CASE 1

Phil. Refining Co. v. Ng Sam and Director of Patents G.R. No. L-26676, July 30, 1982

Facts: The petitioner Philippine Refining Co. first used'Camia' as trademark for its
products in 1922. In 1949, it caused the registration of the said trademark for its lard,
butter, cooking oil, detergents, polishing materials and soap products. In 1960, Ng Sam
filed an application for 'Camia' for its ham product (Class 47), alleging its first use in 1959.
The petitioner opposed the said application but the Patent Office allowed the registration
of Ng Sam.

Issue: Is the product of Ng Sam (Ham) and those of the petitioner so related that the use
of the trademark 'Camia' on said goods would result to confusion as to their origin?

Ruling: NO. The businesses of the parties are non-competitive and the products are so
unrelated that the use of the same trademark will not give rise to confusion nor cause
damage to the petitioner. The right to a trademark is a limited one, hence, others may use
the same mark on unrelated goods if no confusion would arise.
A trademark is designed to identify the user, hence, it should be so distinctive and
sufficiently original so as to enable those who see it to recognize instantly its source or
origin. A trademark must be affirmative and definite, significant and distinctive and
capable of indicating origin.
'Camia' as a trademark is far from being distinctive, It in itself does not identify the
petitioner as the manufacturer of producer of the goods upon which said mark is used. If
a mark is so commonplace, it is apparent that it can't identify a particular business and
he who adopted it first cannot be injured by any subsequent appropriation or imitation by
others and the public will not be deceived.
Mere classification of the goods cannot serve as the decisive factor in the resolution of
whether or not the goods a related. Emphasis should be on the similarity of products
involved and not on arbitrary classification of general description of their properties or
characteristics.
CASE 2
CONVERSE RUBBER CORPORATION and EDWARDSON MANUFACTURING
CORPORATION, plaintiffs-appellants, vs. JACINTO RUBBER & PLASTICS CO., INC.,
and ACE RUBBER & PLASTICS CORPORATION, defendants-appellants.
G.R. Nos. L-27425 & L-30505 April 28, 1980
Facts:
This is an action for unfair competition. Plaintiff Converse Rubber Corporation, is
an American Corporation, manufacturer of canvas rubber shoes under the trade name
"Converse Chuck Taylor All Star"; in the Philippines, it has an exclusive licensee, plaintiff
Edwardson Manufacturing Corporation, for the manufacture and sale in the Philippines of
its product. Plaintiff Converse is the owner of trademarks and patent, registered with
United States Patent Office, covering the words. "All Star", the representation and design
of a five-pointed star, and the design of the sole. The trademark "Chuck Taylor" was
registered by plaintiff Converse with the Philippines Patent Office on March 3, 1966. Since
1946, "Chuck Taylor" is being sold in the Philippines. It has been used exclusively by
Philippine basketball teams competing in international competitions. It is also popular
among players in various basketball leagues, like the MICAA and the NCAA, because of
its high quality and attractive style. "Chuck Taylor" currently retails at P46.00 per pair.
Defendant Jacinto Rubber & Plastics Company, Inc., a local corporation, likewise,
manufactures and sells canvas rubber shoes. It sells its product under the trade names
"Custombuilt Viscount", "Custombuilt Challenger", and "Custombuilt Jayson's". Its
trademark "Custombuilt Jayson's" was registered by the Philippines Patent Office .
In 1963, plaintiff Converse and defendant Jacinto entered into protracted
negotiations for a licensing agreement whereby defendant Jacinto would be the exclusive
license of plaintiff Converse in the Philippines for the manufacture and sale of "Chuck
Taylor" shoes but with the right to continue manufacturing and selling its own products.
One of the points taken up by parties was the design and general appearance of
"Custombuilt" shoes. Plaintiff Converse insisted on the condition that defendant Jacinto
change the design of "Custombuilt" shoes so as to give "Custombuilt" a general
appearance different from "Chuck Taylor." After an extensive discussion, defendant
Jacinto gave into to the demand of plaintiff Converse; it submitted to plaintiff Converse
for the latter's approval a sketch of a new design for "Custombuilt". This design was
accepted by plaintiff Converse. Defendant Jacinto Rubber then proposed that the
licensing agreement be made in favor of its affiliates, defendant Ace Rubber. On January
22, 1965, defendant Ace Rubber signed the licensing agreement while defendant Jacinto
Rubber and Arturo Jacinto signed the guarantee agreement to secure the performance
by defendant Ace Rubber of its obligations under the licensing agreement. However, the
licensing agreement did not materialize, because Hermogenes Jacinto refused to sign
the guarantee. Plaintiff Converse and plaintiff Edwardson then executed licensing
agreement, making plaintiff Edwardson the exclusive Philippine licensee for the
manufacture and sale of "Chuck Taylor." On June 18, 1966, plaintiffs sent a written
demand to defendants to stop manufacturing and selling "Custombuilt" shoes of Identical
appearance as "Chuck Taylor". Defendants did not reply to plaintiffs' letter. Hence, this
suit.
Issue:
Are the defendants guilty of unfair competition by giving "Custombuilt" the same
general appearance as "Chuck Taylor"?
Ruling:
Yes. We find the conclusions of the trial court to be correct in all respects. In fact,
in their brief, defendants do not contest at all the findings of the trial court insofar as
material Identity between the two kinds of shoes in question is concerned. We have
ourselves examined the exhibits in detail, particularly, the comparative pictures and other
representations if the shoes in question, and We do not hesitate in holding that he
plaintiffs complaint of unfair competition is amply justified.
From said examination, we find the shoes manufactured by defendants to contain,
as found by the trial court, practically all the features of those of the plaintiff Converse
Rubber Corporation and manufactured, sold or marketed by plaintiff Edwardson
Manufacturing Corporation, except for heir respective brands, of course. We fully agree
with the trial court that "the respective designs, shapes, the colors of the ankle patches,
the bands, the toe patch and the soles of the two products are exactly the same ... (such
that) at a distance of a few meters, it is impossible to distinguish "Custombuilt" from
"Chuck Taylor". These elements are more than sufficient to serve as basis for a charge
of unfair competition. Even if not all the details just mentioned were Identical, with the
general appearances alone of the two products, any ordinary, or even perhaps even a
not too perceptive and discriminating customer could be deceived, and, therefore,
Custombuilt could easily be passed off for Chuck Taylor. Jurisprudence supports the view
that under such circumstances, the imitator must be held liable.
It stands to reason that when the law speaks of purchasers' it generally refers to ordinary
or average purchasers.
... in cases of unfair competition, while the requisite degree of resemblance or similarity
between the names, brands, or other indicia is not capable of exact definition, it may be
stated generally that the similarity must be such, but need only be such, as is likely to
mislead purchasers of ordinary caution and prudence; or in other words, the ordinary
buyer, into the belief that the goods or wares are those, or that the name or business is
that, of another producer or tradesman. It is not necessary in either case that the
resemblance be sufficient to deceive experts, dealers, or other persons specially familiar
with the trademark or goods involved. Nor is it material that a critical inspection and
comparison would disclose differences, or that persons seeing the trademarks or articles
side by side would not be deceived (52 Am. Jur. pp. 600-601). (Brief for Plaintiffs as
Appellees, pp. 28-29, p. 71, Record.)

CASE 3
 PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G., petitioner
vs.
THE INTERMEDIATE APPELLATE COURT and MIL-ORO MANUFACTURING
CORPORATION, respondents.
G.R. No. 75067 February 26, 1988
FACTS:

 Petitioner, a foreign corporation duly organized and existing under the laws of the
Federal Republic of Germany and the manufacturer and producer of "PUMA
PRODUCTS," filed a complaint for infringement of patent or trademark against
the private respondent.
 Prior to the filing of the said civil suit, three cases were pending before the
Philippine Patent Office.
 The private respondent filed a motion to dismiss on the grounds that the
petitioners' complaint states no cause of action; petitioner has no legal
personality to sue, and litis pendentia. The record reveals that the Philippine
Patent Office rendered a decision in the Inter Partes Cases.

1st ISSUE: Whether or not petitioner had no legal capacity to sue?

RULING: The court hold that the petitioner had the legal capacity to file the action.
In the leading case of La Chemise Lacoste, S.A. v. Fernandez, (129 SCRA 373),
the court ruled: As early as 1927, this Court was, and it still is, of the view that a foreign
corporation not doing business in the Philippines needs no license to sue before
Philippine courts for infringement of trademark and unfair competition."
In relation thereto, in the case of Converse Rubber Corporation v. Universal
Rubber Products, Inc. (147 SCRA 165), the court likewise re-affirmed our adherence to
the Paris Convention: "the ruling in the aforecited case is in consonance with the
Convention of the Union of Paris for the Protection of Industrial Property to which the
Philippines became a party on September 27, 1965. Article 8 thereof provides that, 'a
trade name [corporation name] shall be protected in all the countries of the Union,
without the obligation of filing or registration, whether or not it forms part of the
trademark.'

2nd ISSUE: Whether or not the doctrine of lis pendens is applicable as a ground for
dismissing the case?

