1. DEL MONTE VS. CA
Whether or not Sunshine Sauce is guilty of unfair
G.R. No. 78325, January 25, 1990
Facts:
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, a treaty 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. On the other hand, petitioner Philippine
Packing Corporation (Philpack) is a domestic corporation
duly organized under the laws of the Philippines.
Sometime in 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 by the Philippine
Patent Office under the Supplemental Register. In 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. In 1972, Del Monte also obtained two registration
certificates for its trademark “DEL MONTE” and its logo.
Respondent Sunshine Sauce Manufacturing Industries was
issued a Certificate of Registration by the Bureau of
Domestic Trade in 1980 to engage in the manufacture,
packing, distribution and sale of various kinds of sauce,
identified by the logo Sunshine Fruit Catsup. The logo was
registered in the Supplemental Register in 1983. Sunshine
Sauce’s product itself was contained in various kinds of
bottles, including the Del Monte bottle, which it bought
from the junk shops for recycling.
Philpack received reports that Sunshine Sauce was using its
exclusively designed bottles and a logo confusingly similar
to Del Monte’s. Philpack warned Sunshine Sauce 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 Sunshine Sauce for
infringement of trademark and unfair competition.
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.
The RTC dismissed the complaint on the following grounds:
there were substantial differences between the logos or
trademarks of the parties
Sunshine Sauce became the owner of the said bottles upon
its purchase thereof from the junk yards
Del Monte and Philpack had failed to establish the its malice
or bad faith, which is an essential element of infringement
of trademark or unfair competition
The CA affirmed RTC’s decision in toto. Hence, the appeal.
Issue(s):
1.
competition.
2. Whether or not Sunshine Sauce is guilty of infringement
for having used the Del Monte bottle.
Ruling:
1. Yes
The SC compared the Del Monte and Sunshine Sauce’s
packaging. While it recognized several distinctions, it does
not agree with the conclusion that there was no
infringement or unfair competition.
According to the SC, side-by-side comparison is not the final
test of similarity. 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.
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.
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. The court therefore should be guided by its first
impression, 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.
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. 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. Well
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.
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.
2. No.
Sunshine Sauce 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 Also, in testing if there has been prior registration,
Supplemental Register. Registration only in the registration in the supplemental register isn’t what the law
Supplemental Register means absence of the following contemplates.
presumptions: validity of the trademark, the registrant’s
ownership of the mark and his right to its exclusive use.
2. Amigo Manufacturing vs Cluett Peabody
REGISTRATION IN THE REGISTRATION IN THE
PRINCIPAL REGISTER SUPLLEMENTAL REGISTER Facts
gives rise to a presumption No such presumption Cluett Peabody Co., Inc. (a New York corporation)
of the validity of the filed a case against Amigo Manufacturing Inc. (a Philippine
registration, the corporation) for cancellation of trademark, claiming
registrant’s ownership of exclusive ownership (as successor in interest of Great
the mark and his right to American Knitting Mills, Inc.) of the following trademark
the exclusive use thereof and devices, as used on men's socks:
o a) GOLD TOE; b) DEVICE, representation of
limited to the actual owner Not limited to the actual a sock and magnifying glass on the toe of
of the trademark owner of the trademark a sock; c) DEVICE, consisting of a 'plurality
Constructive notice of the Merely proof of actual use of gold colored lines arranged in parallel
registrant’s claim of of the trademark and relation within a triangular area of toe of
ownership notice that the registrant the stocking and spread from each other
has used or appropriated it by lines of contrasting color of the major
part of the stocking' ; and d) LINENIZED.
The issue of ownership Not subject to opposition [petitioner's] Amigo Manufacturing Inc. trademark and
may be contested through although it may be device 'GOLD TOP, Linenized for Extra Wear' has the
opposition or interference cancelled after the dominant color 'white' at the center and a 'blackish brown'
proceedings or, after issuance background with a magnified design of the sock's garter,
registration, in a petition and is labeled 'Amigo Manufacturing Inc.
for cancellation  Patent Office (Decision): the application of the rule
basis for an action for Not a basis of idem sonans and the existence of a confusing
infringement similarity in appearance between two trademarks.
in applications for N0t so in applications for  Court of Appeals:
registration in the Principal registrations on the o “there is hardly any variance in the
Register, publication of the Supplemental Register appearance of the marks 'GOLD TOP' and
application is necessary 'GOLD TOE' since both show a
representation of a man's foot wearing a
sock, and the marks are printed in
It can be inferred from the foregoing that although Del
identical lettering.”
Monte has actual use of the bottle’s configuration, the o Section 4(d) of R.A. No. 166 declares to be
petitioners cannot claim exclusive use thereof because it
unregistrable, 'a mark which consists o[r]
has not been registered in the Principal Register. However,
comprises a mark or trademark which so
we find that Sunshine, despite the many choices available
resembles a mark or tradename registered
to it and notwithstanding that the caution “Del Monte
in the Philippines of tradename previously
Corporation, Not to be Refilled” was embossed on the
used in the Philippines by another and not
bottle, still opted to use the petitioners’ bottle to market a
abandoned, as to be likely, when applied
product which Philpack also produces. This clearly shows
to or used in connection with the goods,
the private respondent’s bad faith and its intention to
business or services of the applicant, to
capitalize on the latter’s reputation and goodwill and pass
cause confusion or mistake or to deceive
off its own product as that of Del Monte.
the purchasers.
There is a distinction between infringement of trademark o [Petitioner]'s mark is a combination of the
and unfair competition: different registered marks owned by
1. Infringement is the unauthorized use of a trademark [respondent].
while unfair competition is the passing off of one’s goods as o [petitioner]'s mark is only registered with
that of another the Supplemental Registry which gives no
right of exclusivity to the owner and
cannot overturn the presumption of
2. In infringement, fraudulent intent is unnecessary while it
validity and exclusiv[ity] given to a
is otherwise for unfair competition
registered mark.
 Hence this petition.
3. In infringement, prior registration of the trademark is
needed whereas in unfair competition, registration is not ISSUE: 1. Whether or not the Court of Appeals overlooked
necessary. that petitioner's trademark was used in commerce in the
Philippines earlier than respondent's actual use of its
In assessing the two trademarks, side-by-side comparison is
