G.R. No. 148222 August 15, 2003 between plastic sheets and illuminated with back lights.
uminated with back lights. Instead, in a letter dated January 14, 1986, SMI’s house
PEARL & DEAN (PHIL.),
INCORPORATED, Petitioner,
vs.
SHOEMART, INCORPORATED, and NORTH
EDSA MARKETING,
INCORPORATED, Respondents.
DECISION
CORONA, J.:
In the instant petition for review on certiorari under
Rule 45 of the Rules of Court, petitioner Pearl & Dean
(Phil.) Inc. (P & D) assails the May 22, 2001
decision1 of the Court of Appeals reversing the October
31, 1996 decision2 of the Regional Trial Court of
Makati, Branch 133, in Civil Case No. 92-516 which
declared private respondents Shoemart Inc. (SMI) and
North Edsa Marketing Inc. (NEMI) liable for
infringement of trademark and copyright, and unfair
competition.
FACTUAL ANTECEDENTS
The May 22, 2001 decision of the Court of
Appeals3 contained a summary of this dispute:
"Plaintiff-appellant Pearl and Dean (Phil.), Inc. is a
corporation engaged in the manufacture of advertising
display units simply referred to as light boxes. These
units utilize specially printed posters sandwiched
Pearl and Dean was able to secure a Certificate of
Copyright Registration dated January 20, 1981 over
these illuminated display units. The advertising light
boxes were marketed under the trademark "Poster
Ads". The application for registration of the trademark
was filed with the Bureau of Patents, Trademarks and
Technology Transfer on June 20, 1983, but was
approved only on September 12, 1988, per Registration
No. 41165. From 1981 to about 1988, Pearl and Dean
employed the services of Metro Industrial Services to
manufacture its advertising displays.
Sometime in 1985, Pearl and Dean negotiated with
defendant-appellant Shoemart, Inc. (SMI) for the lease
and installation of the light boxes in SM City North
Edsa. Since SM City North Edsa was under
construction at that time, SMI offered as an alternative,
SM Makati and SM Cubao, to which Pearl and Dean
agreed. On September 11, 1985, Pearl and Dean’s
General Manager, Rodolfo Vergara, submitted for
signature the contracts covering SM Cubao and SM
Makati to SMI’s Advertising Promotions and Publicity
Division Manager, Ramonlito Abano. Only the contract
for SM Makati, however, was returned signed. On
October 4, 1985, Vergara wrote Abano inquiring about
the other contract and reminding him that their
agreement for installation of light boxes was not only
for its SM Makati branch, but also for SM Cubao. SMI
did not bother to reply.
counsel informed Pearl and Dean that it was rescinding
the contract for SM Makati due to non-performance of
the terms thereof. In his reply dated February 17, 1986,
Vergara protested the unilateral action of SMI, saying it
was without basis. In the same letter, he pushed for the
signing of the contract for SM Cubao.
Two years later, Metro Industrial Services, the
company formerly contracted by Pearl and Dean to
fabricate its display units, offered to construct light
boxes for Shoemart’s chain of stores. SMI approved the
proposal and ten (10) light boxes were subsequently
fabricated by Metro Industrial for SMI. After its
contract with Metro Industrial was terminated, SMI
engaged the services of EYD Rainbow Advertising
Corporation to make the light boxes. Some 300 units
were fabricated in 1991. These were delivered on a
staggered basis and installed at SM Megamall and SM
City.
Sometime in 1989, Pearl and Dean, received reports
that exact copies of its light boxes were installed at SM
City and in the fastfood section of SM Cubao. Upon
investigation, Pearl and Dean found out that aside from
the two (2) reported SM branches, light boxes similar
to those it manufactures were also installed in two (2)
other SM stores. It further discovered that defendant-
appellant North Edsa Marketing Inc. (NEMI), through
its marketing arm, Prime Spots Marketing Services,
was set up primarily to sell advertising space in lighted
display units located in SMI’s different branches. Pearl
and Dean noted that NEMI is a sister company of SMI.
In the light of its discoveries, Pearl and Dean sent a
letter dated December 11, 1991 to both SMI and NEMI
enjoining them to cease using the subject light boxes
and to remove the same from SMI’s establishments. It
also demanded the discontinued use of the trademark
"Poster Ads," and the payment to Pearl and Dean of
compensatory damages in the amount of Twenty
Million Pesos (P20,000,000.00).
Upon receipt of the demand letter, SMI suspended the
leasing of two hundred twenty-four (224) light boxes
and NEMI took down its advertisements for "Poster
Ads" from the lighted display units in SMI’s stores.
Claiming that both SMI and NEMI failed to meet all its
demands, Pearl and Dean filed this instant case for
infringement of trademark and copyright, unfair
competition and damages.
In denying the charges hurled against it, SMI
maintained that it independently developed its poster
panels using commonly known techniques and
available technology, without notice of or reference to
Pearl and Dean’s copyright. SMI noted that the
registration of the mark "Poster Ads" was only for
stationeries such as letterheads, envelopes, and the like.
Besides, according to SMI, the word "Poster Ads" is a
generic term which cannot be appropriated as a
trademark, and, as such, registration of such mark is
invalid. It also stressed that Pearl and Dean is not
entitled to the reliefs prayed for in its complaint since (a) actual damages -
its advertising display units contained no copyright ₱16,600,000.00,
notice, in violation of Section 27 of P.D. 49. SMI representing profits
alleged that Pearl and Dean had no cause of action derived by defendants
against it and that the suit was purely intended to as a result of infringe-
malign SMI’s good name. On this basis, SMI, aside ment of plaintiff’s copyright
from praying for the dismissal of the case, also from 1991 to 1992
counterclaimed for moral, actual and exemplary
damages and for the cancellation of Pearl and Dean’s (b) moral damages - ₱1,000.000.00
Certification of Copyright Registration No. PD-R-2558
dated January 20, 1981 and Certificate of Trademark (c) exemplary damages -
Registration No. 4165 dated September 12, 1988. ₱1,000,000.00
NEMI, for its part, denied having manufactured, (d) attorney’s fees - ₱1,000,000.00
installed or used any advertising display units, nor
plus
having engaged in the business of advertising. It
repleaded SMI’s averments, admissions and denials
(e) costs of suit;
and prayed for similar reliefs and counterclaims as
SMI."
(2) to deliver, under oath, for impounding in
the National Library, all light boxes of SMI
The RTC of Makati City decided in favor of P & D:
which were fabricated by Metro Industrial
Services and EYD Rainbow Advertising
Wherefore, defendants SMI and NEMI are found
Corporation;
jointly and severally liable for infringement of
copyright under Section 2 of PD 49, as amended, and
(3) to deliver, under oath, to the National
infringement of trademark under Section 22 of RA No.
Library, all filler-posters using the trademark
166, as amended, and are hereby penalized under
"Poster Ads", for destruction; and
Section 28 of PD 49, as amended, and Sections 23 and
24 of RA 166, as amended. Accordingly, defendants
(4) to permanently refrain from infringing the
are hereby directed:
copyright on plaintiff’s light boxes and its
trademark "Poster Ads".
(1) to pay plaintiff the following damages:
Defendants’ counterclaims are hereby ordered
dismissed for lack of merit.
SO ORDERED.4
On appeal, however, the Court of Appeals reversed the
trial court:
Since the light boxes cannot, by any stretch of the
imagination, be considered as either prints, pictorial
illustrations, advertising copies, labels, tags or box
wraps, to be properly classified as a copyrightable class
"O" work, we have to agree with SMI when it posited
that what was copyrighted were the technical drawings
only, and not the light boxes themselves, thus:
42. When a drawing is technical and depicts a
utilitarian object, a copyright over the drawings like
plaintiff-appellant’s will not extend to the actual object.
It has so been held under jurisprudence, of which the
leading case isBaker vs. Selden (101 U.S. 841 (1879).
In that case, Selden had obtained a copyright protection
for a book entitled "Selden’s Condensed Ledger or
Bookkeeping Simplified" which purported to explain a
new system of bookkeeping. Included as part of the
book were blank forms and illustrations consisting of
ruled lines and headings, specially designed for use in
connection with the system explained in the work.
These forms showed the entire operation of a day or a
week or a month on a single page, or on two pages
following each other. The defendant Baker then
produced forms which were similar to the forms
illustrated in Selden’s copyrighted books. The Court In two other cases, Imperial Homes Corp. v. Lamont,
held that exclusivity to the actual forms is not extended 458 F. 2d 895 and Scholtz Homes, Inc. v. Maddox, 379
by a copyright. The reason was that "to grant a F. 2d 84, it was held that there is no copyright
monopoly in the underlying art when no examination of infringement when one who, without being authorized,
its novelty has ever been made would be a surprise and uses a copyrighted architectural plan to construct a
a fraud upon the public; that is the province of letters structure. This is because the copyright does not extend
patent, not of copyright." And that is precisely the to the structures themselves.
point. No doubt aware that its alleged original design
In fine, we cannot find SMI liable for infringing Pearl
would never pass the rigorous examination of a patent
and Dean’s copyright over the technical drawings of
application, plaintiff-appellant fought to foist a
the latter’s advertising display units.
fraudulent monopoly on the public by conveniently
resorting to a copyright registration which merely
xxx xxx xxx
employs a recordal system without the benefit of an in-
depth examination of novelty.
The Supreme Court trenchantly held in Faberge,
The principle in Baker vs. Selden was likewise applied Incorporated vs. Intermediate Appellate Court that the
protective mantle of the Trademark Law extends only
in Muller vs. Triborough Bridge Authority [43 F. Supp.
to the goods used by the first user as specified in the
298 (S.D.N.Y. 1942)]. In this case, Muller had obtained
certificate of registration, following the clear mandate
a copyright over an unpublished drawing entitled
conveyed by Section 20 of Republic Act 166, as
"Bridge Approach – the drawing showed a novel bridge
amended, otherwise known as the Trademark Law,
approach to unsnarl traffic congestion". The defendant
which reads:
constructed a bridge approach which was alleged to be
an infringement of the new design illustrated in
SEC. 20. Certification of registration prima facie
plaintiff’s drawings. In this case it was held that
evidence of validity.- A certificate of registration of a
protection of the drawing does not extend to the
mark or trade-name shall be prima facie evidence of
unauthorized duplication of the object drawn because
the validity of the registration, the registrant’s
copyright extends only to the description or expression
ownership of the mark or trade-name, and of the
of the object and not to the object itself. It does not
registrant’s exclusive right to use the same in
prevent one from using the drawings to construct the
connection with the goods, business or
object portrayed in the drawing.
servicesspecified in the certificate, subject to any
conditions and limitations stated therein."
(underscoring supplied)
The records show that on June 20, 1983, Pearl and
Dean applied for the registration of the trademark
"Poster Ads" with the Bureau of Patents, Trademarks,
and Technology Transfer. Said trademark was recorded
in the Principal Register on September 12, 1988 under
Registration No. 41165 covering the following
products: stationeries such as letterheads, envelopes
and calling cards and newsletters.
With this as factual backdrop, we see no legal basis to
the finding of liability on the part of the defendants-
appellants for their use of the words "Poster Ads", in
the advertising display units in suit. Jurisprudence has
interpreted Section 20 of the Trademark Law as "an
implicit permission to a manufacturer to venture into
the production of goods and allow that producer to
appropriate the brand name of the senior registrant on
goods other than those stated in the certificate of
registration." The Supreme Court further emphasized
the restrictive meaning of Section 20 when it stated,
through Justice Conrado V. Sanchez, that:
Really, if the certificate of registration were to be
deemed as including goods not specified therein, then a
situation may arise whereby an applicant may be
tempted to register a trademark on any and all goods
which his mind may conceive even if he had never
intended to use the trademark for the said goods. We
believe that such omnibus registration is not
contemplated by our Trademark Law.
While we do not discount the striking similarity
between Pearl and Dean’s registered trademark and
defendants-appellants’ "Poster Ads" design, as well as
the parallel use by which said words were used in the
parties’ respective advertising copies, we cannot find
defendants-appellants liable for infringement of
trademark. "Poster Ads" was registered by Pearl and
Dean for specific use in its stationeries, in contrast to
defendants-appellants who used the same words in their
advertising display units. Why Pearl and Dean limited
the use of its trademark to stationeries is simply beyond
us. But, having already done so, it must stand by the
consequence of the registration which it had caused.
xxx xxx xxx
We are constrained to adopt the view of defendants-
appellants that the words "Poster Ads" are a simple
contraction of the generic term poster advertising. In
the absence of any convincing proof that "Poster Ads"
has acquired a secondary meaning in this jurisdiction,
we find that Pearl and Dean’s exclusive right to the use
of "Poster Ads" is limited to what is written in its
certificate of registration, namely, stationeries.
Defendants-appellants cannot thus be held liable for
infringement of the trademark "Poster Ads".
There being no finding of either copyright or trademark
infringement on the part of SMI and NEMI, the
monetary award granted by the lower court to Pearl and
Dean has no leg to stand on.
xxx xxx xxx
WHEREFORE, premises considered, the assailed
decision is REVERSED and SET ASIDE, and another
is rendered DISMISSING the complaint and
counterclaims in the above-entitled case for lack of
merit.5
Dissatisfied with the above decision, petitioner P & D
filed the instant petition assigning the following errors
for the Court’s consideration:
A. THE HONORABLE COURT OF
APPEALS ERRED IN RULING THAT NO
COPYRIGHT INFRINGEMENT WAS
COMMITTED BY RESPONDENTS SM
AND NEMI;
B. THE HONORABLE COURT OF
APPEALS ERRED IN RULING THAT NO
INFRINGEMENT OF PEARL & DEAN’S
TRADEMARK "POSTER ADS" WAS
COMMITTED BY RESPONDENTS SM
AND NEMI;
C. THE HONORABLE COURT OF
APPEALS ERRED IN DISMISSING THE
 AWARD OF THE TRIAL COURT,
DESPITE THE LATTER’S FINDING, NOT
DISPUTED BY THE HONORABLE
COURT OF APPEALS, THAT SM WAS
GUILTY OF BAD FAITH IN ITS
NEGOTIATION OF ADVERTISING
CONTRACTS WITH PEARL & DEAN.
D. THE HONORABLE COURT OF
APPEALS ERRED IN NOT HOLDING
RESPONDENTS SM AND NEMI LIABLE
TO PEARL & DEAN FOR ACTUAL,
MORAL & EXEMPLARY DAMAGES,
ATTORNEY’S FEES AND COSTS OF
SUIT.6
ISSUES
In resolving this very interesting case, we are
challenged once again to put into proper perspective
four main concerns of intellectual property law —
patents, copyrights, trademarks and unfair competition
arising from infringement of any of the first three. We
shall focus then on the following issues:
(1) if the engineering or technical drawings
of an advertising display unit (light box) are
granted copyright protection (copyright
certificate of registration) by the National
Library, is the light box depicted in such
engineering drawings ipso facto also
protected by such copyright?
(2) or should the light box be registered
separately and protected by a patent issued by
the Bureau of Patents Trademarks and
Technology Transfer (now Intellectual
Property Office) — in addition to the
copyright of the engineering drawings?
(3) can the owner of a registered trademark
legally prevent others from using such
trademark if it is a mere abbreviation of a
term descriptive of his goods, services or
business?
ON THE ISSUE OF COPYRIGHT INFRINGEMENT
Petitioner P & D’s complaint was that SMI infringed
on its copyright over the light boxes when SMI had the
units manufactured by Metro and EYD Rainbow
Advertising for its own account. Obviously, petitioner’s
position was premised on its belief that its copyright
over the engineering drawings extended ipso facto to
the light boxes depicted or illustrated in said drawings.
In ruling that there was no copyright infringement, the
Court of Appeals held that the copyright was limited to
the drawings alone and not to the light box itself. We
agree with the appellate court.
First, petitioner’s application for a copyright certificate
— as well as Copyright Certificate No. PD-R2588
issued by the National Library on January 20, 1981 —
clearly stated that it was for a class "O" work under
Section 2 (O) of PD 49 (The Intellectual Property
Decree) which was the statute then prevailing. Said
Section 2 expressly enumerated the works subject to
copyright:
SEC. 2. The rights granted by this Decree shall, from
the moment of creation, subsist with respect to any of
the following works:
xxx xxx xxx
(O) Prints, pictorial illustrations, advertising copies,
labels, tags, and box wraps;
xxx xxx xxx
Although petitioner’s copyright certificate was entitled
"Advertising Display Units" (which depicted the box-
type electrical devices), its claim of copyright
infringement cannot be sustained.
Copyright, in the strict sense of the term, is purely a
statutory right. Being a mere statutory grant, the rights
are limited to what the statute confers. It may be
obtained and enjoyed only with respect to the subjects
and by the persons, and on terms and conditions
specified in the statute.7 Accordingly, it can cover only
the works falling within the statutory enumeration or
description.8
P & D secured its copyright under the
classification class "O" work. This being so,
petitioner’s copyright protection extended only to the
technical drawings and not to the light box itself
because the latter was not at all in the category of
"prints, pictorial illustrations, advertising copies, labels,
tags and box wraps." Stated otherwise, even as we find
that P & D indeed owned a valid copyright, the same
could have referred only to the technical drawings
within the category of "pictorial illustrations." It could
not have possibly stretched out to include the
underlying light box. The strict application9 of the law’s
enumeration in Section 2 prevents us from giving
petitioner even a little leeway, that is, even if its
copyright certificate was entitled "Advertising Display
Units." What the law does not include, it excludes, and
for the good reason: the light box was not a literary or
artistic piece which could be copyrighted under the
copyright law. And no less clearly, neither could the
lack of statutory authority to make the light box
copyrightable be remedied by the simplistic act of
entitling the copyright certificate issued by the National
Library as "Advertising Display Units."
In fine, if SMI and NEMI reprinted P & D’s technical
drawings for sale to the public without license from P
& D, then no doubt they would have been guilty of
copyright infringement. But this was not the case.
SMI’s and NEMI’s acts complained of by P & D were
to have units similar or identical to the light box
illustrated in the technical drawings manufactured by
Metro and EYD Rainbow Advertising, for leasing out
to different advertisers. Was this an infringement of
petitioner’s copyright over the technical drawings? We
do not think so.
During the trial, the president of P & D himself
admitted that the light box was neither a literary not an
artistic work but an "engineering or marketing
invention."10 Obviously, there appeared to be some
confusion regarding what ought or ought not to be the
proper subjects of copyrights, patents and trademarks.
In the leading case of Kho vs. Court of Appeals,11 we
ruled that these three legal rights are completely
distinct and separate from one another, and the
protection afforded by one cannot be used
interchangeably to cover items or works that
exclusively pertain to the others:
Trademark, copyright and patents are different
intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign
capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall
include a stamped or marked container of goods. In
relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to
literary and artistic works which are original
intellectual creations in the literary and artistic domain
protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical
solution of a problem in any field of human
activity which is new, involves an inventive step and is
industrially applicable.
ON THE ISSUE OF PATENT INFRINGEMENT
This brings us to the next point: if, despite its
manufacture and commercial use of the light
boxes without license from petitioner, private
respondents cannot be held legally liable for
infringement of P & D’s copyright over itstechnical
drawings of the said light boxes, should they be liable
instead for infringement of patent? We do not think so
either.
For some reason or another, petitioner never secured a
patent for the light boxes. It therefore acquired no
patent rights which could have protected its invention,
if in fact it really was. And because it had no patent,
petitioner could not legally prevent anyone from
manufacturing or commercially using the contraption.
In Creser Precision Systems, Inc. vs. Court of
Appeals,12 we held that "there can be no infringement
of a patent until a patent has been issued, since
whatever right one has to the invention covered by the
patent arises alone from the grant of patent. x x x (A)n
inventor has no common law right to a monopoly of his
invention. He has the right to make use of and vend his
invention, but if he voluntarily discloses it, such as by
offering it for sale, the world is free to copy and use it
with impunity. A patent, however, gives the inventor
the right to exclude all others. As a patentee, he has the
exclusive right of making, selling or using the
invention.13 On the assumption that petitioner’s
advertising units were patentable inventions, petitioner
revealed them fully to the public by submitting the
engineering drawings thereof to the National Library.
To be able to effectively and legally preclude others
from copying and profiting from the invention, a patent
is a primordial requirement. No patent, no protection.
The ultimate goal of a patent system is to bring new
designs and technologies into the public domain
through disclosure.14 Ideas, once disclosed to the public
without the protection of a valid patent, are subject to
appropriation without significant restraint.15
On one side of the coin is the public which will benefit
from new ideas; on the other are the inventors who
must be protected. As held in Bauer & Cie vs.
O’Donnel,16 "The act secured to the inventor the
exclusive right to make use, and vend the thing
patented, and consequently to prevent others from
exercising like privileges without the consent of the
patentee. It was passed for the purpose of encouraging
useful invention and promoting new and useful
inventions by the protection and stimulation given to
inventive genius, and was intended to secure to the
public, after the lapse of the exclusive privileges
granted the benefit of such inventions and
improvements."
The law attempts to strike an ideal balance between the
two interests:
"(The p)atent system thus embodies a carefully crafted
bargain for encouraging the creation and disclosure of
new useful and non-obvious advances in technology
and design, in return for the exclusive right to practice
the invention for a number of years. The inventor may
keep his invention secret and reap its fruits indefinitely.
In consideration of its disclosure and the consequent
benefit to the community, the patent is granted. An
exclusive enjoyment is guaranteed him for 17 years,
but upon the expiration of that period, the knowledge of
the invention inures to the people, who are thus enabled
to practice it and profit by its use."17
The patent law has a three-fold purpose: "first, patent
law seeks to foster and reward invention; second, it
promotes disclosures of inventions to stimulate further
innovation and to permit the public to practice the
invention once the patent expires; third, the stringent
requirements for patent protection seek to ensure that
ideas in the public domain remain there for the free use
of the public."18
It is only after an exhaustive examination by the patent
office that a patent is issued. Such an in-depth
investigation is required because "in rewarding a useful
invention, the rights and welfare of the community
must be fairly dealt with and effectively guarded. To
that end, the prerequisites to obtaining a patent are
strictly observed and when a patent is issued, the
limitations on its exercise are equally strictly enforced.
To begin with, a genuine invention or discovery must
be demonstrated lest in the constant demand for new
appliances, the heavy hand of tribute be laid on each
slight technological advance in art."19
There is no such scrutiny in the case of copyrights nor
any notice published before its grant to the effect that a
person is claiming the creation of a work. The law
confers the copyright from the moment of
creation20 and the copyright certificate is issued upon
registration with the National Library of a sworn ex-
parte claim of creation.
Therefore, not having gone through the arduous
examination for patents, the petitioner cannot exclude
others from the manufacture, sale or commercial use of
the light boxes on the sole basis of its copyright
certificate over the technical drawings.
Stated otherwise, what petitioner seeks is exclusivity
without any opportunity for the patent office (IPO) to
scrutinize the light box’s eligibility as a patentable
invention. The irony here is that, had petitioner secured
a patent instead, its exclusivity would have been for 17
years only. But through the simplified procedure of
copyright-registration with the National Library —
without undergoing the rigor of defending the
patentability of its invention before the IPO and the
public — the petitioner would be protected for 50
years. This situation could not have been the intention
of the law.
