CASE DIGEST

By: Ralph Ken Bacalan

Societe des Produits vs CA (GR No. 112012) April 4, 2001

Facts:

CFC Corporation filed an application for the registration of the trademark FLAVOR MASTER for instant
coffee. Petitioners, a Swiss company and a domestic corporation licensee of Societe, opposed on the
ground that it is confusingly similar to its trademark for coffee and coffee extracts: MASTER ROAST and
MASTER BLEND. Petitioners contend that the dominant word MASTER is present in the 3 trademarks.
Respondent CFC argued that the word MASTER cannot be exclusively appropriated being a descriptive
or generic term.

Issue:

Whether or not the word MASTER is descriptive or generic term incapable of exclusive appropriation.

Ruling: NO.

The word “MASTER” is neither a generic nor a descriptive term. As such, said term cannot be invalidated
as a trademark and, therefore, may be legally protected.
La Chemise Lacoste vs Fernandez (GR No. 65659) May 21, 1984

Facts:

Petitioner La Chemise Lacoste is the owner of the trademarks ‘Lacoste,’ ‘Chemise Lacoste,’ and
‘Crocodile Device’. Hemadas & Co., a domestic firm, applied and was granted registration of the mark
‘Chemise Lacoste and Crocodile Device’ for its garment products. Sometime later, petitioner applied for
the registration of its mark ‘Crocodile Device’ and ‘Lacoste’ but was opposed by herein respondent.
Later, petitioner filed a letter-complaint of unfair competition before the NBI which led to the issuance
of search warrants and the seizure of goods of respondent Hemadas. Respondent moved to quash the
warrants alleging that its trademark was different from petitioner’s trademark. Respondent court ruled
to set aside the warrants and to return the seized goods.

Issue:

Whether or not petitioner’s trademark is a well-known mark protected under the Paris Convention.

Ruling: YES.

In upholding the right of the petitioner to maintain the present suit before our courts for unfair
competition or infringement of trademarks of a foreign corporation, we are moreover recognizing our
duties and the rights of foreign states under the Paris Convention for the Protection of Industrial
Property to which the Philippines and France are parties.
Philip Morris v. CA (G.R. No. 91332) June 9, 2016

Facts:

Petitioners are foreign corporations organized under US laws not doing business in the Philippines and
registered owners of symbols ‘MARK VII,’ ‘MARK TEN,’ and ‘LARK’ used in their cigarette products.
Petitioners moved to enjoin respondent Fortune Tobacco from manufacturing and selling cigarettes
bearing the symbol ‘MARK’ asserting that it is identical or confusingly similar with their trademarks.
Petitioners relied on Section 21-A of the Trademark Law to bring their suit and the Paris Convention to
protect their trademarks. The court denied the prayer for injunction stating that since petitioners are
not doing business in the Philippines, respondent’s cigarettes would not cause irreparable damage to
petitioner. CA granted the injunction but on a subsequent motion, dissolved the writ.

Issues:

(1) Whether or not petitioner’s mark may be afforded protection under said laws;
(2) Whether or not petitioner may be granted injunctive relief.

Ruling:

(1) NO. Yet, insofar as this discourse is concerned, there is no necessity to treat the matter with an
extensive response because adherence of the Philippines to the 1965 international covenant due to pact
sunt servanda had been acknowledged in La Chemise. Given these confluence of existing laws amidst
the cases involving trademarks, there can be no disagreement to the guiding principle in commercial law
that foreign corporations not engaged in business in the Philippines may maintain a cause of action for
infringement primarily because of Section 21-A of the Trademark Law when the legal standing to sue is
(2) NO. More telling are the allegations of petitioners in their complaint as well as in the very petition
filed with this Court indicating that they are not doing business in the Philippines, for these frank
representations are inconsistent and incongruent with any pretense of a right which can breached.
 UNNO COMMERCIAL ENTERPRISES, INCORPORATED, petitioner, vs. GENERAL
MILLING CORPORATION and TIBURCIO S. EVALLE, in his capacity as Director of Patents, respondents.
(G.R. No. L-28554) February 28, 1983

Facts:
General Milling Corporation filed an application for the registration of the trademark "All Mon-tana" to
be used in the sale of wheat flour. In view of the fact that the same trademark was previously registered
in favor of petitioner Unno Commercial Enterprises, Inc.,.

