Victorio P. Diaz vs People of the Philippines and Levi Strauss [Phils.

],
Inc.
G.R. No. 180677 February 18, 2003
Facts:
Levi Strauss Philippines, Inc. (Levis Philippines) is a licensee of Levis. After
receiving information that Diaz was selling counterfeit LEVIS 501 jeans in his
tailoring shops in Almanza and Talon, Las Pias City, Levis Philippines hired a
private investigation group to verify the information. Surveillance and the
purchase of jeans from the tailoring shops of Diaz established that the jeans
bought from the tailoring shops of Diaz were counterfeit or imitations of
LEVIS 501. Armed with search warrants, NBI agents searched the tailoring
shops of Diaz and seized several fake LEVIS 501 jeans from them. Levis
Philippines claimed that it did not authorize the making and selling of the
seized jeans; that each of the jeans were mere imitations of genuine LEVIS
501 jeans by each of them bearing the registered trademarks, like the
arcuate design, the tab, and the leather patch; and that the seized jeans
could be mistaken for original LEVIS 501 jeans due to the placement of the
arcuate, tab, and two-horse leather patch.
On his part, Diaz admitted being the owner of the shops searched, but he
denied any criminal liability. Diaz stated that he did not manufacture Levis
jeans, and that he used the label LS Jeans Tailoring in the jeans that he
made and sold; that the label LS Jeans Tailoring was registered with the
Intellectual Property Office; that his shops received clothes for sewing or
repair; that his shops offered made-to-order jeans, whose styles or designs
were done in accordance with instructions of the customers; that since the
time his shops began operating in 1992, he had received no notice or
warning regarding his operations; that the jeans he produced were easily
recognizable because the label LS Jeans Tailoring, and the names of the
customers were placed inside the pockets, and each of the jeans had an
LSJT red tab; that LS stood for Latest Style; and that the leather patch
on his jeans had two buffaloes, not two horses.
Issue:
Whether there exists a likelihood of confusion between the trademarks of
Levis and Diaz.
Held:
The Court held, through the application of the holistic test, that there was no
likelihood of confusion between the trademarks involved. Accordingly, the
jeans trademarks of Levis Philippines and Diaz must be considered as a
whole in determining the likelihood of confusion between them. The
maongpants or jeans made and sold by Levis Philippines, which included
LEVIS 501, were very popular in the Philippines. The consuming public knew
that the original LEVIS 501 jeans were under a foreign brand and quite

expensive. Such jeans could be purchased only in malls or boutiques as

ready-to-wear items, and were not available in tailoring shops like those of
Diazs as well as not acquired on a made-to-order basis. Under the
circumstances, the consuming public could easily discern if the jeans were
original or fake LEVIS 501, or were manufactured by other brands of jeans.
Diaz used the trademark LS JEANS TAILORING for the jeans he produced
and sold in his tailoring shops. His trademark was visually and aurally
different from the trademark LEVI STRAUSS & CO appearing on the patch
of original jeans under the trademark LEVIS 501. The word LS could not be
confused as a derivative from LEVI STRAUSS by virtue of the LS being
connected to the word TAILORING, thereby openly suggesting that the
jeans bearing the trademark LS JEANS TAILORINGcame or were bought
from the tailoring shops of Diaz, not from the malls or boutiques selling
original LEVIS 501 jeans to the consuming public.
The prosecution also alleged that the accused copied the two horse design
of the petitioner-private complainant but the evidence will show that there
was no such design in the seized jeans. Instead, what is shown is buffalo
design. Again, a horse and a buffalo are two different animals which an
ordinary customer can easily distinguish.
The prosecution further alleged that the red tab was copied by the accused.
However, evidence will show that the red tab used by the private
complainant indicates the word LEVIS while that of the accused indicates
the letters LSJT which means LS JEANS TAILORING. Again, even an ordinary
customer can distinguish the word LEVIS from the letters LSJT.
In terms of classes of customers and channels of trade, the jeans products of
the private complainant and the accused cater to different classes of
customers and flow through the different channels of trade. The customers of
the private complainant are mall goers belonging to class A and B market
group while that of the accused are those who belong to class D and E
market who can only afford Php 300 for a pair of made-to-order pants.

2. Chester Uyco, Winston Uychiyong and Cherry Uyco-Ong v Vicente

Lo
G.R. No. 202423, January 28, 2013
Facts:
Petitioners in this case are the officers of Wintrade Industrial Sales Corp
(WINTRADE), seller of kerosene burners in the Philippines. Vicente Lo, on the
other hand, claims to be the asssignee of the disputed marks "HIPOLITO &
SEA HORSE & TRIANGULAR DEVICE," "FAMA," and other related marks,
service marks and trade names Casa Hipolito S.A. Portugal, to be used in
kerosene burners as well.
Lo further alleged that the ultimate owner of said marks is the Portuguese
Company GASIREL and that the latter executed a deed of assignment in
favor of Lo to use the marks in all countries except Europe and America. Lo
subsequently authorized his agent Philippine Burners Manufacturing
Corporation (PBMC) to manufacture burners with the aforementioned marks
and tradename Casa Hipolito S.A. Portugal.
During a test buy, Lo was able to purchase a burner with marked "Made in
Portugal" and "Original Portugal". He noted that such burners were
manufactured by WINTRADE. As such, Lo filed a complaint on the ground
that the kerosene burners sold by WINTRADE have caused confusion, mistake
and deception on the part of the buying public as to the origin of goods.
WINTRADE and its officers contend that the marks "Made in Portugal" and
"Original Portugal" refer to origin of the design and not origin of the
goods and that they have certificates of registration with the IPO for use of
marks, derived their authority to use from WONDER, their predecessor-ininterest and that PBMCs licensing agreement with Lo is ineffective for being
unnotarized, among others.
Issue:
Whether or not WINTRADE and its officers are liable for violation of the law
on trademarks, tradenames and false designation of origin?
Held:

Yes. WINTRADE and its officers are liable for violation of the law on
trademarks and tradenames and for false designation of origin. They placed
the words "Made in Portugal" and "Original Portugal" with the disputed marks
knowing fully well because of their previous dealings with the Portuguese
company that these were the marks used in the products of another. More
importantly, they used the marks without any authority from the owner
notwithstanding that their products are, in reality, produced in the
Philippines, not in Portugal. Hence, probable cause exists to charge the
petitioners with false designation of origin. Had they intended to refer to the
source of the design or the history of the manufacture, they should have
explicitly said so in their packaging.
The Supreme Court emphasized that the law on trademarks and trade names
precisely precludes a person from profiting from the business reputation built
by another and from deceiving the public as to the origin of products.
3. In-n-out Burger Inc. vs Sehwani, Incorporated and/or Benitas
Frites
G.R. No. 179127, December 24, 2008
Facts:
On 2 June 1997, petitioner filed trademark and service mark applications
with the Bureau of Trademarks of the IPO for IN-N-OUT and IN-N-OUT
Burger & Arrow Design. Petitioner later found out that respondent Sehwani,
Incorporated had already obtained Trademark Registration for the mark IN N
OUT (the inside of the letter O formed like a star). By virtue of a licensing
agreement, Benita Frites, Inc. was able to use the registered mark of
respondent Sehwani, Incorporated.
Petitioner filed an administrative complaint against respondents for unfair
competition and cancellation of trademark registration. Petitioner averred
that it is the owner of the trade name IN-N-OUT. Petitioner claimed that
respondents are making it appear that their goods and services are those of
the petitioner, thus, misleading ordinary and unsuspecting consumers that
they are purchasing petitioners products. Petitioner then sent a demand
letter directing respondents to cease and desist from claiming ownership of
the mark IN-N-OUT and to voluntarily cancel its trademark registration. The
respondents refused to accede to petitioners demand, but expressed
willingness to surrender the registration of respondent Sehwani, Incorporated
of the IN N OUT trademark for a fair and reasonable consideration.
Respondents, on the other hand, asserted that they had been using the mark
IN N OUT in the Philippines since 15 October 1982. On 15 November 1991,
respondent Sehwani, Incorporated filed with the then Bureau of Patents,
Trademarks and Technology Transfer (BPTTT) an application for the
registration of the mark IN N OUT (the inside of the letter O formed like a
star). Upon approval of its application, a certificate of registration of the

