Industrial Corporation, the predecessor-in-interest of respondent
Philippine Shoe Expo Marketing Corporation.[6] In this regard,
BIRKENSTOCK ORTHOPAEDIE
GMBH v. PHILIPPINE SHOE EXPO
MARKETING CORPORATION, GR No.
194307, 2013-11-20
Facts:
Petitioner, a corporation duly organized and existing under the
laws of Germany, applied for various trademark registrations
before the IPO, namely: (a) "BIRKENSTOCK" under Trademark
Application Serial No. (TASN) 4-1994-091508 for goods falling
under Class 25 of the
International Classification of Goods and Services (Nice
Classification) with filing date of March 11, 1994; (b)
"BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE
COMPRISING OF ROUND COMPANY SEAL AND
REPRESENTATION OF A FOOT, CROSS AND SUNBEAM"
under TASN 4-1994-091509 for goods... falling under Class 25 of
the Nice Classification with filing date of March 11, 1994; and (c)
"BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE
COMPRISING OF ROUND COMPANY SEAL AND
REPRESENTATION OF A FOOT, CROSS AND SUNBEAM"
under TASN 4-1994-095043 for goods falling under
Class 10 of the Nice Classification with filing date of September
5, 1994 (subject applications).[5]
However, registration proceedings of the subject applications
were suspended in view of an existing registration of the mark
"BIRKENSTOCK AND DEVICE" under Registration No. 56334
dated October 21, 1993 (Registration No. 56334) in the name of
Shoe Town International and
on May 27, 1997 petitioner filed a petition for cancellation of
Registration No. 56334 on the ground that it is the lawful and...
rightful owner of the Birkenstock marks (Cancellation Case).[7]
During its pendency, however, respondent and/or its predecessor-
in-interest failed to file the required 10th Year Declaration of
Actual Use (10th
Year DAU) for Registration No. 56334 on or before October 21,
2004,[8] thereby resulting in the cancellation of such mark.[9]
Accordingly, the cancellation case was dismissed for being moot
and academic.[10]
The aforesaid cancellation of Registration No. 56334 paved the
way for the publication of the subject applications in the IPO e-
Gazette on February 2, 2007.[11] In response, respondent filed
three (3) separate verified notices of oppositions to the subject...
applications docketed as Inter Partes Case Nos. 14-2007-00108,
14-2007-00115, and 14-2007-00116,[12] claiming, inter alia, that:
(a) it, together with its predecessor-in-interest, has been using
Birkenstock marks in the Philippines for... more than 16 years
through the mark "BIRKENSTOCK AND DEVICE"; (b) the
marks covered by the subject applications are identical to the one
covered by Registration No. 56334 and thus, petitioner has no
right to the registration of such marks; (c) on November 15,
1991,... respondent's predecessor-in-interest likewise obtained a
Certificate of Copyright Registration No. 0-11193 for the word
"BIRKENSTOCK"; (d) while respondent and its predecessor-in-
interest failed to file the 10th Year DAU, it continued the use of
"BIRKENSTOCK AND DEVICE" in lawful commerce; and (e)
to record its continued ownership and exclusive right to use the
"BIRKENSTOCK" marks, it has filed TASN 4-2006-010273 as a
"re-application" of its old registration, Registration No.
56334.[13] On November
13, 2007, the Bureau of Legal Affairs (BLA) of the IPO issued
Order No. 2007-2051 consolidating the aforesaid inter partes
cases (Consolidated Opposition Cases).
In its Decision15 dated May 28, 2008, the BLA of the IPO
sustained respondent's opposition, thus, ordering the rejection of
the subject applications. It ruled that the competing marks of the
parties are confusingly similar since they contained the word
"BIRKENSTOCK" and are used... on the same and related goods.
It found respondent and its predecessor-in- interest as the prior
user and adopter of "BIRKENSTOCK" in the Philippines, while
on the other hand, petitioner failed to present evidence of actual
use in the trade and business in this country.
the IPO Director General reversed and set aside the ruling of the
BLA, thus allowing the registration of the subject applications. He
held that with the cancellation of Registration No. 56334 for
respondent's... failure to file the 10th Year DAU, there is no more
reason to reject the subject applications on the ground of prior
registration by another proprietor.
In its Decision[21] dated June 25, 2010, the CA reversed and set
aside the ruling of the IPO Director General and reinstated that of
the BLA. It disallowed the registration of the subject applications
on the ground that the marks covered by such... applications "are
confusingly similar, if not outright identical" with respondent's
mark.[22] It equally held that respondent's failure to file the 10th
Year DAU for Registration No. 56334 "did not deprive petitioner
of its ownership... of the 'BIRKENSTOCK' mark since it has
submitted substantial evidence showing its continued use,
promotion and advertisement thereof up to the present."
Issues:
whether or not the subject marks should be allowed registration in
the name of petitioner
Ruling:
A. Admissibility of Petitioner's
Documentary Evidence.
In the case at bar, while petitioner submitted mere photocopies as
documentary evidence in the Consolidated Opposition Cases, it
should be noted that the IPO had already obtained the originals of
such documentary evidence in the related Cancellation Case
earlier filed before it.
Under this circumstance and the merits of the instant case as will
be subsequently discussed, the Court holds that the IPO Director
General's relaxation of procedure was a valid exercise of his
discretion in the interest of substantial justice.
B. Registration and ownership of
"BIRKENSTOCK."
Republic Act No. (RA) 166,[34] the governing law for
Registration No. 56334, requires the filing of a DAU on specified
periods,[35] to wit:
Section 12. Duration. Each certificate of registration shall remain
in force for twenty years: Provided, That registrations under the
provisions of this Act shall be cancelled by the Director, unless
within one year following the fifth, tenth and... fifteenth
anniversaries of the date of issue of the certificate of registration,
the registrant shall file in the Patent Office an affidavit showing
that the mark or trade-name is still in use or showing that its non-
use is due to special circumstance which excuse such... non-use
and is not due to any intention to abandon the same, and pay the
required fee.
The Director shall notify the registrant who files the above-
prescribed affidavits of his acceptance or refusal thereof and, if a
refusal, the reasons therefor. (Emphasis and underscoring
supplied)
The aforementioned provision clearly reveals that failure to file
the DAU within the requisite period results in the automatic
cancellation of registration of a trademark. In turn, such failure is
tantamount to the abandonment or withdrawal of any right or
interest the... registrant has over his trademark.
In this case, respondent admitted that it failed to file the 10th Year
DAU for Registration No. 56334 within the requisite period, or on
or before October 21, 2004. As a consequence, it was deemed to
have abandoned or withdrawn any right or interest over... the
mark "BIRKENSTOCK." Neither can it invoke Section 236[37]
of the IP Code which pertains to intellectual property rights
obtained under previous intellectual property laws, e.g., RA 166,
precisely because it already lost any right or interest over... the
said mark.
Besides, petitioner has duly established its true and lawful
ownership of the mark "BIRKENSTOCK."
Under Section 2[38] of RA 166, which is also the law governing
the subject applications, in order to register a trademark, one must
be the owner thereof and must have actually used the mark in
commerce in the Philippines for two (2) months prior to the...
application for registration. Section 2-A[39] of the same law sets
out to define how one goes about acquiring ownership thereof.
Under the same section, it is clear that actual use in commerce is
also the test of ownership but the provision went further by...
saying that the mark must not have been so appropriated by
another. Significantly, to be an owner, Section 2-A does not
require that the actual use of a trademark must be within the
Philippines. Thus, under RA 166, one may be an owner of a mark
due to its actual use but may not... yet have the right to register
