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The foregoing unmistakably show that petitioner, through its predecessor-in- 4. MIRPURI v. CA
interest, had made use of the word "SELECTA" not only as a trade-name
FACTS: On June 15, 1970, one Lolita Escobar, the predecessor-in-interest
indicative of the location of the restaurant where it manufactures and sells its
of petitioner Pribhdas J. Mirpuri, filed an application with the Bureau of
products, but as trade-mark is used. This is not only in accordance with its
Patents for the registration of the trademark "Barbizon" for use in brassieres
general acceptation but with our law on the matter. "
and ladies undergarments. Escobar alleged that she had been manufacturing
Verily, the word 'SELECTA' has been chosen by petitioner and has been and selling these products under the firm name "L & BM Commercial" since
inscribed on all its products to serve not only as a sign or symbol that may March 3, 1970.
indicate that they are manufactured and sold by it but as a mark of
Private respondent Barbizon Corporation, a corporation organized and doing
authenticity that may distinguish them from the products manufactured and
business under the laws of New York, U.S.A., opposed the application. It
sold by other merchants or businessmen. The Director of Patents, therefore,
claimed that:
erred in holding that petitioner made use of that word merely as a trade-
name and not as a trade-mark within the meaning of the law.1 "The mark BARBIZON of respondent-applicant is confusingly similar to the
trademark BARBIZON which opposer owns and has not abandoned.
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 That opposer will be damaged by the registration of the mark BARBIZON
or enterprise, but once adopted or coined in connection with one's business and its business reputation and goodwill will suffer great and irreparable
as an emblem, sign or device to characterize its products, or as a badge of injury.
authenticity, it may acquire a secondary meaning as to be exclusively
associated with its products and business. In this sense, its used by another That the respondent-applicant's use of the said mark BARBIZON which
may lead to confusion in trade and cause damage to its business. And this is resembles the trademark used and owned by opposer, constitutes an
the situation of petitioner when it used the word 'SELECTA' as a trade-mark. unlawful appropriation of a mark previously used in the Philippines and not
In this sense, the law gives its protection and guarantees its used to the abandoned and therefore a statutory violation of Section 4 (d) of Republic Act
exclusion of all others. And it is also in the sense that the law postulates that No. 166, as amended.”
"The ownership or possession of a trade-mark, . . . shall be recognized and
Director of Patents rendered judgment dismissing the opposition and
protected in the same manner and to the same extent, as are other property
giving due course to Escobar's application.
rights known to the law," thereby giving to any person entitled to the
4 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL PROPERTY LAW
This decision became final and on September 11, 1974, Lolita Escobar was RULING: There can be no doubt that respondent-applicant's sought-to-be-
issued a certificate of registration for the trademark "Barbizon." The registered trademark BARBIZON is similar, in fact obviously identical, to
trademark was "for use in "brassieres and lady's underwear garments like opposer's alleged trademark BARBIZON, in spelling and pronunciation. The
panties."[3] only appreciable but very negligible difference lies in their respective
Escobar later assigned all her rights and interest over the trademark to appearances or manner of presentation. Respondent-applicant's trademark
petitioner Pribhdas J. Mirpuri who, under his firm name then, the "Bonito is in bold letters (set against a black background), while that of the opposer is
Enterprises," was the sole and exclusive distributor of Escobar's "Barbizon" offered in stylish script letters.
products.
It is opposer's assertion that its trademark BARBIZON has been used in
In 1979, however, Escobar failed to file with the Bureau of Patents the trade or commerce in the Philippines prior to the date of application for the
Affidavit of Use of the trademark required under Section 12 of Republic Act registration of the identical mark BARBIZON by the respondent-
(R.A.) No. 166, the Philippine Trademark Law. Due to this failure, the Bureau applicant. However, the allegation of facts in opposer's verified notice of
of Patents cancelled Escobar's certificate of registration. opposition is devoid of such material information. In fact, a reading of the text
On May 27, 1981, Escobar reapplied for registration of the cancelled of said verified opposition reveals an apparent, if not deliberate, omission of
trademark. Mirpuri filed his own application for registration of Escobar's the date (or year) when opposer's alleged trademark BARBIZON was first
trademark. Escobar later assigned her application to herein petitioner and used in trade in the Philippines. Thus, it cannot here and now be ascertained
this application was opposed by private respondent. whether opposer's alleged use of the trademark BARBIZON could be prior to
the use of the identical mark by the herein respondent-applicant, since the
(Note: please see full text for the grounds kasi ang haba)
opposer attempted neither to substantiate its claim of use in local commerce
with any proof or evidence. Instead, the opposer submitted the case for
On March 2, 1982, Escobar assigned to petitioner the use of the business
decision based merely on the pleadings.
