Additional Cases:

EY Industrial Sales vs Shen Dar, G.R. No. 184850 : October 20, 2010.
http://sc.judiciary.gov.ph/jurisprudence/2010/october2010/184850.htm

E.Y. Industrial Sales Inc. and Engracio Yap vs. Shen Dar Electricity and Machinery Co.
G.R. No. 184850, October 20, 2010
FACTS:
EYIS is a domestic corporation engaged in the production, distribution and sale of air
compressors and other industrial tools and equipment. Petitioner Engracio Yap is the Chairman of
the Board of Directors of EYIS. Respondent Shen Dar, on the other hand, is a Taiwan-based
foreign corporation engaged in the manufacture of air compressors. 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, 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. There is no documentary evidence to show that such air
compressors were marked “VESPA.”
On June 9, 1997, Shen Dar filed a Trademark Application with the IPO for the mark
“VESPA, Chinese Characters and Device” for use on air compressors and welding machines. On
July 28, 1999, EYIS filed a Trademark Application also for the mark “VESPA,” for use on air
compressors. On January 18, 2004, the IPO issued COR No. 4-1999-005393 in favor of EYIS.
Thereafter, on February 8, 2007, Shen Dar was also issued COR No. 4-1997-121492. In the
meantime, on June 21, 2004, Shen Dar filed a Petition for Cancellation of EYIS’ COR with the
BLA. 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. The BLA and the IPO Director General denied Shen Dar’s petition.
However, the Court of Appeals reversed the decision and ruled in favor of herein respondent.
Hence, this appeal on Certiorari.
ISSUE:
Whether or not E.Y. Indiustrial Sales is the true owner of the mark “Vespa”
HELD:
YES. Under Section 123(d) of RA 8293, the registration of a mark is prevented with the
filing of an earlier application for registration. This must not, however, be interpreted to mean that
ownership should be based upon an earlier filing date. While RA 8293 removed the previous
requirement of proof of actual use prior to the filing of an application for registration of a mark,
proof of prior and continuous use is necessary to establish ownership of a mark. Such ownership
constitutes sufficient evidence to oppose the registration of a mark.
Sec. 134 of the IP Code provides that “any person who believes that he would be damaged
by the registration of a mark x x x” may file an opposition to the application. The term “any person”
1
Page

encompasses the true owner of the mark -- the prior and continuous user.

nazh//ela//1838
 Notably, the Court has ruled that the prior and continuous use of a mark may even
overcome the presumptive ownership of the registrant and be held as the owner of the mark. Here,
the incontrovertible truth, as established by the evidence submitted by the parties, is that Petitioner
E.Y. Industrial Sales is the prior user of the mark. On the other hand, Shen Dar failed to refute the
evidence cited by the BLA in its decision. More importantly, Shen Dar failed to present sufficient
evidence to prove its own prior use of the mark “VESPA.” As such, E.Y. Industrial Sales must be
considered as the prior and continuous user of the mark “VESPA” and its true owner. Hence, E.Y.
Industrial Sales is entitled to the registration of the mark in its name.

Dermaline, Inc. vs. Myra Pharmaceuticals, G.R. No. 190065 : August 16, 2010.
http://sc.judiciary.gov.ph/jurisprudence/2010/august2010/190065.htm
2 Dermaline, Inc. vs. Myra Pharmaceuticals, Inc.
FACTS
Petitioner Dermaline filed before the Intellectual Property Office (IPO) an application for
registration of the trademark “DERMALINE DERMALINE, INC.”Respondent Myra filed a
Verified Opposition 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. It further alleged that Dermaline’s use and registration of its applied trademark
will diminish the distinctiveness and dilute the goodwill of Myra’s “DERMALIN,” which Myra
has been extensively commercially since October 31, 1977, and said mark is still valid and
subsisting.
Myra contends that despite Dermaline’s 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 asserted that the mark “DERMALINE
DERMALINE, INC.” is aurally similar to its own mark such that the registration and use of
Dermaline’s applied mark will enable it to obtain benefit from Myra’s 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 for various skin
treatments, it could still be connected to the “DERMALIN” mark under Classification 5 for
pharmaceutical products, since ultimately these goods are very closely related. The IPO Bureau of
Legal Affairs ruled in favor of respondent; said decision was sustained by the IPO Director General
and the Court of Appeals.
ISSUE
Whether or not petitioner’s use of“Dermaline Dermaline Inc”can result in confusion,
mistake or deception on the part of the purchasing public
RULING
Yes. 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. As a registered trademark
2

owner, Myra has the right under Section 147 of R.A. No. 8293 to prevent third parties from using
Page

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.

nazh//ela//1838
 In determining likelihood of confusion, case law has 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 or deception. It
is applied when the trademark sought to be registered contains the main, essential and dominant
features of the earlier registered trademark, and confusion or deception is likely to result.
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. The important issue is whether the use of
the marks involved would likely cause confusion or mistake in the mind of or deceive the ordinary
purchaser, or one who is accustomed to buy, and therefore to some extent familiar with, the goods
in question. Given greater consideration are 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 test of dominancy is now explicitly incorporated into law in Section 155.1 of R.A.
No. 8293 which provides—
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a
registered mark or the same container or a dominant feature thereof in connection with the sale,
offering for sale, distribution, advertising of any goods or services including other preparatory
steps necessary to carry out the sale of any goods or services on or in connection with which such
use is likely to cause confusion, or to cause mistake, or to deceive; (emphasis supplied)
On the other hand, the Holistic Test entails a consideration of the entirety of the marks as
applied to the products, including labels and packaging, in determining confusing similarity. The
scrutinizing eye of the observer must focus not only on the predominant words but also on the
other features appearing in both labels so that a conclusion may be drawn as to whether one is
confusingly similar to the other.
Relative to the question on confusion of marks and trade names, jurisprudence has 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.
Both confusion of goods and service and confusion of business or of origin were apparent
in both trademarks. While there are no set rules that can be deduced as what constitutes a dominant
feature with respect to trademarks applied for registration; usually, what are taken into account are
signs, color, design, peculiar shape or name, or some special, easily remembered earmarks of the
brand that readily attracts and catches the attention of the ordinary consumer.
While it is true that the two marks are presented differently – Dermaline’s mark is written
with the first “DERMALINE” in script going diagonally upwards from left to right, with an upper
case “D” followed by the rest of the letters in lower case, and the portion “DERMALINE, INC.”
is written in upper case letters, below and smaller than the long-hand portion; while Myra’s mark
“DERMALIN” is written in an upright font, with a capital “D” and followed by lower case letters
– the likelihood of confusion is still apparent. This is because they are almost spelled in the same
way, except for Dermaline’s 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 Dermaline’s
3

mark pronounced silently. Thus, when an ordinary purchaser, for example, hears an advertisement
Page

nazh//ela//1838
of Dermaline’s applied trademark over the radio, chances are he will associate it with Myra’s
registered mark.
Dermaline’s stance that its product belongs to a separate and different classification from
Myra’s 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.
Indeed, the registered trademark owner may use its mark on the same or similar products, in
different segments of the market, and at different price levels depending on variations of the
products for specific segments of the market. The Court is cognizant that the registered trademark
owner enjoys protection in product and market areas that are the normal potential expansion of his
business.
Thus, the public may mistakenly think that Dermaline is connected to or associated with
Myra, such that, considering the current proliferation of health and beauty products in the market,
the purchasers would likely be misled that Myra has already expanded its business through
Dermaline from merely carrying pharmaceutical topical applications for the skin to health and
beauty services.
Verily, 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. This is intended not only to avoid confusion
on the part of the public, but also to protect an already used and registered trademark and an
established goodwill.

Taiwan Kolin Corp. Ltd vs Kolin Electronics Co., G.R. No. 209843, March 25, 2015.
http://www.chanrobles.com/cralaw/2015marchdecisions.php?id=214

Taiwan Kolin vs Kolin Electronics

Case Digest GR 209843 March 25 2015

Facts:
Taiwan Kolin Corp sought to register the trademark “KOLIN” in Class 9 on the following
combination of goods: television sets, cassette recorder, VCD Amplifiers, camcorders and other
audio/video electronic equipment, flat iron, vacuum cleaners, cordless handsets, videophones,
facsimile machines, teleprinters, cellular phones and automatic goods vending machine.
Kolin Electronics opposed the application on the ground that the trademark “KOLIN” is
identical, if not confusingly similar, with its registered trademark “KOLIN” which covers the
following products under Class 9 of the Nice Classification (NCL): automatic voltage regulator,
converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and
PA amplified AC-DC. Kolin Electronics argued that the products are not only closely-related
because they fall under the same classification, but also because they are inherently similar for
being electronic products and are plugged into electric sockets and perform a useful function.
Issue: W/N the products are closely-related
Held:
No, the products are not related and the use of the trademark KOLIN on them would not
likely cause confusion. To confer exclusive use of a trademark, emphasis should be on the
4
Page

similarity or relatedness of the goods and/or services involved and not on the arbitrary
classification or general description of their properties or characteristics.

nazh//ela//1838
 First, products classified under Class 9 can be further classified into five categories.
Accordingly, the goods covered by the competing marks between Taiwan Kolin and Kolin
Electronics fall under different categories. Taiwan Kolin’s goods are categorized as audio visual
equipments, while Kolin Electronics’ goods fall under devices for controlling the distribution and
use of electricity. Thus, it is erroneous to assume that all electronic products are closely related
and that the coverage of one electronic product necessarily precludes the registration of a similar
mark over another.
Second, the ordinarily intelligent buyer is not likely to be confused. The distinct visual and
aural differences between the two trademarks “KOLIN”, although appear to be minimal, are
sufficient to distinguish between one brand or another. The casual buyer is predisposed to be more
cautious, discriminating, and would prefer to mull over his purchase because the products involved
are various kind of electronic products which are relatively luxury items and not considered
affordable. They are not ordinarily consumable items such as soy sauce, ketsup or soap which are
of minimal cost. Hence, confusion is less likely.