such ownership here due to the owner's failure to use the same in
the Philippines for two (2) months prior to registration.[40]
It must be emphasized that registration of a trademark, by itself, is
not a mode of acquiring ownership. If the applicant is not the
owner of the trademark, he has no right to apply for its
registration. Registration merely creates a prima facie
presumption of the... validity of the registration, of the registrant's
ownership of the trademark, and of the exclusive right to the use
thereof. Such presumption, just like the presumptive regularity in
the performance of official functions, is rebuttable and must give
way to evidence to the... contrary.[41]
Clearly, it is not the application or registration of a trademark that
vests ownership thereof, but it is the ownership of a trademark
that confers the right to register the same. A trademark is an
industrial property over which its owner is entitled to property
rights which... cannot be appropriated by unscrupulous entities
that, in one way or another, happen to register such trademark
ahead of its true and lawful owner. The presumption of ownership
accorded to a registrant must then necessarily yield to superior
evidence of actual and real ownership... of a trademark.
In the instant case, petitioner was able to establish that it is the
owner of the mark "BIRKENSTOCK." It submitted evidence
relating to the origin and history of "BIRKENSTOCK" and its use
in commerce long before respondent was able to register the same
here in the Philippines.
It has sufficiently proven that "BIRKENSTOCK" was first
adopted in Europe in 1774 by its inventor, Johann Birkenstock, a
shoemaker, on his line of quality footwear and thereafter,
numerous generations of his kin continuously engaged in the
manufacture and sale of shoes and... sandals bearing the mark
"BIRKENSTOCK" until it became the entity now known as the
petitioner. Petitioner also submitted various certificates of
registration of the mark "BIRKENSTOCK" in various countries
and that it has used such mark in different countries worldwide,
including... the Philippines.[44]
On the other hand, aside from Registration No. 56334 which had
been cancelled, respondent only presented copies of sales invoices
and advertisements, which are not conclusive evidence of its
claim of ownership of the mark "BIRKENSTOCK" as these
merely show the transactions made... by respondent involving the
same.[45]
In view of the foregoing circumstances, the Court finds the
petitioner to be the true and lawful owner of the mark
"BIRKENSTOCK" and entitled to its registration, and that
respondent was in bad faith in having it registered in its name.
FREDCO MANUFACTURING was not established in 1936, or in the U.S.A. as indicated by
Fredco in its oblong logo.
CORPORATION V. PRESIDENT AND Under Philippine law, a trade name of a national of a State that
FELLOWS OF HARVARD COLLEGE is a party to the Paris Convention, whether or not the trade name
forms part of a trademark, is protected “without the obligation
(G.R. NO. 185917) of filing or registration.” “Harvard” is the trade name of the
world famous Harvard University, and it is also a trademark of
Harvard University. Under Article 8 of the Paris Convention, as
Facts: well as Section 37 of R.A. No. 166, Harvard University is
Petitioner Fredco Manufacturing filed a petition to cancel the entitled to protection in the Philippines of its trade name
registration of respondent’s mark ‘Harvard Veritas Shield “Harvard” even without registration of such trade name in the
Symbol’ used in products such as bags and t-shirts. Fredco Philippines. This means that no educational entity in the
alleges that the mark ‘Harvard’ was first used and registered by Philippines can use the trade name “Harvard” without the
New York Garments, a domestic corporation and its consent of Harvard University. Likewise, no entity in the
predecessor-in-interest, used in its clothing articles. Respondent Philippines can claim, expressly or impliedly through the use of
Harvard University on the other hand, alleges that it is the lawful the name and mark “Harvard,” that its products or services are
owner of the name and mark in numerous countries worldwide authorized, approved, or licensed by, or sourced from, Harvard
including in the Philippines which was used in commerce as University without the latter’s consent.
early as 1872. Respondent further contend that it never
authorized any person to use its name or mark in connection with
any goods in the Philippines. The IPO Bureau of Legal Affairs
cancelled respondent’s registration of the mark but only over the
goods which are confusingly similar with that of petitioner. IPO
reversed the decision. CA affirmed.
Issue:
Whether or not respondent’s trade name is infringed.
Ruling: YES.
Fredco’s use of the mark “Harvard,” coupled with its claimed
origin in Cambridge, Massachusetts, obviously suggests a false
connection with Harvard University. On this ground alone,
Fredco’s registration of the mark “Harvard” should have been
disallowed. Indisputably, Fredco does not have any affiliation or
connection with Harvard University, or even with Cambridge,
Massachusetts. Fredco or its predecessor New York Garments
 CASE DIGEST: Ana Ang vs. Toribio
Teodoro G.R. No. L-48226
December 14, 1942
Facts:
Respondent Toribio Teodoro has continuously used "Ang
Tibay," both as a trade-mark and as a trade-name, in the
manufacture and sale of slippers, shoes, and indoor baseballs
since 1910. On September 29, 1915, he formally registered it as
trade-mark and as trade-name on January 3, 1933.
Petitioner Ana Ang registered the same trade-mark "Ang
Tibay" for pants and shirts on April 11, 1932, and established a
factory for the manufacture of said articles in the year 1937.
The Court of First Instance of Manila absolved the defendant
(Ms. Ang) on the grounds that the two trademarks are
dissimilar and are used on different and non-competing goods;
that there had been no exclusive use of the trade-mark by the
plaintiff; and that there had been no fraud in the use of the said
trade-mark by the defendant because the goods on which it is
used are essentially different from those of the plaintiff.
The Court of Appeals reversed said judgment, directing the
Director of Commerce to cancel the registration of the trade-
mark "Ang Tibay" in favor of petitioner, and perpetually
enjoining the latter from using said trade-mark on goods
manufactured and sold by her.
Thus, this case, a petition for certiorari.
Issue:
Are the goods or articles or which the two trademarks are used
similar or belong to the same class of merchandise?
Ruling:
Yes, pants and shirts are goods closely similar to shoes and
slippers. They belong to the same class of merchandise as
shoes and slippers. They are closely related goods.
The Supreme Court affirmed the judgment of the Court of
Appeals and added that “although two non-competing articles
may be classified under to different classes by the Patent Office
because they are deemed not to possess the same descriptive
properties, they would, nevertheless, be held by the courts to
belong to the same class if the simultaneous use on them of
identical or closely similar trademarks would be likely to cause
confusion as to the origin, or personal source, of the second
user’s goods. They would be considered as not falling under the
same class only if they are so dissimilar or so foreign to each
other as to make it unlikely that the purchaser would think that
the first user made the second user’s goods”.
Mcdonald’s Corporation et.al. vs.
L.C. Big Mak Burger, Inc., et. al.,
G.R. No. 143993, August 18, 2004 The court also found respondents guilty of unfair competition,
reasoning that respondents passed off their products as though
they were of petitioner’s. Had respondents gave due notice as to
FACTS:
who clearly sells the products, they would have only been guilty
The court ruled that the use of the respondents of the “Big Mak”
of infringement.
mark infringed the trademark of that of petitioner McDonald’s
“Big Mac”. Using the dominancy test, the court reasoned that
both marks are closely similar (visually and orally). The law
prohibits usage of marks which might cause confusion and
mistake or might deceive/mislead consumers as to the origin,
general appearance, nature, and kind, among others, of their
products and/or services (Sec 155.1, ICP).

