ETEPHA, A.G., petitioner, vs.

DIRECTOR OF PATENTS and

WESTMONT PHARMACEUTICALS, INC., respondents .
(G.R. No. L-20635, March 31, 1966)
FACTS: Respondent Westmont Pharmaceuticals, Inc., a New York
corporation, sought registration of trademark "Atussin" placed on its
"medicinal preparation of expectorant antihistaminic, bronchodilator
sedative, ascorbic acid (Vitamin C) used in the treatment of cough". The
trademark is used exclusively in the Philippines since January 21, 1959.
Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation,
objected claiming that it will be damaged because Atussin is so confusedly
similar to its Pertussin used on a preparation for the treatment of coughs,
that the buying public will be misled into believing that Westmont's product
is that of petitioner's which allegedly enjoys goodwill.
The Director of Patents ruled that the trademark ATUSSIN may be
registered even though PERTUSSIN had been previously registered from
the same office, hence, this appeal.
ISSUE: Whether or not ATUSSIN may be registered? YES
HELD: We are to be guided by the rule that the validity of a cause for
infringement is predicated upon colorable imitation. The phrase "colorable
imitation" denotes such a "close or ingenious imitation as to be calculated
to deceive ordinary persons, or such a resemblance to the original as to
deceive an ordinary purchaser, giving such attention as a purchaser usually
gives, and to cause him to purchase the one supposing it to be the other.
A practical approach to the problem of similarity or dissimilarity is
to go into the whole of the two trademarks pictured in their manner of
display. Inspection should be undertaken from the viewpoint of a
prospective buyer. Confusion is likely between trademarks, however, only if
their over-all presentations in any of the particulars of sound, appearance,
or meaning are such as would lead the purchasing public into believing that
the products to which the marks are applied emanated from the same
source.
We concede the possibility that buyers might be able to obtain
Pertussin or Attusin without prescription. When this happens, then the
buyer must be one thoroughly familiar with what he intends to get, else he
would not have the temerity to ask for a medicine specifically needed to
cure a given ailment. In which case, the more improbable it will be to palm
off one for the other. For a person who purchases with open eyes is hardly
the man to be deceived.

For the reasons given, the appealed decision of the respondent

Director of Patents giving due course to the application for the
registration of trademark ATTUSIN is hereby affirmed. Cost against
petitioner. So ordered.

G.R. No. L-1750

violation of the rights of the plaintiffs, nor a fraud or deceit upon

the public."

October 26, 1905

GUILLERMO
BAXTER
ZOSIMO ZUAZUA, ET AL.,

AND

G.

GAXTER

&

CO.,

vs.

MAPA, J.:

TC: enjoined Zuazua from the further manufacture of toilet water based
upon the ground that

1.

the labels, words, and bottles in question, taken together, were an

imitation of those used by the plaintiffs, and tended to deceive the
public by making it appear that the toilet water manufactured and
sold by the defendants was the same toilet water manufactured by
the plaintiffs,

2.

that the use of the said labels, words, and bottles was therefore
illegal, and constituted a violation of plaintiff's rights.

3.

the grant by the Government did not give the plaintiffs an exclusive
right to the use of the word "Kananga," but to the phrase "Agua de
Kananga;"

4.

that"Kananga" was the name of a well-known tree of the Philippine

Islands, and held that, although the plaintiffs had a right to the
exclusive use of the phrase "Agua de Kananga," it did not follow
that they had an exclusive right to the use of any of the words
contained in the said phrase.

FACTS: August 30, 1894: Guillermo Baxter (P) after complying with the
necessary formalities,had secured the right to use the trade-mark "Agua
de Kananga", as well as the labels annexed thereto.
July 23, 1901: Guillermo Baxter associated himself with certain
merchants in Manila for the purpose of organizing a limited partnership for
a period of 5 years, under the firm name and style of "Baxter &
Company," for manufacturing toilet water and perfume. Guillermo Baxter,
as the manager & administrator of the partnership, contributed the
business which is now the basis of that carried on by the said partnership.
Also, he contributed his title to certain trade-marks, among them the one
described as "Agua de Kananga." This trade-mark is actually used by the
plaintiffs to designate the ownership and origin of a certain toilet water
manufactured and sold by them under the said name of "Agua de
Kananga."

Zuazua alleged that the labels used on his goods differed from
The plaintiffs brought this action for unfair competition under those used by the plaintiffs as to the drawing, color, and general
section 7 of Act No. 666 of the Philippine Commission. It is alleged that
appearance of the design, and he denies emphatically that he had any
1. the (D) Zosimo Zuazua, for the purpose of imitating and intention to deceive the public thereby, alleging that the people clearly
fraudulently simulating the "Agua de Kananga" by selling a certain distinguished the goods of the plaintiffs from those of the defendants, the
toilet water under the name
of "Kananga Superior" and former being known from the picture on the bottle as the "Payo Brand" and
the latter as the "Seorita Brand."
"Kanangue"

2.