Respondent General Milling Corporation, in its application for registration, alleged that it started using
the trademark "All Montana" on August 31, 1955 and subsequently was licensed to use the same by
Centennial Mills, Inc. by virtue of a deed of assignment executed on September 20, 1962.
Petitioner Unno Commercial Enterprises, Inc. argued that the same trademark had been registered in its
favor on March 8, 1962, asserting that it started using the trademark on June 30, 1956 as inventor or
broker for S.H. Huang Bros. & Co., a local firm.

Issue:

Whether or not herein petitioner is the prior-user of the subject mark.

Ruling:

No.

The right to register trademark is based on owner-ship. When the applicant is not the owner of the
trademark being applied for, he has no right to apply for the registration of the same. Under the
Trademark Law only the owner of the trademark, trade name or service mark used to distinguish his
goods, business or service from the goods, business or service of others is entitled to register it.
The term owner does not include the importer of the goods bearing the trademark, trade name, service
mark, or other mark of ownership, unless such importer is actually the owner thereof in the country
from which the goods are imported. A local importer, however, may make application for the
registration of a foreign trademark, trade name or service mark if he is duly authorized by the actual
owner of the name or other mark of ownership.
Converse Rubber Corporation v. Universal Rubber Products (G.R. No. L-27906) June 9, 2016

Facts:

Universal Rubber applied for the registration of the trademark ‘Universal Converse and Device’ used on
its rubber shoes and rubber slippers. Petitioner Converse opposed on the ground that the trademark
sought to be registered is confusingly similar to the word ‘Converse’ which is part of its corporate name
‘Converse Rubber Corporation’ and will likely deceive purchasers and cause irreparable injury to its
reputation and goodwill in the Philippines. Respondent argued that the trademarks petitioner uses on
its rubber shoes are ‘Chuck Taylor’ and ‘All Star Device.’ The Director of Patents gave due course to
respondent’s application. MR was denied.

Issue:

Whether or not there is confusing similarity between the two trademarks.

Ruling: YES.

The trademark of respondent “UNIVERSAL CONVERSE and DEVICE” is imprinted in a circular manner on
the side of its rubber shoes. In the same manner, the trademark of petitioner which reads “CONVERSE
CHUCK TAYLOR” is imprinted on a circular base attached to the side of its rubber shoes. The
determinative factor in ascertaining whether or not marks are confusingly similar to each other “is not
whether the challenged mark would actually cause confusion or deception of the purchasers but
whether the use of such mark would likely cause confusion or mistake on the part of the buying public.
It would be sufficient, for purposes of the law that the similarity between the two labels is such that
there is a possibility or likelihood of the purchaser of the older brand mistaking the new brand for it.
Bata Industries v CA Digest (G.R. No. L-53672) May 31, 1982

Facts:
The respondent New Olympian Rubber Products sought to register the mark "BATA" for casual rubber
shoe products, alleging it had used the said mark since the 1970s. The petitioner, a Canadian
corporation opposed with its allegations that it owns and has not abandoned said trademark. The
petitioner has no license to do business in the Philippines and the trademark has never been registered
in the Philippines by any foreign entity. Bata Industries does not sell footwear under the said trademark
in the Philippines nor does it have any licensing agreement with any local entity to sell its product.

Evidence show that earlier, even before the World War II, Bata shoes made by Gerbec and Hrdina (Czech
company) were already sold in the country. Some shoes made by the petitioner may have been sold in
the Philippines ntil 1948. On the other hand, respondent spent money and effort to popularize the
trademark "BATA" since the 70's. Moreover, it also secures 3 copyright registrations for the word
"BATA". The Philippine Patent Office (PPO) dismissed the opposition by the petitioner while the Court of
Appeals (CA) reversed said decision. However, a 2nd resolution by the CA affirmed the PPO decision.

