IPL CASES

Trademark
Actual Use Requirement
Chung Te c. Ng Kian Gia !"arca Pina#
Dspute as to who was rst to use the trademark Marca Pna n the manufacturng
of shrts and undergarments between pettoner and respondent.
Drector of Patents rued that both had not sumcenty estabshed date of use and
thus apped the rue that "n inter partes cases, when nether of the partes have
(has) satsfactory proven the date of rst use aeged n ther appcatons, such
date sha be conned to the ng date of the sad appcaton
Appcaton by Chung Te - 1957
Ng Kan Gab - 1955
SC: consdered the substanta and testmona evdence presented by Chung Te and
concuded that he had been usng the trade mark as eary as 1952 whch was
assgned to hm by hs father n aw. Sad busness and factory was aso regstered
wth the BIR and had been payng taxes eversnce.
It was even a member of the Phppne Chnese Underwear Manufacturers
assocaton. Evdence was aso adduced as to the grant of permt by the Mayor,
boxes used n the devery of the shrts contanng the trademark and even
caendars.
As for Ng Kan, he ntay camed that he had used the TM snce 1955 but after
hearng camed that t was snce 1946. He faed to present cear and convncng
evdence to prove such adopton.
S$ Chang %. Ga& Liu !Li'n Tiger#
In the absence of arbtrarness, the concuson reached by the Drector of Patents s
to be accorded respect and must be uphed.
Gaw Lu - had a regstered TM of Lon and Tger (1963). Cams that he had been
usng t snce 1947
Sy Chng - moved to cance, cams he had used sad TM snce 1952. Aeged that
Gaw had frauduenty passed as hs own the anne basc coors or goods smar to
those manufactured by Sy.
Regstered trademark - presumed vad, may be rebutted by evdence contrary.
Gaw Lu - presumed vad TM
Chng - overturned presumpton by showng that Gaw was not excusve user pror
to that as proven by competent evdence ( wtnesses from Venus commerca,
customer nvoces, caendars etc)
Thus: "It s very cear that the rec'rd is &anting in (r'') su*cient t' sh'&
that Res('ndent+Registrant has actuall$ and sustantiall$ ad'(ted and
used the trademark s' as t' sh'& that his ,rm &as the s'urce 'r 'rigin ')
his d$estu-. .e ne%er (resented (r'') required $ la& t' in%est him &ith
e/clusi%e0 c'ntinu'us ad'(ti'n and use ') the trademark &hich sh'uld
c'nsist in0 inter alia0 c'nsiderale sale since his ad'(ti'n there')
c'mined &ith (r'm'ti'nal &'rk suitale t' ('(ulari1e the trademark."
Snce respondent was not abe to prove hs date of rst use n commerce of the
trademark, t s deemed t was on hs ng of appcaton 1963.
Pagasa Industrial C'r( %. CA !2KK#
Yoshda Kogyo Kabushk (YKK) had a regstered TM for YKK snce 1961. Amost 6
years ater, Pagasa apped for an dentca TM for the sae of zppers and was
granted on 1968.
7 years ater Yoshda ed for the canceaton of Pagasas TM as t was dentca to
thers. Bureau of Patents found n favor of YKK and ordered the canceaton of
Pagasas TM as t was aegedy due to the neggence of hs omce n aowng an
dentca TM to be regstered.
Pagasa contends that:
1. YKK s estopped by aches due to the unreasonabe amount of tme t has
deterred n ng ts acton (8 years)
2. YKK has faed to prove actua use n commerce of the TM and has thereby
faed to estabsh ts rght to the TM.
SC: Found n favor of Pagasa
The Trademark Law s very cear. It requres actua commerca use of the mark pror
to ts regstraton. There s no dspute that respondent corporaton was the rst
regstrant, yet t faed to fuy substantate ts cam that t used n trade or busness
n the Phppnes the sub|ect mark; t dd not present proof to nvest t wth
excusve, contnuous adopton of the trademark whch shoud consst among
others, of consderabe saes snce ts rst use.
Mere advertsements and free sampes s not sumcent to fu ths requrement.
