21. EMERALD GARMENT MANUFACTURING vs. CA, BPTTT, H.D.

LEE
The trademark should be considered as a whole and not piecemeal.
Actual use in commerce in the Philippines is an essential prerequisite for the
acquisition of ownership over a trademark.
FACTS:
1. Private respondent HD LEE (Yung legit na Lee talaga na damit), a foreign
corporation, filed with the Bureau of Patents, Trademarks and Technology
Transfer (BPTTT) a Petition for Cancellation of Registration on September
1981 for the trademark STYLISTIC MR. LEE used on items of clothing under
Class 25 which was issued on October 1980 in the name of Petitioner
Emerald Garments. (1 year difference)
2. Private respondent HD LEE invoked Sec 37 of RA 166 (Trademark Law) and
Art. VIII of the Paris Convention for the Protection of Industrial Property,
claiming that the petitioners trademark closely resembled its own trademark.
3. In its answer, petitioner contends that its trademark was entirely and
unmistakably different from that of private respondent and that its certificate
was legally and validly granted. Petitioner also claims the defense of laches
because they started using the trademark on August 1975 but their opposition
was filed only 6 years after.
4. February 1984, petitioner caused the publication of its application for
registration of trademark in the Principal Register. (Yung kanina Supplemental
Register) Respondent opposed.
5. 1988 Director of Patents rendered a decision granting the petition for
cancellation because HD LEE was a prior registrant, and that based on the
dominancy test the two trademarks were confusingly similar.
6. CA affirmed the decision of the Director.
ISSUE:
Whether or not there is confusing similarity between the two trademarks.
HELD:
NO, there is no confusing similarity.
1. On the issue of estoppel by laches, the SC held that the reckoning point is not
1975, but 1980, the date the Certificate of Registration (Supplemental
Register) was published and issued.
2. Applying the dominancy test and the holistic test, the trademarks were
considered as a whole and not piecemeal. Petitioners trademark is
STYLISTIC MR. LEE. Although LEE is prominent, it should considered as a
whole. The ordinary customer is not the completely unwary but rather the
ordinarily intelligent buyer.
3. Although HD LEE is the senior registrant, the SC held that registration alone
will not suffice, there must be evidence of actual use.

22. SOCIETE DES PRODUITS NESTLE, NESTLE PH vs. CA, CFC CORP.
The holistic test only relies on the visual comparison, whereas the dominancy test
relies not only on the visual but also on the aural and connotative comparisons and
overall impressions.
FACTS:
1. January 1984, private respondent CFC filed with the BPTTT an application for
the trademark FLAVOR MASTER for instant coffee.
2. Petitioner SOCIETE filed an unverified Notice of Opposition, claiming that
such trademark is confusingly similar to its coffee trademarks MASTER
ROAST and MASTER BLEND, and such would cause confusion in the trade.
3. CFC claimed that its trademark is not confusingly similar, that except for the
word MASTER, the other words are different.
4. BPTTT denied CFCs application.
5. The CA reversed, because while the contending marks depict the same
product, the glaring dissimilarities in their presentation far outweigh and dispel
any aspect of similitude.
ISSUE:
Whether or not, the totality rule should be used rather than the dominancy test.
HELD:
NO, the dominancy test should be used instead.
1. The SC held that the application of the holistic test is improper since the
ordinary purchaser would not be inclined to notice the specific features,
similarities/dissimilarities, considering that the product is an inexpensive
household item.
2. The use by CFC of the term MASTER is likely to cause confusion because
the use of MASTER by Nestle in its products has made Nestle acquire a
connotation that if its a MASTER product, its Nestle

