1. MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. vs. E.J.

GALLO WINERY and THE ANDRESONS GROUP, INC.

FACTS:
On March 12, 1993, respondents sued petitioners in the RTC-Makati for trademark
and trade name infringement and unfair competition, with a prayer for damages and
preliminary injunction.
They claimed that petitioners adopted the Gallo trademark to ride on Gallo
Winerys and Gallo and Ernest & Julio Gallo trademarks established reputation and
popularity, thus causing confusion, deception and mistake on the part of the purchasing
public who had always associated Gallo and Ernest and Julio & Gallo trademarks with
Gallo Winerys wines.
In their answer, petitioners alleged, among other affirmative defenses that:
petitioners Gallo cigarettes and Gallo Winerys wine were totally unrelated products. To
wit:
1. Gallo Winerys GALLO trademark registration certificates covered wines only, and
not cigarettes;
2. GALLO cigarettes and GALLO wines were sold through different channels of trade;
3. the target market of Gallo Winerys wines was the middle or high-income bracket
while Gallo cigarette buyers were farmers, fishermen, laborers and other low-income
workers;
4. the dominant feature of the Gallo cigarette was the rooster device with the
manufacturers name clearly indicated as MIGHTY CORPORATION, while in the case of
Gallo Winerys wines, it was the full names of the founders-owners ERNEST & JULIO
GALLO or just their surname GALLO;
On April 21, 1993, the Makati RTC denied, for lack of merit, respondents prayer for the
issuance of a writ of preliminary injunction.
On August 19, 1993, respondents motion for reconsideration was denied.
On February 20, 1995, the CA likewise dismissed respondents petition for review on
certiorari.
After the trial on the merits, however, the Makati RTC, on November 26, 1998, held
petitioners liable for, permanently enjoined from committing trademark infringement and
unfair competition with respect to the GALLO trademark.
On appeal, the CA affirmed the Makati RTCs decision and subsequently denied
petitioners motion for reconsideration.
ISSUE:
Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for
the reason alone that they were purportedly forms of vice.
HELD:

Wines and cigarettes are not identical, similar, competing or related goods.
In resolving whether goods are related, several factors come into play:

the business (and its location) to which the goods belong

the class of product to which the good belong

the products quality, quantity, or size, including the nature of the package, wrapper
or container

the nature and cost of the articles

the descriptive properties, physical attributes or essential characteristics with
reference to their form, composition, texture or quality

the purpose of the goods

whether the article is bought for immediate consumption, that is, day-to-day
household items

the field of manufacture

the conditions under which the article is usually purchased and

the articles of the trade through which the goods flow, how they are distributed,
marketed, displayed and sold.
The test of fraudulent simulation is to the likelihood of the deception of some persons in
some measure acquainted with an established design and desirous of purchasing the
commodity with which that design has been associated. The simulation, in order to be
objectionable, must be as appears likely to mislead the ordinary intelligent buyer who
has a need to supply and is familiar with the article that he seeks to purchase.
The petitioners are not liable for trademark infringement, unfair competition or damages.
WHEREFORE, petition is granted.

2. Pearl & Dean (Phil), Inc. vs Shoemart, Inc.

409 SCRA 231 Mercantile Law Intellectual Property Law on Copyright
Copyrightable Subject
Pearl & Dean (Phil), Inc. is a corporation engaged in the manufacture of advertising
display units called light boxes. In January 1981, Pearl & Dean was able to acquire
copyrights over the designs of the display units. In 1988, their trademark application for
Poster Ads was approved; they used the same trademark to advertise their light boxes.
In 1985, Pearl & Dean negotiated with Shoemart, Inc. (SM) so that the former may be
contracted to install light boxes in the ad spaces of SM. Eventually, SM rejected Pearl
& Deans proposal.
Two years later, Pearl & Dean received report that light boxes, exactly the same as
theirs, were being used by SM in their ad spaces. They demanded SM to stop using the
light boxes and at the same time asked for damages amounting to P20 M. SM refused to
pay damages though they removed the light boxes. Pearl & Dean eventually sued SM.
SM argued that it did not infringe on Pearl & Deans trademark because Pearl & Deans
trademark is only applicable to envelopes and stationeries and not to the type of ad

spaces owned by SM. SM also averred that Poster Ads is a generic term hence it is not
subject to trademark registration. SM also averred that the actual light boxes are not
copyrightable. The RTC ruled in favor of Pearl & Dean. But the Court of Appeals ruled in
favor of SM.
ISSUE: Whether or not the Court of Appeals is correct.
HELD: Yes. The light boxes cannot, by any stretch of the imagination, be considered as
either prints, pictorial illustrations, advertising copies, labels, tags or box wraps, to be
properly classified as a copyrightable; what was copyrighted were the technical drawings
only, and not the light boxes themselves. In other cases, it was held that there is no
copyright infringement when one who, without being authorized, uses a copyrighted
architectural plan to construct a structure. This is because the copyright does not
extend to the structures themselves.
On the trademark infringement allegation, the words Poster Ads are a simple
contraction of the generic term poster advertising. In the absence of any convincing
proof that Poster Ads has acquired a secondary meaning in this jurisdiction, Pearl
& Deans exclusive right to the use of Poster Ads is limited to what is written in its
certificate of registration, namely, stationeries.
3. Elidad Kho vs Court of Appeals
379 SCRA 410 Mercantile Law Intellectual Property Law on Copyright Proper
Subjects of Copyright
Elidad Kho is the owner of KEC Cosmetics Laboratory and she was also the holder of
copyrights over Chin Chun Su and its Oval Facial Cream Container/Case. She also bought
the patent rights over the Chin Chun Su & Device and Chin Chun Su for medicated cream
from one Quintin Cheng, who was the assignee of Shun Yi Factory a Taiwanese factory
actually manufacturing Chin Chun Su products.
Kho filed a petition for injunction against Summerville General Merchandising and
Company to enjoin the latter from advertising and selling Chin Chun Su products, in
similar containers as that of Kho, for this is misleading the public and causing Kho to lose
income; the petition is also to enjoin Summerville from infringing upon Khos copyrights.
Summerville in their defense alleged that they are the exclusive and authorized
importer, re-packer and distributor of Chin Chun Su products; that Shun Yi even
authorized Summerville to register its trade name Chin Chun Su Medicated Cream with
the Philippine Patent Office; that Quintin Cheng, from whom Kho acquired her patent
rights, had been terminated (her services) by Shun Yi.
ISSUE: Whether or not Kho has the exclusive right to use the trade name and its
container.
HELD: No. Kho has no right to support her claim for the exclusive use of the subject
trade name and its container. The name and container of a beauty cream product are

