THE EAST PACIFIC MERCHANDISING CORPORATION vs. THE
It follows that the Director of Patents
DIRECTOR OF PATENTS and LUIS P. PELLICER
G.R. No. L-14377, December 29, 1960
FACTS: Marcelo T. Pua filed with the Office of the Director of
Commerce an application for the registration under Act 666 of the
composite trademark consisting of the word "Verbena" and
representation of a Spanish lady, with specific evident set of designs.
Respondent Luis P. Pellicer filed an opposition to the application on
the following grounds: (a) that the picture of a lady is common in
trade and the name "Verbena" is the generic name of a flower and,
therefore, neither may be exclusively appropriated or registered by
the applicant.
The Director of Patents favored the Pellicer, alleging that the term
"Verbena" is "generically descriptive or misdescriptive of the
products, namely lotion, face powder, hair pomade and brillantine,
while the representation of a Spanish lady is not only deceptively
misdescriptive of the source or origin, but also common in trade,"
and, resulting to the denial of East Pacific’s registration.
ISSUE: Whether or not the term “Verbena” is registerable.
HELD: The term "Verbena" is descriptive of a whole genus of garden
plants with fragrant flowers used in connection with cosmetic
products. Regardless of other connotations of the word, the use of
the term cannot be denied to other traders using such extract or oils
in their own products.
correctly held the term to be non-registerable in the sense that
petitioner company would be entitled to appropriate its use to the
exclusion of others legitimately entitled, such as oppositor Pellicer.
In a leading case, Caswell vs. Davis, 17 Am. Rep. 233, 241, 242, the
court, on a similar issue, said:
There is no principle more firmly settled in the law of trademarks,
than that words or phrases which have been in common use and
which indicate the character, kind, quality and composition of the
thing, may not be appropriated by any one to his exclusive use. In
the exclusive use of them the law will not protect. . . .
The claim that the petitioner is entitled to registration because the
term "Verbena" has already acquired a secondary significance is
without merit. The provisions of law (Rep. Act No. 166, sec. 4)
require that the trademark applied for must have "become
distinctive of the applicant's goods", and that a prima facie proof of
this fact exists when the applicant has been in the "substantially
exclusive and continuous use thereof as a mark or tradename, for
five years next preceding the date of the filing of the application for
its registration".
SOCIETE DES PRODUITS NESTLE, S.A. v CA and CFC CORP

FACTS:

CFC corporation filed with Bureau of Patents a registration of the

Trademark “FLAVOR MASTER” for instant coffee. Petitioner Societe
Des Produits Nestle filed an unverified Notice of Opposition,
claiming that the trademark of respondent’s product is confusingly
similar to its Trademarks for coffee: “MASTER ROAST AND MASTER
BLEND”. Nestle Philippines also filed notice of opposition against the
registration Petitioners argued that it would cause confusion in
trade, or deceive purchasers and would falsely suggest to the public
a connection between the two marks.

ISSUE: Is the TM, FLAVOR MASTER, a colorable imitation of the TMs

MASTER ROAST and MASTER BLEND?

RULING:

YES. The TM sought to be registered is likely to cause confusion.

A trademark has been generally defined as any word, name, symbol,

or device adopted and used by a merchant to identify his goods and
distinguish them from those sold by others. Such is entitled to
protection
Under the Philippine Trademark Law, the owner of a TM cannot
register if it resembles a mark or trade-name registered in the
Philippines or a mark previously used and not abandoned WHICH IS
LIKELY TO CAUSE CONFUSION OR MISTAKE OR TO DECEIVE
PURCHASERS.
· Generic terms are those which constitute the common
descriptive name of an article or substance and are not legally
protectable.
· The term MASTER is a suggestive which require imagination,
thought, and perception to reach a conclusion as to the nature of
the goods.

The law prescribes a stringent standard proscribes registration if it

causes confusing similarity, and if it is likely to cause confusion or
The term MASTER has acquired a certain connotation to mean the
mistake or deceive purchasers. Colorable imitation denotes a close
coffee products MASTER ROAST and Master Blend produced by
imitation as to be calculated to deceive ordinary persons as to cause
NESTLE. AS SUCH the use of CFC of the term “MASTER” is likely to
him to purchase the one supposing it to be the other.
cause confusion or mistake.

In determining colorable imitation there are two tests: Dominancy

Ang Tibay vs. Teodoro
Test and Holistic Test.
Facts:

The test of dominancy focuses on the similarity of the prevalent

features of the competing trademarks; the holistic test mandates
the entirety of the marks in question must be considered in
determining confusing similarity
The Dominancy test should be applied as it relies not only on the
visual but also on the aural and connotative comparisons and overall
impressions between the two TMs.
· The word MASTER is the dominant feature which is neither a
generic nor a descriptive term. As such said term cannot be
invalidated as a trademark and therefore, may be protected.
Respondent Toribio Teodoro has continuously used "Ang Tibay,"
both as a trade-mark and as a trade-name, in the manufacture and
sale of slippers, shoes, and indoor baseballs since 1910. On
September 29, 1915, he formally registered it as trade-mark and as
trade-name on January 3, 1933.
Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for
pants and shirts on April 11, 1932, and established a factory for the
manufacture of said articles in the year 1937.
The Court of First Instance of Manila absolved the defendant (Ms.
Ang) on the grounds that the two trademarks are dissimilar and are
used on different and non-competing goods; that there had been no
exclusive use of the trade-mark by the plaintiff; and that there had
been no fraud in the use of the said trade-mark by the defendant
because the goods on which it is used are essentially different from
those of the plaintiff.
The Court of Appeals reversed said judgment, directing the Director
of Commerce to cancel the registration of the trade-mark "Ang
Tibay" in favor of petitioner, and perpetually enjoining the latter
from using said trade-mark on goods manufactured and sold by her.
Thus, this case, a petition for certiorari.
Issues:
(1) Whether or not ‘ANG TIBAY’ is a descriptive term not registrable.
(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a
secondary meaning.
(3) Whether or not there is trademark infringement and/or unfair
competition between unrelated goods.
Ruling:
(1) NO. The phrase “Ang Tibay” is an exclamation denoting
administration of strength or durability. For instance, one who tries
hard but fails to break an object exclaims, “Ang tibay!” (How
strong!”) The phrase “ang tibay” is never used adjectively to define
or describe an object. One does not say, “ang tibay sapatos” or
“sapatos ang tibay” is never used adjectively to define or describe
an object. One does not say, “ang tibay sapatos” or “sapatos ang
tibay” to mean “durable shoes,” but “matibay na sapatos” or
“sapatos na matibay.” From all of this we deduce that “Ang Tibay” is
not a descriptive term within the meaning of the Trade-Mark Law
but rather a fanciful or coined phrase which may properly and
legally be appropriated as a trademark or tradename. In this
connection we do not fail to note that when the petitioner herself
took the trouble and expense of securing the registration of these
same words as a trademark of her products she or her attorney as
well as the Director of Commerce was undoubtedly convinced that
said words (Ang Tibay) were not a descriptive term and hence could
be legally used and validly registered as a trademark.
(2) NO. In view of the conclusion we have reached upon the first
assignment of error, it is unnecessary to apply here the doctrine of
“secondary meaning” in trade-mark parlance. This doctrine is to the
effect that a word or phrase originally incapable of exclusive
appropriation with reference to an article of the market, because
geographically or otherwise descriptive, might nevertheless have
been used so long and so exclusively by one producer with reference
to his article that, in that trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article was his
product. We have said that the phrase “Ang Tibay,” being neither
geographic nor descriptive, was originally capable of exclusive
LYCEUM OF THE PHILIPPINES V. CA (G.R. NO. 101897)
appropriation as a trade-mark. But were it not so, the application of
the doctrine of secondary meaning made by the Court of Appeals Facts:
could nevertheless be fully sustained because, in any event, by
respondent’s long and exclusive use of said phrase with reference to
his products and his business, it has acquired a proprietary Petitioner Lyceum of the Philippines had commenced before the SEC
connotation. a proceeding against the Lyceum of Baguio to change its corporate
name alleging that the 2 names are substantially identical because
of the word ‘Lyceum’. SEC found for petitioner and the SC denied the
(3) YES. In the present state of development of the law on Trade- consequent appeal of Lyceum of Baguio in a resolution. Petitioner
Marks, Unfair Competition, and Unfair Trading, the test employed by then basing its ground on the resolution, wrote to all educational
the courts to determine whether noncompeting goods are or are institutions which made use of the word ‘Lyceum’ as part of their
not of the same class is confusion as to the origin of the goods of corporate name to discontinue their use. When this recourse failed,
the second user. Although two noncompeting articles may be petitioner moved before the SEC to enforce its exclusive use of the
classified under two different classes by the Patent Office because word ‘Lyceum.’ Petitioner further claimed that the word ‘Lyceum’
they are deemed not to possess the same descriptive properties, has acquired a secondary meaning in its favor. The SEC Hearing
they would, nevertheless, be held by the courts to belong to the Officer found for petitioner. Both SEC En Banc and CA ruled
same class if the simultaneous use on them of identical or closely otherwise.
similar trade-marks would be likely to cause confusion as to the
origin, or personal source, of the second user’s goods. They would
be considered as not falling under the same class only if they are so Issues:
dissimilar or so foreign to each other as to make it unlikely that the
purchaser would think the first user made the second user’s goods.
The Court of Appeals found in this case that by uninterrupted and (1) Whether or not ‘Lyceum’ is a generic word which cannot be
exclusive use since 1910 of respondent’s registered trade-mark on appropriated by petitioner to the exclusion of others.
slippers and shoes manufactured by him, it has come to indicate the
origin and ownership of said goods. It is certainly not farfetched to
surmise that the selection by petitioner of the same trade-mark for
(2) Whether or not the word ‘Lyceum’ has acquired a secondary
pants and shirts was motivated by a desire to get a free ride on the
meaning in favor of petitioner.
reputation and selling power it has acquired at the hands of the
respondent.
(3) Whether or not petitioner is infringed by respondent institutions’
corporate names.
Ruling:
(1) YES. “Lyceum” is in fact as generic in character as the word
“university.” In the name of the petitioner, “Lyceum” appears to be a
substitute for “university;” in other places, however, “Lyceum,” or
“Liceo” or “Lycee” frequently denotes a secondary school or a
college. It may be that the use of the word “Lyceum” may not yet be
as widespread as the use of “university,” but it is clear that a not
inconsiderable number of educational institutions have adopted
“Lyceum” or “Liceo” as part of their corporate names. Since
“Lyceum” or “Liceo” denotes a school or institution of learning, it is
not unnatural to use this word to designate an entity which is
organized and operating as an educational institution.
(2) NO. Under the doctrine of secondary meaning, a word or phrase
originally incapable of exclusive appropriation with reference to an
article in the market, because geographical or otherwise descriptive
might nevertheless have been used so long and so exclusively by
one producer with reference to this article that, in that trade and to
that group of the purchasing public, the word or phrase has come to
mean that the article was his produce. With the foregoing as a
yardstick, [we] believe the appellant failed to satisfy the
aforementioned requisites. While the appellant may have proved
that it had been using the word ‘Lyceum’ for a long period of time,
this fact alone did not amount to mean that the said word had
acquired secondary meaning in its favor because the appellant failed
to prove that it had been using the same word all by itself to the
exclusion of others. More so, there was no evidence presented to
prove that confusion will surely arise if the same word were to be
used by other educational institutions.
(3) NO. We do not consider that the corporate names of private
respondent institutions are “identical with, or deceptively or
confusingly similar” to that of the petitioner institution. True
enough, the corporate names of private respondent entities all carry
the word “Lyceum” but confusion and deception are effectively
precluded by the appending of geographic names to the word
“Lyceum.” Thus, we do not believe that the “Lyceum of Aparri” can
be mistaken by the general public for the Lyceum of the Philippines,
or that the “Lyceum of Camalaniugan” would be confused with the
Lyceum of the Philippines. We conclude and so hold that petitioner
institution is not entitled to a legally enforceable exclusive right to
use the word “Lyceum” in its corporate name and that other
institutions may use “Lyceum” as part of their corporate names.
De La Salle Montessori International of Malolos Inc. vs. De La
Salle Brothers Inc.
Petitioner De La Salle Montessori International of Malolos, Inc. filed
this petition for review on certiorari[1] under Rule 45 of the Rules of
Court to challenge the Decision[2] of the Court of Appeals (CA)
dated September 27, 2012 in CA-G.R. SP No. 116439 and its
Resolution[3] dated January 21, 2013 which denied petitioner's
motion for reconsideration. The CA affirmed the Decision[4] of the
Securities and Exchange Commission (SEC) En Banc dated
September 30, 2010, which in turn affirmed the Order[5] of the. SEC
Office of the General Counsel (OGC) dated May 12, 2010 directing
petitioner to change or modify its corporate name.
Petitioner reserved with the SEC its corporate name De La Salle
Montessori International Malolos, Inc. from June 4 to August 3,
2007,[6] after which the SEC indorsed petitioner's articles of
incorporation and by-laws to the Department of Education (DepEd)
for comments and recommendation.[7] The DepEd returned the
indorsement without objections.[8] Consequently, the SEC issued a
certificate of incorporation to petitioner.[9]
Afterwards, DepEd Region III, City of San Fernando, Pampanga
granted petitioner government recognition for its pre-elementary
and elementary courses on June 30, 2008,[10] and for its secondary
courses on February 15, 2010.[11]
On January 29, 2010, respondents De La Salle Brothers, Inc., De La
Salle University, Inc., La Salle Academy, Inc., De La Salle-Santiago
Zobel School, Inc. (formerly De La Salle-South, Inc.), and De La Salle
Canlubang, Inc. (formerly De La Salle University-Canlubang, Inc.)
filed a petition with the SEC seeking to compel petitioner to change
its corporate name. Respondents claim that petitioner's corporate
name is misleading or confusingly similar to that which respondents
have acquired a prior right to use, and that respondents' consent to
use such name was not obtained. According to respondents,
petitioner's use of the dominant phrases "La Salle" and "De La Salle"
gives an erroneous impression that De La Salle Montessori
International of Malolos, Inc. is part of the "La Salle" group, which
violates Section 18 of the Corporation Code of the Philippines.
Moreover, being the prior registrant, respondents have acquired the
use of said phrases as part of their corporate names and have
freedom from infringement of the same.[12]
On May 12, 2010, the SEC OGC issued an Order[13] directing
petitioner to change or modify its corporate name. It held, among
others, that respondents have acquired the right to the exclusive use
of the name "La Salle" with freedom from infringement by priority
of adoption, as they have all been incorporated using the name
ahead of petitioner. Furthermore, the name "La Salle" is not generic
in that it does not particularly refer to the basic or inherent nature
of the services provided by respondents. Neither is it descriptive in
the sense that it does not forthwith and clearly convey an
immediate idea of what respondents' services are. In fact, it merely
gives a hint, and requires imagination, thought and perception to
reach a conclusion as to the nature of such services. Hence, the SEC
OGC concluded that respondents' use of the phrase "De La Salle" or
"La Salle" is arbitrary, fanciful, whimsical and distinctive, and thus
