Taiwan Kolin vs Kolin Electronics [GR 209843.

March 25 2015]

The Facts: In Inter Partes No. 14-1998-00050, Kolin Electronics and Taiwan Kolin Corporation were opposing parties for the registration of KOLIN, Taiwan Kolin
opposing Kolin Electronics application for the use of the word Kolin claiming it is the prior registrant and user of the KOLIN trademark, having registered it in
Taipei, Taiwan on December 1, 1988. The Bureau of Legal Affairs however ruled in favour or Kolin Electronics, which decision was affirmed by the IPO Director
General. On February 23, 1996, Taiwan Kolin filed trademark Application No. 4-1996-10310 for the use of KOLIN on a combination of goods such as coloured
television, refrigerators, window-type and split-type air conditioners and others which allegedly belong to Classes 9, 11 and 21 of the Nice Classification (NCL).
The application was considered abandoned for failure to respond to the IPOs Paper No 5 requiring it to elect one class of goods for its coverage. The application
was revived through Application Serial no. 4-2002-011002, Taiwan Kolin electing Class 9 as its coverage. Kolin Electronics opposed the application, thru Inter
Partes Case no. 14-2006-00096, alleging that Taiwan Kolin seeks to register a mark that is identical, if not confusingly similar with its KOLIN trademark registered
on November 23, 2003 (Inter-Partes Case No. 14-1998-00050) under Class 9 of the NCL. In answer, Taiwan Kolin averred that it should be accorded the right of a
prior registrant, having registered the mark in other countries which are parties to the TRIPS Convention.

The IPO-BLA denied Taiwan Kolins application, citing Sec. 123(d) of the Intellectual Property Rights Code. It ruled that a mark cannot be registered if it is identical
to a previously registered mark belonging to another in respect of the same or closely related classification of goods. There was actual confusion in the case as
shown by the various emails it received from the public.

On appeal, the IPO Director General reversed the IPO-BLA decision. It ruled that product classification alone cannot serve as the decisive factor in the resolution
of whether or not the goods are related and that emphasis should be on the similarity of the products involved and not on the arbitrary classification or general
description of their properties or characteristics. As held, the mere fact that one person has adopted and used a particular trademark for his goods does not
prevent the adoption and use of the same trademark by others on articles of a different description.

Kolin Electronics elevated the case to the CA, which ruled in its favour, reiterating the ruling of the BLA-IPO that the mark sought to be registered by Taiwan Kolin
is confusingly similar to that registered to Kolin Elenctronics. Hence, Taiwan Kolin sought relief from the Supreme Court.

The Issue: W/N the products are closely-related.

RULING: No, the products are not related and the use of the trademark KOLIN on them would not likely cause confusion. To confer exclusive use of a trademark,
emphasis should be on the similarity or relatedness of the goods and/or services involved and not on the arbitrary classification or general description of their
properties or characteristics.
First, products classified under Class 9 can be further classified into five categories. Accordingly, the goods covered by the competing marks between Taiwan Kolin
and Kolin Electronics fall under different categories. Taiwan Kolins goods are categorized as audio visual equipments, while Kolin Electronics goods fall under
devices for controlling the distribution and use of electricity. Thus, it is erroneous to assume that all electronic products are closely related and that the coverage of
one electronic product necessarily precludes the registration of a similar mark over another.
Second, the ordinarily intelligent buyer is not likely to be confused. The distinct visual and aural differences between the two trademarks KOLIN, although appear
to be minimal, are sufficient to distinguish between one brand or another. The casual buyer is predisposed to be more cautious, discriminating, and would prefer to
mull over his purchase because the products involved are various kind of electronic products which are relatively luxury items and not considered affordable. They
are not ordinarily consumable items such as soy sauce, ketsup or soap which are of minimal cost. Hence, confusion is less likely.

[January 20, 2016. G.R. No. 198889]

UFC PHILIPPINES, INC. (now merged with NUTRI-ASIA, INC., with NUTRI-ASIA, INC. as the surviving entity) vs. BARRIO FIESTA MANUFACTURING
CORPORATION.

FACTS: Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized and existing under Philippine laws. 5 It is the emergent entity in a merger with UFC
Philippines, Inc. that was completed on February 11, 2009. 6 Respondent Barrio Fiesta Manufacturing Corporation (respondent) is likewise a corporation organized
and existing under Philippine laws.

On April 4, 2002, respondent filed Application No. 4-2002-002757 for the mark "PAPA BOY & DEVICE" for goods under Class 30, specifically for "lechon
sauce."7 The Intellectual Property Office (IPO) published said application for opposition in the IP Phil. e-Gazette released on September 8, 2006.

On December 11, 2006, petitioner filed with the IPO-BLA a Verified Notice of Opposition to the above-mentioned application and alleged that:

1.

The mark "PAPA" for use on banana catsup and other similar goods was first used [in] 1954 by Neri Papa, and thus, was taken from his surname;

2.

After using the mark "PAP A" for about twenty-seven (27) years, Neri Papa subsequently assigned the mark "PAPA" to Heman D. Reyes who, on September
17, 1981, filed an application to register said mark "PAP A" for use on banana catsup, chili sauce, achara, banana chips, and instant ube powder;

3.

On August 14, 1983, Heman D. Reyes was issued Certificate of Registration No. 32416;

4.

