CASE DIGESTS ON INTELLECTUAL

PROPERTY LAW
(CASES ON TRADEMARKS)
CASE #: 1
ARCE SONS AND COMPANY VS. SELECTA BISCUIT COMPANY, INC, ET AL
G.R. No. L-14761. January 28, 1961

FACTS:
Ramon Arce, predecessor-in-interest of herein petitioner, started a milk business in 1933
using the name SELECTA as trade-name as well as trade-mark. He sold his milk products in
bottles covered with caps on which the words SELECTA FRESH MILK were inscribed. For the
span of more than 20 years, his business expanded and sold, in addition to his milk product, ice
cream, sandwiches and other food products. His products were packaged in a special containers
with the word SELECTA written in the packaging. Several new products were eventually added
to his line of products such as biscuits, bakery items, and assorted cakes and pastries. The word
SELECTA was even written on the signboards of his business establishments and upon the
vehicles that were used for the delivery of his products. Then his business was acquired by
petitioner Arce Sons and Co. which eventually put a first class restaurant aside from the
manufacture of the aforementioned food products.
Herein respondent on the other hand, was organized and registered as corporation under
the name and style of Selecta Biscuits Co., Inc. The name Selecta was chosen by the Chinese
organizers of the corporation as a translation of a Chinese word Ching Suan. Its business
started as a biscuit factory and its products such as biscuits and crackers were specially wrapped
in cellophane pouches and place inside a tin can. Such products of the respondent were sold
throughout the Philippines. The respondent filed a petition with the Philippine Patent Office for
the registration of the word SELECTA as trade-mark to be use in its bakery products. The
petition was referred to an examiner for evaluation who found out that the trademark sought to
be registered resembles the word SELECTA used by the petitioner so that its use by the
respondent will cause confusion as to the origin of their respective goods. So the examiner
recommended for the disapproval of the application. However, Patent Office only ordered the
publication of the application.
In due time, petitioner filed an opposition to the registration on the ground that the mark
SELECTA has been continuously used by it from the time of its organization and even prior
thereto by Ramon Arce, thus the said mark has already become identified with its name and
business. Petitioner also contend that the use of SELECTA by the respondents as trademark
constitutes as an unfair competition with its products thus resulting in confusion in trade and that
the product of the respondent might be mistaken by the public as its products.
The Director of Patents rendered a decision dismissing petitioners opposition stating that
the registration of the trade-mark SELECTA in favour of the respondent will not cause confusion
or mistake nor will deceive the purchasers as to cause damage to petitioner. Hence, this present
petition for review.
Issue:
Whether or not the use of the trade-mark SELECTA by the respondent will result confusion to
the prejudice of Arce Sons and Co.
Held:
Yes. Trademark is a distinctive mark of authenticity through which the merchandise of a
particular producer or manufacturer may be distinguished from that of others, and its sole
function is to designate distinctively the origin of the products to which it is attached. Verily, the
word SELECTA has been chosen by petitioner and has been inscribed on all its products to
serve not only as a sign or symbol that may indicate that they are manufactured and sold by it
but as a mark of authenticity that may distinguish them from the products sold and
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manufactured by other merchants or businessmen. The word 'SELECTA', it is true, may be an

ordinary or common word in the sense that may be used or employed by any one in promoting
his business or enterprise, but once adopted or coined in connection with one's business as an
emblem, sign or device to characterize its products, or as a badge of authenticity, it may acquire
a secondary meaning as to be exclusively associated with its products and business. In this
sense, its used by another may lead to confusion in trade and cause damage to its business. And
this is the situation of petitioner when it used the word 'SELECTA' as a trade-mark. In this sense,
the law gives its protection and guarantees its used to the exclusion of all others. Thus, the
Director of Patent committed an error in dismissing the opposition of the petitioner and in holding
that the registration of the trademark SELECTA in favour of respondent will not cause damage
to petitioner.
Decision of the Director of Patent office is reversed.
CASE #: 2
ANA L. ANG VS. TORIBIO TEODORO
G.R. No. 48226. December 14, 1942
FACTS:
Toribio Teodoro has continuously used Ang Tibay both as a trademark and trade name, in
the manufacture and sale of slippers, shoes and indoor baseballs since 1910. He formally
registered it as trademark on September 1915 and as a trade name in 1933. Petitioner registered
the same trademark Ang Tibay for pants and shirts in 1932. Petitioner now assails the validity
of respondents trademark. He contends that the phrase Ang Tibay is a descriptive term and
therefore, cannot be subject of a trademark. Petitioner claims also that respondent committed
infringement with regard to the trademark Ang Tibay.
ISSUE: Whether the trademark Ang Tibay is registrable.
HELD:
YES. Ang Tibay is not a descriptive term within the meaning of the Trademark Law but
rather a fanciful or coined phrase which may properly be appropriated as a trademark. And it
must be noted that it was the respondent who first used the term Ang Tibay and in fact it has
already acquired a secondary meaning in a proprietary connotation. With regard to the
infringement, it is proper to say that there is no infringement as the goods sold by the parties are
not the same. In fact, it is more correct to conclude that the selection by petitioner of the same
trademark for pants and shirts was motivated by a desire to get a free ride or the reputation and
selling power it has acquired at the expense of the respondent.

CASE #: 3
PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., AND FABRIQUES OF TABAC
REUNIES, S.A VS.
THE COURT OF APPEALS AND FORTUNE TOBACCO CORPORATION,
G.R. No. 91332 July 16, 1993

