Professional Documents
Culture Documents
SUPREME COURT
Manila
SECOND DIVISION
G.R. No. 185917
June 1, 2011
11. Denmark
12. Ecuador
37. Switzerland
13. Egypt
38. Singapore
14. Finland
15. France
40. Spain
41. Sweden
17. Germany
42. Taiwan
18. Greece
43. Thailand
44. Turkey
20. India
21. Indonesia
46. Uruguay
22. Ireland
23. Israel
48. Venezuela
24. Italy
49. Zimbabwe
25. Japan
The name and mark "Harvard" was adopted in 1639 as the name of
Harvard College6 of Cambridge, Massachusetts, U.S.A. The name and
mark "Harvard" was allegedly used in commerce as early as 1872.
Harvard University is over 350 years old and is a highly regarded
institution of higher learning in the United States and throughout the
world. Harvard University promotes, uses, and advertises its name
"Harvard" through various publications, services, and products in
foreign countries, including the Philippines. Harvard University further
alleged that the name and the mark have been rated as one of the
most famous brands in the world, valued between US $750,000,000
and US $1,000,000,000.
Harvard University alleged that in March 2002, it discovered, through
its international trademark watch program, Fredcos website
www.harvard-usa.com. The website advertises and promotes the
brand name "Harvard Jeans USA" without Harvard Universitys
consent. The websites main page shows an oblong logo bearing the
mark "Harvard Jeans USA," "Established 1936," and "Cambridge,
Massachusetts." On 20 April 2004, Harvard University filed an
administrative complaint against Fredco before the IPO for trademark
infringement and/or unfair competition with damages.lawphi1
Harvard University alleged that its valid and existing certificates of
trademark registration in the Philippines are:
Fredco alleged that it was formed and registered with the Securities
and Exchange Commission on 9 November 1995 and had since then
handled the manufacture, promotion and marketing of "Harvard"
clothing articles. Fredco alleged that at the time of issuance of
Registration No. 56561 to Harvard University, New York Garments had
already registered the mark "Harvard" for goods under Class 25.
Fredco alleged that the registration was cancelled on 30 July 1998
when New York Garments inadvertently failed to file an affidavit of
use/non-use on the fifth anniversary of the registration but the right to
the mark "Harvard" remained with its predecessor New York Garments
and now with Fredco.
1. Argentina
2. Benelux
3. Brazil
28. Mexico
4. Canada
5. Chile
30. Norway
6. China P.R.
31. Peru
7. Colombia
32. Philippines
8. Costa Rica
33. Poland
9. Cyprus
34. Portugal
35. Russia
the IPO in Appeal No. 14-07-09 Inter Partes Case No. 14-2005-00094
is hereby AFFIRMED.
SO ORDERED.13
Fredco filed a motion for reconsideration.
In its Resolution promulgated on 8 January 2009, the Court of Appeals
denied the motion for lack of merit.
Hence, this petition before the Court.
The Issue
SO ORDERED.8
The Director General ruled that more than the use of the trademark in
the Philippines, the applicant must be the owner of the mark sought to
be registered. The Director General ruled that the right to register a
trademark is based on ownership and when the applicant is not the
owner, he has no right to register the mark. The Director General noted
that the mark covered by Harvard Universitys Registration No. 56561
is not only the word "Harvard" but also the logo, emblem or symbol of
Harvard University. The Director General ruled that Fredco failed to
explain how its predecessor New York Garments came up with the
mark "Harvard." In addition, there was no evidence that Fredco or New
York Garments was licensed or authorized by Harvard University to
use its name in commerce or for any other use.
Thus, this Court has ruled that the Philippines is obligated to assure
nationals of countries of the Paris Convention that they are afforded an
effective protection against violation of their intellectual property rights
in the Philippines in the same way that their own countries are
obligated to accord similar protection to Philippine nationals.23
Article 8 of the Paris Convention has been incorporated in Section 37
of R.A. No. 166, as follows:
Section 37. Rights of foreign registrants. Persons who are nationals
of, domiciled in, or have a bona fide or effective business or
commercial establishment in any foreign country, which is a party to
any international convention or treaty relating to marks or trade-names,
or the repression of unfair competition to which the Philippines may be
a party, shall be entitled to the benefits and subject to the provisions of
this Act to the extent and under the conditions essential to give effect
to any such convention and treaties so long as the Philippines shall
continue to be a party thereto, except as provided in the following
paragraphs of this section.
xxxx
ARTICLE 6bis
(i) The countries of the Union undertake either administratively if their
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, imitation or translation, liable to
create confusion or a mark considered by the competent authority of
the country as being already the mark of a person entitled to the
benefits of the present Convention and used for identical or
similar goods. These provisions shall also apply when the
essential part of the mark constitutes a reproduction of any such
well-known mark or an imitation liable to create confusion
therewith.
