G.R. No.

96161 February 21, 1992

PHILIPS EXPORT B.V., PHILIPS ELECTRICAL LAMPS, INC. and PHILIPS INDUSTRIAL DEVELOPMENT, INC.,
petitioners,
vs.
COURT OF APPEALS, SECURITIES & EXCHANGE COMMISSION and STANDARD PHILIPS CORPORATION,
respondents.
MELENCIO-HERRERA, J.:
FACTS: Petitioner Philips Export B.V. (PEBV), a foreign corporation organized under the laws of the Netherlands,
although not engaged in business here, is the registered owner of the trademarks PHILIPS and PHILIPS SHIELD EMBLEM
under Certificates of Registration Nos. R-1641 and R-1674, respectively issued by the Philippine Patents Office
(presently known as the Bureau of Patents, Trademarks and Technology Transfer).
Petitioners Philips Electrical Lamps, Inc. (Philips Electrical, for brevity) and Philips Industrial Developments, Inc. (Philips
Industrial, for short), authorized users of the trademarks PHILIPS and PHILIPS SHIELD EMBLEM, were incorporated on
29 August 1956 and 25 May 1956, respectively. All petitioner corporations belong to the PHILIPS Group of Companies.
Respondent Standard Philips Corporation (Standard Philips), on the other hand, was issued a Certificate of Registration
by respondent Commission on 19 May 1982.
On 24 September 1984, Petitioners filed a letter complaint with the Securities & Exchange Commission (SEC) asking
for the cancellation of the word "PHILIPS" from Private Respondent's corporate name in view of the prior registration
with the Bureau of Patents of the trademark "PHILIPS" and the logo "PHILIPS SHIELD EMBLEM" in the name of
Petitioner, PEBV, and the previous registration of Petitioners Philips Electrical and Philips Industrial with the SEC.
As a result of Private Respondent's refusal to amend its Articles of Incorporation, Petitioners filed with the SEC, on 6
February 1985, a Petition (SEC Case No. 2743) praying for the issuance of a Writ of Preliminary Injunction, alleging,
among others, that Private Respondent's use of the word PHILIPS amounts to an infringement and clear violation of
Petitioners' exclusive right to use the same considering that both parties engage in the same business.
Private Respondent countered that Petitioner PEBV has no legal capacity to sue; that its use of its corporate name is
not at all similar to Petitioners' trademark PHILIPS when considered in its entirety; and that its products consisting of
chain rollers, belts, bearings and cutting saw are grossly different from Petitioners' electrical products.
The SEC Hearing Officer, on 27 September 1985, ruled against the issuance of such Writ.
On 30 January 1987, the same Hearing Officer dismissed the Petition for lack of merit.
-Besides, Section 18 of the Corporation Code (infra) is applicable only when the corporate names in question are
identical. Here, there is no confusing similarity between Petitioners' and Private Respondent's corporate names as
those of the Petitioners contain at least two words different from that of the Respondent. Mr- denied
On appeal, the SEC en banc affirmed the dismissal declaring that the corporate names of Petitioners and Private
Respondent hardly breed confusion inasmuch as each contains at least two different words and, therefore, rules out
any possibility of confusing one for the other.
CA- DISMISSED THE PETITION. CA observed that "private respondents' products consisting of chain rollers, belts,
bearings and cutting saw are unrelated and non-competing with petitioners' products i.e. electrical lamps such that
consumers would not in any probability mistake one as the source or origin of the product of the other."
ISSUE: WON the word PHILIPS from private respondents corporate name be cancelled or removed.
RULING: YES.

