PRIBHDAS J. MIRPURI vs.

COURT OF APPEALS,
DIRECTOR OF PATENTS and the BARBIZON
CORPORATION

Ruling:
1.

IPC No. 2049 raised the issue of ownership of the

trademark and the international recognition and
reputation of the trademark for over 40 years here
and abroad, different from the issues of confusing
similarity and damage in IPC No. 686. There was
also a new cause of action arising from the
cancellation
of
petitioner's
certificate
of
registration for failure to file the affidavit of use.
Also, the first and second cases are based on
different laws, one on Trademark Law and the
other on the Paris Convention, E.O. No. 913 and
the two Memoranda of the Minister of Trade and
Industry. Thus, res judicata does not apply to the
instant case.

2.

The WTO is a common institutional framework for

the conduct of trade relations among its members
in matters related to the multilateral and
plurilateral trade agreements annexed to the WTO
Agreement, one of which is the Agreement on
Trade-Related Aspects of Intellectual Property
Rights or TRIPs. Members to this Agreement have
agreed to adhere to minimum standards of
protection set by several Conventions, including
the Paris Convention. The Philippines and the US
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 millenium. The
petition is denied.

Facts:
Petitioner's claims: "Barbizon" products have been sold
in the Philippines since 1970. Petitioner developed this
market by working long hours and spending
considerable sums of money on advertisements and
promotion of the trademark and its products. Almost 30
years later, private respondent, a foreign corporation
usurps the trademark and invades petitioner's
market. Justice and fairness dictate that private
respondent be prevented from appropriating what is not
its own. Legally, at the same time, private respondent is
barred from questioning petitioner's ownership of the
trademark because of res judicata in view of IPC No.
686.
Respondent's claims: The Opposer's goods bearing the
trademark BARBIZON have been used in many
countries, including the Philippines, for at least 40 years
and has enjoyed international reputation and good will
for their quality. Their trademarks qualify as well-known
trademarks entitled to protection under Article 6bis of
the Convention of Paris for the Protection of Industrial
Property
Issues: 1. Whether IPC No. 2049 is barred on the
ground of res judicata
2. Whether a treaty affords protection to a foreign
corporation against a Philippine applicant for the
registration of a similar trademark.

PHILIP MORRIS, INC., BENSON & HEDGES

(CANADA), INC., and FABRIQUES DE TABAC
REUNIES, S.A., (now known as PHILIP MORRIS
PRODUCTS S.A.), Petitioners, vs.
FORTUNE
TOBACCO CORPORATION, Respondent.
Facts:
Petitioner Philip Morris, Inc., a corporation organized
under the laws of the State of Virginia, United States of
America, is, per Certificate of Registration No.
18723 issued on April 26, 1973 by the Philippine
Patents Office (PPO), the registered owner of the
trademark MARK VII for cigarettes. Similarly,
petitioner Benson & Hedges (Canada), Inc., a subsidiary
of Philip Morris, Inc., is the registered owner of the
trademark MARK TEN for cigarettes as evidenced by
PPO Certificate of Registration No. 11147. And as can be
seen in Trademark Certificate of Registration No. 19053,
another subsidiary of Philip Morris, Inc., the Swiss
company Fabriques de Tabac Reunies, S.A., is the
assignee of the trademark LARK, which was originally
registered in 1964 by Ligget and Myers Tobacco
Company. On the other hand, respondent Fortune
Tobacco Corporation, a company organized in the
Philippines, manufactures and sells cigarettes using the
trademark MARK.
The legal dispute between the parties started when the
herein 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, docketed as Civil Case No. 47374
of the RTC of Pasig.

Petitioners claimed that the respondent, without any

previous consent from any of the petitioners,
manufactured and sold cigarettes bearing the identical
and/or
confusingly
similar
trademark
MARK
Accordingly, they argued that respondents use of the
trademark MARK
in its cigarette products have
caused and is likely to cause confusion or mistake, or
would deceive purchasers and the public in general into
buying these products under the impression and
mistaken belief that they are buying petitioners
products.
RTC- ruled in favor of respondents; dismissed
petitioners complaint
CA- ruled that petitioner has legal standing to sue but
found that there was no infringement
Hence this petition
Issue: Whether or not the fact that Petitioner has a
Certificate of Registration issued by the Philippine
Patents Office entitles them to protection in the PH?
Held: No. The Certificate of Registration is merely a
prima facie evidence of validity of registration.
The registration of a trademark gives the registrant,
such
as
petitioners,
advantages
denied
nonregistrants or ordinary users, like respondent. But
while petitioners enjoy the statutory presumptions
arising from such registration i.e., as to the validity of
the registration, ownership and the exclusive right to
use the registered marks, they may not successfully sue
on the basis alone of their respective certificates of
registration of trademarks. For, petitioners are still
foreign corporations. As such, they ought, as a condition
to availment of the rights and privileges vis--vis their
trademarks in this country, to show proof that, on top of
Philippine registration, their country grants substantially

similar rights and privileges to Filipino citizens pursuant

to Section 21-A[20] of R.A. No. 166.
The registration of trademark cannot be deemed
conclusive as to the actual use of such trademark in
local commerce. As it were, registration does not confer
upon the registrant an absolute right to the registered
mark. The certificate of registration merely constitutes
prima facie evidence that the registrant is the owner of
the registered mark. Evidence of non-usage of the mark
rebuts the presumption of trademark ownership, as
what happened here when petitioners no less admitted
not doing business in this country.
Registration in the Philippines of trademarks does not
ipso facto convey an absolute right or exclusive
ownership thereof. To borrow from Shangri-La
International Hotel Management, Ltd. v. Development
Group of Companies, Inc, trademark is a creation of use
and, therefore, actual use is a pre-requisite to exclusive
ownership; registration is only an administrative
confirmation of the existence of the right of ownership
of the mark, but does not perfect such right; actual use
thereof is the perfecting ingredient.
True, the Philippines adherence to the Paris Convention
effectively obligates the country to honor and enforce
its provisions as regards the protection of industrial
property of foreign nationals in this country. However,
any protection accorded has to be made subject to the
limitations of Philippine laws. Hence, despite Article 2 of
the Paris Convention which substantially provides that
(1) nationals of member-countries shall have in this
country rights specially provided by the Convention as
are consistent with Philippine laws, and enjoy the
privileges that Philippine laws now grant or may
hereafter grant to its nationals, and (2) while no
domicile requirement in the country where protection is

claimed shall be required of persons entitled to the

benefits of the Union for the enjoyment of any industrial
property rights, foreign nationals must still observe and
comply with the conditions imposed by Philippine law on
its nationals.
Considering that R.A. No. 166, as amended, specifically
Sections 2and 2-A thereof, mandates actual use of the
marks and/or emblems in local commerce and trade
before they may be registered and ownership thereof
acquired, the petitioners cannot, therefore, dispense
with the element of actual use. Their being nationals of
member-countries of the Paris Union does not alter the
legal situation.

