Republic of the Philippines

Supreme Court
Manila

SECOND DIVISION

BERRIS AGRICULTURAL G.R. No. 183404

CO., INC.,
Petitioner, Present:

VELASCO, JR., J.,*

NACHURA,**
- versus - Acting Chairperson,
LEONARDO-DE CASTRO,***
BRION,**** and
MENDOZA, JJ.

NORVY ABYADANG, Promulgated:

Respondent.
October 13, 2010

x------------------------------------------------------------------------------------x

DECISION

NACHURA, J.:

This petition for review[1] on certiorari under Rule 45 of the Rules of Court seeks the reversal of the
Decision dated April 14, 2008[2] and the Resolution dated June 18, 2008[3] of the Court of Appeals (CA)
in CA-G.R. SP No. 99928.

The antecedents

On January 16, 2004, respondent Norvy A. Abyadang (Abyadang), proprietor of NS Northern Organic
Fertilizer, with address at No. 43 Lower QM, Baguio City, filed with the Intellectual Property Office
(IPO) a trademark application for the mark NS D-10 PLUS for use in connection with Fungicide (Class 5)
with active ingredient 80% Mancozeb. The application, under Application Serial No. 4-2004-00450, was
given due course and was published in the IPO e-Gazette for opposition on July 28, 2005.

On August 17, 2005, petitioner Berris Agricultural Co., Inc. (Berris), with business address in Barangay
Masiit, Calauan, Laguna, filed with the IPO Bureau of Legal Affairs (IPO-BLA) a Verified Notice of
Opposition[4] against the mark under application allegedly because NS D-10 PLUS is similar and/or
confusingly similar to its registered trademark D-10 80 WP, also used for Fungicide (Class 5) with active
ingredient 80% Mancozeb. The opposition was docketed as IPC No. 14-2005-00099.
After an exchange of pleadings, on April 28, 2006, Director Estrellita Beltran-Abelardo (Director
Abelardo) of the IPO-BLA issued Decision No. 2006-24[5] (BLA decision), the dispositive portion of
which reads

WHEREFORE, viewed in the light of all the foregoing, this Bureau finds and so
holds that Respondent-Applicants mark NS D-10 PLUS is confusingly similar to the
Opposers mark and as such, the opposition is hereby SUSTAINED. Consequently,
trademark application bearing Serial No. 4-2004-00450 for the mark NS D-10
PLUS filed on January 16, 2004 by Norvy A. Ab[yada]ng covering the goods fungicide
under Class 5 of the International Classification of goods is, as it is hereby, REJECTED.

Let the filewrapper of the trademark NS D-10 PLUS subject matter under
consideration be forwarded to the Administrative, Financial and Human Resources
Development Services Bureau (AFHRDSB) for appropriate action in accordance with
this Order with a copy to be furnished the Bureau of Trademark (BOT) for information
and to update its records.

SO ORDERED.[6]

Abyadang filed a motion for reconsideration, and Berris, in turn, filed its opposition to the motion.

On August 2, 2006, Director Abelardo issued Resolution No. 2006-09(D)[7] (BLA resolution), denying the
motion for reconsideration and disposing as follows

IN VIEW OF THE FOREGOING, the Motion for Reconsideration filed by the

Respondent-Applicant is hereby DENIED FOR LACK OF MERIT. Consequently,
Decision No. 2006-24 dated April 28, 2006 STANDS.

Let the filewrapper of the trademark NS D-10 PLUS subject matter under
consideration be forwarded to the Bureau of Trademarks for appropriate action in
accordance with this Resolution.

SO ORDERED.[8]

Aggrieved, Abyadang filed an appeal on August 22, 2006 with the Office of the Director General,
Intellectual Property Philippines (IPPDG), docketed as Appeal No. 14-06-13.

With the filing of the parties respective memoranda, Director General Adrian S. Cristobal, Jr. of the
IPPDG rendered a decision dated July 20, 2007,[9] ruling as follows

Wherefore, premises considered[,] the appeal is hereby DENIED. Accordingly,

the appealed Decision of the Director is hereby AFFIRMED.