legally protectable. As regards petitioner's argument that its use of
the name does not result to confusion, the SEC OGC held otherwise,
noting that confusion is probably or likely to occur considering not
only the similarity in the parties' names but also the business or
industry they are engaged in, which is providing courses of study in
pre-elementary, elementary and secondary education.[14] The SEC
OGC disagreed with petitioner's argument that the case of Lyceum
of the Philippines, Inc. v. Court of Appeals[15] (Lyceum of the
Philippines) applies since the word "lyceum" is clearly descriptive of
the very being and defining purpose of an educational corporation,
unlike the term "De La Salle" or "La Salle."[16] Hence, the Court held
in that case that the Lyceum of the Philippines, Inc. cannot claim
exclusive use of the name "lyceum."
Petitioner filed an appeal before the SEC En Banc, which rendered a
Decision[17] on September 30, 2010 affirming the Order of the SEC
OGC. It held, among others, that the Lyceum of the Philippines case
does not apply since the word "lyceum" is a generic word that
pertains to a category of educational institutions and is widely used
around the world. Further, the Lyceum of the Philippines failed to
prove that "lyceum" acquired secondary meaning capable of
exclusive appropriation. Petitioner also failed to establish that the
term "De La Salle" is generic for the principle enunciated in Lyceum
of the Philippines to apply.[18]
Petitioner consequently filed a petition for review with the CA. On
September 27, 2012, the CA rendered its Decision[19] affirming the
Order of the SEC OGC and the Decision of the SEC En Banc in toto.
Hence, this petition, which raises the lone issue of "[w]hether or not
the [CA] acted with grave abuse of discretion amounting to lack or in
excess of jurisdiction when it erred in not applying the doctrine laid
down in the case of [Lyceum of the Philippines], that LYCEUM is not
attended with exclusivity."[20]
The Court cannot at the outset fail to note the erroneous wording of
the issue. Petitioner alleged grave abuse of discretion while also
attributing error of judgment on the part of the CA in not applying a
certain doctrine. Certainly, these grounds do not coincide in the
same remedy. A petition for review on certiorari under Rule 45 of
the Rules of Court is a separate remedy from a petition for certiorari
under Rule 65. A petition for review on certiorari under Rule 45
brings up for review errors of judgment, while a petition for
certiorari under Rule 65 covers errors of jurisdiction or grave abuse
of discretion amounting to excess or lack of jurisdiction. Grave abuse
of discretion is not an allowable ground under Rule 45.[21]
Nonetheless, as the petition argues on the basis of errors of
judgment allegedly committed by the CA, the Court will excuse the
error in terminology.
The main thrust of the petition is that the CA erred in not applying
the ruling in the Lyceum of the Philippines case which petitioner
argues have "the same facts and events"[22] as in this case.
We DENY the petition and uphold the Decision of the CA.
As early as Western Equipment and Supply Co. v. Reyes,[23] the
Court declared that a corporation's right to use its corporate and
trade name is a property right, a right in rem, which it may assert
and protect against the world in the same manner as it may protect
its tangible property, real or personal, against trespass or
conversion.[24] It is regarded, to a certain extent, as a property right
and one which cannot be impaired or defeated by subsequent
appropriation by another corporation in the same field.[25]
Furthermore, in Philips Export B.V. v. Court of Appeals,[26] we held:
A name is peculiarly important as necessary to the very existence of
a corporation x x x. Its name is one of its attributes, an element of its
existence, and essential to its identity x x x. The general rule as to
corporations is that each corporation must have a name by which it
is to sue and be sued and do all legal acts. The name of a
corporation in this respect designates the corporation in the same
manner as the name of an individual designates the person x x x;
and the right to use its corporate name is as much a part of the
corporate franchise as any other privilege granted x x x.
A corporation acquires its name by choice and need not select a
name identical with or similar to one already appropriated by a
senior corporation while an individual's name is thrust upon him x x
x. A corporation can no more use a corporate name in violation of
the rights of others than an individual can use his nan1e legally
acquired so as to mislead the public and injure another x x x.[27]
Recognizing the intrinsic importance of corporate names, our
Corporation Code established a restrictive rule insofar as corporate
names are concerned.[28] Thus, Section 18 thereof provides:
Sec. 18. Corporate name. - No corporate name may be allowed by
the Securities and Exchange Commission if the proposed name is
identical or deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by law or is
patently deceptive, confusing or contrary to existing laws. When a
change in the corporate name is approved, the Commission shall
issue an amended certificate of incorporation under the amended
name.
The policy underlying the prohibition in Section 18 against the
registration of a corporate name which is "identical or deceptively or
confusingly similar" to that of any existing corporation or which is
"patently deceptive" or "patently confusing" or "contrary to existing
laws," is the avoidance of fraud upon the public which would have
occasion to deal with the entity concerned, the evasion of legal
obligations and duties, and the reduction of difficulties of
administration and supervision over corporations.[29]
Indeed, parties organizing a corporation must choose a name at
their peril; and the use of a name similar to one adopted by another
corporation, whether a business or a non-profit organization, if
misleading or likely to injure in the exercise of its corporate
functions, regardless of intent, may be prevented by the corporation
having a prior right, by a suit for injunction against the new
corporation to prevent the use of the name.[30]
In Philips Export B.V. v. Court of Appeals,[31] the Court held that to
fall within the prohibition of Section 18, two requisites must be
proven, to wit: (1) that the complainant corporation acquired a prior
right over the use of such corporate name; and (2) the proposed
name is either: (a) identical, or (b) deceptively or confusingly similar
to that of any existing corporation or to any other name already
protected by law; or (c) patently deceptive, confusing or contrary to
existing law.[32]
With respect to the first requisite, the Court has held that the right
to the exclusive use of a corporate name with freedom from
infringement by similarity is determined by priority of adoption.[33]
In this case, respondents' corporate names were registered on the
following dates: (1) De La Salle Brothers, Inc. on October 9, 1961
under SEC Registration No. 19569; (2) De La Salle University, Inc. on
December 19, 1975 under SEC Registration No. 65138; (3) La Salle
Academy, Inc. on January 26, 1960 under SEC Registration No.
16293; (4) De La SalleSantiago Zobel School, Inc. on October 7, 1976
under SEC Registration No. 69997; and (5) De La Salle Canlubang,
Inc. on August 5, 1998 under SEC Registration No. Al998-01021.[34]
On the other hand, petitioner was issued a Certificate of Registration
only on July 5, 2007 under Company Registration No. CN200710647.
[35] It being clear that respondents are the prior registrants, they
certainly have acquired the right to use the words "De La Salle" or
"La Salle" as part of their corporate names.
The second requisite is also satisfied since there is a confusing
similarity between petitioner's and respondents' corporate names.
While these corporate names are not identical, it is evident that the
phrase "De La Salle" is the dominant phrase used.
Petitioner asserts that it has the right to use the phrase "De La Salle"
in its corporate name as respondents did not obtain the right to its
exclusive use, nor did the words acquire secondary meaning. It
endeavoured to demonstrate that no confusion will arise from its
use of the said phrase by stating that its complete name, "De La
Salle Montessori International of Malolos, Inc.," contains four other
distinctive words that are not found in respondents' corporate
names. Moreover, it obtained the words "De La Salle" from the
French word meaning "classroom," while respondents obtained it
from the French priest named Saint Jean Baptiste de La Salle.
Petitioner also compared its logo to that of respondent De La Salle
University and argued that they are different. Further, petitioner
argued that it does not charge as much fees as respondents, that its
clients knew that it is not part of respondents' schools, and that it
never misrepresented nor claimed to be an affiliate of respondents.
Additionally, it has gained goodwill and a name worthy of trust in its
own right.[36]
We are not persuaded.
In determining the existence of confusing similarity in corporate
names, the test is whether the similarity is such as to mislead a
person using ordinary care and discrimination. In so doing, the Court
must look to the record as well as the names themselves.[37]
Petitioner's assertion that the words "Montessori International of
Malolos, Inc." are four distinctive words that are not found in
respondents' corporate names so that their corporate name is not
identical, confusingly similar, patently deceptive or contrary to
existing laws,[38] does not avail. As correctly held by the SEC OGC,
all these words, when used with the name "De La Salle," can
reasonably mislead a person using ordinary care and discretion into
thinking that petitioner is an affiliate or a branch of, or is likewise
founded by, any or all of the respondents, thereby causing
confusion.[39]
Petitioner's argument that it obtained the words "De La Salle" from
the French word meaning "classroom," while respondents obtained
it from the French priest named Saint Jean Baptiste de La Salle,[40]
similarly does not hold water. We quote with approval the ruling of
the SEC En Banc on this matter. Thus:
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 "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. It has been held that 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.
Contrary to [petitioner's] claim, the word salle only means "room" in
French. The word la, on the other hand, is a definite article ("the")
used to modify salle. Thus, since salle is nothing more than a room,
[respondents'] use of the term is actually suggestive.
A suggestive mark is therefore a word, picture, or other symbol that
suggests, but does not directly describe something about the goods
or services in connection with which it is used as a mark and gives a
hint as to the quality or nature of the product. Suggestive
trademarks therefore can be distinctive and are registrable.
The appropriation of the term "la salle" to associate the words with
the lofty ideals of education and learning is in fact suggestive
because roughly translated, the words only mean "the room." Thus,
the room could be anything - a room in a house, a room in a
building, or a room in an office.
xxx
In fact, the appropriation by [respondents] is fanciful, whimsical and
arbitrary because there is no inherent connection between the
words la salle and education, and it is through [respondents']
painstaking efforts that the term has become associated with one of
the top educational institutions in the country. Even assuming
arguendo that la salle means "classroom" in French, imagination is
required in order to associate the term with an educational
institution and its particular brand of service.[41]
We affirm that the phrase "De La Salle" is not merely a generic term.
Respondents' use of the phrase being suggestive and may properly
be regarded as fanciful, arbitrary and whimsical, it is entitled to legal
protection.[42] Petitioner's use of the phrase "De La Salle" in its
corporate name is patently similar to that of respondents that even
with reasonable care and observation, confusion might arise. The
Court notes not only the similarity in the parties' names, but also
the business they are engaged in. They are all private educational
institutions offering pre-elementary, elementary and secondary
courses.[43] As aptly observed by the SEC En Banc, petitioner's
name gives the impression that it is a branch or affiliate of
respondents.[44] It is settled that proof of actual confusion need not
be shown. It suffices that confusion is probable or likely to occur.[45]