Certificate of] Registration No. 32416 was subsequently assigned to the following in successive fashion: Acres & Acres Food, Inc., Southeast Asia Food, Inc.,
Heinz-UFC Philippines, Inc., and Opposer UFC Philippines, Inc.;

5.

Last October 28, 2005, Heinz-UFC Philippines, Inc. filed Application Serial No. 4-2005-010788 which, in effect, is a re-registration of Registration No. 32416
which expired on August 11, 2003;

6.

Heman D. Reyes also filed on March 04, 1982 an application to register in the Supplemental Register the "PAPA BANANA CATSUP Label";

7.

On August 11, 1983, Heman D. Reyes was issued Certificate of Registration No. SR-6282 which was subsequently assigned to Acres & Acres Food, Inc.,
Southeast Asia Food, Inc., Heinz-UFC Philippines, Inc.;

8.

After its expiration, Opposer filed on November 15, 2006 Trademark Application Serial No. 4-2006-012346 for the re-registration of the "PAP A Label Design";

9.

The mark "PAP A KETSARAP" for use on banana sauce falling under Class 30 was also registered in favor of Acres & Acres Food, Inc. under Registration
No. 34681 issued on August 23, 1985 and renewed last August 23, 2005 by Heinz-UFC Philippines, Inc. for ten (10) years;

10. On November 07, 2006, Registration No. 34681 was assigned to Opposer;
11. Opposer has not abandoned the use of the mark "PAP A" and the variations thereof as Opposer has continued their use up to the present;

12. The mark "PAPA BOY & DEVICE" is identical to the mark "PAPA" owned by Opposer and duly registered in its favor, particularly the dominant feature thereof;
13. [With the] dominant feature of respondent-applicant's mark "PAPA BOY & DEVICE", which is Opposer's "PAPA" and the variations thereof, confusion and
deception is likely to result: The consuming public, particularly the unwary customers, will be deceived, confused, and mistaken into believing that
respondent-applicant's goods come from Opposer or are authorized by Opposer to Opposer's prejudice, which is particularly true considering that Opposer's
sister company, Southeast Asia Food, Inc., and its predecessors-in-interest have been major manufacturers and distributors of lechon sauce and other table
sauces since 1965 under its registered mark "Mang Tomas";
14. Respondent-applicant's mark "PAPA BOY & DEVICE" which nearly resembles Opposer's mark "PAPA" and the variations thereof will impress upon the
gullible or unsuspecting public that it is the same or related to Opposer as to source because its dominant part is the same as Opposer's mark and, thus, will
likely be mistaken to be the mark, or related to, or a derivative or variation of, Opposer's mark;
15. The goods covered by respondent-applicant's application fall under Class 30, the same Class under which Opposer's goods enumerated in its earlier issued
registrations;
16. The test of dominancy is now explicitly incorporated into law in Section 155 .1 of the IP Code which defines infringement as the colorable imitation of a
registered mark or a dominant feature thereof, and is provided for by jurisprudence;
17. As a corporation also engaged in the food business, Respondent-applicant knew and/or ought to know that Opposer and its predecessors-in-interest have
been using the mark "PAPA" and the variations thereof for the last fifty-two (52) years while its sister company is engaged in the business of manufacturing
and distributing "lechon sauce" and other table sauces for the last forty-one (41) years;
18. The approval of the subject application will violate Opposer's right to the exclusive use of its registered mark "PAPA" and the variations thereof per Section
138 of the IP Code;
19. The approval of the subject application has caused and will continue to cause great and irreparable damage and injury to Opposer;
20. Respondent-applicant filed the subject application fraudulently and in bad faith; and
21. Respondent-applicant is not entitled to register the subject mark in its favor.

In its verified opposition before the IPO, petitioner contended that "PAPA BOY & DEVICE" is confusingly similar with its "PAPA" marks inasmuch as the former
incorporates the term "PAP A," which is the dominant feature of petitioner's "PAPA" marks. Petitioner averred that respondent's use of "PAPA BOY & DEVICE"
mark for its lechon sauce product, if allowed, would likely lead the consuming public to believe that said lechon sauce product originates from or is authorized by

petitioner, and that the "PAPA BOY & DEVICE" mark is a variation or derivative of petitioner's "PAPA" marks. Petitioner argued that this was especially true
considering that petitioner's ketchup product and respondent's lechon sauce product are related articles that fall under the same Class 30.

Petitioner alleged that the registration of respondent's challenged mark was also likely to damage the petitioner, considering that its former sister company,
Southeast Asia Food, Inc., and the latter's predecessors-in-interest, had been major manufacturers and distributors of lechon and other table sauces since 1965,
such as products employing the registered "Mang Tomas" mark.

In its Verified Answer, respondent argued that there is no likelihood of confusion between petitioner's family of "PAPA" trademarks and respondent's "PAPA BOY &
DEVICE" trademark.

In its Verified Answer, respondent argued that there is no likelihood of confusion between petitioner's family of "PAPA" trademarks and respondent's "PAPA BOY &
DEVICE" trademark.

The case was referred to mediation but the parties failed to arrive at an amicable settlement. The case was thus set for preliminary conference. Subsequently, the
IPO-BLA directed the parties to file their respective position papers and draft decisions.

The IPO-BLA rendered a Decision on March 26, 2008 sustaining petitioner's Opposition and rejecting respondent's application for "PAPA BOY & DEVICE."