Seri Soomboonsakdikul vs. Orlane, S.A. G.R. No. 188996, February 1, 2017.
http://www.lawphil.net/judjuris/juri2017/feb2017/gr_188996_2017.html

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

147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is
registered in the Philippines, shall extend to goods and services which are not similar to those in
respect of which the mark is registered: Provided, That use of that mark in relation to those goods or
services would indicate a connection between those goods or services and the owner of the
registered mark: Provided further, That the interests of the owner of the registered mark are likely to
be damaged by such use. (n)

Application Procedure (Sec. 124 – 144)

Requirements of Application (Sec. 124)

Section 124. Requirements of Application. - 124.1. The application for the registration of the mark
shall be in Filipino or in English and shall contain the following:
5

(a) A request for registration;

Page

(b) The name and address of the applicant;

nazh//ela//1838
 (c) The name of a State of which the applicant is a national or where he has domicile; and
the name of a State in which the applicant has a real and effective industrial or commercial
establishment, if any;

(d) Where the applicant is a juridical entity, the law under which it is organized and existing;

(e) The appointment of an agent or representative, if the applicant is not domiciled in the
Philippines;

(f) Where the applicant claims the priority of an earlier application, an indication of:

i) The name of the State with whose national office the earlier application was filed or
if filed with an office other than a national office, the name of that office,

ii) The date on which the earlier application was filed, and

iii) Where available, the application number of the earlier application;

(g) Where the applicant claims color as a distinctive feature of the mark, a statement to that
effect as well as the name or names of the color or colors claimed and an indication, in
respect of each color, of the principal parts of the mark which are in that color;

(h) Where the mark is a three-dimensional mark, a statement to that effect;

(i) One or more reproductions of the mark, as prescribed in the Regulations;

(j) A transliteration or translation of the mark or of some parts of the mark, as prescribed in
the Regulations;

(k) The names of the goods or services for which the registration is sought, grouped
according to the classes of the Nice Classification, together with the number of the class of
the said Classification to which each group of goods or services belongs; and

(l) A signature by, or other self-identification of, the applicant or his representative.

124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence
to that effect, as prescribed by the Regulations within three (3) years from the filing date of the
application. Otherwise, the application shall be refused or the mark shall be removed from the
Register by the Director.

124.3. One (1) application may relate to several goods and/or services, whether they belong to one
(1) class or to several classes of the Nice Classification.

124.4. If during the examination of the application, the Office finds factual basis to reasonably doubt
the veracity of any indication or element in the application, it may require the applicant to submit
sufficient evidence to remove the doubt. (Sec. 5, R.A. No. 166a)
6
Page

nazh//ela//1838
Filing date (Sec. 127, 127.2)

Section 127. Filing Date. - 127.1. Requirements. - The filing date of an application shall be the date
on which the Office received the following indications and elements in English or Filipino:

(a) An express or implicit indication that the registration of a mark is sought;

(b) The identity of the applicant;

(c) Indications sufficient to contact the applicant or his representative, if any;

(d) A reproduction of the mark whose registration is sought; and

(e) The list of the goods or services for which the registration is sought.

127.2. No filing date shall be accorded until the required fee is paid. (n)

Priority Right (Sec. 131)

Section 131. Priority Right. - 131.1. An application for registration of a mark filed in the Philippines
by a person referred to in Section 3, and who previously duly filed an application for registration of
the same mark in one of those countries, shall be considered as filed as of the day the application
was first filed in the foreign country.

131.2. No registration of a mark in the Philippines by a person described in this section shall be
granted until such mark has been registered in the country of origin of the applicant.

131.3. Nothing in this section shall entitle the owner of a registration granted under this section to
sue for acts committed prior to the date on which his mark was registered in this country: Provided,
That, notwithstanding the foregoing, the owner of a well-known mark as defined in Section 123.1(e)
of this Act, that is not registered in the Philippines, may, against an identical or confusingly similar
mark, oppose its registration, or petition the cancellation of its registration or sue for unfair
competition, without prejudice to availing himself of other remedies provided for under the law.

131.4. In like manner and subject to the same conditions and requirements, the right provided in this
section may be based upon a subsequent regularly filed application in the same foreign country:
Provided, That any foreign application filed prior to such subsequent application has been
withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection
and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis
for claiming a right of priority. (Sec. 37, R.A. No. 166a)

Certificate of Registration (Sec. 138)

Section 138. Certificates of Registration. - A certificate of registration of a mark shall be prima facie
evidence of the validity of the registration, the registrant's ownership of the mark, and of the
registrant's exclusive right to use the same in connection with the goods or services and those that
7

are related thereto specified in the certificate. (Sec. 20, R.A. No. 165)
Page

nazh//ela//1838
Case:

Canon Kabushiki Kaisha v. CA, G.R. No. 120900, July 20, 2000.
http://sc.judiciary.gov.ph/jurisprudence/2000/july2000/120900.htm

CANON KABUSHIKI KAISHA vs. COURT OF APPEALS

G.R. No. 120900, July 20, 2000
FACTS:
On January 15, 1985, private respondent NSR Rubber Corporation filed an application for
registration of the mark CANON for sandals in the Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a Verified Notice of Opposition
alleging that it will be damaged by the registration of the trademark CANON in the name of private
respondent since they were using the same trademark for their footwear line of products. The
private respondent will also use the name Canon for its footwear products.
Based on the records, the evidence presented by petitioner consisted of its certificates of
registration for the mark CANON in various countries covering goods belonging to class 2, paints,
chemical products, toner, and dye stuff. Petitioner also submitted in evidence its Philippine
Trademark Registration No. 39398, showing its ownership over the trademark CANON.
The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of
petitioner and giving due course to NSR's application for the registration of the trademark
CANON. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals that eventually
affirmed the decision of the BPTTT.
ISSUE: Is the use of trademark, CANON, by the private respondent affects the business of Canon
Kabushiki Kaisha who has an existing ownership of a trademark also known as CANON?
HELD:
No. The Supreme Court says that ordinarily, the ownership of a trademark or tradename is
a property right that the owner is entitled to protect as mandated by the Trademark Law. However,
when a trademark is used by a party for a product in which the other party does not deal, the use
of the same trademark on the latter's product cannot be validly objected to.
The BPTTT correctly ruled that since the certificate of registration of petitioner for the
trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private respondent
can use the trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a
world of difference between the paints, chemical products, toner, and dyestuff of petitioner and
the sandals of private respondent.
Clearly, there is a world of difference between the paints, chemical products, toner, and
dyestuff of petitioner and the sandals of private respondent.
In re Treaty of Paris: the then Minister of Trade and Industry Ongpin issued guidelines in
the implementation of Article 6 of the Treaty of Paris. The conditions are:
a) the mark must be internationally known;
b) the subject of the right must be a trademark, not a patent or copyright or anything else;
c ) the mark must be for use in the same or similar kinds of goods; and
d) the person claiming must be the owner of the mark
Petitioner failed to comply with the third requirement of the said memorandum that is the mark
must be for use in the same or similar kinds of goods.
8
Page

nazh//ela//1838
Faberge Inc. v IAC, G.R. No. 71189, November 4, 1992.
http://www.lawphil.net/judjuris/juri1992/nov1992/gr_71189_1992.html

Faberge , Incorporated v. The Intermediate Appellate Court and Co Beng Kay

04 November 1992; Melo, J.
I. Facts
Private respondent Co Beng Kay (CBK) filed with the Director of Patents an application
to register the trademark “BRUTE” for the briefs manufactured and sold by his Corporation in the
domestic market.
Petitioner Faberge opposed this application on the ground of the similarity of the said
trademark with Faberge’s own symbol “BRUT,” which it previously registered for after shave
lotion, shaving cream, deodorant, talcum powder, and toilet soap, likewise sold in the domestic
market.
The Director of Patents granted CBK’s application.
The CA initially reversed this decision, holding that the marks “BRUT” and “BRUTE”
were indeed quite similar, and that even if the products sold under these marks are different, it is
still reasonable to believe that the similarity would cause confusion and even mistake and
deception in the buying public as to the origin of the goods bearing such trademarks, especially
since modern department stores usually place CBK’s products (briefs) and Faberge’s products
(after shave lotion, etc.) in one section denominated as “Men’s Accessories.” In effect, this would
supposedly allow CBK to unjustly benefit from the goodwill and reputation that Faberge has
already established for its “BRUT” products.
Upon CBK’s MR however, the CA reversed its earlier ruling, holding that the controlling
ruling is to the effect that the identical trademark can be used by different manufacturers for
products that are non-competing and unrelated.
Thus, Faberge is now before the SC to contest the above ruling, insisting that there can be
unfair competition even if the goods are noncompeting, especially in view of the alleged repeal of
RA 166 by RA 666, which deleted the phrase in the former law that the merchandise must be
substantially of the same descriptive properties. It also adds that it has a pending application of the
trademark “BRUT 33 DEVICE” for briefs as proof that it intended to expand its mark "BRUT" to
other goods and thus, following the sentiment expressed by Justice JBL Reyes in Sta. Ana v.
Maliwat, it is entitled to relief that is available where the junior user's goods are not remote from
any product that the senior user would be likely to make or sell.
II. Issues
WON an earlier registration of a trademark can prevent a later registration of a similarly-
sounding trademark, even if the products falling under the two are unrelated and non-competing –
NO.
III. Holding
Petition denied. Decision of the CA is affirmed.
IV. Ratio
A review of the relevant provision of the Civil Code and RA 166, as amended would yield
the conclusion that CBK may be permitted to register the trademark “BRUTE” for briefs produced
by it notwithstanding Faberge’s vehement protestations of unfair dealings in marketing its own set
of items which are limited to: after-shave lotion, shaving cream, deodorant, talcum powder and
9

toilet soap.
Page

In as much as Faberge has not ventured in the production of briefs, an item which is not
listed in its certificate of registration, it cannot and should not be allowed to feign that CBK had

nazh//ela//1838
invaded its exclusive domain. Even its alleged application for registration of “BRUT” to other
products such as briefs was not annexed to its brief, and in any case, such application does not
suffice and may not vest an exclusive right in its favor that can ordinarily be protected by the
Trademark Law.
The certificate of registration issued by the Director of Patents can confer upon Faberge
the exclusive right to use its own symbol only to those goods specified in the certificate, subject
to any conditions and limitations stated therein.
WRT argument raised by Faberge as regards its alleged business expansion, which invokes
the wisdom imparted by Justice JBL Reyes in Sta. Ana vs. Maliwat to the effect that dissimilarity
of goods will not preclude relief if the junior user's goods are not remote from any other product
which the first user would be likely to make or sell, it is indeed true that Sec. 4(d) of RA 166, as
amended does not require that the articles of manufacture of the previous user and late user of the
mark should possess the same descriptive properties or should fall into the same categories as to
bar the latter from registering his mark in the principal register.
Yet, it is equally true that under Sec. 20 of the same law, the protective mantle of the
Trademark Law extends only to the goods used by the first user as specified in the certificate of
registration.
How should this apparent conflict between Sec. 4(d) and Sec. 20 be reconciled? The rule
has been laid down that the clause which comes later shall be given paramount significance over
an anterior proviso upon the presumption that it expresses the latest and dominant purpose. It
ineluctably follows that Sec. 20 is controlling and, therefore, CBK can appropriate its symbol for
the briefs it manufactures because as aptly remarked by Justice Sanchez in Sterling Products
v. Farbenfabriken:
“Really, if the certificate of registration were to be deemed as including goods not specified
therein, then a situation may arise whereby an applicant may be tempted to register a trademark
on any and all goods which his mind may conceive even if he had never intended to use the
trademark for the said goods. We believe that such omnibus registration is not contemplated by
our Trademark Law.”
Whatever deleterious effects may arise from the above interpretation of Sec. 20 in relation
to Sec. 4(d) of RA 166 is not entirely irreversible; however the remedy is legislative and not
judicial.
Neither can CBK be deemed to have committed infringement, which is defined as the use
without consent of the trademark owner of any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade name in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in connection with which such use is likely to
cause confusion or mistake or to deceive purchasers or others as to the source or origin of such
goods or services, or identity of such business.
The glaring discrepancies between the products of CBK, on the one hand, and of Faberge,
on the other, had been amply portrayed to such an extent that indeed, a purchaser who is out in
the market for the purpose of buying CBK’s BRUTE brief would definitely be not mistaken or
misled into buying Faberge’s BRUT after shave lotion or deodorant.
10
Page

nazh//ela//1838
Duration (Sec. 145, 146.2)
Section 145. Duration. - A certificate of registration shall remain in force for ten (10) years:
Provided, That the registrant shall file a declaration of actual use and evidence to that effect, or shall
show valid reasons based on the existence of obstacles to such use, as prescribed by the
Regulations, within one (1) year from the fifth anniversary of the date of the registration of the mark.
Otherwise, the mark shall be removed from the Register by the Office. (Sec. 12, R.A. No. 166a)

146.2. Such request shall be in Filipino or English and may be made at any time within six (6)
months before the expiration of the period for which the registration was issued or renewed, or it
may be made within six (6) months after such expiration on payment of the additional fee herein
prescribed.

