without the concurrence of the Senate.
According to the IPAP, the Madrid Protocol is a treaty, not an
INTELLECTUAL PROPERTY ASSOCIATION OF THE PHILIPPINES v. HON. PAQUITO OCHOA, IN
HIS CAPACITY AS EXECUTIVE SECRETARY, ET AL.
DOCTRINE: The registration of trademarks and copyrights have been the subject of executive
agreements entered into without the concurrence of the Senate. Some executive agreements have been
concluded in conformity with the policies declared in the acts of Congress with respect to the general
subject matter.
FACTS: The Madrid System for the International Registration of Marks (Madrid System), which is the
centralized system providing a one-stop solution for registering and managing marks worldwide, allows
the trademark owner to file one application in one language, and to pay one set of fees to protect his
mark in the territories of up to 97 member-states. The Madrid System is governed by the Madrid
Agreement, concluded in 1891, and the Madrid Protocol, concluded in 1989. The Madrid Protocol has
two objectives, namely: (1) to facilitate securing protection for marks; and (2) to make the management
of the registered marks easier in different countries.
In 2004, the Intellectual Property Office of the Philippines (IPOPHL), began considering the country's
accession to the Madrid Protocol. After a campaign for information dissemination, and a series of
consultations with stakeholders, IPOPHL ultimately arrived at the conclusion that accession would benefit
the country and help raise the level of competitiveness for Filipino brands. Hence, it recommended to the
Department of Foreign Affairs (DFA) that the Philippines should accede to the Madrid Protocol. After its
own review, the DFA endorsed to the President the country's accession to the Madrid Protocol. The DFA
determined that the Madrid Protocol was an executive agreement.
On March 27, 2012, President Benigno C. Aquino III ratified the Madrid Protocol through an instrument
of accession, which was deposited with the Director General of the World Intellectual Property
Organization (WIPO) on April 25, 2012. The Madrid Protocol entered into force in the Philippines on July
25, 2012.
Thus, the Intellectual Property Association of the Philippines (IPAP) commenced this special civil action
for certiorari and prohibition to challenge the validity of the President's accession to the Madrid Protocol
Birkenstock Orthopaedie GMBH and Co. KG (formerly Birkenstock Orthopaedie GMBH) vs.
Philippine Stock Expo Marketing Corp
FACTS: Petitioner, a corporation duly organized and existing under the laws of Germany applied for
various trademark registrations before the Intellectual Property Office (IPO). However, the applications
were suspended in view of the existing registration of the mark “BIRKENSTOCK AND DEVICE” under
Registration No. 56334 dated October 21, 1993 in the name of Shoe Town International and Industrial
Corporation, the predecessor-in-interest of respondent Philippine Shoe Expo Marketing Corporation.
On May 27, 1997, petitioner filed a petition (Cancellation Case) for cancellation of Registration No.
564334 on the ground that it is the lawful and rightful owner of the Birkenstock marks. During its
pendency, however, respondent and/or it predecessor-in-interest failed to file the required 10th Year
Declaration of Actual Use (10th Year DAU) for Registration No. 56334 on or before October 21, 2004,
thereby resulting the cancellation of such mark. Accordingly, the cancellation case was dismissed for
being moot and academic thereby paving the way for the publication of the subject applications.
In response, respondent filed with the Bureau of Legal Affairs (BLA) of the IPO three separate verified
notices of opposition to the subject applications docketed as Inter Partes Cases claiming, among others,
it, together with its predecessor-in-interest, has been using the Birkenstock marks in the Philippines for
more than 16 years through the mark “BIRKENSTOCK AND DEVICE”. In its Decision, the BLA of the
IPO sustained respondent’s opposition, thus ordering the rejection of the subject applications. Aggrieved,
petitioner appealed to the IPO Director General whereby in its decision, the latter reversed and set aside
the ruling of the BLA thus allowing the registration of the subject applications.
Finding the IPO Director General’s reversal of the BLA unacceptable, respondent filed a petition for
review with the Court of Appeals. In its decision dated June 25, 2010, the CA reversed and set aside the
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executive agreement; hence, respondent DFA Secretary Albert Del Rosario acted with grave abuse of
discretion in determining the Madrid Protocol as an executive agreement. Also, the IPAP has argued that
the implementation of the Madrid Protocol in the Philippines; specifically the processing of foreign
trademark applications, conflicts with the Intellectual Property Code of the Philippines.
ISSUE: WON Madrid Protocol unconstitutional for lack of concurrence by the Senate?
RULING: NO. The Court finds and declares that the President’s ratification is valid and constitutional
because the Madrid Protocol, being an executive agreement as determined by the Department of Foreign
Affairs, does not require the concurrence of the Senate.
Under prevailing jurisprudence, the registration of trademarks and copyrights have been the
subject of executive agreements entered into without the concurrence of the Senate. Some executive
agreements have been concluded in conformity with the policies declared in the acts of Congress with
respect to the general subject matter.
Accordingly, DFA Secretary Del Rosario’s determination and treatment of the Madrid Protocol as an
executive agreement; being in apparent contemplation of the express state policies on intellectual
property as well as within his power under Executive Order No. 459, are upheld.
The Court observed that there are no hard and fast rules on the propriety of entering into a treaty or an
executive agreement on a given subject as an instrument of international relations. The primary
consideration in the choice of the form of agreement is the parties’ intent and desire to craft their
international agreement in the form they so wish to further their respective interests. The matter of form
takes a back seat when it comes to effectiveness and binding effect of the enforcement of a treaty or an
executive agreement; inasmuch as all the parties; regardless of the form, become obliged to comply
conformably with the time-honored principle of pacta sunt servanda. The principle binds the parties to
perform in good faith their parts in the agreements.
ruling of the IPO Director General and reinstated that of the BLA. The petitioner filed a Motion for
Reconsideration but was denied by the CA. Hence , this petition to the Supreme Court.
ISSUES:
Whether or not the petitioner’s documentary evidence, although photocopies, are admissible in court?
Whether or not the subject marks should be allowed registration in the name of the petitioner?
HELD: The court ruled yes. It is a well-settled principle that the rules of procedure are mere tools aimed
at facilitating the attainment of justice, rather than its frustration. A strict and rigid application of the rules
must always be eschewed when it would subvert the primary objective of the rules, that is, to enhance
fair trials and expedite justice. In the light of this, Section 5 of the Rules on Inter Partes Proceedings
provides that, “The Bureau shall not be bound by strict technical rules of procedure and evidence but
may adopt, in the absence of any applicable rule herein, such mode of proceedings which is consistent
with the requirements of fair play and conducive to the just, speedy and inexpensive disposition of cases,
and which will the Bureau the greatest possibility to focus on the contentious issues before it.
In the case at bar, it should be noted that the IPO had already obtained the originals of such documentary
evidence in the related Cancellation Case earlier before it. Under the circumstance and the merits of the
instant case as will be subsequently discussed, the Court holds that the IPO Director General’s relaxation
of procedure was a valid exercise of his discretion in the interest of substantial justice.
The court ruled in favour of the petitioner. Under Section 12 of Republic Act 166, it provides that, “Each
certificate of registration shall remain in force for twenty years: Provided, that the registration under the
provisions of this Act shall be cancelled by the Director, unless within one year following the fifth, tenth
and fifteenth anniversaries of the date of issue of the certificate of registration, the registrant shall file in
the Patent Office an affidavit showing that the mark or trade-name is still in use or showing that its non-
use is due to special circumstance which excuse such non-use and is not due to any intention to abandon
the same, and pay the required fee.”
In the case at bar, respondent admitted that it failed to file the 10th Year DAU for Registration No. 56334
within the requisite period, or on or before October 21, 2004. As a consequence, it was deemed to have
abandoned or withdrawn any right or interest over the mark “BIRKENSTOCK”. It must be emphasized
that registration of a trademark, by itself, is not a mode of acquiring ownership. If the applicant is not the
owner of the trademark, he has no right to apply for its registration. Registration merely creates a prima
facie presumption of the validity of the registration. Such presumption, just like the presumptive regularity
in the performance of official functions, is rebuttable and must give way to evidence to the contrary.
