Ipl Aug 10

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G.R. No. L-28499 September 30, 1977
the petitioner's mark "Victorias" with a diamond design and the respondents'
mark "Valentine" with a design in connection with sugar. 3
VICTORIAS
MILLING
COMPANY,
INC., petitioner,
vs.
The petitioner's only witness, Pacifica V. Vijandre its vice-president and
ONG SU AND THE HONORABLE TIBURCIO S. EVALLE IN HIS stockholder, testified that Victorias Milling Company, Inc. has used since 1947
CAPACITY AS DIRECTOR OF PATENT'S,respondents.
the trademark "Victorias" and diamond design with colors of red and black on
sacks of sugar having variable weight and size of 5 lbs., 10 lbs., 25 N., 50
Gonzalo W. Gonzalez, Agpalo & Associates for petitioner.
lbs., and 100 lbs.; that the company had transactions on or sales of sugar
Salonga, Ordoez, Yap & Associates and Armando G. Gungon for with local dealers such as Kim Kee, Chu Yu & Co., Limouan & Co., Luzon
Merchandising Corp. and ARCA that the average sale from 1958 to 1962 was
respondents.
P30,000,000 and for the whole year of 1962 the sale was P46,000,000; that
he came to know that the trademark "Valentine" appeared in the market in
1962 through the report of his company's field agents; and that except for
FERNANDEZ, J.:
the words "Valentine and Victorias", the design and wordings of the bags are
This is a petition to review the decision of the Director of Patents in Inter
practically the same. 4
Partes Case No. 304 entitled "Victorias Milling Company, Inc., petitioner,
verus, Ong Su" dated August 15, 1967 denying the petition to cancel the The respondent, Ong Su decWW that he adopted and began using his
certificate of registration issued by the philippines Patent Office on Jurie 20, trademark "Valentine" and design before and continuously after World War II
1961 in favor of Ong Su covering the tradenwk "VALENTINE" and design and in the Philippines, particularly on paper bags used as containers for starch,
coffee and sugar; and that since January 1955 he continued using said
used on refined sugar. 1
trademark on repacked sugar.
The petitioner, Victorias Milling Company, Inc., a domestic corporation and
engaged in the manufacture and sale of refined granulated sugar is the Arturo Chicane a witness for the respondent, testified that he was a
owner of the trademark "VICTORIAS" and d design registered in the distribution agent of Ong Su that he travelled a lot but he river own across an
instance when the respondent Ong Su product was mistaken for the
Philippines Patent Office on November 9, 1961.
petitioner's product; that he found the diamond design to be quite common
The respondent Ong Su is engaged in the repacking and sale of refine sugar
in combination with other words used as trademarks as a background or to
and is the owner of the trademark "VALENTINE" and design registered in the
enhance their appearance, such as "DIAMOND" and design (Exhibit "54-A"),
Philippines Patent Office on June 20, 1961.
"EAGLE" and design (Exhibit "53"), and "SUNRISE" and design (Exhibit "55"),
On October 4, 1963, Victorias Mining Company, Inc. filed with the Philippine not belonging to the petitioner, which are also used on repacked sugar by
Patent Office a petition to cancel the registration of the Ong Su trademark various sugar dealers; and that said designs and the color of the lines on
which drawn had not been regarded as trademarks but we ornamentation. 5
"Valentine."
The petitioner allied that its tradermrk "Victorias" and diamond design has The Director of Patents denied the petition to cancel the certificate of
distinctive of its sugar long before the respondent used its trademark; that registration of the respondent Ong Su covering the trademark "Valentine"
the registration of "Valentine" and design has caused and will cause great and design because:
damage to petitioner by reason of mistake, confusion, or deception among
From the facts of record, I find nothing to sustain the
the purchasers because it is similar to its "Victorias" trademark; that
petition.
registration was fradulently obtained by Ong Su and that "Valentine" faisely
There is no question that as to their respective literal
suggests a connection with Saint Valentine or with an institution or belief
designation the trademarks are different. One is VALENTINE
connected therewith. 2
while the other is VICTORIAS. Thus, as to sound and
In his answer to the petition the respondent averred that he is doing
connotation there is no dispute as to their dissimilarity.
business under the name and style "Valentine Packaging" and has registered
However, from the evidence and pleadings, it appears that
the trademark "Valentine" with a design for sugar and was issued Certificate
petitioner is relying heavily on its diamond design, the color
of Registration No. 8891 dated June 20, 1961; that the trademark
scheme, and the printing sequence or arrangement of such
"Victorias" with diamond design and the trademark "Valentine" with a design
legends as weight, contents and manufacturer or packer.
are two different marks; and that there is absolutely no likelihood of
confusion, mistake or deception to purchasers through the concurrent use of
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I am of the firm belief that the diamond Portion of

petitioner's trademark hag not bolstered its cause. Common
geometric shapes such as circles, ovals, squares, triangles,
diamonds, and the like, when used as vehicles for display on
word marks, ordinarily are not retarded as indicia of origin
for goods to which the marks are applied, unless of course
they have acquired secondary meaning. I have scoured the
records completely to ascertain if the petitioner has
submitted satisfactory evidence in this regard, but I find
absolutely nothing to base a ruling that the triangle (sic)
design has acquired a secondary meaning with respect to its
sugar business.
The petitioner
It is the common practice for trademark owners to register
errors:
designs forming outline of their distinguishing mark, but
when the registrant of such design relies upon registration in
proceeding based upon likelihood of confusion of purchasers,
he assumes the burden of showing that the design portion of
the mark has been so used that purchasers recognize the
design, standing alone, as indicating goods emanating from
the registrant. Bausch & Lomb Optical Co., v. Overseas
Finance & Trading Co., Inc. (ComrPats) 112 USPQ 6.
Considering herein that the petitioner failed to establish that
diamond design component of its mark has acquired a
secondary meaning and that the literal portion of the marks
have no similarity, there is no reasonable likelihood of
purchaser confusion resulting from registrant's use of
VALENTINE within a diamond and petitioner's use of
VICTORIAS within a diamond.
As regards the colors black and red used, it is fundamental
in trademark jurisprudence that color alone, unless
displayed in a distinct or arbitrary design, does not function
as a trademark, inasmuch as here, or elsewhere, the colors
black and red are not so displayed by the petitioner, and are
primary colors commonly and freely used in the printing
business.
Finally, as regards the printing sequences or arrangement of
such legends as weight, contents, and manufacturer or
packer, I regard it as merely a matter pertaining to the
address of the goods' a matter involving unfair
competition over which the Patent Office has no jurisdiction.
(See: Menzi & Co., Inc, vs. Andres Co Dee. No. 59 dated
Oct. 31, 1952, Dir. of Patents.) And in the case of A. E.
Staley Manufacturing Co., Inc. vs. Andres Co. v. Tan Tong,
citing, Gillette Safety Razor Go. v. Triangle Mechanical
Laboratories, 31 USPQ 24; Aladdin Mfg. Co. v. Mantle Lamp

