TRADEMARK CASES.

9/9/18
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
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
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:
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”.
Page 1 of 13

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
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
Page 2 of 13
 adverse effect of the trademark applied for by the protection of industrial property of foreign
defendant, is in actual use and available for nationals in this country. However, any
commercial purposes anywhere in the Philippines. protection accorded has to be made subject to
the limitations of Philippine laws.
 Considering that R.A. No. 166, as amended,
A fundamental principle of Philippine Trademark specifically Sections 228 and 2-A29 thereof,
Law is that actual use in commerce in the mandates actual use of the marks and/or
Philippines is a pre-requisite to the acquisition of emblems in local commerce and trade before
ownership over a trademark or a trade name. they may be registered and ownership thereof
acquired, the petitioners cannot, therefore,
dispense with the element of actual use. Their
In view of the explicit representation of petitioners being nationals of member-countries of the
in the complaint that they are not engaged in Paris Union does not alter the legal situation.
business in the Philippines, it inevitably follows that  Withal, the fact that international law has been
no conceivable damage can be suffered by them not made part of the law of the land does NOT by
to mention the foremost consideration heretofore any means imply the primacy of international
discussed on the absence of their “right” to be law over national law in the municipal sphere.
protected. Under the DOCTRINE OF INCORPORATION
as applied in most countries, rules of
Xx International Law are given a standing EQUAL,
not superior, to national legislative enactments.
 Such a foreign corporation may have the
PHILIP MORRIS, INC. v. FORTUNE
personality to file a suit for infringement but it
TOBACCO CORPORATION
may not necessarily be entitled to protection
 RECIPROCITY: While petitioners enjoy the
due to absence of actual use of the emblem in
statutory presumptions arising from such
the local market.
registration, i.e., as to the validity of the
 The registration of trademark cannot be deemed
registration, ownership and the exclusive right
conclusive as to the actual use of such
to use the registered marks, they may not
trademark in local commerce. As it were,
successfully sue on the basis alone of their
registration does not confer upon the registrant
respective certificates of registration of
an absolute right to the registered mark. The
trademarks. For, petitioners are still foreign
certificate of registration merely constitutes
corporations. As such, they ought, as a
prima facie evidence that the registrant is the
condition to availment of the rights and
owner of the registered mark. Evidence of non-
privileges vis-à-vis their trademarks in this
usage of the mark rebuts the presumption of
country, to show proof that, on top of Philippine
trademark ownership, as what happened here
registration, their country grants substantially
when petitioners no less admitted not doing
similar rights and privileges to Filipino citizens
business in this country.
pursuant to Section 21-A20 of R.A. No. 166.
 Shangri-La International Hotel Management, Ltd.
 ID: The aforementioned reciprocity requirement is
v. Development Group of Companies, Inc.:
a condition sine qua non to filing a suit by a
trademark is a creation of use and, therefore,
foreign corporation which, unless alleged in the
actual use is a pre-requisite to exclusive
complaint, would justify dismissal thereof, a
ownership; registration is only an
mere allegation that the suit is being pursued
administrative confirmation of the existence of
under Section 21-A of R.A. No. 166 not being
the right of ownership of the mark, but does not
sufficient.
perfect such right; actual use thereof is the
 REGISTRATION VERSUS ACTUAL USE: True,
perfecting ingredient.
the Philippines’ adherence to the Paris
 With the foregoing perspective, it may be stated
Convention24 effectively obligates the country
right off that the registration of a trademark
to honor and enforce its provisions as regards
unaccompanied by actual use thereof in the
Page 3 of 13
 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.
Xx
PHILIP MORRIS, INC. VS. FORTUNE TOBACCO
CORPORATION (Equal Standing of International Law
and Municipal Law)
Penned by: GARCIA, J.:
Petition for review under Rule 45 of the Rules of Court,
petitioners Philip Morris, Inc., Benson & Hedges
(Canada) Inc., and Fabriques de Tabac Reunies, S.A.
(now Philip Morris Products S.A.) seek the reversal and
setting aside of the following issuances of the Court of
Appeals (CA) in CA-G.R. CV No. 66619: PETITION
DENIED
1. Decision dated January 21, 20031 affirming an
earlier decision of the Regional Trial Court of Pasig
City, Branch 166, in its Civil Case No. 47374
 Dismissed the complaint for trademark
infringement and damages thereat commenced
by the petitioners against respondent Fortune
Tobacco Corporation; and
2. Resolution dated May 30, 20032 denying petitioners’
motion for reconsideration.