ARTICLE 8
A trade name shall be protected in all the countries of the Union
without the obligation of filing or registration, whether or not it
forms part of a trademark. (Emphasis supplied)
Records also show that the first use of the name HARVARD was in
1638 for educational services, policy courses of instructions and
training at the university level. It has a Charter. Its first commercial use
of the name or mark HARVARD for Class 25 was on 31 December
1953 covered by UPTON Reg. No. 2,119,339 and 2,101,295.
Assuming in arguendo, that the Appellate may have used the mark
HARVARD in the Philippines ahead of the Appellant, it still cannot be
denied that the Appellants use thereof was decades, even centuries,
ahead of the Appellees. More importantly, the name HARVARD was
the name of a person whose deeds were considered to be a
cornerstone of the university. The Appellants logos, emblems or
symbols are owned by Harvard University. The name HARVARD and
the logos, emblems or symbols are endemic and cannot be separated
from the institution.35
Finally, in its assailed Decision, the Court of Appeals ruled:
Records show that Harvard University is the oldest and one of the
foremost educational institutions in the United States, it being
established in 1636. It is located primarily in Cambridge,
Massachusetts and was named after John Harvard, a puritan minister
who left to the college his books and half of his estate.
The mark "Harvard College" was first used in commerce in the United
States in 1638 for educational services, specifically, providing courses
of instruction and training at the university level (Class 41). Its
application for registration with the United States Patent and
Trademark Office was filed on September 20, 2000 and it was
registered on October 16, 2001. The marks "Harvard" and "Harvard Ve
ri tas Shield Symbol" were first used in commerce in the the United
States on December 31, 1953 for athletic uniforms, boxer shorts,
briefs, caps, coats, leather coats, sports coats, gym shorts, infant
jackets, leather jackets, night shirts, shirts, socks, sweat pants,
sweatshirts, sweaters and underwear (Class 25). The applications for
registration with the USPTO were filed on September 9, 1996, the
mark "Harvard" was registered on December 9, 1997 and the mark
"Harvard Ve ri tas Shield Symbol" was registered on September 30,
1997.36
We also note that in a Decision37 dated 18 December 2008 involving a
separate case between Harvard University and Streetward
International, Inc.,38 the Bureau of Legal Affairs of the IPO ruled that
the mark "Harvard" is a "well-known mark." This Decision, which cites
among others the numerous trademark registrations of Harvard
University in various countries, has become final and executory.
There is no question then, and this Court so declares, that "Harvard" is
a well-known name and mark not only in the United States but also
internationally, including the Philippines. The mark "Harvard" is rated
as one of the most famous marks in the world. It has been registered in
at least 50 countries. It has been used and promoted extensively in
numerous publications worldwide. It has established a considerable
goodwill worldwide since the founding of Harvard University more than
350 years ago. It is easily recognizable as the trade name and mark of
Harvard University of Cambridge, Massachusetts, U.S.A.,
internationally known as one of the leading educational institutions in
the world. As such, even before Harvard University applied for
registration of the mark "Harvard" in the Philippines, the mark was
already protected under Article 6bis and Article 8 of the Paris
Convention. Again, even without applying the Paris Convention,
Harvard University can invoke Section 4(a) of R.A. No. 166 which
prohibits the registration of a mark "which may disparage or falsely
suggest a connection with persons, living or dead, institutions,
beliefs x x x."
WHEREFORE, we DENY the petition. We AFFIRM the 24 October
2008 Decision and 8 January 2009 Resolution of the Court of Appeals
in CA-G.R. SP No. 103394.
SO ORDERED.
ANTONIO T. CARPIO
Associate Justice
Two search warrants5 were issued by the RTC and were served on the
premises of respondents. As a result of the raid, more than 6,000 pairs
of shoes bearing the "S" logo were seized.