Let a copy of this Decision as well as the trademark application and records be
furnished and returned to the Director of Bureau of Legal Affairs for appropriate
action. Further, let also the Directors of the Bureau of Trademarks, the Administrative,
Financial and Human Resources Development Services Bureau, and the library of the
Documentation, Information and Technology Transfer Bureau be furnished a copy of this
Decision for information, guidance, and records purposes.

SO ORDERED.[10]
Undeterred, Abyadang filed a petition for review[11] before the CA.
In its Decision dated April 14, 2008, the CA reversed the IPPDG decision. It held

In sum, the petition should be granted due to the following reasons: 1) petitioners
mark NS D-10 PLUS is not confusingly similar with respondents trademark D-10 80
WP; 2) respondent failed to establish its ownership of the mark D-10 80 WP and 3)
respondents trademark registration for D-10 80 WP may be cancelled in the present case
to avoid multiplicity of suits.

WHEREFORE, the petition is GRANTED. The decision dated July 20, 2007 of
the IPO Director General in Appeal No. 14-06-13 (IPC No. 14-2005-00099)
is REVERSED and SET ASIDE, and a new one is entered giving due course to
petitioners application for registration of the mark NS D-10 PLUS, and canceling
respondents trademark registration for D-10 80 WP.

SO ORDERED.[12]

Berris filed a Motion for Reconsideration, but in its June 18, 2008 Resolution, the CA denied the motion
for lack of merit. Hence, this petition anchored on the following arguments

I. The Honorable Court of Appeals finding that there exists no confusing

similarity between Petitioners and respondents marks is based on
misapprehension of facts, surmise and conjecture and not in accord with the
Intellectual Property Code and applicable Decisions of this Honorable Court
[Supreme Court].
II. The Honorable Court of Appeals Decision reversing and setting aside the
technical findings of the Intellectual Property Office even without a finding or, at
the very least, an allegation of grave abuse of discretion on the part of said
agency is not in accord with law and earlier pronouncements of this Honorable
Court [Supreme Court].

III. The Honorable Court of Appeals Decision ordering the cancellation of herein
Petitioners duly registered and validly existing trademark in the absence of a
properly filed Petition for Cancellation before the Intellectual Property Office is
not in accord with the Intellectual Property Code and applicable Decisions of this
Honorable Court [Supreme Court].[13]

The basic law on trademark, infringement, and unfair competition is Republic Act (R.A.) No.
8293[14] (Intellectual Property Code of the Philippines), specifically Sections 121 to 170 thereof. It took
effect on January 1, 1998. Prior to its effectivity, the applicable law was R.A. No. 166,[15] as amended.

Interestingly, R.A. No. 8293 did not expressly repeal in its entirety R.A. No. 166, but merely
provided in Section 239.1[16]that Acts and parts of Acts inconsistent with it were repealed. In other words,
only in the instances where a substantial and irreconcilable conflict is found between the provisions of
R.A. No. 8293 and of R.A. No. 166 would the provisions of the latter be deemed repealed.

R.A. No. 8293 defines a mark as any visible sign capable of distinguishing the goods (trademark)
or services (service mark) of an enterprise and shall include a stamped or marked container of goods.[17] It
also defines a collective mark as any visible sign designated as such in the application for registration and
capable of distinguishing the origin or any other common characteristic, including the quality of goods or
services of different enterprises which use the sign under the control of the registered owner of the
collective mark.[18]

On the other hand, R.A. No. 166 defines a trademark as any distinctive word, name, symbol,
emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on
his goods to identify and distinguish them from those manufactured, sold, or dealt by another. [19] A
trademark, being a special property, is afforded protection by law. But for one to enjoy this legal
protection, legal protection ownership of the trademark should rightly be established.

