TRADEMARK CASES. 9/9/18
This
Prepare for oral recitations.
1. Ang Tibay v. Teodoro (74 Phil 50)
2. Philip Morris, Inc. v. CA 224 scra 624
3. Mirpuri vs. CA
4. Victorias Milling Co. vs. Ong Su (79 SCRA 207)
5. Unno Commercial vs. Gen Milling Corp, 205 Phils.707
6. Philip Morris, Inc. v. CA (274 SCRA 576)
7. Shangrila Hotels vs. DGCI, GR No. 159938, March 31,
2006
8. Asia Brewery vs. CA, GR No. 103543, 5 July 1993
9. Sterling Products vs. Faber Farbenfabriken AG 27 SCRA
1214
10. Pag-asa Industrial Corp. vs. CA, 118 SCRA 526
11. Mc Donald's Corp. vs. LC Big Mak Burger, GR No.
243993 August 18, 2004
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.
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.
Facts:
Respondent Toribio Teodoro has continuously used "Ang Tibay," both
as a trade-mark and as a trade-name, in the manufacture and sale of
slippers, shoes, and indoor baseballs since 1910. On September 29,
1915, he formally registered it as trade-mark and as trade-name on
January 3, 1933.
Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for
pants and shirts on April 11, 1932, and established a factory for the
manufacture of said articles in the year 1937.
The Court of First Instance of Manila absolved the defendant (Ms. Ang)
on the grounds that the two trademarks are dissimilar and are used on
different and non-competing goods; that there had been no exclusive
use of the trade-mark by the plaintiff; and that there had been no fraud
in the use of the said trade-mark by the defendant because the goods
on which it is used are essentially different from those of the plaintiff.
The Court of Appeals reversed said judgment, directing the Director of
Commerce to cancel the registration of the trade-mark "Ang Tibay" in
favor of petitioner, and perpetually enjoining the latter from using said
trade-mark on goods manufactured and sold by her.
Thus, this case, a petition for certiorari.
Issue:
Page 1 of 4
Are the goods or articles or which the two trademarks are used similar
or belong to the same class of merchandise?
Ruling:
Yes, pants and shirts are goods closely similar to shoes and slippers.
They belong to the same class of merchandise as shoes and slippers.
They are closely related goods.
The Supreme Court affirmed the judgment of the Court of Appeals and
added that “although two non-competing articles may be classified
under to 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 trademarks
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 that the first
user made the second user’s goods”.
Philip Morris Inc vs
Court of Appeals
Doctrine of Incorporation
PHILIP MORRIS, INC. VS COURT OF APPEALS
G.R. No. 91332 July 16, 1993
PHILIP MORRIS, INC., BENSON & HEDGES
(CANADA), INC’, AND FABRIQUES OF TABAC
REUNIES, S.A petitioners,
vs.
THE COURT OF APPEALS AND FORTUNE
TOBACCO CORPORATION, respondents.
Facts:
This is a petition for review under Rule 45 of the
Rules of Court, to seek the reversal and setting aside
of the following issuances of the Court of Appeals
(CA).
Philip Morris, Inc. and two other petitioners are
ascribing whimsical exercise of the faculty
conferred upon magistrates by Section 6, Rule 58 of
the Revised Rules of Court when respondent Court
of Appeals lifted the writ of preliminary injunction
it earlier had issued against Fortune Tobacco
Corporation, from manufacturing and selling
“MARK” cigarettes in the local market. Banking on
the thesis that petitioners’ respective symbols
“MARK VII”, ‘MARK TEN”, and “MARK”, also
for cigarettes, must be protected against
unauthorized appropriation.
All petitioners are not doing business in the
Philippines but are suing on an isolated transaction,
They Invoked provisions of the Paris Convention
for the Protection of Industrial and Intellectual
Property. As corporate nationals of member-
countries of the Paris Union, they can sue before
Philippine courts for infringement of trademarks, or
for unfair competition, without need of obtaining
registration or a license to do business in the
Philippines, and without necessity of actually doing
business in the Philippines.
Philip Morris and its subsidiaries filed the
complaint for infringement and damages against
Fortune Tobacco before the Pasig Regional Trial
Court (RTC) for manufacturing and selling
cigarettes bearing the trademark “Mark” which is
identical and confusingly similar to Philip Morris
trademarks. The said act was dismissed. Hence, this
petition at bar.
Issue/s:
Whether or not there has been an invasion of
plaintiffs’ right of property to such trademark or
trade name.