Co., 21 USPQ 58; and J. C. Eno (U.S.) Limited v. Deshayas 29
USPQ 179), it was held that the tribunals of the Philippines
Patent Office have no jurisdiction over questions of unfair
competition. At most, the petitioner's recourse is for it to
seek relief in civil courts.
The allegations that the registration of VALENTINE was
obtained fraudulently; that it falsely suggests a connection
with St. Valentine; and that it is merely descriptive or
deceptively misdescriptive of sugar have no basis in law and
fact. 6
submits that the Director of Patents committed the following
I
THE RESPONDENT DIRECTOR OF PATENTS ERRED IN
HOLDING THAT PETITIONER'S REGISTERED DIAMOND
DESIGN IS NOT AN INDEX OF ORIGIN.
II
HOLDING THAT PETITIONER IS REQUIRED TO ESTABLISH
THAT ITS DIAMOND DESIGN HAS ACQUIRED A SECONDARY
MEANING.
III
HOLDING PETITIONER'S DIAMOND DESIGN HAS NOT
ACQUIRED A SECONDARY MEANING.
IV
HOLDING THAT THE DETAILS OF PETITIONER'S DESIGN
THAT HAVE BEEN IMITATED BY RESPONDENT ONG SU
MERELY PERTAIN TO THE'DRESS OF THE GOODS.'
V
CONFINING HIS COMPARISON OF PETITIONER'S AND
RESPONDENT'S RESPECTIVE TRADEMARKS TO ONE SOLE
ITEM OF THEIR DESIGN, IGNORING THE COMPLETE LABELS
AS ACTUALLY USED IN TRADE AND SEEN BY CONSUMERS.
VI
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ALHTHOUGH ADMITTEDLY UNAUTHORIZED, OF RESPONDENT
TAKING THE POSITION THAT IN CASES OF TRADEMARK
ONG SU. 7
CANCELLATION INVOLVING, AMONG OTHERS, OBVIOUS
The contention of petitioner that the diamond design in its trademark is an
ACTS OF UNFAIR COMPETITION, HE NEED NOT TAKE ANY
index of origin has no merit. The petitioner has not shown that the design
ACTION WHATSOEVER, SINCE HE SUPPOSEDLY HAS NO
portion of the mark has been so used that purchasers recognize the design,
JURISDICTION IN THE PREMISES.
standing alone, as indicating goods coming from the registrant. As correctly
VII
stated by the Director of Patents, common geometric shapes such as
diamonds ordinarily are not regarded as indicia of origin for goods to which
the remarks are applied unless they have acquired a secondary meaning.
HOLDING THAT PETITIONER'S REGISTERED COLOR DESIGN
And there is no evidence that the diamond design in the trademark of the
DOES NOT FUNCTION AS A TRADEMARK.
petitioner has acquired a secondary meaning with respect to its sugar
business. The word "Victorias" is what Identifies the sugar contained in the
VIII
bag as the product of the petitioner. Indeed, the petitioner has advertised its
sugar in bags marked "Victorias" with oval, hexagor. and other designs.
HOLDING THAT BECAUSE THE LITERAL PORTIONS OF THE
RESPECTIVE TRADEMARKS IN QUESTION, NAMELY, THE The evidence is that Ong Su has been using his trademark since prior to the
RESPECTIVE NAMES 'VICTORIAS' AND 'VALENTINE', HAVE last World War and he obtained the registration thereof on June 20, 1961.
NO SIMILARITY, THERE IS NO REASONABLE LIKELIHOOD OF Vijandre declared that the petitioner started to use its trademark only in
1947. Said trademark was registered on November 9, 1961. It cannot be
PURCHASER CONFUSION.
said, therefore, that the respondent Ong Su imitated the trademark of the
IX
petitioner.
The petitioner avers that purchasers of sugar are likely to confuse petitioner's
ASSUMING THAT PETITIONER, OR THE OWNER OF ANY
"Victorias" trademark and respondent Ong Su's "Valentine" trademark
IMITATED OR INFRINGED TRADEMARK FOR THAT MATTER,
because of the following similarities:
MUST ESTABLISH ACTUAL PURCHASER CONFUSION.
1. Both trademarks have the same diamond design with the
X
slight modification that the lines of the "VALENTINE" diamond
design are a little protruding at the ends.
PREVENTING THE TESTIMONIES OF RESPONDENT ONG SU
2. The lines forming the diamond design in both trademarks
AND WITNESS ERNESTO DURAN AS REBUTTAL WITNESSES
consist of two lines, namely, the outer portion and the inner
FOR PETITIONER, SAID RULINGS OF RESPONDENT
portion.
DIRECTOR CONSTITUTING REVERSIBLE ERROR AND THE
3. The outer portion of the diamond design of both
DENIAL OF PROCEDURAL DUE PROCESS.
trademarks has the color black as shown in the specimens
XI
(Exhibits "A" and "B"). The, inner line of the diamond design
in both trademarks has the color red.
HOLDING THAT THE REGISTRATION OF THE VALENTINE
4. In both trade marks, the word "PURE" in black print
TRADEMARK BY RESPONDENT ONG SU WAS NOT
appears inside of the upper portion of the diamond design.
PRUDULENTLY OBTAINED.
5. In both trade marks, the word "VICTORIAS" and the word
XII
VALENTINE' placed within the diamond design are
conspicuously colored red.
THE RESPONDENT DIRECTOR OF PATENTS, ACTING
TfIROUGH HEARING OFFICER AMANDO MARQUEZ, ERRED
6. The letter "V" in Victorias and the letter "V" in Valentine
IN ADMITTING RESPONDENT ONG SU'S EXHIBITS
are Identically placed.
PERTAINING TO ONE 'MARIANO ANG SAID NAME NOT
HAVING BEEN CLEARLY ESTABLISHED AS AN ALIAS,
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7. The word "VICTORIAS" and the word "VALENTINE" are Trade Mark Law, Republic Act No. 166, after actions for unfair competition
Identically arranged, the same containing the same number shall be brought before the proper Court of First Instance.
of letters.
The refusal of the Director of Patents to allow respondent Ong Su and witness
8. Immediately below the words "VICTORIAS" and Emesto Duran to testify on rebuttal is not a reversible effort.
"VALENTINE"appears the words "REFINED SUGAR".
The only'purpose of the petitioner in proposing to call Ong Su as a witness on
9. underneath the diamond design in both trademarks are rebuttal is to ask the latter if he had judicial authority to use the alias
the words "FINE GRANULATED" and below said phrase are 'Mariano'. Ang It appears, however, that the counsel of petitioner had already
the words 'CANE SUGAR'with a small diamond design.
extensively cross-examined Ong Su as to a citizenship, alien certificate of
registration and the other name Mariano Ang. It seems immaterial whether
10. Both, trade marks are used on refines sugar.
or not Ong Su has judicial authority to use Mariano Ang as an alias. There is
11. The words "PURE," "VALENTINE," "VICTORIAS," "FINE evidence that even before the last World War, the trademark 'Valentine' and
GRANULATED" and "CANE SUGAR" in both trade marks are design had been used under the name of either Ong Su or Mariano Ang.
same has arranged and printed.9
The petitioner sought to present Emesto T. Duran as rebuttal witness to
The respondent Ong Su maintains that the alleged are minor for the prove that there was a confusion among consumers or buyers of sugar
caused by the alleged sorority of the "Victorias" and "Valentine" trademarks.
following reason:
The presentation of Emesto T. Duran as rebuttal witness was objected to by
Appellant attempts to show the possibility or likelihood of
counsel of the respondent on the ground that the evidence sought to be
purchaser confusion by pointing out alleged similarities in
elicited from Duran did not directly contradict the testimony of witness
the packages in question, e.g. "Pure Refined Sugar"
Chicane The objection was sustained by the hearing officer whose ruling was
appearing in both marks in question. It should be noted,
subsequently confer by the Director of Patents. Counsel for the petitioner
however, that these words are merely descriptive commonly
made the following formal offer of proof:
applied to the goods, namely, sugar, and cannot be
ATTY. GONZALEZ:
exclusively appropriated by the petitioner. The other alleged
similarities pointed to by appellant that the lines forming
Your Honor please, in view of the ruling of the Honorable
the diamond design in both trademarks consist of two lines,
Director your Honor please on the admissibility of certain
the outer portion and the inner portion; that the diamond
items of evidence, which resolution dated February 21, 1966
design in both tradeniarks has the color black and the inner
was received by undersigned counsel for the petitioner on
line of both designs has the red color; that the diamond
February 22, 1966, said resolution was setting the hearing of
design as used by the petitioner and by respondent are of
this case for this morning, I wish to state, I wish to register
the same size; that the letter 'V' in Victorias and the letter
my exception, my respectful exception to said resolution. In
"V" in "Valentine" are the same size; and that the letter 'V'
view of the resolution not permitting me to present Mr.
in VICTORIAS and the letter "V" in the Valentine package are
Ernesto Duran, my proposed witness whom I attempted to
Identically pIaced in the diamond; and that the word
present at the last hearing, I wish to offer as proof the
"Victorias" and the word "VALENTINE" are Identically
following items ol' the testimony of witness Duran. Now as he
arranged within the diamond are, we submit with respect,
would go shopping with his parents and that sometime in the
minor and insignificant for the purpose of this petition even
month of February 1963 he went to the Aranque market, and
10
if the observations of appellant are correct.
while he was buying groceries he saw a shelf with five (5)
lbs. bag of sugar with the bag and package he thought was
It seems clear that the words "Valentine" and "Victorias" and the names and
VICTORIAS. Witness Duran will further testify that he went to
places of business of Victorias Milling Company, Inc. and Ong Su are the
the shelf and pointed to the bag of sugar and hesaid Isang
dominant features of the trademarks in question. The petitioner has not
support ng Victorias Ang. That the sugar was taken by the
established such a substantial similarity between the two trademarks in
shopkeeper and when he went home he found out that the
question as to warrant the cancellation of the trademark 'Valentine'of the
sugar was marked VALENTINE. lie went on again on another
respondent Su. The Director of Patents correctly ruled that he has no
time later and saw that the shelf was still filled with five (5)
jurisdiction over the issue of unfair competition. Under Section 27 of the
pounds (lbs,) bag VALENTINE sugar. The shelf also has bags
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of VICTORIAS sugar side by side with VALENTINE sugar, that

the package of VALENTINE looked so much alike will
VICTORIAS sugar that he was misled into pointing to
VALENTINE and asked for VICTORIAS.
HEARING OFFICER:
What is that, is that supposed to be the testimony of witness
Duran?
ATTY. GONZALEZ:
Yes, your Honor, I am offering as proof of what the witness
Duran would have testified. Since this office has ruled that I
cannot present him an offer of proof is being made for
purposes of putting on record what he would have testified
to on record in accordance with the Rules of Evidence. 11
Having made the foregoing formal offer of proof, the petitioner cannot
complain that it was denied procedural due process.
The proposed testimony of Emesto T. Duran that in February 1963 he went
to Arangue market and bought one bag of sugar which he thought was
"Victorias" and when he went home he found out that the sugar was marked
"Valentine" is not sufficient evidence that the two trademarks are so similar
that buyers of sugar are confused. The words "Victorias" and "Valentine" are
not similar in spelling and do not have a similar sound when pronounced.
Even the diamond designs are different. The diamond design of the
trademark "Valentine" has protruding fines at the comers. Even an illiterate
person can see the difference between the two diamond designs.
There is no evidence that the respondent Ong Su had obtained the
registration of his trademark "Valentine" and design by means of fraud. The
said trademark was registered in the Philippines Patent Office before the
petitioner registered its trademark.
The record and evidence show that Ong Su had also used in his business the
name Mariano Ang. Hence the licenses and permits in the name of Ong Su
and/or Mariano Ang were correctly admitted as evidence.
WHEREFORE the decision of the Director of Patents sought to be reviewed is
hereby affirmed, without pronouncement as to costs.
SO ORDERED.
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of the goods, business of manufactures of the applicant; that the use of the
name would produce confusion in trade and would deceive the public; and
that "nylon" is not distinctive of applicant's goods; business and
manufactures and applicant does not claim that it has so become. This
opposition, however, was dismissed by the Director on the ground that at the
time it was submitted Atty. J. A. Wolfson did not have, nor did he submit,
authority to file it (opposition) in the corporate name, and that the
subsequent authorization from the corporation to that effect did not cure the
general defect in the opposition.
But while he dismissed the opposition, the Director ruled that the application
must be disapproved unless the word "nylon" is also disclaimed. The grounds
for the disapproval of the application were as follows:
G.R. No. L-6235
March 28, 1955
ONG
AI
GUI alias TAN
AI
GUI, applicant-petitioner,
vs.
the
Director
of
the
Philippines
Patent
Office, respondent.
E. I. DU PONT DE NEMOURS AND COMPANY, intervenor.
Jose
P.
Laurel
for
petitioner.
Solicitor General Juan R. Liwag and Solicitor Pacifico P. de Castro for
respondent.
J. A. Wolfson for intervenor.
LABRADOR, J.:
On November 8, 1948, Ong Ai Gui alias Tan Ai Gui filed an application (No.
803) with the Director of Patents for the registration of the following tradename: "20th Century Nylon Shirts Factory." It is stated in connection with
the application that the trade-name was used for the first time by the
applicant on September 12, 1941 for his business described as follows:
"General merchandise dealing principally in textiles, haberdasheries; also
operating as manufacturer of shirts, pants and other men's and woman's
wears." Upon the filing of the application, the same was referred by the
Director to an examiner. The latter in a report dated August 18, 1950 held
that the words "shirts factory" are not registrable; so the applicant made a
disclaimer of said words (shirts factory) inserting a statement to that effect
in his original application. On August 13, 1951 the Director ordered the
publication of the trade-name in the official Gazette.
Publication was made but before the expiration of the period for filing
opposition, Atty. J. A. Wolfson, on behalf of E. I. De Pont de Nemours and
Company, presented on February 27, 1952, an opposition on the ground
that the word "nylon" was a name coined by E. I. Du Pont de Nemours and
Company as the generic name of a synthetic fabric material, invented,
patented, manufactured and sold by it and that this word is a generic term;
that the use of the name "nylon" is descriptive or deceptively misdescriptive
"Nylon" is merely descriptive of the business of shirt-making if the

shirts are made of nylon. It is deceptively misdescriptive of said
business, if the shirts are not made of nylon. In either case, its
registration in the Principal Register as a trade-name, or as a part of
a trade-name, is expressly forbidden by subsection (e) of Section 4 of
Republic Act No. 166, as amended by Section 2 of Republic Act No.
638.
xxx
xxx
xxx
But even if the trade-name here in question were applied for under
the said subsection (f), "Nylon" would still have to be disclaimed.
Used in connection with shirt-making, "Nylon" can never become
distinctive, can never acquire secondary meaning, because it is a
generic term, like cotton, silk, linen, or ramie. Just as no length of
use and no amount of advertising will make "cotton," "silk," "linen,"
or "ramie," distinctive of shirts or of the business of making them, so
no length of use and no amount of advertising will make "nylon"
distinctive of shirts or of the business of manufacturing them."
Again the above decision applicant has filed an appeal to this Court. During
the pendency of this appeal, E. I. Du Pont de Nemours and Co. filed a
petition to intervene, which petition was granted. It has also, through
counsel, filed a brief answering the arguments of the applicant-appellant and
supporting the decision appealed from.
There are two main questions raised in the appeal, one legal and the other
procedural. The legal question is put up by the claim of the applicantappellant that while he admits that the term "nylon" is by itself alone
descriptive and generic, what he desires to register is not the said word alone
but the whole combination of "20th Century Nylon Shirts Factory." It is to be
noted in answer to this contention that the Director of Patents has not
completely denied the registration of the whole trade-name. He has made a
conditional denial only, permitting the registration of the name but with the
disclaimer of the terms "shirt factory" and "nylon." The import of the decision
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is that the trade-name may be registered, but applicant-appellant may not

be entitled to the exclusive use of the terms "shirts factory" and "nylon" as
against any other who may subsequently use the said terms, juris publici,
incapable of appropriation by any single individual to the exclusion of others.
This is supported by reason and authority.
The claim that a combination of words may be registered as a trade-name is

no justification for not applying the rules or principles hereinabove
mentioned. The use of a generic term in a trade-name is always conditional,
i. e., subject to the limitation that the registrant does not acquire the
exclusive right to the descriptive or generic term or word.
A word or a combination of words which is merely descriptive of an

article of trade, or of its composition, characteristics, or qualities,
cannot be appropriated and protected as a trademark to the
exclusion of its use by others. The reason for this is that inasmuch
as all persons have an equal right to produce and vend similar
articles, they also have the right to describe them properly and to
use any appropriate to himself exclusively any word or expression,
properly descriptive of the article, its qualities, ingredients, or
characteristics, and thus limit other persons in the use of language
appropriate to the description of their manufactures, the right to the
use of such language being common to all. This rule excluding
descriptive terms has also been held to apply to trade-names. As to
whether words employed fall within this prohibition, it is said that
the true test is not whether they are exhaustively descriptive of the
article designated, but whether in themselves, and as they are
commonly used by those who understand their meaning, they are
reasonably indicative and descriptive of the thing intended. If they
are thus descriptive, and not arbitrary, they cannot be appropriated
from general use and become the exclusive property of anyone. (52
Am. Jur. 542-543.) .
. . . A combination of marks or words may constitute a valid

