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1. BERRIS AGRICULTURAL CO., INC., Petitioner, vs. NORVY ABYADANG, it filed for its registration with the IPO as shown by its DAU. The DAU has the presumption of
Respondent. regularity, and the burden of proof to overcome the presumption of authenticity and due execution
lies on the party contesting it. The question of whether or not Berris violated P.D. No. 1144,
because it sold its product without prior registration with the FPA, is a distinct and separate matter
G.R. No. 183404, SECOND DIVISION, October 13, 2010, NACHURA, J.: from the jurisdiction and concern of the IPO. Thus, even a determination of violation by Berris of
FACTS: P.D. No. 1144 would not controvert the fact that it did submit evidence that it had used the mark
Norvy A. Abyadang, proprietor of NS Northern Organic Fertilizer, filed with the Intellectual Property “D-10 80 WP” earlier than its FPA registration in 2004. Therefore, Berris, as prior user and prior
Office (IPO) a trademark application for the mark “NS D-10 PLUS” for use in connection with registrant, is the owner of the mark “D-10 80 WP.” As such, Berris has in its favor the rights
Fungicide (Class 5) with active ingredient 80% Mancozeb. The application was given due course conferred by Section 147 of R.A. No. 8293.
and was published in the IPO e-Gazette on July 28, 2005. Berris Agricultural Co. filed with the IPO In determining similarity and likelihood of confusion, jurisprudence has developed tests—the
Bureau of Legal Affairs (IPO-BLA) a verified Notice of Opposition allegedly because “NS D-10 Dominancy Test and the Holistic or Totality Test.
PLUS” is similar and/or confusingly similar to its registered mark “D-10 80 WP” also used for Comparing Berris’ mark “D-10 80 WP” with Abyadang’s mark “NS D-10 PLUS,” as appearing on
Fungicide (Class 5) with active ingredient 80% Mancozeb. their respective packages, one cannot but notice that both have a common component which is
Director Estrellita Beltran-Abelardo sustained the opposition, holding that the marks are “D-10.” On Berris’ package, the “D-10” is written with a bigger font than the “80 WP.” Admittedly,
confusingly similar. The trademark application was then rejected. Director Abelardo denied the the “D-10” is the dominant feature of the mark. The “D-10,” being at the beginning of the mark, is
motion for reconsideration. Abyadang appealed to the Office of the Director General, Intellectual what is most remembered of it. Applying the Dominancy Test, it cannot be gainsaid that
Property Philippines (IPPDG). Director General Adrian Cristobal affirmed the decision of the Abyadang’s “NS D-10 PLUS” is similar to Berris’ “D-10 80 WP,” that confusion or mistake is more
Director. Abyadang filed a petition for review before the CA. The CA reversed the IPPDG decision, likely to occur. Both depictions of “D-10,” as found in both marks, are similar in size, such that this
holding that the marks are not confusingly similar, and that [herein petitioner] failed to establish its portion is what catches the eye of the purchaser. Undeniably, the likelihood of confusion is present.
ownership of the mark “D-10 80 WP”. This likelihood of confusion and mistake is made more manifest when the Holistic Test is applied,
ISSUE: taking into consideration the packaging, for both use the same type of material (foil type) and have
Whether or not there exists confusing similarity between Petitioner’s and Respondent’s marks. identical color schemes (red, green, and white); and the marks are both predominantly red in color,
RULING: with the same phrase “BROAD SPECTRUM FUNGICIDE” written underneath. Considering these
The basic law on trademark, infringement, and unfair competition is Republic Act (R.A.) No. 8293 striking similarities, predominantly the “D-10,” the buyers of both products, mainly farmers, may
(Intellectual Property Code of the Philippines). Prior to its effectivity, the applicable law was RA be misled into thinking that “NS D-10 PLUS” could be an upgraded formulation of the “D-10 80
No 166. R.A. No. 8293 did not expressly repeal in its entirety R.A. No. 166, but merely provided WP.
in Section 239 that Acts and parts of Acts inconsistent with it were repealed. Berris is the owner of the mark “D-10 80 WP,” inclusive of its dominant feature “D-10,” as
A trademark, being a special property, is afforded protection by law. But for one to enjoy this legal established by its prior use, and prior registration with the IPO. Therefore, Berris properly opposed
protection, legal protection ownership of the trademark should rightly be established. The and the IPO correctly rejected Abyadang’s application for registration of the mark “NS D-10 PLUS.”
ownership of a trademark is acquired by its registration and its actual use by the manufacturer or -Arra
distributor of the goods made available to the purchasing public. Section 122 of R.A. No. 8293
provides that the rights in a mark shall be acquired by means of its valid registration with the IPO.
A certificate of registration of a mark, once issued, constitutes prima facie evidence of the validity 2. DERMALINE, INC., Petitioner, vs.MYRA PHARMACEUTICALS, INC. Respondent.
of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right G.R. No. 190065, SECOND DIVISION, August 16, 2010, NACHURA,J.
to use the same in connection with the goods or services and those that are related thereto
specified in the certificate. R.A. No. 8293, however, requires the applicant for registration or the When one applies for the registration of a trademark or label which is almost the same or that very
registrant to file a declaration of actual use (DAU) of the mark, with evidence to that effect, within closely resembles one already used and registered by another, the application should be rejected
three (3) years from the filing of the application for registration; otherwise, the application shall be and dismissed outright, even without any opposition on the part of the owner and user of a
refused or the mark shall be removed from the register. In other words, the prima facie previously registered label or trademark. This is intended not only to avoid confusion on the part
presumption brought about by the registration of a mark may be challenged and overcome, in an of the public, but also to protect an already used and registered trademark and an established
appropriate action, by proof of the nullity of the registration or of non-use of the mark, except when goodwill.
excused. Moreover, the presumption may likewise be defeated by evidence of prior use by another
person. This is because a trademark is a creation of use and belongs to one who first used it in FACTS:
trade or commerce.
One may make advertisements, issue circulars, distribute price lists on certain goods, but these On October 21, 2006, petitioner Dermaline filed before the IPO an application for registration of
alone will not inure to the claim of ownership of the mark until the goods bearing the mark are sold the trademark “DERMALINE DERMALINE, INC.” The application was published for opposition in
to the public in the market. Accordingly, receipts, sales invoices, and testimonies of witnesses as the IPO E-Gazette.
customers, or orders of buyers, best prove the actual use of a mark in trade and commerce during
a certain period of time. Respondent Myra filed a Verified Opposition alleging that the trademark sought to be registered
Berris, as oppositor, presented the following evidence: its trademark application dated November resembles its trademark “DERMALIN” and will likely cause confusion, mistake and deception to
2002; its IPO certificate of registration dated October 2004; a photocopy of its packaging bearing the purchasing public. It further alleged that Dermaline’s use and registration of its applied
its mark; sales invoices and its notarized DAU. trademark will diminish the distinctiveness and dilute the goodwill of Myra’s "DERMALIN,"
Abyadang’s proofs consisted of the following: photocopy of the packaging; affidavit stating that NS registered with the IPO way back July 8, 1986, renewed for 10 years on July 8, 2006.