Discussions:
Following universal acquiescence and comity, our
municipal law on trademarks regarding the
requirement of actual use in the Philippines must
subordinate an international agreement inasmuch as
Page 2 of 4
 the apparent clash is being decided by a municipal
tribunal. Withal, the fact that international law has
been made part of the law of the land does not by
any means imply the primacy of international law
over national law in the municipal sphere. Under
the doctrine of incorporation as applied in most
countries, rules of international law are given a
standing equal, not superior, to national legislative
enactments
Ruling/s:
No. There is no proof that any of petitioner’s
products which they seek to protect from any
adverse effect of the trademark applied for by
defendant, is in actual use and available for
commercial purposes anywhere in the Philippines.
A fundamental principle of Philippine Trademark
Law is that actual use in commerce in the
Philippines is a pre-requisite to the acquisition of
ownership over a trademark or a trade name.
In view of the explicit representation of petitioners
in the complaint that they are not engaged in
business in the Philippines, it inevitably follows that
no conceivable damage can be suffered by them not
to mention the foremost consideration heretofore
discussed on the absence of their “right” to be
protected.
Xx
PHILIP MORRIS, INC. v. FORTUNE
TOBACCO CORPORATION
 RECIPROCITY: While petitioners enjoy the
statutory presumptions arising from such
registration, i.e., as to the validity of the
registration, ownership and the exclusive right
to use the registered marks, they may not
successfully sue on the basis alone of their
respective certificates of registration of
trademarks. For, petitioners are still foreign
corporations. As such, they ought, as a
condition to availment of the rights and
privileges vis-à-vis their trademarks in this
country, to show proof that, on top of Philippine
registration, their country grants substantially
similar rights and privileges to Filipino citizens
pursuant to Section 21-A20 of R.A. No. 166.
 ID: The aforementioned reciprocity requirement is
a condition sine qua non to filing a suit by a
foreign corporation which, unless alleged in the
complaint, would justify dismissal thereof, a
mere allegation that the suit is being pursued
under Section 21-A of R.A. No. 166 not being
sufficient.
 REGISTRATION VERSUS ACTUAL USE: True,
the Philippines’ adherence to the Paris
Convention24 effectively obligates the country
to honor and enforce its provisions as regards
the protection of industrial property of foreign
nationals in this country. However, any
protection accorded has to be made subject to
the limitations of Philippine laws.
 Considering that R.A. No. 166, as amended,
specifically Sections 228 and 2-A29 thereof,
mandates actual use of the marks and/or
emblems in local commerce and trade before
they may be registered and ownership thereof
acquired, the petitioners cannot, therefore,
dispense with the element of actual use. Their
being nationals of member-countries of the
Paris Union does not alter the legal situation.
 Withal, the fact that international law has been
made part of the law of the land does NOT by
any means imply the primacy of international
law over national law in the municipal sphere.
Under the DOCTRINE OF INCORPORATION
as applied in most countries, rules of
International Law are given a standing EQUAL,
not superior, to national legislative enactments.
 Such a foreign corporation may have the
personality to file a suit for infringement but it
may not necessarily be entitled to protection
due to absence of actual use of the emblem in
the local market.
 The registration of trademark cannot be deemed
conclusive as to the actual use of such
trademark in local commerce. As it were,
registration does not confer upon the registrant
an absolute right to the registered mark. The
certificate of registration merely constitutes
prima facie evidence that the registrant is the
Page 3 of 4
 owner of the registered mark. Evidence of non-
usage of the mark rebuts the presumption of
trademark ownership, as what happened here
when petitioners no less admitted not doing
business in this country.
 Shangri-La International Hotel Management, Ltd.
v. Development Group of Companies, Inc.:
trademark is a creation of use and, therefore,
actual use is a pre-requisite to exclusive
ownership; registration is only an
administrative confirmation of the existence of
the right of ownership of the mark, but does not
perfect such right; actual use thereof is the
perfecting ingredient.
 With the foregoing perspective, it may be stated
right off that the registration of a trademark
unaccompanied by actual use thereof in the
country accords the registrant only the
standing to sue for infringement in Philippine
courts. Entitlement to protection of such
trademark in the country is entirely a different
matter.
 For lack of convincing proof on the part of the
petitioners of actual use of their registered
trademarks prior to respondent’s use of its
mark and for petitioners’ failure to demonstrate
confusing similarity between said trademarks,
the dismissal of their basic complaint for
infringement and the concomitant plea for
damages must be affirmed. The law, the
surrounding circumstances and the equities of
the situation call for this disposition.

Page 4 of 4