trademark or (in the case of words) a tradename even though some
of the constituent portions thereof would not be subject, separately,
to exclusive appropriation as such. Thus, although a word may be
descriptive and not subject to exclusive use as a trademark, it may
properly become the subject of a trademark by combination with
another word or term which is nondescriptive, although no exclusive
right to then descriptive word or term id created . . . (52 Am. Jur.
553.)
The citation of appellant himself supports the decision thus: ". . . although
perhaps not entitled to protection against infringement by the use of the
descriptive matter by another." (Frost vs. Rindskopt, 42 Fed. 408.)
It must also be noted that no claim is made in the application that the tradename sought to be registered has acquired what is known as a secondary
meaning within the provisions of paragraph (f) of section 4 of Republic Act
No. 166. All that the applicant declares in his statement accompanying his
application is that the said trade-name has been continuously used by it in
business in the Philippines for about seven years, without allegation or proof
that the trade-name has become distinctive of the applicant's business or
services. Furthermore, the use of the term "nylon" in the trade-name is both
"descriptive" and "deceptively and misdescriptive" of the applicant-appellant's
business, for apparently he does not use nylon in the manufacture of the
shirts, pants and wears that he produces and sells. How can a secondary
meaning be acquired if appellant's products are not made of nylon? Certainly
no exclusive right can be acquired by deception of fraud.
. . . If the trade-name consists of a descriptive word, no monopoly

of the right to use the same can be acquired. This is but a corollary
of the proposition that a descriptive word cannot be the subject of a
trade mark. G. & C. Merriam Co. vs. Salfield (C. C. A.) 198, 369.
Other may use the same or similar descriptive word in connection
with their own wares, provided they take proper steps to prevent
the public being deceived. . . . (Richmond Remedies Co. vs. Dr. Miles The procedural question arises from the fact that after the Director had
Medical Co., 16 E. (sd) 598.)
ordered publication and notwithstanding dismissal of an opposition, the
Director nevertheless conditionally denied the application after its publication
. . . The so-called descriptive terms, which may be used to described
and failed to give applicant opportunity for a hearing, as specifically required
the product adequately, can not be monopolized by a single user
by section 7 of Republic Act No. 166.
and are available to all. It is only natural that the trade will prefer
those marks which bear some reference to the article itself. It is argued that after approval of the findings of the commissioner to whom
Therefore, even those descriptive marks which are distinctive by the application id referred and giving of the order of publication, it becomes
themselves can be appropriated by others with impunity. A the ministerial duty of the Director to issue the corresponding certificate of
descriptive word may be admittedly distinctive, especially if the user registration and that his power is confined to this issuance alone. The answer
is the first creator of the article. It will, however, be denied to this argument is the fact that the law allows oppositions to be filed after
protection, not because it lacks distinctiveness, but rather because publication, thus:
others are equally entitled to its use. . . (2 Callman. Unfair
Sec. 8. Opposition. Any person who believes that he would be
Competition and Trade Marks, pp. 869-870.)
damaged by the registration of a mark or trade-name may, upon
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payment of the required fee and within thirty days after the
publication under the first paragraph of section seven hereof, file
with the Director an opposition to the application. Such opposition
shall be in writing and verified by the oppositor, or by any person on
his behalf who knows the facts, and shall specify the grounds on
which it is based and include a statement of the facts relied upon.
Copies of certificates of registration of marks or trade-names
registered in other countries or other supporting documents
mentioned in the opposition shall be filed therewith, together with
the translation thereof into English, if not in the English language.
For good cause shown and upon payment of the required surcharge,
the time for filing an opposition may be extended for an additional
thirty days by the Director, who shall notify the applicant of such
extension. (Republic Act No. 166.)
Of what use is the period given to oppositors to register their oppositions if
such oppositions are not to be given consideration at all, because the
Director has only the ministerial duty after publication to issue the certificate
of registration; the first is that conducted in the Office of the Director and
taking place prior to publication, and the second, that conducted after
publication, in which the public is given the opportunity to contest the
application. In the first, the application is referred to an examiner, who,
after study and investigation makes a report and recommendation to the
Director who, upon finding that applicant is entitled to registration, orders
publication of the publication. (Sec. 7, Rep. Act No. 166.) If he finds that
applicant is not entitled to registration, he may then and there dismiss the
application. In the second, opportunity is offered the public or any
interested party to come in and object to the petition (Sec. 8, Id.), giving
proofs and reasons for the objection, applicant being given opportunity also
to submit proofs or arguments in support of the application. (Sec. 9, Id.) It
is the decision of the Director, given after this hearing, or opportunity to
every interested party to be heard, that finally terminates the proceedings
and in which the registration is finally approved or disapproved. Thereafter,
notice of the issuance of the certificate of registration is published. (Sec.
10, Id.)
It is evident that the decision of the Director after the first step, ordering
publication, can not have any finality. Of what use is the second step in the
proceedings, if the Director is bound by his first decision, giving course to
the publication? His first decision is merely provisional, in the sense that the
application appears to be meritorious and is entitled to be given course
leading to the more formal and important second step of hearing and trial,
where the public and interested parties are allowed to take part.
The argument that the Director failed to comply with paragraph 2 of section
7, Republic Act No. 166 cannot be raised in the case at bar, because the
Director did not find that the applicant is not entitled to registration. He
actually found that he is entitled to registration and that is why an order for
the publication of the application was issued. How can the Director comply
with the provisions of said paragraph 2 if he did not disapprove the
applicant's petition for registration?
We, therefore, find that the errors assigned in the appeal have not been
committed id hereby respondent Director of Patents. His decision is hereby
affirmed, with costs against the applicant-appellant.
IPL | Aug10 |
2. It is not presently selling footwear under the trademark BATA in the

Philippines; and
3. It has no licensing agreement with any local entity or firm to sell its
products in the Philippines.
Evidence received by the Philippine Patent Office showed that Bata shoes
made by Gerbec and Hrdina of Czechoslovakia were sold in the Philippines
prior to World War II. Some shoes made by Bata of Canada were perhaps
also sold in the Philippines until 1948. However, the trademark BATA was
never registered in the Philippines by any foreign entity. Under the
circumstances, it was concluded that "opposer has, to all intents and
purposes, technically abandoned its trademark BATA in the Philippines."
Upon the other hand, the Philippine Patent Office found that New Olympian
Rubber Products Co., Inc.:
... has overwhelmingly and convincingly established its right to the
trademark BATA and consequently, its use and registration in its favor. There
is no gainsaying the truth that the respondent has spent a considerable
amount of money and effort in popularizing the trademark BATA for shoes in
the Philippines through the advertising media since it was lawfully used in
commerce on July 1, 1970. It can not be denied, therefore, that it is the
respondent-applicant's expense that created the enormous goodwill of the
trademark BATA in the Philippines and not the opposer as claimed in its
opposition to the registration of the BATA mark by the respondent.
G.R. No. L-53672 May 31, 1982
BATA
INDUSTRIES,
LTD., petitioner,
vs.
THE HONORABLE COURT OF APPEALS; TIBURCIO S. EVALLE,
DIRECTOR OF PATENTS, NEW OLYMPIAN RUBBER PRODUCTS CO.,
INC., respondents.
RESOLUTION
ABAD SANTOS, J.:
Additionally, on evidence of record, having also secured (three) copyright

registrations for the word BATA, respondent-applicant's right to claim
ownership of the trademark BATA in the Philippines, which it claims to be a
Tagalog word which literally means "a little child" (Exh. 5), is all the more
fortified.
The Philippine Patent Office dismissed the opposition and ordered the
registration of the trademark BATA in favor of the domestic corporation.
Appeal from the decision of the Philippine Patent Office was made to the
Court of Appeals by Bata Industries, Ltd. In a decision penned by Justice
Justiniano P. Cortez dated August 9, 1979, with Justices Mariano Serrano and
Jose B. Jimenez concurring, the PPO decision was reversed. A motion for
reconsideration filed by New Olympian Rubber Products Co., Inc. was denied
In Inter Partes Case No. 654 of the Philippine Patent Office, New Olympian on October 17, 1979, by the same justices.
Rubber Products Co., Inc. sought the registration of the mark BATA for However, in a resolution on a second motion for reconsideration penned by
casual rubber shoes. It alleged that it has used the mark since July 1, 1970. Justice Hugo E. Gutierrez who is now a member of this Court, to which
On October 27, 1980, the petition in this case was denied for lack of merit.
Petitioner moved to reconsider and as required, private respondent
submitted comments. A hearing on the motion for reconsideration was held
on June 7, 1982. This is Our resolution on the motion for reconsideration.
Registration was opposed by Bata Industries, Ltd., a Canadian corporation, Justices Corazon J. Agrava and Rodolfo A. Nocon concurred (with the former
filing a separate opinion), the decision of August 9, 1979, was set aside and
which alleged that it owns and has not abandoned the trademark BATA.
that of the Director of Patents was affirmed.
Stipulated by the parties were the following:
In addition to points of law, Bata Industries, Ltd. questions "the
1. Bata Industries, Ltd. has no license to do business in the Philippines;
circumstances surrounding the issuance of the questioned resolutions of the
IPL | Aug10 |
respondent Court of Appeals." In effect, it insinuates that there was

something wrong when a new set of justices rendered a completely different
decision.
It should be stated that there is nothing wrong and unusual when a decision
is reconsidered. This is so when the reconsideration is made by a division
composed of the same justices who rendered the decision but much more so
when the reconsideration is made by a different set of justices as happened
in this case. Obviously, the new set of justices would have a fresh
perspective unencumbered by the views expressed in the decision sought to
be reconsidered. Nor should it be a cause for wonder why Justices Gutierrez,
Agrava and Nocon had replaced the original justices. Justice Cortez resigned
to become a candidate for the governorship of Cagayan (he was elected),
while Justices Serrano and Jimenez retired upon reaching the age of 65.
On the merits, the extended resolution penned by Justice Gutierrez does not
have to be fortified by Us. We agree with Mr. Justice Gutierrez when he
says:
We are satisfied from the evidence that any slight goodwill generated by the
Czechoslovakian product during the Commonwealth years was completely
abandoned and lost in the more than 35 years that have passed since the
liberation of Manila from the Japanese troops.
The applicant-appellee has reproduced excerpts from the testimonies of the
opposer-appellant's witnesses to prove that the opposer-appellant was
never a user of the trademark BATA either before or after the war, that the
appellant is not the successor-in-interest of Gerbec and Hrdina who were
not is representatives or agents, and could not have passed any rights to
the appellant, that there was no privity of interest between the
Czechoslovakian owner and the Canadian appellant and that the
Czechoslovakian trademark has been abandoned in Czechoslovakia.
We agree with the applicant-appellee that more than substantial evidence
supports the findings and conclusions of the Director of Patents. The
appellant has no Philippine goodwill that would be damaged by the
registration of the mark in the appellee's favor. We agree with the decision
of the Director of Patents which sustains, on the basis of clear and
convincing evidence, the right of the appellee to the registration and
protection of its industrial property, the BATA trademark.
WHEREFORE, the motion for reconsideration is hereby denied for lack of
merit. No special pronouncement as to costs.
SO ORDERED.
10
IPL | Aug10 |
11
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. Escobar alleged that she had been manufacturing and
selling these products under the firm name "L & BM Commercial" since March
3, 1970.
Private respondent Barbizon Corporation, a corporation organized and doing
business under the laws of New York, U.S.A., opposed the application. It
claimed that:
The mark BARBIZON of respondent-applicant is confusingly similar to the
trademark BARBIZON which opposer owns and has not abandoned.
That opposer will be damaged by the registration of the mark BARBIZON and
its business reputation and goodwill will suffer great and irreparable injury.
That the respondent-applicant's use of the said mark BARBIZON which
resembles the trademark used and owned by opposer, constitutes an
unlawful appropriation of a mark previously used in the Philippines and not
abandoned and therefore a statutory violation of Section 4 (d) of Republic Act
No. 166, as amended. 1
This was docketed as Inter Partes Case No. 686 (IPC No. 686). After filing of
the pleadings, the parties submitted the case for decision.
G.R. No. 114508 November 19, 1999
On June 18, 1974, the Director of Patents rendered judgment dismissing the
opposition and giving due course to Escobar's application, thus:
PRIBHDAS J. MIRPURI, petitioner, vs.COURT OF APPEALS, DIRECTOR

