McDONALDS v. BIG MAK FACTS: McDonalds Corporation is a corporation bound by the laws of the United States.

It consists of many family marks including the Big Mac mark for its double-decker hamburger sandwich. The trademark for Big Mac is registered in the United States Trademark Registry as well as in the Philippines Intellectual Property Office for its franchises in the country. The approval by the then PBPTT for the registration of McDonald s for the Big Mac mark in the Principal Register was given on July 18, 1985. Respondent L.C. Big Mak Burger, Inc., a domestic corporation operating in Metro Manila and selling hamburger sandwiches along with other food items. The respondent corporation applied with PBPTT for the registration of Big Mak mark for its hamburger sandwiches but was quickly opposed by the petitioner corporation on the ground that Big Mak was a colorable imitation of its registered BigMac mark, a mark which the petitioner exclusively owns. Respondent corporation claimed that they are not liable for trademark infringement and unfair competition, as Big Mak is not a colorable imitation of Big Mac and also because they do not pass of their hamburger sandwiches as those of petitioners Big Mac hamburgers. Although previous marks have been registered for the Big Mac mark by the Isaiyas Group of Corporations and one Rodolfo Topacio, the formers registration was only in the Supplemental registration of the PBPTT and the latters rights were acquired by McDonalds Corporation in a Deed of Assignment dated May 18, 1981. ISSUE: Is the word BIG generic and descriptive? RULING: 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. 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. 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. In the case at bar, there is only trademark infringement but no unfair competition.There is actually no notice to the public that the "Big Mak" hamburgers are products of herein respondents and not those of petitioners who have the exclusive right to the "Big Mac" mark. This clearly shows respondents' intent to deceive the public. Had respondents' placed a notice on their plastic wrappers and bags that the hamburgers are sold by "L.C. Big Mak Burger, Inc.", then they could validly claim that they did not intend to deceive the public. ARCE SONS AND COMPANY vs. SELECTA BISCUIT COMPANY, INC., ET AL., FACTS: On August 31, 1955, Selecta Biscuit Company, Inc., hereinafter referred to as respondent, filed with the Philippine Patent Office a petition for the registration of the

word "SELECTA" as trade-mark to be use in its bakery products alleging that it is in actual use thereof for not less than two months before said date and that "no other persons, partnership, corporation or association ... has the right to use said trade-mark in the Philippines, either in the identical form or in any such near resemblance thereto, as might be calculated to deceive." Its petition was referred to an examiner for study who found that the trade-mark sought to be registered resembles the word "SELECTA" used by the Acre and Sons and Company, hereinafter referred to as petitioner, in its milk and ice cream products so that its use by respondent will cause confusion as to the origin of their respective goods. Consequently, he recommended that the application be refused. However, upon reconsideration, the Patent Office ordered the publication of the application for purposes of opposition. ISSUE: What are the economic and guarantee functions of trademarks? Is the word Selecta registrable? RULING: A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of a particular producer or manufacturer may be distinguished from that of others, and its sole function is to designate distinctively the origin of the products to which it is attached." The word 'SELECTA', it is true, may be an ordinary or common word in the sense that may be used or employed by any one in promoting his business or enterprise, but once adopted or coined in connection with one's business as an emblem, sign or device to characterize its products, or as a badge of authenticity, it may acquire a secondary meaning as to be exclusively associated with its products and business.2 In this sense, its used by another may lead to confusion in trade and cause damage to its business. And this is the situation of petitioner when it used the word 'SELECTA' as a trade-mark. In this sense, the law gives its protection and guarantees its used to the exclusion of all others a (G. & C. Merriam Co. v. Saalfield, 198 F. 369, 373). And it is also in the sense that the law postulates that "The ownership or possession of a trademark, . . . shall be recognized and protected in the same manner and to the same extent, as are other property rights known to the law," thereby giving to any person entitled to the exclusive use of such trade-mark the right to recover damages in a civil action from any person who may have sold goods of similar kind bearing such trade-mark (Sections 2-A and 23, Republic Act No. 166, as amended). Lyceum of the Philippines, Inc. vs CA Facts: The herein petitioner is an educational institution duly registered with the Securities and Exchange Commission using the corporate name Lyceum of the Philippines, Inc. The petitioner alleged that the institution had used that name ever since. The petitioner instituted proceedings and even wrote to all educational institutions it could find using the word lyceum, to discontinue the use thereof. The petitioners claim that it has a proprietary right to the word lyceum, which was then sustained by the hearing officer of the Securities and Exchange Commission.