Renewal (Sec. 146)

Section 146. Renewal. - 146.1. A certificate of registration may be renewed for periods of ten (10)
years at its expiration upon payment of the prescribed fee and upon filing of a request. The request
shall contain the following indications:

(a) An indication that renewal is sought;

(b) The name and address of the registrant or his successor-in-interest, hereafter referred to
as the "right holder";

(c) The registration number of the registration concerned;

(d) The filing date of the application which resulted in the registration concerned to be
renewed;

(e) Where the right holder has a representative, the name and address of that
representative;

(f) The names of the recorded goods or services for which the renewal is requested or the
names of the recorded goods or services for which the renewal is not requested, grouped
according to the classes of the Nice Classification to which that group of goods or services
belongs and presented in the order of the classes of the said Classification; and

(g) A signature by the right holder or his representative.

146.2. Such request shall be in Filipino or English and may be made at any time within six (6)
months before the expiration of the period for which the registration was issued or renewed, or it
may be made within six (6) months after such expiration on payment of the additional fee herein
prescribed.

146.3. If the Office refuses to renew the registration, it shall notify the registrant of his refusal and the
reasons therefor.

146.4. An applicant for renewal not domiciled in the Philippines shall be subject to and comply with
11

the requirements of this Act. (Sec. 15, R.A. No. 166a)

Page

nazh//ela//1838
Use of Indications by Third Parties for Other Purposes (Sec.148)

Section 148. Use of Indications by Third Parties for Purposes Other than those for which the Mark is
Used. - Registration of the mark shall not confer on the registered owner the right to preclude third
parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact
indications concerning the kind, quality, quantity, destination, value, place of origin, or time of
production or of supply, of their goods or services: Provided, That such use is confined to the
purposes of mere identification or information and cannot mislead the public as to the source of the
goods or services. (n)

Assignment and Transfer of Registration (Sec. 149)

Section 149. Assignment and Transfer of Application and Registration. - 149.1. An application for
registration of a mark, or its registration, may be assigned or transferred with or without the transfer
of the business using the mark. (n)

149.2. Such assignment or transfer shall, however, be null and void if it is liable to mislead the
public, particularly as regards the nature, source, manufacturing process, characteristics, or
suitability for their purpose, of the goods or services to which the mark is applied.

149.3. The assignment of the application for registration of a mark, or of its registration, shall be in
writing and require the signatures of the contracting parties. Transfers by mergers or other forms of
succession may be made by any document supporting such transfer.

149.4. Assignments and transfers of registrations of marks shall be recorded at the Office on
payment of the prescribed fee; assignment and transfers of applications for registration shall, on
payment of the same fee, be provisionally recorded, and the mark, when registered, shall be in the
name of the assignee or transferee.

149.5. Assignments and transfers shall have no effect against third parties until they are recorded at
the Office. (Sec. 31, R.A. No. 166a)

License Contracts (Sec. 150)

Section 150. License Contracts. - 150.1. Any license contract concerning the registration of a mark,
or an application therefor, shall provide for effective control by the licensor of the quality of the goods
or services of the licensee in connection with which the mark is used. If the license contract does not
provide for such quality control, or if such quality control is not effectively carried out, the license
contract shall not be valid.

150.2. A license contract shall be submitted to the Office which shall keep its contents confidential
but shall record it and publish a reference thereto. A license contract shall have no effect against
third parties until such recording is effected. The Regulations shall fix the procedure for the recording
of the license contract. (n)
12
Page

nazh//ela//1838
Cancellation (Sec. 151)

Section 151. Cancellation. - 151.1. A petition to cancel a registration of a mark under this Act may
be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by
the registration of a mark under this Act as follows:

(a) Within five (5) years from the date of the registration of the mark under this Act.

(b) At any time, if the registered mark becomes the generic name for the goods or services,
or a portion thereof, for which it is registered, or has been abandoned, or its registration was
obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is
being used by, or with the permission of, the registrant so as to misrepresent the source of
the goods or services on or in connection with which the mark is used. If the registered mark
becomes the generic name for less than all of the goods or services for which it is registered,
a petition to cancel the registration for only those goods or services may be filed. A
registered mark shall not be deemed to be the generic name of goods or services solely
because such mark is also used as a name of or to identify a unique product or service. The
primary significance of the registered mark to the relevant public rather than purchaser
motivation shall be the test for determining whether the registered mark has become the
generic name of goods or services on or in connection with which it has been used. (n)

(c) At any time, if the registered owner of the mark without legitimate reason fails to use the
mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license
during an uninterrupted period of three (3) years or longer.

151.2. Notwithstanding the foregoing provisions, the court or the administrative agency vested with
jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise
exercise jurisdiction to determine whether the registration of said mark may be cancelled in
accordance with this Act. The filing of a suit to enforce the registered mark with the proper court or
agency shall exclude any other court or agency from assuming jurisdiction over a subsequently filed
petition to cancel the same mark. On the other hand, the earlier filing of petition to cancel the mark
with the Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved
before an action to enforce the rights to same registered mark may be decided. (Sec. 17, R.A. No.
166a)

Case:

Emerald Garment Mfg. Corp. vs CA, G.R. No. 100098, December 29, 1995.
http://www.lawphil.net/judjuris/juri1995/dec1995/gr_100098_1995.html

EMERALD GARMENT MANUFACTURING CORPORATION vs. HON. COURT OF

APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY
TRANSFER AND H.D. LEE
G.R. No. 100098, December 29, 1995, KAPUNAN, J.:
Facts:
13

Private respondent H.D. Lee Co., Inc., a foreign corporation, filed with the Bureau of
Patents, Trademarks & Technology Transfer (BPTTT) a petition for cancellation of registration
Page

(Supplemental Register)and notice of opposition to petitioner's application for registration for the
trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging

nazh//ela//1838
suits, dresses, shorts, shirts and lingerie under Class 25, in the name of petitioner Emerald Garment
Manufacturing Corporation.
Private respondent, invoking Sec. 37 of R.A. No. 166 (Trademark Law) and Art. VIII of
the Paris Convention for the Protection of Industrial Property, averred that petitioner's trademark
"so closely resembled its own trademark, 'LEE' as previously registered and used in the
Philippines, and not abandoned, as to be likely, when applied to or used in connection with
petitioner's goods, to cause confusion, mistake and deception on the part of the purchasing public
as to the origin of the goods." On the other hand, petitioner contended that its trademark was
entirely and unmistakably different from that of private respondent and that its certificate of
registration was legally and validly granted.
The Director of Patents rendered a decision granting private respondent's petition for
cancellation and opposition to registration. Using the test of dominancy, the Director of Patents
declared that petitioner's trademark was confusingly similar to private respondent's mark because
"it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the
goods originated from the same manufacturer. It is undeniably the dominant feature of the mark.
Court of Appeals affirmed the decision of the Director of Patents. Hence, petition for review on
certiorari was sought.
Issue: Does petitioner's trademark "STYLISTIC MR. LEE" tend to mislead and confuse the public
and thus constitutes an infringement of respondent’s trademark "LEE or LEE RIDERS, LEE-
LEENS and LEE-SURES?"

Held: No. Negative for lack of adequate proof of actual use of its trademark in the Philippines
prior to Emeralds use of its own mark and for failure to establish confusing similarity between said
trademarks, HD Lee Co’s action for infringement must necessarily fail.
The pertinent provision of R.A. No. 166 (Trademark Law) states thus:
Sec. 22. Infringement, what constitutes. — Any person who shall use, without the consent
of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark
or trade-name in connection with the sale, offering for sale, or advertising of any goods, business
or services on or in connection with which such use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such goods or services, or identity of such
business; or reproduce, counterfeit, copy or colorably imitable any such mark or trade-name and
apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in connection with such
goods, business or services; shall be liable to a civil action by the registrant for any or all of the
remedies herein provided.
The essential element of infringement is colorable imitation. This term has been defined as
"such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such
resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such
attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the
other."
Colorable imitation does not mean such similitude as amounts to identity. Nor does it
require that all the details be literally copied. Colorable imitation refers to such similarity in form,
content, words, sound, meaning, special arrangement, or general appearance of the trademark or
14

tradename with that of the other mark or tradename in their over-all presentation or in their
essential, substantive and distinctive parts as would likely mislead or confuse persons in the
Page

ordinary course of purchasing the genuine article.

nazh//ela//1838
 In determining whether colorable imitation exists, jurisprudence has developed two kinds
of tests — the Dominancy Test applied in Asia Brewery, Inc. v. Court of Appeals and other cases
and the Holistic Test developed in Del Monte Corporation v. Court of Appeals and its proponent
cases.
As its title implies, the test of dominancy focuses on the similarity of the prevalent features
of the competing trademarks which might cause confusion or deception and thus constitutes
infringement.
. . . If the competing trademark contains the main or essential or dominant features of
another, and confusion and deception is likely to result, infringement takes place. Duplication or
imitation is not necessary; nor it is necessary that the infringing label should suggest an effort to
imitate. [C. Neilman Brewing Co. v. Independent Brewing Co., 191 F., 489, 495, citing Eagle
White Lead Co., vs. Pflugh (CC) 180 Fed. 579]. The question at issue in cases of infringement of
trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes
in the mind of the public or deceive purchasers. (Auburn Rubber Corporation vs. Honover Rubber
Co., 107 F. 2d 588; . . .)
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.
In determining whether the trademarks are confusingly similar, a comparison of the words
is not the only determinant factor. The trademarks in their entirety as they appear in their respective
labels or hang tags must also 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 in both labels in order that he may draw his conclusion whether one is
confusingly similar to the other.
Applying the foregoing tenets to the present controversy and taking into account the factual
circumstances of this case, we considered the trademarks involved as a whole and rule that
petitioner's "STYLISTIC MR. LEE" is not confusingly similar to private respondent's "LEE"
trademark.
Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label the word
"LEE" is prominent, the trademark should be considered as a whole and not piecemeal. The
dissimilarities between the two marks become conspicuous, noticeable and substantial enough to
matter especially in the light of the following variables that must be factored in.
First, the products involved in the case at bar are, in the main, various kinds of jeans. These
are not your ordinary household items like catsup, soysauce or soap which are of minimal cost.
Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more
cautious and discriminating in and would prefer to mull over his purchase. Confusion and
deception, then, is less likely.
Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He
does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an
Armani. He is, therefore, more or less knowledgeable and familiar with his preference and will not
easily be distracted.
Finally, in line with the foregoing discussions, more credit should be given to the "ordinary
purchaser." Cast in this particular controversy, the ordinary purchaser is not the "completely
unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product
15

involved.
"LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive
Page

ownership over and singular use of said term.

