FREDCO MANUFACTURING G.R. No.

185917 Harvard University, on the other hand, alleged that it is the lawful owner of the name and
CORPORATION, mark Harvard in numerous countries worldwide, including the Philippines. Among the
vs countries where Harvard University has registered its name and mark Harvard are:

PRESIDENT AND FELLOWS 1. Argentina 26. South Korea

OF HARVARD COLLEGE Promulgated: 2. Benelux4 27. Malaysia
(HARVARD UNIVERSITY), 3. Brazil 28. Mexico
Respondents. June 1, 2011 4. Canada 29. New Zealand
x- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x 5. Chile 30. Norway
6. China P.R. 31. Peru
7. Colombia 32. Philippines
DECISION 8. Costa Rica 33. Poland
9. Cyprus 34. Portugal
CARPIO, J.: 10. Czech Republic 35. Russia
11. Denmark 36. South Africa
The Case 12. Ecuador 37. Switzerland
13. Egypt 38. Singapore
Before the Court is a petition for review1 assailing the 24 October 2008 Decision2 and 8 14. Finland 39. Slovak Republic
January 2009 Resolution3 of the Court of Appeals in CA-G.R. SP No. 103394. 15. France 40. Spain
16. Great Britain 41. Sweden
17. Germany 42. Taiwan
The Antecedent Facts 18. Greece 43. Thailand
19. Hong Kong 44. Turkey
On 10 August 2005, petitioner Fredco Manufacturing Corporation (Fredco), a corporation 20. India 45. United Arab Emirates
organized and existing under the laws of the Philippines, filed a Petition for Cancellation of 21. Indonesia 46. Uruguay
Registration No. 56561 before the Bureau of Legal Affairs of the Intellectual Property 22. Ireland 47. United States of America
Office (IPO) against respondents President and Fellows of Harvard College (Harvard 23. Israel 48. Venezuela
University), a corporation organized and existing under the laws of Massachusetts, United 24. Italy 49. Zimbabwe
States of America. The case was docketed as Inter Partes Case No. 14-2005-00094. 25. Japan 50. European Community5

Fredco alleged that Registration No. 56561 was issued to Harvard University on 25
November 1993 for the mark Harvard Veritas Shield Symbol for decals, tote bags, serving
trays, sweatshirts, t-shirts, hats and flying discs under Classes 16, 18, 21, 25 and 28 of the
Nice International Classification of Goods and Services. Fredco alleged that the mark
Harvard for t-shirts, polo shirts, sandos, briefs, jackets and slacks was first used in the
Philippines on 2 January 1982 by New York Garments Manufacturing & Export Co., Inc.
(New York Garments), a domestic corporation and Fredcos predecessor-in-interest. On 24
January 1985, New York Garments filed for trademark registration of the mark Harvard for
goods under Class 25. The application matured into a registration and a Certificate of
Registration was issued on 12 December 1988, with a 20-year term subject to renewal at
the end of the term. The registration was later assigned to Romeo Chuateco, a member of
the family that owned New York Garments.
Fredco alleged that it was formed and registered with the Securities and Exchange
Commission on 9 November 1995 and had since then handled the manufacture, promotion
and marketing of Harvard clothing articles. Fredco alleged that at the time of issuance of
Registration No. 56561 to Harvard University, New York Garments had already registered
the mark Harvard for goods under Class 25. Fredco alleged that the registration was
cancelled on 30 July 1998 when New York Garments inadvertently failed to file an affidavit
of use/non-use on the fifth anniversary of the registration but the right to the mark
Harvard remained with its predecessor New York Garments and now with Fredco.
The name and mark Harvard was adopted in 1639 as the name of Harvard College 6 of
Cambridge, Massachusetts, U.S.A. The name and mark Harvard was allegedly used in
commerce as early as 1872. Harvard University is over 350 years old and is a highly
regarded institution of higher learning in the United States and throughout the world.
Harvard University promotes, uses, and advertises its name Harvard through various
publications, services, and products in foreign countries, including the Philippines. Harvard
University further alleged that the name and the mark have been rated as one of the most
famous brands in the world, valued between US $750,000,000 and US $1,000,000,000.
Harvard University alleged that in March 2002, it discovered, through its international
trademark watch program, Fredcos website www.harvard-usa.com. The website advertises
and promotes the brand name Harvard Jeans USA without Harvard Universitys consent.
The websites main page shows an oblong logo bearing the mark Harvard Jeans USA,
Established 1936, and Cambridge, Massachusetts. On 20 April 2004, Harvard University
filed an administrative complaint against Fredco before the IPO for trademark infringement
and/or unfair competition with damages.
Harvard University alleged that its valid and existing certificates of trademark registration
in the Philippines are:
1. Trademark Registration No. 56561 issued on 25 November 1993 for Harvard
Veritas Shield Design for goods and services in Classes 16, 18, 21, 25 and 28
 (decals, tote bags, serving trays, sweatshirts, t-shirts, hats and flying discs) of
the Nice International Classification of Goods and Services;
2. Trademark Registration No. 57526 issued on 24 March 1994 for Harvard Veritas
Shield Symbol for services in Class 41; Trademark Registration No. 56539 issued
on 25 November 1998 for Harvard for services in Class 41; and
3. Trademark Registration No. 66677 issued on 8 December 1998 for Harvard
Graphics for goods in Class 9. Harvard University further alleged that it filed the
requisite affidavits of use for the mark Harvard Veritas Shield Symbol with the
IPO.
Further, on 7 May 2003 Harvard University filed Trademark Application
No. 4-2003-04090 for Harvard Medical International & Shield Design for
services in Classes 41 and 44. In 1989, Harvard University established
the Harvard Trademark Licensing Program, operated by the Office for
Technology and Trademark Licensing, to oversee and manage the
worldwide licensing of the Harvard name and trademarks for various
goods and services. Harvard University stated that it never authorized
or licensed any person to use its name and mark Harvard in connection
with any goods or services in the Philippines.
In a Decision7 dated 22 December 2006, Director Estrellita Beltran-Abelardo of the Bureau
of Legal Affairs, IPO cancelled Harvard Universitys registration of the mark Harvard under
Class 25, as follows:
WHEREFORE, premises considered, the Petition for Cancellation is
hereby GRANTED. Consequently, Trademark Registration Number
56561 for the trademark HARVARD VE RI TAS SHIELD SYMBOL issued
on November 25, 1993 to PRESIDENT AND FELLOWS OF HARVARD
COLLEGE (HARVARD UNIVERSITY) should be CANCELLED only with
respect to goods falling under Class 25. On the other hand, considering
that the goods of Respondent-Registrant falling under Classes 16, 18,
21 and 28 are not confusingly similar with the Petitioners goods, the
Respondent-Registrant has acquired vested right over the same and
therefore, should not be cancelled.
Let the filewrapper of the Trademark Registration No. 56561 issued on
November 25, 1993 for the trademark HARVARD VE RI TAS SHIELD
SYMBOL, subject matter of this case together with a copy of this
Decision be forwarded to the Bureau of Trademarks (BOT) for
appropriate action.
SO ORDERED.8
Harvard University filed an appeal before the Office of the Director General of the IPO. In
a Decision9 dated 21 April 2008, the Office of the Director General, IPO reversed the
decision of the Bureau of Legal Affairs, IPO.
The Director General ruled that more than the use of the trademark in the Philippines, the
applicant must be the owner of the mark sought to be registered. The Director General
ruled that the right to register a trademark is based on ownership and when the applicant
is not the owner, he has no right to register the mark. The Director General noted that the
mark covered by Harvard Universitys Registration No. 56561 is not only the word Harvard
but also the logo, emblem or symbol of Harvard University. The Director General ruled that
Fredco failed to explain how its predecessor New York Garments came up with the mark
Harvard. In addition, there was no evidence that Fredco or New York Garments was
licensed or authorized by Harvard University to use its name in commerce or for any other
use.
