Elidad C. Kho vs. Court of Appeals, Summerville General Merchandising Company and Ang Tiam Chay (G.R. No.

115758, March 19, 2002, 379 SCRA 410)

FACTS: The petitioners complaint alleges that petitioner, doing business under the name and style of KEC Cosmetics Laboratory,
is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case, as shown by Certificates of Copyright
Registration No. 0-1358 and No. 0-3678; that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated
cream after purchasing the same from Quintin Cheng, the registered owner thereof in the Supplemental Register of the Philippine
Patent Office on February 7, 1980 under Registration Certificate No. 4529; that respondent Summerville advertised and sold petitioners
cream products under the brand name Chin Chun Su, in similar containers that petitioner uses, thereby misleading the public, and
resulting in the decline in the petitioners business sales and income; and, that the respondents should be enjoined from allegedly
infringing on the copyrights and patents of the petitioner.
The respondents, on the other hand, alleged as their defense that Summerville is the exclusive and authorized importer, re-packer
and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan; that the said Taiwanese manufacturing company
authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other
appropriate governmental agencies; that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through
misrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of the patent registration certificate, to distribute
and market Chin Chun Su products in the Philippines had already been terminated by the said Taiwanese Manufacturing Company.
After due hearing on the application for preliminary injunction, the trial court granted , the application of plaintiff Elidad C. Kho, doing
business under the style of KEC Cosmetic Laboratory, for preliminary injunction, is hereby granted.

The respondents moved for reconsideration but their motion for reconsideration .
The respondents filed a petition for certiorari with the Court of Appeals.
THE appellate court rendered a Decision in CA-G.R. SP No. 27803 ruling in favor of the respondents.
WHEREFORE, the petition is hereby given due course

ISSUE:
Whether or not Kho has the sole right using the package of Chin Chun Su products

RULING:

Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container. The name and container of
a beauty cream product are proper subjects of a trademark in as much as the same falls squarely within its definition. In order to be
entitled to exclusively use the same in the sale of the beauty cream product, the user must sufficiently prove that
she registered or used it before anybody else did. The petitioners copyright and patent registration of the name
and container would not guarantee her the right to exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights. Consequently, a preliminary injunction order cannot be issued for the
reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others, not
having proven that she has registered a trademark thereto or used the same before anyone did.

NOTE:
Trademark, copyright, and patents are different intellectual property rights that cannot be interchanged with one another.
A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall
include a stamped or marked container goods. In relation thereto, a trade name means the name or designation identifying or
distinguishing an enterprise. Meanwhile, the scope of copyright is confined to literary and artistic works which are original
intellectual creations in the literary and artistic domain protected from the moment of their creation. Patentable inventions, on the
other hand, refer to any technical solution of a problem in any field of human activity which is new, involves an inventive step and is
industrial applicable.

DERMALINE, INC., VS MYRA PHARMACEUTICALS, INC.,

FACTS: 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 Opposition [4] 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 123[5] 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).

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.

On April 10, 2008, the IPO-Bureau of Legal Affairs rendered Decision sustaining Myras opposition.

Aggrieved, Dermaline filed a motion for reconsideration, but it was denied.

Expectedly, Dermaline appealed to the Office of the Director General of the IPO. However, the appeal was dismissed for being filed out
of time.

Undaunted, Dermaline appealed to the CA, but it affirmed and upheld the Order OF THE director general of IPO, and the rejection of
Dermalines application for registration of trademark.

Issue: W/N the IPO should allow the registration of the trademark Dermaline. NO

Held: As Myra correctly posits, it has the right under Section 147 of R.A. No. 8293 to prevent third parties from using a trademark, or
similar signs or containers for goods or services, without its consent, identical or similar to its registered trademark, where such use
would result in a likelihood of confusion. In determining confusion, case lawhas developed two (2) tests, the Dominancy Test and the
Holistic or Totality Test.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion
ordeception. Duplication or imitation is not even required; neither is it necessary that the label of the applied mark for registration
should suggest an effort to imitate. Relative to the question on confusion of marks and trade names, jurisprudence noted two (2) types
of confusion, viz: (1) confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced to purchase one
product in the belief that he was purchasing the other; and (2) confusion of business (source or origin confusion), where, although the
goods of the parties are different, the product, the mark of which registration is applied for by one party, is such as might reasonably be
assumed to originate with the registrant of an earlier product, and the public would then be deceived either into that belief or into the
belief that there is some connection between the two parties, though inexistent.

Using this test, the IPO declared that both confusion of goods and service and confusion of business or of origin were apparent in both
trademarks. While it is true that the two marks are presented differently, they are almost spelled in the same way, except forDermalines
mark which ends with the letter "E," and they are pronounced practically in the same manner in three (3) syllables, with the ending
letter "E" in Dermalines mark pronounced silently. Thus, when an ordinary purchaser, for example, hears an advertisement
of Dermalines applied trademark over the radio, chances are he will associate it with Myras. When one applies for the registration of a
trademark or label which is almost the same or that very closely resembles one already used and registered by another, the application
should be rejected and dismissed outright, even without any opposition on the part of the owner and user of a previously registered
label or trademark.