RULING: NO.
Anent the issue of lis pendens as a ground for a motion to dismiss, the petitioner
submits that the relief prayed for in its civil action is different from the relief sought in the
Inter Partes cases [before the Philippine Patent Office].
More important, however, is the fact that for lis pendens to be a valid ground for
the dismissal of a case, the other case pending between the same parties and having
the same cause must be a court action (covered by the Rules of Court).
CASE 4
Sterling Products International Inc. Vs Farbenfabriken Bayer
Facts:
Farbenfabriken Bayer is the original owner of the name and mark of BAYER, based in
Germany. It had a subsidiary company in New York- The Bayer Co. Inc. New York. The
US declared war on Germany and classified the Bayer New York as an enemy-controlled
corporation hence all its assets was sold to Sterling Drug. The trademarks BAYER and
BAYERCROSS IN CIRCLE were then registered in the Philippines by Sterling. Two
certificates of registration (for BAYER CROSS IN CIRCLE and BAYER) were issued in
favor of Sterling. Subsequently Farbenfabriken was issued a certificate of registration in
Supplement Register by the Philippine Patent Office for the trademark BAYER CROSS
IN CIRCLE for animal and plant destroying agents.

Issue:
Whether or not the plaintiff may hold on to its BAYER trademarks for medicines and
defendants may continue using the same trademarks for insecticides and other
chemicals, not medicines.

Ruling:
Yes. The plaintiff may hold on to its BAYER trademarks for medicines and the defendants
may continue using the same trademarks for insecticides and other chemicals, not
medicines. The BAYER trademarks registered in thePhilippines by Sterling are those
which cover medicines only for it was on said goods that the BAYER trademarks were
actually used in the Philippines. The certificates of registration issued by the Director of
Patents covers protection only for medicine.

Plaintiff invoked the protection of the confusion of origin rule.

The two types of confusion are:

 confusion of goods - in which event the ordinarily prudent purchaser would be induced
to purchase one product in the belief that he was purchasing the other
 confusion of business - here though the goods of the parties are different,
thedefendant's product is such as might reasonably be assumed to originate with the
plaintiff, and the public would be deceived either into that belief or into the belief that
there is some connection between the plaintiff and defendant which, in fact, does not
exist.

In Ang Tibay case, the court ruled that although two non-competing articles may be
classified under two different classes by the Patent Office because they are deemed not
to possess the same descriptive properties, they would, nevertheless, be held by the
courts to belong to the same class if the simultaneous use on them of identical or closely
similar trademarks would likely to cause confusion as to the origin, or source, of the
second user's goods.

The case at bar is not to be analogized with Ang Tibay, since the factual setting is
different. It was not plaintiff's predecessor but defendant that first introduced the medical
products into the Philippine market and household with the Bayer mark half acentury ago

Plaintiff cannot say that the present worth of its BAYER trademarks owes solely to its own
efforts; it is not insulated from the charge that as it marketed its medicines it did so with
an eye to the goodwill as to quality that defendants' predecessor had established. Plaintiff
is not the first user thereof in thePhilippines. The trademarks do not necessarily link
plaintiff with the public.

Plaintiff's BAYER trademarks for medicine cannot be delisted from the Register because
said trademarks had been registered since 1939 by plaintiff's predecessor, The Bayer
Co., Inc. Defendants' claim is stale; it suffers from the defect of non-use.

CASE 5
DEL MONTE CORPORATION V. CA, G.R. NO. L-78325, January 25, 1990
Facts: Petitioner Del Monte, an American corporation, granted Philpack the right to
manufacture, distribute and sell in the Philippines its Del Monte catsup. Petitioner’s
trademark and logo ‘Del Monte’ and its catsup bottle were subsequently registered in the
Philippines. Meanwhile respondent Sunshine Sauce, a company also engaged in the
manufacturing and sale of various kinds of sauces, registered its logo ‘Sunshine Fruit
Catsup.’ Philpack received reports that respondent was buying and recycling used Del
Monte’s bottle in junk shops to serve as container for its own catsup. Thus, petitioner and
Philpack filed a complaint for trademark infringement and unfair competition, which the
trial court dismissed. CA affirmed holding there were substantial differences between the
2 marks.

Issue: WON the general confusion made by the article upon the eye of the casual
purchaser who is unsuspicious and off his guard, is such as to likely result in his
confounding it with the original

Ruling: YES. It has been held that in making purchases, the consumer must depend upon
his recollection of the appearance of the product which he intends to purchase. The buyer
having in mind the mark/label of the respondent must rely upon his memory of the
petitioner's mark. Unlike the judge who has ample time to minutely examine the labels in
question in the comfort of his sala, the ordinary shopper does not enjoy the same
opportunity.

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.

We also note that the respondent court failed to take into consideration several factors
which should have affected its conclusion, to wit: age, training and education of the
usual purchaser, the nature and cost of the article, whether the article is bought for
immediate consumption and also the conditions under which it is usually purchased.
Among these, what essentially determines the attitude of the purchaser, specifically his
inclination to be cautious, is the cost of the goods. As a general rule, an ordinary buyer
does not exercise as much prudence in buying an article for which he pays a few
centavos as he does in purchasing a more valuable thing. Expensive and valuable
items are normally bought only after deliberate, comparative and analytical
investigation. But mass products, low priced articles in wide use, and matters of
everyday purchase requiring frequent replacement are bought by the casual consumer
without great care. In this latter category is catsup.
At that, even if the labels were analyzed together it is not difficult to see that the
Sunshine label is a colorable imitation of the Del Monte trademark. The predominant
colors used in the Del Monte label are green and red-orange, the same with Sunshine.
The word "catsup" in both bottles is printed in white and the style of the print/letter is the
same. Although the logo of Sunshine is not a tomato, the figure nevertheless
approximates that of a tomato.

It has been aptly observed that the ultimate ratio in cases of grave doubt is the rule that
as between a newcomer who by the confusion has nothing to lose and everything to
gain and one who by honest dealing has already achieved favor with the public, any
doubt should be resolved against the newcomer inasmuch as the field from which he
can select a desirable trademark to indicate the origin of his product is obviously a large
one.

CASE 6
Mirpuri vs CA, GR No. 114508, 19 November 1999, 318 SCRA 516

FACTS
 Lolita Escobar applied with the Bureau of Patents for the registration of the
trademark “Barbizon”, alleging that she had been manufacturing and selling these
products since 1970. private respondent Barbizon Corp opposed the application in IPC
No. 686. The Bureau granted the application and a certificate of registration was issued
for the trademark “Barbizon”. Escobar later assigned all her rights and interest over the
trademark to petitioner Mirpuri. In 1979, Escobar failed to file with the Bureau the Affidavit
of Use of the trademark. Due to his failure, the Bureau cancelled the certificate of
registration. Escobar reapplied and Mirpuri also applied and this application was also
opposed by private respondent in IPC No. 2049, claiming that it adopted said trademark
in 1933 and has been using it. It obtained a certificate from the US Patent Office in 1934.
Then in 1991, DTI cancelled petitioner’s registration and declared private respondent the
owner and prior user of the business name “Barbizon International”.

ISSUE
Whether or not the treaty (Paris Convention) affords protection to a foreign
corporation against a Philippine applicant for the registration of a similar trademark.

HELD
The Court held in the affirmative. RA 8293 defines trademark as any visible sign
capable of distinguishing goods. The Paris Convention is a multilateral treaty that seeks
to protect industrial property consisting of patents, utility models, industrial designs,
trademarks, service marks, trade names and indications of source or appellations of
origin, and at the same time aims to repress unfair competition. In short, foreign nationals
are to be given the same treatment in each of the member countries as that country
makes available to its own citizens. Nationals of the various member nations are thus
assured of a certain minimum of international protection of their industrial property.

CASE 7
G.R. No. 100098 December 29, 1995

EMERALD GARMENT MANUFACTURING CORPORATION, petitioner,

vs.
HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND
TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC., respondents.

Facts:
1. On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau
of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation
of Registration No. SR 5054 for the trademark "STYLISTIC MR. LEE" used on
skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts
and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner
Emerald Garment Manufacturing Corporation.
2. Private respondent averred that petitioner's trademark "so closely resembled its
own trademark, 'LEE' as previously registered and used in the Philippines cause
confusion, mistake and deception on the part of the purchasing public as to the
origin of the goods.
3. On 19 July 1988, the Director of Patents rendered a decision granting private
respondent's petition for cancellation and opposition to registration. The Director
of Patents, using the test of dominancy, declared that petitioner's trademark was
confusingly similar to private respondent's mark because "it is the word 'Lee' which
draws the attention of the buyer and leads him to conclude that the goods
originated from the same manufacturer. It is undeniably the dominant feature of
the mark.
Issue:

1. The only issue involved in this case is whether or not respondent-registrant's

trademark "STYLISTIC MR. LEE" is confusingly similar with the petitioner's
trademarks "LEE or LEERIDERS, LEE-LEENS and LEE-SURES."

Held:

No, the trademark "STYLISTIC MR. LEE" is entirely different from and not confusingly
similar to private respondent's "LEE" trademark.

Under the Trademark Law states thus:

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 imitable 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.

In determining whether colorable imitation exists, jurisprudence has developed two kinds
of tests, the Dominancy Test and the Holistic.

As its title implies, the test of dominancy focuses on the similarity of the prevalent features
of the competing trademarks which might cause confusion or deception and thus
constitutes infringement.

In this case, Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its
label the word "LEE" is prominent, the trademark should be considered as a whole and
not piecemeal. The dissimilarities between the two marks become conspicuous,
noticeable and substantial enough to matter especially in the light of the following
variables that must be factored in.