Issue: Can Lyceum of the Philippines prohibit others from using the word lyceum? Ruling: No. Lyceum is a generic name. Thus today, Lyceum generally refers to a school or an institution of learning. It is as generic in character as the word university. In the name of the petitioner, it appears that lyceum is a substitute for university. In addition. the number alone of the private respondents in this case suggests strongly that petitioners use for the word lyceum has not been attended with the exclusivity essential for the applicability of the doctrine of secondary meaning. it may be noted also that at least one of the respondents, that is, the Western Pangasinan Lyceum, Inc used the term lyceum 17 years before the petitioner registered its own corporate name. If any institution had acquired an exclusive right of the word lyceum, it would have been the Western Pangasinan Lyceum and not the herein petitioner.

sufficient to distinguish his product from the others. When as in this case, Sunshine chose, without a reasonable explanation, to use the same colors and letters as those used by Del Monte though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to 24 deceive . As Sunshine's label is an infringement of the Del Monte's trademark, law and equity call for the cancellation of the private respondent's registration and withdrawal of all its products bearing the questioned label from the market. With regard to the use of Del Monte's bottle, the same constitutes unfair competition; hence, the respondent should be permanently enjoined from the use of such bottles. Asia Brewery vs CA-IPL Facts: In September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for allegedly infringing upon their trademark on their beer product popularly known as San Miguel Pale Pilsen; that Asia Brewerys Beer na Beer product, by infringing upon SMCs trademark has committed unfair competition as Beer na Beer creates confusion between the two products. The RTC ruled in favor of Asia Brewery but the Court of Appeals reversed the RTC. Issue: is pilsen is a registrable name? Ruling: The fact that the words pale pilsen are part of ABI's trademark does not constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are generic words descriptive of the color ("pale"), of a type of beer ("pilsen"), which is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen in Czechoslovakia and became famous in the Middle Ages. (Webster's Third New International Dictionary of the English Language, Unabridged. Edited by Philip Babcock Gove. Springfield, Mass.: G & C Merriam Co., [c] 1976, page 1716.) "Pilsen" is a "primarily geographically descriptive word," (Sec. 4, subpar. [e] Republic Act No. 166, as inserted by Sec. 2 of R.A. No. 638) hence, non-registerable and not appropriable by any beer manufacturer. The Trademark Law provides: Sec. 4. . . .. The owner of trade-mark, trade-name or servicemark used to distinguish his goods, business or services from the goods, business or services of others shall have the right to register the same [on the principal register], unless it: xxx xxx xxx (e) Consists of a mark or trade-name which, when applied to or used in connection with the goods, business or services of the applicant is merely descriptive or deceptively misdescriptive of them, or when applied to or used in connection with the goods, business or services of the applicant isprimarily geographically descriptive or deceptively misdescriptive of them, or is primarily merely a surname." (Emphasis supplied.)

Del Monte (petitioner) vs CA FACTS: The petitioners are questioning the decision of the respondent court upholding the dismissal by the trial court of their complaint against the private respondent (Sunshine) for infringement of trademark and unfair competition.Having received reports that the private respondent was using its exclusively designed bottles and a logo confusingly similar to Del Monte's, Philpack warned it 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 private respondent for infringement of trademark and unfair competition, with a prayer for damages and the 5 issuance of a writ of preliminary injunction. After trial, the Regional Trial Court of Makati dismissed the complaint. It held that there were substantial differences between the logos or trademarks of the parties; that the defendant had ceased using the petitioners' bottles. This decision was affirmed in toto by the respondent court, which is now faulted in this petition for certiorari under Rule 45 of the Rules of Court. Issue: Is imitation necessary to constitute infringement? Ruling: At that, even if the labels were analyzed together it is not difficult to see that the Sunshine label is a colorable imitation of the Del Monte trademark. The predominant colors used in the Del Monte label are green and red-orange, the same with Sunshine. The word "catsup" in both bottles is printed in white and the style of the print/letter is the same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a tomato. As previously stated, the person who infringes a trade mark does not normally copy out but only makes colorable changes, employing enough points of similarity to confuse the public with enough points of differences to confuse the courts. What is undeniable is the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of words, phrases, colors and symbols