In the oft-cited case of Baker vs. Selden21 , the United
States Supreme Court held that only the expression of
an idea is protected by copyright, not the idea itself. In
that case, the plaintiff held the copyright of a book
which expounded on a new accounting system he had
developed. The publication illustrated blank forms of
ledgers utilized in such a system. The defendant
reproduced forms similar to those illustrated in the
plaintiff’s copyrighted book. The US Supreme Court
ruled that:
"There is no doubt that a work on the subject of book-
keeping, though only explanatory of well known
systems, may be the subject of a copyright; but, then, it
is claimed only as a book. x x x. But there is a clear
distinction between the books, as such, and the art,
which it is, intended to illustrate. The mere statement of
the proposition is so evident that it requires hardly any
argument to support it. The same distinction may be
predicated of every other art as well as that of
bookkeeping. A treatise on the composition and use of
medicines, be they old or new; on the construction and
use of ploughs or watches or churns; or on the mixture
and application of colors for painting or dyeing; or on
the mode of drawing lines to produce the effect of
perspective, would be the subject of copyright; but no
one would contend that the copyright of the treatise
would give the exclusive right to the art or manufacture
described therein. The copyright of the book, if not
pirated from other works, would be valid without
regard to the novelty or want of novelty of its subject
matter. The novelty of the art or thing described or
explained has nothing to do with the validity of the
copyright. To give to the author of the book an
exclusive property in the art described therein,
when no examination of its novelty has ever been
officially made, would be a surprise and a fraud
upon the public. That is the province of letters
patent, not of copyright. The claim to an invention
of discovery of an art or manufacture must be
subjected to the examination of the Patent Office
before an exclusive right therein can be obtained;
and a patent from the government can only secure
it.
The difference between the two things, letters patent
and copyright, may be illustrated by reference to the
subjects just enumerated. Take the case of medicines.
Certain mixtures are found to be of great value in the
healing art. If the discoverer writes and publishes a
book on the subject (as regular physicians generally
do), he gains no exclusive right to the manufacture
and sale of the medicine; he gives that to the public.
If he desires to acquire such exclusive right, he must
obtain a patent for the mixture as a new art,
manufacture or composition of matter. He may
copyright his book, if he pleases; but that only
secures to him the exclusive right of printing and
publishing his book. So of all other inventions or
discoveries.
The copyright of a book on perspective, no matter how
many drawings and illustrations it may contain, gives
no exclusive right to the modes of drawing described,
though they may never have been known or used
before. By publishing the book without getting a patent
for the art, the latter is given to the public.
xxx
Now, whilst no one has a right to print or publish his
book, or any material part thereof, as a book intended
to convey instruction in the art, any person may
practice and use the art itself which he has described
and illustrated therein.The use of the art is a totally
different thing from a publication of the book
explaining it. The copyright of a book on bookkeeping
cannot secure the exclusive right to make, sell and use
account books prepared upon the plan set forth in such
book. Whether the art might or might not have been
patented, is a question, which is not before us. It was
not patented, and is open and free to the use of the
public. And, of course, in using the art, the ruled lines
and headings of accounts must necessarily be used as
incident to it.
The plausibility of the claim put forward by the
complainant in this case arises from a confusion of
ideas produced by the peculiar nature of the art
described in the books, which have been made the
subject of copyright. In describing the art, the
illustrations and diagrams employed happened to
correspond more closely than usual with the actual
work performed by the operator who uses the art. x x
x The description of the art in a book, though
entitled to the benefit of copyright, lays no
foundation for an exclusive claim to the art itself.
The object of the one is explanation; the object of
the other is use. The former may be secured by
copyright. The latter can only be secured, if it can
be secured at all, by letters patent." (underscoring
supplied)
ON THE ISSUE OF TRADEMARK
INFRINGEMENT
This issue concerns the use by respondents of the mark
"Poster Ads" which petitioner’s president said was a
contraction of "poster advertising." P & D was able to
secure a trademark certificate for it, but one where the
goods specified were "stationeries such as letterheads,
envelopes, calling cards and newsletters."22 Petitioner
admitted it did not commercially engage in or market
these goods. On the contrary, it dealt in electrically
operated backlit advertising units and the sale of
advertising spaces thereon, which, however, were not at
all specified in the trademark certificate.
Under the circumstances, the Court of Appeals
correctly cited Faberge Inc. vs. Intermediate Appellate
Court,23where we, invoking Section 20 of the old
Trademark Law, ruled that "the certificate of
registration issued by the Director of Patents can confer
(upon petitioner) the exclusive right to use its own
symbol only to those goods specified in the certificate,
subject to any conditions and limitations specified in
the certificate x x x. One who has adopted and used a
trademark on his goods does not prevent the adoption
and use of the same trademark by others for products
which are of a different description."24 Faberge,
Inc. was correct and was in fact recently reiterated
in Canon Kabushiki Kaisha vs. Court of Appeals.25
Assuming arguendo that "Poster Ads" could validly
qualify as a trademark, the failure of P & D to secure a
trademark registration for specific use on the light
boxes meant that there could not have been any
trademark infringement since registration was an
essential element thereof.1âwphi1
ON THE ISSUE OF UNFAIR COMPETITION
If at all, the cause of action should have been for unfair
competition, a situation which was possible even if P &
D had no registration.26 However, while the petitioner’s
complaint in the RTC also cited unfair competition, the
trial court did not find private respondents liable
therefor. Petitioner did not appeal this particular point;
hence, it cannot now revive its claim of unfair
competition.
But even disregarding procedural issues, we
nevertheless cannot hold respondents guilty of unfair
competition.
By the nature of things, there can be no unfair
competition under the law on copyrights although it is
applicable to disputes over the use of trademarks. Even
a name or phrase incapable of appropriation as a
trademark or tradename may, by long and exclusive use
by a business (such that the name or phrase becomes
associated with the business or product in the mind of
the purchasing public), be entitled to protection against
unfair competition.27 In this case, there was no evidence
that P & D’s use of "Poster Ads" was distinctive or
well-known. As noted by the Court of Appeals,
petitioner’s expert witnesses himself had testified that "
‘Poster Ads’ was too generic a name. So it was difficult
to identify it with any company, honestly
speaking."28 This crucial admission by its own expert
witness that "Poster Ads" could not be associated with
P & D showed that, in the mind of the public, the goods
and services carrying the trademark "Poster Ads" could
not be distinguished from the goods and services of
other entities.
This fact also prevented the application of the doctrine
of secondary meaning. "Poster Ads" was generic and
incapable of being used as a trademark because it was
used in the field of poster advertising, the very business
engaged in by petitioner. "Secondary meaning" means
that a word or phrase originally incapable of exclusive
appropriation with reference to an article in the market
(because it is geographically or otherwise descriptive)
might nevertheless have been used for so long and so
exclusively by one producer with reference to his
article that, in the trade and to that branch of the
purchasing public, the word or phrase has come to
mean that the article was his property.29 The admission
by petitioner’s own expert witness that he himself
could not associate "Poster Ads" with petitioner P & D
because it was "too generic" definitely precluded the
application of this exception.
Having discussed the most important and critical
issues, we see no need to belabor the rest.
All told, the Court finds no reversible error committed
by the Court of Appeals when it reversed the Regional
Trial Court of Makati City.
WHEREFORE, the petition is hereby DENIED and
the decision of the Court of Appeals dated May 22,
2001 is AFFIRMED in toto.
SO ORDERED.
G.R. No. 115758 March 19, 2002
ELIDAD C. KHO, doing business under the name and
style of KEC COSMETICS LABORATORY,
petitioner,
vs.
HON. COURT OF APPEALS, SUMMERVILLE
GENERAL MERCHANDISING and
COMPANY, and ANG TIAM CHAY, respondents.
DE LEON, JR., J.:
Before us is a petition for review on certiorari of the
Decision1 dated May 24, 1993 of the Court of Appeals
setting aside and declaring as null and void the
Orders2 dated February 10, 1992 and March 19, 1992
of the Regional Trial Court, Branch 90, of Quezon City
granting the issuance of a writ of preliminary
injunction.
The facts of the case are as follows:
On December 20, 1991, petitioner Elidad C. Kho filed
a complaint for injunction and damages with a prayer
for the issuance of a writ of preliminary injunction,
docketed as Civil Case No. Q-91-10926, against the
respondents Summerville General Merchandising and
Company (Summerville, for brevity) and Ang Tiam
Chay.
The petitioner's complaint alleges that petitioner, doing
business under the name and style of KEC Cosmetics
Laboratory, is the registered owner of the
copyrights Chin Chun Su and Oval Facial Cream
Container/Case, as shown by Certificates of Copyright
Registration No. 0-1358 and No. 0-3678; that she also
has patent rights on Chin Chun Su & Device and Chin
Chun Su for medicated cream after purchasing the same
from Quintin Cheng, the registered owner thereof in the
Supplemental Register of the Philippine Patent Office
on February 7, 1980 under Registration Certificate No.
4529; that respondent Summerville advertised and sold
petitioner's cream products under the brand name Chin
Chun Su, in similar containers that petitioner uses,
thereby misleading the public, and resulting in the
decline in the petitioner's business sales and income;
and, that the respondents should be enjoined from
allegedly infringing on the copyrights and patents of
the petitioner.
The respondents, on the other hand, alleged as their
defense that Summerville is the exclusive and
authorized importer, re-packer and distributor of Chin
Chun Su products manufactured by Shun Yi Factory of
Taiwan; that the said Taiwanese manufacturing
company authorized Summerville to register its trade
name Chin Chun Su Medicated Cream with the
Philippine Patent Office and other appropriate
governmental agencies; that KEC Cosmetics
Laboratory of the petitioner obtained the copyrights
through misrepresentation and falsification; and, that
the authority of Quintin Cheng, assignee of the patent
registration certificate, to distribute and market Chin
Chun Suproducts in the Philippines had already been
terminated by the said Taiwanese Manufacturing
Company.
After due hearing on the application for preliminary
injunction, the trial court granted the same in an Order
dated February 10, 1992, the dispositive portion of
which reads:
ACCORDINGLY, the application of plaintiff
Elidad C. Kho, doing business under the style
of KEC Cosmetic Laboratory, for preliminary
injunction, is hereby granted.
Consequentially, plaintiff is required to file
with the Court a bond executed to defendants
in the amount of five hundred thousand pesos
(P500,000.00) to the effect that plaintiff will
pay to defendants all damages which
defendants may sustain by reason of the
injunction if the Court should finally decide
that plaintiff is not entitled thereto.
SO ORDERED.3
The respondents moved for reconsideration but their
motion for reconsideration was denied by the trial court
in an Order dated March 19, 1992.4
On April 24, 1992, the respondents filed a petition
for certiorari with the Court of Appeals, docketed as
CA-G.R. SP No. 27803, praying for the nullification of
the said writ of preliminary injunction issued by the
trial court. After the respondents filed their reply and
almost a month after petitioner submitted her comment,
or on August 14 1992, the latter moved to dismiss the
petition for violation of Supreme Court Circular No.
28-91, a circular prohibiting forum shopping.
According to the petitioner, the respondents did not
state the docket number of the civil case in the caption
of their petition and, more significantly, they did not
include therein a certificate of non-forum shopping.
The respondents opposed the petition and submitted to
the appellate court a certificate of non-forum shopping
for their petition.
On May 24, 1993, the appellate court rendered a
Decision in CA-G.R. SP No. 27803 ruling in favor of
the respondents, the dispositive portion of which reads:
WHEREFORE, the petition is hereby given
due course and the orders of respondent court
dated February 10, 1992 and March 19, 1992
granting the writ of preliminary injunction
and denying petitioners' motion for
reconsideration are hereby set aside and
declared null and void. Respondent court is
directed to forthwith proceed with the trial of
Civil Case No. Q-91-10926 and resolve the
issue raised by the parties on the merits.
SO ORDERED.5
In granting the petition, the appellate court ruled that:
The registration of the trademark or
brandname "Chin Chun Su" by KEC with the
supplemental register of the Bureau of
Patents, Trademarks and Technology
Transfer cannot be equated with registration
in the principal register, which is duly
protected by the Trademark Law.1âwphi1.nêt
xxx xxx xxx
As ratiocinated in La Chemise Lacoste, S.S.
vs. Fernandez, 129 SCRA 373, 393:
"Registration in the Supplemental
Register, therefore, serves as notice
that the registrant is using or has
appropriated the trademark. By the
very fact that the trademark cannot
as yet be on guard and there are
certain defects, some obstacles
which the use must still overcome
before he can claim legal
ownership of the mark or ask the
courts to vindicate his claims of an
exclusive right to the use of the
same. It would be deceptive for a
party with nothing more than a
registration in the Supplemental
Register to posture before courts of
justice as if the registration is in the
Principal Register.
The reliance of the private
respondent on the last sentence of
the Patent office action on
application Serial No. 30954 that
'registrants is presumed to be the
owner of the mark until after the
registration is declared cancelled'
is, therefore, misplaced and
grounded on shaky foundation. The
supposed presumption not only
runs counter to the precept
embodied in Rule 124 of the
Revised Rules of Practice before
the Philippine Patent Office in
Trademark Cases but considering
all the facts ventilated before us in
the four interrelated petitions
involving the petitioner and the
respondent, it is devoid of factual
basis. As even in cases where
presumption and precept may
factually be reconciled, we have
held that the presumption is
rebuttable, not conclusive, (People
 v. Lim Hoa, G.R. No. L-10612,
May 30, 1958, Unreported). One
may be declared an unfair
competitor even if his competing
trademark is registered (Parke,
Davis & Co. v. Kiu Foo & Co., et
al., 60 Phil 928; La Yebana Co. v.
chua Seco & Co., 14 Phil 534)."6
The petitioner filed a motion for reconsideration. This
she followed with several motions to declare
respondents in contempt of court for publishing
advertisements notifying the public of the promulgation
of the assailed decision of the appellate court and
stating that genuine Chin Chun Su products could be
obtained only from Summerville General
Merchandising and Co.
In the meantime, the trial court went on to hear
petitioner's complaint for final injunction and damages.
On October 22, 1993, the trial court rendered a
Decision7 barring the petitioner from using the
trademark Chin Chun Su and upholding the right of the
respondents to use the same, but recognizing the
copyright of the petitioner over the oval shaped
container of her beauty cream. The trial court did not
award damages and costs to any of the parties but to
their respective counsels were awarded Seventy-Five
Thousand Pesos (P75,000.00) each as attorney's fees.
The petitioner duly appealed the said decision to the
Court of Appeals.
On June 3, 1994, the Court of Appeals promulgated a
Resolution8 denying the petitioner's motions for
reconsideration and for contempt of court in CA-G.R.
SP No. 27803.
Hence, this petition anchored on the following
assignment of errors:
I APPEALS COMMITTED GRAVE ABUSE
RESPONDENT HONORABLE COURT OF
APPEALS COMMITTED GRAVE ABUSE
OF DISCRETION AMOUNTING TO
LACK OF JURISDICTION IN FAILING
TO RULE ON PETITIONER'S MOTION
TO DISMISS.
II
RESPONDENT HONORABLE COURT OF
APPEALS COMMITTED GRAVE ABUSE
OF DISCRETION AMOUNTING TO
LACK OF JURISDICTION IN REFUSING
TO PROMPTLY RESOLVE
PETITIONER'S MOTION FOR
RECONSIDERATION.
III
IN DELAYING THE RESOLUTION OF
PETITIONER'S MOTION FOR
RECONSIDERATION, THE HONORABLE
COURT OF APPEALS DENIED
PETITIONER'S RIGHT TO SEEK TIMELY
APPELLATE RELIEF AND VIOLATED
PETITIONER'S RIGHT TO DUE
PROCESS.
IV
RESPONDENT HONORABLE COURT OF
OF DISCRETION AMOUNTING TO
LACK OF JURISDICTION IN FAILING
TO CITE THE PRIVATE RESPONDENTS
IN CONTEMPT.9
The petitioner faults the appellate court for not
dismissing the petition on the ground of violation of
Supreme Court Circular No. 28-91. Also, the petitioner
contends that the appellate court violated Section 6,
Rule 9 of the Revised Internal Rules of the Court of
Appeals when it failed to rule on her motion for
reconsideration within ninety (90) days from the time it
is submitted for resolution. The appellate court ruled
only after the lapse of three hundred fifty-four (354)
days, or on June 3, 1994. In delaying the resolution
thereof, the appellate court denied the petitioner's right
to seek the timely appellate relief. Finally, petitioner
describes as arbitrary the denial of her motions for
contempt of court against the respondents.
We rule in favor of the respondents.
Pursuant to Section 1, Rule 58 of the Revised Rules of
Civil Procedure, one of the grounds for the issuance of
a writ of preliminary injunction is a proof that the
applicant is entitled to the relief demanded, and the
whole or part of such relief consists in restraining the
commission or continuance of the act or acts
complained of, either for a limited period or
perpetually. Thus, a preliminary injunction order may
be granted only when the application for the issuance
of the same shows facts entitling the applicant to the
relief demanded.10 This is the reason why we have
ruled that it must be shown that the invasion of the
right sought to be protected is material and substantial,
that the right of complainant is clear and unmistakable,
and, that there is an urgent and paramount necessity for
the writ to prevent serious damage.11
In the case at bar, the petitioner applied for the issuance
of a preliminary injunctive order on the ground that she
is entitled to the use of the trademark on Chin Chun
Su and its container based on her copyright and patent
over the same. We first find it appropriate to rule on
whether the copyright and patent over the name and
container of a beauty cream product would entitle the
registrant to the use and ownership over the same to the
exclusion of others.
Trademark, copyright and patents are different
intellectual property rights that cannot be interchanged
with one another. A trademark is any visible sign
capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall
include a stamped or marked container of goods.12 In
relation thereto, a trade name means the name or
designation identifying or distinguishing an
enterprise.13 Meanwhile, the scope of a copyright is
confined to literary and artistic works which are
original intellectual creations in the literary and artistic
domain protected from the moment of their
creation.14 Patentable inventions, on the other hand,
refer to any technical solution of a problem in any field
of human activity which is new, involves an inventive
step and is industrially applicable.15
Petitioner has no right to support her claim for the
exclusive use of the subject trade name and its
container. The name and container of a beauty cream
product are proper subjects of a trademark inasmuch as
the same falls squarely within its definition. In order to
be entitled to exclusively use the same in the sale of the
beauty cream product, the user must sufficiently prove
that she registered or used it before anybody else did.
The petitioner's copyright and patent registration of the
name and container would not guarantee her the right
to the exclusive use of the same for the reason that they
are not appropriate subjects of the said intellectual
rights. Consequently, a preliminary injunction order
cannot be issued for the reason that the petitioner has
not proven that she has a clear right over the said name
and container to the exclusion of others, not having
proven that she has registered a trademark thereto or
used the same before anyone did.
We cannot likewise overlook the decision of the trial
court in the case for final injunction and damages. The
dispositive portion of said decision held that the
petitioner does not have trademark rights on the name
and container of the beauty cream product. The said
decision on the merits of the trial court rendered the
issuance of the writ of a preliminary injunction moot
and academic notwithstanding the fact that the same
has been appealed in the Court of Appeals. This is
supported by our ruling in La Vista Association, Inc. v.
Court of Appeals16, to wit:
Considering that preliminary injunction is a
provisional remedy which may be granted at
any time after the commencement of the
action and before judgment when it is
established that the plaintiff is entitled to the
relief demanded and only when his complaint
shows facts entitling such reliefs xxx and it
appearing that the trial court had already
granted the issuance of a final injunction in
favor of petitioner in its decision rendered
after trial on the merits xxx the Court
resolved to Dismiss the instant petition
having been rendered moot and academic.
An injunction issued by the trial court after it
has already made a clear pronouncement as
to the plaintiff's right thereto, that is, after the
same issue has been decided on the merits,
the trial court having appreciated the
evidence presented, is proper,
notwithstanding the fact that the decision
 rendered is not yet final xxx. Being an
ancillary remedy, the proceedings for
preliminary injunction cannot stand
separately or proceed independently of the
decision rendered on the merit of the main
case for injunction. The merit of the main
case having been already determined in favor
of the applicant, the preliminary
determination of its non-existence ceases to
have any force and effect. (italics supplied)
La Vista categorically pronounced that the issuance of a
final injunction renders any question on the preliminary
injunctive order moot and academic despite the fact
that the decision granting a final injunction is pending
appeal. Conversely, a decision denying the applicant-
plaintiff's right to a final injunction, although appealed,
renders moot and academic any objection to the prior
dissolution of a writ of preliminary injunction.
The petitioner argues that the appellate court erred in
not dismissing the petition for certiorari for non-
compliance with the rule on forum shopping. We
disagree. First, the petitioner improperly raised the
technical objection of non-compliance with Supreme
Court Circular No. 28-91 by filing a motion to dismiss
the petition for certiorari filed in the appellate court.
This is prohibited by Section 6, Rule 66 of the Revised
Rules of Civil Procedure which provides that "(I)n
petitions for certiorari before the Supreme Court and
the Court of Appeals, the provisions of Section 2, Rule
56, shall be observed. Before giving due course thereto,
the court may require the respondents to file their
comment to,and not a motion to dismiss, the petition
xxx (italics supplied)". Secondly, the issue was raised
one month after petitioner had filed her
answer/comment and after private respondent had
replied thereto. Under Section 1, Rule 16 of the
Revised Rules of Civil Procedure, a motion to dismiss
shall be filed within the time for but before filing the
answer to the complaint or pleading asserting a claim.
She therefore could no longer submit a motion to
dismiss nor raise defenses and objections not included
in the answer/comment she had earlier tendered.
Thirdly, substantial justice and equity require this Court
not to revive a dissolved writ of injunction in favor of a
party without any legal right thereto merely on a
technical infirmity. The granting of an injunctive writ
based on a technical ground rather than compliance
with the requisites for the issuance of the same is
contrary to the primary objective of legal procedure
which is to serve as a means to dispense justice to the
deserving party.
The petitioner likewise contends that the appellate
court unduly delayed the resolution of her motion for
reconsideration. But we find that petitioner contributed
to this delay when she filed successive contentious
motions in the same proceeding, the last of which was
on October 27, 1993, necessitating counter-
manifestations from private respondents with the last
one being filed on November 9, 1993. Nonetheless, it is
well-settled that non-observance of the period for
deciding cases or their incidents does not render such
judgments ineffective or void.17With respect to the
purported damages she suffered due to the alleged
delay in resolving her motion for reconsideration, we
find that the said issue has likewise been rendered moot
and academic by our ruling that she has no right over
the trademark and, consequently, to the issuance of a
writ of preliminary injunction.1âwphi1.nêt
Finally, we rule that the Court of Appeals correctly
denied the petitioner's several motions for contempt of
court. There is nothing contemptuous about the
advertisements complained of which, as regards the
proceedings in CA-G.R. SP No. 27803 merely
announced in plain and straightforward language the
promulgation of the assailed Decision of the appellate
court. Moreover, pursuant to Section 4 of Rule 39 of
the Revised Rules of Civil Procedure, the said decision
nullifying the injunctive writ was immediately
executory.