Zuazua disposed of the same in bottles with labels similar to those

HELD: There is no identity nor even any similarity whatsoever
used by the plaintiffs for their own goods.
between the goods, either in detail or as a whole. The difference
3. that the other defendants were engaged in retailing to the public
between the two is so apparent that it can be readily noticed. We do not
the product manufactured by the defendant Zuazua.
believe that the public could have been deceived by the appearance of the
labels to the extent of taking the goods of the plaintiffs for those
manufactured and sold by the defendant. We make no finding as to the
Zuazua admitted that:
because they were not forwarded to this court for inspection, and,
1. he had manufactured certain toilet water under the denomination bottles
moreover, because it was stipulated by the parties that the said bottles
of "Kananga Superior"and "Kanangue", and
were universally used by all manufacturers of toilet water, and that their
2. that he had also sold the same in bottles labeled as alleged in the particular use by defendant was not, therefore, an act of fraud or deceit
complaint. As to the bottles, it was stipulated, page 19 of the bill of practiced by him upon the plaintiffs or the public generally.
exceptions, that "those used by the defendant Zuazua, as well as
Section 7 of Act No. 666 provides in part as follows:
those used by the plaintiffs, were universally used by all persons
And in order that the action shall lie under this section, actual
engaged in the manufacture of toilet water, and that the fact that
intent to deceive the public and defraud a competitor shall
they were used by the defendant did not, of itself, constitute a
affirmatively appear on the part of the person sought to be made

liable, but such intent may be inferred from similarity in the

Such being the case the plaintiffs could not have maintained
appearance of the goods as packed or offered for sale to those of this action for unfair competition, because under section 9 of said
the complaining party.
Act No. 666 such action would not lie "when the trade-mark or
designation of its origin, ownership, or manufacture has been used
by the claimant for the purpose of deceiving the public as to the
Baxter has not proved, or attempted to prove, the fraudulent intent
nature of the goods in which he deals, his business, profession, or
attributed to Zuazua by any means other that the alleged similarity
occupation." The law can not and does not permit that trade-marks shall
between the labels used by him and those used by the defendant to
contain indications capable of deceiving the public as to the nature of the
designate his own goods. There being no such similarity between the
goods. This would be exactly the case if under the trade-mark of "Agua de
labels, we find no reason for even inferring that the defendant had any
Kananga" the plaintiffs should sell goods that had in fact nothing to do, as
such intention, and therefore the action brought by the plaintiffs in this
they say, with the "Kananga" flower. However the contention of the
case can not be maintained under the law. The judgment appealed from
plaintiffs may be considered, the proof is nevertheless insufficient to show
should be reversed in so far as it holds that such an action lies in this case.
that the word "Kananga," the name of a flower, can be appropriated as the
subject of a trade-mark, under the law.
The ownership of the trade-mark "Agua de Kananga" did not
give the plaintiffs a right to the exclusive use of the JUDGMENT REVERSED. SC IN FAVOR OF Zuazua. The Baxter have
word "Kananga." Zuazua alleged that "Kananga" could not be used as a no right to the exclusive use of the word "Kananga".
trade-mark because it was the name of a flower.
"Kananga" represents the name of a well-known tree in the
Philippines. It is apparent, therefore, that the said word could not be used
exclusively as a trade-mark, any more than could the words "sugar,"
"tobacco," or "coffee." The law is clear and conclusive upon the subject.
"A designation or part of a designation," says section 2 of Act No.
666, "which relates only to the name, quality, or description of the
merchandise ... can not be the subject of a trade-mark." This provision is
in conformity with the provisions of paragraph 3 of article 5 of the royal
decree of the 26th of October, 1888, under which Guillermo Baxter secured
the registration of his trade-mark. The said royal decree provided that the
denominations generally used in commerce for the purpose of
designating a class of goods could not be the subject of labels or
trade-marks.
Baxter alleges that the Zuazua did not prove, or even attempt to
prove, that the goods manufactured by them had anything to do with
the "Kananga" flower. If the goods in question had really nothing to do with
the said flower, then it was not lawful for the plaintiffs to sell them to the
public under the name of "Agua de Kananga,"because the people might be
deceived as to the nature of the goods, taking for "Kananga" an article
which, as a matter of fact, had nothing to do with the said flower. Both
plaintiffs and defendant would be exactly in the same position as one who
should sell goods as "coffee" or "tobacco" which were neither one nor the
other.

COMPAIA GENERAL DE TABACOS DE FILIPINAS vs. ALHAMBRA

CIGAR AND CIGARETTE MANUFACTURING CO.
FACTS:
It is admitted that plaintiffs trade name as evidenced by the
certificate issued under the Spanish regime, consists solely of the words
La Flor de la Isabela. Plaintiff does not claim that the word Isabela has
been registered by it as a trade name or that it has a title from any source
conferring on it the exclusive right to use that word.
Defendant began the manufacture of cigarettes, offering them to
the public in packages on the front side of each of which appeared the
words Alhambra Isabelas.
Action is brought to enjoin the defendant from using the word
Isabelas.
The exclusive right to use this name, plaintiff claim arises from two
causes: First, the contraction of the phrase La Flor de la Isabela into the
word Isabela by popular expression and use; and second, the use for
more than twenty years of the word Isabela.
Judgment was for plaintiff and defendant appealed.
ISSUE:
Whether defendants use of the word Alhambra Isabela is
an infringement to the use of trade name.
HELD:
The statute prohibits the registration of a trade name when the
trade name represents the geographical place of production or origin of the
products or goods to which the trade name refers, or when it is merely the
name, quality or description of the merchandise with respect to which the
trade name is to be used. In such cases, therefore, no trade name can
exist.
The two claims of the plaintiff are identical; for, there could have
been no contraction brought about by popular expression except after long
lapse of time. The contraction of the phrase in to the word would create no
rights, there being no registration, unless it resulted from long use.
The opinion of the plaintiff must fail. It shows that in not a single
instance in the history of the plaintiff corporation, so far as is disclosed by
the record, has a package of its cigarettes gone into the market, either at
wholesale or retail with the word Isabela alone on the package as a
separate or distinct word or name.

