Emerald Garment Manufacturing Corporation

vs. CA

warrant its cancellation in the supplemental

Registry

Facts:

Held:

A Petition for Cancellation of Registration for the

trademark "STYLISTIC MR. LEE" in the name of
petitioner Emerald Garment Manufacturing
Corporation (domestic corporation organized and
existing under Philippine laws) was filed by
private respondent H.D. Lee Co., Inc., (foreign
corporation organized under the laws of Delaware,
U.S.A.), on grounds that petitioner's trademark was
confusingly similar to its "LEE" trademark.

No. Stylistic Mr. Lee is not a variation of the Lee

mark. HD Lees variation follows the format lee
riders, leesure, and leeleens and thus does not
allow the conclusion that Stylistic Mr. Lee is
another variation under HD Lees mark.

Director of Patents (using the test of dominancy)

rendered a decision granting private respondent's
petition for cancellation and opposition to
registration.
Petitioner appealed to the CA and filed with the
BPTTT a Motion to Stay Execution.
BPTTT issued Resolution No. 88-33 granting
petitioner's motion to stay execution, that they are
authorized only to dispose of its current stock
using the mark "STYLISTIC MR. LEE"; and is
prohibited from further production, regardless of
mode and source of STYLISTIC MR. LEE.
CA promulgated its decision affirming the decision
of the Director of Patents. Test of Dominancy - if
the competing trademark contains the main or
essential or dominant features of another by reason
of which confusion and deception are likely to
result, then infringement takes place.
"STYLISTIC" printed in the appellant's label is
printed in such small letters over the word "LEE"
that it is not conspicuous enough to draw the
attention of ordinary buyers whereas the word
"LEE" is printed across the label in big, bold
letters and of the same color, style, type and size of
lettering as that of the trademark of the appellee.
Moreover, they are engaged in the same line of
business
Petitioner filed a motion for reconsideration on the
CA but was rejected.
Issue:
Whether the trademark stylistic Mr. Lee is
confusingly similar to HD Lees trademarks to

Although on stylistic Mr. Lees label, the word

lee is prominent, the trademark should be
considered as a whole and not piecemeal. Further,
Lee is a surname. Personal names nor surnames
cannot be monopolized as trademarks or
tradenames as against others of the same name or
surname. Furthermore, inasmuch as Emerald
Garment has shown the use of stylistic Mr. Lee
since 1975 through sales invoice from stores and
retailers; and that HD Lee was not able for
transactions period to 1981;
Supreme Court allowed the use of stylistic Mr.
Lee by Emerald Garment.

Creser Precision Systems Inc. v CA and Floro

International Co.
Facts:
Respondent has a patent for its aerial fuze. It
discovered that the petitioner submitted samples of
its patented aerial fuze to the AFP for testing
claiming to be the latters own.
Respondent sent letter of warning to petitioner on a
possible court action should it proceed its testing
by the AFP. In response the petitioner filed a
complaint for injunction and damages arising from
alleged infringement before the RTC asserting that
it is the true and actual inventor of the aerial fuze.
Petitioner prayed for restraining order and
injunction from marketing, manufacturing and
profiting from the said invention by the
respondent.
RTC ruled in favor of the petitioner
CA reversed the decision of the trial court
Issue:
Whether or not the petitioner has the right to assail
the validity of the patented work of the
respondent?

Ruling:
None. Section 42 of the Law on Patent (RA 165)
provides that only the patentee or his successorsin-interest may file an action against infringement.
What the law contemplates in the phrase anyone
possessing any right, title or interest in and to the
patented invention refers only to the patentees
successors-in-interest, assignees or grantees since
the action on patent infringement may be brought
only in the name of the person granted with the
patent.
A person who has not been granted letter of patent
over an invention has not acquired right or title
over the invention and thus has no cause of action
for infringement.
Petitioner admitted to have no patent over his
invention. Respondents aerial fuze is covered by
letter of patent issued by the Bureau of Patents
thus it has in his favor not only the presumption of
validity of its patent but that of a legal and factual
first and true inventor of the invention.