First, the products involved in the case at bar are, in the main, various kinds of jeans.
Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed
to be more cautious and discriminating in and would prefer to mull over his purchase.
Confusion and deception, then, is less likely.

Second, the average Filipino consumer generally buys his jeans by brand. He does not
ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an
Armani. He is, therefore, more or less knowledgeable and familiar with his preference and
will not easily be distracted.

Finally, more credit should be given to the "ordinary purchaser." Cast in this particular
controversy, the ordinary purchaser is not the "completely unwary consumer" but is the
"ordinarily intelligent buyer" considering the type of product involved.

There is no cause for the Court of Appeal's apprehension that petitioner's products might
be mistaken as "another variation or line of garments under private respondent's 'LEE'
trademark". As one would readily observe, private respondent's variation follows a
standard format "LEERIDERS," "LEESURES" and "LEELEENS." It is, therefore,
improbable that the public would immediately and naturally conclude that petitioner's
"STYLISTIC MR. LEE" is but another variation under private respondent's "LEE" mark.

Taking into account these unique factors, we conclude that the similarities in the
trademarks in question are not sufficient as to likely cause deception and confusion
tantamount to infringement.

CASE 8
Gabriel-Almoradie v. CA (G.R. No. 91385)
Fatcs:
Petitioner’s claim
Perez filed a complaint for unfair competition with injunctions and damages, dated
August 8, 1961 docketed as Civil case No. 2422, against Gabriel. In the said
complained, Perez alleged that Gabriel, without just cause and in violation of the terms
of the distributorship agreement, stopped selling and distributing “WONDER” soap. And
instead on October 3, 1960 Gabriel tried to register the trademark “WONDER” in her
name.

Respondents Claim
On October 19, 1962, Gabriel in Inter Partes case No. 280, filed a Petition to cancel
certificate of registration No. SR-389 covering the trademark “WONDER” for beauty
soap in the name of Dr. Perez. Gabriel claims that the exclusive ownership of the
trademark “WONDER” is vested in her by virtue of her agreement with Perez.
Petitioner now comes to us arguing that our decision in the case of Gabriel v. Perez
supra, has become Funcus Officio on account of the prior registration of the trademark
“WONDER” by Go Hay and its subsequent assignment to petitioner’s predecessors
and that the cancellation of respondent’s trademark rendered the Civil Case No. c-8147
moot and academic.

Issue: WON the decision in the case of Gabriel v.Perez, become functus officio?

Held: In the interest of the public and for the expeditious administration of justice the
issue on infringement shall be resolved by the court considering that this case has
dragged on for years and has gone from one forum to another.

It is rule of procedure leaving no root or branch to bear the seeds of future litigation.
No useful purpose will be served if the case or the determination of an issue in a case is
remanded to the trial court only to have its decision raised again to the Court of Appeals
and from the rule to the Supreme Court. We laid down the rule that the remand of the
case or of an issue to the lower court for further reception of evidence is not necessary
where the court is in position to resolve the dispute based on the records before it and
particularly where the ends of justice would not be subserved by the remand thereof.
Moreover, the Supreme Court us clothed with ample authority to review matters, even
though those not raised on appeal if it finds that their consideration is necessary in
arriving at the just disposition of the case.

CASE 9
AMERICAN WIRE & CABLE COMPANY V. DIRECTOR OF PATENTS (G.R.
NO. L-26557)
Facts:
Respondent Central Banahaw Industries applied for the registration of its trademark
‘Dynaflex’ to be used in electric wires. Petitioner American Wire, authorized user of the
mark ‘Duraflex’ placed also on electric wires, opposed on the ground that the registration
of the mark would cause confusion or result in mistake to purchasers intending to buy
their products. The Director of Patents gave due course to the application holding that the
two marks were not similar.

Issue:
Whether or not the two trademarks are confusingly similar.

Ruling: YES.
Earlier rulings of the Court seem to indicate its reliance on the dominancy test or the
assessment of the essential or dominant features in the competing labels to determine
whether they are confusingly similar.
The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is
apparent. Not only are the initial letters and the last half of the appellations identical, but
the difference exists only in two out of the eight literal elements of the designations.
Coupled with the fact that both marks cover insulated flexible wires under class 20; that
both products are contained in boxes of the same material, color, shape and size; that
the dominant elements of the front designs are a red circle and a diagonal zigzag
commonly related to a spark or flash of electricity; that the back of both boxes show similar
circles of broken lines with arrows at the center pointing outward, with the identical legend
“Cut Out Ring” “Draw From Inside Circle”, no difficulty is experienced in reaching the
conclusion that there is a deceptive similarity that would lead the purchaser to confuse
one product with the other.
*Relying on the doctrine enunciated in the Etepha case and the earlier ruling in Lim Hoa
vs. Director of Patents, applicant-appellee contends that the DYNAFLEX mark would not
confuse or deceive the buyers and subscribers of the DURAFLEX brand, because
electrical wires are of great value and the purchasers thereof are generally
intelligent — the architects, engineers and building contractors. It must be realized,
however, that except perhaps in big constructions, the designing architect or engineer, or
the contractor who will undertake the work of building, does not himself purchase or place
the order for the purchase of the materials to be used therein. The task is oftentimes
delegated to another. Nor are said technical men the ones personally laying down the
wiring system in the building that they could possibly check on whether or not the correct
wires are being used. So that even if the engineer or contractor will specify in the bill of
materials the particular brand of wires needed, there is no certainty that the desired
product will be acquired. For, unlike the pharmacists or druggists, the dispensers of
hardware or electrical supplies are not generally known to pay as much concern to the
brand of articles asked for by the customer and of a person who knows the name of the
brand but is not acquainted with it is appearance, the likelihood of the DYNAFLEX product
being mistaken for DURAFLEX is not remote. (JBL Reyes’ wisdom)
CASE 10
R. F. & J. ALEXANDER & CO., LTD., and KER & Co., LTD., petitioner,
vs.
JOSE ANG
Facts: A sewing thread named "Aurora," "Mayflower" and "Agatonica" with labels and in
boxes, which in color design and general aspect closely resembled those of the thread
"Alexander" manufactured in Scotland by R. F. & J. Alexander Co., Ltd., and distributed
in the Philippines by Ker & Co. Ltd., for the last 50 years.

The defendants, denying the similarity, and disclaiming any intention to deceive the public
or defraud the plaintiffs, set up two specific defenses: (1) they were sellers — not
manufacturers; (2) the trade names "Aurora" et al. had been duly registered.

Issue: whether or not there is no unfair competition when a product is sold under a
registered trademark.

Held: Yes. There is unfair competition even when a product is under registered trademark.
Section 29 of Republic Act No. 166 makes guilty of unfair competition — among others
— "any person, who in selling his goods shall give them the general appearance of goods
of another manufacturer or dealer, either as to the goods themselves or in the wrapping
the packages in which they are contained, or the devices or words thereon, or in any other
feature of their appearance, which would be likely to influence purchasers to believe that
the goods offered are those of a manufacturer or dealer other than the actual
manufacturer or dealer, or who otherwise clothes the goods with such appearance as
shall deceive the public and defraud another of his legitimate trade. In cases of unfair
competition, while the requisite degree of resemblance or similarity between the names,
brands, or other indicia is not capable of exact definition, it may be stated generally that
the similarity must be such, but need only be such, as is likely to mislead purchasers of
ordinary caution and prudence, or in other words, the ordinary buyer, into the belief that
the goods or wares are those, or that the name or business is that, of another producer
or tradesman. It is not necessary in either case that the resemblance be sufficient to
deceive experts, dealers, or other persons specially familiar with the trademark or goods
involved. Nor is it. material that a critical inspection and comparison would disclose
differences, or that persons seeing the trademarks or articles side by side would not be
deceived. The defendants' labels and boxes have the general appearance of plaintiffs'
and are likely to induce ordinary purchasers to buy them as "Alexander." The plaintiffs
would thereby be deprived of a portion of their legitimate trade and deceptive
devices.Unfair competition there was obviously.

CASE 11
Lim Hoa vs.Director of Patents
Facts: On April 26, 1949, the Petitioner, Lim Hoa, filed with the Patent Office an
application for the registration of a trademark, consisting of a representation of two midget
roosters in an attitude of combat with the word “Bantam” printed above them, he claiming
that he had used said trademark on a food seasoning product since April 25 of that year.
The application was published in the Official Gazette in its issue of February, 1953,
released for circulation on April 18, of the same year. On April 30, 1953, the Agricom
Development Co., Inc., a domestic corporation, opposed the application on several
grounds, among others, that the trademark sought to be registered was confusingly
similar to its register mark, consisting of a pictorial representation of a hen with the words
“Hen Brand” and “Marca Manok”, which mark or brand was also used on a food seasoning
product, before the use of the trademark by the applicant.

Issue: Whether the use of the marks involved would be likely to cause confusion or
mistakes in the mind of the public or deceive purchasers.