Even admitting that the word Isabela may have been

appropriable by plaintiff as a trade name at the time it began to use it, the
evidence showing that it had been exclusively appropriated by the plaintiff
would have to be very strong to establish the fact of appropriation and the
right to exclusive use. The law as it stands and has stood since the Royal
Decree of 1888 prohibits the use of a geographical name as a trade name.
The judgment appealed from is reversed.

Fredco Manufacturing Corporation v. President and Fellows of

Harvard College
G.R. No. 185917, 1 June 2011

commerce for not less than two months in the Philippines prior to the filing
of an application for its registration. While Harvard University had actual
prior use of its marks abroad for a long time, it did not have actual prior
use in the Philippines of the mark "Harvard Veritas Shield Symbol" before
FACTS: Fredco Manufacturing Corporation (Fredco) filed before the Bureau its application for registration of the mark "Harvard" with the then
of Legal Affairs of the Philippine Intellectual Property Office a Petition for
Philippine Patents Office. However, Harvard University's registration of the
Cancellation of Registration No. 56561 issued to President and Fellows of
name "Harvard" is based on home registration which is allowed under
Harvard College (Harvard University) for the mark Harvard Veritas Shield Section 37 of R.A. No. 166. As pointed out by Harvard University in its
Symbol under classes 16, 18, 21, 25 and 28.
Comment:
Fredco claimed that Harvard University had no right to register the mark in
class 25, since its Philippine registration was based on a foreign
registration. Thus, Harvard University could not have been considered as a
prior adopter and user of the mark in the Philippines.
Fredco explained that the mark was first used in the Philippines by its
predecessor-in-interest New York Garments as early as 1982, and a
certificate of registration was issued in 1988 for goods under class 25.
Although the registration was cancelled for the non-filing of an affidavit of
use, the fact remained that the registration preceded Harvard Universitys
use of the subject mark in the Philippines.
Harvard University, on the other hand claimed that the name and mark
Harvard was adopted in 1639 as the name of Harvard College of
Cambridge, Massachusetts, USA. The marks Harvard and Harvard
Veritas Shield Symbol, had been used in commerce since 1872, and was
registered in more than 50 countries.
The Bureau of Legal Affairs ruled in favor of Fredco and ordered the
cancellation of Registration No. 56561. It found Fredco to be the prior user
and adopter of the mark Harvard in the Philippines. On appeal, the Office
of the Director General of the Intellectual Property Office reversed the BLA
ruling on the ground that more than the use of the trademark in the
Philippines, the applicant must be the owner of the mark sought to be
registered. Fredco, not being the owner of the mark, had no right to
register it.
The Court Appeals affirmed the decision of the Office of the Director
General. Fredco appealed the decision with the Supreme Court. In its
appeal, Fredco insisted that the date of actual use in the Philippines should
prevail on the issue of who had a better right to the mark.
The Supreme Court ruled:
The petition has no merit.
Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166),
before a trademark can be registered, it must have been actually used in

Although Section 2 of the Trademark law (R.A. 166) requires for the
registration of trademark that the applicant thereof must prove that the
same has been actually in use in commerce or services for not less than
two (2) months in the Philippines before the application for registration is
filed, where the trademark sought to be registered has already been
registered in a foreign country that is a member of the Paris Convention,
the requirement of proof of use in the commerce in the Philippines for the
said period is not necessary. An applicant for registration based on home
certificate of registration need not even have used the mark or trade name
in this country.
In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No.
8293), "[m]arks registered under Republic Act No. 166 shall remain in
force but shall be deemed to have been granted under this Act x x x,"
which does not require actual prior use of the mark in the Philippines.
Since the mark "Harvard Veritas Shield Symbol" is now deemed granted
under R.A. No. 8293, any alleged defect arising from the absence of actual
prior use in the Philippines has been cured by Section 239.2.
The Supreme Court further ruled that Harvard University is entitled to
protection in the Philippines of its trade name Harvard even without
registration of such trade name in the Philippines. It explained:
There is no question then, and this Court so declares, that "Harvard" is a
well-known name and mark not only in the United States but also
internationally, including the Philippines. The mark "Harvard" is rated as
one of the most famous marks in the world. It has been registered in at
least 50 countries. It has been used and promoted extensively in numerous
publications worldwide. It has established a considerable goodwill
worldwide since the founding of Harvard University more than 350 years
ago. It is easily recognizable as the trade name and mark of Harvard
University of Cambridge, Massachusetts, U.S.A., internationally known as
one of the leading educational institutions in the world. As such, even
before Harvard University applied for registration of the mark "Harvard" in
the Philippines, the mark was already protected under Article 6bis and
Article 8 of the Paris Convention.