It appears that t was ony after more than seven (7) years when respondent sought
the canceaton of the trademark. An unreasonabe ength of tme had aready
passed before respondent asserted ts rght to the trademark. There s a
presumpton of negect aready amountng to "abandonment" of a rght after a party
had remaned sent for qute a ong tme durng whch pettoner had been openy
usng the trademark n queston. Such nacton on the part of respondent enttes
pettoner to the equtabe prncpe of aches.
YKK cannot be aowed to benet from a TM t has no used and based on whch
pettoner had acqured good fath and reputaton. To do so woud be nequtabe and
un|ust.
Unn' C'mmercial Enter(rises %. General "illing C'r('rati'n !All "'ntana#
Genera Mng ed an appcaton for the regstraton of TM A Montana whch t
used for sae of wheat our.
Sad TM was however aready regstered to Unno as the dstrbutor of the brand n
the Phppnes. Unno avers that t had begun usng the mark snce 1956 as ndentor
or broker for SH Huang Bros.
SC: The rght to regster trademark s based on ownershp.
4
When the appcant s
not the owner of the trademark beng apped for, he has no rght to appy for the
regstraton of the same.
5
Under the Trademark Law ony the owner of the
trademark, trade name or servce mark used to dstngush hs goods, busness or
servce from the goods, busness or servce of others s entted to regster the
same.
Ony when the mporter s aowed by the owner of the TM may he regster t under
hs name.
Evdence showed that the trademark "A Montana" was owned and regstered n the
name of Centenna Ms, Inc. whch ater transferred t to respondent Genera
Mng Corporaton by way of a deed of assgnment. It s undsputed that way back
n March, 1955, Centenna Ms, Inc. under the tradename Wenatchee Mng Co.,
exported our to the Phppnes, through ts dstrbutor, heren pettoner Unno
Commerca Enterprses, Inc. whch acted as ndentor or broker for the rm S. H.
Huang Bros. & Co. However, because of ncreased taxes and subsdes, Centenna
Ms dscontnued shpments of our n the Phppnes and eventuay sod ts
brands for wheat our, ncudng "A Montana" brand to respondent Genera Mng
Corporaton n consderaton of 1,000 shares of stock of respondent corporaton wth
a par vaue of P100.00 per share or a tota of P100,000.00.
Ownershp of TM s not acqured by mere regstraton. It merey creates a prma
face presumpton of vadty and ownershp and may be overturned.
Can'n Kaushiki Kaisha %. CA
Prvate respondent regstered the TM Canon for sandas.
Pettoner, a |apanese corporaton opposed sad regstraton.
SC: Ordnary, the ownershp of a trademark or tradename s a property rght that
the owner s entted to protect
4
as mandated by the Trademark Law.
5
However,
when a trademark s used by a party for a product n whch the other party does not
dea, the use of the same trademark on the atter's product cannot be vady
ob|ected to.
Canon |apan sod pants, dyestuh etc.
Canon Ph ses sandas and footwear.
There s a word of dherence. There s no confuson snce they do not compete.
Trade names are not automatcay protected. Athough the treaty of Pars w grant
protecton f a trade name s we known Canon had not fued the requrements
for t to be so to wt:
a) the mark must be nternatonay known;
b) the sub|ect of the rght must be a trademark, not a patent or copyrght or
anythng ese;
c) the mark must be for use n the same or smar knds of goods; and
d) the person camng must be the owner of the mark
The Pettoner s usng the mark "CANON" for products beongng to cass 2 (pants,
chemca products) whe the Respondent s usng the same mark for sandas (cass
25). Hence, Pettoner's contenton that ts mark s we-known at the tme the
Respondent ed ts appcaton for the same mark shoud fa.
Emerald Garment %. CA !St$listic "r. Lee#
HD Lee Co a foregn corporaton ed wth the Bureau of Patents for the canceaton
of the TM Stystc Mr. Lee as t cosey resembes ther TM Lee whch s aso
engaged n the sae of smar cothng goods.
Usng the domnancy test the Drector of Patents found the word Lee as the
domnant feature and concuded that pettoners brand s nfrngng.
CA amrmed.
SC: As to estoppes by aches, pettoners contenton was dened.
The tme ony runs from pubcaton n the OG not n regstraton. Pubshed 1980,
1981 Lee ed for canceaton. No aches.
As to smarty between the marks:
Appyng the foregong tenets to the present controversy and takng nto account
the factua crcumstances of ths case, we consdered the trademarks nvoved as a
whoe and rue that pettoner's "STYLISTIC MR. LEE" s not confusngy smar to
prvate respondent's "LEE" trademark.