said mark was issued in the name of respondent Sehwani, Incorporated

on 17 December 1993.
Issue:
Whether respondent Sehwani Incorporated is liable for unfair competition.
Held:
Yes. The essential elements of an action for unfair competition are (1) confusing similarity in the
general appearance of the goods and (2) intent to deceive the public and defraud a competitor.
The intent to deceive and defraud may be inferred from the similarity of the appearance of the
goods as offered for sale to the public. Actual fraudulent intent need not be shown.
The evidence on record shows that the respondents were not using their registered trademark but
that of the petitioner. Respondent was issued a Certificate of Registration for IN N OUT (with
the Inside of the Letter O Formed like a Star) for restaurant business in 1993. The restaurant
opened only in 2000 but under the name IN-N-OUT BURGER. Apparently, the respondents
started constructing the restaurant only after the petitioner demanded that the latter desist from
claiming ownership of the mark IN-N-OUT and voluntarily cancel their trademark registration.
4.MCDONALDS CORPORATION VS. MACJOY FASTFOOD
CORPORATION
G.R. NO. 166115, FEB. 2, 2007
Facts:
On Mar. 14, 1991, respondent Macjoy Fastfood Corporation, a domestic
corporation engaged in the sale of Fast food products in Cebu city, filed with
BPTT, now IPO, an application for registration of the trademark MACJOY &
DEVICE for fried chicken, chicken barbeque, burgers, fries, spaghetti,
palabok, tacos, sandwiches, halo-halo and steaks. Petitioner McDonalds
Corporation, filed a verified Notice of Opposition against the respondents
application claiming that the trademark MACJOY & DEVICE so resembles
its corporate logo otherwise known as the Golden Arches or M design, and
its
marks

McDonalds,
McChicken,MacFries,
BigMac,McDo,McSpaghetti,McSnack, and Mc, 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. On Dec. 28, 1998, the IPO sustained the petitioners
opposition and rejected the respondents application. CA reversed.
Issue:
Whether or not respondents McJoy and Device marks are confusingly similar
to petitioners McDonalds marks?
Held:
Yes. In determining similarity and likelihood of confusion, jurisprudence has
developed two test-the dominancy test and the holistic test: The dominancy

test focuses on the similarity of the prevalent features of the competing

trademarks that might cause confusion or deception; the holistic test
requires the court to consider the entirety of the marks as applied to the
products, including the labels and packaging. Applying the dominancy test,
McDonalds and MACJOY marks are confusingly similar with each other
such that an ordinary purchaser can conclude an association or relation
between the marks.
Respondent alleged that the word MACJOY is based on the name of its
presidents niece, Scarlett Yu Carcell. By its implausible and insufficient
explanation as to how and why out of the many choices of words if could
have used for its trade name and/or trademark, it chose the word MACJOY,
the only logical conclusion deducible therefrom is that the respondent would
want to ride high on the establish reputation and goodwill of the
MCDONALDS marks, which, as applied to petitioners restaurant business
and food products, is undoubtedly beyond question.

5. LEVI STRAUSS (PHILS.), INC., vs TONY LIM,

GR 162311,December 4, 2008
Facts:
Petitioner Levi Strauss (Phils.), Inc. is a duly-registered domestic corporation.
It is a wholly-owned subsidiary of Levi Strauss & Co.(LS & Co.) A Delaware,
USA company. In 1972, LS & Co. Granted petitioner a non-exclusive license to
use its registered trademarks and tradenames for the manufacture and sale
of various garment products, primarily pants, jackets, and shirts, in the
Philippines. Presently, it is the only company that has authority to
manufacture, distribute, and sell products bearing the LEVIS trademarks or
to use such trademarks in the Philippines. These trademarks are registered
in over 130 countries, including the Philippines, and were first used in
commerce in the Philippines in 1946.
Sometime in 1995, petitioner lodged a complaint before the Inter-Agency
Committee on Intellectual Property Rights, alleging that a certain
establishment owned by respondent Tony Lim, doing business under the
name Vogue Traders Clothing Company, was engaged in the manufacture,
sale, and distribution of products similar to those of petitioner and under the
brand name LIVES, and was granted the filing of an information against
respondent. Respondent then filed his own motion for reconsideration of the

Bello resolution, the DOJ then ordered the dismissal of the complaint..
Dissatisfied with the DOJ rulings, petitioner sought recourse with the CA via a
petition for review under Rule 43 of the 1997 Rules of Civil Procedure. On
October 17, 2003, the appellate court affirmed the dismissal of the unfair
competition complaint. The CA pointed out that to determine the likelihood of
confusion, mistake or deception, all relevant factors and circumstances
should be taken into consideration, such as the circumstances under which
the goods are sold, the class of purchasers, and the actual occurrence or
absence of confusion.Thus, the existence of some similarities between LIVES
jeans and LEVIS garments would not ipso facto equate to fraudulent intent
on the part of respondent. The CA noted that respondent used affirmative
and precautionary distinguishing features in his products for differentiation.
The appellate court considered the spelling and pronunciation of the marks;
the difference in the designs of the back pockets; the dissimilarity between
the carton tickets; and the pricing and sale of petitioners products in upscale
exclusive specialty shops. The CA also disregarded the theory of post-sale
confusion propounded by petitioner, relying instead on the view that the
probability of deception must be determined at the point of sale.
Issues:
Petitioner submits that the CA committed the following errors:
I. The court of appeals gravely erred in ruling that actual confusion is
necessary to sustain a charge of unfair
competition, and that there must be direct evidence or proof of intent to
deceive the public.
II. The court of appeals gravely erred in ruling that respondents lives jeans
do not unfairly compete with levis
jeans and/or that there is no possibility that the former will be confused for
the latter, considering that respondents lives
jeans blatantly copy or colorably imitate no less than six (6) trademarks of
levis jeans.
Held:
Generally, unfair competition consists in employing deception or any other
means contrary to good faith by which any person shall
pass off the goods manufactured by him or in which he deals, or his
business, or services for those of the one having established goodwill, or
committing any acts calculated to produce such result. The elements of
unfair competition under Article 189(1) of the Revised Penal Code are:
(a) That the offender gives his goods the general appearance of the goods of
another manufacturer or dealer;
(b) That the general appearance is shown in the (1) goods themselves, or in
the (2) wrapping of their packages, or in the (3) device or words therein, or in
(4) any other feature of their appearance;
(c) That the offender offers to sell or sells those goods or gives other persons
a chance or opportunity to do the same with a like purpose; and

(d) That there is actual intent to deceive the public or defraud a competitor.
All these elements must be proven. In finding that probable cause for unfair
competition does not exist, the investigating prosecutor Secretaries
Guingona and Cuevas arrived at the same conclusion that there is
insufficient evidence to prove all the elements of the crime that would allow
them to secure a conviction. Secretary Guingona discounted the element of
actual intent to deceive by taking into consideration the differences in
spelling, meaning, and phonetics between LIVES and LEVIS, as well as
the fact that respondent had registered his own mark. While it is true that
there may be unfair competition even if the competing mark is registered in
the Intellectual Property Office, it is equally true that the same may show
prima facie good faith. Indeed, registration does not negate unfair
competition where the goods are packed or offered for sale and passed off as
those of complainant. However, the marks registration, coupled with the
stark differences between the competing marks, negate the existence of
actual intent to deceive, in this particular case.
Petitioner argues that the element of intent to deceive may be inferred from
the similarity of the goods or their appearance. The argument is specious on
two fronts. First, where the similarity in the appearance of the goods as
packed and offered for sale is so striking, intent to deceive may be inferred.
However, as found by the investigating prosecutor and the DOJ Secretaries,
striking similarity between the competing goods is not present. Second, the
confusing similarity of the goods was precisely in issue during the
preliminary investigation. As such, the element of intent to deceive could not
arise without the investigating prosecutors or the DOJ Secretarys finding
that such confusing similarity exists. Since confusing similarity was not
found, the element of fraud or deception could not be inferred.
We cannot sustain Secretary Bellos opinion that to establish probable cause,
it is enough that the respondent gave to his product the general
appearance of the product of petitioner. It bears stressing that that is only
one element of unfair competition. All others must be shown to exist. More
importantly, the likelihood of confusion exists not only if there is confusing
similarity. It should also be likely to cause confusion or mistake or deceive
purchasers. Thus, the CA correctly ruled that the mere fact that some
resemblance can be pointed out between the marks used does not in itself
prove unfair competition. To reiterate, the resemblance must be such as is
likely to deceive the ordinary purchaser exercising ordinary care.
The consumer survey alone does not equate to actual confusion. We note
that the survey was made by showing the interviewees actual samples of
petitioners and respondents respective products, approximately five feet
away from them. From that distance, they were asked to identify the jeans
brand and state the reasons for thinking so. This method discounted the
possibility that the ordinary intelligent buyer would be able to closely

