ECOLE DE CUISINE MANILLE V. COINTREAU (G.R. NO.

Issue:
185830)
Whether or not respondent’s prior use of the mark is a requirement
Facts: for its registration.

Respondent Cointreau, a partnership registered under the laws of Ruling: YES.

France, applied for the registration of the mark ‘Le Cordon Bleu &
Device.’ Petitioner Ecole De Cuisine opposed on the ground that it is While the present law on trademarks has dispensed with the
the owner of the mark ‘Le Cordon Bleu, Ecole De Cuisine Manille’ requirement of prior actual use at the time of registration, the law in
used in its culinary activities and restaurant business and that the force at the time of registration must be applied. Under the provisions
registration will create confusion to the public. Respondent Cointreau of the former trademark law, R.A. No. 166, as amended, hence, the
answered claiming it is the true and lawful owner of the mark and law in force at the time of respondent’s application for registration of
had long been using it worldwide. The IPO Bureau of Legal Affairs trademark, the root of ownership of a trademark is actual use in
sustained petitioner’s opposition stating that Cointreau had no prior commerce. Section 2 of said law requires that before a trademark can
use of the mark in the Philippines to be entitled to a proprietary right be registered, it must have been actually used in commerce and
over it. The IPO Director General reversed the decision and allowed service for not less than two months in the Philippines prior to the
the mark’s registration holding that under RA No. 166, actual use in filing of an application for its registration. Trademark is a creation of
the Philippines is not necessary to acquire ownership of the mark. use and therefore actual use is a pre-requisite to exclusive ownership
and its registration with the Philippine Patent Office is a mere
Issue: administrative confirmation of the existence of such right.

