CASES ON SYLLABUS

CANON KABUSHIKI KAISHA V. CA

FACTS:
Respondent NSR Rubber filed an application for registration of the mark CANON for
sandals. Petitioner Canon, a Japanese corporation, opposed alleging it will be damaged
by the registration. Petitioner presented evidence that it was the owner of the mark
CANON in various countries and in the Philippines for goods such as paints, chemical
products, toner and dye stuff. BPTTT dismissed the opposition and gave due course to
respondent’s application. CA affirmed. Petitioner invokes Article 8 of the Paris
Convention which affords protection to a tradename whether or not it forms part of a
trademark.

ISSUE:Whether or not petitioner may be afforded protection of its trade name.

HELD: NO.

The term “trademark” is defined by RA 166, the Trademark Law, as including “any
word, name, symbol, emblem, sign or device or any combination thereof adopted and
used by a manufacturer or merchant to identify his goods and distinguish them for those
manufactured, sold or dealt in by others.” Tradename is defined by the same law as
including “individual names and surnames, firm names, tradenames, devices or words
used by manufacturers, industrialists, merchants, agriculturists, and others to identify
their business, vocations, or occupations; the names or titles lawfully adopted and used
by natural or juridical persons, unions, and any manufacturing, industrial, commercial,
agricultural or other organizations engaged in trade or commerce.” Simply put, a trade
name refers to the business and its goodwill; a trademark refers to the goods.

The Convention of Paris for the Protection of Industrial Property, otherwise known as the
Paris Convention, of which both the Philippines and Japan, the country of petitioner, are
signatories, 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, and at the same time aims to repress unfair
competition. We agree with public respondents that the controlling doctrine with respect
to the applicability of Article 8 of the Paris Convention is that established in Kabushi
Kaisha Isetan vs. IAC.As pointed out by the BPTTT: “Regarding the applicability of
Article 8 of the Paris Convention, this Office believes that there is no automatic
protection afforded an entity whose tradename is alleged to have been infringed through
the use of that name as a trademark by a local entity. To illustrate – if a taxicab or bus
company in a town in the United Kingdom or India happens to use the tradename “Rapid
Transportation”, it does not necessarily follow that “Rapid” can no longer be registered in
Uganda, Fiji, or the Philippines.”
Furthermore, when a trademark is used by a party for a product in which the other party
does not deal, the use of the same trademark on the latter’s product cannot be validly
objected to.

Converse Rubber vs Universal Rubber 147 scra 154

FACTS: Converse Rubber Corporation is an American corporation while Universal

Rubber Products, Inc. is a corporation licensed to do business in the country. Converse
has been operating since 1946. Universal Rubber has been operating since 1963. Later,
Universal Rubber filed an application for the trademark “Universal Converse and
Device” before the Philippine Patent Office. Converse Rubber opposed as it averred that
the word “Converse” which is part of its corporate name cannot be granted as part of
Universal Rubber’s trademark or trade name because it will likely deceive purchasers of
Universal Rubber’s products as it may be mistaken by unwary customers to be
manufactured by Converse Rubber. The Director of Patents did not grant the opposition
by Converse Rubber.

ISSUE: Whether or not the decision of the Director of Patents is correct.

HELD: No. From a cursory appreciation of the Converse Rubber’s corporate name
“CONVERSE RUBBER CORPORATION” it is evident that the word “CONVERSE” is
the dominant word which identifies Converse Rubber from other corporations engaged in
similar business. Universal Rubber, in the stipulation of facts, admitted Converse
Rubber’s existence since 1946 as a duly organized foreign corporation engaged in the
manufacture of rubber shoes. This admission necessarily betrays its knowledge of the
reputation and business of petitioner even before it applied for registration of the
trademark in question. Knowing, therefore, that the word “CONVERSE” belongs to and
is being used by Converse Rubber, and is in fact the dominant word in its corporate
name, Universal Rubber has no right to appropriate the same for use on its products
which are similar to those being produced by Converse Rubber.

PHILIPS EXPORT VS CA
FACTS:
Philips Export B.V. (PEBV) filed with the SEC for the cancellation of the word “Philips”
the corporate name of Standard Philips Corporation in view of its prior registration with
the Bureau of Patents and the SEC. However, Standard Philips refused to amend its
Articles of Incorporation so PEBV filed with the SEC a petition for the issuance of a Writ
of Preliminary Injunction, however this was denied ruling that it can only be done when
the corporate names are identical and they have at least 2 words different. This was
affirmed by the SEC en banc and the Court of Appeals thus the case at bar.