scrutinize, and even fit, the jeans to determine if they were LEVIS or not. It
also ignored that a consumer would consider the price of the competing
goods when choosing a brand of jeans. It is undisputed that LIVES jeans
are priced much lower than LEVIS. We find no reason to go beyond the
point of sale to determine if there is probable cause for unfair competition.
WHEREFORE, the petition is DENIED and the appealed Decision of the Court
of Appeals AFFIRMED. SO ORDERED.

6. Shangri-La International Hotel Management, LTD., Shangri-La

Properties Inc., Makati Shangri-La Hotel & Resort Inc., and Kuok
Philippines Properties, Inc vs Developers Group of Companies, Inc.
GR 159938, March 31, 2006
Facts:
Respondent claims ownership over the Shangri-La mark and s logo on the
strength of its prior use within the country. It filed with the bureau of patents,
trademarks and technology transfer an application for registration covering
the subject mark and logo.

BPTTT issued the corresponding certificate of registration.

The Kuok family on the other hand owns a chain of hotels since 1969 and
adopted the name Shangri-La. The Kuok Family has opened EDSA Shangri-La
and Makati Shangri-La in the Philippines. Both hotels are incorporated in the
Philippines.
The hotels owned by the Kuok family used the distinct marks of Shangri-La
as part of their trade name.
The Kuok Family filed with the BPTTT a petition for cancellation of the
registration of the Shangri-La mark used by respondent.The case was
thereafter heard before the RTC.
After trial on the merits, the RTC ruled in favor of DGCIOn appeal, the CA
affirmed the ruling of the RTC.On appeal to the SC, petitioner alleged that
respondent cannot file an application for registration of the Shangri-La mark
because it did not have prior actual commercial use as required by RA 166.
Issue:
Whether or not the trademark by DGCI cannot be registered?
Held:
Under RA 166 before a trademark can be registered, it must have been
actually used in commerce for not less than two months in the Philippines
prior the filing of the application for registration.
Registration does not confer upon the registrant an absolute right to the
registered mark. It is merely a prima facie proof that the registrant is the
owner. Evidence of a prior and continuous use by another can overcome such
presumption.
Ownership of a mark or trade name may be acquired not by registration but
by adoption and use in trade and commerce.
Respondents own witness testified that the jeepney signboard artist
commissioned to create the mark and logo submitted his designs only two
and a half months after the filing of the trademark application. Hence
respondent cannot claim that the certificate of registration is proof that the
two months prior use was complied with.
Also it was found that respondents president Ramon Syhunliong has been a
guest in one of the petitioners hotel. Hence there was a possibility that he
may have copied the idea there.
CA still gave him the benefit of the doubt; however upon scrutiny of the
questioned logos, it appears that the respondents logo has oriental
overtones. By copying even the exact font and lettering, there arises a
certainty that the adoption was deliberate, malicious, and in bad faith.

7. Coffee Partners, Inc., vs San Francisco Coffee & Roastery, Inc..

G.R. No. 169504 : March 3, 2010
Facts:

Petitioner Coffee Partners, Inc. is a local corporation engaged in the business

of establishing and maintaining coffee shops in the country. It has a franchise
agreement6ca with Coffee Partners Ltd. (CPL), a business entity organized
and existing under the laws of British Virgin Islands, for a non-exclusive right
to operate coffee shops in the Philippines using trademarks designed by CPL
such as "SAN FRANCISCO COFFEE." Respondent is a local corporation
engaged in the wholesale and retail sale of coffee. It registered with the SEC
in May 1995. It registered the business name "SAN FRANCISCO COFFEE &
ROASTERY, INC." with the Department of Trade and Industry (DTI) in June
1995. Respondent formed a joint venture company with Boyd Coffee USA
under the company name Boyd Coffee Company Philippines, Inc. (BCCPI),
which is engaged in the processing, roasting, and wholesale selling of coffee.
In 2001, respondent discovered that petitioner was about to open a coffee
shop under the name "SAN FRANCISCO COFFEE" in Libis, Quezon City.
According to respondent, petitioners shop caused confusion in the minds of
the public as it bore a similar name and it also engaged in the business of
selling coffee. Respondent also filed a complaint with the Bureau of Legal
Affairs-Intellectual Property Office (BLA-IPO) for infringement and/or unfair
competition. Petitioner denied the allegations in the complaint. Petitioner
alleged it filed with the Intellectual Property Office (IPO) applications for
registration of the mark "SAN FRANCISCO COFFEE & DEVICE" for class 42 in
1999 and for class 35 in 2000.
BLA-IPO rendered a decision favourable to the respondents and found herein
petitioners guilty of trademark ingfringement. ODG-IPO; however reversed
the decision of the Bureau which lead respondents to appeal. CA again
reversed the decision of the Office of the Director General and affirmed the
BLA-IPOs finding, hence this petition.
Issue:
Whether petitioners use of the trademark "SAN FRANCISCO COFFEE"
constitutes infringement of respondents trade name "SAN FRANCISCO
COFFEE & ROASTERY, INC.," even if the trade name is not registered with the
Intellectual Property Office (IPO).
Held:
In Prosource International, Inc. v. Horphag Research Management SA, this
Court laid down what constitutes infringement of an unregistered trade
name, thus:
(1) The trademark being infringed is registered in the Intellectual Property
Office; however, in infringement of trade name, the same need not be
registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or
colorably imitated by the infringer;

(3) The infringing mark or trade name is used in connection with the sale,
offering for sale, or advertising of any goods, business or services; or the
infringing mark or trade name is applied to labels, signs, prints, packages,
wrappers, receptacles, or advertisements intended to be used upon or in
connection with such goods, business, or services;
(4) The use or application of the infringing mark or trade name is likely to
cause confusion or mistake or to deceive purchasers or others as to the
goods or services themselves or as to the source or origin of such goods or
services or the identity of such business; and
(5) It is without the consent of the trademark or trade name owner or the
assignee thereof.
Clearly, a trade name need not be registered with the IPO before an
infringement suit may be filed by its owner against the owner of an infringing
trademark. All that is required is that the trade name is previously used in
trade or commerce in the Philippines. Section 22 of Republic Act No.
166,12ca as amended, required registration of a trade name as a condition
for the institution of an infringement suit. However, RA 8293, Section 165.2
of RA 8293 categorically states that trade names shall be protected, even
prior to or without registration with the IPO, against any unlawful act x x x.
Also, applying the dominancy test or the holistic test, petitioners "SAN
FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN
FRANCISCO COFFEE & ROASTERY, INC." trade name.

