22. Canon v.

Court of Appeals
G.R. No. 120900 . July 20, 2000 GONZAGA-REYES, J

59. Emerald Garment v. CA

G.R. No. 100098 . December 29, 1995 KAPUNAN, J

Petitioner s Claim: PETITIONERS CLAIM Petitioner protests the appropriation of the mark CANON by private respondent on the ground that petitioner has used and continues to use the trademark CANON on its wide range of goods worldwide. Petitioner, aside from using CANON as its corporate name, uses such mark for its paints and other chemical products. Petitioner claims that it is possible that the public could presume that petitioner would also produce a wide variety of footwear considering the diversity of its products marketed worldwide. Respondent s Claim: RESPONDENTS CLAIM The Court of Appeals ruled that the trademark CANON used by petitioner in its chemical products can be used by private respondent for its sandal because the products of these two parties are dissimilar. Issue: ISSUE CANON as its

Petitioner s Claim: PETITIONERS CLAIM Emerald Garment was able to register STYLISTIC MR. LEE in the supplemental register. H.D. Lee Co., Inc. filed a petition for the cancellation of its registration arguing that it so closely resembles its own trademark Lee registered and used in the Philippines. Respondent s Claim: RESPONDENTS CLAIM
The Director of Patents, using the test of dominancy, declared that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. It is undeniably the dominant feature of the mark." Issue:

ISSUE
Are the two trademarks confusingly

similar? Held:

RULING

Can respondent use trademark for its sandals? Held: RULING

Yes, undoubtedly, the paints and other chemical products of petitioner that carry the trademark CANON are unrelated to sandals, the product of private respondent. In order for the Treaty of Paris to apply the following conditions must be satisfied: (1) the mark must be internationally known; (2) the subject of the right must be a trademark; (3) the mark must be for use in the same or similar goods; and (4) the person claiming must be the owner. Canon failed to prove the condition under no. 3.

No, there are two tests: Dominancy Test and the Holistic Test. The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks while the Holistic Test considers the entirety of the marks. The Supreme Court considered the trademark as a whole and that STYLISTIC MR. LEE is not confusingly similar to Lee . Another reason Lee is primarily a surname. Private respondent cannot acquire exclusive ownership over and singular use of said term. A personal name or surname may not be monopolized as a trademark or trade name.