The dispositive portion of the decision of the Office of the Director General, IPO reads:
WHEREFORE, premises considered, the instant appeal is GRANTED.
The appealed decision is hereby REVERSED and SET ASIDE. Let a copy
of this Decision as well as the trademark application and records be
furnished and returned to the Director of Bureau of Legal Affairs for
appropriate action. Further, let also the Directors of the Bureau of
Trademarks and the Administrative, Financial and Human Resources
Development Services Bureau, and the library of the Documentation,
Information and Technology Transfer Bureau be furnished a copy of
this Decision for information, guidance, and records purposes.
SO ORDERED.10
Fredco filed a petition for review before the Court of Appeals assailing the decision of the
Director General.
The Decision of the Court of Appeals
In its assailed decision, the Court of Appeals affirmed the decision of the Office of the
Director General of the IPO.
The Court of Appeals adopted the findings of the Office of the Director General and ruled
that the latter correctly set aside the cancellation by the Director of the Bureau of Legal
Affairs of Harvard Universitys trademark registration under Class 25. The Court of Appeals
ruled that Harvard University was able to substantiate that it appropriated and used the
marks Harvard and Harvard Veritas Shield Symbol in Class 25 way ahead of Fredco and its
predecessor New York Garments. The Court of Appeals also ruled that the records failed to
disclose any explanation for Fredcos use of the name and mark Harvard and the words
USA, Established 1936, and Cambridge, Massachusetts within an oblong device, US
Legend and Europes No. 1 Brand. Citing Shangri-La International Hotel Management, Ltd.
v. Developers Group of Companies, Inc.,11 the Court of Appeals ruled:
One who has imitated the trademark of another cannot bring an action
for infringement, particularly against the true owner of the mark,
because he would be coming to court with unclean hands. Priority is of
no avail to the bad faith plaintiff. Good faith is required in order to
ensure that a second user may not merely take advantage of the
goodwill established by the true owner.12
The dispositive portion of the decision of the Court of Appeals reads:
WHEREFORE, premises considered, the petition for review is DENIED.
The Decision dated April 21, 2008 of the Director General of the IPO in
Appeal No. 14-07-09 Inter Partes Case No. 14-2005-00094 is hereby
AFFIRMED.
 SO ORDERED.13
Fredco filed a motion for reconsideration.
In its Resolution promulgated on 8 January 2009, the Court of Appeals denied the motion
for lack of merit.
Hence, this petition before the Court.
The Issue
The issue in this case is whether the Court of Appeals committed a reversible error in
affirming the decision of the Office of the Director General of the IPO.
The Ruling of this Court
The petition has no merit.
There is no dispute that the mark Harvard used by Fredco is the same as the mark
Harvard in the Harvard Veritas Shield Symbol of Harvard University. It is also not disputed
that Harvard University was named Harvard College in 1639 and that then, as now,
Harvard University is located in Cambridge, Massachusetts, U.S.A. It is also unrefuted that
Harvard University has been using the mark Harvard in commerce since 1872. It is also
established that Harvard University has been using the marks Harvard and Harvard Veritas
Shield Symbol for Class 25 goods in the United States since 1953. Further, there is no
dispute that Harvard University has registered the name and mark Harvard in at least 50
countries.
On the other hand, Fredcos predecessor-in-interest, New York Garments, started using the
mark Harvard in the Philippines only in 1982. New York Garments filed an application with
the Philippine Patent Office in 1985 to register the mark Harvard, which application was
approved in 1988. Fredco insists that the date of actual use in the Philippines should
prevail on the issue of who has the better right to register the marks.
Under Section 2 of Republic Act No. 166,14 as amended (R.A. No. 166), before a
trademark can be registered, it must have been actually used in commerce for not less
than two months in the Philippines prior to the filing of an application for its registration.
While Harvard University had actual prior use of its marks abroad for a long time, it did
not have actual prior use in the Philippines of the mark Harvard Veritas Shield Symbol
before its application for registration of the mark Harvard with the then Philippine Patents
Office. However, Harvard Universitys registration of the
Fredcos registration of the mark Harvard should not have been allowed because Section
4(a) of R.A. No. 166 prohibits the registration of a mark which may disparage or falsely
suggest a connection with persons, living or dead, institutions, beliefs x x x. Section
4(a) of R.A. No. 166 provides:
Section 4. Registration of trade-marks, trade-names and service- marks
on the principal register. ‒ There is hereby established a register of
trade-mark, trade-names and service-marks which shall be known as
the principal register. The owner of a trade-mark, a trade-name or
service-mark used to distinguish his goods, business or services from
the goods, business or services of others shall have the right to register
the same on the principal register, unless it:
(a) Consists of or comprises immoral, deceptive or scandalous manner,
or matter which may disparage or falsely suggest a connection
with persons, living or dead, institutions, beliefs, or national
symbols, or bring them into contempt or disrepute;
(b) x x x (emphasis supplied)
Fredcos 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, Fredcos 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
was not established in 1936, or in the U.S.A. as indicated by Fredco in its oblong logo.
Fredco offered no explanation to the Court of Appeals or to the IPO why it used the mark
Harvard on its oblong logo with the words Cambridge, Massachusetts, Established in 1936,
and USA. Fredco now claims before this Court that it used these words to evoke a lifestyle
or suggest a desirable aura of petitioners clothing lines. Fredcos belated justification
merely confirms that it sought to connect or associate its products with Harvard
University, riding on the prestige and popularity of Harvard University, and thus
appropriating part of Harvard Universitys goodwill without the latters consent.
Section 4(a) of R.A. No. 166 is identical to Section 2(a) of the Lanham Act,20 the
trademark law of the United States. These provisions are intended to protect the right of
publicity of famous individuals and institutions from commercial exploitation of their
goodwill by others.21 What Fredco has done in using the mark Harvard and the words
Cambridge, Massachusetts, USA to evoke a desirable aura to its products is precisely to
exploit commercially the goodwill of Harvard University without the latters consent. This is
a clear violation of Section 4(a) of R.A. No. 166. Under Section 17(c)22 of R.A. No. 166,
such violation is a ground for cancellation of Fredcos registration of the mark Harvard
because the registration was obtained in violation of Section 4 of R.A. No. 166.
Second, the Philippines and the United States of America are both signatories to the Paris
Convention for the Protection of Industrial Property (Paris Convention). The Philippines
became a signatory to the Paris Convention on 27 September 1965. Articles 6 bis and 8 of
the Paris Convention state:
ARTICLE 6bis
(i) The countries of the Union undertake either administratively if their
legislation so permits, or at the request of an interested party, to refuse
or to cancel the registration and to prohibit the use of a trademark
which constitutes a reproduction, imitation or translation, liable to
create confusion or a mark considered by the competent authority of
the country as being already the mark of a person entitled to the
benefits of the present Convention and used for identical or
similar goods. These provisions shall also apply when the
essential part of the mark constitutes a reproduction of any
such well-known mark or an imitation liable to create
confusion therewith.
 ARTICLE 8
A trade name shall be protected in all the countries of the
Union without the obligation of filing or registration, whether or
not it forms part of a trademark. (Emphasis supplied)
Thus, this Court has ruled that the Philippines is obligated to assure nationals of countries
of the Paris Convention that they are afforded an effective protection against violation of
their intellectual property rights in the Philippines in the same way that their own countries
are obligated to accord similar protection to Philippine nationals.23
Article 8 of the Paris Convention has been incorporated in Section 37 of R.A. No. 166, as
follows:
Section 37. Rights of foreign registrants. Persons who are nationals of,
domiciled in, or have a bona fide or effective business or commercial
establishment in any foreign country, which is a party to any
international convention or treaty relating to marks or trade-names, or
the repression of unfair competition to which the Philippines may be a
party, shall be entitled to the benefits and subject to the provisions of
this Act to the extent and under the conditions essential to give effect
to any such convention and treaties so long as the Philippines shall
continue to be a party thereto, except as provided in the following
paragraphs of this section.
xxxx
Trade-names of persons described in the first paragraph of this
section shall be protected without the obligation of filing or
registration whether or not they form parts of marks.24
x x x x (Emphasis supplied)
Thus, under Philippine law, a trade name of a national of a State that is a party to the
Paris Convention, whether or not the trade name forms part of a trademark, is protected
without the obligation 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 well as
Section 37 of R.A. No. 166, Harvard University is entitled to protection in the Philippines of
its trade name Harvard even without registration of such trade name in the Philippines.