A corporation's right to use its corporate and trade name is a property right, a right in rem, which it may assert and
protect against the world in the same manner as it may protect its tangible property, real or personal, against trespass
or conversion.
It is regarded, to a certain extent, as a property right and one which cannot be impaired or defeated by subsequent
appropriation by another corporation in the same field. The general rule as to corporations is that each corporation
must have a name by which it is to sue and be sued and do all legal acts. The name of a corporation in this respect
designates the corporation in the same manner as the name of an individual designates the person and the right to
use its corporate name is as much a part of the corporate franchise as any other privilege granted
A corporation acquires its name by choice and need not select a name identical with or similar to one already
appropriated by a senior corporation while an individual's name is thrust upon him (See Standard Oil Co. of New
Mexico, Inc. v. Standard Oil Co. of California, 56 F 2d 973, 977). A corporation can no more use a corporate name in
violation of the rights of others than an individual can use his name legally acquired so as to mislead the public and
injure another.
Our own Corporation Code, in its Section 18, expressly provides that:
No corporate name may be allowed by the Securities and Exchange Commission if the proposed name is identical or
deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or
is patently deceptive, confusing or contrary to existing law. Where a change in a corporate name is approved, the
commission shall issue an amended certificate of incorporation under the amended name. (Emphasis supplied)
The statutory prohibition cannot be any clearer. To come within its scope, two requisites must be proven, namely:
(1) that the complainant corporation acquired a prior right over the use of such corporate name; and
(2) the proposed name is either:
(a) identical; or (b) deceptively or confusingly similar to that of any existing corporation or to any other name already
protected by law; or (c) patently deceptive, confusing or contrary to existing law.
The right to the exclusive use of a corporate name with freedom from infringement by similarity is determined by
priority of adoption
The second requisite no less exists in this case. In determining the existence of confusing similarity in corporate
names, the test is whether the similarity is such as to mislead a person, using ordinary care and discrimination. In so
doing, the Court must look to the record as well as the names.
While the corporate names of Petitioners and Private Respondent are not identical, a reading of Petitioner's corporate
names, to wit: PHILIPS EXPORT B.V., PHILIPS ELECTRICAL LAMPS, INC. and PHILIPS INDUSTRIAL DEVELOPMENT, INC.,
inevitably leads one to conclude that "PHILIPS" is, indeed, the dominant word in that all the companies affiliated or
associated with the principal corporation, PEBV, are known in the Philippines and abroad as the PHILIPS Group of
Companies.
It is settled, however, that proof of actual confusion need not be shown. It suffices that confusion is probably or likely
to occur (6 Fletcher [Perm Ed], pp. 107-108, enumerating a long line of cases).
True, under the Guidelines in the Approval of Corporate and Partnership Names formulated by the SEC, the proposed
name "should not be similar to one already used by another corporation or partnership. If the proposed name contains
a word already used as part of the firm name or style of a registered company; the proposed name must contain two
other words different from the company already registered. It is then pointed out that Petitioners Philips Electrical and
Philips Industrial have two words different from that of Private Respondent's name.
What is lost sight of, however, is that PHILIPS is a trademark or trade name which was registered as far back as 1922.
Petitioners, therefore, have the exclusive right to its use which must be free from any infringement by similarity. A

corporation has an exclusive right to the use of its name, which may be protected by injunction upon a principle similar
to that upon which persons are protected in the use of trademarks and tradenames.
Such principle proceeds upon the theory that it is a fraud on the corporation which has acquired a right to that name
and perhaps carried on its business thereunder, that another should attempt to use the same name, or the same name
with a slight variation in such a way as to induce persons to deal with it in the belief that they are dealing with the
corporation which has given a reputation to the name
Notably, too, Private Respondent's name actually contains only a single word, that is, "STANDARD", different from that
of Petitioners inasmuch as the inclusion of the term "Corporation" or "Corp." merely serves the Purpose of
distinguishing the corporation from partnerships and other business organizations.
The fact that there are other companies engaged in other lines of business using the word "PHILIPS" as part of their
corporate names is no defense and does not warrant the use by Private Respondent of such word which constitutes an
essential feature of Petitioners' corporate name previously adopted and registered and-having acquired the status of a
well-known mark in the Philippines and internationally as well.
G.R. No. 101897. March 5, 1993.
LYCEUM OF THE PHILIPPINES, INC., petitioner, vs. COURT OF APPEALS, LYCEUM OF APARRI, LYCEUM OF
CABAGAN, LYCEUM OF CAMALANIUGAN, INC., LYCEUM OF LALLO, INC., LYCEUM OF TUAO, INC., BUHI
LYCEUM, CENTRAL LYCEUM OF CATANDUANES, LYCEUM OF SOUTHERN PHILIPPINES, LYCEUM OF EASTERN
MINDANAO, INC. and WESTERN PANGASINAN LYCEUM, INC., respondents.
FELICIANO, J p:
FACTS:
Petitioner is an educational institution duly registered with the Securities and Exchange Commission ("SEC"). When it
first registered with the SEC on 21 September 1950, it used the corporate name Lyceum of the Philippines, Inc. and
has used that name ever since.
On 24 February 1984, petitioner instituted proceedings before the SEC to compel the private respondents, which are
also educational institutions, to delete the word "Lyceum" from their corporate names and permanently to enjoin them
from using "Lyceum" as part of their respective names.
Petitioner had sometime before commenced in the SEC a proceeding (SEC-Case No. 1241) against the Lyceum of
Baguio, Inc. to require it to change its corporate name and to adopt another name not "similar [to] or identical" with
that of petitioner.
In an Order dated 20 April 1977, Associate Commissioner Julio Sulit held that the corporate name of petitioner and that
of the Lyceum of Baguio, Inc. were substantially identical because of the presence of a "dominant" word, i.e.,
"Lyceum," the name of the geographical location of the campus being the only word which distinguished one from the
other corporate name.
The SEC also noted that petitioner had registered as a corporation ahead of the Lyceum of Baguio, Inc. in point of time,
1 and ordered the latter to change its name to another name "not similar or identical [with]" the names of previously
registered entities.
The Lyceum of Baguio, Inc. assailed the Order of the SEC before the Supreme Court in a case docketed as G.R. No. L46595. In a Minute Resolution dated 14 September 1977, the Court denied the Petition for Review for lack of merit.
Entry of judgment in that case was made on 21 October 1977. 2
Armed with the Resolution of this Court in G.R. No. L-46595, petitioner then wrote all the educational institutions it