Besides, petitioner has duly established its true and lawful ownership of the mark “BIRKENSTOCK”. It
submitted evidence relating to the origin and history of “BIRKENSTOCK” and it use in commerce long
before respondent was able to register the same here in the Philippines. Petitioner also submitted various
certificates of registration of the mark “BIRKENSTOCK” in various countries and that it has used such
mark in different countries worldwide, including the Philippines.
SUPERIOR COMMERCIAL ENTERPRISES v. KUNNAN ENTERPRISES LTD.,
FACTS: On February 23, 1993, SUPERIOR filed a complaint for trademark infringement and unfair
competition with preliminary injunction against KUNNAN[6] and SPORTS CONCEPT.
In support of its complaint, SUPERIOR first claimed to be the owner of the trademarks, trading styles,
company names and business names[8] "KENNEX", "KENNEX & DEVICE", "PRO KENNEX" and "PRO-
KENNEX" (disputed trademarks).
In its defense, KUNNAN disputed SUPERIOR's claim of ownership and maintained that SUPERIOR - as
mere distributor from October 6, 1982 until December 31, 1991 - fraudulently registered the trademarks
in its name. KUNNAN alleged that it was incorporated in 1972,... under the name KENNEX Sports
Corporation for the purpose of manufacturing and selling sportswear and sports equipment; it
commercially marketed its products in different countries, including the Philippines since 1972. It created
and first used "PRO
KENNEX," derived from its original corporate name, as a distinctive trademark for its products in 1976.
KUNNAN also alleged that it registered the "PRO KENNEX" trademark not only in the Philippines but
also in 31 other countries, and widely promoted the "KENNEX" and "PRO KENNEX"... trademarks
through worldwide advertisements in print media and sponsorships of known tennis players.
ISSUES: WON CA ERRED IN HOLDING THAT PETITIONER SUPERIOR IS NOT THE TRUE AND
RIGHTFUL OWNER OF THE TRADEMARKS "KENNEX" AND "PRO-KENNEX" IN THE PHILIPPINES
HELD: On the Issue of Trademark Infringement
The CA decided that the registration of the "KENNEX" and "PRO KENNEX" trademarks should be
cancelled because SUPERIOR was not the owner of, and could not in the first place have validly
registered these trademarks.
Thus, as of the finality of the CA decision on December 3, 2007, these trademark registrations were
effectively cancelled and SUPERIOR was no longer the registrant of the disputed trademarks.
Essentially, Section 22 of RA 166 states that only a registrant of a mark can file a case for infringement.
Thus, we have previously held that the cancellation of registration of a trademark has the effect of
depriving the registrant of protection from infringement from the moment judgment or order of cancellation
has become final.
On the Issue of Unfair Competition
From jurisprudence, unfair competition has been defined as 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. The... essential elements of unfair
competition[47] are (1) confusing similarity in the general appearance of the goods; and (2) intent to
deceive the public and defraud a competitor.
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In the present case, no evidence exists showing that KUNNAN ever attempted to pass off the goods it
sold (i.e. sportswear, sporting goods and equipment) as those of SUPERIOR. In addition, there is no
evidence of bad faith or fraud imputable to KUNNAN in using the disputed... trademarks.
Principles: Jurisprudence also formulated the following "true test" of unfair competition: 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. One of
the essential requisites in an action to restrain unfair competition is proof of fraud; the intent to deceive,
actual or probable must be shown before the right to recover can exist.
Superior Commercial vs Kunnan Enterprises
FACTS: On February 23, 1993, SUPERIOR[5] filed a complaint for trademark infringement and unfair
competition with preliminary injunction against KUNNAN[6] and SPORTS CONCEPT
SUPERIOR first claimed to be the owner of the trademarks, trading styles, company names and business
names[8] KENNEX,[9] KENNEX & DEVICE,[10] PRO KENNEX[11] and PRO-KENNEX (disputed
trademarks).[12] Second, it also asserted its prior use of these trademarks, presenting as evidence of
ownership the Principal and Supplemental Registrations of these trademarks in its name. Third,
SUPERIOR also alleged that it extensively sold and advertised sporting goods and products covered by
its trademark registrations. Finally, SUPERIOR presented as evidence of its ownership of the disputed
trademarks the preambular clause of the Distributorship Agreement dated October 1, 1982
(Distributorship Agreement) it executed with KUNNAN
KUNNAN disputed SUPERIORs claim of ownership and maintained that SUPERIOR as mere distributor
from October 6, 1982 until December 31, 1991 fraudulently registered the trademarks in its name.
KUNNAN alleged that it was incorporated in 1972, under the name KENNEX Sports Corporation… it
commercially marketed its products in different countries, including the Philippines since 1972.[14] It
created and first used PRO KENNEX, in 1976. KUNNAN also alleged that it registered the PRO KENNEX
trademark not only in the Philippines but also in 31 other countries, and widely promoted the KENNEX
and PRO KENNEX trademarks through worldwide advertisements in print media and sponsorships of
known tennis players.
On October 1, 1982, after the expiration of its initial distributorship agreement with another company,[15]
KUNNAN appointed SUPERIOR as its exclusive distributor in the Philippines under a Distributorship
Agreement even though this Agreement clearly stated that SUPERIOR was obligated to assign the
ownership of the KENNEX trademark to KUNNAN, the latter claimed that the Certificate of Registration
for the KENNEX trademark remained with SUPERIOR because Mariano Tan Bon Diong (Mr. Tan Bon
Diong), SUPERIORs President and General Manager, misled KUNNANs officers into believing that
KUNNAN was not qualified to hold the same due to the many requirements set by the Philippine Patent
Office that KUNNAN could not meet.[17] KUNNAN further asserted that SUPERIOR deceived it into
assigning its applications for registration of the PRO KENNEX trademark in favor of SUPERIOR, through
an Assignment Agreement dated June 14, 1983.
Prior to and during the pendency of the infringement and unfair competition case before the RTC,
KUNNAN filed with the now defunct Bureau of Patents, Trademarks and Technology Transfer…KUNNAN
filed the Petition for Cancellation and Opposition on the ground that SUPERIOR fraudulently registered
and appropriated the disputed trademarks; as mere distributor and not as lawful owner, it obtained the
registrations and assignments of the disputed trademarks in violation of the terms of the Distributorship
Agreement.
The RTC issued its decision[23] holding KUNNAN liable for trademark infringement and unfair
competition… The RTC found that SUPERIOR sufficiently proved that it was the first user and owner of
the disputed trademarks in the Philippines..
CA issued its decision in CA-G.R. CV No. 60777, reversing and setting aside the RTCs decision of March
31, 1998.[30] It dismissed SUPERIORs Complaint for Infringement of Trademark and Unfair Competition
with Preliminary Injunction on the ground that SUPERIOR failed to establish by preponderance of
evidence its claim of ownership over the KENNEX and PRO KENNEX trademarks. The CA found the
Certificates of Principal and Supplemental Registrations and the whereas clause of the Distributorship
Agreement insufficient to support SUPERIORs claim of ownership over the disputed trademarks.
ISSUE: W/N Superior, as exclusive distributor, can claim ownership of the trademarks?
HELD: No. SUPERIOR as a mere distributor and not the owner cannot assert any protection from
trademark infringement as it had no right in the first place to the registration of the disputed trademarks.
In fact, jurisprudence holds that in the absence of any inequitable conduct on the part of the manufacturer,
an exclusive distributor who employs the trademark of the manufacturer does not acquire proprietary
rights of the manufacturer, and a registration of the trademark by the distributor as such belongs to the
manufacturer..
Kunnan was able to overcome the presumption of ownership in favor of Superior, the former sufficiently
established the fraudulent registration of the questioned trademarks by Superior. the KENNEX trademark
were fraudulently obtained by petitioner Superior. Even before PROKENNEX products were imported by
Superior into the Philippines, the same already enjoyed popularity in various countries and had been
distributed worldwide, particularly among the sports and tennis enthusiasts since 1976… Superior caused
the registration thereof in the Philippines under its name when it knew fully well that it did not own nor did
it manufacture the PROKENNEX products. Superior claimed ownership of the subject marks and failed
to disclose in its application with the IPO that it was merely a distributor of KENNEX and PROKENNEX
products in the Philippines.