The file wrapper of PAPA BOY & Device subject matter of this case was forwarded to the Bureau of Trademarks (BOT) for appropriate action in accordance with
this Decision.

Respondent filed an appeal before the IPO Director General, who found it unmeritorious.

On June 2011, Ruled in favor of Barrio Fiesta to use the "Papa Boy & Device" brand. The CA said that UFC cannot trademark the word Papa because it is a
common term of endearment for a father. Hence the petition before the SC.

ISSUE: W/N the Court of Appeals erred in applying the holistic test and in reversing and setting aside the decision of the IPO-BLA and that of the IPO Director
General, both of which rejected respondent's application for the mark "PAPA BOY & DEVICE."

RULING: The petition has merit.

In Dermaline, Inc. v. Myra Pharmaceuticals, Inc.,43 we defined a trademark as "any distinctive word, name, symbol, emblem, sign, or device, or any combination
thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others." We
held that a trademark is "an intellectual property deserving protection by law."

The rights of the trademark owner are found in the Intellectual Property Code, which provides:

Section 147. Rights Conferred. - 147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent
from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the
trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood
of confusion shall be presumed.

Section 168. Unfair Competition, Rights, Regulation and Remedies. - 168.1. A person who has identified in the mind of the public the goods he manufactures
or deals in, his business or services from those of others, whether or not a registered mark is employed, has a property right in the goodwill of the said goods,
business or services so identified, which will be protected in the same manner as other property rights.

The guideline for courts in determining likelihood of confusion is found in A.M. No. 10-3-10-SC, or the Rules of Procedure for Intellectual Property Rights Cases,
Rule 18, which provides:

RULE
Evidence in Trademark Infringement and Unfair Competition Cases

18

SECTION 1. Certificate of Registration. - A certificate of registration of a mark shall be prima faci eevidence of:

a) the validity of the registration;

b) the registrant's ownership of the mark; and
c) the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate.

xxxx

SECTION 3. Presumption of Likelihood of Confusion. - Likelihood of confusion shall be presumed in case an identical sign or mark is used for identical goods or
services.

SECTION 4. Likelihood of Confusion in Other Cases. - In determining whether one trademark is confusingly similar to or is a colorable imitation of another, the
court must consider the general impression of the ordinary purchaser, buying under the normally prevalent conditions in trade and giving the attention such
purchasers usually give in buying that class of goods. Visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as
they are encountered in the realities of the marketplace must be taken into account. Where there are both similarities and differences in the marks, these must be
weighed against one another to see which predominates.
In determining likelihood of confusion between marks used on non-identical goods or services, several factors may be taken into account, such as, but not limited
to:

a) the strength of plaintiffs mark;

b) the degree of similarity between the plaintiffs and the defendant's marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.

"Colorable imitation" denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to
deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him to purchase the one supposing it to be the other.

SECTION 5. Determination of Similar and Dissimilar Goods or Services. - Goods or services may not be considered as being similar or dissimilar to each other on
the ground that, in any registration or publication by the Office, they appear in different classes of the Nice Classification.

In this case, the findings of fact of the highly technical agency, the Intellectual Property Office, which has the expertise in this field, should have been given great
weight by the Court of Appeals.

In trademark controversies, each case must be scrutinized according to its peculiar circumstances, such that jurisprudential precedents should only be made to
apply if they are specifically in point.

There are two tests used in jurisprudence to determine likelihood of confusion, namely the dominancy test used by the IPO, and the holistic test adopted by the
Court of Appeals.

A scrutiny of petitioner's and respondent's respective marks would show that the IPO-BLA and the IPO Director General correctly found the word "PAPA" as the
dominant feature of petitioner's mark "PAPA KETSARAP." Contrary to respondent's contention, "KETSARAP" cannot be the dominant feature of the mark as it is
merely descriptive of the product. Furthermore, it is the "PAPA" mark that has been in commercial use for decades and has established awareness and goodwill
among consumers.

We likewise agree with the IPO-BLA that the word "PAPA" is also the dominant feature of respondent's "PAPA BOY & DEVICE" mark subject of the application,
such that "the word 'PAPA' is written on top of and before the other words such that it is the first word/figure that catches the eyes." Furthermore, as the IPO
Director General put it, the part of respondent's mark which appears prominently to the eyes and ears is the phrase "PAPA BOY" and that is what a purchaser of
respondent's product would immediately recall, not the smiling hog.

We agree that respondent's mark cannot be registered. Respondent's mark is related to a product, lechon sauce, an everyday all-purpose condiment and sauce,
that is not subjected to great scrutiny and care by the casual purchaser, who knows from regular visits to the grocery store under what aisle to find it, in which
bottle it is contained, and approximately how much it costs. Since petitioner's product, catsup, is also a household product found on the same grocery aisle, in
similar packaging, the public could think that petitioner had expanded its product mix to include lechon sauce, and that the "PAPA BOY" lechon sauce is now part
of the "PAPA" family of sauces, which is not unlikely considering the nature of business that petitioner is in. Thus, if allowed. registration, confusion of business
may set in, and petitioner's hard-earned goodwill may be associated to the newer product introduced by respondent, all because of the use of the dominant feature

of petitioner's mark on respondent's mark, which is the word "PAPA." The words "Barrio Fiesta" are not included in the mark, and although printed on the label of
respondent's lechon sauce packaging, still do not remove the impression that "PAPA BOY" is a product owned by the manufacturer of "PAPA" catsup, by virtue of
the use of the dominant feature. It is possible that petitioner could expand its business to include lechon sauce, and that would be well within petitioner's rights, but
the existence of a "PAPA BOY" lechon sauce would already eliminate this possibility and deprive petitioner of its rights as an owner of a valid mark included in the
Intellectual Property Code.