8. Manuel C. Espiritu, Jr., Audie Llona, Freida F. Espiritu, Carlo F.

Espiritu, Rafael F. Espiritu, Rolando M. Mirabuna, Hermilyn A.
Mirabuna, Kim Roland A. Mirabuna, Kaye Ann A. Mirabuna, Ken Ryan
A. Mirabuna, Juanito P. De Castro, Geronima A. Almonite, and
Manuel C. Dee, who are the officers and directors of Bicol Gas
Refilling Plant Corporation vs Petron Corporation and Carmen J.
Doloiras, doing business under the name Kristina Patricia
Enterprises
GR No. 170981, November 4, 2009
Facts:
Petron Corporation sold and distributed LPG in cylinder tanks that carried its
trademark GASUL and Carmen Dolorias owned and operated Kristina
Patricia Enterprises, the exclusive distributor of Gasul LPG in the whole
Sorsogon.
On the hand, Bicol Gas was also in the business of selling and distributing
LPG in Sorsogon but theirs carried the trademark Bicol Savers Gas.
In the course of trade and competition, any given distributor of LPGs at times
acquired possession of LPG cylinder tanks belonging to other distributors
operating in the same area. They called these captured cylinders. What
KPE is doing is that they swap the cylinder tanks with Bicol Gas involving 30
tanks of Gasul with the permission of the Bicol Gas owners. While doing such
transaction, KPEs Manager noticed that Bicol Gas still has a number of Gasul
tanks in its yard. It requested that those tanks be returned. But the latter
refused because those tanks will be sent to Batangas.
However, during the day to day delivery of Bicol Gas in the town of Sorsogon,
KPEs Manager noticed that the truck carrying mostly of Bicol Savers LPG
tanks has one unsealed 50-kg Gasul and one 50-kg Shellane tank. When
Jose, KPEs Manager, inquired, the driver said that it was empty but when it
was checked, it was not. As a result, Petron and KPE filed a complaint for
violation of RA 623 (illegally filing up registered cylinder tanks) , section 155
(infringement of trademarks) and section 169.1 (unfair competition) of the
Intellectual Property Code.

Issues:
Whether or not the facts of the case warranted the filing of charges against
the Bicol Gas people for:
a)
Filing up the LPG tanks registered to another manufacturer without the
latters consent in violation of RA 623 as amended
b)
Trademark infringement consisting in Bicol Gas use of trademark that
is confusingly similar to Petrons registered Gasul trademark in violation of
Section 155 of RA 8293
c)
Unfair competition consisting in passing off Bicol Gas- produced LPGs
fro Petron produced Gasul LPG in violation of Section 168.3 of RA 8293
Held:
a)
The complaint adduced at the preliminary investigation shows that one
50 kg Petron Gasul LPG found in the Bicol Gas truck belonged to their
customer who had the same filled up by Bicol Gas. RA 623 as amended
punishes any person who without the written consent of the manufacturer or
seller of gases contained in duly registered steel cylinder tanks, fills the steel
cylinder or tanks for the purpose of sale, disposal or trafficking, other than
the purpose for which the manufacturer or seller registered the same.
Consequently, they may be prosecuted for that purpose.
b)
But as for the crime of trademark infringement, section 155 of RA 8293
provides its enumeration. However, KPE and Petron failed to prove that Bicol
Gas painted on its own tanks Petrons Gasul trademark or confusingly similar
version to deceive its customers and cheat Petron.
c)
As for the charge of unfair competition under section 168.3 of RA 8293,
there is no showing that Bicol has been giving its LPG tanks the general
appearance of the tanks of Petrons Gasul. As already stated, the truck full of
Bicol Gas tank that the KPE manager apprehended on the road in Sorsogon
just have mixed up with the one authentic Gasul tank that belong to Petron.
Lastly, Bicol Gas is a Corporation. It is an entity separate and distinct from
persons of its officer, directors and stockholders. It has been held however,
that corporate officers and employees through whose act, default or
omission of the crime, they will be held answerable for the crime but
respondents failed to show that Bicol Gas officers and stockholders
participated in the crime.

9. PROSOURCE INTERNATIONAL, INC. vs. HORPHAG RESEARCH

MANAGEMENT SA
G.R. No. 180073, November 25, 2009
Facts:
Respondent Horphag Research Management is a corporation duly organized
and existing under the laws of Switzerland and the owner of trademark
PYCNOGENOL, a food supplement sold and distributed by Zuellig Pharma
Corporation. Respondent discovered that petitioner Prosource International
was also distributing a similar food supplement using the mark PCO-GENOLS
since 1996 and was only discontinued in 2000. Respondent filed a complaint
for Infringement of Trademark against petitioner, praying that the latter
cease and desist from using the brand PCO-GENOLS for being confusingly
similar with respondents trademark PYCNOGENOL. Petitioner contended that
the two marks were not confusingly similar and denied liability, since it
discontinued the use of the mark prior to the institution of the infringement
case.
Issue:
Whether or not petitioners are liable for infringement of trademark.
Held:
The court ruled in the positive. A trademark is any distinctive word, name,
symbol, emblem, sign, or device, or any combination thereof, adopted and
used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt by others. The gravamen of
trademark infringement is the element of "likelihood of confusion" which
must be examined from the particular, and sometimes peculiar,
circumstances of each case.

In determining similarity and likelihood of confusion, jurisprudence has

developed two tests: the Dominancy Test and the Holistic or Totality Test. The
Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion and deception, thus
constituting infringement. If the competing trademark contains the main,
essential and dominant features of another, and confusion or 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 question is whether the use of the marks involved is
likely to cause confusion or mistake in the mind of the public or to deceive
purchasers. Courts will consider more the aural and visual impressions
created by the marks in the public mind, giving little weight to factors like
prices, quality, sales outlets, and market segments. In contrast, the Holistic
Test entails a consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing
similarity. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing on both labels
in order that the observer may draw his conclusion whether one is
confusingly similar to the other.
In the case at bar, the dominancy test was used in determining whether
there was a confusing similarity between the marks PYCNOGENOL and PCOGENOL. Applying the test, the court found that:
Athough the letters "Y" between P and C, "N" between O and C and "S" after
L are missing PCO-GENOLS, nevertheless, when the two words are
pronounced, the sound effects are confusingly similar not to mention that
they are both described by their manufacturers as a food supplement and
thus, identified as such by their public consumers. And although there were
dissimilarities in the trademark due to the type of letters used as well as the
size, color and design employed on their individual packages/bottles, still the
close relationship of the competing products name in sounds as they were
pronounced, clearly indicates that purchasers could be misled into believing
that they are the same and/or originates from a common source and
manufacturer. This is not the first time that the court takes into account the
aural effects of the words and letters contained in the marks in determining
the issue of confusing similarity.

10. TANADA VS ANGARA

WIGBERTO E. TAADA and ANNA DOMINIQUE COSETENG, as members of the
Philippine Senate and as taxpayers; GREGORIO ANDOLANA and JOKER
ARROYO as members of the House of Representatives and as taxpayers;
NICANOR P. PERLAS and HORACIO R. MORALES, both as taxpayers; CIVIL
LIBERTIES UNION, NATIONAL ECONOMIC PROTECTIONISM ASSOCIATION,
CENTER FOR ALTERNATIVE DEVELOPMENT INITIATIVES, LIKAS-KAYANG
KAUNLARAN FOUNDATION, INC., PHILIPPINE RURAL RECONSTRUCTION
MOVEMENT, DEMOKRATIKONG KILUSAN NG MAGBUBUKID NG PILIPINAS, INC.,
and PHILIPPINE PEASANT INSTITUTE, in representation of various taxpayers
and as non-governmental organizations, petitioners, vs. EDGARDO ANGARA,
ALBERTO ROMULO, LETICIA RAMOS-SHAHANI, HEHERSON ALVAREZ, AGAPITO
AQUINO, RODOLFO BIAZON, NEPTALI GONZALES, ERNESTO HERRERA, JOSE
LINA, GLORIA MACAPAGAL-ARROYO, ORLANDO MERCADO, BLAS OPLE, JOHN
OSMEA, SANTANINA RASUL, RAMON REVILLA, RAUL ROCO, FRANCISCO
TATAD and FREDDIE WEBB, in their respective capacities as members of the
Philippine Senate who concurred in the ratification by the President of the
Philippines of the Agreement Establishing the World Trade Organization;
SALVADOR ENRIQUEZ, in his capacity as Secretary of Budget and
Management; CARIDAD VALDEHUESA, in her capacity as National Treasurer;