RULING:
The court not only ruled on the confusion of similar goods but
also on the issue of confusion of business. The Court found that
petitioners have duly established McDonald's exclusive
ownership of the "Big Mac" mark and that usage of respondents
of the “Big Mak” mark has unjustly created the impression that
its business is approved and sponsored by, or affiliated with
petitioners.
McDONALD’S CORPORATION v.
MACJOY FASTFOOD
CORPORATION. G.R. No. 166115.
February 2, 2007
FACTS:
MacJoy Fastfood Corp. is a corporation in the sale of fastfood
based in Cebu filed with IPO for the registration of their name.
McDonald's Corporation filed an opposition to the application.
McDonald's claims that their logo and use of their name would
falsely tend to suggest a connection with MacJoy's services and
food products, thus, constituting a fraud upon the general public
and further cause the dilution of the distinctiveness of
petitioner’s registered and internationally recognized
MCDONALD’S marks to its prejudice and irreparable damage.
Respondent averred that MACJOY has been used for the past
many years in good faith and has spent considerable sums of
money for said mark.
The IPO held that there is confusing similarity The CA held
otherwise stating there are predominant difference like the
spelling, the font and color of the trademark and the picture of
the logo.
ISSUE: Whether the ruling of the CA is correct.
including the labels and packaging, in determining confusing
similarity. Under the latter test, a comparison of the words is not
the only determinant factor.
The IPO, though they correctly used the dominancy, they should
have taken more considerations. In recent cases, the SC has
consistently used and applied the dominancy test in determining
confusing similarity or likelihood of confusion between
competing trademarks. The CA, while seemingly applying the
dominancy test, in fact actually applied the holistic test.
Applying the dominancy test to the instant case, the Court both
marks are confusingly similar with each other such that an
ordinary purchaser can conclude an association or relation
between the marks. The predominant features such as the "M,"
"Mc," and "Mac" appearing in both easily attract the attention of
would-be customers. Most importantly, both trademarks are
used in the sale of fastfood products.
Petitioner has the right of ownership in the said marks.
Petitioner's mark was registered in 1977 while respondent only
in 1991.