ECOLE DE CUISINE MANILLE V. COINTREAU (G.R. NO. 185830)
FACTS: Respondent Cointreau, a partnership registered under the laws of France, applied for the
registration of the mark ‘Le Cordon Bleu & Device.’ Petitioner Ecole De Cuisine opposed on the ground
that it is the owner of the mark ‘Le Cordon Bleu, Ecole De Cuisine Manille’ used in its culinary activities
and restaurant business and that the registration will create confusion to the public. Respondent
Cointreau answered claiming it is the true and lawful owner of the mark and had long been using it
worldwide. The IPO Bureau of Legal Affairs sustained petitioner’s opposition stating that Cointreau had
no prior use of the mark in the Philippines to be entitled to a proprietary right over it. The IPO Director
General reversed the decision and allowed the mark’s registration holding that under RA No. 166, actual
use in the Philippines is not necessary to acquire ownership of the mark.
ISSUE: WON respondent’s prior use of the mark is a requirement for its registration.
HELD: YES.
Under Section 2 of R.A. No. 166, in order to register a trademark, one must be the owner thereof and
must have actually used the mark in commerce in the Philippines for 2 months prior to the application for
registration. Section 2-A of the same law sets out to define how one goes about acquiring ownership
thereof. Under Section 2-A, it is clear that actual use in commerce is also the test of ownership but the
provision went further by saying that the mark must not have been so appropriated by another.
Additionally, it is significant to note that Section 2-A does not require that the actual use of a trademark
must be within the Philippines. Thus, as correctly mentioned by the CA, under R.A. No. 166, one may be
an owner of a mark due to its actual use but may not yet have the right to register such ownership here
due to the owner’s failure to use the same in the Philippines for 2 months prior to registration. In the
instant case, it is undisputed that Cointreau has been using the subject mark in France, prior to Ecole’s
averred first use of the same in the Philippines, of which the latter was fully aware thereof. On the other
hand, Ecole has no certificate of registration over the subject mark but only a pending application. Under
the foregoing circumstances, even if Ecole was the first to use the mark in the Philippines, it cannot be
said to have validly appropriated the same.
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, as amended, has already dispensed with the requirement of prior actual
use at the time of registration. Thus, there is more reason to allow the registration of the subject mark
under the name of Cointreau as its true and lawful owner.
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Ecole De Cuisine Manille (Cordon Bleu of the Philippines), Inc., vs. Renaud Cointreau & Cie and
Le Cordon Bleu Int'l.,
FACTS: Cointreau, a partnership registered under the laws of France, filed for a trademark application
for the mark "LE CORDON BLEU & DEVICE" pursuant to Section 37 of Republic Act No. 166. Petitioner
Ecole filed an opposition to the subject application, averring that it is the owner of the mark "LE CORDON
BLEU, ECOLE DE CUISINE MANILLE," which it has been using since 1948 in cooking and other culinary
activities, including in its restaurant business; and it has earned immense and invaluable goodwill such
that Cointreau’s use of the subject mark will actually create confusion, mistake, and deception to the
buying public as to the origin and sponsorship of the goods, and cause great and irreparable injury and
damage to Ecole’s business reputation and goodwill as a senior user of the same.
The Bureau of Legal Affairs (BLA) sustained Ecole’s opposition to the subject mark, necessarily resulting
in the rejection of Cointreau’s application. While noting the certificates of registration obtained from other
countries and other pertinent materials showing the use of the subject mark outside the Philippines, the
BLA did not find such evidence sufficient to establish Cointreau’s claim of prior use of the same in the
Philippines. It emphasized that the adoption and use of trademark must be in commerce in the Philippines
and not abroad. Cointreau has not established any proprietary right entitled to protection in the Philippine
jurisdiction because the law on trademarks rests upon the doctrine of nationality or territoriality.
The IPO Director General reversed and set aside the BLA’s decision.. The CA affirmed and declared
Cointreau as the true and actual owner of the subject mark with a right to register the same in the
Philippines under Section 37 of R.A. No. 166, having registered such mark in its country of origin on
November 25, 1986
ISSUES: WON CA was correct in upholding the IPO
Director General’s ruling that Cointreau is the true
and lawful owner of the subject mark and thus, entitled to have the same registered under its name.
HELD: Yes, the CA was correct. At the time Ecole started using the subject mark, the same was already
being used by Cointreau, albeit abroad, of which Ecole’s directress was fully aware, being an alumna of
the latter’s culinary school in Paris, France. Hence, Ecole cannot claim any tinge of ownership whatsoever
over the subject mark as Cointreau is the true and lawful owner thereof. As such, the IPO Director General
and the CA were correct in declaring Cointreau as the true and lawful owner of the subject mark and as
such, is entitled to have the same registered under its name. In any case, the present law on trademarks,
Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, as
amended, has already dispensed with the requirement of prior actual use at the time of registration. Thus,
there is more reason to allow the registration of the subject mark under the name of Cointreau as its true
and lawful owner.
Asia Brewery, Inc. vs Court of Appeals| Law on Trademarks, Unfair Competition
FACTS: In September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for allegedly
infringing upon their trademark on their beer product popularly known as “San Miguel Pale Pilsen”; that
Asia Brewery’s “Beer na Beer” product, by infringing upon SMC’s trademark has committed unfair
competition as “Beer na Beer” creates confusion between the two products. The RTC ruled in favor of
Asia Brewery but the Court of Appeals reversed the RTC.
ISSUE: Whether or not Asia Brewery infringed upon the trademark of SMC.
HELD: No. Both products are manufactured using amber colored steinie bottles of 320 ml. Both were
labeled in a rectangular fashion using white color paint. But other than these similarities, there are salient
differences between the two. As found by the Supreme Court, among others they are the following:
1. The dominant feature of SMC’s trademark are the words “San Miguel Pale Pilsen” while that of Asia
Brewery’s trademark is the word “Beer”. Nowhere in SMC’s product can be seen the word “Beer” nor in
Asia Brewery’s product can be seen the words “San Miguel Pale Pilsen”. Surely, someone buying “Beer
na Beer” cannot mistake it as “San Miguel Pale Pilsen” beer.
2. The bottle designs are different. SMC’s bottles have slender tapered neck while that of “Beer na Beer”
are fat. Though both beer products use steinie bottles, SMC cannot claim that Asia Brewery copied the
idea from SMC. SMC did not invent but merely borrowed the steinie bottle from abroad and SMC does
not have any patent or trademark to protect the steinie bottle shape and design.
3. In SMC bottles, the words “pale pilsen” are written diagonally while in “Beer na Beer”, the words “pale
pilsen” are written horizontally. Further, the words “pale pilsen” cannot be said to be copied from SMC for
“pale pilsen” are generic words which originated from Pilsen, Czechoslovakia. “Pilsen” is a geographically
descriptive word and is non-registrable.
4. SMC bottles have no slogans written on them while Asia Brewery’s bottles have a copyrighted slogan
written on them that is “Beer na Beer”.
5. In SMC bottles, it is expressly labeled as manufactured by SMC. In Asia Brewery beer products, it is
likewise expressly labeled as manufactured by Asia Brewery. Surely, there is no intention on the part of
Asia Brewery to confuse the public and make it appear that “Beer na Beer” is a product of SMC, a long-
established and more popular brand.
MCDONALD’S CORPORATION VS. L.C. BIG MAK BURGER, INC.
FACTS: Petitioner McDonald’s Corporation is a corporation organized under the laws of Delaware,
United States. McDonald’s operates a global chain of fast-food restaurants. McDonald’s own a family of
marks including the “Big Mac” mark for its double-decker hamburger sandwich.
McDonald’s registered this trademark with the United States Trademark Registry on 16 October 1979.