trademarks, hence the Court of Appeals erred in affirming
not the final test of similarity because average buyers don’t
make minute scrutiny oflabel details. the Decision of the Director of Patents dated September 3,
1990
2. Whether or not the Court of Appeals erred in affirming
the findings of the Director of Patents that petitioner's
trademark [was] confusingly similar to respondent's
trademarks?
Ruling:
1. No. Petitioner claims that it started the actual use of the
trademark "Gold Top and Device" in September 1956, while
respondent began using the trademark "Gold Toe" only on
May 15, 1962. It contends that the claim of respondent that
it had been using the "Gold Toe" trademark at an earlier
date was not substantiated. The latter's witnesses
supposedly contradicted themselves as to the date of first
actual use of their trademark, coming up with different
dates such as 1952, 1947 and 1938.
We do not agree. Based on the evidence presented, this
Court concurs in the findings of the Bureau of Patents that
respondent had actually used the trademark and the
devices in question prior to petitioner's use of its own.
During the hearing at the Bureau of Patents, respondent
presented Bureau registrations indicating the dates of first
use in the Philippines of the trademark and the devices as
follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the
Representation of a Sock and a Magnifying Glass; c)
January 30, 1932, the Gold Toe Representation; and d)
February 28, 1952, "Linenized."
The registration of the above marks in favor of respondent
constitutes prima facie evidence, which petitioner failed to
overturn satisfactorily, of respondent's ownership of those
marks, the dates of appropriation and the validity of other
pertinent facts stated therein.
Moreover, the validity of the Certificates of Registration
was not questioned. Neither did petitioner present any
evidence to indicate that they were fraudulently issued.
Consequently, the claimed dates of respondent's first use
of the marks are presumed valid. Clearly, they were ahead
of petitioner's claimed date of first use of "Gold Top and
Device" in 1958.
2. No
The Bureau of Patents, however, did not rely on the idem
sonans test alone in arriving at its conclusion. The Bureau
considered the drawings and the labels, the appearance of
the labels, the lettering, and the representation of a man's
foot wearing a sock. Obviously, its conclusion is based on
the totality of the similarities between the parties'
trademarks and not on their sounds alone.
 Resort to either the Dominancy Test or the Holistic
Test shows that colorable imitation exists between
respondent's "Gold Toe" and petitioner's "Gold
Top."
o Petitioner’s mark shows that it definitely
has a lot of similarities and in fact looks
like a combination of the trademark and
devices that respondent has already
registered; namely, "Gold Toe," the
representation of a sock with a magnifying
glass, the "Gold Toe" representation and
"linenized."
 Though there are differences in the set of marks,
the similarities, however, are of such degree that
the overall impression given is that the two brands
of socks are deceptively the same or similar to each
other.
 their dominant features are gold checkered lines
against a predominantly black background and a
representation of a sock with a magnifying glass. In
addition, both products use the same type of
lettering.
 Both also include a representation of a man's foot
wearing a sock and the word "linenized" with
arrows printed on the label.
 the names of the brands are similar -- "Gold Top"
and "Gold Toe."
 the overall impression created is that the two
products are deceptively and confusingly similar to
each other. Clearly, petitioner violated the
applicable trademark provisions during that time.
3. Birkenstock vs PH shoe expo
FACTS:
Petitioner, a corporation duly organized and
existing under the laws of Germany applied for various
trademark registrations before the Intellectual Property
Office (IPO). However, the applications were suspended in
view of the existing registration of the mark
“BIRKENSTOCK AND DEVICE” under Registration No. 56334
dated October 21, 1993 in the name of Shoe Town
International and Industrial Corporation, the predecessor-
in-interest of respondent Philippine Shoe Expo Marketing
Corporation.
On May 27, 1997, petitioner filed a petition
(Cancellation Case) for cancellation of Registration No.
564334 on the ground that it is the lawful and rightful
owner of the Birkenstock marks. During its pendency,
however, respondent and/or it 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, thereby resulting the cancellation
of such mark. Accordingly, the cancellation case was
dismissed for being moot and academic thereby paving the
way for the publication of the subject applications.
In response, respondent filed with the Bureau of
Legal Affairs (BLA) of the IPO three separate verified
notices of opposition to the subject applications docketed
as Inter Partes Cases claiming, among others, it, together
with its predecessor-in-interest, has been using the
Birkenstock marks in the Philippines for more than 16 years
through the mark “BIRKENSTOCK AND DEVICE”. In its
Decision, the BLA of the IPO sustained respondent’s
opposition, thus ordering the rejection of the subject
applications. Aggrieved, petitioner appealed to the IPO
Director General whereby in its decision, the latter reversed
and set aside the ruling of the BLA thus allowing the
registration of the subject applications.
 Finding the IPO Director General’s reversal of the
BLA unacceptable, respondent filed a petition for review
with the Court of Appeals. In its decision dated June 25,
2010, the CA reversed and set aside the ruling of the IPO
Director General and reinstated that of the BLA. The
petitioner filed a Motion for Reconsideration but was
denied by the CA. Hence , this petition to the Supreme
Court.
ISSUE: Whether or not the subject marks should be allowed
registration in the name of the petitioner?
RULING:
Yes. Under Section 12 of Republic Act 166, it provides that,
“Each certificate of registration shall remain in force for
twenty years: Provided, that the registration 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.”
In the case at bar, 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”. 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. Such presumption, just like
the presumptive regularity in the performance of official
functions, is rebuttable and must give way to evidence to
the contrary. Besides, petitioner has duly established its
true and lawful ownership of the mark “BIRKENSTOCK”. It
submitted evidence relating to the origin and history of
“BIRKENSTOCK” and it use in commerce long before
respondent was able to register the same here in the
Philippines. 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.
4. Fredco Manufacturing vs President Fellows
Facts:
Petitioner Fredco Manufacturing filed a petition to cancel
the registration of respondent’s mark ‘Harvard Veritas
Shield Symbol’ used in products such as bags and t-shirts.
Fredco alleges that the mark ‘Harvard’ was first used and
registered by New York Garments, a domestic corporation
and its predecessor-in-interest, used in its clothing articles.
Respondent Harvard University on the other hand, alleges
that it is the lawful owner of the name and mark in
numerous countries worldwide including in the Philippines
which was used in commerce as 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 was not established in 1936, or in the U.S.A.
as indicated by Fredco in its oblong logo.
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 latter’s consent.
5. Ang vs Teodeoro