Finally, the Court's ruling in Lyceum of the Philippines[46] does not
apply.
In that case, the Lyceum of the Philippines, Inc., an educational
institution registered with the SEC, commenced proceedings before
the SEC to compel therein private respondents who were all
educational institutions, to delete the word "Lyceum" from their
corporate names and permanently enjoin them from using the word
as part of their respective names.
The Court there held that the word "Lyceum" today generally refers
to a school or institution of learning. It is as generic in character as
the word "university." Since "Lyceum" denotes a school or
institution of learning, it is not unnatural to use this word to
designate an entity which is organized and operating as an
educational institution. Moreover, the Lyceum of the Philippines,
Inc.'s use of the word "Lyceum" for a long period of time did not
amount to mean that the word had acquired secondary meaning in
its favor because it failed to prove that it had been using the word all
by itself to the exclusion of others. More so, there was no evidence
presented to prove that the word has been so identified with the
Lyceum of the Philippines, Inc. as an educational institution that
confusion will surely arise if the same word were to be used by
other educational institutions.[47]
Here, the phrase "De La Salle" is not generic in relation to
respondents. It is not descriptive of respondent's business as
institutes of learning, unlike the meaning ascribed to "Lyceum."
Moreover, respondent De La Salle Brothers, Inc. was registered in
1961 and the De La Salle group had been using the name decades
before petitioner's corporate registration. In contrast, there was no
evidence of the Lyceum of the Philippines, Inc.'s exclusive use of the
word "Lyceum," as in fact another educational institution had used
the word 17 years before the former registered its corporate name
with the SEC. Also, at least nine other educational institutions
included the word in their corporate names. There is thus no
similarity between the Lyceum of the Philippines case and this case
that would call for a similar ruling.
The enforcement of the protection accorded by Section 18 of the
Corporation Code to corporate names is lodged exclusively in the
SEC. By express mandate, the SEC has absolute jurisdiction,
supervision and control over all corporations. It is the SEC's duty to
prevent confusion in the use of corporate names not only for the
protection of the corporations involved, but more so for the
protection of the public. It has authority to de-register at all times,
and under all circumstances, corporate names which in its
estimation are likely to generate confusion.[48]
Clearly, the only determination relevant to this case is that one
made by the SEC in the exercise of its express mandate under the
law.[49]
Time and again, we have held that findings of fact of quasi-judicial
agencies, like the SEC, are generally accorded respect and even
finality by this Court, if supported by substantial evidence, in
recognition of their expertise on the specific matters under their
consideration, more so if the same has been upheld by the appellate
court, as in this case.[50]
WHEREFORE, the Petition is DENIED. The assailed Decision of the CA
dated September 27, 2012 is AFFIRMED.
SO ORDERED.
Asia Brewery, Inc. vs Court of Appeals
224 SCRA 437 – Mercatile Law – Intellectual Property Law – Law on
Trademarks, Service Marks and Trade Names – Unfair Competition
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.
Justice Cruz Dissenting:
A number of courts have held that to determine whether a
trademark has been infringed, we must consider the mark as a
whole and not as dissected. If the buyer is deceived, it is attributable
to the marks as a totality, not usually to any part of it. The court
therefore should be guided by its first impression, for a buyer acts
quickly and is governed by a casual glance, the value of which may
be dissipated as soon as the court assumes to analyze carefully the
respective features of the mark. (Del Monte vs CA & Sunshine
Sauce)
Mighty Corporation vs EJ Gallo Winery (2004)
Facts:
E. & J. Gallo Winery (Gallo Winery) is a foreign corporation not doing
business in the Philippines. Andresons, a domestic corporation, has
been Gallo Winery’s exclusive wine importer and distributor in the
Philippines since 1991, selling these products in its own name and
for its own account.
Gallo Winery’s GALLO wine trademark was registered in the
Philippine IPO in 1971, and was renewed on November 16, 1991 for
another 20 years. Gallo Winery also applied for registration of its
ERNEST & JULIO GALLO wine trademark on October 11, 1990 but
the records do not disclose if it was ever approved by the Director of
Patents
On the other hand, Mighty Corporation and La Campana
(petitioners) and their sister company, Tobacco Industries, are
engaged in the manufacture, distribution and sale of tobacco
products for which they have been using the GALLO cigarette
trademark since 1973.
The Bureau of Internal Revenue (BIR) approved Tobacco Industries’
use of GALLO 100’s cigarette mark on September 14, 1973 and
GALLO filter cigarette mark on March 26, 1976, both for the
manufacture and sale of its cigarette products
 In the present petition, petitioners question the lower courts'
finding that the GALLO cigarettes and GALLO wines were identical,
Tobacco Industries assigned the GALLO cigarette trademark to La
similar or related goods for the reason alone that they were
Campana which, on July 16, 1985, applied for trademark registration
purportedly forms of vice.
in the Philippine Patent Office. On July 17, 1985, the National Library
issued a Certificate of Copyright Registration for La Campana’s
lifetime copyright claim over GALLO cigarette labels. Subsequently,
The Trademark Law and The Paris Convention are the applicable
La Campana authorized Mighty Corporation to manufacture and sell
laws, not The Intellectual Property Code
cigarettes bearing the GALLO trademark