could find using the word "Lyceum" as part of their corporate name, and advised them to discontinue such use of
"Lyceum." When, with the passage of time, it became clear that this recourse had failed, petitioner instituted before
the SEC SEC-Case No. 2579 to enforce what petitioner claims as its proprietary right to the word "Lyceum." The SEC
hearing officer rendered a decision sustaining petitioner's claim to an exclusive right to use the word "Lyceum."
On appeal, however, by private respondents to the SEC En Banc, the decision of the hearing officer was reversed and
set aside. The SEC En Banc did not consider the word "Lyceum" to have become so identified with petitioner as to
render use thereof by other institutions as productive of confusion about the identity of the schools concerned in the
mind of the general public.
-Unlike its hearing officer, the SEC En Banc held that the attaching of geographical names to the word "Lyceum" served
sufficiently to distinguish the schools from one another, especially in view of the fact that the campuses of petitioner
and those of the private respondents were physically quite remote from each other. 3
On appeal, CA affirmed. Before this Court, petitioner asserts that the Court of Appeals committed the following errors:
The Court of Appeals erred in holding that the word Lyceum has not acquired a secondary meaning in favor of
petitioner AND The Court of Appeals erred in holding that Lyceum as a generic word cannot be appropriated by the
petitioner to the exclusion of others.
ISSUE: WON 1) word Lyceum has acquired a secondary meaning in favor of petitioner and can be
appropriated by the petitioner to the exclusion of others.
RULING: NO.
The Articles of Incorporation of a corporation must, among other things, set out the name of the corporation. 6 Section
18 of the Corporation Code establishes a restrictive rule insofar as corporate names are concerned:
"SECTION 18. Corporate name. No corporate name may be allowed by the Securities an Exchange
Commission if the proposed name is identical or deceptively or confusingly similar to that of any existing corporation
or to any other name already protected by law or is patently deceptive, confusing or contrary to existing laws. When a
change in the corporate name is approved, the Commission shall issue an amended certificate of incorporation under
the amended name." (Emphasis supplied)
The policy underlying the prohibition in Section 18 against the registration of a corporate name which is "identical or
deceptively or confusingly similar" to that of any existing corporation or which is "patently deceptive" or "patently
confusing" or "contrary to existing laws," is the avoidance of fraud upon the public which would have occasion to deal
with the entity concerned, the evasion of legal obligations and duties, and the reduction of difficulties of administration
and supervision over corporations. 7
We do not consider that the corporate names of private respondent institutions are "identical with, or deceptively or
confusingly similar" to that of the petitioner institution. True enough, the corporate names of private respondent
entities all carry the word "Lyceum" but confusion and deception are effectively precluded by the appending of
geographic names to the word "Lyceum."
Thus, we do not believe that the "Lyceum of Aparri" can be mistaken by the general public for the Lyceum of the
Philippines, or that the "Lyceum of Camalaniugan" would be confused with the Lyceum of the Philippines.
Thus today, the word "Lyceum" generally refers to a school or an institution of learning. While the Latin word "lyceum"
has been incorporated into the English language, the word is also found in Spanish (liceo) and in French (lycee). As the
Court of Appeals noted in its Decision, Roman Catholic schools frequently use the term; e.g., "Liceo de Manila," "Liceo
de Baleno" (in Baleno, Masbate), "Liceo de Masbate," "Liceo de Albay." 9 "Lyceum" is in fact as generic in character as
the word "university." In the name of the petitioner, "Lyceum" appears to be a substitute for "university;" in other
places, however, "Lyceum," or "Liceo" or "Lycee" frequently denotes a secondary school or a college. It may be
(though this is a question of fact which we need not resolve) that the use of the word "Lyceum" may not yet be as