name "Barbizon International." Petitioner registered the name with the
Department of Trade and Industry (DTI) for which a certificate of registration On the other hand, respondent-applicant asserted in her amended
was issued in 1987. application for registration that she first used the trademark BARBIZON for
brassiere (or 'brasseire') and ladies underwear garments and panties as
Forthwith, private respondent filed before the Office of Legal Affairs of the early as March 3, 1970. Be that as it may, there being no testimony taken as
DTI a petition for cancellation of petitioner's business name. to said date of first use, respondent-applicant will be limited to the filing date,
June 15, 1970, of her application as the date of first use.
DTI, OLA - cancelled petitioner's certificate of registration, and
declared private respondent the owner and prior user of the business From the foregoing, I conclude that the opposer has not made out a case of
name "Barbizon International.” probable damage by the registration of the respondent-applicant's mark
BARBIZON.
CA - reversed the Director of Patents finding that IPC No. 686 was
not barred by judgment in IPC No. 2049 and ordered that the case (5) ETEPHA vs DIRECTOR OF PATENT
be remanded to the Bureau of Patents for further proceedings
FACTS: Respondent Westmont Pharmaceuticals, Inc., a New York
corporation, sought registration of trademark "Atussin" placed on its
ISSUE: WON the herein opposer would probably be damaged by the "medicinal preparation of expectorant antihistaminic, bronchodilator sedative,
registration of the trademark BARBIZON sought by the respondent-applicant ascorbic acid (Vitamin C) used in the treatment of cough". The trademark is
on the ground that it so resembles the trademark BARBIZON allegedly used used exclusively in the Philippines since January 21, 1959.
and owned by the former to be `likely to cause confusion, mistake or to
Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected.
deceive purchasers?
Petitioner claims that it will be damaged because Atussin is so confusedly
"Tussin" is merely descriptive; it is generic; it furnishes to the buyer no FACTS: Paula Recaro, hereafter referred to as plaintiff, alleged that she is
indication of the origin of the goods; it is open for appropriation by anyone. It doing business under the registered name and style of "BIG FIVE
is accordingly barred from registration as trademark. With jurisprudence PRODUCTS"; that she is the assignee and owner of the trademark "BIG
holding the line, we feel safe in making the statement that any other FIVE 5", which is duly registered with the Philippines Patent Office as per
conclusion would result in "appellant having practically a monopoly" of the Registry No. 3281 dated April 29, 1952; that since May 22, 1952, she had
word "tussin" in a trademark. been using and affixing said trade-mark on the printed labels (a facsimile of
which is appended to the complaint) of her products, namely in vegetable
Nestor Embisan, doing business under the name and style "Nel-Coff ISSUE: Whether or not there is trademark infringement.
Products", is, likewise, engaged in the repacking of vegetable lard on which
HELD: NO.
he uses printed labels bearing the trademark "Big Three" (a facsimile of
which is, likewise, appended to the complaint) which is not registered with The affidavit and other documents, attached to plaintiff's petition for summary
said Patent Office and is but a reproduction, a counterfeit copy or colorable judgment show that the trade-mark "BIG FIVE 5" was duly registered with the
imitation of plaintiff's aforementioned registered trade-mark, to such an extent Philippines Patent Office since April 29, 1952, for use in packing or wrapping
as is likely to cause confusion or mistake or to deceive purchasers or others of Class 47, vegetable lard; that by virtue of an instrument, dated June 1,
as to the source or origin of such repacked products, in gross and 1954, Sy Lin, the original owner of said trade-mark, had sold, assigned and
unauthorized infringement of plaintiff's certificate of registration. transferred his right, title and interest thereto and to the registration thereof,
together with the goodwill of the business in connection therewith, to plaintiff
Defendant filed an answer stating that he has no knowledge or information
herein; and that said deed of sale, assignment and transfer in favor of plaintiff
sufficient to form a belief as to the truth of plaintiff's allegations concerning
had been duly annotated and registered with the Philippines Patent Office,
her personal circumstances, her alleged ownership of the "Big Five
and acknowledged by the same. Upon the other hand, defendant has
Products", and of the trade-mark "BIG FIVE 5", as well as of the registration
admitted that he is engaged in the repacking of vegetable lard and that he
and use thereof by plaintiff.