Whether or not respondent’s prior use of the mark is a requirement While the petitioners may not have qualified under Section 2 of R.A.
for its registration. No. 166 as a registrant, neither did respondent DGCI, since the latter
also failed to fulfill the 2-month actual use requirement. What is
Ruling: YES. worse, DGCI was not even the owner of the mark. For it to have been
the owner, the mark must not have been already appropriated (i.e.,
Under Section 2 of R.A. No. 166, in order to register a trademark, used) by someone else. At the time of respondent DGCI’s registration
one must be the owner thereof and must have actually used the mark of the mark, the same was already being used by the petitioners,
in commerce in the Philippines for 2 months prior to the application albeit abroad, of which DGCI’s president was fully aware.
for registration. Section 2-A of the same law sets out to define how
one goes about acquiring ownership thereof. Under Section 2-A, it is SOCIETE DES PRODUIT NESTLE , NA vs MARTIN T. DY,
clear that actual use in commerce is also the test of ownership but the JR.
provision went further by saying that the mark must not have been so
appropriated by another. Additionally, it is significant to note that The Case
Section 2-A does not require that the actual use of a trademark must
be within the Philippines. Thus, as correctly mentioned by the CA, This is a petition for review on certiorari under Rule 45 of the Rules
under R.A. No. 166, one may be an owner of a mark due to its actual of Court. The petition challenges the 1 September 2005 Decision and
use but may not yet have the right to register such ownership here 4 April 2006 Resolution of the Court of Appeals in CA-G.R. CV No.
due to the owner’s failure to use the same in the Philippines for 2 62730, finding respondent Martin T. Dy, Jr. (Dy, Jr.) not liable for
months prior to registration. In the instant case, it is undisputed that trademark infringement. The Court of Appeals reversed the 18
Cointreau has been using the subject mark in France, prior to Ecole’s September 1998 Decision of the Regional Trial Court (RTC), Judicial
averred first use of the same in the Philippines, of which the latter Region 7, Branch 9, Cebu City, in Civil Case No. CEB-19345.
was fully aware thereof. On the other hand, Ecole has no certificate
of registration over the subject mark but only a pending application. The Facts
Under the foregoing circumstances, even if Ecole was the first to use
Petitioner Societe Des Produits Nestle, S.A. (Nestle) is a foreign
the mark in the Philippines, it cannot be said to have validly
corporation organized under the laws of Switzerland. It manufactures
appropriated the same.
food products and beverages. As evidenced by Certificate of
In any case, the present law on trademarks, Republic Act No. 8293, Registration No. R-14621 issued on 7 April 1969 by the then Bureau
otherwise known as the Intellectual Property Code of the Philippines, of Patents, Trademarks and Technology Transfer, Nestle owns the
as amended, has already dispensed with the requirement of prior NAN trademark for its line of infant powdered milk products,
actual use at the time of registration. Thus, there is more reason to consisting of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. NAN is
allow the registration of the subject mark under the name of classified under Class 6 diatetic preparations for infant feeding.
Cointreau as its true and lawful owner.
Nestle distributes and sells its NAN milk products all over the
SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT Philippines.
V. DEVELOPERS GROUP OF COMPANIES (G.R. NO.
Dy, Jr. owns 5M Enterprises. He imports Sunny Boy powdered milk
159938)
from Australia and repacks the powdered milk into three sizes of
Facts: plastic packs bearing the name NANNY. The packs weigh 80, 180
and 450 grams and are sold for P8.90, P17.50 and P39.90,
Respondent DGCI applied for and was granted registration of the respectively. NANNY is is also classified under Class 6 full cream
‘Shangri-La’ mark and ‘S’ logo in its restaurant business. Petitioner milk for adults in [sic] all ages. Dy, Jr. distributes and sells the
Shangri-La, chain of hotels and establishments owned by the Kuok powdered milk in Dumaguete, Negros Oriental, Cagayan de Oro, and
family worldwide, moved to cancel the registration of the mark on parts of Mindanao.
the ground that it was illegally and fraudulently obtained and
appropriated by respondents. Petitioner also moved to register the In a letter dated 1 August 1985, Nestle requested Dy, Jr. to refrain
mark and logo in its own name. Later, respondent DGCI filed before from using NANNY and to undertake that he would stop infringing
the trial court a complaint for infringement against petitioner alleging the NAN trademark. Dy, Jr. did not act on Nestles request. On 1
that DGCI had been the prior exclusive user and the registered owner March 1990, Nestle filed before the RTC, Judicial Region 7, Branch
in the Philippines of said mark and logo. Petitioner Shangri-La 31, Dumaguete City, a complaint against Dy, Jr. for infringement.
argued that respondent had no right to apply for the registration Dy, Jr. filed a motion to dismiss alleging that the complaint did not
because it did not have prior actual commercial use thereof. The trial state a cause of action. In its 4 June 1990 order, the trial court
court found for respondent. CA affirmed. dismissed the complaint. Nestle appealed the 4 June 1990 order to the
Court of Appeals. In its 16 February 1993 Resolution, the Court of The use or application of the infringing mark or trade name is likely
Appeals set aside the 4 June 1990 order and remanded the case to the to cause confusion or mistake or to deceive purchasers or others as to
trial court for further proceedings. the goods or services themselves or as to the source or origin of such
goods or services or the idenity of such business; and
Nestle filed a motion for reconsideration. In its 4 April 2006
Resolution, the Court of Appeals denied the motion for lack of merit. It is without the consent of the trademark or trade name owner or the
Hence, the present petition. assignee thereof.