ESSO STANDARD EASTERN, INC vs.CA

and UNITED CIGARETTE CORPORATION
G.R. No. L-29971. August 31, 1982
Facts:
Esso filed a case against United Cigarette
Corp for trademark infringement alleging
that after the latter had acquired in
November, 1963 the business, factory and
patent rights of La Oriental Tobacco
Corporation, it began to use the trademark
ESSO on its cigarettes, the same trademark
used by petitioner in its quality petroleum
products which was likely to cause
confusion or deception on the part of the
purchasing public as to its origin or source,
to the detriment of its own products.
In its answer, private respondent admitted
the use of the trademark ESSO on its own
product of cigarettes but claimed that these
were not identical to those produced and
sold by the petitioner
The trial court found United Cigarette Corp
guilty of infringement of trademark.
On appeal, the judgment was reversed and
the complaint was dismissed.
Issue/Answer:
WON United Cigarette Corp can be held
liable for trademark infringement / negative
Ratio Decidendi:
The law defines infringement as the use
without consent of the trademark owner of
any "reproduction, counterfeit, copy or
colorable imitation of any registered mark or
tradename in connection with the sale, offering for sale, or advertising of

any
goods, business or services on or in
connection with which such use is likely to
cause confusion or mistake or to deceive
purchasers or others as to the source or
origin of such goods or services, or identity
of such business; or reproduce, counterfeit,
copy or colorably imitate any such mark or
tradename and apply such reproduction,
counterfeit, copy or colorable imitation to
labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to
be used upon or in connection with such
goods, business or services."
Implicit in this definition is the concept that
the goods must be so related that there is a
likelihood either of confusion of goods or
business.
1 It is undisputed that the goods on which
petitioner uses the trademark ESSO,
petroleum products, and the product of
respondent, cigarettes, are non-competing.
non-competing goods may be those which,
though they are not in actual competition,
are so related to each other that it might
reasonably be assumed that they originate
from one manufacturer.
Goods are related when they belong to the
same class or have the same descriptive
properties; when they possess the same
physical attributes or essential
characteristics with reference to their form,
composition, texture or quality.
the goods are obviously different from each
other with "absolutely no iota of
similitude"

 They are so foreign to each other as to

make it unlikely that purchasers would think
that petitioner is the manufacturer of
respondent's goods. 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 trademark by others on
unrelated articles of a different kind.
2 The products of each party move along
and are disposed through different channels
of distribution.
3 A comparison of the labels of the samples
of the goods submitted by the parties shows
a great many differences on the trademarks
used.
CA decision affirmed.

Canon Kabushiki Kaisha vs. Court of Appeals and NSR to protect industrial property consisting of patents, utility models,
industrial designs, trademarks, service marks, trade names and indications
Rubber Corporation, G. R. No. 120900, 20 July 2000
Facts:
R NSR Rubber Corporation filed an application for registration of the mark
CANON for sandals.

of source or appellations of origin, and at the same time aims to

repress unfair competition.

We agree with public respondents that the controlling doctrine with

respect to the applicability of Article 8 of the Paris Convention is
that established in Kabushi Kaisha Isetan vs. Intermediate Appellate Court.

P, a foreign corporation duly organized and existing under the laws of

As pointed out by the BPTTT:
Japan, filed an opposition alleging that it will be damaged by the
registration of the trademark. P holds certificate of registration for the
Regarding the applicability of Article 8 of the Paris Convention, this Office
mark CANON in various countries and in the Philippines covering goods like
believes that there is no automatic protection afforded an entity whose
paints, chemical products, toner and dye stuff.
tradename is alleged to have been infringed through the use of that name
as a Trademark by a local entity. In Kabushiki Kaisha Isetan vs. The
BPTTT dismissed the opposition and gave due course to PRs application for
Intermediate Appellate Court, et. al., G.R.No. 75420, 15 November 1991,
registration. P appealed.
the Honorable Supreme Court held that: The Paris Convention for the
Protection of Industrial Property does not automatically exclude all
CA affirmed the decision of BPTTT holding that R can use the trademark
countries of the world which have signed it from using a tradename
because the products of the two parties are dissimilar. Hence, this petition
which happens to be used in one country. To illustrate if a taxicab or
for review.
bus company in a town in the United Kingdom or India happens to use the
tradename Rapid Transportation, it does not necessarily follow that
Issue:
Rapid can no longer be registered in Uganda, Fiji, or the Philippines.
Whether or not P is entitled to the exclusive use of CANON because it
forms part of its corporate name, protected by the Paris Convention.
Ruling:
We cannot uphold petitioners position.
The term trademark is defined by RA 166, the Trademark Law, as
including any word, name, symbol, emblem, sign or device or any
combination thereof adopted and used by a manufacturer or merchant to
identify his goods and distinguish them for those manufactured, sold or
dealt in by others. Tradename is defined by the same law as including
individual names and surnames, firm names, tradenames, devices or
words used by manufacturers, industrialists, merchants, agriculturists,
and others to identify their business, vocations, or occupations; the names
or titles lawfully adopted and used by natural or juridical persons,
unions, and any manufacturing, industrial, commercial, agricultural or
other organizations engaged in trade or Simply put, a trade name
refers to the business and its goodwill; a trademark refers to the
goods.
The Convention of Paris for the Protection of Industrial Property, otherwise
known as the Paris Convention, of which both the Philippines and Japan,
the country of petitioner, are signatories, is a multilateral treaty that seeks

WHEREFORE, in view of the foregoing, the instant petition for review on

certiorari is DENIED for lack of merit.