RULING:
No. Jurisprudence developed two tests, the dominancy and
holistic test. The dominancy test focuses on the similarity of the
prevalent features of the competing trademarks that might cause
confusion or deception while the holistic test requires the court
to consider the entirety of the marks as applied to the products,
G.R. No. 164321 March 23, 2011SKECHE
RS, U.S.A., INC.
vs.
INTER PACIFIC INDUSTRIAL
TRADING CORP.Petitioner’s claim:
Skechers, USA contend that re
s p o n d e n t s a r e g u i l t y o f trademar
k infringement of their registered
trademark “S” (within an oval design)
Respondents’ claim:
they argued that there was no confusing similarity
betweenpetitioner’s "Skechers" rubber shoes and its "Strong"
rubber shoes
Facts:
Petitioner filed an application for the issuance of search
warrants against anoutlet and warehouse operated
by respondents for infringement of trademark underSection
155, in relation to Section 170 of Republic Act No.
8293, IP Code of thePhilippines. In the course of its
business, petitioner has registered the
trademark"SKECHERS" and the trademark "S" (within an
oval design) with the IPO. Two search warrants were issued
and more than 6,000 pairs of shoes bearing
the“S”logoweres e i z e d . R e s p o n d e n t s m o v e d t o q u a s h
t h e w a r r a n t s a r g u i n g t h a t t h e r e w a s n o confusing
similarity between petitioner’s "Skechers" rubber shoes and its
"Strong"rubber shoes. RTC granted the motion and quashed the
search warrants. Petitionerfiled a petition for certiorari
with the CA which affirmed the decision of the
RTC. Thus, petitioner filed the present petition with the SC ass
ailing that the CAcommitted grave abuse of discretion
when it considered matters of defense in acriminal trial
for trademark infringement in passing upon the validity of the
searchwarrant when it should have limited itself to a
determination of whether the trialcourt committed
grave abuse of discretion in quashing the warrants.
And that itcommitted grave abuse of discretion in
finding that respondents are not guilty of trademark
infringement in the case where the sole triable issue is the
existence of probable cause to issue a search
warrant. Subsequently, petitioner-intervenor fileda Petition-in-
Intervention with the Court claiming to be the sole licensed
distributorof Skechers products here in the Philippines,
but the same was dismissed. Bothpetitioner and petitioner-
intervenor filed separate motions for reconsideration.
Issue:
whether or not respondent is guilty of trademark infringement.
Ruling:
Yes. The essential element of infringement under R.A. No.
8293 is that theinfringing mark is likely to cause confusion. In
determining similarity and likelihoodof confusion, two tests
have been developed: (1)the Dominancy Test which focuseson
the similarity of the prevalent or dominant features of the
competing trademarksthat might cause confusion, mistake, and
deception in the mind of the purchasingpublic. Duplication or
imitation is not necessary; neither is it required that the
marksought to be registered suggests an effort to imitate. Given
more consideration arethe aural and visual impressions
created by the marks on the buyers of
goods,g i v i n g l i t t l e w e i g h t t o f a c t o r s l i k e p r i
c e s , q u a l i t y , s a l e s o u t l e t s , a n d m a r k e t segmen
ts. (2) the Holistic or Totality Test which necessitates a
consideration of theentirety of the marks as applied to the products,
including the labels and packaging.
ASIA BREWERY, INC. vs. THE HON.
COURT OF APPEALS and SAN
MIGUEL CORPORATION
G.R. 103543 July 5, 1993
Facts:
San Miguel Corporation (SMC) filed a complaint against Asia
Brewery Inc. (ABI) for infringement of trademark and unfair
competition on account of the latter's BEER PALE PILSEN or
BEER NA BEER product which has been competing with
SMC's SAN MIGUEL PALE PILSEN for a share of the local
beer market.
The trial court dismissed SMC's complaint because ABI "has
not committed trademark infringement or unfair competition
against" SMC
On appeal by SMC, the Court of Appeals reversed the decision
rendered by the trial court, finding the defendant Asia Brewery
Incorporated GUILTY of infringement of trademark and unfair
competition. ABI then filed a petition for certiorari.
Issue:
Are the words PALE PILSEN as part of ABI’s trademark
constitute infringement of SMC’s trademark?
Ruling:
No. The Supreme Court said it does not constitute an
infringement as the words PALE PILSEN, which are part of
ABI’s trademark, are generic words descriptive of the color
(“pale“), of a type of beer (“pilsen”), which is a light bohemian
beer with a strong hops flavor that originated in the City of
Pilsen, Czechislovakia and became famous in the Middle
Ages.
The Supreme Court further said that the words "pale pilsen"
may not be appropriated by SMC for its exclusive use even if
they are part of its registered trademark. No one may
appropriate generic or descriptive words. They belong to the
public domain.
Petitioner ABI has neither infringed SMC's trademark nor
committed unfair competition with the latter's SAN MIGUEL
PALE PILSEN product.
 PROSOURCE INTERNATIONAL,
INC. v. HORPHAG RESEARCH
MANAGEMENT SA. G.R. No. 180073.
November 25, 2009
FACTS:
Respondent is a corporation and owner of trademark
PYCNOGENOL, a food. Respondent later discovered that
petitioner was also distributing a similar food supplement using
the mark PCO-GENOLS since 1996. This prompted respondent
to demand that petitioner cease and desist from using the
aforesaid mark.
Respondent filed a Complaint for Infringement of Trademark
with Prayer for Preliminary Injunction against petitioner, in
using the name PCO-GENOLS for being confusingly similar.
Petitioner appealed otherwise.
The RTC decided in favor of respondent. It observed that
PYCNOGENOL and PCO-GENOLS have the same suffix
"GENOL" which appears to be merely descriptive and thus open
for trademark registration by combining it with other words and
concluded that the marks, when read, sound similar, and thus
confusingly similar especially since they both refer to food
supplements.
On appeal to the CA, petitioner failed to obtain a favorable
decision. The appellate court explained that under the
Dominancy or the Holistic Test, PCO-GENOLS is deceptively
similar to PYCNOGENOL.
ISSUE: Whether the names are confusingly similar.
RULING:
Yes. There is confusing similarity and the petition is denied.
Jurisprudence developed two test to prove such.
The Dominancy Test focuses on the similarity of the prevalent
features of the competing trademarks that might cause confusion
and deception, thus constituting infringement. If the competing
trademark contains the main, essential and dominant features of
another, and confusion or 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. The question is whether the use of
the marks involved is likely to cause confusion or mistake in the
mind of the public or to deceive purchasers. Courts will consider
more the aural and visual impressions created by the marks in
the public mind, giving little weight to factors like prices,
quality, sales outlets, and market segments.
The Holistic Test entails a consideration of the entirety of the
marks as applied to the products, including the labels and
packaging, in determining confusing similarity. Not only on the
predominant words should be the focus but also on the other
features appearing on both labels in order that the observer may
draw his conclusion whether one is confusingly similar to the
other.
SC applied the Dominancy Test.Both the words have the same
suffix "GENOL" which on evidence, appears to be merely
descriptive and furnish no indication of the origin of the article
and hence, open for trademark registration by the plaintiff
through combination with another word or phrase. When the two
words are pronounced, the sound effects are confusingly similar
not to mention that they are both described by their
manufacturers as a food supplement and thus, identified as such
by their public consumers. And although there were
dissimilarities in the trademark due to the type of letters used as
well as the size, color and design employed on their individual
packages/bottles, still the close relationship of the competing
products’ name in sounds as they were pronounced, clearly
indicates that purchasers could be misled into believing that they
are the same and/or originates from a common source and
manufacturer.
 DEL MONTE CORPORATION and HELD: Yes. In determining whether two trademarks are
confusingly similar, the two marks in their entirety as they
PHILIPPINE PACKING appear in the respective labels must be considered in relation to
CORPORATION vs. COURT OF the goods to which they are attached; the discerning eye of the
observer must focus not only on the precognizant words but also
APPEALS and SUNSHINE SAUCE on the other features appearing on both labels. It has been
MANUFACTURING INDUSTRIES correctly held that side-by-side comparison is not the final test
of similarity. In determining whether a trademark has been
infringed, we must consider the mark as a whole and not as
G.R. No. L-78325 January 25, 1990 dissected.