Issue Among the elements, the element of likelihood of confusion is the

gravamen of trademark infringement. There are two types of
The issue is whether Dy, Jr. is liable for infringement. confusion in trademark infringement: confusion of goods and
confusion of business. In Sterling Products International, Inc. v.
The Courts Ruling Farbenfabriken Bayer Aktiengesellschaft, the Court distinguished the
two types of confusion:
The petition is meritorious.
Callman notes two types of confusion. The first is the confusion of
Section 22 of Republic Act (R.A.) No. 166, as amended, states:
goods in which event the ordinarily prudent purchaser would be
Infringement, what constitutes. Any person who shall use, without induced to purchase one product in the belief that he was purchasing
the consent of the registrant, any reproduction, counterfeit, copy or the other. In which case, defendants goods are then bought as the
colorable imitation of any registered mark or trade-name in plaintiffs, and the poorer quality of the former reflects adversely on
connection with the sale, offering for sale, or advertising of any the plaintiffs reputation. The other is the confusion of business: Here
goods, business or services on or in connection with which such use though the goods of the parties are different, the defendants product
is likely to cause confusion or mistake or to deceive purchasers or is such as might reasonably be assumed to originate with the plaintiff,
others as to the source or origin of such goods or services, or identity and the public would then be deceived either into that belief or into
of such business; or reproduce, counterfeit, copy or colorably imitate the belief that there is some connection between the plaintiff and
any such mark or trade-name and apply such reproduction, defendant which, in fact, does not exist.
counterfeit, copy, or colorable imitation to labels, signs, prints,
There are two tests to determine likelihood of confusion: the
packages, wrappers, receptacles or advertisements intended to be
dominancy test and holistic test. The dominancy test focuses on the
used upon or in connection with such goods, business or services,
similarity of the main, prevalent or essential features of the
shall be liable to a civil action by the registrant for any or all of the
competing trademarks that might cause confusion. Infringement takes
remedies herein provided.
place when the competing trademark contains the essential features
In accordance with Section 22 of R.A. No. 166, as well as Sections 2, of another. Imitation or an effort to imitate is unnecessary. The
2-A, 9-A, and 20 thereof, the following constitute the elements of question is whether the use of the marks is likely to cause confusion
trademark infringement: or deceive purchasers.

(a) A trademark actually used in commerce in the Philippines and The holistic test considers the entirety of the marks, including labels
registered in the principal register of the Philippine Patent Office[;] and packaging, in determining confusing similarity. The focus is not
only on the predominant words but also on the other features
(b) [It] is used by another person in connection with the sale, appearing on the labels.
offering for sale, or advertising of any goods, business or services or
in connection with which such use is likely to cause confusion or Applying the dominancy test in the present case, the Court finds that
mistake or to deceive purchasers or others as to the source or origin NANNY is confusingly similar to NAN. NAN is the prevalent
of such goods or services, or identity of such business; or such feature of Nestles line of infant powdered milk products. It is written
trademark is reproduced, counterfeited, copied or colorably imitated in bold letters and used in all products. The line consists of PRE-
by another person and such reproduction, counterfeit, copy or NAN, NAN-H.A., NAN-1, and NAN-2. Clearly, NANNY contains
colorable imitation is applied to labels, signs, prints, packages, the prevalent feature NAN. The first three letters of NANNY are
wrappers, receptacles or advertisements intended to be used upon or exactly the same as the letters of NAN. When NAN and NANNY are
in connection with such goods, business or services as to likely cause pronounced, the aural effect is confusingly similar.
confusion or mistake or to deceive purchasers[;]
In determining the issue of confusing similarity, the Court takes into
(c) [T]he trademark is used for identical or similar goods[;] and account the aural effect of the letters contained in the marks. In
Marvex Commercial Company, Inc. v. Petra Hawpia & Company,
(d) [S]uch act is done without the consent of the trademark registrant the Court held:
or assignee.
It is our considered view that the trademarks SALONPAS and
On the other hand, the elements of infringement under R.A. No. 8293 LIONPAS are confusingly similar in sound.
are as follows:
Both these words have the same suffix, PAS, which is used to denote
The trademark being infringed is registered in the Intellectual a plaster that adheres to the body with curative powers. PAS, being
Property Office; however, in infringement of trade name, the same merely descriptive, furnishes no indication of the origin of the article
need not be registered; and therefore is open for appropriation by anyone (Ethepa vs.
Director of Patents, L-20635, March 31, 1966) and may properly
The trademark or trade name is reproduced, counterfeited, copied, or become the subject of a trademark by combination with another word
colorably imitated by the infringer; or phrase.