Based on this Home Registration, McDonald’s applied for the registration of the same mark in the
Principal Register of then then Philippine Bureau of Patents, Trademarks and Technology (PBPTT) –
now the Intellectual Property Office (IPO).
Pending approval of its application, McDonald’s introduced its “Big Mac” hamburger sandwiches in the
Philippine market in September 1981. On 18 July 1985, the PBPTT allowed registration of the “Big Mac”
mark in the Philippine Register based on its Home Registration in the United States. From 1982 to 1990,
McDonald’s spent P10.5 million in advertisement for “Big Mac” hamburger sandwiches alone.
Respondent L.C. Big Mak Burger, Inc. is a domestic corporation which operates fast-food outlets and
snack vans in Metro Manila and nearby provinces. Its menu includes hamburger sandwiches and other
food items.
On 21 October 1988, respondent corporation applied with the PBPTT for the registration of the “Big Mak”
mark for its hamburger sandwiches.
McDonald’s opposed respondent corporation’s application on the ground that “Big Mak” was a colorable
imitation of its registered “Big Mac” mark for the same food products.
ISSUES:
1. Is the respondent guilty of trademark infringement and unfair competition?
2. Is the “Big Mac” mark valid and does McDonald’s have rightful ownership to the same?
RULING:
1. YES. - Trademark Infringement
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RA 166 defines trademark infringement as “any person who (1) 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 use is likely to CAUSE CONFUSION or otherwise mistake or to deceive
purchasers or others as to the source or origin of such goods or services or identity of such business; or
(2) reproduce, counterfeit, copy, or colorably imitate 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.”
Clearly, there is cause for confusion in the case at bar. By using the “Big Mak” mark on the same goods,
i.e. hamburger sandwiches, that petitioners’ “Big Mac” mark is used, they have unjustly created the
impression that its business is approved and sponsored by, or affiliated with plaintiffs.
Furthermore, using the dominancy test (rather than the holistic test), wherein the dominant features in
the competing marks are considered, Big Mak failed to show that there could be no confusion. The Court
found that respondents’ use of the “Big Mak” mark results in likelihood of confusion. First, “Big Mak”
sounds exactly the same as “Big Mac.” Second, the first word in “Big Mak” is exactly the same as the first
word in “Big Mac.” Third, the first two letters in “Mak” are the same as the first two letters in “Mac.” Fourth,
the last letter in “Mak” while a “k” sounds the same as “c” when the word “Mak” is pronounced. Fifth, in
Filipino, the letter “k” replaces “c” in spelling, thus “Caloocan” is spelled “Kalookan.” In short, aurally, the
two marks are the same.
Unfair Competition
With regard to unfair competition, RA 166, Section 29 defines the same as any person who will 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.
Unfair competition is broader than trademark infringement and includes passing off goods with or without
trademark infringement. Trademark infringement is a form of unfair competition. Trademark infringement
constitutes unfair competition when there is not merely likelihood of confusion, but also actual or probable
deception on the public because of the general appearance of the goods.
L.C. Big Mak tried to pass off their goods as though it were connected to “Big Mac.” The mark “B[ig]
M[ac]” is used by plaintiff McDonald’s to identify its double decker hamburger sandwich. The packaging
material is a styrofoam box with the McDonald’s logo and trademark in red with block capital letters
printed on it. All letters of the “B[ig] M[ac]” mark are also in red and block capital letters. On the other
hand, defendants’ “B[ig] M[ak]” script print is in orange with only the letter “B” and “M” being capitalized
and the packaging material is plastic wrapper. x x x x Further, plaintiffs’ logo and mascot are the umbrella
“M” and “Ronald McDonald’s,” respectively, compared to the mascot of defendant Corporation which is
a chubby boy called “Macky” displayed or printed between the words “Big” and “Mak.”(Emphasis
supplied)
Respondents point to these dissimilarities as proof that they did not give their hamburgers the general
appearance of petitioners’ “Big Mac” hamburgers.
The dissimilarities in the packaging are minor compared to the stark similarities in the words that give
respondents’ “Big Mak” hamburgers the general appearance of petitioners’ “Big Mac” hamburgers.
Section 29(a) expressly provides that the similarity in the general appearance of the goods may be in the
“devices or words” used on the wrappings. Respondents have applied on their plastic wrappers and bags
almost the same words that petitioners use on their styrofoam box. What attracts the attention of the
buying public are the words “Big Mak” which are almost the same, aurally and visually, as the words “Big
Mac.” The dissimilarities in the material and other devices are insignificant compared to the glaring
similarity in the words used in the wrappings.
2. YES. A mark is valid if it is “distinctive” and thus not barred from registration under Section 4 of RA
166. However, once registered, not only the mark’s validity but also the registrant’s ownership of the mark
is prima facie presumed.
Respondents contend that of the two words in the “Big Mac” mark, it is only the word “Mac” that is valid
because the word “Big” is generic and descriptive (proscribed under Section 4[e]), and thus “incapable of
exclusive appropriation.”
The contention has no merit. The “Big Mac” mark, which should be treated in its entirety and not dissected
word for word,is neither generic nor descriptive.
Societe Des Produits Nestle, S.A. vs CA | Generic Term
FACTS: In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and Technology
Transfers an application for the registration of its trademark “Flavor Master” – an instant coffee. Nestle
opposed the application as it alleged that “Flavor Master” is confusingly similar to Nestle coffee products
like Master Blend and Master Roast. Nestle alleged that in promoting their products, the word Master has
been used so frequently so much so that when one hears the word Master it connotes to a Nestle product.
They provided as examples the fact that they’ve been using Robert Jaworski and Ric Puno Jr. as their
commercial advertisers; and that in those commercials Jaworski is a master of basketball and that Puno
is a master of talk shows; that the brand of coffee equitable or fit to them is Master Blend and Master
Roast. CFC Corporation on the other hand alleged that the word “Master” is a generic and a descriptive
term, hence not subject to trademark. The Director of Patents ruled in favor of Nestle but the Court of
Appeals, using the Holistic Test, reversed the said decision.
ISSUE: Whether or not the Court of Appeals is correct.
HELD: No. The proper test that should have been used is the Dominancy Test. The application of the
totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific
features, similarities or dissimilarities, considering that the product is an inexpensive and common
household item. The use of the word Master by Nestle in its products and commercials has made Nestle
acquire a connotation that if it’s a Master product it is a Nestle product. As such, the use by CFC of the
term “MASTER” in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or
mistake or even to deceive the ordinary purchasers.
In addition, the word “MASTER” is neither a generic nor a descriptive term. As such, said term can not
be invalidated as a trademark and, therefore, may be legally protected.
Generic terms are those which constitute “the common descriptive name of an article or substance,” or
comprise the “genus of which the particular product is a species,” or are “commonly used as the name or
description of a kind of goods,” or “imply reference to every member of a genus and the exclusion of
individuating characters,” or “refer to the basic nature of the wares or services provided rather than to the
more idiosyncratic characteristics of a particular product,” and are not legally protectable.
On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in its
normal and natural sense, it “forthwith conveys the characteristics, functions, qualities or ingredients of a
product to one who has never seen it and does not know what it is,” or “if it forthwith conveys an immediate
idea of the ingredients, qualities or characteristics of the goods,” or if it clearly denotes what goods or
services are provided in such a way that the consumer does not have to exercise powers of perception
or imagination.
Rather, the term “MASTER” is a suggestive term brought about by the advertising scheme of Nestle.
Suggestive terms are those which, in the phraseology of one court, require “imagination, thought and
perception to reach a conclusion as to the nature of the goods.” Such terms, “which subtly connote
something about the product,” are eligible for protection in the absence of secondary meaning. While
suggestive marks are capable of shedding “some light” upon certain characteristics of the goods or
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services in dispute, they nevertheless involve “an element of incongruity,” “figurativeness,” or ”
imaginative effort on the part of the observer.”