ISSUE:
Whether or not Standard Philips can be enjoined from using Philips in its corporate name

RULING: YES

A corporation’s right to use its corporate and trade name is a property right, a right in
rem, which it may assert and protect against the whole world. According to Sec. 18 of the
Corporation Code, no corporate name may be allowed if the proposed name is identical
or deceptively confusingly similar to that of any existing corporation or to any other
name already protected by law or is patently deceptive, confusing or contrary to existing
law.

For the prohibition to apply, 2 requisites must be present:

(1) the complainant corporation must have acquired a prior right over the use of such
corporate name and
(2) the proposed name is either identical or deceptively or confusingly similar to that of
any existing corporation or to any other name already protected by law or patently
deceptive, confusing or contrary to existing law.

With regard to the 1st requisite, PEBV adopted the name “Philips” part of its name 26
years before Standard Philips. As regards the 2nd, the test for the existence of confusing
similarity is whether the similarity is such as to mislead a person using ordinary care and
discrimination. Standard Philips only contains one word, “Standard”, different from that
of PEBV. The 2 companies’ products are also the same, or cover the same line of
products. Although PEBV primarily deals with electrical products, it has also shipped to
its subsidiaries machines and parts which fall under the classification of “chains, rollers,
belts, bearings and cutting saw”, the goods which Standard Philips also produce. Also,
among Standard Philips’ primary purposes are to buy, sell trade x x x electrical wiring
devices, electrical component, electrical supplies. Given these, there is nothing to prevent
Standard Philips from dealing in the same line of business of electrical devices. The use
of “Philips” by Standard Philips tends to show its intention to ride on the popularity and
established goodwill of PEBV.

PROLINE & QUESTOR VS UNIVERSAL

Facts:
Proline is the exclusive distributor of Spalding sports products inthe Philippines, while
Questor, a US-based corporation becamethe owner of the trademark “Spalding”. They
filed a petitionagainst respondent Universal, a domestic corporation whichmanufactures
and sell sports goods including fake “spaldingballs”. By virtue of valid search warrant,
Universal’s factory wassearched resulting to the seizure of fake “spalding balls” and
theinstruments used in the manufacture thereof. Civil and criminalcases were filed
against Universal. Thecivil case was droppedfor it was doubtful whether Questor had
indeed acquiredtheregistration rights over the mark “spalding”. The criminal casewas
also dismissed due to insufficiency of evidence through ademurrer. The CA affirmed the
lower court’s decision. Universalthereafter, filed for damages against Proline and Questor
whichwas granted by the lower court and affirmed by the CA.

Issue:
Whether or not there is unfair competition.

RULING: YES
Universal failed to show that thefiling of criminal charges of petitioner herein was bereft
ofprobable cause. Petitioners could not have been moved by legal
malice in instituting the criminal complaint for unfair competition.

The criminal complaint for unfair competition, including all other legal remedies
incidental thereto, was initiated by petitioners in their honest belief that the charge was
meritorious.

For indeed it was.

The law brands business practices which are unfair, unjust or deceitful not only as
contrary to public policy but also as inimical to private interests. In the instant case, we
find quite aberrant Sehwani's reason for the manufacture of 1,200 "Spalding" balls, i.e.,
the pending application for trademark registration of UNIVERSAL with the Patent
Office, when viewed in the light of his admission that the application for registration with
the Patent Office was filed on 20 February 1981, a good nine (9) days after the goods
were confiscated by the NBI. This apparently was an afterthought but nonetheless too late
a remedy. Be that as it may, what is essential for registrability is proof of actual use in
commerce for at least sixty (60) days and not the capability to manufacture and distribute
samples of the product to clients.
Asia Brewery vs CA

FACTS: San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc.
(ABI) for infringement of trademark and unfair competition on account of the latter's
BEER PALE PILSEN or BEER NA BEER product which has been competing with
SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market.

The trial court dismissed SMC's complaint because ABI "has not committed trademark
infringement or unfair competition against" SMC

On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial
court, finding the defendant Asia Brewery Incorporated GUILTY of infringement of
trademark and unfair competition. ABI then filed a petition for certiorari.

ISSUE: Are the words PALE PILSEN as part of ABI’s trademark constitute infringement
of SMC’s trademark?

RULING: NO

Because “pale pilsen” are generic words descriptive of the color (pale) and of a type of
beer (pilsen), which is a light bohemian beer with strong hops flavor that originated in the
City of Pilsen in Czechoslovakia. Pilsen is a primarily geographically descriptive word,
hence, non‐ registrable and not appropriable by any beer manufacturer.