Ruling: Yes. In the case of Go Tiong Sa vs. Director of Patents, (95 Phil., 1), we had
occasion to say the following:chanroblesvirtuallawlibrary
“ It has been consistently held that the question of infringement of a trademark is to be
determined by the test of dominancy. Similarity in size, form, and color, while relevant, is
not conclusive. If the competing trademark contains the main or essential or dominant
features of another, and confusion and deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor it is necessary that the infringing label
should suggest an effort to imitate. (C. Neilman Brewing Co. vs. Independent Brewing
Co., 191 F. 489, 495, citing Eagle White Lead Co. v. Pflugh (CC) 180 Fed. 579)
The herein product is generally purchased by cooks and household help, sometimes
illiterate who are guided by pictorial representations and the sound of the word descriptive
of said representation. The two roosters appearing in the trademark of the applicant and
the hen appearing on the trademark of the Oppositor, although of different sexes, belong
to the same family of chicken, known as manok in all the principal dialects of the
Philippines, and when a cook or a household help or even a housewife buys a food
seasoning product for the kitchen the brand of “Manok” or “Marca Manok” would most
likely be upper most in her mind and would influence her in selecting the product,
regardless of whether the brand pictures a hen or a rooster or two roosters. To her, they
are all manok. Therein lies the confusion, even deception.
We do not see why applicant could not have stretched his imagination even a little and
extended his choice to other members of the animal kingdom, as a brand to differentiate
his product from similar products in the market.
CASE 12
SCARVES BY VERA, INC., Plaintiff-Appellant,v.TODO IMPORTS LTD. (INC.),
Defendant-Appellee. No. 769, Docket 75-7529.
Facts:
 Plaintiff Scarves by Vera, Inc. is a well-known and highly successful fashion
designer. Plaintiff designs and manufactures a line of women's signature scarves,
medium-high fashion women's sportswear, and a variety of dining room, bedroom and
bathroom linens. Defendant Todo Imports Ltd. is a New York corporation which, since
1970, has been the exclusive distributor in New York of certain cosmetics and toiletries
manufactured by Vera Perfumeria y Cosmetica, S.A. of Barcelona, Spain (Vera, S.A.).
Plaintiff commenced this action for trademark infringement and unfair competition
under the Lanham Act of 1946, 15 U.S.C. § 1051 et seq., and under state law. In its
complaint, plaintiff alleged its ownership of the registered trademark "VERA" on scarves,
women's sportswear, and a large variety of linens. Plaintiff claimed that the defendant
had infringed its trademark by using the mark "VERA" on cosmetics and toiletries
manufactured in Spain by Vera, S.A. and distributed in the United States by the
defendant. Plaintiff sought injunctive relief, damages and an accounting. Vera, S.A. was
not named as a defendant and has not sought to intervene in this action.
Issue:
1. WON plaintiff is entitled to protection of its trademark "VERA" against
defendant's use of the name on cosmetics, perfumes and toiletries?

2. WON defendant's use of the mark "VERA" infringed plaintiff's trademark?

Ruling:
1. Yes. The trademark laws protect three interests which are present here: first,
the senior user's interest in being able to enter a related field at some future
time; second, his interest in protecting the good reputation associated with his
mark from the possibility of being tarnished by inferior merchandise of the junior
user; and third, the public's interest in not being misled by confusingly similar
marks a factor which may weigh in the senior user's favor where the defendant
has not developed the mark himself.

2. Yes. As the district court pointed out, a trademark owner's right to relief where
the products are non-competitive depends upon a number of variables
including the strength of his mark; the degree of similarity between the two
marks; the proximity of the products; the likelihood that the prior owner will
bridge the gap; actual confusion; the defendant's good faith in adopting his
mark; the quality of defendant's product and the sophistication of the buyers.

Plaintiff's "VERA" trademark clearly is a strong mark. Plaintiff's sales

figures, its advertising expenditures and the many articles written about plaintiff
clearly established that plaintiff's "VERA" trademark was highly successful and
widely recognized in the medium-high fashion market. Our conclusion that
 "VERA" is a strong mark is not affected by the fact that Vera is a common name.
We need not decide whether such a name might provide a weaker mark in
other circumstances, since we think plaintiff has clearly established secondary
meaning entitling it to broad protection of the "VERA" mark. (Alfred Dunhill of
London, Inc. v. Kasser Distillers Products Corp., supra, 350 F.Supp. at 1358-
60.) Moreover, even when the mark in question is the name of the junior user,
his right to use the name on his products may be limited, and he may be
compelled to add some distinguishing words to reduce the possibility of
confusion. S. C. Johnson & Son, Inc. v. Johnson, supra, 116 F.2d at 428-29.

CASE 13
ESSO STANDARD EASTERN, INC., petitioner,
vs.
THE HONORABLE COURT OF APPEALS ** and UNITED CIGARETTE
CORPORATION, respondents.
 G.R. No. L-29971; August 31, 1982

FACTS:
 Petitioner Esso Standard Eastern, Inc., then a foreign corporation duly licensed
to do business in the Philippines, is engaged in the sale of petroleum products
which are Identified with its trademark ESSO
 Private respondent in turn, is a domestic corporation then engaged in the
manufacture and sale of cigarettes, after it acquired the business, factory and
patent rights- one of the rights thus acquired having been the use of the
trademark ESSO on its cigarettes, for which a permit had been duly granted by
the Bureau of Internal Revenue.
 Petitioner asserted that the continued use by private respondent of the same
trademark ESSO on its cigarettes was being carried out for the purpose of
deceiving the public as to its quality and origin to the detriment and disadvantage
of its own products.

ISSUE: Whether or not private respondent is liable for trade infringement, for using
petitioner's trademark ESSO?
RULING: No.
According to the court, “the goods are obviously different from each other with
"absolutely no iota of similitude" They are so foreign to each other as to make it unlikely
that purchasers would think that petitioner is the manufacturer of respondent's 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 unrelated articles
of a different kind.
Although petitioner's products are numerous, they are of the same class or line of
merchandise which are non-competing with respondent's product of cigarettes, which as
pointed out in the appealed judgment is beyond petitioner's "zone of potential or natural
and logical expansion". When a trademark is used by a party for a product in which the
other party does not deal, the use of the same trademark on the latter's product cannot
be validly objected to.
Another factor that shows that the goods involved are non-competitive and non-
related is the appellate court's finding that they flow through different channels of trade,
thus: The (petitioner's) products are distributed principally through gasoline service and
lubrication stations, automotive shops and hardware stores. On the other hand, the
(respondent's) cigarettes are sold in sari-sari stores, grocery stores, and other small
distributor outlets. (Respondent's) cigarettes are even peddled in the streets while
(petitioner's) 'gasul' burners are not. Finally, there is a marked distinction between oil
and tobacco, as well as between petroleum and cigarettes. Evidently, in kind and nature
the products of (respondent) and of (petitioner) are poles apart."

CASE 14
CHUA CHE vs. PHILIPPINE PATENT OFFICE and SY TUO

Facts:
Chua Che presented with the Philippines Patent Office a petition for the registration in his
favor the trade name of "X-7". Director of Patents denied the application upon the
oppostion of respondent Sy Tuo. Sy Tuo claims that he owns the trademark and had been
using it since 1951 as mark for perfume, lipstick and nail polish. The Director of Patents
held that the products of the parties, while specifically different, are products intended for
use in the home and usually have common purchasers. Furthermore, the use of X-7 for
laundry soap is a natural expansion of business of Sy Tou.

Issue:
Whether or not allowing Chua Che to register the same mark for laundry soap would likely
to cause confusion on the purchasers of X-7products by SY Tou

Ruling:
Yes. Registration of a trademark should be refused in cases where there is a likelihood
of confusion, mistake or deception, even though the goods fall into different categories.
The products of appellee are common household items in the same manner as laundry
soap. The likelihood of purchasers to associate these products to a common origin is not
far-fetched. From the standpoint of priority of use and for the protection of the buying
public and appellee's rights to the trademark "X-7", it becomes manifest that the
registration of said trademark in favor of applicant-appellant should be denied.

CASE 15
HICKOK MANUFACTURING CO., INC. vs. COURT OF APPEALS, G.R. No. L-44707
August 31, 1982
Facts: Petitioner Hickok Manufacturing Co, Inc. is a foreign corporation which registered
the trademark for its adverse articles of leather wallets, key cases, money folds made of
leather, belts, men’s briefs, neckties, handkerchiefs, and men’s socks. On the other hand,
Lim Bun Liong (respondent) is registrant of a trademark of the same Hickok for its
Marikina shoes. Hickok filed a petition to cancel the respondent’s registration of the
trademark. The Director of Patent granted the petition of Hickok, but on appeal the Court
of Appeals reversed the director’s decision and dismissed Hickok’s original petition for
cancellation on the ground that the trademarks of petitioner and that of the registrant were
different in design and coloring of, as well as in the words on the ribbons. Hence, this
present appeal.

Issue: WON the registration of Lim Bun Liong’s trademeark for his Hickok Marikina shoes
allowed

Ruling: Yes. While the law does not require that the competing trademarks be identical,
the two marks must be considered in their entirety, as they appear in the respective labels,
in relation to the goods to which they are attached. Thus, there must be not only
resemblance between the trademark of the plaintiff and that of the defendant, but also
similarity of the goods to which the two trademarks are respectively attached.

Since in this case the trademark of petitioner-appellee is used in the sale of leather
wallets, key cases, money folds made of leather, belts, men's briefs, neckties,
handkerchiefs and men's socks, and the trademark of registrant-appellant is used in the
sale of shoes, which have different channels of trade, the Director of Patents, as in the
case of Acoje Mining Co., Inc. vs. Director of Patents, supra, 'ought to have reached a
different conclusion.