proper subjects of a trademark (not copyright like what she registered for) inasmuch as
the same falls squarely within its definition. In order to be entitled to exclusively use the
same in the sale of the beauty cream product, the user must sufficiently prove that she
registered or used it before anybody else did. Khos copyright and patentregistration of
the name and container would not guarantee her the right to the exclusive use of the
same for the reason that they are not appropriate subjects of the said intellectual rights.
Consequently, a preliminary injunction order cannot be issued for the reason that the
petitioner has not proven that she has a clear right over the said name and container to
the exclusion of others, not having proven that she has registered a trademark thereto or
used the same before anyone did.
4. IN-N-OUT BURGER, INC. VS. SEHWANI INC., ET. AL
In-N-Out Burger, Inc. vs. Sehwani Inc., et. al
Facts:
Petitioner IN-N-OUT BURGER, INC., is a business entity incorporated under the laws of
California. It is a signatory to the Convention of Paris on Protection of Industrial Property
and the TRIPS Agreement. It is engaged mainly in the restaurant business, but it has
never engaged in business in the Philippines.
Respondents Sehwani, Incorporated and Benita Frites, Inc. are corporations organized in
the Philippines. Sometime in 1991, Sehwani filed with the BPTTT an application for the
registration of the mark IN N OUT (the inside of the letter O formed like a star). Its
application was approved and a certificate of registration was issued in its name on
1993. In 2000, Sehwani, Incorporated and Benita Frites, Inc. entered into a Licensing
Agreement, wherein the former entitled the latter to use its registered mark, IN N OUT.
Sometime in 1997, In-N-Out Burger filed trademark and service mark applications with
the Bureau of Trademarks for the IN-N-OUT and IN-N-OUT Burger & Arrow Design. In
2000, In-N-Out Burger found out that Sehwani, Incorporated had already obtained
Trademark Registration for the mark IN N OUT (the inside of the letter O formed like a
star). Also in 2000, In-N-Out Burger sent a demand letter directing Sehwani, Inc. to
cease and desist from claiming ownership of the mark IN-N-OUT and to voluntarily
cancel its trademark registration. Sehwani Inc. did not accede to In-N-Out Burgers
demand but it expressed its willingness to surrender its registration for a consideration.
In 2001 In-N-Out Burger filed before the Bureau of Legal Affairs an administrative
complaint against the Sehwani, Inc. and Benita Frites, Inc. for unfair competition and
cancellation of trademark registration.
Issues:
Whether or not the Intellectual Property Office (an administrative body) have jurisdiction
of cases involving provisions of the IPC (e.g. unfair competition).[1]
Whether or not there was unfair competition.
Held:
FIRST ISSUE: Yes, the IPO (an administrative body) has jurisdiction in cases involving
provisions of the IPC (e.g. unfair competition) due to the following reasons:

Section 10 of the Intellectual Property Code specifically identifies the functions of the
Bureau of Legal Affairs, thus:
Section 10. The Bureau of Legal Affairs.The Bureau of Legal Affairs shall have the
following functions:
10.1 Hear and decide opposition to the application for registration of marks; cancellation
of trademarks; subject to the provisions of Section 64, cancellation of patents and utility
models, and industrial designs; and petitions for compulsory licensing of patents;
10.2 (a) Exercise original jurisdiction in administrative complaints for violations of laws
involving intellectual property rights; Provided, That its jurisdiction is limited to
complaints where the total damages claimed are not less than Two hundred thousand
pesos (P200,000): Provided, futher, That availment of the provisional remedies may be
granted in accordance with the Rules of Court. Xxx
Xxx
(vi) The cancellation of any permit, license, authority, or registration which may have
been granted by the Office, or the suspension of the validity thereof for such period of
time as the Director of Legal Affairs may deem reasonable which shall not exceed one (1)
year;
Xxx
(viii) The assessment of damages;
Unquestionably, petitioners complaint, which seeks the cancellation of the disputed
mark in the name of respondent Sehwani, Incorporated, and damages for violation of
petitioners intellectual property rights, falls within the jurisdiction of the IPO Director of
Legal Affairs.
While Section 163 thereof vests in civil courts jurisdiction over cases of unfair
competition, nothing in the said section states that the regular courts have sole
jurisdiction over unfair competition cases, to the exclusion of administrative bodies.
Sections 160 and 170, which are also found under Part III of the Intellectual Property
Code, recognize the concurrent jurisdiction of civil courts and the IPO over unfair
competition cases.
These two provisions read:
Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark
Enforcement Action. Any foreign national or juridical person who meets the requirements
of Section 3 of this Act and does not engage in business in the Philippines may bring a
civil or administrative action hereunder for opposition, cancellation, infringement, unfair
competition, or false designation of origin and false description, whether or not it is
licensed to do business in the Philippines under existing laws.
Section 170. Penalties. Independent of the civil and administrative sanctions imposed by
law, a criminal penalty of imprisonment from two (2) years to five (5) years and a fine
ranging from Fifty thousand pesos (P50,000) to Two hundred thousand pesos (P200,000),
shall be imposed on any person who is found guilty of committing any of the acts
mentioned in Section 155, Section168, and Subsection169.1.

Based on the foregoing discussion, the IPO Director of Legal Affairs had jurisdiction to
decide the petitioners administrative case against respondents and the IPO Director
General had exclusive jurisdiction over the appeal of the judgment of the IPO Director of
Legal Affairs
SECOND ISSUE: Yes. The evidence on record shows that Sehwani Inc. and Benita Frites
were not using their registered trademark but that of In-n-Out Burger. Sehwani and
Benita Frites are also giving their products the general appearance that would likely
influence the purchasers to believe that their products are that of In-N-Out Burger. The
intention to deceive may be inferred from the similarity of the goods as packed and
offered for sale, and, thus, an action will lie to restrain unfair competition. The
respondents frauduulent intention to deceive purchasers is also apparent in their use of
the In-N-Out Burger in business signages.
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 confusing similarity may or may not result from similarity in the marks,
but may result from other external factors in the packaging or presentation of the goods.
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.
5. Phil. Pharmawealth, Inc. v. Pfizer, Inc. & Pfizer (Phil.), Inc. G.R. No. 167715, 17
November 2010
Facts: Pfizer is the registered owner of a patent pertaining to Sulbactam Ampicillin. It is
marketed under the brand name Unasyn. Sometime in January and February 2003,
Pfizer discovered that Pharmawealth submitted bids for the supply of Sulbactam
Ampicillin to several hospitals without the Pfizers consent. Pfizer then demanded that
the hospitals cease and desist from accepting such bids. Pfizer also demanded that
Pharmawealth immediately withdraw its bids to supply Sulbactam Ampicillin.
Pharmawealth and the hospitals ignored the demands. Pfizer then filed a complaint for
patent infringement with a prayer for permanent injunction and forfeiture of the
infringing products. A preliminary injunction effective for 90 days was granted by the
IPOs Bureau of Legal Affairs (IPO-BLA). Upon expiration, a motion for extension filed by
Pfizer was denied. Pfizer filed a Special Civil Action for Certiorari in the Court of Appeals
(CA) assailing the denial. While the case was pending in the CA, Pfizer filed with the
Regional Trial Court of Makati (RTC) a complaint for infringement and unfair competition,
with a prayer for injunction. The RTC issued a temporary restraining order, and then a
preliminary injunction. Pharmawealth filed a motion to dismiss the case in the CA, on the
ground of forum shopping. Nevertheless, the CA issued a temporary restraining order.
Pharmawealth again filed a motion to dismiss, alleging that the patent, the main basis of
the case, had already lapsed, thus making the case moot, and that the CA had no
jurisdiction to review the order of the IPO-BLA because this was granted to the Director
General. The CA denied all the motions. Pharmawealth filed a petition for review on
Certiorari with the Supreme Court.
Issues:

a) Can an injunctive relief be issued based on an action of patent infringement when the
patent allegedly infringed has already lapsed? b) What tribunal has jurisdiction to review
the decisions of the Director of Legal Affairs of the Intellectual Property Office?
Held:
a) No. The provision of R.A. 165, from which the Pfizers patent was based, clearly states
that "[the] patentee shall have the exclusive right to make, use and sell the patented
machine, article or product, and to use the patented process for the purpose of industry
or commerce, throughout the territory of the Philippines for the term of the patent; and
such making, using, or selling by any person without the authorization of the patentee
constitutes infringement of the patent." Clearly, the patentees exclusive rights exist only
during the term of the patent. Since the patent was registered on 16 July 1987, it
expired, in accordance with the provisions of R.A. 165, after 17 years, or 16 July 2004.
Thus, after 16 July 2004, Pfizer no longer possessed the exclusive right to make, use, and
sell the products covered by their patent. The CA was wrong in issuing a temporary
restraining order after the cut-off date. b) According to IP Code, the Director General of
the IPO exercises exclusive jurisdiction over decisions of the IPO-BLA. The question in the
CA concerns an interlocutory order, and not a decision. Since the IP Code and the Rules
and Regulations are bereft of any remedy regarding interlocutory orders of the IPO-BLA,
the only remedy available to Pfizer is to apply the Rules and Regulations suppletorily.
Under the Rules, a petition for certiorari to the CA is the proper remedy. This is consistent
with the Rules of Court. Thus, the CA had jurisdiction.
6. Smith Kline Beckman Corporation vs Court of Appeals
409 SCRA 33 Intellectual Property Law Law on Patents Doctrine of Equivalents
Smith Kline is a US corporation licensed to do business in the Philippines. In 1981, a
patent was issued to it for its invention entitled Methods and Compositions for
Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbamate. The invention is a means to fight off gastrointestinal parasites from various
cattles and pet animals.
Tryco Pharma is a local corporation engaged in the same business as Smith Kline.
Smith Kline sued Tryco Pharma because the latter was selling a veterinary product called
Impregon which contains a drug called Albendazole which fights off gastro-intestinal
roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats.
Smith Kline is claiming that Albendazole is covered in their patent because it is
substantially the same as methyl 5 propylthio-2-benzimidazole carbamate covered by its
patent since both of them are meant to combat worm or parasite infestation in animals.
And that Albendazole is actually patented under Smith Kline in the US.
Tryco Pharma averred that nowhere in Smith Klines patent does it mention that
Albendazole is present but even if it were, the same is unpatentable.

Smith Kline thus invoked the doctrine of equivalents, which implies that the two
substances substantially do the same function in substantially the same way to achieve
the same results, thereby making them truly identical for in spite of the fact that the
word Albendazole does not appear in Tryco Paharmas letters of patent, it has ably shown
by evidence its sameness with methyl 5 propylthio-2-benzimidazole carbamate.
ISSUE: Whether or not there is patent infringement in this case
HELD: No. Smith Kline failed to prove that Albendazole is a compound inherent in the
patented invention. Nowhere in the patent is the word Albendazole found. When the
language of its claims is clear and distinct, the patentee is bound thereby and may not
claim anything beyond them. Further, there was a separate patent for Albendazole given
by the US which implies that Albendazole is indeed separate and distinct from the
patented compound here.
A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the
patented compound and Albendazole. While both compounds have the effect of
neutralizing parasites in animals, identity of result does not amount to infringement of
patent unless Albendazole operates in substantially the same way or by substantially the
same means as the patented compound, even though it performs the same function and
achieves the same result. In other words, the principle or mode of operation must be the
same or substantially the same.
The doctrine of equivalents thus requires satisfaction of the function-means-and-result
test, the patentee having the burden to show that all three components of such
equivalency test are met.7.
7. MIRPURI vs. CA G.R. No. 114508, November 19, 1999
Facts: In 1970, Escobar filed an application with the Bureau of Patents for
the registration of the trademark Barbizon for use in horsiers and ladies undergarments
(IPC No. 686). Private respondent reported Barbizon Corporation, a corporation organized
and doing business under the laws of New York, USA, opposed the application. It was
alleged that itstrademark is confusingly similar with that of Escobar and that
theregistration of the said trademark will cause damage to its businessreputation and
goodwill. In 1974, the Director of Patents gave due course to the application. Escobar
later assigned all his rights and interest over the trademark to petitioner. In 1979,
Escobar failed to file with the Bureau the affidavit of use of the trademark required under
the Philippine TrademarkLaw. Due to this failure, the Bureau cancelled Escobars
certificate ofregistration. In 1981, Escobar and petitioner separately filed
this applicationfor registration of the same trademark. (IPC 2049). Private respondent
opposed again. This time it alleged (1) that the said trademark was registered with the
US Patent Office; (2) that it is entitled to protection as well-known mark under Article 6
bis of the Paris Convention, EO 913 and the two Memoranda of the Minister of Trade and
Industry and (3) that its use on the same class of goods amounts to a violation of the
Trademark Law and Art. 189 of the RPC. Petitioner raised the defense of Res Judicata.
Issue: One of the requisites of res judicata is identical causes of action. Do IPC No. 686

and

IPC

No.

2049

involve

the

same

cause

of

action?