RIZALINO NAVARRO, in his capacity as Secretary of Trade and Industry;

ROBERTO SEBASTIAN, in his capacity as Secretary of Agriculture; ROBERTO
DE OCAMPO, in his capacity as Secretary of Finance; ROBERTO ROMULO, in
his capacity as Secretary of Foreign Affairs; and TEOFISTO T. GUINGONA, in
his capacity as Executive Secretary, respondents.
G.R. No. 118295 May 2, 1997
Facts:
This is a petition seeking to nullify the Philippine ratification of the World
Trade Organization (WTO) Agreement. Petitioners question the concurrence
of herein respondents acting in their capacities as Senators via signing the
said agreement.
The WTO opens access to foreign markets, especially its major trading
partners, through the reduction of tariffs on its exports, particularly
agricultural and industrial products. Thus, provides new opportunities for the
service sector cost and uncertainty associated with exporting and more
investment in the country. These are the predicted benefits as reflected in
the agreement and as viewed by the signatory Senators, a free market
espoused by WTO.
Petitioners aver that paragraph 1, Article 34 of the General Provisions and
Basic Principles of the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) intrudes on the power of the Supreme Court to
promulgate rules concerning pleading, practice and procedures and is a
derogation of legislative power.
Issue:
Whether the provisions of the Agreement Establishing the World Trade
Organization contravene the Philippine Constitution. (NO)
Held:
Suffice it to say that the reciprocity clause of WTO more than justifies such
intrusion, if any actually exists. Besides, Article 34 does not contain an
unreasonable burden, consistent as it is with due process and the concept of
adversarial dispute settlement inherent in our judicial system. So too, since
the Philippines is a signatory to most international conventions on patents,
trademarks and copyrights, the adjustment in legislation and rules of
procedure will not be substantial.
A WTO Member is required to provide a rule of disputable (note the words in
the absence of proof to the contrary) presumption that a product shown to
be identical to one produced with the use of a patented process shall be
deemed to have been obtained by the (illegal) use of the said patented
process, (1) where such product obtained by the patented product is new, or
(2) where there is substantial likelihood that the identical product was

made with the use of the said patented process but the owner of the patent
could not determine the exact process used in obtaining such identical
product. Hence, the burden of proof contemplated by Article 34 should
actually be understood as the duty of the alleged patent infringer to
overthrow such presumption. Such burden, properly understood, actually
refers to the burden of evidence (burden of going forward) placed on the
producer of the identical (or fake) product to show that his product was
produced without the use of the patented process.
The Senate Act, after deliberation and voting, of voluntarily and
overwhelmingly giving its consent to the WTO Agreement thereby making it
a part of the law of the land, is a legitimate exercise of its sovereign duty
and power. By the doctrine of incorporation, the country is bound by
generally accepted principles of international law, which are considered to be
autom atically part of our own laws. One of the oldest and most fundamental
rules in international law is pacta sunt servandainternational agreements
must be performed in good faith. A treaty engagement is not a mere moral
obligation but creates a legally binding obligation on the parties.
Lastly, notwithstanding objections against possible limitations on national
sovereignty, the WTO remains as the only viable structure for multilateral
trading and the veritable forum for the development of international trade
law.

11. Pribhdas J. Mirpuri vs Court of Appeals, Director of Patents and

the Barbizon Corporation
G.R. No. 114508, November 19, 1999
Facts:
On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of
petitioner Pribhdas J. Mirpuri, filed an application with the Bureau of Patents
for the registration of the trademark "Barbizon" for use in brassieres and
ladies undergarments. Barbizon Corporation, the private respondent of the
case at bar opposed the application on the ground that the mark Barbizon of

the applicant is confusingly similar to the trademark Barbizon of which the

opposer has not abandoned. Furthermore, it was alleged by the opposer that
it shall suffer damage by the registration of the mark Barbizon and its
business reputation and goodwill will suffer great and irreparable injury, and
that the use by the applicant by the said mark which resembles the
trademark used and owned by oppose constitutes an unlawful appropriation
of a mark previously used in the Philippines and not abandoned therefore a
statutory violation of Sec 4 (d) of Republic Act No. 166, as amended. The
opposition was dismissed and Escobar was issued a certificate of registration
for the trademark Barbizon, and subsequently Escobar assigned all her
rights and interest over the trademark to petitioner Pribhdas J. Mirpuri.
However, Escobar failed to file an Affidavit of Use of the trademark so
Escobars certificate of registration was cancelled. Consequently, she
reapplied for the registration of the cancelled trademark. Opposer's
BARBIZON as well as its BARBIZON and Bee Design and BARBIZON and
Representation of a Woman trademarks are deemed to qualify as well-known
trademarks.
Issue:
Whether or not the Convention of Paris for the Protection of Industrial
Property affords protection to a foreign corporation against a Philippine
applicant for the registration of a similar trademark
Held:
On record, there can be no doubt that respondent-applicant's sought-to-beregistered trademark BARBIZON is similar, in fact obviously identical, to
opposer's alleged trademark BARBIZON, in spelling and pronunciation. The
only appreciable but very negligible difference lies in their respective
appearances or manner of presentation. Respondent-applicant's trademark
is in bold letters (set against a black background), while that of the opposer
is offered in stylish script letters.
The Convention of Paris for the Protection of Industrial Property, otherwise
known as the Paris Convention, is a multilateral treaty that seeks to protect
industrial property consisting of patents, utility models, industrial designs,
trademarks, service marks, trade names and indications of source or
appellations of origin, and at the same time aims to repress unfair
competition. The Convention is essentially a compact among various
countries which, as members of the Union, have pledged to accord to
citizens of the other member countries trademark and other rights
comparable to those accorded their own citizens by their domestic laws for
an effective protection against unfair competition. In short, foreign nationals
are to be given the same treatment in each of the member countries as that
country makes available to its own citizens. Nationals of the various member
nations are thus assured of a certain minimum of international protection of
their industrial property.

The main argument is embedded on Art 6 of the Paris Convention which

governs the protection of well-known marks. The essential requirement of
the said article is that the trademark to be protected must be "well-known" in
the country where protection is sought. The power to determine whether a
trademark is well-known lies in the "competent authority of the country of
registration or use." This competent authority would be either the registering
authority if it has the power to decide this, or the courts of the country in
question if the issue comes before a court

12. McDonalds Corporation and McGeorge Food Industries, Inc. vs

L.C. Big Mak Burger, Inc., et al

G.R. No. 143993, August 18, 2004

Facts:
McDonalds is a corporation organized under the laws of Delaware which
operates by itself or through its franchisees a global chain of fast-food
restaurants. It owns a family of marks including Big Mac for their doubledecker hamburger sandwich. This trademark was registered with the US
Trademark Registry on October 16, 1979. Thus, McDonalds displays the Big
Mac mark in their items and paraphernalia.
L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food
outlets and snack vans in Metro Manila and nearby provinces. The menu
includes hamburger sandwiches. On October 25, 1988, they applied for the
registration of the Big Mak mark for their hamburger sandwiches which
McDonalds opposed, the latter alleging that Big Mak was a colorable
imitation of its registered Big Mac mark for the same food products.
McDonalds wrote to the chairman of the Board of Directors of L.C. Big Mak
Burger requesting the latter to desist from using Big Mac mark but there
was no reply. McDonalds then sued L.C. Big Mak for infringement and unfair
competition.
Issue:
Whether or not L.C. Big Mak Burger, Inc. is liable for infringement and unfair
competition.
Held:
Yes. The Court, in holding the respondents liable, relied on the dominancy
test rather than holistic test. The dominancy test considers the dominant
features in the competing marks in determining whether they are confusingly
similar. Under the dominancy test, courts give greater weight to the
similarity of the appearance of the product arising from theadoption of the
dominant features of the registered mark, disregarding minor differences.
Courts will consider more the aural and visual impressions created by the
marks in the public mind, giving little weight to factors like prices, quality,
sales outlets and market segments.
Applying the dominancy test, the Court finds that respondents' use of the
"Big Mak" mark results in likelihood of confusion. First, "Big Mak" sounds
exactly the same as "Big Mac." Second, the first word in "Big Mak" is exactly
the same as the first word in "Big Mac." Third, the first two letters in "Mak"
are the same as the first two letters in "Mac." Fourth, the last letter in "Mak"
while a "k" sounds the same as "c" when the word "Mak" is pronounced.
Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus "Caloocan" is
spelled "Kalookan."