This means that no educational entity in the Philippines can use the trade name Harvard
without the consent of Harvard University. Likewise, no entity in the Philippines can claim,
expressly or impliedly through the use of the name and mark Harvard, that its products or
services are authorized, approved, or licensed by, or sourced from, Harvard University
without the latters consent.
Article 6bis of the Paris Convention has been administratively implemented in the
Philippines through two directives of the then Ministry (now Department) of Trade, which
directives were upheld by this Court in several cases.25 On 20 November 1980, then
Minister of Trade Secretary Luis Villafuerte issued a Memorandum directing the Director of
Patents to reject, pursuant to the Paris Convention, all pending applications for Philippine
registration of signature and other world-famous trademarks by applicants other than their
original owners.26 The Memorandum states:
Pursuant to the Paris Convention for the Protection of Industrial
Property to which the Philippines is a signatory, you are hereby
directed to reject all pending applications for Philippine registration of
signature and other world-famous trademarks by applicants other than
its original owners or users.
The conflicting claims over internationally known trademarks involve
such name brands as Lacoste, Jordache, Vanderbilt, Sasson, Fila, Pierre
Cardin, Gucci, Christian Dior, Oscar de la Renta, Calvin Klein, Givenchy,
Ralph Lauren, Geoffrey Beene, Lanvin and Ted Lapidus.
It is further directed that, in cases where warranted, Philippine
registrants of such trademarks should be asked to surrender their
certificates of registration, if any, to avoid suits for damages and other
legal action by the trademarks foreign or local owners or original users.
You are also required to submit to the undersigned a progress report
on the matter.
For immediate compliance.27
In a Memorandum dated 25 October 1983, then Minister of Trade and Industry Roberto
Ongpin affirmed the earlier Memorandum of Minister Villafuerte. Minister Ongpin directed
the Director of Patents to implement measures necessary to comply with the Philippines
obligations under the Paris Convention, thus:
1. Whether the trademark under consideration is
well-known in the Philippines or is a mark already
belonging to a person entitled to the benefits of the
CONVENTION, this should be established, pursuant
to Philippine Patent Office procedures in inter partes
and ex parte cases, according to any of the
following criteria or any combination thereof:
(a) a declaration by the Minister of Trade and Industry that the
trademark being considered is already well-known in the Philippines
such that permission for its use by other than its original owner will
constitute a reproduction, imitation, translation or other infringement;
(b) that the trademark is used in commerce internationally, supported
by proof that goods bearing the trademark are sold on an international
scale, advertisements, the establishment of factories, sales offices,
distributorships, and the like, in different countries, including volume or
other measure of international trade and commerce;
(c) that the trademark is duly registered in the industrial
property office(s) of another country or countries, taking into
consideration the dates of such registration;
 (d) that the trademark has been long established and obtained goodwill
and general international consumer recognition as belonging to one
owner or source;
(e) that the trademark actually belongs to a party claiming ownership
and has the right to registration under the provisions of the aforestated
PARIS CONVENTION.
2. The word trademark, as used in this MEMORANDUM, shall
include tradenames, service marks, logos, signs, emblems,
insignia or other similar devices used for identification and
recognition by consumers.
3. The Philippine Patent Office shall refuse all applications for, or cancel
the registration of, trademarks which constitute a reproduction,
translation or imitation of a trademark owned by a person, natural or
corporate, who is a citizen of a country signatory to the PARIS
CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY.
x x x x28 (Emphasis supplied)
In Mirpuri, the Court ruled that the essential requirement under Article 6 bis of the Paris
Convention is that the trademark to be protected must be well-known in the country
where protection is sought.29 The Court declared that the power to determine whether a
trademark is well-known lies in the competent authority of the country of registration or
use.30 The Court then stated that the competent authority would either be the registering
authority if it has the power to decide this, or the courts of the country in question if the
issue comes before the courts.31
To be protected under the two directives of the Ministry of Trade, an internationally well-
known mark need not be registered or used in the Philippines.32 All that is required is that
the mark is well-known internationally and in the Philippines for identical or similar goods,
whether or not the mark is registered or used in the Philippines. The Court ruled
in Sehwani, Incorporated v. In-N-Out Burger, Inc.:33
The fact that respondents marks are neither registered nor
used in the Philippines is of no moment. The scope of protection
initially afforded by Article 6bis of the Paris Convention has been
expanded in the 1999 Joint Recommendation Concerning Provisions on
the Protection of Well-Known Marks, wherein the World Intellectual
Property Organization (WIPO) General Assembly and the Paris Union
agreed to a nonbinding recommendation that a well-known mark
should be protected in a country even if the mark is neither
registered nor used in that country. Part I, Article 2(3) thereof
provides:
(3) [Factors Which Shall Not Be Required] (a) A Member State shall not
require, as a condition for determining whether a mark is a well-known
mark:
(i) that the mark has been used in, or that the mark has been
registered or that an application for registration of the mark has been
filed in or in respect of, the Member State:
(ii) that the mark is well known in, or that the mark has been
registered or that an application for registration of the mark has been
filed in or in respect of, any jurisdiction other than the Member State;
or
(iii) that the mark is well known by the public at large in the Member
State.34 (Italics in the original decision; boldface supplied)
Indeed, Section 123.1(e) of R.A. No. 8293 now categorically states that a mark which is
considered by the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is registered here,
cannot be registered by another in the Philippines. Section 123.1(e) does not require that
the well-known mark be used in commerce in the Philippines but only that it be well-
known in the Philippines. Moreover, Rule 102 of the Rules and Regulations on
Trademarks, Service Marks, Trade Names and Marked or Stamped Containers, which
implement R.A. No. 8293, provides:
Rule 102. Criteria for determining whether a mark is well-known. In
determining whether a mark is well-known, the following criteria or any
combination thereof may be taken into account:
(a) the duration, extent and geographical area of any use of the mark,
in particular, the duration, extent and geographical area of any
promotion of the mark, including advertising or publicity and the
presentation, at fairs or exhibitions, of the goods and/or services to
which the mark applies;
(b) the market share, in the Philippines and in other countries, of the
goods and/or services to which the mark applies;
(c) the degree of the inherent or acquired distinction of the mark;
(d) the quality-image or reputation acquired by the mark;
(e) the extent to which the mark has been registered in the world;
(f) the exclusivity of registration attained by the mark in the world;
(g) the extent to which the mark has been used in the world;
(h) the exclusivity of use attained by the mark in the world;
(i) the commercial value attributed to the mark in the world;
(j) the record of successful protection of the rights in the mark;
(k) the outcome of litigations dealing with the issue of whether the
mark is a well-known mark; and
(l) the presence or absence of identical or similar marks validly
registered for or used on identical or similar goods or services and
 owned by persons other than the person claiming that his mark is a
well-known mark. (Emphasis supplied)
Since any combination of the foregoing criteria is sufficient to determine that a mark is
well-known, it is clearly not necessary that the mark be used in commerce in the
Philippines. Thus, while under the territoriality principle a mark must be used in commerce
in the Philippines to be entitled to protection, internationally well-known marks are the
exceptions to this rule.
In the assailed Decision of the Office of the Director General dated 21 April 2008, the
Director General found that:
Traced to its roots or origin, HARVARD is not an ordinary word. It
refers to no other than Harvard University, a recognized and respected
institution of higher learning located in Cambridge, Massachusetts,
U.S.A. Initially referred to simply as the new college, the institution
was named Harvard College on 13 March 1639, after its first principal
donor, a young clergyman named John Harvard. A graduate of
Emmanuel College, Cambridge in England, John Harvard bequeathed
about four hundred books in his will to form the basis of the college
library collection, along with half his personal wealth worth several
hundred pounds. The earliest known official reference to Harvard as a
university rather than college occurred in the new Massachusetts
Constitution of 1780.