Issue: Does the petitioner have the right to protect its goodwill alleged to be threatened with the
registration of the mark?

Held: NO.
Bata Industries has no Philippine goodwill that would be damaged by the registration of the mark.
Any slight goodwill obtained by the product before World War II was completely abandoned and lost in
the more than 35 years that passed since Manila's liberation from Japan. The petitioner never used the
trademark either before or after the war. It is also not the successor-in-interest of Gerbec & Hrdina and
there there was no privity of interest between them, Furthermore, the Czech trademark has long been
abandoned in Czechoslovakia.
Shangri-la International Hotel Management v. DGC (G.R. No. 159938) June 9, 2016

Facts:

Respondent DGCI applied for and was granted registration of the ‘Shangri-La’ mark and ‘S’ logo in its
restaurant business. Petitioner Shangri-La, chain of hotels and establishments owned by the Kuok family
worldwide, moved to cancel the registration of the mark on the ground that it was illegally and
fraudulently obtained and appropriated by respondents. Petitioner also moved to register the mark and
logo in its own name. Later, respondent DGCI filed before the trial court a complaint for infringement
against petitioner alleging that DGCI had been the prior exclusive user and the registered owner in the
Philippines of said mark and logo. Petitioner Shangri-La argued that respondent had no right to apply for
the registration because it did not have prior actual commercial use thereof. The trial court found for
respondent. CA affirmed.

Issue:

Whether or not respondent’s prior use of the mark is a requirement for its registration.

Ruling: YES.

While the present law on trademarks has dispensed with the requirement of prior actual use at the time
of registration, the law in force at the time of registration must be applied. Under the provisions of the
former trademark law, R.A. No. 166, as amended, hence, the law in force at the time of respondent’s
application for registration of trademark, the root of ownership of a trademark is actual use in
commerce. Section 2 of said law requires that before a trademark can be registered, it must have been
actually used in commerce and service for not less than two months in the Philippines prior to the filing
of an application for its registration. Trademark is a creation of use and therefore actual use is a pre-
requisite to exclusive ownership and its registration with the Philippine Patent Office is a mere
administrative confirmation of the existence of such right.

While the petitioners may not have qualified under Section 2 of R.A. No. 166 as a registrant, neither did
respondent DGCI, since the latter also failed to fulfill the 2-month actual use requirement. What is
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., used) by someone else. At the time of respondent DGCI’s
registration of the mark, the same was already being used by the petitioners, albeit abroad, of which
DGCI’s president was fully aware.
DEL MONTE VS. CA (G.R. No. 78325) January 25, 1990

Facts:

Petitioner Del Monte Corporation is a foreign company organized under the laws of the United States
and not engaged in business in the Philippines. Both the Philippines and the United States are
signatories to the Convention of Paris, a treaty which grants to the nationals of the parties rights and
advantages which their own nationals enjoy for the repression of acts of infringement and unfair
competition. On the other hand, petitioner Philippine Packing Corporation (Philpack) is a domestic
corporation duly organized under the laws of the Philippines.

Sometime in 1965, Del Monte authorized Philpack to register with the Philippine Patent Office the Del
Monte catsup bottle configuration, for which it was granted Certificate of Trademark Registration by the
Philippine Patent Office under the Supplemental Register. In 1969, Del Monte granted Philpack the right
to manufacture, distribute and sell in the Philippines various agricultural products, including catsup,
under the Del Monte trademark and logo. In 1972, Del Monte also obtained two registration certificates
for its trademark “DEL MONTE” and its logo.

Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of Registration by the
Bureau of Domestic Trade in 1980 to engage in the manufacture, packing, distribution and sale of
various kinds of sauce, identified by the logo Sunshine Fruit Catsup. The logo was registered in the
Supplemental Register in 1983. Sunshine Sauce’s product itself was contained in various kinds of bottles,
including the Del Monte bottle, which it bought from the junk shops for recycling.