Faberge Inc. v. IAC, G.R. No. 71189, Nov. 4, 1992 Laberge, Inc., manufactures and markets after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap,

using the trademark PRUT, which is registered with the Phil. Patent Office. Laberge does not manufacture briefs and underwear and these items are not specified in the certificate of registration. JG who manufactures briefs and underwear, wants to know whether, under our laws, he can use and register the trademark PRUTE for his merchandise. What is your advice? Yes, he can use and register the trademark PRUTE for his merchandise. The trademark registered in the name of Laberge Inc. covers only after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap. It does not cover briefs and underwear. The limit of the trademark is stated in the certificate issued to Laberge Inc. It does not include briefs and underwear which are different products protected by Laberges trademark. JG can register the trademark PRUTE to cover its briefs and underwear (Faberge Inc. v. IAC, G.R. No. 71189, Nov. 4, 1992) GODINEZ V CA Through this petition for review in certiorari of a decision of the Court of Appeals affirming the decision of the trial court,petitioner Pascual Godines seeks to reverse the adverse decision of the Court a quo that he was liable for infringementof patent and unfair competition. The dispositive portion of the assailed decision is hereby quoted to wit:WHEREFORE, with the elimination of the award for attorney's fees, the judgment appealed from is hereby AFFIRMED,with costs against appellant. 1 The patent involved in this case is Letters Patent No. UM2236 issued by the Philippine Patent Office to one MagdalenaS. Villaruz on July 15, 1976. It covers a utility model for a hand tractor or power tiller, the main components of which arethe following: "(1) a vacuumatic house float; (2) a harrow with adjustable operating handle; (3) a pair of paddy wheels;(4) a protective water covering for the engine main drive; (5) a transmission case; (6) an operating handle; (7) an enginefoundation on the top midportion of the vacuumatic housing float to which the main engine drive is detachedlyinstalled; (8) a frontal frame extension above the quarter circularly shaped water covering hold ( sic ) in place thetransmission case; (9) a V-belt connection to the engine main drive with transmission gear through the pulley, and (10)an idler pulley installed on the engine foundation." 2 The patented hand tractor works in the following manner: "theengine drives the transmission gear thru the V-belt, a driven pulley and a transmission shaft. The engine drives thetransmission gear by tensioning of the V-belt which is controlled by the idler pulley. The V-belt drives the pulley attachedto the transmission gear which in turn drives the shaft where the paddy wheels are attached. The operator handles thehand tractor through a handle which is inclined

