Phil Refining v, Ng Sam Digest

Phil. Refining Co. v. Ng Sam and Director of Patents G.R. No. L-26676,
July 30, 1982
Facts of the Case: The petitioner Philippine Refining Co. first used'Camia' as trademark
for its products in 1922. In 1949, it caused the registration of the said trademark for its lard,
butter, cooking oil, detergents, polishing materials and soap products. In 1960, Ng Sam
filed an application for 'Camia' for its ham product (Class 47), alleging its first use in 1959.
The petitioner opposed the said application but the Patent Office allowed the registration
of Ng Sam.

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

HELD: NO. The businesses of the parties are non-competitive and the products are so
unrelated that the use of the same trademark will not give rise to confusion nor cause
damage to the petitioner. The right to a trademark is a limited one, hence, others may use
the same mark on unrelated goods if no confusion would arise.

A trademark is designed to identify the user, hence, it should be so distinctive and

sufficiently original so as to enable those who see it to recognize instantly its source or
origin. A trademark must be affirmative and definite, significant and distinctive and
capable of indicating origin.

'Camia' as a trademark is far from being distinctive, It in itself does not identify the
petitioner as the manufacturer of producer of the goods upon which said mark is used. If a
mark is so commonplace, it is apparent that it can't identify a particular business and he
who adopted it first cannot be injured by any subsequent appropriation or imitation by
others and the public will not be deceived.

Mere classification of the goods cannot serve as the decisive factor in the resolution of
whether or not the goods a related. Emphasis should be on the similarity of products
involved and not on arbitrary classification of general description of their properties or
characteristics.
 VICTORIAS MILLING VS ONG SU

Sept. 30, 1997

FACTS:

On October 4,1963, Victorias Milling Company, Inc. filed with the Philippine Patent office a
petition to cancel the registration of Ong Su trademark “Valentine.”

The petitioner allied that its trademark “Victorias” which was registered on November
9,1961 and diamond design has distinctive of its sugar long before the respondent used its
trademark; that the registration of “Valentine” and design has caused and will cause great
damage to petitioner by reason of mistake, confusion, or deception among the purchasers
because it is similar to its “Victorias trademark; that registration was fraudulently obtained
by Ong Su and that “ Valentine falsely suggest a connection with Saint Valentine or with an
institution or belief.

The respondent averred that he is doing business under the name and style “Valentine
Packaging” and has registered the trademark “Valentine” with a design for sugar and was
registered on June 20,1961; that the trademark “Victorias with diamond design and the
trademark “Valentine with a design are two different marks; and that there is absolutely no
likelihood of confusion, mistake or deception to purchasers through the concurrent use of
the petitioner’s mark “Victorias.

The Director of Patents denied the petition to cancel the certificate of registration of the
respondent Ong Su covering the trademark “Valentine. The decision of the Director of
Patents was also affirmed by the Supreme Court.

ISSUES:

1.Whether or not the respondent director of patents erred in holding that petitioner’s
registered diamond design is not an index of origin.

2.Whether or not the respondent director of patents erred in holding that petioner is
required to establish that its diamond design has acquired a secondary meaning.

3.Whether or not the respondent director of patents erred in holding petitioner’s diamond
design has not acquired a secondary meaning.

4.Whether or not the respondent director of patents erred in confining his comparison of
petitioner’s and respondent’s respective trademarks to one sole item of their design,
ignoring the complete labels as actually used in trade and seen by consumers.
5.Whether or not the respondent director of patents erred in taking the position that in
cases of trademark cancellation involving among others

6.Whether or not the respondent director of patents erred in holding that because the literal
portions of the respective trademarks in question, namely, the respective names “Victorias
and “Valentine”, have no similarity, there is no reasonable likelihood of purchaser confusion.

7.Whether or not the respondent director of patents erred in assuming that petioner, or
the owner of any imitated or infringed trademark for that matter must establish actual
purchaser confusion.