D-10 PLUS was his own creation (N- Norvy, S- Soledad (his wife), D – first letter of his birth month,
10 – for October, 10th month, PLUS – to connote superior quality). Abyadang argued that he could Myra claimed that the dominant feature is the term “DERMALINE”, which is practically identical.
not have copied Berris’ mark because he registered with the Fertilizer and Pesticide Authority With its own “DERMALIN”, more particularly the first 8 letters of the marks. The pronunciation was
ahead of Berris. also identical; both have 3 syllables which each syllable identical in sound. Myra also pointed out
that Dermaline applied for the same mark and was already refused registration by the IPO. Myra
added that even if the subject application was under Classification 44 for various skin treatments, Further, Dermaline’s stance that its product belongs to a separate and different classification from
it could still be connected to the "DERMALIN" mark under Classification 5 for pharmaceutical Myra’s products with the registered trademark does not eradicate the possibility of mistake on the
products, since ultimately these goods are very closely related. part of the purchasing public to associate the former with the latter, especially considering that
both classifications pertain to treatments for the skin.
Dermaline counters that a simple comparison of the trademarks would show that they have entirely - Alit
different features and. Distinctive presentation, thus it cannot result in confusion, mistake or 3. ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC., petitioner,
deception on the part of the purchasing public. It also contends that a comparison of the words is vs. RENAUD COINTREAU & CIE and LE CORDON BLEU INT’L., B.V., respondents.
not the only determinant, but their entirety must be considered in relation to the goods to which G.R. No. 185830. SECOND DIVISION. June 5, 2013. PERLAS-BERNABE, J.
they are attached, including the other features appearing in both labels; and that there were glaring Facts:
dissimilarities between the two trademarks, such that its trademark speaks for itself. On June 21, 1990, Cointreau, a partnership registered under the laws of France, filed before the
(now defunct) Bureau of Patents, Trademarks, and Technology Transfer (BPTTT) of the
On April 10, 2008, the IPO-bureau of Legal Affairs rendered a decision sustaining Myra’s Department of Trade and Industry a trademark application for the mark “LE CORDON BLEU &
opposition. Dermaline’s MR was denied. Its appeal to the Office of the Director General of the IPO DEVICE” for goods falling under classes 8, 9, 16, 21, 24, 25, 29, and 30 of the International
was likewise dismissed. Hence this petition. Classification of Goods and Services for the Purposes of Registrations of Marks (“Nice
Classification”) (subject mark). The application was filed pursuant to Section 37 of Republic Act
ISSUE: No. 166, as amended (R.A. No. 166), on the basis of Home Registration No. 1,390,912, issued
on November 25, 1986 in France. Bearing Serial No. 72264, such application was published for
Whether the CA erred in upholding the IPO’s rejection of Dermaline’s application for registration opposition in the March-April 1993 issue of the BPTTT Gazette and released for circulation on
of trademark. (NO) May 31, 1993.
On July 23, 1993, petitioner Ecole De Cuisine Manille, Inc. (Ecole) filed an opposition to the
RULING: subject application, averring that: (a) it is the owner of the mark “LE CORDON BLEU, ECOLE
DE CUISINE MANILLE,” which it has been using since 1948 in cooking and other culinary
A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any combination activities, including in its restaurant business; and (b) it has earned immense and invaluable
thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish goodwill such that Cointreau’s use of the subject mark will actually create confusion, mistake,
them from those manufactured, sold, or dealt by others. Inarguably, it is an intellectual property and deception to the buying public as to the origin and sponsorship of the goods, and cause great
deserving protection by law. In trademark controversies, each case must be scrutinized according and irreparable injury and damage to Ecole’s business reputation and goodwill as a senior user
to its peculiar circumstances, such that jurisprudential precedents should only be made to apply if of the same
they are specifically in point. On October 7, 1993, Cointreau filed its answer claiming to be the true and lawful owner of the
subject mark. It averred that: (a) it has filed applications for the subject mark’s registration in
As Myra correctly posits, it has the right under Section 147 of R.A. No. 8293 to prevent third parties various jurisdictions, including the Philippines; (b) Le Cordon Bleu is a culinary school of
from using a trademark, or similar signs or containers for goods or services, without its consent, worldwide acclaim which was established in Paris, France in 1895; (c) Le Cordon Bleu was the
identical or similar to its registered trademark, where such use would result in a likelihood of first cooking school to have set the standard for the teaching of classical French cuisine and
confusion. In determining confusion, case law has developed two (2) tests, the Dominancy Test pastry making; and (d) it has trained students from more than eighty (80) nationalities, including
and the Holistic or Totality Test. Ecole’s directress, Ms. Lourdes L. Dayrit. Thus, Cointreau concluded that Ecole’s claim of being
the exclusive owner of the subject mark is a fraudulent misrepresentation.6
The Dominancy Test focuses on the similarity of the prevalent features of the competing During the pendency of the proceedings, Cointreau was issued Certificates of Registration Nos.
trademarks that might cause confusion or deception. Duplication or imitation is not even required; 60631 and 54352 for the marks “CORDON BLEU & DEVICE” and “LE CORDON BLEU PARIS
neither is it necessary that the label of the applied mark for registration should suggest an effort 1895 & DEVICE” for goods and services under classes 21 and 41 of the Nice
to imitate. Relative to the question on confusion of marks and trade names, jurisprudence noted Classification, respectively.
two (2) types of confusion, viz: (1) confusion of goods (product confusion), where the ordinarily The Bureau of Legal Affairs (BLA) of the IPO sustained Ecole’s opposition to the subject mark,
prudent purchaser would be induced to purchase one product in the belief that he was purchasing necessarily resulting in the rejection of Cointreau’s application. It emphasized that the
the other; and (2) confusion of business (source or origin confusion), where, although the goods adoption and use of trademark must be in commerce in the Philippines and not abroad.
of the parties are different, the product, the mark of which registration is applied for by one party, On appeal, the IPO Director General set aside the BLA’s decision, thus, granting Cointreau’s
is such as might reasonably be assumed to originate with the registrant of an earlier product, and appeal and allowing the registration of the subject mark. He held that while Section 2 of R.A. No.
