MISHAWAKA MFG CO vs KRESGE CO.

FACTS: The petitioner, which manufactures and sells shoes and rubber heels, employs a trademark, registered under the Trademark Act of 1905consisting of a red circular plug embedded in the center of a heel. The heels were not sold separately, but were attached to shoes made by the petitioner. It has spent considerable sums of money in seeking to gain the favor of the consuming public by promoting the mark as assurance of a desirable product. The respondent sold heels not made by the petitioner, but bearing a mark described by the District Court as "a circular plug of red or reddish color so closely resembling that of the plaintiff [petitioner] that it is difficult to distinguish the products sold by the defendant from the plaintiff's products." The heels sold by the respondent were inferior in quality to those made by the petitioner, and "this tended to destroy the goodwill created by the plaintiff in the manufacture of its superior product." ISSUE: What is the role of the protection of trademarks? RULING: The protection of trademarks is the law's recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trademark is a merchandising shortcut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same -- to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trademark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the owner can obtain legal redress. And, in this case, we are called upon to ascertain the extent of the redress afforded for infringement of a mark registered under the Trademark Act of 1905. ARCE SONS AND COMPANY vs. SELECTA BISCUIT COMPANY, INC., ET AL., FACTS: On August 31, 1955, Selecta Biscuit Company, Inc., hereinafter referred to as respondent, filed with the Philippine Patent Office a petition for the registration of the word "SELECTA" as trade-mark to be use in its bakery products alleging that it is in actual use thereof for not less than two months before said date and that "no other persons, partnership, corporation or association ... has the right to use said trade-mark in the Philippines, either in the identical form or in any such near resemblance thereto, as might be calculated to deceive." Its petition was referred to an examiner for study who found that the trade-mark sought to be registered resembles the word "SELECTA" used by the Acre and Sons and Company, hereinafter referred to as petitioner, in its milk and ice cream products so that its use by respondent will cause confusion as to the origin of their respective goods. Consequently, he recommended that the application be refused. However, upon reconsideration, the Patent Office ordered the publication of the application for purposes of opposition. ISSUE: What are the economic and guarantee functions of trademarks? Is the word Selecta registrable? RULING: A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of a particular producer or manufacturer may be distinguished from that of others, and its sole function is to designate distinctively the origin of the products to which it is attached." The word 'SELECTA', it is true, may be an ordinary or common word in the sense that may be used or employed by any one in promoting his business or enterprise, but once adopted or coined in connection with one's business as an emblem, sign or device to characterize its products, or as a badge of authenticity, it may acquire a secondary meaning as to be exclusively associated with its products and business.2 In this

sense, its used by another may lead to confusion in trade and cause damage to its business. And this is the situation of petitioner when it used the word 'SELECTA' as a trade-mark. In this sense, the law gives its protection and guarantees its used to the exclusion of all others a (G. & C. Merriam Co. v. Saalfield, 198 F. 369, 373). And it is also in the sense that the law postulates that "The ownership or possession of a trademark, . . . shall be recognized and protected in the same manner and to the same extent, as are other property rights known to the law," thereby giving to any person entitled to the exclusive use of such trade-mark the right to recover damages in a civil action from any person who may have sold goods of similar kind bearing such trade-mark (Sections 2-A and 23, Republic Act No. 166, as amended). Philip Morris vs CA -- IPL Facts: Petitioner Philip Morris is the registered owner of the trademark MARK VII for cigarettes. Similarly, petitioners Benson & Hedges (Canada), Inc., a subsidiary of Philip Morris, Inc. is the registered owner of the trademark MARK TEN for cigarettes and Fabriques de Tabac Reunies, S.A. (Swiss company), another subsidiary of Philip Morris Inc., is the assignee of the trademark LARK, 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. Petitioners filed for the issuance of a preliminary injunction and alleged that they are foreign corporations not doing business in the Philippines and are suing on an isolated transaction. After the termination of the trial on the merits, the court rendered its Decision dismissing the complaint after making a finding that the [respondent] did not commit trademark infringement against the [petitioners]. The Trademark law is very clear. It requires actual commercial use of the mark prior to its registration. The records show that the petitioner has never conducted any business in the Philippines. It has never promoted its trade name or trademark in the Philippines. It is unknown