8.Whether or not the respondent director of patents erred in holding that the registration
of the Valentine trademark by respondent Ong Su was not prudulently obtained.

9.Whether or not the respondent director of patents, acting through hearing officer
Amando Marquez, erred in admitting respondent Ong Su’s exhibits pertaining to one
Mariano Ang said name not having been clearly established as an alias, although admittedly
unauthorized, of respondent Ong Su.

RULING:

1. The contention of petitioner that the diamond design in its trademark is an index of origin
has no merit.

2. The petitioner was not able to establish a secondary meaning. The petioners has not
shown that the design portion of the mark has been so used that purchasers recognize the
design, standing alone, as indicating goods coming from registrant.

3. No, as correctly stated by the Director of Patents, common geometric shapes such as
diamonds ordinarily are not regarded as index of origin for goods to which the remarks are
applied. There is no evidence that the diamond design in the trademark of the petitioner has
acquired a secondary meaning with respect to its sugar business.

4. No, The word Victorias is what identifies the sugar contained in the bag as the product of
the petitioner.
5. No, the respondent trademark cannot be cancelled. The evidence is that Ong Su has been
using his trademark since prior to the last World War and he obtained the registration therof
on June 20,1961 while petitioner registered on November 9,1961.

6. No, it is clear that the words “Valentine and Victorias are not similar in spelling and do not
have a similar sound when pronounced.

7. No, The proposed testimony of Ernesto Duran that in February 1963 he went to Arangue
market and bought one bag of sugar which he thought was Victorias and when he went
home he found out that the sugar was marked “Valentine” is not sufficient evidence that the
two trademarks ar so similar that buyers are confused.

8. No, there is no evidence that the respondent Ong Su had obtained the registration of his
trademark “Valentine” and design by means of fraud. The said trademark was registered in
the Philippines Patent Office before the petitioner registered its trademark.

9. No, the counsel of petitioner had already extensively cross-examined Ong Su as to a

citizenship, alien certificate of registration and the other name Mariano Ang. It seems
immaterial whether or not Ong Su has judicial authority to use Mariano Ang as an alias.
There is evidence that even before the last World War, the trademark “Valentine and design
had been used under the name of either Ong Su or Mariano Ang.

*NOTES*

There is no violation of trademark in this case. The petitioner never acquired secondary
meaning in trademark used. There is no reasonable likelihood of purchaser’s confusion.
Color alone, unless displayed in distinct or arbitrary design, does not function as trademark.
Also, the printing sequences or arrangement of such legends as weight, contents and
manufacturer packing, it is merely a matter pertaining to goods. A matter of unfair
competition which the Patent office has no jurisdiction.

Doctrine of Secondary Meaning

Mark has become distinctive, as used on or in connection with the applicant's goods in
commerce.

secondary meaning doctrine is that the mark comes to identify not only the goods but the
source of those goods. To establish secondary meaning, it must be shown that the primary
significance of the term in the minds of the consuming public is not the product but the
producer.
Etepha v. Director of Patents (G.R. No. L-20635)
Facts:
Respondent Westmont Pharmaceuticals, an American corporation, sought registration of
trademark ‘Atussin’ placed on its medicinal preparation for the treatment of coughs.
Petitioner Etepha, owner of the trademark ‘Pertussin’ placed also on preparation for cough
treatment, objected claiming that it will be damaged since the 2 marks are confusingly
similar. The Director of Patents gave due course to the application.

Issue:
Whether or not petitioner’s trademark is registrable.

Ruling: YES.
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”.
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.
“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” of the word “tussin” in a trademark. 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”. 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.”
G.R. No. L-24802 October 14, 1968

LIM KIAH, petitioner,

vs.
THE KAYNEE COMPANY and THE DIRECTOR OF PATENTS, respondents.