Records also show that the first use of the name HARVARD was in
1638 for educational services, policy courses of instructions and
training at the university level. It has a Charter. Its first commercial
use of the name or mark HARVARD for Class 25 was on 31 December
1953 covered by UPTON Reg. No. 2,119,339 and 2,101,295.
Assuming in arguendo, that the Appellate may have used the mark
HARVARD in the Philippines ahead of the Appellant, it still cannot be
denied that the Appellants use thereof was decades, even centuries,
ahead of the Appellees. More importantly, the name HARVARD was the
name of a person whose deeds were considered to be a cornerstone of
the university. The Appellants logos, emblems or symbols are owned
by Harvard University. The name HARVARD and the logos, emblems or
symbols are endemic and cannot be separated from the institution.35
Finally, in its assailed Decision, the Court of Appeals ruled:
Records show that Harvard University is the oldest and one of the
foremost educational institutions in the United States, it being
established in 1636. It is located primarily in Cambridge, Massachusetts
and was named after John Harvard, a puritan minister who left to the
college his books and half of his estate.
The mark Harvard College was first used in commerce in the United
States in 1638 for educational services, specifically, providing courses
of instruction and training at the university level (Class 41). Its
application for registration with the United States Patent and
Trademark Office was filed on September 20, 2000 and it was
registered on October 16, 2001. The marks Harvard and Harvard Ve ri
tas Shield Symbol were first used in commerce in the the United States
on December 31, 1953 for athletic uniforms, boxer shorts, briefs, caps,
coats, leather coats, sports coats, gym shorts, infant jackets, leather
jackets, night shirts, shirts, socks, sweat pants, sweatshirts, sweaters
and underwear (Class 25). The applications for registration with the
USPTO were filed on September 9, 1996, the mark Harvard was
registered on December 9, 1997 and the mark Harvard Ve ri tas Shield
Symbol was registered on September 30, 1997.36
We also note that in a Decision37 dated 18 December 2008 involving a separate case
between Harvard University and Streetward International, Inc.,38 the Bureau of Legal
Affairs of the IPO ruled that the mark Harvard is a well-known mark. This Decision, which
cites among others the numerous trademark registrations of Harvard University in various
countries, has become final and executory.
There is no question then, and this Court so declares, that Harvard is a well-known name
and mark not only in the United States but also internationally, including the Philippines.
The mark Harvard is rated as one of the most famous marks in the world. It has been
registered in at least 50 countries. It has been used and promoted extensively in
numerous publications worldwide. It has established a considerable goodwill worldwide
since the founding of Harvard University more than 350 years ago. It is easily recognizable
as the trade name and mark of Harvard University of Cambridge, Massachusetts, U.S.A.,
internationally known as one of the leading educational institutions in the world. As such,
even before Harvard University applied for registration of the mark Harvard in the
Philippines, the mark was already protected under Article 6 bis and Article 8 of the Paris
Convention. Again, even without applying the Paris Convention, Harvard University can
invoke Section 4(a) of R.A. No. 166 which prohibits the registration of a mark which may
disparage or falsely suggest a connection with persons, living or dead, institutions,
beliefs x x x.
WHEREFORE, we DENY the petition. We AFFIRM the 24 October 2008 Decision and 8
January 2009 Resolution of the Court of Appeals in CA-G.R. SP No. 103394.
SO ORDERED.
 THIRD DIVISION
[G.R. No. 120900. July 20, 2000]
CANON KABUSHIKI KAISHA, petitioner, vs. COURT OF APPEALS and NSR
RUBBER CORPORATION, respondents.
DECISION
GONZAGA-REYES, J.:
Before us is a petition for review that seeks to set aside the Decision[1] dated February 21,
1995 of the Court of Appeals in CA-GR SP No. 30203, entitled "Canon Kabushiki Kaisha vs.
NSR Rubber Corporation" and its Resolution dated June 27, 1995 denying the motion for
reconsideration of herein petitioner Canon Kabushiki Kaisha (petitioner).
On January 15, 1985, private respondent NSR Rubber Corporation (private respondent)
filed an application for registration of the mark CANON for sandals in the Bureau of
Patents, Trademarks, and Technology Transfer (BPTTT). A Verified Notice of Opposition
was filed by petitioner, a foreign corporation duly organized and existing under the laws of
Japan, alleging that it will be damaged by the registration of the trademark CANON in the
name of private respondent. The case was docketed as Inter Partes Case No. 3043.
Petitioner moved to declare private respondent in default for its failure to file its answer
within the prescribed period. The BPTTT then declared private respondent in default and
allowed petitioner to present its evidence ex-parte.
Based on the records, the evidence presented by petitioner consisted of its certificates of
registration for the mark CANON in various countries covering goods belonging to class 2
(paints, chemical products, toner, and dye stuff). Petitioner also submitted in evidence its
Philippine Trademark Registration No. 39398, showing its ownership over the trademark
CANON also under class 2.
On November 10, 1992, the BPTTT issued its decision dismissing the opposition of
petitioner and giving due course to private respondents application for the registration of
the trademark CANON. On February 16, 1993, petitioner appealed the decision of the
BPTTT with public respondent Court of Appeals that eventually affirmed the decision of
BPTTT. Hence, this petition for review.
Petitioner anchors this instant petition on these grounds:
A) PETITIONER IS ENTITLED TO EXCLUSIVE USE OF THE MARK
CANON BECAUSE IT IS ITS TRADEMARK AND IS USED ALSO FOR
FOOTWEAR.
B) TO ALLOW PRIVATE RESPONDENT TO REGISTER CANON FOR
FOOTWEAR IS TO PREVENT PETITIONER FROM USING CANON FOR
VARIOUS KINDS OF FOOTWEAR, WHEN IN FACT, PETITIONER HAS
EARLIER USED SAID MARK FOR SAID GOODS.
C) PETITIONER IS ALSO ENTITLED TO THE RIGHT TO EXCLUSIVELY
USE CANON TO PREVENT CONFUSION OF BUSINESS.
D) PETITIONER IS ALSO ENTITLED TO THE EXCLUSIVE USE OF
CANON BECAUSE IT FORMS PART OF ITS CORPORATE NAME,
PROTECTED BY THE PARIS CONVENTION.[2]
The BPTTT and the Court of Appeals share the opinion that the trademark "CANON" as
used by petitioner for its paints, chemical products, toner, and dyestuff, can be used by
private respondent for its sandals because the products of these two parties are dissimilar.
Petitioner protests the appropriation of the mark CANON by private respondent on the
ground that petitioner has used and continues to use the trademark CANON on its wide
range of goods worldwide. Allegedly, the corporate name or tradename of petitioner is
also used as its trademark on diverse goods including footwear and other related products
like shoe polisher and polishing agents. To lend credence to its claim, petitioner points out
that it has branched out in its business based on the various goods carrying its trademark
CANON[3], including footwear which petitioner contends covers sandals, the goods for
which private respondent sought to register the mark CANON. For petitioner, the fact
alone that its trademark CANON is carried by its other products like footwear, shoe
polisher and polishing agents should have precluded the BPTTT from giving due course to
the application of private respondent.