FACTS OF THE CASE:
 Petitioner Philip Morris, Inc., a corporation
(State of Virginia, U.S.A), is the registered
owner of the trademark “MARK VII” for
cigarettes. (per Certificate of Registration No.
18723 issued on April 26, 1973 by the Philippine
Patents Office (PPO)
 Similarly, petitioner Benson & Hedges
(Canada), Inc., a subsidiary of Philip Morris, Inc.,
is the registered owner of the trademark
“MARK TEN” for cigarettes (PPO Certificate of
Registration No. 11147)
 Fabriques de Tabac Reunies, S.A. (Swiss
company), another subsidiary of Philip Morris,
Inc., is the assignee of the trademark “LARK,”
(Trademark Certificate of Registration No.
19053) (originally registered in 1964 by Ligget
and Myers Tobacco Company)
 Respondent Fortune Tobacco Corporation, a
company organized in the Philippines,
manufactures and sells cigarettes using the
trademark “MARK.”
 Petitioners, on the claim that an infringement of
their respective trademarks had been
committed, filed, on August 18, 1982, a
Complaint for Infringement of Trademark and
Damages against respondent Fortune Tobacco
Corporation, docketed as Civil Case No. 47374
of the Regional Trial Court of Pasig, Branch 166.
The decision under review summarized what
happened next, as follows:
o Prayer for the issuance of a preliminary injunction, [petitioners]
alleged that they are foreign corporations not doing business in
the Philippines and are suing on an isolated transaction.
o Countries in which they are domiciled grant to
corporate or juristic persons of the Philippines the
privilege to bring action for infringement, without
need of a license to do business in those countries.
o [Petitioners] likewise manifested [being registered owners of the
trademark “MARK VII” and “MARK TEN”
o registered the trademarks in their respective countries
of origin
 by virtue of the long and extensive usage of
the same, these trademarks have already
gained international fame and acceptance
 [respondent], without any previous consent
from any of the [petitioners], manufactured
and sold cigarettes bearing the identical
and/or confusingly similar trademark
“MARK”
 have caused and is likely to cause confusion
or mistake, or would deceive purchasers
and the public in general into buying these
products under the impression and
mistaken belief that they are buying
[petitioners’] products.
o Invoked provisions of the Paris Convention for the
Protection of Industrial and Intellectual Property (Paris
Convention)
o Philippines is a signatory, [petitioners] pointed out that
upon the request of an interested party, a country of
the Union may prohibit the use of a trademark which
constitutes a reproduction, imitation, or translation of
a mark already belonging to a person entitled to the
benefits of the said Convention. In accordance with
Section 21-A in relation to Section 23 of Republic Act
166, as amended, they are entitled to relief in the form
Page 4 of 13
 of damages [and] the issuance of a writ of preliminary
injunction which should be made permanent.
o [Respondent] filed its Answer denying [petitioners’]
material allegations and averred [among other things] that
“MARK” is a common word, which cannot particularly identify a
product to be the product of the [petitioners]
o After the termination of the trial on the merits trial court
rendered its Decision dated November 3, 1999 dismissing the
complaint and counterclaim after making a finding that the
[respondent] did not commit trademark infringement against the
[petitioners].
o The issue of whether or not there was infringement of
the [petitioners’] trademarks by the [respondent] was likewise
answered in the negative. It expounded that “in order for a
name, symbol or device to constitute a trademark, it must, either
by itself or by association, point distinctly to the origin or
ownership of the article to which it is applied and be of such
nature as to permit an exclusive appropriation by one person”.
 Maintaining to have the standing to sue in the
local forum and that respondent has committed
trademark infringement, petitioners went on
appeal to the CA. (Appellate recourse docket
CA-G.R. CV No. 66619)
o CA decision on January 21, 2003 (while
ruling for petitioners on the matter of
their legal capacity to sue in this
country for trademark infringement)
affirmed the trial court’s decision on
the underlying issue of respondent’s
liability for infringement.
 Motion for reconsideration denied by the CA
(Resolution of May 30, 2003)
ISSUES
 Petitioners seek petition for review (Court of
Appeals):
o (1) whether or not petitioners, as
Philippine registrants of trademarks,
are entitled to enforce trademark
rights in this country;
o (2) whether or not respondent has
committed trademark infringement
against petitioners by its use of the
mark “MARK” for its cigarettes, hence
liable for damages.