The dispute in this controversy centered around the right to use the trademark KAYNEE.
Petitioner Lim Kiah, on April 5, 1957, filed an application with the Philippines Patent Office
to register such a trademark allegedly being used by him on undershirts, polo shirts,
T-shirts, pants, sporting wear and handkerchiefs, asserting further that the date of its first
use went back to January 7, 1957. Such an application was oppossed by the Kaynee
Company, one of the respondents here, a South Carolina corporation. It was likewise
alleged by it that it had used the same in the Philippines as far back as 1951, on goods
similar to those being sold by the applicant. Its opposition likewise stressed that such a
trademark had by then become exceedingly popular in the Philippines enjoying
tremendous amount of goodwill arising form newspaper, radio and television advertising
as well as the high and superior quality of its products.

Both testimonial and documentary evidence were introduced before the Philippines
Patent Office. Respondent Kaynee Company adduced proof to the effect that late in 1949
or early 1950, the Aguinaldo's Department Store sold therein knitted shirts as well as polo
shirts, cotton sports shirts, swimming trunks and cotton pajamas coming form it and so
identified. There was also testimony to the effect that KAYNEE products were advertised
in the Philippines. The assertion as to such advertisement was confirmed by one official of
a public relations and management firm and another from an advertising agency.

The applicant testified on his own behalf asserting that as of 1957 he had started using
such trademark on his products, the word in Chinese, according to him, being equivalent
to fast in English or mabilis in Tagalog. He referred to the due investigation he made
before filing such application for registration. He ascertained that no one had previously
registered such trademark in the Philippines. He spoke of his advertising his products in at
least two Manila newspapers and a weekly magazine.

The Director of Patents concluded that from the facts of record and the exhibits presented,
the opposition by the Kaynee Company was without merit. Thus: "It is clear from the
testimony of the Opposser's witnesses that it had never used the trademark in the
Philippines through its own initiative but because of Aguinaldo's importation and retail
activities. It does not appear of record that Opposser had a direct hand in the introduction
of the goods bearing its trademark into this country. There is no distributorship agreement
between The Kaynee Company and Aguinaldo's, or for that matter, amy local outlet.
Neither has there been shown a license or dealership agreement, an assignment, or any
other document to prove that the Opposer had authorized Aguinaldo's to market the
KAYNEE goods locally. If ever the word KAYNEEE has been known to exist in this
country, it is because of Aguinaldo's trade activities and not those of the Opposer. It is
incumbent upon Opposer not only to establish prior use of its mark but prior use thereof
for goods related to those of applicant as to be likely to result in purchaser's ascribing to a
common origin."1 As the prior use should exist on the part of the oppositor and as in this
case it had not done so, there being no showing either that it authorized the Aguinaldo's
Department Store to use its trademark, its opposition was dismissed.

It did not result, however, in petitioner Lim Kiah emerging as the victorious party. As noted
in the aforesiad decision of the Director of Patents of February 22, 1965, "sufficient
grounds exist for the ex parte rejection of [petitioner's] application." The decision
explained why: "The Opposer was able to prove that the Respoondent-Applicant is not the
owner of the trademark KAYNEE. Under Rule 34 of the Revised Rules of Practice in
Trademark Cases, only the owner of the trdemark may apply for its registration. It has
been proven by the evidence for the Opposer that the trademark KAYNEE had been
advertised in newspapers as early as the year 1953 ... through Aguinaldo's advertising
activities. From that and subsequent years it has been at least known to some segment of
the purchasing public that the Aguinaldo's was continuously using the trademark KAYNEE
as among those sold in its store. Under Section 4(d) of Republic Act No. 166, a trademark
shall not be registrable if it consists of or comprises a mark or tradename previously used
in the Philippines by another and not abandoned. .... It cannot be denied that in this
particular case the word 'another' used by the Statute can refer to Aguinaldo's."2 As to his
authority to reject ex parte the application for registration, respondent Director of Patents
relied on Englader v. Continental Distilling Co.3 The dispositive portion of the above
decision was worded thus: "..., the opposition is dismissed for lack of [merit], but the
application of Lim Kiah is rejected ex parte."4

Then came this petition for the review of the above decision of the Director of Patents,
likewise included as respondent. Petitioner Lim Kiah assigned three alleged errors,
namely, that he had presented evidence "clearly and fully establishing his ownership" of
the trademark, that no evidence existed to support the ruling that the Aguinaldo's
Department Store had been using such a trademark, and that the construction fastened
on Section 4(d) of Republic Act No. 166 by respondent Director of Patents ignored other
relevant sections.

