Definition of marks, services marks and
collective marks
(32) Societe Des Produits Nestle, S.A. and Nestle
Philippines v. CA and CFC Corporation
GR: 112012 April 4, 2001
FACTS:
Private respondent CFC Corporation filed with the
Bureau of Patents, Trademarks and Technology
Transfer (BTTT) an application for the registration of
the trademark “Flavor Master” for instant coffee and as
a matter of due course, the application was published
in the BTTT’s Official Gazette.
Petitioner, a Swiss company registered under Swill laws
filed an unverified Notice of Opposition, claiming that
the Trademark being applied is “confusingly similar to
its trademarks for coffee and coffee extracts: “Master
Roast and Master Blend”.
Nestle Philippines, Inc., a licensee of Societe Des
Produits Nestle S.A., (SDPN) also filed the same,
claiming the trademark Flavor Master would cause
confusion or deceive purchasers and would falsely
suggest a connection in the business of Nestle, as the
dominant word present in the three trademark is
“Master”; or the goods of CFC might be mistaken to
have originated from the them.
CFC argued that’s its trademark is not confusingly
similar to the petitioners, except for the word “Master”
which cannot be exclusively appropriated by any
person for being a descriptive or generic name, while
the other words in the tree trademarks are very
different from each other. Also, Flavor Master, is
different from the other trademark especially when the
marks are viewed in their entirety, by considering their
pictorial representations, color schemes and the letters
of their respective labels.
BPTT denied CFC’s application for registration.
CA Ruling: Decided in favor of the respondent. The
glaring dissimilarities in their presentation far outweigh
and dispel any aspect of similitude. The general
appearance of the labels bearing the respective
trademarks are so distinct from each other that
appellees cannot assert that the dominant features of
its trademarks were used or appropriated in appellant
CFC’s own. The distinctions are so well-defined so as
to foreclose any probability or likelihood of confusion
or deception on the part of the normally intelligent
buyer when he or she encounters both coffee
productions at the grocery shelf.
Issue:
Whether or not the word MASTER is descriptive or
generic term incapable of exclusive appropriation.
Held:
A trademark has been generally defined as “any word,
name, symbol or device adopted and used by a
manufacturer or merchant to identify his goods and
distinguish them from those manufactured and sold by
others.
A manufacturer’s trademark is entitled to protect as in
case of Mishawaka Mfg. Co. v. Kreseg Co:
The protection of trade-marks is the law’s recognition
of the psychological function of symbols. A trade-mark
is a merchandising short-cut which induces a purchaser
to select what he wants, or what he has been led to
believe he wants. The owner of a marl exploits this
human propensity by making every effort to
impregnate the atmosphere of the market with the
drawing power of a congenial symbol. If another
poaches upon the commercial magnetism of the
symbol he has created, the owner can obtain legal
redress.
The word “MASTER” is neither a generic nor a
descriptive term. As such, said term cannot be
invalidated as a trademark and, therefore, may be
legally protected. Generic terms are those which
constitute “the common descriptive name of an article
or substance,” or comprise the “genus of which the
particular product is a species,” or are “commonly used
as the name or description of a kind of goods,” or
“imply reference to every member of a genus and the
exclusion of individuating characters,” or “refer to the
basic nature of the wares or services provided rather
than to the more idiosyncratic characteristics of a
particular product,” and are not legally protectable. On
the other hand, a term is descriptive and therefore
invalid as a trademark if, as understood in its normal
and natural sense, it “forthwith conveys the
characteristics, functions, qualities or ingredients of a
product to one who has never seen it and does not
know what it is,” or “if it forthwith conveys an
immediate idea of the ingredients, qualities or
characteristics of the goods,” or if it clearly denotes
what goods or services are provided in such a way that
the consumer does not have to exercise powers of
perception or imagination.
Rather, the term “MASTER” is a suggestive term
brought about by the advertising scheme of Nestle.
Suggestive terms are those which, in the phraseology
of one court, require “imagination, thought and
perception to reach a conclusion as to the nature of the
goods.” Such terms, “which subtly connote something
about the product,” are eligible for protection in the
absence of secondary meaning. While suggestive
marks are capable of shedding “some light” upon
certain characteristics of the goods or services in
dispute, they nevertheless involve “an element of
incongruity,” “figurativeness,” or ” imaginative effort
on the part of the observer.” The term “MASTER”,
therefore, has acquired a certain connotation to mean
the coffee products MASTER ROAST and MASTER
BLEND produced by Nestle. As such, the use by CFC of
the term “MASTER” in the trademark for its coffee
product FLAVOR MASTER is likely to cause confusion
or mistake or even to deceive the ordinary purchasers.
Confusion of Goods v. Confusion of Business
(65) Hickok Manufacturing Co., INC., v. CA and Santos
Lim Bun Liong
GR: L-44707 August 31, 1982
Facts:
Petitioner Hickok Manufacturing Co., Inc., a foreign
corporation duly registered, had earlier registered the
trademark Hickok for its products, e.g. handkerchiefs,
underwear and briefs. While respondent Lim Bun
Liong, later registered his product, Marikina shoes,
under the same tradename Hickok.
Petitioner filed a petition with the patent director to
cancel the registration of the respondent, which was
later granted, rendering the registration of trademark
by the respondent cancelled. But on appeal, the CA
reverse the decision and instead dismissed the
petitioner’s petition.
Issue: WON the registration of the respondent’s
trademark of his Hickok Marikina shoes be allowed.
Held:
The Court affirms the decision of the appellate court.
While the law does not require that the competing
trademarks be identical, the two marks must be
considered in their entirety, as they appear in the
respective labels, in relation to the goods to which they