Pettoner's trademark s the whoe "STYLISTIC MR. LEE." Athough on ts abe the
word "LEE" s promnent, the trademark shoud be consdered as a whoe and not
pecemea. The dssmartes between the two marks become conspcuous,
notceabe and substanta enough to matter especay n the ght of the foowng
varabes that must be factored n.
Court took nto consderaton the purchasers who are unkey to be confused snce
the purchase of |eans s no cheap matter and requres a eve of nqury from the
buyer.
Registrailit$
Ang %. Te'd'r' !Ang Tia$#
Teodoro - used ang Tbay for shoes, snce 1910
Ang - used and regstered Ang Tbay for pants and pants snce 1937
Ang argued that the phrase Ang Tbay s an ad|ectve that cannot be approprated.
SC:
1. It was not descrptve - Ang Tbay s not descrptve. It s used n a fancfu
way as an excamaton denotng strength and durabty.
2. 2
nd
meanng - We have sad that the phrase "Ang Tbay," beng nether
geographc nor descrptve, was orgnay capabe of excusve appropraton
as a trade-mark. But were t not so, the appcaton of the doctrne of
secondary meanng made by the Court of Appeas coud nevertheess be fuy
sustaned because, n any event, by respondent's ong and excusve use of
sad phrase wth reference to hs products and hs busness, t has acqured a
propretary connotaton.
3. Goods are of smar kn. They are the same genera cass of merchandse -
cothng and appare. Athough two noncompetng artces may be cassed
under two dherent casses by the Patent Omce because they are deemed not
to possess the same descrptve propertes, they woud, nevertheess, be hed
by the courts to beong to the same cass f the smutaneous use on them of
dentca or cosey smar trade-marks woud be key to cause confuson as
to the orgn, or persona source, of the second user's goods. They woud be
consdered as not fang under the same cass ony f they are so dssmar or
so foregn to each other as to make t unkey that the purchaser woud thnk
the rst user made the second user's goods.
4. Even f the 2 are not competng, the court w st deny the regstraton of an
dentca mark of a non competng product f t causes confuson as to the
orgn of the sad goods and that such can cause n|ury to the orgna
trademark.
Ang Si .eng %. 3ellingt'n St're
Panths- regstered hoders of trademark Wengton for manufacture of shrts,
pants etc for men and women snce 1938. They however dd not renew the sad
trademarks after 1946.
Respondent regstered Wengton Department Store on 1946 and ses toys,
shoes, hats, bags etc
SC: Wengton s a geographca name or the name of a person. It cannot be
approprated.
As the term cannot be approprated as a trademark or a trade name, no acton for
voaton thereof can be mantaned, as none s granted by the statute n such
cases. The rght to damages and for an n|uncton for nfrngement of a trademark or
a trade name s granted ony to those entted to the excusve use of a regstered
trademark or trade name.
No evdence was adduced to show that customers of pettoner were confused or
deceved nto buyng from respondent.
There can be no confuson, one ses shrts, the other s a store whch do not even
se pettoners shrts.
R'mer' %. "aiden 4'rm 5rassiere !Adagi'#
Respondent, a foregn company, apped for regstraton of Adago for brasseres n
1937.
Pettoner ed for canceaton of trademark averrng that the term has acqured a
common meanng descrptve of a partcuar stye of bra and was thus unregstrabe.
In fact oca bra companes had been usng the TM snce 1948 wth no ob|ecton by
the respondent.
SC: sad term was fancfuy used by the respondent whch was orgnay a musc
term. It s not common.
It s not true that respondent dd not ob|ect, t sent warnngs and even pubshed
such n a newspaper.
Wde dssemnaton does not render nute a trademark. It s the resut of hardwork
and ehort by the mark hoder, to hod otherwse woud make every popuar
trademark unregstrabe.
Pettoner contends that Adago s a stye of bra thus non-regstrabe.
Brasseres are usuay of dherent types or styes, and appeee has used dherent
trademarks for every type as shown by ts abes, Exhbts W-2 (Etude), W-3
(Chansonette), W-4 (Preude), W-5 (Madenette), and W-6, (Overture). The mere fact
that appeee uses "Adago" for one type or stye, does not ahect the vadty of such
word as a trademark.