The Court of Appeals likewise erred in finding that "PAPA," being a common term of endearment for one's father, is a word over which petitioner could not claim
exclusive use and ownership. The Merriam-Webster dictionary defines "Papa" simply as "a person's father." True, a person's father has no logical connection with
catsup products, and that precisely makes "PAPA" as an arbitrary mark capable of being registered, as it is distinctive, coming from a family name that started the
brand several decades ago. What was registered was not the word "Papa" as defined in the dictionary, but the word "Papa" as the last name of the original owner
of the brand. In fact, being part of several of petitioner's marks, there is no question that the IPO has found "PAPA" to be a registrable mark.

Respondent had an infinite field of words and combinations of words to choose from to coin a mark for its lechon sauce. While its claim as to the origin of the term
"PAPA BOY" is plausible, it is not a strong enough claim to overrule the rights of the owner of an existing and valid mark. Furthermore, this Court cannot equitably
allow respondent to profit by the name and reputation carefully built by petitioner without running afoul of the basic demands of fair play.

WHEREFORE, we hereby GRANT the petition. We SET ASIDE the June 23, 2011 Decision and the October 4, 2011 Resolution of the Court of Appeals in CAG.R. SP No. 107570, and REINSTATE the March 26, 2008Decision of the Bureau of Legal Affairs of the Intellectual Property Office (IPO-BLA) and the January
29, 2009Decision of the Director General of the IPO.

GSIS FAMILY BANK vs. BPI FAMILY BANK

The Case: Petitioner GSIS Family Bank was originally registered as Royal Savings Bank in 1971. Due to liquidity problems, it was placed under the receivership
of the Central Bank of the Philippines, and temporarily closed. When it reopened, it was acquired by Commercial Bank of Manila, and renamed Comsavings Bank,
Inc. In 1987, the GSIS acquired the bank from its owner. To improve its marketability, the bank sought SEC approval to change its corporate name to GSIS Family
Bank, a Thrift Bank. It also applied with the Department of Trade and Industry and the BSP authority to use the GSIS Family Bank, A Thrift Bank, which the DTI
and BSP approved. Hence, it had been using the name GSIS Family Bank-A Thrift Bank under SEC Registration No. 74135.

On the other hand, BPI Family Bank came about as a result of the merger between the Family Bank and Trust Company and the Bank of the Philippine Islands.
The former started out as Family First Savings Bank, later amended to Family Savings Bank and lastly, Family Bank and Trust Company. After the merger
with the BPI in 1985, BPI acquired all the rights, interests, privileges, and properties of Family Bank, including the right to use the names Family Bank, Family
First Savings Bank, and Family Bank and Trust Company. It was registered with the SEC as a wholly owned subsidiary of BPI, and the name BPI Family Bank
was registered with the Bureau of Domestic Trade to which it acquired reputation and good will. When it learned that petitioner was trying to use the word Family
Bank, BPI Family Bank petitioned the SEC Company Registration and Monitoring Department (SEC CRMD) to disallow or prevent the registration of the corporate
name GSIS Family Bank or any other corporate name with the words Family Bank, and to cancel any corporate name if any have been registered with the
SEC.

The SEC decided the issue in favour of BPI Family Bank, which it held, acquired the right to the use of the name of the absorbed corporation. Thus, BPI Family
Bank has a prior right to the use of the name Family Bank in the banking industry, arising from its long and extensive nationwide use, coupled with its registration
with the Intellectual Property Office (IPO) of the name Family Bank as its trade name. Applying the rule of priority in registration based on the legal maxim first in
time, first in right, the SEC CRMD concluded that BPI has the preferential right to the use of the name Family Bank. More, GSIS and Comsavings Bank were
then fully aware of the existence and use of the name Family Bank by FBTC prior to the latters merger with BPI. There also exists confusing similarity between
the corporate names of the two banks; though not identical, the corporate names are indisputably similar. It directed the petitioner to refrain from using the word
Family as part of its name. The SEC En Banc denied the appeal of petitioner, thus it raised the matter to the Court of Appeal, which in turn denied its petition. The
CA held that the SEC has absolute jurisdiction and control over all corporations, and approvals by the DTI and BSP of the petitioners corporate name do not
constitute authority for its lawful and valid use. Proof of actual confusion need not be shown, specially in this case when both companies belong to the banking
industry. The petitioner appealed to the Supreme Court.

The Issue:

Whether or not the word Family is generic entitling petitioner to use it in its corporate name.

Whether or not BPI Family Bank is guilty of forum shopping

Whether the BSP opinion that the use of the corporate name by petitioner is not similar or does not deceive or cause any deception to the public, should
be disregarded by the CA

The Ruling: We uphold the decision of the Court of Appeals.