The assailed decision reversed the Decision dated May 25, 2007 3
issued by the Director General of the Intellectual Property Office (IPO)
in Inter Partes Case No. 14-2004-00084. The IPO Director General
upheld Certificate of Registration (COR) No. 4-1999-005393 issued by
the IPO for the trademark "VESPA" in favor of petitioner E.Y. Industrial
Sales, Inc. (EYIS), but ordered the cancellation of COR No. 4-1997121492, also for the trademark "VESPA," issued in favor of respondent
Shen Dar Electricity and Machinery Co., Ltd. (Shen Dar). The Decision
of the IPO Director General, in effect, affirmed the Decision dated May
29, 20064 issued by the Director of the Bureau of Legal Affairs (BLA) of
the IPO.
The Facts
EYIS is a domestic corporation engaged in the production, distribution
and sale of air compressors and other industrial tools and equipment. 5
Petitioner Engracio Yap is the Chairman of the Board of Directors of
EYIS.6
Respondent Shen Dar is a Taiwan-based foreign corporation engaged
in the manufacture of air compressors.7
Both companies claimed to have the right to register the trademark
"VESPA" for air compressors.
From 1997 to 2004, EYIS imported air compressors from Shen Dar
through sales contracts. In the Sales Contract dated April 20, 2002, 8 for
example, Shen Dar would supply EYIS in one (1) year with 24 to 30
units of 40-ft. containers worth of air compressors identified in the
Packing/Weight Lists simply as SD-23, SD-29, SD-31, SD-32, SD-39,
SD-67 and SD-68. In the corresponding Bill of Ladings, the items were
described merely as air compressors. 9 There is no documentary
evidence to show that such air compressors were marked "VESPA."
On June 9, 1997, Shen Dar filed Trademark Application Serial No. 41997-121492 with the IPO for the mark "VESPA, Chinese Characters
and Device" for use on air compressors and welding machines.10
On July 28, 1999, EYIS filed Trademark Application Serial No. 4-1999005393, also for the mark "VESPA," for use on air compressors.11 On
January 18, 2004, the IPO issued COR No. 4-1999-005393 in favor of
EYIS.12 Thereafter, on February 8, 2007, Shen Dar was also issued
COR No. 4-1997-121492.13
In the meantime, on June 21, 2004, Shen Dar filed a Petition for
Cancellation of EYIS COR with the BLA. 14 In the Petition, Shen Dar
primarily argued that the issuance of the COR in favor of EYIS violated
Section 123.1 paragraphs (d), (e) and (f) of Republic Act No. (RA)
8293, otherwise known as the Intellectual Property Code (IP Code),
having first filed an application for the mark. Shen Dar further alleged
that EYIS was a mere distributor of air compressors bearing the mark
"VESPA" which it imported from Shen Dar. Shen Dar also argued that it
had prior and exclusive right to the use and registration of the mark
"VESPA" in the Philippines under the provisions of the Paris
Convention.15
FIRST DIVISION
G.R. No. 184850
In its Answer, EYIS and Yap denied the claim of Shen Dar to be the
true owners of the mark "VESPA" being the sole assembler and
fabricator of air compressors since the early 1990s. They further
alleged that the air compressors that Shen Dar allegedly supplied them
bore the mark "SD" for Shen Dar and not "VESPA." Moreover, EYIS
argued that Shen Dar, not being the owner of the mark, could not seek
protection from the provisions of the Paris Convention or the IP Code.16
Thereafter, the Director of the BLA issued its Decision dated May 29,
2006 in favor of EYIS and against Shen Dar, the dispositive portion of
which reads:
SO ORDERED.17
Shen Dar appealed the decision of the BLA Director to the Director
General of the IPO. In the appeal, Shen Dar raised the following
issues:
1. Whether the BLA Director erred in ruling that Shen Dar
failed to present evidence;
2. Whether the registration of EYIS application was proper
considering that Shen Dar was the first to file an application
for the mark; and
3. Whether the BLA Director correctly ruled that EYIS is the
true owner of the mark.18
ruled that Shen Dar should be considered to have prior use of the mark
based on the statements made by the parties in their respective
Declarations of Actual Use. The CA added that EYIS is a mere
importer of the air compressors with the mark "VESPA" as may be
gleaned from its receipts which indicated that EYIS is an importer,
wholesaler and retailer, and therefore, cannot be considered an owner
of the mark.22
EYIS filed a motion for reconsideration of the assailed decision which
the CA denied in the assailed resolution.
Hence, the instant appeal.
Issues
EYIS and Yap raise the following issues in their petition:
Later, the IPO Director General issued a Decision dated May 25, 2007
upholding the COR issued in favor of EYIS while cancelling the COR of
Shen Dar, the dispositive portion of which reads:
WHEREFORE, premises considered, the appeal is DENIED.