the public would then be deceived either into that belief or into the belief that there is some 166 requires actual use of the subject mark in commerce in the Philippines for at least two (2)
connection between the two parties, though inexistent. months before the filing date of the application, only the owner thereof has the right to register the
same, explaining that the user of a mark in the Philippines is not ipso facto its owner. Moreover,
Using this test, the IPO declared that both confusion of goods and service and confusion of Section 2-A of the same law does not require actual use in the Philippines to be able to acquire
business or of origin were apparent in both trademarks. While it is true that the two marks are ownership of a mark. The CA affirmed the IPO Director General’s Decision in toto. Hence, this
presented differently, they are almost spelled in the same way, except for Dermaline’s mark which petition.
ends with the letter "E," and they are pronounced practically in the same manner in three (3) Ecole argues that it is the rightful owner of the subject mark, considering that it was the first entity
syllables, with the ending letter "E" in Dermaline’s mark pronounced silently. Thus, when an that used the same in the Philippines. Hence, it is the one entitled to its registration and not
ordinary purchaser, for example, hears an advertisement of Dermaline’s applied trademark over Cointreau.
the radio, chances are he will associate it with Myra’s. When one applies for the registration of a
trademark or label which is almost the same or that very closely resembles one already used and Issues:
registered by another, the application should be rejected and dismissed outright, even without any
opposition on the part of the owner and user of a previously registered label or trademark.
Whether the CA was correct in upholding the IPO Director General’s ruling that Cointreau is the
true and lawful owner of the subject mark and thus, entitled to have the same registered under 4. BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly BIRKENSTOCK
its name. (Yes) ORTHOPAEDIE GMBH), Petitioner, vs. PHILIPPINE SHOE EXPO MARKETING
CORPORATION, Respondent.
(Whether or not the first entity that used the trademark in the Philippines has better right over the FACTS: Petitioner is a corporation duly organized and existing under German law. It applied for
mark) various trademark registrations before the IPO, which are as follows: (1) “BIRKENSTOCK”, (2)
BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE COMPRISING OF ROUND COMPANY SEAL
AND REPRESENTATION OF A FOOT, CROSS, AND SUNBEAM” and (3) BIRKENSTOCK BAD
Held: HONNEF-RHEIN & DEVICE COMPRISING OF ROUND COMPANY SEAL AND
It should be noted that the instant case shall be resolved under the provisions of the old REPRESENTATION OF A FOOD CROSS, AND SUNBEAM. These are for goods falling under
Trademark Law, R.A. No. 166, which was the law in force at the time of Cointreau’s application Class 10 of the Nice Classification. Its filing date was on September 05, 1994.
for registration of the subject mark. However, registration proceedings were suspended due to an existing registration of
Under Section 220 of R.A. No. 166, in order to register a trademark, one must be the owner the mark “BIRKENSTOCK AND DEVICE” ) in the name of Shoe Town International and Industrial
thereof and must have actually used the mark in commerce in the Philippines for two (2) months Corporation, the predecessor-in-interest of respondent Philippine Shoe Expo Marketing
prior to the application for registration. Section 2-A of the same law sets out to define how one Corporation. In this regard, petitioner filed a petition for cancellation of registration on the ground
goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce that it is the lawful and rightful owner of the Birkenstock marks. During its pendency, however,
is also the test of ownership but the provision went further by saying that the mark must not have respondent and/or its predecessor-in-interest failed to file the required 10th Year Declaration of
been so appropriated by another. Actual Use (10th Year DAU) for the said mark on or before October 21, 2004, thereby resulting in
Additionally, it is significant to note that Section 2-A does not require that the actual use of a the cancellation of such mark. Accordingly, the cancellation case was dismissed for being moot
trademark must be within the Philippines. Thus, as correctly mentioned by the CA, under R.A. and academic.
No. 166, one may be an owner of a mark due to its actual use but may not yet have the right to Because of such cancellation, petitioner’s registration was given due course and was
register such ownership here due to the owner’s failure to use the same in the Philippines for two published in the IPO e-Gazette. In response, three (3) separate verified notices of oppositions
(2) months prior to registration. were filed by respondent, claiming that: first, they have been using their mark for more than 16
Nevertheless, foreign marks which are not registered are still accorded protection against years; second, that the marks sought to be registered by petitioner are identical to theirs; third,
infringement and/or unfair competition. Under the Paris Convention, the Philippines is obligated that respondent’s predecessor-in-interest likewise obtained a Certificate of Copyright Registration
to assure nationals of the signatory-countries that they are afforded an effective protection against for the word “BIRKENSTOCK”; fourth, that despite the non-filing of DAU, it continued to use the
violation of their intellectual property rights in the Philippines in the same way that their own mark in lawful commerce; and fifth, it filed a re-application of its old registration to record its
countries are obligated to accord similar protection to Philippine nationals. “Thus, under continued ownership and exclusive right to use the mark.
Philippine law, a trade name of a national of a State that is a party to the Paris Convention, The BLA ordered the rejection of petitioner’s applications. It ruled that the competing
whether or not the trade name forms part of a trademark, is protected “without the obligation of marks of the parties are confusingly similar since they contained the word "BIRKENSTOCK" and
filing or registration.’ ” are used on the same and related goods and that petitioner failed to present evidence of actual
In the instant case, it is undisputed that Cointreau has been using the subject mark in France use in the trade and business in this country. It opined that while respondent’s registration was
since 1895, prior to Ecole’s averred first use of the same in the Philippines in 1948, of which the cancelled, it does not follow that prior right over the mark was lost, as proof of continuous and
latter was fully aware thereof. In fact, Ecole’s present directress, Ms. Lourdes L. Dayrit (and even uninterrupted use in trade and business in the Philippines was presented. Upon appeal to the IPO
its foundress, Pat Limjuco Dayrit), had trained in Cointreau’s Le Cordon Bleu culinary school in Director General, it reversed and set aside the ruling of the BLA, thus allowing the registration of
Paris, France. Cointreau was likewise the first registrant of the said mark under various classes, the subject applications. He held that with the cancellation of respondent’s mark for its failure to
both abroad and in the Philippines, having secured Home Registration No. 1,390,912 dated file the 10th Year DAU, there is no more reason to reject the subject applications on the ground of
November 25, 1986 from its country of origin, as well as several trademark registrations in the prior registration by another proprietor. The CA reversed and set aside the ruling of the IPO
Philippines. Director General and reinstated that of the BLA. It disallowed the registration of the subject
On the other hand, Ecole has no certificate of registration over the subject mark but only a applications on the ground that the marks covered by such applications "are confusingly similar, if
pending application covering services limited to Class 41 of the Nice Classification, referring to not outright identical" with respondent’s mark. It equally held that respondent’s failure to file the
the operation of a culinary school. Its application was filed only on February 24, 1992, or after 10th Year DAU for respondent’s mark "did not deprive petitioner of its ownership of the
Cointreau filed its trademark application for goods and services falling under different classes in ‘BIRKENSTOCK’ mark since it has submitted substantial evidence showing its continued use,
1990. Under the foregoing circumstances, even if Ecole was the first to use the mark in the promotion and advertisement thereof up to the present."