Section 18 of the Corporation Code provides,

Section 18. Corporate name. No corporate name may be allowed by the Securities and Exchange Commission if the proposed name is identical or deceptively
or confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive, confusing or contrary to existing
laws. When a change in the corporate name is approved, the Commission shall issue an amended certificate of incorporation under the amended name.

In Philips Export B.V. v. Court of Appeals, this Court ruled that to fall within the prohibition of the law on the right to the exclusive use of a corporate name, two
requisites must be proven, namely:

(1) that the complainant corporation acquired a prior right over the use of such corporate name; and

(2) the proposed name is either

(a) identical or

(b) deceptive or confusingly similar to that of any existing corporation or to any other name already protected by law; or

(c) patently deceptive, confusing or contrary to existing law.

These two requisites are present in this case. On the first requisite of a prior right, Industrial Refractories Corporation of the Philippines v. Court of Appeals (IRCP
case)[3] is instructive. In that case, Refractories Corporation of the Philippines (RCP) filed before the SEC a petition to compel Industrial Refractories Corporation
of the Philippines (IRCP) to change its corporate name on the ground that its corporate name is confusingly similar with that of RCPs such that the public may be
confused into believing that they are one and the same corporation. The SEC and the Court of Appeals found for petitioner, and ordered IRCP to delete or drop
from its corporate name the word Refractories. Upon appeal of IRCP, this Court upheld the decision of the CA.

Applying the priority of adoption rule to determine prior right, this Court said that RCP has acquired the right to use the word Refractories as part of its corporate
name, being its prior registrant. In arriving at this conclusion, the Court considered that RCP was incorporated on October 13, 1976 and since then continuously
used the corporate name Refractories Corp. of the Philippines. Meanwhile, IRCP only started using its corporate name Industrial Refractories Corp. of the
Philippines when it amended its Articles of Incorporation on August 23, 1985.

In this case, respondent was incorporated in 1969 as Family Savings Bank and in 1985 as BPI Family Bank. Petitioner, on the other hand, was incorporated as
GSIS Family Thrift Bank only in 2002, or at least seventeen (17) years after respondent started using its name. Following the precedent in the IRCP case, we
rule that respondent has the prior right over use of the corporate name.
The second requisite in the Philips Export case likewise obtains on two points: the proposed name is (a) identical or (b) deceptive or confusingly similar to that of
any existing corporation or to any other name already protected by law.

On the first point (a), the words Family Bank present in both petitioner and respondents corporate name satisfy the requirement that there be identical names in
the existing corporate name and the proposed one. Respondent cannot justify its claim under Section 3 of the Revised Guidelines in the Approval of Corporate and
Partnership Names, to wit:

1.

The name shall not be identical, misleading or confusingly similar to one already registered by another corporation or partnership with the Commission or
a sole proprietorship registered with the Department of Trade and Industry.

If the proposed name is similar to the name of a registered firm, the proposed name must contain at least one distinctive word different from the name of the
company already registered.

Section 3 states that if there be identical, misleading or confusingly similar name to one already registered by another corporation or partnership with the SEC, the
proposed name must contain at least one distinctive word different from the name of the company already registered. To show contrast with respondents
corporate name, petitioner used the words GSIS and thrift. But these are not sufficiently distinct words that differentiate petitioners corporate name from
respondents. While GSIS is merely an acronym of the proper name by which petitioner is identified, the word thrift is simply a classification of the type of bank
that petitioner is. Even if the classification of the bank as thrift is appended to petitioners proposed corporate name, it will not make the said corporate name
distinct from respondents because the latter is likewise engaged in the banking business.

This Court used the same analysis in Ang mga Kaanib sa Iglesia ng Dios Kay Kristo Hesus, H.S.K. sa Bans ang Pilipinas, Inc. v. Iglesia ng Dios Kay Cristo Jesus,
Haligi at Suhay ng Katotohanan. In that case, Iglesia ng Dios Kay Cristo Jesus filed a case before the SEC to compel Ang mga Kaanib sa Iglesia ng Dios Kay
Kristo Hesus to change its corporate name, and to prevent it from using the same or similar name on the ground that the same causes confusion among their
members as well as the public. Ang mga Kaanib sa Iglesia ng Dios Kay Kristo Hesus claimed that it complied with SEC Memorandum Circular No. 14-2000 by
adding not only two, but eight words to their registered name, to wit: Ang Mga Kaanib and Sa Bansang Pilipinas, Inc., which effectively distinguished it from
Iglesia ng Dios Kay Cristo Jesus. This Court rejected the argument, thus:

The additional words Ang Mga Kaanib and Sa Bansang Pilipinas, Inc. in petitioners name are, as correctly observed by the SEC, merely descriptive of and also
referring to the members, or kaanib, of respondent who are likewise residing in the Philippines. These words can hardly serve as an effective differentiating
medium necessary to avoid confusion or difficulty in distinguishing petitioner from respondent. This is especially so, since both petitioner and respondent
corporations are using the same acronym H.S.K.; not to mention the fact that both are espousing religious beliefs and operating in the same place. Xxx

On the second point (b), there is a deceptive and confusing similarity between petitioners proposed name and respondents corporate name, as found by the
SEC. In determining the existence of confusing similarity in corporate names, the test is whether the similarity is such as to mislead a person using ordinary care
and discrimination. And even without such proof of actual confusion between the two corporate names, it suffices that confusion is probable or likely to occur.