to Filipino except the very few who may have noticed it while travelling abroad. It has never paid a single centavo of tax to the Philippine government. Under the law, it has no right to the remedy it seeks. In other words, petitioners may have the capacity to sue for infringement irrespective of lack of business activity in the Philippines on account of Section 21-A of the Trademark Law but the question 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 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. Issue: What are the three functions of trademark? Ruling: Modern authorities on trademark law view trademarks as symbols which perform three (3) distinct functions: first, they indicate origin or ownership of the articles to which they are attached; second, they guarantee that those articles come up to a certain standard of quality; third, they advertise the articles they symbolize. The first two (2) functions have long been recognized in trademark law which characterizes the goodwill or business reputation symbolized by a trademark as a property right protected by law. The third or advertisement function of trademark has become of especial importance given the modern technology of communication and transportation and the growth of international trade. Advertisement of trademarks is geared towards the promotion

of use of the marked article and the attraction of potential buyers and users. PHILIPPINE REFINING CO., INC.vs. NG SAM Facts:Private respondent filed with the PhilippinePatent Office an application for registrationof the trademark "CAMIA" for his product,ham, which falls under Class 47 (Foods andIngredients of Food). Petitioner opposed theapplication claiming that it first used saidtrademark on his products: lard, butter,cooking oil, abrasive detergents, polishingmaterials and soap of all kinds, some of which are likewise classified under Class47. The trademark "CAMIA" was first used inthe Philippines by petitioner on its productsin 1922 and registered the same in 1949. On November 25, 1960, respondent NgSam, a Chinese citizen residing in Iloilo City,filed an application with the PhilippinePatent Office for registration of the identicaltrademark "CAMIA" for his product, ham,which likewise falls under Class 47. Allegeddate of first use of the trademark byrespondent was on February 10, 1959. Director of Patents rendered a decisionallowing registration of the trademark"CAMIA" in favor of Ng Sam.finding that `thegoods of the parties are not of a character which purchasers would be likely to attributeto a common origin. Issue: Can registration of a similar trademark be allowed? Ruling:A rudimentary precept in trademark protection is that "the right to a trademark is a limited one, in the sense that others may used the same mark on unrelated goods." 1 Thus, as pronounced by the United States Supreme Court in the case of American Foundries vs. Robertson 2, "the mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on articles of a different description." Such restricted right over a trademark is likewise reflected in our Trademark law. Under Section 4(d) of the law, registration of a trademark which so resembles another already registered or in use should be denied, where to allow such registration could likely result in confusion, mistake or deception to the consumers. Conversely, where no confusion is likely to arise, as in this case, registration of a similar or even Identical mark may be allowed. Sterling Products Vs. Farbenfabriken Bayer Facts: The Bayer Cross in circle trademark was registered in Germany in 1904 to Farbenfabriken vorm. Friedr. Bayer (FFB), successor to the original Friedr. Bauyer et. Comp., and predecessor to Farbenfabriken Bayer aktiengessel craft (FB2). The Bayer, and Bayer Cross in circle trademarks were acquired by Sterling Drug Inc. when it acquired FFBs subsidiary Bayer Co. of New York as a result of the sequestration of its assets by the US Alien Property Custodian during World War I. Bayer products have been known in Philippines by the close of the 19th century. Sterling Drugs, Inc., however, owns the trademarks Bayer in relation to medicine. FBA attempted to register its chemical products with the Bayer Cross in circle trademarks. Sterling Products International and FBA seek to exclude each other from use of the trademarks in the Philippines. The trial court sustained SPIs right to use the Bayer trademark for medicines and directed FBA to add distinctive word(s) in their mark to indicate their products come from Germany. Both appealed. Issue: What is the principle of actual use in trademark law? Ruling: A rule widely accepted and firmly entrenched because it has come down through the years is that actual use in commerce or business is a prerequisite to the acquisition of the right of ownership over a trademark. This rule is spelled out in our. Trademark Law thus: SEC. 2-A. Ownership of trade-marks, trademark names and service-mark; how acquired. Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful business, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade, in business, and in the service rendered, may appropriate to his, exclusive use a trademark, a trade-name, or a service-mark