WHEREFORE, the petition is DENIED. The Decision
and Resolution of the Court of Appeals dated May 24,
1993 and June 3, 1994, respectively, are
hereby AFFIRMED. With costs against the petitioner.
SO ORDERED.

G.R. No. L-19439 October 31, 1964
MAURO MALANG SANTOS, plaintiff-appellant,
vs.
MCCULLOUGH PRINTING
COMPANY, defendant-appellee.
Tañada Teehankee & Carreon for plaintiff-appellant.
Esposo & Usison for defendant-appellee.
PAREDES, J.:
This is an action for damages based on the provisions
of Articles 721 and 722 of the Civil Code of the
Philippines, allegedly on the unauthorized use,
adoption and appropriation by the defendant company
of plaintiff's intellectual creation or artistic design for a
Christmas Card. The design depicts "a Philippine rural
Christmas time scene consisting of a woman and a
child in a nipa hut adorned with a star-shaped lantern
and a man astride a carabao, beside a tree, underneath
which appears the plaintiff's pen name, Malang."
The complaint alleges that plaintiff Mauro Malang
Santos designed for former Ambassador Felino Neri,
for his personal Christmas Card greetings for the year
1959, the artistic motif in question. The following year
the defendant McCullough Printing Company, without
the knowledge and authority of plaintiff, displayed the
very design in its album of Christmas cards and offered
it for sale, for a price. For such unauthorized act of
defendant, plaintiff suffered moral damages to the tune
of P16,000.00, because it has placed plaintiff's
professional integrity and ethics under serious question
and caused him grave embarrassment before
Ambassador Neri. He further prayed for the additional
sum of P3,000.00 by way of attorney's fee.
Defendant in answer to the complaint, after some
denials and admissions, moved for a dismissal of the
action claiming that —
(1) The design claimed does not contain a
clear notice that it belonged to him and that
he prohibited its use by others;
(2) The design in question has been published
but does not contain a notice of copyright, as
in fact it had never been copyrighted by the
plaintiff, for which reason this action is
barred by the Copyright Law;
(3) The complaint does not state a cause of
action.
The documentary evidence submitted were the
Christmas cards, as originally designed by plaintiff, the
design as printed for Ambassador Neri, and the
subsequent reprints ordered by other parties. The case
was submitted an a "Stipulation of Fact" the pertinent
portions of which are hereunder reproduced:
1. That the plaintiff was the artist who
created the design shown in Exhibit A, ...
2. That the design carries the pen name of
plaintiff, MALANG, on its face ... and
indicated in Exhibit A, ...
3. That said design was created by plaintiff in
the latter part of 1959 for the personal use of
former Ambassador Felino Neri; ...
4. That former Ambassador Neri had 800
such cards ... printed by the defendant
company in 1959, ... which he distributed to
his friends in December, 1959;
5. That defendant company utilized plaintiff's
design in the year 1960 in its album of
Christmas card samples displayed to its
customers ... .
6. That the Sampaguita Pictures, Inc., placed
an order with defendant company for 700 of
said cards ... while Raul Urra & Co. ordered
200 ..., which cards were sent out by them to
their respective correspondent, clients and
friends during the Christmas season of 1960;
7. That defendant company's use of plaintiff's
design was without knowledge, authority or
consent of plaintiff;
8. That said design has not been copyrighted;
 9. That plaintiff is an artist of established
name, good-will and reputation. ... .
Upon the basis of the facts stipulated, the lower court
rendered judgment on December 1, 1961, the pertinent
portions of which are recited below:
As a general proposition, there can be no
dispute that the artist acquires ownership of
the product of his art. At the time of its
creation, he has the absolute dominion over
it. To help the author protect his rights the
copyright law was enacted.
In intellectual creations, a distinction must be
made between two classes of property rights;
the fact of authorship and the right to publish
and/or distribute copies of the creation. With
regard to the first, i.e. the fact of authorship,
the artist cannot be divested of the same. In
other words, he may sell the right to print
hundred of his work yet the purchaser of said
right can never be the author of the creation.
It is the second right, i.e., the right to publish,
republish, multiply and/or distribute copies of
the intellectual creation which the state,
through the enactment of the copyright law,
seeks to protect. The author or his assigns or
heirs may have the work copyrighted and
once this is legally accomplished any
infringement of the copyright will render the
infringer liable to the owner of the copyright.
xxx xxx xxx
The plaintiff in this case did not choose to
protect his intellectual creation by a
copyright. The fact that the design was used
in the Christmas card of Ambassador Neri
who distributed eight hundred copies thereof
among his friends during the Christmas
season of 1959, shows that the, same was
published.
Unless satisfactorily explained a delay in
applying for a copyright, of more than thirty
days from the date of its publication, converts
the property to one of public domain.
Since the name of the author appears in each
of the alleged infringing copies of the
intellectual creation, the defendant may not
be said to have pirated the work nor guilty of
plagiarism Consequently, the complaint does
not state a cause of action against the
defendant.
xxx xxx ;xxx
WHEREFORE, the Court dismisses the
complaint without pronouncement as to costs.
In his appeal to this Court, plaintiff-appellant pointed
five (5) errors allegedly committed by the trial court, all
of which bring to the fore, the following propositions:
(1) whether plaintiff is entitled to protection,
notwithstanding the, fact that he has not copyrighted
his design; (2) whether the publication is limited, so as
to prohibit its use by others, or it is general publication,
and (3) whether the provisions of the Civil Code or the
Copyright Law should apply in the case. We will
undertake a collective discussion of these propositions.
Under the established facts, We find that plaintiff is not
entitled to a protection, the provision of the Civil Code,
notwithstanding. Paragraph 33 of Patent Office
Administrative Order No. 3 (as amended dated
September 18, 1947) entitled "Rules of Practice in the
Philippines Patent Office relating to the Registration of
Copyright Claims" promulgated pursuant to Republic
Act 165, provides, among others, that an intellectual
creation should be copyrighted thirty (30) days after its
publication, if made in Manila, or within sixty (60)
day's if made elsewhere, failure of which renders such
creation public property. In the case at bar, even as of
this moment, there is no copyright for the design in
question. We are not also prepared to accept the
contention of appellant that the publication of the
design was a limited one, or that there was an
understanding that only Ambassador Neri should, have
absolute right to use the same. In the first place, if such
were the condition then Ambassador Neri would be the
aggrieved party, and not the appellant. In the second
place, if there was such a limited publication or
prohibition, the same was not shown on the face of the CONFORMABLY WITH ALL THE FOREGOING,
design. When the purpose is a limited publication, but We find that the errors assigned have not been
the effect is general publication, irrevocable rights committed by the lower court. The decision appealed
thereupon become vested in the public, in consequence from, therefore, should be, as it is hereby affirmed.
of which enforcement of the restriction becomes Costs taxed against plaintiff-appellant.
impossible (Nutt vs. National Institute, 31 F [2d] 236).
It has been held that the effect of offering for sale a
dress, for example manufactured in accordance with an
original design which is not protected by either a
copyright or a patent, is to divest the owner of his
common law rights therein by virtue of the publication
of a 'copy' and thereafter anyone is free to copy the
design or the dress (Fashion Originators Guild of
America v. Federal Trade Commission, 114 F [2d] 80).
When Ambassador Neri distributed 800 copies of the
design in controversy, the plaintiff lost control of his
design and the necessary implication was that there had
been a general publication, there having been no
showing of a clear indication that a limited publication
was intended. The author of a literary composition has
a light to the first publication thereof. He has a right to
determine whether it shall be published at all, and if
published, when, where, by whom, and in what form.
This exclusive right is confined to the first publication.
When once published, it is dedicated to the public, and
the author loses the exclusive right to control
subsequent publication by others, unless the work is
placed under the protection of the copyright law. (See
II Tolentino's Comments on the Civil Code, p. 433,
citing Wright v. Eisle 83 N.Y. Supp. 887.)
G.R. No. 108946 January 28, 1999
FRANCISCO G. JOAQUIN, JR., and BJ
PRODUCTIONS, INC., petitioners,
vs.
HONORABLE FRANKLIN DRILON, GABRIEL
ZOSA, WILLIAM ESPOSO, FELIPE MEDINA,
JR., and CASEY FRANCISCO, respondents.
MENDOZA, J.:
This is a petition for certiorari. Petitioners seek to
annul the resolution of the Department of Justice, dated
August 12, 1992, in Criminal Case No. Q-92-27854,
entitled "Gabriel Zosa, et al. v. City Prosecutor of
Quezon City and Francisco Joaquin, Jr.," and its
resolution, dated December 3, 1992, denying petitioner
Joaquin's motion for reconsideration.
Petitioner BJ Productions, Inc. (BJPI) is the
holder/grantee of Certificate of Copyright No. M922,
dated January 28, 1971, of Rhoda and Me, a dating
game show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the
National Library an addendum to its certificate of
copyright specifying the show's format and style of
presentation.
On July 14, 1991, while watching television, petitioner
Francisco Joaquin, Jr., president of BJPI, saw on RPN
Channel 9 an episode of It's a Date, which was
produced by IXL Productions, Inc. (IXL). On July 18,
1991, he wrote a letter to private respondent Gabriel M.
Zosa, president and general manager of IXL, informing
Zosa that BJPI had a copyright to Rhoda and Me and
demanding that IXL discontinue airing It's a Date.
In a letter, dated July 19, 1991, private respondent Zosa
apologized to petitioner Joaquin and requested a
meeting to discuss a possible settlement. IXL, however,
continued airing It's a Date, prompting petitioner
Joaquin to send a second letter on July 25, 1991 in
which he reiterated his demand and warned that, if IXL
did not comply, he would endorse the matter to his
attorneys for proper legal action.
Meanwhile, private respondent Zosa sought to register
IXL's copyright to the first episode of It's a Date for
which it was issued by the National Library a
certificate of copyright August 14, 1991.
Upon complaint of petitioners, an information for
violation of P.D. No. 49 was filed against private
respondent Zosa together with certain officers of RPN
Channel 9, namely, William Esposo, Felipe Medina,
and Casey Francisco, in the Regional Trial Court of
Quezon City where it was docketed as Criminal Case
No. 92-27854 and assigned to Branch 104 thereof.
However, private respondent Zosa sought a review of
the resolution of the Assistant City Prosecutor before
the Department of Justice.
On August 12, 1992, respondent Secretary of Justice
Franklin M. Drilon reversed the Assistant City
Prosecutor's findings and directed him to move for the
dismissal of the case against private respondents. 1
Petitioner Joaquin filed a motion for reconsideration,
but his motion denied by respondent Secretary of
Justice on December 3, 1992. Hence, this petition.
Petitioners contend that:
1. The public respondent gravely abused his discretion
amounting to lack of jurisdiction — when he invoked
non-presentation of the master tape as being fatal to the
existence of probable cause to prove infringement,
despite the fact that private respondents never raised
the same as a controverted issue.
2. The public respondent gravely abused his discretion
amounting to lack of jurisdiction when he arrogated
unto himself the determination of what is copyrightable
— an issue which is exclusively within the jurisdiction
of the regional trial court to assess in a proper
proceeding.
Both public and private respondents maintain that
petitioners failed to establish the existence of probable
cause due to their failure to present the copyrighted
master videotape of Rhoda and Me. They contend that
petitioner BJPI's copyright covers only a specific
episode of Rhoda and Me and that the formats or
concepts of dating game shows are not covered by
copyright protection under P.D. No. 49.
 Non-Assignment of Error.
Petitioners claim that their failure to submit the
copyrighted master videotape of the television show
Rhoda and Me was not raised in issue by private
respondents during the preliminary investigation and,
therefore, it was error for the Secretary of Justice to
reverse the investigating prosecutor's finding of
probable cause on this ground.
A preliminary investigation falls under the
authority of the state prosecutor who is given by law
2
the power to direct and control criminalactions. He is,
however, subject to the control of the Secretary of
Justice. Thus, Rule 112, §4 of the Revised Rules of
Criminal Procedure, provides:
Sec. 4. Duty of investigating fiscal. — If the
investigating fiscal finds cause to hold the respondent
for trial, he shall prepare the resolution and
corresponding information. He shall certify under oath
that he, or as shown by the record, an authorized
officer, has personally examined the complainant and
his witnesses, that there is reasonable ground to believe
that a crime has been committed and that the accused is
probably guilty thereof, that the accused was informed
of the complaint and of the evidence submitted against
him and that he was given an opportunity to submit
controverting evidence. Otherwise, he shall recommend
dismissal of the complaint.
In either case, he shall forward the records of the case
to the provincial or city fiscal or chief state prosecutor
within five (5) days from his resolution. The latter shall
take appropriate action thereon ten (10) days from
receipt thereof, immediately informing the parties of
said action.
No complaint or information may be filed or dismissed
by an investigating fiscal without the prior written
authority or approval of the provincial or city fiscal or
chief state prosecutor.
Where the investigating assistant fiscal recommends
the dismissal of the case but his findings are reversed
by the provincial or city fiscal or chief state prosecutor
on the ground that a probable cause exists, the latter
may, by himself, file the corresponding information
against the respondent or direct any other assistant
fiscal or state prosecutor to do so, without conducting
another preliminary investigation.
If upon petition by a proper party, the Secretary of
Justice reverses the resolution of the provincial or city
fiscal or chief state prosecutor, he shall direct the fiscal
concerned to file the corresponding information
without conducting another preliminary investigation
or to dismiss or move for dismissal of the complaint or
information.
In reviewing resolutions of prosecutors, the Secretary
of Justice is not precluded from considering errors,
although unassigned, for the purpose of determining
whether there is probable cause for filing cases in court.
He must make his own finding, of probable cause and
is not confined to the issues raised by the parties during
preliminary investigation. Moreover, his findings are
not subject to review unless shown to have been made
with grave abuse.
Opinion of the Secretary of Justice
Petitioners contend, however, that the determination of
the question whether the format or mechanics of a
show is entitled to copyright protection is for the court,
and not the Secretary of Justice, to make. They assail
the following portion of the resolution of the
respondent Secretary of Justice:
[T]he essence of copyright infringement is the copying,
in whole or in part, of copyrightable materials as
defined and enumerated in Section 2 of PD. No.
49. Apart from the manner in which it is actually
expressed, however, the idea of a dating game show is,
in the opinion of this Office, a non-copyrightable
material. Ideas, concepts, formats, or schemes in their
abstract form clearly do not fall within the class of
works or materials susceptible of copyright registration
as provided in PD. No. 49. 3(Emphasis added.)
It is indeed true that the question whether the format or
mechanics of petitioners television show is entitled to
copyright protection is a legal question for the court to
make. This does not, however, preclude respondent
Secretary of Justice from making a preliminary
determination of this question in resolving whether
there is probable cause for filing the case in court. In
doing so in this case, he did not commit any grave
error.
Presentation of Master Tape
Petitioners claim that respondent Secretary of Justice
gravely abused his discretion in ruling that the master
videotape should have been predented in order to
determine whether there was probable cause for
copyright infringement. They contend that 20th
Century Fox Film Corporation v. Court of
4
Appeals, on which respondent Secretary of Justice
relied in reversing the resolution of the investigating
prosecutor, is inapplicable to the case at bar because in
the present case, the parties presented sufficient
evidence which clearly establish "linkage between the
copyright show "Rhoda and Me" and the infringing TV
show "It's a Date." 5
The case of 20th Century Fox Film Corporation
involved raids conducted on various videotape outlets
allegedlly selling or renting out "pirated" videotapes.
The trial court found that the affidavits of NBI agents,
given in support of the application for the search
warrant, were insufficient without the master tape.
Accordingly, the trial court lifted the search warrants it
had previously issued against the defendants. On
petition for review, this Court sustained the action of
the trial court and ruled: 6
The presentation of the master tapes of the copyrighted
films from which the pirated films were allegedly
copied, was necessary for the validity of search
warrants against those who have in their possession the
pirated films. The petitioner's argument to the effect
that the presentation of the master tapes at the time of
application may not be necessary as these would be
merely evidentiary in nature and not determinative of
whether or not a probable cause exists to justify the
issuance of the search warrants is not meritorious. The
court cannot presume that duplicate or copied tapes
were necessarily reproduced from master tapes that it
owns.
The application for search warrants was directed
against video tape outlets which allegedly were
engaged in the unauthorized sale and renting out of
copyrighted films belonging to the petitioner pursuant
to P.D. 49.
The essence of a copyright infringement is the
similarity or at least substantial similarity of the
purported pirated works to the copyrighted work.
Hence, the applicant must present to the court the
copyrighted films to compare them with the purchased
evidence of the video tapes allegedly pirated to
determine whether the latter is an unauthorized
reproduction of the former. This linkage of the
copyrighted films to the pirated films must be
established to satisfy the requirements of probable
cause. Mere allegations as to the existence of the
copyrighted films cannot serve as basis for the issuance
of a search warrant.
This ruling was qualified in the later case
of Columbia Pictures, Inc. v. Court of
Appeals 7 in which it was held:
In fine, the supposed pronunciamento in said case
regarding the necessity for the presentation of the
master tapes of the copyrighted films for the validity of
search warrants should at most be understood to merely
serve as a guidepost in determining the existence of
probable cause in copyright infringement cases where
there is doubt as to the true nexus between the master
tape and the printed copies. An objective and careful
reading of the decision in said case could lead to no
other conclusion than that said directive was hardly
intended to be a sweeping and inflexible requirement in
all or similar copyright infringement cases. . . 8
In the case at bar during the preliminary investigation,
petitioners and private respondents presented written
descriptions of the formats of their respective
televisions shows, on the basis of which the
investigating prosecutor ruled:
As may [be] gleaned from the evidence on record, the
substance of the television productions complainant's
"RHODA AND ME" and Zosa's "IT'S A DATE" is that
two matches are made between a male and a female,
both single, and the two couples are treated to a night
or two of dining and/or dancing at the expense of the
show. The major concepts of both shows is the same.
Any difference appear mere variations of the major
concepts.
That there is an infringement on the copyright of the
show "RHODA AND ME" both in content and in the
execution of the video presentation are established
because respondent's "IT'S A DATE" is practically an
exact copy of complainant's "RHODA AND ME"
because of substantial similarities as follows, to wit:
Petitioners assert that the format of Rhoda and Me is a
product of ingenuity and skill and is thus entitled to
copyright protection. It is their position that the
presentation of a point-by-point comparison of the
formats of the two shows clearly demonstrates the
nexus between the shows and hence establishes the
existence of probable cause for copyright infringement.
Such being the case, they did not have to produce the
master tape.
To begin with the format of a show is not
copyrightable. Section 2 of P.D. No. 49, 10 otherwise
known as the DECREE ON INTELLECTUAL
PROPERTY, enumerates the classes of work entitled to
copyright protection, to wit:
Sec. 2. The rights granted by this Decree shall, from the
moment of creation, subsist with respect to any of the
following classes of works:
(A) Books, including composite
and cyclopedic works, manuscripts,
directories, and gazetteers:
(B) Periodicals, including
pamphlets and newspapers;
(C) Lectures, sermons, addresses,
dissertations prepared for oral
delivery;
(D) Letters;
(E) Dramatic or dramatico-musical
compositions; choreographic works
and entertainments in dumb shows,
the acting form of which is fixed in
writing or otherwise;
(F) Musical compositions, with or
without words;
(G) Works of drawing, painting,
architecture, sculpture, engraving,
lithography, and other works of art;
models or designs for works of art;
(H) Reproductions of a work of art;
(I) Original ornamental designs or
models for articles of manufacture,
whether or not patentable, and
other works of applied art;
(J) Maps, plans, sketches, and
charts;
(K) Drawings or plastic works of a
scientific or technical character;
(I) Photographic works and works
produced by a process analogous to
photography lantern slides;
(M) Cinematographic works and
works produced by a process
analogous to cinematography or
any process for making audio-
visual recordings;
(N) Computer programs;
(O) Prints, pictorial illustrations
advertising copies, labels tags, and
box wraps;
(P) Dramatizations, translations,
adaptations, abridgements,
arrangements and other alterations
of literary, musical or artistic works
or of works of the Philippine
government as herein defined,
which shall be protected as
provided in Section 8 of this
Decree.
 (Q) Collections of literary,
scholarly, or artistic works or of
works referred to in Section 9 of
this Decree which by reason of the
selection and arrangement of their
contents constitute intellectual
creations, the same to be protected
as such in accordance with Section
8 of this Decree.
(R) Other literary, scholarly,
scientific and artistic works.
This provision is substantially the same as §172 of the
INTELLECTUAL PROPERTY CODE OF
PHILIPPINES (R.A. No. 8293). 11 The format or
mechanics of a television show is not included in the
list of protected works in §2 of P.D. No. 49. For this
reason, the protection afforded by the law cannot be
extended to cover them.
Copyright, in the strict sense of the
term, is purely a statutory right. It
is a new or independent right
granted by the statute, and not
simply a pre-existing right
regulated by the statute. Being a
statutory grant, the rights are only
such as the statute confers, and may
be obtained and enjoyed only with
respect to the subjects and by the
persons and on terms and
conditions specified in the
12
statute.
Since . . . copyright in published
works is purely a statutory creation,
a copyright may be obtained only
for a work falling within the
statutory enumeration or
13
description.
Regardless of the historical
viewpoint, it is authoritatively
settled in the United States that
there is no copyright except that
which is both created and secured
by act of Congress . . . . . 14
P.D. No. 49, §2, in enumerating what are subject to
copyright, refers to finished works and not to concepts.
The copyright does not extend to an idea, procedure,
process, system, method of operation, concept,
principle, or discovery, regardless of the form in which
it is described, explained, illustrated, or embodied in
15
such work. Thus, the new INTELLECTUAL
PROPERTY CODE OF THE PHILIPPINES provides:
Sec. 175. Unprotected Subject
Matter. — Notwithstanding the
provisions of Sections 172 and 173,
no protection shall extend, under
this law, to any idea, procedure,
system, method or operation,
concept, principle, discovery or
mere data as such, even if they are
expressed, explained, illustrated or
embodied in a work; news of the
day and other miscellaneous facts
having the character of mere items
of press information; or any official
text of a legislative, administrative
or legal nature, as well as any
official translation thereof.
What then is the subject matter of petitioners'
copyright? This Court is of the opinion that petitioner
BJPI's copyright covers audio-visual recordings of each
episode of Rhoda and Me, as falling within the class of
works mentioned in P.D. 49, §2(M), to wit:
Cinematographic works and works
produced by a process analogous to
cinematography or any process for
making audio-visual recordings;
The copyright does not extend to the general
concept or format of its dating game show.
Accordingly, by the very nature of the subject
of petitioner BJPI's copyright, the
investigating prosecutor should have the
opportunity to compare the videotapes of the
two shows.
Mere description by words of the general format of the
two dating game shows is insufficient; the presentation
of the master videotape in evidence was indispensable
to the determination of the existence of probable cause.
As aptly observed by respondent Secretary of Justice:

A television show includes more

than mere words can describe
because it involves a whole
spectrum of visuals and effects,
video and audio, such that no
similarity or dissimilarity may be
found by merely describing the
general copyright/format of both
dating game shows.

WHEREFORE, the petition is hereby DISMISSED

SO ORDERED.1âwphi1.nêt
 Respondent Universal Rubber Products, Inc. filed an
application with the Philippine Patent office for
registration of the trademark "UNIVERSAL
CONVERSE AND DEVICE" used on rubber shoes and
rubber slippers.