widespread as the use of "university," but it is clear that a not inconsiderable number of educational institutions have
adopted "Lyceum" or "Liceo" as part of their corporate names. Since "Lyceum" or "Liceo" denotes a school or
institution of learning, it is not unnatural to use this word to designate an entity which is organized and operating as an
educational institution.
The doctrine of secondary meaning originated in the field of trademark law. Its application has, however, been
extended to corporate names sine the right to use a corporate name to the exclusion of others is based upon the same
principle which underlies the right to use a particular trademark or tradename.
In Philippine Nut Industry, Inc. v. Standard Brands, Inc., the doctrine of secondary meaning was elaborated in the
following terms: " . . . a word or phrase originally incapable of exclusive appropriation with reference to an article on
the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so
exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public,
the word or phrase has come to mean that the article was his product." The question which arises, therefore, is
whether or not the use by petitioner of "Lyceum" in its corporate name has been for such length of time and with such
exclusivity as to have become associated or identified with the petitioner institution in the mind of the general public
(or at least that portion of the general public which has to do with schools)
No evidence was ever presented in the hearing before the Commission which sufficiently proved that the word
'Lyceum' has indeed acquired secondary meaning in favor of the appellant. If there was any of this kind, the same tend
to prove only that the appellant had been using the disputed word for a long period of time. . . . In other words, while
the appellant may have proved that it had been using the word 'Lyceum' for a long period of time, this fact alone did
not amount to mean that the said word had acquired secondary meaning in its favor because the appellant failed to
prove that it had been using the same word all by itself to the exclusion of others. More so, there was no evidence
presented to prove that confusion will surely arise if the same word were to be used by other educational institutions.
Petitioner institution is not entitled to a legally enforceable exclusive right to use the word "Lyceum" in its corporate
name and that other institutions may use "Lyceum" as part of their corporate names. To determine whether a given
corporate name is "identical" or "confusingly or deceptively similar" with another entity's corporate name, it is not
enough to ascertain the presence of "Lyceum" or "Liceo" in both names. One must evaluate corporate names in their
entirety and when the name of petitioner is juxtaposed with the names of private respondents, they are not reasonably
regarded as "identical" or "confusingly or deceptively similar" with each other.