3. Respondents sued petitioners on March 12, 1993 for trademark

Respondents (Gallo Winery and Andresons) claim that they first
infringement and unfair competition committed during the
learned about the existence of GALLO cigarettes in the latter part of
effectivity of the Paris Convention and the Trademark Law. Yet, in
1992 when an Andresons employee saw such cigarettes on display
the Makati RTC decision of November 26, 1998, petitioners were
with GALLO wines in a Davao supermarket wine cellar section.
held liable not only under the aforesaid governing laws but also
Respondents sent a demand letter to petitioners asking them to
under the IP Code which took effect only on January 1, 1998, or
stop using the GALLO trademark, to no avail.
about five years after the filing of the complaint. The CA affirmed
the Makati RTC decision.

Respondents sued petitioners in the Makati RTC for trademark and

tradename infringement and unfair competition. They claimed that
The courts a quo erred in retroactively applying the IP Code in this
petitioners adopted the GALLO trademark to ride on Gallo Winery’s
case
established reputation and popularity.

4. It is a fundamental principle that the validity and obligatory force

After trial, the RTC held petitioners liable for, and permanently
of a law proceed from the fact that it has first been promulgated. A
enjoined them from, committing trademark infringement and unfair
law that is not yet effective cannot be considered as conclusively
competition with respect to the GALLO trademark. On appeal, the
known by the populace. To make a law binding even before it takes
Court of Appeals (CA) affirmed the Makati RTC decision.
effect may lead to the arbitrary exercise of the legislative power.
Nova constitutio futuris formam imponere debet non praeteritis. A
new state of the law ought to affect the future, not the past. Any
doubt must generally be resolved against the retroactive operation
of laws, whether these are original enactments, amendments or
repeals. There are only a few instances when laws may be given
retroactive effect, none of which is present in this case.
5. The IP Code, repealing the Trademark Law, was approved on June
6, 1997. Section 241 thereof expressly decreed that it was to take
effect only on January 1, 1998, without any provision for retroactive
application. Thus, the Makati RTC and the CA should have limited
the consideration of the present case within the parameters of the
Trademark Law and the Paris Convention, the laws in force at the
time of the filing of the complaint.
Trademark Infringement vs. Unfair Competition
6. The law on trademarks is a specialized subject distinct from the
law on unfair competition, although the two subjects are entwined
with each other. Hence, even if one fails to establish his exclusive
property right to a trademark, he may still obtain relief on the
ground of his competitor’s unfairness or fraud. Conduct constitutes
unfair competition if the effect is to pass off on the public the goods
of one man as the goods of another. It is not necessary that any
particular means should be used to this end.
7. The distinctions between the two are:
(a) Infringement of trademark is the unauthorized use of a
trademark, whereas unfair competition is the passing off of one's
goods as those of another
(b) In infringement of trademark fraudulent intent is unnecessary,
whereas in unfair competition fraudulent intent is essential
(c) In infringement of trademark the prior registration of the
trademark is a prerequisite to the action, whereas in unfair
competition registration is not necessary.
Pertinent provisions on Trademark Infringement under the Paris
Convention and the Trademark Law
8. Article 6 of the Paris Convention, an international agreement
binding on the Philippines and the United States (Gallo Winery’s
country of domicile and origin) prohibits “the registration or use of a
trademark which constitutes a reproduction, imitation or
translation, liable to create confusion, of a mark considered by the
competent authority of the country of registration or use to be well-
known in that country as being already the mark of a person entitled
to the benefits of the Paris Convention and used for identical or
similar goods. This rule also applies when the essential part of the
mark constitutes a reproduction of any such well-known mark or an
imitation liable to create confusion therewith.” There is no time limit
for seeking the prohibition of the use of marks used in bad faith.
9. On the other hand, Section 22 of the Trademark Law holds a
person liable for infringement when, among others, he “uses
without the consent of the registrant, any reproduction, counterfeit,
copy or colorable imitation of any registered mark or tradename 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 reproduce, counterfeit, copy or
colorably imitate any such mark or tradename 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.” Trademark registration and actual use are
material to the complaining party’s cause of action.
10. Corollary to this, Section 20 of the Trademark Law considers the
trademark registration certificate as prima facie evidence of the
validity of the registration, the registrant’s ownership and exclusive
right to use the trademark in connection with the goods, business or
services as classified by the Director of Patents and as specified in
the certificate, subject to the conditions and limitations stated
therein.
11. Sections 2 and 2-A of the Trademark Law emphasize the
importance of the trademark’s actual use in commerce in the
Philippines prior to its registration. In the adjudication of trademark
rights between contending parties, equitable principles of laches,
estoppel, and acquiescence may be considered and applied.
12. Under the Trademark Law therefore, the following constitute
the elements of trademark infringement:
(i) a trademark actually used in commerce in the Philippines and
registered in the principal register of the Philippine Patent Office
(ii) 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
(iii) the trademark is used for identical or similar goods, and
(iv) such act is done without the consent of the trademark registrant
or assignee.
13. In summary, the Paris Convention protects well-known
trademarks only (to be determined by domestic authorities), while
the Trademark Law protects all trademarks, whether well-known or
not, provided that they have been registered and are in actual
commercial use in the Philippines. Following universal acquiescence
and comity, in case of domestic legal disputes on any conflicting
provisions between the Paris Convention (which is an international
agreement) and the Trademark law (which is a municipal law) the
latter will prevail.
14. Under both the Paris Convention and the Trademark Law, the
protection of a registered trademark is limited only to goods
identical or similar to those in respect of which such trademark is
registered and only when there is likelihood of confusion. Under
both laws, the time element in commencing infringement cases is
material in ascertaining the registrant’s express or implied consent
to another’s use of its trademark or a colorable imitation thereof.
This is why acquiescence, estoppel or laches may defeat the
registrant’s otherwise valid cause of action.
Actual commercial use in the Philippines of Gallo cigarette
trademark preceded that of Gallo wine trademark
15. The GALLO wine trademark was registered in the Philippines in
November 1971 but the wine itself was first marketed and sold in
the country only in 1974 and only within the former U.S. military
facilities, and outside thereof, only in 1979. To prove commercial use
of the GALLO wine trademark in the Philippines, respondents
presented sales invoices (earliest dated July 9, 1981) for the sale and
shipment of GALLO wines to the Philippines during that period.
Nothing at all, however, was presented to evidence the alleged sales
of GALLO wines in the Philippines in 1974 or, for that matter, prior to
July 9, 1981.
16. On the other hand, by testimonial evidence, it appears that
petitioners and its predecessor-in-interest, Tobacco Industries, have
indeed been using and selling GALLO cigarettes in the Philippines
since 1973 or before July 9, 1981.
17. In several cases, the Court has repeatedly given utmost
importance to the actual commercial use of a trademark in the
Philippines prior to its registration, notwithstanding the provisions
of the Paris Convention. In other words, actual use in commerce or
business is a prerequisite in the acquisition of the right of ownership
over a trademark. A registration certificate serves merely as prima
facie evidence. It is not conclusive but can and may be rebutted by
controverting evidence.
18. Following universal acquiescence and comity, our municipal law
on trademarks regarding the requirement of actual use in the
Philippines must subordinate an international agreement inasmuch
as the apparent clash is being decided by a municipal tribunal.
19. In view of respondents’ judicial admission that the actual
commercial use of the GALLO wine trademark was subsequent to its
registration in 1971 and to Tobacco Industries’ commercial use of
the GALLO cigarette trademark in 1973, we rule that, on this
account, respondents never enjoyed the exclusive right to use the
GALLO wine trademark to the prejudice of Tobacco Industries and its
successors-in-interest, herein petitioners, either under the
Trademark Law or the Paris Convention.
Respondents’ GALLO trademark registration is limited to wines only
20. By strict application of Section 20 of the Trademark Law, Gallo
Winery’s exclusive right to use the GALLO trademark should be
limited to wines, the only product indicated in its registration
certificates.
21. Under Section 20, the protective mantle of the Trademark Law
extends only to the goods used by the first user as specified in the
certificate of registration, subject to any conditions and limitations
stated therein.
22. Notably, Justice JBL Reyes in Sta. Ana vs. Maliwat, held that
under Section 4(d) of Republic Act No. 166, as amended, the law in
point “does not require that the articles of manufacture of the
previous user and late user of the mark should possess the same
descriptive properties or should fall into the same categories as to
bar the latter from registering his mark in the principal register.
23. It would seem that Section 4(d) does not require that the goods
manufactured by the second user be related to the goods produced
by the senior user while Section 20 limits the exclusive right of the
senior user only to those goods specified in the certificate of
registration. How do We now reconcile the apparent conflict? The
rule has been laid down that the clause which comes later shall be
given paramount significance over an anterior proviso upon the
presumption that it expresses the latest and dominant purpose.
Hence, it follows that Section 20 is controlling.
Confusion in trademark infringement
24. There are two types of confusion in trademark infringement.
The first is “confusion of goods” when an otherwise prudent
purchaser is induced to purchase one product in the belief that he is
purchasing another, in which case defendant’s goods are then
bought as the plaintiff’s and its poor quality reflects badly on the
plaintiff’s reputation. The other is “confusion of business” wherein
the goods of the parties are different but the defendant’s product
can reasonably (though mistakenly) be assumed to originate from
the plaintiff, thus deceiving the public into believing that there is
some connection between the plaintiff and defendant which, in fact,
does not exist.
25. In determining the likelihood of confusion, the Court must
consider:
[a] the resemblance between the trademarks;
[b] the similarity of the goods to which the trademarks are attached;
[c] the likely effect on the purchaser and
[d] the registrant’s express or implied consent and other fair and
equitable considerations
 (b) the Holistic Test requires that the entirety of the marks in
question be considered in resolving confusing similarity. Comparison
26. Petitioners and respondents both use “GALLO” in the labels of
of words is not the only determining factor. The trademarks in their
their respective cigarette and wine products. But, as held in several
entirety as they appear in their respective labels or hang tags must
cases, the use of an identical mark does not, by itself, lead to a legal
also be considered in relation to the goods to which they are
conclusion that there is trademark infringement
attached. The discerning eye of the observer must focus not only on
the predominant words but also on the other features appearing in
both labels in order that he may draw his conclusion whether one is
27. Whether a trademark causes confusion and is likely to deceive confusingly similar to the other.
the public hinges on “colorable imitation” which has been defined as
“such similarity in form, content, words, sound, meaning, special
arrangement or general appearance of the trademark or tradename
29. In comparing the resemblance or colorable imitation of marks,
in their overall presentation or in their essential and substantive and
various factors have been considered, such as the dominant color,
distinctive parts as would likely mislead or confuse persons in the
style, size, form, meaning of letters, words, designs and emblems
ordinary course of purchasing the genuine article.
used, the likelihood of deception of the mark or name's tendency to
confuse and the commercial impression likely to be conveyed by the
trademarks if used in conjunction with the respective goods of the
28. Jurisprudence has developed two tests in determining similarity parties
and likelihood of confusion in trademark resemblance:

No likelihood of confusion, mistake or deceit as to the identity or

(a) the Dominancy Test focuses on the similarity of the prevalent source of petitioners’ and respondents’ goods or business
features of the competing trademarks which might cause confusion
or deception, and thus infringement. If the competing trademark
contains the main, essential or dominant features of another, and
30. Applying the Dominancy and Holistic Tests, we find that the
confusion or deception is likely to result, infringement takes place.
dominant feature of the GALLO cigarette trademark is the device of
Duplication or imitation is not necessary; nor is it necessary that the
a large rooster facing left, outlined in black against a gold
infringing label should suggest an effort to imitate. The question is
background. The rooster’s color is either green or red – green for
whether the use of the marks involved is likely to cause confusion or
GALLO menthols and red for GALLO filters. Directly below the large
mistake in the mind of the public or deceive purchasers.
rooster device is the word GALLO. The rooster device is given
prominence in the GALLO cigarette packs in terms of size and
location on the labels. On the side of the GALLO cigarette packs are
the words “MADE BY MIGHTY CORPORATION,” thus clearly
informing the public as to the identity of the manufacturer of the
cigarettes.
31. The GALLO mark appears to be a fanciful and arbitrary mark for
the cigarettes as it has no relation at all to the product but was
chosen merely as a trademark due to the fondness for fighting cocks
of the son of petitioners’ president. Furthermore, petitioners
adopted GALLO, the Spanish word for rooster, as a cigarette
trademark to appeal to one of their target markets, the sabungeros
(cockfight aficionados).
32. On the other hand, GALLO Winery’s wine and brandy labels are
diverse. In many of them, the labels are embellished with sketches
of buildings and trees, vineyards or a bunch of grapes while in a few,
one or two small roosters facing right or facing each other, with
additional designs in green, red and yellow colors, appear as minor
features thereof.[87] Directly below or above these sketches is the
entire printed name of the founder-owners, “ERNEST & JULIO
GALLO” or just their surname “GALLO,” which appears in different
fonts, sizes, styles and labels, unlike petitioners’ uniform casque-font
bold-lettered GALLO mark. Moreover, on the labels of Gallo Winery’s
wines are printed the words “VINTED AND BOTTLED BY ERNEST &
JULIO GALLO, MODESTO, CALIFORNIA.
33. The many different features like color schemes, art works and
other markings of both products drown out the similarity between
them – the use of the word “GALLO” — a family surname for the
Gallo Winery’s wines and a Spanish word for rooster for petitioners’
cigarettes.
Related goods
34. Confusion of goods is evident where the litigants are actually in
competition; but confusion of business may arise between non-
competing interests as well.
35. Apart from the strict application of Section 20 of the Trademark
Law and Article 6bis of the Paris Convention which proscribe
trademark infringement not only of goods specified in the certificate
of registration but also of identical or similar goods, we have also
uniformly recognized and applied the modern concept of “related
goods.” Simply stated, when goods are so related that the public
may be, or is actually, deceived and misled that they come from the
same maker or manufacturer, trademark infringement occurs
36. Non-competing goods may be those which, though they are not
in actual competition, are so related to each other that it can
reasonably be assumed that they originate from one manufacturer,
in which case, confusion of business can arise out of the use of
similar marks. They may also be those which, being entirely
unrelated, cannot be assumed to have a common source; hence,
there is no confusion of business, even though similar marks are
used. Thus, there is no trademark infringement if the public does
not expect the plaintiff to make or sell the same class of goods as
those made or sold by the defendant.
37. In resolving whether goods are related, several factors come
into play:
(i) the business (and its location) to which the goods belong
(ii) the class of product to which the goods belong
(iii) the product's quality, quantity, or size, including the nature of
the package, wrapper or container
(iv) the nature and cost of the articl
(v) the descriptive properties, physical attributes or essential
characteristics with reference to their form, composition, texture or
quality
(vi) the purpose of the goods
(vii) whether the article is bought for immediate consumption, that
is, day-to-day household items
(viii) the fields of manufacture
(ix) the conditions under which the article is usually purchased
(x) the channels of trade through which the goods flow, how they
are distributed, marketed, displayed and sold.
38. No single factor is preeminent, nor can the presence or absence
of one determine, without analysis of the others, the outcome of an
infringement suit. Rather, the court is required to sift the evidence
relevant to each of the criteria. This requires that the entire panoply
of elements constituting the relevant factual landscape be
comprehensively examined. It is a weighing and balancing process.
39. A very important circumstance though is whether there exists a
likelihood that an appreciable number of ordinarily prudent
purchasers will be misled, or simply confused, as to the source of
the goods in question. The “purchaser” is not the “completely
unwary consumer” but is the “ordinarily intelligent buyer”
considering the type of product involved. He is “accustomed to buy,
and therefore to some extent familiar with, the goods in question.
The test of fraudulent simulation is to be found in the likelihood of
the deception of some persons in some measure acquainted with an
established design and desirous of purchasing the commodity with
which that design has been associated. The test is not found in the
deception, or the possibility of deception, of the person who knows
nothing about the design which has been counterfeited, and who
must be indifferent between that and the other. The simulation, in
order to be objectionable, must be such as appears likely to mislead
the ordinary intelligent buyer who has a need to supply and is
familiar with the article that he seeks to purchase. Hence, in the
adjudication of trademark infringement, we give due regard to the
goods’ usual purchaser’s character, attitude, habits, age, training and
education.
Wines and cigarettes are not identical, similar, competing or related
goods
40. Obviously, wines and cigarettes are not identical or competing
products. Neither do they belong to the same class of goods.
Respondents’ GALLO wines belong to Class 33 under Rule 84[a]
Chapter III, Part II of the Rules of Practice in Trademark Cases while
petitioners’ GALLO cigarettes fall under Class 34. We are mindful
that product classification alone cannot serve as the decisive factor
in the resolution of whether or not wines and cigarettes 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. But the mere fact that one person has
adopted and used a particular trademark for his goods does not
prevent the adoption and use of the same trademark by others on
articles of a different description.
41. Both the Makati RTC and the CA held that wines and cigarettes
are related products because: (1) “they are related forms of vice,
harmful when taken in excess, and used for pleasure and relaxation”
and (2) “they are grouped or classified in the same section of
supermarkets and groceries.” We find these premises patently
insufficient and too arbitrary to support the legal conclusion that
wines and cigarettes are related products. First, anything — not only
wines and cigarettes — can be used for pleasure and relaxation and
can be harmful when taken in excess. Second, the U.S. patent office
and courts have consistently held that the mere fact that goods are
sold in one store under the same roof does not automatically mean
that buyers are likely to be confused as to the goods’ respective
sources, connections or sponsorships.
42. Wines are bottled and consumed by drinking while cigarettes are
packed in cartons or packages and smoked. There is a whale of a
difference between their descriptive properties, physical attributes
or essential characteristics like form, composition, texture and
quality.
43. GALLO cigarettes are inexpensive items while GALLO wines are
not. GALLO wines are patronized by middle-to-high-income earners
while GALLO cigarettes appeal only to simple folks like farmers,
fishermen, laborers and other low-income workers. Indeed, the big
price difference of these two products is an important factor in
proving that they are in fact unrelated and that they travel in
different channels of trade. There is a distinct price segmentation
based on vastly different social classes of purchasers.
44. GALLO cigarettes and GALLO wines are not sold through the
same channels of trade. GALLO cigarettes are distributed, marketed
and sold through ambulant and sidewalk vendors, and small local
sari-sari stores. In contrast, GALLO wines are sold in hotels,
expensive bars and restaurants, and high-end grocery stores and
supermarkets.
45. Under Carling Brewing Company vs. Philip Morris, Inc., tobacco
and alcohol products may be considered related only in cases
involving special circumstances which exist only if a famous mark is
involved and there is a demonstrated intent to capitalize on it. Both
of these are absent in the present case.
The Gallo wine trademark is not a well-known mark in the context of (c) the mark must be for use in the same or similar kinds of goods;
the Paris Convention since wines and cigarettes are not identical or and
similar goods
(d) the person claiming must be the owner of the mark.