Petitioners corporate name is GSIS Family BankA Thrift Bank and respondents corporate name is BPI Family Bank. The only words that distinguish the two
are BPI, GSIS, and Thrift. The first two words are merely the acronyms of the proper names by which the two corporations identify themselves; and the third
word simply describes the classification of the bank. The overriding consideration in determining whether a person, using ordinary care and discrimination, might
be misled is the circumstance that both petitioner and respondent are engaged in the same business of banking. The likelihood of confusion is accentuated in
cases where the goods or business of one corporation are the same or substantially the same to that of another corporation.

Respondent alleged that upon seeing a Comsavings Bank branch with the signage GSIS Family Bank displayed at its premises, some of the respondents
officers and their clients began asking questions. These include whether GSIS has acquired Family Bank; whether there is a joint arrangement between GSIS and
Family Bank; whether there is a joint arrangement between BPI and GSIS regarding Family Bank; whether Comsavings Bank has acquired Family Bank; and
whether there is there an arrangement among Comsavings Bank, GSIS, BPI, and Family Bank regarding BPI Family Bank and GSIS Family Bank.

The SEC made a finding that [i]t is not a remote possibility that the public may entertain the idea that a relationship or arrangement indeed exists between BPI
and GSIS due to the use of the term Family Bank in their corporate names.

Findings of fact of quasi-judicial agencies, like the SEC, are generally accorded respect and even finality by this Court, if supported by substantial evidence, in
recognition of their expertise on the specific matters under their consideration, more so if the same has been upheld by the appellate court, as in this case.

Petitioner cannot argue that the word family is a generic or descriptive name, which cannot be appropriated exclusively by respondent. Family, as used in
respondents corporate name, is not generic. Generic marks are commonly used as the name or description of a kind of goods, such as Lite for beer or
Chocolate Fudge for chocolate soda drink. Descriptive marks, on the other hand, convey the characteristics, function, qualities or ingredients of a product to one
who has never seen it or does not know it exists, such as Arthriticare for arthritis medication.

Under the facts of this case, the word family cannot be separated from the word bank. In asserting their claims before the SEC up to the Court of Appeals, both
petitioner and respondent refer to the phrase Family Bank in their submissions. This coined phrase, neither being generic nor descriptive, is merely suggestive
and may properly be regarded as arbitrary. Arbitrary marks are words or phrases used as a mark that appear to be random in the context of its use. They are
generally considered to be easily remembered because of their arbitrariness. They are original and unexpected in relation to the products they endorse, thus,
becoming themselves distinctive. Suggestive marks, on the other hand, are marks which merely suggest some quality or ingredient of goods, xxx The strength of
the suggestive marks lies on how the public perceives the word in relation to the product or service.

In Ang v. Teodoro, this Court ruled that the words Ang Tibay is not al descriptive term within the meaning of the Trademark Law but rather a fanciful or coined
phrase. In so ruling, this Court considered the etymology and meaning of the Tagalog words, Ang Tibay to determine whether they relate to the quality or
description of the merchandise to which respondent therein applied them as trademark, thus:

We find it necessary to go into the etymology and meaning of the Tagalog words Ang Tibay to determine whether they are a descriptive term, i.e., whether they
relate to the quality or description of the merchandise to which respondent has applied them as a trade-mark. The word ang is a definite article meaning the in
English. It is also used as an adverb, a contraction of the word anong (what or how). For instance, instead of saying, Anong ganda! (How beautiful!), we
ordinarily say, Ang ganda! Tibay is a root word from which are derived the verb magpatibay (to strengthen); the nouns pagkamatibay (strength, durability),
katibayan (proof, support, strength), katibaytibayan (superior strength); and the adjectives matibay (strong, durable, lasting), napakatibay (very strong), kasintibay
or magkasintibay (as strong as, or of equal strength). The phrase Ang Tibay is an exclamation denoting admiration of strength or durability. For instance, one who
tries hard but fails to break an object exclaims, Ang tibay! (How strong!) It may also be used in a sentence thus, Ang tibay ng sapatos mo! (How durable your
shoes are!) The phrase ana tibay is never used adjectively to define or describe an object. One does not say, ang tibay sapatos or sapatos ang tibay to mean
durable shoes, but matibay na sapatos or sapatos na matibay.

From all of this we deduce that Ang Tibay is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may
properly and legally be appropriated as a trade-mark or trade-name, xxx (Underscoring supplied).

The word family is defined as a group consisting of parents and children living together in a household or a group of people related to one another by blood or
marriage. Bank, on the other hand, is defined as a financial establishment that invests money deposited by customers, pays it out when requested, makes loans
at interest, and exchanges currency. By definition, there can be no expected relation between the word family and the banking business of respondent. Rather,

the words suggest that respondents bank is where family savings should be deposited. More, as in the Ang case, the phrase family bank cannot be used to
define an object.

Petitioners argument that the opinion of the BSP and the certificate of registration granted to it by the DTI constitute authority for it to use GSIS Family Bank as
corporate name is also untenable.

The enforcement of the protection accorded by Section 18 of the Corporation Code to corporate names is lodged exclusively in the SEC. The jurisdiction of the
SEC is not merely confined to the adjudicative functions provided in Section 5 of the SEC Reorganization Act,[25] as amended.[26] By express mandate, the SEC
has absolute jurisdiction, supervision and control over all corporations.[27] It is the SECs duty to prevent confusion in the use of corporate names not only for the
protection of the corporations involved, but more so for the protection of the public. It has authority to de-register at all times, and under all circumstances
corporate names which in its estimation are likely to generate confusion.