The Court is agreed that are indeed distinctions, but similarities

FACTS: Petitioner Del Monte Corporation (Del Monte),
holds a greater weight in this case. The Sunshine label is a
through its local distributor and manufacturer, PhilPack filed an
colorable imitation of the Del Monte trademark. What is
infringement of copyright complaint against respondent
undeniable is the fact that when a manufacturer prepares to
Sunshine Sauce Manufacturing Industries (SSMI), also a maker
package his product, he has before him a boundless choice of
of catsup and other kitchen sauces. In its complaint, Del Monte
words, phrases, colors and symbols sufficient to distinguish his
alleged that SSMI are using bottles and logos identical to the
product from the others. Sunshine chose, without a reasonable
petitioner, to which is deceiving and misleading to the public.
explanation, to use the same colors and letters as those used by
Del Monte though the field of its selection was so broad, the
In its answer, Sunshine alleged that it had ceased to use the Del
inevitable conclusion is that it was done deliberately to deceive.
Monte bottle and that its logo was substantially different from
the Del Monte logo and would not confuse the buying public to
With regard to the bottle use, Sunshine despite the many choices
the detriment of the petitioners.
available to it and notwithstanding that the caution "Del Monte
Corporation, Not to be Refilled" was embossed on the bottle,
The Regional Trial Court of Makati dismissed the complaint. It
still opted to use the petitioners' bottle to market a product which
held that there were substantial differences between the logos or
Philpack also produces. This clearly shows the private
trademarks of the parties nor on the continued use of Del Monte
respondent's bad faith and its intention to capitalize on the latter's
bottles. The decision was affirmed in toto by the Court of
reputation and goodwill and pass off its own product as that of
Appeals.
Del Monte.
ISSUE: Whether or not SSMI committed infringement against
Del Monte in the use of its logos and bottles.
 FRUIT OF THE LOOM, INC. v. both goods is not enough to show that buyers will get confused
over such. It was not the dominant feature of both products.
COURT OF APPEALS and GENERAL
GARMENTS CORPORATION. G.R. In relation to the hang tags, the SC did find similarities but the
differences were more glaring and striking, The similarities of
No. L-32747. November 29, 1984 the competing trademarks in this case are completely lost in the
FACTS: substantial differences in the design and general appearance of
their respective hang tags
Petitioner is a corporation who owns the trademark Fruit of the
Loom wherein the business is the selling of underwear.

Respondent is a domestic corporation who owns the trademark

Fruit for Eve whose business is similar to petitioners.

Petitioner filed before the lower a complaint for trademark

infringement and unfair competition against respondent citing
that their names and hang tags are confusingly similar and is a
colorable imitation.

The trial court held in favor of petitioner. Respondent then

appealed to the CA wherein the decision was reversed. The CA
held that the word Fruit is a generic word, thus is not capable of
exclusive appropriation and that petitioner is not entitled to the
exclusive use of every word in their trademark.

ISSUE: Whether there is trademark infringement.

RULING:

No. The SC stated that the there is no confusing similarity which

would deceive buyers. The SC declared that the word Fruit in
BERRIS AGRICULTURAL CO., INC.
vs. NORVY ABYADANG. G.R. No.
183404. October 13, 2010
FACTS:

Abyadang filed a trademark application with the IPO for the

mark "NS D-10 PLUS" for use in connection with Fungicide.
Berris Agricultural Co., Inc. filed an opposition against the
trademark citing that it is confusingly similar with their
trademark, "D-10 80 WP" which is also used for Fungicide also
with the same active ingredient.

The IPO ruled in favor of Berries but on appeal with the CA, the
CA ruled in favor of Abyadang.

ISSUE: Whether there is confusing similarity between the

trademarks.

RULING:

Yes. The SC found that both products have the component D-10
as their ingredient and that it is the dominant feature in both their
marks. Applying the Dominancy Test, Abyadang's product is
similar to Berris' and that confusion may likely to occur
especially that both in the same type of goods. Also using the
Holistic Test, it was more obvious that there is likelihood of
confusion in their packaging and color schemes of the marks.
The SC states that buyers would think that Abyadang's product
is an upgrade of Berris'.
FREDCO MANUFACTURING was not established in 1936, or in the U.S.A. as indicated by
Fredco in its oblong logo.
CORPORATION V. PRESIDENT AND Under Philippine law, a trade name of a national of a State that
FELLOWS OF HARVARD COLLEGE is a party to the Paris Convention, whether or not the trade name
forms part of a trademark, is protected “without the obligation
(G.R. NO. 185917) of filing or registration.” “Harvard” is the trade name of the
world famous Harvard University, and it is also a trademark of
Harvard University. Under Article 8 of the Paris Convention, as
Facts: well as Section 37 of R.A. No. 166, Harvard University is
Petitioner Fredco Manufacturing filed a petition to cancel the entitled to protection in the Philippines of its trade name
registration of respondent’s mark ‘Harvard Veritas Shield “Harvard” even without registration of such trade name in the
Symbol’ used in products such as bags and t-shirts. Fredco Philippines. This means that no educational entity in the
alleges that the mark ‘Harvard’ was first used and registered by Philippines can use the trade name “Harvard” without the
New York Garments, a domestic corporation and its consent of Harvard University. Likewise, no entity in the
predecessor-in-interest, used in its clothing articles. Respondent Philippines can claim, expressly or impliedly through the use of
Harvard University on the other hand, alleges that it is the lawful the name and mark “Harvard,” that its products or services are
owner of the name and mark in numerous countries worldwide authorized, approved, or licensed by, or sourced from, Harvard
including in the Philippines which was used in commerce as University without the latter’s consent.
early as 1872. Respondent further contend that it never
authorized any person to use its name or mark in connection with
any goods in the Philippines. The IPO Bureau of Legal Affairs
cancelled respondent’s registration of the mark but only over the
goods which are confusingly similar with that of petitioner. IPO
reversed the decision. CA affirmed.
Issue:
Whether or not respondent’s trade name is infringed.
Ruling: YES.
Fredco’s use of the mark “Harvard,” coupled with its claimed
origin in Cambridge, Massachusetts, obviously suggests a false
connection with Harvard University. On this ground alone,
Fredco’s registration of the mark “Harvard” should have been
disallowed. Indisputably, Fredco does not have any affiliation or
connection with Harvard University, or even with Cambridge,
Massachusetts. Fredco or its predecessor New York Garments
 246 CORPORATION vs. HON.
REYNALDO B. DAWAY, MONTRES
ROLEX S.A. and ROLEX CENTRE
PHIL. LIMITED. G.R. No. 157216.
November 20, 2003
FACTS:

Respondent filed a suit for trademark infringement against

petitioner when petitioner adopted the and has been using the
name Rolex in its business name and in newspapers ads.

Petitioner states that there is no infringement as no confusion

would arise because their business was in entertainment while
respondent's business relate to watches.

Petitioner filed a motion for preliminary hearing on its

affirmative defenses in which the trial court quashed. Petitioner
filed a petition with the CA which was also dismissed.

ISSUE: Whether the question of trademark infringement is an

affirmative defense.