Philpack received reports that Sunshine Sauce was using its exclusively designed bottles and a logo
confusingly similar to Del Monte’s. Philpack warned Sunshine Sauce to desist from doing so on pain of
legal action. Thereafter, claiming that the demand had been ignored, Philpack and Del Monte filed a
complaint against the Sunshine Sauce for infringement of trademark and unfair competition.

Issue(s):

Whether or not Sunshine Sauce is guilty of unfair competition.

Held:
Yes, it is guilty of unfair competition.
The SC compared the Del Monte and Sunshine Sauce’s packaging. While it recognized several
distinctions, it does not agree with the conclusion that there was no infringement or unfair competition.

According to the SC, side-by-side comparison is not the final test of similarity. Such comparison requires
a careful scrutiny to determine in what points the labels of the products differ, as was done by the trial
judge. The ordinary buyer does not usually make such scrutiny nor does he usually have the time to do
so. The average shopper is usually in a hurry and does not inspect every product on the shelf as if he
were browsing in a library.

The question is not whether the two articles are distinguishable by their label when set side by side but
whether the general confusion made by the article upon the eye of the casual purchaser who is
unsuspicious and off his guard, is such as to likely result in his confounding it with the original.
McDonald’s Corporation v. L.C. Big Mak Burger (G.R. No. 143993) June 9, 2016

Facts:

Petitioner McDonald’s, an American corporation operating a global chain of fast-food restaurants, is the
owner of the ‘Big Mac’ mark for its double-decker hamburger sandwich here and in the US. Meanwhile,
respondent L.C., a domestic corporation which operates fast-food outlets and snack vans applied for the
registration of the ‘Big Mak’ mark for its hamburger sandwiches. Petitioner opposed on the ground that
‘Big Mak’ was a colorable imitation of its registered ‘Big Mac’ mark for the same food products.
Respondents denied there is colorable imitation and argued that petitioner cannot exclusively
appropriate the mark ‘Big Mac’ because the word ‘Big’ is a generic and descriptive term. Petitioner filed
a complaint for trademark infringement and unfair competition. The trial court found for petitioners. CA
held otherwise.

Issues:

Whether or not the word ‘Big Mac’ can be exclusively appropriated by petitioner;

Ruling:

YES. A mark is valid if it is “distinctive” and thus not barred from registration under Section 4 of RA 166.
However, once registered, not only the mark’s validity but also the registrant’s ownership of the mark is
prima facie presumed. The “Big Mac” mark, which should be treated in its entirety and not dissected
word for word, is neither generic nor descriptive. Generic marks are commonly used as the name or
description of a kind of goods, such as “Lite” for beer or “Chocolate Fudge” for chocolate soda drink.
Descriptive marks, on the other hand, convey the characteristics, functions, qualities or ingredients of a
product to one who has never seen it or does not know it exists, such as “Arthriticare” for arthritis
medication. On the contrary, “Big Mac” falls under the class of fanciful or arbitrary marks as it bears no
logical relation to the actual characteristics of the product it represents. As such, it is highly distinctive
and thus valid. Significantly, the trademark “Little Debbie” for snack cakes was found arbitrary or
fanciful.
Ang Si Heng v. Wellington Department Store (G.R. No. L-4531) June 9, 2016

Facts:

Plaintiff-appellant Ang Si Heng is a manufacturer of articles of wear and registered owner of the mark
‘Wellington.’ Meanwhile, defendant is a store for different articles and is registered with the business
name ‘Wellington Department Store.’ Plaintiff Heng filed a complaint for unfair competition against
defendant alleging that the latter’s use of its business name/corporate name deceives the public into
buying defendant’s goods under the mistaken belief that the goods are of plaintiff’s or have the same
source as plaintiff’s goods. The court dismissed the complaint.

Issue:

Whether or not defendant has misled the public constitutive of unfair competition.

Ruling: NO.