 Respondent: issue the propriety of the petition as it
allegedly raises questions of fact.
 The petition is bereft of merit.
 Petition raises both questions of fact and law
o question of law exists when the doubt or
difference arises as to what the law is on a
certain state of facts
o question of fact when the doubt or difference
arises as to the truth or falsity of alleged facts
 Court is not the proper venue to
consider factual issues as it is not a
trier of facts
 Unless the factual findings of the
appellate court are mistaken, absurd,
speculative, conflicting, tainted with
grave abuse of discretion, or contrary
to the findings culled by the court of
origin, we will not disturb them
 Petitioners: contentions should be treated as purely legal
since they are assailing erroneous conclusions deduced
from a set of undisputed facts
 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 in by others.
o A trademark deserves protection.
PETITIONER:
 Petitioners assert that, 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.
o Right and mechanism are accorded by
 Section 21-A of Republic Act
(R.A.) No. 166 or the
Trademark Law, as amended
 Article 2 of the Paris
Convention for the Protection
of Industrial Property, aka Paris
Convention.
 Not doing business in the Philippines does not
mean that cigarettes bearing their trademarks
are not available and sold locally. Citing
Converse Rubber Corporation v. Universal
Rubber Products, Inc., such availability and sale
may be effected through the acts of importers
and distributors.
 Entitlement to protection even in the absence
of actual use of trademarks in the country
o Philippines’ adherence to the Trade
Related Aspects of Intellectual
Property Rights or the TRIPS
Agreement
Page 5 of 13
 o enactment of R.A. No. 8293, or the
Intellectual Property Code (“IP Code”)
o fame of a trademark may be acquired
through promotion or advertising with
no explicit requirement of actual use in
local trade or commerce
 Before discussing petitioners’ claimed
entitlement to enforce trademark rights in the
Philippines, it must be emphasized that their
standing to sue in Philippine courts had been
recognized, and rightly so, by the CA
o such right to sue does not necessarily
mean protection of their registered
marks in the absence of actual use in
the Philippines.
Thus clarified, what petitioners now harp about is their
entitlement to protection on the strength of
registration of their trademarks in the Philippines.
HELD/RATIO:
As we ruled in G.R. No. 91332,18 :
1. RECIPROCITY REQUIREMENT
 Registration of a trademark gives the
registrant (petitioners) advantages denied
non-registrants or ordinary users (respondent)
o validity of the registration
o 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.
o Petitioners: still foreign corporations
o condition to availment of the rights
and privileges & their trademarks in
this country:
 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.
 In Leviton Industries v. Salvador
o Court: reciprocity requirement is a
condition sine qua non to filing a suit by
a foreign corporation
 Unless alleged in the complaint,
would justify dismissal
o complainant is a national of a Paris
Convention- adhering country, its
allegation that it is suing under said
Section 21-A would suffice, because
the reciprocal agreement between the
two countries is embodied and
supplied by the Paris Convention
 being considered part of
Philippine municipal laws, can
be taken judicial notice of in
infringement suits.
2. REGISTRATION VERSUS ACUAL USE!!
 members of the Paris Union does not
automatically entitle petitioners to the
protection of their trademarks in this country
ABSENT ACTUAL USE OF THE MARKS IN LOCAL
COMMERCE AND TRADE.
 Philippines’ adherence to the Paris Convention
effectively obligates the country to honor and
enforce its provisions( as regards the
protection of industrial property of foreign
nationals in this country)
o However, any protection accorded has
to be made subject to the limitations
of Philippine laws.
o Hence, despite Article 2 of the Paris
Convention which substantially
provides that:
 (1) nationals of member-
countries shall have in this
country rights specially
provided by the Convention as
are consistent with Philippine
laws, and enjoy the privileges
that Philippine laws now grant
or may hereafter grant to its
national
 (2) while no domicile
requirement in the country
where protection is claimed
shall be required of persons
entitled to the benefits of the
Union for the enjoyment of any
industrial property rights
 foreign nationals must still
observe and comply with
the conditions imposed by
Page 6 of 13
 Philippine law on its
nationals.
 R.A. No. 166 (as amended, specifically Sections
228 and 2-A29), mandates actual use of the
marks and/or emblems in local commerce and
trade before they may be registered and
ownership thereof acquired
o the petitioners cannot, therefore,
dispense with the element of actual
use.
o Their being nationals of member-
countries of the Paris Union does not
alter the legal situation.