upwardly and supported by a pair of substanding pipes and reinforcedby a U-shaped G.I. pipe at the V-shaped end." 3 The above mentioned patent was acquired by SV-Agro Industries Enterprises, Inc., herein private respondent, fromMagdalena Villaruz, its chairman and president, by virtue of a Deed of Assignment executed by the latter in its favor. OnOctober 31, 1979, SV-Agro Industries caused the publication of the patent in Bulletin Today, a newspaper of generalcirculation.In accordance with the patent, private respondent manufactured and sold the patented power tillers with the patentimprinted on them. In 1979, SV-Agro Industries suffered a decline of more than 50% in sales in its Molave, Zamboangadel Sur branch. Upon investigation, it discovered that power tillers similar to those patented by private respondent werebeing manufactured and sold by petitioner herein. Consequently, private respondent notified Pascual Godines about theexisting patent and demanded that the latter stop selling and manufacturing similar power tillers. Upon petitioner'sfailure to comply with the demand, SV-Agro Industries filed before the Regional Trial Court a complaint for infringementof patent and unfair competition.After trial, the court held Pascual Godines liable for infringement of patent and unfair competition. The dispositiveportion of the decision reads as follows:WHEREFORE, premises considered, JUDGMENT is hereby rendered in favor of the plaintiff SVAgro IndustriesEnterprises, Inc., and against defendant Pascual Godines:1. Declaring the writ of preliminary injunction issued by this Court against defendant as permanent;2. Ordering defendant Pascual Godines to pay plaintiff the sum of Fifty Thousand Pesos (P50,000.00) as damages to itsbusiness reputation and goodwill, plus the further sum of Eighty Thousand Pesos (P80,000.00) for unrealized profitsduring the period defendant was manufacturing and selling copied or imitation floating power tiller;3. Ordering the defendant to pay the plaintiff, the further sum of Eight Thousand Pesos (P8,000.00) as reimbursement of attorney's fees and other expenses of litigation; and to pay the costs of the suit.SO ORDERED. 4 The decision was affirmed by the appellate court.Thereafter, this petition was filed. Petitioner maintains the defenses which he raised before the trial and appellatecourts, to wit: that he was not engaged in the manufacture and sale of the power tillers as he made them only upon thespecial order of his customers who gave their own specifications; hence, he could not be liable for infringement of patent and unfair competition; and that those made by him were different from those being manufactured and sold byprivate respondent.We find no merit in his arguments. The question of whether petitioner was manufacturing and selling power tillers is aquestion of fact better addressed to the lower courts. In dismissing the first argument of petitioner herein, the Court of Appeals quoted the findings of the court, to wit:It is the contention of defendant that he did not manufacture or make imitations or copies of plaintiff's turtle powertiller as what he merely did was to fabricate his floating power tiller upon specifications and designs of those whoordered them.

However, this contention appears untenable in the light of the following circumstances: 1) he admits inhis Answer that he has been manufacturing power tillers or hand tractors, selling and distributing them long before plaintiff started selling its turtle power tiller in Zamboanga del Sur and Misamis Occidental, meaning that defendant isprincipally a manufacturer of power tillers, not upon specification and design of buyers, but upon his own specificationand design; 2) it would be unbelievable that defendant would fabricate power tillers similar to the turtle power tillers of plaintiff upon specifications of buyers without requiring a job order where the specification and designs of thoseordered are specified. No document was ( sic ) ever been presented showing such job orders, and it is rather unusual fordefendant to manufacture something without the specification and designs, considering that he is an engineer byprofession and proprietor of the Ozamis Engineering shop. On the other hand, it is also highly unusual for buyers toorder the fabrication of a power tiller or hand tractor and allow defendant to manufacture them merely based on theirverbal instructions. This is contrary to the usual business and manufacturing practice. This is not only time consuming,but costly because it involves a trial and error method, repeat jobs and material wastage. Defendant judicially admittedtwo (2) units of the turtle power tiller sold by him to Policarpio Berondo. 5 Of general acceptance is the rule imbedded in our jurisprudence that ". . . the jurisdiction of the Supreme Court in casesbrought to it from the Court of Appeals in a petition for certiorari under Rule 45 of the Rules of Court is limited to thereview of errors of law, and that said appellate court's findings of fact are conclusive upon this Court." 6 The fact that petitioner herein manufactured and sold power tillers without patentee's authority has been establishedby the courts despite petitioner's claims to the contrary.The question now arises: Did petitioner's product infringe upon the patent of private respondent?Tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents. 7 In using literal infringement as a test, ". . . resort must be had, in the first instance, to the words of theclaim. If accused matter clearly falls within the claim, infringement is made out and that is the end of it." 8 To determinewhether the particular item falls within the literal meaning of the patent claims, the court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications, to determine whetherthere is exact identity of all material elements. 9 The trial court made the following observation:Samples of the defendant's floating power tiller have been produced and