While there is similarity between the trademark or trade name “Wellington Department Store,” no
confusion or deception can possibly result or arise from such similarity because the latter is a
“department store,” while the former does purport to be so. The name “Wellington” is admittedly the
name of the trademark on the shirts, pants, drawers, and other articles of wear for men, women and
children, whereas the name used by the defendant indicates not these manufactured articles or any
similar merchandise, but a department store. Neither can the public be said to be deceived into the
belief that the goods being sold in defendant’s store originate from the plaintiffs, because the evidence
shows that defendant’s store sells no shirts or wear bearing the trademark “Wellington,” but other
trademarks. Neither could such deception be by any possibility produced because defendant’s store is
situated on the Escolta, while plaintiffs’ store or place of business is located in another business district
far away from the Escolta. The mere fact that two or more customers of the plaintiffs thought of the
probable identity of the products sold by one and the other is not sufficient proof of the supposed
confusion that the public has been led into by the use of the name adopted by the defendants. As we
have stated, appellant have not shown any well-established reputation or goodwill previous to the
establishment of appellees’ business, such that it can be said that something was unfairly taken by the
use of such reputation by the appellees’ department store. We agree, therefore, with the trial court that
plaintiffs-appellants have not been able to show the existence of a cause of action for unfair
competition against the defendants-appellees.
Etepha v. Director of Patents (G.R. No. L-20635) June 9, 2016

Facts:
Respondent Westmont Pharmaceuticals, an American corporation, sought registration of trademark
‘Atussin’ placed on its medicinal preparation for the treatment of coughs. Petitioner Etepha, owner of
the trademark ‘Pertussin’ placed also on preparation for cough treatment, objected claiming that it will
be damaged since the 2 marks are confusingly similar. The Director of Patents gave due course to the
application.

Issue:

Whether or not petitioner’s trademark is registrable.

Ruling: YES.

That the word “tussin” figures as a component of both trademarks is nothing to wonder at. The Director
of Patents aptly observes that it is “the common practice in the drug and pharmaceutical industries to
‘fabricate’ marks by using syllables or words suggestive of the ailments for which they are intended and
adding thereto distinctive prefixes or suffixes”. And appropriately to be considered now is the fact that,
concededly, the “tussin” (in Pertussin and Atussin) was derived from the Latin root-word “tussis”
meaning cough.

“Tussin” is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of the
goods; it is open for appropriation by anyone. It is accordingly barred from registration as trademark.
With jurisprudence holding the line, we feel safe in making the statement that any other conclusion
would result in “appellant having practically a monopoly” of the word “tussin” in a trademark. While
“tussin” by itself cannot thus be used exclusively to identify one’s goods, it may properly become the
subject of a trademark “by combination with another word or phrase”. And this union of words is
reflected in petitioner’s Pertussin and respondent’s Atussin, the first with prefix “Per” and the second
with Prefix “A.”
PHILIPPINE NUT INDUSTRY, INC. vs. STANDARD BRANDS INCORPORATED and TIBURCIO S. EVALLE as
Director of Patents
(G.R. No. L-23035) July 31, 1975

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.

Facts:

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.

Issue:

Are the goods or articles or which the two trademarks are used similar or belong to the same class of
merchandise?

Ruling:

Yes, pants and shirts are goods closely similar to shoes and slippers. They belong to the same class of
merchandise as shoes and slippers. They are closely related goods.
The Supreme Court affirmed the judgment of the Court of Appeals and added that “although two non-
competing articles may be classified under to different classes by the Patent Office because they are
deemed not to possess the same descriptive properties, they would, nevertheless, be held by the courts
to belong to the same class if the simultaneous use on them of identical or closely similar trademarks
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 dissimilar or so foreign to each
other as to make it unlikely that the purchaser would think that the first user made the second user’s
goods”.
Hickok v CA Digest (G.R. No. L-44707) August 31, 1982

Facts:
Petitioner is a foreign corporation and all its products are manufactures by Quality House Inc. The latter
pays royalty to the petitioner. Hickok registered the trademark 'Hickok' earlier and used it in the sale of
leather wallets, key cases, money folds, belts, men’s underwear, neckties, hankies, and men's socks. While
Sam Bun Liong used the same trademark in the sale of Marikina shoes. Both products have different
channels of trade. The Patent Office did not grant the registration, but the Court of Appeals reversed the
PPO decision.