MCDONALD’S CORP. v. MCJOY
FACTS: Macjoy Fastfood Corporation (Macjoy), a corporation selling fried chicken, chicken barbeque,
burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks (fastfood products) in Cebu
City filed with the BPTT-IPO an application for the registration of the trademark “MACJOY & DEVICE”.
McDonald’s Corporation, a corporation organized under the laws of Delaware, USA opposed against the
respondent’s application claiming that such trademark so resembles its corporate logo (Golden Arches)
design and its McDONALD’s marks such that when used on identical or related goods, the trademark
applied for would confuse or deceive purchasers into believing that the goods originated from the same
source or origin.
Macjoy on the other hand averred that the it has used the mark “MACJOY” for tha past many years in
good faith and has spent considerable sums of money for extensive promotions x x x.
The IPO ratiocinated that the predominance of the letter “M” and the prefixes “Mac/Mc” in both the Macjoy
and McDonald’s marks lead to the conclusion that there is confusing similarity between them x x x.
Therefore, Macjoy’s application was denied.
Upon appeal to the CA it favored with MacJoy and against McDonald’s. The Court of Appeals, in ruling
over the case, actually used the holistic test (which is a test commonly used in infringement cases). The
holistic test looks upon the visual comparisons between the two trademarks. The justifications are the
following:
1. The word “MacJoy” is written in round script while the word “McDonald’s is written in single stroke
gothic;
2. The word “MacJoy” comes with the picture of a chicken head with cap and bowtie and wings sprouting
on both sides, while the word “McDonald’s” comes with an arches “M” in gold colors, and absolutely
without any picture of a chicken;
3. The word “MacJoy” is set in deep pink and white color scheme while the word “McDonald’s” is written
in red, yellow, and black color combination;
4. The facade of the respective stores of the parties, are entirely different.
ISSUE: Whether there is a confusing similarity between the McDonald’s marks of the petitioner and the
respondent’s “MACJOY & DEVICE” trademark when it applied to classes 29 ad 30 of the International
Classification of Goods.
HELD: YES. The Supreme Court ruled that the proper test to be used is the dominancy test. The
dominancy test not only looks at the visual comparisons between two trademarks but also the aural
impressions created by the marks in the public mind as well as connotative comparisons, giving little
weight to factors like prices, quality, sales outlets and market segments. In the case at bar, the Supreme
Court ruled that “McDonald’s” and “MacJoy” marks are confusingly similar with each other such that an
ordinary purchaser can conclude an association or relation between the marks. To begin with, both marks
use the corporate “M” design logo and the prefixes “Mc” and/or “Mac” as dominant features. The first
letter “M” in both marks puts emphasis on the prefixes “Mc” and/or “Mac” by the similar way in which they
are depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is the prefix “Mc,” an
abbreviation of “Mac,” which visually and aurally catches the attention of the consuming public. Verily,
the word “MACJOY” attracts attention the same way as did “McDonalds,” “MacFries,” “McSpaghetti,”
“McDo,” “Big Mac” and the rest of the MCDONALD’S marks which all use the prefixes Mc and/or Mac.
Besides and most importantly, both trademarks are used in the sale of fastfood products.
Further, the owner of MacJoy provided little explanation why in all the available names for a restaurant
he chose the prefix “Mac” to be the dominant feature of the trademark. The prefix “Mac” and “Macjoy”
has no relation or similarity whatsoever to the name Scarlett Yu Carcel, which is the name of the niece
of MacJoy’s president whom he said was the basis of the trademark MacJoy. By reason of the MacJoy’s
implausible and insufficient explanation as to how and why out of the many choices of words it could have
used for its trade-name and/or trademark, it chose the word “Macjoy,” the only logical conclusion
deducible therefrom is that the MacJoy would want to ride high on the established reputation and goodwill
of the McDonald’s marks, which, as applied to its restaurant business and food products, is undoubtedly
beyond question.
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 anoutlet 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: WON respondent is guilty of trademark infringement.
HELD: Yes. There is trademark infringement when the second mark used is likely to cause confusion.
There are two tests to determine this:
1. Dominancy Test – the court focuses on the similarity of the dominant features of the marks that might
cause confusion in the mind of the consumer. Duplication or imitation is not necessary. Even accidental
confusion may be cause for trademark infringement. More consideration is given to the aural and visual
impressions created by the marks on the buyers and less weight is given to factors like price, quality,
sales outlets and market segments.
Applied to this case: The SC found that the use of the “S” symbol by Strong rubber shoes infringes on
the registered Skechers trademark. It is the most dominant feature of the mark -- one that catches the
buyer’s eye first. Even if the accused claims that there was a difference because the “S” used by Skechers
is found inside an oval, the fact that the accused used the dominant “S” symbol already constitutes
trademark infringement.
The SC disagreed with the CA reasoning that the “S” symbol is already used for many things, including
the Superman symbol. Even if this is true, the fact that Strong used same stylized “S” symbol as that of
the Skechers brand makes this a case of trademark infringement. The same font and style was used in
this case. The Superman “S” symbol is clearly different from the “S” in this case.
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2. Holistic or Totality Test – the court looks at the entirety of the marks as applied to the products,
including the labels and packaging. You must not only look at the dominant features but all other features
appearing on both marks.
Applied to this case: Both RTC and CA used the Holistic Test to rule that there was no infringement.
Both courts argued the following differences:
-The mark “S” found in Strong Shoes is not enclosed in an “oval design.”
-The word “Strong” is conspicuously placed at the backside and insoles.
-The hang tags and labels attached to the shoes bears the word “Strong” for respondent and “Skechers
U.S.A.” for private complainant;
-Strong shoes are modestly priced compared to the costs of Skechers Shoes.
Also using the Holistic Test, the SC corrected the lower courts and ruled that the striking similarities
between the products outweigh the differences argued by the respondents:
Same color scheme of blue, white and gray;
Same wave-like pattern on the midsole and the outer sole;
Same elongated designs at the side of the midsole near the heel;
Same number of ridges on the outer soles (five at the back and six in front);
Same location of the stylized “S” symbol;
The words "Skechers Sport Trail" at the back of the Skechers shoes and "Strong Sport Trail" at the back
of the Strong shoes, using the same font, color, size, direction and orientation;
Same two grayish-white semi-transparent circles on top of the heel collars.
The features and overall design of the two products are so similar that there is a high likelihood of
confusion.
Two products do not need to be identical, they just need to be similar enough to confuse the ordinary
buyer in order to constitute trademark infringement (Converse Rubber Corporation v. Jacinto Rubber &
Plastic Co., 186 Phil. 85 [1980]). Also, the difference in price cannot be a defense in a case for trademark
infringement (McDonald’s Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402, 434 [2004]).
There are two types of confusion:
Product Confusion – where the ordinary prudent purchaser would be induced to purchase on product in
the belief that he was buying another.
Source or Origin Confusion – although the goods are different, the use of the mark causes the consumer
to assume that both products originate from the same source.
Trademark law protects the owner not only from product confusion but also from source confusion.
Protection is not limited to the same or similar products but extends to all cases where:
The consumer is misled into thinking that the trademark owner extended his business into a new field;
The consumer is misled into thinking that the trademark owner is in any way connected to the infringer’s
activities; or
The infringement forestalls the normal potential expansion of the trademark owner’s business.
Trademark law does not only protect the owner’s reputation and goodwill, it also protects the consumers
from fraud and confusion.
In this case, it is clear that there was an attempt to copy the trademark owner’s mark and product design.
In trademark infringement cases, you do not need to copy another's mark or product exactly. Colorable
imitation is enough.
SOCIETE DES PRODUITS NESTLE V. DY, JR. (G.R. NO. 172276)
FACTS: Petitioner Nestle, a Swiss corporation, owns the ‘NAN’ trademark for its line of infant powdered
milk products in the Philippines. Respondent Dy, Jr. on the other hand, owner of 5M Enterprises, imports
and repacks powdered milk for adults bearing the mark ‘NANNY.’ Petitioner Nestle filed before the trial
court an infringement complaint against respondent. The trial court held that respondent’s trademark is
an infringement to petitioner’s mark because it would imply that respondent’s ‘NANNY’ product came
from petitioner. CA reversed and held that the two marks are not confusingly similar thus respondent
cannot be held liable for infringement.