Petitioner Converse Rubber Corporation filed its
opposition to the application for registration on grounds
that:
a] The trademark sought to be registered is confusingly
similar to the word "CONVERSE" which is part of
petitioner's corporate name "CONVERSE RUBBER
CORPORATION" as to likely deceive purchasers of
G.R. No. L-27906 January 8, 1987
products on which it is to be used to an extent that said
products may be mistaken by the unwary public to be
CONVERSE RUBBER
manufactured by the petitioner; and,
CORPORATION, petitioner,
vs.
b] The registration of respondent's trademark will cause
UNIVERSAL RUBBER PRODUCTS, INC. and
great and irreparable injury to the business reputation
TIBURCIO S. EVALLE, DIRECTOR OF
and goodwill of petitioner in the Philippines and would
PATENTS, respondents.
cause damage to said petitioner within the, meaning of
Section 8, R.A. No. 166, as amended.
Parades, Poblador, Nazareno, Azada & Tomacruz for
petitioner.
Thereafter, respondent filed its answer and at the pre-
trial, the parties submitted the following partial
RESOLUTION
stipulation of facts:
1] The petitioner's corporate name is "CONVERSE
RUBBER CORPORATION" and has been in existence
FERNAN, J.:
since July 31, 1946; it is duly organized under the laws
The undisputed facts of the case are as follows:
of Massachusetts, USA and doing business at 392 Pearl
St., Malden, County of Middle sex, Massachusetts;
2] Petitioner is not licensed to do business in the
Philippines and it is not doing business on its own in
the Philippines; and,
3] Petitioner manufacturers rubber shoes and uses
thereon the trademarks "CHUCK TAYLOR "and "ALL
STAR AND DEVICE". 1
At the trial, petitioner's lone witness, Mrs. Carmen B.
Pacquing, a duly licensed private merchant with stores
at the Sta. Mesa Market and in Davao City, testified
that she had been selling CONVERSE rubber shoes in
the local market since 1956 and that sales of petitioner's
rubber shoes in her stores averaged twelve to twenty
pairs a month purchased mostly by basketball players
of local private educational institutions like Ateneo, La
Salle and San Beda.
Mrs. Pacquing, further stated that she knew petitioner's
rubber shoes came from the United States "because it
says there in the trademark Converse Chuck Taylor
with star red or blue and is a round figure and made in
U.S.A. " 2 In the invoices issued by her store, the
rubber shoes were described as "Converse Chuck
Taylor", 3 "Converse All Star," 4 "All Star Converse
Chuck Taylor," 5 or "Converse Shoes Chuck
Taylor." 6 She also affirmed that she had no business
connection with the petitioner.
Respondent, on the other hand, presented as its lone
witness the secretary of said corporation who testified
that respondent has been selling on wholesale basis
"Universal Converse" sandals since 1962 and
"Universal Converse" rubber shoes since 1963.
Invoices were submitted as evidence of such sales. The
witness also testified that she had no Idea why
respondent chose "Universal Converse" as a trademark
and that she was unaware of the name "Converse" prior
to her corporation's sale of "Universal Converse"
rubber shoes and rubber sandals.
Eventually, the Director of Patents dismissed the
opposition of the petitioner and gave due course to
respondent's application. His decision reads in part:
... the only question for determination is whether or not
the applicant's partial appropriation of the Opposer's
[petitioner'] corporate name is of such character that in
this particular case, it is calculated to deceive or
confuse the public to the injury of the corporation to
which the name belongs ...
I cannot find anything that will prevent registration of
the word 'UNIVERSAL CONVERSE' in favor of the
respondent. In arriving at this conclusion, I am guided
by the fact that the opposer failed to present proof that
the single word "CONVERSE' in its corporate name
has become so Identified with the corporation that
whenever used, it designates to the mind of the public
that particular corporation.
The proofs herein are sales made by a single witness
who had never dealt with the petitioner . . . the entry of
Opposer's [petitioner's] goods in the Philippines were
not only effected in a very insignificant quantity but
without the opposer [petitioner] having a direct or
indirect hand in the transaction so as to be made the
basis for trademark pre- exemption.
Opposer's proof of its corporate personality cannot
establish the use of the word "CONVERSE" in any
sense, as it is already stipulated that it is not licensed to
do business in the Philippines, and is not doing
business of its own in the Philippines. If so, it will be
futile for it to establish that "CONVERSE" as part of its
corporate name Identifies its rubber shoes. Besides, it
was also stipulated that opposer [petitioner], in
manufacturing rubber shoes uses thereon the trademark
"CHUCK TAYLOR" and "ALL STAR and DEVICE"
and none other.
Furthermore, inasmuch as the Opposer never presented
any label herein, or specimen of its shoes, whereon the
label may be seen, notwithstanding its witness'
testimony touching upon her Identification of the
rubber shoes sold in her stores, no determination can be
made as to whether the word 'CONVERSE' appears
thereon.
. . .the record is wanting in proof to establish likelihood
of confusion so as to cause probable damage to the
Opposer. 7
Its motion for reconsideration having been denied by
the respondent Director of Patents, petitioner instituted
the instant petition for review.
As correctly phrased by public respondent Director of
Patents, the basic issue presented for our consideration
is whether or not the respondent's partial appropriation
of petitioner's corporate name is of such character that
it is calculated to deceive or confuse the public to the
injury of the petitioner to which the name belongs.
A trade name is any individual name or surname, firm
name, device or word used by manufacturers,
industrialists, merchants and others to Identify their
businesses, vocations or occupations. 8 As the trade
name refers to the business and its goodwill ... the
trademark refers to the goods." 9 The ownership of a
trademark or tradename is a property right which the
owner is entitled to protect "since there is damage to
him from confusion or reputation or goodwill in the
mind of the public as well as from confusion of goods.
The modern trend is to give emphasis to the unfairness
of the acts and to classify and treat the issue as
fraud. 10
From a cursory appreciation of the petitioner's
corporate name "CONVERSE RUBBER
CORPORATION,' it is evident that the word
"CONVERSE" is the dominant word which Identifies
petitioner from other corporations engaged in similar
business. Respondent, in the stipulation of facts,
admitted petitioner's existence since 1946 as a duly
organized foreign corporation engaged in the
manufacture of rubber shoes. This admission
necessarily betrays its knowledge of the reputation and
business of petitioner even before it applied for
registration of the trademark in question. Knowing,
therefore, that the word "CONVERSE" belongs to and
is being used by petitioner, and is in fact the dominant
word in petitioner's corporate name, respondent has no
right to appropriate the same for use on its products
which are similar to those being produced by petitioner.
A corporation is entitled to the cancellation of a mark
that is confusingly similar to its corporate
name."11"Appropriation by another of the dominant
part of a corporate name is an infringement."12
Respondent's witness had no Idea why respondent
chose "UNIVERSAL CONVERSE" as trademark and
the record discloses no reasonable explanation for
respondent's use of the word "CONVERSE" in its
trademark. Such unexplained use by respondent of the
dominant word of petitioner's corporate name lends
itself open to the suspicion of fraudulent motive to
trade upon petitioner's reputation, thus:
A boundless choice of words,
phrases and symbols is available to
one who wishes a trademark
sufficient unto itself to distinguish
his product from those of others.
When, however, there is no
reasonable explanation for the
defendant's choice of such a mark
though the field for his selection
was so broad, the inference is
inevitable that it was chosen
deliberately to deceive. 13
The testimony of petitioner's witness, who is a
legitimate trader as well as the invoices evidencing
sales of petitioner's products in the Philippines, give
credence to petitioner's claim that it has earned a
business reputation and goodwill in this country. The
sales invoices submitted by petitioner's lone witness
show that it is the word "CONVERSE" that mainly
Identifies petitioner's products, i.e. "CONVERSE
CHUCK TAYLOR, 14 "CONVERSE ALL
STAR," 15 ALL STAR CONVERSE CHUCK
TAYLOR," 16 or "CONVERSE SHOES CHUCK and
TAYLOR." 17 Thus, contrary to the determination of
the respondent Director of Patents, the word
"CONVERSE" has grown to be Identified with
petitioner's products, and in this sense, has acquired a
second meaning within the context of trademark and
tradename laws.
Furthermore, said sales invoices provide the best proof
that there were actual sales of petitioner's products in
the country and that there was actual use for a
protracted period of petitioner's trademark or part
thereof through these sales. "The most convincing
proof of use of a mark in commerce is testimony of
such witnesses as customers, or the orders of buyers
during a certain period. 18 Petitioner's witness, having
affirmed her lack of business connections with
petitioner, has testified as such customer, supporting
strongly petitioner's move for trademark pre-emption.
The sales of 12 to 20 pairs a month of petitioner's
rubber shoes cannot be considered insignificant,
considering that they appear to be of high expensive
quality, which not too many basketball players can
afford to buy. Any sale made by a legitimate trader
from his store is a commercial act establishing
trademark rights since such sales are made in due
course of business to the general public, not only to
limited individuals. It is a matter of public knowledge
that all brands of goods filter into the market,
indiscriminately sold by jobbers dealers and merchants
not necessarily with the knowledge or consent of the
manufacturer. Such actual sale of goods in the local
market establishes trademark use which serves as the
basis for any action aimed at trademark pre- exemption.
It is a corollary logical deduction that while Converse
Rubber Corporation is not licensed to do business in
the country and is not actually doing business here, it
does not mean that its goods are not being sold here or
that it has not earned a reputation or goodwill as
regards its products. The Director of Patents was,
therefore, remiss in ruling that the proofs of sales
presented "was made by a single witness who had
never dealt with nor had never known opposer
[petitioner] x x x without Opposer having a direct or
indirect hand in the transaction to be the basis of
trademark pre- exemption."
Another factor why respondent's applications should be
denied is the confusing similarity between its
trademark "UNIVERSAL CONVERSE AND
DEVICE" and petitioner's corporate name and/or its
trademarks "CHUCK TAYLOR" and "ALL STAR
DEVICE" which could confuse the purchasing public
to the prejudice of petitioner,
The trademark of respondent "UNIVERSAL
CONVERSE and DEVICE" is imprinted in a circular
manner on the side of its rubber shoes. In the same
manner, the trademark of petitioner which reads
"CONVERSE CHUCK TAYLOR" is imprinted on a
circular base attached to the side of its rubber shoes.
The deteminative factor in ascertaining whether or not
marks are confusingly similar to each other "is not
whether the challenged mark would actually cause
confusion or deception of the purchasers but whether
the use of such mark would likely cause confusion or
mistake on the part of the buying public. It would be
sufficient, for purposes of the law, that the similarity
between the two labels is such that there is a possibility
or likelihood of the purchaser of the older brand
mistaking the new brand for it." 19 Even if not an the
details just mentioned were identical, with the general
appearance alone of the two products, any ordinary, or
even perhaps even [sic] a not too perceptive and
discriminating customer could be deceived ... "20
When the law speaks co-purchaser," the reference is to
ordinary average purchaser. 21 It is not necessary in
either case that the resemblance be sufficient to deceive
experts, dealers, or other persons specially familiar
22
with the trademark or goods involve."
The similarity y in the general appearance of
respondent's trademark and that of petitioner would
evidently create a likelihood of confusion among the
purchasing public. But even assuming, arguendo, that
the trademark sought to be registered by respondent is
distinctively dissimilar from those of the petitioner, the
likelihood of confusion would still subsists, not on the
purchaser's perception of the goods but on the origins
thereof. By appropriating the word "CONVERSE,"
respondent's products are likely to be mistaken as
having been produced by petitioner. "The risk of
damage is not limited to a possible confusion of goods
but also includes confusion of reputation if the public
could reasonably assume that the goods of the parties
23
originated from the same source.
It is unfortunate that respondent Director of Patents has
concluded that since the petitioner is not licensed to do
business in the country and is actually not doing
business on its own in the Philippines, it has no name to
protect iN the forum and thus, it is futile for it to
establish that "CONVERSE" as part of its corporate
name identifies its rubber shoes. That a foreign
corporation has a right to maintain an action in the
forum even if it is not licensed to do business and is not
actually doing business on its own therein has been
enunciated many times by this Court. In La Chemise
Lacoste, S.A. vs. Fernandez, 129 SCRA 373, this
Court, reiterating Western Equipment and Supply Co.
vs. Reyes, 51 Phil. 115, stated that:
... a foreign corporation which has never done any
business in the Philippines and which is unlicensed and
unregistered to do business here, but is widely and
favorably known in the Philippines through the use
therein of its products bearing its corporate and
tradename, has a legal right to maintain an action in the
Philippines to restrain the residents and inhabitants
thereof from organizing a corporation therein bearing
the same name as the foreign corporation, when it
appears that they have personal knowledge of the
existence of such a foreign corporation, and it is
apparent that the purpose of the proposed domestic
corporation is to deal and trade in the same goods as
those of the foreign corporation.
We further held:
xxx xxx xxx
That company is not here seeking to enforce any legal
or control rights arising from or growing out of, any
business which it has transacted in the Philippine
Islands. The sole purpose of the action:
Is to protect its reputation, its corporate name, its
goodwill whenever that reputation, corporate name or
goodwill have, through the natural development of its
trade, established themselves.' And it contends that its
rights to the use of its corporate and trade name:
Is a property right, a right in recess which it may assert
and protect against all the world, in any of the courts of
the world even in jurisdictions where it does not
transact business-just the same as it may protect its
tangible property, real or personal against trespass, or
conversion. Citing sec. 10, Nims on Unfair
Competition and Trademarks and cases cited; secs. 21-
22, Hopkins on Trademarks, Trade Names and Unfair
Competition and cases cited That point is sustained by
the authorities, and is well stated in Hanover Star
Milling Co. vs. Allen and Wheeler Co. [208 Fed., 5131,
in which the syllabus says:
Since it is the trade and not the mark that is to be
protected, a trademark acknowledges no territorial
boundaries of municipalities or states or nations, but
extends to every market where the trader's goods have
become known and Identified by the use of the mark.
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 [corporate 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. " [emphasis supplied]
The object of the Convention is to accord a national of
a member nation extensive protection "against
infringement and other types of unfair competition"
[Vanitary Fair Mills, Inc. vs. T. Eaton Co., 234 F. 2d
6331.
The mandate of the aforementioned Convention finds
implementation in Sec. 37 of RA No. 166, otherwise
known as the Trademark Law:
Sec. 37. Rights of Foreign Registrants-Persons who are
nationals of, domiciled or have a bona fide or effective
business or commercial establishment in any foreign
country, which is a party to an international convention
or treaty relating to marks or tradenames on the
repression of unfair competition to which the
Philippines may be a party, shall be entitled to the
benefits and subject to the provisions of this Act . . . ...
Tradenames of persons described in the first paragraph
of this section shall be protected without the obligation
of filing or registration whether or not they form parts
of marks. [emphasis supplied]
G.R. No. 114508 November 19, 1999
WHEREFORE, the decision of the Director of Patents
PRIBHDAS J. MIRPURI, petitioner,
is hereby set aside and a new one entered denying
vs.
Respondent Universal Rubber Products, Inc.'s
COURT OF APPEALS, DIRECTOR OF
application for registration of the trademark
PATENTS and the BARBIZON
"UNIVERSAL CONVERSE AND DEVICE" on its
CORPORATION, respondents.
rubber shoes and slippers.
SO ORDERED.
PUNO, J.:
The Convention of Paris for the Protection of Industrial
Property is a multi-lateral treaty which the Philippines
bound itself to honor and enforce in this country. As to
whether or not the treaty affords protection to a foreign
corporation against a Philippine applicant for the
registration of a similar trademark is the principal issue
in this case.
On June 15, 1970, one Lolita Escobar, the predecessor-
in-interest of petitioner Pribhdas J. Mirpuri, filed an
application with the Bureau of Patents for the
registration of the trademark "Barbizon" for use in
brassieres and ladies undergarments. Escobar alleged
that she had been manufacturing and selling these
products under the firm name "L & BM Commercial"
since March 3, 1970.
Private respondent Barbizon Corporation, a corporation
organized and doing business under the laws of New
York, U.S.A., opposed the application. It claimed that:
The mark BARBIZON of
respondent-applicant is confusingly
similar to the trademark
BARBIZON which opposer owns
and has not abandoned.
That opposer will be damaged by
the registration of the mark
BARBIZON and its business
reputation and goodwill will suffer
great and irreparable injury.
That the respondent-applicant's use
of the said mark BARBIZON
which resembles the trademark
used and owned by opposer,
constitutes an unlawful
appropriation of a mark previously
used in the Philippines and not
abandoned and therefore a statutory
violation of Section 4 (d) of
Republic Act No. 166, as
amended. 1 the sole and exclusive distributor of Escobar's
This was docketed as Inter Partes Case No.
686 (IPC No. 686). After filing of the
pleadings, the parties submitted the case for
decision.
On June 18, 1974, the Director of Patents rendered
judgment dismissing the opposition and giving due
course to Escobar's application, thus:
WHEREFORE, the opposition
should be, as it is hereby,
DISMISSED. Accordingly,
Application Serial No. 19010 for
the registration of the trademark
BARBIZON, of respondent Lolita
R. Escobar, is given due course.
2
IT IS SO ORDERED.
This decision became final and on September
11, 1974, Lolita Escobar was issued a
certificate of registration for the trademark
"Barbizon." The trademark was "for use in
"brassieres and lady's underwear garments
like panties." 3
Escobar later assigned all her rights and interest over
the trademark to petitioner Pribhdas J. Mirpuri who,
under his firm name then, the "Bonito Enterprises," was
"Barbizon" products.
In 1979, however, Escobar failed to file with the
Bureau of Patents the Affidavit of Use of the trademark
required under Section 12 of Republic Act (R.A.) No.
166, the Philippine Trademark Law. Due to this failure,
the Bureau of Patents cancelled Escobar's certificate of
registration.
On May 27, 1981, Escobar reapplied for registration of
the cancelled trademark. Mirpuri filed his own
application for registration of Escobar's trademark.
Escobar later assigned her application to herein
petitioner and this application was opposed by private
respondent. The case was docketed as Inter Partes Case
No. 2049 (IPC No. 2049).
In its opposition, private respondent alleged that:
(a) The Opposer has adopted the trademark
BARBIZON (word), sometime in June 1933 and has
then used it on various kinds of wearing apparel. On
August 14, 1934, Opposer obtained from the United
States Patent Office a more recent registration of the
said mark under Certificate of Registration No.
316,161. On March 1, 1949, Opposer obtained from the
United States Patent Office a more recent registration
for the said trademark under Certificate of Registration
No. 507,214, a copy of which is herewith attached as
Annex "A." Said Certificate of Registration covers the
following goods — wearing apparel: robes, pajamas,
lingerie, nightgowns and slips;
(b) Sometime in March 1976, Opposer further adopted
the trademark BARBIZON and Bee design and used
the said mark in various kinds of wearing apparel. On
March 15, 1977, Opposer secured from the United
States Patent Office a registration of the said mark
under Certificate of Registration No. 1,061,277, a copy
of which is herein enclosed as Annex "B." The said
Certificate of Registration covers the following goods:
robes, pajamas, lingerie, nightgowns and slips;
(c) Still further, sometime in 1961, Opposer adopted
the trademark BARBIZON and a Representation of a
Woman and thereafter used the said trademark on
various kinds of wearing apparel. Opposer obtained
from the United States Patent Office registration of the
said mark on April 5, 1983 under Certificate of
Registration No. 1,233,666 for the following goods:
wearing apparel: robes, pajamas, nightgowns and
lingerie. A copy of the said certificate of registration is
herewith enclosed as Annex "C."
(d) All the above registrations are subsisting and in
force and Opposer has not abandoned the use of the
said trademarks. In fact, Opposer, through a wholly-
owned Philippine subsidiary, the Philippine Lingerie
Corporation, has been manufacturing the goods
covered by said registrations and selling them to
various countries, thereby earning valuable foreign
exchange for the country. As a result of respondent-
applicant's misappropriation of Opposer's BARBIZON
trademark, Philippine Lingerie Corporation is
prevented from selling its goods in the local market, to
the damage and prejudice of Opposer and its wholly-
owned subsidiary.
(e) The Opposer's goods bearing the trademark
BARBIZON have been used in many countries,
including the Philippines, for at least 40 years and has
enjoyed international reputation and good will for their
quality. To protect its registrations in countries where
the goods covered by the registrations are being sold,
Opposer has procured the registration of the trademark
BARBIZON in the following countries: Australia,
Austria, Abu Dhabi, Argentina, Belgium, Bolivia,
Bahrain, Canada, Chile, Colombia, Denmark, Ecuador,
France, West Germany, Greece, Guatemala, Hongkong,
Honduras, Italy, Japan, Jordan, Lebanon, Mexico,
Morocco, Panama, New Zealand, Norway, Sweden,
Switzerland, Syria, El Salvador, South Africa, Zambia,
Egypt, and Iran, among others;
(f) To enhance its international reputation for quality
goods and to further promote goodwill over its name,
marks and products, Opposer has extensively
advertised its products, trademarks and name in various
publications which are circulated in the United States
and many countries around the world, including the
Philippines;
(g) The trademark BARBIZON was fraudulently
registered in the Philippines by one Lolita R. Escobar
under Registration No. 21920, issued on September 11,
1974, in violation of Article 189 (3) of the Revised
Penal Code and Section 4 (d) of the Trademark Law.
Herein respondent applicant acquired by assignment
the "rights" to the said mark previously registered by
Lolita Escobar, hence respondent-applicant's title is
vitiated by the same fraud and criminal act. Besides,
Certificate of Registration No. 21920 has been
cancelled for failure of either Lolita Escobar or herein
respondent-applicant, to seasonably file the statutory
affidavit of use. By applying for a re-registration of the
mark BARBIZON subject of this opposition,
respondent-applicant seeks to perpetuate the fraud and
criminal act committed by Lolita Escobar.
(h) Opposer's BARBIZON as well as its BARBIZON
and Bee Design and BARBIZON and Representation
of a Woman trademarks qualify as well-known
trademarks entitled to protection under Article 6bis of
the Convention of Paris for the Protection of Industrial
Property and further amplified by the Memorandum of
the Minister of Trade to the Honorable Director of
Patents dated October 25, 1983 [sic], 4 Executive Order
No. 913 dated October 7, 1963 and the Memorandum
of the Minister of Trade and Industry to the Honorable
Director of Patents dated October 25, 1983.
(i) The trademark applied for by respondent applicant is
identical to Opposer's BARBIZON trademark and
constitutes the dominant part of Opposer's two other
marks namely, BARBIZON and Bee design and
BARBIZON and a Representation of a Woman. The
continued use by respondent-applicant of Opposer's
trademark BARBIZON on goods belonging to Class 25
constitutes a clear case of commercial and criminal
piracy and if allowed registration will violate not only
the Trademark Law but also Article 189 of the Revised
Penal Code and the commitment of the Philippines to
an international treaty. 5 Meanwhile, in IPC No. 2049, the evidence of both
Replying to private respondent's opposition,
petitioner raised the defense of res judicata.
On March 2, 1982, Escobar assigned to petitioner the
use of the business name "Barbizon International."