are attached.
Emphasis should be on the similarity of the products
involved and not on the arbitrary classification or
general description of their properties or characteristics
and that the mere fact that one person has adopted
and used a trademark on his goods does not prevent
the adoption and use of the same trademark by others
on unrelated articles of a different kind.
Petitioner, a foreign corporation registered the
trademark for its diverse articles of men’s wear such as
wallets, belts and men’s briefs which are all
manufactured here in the Philippines but are so
labelled as to give the misimpression that the said
goods are of foreign (stateside) manufacture and that
respondent secured its trademark registration
exclusively for shoes (which neither petitioner nor the
licensee ever manufactured or traded in) and which are
clearly labeled in block letter as “Made in Marikina,
Rizal, Philippines,” no error can be attributed to the
appellate court in upholding respondent’s registration
of the same trademark for his unrelated and non-
competing product of Marikina shoes.
Well-known marks
(99) Fredco Manufactoring Corp. v. President and
Fellows of Harvard College
GR: 185917 June 1, 2011
Facts:
Petitioner Fredco Manufacturing Corporation (Fredco),
a corporation organized and exiting under the laws of
the Philippines, filed a Petition for Cancellation of
Registration before the Bureau of Legal Affairs of the
Intellectual Property Office (IPO) against respondents
President and Fellows of Harvard College (Harvard
University), for the registration of its mark “Harvard
Veritas Shield symbol” under the classes 16, 18, 21, 25
and 28 of the Nice International Classification of Goods
and Services alleging that its predecessor-in-interest,
New York Garments Manufacturing & Export Co., Inc.,
has been already using the mark “Harvard” since 1985
when it registered the same mark under Class 25 of the
Nice Classification. Thus, Harvard University is not prior
user of the mark in the Philippines and, therefore, has
no right to register the mark.
On the other hand, Harvard University claimed that the
mark “Harvard” has been adopted by Harvard
University in Cambridge, Massachusetts, USA since
1639. Furthermore, it alleges that the name and mark
“Harvard” and “Harvard Veritas Shield Symbol” is
registered in more than 50 countries, including the
Philippines, and has been used in commerce since
1872. In fact, the name and mark is rated as one of
the top brands of the world, being worth between
$750M and $1B.
Decision of BLA-IPO: The Bureau of Legal Affairs, IPO
ruled in favour of Fredco ordering the cancellation of
Harvard University’s mark under Class 25 only because
the other classes were not confusingly similar with
respect to the goods and services of Fredco.
Decision of ODG-IPO (Office of the Director General of
IPO): Harvard University appealed before the Office of
the Director General of IPO wherein ODG-IPO reversed
the decision of BLA-IPO. The Director General ruled
that the applicant must also be the owner of the mark
sought to be registered aside from the use of it. Thus,
Fredco is not the owner of the mark because it failed
to explain how its predecessor got the mark “Harvard”.
There was also no evidence of the permission of
Harvard University for Fredco to use the mark.
Decision of the Court of Appeals: Fredco appealed the
decision of the Director General before the Court of
Appeals, which then affirmed the decision of ODG-IPO
considering the facts found by the Director General. CA
ruled that Harvard University had been using the marks
way before Fredco and the petitioners failed to explain
its use of the marks bearing the words “Harvard”,
“USA”, Established 1936” and “Cambridge,
Massachusetts” within an oblong device.
Issue: WON CA erred in affirming the decision of ODG-
IPO
Held:
The Petition has no merit. Although R.A. 166 Section 2
states that before a mark can be registered, it must
have been actually used in commerce for not less than
two months in the Philippines prior to filing an
application for its registration, a trademark registered
in a foreign country which is a member of the Paris
Convention is allowed to register without the
requirement of use in the commerce in the Philippines.
Under Section 37 of R.A. 166, registration based on
home certificate is allowed and does not require the
use of the mark in the Philippines. Furthermore, R.A.
8293 Section 239.2 provides that marks which have
been registered under R.A. 166 shall remain in force
but shall be subject to the provisions of R.A. 8293,
which does not require the prior use of the mark in the
Philippines.
Why the petition must fail?
1. The inclusion of the origin “Cambridge,
Massachusetts” in Fredco’s mark connotes that Fredco
is associated with Harvard University, which is really
not true. The registration of Fredco’s mark should have
been rejected.
2. The Philippines is a signatory of the Paris
Convention, which provides for the protection against
violation of intellectual property rights to all the
member countries regardless of whether the
trademarks is registered or not in a particular country.
In 1980, Luis Villafuerte issued a memo to the Director
of Patents ordering the latter to reject all pending
applications of marks which involves a well-known
brand around the world by applicants other than the
owner of the mark. 1983, Roberto Ongpin affirmed the
memo of Villafuerte by commanding the Director of
Patents to implement measures which will comply with
the provisions of the Paris Convention. He provided
criteria that should be considered to any marks that are
well-known in the Philippines or marks that belong to
persons subject to the protection of the Convention.
Currently, well-known marks are protected under
Section 123.1(e) of R.A. 8293. Additionally, Rule 102
of the Rules and Regulations on Trademarks, Service
Marks, Trade Names and Marked or Stamped
Containers provides for the criteria in determining a
well-known mark. The use of the mark in commerce is
not anymore required because it is enough that “any
combination” of the criteria be met in order for a mark
to be well-known.
The ODG-IPO traced the origin of the mark “Harvard”.
It ruled that Harvard University had been using the
mark centuries before Fredco although the latter may
have used the mark first in the Philippines before the
former. Likewise, CA ruled that the name and mark
“Harvard” and “Harvard Veritas Shield Symbol” were