FACTS:
Herein petitioner Philip Morris Inc., is a corporation registered under the laws of Virginia,
USA and the two other petitioners are the affiliates of said corporation all of which are not doing
any business here in the Philippines. They are the registered owners of the labels Mark VII, Mark
Ten and Lark, all are cigarette products. On the other hand, respondent Fortune Tobacco Corp., is
a corporation organized under the Philippine which manufactures and sells cigarettes using the
same brand name Mark in one of its products. This controversy arose when petitioners filed a
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suit against the respondent alleging that the trademark Mark may not be used by the
respondent because such trademark is exclusively owned by it and that the continuous
manufacture and sale of the cigarettes of the same trademark by the respondent would cause an
irreparable injury or damage to it. Pending the resolution of the case on its merits, petitioners
prayed for the issuance of a writ of preliminary injunction to preclude the respondent from
performing any of the acts complained of. On the other hand, for its defense, respondent
contends that since petitioners are not doing business in the Philippines coupled with the fact
that the Director of Patents has not denied their pending application for registration of its
trademark MARK, the grant of preliminary injunction is premature. The trial court denied the
petitioners prayer for injunction. On appeal, the appellate court initially set aside the decision of
the lower, but eventually lifted said injunction. Hence, this present petition.
ISSUE: Whether or not Fortune Tobacco could be precluded from manufacturing and selling
cigarettes with a trademark MARK similar to that of petitioner.
HELD:
No. A fundamental principle of Philippine Trademark Law is that actual use in commerce in
the Philippines is a prerequisite to the acquisition of ownership over a trademark or a trade
name. Adoption alone of a trademark would not give exclusive right thereto. Such right grows out
of their actual use. Adoption is not use. One may make advertisements, issue circulars, give out
price lists on certain goods; but these alone would not give exclusive right of use. The
records show that the petitioner has never conducted any business in the Philippines. It
has never promoted its trade name or trademark in the Philippines. It is unknown to Filipino
except the very few who may have noticed it while travelling abroad. It has never paid a single
centavo of tax to the Philippine Government. Under the law, it has no right to the remedy it
seeks. In other words, the petitioner may have the capacity to sue for infringement irrespective
of lack of business activity in the Philippines but the question whether they have an exclusive
right over their symbol as to justify issuance of the controversial writ will depend on the actual
use of their trademarks in the Philippines. A foreign corporation may have the personality to file
a suit for infringement but it may not necessarily be entitled to protection due to absence of
actual use of the emblem in the local market
CASE #: 4
PHILIPPINE REFINING CO., INC VS. NG SAM and THE DIRECTOR OF PATENTS
G.R. No. L-26676. July 30, 1982

FACTS:
The trademark CAMIA was first used by petitioner Philippine Refining Co. (PRC) on its
products consisting of vegetable and animal fats such as lard, butter and cooking oil. The
petitioner caused its registration with the Philippine Patent Office in 1949. In the 1960s, Ng Sam,
herein respondent, filed an application with the Philippine Patent Office for registration of the
identical trademark CAMIA for his product ham. An opposition was filed by the petitioner
alleging that the use of the trademark CAMIA by the respondent would cause confusion or
mistake or would deceive purchasers. The Director of Patent rendered a decision allowing the
registration of the trademark in question in favor of the respondent Ng Sam. Petitioner asked for
reconsideration but the same was denied. Hence, this present petition for review.
ISSUE: Whether or not the product of Ng Sam, which is ham, and those of the PRC consisting of
lard, butter, cooking oil and soap are so related that the use of the same trademark on said
goods would likely result in confusion as to their source or origin.
HELD:
No. The right of a trademark is a limited one, in the sense that others may use the name
mark on unrelated goods. The mere fact that one person has adopted and used a trademark on
his goods does not prevent the adoption and use of the same trademark by others on articles of
a different description. The registration of a trademark which so resembles another already
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registered or in use should be denied, where to allow such registration could likely result in
confusion, mistake or deception to the consumers. Conversely, where no confusion is likely to
arise, as in this case, registration of a similar or even identical mark may be allowed. The
trademark CAMIA is used by the petitioner on wide range of products such as lard, butter,
cooking oil, soaps, etc. Respondent desires to use the same on his product ham. Although such
products belong to the same category, this alone cannot serve as the decisive factor in the
resolution of whether or not they are related goods. Emphasis should be on the similarity of the
products involved and not on the arbitrary classification or general description of their properties
or characteristics. Opposers products are ordinary day to day household items whereas ham is
not necessarily so. Thus, the goods of the parties are not of a character which purchasers would
be likely to attribute to a common origin. The Court further holds that the business of the parties
are non-competitive and their products so unrelated that the use of identical trademarks is not
likely to give rise to confusion, much less cause damage to petitioner.

CASE #: 5
ASIA BREWERY VS. COURT OF APPEALS
GR 103543, 5 July 1993

FACTS:
In 1998, San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for
infringement of trademark and unfair competition on account of the latters BEER PALE PILSEN
or BEER NA BEER product which has been competing with SMCs SAN MIGUEL PALE PILSEN for
a share of the local been market. A decision was rendered by the trial judge dismissing SMCs
complaint because ABI has not committed trademark infringement or unfair competition against
SMC for the reason that the trademarks of each product has no significant similarity that would
likely to cause confusion or mistake or to deceive purchasers as to the source or origin of the
beer in question. SMC appealed to the Court of Appeals wherein the decision of the trial court
was reversed. Hence, this present petition for certiorari filed by ABI.
ISSUE: Whether or not ABI infringes SMCs trademark: San Miguel Pale Pilsen with Rectangular
Hops and Malt Design, and thereby commits unfair competition against the latter.
HELD:
No. There is absolutely no similarity in the dominant features of both trademarks.
Infringement is determined by the test of dominancy rather than by differences in variations in
the details of one trademark and of another. It has been consistently held that the question of
infringement of a trademark is to be determined by the test of dominancy. Similarity in size,
form and color, while relevant, is not conclusive. If the competing trademark contains the main
or essential or dominant features of another, and confusion and deception is likely to result,
infringement takes place. Duplication or imitation is not necessary; nor it is necessary that the
infringing label should suggest an effort to imitate.
The question at issue in cases of
infringement of trademarks is whether the use of marks involved would be likely to cause
confusion or mistakes in the mind of the public or deceive purchasers.
In the case at bar, the trial court perceptively observed that the word BEER does not
appear in SMCs trademark, just as the words SAN MIGUEL do not appear in the ABIs
trademark. Hence, there is absolutely no similarity in the dominant features of both trademarks.
Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be confusingly similar
to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE PILSEN can possibly be deceived
that it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was presented by SMC proving
otherwise.
CASE #: 6
MEAD JOHNSON and COMPANY VS. N. V. J. VAN DORP, LTD., ET AL
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G.R. No. L-17501 April 27, 1963

FACTS:
N.V.J. Van Dorp, Ltd., herein respondent, is a corporation organized under the laws of
Netherlands. Mead Johnson &Company, herein petitioner, is a corporation organized under the
laws of Indiana, USA. Respondent filed an application for the registration of the trademark
ALASKA and pictorial representation of a Boys Head within a rectangular design
(ALASKA disclaimed). The petitioner being the owner of the trademark ALACTA used for
powdered half-skim milk, filed an opposition on the ground that it will be damaged by the said
registration as the trademark ALASKA and pictorial representation of a Boys Head, used for
milk, milk products, dairy products and infants foods, is confusingly similar to its trademark
ALACTA. The
respondent
contended
that
ALASKA
is
entirely
different
from
opppsitors trademark and product ALACTA, since applicants product covers milk, milk
products, dairy products and infants food, while oppositors products cover pharmaceutical
preparations for nutritional needs. The Director of Patents Office, rendered decision dismissing
the opposition and holding that the trademark sought to be registered does not sufficiently
resemble oppositors mark as to be likely when applied to the goods of the parties to cause
confusion or mistake to deceive purchasers. Hence, petitioner filed the present petition for
review.
ISSUE: Whether or not the trademarks ALASAK and ALACTA are similar as would likely
to cause confusion or mistake.
HELD:
No. It is true that between petitioners trademark ALACTA and respondents ALASKA
there are similarities in spelling, appearance and sound for both composed of six letters of three
syllables each and each syllable has the same words, but in determining if they are confusingly
similar a comparison of said words is not the only determinant factor. The trademarks in their
entirety as they appear in the respective labels must also be considered in relation to the goods
to which they are attached. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels in order that he may
draw his conclusion whether one is confusingly similar to the other. Having this view in mind, the
Court believes that while there are similarities in the two marks there are also differences or
dissimilarities which are glaring and striking to the eye as the former.
The Court further holds that the petitioners are not food or ingredients of foods but rather
medicinal and pharmaceutical preparations that are to be used as prescribed by physicians. On
the other hand, respondents goods cover milk, milk products, dairy products and infants food,
and for the use of these products there is no need or requirement of a medicinal
preparation. Thus, it is concluded that the applicants mark does not resemble opposers mark as
to be likely when applied to the goods of the parties to cause confusion or mistake or to deceive
purchasers. Decision appealed from is affirmed.