The appeal cannot prosper. The decision of the Director of Patents must be sustained.
The errors assigned do not call for its reversal.

The first two of the above errors are factual in character. It is well-settled that we are
precluded from making such an inquiry as the finding of facts of the Director of Patents in
the absence of any showing that there was a grave abuse of discretion is binding on us.
As set forth by Justice Makalintal in Chung Te v. Ng Kian Giab:5 "The rule is that the
findings of fact by the Director of Patents are conclusive on the Supreme Court provided
they are supported by substantial evidence."

That leaves only the third assigned error, petitioner maintaining the view that when the
Director of Patents relied on the explicit and literal language of the appropriate section,6 to
the effect that a trademark shall not be registrable if it "consists of or comprises mark or
trade-name ... previously used in the Philippines by another and not abandoned," it
ignored other relevant provision which could have called for a different conclusion. Such
an assertion flies in the face of the explicit and categorical terminology of the act. It is
unequivocal in character and does not call for any interpretation that may result in
modifying or changing its meaning.

As early as 1913, in Lizarraga Hermanos v. Yap Tico,7 it was stressed that our first and
fundamental duty is to apply the law. Construction and interprretation come only "after it
has been demonstrated that application is impossible and inadequate without them." Such
a principle has since then commended itself for acceptance and has been invariably
followed, especially so in not a few of our recent decisions.8

It is apparent, therefore, why, as above noted, the appeal is doomed to failure. The
decision of the Director of Patents is not only sound in law but also commendable for its
consonance with the appropriate ethical standard which by no means should be excluded
from the business world as an alien, if not a hostile, force. While in the fierce, competive
jungle which at times constitutes the arena of commercial transactions, shrewdness and
ingenuity are at a premium, the law is by no means called upon to yield invariably its nod
of approval to schemes frowned upon by the concept of fairness. Here, petitioner engaged
in manufacturing and selling the same kind of products would rely on a trademark, which
undeniably was previously registered abroad and which theretofore had been used and
advertised extensively by one of the leading department stores in the Philippines.

Petitioner would have the Director of Patents believe reliance on what KAYNEE stands for
as understood in the language of his land, possibly even as a mark of ancestral piety,
caused him to make use of it. Such a solemn avowal did not inevitably call for assent,
considering that such a trademark had long stood for similar products which undoubtedly
were well-known and patronized locally. It did not improve his standing at all. As a matter
of fact, without his so intending it, the legitimate suspicion did arise that such a plea while
perhaps a tribute to his ingenuity hardly seemed to betray fidelity to fact. He ought to have
been aware then that both the administrative agencies and the juduciary can be trusted to
possess enough discernment not to be taken in by so transparent a verbal ploy.

WHEREFORE, the decision is affirmed, with costs against petitioner Lim Kiah.
AMERICAN WIRE AND CABLE CO. vs. DIRECTOR OF PATENTS

G.R. No. L-26557; February 18, 1970

FACTS:

Petitioner American Wire and Cable Company (American) is the owner of the registered
trademark DURAFLEX and Device for electric wires.

On June 1962, private respondent/applicant Central Banahaw (Central) sought to register

the label DYNAFLEX for electric wires.

Petitioner opposed on the ground that Central’s use of the trademark DYNAFLEX would
confuse purchasers looking for DURAFLEX. The mark sought to beregistered allegedly having
practically the same spelling, pronunciation and sound, and covering the same good, but had
not been in use continuously, unlike DURAFLEX which was in use since 1958.