G.R. No. L-14761 January 28, 1961

ARCE SONS AND COMPANY, petitioner, vs. SELECTA BISCUIT COMPANY, INC., ET AL., respondents.
x---------------------------------------------------------x
G.R. No. L-17981 January 28, 1961
ARCE SONS AND COMPANY, plaintiff-appellee, vs. SELECTA BISCUIT COMPANY, INC., defendant-appellant.
BAUTISTA ANGELO, J.:
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.
In due time, petitioner filed its opposition thereto on several grounds, among which are:
(1) that the mark "SELECTA" had been continuously used by petitioner in the manufacture and sale of its products,
including cakes, bakery products, milk and ice cream from the time of its organization and even prior thereto by its
predecessor-in-interest, Ramon Arce;
(2) that the mark "SELECTA" has already become identified with name of the petitioner and its business;
(3) that petitioner had warned respondent not to use said mark because it was already being used by the former, but
that the latter ignored said warning;
(4) that respondent is using the word "SELECTA" as a trade-mark as bakery products in unfair competition with the
products of petitioner thus resulting in confusion in trade;
(5) that the mark to which the application of respondent refers has striking resemblance, both in appearance and
meaning, to petitioner's mark as to be mistaken therefor by the public and cause respondent's goods to be sold as
petitioner's; and
(6) that actually a complaint has been filed by the petitioner against respondent for unfair competition in the Court of
First Instance of Manila asking for damages and for the issuance of a writ of injunction against respondent enjoining
the latter for continuing with the use of said mark.
On September 28, 1958, the Court of First Instance of Manila rendered decision in the unfair competition case
perpetually enjoining respondent from using the name "SELECTA" as a trade-mark on the goods manufactured and/or
sold by it and ordering it to pay petitioner by way of damages all the profits it may have realized by the use of said
name, plus the sum of P5,000.00 as attorney's fee and costs of suit.
From this decision, respondent brought the matter on appeal to the Court of Appeals wherein the case was docketed
as CA-G.R. No. 24017-R.
Inasmuch as the issues of the facts in the case of unfair competition are substantially identical with those raised before
the Patent Office, the parties at the hearing thereof, agreed to submit the evidence they introduced before the Court of
First Instance of Manila to said office, and on the strength thereof,
the Director of Patents, on December 7, 1958, rendered decision dismissing petitioner's opposition and stating that the
registration of the trade-mark "SELECTA" in favor of applicant Selecta Biscuits Company, Inc. will not cause confusion
or mistake nor will deceive the purchasers as to the cause damage to petitioner.
Hence, petitioner interposed the present petition for review.
ISSUE: WON the registration of the trade-mark 'SELECTA' in favor of respondent will cause damage to
petitioner.
RULING: YES.
It appears that Ramon Arce, predecessor-in-interest of petitioner, started his milk business as early as 1933. He sold
his milk products in bottles covered with caps on which the words 'SELECTA FRESH MILK' were inscribed. Expanding his
business, he established a store at Lepanto Street, City of Manila, where he sold, in addition to his products, ice cream,

sandwiches and other food products, placing right in front of his establishment a signboard with the name 'SELECTA'
inscribed thereon. Special containers made of tin cans with the word 'SELECTA' written on their covers were used for
his products. Bottle with the same word embossed on their sides were used for his milk products.
The sandwiches he sold and distributed were wrapped in carton boxes with covers bearing the same name. He used
several cars and trucks for delivery purposes on the sides of which were written the same word. As new products were
produced for sale, the same were placed in containers with the same name written on their covers. After the war, he
added to his business such items as cakes, bread, cookies, pastries, and assorted bakery products. Then his business
was acquired by petitioner, a co-partnership organized by his sons, the purposes of which are "to conduct a first class
restaurant business; to engage in the manufacture and sale of ice cream, milk, cakes and other products; and to carry
on

such

other

legitimate

business

as

may

produce

profit."

The foregoing unmistakably show that petitioner, through its predecessor-in-interest, had made use of the word
"SELECTA" not only as a trade-name indicative of the location of the restaurant where it manufactures and sells its
products, but as trade-mark is used. This is not only in accordance with its general acceptation but with our law on the
matter. "
Trade-mark' or trade-name', distinction being highly technical, is sign, device, or mark by which articles produced are
dealt in by particular person or organization are distinguished or distinguishable from those produced or dealt in by
other. 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 term 'trade-mark' includes any word, name, symbol, emblem, sign or device or any combination thereof adopted
and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured, sold or
dealt in by others." (Section 38, Republic Act No. 166).
Verily, the word 'SELECTA' has been chosen by petitioner and has been inscribed on all its products to serve not only
as a sign or symbol that may indicate that they are manufactured and sold by it but as a mark of authenticity that may
distinguish them from the products manufactured and sold by other merchants or businessmen. The Director of
Patents, therefore, erred in holding that petitioner made use of that word merely as a trade-name and not as a trademark within the meaning of the law.
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. And it is also in the sense that the law postulates that "The ownership or possession of a trade-mark, . . . 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).
The term 'SELECTA' may be placed at par with the words "Ang Tibay" which this Court has considered not merely as a
descriptive term within the meaning of the Trade-mark Law but as a fanciful or coined phrase, or a trade-mark. In that
case, this Court found that respondent has constantly used the term "Ang Tibay" , both as a trade-mark and a tradename, in the manufacture and sale of slippers, shoes and indoor baseballs for twenty-two years before petitioner
registered it as a trade-name for pants and shirts so that it has performed during that period the function of a trademark to point distinctively, or by its own meaning or by association, to the origin or ownership of the wares to which it
applies.