46. The GALLO trademark cannot be considered a strong and

Consent of the Registrant and other Fair, Just and Equitable
distinct mark in the Philippines. “GALLO” cannot be considered a
Considerations
“well-known” mark within the contemplation and protection of the
Paris Convention in this case since wines and cigarettes are not
identical or similar goods.
49. It took respondents almost 20 years to know about the
existence of GALLO cigarettes and sue petitioners for trademark
infringement. Given, on one hand, the long period of time that
47. The Paris Convention for the Protection of Industrial Property
petitioners were engaged in the manufacture, marketing,
does not automatically exclude all countries of the world which have
distribution and sale of GALLO cigarettes and, on the other,
signed it from using a tradename which happens to be used in one
respondents’ delay in enforcing their rights (not to mention implied
country. To illustrate — if a taxicab or bus company in a town in the
consent, acquiescence or negligence) we hold that equity, justice
United Kingdom or India happens to use the tradename ‘Rapid
and fairness require us to rule in favor of petitioners.
Transportation,’ it does not necessarily follow that ‘Rapid’ can no
longer be registered in Uganda, Fiji, or the Philippines.

50. Moreover, there exists no evidence that petitioners employed

malice, bad faith or fraud, or that they intended to capitalize on
48. The then Minister of Trade and Industry, the Hon. Roberto V.
respondents’ goodwill in adopting the GALLO mark for their
Ongpin, issued a memorandum dated 25 October 1983 to the
cigarettes which are totally unrelated to respondents’ GALLO wines.
Director of Patents, a set of guidelines in the implementation of
Thus, we rule out trademark infringement on the part of petitioners.
Article 6 of the Treaty of Paris. These conditions are:

Petitioners are not liable for unfair competition

(a) the mark must be internationally known;

(b) the subject of the right must be a trademark, not a patent or

copyright or anything else; 51. Under Section 29 of the Trademark Law, any person who
employs deception or any other means contrary to good faith by
which he passes 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 commits any acts calculated to
produce said result, is guilty of unfair competition.
52. It includes the following acts:
(a) Any person, who in selling his goods shall give them the general
appearance of goods of another manufacturer or dealer, either as to
the goods themselves or in the wrapping of the packages in which
they are contained, or the devices or words thereon, or in any other
feature of their appearance, which would be likely to influence
purchasers to believe that the goods offered are those of a
manufacturer or dealer other than the actual manufacturer or
dealer, or who otherwise clothes the goods with such appearance as
shall deceive the public and defraud another of his legitimate trade,
or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose;
(b) Any person who by any artifice, or device, or who employs any
other means calculated to induce the false belief that such person is
offering the services of another who has identified such services in
the mind of the public
(c) Any person who shall make any false statement in the course of
trade or who shall commit any other act contrary to good faith of a
nature calculated to discredit the goods, business or services of
another.
53. The universal test question is whether the public is likely to be
deceived. Nothing less than conduct tending to pass off one man’s
goods or business as that of another constitutes unfair competition.
Actual or probable deception and confusion on the part of
customers by reason of defendant’s practices must always appear.
54. On this score, we find that petitioners never attempted to pass
off their cigarettes as those of respondents. There is no evidence of
bad faith or fraud imputable to petitioners in using their GALLO
cigarette mark. After applying all the tests provided by the governing
laws as well as those recognized by jurisprudence, we conclude that
petitioners are not liable for trademark infringement, unfair
competition or damages.
SKECHERS v. INTER PACIFIC INDUSTRIAL TRADING CORP., GR
No. 164321, 2011-03-23
Facts:
The present controversy arose when petitioner filed with Branch 24
of the Regional Trial Court (RTC) of Manila an application for the
issuance of search warrants against an outlet and warehouse
operated by respondents for infringement of trademark under
Section 155, in relation... to Section 170 of Republic Act No. 8293,
otherwise known as the Intellectual Property Code of the
The basic law on trademark, infringement, and unfair competition is
Philippines.[2] In the course of its business, petitioner has registered
Republic Act (R.A.) No. 8293. Specifically, Section 155 of R.A. No.
the trademark "SKECHERS"[3] and the trademark "S" (within... an
8293 states:
oval design)[4] with the Intellectual Property Office (IPO).

Remedies; Infringement. -- Any person who shall, without the

As a result of the raid, more than 6,000 pairs of shoes bearing the
consent of the owner of the registered mark:
"S" logo were seized.

155.1. Use in commerce any reproduction, counterfeit, copy, or

Later, respondents moved to quash the search warrants, arguing
that there was no confusing similarity between petitioner's
"Skechers" rubber shoes and its "Strong" rubber shoes.
he RTC issued an Order[6] quashing the search warrants and
directing the NBI to return the seized goods. The RTC agreed with
respondent's view that Skechers rubber shoes and Strong rubber
shoes have glaring differences such that an... ordinary prudent
purchaser would not likely be misled or confused in purchasing the
wrong article.
with the Court of Appeals (CA) assailing the RTC Order. On
November 17, 2003, the CA issued a Decision[8] affirming the ruling
of the RTC.
Issues:
whether or not respondent is guilty of trademark infringement.
Ruling:
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 While there may be dissimilarities between the appearances of the
services using the... infringing material.[15] shoes, to this Court's mind such dissimilarities do not outweigh the
stark and blatant similarities in their general features.