It is established doctrine, as held in cited cases, that "emphasis should be on the similarity
of the products involved and not on the arbitrary classification or general description of
their properties or characteristics" and that "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 unrelated articles of a different kind." Taking into account the facts
of record that petitioner, a foreign corporation registered the trademark for its diverse
articles of men's wear such as wallets, belts and men's briefs which are all manufactured
here in the Philippines by a licensee Quality House, Inc. but are so labelled as to give the
misimpression that the said goods are of foreign (stateside) manufacture and that
respondent secured its trademark registration exclusively for shoes (which neither
petitioner nor the licensee ever manufactured or traded in) and which are clearly labelled
in block letters as "Made in Marikina, Rizal, Philippines," no error can be attributed to the
appellate court in upholding respondent's registration of the same trademark for his
unrelated and non-competing product of Marikina shoes.
CASE 16
Faberge v IAC Digest

G.R. No. 71189, November 4, 1992

Facts of the Case:
Co Beng Kay applied for the registration of the trademark 'BRUTE' to be used it its
underwear (briefs) products. The petitioner opposed on the ground that there is similarity
with their own symbol (BRUT, Brut33 & Device) used on its aftershave, deodorant, cream
shave, hairspray and hair shampoo/soaps and that it would cause injury to their business
reputation. It must be noted that the petitioner never applied for registration of said
trademark for its brief products. The Patent Office allowed Co Beng Kay the registration
and this was further affirmed by the Court of Appeals.
Issue: Is there confusing similarity between the challenged marks and that its use would
likely cause confusion on the part of the purchasers?
HELD: NONE. Co Beng Kay may rightly appropriate the mark. In this case Sec. 20
(Philippine Intellectual Property Law) is controlling. The certificate of registration issued
confers the exclusive right to use its own symbol only to those goods specified by the first
user in the certificate, subject to any conditions or limitations stated therein. Moreover,
the two products are so dissimilar that a purchaser of one (a brief) would not be misled
or mistaken into buying the other (such as an aftershave).

CASE 17
G.R. No. L-21915 December 17, 1966
THE GEORGE W. LUFT COMPANY INC., petitioner, vs.
NGO GUAN and DIRECTOR OF PATENTS, respondents.
Facts:
 1. Petitioner, George W. Luft Co., Inc. — a foreign corporation organized under the
laws of the State of New York — is the owner of the trademark "Tangee", which it
has allegedly used since February 28, 1928, and is covered by Certificate of
Registration No. 2178-S of the Philippine Patent Office, dated February 21, 1950.
2. On January 22, 1959, Ngo Guan applied for the registration of the trademark
"Tango", which he claims to have used since June, 1958. Petitioner objected
thereto alleging that "Tango" is likely to be mistaken for "Tangee", upon the ground
that the two trademarks are confusingly similar.
3. After appropriate proceedings the Director of Patents rendered a decision
overruling said opposition and granting Ngo Guan's application.
4. Petitioner brought the matter before this Court for a review of said decision.
Petitioner, which has the burden of proving its contention, has not, however, done
so.

Issue:

The only issue for our determination is whether or not the "Tango" trademark is
confusingly similar with the "Tangee" trademark, as contended by petitioner herein, as to
be likely to be mistaken for the latter by the unsuspecting public.

Held:

To begin with, one of the factors essential therefor is whether or not there is a general
similarity in the appearance of the trademarks in question, which can not be determined
with reasonable certainty without a physical examination and comparison thereof.

Petitioner has rendered such examination impossible, by not introducing any evidence
whatsoever as to the appearance of the "Tangee" trademark. What is more, such
omission suggests that its appearance is not analogous to that of respondent's "Tango",
for, otherwise, petitioner would not have failed to present a sample of its trademark, for
comparison with that of respondent Ngo Guan.

Moreover, "Tango" is used by Ngo Guan for no other product than hair pomade, in which
petitioner does not deal. Upon the other hand, petitioner's trademark is used for specified
chemicals, medical and pharmaceutical preparations — namely: "lipstick, creme rouge,
compact rouge, cleansing cream, day cream, night cream, massage cream, face lotion,
astringent, face powder, powder compacts, cosmetics for lashes, brows, and hair, hair
pencils, nail polish, perfumes, and toilet waters — and it is not claimed that Ngo Guan
uses or intends to use its "Tango" trademark on articles of this kind. Thus, there is no
confusion between the two trademark.

CASE 18
Corporation v. Daway

G.R. No. 157216 November 20, 2003

Lessons Applicable: Jurisdiction of Trial court, special affirmative defences on
infringement

Laws Applicable:
FACTS:
• Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and
Crown Device, filed against 246 Corporation the instant suit for trademark infringement
and damages with prayer for the issuance of a restraining order or writ of preliminary
injunctionbefore the RTC of QC
o July 1996: 246 adopted and , since then, has been using without authority the mark
“Rolex” in its business name “Rolex Music Lounge” as well as in its newspaper
advertisements as “Rolex Music Lounge, KTV, Disco & Party Club.”
• 246 answered special affirmative defences: no confusion would arise from the use
by petitioner of the mark “Rolex” considering that its entertainment business is totally
unrelated to the items catered by respondents such as watches, clocks, bracelets and
parts thereof
• RTC: quashed the subpoena ad testificandum and denied petitioner’s motion for
preliminary hearing on affirmative defenses with motion to dismiss
• CA: affirmed

ISSUE: W/N RTC performed a grave abuse of discretion

HELD: NO. petition denied. RTC affirmed

• The issue of whether or not a trademark infringement exists, is a question of fact that
could best be determined by the trial court.
• Section 123.1(f) of the Intellectual Property Code (Republic Act No. 8293)
o (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark
considered well-known in accordance with the preceding paragraph, which is registered
in the Philippines with respect to goods or services which are not similar to those with
respect to which registration is applied for: Provided, That use of the mark in relation to
those goods or services would indicate a connection between those goods or services,
and the owner of the registered mark: Provided, further, That the interest of the owner of
the registered mark are likely to be damaged by such use
• Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely
unrelated to respondents’ business involving watches, clocks, bracelets, etc. However,
the Court cannot yet resolve the merits of the present controversy considering that the
requisites for the application of Section 123.1(f), which constitute the kernel issue at bar,
clearly require determination facts of which need to be resolved at the trial court. The
existence or absence of these requisites should be addressed in a full blown hearing
and not on a mere preliminary hearing. The respondent must be given ample
opportunity to prove its claim, and the petitioner to debunk the same.
CASE19

FRUIT OF THE LOOM, INC. v. COURT OF APPEALS and GENERAL GARMENTS

CORPORATION. G.R. No. L-32747. November 29, 1984
FACTS:

Petitioner is a corporation who owns the trademark Fruit of the Loom wherein the
business is the selling of underwear.

Respondent is a domestic corporation who owns the trademark Fruit for Eve whose
business is similar to petitioners.

Petitioner filed before the lower a complaint for trademark infringement and unfair
competition against respondent citing that their names and hang tags are confusingly
similar and is a colorable imitation.

The trial court held in favor of petitioner. Respondent then appealed to the CA wherein
the decision was reversed. The CA held that the word Fruit is a generic word, thus is not
capable of exclusive appropriation and that petitioner is not entitled to the exclusive use
of every word in their trademark.

ISSUE: Whether there is trademark infringement.

RULING:

No. The SC stated that the there is no confusing similarity which would deceive buyers.
The SC declared that the word Fruit in both goods is not enough to show that buyers will
get confused over such. It was not the dominant feature of both products.

In relation to the hang tags, the SC did find similarities but the differences were more
glaring and striking, The similarities of the competing trademarks in this case are
completely lost in the substantial differences in the design and general appearance of
their respective hang tags

CASE 20

Co Tiong Sa vs Director

Co Tiong Sa has been producing T-shirts since March 1947 and he had been using the
brand “Freedom” which has been designed and imprinted on the shirts he was
manufacturing. He applied his trademark to be registered but the application was opposed
by Saw Woo Chiong who alleged that “Freedom” is an infringement of Saw Woo Chiong’s
trademark “Freeman” which is also being used in his T-Shirt business and was a
registered trademark since 1938. The Director of Patents noted that there are differences
between the designs but each trademark gives the same general impression and are
confusingly similar and so he ruled against the application of Co Tiong Sa as he further
ruled that if Co Tiong Sa’s application is approved and, if it would not result to confusion
or deception, Saw Woo Chiong would nevertheless be damaged.
ISSUE: Whether or not the Director of Patents is correct.
HELD: Yes. There is no question that if the details of the two trademarks are to be
considered, many differences would be noted that would enable a careful and scrutinizing
eye to distinguish one trademark from the other. But differences of variations in the details
of one trademark and of another are not the legally accepted tests of similarity in
trademarks. It has been consistently held that the question of infringement of a trademark
is to be determined by the test of dominancy. Similarity in size, form, and color, while
relevant, is not conclusive. If the competing trademark contains the main or essential or
dominant features of another, and confusion and deception is likely to result, infringement
takes place. The question at issue in cases of infringement of trademarks is whether the
use of the marks involved would be likely to cause confusion or mistake in the mind of the
public or to deceive purchasers – this is the universal test applicable. In the case at bar,
the dominant characteristic of Saw Woo Chiong’s trademark “Freeman” has been imitated
by Co Tiong Sa’s “Freedom” such as to confuse the unwary customers and to deceive
them into believing that the articles bearing one label are similar.