Petitioner registered the name with the Department of
Trade and Industry (DTI) for which a certificate of
registration was issued in 1987.
Forthwith, private respondent filed before the Office of
Legal Affairs of the DTI a petition for cancellation of
petitioner's business name.
On November 26, 1991, the DTI, Office of Legal
Affairs, cancelled petitioner's certificate of registration,
and declared private respondent the owner and prior
user of the business name "Barbizon International."
Thus:
WHEREFORE, the petition is
hereby GRANTED and petitioner
is declared the owner and prior user
of the business name "BARBIZON
INTERNATIONAL" under
Certificate of Registration No. 87-
09000 dated March 10, 1987 and
issued in the name of respondent, is
[sic] hereby ordered revoked and
6
cancelled. . . . .
parties were received by the Director of Patents. On
June 18, 1992, the Director rendered a decision
declaring private respondent's opposition barred by res
judicata and giving due course to petitioner's
application for registration, to wit:
WHEREFORE, the present
Opposition in Inter Partes Case No.
2049 is hereby DECLARED
BARRED by res judicata and is
hereby DISMISSED. Accordingly,
Application Serial No. 45011 for
trademark BARBIZON filed by
Pribhdas J. Mirpuri is GIVEN DUE
COURSE.
SO ORDERED. 7
Private respondent questioned this decision before the
Court of Appeals in CA-G.R. SP No. 28415. On April
30, 1993, the Court of Appeals reversed the Director of
Patents finding that IPC No. 686 was not barred by
judgment in IPC No. 2049 and ordered that the case be
remanded to the Bureau of Patents for further
proceedings, viz:
WHEREFORE, the appealed
Decision No. 92-13 dated June 18,
1992 of the Director of Patents in
Inter Partes Case No. 2049 is
hereby SET ASIDE; and the case is
hereby remanded to the Bureau of
Patents for further proceedings, in
accordance with this
pronouncement. No costs. 8
In a Resolution dated March 16, 1994, the
Court of Appeals denied reconsideration of
its decision. 9 Hence, this recourse.
Before us, petitioner raises the following issues:
1. WHETHER OR NOT THE DECISION OF THE
DIRECTOR OF PATENTS IN INTER PARTES
CASE NO. 686 RENDERED ON JUNE 18, 1974,
ANNEX C HEREOF, CONSTITUTED RES
JUDICATA IN SO FAR AS THE CASE BEFORE
THE DIRECTOR OF PATENTS IS CONCERNED;
2. WHETHER OR NOT THE DIRECTOR OF
PATENTS CORRECTLY APPLIED THE
PRINCIPLE OFRES JUDICATA IN DISMISSING
PRIVATE RESPONDENT BARBIZON'S
OPPOSITION TO PETITIONER'S APPLICATION
FOR REGISTRATION FOR THE TRADEMARK
BARBIZON, WHICH HAS SINCE RIPENED TO
CERTIFICATE OF REGISTRATION NO. 53920 ON
NOVEMBER 16, 1992;
3. WHETHER OR NOT THE REQUISITE THAT A
"JUDGMENT ON THE MERITS" REQUIRED A
"HEARING WHERE BOTH PARTIES ARE
SUPPOSED TO ADDUCE EVIDENCE" AND
WHETHER THE JOINT SUBMISSION OF THE
PARTIES TO A CASE ON THE BASIS OF THEIR
RESPECTIVE PLEADINGS WITHOUT
PRESENTING TESTIMONIAL OR
DOCUMENTARY EVIDENCE FALLS WITHIN
THE MEANING OF "JUDGMENT ON THE
MERITS" AS ONE OF THE REQUISITES TO
CONSTITUTE RES JUDICATA;
4. WHETHER A DECISION OF THE
DEPARTMENT OF TRADE AND INDUSTRY
CANCELLING PETITIONER'S FIRM NAME
"BARBIZON INTERNATIONAL" AND WHICH
DECISION IS STILL PENDING
RECONSIDERATION NEVER OFFERED IN
EVIDENCE BEFORE THE DIRECTOR OF
PATENTS IN INTER PARTES CASE NO. 2049 HAS
THE RIGHT TO DECIDE SUCH CANCELLATION
NOT ON THE BASIS OF THE BUSINESS NAME
LAW (AS IMPLEMENTED BY THE BUREAU OF
DOMESTIC TRADE) BUT ON THE BASIS OF THE
PARIS CONVENTION AND THE TRADEMARK
LAW (R.A. 166) WHICH IS WITHIN THE
ORIGINAL AND EXCLUSIVE JURISDICTION OF
10
THE DIRECTOR OF PATENTS.
Before ruling on the issues of the case, there is need for
a brief background on the function and historical
development of trademarks and trademark law.
A "trademark" is defined under R.A. 166, the
Trademark Law, as including "any word, name,
symbol, emblem, sign or device or any combination
thereof adopted and used by a manufacturer or
merchant to identify his goods and distinguish them
from those manufactured, sold or dealt in by
others. 11 This definition has been simplified in R.A.
No. 8293, the Intellectual Property Code of the
Philippines, which defines a "trademark" as "any
visible sign capable of distinguishing goods." 12 In
Philippine jurisprudence, the function of a trademark is
to point out distinctly the origin or ownership of the
goods to which it is affixed; to secure to him, who has
been instrumental in bringing into the market a superior
article of merchandise, the fruit of his industry and
skill; to assure the public that they are procuring the
genuine article; to prevent fraud and imposition; and to
protect the manufacturer against substitution and sale
13
of an inferior and different article as his product.
Modern authorities on trademark law view trademarks
as performing three distinct functions: (1) they indicate
origin or ownership of the articles to which they are
attached; (2) they guarantee that those articles come up
to a certain standard of quality; and (3) they advertise
the articles they symbolize. 14
Symbols have been used to identify the ownership or
origin of articles for several centuries. 15 As early as
5,000 B.C., markings on pottery have been found by
archaeologists. Cave drawings in southwestern Europe
show bison with symbols on their
flanks. 16 Archaeological discoveries of ancient Greek
and Roman inscriptions on sculptural works, paintings,
vases, precious stones, glassworks, bricks, etc. reveal
some features which are thought to be marks or
symbols. These marks were affixed by the creator or
maker of the article, or by public authorities as
indicators for the payment of tax, for disclosing state
monopoly, or devices for the settlement of accounts
between an entrepreneur and his workmen. 17
In the Middle Ages, the use of many kinds of marks on
a variety of goods was commonplace. Fifteenth century
England saw the compulsory use of identifying marks
in certain trades. There were the baker's mark on bread,
bottlemaker's marks, smith's marks, tanner's marks,
watermarks on paper, etc. 18 Every guild had its own
mark and every master belonging to it had a special
mark of his own. The marks were not trademarks but
police marks compulsorily imposed by the sovereign to
let the public know that the goods were not "foreign"
goods smuggled into an area where the guild had a
monopoly, as well as to aid in tracing defective work or
19
poor craftsmanship to the artisan. For a similar
reason, merchants also used merchants' marks.
Merchants dealt in goods acquired from many sources
and the marks enabled them to identify and reclaim
their goods upon recovery after shipwreck or piracy. 20
With constant use, the mark acquired popularity and
became voluntarily adopted. It was not intended to
create or continue monopoly but to give the customer
an index or guarantee of quality. 21 It was in the late
18th century when the industrial revolution gave rise to
mass production and distribution of consumer goods
that the mark became an important instrumentality of
22
trade and commerce. By this time, trademarks did
not merely identify the goods; they also indicated the
goods to be of satisfactory quality, and thereby
stimulated further purchases by the consuming
public. 23 Eventually, they came to symbolize the
goodwill and business reputation of the owner of the
product and became a property right protected by
24
law. The common law developed the doctrine of
trademarks and tradenames "to prevent a person from
palming off his goods as another's, from getting
another's business or injuring his reputation by unfair
means, and, from defrauding the
public." 25 Subsequently, England and the United States
enacted national legislation on trademarks as part of the
law regulating unfair trade. 26 It became the right of the
trademark owner to exclude others from the use of his
mark, or of a confusingly similar mark where confusion
resulted in diversion of trade or financial injury. At the
same time, the trademark served as a warning against
the imitation or faking of products to prevent the
27
imposition of fraud upon the public.
Today, the trademark is not merely a symbol of origin
and goodwill; it is often the most effective agent for the
actual creation and protection of goodwill. It imprints
upon the public mind an anonymous and impersonal
guaranty of satisfaction, creating a desire for further
satisfaction. In other words, the mark actually sells the
goods. 28 The mark has become the "silent salesman,"
the conduit through which direct contact between the
trademark owner and the consumer is assured. It has
invaded popular culture in ways never anticipated that
it has become a more convincing selling point than
even the quality of the article to which it refers. 29 In
the last half century, the unparalleled growth of
industry and the rapid development of communications
technology have enabled trademarks, tradenames and
other distinctive signs of a product to penetrate regions
where the owner does not actually manufacture or sell
the product itself. Goodwill is no longer confined to the
territory of actual market penetration; it extends to
zones where the marked article has been fixed in the
30
public mind through advertising. Whether in the
print, broadcast or electronic communications medium,
particularly on the Internet, 31 advertising has paved the
way for growth and expansion of the product by
creating and earning a reputation that crosses over
borders, virtually turning the whole world into one vast
marketplace.
This is the mise-en-scene of the present controversy.
Petitioner brings this action claiming that "Barbizon"
products have been sold in the Philippines since 1970.
Petitioner developed this market by working long hours
and spending considerable sums of money on
advertisements and promotion of the trademark and its
products. Now, almost thirty years later, private
respondent, a foreign corporation, "swaggers into the
country like a conquering hero," usurps the trademark
and invades petitioner's market. 32 Justice and fairness
dictate that private respondent be prevented from
appropriating what is not its own. Legally, at the same
time, private respondent is barred from questioning
petitioner's ownership of the trademark because of res
judicata. 33
Literally, res judicata means a matter adjudged, a thing
judicially acted upon or decided; a thing or matter
settled by judgment. 34 In res judicata, the judgment in
the first action is considered conclusive as to every
matter offered and received therein, as to any other
admissible matter which might have been offered for
that purpose, and all other matters that could have been
adjudged therein. 35 Res judicata is an absolute bar to a
subsequent action for the same cause; and its requisites
are: (a) the former judgment or order must be final; (b)
the judgment or order must be one on the merits; (c) it
must have been rendered by a court having jurisdiction
over the subject matter and parties; (d) there must be
between the first and second actions, identity of parties,
of subject matter and of causes of action.36
The Solicitor General, on behalf of respondent Director
of Patents, has joined cause with petitioner. Both claim
that all the four elements of res judicata have been
complied with: that the judgment in IPC No. 686 was
final and was rendered by the Director of Patents who
had jurisdiction over the subject matter and parties; that
the judgment in IPC No. 686 was on the merits; and
that the lack of a hearing was immaterial because
substantial issues were raised by the parties and passed
upon by the Director of Patents. 37
The decision in IPC No. 686 reads as follows:
xxx xxx xxx.
Neither party took testimony nor adduced documentary
evidence. They submitted the case for decision based
on the pleadings which, together with the pertinent
records, have all been carefully considered.
Accordingly, the only issue for my disposition is
whether or not the herein opposer would probably be
damaged by the registration of the trademark
BARBIZON sought by the respondent-applicant on the
ground that it so resembles the trademark BARBIZON
allegedly used and owned by the former to be "likely to
cause confusion, mistake or to deceive purchasers."
On record, there can be no doubt that respondent-
applicant's sought-to-be-registered trademark
BARBIZON is similar, in fact obviously identical, to
opposer's alleged trademark BARBIZON, in spelling
and pronunciation. The only appreciable but very
negligible difference lies in their respective
appearances or manner of presentation. Respondent-
applicant's trademark is in bold letters (set against a
black background), while that of the opposer is offered
in stylish script letters.
It is opposer's assertion that its trademark BARBIZON
has been used in trade or commerce in the Philippines
prior to the date of application for the registration of the
identical mark BARBIZON by the respondent-
applicant. However, the allegation of facts in opposer's
verified notice of opposition is devoid of such material
information. In fact, a reading of the text of said
verified opposition reveals an apparent, if not
deliberate, omission of the date (or year) when
opposer's alleged trademark BARBIZON was first used
in trade in the Philippines (see par. No. 1, p. 2, Verified
Notice of Opposition, Rec.). Thus, it cannot here and
now be ascertained whether opposer's alleged use of the
trademark BARBIZON could be prior to the use of the
identical mark by the herein respondent-applicant,
since the opposer attempted neither to substantiate its
claim of use in local commerce with any proof or
evidence. Instead, the opposer submitted the case for
decision based merely on the pleadings.
On the other hand, respondent-applicant asserted in her
amended application for registration that she first used
the trademark BARBIZON for brassiere (or
"brasseire") and ladies underwear garments and panties
as early as March 3, 1970. Be that as it may, there
being no testimony taken as to said date of first use,
respondent-applicant will be limited to the filing date,
June 15, 1970, of her application as the date of first use
(Rule 173, Rules of Practice in Trademark Cases).
From the foregoing, I conclude that the opposer has not
made out a case of probable damage by the registration
of the respondent-applicant's mark BARBIZON.
WHEREFORE, the opposition should be, as it is
hereby, DISMISSED. Accordingly, Application Serial
No. 19010, for the registration of the trademark
BARBIZON of respondent Lolita R. Escobar, is given
due course.38
The decision in IPC No. 686 was a judgment on the
merits and it was error for the Court of Appeals to rule
that it was not. A judgment is on the merits when it
determines the rights and liabilities of the parties based
on the disclosed facts, irrespective of formal, technical
or dilatory objections. 39 It is not necessary that a trial
should have been conducted. If the court's judgment is
general, and not based on any technical defect or
objection, and the parties had a full legal opportunity to
be heard on their respective claims and contentions, it
is on the merits although there was no actual hearing or
arguments on the facts of the case. 40 In the case at bar,
the Director of Patents did not dismiss private
respondent's opposition on a sheer technicality.
Although no hearing was conducted, both parties filed
their respective pleadings and were given opportunity
to present evidence. They, however, waived their right
to do so and submitted the case for decision based on
their pleadings. The lack of evidence did not deter the
Director of Patents from ruling on the case, particularly
on the issue of prior use, which goes into the very
substance of the relief sought by the parties. Since
private respondent failed to prove prior use of its
trademark, Escobar's claim of first use was upheld.
The judgment in IPC No. 686 being on the merits,
petitioner and the Solicitor General allege that IPC No.
686 and IPC No. 2049 also comply with the fourth
requisite of res judicata, i.e., they involve the same
parties and the same subject matter, and have identical
causes of action.
Undisputedly, IPC No. 686 and IPC No. 2049 involve
the same parties and the same subject matter. Petitioner
herein is the assignee of Escobar while private
respondent is the same American corporation in the
first case. The subject matter of both cases is the
trademark "Barbizon." Private respondent counter-
argues, however, that the two cases do not have
identical causes of action. New causes of action were
allegedly introduced in IPC No. 2049, such as the prior
use and registration of the trademark in the United
States and other countries worldwide, prior use in the
Philippines, and the fraudulent registration of the mark
in violation of Article 189 of the Revised Penal Code.
Private respondent also cited protection of the
trademark under the Convention of Paris for the
Protection of Industrial Property, specifically Article
6bis thereof, and the implementation of Article 6bis by
two Memoranda dated November 20, 1980 and October
25, 1983 of the Minister of Trade and Industry to the
Director of Patents, as well as Executive Order (E.O.)
No. 913.
The Convention of Paris for the Protection of Industrial
Property, otherwise known as 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. 41 The Convention is essentially a compact
among various countries which, as members of the
Union, have pledged to accord to citizens of the other
member countries trademark and other rights
comparable to those accorded their own citizens by
their domestic laws for an effective protection against
unfair competition. 42 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. 43 Nationals of the various member nations are
thus assured of a certain minimum of international
protection of their industrial property. 44
The Convention was first signed by eleven countries in
Paris on March 20, 1883. 45 It underwent several
revisions — at Brussels in 1900, at Washington in
1911, at The Hague in 1925, at London in 1934, at
Lisbon in 1958, 46 and at Stockholm in 1967. Both the
Philippines and the United States of America, herein
private respondent's country, are signatories to the
Convention. The United States acceded on May 30,
1887 while the Philippines, through its Senate,
concurred on May 10, 1965. 47 The Philippines'
adhesion became effective on September 27,
1965, 48 and from this date, the country obligated itself
to honor and enforce the provisions of the
Convention. 49
In the case at bar, private respondent anchors its cause
of action on the first paragraph of Article 6bis of the
Paris Convention which reads as follows:
Article 6bis
(1) The countries of the Union undertake, either
administratively if their legislation so permits, or at the
request of an interested party, to refuse or to cancel the
registration and to prohibit the use, of a trademark
which constitutes a reproduction, an imitation, or a
translation, liable to create confusion, of a mark
considered by the competent authority of the country of
registration or use to be well-known in that country as
being already the mark of a person entitled to the
benefits of this Convention and used for identical or
similar goods. These provisions shall also apply when
the essential part of the mark constitutes a reproduction
of any such well-known mark or an imitation liable to
create confusion therewith.
(2) A period of at least five yearsfrom the date of
registration shall be allowed for seeking the
cancellation of such a mark. The countries of the Union
may provide for a period within which the prohibition
of use must be sought.
(3) No time limit shall be fixed for seeking the
cancellation or the prohibition of the use of marks
50
registered or used in bad faith.
This Article governs protection of well-
known trademarks. Under the first paragraph,
each country of the Union bound itself to
undertake to refuse or cancel the registration,
and prohibit the use of a trademark which is a
reproduction, imitation or translation, or any
essential part of which trademark constitutes
a reproduction, liable to create confusion, of
a mark considered by the competent authority
of the country where protection is sought, to
be well-known in the country as being
already the mark of a person entitled to the
benefits of the Convention, and used for
identical or similar goods.
Art. 6bis was first introduced at The Hague in 1925 and
amended in Lisbon in 1952. 51 It is a self-executing
provision and does not require legislative enactment to
give it effect in the member country. 52
It may be
applied directly by the tribunals and officials of each
member country by the mere publication or
proclamation of the Convention, after its ratification
according to the public law of each state and the order
for its execution. 53
The essential requirement under Article 6bis is that the
trademark to be protected must be "well-known" in the
country where protection is sought. The power to
determine whether a trademark is well-known lies in
the "competent authority of the country of registration
or use." This competent authority would be either the
registering authority if it has the power to decide this,
or the courts of the country in question if the issue
comes before a court.54
Pursuant to Article 6bis, on November 20, 1980, then
Minister Luis Villafuerte of the Ministry of Trade
issued a Memorandum to the Director of Patents. The
Minister ordered the Director that:
Pursuant to the Paris Convention for the Protection of
Industrial Property to which the Philippines is a
signatory, you are hereby directed to reject all pending
applications for Philippine registration of signature and
other world-famous trademarks by applicants other
than its original owners or users.
The conflicting claims over internationally known
trademarks involve such name brands as Lacoste,
Jordache, Vanderbilt, Sasson, Fila, Pierre Cardin,
Gucci, Christian Dior, Oscar de la Renta, Calvin Klein,
Givenchy, Ralph Lauren, Geoffrey Beene, Lanvin and
Ted Lapidus.
It is further directed that, in cases where warranted,
Philippine registrants of such trademarks should be
asked to surrender their certificates of registration, if
any, to avoid suits for damages and other legal action
by the trademarks' foreign or local owners or original
users.
You are also required to submit to
the undersigned a progress report
on the matter.
For immediate compliance. 55
Three years later, on October 25, 1983, then Minister
Roberto Ongpin issued another Memorandum to the
Director of Patents, viz:
Pursuant to Executive Order No. 913 dated 7 October
1983 which strengthens the rule-making and
adjudicatory powers of the Minister of Trade and
Industry and provides inter alia, that "such rule-making
and adjudicatory powers should be revitalized in order
that the Minister of Trade and Industry can . . . apply
more swift and effective solutions and remedies to old
and new problems . . . such as infringement of
internationally-known tradenames and trademarks . . ."
and in view of the decision of the Intermediate
Appellate Court in the case of LA CHEMISE
LACOSTE, S.A., versus RAM SADWHANI [AC-G.R.
SP NO. 13359 (17) June 1983] 56 which affirms the
validity of the MEMORANDUM of then Minister Luis
R. Villafuerte dated 20 November 1980 confirming our
obligations under the PARIS CONVENTION FOR
THE PROTECTION OF INDUSTRIAL PROPERTY
to which the Republic of the Philippines is a signatory,
you are hereby directed to implement measures
necessary to effect compliance with our obligations
under said Convention in general, and, more
specifically, to honor our commitment under
Section 6bis 57 thereof, as follows:
1. Whether the trademark under consideration is well-
known in the Philippines or is a mark already
belonging to a person entitled to the benefits of the
CONVENTION, this should be established, pursuant to
Philippine Patent Office procedures in inter
partes and ex partecases, according to any of the
following criteria or any combination thereof:
(a) a declaration by the Minister of Trade and Industry
that the trademark being considered is already well-
known in the Philippines such that permission for its
use by other than its original owner will constitute a
reproduction, imitation, translation or other
infringement;
(b) that the trademark is used in commerce
internationally, supported by proof that goods bearing
the trademark are sold on an international scale,
advertisements, the establishment of factories, sales
offices, distributorships, and the like, in different
countries, including volume or other measure of
international trade and commerce;
(c) that the trademark is duly registered in the industrial
property office(s) of another country or countries,
taking into consideration the date of such registration;
(d) that the trademark has long been established and
obtained goodwill and international consumer
recognition as belonging to one owner or source;
(e) that the trademark actually belongs to a party
claiming ownership and has the right to registration
under the provisions of the aforestated PARIS
CONVENTION.
2. The word trademark, as used in this
MEMORANDUM, shall include tradenames, service
marks, logos, signs, emblems, insignia or other similar
devices used for identification and recognition by
consumers.
3. The Philippine Patent Office shall refuse all
applications for, or cancel the registration of,
trademarks which constitute a reproduction, translation
or imitation of a trademark owned by a person, natural
or corporate, who is a citizen of a country signatory to
the PARIS
CONVENTION FOR THE PROTECTION OF
INDUSTRIAL PROPERTY.
4. The Philippine Patent Office shall give due course to
the Opposition in cases already or hereafter filed
against the registration of trademarks entitled to
protection of Section 6bisof said PARIS
CONVENTION as outlined above, by remanding
applications filed by one not entitled to such protection
for final disallowance by the Examination Division.
5. All pending applications for Philippine registration
of signature and other world-famous trademarks filed
by applicants other than their original owners or users
shall be rejected forthwith. Where such applicants have
already obtained registration contrary to the
abovementioned PARIS CONVENTION and/or
Philippine Law, they shall be directed to surrender their
Certificates of Registration to the Philippine Patent
Office for immediate cancellation proceedings.
xxx xxx xxx.
In the Villafuerte Memorandum, the Minister of Trade
instructed the Director of Patents to reject all pending
applications for Philippine registration of signature and
other world-famous trademarks by applicants other
than their original owners or users. The Minister
enumerated several internationally-known trademarks
and ordered the Director of Patents to require
Philippine registrants of such marks to surrender their
certificates of registration.