The SEC correctly applied Section 18 of the Corporation Code, and Section 15 of SEC Memorandum Circular No. 14-2000, pertinent portions of which provide:

In implementing Section 18 of the Corporation Code of the Philippines (BP 69), the following revised guidelines in the approval of corporate and partnership names
are hereby adopted for the information and guidance of all concerned:

xxx
1.

Registrant corporations or partnership shall submit a letter undertaking to change their corporate or partnership name in case another person or firm has
acquired a prior right to the use of the said firm name or the same is deceptively or confusingly similar to one already registered unless this undertaking is
already included as one of the provisions of the articles of incorporation or partnership of the registrant.

The SEC, after finding merit in respondents claims, can compel petitioner to abide by its commitment to change its corporate name in the event that another
person, firm or entity has acquired a prior right to use of said name or one similar to it.

Clearly, the only determination relevant to this case is that one made by the SEC in the exercise of its express mandate under the law. The BSP opinion invoked
by petitioner even acknowledges that the issue on whether a proposed name is identical or deceptively similar to that of any of existing corporation is matter
within the official jurisdiction and competence of the SEC.

Judicial notice may also be taken of the action of the IPO in approving respondents registration of the trademark BPI Family Bank and its logo on October 17,
2008. The certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrants ownership of the mark, and of the
registrants exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate.

Finally, we uphold the Court of Appeals finding that the issue of forum shopping was belatedly raised by petitioner and, thus, cannot anymore be considered at the
appellate stage of the proceedings. Petitioner raised the issue of forum shopping for the first time only on appeal. Petitioner argued that the complaints filed by
respondent did not contain certifications against non-forum shopping, in violation of Section 5, Rule 7 of the Rules of Court.

In S.C. Megaworld Construction and Development Corporation vs. Parada,[36] this Court said that objections relating to non-compliance with the verification and
certification of non-forum shopping should be raised in the proceedings below, and not for the first time on appeal. In that case, S.C. Megaworld argued that the
complaint for collection of sum of money should have been dismissed outright by the trial court on account of an invalid non-forum shopping certification. It alleged
that the Special Power of Attorney granted to Parada did not specifically include an authority for the latter to sign the verification and certification of non-forum
shopping, thus rendering the complaint defective for violation of Sections 4 and 5 of Rule 7 of the Rules of Court. On motion for reconsideration of the decision of
the Court of Appeals, petitioner raised for the first time, the issue of forum shopping. The Court ruled against S.C. Megaworld, thus:

It is well-settled that no question will be entertained on appeal unless it has been raised in the proceedings below. Points of law, theories, issues and arguments
not brought to the attention of the lower court, administrative agency or quasi-judicial body, need not be considered by a reviewing court, as they cannot be raised
for the first time at that late stage. Basic considerations of fairness and due process impel this rule. Any issue raised for the first time on appeal is barred by
estoppel.

In this case, the fact that respondent filed a case before the DTI was made known to petitioner long before the SEC rendered its decision. Yet, despite its
knowledge, petitioner failed to question the alleged forum shopping before the SEC. The exceptions to the general rule that forum shopping should be raised in the
earliest opportunity, as explained in the cited case of Young v. Keng Seng, do not obtain in this case.

WHEREFORE, the petition is DENIED. The decision of the Court of Appeals dated March 29, 2006 is hereby AFFIRMED.

Shangri-la International Hotel Management v. Developers Group of Companies (G.R. No. 159938)

Facts: R claims ownership SHANGRI-LA mark and S logo in the Philippines on the strength of its prior use thereof within the country. It filed an application
pursuant to Sections 2 and 4 of RA No. 166 as amended and was issued corresponding certificate of registration and since then, started using the mark and logo
in its restaurant business.
On the other hand, the Kuok family owns and operates a chain of hotels with interest in hotels and hotel-related transactions and has adopted the name
Shangri-La as part of the corporate names of all companies organized under its aegis. To centralize the operations of all Shangri-la hotels and the ownership of
the Shangri-La mark and S logo, the Kuok Group had incorporated several companies that form part of the SLIHM and has caused the registration of, and
in fact registered, the Shangri-La mark and S logo in the patent offices in different countries around the world.
P filed an Inter Partes Case, praying for the cancellation of the registration of the mark and logo issued to R on the ground that the same were illegally and
fraudulently obtained and appropriated.
R filed a complaint for TMI & Damages alleging that it has, for the last 8 years, been the prior exclusive user in the Philippines of the mark and logo in question and
the registered owner thereof for its restaurant and allied services.
P pointed the Paris Convention for the Protection of Industrial Property as affording security and protection to SLIHMs exclusive right to said mark and logo
claiming having used, since late 1975, the internationally known and specially-designed Shangri-La mark and S logo for all the hotels in their hotel chain.
The trial court came out with its decision rendering judgment in favor for R. P appealed to the CA which affirmed that of the lower courts decision and further
denied their MR.

Issue: Whether or not prior use of a mark is a requirement for registration.