And holding that respondent was entitled to protection in the use of that trade-mark, this Court made the following
comment:
The function of a trade-mark is to point distinctively, either by its own meaning or by association, to the origin or
ownership of the wares to which it is applied. 'Ang Tibay' as used by the respondent to designate his wares, had
exactly performed that function for twenty-two years before the petitioner adopted it as a trade-mark in her own
business. 'Ang Tibay' shoes and slippers are, by association, known throughout the Philippines as products of the 'Ang
Tibay" factory owned and operated by the respondent.
Even if 'AngTibay', therefore, were not capable of exclusive appropriation as a trade-mark, the application of the
doctrine of secondary meaning could nevertheless be fully sustained because, in any event, by respondent's long and
exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive,
might nevertheless have been used so long and exclusively by one producer with reference to his article that, in that
trade and to that branch of the purchasing public, the word or phrase has come to mean that article was his product.
The rationale in the Ang Tibay case applies on all fours to the case of petitioner.
But respondent claims that it adopted the trade-mark 'SELECTA' in good faith and not precisely to engage in unfair
competition with petitioner. It tried to establish that respondent was organized as a corporation under the name of
Selecta Biscuit Company, Inc. on March 2, 1955 and started operations as a biscuit factory on June 20, 1955; that the
name 'SELECTA' was chosen by the organizers of respondent who are Chinese citizens as a translation of the Chinese
word "Ching Suan" which means "mapili" in Tagalog, and "Selected" in English; that , thereupon, it registered its
articles of incorporation with the Securities and Exchange Commission and the name 'SELECTA' as a business name
with the Bureau of Commerce which issued to it Certificate of Registration No. 55594; and that it also registered the
same trade-name with the Bureau of Internal Revenue and took steps to obtain a patent from the Patent Office by
filing with it as application for the registration of said trade-name.
The suggestion that the name 'SELECTA' was chosen by the organizers of respondent merely as a translation from a
Chinese word "Ching Suan" meaning "mapili" in the dialect is betrayed by the very manner of its selection, for if the
only purpose is to make an English translation of that word and not to compete with the business of petitioner, why
chose the word 'SELECTA', a Spanish word, and not "Selected", the English equivalent thereof, as was done by other
well-known enterprises? In the words of petitioner's counsel, "Why with all the words in the English dictionary and all
the words in the Spanish dictionary and all the phrases that could be coined, should defendant-appellant (respondent)
choose 'SELECTA' if its purpose was not and is not to fool the people and to damage plaintiff-appellee?"
In view of the foregoing, we hold that the Director of Patents committed an error in dismissing the opposition of
petitioner and in holding that the registration of the trade-mark 'SELECTA' in favor of respondent will not cause
damage to petitioner, and consequently, we hereby reverse his decision.
G.R. No. 169504 , March 3, 2010
COFFEE PARTNERS VS SAN FARNCISCO COFFEE
CARPIO, J.:
FACTS:
Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing and maintaining coffee
shops in the country. It registered with the Securities and Exchange Commission (SEC) in January 2001. It has a
franchise agreement[6] with Coffee Partners Ltd. (CPL), a business entity organized and existing under the laws of
British Virgin Islands, for a non-exclusive right to operate coffee shops in the Philippines using trademarks designed by
CPL such as SAN FRANCISCO COFFEE.