In short, aurally the two marks are the same, with the first word of both
marks phonetically the same, and the second word of both marks also
phonetically the same. Visually, the two marks have both two words and six
letters, with the first word of both marks having the same letters and the
second word having the same first two letters. In spelling, considering the
Filipino language, even the last letters of both marks are the same.
Clearly, respondents have adopted in "Big Mak" not only the dominant but
also almost all the features of "Big Mac." Applied to the same food product of
hamburgers, the two marks will likely result in confusion in the public mind.

13. Mighty Corporation and La Campana Fabrica De Tabaco, Inc. vs.

E. & J. Gallo Winery and The Andresons Group, Inc.
G.R. No. 154342 July 14, 2004
Facts:
Respondent Gallo Winery is a foreign corporation not doing business in the
Philippines, but organized under the laws of California, USA. It uses the
GALLO and ERNEST & JULIO GALLO wine trademarks. Andresons has been
Gallo Winerys exclusive wine importer and distributor in the Philippines.
GALLO wine trademark was registered in the Philippine Patent Office on
November 16, 1971.
Mighty Corporation and La Campana are engaged in the cultivation,
manufacture, and sale of tobacco products which they have been using the
GALLO cigarette trademark since 1973. GALLO cigarette trademark was
registered on 1985 in the Philippine Patent Office.
Respondents sued petitioner for trademark and trade name infringement and
unfair competition
Petitioners alleged that the cigarettes and wines were totally unrelated
products and that Gallo Winerys GALLO trademarks only covers wine and
does not cover cigarettes, and that the wines and cigarettes were sold
through different channel of trade, that the GALLO cigarettes were low-cost
items.
Issue:
Whether or not there is infringement and/or unfair competition
Held:
No. Petitioners and respondents both use "GALLO" in the labels of their
respective cigarette and wine products. But, as held in many cases, the use
of an identical mark does not, by itself, lead to a legal conclusion that there
is trademark infringement.
First, there is difference in the features of the marks used by the petitioners
and the respondent:
The dominant feature of the GALLO cigarette trademark is the device of a
large rooster facing left, outlined in black against a gold background. The
roosters color is either green or red green for GALLO menthols and red for

GALLO filters. Directly below the large rooster device is the word GALLO. The
rooster device is given prominence in the GALLO cigarette packs in terms of
size and location on the labels. Also, as admitted by respondents
themselves, on the side of the GALLO cigarette packs are the words "MADE
BY MIGHTY CORPORATION," thus clearly informing the public as to the
identity of the manufacturer of the cigarettes.
On the other hand, GALLO Winerys wine and brandy labels are diverse. In
many of them, the labels are embellished with sketches of buildings and
trees, vineyards or a bunch of grapes while in a few, one or two small
roosters facing right or facing each other (atop the EJG crest, surrounded by
leaves or ribbons), with additional designs in green, red and yellow colors,
appear as minor features thereof. Directly below or above these sketches is
the entire printed name of the founder-owners, "ERNEST & JULIO GALLO" or
just their surname "GALLO," which appears in different fonts, sizes, styles
and labels, unlike petitioners uniform casque-font bold-lettered GALLO mark.
Moreover, on the labels of Gallo Winerys wines are printed the words
"VINTED AND BOTTLED BY ERNEST & JULIO GALLO, MODESTO, CALIFORNIA."
Second, the products are not sold in the same channels of trade.
GALLO cigarettes are inexpensive items while GALLO wines are not. GALLO
wines are patronized by middle-to-high-income earners while GALLO
cigarettes appeal only to simple folks like farmers, fishermen, laborers and
other low-income workers. Indeed, the big price difference of these two
products is an important factor in proving that they are in fact unrelated and
that they travel in different channels of trade. There is a distinct price
segmentation based on vastly different social classes of purchasers.
GALLO cigarettes and GALLO wines are not sold through the same channels
of trade. GALLO cigarettes are Philippine-made and petitioners neither claim
nor pass off their goods as imported or emanating from Gallo Winery. GALLO
cigarettes are distributed, marketed and sold through ambulant and sidewalk
vendors, small local sari-sari stores and grocery stores in Philippine rural
areas, mainly in Misamis Oriental, Pangasinan, Bohol, and Cebu. On the other
hand, GALLO wines are imported, distributed and sold in the Philippines
through Gallo Winerys exclusive contracts with a domestic entity, which is
currently Andresons. By respondents own testimonial evidence, GALLO
wines are sold in hotels, expensive bars and restaurants, and high-end
grocery stores and supermarkets, not through sari-sari stores or ambulant
vendors.
Petitioners are not liable for trademark infringement or unfair competition
because the petitioners never attempted to pass off their cigarettes as those
of respondents. There is no evidence of bad faith or fraud imputable to
petitioners in using their GALLO cigarette vmark.

14. SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES,

INC. vs.
COURT OF APPEALS and CFC CORPORATION.
G. R. No. 112012, April 4, 2001
Facts:
CFC Corporation filed with the BPTTT an application for the registration of the
trademark "FLAVOR MASTER" for instant coffee.
Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss
laws and domiciled in Switzerland, claimed that the trademark of private
respondents product is "confusingly similar to its trademarks for coffee and
coffee extracts, MASTER ROAST and MASTER BLEND."
Nestle Philippines, Inc. claimed that the use of 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
three (3) trademarks is "MASTER"; or that the goods of CFC might be
mistaken as having originated from the latter.
CFC argued that FLAVOR MASTER, is not confusingly similar with the formers
trademarks, MASTER ROAST and MASTER BLEND, except for the word
MASTER (which cannot be exclusively appropriated by any person for being a
descriptive or generic name), the other words that are used respectively with
said word in the three trademarks are very different from each other in
meaning, spelling, pronunciation, and sound. CFC further argued that its
trademark, FLAVOR MASTER, "is clearly very different from any of Nestles
alleged trademarks MASTER ROAST and MASTER BLEND, especially when the
marks are viewed in their entirety, by considering their pictorial
representations, color schemes and the letters of their respective labels."

BPTTT: denied CFCs application for registration.

Court of Appeals: reversed decision of BPTTT.
Issue:
Whether the trademark FLAVOR MASTER is a colorable imitation of the
trademarks MASTER ROAST and MASTER BLEND.
Held:
The petition is impressed with merit.
A trademark has been generally defined as "any word, name, symbol or
device adopted and used by a manufacturer or merchant to identify his
goods and distinguish them from those manufactured and sold by others."
Section 4 (d) of Republic Act No. 166 or the Trademark Law:
Registration of trade-marks, trade-names and service-marks on the principal
register. - There is hereby established a register of trade-marks, trade-names
and service marks which shall be known as the principal register. The owner
of a trade-mark, trade-name or service-mark used to distinguish his goods,
business or services from the goods, business or services of others shall
have the right to register the same on the principal register, unless it:
xxx
xxx
xxx
(d) Consists of or comprises a mark or trade-name which so resembles a
mark or trade-name registered in the Philippines or a mark or trade-name
previously used in the Philippines by another and not abandoned, as to be
likely, when applied to or used in connection with the goods, business or
services of the applicant, to cause confusion or mistake or to deceive
purchasers;
xxx
xxx
xxx
The law prescribes a more stringent standard in that there should not only be
confusing similarity but that it should not likely cause confusion or mistake or
deceive purchasers.
Colorable imitation denotes such a close or ingenious imitation as to be
calculated to deceive ordinary persons, or such a resemblance to the original
as to deceive an ordinary purchaser giving such attention as a purchaser
usually gives, as to cause him 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. 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.

