Kho vs Court of Appeals

Intellectual Property Law on Copyright Proper Subjects of Copyright Elidad Kho is the owner of KEC Cosmetics Laboratory and she was also the holder of copyrights over Chin Chun Su and its Oval Facial Cream Container/Case. She also bought the patent rights over the Chin Chun Su & Device and Chin Chun Su for medicated cream from one Quintin Cheng, who was the assignee of Shun Yi Factory a Taiwanese factory actually manufacturing Chin Chun Su products. Kho filed a petition for injunction against Summerville General Merchandising and Company to enjoin the latter from advertising and selling Chin Chun Su products, in similar containers as that of Kho, for this is misleading the public and causing Kho to lose income; the petition is also to enjoin Summerville from infringing upon Khos copyrights. Summerville in their defense alleged that they are the exclusive and authorized importer, repacker and distributor of Chin Chun Su products; that Shun Yi even authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office; that Quintin Cheng, from home Kho acquired her patent rights, had been terminated by Shun Yi. ISSUE: Whether or not Kho has the exclusive right to use the trade name and its container. HELD: No. Kho 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 (not copyright like what she registered for) 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. Khos 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.

McDonalds Corporation vs Macjoy Fastfood Corporation

On February 5, 2012
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online marketing

Intellectual Property Law Law on Trademarks, Service Marks and Trade Names Dominancy Test vs Holistic Test Since 1987, MacJoy Devices had been operating in Cebu. MacJoy is a fast food restaurant which sells fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halohalo and steaks. In 1991, MacJoy filed its application for trademark before the Intellectual Property Office (IPO). McDonalds opposed the application as it alleged that MacJoy closely resembles McDonalds corporate logo such that when used on identical or related goods, the trademark applied for would confuse or deceive purchasers into believing that the goods originate from the same source or origin that the use and adoption in bad faith of the MacJoy and Device mark would falsely tend to suggest a connection or affiliation with McDonalds restaurant services and food products, thus, constituting a fraud upon the general public and further cause the dilution of the distinctiveness of McDonalds registered and internationally recognized McDonaldS marks to its prejudice and irreparable damage. The IPO ruled in favor of McDonalds. MacJoy appealed before the Court of Appeals and the latter ruled in favor of MacJoy. The Court of Appeals, in ruling over the case, actually used the holistic test (which is a test commonly used in infringement cases). The holistic test looks upon the visual comparisons between the two trademarks. In this case, the Court of Appeals ruled that other than the letters M and C in the words MacJoy and McDonalds, there are no real similarities between the two trademarks. MacJoy is written in round script while McDonalds is written in thin gothic. MacJoy is accompanied by a picture of a (cartoonish) chicken while McDonalds is accompanied by the arches M. The color schemes between the two are also different. MacJoy is in deep pink while McDonalds is in gold color. ISSUE: Whether or not MacJoy infringed upon the trademark of McDonalds. HELD: Yes. The Supreme Court ruled that the proper test to be used is the dominancy test. The dominancy test not only looks at the visual comparisons between two trademarks but also the aural impressions created by the marks in the public mind as well as connotative comparisons, giving little weight to factors like prices, quality, sales outlets and market segments. In the case at bar, the Supreme Court ruled that McDonalds and MacJoy marks are confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks. To begin with, both marks use the corporate M design logo and the prefixes Mc and/or Mac as dominant features. The first letter M in both marks puts emphasis on the prefixes Mc and/or Mac by the similar way in which they are depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is the prefix Mc, an abbreviation of Mac, which visually and aurally catches the attention of the consuming public. Verily, the word MACJOY

attracts attention the same way as did McDonalds, MacFries, McSpaghetti, McDo, Big Mac and the rest of the MCDONALDS marks which all use the prefixes Mc and/or Mac. Besides and most importantly, both trademarks are used in the sale of fastfood products. Further, the owner of MacJoy provided little explanation why in all the available names for a restaurant he chose the prefix Mac to be the dominant feature of the trademark. The prefix Mac and Macjoy has no relation or similarity whatsoever to the name Scarlett Yu Carcel, which is the name of the niece of MacJoys president whom he said was the basis of the trademark MacJoy. By reason of the MacJoys implausible and insufficient explanation as to how and why out of the many choices of words it could have used for its trade-name and/or trademark, it chose the word Macjoy, the only logical conclusion deducible therefrom is that the MacJoy would want to ride high on the established reputation and goodwill of the McDonalds marks, which, as applied to its restaurant business and food products, is undoubtedly beyond question.

Asia Brewery vs Court of Appeals and San Miguel Corporation

On February 5, 2012
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online marketing Intellectual Property Law Law on Trademarks, Service Marks and Trade Names Unfair Competition

In September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for allegedly infringing upon their trademark on their beer product popularly known as San Miguel Pale Pilsen; that Asia Brewerys Beer na Beer product, by infringing upon SMCs trademark has committed unfair competition as Beer na Beer creates confusion between the two products. The RTC ruled in favor of Asia Brewery but the Court of Appeals reversed the RTC. ISSUE: Whether or not Asia Brewery infringed upon the trademark of SMC. HELD: No. Both products are manufactured using amber colored steinie bottles of 320 ml. Both were labeled in a rectangular fashion using white color paint. But other than these similarities, there are salient differences between the two. As found by the Supreme Court, among others they are the following:

1. The dominant feature of SMCs trademark are the words San Miguel Pale Pilsen while that of Asia Brewerys trademark is the word Beer. Nowhere in SMCs product can be seen the word Beer nor in Asia Brewerys product can be seen the words San Miguel Pale Pilsen. Surely, someone buying Beer na Beer cannot mistake it as San Miguel Pale Pilsen beer. 2. The bottle designs are different. SMCs bottles have slender tapered neck while that of Beer na Beer are fat. Though both beer products use steinie bottles, SMC cannot claim that Asia Brewery copied the idea from SMC. SMC did not invent but merely borrowed the steinie bottle from abroad and SMC does not have any patent or trademark to protect the steinie bottle shape and design. 3. In SMC bottles, the words pale pilsen are written diagonally while in Beer na Beer, the words pale pilsen are written horizontally. Further, the words pale pilsen cannot be said to be copied from SMC for pale pilsen are generic words which originated from Pilsen, Czechoslovakia. Pilsen is a geographically descriptive word and is nonregistrable. 4. SMC bottles have no slogans written on them while Asia Brewerys bottles have a copyrighted slogan written on them that is Beer na Beer. 5. In SMC bottles, it is expressly labeled as manufactured by SMC. In Asia Brewery beer products, it is likewise expressly labeled as manufactured by Asia Brewery. Surely, there

is no intention on the part of Asia Brewery to confuse the public and make it appear that Beer na Beer is a product of SMC, a long-established and more popular brand.

Justice Cruz Dissenting: A number of courts have held that to determine whether a trademark has been infringed, we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. The court therefore should be guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the value of which may be dissipated as soon as the court assumes to analyze carefully the respective features of the mark. (Del Monte vs CA & Sunshine Sauce)

Del Monte vs Court of Appeals and Sunshine Sauce

On February 7, 2012
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online marketing Intellectual Property Law Law on Trademarks, Service Marks and Trade Trademark Infringement Unfair Competition

Del Monte Corporation is an American corporation which is not engaged in business in the Philippines. Though not engaging business here, it has given authority to Philippine Packing Corporation (Philpack) the right to manufacture, distribute and sell in the Philippines various agricultural products, including catsup, under the Del Monte trademark and logo. In 1965, Del Monte also authorized PPC to register with the Patent Office the Del Monte catsup bottle configuration. Philpack was issued a certificate of trademark registration under the Supplemental Register. Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing was using Del Monte bottles in selling its products and that Sunshine Sauces logo is similar to that of Del Monte. The RTC of Makati as well as the Court of Appeals ruled that there was no infringement because the trademarks used between the two are different in designs and that the use of Del Monte bottles by Sunshine Sauce does not constitute unfair competition because as ruled in Shell Company vs Insular Petroleum: selling oil in containers of another with markings erased, without intent to deceive, was not unfair competition. ISSUE: Whether or not there is unfair competition and infringement in the case at bar. HELD: Yes. The Supreme Court recognizes that there really are distinctions between the designs of the logos or trademarks of Del Monte and Sunshine Sauce. However, it has been that side by side comparison is not the final test of similarity. Sunshine Sauces logo is a colorable imitation of Del Montes trademark. The word catsup in both bottles is printed in white and the style of the print/letter is the same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a tomato. The person who infringes a trade mark does not normally copy out but only makes colorable changes, employing enough points of similarity to confuse the public with enough points of differences to confuse the courts. What is undeniable is the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from the others. When as in this case, Sunshine chose, without a reasonable explanation, to use the same colors and letters as those used by Del Monte though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive. The Supreme Court also ruled that Del Monte does not have the exclusive right to use Del Monte bottles in the Philippines because Philpacks patent was only registered under the Supplemental Register and not with the Principal Register. Under the law, registration under the Supplemental

Register is not a basis for a case of infringement because unlike registration under the Principal Register, it does not grant exclusive use of the patent. However, the bottles of Del Monte do say in embossed letters: Del Monte Corporation, Not to be Refilled. And yet Sunshine Sauce refilled these bottles with its catsup products. This clearly shows the Sunshine Sauces bad faith and its intention to capitalize on the Del Montes reputation and goodwill and pass off its own product as that of Del Monte.

Read the full text of the case here. Compare it with the case of Asia Brewery vs CA and SMC. Note: This case (Del Monte case) is a prime example of how to apply the Holistic Test as opposed to the Asia Brewery case which applied the Dominancy Test.

Ana Ang vs Toribio, G.R. No. L-48226, December 14, 1942 FACTS Respondent Toribio Teodoro, 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. Petitioner 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 that year she advertised the factory which she had just built and it was when this was brought to the attention of the herein respondent filed a complaint against the petitioner. The trial court absolved the complaint 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 trademark by the plaintiff(petitioner); and that there had been no fraud in the use of the said trademark by the defendant because the goods on which it is used are essentially different from those of the plaintiff. The Court of Appeals reversed the trial courts judgment holding that by uninterrupted and exclusive use since 1910 in the manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary meaning. ISSUE Whether or not the doctrine of secondary meaning can be applied to respondents trade-mark. RULING OF THE COURT 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. Ang Tibay, as used by the respondent to designate his wares, had exactly performed that function for 22 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. Even if Ang Tibay, therefore, were not capable of exclusive appropriation as a trade-mark, the application of the doctrine of secondary meaning could nevertheless be fully sustained because, in any event, by respondents long and exclusive use of said phrase with reference to his products and his business, it has acquired a propriety connotation.