Ruling: Under the provisions of the former trademark law, R.A. No. 166, as amended, which was in effect up to December 31, 1997, hence, the law in force at the
time of respondents application for registration of trademark, the root of ownership of a trademark is actual use in commerce. Section 2 of said law requires that
before a trademark can be registered, it must have been actually used in commerce and service for not less than two months in the Philippines prior to the filing of
an application for its registration.
While the present law on trademarks has dispensed with the requirement of prior actual use at the time of registration, the law in force at the time of registration
must be applied, and thereunder it was held that as a condition precedent to registration of trademark, trade name or service mark, the same must have been in
actual use in the Philippines before the filing of the application for registration.
Here, respondents own witness, Ramon Syhunliong, testified that a jeepney signboard artist allegedly commissioned to create the mark and logo submitted his
designs only in December 1982. This was two-and-a-half months after the filing of the respondents trademark application on October 18, 1982 with the BPTTT. It
was also only in December 1982 when the respondents restaurant was opened for business. Respondent cannot now claim before the Court that the certificate of
registration itself is proof that the two-month prior use requirement was complied with, what with the fact that its very own witness testified otherwise in the trial
court. And because at the time (October 18, 1982) the respondent filed its application for trademark registration of the Shangri-La mark and S logo,
respondent was not using these in the Philippines commercially, the registration is void.
Admittedly, the CA was not amiss in saying that the law requires the actual use in commerce of the said trade name and S logo in the Philippines. Hence,
consistent with its finding that the bulk of the petitioners evidence shows that the alleged use of the Shangri-La trade name was done abroad and not in the
Philippines, it is understandable for that court to rule in respondents. Unfortunately, however, what the CA failed to perceive is that there is a crucial
difference between the aforequoted Section 2 and Section 2-A of R.A. No. 166. For, while Section 2 provides for what is registrable, Section 2-A, on the
other hand, sets out how ownership is acquired. These are two distinct concepts.
Under Section 2, in order to register a trademark, one must be the owner thereof and must have actually used the mark in commerce in the Philippines for 2
months prior to the application for registration.Since ownership of the trademark is required for registration, Section 2-A of the same law sets out to define how
one goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce is also the test of ownership but the provision went further
by saying that the mark must not have been so appropriated by another. Additionally, it is significant to note that Section 2-A does not require that the actual use
of a trademark must be within the Hence, under R.A. No. 166, as amended, one may be an owner of a mark due to actual use thereof but not yet have the
right to register such ownership here due to failure to use it within the Philippines for two months.
While the petitioners may not have qualified under Section 2 of RA. No. 166 as a registrant neither did respondent DGCI, since the latter also failed to fulfill the 2month actual use requirement. What is worse, DGCI was not even the owner of the mark. For it to have been the owner, the mark must not have been already
appropriated (i.e.,used) by someone else. At the time of respondent DGCIs registration of the mark, the same was already being used by the petitioners,
albeit abroad, of which DGCIs president was fully aware.
However, while the Philippines was already a signatory to the Paris Convention, the IPC only took effect on January 1, 1988, and in the absence of a retroactivity
clause, R.A. No. 166 still applies. Consequently, the petitioners cannot claim protection under the Paris Convention. Nevertheless, with the double infirmity of lack
of two-month prior use, as well as bad faith in the respondents registration of the mark, it is evident that the petitioners cannot be guilty of infringement. It
would be a great injustice to adjudge the petitioners guilty of infringing a mark when they are actually the originator and creator thereof.

WHEREFORE, the instant petition is GRANTED. The assailed Decision and Resolution of the CA and the RTC are hereby SET ASIDE. Accordingly, the complaint
for is ordered DISMISSED.

SECTION 134. Opposition. Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within
thirty (30) days after the publication referred to in Subsection 133.2, file with the Office 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 registered in other countries or other supporting documents mentioned in the opposition shall be
filed therewith, together with the translation in 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 by the Director of Legal Affairs, who shall notify the applicant of such extension. The Regulations shall fix the maximum
period of time within which to file the opposition. (Sec. 8, R.A. No. 165a)

SECTION 135. Notice and Hearing. Upon the filing of an opposition, the Office shall serve notice of the filing on the applicant, and of the date of the hearing
thereof upon the applicant and the oppositor and all other persons having any right, title or interest in the mark covered by the application, as appear of record
in the Office. (Sec. 9, R.A. No. 165)

SECTION 153. Requirements of Petition; Notice and Hearing. Insofar as applicable, the petition for cancellation shall be in the same form as that provided in
Section 134 hereof, and notice and hearing shall be as provided in Section 135 hereof.

SECTION 155. Remedies; Infringement. Any person who shall, without the consent of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof
in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out
the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection

with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the
infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual
sale of goods or services using the infringing material. (Sec. 22, R.A. No 166a)

SECTION 168. Unfair Competition, Rights, Regulation and Remedies.

168.1. A person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those of others, whether or
not a registered mark is employed, has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the
same manner as other property rights.
168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in
which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce
said result, shall be guilty of unfair competition, and shall be subject to an action therefor.
168.3. In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed guilty of unfair
competition:
a.

Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer, either as to the goods
themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their
appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the
actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his
legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose;
b.

c.

Any person who by any artifice, or device, or who employs any other means calculated to induce the false belief that such person is offering the
services of another who has identified such services in the mind of the public; or
Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature
calculated to discredit the goods, business or services of another.

168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis. (Sec. 29, R.A. No. 166a)