Issue: Is there infringement in this case?

NONE. Emphasis should be on the similarity of the products involves and not on the arbitrary classification
or the general description of their properties or characteristics. Also, the mere fact that one person has
adopted and used a trademark on his goods does not prevent the adoption and use of the same by others
on unrelated articles of different kind.
There is a different design and coloring of the trademark itself. The 'Hickok' trademark is in red with white
background in the middle of 2 branches of laurel (in light gold) while the one used by Sam Bun Liong is the
word 'Hickok ' in white with gold background between 2 branches of laurel in red with the word 'shoes'
also in red placed below the word 'Hickok'.
American Wire & Cable Company v. Director of Patents (G.R. No. L-26557) June 9, 2016

Facts:

Respondent Central Banahaw Industries applied for the registration of its trademark ‘Dynaflex’ to be
used in electric wires. Petitioner American Wire, authorized user of the mark ‘Duraflex’ placed also on
electric wires, opposed on the ground that the registration of the mark would cause confusion or result
in mistake to purchasers intending to buy their products. The Director of Patents gave due course to the
application holding that the two marks were not similar.

Issue:

Whether or not the two trademarks are confusingly similar.

Ruling: YES.

Earlier rulings of the Court seem to indicate its reliance on the dominancy test or the assessment of the
essential or dominant features in the competing labels to determine whether they are confusingly
similar.

The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not only are
the initial letters and the last half of the appellations identical, but the difference exists only in two out
of the eight literal elements of the designations. Coupled with the fact that both marks cover insulated
flexible wires under class 20; that both products are contained in boxes of the same material, color,
shape and size; that the dominant elements of the front designs are a red circle and a diagonal zigzag
commonly related to a spark or flash of electricity; that the back of both boxes show similar circles of
broken lines with arrows at the center pointing outward, with the identical legend “Cut Out Ring” “Draw
From Inside Circle”, no difficulty is experienced in reaching the conclusion that there is a deceptive
similarity that would lead the purchaser to confuse one product with the other.
AMERICAN CYANAMID COMPANY vs. THE DIRECTOR OF PATENTS (G.R. No. L-23954)April 29, 1977

Facts:

Petitioner to which We shall refer at times as Cyanamid field on April 3, 1959, a petition to cancel
certificate of registration No. 5348 issued on July 6, 1956, in favor of respondent Tiu Chian of the Latter's
trademark SULMETINE used on medicine for the control of infectious coryza and for the prevention of
cold rhinitis, roup, cecal coccidiosis and intestinal coccidiosis of chicken and other domesticated birds.
Cyanamid claims that it is the owner of a trademark SULMET which it had used for many years in the
United States since 1946 and which was duly Registration No. 431929 and which was first used in the
Philippines on May 25, 1950, for which it filed an application for registration of the same in this country
on May 3, 1956. SULMET is the trademark of a veterinary product used, among other purposes, "for the
control of outbreaks of ceal and intestinal coccidiosis in turkeys' and for reducing mortality in pullorum
disease in baby chicks, acute fowl cholera in chickens, turkeys and ducks and anatipistifer disease in
ducks." Through long use in the country, SULMET has become popular and well-known and enjoys
widespread reputation brought about by extensive advertisement and promotion through the media.
Notwithstanding the above, respondent filed an application for registration of SULMETINE as his
trademark on a veterinary product used for the same purposes thereby making respondent's product
confusingly with that of petitioner which is unfair and unjust to the label.

Issue: w/n petitioner correctly claims that respondent's trademark SULMETINE was copied from its
trademark SULMETINE giving rise to a confusion.

Held:
There is no infringement of trademark which justify a cancellation of respondent's registered trademark
SULMETINE.
DERMALINE v. MYRA PHARMACEUTICALS (GR No. 190065) 2010-08-16

Facts:

On October 21, 2006, petitioner Dermaline, Inc. (Dermaline) filed before the Intellectual Property Office
(IPO) an application for registration of the trademark "DERMALINE DERMALINE, INC."