PROSOURCE INTERNATIONAL, INC., vs. HORPHAG

RESEARCH MANAGEMENT
FACTS:Horphag Research Management SA is a
corporation duly organized and existing under the laws
of Switzerland and the owner of trademark
PYCNOGENOL, a food supplement sold and distributed
by Zuellig Pharma Corporation. Horphag later
discovered that Prosource International, Inc. was also
distributing a similar food supplement using the mark
PCO-GENOLS since 1996. This prompted respondent to
demand that petitioner cease and desist from using the
aforesaid mark.
On June 19, 2000, Without notifying respondent,
Prosource discontinued the use of, and withdrew from

the market, the products under the name PCO-GENOLS

and changed its mark from PCO-GENOLS to PCO-PLUS.
On August 22, 2000, Horphag filed a Complaint
for Infringement of Trademark with Prayer for
Preliminary Injunction against Prosource, praying
that the latter cease and desist from using the
brand PCO-GENOLS for being confusingly similar
with respondents trademark PYCNOGENOL.
Prosource contended that Horphag could not file the
infringement case considering that the latter is not the
registered owner of the trademark PYCNOGENOL, but
one Horphag Research Limited. It, likewise, claimed that
the two marks were not confusingly similar. Finally, it
denied liability, since it discontinued the use of the mark
prior to the institution of the infringement case.
Petitioner thus prayed for the dismissal of the
complaint.

trademark contains the main, essential and dominant

features of another, and confusion or deception is likely
to result, infringement takes place. Duplication or
imitation is not necessary; nor is it necessary that the
infringing label should suggest an effort to imitate. The
question is whether the use of the marks involved is
likely to cause confusion or mistake in the mind of the
public or to deceive purchasers. Courts will consider
more the aural and visual impressions created by the
marks in the public mind, giving little weight to factors
like prices, quality, sales outlets, and market segments.
In contrast, the Holistic Test entails a consideration of
the entirety of the marks as applied to the products,
including the labels and packaging, in determining
confusing similarity. The discerning eye of the observer
must focus not only on the predominant words but also
on the other features appearing on both labels in order
that the observer may draw his conclusion whether one
is confusingly similar to the other.

ISSUE: Whether Prosource committed infringement.

RULING :YES, Prosource committed infringement.
It is the element of "likelihood of confusion" that is the
gravamen of trademark infringement. But "likelihood of
confusion" is a relative concept. The particular, and
sometimes peculiar, circumstances of each case are
determinative of its existence. Thus, in trademark
infringement cases, precedents must be evaluated in
the light of each particular case.
In determining similarity and likelihood of
confusion, jurisprudence has developed two
tests: the Dominancy Test and the Holistic or
Totality Test. The Dominancy Test focuses on the
similarity of the prevalent features of the competing
trademarks that might cause confusion and deception,
thus constituting infringement. If the competing

The trial and appellate courts applied the Dominancy

Test in determining whether there was a confusing
similarity between the marks PYCNOGENOL and PCOGENOL. Applying the test, the trial court found, and the
CA affirmed, that:
Both the word[s] PYCNOGENOL and PCO-GENOLS have
the same suffix "GENOL" which on evidence, appears to
be merely descriptive and furnish no indication of the
origin of the article and hence, open for trademark
registration by the plaintiff thru combination with
another word or phrase such as PYCNOGENOL, Exhibits
"A" to "A-3." Furthermore, although the letters "Y"
between P and C, "N" between O and C and "S" after L
are missing in the [petitioners] mark PCO-GENOLS,
nevertheless, when the two words are pronounced, the
sound effects are confusingly similar not to mention that

they are both described by their manufacturers as a

food supplement and thus, identified as such by their
public
consumers.
And
although
there
were
dissimilarities in the trademark due to the type of letters
used as well as the size, color and design employed on
their individual packages/bottles, still the close
relationship of the competing products name in sounds
as they were pronounced, clearly indicates that
purchasers could be misled into believing that they are
the same and/or originates from a common source and
manufacturer.29
We find no
conclusion.

cogent reason to

depart from

such

This is not the first time that the Court takes into
account the aural effects of the words and letters
contained in the marks in determining the issue of
confusing similarity. In Marvex Commercial Co., Inc. v.
Petra Hawpia & Co., et al.,30 cited in McDonalds
Corporation v. L.C. Big Mak Burger, Inc., 31 the Court
held:
The following random list of confusingly similar sounds
in the matter of trademarks, will reinforce our view that
"SALONPAS" and "LIONPAS" are confusingly similar in
sound: "Gold Dust" and "Gold Drop"; "Jantzen" and
"Jass-Sea"; etc.
COFFEE PARTNERS,
COFFEE & ROASTERY

INC

vs

SAN

FRANCISCO

Petitioner Coffee Partners is a local corp that has a

franchise to put up coffee shops in the Phils using
Coffee Partners Ltd British Islands' trademarks such as
San
Francisco
Coffee,
registered
with
the
SEC. Respondent San Francisco Coffee and Roastery is a

local coffee supplier of coffee shops such as Figaro

Company, Tagaytay Highlands, Fat Willys, and other
coffee companies, registered with the DTI.
Respondent formed a joint venture with Boyd Coffee Co.
Phils. and conducted a project study on setting up
coffee carts
in malls
and other commercial
establishments in Metro Manila. When respondent
learned that petitioner will open a coffee shop in Libis,
they demanded for petitioner to stop using the name
San Francisco Coffee as it causes confusion to the
minds of the public. A complaint was also filed by
respondents before the Bureau of Legal Affairs of the
Intellectual Property Office for infringement and unfair
competition with claims for damages. Petitioners
contend that there are distinct differences in the
appearance of their trademark and that respondent
abandoned the use of their trademark when it joined
venture with Boyd Coffee USA. The Bureau of Legal
Affairs of the IPO held that petitioners trademark
infringed on the respondents trade name as it
registered its business name first with the DTI in 1995
while petitioner only registered its trademark in 2001.
Furthermore, it ruled that the respondent did not
abandon the use of its trade name upon its joint venture
with Boyd Coffee USA since in order for abandonment to
exist it must be permanent, intentional and voluntary. It
also held that petitioners use of the trademark "SAN
FRANCISCO COFFEE" will likely cause confusion because
of the exact similarity in sound, spelling, pronunciation,
and commercial impression of the words "SAN
FRANCISCO" which is the dominant portion of
respondents trade name and petitioners trademark.
Upon appeal before the office of the Director General of

the IPO, the decision of its legal affairs was reversed

declaring there was no infringement. The Court of
Appeals however set aside its decision and reinstated
the IPO legal affairs decision. Petitioner contends that
the respondents trade name is not registered therefore
a suit for infringement is not available.
Issue: WON there was infringement
Held: YES
Registration of a trademark before the IPO is no longer
a requirement to file an action for infringement as
provided in Section 165.2 of RA 8293. All that is required
is that the trade name is previously used in trade or
commerce in the Philippines. There is no showing that
respondent abandoned the use of its trade name as it
continues
to
embark
to
conduct
research
on retailing coffee, import and sell coffee machines as
among the services for which the use of the business
name has been registered.
The
court
also
laid
down
two
tests
to
determine similarity and likelihood of confusion. The
dominancy test focuses on similarity of the prevalent
features of the trademarks that could cause deception
and confusion that constitutes infringement. Exact
duplication or imitation is not required. The question is
whether the use of the marks involved is likely to cause
confusion or mistake in the mind of the public or to
deceive consumers. The holistic test entails a
consideration of the entirety of the marks as applied to
the products, including the labels and packaging, in
determining confusing similarity.15 The discerning eye of
the observer must focus not only on the predominant