Philippines, it cannot be said to have validly appropriated the same. ISSUE: WON the subject marks should be allowed registration in the name of petitioner.
It is thus clear that at the time Ecole started using the subject mark, the same was already being RULING: YES. Failure to file the DAU within the requisite period results in the automatic
used by Cointreau, albeit abroad, of which Ecole’s directress was fully aware, being an alumna cancellation of registration of a trademark. In turn, such failure is tantamount to the abandonment
of the latter’s culinary school in Paris, France. Hence, Ecole cannot claim any tinge of or withdrawal of any right or interest the registrant has over his trademark. The law requires that
ownership whatsoever over the subject mark as Cointreau is the true and lawful owner thereof. registrations under the provisions of this Act shall be cancelled by the Director, unless within one
As such, the IPO Director General and the CA was correct in declaring Cointreau as the true and year following the fifth, tenth and fifteenth anniversaries of the date of issue of the certificate of
lawful owner of the subject mark and as such, is entitled to have the same registered under its registration, the registrant shall file in the Patent Office an affidavit showing that the mark or trade-
name. name is still in use or showing that its non-use is due to special circumstances which excuse such
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the non-use and is not due to any intention to abandon the same, and pay the required fee.
Intellectual Property Code of the Philippines, as amended, has already dispensed with the In this case, respondent admitted that it failed to file the 10th Year DAU for its registered
requirement of prior actual use at the time of registration. Thus, there is more reason to allow the mark within the requisite period, or on or before October 21, 2004. As a consequence, it was
registration of the subject mark under the name of Cointreau as its true and lawful owner. deemed to have abandoned or withdrawn any right or interest over the mark "BIRKENSTOCK."
WHEREFORE, the petition is DENIED. Accordingly, the December 23, 2008 Decision of the Court Neither can it invoke Section 236 of the IP Code which pertains to intellectual property rights
of Appeals in CA-G.R. SP No. 104672 is hereby AFFIRMED in toto. SO ORDERED.
obtained under previous intellectual property laws, e.g., RA 166, precisely because it already lost The respondent alleged that it has used the mark “ST. FRANCIS” to identify its numerous property
any right or interest over the said mark. development projects located ate Ortigas Center. Respondent added that as a result of its
It must be emphasized that registration of a trademark, by itself, is not a mode of continuous use of the mark “ST. FRANCIS” in its real estate business, it has gained substantial
acquiring ownership. If the applicant is not the owner of the trademark, he has no right to apply for goodwill with the public that consumers and traders closely identify the said mark with its property
its registration. Registration merely creates a prima facie presumption of the validity of the development projects. Accordingly, respondent claimed that petitioners could not have the mark
registration of the registrant’s ownership of the trademark, and of the exclusive right to the use "THE ST. FRANCIS TOWERS" registered in their names, and that petitioners' use of the marks
thereof. Such presumption, just like the presumptive regularity in the performance of official "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE" in their own real
functions, is rebuttable and must give way to evidence to the contrary. Clearly, it is not the estate development projects constitutes unfair competition as well as false or fraudulent
application or registration of a trademark that vests ownership thereof, but it is the ownership of a declaration.
trademark that confers the right to register the same. A trademark is an industrial property over
which its owner is entitled to property rights which cannot be appropriated by unscrupulous entities Petitioners denied committing unfair competition and false or fraudulent declaration, maintaining
that, in one way or another, happen to register such trademark ahead of its true and lawful owner. that they could register the mark "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS
The presumption of ownership accorded to a registrant must then necessarily yield to superior SHANGRI-LA PLACE" under their names. They contended that respondent is barred from
evidence of actual and real ownership of a trademark. claiming ownership and exclusive use of the mark "ST.
In the instant case, petitioner was able to establish that it is the owner of the mark FRANCIS" because the same is geographically descriptive of the goods or services for which it is
"BIRKENSTOCK." It submitted evidence relating to the origin and history of "BIRKENSTOCK" and intended to be used. This is because respondent's as well as petitioners' real estate development
its use in commerce long before respondent was able to register the same here in the Philippines. projects are located along the streets bearing the name "St. Francis," particularly, St. Francis
It has sufficiently proven that "BIRKENSTOCK" was first adopted in Europe in 1774 by its inventor, Avenue and St. Francis Street (now known as Bank Drive), both within the vicinity of the Ortigas
Johann Birkenstock, a shoemaker, on his line of quality footwear and thereafter, numerous Center.
generations of his kin continuously engaged in the manufacture and sale of shoes and sandals
bearing the mark "BIRKENSTOCK" until it became the entity now known as the petitioner. On December 19, 2006, the BLA rendered a Decision in the IPV Case, and found that petitioners
Petitioner also submitted various certificates of registration of the mark "BIRKENSTOCK" in committed acts of unfair competition against respondent by its use of the mark "THE ST. FRANCIS
various countries and that it has used such mark in different countries worldwide, including the TOWERS" but not with its use of the mark "THE ST. FRANCIS SHANGRILA PLACE.
Philippines. On the other hand, aside from the respondent’s registered mark which had been
cancelled, respondent only presented copies of sales invoices and advertisements, which are not Meanwhile, on March 28, 2007, the BLA rendered a Decision in the St. Francis Towers IP Case,
conclusive evidence of its claim of ownership of the mark "BIRKENSTOCK" as these merely show denying petitioners' application for registration of the mark "THE ST. FRANCIS TOWERS".
the transactions made by respondent involving the same. In view of the foregoing circumstances, Excluding the word "TOWERS" in view of petitioners' disclaimer thereof, the BLA ruled that
the Court finds the petitioner to be the true and lawful owner of the mark "BIRKENSTOCK" and petitioners cannot register the mark "THE ST. FRANCIS" since it is confusingly similar to
entitled to its registration, and that respondent was in bad faith in having it registered in its name. respondent's "ST. FRANCIS" marks which are registered with the DTI.
