Facts:

In 1970, Escobar filed an application with the Bureau ofPatents for

the registration of the trademark Barbi on! for use in horsiers and ladies undergarments "IP# $o% &'&(% Pri)ate respondent reported Barbi on #orporation, a corporation organi ed and doing business under the laws of $ew *ork, +,-, opposed the application% It was alleged that its trademark is confusingl. similar with that of Escobar and that the registration of the said trademark will cause damage to its business reputation and goodwill% In 197/, the 0irector of Patents ga)e due course to the application% Escobar later assigned all his rights and interest o)er the trademark to petitioner% In 1979, Escobar failed to file with the Bureau the affida)it of use of the trademark re1uired under the Philippine 2rademark 3aw% 0ue to this failure, the Bureau cancelled Escobar4s certificate of registration% In 19'1, Escobar and petitioner separatel. filed this application forregistration of the same trademark% "IP# 50/9(% Pri)ate respondent opposed again% 2his time it alleged "1( that the said trademark was registered with the +, Patent 6ffice7 "5( that it is entitled to protection as well8known mark under -rticle & bis of the Paris#on)ention, E6 919 and the two :emoranda of the :inister of 2rade and Industr. and "9( that its use on the same class of goods amounts to a )iolation of the 2rademark 3aw and -rt% 1'9 of the ;P#% Petitioner raised the defense of ;es <udicata%

Issue: 6ne of the re1uisites of res =udicata is identical causes of action% 0o IP# $o%
&'& and IP# $o% 50/9 in)ol)e the same cause of action>

Held: $o% 2he issue of ownership of the trademark was not raised in IP# &'&% IP# 50/9
raised the issue of ownership, the firstregistration and use of the trademark in the +, and other countries, and the international recognition of the trademark established b. e?tensi)e use and ad)ertisement of respondents products for o)er /0 .ears here and abroad% 2hese are different from the issues of confessing similarit. and damage in IP# &'&% 2he issue of prior use ma. ha)e been raised in IP# &'& but this claim was limited to prior use in the Philippines onl.% Prior use in IP# 50/9 stems from the respondents claims originator of the word and s.mbol Barbi on!, as the first and registered user of the mark attached to its products which ha)e been sold and ad)ertised would arise for a considerable number of .ears prior to petitioner4s first application% Indeed, these are substantial allegations that raised new issues and necessaril. ga)e respondents a new cause of action% :oreo)er, the cancellation of petitioner4s certificate registration for failure to file the affida)it of use arose after IP# &'&% 2his ga)e respondent another cause to oppose the second application% It is also to be noted that the oppositions in the first and second cases are based on different laws% #auses of action which are distinct and independent from each other, although out of the same contract, transaction, or state of facts, ma. be sued on separatel., reco)er. on one being no bar to subse1uent actions on others% 2he mere fact that the same relief is sought in the subse1uent action will not render the =udgment in the prior action operating as res =udicata, such as where the actions are based on different statutes%

SOCIETE DES PRODUITS NESTLE S.A. vs. CA

Intellectual Property Law Law on Trademarks, Service Marks and Trade Names Generic Term In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and Technolog Transfers an application for the registration of its trademark !Fla"or #aster$ % an instant coffee& 'estle opposed the application as it alleged that !Fla"or #aster$ is confusingl similar to 'estle coffee products like #aster Blend and #aster (oast& 'estle alleged that in promoting their products, the word #aster has )een used so fre*uentl so much so that when one hears the word #aster it connotes to a 'estle product& The pro"ided as e+amples the fact that the ,"e )een using (o)ert -aworski and (ic Puno -r& as their commercial ad"ertisers. and that in those commercials -aworski is a master of )asket)all and that Puno is a master of talk shows. that the )rand of coffee e*uita)le or fit to them is #aster Blend and #aster (oast& CFC Corporation on the other hand alleged that the word !#aster$ is a generic and a descripti"e term, hence not su)/ect to trademark& The 0irector of Patents ruled in fa"or of 'estle )ut the Court of 1ppeals, using the 2olistic Test, re"ersed the said decision& ISSUE: 3hether or not the Court of 1ppeals is correct& HELD: 'o& The proper test that should ha"e )een used is the 0ominanc Test& The application of the totalit or holistic test is improper since the ordinar purchaser would not )e inclined to notice the specific features, similarities or dissimilarities, considering that the product is an ine+pensi"e and common household item& The use of the word #aster ) 'estle in its products and commercials has made 'estle ac*uire a connotation that if it,s a #aster product it is a 'estle product& 1s such, the use ) CFC of the term !#14T5($ in the trademark for its coffee product F6178( #14T5( is likel to cause confusion or mistake or e"en to decei"e the ordinar purchasers& In addition, the word !#14T5($ is neither a generic nor a descripti"e term& 1s such, said term can not )e in"alidated as a trademark and, therefore, ma )e legall protected& 9eneric terms are those which constitute !the common descripti"e name of an article or su)stance,$ or comprise the !genus of which the particular product is a species,$ or are !commonl used as the name or description of a kind of goods,$ or !impl reference to e"er mem)er of a genus and the e+clusion of indi"iduating characters,$ or !refer to the )asic nature of the wares or ser"ices pro"ided rather than to the more idios ncratic characteristics of a particular product,$ and are not legall protecta)le& 8n the other hand, a term is descripti"e and therefore in"alid as a trademark if, as understood in its normal and natural sense, it !forthwith con"e s the characteristics, functions, *ualities or ingredients of a product to one who has ne"er seen it and does not know what it is,$ or !if it forthwith con"e s an immediate idea of the ingredients, *ualities or characteristics of the goods,$ or if it clearl denotes what goods or ser"ices are pro"ided in such a wa that the consumer does not ha"e to e+ercise powers of perception or imagination& (ather, the term !#14T5($ is a suggesti"e term )rought a)out ) the ad"ertising scheme of 'estle& 4uggesti"e terms are those which, in the phraseolog of one court, re*uire !imagination, thought and perception to reach a conclusion as to the nature of the goods&$ 4uch terms, !which su)tl connote something a)out the product,$ are eligi)le for protection in the a)sence of secondar meaning& 3hile suggesti"e marks are capa)le of shedding !some light$ upon certain characteristics of the goods or ser"ices in dispute, the ne"ertheless in"ol"e !an element of incongruit ,$ !figurati"eness,$ or $ imaginati"e effort on the part of the o)ser"er&$

EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC. G.R. No. 1 !", D#$#%&#' (!, 1!!) F1CT4: 8n 18 4eptem)er 1981, pri"ate respondent 2&0& 6ee Co&, Inc& filed with the Bureau of Patents, Trademarks ; Technolog Transfer <BPTTT= a Petition for Cancellation of (egistration 'o& 4( >?>4 for the trademark @4TA6I4TIC #(& 655@ used on skirts, /eans, )louses, socks, )riefs, /ackets, /ogging suits, dresses, shorts, shirts and lingerie under Class B>, issued on BC 8cto)er 198? in the name of petitioner 5merald 9arment #anufacturing Corporation& Pri"ate respondent a"erred that petitionerDs trademark @so closel resem)led its own trademark, D655D as pre"iousl registered and used in thePhilippines cause confusion, mistake and deception on the part of the purchasing pu)lic as to the origin of the goods&

8n 19 -ul 1988, the 0irector of Patents rendered a decision granting pri"ate respondentDs petition for cancellation and opposition to registration& The 0irector of Patents, using the test of dominanc , declared that petitionerDs trademark was confusingl similar to pri"ate respondentDs mark )ecause @it is the word D6eeD which draws the attention of the )u er and leads him to conclude that the goods originated from the same manufacturer& It is undenia)l the dominant feature of the mark& I44E5: 3hether or not a trademark causes confusion and is likel to decei"e the pu)lic is a *uestion of fact which is to )e resol"ed ) appl ing the @test of dominanc @, meaning, if the competing trademark contains the main or essential or dominant features of another ) reason of which confusion and deception are likel to result& 2560: The word @655@ is the most prominent and distincti"e feature of the appellantDs trademark and all of the appelleeDs @655@ trademarks& It is the mark which draws the attention of the )u er and leads him to conclude that the goods originated from the same manufacturer& The alleged difference is too insu)stantial to )e noticea)le& The likelihood of confusion is further made more pro)a)le ) the fact that )oth parties are engaged in the same line of )usiness& 1lthough the Court decided in fa"or of the respondent, the appellee has sufficientl esta)lished its right to prior use and registration of the trademark @655@ in the Philippines and is thus entitled to protection from an infringement upon the same& The dissenting opinion of -ustice Padilla is more accepta)le&

S*an+',-La In.#'na.,ona/ Ho.#/ Mana+#%#n. L.d., v T*# Co0'. o1 A22#a/sGR No. 111)" 30n# (1, ( 1Fa$.s: 8n -une B1, 1988, the 4hangriF6a International 2otel #anagement, 6td&,4hangriF6a Properties, Inc&, #akati 4hangriF6a 2otel and (esort, Inc& and GuokPhilippine Properties, Inc&, filed with the Bureau of Patents, Trademarks andTechnolog Transfer <BPTTT= a petition pra ing for the cancellation of the registration ofthe 4hangriF 6a mark and !4$ de"iceHlogo issued to the 0e"elopers 9roup of Companies Inc&, on the ground that the same was illegall and fraudulentl o)tained and appropriated for the latter,s restaurant )usiness& The 4hangri F6a 9roup alleged that it isthe legal and )eneficial owners of the su)/ect mark and logo. that it has )een using thesaid mark and logo for its corporate affairs and )usiness since #arch 19IB and causedthe same to )e speciall designed for their international hotels in 19C>, much earlierthan the alleged first use ) the 0e"elopers 9roup in 198B&6ikewise, the 4hangriF6a 9roup filed with the BPTTT its own application for registrationof the su)/ect mark and logo& The 0e"elopers 9roup filed an opposition to theapplication&1lmost three <J= ears later, the 0e"elopers 9roup instituted with the (TC a complaintfor infringement and damages with pra er for in/unction& 3hen the 4hangriF6a 9roupmo"ed for the suspension of the proceedings, the trial court denied such in a(esolution&The 4hangriF6a 9roup filed a petition for certiorari )efore the C1 )ut the C1 dismissedthe petition for certiorari& 2ence, the instant petition& Iss0#: 3hether or not the infringement case should )e dismissed or at least suspended