nazh//ela//1838
 . . . It has been held that a personal name or surname may not be monopolized as a
trademark or tradename as against others of the same name or surname. For in the absence of
contract, fraud, or estoppel, any man may use his name or surname in all legitimate ways. Thus,
"Wellington" is a surname, and its first user has no cause of action against the junior user of
"Wellington" as it is incapable of exclusive appropriation.
After a meticulous study of the records, we observe that the Director of Patents and the
Court of Appeals relied mainly on the registration certificates as proof of use by private respondent
of the trademark "LEE" which, as we have previously discussed are not sufficient. We cannot give
credence to private respondent's claim that its "LEE" mark first reached the Philippines in the
1960's through local sales by the Post Exchanges of the U.S. Military Bases in the Philippines
based as it was solely on the self-serving statements of Mr. Edward Poste, General Manager of
Lee (Phils.), Inc., a wholly owned subsidiary of the H.D. Lee, Co., Inc., U.S.A., herein private
respondent. Similarly, we give little weight to the numerous vouchers representing various
advertising expenses in the Philippines for "LEE" products. It is well to note that these expenses
were incurred only in 1981 and 1982 by LEE (Phils.), Inc. after it entered into a licensing
agreement with private respondent on 11 May 1981.
On the other hand, petitioner has sufficiently shown that it has been in the business of
selling jeans and other garments adopting its "STYLISTIC MR. LEE" trademark since 1975 as
evidenced by appropriate sales invoices to various stores and retailers.
The Trademark Law is very clear. It requires actual commercial use of the mark prior to its
registration. There is no dispute that respondent corporation was the first registrant, yet it failed to
fully substantiate its claim that it used in trade or business in the Philippines the subject mark; it
did not present proof to invest it with exclusive, continuous adoption of the trademark which
should consist among others, of considerable sales since its first use. The invoices submitted by
respondent which were dated way back in 1957 show that the zippers sent to the Philippines were
to be used as "samples" and "of no commercial value." The evidence for respondent must be clear,
definite and free from inconsistencies. "Samples" are not for sale and therefore, the fact of
exporting them to the Philippines cannot be considered to be equivalent to the "use" contemplated
by law. Respondent did not expect income from such "samples." There were no receipts to
establish sale, and no proof were presented to show that they were subsequently sold in the
Philippines.
The sales invoices provide the best proof that there were actual sales of petitioner's product
in the country and that there was actual use for a protracted period of petitioner's trademark or part
thereof through these sales.
For lack of adequate proof of actual use of its trademark in the Philippines prior to
petitioner's use of its own mark and for failure to establish confusing similarity between said
trademarks, private respondent's action for infringement must necessarily fail.

Effect of Non-use (Sec. 152)

Section 152. Non-use of a Mark When Excused. - 152.1. Non-use of a mark may be excused if
caused by circumstances arising independently of the will of the trademark owner. Lack of funds
shall not excuse non-use of a mark.
16

152.2. The use of the mark in a form different from the form in which it is registered, which does not
alter its distinctive character, shall not be ground for cancellation or removal of the mark and shall
Page

not diminish the protection granted to the mark.

nazh//ela//1838
152.3. The use of a mark in connection with one or more of the goods or services belonging to the
class in respect of which the mark is registered shall prevent its cancellation or removal in respect of
all other goods or services of the same class.

152.4. The use of a mark by a company related with the registrant or applicant shall inure to the
latter's benefit, and such use shall not affect the validity of such mark or of its registration: Provided,
That such mark is not used in such manner as to deceive the public. If use of a mark by a person is
controlled by the registrant or applicant with respect to the nature and quality of the goods or
services, such use shall inure to the benefit of the registrant or applicant. (n)

Remedies (Sec. 155 – 158)

Section 155. Remedies; Infringement. - Any person who shall, without the consent of the owner of
the registered mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered
mark or the same container or a dominant feature thereof in connection with the sale, offering for
sale, distribution, advertising of any goods or services including other preparatory steps necessary to
carry out the sale of any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature
thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in
connection with the sale, offering for sale, distribution, or advertising of goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall
be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth:
Provided, That the infringement takes place at the moment any of the acts stated in Subsection
155.1 or this subsection are committed regardless of whether there is actual sale of goods or
services using the infringing material. (Sec. 22, R.A. No 166a)

Section 156. Actions, and Damages and Injunction for Infringement. - 156.1. The owner of a
registered mark may recover damages from any person who infringes his rights, and the measure of
the damages suffered shall be either the reasonable profit which the complaining party would have
made, had the defendant not infringed his rights, or the profit which the defendant actually made out
of the infringement, or in the event such measure of damages cannot be readily ascertained with
reasonable certainty, then the court may award as damages a reasonable percentage based upon
the amount of gross sales of the defendant or the value of the services in connection with which the
mark or trade name was used in the infringement of the rights of the complaining party. (Sec. 23,
first par., R.A. No. 166a)

156.2. On application of the complainant, the court may impound during the pendency of the action,
sales invoices and other documents evidencing sales. (n)

156.3. In cases where actual intent to mislead the public or to defraud the complainant is shown, in
the discretion of the court, the damages may be doubled. (Sec. 23, first par., R.A. No. 166)
17

156.4. The complainant, upon proper showing, may also be granted injunction. (Sec. 23, second
Page

par., R.A. No. 166a)

nazh//ela//1838
Section 157. Power of Court to Order Infringing Material Destroyed. - 157.1 In any action arising
under this Act, in which a violation of any right of the owner of the registered mark is established, the
court may order that goods found to be infringing be, without compensation of any sort, disposed of
outside the channels of commerce in such a manner as to avoid any harm caused to the right
holder, or destroyed; and all labels, signs, prints, packages, wrappers, receptacles and
advertisements in the possession of the defendant, bearing the registered mark or trade name or
any reproduction, counterfeit, copy or colorable imitation thereof, all plates, molds, matrices and
other means of making the same, shall be delivered up and destroyed.

157.2. In regard to counterfeit goods, the simple removal of the trademark affixed shall not be
sufficient other than in exceptional cases which shall be determined by the Regulations, to permit the
release of the goods into the channels of commerce. (Sec. 24, R.A. No. 166a)

Section 158. Damages; Requirement of Notice. - In any suit for infringement, the owner of the
registered mark shall not be entitled to recover profits or damages unless the acts have been
committed with knowledge that such imitation is likely to cause confusion, or to cause mistake, or to
deceive. Such knowledge is presumed if the registrant gives notice that his mark is registered by
displaying with the mark the words '"Registered Mark" or the letter R within a circle or if the
defendant had otherwise actual notice of the registration. (Sec. 21, R.A. No. 166a)

Limitations (Sec. 159)

Section 159. Limitations to Actions for Infringement. - Notwithstanding any other provision of this
Act, the remedies given to the owner of a right infringed under this Act shall be limited as follows:

159.1. Notwithstanding the provisions of Section 155 hereof, a registered mark shall have no effect
against any person who, in good faith, before the filing date or the priority date, was using the mark
for the purposes of his business or enterprise: Provided, That his right may only be transferred or
assigned together with his enterprise or business or with that part of his enterprise or business in
which the mark is used.

159.2. Where an infringer who is engaged solely in the business of printing the mark or other
infringing materials for others is an innocent infringer, the owner of the right infringed shall be entitled
as against such infringer only to an injunction against future printing.

159.3. Where the infringement complained of is contained in or is part of paid advertisement in a

newspaper, magazine, or other similar periodical or in an electronic communication, the remedies of
the owner of the right infringed as against the publisher or distributor of such newspaper, magazine,
or other similar periodical or electronic communication shall be limited to an injunction against the
presentation of such advertising matter in future issues of such newspapers, magazines, or other
similar periodicals or in future transmissions of such electronic communications. The limitations of
this subparagraph shall apply only to innocent infringers: Provided, That such injunctive relief shall
not be available to the owner of the right infringed with respect to an issue of a newspaper,
magazine, or other similar periodical or an electronic communication containing infringing matter
where restraining the dissemination of such infringing matter in any particular issue of such
18

periodical or in an electronic communication would delay the delivery of such issue or transmission
of such electronic communication is customarily conducted in accordance with the sound business
Page

practice, and not due to any method or device adopted to evade this section or to prevent or delay
the issuance of an injunction or restraining order with respect to such infringing matter. (n)

nazh//ela//1838
Case:

Skechers, USA Inc. vs. Inter Pacific et al., G.R. No. 164321, March 23, 2011.
http://www.lawphil.net/judjuris/juri2011/mar2011/gr_164321_2011.html

SKECHERS, U.S.A., INC. vs. INTER PACIFIC INDUSTRIAL TRADING CORP.

