CHUA CHE vs.
PHILIPPINE PATENT OFFICE opposition to the allowance of Chua Che’s
G.R. No. L-18337 | January 30, 1965 | Paredes, J.
Petitioner: Chua Che
Respondents: Philippine Patent Office, SyTuo
Summary:
Chua Che wanted to register the trademark X-7 for use on
his laundry soap products. SyTuo opposed the registration
because he alleged that he used such trademark first, has
already registered it and already spent heavily on
advertising the mark. SyTuo uses it on perfumes, lipstick,
and nail polish, and is now planning to produce granulated
soap using the same mark. Chua Che argued that his
registration should be granted because laundry soap is
different from perfumes, lipstick, and nail polish. The
Director of Patents ruled for SyTuo because even though
the products are specifically different, they nevertheless
have common purchasers, hence, confusion might arise.
The Supreme Court agreed with the Driector of Patents,
and said that while it is no longer necessary to establish
that the goods of the parties possess the same descriptive
properties, registration of a trademark should be refused
in cases where there is a likelihood of confusion, mistake,
or deception, even though the goods fall into different
categories.The products of SyTuo are common household
items now-a-days, in the same manner as laundry soap.
Registration should be denied.
Facts:
 On October 30, 1958, Chua Che filed a petition
with the Phil. Patent Office praying for the
registration of the trade name of “X-7”[wanted to
use it for a soap]. The following are the pertinent
portions of the petition:
o He is a Chinese citizen, resident of 2804
Limay St., Tondo, doing business at the
same address, and has adopted and used
the trademark “X-7”(accompanied by a
drawing in the petition, but it was not
described in the case).
o He first used the TM on June 10, 1957, in
commerce in or with the Philippines.
o He has been continuously using it in trade
for more than one year, and applied it to
the goods by directly impressing the
mark, or to packages containing the same
by placing thereon a printed label.
o The TM is classified according to Rule 82
of the Official Classification of Goods as
“CLASS 51 – SOAP”.
o He believes that he is the lawful owner of
the TM.
o That the said trademark is in actual use in
commerce not less than two months
before the application is filed.
o No other person, partnership, corporation,
or association, to the best of his
knowledge and belief, has the right to use
said trademark in the Philippines, either in
the identical form or in any such near
resemblance thereto as might be
calculated to deceive.
 An examiner of the Department of Commerce and
Industry recommended the allowance of the
application, and was approved [preliminarily] by
the Supervising TM Examiner.
 After this, the notice of allowance was published
in the Official Gazette.
 Respondent SyTuo saw such notice, and filed an
application. The following are the pertinent
portions of the opposition.
o Chua Che’s registration will violate the
rights and interests of SyTuo over his
registered trademark “X-7” covered
by Certificate of Reg. No. 5000 issued
on April 21, 1951.
o Such registration will also tend to
mislead the purchasing public and
make it convenient for unscrupulous
dealers to pass off the goods of Chua Che
as that of SyTuo’s.
o Such registration will be in violation of
Sec. 4(d) of R.A. No. 166 because it is
confusingly similar to the trademark
X-7 being used by SyTuo. SyTuo has not
abandoned the TM yet.
 SyTuo, doing business as the Western Cosmetic
Laboratory, relies on the following grounds:
o He has prior use of the TM “X-7”. He has
been using it extensively and continuously
since July 31, 1952, while Chua Che
allegedly used his TM only since June 10,
1957.
o The X-7 mark, invented by SyTuo, is
distinctive, and not merely an ordinary,
common, and weak mark.
o SyTuo and Chua Che use the TM X-7 for
allied and closely related products.
o SyTuo already spent a huge amount for
advertising it, and has spent a big amount
in expanding his business for the
manufacture of toilet soap and crystal
laundry soap with his already popular X-7
brand (CAUTION: X-7 is not yet being
used on soap at this point. You will see
later that it is being used on other
articles. He only plans to use it on soap
as well because X-7 is already popular).
o Anyone is likely to be misled as to the
source of origin by the close
resemblance or identity of both
marks.
 Chua Che countered, and claimed that the
grounds of SyTuo are not correct, since although
it is admitted that "X-7" is registered in the name
of oppositor, said trademark is not being used on
soap, but purely toilet articles.
 The Director of Patents ruled in favor of SyTuo
and rejected the application of Chua Che. The
following are the pertinent portions of his
decision:
o There is not question that SyTuo first
used the trademark on July 13, 1953,
compared to Chua Che’s first use on June
10, 1957. The only question in this case is
WON purchasers of X-7 perfume,
lipstick, and nail polish would likely
upon seeing X-7 laundry soap, attribute
common origin to the products/assume
that there is some kind of trade
connection between them. (Note: So
ngayonlang to pinakita. SyTuo uses X-7
for perfumes, lipstick, and nail polish,
while Chua Che uses it for Laundry Soap).
o SyTuo spent heavily on advertisement for
the promotion of the mark. In these
advertisements, SyTuo enjoys a valuable
goodwill in the TM.
 o The products of the parties, while
specifically different, are products
intended for use in the home and usually
have common purchasers.
o Furthermore, the use of X-7 for laundry
soap is but a natural expansion of