Faberge v IAC Digest

G.R. No. 71189, November 4, 1992
Facts of the Case:
Co Beng Kay applied for the registration of the trademark 'BRUTE' to be
used it its underwear (briefs) products. The petitioner opposed on the
ground that there is similarity with their own symbol (BRUT, Brut33 &
Device) used on its aftershave, deodorant, cream shave, hairspray and hair
shampoo/soaps and that it would cause injury to their business reputation.
It must be noted that the petitioner never applied for registration of said
trademark for its brief products. The Patent Office allowed Co Beng Kay the
registration and this was further affirmed by the Court of Appeals.

that the controlling ruling is that laid down in ESSO Standard Eastern,
Inc. vs. Court of Appeals, to the effect that the identical trademark can be
used by different manufacturers for products that are non-competing and
unrelated.
Petitioner asserts that the alleged application for registration of the
trademark "BRUT 33 DEVICE" for briefs is an explicit proof that petitioner
intended to expand its mark "BRUT" to other goods, and that relief is
available where the junior user's goods are not remote from any product
that the senior user would be likely to make or sell.

On the other hand, private respondent echoes the glaring difference in

physical appearance of its products with petitioner's own goods by
Issue: Is there confusing similarity between the challenged marks and that stressing the observations of the Director of Patents in that the involved
its use would likely cause confusion on the part of the purchasers?
trademarks are grossly different in their overall appearance and that even
at a distance a would-be purchaser could easily distinguish what is BRUTE
HELD: NONE. Co Beng Kay may rightly appropriate the mark. In this case
brief and what is BRUT after shave lotion, lotion and the like.
Sec. 20 (Philippine Intellectual Property Law) is controlling. The certificate
of registration issued confers the exclusive right to use its own symbol only Moreover, private respondent asserts that briefs and cosmetics do not
to those goods specified by the first user in the certificate, subject to any
belong to the same class nor do they have the same descriptive properties
conditions or limitations stated therein. Moreover, the two products are so
such that the use of a trademark on one's goods does not prevent the
dissimilar that a purchaser of one (a brief) would not be misled or
adoption and use of the same trademark by others on unrelated articles of
mistaken into buying the other (such as an aftershave).
a different nature.
54. G.R. No. 71189. November 4, 1992.]
FABERGE, INCORPORATED, petitioner, vs. THE INTERMEDIATE
APPELLATE COURT and CO BENG KAY, respondents.
MELO, J.:

Issue: whether private respondent may appropriate the trademark

"BRUTE" for the briefs it manufactures and sells to the public albeit
petitioner had previously registered the symbol "BRUT" and "BRUT 33" for
its own line of times

Facts: In the course of marketing petitioner's "BRUT" products and during

the pendency of its application for registration of the trademark "BRUT 33
and DEVICE" for antiperspirant, personal deodorant, cream shave, after
shave/shower lotion, hair spray, and hair shampoo, respondent Co Beng
Kay of Webengton Garments Manufacturing applied for registration of the
disputed emblem "BRUTE" for briefs. Opposition raised by petitioner
anchored on similarity with its own symbol and irreparable injury to the
business reputation of the first user was to no avail.

Held: Yes. It is apropos to shift Our attention to the pertinent provisions of

the new Civil Code (Arts. 520, 521, and 522) vis-a-vis Republic Act No. 166
(Secs. 2, 2-A,4, 4(d),11 and 20), as amended, the special law patterned
after the United States Trademark Act of 1946.

When the legal tussle was elevated to respondent court, Justice Gopengco
remarked that a look at the marks "BRUT," "BRUT 33" and "BRUTE" shows
that such marks are not only similar in appearance but they are even
similar in sound and in the style of presentation; that it is reasonable to
believe that this similarity is sufficient to cause confusion and even mistake
and deception in the buying public as to the origin for source of the goods
bearing such trademarks.
Later, respondent's Motion for Reconsideration merited the nod of approval
of the appellate court brought about by private respondent's suggestion

Having thus reviewed the laws applicable to the case, private respondent
may be permitted to register the trademark "BRUTE" for briefs produced by
it notwithstanding petitioner's vehement protestations of unfair dealings in
marketing its own set of items which are limited to: after-shave lotion,
shaving cream, deodorant, talcum powder and toilet soap.
In as much as petitioner has not ventured in the production of briefs, an
item which is not listed in its certificate of registration, petitioner cannot
and should not be allowed to feign that private respondent had invaded
petitioner's exclusive domain. To be sure, it is significant that petitioner
failed to annex in its Brief the so-called "eloquent proof that petitioner
indeed intended to expand its mark "BRUT" to other goods". Even then, a
mere application by petitioner in this aspect does not suffice and may not
vest an exclusive right in its favor that can ordinarily be protected by the