Petitioner’s claim: Skechers, USA contend that respondents are guilty of trademark infringement
of their registered trademark “S” (within an oval design).
Respondents’ claim: they argued that there was no confusing similarity between petitioner’s
"Skechers" rubber shoes and its "Strong" rubber shoes
Facts:
Petitioner filed an application for the issuance of search warrants against an outlet and
warehouse operated by respondents for infringement of trademark under Section 155, in relation
to Section 170 of Republic Act No. 8293, IP Code of the Philippines. In the course of its business,
petitioner has registered the trademark "SKECHERS" and the trademark "S" (within an oval
design) with the IPO. Two search warrants were issued and more than 6,000 pairs of shoes bearing
the “S” logo were seized.
Respondents moved to quash the warrants arguing that there was no confusing similarity
between petitioner’s "Skechers" rubber shoes and its "Strong" rubber shoes. RTC granted the
motion and quashed the search warrants. Petitioner filed a petition for certiorari with the CA which
affirmed the decision of the RTC.
Thus, petitioner filed the present petition with the SC assailing that the CA committed
grave abuse of discretion when it considered matters of defense in a criminal trial for trademark
infringement in passing upon the validity of the search warrant when it should have limited itself
to a determination of whether the trial court committed grave abuse of discretion in quashing the
warrants. And that it committed grave abuse of discretion in finding that respondents are not guilty
of trademark infringement in the case where the sole triable issue is the existence of probable cause
to issue a search warrant.
Subsequently, petitioner-intervenor filed a Petition-in-Intervention with the Court claiming
to be the sole licensed distributor of Skechers products here in the Philippines, but the same was
dismissed. Both petitioner and petitioner-intervenor filed separate motions for reconsideration.
Issue: whether or not respondent is guilty of trademark infringement.
Ruling: Yes. The essential element of infringement under R.A. No. 8293 is that the infringing
mark is likely to cause confusion. In determining similarity and likelihood of confusion, two tests
have been developed: (1)the Dominancy Test which focuses on the similarity of the prevalent or
dominant features of the competing trademarks that might cause confusion, mistake, and deception
in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it required
that the mark sought to be registered suggests an effort to imitate. Given more consideration are
the aural and visual impressions created by the marks on the buyers of goods, giving little weight
to factors like prices, quality, sales outlets, and market segments. (2) the Holistic or Totality Test
which necessitates a consideration of the entirety of the marks as applied to the products, including
the labels and packaging, in determining confusing similarity. The discerning eye of the observer
19

must focus not only on the predominant words, but also on the other features appearing on both
labels so that the observer may draw conclusion on whether one is confusingly similar to the other.
Page

nazh//ela//1838
 There are two types of confusion: (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.
In the case at bar, the Court applied the Dominancy Test and found that the use of the
stylized "S" by respondent in its Strong rubber shoes infringes on the mark already registered by
petitioner with the IPO. While it is undisputed that petitioner’s stylized "S" is within an oval
design, to this Court’s mind, the dominant feature of the trademark is the stylized "S," as it is
precisely the stylized "S" which catches the eye of the purchaser. Thus, even if respondent did not
use an oval design, the mere fact that it used the same stylized "S", the same being the dominant
feature of petitioner’s trademark, already constitutes infringement under the Dominancy Test.
The protection of trademarks as intellectual property is intended not only to preserve the
goodwill and reputation of the business established on the goods bearing the mark through actual
use over a period of time, but also to safeguard the public as consumers against confusion on these
goods. While respondent’s shoes contain some dissimilarities with petitioner’s shoes, this Court
cannot close its eye to the fact that for all intents and purpose, respondent had deliberately
attempted to copy petitioner’s mark and overall design and features of the shoes. Let it be
remembered, that defendants in cases of infringement do not normally copy but only make
colorable changes. 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.

Societe des Prodults vs Martin T. Dy, G.R. No. 172276, August 8, 2010.
http://sc.judiciary.gov.ph/jurisprudence/2010/august2010/172276.htm

Societe Des Produits vs. Martin T. Dy

Gr no. 172276 August 8, 2010
Facts:
Petitioner is a foreign corporation organized under Switzerland laws. Petitioner owns
"NAN" trademark for its infant powered milk products. Petitioner distributed and sells Nan milk
products in the Philippines. Respondent owns 5M Enterprises that imports Sunny Boy milk from
Australia and repacks them into 3 sizes of plastic bags carrying the name "Nanny". A letter of
request was sent to Dy ordering him to restrain from using Nanny as this infringes Nan trademark.
When Dy did not act on the request, a complaint for trademark infringement was filed before RTC
Dumaguete. It was dismissed later on. On appeal, the court remanded the case to the lower court
for further proceedings. Subsequently, the case was transferred to RTC Cebu, a special court
designated for intellectual property rights' cases.
Issue: WON there was trademark infringement
Held: Yes.
The court applied the dominancy test when it found out that Nanny is confusingly similar
to Nan. Nan is the prevalent feature of Nestle's line of infant powdered milk products. The first 3
20

letters of Nanny is the same as the letters of Nan. When both are pronounced, the aural effect is
Page

confusingly similar. Furthermore, Nan and Nanny have the same classification, descriptive

nazh//ela//1838
properties and physical attributes. Both are classified under Class 6, both are milk products, and
both are powdered in form. They are also displayed in the milk section.
Finally, the trademark owner is not only protected by law in guarding his goods or business
from actual market competition with identical or similar products of the parties but also extends to
all cases as it would likely confuse the public into thinking that the complaining party has extended
his business into the field or is in any way connected with the activities of the infringer.

Actions, Damages and Injunction for Infringement, Sec. 156 to 158, 170)

Case:

Shangri-La International Hotel Management LTD., et al. vs. Court of Appeals, et al.
http://sc.judiciary.gov.ph/jurisprudence/2001/jun2001/111580.htm

Shangri-La International Hotel Management v. CA

G.R. No. 111580, June 21, 2001
Facts: On June 21, 1988, the Shangri-La International Hotel Management filed with the Bureau
of Patents, Trademarks and Technology Transfer (BPTTT) a petition praying for the cancellation
of the registration of the "Shangri-La" mark and "S" device/logo issued to the Developers Group
of Companies, Inc., on the ground that the same was illegally and fraudulently obtained and
appropriated for the latter's restaurant business. The Shangri-La Group alleged that it is the legal
and beneficial owners of the subject mark and logo; that it has been using the said mark and logo
for its corporate affairs and business since March 1962 and caused the same to be specially
designed for their international hotels in 1975, much earlier than the alleged first use thereof by
the Developers Group in 1982. It also filed with the BPTTT its own application for registration of
the subject mark and logo. The Developers Group filed an opposition to the application, which
was docketed as Inter Partes Case No. 3529. Almost 3 years later, or on April 15, 1991, the
Developers Group instituted with the RTC of Quezon City a complaint for infringement and
damages with prayer for injunction.
On January 8, 1992, the Shangri-La Group moved for the suspension of the proceedings in
the infringement case on account of the pendency of the administrative proceedings before the
BPTTT. This was denied by the trial court in a Resolution issued on January 16, 1992.
Issue: Whether, despite the institution of an Inter Partes case for cancellation of a mark with the
BPTTT (now the Bureau of Legal Affairs, Intellectual Property Office) by one party, the adverse
party can file a subsequent action for infringement with the regular courts of justice in connection
with the same registered mark.
Held: Section 151.2 of Republic Act No. 8293, otherwise known as the Intellectual Property Code,
provides, as follows –
Section 151.2. Notwithstanding the foregoing provisions, the court or the administrative
agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to a
registered mark shall likewise exercise jurisdiction to determine whether the registration of said
mark may be cancelled in accordance with this Act. The filing of a suit to enforce the registered
mark with the proper court or agency shall exclude any other court or agency from assuming
21

jurisdiction over a subsequently filed petition to cancel the same mark. On the other hand, the
earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a
Page

nazh//ela//1838
prejudicial question that must be resolved before an action to enforce the rights to same registered
mark may be decided. (Emphasis provided)
Similarly, Rule 8, Section 7, of the Regulations on Inter Partes Proceedings, provides to
wit –
Section 7. Effect of filing of a suit before the Bureau or with the proper court. - The filing
of a suit to enforce the registered mark with the proper court or Bureau shall exclude any other
court or agency from assuming jurisdiction over a subsequently filed petition to cancel the same
mark. On the other hand, the earlier filing of petition to cancel the mark with the Bureau shall not
constitute a prejudicial question that must be resolved before an action to enforce the rights to
same registered mark may be decided. (Emphasis provided)
Hence, as applied in the case at bar, the earlier institution of an Inter Partes case by the
Shangri-La Group for the cancellation of the "Shangri-La" mark and "S" device/logo with the
BPTTT cannot effectively bar the subsequent filing of an infringement case by registrant
Developers Group. The law and the rules are explicit.
The rationale is plain: Certificate of Registration No. 31904, upon which the infringement
case is based, remains valid and subsisting for as long as it has not been cancelled by the Bureau
or by an infringement court. As such, Developers Group's Certificate of Registration in the
principal register continues as "prima facie evidence of the validity of the registration, the
registrant's ownership of the mark or trade-name, and of the registrant's exclusive right to use the
same in connection with the goods, business or services specified in the certificate." Since the
certificate still subsists, Developers Group may thus file a corresponding infringement suit and
recover damages from any person who infringes upon the former's rights.

Trademark Dilution

Case:

Prosource International, Inc., v. Horphag Research Management SA, G.R. No. 180073,
November 25, 2009.
http://sc.judiciary.gov.ph/jurisprudence/2009/november2009/180073.htm

PROSOURCE INTERNATIONAL, INC. vs. HORPHAG RESEARCH MANAGEMENT

SA
G.R. No. 180073, November 25, 2009
Facts:
Respondent Horphag Research Management is a corporation duly organized and existing
under the laws of Switzerland and the owner of trademark PYCNOGENOL, a food supplement
sold and distributed by Zuellig Pharma Corporation. Respondent discovered that petitioner
Prosource International was also distributing a similar food supplement using the mark PCO-
GENOLS since 1996 and was only discontinued in 2000. Respondent filed a complaint for
Infringement of Trademark against petitioner, praying that the latter cease and desist from using
the brand PCO-GENOLS for being confusingly similar with respondent’s trademark
PYCNOGENOL. Petitioner contended that the two marks were not confusingly similar and denied
22

liability, since it discontinued the use of the mark prior to the institution of the infringement case.
Issue:Whether or not petitioners are liable for infringement of trademark.
Page

Held:

nazh//ela//1838
 The court ruled in the positive. 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. The gravamen of trademark infringement is the element of "likelihood of confusion" which
must be examined from the particular, and sometimes peculiar, circumstances of each case.
In determining similarity and likelihood of confusion, jurisprudence has developed two
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 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. In contrast, 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. 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 order that
the observer may draw his conclusion whether one is confusingly similar to the other.
In the case at bar, the dominancy test was used in determining whether there was a
confusing similarity between the marks PYCNOGENOL and PCO-GENOL. Applying the test, the
court found that:
Athough the letters "Y" between P and C, "N" between O and C and "S" after L are missing
PCO-GENOLS, nevertheless, 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. This is not the first time that the court takes into account the aural effects of the
words and letters contained in the marks in determining the issue of confusing similarity.