business of SyTuo.
 In fact, SyTuo, in 1956, prior to
the alleged date of first use by
Chua Che, had made steps in
expanding the use of this
trademark to granulated soap.
 Under these circumstances, it is
concluded that the average
purchasers are likely to associate
X-7 laundry soap with X-7
perfume, lipstick and nail polish
or to think that the products have
common origin of sponsorship.
 Hence, this petition.
Issue/Held
 Whether or not the use of X-7 by Chua Che would
likely mislead purchasers – YES.
Dispositive Portion:
PREMISES CONSIDERED, the decision sought to be
reviewed should be, as it is hereby affirmed in all
respects, with costs against appellant CHUA CHE in both
instances.So Ordered.
Ratio
 Preliminary: The finding of the Director of Patents
to the effect that opposer-appellee SyTuo had
priority of use and adoption of the trademark "X-
7", is for all intents and purposes, one of fact.
This being the case, such finding becomes
conclusive to this Court
 Note that in this case, SyTuo has not yet used the
trademark X-7 on soap. The circumstance of non-
actual use of the mark "X-7" on granulated soap
by SyTuo,does not detract from the fact that
he has already a right to such a trademark
and should, therefore, be protected.
 The observation of the Director of Patents to the
effect that "the average purchasers are likely to
associate X-7 laundry soap with X-7 perfume,
lipstick and nail polish or to think that the
products have common origin or sponsorship," is
indeed well taken.
o The contention of Chua Che that the
product upon which X-7 will be used
(laundry soap) is different from that of
SyTuo’s does not hold water.
 IMPT: MAIN DOCTRINE - While it is no longer
necessary to establish that the goods of the
parties possess the same descriptive properties,
as previously required under the Trade Mark Act
of 1905, registration of a trademark should
be refused in cases where there is a
likelihood of confusion, mistake, or
deception, even though the goods fall into
different categories.
o The products of SyTuo are common
household items now-a-days, in the same
manner as laundry soap.
o The likelihood of purchasers to associate
these products to a common origin is not
far-fetched.
o Both from the standpoint of priority of use
and for the protection of the buying public
and, of course, appellee’s rights to the
trademark "X-7", it becomes manifest that
the registration of said trademark in favor
of Chua Che should be denied.
Sta. Ana vs. Maliwat, (1968)
Reyes, J.B.L., J.:
FACTS:
 On 21 June 1962, Florentino Maliwat filed with the
Patent Office an application for registration of the
trademark FLORMANN, which is used on shirts,
pants, jackets and shoes for ladies, men, and
children, claiming first use in commerce of the
said mark on 15 January 1962.
o The claim of first use was subsequently
amended to 6 July 1955.
 On 18 September 1962, Jose P. Sta. Ana filed an
application for the registration of the tradename
FLORMEN SHOE MANUFACTURERS which is used
in the business of manufacturing ladies' and
children's shoes. His claim of first use in
commerce of the said tradename is 8 April 1959.
 In view of the admittedly confusing similarity
between the trademark FLORMANN and the
tradename FLORMEN, the Director of Patents
declared an interference.
 Director: Gave due course to Maliwat's
application and denied that of Sta. Ana.
ISSUE + RULING:
Whether or not Maliwat was the prior adopter and user of
the mark? - YES
 An application for registration is not bound by the
date of first use as stated by him in his
application, but is entitled to carry back said
stated date of first use to a prior date by proper
evidence; but in order to show an earlier date of
use, he is then under a heavy burden, and his
proof must be clear and convincing
 In the case at bar, the proof of date of first use
(1953), earlier than that alleged in Maliwat's
application (1962), can be no less than clear and
convincing because the fact was stipulated and no
proof was needed.
o There was an agreement in the
stipulation of facts by the parties that
Maliwat has been engaged in the
manufacture and sale of men's wear,
shirts, polo shirts, and pants, since 1953,
using FLORMANN as its trademark. That
Mr. Florentino Maliwat began using the
trademark FLORMANN on shoes on
January 1962 and the firm name
FLORMANN SHOES under which these
shoes with the trademark FLORMANN
were manufactured and sold was first
used on January 1962, having also been
registered with the Bureau of Commerce
on January 1962
 Maliwat would confine Sta. Ana’s use of the mark
FLORMANN to tailoring and haberdashery only,
but not on shoes, on the ground that he had used
the name FLORMEN on shoes since 1959, while
the Sta. Ana used his mark on shoes only in 1962.
  Modern law recognizes that the protection to
which the owner of a trademark is entitled is not
limited to guarding his goods or business from
actual market competition with identical or similar
products of the parties, but extends to all cases in
which the use by a junior appropriator of a trade-
mark or tradename is likely to lead to a confusion
of source, as where prospective purchasers would
be misled 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; or when it forestalls the normal
potential expansion of his business
o Director of Patents: I believe that it is
now the common practice among local
tailors and haberdashers to branch out
into articles of manufacture which have,
one way or another, some direct
relationship with or appurtenance to
garments or attire to complete one's
wardrobe such as belts, shoes,
handkerchiefs, and the like, xxx. It goes
without saying that shoes on one hand