As to abandonment: . 'To estabsh the defense of abandonment, t s necessary to
show not ony acts ndcatng a practca abandonment, but an actua ntenton to
abandon.
Che %. Phil Patent 6*ce !7+8 S'a(#
Che - apped for regstraton of X7 for aundry soap
Sy - had been usng TM X7 for perfume, pstck and na posh
SC: the fact that appeee has not yet used the trademark "X-7" on granuated soap,
the product on whch appeant wants to use the sad trademark. The
circumstance ') n'n+actual use ') the mark 'n granulated s'a( $
a((ellee0 d'es n't detract )r'm the )act that he has alread$ a right t'
such a trademark and sh'uld0 there)'re0 e (r'tected. The observaton of the
Drector of Patents to the ehect that "the average purchasers are key to assocate
X-7 aundry soap wth X-7 perfume, pstck and na posh or to thnk that the
products have common orgn or sponsorshp," s ndeed we taken.
Whe t s no onger necessary to estabsh that the goods of the partes possess the
same descrptve propertes, as prevousy requred under the Trade Mark Act of
1905, regstraton of a trademark shoud be refused n cases where there s a
kehood of confuson, mstake, or decepton, even though the goods fa nto
dherent categores.
Sterling %. 5a$er
SPI - uses TM Bayer and Bayer Cross n crce for bayer asprn, caasprna and
asprn for chdren and nothng ese.
Bayer - uses SPIs mark (cross n crce) for sae of Fodo.
Hstorcay:
SPI bought from Amercan property custodan the assets and property of
Bayer Co., a subsdary of the German FFB.
Due to dsagreements, FFB agreed not to contest others rghts to the Bayer
TM n the US and the Phppnes.
SPI arrved n the Ph before WWII and used and regstered the sad TM.
In 1958, AMATCO came to the PH seng Fodo aso usng the sad mark but
under FFB.
SC:
1. SPIs TM s regstered for Medcnes, not chemcas or nsectcdes. Adopton s
not use. The aw on TM requres enumeraton of tems where the TM s
ntended and actuay used.
2. FFB was the rst to use the Bayer TM. SPI merey rode on the popuarty of
the German brand usng ts popuarty n the pubcs mnd that t s one and
the same brand. Thus no damage s suhered by SPI.
Court would determine infringement on a case-to-case basis. In this case, the court
took into consideration factual and historical circumstances surrounding the case
instead of merely relying on the Ang Tibay doctrine of prohibition against goods of
similar kin. In this case, both parties were allowed to use their respective TMs as
they had in their own rights acuired the same through lawful means.
Gariel %. Pere1 !3'nder 5eaut$ S'a(#
Petton to cance TM Wonder regstered by Dr. Perez for non use and frauduent
acquston.
1961- Perez regstered Wonder soap.
Gabre - cams that her appcaton was on 1960 and use began on 1959
Dr. Perez nvented the soap, then authorzed Gabre to dstrbute. Gabre spent
money for the advertsement of the product known as Dr. Perez Beachng Beauty
Soap.
"Therefore, t cannot be dened that the Respondent s the orgnator and
manufacturer of the so-caed "Dr. Perez !onder Beauty Soap," a phrase ceary
coned by, and assocated wth, the Respondent. As such, the connotaton n tsef s
sumcent to cothe the product as an tem or a commodty emanatng from a
partcuary dented source who s none other than Dr. |ose R. Perez. The words
serve as an ndcaton of orgn, and the product dented by the words can never
be regarded as havng emanated or orgnated from another ndvdua, typca of
whch s the Pettoner, mere dstrbutor."
The agreement provdes that the pettoner "has the excusve rght of ownershp of
the packages and that sad party s responsbe for the costs as we as the desgn
and manner of packng the same" dd not necessary grant her the rght to the
excusve use of the trademark; because the agreement never mentoned transfer
of ownershp of the trademark. It merey empowers the pettoner as excusve
dstrbutor to own the package and to create a desgn at her peasure, but not the
rght to approprate unto hersef the soe ownershp of the trademark so as to entte
her to regstraton n the Patent Omce.
Perez ony found out ater that Gabre had been manufacturng her own soaps and
pacng them n the packages contanng hs name and trademark.