As a final note, the court finds that the facts and evidence failed to show that respondent
was in good faith in using and in registering the mark BIRKENSTOCK. BIRKENSTOCK, obviously A little over a year after, or on March 31, 2008, the BLA then rendered a Decision in the St. Francis
of German origin, is a highly distinct and arbitrary mark. It is very remote that two persons did coin Shangri-La IP Case, allowing petitioners' application for registration of the mark "THE ST.
the same or identical marks. To come up with a highly distinct and uncommon mark previously FRANCIS SHANGRI-LA PLACE." It found that respondent cannot preclude petitioners from using
appropriated by another, for use in the same line of business, and without any plausible the mark "ST. FRANCIS" as the records show that the former's use thereof had not been attended
explanation, is incredible. with exclusivity.
Both parties appealed the decision in the IPV Case, while petitioners appealed the decision in the
8. SHANG PROPERTIES REALTY CORPORATION (formerly THE SHANG GRAND TOWER St. Francis Towers IP Case. Due to the identity of the parties and issues involved, the IPO Director-
CORPORATION) and SHANG PROPERTIES, INC. (formerly EDSA PROPERTIES General ordered the consolidation of the separate appeals. Records are, however, bereft of any
HOLDINGS, INC.), petitioners, vs . ST. showing that the decision in the St. Francis Shangri-La IP Case was appealed by either party and,
FRANCIS DEVELOPMENT CORPORATION, respondent. thus, is deemed to have lapsed into finality.
G.R. No. 190706, July 21, 2014, PERLAS-BERNABE, J.
In a Decision dated September 3, 2008, then IPO Director-General Adrian S. Cristobal, Jr. affirmed
FACTS: the rulings of the BLA that: (a) petitioners cannot register the mark "THEST. FRANCIS TOWERS";
and (b) petitioners are not guilty of unfair competition in its use of the mark "THE ST. FRANCIS
Respondent — a domestic corporation engaged in the real estate business and the developer of SHANGRI-LA PLACE." However, the IPO Director General reversed the BLA’s finding that
the St. Francis Square Commercial Center, built sometime in 1992, located at Ortigas Center, petitioners committed unfair competition through their use of the mark "THE ST. FRANCIS
Mandaluyong City, Metro Manila (Ortigas Center) — filed separate complaints against petitioners TOWERS," thus dismissing such charge.
before the IPO-Bureau of Legal Affairs (BLA), namely: (a) an intellectual property violation case
for unfair competition, false or fraudulent declaration, and damages arising from petitioners' use In a Decision dated December 18, 2009, the CA found petitioners guilty of unfair competition not
and filing of applications for the registration of the marks "THE ST. FRANCIS TOWERS" and "THE only with respect to their use of the mark "THE ST. FRANCIS TOWERS" but also of the mark
ST. FRANCIS SHANGRI-LA PLACE," (IPV Case); and (b ) an inter partes case opposing the "THE ST. FRANCIS SHANGRI-LA PLACE. The CA did not adhere to the IPO Director-General's
petitioners' application for registration of the mark "THE ST. FRANCIS TOWERS" for use relative finding that the mark "ST. FRANCIS" is geographically descriptive, and ruled that respondent —
to the latter's business, particularly the construction of permanent buildings or structures for which has exclusively and continuously used the mark "ST. FRANCIS" for more than a decade,
residential and office purposes (St. Francis Towers IP Case); and (c) an inter partes case opposing and, hence, gained substantial goodwill and reputation thereby — is very much entitled to be
the petitioners' application for registration of the mark "THE ST. FRANCIS SHANGRI-LA PLACE" protected against the indiscriminate usage by other companies of the trademark/name it has so
(St. Francis Shangri-La IP Case). painstakingly tried to establish and maintain.
Hence, the present petition. G.R. NO. 175278, THIRD DIVISION, September 23, 2015, JARDELEZA, J.:
ISSUE: (NOTE: I included the history part, baka lang matanong ni Sir.)
Whether petitioners are guilty of unfair competition in using the marks "THE ST. FRANCIS FACTS:
TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE".
Summarized History:
RULING: Petitioner was originally organized as Royal Savings Bank and started operations in 1971.
Beginning 1983 and 1984, petitioner encountered liquidity problems. In 1984, it was placed under
The Court ruled that petitioner are not guilty of unfair competition. The court finds the element of receivership and later temporarily closed by the Central Bank of the Philippines. Two (2) months
fraud to be wanting. Hence, there can be no unfair competition. The CA’s contrary conclusion was after its closure, petitioner reopened and was renamed Comsavings Bank, Inc. under the
faulty premised on its impression that respondents had the right to the exclusive use of the mark management of the Commercial Bank of Manila.
“ST. FRANCIS,” for which the latter has purportedly established considerable goodwill. What the In 1987, the GSIS acquired petitioner from the Commercial Bank of Manila. To improve its
CA appears to have disregarded or been mistaken in its disquisition, however, is the marketability to the public, especially to the members of the GSIS, petitioner sought SEC approval
geographically descriptive nature of the mark “ST. FRANCIS” which thus bars the its exclusive to change its corporate name to "GSIS Family Bank, a Thrift Bank." Petitioner likewise applied
appropriability, unless a secondary meaning is acquired. As deftly explained in the U.S. case of with the DTI and BSP for authority to use "GSIS Family Bank, a Thrift Bank" as its business name.
Great Southern Bank v. First Southern Bank: "[d]escriptive geographical terms are in the ‘public The DTI and the BSP approved the applications. Thus, petitioner operates under the corporate
domain’ in the sense that every seller should have the right to inform customers of the name "GSIS Family Bank – a Thrift Bank,".
geographical origin of his goods. A ‘geographically descriptive term’ is any noun or adjective that Respondent BPI Family Bank was a product of the merger between the FBTC and the BPI. In
designates geographical location and would tend to be regarded by buyers as descriptive of the 1969, the Gotianum family registered with the SEC the corporate name "Family First Savings
geographic location of origin of the goods or services. A geographically descriptive term can Bank," which was amended to "Family Savings Bank," and then later to "Family Bank and Trust
indicate any geographic location on earth, such as continents, nations, regions, states, cities, Company." Since its incorporation, the bank has been commonly known as "Family Bank." In
streets and addresses, areas of cities, rivers, and any other location referred to by a recognized 1985, Family Bank merged with BPI, and the latter acquired all the rights, privileges, properties,
name. In order to determine whether or not the geographic term in question is descriptively used, and interests of Family Bank, including the right to use names, such as "Family First Savings
the following question is relevant: (1) Is the mark the name of the place or region from which the Bank," "Family Bank," and "Family Bank and Trust Company." BPI Family Savings Bank was
goods actually come? If the answer is yes, then the geographic term is probably used in a registered with the SEC as a wholly-owned subsidiary of BPI. BPI Family Savings Bank then
descriptive sense, and secondary meaning is required for protection." registered with the Bureau of Domestic Trade the trade or business name "BPI Family Bank," and
acquired a reputation and goodwill under the name.