first used in the United States since 1953 under Class
25. Finally, the Supreme Court declared the mark
“Harvard” to be well-known internationally, including
the Philippines.
Compulsory Licensing
(133) Parke Davis & Co. v. Doctors’ Pharmaceutical
GR: L-22221 August 31, 1965
Facts:
Petitioner Parke Davis & Co is the owner of a patent
entitled “Process for the Manufacturing of Antibiotics”,
which relates to a chemical compound represented by
a formula commonly known as chloramphenicol.
Respondent Doctors’ Pharmaceutical’s general
manager wrote a letter to Parke Davis requesting that
it be granted a voluntary license “to manufacture and
produce our own brand of medicine, containing
chloramphenicol, and to use, sell, distribute, or
otherwise dispose of the same in the Philippines under
such terms and conditions as may be deemed
reasonable and mutually satisfactory.”
Since Parke Davis was not inclined to grant the request,
respondent’s filed a petition with the Director of
Patents praying, initially, that it be granted compulsory
license based on four (4) different grounds, to wit:
1. The patented invention relates to medicine
and is necessary for public health and safety;
2. Parke Davis is unwilling to grant petitioner a
voluntary license under the said patent by
reason of which the production and
manufacture of needed medicine containing
chloramphenicol has been unduly restrained
 to a certain extent that it is becoming a
monopoly;
3. The demand for the medicine containing
chloramphenicol is not being met to an
adequate extent and on reasonable prices;
and
4. The patented invention is not being worked in
the Philippines on a commercial scale.
Parke Davis, in turn, filed a written opposition:
1. A compulsory license may only be issued to
one who will work the patent and respondent
does not intend to work it itself but merely to
import the patented product;
2. Respondent has not requested any license to
work the patented invention in the
Philippines;
3. Respondent is not competent to work the
patented invention;
4. To grant the requested license would be
against public interest and would only serve
its monetary interest; and
5. The patented invention is not necessary for
public health or safety.
At the hearing, Respondents abandoned the other
grounds and confined itself merely to the first ground,
which is: the patented invention relates to medicine
and is necessary for public health and safety. Then,
after, the Director of Patents rendered his decision
granting respondent the license prayed for.
Issue:
WON the Director of Patents gravely abuse his
discretion in ordering the grant of compulsory license
under Section 34 (d) of RA 165, as amended for the
manufacture of preparations containing
chloramphenicol.
Held:
Under RA 165, Sec 34, as amended provides:
RA 165, SEC. 34. Grounds for compulsory license. —
Any person may apply to the Director for the grant of
a license under a particular patent at any time after the
expiration of three years from the date of the grant of
the patent, under any of the following circumstances:
(a) If the patented invention is not being worked within
the Philippines on a commercial scale, although
capable of being so worked, without satisfactory
reason;
(b) If the demand for the patented article in the
Philippines is not being met to an adequate extent and
on reasonable terms, without satisfactory reason;
(c) If by reason of the refusal of the patentee to grant
a license or licenses on reasonable terms, or by reason
of the conditions attached by the patentee to licenses
or to the purchase, lease or use of the patented article
or working of the patented process or machine of
production the establishment of any new trade or
industry in the Philippines is prevented, or the trade or
industry therein is unduly restrained; or
(d) If the patented invention relates to food or
medicine or is necessary for public health or public
safety.
Reading the provision, it can be seen that any person
may apply for the grant of license under any of the
circumstances mentioned above, which are in the
disjunctive, showing that any of the circumstances
would be sufficient to support the grant, as evidence
by the use of “or” between paragraphs (c) and (d).
Each of these stand alone and is independent of the
others.
It order to be granted a license under Sec 34, it is
sufficient that the application be made after the
expiration of three (3) years from the date of the grant
of the patent and that the Director should find that a
case for granting such license has been made out. In
the case at bar, since it is admitted by Parke Davis that
the chemical substance is a medicine, while the Letters
of Patent were granted in 1950 and the application for
license was only filed in 1960, verily the period that had
lapsed is more than three 3 year. The conditions for
the grant had been fulfilled and there is no error in the
decision of the Director of Patents on this aspect.
In one of the contentions of the petitioner contradicting
the respondents claim that the patented invention is
not necessary for the public health or safety. It is
sufficient that the invention be related to medicine and
it is not required that it be at the same time necessary
for public health or public safety. Even assuming that
the invention is not only related to medicine but to one
that is also indispensable or necessary to public health
or safety, we can say that both conditions are present
since it was established that the substance is one the
constitutes an effective cure for gastro-enteritis
diseases or plays an important role in controlling
diarrhea-enteritis.
The next contention is that a compulsory license
cannot be granted because respondent does not intend
to work the patented invention itself but merely import
has not legal or factual basis. First, in Sec 34 of RA 165,
it does not require the petitioner of a license to work
the patented invention if the invention refers to
medicine because the term “worked or working” does
not apply to the circumstance mentioned in subsection
(d). Second, it is not the intention of respondent to
work/manufacture the invention but merely to
manufacture its brand of medicine preparations
containing such substance. Even if it be required that
the respondent should work the invention, they would
not be found wanting because its staff and facilities are ordered the grant since it was only after hearing and
adequate. considering the evidence that he ordered the grant.