has been using thereon "for sometime" printed labels bearing the trade-mark
Soon thereafter, plaintiff filed a "petition for summary judgment and dismissal "Nel's Big 3 Lard". What is more, defendant does not claim that the latter is
of the complaint", upon the round that defendant's answer was such as to registered. Lastly, a comparison thereof with plaintiffs label readily shows
raise no genuine issue as to any of the material allegations of the complaint; such of a resemblance in the general features of both as is likely on deceive
that, as to its allegation which were denied by defendant for lack of the ordinary purchaser, exercising ordinary are, and induce him to believe
knowledge or information sufficient to form a belief, plaintiff annexed to the that the goods bearing such labels are products of one and the same
petition her affidavit of merit, as well as a copy of the deed of assignment in enterprise, particularly plaintiff herein, she having been, evidently, in the
her favor of the right, title and interest in and to the trade-mark "BIG FIVE 5" business of repacking vegetable lard before defendant herein.
and of the certificate of registration thereof with the Philippines Patent Office.
Hence, there is no genuine issue about the fact that the use of the trade-
the lower court held that said petition was well founded and rendered mark "Nel's Big 3" on vegetable lard repacked by the defendant constitutes
judgment "enjoining the defendant permanently and perpetually from using an infringement upon plaintiff's registered trade-mark "Big Five 5", which is
wrappings on his products containing the printed labels 'Big Three' and such similarly used on repacked vegetable lard, and the lower court did not err in
devices and words as to constitute infringement of patent and unfair granting, by summary judgment, the injunction prayed for by the plaintiff, in
competition. dismissing defendant's counterclaim, and in refusing to reconsider said
judgment.
A reconsideration of said decision having been denied, defendant interposed
the present appeal, which was certified to us by the Court of Appeals, only Defendant insists, however, that, he having alleged, in his answer, that he
issues of law being raised in defendant's brief, namely, that the trial court has taken steps to substitute and has actually substituted his trade-mark
erred: (1) "in rendering summary judgment considering that there are "Nel's Big 3 Lard" with that of "MARCA 3 LARD", the question raised in
material issues of fact clearly presented for trial and in issuing a permanent plaintiff's complaint has become moot, and, consequently, the lower court
injunction"; (2) "in denying defendant-appellant's motion for reconsideration"; should not have granted the relief in prayed for. This contention is untenable.
7 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL PROPERTY LAW
Firstly, it is based upon an allegation, which has not been established, not descriptive name; and that it is not registered in accordance with the
even supported by affidavit. Secondly, the affidavit, annexed to plaintiff's requirements of Section 37(a), Chapter XI of Republic Act No. 166.
petition for summary judgment shows that said "MARCA 3 LARD" label is still
Director of Patent—dismissed the petition for cancellation.
a colorable imitation of plaintiff's trade-mark. Thirdly plaintiff seeks and is
entitled to a permanent injunction, in the absence of which defendant might ISSUE: Whether or not trademark "Adagio" has become a common
resume the use of his former trade-mark "Nel's Big 3". descriptive name of a particular style of brassiere and is, therefore,
unregistrable.
(7) ROMERO vs MAIDEN OF BRASSIERE
HELD: NO.