The infringing mark or trade name is used in connection with the The scope of protection afforded to registered trademark owners is
sale, offering for sale, or advertising of any goods, business or not limited to protection from infringers with identical goods. The
services; or the infringing mark or trade name is applied to labels, scope of protection extends to protection from infringers with related
signs, prints, packages, wrappers, receptacles or advertisements goods, and to market areas that are the normal expansion of business
intended to be used upon or in connection with such goods, business of the registered trademark owners. Section 138 of R.A. No. 8293
or services; states:
Certificates of Registration. A certificate of registration of a mark corporate name to discontinue their use. When this recourse failed,
shall be prima facie evidence of validity of the registration, the petitioner moved before the SEC to enforce its exclusive use of the
registrants ownership of the mark, and of the registrants exclusive word ‘Lyceum.’ Petitioner further claimed that the word ‘Lyceum’
right to use the same in connection with the goods or services and has acquired a secondary meaning in its favor. The SEC Hearing
those that are related thereto specified in the certificate. (Emphasis Officer found for petitioner. Both SEC En Banc and CA ruled
supplied) otherwise.

In Mighty Corporation v. E. & J. Gallo Winery, the Court held that, Issues:
Non-competing goods may be those which, though they are not in
actual competition, are so related to each other that it can reasonably (1) Whether or not ‘Lyceum’ is a generic word which cannot be
be assumed that they originate from one manufacturer, in which case, appropriated by petitioner to the exclusion of others.
confusion of business can arise out of the use of similar marks. In that
case, the Court enumerated factors in determining whether goods are (2) Whether or not the word ‘Lyceum’ has acquired a secondary
related: (1) classification of the goods; (2) nature of the goods; (3) meaning in favor of petitioner.
descriptive properties, physical attributes or essential characteristics
(3) Whether or not petitioner is infringed by respondent institutions’
of the goods, with reference to their form, composition, texture or
corporate names.
quality; and (4) style of distribution and marketing of the goods,
including how the goods are displayed and sold. Ruling:
NANNY and NAN have the same classification, descriptive (1) YES. “Lyceum” is in fact as generic in character as the word
properties and physical attributes. Both are classified under Class 6, “university.” In the name of the petitioner, “Lyceum” appears to be a
both are milk products, and both are in powder form. Also, NANNY substitute for “university;” in other places, however, “Lyceum,” or
and NAN are displayed in the same section of stores the milk section. “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
The Court agrees with the lower courts that there are differences
as widespread as the use of “university,” but it is clear that a not
between NAN and NANNY: (1) NAN is intended for infants while
inconsiderable number of educational institutions have adopted
NANNY is intended for children past their infancy and for adults;
“Lyceum” or “Liceo” as part of their corporate names. Since
and (2) NAN is more expensive than NANNY. However, as the
“Lyceum” or “Liceo” denotes a school or institution of learning, it is
registered owner of the NAN mark, Nestle should be free to use its
not unnatural to use this word to designate an entity which is
mark on similar products, in different segments of the market, and at
organized and operating as an educational institution.
different price levels. In McDonalds Corporation v. L.C. Big Mak
Burger, Inc., the Court held that the scope of protection afforded to (2) NO. Under the doctrine of secondary meaning, a word or phrase
registered trademark owners extends to market areas that are the originally incapable of exclusive appropriation with reference to an
normal expansion of business: article in the market, because geographical or otherwise descriptive
might nevertheless have been used so long and so exclusively by one
The registered trademark owner may use his mark on the same or
producer with reference to this article that, in that trade and to that
similar products, in different segments of the market, and at different
group of the purchasing public, the word or phrase has come to mean
price levels depending on variations of the products for specific
that the article was his produce. With the foregoing as a yardstick,
segments of the market. The Court has recognized that the registered
[we] believe the appellant failed to satisfy the aforementioned
trademark owner enjoys protection in product and market areas that
requisites. While the appellant may have proved that it had been
are the normal potential expansion of his business. Thus, the Court
using the word ‘Lyceum’ for a long period of time, this fact alone did
has declared:
not amount to mean that the said word had acquired secondary
Modern law recognizes that the protection to which the owner of a meaning in its favor because the appellant failed to prove that it had
trademark is entitled is not limited to guarding his goods or business been using the same word all by itself to the exclusion of others.
from actual market competition with identical or similar products of More so, there was no evidence presented to prove that confusion
the parties, but extends to all cases in which the use by a junior will surely arise if the same word were to be used by other
appropriator of a trade-mark or trade-name is likely to lead to a educational institutions.
confusion of source, as where prospective purchasers would be
(3) NO. We do not consider that the corporate names of private
misled into thinking that the complaining party has extended his
respondent institutions are “identical with, or deceptively or
business into the field (see 148 ALR 56 et sq; 53 Am. Jur. 576) or is
confusingly similar” to that of the petitioner institution. True enough,
in any way connected with the activities of the infringer; or when it
the corporate names of private respondent entities all carry the word
forestalls the normal potential expansion of his business (v. 148 ALR,
“Lyceum” but confusion and deception are effectively precluded by
77, 84; 52 Am. Jur. 576, 577). (Emphasis supplied)
the appending of geographic names to the word “Lyceum.” Thus, we
WHEREFORE, we GRANT the petition. We SET ASIDE the 1 do not believe that the “Lyceum of Aparri” can be mistaken by the
September 2005 Decision and 4 April 2006 Resolution of the Court general public for the Lyceum of the Philippines, or that the “Lyceum
of Appeals in CA-G.R. CV No. 62730 and REINSTATE the 18 of Camalaniugan” would be confused with the Lyceum of the
September 1998 Decision of the Regional Trial Court, Judicial Philippines. We conclude and so hold that petitioner institution is not
Region 7, Branch 9, Cebu City, in Civil Case No. CEB-19345. entitled to a legally enforceable exclusive right to use the word
“Lyceum” in its corporate name and that other institutions may use
SO ORDERED. “Lyceum” as part of their corporate names.