Dermaline Inc. v. Myra Pharmaceuticals, Inc., G.R. No. 190065, August 16, 2010.
http://sc.judiciary.gov.ph/jurisprudence/2010/august2010/190065.htm

Refer to case #2
Levi Strauss v. Clinton Apparelle, Inc., G. R. No. 138900, September 20, 2005.
http://sc.judiciary.gov.ph/jurisprudence/2005/sep2005/138900.htm

Levi Strauss & Co. v. Clinton Apparelle, GR No. 138900 September 20, 2005
23

FACTS:
The Complaint alleged that LS & Co., a foreign corporation duly organized and existing
Page

under the laws of the State of Delaware, USA and engaged in the apparel business, is the owner

nazh//ela//1838
by prior adoption and use since 1986 of the internationally famous “Dockers and Design”
trademark. This ownership is evidenced by its valid and existing registrations in various member
countries if Paris Convention. In the Philippines, it has a Certificate of Registration No. 46619 in
the Principal Register for use of said trademark on pants, shirts, blouses, skirts, shorts, sweatshirts
and jackets under Class 25. The “Dockers and Design” trademark was first used in the Philippines
in or about May 1988, by LSPI, a domestic corporation engaged in the manufacture, sale and
distribution of various products bearing trademarks owned by LS & Co. To date, LSPI continues
to manufacture and sell Dockers Pants with the “Dockers and Design” Trademark. LS & Co and
LSPI alleged that they discovered the presence in the local market of jeans under the brand name
“Paddocks” using a device which is substantially, if not exactly, similar to the “Dockers and
Design” trademark owned and registered in their name, without their consent. Based on their
belied, they added Clinton Apparelle manufactured and continues to manufacture such “Paddocks”
jeans and other apparel. However, since LS & Co. and LSPI are unsure if both or just one of
impleaded defendants is behind the manufacture and sale of the “Paddocks” jeans complained of,
they brought this suit under Sec. 13 Rule 3 of the 1997 Rules of Court.
The evidence considered by the trial court in granting injunctive relief were as follows: (1)
a certified true copy of the certificate of trademark registration for “Dockers and Design” (2) a pair
of DOCKERS pants bearing the trademark (3) a pair of “Paddocks” pants bearing the respondents
assailed logo; (4) the trends MBL Survey Report purportedly proving that there was confusing
similarity between two marks; (5) the affidavit of one Bernabe Alajar which recounted petitioners’
prior adoption, use and registration of the “Dockers and Design” Trademark and (6) the affidavit
of Mercedes Abad of Trends MBL Inc which detailed the methodology and procedure used in
their survey and results thereof.
The trial court issued a writ of preliminary injunction, which prompted Clinton Apparelle
to file a petition for certiorari, prohibition and mandamus with the Court of Appeals. Whereby the
Appellate Court granted the petition of Clinton Apparelle’s petition; holding that the trial court did
not follow the procedure required by law. Thus, holding the issuance of the writ of preliminary
injunction is questionable after petitioner’s failure to sufficiently establish its material and
substantial right to have the writ issued. Moreover, the Court of Appeals strongly believes that the
implementation of the questions writ would effectively shut down respondent’s shut down. Hence
this petition.
ISSUE: whether or not the single registration of the trademark “Dockers and Design” confers on
the owner the right to prevent the use of a fraction thereof.
HELD: Given the single registration of the trademark “Dockers and Design” and considering that
respondent only uses the assailed device but a different word mark, the right to prevent the latter
from using the challenged “Paddocks” device is far from clear. Stated otherwise, it is not evident
whether the single registration of the trademark “Dockers and Design” confers on the owner the
right to prevent the use of a fraction thereof in the course of trade. It is also unclear whether the
use without the owner’s consent of a portion of a trademark registered in its entirety constitutes
material or substantial invasion of the owner’s right.
It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the
dominant or central feature of petitioners’ trademark—the feature that prevails or is retained in the
minds of the public—an imitation of which creates the likelihood of deceiving the public and
24

constitutes trademark infringement. In sum, there are vital matters which have yet and may only
be established through a full-blown trial.
Page

nazh//ela//1838
 From the above discussion, we find that petitioners’ right to injunctive relief has not been
clearly and unmistakably demonstrated. The right has yet to be determined. Petitioners also failed
to show proof that there is material and substantial invasion of their right to warrant the issuance
of an injunctive writ. Neither were petitioners able to show any urgent and permanent necessity
for the writ to prevent serious damage.
Petitioners wish to impress upon the Court the urgent necessity for injunctive relief, urging
that the erosion or dilution of their trademark is protectable. They assert that a trademark owner
does not have to wait until the mark loses its distinctiveness to obtain injunctive relief, and that the
mere use by an infringer of a registered mark is already actionable even if he has not yet profited
thereby or has damaged the trademark owner.
Trademark dilution is the lessening of the capacity of a famous mark to identify and
distinguish goods or services, regardless of the presence or absence of: (1) competition between
the owner of the famous mark and other parties; or (2) likelihood of confusion, mistake or
deception. Subject to the principles of equity, the owner of a famous mark is entitled to an
injunction “against another person’s commercial use in commerce of a mark or trade name, if such
use begins after the mark has become famous and causes dilution of the distinctive quality of the
mark.” This is intended to protect famous marks from subsequent uses that blur distinctiveness of
the mark or tarnish or disparage it.
Based on the foregoing, to be eligible for protection from dilution, there has to be a finding
that: (1) the trademark sought to be protected is famous and distinctive; (2) the use by respondent
of “Paddocks and Design” began after the petitioners’ mark became famous; and (3) such
subsequent use defames petitioners’ mark. In the case at bar, petitioners have yet to establish
whether “Dockers and Design” has acquired a strong degree of distinctiveness and whether the
other two elements are present for their cause to fall within the ambit of the invoked protection.
The Trends MBL Survey Report which petitioners presented in a bid to establish that there was
confusing similarity between two marks is not sufficient proof of any dilution that the trial court
must enjoin.
After a careful consideration of the facts and arguments of the parties, the Court finds that
petitioners did not adequately prove their entitlement to the injunctive writ. In the absence of proof
of a legal right and the injury sustained by the applicant, an order of the trial court granting the
issuance of an injunctive writ will be set aside for having been issued with grave abuse of
discretion. Conformably, the Court of Appeals was correct in setting aside the assailed orders of
the trial court.

j. Unfair competition (Sec. 168)

Add: False Designation of Origin (Sec. 169) Distinguish from Trademark Infringement

Section 166. Goods Bearing Infringing Marks or Trade Names. - No article of imported merchandise
which shall copy or simulate the name of any domestic product, or manufacturer, or dealer, or which
shall copy or simulate a mark registered in accordance with the provisions of this Act, or shall bear a
mark or trade name calculated to induce the public to believe that the article is manufactured in the
Philippines, or that it is manufactured in any foreign country or locality other than the country or
25

locality where it is in fact manufactured, shall be admitted to entry at any customhouse of the
Philippines. In order to aid the officers of the customs service in enforcing this prohibition, any
Page

person who is entitled to the benefits of this Act, may require that his name and residence, and the
name of the locality in which his goods are manufactured, a copy of the certificate of registration of

nazh//ela//1838
his mark or trade name, to be recorded in books which shall be kept for this purpose in the Bureau of
Customs, under such regulations as the Collector of Customs with the approval of the Secretary of
Finance shall prescribe, and may furnish to the said Bureau facsimiles of his name, the name of the
locality in which his goods are manufactured, or his registered mark or trade name, and thereupon
the Collector of Customs shall cause one (1) or more copies of the same to be transmitted to each
collector or to other proper officer of the Bureau of Customs. (Sec. 35, R.A. No. 166)

Section 169. False Designations of Origin; False Description or Representation. - 169.1. Any person
who, on or in connection with any goods or services, or any container for goods, uses in commerce
any word, term, name, symbol, or device, or any combination thereof, or any false designation of
origin, false or misleading description of fact, or false or misleading representation of fact, which:

(a) Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,

connection, or association of such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or commercial activities by another
person; or

(b) In commercial advertising or promotion, misrepresents the nature, characteristics,

qualities, or geographic origin of his or her or another person's goods, services, or
commercial activities, shall be liable to a civil action for damages and injunction provided in
Sections 156 and 157 of this Act by any person who believes that he or she is or is likely to
be damaged by such act.

169.2. Any goods marked or labelled in contravention of the provisions of this Section shall not be
imported into the Philippines or admitted entry at any customhouse of the Philippines. The owner,
importer, or consignee of goods refused entry at any customhouse under this section may have any
recourse under the customs revenue laws or may have the remedy given by this Act in cases
involving goods refused entry or seized. (Sec. 30, R.A. No. 166a)

k. Trade names or business names (Sec. 165)

Section 165. Trade Names or Business Names. - 165.1. A name or designation may not be used as
a trade name if by its nature or the use to which such name or designation may be put, it is contrary
to public order or morals and if, in particular, it is liable to deceive trade circles or the public as to the
nature of the enterprise identified by that name.

165.2.(a) Notwithstanding any laws or regulations providing for any obligation to register trade
names, such names shall be protected, even prior to or without registration, against any unlawful act
committed by third parties.

(b) In particular, any subsequent use of the trade name by a third party, whether as a trade
name or a mark or collective mark, or any such use of a similar trade name or mark, likely to
mislead the public, shall be deemed unlawful.

165.3. The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall apply
mutatis mutandis.
26
Page

nazh//ela//1838
165.4. Any change in the ownership of a trade name shall be made with the transfer of the
enterprise or part thereof identified by that name. The provisions of Subsections 149.2 to 149.4 shall
apply mutatis mutandis.

Case:

Converse Rubber vs Universal Rubber, G.R. No. L-27906 January 8, 1987.

http://www.lawphil.net/judjuris/juri1987/jan1987/gr_l_27906_1987.html

Converse Rubber Corporation vs Universal Rubber Products, Inc.

147 SCRA 154 – Mercantile Law – Intellectual Property Law – Law on Trademarks,
Service Marks and Trade Names – Trade Name Infringement
Facts:
Converse Rubber Corporation is an American corporation while Universal Rubber
Products, Inc. is a corporation licensed to do business in the country. Converse has been operating
since 1946. Universal Rubber has been operating since 1963. Later, Universal Rubber filed an
application for the trademark “Universal Converse and Device” before the Philippine Patent
Office. Converse Rubber opposed as it averred that the word “Converse” which is part of its
corporate name cannot be granted as part of Universal Rubber’s trademark or trade name because
it will likely deceive purchasers of Universal Rubber’s products as it may be mistaken by unwary
customers to be manufactured by Converse Rubber. The Director of Patents did not grant the
opposition by Converse Rubber.
ISSUE: whether or not the respondent's partial appropriation of petitioner's corporate name is of
such character that it is calculated to deceive or confuse the public to the injury of the petitioner to
which the name belongs.
HELD: YES. There is confusing similarity between its trademark “UNIVERSAL CONVERSE
AND DEVICE” and Converse Rubber’s corporate name and/or its trademarks “CHUCK
TAYLOR” and “ALL STAR DEVICE” which could confuse the purchasing public to the
prejudice of Converse Rubber. The trademark of “UNIVERSAL CONVERSE and DEVICE” is
imprinted in a circular manner on the side of its rubber shoes. In the same manner, the trademark
of Converse Rubber which reads “CONVERSE CHUCK TAYLOR” is imprinted on a circular
base attached to the side of its rubber shoes.
The determinative factor in ascertaining whether or not marks are confusingly similar to
each other “is not whether the challenged mark would actually cause commission or deception of
the purchasers but whether the use of such mark would likely cause confusion or mistake on the
part of the buying public. It would be sufficient, for purposes of the law, that the similarity between
the two labels is such that there is a possibility or likelihood of the purchaser of the older brand
mistaking the new brand for it.” Even if not all the details just mentioned were identical, with the
general appearance alone of the two products, any ordinary, or even perhaps even [sic] a not too
perceptive and discriminating customer could be deceived.”
A corporation is entitled to the cancellation of a mark that is confusingly similar to its
corporate name. Appropriation by another of the dominant part of a corporate name is an
infringement. From a cursory appreciation of the corporate name of “CONVERSE RUBBER
27

CORPORATION,’ it is evident that the word “CONVERSE” is the dominant word which
identifies Converse Rubber from other corporations engaged in similar business. Universal Rubber
Page

admitted Converse Rubber’s existence since 1946 as a duly organized foreign corporation engaged

nazh//ela//1838
in the manufacture of rubber shoes. This admission necessarily betrays its knowledge of the
reputation and business of petitioner even before it applied for registration of the trademark in
question. Knowing, therefore, that the word “CONVERSE” belongs to and is being used by
Converse Rubber, and is in fact the dominant word in Converse Rubber’s corporate name,
Universal Rubber has no right to appropriate the same for use on its products which are similar to
those being produced by Converse Rubber.