CASE 21
PHILIPPINE NUT INDUSTRY, INC. vs. STANDARD BRANDS INCORPORATED and
TIBURCIO S. EVALLE as Director of Patents
G.R. No. L-23035 July 31, 1975
Facts: Philippine Nut Industry Inc., a domestic corporation, obtained from the Patent
Office on August 10, 1961, a certificate covering the trademark "PHILIPPINE
PLANTERS CORDIAL PEANUTS," the label used on its product of salted peanuts.
On May 14, 1962, Standard Brands, a foreign corporation, filed a case with the Director
of Patent, asking for the cancellation of Philippine Nut's certificate of registration on the
ground that "the registrant was not entitled to register the mark at the time of its
application for registration thereof" for the reason that it (Standard Brands) is the owner
of the trademark "PLANTERS COCKTAIL PEANUTS" covered by Certificate of
Registration No. SR-172, issued by the Patent Office on July 28, 1958.

Thereafter, the Philippine Nut filed its answer invoking the special defense that its
registered label is not confusingly similar to that of Standard Brands as the latter
alleges.

Respondent Director of Patents gave due course to Standard Brand's petition, ordering
the cancellation of Philippine Nut's Certificate of Registration.

Upon denial of the motion for reconsideration, the Philippine Nut petitioned for a review,
seeking the reversal of the Director of Patents’ decision.

Issue: Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS"

used by Philippine Nut on its label for salted peanuts with the same coloring scheme
and the same lay-out of words, confusingly similar to the trademark "PLANTERS
COCKTAIL PEANUTS" used by Standard Brands on its product.

Ruling: Yes. As to appearance and general impression of the two trademarks, the
Supreme Court said it found a very confusing similarity.

The word PLANTERS printed across the upper portion of the label in bold letters easily
attracts and catches the eye of the ordinary consumer and it is that word and none other
that sticks in his mind when he thinks of salted peanuts.

The Supreme Court also held that although it is true that no producer or manufacturer
may have a monopoly of any color scheme or form of words in a label, but when a
competitor adopts a distinctive or dominant mark or feature of another's trademark and
with it makes use of the same color ensemble, employs similar words written in a style,
type and size of lettering almost identical with those found in the other trademark, the
intent to pass to the public his product as that of the other is quite obvious. It deceives
the public.

Hence, the decision of respondent Director of Patents was affirmed.

CASE 22
ANDRES ROMERO, petitioner, vs. MAIDEN FORM BRASSIERE CO., INC., and THE
DIRECTOR OF PATENTS, respondents. G.R. No. L-18289 March 31, 1964
Facts:
 Respondent company, a foreign corporation, filed with respondent Director of
Patents an application for registration (pursuant to Republic Act No. 166) of the trademark
"Adagio" for the brassieres manufactured by it. In its application, respondent company
alleged that said trademark was first used by it in the United States and in the Philippine;
that it had been continuously used by it in trade in, or with the Philippines for over 10
years; that said trademark "is on the date of this application, actually used by respondent
company on the following goods, classified according to the official classification of goods
(Rule 82) - Brassieres, Class 40"; and that said trademark is applied or affixed by
respondent to the goods by placing thereon a woven label on which the trademark is
shown.
Acting on said application, respondent Director approved for publication in the
Official Gazette said trademark of respondent company, in accordance with Section 7 of
Republic Act No. 166 (Trademark Law), having found, inter alia, that said trademark is "a
fanciful and arbitrary use of a foreign word adopted by applicant as a trademark for its
product; that it is neither a surname nor a geographical term, nor any that comes within
the purview of Section 4 of Republic Act No. 166; and that the mark as used by
respondent company convincingly shows that it identifies and distinguishes respondent
company's goods from others." Respondent Director issued to respondent company a
certificate of registration of with, trademark "Adagio".
Petitioner filed with respondent Director a petition for cancellation of said
trademark, on the grounds that it is a common descriptive name of an article or substance
on which the patent has expired; that its registration was obtained fraudulently or contrary
to the provisions of Section 4, Chapter II of Republic Act No. 166; and that the application
for its registration was not filed in accordance with the provisions of Section 37, Chapter
XI of the same Act. Petitioner also alleged that said trademark has not become distinctive
of respondent company's goods or business; that it has been used by respondent
company to classify the goods (the brassieres) manufactured by it, in the same manner
as petitioner uses the same; that said trademark has been used by petitioner for almost
6 years; that it has become a common descriptive name; and that it is not registered in
accordance with the requirements of Section 37(a), Chapter XI of Republic Act No. 166.

Issue:
1. WON the trademark "Adagio" has become a common descriptive name of a
particular style of brassiere and is, therefore, unregistrable?
2. WON Respondent Director erred in registering the trademark in question,
despite appellee's non-compliance with Section 37, paragraphs 1 and 4 (a) of
Republic Act No. 166?
 3. WON the registration of the trademark in question was fraudulent or contrary
Section 4 of Republic Act No. 166?

Ruling:
1. This claim is without basis in fact. The evidence shows that the trademark
"Adagio" is a musical term, which means slowly or in an easy manner, and was
used as a trademark by the owners thereof (the Rosenthals of Maiden Form
Co., New York) because they are musically inclined. Being a musical term, it is
used in an arbitrary (fanciful) sense as a trademark for brassieres
manufactured by respondent company. It also appears that respondent
company has, likewise, adopted other musical terms such as "Etude" (Exh. W-
2), "Chansonette" (Exh. W-3), "Prelude" (Exh. W-4), "Over-ture" (Exh. W-6),
and "Concerto" (Exh. V), to identify, as a trademark, the different styles or types
of its brassieres. As respondent Director pointed out, "the fact that said mark is
used also to designate a particular style of brassiere, does not affect its
registrability as a trademark" (Kiekhaefer Corp. v. Willys-Overland Motors, Inc.,
111 USPQ 105).1äwphï1.ñët

It is not true that respondent company did not object to the use of said
trademark by petitioner and other local brassiere manufacturers. The records
show that respondent company's agent, Mr. Schwartz, warned the Valleson
Department Store to desist from the sale of the "Adagio" Royal Form brassieres
manufactured by petitioner, and even placed an advertisement (Exhs. 3 & 4) in
the local newspapers (Manila Daily Bulletin, Manila Times, Fookien Times, and
others) warning the public against unlawful use of said trademark. The
advertisement (Exh. U) in the Manila Times made by respondent company on
February 9, 1958, was brought to petitioner's attention, which must have
prompted him to file this present petition for cancellation, on February 26, 1958.
On the other hand, respondent company's long and continuous use of the
trademark "Adagio" has not rendered it merely descriptive of the product. In
Winthrop Chemical Co. v. Blackman (268 NYS 653), it was held that
widespread dissemination does not justify the defendants in the use of the
trademark.

2. This contention flows from a misconception of the application for registration of

trademark of respondent. As we see it, respondent's application was filed under
the provisions of Section 2 of Republic Act No. 166 as amended by Section 1
of Republic Act 865 which reads as follows:
 "SEC. 2. What are registrable — Trademarks, ... own by persons, corporations,
partnerships or associations domiciled ... in any foreign country may be
registered in accordance with the provisions of this Act: Provided, That said
trademarks, trade-names, or service marks are actually in use in commerce
and services not less than two months in the Philippines before the time the
applications for registration are filed: ..."

Section 37 of Republic Act No. 166 can be availed of only where the Philippines
is a party to an international convention or treaty relating to trademarks, in
which the trade-mark sought to be registered need not be use in the
Philippines. The applicability of Section 37 has been commented on by the
Director of Patents, in this wise:

Trademark rights in the Philippines, without actual use the trademark in this
country can, of course, be created artificially by means of a treaty or convention
with another country or countries. Section 37 of the present Philippine
Trademark Law, Republic Act No. 166 (incorporated as Rule 82 in the Rules of
Practice for Registration of Trademarks) envisions the eventual entrance of the
Philippines into such convention treaty. It is provided in said section that
applications filed thereunder need not allege use in the Philippines of the trade
mark sought to be registered. The Philippines has, however not yet entered
into any such treaty or convention and, until she does, actual use in the
Philippines of the trademark sought to be registered and allegation in the
application of such fact, will be required in all applications for original or renewal
registration submitted to the Philippine Patent Office. (Circular Release No. 8.)

3. There is no evidence to show that the registration of the trademark "Adagio"

was obtained fraudulently by appellee. The evidence record shows, on the
other hand, that the trademark "Adagio" was first exclusively in the Philippines
by a appellee in the year 1932. There being no evidence of use of the mark by
others before 1932, or that appellee abandoned use thereof, the registration of
the mark was made in accordance with the Trademark Law. Granting that
appellant used the mark when appellee stopped using it during the period of
time that the Government imposed restrictions on importation of respondent's
brassiere bearing the trademark, such temporary non-use did not affect the
rights of appellee because it was occasioned by government restrictions and
was not permanent, intentional, and voluntary.

To work an abandonment, the disuse must be permanent and not

ephemeral; it must be intentional and voluntary, and not involuntary or even
 compulsory. There must be a thorough-going discontinuance of any trade-mark
use of the mark in question (Callman, Unfair Competition and Trademark, 2nd
Ed., p. 1341). The use of the trademark by other manufacturers did not indicate
an intention on the part of appellee to abandon it.