LYCEUM OF THE PHILIPPINES V. CA (G.R. NO. 101897) FREDCO MANUFACTURING CORPORATION V.

PRESIDENT AND FELLOWS OF HARVARD COLLEGE
Facts: (G.R. NO. 185917)

Petitioner Lyceum of the Philippines had commenced before the SEC Facts:
a proceeding against the Lyceum of Baguio to change its corporate
name alleging that the 2 names are substantially identical because of Petitioner Fredco Manufacturing filed a petition to cancel the
the word ‘Lyceum’. SEC found for petitioner and the SC denied the registration of respondent’s mark ‘Harvard Veritas Shield Symbol’
consequent appeal of Lyceum of Baguio in a resolution. Petitioner used in products such as bags and t-shirts. Fredco alleges that the
then basing its ground on the resolution, wrote to all educational mark ‘Harvard’ was first used and registered by New York Garments,
institutions which made use of the word ‘Lyceum’ as part of their a domestic corporation and its predecessor-in-interest, used in its
clothing articles. Respondent Harvard University on the other hand, exact similarity in sound, spelling, pronunciation, and commercial
alleges that it is the lawful owner of the name and mark in numerous impression of the words "SAN FRANCISCO" which is the dominant
countries worldwide including in the Philippines which was used in portion of respondent’s trade name and petitioner’s trademark. Upon
commerce as early as 1872. Respondent further contend that it never appeal before the office of the Director General of the IPO, the
authorized any person to use its name or mark in connection with any decision of its legal affairs was reversed declaring there was no
goods in the Philippines. The IPO Bureau of Legal Affairs cancelled infringement. The Court of Appeals however set aside its decision
respondent’s registration of the mark but only over the goods which and reinstated the IPO legal affairs’ decision. Petitioner contends that
are confusingly similar with that of petitioner. IPO reversed the the respondent’s trade name is not registered therefore a suit for
decision. CA affirmed. infringement is not available.

Issue: Issue:

Whether or not respondent’s trade name is infringed. Whether or not the petitioner’s use of the trademark "SAN
FRANCISCO COFFEE" constitutes infringement of respondent’s
Ruling: YES. trade name "SAN FRANCISCO COFFEE & ROASTERY, INC.,"
even if the trade name is not registered with the Intellectual Property
Fredco’s use of the mark “Harvard,” coupled with its claimed origin Office (IPO).
in Cambridge, Massachusetts, obviously suggests a false connection
with Harvard University. On this ground alone, Fredco’s registration Ruling:
of the mark “Harvard” should have been disallowed. Indisputably,
Fredco does not have any affiliation or connection with Harvard Registration of a trademark before the IPO is no longer a requirement
University, or even with Cambridge, Massachusetts. Fredco or its to file an action for infringement as provided in Section 165.2 of RA
predecessor New York Garments was not established in 1936, or in 8293. All that is required is that the trade name is previously used in
the U.S.A. as indicated by Fredco in its oblong logo. trade or commerce in the Philippines. There is no showing that
respondent abandoned the use of its trade name as it continues to
Under Philippine law, a trade name of a national of a State that is a embark to conduct research on retailing coffee, import and sell coffee
party to the Paris Convention, whether or not the trade name forms machines as among the services for which the use of the business
part of a trademark, is protected “without the obligation of filing or name has been registered.
registration.” “Harvard” is the trade name of the world famous
Harvard University, and it is also a trademark of Harvard University. The court also laid down two tests to determine similarity and
Under Article 8 of the Paris Convention, as well as Section 37 of likelihood of confusion. The dominancy test focuses on similarity of
R.A. No. 166, Harvard University is entitled to protection in the the prevalent features of the trademarks that could cause deception
Philippines of its trade name “Harvard” even without registration of and confusion that constitutes infringement. Exact duplication or
such trade name in the Philippines. This means that no educational imitation is not required. The question is whether the use of the
entity in the Philippines can use the trade name “Harvard” without marks involved is likely to cause confusion or mistake in the mind of
the consent of Harvard University. Likewise, no entity in the the public or to deceive consumers. the holistic test entails a
Philippines can claim, expressly or impliedly through the use of the consideration of the entirety of the marks as applied to the products,
name and mark “Harvard,” that its products or services are including the labels and packaging, in determining confusing
authorized, approved, or licensed by, or sourced from, Harvard similarity.15 The discerning eye of the observer must focus not only
University without the latter’s consent. on the predominant words but also on the other features appearing on
both marks in order that the observer may draw his conclusion
Coffee Partners, Inc. vs. San Francisco Coffee and Roastery, Inc. whether one is confusingly similar to the other. Applying either the
G.R. No. 169504, March 3, 2010 dominancy test or the holistic test, petitioner’s "SAN FRANCISCO
COFFEE" trademark is a clear infringement of respondent’s "SAN
Facts: FRANCISCO COFFEE & ROASTERY, INC." trade name. The
descriptive words "SAN FRANCISCO COFFEE" are precisely the
The petitioner holds a business in maintaining coffee shops in the
dominant features of respondent’s trade name. And because both are
Philippines. It is registered with the Securities and Exchange
involved in coffee business there is always the high chance that the
Commission in January 2001. In its franchise agreement with Coffee
public will get confused of the source of the coffee sold by the
Partners Ltd, it carries the trademark “San Francisco Coffee.”
petitioner. Respondent has acquired an exclusive right to the use of
Respondent is engaged in the wholesale and retail sale of coffee that
the trade name "SAN FRANCISCO COFFEE & ROASTERY, INC."
was registered in SEC in May 1995 under a registered business name
since the registration of the business name with the DTI in 1995.
of “San Francisco Coffee &Roastery, Inc.” It entered into a joint
venture with Boyd Coffee USA to study coffee carts in malls.

When respondent learned that petitioner will open a coffee shop in

Libis, Q.C. they sent a letter to the petitioner demanding them to stop
using the name “San Francisco Coffee” as it causes confusion to the
minds of the public. A complaint was also filed by respondents
before the Bureau of Legal Affairs of the Intellectual Property Office
for infringement and unfair competition with claims for damages.
Petitioners contend that there are distinct differences in the
appearance of their trademark and that respondent abandoned the use
of their trademark when it joined venture with Boyd Coffee USA.
The Bureau of Legal Affairs of the IPO held that petitioner’s
trademark infringed on the respondent’s trade name as it registered its
business name first with the DTI in 1995 while petitioner only
registered its trademark in 2001.

Furthermore, it ruled that the respondent did not abandon the use of
its trade name upon its joint venture with Boyd Coffee USA since in
order for abandonment to exist it must be permanent, intentional and
voluntary. It also held that petitioner’s use of the trademark "SAN
FRANCISCO COFFEE" will likely cause confusion because of the