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
Issues: (1) Whether or not ‘ANG TIBAY’ is a descriptive term
not registrable.
(2) Whether or not the trademark ‘ANG TIBAY’ has acquired
a secondary meaning.
(3) Whether or not there is trademark infringement and/or
unfair competition between unrelated goods.
Ruling:
(1) NO. The phrase “Ang Tibay” is an exclamation denoting
administration of strength or durability. For instance, one
who tries hard but fails to break an object exclaims, “Ang
tibay!” (How strong!”) The phrase “ang tibay” is never used
adjectively to define or describe an object. One does not
say, “ang tibay sapatos” or “sapatos ang tibay” is never
used adjectively to define or describe an object. One does
not say, “ang tibay sapatos” or “sapatos ang tibay” to
mean “durable shoes,” but “matibay na sapatos” or
“sapatos na matibay.” From all of this we deduce that “Ang
Tibay” is not a descriptive term within the meaning of the
Trade-Mark Law but rather a fanciful or coined phrase
which may properly and legally be appropriated as a
trademark or tradename. In this connection we do not fail
to note that when the petitioner herself took the trouble
and expense of securing the registration of these same
words as a trademark of her products she or her attorney
as well as the Director of Commerce was undoubtedly
convinced that said words (Ang Tibay) were not a
descriptive term and hence could be legally used and validly
registered as a trademark.
(2) NO. In view of the conclusion we have reached upon the
first assignment of error, it is unnecessary to apply here the
doctrine of “secondary meaning” in trade-mark parlance.
This doctrine is to the effect that a word or phrase originally
incapable of exclusive appropriation with reference to an
article of the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and
so exclusively by one producer with reference to his article
that, in that trade and to that branch of the purchasing
public, the word or phrase has come to mean that the
article was his product. We have said that the phrase “Ang
Tibay,” being neither geographic nor descriptive, was
originally capable of exclusive appropriation as a trade-
mark. But were it not so, the application of the doctrine of
secondary meaning made by the Court of Appeals could
nevertheless be fully sustained because, in any event, by
respondent’s long and exclusive use of said phrase with
reference to his products and his business, it has acquired a
proprietary connotation.
(3) YES. In the present state of development of the law on
Trade-Marks, Unfair Competition, and Unfair Trading, the
test employed by the courts to determine whether
noncompeting goods are or are not of the same class is
confusion as to the origin of the goods of the second user.
Although two noncompeting articles may be classified
under two 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 trade-marks 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 the first user made
the second user’s goods. The Court of Appeals found in this
case that by uninterrupted and exclusive use since 1910 of
respondent’s registered trade-mark on slippers and shoes
manufactured by him, it has come to indicate the origin and
ownership of said goods. It is certainly not farfetched to
surmise that the selection by petitioner of the same trade-
mark for pants and shirts was motivated by a desire to get a
free ride on the reputation and selling power it has
acquired at the hands of the respondent.
Sec.123.1d provides that a mark that is similar to a
registered mark or a mark with an earlier filing, and which is
likely to cause confusion on the part of the public cannot be
registered with the IPO. The concept of the confusion could
refer to the confusion of goods or confusion of business.
Confusion, in both forms, is only possible when the goods
or services covered by allegedly similar marks are identical,
similar, or related in some manner.