not so appropriated by another, to distinguish his merchandise, business, or service from the merchandise, business or service of others. The ownership or possession of a trademark, trade-name, service mark, heretofore or hereafter appropriated, as in this section provided, shall be recognized and protected in the same manner and to the same extent as are other property rights known to the law. (As inserted by Section 1 of Republic Act 638) Kellogg Co. v. National Biscuit Co., Facts: NABISCO sued Kellogg for unfair competition as the latter had been manufacturing shredded wheat cereal biscuits similar to that of the former. In its lawsuit, NABISCO complained of Kelloggs use of the term Shredded Wheat, their similarity in shape, and Kelloggs use on the box of a picture of two pillow-shaped cereal biscuits submerged in milk. The Court enjoined Kellogg from the use of 'Shredded Wheat' as its trade name and from advertising its product in the form and shape of plaintiff's biscuit. Thereafter, Kellog insisted that it was only forbidden from selling its product when Shredded Wheat is applied to a pillow-shaped biscuit, but that it was not enjoined from making its biscuit in the shape of plaintiffs biscuit nor from calling it Shredded Wheat, unless at the same time it uses upon its cartons plaintiffs trademark consisting of a dish with two biscuits in it. NABISCO claims that it has the exclusive right to the trade name Shredded Wheat as well as the exclusive right to make them pillow-shaped. ISSUE: Does NABISCO have the exclusive right to use the term Shredded Wheat? RULING: No. NABISCO has no exclusive right to the use of the term 'Shredded Wheat' as a trade name. For that is the generic term of the article, which describes it with a fair degree of accuracy; and is the term by which the biscuit in pillow-shaped form is generally known by the public. Since the term is generic, the original maker of the product acquired no exclusive right to use it. As Kellogg Company had the right to make the article, it had also the right to use the term by which the public knows it. Moreover, the name 'Shredded Wheat', as well as the product, the process and the machinery employed in making it, has been dedicated to the public. The basic patent for the product and for the process of making it, and many other patents for special machinery to be used in making the article, issued to Perky. In those patents the term 'shredded' is repeatedly used as descriptive of the product. The basic patent expired October 15, 1912; the others soon after. Since during the life of the patents 'Shredded Wheat' was the general designation of the patented product, there passed to the public upon the expiration of the patent, not only the right to make the article as it was made during the patent period, but also the right to apply thereto the name by which it had become known. McDONALDS v. BIG MAK FACTS: McDonalds Corporation is a corporation bound by the laws of the United States. It consists of many family marks including the Big Mac mark for its double-decker hamburger sandwich. The trademark for Big Mac is registered in the United States Trademark Registry as well as in the Philippines Intellectual Property Office for its franchises in the country. The approval by the then PBPTT for the registration of McDonald s for the Big Mac mark in the Principal Register was given on July 18, 1985. Respondent L.C. Big Mak Burger, Inc., a domestic corporation operating in Metro Manila and selling hamburger sandwiches along with other food items. The respondent corporation applied with PBPTT for the registration of Big Mak mark for its hamburger sandwiches but was quickly opposed by the petitioner

corporation on the ground that Big Mak was a colorable imitation of its registered BigMac mark, a mark which the petitioner exclusively owns. Respondent corporation claimed that they are not liable for

trademark infringement and unfair competition, as Big Mak is not a colorable imitation of Big Mac and also
because they do not pass of their hamburger sandwiches as those of petitioners Big Mac hamburgers. Although previous marks have been registered for the Big Mac mark by the Isaiyas Group of Corporations and one Rodolfo Topacio, the formers registration was only in the Supplemental registration of the PBPTT and the latters rights were acquired by McDonalds Corporation in a Deed of Assignment dated May 18, 1981. ISSUE: Is the word BIG generic and descriptive? RULING: The "Big Mac" mark, which should be treated in its entirety and not dissected word for word, is neither generic nor descriptive. Generic marks are commonly used as the name or description of a kind of goods. Descriptive marks, on the other hand, convey the characteristics, functions, qualities or ingredients of a product to one who has never seen it or does not know it exists. On the contrary, "Big Mac" falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the product it represents. As such, it is highly distinctive and thus valid. In the case at bar, there is only trademark infringement but no unfair competition.There is actually no notice to the public that the "Big Mak" hamburgers are products of herein respondents and not those of petitioners who have the exclusive right to the "Big Mac" mark. This clearly shows respondents' intent to deceive the public. Had respondents' placed a notice on their plastic wrappers and bags that the hamburgers are sold by "L.C. Big Mak Burger, Inc.", then they could validly claim that they did not intend to deceive the public. Etepha vs Director of Patents Facts: On April 23, 1959, respondent Westmont Pharmaceuticals, Inc., a New York corporation, sought registration of trademark "Atussin" placed on its "medicinal preparation of expectorant antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used in the treatment of cough". The trademark is used exclusively in the Philippines since January 21, 1959. Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected. Petitioner claims that it will be damaged because Atussin is so confusedly similar to its Pertussin (Registration No. 6089, issued on September 25, 1957) used on a preparation for the treatment of coughs, that the buying public will be misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill. Issue: Is "tussin" descriptive and generic? Held: That the word "tussin" figures as a component of both trademarks is nothing to wonder at. The Director of Patents aptly observes that it is "the common practice in the drug and pharmaceutical industries to 'fabricate' marks by using syllables or words suggestive of the ailments for which they are intended and adding thereto distinctive prefixes or suffixes". And appropriately to be considered now is the fact that, concededly, the "tussin" (in Pertussin and Atussin) was derived from the Latin root-word "tussis" meaning cough. "Tussin" is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of the goods; it is open for appropriation by anyone. It is accordingly barred from registration as trademark. With jurisprudence holding the line, we feel safe in making the statement that any other conclusion would result in "appellant having practically a monopoly" of the word "tussin" in a trademark. While "tussin" by itself cannot thus be used exclusively to identify one's goods, it may properly become the subject of a trademark "by combination with another word or phrase". And this union of words is reflected in petitioner's Pertussin and respondent's Atussin, the first with prefix "Per" and the second with Prefix "A".

Ong Ai Gui vs Director of Patents Facts: Ong Ai Gui alias Tan Ai Gui filed an application with the Director of Patents for the registration of the trade-name "20th Century Nylon Shirts Factory." Described as "General merchandise dealing principally in textiles, haberdasheries; also operating as manufacturer of shirts, pants and other men's and woman's wears." The Director held that the words "shirts factory" are not registrable; so the applicant made a disclaimer of said words (shirts factory) inserting a statement to that effect in his original application. Director ordered the publication of the trade-name in the official Gazette.ch Publication was made but before the expiration of the period for filing opposition, Atty. J. A. Wolfson, on behalf of E. I. De Pont de Nemours and Company, presented an opposition on the ground that the word "nylon" was a name coined by E. I. Du Pont de Nemours and Company as the generic name of a synthetic fabric material, invented, patented, manufactured and sold by it and that this word is a generic term. While he dismissed the opposition, the Director ruled that the application must be disapproved unless the word "nylon" is also disclaimed. Issue: Is "Nylon" a generic term? Ruling: The Court ruled that used in connection with shirtmaking, "Nylon" can never become distinctive, can never acquire secondary meaning, because it is a generic term, like cotton, silk, linen, or ramie. Just as no length of use and no amount of advertising will make "cotton," "silk," "linen," or "ramie," distinctive of shirts or of the business of making them, so no length of use and no amount of advertising will make "nylon" distinctive of shirts or of the business of manufacturing them." Lyceum of the Philippines, Inc. vs CA Facts: The herein petitioner is an educational institution duly registered with the Securities and Exchange Commission using the corporate name Lyceum of the Philippines, Inc. The petitioner alleged that the institution had used that name ever since. The petitioner instituted proceedings and even wrote to all educational institutions it could find using the word lyceum, to discontinue the use thereof. The petitioners claim that it has a proprietary right to the word lyceum, which was then sustained by the hearing officer of the Securities and Exchange Commission. Issue: Can Lyceum of the Philippines prohibit others from using the word lyceum? Ruling: No. Lyceum is a generic name. Thus today, Lyceum generally refers to a school or an institution of learning. It is as generic in character as the word university. In the name of the petitioner, it appears that lyceum is a substitute for university. In addition. the number alone of the private respondents in this case suggests strongly that petitioners use for the word lyceum has not been attended with the exclusivity essential for the applicability of the doctrine of secondary meaning. it may be noted also that at least one of the respondents, that is, the Western Pangasinan Lyceum, Inc used the term lyceum 17 years before the petitioner registered its own corporate name. If any institution had acquired an exclusive right of the word lyceum, it would have been the Western Pangasinan Lyceum and not the herein petitioner. Ana Ang vs Teodoro 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. He formally registered it as trade-mark on September 29, 1915, and as trade-name on January 3, 1933. The growth of his business is a thrilling epic of Filipino industry and business capacity. 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.