ISSUE: WON respondent is liable for trademark infringement.
HELD: YES.
In accordance with Section 22 of R.A. No. 166, as well as Sections 2, 2-A, 9-A, and 20 thereof, the
following constitute the elements of trademark infringement: (a) A trademark actually used in commerce
in the Philippines and registered in the principal register of the Philippine Patent Office; (b) It is used by
another person in connection with the sale, offering for sale, or advertising of any goods, business or
services 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
such trademark is reproduced, counterfeited, copied or colorably imitated by another person and such
reproduction, counterfeit, copy or colorable imitation 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 as to likely cause confusion or mistake or to deceive purchasers; (c) The trademark
is used for identical or similar goods; and (d) Such act is done without the consent of the trademark
registrant or assignee.
On the other hand, the elements of infringement under R.A. No. 8293 are as follows: (a) The trademark
being infringed is registered in the Intellectual Property Office; however, in infringement of trade name,
the same need not be registered; (b) The trademark or trade name is reproduced, counterfeited, copied,
or colorably imitated by the infringer; (c) 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; (d) 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 (e) It is without the consent of the trademark or trade name owner or the
assignee thereof.
Among the elements, the element of likelihood of confusion is the gravamen of trademark infringement.
Applying the dominancy test in the present case, the Court finds that “NANNY” is confusingly similar to
“NAN.” “NAN” is the prevalent feature of Nestle’s line of infant powdered milk products. It is written in bold
letters and used in all products. The line consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly,
“NANNY” contains the prevalent feature “NAN.” The first three letters of “NANNY” are exactly the same
as the letters of “NAN.” When “NAN” and “NANNY” are pronounced, the aural effect is confusingly similar.
Emerald Garment Manufacturing Corporation v. CA | Trademark Infringement
FACTS: On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau of Patents,
Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 for
the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits,
dresses, shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner
Emerald Garment Manufacturing Corporation.
Private respondent averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as
previously registered and used in the Philippines cause confusion, mistake and deception on the part of
the purchasing public as to the origin of the goods.
On 19 July 1988, the Director of Patents rendered a decision granting private respondent's petition for
cancellation and opposition to registration. The Director of Patents, using the test of dominancy, 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.
ISSUE: Whether or not the decision of the Court of Appeals is correct.
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HELD: No. The Supreme Court considered that the trademarks involved as a whole and ruled that
Emerald Garment’s “STYLISTIC MR. LEE” is not confusingly similar to H.D. Lee’s “LEE” trademark. The
trademark “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 involved.
There is no cause for the Court of Appeal’s apprehension that Emerald Garment’s products might be
mistaken as “another variation or line of garments under H.D. Lee’s ‘LEE’ trademark”. As one would
readily observe, H.D. Lee’s variation follows a standard format “LEERIDERS,” “LEESURES” and
“LEELEENS.” It is, therefore, improbable that the public would immediately and naturally conclude that
petitioner’s “STYLISTIC MR. LEE” is but another variation under H.D. Lee’s “LEE” mark.
The issue of confusing similarity between trademarks is resolved by considering the distinct
characteristics of each case. In the present controversy, taking into account these unique factors, we
conclude that the similarities in the trademarks in question are not sufficient as to likely cause deception
and confusion tantamount to infringement.
Further, H.D. Lee failed to prove in court that it had prior actual commercial use of its “LEE” trademark in
the Philippines. H.D. Lee did show certificates of registrations for its brand but registration is not sufficient.
Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of ownership
over a trademark pursuant to Sec. 2 and 2-A of the Philippine Trademark Law (R.A. No. 166).
A rule widely accepted and firmly entrenched because it has come down through the years is that actual
use in commerce or business is a prerequisite in the acquisition of the right of ownership over a
trademark.
It would seem quite clear that adoption alone of a trademark would not give exclusive right thereto. Such
right “grows out of their actual use.” Adoption is not use. One may make advertisements, issue circulars,
give out price lists on certain goods; but these alone would not give exclusive right of use. For trademark
is a creation of use. The underlying reason for all these is that purchasers have come to understand the
mark as indicating the origin of the wares. Flowing from this is the trader’s right to protection in the trade
he has built up and the goodwill he has accumulated from use of the trademark. Registration of a
trademark, of course, has value: it is an administrative act declaratory of a pre-existing right. Registration
does not, however, perfect a trademark right.
Bristol-Myers v. Director of Patents
FACTS: A petition for registration in the Principal Register of the Patent Office of the trademark
"BIOFERIN" was filed on October 21, 1957 by United American Pharmaceuticals, Inc. Said domestic
corporation first used the afore-stated trademark in the Philippines on August 13, 1957. It covers "a
medicinal preparation of antihistamic, analgesic, antipyritic with vitamin C and Bioflavenoid used in the
treatment of common colds, influenza and other febrile diseases with capillary hemmorrhagic
tendencies." The product falls under Class 6 of the official classification, that is, "Medicines and
Pharmaceutical Preparations".
Bristol Myers Co., a corporation of the State of Delaware, U.S.A., filed on January 6, 1959 an opposition
to the application. Said oppositor is the owner in the Philippines of the trademark "BUFFERIN" under
Certificate of Registration No. 4578 issued by the Philippine Patent Office on March 3, 1954. Its trademark
is also registered in the United States under Certificate of Registration No. 566190 issued on November
4, 1952. It was first used in the Philippines on May 13, 1953. The product covered by "BUFFERIN" also
belongs to Class 6, Medicines and Pharmaceutical Preparations. Designated as "Antacid analgesic", it is
intended for relief in cases of "simple headaches, neuralgia, colds, menstrual pain and minor muscular
aches."
The Director of Patents rendered a decision granting the petition for registration and dismissing the
opposition, on the ground that, all factors considered the trademarks in question are not confusingly
similar, so that the damage feared by the oppositor will not result.
ISSUE: WON the trademarks "BIOFERIN" and "BUFFERIN", as presented to the public in their respective
labels, confusingly similar?
HELD: No, "BIOFERIN" and "BUFFERIN", as presented to the public in their respective labels, are not
confusingly similar.
In determining whether two trademarks are confusingly similar, the test is not simply to take their words
and compare the spelling and pronunciation of said words. Rather, it is to consider the two marks in their
entirety, as they appear in the respective labels, in relation to the goods to which they are attached.
Applying this test to the trademarks involved in this case, it is at once evident that the Director of Patents
did not err in finding no confusing similarity. For though the words "BIOFERIN" and "BUFFERIN" have
the same suffix and similar sounding prefixes, they appear in their respective labels with strikingly
different backgrounds and surroundings, as to color , size and design.
Accordingly, taken as they will appear to a prospective customer, the trademark in question are not apt
to confuse. Furthermore, the product of the applicant is expressly stated as dispensable only upon
doctor's prescription, while that of oppositor does not require the same. The chances of being confused
into purchasing one for the other are therefore all the more rendered negligible. Although oppositor avers
that some drugstores sell "BIOFERIN" without asking for a doctor's prescription, the same if true would
be an irregularity not attributable to the applicant, who has already clearly stated the requirement of a
doctor's prescription upon the face of the label of its product.
Wherefore, the decision of the Director of Patents appealed from is hereby affirmed without costs. So
ordered.
VICTORIO DIAZ v. PEOPLE (G.R. NO. 180677 FEBRUARY 18, 2013)
Dismissal of the appeal upon failure to file the appellant’s brief is not mandatory, but discretionary.