On May 8, 2007, respondent Myra Pharmaceuticals, Inc. (Myra) filed a Verified Opposition[4] alleging
that the trademark sought to be registered by Dermaline so resembles its trademark "DERMALIN" and
will likely cause confusion, mistake and deception to the... purchasing public.

Issues:

The CA likewise denied Dermaline's motion for reconsideration; hence, this petition raising the... issue of
whether the CA erred in upholding the IPO's rejection of Dermaline's application for registration of
trademark.

Ruling:

In determining likelihood of confusion, case law has developed two (2) tests, the Dominancy Test and
the Holistic or Totality Test.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks
that might cause confusion or deception.

The important issue is... whether the use of the marks involved would likely cause confusion or mistake
in the mind of or deceive the ordinary purchaser, or one who is accustomed to buy, and therefore to
some extent familiar with, the goods in question.
Asia Brewery vs. CA(GR 103543) 5 July 1993

FACTS:

San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of
trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER product
which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer market.

RULING:
The Court ruled that petitioner ABI was guilty of neither infringement nor unfair comepetition. The
Court reasoned that neither the sound, spelling or appearance of Beer Pale Pilsen be said to be
confusingly similar to San Miguel Pale Pilsen. The dominant feature of SMC’s trademark is “San Miguel
Pale Pilsen” while ABI’s is “Beer Pale Pilsen”. The word “Beer” does not appear in SMC’s product, nor the
words “San Miguel” appear in ABI’s product. The difference outweigh the similarity, which the court
believed could not possibly create confusion in consumers. The words “Beer”, “pale” and “pilsen” are
generic and/or descriptive words, which could not be exclusively attributable to one company(Sec4(e),
IPR).

The Court also ruled that ABI did not sell its products, passing them off as though they were from
respondent company. There was no showing that ABI’s Beer Pale Pilsen was sold so as to deceive its
consumers as to its origin. Therefore, ABI could not be guilty of unfair competition.
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... n the course of its business, petitioner has registered the
trademark "SKECHERS"[3] and the trademark "S" (within... an oval design)[4] with the Intellectual
Property Office (IPO).

Issues:

whether or not respondent is guilty of trademark infringement.

Ruling:

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

Based on the foregoing, this Court is at a loss as to how the RTC and the CA,in applying the holistic
test,ruled that there was no colorable imitation, when it cannot be any more clear and apparent to this
Court that there is colorable imitation.The dissimilarities between the... shoes are too trifling and
frivolousthat it is indubitable that respondent's products will cause confusion and mistake in the eyes of
the public. Respondent's shoes may not be an exact replica of petitioner's shoes, but the features
andoverall design are so similar and alike... that confusion is highly likely.
AMIGO MANUFACTURING, INC. v. CLUETT PEABODY CO., INC. (G.R. No. 139300) 14 March 2001

FACTS:

Petitioner Amigo Manufacturing, Inc. challenges, under Rule 45 of the Rules of Court, the decision of
the Court of Appeals upholding the judgment of the trial court in favor of respondent Cluett Peabody
Co., Inc. Amigo, a Philippine-based company and a successor-in-interest of Great American Knitting
Mills, Inc., sought the cancellation of the trademark and devices Cluett, a US-based company, was using
on men’s socks and claimed exclusive ownership over it. Amigo vs. Cluett Amigo Cluett Brand name:
GOLD TOE Brand name: GOLD TOP DEVICE: representation of a sock and magnifying glass on the
toe of a sock consisting of a ‘plurality of gold colored lines arranged in parallel relation within
triangular are of toe of the stocking and spread from each other by lines of contrasting color of the
major part of the stocking DEVICE: has dominant color white at the center and a blackish brown
background with a magnified design of the socks garter, and is labeled ‘Amigo Manufacturing Inc.,
Mandaluyong, Metro Manila, Made in the Philippines. The trial court rendered decision in favor of
Cluett Peabody Co., Inc,. The Court of Appeals affirmed the decision of the trial court: a. There is hardly
any variance in the appearance of the marks GOLD TOP and GOLD TOE since both show a
representation of a man’s foot wearing a sock, and the marks are printed in identical lettering. b. The
finding of the Bureau of Patents that the two trademarks are confusingly and deceptively similar to each
other are binding upon the courts, absent any sufficient evidence to the contrary. c. Amigo’s version is
only registered with the Supplemental Registry which gives no right of exclusivity to the owner and
cannot overturn the presumption of validity and exclusivity given to the registered mark, whereas,
Cluett was able to present Certificates of Registration. d. The Philippines and the United States are
parties to the Paris Convention and by virtue of Philippines’ membership, trademark rights in favor of
the respondent were created.

