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FABERGE v IAC

It is not difficult to discern from the foregoing statutory enactments that private respondent may be
permitted to register the trademark "BRUTE" for briefs produced by it notwithstanding petitioner's
vehement protestations of unfair dealings in marketing its own set of items which are limited to: after-
shave lotion, shaving cream, deodorant, talcum powder and toilet soap. In as much as petitioner has not
ventured in the production of briefs, an item which is not listed in its certificate of registration,
petitioner cannot and should not be allowed to feign that private respondent had invaded petitioner's
exclusive domain. To be sure, it is significant that petitioner failed to annex in its Brief the so-called
"eloquent proof that petitioner indeed intended to expand its mark "BRUT" to other goods. Even then, a
mere application by petitioner in this aspect does not suffice and may not vest an exclusive right in its
favor that can ordinarily be protected by the Trademark Law. In short, paraphrasing Section 20 of the
Trademark Law as applied to the documentary evidence adduced by petitioner, the certificate of
registration issued by the Director of Patents can confer upon petitioner the exclusive right to use its
own symbol only to those goods specified in the certificate, subject to any conditions and limitations
stated therein.

DERMALINE v MYRA

BERRIS AGRI v ABYADANG

The SC found that both products have the component D-10 as their ingredient and that it is the
dominant feature in both their marks. Applying the Dominancy Test, Abyadang's product is similar to
Berris' and that confusion may likely to occur especially that both in the same type of goods. Also using
the Holistic Test, it was more obvious that there is likelihood of confusion in their packaging and color
schemes of the marks. The SC states that buyers would think that Abyadang's product is an upgrade of
Berris'.

FREDCO MFG CORP v HARVARD


Under Philippine law, a trade name of a national of a State that is a party to the Paris Convention,
whether or not the trade name forms part of a trademark, is protected “without the obligation of filing
or registration.” “Harvard” is the trade name of the world famous Harvard University, and it is also a
trademark of Harvard University. Under Article 8 of the Paris Convention, as well as Section 37 of R.A.
No. 166, Harvard University is entitled to protection in the Philippines of its trade name “Harvard” even
without registration of such trade name in the Philippines. This means that no educational entity in the
Philippines can use the trade name “Harvard” without the consent of Harvard University. Likewise, no
entity in the Philippines can claim, expressly or impliedly through the use of the name and mark
“Harvard,” that its products or services are authorized, approved, or licensed by, or sourced from,
Harvard University without the latter’s consent

GABRIEL v DR PEREZ

SUPERIOR v KUNNAN ENTERPRISES

SHANRI LA INTL v CA
Certificate of Registration No. 31904, upon which the infringement case is based, remains valid and
subsisting for as long as it has not been cancelled by the Bureau or by an infringement court. As such,
Developers Group's Certificate of Registration in the principal register continues as "prima facie
evidence of the validity of the registration, the registrant's ownership of the mark or trade-name, and of
the registrant’s exclusive right to use the same in connection with the goods, business or services
specified in the certificate." Since the certificate still subsists, DevelopersGroup may thus file a
corresponding infringement suit and recover damages from any person who infringes upon the former's
rights

Del Monte Corp. v. CA (GR L-78325, Jan. 25, 1990)

In determining whether two trademarks are confusingly similar, the two marks in their entirety as they
appear in the respective labels must be considered in relation to the goods to which they are attached;
the discerning eye of the observer must focus not only on the precognizant words but also on the other
features appearing on both labels. It has been correctly held that side-by-side comparison is not the final
test of similarity. In determining whether a trademark has been infringed, we must consider the mark as
a whole and not as dissected.

Asia Brewery, Inc. v. CA (GR 103543, July 5, 1993)

Infringement is determined by a test of dominancy. If the competing trademark contains the main or
essential or dominant features of another and confusion and deception is likely to result, infringement
takes place. A closer look at the trademark of both companies will show that the dominant features of
each absolutely bear no similarity to each other

No unfair competition. Sec 29, Republic Act No. 166 as amended describes unfair competition as the
employment of deception or any other means contrary to good faith by which a person shall pass off the
goods manufactured by him or in which he deals, or his business, or services, for those of another who
has already established goodwill for his similar goods, business or services, or any acts calculated to
produce the same result. Therefore, the universal test question is whether the public is likely to be
deceived.
Emerald Garment Mfg. v. CA (GR 100098, December 29, 1995)

Fruit of the Loom, Inc. v. CA (GR L-32747; Nov. 29, 2004)

In cases involving infringement of trademark brought before this Court, it has been consistently held
that there is infringement of trademark when the use of the mark involved would be likely to cause
confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the
commodity. The discerning eye of the observer must focus not only on the predominant words but also
on the other features appearing in both labels in order that he may draw his conclusion where one is
confusingly similar to the other. The similarities of the competing trademarks in this case are completely
lost in the substantial differences in the design and general appearance of their respective hang tags.
We have examined the two trademarks as they appear in the hang tags submitted by the parties and We
are impressed more by the dissimilarities than by the similarities appearing therein.

McDonald’s v. MacJoy Fastfood (GR No. 166115, Feb. 2, 2007)

Colorable imitation denotes such a close or ingenious imitation as to be calculated todeceive ordinary
The dominancy test not only looks at the visual comparisons between two trademarks but also the aural
impressions created by the marks in the public mind as well as connotative comparisons, giving little
weight to factors like prices, quality, sales outlets and market segments.