Further, Dermalines stance that its product belongs to a separate and different classification from Myras products with the registered
trademark does not eradicate the possibility of mistake on the part of the purchasing public to associate the former with the latter,
especially considering that both classifications pertain to treatments for the skin

PROSOURCE INTERNATIONAL, INC. VS. HORPHAG RESEARCH MANAGEMENT SA,

FACTS: Respondent Horphag Research Management SA is a corporation duly organized and existing under the laws of Switzerlandand
the owner[6] of trademark PYCNOGENOL, a food supplement sold and distributed by Zuellig Pharma Corporation.Respondent later
discovered that petitioner Prosource International, Inc. was also distributing a similar food supplement using the mark PCO-GENOLS
since 1996.[7] This prompted respondent to demand that petitioner cease and desist from using the aforesaid mark.[8]

Without notifying respondent, petitioner discontinued the use of, and withdrew from the market, the products under the name PCO-
GENOLS as of June 19, 2000. It, likewise, changed its mark from PCO-GENOLS to PCO-PLUS.[9]

On August 22, 2000, respondent filed a Complaint[10] for Infringement of Trademark with Prayer for Preliminary Injunction against
petitioner, praying that the latter cease and desist from using the brand PCO-GENOLS for being confusingly similar with respondents
trademark PYCNOGENOL. It, likewise, prayed for actual and nominal damages, as well as attorneys fees.[11]

In its Answer,[12] petitioner contended that respondent could not file the infringement case considering that the latter is not the
registered owner of the trademark PYCNOGENOL, but one Horphag Research Limited.

On January 16, 2006, the RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-GENOLS have the same suffix
GENOL which appears to be merely descriptive and thus open for trademark registration by combining it with other words. The trial
court, likewise, concluded that the marks, when read, sound similar, and thus confusingly similar especially since they both refer to food
supplements. Petitioners motion for reconsideration was likewise denied.
On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court explained that under the Dominancy or the
Holistic Test, PCO-GENOLS is deceptively similar to PYCNOGENOL.

Hence, this petition.

ISSUE: Whether the names are confusingly similar.

RULING:

Yes. There is confusing similarity and the petition is denied. Jurisprudence developed two test to prove such.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and
deception, thus constituting infringement. If the competing trademark contains the main, essential and dominant features of another,
and confusion or deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that
the infringing label should suggest an effort to imitate. The question is whether the use of the marks involved is likely to cause confusion
or mistake in the mind of the public or to deceive purchasers. Courts will consider more the aural and visual impressions created by the
marks in the public mind, giving little weight to factors like prices, quality, sales outlets, and market segments.

The Holistic Test entails a consideration of the entirety of the marks as applied to the products, including the labels and packaging, in
determining confusing similarity. Not only on the predominant words should be the focus but also on the other features appearing on
both labels in order that the observer may draw his conclusion whether one is confusingly similar to the other.

SC applied the Dominancy Test.Both the words have the same suffix "GENOL" which on evidence, appears to be merely descriptive and
furnish no indication of the origin of the article and hence, open for trademark registration by the plaintiff through combination with
another word or phrase. When the two words are pronounced, the sound effects are confusingly similar not to mention that they are
both described by their manufacturers as a food supplement and thus, identified as such by their public consumers. And although there
were dissimilarities in the trademark due to the type of letters used as well as the size, color and design employed on their individual
packages/bottles, still the close relationship of the competing products name in sounds as they were pronounced, clearly indicates that
purchasers could be misled into believing that they are the same and/or originates from a common source and manufacturer
A trademark is 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. Inarguably,
a trademark deserves protection.[20]

DISTELLERIA WASHINGTON INC., VS CA

FACTS: The initiatory suit was instituted on 02 November 1987 with the trial court (docketed Civil Case No. 87-42639) for manual
delivery with damages instituted by La Tondea Distillers, Inc. (LTDI), against Distilleria Washington (Washington). LTDI, under a
claim of ownership, sought to seize from Distilleria Washington 18, 157 empty 350 c.c. white flint bottles bearing the blown-in marks of
La Tondea Inc. and Ginebra San Miguel. The court, on application of LTDI, issued an order of replevin on 05 November 1987 for the
seizure of the empty gin bottles from Washington. These bottles, it was averred, were being used by Washington for its own Gin Seven
products without the consent of LTDI.
LTDI asserted that, being the owner and registrant of the bottles, it was entitled to the protection so extended by Republic Act
(R.A.) No. 623, as amended, notwithstanding its sale of the Ginebra San Miguel gin product contained in said bottles.
Washington countered that R.A. No. 623, invoked by LTDI, should not apply to gin, an alcoholic beverage which is unlike that of
soda water, mineral or aerated water, ciders, milks, cream, or other lawful beverages mentioned in the law, and that, in any case,
ownership of the bottles should, considering the attendant facts and circumstances, be held lawfully transferred to the buyers upon the
sale of the gin and containers at a single price.
The trial court in its decision dismissed the complaint, upholding Distilleria Washington's contention that a purchaser of liquor
pays only a single price for the liquor and the bottle and is not required to return the bottle at any time.
The Court of Appeals reversed the trial court's decision, ruling that under Republic Act 623, the use of marked bottles by any
person other than the manufacturer, bottler or seller, without the latter's written consent, is unlawful. It emphasized that the marks of
La Tondea's ownership stamped or blown-in to the bottles are sufficient notice to the public that the bottles are La Tondea's property;
hence, Distilleria Washington cannot be considered a purchaser in good faith. It is a fact that R.A. No. 623 extends trademark
protection in the use of containers duly registered with the Philippine Patent Office.
ISSUE: WON LTDI has the right to retain possession of the bottles (Main Issue)?