Director of Patents held that DYNAFLEX was not similar to DURAFLEX, since the logo design
was dissimilar, the DURAFLEX logo being in all caps while DYNAFLEX was in miniscule, and
thus gave Central’s application to trademark DYNAFLEX due course.

ISSUE:

Whether or not the mark DYNAFLEX and Device is registrable as label for electric wires, class
20, considering that the trademark DURAFLEX and Globe representation also for electric
wires, machines and supplies under class 20, has been registered more than 4 years earlier.

HELD:

NO, the mark sought to be registered failed to “dominancy test”

The pertinent law, Republic Act 166, as amended, on registrability of trademarks, prescribes:

SEC. 4. — The owner of a trademark, 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, unless it:

(d) Consists of or comprises a mark or trade name which so resembles a mark or trade-name
registered in the Philippines by another and not abandoned, as to be likely, when applied to
or used in connection with the goods, business or services of the applicant, to cause
confusion or mistake or to deceive purchasers. (Emphasis supplied)

It is clear from the above-quoted provision that the determinative factor in a contest
involving the registration of trademark is whether the use of such mark would likely cause
confusion or mistake on the part of the buying public. The test of “likelihood” is the
“dominancy test” or the assessment of the essential ordominant features in the competing
labels to determine whether they are confusingly similar. In fact, even their similarity in
sound is taken into consideration, where the marks refer to merchandise of the same
descriptive properties, for the reason that trade idem sonans constitutes a violation of trade
mark patents.
The court found:

The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent.
Not only are the initial letters and the last half of the appellations identical, but the
difference exists only in two out of the eight literal elements of the designations. Coupled
with the fact that both marks cover insulated flexible wires under class 20; that both
products are contained in boxes of the same material, color, shape and size; that the
dominant elements of the front designs are a red circle and a diagonal zigzag commonly
related to a spark or flash of electricity; that the back of both boxes show similar circles of
broken lines with arrows at the center pointing outward, with the identical legend "Cut Out
Ring" "Draw From Inside Circle", no difficulty is experienced in reaching the conclusion that
there is a deceptive similarity that would lead the purchaser to confuse one product with the
other.

The Director of Patents has predicated his decision mostly on the semantic difference and
connotation of the prefixes "Dura" and "Dyna" of the competing trademarks, unfortunately
forgetting that the buyers are less concerned with the etymology of the words as with their
sound and the dominant features of the design.

The court further explained that "unlike the pharmacists or druggists, the dispensers of
hardware or electrical supplies are not generally known to pay as much concern to the brand
of articles asked for by the customer and of a person who knows the name of the brand but
is not acquainted with it is appearance, the likelihood of the DYNAFLEX product being
mistaken for DURAFLEX is not remote."

Thus the request to register this trademark must be denied.

G.R. No. L-28744 April 29, 1971
ACOJE MINING CO., INC., petitioner-applicant, vs.
THE DIRECTOR OF PATENTS, respondent.
FERNANDO, J.:
Facts:
Acoje Mining Co., (petitioner) filed an application for registration of the trademark Lotus to
be used on its soy sauce product. On the other hand, Philippine Refining Co., (PRC), another
domestic corporation, was also using the same trademark Lotus on its edible oil. The Chief of
the trademark examiner rejected the application of Acoje due to its confusing similarity with
that of the trademark already registered in favour of the PRC. The Director of Patents upheld
the view of the trademark examiner on the ground that while there is a difference between
soy sauce and edible oil and there were dissimilarities in the trademarks, still the close
relationship of the products, soy sauce and edible oil, is such that purchasers would be
misled into believing that they have a common source. Hence, this present petition for
review.