CASE #: 7
CONVERSE RUBBER CORPORATION VS.
UNIVERSAL RUBBER PRODUCTS, INC. and TIBURCIO S. EVALLE, DIRECTOR OF PATENTS
G.R. No. L-27906 January 8, 1987
FACTS:
Respondent Universal Rubber Products, Inc. filed an application with the Philippine Patent
Office for the registration of the trademark Universal Converse and Device used on rubber
shoes and rubber slippers. The petitioner Converse Rubber Corporation, duly organized under
the laws of Massachusetts, USA, manufactures rubber shoes and uses the trademarks Chuck
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Taylor and All Star and Device. The latter filed an opposition to the application for registration
filed by respondent on the ground, among others, that the trademark sought to be registered is
confusingly similar to the word Converse which is part of its corporate name as to likely
deceive purchasers of products on which it is to be used to an extent that said products may be
mistaken by the unwary public to be manufactured by it. The Director of Patents dismissed the
opposition of the petitioner and gave due course to respondents application. The petitioner
prayed for reconsideration and the same was denied. Hence, this present petition for review.
ISSUE: Whether or not the applicants partial appropriation of the petitioners corporate name is
of such character that it is calculated to deceive or confuse the public to the injury of the
corporation to which the name belongs.
HELD:
Yes. The similarity in the general appearance of the respondents trademark and that of
the petitioner would evidently create a likelihood of confusion among the purchasing public. But
even assuming, arguendo, that the trademark sought to be registered by respondent is
distinctively dissimilar from those of the petitioner, the likelihood of confusion would still
subsists, not on the purchasers perception of the goods but on the origin thereof. By
appropriating the word Converse, respondents products are likely to be mistaken as having
been produced by petitioner. The risk of damage is not limited to a possible confusion of goods
but also includes confusion of reputation if the public could reasonably assume that the goods of
the partied originated from the same source. Knowing, therefore, that the word Converse
belongs to and is being used by petitioner, and in fact the dominant word in petitioners
corporate name, respondent has no right to appropriate the same for use in its products which
are similar to those being produced by petitioner.
Note:
It is unfortunate that respondent Director of Patents has concluded that since the
petitioner is not licensed to do business in the country and is actually not doing business on its
own in the Philippines, it has no name to protect in the forum and thus, it is futile for it to
establish that "CONVERSE" as part of its corporate name identifies its rubber shoes. That a
foreign corporation has a right to maintain an action in the forum even if it is not licensed to do
business and is not actually doing business on its own therein has been enunciated many times
by this Court. In La Chemise Lacoste, S.A. vs. Fernandez, 129 SCRA 373, this Court, reiterating
Western Equipment and Supply Co. vs. Reyes, 51 Phil. 115, stated that:... a foreign corporation
which has never done any business in the Philippines and which is unlicensed and unregistered
to do business here, but is widely and favorably known in the Philippines through the use therein
of its products bearing its corporate and trade name, has a legal right to maintain an action in
the Philippines to restrain the residents and inhabitants thereof from organizing a corporation
therein bearing the same name as the foreign corporation, when it appears that they have
personal knowledge of the existence of such a foreign corporation, and it is apparent that the
purpose of the proposed domestic corporation is to deal and trade in the same goods as those of
the foreign corporation.

CASE #: 8

FRUIT OF THE LOOM, INC. VS.

COURT OF APPEALS and GENERAL GARMENTS CORPORATION
G.R. No. L-32747 November 29, 1984
FACTS:
Fruit of the Loom, herein petitioner, is a corporation duly organized and existing under the
laws of the State of Rhode Island, USA, and a registrant of a trademark Fruit of the Loom in the
Philippine Patent Office. On the other hand, herein private respondent, General Garments
Corporation, is a domestic corporation and a registrant of trademark Fruit of Eve. Both the
petitioner and the respondent were engaged in the selling and manufacture of garments and
other textile products. Petitioner filed before the lower court a complaint against the respondent
alleging that the latters trademark is confusingly similar to its trademark because of the word
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FRUIT found in the respondents trademark and the big apple appearing in the latters hang tag
was a colorable imitation of the its hang tag. The lower court rendered a judgment in favor of
the petitioner and ordered the cancellation of the registration of the respondent. On appeal, the
appellate court reversed the trial courts decision. Hence, petitioner filed this petition for review
on certiorari alleging that the word FRUIT being the prominent word appearing in both of its
trademark and that of the respondents would lead the purchasers to believe that the latters
products are those of the petitioner.
ISSUE: Whether or not private respondents trademark FRUIT FOR EVE and its hang tag are
confusingly similar to petitioners trademark FRUIT OF THE LOOM and its hang tag so as to
constitute and infringement of the latters trademark rights and justify the cancellation of the
former.

HELD:

No. The Court believes that there is no infringement of trademark in this case. There is
infringement of trademark when the use of the mark involved would likely to cause confusion or
mistake in the mind of the public or to deceive purchasers as to the origin or source of the
commodity. In determining whether the trademarks are confusingly similar, a comparison of the
words is not the only determinant factor. The trademarks in their entirety as they appear in their
respective labels or hang tags must also be considered in relation to the goods to which they are
attached. The discerning eye of the observer must focus on the other features appearing in both
labels in order that he may draw his conclusion whether one is confusingly similar to the other.
In the case at bar, the trademarks Fruit of the Loom and Fruit for Eve, the lone similar is
word FRUIT. The Court agrees with the appellate court that by mere pronouncing the marks, it
could hardly be said that it will provoke a confusion, as to mistake one for the other. Standing by
itself, Fruit of the Loom is wholly different from Fruit of Eve. The Court disagrees with the
petitioner that the dominant feature of both trademarks is the word FRUIT for even if in the
printing of the trademark in both hang tags, the word FRUIT is not at all made dominant over the
other words.