Trademark Law.
In short, paraphrasing Section 20 of the Trademark Law as applied to the
documentary evidence adduced by petitioner, the certificate of registration
issued by the Director of Patents can confer upon petitioner the exclusive
right to use its own symbol only to those goods specified in the certificate,
subject to any conditions and limitations stated therein. One who has
adopted and used a trademark on his goods does not prevent the adoption
and use of the same trademark by other for products which are of different
description.
Justice JBL Reyes opined that the Section 4(d) of Republic Act No. 166, as
amended, "does not require that the articles of manufacture of the
previous user and late user of the mark should possess the same
descriptive properties or should fall into the same categories as to bar the
latter from registering his mark in the principal register." Yet, it is equally
true that as aforesaid, the protective mantle of the Trademark Law extends
only to the goods used by the first user as specified in the certificate of
registration following the clear message conveyed by section 20.
How do We now reconcile the apparent conflict between Section 4(d) which
was relied upon by Justice JBL Reyes in the Sta. Ana case and Section 20?
It would seem that Section 4(d) does not require that the goods
manufactured by the second user be related to the goods produced by the
senior user while Section 20 limits the exclusive right of the senior user
only to those goods specified in the certificate of registration. But the rule
has been laid down that the clause which comes later shall be given
paramount significance over an anterior proviso upon the presumption that
it expresses the latest and dominant purpose.. It ineluctably follows that
Section 20 is controlling and, therefore, private respondent can appropriate
its symbol for the briefs it manufactures.
The glaring discrepancies between the two products had been amply
portrayed to such an extent that indeed, "a purchaser who is out in the
market for the purpose of buying respondent's BRUTE brief would definitely
be not mistaken or misled into buying BRUT after shave lotion or
deodorant" as categorically opined in the decision of the Director of Patents
relative to the inter-partes case.
Disclaimer ng SC (apparently, confused din sila. Hehehe)
It would appear that as a consequence of this discourse, there still remains
hanging in mid-air the unanswered puzzle as to why an aspiring
commercial enterprise, given the infinite choices available to it of names
for the intend product, would select a trademark or trade name which
somewhat resembles an existing emblem that had established goodwill.
Our opinion hereinbefore expressed could even open the floodgates to
similar incursions in the future when we interpreted Section 20 of the
Trademark Law as an implicit permission to a manufacturer to venture into
the production of goods and allow that producer to appropriate the brand

name of the senior registrant on goods other than those stated in the
certificate of registration.
But these nagging and disturbing points cannot win the day for petitioner,
although We must hasten to add that in the final denouement, Our
apprehensions in this regard are not entirely irreversible since Section 4(d)
and 20 of the law in question may still be subjected to legislative
modification in order to protect the original user of the symbol.

55. G.R. No. 103543. July 5, 1993.]

ASIA BREWERY, INC. petitioner, vs. THE HON. COURT OF APPEALS
and SAN MIGUEL CORPORATION, respondents.
On September 15, 1988, San Miguel Corporation (smc) filed a complaint
against (ABI) for infringentment of trademark and unfair competition on
account of the latters BEER NA BEER product which has been competing
with SMCs SAN MIGUEL PALE PILSENS the local beer market. SMC claims
that the trade dress of BEER PILSEN is, confusingly SAN MIGUEL PALE
PILSEN because both are bottled in 320 ml. steine type, amber-colored
bottles with regular labels.
On August 27, 1990, RTC dismissed the complaint. SMC appealed to the
Court of Appeal the lower courts decision. Upon a motion for
reconsideration filed by ABI, the decision was the time, ABI appealed to
this court by a petition for certiorari under Rule 45 Rules of Court.
Issue: Does ABIs BEER PALE PILSEN label or design infringe
upon that of SAN MIGUEL PALE PILSEN?
Ruling:
No.
Only registered trade marks, trade names and service marks are protected
against infringement authorized use by another or others. It has been
consistently held that the question of infringement remark is to be
determined by the test of dominancy. Similarity in size, form and color,
while relevant, inclusive. If the competing trademark contains the main or
essential or dominant features of another, and command deception is likely
to result, infringement takes place. Duplication or imitation is not
necessary; nor necessary that the infringing label should suggest an effort
to imitate.
The fact that the words pale pilsen are part of ABIs trademark does not
constitute an infringement of SMCs trademark: SAN MIGUEL PALE PILSEN,
for pale pilsen are generic words descriptive of color (pale), of a type of
beer (pilsen), which is a light bohemian beer with strong hops flavor that
originate the City of Pilsen in Czechoslovakia and became famous in the
Middle ages. Pilsen is a primarily geologically descriptive word.
A word or a combination of words which is merely descriptive of an article
of trade, or its composition, characteristics, or qualities, cannot be
appropriated and protected as a trademark to the exclusion its use by
others inasmuch as all persons have an equal right to produce and vend
similar articles, they also have the right to describe them properly and ot
use any appropriate language or words for that purpose, and no person
can appropriate to himself exclusively any word or expressions, properly
descriptive of the article, its qualities, ingredients or characteristics, and
thus limit other persons in the use of language appropriate to the

description of their manufacturers, the right to the use of such language

being common to all. This rule excluding descriptive term has also been
held to apply to trade-means. As to whether words employed fall within
this prohibition, it is said that the true test is not whether they are
exhaustively descriptive of the article designated, but whether in
themselves and as they are commonly used by those who understand their
meaning, they are reasonably indicative and descriptive of the thing
intended. If they are thus descriptive, and not arbitrary, they cannot be
appropriated from general use and become the exclusive property of
anyone. [52 Am Jur. 542-543].
The circumstance that the manufacturer of BEER PALE PILSEN, Asia
Brewery Incorporated, has printed its name all over the bottle of its beer
product: on the label, on the back of the botlle, as well as on the bottle
cap, disproves SMCs charge that ABI dishonestly and fraudently intends to
palm off its BEER PALE PILSEN as SMCs product. In view of the visible
differences between the two products, the Court believes its quite unlikely
that a customer of average intelligence would mistake a bottle of BEER
PALE PILSEN for SAN MIGUEL PALE PILSEN.