inspected by the court and compared with thatof the turtle power tiller of the plaintiff (see Exhibits H to H-28). In appearance and form, both the floating power tillersof the defendant and the turtle power tiller of the plaintiff are virtually the same. Defendant admitted to the Court thattwo (2) of the power inspected on March 12, 1984, were manufactured and sold by him (see TSN, March 12, 1984, p. 7).The three power tillers were placed alongside with each other. At the center was the turtle power tiller of plaintiff, andon both sides thereof were the floating power tillers of defendant (Exhibits H to H-2). Witness Rodrigo took photographsof the same power tillers (front, side, top and back views for purposes of comparison (see Exhibits H-4 to H28). Viewedfrom any perspective or angle, the power tiller of the defendant is identical and similar to that of the turtle power tillerof plaintiff in form, configuration, design and appearance. The parts or components thereof are virtually the same. Bothhave the circularly-shaped vacuumatic housing float, a paddy in front, a protective water covering, a transmission boxhousing the transmission gears, a handle which is V-shaped and inclined upwardly, attached to the side of thevacuumatic housing float and supported by the upstanding G.I. pipes and an engine base at the top midportion of thevacuumatic housing float to which the engine drive may be attached. In operation, the floating power tiller of thedefendant operates also in similar manner as the turtle power tiller of plaintiff. This was admitted by the defendanthimself in court that they are operating on the same principles. (TSN, August 19, 1987, p. 13) 10 Moreover, it is also observed that petitioner also called his power tiller as a floating power tiller. The patent issued bythe Patent Office referred to a "farm implement but more particularly to a turtle hand tractor having a vacuumatichousing float on which the engine drive is held in place, the operating handle, the harrow housing with its operatinghandle and the paddy wheel protective covering." 11 It appears from the foregoing observation of the trial court thatthese claims of the patent and the features of the patented utility model were copied by petitioner. We are compelledto arrive at no other conclusion but that there was infringement.Petitioner's argument that his power tillers were different from private respondent's is that of a drowning man clutchingat straws.Recognizing that the logical fallback position of one in the place of defendant is to aver that his product is different fromthe patented one, courts have adopted the doctrine of equivalents which recognizes that minor modifications in apatented invention are sufficient to put the item beyond the scope of literal infringement. 12 Thus, according to this doctrine, "(a)n infringement also occurs when a device appropriates a prior invention by incorporating its innovativeconcept and, albeit with some modification and change, performs substantially the same function in substantially thesame way to achieve substantially the same result."

13 The reason for the doctrine of equivalents is that to permit theimitation of a patented invention which does not copy any literal detail would be to convert the protection of the patentgrant into a hollow and useless thing. Such imitation would leave room for indeed encourage the unscrupulouscopyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing,would be enough to take the copied matter outside the claim, and hence outside the reach of the law. 14 In this case, the trial court observed:Defendant's witness Eduardo Caete, employed for 11 years as welder of the Ozamis Engineering, and therefore actuallyinvolved in the making of the floating power tillers of defendant tried to explain the difference between the floatingpower tillers made by the defendant. But a careful examination between the two power tillers will show that they willoperate on the same fundamental principles. And, according to establish jurisprudence, in infringement of patent,similarities or differences are to be determined, not by the names of things, but in the light of what elements do, andsubstantial, rather than technical, identity in the test. More specifically, it is necessary and sufficient to constituteequivalency that the same function can be performed in substantially the same way or manner, or by the same orsubstantially the same, principle or mode of operation; but where these tests are satisfied, mere differences of form orname are immaterial. . . . 15 It also stated:To establish an infringement, it is not essential to show that the defendant adopted the device or process in everyparticular; Proof of an adoption of the substance of the thing will be sufficient. "In one sense," said Justice Brown, "itmay be said that no device can be adjudged an infringement that does not substantially correspond with the patent. Butanother construction, which would limit these words to exact mechanism described in the patent, would be so obviouslyunjust that no court could be expected to adopt it. . . .The law will protect a patentee against imitation of his patent by other forms and proportions. If two devices do thesame work in substantially the same way, and accomplish substantially the same result, they are the same, even thoughthey differ in name, form, or shape. 16 We pronounce petitioner liable for infringement in accordance with Section 37 of Republic Act No. 165, as amended,providing, inter alia :Sec. 37. Right of Patentees .