Held: No. The issue of ownership of the trademark was not raised in IPC 686. IPC 2049
raised the issue of ownership, the first registration and use of the trademark in the US
and other countries, and the international recognition of the trademark established by
extensive use and advertisement of respondents products for over 40 years here and
abroad. These are different from the issues of confessing similarity and damage in IPC
686. The issue of prior use may have been raised in IPC 686 but this claim was limited to
prior use in the Philippines only. Prior use in IPC 2049 stems from the respondents claims
originator of the word and symbol Barbizon, as the first and registered user of the
mark attached to itsproducts which have been sold and advertised would arise for
aconsiderable number of years prior to petitioners first application. Indeed, these are
substantial allegations that raised new issues and necessarily gave respondents a new
cause
of
action.
Moreover, the cancellation of petitioners certificate registration for failure to file the
affidavit of use arose after IPC 686. This gave respondent another cause to oppose the
second application.
It is also to be noted that the oppositions in the first and second cases are based on
different laws. Causes of action which are distinct and independent from each other,
although out of the same contract, transaction, or state of facts, may be sued on
separately, recovery on one being no bar to subsequent actions on others. The mere fact
that the same relief is sought in the subsequent action will not render the judgment in
the prior action operating as res judicata, such as where the actions are based on
different statutes.
8. BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYADANG, G.R. No.
183404, October 13, 2010

Facts:
Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use
in connection with Fungicide (Class 5) with active ingredient 80% Mancozeb. Berris
Agricultural Co., Inc. (Berris), filed with the IPO Bureau of Legal Affairs (IPO-BLA) a
Verified Notice of Opposition against the mark under application allegedly because "NS
D-10 PLUS" is similar and/or confusingly similar to its registered trademark "D-10 80 WP,"
also used for Fungicide (Class 5) with active ingredient 80% Mancozeb.

Director Estrellita Beltran-Abelardo of the IPO-BLA decided in favor of Berris. However,

Abyadang appealed to the CA which reversed the decision.

Issues:

1. W/N there exists no confusing similarity between the marks

2. W/N the cancellation of Petitioners duly registered and validly existing trademark
in the absence of a properly filed Petition for Cancellation before the Intellectual
Property Office is not in accord with the Intellectual Property Code and applicable
Decisions of the Supreme Court.

Held:

First Issue

The determination of priority of use of a mark is a question of fact. Adoption of the mark
alone does not suffice. One may make advertisements, issue circulars, distribute price
lists on certain goods, but these alone will not inure to the claim of ownership of the
mark until the goods bearing the mark are sold to the public in the market. Accordingly,
receipts, sales invoices, and testimonies of witnesses as customers, or orders of buyers,
best prove the actual use of a mark in trade and commerce during a certain period of
time.

In the instant case, both parties have submitted proof to support their claim of ownership
of their respective trademarks. Berris presented the following evidence: (1) its trademark
application dated November 29, 2002 with Application No. 4-2002-0010272; (2) its IPO
certificate of registration dated October 25, 2004 and July 8, 2004 as the date of
registration; (3) a photocopy of its packaging bearing the mark "D-10 80 WP"; (4)
photocopies of its sales invoices and official receipts; and (5) its notarized DAU dated
April 23, 2003, stating that the mark was first used on June 20, 2002, and indicating that,
as proof of actual use, copies of official receipts or sales invoices of goods using the mark
were attached as Annex "B."

Abyadangs proofs consisted of the following: (1) a photocopy of the packaging for his
marketed fungicide bearing mark "NS D-10 PLUS"; (2) Abyadangs Affidavit dated
February 14, 2006, stating among others that the mark "NS D-10 PLUS" was his own
creation derived from: N for Norvy, his name; S for Soledad, his wifes name; D the
first letter for December, his birth month; 10 for October, the 10th month of the year,
the month of his business name registration; and PLUS to connote superior quality; that
when he applied for registration, there was nobody applying for a mark similar to "NS D10 PLUS" (3) Certification dated December 19, 2005 issued by the FPA, stating that "NS

D-10 PLUS" is owned and distributed by NS Northern Organic Fertilizer, registered with
the FPA since May 26, 2003, and had been in the market since July 30, 2003;

Berris is the prior user of the mark. Berris was able to establish that it was using its mark
"D-10 80 WP" since June 20, 2002, even before it filed for its registration with the IPO on
November 29, 2002, as shown by its DAU which was under oath and notarized, bearing
the stamp of the Bureau of Trademarks of the IPO on April 25, 2003, and the DAU, being
a notarized document, especially when received in due course by the IPO, is evidence of
the facts it stated and has the presumption of regularity, entitled to full faith and credit
upon its face. The DAU is supported by the Certification dated April 21, 2006 issued by
the Bureau of Trademarks that Berris mark is still valid and existing.

According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered if it is

identical with a registered mark belonging to a different proprietor with an earlier filing or
priority date, with respect to: (1) the same goods or services; (2) closely related goods or
services; or (3) near resemblance of such mark as to likely deceive or cause confusion.

Comparing Berris mark "D-10 80 WP" with Abyadangs mark "NS D-10 PLUS," as
appearing on their respective packages, one cannot but notice that both have a common
component which is "D-10." On Berris package, the "D-10" is written with a bigger font
than the "80 WP." Admittedly, the "D-10" is the dominant feature of the mark. The "D10," being at the beginning of the mark, is what is most remembered of it. Although, it
appears in Berris certificate of registration in the same font size as the "80 WP," its
dominancy in the "D-10 80 WP" mark stands since the difference in the form does not
alter its distinctive character.

Applying the Dominancy Test, it cannot be gainsaid that Abyadangs "NS D-10 PLUS" is
similar to Berris "D-10 80 WP," that confusion or mistake is more likely to occur.
Undeniably, both marks pertain to the same type of goods fungicide with 80%
Mancozeb as an active ingredient and used for the same group of fruits, crops,
vegetables, and ornamental plants, using the same dosage and manner of application.
They also belong to the same classification of goods under R.A. No. 8293. Both
depictions of "D-10," as found in both marks, are similar in size, such that this portion is
what catches the eye of the purchaser. Undeniably, the likelihood of confusion is present.

This likelihood of confusion and mistake is made more manifest when the Holistic Test is
applied, taking into consideration the packaging, for both use the same type of material
(foil type) and have identical color schemes (red, green, and white); and the marks are

both predominantly red in color, with the same phrase "BROAD SPECTRUM FUNGICIDE"
written underneath.

Considering these striking similarities, predominantly the "D-10," the buyers of both
products, mainly farmers, may be misled into thinking that "NS D-10 PLUS" could be an
upgraded formulation of the "D-10 80 WP."