HELD: YES, but they must pay for them. (See dispositive portion and Ratio below)

RATIO:

1. PRELIMINARY ISSUE: WON RA 623 covers Gin.

YES. The title of the law itself, which reads "An Act to Regulate the Use of Duly Stamped or Marked Bottles, Boxes,
Casks, Kegs, Barrels and Other Similar Containers" clearly shows the legislative intent to give protection to all marked
 bottles and containers of all lawful beverages regardless of the nature of their contents. The words "other lawful
beverages" is used in its general sense, referring to all beverages not prohibited by law. Beverage is defined as a liquor
or liquid for drinking. Hard liquor, although regulated, is not prohibited by law, hence it is within the purview and
coverage of Republic Act No. 623, as amended.
2. The case before us, however, goes beyond just seeking to have such use stopped but it so takes on even the ownership issue as
well.
The instant suit is one for replevin (manual delivery) where the claimant must be able to show convincingly that he is
either the owner or clearly entitled to the possession of the object sought to be recovered.
Replevin is a possessory action the gist of which focuses on the right of possession that, in turn, is dependent on a
legal basis that, not infrequently, looks to the ownership of the object sought to be replevied.
3. It is to be pointed out that a trademark refers to a word, name, symbol, emblem, sign or device or any combination thereof
adopted and used by a merchant to identify, and distinguish from others, his goods of commerce. It is basically an intellectual
creation that is susceptible to ownership (Article 721, Civil Code) and, consistently therewith, gives rise to its own elements
of jus posidendi, jus utendi, jus fruendi, jus disponendi, and jus abutendi, along with the applicable jus lex, comprising that
ownership.
The incorporeal right, however, is distinct from the property in the material object subject to it. Ownership in one
does not necessarily vest ownership in the other.
Thus, the transfer or assignment of the intellectual property will not necessarily constitute a
conveyance of the thing it covers, nor would a conveyance of the latter imply the transfer or
assignment of the intellectual right.

4. R.A. No. 623 evidently does not disallow the sale or transfer of ownership of the marked bottles or containers. In fact, the
contrary is implicit in the law; thus
Sec. 5. No action shall be brought under this Act against any person to whom the registered manufacturer, bottler or
seller, has transferred by way of sale, any of the containers herein referred to, but the sale of the beverage contained in
the said containers shall not include the sale of the containers unless specifically so provided.
Sec. 6. The provisions of this Act shall not be interpreted as prohibiting the use of bottles as containers for "sisi,"
"bagoong," "patis," and similar native products.
TAKE NOTE OF THESE PROVISIONS FOR THE MR CASE BELOW
5. Scarcely disputed are certain and specific industry practices in the sale of gin:
The manufacturer sells the product in marked containers, through dealers, to the public in supermarkets, grocery
shops, retail stores and other sales outlets.
The buyer takes the item; he is neither required to return the bottle nor required to make a deposit to assure its return
to the seller. He could return the bottle and get a refund.
A number of bottles at times find their way to commercial users.
Ownership of the containers does pass on to the consumer albeit subject to the statutory limitation on the use of the
registered containers and to the trademark right of the registrant.
i. The statement in Section 5 of R.A. 623 to the effect that the "sale of beverage contained in the said containers
shall not include the sale of the containers unless specifically so provided" is not a rule of proscription. It is a
rule of construction that, in keeping with the spirit and intent of the law, establishes at best a presumption
(of non-conveyance of the container) and which by no means can be taken to be either interdictive or
conclusive in character.
ii. Upon the other hand, LTDI's sales invoice, stipulating that the "sale does not include the bottles with the
blown-in marks of ownership of La Tondea Distillers," cannot affect those who are not privies thereto.
6. While it may be unwarranted then for LTDI to simply seize the empty containers, this Court finds it to be legally absurd,
however, to still allow petitioner to recover the possession thereof.
The fact of the matter is that R.A. 623, as amended, in affording trademark protection to the registrant, has
additionally expressed a prima facie presumption of illegal use by a possessor whenever such use or possession is
without the written permission of the registered manufacturer, a provision that is neither arbitrary nor without
appropriate rationale.
Indeed, the appellate court itself has made a finding of such unauthorized use by petitioner. The Court sees no other
logical purpose for petitioner's insistence to keep the bottles, except for such continued use. The practical and feasible
alternative is to merely require the payment of just compensation to petitioner for the bottles seized from it by LTDI.
Conventional wisdom, along with equity and justice to both parties, dictates it.

WHEREFORE, the decision of the appellate court is MODIFIED by ordering LTDI to pay petitioner just compensation for the seized
bottles. Instead, however, of remanding the case to the Court of Appeals to receive evidence on, and thereafter resolve, the assessment
thereof, this Court accepts and accordingly adopts the quantification of P18,157.00 made by the trial court. No costs.

DISTILLERIA WASHINGTON, INC. V. CA (MR)

OCTOBER 2, 1997
PETITIONER: DISTILLERIA WASHINTON, INC OR WASHINTON DISTILLERY, INC.
RESPONDENT: COURT OF APPEALS, LA TONDENA DISTILLERS, INC.
VITUG, J.:

FACTS:

This is a continuation of the first case. An MR was first filed but was denied. This is the second MR.
 Summary of the confusing case above: It held that ownership of the bottles had passed to the consumer, ultimately, to
Washington Distillery, Inc., thereby upholding the finding of the Regional Trial Court and reversing the ruling of the Court of
Appeals; nonetheless, while ruling that the ownership over the bottles had passed to Washington Distillery, Inc., it held that
Washington Distillery, Inc. may not use the bottles because of the "trademark protection to the registrant" (La Tondea
Distillers, Inc.). Instead of directing the return of the bottles to Washington Distillery, Inc., the Court ordered La Tondea
Distillers, Inc. to pay Washington Distillery, Inc. the amount of P18,157.00.
The above decision of the Supreme Court itself therefore raises new issues.
o As owner of the bottles, should not Washington Distillery, Inc. be given possession of the bottles?
o Would its use of the bottles violate the "trademark protection of the registrant," La Tondea Distillers, Inc. afforded
by R.A. No. 623, as amended?
While the decision of October 17, 1996 affirmed with modification the Court of Appeals' decision, the SC at least implicitly
acknowledged that there was a valid transfer of the bottles to Distilleria Washington, except that its possession of the bottles
without the written consent of La Tondea gives rise to a prima facie presumption of illegal use under R.A. 623.