WHEREFORE, the opposition should be, as it is hereby, DISMISSED.
OF PATENTS and the BARBIZON CORPORATION, respondents.
Accordingly, Application Serial No. 19010 for the registration of the
trademark BARBIZON, of respondent Lolita R. Escobar, is given due course.
PUNO, J.:
The Convention of Paris for the Protection of Industrial Property is a multilateral treaty which the Philippines bound itself to honor and enforce in this
country. As to whether or not the treaty affords protection to a foreign
corporation against a Philippine applicant for the registration of a similar
trademark is the principal issue in this case.
IT IS SO ORDERED. 2
This decision became final and on September 11, 1974, Lolita Escobar was
issued a certificate of registration for the trademark "Barbizon." The
trademark was "for use in "brassieres and lady's underwear garments like
panties." 3
IPL | Aug10 |
12
Escobar later assigned all her rights and interest over the trademark to wearing apparel: robes, pajamas, nightgowns and lingerie. A copy of the said
petitioner Pribhdas J. Mirpuri who, under his firm name then, the "Bonito certificate of registration is herewith enclosed as Annex "C."
Enterprises," was the sole and exclusive distributor of Escobar's "Barbizon"
products.
(d) All the above registrations are subsisting and in force and Opposer has
not abandoned the use of the said trademarks. In fact, Opposer, through a
In 1979, however, Escobar failed to file with the Bureau of Patents the wholly-owned Philippine subsidiary, the Philippine Lingerie Corporation, has
Affidavit of Use of the trademark required under Section 12 of Republic Act been manufacturing the goods covered by said registrations and selling them
(R.A.) No. 166, the Philippine Trademark Law. Due to this failure, the to various countries, thereby earning valuable foreign exchange for the
Bureau of Patents cancelled Escobar's certificate of registration.
country. As a result of respondent-applicant's misappropriation of Opposer's
BARBIZON trademark, Philippine Lingerie Corporation is prevented from
On May 27, 1981, Escobar reapplied for registration of the cancelled selling its goods in the local market, to the damage and prejudice of Opposer
trademark. Mirpuri filed his own application for registration of Escobar's and its wholly-owned subsidiary.
trademark. Escobar later assigned her application to herein petitioner and
this application was opposed by private respondent. The case was docketed (e) The Opposer's goods bearing the trademark BARBIZON have been used in
as Inter Partes Case No. 2049 (IPC No. 2049).
many countries, including the Philippines, for at least 40 years and has
enjoyed international reputation and good will for their quality. To protect its
registrations in countries where the goods covered by the registrations are
In its opposition, private respondent alleged that:
being sold, Opposer has procured the registration of the trademark
BARBIZON in the following countries: Australia, Austria, Abu Dhabi,
(a) The Opposer has adopted the trademark BARBIZON (word), sometime in
Argentina, Belgium, Bolivia, Bahrain, Canada, Chile, Colombia, Denmark,
June 1933 and has then used it on various kinds of wearing apparel. On
Ecuador, France, West Germany, Greece, Guatemala, Hongkong, Honduras,
August 14, 1934, Opposer obtained from the United States Patent Office a
Italy, Japan, Jordan, Lebanon, Mexico, Morocco, Panama, New Zealand,
more recent registration of the said mark under Certificate of Registration
Norway, Sweden, Switzerland, Syria, El Salvador, South Africa, Zambia,
No. 316,161. On March 1, 1949, Opposer obtained from the United States
Egypt, and Iran, among others;
Patent Office a more recent registration for the said trademark under
Certificate of Registration No. 507,214, a copy of which is herewith attached
as Annex "A." Said Certificate of Registration covers the following goods (f) To enhance its international reputation for quality goods and to further
promote goodwill over its name, marks and products, Opposer has
wearing apparel: robes, pajamas, lingerie, nightgowns and slips;
extensively advertised its products, trademarks and name in various
publications which are circulated in the United States and many countries
(b) Sometime in March 1976, Opposer further adopted the trademark
around the world, including the Philippines;
BARBIZON and Bee design and used the said mark in various kinds of
wearing apparel. On March 15, 1977, Opposer secured from the United
States Patent Office a registration of the said mark under Certificate of (g) The trademark BARBIZON was fraudulently registered in the Philippines
Registration No. 1,061,277, a copy of which is herein enclosed as Annex "B." by one Lolita R. Escobar under Registration No. 21920, issued on September
The said Certificate of Registration covers the following goods: robes, 11, 1974, in violation of Article 189 (3) of the Revised Penal Code and
Section 4 (d) of the Trademark Law. Herein respondent applicant acquired by
pajamas, lingerie, nightgowns and slips;
assignment the "rights" to the said mark previously registered by Lolita
Escobar, hence respondent-applicant's title is vitiated by the same fraud and
(c) Still further, sometime in 1961, Opposer adopted the trademark
criminal act. Besides, Certificate of Registration No. 21920 has been
BARBIZON and a Representation of a Woman and thereafter used the said
cancelled for failure of either Lolita Escobar or herein respondent-applicant,
trademark on various kinds of wearing apparel. Opposer obtained from the
to seasonably file the statutory affidavit of use. By applying for a reUnited States Patent Office registration of the said mark on April 5, 1983
registration of the mark BARBIZON subject of this opposition, respondentunder Certificate of Registration No. 1,233,666 for the following goods:
applicant seeks to perpetuate the fraud and criminal act committed by Lolita
Escobar.
IPL | Aug10 |
(h) Opposer's BARBIZON as well as its BARBIZON and Bee Design and
BARBIZON and Representation of a Woman trademarks qualify as wellknown trademarks entitled to protection under Article 6bis of the Convention
of Paris for the Protection of Industrial Property and further amplified by the
Memorandum of the Minister of Trade to the Honorable Director of Patents
dated October 25, 1983 [sic], 4 Executive Order No. 913 dated October 7,
13
declaring private respondent's opposition barred by res judicata and giving

due course to petitioner's application for registration, to wit:
WHEREFORE, the present Opposition in Inter Partes Case No. 2049 is hereby
DECLARED BARRED by res judicata and is hereby DISMISSED. Accordingly,
Application Serial No. 45011 for trademark BARBIZON filed by Pribhdas J.
1963 and the Memorandum of the Minister of Trade and Industry to the Mirpuri is GIVEN DUE COURSE.
Honorable Director of Patents dated October 25, 1983.
(i) The trademark applied for by respondent applicant is identical to
Opposer's BARBIZON trademark and constitutes the dominant part of
Opposer's two other marks namely, BARBIZON and Bee design and
BARBIZON and a Representation of a Woman. The continued use by
respondent-applicant of Opposer's trademark BARBIZON on goods belonging
to Class 25 constitutes a clear case of commercial and criminal piracy and if
allowed registration will violate not only the Trademark Law but also Article
189 of the Revised Penal Code and the commitment of the Philippines to an
international treaty. 5
SO ORDERED. 7
Private respondent questioned this decision before the Court of Appeals in
CA-G.R. SP No. 28415. On April 30, 1993, the Court of Appeals reversed the
Director of Patents finding that IPC No. 686 was not barred by judgment in
IPC No. 2049 and ordered that the case be remanded to the Bureau of
Patents for further proceedings, viz:
WHEREFORE, the appealed Decision No. 92-13 dated June 18, 1992 of the
Director of Patents in Inter Partes Case No. 2049 is hereby SET ASIDE; and
the case is hereby remanded to the Bureau of Patents for further
Replying to private respondent's opposition, petitioner raised the defense of proceedings, in accordance with this pronouncement. No costs. 8
res judicata.
In a Resolution dated March 16, 1994, the Court of Appeals denied
On March 2, 1982, Escobar assigned to petitioner the use of the business
9
name "Barbizon International." Petitioner registered the name with the reconsideration of its decision. Hence, this recourse.
Department of Trade and Industry (DTI) for which a certificate of
Before us, petitioner raises the following issues:
registration was issued in 1987.
Forthwith, private respondent filed before the Office of Legal Affairs of the 1. WHETHER OR NOT THE DECISION OF THE DIRECTOR OF PATENTS IN
INTER PARTES CASE NO. 686 RENDERED ON JUNE 18, 1974, ANNEX C
DTI a petition for cancellation of petitioner's business name.
HEREOF, CONSTITUTED RES JUDICATA IN SO FAR AS THE CASE BEFORE THE
On November 26, 1991, the DTI, Office of Legal Affairs, cancelled DIRECTOR OF PATENTS IS CONCERNED;
petitioner's certificate of registration, and declared private respondent the
2. WHETHER OR NOT THE DIRECTOR OF PATENTS CORRECTLY APPLIED THE
owner and prior user of the business name "Barbizon International." Thus:
PRINCIPLE OF RES JUDICATA IN DISMISSING PRIVATE RESPONDENT
OPPOSITION
TO
PETITIONER'S
APPLICATION
FOR
WHEREFORE, the petition is hereby GRANTED and petitioner is declared the BARBIZON'S
REGISTRATION
FOR
THE
TRADEMARK
BARBIZON,
WHICH
HAS
SINCE
owner and prior user of the business name "BARBIZON INTERNATIONAL"
under Certificate of Registration No. 87-09000 dated March 10, 1987 and RIPENED TO CERTIFICATE OF REGISTRATION NO. 53920 ON NOVEMBER 16,
issued in the name of respondent, is [sic] hereby ordered revoked and 1992;
cancelled. . . . . 6
3. WHETHER OR NOT THE REQUISITE THAT A "JUDGMENT ON THE MERITS"