The Court disagrees with the CA that petitioners committed unfair competition due to the mistaken
notion that petitioner had established goodwill for the mark "ST. FRANCIS" precisely because said CASE:
circumstance, by and of itself, does not equate to fraud under the parameters of Section 168 of Respondent petitioned the SEC CRMD to disallow or prevent the registration of the name "GSIS
the IP Code. In fact, the records are bereft of any showing that petitioners gave their Family Bank" or any other corporate name with the words "Family Bank" in it.
goods/services the general appearance that it was respondent which was offering the same to the SEC CRMD: Ruled in favor of BPI Family Savings Bank. The SEC CRMD declared that upon the
public. Neither did petitioners employ any means to induce the public towards a false belief that it merger of FBTC with the BPI in 1985, the latter acquired the right to the use of the name of the
was offering respondent's goods/services. Nor did petitioners make any false statement or commit absorbed corporation. Thus, BPI Family Bank has a prior right to the use of the name. The SEC
acts tending to discredit the goods/services offered by respondent. Accordingly, the element of CRMD also held that there exists a confusing similarity between the corporate names BPI Family
fraud which is the core of unfair competition had not been established. Bank and GSIS Family Bank. The SEC En Banc affirmed the SEC CRMD.
CA: affirmed the SEC En Banc Resolution.
Besides, respondent was not able to prove its compliance with the requirements stated in Section
123.2 of the IP Code to be able to conclude that it acquired a secondary meaning — and, thereby, ISSUE:
an exclusive right — to the "ST. FRANCIS" mark, which is, as the IPO Director-General correctly 1) Whether or not the CA gravely erred in affirming the SEC Resolution finding the word "Family"
pointed out, geographically-descriptive of the location in which its realty developments have been not generic despite its unregistered status with the IPO of the Bureau of Patents and the use by
built, i.e., St. Francis Avenue and St. Francis Street (now known as "Bank Drive"). Verily, records GSIS-Family Bank in its corporate name of the words "[F]amily [B]ank" as deceptive and
would reveal that while it is true that respondent had been using the mark "ST. FRANCIS" since [confusingly similar] to the name BPI Family Bank. (NO)
1992, its use thereof has been merely confined to its realty projects within the Ortigas Center, as 2) Whether or not the CA gravely erred when it completely disregarded the opinion of the BSP
specifically mentioned. As its use of the mark is clearly limited to a certain locality, it cannot be that the use by the herein petitioner of the trade name GSIS Family Bank – Thrift Bank is not
said that there was substantial commercial use of the same recognized all throughout the country. similar or does not deceive or likely cause any deception to the public. (NO)
Neither is there any showing of a mental recognition in buyers' and potential buyers' minds that
products connected with the mark "ST. FRANCIS" are associated with the same source — that is, RULING:
the enterprise of respondent. Thus, absent any showing that there exists a clear goods/service- 1) No, the CA did not err in finding the word "Family" not generic.
association between the realty projects located in the aforesaid area and herein respondent as In Philips Export B.V. v. Court of Appeals, this Court ruled that to fall within the prohibition of the
the developer thereof, the latter cannot be said to have acquired a secondary meaning as to its law on the right to the exclusive use of a corporate name, two requisites must be proven,
use of the "ST. FRANCIS" mark. namely:
(1) that the complainant corporation acquired a prior right over the use of such
Digested by: Paola Camilon corporate name; and
(2) the proposed name is either
10. GSIS FAMILY BANK - THRIFT BANK [Formerly Inc.], Petitioner, vs. BPI FAMILY BANK, (a) identical or
Respondent.
(b) deceptive or confusingly similar to that of any existing corporation or to is never used adjectively to define or describe an object. One does not say, "ang tibay sapatos"
any other name already protected by law; or or "sapatos ang tibay" to mean "durable shoes," but "matibay na sapatos" or "sapatos na
(c) patently deceptive, confusing or contrary to existing law. matibay."…
(NOTE: Basis of requisites was Sec. 18 of the Corporation Code) The word "family" is defined as "a group consisting of parents and children living together in a
In this case, respondent was incorporated in 1969 as Family Savings Bank and in 1985 as BPI household" or "a group of people related to one another by blood or marriage." Bank, on the other
Family Bank. Petitioner, on the other hand, was incorporated as GSIS Family – Thrift Bank only hand, is defined as "a financial establishment that invests money deposited by customers, pays it
in 2002, or at least seventeen (17) years after respondent started using its name.. out when requested, makes loans at interest, and exchanges currency. By definition, there can
The second requisite in the Philips Export case likewise obtains on two points: the proposed name be no expected relation between the word "family" and the banking business of
is (a) identical or (b) deceptive or confusingly similar to that of any existing corporation or to any respondent. Rather, the words suggest that respondent’s bank is where family savings
other name already protected by law. should be deposited. More, as in the Ang case, the phrase "family bank" cannot be used to
define an object.
1st requisite
The words "Family Bank" present in both petitioner and respondent's corporate name satisfy the 2) Petitioner’s argument that the opinion of the BSP and the certificate of registration
requirement that there be identical names in the existing corporate name and the proposed one. granted to it by the DTI constitute authority for it to use "GSIS Family Bank" as corporate
To show contrast with respondent's corporate name, petitioner used the words "GSIS" and "thrift." name is also untenable.
But these are not sufficiently distinct words that differentiate petitioner's corporate name from The enforcement of the protection accorded by Section 18 of the Corporation Code to corporate
respondent's. While "GSIS" is merely an acronym of the proper name by which petitioner is names is lodged exclusively in the SEC. The jurisdiction of the SEC is not merely confined to the
identified, the word "thrift" is simply a classification of the type of bank that petitioner is. adjudicative functions provided in Section 5 of the SEC Reorganization Act, as amended. By
Even if the classification of the bank as "thrift" is appended to petitioner's proposed corporate express mandate, the SEC has absolute jurisdiction, supervision and control over all corporations.
name, it will not make the said corporate name distinct from respondent's because the latter is It is the SEC’s duty to prevent confusion in the use of corporate names not only for the protection
likewise engaged in the banking business. of the corporations involved, but more so for the protection of the public. It has authority to de-
This Court used the same analysis in Ang mga Kaanib sa Iglesia ng Dios Kay Kristo Hesus, H.S.K. register at all times, and under all circumstances corporate names which in its estimation are likely
sa Bansang Pilipinas, Inc. v. Iglesia ng Dios Kay Cristo Jesus, Haligi at Suhay ng Katotohanan… to generate confusion.