We find the arguments of petitioner to be unmeritorious. Ordinarily, the ownership of a
trademark or tradename is a property right that the owner is entitled to protect [4] as
mandated by the Trademark Law.[5] However, when a trademark is used by a party for a
product in which the other party does not deal, the use of the same trademark on the
latters product cannot be validly objected to.[6]
A review of the records shows that with the order of the BPTTT declaring private
respondent in default for failure to file its answer, petitioner had every opportunity to
present ex-parte all of its evidence to prove that its certificates of registration for the
trademark CANON cover footwear. The certificates of registration for the trademark
CANON in other countries and in the Philippines as presented by petitioner, clearly showed
that said certificates of registration cover goods belonging to class 2 (paints, chemical
products, toner, dyestuff). On this basis, the BPTTT correctly ruled that since the
certificate of registration of petitioner for the trademark CANON covers class 2 (paints,
chemical products, toner, dyestuff), private respondent can use the trademark CANON for
its goods classified as class 25 (sandals). Clearly, there is a world of difference between
the paints, chemical products, toner, and dyestuff of petitioner and the sandals of private
respondent.
Petitioner counters that notwithstanding the dissimilarity of the products of the parties, the
trademark owner is entitled to protection when the use of by the junior user "forestalls the
normal expansion of his business".[7]Petitioners opposition to the registration of its
trademark CANON by private respondent rests upon petitioners insistence that it would be
precluded from using the mark CANON for various kinds of footwear, when in fact it has
earlier used said mark for said goods. Stretching this argument, petitioner claims that it is
possible that the public could presume that petitioner would also produce a wide variety of
footwear considering the diversity of its products marketed worldwide.
We do not agree. Even in this instant petition, except for its bare assertions, petitioner
failed to attach evidence that would convince this Court that petitioner has also embarked
in the production of footwear products. We quote with approval the observation of the
Court of Appeals that:
"The herein petitioner has not made known that it intends to venture
into the business of producing sandals. This is clearly shown in its
Trademark Principal Register (Exhibit "U") where the products of the
said petitioner had been clearly and specifically described as "Chemical
products, dyestuffs, pigments, toner developing preparation, shoe
polisher, polishing agent". It would be taxing ones credibility to aver at
 this point that the production of sandals could be considered as a
possible "natural or normal expansion" of its business operation". [8]
In Faberge, Incorporated vs. Intermediate Appellate Court ,[9] the Director of patents
allowed the junior user to use the trademark of the senior user on the ground that the
briefs manufactured by the junior user, the product for which the trademark BRUTE was
sought to be registered, was unrelated and non-competing with the products of the senior
user consisting of after shave lotion, shaving cream, deodorant, talcum powder, and toilet
soap. The senior user vehemently objected and claimed that it was expanding its
trademark to briefs and argued that permitting the junior user to register the same
trademark would allow the latter to invade the senior users exclusive domain. In
sustaining the Director of Patents, this Court said that since "(the senior user) has not
ventured in the production of briefs, an item which is not listed in its certificate of
registration, (the senior user), cannot and should not be allowed to feign that (the junior
user) had invaded (the senior users) exclusive domain."[10] We reiterated the principle that
the certificate of registration confers upon the trademark owner the exclusive right to use
its own symbol only to those goods specified in the certificate, subject to the conditions
and limitations stated therein.[11] Thus, the exclusive right of petitioner in this case to use
the trademark CANON is limited to the products covered by its certificate of registration.
Petitioner further argues that the alleged diversity of its products all over the world makes
it plausible that the public might be misled into thinking that there is some supposed
connection between private respondents goods and petitioner. Petitioner is apprehensive
that there could be confusion as to the origin of the goods, as well as confusion of
business, if private respondent is allowed to register the mark CANON. In such a case,
petitioner would allegedly be immensely prejudiced if private respondent would be
permitted to take "a free ride on, and reap the advantages of, the goodwill and reputation
of petitioner Canon".[12] In support of the foregoing arguments, petitioner invokes the
rulings in Sta. Ana vs. Maliwat[13], Ang vs. Teodoro[14] and Converse Rubber Corporation
vs. Universal Rubber Products, Inc.[15].
The likelihood of confusion of goods or business is a relative concept, to be determined
only according to the particular, and sometimes peculiar, circumstances of each
case.[16] Indeed, in trademark law cases, even more than in other litigation, precedent
must be studied in the light of the facts of the particular case.[17] Contrary to petitioners
supposition, the facts of this case will show that the cases of Sta. Ana vs. Maliwat,, Ang vs.
Teodoro and Converse Rubber Corporation vs. Universal Rubber Products, Inc. are hardly
in point. The just cited cases involved goods that were confusingly similar, if not identical,
as in the case of Converse Rubber Corporation vs. Universal Rubber Products, Inc . Here,
the products involved are so unrelated that the public will not be misled that there is the
slightest nexus between petitioner and the goods of private respondent.
In cases of confusion of business or origin, the question that usually arises is whether the
respective goods or services of the senior user and the junior user are so related as to
likely cause confusion of business or origin, and thereby render the trademark or
tradenames confusingly similar.[18] Goods are related when they belong to the same class
or have the same descriptive properties; when they possess the same physical attributes
or essential characteristics with reference to their form, composition, texture or
quality.[19] They may also be related because they serve the same purpose or are sold in
grocery stores.[20]
Thus, in Esso Standard Eastern, Inc. vs. Court of Appeals , this Court ruled that the
petroleum products on which the petitioner therein used the trademark ESSO, and the
product of respondent, cigarettes are "so foreign to each other as to make it unlikely that
purchasers would think that petitioner is the manufacturer of respondents goods"[21].
Moreover, the fact that the goods involved therein flow through different channels of trade
highlighted their dissimilarity, a factor explained in this wise:
"The products of each party move along and are disposed through
different channels of distribution. The (petitioners) products are
distributed principally through gasoline service and lubrication stations,
automotive shops and hardware stores. On the other hand, the
(respondents) cigarettes are sold in sari-sari stores, grocery store, and
other small distributor outlets. (Respondents) cigarettes are even
peddled in the streets while (petitioners) gasul burners are not. Finally,
there is a marked distinction between oil and tobacco, as well as
between petroleum and cigarettes. Evidently, in kind and nature the
products of (respondent) and of (petitioner) are poles apart."[22]
Undoubtedly, the paints, chemical products, toner and dyestuff of petitioner that carry the
trademark CANON are unrelated to sandals, the product of private respondent. We agree
with the BPTTT, following the Esso doctrine, when it noted that the two classes of
products in this case flow through different trade channels. The products of petitioner are
sold through special chemical stores or distributors while the products of private
respondent are sold in grocery stores, sari-sari stores and department stores.[23] Thus, the
evident disparity of the products of the parties in the case at bar renders unfounded the
apprehension of petitioner that confusion of business or origin might occur if private
respondent is allowed to use the mark CANON.
In its bid to bar the registration of private respondent of the mark CANON, petitioner
invokes the protective mantle of the Paris Convention. Petitioner asserts that it has the
exclusive right to the mark CANON because it forms part of its corporate name or
tradename, protected by Article 8 of the Paris Convention, to wit:
"A tradename shall be protected in all the countries of the Union
without the obligation of filing or registration, whether or not it forms
part of a trademark."
Public respondents BPTTT and the Court of Appeals allegedly committed an oversight
when they required petitioner to prove that its mark is a well-known mark at the time the
application of private respondent was filed. Petitioner questions the applicability of the
guidelines embodied in the Memorandum of then Minister of Trade and Industry Roberto
Ongpin (Ongpin) dated October 25, 1983 which according to petitioner implements Article
6bis of the Paris Convention, the provision referring to the protection of trademarks. The
memorandum reads:
"a) the mark must be internationally known;
b) the subject of the right must be a trademark, not a patent or
copyright or anything else;
c) the mark must be for use in the same or similar class of goods;
d) the person claiming must be the owner of the mark."
According to petitioner, it should not be required to prove that its trademark is well-known
and that the products are not similar as required by the quoted memorandum. Petitioner
emphasizes that the guidelines in the memorandum of Ongpin implement Article 6bis of
the Paris Convention, the provision for the protection of trademarks, not tradenames.
Article 6bis of the Paris Convention states:
 (1)....The countries of the Union undertake, either administratively if
their legislation so permits, or at the request of an interested party, to
refuse or to cancel the registration and to prohibit the use of a
trademark which constitutes a reproduction, imitation or translation,
liable to create confusion, of a mark considered by the competent
authority of the country of registration or use to be well-known in that
country as being already the mark of a person entitled to the benefits
of the present Convention and used for identical or similar goods.