In seeking reconsideration of the decision of this Court, petitioner advances, among others, the following arguments:
o (1) If, as the Court found in its decision of October 17, 1996, Distilleria Washington had acquired ownership of the
bottles, La Tondea's suit for replevin, where the sole issue is possession, should be denied.
o (2) Since the right of ownership over the bottles gives rise, according to the Court's own language, to its own elements
of jus posidendi, jus utendi, jus fruendi, jus disponendi, and jus abutendi, along with the applicable jus lex, to allow
La Tondea to keep the bottles is to deny Distilleria Washington, the very attributes or elements of its ownership.
o (3) There is no showing and it cannot be assumed that if Distilleria Washington would have possession of the
bottles, it will exercise the other attributes of ownership, along with the applicable jus lex over the "marks of
ownership stamped or marked" on the bottles.
o (4) The provision in Sec. 3 of Republic Act 623 to the effect that the use by any person other than the registered
manufacturer, bottler or seller without the written permission of the latter of any such bottle, etc. shall give rise to
a prima facie presumption that such use or possession is unlawful, does not arise in the instant case because the
Court has itself found Section 5 of the same law applicable.
o (5) It is absurd to hold the buyer such as Distilleria Washington, liable for the possession and use of its own bottles
without the written consent of La Tondea who is no longer the owner thereof and for which it has received payment
in full.
o (6) To hold the buyer liable under Sections 2 and 3 would grant La Tondea the extraordinary right not only of
possession and use of the bottles which it has sold and no longer owns, but also to sell said bottles ad infinitum, thus
enriching itself unjustly.
o (7) It is manifestly unjust and unconscionable that millions of buyers of Ginebra San Miguel, who pay not only for the
gin but also for the bottles containing it should run the risk of criminal prosecution by the mere fact of possession of
the empty bottles after consuming the liquor.
Distilleria Washington's motion raises the novel issue that if, as we ruled in our decision of October 17, 1996, petitioner became
the owner over the bottles seized from it by replevin, then it has the right to their possession and use as attributes of
ownership, unless their use violates the trademark or incorporeal rights accorded private respondent by R.A. 623 which has
not really been established in this case.

ISSUE: (1) Did La Tondea Distillers, Inc. transfer ownership of its marked bottles or containers when it sold its products in the
market? YES (2) Were the marked bottles or containers part of the products sold to the public? YES

HELD: The Court RESOLVED to RECONSIDER its Decision promulgated on October 17, 1996 and render another judgment
REVERSING in toto the Decision of the Court of Appeals promulgated on January 11, 1995 and its Resolution of June 23, 1995. The
decision of the Regional Trial Court of December 3, 1991 is REINSTATED.

RATIO

1. YES. In plain terms, therefore, La Tondea not only sold its gin products but also the marked bottles or containers, as well.
And when these products were transferred by way of sale, then ownership over the bottles and all its attributes (jus utendi, jus
abutendi, just fruendi, jus disponendi) passed to the buyer. It necessarily follows that the transferee has the right to possession
of the bottles unless he uses them in violation of the original owner's registered or incorporeal rights. .
2. After practically saying that La Tondea has surrendered ownership and consequently, possession of the marked bottles or
container, it is incongruous and, certainly, it does not seem fair and just to still allow La Tondea, citing the prima
facie presumption of illegal use under Sec. 3 of R.A. 623., to retain possession of the seized bottles by simply requiring
payment of just compensation to petitioner.
3. A careful reading of Sections 2, 3 and 5 of R.A. 623 (Quoted at the first part of the digest) would lead to the conclusion
that they contemplate situations separate and distinct from each other. Section 2 prohibits any person from using, selling or
otherwise disposing of registered containers without the written consent of the registrant. Such rights belong exclusively to the
registrant. Under Section 3, mere possession of such registered containers without the written consent of the registrant
is prima facie presumed unlawful.

MAIN POINT COMING UP:

4. It appears and this is the critical point that Sections 2 and 3 apply only when the "filling" up of the bottle or the "use" of
the bottle is "without the written permission" of the "registered manufacturer, bottler, or seller," who has registered the marks
 of "ownership" of the bottles. It is thus implicit that Sections 2 and 3 apply only when the "registered manufacturer, bottler, or
seller" retain ownership of the bottles. Upon the other hand, when the bottles have been "transferred by way of sale," Section 5
applies, thereby precluding the institution of any action "under this Act," meaning to say, any action under Sections 2 and 3.
a. Since the Court has found that the bottles have been transferred by way of sale, then La Tondea has relinquished all
its proprietary rights over the bottles in favor of Distilleria Washington who has obtained them in due course. Now as
owner, it can exercise all attributes of ownership over the bottles.
b. This is the import of the decision that La Tondea had transferred ownership over its marked bottles or containers
when it sold its gin products to the public.
c. While others may argue that Section 5 is applicable only to the immediate transferee of the marked bottles or
container, this matter is best discussed where the applicability of Sec. 5, R.A. 623 is squarely raised. It must be
recalled, however, that this is a case of replevin, not a violation of the "trademark protection of the registrant" under
R.A. 623 or of the Trademark Law.