In the Ongpin Memorandum, the Minister of Trade and
Industry did not enumerate well-known trademarks but
laid down guidelines for the Director of Patents to
observe in determining whether a trademark is entitled
to protection as a well-known mark in the Philippines
under Article 6bis of the Paris Convention. This was to
be established through Philippine Patent Office
procedures in inter partes and ex parte cases pursuant
to the criteria enumerated therein. The Philippine
Patent Office was ordered to refuse applications for, or
cancel the registration of, trademarks which constitute a
reproduction, translation or imitation of a trademark
owned by a person who is a citizen of a member of the
Union. All pending applications for registration of
world-famous trademarks by persons other than their
original owners were to be rejected forthwith. The
Ongpin Memorandum was issued pursuant to
Executive Order No. 913 dated October 7, 1983 of then
President Marcos which strengthened the rule-making
and adjudicatory powers of the Minister of Trade and
Industry for the effective protection of consumers and
the application of swift solutions to problems in trade
and industry. 59
Both the Villafuerte and Ongpin Memoranda were
sustained by the Supreme Court in the 1984 landmark
60
case of La Chemise Lacoste, S.A. v. Fernandez.
court ruled therein that under the provisions of Article
6bis of the Paris Convention, the Minister of Trade and
Industry was the "competent authority" to determine
whether a trademark is well-known in this country.
The Villafuerte Memorandum was issued in 1980, i.e.,
fifteen (15) years after the adoption of the Paris
Convention in 1965. In the case at bar, the first inter
partes case, IPC No. 686, was filed in 1970, before the
Villafuerte Memorandum but five (5) years after the
effectivity of the Paris Convention. Article 6bis was
already in effect five years before the first case was
instituted. Private respondent, however, did not cite the
protection of Article 6bis, neither did it mention the
Paris Convention at all. It was only in 1981 when IPC
No. 2049 was instituted that the Paris Convention and
the Villafuerte Memorandum, and, during the pendency
of the case, the 1983 Ongpin Memorandum were
invoked by private respondent.
The Solicitor General argues that the issue of whether
the protection of Article 6bis of the Convention and the
two Memoranda is barred by res judicata has already
been answered in Wolverine Worldwide, Inc. v. Court
of
Appeals. 62 In this case, petitioner Wolverine, a foreign
corporation, filed with the Philippine Patent Office a
petition for cancellation of the registration certificate of
private respondent, a Filipino citizen, for the trademark
"Hush Puppies" and "Dog Device." Petitioner alleged
that it was the registrant of the internationally-known
This trademark in the United States and other countries, and
cited protection under the Paris Convention and the
Ongpin Memorandum. The petition was dismissed by
the Patent Office on the ground of res judicata. It was
61
found that in 1973 petitioner's predecessor-in-interest
filed two petitions for cancellation of the same
trademark against respondent's predecessor-in-interest.
The Patent Office dismissed the petitions, ordered the
cancellation of registration of petitioner's trademark,
and gave due course to respondent's application for
registration. This decision was sustained by the Court
of Appeals, which decision was not elevated to us and
became final and
executory. 63
Wolverine claimed that while its previous petitions
were filed under R.A. No. 166, the Trademark Law, its
subsequent petition was based on a new cause of
action, i.e., the Ongpin Memorandum and E.O. No. 913
issued in 1983, after finality of the previous decision.
We held that the said Memorandum and E.O. did not
grant a new cause of action because it did "not amend
the Trademark Law," . . . "nor did it indicate a new
policy with respect to the registration in the Philippines
of world-famous trademarks." 64 This conclusion was
based on the finding that Wolverine's two previous
petitions and subsequent petition dealt with the same
issue of ownership of the trademark.65 In other words,
since the first and second cases involved the same issue
of ownership, then the first case was a bar to the second
case.
In the instant case, the issue of ownership of the
trademark "Barbizon" was not raised in IPC No. 686.
Private respondent's opposition therein was merely
anchored on:
(a) "confusing similarity" of its trademark with that of
Escobar's;
(b) that the registration of Escobar's similar trademark
will cause damage to private respondent's business
reputation and goodwill; and
(c) that Escobar's use of the trademark amounts to an
unlawful appropriation of a mark previously used in the
Philippines which act is penalized under Section 4 (d)
of the Trademark Law.
In IPC No. 2049, private respondent's
opposition set forth several issues
summarized as follows:
(a) as early as 1933, it adopted the word "BARBIZON"
as trademark on its products such as robes, pajamas,
lingerie, nightgowns and slips;
(b) that the trademark "BARBIZON" was registered
with the United States Patent Office in 1934 and 1949;
and that variations of the same trademark, i.e.,
"BARBIZON" with Bee design and "BARBIZON"
with the representation of a woman were also registered
with the U.S. Patent Office in 1961 and 1976;
(c) that these marks have been in use in the Philippines
and in many countries all over the world for over forty
years. "Barbizon" products have been advertised in
international publications and the marks registered in
36 countries worldwide;
(d) Escobar's registration of the similar trademark
"BARBIZON" in 1974 was based on fraud; and this
fraudulent registration was cancelled in 1979, stripping
Escobar of whatsoever right she had to the said mark;
(e) Private respondent's trademark is entitled to
protection as a well-known mark under Article 6bis of
the Paris Convention, Executive Order No. 913, and the
two Memoranda dated November 20, 1980 and October
25, 1983 of the Minister of Trade and Industry to the
Director of Patents;
(f) Escobar's trademark is identical
to private respondent's and its use
on the same class of goods as the
latter's amounts to a violation of the
Trademark Law and Article 189 of
the Revised Penal Code.
IPC No. 2049 raised the issue of ownership
of the trademark, the first registration and use
of the trademark in the United States and
other countries, and the international
recognition and reputation of the trademark
established by extensive use and
advertisement of private respondent's
products for over forty years here and abroad.
These are different from the issues of
confusing similarity and damage in IPC No.
686. The issue of prior use may have been
raised in IPC No. 686 but this claim was
limited to prior use in the Philippines only.
Prior use in IPC No. 2049 stems from private
respondent's claim as originator of the word
66
and symbol "Barbizon," as the first and
registered user of the mark attached to its
products which have been sold and advertised
worldwide for a considerable number of
years prior to petitioner's first application for
registration of her trademark in the
Philippines. Indeed, these are substantial
allegations that raised new issues and
necessarily gave private respondent a new
cause of action. Res judicata does not apply
to rights, claims or demands, although
growing out of the same subject matter,
which constitute separate or distinct causes of
action and were not put in issue in the former
action. 67
Respondent corporation also introduced in the second
case a fact that did not exist at the time the first case
was filed and terminated. The cancellation of
petitioner's certificate of registration for failure to file
the affidavit of use arose only after IPC No. 686. It did
not and could not have occurred in the first case, and
this gave respondent another cause to oppose the
second application. Res judicata extends only to facts
and conditions as they existed at the time judgment was
rendered and to the legal rights and relations of the
parties fixed by the facts so determined. 68 When new
facts or conditions intervene before the second suit,
furnishing a new basis for the claims and defenses of
the parties, the issues are no longer the same, and the
former judgment cannot be pleaded as a bar to the
subsequent action. 69
It is also noted that the oppositions in the first and
second cases are based on different laws. The
opposition in IPC No. 686 was based on specific
provisions of the Trademark Law, i.e., Section 4
(d) 70 on confusing similarity of trademarks and Section
8 71 on the requisite damage to file an opposition to a
petition for registration. The opposition in IPC No.
2049 invoked the Paris Convention, particularly Article
6bis thereof, E.O. No. 913 and the two Memoranda of
the Minister of Trade and Industry. This opposition
also invoked Article 189 of the Revised Penal Code
which is a statute totally different from the Trademark
72
Law. Causes of action which are distinct and
independent from each other, although arising out of
the same contract, transaction, or state of facts, may be
sued on separately, recovery on one being no bar to
73
subsequent actions on others. The mere fact that the
same relief is sought in the subsequent action will not
render the judgment in the prior action operative as res
judicata, such as where the two actions are based on
74
different statutes. Res judicata therefore does not
apply to the instant case and respondent Court of
Appeals did not err in so ruling.
Intellectual and industrial property rights cases are not
simple property cases. Trademarks deal with the
psychological function of symbols and the effect of
75
these symbols on the public at large. Trademarks
play a significant role in communication, commerce
and trade, and serve valuable and interrelated business
functions, both nationally and internationally. For this
reason, all agreements concerning industrial property,
like those on trademarks and tradenames, are intimately
76
connected with economic development. Industrial
property encourages investments in new ideas and
inventions and stimulates creative efforts for the
satisfaction of human needs. They speed up transfer of
technology and industrialization, and thereby bring
77
about social and economic progress. These
advantages have been acknowledged by the Philippine
government itself. The Intellectual Property Code of
the Philippines declares that "an effective intellectual
and industrial property system is vital to the
development of domestic and creative activity,
facilitates transfer of technology, it attracts foreign
investments, and ensures market access for our
78
products." The Intellectual Property Code took effect
on January 1, 1998 and by its express
79 80
provision, repealed the Trademark Law, the Patent
81
Law, Articles 188 and 189 of the Revised Penal
Code, the Decree on Intellectual Property, 82 and the
Decree on Compulsory Reprinting of Foreign
83
Textbooks. The Code was enacted to strengthen the
intellectual and industrial property system in the
Philippines as mandated by the country's accession to
the Agreement Establishing the World Trade
Organization (WTO). 84
The WTO is a common institutional framework for the
conduct of trade relations among its members in
matters related to the multilateral and plurilateral trade
85
agreements annexed to the WTO Agreement. The
WTO framework ensures a "single undertaking
approach" to the administration and operation of all
agreements and arrangements attached to the WTO
Agreement. Among those annexed is the Agreement on
Trade-Related Aspects of Intellectual Property Rights
or TRIPs. 86 Members to this Agreement "desire to
reduce distortions and impediments to international
trade, taking into account the need to promote effective
and adequate protection of intellectual property rights,
and to ensure that measures and procedures to enforce
intellectual property rights do not themselves become
barriers to legitimate trade." To fulfill these objectives,
the members have agreed to adhere to minimum
standards of protection set by several
Conventions. 87 These Conventions are: the Berne
Convention for the Protection of Literary and Artistic
Works (1971), the Rome Convention or the
International Convention for the Protection of
Performers, Producers of Phonograms and
Broadcasting Organisations, the Treaty on Intellectual
Property in Respect of Integrated Circuits, and the
Paris Convention (1967), as revised in Stockholm on
July 14, 1967. 88
A major proportion of international trade depends on
the protection of intellectual property rights. 89 Since
the late 1970's, the unauthorized counterfeiting of
industrial property and trademarked products has had a
considerable adverse impact on domestic and
international trade revenues. 90 The TRIPs Agreement
seeks to grant adequate protection of intellectual
property rights by creating a favorable economic
environment to encourage the inflow of foreign
investments, and strengthening the multi-lateral trading
system to bring about economic, cultural and
technological independence. 91
The Philippines and the United States of America have
acceded to the WTO Agreement. This Agreement has
revolutionized international business and economic The Antecedent Facts
relations among states, and has propelled the world
towards trade liberalization and economic On 10 August 2005, petitioner Fredco Manufacturing
globalization. 92 Protectionism and isolationism belong Corporation (Fredco), a corporation organized and
to the past. Trade is no longer confined to a bilateral existing under the laws of the Philippines, filed a
system. There is now "a new era of global economic Petition for Cancellation of Registration No. 56561
cooperation, reflecting the widespread desire to operate before the Bureau of Legal Affairs of the Intellectual
in a fairer and more open multilateral trading Property Office (IPO) against respondents President
system." 93 Conformably, the State must reaffirm its and Fellows of Harvard College (Harvard University),
commitment to the global community and take part in a corporation organized and existing under the laws of
evolving a new international economic order at the Massachusetts, United States of America. The case was
dawn of the new millenium. docketed as Inter Partes Case No. 14-2005-00094.

IN VIEW WHEREOF, the petition is denied and the Fredco alleged that Registration No. 56561 was issued
G.R. No. 185917 June 1, 2011
Decision and Resolution of the Court of Appeals in to Harvard University on 25 November 1993 for the
CA-G.R. SP No. 28415 are affirmed. mark "Harvard Veritas Shield Symbol" for decals, tote
FREDCO MANUFACTURING
bags, serving trays, sweatshirts, t-shirts, hats and flying
CORPORATION Petitioner,
SO ORDERED. discs under Classes 16, 18, 21, 25 and 28 of the Nice
vs.
International Classification of Goods and Services.
PRESIDENT AND FELLOWS OF HARVARD
Fredco alleged that the mark "Harvard" for t-shirts,
COLLEGE (HARVARD
polo shirts, sandos, briefs, jackets and slacks was first
UNIVERSITY), Respondents.
used in the Philippines on 2 January 1982 by New York
Garments Manufacturing & Export Co., Inc. (New
DECISION
York Garments), a domestic corporation and Fredco’s

CARPIO, J.: predecessor-in-interest. On 24 January 1985, New York

Garments filed for trademark registration of the mark
The Case "Harvard" for goods under Class 25. The application
matured into a registration and a Certificate of
Before the Court is a petition for review1 assailing the Registration was issued on 12 December 1988, with a
24 October 2008 Decision2 and 8 January 2009 20-year term subject to renewal at the end of the term.
Resolution3of the Court of Appeals in CA-G.R. SP No. The registration was later assigned to Romeo Chuateco,
103394.
a member of the family that owned New York
5. Chile 30. Norway 47. United States of
Garments. 22. Ireland
America
6. China P.R. 31. Peru
Fredco alleged that it was formed and registered with 23. Israel 48. Venezuela
the Securities and Exchange Commission on 9 7. Colombia 32. Philippines
November 1995 and had since then handled the 24. Italy 49. Zimbabwe
8. Costa Rica 33. Poland
manufacture, promotion and marketing of "Harvard"
50. European
clothing articles. Fredco alleged that at the time of 25. Japan
9. Cyprus 34. Portugal Community5
issuance of Registration No. 56561 to Harvard
University, New York Garments had already registered 10. Czech
35. Russia
the mark "Harvard" for goods under Class 25. Fredco Republic The name and mark "Harvard" was adopted in 1639 as
alleged that the registration was cancelled on 30 July the name of Harvard College6 of Cambridge,
1998 when New York Garments inadvertently failed to 11. Denmark 36. South Africa Massachusetts, U.S.A. The name and mark "Harvard"
file an affidavit of use/non-use on the fifth anniversary was allegedly used in commerce as early as 1872.
12. Ecuador 37. Switzerland
of the registration but the right to the mark "Harvard" Harvard University is over 350 years old and is a
remained with its predecessor New York Garments and highly regarded institution of higher learning in the
13. Egypt 38. Singapore
now with Fredco. United States and throughout the world. Harvard
14. Finland 39. Slovak Republic University promotes, uses, and advertises its name
Harvard University, on the other hand, alleged that it is "Harvard" through various publications, services, and
the lawful owner of the name and mark "Harvard" in 15. France 40. Spain products in foreign countries, including the Philippines.
numerous countries worldwide, including the Harvard University further alleged that the name and
Philippines. Among the countries where Harvard 16. Great Britain 41. Sweden
the mark have been rated as one of the most famous
University has registered its name and mark "Harvard" brands in the world, valued between US $750,000,000
17. Germany 42. Taiwan
are: and US $1,000,000,000.
18. Greece 43. Thailand
Harvard University alleged that in March 2002, it
1. Argentina 26. South Korea
19. Hong Kong 44. Turkey discovered, through its international trademark watch
2. Benelux4 27. Malaysia program, Fredco’s website www.harvard-usa.com. The
45. United Arab
20. India website advertises and promotes the brand name
3. Brazil 28. Mexico Emirates
"Harvard Jeans USA" without Harvard University’s
consent. The website’s main page shows an oblong
4. Canada 29. New Zealand 21. Indonesia 46. Uruguay
logo bearing the mark "Harvard Jeans USA®,"
"Established 1936," and "Cambridge, Massachusetts."
On 20 April 2004, Harvard University filed an
administrative complaint against Fredco before the IPO
for trademark infringement and/or unfair competition
with damages.lawphi1
Harvard University alleged that its valid and existing
certificates of trademark registration in the Philippines
are:
1. Trademark Registration No. 56561 issued
on 25 November 1993 for "Harvard Veritas
Shield Design" for goods and services in
Classes 16, 18, 21, 25 and 28 (decals, tote
bags, serving trays, sweatshirts, t-shirts, hats
and flying discs) of the Nice International
Classification of Goods and Services;
2. Trademark Registration No. 57526 issued
on 24 March 1994 for "Harvard Veritas
Shield Symbol" for services in Class 41;
Trademark Registration No. 56539 issued on
25 November 1998 for "Harvard" for services
in Class 41; and
3. Trademark Registration No. 66677 issued
on 8 December 1998 for "Harvard Graphics"
for goods in Class 9. Harvard University
further alleged that it filed the requisite
affidavits of use for the mark "Harvard
Veritas Shield Symbol" with the IPO.
Further, on 7 May 2003 Harvard University filed
Trademark Application No. 4-2003-04090 for "Harvard
Medical International & Shield Design" for services in
Classes 41 and 44. In 1989, Harvard University
established the Harvard Trademark Licensing Program,
operated by the Office for Technology and Trademark
Licensing, to oversee and manage the worldwide
licensing of the "Harvard" name and trademarks for
various goods and services. Harvard University stated
that it never authorized or licensed any person to use its
name and mark "Harvard" in connection with any
goods or services in the Philippines.
In a Decision7 dated 22 December 2006, Director
Estrellita Beltran-Abelardo of the Bureau of Legal
Affairs, IPO cancelled Harvard University’s
registration of the mark "Harvard" under Class 25, as
follows:
WHEREFORE, premises considered, the Petition for
Cancellation is hereby GRANTED. Consequently,
Trademark Registration Number 56561 for the
trademark "HARVARD VE RI TAS ‘SHIELD’
SYMBOL" issued on November 25, 1993 to
PRESIDENT AND FELLOWS OF HARVARD
COLLEGE (HARVARD UNIVERSITY) should be
CANCELLED only with respect to goods falling under
Class 25. On the other hand, considering that the goods
of Respondent-Registrant falling under Classes 16, 18,
21 and 28 are not confusingly similar with the
Petitioner’s goods, the Respondent-Registrant has
acquired vested right over the same and therefore,
should not be cancelled.
Let the filewrapper of the Trademark Registration No.
56561 issued on November 25, 1993 for the trademark
"HARVARD VE RI TAS ‘SHIELD’ SYMBOL",
subject matter of this case together with a copy of this
Decision be forwarded to the Bureau of Trademarks
(BOT) for appropriate action.
SO ORDERED.8
Harvard University filed an appeal before the Office of
the Director General of the IPO. In a Decision9 dated
21 April 2008, the Office of the Director General, IPO
reversed the decision of the Bureau of Legal Affairs,
IPO.
The Director General ruled that more than the use of
the trademark in the Philippines, the applicant must be
the owner of the mark sought to be registered. The
Director General ruled that the right to register a
trademark is based on ownership and when the
applicant is not the owner, he has no right to register
the mark. The Director General noted that the mark
covered by Harvard University’s Registration No.
56561 is not only the word "Harvard" but also the logo,
emblem or symbol of Harvard University. The Director
General ruled that Fredco failed to explain how its
predecessor New York Garments came up with the
mark "Harvard." In addition, there was no evidence that
Fredco or New York Garments was licensed or
authorized by Harvard University to use its name in
commerce or for any other use.
The dispositive portion of the decision of the Office of
the Director General, IPO reads:
WHEREFORE, premises considered, the instant appeal
is GRANTED. The appealed decision is hereby
REVERSED and SET ASIDE. Let a copy of this
Decision as well as the trademark application and
records be furnished and returned to the Director of
Bureau of Legal Affairs for appropriate action. Further,
let also the Directors of the Bureau of Trademarks and
the Administrative, Financial and Human Resources
Development Services Bureau, and the library of the
Documentation, Information and Technology Transfer
Bureau be furnished a copy of this Decision for
information, guidance, and records purposes.
SO ORDERED.10
Fredco filed a petition for review before the Court of
Appeals assailing the decision of the Director General.
The Decision of the Court of Appeals
In its assailed decision, the Court of Appeals affirmed
the decision of the Office of the Director General of the
IPO.
The Court of Appeals adopted the findings of the
Office of the Director General and ruled that the latter
correctly set aside the cancellation by the Director of
the Bureau of Legal Affairs of Harvard University’s 07-09 Inter Partes Case No. 14-2005-00094 is hereby
trademark registration under Class 25. The Court of AFFIRMED.
Appeals ruled that Harvard University was able to
substantiate that it appropriated and used the marks SO ORDERED.13
"Harvard" and "Harvard Veritas Shield Symbol" in
Class 25 way ahead of Fredco and its predecessor New Fredco filed a motion for reconsideration.
York Garments. The Court of Appeals also ruled that
In its Resolution promulgated on 8 January 2009, the
the records failed to disclose any explanation for
Court of Appeals denied the motion for lack of merit.
Fredco’s use of the name and mark "Harvard" and the
words "USA," "Established 1936," and "Cambridge,
Hence, this petition before the Court.
Massachusetts" within an oblong device, "US Legend"
and "Europe’s No. 1 Brand." Citing Shangri-La
The Issue
International Hotel Management, Ltd. v. Developers
Group of Companies, Inc.,11 the Court of Appeals
The issue in this case is whether the Court of Appeals
ruled:
committed a reversible error in affirming the decision
of the Office of the Director General of the IPO.
One who has imitated the trademark of another cannot
bring an action for infringement, particularly against
The Ruling of this Court
the true owner of the mark, because he would be
coming to court with unclean hands. Priority is of no
The petition has no merit.
avail to the bad faith plaintiff. Good faith is required in
order to ensure that a second user may not merely take There is no dispute that the mark "Harvard" used by
advantage of the goodwill established by the true Fredco is the same as the mark "Harvard" in the
owner.12 "Harvard Veritas Shield Symbol" of Harvard
University. It is also not disputed that Harvard
The dispositive portion of the decision of the Court of
University was named Harvard College in 1639 and
Appeals reads:
that then, as now, Harvard University is located in
Cambridge, Massachusetts, U.S.A. It is also unrefuted
WHEREFORE, premises considered, the petition for
that Harvard University has been using the mark
review is DENIED. The Decision dated April 21, 2008
"Harvard" in commerce since 1872. It is also
of the Director General of the IPO in Appeal No. 14-
established that Harvard University has been using the
marks "Harvard" and "Harvard Veritas Shield Symbol"
for Class 25 goods in the United States since 1953.
Further, there is no dispute that Harvard University has
registered the name and mark "Harvard" in at least 50
countries.
On the other hand, Fredco’s predecessor-in-interest,
New York Garments, started using the mark "Harvard"
in the Philippines only in 1982. New York Garments
filed an application with the Philippine Patent Office in
1985 to register the mark "Harvard," which application
was approved in 1988. Fredco insists that the date of
actual use in the Philippines should prevail on the issue
of who has the better right to register the marks.