These provisions shall also apply when the essential part of the mark
constitutes a reproduction of any such well-known mark or an imitation
liable to create confusion therewith.
(2)....A period of at least five years from the date of registration shall
be allowed for seeking the cancellation of such a mark. The countries
of the Union may provide for a period within which the prohibition of
use must be sought.
(3)....No time limit shall be fixed for seeking the cancellation or the
prohibition of the use of marks or used in bad faith."
Petitioner insists that what it seeks is the protection of Article 8 of the Paris Convention,
the provision that pertains to the protection of tradenames. Petitioner believes that the
appropriate memorandum to consider is that issued by the then Minister of Trade and
Industry, Luis Villafuerte, directing the Director of patents to:
"reject all pending applications for Philippine registration of signature
and other world famous trademarks by applicants other than the
original owners or users."
As far as petitioner is concerned, the fact that its tradename is at risk would call for the
protection granted by Article 8 of the Paris Convention. Petitioner calls attention to the fact
that Article 8, even as embodied in par. 6, sec. 37 of RA 166, mentions no requirement of
similarity of goods. Petitioner claims that the reason there is no mention of such a
requirement, is "because there is a difference between the referent of the name and that
of the mark"[24] and that "since Art. 8 protects the tradename in the countries of the
Union, such as Japan and the Philippines, Petitioners tradename should be protected
here."[25]
We cannot uphold petitioners position.
The term "trademark" is defined by RA 166, the Trademark Law, as including "any word,
name, symbol, emblem, sign or device or any combination thereof adopted and used by a
manufacturer or merchant to identify his goods and distinguish them for those
manufactured, sold or dealt in by others."[26] Tradename is defined by the same law as
including "individual names and surnames, firm names, tradenames, devices or words
used by manufacturers, industrialists, merchants, agriculturists, and others to identify their
business, vocations, or occupations; the names or titles lawfully adopted and used by
natural or juridical persons, unions, and any manufacturing, industrial, commercial,
agricultural or other organizations engaged in trade or commerce."[27] Simply put, a trade
name refers to the business and its goodwill; a trademark refers to the goods. [28]
The Convention of Paris for the Protection of Industrial Property, otherwise known as the
Paris Convention, of which both the Philippines and Japan, the country of petitioner, are
signatories[29], is a multilateral treaty that seeks to protect industrial property consisting of
patents, utility models, industrial designs, trademarks, service marks, trade names and
indications of source or appellations of origin, and at the same time aims to repress unfair
competition.[30] We agree with public respondents that the controlling doctrine with
respect to the applicability of Article 8 of the Paris Convention is that established
in Kabushi Kaisha Isetan vs. Intermediate Appellate Court.[31] As pointed out by the
BPTTT:
"Regarding the applicability of Article 8 of the Paris Convention, this
Office believes that there is no automatic protection afforded an entity
whose tradename is alleged to have been infringed through the use of
that name as a trademark by a local entity.
In Kabushiki Kaisha Isetan vs. The Intermediate Appellate Court, et.
al., G.R. No. 75420, 15 November 1991, the Honorable Supreme Court
held that:
The Paris Convention for the Protection of Industrial
Property does not automatically exclude all countries
of the world which have signed it from using a
tradename which happens to be used in one
country. To illustrate if a taxicab or bus company in
a town in the United Kingdom or India happens to
use the tradename "Rapid Transportation", it does
not necessarily follow that "Rapid" can no longer be
registered in Uganda, Fiji, or the Philippines.
This office is not unmindful that in the Treaty of Paris for the Protection
of Intellectual Property regarding well-known marks and possible
application thereof in this case. Petitioner, as this office sees it, is trying
to seek refuge under its protective mantle, claiming that the subject
mark is well known in this country at the time the then application of
NSR Rubber was filed.
However, the then Minister of Trade and Industry, the Hon. Roberto V.
Ongpin, issued a memorandum dated 25 October 1983 to the Director
of Patents, a set of guidelines in the implementation of Article 6bis (sic)
of the Treaty of Paris. These conditions are:
a) the mark must be internationally known;
b) the subject of the right must be a trademark, not a patent or
copyright or anything else;
c ) the mark must be for use in the same or similar kinds of goods; and
d) the person claiming must be the owner of the mark (The Parties
Convention Commentary on the Paris Convention. Article by Dr.
Bogsch, Director General of the World Intellectual Property
Organization, Geneva, Switzerland, 1985)
From the set of facts found in the records, it is ruled that the Petitioner
failed to comply with the third requirement of the said memorandum
that is the mark must be for use in the same or similar kinds of goods.
The Petitioner is using the mark "CANON" for products belonging to
class 2 (paints, chemical products) while the Respondent is using the
same mark for sandals (class 25). Hence, Petitioners contention that its
 mark is well-known at the time the Respondent filed its application for
the same mark should fail. "[32]
Petitioner assails the application of the case of Kabushi Kaisha Isetan vs. Intermediate
Appellate Court to this case. Petitioner points out that in the case of Kabushi Kaisha Isetan
vs. Intermediate Appellate Court, petitioner therein was found to have never at all
conducted its business in the Philippines unlike herein petitioner who has extensively
conducted its business here and also had its trademark registered in this country. Hence,
petitioner submits that this factual difference renders inapplicable our ruling in the case
of Kabushi Kaisha Isetan vs. Intermediate Appellate Court that Article 8 of the Paris
Convention does not automatically extend protection to a tradename that is in danger of
being infringed in a country that is also a signatory to said treaty. This contention deserves
scant consideration. Suffice it to say that the just quoted pronouncement in the case
of Kabushi Kaisha Isetan vs. Intermediate Appellate Court, was made independent of the
factual finding that petitioner in said case had not conducted its business in this country.
WHEREFORE, in view of the foregoing, the instant petition for review on certiorari is
DENIED for lack of merit.
SO ORDERED.
Melo, (Chairman), Vitug, Panganiban, and Pursima, JJ., concur.
G.R. No. L-78325 January 25, 1990
DEL MONTE CORPORATION and PHILIPPINE PACKING
CORPORATION, petitioners,
vs.
COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING
INDUSTRIES, respondents.
Bito, Misa & Lozada for petitioners.
Reynaldo F. Singson for private respondent.
CRUZ, J.:
The petitioners are questioning the decision of the respondent court upholding the
dismissal by the trial court of their complaint against the private respondent for
infringement of trademark and unfair competition.
Petitioner Del Monte Corporation is a foreign company organized under the laws of the
United States and not engaged in business in the Philippines. Both the Philippines and the
United States are signatories to the Convention of Paris of September 27, 1965, which
grants to the nationals of the parties rights and advantages which their own nationals
enjoy for the repression of acts of infringement and unfair competition.
Petitioner Philippine Packing Corporation (Philpack) is a domestic corporation duly
organized under the laws of the Philippines. On April 11, 1969, Del Monte granted Philpack
the right to manufacture, distribute and sell in the Philippines various agricultural products,
including catsup, under the Del Monte trademark and logo.
On October 27,1965, Del Monte authorized Philpack to register with the Philippine Patent
Office the Del Monte catsup bottle configuration, for which it was granted Certificate of
Trademark Registration No. SR-913 by the Philippine Patent Office under the Supplemental
Register. 1 On November 20, 1972, Del Monte also obtained two registration certificates
for its trademark "DEL MONTE" and its logo. 2
Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of
Registration by the Bureau of Domestic Trade on April 17,1980, to engage in the
manufacture, packing, distribution and sale of various kinds of sauce, identified by the
logo Sunshine Fruit Catsup.3
This logo was registered in the Supplemental Register on September 20, 1983. 4 guilty of unfair competition, and shall be subject to an action therefor.
The product itself was contained in various kinds of bottles, including the Del Monte bottle,
which the private respondent bought from the junk shops for recycling.