CASE #:9
BRISTOL MYERS COMPANY VS. THE DIRECTOR OF PATENTS and
UNITED AMERICAN PHARMACEUTICALS, INC.,
G.R. No. L-21587 May 19, 1966

FACTS:
United American Pharmaceuticals, Inc., (respondent), a domestic corporation, filed petition
for registration of the trademark BIOFERIN. It covers a medicinal preparation of antihistamic,
analgesic, antipyretic with Vitamin C and Bioflavenoid used in the treatment of common
colds. The said application for registration was opposed by Bristol Myers Co., (petitioner), a
corporation organized under the laws of Delaware, USA, and owner of the trademark BUFFERIN
in the Philippines. Designated as Antacid analgesic, it is intended for relief in cases of simple
headaches, neuralgia, colds, menstrual pain and minor muscular aches. Bristol Myers contended
that the trademarks BIOFERIN and BUFFERIN will mislead and confuse the public as to the source
and origin of the goods covered by the respective marks because both products are primarily
used for the relief of pains such as headaches and colds; and because words BIOFERIN and
BUFFERIN are practically the same in spelling and pronunciation.
ISSUE: Are the trademarks BIOFERIN and BUFFERIN, as presented to the public in their
respective labels, confusingly similar?
HELD:
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No. In determining whether two trademarks are confusingly similar, the test is not simply
to take their words and compare the spelling and pronunciation of said words. Rather, it is to
consider the two marks in their entirety, as they appear in the respective labels, in relation to the
goods to which they are attached. In the instant case, the trademarks in question are not apt to
confuse. Furthermore, the product of the applicant is expressly stated as dispensable only upon
doctors prescription, while that of the oppositor does not require the same. The chances of being
confused into purchasing one for the other are therefore all the more rendered
negligible. Although oppositor avers that some drugstores sell BIOFERIN without asking for a
doctors prescription, the same if true would be an irregularity not attributable to the applicant,
who has already clearly stated the requirement of doctors prescription upon the face of the label
of its product.

CASE #: 10
LIM HOA VS. DIRECTOR OF PATENTS
G.R. No. L-8072. October 31, 1956.
FACTS:
Lim Hoa, herein petitioner, filed an application for the registration of a trademark,
consisting of a representation of two midget roosters in an attitude of combat with the word
Bantam printed above them. The trademark being registered covered products consisting of
food seasonings. Agricom Development Corp., a domestic corporation, opposed the application
on several grounds, among others, that the trademark sought to be registered was confusingly
similar to its registered mark, consisting of a pictorial representation of a hen with the words
Hen Brand and Marca Manok, which brand or mark was also used on a food seasoning
product, before the use of the trademark by the applicant. Agricom likewise asserted that the
trademark had been adopted by its predecessor, the Advincula Family, since 1946 for said food
seasoning. The Director of Patents disallowed the registration of the Lim Hoas trademark
because it would likely cause confusion or mistake or deceive purchasers. Hence, this present
appeal by the petitioner.
ISSUE: Whether or not there is similarity between the two trademarks as to cause confusion or
mistake in the mind of the public.
HELD:
Yes. It has been consistently held that the question of infringement of a trademark is to be
determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not
conclusive. If the competing trademark contains the main or essential or dominant features of
another, and confusion and deception is likely to result, infringement takes place. Duplication or
imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to
imitate. The danger of confusion in trademarks and brands which are similar may not be so great
in the case of commodities or articles of relatively great value, for the prospective buyer,
generally the head of the family or a businessman, before making the purchase, reads the
pamphlets and all literature available, describing the article he is planning to buy, and perhaps
even makes comparisons with similar articles in the market. But in the sale of a food seasoning
product, a kitchen article of everyday consumption, the circumstances are far different. Said
product is generally purchased by cooks and household help, sometimes illiterate who are guided
by pictorial representations and the sound of the word descriptive of said representation. The two
roosters appearing in the trademark of the applicant and the hen appearing on the trademark of
the Oppositor although of different sexes, belong to the same family of chicken, known as
manok in all the principal dialects of the Philippines, and when a cook or a household help or
even a housewife buys a food seasoning product for the kitchen the brand of Manok or Marca
Manok would most likely be upper most in her mind and would influence her in selecting the
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product, regardless of whether the brand pictures a hen or a rooster or two roosters. To her, they
are all manok. Therein lies the confusion, even deception.

CASE #: 11

JOSE P. STA. ANA VS. FLORENTINO MALIWAT and TIBURCIO S. EVALLE

G.R. No. L-23023 August 31, 1968
FACTS:
In 1962, Florentino Maliwat, respondent, filed an application for the registration of the
trademark FLORMANN, which is used on shirts, pants, jackets and shoes for ladies, men and
children. He claimed that such mark was first used in commerce since the early part of that
year. However, the claim of first use was amended to 1953. Jose Sta. Ana, petitioner, in same
year 1962, filed an application for the registration of the trade name FLORMEN
SHOEMANUFACTURERS (SHOE MANUFACTURERS, disclaimed), which is used in the business of
manufacturing ladies and childrens shoes. His claim of first use in commerce of said trade name
is 1959. In view of the admittedly confusing similarity between the trademark Flormann and the
trade name Flormen, the Director of Patents declared interference. After trial, the Director gave
due course Maliwats application and denied that of Sta. Ana. In this present petition, Sta. Ana
avers that the Director of Patents erred in declaring that Maliwat has a prior right to the use of
his trademark on shoes and such right may be carried back to the year 1953 when Maliwat
started his tailoring and haberdashery business.
ISSUE: Whether or not Florentino Maliwat has a prior right to use the trademark Flormann.
HELD:
Yes. An application for registration is not bound by the date of first use as stated by him in
his application, but is entitled to carry back said stated date of first use to a prior date by proper
evidence; but in order to show an earlier date of use, he is then under a heavy burden, and his
proof must be clear and convincing. In the case at bar, the proof of date of first use (1953),
earlier than that alleged in respondent Maliwat's application (1962), can be no less than clear
and convincing because the fact was stipulated and no proof was needed. The law does not
require that the articles of manufacture of the previous user and the late user of the mark should
possess the same descriptive properties or should fall into the same categories as to bar the
latter from registering his mark in the principal register. Therefore, whether or not shirts
and shoes have the same descriptive properties, or whether or not it is the prevailing practice or
the tendency of tailors and haberdashers to expand their business into shoes making, are not
controlling. The meat of the matter is the likelihood of confusion, mistake or deception upon
purchasers of the goods of the junior user of the mark and the goods manufactured by the
previous user. Here, the resemblance or similarity of the mark FLORMANN and the name
FLORMEN and the likelihood of confusion, one to the other, is admitted; therefore, the prior
adopter, respondent Maliwat, has the better right to the use of the mark.

