UFC Philippines, Inc.

vs Fiesta Barrio Manufacturing Corporation

G.R. 198889, January 20, 2016

Facts:
On April 4, 2002, FBMC filed an application for the mark Papa Boy & Device for goods under Class 30,
specifically for lechon sauce. The Intellectual Property Office published said application for opposition in the IP Phil
e-Gazette released on September 8, 2006.

On December 11, 2006, UFC filed with the IPO-BLA a verified notice of opposition to the application alleging that:
The mark PAPA was derived from the name Neri Papa which was 1st used in 1954; Certificate of Reg of PAPA
was issued on August 14, 1983 and renewed on October 28, 2005 after it expired on August 11, 2003; PAPA
BANANA CATSUP LABEL was registered in August 11, 1983 and renewed in November 15, 2006 after its
expiration; PAPA KETSARAP was registered on August 23, 1985 and was renewed on August 23, 2005; Papa
Boy & Device is identical to PAPA which is duly registered, particularly the dominant feature; That the dominant
feature of PAPA Boy & Device, which is the PAPA of UFC, confusion and deception would result, particularly
product confusion and confusion as to its origin;

FBMC argued that there is no likelihood of confusion. It states that: there was no likelihood of confusion since
PAPAKETSARAP is limited to products covered by its registration which is class 30 for banana sauce while
Papa Boy in lechon sauce; Papa Boy is the dominant mark while the dominant feature of PAPAKETSARAP
are the words PAPA and KETSARAP and the word KETSARAP is more prominently printed and displayed
in the foreground than the word PAPA for which opposers reference to the dominancy test fails; PAPA Boy
would not damage MANG TOMAS; PAPA Boy differs in overall sound, spelling, meaning, style, configuration,
presentation, and appearance to PAPAKETSARAP; PAPA Boy is unrelated and noncompeting to
PAPAKETSARAP hence registration of marks covering un-related goods is applicable.

Case was brought to IPO-BLA which rendered in favor of UFC. An appeal was made by FBMC to IPO Director
General which dismissed it.

Petition was made to CA which reversed the decision of IPO-BLA and IPO-DG. CA stated that Papa Boy is not
confusingly similar to papaketsarap and papa banana catsup. It stated that: although the word papa is
prominent, the trademark should be taken as a whole and not piecemeal, since the difference of the marks is
noticeable and that UFCs is labeled as banana sauce, while BFMC is labeled as lechon sauce; the consumers cannot
be confused over the 2 marks, since, Barrio Fiesta was indicated clearly identifying the manufacturer of the lechon
sauce; consumers cannot be confused on the products since UFCs product is banana sauce which is clearly
physically distinguished from BFMCs product of lechon sauce; papa is a term of endearment for ones father,
hence, UFC cannot claim exclusive ownership over the term.

Hence, petition to the SC by UFC.

Issue:
WON CA erred in applying the holistic test to determine if there is confusing similarity between marks.

WON CA erred in stating that there is no likelihood of confusion between marks.

WON the expiration of PAPA and PAPA BANANA CATSUP LABEL which was expired and renewed later
than registration of PAPA Boy be a bar for the latters registration.

WON UFC can claim exclusive ownership and use of PAPA since it is a common term of endearment for ones
father.

Held:
Yes. The Court held it to be so. The Court time and time again applied the dominancy test in determining the
likelihood of confusion. It is true, since, the test of dominancy is explicitly incorporated into law in Sec. 155.1 of RA
8293. In the case at bar, since RA 8293 took effect on January 1, 1998 which is way before the issue occurred,
dominancy test would then be applied.

Yes. While the CA stated that there wouldnt likely be confusion from the consumers on buying either products, but
that only refers to product confusion. According to the SC, there are 2 types of confusion: product confusion; and
origin confusion. Product confusion refers to the likely chance that the consumer would be induced to purchase a
product believing it to be the other, while origin confusion refers to the likely chance that consumers would be
deceived that a product originated from the registrant of an earlier product.

Sec. 123 of the IP Code provides:

A mark cannot be registered of it:
d. Is identical with a registered mark belonging to a different proprietor or a marj with an earlier filing or priority
date, in respect of:
i. the same goods or services; or
ii. closely related goods or services; or
iii. if it nearly resembles such a mark as to be likely to deceive or cause confusion

A scrutiny of UFC and BFMCs marks would show that IPO-BLA and IPO-DG correctly found the word PAPA as
the dominant feature of PAPA KETSARAP. Ketsarap cannot be the dominant feature of the mark as it merely
describes the product. PAPA is also the dominant feature of PAPA BOY & DEVICE since the word PAPA is
written on top of and before the other words such that it is the 1st word that catches the eyes.

No.A certificate of registration of a mark is prima facie evidence of the validity of the registration, the registrants
ownership of the mark, and of the registrants exclusive right to use the same in connection with the goods and those
that are related thereto specified in the certificate. In the case at bar, though BFMCs mark was 1 st to file for
application on April 4, 2002 which is prior to the late file for renewal of PAPA and PAPA LABEL DESIGN
which is on 2005 and 2006 respectively. UFC however was able to secure registration for the mark PAPA
KETSARAP on August 23, 1985 and that its renewal was timely filed on August 23, 2005. Hence, PAPA
KETSARAP was still prior to PAPA BOY & DEVICE.

Yes. The Merriam-Webster dictionary defines papa simply as a persons father. A persons father has no logical
connection with catsup products, hence, PAPA is an arbitrary mark capable of being registered, as it is distinctive,
which comes from a family name that started the brand. Furthermore, what was registered was not the word papa
as defined in the dictionary, but the word papa as the last name of the original owner of the brand.