"The instances of the use by others of the term 'Budweiser, cited by the
defendant, fail, even when liberally construed, to indicate an intention upon the
part of the complainant to abandon its rights to that name. 'To establish the
defense of abandonment, it is necessary to show not only acts indicating a
practical abandonment, but an actual intention to abandon. Saxlehner v.
Eisener & Mendelson Co., 179 U.S. 19, 21 S. Ct. 7 (45 L. Ed. 60). (Anheuser-
Busch, Inc. v. Budweiser Malt Products Corp., 287 F. 245.)

CASE 23
KING-SEELEY THERMOS CO., plaintiff-appellee,
vs.
ALADDIN INDUSTRIES, INCORPORATED, defendant-appellant.
FACTS:
In 1907 King-Seeley Thermos Co. (petitioner) began marketing a vacuum-
insulated liquid container under the name “Thermos”. In the early 1960s, Aladdin
Industries, Inc. (defendant) began marketing a container with the name “thermos” in it.
Petitioner brought an action seeking to enjoin use of the name. The district court,
finding that most of the public had come to associate the word “thermos” as a generic
description of a vacuum liquid containers, decline to enjoin its use. The court’s order
merely mandated that defendant not try to pass off its thermos, as the original thermos.
King-Seeley appealed.

ISSUE: Is a trademark that acquires a generic meaning enforceable?

RULING: NO.
A trademark that acquires a generic meaning is no longer enforceable (rule of
law).
With respect to trademarks, the ultimate question is what the public understands
when a word is used. If the public understands that word to mean a particular brand of a
product, that word is a valid trademark. If the public, on the other hand, believes the
word to describe the type of product it represents, then the name is generic and the
trademark may not be enforced. That is true no matter what steps a manufacturer may
have taken to avoid this result. Once a trademark is appropriated by the public, it is no
longer a trademark.
Here, the district court found the word “thermos” to have acquired a generic
meaning, and this is supported by the record.

[Analysis: The rule stated above presents an innovative party with the danger of
becoming a victim of its own success. If a party manages to get the public to
identify a product with its own brand, the brand name may lose its
distinctiveness. History abounds with brand names that eventually became
generic. Examples include “aspirin” and “cellophane”. ]

CASE 24
MASSO HERMANOS vs Director of Patents

Facts:
Masso Hermanos is the registered owner of the trademark composed of the word
"Cosmopolite" used on canned fish. Said trademark was first registered and the certificate
of registration was issued on March 16, 1917 for a period of thirty years. On June 14,
1948, Masso Hermanos, applied for a new certificate of registration of said trademark but
the trademark examiner denied the petition on the ground that the word "Cosmopolite",
as a trademark for canned fish is descriptive of said goods, therefore is not entitled to
registration. The Director of Patents affirmed the ruling of the trademark examiner.

Issue:
Is the word "Cosmopolite" descriptive?

Ruling:
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. It is a very general
term which does not give the kind or quality of the goods. For example, a dealer in shoes
cannot register a trademark "Leather Shoes" because that would be descriptive and it
would be right to use the same words with reference to their merchandise. Therefore the
registration of the trademark "Cosmopolite" is valid and subsisting and the Director of
Bureau of Patents should not reverse the former officer in charge of trademark
registration, which has been accepted and in force since 1917 up to the present.

CASE 25
G.R. No. L-28554 February 28, 1983
UNNO COMMERCIAL ENTERPRISES, INCORPORATED,
petitioner,vs.
GENERAL MILLING CORPORATION and TIBURCIO S. EVALLE, in his capacity
asDirector of Patents,
respondents.
FACTS : The Court affirms respondent Director of Patent's decision declaring
respondentGeneral Milling Corporation as the prior user of the trademark "All Montana"
on wheat flour inthe Philippines and ordering the cancellation of the certificate of
registration for the sametrademark previously issued in favor of petitioner Unno
Commercial Enterprises,Incorporated, it appearing that Unno Commercial Enterprises,
Inc. merely acted as exclusivedistributor of All Montana wheat flour in the Philippines.
Only the owner of a trademark, tradename or service mark may apply for its registration
and an importer, broker, indentor or distributor acquires no rights to the trademark of the
goods he is dealing with in the absenceof a valid transfer or assignment of the trade
mark.On December 11, 1962, respondent General Milling Corporation filed an
application for theregistration of the trademark "All Montana" to be used in the sale of
wheat flour. In view of the fact that the same trademark was previously, registered in
favor of petitioner UnnoCommercial Enterprises, Inc.. Respondent General Milling
Corporation, in its application for registration, alleged that it started using the trademark
"All Montana" on August 31, 1955 andsubsequently was licensed to use the same by
Centennial Mills, Inc. by virtue of a deed of assignment executed on September 20,
1962. On the other hand petitioner UnnoCommercial Enterprises, Inc. argued that the
same trademark had been registered in itsfavor on March 8, 1962 asserting that it
started using the trademark on June 30, 1956, asindentor or broker for S.H.
Huang Bros. & Co., a local firm.The Director of Patents, after hearing, ruled in favor of
respondent General MillingCorporation. and rendered its decision as follows:ISSUE :
Whether or not director of patents can issue cancellation of the certification
of registration?HELD : The Court finds without merit petitioner's argument that the
Director of Patents couldnot order the cancellation of' its certificate of registration in an
interference proceeding andthat the question of whether or not a certificate of
registration is to be cancelled should havebeen brought in cancellation proceedings.
Under Rule 178 of the Rules of the Patent Officein Trademark Cases,
the Director of Patents is expressly authorized to order thecancellation of a registered
mark or trade name or name or other mark of ownership in aninter partes case, such as
the interference proceeding at bar.The right to register trademark is based on
ownership.
When the applicant is not the owner of the trademark being applied for, he has no right
to apply for the registration of the same.
Under the Trademark Law only the owner of the trademark, trade name or service mark
usedto distinguish his goods, business or service from the goods, business or service of
others isentitled to register the same.
The term owner does not include the importer of the goods bearing the trademark,
tradename, service mark, or other mark of ownership, unless such importer is actually
the owner thereof in the country from which the goods are imported. A local importer,
however, may

make application for the registration of a foreign trademark, trade name or service mark
if heis duly authorized by the actual owner of the name or other mark of ownership.
Thus, petitioner's contention that it is the owner of the mark "All Montana" because of
itscertificate of registration issued by the Director of Patents, must fail, since ownership
of atrademark is not acquired by the mere fact of registration alone.
Registration merely createsa
prima facie
presumption of the validity of the registration, of the registrant's ownership of the
trademark and of the exclusive right to the use thereof.
Registration does not perfect atrademark right.
As conceded itself by petitioner, evidence may be presented to overcomethe
presumption. Prior use by one will controvert a claim of legal appropriation,
bysubsequent users. In the case at bar, the Director of Patents found that "ample
evidence waspresented in the record that Centennial Mills, Inc. was the owner and prior
user in thePhilippines of the trademark 'All Montana' through a local importer and
broker. Use of atrademark by a mere importer, indentor or exporter (the Senior Party
herein) inures to thebenefit of the foreign manufacturer whose goods are Identified by
the trademark. The Junior Party has hereby established a continuous chain of title and,
consequently, prior adoptionand use" and ruled that "based on the facts established, it
is safe to conclude that the Junior Party has satisfactorily discharged the burden of
proving priority of adoption and use and isentitled to registration." It is well-settled that
we are precluded from making further inquiry,since the findings of fact of the Director of
Patents in the absence of any showing that therewas grave abuse of discretion is
binding on us
and the findings of facts by the Director of Patents are deemed conclusive in the
Supreme Court provided that they are supported bysubstantial evidence.

Petitioner has failed to show that the findings of fact of the Director of Patents are not
substantially supported by evidence nor that any grave abuse of discretionwas
committed.

CASE 26
Conrad and Company, Inc. v. CA, et.al., G.R. No. 115115, July 18, 1995
Crim Pro - Jurisdiction

Facts:

The respondents Fitrite, Inc. and its sister company, Victoria Biscuit Co., Inc. are
domestic corporations engaged in the business of manufacturing, selling and distributing
biscuits and cookies. Their products bear the trademark "SUNSHINE" in the Philippines
which was awarded by the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) listing Fitrite as principal registrant.

Since May 20, 1983 when Fitrite was issued the Certificate of Registration for its
trademark to the filing of its complaint against Conrad Company Inc., Fitrite and Victoria
Biscuit have been manufacturing, selling and distributing on a massive scale biscuits and
cookies bearing the "Sunshine" trademark making it popular in Metro Manila and in the
provinces.

On May 30, 1990, Conrad's own Import Manager and Executive Assistant, Raul
Olaya, executed an affidavit stating that Conrad had also been importing, selling and
distributing biscuits and cookies, and other items bearing the same trademark as Fitrite
and Victoria's. It was traced by the mentioned domestic corporations that on April 18,
1988, Conrad was designated as an exclusive importer and dealer of the products of
"Sunshine Biscuits, Inc." for sale in the Philippine market.

A few days later, Conrad started its first importation and continuously did so.
Through their counsel, Fitrite and Victoria addressed a letter to Conrad demanding that it
cease and desist from continuing its operation and use of the subject trademark, but was
ignored. This led Fitrite and Victoria to file a complaint against Conrad for infringement
and unfair competition. Conrad sought to dismiss the complaint by invoking litis
pendentia, the doctrine of primary jurisdiction, and failure to state a cause of action.
Conrad argued that it has been granted distributorship by Sunshine Biscuits USA over
the Philippine territory, and so, it follows that the basis of Fitrite and Victoria's claim is
lodged under the exclusive jurisdiction of the BPTTT. The trial court found merit on the
motion to dismiss the complaint.