CASE #: 12

ACOJE MINING CO., INC., VS. THE DIRECTOR OF PATENTS,

G.R. No. L-28744 April 29, 1971
FACTS:
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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 petitioners trade markbeing in
yellow and red while that of the PRC being in green and yellow, and the much smaller size of
petitioners trademark.

CASE #: 13

HICKOK MANUFACTURING CO., INC VS. COURT OF APPEALS and SANTOS LIM BUN
LIONG
G.R. No. L-44707 August 31, 1982
FACTS:
Petitioner Hickok Manufacturing Co., (Hickok), is a foreign corporation, which the
registered the trademark HICKOK for its diverse articles of leather wallets, key cases, money
folds made of leather, belts, mens briefs, neckties, handkerchiefs and mens socks. On the other
hand, Lim Bun Liong (respondent) is registrant of a trademark of the same name HICKOK for its
Marikina shoes. Hickok filed a petition to cancel the respondents registration of the
trademark. The Director of Patent granted the petition of Hickok, but on appeal the Court of
Appeals reversed the directors decision and dismissed Hickoks original petition for cancellation
on the ground that the trademarks of petitioner and that of the registrant were different in
design and coloring of, as well as in the words on the ribbons. Hence, this present appeal.
ISSUE: Whether or not the registration of Lim Bun Liongs trademark for his Hickok Marikina
shoes can be allowed.
HELD:
The Court affirmed the appellate courts decision. While the law does not require that the
competing trademarks be identical, the two marks must be considered in their entirety, as they
appear in the respective labels, in relation to the goods to which they are attached. Emphasis
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should be on the similarity of the products involved and not on the arbitrary classification or
general description of their properties or characteristics and that the mere fact that one person
has adopted and used a trademark on his goods does not prevent the adoption and use of the
same trademark by others on unrelated articles of a different kind. Petitioner, a foreign
corporation registered the trademark for its diverse articles of men's wear such as wallets, belts
and men's briefs which are all manufactured here in the Philippines but are so labeled as to give
the misimpression that the said goods are of foreign (stateside) manufacture and that
respondent secured its trademark registration exclusively for shoes (which neither petitioner nor
the licensee ever manufactured or traded in) and which are clearly labeled in block letters as
"Made in Marikina, Rizal, Philippines," no error can be attributed to the appellate court in
upholding respondent's registration of the same trademark for his unrelated and non-competing
product of Marikina shoes.

CASE #: 14

PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G., VS.

THE INTERMEDIATE APPELLATE COURT and MIL-ORO MANUFACTURING CORPORATION,
G.R. No. 75067 February 26, 1988
FACTS:
Petitioner Puma Sportschuhfabriken, a foreign corporation duly organized under the
existing laws of Germany, is a manufacturer and producer of Puma products. It filed a complaint
for infringement of patent or trademark against Mil-Oro Manufacturing Corporation, which is a
registrant of the trademark Puma and Device, with a prayer for issuance of writ of preliminary
injunction. The trial court granted petitioners prayer and ordering Mil-Oro to restrain from using
the trademark PUMA and to withdraw from the market all products bearing the same
trademark. On appeal, the CA reversed the order of the trial court on the ground that petitioner
has no legal capacity to sue. Hence, this present petition for review. Both parties in this case
maintain that they are the rightful owners of the trademark PUMA for socks and belts such that
both parties seek the cancellation of the trademark of the other.
ISSUE: Whether or not petitioner has legal capacity to sue in this jurisdiction.
HELD: The Court holds that the petitioner had the legal capacity to file an action in this
jurisdiction. As early as 1927, the Court was, and it still is, of the view that foreign corporation
not doing business in the Philippines needs no license to sue before Philippine courts for
infringement of trademark and unfair competition. A foreign corporation which has never done
any business in the Philippines and which is unlicensed and unregistered to do business here, but
is widely and favorably known in the Philippines through the use therein of its products bearing
its corporate and trade name, has a legal right to maintain an action in the Philippines to restrain
the residents and inhabitants thereof from organizing a corporation therein bearing the same
name as the foreign corporation, when it appears that they have personal knowledge of the
existence of such a foreign corporation, and it is apparent that the purpose of the proposed
domestic corporation is to deal and trade in the same goods as those of the foreign corporation.

CASE #: 16
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SOCIETE DES PRODUITS NESTLE VS. CA and CFC CORP YNARES-SANTIAGO

