PHILIPPINE REFINING CO., INC., vs.
NG SAM and THE DIRECTOR Patent Office for registration of the identical trademark
OF PATENTS
No. L-26676. July 30, 1982.
DOCTRINES:
A rudimentary precept in trademark protection is that the right
to a trademark is a limited one, in the sense that others may use
the same mark on unrelated goods. Thus, as pronounced by the
United States Supreme Court in the case of American Foundries
vs. Robertson, the mere fact that one person has adopted and
used a trademark on his goods does not prevent the adoption and
use of the same trademark by others on articles of a different
description.
Such restricted right over a trademark is likewise reflected in our
Trademark Law. Under Section 4(d) of the law, registration of a
trademark which so resembles another already registered or in
use should be denied, where to allow such registration could
likely result in confusion, mistake or deception to the consumers.
Conversely, where no confusion is likely to arise, as in this case,
registration of a similar or even identical mark may be allowed.
A trademark is designed to identify the user. But it should be so
distinctive and sufficiently original as to enable those who come
into contact with it to recognize instantly the identity of the user.
It must be affirmative and definite, significant and distinctive,
capable to indicate origin.
FACTS:
The trademark CAMIA was first used in the Philippines by
petitioner Philippine Refining Co. (PhilRefining) on its
products in 1922. In 1949, petitioner caused the registration
of said trademark with the Philippine Patent Office under
certificates of registration Nos. 1352-S and 1353-S, both
issued on May 3, 1949. Certificate of Registration No. 1352-S
covers vegetable and animal fats, particularly lard, butter and
cooking oil, all classified under Class 47 (Foods and
Ingredients of Food) of the Rules of Practice of the Patent
Office, while certificate of registration No. 1353-S applies to
abrasive detergents, polishing materials and soap of all kinds
(Class 4).
On November 25, 1960, respondent Ng Sam, a Chinese citizen
residing in Iloilo City, filed an application with the Philippine
CAMIA for his product, ham, which likewise falls under Class
47. Alleged date of first use of the trademark by respondent
was on February 10, 1959.
After due publication of the application, petitioner
PhilRefining filed an opposition, in accordance with Section 8
of Republic Act No. 166, otherwise known as the Trademark
Law, as amended. Basis of petitioners opposition was Section
4(d) of said law, which provides as unregistrable: a mark
which consists of or comprises a mark or tradename which so
resembles a mark or tradename registered in the Philippines
or a mark or tradename previously used in the Philippines by
another and not abandoned, as to be likely, when applied to or
used in connection with the goods, business services of the
applicant, to cause confusion or mistake or to deceive
purchasers.
The parties submitted the case for decision without
presenting any evidence; the Director of Patents rendered a
decision allowing registration of the trademark CAMIA in
favor of Ng Sam. Petitioner moved for a reconsideration, but
the same was denied.
Hence, this petition.
ISSUE:
1. Whether the product of respondent Ng Sam, which is
ham, and those of petitioner consisting of lard, butter,
cooking oil and soap are so related that the use of the
same trademark CAMIA on said goods would likely
result in confusion as to their source or origin? No.
2. Is there infringement even if the goods are non-
competing?
NO. In fine, We hold that the business of the parties are
non-competitive and their products so unrelated that
the use of identical trademarks is not likely to give rise
to confusion, much less cause damage to petitioner.
RULING:
The records of this case disclose that the term CAMIA has been
registered as a trademark not only by petitioner but by two (2)
other concerns, as follows:
1. CAMIA
Application No. 280
Registration No. SR-320
Date RegisteredMay 26, 1960
OwnerEverbright Development Company
Business Address310 M. H. del Pilar
Grace Park, Caloocan City
Class 4Thread and Yarn
2. CAMIA and Representation
Application No. 538
Date FiledAugust 10, 1945
Date RegisteredApril 20, 1946
OwnerF.E. Zuellig, Inc.
Business Address55 Rosario St., Manila
Class 43Particular Good on which mark is used: Textiles,
Embroideries laces, etc.
 by the are descriptive properties,
A trademark is designed to trademar ordinary embraces competitive and
identify the user. But it ks if used day-to- noncompetitive trademark
should be so distinctive and in day infringement but it is not so
sufficiently original as to conjuncti househol extensive as to be applicable
enable those who come into on with d items to cases where the public
contact with it to recognize the whereas would not reasonably expect
instantly the identity of the respectiv ham is the plaintiff to make or sell
user. It must be affirmative e goods not the same class of goods as
and definite, significant and of the necessar those made or sold by the
distinctive, capable to parties. I ily so. defendant. (Italics
indicate origin. It is believe Thus, the supplied).
evident that CAMIA as a that ham goods of
trademark is far from being on one the In fine, We hold that the
distinctive. By itself, it does hand, parties business of the parties are
not identify petitioner as and lard, are not non-competitive and their
the manufacturer or butter, of a products so unrelated that
producer of the goods upon oil, and characte the use of identical
which said mark is used, as soap on r which trademarks is not likely to
contra-distinguished to the other purchase give rise to confusion, much
trademarks derived from are rs would less cause damage to
coined words such as products be likely petitioner.
Rolex, Kodak or Kotex that to
It has been held that if a would attribute WHEREFORE, the instant
mark is so commonplace not move to a petition is hereby dismissed
that it cannot be readily in the common and the decision of the
distinguished from others, same origin. Director of Patents in Inter
then it is apparent that it manner (p. 23, Partes Case No. 231
cannot identify a particular through Rollo). affirmed in toto. Costs
business; and he who first the same against petitioner.
adopted it cannot be channels The observation and SO ORDERED.
injured by any subsequent of trade. conclusion of the Director
appropriation or imitation They of Patents are correct. The
by others, and the public pertain particular goods of the
will not be deceived. to parties are so unrelated
unrelate that consumers would not
In his decision, the Director d fields in any probability
of Patents enumerated the of mistake one as the source
factors that set manufact or origin of the product of
respondents product apart ure, the other. The goods of
from the goods of might be petitioners are basically
petitioner. He opined and distribut derived from vegetable oil
We quote: ed and and animal fats, while the
I have markete product of respondent is
taken d under processed from pigs legs. A
into dissimila consumer would not
account r reasonably assume that
such conditio petitioner has so diversified
factors ns, and its business as to include
as are the product of respondent.
probable displaye
purchase d Mr. Runolf Callman, in
r separatel Section 80.3, VOL. I, p. 1121
attitude y even of his book, Unfair
and though Competition and Trade
habits, they Marks, declares: While
marketin frequentl confusion of goods can only
g y may be be evident where the
activities sold litigants are actually in
, retail through competition, confusion of
outlets, the same business may arise between
and retail non-competitive interests
commerc food as well. This is true whether
ial establish or not the trademarks are
impressi ments. registered. Sec. 16 of the
on likely Opposer Trademark Act, in referring
to be s to merchandise of
conveyed products substantially the same