Respondent is a local corporation engaged in the wholesale and retail sale of coffee. It registered with the SEC in May
1995. It registered the business name SAN FRANCISCO COFFEE & ROASTERY, INC. with the Department of Trade and
Industry (DTI) in June 1995. Respondent had since built a customer base that included Figaro Company, Tagaytay
Highlands, Fat Willys, and other coffee companies.
In 1998, respondent formed a joint venture company with Boyd Coffee USA under the company name Boyd Coffee
Company Philippines, Inc. (BCCPI). BCCPI engaged in the processing, roasting, and wholesale selling of coffee.
Respondent later embarked on a project study of setting up coffee carts in malls and other commercial establishments
in Metro Manila.
In June 2001, respondent discovered that petitioner was about to open a coffee shop under the name SAN FRANCISCO
COFFEE in Libis, Quezon City. According to respondent, petitioners shop caused confusion in the minds of the public as
it bore a similar name and it also engaged in the business of selling coffee.
Respondent sent a letter to petitioner demanding that the latter stop using the name SAN FRANCISCO COFFEE.
Respondent also filed a complaint with the Bureau of Legal Affairs-Intellectual Property Office (BLA-IPO) for
infringement and/or unfair competition with claims for damages.
In its answer, petitioner denied the allegations in the complaint. Petitioner alleged it filed with the Intellectual Property
Office (IPO) applications for registration of the mark SAN FRANCISCO COFFEE & DEVICE for class 42 in 1999 and for
class 35 in 2000. Petitioner maintained its mark could not be confused with respondents trade name because of the
notable distinctions in their appearances. Petitioner argued respondent stopped operating under the trade name SAN
FRANCISCO COFFEE when it formed a joint venture with Boyd Coffee USA. Petitioner contended respondent did not cite
any specific acts that would lead one to believe petitioner had, through fraudulent means, passed off its mark as that
of respondent, or that it had diverted business away from respondent.
The Ruling of the Bureau of Legal Affairs-Intellectual Property Office
That petitioners trademark infringed on respondents trade name. It ruled that the right to the exclusive use of a trade
name with freedom from infringement by similarity is determined from priority of adoption. Since respondent
registered its business name with the DTI in 1995 and petitioner registered its trademark with the IPO in 2001 in the
Philippines and in 1997 in other countries, then respondent must be protected from infringement of its trade name.
That respondent did not abandon the use of its trade name as substantial evidence indicated respondent continuously
used its trade name in connection with the purpose for which it was organized. It found that although respondent was
no longer involved in blending, roasting, and distribution of coffee because of the creation of BCCPI, it continued
making plans and doing research on the retailing of coffee and the setting up of coffee carts.
The BLA-IPO 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. It held that no significant difference
resulted even with a diamond-shaped figure with a cup in the center in petitioner's trademark because greater weight
is given to words the medium consumers use in ordering coffee products.
The Ruling of the Office of the Director General- Intellectual Property Office
ODG-IPO reversed the BLA-IPO. It ruled that petitioners use of the trademark SAN FRANCISCO COFFEE did not infringe
on respondent's trade name. The ODG-IPO found that respondent had stopped using its trade name after it entered
into a joint venture with Boyd Coffee USA in 1998 while petitioner continuously used the trademark since June 2001
when it opened its first coffee shop in Libis, Quezon City. It ruled that between a subsequent user of a trade name in
good faith and a prior user who had stopped using such trade name, it would be inequitable to rule in favor of the

latter.
The Ruling of the Court of Appeals
In its 15 June 2005 Decision, the Court of Appeals set aside the 22 October 2003 decision of the ODG-IPO in so far as it
ruled that there was no infringement. It reinstated the 14 August 2002 decision of the BLA-IPO finding infringement.
The appellate court denied respondents claim for actual damages and retained the award of attorneys fees. In its 1
September 2005 Resolution, the Court of Appeals denied petitioners motion for reconsideration and respondents
motion for partial reconsideration.
The Issue
The sole issue is whether petitioners use of the trademark SAN FRANCISCO COFFEE constitutes
infringement of respondents trade name SAN FRANCISCO COFFEE & ROASTERY, INC., even if the trade
name is not registered with the Intellectual Property Office (IPO).
RULING: YES.
BLA-IPO found that respondent continued to make plans and do research on the retailing of coffee and the
establishment of coffee carts, which negates abandonment.
Coming now to the main issue, in Prosource International, Inc. v. Horphag Research Management SA,[9] this Court laid
down what constitutes infringement of an unregistered trade name, thus:
(1) The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade
name, the same need not be registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer;
(3) The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods,
business or services; or the infringing mark or trade name is applied to labels, signs, prints, packages, wrappers,
receptacles, or advertisements intended to be used upon or in connection with such goods, business, or services;
(4) The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive
purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or
the identity of such business; and
(5) It is without the consent of the trademark or trade name owner or the assignee thereof.[10] (Emphasis supplied)
Clearly, a trade name need not be registered with the IPO before an infringement suit may be filed by its owner
against the owner of an infringing trademark. All that is required is that the trade name is previously used in trade or
commerce in the Philippines.[11]
Section 22 of Republic Act No. 166,[12] as amended, required registration of a trade name as a condition for the
institution of an infringement suit, to wit:
Sec. 22. Infringement, what constitutes. Any person who shall use, without the consent of the registrant, any
reproduction, counterfeit, copy, or colorable imitation of any registered mark or trade name in connection with the
sale, offering for sale, or advertising of any goods, business or services on or in connection with which such use is
likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or
services, or identity of such business; or reproduce, counterfeit, copy, or colorably imitate any such mark or trade
name and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles, or advertisements intended to be used upon or in connection with such goods, business, or
services, shall be liable to a civil action by the registrant for any or all of the remedies herein provided. (Emphasis

