Appeal filed by the American Wire & Cable Company, owner of the registered trademark DURAFLEX for electric

wires, questioning the correctness of the decision of the Director of Patents (in Inter Partes Case No. 290) holding that the label DYNAFLEX and Device for electric wires, sought to be registered by the Central Banahaw Industries, Inc., is not similar to herein appellant's patented mark. On 2 June 1962, Central Banahaw Industries, Inc., applied with the Director of Patents for registration of the trademark DYNAFLEX and Device to be used in connection with electric wires, class 20, which mark applicant allegedly had been using since 29 March 1962. The American Wire and Cable Co., Inc., another domestic corporation and authorized user since 10 April 1958 of the registered trade mark DURAFLEX and Globe representation, for electric wires, apparatus, machines and supplies, class 20, opposed the application on the ground that applicant's use of the trade mark DYNAFLEX would cause confusion or result in mistake to purchasers intending to buy DURAFLEX electric wires and goods, the mark being registered allegedly having practically the same spelling, pronunciation and sound, and covering the same good, as that of the opposer. Besides, opposer contended that there has been no continuous use in commerce of the applicant's mark. After due hearing, the Director of Patents rendered decision holding the applicant's mark DYNAFLEX not to be similar to the previously registered trademark DURAFLEX. Consequently, the application of Central Banahaw Industries for registration of DYNAFLEX was given due course and the opposition thereto by American Wire & Cable Company dismissed. The latter interposed the present appeal. The issue to be resolved in this proceeding is simple: whether or not the mark DYNAFLEX and Device is registrable as label for electric wires, class 20, considering that the trademark DURAFLEX and Globe representation also for electric wires, machines and supplies under class 20, has been registered more than 4 years earlier. In ruling in favor of the herein application, the Director of Patents said: ... The applicant's trademark is a composite mark consisting of the word DYNAFLEX printed in small letters of the English alphabet except that letter "D" is capitalized, within a fanciful device, on top of which is the encircled initials, in downward sequence, of the Respondent's corporate name, and jutting out on two sides of the circle are bolts of lightning, symbolic of electricity. On the other hand, Opposer's trademark is DURAFLEX in Capitalized print, except that one cross piece of the letter X is in the form of a bolt of lightning. The word slants slightly upward, traversing the center of a figure of the earth or globe. Resorting now to the semantics of the words, it is clear that both marks are suffixed by the word FLEX. The word appears in any dictionary having as common meaning "to bend." In Webster's International Dictionary, it is used by the British on electric cord. However, one mark (Respondent's) is prefixed with DYNA suggesting power. It is not in itself a rootword but it has been commonly associated with any source of power. At most, it could have been derived from the Greek word "Dynamis" and, generally, the root words commonly derived therefrom are ''dynam'' and "dynamo". The other (Opposer's) is prefixed with DURA, suggesting durability, strength and endurance. Based on the foregoing comparisons, the trademarks of the parties are different in appearance, meaning, sound and connotation and hence, are not confusingly similar. The pertinent law, Republic Act 166, as amended, on registrability of trademarks, prescribes: SEC. 4. The owner of a trademark, trade name or service-mark used to distinguish his goods, business or services from the goods, business or services of others shall have the right to register the same, unless it: xxx xxx xxx (d) Consists of or comprises a mark or trade name which so resembles a mark or trade-name registered in the Philippines by another and not abandoned, as to be likely, when applied to or used in connection with the goods, business or services of the applicant, to cause confusion or mistake or to deceive purchasers. (Emphasis supplied) It is clear from the above-quoted provision that the determinative factor in a contest involving registration of trade mark 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. In short, to constitute an infringement of an existing trademark patent and warrant a denial of an application for registration, the law does not require that the competing trademarks must be so identical as to produce actual error or mistake; 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 newer brand for it. The question is, when is a trademark likely to confuse or cause the public to mistake one for another? Earlier rulings of the Court seem to indicate its reliance on the dominancy test or the assessment of the essential ordominant features in the competing labels to determine whether they are confusingly similar.1 On this matter, the Court said: It has been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not conclusive. If the competing trademark

contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary, nor is it necessary that the infringing label should suggest an effort to imitate (C. Neilman Brewing Co. vs. Independent Brewing Co., 191 F. 489, 495, citing Eagle White Lead Co. vs. Pflugh [CC] 180 Fed. 579). The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers." (Go Tiong vs. Director of Patents, 95 Phil. 1, cited in Lim Hoa vs. Director of Patents, 100 Phil. 214).2 In fact, even their similarity in sound is taken into consideration, where the marks refer to merchandise of the same descriptive properties, for the reason that trade idem sonans constitutes a violation of trade mark patents.3 Thus, in he case of Marvex Commercial Co. vs. Hawpia & Co.,4 the registration of the trademark "Lionpas" for medicated plaster was denied for being confusingly similar in sound with "Salonpas", a registered mark also for medicated plaster, the Court saying: Two letters of "SALONPAS" are missing in "LIONPAS" the first letter a and the letter s. Be that as it may, when the two words are pronounced, the sound effects are confusingly similar. And where goods are advertised over the radio, similarity in sound is of especial significance (Co Tiong Sa vs. Director of Patents, 95 Phil. 1, citing Nims, The Law of Unfair Competition and Trademarks, 4th ed., vol. 2, pp. 678-679). "The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of help of our eyes and must depend entirely on the ear (Operators, Inc. vs. Director of Patents, supra.) Along the same line are the rulings denying registration of a mark containing the picture of a fish (Bagus), as label for soy sauce, for being similar to another registered brand of soy sauce that bears the picture of the fish carp;5 or that of the mark bearing the picture of two roosters with the word "Bantam", as label for food seasoning (vetsin), which would confuse the purchasers of the same article bearing the registered mark "Hen Brand" that features the picture of a hen.6 The present case is governed by the principles laid down in the preceding cases. 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. The Director of Patents has predicated his decision mostly on the semantic difference and connotation of the prefixes "Dura" and "Dyna" of the competing trademarks, unfortunately forgetting that the buyers are less concerned with the etymology of the words as with their sound and the dominant features of the design. Of course, as pointed out in the decision now on appeal there are some differences in the mark on the front portion of the box. But they pale into insignificance in view of the close resemblance in the general appearance of the box and the tradenames of the articles. Indeed, measured against the dominant-feature standard, applicant's mark must be disallowed. For, undeniably, the dominant and essential feature of the article is the trademark itself. Unlike in the case of commodities that are ordinarily picked up by the purchaser himself from the grocery or market counters, electric wires are purchased not by their appearance but by the size (voltage) and length and, most importantly, by brand. It is even within layman's knowledge that different brands of wire have different characteristics and properties; and for an essential building item as electric wires and supplies, the owner of the building would not dare risk his property, perhaps his life, on an unknown or untested brand. He would only demand for what is recognized to be the best. Relying on the doctrine enunciated in the Etepha case7 and the earlier ruling in Lim Hoa vs. Director of Patents,8applicant-appellee contends that the DYNAFLEX mark would not confuse or deceive the buyers and subscribers of the DURAFLEX brand, because electrical wires are of great value and the purchasers thereof are generally intelligent the architects, engineers and building contractors. It must be realized, however, that except perhaps in big constructions, the designing architect or engineer, or the contractor who will undertake the work of building, does not himself purchase or place the order for the purchase of the materials to be used therein. The task is oftentimes delegated to another. Nor are said technical men the ones personally laying down the wiring system in the building that they could possibly check on whether or not the correct wires are being used. So that even if the engineer or contractor will specify in the bill of materials the particular brand of wires needed, there is no certainty that the desired product will be acquired. For, unlike the pharmacists or druggists, the dispensers of hardware or electrical supplies are not generally known to pay as much concern to the brand of articles asked for by the customer