 In Emerald Garment Mfg. Corporation v. Court
of Appeals, the Court reiterated its rulings in
Sterling Products International, Inc. v.
Farbenfabriken Bayer Aktiengesellschaft,
Kabushi Kaisha Isetan v. Intermediate Appellate
Court, and Philip Morris v. Court of Appeals
and Fortune Tobacco Corporation on the
importance of ACTUAL COMMERCIAL USE
OF A TRADEMARK in the Philippines
notwithstanding the Paris Convention:
o The provisions of the 1965 Paris
Convention … relied upon by private
respondent and Sec. 21-A of the
Trademark Law were sufficiently
expounded upon and qualified in
the recent case of Philip Morris,
Inc., et. al. vs. Court of Appeals:
 Following universal
acquiescence and comity,
our municipal law on
trademarks regarding the
requirements of actual use in
the Philippines must
subordinate an international
agreement inasmuch as 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.
 A foreign corporation) may
have the capacity to sue for
infringement … but whether
they have an exclusive right
over their symbol as to justify
issuance of the controversial
writ will depend on actual
use of their trademarks in
the Philippines in line with
Sections 2 and 2-A of the
same law.
 It is thus incongruous for
petitioners to claim that
when a foreign corporation
not licensed to do business
in the Philippines files a
complaint for infringement,
the entity need not be
actually using its trademark
in commerce in the
Philippines.
 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.
 Registration of trademark cannot be deemed
conclusive as to the actual use of such
trademark in local commerce.
o registration does not confer upon the
registrant an absolute right to the
registered mark.
Page 7 of 13
 o merely constitutes prima facie evidence
that the registrant is the owner of the
registered mark.
o Evidence of non-usage of the mark  Definition of Trademark: This definition has been
rebuts the presumption of trademark
ownership
 We stress that registration in the Philippines of
trademarks does not ipso facto convey an
absolute right or exclusive ownership thereof.
o Shangri-La International Hotel
Management, Ltd. v. Development
Group of Companies, Inc.
 Trademark is a creation of use
 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
 does not perfect such
 THREE
right; actual use
thereof is the
perfecting ingredient.
 Petitioners’ reliance on Converse Rubber
Corporation is quite misplaced
o different factual milieu
o foreign owner of a Philippine trademark,
albeit not licensed to do, and not so
engaged in, business in the Philippines, may
actually earn reputation or goodwill for its
goods in the country.
o But unlike in the instant case, evidence of
actual sales of Converse rubber shoes, such
as sales invoices, receipts and the
testimony of a legitimate trader, was
presented in Converse.
 This Court also finds the IP Code and the TRIPS
Agreement to be inapplicable
o the infringement complaint filed in
August 1982 and tried under the aegis
of R.A. No. 166, as amended.
o The IP Code (January 1, 1998) no
provision on retroactivity; TRIPS
Agreement (December 16, 1994)
 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.
Xxx
MIRPURI vs. COURT OF APPEALS; 318
SCRA
simplified in R.A. No. 8293, the Intellectual
Property Code of the Philippines, which defines
a "trademark" as "any visible sign capable of
distinguishing goods." In Philippine
jurisprudence, the function of a trademark is to
point out distinctly the origin or ownership of
the goods to which it is affixed; to secure to
him, who has been instrumental in bringing into
the market a superior article of merchandise,
the fruit of his industry and skill; to assure the
public that they are procuring the genuine
article; to prevent fraud and imposition; and to
protect the manufacturer against substitution
and sale of an inferior and different article as
his product
DISTINCT FUNCTIONS OF
TRADEMARKS: Modern authorities on
trademark law view trademarks as performing
three distinct functions: (1) they indicate origin
or ownership of the articles to which they are
attached; (2) theyguarantee that those articles
come up to a certain standard of quality; and
(3) they advertise the articles they symbolize.
 Today, the trademark is not merely a symbol of
origin and goodwill; it is often the most effective
agent for the actual creation and protection of
goodwill. It imprints upon the public mind an
anonymous and impersonal guaranty of
satisfaction, creating a desire for further
satisfaction. In other words, the mark actually
sells the goods. The mark has become the
"silent salesman," the conduit through which
direct contact between the trademark owner
and the consumer is assured. It has invaded
popular culture in ways never anticipated that it
has become a more convincing selling point
than even the quality of the article to which it
refers
 The Convention of Paris for the Protection of
Industrial Property, otherwise known as the
Paris Convention, is a multilateral treaty that
seeks to protect industrial property consisting
of patents, utility models, industrial designs,
trademarks, service marks, trade names and
indications of source or appellations of origin,
Page 8 of 13
 and at the same time aims to repress unfair
competition
 In short, foreign nationals are to be given the
same treatment in each of the member
countries as that country makes available to its
own citizens. Nationals of the various member
nations are thus assured of a certain minimum
of international protection of their industrial  Res judicata therefore does not apply to the
property.