FACTS: Respondent company, a foreign corporation, filed with respondent
Director of Patents an application for registration (pursuant to Republic Act This claim is without basis in fact. The evidence shows that the trademark
No. 166) of the trademark "Adagio" for the brassieres manufactured by it. In "Adagio" is a musical term, which means slowly or in an easy manner, and
its application, respondent company alleged that said trademark was first was used as a trademark by the owners thereof (the Rosenthals of Maiden
used by it in the United States on October 26, 1937, and in the Philippines on Form Co., New York) because they are musically inclined. Being a musical
August 31, 1946; that it had been continuously used by it in trade in, or with term, it is used in an arbitrary (fanciful) sense as a trademark for brassieres
the Philippines for over 10 years; that said trademark "is on the date of this manufactured by respondent company. It also appears that respondent
application, actually used by respondent company on the following goods, company has, likewise, adopted other musical terms such as "Etude" (Exh.
classified according to the official classification of goods (Rule 82) - W-2), "Chansonette" (Exh. W-3), "Prelude" (Exh. W-4), "Over-ture" (Exh. W-
Brassieres, Class 40"; and that said trademark is applied or affixed by 6), and "Concerto" (Exh. V), to identify, as a trademark, the different styles or
respondent to the goods by placing thereon a woven label on which the types of its brassieres. As respondent Director pointed out, "the fact that said
trademark is shown. mark is used also to designate a particular style of brassiere, does not affect
its registrability as a trademark" (Kiekhaefer Corp. v. Willys-Overland Motors,
Acting on said application, respondent Director, on August 13, 1957,
Inc., 111 USPQ 105).
approved for publication in the Official Gazette said trademark of respondent
company. Respondent Director issued to respondent company a certificate of It is not true that respondent company did not object to the use of said
registration of with, trademark "Adagio". trademark by petitioner and other local brassiere manufacturers. The records
show that respondent company's agent, Mr. Schwartz, warned the Valleson
Petitioner filed with respondent Director a petition for cancellation of said
Department Store to desist from the sale of the "Adagio" Royal Form
trademark, on the grounds that it is a common descriptive name of an article
brassieres manufactured by petitioner (t.s.n., pp. 27-28, Oct. 7, 1958), and
or substance on which the patent has expired; that its registration was
even placed an advertisement (Exhs. 3 & 4) in the local newspapers (Manila
obtained fraudulently or contrary to the provisions of Section 4, Chapter II of
Daily Bulletin, Manila Times, Fookien Times, and others) warning the public
Republic Act No. 166; and that the application for its registration was not filed
against unlawful use of said trademark (t.s.n., p. 15, Aug. 17, 1959). The
in accordance with the provisions of Section 37, Chapter XI of the same Act.
advertisement (Exh. U) in the Manila Times made by respondent company
Petitioner also alleged that said trademark has not become distinctive of
on February 9, 1958, was brought to petitioner's attention (t.s.n., p. 24, Oct.
respondent company's goods or business; that it has been used by
7, 1958), which must have prompted him to file this present petition for
respondent company to classify the goods (the brassieres) manufactured by
cancellation, on February 26, 1958.
it, in the same manner as petitioner uses the same; that said trademark has
been used by petitioner for almost 6 years; that it has become a common Appellant next contends that the trademark "Adagio at the time it was
registered (in the Philippines) on October 17, 1957, had long been used by
8 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL PROPERTY LAW
respondent company, only "to designate a particular style or quality of Petitioner then wrote all the educational institutions it could find using the
brassiere and, therefore, is unregistrable as a trademark. In support of the word "Lyceum" as part of their corporate name, and advised them to
contention, he alleges that the sentence "Maidenform bras are packaged for discontinue such use of "Lyceum." When, with the passage of time, it
your quick shopping convenience. became clear that this recourse had failed, petitioner instituted before the
SEC SEC-Case No. 2579 to enforce what petitioner claims as its proprietary
This contention is untenable. Said sentence appearing on the package (Exh.
right to the word "Lyceum."
W), standing alone, does not conclusively indicate that the trademark
"Adagio" is merely a style of brassiere. The testimony of Mr. Schwartz, SEC—sustained that the Petitioner has an exclusive right over the worf
witness of respondent company, belies petitioner's claim. “Lyceum”
(8) LYCEUM vs COURT OF APPEALS SEC En Banc—reversed and set aside the decision of the SEC Division.
FACTS: Petitioner is an educational institution duly registered with the CA—Affirmed the decision of the SEC EN Banc.