words but also on the other features appearing on both

marks in order that the observer may draw his
conclusion whether one is confusingly similar to the
other. Applying either the dominancy test or the
holistic test, petitioners "SAN FRANCISCO COFFEE"
trademark is a clear infringement of respondents "SAN
FRANCISCO COFFEE & ROASTERY, INC." trade name. The
descriptive words "SAN FRANCISCO COFFEE" are
precisely the dominant features of respondents trade
name. And because both are involved in coffee business
there is always the high chance that the public will get
confused of the source of the coffee sold by the
petitioner. Respondent has acquired an exclusive right
to the use of the trade name "SAN FRANCISCO COFFEE
& ROASTERY, INC." since the registration of the business
name with the DTI in 1995.
DE LA RAMA STEAMSHIP COMPANY vs. NATIONAL
DEVELOPMENT COMPANY
This case is the outcome of an agreement entered into
on October 26, 1949 between the De la Rama
Steamship Co. Inc. (hereinafter referred to as De la
Rama) and the National Development Company
(hereinafter referred to as NDC) whereby De la Rama
undertook the management of the three vessels known
as "Doa Aurora," "Doa Nati" and "Doa Alicia" which
had been purchased by the Philippine Government from
Japan with the advise and technical supervision of De la
Rama. In the management contract it was provided that
De la Rama had the option to buy the vessels at the fifth
year following the purchase and delivery of each of the
vessels at a price which is to consist of the cost price of
each vessel.

The first time that this case came up to this Court was
in G.R. No. L-8784, decided on May 21, 1956, which
involved the principal question regarding the right
granted by the management contract to NDC to cancel
upon one year's notice the general agency granted Dela
Rama. The NDC decided to cancel the contract but was
opposed by De la Rama, which alleged that it had been
granted the option to purchase the vessels and that in
1952 it exercised that right of option. In the decision in
G.R. No. L-8784 this Court upheld the right of NDC to
cancel the management contract, and the option of De
la Rama to purchase the vessels was declared
ineffective.
The right of NDC to cancel the management contract
having been upheld by the Court and De la Rama's right
to exercise the option to purchase the vessels could not
thereby be exercised, De la Rama filed on August 21,
1956 a "Supplemental Pleading" in Civil Case No. 25161
then pending in the Court of First Instance of Manila.
This supplemental pleading, in the nature of a
supplemental complaint gave rise to the proceeding
which later brought Civil Case No. 25161 to this Court
for the second time in G.R. No. L-25659.1 Under the first
cause of action of the "Supplemental Pleading," De la
Rama demanded that NDC refrain from using the names
"Doa Aurora," "Doa Nati" and "Doa Alicia" on the
three vessels subject of the original action, claiming that
it had acquired exclusive property right to the use of
said names of the three vessels as trade names; under
the second cause of action.
In its answer to De la Rama's supplemental pleading,
NDC denied De la Rama's exclusive right to use the

names "Doa Aurora," "Doa Nati" and "Doa Alicia" on

the vessels upon the ground that said names (except
Doa Nati) represented names of wives of former
Presidents of the Philippines and could not be
approriated by a private individual.
In its reply to NDC's answer, and in its answer to NDC's
counterclaim, De la Rama alleged that the names "Doa
Aurora," "Doa Nati" and "Doa Alicia" were its
property, having used the name "Doa" on its vessels in
its shipping business even before the last war and had
acquired a vested right on that trade name, that the
claim for reimbursement and/or payment of advances
and/or expenses made, and commissions earned by
virtue and pursuant to the management contract
matured after the filing of the amended complaint; that
true and correct accounting of the operations of the
vessels had always been submitted to NDC.
On March 20, 1957, the trial court, in consonance with
its order given in open court on March 8, 1957,
considering that the case involved mainly accounting,
issued an order appointing a Board of Accountants to
make an examination of the accounts submitted by De
la Rama to determine what amount is due De la Rama,
and what amount is due NDC, and to make such
recommendations as, in its opinion, are proper.
HELD:
In support of the fifth assignment of error, that the lower
court erred in holding that De la Rama is entitled to the
preferential right to the use of the "Doa" names and
enjoining and restraining NDC perpetually from using
the "Doa" names on any of its vessels, NDC argues

that as owner of the vessels it had registered the

"Doa" names in the Bureau of Customs with full
knowledge and consent of De la Rama which, therefore,
is now estopped from questioning the right, or from
denying the ownership, of NDC over the "Doa" names
(Art. 1431, Civil Code). De la Rama, on the other hand
maintains that the findings and conclusion of the lower
court on this matter, quoting the pertinent portion of the
lower court's decision, are well founded.
In the amendatory decision, dated March 18, 1966, the
lower court found that De la Rama had been in the
shipping business since 1933 and had adopted, prior to
the war in 1941, the word "Doa" in designating its
vessels; that the three ocean-going vessels that it
operated under the management contract were named
"Doa Nati" after the wife of the late Don Esteban de la
Rama, who was founder of the steamship company;
"Doa Alicia" after the late wife of former President
Elpidio Quirino; and "Doa Aurora" after the late widow
of President Manuel Quezon; that there is unrebutted
testimony that in the shipping business, goodwill and
reputation are inevitably acquired by the names given
to a vessel.
NDC's contention, in its answer, that De la Rama, a
private firm, could not appropriate said names ("except
Doa Nati") on the ground that those are names of
wives of former Presidents, does not have a legal basis.
Under Section 4(c) of Rep. Act No. 166 as amended,
which apparently is the basis of the contention of NDC,
what is prohibited from being appropriated and being
registered are trade-names consisting of, or comprising,
a name identifying a particular living individual, or the

name of a deceased President of the Philippines. The

names of deceased wives of Presidents are not included
in the prohibition. Moreover, Section 4(f) of said Act
does not prohibit the registration, and hence
appropriation, of a trade-name that has become
distinctive and the substantial and exclusive use of a
trade-name for five years accepted as prima facie proof
that the trade-name has become distinctive. And this
Court has said, in Ang vs. Teodoro, that even a name or
phrase not capable of appropriation as a trade name
may, by long and exclusive use by a business with
reference thereto of to its products, acquire a
proprietary connotation, such that, to the purchasing
public, the name or phrase becomes associated with the
service or the products of the business, and so it is
entitled to protection against unfair competition.
Neither is the claim of estoppel, allegedly based on
acquiescence, in that NDC had registered with full
knowledge and/or consent of De la Rama the "Doa"
names in the Bureau of Customs, tenable. A reading of
Sections 1166 to 1176 of the Revised Administrative
Code, under which the "Doa" vessels were presumably
registered, would show that the principally purpose of
the registration is to determine the ownership of the
vessel, although for registration it is necessary that the
vessel should have a name as a prerequisite under the
provision of Section 1170. De la Rama certainly could
not, and had no right, to oppose the registration of the
vessels by NDC because the vessels were in fact owned
by NDC. Neither could De la Rama then oppose the
registration of the "Doa" names of the vessels for it
was De la Rama itself that gave those names when it
operated the vessels, and it had also expectant right to