Under Section 2 of Republic Act No. 166,14 as
amended (R.A. No. 166), before a trademark can be
registered, it must have been actually used in
commerce for not less than two months in the
Philippines prior to the filing of an application for its
registration. While Harvard University had actual prior
use of its marks abroad for a long time, it did not have
actual prior use in the Philippines of the mark "Harvard
Veritas Shield Symbol" before its application for
registration of the mark "Harvard" with the then
Philippine Patents Office. However, Harvard
University’s registration of the name "Harvard" is
based on home registration which is allowed under
Section 37 of R.A. No. 166.15 As pointed out by
Harvard University in its Comment:
Although Section 2 of the Trademark law (R.A. 166)
requires for the registration of trademark that the
applicant thereof must prove that the same has been
actually in use in commerce or services for not less
than two (2) months in the Philippines before the
application for registration is filed, where the trademark
sought to be registered has already been registered in a
foreign country that is a member of the Paris
Convention, the requirement of proof of use in the
commerce in the Philippines for the said period is not
necessary. An applicant for registration based on home
certificate of registration need not even have used the
mark or trade name in this country.16
Indeed, in its Petition for Cancellation of Registration
No. 56561, Fredco alleged that Harvard University’s
registration "is based on ‘home registration’ for the
mark ‘Harvard Veritas Shield’ for Class 25."17
In any event, under Section 239.2 of Republic Act No.
8293 (R.A. No. 8293),18 "[m]arks registered under
Republic Act No. 166 shall remain in force but shall
be deemed to have been granted under this Act x x
x," which does not require actual prior use of the mark
in the Philippines. Since the mark "Harvard Veritas
Shield Symbol" is now deemed granted under R.A. No.
8293, any alleged defect arising from the absence of
actual prior use in the Philippines has been cured by
Section 239.2.19 In addition, Fredco’s registration was
already cancelled on 30 July 1998 when it failed to file
the required affidavit of use/non-use for the fifth
anniversary of the mark’s registration. Hence, at the
time of Fredco’s filing of the Petition for Cancellation
before the Bureau of Legal Affairs of the IPO, Fredco
was no longer the registrant or presumptive owner of
the mark "Harvard."
There are two compelling reasons why Fredco’s
petition must fail.
First, Fredco’s registration of the mark "Harvard" and
its identification of origin as "Cambridge,
Massachusetts" falsely suggest that Fredco or its goods
are connected with Harvard University, which uses the
same mark "Harvard" and is also located in Cambridge,
Massachusetts. This can easily be gleaned from the
following oblong logo of Fredco that it attaches to its
clothing line:
Fredco’s registration of the mark "Harvard" should not
have been allowed because Section 4(a) of R.A. No.
166 prohibits the registration of a mark "which may
disparage or falsely suggest a connection
with persons, living or dead, institutions, beliefs x x
x." Section 4(a) of R.A. No. 166 provides:
Section 4. Registration of trade-marks, trade-names
and service- marks on the principal register. ‒ There is
hereby established a register of trade-mark, trade-
names and service-marks which shall be known as the
principal register. The owner of a trade-mark, a trade-
name or service-mark used to distinguish his goods,
business or services from the goods, business or
services of others shall have the right to register the
same on the principal register, unless it:
(a) Consists of or comprises immoral, deceptive or
scandalous manner, or matter which may disparage
or falsely suggest a connection with persons, living or
dead, institutions, beliefs, or national symbols, or
bring them into contempt or disrepute;
(b) x x x (emphasis supplied)
Fredco’s use of the mark "Harvard," coupled with its
claimed origin in Cambridge, Massachusetts, obviously
suggests a false connection with Harvard University.
On this ground alone, Fredco’s registration of the mark
"Harvard" should have been disallowed.
Indisputably, Fredco does not have any affiliation or
connection with Harvard University, or even with
Cambridge, Massachusetts. Fredco or its predecessor
New York Garments was not established in 1936, or in
the U.S.A. as indicated by Fredco in its oblong logo.
Fredco offered no explanation to the Court of Appeals
or to the IPO why it used the mark "Harvard" on its
oblong logo with the words "Cambridge,
Massachusetts," "Established in 1936," and "USA."
Fredco now claims before this Court that it used these
words "to evoke a ‘lifestyle’ or suggest a ‘desirable
aura’ of petitioner’s clothing lines." Fredco’s belated
justification merely confirms that it sought to connect
or associate its products with Harvard University,
riding on the prestige and popularity of Harvard
University, and thus appropriating part of Harvard
University’s goodwill without the latter’s consent.
Section 4(a) of R.A. No. 166 is identical to Section 2(a)
of the Lanham Act,20 the trademark law of the United
States. These provisions are intended to protect
the right of publicity of famous individuals and
institutions from commercial exploitation of their
goodwill by others.21 What Fredco has done in using
the mark "Harvard" and the words "Cambridge,
Massachusetts," "USA" to evoke a "desirable aura" to
its products is precisely to exploit commercially the
goodwill of Harvard University without the latter’s
consent. This is a clear violation of Section 4(a) of R.A.
No. 166. Under Section 17(c)22 of R.A. No. 166, such
violation is a ground for cancellation of Fredco’s
registration of the mark "Harvard" because the
registration was obtained in violation of Section 4 of
R.A. No. 166.
Second, the Philippines and the United States of
America are both signatories to the Paris Convention
for the Protection of Industrial Property (Paris
Convention). The Philippines became a signatory to the
Paris Convention on 27 September 1965. Articles
6bis and 8 of the Paris Convention state:
ARTICLE 6bis
(i) The countries of the Union undertake either
administratively if their legislation so permits, or at the
request of an interested party, to refuse or to cancel the
registration and to prohibit the use of a trademark
which constitutes a reproduction, imitation or
translation, liable to create confusion or a mark
considered by the competent authority of the country as
being already the mark of a person entitled to the
benefits of the present Convention and used for
identical or similar goods. These provisions shall
also apply when the essential part of the mark
constitutes a reproduction of any such well-known
mark or an imitation liable to create confusion
therewith.
ARTICLE 8
A trade 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 a
trademark. (Emphasis supplied)
Thus, this Court has ruled that the Philippines is
obligated to assure nationals of countries of the Paris
Convention that they are afforded an effective
protection against violation of their intellectual
property rights in the Philippines in the same way that
their own countries are obligated to accord similar
protection to Philippine nationals.23
Article 8 of the Paris Convention has been incorporated
in Section 37 of R.A. No. 166, as follows:
Section 37. Rights of foreign registrants. — Persons
who are nationals of, domiciled in, or have a bona fide
or effective business or commercial establishment in
any foreign country, which is a party to any
international convention or treaty relating to marks or
trade-names, or the repression of unfair competition to
which the Philippines may be a party, shall be entitled
to the benefits and subject to the provisions of this Act
to the extent and under the conditions essential to give
effect to any such convention and treaties so long as the
Philippines shall continue to be a party thereto, except
as provided in the following paragraphs of this section.
xxxx
Trade-names of persons described in the first
paragraph of this section shall be protected without
the obligation of filing or registration whether or
not they form parts of marks.24
x x x x (Emphasis supplied)
Thus, under Philippine law, a trade name of a national
of a State that is a party to the Paris Convention,
whether or not the trade name forms part of a
trademark, is protected "without the obligation of filing
or registration."
"Harvard" is the trade name of the world famous
Harvard University, and it is also a trademark of
Harvard University. Under Article 8 of the Paris
Convention, as well as Section 37 of R.A. No. 166,
Harvard University is entitled to protection in the
Philippines of its trade name "Harvard" even without
registration of such trade name in the Philippines. This
means that no educational entity in the Philippines can
use the trade name "Harvard" without the consent of
Harvard University. Likewise, no entity in the
Philippines can claim, expressly or impliedly through
the use of the name and mark "Harvard," that its
products or services are authorized, approved, or
licensed by, or sourced from, Harvard University
without the latter’s consent.
Article 6bis of the Paris Convention has been
administratively implemented in the Philippines
through two directives of the then Ministry (now
Department) of Trade, which directives were upheld by
this Court in several cases.25 On 20 November 1980,
then Minister of Trade Secretary Luis Villafuerte
issued a Memorandum directing the Director of Patents
to reject, pursuant to the Paris Convention, all pending
applications for Philippine registration of signature and
other world-famous trademarks by applicants other
than their original owners.26 The Memorandum states:
Pursuant to the Paris Convention for the Protection of
Industrial Property to which the Philippines is a
signatory, you are hereby directed to reject all pending
applications for Philippine registration of signature and
other world-famous trademarks by applicants other
than its original owners or users.
The conflicting claims over internationally known
trademarks involve such name brands as Lacoste,
Jordache, Vanderbilt, Sasson, Fila, Pierre Cardin,
Gucci, Christian Dior, Oscar de la Renta, Calvin Klein,
Givenchy, Ralph Lauren, Geoffrey Beene, Lanvin and
Ted Lapidus.
It is further directed that, in cases where warranted,
Philippine registrants of such trademarks should be
asked to surrender their certificates of registration, if
any, to avoid suits for damages and other legal action
by the trademarks’ foreign or local owners or original
users.
You are also required to submit to the undersigned a
progress report on the matter.
For immediate compliance.27
In a Memorandum dated 25 October 1983, then
Minister of Trade and Industry Roberto Ongpin
affirmed the earlier Memorandum of Minister
Villafuerte. Minister Ongpin directed the Director of
Patents to implement measures necessary to comply
with the Philippines’ obligations under the Paris
Convention, thus:
1. Whether the trademark under consideration
is well-known in the Philippines or is a mark
already belonging to a person entitled to the
benefits of the CONVENTION, this should
be established, pursuant to Philippine Patent
Office procedures in inter partes and ex parte
cases, according to any of the following
criteria or any combination thereof:
(a) a declaration by the Minister of
Trade and Industry that the
trademark being considered is
already well-known in the
Philippines such that permission for
its use by other than its original
owner will constitute a
reproduction, imitation, translation
or other infringement;
(b) that the trademark is used in
commerce internationally,
supported by proof that goods
bearing the trademark are sold on
an international scale,
advertisements, the establishment
of factories, sales offices,
distributorships, and the like, in
different countries, including
volume or other measure of
international trade and commerce;
(c) that the trademark is duly
registered in the industrial
property office(s) of another
country or countries, taking into
consideration the dates of such
registration;
(d) that the trademark has been
long established and obtained
goodwill and general international
consumer recognition as belonging
to one owner or source;
(e) that the trademark actually
belongs to a party claiming
ownership and has the right to
registration under the provisions of
the aforestated PARIS
CONVENTION.
2. The word trademark, as used in this
MEMORANDUM, shall include
tradenames, service marks, logos, signs,
emblems, insignia or other similar devices
used for identification and recognition by
consumers.
3. The Philippine Patent Office shall refuse
all applications for, or cancel the registration
of, trademarks which constitute a
reproduction, translation or imitation of a
trademark owned by a person, natural or
corporate, who is a citizen of a country
signatory to the PARIS CONVENTION FOR
THE PROTECTION OF INDUSTRIAL
PROPERTY.
xxx x28 (Emphasis supplied)
In Mirpuri, the Court ruled that the essential
requirement under Article 6bis of the Paris Convention
is that the trademark to be protected must be "well-
known" in the country where protection is
sought.29 The Court declared that the power to
determine whether a trademark is well-known lies in
the competent authority of the country of registration or
use.30 The Court then stated that the competent
authority would either be the registering authority if it
has the power to decide this, or the courts of the
country in question if the issue comes before the
courts.31
To be protected under the two directives of the
Ministry of Trade, an internationally well-known mark
need not be registered or used in the Philippines.32 All
that is required is that the mark is well-known
internationally and in the Philippines for identical or
similar goods, whether or not the mark is registered or
used in the Philippines. The Court ruled in Sehwani,
Incorporated v. In-N-Out Burger, Inc.:33
The fact that respondent’s marks are neither
registered nor used in the Philippines is of no
moment. The scope of protection initially afforded by
Article 6bis of the Paris Convention has been expanded
in the 1999 Joint Recommendation Concerning
Provisions on the Protection of Well-Known
Marks, wherein the World Intellectual Property
Organization (WIPO) General Assembly and the Paris
Union agreed to a nonbinding recommendation thata
well-known mark should be protected in a country
even if the mark is neither registered nor used in
that country. Part I, Article 2(3) thereof provides:
(3) [Factors Which Shall Not Be Required] (a) A
Member State shall not require, as a condition for
determining whether a mark is a well-known mark:
 (i) that the mark has been used in, or that the
mark has been registered or that an
application for registration of the mark has
been filed in or in respect of, the Member
State:
(ii) that the mark is well known in, or that the
mark has been registered or that an
application for registration of the mark has
been filed in or in respect of, any jurisdiction
other than the Member State; or
(iii) that the mark is well known by the public
at large in the Member State.34 (Italics in the
original decision; boldface supplied)
Indeed, Section 123.1(e) of R.A. No. 8293 now
categorically states that "a mark which is considered by
the competent authority of the Philippines to be well-
known internationally and in the Philippines,
whether or not it is registered here," cannot be
registered by another in the Philippines. Section
123.1(e) does not require that the well-known mark be
used in commerce in the Philippines but only that it be
well-known in the Philippines. Moreover, Rule 102 of
the Rules and Regulations on Trademarks, Service
Marks, Trade Names and Marked or Stamped
Containers, which implement R.A. No. 8293, provides:
Rule 102. Criteria for determining whether a mark is
well-known. In determining whether a mark is well-
known, the following criteria or any combination
thereof may be taken into account:
(a) the duration, extent and geographical area
of any use of the mark, in particular, the
duration, extent and geographical area of any
promotion of the mark, including advertising
or publicity and the presentation, at fairs or
exhibitions, of the goods and/or services to
which the mark applies;
(b) the market share, in the Philippines and in
other countries, of the goods and/or services
to which the mark applies;
(c) the degree of the inherent or acquired
distinction of the mark;
(d) the quality-image or reputation acquired
by the mark;
(e) the extent to which the mark has been
registered in the world;
(f) the exclusivity of registration attained by
the mark in the world;
(g) the extent to which the mark has been
used in the world;
(h) the exclusivity of use attained by the mark
in the world;
(i) the commercial value attributed to the
mark in the world;
(j) the record of successful protection of the
rights in the mark;
(k) the outcome of litigations dealing with the
issue of whether the mark is a well-known
mark; and
(l) the presence or absence of identical or
similar marks validly registered for or used
on identical or similar goods or services and
owned by persons other than the person
claiming that his mark is a well-known mark.
(Emphasis supplied)
Since "any combination" of the foregoing criteria is
sufficient to determine that a mark is well-known, it is
clearly not necessary that the mark be used in
commerce in the Philippines. Thus, while under the
territoriality principle a mark must be used in
commerce in the Philippines to be entitled to
protection, internationally well-known marks are the
exceptions to this rule.
In the assailed Decision of the Office of the Director
General dated 21 April 2008, the Director General
found that:
Traced to its roots or origin, HARVARD is not an
ordinary word. It refers to no other than Harvard
University, a recognized and respected institution of
higher learning located in Cambridge, Massachusetts,
U.S.A. Initially referred to simply as "the new college,"
the institution was named "Harvard College" on 13
March 1639, after its first principal donor, a young
clergyman named John Harvard. A graduate of
Emmanuel College, Cambridge in England, John
Harvard bequeathed about four hundred books in his
will to form the basis of the college library collection,
along with half his personal wealth worth several
hundred pounds. The earliest known official reference
to Harvard as a "university" rather than "college"
occurred in the new Massachusetts Constitution of
1780.
Records also show that the first use of the name
HARVARD was in 1638 for educational services,
policy courses of instructions and training at the
university level. It has a Charter. Its first commercial
use of the name or mark HARVARD for Class 25 was
on 31 December 1953 covered by UPTON Reg. No.
2,119,339 and 2,101,295. Assuming in arguendo, that
the Appellate may have used the mark HARVARD in
the Philippines ahead of the Appellant, it still cannot be
denied that the Appellant’s use thereof was decades,
even centuries, ahead of the Appellee’s. More
importantly, the name HARVARD was the name of a
person whose deeds were considered to be a
cornerstone of the university. The Appellant’s logos,
emblems or symbols are owned by Harvard University.
The name HARVARD and the logos, emblems or
symbols are endemic and cannot be separated from the
institution.35
Finally, in its assailed Decision, the Court of Appeals
ruled:
Records show that Harvard University is the oldest and
one of the foremost educational institutions in the
United States, it being established in 1636. It is located
primarily in Cambridge, Massachusetts and was named
after John Harvard, a puritan minister who left to the
college his books and half of his estate.
The mark "Harvard College" was first used in
commerce in the United States in 1638 for educational
services, specifically, providing courses of instruction
and training at the university level (Class 41). Its
application for registration with the United States
Patent and Trademark Office was filed on September
20, 2000 and it was registered on October 16, 2001.
The marks "Harvard" and "Harvard Ve ri tas ‘Shield’
Symbol" were first used in commerce in the the United
States on December 31, 1953 for athletic uniforms,
boxer shorts, briefs, caps, coats, leather coats, sports
coats, gym shorts, infant jackets, leather jackets, night
shirts, shirts, socks, sweat pants, sweatshirts, sweaters
and underwear (Class 25). The applications for
registration with the USPTO were filed on September
9, 1996, the mark "Harvard" was registered on
December 9, 1997 and the mark "Harvard Ve ri tas
‘Shield’ Symbol" was registered on September 30,
1997.36
We also note that in a Decision37 dated 18 December
2008 involving a separate case between Harvard
University and Streetward International, Inc.,38 the
Bureau of Legal Affairs of the IPO ruled that the mark
"Harvard" is a "well-known mark." This Decision,
which cites among others the numerous trademark
registrations of Harvard University in various
countries, has become final and executory.
There is no question then, and this Court so declares,
that "Harvard" is a well-known name and mark not
only in the United States but also internationally,
including the Philippines. The mark "Harvard" is rated
as one of the most famous marks in the world. It has
been registered in at least 50 countries. It has been used
and promoted extensively in numerous publications
worldwide. It has established a considerable goodwill
worldwide since the founding of Harvard University
more than 350 years ago. It is easily recognizable as the
trade name and mark of Harvard University of
Cambridge, Massachusetts, U.S.A., internationally
known as one of the leading educational institutions in
the world. As such, even before Harvard University
applied for registration of the mark "Harvard" in the
Philippines, the mark was already protected under
Article 6bis and Article 8 of the Paris Convention.
Again, even without applying the Paris Convention,
Harvard University can invoke Section 4(a) of R.A.
No. 166 which prohibits the registration of a mark
"which may disparage or falsely suggest a connection
with persons, living or dead,institutions, beliefs x x x."
WHEREFORE, we DENY the petition.
We AFFIRM the 24 October 2008 Decision and 8
January 2009 Resolution of the Court of Appeals in
CA-G.R. SP No. 103394.

SO ORDERED.
 OZAETA, J.:
Petitioner has appealed to this Court by certiorari to
reverse the judgment of the Court of Appeals reversing
that of the Court of First Instance of Manila and
directing the Director of Commerce to cancel the
registration of the trade-mark "Ang Tibay" in favor of
said petitioner, and perpetually enjoining the latter from
using said trade-mark on goods manufactured and sold
by her.
Respondent Toribio Teodoro, at first in partnership
with Juan Katindig and later as sole proprietor, has
continuously used "Ang Tibay," both as a trade-mark
and as a trade-name, in the manufacture and sale of
slippers, shoes, and indoor baseballs since 1910. He
formally registered it as trade-mark on September 29,
1915, and as trade-name on January 3, 1933. The
growth of his business is a thrilling epic of Filipino
G.R. No. L-48226 December 14, 1942 industry and business capacity. Starting in an obscure
shop in 1910 with a modest capital of P210 but with
ANA L. ANG, petitioner, tireless industry and unlimited perseverance, Toribio
vs. Teodoro, then an unknown young man making slippers
TORIBIO TEODORO, respondent. with his own hands but now a prominent business
magnate and manufacturer with a large factory
Cirilo Lim for petitioner. operated with modern machinery by a great number of
Marcial P. Lichauco and Manuel M. Mejia for employees, has steadily grown with his business to
respondent. which he has dedicated the best years of his life and
which he has expanded to such proportions that his
gross sales from 1918 to 1938 aggregated
P8,787,025.65. His sales in 1937 amounted to
P1,299,343.10 and in 1938, P1,133,165.77. His
expenses for advertisement from 1919 to 1938
aggregated P210,641.56.
Petitioner (defendant below) registered the same trade-
mark "Ang Tibay" for pants and shirts on April 11,
1932, and established a factory for the manufacture of
said articles in the year 1937. In the following year
(1938) her gross sales amounted to P422,682.09.
Neither the decision of the trial court nor that of the
Court of Appeals shows how much petitioner has spent
or advertisement. But respondent in his brief says that
petitioner "was unable to prove that she had spent a
single centavo advertising "Ang Tibay" shirts and pants
prior to 1938. In that year she advertised the factory
which she had just built and it was when this was
brought to the attention of the appellee that he
consulted his attorneys and eventually brought the
present suit."
The trial court (Judge Quirico Abeto) presiding
absolved the defendant from the complaint, with costs
against the plaintiff, on the grounds that the two
trademarks are dissimilar and are used on different and
non-competing goods; that there had been no exclusive
use of the trade-mark by the plaintiff; and that there had
been no fraud in the use of the said trade-mark by the
defendant because the goods on which it is used are
essentially different from those of the plaintiff. The
second division of the Court of Appeals, composed of
Justices Bengson, Padilla, Lopez Vito, Tuason, and
Alex Reyes, with Justice Padilla as ponente, reversed
that judgment, holding that by uninterrupted an
exclusive use since 191 in the manufacture of slippers
and shoes, respondent's trade-mark has acquired a
secondary meaning; that the goods or articles on which
the two trade-marks are used are similar or belong to
the same class; and that the use by petitioner of said
trade-mark constitutes a violation of sections 3 and 7 of
Act No. 666. The defendant Director of Commerce did
not appeal from the decision of the Court of Appeals.