supplied)
HOWEVER, RA 8293, WHICH TOOK EFFECT ON 1 JANUARY 1998, HAS DISPENSED WITH THE REGISTRATION
REQUIREMENT. SECTION 165.2 OF RA 8293 CATEGORICALLY STATES THAT TRADE NAMES SHALL BE PROTECTED, EVEN
PRIOR TO OR WITHOUT REGISTRATION WITH THE IPO, AGAINST ANY UNLAWFUL ACT INCLUDING ANY SUBSEQUENT USE
OF THE TRADE NAME BY A THIRD PARTY, WHETHER AS A TRADE NAME OR A TRADEMARK LIKELY TO MISLEAD THE
PUBLIC. THUS:
SEC. 165.2 (A) NOTWITHSTANDING ANY LAWS OR REGULATIONS PROVIDING FOR ANY OBLIGATION TO REGISTER
TRADE NAMES, SUCH NAMES SHALL BE PROTECTED, EVEN PRIOR TO OR WITHOUT REGISTRATION, AGAINST ANY
UNLAWFUL ACT COMMITTED BY THIRD PARTIES.
(B) IN PARTICULAR, ANY SUBSEQUENT USE OF A TRADE NAME BY A THIRD PARTY, WHETHER AS A TRADE NAME OR A
MARK OR COLLECTIVE MARK, OR ANY SUCH USE OF A SIMILAR TRADE NAME OR MARK, LIKELY TO MISLEAD THE
PUBLIC, SHALL BE DEEMED UNLAWFUL. (EMPHASIS SUPPLIED)
It is the likelihood of confusion that is the gravamen of infringement. But there is no absolute standard for likelihood of
confusion. Only the particular, and sometimes peculiar, circumstances of each case can determine its existence. Thus,
in infringement cases, precedents must be evaluated in the light of each particular case.
in determining similarity and likelihood of confusion, our jurisprudence has developed two tests: the dominancy test
and the holistic 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 trademark
contains the main, essential, and dominant features of another, and confusion or deception is likely to result,
infringement occurs. 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.[14]
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.[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.[16]
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. Petitioner and respondent are engaged in the
same business of selling coffee, whether wholesale or retail. The likelihood of confusion is higher in cases where the
business of one corporation is the same or substantially the same as that of another corporation. In this case, the
consuming public will likely be confused as to the source of the coffee being sold at petitioners coffee shops.
Petitioners argument that san francisco is just a proper name referring to the famous city in california and that coffee
is simply a generic term, is untenable. 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. Thus, respondents
use of its trade name from then on must be free from any infringement by similarity. Of course, this does not mean
that respondent has exclusive use of the geographic word san francisco or the generic word coffee. Geographic or
generic words are not, per se, subject to exclusive appropriation. It is only the combination of the words san francisco
coffee, which is respondents trade name in its coffee business, that is protected against infringement on matters
related to the coffee business to avoid confusing or deceiving the public.
In philips export b.v. V. Court of appeals,[17] this court held that a corporation has an exclusive right to the use of its
name. The right proceeds from the theory that it is a fraud on the corporation which has acquired a right to that name
and perhaps carried on its business thereunder, that another should attempt to use the same name, or the same name
with a slight variation in such a way as to induce persons to deal with it in the belief that they are dealing with the
corporation which has given a reputation to the name.

This court is not just a court of law, but also of equity. we cannot allow petitioner to profit by the name and reputation
so far built by respondent without running afoul of the basic demands of fair play. Not only the law but equity
considerations hold petitioner liable for infringement of respondents trade name.