become owners of said vessels. De la Rama's consent to

the registration of the vessels as owned by NDC did not
necessarily imply that it also consented to NDC's
appropriation of the "Doa" names, for almost
immediately after the right of NDC to cancel the
management contract had been upheld by this Court in
G.R. No. L-8784, decided on May 21, 1956, De la Rama
formally notified, on August 10, 1956 NDC or its agent
to refrain from using, announcing or in any manner
referring to the three vessels here in question as the
'Doa Aurora,' 'Doa Nati' or 'Doa Alicia'." From these
facts if cannot reasonably be urged that De la Rama is
estopped from preventing NDC to use the "Doa" names
on its vessels. Anent this matter, it has been held that:.
... an estoppel will not ordinarily arise from a
consent
given
under
an
excusable
misapprehension of facts... likewise, the estoppel
will not be given effect beyond the precise thing
consented to and matters which are necessarily,
or at least, reasonably, to be implied therefrom.
(28 Am Jur 2d, pp. 662-663.)
And even if it be assumed, gratia argumenti, that De la
Rama acquiesced to the registration of the "Doa"
names of the vessels, as NDC contends, that
acquiescence could not necessarily estop De la Rama to
claim its right to said names, after the conditions had
changed, that is when the management contract had
been cancelled by NDC. Regarding this matter it has
been held that:.
Acquiescence in the past does not necessarily
estop a party from changing his course of conduct

as to the future, especially where there has been

a change in conditions. (28 Am Jur 2d p. 675.)
NDC does not dispute the fact that the "Doa" names
had been originally used by De la Rama, 32 and
according to the lower court De la Rama had been using
the "Doa" names even before the war, and that said
names have acquired goodwill and reputation. Goodwill
is protected by the law on unfair competition. Goodwill
is easily damaged, and is easily vulnerable to assault,
through the brand which symbolizes it. When a person
has established a trade or business in which he has
used a name or device to designate his goods, he will
be protected in the use of the name or device. "Such
person has a right to complain when another adopts this
symbol or manner of making of his goods so as to
mislead the public into purchasing the same as and for
the goods of the complainant."
The goodwill in business is a valuable asset, and in
modern commercial life it is frequently built upon a
trade-name. Any trade-mark or name ... which has
become of a pecuniary value or a business advantage,
becomes a property right, and, as such, is entitled to
the protection afforded by the courts (American
Agricultural Chemical Co. v. Moore, 17 F (2d) 196, 199.)
In Ang v. Teodoro this Court said:.
The owner of a trade-mark or trade-name has a
property right in which he is entitled to protection,
since there is damage to him from confusion of
reputation or goodwill in the mind of the public as
well as confusion of goods. The modern trend is to

give emphasis to the unfairness of the acts and to

treat the issue as a fraud.
To permit NDC to continue using the "Doa" names
would be to countenance the unlawful appropriation of
the benefit of a goodwill which De la Rama has acquired
as a result of continued usage and large expense; it
would be tantamount to permitting NDC to grab the
reputation or goodwill of the business of another. 35 We
find that the decision of the trial court on this matter is
in accordance with the law on unfair competition.

Esso Standard vs. Court of Appeals

Facts of the Case:
The petitioner Esso Standard is a foreign corporation
duly licensed to do business in the Philippines. It is
engaged in the sale of petroleum products which are
identified by the trademarl 'Esso'. Esso is a successor of
Standard Vacuum Oil Co, it registered as a business
name with the Bureau of Commerce in 1962. United
Cigarette is a domestic corporation engaged in the
manufacture and sale of cigarettes. it acquired the
business from La Oriental Tobacco Corp including patent
rights, once of which is the use of 'Esso' on its
cigarettes.
The petitioner filed a trademark infringement case
alleging that it acquired goodwill to such an extent that
the buying public would be deceived as ti the quality
and origin of the said products to the detriment and
disadvantage of its own products. The lower court found
United Cigarette guilty of infringement. Upon appeal,
the Court of Appeals ruled that there was no infringment
in this case.

Issue: Is there infringement committed?

Ruling: NONE. Infringement is defined by law as the use
without the consent of the trademark owner of any
reproduction, counterfeit, copy or colorable imitation of
any registered mark or tradename which would likely
cause confusion or mistake or deceive purchasers or
others as to the source or origin of such goods.
The products of both parties (Petroleum and cigarettes)
are non-competing. But as to whether trademark
infringement exists depend on whether or not the goods
are so related that the public may be or is actually
deceived and misled that they come from the same
maker. Under the Related Goods Theory, goods are
related when they belong to the same class or have the
same descriptive properties or when they have same
physical attributes. In these case, the goods are
absolutely different and are so foreign from each other it
would be unlikely for purchasers to think that they came
from the same source. Moreover, the goods flow from
different channels of trade and are evidently different in
kind and nature.
PHILIPPINE REFINING CO., INC. vs. NG SAM G.R.
No. L-26676. July 30, 1982
Facts: Private respondent filed with the Philippine Patent
Office an application for registration of the trademark
"CAMIA" for his product, ham, which falls under Class 47
(Foods and Ingredients of Food).
Petitioner opposed the application claiming that it first
used said trademark on his products: lard, butter,
cooking oil, abrasive detergents, polishing materials and
soap of all kinds, some of which are likewise classified
under Class 47. The trademark "CAMIA" was first used

in the Philippines by petitioner on its products in 1922

and registered the same in 1949
On November 25, 1960, respondent Ng Sam, a Chinese
citizen residing in Iloilo City, filed an application with the
Philippine Patent Office for registration of the identical
trademark "CAMIA" for his product, ham, which likewise
falls under Class 47. Alleged date of first use of the
trademark by respondent was on February 10, 1959.
Director of Patents rendered a decision allowing
registration of the trademark "CAMIA" in favor of Ng
Sam finding that `the goods of the parties are not of a
character which purchasers would be likely to attribute
to a common origin.
Issue/Answer: WON the product of respondent Ng Sam,
which is ham, and those of petitioner consisting of lard,
butter, cooking oil and soap are so related that the use
of the same trademark "CAMIA'' on said goods would
likely result in confusion as to their source Atty. Eric
Recalde or origin./ negative

Ratio Decidendi:
The right to a trademark is a limited one, in the sense
that others may use the same mark on unrelated goods.
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.
Where no confusion is likely to arise, as in this case,
registration of a similar or even identical mark may be

allowed. The term "CAMIA" is descriptive of a whole

genus of garden plants with fragrant white flowers. A
trademark is designed to identify the user. But it should
be so distinctive and sufficiently original as to enable
those who come into contact with it to recognize
instantly the identity of the user. "It must be affirmative
and definite, significant and distinctive, capable to
indicate origin.
If a mark is so commonplace that it cannot be readily
distinguished from others, then it is apparent that it
cannot identify a particular business; and he who first
adopted it cannot be injured by any subsequent
appropriation or imitation by others, and the public will
not be deceived."] While ham and some of the products
of petitioner are classified under Class 47 (Foods and
Ingredients of Food), this alone cannot serve as the
decisive factor in the resolution of whether or not they
are related goods.
Emphasis should be on the similarity of the products
involved and not on the arbitrary classification or
general description of their properties or characteristics.
Opposer's products are ordinary day-to-day household
items whereas ham is not necessarily so. Thus, the
goods of the parties are not of a character which
purchasers would be likely to attribute to a common
origin."