A patentee shall have the exclusive right to make, use and sell the patented machine,article or product, and to use the patented process for the purpose of industry or commerce, throughout the territory of the Philippines for the terms of the patent; and such making, using, or selling by any person without the authorization of the Patentee constitutes infringement of the patent . (Emphasis ours)As far as the issue regarding unfair competition is concerned, suffice it to say that Republic Act No. 166, as amended,provides, inter alia :Sec. 29. Unfair competition, rights and remedies . . . .xxx xxx xxxIn particular, and without in any way limiting the scope of unfair competition, the following shall be deemed guilty of unfair competition:(a) Any person, who in selling his goods shall give them the general appearance of goods of another manufacturer ordealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devicesor words thereon, or in any other feature of their appearance, which would be likely to influence purchasers that thegoods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer, or who otherwiseclothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade. . . .xxx xxx xxxConsidering the foregoing, we find no reversible error in the decision of the Court of Appeals affirming with modificationthe decision of the trial court. WHEREFORE, premises considered, the decision of the Court of Appeals is hereby AFFIRMED and this petition DENIEDfor lack of merit.

VENANCIO SAMBAR, doing business under the name and style of CVS GarmentEnterprises, petitioner , vs . LEVI STRAUSS & CO., and LEVI STRAUSS (PHIL.), INC., respondents .G.R. No. 132604. March 6, 2002Quisumbing, J.(Jeka)Facts: 1. Levi Strauss & Co., and Levi Strauss Phil, Inc., through a letter from their legal officer, demandedthat CVS Garment Enterprises (CVSGE) desist from using their stitched arcuate design on theEuropress jeans which CVSGE advertised in the Manila Bulletin .2. D efense: Atty. Benjamin Gruba, counsel of CVSGE: the arcuate design on the back pockets of Europress jeans was different He further asserted that his client had a copyright on the design it was using.3.

Private respondents filed a complaint against Sambar, doing business under the name and styleof CVSGE.a. Private respondents also impleaded the D irector of the National Library.b. Alleged in their complaint that Levi Strauss and Co. (LS&Co.), an internationally knownclothing manufacturer, owns the arcuate design trademark which was registered underU.S. Trademark Registration No. 404, 248 and in the Principal Register of trademarkswith the Philippine Patent Office under Certificate of Registration No. 20240c. CVSGIC and Venancio Sambar, without the consent and authority of private respondentsand in infringement and unfair competition, sold and advertised, and despite demandsto cease and desist, continued to manufacture, sell and advertise denim pants under thebrand name arcuatetrademark of private respondents, thereby causing confusion on the buying public,prejudicial to private Answer: CVSGIC admitted it manufactured, sold and advertised and was still manufacturing andselling denim pocket design of twodouble arcs meeting in the middle.a. However, it denied that there was infringement or unfair competition because thedisplay rooms of department stores weredistinctively segregated by billboards and other modes of advertisement.b. CVSGIC avers that the public would not be confused on the ownership of such etc.. Also, CVSGIC claimed that it had its ownoriginal arcuate design, as evidenced by Copyright Registration No. 1-1998, TC: issued a writ of preliminary injunction enjoining CVSGIC and petitioner from manufacturing,advertising and selling pants with the arcuate design on their back pockets.6. CA: affirmed Issue: mark. Held: e design was an infringement of Ratio: 1. The backpocket design of Europress jeans, a double arc a double arc intersecting at the center. a.Although the trial court found differences in the two designs, these differences werenot noticeable. b. Further, private respondents said, infringement of trademark did not require exactsimilarity.c. Colorable imitation enough to cause confusion among the public, was sufficient for atrademark to be infringed.d.