As to the Second Issue

IPO, by reason of their special knowledge and expertise over matters falling under
their jurisdiction, are in a better position to pass judgment on matters regarding
intellectual property. Thus, their findings of fact in that regard are generally accorded
great respect, if not finality by the courts, as long as they are supported by substantial
evidence, even if such evidence might not be overwhelming or even preponderant. It is
not the task of the appellate court to weigh once more the evidence submitted before
the administrative body and to substitute its own judgment for that of the administrative
agency in respect to sufficiency of evidence.
Inasmuch as the ownership of the mark D-10 80 WP fittingly belongs to Berris,
and because the same should not have been cancelled by the CA, we consider it proper
not to belabor anymore the issue of whether cancellation of a registered mark may be
done absent a petition for cancellation.

9. COFFEE PARTNERS, INC. v. SAN FRANCISCO COFFEE AND ROASTERY, INC.,

G.R. NO. 169504, March 3, 2010

[edited property block a digest]

THE CASE
Note: Since the topic is jurisdiction, heres the nature of the case / procedural history:
o This is a petition for review of the 15 June 2005 Decision and the 1 September
2005 Resolution of the Court of Appeals in CA-G.R. SP No. 80396. In its 15 June
2005 Decision, the Court of Appeals set aside the 22 October 2003 Decision of the
Office of the Director General-Intellectual Property Office and reinstated the 14
August 2002 Decision of the Bureau of Legal Affairs-Intellectual Property Office. In
its 1 September 2005 Resolution, the Court of Appeals denied petitioner's motion
for reconsideration and respondent's motion for partial reconsideration.

FACTS

o 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 agreement 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 SAN FRANCISCO COFFEE.
o Respondent is a local corporation engaged in the wholesale and retail sale of
coffee.
It registered the business name SAN FRANCISCO COFFEE & ROASTERY,
INC. with the Department of Trade and Industry (DTI) in June 1995.
Respondent had since built a customer base that included Figaro Company,
Tagaytay Highlands, Fat Willys, and other coffee companies.
In 1998, respondent formed a joint venture company with Boyd Coffee USA
under the company name Boyd Coffee Company Philippines, Inc. (BCCPI).
In June 2001, respondent discovered that petitioner was about to open a
coffee shop under the name SAN FRANCISCO COFFEE in Libis, Quezon City.
Respondent sent a letter to petitioner demanding that the latter stop using
the name SAN FRANCISCO COFFEE.
o Respondent also filed a complaint with the Bureau of Legal Affairs-Intellectual
Property Office (BLA-IPO) for infringement and/or unfair competition with claims for
damages
o Ruling of the Bureau of Legal Affairs-Intellectual Property Office
Petitioners trademark infringed on respondents trade name.
the right to the exclusive use of a trade name with freedom from
infringement by similarity is determined from priority of adoption
Since respondent registered its business name with the DTI in 1995 and
petitioner registered its trademark with the IPO in 2001 in the Philippines and
in 1997 in other countries, then respondent must be protected from
infringement of its trade name.
o BLA-IPO also held that respondent did not abandon the use of its trade name as
substantial evidence indicated respondent continuously used its trade name in
connection with the purpose for which it was organized.
o Petitioners use of the trademark SAN FRANCISCO COFFEE will likely cause
confusion because of the exact similarity in sound, spelling, pronunciation, and
commercial impression of the words which is the dominant portion of respondents
trade name and petitioners trademark.
No significant difference resulted even with a diamond-shaped figure with a
cup in the center in petitioner's trademark because greater weight is given
to words.
o On the issue of unfair competition, the BLA-IPO absolved petitioner from liability;
there was no evidence of intent to defraud on the part of petitioner.
o The Office of the Director General Intellectual Property Office (ODG-IPO)
reversed the BLA-IPO.

It ruled that petitioner's use of the trademark "SAN FRANCISCO COFFEE" did
not infringe on respondent's trade name.
Also, it found that respondent had stopped using its trade name after it
entered into a joint venture with Boyd Coffee USA in 1998 while petitioner

continuously used the trademark since June 2001 when it opened its first
coffee shop in Libis, Quezon City.
It ruled that between a subsequent user of a trade name in good faith and a
prior user who had stopped using such trade name, it would be inequitable
to rule in favor of the latter.
o The Court of Appeals reversed the ODG-IPO decision and reinstated the decision of
the BLA-IPO finding infringement.
It denied petitioner's motion for reconsideration and respondent's motion for
partial reconsideration.
ISSUE
o 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) -- YES.
RULING
o In Prosource International, Inc. v. Horphag Research Management SA, this Court
laid down what constitutes infringement of an unregistered trade name, thus:
The trademark being infringed is registered in the Intellectual Property
Office; however, in infringement of trade name, the same need not be
registered;

The trademark or trade name is reproduced, counterfeited, copied, or

colorably imitated by the infringer;
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;
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

It is without the consent of the trademark or trade name owner or the

assignee thereof.
o 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.
11. Fredco v. Harvard University, G.R. No. 185917, June 1, 2011
Facts:
In 2005, Fredco Manufacturing Corporation filed a petition for cancellation before the
Bureau of Legal Affairs of the Philippine Intellectual Property Office against the
President and Fellows of Harvard College for the registration of its mark Harvard
Veritas Shield Symbol under the Classes 16, 18, 21, 25 and 28 of the Nice
International Classification of Goods an Services alleging that its predecessor-