SOCIETE DES PRODUCTS NESTLE SA VS CA

FACTS: On January 18, 1984, private respondent CFC Corporation filed with the BPTTT an application for the registration of the
trademark FLAVOR MASTER for instant coffee, under Serial No. 52994. The application, as a matter of due course, was published in
the July 18, 1988 issue of the BPTTTs Official Gazette.
Petitioner Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws and domiciled in Switzerland, filed an
unverified Notice of Opposition,[3] claiming that the trademark of private respondents product is confusingly similar to its trademarks
for coffee and coffee extracts, to wit: MASTER ROAST and MASTER BLEND.
Likewise, a verified Notice of Opposition was filed by Nestle Philippines, Inc., a Philippine corporation and a licensee of Societe
Des Produits Nestle S.A., against CFCs application for registration of the trademark FLAVOR MASTER. [4] Nestle claimed that the use, if
any, by CFC of the trademark FLAVOR MASTER and its registration would likely cause confusion in the trade; or deceive purchasers
and would falsely suggest to the purchasing public a connection in the business of Nestle, as the dominant word present in the three (3)
trademarks is MASTER; or that the goods of CFC might be mistaken as having originated from the latter.
In answer to the two oppositions, CFC argued that its trademark, FLAVOR MASTER, is not confusingly similar with the formers
trademarks, MASTER ROAST and MASTER BLEND, alleging that, except for the word MASTER (which cannot be exclusively
appropriated by any person for being a descriptive or generic name), the other words that are used respectively with said word in the
three trademarks are very different from each other in meaning, spelling, pronunciation, and sound. CFC further argued that its
trademark, FLAVOR MASTER, is clearly very different from any of Nestles alleged trademarks MASTER ROAST and MASTER BLEND,
especially when the marks are viewed in their entirety, by considering their pictorial representations, color schemes and the letters of
their respective labels.
In its Decision No. 90-47 dated December 27, 1990, the BPTTT denied CFCs application for registration.[5] CFC elevated the
matter to the Court of Appeals, where it was docketed as CA-G.R. SP No. 24101.
The Court of Appeals defined the issue thus: Does appellant CFCs trade dress bear a striking resemblance with appellees
trademarks as to create in the purchasing publics mind the mistaken impression that both coffee products come from one and the same
source?
As stated above, the Court of Appeals, in the assailed decision dated September 23, 1993, reversed Decision No. 90-47 of the
BPTTT and ordered the Director of Patents to approve CFCs application. The Court of Appeals ruled: Were We to take even a
lackadaisical glance at the overall appearance of the contending marks, the physical discrepancies between appellant CFCs and
appellees respective logos are so ostensible that the casual purchaser cannot likely mistake one for the other.
ISSUE: W/N Does appellant CFCs trade dress bear a striking resemblance with appellees trademarks as to create in the
purchasing publics mind the mistaken impression that both coffee products come from one and the same source?
HELD: YES.
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. In determining if
colorable imitation exists, jurisprudence has developed two kinds of tests - the Dominancy Test and the Holistic Test.
o The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might
cause confusion or deception and thus constitute infringement.
o On the other side of the spectrum, the holistic test mandates that the entirety of the marks in question must be
considered in determining confusing similarity.
The Court of Appeals erred in applying the totality rule as defined in the cases of Bristol Myers v. Director of Patents;
Mead Johnson & Co. v. NVJ Van Dorf Ltd.; and American Cyanamid Co. v. Director of Patents. The totality rule states that
"the test is not simply to take their words and compare the spelling and pronunciation of said words. In determining
whether two trademarks are confusingly similar, the two marks in their entirety as they appear in the
respective labels must be considered in relation to the goods to which they are attached; the discerning eye of
the observer must focus not only on the predominant words but also on the other features appearing on both
labels."
In the case at bar, other than the fact that both Nestles and CFCs products are inexpensive and common
household items, the similarity ends there. What is being questioned here is the use by CFC of the trademark MASTER.
In view of the difficulty of applying jurisprudential precedents to trademark cases due to the peculiarity of each case, judicial
 fora should not readily apply a certain test or standard just because of seeming similarities. As this Court has pointed above,
there could be more telling differences than similarities as to make a jurisprudential precedent inapplicable.
The Court of Appeals held that the test to be applied should be the totality or holistic test reasoning, since what is of paramount
consideration is the ordinary purchaser who is, in general, undiscerningly rash in buying the more common and less expensive
household products like coffee, and is therefore less inclined to closely examine specific details of similarities and
dissimilarities between competing products.
This Court cannot agree with the above reasoning. If the ordinary purchaser is "undiscerningly rash" in buying such common
and inexpensive household products as instant coffee, and would therefore be "less inclined to closely examine specific details
of similarities and dissimilarities" between the two competing products, then it would be less likely for the ordinary purchaser
to notice that CFCs trademark FLAVOR MASTER carries the colors orange and mocha while that of Nestles uses red and
brown. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined
to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common
household item.
Moreover, the totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition
that confusing similarity is to be determined on the basis of visual, aural, connotative comparisons and overall impressions
engendered by the marks in controversy as they are encountered in the realities of the marketplace. The totality or holistic test
only relies on visual comparison between two trademarks whereas the dominancy test relies not only on the visual but also on
the aural and connotative comparisons and overall impressions between the two trademarks.
In addition, the word "MASTER" is neither a generic nor a descriptive term. As such, said term cannot be
invalidated as a trademark and, therefore, may be legally protected.
o Generic terms are those which constitute "the common descriptive name of an article or substance," or comprise the
"genus of which the particular product is a species," or are "commonly used as the name or description of a kind of
goods," or "imply reference to every member of a genus and the exclusion of individuating characters," or "refer to the
basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular
product," and are not legally protectable.
o On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in its normal and
natural sense, it "forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has
never seen it and does not know what it is," or "if it forthwith conveys an immediate idea of the ingredients, qualities
or characteristics of the goods," or if it clearly denotes what goods or services are provided in such a way that the
consumer does not have to exercise powers of perception or imagination.
Rather, the term "MASTER" is a suggestive term brought about by the advertising scheme of Nestle. Suggestive
terms are those which, in the phraseology of one court, require "imagination, thought and perception to reach a conclusion as
to the nature of the goods." Such terms, "which subtly connote something about the product," are eligible for protection in the
absence of secondary meaning. While suggestive marks are capable of shedding "some light" upon certain characteristics of the
goods or services in dispute, they nevertheless involve "an element of incongruity," "figurativeness," or " imaginative effort on
the part of the observer."
The term "MASTER", therefore, has acquired a certain connotation to mean the coffee products MASTER ROAST and
MASTER BLEND produced by Nestle. As such, the use by CFC of the term "MASTER" in the trademark for its coffee product
FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers.

