Emerald Garment v CA GR 100098, 29 December 1995; First Division, Kapunan (J): Facts: On September 18, 1981 H.D.

Lee Co., Inc., a foreign corporation organized under the laws of U.S.A., filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 for the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie issued on October 27, 1980 in the name of p e t i t i o n e r Emerald Garment Manufacturing Corporation, a domestic corporation organized and existing under Philippine laws. Private respondent, invoking Sec. 37 of R.A. No. 166 (Trademark Law) and Article VIII of the Paris Convention for the Protectionof Industrial Property, argued that petitioner's trademark "so closely resembled its own t r a d e m a r k , ' L E E ' a s previously registered and used in the Philippines, and not abandoned, as to be likely, when applied to or used in connection with petitioner's goods, to cause confusion, mistake and deception on the part of the purchasing public a s t o t h e o r i g i n o f t h e g o o d s . O n 1 9 J u l y 1 9 8 8 , t h e D i r e c t o r o f Patents rendered a decision granting private respondent's petition for c a n c e l l a t i o n a n d o p p o s i t i o n t o registration. On appeal, the Court of Appeals affirmed the decision of the Bureau of Patents. Issue: Whether the trademark stylistic Mr. Lee is confusingly similar to HD Lees trademarks to warrant its cancellation in the supplemental Registry. Held: No. Stylistic Mr. Lee is not a variation of the Lee mark. HD Lees variation follows the format lee riders, leesure, and leeleens and thus does not allow the conclusion that Stylistic Mr. Lee is another variation under HD Lees mark. Although on stylistic Mr. Lee s label, the word lee is prominent, the trademark should be considered as a whole and not piecemeal. Further, Lee is a surname. Personal names nor surnames cannot be monopolized as trademarks or tradenames as against others of the same name or surname . Furthermore, inasmuch as Emerald Garment has shown the use of stylistic Mr. Lee since 1975 through sales invoice from stores and retailers; and that HD Lee was not able for transactions period to 1981; the Supreme Court allowed the use of stylistic Mr. Lee by Emerald Garment. Dissent: The word "LEE" is the most prominent and distinctive feature of the appellant's trademark and all of the appellee's "LEE" trademarks. It is the mark which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. The alleged difference is too insubstantial to be noticeable. The likelihood of confusion is

further made more probable by the fact that both parties are engaged in the same line of business. Although the Court decided in favor of the respondent, the appellee has sufficiently established its right to prior use and registration of the trademark "LEE" in the Philippines and is thus entitled to protection from any infringement upon the same. The dissenting opinion of Justice Padilla is more acceptable.