Coffee Partners, Inc. v. San Francisco Coffee and Roastery, Inc, G.R. No. 169504, March 3,
2010
http://sc.judiciary.gov.ph/jurisprudence/2010/march2010/169504.htm

Coffee Partners, Inc., vs San Francisco Coffee & Roastery, Inc..

G.R. No. 169504 : March 3, 2010
Facts:
Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of
establishing and maintaining coffee shops in the country. It has a franchise agreement6cЃa with
Coffee Partners Ltd. (CPL), a business entity organized and existing under the laws of British
Virgin Islands, for a non-exclusive right to operate coffee shops in the Philippines using
trademarks designed by CPL such as "SAN FRANCISCO COFFEE." Respondent is a local
corporation engaged in the wholesale and retail sale of coffee. It registered with the SEC in May
1995. It registered the business name "SAN FRANCISCO COFFEE & ROASTERY, INC." with
the Department of Trade and Industry (DTI) in June 1995. Respondent formed a joint venture
company with Boyd Coffee USA under the company name Boyd Coffee Company Philippines,
Inc. (BCCPI), which is engaged in the processing, roasting, and wholesale selling of coffee.
In 2001, respondent discovered that petitioner was about to open a coffee shop under the
name "SAN FRANCISCO COFFEE" in Libis, Quezon City. According to respondent, petitioners
shop caused confusion in the minds of the public as it bore a similar name and it also engaged in
the business of selling coffee. Respondent also filed a complaint with the Bureau of Legal Affairs-
Intellectual Property Office (BLA-IPO) for infringement and/or unfair competition. Petitioner
denied the allegations in the complaint. Petitioner alleged it filed with the Intellectual Property
Office (IPO) applications for registration of the mark "SAN FRANCISCO COFFEE & DEVICE"
for class 42 in 1999 and for class 35 in 2000.
BLA-IPO rendered a decision favourable to the respondents and found herein petitioners
guilty of trademark ingfringement. ODG-IPO; however reversed the decision of the Bureau which
lead respondents to appeal. CA again reversed the decision of the Office of the Director General
and affirmed the BLA-IPO’s finding, hence this petition.
Issue: Whether petitioners use of the trademark "SAN FRANCISCO COFFEE" constitutes
infringement of respondents trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.,"
even if the trade name is not registered with the Intellectual Property Office (IPO).
Held:
In Prosource International, Inc. v. Horphag Research Management SA, this Court laid
down what constitutes infringement of an unregistered trade name, thus:
(1) The trademark being infringed is registered in the Intellectual Property Office; however,
28

in infringement of trade name, the same need not be registered;

Page

(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated
by the infringer;

nazh//ela//1838
 (3) The infringing mark or trade name is used in connection with the sale, offering for sale,
or advertising of any goods, business or services; or the infringing mark or trade name is applied
to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used
upon or in connection with such goods, business, or services;
(4) The use or application of the infringing mark or trade name is likely to cause confusion
or mistake or to deceive purchasers or others as to the goods or services themselves or as to the
source or origin of such goods or services or the identity of such business; and
(5) It is without the consent of the trademark or trade name owner or the assignee thereof.
Clearly, a trade name need not be registered with the IPO before an infringement suit may
be filed by its owner against the owner of an infringing trademark. All that is required is that the
trade name is previously used in trade or commerce in the Philippines. Section 22 of Republic Act
No. 166,12cЃa as amended, required registration of a trade name as a condition for the institution
of an infringement suit. However, RA 8293, Section 165.2 of RA 8293 categorically states that
trade names shall be protected, even prior to or without registration with the IPO, against any
unlawful act x x x. Also, applying the dominancy test or the holistic test, petitioners "SAN
FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN FRANCISCO
COFFEE & ROASTERY, INC." trade name.

l. Goods bearing infringing marks or trade names (Sec. 166)

Section 166. Goods Bearing Infringing Marks or Trade Names. - No article of imported merchandise
which shall copy or simulate the name of any domestic product, or manufacturer, or dealer, or which
shall copy or simulate a mark registered in accordance with the provisions of this Act, or shall bear a
mark or trade name calculated to induce the public to believe that the article is manufactured in the
Philippines, or that it is manufactured in any foreign country or locality other than the country or
locality where it is in fact manufactured, shall be admitted to entry at any customhouse of the
Philippines. In order to aid the officers of the customs service in enforcing this prohibition, any
person who is entitled to the benefits of this Act, may require that his name and residence, and the
name of the locality in which his goods are manufactured, a copy of the certificate of registration of
his mark or trade name, to be recorded in books which shall be kept for this purpose in the Bureau of
Customs, under such regulations as the Collector of Customs with the approval of the Secretary of
Finance shall prescribe, and may furnish to the said Bureau facsimiles of his name, the name of the
locality in which his goods are manufactured, or his registered mark or trade name, and thereupon
the Collector of Customs shall cause one (1) or more copies of the same to be transmitted to each
collector or to other proper officer of the Bureau of Customs. (Sec. 35, R.A. No. 166)

m. Collective marks (Sec. 121.2 in relation to Sec. 167)

121.2. "Collective mark" means any visible sign designated as such in the application for registration
and capable of distinguishing the origin or any other common characteristic, including the quality of
goods or services of different enterprises which use the sign under the control of the registered
owner of the collective mark; (Sec. 40, R.A. No. 166a)

Section 167. Collective Marks. - 167.1. Subject to Subsections 167.2 and 167.3, Sections 122 to
29

164 and 166 shall apply to collective marks, except that references therein to "mark" shall be read as
"collective mark".
Page

nazh//ela//1838
167.2.(a) An application for registration of a collective mark shall designate the mark as a collective
mark and shall be accompanied by a copy of the agreement, if any, governing the use of the
collective mark.

(b) The registered owner of a collective mark shall notify the Director of any changes made in
respect of the agreement referred to in paragraph (a).

167.3. In addition to the grounds provided in Section 149, the Court shall cancel the registration of a
collective mark if the person requesting the cancellation proves that only the registered owner uses
the mark, or that he uses or permits its use in contravention of the agreements referred to in
Subsection 166.2 or that he uses or permits its use in a manner liable to deceive trade circles or the
public as to the origin or any other common characteristics of the goods or services concerned.

167.4. The registration of a collective mark, or an application therefor shall not be the subject of a
license contract. (Sec. 40, R.A. No. 166a)

n. Unfair Competition, Rights, Regulation and Remedies (Sec. 168)

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

168.2. Any person who shall employ deception or any other means contrary to good faith by which
he shall pass off the goods manufactured by him or in which he deals, or his business, or services
for those of the one having established such goodwill, or who shall commit any acts calculated to
produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.

168.3. In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:

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

(b) Any person who by any artifice, or device, or who employs any other means calculated to
induce the false belief that such person is offering the services of another who has identified
such services in the mind of the public; or
30

(c) Any person who shall make any false statement in the course of trade or who shall
commit any other act contrary to good faith of a nature calculated to discredit the goods,
Page

business or services of another.

nazh//ela//1838
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis. (Sec. 29,
R.A. No. 166a)

Case:

In-N-Out Burger, Inc vs Sehwani, Inc G.R. No. 179127 : December 24, 2008.
http://sc.judiciary.gov.ph/jurisprudence/2008/december2008/179127.htm

In-n-out Burger Inc. vs Sehwani, Incorporated and/or Benita’s Frites

G.R. No. 179127, December 24, 2008
Facts:
On 2 June 1997, petitioner filed trademark and service mark applications with the Bureau
of Trademarks of the IPO for “IN-N-OUT” and “IN-N-OUT Burger & Arrow Design.” Petitioner
later found out that respondent Sehwani, Incorporated had already obtained Trademark
Registration for the mark “IN N OUT (the inside of the letter “O” formed like a star).” By virtue
of a licensing agreement, Benita Frites, Inc. was able to use the registered mark of
respondent Sehwani, Incorporated.
Petitioner filed an administrative complaint against respondents for unfair competition and
cancellation of trademark registration. Petitioner averred that it is the owner of the trade name IN-
N-OUT. Petitioner claimed that respondents are making it appear that their goods and services are
those of the petitioner, thus, misleading ordinary and unsuspecting consumers that they are
purchasing petitioner’s products. Petitioner then sent a demand letter directing respondents to
cease and desist from claiming ownership of the mark “IN-N-OUT” and to voluntarily cancel its
trademark registration. The respondents refused to accede to petitioner’s demand, but expressed
willingness to surrender the registration of respondent Sehwani, Incorporated of the “IN N OUT”
trademark for a fair and reasonable consideration.
Respondents, on the other hand, asserted that they had been using the mark “IN N OUT”
in the Philippines since 15 October 1982. On 15 November 1991, respondent Sehwani,
Incorporated filed with the then Bureau of Patents, Trademarks and Technology Transfer (BPTTT)
an application for the registration of the mark “IN N OUT (the inside of the letter “O” formed like
a star).” Upon approval of its application, a certificate of registration of the said mark was issued
in the name of respondent Sehwani, Incorporated on 17 December 1993.
Issue: Whether respondent Sehwani Incorporated is liable for unfair competition.
Held: Yes. The essential elements of an action for unfair competition are (1) confusing similarity
in the general appearance of the goods and (2) intent to deceive the public and defraud a
competitor. The intent to deceive and defraud may be inferred from the similarity of the appearance
of the goods as offered for sale to the public. Actual fraudulent intent need not be shown.
The evidence on record shows that the respondents were not using their registered
trademark but that of the petitioner. Respondent was issued a Certificate of Registration for IN N
OUT (with the Inside of the Letter “O” Formed like a Star) for restaurant business in 1993. The
restaurant opened only in 2000 but under the name IN-N-OUT BURGER. Apparently, the
respondents started constructing the restaurant only after the petitioner demanded that the latter
desist from claiming ownership of the mark IN-N-OUT and voluntarily cancel their trademark
31

registration.
Page

nazh//ela//1838
Pro Line Sports Center, Inc. vs. Court of Appeals, 281 SCRA 162 , October 23, 1997.
http://sc.judiciary.gov.ph/jurisprudence/1997/oct1997/118192.htm

PRO LINE SPORTS CENTER, INC., and QUESTOR CORPORATION, petitioners, vs.
COURT OF APPEALS, UNIVERSAL ATHLETICS INDUSTRIAL PRODUCTS, INC.,
and MONICO SEHWANI, respondents.
Facts:
Proline is the exclusive distributor of Spalding sports products in the Philippines, while
Questor, a US-based corporation became the owner of the trademark “Spalding”. They filed a
petition against respondent Universal, a domestic corporation which manufactures and sell sports
goods including fake “spalding balls”. By virtue of valid search warrant, Universal’s factory was
searched resulting to the seizure of fake “spalding balls” and the instruments used in the
manufacture thereof. Civil and criminal cases were filed against Universal. The civil case was
dropped for it was doubtful whether Questor had indeed acquired the registration rights over the
mark “spalding”. The criminal case was also dismissed due to insufficiency of evidence through a
demurrer. The CA affirmed the lower court’s decision. Universal thereafter, filed for damages
against Proline and Questor which was granted by the lower court and affirmed by the CA.
Issue: Are Proline and Questor liable for damages to Universal for the wrongful recourse to court
proceedings?
Held:
Proline and Questor cannot be adjudged liable for damages for the alleged unfounded suit.
Universal failed to show that the filing of criminal charges of petitioner herein was bereft of
probable cause. Petitioners could not have been moved by legal malice in instituting the criminal
complaint for unfair competition.
We are disposed, under circumstances, to hold that Proline as the authorized agent of
Questor, exercised sound judgment in taking the necessary legal steps to safeguard the interest of
its principal with respect to the trademark in question.