The mark must be considered 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. As what appellees would want it to be when they essentially argue that
much of the confusion springs from appellant CFCs use of the word
"MASTER" which appellees claim to be the dominant feature of their own
trademarks that captivates the prospective consumers. Be it further
emphasized that 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.
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.
It must be emphasized that the products bearing the trademarks in question
are "inexpensive and common" household items bought off the shelf by
"undiscerningly rash" purchasers. As such, if the ordinary purchaser is
"undiscerningly rash", then he would not have the time nor the inclination to
make a keen and perceptive examination of the physical discrepancies in the
trademarks of the products in order to exercise his choice.
Court agrees with the BPTTT when it applied the test of dominancy.
It is the observation of this Office that much of the dominance which the
word MASTER has acquired through Opposers advertising schemes is carried
over when the same is incorporated into respondent-applicants trademark
FLAVOR MASTER. Thus, when one looks at the label bearing the trademark
FLAVOR MASTER (Exh. 4) 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 term "MASTER", therefore, 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.

15. Amigo Manufacturing, Inc. vs Cluett Peabody Cp., Inc.

G.r. No. 139300, March 14, 2001.
Facts:
Respondent in this case Cluett Peabody Co., Inc. a New York base corporation
filed a case against petitioner Amigo Manufacturing Inc. a Philippine base
corporation for cancellation of trademark. Respondent claims an exclusive
ownership as successor in interest of Great American Knitting Mills, Inc. of
the following trademark and devices, as used on mens socks:
a)
GOLD TOE, under Certificate of Registration No. 6797 dated September
22,
1958;

b)
DEVICE, representation of a sock and magnifying glass on the toe of a
sock, under Certificate of Registration No. 13465 dated January 25, 1968.
c)
DEVICE, consisting of a plurality of gold colored lines arranged in
parallel relation within a triangular area of toe of the stocking and spread
from each other by lines of contrasting color of the major part of the
stocking under Certificate of Registration No. 13887 dated May 9, 1968; and
d)
LINENIZED, under Certificate of Registration No. 15440 dated April 13,
1970.
On the other hand, petitioners trademark and device GOLD TOP, Linenized
for Extra Wear has the dominant color white at the center and a blackish
brown background with a magnified design of the socks garter, and is
labeled Amigo Manufacturing Inc., Mandaluyong, Metro Manila, Made in the
Philippines.
In the Patent Office, this case was heard by no less than six Hearing Officers:
Attys. Rodolfo Gilbang, Rustico Casia, M. Yadao, Fabian Rufina, Neptali Bulilan
and Pausi Sapak. The last named officer drafted the decision under appeal
which was in due court signed and issued by the Director of Patents (who
never presided over any hearing) adversely against the respondent Amigo
Manufacturing, Inc. as heretofore mentioned. The said decision was appealed
to the CA, finding respondents motion for reconsideration meritorious
because Petitioner's mark is a combination of the different registered marks
owned by respondent.
Issue:
Since the petitioners actual use of its trademark was ahead of the
respondent, whether or not the Court of Appeals erred in canceling the
registration of petitioners trademark instead of canceling the trademark of
the respondent.
Held:
No. Even if Petitioner claims that it started the actual use of the trademark
Gold Top and Device in September 1956, while respondent began using the
trademark Gold Toe only on May 15, 1962. It contends that the claim of
respondent that it had been using the Gold Toe trademark at an earlier
date was not substantiated. The latters witnesses supposedly contradicted
themselves as to the date of first actual use of their trademark, coming up
with different dates such as 1952, 1947 and 1938.
But based on the evidence presented, this Court concurs in the findings of
the Bureau of Patents that respondent had actually used the trademark and
the devices in question prior to petitioners use of its own. During the
hearing at the Bureau of Patents, respondent presented Bureau registrations

indicating the dates of first use in the Philippines of the trademark and the
devices as follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the
Representation of a Sock and a Magnifying Glass; c) January 30, 1932, the
Gold Toe Representation; and d) February 28, 1952, Linenized.
The registration of the above marks in favor of respondent constitutes prima
facie evidence, which petitioner failed to overturn satisfactorily, of
respondents ownership of those marks, the dates of appropriation and the
validity of other pertinent facts stated therein. Indeed, Section 20 of
Republic Act 166 provides as follows:
Sec. 20. Certificate of registration prima facie evidence of validity. - A
certificate of registration of a mark or trade-name shall be prima facie
evidence of the validity of the registration, the registrant's ownership of the
mark or trade-name, and of the registrant's exclusive right to use the same
in connection with the goods, business or services specified in the certificate,
subject to any conditions and limitations stated therein.
Moreover, the validity of the Certificates of Registration was not questioned.
Neither did petitioner present any evidence to indicate that they were
fraudulently issued. Consequently, the claimed dates of respondents first
use of the marks are presumed valid. Clearly, they were ahead of
petitioners claimed date of first use of Gold Top and Device in 1958.
Section 5-A of Republic Act No. 166 states that an applicant for a trademark
or trade name shall, among others, state the date of first use. The fact that
the marks were indeed registered by respondent shows that it did use them
on the date indicated in the Certificate of Registration.
On the other hand, petitioner failed to present proof of the date of alleged
first use of the trademark Gold Top and Device. Thus, even assuming that
respondent started using it only on May 15, 1962, we can make no finding
that petitioner had started using it ahead of respondent.
The findings of the Bureau of Patents that two trademarks are confusingly
and deceptively similar to each other are binding upon the courts, absent
any sufficient evidence to the contrary. In this case, the Bureau considered
the totality of the similarities between the two sets of marks and found that
they were of such degree, number and quality as to give the overall
impression that the two products are confusingly if not deceptively the same.
16. ASIA BREWERY, INC , vs.THE HON. COURT OF APPEALS and SAN
MIGUEL CORPORATION
G.R. No. 103543, July 5, 1993

Facts:
San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc.
(ABI) for infringement of trademark and unfair competition on account of the
latter's BEER PALE PILSEN or BEER NA BEER product which has been
competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer
market.
Trial Court dismissed SMC's complaint because ABI "has not committed
trademark infringement or unfair competition against" SMC.
SMC appealed to the Court of Appeals, the Court of Appeals reversed the trial
court.
Issue:
Whether ABI's BEER PALE PILSEN label or "design" infringe upon SMC's SAN
MIGUEL PALE PILSEN WITH RECTANGULAR MALT AND HOPS DESIGN?
Held:
No.
Infringement is determined by the "test of dominancy" rather than by
differences or variations in the details of one trademark and of another.
The fact that the words pale pilsen are part of ABI's trademark does not
constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for
"pale pilsen" are generic words descriptive of the color ("pale"), of a type of
beer ("pilsen"), which is a light bohemian beer with a strong hops flavor that
originated in the City of Pilsen in Czechoslovakia and became famous in the
Middle Ages. "Pilsen" is a "primarily geographically descriptive word," hence,
non-registerable and not appropriable by any beer manufacturer.

17. Societe Des Produits vs. Martin T. Dy

Gr no. 172276 August 8, 2010

Facts:
Petitioner is a foreign corporation organized under Switzerland laws.
Petitioner owns "NAN" trademark for its infant powered milk products.
Petitioner distributed and sells Nan milk products in the Philippines.
Respondent owns 5M Enterprises that imports Sunny Boy milk from Australia
and repacks them into 3 sizes of plastic bags carrying the name "Nanny". A
letter of request was sent to Dy ordering him to restrain from using Nanny as
this infringes Nan trademark. When Dy did not act on the request, a
complaint for trademark infringement was filed before RTC Dumaguete. It
was dismissed later on. On appeal, the court remanded the case to the lower
court for further proceedings. Subsequently, the case was transferred to RTC
Cebu, a special court designated for intellectual property rights' cases.
Issue:
WON there was trademark infringement
Held: Yes.
The court applied the dominancy test when it found out that Nanny is
confusingly similar to Nan. Nan is the prevalent feature of Nestle's line of
infant powdered milk products. The first 3 letters of Nanny is the same as the
letters of Nan. When both are pronounced, the aural effect is confusingly
similar. Furthermore, Nan and Nanny have the same classification,
descriptive properties and physical attributes. Both are classified under Class
6, both are milk products, and both are powdered in form. They are also
displayed in the milk section.
Finally, the trademark owner is not only protected by law in guarding his
goods or business from actual market competition with identical or similar
products of the parties but also extends to all cases as it would likely confuse
the public into thinking that the complaining party has extended his business
into the field or is in any way connected with the activities of the infringer.