and of a person who knows the name of the brand but is not acquainted with it is appearance, the likelihood of the DYNAFLEX product being mistaken for DURAFLEX is not remote. Of course, as in all other cases of colorable imitations, the unanswered riddle is why, of the millions of terms and combinations of letters and designs available, the appellee had to choose those so closely similar to another's trademark if there was no intent to take advantage of the goodwill generated by the other mark. FOR THE FOREGOING CONSIDERATIONS, the decision appealed from is hereby set aside, and the application for registration of the trademark DYNAFLEX for electric wires, class 20, is ordered denied. No costs. Converse Converse Rubber Corporation is an American corporation while Universal Rubber Product is a corporation licensed to do business in the country. Converse has been operating since 1946. Universal Rubber has been operating since 1963. Later, Universal Rubber filed an application for the tra demark Universal Converse and Device before the Philippine Patent Office. Converse Rubber opposed as it averred that the word Converse which is part of its corporate name cannot be granted as part of Universal Rubbers trademark or trade name because i t will likely deceive purchasers of Universal Rubbers products as it may be mistaken by unwary customers to be manufactured by Converse Rubber. The Director of Patents did not grant the opposition by Converse Rubber. ISSUE: Whether or not the decision of the Director of Patents is correct. HELD: No. From a cursory appreciation of the Converse Rubbers corporate name CONVERSE RUBBER CORPORATION, it is evident that the word CONVERSE is the dominant word which identifies Converse Rubber from other corporations engaged in similar business. Universal Rubber, in the stipulation of facts, admitted Converse Rubbers existence since 1946 as a duly organized foreign corporation engaged in the manufacture of rubber shoes. This admission necessarily betrays its knowledge of the reputation and business of petitioner even before it applied for registration of the trademark in question. Knowing, therefore, that the word CONVERSE belongs to and is being used by Converse Rubber, and is in fact the dominant word in its corporate name, Universal Rubber has no right to appropriate the same for use on its products which are similar to those being produced by Converse Rubber. 246 Corporation v. Daway GR 157 216, 20 November 2003; First division, Ynares-SantiagoFacts: In 1998, Montres Rolex SA and Rolex Centre Phil. Ltd., owners and proprietors of Rolex and CrownDevice filed against 246 Corporation, doing business as Rolex Music Lounge, a suit for trademarkinfringeme nt and damages. In 2000, 246 Corp. filed a motion for preliminary hearing on its affirmativedefense; which the court thereafter issued a subpoena ad testificandum to Atty. Atienza. Montres Rolexopposed, and the trial court quashed the subpoena. 246 corp. filed a petition for certiorari before the Court ofAppeals, which was dismissed. Hence, the petition for review on certiorari.Issue: Whether the junior use of a registered mark on entirely different goods subsists.Held: The rule, that there is no infringement in the use of a junior user of the registered mark on the entirelydifferent goods, has been modified b Section 123.1 (f) of RA 8293 (Intellectual Property code). Hs use isprecluded when that the mark is well known internationally and in the Philippines, the use of the mark wouldindicate a connection or relationship between the user and the registrant, and that the interests of the wellknown mark are likely to be damaged. The court however cannot resolve the merits considering the facts asto the existence/absence of the requisites should be addressed in a full- blown hearing and not on a merepreliminary hearing La Chemise Lacoste vs. Fernandez GR 63796-97, 21 May 1984; First Division, Gutierrez Jr. (J) Facts: La chemise Lacoste is a French corporation and the actual owner of the trademarks Lacoste, Chemise Lacoste, Crocodile Device and a composite mark consisting of the word Lacoste and a representation of a crocodile/alligator, used on clothings and other goods sold in many parts of the world and which has been marketed in the Philippines (notably by Rustans) since 1964. In 1975 and 1977, Hemandas Q. Co. was issued certificate of registration for the trademark Chemise Lacoste and QCrocodile Device both in the supplemental and Principal Registry. In 1980, La Chemise Lacoste SA filed for the registration of the Crocodile device and Lacoste. Games and Garments (Gobindram Hemandas, assignee of Hemandas Q.Co.) opposed the registration of Lacoste. In 1983, La Chemise Lacoste filed with the NBI a letter-complaint alleging acts of unfair competition committed by Hemandas and requesting the agencys as sistance. A search warrant was issued by the trial court. Various goods and articles were seized upon the execution of the warrants. Hemandas filed motion to quash the warrants, which the court granted. The search warrants were recalled, and the goods ordered to be returned. La Chemise Lacoste filed a petition for certiorari. Issue: Whether the proceedings before the patent office is a prejudicial question that need to be resolved before the criminal action for unfair competition may be pursued.