The ownership of a trademark is acquired by its registration and its actual use by the
manufacturer or distributor of the goods made available to the purchasing public. Section 122[20] of R.A.
No. 8293 provides that the rights in a mark shall be acquired by means of its valid registration with the
IPO. A certificate of registration of a mark, once issued, constitutes prima facie evidence of the validity of
the registration, of the registrants ownership of the mark, and of the registrants exclusive right to use the
same in connection with the goods or services and those that are related thereto specified in the
certificate.[21] R.A. No. 8293, however, requires the applicant for registration or the registrant to file a
declaration of actual use (DAU) of the mark, with evidence to that effect, within three (3) years from the
filing of the application for registration; otherwise, the application shall be refused or the mark shall be
removed from the register.[22] In other words, the prima facie presumption brought about by the
registration of a mark may be challenged and overcome, in an appropriate action, by proof of the nullity
of the registration or of non-use of the mark, except when excused.[23] Moreover, the presumption may
likewise be defeated by evidence of prior use by another person, i.e., it will controvert a claim of legal
appropriation or of ownership based on registration by a subsequent user. This is because a trademark is a
creation of use and belongs to one who first used it in trade or commerce.[24]

The determination of priority of use of a mark is a question of fact. Adoption of the mark alone
does not suffice. One may make advertisements, issue circulars, distribute price lists on certain goods, but
these alone will not inure to the claim of ownership of the mark until the goods bearing the mark are sold
to the public in the market. Accordingly, receipts, sales invoices, and testimonies of witnesses as
customers, or orders of buyers, best prove the actual use of a mark in trade and commerce during a certain
period of time.[25]
In the instant case, both parties have submitted proof to support their claim of ownership of their
respective trademarks.

Culled from the records, Berris, as oppositor to Abyadangs application for registration of his
trademark, presented the following evidence: (1) its trademark application dated November 29,
2002[26] with Application No. 4-2002-0010272; (2) its IPO certificate of registration dated October 25,
2004,[27] with Registration No. 4-2002-010272 and July 8, 2004 as the date of registration; (3) a
photocopy of its packaging[28] bearing the mark D-10 80 WP; (4) photocopies of its sales invoices and
official receipts;[29] and (5) its notarized DAU dated April 23, 2003,[30] stating that the mark was first used
on June 20, 2002, and indicating that, as proof of actual use, copies of official receipts or sales invoices of
goods using the mark were attached as Annex B.
 On the other hand, Abyadangs proofs consisted of the following: (1) a photocopy of the
packaging[31] for his marketed fungicide bearing mark NS D-10 PLUS; (2) Abyadangs Affidavit dated
February 14, 2006,[32] stating among others that the mark NS D-10 PLUS was his own creation derived
from: N for Norvy, his name; S for Soledad, his wifes name; D the first letter for December, his birth
month; 10 for October, the 10th month of the year, the month of his business name registration; and PLUS
to connote superior quality; that when he applied for registration, there was nobody applying for a mark
similar to NS D-10 PLUS; that he did not know of the existence of Berris or any of its products; that D-10
could not have been associated with Berris because the latter never engaged in any commercial activity to
sell D-10 80 WP fungicide in the local market; and that he could not have copied Berris mark because he
registered his packaging with the Fertilizer and Pesticide Authority (FPA) ahead of Berris; (3)
Certification dated December 19, 2005[33] issued by the FPA, stating that NS D-10 PLUS is owned and
distributed by NS Northern Organic Fertilizer, registered with the FPA since May 26, 2003, and had been
in the market since July 30, 2003; (4) Certification dated October 11, 2005 [34] issued by the FPA, stating
that, per monitoring among dealers in Region I and in the Cordillera Administrative Region registered
with its office, the Regional Officer neither encountered the fungicide with mark D-10 80 WP nor did the
FPA provincial officers from the same area receive any report as to the presence or sale of Berris product;
(5) Certification dated March 14, 2006[35] issued by the FPA, certifying that all pesticides must be
registered with the said office pursuant to Section 9[36] of Presidential Decree (P.D.) No. 1144[37] and
Section 1, Article II of FPA Rules and Regulations No. 1, Series of 1977; (6) Certification dated March
16, 2006[38] issued by the FPA, certifying that the pesticide D-10 80 WP was registered by Berris on
November 12, 2004; and (7) receipts from Sunrise Farm Supply[39] in La Trinidad, Benguet of the sale of
Abyadangs goods referred to as D-10 and D-10+.