Certificate of Registration No. 4-1999-005393 for the mark VESPA for
air compressor issued in favor of Appellee is hereby upheld.
Consequently, Certificate of Registration No. 4-1997-121492 for the
mark VESPA, Chinese Characters & Device for goods air compressor
and spot welding machine issued in favor of Appellant is hereby
ordered cancelled.
Let a copy of this Decision as well as the records of this case be
furnished and returned to the Director of Bureau of Legal Affairs for
appropriate action. Further, let also the Directors of the Bureau of
Trademarks, the Administrative, Financial and Human Resources
Development Services Bureau, and the Documentation, Information
and Technology Transfer Bureau be furnished a copy of this Decision
for information, guidance, and records purposes.19
Shen Dar appealed the above decision of the IPO Director General to
the CA where Shen Dar raised the following issues:
1. Whether Shen Dar is guilty of forum shopping;
2. Whether the first-to-file rule applies to the instant case;
3. Whether Shen Dar presented evidence of actual use;
4. Whether EYIS is the true owner of the mark "VESPA";
5. Whether the IPO Director General erred in cancelling
Shen Dars COR No. 4-1997-121492 without a petition for
cancellation; and
6. Whether Shen Dar sustained damages.20
In the assailed decision, the CA reversed the IPO Director General and
ruled in favor of Shen Dar. The dispositive portion states:
WHEREFORE, premises considered, the petition is GRANTED.
Consequently, the assailed decision of the Director General of the
Intellectual Property Office dated May 25, 2007 is hereby REVERSED
and SET ASIDE. In lieu thereof, a new one is entered: a) ordering the
cancellation of Certificate of Registration No. 4-1999-005393 issued on
January 19, 2004 for the trademark VESPA in favor of E.Y. Industrial
Sales, Inc.; b) ordering the restoration of the validity of Certificate of
Registration No. 4-1997-121492 for the trademark VESPA in favor of
Shen Dar Electricity and Machinery Co., Ltd. No pronouncement as to
costs.
SO ORDERED.21
In ruling for Shen Dar, the CA ruled that, despite the fact that Shen Dar
did not formally offer its evidence before the BLA, such evidence was
properly attached to the Petition for Cancellation. As such, Shen Dars
evidence may be properly considered. The CA also enunciated that the
IPO failed to properly apply the provisions of Sec. 123.1(d) of RA 8293,
which prohibits the registration of a trademark in favor of a party when
there is an earlier filed application for the same mark. The CA further
and which will give the Bureau the greatest possibility to focus on the
contentious issues before it. (Emphasis supplied.)
The above rule reflects the oft-repeated legal principle that quasijudicial and administrative bodies are not bound by technical rules of
procedure. Such principle, however, is tempered by fundamental
evidentiary rules, including due process. Thus, we ruled in Aya-ay, Sr.
v. Arpaphil Shipping Corp.:28
That administrative quasi-judicial bodies like the NLRC are not bound
by technical rules of procedure in the adjudication of cases does not
mean that the basic rules on proving allegations should be entirely
dispensed with. A party alleging a critical fact must still support his
allegation with substantial evidence. Any decision based on
unsubstantiated allegation cannot stand as it will offend due process.
x x x The liberality of procedure in administrative actions is subject to
limitations imposed by basic requirements of due process. As this
Court said in Ang Tibay v. CIR, the provision for flexibility in
administrative procedure "does not go so far as to justify orders without
a basis in evidence having rational probative value." More specifically,
as held in Uichico v. NLRC:
It is true that administrative and quasi-judicial bodies like the NLRC are
not bound by the technical rules of procedure in the adjudication of
cases. However, this procedural rule should not be construed as a
license to disregard certain fundamental evidentiary rules.
This was later reiterated in Lepanto Consolidated Mining Company v.
Dumapis:29
While it is true that administrative or quasi-judicial bodies like the
NLRC are not bound by the technical rules of procedure in the
adjudication of cases, this procedural rule should not be construed as
a license to disregard certain fundamental evidentiary rules. The
evidence presented must at least have a modicum of admissibility for it
to have probative value. Not only must there be some evidence to
support a finding or conclusion, but the evidence must be substantial.
Substantial evidence is more than a mere scintilla. It means such
relevant evidence as a reasonable mind might accept as adequate to
support a conclusion. Thus, even though technical rules of evidence
are not strictly complied with before the LA and the NLRC, their
decision must be based on evidence that must, at the very least, be
substantial.