Petitioner assails the validity of respondents trademark contending that the phrase "Ang Tibay" as employed by the respondent on the articles manufactured by him is a descriptive term because, "freely translate in English," it means "strong, durable, lasting." Therefore, under section 2 of Act No. 666, which provides that words or devices which related only to the name, quality, or description of the merchandise cannot be the subject of a trade-mark. Issue: Is Ang Tibay a descriptive term? Ruling: No, Ang Tibay is not a descriptive term within the meaning of the Trademark Law but rather a fanciful or coined phrase which may properly be appropriated as a trademark. And it must be noted that it was the respondent who first used the term Ang Tibay and in fact it has already acquired a secondary meaning in a proprietary connotation. Kalaw vs Lever Brother In 1930, Lever Brother registered with the Bureau of Commerce Lux and Lifebuoy as its trademarks for soap of all kinds, claiming that these have been used in business since 1921. In 1933, Kalaw also registered Lux and Lifebuoy as its trademarks for hair pomade. In 1934, plaintiff registered a trademark of the word Lifebuoy in white letters and the words Health Soap in yellow letters on a red background. Pending registration, there already was a trademark Lifebuoy for Hair Pomade in the name of Kalaw, so that in the application for registration of plaintiff were the words except for hair pomade. The jars containing the hair pomade were displayed side by side with the soaps and sold in the same stores. Plaintiff contends it is the first user of the trademarks, and that the trademarks of defendant should not have been registered. ISSUE: Can an arbitrary or fanciful word which is neither descriptive nor deceptive be used as trademark? RULING: YES. A fanciful and arbitrary word is not only the safest, but also the strongest mark, since every infringer is suspected of attempting to capitalize upon the reputation and good-will of its owner. Words in common use may be appropriated as trademarks if they are adopted originally, or by usage have come to indicate primarily the origin or ownership of a commercial article to which they are applied, and if they are not geographical, in the sense of being the names of localities of production, or not the generic name of the article, or merely descriptive of it, or of its qualities, ingredients or characteristics. Accordingly, the words Lux and Lifebuoy adopted, used and registered by Lever Brother are valid trade-marks and should be accorded protection. Their use by another upon goods similar to those of the owner of the registered trade-marks should be enjoined. PHILIPPINE NUT INDUSTRY VS. STANDARD BRANDS- IPL FACTS: Philippine Nut, a domestic corporation, obtained from the Patent Office a trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS," the label used on its product of salted peanuts. Standard Brands a foreign corporation, 1 filed with the Director of Patents Inter Partes Case asking for the cancellation of Philippine Nut's certificate of registration on the ground that "the registrant was not entitled to register the mark at the time of its application for registration thereof" for the reason that it (Standard Brands) is the owner of the trademark "PLANTERS COCKTAIL PEANUTS". Standard Brands alleged in its petition that Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" closely resembles and is confusingly similar to its trademark "PLANTERS COCKTAIL PEANUTS" used also on salted peanuts, and that the registration of the former is likely to deceive the buying public and cause damage to it. Philippine Nut filed its answer invoking the special defense that its registered label is not confusingly similar to that of Standard Brands as the latter alleges. The Director of Patents found and held that in the labels using the two trademarks in question, the dominant part is the word