Based on their proffered pieces of evidence, both Berris and Abyadang claim to be the prior user
of their respective marks.

We rule in favor of Berris.

Berris was able to establish that it was using its mark D-10 80 WP since June 20, 2002, even
before it filed for its registration with the IPO on November 29, 2002, as shown by its DAU which was
under oath and notarized, bearing the stamp of the Bureau of Trademarks of the IPO on April 25,
2003,[40] and which stated that it had an attachment as Annex B sales invoices and official receipts of
goods bearing the mark. Indeed, the DAU, being a notarized document, especially when received in due
course by the IPO, is evidence of the facts it stated and has the presumption of regularity, entitled to full
faith and credit upon its face. Thus, the burden of proof to overcome the presumption of authenticity and
due execution lies on the party contesting it, and the rebutting evidence should be clear, strong, and
convincing as to preclude all controversy as to the falsity of the certificate. [41] What is more, the DAU is
buttressed by the Certification dated April 21, 2006[42] issued by the Bureau of Trademarks that Berris
mark is still valid and existing.

Hence, we cannot subscribe to the contention of Abyadang that Berris DAU is fraudulent based
only on his assumption that Berris could not have legally used the mark in the sale of its goods way back
in June 2002 because it registered the product with the FPA only on November 12, 2004. As correctly
held by the IPPDG in its decision on Abyadangs appeal, the question of whether or not Berris violated
P.D. No. 1144, because it sold its product without prior registration with the FPA, is a distinct and
separate matter from the jurisdiction and concern of the IPO. Thus, even a determination of violation by
Berris of P.D. No. 1144 would not controvert the fact that it did submit evidence that it had used the mark
D-10 80 WP earlier than its FPA registration in 2004.

Furthermore, even the FPA Certification dated October 11, 2005, stating that the office had
neither encountered nor received reports about the sale of the fungicide D-10 80 WP within Region I and
the Cordillera Administrative Region, could not negate the fact that Berris was selling its product using
that mark in 2002, especially considering that it first traded its goods in Calauan, Laguna, where its
business office is located, as stated in the DAU.

Therefore, Berris, as prior user and prior registrant, is the owner of the mark D-10 80 WP. As
such, Berris has in its favor the rights conferred by Section 147 of R.A. No. 8293, which provides

Sec. 147. Rights Conferred.

147.1. The owner of a registered mark shall have the exclusive right to prevent
all third parties not having the owners consent from using in the course of trade identical
or similar signs or containers for goods or services which are identical or similar to those
in respect of which the trademark is registered where such use would result in a
likelihood of confusion. In case of the use of an identical sign for identical goods or
services, a likelihood of confusion shall be presumed.

147.2. The exclusive right of the owner of a well-known mark defined in

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

Now, we confront the question, Is Abyadangs mark NS D-10 PLUS confusingly similar to that of
Berris D-10 80 WP such that the latter can rightfully prevent the IPO registration of the former?
We answer in the affirmative.

According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered if it is identical with
a registered mark belonging to a different proprietor with an earlier filing or priority date, with respect to:
(1) the same goods or services; (2) closely related goods or services; or (3) near resemblance of such mark
as to likely deceive or cause confusion.