18. Fredco Manufacturing Corporation v. President and Fellows of

Harvard College
G.R. No 185917, June 11, 2011
Fredco Manufacturing Corporation filed before the Bureau of Legal Affairs
of the Philippine Intellectual Property Office a Petition for Cancellation of
Registration No. 56561 issued to President and Fellows of Harvard College
for the mark Harvard Veritas Shield Symbol.
Fredco claimed that Harvard University had no right to register the mark,
since its Philippine registration was based on a foreign registration.
Hence,Harvard University could not have been considered as a prior user
of
the
mark
in
the
Philippines.
Fredco explained that the mark was first used in the Philippines by its
predecessor-in-interest New York Garments as early as 1982, and a
certificate of registration was then issued in 1988 for goods under class
25. Although the registration was cancelled for the non-filing of an
affidavit of use, the fact remained that the registration preceded Harvard
Universitys use of the subject mark in the Philippines.
Harvard University, on the other hand claimed that the name and mark
Harvard was adopted in 1639 as the name of Harvard College of
Cambridge,
Massachusetts,
USA.
The Bureau of Legal Affairs ruled in favor of Fredco and ordered the
cancellation of Registration No. 56561. It found Fredco to be the prior user
and adopter of the mark Harvard in the Philippines. On appeal, the
Office of the Director General of the Intellectual Property Office reversed
the BLA ruling on the ground that more than the use of the trademark in
the Philippines, the applicant must be the owner of the mark sought to be
registered. Fredco, not being the owner of the mark, had no right to
register it.
The Court Appeals affirmed the decision of the Office of the Director
General. Fredco appealed the decision with the Supreme Court. In its
appeal, Fredco insisted that the date of actual use in the Philippines
should prevail on the issue of who had a better right to the mark.
The SC held that:
Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166),
before a trademark can be registered, it must have been actually used in
commerce for not less than two months in the Philippines prior to the

filing of an application for its registration. While Harvard University had

actual prior use of its marks abroad for a long time, it did not have actual
prior use in the Philippines of the mark "Harvard Veritas Shield Symbol"
before its application for registration of the mark "Harvard" with the then
Philippine Patents Office. However, Harvard University's registration of the
name "Harvard" is based on home registration which is allowed under
Section 37 of R.A. No. 166. As pointed out by Harvard University in its
Comment:
Section 2 of the Trademark law (R.A. 166) requires for the registration of
trademark that the applicant thereof must prove that the same has been
actually in use in commerce or services for not less than two (2) months
in the Philippines before the application for registration is filed, where the
trademark sought to be registered has already been registered in a
foreign country that is a member of the Paris Convention, the requirement
of proof of use in the commerce in the Philippines for the said period is
not necessary. An applicant for registration based on home certificate of
registration need not even have used the mark or trade name in this
country.
In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No.
8293), "[m]arks registered under Republic Act No. 166 shall remain in
force but shall be deemed to have been granted under this Act x x x,"
which does not require actual prior use of the mark in the Philippines.
Since the mark "Harvard Veritas Shield Symbol" is now deemed granted
under R.A. No. 8293, any alleged defect arising from the absence of actual
prior use in the Philippines has been cured by Section 239.2.
The Supreme Court further ruled that Harvard University is entitled to
protection in the Philippines of its trade name Harvard even without
registration of such trade name in the Philippines. It explained:
There is no question then, and this Court so declares, that "Harvard" is a
well-known name and mark not only in the United States but also
internationally, including the Philippines.

19. E.Y. Industrial Sales Inc. and Engracio Yap vs. Shen Dar
Electricity and Machinery Co.
G.R. No. 184850, October 20, 2010
FACTS:
EYIS is a domestic corporation engaged in the production, distribution and
sale of air compressors and other industrial tools and equipment. Petitioner
Engracio Yap is the Chairman of the Board of Directors of EYIS. Respondent
Shen Dar, on the other hand, is a Taiwan-based foreign corporation engaged
in the manufacture of air compressors. Both companies claimed to have the
right to register the trademark VESPA for air compressors. From 1997 to
2004, EYIS imported air compressors from Shen Dar through sales contracts.
In the Sales Contract dated April 20, 2002, for example, Shen Dar would
supply EYIS in one (1) year with 24 to 30 units of 40-ft. containers worth of
air compressors identified in the Packing/Weight Lists simply as SD-23, SD29, SD-31, SD-32, SD-39, SD-67 and SD-68. In the corresponding Bill of
Ladings, the items were described merely as air compressors. There is no
documentary evidence to show that such air compressors were marked
VESPA.
On June 9, 1997, Shen Dar filed a Trademark Application with the IPO for the
mark VESPA, Chinese Characters and Device for use on air compressors
and welding machines. On July 28, 1999, EYIS filed a Trademark Application
also for the mark VESPA, for use on air compressors. On January 18, 2004,
the IPO issued COR No. 4-1999-005393 in favor of EYIS. Thereafter, on
February 8, 2007, Shen Dar was also issued COR No. 4-1997-121492. In the
meantime, on June 21, 2004, Shen Dar filed a Petition for Cancellation of
EYIS COR with the BLA. In the Petition, Shen Dar primarily argued that the
issuance of the COR in favor of EYIS violated Section 123.1 paragraphs (d),
(e) and (f) of Republic Act No. (RA) 8293, otherwise known as the Intellectual
Property Code (IP Code), having first filed an application for the mark. Shen
Dar further alleged that EYIS was a mere distributor of air compressors
bearing the mark VESPA which it imported from Shen Dar. Shen Dar also
argued that it had prior and exclusive right to the use and registration of the
mark VESPA in the Philippines under the provisions of the Paris Convention.
The BLA and the IPO Director General denied Shen Dars petition. However,
the Court of Appeals reversed the decision and ruled in favor of herein
respondent. Hence, this appeal on Certiorari.

ISSUE:
Whether or not E.Y. Indiustrial Sales is the true owner of the mark Vespa
HELD:
YES. Under Section 123(d) of RA 8293, the registration of a mark is
prevented with the filing of an earlier application for registration. This must
not, however, be interpreted to mean that ownership should be based upon
an earlier filing date. While RA 8293 removed the previous requirement of
proof of actual use prior to the filing of an application for registration of a
mark, proof of prior and continuous use is necessary to establish ownership
of a mark. Such ownership constitutes sufficient evidence to oppose the
registration of a mark.
Sec. 134 of the IP Code provides that any person who believes that he
would be damaged by the registration of a mark x x x may file an opposition
to the application. The term any person encompasses the true owner of the
mark -- the prior and continuous user.
Notably, the Court has ruled that the prior and continuous use of a mark may
even overcome the presumptive ownership of the registrant and be held as
the owner of the mark. Here, the incontrovertible truth, as established by the
evidence submitted by the parties, is that Petitioner E.Y. Industrial Sales is
the prior user of the mark. On the other hand, Shen Dar failed to refute the
evidence cited by the BLA in its decision. More importantly, Shen Dar failed
to present sufficient evidence to prove its own prior use of the mark VESPA.
As such, E.Y. Industrial Sales must be considered as the prior and continuous
user of the mark VESPA and its true owner. Hence, E.Y. Industrial Sales is
entitled to the registration of the mark in its name.