Phili((ine Re,ning C'. %. Ng Sam !Camia#
Ng Sam - ham
PRC - ard, butter, cookng o and soap
PRC- regstered sad TM snce 1922
Sam - 1960 n Ioo
SC: A rudmentary precept n trademark protecton s that "the rght to a trademark
s a mted one, n the sense that others may used the same mark on unreated
goods."
Regstraton of a trademark whch so resembes another aready regstered or n use
shoud be dened, where to aow such regstraton coud key resut n confuson,
mstake or decepton to the consumers. Conversey, where no confuson s key to
arse, as n ths case, regstraton of a smar or even Identca mark may be
aowed.
It has been hed that f a mark s so commonpace that t cannot be ready
dstngushed from others, then t s apparent that t cannot Identfy a partcuar
busness; and he who rst adopted t cannot be n|ured by any subsequent
appropraton or mtaton by others, and the pubc w not be deceved."
In fact Camia is registered by two other companies for sale of di"erent products
#te$tiles, yarn, garments etc%
In ne, We hod that the busnesss of the partes are non-compettve and ther
products so unreated that the use of Identca trademarks s not key to gve rse to
confuson, much ess cause damage to pettoner.
Ess' Standard Eastern Inc %. CA !Ess'#
Esso - petroeum products snce 1962
Unted Cgarette Corporaton - cgarettes, upon acqurng from La Orenta Tobacco
n 1963
SC: It s undsputed that the goods on whch pettoner uses the trademark ESSO,
petroeum products, and the product of respondent, cgarettes, are non-competng.
But as to whether trademark nfrngement exsts depends for the most part upon
whether or not the goods are so related that the pubc may be, or s actuay,
deceved and msed that they came from the same maker or manufacturer.
Goods are reated when they beong to the same cass or have the same descrptve
propertes; when they possess the same physca attrbutes or essenta
characterstcs wth reference to ther form, composton, texture or quaty. They
may aso be reated because they serve the same purpose or are sod n grocery
stores.
99
Thus, bscuts were hed reated to mk because they are both food
products.
9:
Soap and perfume, pstck and na posh are smary reated because
they are common househod tems now a days.
In the stuaton before us, the goods are obvousy dherent from each other wth
"absoutey no ota of smtude"
Another factor that shows that the goods nvoved are non-compettve and non-
reated s the appeate court's ndng that they ow through dherent channes of
trade, thus: "The products of each party move aong and are dsposed through
dherent channes of dstrbuton. The (pettoner's) products are dstrbuted
prncpay through gasone servce and ubrcaton statons, automotve shops and
hardware stores. On the other hand, the (respondent's) cgarettes are sod n sar-
sar stores, grocery stores, and other sma dstrbutor outets. (Respondent's)
cgarettes are even pedded n the streets whe (pettoner's) 'gasu' burners are
not. Fnay, there s a marked dstncton between o and tobacco, as we as
between petroeum and cgarettes. Evdenty, n knd and nature the products of
(respondent) and of (pettoner) are poes apart."
C'n%erse %. Uni%ersal Ruer
Respondent apped for regstraton of trademark Unversa Converse and devce
whch was opposed by pettoner as t was confusngy smar to ther corporate
name Converse Rubber Corporaton snce t used the word Converse.
Issue: Whether or not the respondent's parta appropraton of pettoner's
corporate name s of such character that t s cacuated to deceve or confuse the
pubc to the n|ury of the pettoner to whch the name beongs.
SC: From a cursory apprecaton of the pettoner's corporate name "CONVERSE
RUBBER CORPORATION,' t s evdent that the word "CONVERSE" s the domnant
word whch Identes pettoner from other corporatons engaged n smar
busness. Respondent, n the stpuaton of facts, admtted pettoner's exstence
snce 1946 as a duy organzed foregn corporaton engaged n the manufacture of
rubber shoes. Ths admsson necessary betrays ts knowedge of the reputaton
and busness of pettoner even before t apped for regstraton of the trademark n
queston. Kn'&ing0 there)'re0 that the &'rd ;C6N<ERSE; el'ngs t' and is
eing used $ (etiti'ner0 and is in )act the d'minant &'rd in (etiti'ner=s
c'r('rate name0 res('ndent has n' right t' a((r'(riate the same )'r use
'n its (r'ducts &hich are similar t' th'se eing (r'duced $ (etiti'ner.