5. Mang Inasal vs IFP manufacturing To fall under the ambit of Sec. 123.1d and be
regarded as likely to deceive or cause confusion, a
FACTS:
prospective mark must meet two minimum conditions:
IFP Manufacturing Corp. filed an application for the
1. The prospective mark must nearly resemble or
registration of the mark, “OK Hotdog Inasal Cheese Hotdog
be similar to an earlier mark; and
Flavor Mark”, in connection with goods under Class 30 of
a. The OK Hotdog Inasal Mark is Similar
the Nice Classification. It was intended to be used on one of
to the Mang Inasal Mark. Similarity
its curl snack products. However, the said application was
does not mean absolute identity of
opposed by Mang Inasal, that owned the mark, “Mang
marks. It is enough that a prospective
Inasal, Home of Real Pinoy Style Barbecue and Device”, for
mark be a colorable imitation of the
services under Class 43. It has been registered with the IPO
former. Colorable imitation denotes
in 2006 and has been used by petitioner since 2003.
such likeness in form, content, words,
Petitioner contended that the registration of OK sound, meaning, special arrangement
Hotdog is prohibited under Sec. 123.1d. The OK Hotdog and or general appearance of one mark
Mang Inasal marks share similarities, as to their appearance with respect to another as would
and to the goods or services they represent, thus likely mislead an average buyer in the
suggesting a false connection or association between the ordinary course of purchase.
said marks, and would likely cause confusion to the public. b. In determining whether there is
similarity or colorable imitation,
1. The dominant element – the word “Inasal”, is
authorities may use two tests:
printed and stylized in the exact manner.
i. Dominancy Test focuses on
2. The goods that the OK Hotdog Inasal mark is
the similarity of the prevalent
intended to identify are closely related to the
features of the competing
services represented by the Mang Inasal mark.
trademark which might cause
The IPO-BLA dismissed petitioner’s opposition.
confusion or deception. If the
IPO-DG affirmed such dismissal.
competing trademark
1. There are other words found in the OK Hotdog contains the main, essential
Inasal mark that are not present in the Mang or dominant features of
Inasal mark. another, and confusion or
2. The underlying goods and services are not deception is likely to result,
closely related. infringement takes place. The
CA denied the appeal of the petitioner. MR was question is whether the use
also denied. of the marks involved is likely