FRUIT OF THE LOOM INC. VS CA

Facts: Petitioner is a corporation duly organized and existing under the laws of the State of Rhode Island, USA. It is the registrant of
the trademark Fruit of the Loom in the Philippine Patent Office and was issued two Certificates of Registration, one of which was in
1957 and the other in 1958.

Private respondent, a domestic corporation, is the registrant of the trademark Fruit for Eve in the Philippine Patent Office. Both are
involved in the merchandise of garments.

Petitioner filed a complaint for infringement of trademark and unfair competition against private respondent, alleging that:

The latters trademark is confusingly similar to the formers, both trademarks being used in womens panties and other textile
products
That the hang tags used by private respondent is a colorable imitation of those of the petitioner

Petitioner respondent alleged that there was no confusing similarity between the trademarks. At the pre-trial, the following admissions
were made:

That the registered trademark Fruit for Eve bears the notice Reg. Phil. Pat. Off. While that of Fruit of the Loom does not
That at the time of its registration, the plaintiff filed no opposition thereto.

The lower court rendered a decision in favor of the petitioner, permanently enjoining private respondent from using the trademark
Fruit for Eve.

Both parties appealed to the Court of Appeals wherein the petitioner questioned the lower courts failure to award damages in its favor
and private respondent sought the reversal of the lower courts decision.

The Court of Appeals rendered a decision reversing the lower courts decision and dismissing the petitioners complaint. The
petitioners motion for reconsideration was denied.
ISSUE: whether or not private respondent's trademark FRUIT FOR EVE and its hang tag are confusingly similar to petitioner's
trademark FRUIT OF THE LOOM and its hang tag so as to constitute an infringement of the latter's trademark rights and justify the
cancellation of the former.

HELD: NO. In cases involving infringement of trademark brought before this Court, it has been consistently held that there is
infringement of trademark when the use of the mark involved would be likely to cause confusion or mistake in the mind of the public or
to deceive purchasers as to the origin or source of the commodity. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels in order that he may draw his conclusion where one is
confusingly similar to the other.

As to the design and coloring scheme of the hang tags, We believe that while there are similarities in the two marks like the red apple at
the center of each mark, We also find differences or dissimilarities which are glaring and striking to the eye such as:

1. The shape of petitioner's hang tag is round with a base that looks like a paper rolled a few inches in both ends; while
that of private respondent is plain rectangle without any base.

2. The designs differ. Petitioner's trademark is written in almost semi-circle while that of private respondent is
written in straight line in bigger letters than petitioner's. Private respondent's tag has only an apple in its center but
that of petitioner has also clusters of grapes that surround the apple in the center.

3. The colors of the hang tag are also very distinct from each other. Petitioner's hang tag is fight brown while that of
respondent is pink with a white colored center piece. The apples which are the only similarities in the hang tag are
differently colored. Petitioner's apple is colored dark red, while that of private respondent is light red.

The similarities of the competing trademarks in this case are completely lost in the substantial differences in the design and general
appearance of their respective hang tags. WE have examined the two trademarks as they appear in the hang tags submitted by the
parties and We are impressed more by the dissimilarities than by the similarities appearing therein. WE hold that the trademarks
FRUIT OF THE LOOM and FRUIT FOR EVE do not resemble each other as to confuse or deceive an ordinary purchaser.

WILMAR PRODUCTS CORPORATION VS JESICHRIS MANUFACTURING CORP.

FACTS: [Respondent] Jesichris Manufacturing Company ([respondent] for short) filed this present complaint for damages for unfair
competition with prayer for permanent injunction to enjoin [petitioner] Willaware Products Corporation ([petitioner] for short) from
manufacturing and distributing plastic-made automotive parts similar to those of [respondent].

[Respondent] alleged that it is a duly registeredpartnership engaged in the manufacture and distribution of plastic and metal products,
with principal office at No. 100 Mithi Street, Sampalukan, Caloocan City. Since its registration in 1992, [respondent] has been
manufacturing in its Caloocan plant and distributing throughout the Philippines plastic-made automotive parts. [Petitioner], on the
other hand, which is engaged in the manufacture and distribution of kitchenware items made of plastic and metal has its office near that
of [respondent]. [Respondent] further alleged that in view of the physical proximity of [petitioners] office to [respondents] office, and
in view of the fact that some of the [respondents] employeeshad transferred to [petitioner], [petitioner] had developed familiarity with
[respondents] products, especially its plastic-made automotive parts.