RULING:

No. In the case at bar, the Court of Appeals did not err in finding
that no abuse of discretion could be ascribed to the trial court’s
denial of petitioner’s motion for preliminary hearing on its
affirmative defenses with motion to dismiss. The issue of
whether or not a trademark infringement exists, is a question of
fact that could best be determined by the trial court.
ECOLE DE CUISINE MANILLE V. that Section 2-A does not require that the actual use of a
trademark must be within the Philippines. Thus, as correctly
COINTREAU (G.R. NO. 185830) mentioned by the CA, under R.A. No. 166, one may be an owner
of a mark due to its actual use but may not yet have the right to
register such ownership here due to the owner’s failure to use
Facts: the same in the Philippines for 2 months prior to registration. In
Respondent Cointreau, a partnership registered under the laws the instant case, it is undisputed that Cointreau has been using
of France, applied for the registration of the mark ‘Le Cordon the subject mark in France, prior to Ecole’s averred first use of
Bleu & Device.’ Petitioner Ecole De Cuisine opposed on the the same in the Philippines, of which the latter was fully aware
ground that it is the owner of the mark ‘Le Cordon Bleu, Ecole thereof. On the other hand, Ecole has no certificate of
De Cuisine Manille’ used in its culinary activities and restaurant registration over the subject mark but only a pending
business and that the registration will create confusion to the application. Under the foregoing circumstances, even if Ecole
public. Respondent Cointreau answered claiming it is the true was the first to use the mark in the Philippines, it cannot be said
and lawful owner of the mark and had long been using it to have validly appropriated the same.
worldwide. The IPO Bureau of Legal Affairs sustained In any case, the present law on trademarks, Republic Act No.
petitioner’s opposition stating that Cointreau had no prior use of 8293, otherwise known as the Intellectual Property Code of the
the mark in the Philippines to be entitled to a proprietary right Philippines, as amended, has already dispensed with the
over it. The IPO Director General reversed the decision and requirement of prior actual use at the time of registration. Thus,
allowed the mark’s registration holding that under RA No. 166, there is more reason to allow the registration of the subject mark
actual use in the Philippines is not necessary to acquire under the name of Cointreau as its true and lawful owner.
ownership of the mark.
Issue:
Whether or not respondent’s prior use of the mark is a
requirement for its registration.
Ruling: YES.
Under Section 2 of R.A. No. 166, in order to register a
trademark, one must be the owner thereof and must have actually
used the mark in commerce in the Philippines for 2 months prior
to the application for registration. Section 2-A of the same law
sets out to define how one goes about acquiring ownership
thereof. Under Section 2-A, it is clear that actual use in
commerce is also the test of ownership but the provision went
further by saying that the mark must not have been so
appropriated by another. Additionally, it is significant to note
LYCEUM OF THE PHILIPPINES.
VS. CA- DOCTRINE OF
SECONDARY MEANING
LYCEUM OF THE PHILIPPINES vs.
CA- Doctrine of Secondary Meaning
Doctrine of secondary meaning can be extended to corporation
name but must comply with the requirement that it has been
used so long and so exclusively by one and that the said name
has come to mean that it is referred to as that corporation.
FACTS:
Petitioner is an educational institution duly registered with the
SEC since Sept 1950. Before the case at bar, Petitioner
commenced a proceeding against Lyceum of Baguio with the
SEC to require it to change its corporate name and adopt a new
one not similar or identical to the Petitioner. SEC granted
noting that there was substantial because of the dominant word
“Lyceum”. CA and SC affirmed. Petitioner filed similar
complaint against other schools and obtain a favorable decision
from the hearing officer. On appeal, SEC En banc reversed the
decision and held that the word Lyceum have not become so
identified with the petitioner and that the use thereof will cause
confusion to the general public.
ISSUE:
1. Whether or not the corporate names of the private
respondents are identical with or deceptively similar to that of
the petitioner.
2. Whether or not the use by the petitioner of Lyceum in its
corporate name has been for such length of time and with such
exclusivity as to have become associated or identified with the
petitioner institution in the mind of the general public (Doctrine
of Secondary meaning).
RULING: NO to both.
True enough, the corporate names of the parties carry the word
“Lyceum” but confusion and deception are precluded by the
appending of geographic names. Lyceum generally refers to a
school or an institution of learning and it is natural to use this
word to designate an entity which is organized and operating as
an educational institution.
Doctrine of Secondary meaning is a word of phrase originally
incapable of exclusive appropriation, might nevertheless have
been used so long and so exclusively by one producer with
reference to his article that, in trade and to that branch of the
purchasing public, the word or phrase has come to mean that
the article was his product.
Lyceum of the Philippines has not gained exclusive use of
“Lyceum” by long passage of time. The number alone of the
private respondents suggests strongly that the use of Lyceum
has not been attended with the exclusivity essential for the
applicability of the doctrine. It may be noted that one of the
respondents – Western Pangasinan Lyceum used such term 17
years before the petitioner registered with the SEC. Moreover,
there may be other schools using the name but not registered
with the SEC because they have not adopted the corporate form
of organization.
 C A S E D I G E S T: A S I A The Court also ruled that ABI did not sell its products, passing
B R E W E RY V S . C O U RT O F them off as though they were from respondent company. There
APPEALS was no showing that ABI’s Beer Pale Pilsen was sold so as to
deceive its consumers as to its origin. Therefore, ABI could not
8:05 AM be guilty of unfair competition.

Asia Brewery vs. CA

GR 103543, 5 July 1993

FACTS:

San Miguel Corporation (SMC) filed a complaint against Asia

Brewery Inc. (ABI) for infringement of trademark and unfair
competition on account of the latter's BEER PALE PILSEN or
BEER NA BEER product which has been competing with
SMC's SAN MIGUEL PALE PILSEN for a share of the local
beer market.