"Planters", displayed "in a very similar manner" so much so that "as to appearance and general impression" there is "a very confusing similarity," and he concluded that Philippine Nut "was not entitled to register the mark at the time of its filing the application for registration" as Standard Brands will be damaged by the registration of the same. Its motion for reconsideration having been denied, Philippine Nut came up to this Court for a review of said decision. ISSUE: Is petitioner entitled to the use of the word PLANTERS? RULING: No. Applying the words of Justice Roman Ozaeta in the "Ang Tibay" case (Ang vs. Toribio Teodoro, p. 56, supra) to the case now before Us, petitioner herein must not be allowed to get a free ride on the reputation and selling power of Standard Brands PLANTERS salted peanuts, for a selfrespecting person, or a reputable business concern as is the case here, does not remain in the shelter of another's popularity and goodwill but builds one of his own. The court upheld the ruling of the Director of Patents. The testimonial and documentary evidence in addition to the stipulation of facts submitted by the parties fully support the findings of respondent Director that(1) there is a confusing similarity between the labels or trademarks of Philippine Nut and Standard Brands used in their respective canned salted peanuts; (2) respondent Standard Brands has priority of adoption and use of the label with PLANTERS as the dominant feature and the same has acquired secondary meaning in relation to salted peanuts; and (3) there has been no abandonment or non-use of said trademark by Standard Brands which would justify its adoption by petitioner or any other competitor for the sale of salted peanuts in the market. Del Monte (petitioner) vs CA FACTS: The petitioners are questioning the decision of the respondent court upholding the dismissal by the trial court of their complaint against the private respondent (Sunshine) for infringement of trademark and unfair competition.Having received reports that the private respondent was using its exclusively designed bottles and a logo confusingly similar to Del Monte's, Philpack warned it to desist from doing so on pain of legal action. Thereafter, claiming that the demand had been ignored, Philpack and Del Monte filed a complaint against the private respondent for infringement of trademark and unfair competition, with a prayer for damages and the issuance of a writ of preliminary injunction. 5After trial, the Regional Trial Court of Makati dismissed the complaint. It held that there were substantial differences between the logos or trademarks of the parties; that the defendant had ceased using the petitioners' bottles. This decision was affirmed in toto by the respondent court, which is now faulted in this petition for certiorari under Rule 45 of the Rules of Court. Issue: Is imitation necessary to constitute infringement? Ruling: At that, even if the labels were analyzed together it is not difficult to see that the Sunshine label is a colorable imitation of the Del Monte trademark. The predominant colors used in the Del Monte label are green and red-orange, the same with Sunshine. The word "catsup" in both bottles is printed in white and the style of the print/letter is the same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a tomato. As previously stated, the person who infringes a trade mark does not normally copy out but only makes colorable changes, employing enough points of similarity to confuse the public with enough points of differences to confuse the courts. What is undeniable is the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from the others. When as in this case, Sunshine chose, without a reasonable explanation, to use the same colors and letters as those used by Del Monte though the field of its selection was so broad,

the inevitable conclusion is that it was done deliberately to deceive . 24 As Sunshine's label is an infringement of the Del Monte's trademark, law and equity call for the cancellation of the private respondent's registration and withdrawal of all its products bearing the questioned label from the market. With regard to the use of Del Monte's bottle, the same constitutes unfair competition; hence, the respondent should be permanently enjoined from the use of such bottles. Isetan vs. IAC GR No. L-75420 (1991) Facts: Petitioner Kabushi Kaisha Isetan, a foreign corporation organized and existing under the laws of Japan, is the owner of the trademark "Isetan" and the "Young Leaves Design". The petitioner alleges that it first used the trademark Isetan on November 5, 1936. On October 3, 1983, the petitioner applied for the registration of "Isetan" and "Young Leaves Design" with the Philippine Patent Office. Private respondent, Isetann Department Store, on the other hand, registered "Isetann Department Store, Inc." and Isetann and Flower Design in the Philippine Patent Office on May 30, 1980 and May 20, 1980. Petitioner filed 2 petitions for the cancellation of the said Certificates of Supplemental Registration stating that except