REQUIRED A "HEARING WHERE BOTH PARTIES ARE SUPPOSED TO ADDUCE
Meanwhile, in IPC No. 2049, the evidence of both parties were received by
EVIDENCE" AND WHETHER THE JOINT SUBMISSION OF THE PARTIES TO A
the Director of Patents. On June 18, 1992, the Director rendered a decision
IPL | Aug10 |
14
CASE ON THE BASIS OF THEIR RESPECTIVE PLEADINGS WITHOUT Symbols have been used to identify the ownership or origin of articles for
PRESENTING TESTIMONIAL OR DOCUMENTARY EVIDENCE FALLS WITHIN several centuries. 15 As early as 5,000 B.C., markings on pottery have been
THE MEANING OF "JUDGMENT ON THE MERITS" AS ONE OF THE found by archaeologists. Cave drawings in southwestern Europe show bison
REQUISITES TO CONSTITUTE RES JUDICATA;
with symbols on their flanks. 16 Archaeological discoveries of ancient Greek
and Roman inscriptions on sculptural works, paintings, vases, precious
4. WHETHER A DECISION OF THE DEPARTMENT OF TRADE AND INDUSTRY stones, glassworks, bricks, etc. reveal some features which are thought to be
CANCELLING PETITIONER'S FIRM NAME "BARBIZON INTERNATIONAL" AND marks or symbols. These marks were affixed by the creator or maker of the
WHICH DECISION IS STILL PENDING RECONSIDERATION NEVER OFFERED article, or by public authorities as indicators for the payment of tax, for
IN EVIDENCE BEFORE THE DIRECTOR OF PATENTS IN INTER PARTES CASE disclosing state monopoly, or devices for the settlement of accounts between
NO. 2049 HAS THE RIGHT TO DECIDE SUCH CANCELLATION NOT ON THE
an entrepreneur and his workmen. 17
BASIS OF THE BUSINESS NAME LAW (AS IMPLEMENTED BY THE BUREAU OF
DOMESTIC TRADE) BUT ON THE BASIS OF THE PARIS CONVENTION AND
THE TRADEMARK LAW (R.A. 166) WHICH IS WITHIN THE ORIGINAL AND In the Middle Ages, the use of many kinds of marks on a variety of goods
was commonplace. Fifteenth century England saw the compulsory use of
EXCLUSIVE JURISDICTION OF THE DIRECTOR OF PATENTS. 10
identifying marks in certain trades. There were the baker's mark on bread,
bottlemaker's marks, smith's marks, tanner's marks, watermarks on paper,
Before ruling on the issues of the case, there is need for a brief background
etc. 18 Every guild had its own mark and every master belonging to it had a
on the function and historical development of trademarks and trademark
special mark of his own. The marks were not trademarks but police marks
law.
compulsorily imposed by the sovereign to let the public know that the goods
were not "foreign" goods smuggled into an area where the guild had a
A "trademark" is defined under R.A. 166, the Trademark Law, as including monopoly, as well as to aid in tracing defective work or poor craftsmanship to
"any word, name, symbol, emblem, sign or device or any combination
the artisan. 19 For a similar reason, merchants also used merchants' marks.
thereof adopted and used by a manufacturer or merchant to identify his
Merchants dealt in goods acquired from many sources and the marks enabled
goods and distinguish them from those manufactured, sold or dealt in by
them to identify and reclaim their goods upon recovery after shipwreck or
others. 11 This definition has been simplified in R.A. No. 8293, the
piracy. 20
Intellectual Property Code of the Philippines, which defines a "trademark" as
"any visible sign capable of distinguishing goods." 12 In Philippine
With constant use, the mark acquired popularity and became voluntarily
jurisprudence, the function of a trademark is to point out distinctly the origin
adopted. It was not intended to create or continue monopoly but to give the
or ownership of the goods to which it is affixed; to secure to him, who has
21 It was in the late 18th century
been instrumental in bringing into the market a superior article of customer an index or guarantee of quality.
when
the
industrial
revolution
gave
rise
to
mass production and distribution
merchandise, the fruit of his industry and skill; to assure the public that
of
consumer
goods
that
the
mark
became
an important instrumentality of
they are procuring the genuine article; to prevent fraud and imposition; and
22
By this time, trademarks did not merely identify the
to protect the manufacturer against substitution and sale of an inferior and trade and commerce.
goods;
they
also
indicated
the goods to be of satisfactory quality, and
13
different article as his product.
thereby stimulated further purchases by the consuming public. 23 Eventually,
Modern authorities on trademark law view trademarks as performing three
distinct functions: (1) they indicate origin or ownership of the articles to
which they are attached; (2) they guarantee that those articles come up to
a certain standard of quality; and (3) they advertise the articles they
symbolize. 14
they came to symbolize the goodwill and business reputation of the owner of
the product and became a property right protected by law. 24 The common
law developed the doctrine of trademarks and tradenames "to prevent a
person from palming off his goods as another's, from getting another's
business or injuring his reputation by unfair means, and, from defrauding the
public." 25 Subsequently, England and the United States enacted national
legislation on trademarks as part of the law regulating unfair trade. 26 It
became the right of the trademark owner to exclude others from the use of
IPL | Aug10 |
his mark, or of a confusingly similar mark where confusion resulted in

diversion of trade or financial injury. At the same time, the trademark
served as a warning against the imitation or faking of products to prevent
the imposition of fraud upon the public. 27
15
offered and received therein, as to any other admissible matter which might
have been offered for that purpose, and all other matters that could have
been adjudged therein. 35 Res judicata is an absolute bar to a subsequent
action for the same cause; and its requisites are: (a) the former judgment or
order must be final; (b) the judgment or order must be one on the merits;
Today, the trademark is not merely a symbol of origin and goodwill; it is (c) it must have been rendered by a court having jurisdiction over the subject
often the most effective agent for the actual creation and protection of matter and parties; (d) there must be between the first and second actions,
goodwill. It imprints upon the public mind an anonymous and impersonal identity of parties, of subject matter and of causes of action. 36
guaranty of satisfaction, creating a desire for further satisfaction. In other
words, the mark actually sells the goods. 28 The mark has become the The Solicitor General, on behalf of respondent Director of Patents, has joined
"silent salesman," the conduit through which direct contact between the
trademark owner and the consumer is assured. It has invaded popular
culture in ways never anticipated that it has become a more convincing
selling point than even the quality of the article to which it refers. 29 In the
cause with petitioner. Both claim that all the four elements of res judicata
have been complied with: that the judgment in IPC No. 686 was final and
was rendered by the Director of Patents who had jurisdiction over the subject
matter and parties; that the judgment in IPC No. 686 was on the merits; and
last half century, the unparalleled growth of industry and the rapid that the lack of a hearing was immaterial because substantial issues were
development of communications technology have enabled trademarks, raised by the parties and passed upon by the Director of Patents. 37
tradenames and other distinctive signs of a product to penetrate regions
where the owner does not actually manufacture or sell the product itself. The decision in IPC No. 686 reads as follows:
Goodwill is no longer confined to the territory of actual market penetration;
it extends to zones where the marked article has been fixed in the public
xxx xxx xxx.
mind through advertising. 30 Whether in the print, broadcast or electronic
communications medium, particularly on the Internet, 31 advertising has Neither party took testimony nor adduced documentary evidence. They
paved the way for growth and expansion of the product by creating and submitted the case for decision based on the pleadings which, together with
earning a reputation that crosses over borders, virtually turning the whole the pertinent records, have all been carefully considered.
world into one vast marketplace.
This is the mise-en-scene of the present controversy. Petitioner brings this
action claiming that "Barbizon" products have been sold in the Philippines
since 1970. Petitioner developed this market by working long hours and
spending considerable sums of money on advertisements and promotion of
the trademark and its products. Now, almost thirty years later, private
respondent, a foreign corporation, "swaggers into the country like a
conquering hero," usurps the trademark and invades petitioner's market. 32
Accordingly, the only issue for my disposition is whether or not the herein
opposer would probably be damaged by the registration of the trademark
BARBIZON sought by the respondent-applicant on the ground that it so
resembles the trademark BARBIZON allegedly used and owned by the former
to be "likely to cause confusion, mistake or to deceive purchasers."
On record, there can be no doubt that respondent-applicant's sought-to-beregistered trademark BARBIZON is similar, in fact obviously identical, to
Justice and fairness dictate that private respondent be prevented from opposer's alleged trademark BARBIZON, in spelling and pronunciation. The
appropriating what is not its own. Legally, at the same time, private only appreciable but very negligible difference lies in their respective
respondent is barred from questioning petitioner's ownership of the appearances or manner of presentation. Respondent-applicant's trademark is
in bold letters (set against a black background), while that of the opposer is
trademark because of res judicata. 33
offered in stylish script letters.
Literally, res judicata means a matter adjudged, a thing judicially acted upon
or decided; a thing or matter settled by judgment. 34 In res judicata, the It is opposer's assertion that its trademark BARBIZON has been used in trade
judgment in the first action is considered conclusive as to every matter or commerce in the Philippines prior to the date of application for the
registration of the identical mark BARBIZON by the respondent-applicant.
IPL | Aug10 |
However, the allegation of facts in opposer's verified notice of opposition is

devoid of such material information. In fact, a reading of the text of said
verified opposition reveals an apparent, if not deliberate, omission of the
date (or year) when opposer's alleged trademark BARBIZON was first used
in trade in the Philippines (see par. No. 1, p. 2, Verified Notice of Opposition,
Rec.). Thus, it cannot here and now be ascertained whether opposer's
alleged use of the trademark BARBIZON could be prior to the use of the
identical mark by the herein respondent-applicant, since the opposer
attempted neither to substantiate its claim of use in local commerce with
any proof or evidence. Instead, the opposer submitted the case for decision
based merely on the pleadings.
On the other hand, respondent-applicant asserted in her amended
application for registration that she first used the trademark BARBIZON for
brassiere (or "brasseire") and ladies underwear garments and panties as
early as March 3, 1970. Be that as it may, there being no testimony taken
as to said date of first use, respondent-applicant will be limited to the filing
date, June 15, 1970, of her application as the date of first use (Rule 173,
Rules of Practice in Trademark Cases).
From the foregoing, I conclude that the opposer has not made out a case of
probable damage by the registration of the respondent-applicant's mark
BARBIZON.
16
decision based on their pleadings. The lack of evidence did not deter the
Director of Patents from ruling on the case, particularly on the issue of prior
use, which goes into the very substance of the relief sought by the parties.
Since private respondent failed to prove prior use of its trademark, Escobar's
claim of first use was upheld.
The judgment in IPC No. 686 being on the merits, petitioner and the Solicitor
General allege that IPC No. 686 and IPC No. 2049 also comply with the
fourth requisite of res judicata, i.e., they involve the same parties and the
same subject matter, and have identical causes of action.
Undisputedly, IPC No. 686 and IPC No. 2049 involve the same parties and the
same subject matter. Petitioner herein is the assignee of Escobar while
private respondent is the same American corporation in the first case. The
subject matter of both cases is the trademark "Barbizon." Private respondent
counter-argues, however, that the two cases do not have identical causes of
action. New causes of action were allegedly introduced in IPC No. 2049, such
as the prior use and registration of the trademark in the United States and
other countries worldwide, prior use in the Philippines, and the fraudulent
registration of the mark in violation of Article 189 of the Revised Penal Code.
Private respondent also cited protection of the trademark under the
Convention of Paris for the Protection of Industrial Property, specifically
Article 6bis thereof, and the implementation of Article 6bis by two
Memoranda dated November 20, 1980 and October 25, 1983 of the Minister
of Trade and Industry to the Director of Patents, as well as Executive Order
(E.O.) No. 913.
WHEREFORE, the opposition should be, as it is hereby, DISMISSED.

Accordingly, Application Serial No. 19010, for the registration of the
trademark BARBIZON of respondent Lolita R. Escobar, is given due course.
The Convention of Paris for the Protection of Industrial Property, otherwise
38
known as the Paris Convention, is a multilateral treaty that seeks to protect
industrial property consisting of patents, utility models, industrial designs,
The decision in IPC No. 686 was a judgment on the merits and it was error
trademarks, service marks, trade names and indications of source or
for the Court of Appeals to rule that it was not. A judgment is on the merits
appellations of origin, and at the same time aims to repress unfair
when it determines the rights and liabilities of the parties based on the
competition. 41 The Convention is essentially a compact among various
disclosed facts, irrespective of formal, technical or dilatory objections. 39 It
countries which, as members of the Union, have pledged to accord to citizens
is not necessary that a trial should have been conducted. If the court's
of the other member countries trademark and other rights comparable to
judgment is general, and not based on any technical defect or objection,
those accorded their own citizens by their domestic laws for an effective
and the parties had a full legal opportunity to be heard on their respective
42 In short, foreign nationals are to be
claims and contentions, it is on the merits although there was no actual protection against unfair competition.
given
the
same
treatment
in
each
of
the member countries as that country
hearing or arguments on the facts of the case. 40 In the case at bar, the
43 Nationals of the various member
Director of Patents did not dismiss private respondent's opposition on a makes available to its own citizens.
sheer technicality. Although no hearing was conducted, both parties filed nations are thus assured of a certain minimum of international protection of
their respective pleadings and were given opportunity to present evidence. their industrial property. 44
They, however, waived their right to do so and submitted the case for
IPL | Aug10 |
17
The Convention was first signed by eleven countries in Paris on March 20, sought, to be well-known in the country as being already the mark of a
1883. 45 It underwent several revisions at Brussels in 1900, at person entitled to the benefits of the Convention, and used for identical or
Washington in 1911, at The Hague in 1925, at London in 1934, at Lisbon in similar goods.
1958, 46 and at Stockholm in 1967. Both the Philippines and the United
States of America, herein private respondent's country, are signatories to Art. 6bis was first introduced at The Hague in 1925 and amended in Lisbon in
the Convention. The United States acceded on May 30, 1887 while the 1952. 51 It is a self-executing provision and does not require legislative
Philippines, through its Senate, concurred on May 10, 1965. 47 The
Philippines' adhesion became effective on September 27, 1965, 48 and from
this date, the country obligated itself to honor and enforce the provisions of
the Convention. 49
enactment to give it effect in the member country. 52 It may be applied