RULING:
The Court ruled that petitioner ABI was guilty of neither
infringement nor unfair comepetition. The Court reasoned that
neither the sound, spelling or appearance of Beer Pale Pilsen be
said to be confusingly similar to San Miguel Pale Pilsen. The
dominant feature of SMC’s trademark is “San Miguel Pale
Pilsen” while ABI’s is “Beer Pale Pilsen”. The word “Beer” does
not appear in SMC’s product, nor the words “San Miguel”
appear in ABI’s product. The difference outweigh the similarity,
which the court believed could not possibly create confusion in
consumers. The words “Beer”, “pale” and “pilsen” are generic
and/or descriptive words, which could not be exclusively
attributable to one company(Sec4(e), IPR).
Levi Strauss & Co. vs. Clinton
Apparelle
G.R. No. 138900 September 20, 2005
Topic:
Issuance of the writ of preliminary
injunction; Trademark dilution
FACTS:
Petitioners LS & Co. and LSPI filed a Complaint for
Trademark Infringement, Injunction and Damages against
respondent Clinton Apparelle, Inc. together with an alternative
defendant, Olympian Garments, Inc. before the RTC. The
complaint alleged that LS & Co., a foreign corporation duly
organized and existing under the laws of the State of Delaware,
U.S.A., and engaged in the apparel business, is the owner by
prior adoption and use since 1986 of the internationally famous
Dockers and Design trademark. This ownership is evidenced
by its valid and existing registrations in various member
countries of the Paris Convention. In the Philippines, it has a
Certificate of Registration No. 46619 in the Principal Register
for use of said trademark on pants, shirts, blouses, skirts,
shorts, sweatshirts and jackets under Class 25. The Dockers
and Design trademark was first used in the Philippines in or
about May 1988, by LSPI, a domestic corporation engaged in
the manufacture, sale and distribution of various products
bearing trademarks owned by LS & Co. LS & Co. and LSPI
further alleged that they discovered the presence in the local
market of jeans under the brand name Paddocks using a device
which is substantially, if not exactly, similar to the Dockers and
Design trademark owned by and registered in the name of LS
& Co., without its consent. Based on their information and
belief, Clinton Apparelle manufactured and continues to
manufacture such Paddocks jeans and other apparel. The
petitioners prayed for the issuance of a TRO. On the date of the
hearing for the issuance of the TRO, respondents Clinton
Apparelle and Olympian Garments failed to appear despite
notice. Clinton Apparelle claimed that it was not notified of
such hearing. Only Olympian Garments allegedly had been
issued with summons. Despite the absence of the defendants,
the hearing on the application for the issuance of a TRO
continued.
The RTC then issued a TRO and a writ of preliminary
injuction. The evidence considered by the trial court in granting
injunctive relief were as follows: (1) a certified true copy of
the certificate of trademark registration for Dockers and
Design; (2) a pair of DOCKERS pants bearing the Dockers and
Design trademark; (3) a pair of Paddocks pants bearing
respondents assailed logo; (4) the Trends MBL Survey Report
purportedly proving that there was confusing similarity
between two marks; (5) the affidavit of one Bernabe Alajar
which recounted petitioners prior adoption, use and registration
of the Dockers and Design trademark; and (6) the affidavit of
one Mercedes Abad of Trends MBL, Inc. which detailed the
methodology and procedure used in their survey and the results
thereof. On appeal, the CA held that the trial court did not
follow the procedure required by law for the issuance of a TRO
as Clinton Apparelle was not duly notified of the date of the
summary hearing for its issuance. Thus, the CA ruled that the
TRO had been improperly issued. The CA also held that the
issuance of the writ of preliminary injunction is questionable.
According to the CA, petitioners LS & Co. and LSPI failed to
sufficiently establish its material and substantial right to have
the writ issued.
ISSUE:
Whether the issuance of the writ of preliminary injunction by
the trial court was proper and whether the Court of Appeals
erred in setting aside the orders of the trial court.
No. After a careful consideration of the facts and arguments
of the parties, the Court finds that petitioners did not
adequately prove their entitlement to the injunctive writ. In the
absence of proof of a legal right and the injury sustained by the
applicant, an order of the trial court granting the issuance of an
injunctive writ will be set aside for having been issued with
grave abuse of discretion. Conformably, the Court of Appeals
was correct in setting aside the assailed orders of the trial court.
RULING:
Section 1, Rule 58 of the Rules of Court defines a preliminary
injunction as an order granted at any stage of an action prior to
the judgment or final order requiring a party or a court, agency
or a person to refrain from a particular act or acts. An
extraordinary remedy, injunction is designed to preserve or
maintain the status quo of things and is generally availed of to
prevent actual or threatened acts until the merits of the case can
be heard. It is resorted to only when there is a pressing
necessity to avoid injurious consequences, which cannot be
remedied under any standard compensation. The resolution of
an application for a writ of preliminary injunction
rests upon the existence of an emergency or of a special
recourse before the main case can be heard in due course of
proceedings. Section 3, Rule 58, of the Rules of Court
enumerates the grounds for the issuance of a preliminary
injunction:
(a) That the applicant is entitled to the relief demanded, and the
whole or part of such relief consists in restraining the
commission or continuance of the act or acts complained of, or
in requiring the performance of an act or acts, either for a
limited period or perpetually;
(b) That the commission, continuance, or non-performance of
the act or acts complained of during the litigation would
probably work injustice to the applicant; or
(c) That a party, court, agency or a person is doing, threatening,
or is attempting to do, or is procuring or suffering to be done,
some act or acts probably in violation of the rights of the
applicant respecting the subject of the action or proceeding,
and tending to render the judgment ineffectual.
Under the cited provision, a clear and positive right especially
calling for judicial protection must be shown. Injunction is not
a remedy to protect or enforce contingent, abstract, or future
rights. There must exist an actual right. There must be a patent
showing by the complaint that there exists a right to be
protected and that the acts against which the writ is to be
directed are violative of said right.
The Court of Appeals did not err in reviewing proof adduced
by petitioners to support its application for the issuance of the
writ. While the matter of the issuance of a writ of preliminary
injunction is addressed to the sound discretion of the trial court,
this discretion must be exercised based upon the grounds and in
the manner provided by law.
In the present case, we find that there was scant justification for
the issuance of the writ of preliminary injunction. Petitioners
anchor their legal right to Dockers and Design
trademark on the Certificate of Registration issued in their
favor by the Bureau of Patents,
Trademarks and Technology Transfer.* According to Section
138 of Republic Act No. 8293, this Certificate of Registration
is prima facie evidence of the validity of the registration, the
registrants ownership of the mark and of the exclusive right to
use the same in connection with
the goods or services and those that are related thereto
specified in the certificate. Section 147.1 of said law likewise
grants the owner of the registered mark the exclusive right to
prevent all third parties not having the owners consent from
using in the course of trade identical or similar signs for goods
or services which are identical or similar to those in respect of
which the trademark is registered if such use results in a
likelihood of confusion.
2 the minds of the publican imitation of which creates the
However, attention should be given to the fact that petitioners
registered trademark consists of two elements: (1) the word
mark Dockers and (2) the wing-shaped design or logo. Notably,
there is only one registration for both features of the trademark
giving the impression that the two should be considered as a