52. G.R. No. 78325. January 25, 1990.]

DEL MONTE CORPORATION and PHILIPPINE PACKING
CORPORATION, petitioners, vs. COURT OF APPEALS and SUNSHINE
SAUCE MANUFACTURING INDUSTRIES, respondents.
CRUZ, J.

trademark or unfair competition. The Court of Appeals affirmed the

decision.

FACTS: Petitioner Philippine Packing Corporation (Philpack) is a domestic

corporation duly organized under the laws of the Philippines. On April 11,
1969, Del Monte Corporation is a foreign company organized under the
laws of the United States and not engaged in business in the Philippines,
granted Philpack the right to manufacture, distribute and sell in the
Philippines various agricultural products, including catsup, under the Del
Monte trademark and logo.

HELD: YES. While the Court does recognize the distinctions between the
products of Del Monte and Sunshine, it does not agree with the conclusion
that there was no infringement or unfair competition. It seems to us that
the lower courts have been so pre-occupied with the details that they have
not seen the total picture.

ISSUE: Whether or not there was trademark infringement and

unfair competition

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
On October 27,1965, Del Monte authorized Philpack to register with the
article upon the eye of the casual purchaser who is unsuspicious and off his
Philippine Patent Office the Del Monte catsup bottle configuration, for which guard, is such as to likely result in his confounding it with the original. A
it was granted Certificate of Trademark Registration No. SR-913 by the
number of courts have held that to determine whether a trademark has
Philippine Patent Office under the Supplemental Register. On November 20, been infringed, we must consider the mark as a whole and not as
1972, Del Monte also obtained two registration certificates for its
dissected. If the buyer is deceived, it is attributable to the marks as a
trademark "DEL MONTE" and its logo.
totality, not usually to any part of it. The judge must be aware of the fact
that usually a defendant in cases of infringement does not normally copy
Respondent Sunshine Sauce Manufacturing Industries was issued a
but makes only colorable changes.
Certificate of Registration by the Bureau of Domestic Trade on April
17,1980, to engage in the manufacture, packing, distribution and sale of
At that, even if the labels were analyzed together it is not difficult to see
various kinds of sauce, identified by the logo Sunshine Fruit Catsup. This
that the Sunshine label is a colorable imitation of the Del Monte trademark.
logo was registered in the Supplemental Register on September 20,
The predominant colors used in the Del Monte label are green and red1983. The product itself was contained in various kinds of bottles,
orange, the same with Sunshine. The word "catsup" in both bottles is
including the Del Monte bottle, which the private respondent bought from
printed in white and the style of the print/letter is the same. Although the
the junk shops for recycling.
logo of Sunshine is not a tomato, the figure nevertheless approximates
that of a tomato.
Having received reports that the private respondent was using its
exclusively designed bottles and a logo confusingly similar to Del Monte's,
As previously stated, the person who infringes a trade mark does not
Philpack warned it to desist from doing so on pain of legal action.
normally copy out but only makes colorable changes, employing enough
Thereafter, claiming that the demand had been ignored, Philpack and Del
points of similarity to confuse the public with enough points of differences
Monte filed a complaint against the private respondent for infringement of to confuse the courts. What is undeniable is the fact that when a
trademark and unfair competition, with a prayer for damages and the
manufacturer prepares to package his product, he has before him a
issuance of a writ of preliminary injunction. In its answer, Sunshine alleged boundless choice of words, phrases, colors and symbols sufficient to
that it had long ceased to use the Del Monte bottle and that its logo was
distinguish his product from the others. When as in this case, Sunshine
substantially different from the Del Monte logo and would not confuse the
chose, without a reasonable explanation, to use the same colors and
buying public to the detriment of the petitioners.
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 deceive .
After trial, the Regional Trial Court of Makati dismissed the complaint. It
As for the unfair competition, private respondent Sunshine, despite the
held that there were substantial differences between the logos or
many choices available to it and notwithstanding that the caution "Del
trademarks of the parties; that the defendant had ceased using the
Monte Corporation, Not to be Refilled" was embossed on the bottle, still
petitioners' bottles; and that in any case the defendant became the owner opted to use the petitioners' bottle to market a product which Philpack also
of the said bottles upon its purchase thereof from the junk yards.
produces. This clearly shows the private respondent's bad faith and its
Furthermore, the complainants had failed to establish the defendant's
intention to capitalize on the latter's reputation and goodwill and pass off
malice or bad faith, which was an essential element of infringement of
its own product as that of Del Monte.

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
Petitioners Claim:
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
issuance of a writ of preliminary injunction.
Respondents Claim:
Sunshine alleged that it had long ceased to use the Del Monte
bottle and that its logo was substantially different from the Del Monte logo
and would not confuse the buying public to the detriment of the
petitioners.
Issue:
Whether infringement of trademark and unfair competition exist
Held:

YES. 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 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.

59. G.R. No. 100098. December 29, 1995.]

EMERALD GARMENT MANUFACTURING CORPORATION, petitioner,
vs. HON. COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS
AND TECHNOLOGY TRANSFER and H.D. LEE COMPANY, INC.,
respondents.