IN VIEW WHEREOF, the petition is denied and the Decision and Resolution of the CA
areaffirmed.

Pribhdas J. Mirpuri vs Court of Appeals, Director of Patents and the

Barbizon Corporation

Facts:
On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of petitioner
Pribhdas J. Mirpuri, filed an application with the Bureau of Patents for the
registration of the trademark "Barbizon" for use in brassieres and ladies
undergarments. Barbizon Corporation, the private respondent of the case at bar
opposed the application on the ground that the mark Barbizon of the applicant is
confusingly similar to the trademark Barbizon of which the opposer has not
abandoned. Furthermore, it was alleged by the opposer that it shall suffer damage
by the registration of the mark Barbizon and its business reputation and goodwill
will suffer great and irreparable injury, and that the use by the applicant by the said
mark which resembles the trademark used and owned by oppose constitutes an
unlawful appropriation of a mark previously used in the Philippines and not
abandoned therefore a statutory violation of Sec 4 (d) of Republic Act No. 166, as
amended. The opposition was dismissed and Escobar was issued a certificate of
registration for the trademark “Barbizon”, and subsequently Escobar assigned all
her rights and interest over the trademark to petitioner Pribhdas J. Mirpuri.
However, Escobar failed to file an Affidavit of Use of the trademark so Escobar’s
certificate of registration was cancelled. Consequently, she reapplied for the
registration of the cancelled trademark. Opposer's BARBIZON as well as its
BARBIZON and Bee Design and BARBIZON and Representation of a Woman
trademarks are deemed to qualify as well-known trademarks.

Issue:
Whether or not the Convention of Paris for the Protection of Industrial Property
affords protection to a foreign corporation against a Philippine applicant for the
registration of a similar trademark

Held:
On record, there can be no doubt that respondent-applicant's sought-to-be-
registered trademark BARBIZON is similar, in fact obviously identical, to opposer's
alleged trademark BARBIZON, in spelling and pronunciation. The only appreciable
but very negligible difference lies in their respective appearances or manner of
presentation. Respondent-applicant's trademark is in bold letters (set against a
black background), while that of the opposer is offered in stylish script letters.

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, and
at the same time aims to repress unfair competition. The Convention is essentially a
compact among various countries which, as members of the Union, have pledged to
accord to citizens of the other member countries trademark and other rights
comparable to those accorded their own citizens by their domestic laws for an
effective protection against 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
property.

The main argument is embedded on Art 6 of the Paris Convention which governs the
protection of well-known marks. The essential requirement of the said article 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

KHO VS CA

FACTS:Elidad Kho is the owner of KEC Cosmetics Laboratory and she was also the
holder of copyrights over Chin Chun Su and its Oval Facial Cream Container/Case. She
also bought the patent rights over the Chin Chun Su & Device and Chin Chun Su for
medicated cream from one Quintin Cheng, who was the assignee of Shun Yi Factory – a
Taiwanese factory actually manufacturing Chin Chun Suproducts.
Kho filed a petition for injunction against Summerville General Merchandising and
Company to enjoin the latter from advertising and selling Chin Chun Su products, in
similar containers as that of Kho, for this is misleading the public and causing Kho to
lose income; the petition is also to enjoin Summerville from infringing upon Kho’s
copyrights.
Summerville in their defense alleged that they are the exclusive and authorized importer,
re-packer and distributor of Chin Chun Su products; that Shun Yi even authorized
Summerville to register its trade name Chin Chun Su Medicated Cream with the
Philippine Patent Office; that Quintin Cheng, from whom Kho acquired her patent rights,
had been terminated (her services) by Shun Yi.

ISSUE: Whether or not Kho has the exclusive right to use the trade name and its
container.

HELD: No. Kho has no right to support her claim for the exclusive use of the subject
trade name and its container. The name and container of a beauty cream product are
proper subjects of a trademark (not copyright like what she registered for) inasmuch as
the same falls squarely within its definition. In order to be entitled to exclusively use the
same in the sale of the beauty cream product, the user must sufficiently prove that she
registered or used it before anybody else did. Kho’s copyright and patent registration of
the name and container would not guarantee her the right to the exclusive use of the same
for the reason that they are not appropriate subjects of the said intellectual rights.
Consequently, a preliminary injunction order cannot be issued for the reason that the
petitioner has not proven that she has a clear right over the said name and container to the
exclusion of others, not having proven that she has registered a trademark thereto or used
the same before anyone did.
SAMBAR VS LEVI

FACTS:

Private respondents alleged in their complaint that Levi Strauss and Co. (LS&Co.), an
internationally known clothing manufacturer, own the arcuate design trademark which
was registered under US Trademark Registration No. 404,248 on November 16, 1943.
That sometime in 1987, CVSGIC and Venancio Sambar, without the consent and
authority of private respondents and in infringement and unfair competition, sold and
advertised, and despite demands to cease and desist, continued to manufacture, sell and
advertise denim, pants under the brand name “Europress” with back pockets bearing a
design similar to the arcuate trademark of private respondents, thereby causing confusion
on the buying public, prejudiced to private respondent’s goodwill and property right.