single unit. Clinton Apparelle’s trademark, on the other hand,
uses the Paddocks word mark on top of a logo which according
to petitioners is a slavish imitation of the Dockers design. The
two trademarks apparently differ in their word marks (Dockers
and Paddocks), but again according to petitioners, they employ
similar or identical logos. It could thus be said that respondent
only appropriates petitioners logo and not the word mark
Dockers; it uses only a portion of the registered trademark and
not the whole.
Given the single registration of the trademark Dockers and
Design and considering that respondent only uses the assailed
device but a different word mark, the right to prevent the latter
from using the challenged Paddocks device is far from clear
Stated otherwise, it is not evident whether the single
registration of the trademark Dockers and Design confers on
the owner the right to prevent the use of a fraction thereof in
the course of trade. It is also unclear whether the use without
the owner’s consent of a portion of a trademark registered in its
entirety constitutes material or substantial invasion of the
owner’s right.
It is likewise not settled whether the wing-shaped logo, as
opposed to the word mark, is the dominant or central feature of
petitioners trademark the feature that prevails or is retained in
likelihood of deceiving the public and constitutes trademark
infringement. In sum, there are vital matters which have yet
and may only be established through a full-blown trial.
From the above discussion, we find that petitioners
right to injunctive relief has not been clearly and
unmistakably demonstrated. The right has yet to be determined.
Petitioners also failed to show proof that there is material and
substantial invasion of their right to warrant the issuance of an
injunctive writ. Neither were petitioners able to show any
urgent and permanent necessity for the writ to prevent serious
damage.
Petitioners wish to impress upon the Court the urgent necessity
for injunctive relief, urging that the erosion or dilution of their
trademark is protectable. They assert that a trademark owner
does not have to wait until the mark loses its distinctiveness to
obtain injunctive relief, and that the mere use by an infringer of
a registered mark is already actionable even if he has not yet
profited thereby or has damaged the trademark owner.
Trademark dilution is the lessening of the capacity of a
famous mark to identify and distinguish goods or services,
regardless of the presence or absence of: (1) competition
between the owner of the famous mark and other parties; or (2)
likelihood of confusion, mistake or deception. Subject to the
principles of equity, the owner of a famous mark is entitled to
an injunction against another person’s commercial use in
commerce of a mark or trade name, if such use begins after the
mark has become famous and causes dilution of the distinctive
quality of the mark. This is intended to protect famous marks
from subsequent uses that blur distinctiveness of the mark or
tarnish or disparage it.
Based on the foregoing, to be eligible for protection from
dilution, there has to be a finding that : (1) the trademark
sought to be protected is famous and distinctive; (2) the use by
respondent of Paddocks and Design began after the petitioners
mark became famous; and (3) such subsequent use defames
petitioners mark. In the case at bar, petitioners have yet to
establish whether Dockers and Design has acquired a strong
degree of distinctiveness and whether the other two elements
are present for their cause to fall within the ambit of the
invoked protection. The Trends MBL Survey Report which
petitioners presented in a bid to establish that there was
confusing similarity between two marks is not sufficient proof
of any dilution that the trial court must enjoin.
The Court also finds that the trial court’s order granting the
writ did not adequately detail the reasons for the grant. The
trial court in granting the injunctive relief tersely ratiocinated
that the plaintiffs appear to be entitled to the relief prayed for
and this Court is of the considered belief and humble view that,
without necessarily delving on the merits, the paramount
interest of justice will be better served if the status quo shall be
maintained. Clearly,
3
this statement falls short of the requirement laid down. In
addition, we agree with the Court of Appeals in its holding that
the damages the petitioners had suffered or continue to suffer
may be compensated in terms of monetary consideration. We
also believe that the issued injunctive writ, if allowed, would
dispose of the case on the merits as it would effectively enjoin
the use of the Paddocks device without proof that there is basis
for such action. The prevailing rule is that courts should avoid
issuing a writ of preliminary injunction that would in effect
dispose of the main case without trial. There would be a
prejudgment of the main case and a reversal of the rule on the
burden of proof since it would assume the proposition which
petitioners are inceptively bound to prove.
DISPOSITIVE: WHEREFORE, the instant petition is
DENIED. The Decision of the Court of Appeals dated 21
December 1998 and its Resolution dated 10 May 1999 are
AFFIRMED. Costs against petitioners.
COFFEE PARTNERS V. SAN
FRANCISCO COFFEE &
ROASTERY (G.R. NO. 169504)
Facts:
Petitioner Coffee Partners entered into a franchise agreement
with Coffee Partners Ltd. to operate coffee shops in the country
using the trademark ‘San Francisco Coffee.’ Respondent on the
other hand, is a local corporation engaged in the wholesale and
retail sale of coffee and uses the business name ‘San Francisco
Coffee & Roastery’ registered with the DTI. Later, respondent
filed an infringement and/or unfair competition complaint
against petitioner alleging that the latter was about to open a
coffee shop under the name ‘San Francisco Coffee’ causing
confusion in the minds of the public as it bore a similar name
and is engaged also in selling of coffee. Petitioner contended no
infringement would arise because respondent’s tradename was
not registered.
Issue:
Whether or not petitioner’s trademark would infringe
respondent’s tradename.
Ruling: YES.
In Prosource International, Inc. v. Horphag Research
Management SA, this Court laid down what constitutes
infringement of an unregistered trade name, thus:
(1) The trademark being infringed is registered in the Intellectual
Property Office; however, in infringement of trade name, the
same need not be registered;
(2) The trademark or trade name is reproduced, counterfeited,
copied, or colorably imitated by the infringer;
(3) The infringing mark or trade name is used in connection with
the sale, offering for sale, or advertising of any goods, business
or services; or the infringing mark or trade name is applied to
labels, signs, prints, packages, wrappers, receptacles, or
advertisements intended to be used upon or in connection with
such goods, business, or services;
(4) The use or application of the infringing mark or trade name
is likely to cause confusion or mistake or to deceive purchasers
or others as to the goods or services themselves or as to the
source or origin of such goods or services or the identity of such
business; and
(5) It is without the consent of the trademark or trade name
owner or the assignee thereof.
RA 8293, which took effect on 1 January 1998, has dispensed
with the registration requirement. Section 165.2 of RA 8293
categorically states that trade names shall be protected, even
prior to or without registration with the IPO, against any
unlawful act including any subsequent use of the trade name by
a third party, whether as a trade name or a trademark likely to
mislead the public.
It is the likelihood of confusion that is the gravamen of
infringement. Applying the dominancy test or the holistic test,
petitioner’s “SAN FRANCISCO COFFEE” trademark is a clear
infringement of respondent’s “SAN FRANCISCO COFFEE &
ROASTERY, INC.” trade name. The descriptive words “SAN
FRANCISCO COFFEE” are precisely the dominant features of
respondent’s trade name. Petitioner and respondent are engaged
in the same business of selling coffee, whether wholesale or
retail. The likelihood of confusion is higher in cases where the
business of one corporation is the same or substantially the same
as that of another corporation. In this case, the consuming public
will likely be confused as to the source of the coffee being sold
at petitioner’s coffee shops.