Private respondents explained that in a market research they conducted with 600respondents, the result showed that the public was confused by Europresstrademark v is 2. It must be stressed that it was immaterial whether or not petitioner was connected withCVSGIC.a. What is relevant is that petitioner had a copyright over the design and that he allowedthe use of the same by CVSGIC. 3. Private respondents assert that the lower courts found that based on Sections 22 and 23 of RA No. 166 otherwise known as theTrade Mark Law, as amended, which was the law then governing. Said sections defineinfringement and prescribe the remedies therefor.a. Further, private respondents aver it was misleading for petitioner to claim that the trialcourt ruled that private respondents did not suffer pecuniary loss, suggesting that theaward of damages was improper.b. According to the private respondents, the trial court did not make any such ruling. Itsimply stated that there was no of the use of the arcuate design by Europress jeans. c. They offer that while there may be no direct proof that they suffered a decline insales, damages may still be measured based on a reasonable percentage of the grosssales of the respondents, pursuant to Section 23 of the Trademark law. 4. becaus of Patents,Trademarks, and Technology Transfer . a. According to private respondents, the essence of copyright registration is originality anda copied design is inherently non-copyrightable. b. They insist that registration does not confer originality upon a copycat version of a priordesign. 5. copyright are appropriate.a. Award of damages is clearly provided in Section 23, while that the design was a mere copy of that of b. To be entitled to copyright, the thing being copyrighted must be original, created bythe author through his own skill, labor and judgment, without directly copying orevasively imitating the work of another

Unfair Competition Converse Rubber Corporation v. Jacinto Rubber & Plastics Co. [GR L-27425 & L-30505, April 28, 1980] '. . . in cases of unfair competition, while the requisite degree of resemblance or similarity between the names, brands, or other indicia is not capable of exact definition, it may be stated generally that the similarity must be such, but need only be such, as is likely to mislead purchasers of ordinary caution and prudence: or in other words, the ordinary buyer, into the belief that the goods or wares are those, or that the name or business is that, of another producer or tradesman. It is not necessary in either case that the resemblance be sufficient to deceive experts, dealers, or other persons specially familiar with the trademark or goods involved. Nor is it material that a critical inspection and comparison would disclose differences, or that persons seeing the trademarks or articles side by side would not be deceived' (52 Am. Jur. pp. 600-601)." (Brief for Plaintiffs as Appellees, pp. 28-29, p. 71, Record.) Indeed, the very text of the law on unfair competition in this country is clear enough. It is found in Chapter VI of Republic Act 166 reading thus: "SEC. 29. Unfair competition, rights and remedies. A person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those of others, whether or not a mark or trade name is employed, has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights. Such a person shall have the remedies provided in section twenty-three, Chapter V hereof. "Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services of those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor. "In particular, and without in any way limiting the scope of unfair competition, the following shall be deemed guilty of unfair competition: "(a) Any person, who in selling his goods shall give them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer, or who

otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose; "(b) Any person who by any artifice, or device, or who employs any other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public; or "(c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods, business or services of another." "In no uncertain terms, the statute on unfair competition extends protection to the goodwill of a manufacturer or dealer. It attaches no fetish to the word 'competition'. In plain language it declares that a 'person who has identified in the public the goods he manufactures or deals in, his business or services from those of others, whether or not a right in the goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights.' It denominates as 'unfair competition' 'any acts' calculated to result in the passing off of other goods 'for those of the one having established such goodwill.' Singularly absent is a requirement that the goodwill sought to be protected in an action for unfair competition must have been established in an actual competitive situation. Nor does the law require that the deception or other means contrary to good faith or any acts calculated to pass off other goods for those of one who has established a goodwill must have been committed in an actual competitive situation. "To read such conditions, as defendants-appellants seek to do, in the plain prescription of the law is to reconstruct it. Indeed, goodwill established in other than a competitive milieu is no less a property right that deserves protection from unjust appropriation or injury. This, to us, is precisely the clear sense of the law when it declares without equivocation that a 'person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those of others, has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights.' "Plaintiffs-appellees have a established goodwill. This goodwill, the trial court found, defendants-appellants have pirated in clear bad faith to their unjust enrichment. It is strange that defendants-appellants now say that they should be spared from the penalty of the law, because they were not really in competition with plaintiffs-appellees." (Pp. 21-22, Id.)