First. Counsel for the petitioner, in a well-written brief,
makes a frontal sledge-hammer attack on the validity of
respondent's trade-mark "Ang Tibay." He contends that
the phrase "Ang Tibay" as employed by the respondent
on the articles manufactured by him is a descriptive
term because, "freely translate in English," it means
"strong, durable, lasting." He invokes section 2 of Act
No. 666, which provides that words or devices which
related only to the name, quality, or description of the
merchandise cannot be the subject of a trade-mark. He
cites among others the case of Baxter vs. Zuazua (5
Phil., 16), which involved the trade-mark "Agua de
Kananga" used on toilet water, and in which this Court
held that the word "Kananga," which is the name of a
well-known Philippine tree or its flower, could not be
appropriated as a trade-mark any more than could the
words "sugar," "tobacco," or "coffee." On the other
hand, counsel for the respondent, in an equally well-
prepared and exhaustive brief, contend that the words
"Ang Tibay" are not descriptive but merely suggestive
and may properly be regarded as fanciful or arbitrary in
the legal sense. The cite several cases in which similar
words have been sustained as valid trade-marks, such
as "Holeproof" for hosiery, 1 "ideal for tooth
brushes, 2 and "Fashionknit" for neckties and sweaters. 3
We find it necessary to go into the etymology and
meaning of the Tagalog words "Ang Tibay" to
determine whether they are a descriptive term, i.e.,
whether they relate to the quality or description of the
merchandise to which respondent has applied them as a
trade-mark. The word "ang" is a definite article
meaning "the" in English. It is also used as an adverb, a
contraction of the word "anong" (what or how). For
instance, instead of saying, "Anong ganda!" ("How
beautiful!"), we ordinarily say, "Ang ganda!" Tibay is a
root word from which are derived the
verbmagpatibay (to strenghten; the
nouns pagkamatibay (strength,
durability), katibayan (proof, support,
strength),katibay-tibayan (superior strength); and the
adjectives matibay (strong, durable,
lasting), napakatibay (very strong),kasintibay or
magkasintibay (as strong as, or of equal strength). The
phrase "Ang Tibay" is an exclamation denoting
administration of strength or durability. For instance,
one who tries hard but fails to break an object exclaims,
"Ang tibay!" (How strong!") It may also be used in a
sentence thus, "Ang tibay ng sapatos mo!" (How
durable your shoes are!") The phrase "ang tibay" is
never used adjectively to define or describe an object.
One does not say, "ang tibay sapatos" or "sapatos ang
tibay" is never used adjectively to define or describe an
object. One does not say, "ang tibay sapatos" or
"sapatos ang tibay" to mean "durable shoes," but
"matibay na sapatos" or "sapatos na matibay."
From all of this we deduce that "Ang Tibay" is not a
descriptive term within the meaning of the Trade-Mark
Law but rather a fanciful or coined phrase which may
properly and legally be appropriated as a trade-mark or
trade-name. In this connection we do not fail to note
that when the petitioner herself took the trouble and
expense of securing the registration of these same
words as a trademark of her products she or her
attorney as well as the Director of Commerce was
undoubtedly convinced that said words (Ang Tibay)
were not a descriptive term and hence could be legally
used and validly registered as a trade-mark. It seems
stultifying and puerile for her now to contend
otherwise, suggestive of the story of sour grapes.
Counsel for the petitioner says that the function of a
trade-mark is to point distinctively, either by its own
meaning or by association, to the origin or ownership
of the wares to which it is applied. That is correct, and
we find that "Ang Tibay," as used by the respondent to
designate his wares, had exactly performed that
function for twenty-two years before the petitioner
adopted it as a trade-mark in her own business. Ang
Tibay shoes and slippers are, by association, known
throughout the Philippines as products of the Ang
Tibay factory owned and operated by the respondent
Toribio Teodoro.
Second. In her second assignment of error petitioner
contends that the Court of Appeals erred in holding that
the words "Ang Tibay" had acquired a secondary
meaning. In view of the conclusion we have reached
upon the first assignment of error, it is unnecessary to
apply here the doctrine of "secondary meaning" in
trade-mark parlance. This doctrine is to the effect that a
word or phrase originally incapable of exclusive
appropriation with reference to an article of the market,
because geographically or otherwise descriptive, might
nevertheless have been used so long and so exclusively
by one producer with reference to his article that, in
that trade and to that branch of the purchasing public,
the word or phrase has come to mean that the article
was his product. (G. & C. Merriam Co. vs. Salfield,
198 F., 369, 373.) We have said that the phrase "Ang
Tibay," being neither geographic nor descriptive, was
originally capable of exclusive appropriation as a trade-
mark. But were it not so, the application of the doctrine
of secondary meaning made by the Court of Appeals
could nevertheless be fully sustained because, in any
event, by respondent's long and exclusive use of said
phrase with reference to his products and his business,
it has acquired a proprietary connotation. (Landers,
Frary, and Clark vs. Universal Cooler Corporation, 85
F. [2d], 46.)
Third. Petitioner's third assignment of error is, that the
Court of Appeals erred in holding that pants and shirts
are goods similar to shoes and slippers within the
meaning of sections 3 and 7 of Act No. 666. She also
contends under her fourth assignment of error (which
we deem convenient to pass upon together with the
third) that there can neither be infringement of trade-
mark under section 3 nor unfair competition under
section 7 through her use of the words "Ang Tibay" in
connection with pants and shirts, because those articles
do not belong to the same class of merchandise as
shoes and slippers.
The question raised by petitioner involve the scope and
application of sections 3,7, 11, 13, and 20 of the Trade-
Mark Law (Act No. 666.) Section 3 provides that "any
person entitled to the exclusive use of a trade-mark to
designate the origin or ownership of goods he has made
or deals in, may recover damages in a civil actions
from any person who has sold goods of a similar kind,
bearing such trade-mark . . . The complaining party . . .
may have a preliminary injunction, . . . and such
injunction upon final hearing, if the complainant's
property in the trade-mark and the defendant's violation
thereof shall be fully established, shall be made
perpetual, and this injunction shall be part of the
judgment for damages to be rendered in the same
cause." Section 7 provides that any person who, in
selling his goods, shall give them the general
appearance of the goods of another either in the
wrapping of the packages, or in 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 the
complainant, shall be guilty of unfair competition, and
shall be liable to an action for damages and to an
injunction, as in the cases of trade-mark infringement
under section 3. Section 11 requires the applicant for
registration of a trade-mark to state, among others, "the
general class of merchandise to which the trade-mark
claimed has been appropriated." Section 13 provides
that no alleged trade-mark or trade name shall be
registered which is identical with a registered or known
trade-mark owned by another and appropriate to
the same class of merchandise, or which to nearly
resembles another person's lawful trade-mark or trade-
name as to be likely to cause confusion or mistake in
the mind of the public, or to deceive purchasers. And
section 2 authorizes the Director of Commerce to
establish classes of merchandise for the purpose of the
registration of trade-marks and to determine the
particular description of articles included in each class;
it also provides that "an application for registration of a
trade-mark shall be registered only for one class of
articles and only for the particular description of
articles mentioned in said application."
We have underlined the key words used in the statute:
"goods of a similar kin," "general class of
merchandise," "same class of merchandise," "classes of
merchandise," and "class of articles," because it is upon
their implications that the result of the case hinges.
These phrases, which refer to the same thing, have the
same meaning as the phrase "merchandise of the same
descriptive properties" used in the statutes and
jurisprudence of other jurisdictions.
The burden of petitioner's argument is that under
sections 11 and 20 the registration by respondent of the
trade-mark "Ang Tibay" for shoes and slippers is no
safe-guard against its being used by petitioner for pants
and shirts because the latter do not belong to the same
class of merchandise or articles as the former; that she
cannot be held guilty of infringement of trade-mark
under section 3 because respondent's mark is not a
valid trade-mark, nor has it acquired a secondary
meaning; that pants and shirts do not possess the same
descriptive properties as shoes and slippers; that neither
can she be held guilty of unfair competition under
section 7 because the use by her of the trade-mark "Ang
Tibay" upon pants and shirts is not likely to mislead the
general public as to their origin or ownership; and that
there is now showing that she in unfairly or
fraudulently using that mark "Ang Tibay" against the
respondent. If we were interpreting the statute for the
first time and in the first decade of the twentieth
century, when it was enacted, and were to construe it
strictly and literally, we might uphold petitioner's
contentions. But law and jurisprudence must keep
abreast with the progress of mankind, and the courts
must breathe life into the statutes if they are to serve
their purpose. Our Trade-mark Law, enacted nearly
forty years ago, has grown in its implications and
practical application, like a constitution, in virtue of the
life continually breathed into it. It is not of merely local
application; it has its counterpart in other jurisdictions
of the civilized world from whose jurisprudence it has
also received vitalizing nourishment. We have to apply
this law as it has grown and not as it was born. Its
growth or development abreast with that of sister
statutes and jurisprudence in other jurisdictions is
reflected in the following observation of a well-known
author:
This fundamental change in attitude first
manifested itself in the year 1915-1917. Until
about then, the courts had proceeded on the
theory that the same trade-mark, used on un-
like goods, could not cause confusion in trade
and that, therefore, there could be no
objection to the use and registration of a well-
known mark by a third party for a different
class of goods. Since 1916 however, a
growing sentiment began to arise that in the
selection of a famous mark by a third party,
there was generally the hidden intention to
"have a free ride" on the trade-mark owner's
reputation and good will. (Derenberg, Trade-
Mark Protection & Unfair Trading, 1936
edition, p. 409.)
In the present state of development of the law on
Trade-Marks, Unfair Competition, and Unfair Trading,
the test employed by the courts to determine whether
noncompeting goods are or are not of the same class is
confusion as to the origin of the goods of the second
user. Although two noncompeting 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
trade-marks would be likely to cause confusion as to
the origin, or personal source, of the second user's
goods. They would be considered as not falling under
the same class only if they are so dissimilar or so
foreign to each other as to make it unlikely that the
purchaser would think the first user made the second
user's goods.
Such construction of the law is induced by cogent
reasons of equity and fair dealing. The courts have
come to realize that there can be unfair competition or
unfair trading even if the goods are non-competing, and
that such unfair trading can cause injury or damage to
the first user of a given trade-mark, first, by prevention
of the natural expansion of his business and, second, by
having his business reputation confused with and put at
the mercy of the second user. Then noncompetitive
products are sold under the same mark, the gradual
whittling away or dispersion of the identity and hold
upon the public mind of the mark created by its first
user, inevitably results. The original owner is entitled to
the preservation of the valuable link between him and
the public that has been created by his ingenuity and
the merit of his wares or services. Experience has
demonstrated that when a well-known trade-mark is
adopted by another even for a totally different class of
goods, it is done to get the benefit of the reputation and
advertisements of the originator of said mark, to
convey to the public a false impression of some
supposed connection between the manufacturer of the
article sold under the original mark and the new articles
being tendered to the public under the same or similar
mark. As trade has developed and commercial changes
have come about, the law of unfair competition has
expanded to keep pace with the times and the element
of strict competition in itself has ceased to be the
determining factor. The owner of a trade-mark or trade-
name has a property right in which he is entitled to
protection, since there is damage to him from confusion
of reputation or goodwill in the mind of the public as
well as from confusion of goods. The modern trend is
to give emphasis to the unfairness of the acts and to
classify and treat the issue as a fraud.
A few of the numerous cases in which the foregoing
doctrines have been laid down in one form or another
will now be cited: (1) In Teodoro Kalaw Ng Khe vs.
Level Brothers Company (G.R. No. 46817), decided by
this Court on April 18, 1941, the respondent company
(plaintiff below) was granted injunctive relief against
the use by the petitioner of the trade-mark "Lux" and
"Lifebuoy" for hair pomade, they having been
originally used by the respondent for soap; The Court
held in effect that although said articles are
noncompetitive, they are similar or belong to the same
class. (2) In Lincoln Motor Co. vs. Lincoln Automobile
Co. (44 F. [2d], 812), the manufacturer of the well-
known Lincoln automobile was granted injunctive
relief against the use of the word "Lincoln" by another
company as part of its firm name. (3) The case of Aunt
Jemima Mills Co. vs. Rigney & Co. (247 F., 407),
involved the trade-mark "Aunt Jemima," originally
used on flour, which the defendant attempted to use on
syrup, and there the court held that the goods, though
different, are so related as to fall within the mischief
which equity should prevent. (4) In Tiffany & Co., vs.
Tiffany Productions, Inc. (264 N.Y.S., 459; 23 Trade-
mark Reporter, 183), the plaintiff, a jewelry concern,
was granted injunctive relief against the defendant, a
manufacturer of motion pictures, from using the name
"Tiffany." Other famous cases cited on the margin,
wherein the courts granted injunctive relief, involved
the following trade-marks or trade-names: "Kodak," for
cameras and photographic supplies, against its use for
bicycles. 4 "Penslar," for medicines and toilet articles,
against its use for cigars; 5 "Rolls-Royce," for
automobiles. against its use for radio tubes; 6 "Vogue,"
as the name of a magazine, against its use for
hats; 7 "Kotex," for sanitary napkins, against the use of
"Rotex" for vaginal syringes; 8 "Sun-Maid," for raisins,
against its use for flour; 9 "Yale," for locks and keys,
against its use for electric flashlights; 10 and
"Waterman," for fountain pens, against its use for razor
blades. 11lawphil.net
Against this array of famous cases, the industry of
counsel for the petitioner has enabled him to cite on
this point only the following cases: (1) Mohawk Milk
Products vs. General Distilleries Corporation (95 F.
[2d], 334), wherein the court held that gin and canned
milk and cream do not belong to the same class;
(2) Fawcett Publications, Inc. vs. Popular Mechanics
Co. (80 F. [2d], 194), wherein the court held that the
words "Popular Mechanics" used as the title of a
magazine and duly registered as a trade-mark were not
infringed by defendant's use of the words "Modern
Mechanics and Inventions" on a competitive magazine,
because the word "mechanics" is merely a descriptive
name; and (3) Oxford Book Co. vs. College Entrance
Book Co. (98 F. [2d], 688), wherein the plaintiff
unsuccessfully attempted to enjoin the defendant from
using the word "Visualized" in connection with history
books, the court holding that said word is merely
descriptive. These cases cites and relied upon by
petitioner are obviously of no decisive application to
the case at bar.
We think reasonable men may not disagree that shoes
and shirts are not as unrelated as fountain pens and
razor blades, for instance. The mere relation or
association of the articles is not controlling. As may
readily be noted from what we have heretofore said, the
proprietary connotation that a trade-mark or trade-name
has acquired is of more paramount consideration. The
Court of Appeals found in this case that by
uninterrupted and exclusive use since 1910 of
respondent's registered trade-mark on slippers and
shoes manufactured by him, it has come to indicate the
origin and ownership of said goods. It is certainly not
farfetched to surmise that the selection by petitioner of
the same trade-mark for pants and shirts was motivated
by a desire to get a free ride on the reputation and
selling power it has acquired at the hands of the
respondent. As observed in another case, 12 the field
from which a person may select a trade-mark is
practically unlimited, and hence there is no excuse for
impinging upon or even closely approaching the mark
of a business rival. In the unlimited field of choice,
what could have been petitioner's purpose in selecting
"Ang Tibay" if not for its fame?
Lastly, in her fifth assignment of error petitioner seems
to make a frantic effort to retain the use of the mark
"Ang Tibay." Her counsel suggests that instead of
enjoining her from using it, she may be required to
state in her labels affixed to her products the
inscription: "Not manufactured by Toribio Teodoro."
We think such practice would be unethical and
unworthy of a reputable businessman. To the
suggestion of petitioner, respondent may say, not
without justice though with a tinge of bitterness: "Why
offer a perpetual apology or explanation as to the origin
of your products in order to use my trade-mark instead
of creating one of your own?" On our part may we add,
without meaning to be harsh, that a self-respecting
person does not remain in the shelter of another but
builds one of his own.
The judgment of the Court of Appeals is affirmed, with
costs against the petitioner in the three instances. So
ordered.
G.R. No. L-20635 March 31, 1966
ETEPHA, A.G., petitioner,
vs.
DIRECTOR OF PATENTS and WESTMONT
PHARMACEUTICALS, INC., respondents.
McClure, Salas and Gonzalez, for petitioner.
Sycip, Salazar, Manalo, Luna and Associates, for
respondent.
SANCHEZ, J.:
To the question: May trademark ATUSSIN be
registered, given the fact that PERTUSSIN, another
trademark, had been previously registered in the Patent
Office? — the Director of Patents answered
affirmatively. Hence this appeal.
On April 23, 1959, respondent Westmont
Pharmaceuticals, Inc., a New York corporation, sought
registration of trademark "Atussin" placed on its
"medicinal preparation of expectorant antihistaminic,
bronchodilator sedative, ascorbic acid (Vitamin C) used
in the treatment of cough". The trademark is used
exclusively in the Philippines since January 21, 1959.1
Petitioner, Etepha, A. G., a Liechtenstin (principality)
corporation, objected. Petitioner claims that it will be
damaged because Atussin is so confusedly similar to its
Pertussin (Registration No. 6089, issued on September
25, 1957) used on a preparation for the treatment of
coughs, that the buying public will be misled into
believing that Westmont's product is that of petitioner's
which allegedly enjoys goodwill.
1. The objects of a trademark are "to point
out distinctly the origin or ownership of the
articles to which it is affixed, to secure to him
who has been instrumental in bringing into
market a superior article or merchandise the
fruit of his industry and skill, and to prevent
fraud and imposition."2 Our over-all task then
is to ascertain whether or not Atussin so
resembles Pertussin "as to be likely, when
applied to or used in connection with the
goods ... of the applicant, to cause confusion
or mistake or to deceive purchasers".3 And,
we are to be guided by the rule that the
validity of a cause for infringement is
predicated upon colorable imitation. The
phrase "colorable imitation" denotes such a
"close or ingenious imitation as to be
calculated to deceive ordinary persons, or
such a resemblance to the original as to
deceive an ordinary purchaser, giving such
attention as a purchaser usually gives, and to
cause him to purchase the one supposing it to
be the other."4
2. That the word "tussin" figures as a
component of both trademarks is nothing to
wonder at. The Director of Patents aptly
observes that it is "the common practice in
the drug and pharmaceutical industries to
'fabricate' marks by using syllables or words
suggestive of the ailments for which they are
intended and adding thereto distinctive
prefixes or suffixes".5 And appropriately to
be considered now is the fact that,
concededly, the "tussin" (in Pertussin and
Atussin) was derived from the Latin root-
word "tussis" meaning cough.6
"Tussin" is merely descriptive; it is generic; it
furnishes to the buyer no indication of the
origin of the goods; it is open for
appropriation by anyone. It is accordingly
barred from registration as trademark. With
jurisprudence holding the line, we feel safe in
making the statement that any other
conclusion would result in "appellant having
practically a monopoly"7 of the word "tussin"
in a trademark.8
While "tussin" by itself cannot thus be used
exclusively to identify one's goods, it may
properly become the subject of a trademark
"by combination with another word or
phrase".9 And this union of words is reflected
in petitioner's Pertussin and
respondent's Atussin, the first with prefix
"Per" and the second with Prefix
"A".1äwphï1.ñët
3. A practical approach to the problem of
similarity or dissimilarity is to go into
the whole of the two trademarks pictured in
their manner of display. Inspection should be
undertaken from the viewpoint of a
prospective buyer. The trademark
complained of should be compared and
contrasted with the purchaser's memory (not
in juxtaposition) of the trademark said to be
10
infringed. Some such factors as "sound;
appearance; form, style, shape, size or
format; color; ideas connoted by marks; the
meaning, spelling, and pronunciation, of
words used; and the setting in which the
11
words appear" may be considered. For,
indeed, trademark infringement is a form of
unfair competition. 12
We take a casual look at the two labels —
without spelling out the details — bearing in
mind the easy-to-remember earmarks thereof.
Respondent's label underscores the trademark
Atussin in bold, block letters horizontally
written. In petitioner's, on the other hand,
Pertussin is printed diagonally upwards and
across in semiscript style with flourishes and
with only the first letter "P" capitalized. Each
label plainly shows the source of the
medicine: petitioner's at the foot bears
"Etepha Ltd. Schaan Fl", and on top,
"Apothecary E. Taeschner's"; respondent's
projects "Westmont Pharmaceuticals, Inc.
New York, USA" at the bottoms, and on the
lower left side the word "Westmont" upon a
white diamond shaped enclosure and in red
ink — a color different from that of the
words above and below it. Printed
prominently along the left, bottom and right
edges of petitioner's label are indications of
the use: "for bronchial catarrh — whopping-
cough — coughs and asthma". Respondent's
for its part briefly represents what its produce
actually is - a "cough syrup". The two labels
are entirely different in colors, contents,
arrangement of words thereon, sizes, shapes
and general appearance. The contrasts in
pictorial effects and appeals to the eye is so
pronounced that the label of one cannot be
mistaken for that of the other, not even by
persons unfamiliar with the two
trademarks. 13
On this point the following culled from a
recent decision of the United States Court of
Customs and Patent Appeals (June 15, 1956)
is persuasive: 14
Confusion is likely between
trademarks, however, only if
their over-all presentations in any
of the particulars of
sound, appearance, or meaning are
such as would lead the purchasing
public into believing that the
products to which the marks are
applied emanated from the same
source. In testing this issue, fixed
legal rules exist — if not in
harmony, certainly in abundance —
but, in the final analysis, the
application of these rules in any
given situation necessarily reflects
a matter of individual judgment
largely predicated on opinion.
There is, however, and can be no
 disagreement with the rule that the
purchaser is confused, if at all, by
the marks as a whole.
4. We now consider exclusively the two
words — Pertussin and Atussin — as they
appear on the respective labels. As previously
adverted to, these words are presented to the
public in different styles of writing and
methods of design. The horizontal plain,
block letters of Atussin and the diagonally
and artistically upward writing of Pertussin
leave distinct visual impressions. One look is
enough to denude the mind of that
illuminating similarity so essential for a
trademark infringement case to prosper.
5. As we take up Pertussin and Atussin once
again, we cannot escape notice of the fact
that the two words do not sound alike —
when pronounced. There is not much
phonetic similarity between the two. The
Solicitor General well-observed that in
Pertussin the pronunciation of the prefix
"Per", whether correct or incorrect, includes a
combination of three letters P, e and r;
whereas, in Atussin the whole starts with the
single letter A added to suffix "tussin".
Appeals to the ear are disimilar. And this,
because in a word combination, the part that
comes first is the most pronounced. An
expositor of the applicable rule here is the
decision in the Syrocol-Cheracol conforms to the medical prescription. The
15
controversy. There, the ruling is that common trade channel is the pharmacy or the
trademark Syrocol (a cough medicine drugstore. Similarly, the pharmacist or
preparation) is not confusedly similar to druggist verifies the medicine sold. The
trademark Cheracol (also a cough medicine margin of error in the acquisition of one for
preparation). Reason: the two words "do not the other is quite remote.
look or sound enough alike to justify a
holding of trademark infringement", and the We concede the possibility that buyers might be able to
"only similarity is in the last syllable, and that obtain Pertussin or Attusin without prescription. When
is not uncommon in names given drug this happens, then the buyer must be one throughly
compounds". familiar with what he intends to get, else he would not
have the temerity to ask for a medicine — specifically
6. In the solution of a trademark infringement needed to cure a given ailment. In which case, the more
problem, regard too should be given to improbable it will be to palm off one for the other. For
the class of persons who buy the particular a person who purchases with open eyes is hardly the
product and the circumstances ordinarily man to be deceived.
16
attendant to its acquisition. The medicinal
preparation clothed with the trademarks in For the reasons given, the appealed decision of the
question, are unlike articles of everyday use respondent Director of Patents — giving due course to
such as candies, ice cream, milk, soft drinks the application for the registration of trademark
and the like which may be freely obtained by ATTUSIN is hereby affirmed. Costa against petitioner.
anyone, anytime, anywhere. Petitioner's and So ordered.
respondent's products are to be dispensed
upon medical prescription. The respective
labels say so. An intending buyer must have
to go first to a licensed doctor of medicine;
he receives instructions as to what to
purchase; he reads the doctor's prescription;
he knows what he is to buy. He is not of the
incautious, unwary, unobservant or
unsuspecting type; he examines the product
sold to him; he checks to find out whether it