Securities and Exchange Commission ("SEC"). When it first registered with
Hence, this petition.
the SEC on 21 September 1950, it used the corporate name Lyceum of the
Philippines, Inc. and has used that name ever since. ISSUE: Whether or not Lyceum as a generic word cannot be appropriated by
the petitioner to the exclusion of others.
On 24 February 1984, petitioner instituted proceedings before the SEC to
compel the private respondents, which are also educational institutions, to HELD: NO.
delete the word "Lyceum" from their corporate names and permanently to
"Under the doctrine of secondary meaning, a word or phrase originally
enjoin them from using "Lyceum" as part of their respective names.
incapable of exclusive appropriation with reference to an article in the
Petitioner had sometime before commenced in the SEC a proceeding (SEC- market, because geographical or otherwise descriptive might nevertheless
Case No. 1241) against the Lyceum of Baguio, Inc. to require it to change its have been used so long and so exclusively by one producer with reference to
corporate name and to adopt another name not "similar [to] or identical" with this article that, in that trade and to that group of the purchasing public, the
that of petitioner. In an Order dated 20 April 1977, Associate Commissioner word or phrase has come to mean that the article was his produce (Ana Ang
Julio Sulit held that the corporate name of petitioner and that of the Lyceum vs. Toribio Teodoro, 74 Phil. 56). This circumstance has been referred to as
of Baguio, Inc. were substantially identical because of the presence of a the distinctiveness into which the name or phrase has evolved through the
"dominant" word, i.e., "Lyceum," the name of the geographical location of the substantial and exclusive use of the same for a considerable period of time.
campus being the only word which distinguished one from the other Consequently, the same doctrine or principle cannot be made to apply where
corporate name. The SEC also noted that petitioner had registered as a the evidence did not prove that the business (of the plaintiff) has continued
corporation ahead of the Lyceum of Baguio, Inc. in point of time, 1 and for so long a time that it has become of consequence and acquired a good
ordered the latter to change its name to another name "not similar or will of considerable value such that its articles and produce have acquired a
identical [with]" the names of previously registered entities. well-known reputation, and confusion will result by the use of the disputed
name (by the defendant) (Ang Si Heng vs. Wellington Department Store,
The Lyceum of Baguio, Inc. assailed the Order of the SEC before the
Inc., 92 Phil. 448).
Supreme Court in a case docketed as G.R. No. L-46595. In a Minute
Resolution dated 14 September 1977, the Court denied the Petition for With the foregoing as a yardstick, [we] believe the appellant failed to satisfy
Review for lack of merit. Entry of judgment in that case was made on 21 the aforementioned requisites. No evidence was ever presented in the
October 1977. hearing before the Commission which sufficiently proved that the word
9 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL PROPERTY LAW
'Lyceum' has indeed acquired secondary meaning in favor of the appellant. If distinctive of its sugar long before the respondent used its trademark; that the
there was any of this kind, the same tend to prove only that the appellant had registration of "Valentine" and design has caused and will cause great
been using the disputed word for a long period of time. Nevertheless, its damage to petitioner by reason of mistake, confusion, or deception among
(appellant) exclusive use of the word (Lyceum) was never established or the purchasers because it is similar to its "Victorias" trademark; that
proven as in fact the evidence tend to convey that the cross-claimant was registration was fradulently obtained by Ong Su and that "Valentine" faisely
already using the word 'Lyceum' seventeen (17) years prior to the date the suggests a connection with Saint Valentine or with an institution or belief
appellant started using the same word in its corporate name. Furthermore, connected therewith.
educational institutions of the Roman Catholic Church had been using the
same or similar word like 'Liceo de Manila,' 'Liceo de Baleno' (in Baleno, - The respondent averred that he is doing business under the name and style
Masbate), 'Liceo de Masbate,' 'Liceo de Albay' long before appellant started "Valentine Packaging" and has registered the trademark "Valentine" with a
using the word 'Lyceum'. The appellant also failed to prove that the word design for sugar and was issued Certificate of Registration No. 8891 dated
June 20, 1961; that the trademark "Victorias" with diamond design and the
'Lyceum' has become so identified with its educational institution that
trademark "Valentine" with a design are two different marks; and that there is
confusion will surely arise in the minds of the public if the same word were to
absolutely no likelihood of confusion, mistake or deception to purchasers
be used by other educational institutions.