for the additional letter "N" in the word "Isetan", the mark registered by the registrant is exactly the same as the trademark ISETAN owned by the petitioner and further alleged that adopting a corporate name similar to that of the petitioner were with the illegal and immoral intention of cashing in on the long established goodwill and popularity of the petitioner's reputation, thereby causing great and irreparable injury and damage to it. Issue:Can Isetann continue to use the word despite its similarity to Isetan? Ruling: Isetann can continue to use the word. A fundamental principle of Philippine Trademark Law is that actual use in commerce in the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a tradename. The records show that the petitioner has never conducted any business in the Philippines. It has never promoted its tradename or trademark in the Philippines. It has absolutely no business goodwill in the Philippines. It is unknown to Filipinos except the very few who may have noticed it while travelling abroad. It has never paid a single centavo of tax to the Philippine government. Under the law, it has no right to the remedy it seeks.The mere origination or adoption of a particular tradename without actual use thereof in the market is insufficient to give any exclusive right to its use Asia Brewery vs CA-IPL Facts: In September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for allegedly infringing upon their trademark on their beer product popularly known as San Miguel Pale Pilsen; that Asia Brewerys Beer na Beer product, by infringing upon SMCs trademark has committed unfair competition as Beer na Beer creates confusion between the two products. The RTC ruled in favor of Asia Brewery but the Court of Appeals reversed the RTC. Issue: is pilsen is a registrable name? Ruling: The fact that the words pale pilsen are part of ABI's trademark does not constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are generic words descriptive of the color ("pale"), of a type of beer ("pilsen"), which is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen in Czechoslovakia and became famous in the Middle Ages. (Webster's Third New International Dictionary of the English Language, Unabridged. Edited by Philip Babcock Gove. Springfield, Mass.: G & C Merriam Co., [c] 1976, page 1716.) "Pilsen" is a "primarily geographically descriptive word," (Sec. 4, subpar. [e] Republic Act No. 166, as inserted by Sec. 2 of R.A. No. 638) hence, non-registerable and not appropriable by any beer manufacturer. The Trademark Law provides: Sec. 4. . . .. The owner of trade-mark, trade-name or service-

mark used to distinguish his goods, business or services from the goods, business or services of others shall have the right to register the same [on the principal register], unless it: xxx xxx xxx (e) Consists of a mark or trade-name which, when applied to or used in connection with the goods, business or services of the applicant is merely descriptive or deceptively misdescriptive of them, or when applied to or used in connection with the goods, business or services of the applicant isprimarily geographically descriptive or deceptively misdescriptive of them, or is primarily merely a surname." (Emphasis supplied.) 246 Corporation v. Daway Facts: In 1998, Montres Rolex SA and Rolex Centre Phil. Ltd., owners and proprietors of Rolex and Crown Device filed against 246 Corporation, doing business as Rolex Music Lounge, a suit for trademark infringement and damages. In 2000, 246 Corp. filed a motion for preliminary hearing on its affirmative defense; which the court thereafter issued a subpoena ad testificandum to Atty. Atienza. Montres Rolex opposed, and the trial court quashed the subpoena. 246 corp. filed a petition for certiorari before the Court of Appeals, which was dismissed. Hence, the petition for review on certiorari. ISSUE: Is "ROLEX" a well-known mark? RULING: A mark cannot be registered if it: it is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided, further, That the interest of the owner of the registered mark are likely to be damaged by such use. Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely unrelated to respondents business involving watches, clocks, bracelets, etc. However, the Court cannot yet resolve the merits of the present controversy considering that the requisites for the application of Section 123.1(f), which constitute the kernel issue at bar, clearly require determination facts of which need to be resolved at the trial court.