Plaintiffs Contention:
H.D. Lee Co., Inc., a foreign corporation organized under the laws of
Delaware, U.S.A., filed with the Bureau of Patents, Trademarks &
Technology Transfer (BPTTT) a Petition for Cancellation of Registration No.
SR 5054 (Supplemental Register) for the trademark "STYLISTIC MR. LEE"
used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits,
dresses, shorts, shirts and lingerie under Class 25, issued on 27 October
1980 in the name of petitioner Emerald Garment Manufacturing
Corporation, a domestic corporation organized and existing under
Philippine laws.
The company also invoked Sec. 37 of R.A. No. 166 (Trademark Law) and
Art. VIII of the Paris Convention for the Protection of Industrial Property,
averred that petitioner's trademark "so closely resembled its own
trademark, 'LEE' as previously registered and used in the Philippines, and
not abandoned, as to be likely, when applied to or used in connection with
petitioner's goods, to cause confusion, mistake and deception on the part
of the purchasing public as to the origin of the goods."
Defendants Contention:.
Emerald Garment contended that its trademark was entirely and
unmistakably different from that of private respondent and that its
certificate of registration was legally and validly granted.
Emerald Garment further alleges that it has been using its trademark
"STYLISTIC MR. LEE" since 1 May 1975, yet, it was only on 18 September
1981 that H.D. Lee Co. filed a petition for cancellation of Emeralds
certificate of registration for the said trademark.
RULING: The essential element of infringement is colorable imitation. This
term has been defined as "such a close or ingenious imitation as to be
calculated to deceive ordinary purchasers, or such resemblance of the
infringing mark to the original as to deceive an ordinary purchaser giving
such attention as a purchaser usually gives, and to cause him to purchase
the one supposing it to be the other." Colorable imitation does not mean
such similitude as amounts to identity. Nor does it require that all the
details be literally copied. Colorable imitation refers to such similarity in
form, content, words, sound, meaning, special arrangement, or general
appearance of the trademark or tradename with that of the other mark or

tradename in their over-all presentation or in their essential, substantive

and distinctive parts as would likely mislead or confuse persons in the
ordinary course of purchasing the genuine article.
In determining whether colorable imitation exists, jurisprudence has
developed two kinds of tests the Dominancy Test applied and the Holistic
Test.
As its title implies, the test of dominancy focuses on the similarity of the
prevalent features of the competing trademarks which might cause
confusion or deception and thus constitutes infringement. 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 it is necessary that the
infringing label should suggest an effort to imitate.
On the other side of the spectrum, the holistic test mandates that the
entirety of the marks in question must be considered in determining
confusing similarity. In determining whether the trademarks are
confusingly similar, a comparison of the words is not the only determinant
factor. The trademarks in their entirety as they appear in their respective
labels or hang tags must also be considered in relation to the goods to
which they are attached. The discerning eye of the observer must focus not
only on the predominant words but also on the other features appearing in
both labels in order that he may draw his conclusion whether one is
confusingly similar to the other.
Applying the foregoing tenets to the present controversy and taking into
account the factual circumstances of this case, we considered the
trademarks involved as a whole and rule that petitioner's "STYLISTIC MR.
LEE" is not confusingly similar to private respondent's "LEE" trademark.
Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its
label the word "LEE" is prominent, the trademark should be considered as
a whole and not piecemeal. The dissimilarities between the two marks
become conspicuous, noticeable and substantial enough to matter
especially in the light of the following variables that must be factored in.
First, the products involved in the case at bar are, in the main, various
kinds of jeans. These are not your ordinary household items like catsup,
soysauce or soap which are of minimal cost. Maong pants or jeans are not
inexpensive. Accordingly, the casual buyer is predisposed to be more
cautious and discriminating in and would prefer to mull over his purchase.
Confusion and deception, then, is less likely.
Second, like his beer, the average Filipino consumer generally buys his
jeans by brand. He does not ask the sales clerk for generic jeans but for,
say, a Levis, Guess, Wrangler or even an Armani. He is, therefore, more or
less knowledgeable and familiar with his preference and will not easily be
distracted.

Finally, in line with the foregoing discussions, more credit should be given
to the "ordinary purchaser." Cast in this particular controversy, the ordinary
purchaser is not the "completely unwary consumer" but is the "ordinarily
intelligent buyer" considering the type of product involved.
As we have previously intimated the issue of confusing similarity between
trademarks is resolved by considering the distinct characteristics of each
case. In the present controversy, taking into account these unique factors,
we conclude that the similarities in the trademarks in question are not
sufficient as to likely cause deception and confusion tantamount to
infringement.
Another way of resolving the conflict is to consider the marks involved from
the point of view of what marks are registrable. "LEE" is primarily a
surname. Private respondent cannot, therefore, acquire exclusive
ownership over and singular use of said term. It has been held that a
personal name or surname may not be monopolized as a trademark or
tradename as against others of the same name or surname. For in the
absence of contract, fraud, or estoppel, any man may use his name or
surname in all legitimate ways. Thus, "Wellington" is a surname, and its
first user has no cause of action against the junior user of "Wellington" as
it is incapable of exclusive appropriation.
In addition to the foregoing, we are constrained to agree with petitioner's
contention that private respondent failed to prove prior actual commercial
use of its "LEE" trademark in the Philippines before filing its application for
registration with the BPTTT and hence, has not acquired ownership over
said mark.
Actual use in commerce in the Philippines is an essential prerequisite for
the acquisition of ownership over a trademark pursuant to the Philippine
Trademark Law (R.A. No. 166).
For lack of adequate proof of actual use of its trademark in the Philippines
prior to Emerald Garments use of its own mark and for failure to establish
confusing similarity between said trademarks, H.D. Lee Co's action for
infringement must necessarily fail.