G.R. No. 112012. April 4, 2001

FACTS:
CFC Corp filed with the BPTTT an application for the registration of the trademark FLAVOR
MASTER for instant coffee. Societe Des Produits Nestle, a Swiss company registered under Swiss
laws and domiciled in Switzerland, filed an Opposition claiming that the trademark is confusingly
similar to its trademarks for coffee and coffee extracts: MASTER ROAST and MASTER BLEND.
Likewise, an opposition was filed by Nestle Philippines, a Philippine corporation and a licensee of
Societe. Nestle claimed that the use by CFC of the trademark FLAVOR MASTER and its
registration would likely cause confusion in the trade; or deceive purchasers and would falsely
suggest to the purchasing public a connection in the business of Nestle, as the dominant
word present in the 3 trademarks is MASTER; or that the goods of CFC might be mistaken as
having originated from the latter. BPTTT denied CFCs application for registration applying the
dominancy test. CA reversed applying the holistic test.
ISSUE: Whether the trademark FLAVOR MASTER is a colorable imitation of the trademarks
MASTER ROAST and MASTER BLEND and thus should be denied registration.
HELD:
YES applying the dominancy test. Colorable imitation denotes such a close or ingenious
imitation as to be calculated to deceive ordinary persons to purchase the one supposing it to be
the other. In determining if colorable imitation exists, jurisprudence has developed two kinds of
tests the Dominancy Test and the Holistic Test. The test of dominancy focuses on the similarity
of the prevalent features of the competing trademarks which might cause confusion or deception
and thus constitute infringement. The holistic test mandates that the entirety of the marks in
question must be considered in determining confusing similarity.
In infringement or trademark cases in the Philippines, particularly in ascertaining whether
one trademark is confusingly similar to or is a colorable imitation of another, no set rules can be
deduced. Each case must be decided on its own merits.
The CA held that the test to be applied should be the totality or holistic test, since what is
of paramount consideration is the ordinary purchaser who is, in general, undiscerningly rash in
buying the more common and less expensive household products like coffee, and Is therefore
less inclined to closely examine specific details of similarities and dissimilarities between
competing products.
This Court cannot agree with the above reasoning. If the ordinary purchaser is
"undiscerningly rash" in buying such common and inexpensive household products as instant
coffee, and would therefore be "less inclined to closely examine specific details of similarities and
dissimilarities" between the two competing products, then it would be less likely for the ordinary
purchaser to notice that CFCs trademark FLAVOR MASTER carries the colors orange and mocha
while that of Nestles uses red and brown. The application of the totality or holistic test is
improper since the ordinary purchaser would not be inclined to notice the specific features,
similarities or dissimilarities, considering that the product is an inexpensive and common
household item.
Moreover, the totality or holistic test is contrary to the elementary postulate of the law on
trademarks and unfair competition that confusing similarity is to be determined on the basis of
visual, aural, connotative comparisons and overall impressions engendered by the marks in
controversy as they are encountered in the realities of the marketplace. The totality or holistic
test only relies on visual comparison between two trademarks whereas the dominancy test relies
not only on the visual but also on the aural and connotative comparisons and overall impressions
between the two trademarks.
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This Court agrees with the BPTTT when it applied the test of dominancy. The word MASTER
is the dominant feature of opposers mark. It is printed across the middle portion of the label in
bold letters almost twice the size of the printed word ROAST. Further, the word MASTER has
always been given emphasis in the TV and radio commercials and other advertisements made in
promoting the product. Robert Jaworski and Atty. Ric Puno, the personalities engaged to promote
the product, are given the titles Master of the Game and Master of the Talk Show, respectively. In
due time, because of these advertising schemes the mind of the buying public had come to learn
to associate the word MASTER with the opposers goods. When one looks at the label bearing the
trademark FLAVOR MASTER, ones attention is easily attracted to the word MASTER, rather than
to the dissimilarities that exist. Therefore, the possibility of confusion as to the goods which bear
the competing marks or as to the origins thereof is not farfetched. The word "MASTER" is neither
a generic nor a descriptive term. As such, it may be legally protected. Generic terms are those
which constitute "the common descriptive name of an article or substance," or comprise the
"genus of which the particular product is a species," or are "commonly used as the name or
description of a kind of goods," or "imply reference to every member of a genus and the
exclusion of individuating characters," or "refer to the basic nature of the wares or services
provided rather than to the more idiosyncratic characteristics of a particular product," and are
not legally protectable. A term is descriptive and therefore invalid as a trademark if, as
understood in its normal and natural sense, it "forthwith conveys the characteristics, functions,
qualities or ingredients of a product to one who has never seen it and does not know what it is,"
or "if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the
goods," or if it clearly denotes what goods or services are provided in such a way that the
consumer does not have to exercise powers of perception or imagination.
The term "MASTER" is a suggestive term brought about by the advertising scheme of
Nestle. Suggestive terms are those which require "imagination, thought and perception to reach
a conclusion as to the nature of the goods." Such terms, "which subtly connote something about
the product," are eligible for protection in the absence of secondary meaning. While suggestive
marks are capable of shedding "some light" upon certain characteristics of the goods or services
in dispute, they nevertheless involve "an element of incongruity," "figurativeness," or "
imaginative effort on the part of the observer."
The term "MASTER" has acquired a certain connotation to mean the coffee products
MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC of the term
"MASTER" in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or
mistake or even to deceive the ordinary purchasers.

CASE #: 17
PRIBHDAS J. MIRPURI vs. COURT OF APPEALS, DIRECTOR OF PATENTS
and the BARBIZON CORPORATION
G.R.NO. 114508, November 19, 1999

FACTS:
Petitioner's claims: "Barbizon" products have been sold in the Philippines since 1970.
Petitioner developed this market by working long hours and spending considerable sums of
money on advertisements and promotion of the trademark and its products. Almost 30 years
later, private respondent, a foreign corporation usurps the trademark and invades petitioner's
market. Justice and fairness dictate that private respondent be prevented from appropriating
what is not its own. Legally, at the same time, private respondent is barred from questioning
petitioner's ownership of the trademark because of res judicata in view of IPC No. 686.
Respondent's claims: The Opposer's goods bearing the trademark BARBIZON have been
used in many countries, including the Philippines, for at least 40 years and has enjoyed
international reputation and good will for their quality. Their trademarks qualify as well-known
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trademarks entitled to protection under Article 6bis of the Convention of Paris for the Protection
of Industrial Property.

ISSUES:
1.) Whether IPC No. 2049 is barred on the ground of res judicata
2.) Whether a treaty affords protection to a foreign corporation against a Philippine
applicant for the registration of a similar trademark.
RULINGS:
1.

IPC No. 2049 raised the issue of ownership of the trademark and the international
recognition and reputation of the trademark for over 40 years here and abroad, different
from the issues of confusing similarity and damage in IPC No. 686. There was also a new
cause of action arising from the cancellation of petitioner's certificate of registration for
failure to file the affidavit of use. Also, the first and second cases are based on different
laws, one on Trademark Law and the other on the Paris Convention, E.O. No. 913 and the
two Memoranda of the Minister of Trade and Industry. Thus, res judicata does not apply to
the instant case.

2.

The WTO is a common institutional framework for the conduct of trade relations among its
members in matters related to the multilateral and plurilateral trade agreements annexed
to the WTO Agreement, one of which is the Agreement on Trade-Related Aspects of
Intellectual Property Rights or TRIPs. Members to this Agreement have agreed to adhere to
minimum standards of protection set by several Conventions, including the Paris
Convention. The Philippines and the US 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.
The petition is denied.

CASE #: 18
CANON KABUSHIKI KAISHA VS. COURT OF APPEALS and NSR RUBBER CORPORATION
G.R. No. 120900. July 20, 2000
FACTS:
On January 25, 1985, private respondent NSR Rubber Corporation filed an application for
registration of the mark CANON for sandals in the Bureau of Patents, Trademarks and Technology
Transfer (BPTTT). A verified Notice of Opposition was filed by petitioner, a foreign corporation
duly organized and existing under the laws of Japan, alleging that it will be damaged by the
registration of the trademark CANON in various countries covering goods belonging to Class 2
(paints, chemical products, toner and dye stuff). Petitioner also submitted in evidence its
Philippine Trademark Registration No. 39398, showing ownership over the trademark CANON also
under Class 2. On November 10, 1992 the BPTTT issued its decision dismissing the opposition of
petitioner and giving due course to private respondents application for the registration of the
trademark CANON. On February 16, 1993, petitioner appealed the decision of the BPTTT with
public respondent CA that eventually affirmed the decision of BPTTT. Hence, this petition for
review.
ISSUE: Whether the respondent can use as its trademark the word CANON.
HELD:

