Patents could not order the cancellation of' its certificate of
registration in an interference proceeding and that the question of
whether or not a certificate of registration is to be cancelled should have
been brought in cancellation proceedings. Under Rule 178 of the Rules of
the Patent Office in Trademark Cases, 14 the Director of Patents is
expressly authorized to order the cancellation of a registered mark or
trade name or name or other mark of ownership in an inter partes case,
such as the interference proceeding at bar.
The right to register trademark is based on ownership. 4 When the
applicant is not the owner of the trademark being applied for, he has no
right to apply for the registration of the same. 5 Under the Trademark Law
only the owner of the trademark, trade name or service mark used to
distinguish his goods, business or service from the goods, business or
service of others is entitled to register the same. 6
The term owner does not include the importer of the goods bearing the
trademark, trade name, service mark, or other mark of ownership, unless
such importer is actually the owner thereof in the country from which the
goods are imported. A local importer, however, may make application for
the registration of a foreign trademark, trade name or service mark if he
is duly authorized by the actual owner of the name or other mark of
ownership. 7
Thus, petitioner's contention that it is the owner of the mark "All Montana"
because of its certificate of registration issued by the Director of Patents,
must fail, since ownership of a trademark is not acquired by the mere fact
of registration alone. 9 Registration merely creates a prima facie
presumption of the validity of the registration, of the registrant's
ownership of the trademark and of the exclusive right to the use thereof.
10
Registration does not perfect a trademark right. 11 As conceded itself by
petitioner, evidence may be presented to overcome the presumption.
Prior use by one will controvert a claim of legal appropriation, by
subsequent users. In the case at bar, the Director of Patents found that
"ample evidence was presented in the record that Centennial Mills, Inc.
was the owner and prior user in the Philippines of the trademark 'All
Montana' through a local importer and broker. Use of a trademark by a
mere importer, indentor or exporter (the Senior Party herein) inures to the
benefit of the foreign manufacturer whose goods are Identified by the
trademark. The Junior Party has hereby established a continuous chain
of title and, consequently, prior adoption and use" and ruled that "based
on the facts established, it is safe to conclude that the Junior Party has
satisfactorily discharged the burden of proving priority of adoption and
use and is entitled to registration." It is well-settled that we are precluded
from making further inquiry, since the findings of fact of the Director of
Patents in the absence of any showing that there was grave abuse of
discretion is binding on us 12 and the findings of facts by the Director of
Patents are deemed conclusive in the Supreme Court provided that they
are supported by substantial evidence. 13 Petitioner has failed to show
that the findings of fact of the Director of Patents are not substantially
supported by evidence nor that any grave abuse of discretion was
committed.