In determining similarity and likelihood of confusion, jurisprudence has developed teststhe

Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the
prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it
required that the mark sought to be registered suggests an effort to imitate. Given more consideration are
the aural and visual impressions created by the marks on the buyers of goods, giving little weight to
factors like prices, quality, sales outlets, and market segments.[43]
 In contrast, the Holistic or Totality Test necessitates a consideration of the entirety of the marks
as applied to the products, including the labels and packaging, in determining confusing similarity. The
discerning eye of the observer must focus not only on the predominant words but also on the other
features appearing on both labels so that the observer may draw conclusion on whether one is confusingly
similar to the other.[44]

Comparing Berris mark D-10 80 WP with Abyadangs mark NS D-10 PLUS, as appearing on their
respective packages, one cannot but notice that both have a common component which is D-10. On Berris
package, the D-10 is written with a bigger font than the 80 WP. Admittedly, the D-10 is the dominant
feature of the mark. The D-10, being at the beginning of the mark, is what is most remembered of
it. Although, it appears in Berris certificate of registration in the same font size as the 80 WP, its
dominancy in the D-10 80 WP mark stands since the difference in the form does not alter its distinctive
character.[45]

Applying the Dominancy Test, it cannot be gainsaid that Abyadangs NS D-10 PLUS is similar to
Berris D-10 80 WP, that confusion or mistake is more likely to occur. Undeniably, both marks pertain to
the same type of goods fungicide with 80% Mancozeb as an active ingredient and used for the same group
of fruits, crops, vegetables, and ornamental plants, using the same dosage and manner of
application. They also belong to the same classification of goods under R.A. No. 8293. Both depictions of
D-10, as found in both marks, are similar in size, such that this portion is what catches the eye of the
purchaser. Undeniably, the likelihood of confusion is present.

This likelihood of confusion and mistake is made more manifest when the Holistic Test is
applied, taking into consideration the packaging, for both use the same type of material (foil type) and
have identical color schemes (red, green, and white); and the marks are both predominantly red in color,
with the same phrase BROAD SPECTRUM FUNGICIDE written underneath.

Considering these striking similarities, predominantly the D-10, the buyers of both products,
mainly farmers, may be misled into thinking that NS D-10 PLUS could be an upgraded formulation of the
D-10 80 WP.

Moreover, notwithstanding the finding of the IPPDG that the D-10 is a fanciful component of the
trademark, created for the sole purpose of functioning as a trademark, and does not give the name,
quality, or description of the product for which it is used, nor does it describe the place of origin, such that
the degree of exclusiveness given to the mark is closely restricted, [46] and considering its challenge by
Abyadang with respect to the meaning he has given to it, what remains is the fact that Berris is the owner
of the mark D-10 80 WP, inclusive of its dominant feature D-10, as established by its prior use, and prior
registration with the IPO. Therefore, Berris properly opposed and the IPO correctly rejected Abyadangs
application for registration of the mark NS D-10 PLUS.

Verily, the protection of trademarks as intellectual property is intended not only to preserve the
goodwill and reputation of the business established on the goods bearing the mark through actual use over
a period of time, but also to safeguard the public as consumers against confusion on these goods. [47] On
this matter of particular concern, administrative agencies, such as the IPO, by reason of their special
knowledge and expertise over matters falling under their jurisdiction, are in a better position to pass
judgment thereon. Thus, their findings of fact in that regard are generally accorded great respect, if not
finality by the courts, as long as they are supported by substantial evidence, even if such evidence might
not be overwhelming or even preponderant. It is not the task of the appellate court to weigh once more the
evidence submitted before the administrative body and to substitute its own judgment for that of the
administrative agency in respect to sufficiency of evidence.[48]

Inasmuch as the ownership of the mark D-10 80 WP fittingly belongs to Berris, and because the
same should not have been cancelled by the CA, we consider it proper not to belabor anymore the issue of
whether cancellation of a registered mark may be done absent a petition for cancellation.

WHEREFORE, the petition is GRANTED. The assailed Decision dated April 14, 2008 and
Resolution dated June 18, 2008 of the Court of Appeals in CA-G.R. SP No. 99928
are REVERSED and SET ASIDE. Accordingly, the Decision No. 2006-24 dated April 28, 2006 and the
Resolution No. 2006-09(D) dated August 2, 2006 in IPC No. 14-2005-00099, and the Decision dated July
20, 2007 in Appeal No. 14-06-13 are REINSTATED. Costs against respondent.

SO ORDERED.