G.R. No. 103543. July 5, 1993.] ASIA BREWERY, INC. petitioner, vs. THE HON.

COURT OF APPEALS and SAN MIGUEL CORPORATION, respondents. On September 15, 1988, San Miguel Corporation (smc) filed a complaint against (ABI) for infringentment of trademark and unfair competition on account of the latters BEER NA BEER product which has been competing with SMCs SAN MIGUEL PALE PILSENS the local beer market. SMC claims that the trade dress of BEER PILSEN is, confusingly SAN MIGUEL PALE PILSEN because both are bottled in 320 ml. steine type, amber-colored bottles with regular labels. On August 27, 1990, RTC dismissed the complaint. SMC appealed to the Court of Appeal the lower courts decision. Upon a motion for reconsideration filed by ABI, the decision was the time, ABI appealed to this court by a petition for certiorari under Rule 45 Rules of Court. Issue: Does ABIs BEER PALE PILSEN label or design infringe upon that of SAN MIGUEL PALE PILSEN? Ruling: No. Only registered trade marks, trade names and service marks are protected against infringement authorized use by another or others. It has been consistently held that the question of infringement remark is to be determined by the test of dominancy. Similarity in size, form and color, while relevant, inclusive. If the competing trademark contains the main or essential or dominant features of another, and command deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor necessary that the infringing label should suggest an effort to imitate. The fact that the words pale pilsen are part of ABIs trademark does not constitute an infringement of SMCs trademark: SAN MIGUEL PALE PILSEN, for pale pilsen are generic words descriptive of color (pale), of a type of beer (pilsen), which is a light bohemian beer with strong hops flavor that originate the City of Pilsen in Czechoslovakia and became famous in the Middle ages. Pilsen is a primarily geologically descriptive word. A word or a combination of words which is merely descriptive of an article of trade, or its composition, characteristics, or qualities, cannot be appropriated and protected as a trademark to the exclusion its use by others inasmuch as all persons have an equal right to produce and vend similar articles, they also have the right to describe them properly and ot use any appropriate language or words for that purpose, and no person can appropriate to himself exclusively any word or expressions, properly descriptive of the article, its qualities, ingredients or characteristics, and thus limit other persons in the use of language appropriate to the description of their manufacturers, the right to the use of such language being common to all. This rule excluding descriptive term has also been held to apply to trade-means. As to whether words employed fall within this prohibition, it is said that the true test is not whether they are exhaustively descriptive of the article designated, but whether in themselves and as they are commonly used by those who understand their meaning, they are reasonably indicative and descriptive of the thing intended. If they are thus descriptive, and not arbitrary, they cannot be appropriated from general use and become the exclusive property of anyone. [52 Am Jur. 542-543]. The circumstance that the manufacturer of BEER PALE PILSEN, Asia Brewery Incorporated, has printed its name all over the bottle of its beer product: on the label, on the back of the botlle, as well as on the bottle cap, disproves SMCs charge that ABI dishonestly and fraudently intends to palm off its BEER PALE PILSEN as SMCs

product. In view of the visible differences between the two products, the Court believes its quite unlikely that a customer of average intelligence would mistake a bottle of BEER PALE PILSEN for SAN MIGUEL PALE PILSEN.