ininterest, New York Garments Manufacturing & Export Co., Inc., has been already
using the mark Harvard since 1985 when it registered the same mark under Class
25 of the Nice Classification. Thus, Harvard University is not a prior user of the mark
in the Philippines and, therefore, has no right to register the mark. On the other hand,
Harvard University claimed that the mark Harvard has been adopted by Harvard
University in Cambridge, Massachusetts, USA since 1639. Furthermore, it alleges that
the name and mark Harvard and Harvard Veritas Shield Symbol is registered in
more than 50 countries, including the Philippines, and has been used in commerce
since 1872. In fact, the name and mark is rated as one of the top brands of the world,
being worth between $750M and $1B. Decision of BLA-IPO The Bureau of Legal Affairs,
IPO ruled in favour of Fredco ordering the cancellation of Harvard Universitys mark
under Class 25 only because the other classes were not confusingly similar with
respect to the goods and services of Fredco. Decision of ODG-IPO Harvard University
appealed before the Office of the Director General of IPO wherein ODG-IPO reversed
the decision of BLA-IPO. The Director General ruled that the applicant must also be
the owner of the mark sought to be registered aside from the use of it. Thus, Fredco is
not the owner of the mark because it failed to explain how its predecessor got the
mark Harvard. There was also no evidence of the permission of Harvard University
for Fredco to use the mark. Decision of the Court of Appeals Fredco appealed the
decision of the Director General before the Court of Appeals, which then affirmed the
decision of ODG-IPO considering the facts found by the Director General. CA ruled that
Harvard University had been using the marks way before Fredco and the petitioners
failed to explain its use of the marks bearing the words Harvard, USA, Established
1936 and Cambridge, Massachusetts within an oblong device.
Issue:
W/N CA erred in affirming the decision of ODG-IPO
Held:
s The Petition has no merit. Although R.A. 166 Section 2 states that before a mark can
be registered, it must have been actually used in commerce for not less than two
months in the Philippines prior to filing an application for its registration, a trademark
registered in a foreign country which is a member of the Paris Convention is allowed
to register without the requirement of use in the commerce in the Philippines. Under
Section 37 of R.A. 166, registration based on home certificate is allowed and does not
require the use of the mark in the Philippines. Furthermore, R.A. 8293 Section 239.2
provides that marks which have been registered under R.A. 166 shall remain in force
but shall be subject to the provisions of R.A. 8293, which does not require the prior
use of the mark in the Philippines. Why the petition must fail? 1. The inclusion of the
origin Cambridge, Massachusetts in Fredcos mark connotes that Fredco is
associated with Harvard University, which is really not true. The registration of
Fredcos mark should have been rejected. 2. The Philippines is a signatory of the Paris
Convention, which provides for the protection against violation of intellectual property
rights to all the member countries regardless of whether the trademarks is registered
or not in a particular country. 1980, Luis Villafuerte issued a memo to the Director of
Patents ordering the latter to reject all pending applications of marks which involves a
well-known brand around the world by applicants other than the owner of the mark.
1983, Roberto Ongpin affirmed the memo of Villafuerte by commanding the Director
of Patents to implement measures which will comply with the provisions of the Paris
Convention. He provided criteria that should be considered to any marks that are
wellknown in the Philippines or marks that belong to persons subject to the protection

of the Convention. Currently, well-known marks are protected under Section 123.1(e)
of R.A. 8293. Additionally, Rule 102 of the Rules and Regulations on Trademarks,
Service Marks, Trade Names and Marked or Stamped Containers provides for the
criteria in determining a well-known mark. The use of the mark in commerce is not
anymore required because it is enough that any combination of the criteria be met
in order for a mark to be well-known. The ODG-IPO traced the origin of the mark
Harvard. It ruled that Harvard University had been using the mark centuries before
Fredco although the latter may have used the mark first in the Philippines before the
former. Likewise, CA ruled that the name and mark Harvard and Harvard Veritas
Shield Symbol were first used in the United States since 1953 under Class 25. Finally,
the Supreme Court declared the mark Harvard to be well-known internationally,
including the Philippines
12. Case Digest: McDonald's Corporation v. L.C. Big Mak Burger, Inc.
MCDONALD'S CORPORATION and MCGEORGE FOOD INDUSTRIES, INC., petitioners,
vs.L.C. BIG MAK BURGER, INC., FRANCIS B. DY, EDNA A. DY, RENE B. DY, WILLIAM B.
DY, JESUS AYCARDO, ARACELI AYCARDO, and GRACE HUERTO, respondents.
G.R. No. 143993, August 18, 2004.
Petitioner McDonald's Corporation ("McDonald's") is a US corporation that operates a
global chain of fast-food restaurants, with Petitioner McGeorge Food Industries
("McGeorge"), as the Philippine franchisee.
McDonald's owns the "Big Mac" mark for its "double-decker hamburger sandwich." with
the US Trademark Registry on 16 October 1979.
Based on this Home Registration, McDonald's applied for the registration of the same
mark in the Principal Register of the then Philippine Bureau of Patents, Trademarks and
Technology ("PBPTT") (now IPO). On 18 July 1985, the PBPTT allowed registration of the
"Big Mac."
Respondent L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food
outlets and snack vans in Metro Manila and nearby provinces. Respondent corporation's
menu includes hamburger sandwiches and other food items.
On 21 October 1988, respondent corporation applied with the PBPTT for the registration
of the "Big Mak" mark for its hamburger sandwiches, which was opposed by McDonald's.
McDonald's also informed LC Big Mak chairman of its exclusive right to the "Big Mac"
mark and requested him to desist from using the "Big Mac" mark or any similar mark.
Having received no reply, petitioners sued L.C. Big Mak Burger, Inc. and its directors
before Makati RTC Branch 137 ("RTC"), for trademark infringement and unfair
competition.
RTC rendered a Decision finding respondent corporation liable for trademark
infringement and unfair competition. CA reversed RTC's decision on appeal.
1ST ISSUE:W/N respondent corporation is liable for trademark infringement and unfair
competition.

Ruling: Yes
Section 22 of Republic Act No. 166, as amended, defines trademark infringement as
follows:
Infringement, what constitutes. - Any person who [1] shall use, without the consent of
the registrant, any reproduction, counterfeit, copy or colorable imitation of any
registered mark or trade-name in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in connection with which such use is
likely to cause confusion or mistake or to deceive purchasers or others as to the source
or origin of such goods or services, or identity of such business; or [2] reproduce,
counterfeit, copy, or colorably imitate any such mark or trade-name and apply such
reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in connection with
such goods, business or services, shall be liable to a civil action by the registrant for any
or all of the remedies herein provided.
To establish trademark infringement, the following elements must be shown: (1) the
validity of plaintiff's mark; (2) the plaintiff's ownership of the mark; and (3) the use of the
mark or its colorable imitation by the alleged infringer results in "likelihood of confusion."
Of these, it is the element of likelihood of confusion that is the gravamen of trademark
infringement.
1st element:
A mark is valid if it is distinctive and not merely generic and descriptive.
The "Big Mac" mark, which should be treated in its entirety and not dissected word for
word, is neither generic nor descriptive. Generic marks are commonly used as the name
or description of a kind of goods, such as "Lite" for beer. Descriptive marks, on the other
hand, convey the characteristics, functions, qualities or ingredients of a product to one
who has never seen it or does not know it exists, such as "Arthriticare" for arthritis
medication. On the contrary, "Big Mac" falls under the class of fanciful or arbitrary marks
as it bears no logical relation to the actual characteristics of the product it represents. As
such, it is highly distinctive and thus valid.
2nd element:
Petitioners have duly established McDonald's exclusive ownership of the "Big Mac" mark.
Prior valid registrants of the said mark had already assigned his rights to McDonald's.
3rd element:
Section 22 covers two types of confusion arising from the use of similar or colorable
imitation marks, namely, confusion of goods (confusion in which the ordinarily prudent
purchaser would be induced to purchase one product in the belief that he was
purchasing the other) and confusion of business (though the goods of the parties are
different, the defendant's product is such as might reasonably be assumed to originate
with the plaintiff, and the public would then be deceived either into that belief or into the
belief that there is some connection between the plaintiff and defendant which, in fact,
does not exist).
There is confusion of goods in this case since respondents used the "Big Mak" mark on