directly by the tribunals and officials of each member country by the mere
publication or proclamation of the Convention, after its ratification according
to the public law of each state and the order for its execution. 53
In the case at bar, private respondent anchors its cause of action on the first The essential requirement under Article 6bis is that the trademark to be
protected must be "well-known" in the country where protection is sought.
paragraph of Article 6bis of the Paris Convention which reads as follows:
The power to determine whether a trademark is well-known lies in the
"competent authority of the country of registration or use." This competent
Article 6bis
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
(1) The countries of the Union undertake, either administratively if their
a court. 54
legislation so permits, or at the request of an interested party, to refuse or
to cancel the registration and to prohibit the use, of a trademark which
constitutes a reproduction, an imitation, or a translation, liable to create Pursuant to Article 6bis, on November 20, 1980, then Minister Luis Villafuerte
confusion, of a mark considered by the competent authority of the country of the Ministry of Trade issued a Memorandum to the Director of Patents. The
of registration or use to be well-known in that country as being already the Minister ordered the Director that:
mark of a person entitled to the benefits of this Convention and used for
identical or similar goods. These provisions shall also apply when the Pursuant to the Paris Convention for the Protection of Industrial Property to
essential part of the mark constitutes a reproduction of any such well-known which the Philippines is a signatory, you are hereby directed to reject all
pending applications for Philippine registration of signature and other worldmark or an imitation liable to create confusion therewith.
famous trademarks by applicants other than its original owners or users.
(2) A period of at least five years from the date of registration shall be
allowed for seeking the cancellation of such a mark. The countries of the The conflicting claims over internationally known trademarks involve such
Union may provide for a period within which the prohibition of use must be name brands as Lacoste, Jordache, Vanderbilt, Sasson, Fila, Pierre Cardin,
Gucci, Christian Dior, Oscar de la Renta, Calvin Klein, Givenchy, Ralph Lauren,
sought.
Geoffrey Beene, Lanvin and Ted Lapidus.
(3) No time limit shall be fixed for seeking the cancellation or the prohibition
It is further directed that, in cases where warranted, Philippine registrants of
of the use of marks registered or used in bad faith. 50
such trademarks should be asked to surrender their certificates of
registration, if any, to avoid suits for damages and other legal action by the
This Article governs protection of well-known trademarks. Under the first
trademarks' foreign or local owners or original users.
paragraph, each country of the Union bound itself to undertake to refuse or
cancel the registration, and prohibit the use of a trademark which is a
reproduction, imitation or translation, or any essential part of which You are also required to submit to the undersigned a progress report on the
trademark constitutes a reproduction, liable to create confusion, of a mark matter.
considered by the competent authority of the country where protection is
IPL | Aug10 |
For immediate compliance. 55
18
(d) that the trademark has long been established and obtained goodwill and
international consumer recognition as belonging to one owner or source;
Three years later, on October 25, 1983, then Minister Roberto Ongpin issued
(e) that the trademark actually belongs to a party claiming ownership and
another Memorandum to the Director of Patents, viz:
has the right to registration under the provisions of the aforestated PARIS
CONVENTION.
Pursuant to Executive Order No. 913 dated 7 October 1983 which
strengthens the rule-making and adjudicatory powers of the Minister of
Trade and Industry and provides inter alia, that "such rule-making and 2. The word trademark, as used in this MEMORANDUM, shall include
adjudicatory powers should be revitalized in order that the Minister of Trade tradenames, service marks, logos, signs, emblems, insignia or other similar
and Industry can . . . apply more swift and effective solutions and remedies devices used for identification and recognition by consumers.
to old and new problems . . . such as infringement of internationally-known
tradenames and trademarks . . ." and in view of the decision of the 3. The Philippine Patent Office shall refuse all applications for, or cancel the
Intermediate Appellate Court in the case of LA CHEMISE LACOSTE, S.A., registration of, trademarks which constitute a reproduction, translation or
versus RAM SADWHANI [AC-G.R. SP NO. 13359 (17) June 1983] 56 which imitation of a trademark owned by a person, natural or corporate, who is a
affirms the validity of the MEMORANDUM of then Minister Luis R. Villafuerte citizen of a country signatory to the PARIS CONVENTION FOR THE
dated 20 November 1980 confirming our obligations under the PARIS PROTECTION OF INDUSTRIAL PROPERTY.
CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY to which
the Republic of the Philippines is a signatory, you are hereby directed to
implement measures necessary to effect compliance with our obligations
under said Convention in general, and, more specifically, to honor our
commitment under Section 6bis 57 thereof, as follows:
4. The Philippine Patent Office shall give due course to the Opposition in
cases already or hereafter filed against the registration of trademarks entitled
to protection of Section 6bis of said PARIS CONVENTION as outlined above,
by remanding applications filed by one not entitled to such protection for final
disallowance by the Examination Division.
1. Whether the trademark under consideration is well-known in the

Philippines or is a mark already belonging to a person entitled to the
benefits of the CONVENTION, this should be established, pursuant to
Philippine Patent Office procedures in inter partes and ex parte cases,
according to any of the following criteria or any combination thereof:
5. All pending applications for Philippine registration of signature and other

world-famous trademarks filed by applicants other than their original owners
or users shall be rejected forthwith. Where such applicants have already
obtained registration contrary to the abovementioned PARIS CONVENTION
and/or Philippine Law, they shall be directed to surrender their Certificates of
Registration to the Philippine Patent Office for immediate cancellation
(a) a declaration by the Minister of Trade and Industry that the trademark
proceedings.
being considered is already well-known in the Philippines such that
permission for its use by other than its original owner will constitute a
xxx xxx xxx. 58
reproduction, imitation, translation or other infringement;
(b) that the trademark is used in commerce internationally, supported by
proof that goods bearing the trademark are sold on an international scale,
advertisements,
the
establishment
of
factories,
sales
offices,
distributorships, and the like, in different countries, including volume or
other measure of international trade and commerce;
In the Villafuerte Memorandum, the Minister of Trade instructed the Director

of Patents to reject all pending applications for Philippine registration of
signature and other world-famous trademarks by applicants other than their
original owners or users. The Minister enumerated several internationallyknown trademarks and ordered the Director of Patents to require Philippine
registrants of such marks to surrender their certificates of registration.
(c) that the trademark is duly registered in the industrial property office(s)
of another country or countries, taking into consideration the date of such In the Ongpin Memorandum, the Minister of Trade and Industry did not
enumerate well-known trademarks but laid down guidelines for the Director
registration;
IPL | Aug10 |
of Patents to observe in determining whether a trademark is entitled to

protection as a well-known mark in the Philippines under Article 6bis of the
Paris Convention. This was to be established through Philippine Patent Office
procedures in inter partes and ex parte cases pursuant to the criteria
enumerated therein. The Philippine Patent Office was ordered to refuse
applications for, or cancel the registration of, trademarks which constitute a
reproduction, translation or imitation of a trademark owned by a person who
is a citizen of a member of the Union. All pending applications for
registration of world-famous trademarks by persons other than their original
owners were to be rejected forthwith. The Ongpin Memorandum was issued
pursuant to Executive Order No. 913 dated October 7, 1983 of then
President Marcos which strengthened the rule-making and adjudicatory
powers of the Minister of Trade and Industry for the effective protection of
consumers and the application of swift solutions to problems in trade and
industry. 59
19
countries, and cited protection under the Paris Convention and the Ongpin
Memorandum. The petition was dismissed by the Patent Office on the ground
of res judicata. It was found that in 1973 petitioner's predecessor-in-interest
filed two petitions for cancellation of the same trademark against
respondent's predecessor-in-interest. The Patent Office dismissed the
petitions, ordered the cancellation of registration of petitioner's trademark,
and gave due course to respondent's application for registration. This
decision was sustained by the Court of Appeals, which decision was not
elevated to us and became final andexecutory. 63
Wolverine claimed that while its previous petitions were filed under R.A. No.
166, the Trademark Law, its subsequent petition was based on a new cause
of action, i.e., the Ongpin Memorandum and E.O. No. 913 issued in 1983,
after finality of the previous decision. We held that the said Memorandum
and E.O. did not grant a new cause of action because it did "not amend the
Trademark Law," . . . "nor did it indicate a new policy with respect to the
Both the Villafuerte and Ongpin Memoranda were sustained by the Supreme registration in the Philippines of world-famous trademarks." 64 This
Court in the 1984 landmark case of La Chemise Lacoste, S.A. v. Fernandez. conclusion was based on the finding that Wolverine's two previous petitions
60 This court ruled therein that under the provisions of Article 6bis of the and subsequent petition dealt with the same issue of ownership of the
Paris Convention, the Minister of Trade and Industry was the "competent trademark. 65 In other words, since the first and second cases involved the
authority" to determine whether a trademark is well-known in this country. same issue of ownership, then the first case was a bar to the second case.
61
The Villafuerte Memorandum was issued in 1980, i.e., fifteen (15) years
after the adoption of the Paris Convention in 1965. In the case at bar, the
first inter partes case, IPC No. 686, was filed in 1970, before the Villafuerte
Memorandum but five (5) years after the effectivity of the Paris Convention.
Article 6bis was already in effect five years before the first case was
instituted. Private respondent, however, did not cite the protection of Article
6bis, neither did it mention the Paris Convention at all. It was only in 1981
when IPC No. 2049 was instituted that the Paris Convention and the
Villafuerte Memorandum, and, during the pendency of the case, the 1983
Ongpin Memorandum were invoked by private respondent.
In the instant case, the issue of ownership of the trademark "Barbizon" was
not raised in IPC No. 686. Private respondent's opposition therein was merely
anchored on:
(a) "confusing similarity" of its trademark with that of Escobar's;
(b) that the registration of Escobar's similar trademark will cause damage to
private respondent's business reputation and goodwill; and
(c) that Escobar's use of the trademark amounts to an unlawful appropriation
of a mark previously used in the Philippines which act is penalized under
Section 4 (d) of the Trademark Law.
The Solicitor General argues that the issue of whether the protection of
Article 6bis of the Convention and the two Memoranda is barred by res
In IPC No. 2049, private respondent's opposition set forth several issues
judicata has already been answered in Wolverine Worldwide, Inc. v. Court
summarized as follows:
ofAppeals. 62 In this case, petitioner Wolverine, a foreign corporation, filed
with the Philippine Patent Office a petition for cancellation of the registration
(a) as early as 1933, it adopted the word "BARBIZON" as trademark on its
certificate of private respondent, a Filipino citizen, for the trademark "Hush
products such as robes, pajamas, lingerie, nightgowns and slips;
Puppies" and "Dog Device." Petitioner alleged that it was the registrant of
the internationally-known trademark in the United States and other
IPL | Aug10 |
20
(b) that the trademark "BARBIZON" was registered with the United States
Patent Office in 1934 and 1949; and that variations of the same trademark,
i.e., "BARBIZON" with Bee design and "BARBIZON" with the representation
of a woman were also registered with the U.S. Patent Office in 1961 and
1976;
Respondent corporation also introduced in the second case a fact that did not
exist at the time the first case was filed and terminated. The cancellation of
petitioner's certificate of registration for failure to file the affidavit of use
arose only after IPC No. 686. It did not and could not have occurred in the
first case, and this gave respondent another cause to oppose the second
application. Res judicata extends only to facts and conditions as they existed
(c) that these marks have been in use in the Philippines and in many at the time judgment was rendered and to the legal rights and relations of
countries all over the world for over forty years. "Barbizon" products have the parties fixed by the facts so determined. 68 When new facts or
been advertised in international publications and the marks registered in 36 conditions intervene before the second suit, furnishing a new basis for the
countries worldwide;
claims and defenses of the parties, the issues are no longer the same, and
the former judgment cannot be pleaded as a bar to the subsequent action.
(d) Escobar's registration of the similar trademark "BARBIZON" in 1974 was 69
based on fraud; and this fraudulent registration was cancelled in 1979,
stripping Escobar of whatsoever right she had to the said mark;
It is also noted that the oppositions in the first and second cases are based
on different laws. The opposition in IPC No. 686 was based on specific
(e) Private respondent's trademark is entitled to protection as a well-known provisions of the Trademark Law, i.e., Section 4 (d) 70 on confusing
mark under Article 6bis of the Paris Convention, Executive Order No. 913,
similarity of trademarks and Section 8 71 on the requisite damage to file an
and the two Memoranda dated November 20, 1980 and October 25, 1983 of
opposition to a petition for registration. The opposition in IPC No. 2049
the Minister of Trade and Industry to the Director of Patents;
invoked the Paris Convention, particularly Article 6bis thereof, E.O. No. 913
and the two Memoranda of the Minister of Trade and Industry. This opposition
(f) Escobar's trademark is identical to private respondent's and its use on also invoked Article 189 of the Revised Penal Code which is a statute totally
the same class of goods as the latter's amounts to a violation of the
different from the Trademark Law. 72 Causes of action which are distinct and
Trademark Law and Article 189 of the Revised Penal Code.
independent from each other, although arising out of the same contract,
transaction, or state of facts, may be sued on separately, recovery on one
IPC No. 2049 raised the issue of ownership of the trademark, the first
being no bar to subsequent actions on others. 73 The mere fact that the
registration and use of the trademark in the United States and other
same relief is sought in the subsequent action will not render the judgment in
countries, and the international recognition and reputation of the trademark
the prior action operative as res judicata, such as where the two actions are
established by extensive use and advertisement of private respondent's
74 Res judicata therefore does not apply to the
products for over forty years here and abroad. These are different from the based on different statutes.
issues of confusing similarity and damage in IPC No. 686. The issue of prior instant case and respondent Court of Appeals did not err in so ruling.
use may have been raised in IPC No. 686 but this claim was limited to prior
use in the Philippines only. Prior use in IPC No. 2049 stems from private Intellectual and industrial property rights cases are not simple property
respondent's claim as originator of the word and symbol "Barbizon," 66 as cases. Trademarks deal with the psychological function of symbols and the
the first and registered user of the mark attached to its products which have effect of these symbols on the public at large. 75 Trademarks play a
been sold and advertised worldwide for a considerable number of years prior
to petitioner's first application for registration of her trademark in the
Philippines. Indeed, these are substantial allegations that raised new issues
and necessarily gave private respondent a new cause of action. Res judicata
does not apply to rights, claims or demands, although growing out of the
same subject matter, which constitute separate or distinct causes of action
and were not put in issue in the former action. 67
significant role in communication, commerce and trade, and serve valuable