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YES. The BPTTT and CA share the opinion that the trademark CANON as used by petitioner
for its paints, chemical products, toner and dyestuff can be used by private respondent for its
sandals because the products of these two parties are dissimilar. Petitioner protests the
appropriation of the mark CANON by private respondent on the ground that petitioner has used
and continues to use the trademark CANON in its wide range of goods worldwide. Allegedly, the
corporate name or trade name of petitioner is also used as its trademark on diverse goods
including footwear and other related products like shoe polisher and polishing agents. To lend
credence to its claim, petitioner points out that it has branched out in its business based on the
various goods carrying its trademark CANON, private respondent sought to register the mark
CANON. For petitioner, the fact alone that its trademark CANON is carried by its other products
like footwear, shoe polisher and polishing agents should have precluded the BPTTT from giving
due course to the application of private respondent. The SC finds the arguments of petitioner to
be unmeritorious. Ordinarily, the ownership of a trademark or trade name is a property right that
the owner is entitled to protect as mandated by the Trademark Law. However, when a trademark
is used by a party for a product in which the other party does not deal, the use of the same
trademark on the latters product cannot be validly objected

CASE #:19
EMERALD GARMENT VS. COURT OF APPEALS
GR 100098, 29 December 1995
FACTS:
HD Lee Co. owns the trademarks Lee, Lee Riders and Lee sures in both the
supplementary and principal registers, as early as 1969 to 1973. In 1981, it filed for the
cancellation for the registration of the trademark stylistic Mr. Lee, applied/owned by Emerald
Garment Manufacturing Corp. In 1988, the Director of Patents ruled in favor of HD Lee. In 1990,
the Court of Appeals affirmed the decision of the Director of Patents. Hence, the petition for
review on certiorari.
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. Lees 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
trade names 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.

CASE #: 21
PHILIPPS EXPORT ET AL VS. COURT OF APPEALS ET AL
Gr 96161, 21 February 1992
FACTS:
Philips Export BV is a foreign corporation organized in Netherlands and not engaged in
business in the Philippines. It is the registered owner of the trademark Phillips and Phillips
Shield Emblem. Philips Electrical Lamp, Inc. and Philips Industrial Development Inc. besides
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PEBV, are corporations belonging to the Philips Group of Companies. In 1984, PEVB filed a lettercomplaint with the SEC for the cancellation of the word Phillips from Standard Philips corporate
name. The SEC en banc affirmed the dismissal of PEBUs complaint by one of its hearing officers.
The Court of Appeals dismissed PEVBs petition for review certiorari, as referred by the Supreme
Court.
ISSUE: Whether there is confusing similarity between the corporate names to warrant the
removal of Philips in Standard Philips corporate name.
HELD:
Yes. The right to exclusive use of a corporate name with freedom from infringement by
similarity is determined by priority of adoption. PEBV, et al. have priority in adoption, as Standard
Philips was issued a Certificate of Registration 26 years after Philips Electrical and Philips
Industrial acquired theirs. A reading from said corporate names, it is obvious that Philips is the
dominant word in all companies affiliated with the principal corporation, PEVB. Given that
standard Philips primary purpose does not prevent it from dealing in the same line of business of
electrical devices, products or supplies, as that of Philips Electrical, it can only be said that the
subsequent appropriator of the name or one confusingly similar thereto usually seeks an unfair
advantage, a free ride on anothers goodwill. Inasmuch as Standard Philips has submitted an
undertaking to the SEC manifesting its willingness to change its corporate name in the event
another person, firm or entity has acquired a prior right to the use of the said firm name or one
deceptively or confusingly similar to it. Standard Philips must now be held in its undertaking

CASE #: 24
DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION VS.
COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES
G.R. No. L-78325 January 25, 1990

FACTS:
Petitioner Del Monte Corporation (Del Monte), through its local distributor and
manufacturer, Phil. Pack filed an infringement of copyright complaint against respondent
Sunshine Sauce Manufacturing Industries (SSMI), also a maker of catsup and other kitchen
sauces. In its complaint, Del Monte alleged that SSMI are using bottles and logos identical to the
petitioner, to which is deceiving and misleading to the public.
In its answer, Sunshine alleged that it had ceased to use the Del Monte bottle and that its
logo was substantially different from the Del Monte logo and would not confuse the buying public
to the detriment of the petitioners.
The Regional Trial Court of Makati dismissed the complaint. It held that there were
substantial differences between the logos or trademarks of the parties nor on the continued use
of Del Monte bottles. The decision was affirmed in toto by the Court of Appeals.
ISSUE: Whether or not SSMI committed infringement against Del Monte in the use of its logos
and bottles.
HELD:
Yes. In determining whether two trademarks are confusingly similar, the two marks in
their entirety as they appear in the respective labels must be considered in relation to the goods
to which they are attached; the discerning eye of the observer must focus not only on the
precognizant words but also on the other features appearing on both labels. It has been correctly
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held that side-by-side comparison is not the final test of similarity. In determining whether a
trademark has been infringed, we must consider the mark as a whole and not as dissected.
The Court is agreed that are indeed distinctions, but similarities holds a greater weight in
this case. The Sunshine label is a colorable imitation of the Del Monte trademark. 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. 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.
With regard to the bottle use, Sunshine despite the many choices available to it and
notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was embossed on
the bottle, still opted to use the petitioners' bottle to market a product which Philpack also
produces. This clearly shows the private respondent's bad faith and its intention to capitalize on
the latter's reputation and goodwill and pass off its own product as that of Del Monte.
CASE #: 30
LA CHEMISE LACOSTE VS. FERNANDEZ
GR 63796-97, 21 May 1984
FACTS:
La chemise Lacoste is a French corporation and the actual owner of the trademarks
Lacoste, Chemise Lacoste, Crocodile Device and a composite mark consisting of the word
Lacoste and a representation of a crocodile/alligator, used on clothings and other goods sold in
many parts of the world and which has been marketed in the Philippines (notably by Rustans)
since 1964. In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the
trademark Chemise Lacoste and Q Crocodile Device both in the supplemental and Principal
Registry. In 1980, La Chemise Lacoste SA filed for the registration of the Crocodile device and
Lacoste. Games and Garments (Gobindram Hemandas, assignee of Hemandas Q.Co.) opposed
the registration of Lacoste.
In 1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of unfair
competition committed by Hemandas and requesting the agencys assistance. A search warrant
was issued by the trial court. Various goods and articles were seized upon the execution of the
warrants. Hemandas filed motion to quash the warrants, which the court granted. The search
warrants were recalled, and the goods ordered to be returned. La Chemise Lacoste filed a
petition for certiorari
ISSUE: Whether the proceedings before the patent office is a prejudicial question that need to be
resolved before the criminal action for unfair competition may be pursued.
HELD:
No. The proceedings pending before the Patent Office do not partake of the nature of a
prejudicial question which must first be definitely resolved. The case which suspends the criminal
action must be a civil case, not a mere administrative case, which is determinative of the
innocence or guilt of the accused. The issue whether a trademark used is different from
anothers trademark is a matter of defense and will be better resolved in the criminal
proceedings before a court of justice instead of raising it as a preliminary matter in an
administrative proceeding.
Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back even
before 1964, Hemandas cannot be allowed to continue the trademark Lacoste for the reason
that he was the first registrant in the Supplemental Register of a trademark used in international
commerce. Registration in the Supplemental Register cannot be given a posture as if the
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registration is in the Principal Register. It must be noted that one may be declared an unfair
competitor even if his competing trademark is registered. La Chemise Lacoste is world renowned
mark, and by virtue of the 20 November 1980 Memorandum of the Minister of Trade to the
director of patents in compliance with the Paris Convention for the protection of an industrial
property.