ISSUE: to cause confusion or mistake

in the mind of the public or
W/N the trademark may be registered? NO.
deceive purchasers.
HELD: ii. Holistic Test requires that the
entirety of the marks in
question be considered in
 resolving confusing similarity. the nature of the package,
The trademarks in their wrapper or container;
entirety as they appear in iv. The nature and cost of the
their respective labels or articles;
hang tags must also be v. The descriptive properties,
considered in relation to the physical attributes or
goods to which they are essential characteristics with
attached. reference to their form,
iii. Recent case law seems to composition, texture or
indicate an overwhelming quality;
judicial preference to vi. The purpose of the goods;
applying the dominancy test. vii. Whether the article is bought
iv. In the mark, the word for immediate consumption,
“INASAL” is dominant and that is, day-to-day household
the way it is stylized is similar items;
to Mang Inasal’s. It is a viii. The fields of manufacture;
descriptive term that cannot ix. The conditions under which
be appropriated, but the way the article is usually
it is stylized is not. Thus, purchased; and
Mang Inasal can claim x. The channels of trade
exclusive use of such through which the goods
element. Even if there are flow, how they are
differences, the average distributed, marketed,
buyer would pay more displayed, and sold.
attention to the prominent
A very important circumstance is whether there exists a
feature compared to the likelihood that an appreciable number of ordinarily prudent
peripheral details. purchasers will be misled, or simply confused, as to the
source of the goods in question. The simulation, in order to
2. The prospective mark must pertain to goods be objectionable, must be such as appears likely to mislead
or services that are either identical, similar or the ordinary intelligent buyer who has a need to supply and
is familiar with the article that he seeks to purchase.
related to the goods or services represented
by the earlier mark. The two are related as it may lead to a confusion of
business.
a. Related goods and services are those
Petitioner uses the Mang Inasal mark in connection with its
that, though non-identical or non-
restaurant services that is particularly known for its chicken
similar, are so logically connected to inasal.
each other that they may reasonably The mark has been used for petitioner’s business since
be assumed to originate from one 2003.
manufacturer or from economically- Respondent seeks to market under the OK Hotdog Inasal
linked manufacturers. In determining mark curl snack products which it publicizes as having a
cheese hotdog inasal flavor.
whether goods or services are related,
It is the fact that the underlying goods and servicesthat
several factors may be recognized:
involve inasal and inasal-flavored products ultimately fixes
i. The business (and its the relations between such goods and services. Thus, an
location) to which the goods average buyer is likely to be confused as to the true source
of such curls.
belong;
ii. The class of product to which 6. Mcdonald’s corp vs LC big mak burger

the goods belong; FACTS:

iii. The product’s quality, Petitioner McDonald’s Corporation is a corporation

quantity, or size, including organized under the laws of Delaware, United States.
McDonald’s operates a global chain of fast-food
restaurants. McDonald’s own a family of marks including
the “Big Mac” mark for its double-decker hamburger
sandwich.
McDonald’s registered this trademark with the
United States Trademark Registry on 16 October 1979.
Based on this Home Registration, McDonald’s applied for
the registration of the same mark in the Principal Register
of then then Philippine Bureau of Patents, Trademarks and
Technology (PBPTT) – now the Intellectual Property Office
(IPO).
Pending approval of its application, McDonald’s introduced
its “Big Mac” hamburger sandwiches in the Philippine
market in September 1981. On 18 July 1985, the PBPTT
allowed registration of the “Big Mac” mark in the Philippine
Register based on its Home Registration in the United
States. From 1982 to 1990, McDonald’s spent P10.5 million
in advertisement for “Big Mac” hamburger sandwiches
alone.
Respondent L.C. Big Mak Burger, Inc. is a domestic
corporation which operates fast-food outlets and snack
vans in Metro Manila and nearby provinces. Its menu
includes hamburger sandwiches and other food items.
On 21 October 1988, respondent corporation applied with
the PBPTT for the registration of the “Big Mak” mark for its
hamburger sandwiches.
McDonald’s opposed respondent corporation’s application
on the ground that “Big Mak” was a colorable imitation of
its registered “Big Mac” mark for the same food products.
ISSUES:
1. Is the respondent guilty of trademark infringement and
unfair competition?
2. Is the “Big Mac” mark valid and does McDonald’s have
rightful ownership to the same?
RULING:
1. YES.
Trademark Infringement
RA 166 defines trademark infringement as “any person who
(1) 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 use is likely to
CAUSE CONFUSION or otherwise mistake or to deceive
purchasers or others as to the source or origin of such
goods or services or identity of such business; or (2)
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.”
Clearly, there is cause for confusion in the case at bar. By
using the “Big Mak” mark on the same goods, i.e.
hamburger sandwiches, that petitioners’ “Big Mac” mark is
used, they have unjustly created the impression that its
business is approved and sponsored by, or affiliated with
plaintiffs.
Furthermore, using the dominancy test (rather than the
holistic test), wherein the dominant features in the
competing marks are considered, Big Mak failed to show
that there could be no confusion. The Court found that
respondents’ use of the “Big Mak” mark results in
likelihood of confusion. First, “Big Mak” sounds exactly the
same as “Big Mac.” Second, the first word in “Big Mak” is
exactly the same as the first word in “Big Mac.” Third, the
first two letters in “Mak” are the same as the first two
letters in “Mac.” Fourth, the last letter in “Mak” while
a “k” sounds the same as “c” when the word “Mak” is
pronounced. Fifth, in Filipino, the letter “k” replaces “c” in
spelling, thus “Caloocan” is spelled “Kalookan.” In short,
aurally, the two marks are the same.
Unfair Competition
With regard to unfair competition, RA 166, Section 29
defines the same as any person who will 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.
Unfair competition is broader than trademark infringement
and includes passing off goods with or without trademark
infringement. Trademark infringement is a form of unfair
competition. Trademark infringement constitutes unfair
competition when there is not merely likelihood of
confusion, but also actual or probable deception on the
public because of the general appearance of the goods.
L.C. Big Mak tried to pass off their goods as though it were
connected to “Big Mac.” The mark “B[ig] M[ac]” is used by
plaintiff McDonald’s to identify its double decker
hamburger sandwich. The packaging material is
a styrofoam box with the McDonald’s logo and trademark
in red with block capital letters printed on it. All letters of
the “B[ig] M[ac]” mark are also in red and block capital
letters. On the other hand, defendants’ “B[ig] M[ak]” script
print is in orange with only the letter “B”and “M” being
capitalized and the packaging material is plastic wrapper. x
x x x Further, plaintiffs’logo and mascot are the
umbrella “M” and “Ronald McDonald’s,” respectively,
compared to the mascot of defendant Corporation which is
a chubby boy called “Macky” displayed or printed between
the words “Big” and “Mak.”(Emphasis supplied)

Respondents point to these dissimilarities as proof that

they did not give their hamburgers the general appearance
of petitioners’ “Big Mac” hamburgers.

The dissimilarities in the packaging are minor compared to

the stark similarities in the words that give
respondents’ “Big Mak” hamburgers the general
appearance of petitioners’ “Big Mac”hamburgers. Section
29(a) expressly provides that the similarity in the general
appearance of the goods may be in the “devices
or words” used on the wrappings. Respondents have
applied on their plastic wrappers and bags almost the same
words that petitioners use on their styrofoam box. What
attracts the attention of the buying public are the
words “Big Mak” which are almost the same, aurally and
visually, as the words “Big Mac.” The dissimilarities in the
material and other devices are insignificant compared to
the glaring similarity in the words used in the wrappings.

YES.

A mark is valid if it is “distinctive” and thus not barred from

registration under Section 4 of RA 166. However, once
registered, not only the mark’s validity but also the
registrant’s ownership of the mark is prima facie presumed.

Respondents contend that of the two words in the “Big

Mac” mark, it is only the word “Mac” that is valid because
the word “Big” is generic and descriptive (proscribed under
Section 4[e]), and thus “incapable of exclusive
appropriation.”

The contention has no merit. The “Big Mac” mark, which

should be treated in its entirety and not dissected word for
word,is neither generic nor descriptive.