That sometime in November 2000, [respondent] discovered that [petitioner] had been manufacturing and distributing the same
automotive parts with exactly similar design, same material and colors but was selling these products at a lower price as [respondents]
plastic-made automotive parts and to the same customers.

[Respondent] alleged that it had originated the use of plastic in place of rubber in the manufacture ofautomotive underchassis parts
such as spring eye bushing, stabilizer bushing, shock absorberbushing, center bearing cushions, among others. [Petitioners]
manufacture of the same automotive parts with plastic materialwas taken from [respondents] idea of using plastic for automotive parts.
Also, [petitioner] deliberately copied [respondents] products all of which acts constitute unfair competition, is and are contrary to law,
morals, good customs and public policy and have caused [respondent] damages in terms oflost and unrealizedprofits in the amount of
TWO MILLION PESOS as of the date of [respondents] complaint.

Furthermore, [petitioners] tortuous conduct compelled [respondent] to institute this action and thereby to incur expenses in the way of
attorneys fees and other litigation expenses in the amount of FIVE HUNDRED THOUSAND PESOS (P500,000.00).

In its Answer, [petitioner] denies all the allegations of the [respondent].

The RTC ruled in favor of respondent. It ruled that petitioner clearly invaded the rights or interest of respondent by deliberately copying
and performing acts amounting to unfair competition.

In a Decision dated November 24,2010, the CA affirmed with modification the ruling of the RTC.
Dissatisfied, petitioner moved for reconsideration. However, the same was denied for lack of merit by the CA.

ISSUE: whether or not petitioner committed acts amounting to unfair competition

HELD: YES. Artticle 28 of the Civil Code provides that "unfair competition in agricultural, commercial or industrial enterprises or in
labor through the use of force, intimidation, deceit, machination or any other unjust, oppressive or high-handed method shall give rise
to a right of action by the person who thereby suffers damage."

From the foregoing, it is clear thatwhat is being sought to be prevented is not competitionper sebut the use of unjust, oppressive or
high- handed methods which may deprive others of a fair chance to engage in business or to earn a living. Plainly,what the law prohibits
is unfair competition and not competition where the means usedare fair and legitimate.

In order to qualify the competition as "unfair," it must have two characteristics: (1) it must involve an injury to a competitor or trade
rival, and (2) it must involve acts which are characterized as "contrary to good conscience," or "shocking to judicial sensibilities," or
otherwise unlawful.

Here, both characteristics are present.

First, both parties are competitors or trade rivals, both being engaged in the manufacture of plastic-made automotive parts. Second, the
acts of the petitioner were clearly "contrary to good conscience" as petitioner admitted having employed respondents formeremployees,
deliberately copied respondents products and even went to the extent of selling these products to respondents customers.10

Thus, it is evident that petitioner isengaged in unfair competition as shown by his act of suddenly shifting his business from
manufacturing kitchenware to plastic-made automotive parts; his luring the employees of the respondent to transfer to his employ and
trying to discover the trade secrets of the respondent.12

DEL MONTE CORP. VS CA

FACTS: Petitioner Del Monte Corporation is a foreign company organized under the laws of the United States and not engaged in
business in the Philippines. Both the Philippines and the United States are signatories to the Convention of Paris, a treaty which grants
to the nationals of the parties rights and advantages which their own nationals enjoy for the repression of acts of infringement and
unfair competition. On the other hand, petitioner Philippine Packing Corporation (Philpack) is a domestic corporation duly organized
under the laws of the Philippines.

Sometime in 1965, Del Monte authorized Philpack to register with the Philippine Patent Office the Del Monte catsup bottle
configuration, for which it was granted Certificate of Trademark Registration by the Philippine Patent Office under the Supplemental
Register. In 1969, Del Monte granted Philpack the right to manufacture, distribute and sell in the Philippines various agricultural
products, including catsup, under the Del Monte trademark and logo. In 1972, Del Monte also obtained two registration certificates for
its trademark DEL MONTE and its logo.

Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of Registration by the Bureau of Domestic Trade in 1980
to engage in the manufacture, packing, distribution and sale of various kinds of sauce, identified by the logo Sunshine Fruit Catsup. The
logo was registered in the Supplemental Register in 1983. Sunshine Sauces product itself was contained in various kinds of bottles,
including the Del Monte bottle, which it bought from the junk shops for recycling.

Philpack received reports that Sunshine Sauce was using its exclusively designed bottles and a logo confusingly similar to Del Montes.
Philpack warned Sunshine Sauce to desist from doing so on pain of legal action. Thereafter, claiming that the demand had been ignored,
Philpack and Del Monte filed a complaint against the Sunshine Sauce for infringement of trademark and unfair competition.

Sunshine alleged that:

it had long ceased to use the Del Monte bottle and that
its logo was substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the
petitioners.
The RTC dismissed the complaint on the following grounds:

there were substantial differences between the logos or trademarks of the parties
Sunshine Sauce became the owner of the said bottles upon its purchase thereof from the junk yards
Del Monte and Philpack had failed to establish the its malice or bad faith, which is an essential element of infringement of
trademark or unfair competition
The CA affirmed RTCs decision in toto. Hence, the appeal.
Issue(s):
Whether or not Sunshine Sauce is guilty of unfair competition.
Whether or not Sunshine Sauce is guilty of infringement for having used the Del Monte bottle.
Held:
Yes, it is guilty of unfair competition.
The SC compared the Del Monte and Sunshine Sauces packaging. While it recognized several distinctions, it does not agree with the
conclusion that there was no infringement or unfair competition.

According to the SC, side-by-side comparison is not the final test of similarity. Such comparison requires a careful scrutiny to determine
in what points the labels of the products differ, as was done by the trial judge. The ordinary buyer does not usually make such scrutiny
nor does he usually have the time to do so. The average shopper is usually in a hurry and does not inspect every product on the shelf as
if he were browsing in a library.