and shirts, pants and jackets on the
other, have the same descriptive
properties for purposes of our Trademark
Law.
 Mere dissimilarity of goods should not preclude
relief where the junior user's goods are not too
different or remote from any that the owner
would be likely to make or sell; and in the present
case, wearing apparel is not so far removed from
shoes as to preclude relief, any more than the
pancake flour is from syrup or sugar cream or
baking powder from baking soda or cosmetics and
toilet goods from ladies' wearing apparel and
costume jewelry
 Republic Act No. 166, as amended, provides:
SEC. 4. x x x. The owner of a trademark, tradename or service mark used to distinguish his goods, business or services from the goods,
business or services of others shall have the right to register the same on the principal register, unless it:
(d) Consists of or comprises a mark or tradename which resembles a mark or tradename registered in the Philippines or a mark or
tradename previously used in the Philippines by another and not abandoned, as to be likely, when applied to or used in connection
with the goods, business or services of the applicant, to cause confusion or mistake or to deceive purchasers;
 The provision does not require that the articles of
manufacture of the previous user and the 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
 Therefore, whether or not shirts and shoes have
the same descriptive properties, or whether or not
it is the prevailing practice or the tendency of
tailors and haberdashers to expand their business
into shoemaking, are not controlling.
 The meat of the matter is the likelihood of
confusion, mistake or deception upon purchasers
of the goods of the junior user of the mark and
the goods manufactured by the previous user.
DISPOSITION: Director of Patent’s decision AFFIRMED.
PHILIPPINE REFINING CO., INC. vs. NG SAM G.R.
No. L-26676. July 30, 1982
Facts:
Private respondent filed with the Philippine Patent Office
an application for registration of the trademark "CAMIA"
for his product, ham, which falls under Class 47 (Foods
and Ingredients of Food).
Petitioner opposed the application claiming that it first
used said trademark on his products: lard, butter, cooking
oil, abrasive detergents, polishing materials and soap of all
kinds, some of which are likewise classified under Class
47.
The trademark "CAMIA" was first used in the Philippines
by petitioner on its products in 1922 and registered the
same in 1949
On November 25, 1960, respondent Ng Sam, a Chinese
citizen residing in Iloilo City, filed an application with the
Philippine Patent Office for registration of the identical
trademark "CAMIA" for his product, ham, which likewise
falls under Class 47. Alleged date of first use of the
trademark by respondent was on February 10, 1959.
Director of Patents rendered a decision allowing
registration of the trademark "CAMIA" in favor of Ng Sam
finding that `the goods of the parties are not of a
character which purchasers would be likely to attribute to
a common origin.
Issue/Answer:
WON the product of respondent Ng Sam, which is ham,
and those of petitioner consisting of lard, butter, cooking
oil and soap are so related that the use of the same
trademark "CAMIA'' on said goods would likely result in
confusion as to their source Atty. Eric Recalde or origin./
negative
Ratio Decidendi:
The right to a trademark is a limited one, in the sense that
others may use the same mark on unrelated goods.
The mere fact that one person has adopted and used a
trademark on his goods does not prevent the adoption
and use of the same trademark by others on articles of a
different description.
Where no confusion is likely to arise, as in this case,
registration of a similar or even identical mark may be
allowed.
The term "CAMIA" is descriptive of a whole genus of
garden plants with fragrant white flowers.
A trademark is designed to identify the user. But it should
be so distinctive and sufficiently original as to enable
those who come into contact with it to recognize instantly
the identity of the user. "It must be affirmative and
definite, significant and distinctive, capable to indicate
origin.

If a mark is so commonplace that it cannot be readily

distinguished from others, then it is apparent that it
cannot identify a particular business; and he who first
adopted it cannot be injured by any subsequent
appropriation or imitation by others, and the public will
not be deceived."]

While ham and some of the products of petitioner are

classified under Class 47 (Foods and Ingredients of Food),
this alone cannot serve as the decisive factor in the
resolution of whether or not they are related goods.

Emphasis should be on the similarity of the products

involved and not on the arbitrary classification or general
description of their properties or characteristics.

Opposer's products are ordinary day-to-day household

items whereas ham is not necessarily so. Thus, the goods
of the parties are not of a character which purchasers
would be likely to attribute to a common origin."

The business of the parties are noncompetitive and their

products so unrelated that the use of identical trademarks
is not likely to give rise to confusion, much less cause
damage to petitioner.

provision:
Section 4(d) of Trademark law "a mark which consists of
or comprises a mark or trade name which so resembles a
mark or trade name registered in the Philippines or a mark
or trade name previously used in the Philippines by
another and not abandoned, as to be likely, when applied
to or used in connection with the goods, business services
of the applicant, to cause confusion or mistake or to
deceive purchasers."