Fitrite and Victoria filed a motion for reconsideration, but was denied by the lower
court. The Court of Appeals, however, found merit on their claims and reinstated the
complaint. Hence, this petition by Conrad praying that the Civil Case for "Injunction with
Damages with Prayer for Preliminary Injunction" based on infringement and unfair
competition filed by Fitrite and Victoria be dismissed.

Issue: Whether or not Fitrite and Victoria’s civil action against Conrad which was based
on infringement and unfair competition be dismissed because of the doctrine of litis
pendentia.
Held: No, the petition is without merit.

An application for administrative cancellation of a registered trademark on any of the

grounds enumerated in Section 17 of R.A. No. 166 or the Trade-Mark Law, as amended,
falls under the exclusive jurisdiction of BPTTT. But, for infringement or unfair competition,
as well as the remedy of injunction and relief for damages, it is explicitly and
unquestionably within the competence and jurisdiction of ordinary courts. As held in an
earlier decision by the Supreme Court, that the registration in the Principal Register gives
rise to a presumption of validity of the registration and of the registrant's ownership and
right to the exclusive use of the mark. Such registration can serve as the basis for an
action of infringement which entitles the registrant whose right was invaded for court
protection and relief.

Section 23 and Section 27 of Chapter V, of the Trade-Mark Law provides:

Sec. 23. Actions, and damages and injunction for infringement. — Any person entitled to
the exclusive use of a registered mark or trade-name may recover damages in a civil
action from any person who infringes his rights, and the measure of the damages suffered
shall be either the reasonable profit which the complaining party would have made, had
the defendant not infringe his said rights, or the profit which the defendant actually made
out of the infringement, or in the event such measure of damages cannot be readily
ascertained with reasonable certainty, then the court may award as damages a
reasonable percentage based upon the amount of gross sales of the defendant or the
value of the services in connection with which the mark or trade-name was used in the
infringement of the rights of the complaining party. In cases where actual intent to mislead
the public or to defraud the complaining party shall be shown, in the discretion of the
court, the damages may be doubled.

The complaining party, upon proper showing, may also be granted injunction.

CASE 27

G.R. No. L-75420 November 15, 1991

KABUSHI KAISHA ISETAN, petitioner, vs.

THE INTERMEDIATE APPELLATE COURT, THE DIRECTOR OF PATENTS, and
ISETANN DEPARTMENT STORE, INC., respondents.
FACTS: Petitioner Kabushi Kaisha Isetan is a foreign corporation organized and
existing under the laws of Japan. It is the owner of the trademark "Isetan" and the
"Young Leaves Design".

The petitioner alleges that it first used the trademark Isetan on November 5, 1936. The
petitioner claims to have expanded its line of business internationally from 1936 to
1974.

On October 3, 1983, the petitioner applied for the registration of "Isetan" and "Young
Leaves Design" with the Philippine Patent Office under Permanent Serial Nos. 52422
and 52423 respectively.

Private respondent, Isetann Department Store, on the other hand, is a domestic

corporation organized and existing under the laws of the Philippines. On May 30, 1980
and May 20, 1980, the private respondent registered "Isetann Department Store, Inc."
and Isetann and Flower Design in the Philippine Patent Office.

On November 28, 1980, the petitioner filed with the Phil. Patent Office two (2) petitions
for the cancellation of Certificates of Supplemental Registration of the respondent
stating that except for the additional letter "N" in the word "Isetan", the mark registered
by the registrant is exactly the same as the trademark ISETAN owned by the petitioner
and that the young leaves registered by the registrant is exactly the same as the young
leaves design owned by the petitioner.

Meanwhile, the petitioner also filed with the Securities and Exchange Commission
(SEC) a petition to cancel the mark "ISETAN" as part of the registered corporate name
of Isetann Department Store, Inc. On May 17, 1985, this petition was denied in a
decision rendered by SEC's Hearing Officer, Atty. Joaquin C. Garaygay.

On appeal, the Commission reversed the decision of the Hearing Officer on February
25, 1986. It directed the private respondent to amend its Articles of Incorporation within
30 days from finality of the decision.

On April 15, 1986, however, respondent Isetann Department Store filed a motion for
reconsideration. And on September 10, 1987, the Commission reversed its earlier
decision dated February 25, 1986 thereby affirming the decision rendered by the
Hearing Officer on May 17, 1985. The Commission stated that since the petitioner's
trademark and tradename have never been used in commerce on the petitioner's
products marketed in the Philippines, the trademark or tradename have not acquired a
reputation and goodwill deserving of protection from usurpation by local competitors.

This SEC decision which denied and dismissed the petition to cancel was submitted to
the Director of Patents as part of the evidence for the private respondent.
On January 24, 1986, the Director of Patents after notice and hearing rendered a joint
decision in Inter Partes Cases Nos. 1460 and 1461, this Office is constrained to hold
that the herein Petitioner has not successfully made out a case of cancellation.

On February 21, 1986, Isetan Company Limited moved for the reconsideration of said
decision but the motion was denied on April 2, 1986. From this adverse decision of the
Director of Patents, the petitioner appealed to the Intermediate Appellate Court (now
Court of Appeals).

On June 2, 1986, the IAC dismissed the appeal on the ground that it was filed out of
time.

ISSUE:

1. Whether or not the appeal is filed on time.

2. Whether or not petitioner may be afforded protection of its trade name.

HELD:

There is no dispute and the petitioner does not question the fact that the appeal was
filed out of time.Not only was the appeal filed late in the Court of Appeals, the petition
for review was also filed late with us. In common parlance, the petitioner's case is "twice
dead" and may no longer be reviewed.

The decision sought to be appealed is one rendered by the Philippine Patent Office, a
quasi-judicial body. Consequently, under Section 23(c) of the Interim Rules of Court, the
appeal shall be governed by the provisions of Republic Act No. 5434, which provides in
its Section 2;

Sec. 2. Appeals to Court of Appeals. - Appeals to the Court of Appeals shall be

filed within fifteen (15) days from notice of the ruling, award, order, decision or
judgment or from the date of its last publication, if publication is required by law
for its effectivity; or in case a motion for reconsideration is filed within that period
of fifteen (15) days, then within ten (10) days from notice or publication, when
required by law, of the resolution denying the motion for reconsideration. No
more than one motion for reconsideration shall be allowed any party. If no appeal
is filed within the periods here fixed, the ruling, award, order, decision or
judgment shall become final and may be executed as provided by existing law.

Attention is invited to that portion of Section 2 which states that in case a motion
for reconsideration is filed, an appeal should be filed within ten (10) days from
notice of the resolution denying the motion for reconsideration.

The decision of the Patent Office has long become final and executory. So has the
Court of Appeal decision.
Regarding the petitioner's claims of substantial justice which led us to give due course,
we decline to disturb the rulings of the Patent Office and the Court of Appeals.

A fundamental principle of Philippine Trademark Law is that actual use in commerce in

the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a
tradename.

The trademark Law, Republic Act No. 166, as amended, under which this case heard
and decided provides:

SEC. 2. What are registrable.- Trademark, tradenames and service marks owned
by persons, corporation, partnerships or associations domiciled in the Philippines
and by persons, corporations, partnerships or associations domicided in any
foreign country may be registered in accordance with the provisions of this Act:
Provided, That said trademarks, tradenames, or service marks are actually in use
in commerce and services not less than two months in the Philippines before the
time the applications for registration are filed: And provided, further, That the
country of which the applicant for registration is a citizen grants by law
substantially similar privileges to citizens of the Philippines, and such fact is
officially certified, with a certified true copy of the foreign law translated into the
English language, by the government of the foreign country to the Government of
the Republic of the Philippines. (As amended by R.A. No. 865).

SEC. 2-A. Ownership of trademarks, tradenames and service marks; how

acquired. - Anyone who lawfully produces or deals in merchandise of any kind or
who engages in any lawful business, or who renders any lawful service in
commerce, by actual use thereof in manufacture or trade, in business, and in the
service rendered, may appropriate to his exclusive use a trademark, a
tradename, or a service mark not so appropriated by another, to distinguish his
merchandise, business or service from the merchandise, business or service of
others. The ownership or possession of a trademark, tradename, service mark,
heretofore or hereafter appropriated, as in this section provided, shall be
recognized and protected in the same manner and to the same extent as are
other property rights known to the law. (As amended by R.A. No. 638)"

These provisions have been interpreted in Sterling Products International, Inc. v.

Farbenfabriken Bayer Actiengesellschaft (27 SCRA 1214 [1969]) in this way:

A rule widely accepted and firmly entrenched because it has come down through
the years is that actual use in commerce or business is a prerequisite to the
acquisition of the right of ownership over a trademark.

In fact, a prior registrant cannot claim exclusive use of the trademark unless it uses it in
commerce.
The records show that the petitioner has never conducted any business in the
Philippines. It has never promoted its tradename or trademark in the Philippines. It has
absolutely no business goodwill in the Philippines. It is unknown to Filipinos except the
very few who may have noticed it while travelling abroad. It has never paid a single
centavo of tax to the Philippine government. Under the law, it has no right to the remedy
it seeks.