44. G.R. Nos. L-27425 & L-30505. April 28, 1980.] CONVERSE RUBBER CORPORATION and EDWARDSON MANUFACTURING CORPORATION, plaintiffs-appellants, vs. JACINTO RUBBER & PLASTICS CO., INC., and ACE RUBBER & PLASTICS CORPORATION, defendants-appellants. Petitioners Contention:Plaintiffs contend that "Custombuilt" shoes are Identical in design and General appearance to"Chuck Taylor" and, claiming prior Identification of "Chuck Taylor" in the mind of the buyingpublic in the Philippines, they contend that defendants are guilty of unfair competition by selling"Custombuilt" of the design and with the general appearance of "Chuck Taylor". The design andappearance of both products, as shown by the samples and photographs of both products, arenot disputed.Respondents Contention:Defendants insist that (a) there is no similarity in design and general appearance between"Custombuilt" and "Chuck Taylor", pointing out that "Custombuilt" is readily Identifiable by thetradename "Custombuilt" appearing on the ankle patch, the heel patch, and on the sole. It isalso vigorously contended by defendants that the registration of defendant Jacinto Rubber'strademark "Custombuilt" being prior to the registration in the Philippines of plaintiff ConverseRubber's trademark "Chuck Taylor", plaintiffs have no cause of action. It appears that defendantstarted to manufacture and sell "Custombuilt" of its present design and with its presentappearance in 1962.ISSUE:WHETHER DEFENDAT IS GUILTY OF UNFAIR COMPETITION WHEN DEFENDANTJACINTO RUBBER & PLASTICS CO., INC., MANUFACTURED AND SOLD RUBBER-SOLEDCANVASS SHOES UNDER ITS REGISTERED TRADE MARK "CUSTOMBUILTHELD:From said examination, We find the shoes manufactured by defendants to contain, as found bythe trial court, practically all the features of those of the plaintiff Converse Rubber Corporationand manufactured, sold or marketed by plaintiff Edwardson Manufacturing Corporation, exceptfor heir respective brands, of course. We fully agree with the trial court that "the respectivedesigns, shapes, the colors of the ankle patches, the bands, the toe patch and the soles of thetwo products are exactly the same ... (such that) at a distance of a few meters, it is impossible todistinguish "Custombuilt" from "Chuck Taylor". These elements are more than sufficient to serveas basis for a charge of unfair competition. Even if not all the details just mentioned wereIdentical, with the general appearances alone of the two products, any ordinary, or evenperhaps even a not too perceptive and discriminating customer could be deceived, and, therefore, Custombuilt could easily be passed off for Chuck Taylor. Jurisprudence supports theview that under such circumstances, the imitator must be held liable.

confusion, or to causemistake, or to deceive.Addendum:TEST OF TRADEMARK INFRINGEMENT 1) Dominancy Test consists in seeking out the main, essential or dominantfeatures of a mark. 2) Holistic Test takes stock of the other features of a mark, taking intoconsideration the entirety of the marks. DIFFERENTIATED FROM UNFAIR COMPETITION 1) Cause of action: in infringement, the cause of action is the unauthorizeduse of a registered trademark; in unfair competition, it is the passing off of ones goods as those of another merchant. 2) Fraudulent intent is not necessary in infringement, but necessary in UC. 3) Registration of trademarks: in infringement, it is a prerequisite; in UC, itis not required. 4) Class of goods involved: in infringement, the goods must be of similarclass; in UC, the goods need not be of the same class.v infringement is a form of unfair competition REMEDIES AVAILABLE IN CASE OF INFRINGEMENT OF A REGISTERED MARK a) Sue for damages (Sec. 156.1) b) ;b) Have the infringing goods impounded (Sec. 156.2); c) c) Ask for double damages (Sec. 156.3) d) d) Ask for injunction (156.4) e) e) Have the infringing goods disposed of outside the channels of commerce(Sec. 157.1) f) f) Have the infringing goods destroyed (Sec. 157.1) g) g) File criminal action (Sec. 170); h) h) Administrative Sanctions

Mc Donalds Corp vs LC Big Mak Burger Inc. (GR No 143993, Aug 18, 2004)The SC held that the respondent is liable for infringement because it violatedSec 155.1 of the IPC which stated that any person who shall, without theconsent of the owner of the registered mark use in commerce anyreproduction, counterfeit, copy or colorable imitation of a registered mark orthe same container or a dominant feature thereof in connection with thesale, offering for sale, distribution, advertising of any goods or services on orin connection with which such use is likely to cause