Sambar filed a separate answer. He admitted that copyright Registration No. 1-1998 was
issued to him, but he denied using it. He said he did not authorize anyone to use the
copyrighted design.

Trial court issued a writ of preliminary injunction enjoining CVSGIC and petitioner from
manufacturing, advertising and selling pants with the arcuate design on their back
pockets. Private respondents moved for reconsideration praying for the cancellation of
petitioner’s copyright registration. Trial court granted the prayer. Petitioner appealed to
the Court of Appeals which affirmed the ruling of the trial court.

ISSUE:

Whether petitioner infringe on private respondent’s arcuate design.

RULING:

To be entitled to a copyright, the thing being copyrighted must be original, created by the
author through his own skill, labor and judgment, without directly copying or evasively
imitating the work of another.

Both the trial court and the Court of

PUMA v IAC

FACTS: On February 8, 1984, the petitioner, a foreign corporation organized and

existing under the laws of the United States, brought a petition before the Philippine
Patent Office the cancellation of Certificate of Registration of the trademark HUSH
PUPPIES and DOG DEVICE issued to the private respondent, a Filipino citizen. In
support of its petition for cancellation, the petitioner alleged, inter alia, that it is the
registrant of the internationally known trademark HUSH PUPPIES and the DEVICE of a
Dog in the United States and in other countries which are members of the Paris
Convention for the Protection of Industrial Property, that the goods sold by the private
respondent, on the one hand, and by the petitioner, on the other hand, belong to the
same class such that the private respondent’s use of the same trademark in the
Philippines (which is a member of said Paris Convention) in connection with the goods
he sells constitutes an act of unfair competition, as denied in the Paris Convention.
Subsequently, the private respondent moved to dismiss the petition on the ground of res
judicata, averring that in 1973, or more than ten years before this petition was filed, the
same petitioner filed two petitions for cancellation, all of which involved the trademark
HUSH PUPPIES and DEVICE, before the Philippine Patent Office. The Director of
Patents had ruled in all three inter parties cases in favor of the private respondent’s
predecessor-in-interest. The CA affirmed these decisions. Consequently, the Director of
Patents denied the petition for cancellation. On appeal, the Court of Appeals at first set
aside the Director’s decision, however, upon reconsideration the latter was revived.

ISSUE: Is the present petition for cancellation barred by res judicata?

HELD: Yes. The Court has repeatedly held that for a judgment to be a bar to a
subsequent case, the following requisites must concur: (1) it must be a final judgment;
(2) the court which rendered it had jurisdiction over the subject matter and the parties;
(3) it must be a judgment on the merits; and (4) there must be Identity between the two
cases, as to parties, subject matter, and cause of action. Contrary to the petitioner’s
assertion, the judgment in the previous cases involving respondent’s trademark
registration had long since become final and executor. That Sec. 17 of Republic Act
166, also known as the Trademark Law, allows the cancellation of a registered
trademark is not a valid premises for the petitioner’s proposition that a decision granting
registration of a trademark cannot be imbued with the character of absolute finality as is
required in res judicata. A judgment or order is final, as to give it the authority of res
judicata, if it can no longer be modified by the court issuing it or by any other court. In
the case at bar, the decision of the Court of Appeals affirming that of the Director of
Patents, in the cancellation cases filed in 1973, was never appealed to us.
PHILIPS EXPERT V. CA
206 SCRA 457

FACTS:
Petitioner filed an action against private respondent for the use of the latter of a corporate name
confusingly similar with petitioner’s.
HELD:
Under the corporation code, no corporate name may be allowed by the SEC if the
proposed name is identical or deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by law or is patently deceptive, confusing or
contrary to existing laws. The policy behind this provision is to avoid fraud upon the public,
which would have the occasion to deal with the entity concerned, the evasion of legal obligations
and duties, and the reduction of difficulties of administration and supervision over corporations.
The corporate names of private respondents are identical or deceptively or confusingly
similar to that of petitioner’s.