through the concurrent use of the petitioner's mark "Victorias" with a diamond
In other words, while the appellant may have proved that it had been using design and the respondents' mark "Valentine" with a design in connection
the word 'Lyceum' for a long period of time, this fact alone did not amount to with sugar.
mean that the said word had acquired secondary meaning in its favor
because the appellant failed to prove that it had been using the same word - Arturo Chicane a witness for the respondent, testified that he was a
all by itself to the exclusion of others. More so, there was no evidence distribution agent of Ong Su that he travelled a lot but he river own across an
presented to prove that confusion will surely arise if the same word were to instance when the respondent Ong Su product was mistaken for the
be used by other educational institutions. Consequently, the allegations of petitioner's product; that he found the diamond design to be quite common in
the appellant in its first two assigned errors must necessarily fail. combination with other words used as trademarks as a background or to
enhance their appearance, such as "DIAMOND" and design.
(9) VICTORIAS MILLING COMPANY INC. v. ONG SU
- The Director of Patents denied the petition to cancel the certificate of
FACTS: The petitioner, Victorias Milling Company, Inc., a domestic registration of the respondent Ong Su covering the trademark "Valentine"
corporation and engaged in the manufacture and sale of refined granulated and design because: There is no question that as to their respective literal
sugar is the owner of the trademark "VICTORIAS" and d design registered in designation the trademarks are different. One is VALENTINE while the other
the Philippines Patent Office on November 9, 1961. is VICTORIAS. Thus, as to sound and connotation there is no dispute as to
their dissimilarity. Common geometric shapes such as circles, ovals,
squares, triangles, diamonds, and the like, when used as vehicles for display
- The respondent Ong Su is engaged in the repacking and sale of refine
on word marks, ordinarily are not retarded as indicia of origin for goods to
sugar and is the owner of the trademark "VALENTINE" and design registered
which the marks are applied, unless of course they have acquired secondary
in the Philippines Patent Office on June 20, 1961.
meaning. I have scoured the records completely to ascertain if the petitioner
has submitted satisfactory evidence in this regard, but I find absolutely
- Victorias Mining Company, Inc. filed with the Philippine Patent Office a
nothing to base a ruling that the triangle (sic) design has acquired a
petition to cancel the registration of the Ong Su trademark "Valentine." The
secondary meaning with respect to its sugar business.
petitioner alleged that its trademark "Victorias" and diamond design has
- There is no evidence that the respondent Ong Su had obtained the - While the Director dismissed the opposition, he ruled that the application
registration of his trademark "Valentine" and design by means of fraud. The must be disapproved unless the word "nylon" is also disclaimed. The
said trademark was registered in the Philippines Patent Office before the grounds for the disapproval of the application were as follows:
petitioner registered its trademark.
"Nylon" is merely descriptive of the business of shirt-making if the
The record and evidence show that Ong Su had also used in his business shirts are made of nylon. It is deceptively misdescriptive of said
the name Mariano Ang. Hence the licenses and permits in the name of Ong business, if the shirts are not made of nylon. In either case, its
Su and/or Mariano Ang were correctly admitted as evidence. registration in the Principal Register as a trade-name, or as a part of
a trade-name, is expressly forbidden by subsection (e) of Section 4
(10) ONG AI GUI v. DIRECTOR OF PATENTS
11 |A D D I T I O N A L CASES FOR MIDTERMS - INTELLECTUAL PROPERTY LAW
of Republic Act No. 166, as amended by Section 2 of Republic Act descriptive, and not arbitrary, they cannot be appropriated from general use
No. 638. and become the exclusive property of anyone.
- The applicant has filed an appeal to this Court. During the pendency of this - Applicant petitioner was not entitled to the exclusive use of the terms
appeal, E. I. Du Pont de Nemours and Co. filed a petition to intervene, which
(11) THE GEORGE W. LUFT COMPANY INC. v. NGO GUAN &
petition was granted.
DIRECTOR OF PATENTS
ISSUE: Whether or not NYLON is a generic term.