The business of the parties are noncompetitive and their

products so unrelated that the use of identical
trademarks is not likely to give rise to confusion, much
less cause damage to petitioner.

provision:
Section 4(d) of Trademark law "a mark which consists of
or comprises a mark or trade name which so resembles
a mark or trade name registered in the Philippines or a
mark or trade name previously used in the Philippines
by another and not abandoned, as to be likely, when
applied to or used in connection with the goods,
business services of the applicant, to cause confusion or
mistake or to deceive purchasers."
IN-N-OUT BURGER, INC., petitioner, vs. SEHWANI,
INCORPORATED AND/OR BENITAS FRITES, INC.,
respondents.
(G.R. No. 179127
December 24,
2008)
Facts: Petitioner IN-N-OUT BURGER, INC is a business
entity incorporated under the laws of California, USA,
which is a signatory to the Convention of Paris on
Protection of Industrial Property and the TRIPS
Agreement. Respondents Sehwani, Incorporated and
Benita Frites, Inc. are corporations organized in the
Philippines.
On 2 June 1997, petitioner filed trademark and service
mark applications with the Bureau of Trademarks (BOT)
of the IPO for "IN-N-OUT" and "IN-N-OUT Burger & Arrow
Design." Petitioner later found out that Sehwani had
already obtained Trademark Registration for the mark
"IN N OUT (the inside of the letter "O" formed like a
star)." By virtue of a licensing agreement, Benita Frites,
Inc. was able to use the registered mark of respondent
Sehwani, Incorporated.
Petitioner filed on 4 June 2001 before the Bureau of
Legal Affairs of the IPO an administrative complaint
against respondents for unfair competition and
cancellation of trademark registration. Petitioner

averred in its complaint that it is the owner of the trade

name IN-N-OUT and the following trademarks: (1) "IN-NOUT"; (2) "IN-N-OUT Burger & Arrow Design"; and (3)
"IN-N-OUT Burger Logo." These trademarks are
registered with the Trademark Office of the US and in
various parts of the world, are internationally wellknown, and have become distinctive of its business and
goods through its long and exclusive commercial use.
Petitioner pointed out that its internationally well-known
trademarks and the mark of the respondents are all
registered for the restaurant business and are clearly
identical and confusingly similar. Petitioner claimed that
respondents are making it appear that their goods and
services are those of the petitioner, thus, misleading
ordinary and unsuspecting consumers that they are
purchasing petitioners products.
Respondents In its Answer with Counterclaim asserted
that they had been using the mark "IN N OUT" in the
Philippines since 15 October 1982. On 15 November
1991, respondent Sehwani, Incorporated filed with the
then Bureau of Patents, Trademarks and Technology
Transfer (BPTTT) an application for the registration of
the mark "IN N OUT (the inside of the letter "O" formed
like a star)" and was issued a certificate of registration
on 17 December 1993.
Respondents asserted that respondent Sehwani,
Incorporated, being the registered owner of the mark
"IN N OUT," should be accorded the presumption of a
valid registration of its mark with the exclusive right to
use the same
The Bureau of Legal Affairs ordered the cancellation of
Sehwanis certificate of registration.
The Director General of IPO dismissed Sehwanis appeal
for being filed out of time and found respondent guilty

of unfair competition. CA affirmed the Director Generals

decision. Hence this petition.
Issue:
1. Whether or not IPO Director General correctly found
respondents guilty of unfair competition?
2. Whether or not IPO has jurisdiction over the
administrative proceedings to rule on issue of unfair
competition?
Held:
1. Yes.
The essential elements of an action for unfair
competition are (1) confusing similarity in the general
appearance of the goods and (2) intent to deceive the
public and defraud a competitor. The confusing
similarity may or may not result from similarity in the
marks, but may result from other external factors in the
packaging or presentation of the goods. The intent to
deceive and defraud may be inferred from the similarity
of the appearance of the goods as offered for sale to the
public. Actual fraudulent intent need not be shown
The evidence on record shows that repondents were not
using their registered trademark but that of the
petitioner. SEHWANI, INC. was issued a Certificate of
Registration for IN N OUT (with the Inside of the Letter
"O" Formed like a Star) for restaurant business in 1993.
The restaurant opened only in 2000 but under the name
IN-N-OUT BURGER. Apparently, the respondents started
constructing the restaurant only after the [petitioner]
demanded that the latter desist from claiming
ownership of the mark IN-N-OUT and voluntarily cancel
their trademark registration. Moreover, respondents are
also using [petitioners] registered mark Double-Double

for use on hamburger products. In fact, the burger

wrappers and the French fries receptacles the
respondents are using do not bear the mark registered
by the respondent, but the petitioners IN-N-OUT
Burgers name and trademark IN-N-OUT with Arrow
design.
There is no evidence that the respondents were
authorized by the petitioner to use the latters marks in
the business. Respondents explanation that they are
not using their own registered trademark due to the
difficulty in printing the "star" does not justify the
unauthorized use of the [petitioners] trademark
instead.
Further, respondents are giving their products the
general appearance that would likely influence
purchasers to believe that these products are those of
the petitioner. The intention to deceive may be inferred
from the similarity of the goods as packed and offered
for sale, and, thus, action will lie to restrain such unfair
competition.
Respondents use of IN-N-OUT BURGER in business
signages reveals fraudulent intent to deceive
purchasers. Exhibit "GG," which shows the business
establishment of respondents illustrates the imitation of
petitioners corporate name IN-N-OUT and signage IN-NOUT BURGER.
2. Yes, as expressly provide for by Section 10 of the
Intellectual Property Code.
Societe Des Produits Nestl, S.A. vs. Court of
Appeals

ROAST and MASTER BLEND, alleging that, "except

for the word MASTER (which cannot be exclusively
appropriated by any person for being a descriptive
or generic name), the other words that are used
respectively with said word in the three
trademarks are very different from each other
in meaning, spelling, pronunciation, and sound".

Facts:

On January 18, 1984, private respondent CFC

Corporation filed with the BPTTT an application for
the registration of the trademark "FLAVOR
MASTER" for instant coffee
Petitioner Societe Des Produits Nestle, S.A., a
Swiss company registered under Swiss laws and
domiciled in Switzerland, filed an unverified Notice
of Opposition, claiming that the trademark of
private respondents product is "confusingly
similar to its trademarks for coffee and coffee
extracts, to wit: MASTER ROAST and MASTER
BLEND."
A verified Notice of Opposition was filed by Nestle
Philippines, Inc., a Philippine corporation and a
licensee of Societe Des Produits Nestle S.A.,
against CFCs application for registration of the
trademark FLAVOR MASTER.
o Nestle claimed that the use, if any, by CFC
of the trademark FLAVOR MASTER and its
registration would likely cause confusion in
the trade; or deceive purchasers and would
falsely suggest to the purchasing public a
connection in the business of Nestle, as the
dominant word present in the three (3)
trademarks is "MASTER"; or that the goods
of CFC might be mistaken as having
originated from the latter.

In answer to the two oppositions, CFC argued that

its trademark, FLAVOR MASTER, is not confusingly
similar with the formers trademarks, MASTER

The
BPTTT
denied
CFCs
application
for
registration.
The Court of Appeals reversed the BPTTTs
decision and ordered the Director of Patents to
approve CFCs application. Hence this petition
before the SC.