A corporaton s entted to the canceaton of a mark that s confusngy
smar to ts corporate name." "Appropraton by another of the domnant
part of a corporate name s an nfrngement."
By appropratng the word "CONVERSE," respondent's products are key to be
mstaken as havng been produced by pettoner. "The rsk of damage s not mted
to a possbe confuson of goods but aso ncudes confuson of reputaton f the
pubc coud reasonaby assume that the goods of the partes orgnated from the
same source.
... 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.
Ca(acit$ t' Sue ') 4'reign C'r('rati'ns
General Garments C'r('rati'n %. >irect'r ') Patents !Puritan#
GGC - regstered TM Purtan snce 1962 for mens wear.
Purtan sportswear ed acton for canceaton of TM.
May a foreign corporation, unlicensed and not doing business in the country &le for
cancellation of an identical local TM'
SC: A foregn corporaton whch has never done ... busness n the Phppne Isands
and whch s uncensed and unregstered to do busness here, but is widely and
favorably known in the Islands through the use therein of its products bearing its
corporate and trade name has a ega rght to mantan an acton n the Isands.
The rght to the use of the corporate or trade name s a property rght, a rght n
rem, whch t may assert and protect n any of the courts of the word - even n
|ursdctons where t does not transact busness - |ust the same as t may protect
ts tangbe property, rea or persona aganst trespass or converson.
Lac'ste %. 4ernande1
Lacoste - French corporaton, marketed ts goods to the PH snce 1964
Hermandas - apped for regstraton n suppementa regster for TM Chemse
Lacoste & Crocode Devce n suppementa regster n 1975
1980 - Lacoste ed for regstraton of TM
1983 - apped for prosecuton of Hermandas for unfar competton and searched
ther premses.
Hermandas opposed sad pettons based on non-capacty of pettoner to sue as t
was not a censed corporaton under Phppne Law.
SC: As eary as 1927, ths Court was, and t st s, of the vew that a foregn
corporaton not dong busness n the Phppnes needs no cense to sue before
Phppne courts for nfrngement of trademark and unfar competton.
This was for a violation of article ()* of the +,C. The aggrieved party is not merely
-aCoste but the .tate.
In accordance wth nternatona treates and recprocty, the Phppnes shoud
accord to foregn companes the same protecton they accord to us. Thusy the
Drector of patents had ssued a drectve to re|ect a pendng appcatons for
Phppne regstraton of sgnature and other word famous trademarks by
appcants other than ts orgna owners or users.
Hemandas reed heavy beow and before us on the argument that t s the hoder
of a certcate of regstraton of the trademark "CHEMISE LACOSTE & CROCODILE
DEVICE". Sgncanty, such regstraton s ony n the Suppementa Regster.
A certcate of regstraton n the Suppementa Regster s not prima facie evdence
of the vadty of regstraton, of the regstrant's excusve rght to use the same n
connecton wth the goods, busness, or servces speced n the certcate. Such a
certcate of regstraton cannot be ed, wth ehect, wth the Bureau of Customs n
order to excude from the Phppnes, foregn goods bearng nfrngement marks or
trade names.
A suppementa regster s provded for the regstraton of marks whch are not
regstrabe on the prncpa regster because of some defects (conversey, defects
whch make a mark unregstrabe on the prncpa regster, yet do not bar them from
the suppementa regster.)
Regstraton n the Suppementa Regster, therefore, serves as notce that the
regstrant s usng or has approprated the trademark. By the very fact that the
trademark cannot as yet be entered n the Prncpa Regster, a who dea wth t
shoud be on guard that there are certan defects, some obstaces whch the user
must St overcome before he can cam ega ownershp of the mark or ask the
courts to vndcate hs cams of an excusve rght to the use of the same. It woud
be deceptve for a party wth nothng more than a regstraton n the Suppementa
Regster to posture before courts of |ustce as f the regstraton s n the Prncpa
Regster.
Puma %. IAC
Puma ed for a compant of nfrngement of patent or trademark aganst M-Oro
Manufacturng for use of ts TM and Tradename.
Ctng Lacoste and Converse, SC hed that pettoner has the ega capacty to sue
even f t was a foregn corporaton not dong busness n the Phppnes so ong as t
conforms to the proper procedures and requrements under our aws.