ISSUES:
1. The date of actual use of the two trademarks;
2. Their confusing similarities;
3. The applicability of the Paris Convention.

RULING: Petition has no merit

Facts:

Petitioner Fruit of the Loom, an American corporation, is the registrant of the trademark ‘Fruit of the
Loom’ covering goods such as underwear and other textile fabrics. Respondent General Garments on
the other hand, is a domestic corporation and a registrant of the trademark ‘Fruit for Eve’ covering
garments similar to petitioner. Alleging respondent’s mark and hang tag is confusingly similar with its
own, petitioner filed a complaint for trademark infringement and unfair competition. The trial court
found for petitioner. CA reversed the judgment.

Issue:

Whether or not respondent’s mark and hang tag is confusingly similar with that of petitioner.

Ruling: NO.

WE agree with the respondent court that by mere pronouncing the two marks, it could hardly be said
that it will provoke a confusion as to mistake one for the other. Standing by itself, FRUIT OF THE LOOM is
wholly different from FRUIT FOR EVE. WE do not agree with petitioner that the dominant feature of
both trademarks is the word FRUIT for even in the printing of the trademark in both hang tags, the word
FRUIT is not at all made dominant over the other words. As to the design and coloring scheme of the
hang tags, the shape of petitioner’s hang tag is round with a base that looks like a paper rolled a few
inches in both ends; while that of private respondent is plain rectangle without any base. The designs
differ. Petitioner’s trademark is written in almost semi-circle while that of private respondent is written
in straight line in bigger letters than petitioner’s. Private respondent’s tag has only an apple in its center
but that of petitioner has also clusters of grapes that surround the apple in the center. The colors of the
hang tag are also very distinct from each other. WE hold that the trademarks FRUIT OF THE LOOM and
FRUIT FOR EVE do not resemble each other as to confuse or deceive an ordinary purchaser. WE hold
that the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE do not resemble each other as to confuse
or deceive an ordinary purchaser.
Lyceum of the Philippines v. CA (G.R. No. 101897) June 9, 2016

Facts:

Petitioner Lyceum of the Philippines had commenced before the SEC 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 consequent appeal of Lyceum of Baguio
in a resolution. Petitioner then basing its ground on the resolution, wrote to all educational institutions
which made use of the word ‘Lyceum’ as part of their corporate name to discontinue their use. When
this recourse failed, petitioner moved before the SEC to enforce its exclusive use of the word ‘Lyceum.’
Petitioner further claimed that the word ‘Lyceum’ has acquired a secondary meaning in its favor. The
SEC Hearing Officer found for petitioner. Both SEC En Banc and CA ruled otherwise.

Issues:

Whether or not ‘Lyceum’ is a generic word which cannot be appropriated by petitioner to the exclusion
of others.

Ruling:

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.
McDONALD’S CORPORATION v. MACJOY FASTFOOD CORPORATION. (G.R. No. 166115) February 2, 2007

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.

Respondent averred that MACJOY has been used for the past many years in good faith and has spent
considerable sums of money for said mark.

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 the ruling of the CA is correct.

RULING:

No. 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.

The IPO, though they correctly used the dominancy, they should have taken more considerations. In
recent cases, the SC has consistently used and applied the dominancy test in determining confusing
similarity or likelihood of confusion between competing trademarks. The CA, while seemingly applying
the dominancy test, in fact actually applied the holistic test.