The fact that no petition for cancellation was filed against the COR
issued to Shen Dar does not preclude the cancellation of Shen Dars
COR. It must be emphasized that, during the hearing for the
cancellation of EYIS COR before the BLA, Shen Dar tried to establish
that it, not EYIS, was the true owner of the mark "VESPA" and, thus,
entitled to have it registered. Shen Dar had more than sufficient
opportunity to present its evidence and argue its case, and it did. It was
given its day in court and its right to due process was respected. The
IPO Director Generals disregard of the procedure for the cancellation
of a registered mark was a valid exercise of his discretion.
Fourth Issue:
Whether the factual findings of the IPO are binding on the CA
Next, petitioners challenge the CAs reversal of the factual findings of
the BLA that Shen Dar and not EYIS is the prior user and, therefore,
true owner of the mark. In arguing its position, petitioners cite
numerous rulings of this Court where it was enunciated that the factual
findings of administrative bodies are given great weight if not
conclusive upon the courts when supported by substantial evidence.
We agree with petitioners that the general rule in this jurisdiction is that
the factual findings of administrative bodies deserve utmost respect
when supported by evidence. However, such general rule is subject to
exceptions.
In Fuentes v. Court of Appeals,30 the Court established the rule of
conclusiveness of factual findings of the CA as follows:
Jurisprudence teaches us that "(a)s a rule, the jurisdiction of this Court
in cases brought to it from the Court of Appeals x x x is limited to the
First, as to the date of first use of the mark by the parties, the CA
stated:
To begin with, when respondents-appellees filed its application for
registration of the VESPA trademark on July 28, 1999, they stated
under oath, as found in their DECLARATION OF ACTUAL USE, that
their first use of the mark was on December 22, 1998. On the other
hand, [Shen Dar] in its application dated June 09, 1997 stated, likewise
under oath in their DECLARATION OF ACTUAL USE, that its first use
of the mark was in June 1996. This cannot be made any clearer. [Shen
Dar] was not only the first to file an application for registration but
likewise first to use said registrable mark.32
Evidently, the CA anchors its finding that Shen Dar was the first to use
the mark on the statements of the parties in their respective
Declarations of Actual Use. Such conclusion is premature at best.
While a Declaration of Actual Use is a notarized document, hence, a
public document, it is not conclusive as to the fact of first use of a
mark. The declaration must be accompanied by proof of actual use as
of the date claimed. In a declaration of actual use, the applicant must,
therefore, present evidence of such actual use.
not preclude its being a manufacturer. Sec. 237 of the National Internal
Revenue Code states:
Section 237. Issuance of Receipts or Sales or Commercial
Invoices.All persons subject to an internal revenue tax shall, for each
sale and transfer of merchandise or for services rendered valued at
Twenty-five pesos (P25.00) or more, issue duly registered receipts or
sale or commercial invoices, prepared at least in duplicate, showing
the date of transaction, quantity, unit cost and description of
merchandise or nature of service: Provided, however, That where the
receipt is issued to cover payment made as rentals, commissions,
compensation or fees, receipts or invoices shall be issued which shall
show the name, business style, if any, and address of the purchaser,
customer or client.
The original of each receipt or invoice shall be issued to the purchaser,
customer or client at the time the transaction is effected, who, if
engaged in business or in the exercise of profession, shall keep and
preserve the same in his place of business for a period of three (3)
years from the close of the taxable year in which such invoice or
receipt was issued, while the duplicate shall be kept and preserved by
the issuer, also in his place of business, for a like period.
The Commissioner may, in meritorious cases, exempt any person
subject to an internal revenue tax from compliance with the provisions
of this Section. (Emphasis supplied.)
Correlatively, in Revenue Memorandum No. 16-2003 dated May 20,
2003, the Bureau of Internal Revenue defined a Sales Invoice and
identified its required information as follows:
Sales Invoices (SI)/Cash Invoice (CI) is written account of goods sold
or services rendered and the prices charged therefor used in the
ordinary course of business evidencing sale and transfer or agreement
to sell or transfer of goods and services. It contains the same
information found in the Official Receipt.
Official Receipt (OR) is a receipt issued for the payment of services
rendered or goods sold. It contains the following information:
a. Business name and address;
b. Taxpayer Identification Number;
NACHURA, J.:
This is a petition for review on certiorari 1 seeking to reverse and set
aside the Decision dated August 7, 20092 and the Resolution dated
October 28, 20093 of the Court of Appeals (CA) in CA-G.R. SP No.
108627.