Issue:
Whether or not the CA erred in reversing the decision of
the BPTTT denying CFCs petition for registration. YES
Ruling:

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.
The Court of Appeals erred in applying the
totality rule as defined in the cases of Bristol
Myers v. Director of Patents; Mead Johnson & Co.
v. NVJ Van Dorf Ltd.; and American Cyanamid Co.
v. Director of Patents. The totality rule states that
"the test is not simply to take their words and
compare the spelling and pronunciation of said
words.
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 predominant
words but also on the other features
appearing on both labels."
In the case at bar, other than the fact that
both Nestles and CFCs products are
inexpensive and common household items,
the similarity ends there. What is being
questioned here is the use by CFC of the
trademark MASTER. In view of the difficulty of
applying jurisprudential precedents to trademark
cases due to the peculiarity of each case, judicial
fora should not readily apply a certain test or
standard just because of seeming similarities. As
this Court has pointed above, there could be more
telling differences than similarities as to make a
jurisprudential precedent inapplicable.

The Court of Appeals held that the test to be

applied should be the totality or holistic test
reasoning,
since
what
is
of
paramount
consideration is the ordinary purchaser who is, in
general, undiscerningly rash in buying the more
common and less expensive household products
like coffee, and is therefore less inclined to closely
examine specific details of similarities and
dissimilarities between competing products.

This Court cannot agree with the above

reasoning.
If
the
ordinary
purchaser
is
"undiscerningly rash" in buying such common and
inexpensive household products as instant coffee,
and would therefore be "less inclined to closely
examine specific details of similarities and
dissimilarities" between the two competing
products, then it would be less likely for the
ordinary purchaser to notice that CFCs trademark
FLAVOR MASTER carries the colors orange and
mocha while that of Nestles uses red and brown.
The application of the totality or holistic test
is improper since the ordinary purchaser would
not be inclined to notice the specific features,
similarities or dissimilarities, considering that the
product is an inexpensive and common household
item.

Moreover, the totality or holistic test is contrary to

the elementary postulate of the law on
trademarks and unfair competition that confusing
similarity is to be determined on the basis of
visual, aural, connotative comparisons and overall
impressions engendered by the marks in
controversy as they are encountered in the
realities of the marketplace. The totality or holistic

test only relies on visual comparison between two

trademarks whereas the dominancy test relies not
only on the visual but also on the aural and
connotative comparisons and overall impressions
between the two trademarks.
In addition, the word "MASTER" is neither a
generic nor a descriptive term. As such, said
term cannot be invalidated as a trademark
and, therefore, may be legally protected.
o Generic terms are those which constitute
"the common descriptive name of an article
or substance," or comprise the "genus of
which the particular product is a species," or
are "commonly used as the name or
description of a kind of goods," or "imply
reference to every member of a genus and
the exclusion of individuating characters,"
or "refer to the basic nature of the wares or
services provided rather than to the more
idiosyncratic characteristics of a particular
product," and are not legally protectable.
o On the other hand, a term is descriptive
and therefore invalid as a trademark if, as
understood in its normal and natural sense,
it "forthwith conveys the characteristics,
functions, qualities or ingredients of a
product to one who has never seen it and
does not know what it is," or "if it forthwith
conveys an immediate idea of the
ingredients, qualities or characteristics of
the goods," or if it clearly denotes what
goods or services are provided in such a
way that the consumer does not have to
exercise
powers
of
perception
or
imagination.

Rather, the term "MASTER" is a suggestive

term brought about by the advertising
scheme of Nestle. Suggestive terms are those
which, in the phraseology of one court, require
"imagination, thought and perception to reach a
conclusion as to the nature of the goods." Such
terms, "which subtly connote something about the
product," are eligible for protection in the absence
of secondary meaning. While suggestive marks
are capable of shedding "some light" upon certain
characteristics of the goods or services in dispute,
they nevertheless involve "an element of
incongruity," "figurativeness," or " imaginative
effort on the part of the observer."
The term "MASTER", therefore, has acquired a
certain connotation to mean the coffee products
MASTER ROAST and MASTER BLEND produced by
Nestle. As such, the use by CFC of the term
"MASTER" in the trademark for its coffee product
FLAVOR MASTER is likely to cause confusion or
mistake or even to deceive the ordinary
purchasers.

PETRONILO DEL ROSARIO vs. VICENTE QUIOGUE

FACTS:Petronilo
del
Rosario
conducted
an
undertaker's establishment as "La Funeraria Paz,"
on the Calzada de Bilibid, for nine years previous to the
entry or registration of said name in the registry on the
14th of January, 1909. The old premises, near
Calzada Bilibid, were occupied by Vicente
Quiogue,
operating
a
similar
undertaker's
establishment, under the same "La Nueva
Funeraria Paz," with a sign bearing the said name
placed in a most conspicuous spot, which name

he also used in his advertisements in the local

papers.
The name being almost the same, and the
establishment being situated in the same place where
"La Funeraria Paz" had been located and known for nine
years, these facts have actually deceived those who,
intending to send their orders to "La Funeraria Paz" of
Petronilo del Rosario, inadvertently employed "La Nueva
Funeraria Paz" of Vicente Quiogue, and the said
establishment thus succeeded in obtaining benefits
which should have gone to the real establishment
whose services were sought.
Petronilo del Rosario prayed the Court of First Instance
of Manila to issue a preliminary injunction and another
final one, prohibiting Vicente Quiogue from using the
name "Funeraria Paz" and asked that the latter for
losses and damages, and the costs.

From all of the foregoing conclusions, the trial court

concluded that the use of the words "Funeraria Paz"
answered no other purpose than that of making it easy
to mistake the defendant's establishment for that of the
plaintiff formerly located in the same place, or so that it
might be considered as its successor; that the addition
of "La Nueva" was nothing more than a tick employed
by the defendant in order to covertly appropriate the
trade name of the plaintiff; that the very fact of adding
"La Nueva" to the prominent words "Funeraria Paz" on
the sign shows how fully convinced he was that, without
such an addition, he could not use the said sign which
he now considers as a "generic name of the place of
production or origin" referred to in said Act No. 666; that
the lowering of rates, together with all the
circumstances set forth, tended to establish a
competition in bad faith; and that the results are as
shown by the defendant in his claim for damages by
reason of the preliminary injunction, which prevented
him for obtaining such beneficial results.

CFI granted the injunction. QUIOGUE appealed.

ISSUE: Whether Quioque should be stopped from using
Funeraria Paz
RULING: YES.The trial court is correct in granting
injnction.
"Paz" is a name which has been used by the plaintiff to
designate his establishment, not necessarily taken from
the name of the street on which it is situated at the
present time, since the name of "Paz" was in use when
the establishment was located on the Calzada de Bilibid;
and while located at the latter place he registered the
name and the place became so known in his business
papers the word "Paz" is also applied to his
establishments situated on Calle Ilaya in Tondo, and on
Calle Alix in Sampaloc, and is still so used.