The essential element of infringement under R.A. No. 8293 is that

the infringing mark is likely to cause confusion. WHEREFORE, premises considered, the Motion for Reconsideration
is GRANTED. The Decision dated November 30, 2006 is
RECONSIDERED and SET ASIDE.
Applying the Dominancy Test to the case at bar, this Court finds that
the use of the stylized "S" by respondent in its Strong rubber shoes
infringes on the mark already registered by petitioner with the IPO. SO ORDERED.
While it is undisputed that petitioner's stylized "S" is within an oval...
design, to this Court's mind, the dominant feature of the trademark
is the stylized "S," as it is precisely the stylized "S" which catches the LIM HOA, Petitioner, vs. DIRECTOR OF PATENTS,
eye of the purchaser. Thus, even if respondent did not use an oval Respondent.MONTEMAYOR, J.:
design, the mere fact that it used the same stylized "S", the... same
being the dominant feature of petitioner's trademark, already Facts :Lim Hoa, herein petitioner, filed an application for
constitutes infringement under the Dominancy Test. the registration of a trademark, consisting of a
representation of two midget roosters in an attitude of combat with
the word “Bantam” printed above them. The trademark being
registered covered products consisting of food seasonings. Agricom
Furthermore, respondent did not simply use the letter "S," but it
Development Corp., a domestic corporation, opposed the
appears to this Court that based on the font and the size of the
application on several grounds, among others, that the
lettering, the stylized "S" utilized by respondent is the very same
trademark sought to be registered was confusingly similar to its
stylized "S" used by petitioner; a stylized "S" which is unique and...
registered mark, consisting of a pictorial lrepresentation of a hen
distinguishes petitioner's trademark. Indubitably, the likelihood of
with the words “Hen Brand” and “Marca Manok,” which brand or
confusion is present as purchasers will associate the respondent's
mark was also used on a food seasoning product, before the use of
use of the stylized "S" as having been authorized by petitioner or
the trademark by the applicant. Agricom likewise asserted that the
that respondent's product is connected with petitioner's business.
trademark had been adopted by its predecessor, the Advincula
Family, since 1946 for said food seasoning. The Director of Patents
disallowed the registration of the Lim Hoa’s trademark because it
would likely cause confusion or mistake or deceive
purchasers. Hence, this present appeal by the petitioner.
Issue: Whether or not there is similarity between the two
trademarks as to cause confusion or mistake in the mind of the
public.
Held: Yes. It has been consistently held that the question of
infringement of a trademark is to be determined bythe test of
dominancy. Similarity in size, form, and color, while relevant, is not
conclusive. If the competingtrademark contains the main or
essential or dominant features of another, and confusion and
deception islikely to result, infringement takes place. Duplication or
imitation is not necessary; nor it is necessary thatthe infringing label
should suggest an effort to imitate. The danger of confusion in
trademarks and brandswhich are similar may not be so great in the
case of commodities or articles of relatively great value, for
theprospective buyer, generally the head of the family or a
businessman, before making the purchase, readsthe pamphlets and
all literature available, describing the article he is planning to buy,
and perhaps evenmakes comparisons with similar articles in the
market. But in the sale of a food seasoning product, akitchen
article of everyday consumption, the circumstances are far
different. Said product is generallypurchased by cooks and
household help, sometimes illiterate who are guided by pictorial
representationsand the sound of the word descriptive of said
representation. The two roosters appearing in the trademarkof the
applicant and the hen appearing on the trademark of the Oppositor,
although of different sexes,belong to the same family of chicken,
known as manok in all the principal dialects of the Philippines,
andwhen a cook or a household help or even a housewife buys a
food seasoning product for the kitchen thebrand of “Manok” or
“Marca Manok” would most likely be upper most in her mind and
would influence her inselecting the product, regardless of whether
the brand pictures a hen or a rooster or two roosters. To her,they are
all manok. Therein lies the confusion, even deception
PHILIPPINE NUT INDUSTRY, INC. vs. STANDARD BRANDS
INCORPORATED and TIBURCIO S. EVALLE as Director of Patents
Facts:
Philippine Nut Industry Inc., a domestic corporation, obtained from
the Patent Office on August 10, 1961, a certificate covering the
trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS," the label
used on its product of salted peanuts.
On May 14, 1962, Standard Brands, a foreign corporation, filed a
case with the Director of Patent, asking for the cancellation of
Philippine Nut's certificate of registration on the ground that "the
registrant was not entitled to register the mark at the time of its
application for registration thereof" for the reason that it (Standard
Brands) is the owner of the trademark "PLANTERS COCKTAIL
PEANUTS" covered by Certificate of Registration No. SR-172, issued
by the Patent Office on July 28, 1958.
Thereafter, the Philippine Nut filed its answer invoking the special
defense that its registered label is not confusingly similar to that of
Standard Brands as the latter alleges.
Respondent Director of Patents gave due course to Standard Brand's
petition, ordering the cancellation of Philippine Nut's Certificate of
Registration.
Upon denial of the motion for reconsideration, the Philippine Nut
petitioned for a review, seeking the reversal of the Director of
Patents’ decision.
Issue:
Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL
PEANUTS" used by Philippine Nut on its label for salted peanuts with
the same coloring scheme and the same lay-out of words,
confusingly similar to the trademark "PLANTERS COCKTAIL
PEANUTS" used by Standard Brands on its product.
Ruling:
Yes. As to appearance and general impression of the two
trademarks, the Supreme Court said it found a very confusing
similarity.
The word PLANTERS printed across the upper portion of the label in
bold letters easily attracts and catches the eye of the ordinary
consumer and it is that word and none other that sticks in his mind
when he thinks of salted peanuts.
The Supreme Court also held that although it is true that no
producer or manufacturer may have a monopoly of any color
scheme or form of words in a label, but when a competitor adopts a
distinctive or dominant mark or feature of another's trademark and
with it makes use of the same color ensemble, employs similar
words written in a style, type and size of lettering almost identical
with those found in the other trademark, the intent to pass to the
public his product as that of the other is quite obvious. It deceives
the public.
Hence, the decision of respondent Director of Patents was affirmed
G.R. No. L-27906 January 8, 1987CONVERSE RUBBER CORPORATION,
petitioner, vs .UNIVERSAL RUBBER PRODUCTS, INC. and TIBURCIO S.
EVALLE, DIRECTOR OF PATENTS ,respondents.FERNAN, J.:
Facts: Respondent Universal Rubber Products, Inc. filed an
application with the Philippine Patent Office for the registration of
the trademark “Universal Converse and Device” used on rubber
shoes and rubber slippers.
The petitioner Converse Rubber Corporation, duly organized
under the laws of Massachusetts, USA, manufactures rubber
shoes and uses the trademarks “Chuck Taylor” and “All Star and
Device.” The latter filed an opposition to the application for
registration filed by respondent on the ground, among others, that
the trademark sought to be registered is confusingly similar to the
word “Converse” which is part of its corporate name as to likely
deceive purchasers of products on which it is to be used to an extent
that said products may be mistaken by the unwary public to
be manufactured by it. The Director of Patents dismissed
the opposition of the petitioner and gave due course to
respondent’s application. The petitioner prayed for reconsideration
and the same was denied. Hence, this present petition for review.
Issue: Whether or not the applicant’s partial appropriation of the
petitioner’s corporate name is of such character that it is calculated
to deceive or confuse the public to the injury of the corporation to
which the name belongs.
Held: Yes. The similarity in the general appearance of the
respondent’s trademark and that of the petitioner would evidently
create a likelihood of confusion among the purchasing
public. But even assuming, arguendo, that the trademark
sought to be registered by respondent is distinctively dissimilar from
those of the petitioner, the likelihood of confusion would still
subsists, not on the purchaser’s perception of the goods but on the
origin thereof. By appropriating the word “Converse,” respondent’s
products are likely to be mistaken as having been produced by
petitioner. The risk of damage is not limited to a possible confusion
of goods but also includes confusion of reputation if the public could
reasonably assume that the goods of the partied originated from the
same source. Knowing, therefore, that the word “Converse” belongs
to and is being used by petitioner, and in fact the dominant word in
petitioner’s corporate name, respondent has no right to appropriate
the same for use in its products which are similar to those being
produced by petitioner. Note: It is unfortunate that respondent
Director of Patents has concluded that since the petitioner is not
licensed to do business in the country and is actually not
doing business on its own in the Philippines, it has no name to
protect in the forum and thus, it is futile for it to establish that
“CONVERSE" as part of its corporate name identifies its rubber
shoes. That a foreign corporation has a right to maintain an action in
the forum even if it is not licensed to do business and is not actually
doing business on its own therein has been enunciated many times
by this Court. In LA Chemise Lacoste, S.A. vs. Fernandez, 129 SCRA
373, this Court, reiterating Western Equipment and Supply Co. vs.
Reyes, 51 Phil. 115, stated that: ... a foreign corporation which
has never done any business in the Philippines and which
is unlicensed and unregistered to do business here, but is
widely and favorably known in the Philippines through the use
therein of its products bearing its corporate and tradename, has a
legal right to maintain an action in the Philippines to restrain the
residents and inhabitants thereof from organizing a corporation
therein bearing the same name as the foreign corporation, when it
appears that they have personal knowledge of the existence of such
a foreign corporation, and it is apparent that the purpose of the
proposed domestic corporation is to deal and trade in the same
goods as those of the foreign corporation
MCDONALDS vs. MACJOY
Facts:
MacJoy Fastfood Corp. is a corporation in the sale of fastfood based
in Cebu filed with IPO for the registration of their name.
McDonald's Corporation filed an opposition to the application.
McDonald's claims that their logo and use of their name would
falsely tend to suggest a connection with MacJoy's services and food
products, thus, constituting a fraud upon the general public and
further cause the dilution of the distinctiveness of petitioner’s
registered and internationally recognized MCDONALD’S marks to its
prejudice and irreparable damage.
 The IPO, though they correctly used the dominancy, they should
have taken more considerations. In recent cases, the SC has
Respondent averred that MACJOY has been used for the past many
consistently used and applied the dominancy test in determining
years in good faith and has spent considerable sums of money for
confusing similarity or likelihood of confusion between competing
said mark.
trademarks. The CA, while seemingly applying the dominancy test,
in fact actually applied the holistic test.

The IPO held that there is confusing similarity.

The CA held otherwise stating there are predominant difference like
the spelling, the font and color of the trademark and the picture of
the logo.
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.
Applying the dominancy test to the instant case, the Court both
marks are confusingly similar with each other such that an ordinary
purchaser can conclude an association or relation between the
marks. The predominant features such as the "M," "Mc," and "Mac"
appearing in both easily attract the attention of would-be
customers. Most importantly, both trademarks are used in the sale
of fastfood products.
Petitioner has the right of ownership in the said marks. Petitioner's
mark was registered in 1977 while respondent only in 1991.

Ruling:

Jurisprudence developed two tests, the dominancy and holistic test.

The dominancy test focuses on the similarity of the prevalent
features of the competing trademarks that might cause confusion or
deception while the holistic test requires the court to consider the
entirety of the marks as applied to the products, including the labels
and packaging, in determining confusing similarity. Under the latter
test, a comparison of the words is not the only determinant factor.