The antecedent facts and proceedings
On October 21, 2006, petitioner Dermaline, Inc. (Dermaline) filed
before the Intellectual Property Office (IPO) an application for
registration of the trademark "DERMALINE DERMALINE, INC."
(Application No. 4-2006011536). The application was published for
Opposition in the IPO E-Gazette on March 9, 2007.
On May 8, 2007, respondent Myra Pharmaceuticals, Inc. (Myra) filed a
Verified Opposition4 alleging that the trademark sought to be registered
by Dermaline so resembles its trademark "DERMALIN" and will likely
cause confusion, mistake and deception to the purchasing public. Myra
said that the registration of Dermalines trademark will violate Section
1235 of Republic Act (R.A.) No. 8293 (Intellectual Property Code of the
Philippines). It further alleged that Dermalines use and registration of
its applied trademark will diminish the distinctiveness and dilute the
goodwill of Myras "DERMALIN," registered with the IPO way back July
8, 1986, renewed for ten (10) years on July 8, 2006. Myra has been
extensively using "DERMALIN" commercially since October 31, 1977,
and said mark is still valid and subsisting.
Myra claimed that, despite Dermalines attempt to differentiate its
applied mark, the dominant feature is the term "DERMALINE," which is
practically identical with its own "DERMALIN," more particularly that
the first eight (8) letters of the marks are identical, and that
notwithstanding the additional letter "E" by Dermaline, the
pronunciation for both marks are identical. Further, both marks have
three (3) syllables each, with each syllable identical in sound and
appearance, even if the last syllable of "DERMALINE" consisted of four
(4) letters while "DERMALIN" consisted only of three (3).
Myra also pointed out that Dermaline applied for the same mark
"DERMALINE" on June 3, 2003 and was already refused registration
by the IPO. By filing this new application for registration, Dermaline
appears to have engaged in a fishing expedition for the approval of its
mark. Myra argued that its intellectual property right over its trademark
is protected under Section 1476 of R.A. No. 8293.
Myra asserted that the mark "DERMALINE DERMALINE, INC." is
aurally similar to its own mark such that the registration and use of
Dermalines applied mark will enable it to obtain benefit from Myras
reputation, goodwill and advertising and will lead the public into
believing that Dermaline is, in any way, connected to Myra. Myra
added that even if the subject application was under Classification 44 7
for various skin treatments, it could still be connected to the
"DERMALIN" mark under Classification 5 8 for pharmaceutical products,
since ultimately these goods are very closely related.
In its Verified Answer,9 Dermaline countered that a simple comparison
of the trademark "DERMALINE DERMALINE, INC." vis--vis Myras
"DERMALIN" trademark would show that they have entirely different
features and distinctive presentation, thus it cannot result in confusion,
mistake or deception on the part of the purchasing public. Dermaline
contended that, in determining if the subject trademarks are
confusingly similar, a comparison of the words is not the only
determinant, but their entirety must be considered in relation to the
goods to which they are attached, including the other features
appearing in both labels. It claimed that there were glaring and striking
dissimilarities between the two trademarks, such that its trademark
"DERMALINE DERMALINE, INC." speaks for itself (Res ipsa loquitur).
Dermaline further argued that there could not be any relation between
its trademark for health and beauty services from Myras trademark
classified under medicinal goods against skin disorders.
The parties failed to settle amicably. Consequently, the preliminary
conference was terminated and they were directed to file their
respective position papers.10
On April 10, 2008, the IPO-Bureau of Legal Affairs rendered Decision
No. 2008-7011 sustaining Myras opposition pursuant to Section
123.1(d) of R.A. No. 8293. It disposed
Also using the Holistic Test, the SC corrected the lower courts and
ruled that the striking similarities between the products outweigh the
differences argued by the respondents:
The features and overall design of the two products are so similar that
there is a high likelihood of confusion.
Two products do not need to be identical, they just need to be similar
enough to confuse the ordinary buyer in order to constitute trademark
infringement (Converse Rubber Corporation v. Jacinto Rubber &
Plastic Co., 186 Phil. 85 [1980]). Also, the difference in price cannot be
a defense in a case for trademark infringement (McDonalds
Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402, 434 [2004]).
2.
Trademark law protects the owner not only from product confusion but
also from source confusion. Protection is not limited to the same or
similar products but extends to all cases where:
Trademark law does not only protect the owners reputation and
goodwill, it also protects the consumers from fraud and confusion.
In this case, it is clear that there was an attempt to copy the trademark
owners mark and product design. In trademark infringement cases,
you do not need to copy another's mark or product exactly. Colorable
imitation is enough.