the same goods, i.e. hamburger sandwiches, that petitioners' "Big Mac" mark is used.
There is also confusion of business due to Respondents' use of the "Big Mak" mark in the
sale of hamburgers, the same business that petitioners are engaged in, also results in
confusion of business. The registered trademark owner may use his mark on the same or
similar products, in different segments of the market, and at different price levels
depending on variations of the products for specific segments of the market. The
registered trademark owner enjoys protection in product and market areas that are the
normal potential expansion of his business.
Furthermore, In determining likelihood of confusion, the SC has relied on the dominancy
test (similarity of the prevalent features of the competing trademarks that might cause
confusion) over the holistic test (consideration of the entirety of the marks as applied to
the products, including the labels and packaging).
Applying the dominancy test, Respondents' use of the "Big Mak" mark results in
likelihood of confusion. 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.
Lastly, since Section 22 only requires the less stringent standard of "likelihood of
confusion," Petitioners' failure to present proof of actual confusion does not negate their
claim of trademark infringement.
2ND ISSUE: W/N Respondents committed Unfair Competition
Ruling: Yes.
Section 29 ("Section 29")73 of RA 166 defines unfair competition, thus:
Any person who will employ deception or any other means contrary to good faith by
which he 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 such goodwill, or who shall
commit any acts calculated to produce said result, shall be guilty of unfair competition,
and shall be subject to an action therefor.
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.
In the case at bar, Respondents have applied on their plastic wrappers and bags almost
the same words that petitioners use on their styrofoam box. Further, Respondents' goods
are hamburgers which are also the goods of petitioners. Moreover, there is actually no
notice to the public that the "Big Mak" hamburgers are products of "L.C. Big Mak Burger,
Inc." This clearly shows respondents' intent to deceive the public.
13. McDonalds Corporation vs Macjoy Fastfood Corporation
514 SCRA 95 Mercantile Law Intellectual Property Law Law on Trademarks, Service
Marks and Trade Names Dominancy Test vs Holistic Test

Since 1987, MacJoy Devices had been operating in Cebu. MacJoy is a fast food restaurant
which sells fried chicken, chicken barbeque, burgers, fries, spaghetti, palabok, tacos,
sandwiches, halo-halo and steaks. In 1991, MacJoy filed its application for trademark
before the Intellectual Property Office (IPO). McDonalds opposed the application as it
alleged that MacJoy closely resembles McDonalds corporate logo 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 that
the use and adoption in bad faith of the MacJoy and Device mark would falsely tend to
suggest a connection or affiliation with McDonalds restaurant services and food
products, thus, constituting a fraud upon the general public and further cause the
dilution of the distinctiveness of McDonalds registered and internationally recognized
McDonaldS marks to its prejudice and irreparable damage.
The IPO ruled in favor of McDonalds. MacJoy appealed before the Court of Appeals and
the latter ruled in favor of MacJoy. The Court of Appeals, in ruling over the case, actually
used the holistic test (which is a test commonly used in infringement cases). The holistic
test looks upon the visual comparisons between the two trademarks. In this case, the
Court of Appeals ruled that other than the letters M and C in the words MacJoy and
McDonalds, there are no real similarities between the two trademarks. MacJoy is
written in round script while McDonalds is written in thin gothic. MacJoy is
accompanied by a picture of a (cartoonish) chicken while McDonalds is accompanied
by the arches M. The color schemes between the two are also different. MacJoy is in
deep pink while McDonalds is in gold color.
ISSUE: Whether or not MacJoy infringed upon the trademark of McDonalds.
HELD: Yes. The Supreme Court ruled that the proper test to be used is the dominancy
test. The dominancy test not only looks at the visual comparisons between two
trademarks but also the aural impressions created by the marks in the public mind as
well as connotative comparisons, giving little weight to factors like prices, quality, sales
outlets and market segments. In the case at bar, the Supreme Court ruled that
McDonalds and MacJoy marks are confusingly similar with each other such that an
ordinary purchaser can conclude an association or relation between the marks. To begin
with, both marks use the corporate M design logo and the prefixes Mc and/or Mac
as dominant features. The first letter M in both marks puts emphasis on the prefixes
Mc and/or Mac by the similar way in which they are depicted i.e. in an arch-like,
capitalized and stylized manner. For sure, it is the prefix Mc, an abbreviation of Mac,
which visually and aurally catches the attention of the consuming public. Verily, the word
MACJOY attracts attention the same way as did McDonalds, MacFries,
McSpaghetti, McDo, Big Mac and the rest of the MCDONALDS marks which all use
the prefixes Mc and/or Mac. Besides and most importantly, both trademarks are used in
the sale of fastfood products.
Further, the owner of MacJoy provided little explanation why in all the available names
for a restaurant he chose the prefix Mac to be the dominant feature of the trademark.
The prefix Mac and Macjoy has no relation or similarity whatsoever to the name
Scarlett Yu Carcel, which is the name of the niece of MacJoys president whom he said
was the basis of the trademark MacJoy. By reason of the MacJoys implausible and

insufficient explanation as to how and why out of the many choices of words it could
have used for its trade-name and/or trademark, it chose the word Macjoy, the only
logical conclusion deducible therefrom is that the MacJoy would want to ride high on the
established reputation and goodwill of the McDonalds marks, which, as applied to its
restaurant business and food products, is undoubtedly beyond question
14. LYCEUM OF THE PHILS. V. CA
219 SCRA 610
FACTS:
1. Petitioner had sometime commenced before in the SEC a complaint against Lyceum of
Baguio, to require it to change its corporate name and to adopt another name not similar
or identical with that of petitioner. SEC decided in favor of petitioner. Lyceum of Baguio
filed petition for certiorari but was denied forlack of merit.
2. Armed with the resolution of the Court, petitioner instituted before the SEC to compel
private respondents, which are also educational institutions, to delete word Lyceum
from their corporate names and permanently to enjoin them from using such as part of
their respective names.
3. Hearing officer sustained the claim of petitioner and held that the word Lyceum was
capable of appropriation and that petitioner had acquired an enforceable right to the use
of that word.
4. In an appeal, the decision was reversed by the SEC En Banc. They held that the word
Lyceum to have become identified with petitioner as to render use thereof of other
institutions as productive of consfusion about the identity of the schools concerned in the
mind of the general public.
5. Petitioner went to appeal with the CA but the latter just affirmed the decision of the
SEC En Banc.
HELD:
Under the corporation code, no corporate name may be allowed by the SEC if the
proposed name is identical or deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by law or is patently deceptive,
confusing or contrary to existing laws. The policy behind this provision is to avoid fraud
upon the public, which would have the occasion to deal with the entity concerned, the
evasion of legal obligations and duties, and the reduction of difficulties of administration
and supervision over corporations.
The corporate names of private respondents are not identical or deceptively or
confusingly similar to that of petitioners. Confusion and deception has been precluded
by the appending of geographic names to the word Lyceum. Furthermore, the word

