ASIA BREWERY, INC., petitioner, vs. THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION, respondents.

"Beer" written in large amber letters, larger than any of the letters found in the SMC label. The word "BEER" does not appear in SMC's trademark, just as the words "SAN MIGUEL" do not appear in ABI's trademark. Hence, there is absolutely no similarity in the dominant features of both trademarks. Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was presented by SMC proving otherwise. 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. No one may appropriate generic or descriptive words. They belong to the public domain. Further, "Pilsen" is a "primarily geographically descriptive word," and hence non-registerable and not appropriable by any beer manufacturer as provided by law. Neither does it have the exclusive right to use 320 ml. steinie bottle with white rectangular label. The amber color is a functional feature of the beer bottle as the color prevents the transmission of light and provides the maximum protection to beer. The bottle capacity is the standard prescribed by the Metric System Board of the Department of Trade. The white label is the most economical to use and presents the strongest contrast to the bottle.

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. SMC alleged that their registered trademark San Miguel Pale Pilsen with rectangular hops and malt design was infringed by ABIs Beer Pale Pilsen design. The apparent similarities between the two are the appearance of the word Pale Pilsen in the bottles, the 320 ml amber colored steinie bottles, and use of white labels. The TC ruled in favor of ABI but was reversed on appeal in the CA

ISSUE: W/N there is infringement of the trademark of San Miguel? Held: No There is infringement if a registered trademark is being used by another without the consent of the owner of the trademark. In order to determine if infringement exists is the test of dominancy should first be applied. This test states that If a competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. In this case, the dominant feature of SMC's trademark is the name of the product: SAN MIGUEL PALE PILSEN, written in white Gothic letters with elaborate serifs at the beginning and end of the letters "S" and "M" on an amber background across the upper portion of the rectangular design. On the other hand, the dominant feature of ABI's trademark is the name: BEER PALE PILSEN, with the word