Caterpillar, Inc. vs. Samson, G.R. No. 205972, November 09, 2016.
http://www.chanrobles.com/cralaw/2016novemberdecisions.php?id=1046

CATERPILLAR INC. V. SAMSON

Facts
Petitioner Caterpillar, Inc. is a foreign corporation engaged in the business of
manufacturing shoes, clothing items, among others. Search warrant applications were filed against
Manolo Samson (herein after referred to as Samson) for violations of unfair competition provided
under Section 168.3(a) in relation to Sections 131.3, 123(e) and 170 of Republic Act No. 8293,
otherwise known as the Intellectual Property Code. Search warrants were then issued against
respondent Samson and his other business establishments (Itti Shoes Corporation, Kolm’s
Manufacturing, and Caterpillar Boutique and General Merchandise). Pursuant to the search
warrants various merchandise garments, footwear, bags, wallets, deodorant sprays, shoe cleaners
32

and accessories, all bearing the trademarks "CAT," "CAT AND DESIGN," "CATERPILLAR,"
"CATERPILLAR AND DESIGN," "WALKING MACHINES" and/or "Track-type Tractor and
Page

Design" were seized. Respondent Samson filed a motion to quash the search warrants but was

nazh//ela//1838
denied. However, the Court ordered the release of the articles that were seized since there was no
criminal action filed against the respondent. Petitioner then filed Motion for Partial
Reconsideration but was denied by the TC. CA also denied the petition after noting that all the
criminal complaints that were filed against the respondent were dismissed by the investigating
prosecutor and that the respondent never denied the existence of the said items.
Issue/s 1) W/N CA erred in upholding the immediate release of the seized items on the ground
that there was no criminal action for unfair competition filed against the respondent?
2) W/N the CA erred in ruling that the subsequent dismissal of the investigating State
Prosecutor of the criminal complaints against respondent justifies the return of the seized items?
Held/Ratio: 1) NO. The Joint Resolution of the DOJ has become final; therefore no criminal case
was filed against the respondent in relation with the five search warrants that were issued by the
Trial Court. There was also no criminal case filed against the articles that were seized. With these,
the seized articles should be immediately released. Also, the numerous articles of clothing,
footwear and accessories, among others, that were seized had little, if any, evidentiary value for
the criminal action of unfair competition.
An action for unfair competition is based on the proposition that no dealer in merchandise
should be allowed to dress his goods in simulation of the goods of another dealer, so that purchasers
desiring to buy the goods of the latter would be induced to buy the goods of the former. The most
usual devices employed in committing this crime are the simulation of labels and the reproduction
of form, color and general appearance of the package used by the pioneer manufacturer or dealer.
In the case at hand the respondent already admitted the existence of the seized articles. The Court
therefore ruled that the admissions of the respondent in the case at hand are already suffiecient to
establish that he used such trademarks in order to sell merchandise at a commercial scale and that
the actual products manufactured by the respondent need not be presented to prove such fact. Also,
there were already available samples from the purchases as well as photographs of the particular
parts of the merchandise where the trademark in dispute were attached or used, therefore there is
no more need for the court to take custody of the countless articles that were seized.
2) NO. In the case at hand there is no criminal action that has been filed. The Court
therefore was left with no custody of the highly depreciable merchandise that were seized. More
importantly, these highly depreciable articles would have been superfluous if presented as
evidence for the following reasons: (1) the respondent had already admitted that he is the owner
of the merchandise seized, which made use of the trademarks in dispute; (2) the court required the
respondent to execute an undertaking to produce the articles seized when the court requires and
had already in its possession a complete inventory of the items seized as secondary evidence; (3)
actual samples of the respondent’s merchandise are in the possession of the police officers who
had applied for the search warrant, and photographs thereof had been made part of the records,
and respondent did not dispute that these were obtained from his stores. Where the purpose of
presenting as evidence the articles seized is no longer served, there is no justification for severely
curtailing the rights of a person to his property. Hence, petition denied.
33
Page

nazh//ela//1838
Shang Properties et al., vs St. Francis Development Corp., G.R. No. 190706, July 21, 2014.
http://www.lawphil.net/judjuris/juri2014/jul2014/gr_190706_2014.html

Shang Properties v. St. Francis Development Corporation

GR No. 190706; July 21, 2014
FACTS:
Respondent domestic corporation is engaged in the real estate business and is the developer
of the St. Francis Square Commercial Center (built sometime in 1992).
It filed separate complaints against petitioners before the IPO - BLA, namely:
(a) IPV Case – an intellectual property violation case for unfair competition, false or
fraudulent declaration, and damages arising from petitioners’ use and filing of applications for the
registration of the marks “THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRI-
LA PLACE,”; and
(b) St. Francis Towers IP Case – an inter partes case opposing the petitioners’ application
for registration of the mark “THE ST. FRANCIS TOWERS” for use relative to the latter’s
business, particularly the construction of permanent buildings or structures for residential and
office purposes; and
(c) St. Francis Shangri-La IP Case – an inter partes case opposing the petitioners’
application for registration of the mark “THE ST. FRANCIS SHANGRI-LA PLACE,”.
Respondent alleged that it has used the mark “ST. FRANCIS” to identify its numerous
property development projects located at Ortigas Center, such as the aforementioned St. Francis
Square Commercial Center, a shopping mall called the “St. Francis Square,” and a mixed-use
realty project plan that includes the St. Francis Towers. Respondent added that as a result of its
continuous use of the mark “ST. FRANCIS” in its real estate business, it has gained substantial
goodwill with the public that consumers and traders closely identify the said mark with its property
development projects. Accordingly, respondent claimed that petitioners could not have the mark
“THE ST. FRANCIS TOWERS” registered in their names, and that petitioners’ use of the marks
“THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE” in their own
real estate development projects constitutes unfair competition as well as false or fraudulent
declaration.
Petitioners denied committing unfair competition and false or fraudulent declaration,
maintaining that they could register the mark “THE ST. FRANCIS TOWERS” and “THE ST.
FRANCIS SHANGRI-LA PLACE” under their names. They contended that respondent is barred
from claiming ownership and exclusive use of the mark “ST. FRANCIS” because the same is
geographically descriptive of the goods or services for which it is intended to be used. This is
because respondent’s as well as petitioners’ real estate development projects are located along the
streets bearing the name “St. Francis,” particularly, St. Francis Avenue and St. Francis Street (now
known as Bank Drive), both within the vicinity of the Ortigas Center.
ISSUE: Whether or not petitioners are guilty of unfair competition in using the marks “THE ST.
FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE.”
RULING: NO.The unfair competition concept refers to the “‘the passing off (or palming off) or
attempting to pass off upon the public of the goods or business of one person as the goods or
business of another with the end and probable effect of deceiving the public.’ Passing off (or
34

palming off) takes place where the defendant, by imitative devices on the general appearance of
the goods, misleads prospective purchasers into buying his merchandise under the impression that
Page

they are buying that of his competitors. [In other words], the defendant gives his goods the general

nazh//ela//1838
appearance of the goods of his competitor with the intention of deceiving the public that the goods
are those of his competitor.”
The “true test” of unfair competition has thus been “whether the acts of the defendant have
the intent of deceiving or are calculated to deceive the ordinary buyer making his purchases under
the ordinary conditions of the particular trade to which the controversy relates.” Based on the
foregoing, it is therefore essential to prove the existence of fraud, or the intent to deceive, actual
or probable, determined through a judicious scrutiny of the factual circumstances attendant to a
particular case.
Here, the Court finds the element of fraud to be wanting; hence, there can be no unfair
competition. The CA’s contrary conclusion was faultily premised on its impression that respondent
had the right to the exclusive use of the mark “ST. FRANCIS,” for which the latter had purportedly
established considerable goodwill. What the CA appears to have disregarded or been mistaken in
its disquisition, however, is the geographically descriptive nature of the mark “ST. FRANCIS”
which thus bars its exclusive appropriability, unless a secondary meaning is acquired.
As deftly explained in the U.S. case of Great Southern Bank v. First Southern Bank:
“[d]escriptive geographical terms are in the ‘public domain’ in the sense that every seller should
have the right to inform customers of the geographical origin of his goods. A ‘geographically
descriptive term’ is any noun or adjective that designates geographical location and would tend to
be regarded by buyers as descriptive of the geographic location of origin of the goods or services.
A geographically descriptive term can indicate any geographic location on earth, such as
continents, nations, regions, states, cities, streets and addresses, areas of cities, rivers, and any
other location referred to by a recognized name. In order to determine whether or not the
geographic term in question is descriptively used, the following question is relevant: (1) Is the
mark the name of the place or region from which the goods actually come? If the answer is yes,
then the geographic term is probably used in a descriptive sense, and secondary meaning is
required for protection.”
Secondary meaning is established when a descriptive mark no longer causes the public to
associate the goods with a particular place, but to associate the goods with a particular source. In
other words, it is not enough that a geographically-descriptive mark partakes of the name of a place
known generally to the public to be denied registration as it is also necessary to show that the
public would make a goods/place association
– that is, to believe that the goods for which the mark is sought to be registered originate
in that place. However, where there is no genuine issue that the geographical significance of a term
is its primary significance and where the geographical place is neither obscure nor remote, a public
association of the goods with the place may ordinarily be presumed from the fact that the
applicant’s own goods come from the geographical place named in the mark.

o. Criminal penalties for infringement, unfair competition, false designation of origin, and
false description or misrepresentation
35
Page

nazh//ela//1838