Hence, the word "Paz" as concluded in the judgment

appealed from added to the word "Funeraria" on the
sign of the defendant's establishment, although
preceded by the words "La Nueva," is what attracted
clients to the establishment, and not the lower rates
charged for services. (B. of E., 14.)
MASSO HERMANOS vs. DIRECTOR OF PATENTS
Facts: Masso Hermanos is a registered owner of the
trademark composed of the word Cosmopolite used
on canned fish. After 30 years, it applied for the renewal
of said trademark. However, the trademark examiner
denied the petition on the ground that the word
"Cosmopolite", as a trademark for canned fish is
descriptive of said goods and, therefore, could not have

been legally registered as a trademark. Petitioner

appealed from said ruling to the Director of Patents on
the ground that the examining officer was not
authorized to re-examine certificates which were
originally issued under Act No. 666 and surrendered for
re-registration. The Director of Patents affirmed said
ruling.
Issue: Whether the word Cosmopolite is descriptive and
therefore cannot be registered as a trademark
Held: No. The word "Cosmopolite" does not give the
name, quality or description of the canned fish for which
it is used. It does not even describe the place of origin,
for it does not indicate the country or place where the
canned fish was manufactured. The court is, therefore,
of the opinion that the registration of the trademark
"Cosmopolite" under Act No. 666 was valid and is
subsisting. In view of the foregoing, the ruling of the
respondent Director of Patents is set aside and he is
ordered to issue to the petitioner a new certificate of
registration of the trademark in exchange for the old
one No. 1881 surrendered to him on June 18, 1948.
ETEPHA, A.G. vs. DIRECTOR OF PATENTS
To the question: May trademark ATUSSIN be registered,
given the fact that PERTUSSIN, another trademark, had
been previously registered in the Patent Office? the
Director of Patents answered affirmatively. Hence this
appeal.
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, 1959.1
Petitioner, Etepha, A. G., a Liechtenstin 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.
HELD:
The validity of a cause for infringement is predicated
upon colorable imitation. The phrase "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, and to cause him to purchase the one supposing
it to be the other."
"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"7 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".
Confusion is likely between trademarks, however, only if
their over-all presentations in any of the particulars of
sound, appearance, or meaning are such as would lead
the purchasing public into believing that the products to
which the marks are applied emanated from the same
source.
We now consider exclusively the two words Pertussin
and Atussin as they appear on the respective labels.
As previously adverted to, these words are presented to
the public in different styles of writing and methods of
design. The horizontal plain, block letters of Atussin and
the diagonally and artistically upward writing of
Pertussin leave distinct visual impressions. One look is
enough to denude the mind of that illuminating
similarity so essential for a trademark infringement case
to prosper.
As we take up Pertussin and Atussin once again, we
cannot escape notice of the fact that the two words do
not sound alike when pronounced. There is not much
phonetic similarity between the two. The Solicitor
General
well-observed
that
in
Pertussin
the
pronunciation of the prefix "Per", whether correct or
incorrect, includes a combination of three letters P, e
and r; whereas, in Atussin the whole starts with the
single letter A added to suffix "tussin". Appeals to the

ear are disimilar. And this, because in a word

combination, the part that comes first is the most
pronounced. An expositor of the applicable rule here is
the decision in the Syrocol-Cheracol controversy. There,
the ruling is that trademark Syrocol (a cough medicine
preparation) is not confusedly similar to trademark
Cheracol (also a cough medicine preparation). Reason:
the two words "do not look or sound enough alike to
justify a holding of trademark infringement", and the
"only similarity is in the last syllable, and that is not
uncommon in names given drug compounds".

December 22, 1966 MARVEX COMMERCIAL CO.,

INC., petitioner,
vs.PETRA HAWPIA and CO., and THE DIRECTOR OF
PATENTS, respondents.
Facts of the Case: Petra Hawpia & Co., a partnership
duly organized under the laws of the Philippines filed a
petition for the registration of the trademark "LIONPAS"
used on medicated plaster, with the Philippine Patent
Office, asserting its continuous use in the Philippines
since June 9, 1958. The Marvex Commercial Co., Inc., a
corporation also duly organized under the laws of the
Philippines, on July 24, 1959 filed an opposition thereto,
alleging that the registration of such trademark would
violate its right to and interest in the trademark
"SALONPAS" used on another medicated plaster, which
is registered its name under Certificate of Registration
5486, issued by the Director of Patents on September
29, 1956, and that both trademarks when used on
medicated plaster would mislead the public as they are
confusingly similar.

The Director of Patents dismissed the opposition and

gave due course to the petition, stating in part that
"confusion, mistake, or deception among the purchasers
will not likely and reasonably occur" when both
trademarks are applied to medicated plaster.
Issues:
(1) Is the applicant the owner of the trademark
"LIONPAS"?;
(2) Is the trademark "LIONPAS" confusingly similar to
the trademark "SALONPAS"?
Held: Is the applicant the owner of the trademark
"LIONPAS?"
On the 1st issue: The assignment must be in writing,
acknowledged before a notary public or other officer
authorized to administer oaths or perform other notarial
acts and certified under the hand and official seal of the
notary or other officer. (Sec. 31, par. 2)

the Philippines of the "LIONPAS" penetrative plaster;

describes the applicant as the "Philippine sole
distributor" of "LIONPAS"; exh. B simply states that
"LIONPAS" is "manufactured exclusively for Petra
Hawpia & Co. for distribution in the Philippines." Not
being the owner of the trademark "LIONPAS" but being
merely an importer and/or distributor of the said
penetrative plaster, the applicant is not entitled under
the law to register it in its name.
On the 2nd issue: The trademarks "SALONPAS" and
"LIONPAS" are confusingly similar in sound. Both these
words have the same suffix, "PAS", which is used to
denote a plaster that adheres to the body with curative
powers. "Pas, being merely descriptive, furnishes no
indication of the origin of the article and therefore is
open for appropriation by anyone (Ethepa vs. Director of
Patents, L-20635, March 31, 1966) and may properly
become the subject of a trademark by combination with
another word or phrase.

In this case, although a sheet of paper is attached to

exh. 6, on which is typewritten a certification that the
signatures of the presidents of the two named
companies (referring to the signatures in exh. 6) "have
been duly written by themselves", this sheet is
unmarked, unpaged, unsigned, undated and
unsealed. We have thumbed the record in quest of any
definitive evidence that it is a correct translation of the
Japanese characters found on another unmarked and
unpaged sheet, and have found none.

Two letters of "SALONPAS" are missing in "LIONPAS"; the

first letter a and the letter s. Be that as it may, when the
two words are pronounced, the sound effects are
confusingly similar. And where goods are advertised
over the radio, similarity in sound is of especial
significance (Co Tiong Sa vs. Director of Patents, 95 Phil.
1 citing Nims, The Law of Unfair Competition and
Trademarks, 4th ed., vol. 2, pp. 678-679). "The
importance of this rule is emphasized by the increase of
radio advertising in which we are deprived of help of our
eyes and must depend entirely on the ear" (Operators,
Inc. vs. Director of Patents, supra).

The documents are legally insufficient to prove that the

applicant is the owner of the trademark in question. As
a matter of fact, the other evidence on record states
that the applicant is merely the "exclusive distributor" in

In the case at bar, "SALONPAS" and "LIONPAS", when

spoken, sound very much alike. Similarity of sound is
sufficient ground for this Court to rule that the two
marks are confusingly similar when applied to

merchandise of the same descriptive properties (see

Celanese Corporation of America vs. E. I. Du Pont, 154 F.
2d. 146, 148).