The additional words "Ang Mga Kaanib" and "Sa Bansang Pilipinas, Inc." in petitioner's
name are, as correctly observed by the SEC, merely descriptive of and also referring to Other matters
the members, or kaanib, of respondent who are likewise residing in the Philippines. Finally, we uphold the Court of Appeals' finding that the issue of forum shopping was belatedly
These words can hardly serve as an effective differentiating medium necessary to avoid raised by petitioner and, thus, cannot anymore be considered at the appellate stage of the
confusion or difficulty in distinguishing petitioner from respondent. This is especially so, proceedings. Petitioner raised the issue of forum shopping for the first time only on appeal. In this
since both petitioner and respondent corporations are using the same acronym – case, the fact that respondent filed a case before the DTI was made known to petitioner long
H.S.K.; not to mention the fact that both are espousing religious beliefs and operating before the SEC rendered its decision. Yet, despite its knowledge, petitioner failed to question the
in the same place. Xxx alleged forum shopping before the SEC. The exceptions to the general rule that forum shopping
should be raised in the earliest opportunity, as explained in the cited case of Young v. Keng Seng,
2nd requisite: do not obtain in this case.
In determining the existence of confusing similarity in corporate names, the test is whether the
similarity is such as to mislead a person using ordinary care and discrimination. And even without Prepared by: ROCHELLE NIEVA D. CURIBA
such proof of actual confusion between the two corporate names, it suffices that confusion is
probable or likely to occur. 7. UFC PHILIPPINES, INC. (NOW MERGED WITH NUTRI-ASIA, INC., WITH NUTRI-ASIA,
The overriding consideration in determining whether a person, using ordinary care and INC. AS THE SURVIVING ENTITY), Petitioner, v. FIESTA BARRIO MANUFACTURING
discrimination, might be misled is the circumstance that both petitioner and respondent are CORPORATION, Respondent.
engaged in the same business of banking. ".. G.R. No. 198889, January 20, 2016
Petitioner cannot argue that the word "family" is a generic or descriptive name, which cannot be
appropriated exclusively by respondent. "Family," as used in respondent's corporate name, is FACTS
not generic. Generic marks are commonly used as the name or description of a kind of goods, On April 4, 2002, respondent filed Application No. 4-2002-002757 for the mark "PAPA BOY &
such as "Lite" for beer or "Chocolate Fudge" for chocolate soda drink. Descriptive marks, on the DEVICE" for goods under Class 30, specifically for "lechon sauce."7 The Intellectual Property
other hand, convey the characteristics, function, qualities or ingredients of a product to one who Office (IPO) published said application for opposition in the IP Phil. e-Gazette released on
has never seen it or does not know it exists, such as "Arthriticare" for arthritis medication. September 8, 2006. On December 11, 2006, petitioner filed with the IPO-BLA a Verified Notice
Under the facts of this case, the word "family" cannot be separated from the word "bank." of Opposition to the above-mentioned application
… This coined phrase, neither being generic nor descriptive, is merely suggestive and may
properly be regarded as arbitrary. Arbitrary marks are "words or phrases used as a mark that In its verified opposition before the IPO, petitioner contended that "PAPA BOY & DEVICE" is
appear to be random in the context of its use…Suggestive marks, on the other hand, "are marks confusingly similar with its "PAPA" marks inasmuch as the former incorporates the term "PAPA,"
which merely suggest some quality or ingredient of goods. xxx The strength of the suggestive which is the dominant feature of petitioner's "PAPA" marks. Petitioner averred that respondent's
marks lies on how the public perceives the word in relation to the product or service." use of "PAPA BOY & DEVICE" mark for its lechon sauce product, if allowed, would likely lead
the consuming public to believe that said lechon sauce product originates from or is authorized
NOTE: important case cited by petitioner, and that the "PAPA BOY & DEVICE" mark is a variation or derivative of petitioner's
In Ang v. Teodoro, this Court ruled that the words "Ang Tibay" is not a descriptive term within the "PAPA" marks. Petitioner argued that this was especially true considering that petitioner's
meaning of the Trademark Law but rather a fanciful or coined phrase…For instance, one who tries ketchup product and respondent's lechon sauce product are related articles that fall under the
hard but fails to break an object exclaims, "Ang tibay!" ("How strong!") It may also be used in a same Class 30.
sentence thus, "Ang tibay ng sapatos mo!" ("How durable your shoes are!") The phrase "ang tibay"
In its Verified Answer, respondent argued that there is no likelihood of confusion between 5378, May 24, 1954). Duplication or imitation is not necessary; nor is it necessary that the
petitioner's family of "PAPA" trademarks and respondent's "PAPA BOY & DEVICE" trademark. infringing label should suggest an effort to imitate (Lim Hoa v. Director of Patents, supra, and Co
Liong Sa v. Director of Patents, supra). Actual confusion is not required: Only likelihood of
The IPO-BLA rendered a Decision on March 26, 2008 sustaining petitioner's Opposition and confusion on the part of the buying public is necessary so as to render two marks confusingly
rejecting respondent's application for "PAPA BOY & DEVICE." CA reversed. similar so as to deny the registration of the junior mark (Sterling Products International, Inc. v.
Farbenfabriken Bayer Aktiengesellschaft, 137 Phil. 838 [1969]).
ISSUE As to the first issue of whether PAPA BOY is confusingly similar to Opposer's PAPA mark, this
W/N the CA erred in holding that PAPA KETSARAP can be registered as a trademark. Bureau rules in the affirmative.
The records bear the following:
RULING 1. Registration No. 32416 issued for the mark "PAPA" under Class 29 goods was deemed
YES. expired as of February 11, 2004 (Exhibit "A" attached to the VERIFIED NOTICE OF
Section 123. l(d) of the IP Code provides: OPPOSITION). Application Serial No. 4- 2005-010788 was filed on October 28, 2005 for the
A mark cannot be registered if it: same mark "PAPA" for Class 30 goods and Registration No. 42005010788 was issued on March
xxxx 19,2007;
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier 2. Opposer was issued for the mark "PAPA BANANA CATSUP LABEL" on August 11, 1983
filing or priority date, in respect of: Registration No. SR-6282 for Class 30 goods in the Supplemental Register, which registration
i. The same goods or services, or expired in 2003. Application Serial No. 4-2006-012364 was filed for the mark "PAPA LABEL
ii. Closely related goods or services, or DESIGN" for Class 30 goods on November 15, 2006, and Registration No. 42006012364 was
iii. If it nearly resembles such a mark as to be likely to issued on April 30, 2007; and
deceive or cause confusion[.] 3. Lastly, Registration No. 34681 for the mark "PAPA KETSARAP" for Class 30 goods was
issued on August 23, 1985 and was renewed on August 23, 2005.