FACTS: Petitioner George Luft Co., Inc. is the owner of the trademark
HELD: YES. The Court ruled that in connection with shirt-making, NYLON ‘’Tangee’’ which it has allegedly used since 1928 and is covered by a
can never become distinctive thus, can never acquire secondary meaning Certificate of registration of the Philippine Patent Office dated 1950. In 1959,
because it is a generic term distinctive of shirts or of the business of making Ngo Guan applied for the registration of the trademark ‘’Tango’’ which he
them, so no length of use and no amount of advertising will make nylon claims to have used since 1958.
distinctive of shirts and of the business of manufacturing them.
- Petitioner objected thereto alleging that Tango is likely to be mistaken for
- The court upheld the Director of Patents reasoning that a word or a Tangee upon the ground that the two trademarks are confusingly similar.
combination of words, in this case “nylon” and “shirt factory”, which is merely
Director of Patents: Overruled the said opposition and granting Ngo Guan’s
descriptive of an article of trade, or of its composition, characteristics, or
application.
qualities, cannot be appropriated and protected as a trademark to the
exclusion of its use by others. ISSUE: Whether or not the Tango trademark is confusingly similar with the
Tangee trademark.
- Furthermore, the use of the term "nylon" in the tradename is both
"descriptive" and "deceptively and misdescriptive" of the applicant-appellant's HELD: NO. One of the factors essential therefor is whether or not there is a
business, for apparently he does not use nylon in the manufacture of the general similarity in the appearance of the trademarks in question, which
articles he produces and sells. Not to mention, the word “nylon” is a general cannot be determined with reasonable certainty without a physical
term which is not distinctive and, thus, cannot be afforded secondary examination and comparison thereof. Petitioner has rendered such
meaning attributable petitioner’s business so as to permit registration. The examination impossible, by not introducing any evidence whatsoever as to
reason for this is that inasmuch as all persons have an equal right to produce the appearance of Tangee trademark. Such omission suggests that its
and vend similar articles, they also have the right to describe them properly appearance is not analogous to that of respondent’s Tango otherwise,
and to use any appropriate to himself exclusively any word or expression, petitioner would not have failed to present a sample of its trademark, for
properly descriptive of the article, its qualities, ingredients, or characteristics, comparison with that of respondent Ngo Guan.
and thus limit other persons in the use of language appropriate to the
- The word Tango has a well-established meaning, for it describes a
description of their manufactures, the right to the use of such language being
particular dance that is well known in the Philippines. In fact, respondent’s
common to all. This rule excluding descriptive terms has also been held to
label includes a picture of a man and woman dancing. Tango is used for a
apply to trade-names. As to whether words employed fall within this
hair pomade in which petitioner does not deal. The trademark of petitioner
prohibition, it is said that the true test is not whether they are exhaustively
was used for specified chemicals, medical and pharmaceutical preparations-
descriptive of the article designated, but whether in themselves, and as they
which Ngo Guan does not intend to use its Tango on articles of that kind.
are commonly used by those who understand their meaning, they are
reasonably indicative and descriptive of the thing intended. If they are thus
14. Philippine Refining vs. Ng Sam Held: NO. The businesses of the parties are non-competitive and the
products are so unrelated that the use of the same trademark will not give
Facts: The trademark "CAMIA" was first used ill the Philippines by petitioner rise to confusion nor cause damage to the petitioner. The right to a
on its products in 1922. In 1949, petitioner caused the registration of said trademark is a limited one, hence, others may use the same mark on
trademark with the Philippine Patent Office under certificates of registration
unrelated goods if no confusion would arise.
Nos. 1352-S and 1353-S, both issued on May 3, 1949. Certificate of
Registration No. 1352-S covers vegetable and animal fats, particularly lard, A trademark is designed to identify the user, hence, it should be so distinctive
butter and cooking oil, all classified under Class 47 (Foods and Ingredients of
and sufficiently original so as to enable those who see it to recognize
Food) of the Rules of Practice of the Patent Office, while certificate of
registration No. 1353-S applies to abrasive detergents, polishing materials instantly its source or origin. A trademark must be affirmative and definite,
and soap of all kinds (Class 4). significant and distinctive and capable of indicating origin.