 Article 6bis governs protection of well-known
trademarks. Under the first paragraph, each
country of the Union bound itself to undertake
to refuse or cancel the registration, and prohibit the trademark in the United States and
the use of a trademark which is a reproduction,
imitation or translation, or any essential part of recognition and reputation of the trademark
which trademark constitutes a reproduction,
liable to create confusion, of a mark considered
by the competent authority of the country
where protection is sought, to be well-known in
the country as being already the mark of a
person entitled to the benefits of the
Convention, and used for identical or similar
goods.
 Article 6bis of the Paris Convention is a self-
executing provision and does not require
legislative enactment to give effect in the
member country.
 The essential requirement under Article 6bis is
that the trademark to be protected must be
"well-known" in the country where protection is
sought. The power to determine whether a
trademark is well-known lies in the "competent
authority of the country of registration or use."
This competent authority would be either the
registering authority if it has the power to
decide this, or the courts of the country in
question if the issue comes before a court.
 Intellectual and industrial property rights
cases are not simple property cases.
Trademarks deal with the psychological  It is also noted that the oppositions in the first
function of symbols and the effect of these
symbols on the public at large. Trademarks
play a significant role in communication,
commerce and trade, and serve valuable and
interrelated business functions, both nationally
and internationally. For this reason, all
agreements concerning industrial property, like
those on trademarks and tradenames, are
intimately connected with economic
development. Industrial property encourages
investments in new ideas and inventions and
stimulates creative efforts for the satisfaction of
human needs. They speed up transfer of
technology and industrialization, and thereby
bring about social and economic progress.
These advantages have been acknowledged
by the Philippine government itself.
instant case and respondent Court of
Appeals did not err in so ruling. IPC No.
2049 raised the issue of ownership of the
trademark, the first registration and use of
other countries, and the international
established by extensive use and
advertisement of private respondent's
products for over forty years here and
abroad. These are different from the issues of
confusing similarity and damage in IPC No.
686. The issue of prior use may have been
raised in IPC No. 686 but this claim was limited
to prior use in the Philippines only. Prior use in
IPC No. 2049 stems from private respondent's
claim as originator of the word and symbol
"Barbizon," as the first and registered user of
the mark attached to its products which have
been sold and advertised worldwide for a
considerable number of years prior to
petitioner's first application for registration of
her trademark in the Philippines. Indeed,
these are substantial allegations that raised
new issues and necessarily gave private
respondent a new cause of action. Res
judicata does not apply to rights, claims or
demands, although growing out of the same
subject matter, which constitute separate or
distinct causes of action and were not put in
issue in the former action.
and second cases are based on different
laws. The opposition in IPC No. 686 was
based on specific provisions of the Trademark
Law, i.e., Section 4 (d) on confusing similarity
of trademarks and Section 8 on the requisite
damage to file an opposition to a petition for
registration. The opposition in IPC No. 2049
invoked the Paris Convention, particularly
Article 6bis thereof, E.O. No. 913 and the two
Memoranda of the Minister of Trade and
Page 9 of 13
Industry. This opposition also invokedArticle
189 of the Revised Penal Code which is a
statute totally different from the Trademark
Law.
4. Victorias Milling Co. vs. Ong Su (79 SCRA 207)
[G.R. No. L-28499. September 30, 1977.]
FACTS: The petitioner, Victorias Milling Company, Inc., a
domestic corporation and engaged in the manufacture and
sale of refined granulated sugar, is the owner of the trademark
“VICTORIAS” and diamond design registered in the Philippines
Patent Office on November 9, 1961.
The respondent ONG Su is engaged in the repacking and sale
of refined sugar and is the owner of the trademark
“VALENTINE” and design registered in the Philippines Patent
Office on June 20, 1961.
On October 4, 1963, Victorias Milling Company, Inc. filed with
the Philippines Patent Office a petition to cancel the
registration of the ONG Su trademark “Valentine.”