CASE #: 31
STERLING PRODUCTS VS. FARBENFABRIKEN BAYER
GR L-19906, 30 April 1969
FACTS:
The Bayer Cross in circle trademark was registered in Germany in 1904 to Farbenfabriken
vorm. Friedr. Bayer (FFB), successor to the original Friedr. Bauyer et. Comp., and predecessor to
Farbenfabriken Bayer aktiengessel craft (FB2). The Bayer, and Bayer Cross in circle
trademarks were acquired by sterling Drug Inc. when it acquired FFBs subsidiary Bayer Co. of
New York as a result of the sequestration of its assets by the US Alien Property Custodian during
World War I. Bayer products have been known in Philippines by the close of the 19th century.
Sterling Drugs, Inc., however, owns the trademarks Bayer in relation to medicine. FBA
attempted to register its chemical products with the Bayer Cross in circle trademarks. Sterling
Products International and FBA seek to exclude each other from use of the trademarks in the
Philippines. The trial court sustained SPIs right to use the Bayer trademark for medicines and
directed FBA to add distinctive word(s) in their mark to indicate their products come from
Germany. Both appealed.
ISSUE: Whether SPIs ownership of the trademarks extends to products not related to medicine.
HELD:
No. SPIs certificates of registration as to the Bayer trademarks registered in the
Philippines cover medicines only. Nothing in the certificates includes chemicals or insecticides.
SPI thus may not claim first use of the trademarks prior to the registrations thereof on any
product other than medicines. For if otherwise held, a situation may arise whereby an applicant
may be tempte3d to register a trademark on any and all goods which his mind may conceive
even if he had never intended to use the trademark for the said goods. Omnibus registration is
not contemplated by the Trademark Law. The net result of the decision is that SPI may hold on its
Bayer trademark for medicines and FBA may continue using the same trademarks for insecticide
and other chemicals, not medicine.
The formula fashioned by the lower court avoids the mischief of confusion of origin, and
does not visit FBA with reprobation and condemnation. A statement that its product came from
Germany anyhow is but a statement of fact.

CASE #: 33

AMIGO MANUFACTURING INC., VS. CLUETT PEABODY CO., INC.,

G.R. No. 139300, March 14, 2001

FACTS:
Amigo makes Gold Top socks and tries to register its trademark in Bureau of Patents; the
trademark has dominant white color at the center, with black-brown background and a magnified
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design of the sock garter, and the name Amigo Manufacturing Inc. on the label. Cluett Peabody,
US Corporation, opposes the registration on ground that Amigos trademark looks like their
trademark: a sock and a magnifying glass on the toe. Same font was also used in the words
Gold Top and Gold Toe. Bureau of Patents denies registration; appeal on CA says there is
hardly any variance in the appearance of the marks 'GOLD TOP' and 'GOLD TOE' since both show
are presentation of a man's foot wearing a sock, and the marks are printed identical lettering.
Idem sonans is not applicable.
ISSUES:
1.) Whether or not the findings of the Director of Patents that petitioners trademark was
confusingly similar to respondents trademarks.
2.) Whether or not provisions of the Paris Convention should be applied in holding that
respondent Cluett Peabody had an exclusive right to the trademark gold toe without
taking into consideration the absence of actual use in the Philippines.
RULINGS:
As to Issue # 1:
The court ruled in the affirmative. The Bureau considered the drawings and the labels, the
appearance of the labels, the lettering, and the representation of a man's foot wearing a sock.
Obviously, its conclusion is based on the totality of the similarities between the parties'
trademarks and not on their sounds alone. Respondent is domiciled in the United States and is
the registered owner of the "Gold Toe" trademark. Hence, it is entitled to the protection of the
Convention. A foreign-based trademark owner, whose country of domicile is a party to an
international convention relating to protection of trademarks, is accorded protection against
infringement or any unfair competition as provided in Section37 of Republic Act 166.
The Court stated that in determining whether trademarks are confusingly similar,
jurisprudence has developed two kinds of tests, the Dominancy Test and the Holistic Test In its
words:
In determining whether colorable imitation exists, jurisprudence has developed two kinds of
tests the Dominancy Test applied in Asia Brewery, Inc. v. Court of Appeals and other cases and
the Holistic Test developed in Del Monte Corporation v. Court of Appeals and its proponent cases.
As its title implies, the test of dominancy focuses on the similarity of the prevalent features
of the competing trademarks which might cause confusion or deception and thus constitutes
infringement.
On the other side of the spectrum, the holistic test mandates that the entirety of the marks
in question must be considered in determining confusing similarity.
Petitioner cannot therefore ignore the fact that, when compared, most of the features of its
trademark are strikingly similar to those of respondent. In addition, these representations are at
the same location, either in the sock itself or on the label. Petitioner presents no explanation
why it chose those representations, considering that these were the exact symbols used in
respondents marks. Thus, the overall impression created is that the two products are
deceptively and confusingly similar to each other. Clearly, petitioner violated the applicable
trademark provisions during that time.

As to Issue # 2:
Respondent registered its trademarks under the principal register, which means that the
requirement of prior use had already been fulfilled. To emphasize, Section 5-A of Republic Act
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166 requires the date of first use to be specified in the application for registration. Since the
trademark was successfully registered, there exists a prima facie presumption of the correctness
of the contents thereof, including the date of first use. Petitioner has failed to rebut this
presumption.
Thus, applicable is the Union Convention for the Protection of Industrial Property adopted in
Paris on March 20, 1883, otherwise known as the Paris Convention, of which the Philippines and
the United States are members. Respondent is domiciled in the United States and is the
registered owner of the Gold Toe trademark. Hence, it is entitled to the protection of the
Convention. A foreign-based trademark owner, whose country of domicile is a party to an
international convention relating to protection of trademark is accorded protection against
infringement or any unfair competition as provided in Section 37 of Republic Act 166, the
Trademark Law which was the law in force at the time this case was instituted.

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