and interrelated business functions, both nationally and internationally. For
this reason, all agreements concerning industrial property, like those on
trademarks and tradenames, are intimately connected with economic
development. 76 Industrial property encourages investments in new ideas
and inventions and stimulates creative efforts for the satisfaction of human
needs. They speed up transfer of technology and industrialization, and
thereby bring about social and economic progress. 77 These advantages
IPL | Aug10 |
21
have been acknowledged by the Philippine government itself. The trading system to bring about economic, cultural and technological
Intellectual Property Code of the Philippines declares that "an effective independence. 91
intellectual and industrial property system is vital to the development of
domestic and creative activity, facilitates transfer of technology, it attracts
The Philippines and the United States of America have acceded to the WTO
foreign investments, and ensures market access for our products." 78 The Agreement. This Agreement has revolutionized international business and
Intellectual Property Code took effect on January 1, 1998 and by its express economic relations among states, and has propelled the world towards trade
provision, 79 repealed the Trademark Law, 80 the Patent Law, 81 Articles liberalization and economic globalization. 92 Protectionism and isolationism
188 and 189 of the Revised Penal Code, the Decree on Intellectual Property, belong to the past. Trade is no longer confined to a bilateral system. There is
82 and the Decree on Compulsory Reprinting of Foreign Textbooks. 83 The now "a new era of global economic cooperation, reflecting the widespread
Code was enacted to strengthen the intellectual and industrial property desire to operate in a fairer and more open multilateral trading system." 93
system in the Philippines as mandated by the country's accession to the Conformably, the State must reaffirm its commitment to the global
community and take part in evolving a new international economic order at
Agreement Establishing the World Trade Organization (WTO). 84
the dawn of the new millenium.
The WTO is a common institutional framework for the conduct of trade
relations among its members in matters related to the multilateral and IN VIEW WHEREOF, the petition is denied and the Decision and Resolution of
plurilateral trade agreements annexed to the WTO Agreement. 85 The WTO the Court of Appeals in CA-G.R. SP No. 28415 are affirmed.
framework ensures a "single undertaking approach" to the administration
and operation of all agreements and arrangements attached to the WTO SO ORDERED.
Agreement. Among those annexed is the Agreement on Trade-Related
Aspects of Intellectual Property Rights or TRIPs. 86 Members to this
Agreement "desire to reduce distortions and impediments to international
trade, taking into account the need to promote effective and adequate
protection of intellectual property rights, and to ensure that measures and
procedures to enforce intellectual property rights do not themselves become
barriers to legitimate trade." To fulfill these objectives, the members have
agreed to adhere to minimum standards of protection set by several
Conventions. 87 These Conventions are: the Berne Convention for the MIRPURI VS CA 1999
Protection of Literary and Artistic Works (1971), the Rome Convention or the
International Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organisations, the Treaty on Intellectual Facts: In 1970, Escobar filed an application with the Bureau of Patents for
Property in Respect of Integrated Circuits, and the Paris Convention (1967), the registration of the trademark Barbizon for use in horsiers and ladies
undergarments (IPC No. 686). Private respondent reported Barbizon
as revised in Stockholm on July 14, 1967. 88
Corporation, a corporation organized and doing business under the laws of
New York, USA, opposed the application. It was alleged that its trademark is
A major proportion of international trade depends on the protection of confusingly similar with that of Escobar and that the registration of the said
intellectual property rights. 89 Since the late 1970's, the unauthorized trademark will cause damage to its business reputation and goodwill. In
counterfeiting of industrial property and trademarked products has had a 1974, the Director of Patents gave due course to the application. Escobar
considerable adverse impact on domestic and international trade revenues. later assigned all his rights and interest over the trademark to petitioner. In
90 The TRIPs Agreement seeks to grant adequate protection of intellectual 1979, Escobar failed to file with the Bureau the affidavit of use of the
property rights by creating a favorable economic environment to encourage trademark required under the Philippine Trademark Law. Due to this failure,
the inflow of foreign investments, and strengthening the multi-lateral the Bureau cancelled Escobars certificate of registration. In 1981, Escobar
and petitioner separately filed this application for registration of the same
IPL | Aug10 |
22
trademark. (IPC 2049). Private respondent opposed again. This time it in the subsequent action will not render the judgment in the prior action
alleged (1) that the said trademark was registered with the US Patent operating as res judicata, such as where the actions are based on different
Office; (2) that it is entitled to protection as well-known mark under Article statutes.
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 its
products which have been sold and advertised would arise for a considerable
number of years prior to petitioners first application. Indeed, these are
substantial allegations that raised new issues and necessarily gave 23. G.R. No. L-28499. September 30, 1977.]
respondents a new cause of action.
VICTORIA MILLING COMPANY, INC., petitioner, vs. ONG SU AND THE
HONORABLE TIBURCIO S. EVALLE, IN HIS CAPACITY AS DIRECTOR
OF PATENTS, respondents.
Moreover, the cancellation of petitioners certificate registration for failure to
file the affidavit of use arose after IPC 686. This gave respondent another FERNANDEZ, J.:
cause to oppose the second application.
The petitioner, Victorias Milling Company, Inc., a domestic corporation and
engaged in the manufacture and sale of refined granulated sugar is the
owner of the trademark "VICTORIAS" and d design registered in the
It is also to be noted that the oppositions in the first and second cases are Philippines Patent Office on November 9, 1961.
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 The respondent Ong Su is engaged in the repacking and sale of refine sugar
facts, may be sued on separately, recovery on one being no bar to and is the owner of the trademark "VALENTINE" and design registered in the
subsequent actions on others. The mere fact that the same relief is sought Philippines Patent Office on June 20, 1961.
IPL | Aug10 |
PETITIONERs CONTENTION
23
As regards the colors black and red used, it is fundamental in trademark

jurisprudence that color alone, unless displayed in a distinct or arbitrary
Victorias Mining Company, Inc. filed with the Philippine Patent Office design, does not function as a trademark, inasmuch as here, or elsewhere,
a petition to cancel the registration of the Ong Su trademark "Valentine."
the colors black and red are not so displayed by the petitioner, and are
The petitioner allied that its tradermrk "Victorias" and diamond primary colors commonly and freely used in the printing business.
design has distinctive of its sugar long before the respondent used its Finally, as regards the printing sequences or arrangement of such legends as
trademark; that the registration of "Valentine" and design has caused and weight, contents, and manufacturer or packer, I regard it as merely a matter
will cause great damage to petitioner by reason of mistake, confusion, or pertaining to the address of the goods' a matter involving unfair
deception among the purchasers because it is similar to its "Victorias" competition over which the Patent Office has no jurisdiction.
trademark; that registration was fradulently obtained by Ong Su and that
"Valentine" faisely suggests a connection with Saint Valentine or with an ISSUE: WHETHER OR NOT THE DIRECTOR OF PATENTS ERRED IN
institution or belief connected therewith.
ORDERING NOT TO CANCEL THE REGISTRATION OF THE
RESPONDENT.
Petitioner contends that the diamond design in its trademark is an
index of origin.
HELD: NO. The contention of petitioner that the diamond design in its
trademark is an index of origin has no merit. The petitioner has not shown
RESPONDENTs CONTENTION
that the design portion of the mark has been so used that purchasers
Respondent averred that he is doing business under the name and style recognize the design, standing alone, as indicating goods coming from the
"Valentine Packaging" and has registered the trademark "Valentine" with a registrant. As correctly stated by the Director of Patents, common geometric
design for sugar and was issued Certificate of Registration No. 8891 dated shapes such as diamonds ordinarily are not regarded as indicia of origin for
June 20, 1961; that the trademark "Victorias" with diamond design and the goods to which the remarks are applied unless they have acquired a
trademark "Valentine" with a design are two different marks; and that there secondary meaning. And there is no evidence that the diamond design in the
is absolutely no likelihood of confusion, mistake or deception to purchasers trademark of the petitioner has acquired a secondary meaning with respect
through the concurrent use of the petitioner's mark "Victorias" with a to its sugar business. The word "Victorias" is what Identifies the sugar
diamond design and the respondents' mark "Valentine" with a design in contained in the bag as the product of the petitioner. Indeed, the petitioner
has advertised its sugar in bags marked "Victorias" with oval, hexagor. and
connection with sugar.
other designs.
The Director of Patents denied the petition to cancel the certificate of
registration of the respondent Ong Su covering the trademark "Valentine" It seems clear that the words "Valentine" and "Victorias" and the names and
places of business of Victorias Milling Company, Inc. and Ong Su are the
and design because:
dominant features of the trademarks in question. The petitioner has not
There is no question that as to their respective literal designation the established such a substantial similarity between the two trademarks in
question as to warrant the cancellation of the trademark 'Valentine'of the
trademarks are different. One is VALENTINE while the other is VICTORIAS.
respondent Su.
The diamond Portion of petitioner's trademark argued that common
geometric shapes such as circles, ovals, squares, triangles, diamonds, and The Director of Patents correctly ruled that he has no jurisdiction over the
the like, when used as vehicles for display on word marks, ordinarily are not issue of unfair competition.
retarded as indicia of origin for goods to which the marks are applied, unless
of course they have acquired secondary meaning. I have scoured the
records completely to ascertain if the petitioner has submitted satisfactory
evidence in this regard, but I find absolutely nothing to base a ruling that
the triangle (sic) design has acquired a secondary meaning with respect to
its sugar business.
IPL | Aug10 | 24
subject of a trademark. Petitioner claims also that respondent committed
infringement with regard to the trademark Ang Tibay.
ISSUE: Whether the trademark Ang Tibay is registrable
HELD: YES. Ang Tibay is not a descriptive term within the meaning of
the Trademark Law but rather a fanciful or coined phrase which may
properly be appropriated as a trademark. And it must be noted that it
was the respondent who first used the term Ang Tibay and in fact it has
already acquired a secondary meaning in a proprietary connotation.
With regard to the infringement, it is proper to say that there is no
infringement as the goods sold by the parties are not the same. In fact, it
is more correct to conclude that the selection by petitioner of the same
trademark for pants and shirts was motivated by a desire to get a free
ride or the reputation and selling power it has acquired at the expense of
the respondent.
1. G.R. No. 48226. December 14, 1942.]