The petitioner alleged that its trademark “Victorias” and
diamond design has become distinctive of its sugar long before
the respondent used its trademark; that the registration of
“Valentine” and design has caused and will cause great
damage to petitioner by reason of mistake, confusion, or
deception among the purchasers because it is similar to its
“Victorias” trademark; that registration was fraudulently
obtained by respondent ONG Su; and that “Valentine” falsely
suggests a connection with Saint Valentine or with an
institution or belief connected therewith.
In his answer to the petition the respondent averred that he is
doing business under the name and style “Valentine
Packaging” and has registered the trademark “Valentine” with
a design for sugar and was issued Certificate of Registration
No. 8891 dated June 20, 1961; that the trademark “Victorias”
with diamond design and the trademark “Valentine” with a
design are two different marks; and that there is absolutely no
likelihood of confusion, mistake or deception to purchasers
through the concurrent use of the petitioner’s mark “Victorias”
with a diamond design and the respondents’ mark “Valentine”
with a design in connection with sugar.
The Director of Patents denied the petition to cancel the
certificate of registration of the respondent ONG Su covering
the trademark “Valentine” and design. “Herein that the
petitioner failed to establish that diamond design
component of its mark has acquired a secondary meaning
and that the literal portion of the marks have no similarity,
there is no reasonable likelihood of purchaser confusion
resulting from registrant’s use of VALENTINE within a
diamond and petitioner’s use of VICTORIAS within a
diamond.”
ISSUE: WON RESPONDENT DIRECTOR OF PATENTS
ERRED IN HOLDING PETITIONER’S DIAMOND DESIGN
HAS NOT ACQUIRED A SECONDARY MEANING.
HELD: NO. The DOP is correct. Peitioner has not acquired
secondary meaning.
The contention of petitioner that the diamond design in its
trademark is an index of origin has no merit. The petitioner has
not shown that the design portion of the mark has been so
used that purchasers recognize the design, standing alone, as
indicating goods coming from the registrant. As correctly stated
by the Director of Patents, common geometric shapes such as
diamonds ordinarily are not regarded as indicia of origin for
goods to which the marks are applied unless they have
acquired a secondary meaning. And there is no evidence that
the diamond design in the trademark of the petitioner has
acquired a secondary meaning with respect to its sugar
business. The word “Victorias” is what identifies the sugar
contained in the bag as the product of the petitioner. Indeed,
the petitioner has advertised its sugar in bags marked
“Victorias” with oval, hexagon and other designs.
The evidence is that ONG Su has been using his trademark
since prior to the last World War and he obtained the
registration thereof on June 20, 1961. Vijandre declared that
the petitioner started to use its trademark only in 1947. Said
trademark was registered on November 9, 1961. It cannot be
said, therefore, that the respondent ONG Su imitated the
trademark of the petitioner.
It seems clear that the words “Valentine” and “Victorias” and
the names and places of business of Victorias Milling
Company, Inc. and ONG Su are the dominant features of the
trademarks in question. The petitioner has not established
such a substantial similarity between the two trademarks in
question as to warrant the cancellation of the trademark
‘Valentine’ of the respondent ONG Su.
Xxx
Victorias Milling Company, Inc. vs. Ong Su and the
Honorable Tiburcio S. Evalle (G.R. No. L-28499)
PROCEDURE AND FACTS
On October 4,1963, Victorias Milling Company,
Inc. filed with the Philippine Patent office a
petition to cancel the registration of Ong Su
trademark “Valentine.”
The petitioner allied that its trademark
“Victorias” which was registered on November
9,1961 and diamond design has distinctive of its
sugar long before the respondent used its
trademark; that the registration of “Valentine”
and design has caused and will cause great
damage to petitioner by reason of mistake,
confusion, or deception among the purchasers
because it is similar to its “Victorias trademark;
Page 10 of 13
that registration was fraudulently obtained by
Ong Su and that “ Valentine falsely suggest a
connection with Saint Valentine or with an
institution or belief.
The respondent averred that he is doing business
under the name and style “Valentine Packaging”
and has registered the trademark “Valentine”
with a design for sugar and was registered on June
20,1961; that the trademark “Victorias with
diamond design and the trademark “Valentine
with a design are two different marks; and that
there is absolutely no likelihood of confusion,
mistake or deception to purchasers through the
concurrent use of the petitioner’s mark “Victorias.