Societe des Produits Nestle v. CA (GR 112012, April 4, 2001)


Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary
persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention
as a purchaser usually gives, as to cause him to purchase the one supposing it to be the other.
In determining if colorable imitation exists, jurisprudence has developed two kinds of tests - the
Dominancy Test and the Holistic Test.
O The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks
which might cause confusion or deception and thus constitute infringement.
O On the other side of the spectrum, the holistic test mandates that the entirety of the marks in
question must be considered in determining confusing similarity.

Converse Rubber v. Universal Rubber (GR L-27906 Jan. 8, 1987)

The determinative factor in ascertaining whether or not marks are confusingly similar to each other “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.
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 new brand for it.”
Even if not all the details just mentioned were identical, with the general appearance alone of the two
products, any ordinary, or even perhaps even [sic] a not too perceptive and discriminating customer
could be deceived … “

But even assuming, arguendo, that the trademark sought to be registered by respondent is distinctively
dissimilar from those of the petitioner, the likelihood of confusion would still subsists, not on the
purchaser’s perception of the goods but on the origins thereof.
Levi Strauss v. Clinton Apparelle (GR 138900, Sept. 20, 2005)

Skechers USA v. Interpacific Trading (GR 164321; Mar. 23, 2011)

Ana Ang v. Toribio Teodoro (GR L-48226, Dec. 14, 1942)


SC found it unnecessary to apply the Doctrine of Secondary Meaning because the phrase was neither
geographic nor descriptive, was originally capable of exclusive appropriation as a trade-mark. SC noted,
though, that even if so, Teodoro has used the phrase for so long, it has acquired a proprietary
connotation.

SC also points out 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. People may not disagree that shoes
and shirts are not as unrelated as fountain pens and razor blades, for instance. The mere relation or
association of the articles is not controlling. So even if, Ang and Teodoro had different goods, the phrase
cannot still be used by Ang.
Pearl & Dean v. Shoemart ( GR 148222, Aug. 15, 2003)

Mighty Corp. v. E&J Gallo (GR 154342; July 14, 2004)

In resolving whether goods are related, several factors come into play:
· the business (and its location) to which the goods belong
· the class of product to which the good belong
· the product’s quality, quantity, or size, including the nature of the package, wrapper or container
· the nature and cost of the articles
· the descriptive properties, physical attributes or essential characteristics with reference to their
form, composition, texture or quality
· the purpose of the goods
· whether the article is bought for immediate consumption, that is, day-to-day household items
· the field of manufacture
· the conditions under which the article is usually purchased and
· the articles of the trade through which the goods flow, how they are distributed, marketed,
displayed and sold.

The test of fraudulent simulation is to the likelihood of the deception of some persons in some measure
acquainted with an established design and desirous of purchasing the commodity with which that design
has been associated. The simulation, in order to be objectionable, must be as appears likely to mislead
the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to
purchase.

Converse v. Jacinto Rubber (GR-L 27425 & 30505; April 28, 1980)

Priority in registration in the Philippines of a trademark is not material in an action for unfair
competition as distinguished from an action for infringement of trademark. The basis of an action for
unfair competition is confusing and misleading similarity in general appearance, not similarity of
trademarks.The Court is not impressed by defendants' good faith in claiming that they have the right to
continue manufacturing "Custom built" of Identical design and appearance as "Chuck Taylor".While it is
true that the licensing agreement between plaintiff Converse and defendant did not materialise, the
execution of the documents by the defendants constitute an admission on the part of plaintiff Converse
Rubber's property right in design and appearance of "Chuck Taylor
Yu. V. CA (G.R. No. 86683; Jan. 21, 1993)

The right to perform an exclusive distributorship agreement and to reap the profits resulting from such
performance are proprietary rights which a party may protect and which may otherwise not be
diminished, nay, rendered illusory by the expedient act of utilizing or interposing a person or firm to
obtain goods from the supplier to defeat the very purposefor which the exclusive distributorship was
conceptualized, at the expense of the sole authorized distributor.(2) ScopeThe Article speaks of unfair
competition in:(a) Agricultural enterprises(b) Commercial enterprises(c) Industrial enterprises(d)
LaborThus, the following acts, among others, are not allowed:(a) A strike prematurely declared. (Insular
Sugar Ref. Corp.v. C.I.R., GR L-7594, Sep. 8, 1954).(b) A strike for trivial, unjust, or unreasonable cause.
(LuzonMarine Dept. Union v. Luzon Stevedoring Co., 47 O.G.[Supp. No. 12] 146).(c) A strike carried out
thru force, intimidation or other unlawful means. (Luzon Marine Dept. Union v. LuzonStevedoring Co.,
47 O.G. [Supp. No. 12] 146).(d) A strike in order to circumvent valid obligations entered into a collective
bargaining contract. (Manila OrientalSawmill Co. v. Nat. Labor Union, et al., 4330, Mar. 24,1952).(e)
Cutthroat competition (where one is ready to lose if only to drive somebody else out of business).
(Tuttle v. Black,107 Minn. 145).Art. 28CIVIL CODE OF THE PHILIPPINES181(f) The making of any false
statement in the course of trade to discredit the goods, business, or services of another.(See RA 166).(g)
The making of goods so as to deceive purchasers (and by “purchasers,’’ the law means “ordinary or
average purchasers’’ and not necessarily “intelligent buyers’’).

U-Bix Corp. v. Ariancorp (CA-GR CV No. 41620; Aug. 9, 1995)

Willaware v Jeschris Mfg

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