Lyceum has become associated in time with schools and other institutions providing
public lectures, concerts, and public discussions. Thus, it generally refers to a school or
an institution of learning.
Petitioner claims that the word has acquired a secondary meaning in relation to
petitioner with the result that the word, although originally generic, has become
appropriable by petitioner to the exclusion of other institutions.
The doctrine of secondary meaning is a principle used in trademark law but has been
extended to corporate names since the right to use a corporate name to the exclusion of
others is based upon the same principle, which underlies the right to use a particular
trademark or tradename. Under this doctrine, a word or phrase originally incapable of
exclusive appropriation with reference to an article in the market, because geographical
or otherwise descriptive might nevertheless have been used for so long and so
exclusively by one producer with reference to this article that, in that trade and to that
group of purchasing public, the word or phrase has come to mean that the article was his
produce. The doctrine cannot be made to apply where the evidence didn't prove that the
business has continued for so long a time that it has become of consequence and
acquired good will of considerable value such that its articles and produce have acquired
a well known reputation, and confusion will result by the use of the disputed name.
Petitioner didn't present evidence, which provided that the word Lyceum acquired
secondary meaning. The petitioner failed to adduce evidence that it had exclusive use of
the word. Even if petitioner used the word for a long period of time, it hadnt acquired
any secondary meaning in its favor because the appellant failed to prove that it had
been using the same word all by itself to the exclusion of others.
15. 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, PhilPack 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 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.

16. SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES, INC., vs,
COURT OF APPEALS and CFC CORPORATION.
G.R. No. 112012

April 4, 2001

356 SCRA 207 Mercantile Law Intellectual Property Law Law on Trademarks, Service
Marks and Trade Names Generic Term
In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and Technology
Transfers an application for the registration of its trademark Flavor Master an instant
coffee. Nestle opposed the application as it alleged that Flavor Master is confusingly
similar to Nestle coffee products like Master Blend and Master Roast. Nestle alleged that
in promoting their products, the word Master has been used so frequently so much so
that when one hears the word Master it connotes to a Nestle product. They provided as
examples the fact that theyve been using Robert Jaworski and Ric Puno Jr. as their
commercial advertisers; and that in those commercials Jaworski is a master of basketball
and that Puno is a master of talk shows; that the brand of coffee equitable or fit to them
is Master Blend and Master Roast. CFC Corporation on the other hand alleged that the
word Master is a generic and a descriptive term, hence not subject to trademark. The
Director of Patents ruled in favor of Nestle but the Court of Appeals, using the Holistic
Test, reversed the said decision.
ISSUE: Whether or not the Court of Appeals is correct.

HELD: No. The proper test that should have been used is the Dominancy Test. 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. The use of the word
Master by Nestle in its products and commercials has made Nestle acquire a connotation
that if its a Master product it is a Nestle product. 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.
In addition, the word MASTER is neither a generic nor a descriptive term. As such, said
term can not be invalidated as a trademark and, therefore, 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.
On the other hand, 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.
Rather, the term MASTER is a suggestive term brought about by the advertising
scheme of Nestle. Suggestive terms are those which, in the phraseology of one court,
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.
17. Asia Brewery, Inc. vs Court of Appeals
224 SCRA 437 Mercatile Law Intellectual Property Law Law on Trademarks, Service
Marks and Trade Names Unfair Competition
In September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for allegedly
infringing upon their trademark on their beer product popularly known as San Miguel
Pale Pilsen; that Asia Brewerys Beer na Beer product, by infringing upon SMCs
trademark has committed unfair competition as Beer na Beer creates confusion
between the two products. The RTC ruled in favor of Asia Brewery but theCourt of
Appeals reversed the RTC.

ISSUE: Whether or not Asia Brewery infringed upon the trademark of SMC.
HELD: No. Both products are manufactured using amber colored steinie bottles of 320
ml. Both were labeled in a rectangular fashion using white color paint. But other than
these similarities, there are salient differences between the two. As found by the
Supreme Court, among others they are the following:
1. The dominant feature of SMCs trademark are the words San Miguel Pale Pilsen while
that of Asia Brewerys trademark is the word Beer. Nowhere in SMCs product can be
seen the word Beer nor in Asia Brewerys product can be seen the words San Miguel
Pale Pilsen. Surely, someone buying Beer na Beer cannot mistake it as San Miguel
Pale Pilsen beer.
2. The bottle designs are different. SMCs bottles have slender tapered neck while that of
Beer na Beer are fat. Though both beer products use steinie bottles, SMC cannot claim
that Asia Brewery copied the idea from SMC. SMC did not invent but merely borrowed the
steinie bottle from abroad and SMC does not have any patent or trademark to protect
the steinie bottle shape and design.
3. In SMC bottles, the words pale pilsen are written diagonally while in Beer na Beer,
the words pale pilsen are written horizontally. Further, the words pale pilsen cannot
be said to be copied from SMC for pale pilsen are generic words which originated from
Pilsen, Czechoslovakia. Pilsen is a geographically descriptive word and is nonregistrable.
4. SMC bottles have no slogans written on them while Asia Brewerys bottles have a
copyrighted slogan written on them that is Beer na Beer.
5. In SMC bottles, it is expressly labeled as manufactured by SMC. In Asia Brewery beer
products, it is likewise expressly labeled as manufactured by Asia Brewery. Surely, there
is no intention on the part of Asia Brewery to confuse the public and make it appear that
Beer na Beer is a product of SMC, a long-established and more popular brand.
Justice Cruz Dissenting:
A number of courts have held that to determine whether a trademark has been infringed,
we must consider the mark 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. The court therefore
should be guided by its first impression, for a buyer acts quickly and is governed by a
casual glance, the value of which may be dissipated as soon as the court assumes to
analyze carefully the respective features of the mark. (Del Monte vs CA & Sunshine
Sauce)