The Director of Patents denied the petition to
cancel the certificate of registration of the
respondent Ong Su covering the trademark
“Valentine. The decision of the Director of Patents
was also affirmed by the Supreme Court.
LEGAL ISSUES
1. Whether or not the respondent
director of patents erred in holding
that petitioner’s registered diamond
design is not an index of origin.
2. Whether or not the respondent
director of patents erred in holding
that petioner is required to establish
that its diamond design has acquired a
secondary meaning.
3. Whether or not the respondent
director of patents erred in holding
petitioner’s diamond design has not
acquired a secondary meaning.
4. Whether or not the respondent
director of patents erred in confining
HOLDING
his comparison of petitioner’s and
respondent’s respective trademarks to
one sole item of their design, ignoring
the complete labels as actually used in
trade and seen by consumers.
5. Whether or not the respondent
director of patents erred in taking the
position that in cases of trademark
cancellation involving among others
6. Whether or not the respondent
director of patents erred in holding
that because the literal portions of the
respective trademarks in question,
namely, the respective names
“Victorias and “Valentine”, have no
similarity, there is no reasonable
likelihood of purchaser confusion.
7. Whether or not the respondent
director of patents erred in assuming
that petioner, or the owner of any
imitated or infringed trademark for
that matter must establish actual
purchaser confusion.
8. Whether or not the respondent
director of patents erred in holding
that the registration of the Valentine
trademark by respondent Ong Su was
not prudulently obtained.
9. Whether or not the respondent
director of patents, acting through
hearing officer Amando Marquez, erred
in admitting respondent Ong Su’s
exhibits pertaining to one Mariano Ang
said name not having been clearly
established as an alias, although
admittedly unauthorized, of
respondent Ong Su.
Page 11 of 13
1. The contention of petitioner that the
diamond design in its trademark is an
index of origin has no merit.
2. The petitioner was not able to establish
a secondary meaning. The petioners
has not shown that the design portion
of the mark has been so used that
purchasers recognize the design,
standing alone, as indicating goods
coming from registrant.
3. No, as correctly stated by the Director
of Patents, common geometric shapes
such as diamonds ordinarily are not
regarded as index of origin for goods to
which the remarks are applied. There is
no evidence that the diamond design in
the trademark of the petitioner has
acquired a secondary meaning with
respect to its sugar business.
4. No, The word Victorias is what
identifies the sugar contained in the
bag as the product of the petitioner.
5. No, the respondent trademark cannot
be cancelled. The evidence is that Ong
Su has been using his trademark since
prior to the last World War and he
obtained the registration therof on
June 20,1961 while petitioner
registered on November 9,1961.
6. No, it is clear that the words “Valentine
and Victorias are not similar in spelling
and do not have a similar sound when
pronounced.
7. No, The proposed testimony of
Ernesto Duran that in February 1963 he
went to Arangue market and bought
one bag of sugar which he thought was
Victorias and when he went home he
found out that the sugar was marked
“Valentine” is not sufficient evidence
that the two trademarks ar so similar
that buyers are confused.
8. No, there is no evidence that the
respondent Ong Su had obtained the
registration of his trademark
“Valentine” and design by means of
fraud. The said trademark was
registered in the Philippines Patent
Office before the petitioner registered
its trademark.
9. No, the counsel of petitioner had
already extensively cross-examined
Ong Su as to a citizenship, alien
certificate of registration and the other
name Mariano Ang. It seems
immaterial whether or not Ong Su has
judicial authority to use Mariano Ang
as an alias. There is evidence that even
before the last World War, the
trademark “Valentine and design had
been used under the name of either
Ong Su or Mariano Ang.
REASON FOR A DECISION
There is no violation of trademark in this case. The
petitioner never acquired secondary meaning in
trademark used. There is no reasonable likelihood
of purchaser’s confusion. Color alone, unless
displayed in distinct or arbitrary design, does not
function as trademark. Also, the printing
sequences or arrangement of such legends as
weight, contents and manufacturer packing, it is
merely a matter pertaining to goods. A matter of
unfair competition which the Patent office has no
jurisdiction.
Page 12 of 13
Doctrine of Secondary Meaning

mark has become distinctive, as used on or in

connection with the applicant's goods in commerce.

secondary meaning doctrine is that the mark comes to

identify not only the goods but the source of those
goods. To establish secondary meaning, it must be
shown that the primary significance of the term in the
minds of the consuming public is not the product but
the producer.

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

Page 13 of 13