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Catabona, Jovic M.

1. law on trademarks, tradenames etc

(CONVERSE RUBBER CORP V UNIVERSAL RUBBER PRODUCTS, GR


27906, 1987)

2. function of trademark

(MIRPURI V CA, 318 scra 516)


CONVERSE RUBBER CORPORATION V. UNIVERSAL RUBBER PRODUCTS (G.R. NO. L-
27906)

Facts:

Respondent Universal Rubber applied for the registration of the trademark


‘Universal Converse and Device’ used on its rubber shoes and rubber slippers.
Petitioner Converse opposed on the ground that the trademark sought to be
registered is confusingly similar to the word ‘Converse’ which is part of its corporate
name ‘Converse Rubber Corporation’ and will likely deceive purchasers and cause
irreparable injury to its reputation and goodwill in the Philippines. Respondent
argued that the trademarks petitioner uses on its rubber shoes are ‘Chuck Taylor’
and ‘All Star Device.’ The Director of Patents gave due course to respondent’s
application. MR was denied.

Issue:

Whether or not there is confusing similarity between the two trademarks.

Ruling:

YES.

The trademark of respondent “UNIVERSAL CONVERSE and DEVICE” is imprinted in


a circular manner on the side of its rubber shoes. In the same manner, the
trademark of petitioner which reads “CONVERSE CHUCK TAYLOR” is imprinted on a
circular base attached to the side of its rubber shoes. 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. By appropriating the word “CONVERSE,” respondent’s products
are likely to be mistaken as having been produced by petitioner. “The risk of
damage is not limited to a possible confusion of goods but also includes confusion
of reputation if the public could reasonably assume that the goods of the parties
originated from the same source.
MIRPURI V. CA (G.R. NO. 114508)

Facts:

Lolita Escobar applied for the registration of the trademark ‘Barbizon’ for her
products such as brassieres and ladies undergarments. Respondent Barbizon
Corporation, an American corporation, opposed alleging that petitioner’s mark is
confusingly similar to its own trademark ‘Barbizon.’ Escobar’s application was given
due course and her trademark was registered. Later, Escobar assigned all her rights
to petitioner Mirpuri who failed to file an Affidavit of Use resulting in the cancellation
of the trademark. Petitioner then applied for registration of the trademark to which
respondent Barbizon again opposed, now invoking the protection under Article 6bis
of the Paris Convention. The Director of Patents declaring respondent’s opposition
was already barred, petitioner’s application was given due course. CA reversed the
judgment.

Issue:

Whether or not respondent may invoke the protection under Article 6bis of the Paris
Convention.

Ruling:

YES.

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. Art. 6bis is a self-executing
provision and does not require legislative enactment to give it effect in the member
country. It may be applied directly by the tribunals and officials of each member
country by the mere publication or proclamation of the Convention, after its
ratification according to the public law of each state and the order for its execution.
The Philippines and the United States of America have acceded to the WTO
Agreement. Conformably, the State must reaffirm its commitment to the global
community and take part in evolving a new international economic order at the
dawn of the new millennium.

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