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.
Furthermore, the Phppnes s obgated to assure natonas of countres of the
Unon an ehectve protecton aganst unfar competton n the same way they are
obgated to smary protect Fpno ctzens and rms.
Thus as regards word famous trademarks and tradenames, the Drector of Patents
had drected that any regstraton of the same be mmedatey re|ected.
Kaushi Kaisha Isetan %s. lAC
Kabush Kasha Isetan s a |apanese corporaton, and owner of the trademark
Isetan and the Young eaves desgn. Isetann Department Store, on the other
hand, s a domestc corporaton, and owner of the trademark Isetann and ower
desgn.
Kabush Isetan ed petton for the canceaton of the regstraton of Isetann wth
the Phppne Patent Omce. It aso ed for the canceaton of the mark Isetan from
the corporate name of Isetann Department Store wth the SEC. Both the SEC and
the Drector of Patents, eventuay, rued aganst Kabush Isetan. It appeaed to the
ntermedate Appeate Court, whch dened the petton for beng ed out of tme.
On Appea, Kabush reterated ts argument that t was the rst to regster the sad
trademark n |apan and ts contnued use by prvate respondent s an nfrngement
of ts trademark.
SC: There s no nfrngement. For there to be acquston of a trademark t s
requred that the appcant coud show that there was actual use n commerce n
the Phppnes before t s granted ownershp over t.
In the case at bar, Kabush Isetan has never set foot n Phppne commerce. It has
never conducted busness, nor use the trademark or tradename n the country. It
has no goodw n the country and s vrtuay unknown to ts ctzens. It cannot
therefore be sad that t s entted to the trademark under our aws snce t cannot
be sad that prvate respondent has tred to pass oh as pettoners brand the
formers goods and busness. Isetann Department Store s therefore entted to the
trademark n the Phppnes.
Phili( "'rris Inc. %s. 4'rtune T'acc' C'r('rati'n
GR. 9?@?@A Bune :80 :CCD
Pettoner Php Morrs, Inc., and ts subsdares, s a corporaton organzed under
the aws of the State of Vrgna, Unted States of Amerca, s the regstered owner of
the trademark "MARK VII", MARK TEN and LARK
On the other hand, respondent Fortune Tobacco Corporaton, a company organzed
n the Phppnes, manufactures and ses cgarettes usng the trademark "MARK."
Pettoners ed a compant aganst respondent on the cam that an nfrngement of
ther respectve trademarks has been commtted. Accordngy, they argued that
respondent's use of the trademark "MARK" n ts cgarette products have caused
and s key to cause confuson or mstake, or woud deceve purchasers and the
pubc n genera nto buyng these products under the mpresson and mstaken
beef that they are buyng pettoners' products.
Was there an nfrngement of pettoners trademark?
SCE There was no nfrngement of pettoners trademark.
Pettoner has faed to show that there was pror actua commerca use of any of ts
trademarks n the Phppnes. In fact t has admtted that they are not dong
busness n the country. Nether had they aso proven that ther product s we
known and/or acqured goodw n the Phppnes so as to be entted to protecton
even wthout actua use n the country.
Appyng the Hostc or Totaty test, the Court found strkng dherences that were
sgncant enough to warn any purchaser that one s dherent from the other.
Indeed, athough the perceved ohendng word "MARK" s tsef promnent n
pettoners' trademarks "MARK VII" and "MARK TEN," the entre markng system
shoud be consdered as a whoe and not dssected, because a dscernng eye woud
focus not ony on the predomnant word but aso on the other features appearng n
the abes. Ony then woud such dscernng observer draw hs concuson whether
one mark woud be confusngy smar to the other and whether or not sumcent
dherences exsted between the marks.
Snce the word "MARK," be t aone or n combnaton wth the word "TEN" and the
Roman numera "VII," does not pont to the orgn or ownershp of the cgarettes to
whch they appy, the oca buyng pubc coud not possby be confused or deceved
that respondent's "MARK" s the product of pettoners and/or orgnated from the
U.S.A., Canada or Swtzerand. And est t be overooked, no actua commerca use
of pettoners' marks n oca commerce was proven. There can thus be no occason
for the pubc n ths country, unfamar n the rst pace wth pettoners' marks, to
be confused.