Having received reports that the private respondent was using its exclusively designed
bottles and a logo confusingly similar to Del Monte's, Philpack warned it to desist from
doing so on pain of legal action. Thereafter, claiming that the demand had been ignored,
Philpack and Del Monte filed a complaint against the private respondent for infringement
of trademark and unfair competition, with a prayer for damages and the issuance of a writ
of preliminary injunction. 5
In its answer, Sunshine alleged that it had long ceased to use the Del Monte bottle and
that its logo was substantially different from the Del Monte logo and would not confuse
the buying public to the detriment of the petitioners. 6
After trial, the Regional Trial Court of Makati dismissed the complaint. It held that there
were substantial differences between the logos or trademarks of the parties; that the
defendant had ceased using the petitioners' bottles; and that in any case the defendant
became the owner of the said bottles upon its purchase thereof from the junk yards.
Furthermore, the complainants had failed to establish the defendant's malice or bad faith,
which was an essential element of infringement of trademark or unfair competition. 7
This decision was affirmed in toto by the respondent court, which is now faulted in this
petition for certiorari under Rule 45 of the Rules of Court.
Section 22 of R.A. No. 166, otherwise known as the Trademark Law, provides in part as
follows:
Sec. 22. Infringement, what constitutes. — Any person who shall use, without
the consent of the registrant, any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade-name in connection with the sale,
offering for sale, or advertising of any goods, business or services on or in
connection with which such use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such goods or services
or identity of such business; or reproduce, counterfeit copy or colorably imitate
any such mark or trade name and apply such reproduction, counterfeit copy or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such goods,
business or services, shall be liable to a civil action by the registrant for any or all
of the remedies herein provided.
Sec. 29 of the same law states as follows:
Sec. 29. Unfair competition, rights and remedies. — A person who has identified
in the mind of the public the goods he manufactures or deals in, his business or
services from those of others, whether or not a mark or tradename is employed,
has a property right in the goodwill of the said goods, business or services so
identified, which will be protected in the same manner as other property rights.
Such a person shall have the remedies provided in section twenty- three,
Chapter V hereof.
Any person who shall employ deception or any other means contrary to good
faith by which he shall pass off the goods manufactured by him or in which he
deals, or his business, or services for those of the one having established such
goodwill, or who shall commit any acts calculated to produce said result, shall be
In particular, and without in any way limiting the scope of unfair competition, the
following shall be deemed guilty of unfair competition:
(a) Any person, who in selling his goods shall give them the general
appearance of goods of another manufacturer or dealer, either as to
the goods themselves or in the wrapping of the packages in which they
are contained, or the devices or words thereon, or in any other feature
of their appearance, which would likely influence purchasers to believe
that the goods offered are those of a manufacturer or dealer other than
the actual manufacturer or dealer, or who otherwise clothes the goods
with such appearance as shall deceive the public and defraud another
of his legitimate trade, or any subsequent vendor of such goods or any
agent of any vendor engaged in selling such goods with a like purpose;
 (b) Any person who by any artifice, or device, or who employs ally
other means calculated to induce the false belief that such person is
offering the services of another who has identified such services in the
mind of the public; or
(c) Any person who shall make any false statement in the course of
trade or who shall commit any other act contrary to good faith of a
nature calculated to discredit the goods, business or services of
another.
To arrive at a proper resolution of this case, it is important to bear in mind the
following distinctions between infringement of trademark and unfair competition.
(1) Infringement of trademark is the unauthorized use of a trademark,
whereas unfair competition is the passing off of one's goods as those of
another.
(2) In infringement of trademark fraudulent intent is unnecessary
whereas in unfair competition fraudulent intent is essential.
(3) In infringement of trademark the prior registration of the trademark
is a prerequisite to the action, whereas in unfair competition
registration is not necessary. 8
In the challenged decision, the respondent court cited the following test laid
down by this Court in a number of cases:
In determining whether two trademarks are confusingly similar, the two
marks in their entirety as they appear in the respective labels must be
considered in relation to the goods to which they are attached; the
discerning eye of the observer must focus not only on the predorninant
words but also on the other features appearing on both labels. 9
and applying the same, held that there was no colorable imitation of the
petitioners' trademark and logo by the private respondent. The respondent court
agreed with the findings of the trial court that:
In order to resolve the said issue, the Court now attempts to make a comparison of the
two products, to wit:
1. As to the shape of label or make:
Del Monte: Semi-rectangular with a crown or tomato shape design on
top of the rectangle.
Sunshine: Regular rectangle.
2. As to brand printed on label:
Del Monte: Tomato catsup mark.
Sunshine: Fruit catsup.
3. As to the words or lettering on label or mark:
Del Monte: Clearly indicated words packed by Sysu International, Inc.,
Q.C., Philippines.
Sunshine: Sunshine fruit catsup is clearly indicated "made in the
Philippines by Sunshine Sauce Manufacturing Industries" No. 1 Del
Monte Avenue, Malabon, Metro Manila.
4. As to color of logo:
Del Monte: Combination of yellow and dark red, with words "Del Monte
Quality" in white.
Sunshine: White, light green and light red, with words "Sunshine
Brand" in yellow.
5. As to shape of logo:
Del Monte: In the shape of a tomato.
Sunshine: Entirely different in shape.
6. As to label below the cap:
Del Monte: Seal covering the cap down to the neck of the bottle, with
picture of tomatoes with words "made from real tomatoes."
Sunshine: There is a label below the cap which says "Sunshine Brand."
7. As to the color of the products:
Del Monte: Darker red.
Sunshine: Lighter than Del Monte.
While the Court does recognize these distinctions, it does not agree with the conclusion
that there was no infringement or unfair competition. It seems to us that the lower courts
have been so pre-occupied with the details that they have not seen the total picture.
It has been correctly held that side-by-side comparison is not the final test of
similarity. 10 Such comparison requires a careful scrutiny to determine in what points the
labels of the products differ, as was done by the trial judge. The ordinary buyer does not
usually make such scrutiny nor does he usually have the time to do so. The average
shopper is usually in a hurry and does not inspect every product on the shelf as if he were
browsing in a library. Where the housewife has to return home as soon as possible to her
baby or the working woman has to make quick purchases during her off hours, she is apt
to be confused by similar labels even if they do have minute differences. The male
shopper is worse as he usually does not bother about such distinctions.
The question is not whether the two articles are distinguishable by their label when set
side by side but whether the general confusion made by the article upon the eye of the
casual purchaser who is unsuspicious and off his guard, is such as to likely result in his
confounding it with the original. 11 As observed in several cases, the general impression of
the ordinary purchaser, buying under the normally prevalent conditions in trade and giving
the attention such purchasers usually give in buying that class of goods is the
touchstone. 12
It has been held that in making purchases, the consumer must depend upon his
recollection of the appearance of the product which he intends to purchase. 13 The buyer
having in mind the mark/label of the respondent must rely upon his memory of the
petitioner's mark. 14 Unlike the judge who has ample time to minutely examine the labels
in question in the comfort of his sala, the ordinary shopper does not enjoy the same
opportunity.
A number of courts have held that to determine whether a trademark has been infringed,
we must consider the mark as a whole and not as dissected. If the buyer is deceived, it is
attributable to the marks as a totality, not usually to any part of it. 15 The court therefore
should be guided by its first impression, 16 for a buyer acts quickly and is governed by a
casual glance, the value of which may be dissipated as soon as the court assumes to
analyze carefully the respective features of the mark. 17
It has also been held that it is not the function of the court in cases of infringement and
unfair competition to educate purchasers but rather to take their carelessness for granted,
and to be ever conscious of the fact that marks need not be identical. A confusing
similarity will justify the intervention of equity. 18 The judge must also be aware of the fact
that usually a defendant in cases of infringement does not normally copy but makes only
colorable changes. 19Well has it been said that the most successful form of copying is to
employ enough points of similarity to confuse the public with enough points of difference
to confuse the courts. 20
We also note that the respondent court failed to take into consideration several factors
which should have affected its conclusion, to wit: age, training and education of the usual
purchaser, the nature and cost of the article, whether the article is bought for immediate
consumption and also the conditions under which it is usually purchased . 21Among these,
what essentially determines the attitude of the purchaser, specifically his inclination to be
cautious, is the cost of the goods. To be sure, a person who buys a box of candies will not
exercise as much care as one who buys an expensive watch. As a general rule, an ordinary
buyer does not exercise as much prudence in buying an article for which he pays a few
centavos as he does in purchasing a more valuable thing. 22 Expensive and valuable items
are normally bought only after deliberate, comparative and analytical investigation. But
mass products, low priced articles in wide use, and matters of everyday purchase requiring
frequent replacement are bought by the casual consumer without great care. 23 In this
latter category is catsup.