Issue:
Whether or not Acoje Mining Co., may register for the purpose of advertising its product,
soy sauce, the trademark Lotus.
Held:
The Court answered in the affirmative and the decision of the Director of Patents should be
reversed. The determinative factor in a contest involving registration of trademark is not
whether the challenging mark would actually cause confusion or deception of the
purchasers but whether the use of the mark would likely cause confusion or mistake on the
part of the buying public. The law does not require that the competing trademarks must be
so identical as to produce actual error or mistake; 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 newer brand for it. In the
present case, there is quite difference between soy sauce and edible oil. If one is in the
market for the former, he is not likely to purchase the latter just because of the trademark
Lotus. There is no denying that the possibility of confusion is remote considering the
difference in the type used, the coloring, the petitioner’s trademark being in yellow and red
while that of the PRC being in green and yellow, and the much smaller size of petitioner’s
trademark.
McDONALD’S CORPORATION v. MACJOY FASTFOOD CORPORATION. G.R. No. 166115.
February 2, 2007

FACTS:

MacJoy Fastfood Corp. is a corporation in the sale of fastfood based in Cebu filed with IPO
for the registration of their name.

McDonald's Corporation filed an opposition to the application. McDonald's claims that their
logo and use of their name would falsely tend to suggest a connection with MacJoy's
services and food products, thus, constituting a fraud upon the general public and further
cause the dilution of the distinctiveness of petitioner’s registered and internationally
recognized MCDONALD’S marks to its prejudice and irreparable damage.

Respondent averred that MACJOY has been used for the past many years in good faith and
has spent considerable sums of money for said mark.

The IPO held that there is confusing similarity The CA held otherwise stating there are

predominant difference like the spelling, the font and color of the trademark and the picture
of the logo.

ISSUE: Whether the ruling of the CA is correct.

RULING:

No. Jurisprudence developed two tests, the dominancy and holistic test. The dominancy test
focuses on the similarity of the prevalent features of the competing trademarks that might
cause confusion or deception while the holistic test requires the court to consider the
entirety of the marks as applied to the products, including the labels and packaging, in
determining confusing similarity. Under the latter test, a comparison of the words is not the
only determinant factor.

The IPO, though they correctly used the dominancy, they should have taken more
considerations. In recent cases, the SC has consistently used and applied the dominancy test
in determining confusing similarity or likelihood of confusion between competing
trademarks. The CA, while seemingly applying the dominancy test, in fact actually applied
the holistic test.

Applying the dominancy test to the instant case, the Court both marks are confusingly
similar with each other such that an ordinary purchaser can conclude an association or
relation between the marks. The predominant features such as the "M," "Mc," and "Mac"
appearing in both easily attract the attention of would-be customers. Most importantly,
both trademarks are used in the sale of fastfood products.

Petitioner has the right of ownership in the said marks. Petitioner's mark was registered in
1977 while respondent only in 1991.
Mirpuri v. CA (G.R. No. 114508)
Date: June 9, 2016Author: jaicdn0 Comments

Facts:
Lolita Escobar applied for the registration of the trademark ‘Barbizon’ for her products such
as brassieres and ladies undergarments. Respondent Barbizon Corporation, an American
corporation, opposed alleging that petitioner’s mark is confusingly similar to its own
trademark ‘Barbizon.’ Escobar’s application was given due course and her trademark was
registered. Later, Escobar assigned all her rights to petitioner Mirpuri who failed to file an
Affidavit of Use resulting in the cancellation of the trademark. Petitioner then applied for
registration of the trademark to which respondent Barbizon again opposed, now invoking
the protection under Article 6bis of the Paris Convention. The Director of Patents declaring
respondent’s opposition was already barred, petitioner’s application was given due course.
CA reversed the judgment.

Issue:
Whether or not respondent may invoke the protection under Article 6bis of the Paris
Convention.

Ruling: YES.
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. 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. Art. 6bis is a
self-executing provision and does not require legislative enactment to give it effect in the
member country. 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.
The Philippines and the United States of America have acceded to the WTO Agreement.
Conformably, the State must reaffirm its commitment to the global community and take
part in evolving a new international economic order at the dawn of the new millennium.