A scrutiny of petitioner's and respondent's respective marks would show that the IPO-BLA and Though Respondent-applicant was first to file the subject application on April 04, 2002 vis-a-vis
the IPO Director General correctly found the word "PAPA" as the dominant feature of petitioner's the mark "PAPA" the filing date of which is reckoned on October 28, 2005, and the mark "PAPA
mark "PAPA KETSARAP." Contrary to respondent's contention, "KETSARAP" cannot be the LABEL DESIGN" the filing date of which is reckoned on November 15, 2006, Opposer was able
dominant feature of the mark as it is merely descriptive of the product. Furthermore, it is the to secure a registration for the mark "PAPA KETSARAP" on August 23, 1985 considering that
"PAPA" mark that has been in commercial use for decades and has established awareness and Opposer was the prior registrant and that its renewal application timely filed on August 23, 2005.
goodwill among consumers. We likewise agree with the IPO-BLA that the word "PAPA" is also xxxx
the dominant feature of respondent's "PAPA BOY & DEVICE" mark subject of the application, Pursuant to [Section 123.l(d) of the IP Code], the application for registration of the subject mark
such that "the word 'PAPA' is written on top of and before the other words such that it is the first cannot be allowed considering that Opposer was earlier registrant of the marks PAPA and PAPA
word/figure that catches the eyes."49 Furthermore, as the IPO Director General put it, the part of KETSARAP which registrations were timely renewed upon its expiration. Respondent-applicant's
respondent's mark which appears prominently to the eyes and ears is the phrase "PAPA BOY" mark "PAPA BOY & DEVICE" is confusingly similar to Opposer's mark "PAPA KETSARAP" and
and that is what a purchaser of respondent's product would immediately recall, not the smiling is applied to goods that are related to Opposer's goods, but Opposer's mark "PAPA KETSARAP"
hog. was registered on August 23, 1985 per Certificate of Registration No. 34681, which registration
was renewed for a period of 10 years counted from August 23, 2005 per Certificate of Renewal
of Registration No. 34681 issued on August 23, 2005. To repeat, Opposer has already
We quote the relevant portion of the IPO-BLA decision on this point below: registered a mark which Respondent-applicant's mark nearly resembles as to likely deceive or
A careful examination of Opposer's and Respondent-applicant's respective marks shows that the cause confusion as to origin and which is applied to goods to which respondent-applicant's
word "PAPA" is the dominant feature: In Opposer's marks, the word "PAPA" is either the mark goods under Class 30 are closely related.
by itself or the predominant word considering its stylized font and the conspicuous placement of Section 138 of the IP Code provides that a certificate of registration of a mark is prima facie
the word "PAPA" before the other words. In Respondent-applicant's mark, the word "PAPA" is evidence of the validity of the registration, the registrant's ownership of the mark, and of the
written on top of and before the other words such that it is the first word figure that catches the registrant's exclusive right to use the same in connection with the goods and those that are
eyes. The visual and aural impressions created by such dominant word "PAPA" at the least is related thereto specified in the certificate.
that the respective goods of the parties originated from the other, or that one party has permitted
or has been given license to the other to use the word "PAPA" for the other party's product, or We agree that respondent's mark cannot be registered. Respondent's mark is related to a
that there is a relation/connection between the two parties when, in fact, there is none. This is product, lechon sauce, an everyday all-purpose condiment and sauce, that is not subjected to
especially true considering that the products of both parties belong to the same class and are great scrutiny and care by the casual purchaser, who knows from regular visits to the grocery
closely related: Catsup and lechon sauce or liver sauce are both gravy-like condiments used to store under what aisle to find it, in which bottle it is contained, and approximately how much it
spice up dishes. Thus, confusion of goods and of business may likely result. costs. Since petitioner's product, catsup, is also a household product found on the same grocery
Under the Dominancy Test, the dominant features of the competing marks are considered in aisle, in similar packaging, the public could think that petitioner had expanded its product mix to
determining whether these competing marks are confusingly similar. Greater weight is given to include lechon sauce, and that the "PAPA BOY" lechon sauce is now part of the "PAPA" family
the similarity of the appearance of the products arising from the adoption of the dominant of sauces, which is not unlikely considering the nature of business that petitioner is in. Thus, if
features of the registered mark, disregarding minor differences. The visual, aural, connotative, allowed registration, confusion of business may set in, and petitioner's hard-earned goodwill may
and overall comparisons and impressions engendered by the marks in controversy as they are be associated to the newer product introduced by respondent, all because of the use of the
encountered in the realities of the marketplace are the main considerations (McDonald's dominant feature of petitioner's mark on respondent's mark, which is the word "PAPA." The
Corporation, et al., v. L. C. Big Mak Burger, Inc., et al., G. R. No. 143993, August 18, 2004; words "Barrio Fiesta" are not included in the mark, and although printed on the label of
Societe Des Produits Nestle, S. A." et al. v. Court of Appeals, et al., G. R. No. 112012, April 4, respondent's lechon sauce packaging, still do not remove the impression that "PAPA BOY" is a
2001). If the competing trademark contains the main or essential or dominant features of product owned by the manufacturer of "PAPA" catsup, by virtue of the use of the dominant
another, and confusion and deception is likely to result, infringement takes place. (Lim Hoa v. feature. It is possible that petitioner could expand its business to include lechon sauce, and that
Director of Patents, 100 Phil. 214 [1956]); Co Tiong Sa v. Director of Patents, et al., G. R. No. L-
would be well within petitioner's rights, but the existence of a "PAPA BOY" lechon sauce would
already eliminate this possibility and deprive petitioner of its rights as an owner of a valid mark
included in the Intellectual Property Code.
The Court of Appeals likewise erred in finding that "PAPA," being a common term of endearment
for one's father, is a word over which petitioner could not claim exclusive use and ownership.
The Merriam-Webster dictionary defines "Papa" simply as "a person's father." True, a person's
father has no logical connection with catsup products, and that precisely makes "PAPA" as an
arbitrary mark capable of being registered, as it is distinctive, coming from a family name that
started the brand several decades ago. What was registered was not the word "Papa" as
defined in the dictionary, but the word "Papa" as the last name of the original owner of the brand.
In fact, being part of several of petitioner's marks, there is no question that the IPO has found
"PAPA" to be a registrable mark.
Respondent had an infinite field of words and combinations of words to choose from to coin a
mark for its lechon sauce. While its claim as to the origin of the term "PAPA BOY" is plausible, it
is not a strong enough claim to overrule the rights of the owner of an existing and valid mark.
Furthermore, this Court cannot equitably allow respondent to profit by the name and reputation
carefully built by petitioner without running afoul of the basic demands of fair play.