FACTS: Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s. After receiving
information that Diaz was selling counterfeit LEVI’S 501 jeans in his tailoring shops in Almanza and Talon,
Las Piñas City, Levi’s Philippines hired a private investigation group to verify the information. Surveillance
and the purchase of jeans from the tailoring shops of Diaz established that the jeans bought from the
tailoring shops of Diaz were counterfeit or imitations of LEVI’S 501. Levi’s Philippines then sought the
assistance of the National Bureau of Investigation (NBI) for purposes of applying for a search warrant
against Diaz to be served at his tailoring shops. The search warrants were issued in due course. Armed
with the search warrants, NBI agents searched the tailoring shops of Diaz and seized several fake LEVI’S
501 jeans from them. Levi’s Philippines claimed that it did not authorize the making and selling of the
seized jeans; that each of the jeans were mere imitations of genuine LEVI’S 501 jeans by each of them
bearing the registered trademarks, like the arcuate design, the tab, and the leather patch; and that the
seized jeans could be mistaken for original LEVI’S 501 jeans due to the placement of the arcuate, tab,
and two-horse leather patch. Diaz stated that he did not manufacture Levi’s jeans, and that he used the
label “LS Jeans Tailoring” in the jeans that he made and sold; that the label “LS Jeans Tailoring” was
registered with the Intellectual Property Office; that his shops received clothes for sewing or repair; that
his shops offered made-to-order jeans, whose styles or designs were done in accordance with
instructions of the customers; that since the time his shops began operating in 1992, he had received no
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notice or warning regarding his operations; that the jeans he produced were easily recognizable because
the label “LS Jeans Tailoring,” and the names of the customers were placed inside the pockets, and each
of the jeans had an “LSJT” red tab; that “LS” stood for “Latest Style;” and that the leather patch on his
jeans had two buffaloes, not two horses.
ISSUE: Whether or not Diaz is liable for trademark infringement.
HELD: No. Section 155 of R.A. No. 8293 defines the acts that constitute infringement of trademark, viz:
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.
The elements of the offense of trademark infringement under the Intellectual Property Code are,
therefore, the following:
-The trademark being infringed is registered in the Intellectual Property Office;
-The trademark is reproduced, counterfeited, copied, or colorably imitated by the infringer;
-The infringing mark is used in connection with the sale, offering for sale, or advertising of any goods,
business or services; or the infringing mark 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;
-The use or application of the infringing mark 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
-The use or application of the infringing mark is without the consent of the trademark owner or the
assignee thereof.
As can be seen, the likelihood of confusion is the gravamen of the offense of trademark infringement.
There are two tests to determine likelihood of confusion, namely: the dominancy test, and the holistic
test. The contrasting concept of these tests was explained in Societes Des Produits Nestle, S.A. v. Dy,
Jr., thus:
x x x. The dominancy test focuses on the similarity of the main, prevalent or essential features of the
competing trademarks that might cause confusion. Infringement takes place when the competing
trademark contains the essential features of another. Imitation or an effort to imitate is unnecessary. The
question is whether the use of the marks is likely to cause confusion or deceive purchasers.
The holistic test considers the entirety of the marks, including labels and packaging, in determining
confusing similarity. The focus is not only on the predominant words but also on the other features
appearing on the labels.
The holistic test is applicable here considering that the herein criminal cases also involved trademark
infringement in relation to jeans products. Accordingly, the jeans trademarks of Levi’s Philippines and
Diaz must be considered as a whole in determining the likelihood of confusion between them. The maong
pants or jeans made and sold by Levi’s Philippines, which included LEVI’S 501, were very popular in the
Philippines. The consuming public knew that the original LEVI’S 501 jeans were under a foreign brand
and quite expensive. Such jeans could be purchased only in malls or boutiques as ready-to-wear items,
and were not available in tailoring shops like those of Diaz’s as well as not acquired on a “made-to-order”
basis. Under the circumstances, the consuming public could easily discern if the jeans were original or
fake LEVI’S 501, or were manufactured by other brands of jeans.
Given the foregoing, it should be plain that there was no likelihood of confusion between the trademarks
involved. Thereby, the evidence of guilt did not satisfy the quantum of proof required for a criminal
conviction, which is proof beyond reasonable doubt. According to Section 2, Rule 133 of the Rules of
Court, proof beyond a reasonable doubt does not mean such a degree of proof as, excluding possibility
of error, produces absolute certainty. Moral certainty only is required, or that degree of proof which
produces conviction in an unprejudiced mind. Consequently, Diaz should be acquitted of the charges.
Philip Morris, Inc. vs. Fortune Tobacco Corporation G.R. No. 158589. June 27, 2006
FACTS: Petitioner Philip Morris, Inc. a corporation organized under the laws of the state of Virginia, USA,
is the registered owner of the trademark MARK VII for cigarettes. Benson and Hedges (Canada), Inc., a
subsidiary of Philip Morris, Inc., is the registered owner of the trademark MARK TEN for cigarettes.
Another subsidiary of Philip Morris, Inc. the Swiss Company Fabriques de Tabac Reunies, S.A., is the
assignee of the trademark LARK. All are evidenced by Trademark Certificate of Registration. On the other
hand, Fortune Tobacco Corporation, a company organized in the Philippines, manufactures and sells
cigarettes using the trademark MARK.
Philip Morris, Inc. filed a complaint for trademark infringement and damages against Fortune Tobacco
Corporation. The complaint was dismissed by the RTC Pasig City in its decision dated January 21, 2003.
Maintaining to have the standing to sue in the local forum and that respondent has committed trademark
infringement, petitioners went on appeal to the CA but CA affirmed the trial court’s decision. The CA
found that MARK VII, MARK TEN and LARK do not qualify as well-known marks entitled to protection
even without the benefit of actual use in the local market and that the similarities in the trademarks in
question are insufficient as to cause deception or confusion tantamount to infringement.
With the motion for reconsideration denied in the CA, the petitioners filed a petition for review
with the Supreme Court.
ISSUES:
1.) WON petitioners, as Philippine registrants of trademarks, are entitled to enforce trademark rights in
the country.
2.) WON respondent has committed trademark infringement against petitioners by its use of the mark
MARK for its cigarettes, hence liable for damages.
HELD: 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 in by others. Inarguably, trademark deserves protection. It is for
this reason that the petitioner’s recourse for their entitlement to enforce trademark rights in this country
and also the right to sue for trademark infringement in Philippine courts and be accorded protection
against unauthorized use of the Philippine-registered trademarks is understandable. Their standing to
sue in Philippine courts had been recognized by the CA but such right to sue does not necessarily mean
protection of their trademarks in the absence of actual use in the Philippines.
But the petitioners are still foreign corporations. They may not sue on that basis alone of their respective
certificates of registration of trademarks unless their country grants similar rights and privileges to Filipino
citizens pursuant to Section 21-A of R.A. No. 166. This reciprocity requirement is a condition to file a suit
by a foreign corporation as ruled in Leviton Industries v. Salvador.
The respective home country of the petitioner, namely, the United States, Switzerland and Canada,
together with the Philippines are members of the Paris Union. Philippines adherence to the Paris
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Convention obligates the country to honor and enforce its provisions, however, this does not automatically
entitle petitioners to the protection of their trademark in our country without actual use of the marks in
local commerce and trade because any protection accorded has to be made subject to the limitations of
Philippine laws.
Significantly, registration in the Philippines of trademarks does not convey an absolute right or exclusive
ownership thereof. In Shangri-la v. Development Group of Companies, the Court emphasized that
trademark is a creation of use and, therefore, actual use is a prerequisite to exclusive ownership;
registration is only an administrative confirmation of the existence of the right of ownership of the mark,
but does not perfect such right.
With the foregoing perspective, it may be stated right off that the registration of a trademark
unaccompanied by actual use in the country accords the registrants only the standing to sue for
infringements in Philippine Courts but entitlement to protection of such trademark in the country is entirely
different matter.
On the main issue of infringement, the court, relying on the holistic test ruled against the likelihood of
confusion resulting in infringement arising from the respondent’s use of the trademark MARK for its
particular cigarette product. The striking dissimilarities are significant enough to warn any purchaser that
one is different from the other. This is upon considering the entire marking as a whole.
For lack of convincing proof on the part of the petitioners of actual use of their registered trademark prior
to respondents use of its mark and for petitioners failure to demonstrate confusing similarity between said
trademarks, the dismissal of their basic complaint of infringement and the plea for damages are affirmed.