ANA L. ANG, petitioner, vs. TORIBIO TEODORO, respondent.
Ong Ai Gui vs Director of Patents
Toribio Teodoro has continuously used Ang Tibay both as a trademark

and tradename, in the manufacture and sale of slippers, shoes and
indoor baseballs since 1910. He formally registered it as trademark on
September 1915 and as a tradename in 1933. Petitioner registered the
same trademark Ang Tibay for pants and shirts in 1932. Petitioner
now assails the validity of respondents trademark. He contends that
the phrase Ang Tibay is a descriptive term and therefore, cannot be
Facts: Ong Ai Gui alias Tan Ai Gui filed an application with the Director of
Patents for the registration of the trade-name "20th Century Nylon Shirts
Factory." Described as "General merchandise dealing principally in textiles,
haberdasheries; also operating as manufacturer of shirts, pants and other
men's and woman's wears." The Director held that the words "shirts factory"
are not registrable; so the applicant made a disclaimer of said words (shirts
factory) inserting a statement to that effect in his original application.
Director ordered the publication of the trade-name in the official Gazette.ch
Publication was made but before the expiration of the period for filing
opposition, Atty. J. A. Wolfson, on behalf of E. I. De Pont de Nemours and
Company, presented an opposition on the ground that the word "nylon" was
a name coined by E. I. Du Pont de Nemours and Company as the generic
IPL | Aug10 |
25
name of a synthetic fabric material, invented, patented, manufactured and

sold by it and that this word is a generic term. While he dismissed the
opposition, the Director ruled that the application must be disapproved
unless the word "nylon" is also disclaimed.
that Unno Commercial Enterprises, Inc. merely acted as exclusive distributor

of All Montana wheat flour in the Philippines. Only the owner of a trademark,
trade name or service mark may apply for its registration and an importer,
broker, indentor or distributor acquires no rights to the trademark of the
goods he is dealing with in the absence of a valid transfer or assignment of
the trade mark.
Issue: Is "Nylon" a generic term?
On December 11, 1962, respondent General Milling Corporation filed an

application for the registration of the trademark "All Montana" to be used in
the sale of wheat flour. In view of the fact that the same trademark was
previously, registered in favor of petitioner Unno Commercial Enterprises,
Inc.. Respondent General Milling Corporation, in its application for
registration, alleged that it started using the trademark "All Montana" on
August 31, 1955 and subsequently was licensed to use the same by
Centennial Mills, Inc. by virtue of a deed of assignment executed on
September 20, 1962. On the other hand petitioner Unno Commercial
Enterprises, Inc. argued that the same trademark had been registered in its
favor on March 8, 1962 asserting that it started using the trademark on June
30, 1956, as indentor or broker for S.H. Huang Bros. & Co., a local firm.
Ruling: The Court ruled that used in connection with shirt-making, "Nylon"
can never become distinctive, can never acquire secondary meaning,
because it is a generic term, like cotton, silk, linen, or ramie. Just as no
length of use and no amount of advertising will make "cotton," "silk,"
"linen," or "ramie," distinctive of shirts or of the business of making them,
so no length of use and no amount of advertising will make "nylon"
distinctive of shirts or of the business of manufacturing them."
The Director of Patents, after hearing, ruled in favor of respondent General

Milling Corporation. and rendered its decision as follows:
ISSUE : Whether or not director of patents can issue cancellation of
the certification of registration?
G.R. No. L-28554 February 28, 1983

UNNO COMMERCIAL ENTERPRISES, INCORPORATED, petitioner,
HELD : The Court finds without merit petitioner's argument that the Director
of Patents could not order the cancellation of' its certificate of registration in
an interference proceeding and that the question of whether or not a
certificate of registration is to be cancelled should have been brought in
cancellation proceedings. Under Rule 178 of the Rules of the Patent Office in
Trademark Cases, 14 the Director of Patents is expressly authorized to order
the cancellation of a registered mark or trade name or name or other mark of
ownership in an inter partes case, such as the interference proceeding at bar.
The right to register trademark is based on ownership. 4 When the applicant

is not the owner of the trademark being applied for, he has no right to apply
for the registration of the same. 5 Under the Trademark Law only the owner
GENERAL MILLING CORPORATION and TIBURCIO S. EVALLE, in his
of the trademark, trade name or service mark used to distinguish his goods,
capacity as Director of Patents, respondents.
business or service from the goods, business or service of others is entitled
FACTS : The Court affirms respondent Director of Patent's decision declaring to register the same. 6
respondent General Milling Corporation as the prior user of the trademark
The term owner does not include the importer of the goods bearing the
"All Montana" on wheat flour in the Philippines and ordering the cancellation
trademark, trade name, service mark, or other mark of ownership, unless
of the certificate of registration for the same trademark previously issued in
such importer is actually the owner thereof in the country from which the
favor of petitioner Unno Commercial Enterprises, Incorporated, it appearing
vs.
IPL | Aug10 |
26
goods are imported. A local importer, however, may make application for the has never been registered in the Philippines by any foreign entity. Bata
registration of a foreign trademark, trade name or service mark if he is duly Industries does not sell footwear under the said trademark in the Philippines
authorized by the actual owner of the name or other mark of ownership. 7
nor does it have any licensing agreement with any local entity to sell its
product.
Thus, petitioner's contention that it is the owner of the mark "All Montana"
because of its certificate of registration issued by the Director of Patents,
must fail, since ownership of a trademark is not acquired by the mere fact of
registration alone. 9 Registration merely creates a prima facie presumption Evidence show that earlier, even before the World War II, Bata shoes made
of the validity of the registration, of the registrant's ownership of the by Gerbec and Hrdina (Czech company) were already sold in the country.
trademark and of the exclusive right to the use thereof. 10 Registration does Some shoes made by the petitioner may have been sold in the Philippines ntil
not perfect a trademark right. 11 As conceded itself by petitioner, evidence 1948. On the other hand, respondent spent money and effort to popularize
may be presented to overcome the presumption. Prior use by one will the trademark "BATA" since the 70's. Moreover, it also secures 3 copyright
controvert a claim of legal appropriation, by subsequent users. In the case registrations for the word "BATA". The Philippine Patent Office (PPO)
at bar, the Director of Patents found that "ample evidence was presented in dismissed the opposition by the petitioner while the Court of Appeals (CA)
the record that Centennial Mills, Inc. was the owner and prior user in the reversed said decision. However, a 2nd resolution by the CA affirmed the PPO
Philippines of the trademark 'All Montana' through a local importer and decision.
broker. Use of a trademark by a mere importer, indentor or exporter (the
Senior Party herein) inures to the benefit of the foreign manufacturer whose
goods are Identified by the trademark. The Junior Party has hereby Issue: Does the petitioner have the right to protect its goodwill
established a continuous chain of title and, consequently, prior adoption and alleged to be threatened with the registration of the mark?
use" and ruled that "based on the facts established, it is safe to conclude
that the Junior Party has satisfactorily discharged the burden of proving
priority of adoption and use and is entitled to registration." It is well-settled
NO. Bata Industries has no Philippine goodwill that would be damaged by the
that we are precluded from making further inquiry, since the findings of fact
registration of the mark.
of the Director of Patents in the absence of any showing that there was
grave abuse of discretion is binding on us 12 and the findings of facts by the Any slight goodwill obtained by the product before World War II was
Director of Patents are deemed conclusive in the Supreme Court provided completely abandoned and lost in the more than 35 years that passed since
that they are supported by substantial evidence. 13 Petitioner has failed to Manila's liberation from Japan. The petitioner never used the trademark
show that the findings of fact of the Director of Patents are not substantially either before or after the war. It is also not the successor-in-interest of
supported by evidence nor that any grave abuse of discretion was Gerbec & Hrdina and there there was no privity of interest between them,
committed.
Furthermore, the Czech trademark has long been abandoned in
Czechoslovakia.
Bata Industries v CA Digest
G.R. No. L-53672, May 31, 1982
Facts:
The respondent New Olympian Rubber Products sought to register the mark
"BATA" for casual rubber shoe products, alleging it had used the said mark
since the 1970s. The petitioner, a Canadian corporation opposed with its
allegations that it owns and has not abandoned said trademark. The
petitioner has no license to do business in the Philippines and the trademark

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IPL | Aug10 |

G.R. No. L-28499 September 30, 1977

I am of the firm belief that the diamond Portion of

Laboratories, 31 USPQ 24; Aladdin Mfg. Co. v. Mantle Lamp

THE RESPONDENT DIRECTOR OF PATENTS ERRED IN

of VICTORIAS sugar side by side with VALENTINE sugar, that

March 28, 1955

"Nylon" is merely descriptive of the business of shirt-making if the

is that the trade-name may be registered, but applicant-appellant may not

The claim that a combination of words may be registered as a trade-name is

A word or a combination of words which is merely descriptive of an

. . . A combination of marks or words may constitute a valid

. . . If the trade-name consists of a descriptive word, no monopoly

2. It is not presently selling footwear under the trademark BATA in the

Additionally, on evidence of record, having also secured (three) copyright

respondent Court of Appeals." In effect, it insinuates that there was

On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of

G.R. No. 114508 November 19, 1999

PRIBHDAS J. MIRPURI, petitioner, vs.COURT OF APPEALS, DIRECTOR

declaring private respondent's opposition barred by res judicata and giving

3. WHETHER OR NOT THE REQUISITE THAT A "JUDGMENT ON THE MERITS"

his mark, or of a confusingly similar mark where confusion resulted in

However, the allegation of facts in opposer's verified notice of opposition is

WHEREFORE, the opposition should be, as it is hereby, DISMISSED.

enactment to give it effect in the member country. 52 It may be applied

For immediate compliance. 55

1. Whether the trademark under consideration is well-known in the

5. All pending applications for Philippine registration of signature and other

In the Villafuerte Memorandum, the Minister of Trade instructed the Director

of Patents to observe in determining whether a trademark is entitled to

significant role in communication, commerce and trade, and serve valuable

Issue: One of the requisites of res judicata is identical causes of action. Do

As regards the colors black and red used, it is fundamental in trademark

ISSUE: Whether the trademark Ang Tibay is registrable

1. G.R. No. 48226. December 14, 1942.]

Ong Ai Gui vs Director of Patents

Toribio Teodoro has continuously used Ang Tibay both as a trademark

name of a synthetic fabric material, invented, patented, manufactured and

that Unno Commercial Enterprises, Inc. merely acted as exclusive distributor

Issue: Is "Nylon" a generic term?

On December 11, 1962, respondent General Milling Corporation filed an

The Director of Patents, after hearing, ruled in favor of respondent General

G.R. No. L-28554 February 28, 1983

The right to register trademark is based on ownership. 4 When the applicant

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