23. ARCE SONS AND COMPANY vs. SELECTA BISCUIT

A merely descriptive, unprotected word can become a trademark and descriptive
term within the meaning of the Trademark Law.
FACTS:
1. Respondent Selecta Biscuit filed with the Philippine Patent Office a petition for
registration of the word SELECTAN as a trademark to be used in its bakery
products.
2. Respondent claims that it is in actual use thereof for not less than two months
before the said date and that no other has the right to use said trademark in
the Philippines.
3. Petitioner filed its opposition thereto on several grounds: a) continuous use
since its organization; b) that the mark "SELECTA" has already become
identified with name of the petitioner and its business; c) that petitioner had
warned respondent not to use said mark because it was already being used
by the former, but that the latter ignored said warning; d) unfair competition
with the products of petitioner thus resulting in confusion in trade; e) striking
resemblance.
4. CFI Manila rendered a decision in the unfair competition case between the
two, enjoining respondent from using SELECTA. Petitioner interposed Petition
for Review.
ISSUE:
Whether or not, the Director of Patents is correct in dismissing the opposition of the
petitioner.
HELD:
NO. The SC held that the use of SELECTA by the respondent will cause confusion
and prejudice the petitioner.
1. A 'trade-mark' is a distinctive mark of authenticity through which the
merchandise of a particular producer or manufacturer may be distinguished
from that of others, and its sole function is to designate distinctively the origin
of the products to which it is attached.
2. 'SELECTA' has been chosen by petitioner and has been inscribed on all its
products to serve not only as a sign or symbol that may indicate that they are
manufactured and sold by it but as a mark of authenticity that may distinguish
them from the products manufactured and sold by other merchants or
businessmen.
3. It may acquire a secondary meaning as to be exclusively associated with its
products and business. In this sense, its use by another may lead to
confusion in trade and cause damage to its business.

24. ROMERO vs. MAIDEN FORM BRASSIERE, DIRECTOR OF PATENTS

If the name is used to describe the style, non-registrable, if used to set apart or
distinguish the style, registrable.
FACTS:
1. February 12, 1957, respondent foreign company Maiden Form filed with the
Director of Patents an application for registration of the trademark ADAGIO
for a specific style of brassieres it manufactured.
2. Respondent claims that it first used the trademark ADAGIO in the US in
1937, in the Philippines in 1946; and had been continuously used in trade for
over 10 years; and said trademark is applied or affixed by respondent to the
goods by placing a woven label on which the trademark is shown.
3. After the approval of the Director for publication in the Official Gazette,
Director issued in October 17, 1957 a certificate of registration with trademark
ADAGIO.
4. February 26, 1958, petitioner Romero filed with the Director a petition for
cancellation of said trademark.
5. Petitioner claims that ADAGIO is a common descriptive name of an article or
substance on which the patent has expired; that its registration was obtained
fraudulently and that it was not filed in accordance with the provisions of RA
166.
6. In addition, petitioner claims that the trademark has not become distinctive of
respondents company because it has been used by both the respondent (10
years) and petitioner (6 years); and has therefore become a common
descriptive name of a particular type of brassiere, making it unregistrable.
ISSUE:
Whether or not the Director of Patents is correct in dismissing the petition for
cancellation of petitioner Romero.
HELD:
YES, he is correct in dismissing the petition.
1. On the issue that it is a common descriptive name, the SC held that being a
musical term, it is used in a fanciful sense as a trademark of brassieres.
Respondent also uses other musical terms for different brassieres. That the
said mark is used to designate a particular style of brassiere does not affect
its registrability. RESPONDENTS LONG AND CONTINUOUS USE OF THE
TRADEMARK HAS NOT RENDERED IT MERELY DESCRIPTIVE OF THE
PRODUCT.
2. On the issue that the use of the trademark by respondent is only to designate
a particular style, the SC held that ADAGIO as appearing on the package,
does not conclusively indicate ADAGIO as merely a style, but rather, ADAGIO
is used to DISTINGUISH the style.

25. CANON KABUSHIKI vs. COURT OF APPEALS, NSR RUBBER

Ownership of trademark only applies to a particular class of products, not all classes
of products.
FACTS:
1. Private respondent NSR Rubber filed an application for registration of the
mark CANON for sandals in the Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT).
2. A Notice of Opposition was filed by the petitioner, a Japanese corporation,
claiming that it will be damaged by the registration of the trademark CANON
in the name of private respondent.
3. Petitioner presented evidence consisting of certificates of registration for the
mark CANON in various countries covering goods belonging to CLASS 2.
(Paints, chemical products) NSR failed to answer.
4. Nevertheless, BPTTT dismissed opposition of petitioner.
5. Petitioner appealed based on four grounds: a) CANON is petitioners
trademark used also for footwear, b) Allowing registration would prevent
petitioner from using CANON for footwear, c) To prevent confusion, d)
Exclusive use because it forms part of its corporate name.
ISSUE:
Whether or not, BPTTT is correct is dismissing the opposition.
HELD:
Yes, BPTTT is correct in dismissing the opposition.
1. The SC held that ordinarily, the ownership of a trademark or trade name is a
property right that the owner is entitled to protect as mandated by the
Trademark Law. However, when a trademark is used by a party for a product
in which the other party does not deal, the use of the same trademark on the
latters product cannot be validly objected to.
2. Petitioner failed to convince the Court that petitioner has also embarked in the
production of footwear products.
3. The paints and chemical products of the petitioner are unrelated to sandals.