The petition is denied. The assailed decision and resolution of the Court of Appeals are affirmed.
Del Monte vs Court of Appeals and Sunshine Sauce | Unfair Competition
FACTS: Del Monte Corporation is an American corporation which is not engaged in business in the
Philippines. Though not engaging business here, it has given authority to Philippine Packing Corporation
(Philpack) the right to manufacture, distribute and sell in the Philippines various agricultural products,
including catsup, under the Del Monte trademark and logo. In 1965, Del Monte also authorized Philpack
to register with the Patent Office the Del Monte catsup bottle configuration. Philpack was issued a
certificate of trademark registration under the Supplemental Register.
Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing was using Del Monte bottles
in selling its products and that Sunshine Sauce’s logo is similar to that of Del Monte. The RTC of Makati
as well as the Court of Appeals ruled that there was no infringement because the trademarks used
between the two are different in designs and that the use of Del Monte bottles by Sunshine Sauce does
not constitute unfair competition because as ruled in Shell Company vs Insular Petroleum: “selling oil in
containers of another with markings erased, without intent to deceive, was not unfair competition.”
ISSUE: Whether or not there is unfair competition and infringement in the case at bar.
HELD: Yes. The Supreme Court recognizes that there really are distinctions between the designs of the
logos or trademarks of Del Monte and Sunshine Sauce. However, it has been that side by side
comparison is not the final test of similarity. Sunshine Sauce’s logo is a colorable imitation of Del
Monte’s trademark. The word “catsup” in both bottles is printed in white and the style of the print/letter is
the same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a
tomato. The person who infringes a trade mark does not normally copy out but only makes colorable
changes, employing enough points of similarity to confuse the public with enough points of differences to
confuse the courts. What is undeniable is the fact that when a manufacturer prepares to package his
product, he has before him a boundless choice of words, phrases, colors and symbols sufficient to
distinguish his product from the others. When as in this case, Sunshine chose, without a reasonable
explanation, to use the same colors and letters as those used by Del Monte though the field of its selection
was so broad, the inevitable conclusion is that it was done deliberately to deceive.
The Supreme Court also ruled that Del Monte does not have the exclusive right to use Del Monte bottles
in the Philippines because Philpack’s patent was only registered under the Supplemental Register and
not with the Principal Register. Under the law, registration under the Supplemental Register is not a basis
for a case of infringement because unlike registration under the Principal Register, it does not grant
exclusive use of the patent. However, the bottles of Del Monte do say in embossed letters: “Del Monte
Corporation, Not to be Refilled”. And yet Sunshine Sauce refilled these bottles with its catsup products.
This clearly shows the Sunshine Sauce’s bad faith and its intention to capitalize on the Del Monte’s
reputation and goodwill and pass off its own product as that of Del Monte.
SEHWANI INCORPORATED vs. IN-N-OUT BURGER, INC.
FACTS: Respondent IN-N-OUT Burger, Inc., a foreign corporation (California, USA), and not doing
business in the Philippines, filed before the Bureau of Legal Affairs of the IPO, an administrative complaint
against petitioners Sehwani, Inc. and Benita’s Frites, Inc. for violation of intellectual property rights,
attorney’s fees and damages with prayer for the issuance of a restraining order or writ of preliminary
injunction.
Respondent, alleges that it is the owner of the tradename “IN-N-OUT” and trademarks “IN-N-OUT,” “IN-
N-OUT Burger & Arrow Design” and “IN-N-OUT Burger Logo” which are used in its business since 1948
up to the present. These tradename and trademarks were registered in the United States as well as in
other parts of the world. Petitioner Sehwani allegedly had obtained a trademark registration for the mark
“IN N OUT” (with the inside letter O formed like a star) without its authority.
In their answer with counterclaim, petitioners alleged that respondent lack the legal capacity to sue
because it was not doing business in the Philippines and that it has no cause of action because its mark
is not registered or used in the Philippines. Petitioner Sehwani, Inc. also claimed that as the registered
owner of the "IN-N-OUT" mark, it enjoys the presumption that the same was validly acquired and that it
has the exclusive right to use the mark. Moreover, petitioners argued that other than the bare allegation
of fraud in the registration of the mark, respondent failed to show the existence of any of the grounds for
cancellation thereof under Section 151 of Republic Act (R.A.) No. 8293, otherwise known as The
Intellectual Property Code of the Philippines.
The Bureau ruled in favor of In-N-Out and cancelled the registration of Shwani.
ISSUE/S:
1. Whether or not the Respondent has the legal capacity to sue for the protection of its trademarks albeit
it is not doing business in the Philippines
2. Whether or not a ground exists for the cancellation of the Petitioners’ registration
Burger trademark for the name of their restaurant, but they also used identical or confusingly similar mark
for their hamburger wrappers and French-fries receptacles, thereby effectively misrepresenting the
source of the goods and services.
Fredco Manufacturing Corporation V. President And Fellows Of Harvard College (G.R. No. 185917)
FACTS: Petitioner Fredco Manufacturing filed a petition to cancel the registration of respondent’s mark
‘Harvard Veritas Shield Symbol’ used in products such as bags and t-shirts. Fredco alleges that the mark
‘Harvard’ was first used and registered by New York Garments, a domestic corporation and its
predecessor-in-interest, used in its clothing articles. Respondent Harvard University on the other hand,
alleges that it is the lawful owner of the name and mark in numerous countries worldwide including in the
Philippines which was used in commerce as early as 1872. Respondent further contend that it never
authorized any person to use its name or mark in connection with any goods in the Philippines. The IPO
Bureau of Legal Affairs cancelled respondent’s registration of the mark but only over the goods which are
confusingly similar with that of petitioner. IPO reversed the decision. CA affirmed.
ISSUE: WON respondent’s trade name is infringed.
HELD: YES. Fredco’s use of the mark “Harvard,” coupled with its claimed origin in Cambridge,
Massachusetts, obviously suggests a false connection with Harvard University. On this ground alone,
Fredco’s registration of the mark “Harvard” should have been disallowed. Indisputably, Fredco does not
have any affiliation or connection with Harvard University, or even with Cambridge, Massachusetts.
Fredco or its predecessor New York Garments was not established in 1936, or in the U.S.A. as indicated
by Fredco in its oblong logo.
Under Philippine law, a trade name of a national of a State that is a party to the Paris Convention, whether
or not the trade name forms part of a trademark, is protected “without the obligation of filing or
registration.” “Harvard” is the trade name of the world famous Harvard University, and it is also a
trademark of Harvard University. Under Article 8 of the Paris Convention, as well as Section 37 of R.A.
No. 166, Harvard University is entitled to protection in the Philippines of its trade name “Harvard” even
without registration of such trade name in the Philippines. This means that no educational entity in the
Philippines can use the trade name “Harvard” without the consent of Harvard University. Likewise, no
entity in the Philippines can claim, expressly or impliedly through the use of the name and mark “Harvard,”
that its products or services are authorized, approved, or licensed by, or sourced from, Harvard University
without the latter’s consent.

HELD:
1. Yes. Section 160 RA No. 8293 provides for the right of foreign corporations to sue in trademark or
service mark enforcement action, provided that it meets the requirements under Section 3 thereof, which
are a) Any convention, treaty or agreement relation to intellectual property right or the repression of unfair
competition wherein Philippines is also a party; and b) An extension therein of reciprocal rights.

Moreoever, Article 6 of The Paris Convention, which governs the protection of well-known trademarks, is
a self-executing provision and does not require legislative enactment to give it effect in the member
country. The essential requirement therein is that the trademark must be well-known in the country where
protection is sought. In this case, Director Beltran-Abelardo found that In-n-out Burger and Arrow Design
is an internationally well known mark as evidenced by its trademark registrations around the world and
its comprehensive advertisements therein.

2. Yes. Section 151(b) of RA 8293 provides that a petition to cancel a registration of a mark 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 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
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 goods or services on or in connection
with which the mark is used. The evidence showed that not only did the petitioners use the IN-N-OUT
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