Lastly, It is not a valid ground to refuse the license

applied for the fact that the patentee is working the
invention and has the exclusive right to the invention
for the term of 17 years. The provision permitting the
grant of compulsory license is intended not only to give
a chance to others to supply the public with the
quantity of the patented article but especially to
prevent the building up of patent monopolies.

Petitioner argues that the grant of license is against

public interest because it would force Parke Davis to
stop manufacturing the invention which would
adversely affect employment and prejudice technology
and cut off the local supply of medicinal products but
the Court points out that respondent does not intend
to compete with petitioner in manufacturing
chloramphenicol because it would either obtain it from
petitioner or import whatever it may need in the
manufacture of its own brand of preparations.

Even assuming that the consequence may come true if

the license is granted, that should not stand in the way
of the grant for that is in line with an express provision
of law. Granting the license may work disadvantage on
petitioner but the law must be observed until modified
or repealed. Besides, the advantage of granting the
license is that it will increase the supply and reduce the
price of the drug.

The Court also said that the right to exclude others

from the manufacturing, using, or vending an invention
relating to food or medicine should be conditioned to
allowing any person to manufacture, use, or vend the
same after a period of three years from the date of the
grant of the letters patent.

After all, the patentee is not entirely deprived of any

proprietary right. In fact, he has been given the period
of three years of complete monopoly over the patent.
Compulsory licensing of a patent on food or medicine
without regard to the other conditions imposed in
Section 34 is not an undue deprivation of proprietary
interests over a patent right because the law sees to it
that even after three years of complete monopoly
something is awarded to the inventor in the form of a
bilateral and workable licensing agreement and a
reasonable royalty to be agreed upon by the parties
and in default of such agreement, the Director of
Patents may fix the terms and conditions of the license.

Lastly, Petitioner contends that Director of Patents

erred in ordering grant of patents but Court said that
this argument has no merit considering that the
application does not automatically entitle the person
applying to such a grant, as was done by the Director.
It cannot be said that the Director automatically