At that, even if the labels were analyzed together it is not difficult to see that the Sunshine
label is a colorable imitation of the Del Monte trademark. The predominant colors used in
the Del Monte label are green and red-orange, the same with Sunshine. The word "catsup"
in both bottles is printed in white and the style of the print/letter is the same. Although the
logo of Sunshine is not a tomato, the figure nevertheless approximates that of a tomato.
As previously stated, the person who infringes a trade mark does not normally copy out
but only makes colorable changes, employing enough points of similarity to confuse the
public with enough points of differences to confuse the courts. What is undeniable is the
fact that when a manufacturer prepares to package his product, he has before him a
boundless choice of words, phrases, colors and symbols sufficient to distinguish his
product from the others. When as in this case, Sunshine chose, without a reasonable
explanation, to use the same colors and letters as those used by Del Monte though the
field of its selection was so broad, the inevitable conclusion is that it was done deliberately
to deceive .24
It has been aptly observed that the ultimate ratio in cases of grave doubt is the rule that
as between a newcomer who by the confusion has nothing to lose and everything to gain
and one who by honest dealing has already achieved favor with the public, any doubt
should be resolved against the newcomer inasmuch as the field from which he can select a
desirable trademark to indicate the origin of his product is obviously a large one. 25
Coming now to the second issue, we find that the private respondent is not guilty of
infringement for having used the Del Monte bottle. The reason is that the configuration of
the said bottle was merely registered in the Supplemental Register. In the case
of Lorenzana v. Macagba, 26 we declared that:
(1) Registration in the Principal Register gives rise to a presumption of the
validity of the registration, the registrant's ownership of the mark and his right to
the exclusive use thereof. There is no such presumption in the registration in the
Supplemental Register.
(2) Registration in the Principal Register is limited to the actual owner of the
trademark and proceedings therein on the issue of ownership which may be
contested through opposition or interference proceedings or, after registration, in
a petition for cancellation.
Registration in the Principal Register is constructive notice of the registrant's
claim of ownership, while registration in the Supplemental Register is merely
proof of actual use of the trademark and notice that the registrant has used or
appropriated it. It is not subject to opposition although it may be cancelled after
the issuance. Corollarily, registration in the Principal Register is a basis for an
action for infringement while registration in the Supplemental Register is not.
(3) In applications for registration in the Principal Register, publication of the
application is necessary. This is not so in applications for registrations in the
Supplemental Register.
It can be inferred from the foregoing that although Del Monte has actual use of the
bottle's configuration, the petitioners cannot claim exclusive use thereof because it has not
been registered in the Principal Register. However, we find that Sunshine, despite the
many choices available to it and notwithstanding that the caution "Del Monte Corporation,
Not to be Refilled" was embossed on the bottle, still opted to use the petitioners' bottle to
market a product which Philpack also produces. This clearly shows the private
respondent's bad faith and its intention to capitalize on the latter's reputation and goodwill
and pass off its own product as that of Del Monte.
The Court observes that the reasons given by the respondent court in resolving the case in
favor of Sunshine are untenable. First, it declared that the registration of the Sunshine
label belied the company's malicious intent to imitate petitioner's product. Second, it held
that the Sunshine label was not improper because the Bureau of Patent presumably
considered other trademarks before approving it. Third, it cited the case of Shell Co. v.
Insular Petroleum, 27 where this Court declared that selling oil in containers of another
with markings erased, without intent to deceive, was not unfair competition.
Regarding the fact of registration, it is to be noted that the Sunshine label was registered
not in the Principal Register but only in the Supplemental Register where the presumption
of the validity of the trademark, the registrant's ownership of the mark and his right to its
exclusive use are all absent.
Anent the assumption that the Bureau of Patent had considered other existing patents, it
is reiterated that since registration was only in the Supplemental Register, this did not vest
the registrant with the exclusive right to use the label nor did it give rise to the
presumption of the validity of the registration.
On the argument that no unfair competition was committed, the Shell Case is not on all
fours with the case at bar because:
(1) In Shell, the absence of intent to deceive was supported by the fact that the
respondent therein, before marketing its product, totally obliterated and erased
 the brands/mark of the different companies stenciled on the containers thereof, WHEREFORE, the petition is GRANTED. The decision of the Court of Appeals dated
except for a single isolated transaction. The respondent in the present case December 24, 1986 and the Resolution dated April 27,1987, are REVERSED and SET
made no similar effort. ASIDE and a new judgment is hereby rendered:
(2) In Shell, what was involved was a single isolated transaction. Of the many (1) Canceling the private respondent's Certificate of Register No. SR-6310 and
drums used, there was only one container where the Shell label was not erased, permanently enjoining the private respondent from using a label similar to that
while in the case at hand, the respondent admitted that it made use of several of the petitioners.
Del Monte bottles and without obliterating the embossed warning.
(2) Prohibiting the private respondent from using the empty bottles of the
(3) In Shell, the product of respondent was sold to dealers, not to ultimate petitioners as containers for its own products.
consumers. As a general rule, dealers are well acquainted with the manufacturer
from whom they make their purchases and since they are more experienced, (3) Ordering the private respondent to pay the petitioners nominal damages in
the amount of Pl,000.00, and the costs of the suit.
they cannot be so easily deceived like the inexperienced public. There may well
be similarities and imitations which deceive all, but generally the interests of the SO ORDERED.
dealers are not regarded with the same solicitude as are the interests of the
ordinary consumer. For it is the form in which the wares come to the final buyer Narvasa Gancayco, Griño-Aquino and Medialdea, JJ., concur.
that is of significance. 28
As Sunshine's label is an infringement of the Del Monte's trademark, law and equity call for
the cancellation of the private respondent's registration and withdrawal of all its products
bearing the questioned label from the market. With regard to the use of Del Monte's
bottle, the same constitutes unfair competition; hence, the respondent should be
permanently enjoined from the use of such bottles.
The court must rule, however, that the damage prayed for cannot be granted because the
petitioner has not presented evidence to prove the amount thereof. Section 23 of R.A. No.
166 provides:
Sec. 23. Actions and damages and injunction for infringement . — Any person
entitled to the exclusive use of a registered mark or trade name may recover
damages in a civil action from any person who infringes his rights, and the
measure of the damages suffered shall be either the reasonable profit which the
complaining party would have made, had the defendant not infringed his said
rights or the profit which the defendant actually made out of the infringement, or
in the event such measure of damages cannot be readily ascertained with
reasonable certainty the court may award as damages reasonable percentage
based upon the amount of gross sales of the defendant or the value of the
services in connection with which the mark or trade name was used in the
infringement of the rights of the complaining party. In cases where actual intent
to mislead the public or to defraud the complaining party shall be shown, in the
discretion of the court, the damages may be doubled.
The complaining party, upon proper showing may also be granted
injunction.1âwphi1
Fortunately for the petitioners, they may still find some small comfort in Art. 2222 of the
Civil Code, which provides:
Art. 2222. The court may award nominal damages in every obligation arising
from any source enumerated in Art. 1157, or in every case where any property
right has been invaded.
Accordingly, the Court can only award to the petitioners, as it hereby does award, nominal
damages in the amount of Pl,000.00.