Held: No. The proceedings pending before the Patent Office do not partake of the nature of a prejudicial question which must first be definitely resolved. The case which suspends the criminal action must be a civil case, not a mere administrative case, which is determinative of the innocence or guilt of the accused. The issue whether a trademark used is different from anothers trademark is a matter of defense and will be better resolved in the criminal proceedings before a court of justice instead of raising it as a preliminary matter in an administrative proceeding. Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back even before 1964, Hemandas cannot be allowed to continue the trademark Lacoste for the reason that he was the first registrant in the Supplemental Register of a trademark used in international commerce. Registration in the Supplemental Register cannot be given a posture as if the registration is in the Principal Register. It must be noted that one may be declared an unfair competitor even if his competing trademark is registered. La Chemise Lacoste is world renowned mark, and by virtue of the 20 November 1980 Memorandum of the Minister of Trade to the director of patents in compliance with the Paris Convention for the protection of industrial property, effectively cancels the registration of contrary claimants to the enumerated marks, which include Lacoste. Ong Ai Gui Alias Tan Ai Gui vs. The Director of thePhilippines Patent office, respondent. E. I. Du Pont De Nemours and Company, intervenor G.R. No. L-6235March 28, 1955.e.g. "Nylon" used in connection with shirtmaking, cannever become distinctive or acquire secondary meaning because it is a generic term, like cotton, silk, linen, or ramie. ARCE SONS AND COMPANY vs. SELECTA BISCUIT COMPANY,INC., ET AL.,FACTS:On August 31, 1955, Selecta Biscuit Company, Inc., filed with the PhilippinePatent Office apetition for the registration of the word"SELECTA" as trade-mark to be use in its bakery productsalleging that it is in actual use thereof for not less than two months before said date and that "noother persons,partnership, corporation or association ... has the right to usesaid trade-mark inthe Philippines, either in the identical form or in any such near resemblance thereto, as might becalculated to deceive." Its petition was referred to an examiner for study who found that thetrade-mark sought to be registered resembles the word "SELECTA" used by the Acre and Sons andCompany in its milk and ice cream products so that its use by respondent will cause confusion asto the origin of their respective goods. Consequently, he recommended that the application berefused.The Patent Office ordered the publication of the application for purposes of opposition. TheArce Sons and Company then filed their opposition claiming that the mark Selecta has alreadybecome identified with the name of Ramon Arce and its business. Moreover, that the mark was usedcontinuously since 1933 while the respondent herein only used it during 1955.ISSUE:Is the word Selecta registrable?HELD:A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of aparticular producer or manufacturer may be distinguished from that of others, and its sole functionis to designate distinctively the origin of theproducts to which it is attached."The word 'SELECTA', it is true, may be an ordinary or common word in the sense that maybe used or employed by any onein promoting his business or enterprise, but once adopted orcoined in connection with one's business as an emblem, signor device to characterize its products,or as a badge of authenticity, it may acquire a secondary meaning as to be exclusively associatedwith its products and business. In this sense, its used by another may lead to confusion in trade andcause 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 theexclusion of all others a (G. & C. Merriam Co. v.Saalfield, 198 F. 369, 373). And it is also in the sensethat the law postulates that "The ownership or possession of a trade-mark, . . . shall be recognizedand protected in the same manner and to the same extent, as are other property rights known tothe law," thereby giving to any person entitled to the exclusive use of such trade-mark the right torecover damages in a civil action from any person who may have sold goods of similar kind bearingsuch trademark.