The question is not whether the two articles are distinguishable by their label when set side by side but whether the general confusion
made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard, is such as to likely result in his
confounding it with the original.

A number of courts have held that to determine whether a trademark has been infringed, we must consider the mark as a whole and not
as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. The court therefore should
be guided by its first impression, for a buyer acts quickly and is governed by a casual glance, the value of which may be dissipated as
soon as the court assumes to analyze carefully the respective features of the mark.

It has also been held that it is not the function of the court in cases of infringement and unfair competition to educate purchasers but
rather to take their carelessness for granted, and to be ever conscious of the fact that marks need not be identical. A confusing similarity
will justify the intervention of equity. The judge must also be aware of the fact that usually a defendant in cases of infringement does
not normally copy but makes only colorable changes. Well has it been said that the most successful form of copying is to employ enough
points of similarity to confuse the public with enough points of difference to confuse the courts.

The Sunshine label is a colorable imitation of the Del Monte trademark. The predominant colors used in the Del Monte label are green
and red-orange, the same with Sunshine. The word catsup in both bottles is printed in white and the style of the print/letter is the
same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a tomato.

of infringement.
Sunshine Sauce is not guilty of infringement for having used the Del Monte bottle. The reason is that the configuration of the said bottle
was merely registered in the Supplemental Register. Registration only in the Supplemental Register means absence of the following
presumptions: validity of the trademark, the registrants ownership of the mark and his right to its exclusive use. It can be inferred from
the foregoing that although Del Monte has actual use of the bottle's configuration, the petitioners cannot claim exclusive use thereof
because it has not been registered in the Principal Register. However, we find that Sunshine, despite the many choices available to it
and notwithstanding that the caution "Del Monte Corporation, Not to be Refilled" was embossed on the bottle, still opted to use the
petitioners' bottle to market a product which Philpack also produces. This clearly shows the private respondent's bad faith and its
intention to capitalize on the latter's reputation and goodwill and pass off its own product as that of Del Monte.

COMLOMBIA PICTURES VS CA ANF SUNSHINE VIDEOS

Complainants thru counsel lodged a formal complaint with the National Bureau of Investigation for violation of PD No. 49, as
amended, and sought its assistance in their anti-film piracy drive. Agents of the NBI and private researchers made discreet surveillance
on various video establishments in Metro Manila including Sunshine Home Video Inc. (Sunshine for brevity), owned and operated by
Danilo A. Pelindario with address at No. 6 Mayfair Center, Magallanes, Makati, Metro Manila.
On November 14, 1987, NBI Senior Agent Lauro C. Reyes applied for a search warrant with the court a quo against Sunshine
seeking the seizure, among others, of pirated video tapes of copyrighted films all of which were enumerated in a list attached to the
application; and, television sets, video cassettes and/or laser disc recordings equipment and other machines and paraphernalia used or
intended to be used in the unlawful exhibition, showing, reproduction, sale, lease or disposition of videograms tapes in the premises
above described. In the hearing of the application, NBI Senior Agent Lauro C. Reyes, upon questions by the court a quo, reiterated in
substance his averments in his affidavit. His testimony was corroborated by another witness, Mr. Rene C. Baltazar. Atty. Rico V.
Domingos deposition was also taken. On the basis of the affidavits and depositions of NBI Senior Agent Lauro C. Reyes, Rene C.
Baltazar and Atty. Rico V. Domingo, Search Warrant No 87-053 for violation of Section 56 of PD No. 49, as amended, was issued by the
court a quo.
The search warrant was served at about 1:45 p.m. on December 14, 1987 to Sunshine and/or their representatives. In the course of
the search of the premises indicated in the search warrant, the NBI Agents found and seized various video tapes of duly copyrighted
motion pictures/films owned or exclusively distributed by private complainants, and machines, equipment, television sets,
paraphernalia, materials, accessories all of which were included in the receipt for properties accomplished by the raiding team. Copy of
the receipt was furnished and/or tendered to Mr. Danilo A. Pelindario, registered owner-proprietor of Sunshine Home Video.
ISSUE: W/N copyright infringements present in case at bar?

HELD : The trial courts finding that private respondents committed acts in blatant transgression of Presidential Decree No. 49 all
the more bolsters its findings of probable cause, which determination can be reached even in the absence of master tapes by the judge in
the exercise of sound discretion. The executive concern and resolve expressed in the foregoing amendments to the decree for the
protection of intellectual property rights should be matched by corresponding judicial vigilance and activism, instead of the apathy of
submitting to technicalities in the face of ample evidence of guilt.
The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an appropriate
understanding thereof. Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright,
and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in
the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute
on the owner of the copyright.[78]
A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases, did not know what works he
was indirectly copying, or did not know whether or not he was infringing any copyright; he at least knew that what he was copying was
not his, and he copied at his peril. In determining the question of infringement, the amount of matter copied from the copyrighted work
is an important consideration. To constitute infringement, it is not necessary that the whole or even a large portion of the work shall
have been copied. If so much is taken that the value of the original is sensibly diminished, or the labors of the original author are
substantially and to an injurious extent appropriated by another, that is sufficient in point of law to constitute a piracy.[79] The question
of whether there has been an actionable infringement of a literary, musical, or artistic work in motion pictures, radio or television being
one of fact,[80] it should properly be determined during the trial. That is the stage calling for conclusive or preponderating evidence, and
not the summary proceeding for the issuance of a search warrant wherein both lower courts erroneously require the master tapes.