1.

The registration of "LIONPAS" cannot therefore be given

due course.
Decision of the respondent Director of Patents is set
aside, and the petition of the respondent Petra Hawpia
& Co. is hereby dismissed.

2.

Asia Brewery vs Court of Appeals and San Miguel

Corporation
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: Whether or not Asia Brewery infringed upon the
trademark of SMC.

3.

4.

5.

Held:
No. Both products are manufactured using
amber colored steinie bottles of 320 ml. Both were
labeled in a rectangular fashion using white color paint.
But other than these similarities, there are salient
differences between the two. As found by the Supreme
Court, among others they are the following:

The dominant feature of SMCs trademark are the

words San Miguel Pale Pilsen while that of Asia
Brewerys trademark is the word Beer. Nowhere
in SMCs product can be seen the word Beer nor
in Asia Brewerys product can be seen the words
San Miguel Pale Pilsen. Surely, someone buying
Beer na Beer cannot mistake it as San Miguel
Pale Pilsen beer.
The bottle designs are different. SMCs bottles
have slender tapered neck while that of Beer na
Beer are fat. Though both beer products use
steinie bottles, SMC cannot claim that Asia
Brewery copied the idea from SMC. SMC did not
invent but merely borrowed the steinie bottle from
abroad and SMC does not have any patent or
trademark to protect the steinie bottle shape and
design.
In SMC bottles, the words pale pilsen are written
diagonally while in Beer na Beer, the words
pale pilsen are written horizontally. Further, the
words pale pilsen cannot be said to be copied
from SMC for pale pilsen are generic words
which originated from Pilsen, Czechoslovakia.
Pilsen is a geographically descriptive word and is
non-registrable.
SMC bottles have no slogans written on them
while Asia Brewerys bottles have a copyrighted
slogan written on them that is Beer na Beer.
In SMC bottles, it is expressly labeled as
manufactured by SMC. In Asia Brewery beer
products, it is likewise expressly labeled as
manufactured by Asia Brewery. Surely, there is no
intention on the part of Asia Brewery to confuse
the public and make it appear that Beer na Beer
is a product of SMC, a long-established and more
popular brand.

6.

Justice Cruz Dissenting:

A number of courts have held that to determine whether
a trademark has been infringed, we must consider the
mark as a whole and not as dissected. If the buyer is
deceived, it is attributable to the marks as a totality, not
usually to any part of it. The court therefore should be
guided by its first impression, for a buyer acts quickly
and is governed by a casual glance, the value of which
may be dissipated as soon as the court assumes to
analyze carefully the respective features of the mark.

ANG SI HENG and SALUSTIANA DEE, vs.

WELLINGTON
DEPARTMENT
STORE,
INC.,
BENJAMIN CHUA, S.R. MENDINUETO, and FELIMON
COSIO
Facts:The plaintiffs-appellants are engaged in the
business of manufacturing shirts, pants, drawers, and
other articles of wear for men, women, and children.
They have been in that business since the year 1938,
having obtained the registration for the said articles the
trademark of "Wellington." In the year 1940 they
registered the business name "Wellington Company,"
and this registration of the name was renewed on June
11, 1946. Their invoices, stationery, and signboard bear
the trade name "Wellington Company," and in
newspaper advertisements they described their
business as "Wellington Shirt Factory." It does not
appear, however, that their trademark for their articles
of wear was again registered after August 27, 1938, nor
their trade name registered after 1946.

Defendant Benjamin Chua applied for the registration of

the business name "Wellington Department Store" on
May 7, 1946. His application was approved by the
Bureau of Commerce, and a certificate issued in his
favor. On June 8, 1946, this business name was
transferred to Wellington Department Store, Inc., of
which he is the president. It does not appear, however,
that his application with the Bureau of Commerce for
the registration of the business name "Wellington
Department Store" has been renewed, and neither does
it appear that the business name "Wellington Company"
applied for by plaintiffs-appellants has also been
renewed.
The plaintiffs allege that the use of the words
"Wellington Department Store" as a business name and
as a corporate name by the defendant deceives the
public into buying defendant corporation's goods under
the mistaken belief that the names are the plaintiff's or
have the same source as plaintiffs' goods, thereby
resulting in damage to them. They, therefore, pray that
the defendant corporation be enjoined from using the
business name "Wellington Department Store" and the
corporate name "Wellington Department Store, Inc";
that the Director of Commerce be ordered to cancel the
registration of said business name, and the Securities
and Exchange Commissioner be also ordered to cancel
the corporate name "Wellington Department Store, Inc."
In their answer, defendants allege that the plaintiffs are
engaged in the manufacture or production of shirts,
pants, drawers, and other articles of wear for men,
women, and children, and keep a dry goods store for the
sale of the same, whereas they are not engaged in the
same business or in the manufacture or sale of articles
with the trademark "Wellington," and that they are
keeping a store for articles such as shoes, hats, toys,
perfumes, bags, apparels, and the like, most of which

are different from those manufactured and sold by

plaintiffs-appellants.

may be created or produced, the distance between the

place of business of one and the other party, etc.

Issue: Whether or not Wellington is registrable as a

trademark/name

While there is similarity between the trademark or trade

name "Wellington Department Store," no confusion or
deception can possibly result or arise from such
similarity because the latter is a "department store,"
while the former does purport to be so. The name
"Wellington" is admittedly the name of the trademark
on the shirts, pants, drawers, and other articles of wear
for men, women and children, whereas the name used
by the defendant indicates not these manufactured
articles or any similar merchandise, but a department
store.

Held: NO The term "Wellington" is either a

geographical name or the surname of a person. But
mere geographical names are ordinarily regarded as
common property, and it is a general rule that the
same cannot be appropriated as the subject of an
exclusive trademark or trade name. Even if
Wellington were a surname, which is not even that of
the plaintiffs-appellants, it cannot also be validly
registered as a trade name. As the term cannot be
appropriated as a trademark or a trade name, no action
for violation thereof can be maintained, as none is
granted by the statute in such cases. The right to
damages and for an injunction for infringement of a
trademark or a trade name is granted only to those
entitled to the exclusive use of a registered trademark
or trade name. It is evident, therefore, that no action
may lie in favor of the plaintiffs-appellants herein for
damages or injunctive relief for the use by the
defendants-appellees of the name "Wellington."
In order to determine whether defendants are liable in
this respect and have deceived the public into believing
that the goods they sell are of plaintiffs' manufacture or
proceed from the same source as plaintiffs' goods, all
the surrounding circumstances must be taken into
account, especially the identity or similarity of their
business, how far the names are a true description of
the kind and quality of the articles manufactured or the
business carried on, the extent of the confusion which

(Exception to the general rule): Even a name or

phrase not capable of appropriation as trademark or
trade name may, by long and exclusive use by a
business with reference thereto or to its products,
acquire a proprietary connotation, such that the name
or phrase to the purchasing public becomes associated
with the business or the products and entitled to
protection against unfair competition.
But in the case at bar, the principle therein
enunciated cannot be made to apply because the
evidence submitted by the appellants did not
prove that their business has continued for so
long a time that it has become of consequence
and acquired a goodwill of considerable value,
such that its articles and products have acquired
a well-known reputation and confusion will result
by the use of the disputed name by the
defendants' department store.